UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF CALIFORNIA
E.DIGITAL CORPORATION,
Plaintiff,
vs.
MICRON CONSUMER PRODUCTS
GROUP, INC., d/b/a LEXAR,
Defendant.
Case Nos.
13-cv-2907-H-BGS (lead case)
13-cv-2944-H-BGS
JOINT MOTION TO STAY
PENDING INTER PARTES
REVIEW OF THE PATENT-INSUIT
Before the Honorable Marilyn L. Huff

SDI-600236901v1 1 13-cv-2907-H-BGS
JOINT MOTION
E.DIGITAL CORPORATION,
Plaintiff,
vs.
MICRON TECHNOLOGY, INC.,
Defendant.
AND RELATED COUNTERCLAIMS
Plaintiff/counterdefendant e.Digital Corporation (“e.Digital” or “Plaintiff”)
and defendants/counterclaimants Micron Consumer Products Group, Inc.
(“MCPG”) and Micron Technology, Inc. (“MTI”) (collectively “Micron” or
“Defendants”) stipulate and request that the Court stay these consolidated cases
(13cv2907 and 13cv2944) to allow the United States Patent & Trademark Office to
rule on Micron’s petition for inter partes review filed on December 31, 2014
(No. IPR2015-00519). Micron’s IPR seeks review of the validity of the asserted
claim 1 of US. Patent No. 5,839,108 (the “’108 patent”).
I. RELEVANT BACKGROUND
A. Relevant Procedural History In the District Court Case
e.Digital filed a complaint against MCPG on December 5, 2013, 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 patentin-
suit”). (Dkt.1 in MCPG Case). On December 6, 2013 e.Digital Corporation
(“Plaintiff” or “e.Digital”) filed a similar complaint against MTI (Dkt. 1 in Micron
Case).
On August 29, 2014, the Court issued its “Order: Setting Trial Date, And
Scheduling Order” and set trial in this matter for October 27, 2015 or over six
months from now. (See, Dkt. 32 in the previously-designated lead Case No. 3:13-
cv-02889-H-BGS, e.Digital Corporation v. Accelerated Memory Production, Inc.).
The same order also set the pre-trial status conference for September 15, 2015 or over five months from now.
Micron filed a Petition for Inter Partes Review Under 35 U.S.C. § 311 and
37 C.F.R. § 42.100 on December 31, 2014 (attached to Dkt. 38-2 at Ex. 6).
Micron’s IPR challenges validity of the asserted claim 1 of the ’108 patent.
The week after filing its IPR, on January 7, 2015, Micron promptly filed a
motion to stay these district court proceedings. (Dkt. 38). On January 26, 2015,
e.Digital filed an opposition to the motion to stay (Dkt. 44). On February 2, 2015,
Micron filed its reply. (Dkt. 47).
On February 5, 2015, the Court, in its discretion, denied Micron’s motion to
stay. (Dkt. 51). The order denying a stay recited three factors for consideration:
(1) whether discovery is complete and whether a trial date has been set; (2) whether
a stay will simplify the issues in question and trial of the case; and (3) whether a
stay would prejudice the non-moving party or present a clear tactical advantage for
the moving party. Applying these factors to this case, given the current state of the
pleadings and discovery, e.Digital and Micron now jointly request that the Court
stay these consolidated cases pending final determination of Micron’s IPR.
Expert reports are due May 4, 2015 and June 1, 2015. Expert depositions
would take place in June 2015. The Dispositive Motion Deadline and/or date by
which summary judgment motions must be heard is July 20, 2015.
Micron has also recently filed a motion to modify the Scheduling Order and
for leave to amend its answer/counterclaim to assert inequitable conduct. (Dkt. 64).
e.Digital intends to oppose Micron’s motion to amend.
If the motion to amend is granted, the Court would have to modify the
Scheduling Order in order to allow Micron to file an amended answer/counterclaim
and, in e.Digital’s view, to allow the parties time to conduct discovery with respect
to the newly asserted inequitable conduct defense. e.Digital would, in its
opposition, specifically request that the Court modify its Scheduling Order and continue all future, upcoming dates to include the discovery deadline, expert report deadlines, summary judgment motion deadline, if leave to amend is granted to
Micron since e.Digital should be provided its right to conduct discovery as to Micron’s newly asserted defense should leave to amend be granted. Micron believes that the amendment can be allowed with limited impact on current deadlines and without impact on the trial date.
In other words, most likely the Scheduling Order will be impacted one way or the other should leave to amend be granted as both Micron and e.Digital, will be seeking a modification thereof.
Given the above, the parties agree that the Court should grant this joint request to stay so as to allow Micron’s IPR to proceed to conclusion prior to the adjudication of the inequitable conduct defense and other issues in these cases. The parties believe this is an efficient approach.
B. Relevant IPR Related History
Since the prior motion to stay was filed, the IPR has proceeded. On
February 13, 2015, e.Digital filed a motion to deny the petition a filing date. On
March 24, 2015, the Patent Trial and Appeal Board issued an order denying
e.Digital’s motion. e.Digital has filed a Motion for Rehearing on the issues, which
is still pending. At this time, however, e.Digital’s deadline for its preliminary
response to Micron’s IPR is April 29, 2015 (37 C.F.R. § 42.107(a)-(b)), and the
PTAB’s decision on institution is expected no later than July 29, 2015. 35 U.S.C.
§ 316(a)(11). The PTO is required to issue a final determination within one year of
instituting review, absent good cause for further time. 35 U.S.C. § 316(a)(11).
