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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`MICRON TECHNOLOGY, INC.,
`Petitioner
`
`v.
`
`VERVAIN, LLC,
`Patent Owner
`_____________
`
`Case: IPR2021-01550
`U.S. Patent No. 10,950,300
`_____________
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`
`
`JOINT MOTION TO TERMINATE PROCEEDING
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`LISTING OF EXHIBITS
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`Exhibit
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`Description
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`1001-1006
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`Intentionally omitted
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`1015
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`1016
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`1017
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`1018
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`1019
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`1020
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`U.S. Patent No. 10,950,300 (“300 patent”)
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`File History of U.S. Patent No. 10,950,300
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`Declaration of Dr. David Liu (“Liu Decl.”) – IPR2021-01550
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`U.S. Patent Application Publication No. 2011/0099460 (“Dusija”)
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`U.S. Patent Application Publication No. 2008/0140918
`(“Sutardja”)
`
`U.S. Patent Application Publication No. 2009/0327591
`(“Moshayedi”)
`
`Intentionally omitted
`
`Betty Prince, Semiconductor Memories – A Handbook of Design,
`Manufacture, and Application (2d ed. 1991) (“Prince”)
`
`U.S. Patent No. 8,120,960 (“Varkony”)
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`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
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`
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`
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`Exhibit
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`Description
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`1021
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`1022
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`1023
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`1024
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`1025
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`1026
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`1027
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`1028
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`1029
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`1030
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`1031
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`1032
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`1033
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`1034
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`1035
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`U.S. Patent No. 7,453,712 (“Kim”)
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`U.S. Patent Application Publication No. 2011/0096601
`(“Gavens”)
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`U.S. Patent No. 8,078,794 (“C. Lee”)
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`U.S. Patent No. 7,733,729 (“Boeve”)
`
`Microsoft Computer Dictionary, Fifth Edition, 2002, definition of
`read-after-write
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`Merriam-Webster’s Collegiate Dictionary, Eleventh Edition,
`2006, definition of periodic
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`Intentionally omitted
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`U.S. Patent Application Publication No. 2010/0172180 (“Paley”)
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`U.S. Patent No. 7,853,749 (“Kolokowsky”)
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`U.S. Patent Application Publication No. 2010/0017650 (“Chin”)
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`European Patent Specification No. EP 2.291.746 B1 (“Radke”)
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`Intentionally omitted
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`U.S. Patent Application Publication No. 2006/0053246 (“S. Lee”)
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`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.)
`
`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
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`1036
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`Vervain’s Preliminary Infringement Contentions, dated August 6,
`2021, in Vervain, LLC v. Micron Technology, Inc., Micron
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`ii
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`
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`Exhibit
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`Description
`Semiconductor Products, Inc., and Micron Technology Texas,
`LLC, Case No. 6:21-cv-00487-ADA
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`1037
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`1038
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`1039
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`1040
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`1041
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`1042
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`1043
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`Judge Albright, Order Governing Proceedings - Patent Cases
`(OGP 3.4), dated June 24, 2021
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`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
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`Dani Kass, Judge Albright Now Oversees 20% of New U.S.
`Patent Cases, Law360, March 10, 2021
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`Brian Dipert and Markus Levy, Designing with Flash Memory
`(1994) (“Dipert & Levy”)
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`U.S. Patent No. 7,366,826 (“Gorobets”)
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`U.S. Patent No. 6,901,498 (“Conley”)
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`U.S. Patent No. 8,356,152 (“You”)
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`1044-1046
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`Intentionally omitted
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`1047
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`1048
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`1049
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`1050
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`1051
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`1052
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`Ashok Sharma, Advanced Semiconductor Memories,
`Architectures, Designs, and Applications (2003) (“Sharma”)
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`Microsoft Computer Dictionary, Fifth Edition, 2002, definitions
`of static RAM and volatile memory
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`U.S. Patent No. 5,936,971 (“Harari”)
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`PCT Publication No. WO 03/027828 (“Gorobets WO”)
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`Microsoft Computer Dictionary, Fifth Edition, 2002, definition
`address space
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`U.S. Patent Application Publication No. 2009/0300269 (“Radke
`Appl.”)
`
`iii
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`Exhibit
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`Description
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`1053
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`1054
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`1055
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`1056
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`1057
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`1058
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`1059
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`1060
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`U.S. Patent No. 8,250,333 (“Gorobets II”)
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`Microsoft Computer Dictionary, Fifth Edition, 2002, definition of
`firmware
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`Intentionally omitted
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`Declaration of Jared Bobrow in Support of Petitioner’s Motion
`for Admission Pro Hac Vice - IPR2021-01550
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`Reply Declaration of Dr. David Liu (“Liu Reply”) – IPR2021-
`01550
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`Curriculum vitae of Dr. David Liu
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`Intentionally omitted
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`Deposition Transcript of Sunil Khatri (September 2, 2022) –
`IPR2021-01550
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`1061 – 1067
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`Intentionally omitted
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`1068
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`U.S. Patent No. 8,010,873 (“Kirschner”)
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`1069-1070
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`Intentionally omitted
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`1071
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`1072
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`Petitioner’s Hearing Demonstratives
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`Confidential Settlement Agreement
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`iv
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`Petitioner Micron Technology, Inc. (“Micron” or “Petitioner”) and Patent
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`Owner Vervain, LLC (“Vervain” or “Patent Owner”) have reached a settlement.
