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,
`
`Petitioners,
`
`v.
`
`LS CLOUD STORAGE TECHNOLOGIES, LLC,
`
`Patent Owner.
`___________________________
`
`IPR2023-00120, IPR-2023-00733
`U.S. PATENT NO. 10,154,092
`___________________________
`
`JOINT MOTION TO TERMINATE PROCEEDING
`&
`JOINT REQUEST TO TREAT SETTLEMENT AGREEMENT
`CONFIDENTIAL INFORMATION TO BE KEPT SEPARATE PURSUANT
`TO 35 U.S.C. § 317(b)
`
`
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________
`
`CISCO SYSTEMS, INC., MICROSOFT CORPORATION,
`AMAZON.COM, INC., AMAZON WEB SERVICES, INC., and
`AMAZON.COM SERVICES, LLC,
`
`Petitioners,
`
`v.
`
`LS CLOUD STORAGE TECHNOLOGIES, LLC,
`
`Patent Owner.
`___________________________
`
`IPR2023-00120, IPR-2023-00733
`U.S. PATENT NO. 10,154,092
`___________________________
`
`JOINT MOTION TO TERMINATE PROCEEDING
`&
`JOINT REQUEST TO TREAT SETTLEMENT AGREEMENT
`CONFIDENTIAL INFORMATION TO BE KEPT SEPARATE PURSUANT
`TO 35 U.S.C. § 317(b)
`
`
`
`EXHIBIT LIST
`
`LIST OF NEWLY FILED EXHIBITS
`
`The following exhibit is being filed with this Joint Motion To Terminate
`
`Proceeding and Joint Request To Treat The Parties’ Settlement Agreement As
`
`Business Confidential Information And Be Keep Separate:
`
`Exhibit Number
`
`Description
`
`1020
`
`Settlement Agreement (LS Cloud and Microsoft)
`
`LIST OF PREVIOUSLY FILED EXHIBITS
`
`
`Exhibit Number
`
`Description
`
`1001
`
`U.S. Patent No. 10,154,092
`
`1002
`
`1003
`
`File History of U.S. Patent No. 10,154,092 (Application No.
`14/997,327)
`
`File History of U.S. Patent No. 6,549,988 (Application No.
`09/236,409)
`
`1004
`
`Declaration of Dr. Paul Franzon, Ph.D.
`
`1
`
`
`
`
`
`
`
`
`
`
`1005
`
`CV of Dr. Paul Franzon, Ph.D.
`
`1006
`
`U.S. Patent No. 6,173,374 (“Heil”)
`
`1007
`
`U.S. Patent No. 5,920,893 (“Nakayama”)
`
`1008
`
`U.S. Patent No. 5,692,211 (“Gulick”)
`
`1009
`
`U.S. Patent No. 6,118,776 (“Berman”)
`
`1010
`
`1011
`
`1012
`
`1013
`
`United States District Courts – National Judicial Caseload
`Profile, https://www.uscourts.gov/sites/default/files/
`fcms_na_distprofile0331.2022.pdf (accessed September 21,
`2022)
`
`Order Staying Case in LS Cloud Storage Technologies, LLC
`v. Google LLC, 1:22-cv-00853 (W.D. Tex. 2022)
`
`USPTO Memo: Interim Procedure for Discretionary Denials
`in AIA Post-Grant Proceedings with Parallel District Court
`Litigation, June 21, 2022
`
`Order Setting Initial Pretrial Conference for 11/3/2022 in LS
`Cloud Storage Technologies, LLC v. Google LLC, 1:22-cv-
`00853 (W.D. Tex. 2022)
`
`
`
`2
`
`
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`D. Patterson, G. Gibson, R. Katz, entitled “A Case for
`Redundant Arrays of Inexpensive Disks (RAID)”.
`
`SIGMOD88: International Conference On Management of
`Data Chicago Illinois USA June 1 - 3, 1988
`
`R. H. Katz, “Network-attached storage systems,”
`Proceedings Scalable High Performance Computing
`Conference SHPCC-92., Williamsburg, VA, USA, 1992, pp.
`68-75
`
`Gang Ma and A. L. Narasimha Reddy, “An evaluation of
`storage systems based on network-attached disks,”
`Proceedings. 1998 International Conference on Parallel
`Processing (Cat. No.98EX205), Minneapolis, MN, USA,
`1998, pp. 278-285.
`
`Average Time to Trial for Patent Cases before Judge Yeakel,
`retrieved from www.docketnavigator.com
`
`Infringement Contentions served in LS Cloud Storage
`Technologies, LLC v. Google LLC, 1:22-cv-00853 (W.D.
