WesternGeco, L.L.C.v.PGS Geophysical as

Patent Trial and Appeal Board

Jun 1, 2015

10662106 (P.T.A.B. Jun. 1, 2015)

Trials@uspto.gov Paper No. 13
571-272-7822 Entered: June 1, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

WESTERNGECO LLC,
Petitioner,

v.

PGS GEOPHYSICAL AS,
Patent Owner.
____________

Case IPR2015-00317
Patent 6,925,386
____________

Before JUSTIN BUSCH, MITCHELL G. WEATHERLY, and
BEVERLY M. BUNTING, Administrative Patent Judges.

BUNTING, Administrative Patent Judge.

DECISION
Joint Motion to Terminate
37 C.F.R. §§ 42.71, 42.72, 42.74
Case IPR2015-00317
Patent 6,925,386

2

On May 22, 2015, WesternGeco LLC, and PGS Geophysical AS
(collectively referred to as “the Parties”) filed a joint motion to terminate
this inter partes review involving Patent 6,925,386 (“the ’386 Patent”).
Paper 10 (“Joint Motion to Terminate Proceeding”). Authorization to file
the motion was given in a phone conference between the Board and the
Parties on May 22, 2015. Paper 9. Along with the Joint Motion to
Terminate Proceeding, the Parties filed a copy of their written settlement
agreement (Ex. 1022), as well as a joint request (Paper 11) to have their
settlement agreement treated as business confidential information under
C.F.R. § 42.74(c). The Parties state in their Joint Motion to Terminate
Proceeding that termination is appropriate because the parties have resolved
their dispute as to the ’386 patent, and that:
there are no written or oral agreements or understandings,
including any collateral agreements, between the parties,
including but not limited to licenses, covenants not to sue,
confidentiality agreements, or other agreements of any kind,
that are made in connection with, or in contemplation of, the
termination of this proceeding.
Paper 10, 1.
The Parties are reminded that the Board is not a party to the
settlement, and may identify independently any question of patentability. 37
C.F.R. § 42.74(a). Generally, however, the Board expects that a proceeding
will terminate after the filing of a settlement agreement. See, e.g., Office
Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012).
Case IPR2015-00317
Patent 6,925,386

3
This proceeding is still in the preliminary stages
1
, Patent Owner, waived
filing a Preliminary Response on March 9, 2015 (Paper 7) and the Board has
not issued yet a decision to institute an inter partes review. As to other
district court litigation involving the subject patent, the Parties indicate that
they “filed a stipulation dismissing with prejudice the infringement
counterclaim relating to U.S. Pat. No. 6,925,386 (the patent at issue in this
proceeding).” Paper 10, 2.
Under the circumstances, based on the record before us, the Board
determines that it is appropriate to terminate this proceeding without
rendering either a decision to institute or a final written decision and treat the
settlement agreement as business confidential information. See 37 C.F.R. §
42.74(c).

ORDER
In consideration of the foregoing, it is
ORDERED that the Parties’ joint request that the settlement
agreement (Exhibit 1022) be treated as business confidential information
under 37 C.F.R. § 42.74(c), to be kept separate from the patent file, is
GRANTED;
FURTHER ORDERED that the Joint Motion to Terminate the
Proceeding is GRANTED; and
FURTHER ORDERED that this proceeding is TERMINATED.

1
A preliminary proceeding begins with the filing of a petition for instituting
a trial and ends with a written decision as to whether a trial will be instituted.
37 C.F.R. § 42.2.
Case IPR2015-00317
Patent 6,925,386

4
PETITIONER:
Michael L. Kiklis
Scott McKeown
Oblon, McClelland, Maier & Neustadt, L.L.P
CPdocketKiklis@oblon.com
CPdocketMckeown@oblon.com

PATENT OWNER:
David I. Berl
Christopher Suarez
Thomas S. Fletcher
Williams & Connolly, LLP
dberl@wc.com
csuarez@wc.com
tfletcher@ws.com