`
`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 REQUEST TO TREAT SETTLEMENT AGREEMENT AS BUSINESS
`CONFIDENTIAL INFORMATION PURSUANT TO 35 U.S.C. § 317(B)
`
`
`
`
`
`
`
`
`
`
`
`
`
`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
`
`
`
`
`
`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74, and the Board’s email
`
`of March 29, 2023, Petitioner Micron Technology, Inc. (“Micron” or “Petitioner”)
`
`and Patent Owner Vervain, LLC (“Vervain” or “Patent Owner”) (collectively, the
`
`“Settling Parties”), which have reached a settlement,1 jointly request that the Board
`
`treat as business confidential information, the true and complete copy of the
`
`Settlement Agreement (Confidential Exhibit 1072) between the parties, as
`
`referenced in the parties’ Joint Motion to Terminate Proceeding (pursuant to 35
`
`U.S.C. § 317 and 37 C.F.R. § 42.74), filed concurrently herewith.
`
`35 U.S.C. § 317(b) provides that:
`
`At the request of a party to the proceeding, the agreement or
`understanding shall be treated as business confidential information,
`shall be kept separate from the file of the involved patents, and shall be
`made available only to Federal Government agencies on written
`request, or to any person on a showing of good cause.
`
`Likewise, 37 C.F.R. § 42.74(c) provides that:
`
`A party to a settlement may request that the settlement be treated as
`business confidential information and be kept separate from the files of
`an involved patent or application. The request must be filed with the
`
`
`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
`
`
`
`
`
`settlement. If a timely request is filed, the settlement shall only be
`available:
`
`
`
`(1) To a Government agency on written request to the Board; or
`
`(2) To any other person upon written request to the Board to make
`the settlement agreement available, along with the fee specified in
`§ 42.15(d) and on a showing of good cause.
`
`The present request, which is being filed contemporaneously with the
`
`Settlement Agreement, is timely and in accordance with the foregoing authority.
`
`Therefore, the Settling Parties request that the Settlement Agreement (Confidential
`
`Exhibit 1072) (i) be treated as business confidential information, (ii) be maintained
`
`separate from the publicly available file of the involved patent, and (iii) shall be
`
`made available only to Federal Government agencies on written request, or to
`
`persons showing good cause on written request, pursuant to 35 U.S.C. § 317(b)
`
`and 37 C.F.R. § 42.74(c). Petitioner and Patent Owner consider the settlement
`
`agreement to contain highly sensitive business confidential information that would
`
`substantially harm their business interests if publicly disclosed.
`
`The Settling Parties also respectfully request that the Board inform the
`
`Settling Parties if anyone seeks production of the agreement and afford the Settling
`
`Parties an opportunity to address whether such request is supported by good cause.
`
`2
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`
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`3
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`
`
`
`
`Dated: April 3, 2023
`
`
`
`
`
`Respectfully submitted,
`
`
`
`4
`
`
`
`
`
`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 REQUEST TO
`
`TREAT SETTLEMENT AGREEMENT AS BUSINESS CONFIDENTIAL
`
`INFORMATION PURSUANT TO 35 U.S.C. § 317(B) 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
`
`
`
`
`
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`
`
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