Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 15
`Entered: December 6, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`GOOGLE LLC, CISCO SYSTEMS, INC., MICROSOFT CORPORATION,
`AMAZON.COM, INC., AMAZON WEB SERVICES, INC., AND
`AMAZON.COM SERVICES LLC, 1
`Petitioner,
`v.
`LS CLOUD STORAGE TECHNOLOGIES LLC,
`Patent Owner.
`
`
`IPR2023-00120
`Patent 10,154,092 B2
`
`
`
`
`
`
`Before LARRY J. HUME, NEIL T. POWELL, and AMBER L. HAGY,
`Administrative Patent Judges.
`HUME, Administrative Patent Judge.
`
`
`
`ORDER
`Settlement as to Google LLC
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`
`
`1 Cisco Systems, INC., Microsoft Corporation, Amazon.com, INC.,
`Amazon Web Services, INC., and Amazon.com Services LLC, which filed a
`petition in IPR2023-00733, have been joined as parties in this proceeding.
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 15
`Entered: December 6, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`GOOGLE LLC, CISCO SYSTEMS, INC., MICROSOFT CORPORATION,
`AMAZON.COM, INC., AMAZON WEB SERVICES, INC., AND
`AMAZON.COM SERVICES LLC, 1
`Petitioner,
`v.
`LS CLOUD STORAGE TECHNOLOGIES LLC,
`Patent Owner.
`
`
`IPR2023-00120
`Patent 10,154,092 B2
`
`
`
`
`
`
`Before LARRY J. HUME, NEIL T. POWELL, and AMBER L. HAGY,
`Administrative Patent Judges.
`HUME, Administrative Patent Judge.
`
`
`
`ORDER
`Settlement as to Google LLC
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`
`
`1 Cisco Systems, INC., Microsoft Corporation, Amazon.com, INC.,
`Amazon Web Services, INC., and Amazon.com Services LLC, which filed a
`petition in IPR2023-00733, have been joined as parties in this proceeding.
`
`
`
`IPR2023-00733
`Patent 10,154,092 B2
`
`I.
`
`INTRODUCTION
`
`Google LLC (“Google”) filed a Petition seeking institution of an inter
`partes review of claims 1–24 of U.S. Patent No. 10,154,092 B2 (Ex. 1001,
`“the ’092 patent”). Paper 2. After reviewing the Petition and Patent
`Owner’s preliminary response (Paper 6), we instituted an inter partes
`review. Paper 7.
`After institution, Cisco Systems, Inc., Microsoft Corporation,
`Amazon.com, INC., Amazon Web Services, Inc., and Amazon.com Services
`LLC (collectively “Cisco et al.”), filed a petition and a joinder motion in
`IPR2023-00733, requesting that Cisco et al. be joined as a petitioner in
`IPR2023-00120. Cisco et al. v. LS Cloud Storage Technologies LLC,
`IPR2023-00733, Paper 1 (petition), Paper 5 (joinder motion). After
`considering the parties’ papers, we instituted trial in IPR2023-00733,
`granted Cisco et al.’s joinder motion, and added Cisco et al. as a petitioner to
`IPR2023-00120. Cisco et al. v. LS Cloud Storage Technologies LLC,
`IPR2023-00733 Paper 10 (Institution Decision). In addition, we entered a
`copy of that decision in IPR2023-00120. Paper 10.
`On November 18, 2023, pursuant to our authorization, Petitioner
`Google and Patent Owner filed a Joint Motion to Terminate as to Petitioner
`Google. Paper 14 (“Motion” or “Mot.”). Google and Patent Owner also
`filed a copy of a Confidential Settlement and License Agreement
`(“Settlement Agreement”) governing their settlement. Ex. 1019. In the
`Motion, Google and Patent Owner made a joint request that the Settlement
`Agreement be treated as business confidential information and kept separate
`from the publicly available file of the above-captioned proceeding. Mot. 3.
`
`2
`
`
`
`IPR2023-00733
`Patent 10,154,092 B2
`
`II. DISCUSSION
`
`In the Motion, Google and Patent Owner state that they have settled
`their dispute with respect to IPR2023-00120 and IPR2023-0073 and with
`respect to the related district court litigation styled LS Cloud Technologies
`LLC v. Google LLC, 1:22-cv-853-RP (W.D. Tex.). Mot. 2.
