Director PTABDecision Review@uspto.gov
`571.272.7822
`
`Paper 76
`Date: May 22, 2023
`
`PUBLIC VERSION
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE OFFICE OF THE UNDER SECRETARY OF COMMERCE
`FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`UNIFIED PATENTS, LLC,
`Petitioner,
`v.
`MEMORYWEB, LLC,
`Patent Owner.
`
`IPR2021-01413
`Patent 10,621,228 B2
`
`
`
`Before KATHERINE K. VIDAL, Under Secretary of Commerce for
`Intellectual Property and Director of the United States Patent and
`Trademark Office.
`
`DECISION
`Granting Director Review,
`Vacating-in-part the Final Written Decision and Vacating Board Order
`
`
`
`
`
`
`
`
`571.272.7822
`
`Paper 76
`Date: May 22, 2023
`
`PUBLIC VERSION
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE OFFICE OF THE UNDER SECRETARY OF COMMERCE
`FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`UNIFIED PATENTS, LLC,
`Petitioner,
`v.
`MEMORYWEB, LLC,
`Patent Owner.
`
`IPR2021-01413
`Patent 10,621,228 B2
`
`
`
`Before KATHERINE K. VIDAL, Under Secretary of Commerce for
`Intellectual Property and Director of the United States Patent and
`Trademark Office.
`
`DECISION
`Granting Director Review,
`Vacating-in-part the Final Written Decision and Vacating Board Order
`
`
`
`
`
`
`
`
`
`PUBLIC VERSION
`
`IPR2021-01413
`Patent 10,621,228 B2
`
`
`INTRODUCTION
`I.
`The Office received a request for Director Review of the Final
`Written Decision (Paper 58 (confidential) and Paper 67 (public) (“Decision”
`or “Final Written Decision”)) for the above-captioned case. See Paper 70
`(confidential); Ex. 3100. Petitioner Unified Patents, LLC (“Unified”)
`requests Director Review of the Board’s real party in interest (“RPI”)
`determination in Section I.B. of the Decision that incorporates the Board’s
`Order Identifying Real Party in Interest (Paper 56 (confidential) (“RPI
`Order”)). Ex. 3100.
`I have reviewed the request, the Board’s Decision, the RPI Order, and
`the relevant filed papers and exhibits in the above-listed proceeding. I
`determine that Director Review of the Board’s Decision is appropriate. See
`Interim process for Director Review § 8 (setting forth scope of Director
`Review) and § 10 (issues that may warrant Director Review). Concurrent
`with this Decision, the Precedential Opinion Panel (“POP”) dismissed
`Petitioner’s additional requests for rehearing and POP review of the RPI
`Order. See Paper 62, Ex. 3001.
`For the reasons set forth below, I vacate the Board’s RPI discussion in
`the Final Written Decision (Section I.B.), and the RPI Order (Paper 56)
`underlying that discussion.
`BACKGROUND
`II.
`Unified filed a Petition requesting inter partes review of claims 1–7 of
`U.S. Patent No. 10,621,228 B2 (Ex. 1001, “the ’228 Patent”), certifying that
`it “is the real party-in-interest.” Paper 2 (“Petition” or “Pet.”), 1. Although
`Unified and Patent Owner MemoryWeb LLC (“MemoryWeb”) briefed and
`argued, pre-institution, whether Unified should have named third parties
`
`2
`
`
`
`PUBLIC VERSION
`
`IPR2021-01413
`Patent 10,621,228 B2
`
`Apple and Samsung as RPIs under 35 U.S.C. § 312(a)(2), the Board
`“decline[d] to determine whether Apple and Samsung are real parties in
`interest” in its Institution Decision because the Board found that “there is no
`allegation in this proceeding of a time bar or estoppel based on an unnamed
`RPI.” Paper 15, 13–14 (“Institution Decision”) (citing Paper 11, 1)
`(emphasis added). Accordingly, the Board did “not address whether Apple
`and Samsung are unnamed RPIs because, even if either were, it would not
`create a time bar or estoppel under 35 U.S.C. § 315.” Id. at 13 (citing
`SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11, 18
`(PTAB Oct. 6, 2020) (precedential)). The Board instituted inter partes
`review as to all challenged claims on all grounds raised in the Petition.
`Following institution, MemoryWeb again argued that the Board
`should terminate this proceeding because of Unified’s alleged failure to
`name Apple and Samsung as RPIs. See Decision 4 (citing Paper 23, 14–26
`(“Patent Owner’s Response” or “PO Resp.”) (confidential)). MemoryWeb
`argued that, “[a]lternatively, the Board should find that Apple and Samsung
`are estopped from challenging the validity of claims 1–7 of the ’228 patent
`in” IPR2022-00031 (as to Apple) and IPR2022-00222 (as to Samsung). Id.
