·1· · · · · · ·UNITED STATES PATENT AND TRADEMARK OFFICE
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`·2· · · · · · ·BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`·3
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`·4· ·UNIFIED PATENTS, LLC; APPLE,· · ·)
`· · ·INC.; SAMSUNG ELECTRONICS CO.,· ·)
`·5· ·LTD., et al.,· · · · · · · · · · )
`· · · · · · · · · · · · · · · · · · · )
`·6· · · · · · · · · · · · · · · · · · )
`· · · · ·Petitioners,· · · · · · · · ·)
`·7· · · · · · · · · · · · · · · · · · ) Inter Partes Review Nos.:
`· · · · ·vs.· · · · · · · · · · · · · ) IPR2021-01413,
`·8· · · · · · · · · · · · · · · · · · ) IPR2022-00031,
`· · ·MEMORYWEB, LLC,· · · · · · · · · ) IPR2022-00222.
`·9· · · · · · · · · · · · · · · · · · )
`· · · · · · · · · · · · · · · · · · · )
`10· · · ·Patent Owner.· · · · · · · · )
`· · · · · · · · · · · · · · · · · · · )
`11· ·_________________________________)
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`12
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`13
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`14
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`15· · · · · · · · · · · ·TRANSCRIPT OF HEARING
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`16· · · · · · · · · · · · VIA TELECONFERENCE
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`17· · · · · · · · · · · ·Friday, March 31, 2023
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`18· · · · · · · · · · · 10:04 a.m. - 11:21 a.m.
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`19
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`20
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`21
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`22
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`23· ·Reported by Andy Rodriguez, CSR No. 14226
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`24· ·Pages 1 - 56
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`25· ·Job No. 10117681
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`IPR2021-01413
`Ex. 3004
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`
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`·2· · · · · · ·BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`·3
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`·4· ·UNIFIED PATENTS, LLC; APPLE,· · ·)
`· · ·INC.; SAMSUNG ELECTRONICS CO.,· ·)
`·5· ·LTD., et al.,· · · · · · · · · · )
`· · · · · · · · · · · · · · · · · · · )
`·6· · · · · · · · · · · · · · · · · · )
`· · · · ·Petitioners,· · · · · · · · ·)
`·7· · · · · · · · · · · · · · · · · · ) Inter Partes Review Nos.:
`· · · · ·vs.· · · · · · · · · · · · · ) IPR2021-01413,
`·8· · · · · · · · · · · · · · · · · · ) IPR2022-00031,
`· · ·MEMORYWEB, LLC,· · · · · · · · · ) IPR2022-00222.
`·9· · · · · · · · · · · · · · · · · · )
`· · · · · · · · · · · · · · · · · · · )
`10· · · ·Patent Owner.· · · · · · · · )
`· · · · · · · · · · · · · · · · · · · )
`11· ·_________________________________)
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`12
`
`13
`
`14
`
`15· · · · · · · · · · · ·TRANSCRIPT OF HEARING
`
`16· · · · · · · · · · · · VIA TELECONFERENCE
`
`17· · · · · · · · · · · ·Friday, March 31, 2023
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`18· · · · · · · · · · · 10:04 a.m. - 11:21 a.m.
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`19
`
`20
`
`21
`
`22
`
`23· ·Reported by Andy Rodriguez, CSR No. 14226
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`24· ·Pages 1 - 56
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`25· ·Job No. 10117681
`
`IPR2021-01413
`Ex. 3004
`
`
`
`·1· · · · · · ·UNITED STATES PATENT AND TRADEMARK OFFICE
`
`·2· · · · · · ·BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`·3
`
`·4· ·UNIFIED PATENTS, LLC; APPLE,· · ·)
`· · ·INC.; SAMSUNG ELECTRONICS CO.,· ·)
`·5· ·LTD., et al.,· · · · · · · · · · )
`· · · · · · · · · · · · · · · · · · · )
`·6· · · · · · · · · · · · · · · · · · )
`· · · · ·Petitioners,· · · · · · · · ·)
`·7· · · · · · · · · · · · · · · · · · ) Inter Partes Review Nos.:
`· · · · ·vs.· · · · · · · · · · · · · ) IPR2021-01413,
`·8· · · · · · · · · · · · · · · · · · ) IPR2022-00031,
`· · ·MEMORYWEB, LLC,· · · · · · · · · ) IPR2022-00222.
`·9· · · · · · · · · · · · · · · · · · )
`· · · · · · · · · · · · · · · · · · · )
`10· · · ·Patent Owner.· · · · · · · · )
`· · · · · · · · · · · · · · · · · · · )
`11· ·_________________________________)
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`12
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`13
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`14
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`15
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`16
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`17
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`18
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`19
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`20
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`21
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`22· · · · TRANSCRIPT OF HEARING, taken via teleconference on
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`23· ·Friday, March 31, 2023, from 10:04 a.m. to 11:21 a.m., before
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`24· ·Andy Rodriguez, CSR No. 14226.
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`25· · · · · · · · · · · · · · · ·* * *
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`
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`·1· · · · · · · · · · · ·A P P E A R A N C E S
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`·2· · · · · · · (All parties appearing telephonically)
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`·3
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`·4· ·PTAB Judges:· KEVIN C. TROCK, NORMAN H. BEAMER
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`·5
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`·6· ·For Petitioner UNIFIED PATENTS, LLC:
`
`·7· · · ·LATHAM & WATKINS LLP
`· · · · ·BY: JONATHAN M. STRANG, ESQ.
`·8· · · ·555 Eleventh Street, Northwest, Suite 1000
`· · · · ·Washington, DC 20004
`·9· · · ·(202)637-2362
`· · · · ·jonathan.strang@lw.com
`10
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`11· ·For Petitioner APPLE, INC.:
`
`12· · · ·SIDLEY AUSTIN LLP
`· · · · ·BY: JEFFREY P. KUSHAN, ESQ.
`13· · · · · ·MATTHEW MAHONEY, ESQ.
`· · · · ·1501 K Street, Northwest
`14· · · ·Washington, DC 20005
`· · · · ·(202)736-8914
`15· · · ·jkushan@sidley.com
`· · · · ·mmahoney@sidley.com
`16
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`17· ·For Petitioner SAMSUNG ELECTRONICS, CO., LTD.:
`
`18· · · ·FISH & RICHARDSON
`· · · · ·BY: W. KARL RENNER, ESQ.
`19· · · ·1000 Maine Avenue, Southwest
`· · · · ·Washington, DC 20024
`20· · · ·(202)626-6447
`· · · · ·renner@fr.com
`21
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`22· ·For Patent Owner MEMORYWEB, LLC:
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`23· · · ·NIXON PEABODY LLP
`· · · · ·BY: JENNIFER HAYES, ESQ.
`24· · · ·300 South Grand Avenue #4100
`· · · · ·Los Angeles, California 90071
`25· · · ·(213)629-6179
`· · · · ·jenhayes@nixonpeabody.com
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`
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`·1· · · · · · · · A P P E A R A N C E S· (Continued)
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`·2
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`·3· ·For Patent Owner MEMORYWEB, LLC:
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`·4· · · ·NIXON PEABODY LLP
`· · · · ·BY: DANIEL J. SCHWARTZ, ESQ.
`·5· · · ·70 West Madison Street, Suite 5200
`· · · · ·Chicago, Illinois 60602
`·6· · · ·(312)977-4432
`· · · · ·djschwartz@nixonpeabody.com
`·7
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`·8· ·Also Present:
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`·9· · · ·Jonathan Stroud
`· · · · ·Steve Bachmann
`10· · · ·Raisa Ahmad
`· · · · ·Jong Choi
`11
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`·1· · · · · · · · · · ·P R O C E E D I N G S
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`·2· · · · · · · · · · FRIDAY, MARCH 31, 2023
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`·3· · · · · · · · · · 10:04 a.m. - 11:21 a.m.
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`·4· · · · · · · · · · · · · · ·- - -
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`·5· · · · · · JUDGE TROCK:· Why don't we get started.· Let's
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`·6· ·start with appearances.
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`·7· · · · · · This is a conference call involving three
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`·8· ·cases.· The first case is IPR2021-01413, the second case
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`·9· ·is IPR2022-00031, and the third case is IPR2022-00222.
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`10· · · · · · So let's start with appearances.· Let me start
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`11· ·with the 01413 case.
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`12· · · · · · Do we have anyone on the call for Unified
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`13· ·Patents?
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`14· · · · · · MR. STRANG:· Good afternoon, Your Honor.· This
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`15· ·is Jonathan Strang, lead counsel for Unified Patents.
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`16· ·And also on the line is a client representative from
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`17· ·Unified Patents, Mr. Jonathan Stroud.
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`18· · · · · · JUDGE TROCK:· Good day, Mr. Strang.
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`19· · · · · · How about for Patent Owner MemoryWeb?· Do we
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`20· ·have anyone on the call?
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`21· · · · · · MS. HAYES:· Yes, Your Honor.· Jennifer Hayes
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`22· ·from Nixon Peabody for MemoryWeb.· And also on the line
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`23· ·is Dan Schwartz, also from Nixon Peabody.
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`24· · · · · · JUDGE TROCK:· Good day, Ms. Hayes.
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`25· · · · · · Let's move on to the 00031 case.· Do we have
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`
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`·1· ·anyone on the call for Apple?
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`·2· · · · · · MR. KUSHAN:· Good afternoon, Your Honor.· This
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`·3· ·is Jeff Kushan.· With me are two counsel, Matt Mahoney
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`·4· ·from our firm, and Steve Bachmann.· In addition, I
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`·5· ·believe our -- we have a client representative, Raisa
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`·6· ·Ahmad, from Apple on the line as well.