`Tex. 2022)
`
`1019
`
`Settlement and License Agreement (LS Cloud and Google)
`
`
`
`
`
`3
`
`
`
`I.
`
`STATEMENT OF RELIEF REQUESTED
`
`Petitioner Microsoft Corporation has reached agreement with Patent Owner
`
`LS Cloud Storage Technologies, LLC (“Patent Owner”) (collectively, the
`
`“Parties”) to settle their dispute. Pursuant to 35 U.S.C. § 317, 37 C.F.R. §§ 42.72
`
`and 42.74, and authorization provided by the Board on December 5, 2023, the
`
`Parties jointly move for termination of these inter partes review proceedings
`
`(IPR2023-00120, IPR2023-00733) (the “Proceedings”) between them, without
`
`prejudice to either Party. The Parties are concurrently filing a true copy of the
`
`Parties’ settlement agreement (Confidential Exhibit 1020) and request that it be
`
`kept separate and treated as “business confidential information” pursuant to 35
`
`U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). There are no other agreements, oral or
`
`written, between the parties made in connection with, or in contemplation of, the
`
`termination of the proceedings.
`
`Prior to filing this motion, undersigned counsel for Petitioner Microsoft
`
`obtained permission from undersigned counsel for Patent Owner to add his
`
`signature and file this motion and request jointly on behalf of the Parties.
`
`II.
`
`JOINT MOTION FOR TERMINATION
`
`Good cause exists to terminate the Proceedings as to Patent Owner and
`
`Microsoft 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
`
`
`
`4
`
`
`
`Scheduling Order (Paper 8). As such, no final written decision on the merits have
`
`been entered in the Proceedings. Should this joint motion to terminate be denied,
`
`Microsoft would not continue to participate in the Proceedings. Termination of
`
`these inter partes reviews between Microsoft and Patent Owner is therefore proper
`
`under 35 U.S.C. § 317 and 37 C.F.R. § 42.74 and would serve the interests of
`
`judicial economy as well as the mutual interest of the Parties.
`
`As stated in 35 U.S.C. § 317(a) and 37 C.F.R. § 42.73(d), because Patent
`
`Owner and Microsoft jointly request this termination, no estoppel under 35 U.S.C.
`
`§ 315(e) shall attach to Petitioner Microsoft.
`
`III. 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 Agreement (Ex. 1020) between Patent Owner and
`
`Microsoft 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).
`
`IV. CONCLUSION
`
`
`
`Petitioner Microsoft and Patent Owner have settled their dispute related to
`
`U.S. Patent No. 10,154,092. Briefing has not been completed and the Board has
`
`not entered a Final Written Decision in the proceedings. Accordingly, Microsoft
`
`
`
`5
`
`
`
`and Patent Owner jointly request termination of IPR2023-00120 and IPR2023-
`
`00733 as they relate to Microsoft and that the Board treat the Settlement
`
`Agreement as Business Confidential Information and keep it separate from the
`
`patent file.
`
`
`Date: December 6, 2023
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/s/ Brian E. Ferguson s
`Brian E. Ferguson
`Reg. No. 36,801
`Winston & Strawn LLC
`1901 L Street, N.W.
`Washington, D.C. 20036
`T: 202-282-5200
`beferguson@winston.com
`
`
`
`Attorneys for Petitioner
`Microsoft Corporation
`
`
`/s/William P. Ramey, III
`Jacob B. Henry
`William P. Ramey, III
`RAMEY LLP
`5020 Montrose Blvd., Ste. 800
`Houston, Texas 77006
`Email: jhenry@rameyfirm.com
`Email: wramey@rameyfirm.com
`
`Attorneys for Patent Owner
`
`
`6
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on December 6, 2023, I caused a true and correct copy
`
`
`
`of the foregoing to be served on the following counsel for Patent Owner by
`
`electronic mail to the following email addresses:
`
`Jacob B. Henry
`William P. Ramey, III
`RAMEY LLP
`5020 Montrose Blvd., Ste. 800
`Houston, Texas 77006
`Email: jhenry@rameyfirm.com
`Email: wramey@rameyfirm.com
`
`/s/ Brian E. Ferguson s
`Brian E. Ferguson
`Reg. No. 36,801
`Winston & Strawn LLC
`1901 L Street, N.W.
`Washington, D.C. 20036
`T: 202-282-5276
`beferguson@winston.com
`
`Counsel for Petitioner Microsoft
`Corporation
`
`7
`
`
`
`
`
`
`
`
`
`
`
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