UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF CALIFORNIA

e.Digital Corporation,

Plaintiff,

v.

Microsemi Corporation; and, Microsemi

Corp. – Memory And Storage Solutions,

Defendants.

CASE NO.: 3:15-cv-00319-H-BGS

PLAINTIFF E.DIGITAL

CORPORATION’S

OPPOSITION TO

DEFENDANTS’ MOTION TO

STAY PENDING INTER

PARTES REVIEW OF THE

PATENT-IN-SUIT

DEMAND FOR JURY TRIAL

Date: August 3, 2015

Time: 10:30 am

Courtroom: 15A

Judge: Hon. Marilyn L. Huff

Courtroom 15A (15th Floor -

Annex)

Plaintiff e.Digital Corporation (“e.Digital” or “Plaintiff”) hereby submits

this opposition to the Motion to Stay Pending Inter Partes Review of the Patent-In-Suit (Dkt. No. 22) filed by Defendants Microsemi Corporation and MicrosemiCorp.–Memory and Storage Solutions (collectively, “Microsemi” or “Defendant”).Microsemi’s motion to stay is an improper attempt to delay e.Digital’s infringement claims arising out of U.S. Patent No. 5,839,108 (“the ’108 patent”

“patent-in-suit”). More importantly, Microsemi has failed to meet its burden ofestablishing that the balance of competing interests weighs in its favor. Among other things, the subject petition has not yet been granted and, as such, Microsemi’s stay arguments are clearly premature to say the least.

I. INTRODUCTION

e.Digital Corporation (“Plaintiff” or “e.Digital”) filed a complaint against

Microsemi on February 13, 2015 (Dkt. No. 1) alleging direct infringement,

inducement of infringement, and contributory infringement of Claim 1 of

e.Digital’s U.S. Patent No. 5,839,108 (“the ’108 patent” or “the patent-in-suit”).(Dkt# 1). Claim 1 of the ’108 patent, issued November 17, 1998, teaches a method of memory management for a non-volatile memory storage medium, such as flash memory.

On April 28, 2015, Microsemi filed an inter partes review petition (“IPR

petition”) of the patent-in-suit. According to 37 C.F.R. 42.107(b), the due date for any preliminary response is three months from “the date of a notice indicating that the request to institute and [IPR] has been granted a filing date.” In Microsemi’s IPR case, the PTAB issued such a notice on May 6, 2015. e.Digital’s response to the IPR is, thereby, due on August 6, 2015. A decision as to whether to grant the

IPR petition will most likely be made on or after November 6, 2015. (See 37

C.F.R. 42.107; 37 C.F.R. 42.108; and 35 U.S.C. § 314.) A scheduling order has not been issued in this case yet and the parties have not yet exchanged any discovery or claim construction materials.

However, it is also important to note that the Honorable Judge Marilyn Huff (“Judge Huff”), the judge assigned to this matter, is already well-familiar with the’108 patent, having presided over 30 or more cases during the past year-and-a-half which involve Claim 1 of the ’108 patent. Judge Huff has already issued two claim construction orders with respect to Claim 1 of the ‘108 patent, the only claim at issue in this matter

(See, Exhibits A-B filed herewith). Accordingly, much ground has, in a sense, already been covered with respect to claim construction in this matter given that, among other things, the Court will undoubtedly take judicial notice and/or rely upon her previous claim construction orders when making claim construction orders in this case.