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`·7· · · · · · JUDGE TROCK:· Good day, Mr. Kushan.
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`·8· · · · · · And then finally, for Samsung, do we have
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`·9· ·anyone on the call for Samsung?
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`10· · · · · · MR. RENNER:· Yes, Your Honor.· This is Karl
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`11· ·Renner, outside counsel, and we also have from Samsung
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`12· ·Jong Choi.
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`13· · · · · · JUDGE TROCK:· Good day, Mr. Renner.
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`14· · · · · · Well, I first want to thank all of you for
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`15· ·coordinating this with us and getting together on this
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`16· ·call so we can discuss the issues that have arisen in
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`17· ·this case.
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`18· · · · · · So principally, what I would like to do is to
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`19· ·hear from each of you regarding a process for moving
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`20· ·forward with respect to this real party in interest
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`21· ·issue and potential 315(e)(1) estoppel.
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`22· · · · · · And the three different topics I'd like you to
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`23· ·each approach is, one, whether, in the subsequent cases
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`24· ·involving Apple and Samsung, whether they can have
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`25· ·access to the evidentiary record in the 01413 case by
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`
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`·1· ·signing on to the protective order that's engaged in
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`·2· ·that case.· Two, what, if any, additional discovery
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`·3· ·would be needed to address the RPI and the estoppel
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`·4· ·issues in terms of its scope and its timing.· And then
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`·5· ·three, whatever briefing the parties would like, and the
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`·6· ·scope and timing of that as well.
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`·7· · · · · · So this is a fairly complicated situation, and
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`·8· ·I think probably the best way to do this is to start out
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`·9· ·with Samsung addressing this, because this issue was
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`10· ·discussed during the hearing on that case.· So,
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`11· ·Mr. Renner, if you'd like to go first, I'd like to hear
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`12· ·from you on these issues.
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`13· · · · · · MR. RENNER:· Thank you, Your Honor.
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`14· · · · · · So taking the issues in order, I --
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`15· ·contextually, we spoke at length before about the
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`16· ·perceived need for there to be a finding in order for
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`17· ·any estoppel to apply.· With respect to Samsung, that
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`18· ·there would need to be a basis for finding real party in
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`19· ·interest in the proceeding proper, in this particular
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`20· ·proceeding, and that at present, there hasn't been
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`21· ·argument or evidence offered to establish there were
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`22· ·real party in interests or privity between Samsung and
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`23· ·Unified in the prior -- with that as a backdrop and, I
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`24· ·guess, again maybe just emphasizing something that we
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`25· ·talked, I think, at length about as well, that it is
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`·1· ·Samsung's view that the patent owner had every
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`·2· ·opportunity to raise that issue and bring evidence that
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`·3· ·they thought appropriate into this proceeding but did
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`·4· ·not do so.
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`·5· · · · · · We continue to believe that further process
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`·6· ·here is, frankly, unwarranted, that there have been, you
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`·7· ·know, waiver, among other things.· I don't want to
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`·8· ·belabor that point too much, but I did want to
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`·9· ·reestablish that as well.
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`10· · · · · · To the extent that there were processes that
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`11· ·would be conducted going forward, as you'd asked me
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`12· ·question number one, you know, in the subsequent cases,
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`13· ·can the parties have access, we obviously would need to
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`14· ·have access to any evidence that MemoryWeb would bring
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`15· ·or would want to rely upon in trying to establish
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`16· ·there'd be some archive relationship of Samsung to
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`17· ·Unified in the 0413 case, and we are not presently able
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`18· ·to have access to that.· But we'd need to examine that
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`19· ·and understand what it is that gave rise to concerns
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`20· ·there.
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`21· · · · · · Additional discovery, therefore, would
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`22· ·certainly involve examination of that evidence, whatever
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`23· ·it is, obviously seeing it, and to the extent
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`24· ·appropriate, having seen it, that Samsung be able to
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`25· ·bring whatever evidence it felt was appropriate to
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`·1· ·confront it, much as if this were timely raised in a
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`·2· ·normal proceeding.
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`·3· · · · · · And then -- I hope I'm answering the first two
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`·4· ·there.· The third is the briefing and scope.· We would
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`·5· ·think this best run, like we had talked about, if it
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`·6· ·were to happen, as it were in the normal proceeding.
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`·7· ·Ordinarily a patent owner would raise the issues that it
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`·8· ·feels were appropriate to raise.· It would support those
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`·9· ·with whatever evidence it though it had to support them,
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`10· ·and a party in our shoes would have the opportunity to
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`11· ·examine that evidence thereafter and brief with whatever
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`12· ·fruit came of the examination of that evidence as well
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`13· ·as whatever affirmative evidence it wanted to bring
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`14· ·forward so that the Board would have a full opportunity
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`15· ·to consider the record on that issue.
