`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`ENSIGN US SOUTHERN DRILLING LLC
`Petitioner
`v.
`C&M OILFIELD RENTALS, LLC
`D/B/A C-MOR ENERGY SERVICES
`Patent Owner of Record
`
`________________________
`Case No. IPR2023-00804
`
`Patent No. 10,976,016
`_______________________________
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`UNDER 35 U.S.C. § 317
`
`
`
`
`
`
`DMS 306579911v2
`
`
`
`IPR2023-00804
`JOINT MOTION TO TERMINATE PROCEEDING
`Pursuant to 35 U.S.C. § 317, Patent Owner C&M Oilfield Rentals, LLC
`
`d/b/a C-MOR Energy Services and Petitioner Ensign US Southern Drilling LLC
`
`(collectively, the “Parties”) jointly request termination of this proceeding,
`
`IPR2023-00804 directed to U.S. Patent No. 10,976,016 (“ʼ016 Patent”). In
`
`accordance with 37 C.F.R. 42.20(b), the Parties sought authorization to file this
`
`motion, and the Board provided such authorization by email on April 25, 2024.
`
`Inter partes review of the ’016 Patent was instituted on October 26, 2023.
`
`See Paper No. 8. Oral argument is not set to occur until July 30, 2024. Paper
`
`No. 9. There has been no final written decision.
`
`Petitioner and Patent Owner have executed a confidential settlement
`
`agreement, which settled their dispute regarding the ʼ016 Patent, including this
`
`proceeding and Patent Owner’s assertion of the ʼ016 Patent in the related district
`
`court litigation, C&M Oilfield Rentals, LLC d/b/a C-MOR Energy Services v.
`
`Ensign US Southern Drilling LLC, Case No. 4:22-CV-00965 (S.D. Tex.). In
`
`accordance with the Parties’ agreement, the related district court litigation will
`
`be dismissed.
`
`Termination is proper under 35 U.S.C. § 317(a) because the Parties are
`
`jointly requesting termination, and the Office has not yet “decided the merits of
`
`the proceeding before the request for termination is filed.” See 35 U.S.C. §
`
`317(a); Consolidated Trial Practice Guide, 86 (Nov. 2019) (“There are strong
`
`
`DMS 306579911v2
`
`2
`
`
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`IPR2023-00804
`JOINT MOTION TO TERMINATE PROCEEDING
`public policy reasons to favor settlement between the parties to a proceeding.”).
`
`The Parties agree that neither Patent Owner nor Petitioner will be
`
`prejudiced by the termination of this proceeding. The Parties further confirm
`
`that the grant of this Joint Motion to Terminate will fully dispose of IPR2023-
`
`00804.
`
`In accordance with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), the
`
`Parties’ settlement agreement has been made in writing, and a true copy of the
`
`agreement is being filed as Exhibit 1057, along with a joint motion under 37
`
`C.F.R. § 42.74(c) to treat the settlement agreement as business confidential
`
`information and for it to be kept separate from the files of the involved patent
`
`in this proceeding.
`
`The Parties certify that there are no other collateral agreements or
`
`understandings, oral or written, between the parties made in connection with, or
`
`in contemplation of, the termination of this proceeding.
`
`For the foregoing reasons, the Parties jointly request termination of this
`
`inter partes review proceeding.
`
`
`Dated: April 30, 2024
`
`
`
`DMS 306579911v2
`
`
`
`
`
`Respectfully Submitted,
`
`/Gregory L. Porter/
`Gregory L. Porter, Reg. No. 40,131
`gregporter@andrewskurth.com
`Hunton Andrews Kurth LLP
`600 Travis Ste. 4200
`3
`
`
`
`IPR2023-00804
`JOINT MOTION TO TERMINATE PROCEEDING
`Houston, TX 77002
`Telephone: 713-449-9687
`Facsimile: 713-220-4285
`Attorneys for
`Petitioner Ensign US
`Southern Drilling LLC
`
`/Dion M. Bregman/
`Dion M. Bregman, Reg. No. 45,645
`Morgan, Lewis & Bockius LLP
`1400 Page Mill Road
`Palo Alto, CA 94304-1124
`T: 650-843-7519
`F: 650-843-4001
`Attorneys for Patent Owner
`C&M Oilfield Rentals, LLC
`d/b/a C-Mor Energy Services
`
`
`
`
`
`
`
`
`DMS 306579911v2
`
`4
`
`
`
`IPR2023-00804
`JOINT MOTION TO TERMINATE PROCEEDING
`CERTIFICATE OF SERVICE ON PATENT OWNER
`UNDER 37 C.F.R. § 42.6
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on April 30,
`2024 the foregoing:
` JOINT MOTION TO TERMINATE PROCEEDING
`
`was served via electronic filing with the Board and via Electronic Mail
`at the designated email for the practitioners of record for Patent Owner:
`
`MLB-CM-IPR-Team@morganlewis.com
`
`/Gregory L. Porter/
`Gregory L. Porter, Reg. No. 40,131
`
`ATTORNEY FOR PETITIONER
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`DMS 306579911v2
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`5
`
`
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