`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`MICRON TECHNOLOGY, INC.,
`Petitioner
`
`v.
`
`VERVAIN, LLC,
`Patent Owner
`_____________
`
`Case: IPR2021-01547
`U.S. Patent No. 8,891,298
`_____________
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`
`
`
`
`
`
`
`
`
`
`
`LISTING OF EXHIBITS
`
`Exhibit
`
`Description
`
`1001
`
`1002
`
`U.S. Patent No. 8,891,298 to Rao (“298 patent”)
`
`File History of U.S. Patent No. 8,891,298
`
`1003-1008
`
`Intentionally omitted
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`Declaration of Dr. David Liu (“Liu Decl.”) - IPR2021-01547
`
`U.S. Patent Application Publication No. 2011/0099460
`(“Dusija”)
`
`U.S. Patent Application Publication No. 2008/0140918
`(“Sutardja”)
`
`U.S. Patent Application Publication No. 2009/0327591
`(“Moshayedi”)
`
`U.S. Patent No. 7,254,059 (“Li”)
`
`Betty Prince, Semiconductor Memories – A Handbook of
`Design, Manufacture, and Application (2d ed. 1991) (“Prince”)
`
`U.S. Patent No. 8,120,960 (“Varkony”)
`
`U.S. Patent No. 7,000,063 (“Friedman”)
`
`U.S. Patent Application Publication No. 2005/0251617
`(“Sinclair”)
`
`Jan Axelson, USB Mass Storage: Designing and Programming
`Devices and Embedded Hosts (2006) (“Axelson”)
`
`Rino Micheloni et al., Inside NAND Flash Memories (1st ed.
`2010) (“Micheloni”)
`
`U.S. Patent Application Publication No. 2011/0115192 (“Y.
`Lee”)
`
`i
`
`
`
`
`
`
`
`
`
`Exhibit
`
`Description
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`U.S. Patent No. 7,453,712 (“Kim”)
`
`U.S. Patent Application Publication No. 2011/0096601
`(“Gavens”)
`
`U.S. Patent No. 8,078,794 (“C. Lee”)
`
`U.S. Patent No. 7,733,729 (“Boeve”)
`
`Microsoft Computer Dictionary, Fifth Edition, 2002, definition
`of read-after-write
`
`Merriam-Webster’s Collegiate Dictionary, Eleventh Edition,
`2006, definition of periodic
`
`New Oxford American Dictionary, 3rd Edition, 2010, definition
`of module
`
`1028
`
`U.S. Patent Application Publication No. 2010/0172180 (“Paley”)
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
`U.S. Patent No. 7,853,749 (“Kolokowsky”)
`
`U.S. Patent Application Publication No. 2010/0017650
`(“Chin”)
`
`European Patent Specification No. EP 2.291.746 B1 (“Radke”)
`
`U.S. Patent Application Publication No. 2015/0214476
`(“Matsui”)
`
`U.S. Patent Application Publication No. 2006/0053246 (“S.
`Lee”)
`
`Complaint for Patent Infringement, Dkt. No. 1, Vervain, LLC v.
`Micron Technology, Inc., Micron Semiconductor Products, Inc.,
`and Micron Technology Texas, LLC, Case No. 6:21-cv- 00487-
`ADA (May 10, 2021 W.D. Tex.)
`
`ii
`
`
`
`
`
`
`
`
`
`Exhibit
`
`Description
`
`1035
`
`1036
`
`1037
`
`1038
`
`1039
`
`1040
`
`1041
`
`1042
`
`1043
`
`1044
`
`Agreed Scheduling Order, Dkt. No. 24, dated September 16,
`2021, in Vervain, LLC v. Micron Technology, Inc., Micron
`Semiconductor Products, Inc., and Micron Technology Texas,
`LLC, Case No. 6:21-cv-00487-ADA
`
`Vervain’s Preliminary Infringement Contentions, dated August 6,
`2021, in Vervain, LLC v. Micron Technology, Inc., Micron
`Semiconductor Products, Inc., and Micron Technology Texas,
`LLC, Case No. 6:21-cv-00487-ADA
`
`Judge Albright, Order Governing Proceedings - Patent Cases
`(OGP 3.4), dated June 24, 2021
`
`Scott McKeown, “WDTX ‘Implausible Schedule’ & Cursory
`Markman Order Highlighted,” Ropes & Gray, Patents Post-
`Grant, Inside Views & News Pertaining to the Nation’s Busiest
`Patent Court, June 2, 2021
`
`Dani Kass, Judge Albright Now Oversees 20% of New U.S. Patent
`Cases, Law360, March 10, 2021
`
`Brian Dipert and Markus Levy, Designing with Flash Memory
`(1994) (“Dipert & Levy”)
`
`U.S. Patent No. 7,366,826 (“Gorobets”)
`