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`16· · · · · · JUDGE TROCK:· Okay.· Thank you, Mr. Renner.
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`17· · · · · · How about we -- we'll get to Unified and Apple
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`18· ·in a second, but how about we hear from a MemoryWeb
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`19· ·first?· Ms. Hayes, would you like to address what
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`20· ·Mr. Renner has discussed?
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`21· · · · · · MS. HAYES:· Thank you, Judge Trock.
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`22· · · · · · Yes, so as we've previously indicated, we do
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`23· ·not believe that discovery needs to be conducted in the
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`24· ·Samsung case -- and this would apply to the Apple case
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`25· ·as well -- but our view is that the RPI decision in the
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`·1· ·Unified case is sufficient for the Board to determine
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`·2· ·whether there is estoppel in the Apple and Samsung case,
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`·3· ·and there's no reason or basis for the Board to be
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`·4· ·required to perform a new, additional RPI analysis of
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`·5· ·the Unified IPR in the Samsung and Apple proceedings.
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`·6· · · · · · So our view is that the RPI issue was decided
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`·7· ·in the Unified case, and that is sufficient, and no
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`·8· ·additional discovery on RPI needs to be performed in the
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`·9· ·Samsung or Apple cases.· However, I think, to the point
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`10· ·that you raised initially, in order to -- so first, the
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`11· ·RPI order, even in redacted form, has not been made
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`12· ·available to Apple or Samsung, and so even the redacted
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`13· ·version of those orders cannot yet be used for us to
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`14· ·make an estoppel-based argument.
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`15· · · · · · And so I think, one, that decision, at least in
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`16· ·redacted form, needs to be made available to Apple and
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`17· ·Samsung, but I think, more to the point, the
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`18· ·confidential version of that order should also be made
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`19· ·available to Apple and Samsung, at least the order
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`20· ·itself be made available to outside counsel in those two
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`21· ·proceedings.· And we would not oppose the decisions
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`22· ·being made available to Apple and Samsung themselves,
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`23· ·consistent with the protective order in the Unified
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`24· ·case, but understand that that's Unified's confidential
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`25· ·information and they may have a different view on that.
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`·1· · · · · · And so I think with respect to the briefing
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`·2· ·schedule for a motion relating to the estoppel issue, it
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`·3· ·would need to be based with some period of time after
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`·4· ·the confidentiality issues are resolved, and I think the
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`·5· ·parties can meet and confer and discuss the briefing
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`·6· ·schedule separately and provide a proposal to the Board
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`·7· ·once the confidentiality issues are resolved.
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`·8· · · · · · JUDGE TROCK:· Okay.· Thank you, Ms. Hayes.
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`·9· · · · · · Why don't we move over to Unified Patents and
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`10· ·get your view -- sorry?
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`11· · · · · · MR. RENNER:· Your Honor, this is Mr. Renner.
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`12· ·Would you mind if I just offered a comment in addition
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`13· ·before we moved to Unified?
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`14· · · · · · JUDGE TROCK:· No, that's fine.· Go right ahead.
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`15· · · · · · MR. RENNER:· Thank you very much.
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`16· · · · · · To the extent that a decision was reached in
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`17· ·another case on this issue -- it seems to have been, but
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`18· ·we, as everyone knows, can't really see -- it was not
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`19· ·informed, I think it's clear, by input from Samsung, nor
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`20· ·was Samsung able to examine the evidence that was
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`21· ·advanced there.
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`22· · · · · · And having no opportunity to either confront or
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`23· ·complement the record, the decision to bind Samsung with
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`24· ·estoppel being suggested here would be based on a
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`25· ·predicate fact finding of RPI, which denies, we think,
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`·1· ·Samsung due process.· And I, again, don't think that's
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`·2· ·lost on anyone here, but I think it's important to maybe
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`·3· ·play that as a predicate.· So I appreciate the
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`·4· ·opportunity.
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`·5· · · · · · JUDGE TROCK:· Well, thank you for that,
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`·6· ·Mr. Renner.· The Board is aware of and concerned about
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`·7· ·not only due process issues but also of the appeals
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`·8· ·issues.· So part of the purpose of this exploration is
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`·9· ·to make sure that all the parties that are impacted by
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`10· ·this have an opportunity to have access to the evidence
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`11· ·and to be heard on it as well as to be able to brief
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`12· ·their views to the Board, and also for purposes of
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`13· ·putting this together into a form, which can be appealed
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`14· ·by the parties to the extent that they are not happy
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`15· ·with the result.
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`16· · · · · · So we thank you for that input, because that is
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`17· ·part of our deliberation here, is to figure out what's
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`18· ·going to be fair for everybody so that we can have a
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`19· ·complete record on these issues and so that the parties
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`20· ·can have their say and have their opportunity to be
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`21· ·heard as well as the opportunity to appeal these --
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`22· ·whatever decisions are rendered in a timely manner.
