`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GOOGLE INC.
`Petitioner
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`v.
`
`SILVER STATE INTELLECTUAL TECHNOLOGIES, INC.
`Patent Owner
`
`Case IPR2015-01738
`
`U.S. Patent No. 7,650,234
`
`JOINT MOTION TO TERMINATE PROCEEDING
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`1 of 6
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`I.
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`PRECISE RELIEF REQUESTED
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`Pursuant to 35 U.S.C. § 317(a), Petitioner Google Inc. and Patent Owner
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`Silver State Intellectual Technologies, Inc. jointly request that this inter partes
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`review proceeding involving U.S. Patent No. 7,650,234 (“the ’234 Patent”) be
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`terminated based on a settlement between Petitioner and Patent Owner (“the
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`Parties”).
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`II. REASONS FOR GRANTING THE MOTION
`Generally, the Board expects that a proceeding will terminate after the filing
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`of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed.
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`Reg. 48,756, 48,768 (Aug. 14, 2012). The Board authorized the filing of the
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`instant motion on October 14, 2015.
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`IPR2013-00428, Paper No. 56 provides
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`guidance as to the content of a motion to terminate. There, the Board indicates that
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`a joint motion, such as this one, should (a) include a brief explanation as to why
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`termination is appropriate; (b) identify all parties in any related litigation involving
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`the patent at issue; (c) identify any related proceedings currently before the Office,
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`and (d) discuss specifically the current status of each such related litigation or
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`proceeding with respect to each party to the litigation or proceeding. Id. at 2. This
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`motion satisfies each of the above requirements and is accompanied by a copy of
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`the Parties’ settlement agreement, as required by 35 U.S.C. § 317(b) and 37 C.F.R.
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`§ 42.74(b).
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`2 of 6
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`
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`Brief Explanation of Why Termination is Appropriate
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`a.
`Termination is appropriate because a final written decision has not been
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`reached in this proceeding.
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`Indeed, Petitioner filed its petition for inter partes
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`review recently on August 17, 2015.
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`Patent Owner has not yet filed any
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`preliminary response, nor has the Board instituted this proceeding.
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`Termination of this proceeding is appropriate because Petitioner will no
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`longer be participating in this proceeding, and the Board has not decided the merits
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`of the proceeding. The Parties have settled their disputes and executed a
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`settlement agreement to terminate this proceeding, as well as the Parties’ related
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`district court litigation regarding the ’234 Patent: Silver State Intellectual Techs.,
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`Inc. v. Google Inc., Case Number 2:14-cv-00662 (D. Nev.). The district court
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`litigation was dismissed per the parties’ settlement agreement on October 1, 2015.
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`b.
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`All Parties in Any Pending Related Litigation Involving the
`Patents at Issue
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`In addition to Google Inc., Motorola Mobility, LLC and Waze, Inc. are
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`defendants in the related district court litigation. The settlement agreement to
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`terminate the district court litigation includes termination as to Motorola Mobility,
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`LLC and Waze, Inc.
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`Related Proceedings Currently Before the Office
`c.
`There is no other pending inter partes review proceeding involving the ’234
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`Patent.
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`3 of 6
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`d.
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`Current Status of Each Such Related Litigation or Proceeding
`With Respect to Each Party to the Litigation or Proceeding
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`Sections II.b and c above indicate the status of each related litigation or
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`proceeding with respect to each party to the litigation or proceeding.
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`III. SETTLEMENT AGREEMENT
`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), the Parties’
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`settlement agreement is in writing, and a true and correct copy is being filed
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`concurrently herewith as Exhibit 1012.1 The Parties are also filing concurrently
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`herewith a joint request under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) to treat
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`the settlement agreement as business confidential information and keep it separate
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`from the files of the ’234 Patent.
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`1 The settlement agreement is being filed via the Patent Review Processing System
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`(PRPS) with access to the “Parties and Board only.”
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`4 of 6
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`IV. CONCLUSION
`For all of these reasons, the Parties respectfully request termination of this
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`proceeding.
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`Dated:
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`Respectfully submitted,
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`By: /Frederick S. Berretta/
`Frederick S. Berretta
`Registration No. 38,004
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`By: /Naveen Modi/
`Naveen Modi
`Registration No. 46,224
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`Counsel for Silver State Intellectual
`Technologies, Inc.
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`Counsel for Google Inc.
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`5 of 6
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 14th day of October 2015, a copy of the
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`foregoing Joint Motion to Terminate Proceeding was served by e-mail upon the
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`following:
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`Frederick S. Berretta
`Knobbe, Martens, Olson & Bear, LLP
`12790 El Camino Real
`San Diego, CA 92130
`2fsb@knobbe.com
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`Marko R. Zoretic
`Knobbe, Martens, Olson & Bear, LLP
`2040 Main St., 14th Fl.
`Irvine, CA 92614
`2mrz@knobbe.com
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`Dated: October 14, 2015
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`Respectfully submitted,
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`By: /Naveen Modi/
`Naveen Modi
`Registration No. 46,224
`
`Counsel for Google Inc.
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