`Tel: 571-272-7822
`
`Paper No. 34
`Entered: June 13 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`HALLIBURTON ENERGY SERVICES, INC.,
`
`Petitioner,
`
`v.
`
`SCHLUMBERGER TECHNOLOGY CORPORATION,
`
`Patent Owner.
`____________
`
`Case IPR2017-01564
`Patent 7,775,278 B2
`____________
`
`
`
`
`Before HYUN J. JUNG, JEREMY M. PLENZLER, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`MAYBERRY, Administrative Patent Judge.
`
`DECISION
`Granting Joint Motion to Terminate
`35 U.S.C. § 317(a); 37 C.F.R. § 42.72
`Granting Request to Treat Settlement Documents
`as Confidential Business Information
`35 U.S.C. § 317(b); 37 C.F.R. § 42.74(c)
`
`
`
`
`
`
`
`IPR2017-01564
`Patent 7,775,278 B2
`
`
`On December 12, 2017, we instituted trial on claims 1, 2, 6, 7, 14, 17,
`
`29, and 31 (the “Challenged Claims”) of U.S. Patent No. 7,775,278 B2
`
`(the “’278 patent”). Paper 17, 27–28. Pursuant to our authorization, on June
`
`1, 2018, the parties filed a Joint Motion to Terminate Proceedings (Paper
`
`321; the “Joint Motion”) and a Joint Request to File Settlement Agreement
`
`as Business Confidential Information (Paper 29). Pursuant to 37 C.F.R.
`
`§ 42.74(b), the parties also filed a true copy of their written settlement
`
`agreement (Ex. 2026).
`
`In the Joint Motion, the parties indicate that they have reached an
`
`agreement regarding all of their disputes involving the ’278 patent. Paper
`
`32, 2. The parties represent that:
`
`Other than as indicated in the [Settlement] Agreement, there are
`no written or oral agreements or understandings, including any
`collateral agreements, between the parties, including but not
`limited to licenses, covenants not to sue, confidentiality
`agreements, or other agreements of any kind, that are made in
`connection with, or in contemplation of, the termination of this
`proceeding.
`
`Id.
`
`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 indicate that termination is proper, “because this proceeding is still in
`
`its early stages, with the petitioner reply not due until June 20, 2018.” Paper
`
`32, 3. The parties further assert that they “are unaware of any other matter
`
`
`1 Paper 32 is the public version of the Joint Motion, filed on June 4, 2018. A
`confidential version was filed as Paper 28.
`
`2
`
`
`
`IPR2017-01564
`Patent 7,775,278 B2
`
`before the USPTO that would be affected by the outcome of this
`
`proceeding.” Id.
`
`There are strong public policy reasons to favor settlement between the
`
`parties to a proceeding. Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48,756, 48,768 (Aug. 14, 2012). When, as here, we have not rendered a
`
`Final Written Decision on the merits, we generally expect that the
`
`proceeding will terminate after the filing of a settlement agreement. See id.
`
`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 the Challenged Claims of the ’278 patent.
`
`
`
`Accordingly, it is:
`
`ORDERED that the parties’ request that the settlement agreement
`
`(Ex. 2026) be treated as business confidential information and kept separate
`
`from the file of U.S. Patent No. 7,775,278 B2, under the provisions of
`
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is granted; and
`
`FURTHER ORDERED that the Joint Motion to Terminate
`
`Proceedings is granted, and this proceeding is hereby terminated.
`
`
`
`
`
`
`
`3
`
`
`
`IPR2017-01564
`Patent 7,775,278 B2
`
`For PETITIONER:
`
`Henry A. Petri
`James P. Murphy
`POLSINELLI PC
`hpetri@polsinelli.com
`jpmurphy@polsinelli.com
`
`
`For PATENT OWNER:
`
`Michael L. Kiklis
`Christopher Ricciuti
`Lisa Mandrusiak
`Marc K. Weinstein
`OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP
`CPDocketKiklis@oblon.com
`CPDocketRicciuti@oblon.com
`CPDocketMandrusiak@oblon.com
`CPDocketWeinstein@oblon.com
`
`
`4
`
`
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