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`23· · · · · · So why don't we go over to you, Mr. Strang, and
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`24· ·let's hear the position from Unified Patents on these.
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`25· · · · · · MR. STRANG:· Thank you, Your Honor.· Again, for
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`
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`·1· ·the record, this is Jonathan Strang of Latham & Watkins
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`·2· ·for Petitioner Unified in IPR2021-01413.
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`·3· · · · · · Your Honor, Unified believes that the -- and I
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`·4· ·think Your Honor just kind of went in this direction --
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`·5· ·that the easiest and most proper thing for the Board to
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`·6· ·do here and -- to avoid prejudicing other parties'
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`·7· ·rights is to vacate the RPI order that was from our IPR,
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`·8· ·Paper 56 that Apple and Samsung can't even see yet, and
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`·9· ·that would be absolutely necessary to ensure that they
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`10· ·have a full and fair opportunity to litigate this issue
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`11· ·that affects them and also affects every other party
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`12· ·that might be affected by this RPI in any other forum,
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`13· ·including the ITC and district court, because, of
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`14· ·course, 315(e)(2) is the sister to 315(e)(1).· So this
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`15· ·is a pretty thorny issue we have here, and we fully
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`16· ·recognize that, Your Honor.
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`17· · · · · · And I think Apple and Samsung probably will
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`18· ·part from us in this way.· I haven't spoken to counsel
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`19· ·yet, but just from what I've heard so far and from a
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`20· ·brief review of the public briefing in those two IPRs.
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`21· ·Unified doesn't oppose consolidating all three
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`22· ·proceedings into one so that all the parties can be
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`23· ·heard, so that we can have a full record, so that it can
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`24· ·be appealed, just as Your Honor mentioned.
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`25· · · · · · What's most important here to Unified are two
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`
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`·1· ·things.· One is we need to be heard and be on equal
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`·2· ·footing with the other parties, because we're affected
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`·3· ·by this RPI issue too, just in a different manner.
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`·4· ·What's also important is the -- we have a duty to
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`·5· ·protect the confidential information, not only our own
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`·6· ·but also our membership.
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`·7· · · · · · And -- for example, in the Apple proceeding --
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`·8· ·and I'm just going to pick on Apple because we haven't
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`·9· ·heard from them yet -- in the Apple proceeding, Apple
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`10· ·has a copy of their membership agreement, presumably,
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`11· ·and in the Samsung proceeding, Samsung has a copy of the
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`12· ·Samsung membership agreement, but those parties
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`13· ·shouldn't be able to see each other's membership
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`14· ·agreements.· I mean, the prices were negotiated, things
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`15· ·like that.
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`16· · · · · · So there's information that Apple can see that
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`17· ·Samsung can't see; there's also information that's
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`18· ·proprietary to Unified itself that Apple and Samsung
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`19· ·should not be able to see.· On the other hand,
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`20· ·MemoryWeb's in a completely different position.· They
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`21· ·are fighting on three fronts, and in each one of their
`
`22· ·proceedings, they need to be able to see this
`
`23· ·information too.
`
`24· · · · · · So to wrap it all up, we think the only way to
`
`25· ·really proceed at this point, now that we're in this
`
`
`
`·1· ·thorny situation, is to vacate the RPI order, vacate the
`
`·2· ·portion of the final written decision that refers to the
`
`·3· ·order, and consolidate all three proceedings and go from
`
`·4· ·there.· And most importantly for Unified, we need to be
`
`·5· ·a part of the process, and we need equal treatment,
`
`·6· ·equal briefing as the other parties.
`
`·7· · · · · · Thank you, Your Honor.
`
`·8· · · · · · JUDGE TROCK:· Thank you, Mr. Strang.
`
`·9· · · · · · What about the idea of -- with respect to the
`
`10· ·confidentiality that you raise, what about the idea of
`
`11· ·allowing both counsel for Apple and Samsung to sign on
`
`12· ·to the protective order in the 01413 case on an
`
`13· ·attorneys'-eyes-only basis so that their clients would
`
`14· ·not have access to that information?
`
`15· · · · · · MR. STRANG:· Procedurally, we'd need to look at
`
`16· ·that very carefully, Your Honor.· We don't want to cause
`
`17· ·problems between Apple and Samsung.· And
`
`18· ·evidentiary-wise, we've got a pretty big issue here,
`
`19· ·because we can't just airdrop evidence into two other
`
`20· ·proceedings.
`
`21· · · · · · Now, if we're consolidated, I think that issue
`
`22· ·goes away, but if the proceedings are not consolidated,
`
`23· ·I don't see how we can just airdrop this evidence into
`
`24· ·two other IPRs absent, you know, some other mechanism of
`
`25· ·the Board's rules, and the only one I can think of --
`
`
`
`·1· ·and I looked hard -- was a motion for compelling
`
`·2· ·testimony or production.