`U.S. Patent No. 6,901,498 (“Conley”)
`
`U.S. Patent No. 8,356,152 (“You”)
`
`U.S. Patent Application Publication No. 2012/0311244 (“Huang”)
`
`1045
`
`U.S. Patent Application Publication No. 2008/0082736 (“Chow”)
`
`1046
`
`1047
`
`U.S. Patent No. 8,656,256 (“Weathers”)
`
`Ashok Sharma, Advanced Semiconductor Memories,
`Architectures, Designs, and Applications (2003) (“Sharma”)
`
`iii
`
`
`
`
`
`
`
`
`
`Exhibit
`
`Description
`
`1048-1055
`
`Intentionally omitted
`
`1056
`
`1057
`
`1058
`
`1059
`
`1060
`
`1061
`
`1062
`
`1063
`
`1064
`
`1065
`
`1066
`
`Pro Hac Vice Motion of Jared Bobrow
`
`Reply Declaration of Dr. David Liu (“Liu Reply”) - IPR2021-
`01547
`
`Curriculum Vitae of Dr. David Liu
`
`Deposition Transcript of Sunil Khatri (September 1, 2022)
`[IPR2021-01547, -01548 and -01549]
`
`Intentionally omitted
`
`U.S. Patent No. 8,130,554 (“Linnell”)
`
`U.S. Patent No. 7,917,709 (“Gorobets III”)
`
`Excerpt from Exhibit 1 (eMMC) to Vervain’s Final
`Infringement Contentions, dated August 31, 2022, in Vervain,
`LLC v. Micron Technology, Inc., Micron Semiconductor
`Products, Inc., and Micron Technology Texas, LLC, Case No.
`6:21-cv-00487-ADA – FILED UNDER SEAL
`
`Byung-Woo Nam, Gap-Joo Na, and Sang-Won Lee, “A Hybrid
`Flash Memory SSD Scheme for Enterprise Database
`Applications”
`
`Yuan-Hao Chang, Jen-Wei Hsieh, Tei-Wei Kuo, “Improving Flash
`Wear-Leveling by Proactively Moving Static Data”
`
`Muthukumar Murugan, “Rejuvinator: A Static Wear Leveling
`Algorithm for NAND Flash Memory with Minimized Overhead”
`
`1067-1068
`
`Intentionally omitted
`
`1069
`
`Petitioner’s Hearing Demonstratives (IPR2021-01547 and -
`01548)
`
`iv
`
`
`
`
`
`
`
`
`
`Exhibit
`
`Description
`
`1070-1071
`
`Intentionally omitted
`
`1072
`
`Confidential Settlement Agreement
`
`v
`
`
`
`
`
`Petitioner Micron Technology, Inc. (“Micron” or “Petitioner”) and Patent
`
`Owner Vervain, LLC (“Vervain” or “Patent Owner”) have reached a settlement.
`
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, and pursuant to email
`
`authorization from the Board on March 29, 2023, Micron and Vervain jointly
`
`move to terminate the present inter partes review (IPR) proceeding.
`
`I.
`
`STATEMENT OF FACTS
`
`Micron and Vervain (collectively, the “Settling Parties”) have reached an
`
`agreement (the “Settlement Agreement”) to resolve their disputes, including their
`
`disputes regarding the patent (U.S. Patent No. 8,891,298, “the challenged patent”)
`
`that is challenged in this proceeding.1 The challenged patent is also at issue in the
`
`following district court case: Vervain, LLC v. Micron Tech. Inc., No. 6:21-cv-487-
`
`ADA (W.D. Tex.) (“the District Court Litigation”). In the Settlement Agreement,
`
`Vervain has agreed to file a motion to dismiss the District Court Litigation. Apart
`
`from the present IPR proceeding and the District Court Litigation, there are no
`
`other litigations or proceedings involving the challenged patent between the
`
`parties, and no litigations or proceedings involving the challenged patent between
`
`the parties are contemplated in the foreseeable future.
`
`
`1 Micron’s signatory is in the process of formally executing the agreement, which
`it expects to do this evening. Petitioner will file the executed version with both
`parties’ signatures promptly.
`
`
`
`1
`
`
`
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.74(b), the Settlement Agreement is in writing,
`
`and a true and correct copy is being filed as Exhibit 1072. Apart from the
`
`Settlement Agreement, there are no collateral agreements or understandings made
`
`in connection with, or in contemplation of, the termination of this IPR proceeding.
