`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`MICRON TECHNOLOGY, INC.
`Petitioner
`
`v.
`
`LIMESTONE MEMORY SYSTEMS LLC
`Patent Owner
`____________________
`
`Case No. IPR 2016-01567
`
`U.S. Patent 5,894,441
`Filed March 31, 1998
`Issued April 13, 1999
`Title: SEMICONDUCTOR MEMROY DEVICE WITH REDUNDANCY
`CIRCUIT
`____________________
`
`Customer No: 22242
`____________________
`
`
`LIMESTONE MEMORY SYSTEMS LLC’S MANDATORY
`NOTICES PURSUANT TO 37 C.F.R. §42.8(a)(2)
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
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`
`
`
`
`
`
`
`
`
`
`Case IPR 2016-01567 for
`U.S. Patent No. 5,894,441
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`Patent Owner Limestone Memory Systems LLC (“Limestone”) hereby files
`
`its Mandatory Notices pursuant to 37 C.F.R. §42.8(a)(2) for the above-captioned
`
`proceeding.
`
`I.
`
`Real Parties-In-Interest Under 37 C.F.R. §42.8(b)(1)
`
`The real parties-in-interest are Limestone Memory Systems LLC and Acacia
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`Research Group LLC.
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`
`
`II. Related Matters Under 37 C.F.R. §42.8(b)(2)
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`Patent Owner notes the following matters that may affect or be affected by a
`
`decision in this proceeding:
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`A. Related Administrative Matters
`
`There are no U.S. patent applications that claim priority to U.S. Patent No.
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`5,894,441 (“the ‘441 patent”), and the ‘441 patent does not claim priority from
`
`another U.S. patent or patent application. There are no pending U.S. patent
`
`applications related to the ‘441 patent.
`
`Petitioner Apple has filed two concurrent IPR petitions against patents
`
`owned by Limestone. The patents at issue in each of these concurrent proceedings
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`are unrelated except by their common assignment to Limestone and by having
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`been asserted in lawsuits involving Limestone and Petitioner. In addition to the
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`current matter, these matters include the following case numbers and patents:
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`
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`1
`
`
`
`Case IPR 2016-01567 for
`U.S. Patent No. 5,894,441
`
`
`Patent No.
`U.S. Patent No. 6,233,181 (“the ‘181 patent”)
`U.S. Patent No. 5,894,441 (“the ‘441 patent”)
`
`Case No.
`IPR 2016-01561
`IPR 2016-01567
`
`
`The ‘441 patent was subject of a prior IPR petition, filed by Micron
`
`Technology, Inc. (“Micron”) on October 27, 2015 as IPR2016-00094. That Micron
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`petition was one of five concurrent IPR petitions filed against patents owned by
`
`Limestone, which are similarly unrelated except by their common assignment to
`
`Limestone and by having been asserted in lawsuits involving Limestone and
`
`Micron.
`
`Case No.
`IPR 2016-00093
`IPR 2016-00094
`IPR 2016-00095
`IPR 2016-00096
`IPR 2016-00097
`
`
`Patent No.
`U.S. Patent No. 5,805,504 (“the ‘504 patent”)
`U.S. Patent No. 5,894,441 (“the ‘441 patent”)
`U.S. Patent No. 5,943,260 (“the ‘260 patent”)
`U.S. Patent No. 6,233,181 (“the ‘181 patent”)
`U.S. Patent No. 6,697,296 (“the ‘296 patent”)
`
`Limestone filed preliminary responses in which it disclaimed certain claims of the
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`‘441 patent and the ‘296 patent. Upon review of Micron’s petitions and
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`Limestone’s preliminary responses, the Board denied Micron’s petitions at least in
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`part as to the ‘504 patent, the ‘441 patent, and the ‘181 patent. To avoid delay from
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`inter partes review arising from Micron’s petitions, Limestone filed statutory
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`disclaimers as to certain claims of the ‘260 patent, the ‘181 patent, and the ‘296
`
`
`
`2
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`
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`Case IPR 2016-01567 for
`U.S. Patent No. 5,894,441
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`patent; which ultimately terminated inter partes review of these claims. Limestone
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`continues to assert the remaining claims from the ‘504 patent, the ‘441 patent, and
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`the ‘181 patent against Micron and other defendants, including Petitioner, in
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`related District Court Litigation discussed below.
