`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________________________________________________
`
`DIAMOND OFFSHORE DRILLING, INC., AND
`DIAMOND OFFSHORE COMPANY
`
`Petitioners
`
`v.
`
`TRANSOCEAN OFFSHORE DEEPWATER DRILLING INC.
`
`Patent Owner
`
`U.S. Patent No. 6,068,069
`Issue Date: May 30, 2000
`Title: MULTI-ACTIVITY OFFSHORE EXPLORATION AND/OR
`DEVELOPMENT DRILLING METHOD AND APPARATUS
`
`
`
`
`
`
`
`
`JOINT MOTION TO TERMINATE UNDER 37 C.F.R. § 42.71
`
`
`Case No. IPR2018-01175
`
`Paper No. 8
`
`
`
`
`
`
`IPR2018-01175 - Paper No. 8
`U.S. Patent No. 6,068,069
`
`
`
`As authorized by the Board in an e-mail sent on September 27, 2018,
`
`pursuant to 37 C.F.R. §§ 42.71 and 42.74, Petitioner and Patent Owner jointly
`
`request that the inter partes review of U.S. Patent No. 6,068,069 be terminated.
`
`The parties have settled their dispute and executed a settlement agreement to
`
`terminate this proceeding and the parties’ related district court litigation:
`
`Transocean Offshore Deepwater Drilling Inc. v. Diamond Offshore Drilling, Inc.,
`
`Case No. 4:17-cv-2647 (S.D. Tex.).
`
`The parties’ settlement agreement is in writing, and a true and correct copy
`
`is being filed under 37 C.F.R. § 42.74(b). The parties are also concurrently filing a
`
`joint request to treat the settlement agreement as business confidential information
`
`and keep it separate from the files of the IPR and the involved patent under 35
`
`U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`Dismissal of this proceeding under 37 C.F.R. § 42.71(a) is proper because
`
`the Board has yet to issue an institution decision and these proceedings are still at
`
`an early stage. See Samsung Elecs. Co. v. Fundamental Innovation Sys. Int’l, Ltd.,
`
`IPR2018-00605 (PTAB July 16, 2018) (Paper No. 10). Further, all disputes
`
`between the parties regarding U.S. Patent No. 6,068,069 have been resolved.
`
`Accordingly, the parties respectfully request termination of this proceeding.
`
`
`
`
`
`2
`
`
`
`IPR2018-01175 - Paper No. 8
`U.S. Patent No. 6,068,069
`
`Respectfully submitted,
`
`Dated: September 27, 2018
`
`/s/ Dion M. Bregman
`Dion M. Bregman, Reg. No. 45,645
`Morgan, Lewis & Bockius
`1400 Page Mill Road
`Palo Alto, CA 94304
`
`
`Attorneys for Patent Owner
`Transocean Offshore Deepwater
`Drilling Inc.
`
`
`
`/s/ Matthew G. Reeves
`Matthew G. Reeves (Reg. No. 39,339)
`Locke Lord LLP
`2800 JPMorgan Chase Tower
`600 Travis
`Houston, Texas 77002
`
`Attorneys for Petitioners
`Diamond Offshore Drilling, Inc., and
`Diamond Offshore Company
`
`
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2018-01175 - Paper No. 8
`U.S. Patent No. 6,068,069
`
`
`
`Certificate of Service
`
`Pursuant to 37 C.F.R. §42.6(e), the undersigned hereby certifies that on
`
`September 27, 2018, a complete and entire copy of the foregoing Joint Motion to
`
`Terminate was electronically served in its entirety on the Patent Owner’s below-
`
`listed counsel of record:
`
`Dion M. Bregman (Reg. No. 45,645)
`MORGAN, LEWIS & BOCKIUS LLP
`1400 Page Mill Road
`Palo Alto, CA 94304
`Tel.: +1.650.843.7519
`Fax: +1.650.843.4001
`dion.bregman@morganlewis.com
`
`Bradford A. Cangro (Reg. No. 58,478)
`MORGAN, LEWIS & BOCKIUS LLP
`1111 Pennsylvania Avenue, NW
`Washington, DC 20004
`Tel.: +1.202.739.5088
`Fax: +1.202.739.3001
`bradford.cangro@morganlewis.com
`
`
`
`Dated: September 27, 2018
`
`
`
`
`/s/ Matthew G. Reeves
`Matthew G. Reeves (Reg. No. 39,339)
`Locke Lord LLP
`2800 JPMorgan Chase Tower
`600 Travis
`Houston, Texas 77002
`
`Attorneys for Petitioners
`Diamond Offshore Drilling, Inc., and
`Diamond Offshore Company
`
`
`4
`
`
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