Trials@uspto.gov
`571-272-7822
`
`
`
` Paper No. 52
`Entered: January 4, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS, LLC,
`Petitioner,
`
`v.
`
`MEMORYWEB, LLC,
`Patent Owner.
`____________
`
`IPR2021-01413
`Patent 10,621,228 B2
`____________
`
`CONFIDENTIAL
`Record of Oral Hearing
`Held: December 16, 2022
`
`BEFORE: LYNNE H. BROWNE, NORMAN H. BEAMER, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`UNIFIED PATENTS EXHIBIT 1042
`UNIFIED PATENTS, LLC v. MEMORYWEB, LLC
`IPR2021-01413
`Page 1 of 17
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`571-272-7822
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`
`
` Paper No. 52
`Entered: January 4, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS, LLC,
`Petitioner,
`
`v.
`
`MEMORYWEB, LLC,
`Patent Owner.
`____________
`
`IPR2021-01413
`Patent 10,621,228 B2
`____________
`
`CONFIDENTIAL
`Record of Oral Hearing
`Held: December 16, 2022
`
`BEFORE: LYNNE H. BROWNE, NORMAN H. BEAMER, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`UNIFIED PATENTS EXHIBIT 1042
`UNIFIED PATENTS, LLC v. MEMORYWEB, LLC
`IPR2021-01413
`Page 1 of 17
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`IPR2021-01413
`Patent 10,621,228 B2
`
`A P P E A R A N C E S
`
`ON BEHALF OF THE PETITIONER:
`
`ELLYAR Y. BARAZESH, ESQUIRE
`ROSHAN MANSINGHANI, ESQUIRE
`MICHELLE ASPEN, ESQUIRE
`UNIFIED PATENTS, LLC
`4445 Willard Avenue
`Suite 600
`Chevy Chase, Maryland 20815
`(202) 894-1874
`
`ON BEHALF OF THE PATENT OWNER:
`
`JENNIFER HAYES, ESQUIRE
`NIXON PEABODY LLP
`300 South Grand Avenue
`Suite 4100
`Los Angeles, California 90071
`(213) 629-6179
`
`ALSO PRESENT:
`Mr. Schwartz and Mr. Christopher
`Charles Slay, Host
`
`The above-entitled matter came on for hearing on, Friday,
`December 16, 2022, commencing at 2:29 p.m. EST, by video/by telephone.
`
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` P R O C E E D I N G S
` JUDGE TROCK: We are back in session on
`IPR2021-01413, concerning U.S. Patent Number 10,621,228,
`in the matter of Unified Patents v. MemoryWeb.
` This is a confidential hearing session. I have
`received confirmation that the public line has
`been disconnected.
` Petitioner, you have reserved ten minutes for
`this confidential section, and so has Patent Owner.
` So with that, Petitioner, if you would
`make appearances, you may proceed.
` MR. MANSINGHANI: Thank you, Your Honor. This
`is Roshan Mansinghani. I was introduced earlier by my
`co-counsel, Ellyar Barazesh. I will be presenting for
`Unified during this portion of the hearing.
` Would you like me to begin now?
` JUDGE TROCK: Would you like to reserve any of
`the ten minutes for rebuttal?
` MR. MANSINGHANI: Yes, five minutes for
`rebuttal.
` JUDGE TROCK: Okay. You may begin.
` MR. MANSINGHANI: Thank you.
` During this portion of the hearing, the issue
`
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`at hand is whether Unified is the sole real
`party-in-interest in this proceeding from on behalf of
`Petitioner.
` Turning to slide 55 of our presentation, we
`believe that we are the sole real party-in-interest, and
`have laid out the major reasons why this is the case.
`Especially when considering the -- the precedent that
`has been issued both from this Board as well the Federal
`Circuit.