`
`With respect specifically to the ‘441 patent, Micron’s petition in IPR2016-
`
`00094 asserted two grounds of invalidity, as follows:
`
`Claims
`1–3, and 5
`
`3, and 6–15
`
`
`
`Alleged Grounds for Invalidity
`35 U.S.C. § 102(b) as anticipated by U.S. Patent No.
`5,270,975, to McAdams (“McAdams”),
`35 U.S.C. § 103 as obvious over McAdams in view
`of Japanese Patent Application No. H06-052696
`(“Minami”)
`
`In its preliminary response, Limestone disclaimed claims 1–3, and 5 of the ‘441
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`patent. The Board subsequently denied Micron’s petition as to claims 6–15.
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`Further, the Board denied Micron’s subsequent request for rehearing as to claims
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`6–15.
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`B. Related Judicial Matters
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`The patent at issue in the current matter, U.S. Patent 5,894,441 (“the ‘441
`
`patent”), is asserted in the following pending lawsuits:
`
`
`
`3
`
`
`
` Limestone Memory Systems LLC v. Micron Technology, Inc., No. 8:15-CV-
`
`Case IPR 2016-01567 for
`U.S. Patent No. 5,894,441
`
`
`00278 (filed February 17, 2015 C.D. Cal.) (asserts the ‘504, ‘441, ‘260,
`
`‘181, and ‘296 patents);
`
` Limestone Memory Systems LLC v. Dell, Inc., No. 8:15-CV-00648 (filed
`
`April 23, 2015 C.D. Cal.) (asserts the ‘504, ‘441, ‘260, ‘181, and ‘296
`
`patents);
`
` Limestone Memory Systems LLC v. Lenovo United States Inc., No. 8:15-CV-
`
`00650 (filed April 23, 2015 C.D. Cal.) (asserts the ‘504, ‘441, ‘260, ‘181,
`
`and ‘296 patents);
`
` Limestone Memory Systems LLC v. Hewlett-Packard Company, No. 8:15-
`
`CV-00652 (filed April 23, 2015 C.D. Cal.) (asserts the ‘504, ‘441, ‘260,
`
`‘181, and ‘296 patents);
`
` Limestone Memory Systems LLC v. Acer America Corporation, No. 8:15-
`
`CV-00653 (filed April 23, 2015 C.D. Cal.) (asserts the ‘504, ‘441, ‘260,
`
`‘181, and ‘296 patents);
`
` Limestone Memory Systems LLC v. Kingston Technology Co., Inc., No.
`
`8:15-CV-00654 (filed April 23, 2015 C.D. Cal.) (asserts the ‘504, ‘441,
`
`‘260, ‘181, and ‘296 patents);
`
`
`
`4
`
`
`
` Limestone Memory Systems LLC v. OCZ Storage Solutions, Inc., No. 8:15-
`
`Case IPR 2016-01567 for
`U.S. Patent No. 5,894,441
`
`
`CV-00658 (filed April 23, 2015 C.D. Cal.) (asserts the ‘504, ‘441, ‘181, and
`
`‘296 patents); and
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` Limestone Memory Systems LLC v. Apple, Inc., No. 8:15-CV-01274 (filed
`
`August 10, 2015 C.D. Cal.) (asserts the ‘504, ‘441, ‘181, and ‘296 patents).
`
`The Patent Owner has filed additional lawsuits, which assert some of the
`
`same patents that are subject of the five concurrent IPR petitions filed by the
`
`Petitioner (listed above). These lawsuits are unrelated to the current matter except
`
`to the extent they involve Limestone and certain accused products in the cases are
`
`manufactured by the Petitioner. The ‘441 patent is not asserted in these additional
`
`lawsuits:
`
` Limestone Memory Systems LLC v. PNY Technologies, Inc., No. 8:15-CV-
`
`00656 (filed April 23, 2015 C.D. Cal.) (asserts the ‘260 patent); and
`
` Limestone Memory Systems LLC v. Transcend
`
`Information,
`
`Inc.
