throbber

`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`MICRON TECHNOLOGY, INC.,
`Petitioner
`
`v.
`
`VERVAIN, LLC,
`Patent Owner
`_____________
`
`Case: IPR2021-01549
`U.S. Patent No. 9,997,240
`_____________
`
`
`
`PATENT OWNER’S MANDATORY NOTICES
`UNDER 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, VA 22313
`
`
`

`

`IPR2021-01549
`U.S. Patent No. 9,997,240
`Pursuant to 37 C.F.R. § 42.8(a)(2), Patent Owner, Vervain, LLC, hereby files
`
`
`
`its Mandatory Notices as follows:
`
`I.
`
`
`
`Real Party of Interest (37 C.F.R. § 42.8(b)(1))
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), Patent Owner identifies Vervain, LLC as
`
`the real party in interest.
`
`II. Related Matters (37 C.F.R. § 42.8(b)(2))
`
`
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), Patent Owner identifies the following
`
`proceedings that may affect, or be affected by, this proceeding:
`
` Patent Owner has asserted U.S. Patent Nos. 8,891,298; 9,196,385;
`
`9,997,240; and 10,950,300 against Petitioner in Vervain, LLC v. Micron
`
`Technology, Inc. et al., Civil Action No. 6:21-cv-00487, filed in the
`
`U.S. District Court for the Western District of Texas on May 10, 2021.
`
` Patent Owner has asserted U.S. Patent Nos. 8,891,298; 9,196,385;
`
`9,997,240; and 10,950,300 against Western Digital in Vervain, LLC v.
`
`Western Digital Corp. et al., Civil Action No. 6:21-cv-00488, filed in
`
`the U.S. District Court for the Western District of Texas on May 10,
`
`2021.
`
` A Request for Inter Partes Review of U.S Patent 8,891,298, Micron
`
`Technology Inc. v. Vervain, LLC, IPR2021-01547, filed on September
`
`21, 2021, is currently pending before the Board.
`
`2
`
`

`

`IPR2021-01549
`U.S. Patent No. 9,997,240
` A Request for Inter Partes Review of U.S Patent 9,196,385, Micron
`
`Technology Inc. v. Vervain, LLC, IPR2021-01548, filed on September
`
`21, 2021, is currently pending before the Board.
`
` A Request for Inter Partes Review of U.S Patent 10,950,300, Micron
`
`Technology Inc. v. Vervain, LLC, IPR2021-01550, filed on September
`
`21, 2021, is currently pending before the Board.
`
`III. Lead and Back-up Counsel (37 C.F.R. § 42.8(b)(3))
`
`
`
`Pursuant to 37 C.F.R. § 42.8(b)(3), Patent Owner identifies lead and back-up
`
`counsel as follows:
`
`Lead Counsel
`Alan Whitehurst
`Reg. No. 43,263
`awhitehurst@mckoolsmith.com
`MCKOOL SMITH, P.C.
`1999 K St. NW
`Suite 600
`Washington, DC 20006
`Telephone: (202) 370-8300
`Facsimile: (202) 370-8344
`
`
`
`Back-up Counsel
`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
`
`Christopher P. McNett
`Reg. No. 64,489
`cmcnett@mckoolsmith.com
`MCKOOL SMITH, P.C.
`1999 K St. NW
`Suite 600
`Washington, DC 20006
`Telephone: (202) 370-8300
`Facsimile: (202) 370-8344
`
`3
`
`

`

`IPR2021-01549
`U.S. Patent No. 9,997,240
`
`IV. Service Information (37 C.F.R. § 42.8(b)(4))
`
`
`
`Pursuant to 37 C.F.R. § 42.8(b)(4), Patent Owner requests that all non-
`
`electronic correspondence be directed to lead counsel and back-up counsel as shown
`
`above. Patent Owner consents to electronic service by email at Vervain-Mic-
`
`MS@McKoolSmith.com.
`
`Dated: December 2, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
` /s/ Alan Whitehurst
`
`
`
`Alan Whitehurst
`Reg. No. 43,263
`awhitehurst@mckoolsmith.com
`Christopher P. McNett
`Reg. No. 64,489
`cmcnett@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. 78596
`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, LLC
`
`4
`
`
`
`
`

`

`
`
`CERTIFICATION OF SERVICE
`
`
`
`The undersigned hereby certifies that the foregoing PATENT OWNER’S
`
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(2) has been served on
`
`Petitioner via email on the following counsel of record for Petitioner:
`
`Jeremy Jason Lang (Lead Counsel)
`PTABDocketJJL2@orrick.com
`Christopher Childers (Back-up Counsel)
`PTABDocketC4C8@orrick.com
`Parth Sagdeo (Back-up Counsel)
`PTABDocketP2S7@orrick.com
`Jared Bobrow (Back-up Counsel)
`PTABDocketJ3B3@orrick.com
`Orrick
`1000 Marsh Road
`Menlo Park, CA 94025-1015
`Telephone: (650) 614-7400
`Facsimile: (650) 614-7401
`
`
`
`
`Dated: December 2, 2021
`
`By: /s/ Alan Whitehurst
`Alan Whitehurst
`Reg. No. 43,263
`
`
`
`
`
`
`
`
`
`
`
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

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.

throbber

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.

Become a Member

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

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket