`Patent RE45,542
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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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`KINGSTON TECHNOLOGY COMPANY, INC.,
`Petitioner
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`v.
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`MEMORY TECHNOLOGIES, LLC,
`Patent Owner
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`
`
`Case IPR2019-00644
`Reissued Patent RE45,542
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`
`
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`PETITIONER’S RESPONSE TO ORDER ON THE CONDUCT OF
`PROCEEDINGS UNDER 37 C.F.R. § 42.5 (PAPER 7)
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`4819-1515-3821
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`IPR2019-00644
`Patent RE45,542
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`
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`Kingston Technology Company, Inc. (“Petitioner” or “Kingston”) hereby
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`respectfully responds to the Board’s Order on the Conduct of Proceedings, entered
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`on July 25, 2019 (Paper 7). Per that Order and 37 C.F.R. § 42.104(a), Petitioner
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`Kingston certifies that Reissued U.S. Patent No. RE45,542 (the “RE542 Patent”)
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`for which review is sought is available for inter partes review and that Petitioner is
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`not barred or estopped from requesting an inter partes review challenging the
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`patent claims on the grounds identified in the Petition (Paper 1).
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`This express certification was inadvertently omitted from the Petition. The
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`Petition represents that:
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`Patent Owner Memory Technologies, LLC (“MTL”) has
`asserted the Challenged Claims of the RE542 Patent, as
`well as claims from seven other patents, against Kingston
`in a co-pending litigation, Memory Technologies, LLC v.
`Kingston Technology Co., Inc., 8:18-cv-00171 (C.D.
`Cal.). MTL’s original Complaint was filed on January 31,
`2018, and served, at the earliest, on February 1, 2018.
`In addition to this Petition, Kingston has or will be filing
`petitions for inter partes review of the other seven patents
`that MTL has asserted against it.
`(Paper 1 at 2.) Petitioner included the statement quoted above in the Petition
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`regarding when Petitioner was served with Patent Owner’s Complaint asserting the
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`RE542 Patent and seven other patents to show that Petitioner had filed the instant
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`Petition—filed on January 30, 2019—within the statutory time period and,
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`1
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`4819-1515-3821
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`
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`IPR2019-00644
`Patent RE45,542
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`therefore, that Petitioner was not barred or estopped from requesting inter partes
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`review of the RE542 Patent (or of any of the other seven patents that Patent Owner
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`has asserted against Petitioner in the related litigation) on the grounds identified in
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`the Petition. Petitioner included a certification in the first Petition it filed on the
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`eight patents that Patent Owner has asserted in the related litigation—on U.S.
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`Patent No. 7,827,370—that Petitioner is in compliance with 37 C.F.R. § 42.104.
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`(Case IPR2019-00638, Paper 1 at 4.) This certification applies to all eight patents
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`that Patent Owner has asserted against Petitioner in the related litigation and that
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`Kingston has challenged with Petitions for inter partes review. (See IPR2019-
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`00638, IPR2019-000642, IPR2019-00643, IPR2019-00644, IPR2019-00645,
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`IPR2019-00648, IPR2019-00651, IPR2019-00654.) However, the express
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`certification was inadvertently omitted from the Petition in this case, for which
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`Petitioner respectfully seeks leave from the Board to include in the file by way of
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`this Paper.
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`Petitioner respectfully requests that the Board accept Petitioner’s
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`certification under 37 C.F.R. § 42.104(a) contained herein and its apologies for the
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`inadvertent omission of the same in the Petition.
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`2
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`4819-1515-3821
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`IPR2019-00644
`Patent RE45,542
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`Dated: July 26, 2019
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`PILLSBURY WINTHROP SHAW
`PITTMAN LLP
`1650 Tysons Boulevard, 14th Floor
`McLean, VA 22102
`Telephone: 703.770.7900
`Facsimile: 703.770.7901
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`
`Respectfully submitted,
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`/Robert C.F. Pérez/
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`Robert C.F. Pérez (Reg. No. 39,328)
`Christopher Kao (Back-up Counsel)
`Brock S. Weber (Back-up Counsel)
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`
`Attorneys for Petitioner
`Kingston Technology Company, Inc.
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true copy of the foregoing
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`PETITIONER’S RESPONSE TO ORDER ON THE CONDUCT OF
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`PROCEEDINGS UNDER 37 C.F.R. § 42.5 (PAPER 7) has been served in its
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`entirety this 26th of July 2019, by e-mail on counsel for Patent Owner:
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`James D. Stein
` James.Stein@leehayes.com
`Andrew G. Strickland
` Andrew.Strickland@leehayes.com
`William B. Dyer III
` Bill.Dyer@leehayes.com
`LEE & HAYES, P.C.
`1175 Peachtree Street
`100 Colony Square, Suite 2000
`Atlanta, GA 30361
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`
`
`
`
`
`
`/Robert C.F. Pérez/
`Robert C.F. Pérez (Reg. No. 39,328)
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`3
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`4819-1515-3821
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`
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