IPR:

JOINT MOTION TO TERMINATE THE PROCEEDING PURSUANT TO 35 U.S.C. § 317

Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.72, Patent Owner e.Digital Corporation (“Patent Owner” or “e.Digital”) and Petitioners Micron Technology, Inc. and Micron Consumer Products Group, Inc. (“Petitioners” or “Micron”) (collectively, “the Parties”) jointly request termination of Inter Partes Review No IPR2015-00519, involving claim 1 of U.S. Patent No. 5,839,108 (the “’108 patent”). The Parties have settled all of their disputes involving the ’108 patent. More specifically, the Parties have agreed to settle and dismiss their related district court litigation (e.Digital Corporation v. Micron Consumer Products Group, Inc., S.D. Cal. Case No. 3:13-cv-02907-H-BGS, and e.Digital Corporation v. Micron Technology, Inc., S.D. Cal. Case No. 3:13-cv-2944-H-BGS). The Parties have also agreed to jointly request termination of this proceeding. Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), the Parties’ settlement agreement made in contemplation of termination of the proceeding is in writing and a true and correct copy of this document is being filed as Exhibit 1021. The Parties hereby jointly request that the settlement agreement be treated as business confidential information and be kept separate from the files of the abovecaptioned IPR pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).

I. Background Petitioners filed a Request for Inter Partes review of the ’108 patent in this matter on December 31, 2014. Patent Owner only recently filed its preliminary response on April 29, 2015. The Board has not yet issued a decision on institution for this IPR and none is due until July 29, 2015. On May 29, 2015, the Parties agreed to settle all of their disputes involving the ’108 patent, including all litigation and Patent Office proceedings related thereto. On June 1, 2015, the District Court dismissed the litigation between the Parties with prejudice. On June 1, 2015, the Parties informed the Board of the settlement and requested a phone conference with the Board requesting authorization to file a joint motion to terminate the proceeding with respect to both Patent Owner and Petitioners In an email dated June 2, 2015, the Board authorized the filing of the requested joint motion to terminate this proceeding as to both parties. II. Termination as to Patent Owner and Petitioners is Appropriate A. The following is a brief explanation as to why termination as to the Parties is appropriate, which is presented by both parties. Termination of this IPR is appropriate as the Board has not yet “decided the merits of this proceeding.” See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). As noted above, this case is in the preliminary proceeding stage and no institution of a trial has been made.

Moreover, no dispute remains between Patent Owner and Petitioners involving the ’108 patent: 1. the Parties have agreed to jointly request termination of all of this IPR; and, 2. the litigation between the Parties involving the ’108 patent is being dismissed as part of the settlement. B. Patent Owner, for itself only, offers additional reasons as to why the IPR proceedings should be terminated.1 Because the merits of the IPR have not been determined and the IPR is therefore at a very early stage, concluding this IPR proceeding promotes the Congressional goal to establish a more efficient and streamlined patent system that, inter alia, limits unnecessary and counterproductive litigation costs. See “Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional Program for Covered Business Method Patents,” Final Rule, 77 Fed. Reg., no. 157, p. 48680 (Tuesday, August 14, 2012). By permitting termination of this IPR proceeding as to all parties upon settlement, the PTAB will provide certainty as to the outcome of these proceedings. Terminating this IPR as 1 Petitioners take no position on these additional reasons.

a result of the parties’ settlement will foster an environment that promotes future settlements, thereby creating a timely, cost-effective alternative to litigation. In contrast, maintaining these proceedings in the absence of Petitioner would effectively pit the Patent Owner against the Board, a scenario never intended by the legislators who enacted the American Invents Act (AIA). In enacting the AIA, Congress did not intend that the PTAB would step into the shoes of the Petitioner or assume an ex-parte examination role. Instead, The Leahy-Smith America Invents Act replaced inter partes reexamination with review proceedings and entrusted such matters to the Board rather than the examining corps. Commenting on this significant change to USPTO practice, Senator Kyl noted that the new procedures were intended to be strictly adjudicative in nature, where “the petitioner, rather than the Office, bears the burden of showing unpatentability.” 157 Congressional Record S1375, daily ed. March 8, 2011. As these changes were taken from the Senator’s prior bill from the 110th Congress, S. 3600, he cited with approval his comments in support of that prior legislation: The bill uses an oppositional model, which is favored by PTO as allowing speedier adjudication of claims. Under a reexam system, the burden is always on PTO to show that a claim is not patentable. Every time that new information is presented, PTO must reassess whether its burden has been met. This model has proven unworkable in inter partes reexam, in which multiple parties can present information to PTO at various stages of the proceeding, and which system has experienced interminable delays. Under an oppositional system, by contrast, the burden is always on the petitioner to show that a claim is not patentable. Both parties present their evidence to the PTO, which then simply decides whether the petitioner has met his burden.