`
`·3· · · · · · As I'm sure Your Honor knows very well, the
`
`·4· ·patent owner or the petitioner in those other IPRs would
`
`·5· ·file the motions basically seeking a subpoena, the Board
`
`·6· ·will authorize it, and then the party goes and seeks a
`
`·7· ·third-party subpoena from the appropriate district
`
`·8· ·court.· That's the only way we can see of dropping in
`
`·9· ·third-party information like this into a previous
`
`10· ·proceeding, which is why we've proposed the
`
`11· ·consolidation.· We just couldn't find anything better
`
`12· ·than that, Your Honor.
`
`13· · · · · · JUDGE TROCK:· Mr. Strang, have you taken a look
`
`14· ·at the protective order in the 01413 case?
`
`15· · · · · · MR. STRANG:· I have not looked at it recently,
`
`16· ·Your Honor --
`
`17· · · · · · JUDGE TROCK:· I believe it's attached to
`
`18· ·Number 10 in that case.
`
`19· · · · · · MR. STRANG:· You believe it's attached to what,
`
`20· ·Your Honor?
`
`21· · · · · · JUDGE TROCK:· Paper 10 in that case.· It's part
`
`22· ·of the appendix for that.
`
`23· · · · · · MR. STRANG:· I'm opening it now, Your Honor.
`
`24· · · · · · JUDGE TROCK:· Well, I don't want to put you on
`
`25· ·the spot, but something I'd like you to do after this
`
`
`
`·1· ·call is over is take a look at that protective order and
`
`·2· ·consider whether one option would be to have the
`
`·3· ·attorneys for Apple and Samsung sign on to that
`
`·4· ·protective order, which would give them access -- their
`
`·5· ·attorneys access to the confidential information that's
`
`·6· ·in the evidentiary record of that case as a way of
`
`·7· ·giving those counsel access to that information so that
`
`·8· ·they can consider it.
`
`·9· · · · · · MR. STRANG:· Your Honor, just to make sure I'm
`
`10· ·being absolutely clear, I don't think there would be a
`
`11· ·problem or it would be an insurmountable issue for the
`
`12· ·parties to negotiate a protective order, and it may very
`
`13· ·well be exactly this protective order.· But this
`
`14· ·protective order applies to a different IPR, and that
`
`15· ·evidence is in a different IPR.· To get that evidence
`
`16· ·and protective order into the Apple IPR or the Samsung
`
`17· ·IPR, that's the procedural hurdle we're struggling with,
`
`18· ·and there's also evidentiary hurdles with that too.· So
`
`19· ·it's not as simple as we got lucky and have the same
`
`20· ·judges in these proceedings; we need a formal mechanism.
`
`21· · · · · · And as far as -- I think I heard it from
`
`22· ·Samsung, Mr. Renner, on the opening.· You know, there's
`
`23· ·a significant due process issue that Your Honor
`
`24· ·recognized.· And if this is binding on Samsung here, is
`
`25· ·the order in our case also binding on Samsung in
`
`
`
`·1· ·district court?· I mean, this is -- we're really
`
`·2· ·charting new ground, and that's why we went with the
`
`·3· ·consolidation suggestion, Your Honor.· And in that case,
`
`·4· ·of course the parties would agree to a protective order,
`
`·5· ·and it would be transparent to the Board.· We might need
`
`·6· ·to change a couple words in this one, but it's probably
`
`·7· ·pretty close to what we need.
`
`·8· · · · · · JUDGE TROCK:· Okay.· Thank you, Mr. Renner.
`
`·9· · · · · · Well, why don't we turn to Apple.· Mr. Kushan,
`
`10· ·you've been patient with us.· I appreciate that.· So
`
`11· ·let's hear what Apple has to say on these issues.
`
`12· · · · · · MR. KUSHAN:· Thank you, Your Honor.
`
`13· · · · · · I think we have a slightly different
`
`14· ·perspective on the question of how to proceed in this
`
`15· ·with respect to the Apple proceeding.· And the main
`
`16· ·difference -- and we have two general concerns I want to
`
`17· ·talk about.· But the first one is that, unlike the other
`
`18· ·proceedings, there is no trace of an issue, an RPI
`
`19· ·issue, in our proceeding, and we believe that's a very
`
`20· ·different footing to the question of waiver.
`
`21· · · · · · And we think a motion that might get authorized
`
`22· ·for MemoryWeb to pursue a termination on the basis of an
`
`23· ·RPI issue would be improper, because clearly MemoryWeb
`
`24· ·has waived the RPI issue in our proceeding.· They've
`
`25· ·never raised it in any of their papers.· They certainly
`
`
`
`·1· ·had knowledge of their beliefs about the RPI of Apple
`
`·2· ·relative to Unified.· They made a comment about that in
`
`·3· ·the Unified preliminary responses they filed.