`They also submit that Confidential Exhibit 1019 is a true copy of the
`settlement agreement and there are no other agreements made in connection
`with, or in contemplation of, the termination of the inter partes review as to
`Google. Id.
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`this chapter shall be terminated with respect to any petitioner upon the joint
`request of the petitioner and the patent owner, unless the Office has decided
`the merits of the proceeding before the request for termination is filed.” Any
`agreement or understanding “made in connection with, or in contemplation
`of, the termination of an inter partes review” must be in writing, and a true
`copy of any such documents must be filed in the Office before termination.
`Id. § 317(b); accord 37 C.F.R. § 42.74(b).
`Because Google and Patent Owner represent that they have complied
`with the applicable requirements, we terminate the inter partes review with
`respect to Petitioner Google. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.74.
`We also grant the parties’ request to treat the settlement agreement (Exhibit
`1019) as business confidential information. See 35 U.S.C. § 317(b); 37
`C.F.R. § 42.74(c).
`Cisco et al., the joined Petitioner in IPR2023-00120, is not a party to
`the settlement agreement and did not join the Motion, and apparently was
`
`3
`
`
`
`IPR2023-00733
`Patent 10,154,092 B2
`not provided notice of settlement as to Petitioner Google. See Paper 14, 5.
`Accordingly, IPR2023-00120 remains pending as to Petitioner Cisco et al.
`
`III. ORDER
`
`Accordingly, it is:
`ORDERED that the Joint Motion to terminate with respect to
`Petitioner Google only is granted;
`FURTHER ORDERED that Cisco Systems, Inc., Microsoft
`Corporation, Amazon.com, INC., Amazon Web Services, Inc., and
`Amazon.com Services LLC will remain as petitioners, and the case caption
`for all further submissions in shall be changed to remove named Petitioner
`Google, and to indicate by footnote the termination of Petitioner Google to
`this proceeding, as indicated in the attached sample case caption in
`IPR2023-00120;
`FURTHER ORDERED that the settlement agreement (Exhibit 1019)
`be treated as business confidential information and be kept separate from the
`files of the involved U.S. Patent No. 10,154,092 B2;
`FURTHER ORDERED that Cisco et al. must file an updated power of
`attorney to effect designation of a new lead attorney and back-up counsel;
`FURTHER ORDERED that Cisco et al. must file an updated
`mandatory notice identifying a new lead attorney and back-up counsel in
`accordance with 37 C.F.R. § 42.8(b)(3); and
`FURTHER ORDERED this paper does not constitute a final written
`decision pursuant to 35 U.S.C. § 318(a).
`
`
`
`4
`
`
`
`IPR2023-00733
`Patent 10,154,092 B2
`For PETITIONERS:
`James T. Carmichael
`Minghui Yang
`CARMICHAEL IP, PLLC
`jim@carmichaelip.com
`mitch@carmichaelip.com
`
`Brian Ferguson
`Juan Yaquian
`WINSTON & STRAWN LLP
`beferguson@winston.com
`jyaquian@winston.com
`
`Brian Nash
`MORRISON & FOERSTER LLP
`bnash@mofo.com
`
`For PATENT OWNER:
`William P. Ramey, III
`Jacob B. Henry
`RAMEY LLP
`wramey@rameyfirm.com
`jhenry@rameyfirm.com
`
`
`5
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CISCO SYSTEMS, INC., MICROSOFT CORPORATION,
`AMAZON.COM, INC., AMAZON WEB SERVICES, INC., AND
`AMAZON.COM SERVICES LLC,
`Petitioner,
`v.
`LS CLOUD STORAGE TECHNOLOGIES LLC,
`Patent Owner.
`
`IPR2023-001202
`Patent 10,154,092 B2
`
`
`
`
`
`
`
`
`2 Petitioner Google and Patent Owner filed an approved Joint Motion to
`Terminate as to Petitioner Google. Accordingly, Cisco Systems, Inc.,
`Microsoft Corporation, Amazon.com, Inc., Amazon Web Services, Inc., and
`Amazon.com Services LLC, collectively “Cisco et al.,” remain as Petitioners
`in this proceeding.
`
`
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