`_______________
`
`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 No. IPR2014-00993
`Patent No. 8,459,346 B1
`_______________
`
`JOINT MOTION TO TERMINATE
`UNDER 35 U.S.C. § 317
`
`JOINT REQUEST TO KEEP AGREEMENT CONFIDENTIAL
`UNDER 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
`
`
`
`
`
`IPR2014-00993
`
`STATEMENT OF RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 317(a), 37 C.F.R. § 42.72, and the Board’s
`
`December 9, 2014 Order authorizing the parties to file this motion (see Paper No.
`
`16), Petitioner and Patent Owner jointly request termination of Inter Partes
`
`Review IPR2014-00993 of U.S. Patent No. 8,459,346 B1 and request that the
`
`agreement discussed below (a) be treated as business confidential information, (b)
`
`be kept separate from the file of the involved patent, and (c) be made available
`
`only as permitted pursuant to the provisions of 35 C.F.R. § 317(b) and 37 C.F.R. §
`
`42.72(c).
`
`STATEMENT OF FACTS
`
`This review was just recently instituted on December 1, 2014 (see Paper No.
`
`14) and therefore is still in the early stages of the trial. The parties have settled
`
`their disputes and have reached an agreement, in writing, to dismiss the related
`
`district court litigation, and terminate this inter partes review proceeding. On
`
`December 8, 2014, Petitioner and Patent Owner entered into a confidential
`
`Settlement Agreement, which is being filed herewith as Exhibit 1029. There is no
`
`other pending litigation between the Petitioner and Patent Owner that addresses
`
`U.S. Patent No. 8,459,346 B1. Therefore, termination of the present Inter Partes
`
`Review would resolve all presently pending disputes between the parties pertaining
`
`to U.S. Patent No. 8,459,346 B1.
`
`
`
`
`
`
`
`IPR2014-00993
`
`I.
`
`Termination of IPR2014-00993 is Appropriate
`
`ARGUMENT
`
`The Board should terminate IPR2014-00993 because the review is still in its
`
`early stages, the Board has not yet finally decided any of the merits, no motions are
`
`outstanding, the Petitioner and Patent Owner have agreed to end the related district
`
`court litigation, and both Petitioner and Patent Owner agree that this inter partes
`
`review should be terminated.
`
`II. A True Copy of the Written Settlement Agreement is Attached
`
`As required under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), a true copy
`
`of the written Settlement Agreement resolving the dispute underlying this review
`
`has been made in writing, and is contemporaneously filed herewith as Exhibit
`
`1029.
`
`III. Request that Agreement Be Treated as Confidential and Kept Separate
`
`Petitioner and Patent Owner jointly request that this Settlement Agreement
`
`(Ex. 1029): (a) be treated as business confidential information, (b) be kept separate
`
`from the file of the involved patent, and (c) be made available only as permitted,
`
`pursuant to the provisions of 35 C.F.R. § 317(b) and 37 C.F.R. § 42.74(c).
`
`
`
`
`
`
`
`
`
`IPR2014-00993
`
`IV. Summary
`
`For the foregoing reasons, Petitioner and Patent Owner respectfully request
`
`termination of Inter Partes Review No. IPR2014-00993 involving U.S. Patent No.
`
`8,459,346 B1, and jointly request that the Settlement Agreement (Ex. 1029) be
`
`kept confidential and separate. Should this review be terminated, as jointly
`
`requested by the parties, no estoppel under § 315(e) shall attach to Petitioner. 35
`
`U.S.C. § 317(a).
`
`The Patent and Trial Appeal Board is hereby authorized to charge any fees
`
`associated with the filing to Deposit Account 02-1818.
`
`Date: December 9, 2014
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`By: /Jason A. Engel/
`Reg. No. 51,654
`Jason A. Engel
`K&L GATES LLP
`e-mail: jason.engel@klgates.com
`70 W. Madison St., Suite 3100
`Chicago, Illinois 60602
`
`Lead Counsel for Petitioner
`
`
`
`
`
`By: /Robb D. Edmonds/
`Reg. No. 46,681
`Robb D. Edmonds
`EDMONDS & NOLTE, P.C.
`e-mail: redmonds@edmondsnolte.com
`2625 Bay Area Blvd., Suite 530
`Houston, Texas 77058
`
`Lead Counsel for Patent Owner
`
`
`
`
`
`
`
`
`
`IPR2014-00993
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing Joint Motion to
`Terminate and Joint Request to Keep Separate were electronically served via e-
`mail on December 9, 2014 in its entirety on:
`
`Robb D. Edmonds
`redmonds@edmondsnolte.com
`
`N. Alexander Nolte
`anolte@edmondsnolte.com
`
`Lead and Back-up Counsel for Patent Owner
`
`
`
`
`
`
`By: /Jason A. Engel/
`Reg. No. 51,654
`Jason A. Engel
`K&L GATES LLP
`e-mail: jason.engel@klgates.com
`70 W. Madison St., Suite 3100
`Chicago, IL 60602
`
`Lead Counsel for Petitioner
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