`571-272-7822
`
`Paper 40
`Date: May 8, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`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.
`
`IPR2023-00804 (Patent 10,976,016 B2)
`IPR2024-00005 (Patent 10,900,626 B2)1
`
`Before BRIAN J. MCNAMARA, NORMAN H. BEAMER,
`KEVIN C. TROCK, and JULIA HEANEY, Administrative Patent Judges.2
`
`HEANEY, Administrative Patent Judge.
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`1 The Board is entering the same Order in both captioned cases. The parties
`are not authorized to use this combined case caption.
`2 This is not an expanded panel. Three of the listed judges are on each case.
`
`
`
`IPR2023-00804 (Patent 10,976,016 B2)
`IPR2024-00005 (Patent 10,900,626 B2)
`With the Board’s authorization, Petitioner and Patent Owner
`(collectively referred to as “the Parties”) filed Joint Motions to Terminate in
`the above-identified proceedings. IPR2023-00804, Paper 37;
`IPR2024-00005, Paper 11 (collectively, “Joint Motion”). In support of the
`Motions, the Parties filed a copy of a Settlement Agreement
`(IPR2023-00804, Ex. 1057; IPR2024-00005, Ex. 1061), as well as Joint
`Requests to Treat the Settlement Agreement as Business Confidential
`Information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`IPR2023-00804, Paper 38; IPR2024-00005, Paper 13 (collectively, “Joint
`Request”).
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`this chapter shall be terminated with respect to any petitioner upon the joint
`request of the petitioner and the patent owner, unless the Office has decided
`the merits of the proceeding before the request for termination is filed.”
`Section 35 U.S.C. § 317(a) also provides that if no petitioner remains in the
`inter partes review, the Office may terminate the review.
`In the Joint Motion, the Parties represent that they have reached an
`agreement to jointly seek termination of the above-identified proceedings,
`and that the filed copy of the Settlement Agreement is a true and complete
`copy. Joint Motion, 2–3.3 The Parties further represent that their settlement
`agreement resolves all currently pending Patent Office and District Court
`proceedings between the Parties involving the above-identified patents. Id.
`at 2.
`
`We have not yet decided the merits of the above-identified
`proceeding, and final written decisions have not been entered.
`
`
`3 For convenience, we cite solely to the papers in IPR2023-00804.
`
`
`
`IPR2023-00804 (Patent 10,976,016 B2)
`IPR2024-00005 (Patent 10,900,626 B2)
`Notwithstanding that the proceedings have moved beyond the preliminary
`stage, the Parties have shown adequately that termination of the proceedings
`is appropriate. Under these circumstances, we determine that good cause
`exists to terminate the proceedings with respect to the Parties.
`The Parties also filed Joint Requests that the Settlement Agreement be
`treated as business confidential information and be kept separate from the
`file of the respective patents involved in these proceedings. Joint Request, 2.
`After reviewing the Settlement Agreement between Petitioner and Patent
`Owner, we find that the Settlement Agreement contains confidential
`business information regarding the terms of settlement. We determine that
`good cause exists to treat the Settlement Agreement between Petitioner and
`Patent Owner as business confidential information pursuant to
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`The Parties further request that “should a third party submit a written
`request to the Board for a copy of the settlement agreement,” the Parties
`receive “notification of the request and an opportunity to respond thereto.”
`Joint Request, 2. We have no such procedure to serve upon the Parties a
`request for access to the Settlement Agreement, and, further, our regulations
`do not require us to do so. Accordingly, we deny this portion of the Parties’
`Joint Requests.
`This Order does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`
`ORDER
`
`Accordingly, it is:
`ORDERED that the Joint Motions to Terminate are granted;
`FUTHER ORDERED that IPR2023-00804 and IPR2024-00005 are
`terminated; and
`
`
`
`IPR2023-00804 (Patent 10,976,016 B2)
`IPR2024-00005 (Patent 10,900,626 B2)
`FURTHER ORDERED that the Joint Requests are granted-in-part,
`and the Settlement Agreement (IPR2023-00804, Ex. 1057; IPR2024-00005,
`Ex. 1061) shall be treated as business confidential information, shall be kept
`separate from the files of the challenged patents and made available only
`under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`
`
`
`IPR2023-00804 (Patent 10,976,016 B2)
`IPR2024-00005 (Patent 10,900,626 B2)
`FOR PETITIONER:
`
`Gregory Porter
`Daniel Shanley
`ANDREWS KURTH LLP
`gregporter@HuntonAK.com
`dshanley@HuntonAK.com
`
`FOR PATENT OWNER:
`
`Dion Bregman
`Jason White
`Clay Hawes
`MORGAN, LEWIS & BOCKIUS LLP
`dion.bregman@morganlewis.com
`jason.white@morganlewis.com
`erik.hawes@morganlewis.com
`
`
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