`Tel: 571-272-7822
`
`Paper 38
`Entered: March 18, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`AXON EP, INC. and SCREEN LOGIX, LLC,
`Petitioner,
`
`v.
`
`DERRICK CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2016-00642
`Patent 7,228,971 B2
`____________
`
`
`Before BARRY L. GROSSMAN, CARL M. DEFRANCO, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`MAYBERRY, Administrative Patent Judge.
`
`
`
`DECISION
`
`Termination of the Proceeding
`
`35 U.S.C. § 317(a) and 37 C.F.R. § 42.72
`
`
`
`IPR2016-00642
`Patent 7,228,971 B2
`
`
`On March 8, 2017, Petitioners, Axon EP, Inc. and Screen Logix, LLC,
`
`and Patent Owner, Derrick Corporation, (collectively, the “Parties”) filed a
`
`joint motion to terminate this inter partes review involving U.S. Patent No.
`
`7,228,971 B2 (the “’971 patent”). Paper 35 (the “Joint Motion to
`
`Terminate”); see 35 U.S.C. § 317(b); 37 C.F.R. § 42.72. The Board
`
`authorized this motion in an email communication to the Parties on
`
`March 7, 2017.
`
`As background, Petitioners filed a petition for inter partes review of
`
`the ’971 patent on February 19, 2016. Paper 1 (the “Petition”). The Petition
`
`names, in addition to Petitioners Axon EP, Inc. and Screen Logix, LLC,
`
`HitecVision V, L.P., Axon Energy Products AS, Axon Pressure Products,
`
`Inc., and Drilling Controls, Inc. as real parties-in-interest. Id. at 1.
`
`Petitioner filed a Second Updated Mandatory Notice on November 17, 2016
`
`identifying Mr. Jeffrey Walker of Screen Logix as a real party in interest.
`
`Paper 16, 1. We instituted trial on claim 6 of the ’971 patent on
`
`August 29, 2016. Paper 9. Patent Owner filed a Patent Owner Response on
`
`November 22, 2016 (Papers 18, 19), and Petitioners filed a Reply on
`
`February 14, 2017 (Papes 31, 32). We have not conducted oral argument in
`
`this proceeding.
`
`Along with the Joint Motion to Terminate, the Parties filed a true and
`
`correct copy of their written settlement agreement covering the ’971 patent
`
`(Paper 37—the “Settlement Agreement”), as well as a joint motion
`
`(Paper 36) to have the Settlement Agreement treated as business confidential
`
`information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). The Parties
`
`represent in their Joint Motion to Terminate that, pursuant to the Settlement
`
`Agreement, pending patent litigation involving the ’971 patent has been
`
`2
`
`
`
`IPR2016-00642
`Patent 7,228,971 B2
`
`dismissed. Paper 35, 3. Further, the Joint Motion to Terminate indicates
`
`that “[n]o litigation or proceeding involving the ’971 patent is contemplated
`
`in the foreseeable future.” Id. at 4. Further, the Joint Motion to Terminate
`
`indicates that the Settlement Agreement “and collateral agreement
`
`referenced therein have been made in writing, and a true copy of same has
`
`been filed herewith as” Paper 37. Id. at 2.
`
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`
`this chapter shall be terminated with respect to any petitioner upon the joint
`
`request of the petitioner and patent owner, unless the Office has decided the
`
`merits of the proceeding before the request for termination is filed.” The
`
`Parties are reminded that the Board is not a party to the settlement, and may
`
`identify independently any question of patentability. 37 C.F.R. § 42.74(a).
`
`Generally, however, the Board expects that a proceeding will terminate after
`
`the filing of a settlement agreement, especially when, as here, we have not
`
`rendered a Final Written Decision on the merits. See Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012).
`
`Based on the preceding, we determine that it is appropriate to
`
`terminate this proceeding without rendering a Final Written Decision as to
`
`the patentability of claim 6 of the ’971 patent.
`
`
`
` In consideration of the foregoing, it is
`
`ORDER
`
`ORDERED that, as was timely requested by the Parties, the
`
`Settlement Agreement (Paper 37) will be treated as business confidential
`
`information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), and be kept
`
`separate from the files of U.S. Patent No. 7,228,971 B2 and made available
`
`3
`
`
`
`IPR2016-00642
`Patent 7,228,971 B2
`
`only to Federal Government agencies on written request, or to any person on
`
`a showing of good cause; and
`
` FURTHER ORDERED that the Joint Motion to Terminate this
`
`proceeding is granted and the Petition is hereby terminated.
`
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2016-00642
`Patent 7,228,971 B2
`
`PETITIONER:
`
`Robinson Vu
`Paul Morico
`Thomas Rooney
`Lindsay Volpenhein
`BAKER BOTTS LLP
`robinson.vu@bakerbotts.com
`paul.morico@bakerbotts.com
`thomas.rooney@bakerbotts.com
`lindsay.volpenhein@bakerbotts.com
`
`PATENT OWNER:
`
`Jason Mueller
`Jason Gaskill
`ADAMS AND REESE, LLP
`jason.mueller@arlaw.com
`jason.gaskill@arlaw.com
`
`
`
`Jeffrey S. Ginsberg
`David J. Copperberg
`PATTERSON BELKNAP WEBB & TYLER LLP
`dcooperberg@pbwt.com
`jginsberg@pbwt.com
`
`
`
`5
`
`
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