`
`·4· · · · · · They've filed papers in the Samsung proceeding
`
`·5· ·that raises the question of an RPI connection between
`
`·6· ·Apple and Unified, but they've never done that in the
`
`·7· ·Apple proceeding.· In fact, and just before our old
`
`·8· ·hearing, they apparently secured an order in the Unified
`
`·9· ·proceeding identifying Apple as an RPI in that
`
`10· ·proceeding and went through the whole hearing, not a
`
`11· ·word about it.· They waited 90 minutes after our hearing
`
`12· ·ended, and then they raised this issue for the first
`
`13· ·time with us in an email.
`
`14· · · · · · Now, that is highly prejudicial to Apple.· Just
`
`15· ·the handling of an RPI issue in the Apple proceeding is
`
`16· ·highly prejudicial to Apple.· First, if they had raised
`
`17· ·it earlier, we might have engaged the question.· We
`
`18· ·might have sought discovery of our own.· We might have
`
`19· ·had other questions about briefing and engagement of the
`
`20· ·substance of the issue.
`
`21· · · · · · But also, we could have pursued procedural
`
`22· ·options.· You know, we went through a process of
`
`23· ·coordinating the schedule in our four cases, but we also
`
`24· ·might have proposed that we coordinate the schedules of
`
`25· ·the Unified proceeding with ours so that the final
`
`
`
`·1· ·written decisions all came out on the same day and it
`
`·2· ·would moot this issue of estoppel.
`
`·3· · · · · · So there's significant prejudice associated
`
`·4· ·with the failure of MemoryWeb to raise the RPI issue in
`
`·5· ·our proceeding that would warrant, you know, and justify
`
`·6· ·the waiver conclusion.
`
`·7· · · · · · I also want to flag that we can't see a good
`
`·8· ·cause scenario or rationale from their conduct.· They
`
`·9· ·acknowledge it was prejudicial to us, and allowing them
`
`10· ·to kind of belatedly raise this is a very prejudicial
`
`11· ·impact for us now that the case has been fully
`
`12· ·submitted.
`
`13· · · · · · If you can permit me, I want to touch on a
`
`14· ·second concern that's more general about what happened
`
`15· ·in the Unified proceeding.· And as Mr. Renner said, we
`
`16· ·see a significant -- we have significant concern for
`
`17· ·Apple that we have not had due process, and we don't see
`
`18· ·that that decision actually is binding on Apple, because
`
`19· ·we are not a party to it.· We didn't participate in it.
`
`20· ·We had no notice of it.· The record is sealed, so we
`
`21· ·don't have any information other than a little bit of
`
`22· ·information which is cut off just prior to our hearing
`
`23· ·in this exchange.
`
`24· · · · · · So it does create harm to Apple, because you
`
`25· ·have this decision that we could not have participated
`
`
`
`·1· ·in influencing, which may affect Apple's interest not
`
`·2· ·only in this proceeding but in other proceedings.
`
`·3· · · · · · So I do firmly agree with Your Honor's
`
`·4· ·observation at the start of this call that this is a
`
`·5· ·very complicated situation we're in, but I think for us
`
`·6· ·the big concern and a differentiating factor for us is
`
`·7· ·what we think is a very clear waiver of the RPI issue in
`
`·8· ·our proceeding.
`
`·9· · · · · · Now, we've heard a suggestion, I think from
`
`10· ·Unified, to propose a consolidation of the proceedings.
`
`11· ·One alternative to that, we understand -- and we've seen
`
`12· ·on Monday that Unified has filed a request for
`
`13· ·reconsideration by presidential panel.· One option, of
`
`14· ·course, would be to just wait until the panel acts on
`
`15· ·that rehearing request, because the -- if they were to
`
`16· ·vacate the RPI finding -- which we would support,
`
`17· ·because we think that's an arbitrary and capricious
`
`18· ·finding based on what we read in their paper.· We also
`
`19· ·have the additional view about this being arbitrary and
`
`20· ·capricious because it was rendered and affects our
`
`21· ·interest without us participating in it.
`
`22· · · · · · But if the Board were to wait until there was a
`
`23· ·decision in that rehearing and it were to come out in
`
`24· ·that rehearing that the RPI finding would be vacated,
`
`25· ·then you have probably the most efficient path that's
`
`
`
`·1· ·available to all the parties in this proceeding, because
`
`·2· ·then you would not have an RPI issue at all.
`
`·3· · · · · · Second thought that we have, you know -- and
`
`·4· ·I'm glad you engaged us with your opening comments -- we
`
`·5· ·do think it's important for us to be able to see the
`
`·6· ·record in the other proceeding.· We're happy to take
`
`·7· ·whatever path that makes sense and is feasible.
`
`·8· · · · · · I note that the comments Mr. Strang raised are
`
`·9· ·ones we should consider, and maybe we should have a
`
`10· ·consultation with the counsel for the parties after this
`
`11· ·call to see if we can approach an agreed-upon path, and
`
`12· ·maybe there needs to be subpoenas or may need to be some
`
`13· ·other technique for, you know, getting the record into
`
`14· ·the Apple proceeding so we can actually address it.· So
`
`15· ·we're open to whatever path, and we're happen to go
`
`16· ·under the protective order to get that information.