`(quoting PO Resp. 14–15). Unified and MemoryWeb submitted briefing on
`the RPI issue, and provided additional evidence as Exhibits 1030–1043 and
`2027–2047. See Paper 29, 22–34 (Petitioner’s Reply) (confidential);
`Paper 30 (public); Paper 35, 23–27 (Patent Owner’s Sur-Reply)
`(confidential). The Board held a confidential hearing on the RPI issue. See
`Paper 52 (confidential transcript); Paper 53 (public transcript).
`Following the post-institution briefing, submission of additional
`evidence, and confidential hearing, the Board issued an Order identifying
`
`3
`
`
`
`PUBLIC VERSION
`
`IPR2021-01413
`Patent 10,621,228 B2
`
`Apple and Samsung as RPIs. See Decision 5 (incorporating RPI Order).
`The Board determined that it was appropriate to decide whether Apple and
`Samsung are RPIs in this proceeding “[b]ecause the issue of Section 315(e)
`estoppel has been put before us [as relevant to the subsequent IPR
`challenges filed by Apple and Samsung], and we now have a complete
`factual record available to fully address the RPI question, and to avoid
`unnecessary prejudice to Patent Owner.” RPI Order 6.
`III. DISCUSSION
`In the RPI Order, the Board held “if we do not decide the RPI issue
`now, as Patent Owner urges, then the underlying purpose of Section 315(e)
`would potentially be frustrated. Determining whether Apple or Samsung are
`RPIs in this case is a necessary precursor to determining whether they would
`be estopped in [] subsequent proceeding[s].” RPI Order 6. Absent an RPI
`determination, “Patent Owner may have to continue to unnecessarily defend
`against two subsequent IPR challenges filed by Apple and Samsung should
`they have been named as RPIs in this case.” Id.
`The precedential SharkNinja decision held that it best serves the
`Office’s interests in cost and efficiency to not resolve an RPI issue when “it
`would not create a time bar or estoppel under 35 U.S.C. § 315” in that
`proceeding. SharkNinja, Paper 11, 18. SharkNinja further acknowledged
`that patent owners “should not be forced to defend against later judicial or
`administrative attacks on the same or related grounds by a party that is so
`closely related to the original petitioner as to qualify as a real party in
`interest,” but held that was not the case before the Board. Id. at 20 (quoting
`Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1350 (Fed.
`Cir. 2018)).
`
`4
`
`
`
`PUBLIC VERSION
`
`IPR2021-01413
`Patent 10,621,228 B2
`
`
`Petitioner contends that SharkNinja’s reasoning should apply here,
`where neither a time bar nor estoppel applies in this proceeding. See
`Paper 70, 3. Accordingly, Petitioner contends “the panel erred by issuing a
`non-binding advisory opinion” on RPI, which prejudices Apple and
`Samsung by “prejudg[ing] the RPI issue without their participation,” where
`that determination could bind Apple and Samsung in their subsequently-filed
`proceedings. See id.
`The Board can and should make a determination of the real parties in
`interest or privity in any proceeding in which that determination may impact
`the underlying proceeding, for example, but not limited to, a time bar under
`35 U.S.C. § 315(b) or an estoppel under 35 U.S.C. § 315(e) that might
`apply. That is not the situation here. The Board should not have determined
`whether Apple and Samsung are RPIs in this proceeding given that
`determination was not necessary to resolve the proceeding.
`Accordingly, I vacate the Board’s RPI determination in the Final
`Written Decision (pages 3–5, Section I.B.) and the Board’s RPI Order,
`Paper 56, on which the Final Written Decision’s RPI determination is based.
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Board’s real party in interest determination in the
`Final Written Decision (Section I.B.) is vacated; and
`FURTHER ORDERED that the Board’s Order Identifying Real Party
`in Interest (Paper 56) is vacated.
`
`
`
`
`5
`
`
`
`PUBLIC VERSION
`
`IPR2021-01413
`Patent 10,621,228 B2
`
`PETITIONER:
`Jonathan Strang
`LATHAM & WATKINS LLP
`jonathan.strang@lw.com
`
`Michelle Aspen
`Roshan Mansinghani
`Ellyar Barazesh
`UNIFIED PATENTS, LLC
`michelle@unifiedpatents.com
`roshan@unifiedpatents.com
`ellyar@unifiedpatents.com
`
`
`PATENT OWNER:
`Jennifer Hayes
`George Dandalides
`NIXON PEABODY LLP
`jenhayes@nixonpeabody.com
`gdandalides@nixonpeabody.com
`
`6
`
`
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