Google Inc.v.Silver State Intellectual Technologies, Inc.

Patent Trial and Appeal Board

Oct 16, 2015

09669527 (P.T.A.B. Oct. 16, 2015)

Trials@uspto.gov
571-272-7822
Paper No. 9
Date Entered: October 16, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GOOGLE INC.,
Petitioner,

v.

SILVER STATE INTELLECTUAL TECHNOLOGIES, INC.,
Patent Owner.
____________

Case IPR2015-01746
Patent 6,529,824 B1
____________

Before KALYAN K. DESHPANDE, MICHAEL R. ZECHER, and
GLENN J. PERRY, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION
Termination of the Proceeding
37 C.F.R. §§ 42.72 and 42.74

IPR2015-01746
Patent 6,529,824 B1

2

I. DISCUSSION
On October 14, 2015, the parties filed a Joint Motion to Terminate this
proceeding (Paper 6), a true copy of the parties’ settlement agreement (Ex. 1013),
and a request to treat the settlement agreement as business confidential information
under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 7).
This proceeding is still in its preliminary stages. Petitioner, Google
Incorporated, filed a Petition requesting an inter partes review of claims 1–15 of
U.S. Patent No. 6,529,824 B1 (“the ’824 patent”) on August 17, 2015. Paper 1.
Patent Owner, Silver State Intellectual Technologies Incorporated, has not filed a
Preliminary Response, and we have not entered a decision whether or not to
institute an inter partes review. In the Joint Motion to Terminate this proceeding,
the parties represent that they have settled the related district court case involving
the ’824 patent. Paper 6, 3–4. The parties also represent that the ’824 patent is not
involved in any other pending inter partes review proceedings. Id. at 3. Under
these circumstances, we determine that it is appropriate to terminate this
proceeding without rendering any further decisions. See 37 C.F.R. § 42.72.

II. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the parties’ request to treat the settlement agreement
(Ex. 1013) as business confidential information under 35 U.S.C. § 317(b) and 37
C.F.R. § 42.74(c) is GRANTED; and
FURTHER ORDERED that the Joint Motion to Terminate this proceeding is
GRANTED, and this proceeding is hereby terminated.

IPR2015-01746
Patent 6,529,824 B1

3

For PETITIONER:

Naveen Modi
Joseph Palys
Daniel Zeilberger
Paul Hastings LLP
Google-Silverstate-IPR@paulhastings.com

For PATENT OWNER:

Frederick S. Berretta
Marko R. Zoretic
Knobbe, Martens, Olson & Bear, LLP
2fsb@knobbe.com
2mrz@knobbe.com