`
`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
`
`
`
`