C. Relevant Discovery History
To date, e.Digital and Micron have conducted written discovery and initial
depositions. The parties began exchanging written discovery in September 2014,
Plaintiff began serving a number of subpoenas in February 2015 and Defendants
have taken depositions of one of the inventors and some of e.Digital’s Rule
30(b)(6) witnesses. e.Digital has produced over 30,000 pages of documents to Defendants. Defendants have collectively produced over 12,000 pages of documents. The parties have also begun deposition discovery in the district court
litigation, but more than ten depositions remain to be taken in Boise, Idaho, Milpitas, California, Salt Lake City, Utah, and San Diego, California. Each side has scheduled source code reviews to be performed by consulting experts in Boise,
Idaho and San Diego, California, but those sourcecodereviews have not yet taken
place.
II. GROUNDS FOR RELIEF
In light of the current status of the district court case as noted above and therapidly-approaching date for the PTAB to determine whether to grant Micron’s IPR petition, e.Digital and Micron now recognize that it is more efficient for the district court to stay its proceedings pending a determination of Micron’s IPR.
The Micron IPR may potentially be case dispositive, thus obviating the need for the court to rule on Micron’s motion for leave to amend, to resolve still-pending discovery disputes, or conduct a trial. Alternatively, if the asserted claim survives inter partes review, the case would be simplified because Defendants would be bound by the estoppel provisions for inter partes review and could not raise arguments of validity they raised or reasonably could have raised at the PTO. See,
Evolutionary Intelligence, LLC, 2014 U.S. Dist. LEXIS 9149, 2014 WL 261837, at
*2 (citing 35 U.S.C. § 315(e)(2)).
Accordingly a stay to allow the IPR to be concluded will conserve judicial
resources and reduce the cost and expense of litigation to the parties, especially
since any trial result in e.Digital’s favor could be rendered moot should the PTO
invalidate e.Digital’s patent as a result of Micron’s IPR.
A stay of the case will defer the great expense of consulting and testifying
experts for both e.Digital and Micron having to review millions of lines of
computer code. The recent motion for leave to amend Micron’s answer, the current
state of written discovery and deposition discovery, and the impending PTAB decision on Micron’s IPR petition has therefore led both sides to the determination
that a stay of the district court litigation pending Micron’s IPR would be beneficial to the overall efficient administration of the dispute.
In summary, e.Digital and Micron jointly submit that the current state of discovery, the likelihood that a stay will simplify the issues in question for trial, and the absence of prejudice to any party all support the imposition of a stay of the district court proceedings. The parties agree that neither side will have a clear
tactical advantage from a stay; both e.Digital and Micron will benefit from a stay.
This Court has inherent power to manage its dockets and stay proceedings,
including the authority to order a stay pending conclusion of a PTO reexamination.
See, Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426-27 (Fed. Cir. 1988). There is a
“liberal policy in favor of granting motions to stay proceedings pending the
outcome of USPTO reexamination or reissuance proceedings.” ASCII Corp. v. STD
Entnmen't USA, Inc., 844 F. Supp. 1378, 1381 (N.D. Cal. 1994).
While these matters are not in their early stages, a significant amount of work still remains, such as an expensive source code review, potential motions to compel, expert discovery, a motion for leave to amend, summary judgment motions,
Daubert motions, and trial. The trial date of October 27, 2015is also more than 6 months away and the pre-trial conference of September 15, 2015 is more than five
months away. Therefore, a stay at this time of these matters would not be improper.
See, e.g., PersonalWeb Techs, LLC, 2014 U.S. Dist. LEXIS 4095, 2014 WL at
116340, at *4 (stating that case was not so far advanced that a stay would be
improper where parties have not yet engaged in significant and costly work of
expert discovery, summary judgment motions and pretrial conference was still six
months away); Tierravision, Inc. v. Google, Inc. No. 11cv2170 DMS (BGS), 2012
U.S. Dist. LEXIS 21463, 2012 WL 559993, at *2 (S.D. Cal. Feb. 21, 2012) (in
favor of stay where although case was not in its infancy, there was still much more
work in the case such as summary judgment motions); Tas Energy, Inc. v. San

SDI-600236901v1 6 13-cv-2907-H-BGS
JOINT MOTION
Diego Gas & Elec. Co., 2014 U.S. Dist. LEXIS 26107 at *8-9 (S.D. Cal. Feb. 26,
2014).
III. REQUESTED RELIEF
e.Digital and Micron jointly request that the Court stay this action pending
the final determination of Micron’s IPR Petition including all appeals.
DATED: April 15, 2015 HANDAL & ASSOCIATES
By: s/ Anton Handal
Anton Handal
Attorneys for Plaintiff and Counter-
Defendant e.Digital Corporation
DATED: April 15, 2015 JONES DAY
By: s/ Randall E. Kay
Randall E. Kay
Attorneys for Defendants Micron
Consumer Products Group, Inc. and
Micron Technology, Inc.
Signature Certification
Pursuant to Section 2(f)(4) of the Electronic Case Filing Administrative
Policies and Procedures Manual, I hereby certify that the content of this document
is acceptable to Anton Handal, counsel for Plaintiff and Counter-Defendant
e.Digital Corporation, and that I have obtained Mr. Handal’s authorization to affix his electronic signature to this document.
DATED: April 15, 2015 By:
s/ Randall E. Kay
Randall E. Kay
rekay@jonesday.com