`571-272-7822
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`IPR2017-01571, Paper 52
`IPR2017-01572, Paper 52
`IPR2017-01773, Paper 31
`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 CORP.,
`Patent Owner.
`____________
`
`Cases IPR2017-01571, IPR2017-01572, and IPR2017-01773
`Patent 8,646,529 B2
`____________
`
`
`Before PATRICK R. SCANLON, HYUN J. JUNG, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`JUNG, 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)
`
`
`
`
`
`
`
`
`IPR2017-01571, IPR2017-01572, and IPR2017-01773
`Patent 8,646,529 B2
`
`
`On December 15, 2017 and February 28, 2018, we instituted trial on
`claims 1–6, 8–13, and 15–20 (the “Challenged Claims”) of U.S. Patent No.
`8,646,529 B2 (the “’529 patent”). Paper 37, 20–21 in IPR2017-01571
`(instituting review of claims 1, 2, 4, 6, 8, 15, and 17); Paper 37, 17 in
`IPR2017-01572 (instituting review of claims 9–12); Paper 19, 20 in
`IPR2017-01773 (instituting review of claims 3, 5, 13, 16, and 18–20). On
`May 2, 2018, we modified the Decision on Institution for IPR2017-01773 to
`institute review of claims 7 and 14, thus adding these claims to the
`Challenged Claims of the ’529 patent. Paper 22 in IPR2017-01773.1
`Pursuant to our authorization, on June 4, 2018, the parties filed a Joint
`Motion to Terminate Proceedings (Paper 502; the “Joint Motion”) and a
`Joint Request to File Settlement Agreement as Business Confidential
`Information (Paper 48). 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 ’529 patent. Paper
`50, 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.
`
`
`1 Subsequent citations are to the record in IPR2017-01571, as the subsequent
`papers discussed below are substantially similar in each of IPR2017-01571,
`IPR2017-01572, and IPR2017-01773.
`2 Paper 50 is the public version of the Joint Motion, filed on June 4, 2018. A
`confidential version was filed on June 1, 2018 as Paper 47.
`
`
`
`2
`
`
`
`IPR2017-01571, IPR2017-01572, and IPR2017-01773
`Patent 8,646,529 B2
`
`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 25, 2018.” Paper
`50, 3. The parties further assert that they “are unaware of any other matter
`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 these proceedings without rendering a Final Written Decision as to
`the patentability of the Challenged Claims of the ’529 patent.
`
`Accordingly, it is:
`ORDERED that the parties’ request that the settlement agreements
`(Ex. 2026 in each proceeding) be treated as business confidential
`information and kept separate from the file of U.S. Patent No. 8,646,529 B2,
`under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is
`granted; and
`
`
`
`3
`
`
`
`IPR2017-01571, IPR2017-01572, and IPR2017-01773
`Patent 8,646,529 B2
`
`
`FURTHER ORDERED that the Joint Motion to Terminate
`Proceedings is granted, and the proceedings in IPR2017-01571,
`IPR2017-01572, and IPR2017-01773 are hereby terminated.
`
`
`
`
`PETITIONER:
`Henry A. Petri
`James P. Murphy
`POLSINELLI PC
`hpetri@polsinelli.com
`jpmurphy@polsinelli.com
`
`PATENT OWNER:
`Michael L. Kiklis
`Christopher Ricciuti
`Katherine Cappaert
`Lisa Mandrusiak
`Marc K. Weinstein
`OBLON, MCCLELLAN, MAIER & NEUSTADT, LLP
`CPDocketKiklis@oblon.com
`CPDocketRicciuti@oblon.com
`CPDocketcappaert@oblon.com
`cpdocketmandrusiak@oblon.com
`CPDocketWeinstein@oblon.com
`
`
`
`4
`
`
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