`Patent Owner’s Opposition to Motion to Expunge
`IPR2021-01413
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`Paper No.
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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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`UNIFIED PATENTS, LLC
`Petitioner
`v.
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`MEMORYWEB, LLC
`Patent Owner
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`Patent No. 10,621,228
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`Inter Partes Review No. IPR2021-01413
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`PATENT OWNER’S OPPOSITION TO MOTION TO EXPUNGE
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`U.S. Patent No. 10,621,228
`Patent Owner’s Opposition to Motion to Expunge
`IPR2021-01413
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`I.
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`Introduction
`Petitioner’s motion to expunge (Paper 73) requests that the Board expunge
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`information in the confidential record relating to whether Apple and Samsung are
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`real parties in interest (“RPIs”). Both parties agree that the Board should defer ruling
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`on Petitioner’s motion to expunge (Paper 73) so the record remains intact pending
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`resolution of any rehearing requests and appeals for the present proceeding.
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`However, the Board should deny Petitioner’s motion to expunge (Paper 73) because
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`it contemplates expunging relevant materials prior to resolution of rehearing requests
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`and appeals for related proceedings initiated by Apple (IPR2022-00031) and
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`Samsung (IPR2022-00222), (collectively the “Related Proceedings”). In other
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`words, the confidential record should be preserved pending resolution of any
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`rehearing requests and appeals for not only the present proceeding, but also the
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`Related Proceedings.
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`II. Discussion
`Information in the confidential record of this proceeding may be highly
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`relevant to the Related Proceedings, as the parties are presently litigating the RPI
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`and estoppel issues in those proceedings. See, Paper 56, p. 5 (Director decision
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`vacating the Board’s RPI decision and holding the Board “can and should make a
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`determination of the real parties in interest or privity” in the Related Proceedings).
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`However, at this time there is considerable uncertainty as to whether any portions of
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`U.S. Patent No. 10,621,228
`Patent Owner’s Opposition to Motion to Expunge
`IPR2021-01413
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`the confidential record can be inspected and/or discovered in the Related
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`Proceedings. See, IPR2022-00031, Ex. 3004 at p. 3 (Unified objecting to Apple and
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`Samsung’s inspection of the confidential record in the present proceeding).
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`Thus, the possibility exists that this proceeding’s confidential record may be
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`the only source of certain information highly relevant to issues arising in relation to
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`rehearing requests and appeals in the Related Proceedings. Petitioner’s motion
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`makes no attempt to address these concerns. Thus, the Board should deny
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`Petitioner’s motion to ensure the confidential record is preserved during the
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`pendency of these related proceedings (including appeals). See e.g., Unified Patents
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`Inc. v. Cellular Communications Equipment LLC et al, IPR2018-00091, Paper 37,
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`p. 9 (noting “it is it is prudent to retain [RPI related] details in the record as they may
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`be relevant to future related proceedings, albeit in the confidential record”).
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`III. Conclusion
`For these reasons, the Board should deny Petitioner’s motion to expunge
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`(Paper 73) so the record remains intact pending resolution of any rehearing requests
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`and appeals for not only the present proceeding, but also the Related Proceedings.
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`U.S. Patent No. 10,621,228
`Patent Owner’s Opposition to Motion to Expunge
`IPR2021-01413
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`Respectfully submitted,
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`Dated: May 30, 2023
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`By: /Jennifer Hayes/
`Jennifer Hayes
`Reg. No. 50,845
`Nixon Peabody LLP
`300 South Grand Avenue,
`Suite 4100,
`Los Angeles, CA 90071-3151
`Tel. 213-629-6179
`Fax 866-781-9391
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`3
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`U.S. Patent No. 10,621,228
`Patent Owner’s Opposition to Motion to Expunge
`IPR2021-01413
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Patent Owner’s
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`Opposition to Motion to Expunge was served on May 30, 2023, upon the following
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`parties via electronic service:
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`ellyar@unifiedpatents.com
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`michelle@unifiedpatents.com
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`jonathan.strang@lw.com
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`roshan@unifiedpatents.com
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`Counsel for Petitioner, Unified Patents, LLC
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`By:
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`/s/ Jennifer Hayes
`Lead Counsel for Patent Owner
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`1
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