`Tel: 571-272-7822
`
`
`
`Paper 16
`Entered: December 9, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`McCLINTON ENERGY GROUP, LLC, JAYCAR ENERGY GROUP LLC,
`SURF FRAC WELLHEAD EQUIPMENT CO., MOTOR MILLS SNUBBING
`LLC, STAN KEELING, and TONY D. McCLINTON,
`Petitioner,
`
`v.
`
`MAGNUM OIL TOOLS INTERNATIONAL, LTD.,
`Patent Owner.
`____________
`
`Case IPR2014-00993
`Patent 8,459,346 B2
`____________
`
`
`Before SALLY C. MEDLEY, MICHAEL R. ZECHER, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`
`MEDLEY, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`Petitioner filed a petition for inter partes review of the involved patent and
`Patent Owner filed a preliminary response. On December 1, 2014, we instituted
`trial.
`
`
`
`IPR2014-00993
`Patent 8,459,346 B2
`
`
`On December 5, 2014, the parties informed the Board that they have reached
`a settlement agreement. The parties seek authorization from the Board to file a
`joint motion to terminate the proceeding pursuant to 35 U.S.C. § 317.
`Generally, the Board expects that a proceeding will terminate after the filing
`of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed.
`Reg. 48,756, 48,768 (Aug. 14, 2012). The rule governing settlement indicates that
`any agreement between the parties made in connection with, or in contemplation
`of, the termination of a proceeding shall be in writing and filed with the Board.
`37 C.F.R. § 42.74. An inter partes review has been instituted in the proceeding.
`See Paper 14. The Board, however, does not have before it full briefing on the
`issues raised during the trial. Moreover, the Board has not entered a final written
`decision.
`Therefore, based on the facts of this proceeding, the parties are authorized
`to, and shall file, in addition to the settlement agreement, a joint motion to
`terminate the proceeding briefly explaining why termination is appropriate. The
`joint motion also should update the Board as to the status of any other matters
`involving the patent at issue. The parties also must file, as an exhibit, a true copy
`of their settlement agreement to terminate the proceeding. A redacted version of
`the settlement agreement will not be accepted as a true copy of the settlement
`agreement. Any request that the agreement be treated as business confidential
`information and be kept separate from the file of the involved patent must be filed
`with the settlement agreement. 37 C.F.R. § 42.74(c). The parties are directed to
`FAQ G2 on the Board’s website page at
`http://www.uspto.gov/ip/boards/bpai/prps.jsp for instructions on how to file their
`settlement agreement as confidential (e.g., uploading as “Parties and Board Only”).
`The joint motion to terminate and the settlement agreement shall be filed no
`
`
`
`IPR2014-00993
`Patent 8,459,346 B2
`
`later than December 12, 2014.
`Accordingly, it is
`ORDERED that the parties are authorized to file a joint motion to terminate
`the proceeding;
`FURTHER ORDERED that the joint motion is due no later than December
`12, 2014;
`FURTHER ORDERED that the joint motion shall be accompanied by a true
`copy of the settlement agreement as required by 37 C.F.R. § 42.74(b);
`FURTHER ORDERED that the parties may request that the settlement
`agreement be treated as business confidential information as specified by 37 C.F.R.
`§ 42.74(c); and
`FURTHER ORDERED that any confidential settlement agreement must be
`filed electronically via the Patent Review Processing System (PRPS) in accordance
`with the instructions provided on the Board’s website (e.g., uploading as “Parties
`and Board Only”).
`
`
`
`
`
`
`IPR2014-00993
`Patent 8,459,346 B2
`
`FOR PETITIONER:
`FOR PETITIONER:
`
`Jason Engel
`K&L GATES LLP
`jason.engel.PTAB@klgates.com
`
`
`FOR PATENT OWNER:
`
`Robb D. Edmonds
`N. Alexander Nolte
`EDMONDS & NOLTE, P.C.
`redmonds@edmondsnolte.com
`anolte@edmondsnolte.com
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