` First, Unified solely directed control of and
`funded this IPR. Unified operates completely
`independently when filing it challenges, and it
`certainly did not act at the behest of anyone else. The
`evidence demonstrates that, and the evidence in this
`case is essentially one way. There was no pre-filing
`communications at all, no post-filing communications
`with any of the alleged real parties-in-interest other
`than routine public -- publicly facing emails that
`announced our actual filings.
` In terms of actually which patents to select,
`and which patents to challenge, Unified exercised its
`sole and absolute discretion. There has been no
`coordination with anyone outside of Unified, much less
`the alleged real parties-in-interest brought forth by
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`the Patent Owner.
` The members of Unified do not exercise any form
`of direction or control, and they can't control Unified
`funding since members fund Unified by paying Unified a
`one-time-a-year annual fee.
` Given all these facts, and none of these facts
`are actually in dispute, the Federal Circuit, in a case
`not involving Unified, has indicated that -- that to
`find another party as a real party-in-interest just
`legally and sufficient, and we have that case cited for
`you here on slide 55.
` Turning to slide 56, this case also has some
`interesting aspects that further confirm Unified is the
`sole real party-in-interest. First, there was no time
`bar when Unified filed its Petition with any other --
`with respect to any other party. And further, the
`allegedly unnamed real parties-in-interest that the
`Patent Owner contends should be named here themselves
`filed their own petitions.
` And we think that's significant for multiple
`reason. One, it demonstrates there was no coordination
`or -- or us filing on their behalf since they filed
`their own.
` Second, Patent Owner itself has indicated
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`there's conflicting positions between the Petitioners,
`and we don't actually think that bears on patentability,
`and as you heard in -- as you heard in the previous
`presentation. But it just goes to show that there can't
`be any coordination if we had conflicting positions.
` And the differences between the petitions
`further demonstrate the lack of coordination. So we
`challenge one set of claims, they challenge a completely
`different set. We also used completely different prior
`art.
` I shouldn't say completely different prior art,
`but we also used art that they did not use, Flora,
`Wagner, and Gilley, as our slide demonstrates here on
`slide 56.
` So with all that, Your Honors, we don't believe
`that the evidence in any way beyond just speculation by
`the Patent Owner shows that any of our members, much
`less the specific ones named by the Patent Owner, should
`be named parties-in-interest here.
` And unless you have any further questions, I
`can reserve the rest of my time for rebuttal.
` JUDGE TROCK: Thank you, Counsel.
` Ms. Hayes, you have ten minutes for the
`confidential portion. Would you like to reserve
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`anything for rebuttal?
` MS. HAYES: I'd like to reserve three minutes
`for rebuttal, please.
` JUDGE TROCK: Okay. You may begin.
` MS. HAYES: Thank you, Your Honors.
` But I think here you have to look at the facts,
`and in -- in this case, there are a number of facts that
`were discovered and have not been available in other
`cases involving Unified and in determining whether
`they're a real party-in-interest here. We have the
`actual agreements, we have the testimony of Mr. Jakel,
`Unified's CEO, and we have the marketing presentation
`that Unified
`.
` Unified is solely funded by membership fees,
`and Samsung and Apple are both members of Unified. And
`there's no dispute about that.
`
` And so when you look at the -- the factors,
`when you take into account the Federal Circuit's advice
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`and applications in Internet Time v. RPX, I think it's
`clear that Unified and its members should have been
`named as real parties-in-interest in this case. There's
`been a -- there a clear benefit for Samsung and Apple
`with this Unified IPR. And I don't think Unified ever
`says that Apple and Samsung don't benefit from this IPR.
`Instead, they focus on some of these details, like their
`
` But I think when you look at the facts, Unified
`is focused on filing IPRs that benefit its members. And
`I think when you look at it from that perspective, it
`becomes clear under the AIT Fed. Circuit case law that
`the Board must find that Apple and Samsung are real
`parties-in-interest in this particular IPR.
