Case IPR2024-01020
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`Patent No. 7,814,170
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
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`Google LLC,
`Petitioner
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`v.
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`Kove IO, Inc.,
`Patent Owner
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`
`__________________
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`Case No. IPR2024-01020
`U.S. Patent No. 7,814,170
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`JOINT MOTION TO TERMINATION PURSUANT TO 35 U.S.C. § 317
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`Patent No. 7,814,170
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
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`Google LLC,
`Petitioner
`
`v.
`
`Kove IO, Inc.,
`Patent Owner
`
`
`__________________
`
`Case No. IPR2024-01020
`U.S. Patent No. 7,814,170
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`
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`JOINT MOTION TO TERMINATION PURSUANT TO 35 U.S.C. § 317
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`Exhibit
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`2001
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`2002
`2003
`2004
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`2005
`2006
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`2007
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`2008
`2009
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`2010
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`2011
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`2012
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`2013
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`PATENT OWNER’S EXHIBIT LIST
`Description
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`Declaration of Dr. Michael T. Goodrich In Support of Patent
`Owner’s Preliminary Response
`Declaration of Nancy Adams, EdD
`Curriculum Vitae of Nancy Adams, EdD
`Website for ETH Zürich Research Collection - ETH Zürich
`Jahresbericht 1993 (available at https://www.research-
`collection.ethz.ch/handle/20.500.11850/643838)
`ETH Zürich, Jahresbericht (1993)
`Website for ETH Zürich Research Collection - Distributed file
`organization with scalable cost/performance (available at
`https://www.research-
`collection.ethz.ch/handle/20.500.11850/68912)
`Metadata of Distributed File Organization With Scalable
`Cost/Performance in the ETH Zurich repository (available at
`https://www.research-
`collection.ethz.ch/handle/20.500.11850/68912?show=full)
`ETH Zurich Library Online Catalog Search Results
`ETH Zurich Library Online Catalog Search Result for
`Jahresbericht – Eidgenossische Technische Hochschule
`Marc Reocrd for Jahresbericht – Eidgenossische Technische
`Hochschule (available at
`https://eth.swisscovery.slsp.ch/discovery/
`fulldisplay?docid=alma9911722495130
`5503&context=L&vid=41SLSP_ETH:ETH&lang=e
`n&search_scope=DiscoveryNetwork&adaptor=
`Local%20Search%20Engine&tab=discovery_network&query=an
`y,contains,1015-4191&mode=basic)
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`Certified English Translation of ETH Zürich, Jahresbericht
`(1993)
`Norrie et al., The Database Research Group at ETH
`Zurich (available at
`https://dl.acm.org/doi/pdf/10.1145/181550.181567)
`Joint Claim Construction Chart in Kove IO, Inc. v. Amazon Web
`Services, Inc., Case No. 1:18-cv-08175 (N.D. Ill. May 29, 2020)
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`2014
`2015
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`(Dkt. 382)
`Reexam Decision in Ex Parte Reexamination No. 90/014,552
`Settelment and License Agreement (CONFIDENTIAL)
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`IPR2024-01020
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`Pursuant to 37 C.F.R § 42.74 and 35 U.S.C. § 317 and the authorization
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`provided by the Board on January 13, 2025, Petitioner Google LLC (“Petitioner”)
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`and Patent Owner Kove IO, Inc. (“Patent Owner”) jointly request termination of this
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`proceeding, Case No. IPR2024-01020, directed to U.S. Patent No. 7,814,170 (the
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`“’170 Patent”).
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`Petitioner and Patent Owner have settled their dispute regarding the ’170
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`Patent, including both this proceeding and Patent Owner’s assertion of the ’170
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`Patent in the related district court litigation, Kove IO, Inc. v. Google, No. 1:23-cv-
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`04244. The parties do not anticipate further litigation between them concerning the
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`’170 Patent. The following proceeding related to the ’170 Patent is also currently
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`before the Board and is the subject of a contemporaneous joint motion to terminate
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`proceeding: Case No. IPR2024-01019. No other proceeding relating to this patent
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`is before the Board.
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`Good cause exists to terminate this proceeding because the parties have settled
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`their dispute regarding the ’170 Patent and the proceeding is still at an early stage.
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`The Board has not yet issued an institution decision. Terminating the proceeding
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`now would thus serve the interests of judicial economy as well as the mutual interest
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`of the parties.
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`A true and correct copy of the parties’ settlement agreement will be filed as
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`Exhibit 2015, along with a joint motion to treat the settlement agreement as business
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`1
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`IPR2024-01020
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`confidential information. No other agreements, written or oral, exist between the
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`parties as to the ’170 Patent.
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`Respectfully submitted,
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`Dated: January 13, 2025
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`
` /Naveen Modi/
`Naveen Modi (Reg. No. 46,224)
`Paul Hastings LLP
`2050 M Street NW
`Washington, D.C. 20036,
`Tel.: 202.551.1700
`Fax: 202.551.1705
`Email: PH-Google-Kove-
`IPR@paulhastings.com
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`Counsel for Petitioner
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` /Khue Hoang/
`Khue Hoang (Reg. No. 44,767)
`khoang@reichmanjorgensen.com
`REICHMAN JORGENSEN LEHMAN
`& FELDBERG LLP
`400 Madison Avenue, Suite 14D
`New York, NY 10017
`Telephone: (212) 381-1965
`Facsimile: (650) 623-1449
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`Counsel for Patent Owner
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`2
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`IPR2024-01020
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the Joint Motion to Terminate
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`Pursuant to 35 U.S.C. § 317 was served on January 13, 2025, by e-mail directed to
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`counsel of record for the Patent Owner as follows:
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`January 13, 2025
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`Naveen Modi (Reg. No. 46,224)
`Joseph E. Palys (Reg. No. 46,508)
`Daniel Zeilberger (Reg. No. 65,349)
`Howard Herr (pro hac vice to be filed)
`Alexa Lowman (pro hac vice to be filed)
`Puja Patel (pro hac vice to be filed)
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`Paul Hastings LLP
`2050 M Street NW
`Washington, D.C. 20036,
`Tel.: 202.551.1700
`Fax: 202.551.1705
`Email: PH-Google-Kove-IPR@paulhastings.com
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`Respectfully submitted,
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` /Khue Hoang/
`Khue Hoang (Reg. No. 44,767)
`Counsel for Patent Owner
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