Case IPR2015-00519
`Patent 5,839,108
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________________
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`MICRON TECHNOLOGY, INC.
`MICRON CONSUMER PRODUCTS GROUP, INC.
`Petitioner
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`v.
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`e.DIGITAL CORPORATION
`Patent Owner
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`_________________________
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`Case IPR2015-00519
`Patent 5,839,108
`
`_________________________
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`DECLARATION OF MATTHEW A. FERRY IN SUPPORT OF
`PETITIONERS’ OPPOSITION TO PATENT OWNER’S MOTION TO
`DENY THE PETITION A FILING DATE FOR FAILURE TO SERVE THE
`PATENT OWNER AT THE CORRESPONDENCE ADDRESS OF RECORD
`AND TO DISMISS THE PETITION FOR FAILURE TO FILE THE
`PETITION WITHIN ONE YEAR AFTER SERVICE OF A COMPLAINT
`FOR PATENT INFRINGEMENT
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`Micron v. e.Digital
`IPR2015-00519
`Exhibit 1017
`Page 1 of 5
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`Patent 5,839,108
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
`
`MICRON TECHNOLOGY, INC.
`MICRON CONSUMER PRODUCTS GROUP, INC.
`Petitioner
`
`v.
`
`e.DIGITAL CORPORATION
`Patent Owner
`
`_________________________
`
`
`Case IPR2015-00519
`Patent 5,839,108
`
`_________________________
`
`DECLARATION OF MATTHEW A. FERRY IN SUPPORT OF
`PETITIONERS’ OPPOSITION TO PATENT OWNER’S MOTION TO
`DENY THE PETITION A FILING DATE FOR FAILURE TO SERVE THE
`PATENT OWNER AT THE CORRESPONDENCE ADDRESS OF RECORD
`AND TO DISMISS THE PETITION FOR FAILURE TO FILE THE
`PETITION WITHIN ONE YEAR AFTER SERVICE OF A COMPLAINT
`FOR PATENT INFRINGEMENT
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`Micron v. e.Digital
`IPR2015-00519
`Exhibit 1017
`Page 1 of 5
`
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`I, Matthew A. Ferry, declare:
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`Case IPR2015-00519
`Patent 5,839,108
`
`1.
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`I am an attorney with the law firm of Jones Day and backup counsel
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`of record for Micron Technology, Inc. and Micron Consumer Products Group, Inc.
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`(collectively, “Petitioners”).
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`2.
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`I am also counsel of record for Petitioners as
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`Defendants/Counterclaimants in the corresponding litigations e.Digital
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`Corporation v. Micron Consumer Products Group, Inc., dba Lexar, Case No. 3:13-
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`cv-02907-H-BGS (S.D. Cal.), and e.Digital Corporation v. Micron Technology,
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`Inc., Case No. 3:13-cv-02944-H-BGS (S.D. Cal.).
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`3.
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`I make this declaration in support of Petitioners’ Opposition to Patent
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`Owner’s Motion to Deny the Petition a Filing Date for Failure to Serve the Patent
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`Owner at the Correspondence Address of Record and to Dismiss the Petition for
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`Failure to File the Petition within One Year After Service of a Complaint for
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`Patent Infringement. This declaration is based on my personal knowledge.
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`4.
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`Attached as Exhibit 1018 is a true and correct copy of an email I sent
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`on December 31, 2014 to Patent Owner’s litigation counsel of record: Mr. Anton
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`Handal, Ms. Pamela Chalk, and Mr. Gabriel Hedrick of the law firm Handal &
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`Associates.
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`5.
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`Attached as Exhibit 1019 is a true and correct copy of another email I
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`sent to Patent Owner’s litigation counsel of record on December 31, 2014.
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`
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`1
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`Micron v. e.Digital
`IPR2015-00519
`Exhibit 1017
`Page 2 of 5
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`Attached as Exhibit 1020 is a true and correct copy of the email
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`Case IPR2015-00519
`Patent 5,839,108
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`6.
