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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`LEE SPECIALTIES INC.,
`Petitioner,
`
`v.
`
`FHE USA LLC,
`Patent Owner
`
`———————
`Case IPR2019-01366
`U.S. Patent No. 10,030,461
`_____________________
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`JOINT MOTION TO TERMINATE PROCEEDINGS
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`Joint Motion to Terminate Proceedings
`IPR2019-01366 / U.S. Patent 10,030,461
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`Pursuant to 35 U.S.C. § 317(a), Petitioner Lee Specialties Inc. (“Lee
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`Specialties”) and Patent Owner FHE USA, LLC (“FHE USA”) (collectively, the
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`“Parties”) jointly request termination of the instant Inter Partes Review of U.S.
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`Patent No. 10,030,461 (“the ’461 Patent”). The filing of this request was authorized
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`by the Board via e-mail dated February 14, 2020.
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`The Parties have settled their dispute with respect to the ’461 Patent and have
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`reached agreement to terminate this Inter Partes Review. The Settlement Agreement
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`between Lee Specialties and FHE USA has been made in writing, and a true and
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`correct copy shall be filed with this Office pursuant to 35 U.S.C. § 317(b). See
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`Exhibit LSI-1038. There are no collateral agreements or understandings made in
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`connection with, or in contemplation of, the termination of this proceeding.
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`Therefore, Petitioner and Patent Owner respectfully request termination of
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`Inter Partes Review Case No. IPR2019-01366.
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`Respectfully submitted,
`
`/Gregory P. Webb/
`Gregory P. Webb
`Lead Counsel for Petitioner
`Registration No. 59,859
`
`/s/ Douglas R. Nemec
`Douglas R. Nemec
`Lead Counsel for Patent Owner
`Registration No. 41,219
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`Date: February 17, 2020
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`Joint Motion to Terminate Proceedings
`IPR2019-01366 / U.S. Patent 10,030,461
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`PETITIONER’S UPDATED EXHIBIT LIST
`FEBRUARY 17, 2020
`Exhibit Description
`
`U.S. Patent No. 10,030,461 to Johansen et al. (the “’461 Patent”)
`Prosecution History of the ’461 Patent
`Declaration of Benton F. Baugh, Ph.D., P.E.
`Curriculum Vitae of Benton F. Baugh, Ph.D., P.E.
`U.S. Patent No. 3,096,999 to Ahlstone et al. (“ Ahlstone”)
`U.S. Patent No. 7,159,652 to McGuire et al. (“McGuire”)
`U.S. Patent No. 8,272,444 to Baugh (“Baugh”)
`Declaration of Andrew M. Nelson
`ANSI/API Specification 16A (3d edition), Specification for Drill-
`Through Equipment (2004) (“API 16A”)
`Declaration of Dr. Ingrid Hsieh-Yee
`U.S. Patent No. 4,225,160 to Ortloff (“Ortloff”)
`Section 4: Pressure Control Equipment of Elmar’s Wireline
`Equipment Catalog 2003 (“Elmar PCE”)
`Affidavit of Chris Butler
`U.S. Patent Application Publication No. 2012/0012341 (“White”)
`U.S. Patent 8,746,345 to Kotrala et al. (“Kotrala”)
`U.S. Patent Application Publication No. 2014/0034337 to Van
`Wijk (“Van Wijk”)
`Joint Claim Construction Chart, Dkt. No. 36, Case No. 5:18-cv-
`00715-OLG (W.D. Tex. March 25, 2019)
`Defendant LSI’s Opening Claim Construction Brief, Dkt. No. 38
`Exhibit 2 to LSI’s Opening Claim Construction Brief – Baugh
`Declaration, Dkt. No. 38
`Exhibit 2B to LSI’s Opening Claim Construction Brief –
`Merriam-Webster’s Collegiate Dictionary (11th Edition)
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`3
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`Exhibit #
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`LSI-1001
`LSI-1002
`LSI-1003
`LSI-1004
`LSI-1005
`LSI-1006
`LSI-1007
`LSI-1008
`LSI-1009
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`LSI-1010
`LSI-1011
`LSI-1012
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`LSI-1013
`LSI-1014
`LSI-1015
`LSI-1016
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`LSI-1017