` And the reason why the Board needs to make a
`finding in this case is because there are two other IPRs
`that are pending that relate to this same patent. One
`filed by Apple, one filed by Samsung. Although the
`Board doesn't need to determine in this proceeding
`whether there is actual estoppel, I think it needs to
`make a finding about whether Samsung and Apple are real
`parties-in-interest in this case so that the estoppel
`can -- issue can then be raised in those other
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`proceedings.
` And so for those reasons, we think it's proper
`for the Board to find real party-in-interest in this
`particular case, and the facts prove that Apple and
`Samsung should both be identified as real
`parties-in-interest. There's a benefit that they're
`obtaining from this IPR.
` JUDGE TROCK: Thank you. Anything else, Ms.
`Hayes?
` MS. HAYES: No, Your Honors.
` JUDGE TROCK: All right. Thank you.
` Petitioner.
` MR. MANSINGHANI: Thank you, Your Honors.
` I'd like to address a few points raised by Ms.
`Hayes. First, she listed and identified allegedly that
`there were facts at this case that weren't present in
`all the other cases in which Unified has been held as a
`sole real party-in-interest. That's actually not true.
`So the things I heard her say were the agreements, the
`testimony of Mr. Jakel, and a marketing presentation.
` All of those things have been before the Board
`many times, and also before the Federal Circuit. So as
`an example, the American Patents case that we have cited
`in our -- in our brief, which also came down on
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`rehearing, had the same types of evidence at play when
`it held Unified is a sole real party-in-interest, and
`the Bark and Wilers (phonetic) case that went before the
`Federal Circuit also had the same evidence.
` So we just don't think it's true that this is
`the first time a tribunal has seen the evidence inside
`this case.
` What -- the other thing I'd like to mention is
`regarding the allegedly clear benefit in this case.
`Unlike most of the cases in which Unified files an IPR,
`what is not unique but different, but at least different
`from most of the cases where Unified filed an IPR is
`that other IPRs by the allegedly unnamed real
`parties-in-interest were filed, afterwards. So this
`actually makes the alleged benefit not much -- not that
`much at all. If this petition was truly a benefit, why
`would those members file their own? It doesn't really
`bear scrutiny, Your Honors.
` So we actually think that in this case, to the
`extent this case is exceptional compared to the other
`cases, it further demonstrates that Unified is the sole
`real party-in-interest as opposed to most of Unified's
`case where it is the only IPR filed.
` And then, finally, Ms. Hayes mentions the issue
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`of estoppel. And I agree with her that estoppel is not
`really before this tribunal. But her take on estoppel I
`don't agree with because since both of these parties
`that she's alleging should be part of this case have
`filed their own IPRs, if any estoppel applies, it should
`come from their own IPRs. So there's no risk here that
`somehow the -- the alleged unnamed real
`parties-in-interest in this case will skirt around some
`estoppel issues since they filed their own IPRs already.
` So if you took a look at all of those
`circumstances, here I think we have an even stronger
`case than we've had in the past regarding Unified's
`status as the true sole real party-in-interest.
` So with those issues addressed, I don't have
`any others to address based on what Ms. Hayes mentioned,
`but I'm happy to answer any questions if you have any.
` JUDGE BEAMER: Counsel, this is Judge Beamer.
` MR. MANSINGHANI: Yes, sir.
` JUDGE BEAMER: The fact that there's no overlap
`between these different petitions, might that suggest
`some coordination to ensure that there is no overlap?
` MR. MANSINGHANI: Thank you, Judge Beamer.
` So we don't think it does for a couple of
`reasons. First, there is overlap in the sense that the
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`-- there were claims that -- that although we challenge
`one set of claims, they challenge those same set of
`claims, plus a larger set of claims. So there is
`overlap there.
` And second, with respect to the prior art, I
`believe that they used at least some of the art, just
`not all of the art, and even if they -- even if they
`hadn't, Judge Beamer, the timeline here kind of
`indicates that there really -- there is no suggestion of
`coordination, because we filed our IPR of September of
`2021, and then, Apple filed their IPR against this
`patent in October 30th. So basically, almost two
`months.