154 Congressional Record S9987, daily ed. Sept. 27, 2008. Senator Kyl’s comments make clear that the new review proceedings were not intended to devolve into the prior “unworkable” system of reexamination in the event no petitioner was left. The Board’s role was intended to be that of an adjudicator resolving a dispute between litigants, not an examiner. See, e.g., Statement of Sen. Kyl, 157 Congressional Record S1376, daily ed. March 8, 2011 (“Currently, inter partes reexaminations usually last for 3 to 5 years. Because of procedural reforms made by the present bill to inter partes proceedings, the Patent Office is confident that it will be able to complete these proceedings within one year. Among the reforms that are expected to expedite these proceedings are the shift from an examinational to an adjudicative model, and the elevated threshold for instituting proceedings.”). In the face of a negotiated settlement between the parties and the absence of any petitioner in the proceedings, the Board’s role has been fully discharged and termination of the proceedings is justified.

Should the Board decide to continue the present proceedings, the Congressional goal of speedy dispute resolutions will be chilled. Faced with the prospect of having to continue to defend a patent, not against a third party petitioner but against the PTAB, patent owners would have little, if any, reason to enter into compromises of the kind reached between the present parties. In such circumstances, patent owners would still face the jeopardies and costs associated with review proceedings but would be effectively prohibited from availing themselves of the benefits (for example the cross-examination of witnesses upon notice) of same.

III. Status of Related Litigation As noted above, the related district court actions between Patent Owner and Petitioners have been settled and have been dismissed with prejudice. The following additional proceedings related to the ’108 patent are currently pending:

 e.Digital v. Microsemi Corporation, Case No. 15-cv-319-HBGS (S.D.Cal.)

 Microsemi Corporation v. e.Digital, IPR Case No. IPR2015- 01120 (PTAB)

 e.Digital v. Acer America Corporation, Case No. 15-cv-144-HBGS (S.D.Cal.)

 e.Digital v. FMJ Storage Inc., et al., Case No. 15-cv-323-HBGS (S.D.Cal.)

 e.Digital v. Foremay Inc., Case No. 15-cv-322-H-BGS (S.D.Cal.)

 e.Digital v. Greenliant Systems, Inc., et al., Case No. 15-cv- 137-JLS-BGS (S.D.Cal.)

 e.Digital v. Hagiwara Sys-Com US Co., Ltd., Case No. 15-cv- 331-H-BGS (S.D.Cal.)

 e.Digital v. Hewlett-Packard Company, Case No. 15-cv-333- BEN-BGS (S.D.Cal.)

 e.Digital v. Kingfast SSD, et al., Case No. 15-cv-329-H-BGS (S.D.Cal.)

 e.Digital v. Lenovo (United States), Inc., Case No. 15-cv-135- H-BGS (S.D.Cal.)

 e.Digital v. MemoRight Corporation, et al., Case No. 15-cv- 315-H-BGS (S.D.Cal.)

 e.Digital v. RunCore Innovation Technology Co., Ltd., et al., Case No. 15-cv-320-H-BGS (S.D.Cal.)

e.Digital v. SMART Modular Technologies, Inc., Case No. 15-cv-314- H-BGS (S.D.Cal.)

 e.Digital v. Spansion, Inc., et al., Case No. 15-cv-141-H-BGS

Patent Owner, e.Digital, asserts that it does not contemplate any further litigation or proceedings related to the ’108 patent at this time.

IV. Treat Settlement Agreements as Business Confidential Information Patent Owner and Petitioners hereby request that the settlement agreement (Exhibit 1021) be treated as business confidential information, be kept separate from the file of this IPR, and be made available only to Federal Government agencies on written request, or to any person on a showing of good cause pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).

V. Conclusion For the foregoing reasons, Patent Owner and Petitioners jointly request that the Board terminate this Inter Partes Review proceeding as to both Parties, and treat the settlement agreement filed as Exhibit 1021 as business confidential information and keep this agreement separate from the file of the above captioned IPR.

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