National Oilwell Varco, L.P.v.Parallel Separation Innovations LLC

Patent Trial and Appeal Board

Oct 27, 2015

08392054 (P.T.A.B. Oct. 27, 2015)

Trials@uspto.gov Paper 10
Tel: 571-272-7822 Entered: October 27, 2015

1
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

NATIONAL OILWELL VARCO, L.P.,
Petitioner,

v.

PARALLEL SEPARATION INNOVATIONS, LLC,
Patent Owner.
____________

Case IPR2015-01138
Patent 5,593,582
____________

Before MEREDITH C. PETRAVICK, SCOTT A. DANIELS, and
BARRY L. GROSSMAN, Administrative Patent Judges.

DANIELS, Administrative Patent Judge.
TERMINATION
Dismissing the Petition
37 C.F.R. §§ 42.5(a), 42.71(a)
Pursuant to our authorization, the parties filed on August 5, 2015 a
“Joint Motion to Terminate Proceeding” (Paper 7 (“Joint Motion”)), and a
settlement agreement (Ex. 2002 (“Agreement”)). Because the Agreement
contained no settlement terms or conditions apart from “agree[ing] to . . .
terminate” this IPR proceeding. On October 22, 2015 we issued an Order to
IPR2015-01138
Patent 5,593,582

Clarify Motion to Terminate (Paper 8, (“Order”)), instructing the parties to
“jointly certify in writing that there are no other written or oral agreements
or understandings between them made in connection with, or in
contemplation of, the termination of IPR2015-01138 or the challenge to the
patentability of U.S. Patent No. 5,593,582.” On October 22, 2015, the
parties filed their “Joint Certification re Settlement Agreement in Support of
Joint Motion to Terminate,” (Paper 9) signed by counsel of record stating
among other things that “there are no other written or oral agreements or
understandings, including any collateral agreements, between them.” We
are persuaded on this record that the Agreement complies with 35 U.S.C.
317(b) and 37 C.F.R. 42.74(b).
We have not instituted trial in this proceeding. Thus, this proceeding
is in its initial stages. The parties indicate with respect to their dispute
involving U.S. Patent 5,593,582 (“the ’582 patent”) that they have settled
their differences and agree to terminate the IPR and that:
no co-pending litigation remains. The District Court granted the
petitioner and patent owner’s joint motion to dismiss the last
remaining district court litigation. Ex. 2001, Parallel
Separation Innovations, Inc. v. National Oilwell Varco, Inc.,
No. 4:15-cv-00920 (S.D. Tex. filed July 23, 2015) (Doc. 86);
see also Dkt. 5, Related Matters (showing other related
litigations to have settled prior to the petition in this
proceeding). As such, there are no current litigants in the
District Court to ask the PTAB to revisit the same issues. See
Interthinx Inc. v. CoreLogic Solutions LLC, No. CBM2012–
00007, slip op. at 2 (Nov. 12, 2013) (Paper 47).

Paper 7, 1, see Ex. 2002. Under these circumstances, we determine that it is
appropriate to dismiss the petition. See 37 C.F.R. §§ 42.5(a), 42.71(a). This
IPR2015-01138
Patent 5,593,582

paper does not constitute a final written decision pursuant to 35 U.S.C.
§ 318(a).
It is
ORDERED that the parties’ “Joint Motion to Terminate Proceeding”
is granted to the extent that proceeding IPR2015-01138 is terminated; and
FURTHER ORDERED that the Petition for Inter Partes Review of
the above-referenced patent is dismissed.

For PETITIONER:

Robert M. Bowick, Jr.
RALEY & BOWICK, LLP
rbowick@raleybowick.com

Bradford T. Laney
RALEY & BOWICK, LLP
blaney@raleybowick.com

For PATENT OWNER:

Henry Pogorzelski
COLLINS, EDMONDS, POGORZELSKI,
SCHLATHER & TOWER, PLLC
hpogorzelski@cepiplaw.com

Andrew Tower
COLLINS, EDMONDS, POGORZELSKI,
SCHLATHER & TOWER, PLLC
atower@cepiplaw.com

Joshua S. Wyde
The Law Office of Joshua S Wyde
jwyde@wydelegal.com