` So there's no coordination because Apple had
`the benefit of looking at the IPR and deciding what they
`wanted to do, without needing to communicate with us.
`And the evidence demonstrates they didn't communicate
`with us. We did a search of the emails and didn't have
`any communications here.
` So thankfully, we don't have to rely on any
`sort of inherent, or I should say speculation about
`whether there is any coordination because we -- there
`were no communications. We did a search for them.
` And then, second, the timing here demonstrates
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`that Samsung also filed their IPR in December, so now
`we've got basically three months between from when we
`filed and they filed.
` So this would be the case, as is the situation,
`if they were completely unrelated parties filing a
`Petition, right. A second petitioner and a third
`petitioner can look at a petition and decide what they
`want to do with it. So that's how -- that's how we see
`the facts here, Your Honors. We think that the facts
`here kind of demonstrate the opposite.
` JUDGE BEAMER: Okay. Thank you.
` MR. MANSINGHANI: Thank you, Judge Beamer.
` JUDGE TROCK: Okay. Thank you, Counsel.
` Ms. Hayes.
` MS. HAYES: So I think we -- we cited a case in
`our papers, and I'm not finding it right away, but I
`think what Unified and its members are doing falls in
`line with the willfully blind set of case law. And I --
`I think that the idea that there are no emails between
`Samsung and Apple and Unified relating to the filing of
`this particular IPR is an example of the willful
`blindness that Unified is exercising, and it -- it
`actually supports a finding that Apple and Samsung
`should be identified as real parties in interest.
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` I think the -- the fact that there is delay
`between the filing of the Unified Petition and the Apple
`and Samsung petitions does not change the inquiry at
`all. Apple and Samsung were both involved in litigation
`that had a number of deadlines at the same time. I
`think also given the risk of estoppel in litigation for
`Samsung and Apple, it makes sense they would take more
`time before filing a petition with the Board. Unified
`itself doesn't have a risk of being estopped from
`raising invalidity arguments in litigation, but Apple
`and Samsung do, and so they're going to take the time to
`do that.
` But the problem is that Apple and Samsung have
`entered into a contractual relationship with Sam -- with
`Unified where Unified is expected to file IPRs on their
`behalf. And I think when you look at the nature of the
`relationship between Unified and its members, and then,
`the testimony of Mr. Jakel
`
`,
`
`it's clear that Apple and Samsung are real
`parties-in-interest to this particular IPR.
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` I mean, it would be different if
`
`,
`
` which include Apple and Samsung. And it's
`clear that the intent of Unified filing these IPRs is
`that it will benefit its members, Apple and Samsung.
` And for those reasons we believe that Apple and
`Samsung should be identified as real
`parties-in-interest.
` JUDGE TROCK: Okay. Thank you, Counsel.
` All right. That concludes the confidential
`portion of the hearing for today.
` The court reporter is on the line. We'd like
`to have two separate transcripts prepared. One for the
`public session and one for the confidential section.
`And then, we will review those with counsel before they
`become publicly available.
` We thank you for your time, we appreciate your
`input and your arguments. This is very helpful to us.
`And with that, we are adjourned for the day.
`Thank you.
`MS. HAYES: Thank you, Your Honors.
`MR. MANSINGHANI: Thank you.
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`MR. BARAZESH: Thank you, Your Honors.
`(Off the record at 2:43 p.m.)
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`IPR2021-01413
`Patent 10,621,228 B2
`PETITIONER:
`
`Ellyar Y. Barazesh
`Michelle Aspen
`UNIFIED PATENTS, LLC
`ellyar@unifiedpatents.com
`michelle@unifiedpatents.com
`
`PATENT OWNER:
`
`Jennifer Hayes
`George Dandalides
`NIXON PEABODY LLP
`jenhayes@nixonpeabody.com
`gdandalides@nixonpeabody.com
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