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`correspondence between myself and Patent Owner’s litigation counsel following
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`the emails of Exhibits 1018 and 1019, including an email from myself to Mr.
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`Hedrick dated January 5, 2015.
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`7. Mr. Hedrick contacted me by email on January 5, 2015 to request
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`assistance in obtaining the petition and its supporting material from the secure
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`links in my December 31, 2014 emails. As shown in my same-day response to Mr.
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`Hedrick’s email, I walked Mr. Hedrick through the steps to download the petition
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`and its supporting material from the PTAB’s website. I included a screenshot as
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`well to make sure Mr. Hedrick had all the information he needed to obtain the
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`material. I also offered to email him the files directly.
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`8.
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`I took the screenshot in my January 5, 2015 email to Mr. Hedrick
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`from the public version of the PTAB’s website (https://ptabtrials.uspto.gov/) after
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`clicking on the link “Search for a proceeding / Browse the proceedings (No login
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`or registration required)” and entering “IPR2015-00519” into the “Case Number”
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`field.
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`9.
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`Although I am admitted to practice before the U.S. Patent &
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`Trademark Office, my practice focuses on district court litigation and not patent
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`prosecution. The first time I have ever drafted, filed, or served a petition for inter
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`2
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`Micron v. e.Digital
`IPR2015-00519
`Exhibit 1017
`Page 3 of 5
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`partes review and the accompanying certificate of service was for the instant
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`Case IPR2015-00519
`Patent 5,839,108
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`petition.
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`10.
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`I am the person who drafted and signed the certificate of service. I
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`was aware of the previous petitions for inter partes review filed by Intel Corp. in
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`August 2014 (IPR2014-01429, IPR2014-01430), including the address for service:
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`Thorpe North & Western, 8180 South 700 East, Suite 350, Sandy, Utah 84070. I
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`used these petitions as a reference in drafting the instant petition and certificate of
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`service (including the identity of the person to serve on behalf of Patent Owner). I
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`was also aware that Patent Owner did not object to service at this address, and I
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`believed in good faith the address to be accurate.
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`11. Having no reason to suspect e.Digital had changed its counsel of
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`record in the few months between August 2014 and December 2014, in good faith
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`I expected service on the Thorpe, North & Western address to be effective.
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`12. On December 31, 2014, I served Patent Owner by UPS overnight mail
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`at the same Thorpe, North & Western address that appears in the Intel petitions,
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`which I in good faith believed to be accurate.
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`13. During my correspondence with Patent Owner’s litigation counsel
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`between December 31, 2014, and January 5, 2015 about the instant petition, Patent
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`Owner’s counsel did not inform me of any alleged improper service of the petition.
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`Had I been informed of any allegation of improper service, I would have
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`3
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`Micron v. e.Digital
`IPR2015-00519
`Exhibit 1017
`Page 4 of 5
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`
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`immediately re-served the petition on the counsel of record to address the alleged
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`Case IPR2015-00519
`Patent 5,839,108
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`error, which would have been well in advance of January 16, 2015.
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`14. Any such error in service was inadvertent and unintended. I included
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`service on the litigation counsel of record to make sure Patent Owner was well
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`aware of the instant petition and its supporting materials in a timely manner.
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`15. My first notice of Patent Owner’s assertion that service was improper
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`was on January 21, 2015, when Patent Owner filed its Mandatory Notices
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`(Paper 3). At no point before then did Patent Owner or its counsel inform me that
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`service was allegedly made on the wrong counsel or that Patent Owner had not
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`received a copy of the petition and its supporting materials.
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`16. From December 31, 2014, until the date of this declaration, I have not
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`received any returned petition material from Thorpe, North & Western or any other
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`notice from them to indicate that service at that address was improper.
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`I declare under penalty of perjury under the laws of the United States of
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`America that the foregoing is true and correct and that I executed this declaration
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`on February 24, 2015, at San Diego, California.
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` /s/ Matthew A. Ferry
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`MATTHEW A. FERRY
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`4
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`Micron v. e.Digital
`IPR2015-00519
`Exhibit 1017
`Page 5 of 5
`
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