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`LSI-1018
`LSI-1019
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`LSI-1020
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`Joint Motion to Terminate Proceedings
`IPR2019-01366 / U.S. Patent 10,030,461
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`Exhibit C to LSI’s Opening Claim Construction Brief – McGraw-
`Hill Dictionary of Engineering (2nd edition)
`Plaintiff’s Opening Claim Construction Brief, Dkt. No. 39
`Plaintiff’s Initial Proposed Claim Constructions
`Plaintiff’s Amended Modified Claim Constructions
`Defendant Lee Specialties Inc.’s Responsive Claim-Construction
`Brief, Dkt. No. 41
`Plaintiff’s Responsive Claim Construction Brief, Dkt. No. 42
`Plaintiff FHE’s Supplemental Responses and Objections to
`Defendant’s First Set of Interrogatories
`Supplemental Exhibit A to FHE’s Responses and Objections to
`Defendant’s First Set of Interrogatories
`Second Amended Complaint for Patent Infringement
`Defendant Lee Specialties Inc.’s Supplemental Objections and
`Responses to Plaintiff FHE USA LLC’s First Set of
`Interrogatories (Nos. 4-7)
`Joint Motion to Amend Schedule, Dkt. No. 34 in FHE USA LLC
`v. Express Supply & Rental, LLC (W.D. La.)
`Defendant Lee Specialties Inc.’s Supplemental Opening Claim-
`Construction Brief, Dkt. No. 55
`Exhibit 11 to Defendant Lee Specialties Inc.’s Supplemental
`Opening Claim-Construction Brief – Baugh Supplemental
`Declaration, Dkt. No. 55-2
`Defendant Lee Specialties Inc.’s Supplemental Responsive
`Claim-Construction Brief, Dkt. No. 60
`FHE’s Unopposed Motion for Leave to File Second Amended
`Complaint and to Amend Schedule, Dkt. No. 46
`Order on FHE USA LLC and Express Supply & Rental LLC’s
`Joint Motion to Dismiss With Prejudice; Case No. 6:18-cv-0913-
`RRS-CBW; Dkt. No. 37
`Order Cancelling Markman Hearing; Case No. 5:18-cv-00715-
`ADA; Dkt. No. 63
`Settlement Agreement
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`LSI-1021
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`LSI-1022
`LSI-1023
`LSI-1024
`LSI-1025
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`LSI-1026
`LSI-1027
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`LSI-1028
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`LSI-1029
`LSI-1030
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`LSI-1031
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`LSI-1032
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`LSI-1033
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`LSI-1034
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`LSI-1035
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`LSI-1036
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`LSI-1037
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`LSI-1038
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`4
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`Joint Motion to Terminate Proceedings
`IPR2019-01366 / U.S. Patent 10,030,461
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`Lee Specialties Inc.
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`Petitioner
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`§
`§
`§
`§
`§
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`Petition for Inter Partes Review
`
`IPR2019-01366
`U.S. Patent No. 10,030,461
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`
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`CERTIFICATE OF SERVICE
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`The undersigned certifies, in accordance with 37 C.F.R. § 42.6, that service
`was made on the Patent Owner as detailed below.
`Date of service February 17, 2020
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`Manner of service E-Mail: douglas.nemec@skadden.com
`rachel.blitzer@skadden.com
`christopher.mckinley@skadden.com
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`Documents served Joint Motion to Terminate Proceedings
`Exhibit LSI-1038
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`Persons served Douglas R. Nemec
`Rachel R. Blitzer
`Skadden, Arps, Slate, Meagher & Flom LLP
`4 Times Square
`New York, NY 10036
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`Christopher B. McKinley
`Skadden, Arps, Slate, Meagher & Flom LLP
`525 University Avenue
`Palo Alto, CA 94301
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`/Gregory P. Webb/
`Gregory P. Webb
`Lead Counsel for Petitioner
`Registration No. 59,859
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