`Tel: 571-272-7822
`
`Paper No. 38
`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.
`____________
`
`Cases IPR2017-01575, IPR2017-01577, and IPR2017-01772
`Patent 8,905,133 B2
`____________
`
`
`
`
`Before PATRICK R. SCANLON, HYUN J. JUNG, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`PLENZLER, Administrative Patent Judge.
`
`DECISION
`Granting Joint Motion to Terminate Proceedings
`35 U.S.C. § 317(a); 37 C.F.R. § 42.72
`Granting Request to Treat Settlement Agreement
`as Confidential Business Information
`35 U.S.C. § 317(b); 37 C.F.R. § 42.74(c)
`
`
`
`
`
`
`IPR2017-01575, IPR2017-01577, and IPR2017-01772
`Patent 8,905,133 B2
`
`
`We instituted trial on claims 1–45 (collectively, the “Challenged
`Claims”) of U.S. Patent No. 8,905,133 B2 (the “’133 patent”). IPR2017-
`01575, Paper 16, 18–19; IPR2017-01577, Paper 16, 18–19; IPR2017-01772,
`Paper 12, 9–10.1 Pursuant to our authorization, on June 5, 2018, the parties
`filed a Joint Motion to Terminate Proceedings (Paper 352; the “Joint
`Motion”) and a Joint Motion to File Settlement Agreement as Confidential
`(Paper 33). 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 ’133 patent. Paper
`35, 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
`
`
`1 Subsequent citations are to the record in IPR2017-01575, as the subsequent
`papers discussed below are substantially similar in each of IPR2017-01575, -
`01577, and -01772.
`2 Paper 35 is the public version of the Joint Motion. A confidential version
`was filed as Paper 32.
`
`2
`
`
`
`IPR2017-01575, IPR2017-01577, and IPR2017-01772
`Patent 8,905,133 B2
`
`its early stages, with the patent owner response not due until June 18, 2018.”
`Paper 35, 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 this proceeding without rendering a Final Written Decision as to
`the patentability of the Challenged Claims of the ’133 patent.
`
`Accordingly, it is:
`ORDERED that the parties’ request that the settlement agreements
`(IPR2017-01575, Ex. 2026; IPR2017-01577, Ex. 2026; IPR2017-01772, Ex.
`2026) be treated as business confidential information and kept separate from
`the files of these proceeding and of U.S. Patent No. 8,905,133 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 IPR2017-01575, IPR2017-01577, and IPR2017-
`01772 are hereby terminated.
`
`
`
`
`
`
`3
`
`
`
`IPR2017-01575, IPR2017-01577, and IPR2017-01772
`Patent 8,905,133 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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