`571-272-7822
`
`
`
`
`
`
`
`Paper 19
`Entered: December 12, 2023
`
`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, 1
`Petitioner,
`v.
`LS CLOUD STORAGE TECHNOLOGIES LLC,
`Patent Owner.
`
`
`IPR2023-00120, IPR2023-00733
`Patent 10,154,092 B2
`
`
`Before LARRY J. HUME and AMBER L. HAGY, Administrative Patent
`Judges.
`HUME, Administrative Patent Judge.
`
`
`ORDER
`Settlement as to Microsoft Corporation
`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, filed a petition in
`IPR2023-00733, and were joined as parties in this proceeding, IPR2023-
`00120. Google has since been terminated as a party, and a Motion for
`Termination is pending for Cisco. Paper 17.
`
`
`
`IPR2023-00120
`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 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.
`Subsequently, after a joint request by Petitioner Google and Patent Owner,
`we entered an Order to terminate this proceeding as to Petitioner Google.
`Paper 14.
`On December 6, 2023, pursuant to our authorization, Petitioner
`Microsoft and Patent Owner filed a Joint Motion to Terminate as to
`Petitioner Microsoft. Paper 16 (“Motion” or “Mot.”).2 Microsoft and Patent
`
`
`2 We note Patent Owner filed a Joint Motion to Terminate (Paper 16) in
`IPR2023-00120 consisting of 6 pages, and Petitioner filed a slightly different
`Joint Motion to Terminate (IPR2023-00733, Paper 12) consisting of 8 pages.
`These two joint motions, while different, are substantively the same. We
`refer to Paper 16 in our Order.
`
`2
`
`
`
`IPR2023-00120
`Patent 10,154,092 B2
`Owner also filed a copy of a Confidential Settlement and License Agreement
`(“Settlement Agreement”) governing their settlement. Ex. 2002. In the
`Motion, Microsoft 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. 2–3.
`
`II. DISCUSSION
`
`In the Motion, Microsoft and Patent Owner state that they have settled
`their dispute with respect to IPR2023-00120 and IPR2023-00733 and,
`although not explicitly stated in the Motion, we infer Microsoft and Patent
`Owner have settled their dispute with respect to the related district court
`litigation styled LS Cloud Storage Technologies, LLC v. Microsoft
`Corporation, 1:22-cv-00974 (W.D. Tex. 2022). Mot. 2. “The Parties shall
`dismiss with prejudice all claims brought in the Lawsuit with respect to all
`claims within five (5) business days of the Effective Date by filing an
`Agreed Motion to Dismiss with Prejudice and Agreed Order of Dismissal
`substantially in the form attached hereto as Exhibit A.” Ex. 1020 § 4.1
`“Dismissal.”
`The parties also submit that Confidential Exhibit 1020 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 Microsoft. Mot.1–2.
`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
`
`3
`
`
`
`IPR2023-00120
`Patent 10,154,092 B2
`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 Microsoft and Patent Owner represent that they have
`complied with the applicable requirements, we terminate the inter partes
`review with respect to Petitioner Microsoft. 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 1020) as business confidential information.
`See 35 U.S.C. § 317(b); 37 C.F.R. § 42.74(c).
`Cisco et al., the joined Petitioners in IPR2023-00120, are not a party
`to the settlement agreement and did not join the Motion. Accordingly,
`pending disposition of Cisco Systems, Inc. and Patent Owner’s Joint Motion
`to Terminate Cisco as a party (Paper 17), IPR2023-00120 remains pending
`as to Petitioners Cisco Systems, Inc., Amazon.com, Inc., Amazon Web
`Services, Inc., and Amazon.com Services LLC.
`
`III. ORDER
`
`Accordingly, it is:
`ORDERED that the Joint Motion to terminate with respect to
`Petitioner Microsoft only is granted;
`FURTHER ORDERED that Cisco Systems, Inc., Amazon.com, Inc.,
`Amazon Web Services, Inc., and Amazon.com Services LLC will remain as
`petitioners pending disposition of Cisco Systems’ and Patent Owner’s Joint
`Motion to Terminate (Paper 17), and the case caption for all further
`submissions in shall be changed to remove named Petitioner Microsoft, and
`to indicate by footnote the termination of Petitioner Microsoft to this
`
`4
`
`
`
`IPR2023-00120
`Patent 10,154,092 B2
`proceeding, as indicated in the attached sample case caption in IPR2023-
`00120;
`FURTHER ORDERED that the Settlement Agreement (Exhibit 1020)
`be treated as business confidential information and be kept separate from the
`files of the involved U.S. Patent No. 10,154,092 B2; and
`FURTHER ORDERED this paper does not constitute a final written
`decision pursuant to 35 U.S.C. § 318(a).
`
`
`
`5
`
`
`
`IPR2023-00120
`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
`
`
`6
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CISCO SYSTEMS, INC., AMAZON.COM, INC.,
`AMAZON WEB SERVICES, INC., AND
`AMAZON.COM SERVICES LLC,
`Petitioner,
`v.
`LS CLOUD STORAGE TECHNOLOGIES LLC,
`Patent Owner.
`
`IPR2023-001203
`Patent 10,154,092 B2
`
`
`
`
`
`
`
`
`3 Petitioner Microsoft and Patent Owner filed an approved Joint Motion to
`Terminate as to Petitioner Microsoft. Accordingly, Cisco Systems, Inc.,
`Amazon.com, Inc., Amazon Web Services, Inc., and Amazon.com Services
`LLC, collectively “Cisco et al.,” remain as Petitioners in this proceeding.
`
`