`
`The Settlement Agreement is being filed electronically with access to “Board and
`
`Parties Only.” A “Joint Request to Treat Settlement Agreement as Business
`
`Confidential Information Pursuant to 35 U.S.C. § 317(b)” is being filed
`
`concurrently with this Joint Motion to Terminate Proceeding, to treat the
`
`Settlement Agreement as business confidential information and to keep it separate
`
`from the files of the involved patent pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
`
`§ 42.74(c).
`
`II. RELIEF REQUESTED
`
`Termination of this inter partes review is requested, and the Settling Parties
`
`respectfully submit that such termination is justified. “There are strong public
`
`policy reasons to favor settlement between the parties to a proceeding.”
`
`Consolidated Trial Practice Guide 86 (Nov. 2019). “The Board expects that a
`
`proceeding will terminate after the filing of a settlement agreement, unless the
`
`Board has already decided the merits of the proceeding.” Id. (citing 35 U.S.C. §§
`
`317(a)).
`
`2
`
`
`
`
`
`
`
`
`
`The Board should terminate this proceeding, as the Settling Parties jointly
`
`request, for the following reasons.
`
`First, Micron and Vervain have met the statutory requirement that they file
`
`a “joint request” to terminate before the Office “has decided the merits of the
`
`proceeding.” 35 U.S.C. § 317(a). Under section 317(a), an inter partes review shall
`
`be terminated upon such joint request “unless the Office has decided the merits of
`
`the proceeding before the request for termination is filed.” There are no other
`
`preconditions recited in 35 U.S.C. § 317(a).
`
`Second, Micron and Vervain have reached a settlement as to all the disputes
`
`in this proceeding and as to the ’298 patent between the parties. A true copy of the
`
`settlement agreement is being filed concurrently herewith. See Confidential
`
`Exhibit 1072. Micron and Vervain request that the settlement agreement be treated
`
`as business confidential information and be kept separate from the files of this
`
`proceeding in accordance with 37 C.F.R. § 42.74(c). No other such agreements,
`
`written or oral, exist between or among the Settling Parties.
`
`Third, termination upon settlement, as requested, would also further the
`
`purpose of inter partes review proceedings, which seek to provide an efficient
`
`and less costly alternative forum for patent disputes. Maintaining the proceeding
`
`would discourage further settlements, as patent owners in similar situations would
`
`3
`
`
`
`
`
`
`
`
`
`have a strong disincentive to settle if they perceived that an inter partes review
`
`would continue regardless of a settlement.
`
`III. CONCLUSION
`
`For the foregoing reasons, Micron and Vervain respectfully request
`
`termination of this inter partes review.
`
`
`
`4
`
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: April 3, 2023
`
`
`
`
`
`Respectfully submitted,
`
`5
`
`
`
`
`
`By:
`Jeremy Jason Lang
`Lead Counsel for Petitioner Micron
`Reg. No. 43,263
`1000 Marsh Road
`Menlo Park, CA 94025-1015
`T: (650) 614-7400
`F: (650) 614-7401
`Email:PTABDocketJJL2@orrick.com
`
`/s/ Alan Whitehurst
`Alan Whitehurst
`Reg. No. 43,263
`awhitehurst@mckoolsmith.com
`Christopher P. McNett
`Reg. No. 64,489
`cmcnett@mckoolsmith.com
`Arvind Jairam
`Reg. No. 62,759
`ajairam@mckoolsmith.com
`MCKOOL SMITH, P.C.
`1999 K St. NW, Suite 600
`Washington, DC 20006
`Telephone: (202) 370-8300
`Facsimile: (202) 370-8344
`
`James E. Quigley
`Reg. No. 78,596
`jquigley@mckoolsmith.com
`MCKOOL SMITH, P.C.
`303 Colorado Street, Suite 2100
`Austin, Texas 78701
`Telephone: (512) 692-8700
`Facsimile: (512) 692-8744
`
`Counsel for Patent Owner Vervain
`
`
`
`
`
`CERTIFICATION OF SERVICE
`
`
`
`The undersigned hereby certifies that the foregoing JOINT MOTION TO
`
`TERMINATE PROCEEDING has been served on Patent Owner via email on the
`
`following counsel of record for Patent Owner:
`
`Alan Whitehurst
`awhitehurst@mckoolsmith.com
`Christopher P. McNett
`cmcnett@mckoolsmith.com
`Arvind Jairam
`ajairam@mckoolsmith.com
`MCKOOL SMITH, P.C.
`1999 K St. NW, Suite 600
`Washington, DC 20006
`
`James E. Quigley
`jquigley@mckoolsmith.com
`MCKOOL SMITH, P.C.
`303 Colorado Street, Suite 2100
`Austin, Texas 78701
`
`Copy: Vervain-Mic-MS@McKoolSmith.com
`
`
`
`Dated: April 3, 2023
`
`By:
`
`
`
`
`Jeremy Jason Lang
`Reg. No. 43,263
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