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, and pursuant to email
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`authorization from the Board on March 29, 2023, Micron and Vervain jointly
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`move to terminate the present inter partes review (IPR) proceeding.
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`I.
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`STATEMENT OF FACTS
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`Micron and Vervain (collectively, the “Settling Parties”) have reached an
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`agreement (the “Settlement Agreement”) to resolve their disputes, including their
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`disputes regarding the patent (U.S. Patent No. 10,950,300, “the challenged
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`patent”) that is challenged in this proceeding.1 The challenged patent is also at
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`issue in the following district court case: Vervain, LLC v. Micron Tech. Inc., No.
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`6:21-cv-487-ADA (W.D. Tex.) (“the District Court Litigation”). In the Settlement
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`Agreement, Vervain has agreed to file a motion to dismiss the District Court
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`Litigation. Apart from the present IPR proceeding and the District Court
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`Litigation, there are no other litigations or proceedings involving the challenged
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`patent between the parties, and no litigations or proceedings involving the
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`challenged patent between the parties are contemplated in the foreseeable future.
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`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.
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`1
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`Pursuant to 37 C.F.R. § 42.74(b), the Settlement Agreement is in writing,
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`and a true and correct copy is being filed as Exhibit 1072. Apart from the
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`Settlement Agreement, there are no collateral agreements or understandings made
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`in connection with, or in contemplation of, the termination of this IPR proceeding.
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`The Settlement Agreement is being filed electronically with access to “Board and
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`Parties Only.” A “Joint Request to Treat Settlement Agreement as Business
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`Confidential Information Pursuant to 35 U.S.C. § 317(b)” is being filed
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`concurrently with this Joint Motion to Terminate Proceeding, to treat the
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`Settlement Agreement as business confidential information and to keep it separate
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`from the files of the involved patent pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
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`§ 42.74(c).
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`II. RELIEF REQUESTED
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`Termination of this inter partes review is requested, and the Settling Parties
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`respectfully submit that such termination is justified. “There are strong public
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`policy reasons to favor settlement between the parties to a proceeding.”
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`Consolidated Trial Practice Guide 86 (Nov. 2019). “The Board expects that a
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`proceeding will terminate after the filing of a settlement agreement, unless the
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`Board has already decided the merits of the proceeding.” Id. (citing 35 U.S.C. §§
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`317(a)).
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`2
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`The Board should terminate this proceeding, as the Settling Parties jointly
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`request, for the following reasons.
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`First, Micron and Vervain have met the statutory requirement that they file
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`a “joint request” to terminate before the Office “has decided the merits of the
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`proceeding.” 35 U.S.C. § 317(a). Under section 317(a), an inter partes review shall
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`be terminated upon such joint request “unless the Office has decided the merits of
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`the proceeding before the request for termination is filed.” There are no other
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`preconditions recited in 35 U.S.C. § 317(a).
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`Second, Micron and Vervain have reached a settlement as to all the disputes
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`in this proceeding and as to the ’300 patent between the parties. A true copy of the
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`settlement agreement is being filed concurrently herewith. See Confidential
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`Exhibit 1072. Micron and Vervain request that the settlement agreement be treated
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`as business confidential information and be kept separate from the files of this
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`proceeding in accordance with 37 C.F.R. § 42.74(c). No other such agreements,
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`written or oral, exist between or among the Settling Parties.
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`Third, termination upon settlement, as requested, would also further the
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`purpose of inter partes review proceedings, which seek to provide an efficient
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`and less costly alternative forum for patent disputes. Maintaining the proceeding
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`would discourage further settlements, as patent owners in similar situations would
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`3
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`have a strong disincentive to settle if they perceived that an inter partes review
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`would continue regardless of a settlement.
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`III. CONCLUSION
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`For the foregoing reasons, Micron and Vervain respectfully request
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`termination of this inter partes review.
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`4
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`Dated: April 3, 2023
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`Respectfully submitted,
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`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
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`5
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`CERTIFICATION OF SERVICE
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`
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`The undersigned hereby certifies that the foregoing JOINT MOTION TO
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`TERMINATE PROCEEDING has been served on Patent Owner via email on the
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`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
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`
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`Dated: April 3, 2023
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`By:
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`
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`Jeremy Jason Lang
`Reg. No. 43,263
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