`
`17· · · · · · So that -- those are our thoughts.· I also
`
`18· ·have -- I think with our perspective, we do want to
`
`19· ·preserve the opportunity to get additional discovery if
`
`20· ·we believe that's appropriate.
`
`21· · · · · · And, again, we're flying blind.· We have no
`
`22· ·information.· We have no idea why we have been held to
`
`23· ·be an RPI to Unified, because unlike the other two
`
`24· ·proceedings, there's been zero engagement of this
`
`25· ·question in our proceeding.· We have no -- we're
`
`
`
`·1· ·literally in the dark.· So that's why we think, for our
`
`·2· ·proceeding, the correct path is to not engage this,
`
`·3· ·because we see a very clear case for waiver.
`
`·4· · · · · · Now, I'll pause and let you respond to my
`
`·5· ·observations, but I do think we're on a slightly
`
`·6· ·different footing given the track record in our
`
`·7· ·proceeding.
`
`·8· · · · · · JUDGE TROCK:· Okay.· Thank you, Mr. Kushan.
`
`·9· · · · · · So, Ms. Hayes, would you like to respond to
`
`10· ·Mr. Kushan's observations with respect to the Apple
`
`11· ·case?
`
`12· · · · · · MS. HAYES:· Yes, Your Honor.
`
`13· · · · · · So a couple of points I want to make.· One is
`
`14· ·we don't believe that there's been any waiver on the RPI
`
`15· ·issue in the Apple case.· I don't disagree that the RPI
`
`16· ·issue was not specifically raised in the papers, but I
`
`17· ·don't think that matters.· Estoppel applied when the RPI
`
`18· ·decision was made in the Unified case, and so the only
`
`19· ·issue or question is when did estoppel apply and to
`
`20· ·which claims it would apply in the Apple case.
`
`21· · · · · · The fact that Apple was not aware of the RPI
`
`22· ·issue in the Unified case is not a waiver of the
`
`23· ·estoppel argument.· And, you know, our position is that
`
`24· ·Unified should have notified its members of the RPI
`
`25· ·challenge, and Unified, in the Unified proceeding, had
`
`
`
`·1· ·every opportunity to reach out to its members and get
`
`·2· ·declarations from its member, but it chose not to do so,
`
`·3· ·or inform its own members that there was an RPI
`
`·4· ·challenge in the Unified proceeding.· So, if anything, I
`
`·5· ·think the fault lies with Unified, not with MemoryWeb.
`
`·6· · · · · · That being said, I think the main issue,
`
`·7· ·though, is with respect to the RPI order, how we are
`
`·8· ·able to make that available to Apple and Samsung, and I
`
`·9· ·think we don't have a clear position from Unified on how
`
`10· ·to do that.· I don't think that it's necessary to
`
`11· ·provide all of the underlying evidence to Apple or
`
`12· ·Samsung.· What really is important is providing the
`
`13· ·order itself -- the confidential version of the order
`
`14· ·itself to Apple and Samsung and being able to point to
`
`15· ·that in our request for authorization to file the
`
`16· ·estoppel motions in Apple and Samsung without violating
`
`17· ·the protective order.
`
`18· · · · · · JUDGE TROCK:· So, Ms. Hayes -- sorry, just -- I
`
`19· ·want to just mention a couple things and see if I can
`
`20· ·get a response.
`
`21· · · · · · So in the hearing in the Samsung case, you had
`
`22· ·raised a request for filing a motion to stay or
`
`23· ·terminate that case.· Are you still maintaining that
`
`24· ·position -- or are you still maintaining that request?
`
`25· ·Let me ask you that.
`
`
`
`·1· · · · · · MS. HAYES:· Yes, we are still maintaining that
`
`·2· ·request.· We have made a similar request to Apple, but
`
`·3· ·Apple has not provided its position to us because they
`
`·4· ·want to review the confidential version of the RPI order
`
`·5· ·before providing their position, and so that's why the
`
`·6· ·parties -- or MemoryWeb has not reached out to the Board
`
`·7· ·about a similar motion in the Apple case.
`
`·8· · · · · · JUDGE TROCK:· You just recently mentioned
`
`·9· ·something about estoppel motions, so what are you
`
`10· ·referring to there?
`
`11· · · · · · MS. HAYES:· So the motion to terminate would be
`
`12· ·based on the estoppel statute.
`
`13· · · · · · JUDGE TROCK:· Okay.· Just wanted to keep them
`
`14· ·straight.
`
`15· · · · · · MS. HAYES:· Yes.· Understood.
`
`16· · · · · · JUDGE TROCK:· Okay.· So somebody had asked to
`
`17· ·intervene.· Go ahead.
`
`18· · · · · · MR. KUSHAN:·
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