`
`Case IPR2023-00120
`U.S. Patent No. 10,154,092
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________
`
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`LS CLOUD STORAGE TECHNOLOGIES LLC,
`Patent Owner.
`____________________________
`
`Case IPR2023-00120
`U.S. Patent No. 10,154,092
`
`
`
`PARTIES’ JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
`&
`JOINT REQUEST TO TREAT SETTLEMENT AND LICENSE AGREEMENT
`AS BUSINESS CONFIDENTIAL INFORMATION TO BE KEPT SEPARATE
`PURSUANT TO 35 U.S.C. § 317(b)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`I.
`
`STATEMENT OF RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74 and as authorized by
`
`the Board on November 27, 2023, Petitioner Google LLC and Patent Owner LS
`
`Cloud Storage Technologies LLC (collectively, the “Parties”) jointly request
`
`termination of this proceeding, IPR2023-00120, directed to U.S. Patent No.
`
`10,154,092.
`
`II.
`
`STATUS OF RELATED PROCEEDINGS
`
`The Parties have settled their dispute regarding U.S. Patent No. 10,154,092,
`
`including both this proceeding and Patent Owner’s assertion of U.S. Patent No.
`
`10,154,092 in the related district court litigation, LS Cloud Technologies LLC v.
`
`Google LLC, Case No. 1:22-cv-853-RP (W.D. Tex.). The following related
`
`proceedings are currently before the Board, which the Parties are concurrently
`
`filing a joint motion to terminate: IPR2023-00777.
`
`III. CERTIFICATION
`
`As required by 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, the Parties submit
`
`a true copy of the Settlement and License Agreement with this joint motion,
`
`subject to the request to treat as business confidential below.
`
`The Parties certify that there are no other agreements, oral or written,
`
`between the parties made in connection with, or in contemplation of, the
`
`termination of the proceeding. See 35 U.S.C. § 317(a).
`
`
`
`
`
`
`
`IV. GOOD CAUSE
`
`Good cause exists to terminate this proceeding because the Parties have
`
`settled their dispute regarding the U.S. Patent No. 10,154,092 and the Parties have
`
`not completed briefing according to the Scheduling Order (Paper 8). See
`
`Consolidated Trial Practice Guide “TPG” at 86 (November 2019) (“There are
`
`strong public policy reasons to favor settlement between the parties to a
`
`proceeding…The Board expects that a proceeding will terminate after the filing of
`
`a settlement agreement, unless the Board has already decided the merits of the
`
`proceeding.” Terminating the proceeding now is thus appropriate and would serve
`
`the interests of judicial economy as well as the mutual interest of the Parties.
`
`V. REQUEST TO TREAT AS BUSINESS CONFIDENTIAL
`
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, the Parties jointly
`
`request to treat the Settlement and License Agreement (Ex. 1019) between Patent
`
`Owner and Petitioner as Business Confidential Information that shall be kept
`
`separate from the file from the involved patent and to be made available only to
`
`Federal Government agencies on written request or to persons showing good
`
`cause. See 35 U.S.C. § 317(b); 37 C.F.R. § 42.74(c).
`
`VI. CONCLUSION
`
`The Parties have settled all disputes related to U.S. Patent No. 10,154,092.
`
`Briefing is ongoing and the Board has not entered a Final Written Decision on the
`
`
`
`
`
`
`
`merits. Accordingly, the Parties jointly request termination of IPR2023-00120 in
`
`its entirety and the Board treat the Settlement and License Agreement as Business
`
`Confidential information and keep it separate from the patent file.
`
`
`Date: November 28, 2023
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: / Minghui Yang /
`James T. Carmichael
`Reg. No. 45,306
`Minghui Yang
`Reg. No. 71,989
`Counsel for Petitioner
`CARMICHAEL IP, PLLC
`8607 Westwood Center Drive
`Suite 270
`Tysons, VA 22182
`Email: mitch@carmichaelip.com
`Telephone: (703) 646-9248
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby confirms that the foregoing Joint Motion to
`
`Terminate Proceeding was caused to be served on November 28, 2023 via email
`
`upon the following counsel of record for Patent Owner:
`
`William P. Ramey, III
`Ramey LLP
`5020 Montrose Blvd., Suite 800
`Houston, Texas 77006
`wramey@rameyfirm.com
`
`Jacob Henry
`Ramey LLP
`5020 Montrose Blvd., Suite 800
`Houston, Texas 77006
`jhenry@rameyfirm.com
`
`Email: uspto@rameyfirm.com
`
`
`
`Respectfully submitted,
`
`/Minghui Yang/
`
`Minghui Yang
`
`Date: November 28, 2023
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
