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

Patent Trials and Appeals BoardOct 16, 2015

12717882 - (D) (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 IPR2015-01748 Patent 8,700,312 B2 ____________ Before KALYAN K. DESHPANDE, MICHAEL R. ZECHER, and GLENN J. PERRY, Administrative Patent Judges. DESHPANDE, Administrative Patent Judge. DECISION Termination of the Proceeding 37 C.F.R. §§ 42.72 and 42.74 IPR2015-01748 Patent 8,700,312 B2 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 1–16 of U.S. Patent No. 8,700,312 B2 (“the ’312 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 ’312 patent. Paper 6, 3–4. The parties also represent that the ’312 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. IPR2015-01748 Patent 8,700,312 B2 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

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