`
`(California), No. 8:15-CV-00657 (filed April 23, 2015 C.D. Cal.) (asserts
`
`the ‘260 patent).
`
`III. Lead and Back-Up Counsel Under 37 C.F.R. §42.8(b)(3)
`
`Patent Owner identifies lead and back-up counsel as follows:
`
`A.
`
`Lead Counsel
`
`
`
`5
`
`
`
`Case IPR 2016-01567 for
`U.S. Patent No. 5,894,441
`
`
`Nicholas T. Peters
`PTO Registration No. 53,456
`FITCH EVEN TABIN & FLANNERY LLP
`120 South LaSalle Street, Suite 1600
`Chicago, Illinois 60603
`Telephone: (312) 577-7000
`Facsimile: (312) 577-7007
`Email: LimestoneIPR@fitcheven.com
`
`B.
`
`Back-Up Counsel
`
`David A. Gosse
`PTO Registration No. 61,511
`FITCH EVEN TABIN & FLANNERY LLP
`120 South LaSalle Street, Suite 1600
`Chicago, Illinois 60603
`Telephone: (312) 577-7000
`Facsimile: (312) 577-7007
`Email: LimestoneIPR@fitcheven.com
`
`Paul B. Henkelmann
`PTO Registration No. 65,891
`FITCH EVEN TABIN & FLANNERY LLP
`120 South LaSalle Street, Suite 1600
`Chicago, Illinois 60603
`Telephone: (312) 577-7000
`Facsimile: (312) 577-7007
`Email: LimestoneIPR@fitcheven.com
`
`
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`IV. Service Information Under 37 C.F.R. §42.8(b)(4)
`
`Please address all correspondence to the lead and back-up counsel as shown
`
`above. Patent Owner consents to electronic service by email at the email addresses
`
`above.
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`
`
`
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`6
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`
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`Case IPR 2016-01567 for
`U.S. Patent No. 5,894,441
`
`
`Respectfully submitted,
`FITCH EVEN TABIN & FLANNERY LLP
`By: /Nicholas T. Peters/
`
`Nicholas T. Peters
`Registration No. 53,456
`ntpete@fitcheven.com
`
`
`
`Dated: September 6, 2016
`
`
`
`120 South LaSalle Street
`Suite 1600
`Chicago, Illinois 60603
`(312) 577-7000
`(312) 577-7007 (fax)
`
`
`
`7
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`
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`Case IPR 2016-01567 for
`U.S. Patent No. 5,894,441
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies
`
`that
`
`the foregoing LIMESTONE
`
`MEMORY SYSTEMS LLC’S MANDATORY NOTICES PURSUANT TO
`
`37 C.F.R. §42.8(a)(2) was served electronically via email on September 6, 2015, in
`
`their entireties on the following counsel of record for Petitioner:
`
`John R. Hutchins
`Kenyon & Kenyon LLP
`1500 K Street NW
`Washington, DC 20005
`jhutchins@kenyon.com
`(202) 220-4200
`
`Michael Zachary
`Kenyon & Kenyon LLP
`1801 Page Mill Road, Suite 210
`Palo Alto, CA 94304
`mzachary@kenyon.com
`(650) 384-4700
`
`Rose Cordero Prey
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`rcordero@kenyon.com
`(212) 425-7200
`
`
`
`Respectfully submitted,
`FITCH EVEN TABIN & FLANNERY LLP
` By: /Nicholas T. Peters/
`Nicholas T. Peters
`Registration No. 53,456
`ntpete@fitcheven.com
`Lead Counsel for Patent Owner
`
`
`
`
`Dated: September 6, 2016
`
`
`
`
`120 South LaSalle Street
`Suite 1600
`Chicago, Illinois 60603
`(312) 577-7000
`(312) 577-7007 (fax)
`
`
`
`8