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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`WEATHERFORD INTERNATIONAL, LLC
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`Petitioner,
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`v.
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`BAKER HUGHES OILFIELD OPERATIONS, LLC
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`Patent Owner.
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`Case IPR2019-00708
`Patent RE46,137
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`JOINT MOTION TO TERMINATE INTER PARTES REVIEW
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`Weatherford International v. Baker Hughes
`Patent No. RE46,137 - IPR2019-00708
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`I. STATEMENT OF THE PRECISE RELIEF REQUESTED
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, Petitioner Weatherford
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`International, LLC (“Weatherford”) and Patent Owner Baker Hughes Oilfield
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`Operations, LLC (“Baker Hughes”) jointly move to terminate this inter partes
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`review (IPR). The Board authorized the filing of this Joint Motion in an email dated
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`August 25, 2020.
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`II. STATEMENT OF REASONS FOR THE RELIEF REQUESTED
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`A.
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`The Parties Settled the Underlying Dispute
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`The parties settled their underlying dispute and reached agreement to
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`terminate this IPR in a written settlement agreement. A true copy of the settlement
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`agreement is submitted as Exhibit 1050 in accordance with 35 U.S.C. § 317(a) and
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`37 C.F.R. § 42.74(b). The parties request that the settlement agreement be treated
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`as business confidential information, to be kept separate from the file of the involved
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`patent, and to be made available only to Federal Government agencies on written
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`request, or to any person on a showing of good cause pursuant to 35 U.S.C. § 317(b)
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`and 37 C.F.R. § 42.74(c). There are no collateral agreements or understandings
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`made in connection with the termination of this IPR.
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`Termination of this proceeding is being requested concurrently with a similar
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`request in IPR2019-00768, a second proceeding involving the same U.S. Patent No.
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`RE46,137. Additionally, the parties are jointly requesting dismissal of Baker
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` -1-
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`
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`Weatherford International v. Baker Hughes
`Patent No. RE46,137 - IPR2019-00708
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`Hughes Oilfield Operations, LLC v. Weatherford International, LLC, No. 4-18-cv-
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`4797 (S.D. Tex. 2018) (“Court Action”), which also involves U.S. Patent No.
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`RE46,137. Other than IPR2019-00708, IPR2019-00768, and the Court Action, there
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`are no litigation matters or proceedings between the parties involving U.S. Patent
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`No. RE46,137.
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`No other petitioners remain in this IPR. Thus, the parties respectfully submit
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`that termination of the IPR is appropriate under 35 U.S.C. § 317 and 37 C.F.R.
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`§ 42.74(a).
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`B.
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`The Co-pending Ex Parte Reexamination Preserves the Public’s
`Interest in the Status of the Challenged Claims
`In ex parte reexamination app. no. 90/014,418, the Office is considering the
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`patentability of each of the challenged claims (Order Granting Request for Ex Parte
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`Reexamination at 10), and it will do so in view of this IPR’s record (see 35 U.S.C.
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`§ 303(a) (“On his own initiative … the Director may determine whether a substantial
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`new question of patentability is raised”)), which has been or will be submitted in an
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`information disclosure statement. Thus, the status of the challenged claims will be
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`decided with or without a final written decision in this IPR.
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`Weatherford International v. Baker Hughes
`Patent No. RE46,137 - IPR2019-00708
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`ARMOND WILSON LLP
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`Dated: August 25, 2020
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`Dated: August 25, 2020
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`By: /Douglas R. Wilson/
`Douglas R. Wilson (Reg. No. 54,542)
`Attorney for Petitioner
`Weatherford International, LLC
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`NORTON ROSE FULBRIGHT US LLP
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`By: /Mark T. Garrett/
`Mark T. Garrett (Reg. No. 44,699)
`Attorney for Patent Owner
`Baker Hughes Oilfield Operations, LLC
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`Weatherford International v. Baker Hughes
`Patent No. RE46,137 - IPR2019-00708
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`CERTIFICATE OF SERVICE
`The undersigned certifies that pursuant to 37 C.F.R. § 42.6(e), true copies of
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`this JOINT MOTION TO TERMINATE INTER PARTES REVIEW and
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`EXHIBIT 1050 are being served electronically on August 25, 2020 to the following
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`lead and back-up counsel for Patent Owner at the following email addresses:
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`Mark T. Garrett
`Mark.garrett@nortonrosefulbright.com
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`Eagle H. Robinson
`Eagle.robinson@nortonrosefulbright.com
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`Jeremy Albright
`Jeremy.albright@nortonrosefulbright.com
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`Michael Pohl
`Michael.pohl@nortonrosefulbright.com
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`By: /Douglas R. Wilson/
`Douglas R. Wilson (Reg. No. 54,542)
`Attorney for Petitioner
`Weatherford International, LLC
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` -4-
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