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`IPR2017-01567, Paper 30
`IPR2017-01774, 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 IPR2017-01567 and IPR2017-01774
`Patent 7,934,556 B2
`____________
`
`
`Before HYUN J. JUNG, JEREMY M. PLENZLER, 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)
`
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`IPR2017-01567 and IPR2017-01774
`Patent 7,934,556 B2
`
`
`On January 12, 2018, we instituted trial on claims 1–13 (the
`“Challenged Claims”) of U.S. Patent No. 7,934,556 B2 (the “’556 patent”).
`Paper 16, 19 in IPR2017-01567 (instituting review of claims 1–3, 5, 7, 12,
`and 13); Paper 16, 20 in IPR2017-01774 (instituting review of claims 4, 6,
`and 8–11).1 Pursuant to our authorization, on June 4, 2018, the parties filed
`a Joint Motion to Terminate Proceedings (Paper 282; the “Joint Motion”)
`and a Joint Request to File Settlement Agreement as Business Confidential
`Information (Paper 26). 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 ’556 patent.
`Paper 28, 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
`
`
`1 Subsequent citations are to the record in IPR2017-01567, as the subsequent
`papers discussed below are substantially similar in each of IPR2017-01567
`and IPR2017-01774.
`2 Paper 29 is the public version of the Joint Motion, filed on June 4, 2018. A
`confidential version was filed on June 1, 2018 as Paper 25.
`
`
`
`2
`
`
`
`IPR2017-01567 and IPR2017-01774
`Patent 7,934,556 B2
`
`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 28, 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 ’556 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. 7,934,556 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 the proceedings in IPR2017-01567 and
`IPR2017-01774 are hereby terminated.
`
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`3
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`
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`IPR2017-01567 and IPR2017-01774
`Patent 7,934,556 B2
`
`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
`
`
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`4
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