`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`UNIFIED PATENTS, LLC
`Petitioner
`
`v.
`
`MEMORYWEB, LLC
`Patent Owner
`
`
`
`IPR2021-01413
`U.S. Patent 10,621,228
`
`
`
`
`PETITIONER’S REPLY IN SUPPORT OF ITS MOTION TO EXPUNGE
`
`
`
`
`I.
`
`Introduction
`
`IPR2021-01413
`U.S. Patent 10,621,228
`
`
`The Board should grant Petitioner’s motion to expunge once all rehearings
`
`and appeals are exhausted in this case.
`
`The parties agree that the Board should expunge the documents identified in
`
`Petitioner’s motion (Paper 73) for the reasons set forth therein. See also Paper 78
`
`(PO’s Opposition, not contesting the merits). The parties also agree that the Board
`
`should not expunge those documents until all rehearings and appeals are exhausted
`
`in this case. Paper 73 at 1; Paper 78 at 1.
`
`Patent Owner, however, asks the Board to wait until two other cases are also
`
`completed—effectively contending that Patent Owner should be able to use
`
`Petitioner’s confidential information in those other cases in contravention of the
`
`agreed-upon Protective Order. Paper 78 at 1-2. Patent Owner does not point to any
`
`authority supporting its position.1
`
`The Board should not grant Patent Owner’s request and timely grant
`
`Petitioner’s Motion to Expunge.
`
`
`1 Patent Owner did not ask to modify the Protective Order, but if it had, the Board
`
`should deny the request. Petitioner willingly disclosed its confidential information
`
`in reliance on the agreed-upon Protective Order entered by the Board, and Patent
`
`Owner should be held to its agreed-upon obligations.
`
`
`
`1
`
`
`
`IPR2021-01413
`U.S. Patent 10,621,228
`
`II. The Board Should Expunge Once All Rehearings and Appeals In This
`Case Are Exhausted
`The Board should not delay expungement to allow Patent Owner to use
`
`Petitioner’s material in other cases. The Protective Order expressly forbids Patent
`
`Owner’s “use” of Petitioner’s protected information in any other cases. Paper 10,
`
`Appendix at 1, Exhibit A (“Protective Order”). In particular, Patent Owner’s counsel
`
`have affirmed that they “have read the Protective Order” and “will abide by its
`
`terms,” and “will use [Petitioner’s] confidential information only in connection with
`
`this proceeding and for no other purpose.” Protective Order at 1, Exhibit A.
`
`To be sure, Patent Owner and its outside counsel are forbidden from using
`
`Petitioner’s confidential information in any other case, including the Apple and
`
`Samsung IPRs (IPR2022-00031, IPR2022-00222), even if they do not disclose any
`
`of the information. See, e.g., Jazz Pharms., Inc. v. Amneal Pharms., LLC, No. 13-
`
`cv-391, 2016 U.S. Dist. LEXIS 61373, *5-*7 (D.N.J. Jan. 22, 2016) (finding
`
`violations of a protective order which required that confidential information be
`
`“used. . . solely for the purposes of this litigation” where a party used the knowledge
`
`of the contents from confidential documents to argue for discovery production in a
`
`different case); Errant Gene Therapeutics, LLC v. Sloan-Kettering Inst. for Cancer
`
`Research, No. 15-CV-2044, 2017 U.S. Dist. LEXIS 85962, *7-*9 (S.D.N.Y. June 5,
`
`
`
`2
`
`
`
`IPR2021-01413
`U.S. Patent 10,621,228
`
`2017) (finding a similar provision violated when party used confidential
`
`information, without disclosing it, to draft a complaint in a different case).
`
`Now having obtained Petitioner’s confidential information by agreeing to the
`
`Protective Order (Paper 10 at 1), Patent Owner’s counsel seeks to shed its agreed-
`
`upon obligations with the apparent intent to use and disclose Petitioner’s information
`
`in two other proceedings. Paper 78 at 1-2. Doing so would contravene the Protective
`
`Order and its purpose, i.e., assuring parties that their confidential information will
`
`not be misused. And here, Petitioner willingly disclosed its highly sensitive
`
`information in reliance on the parties’ agreed-upon order. Allowing Patent Owner to
`
`vitiate the parties’ agreement memorialized in the Protective Order would be unjust
`
`and would discourage future parties from voluntarily disclosing their confidential
`
`information.
`
`Patent Owner does not cite any authority supporting its request. Patent Owner
`
`cites Unified Patents Inc. v. Cellular Communications Equipment LLC et al.
`
`(IPR2018-00091, Paper 37) (“CCE”), but that case did not allow one party to use the
`
`other’s confidential information in other proceedings despite a provision forbidding
`
`such use. And unlike here, the information preserved indefinitely (but not made
`
`public) in CCE “relate[d] to a decision made by the Board.” CCE at 9. In contrast,
`
`Petitioner’s confidential information in this case is not related to any Board decision
`
`or Order. The Director vacated the RPI Order (Paper 56) and the portion of the final
`
`
`
`3
`
`
`
`IPR2021-01413
`U.S. Patent 10,621,228
`
`written decision referring to the Order. See Paper 74. Petitioner’s confidential
`
`information is now unrelated to the merits and all other findings in this proceeding.
`
`Patent Owner also argues that “this proceeding’s confidential record may be
`
`the only source” of relevant information in two other proceedings. Paper 78 at 2. Not
`
`so. The Board’s rules provide for timely discovery between parties, and when
`
`justified, third-party discovery via a motion to compel and application for a court-
`
`issued subpoena. 35 U.S.C. § 24; 37 C.F.R. § 42.52; CQV Co., Ltd. v. Merck Patent
`
`GMBH, PGR2021-00054, Paper 36 at 6 (Mar. 2, 2022) (“determine[ing] that any
`
`additional discovery sought from a real party-in-interest that is not a named party in
`
`the proceeding must be pursued in the same manner provided for seeking discovery
`
`from any other nonparty, i.e., by compelling such discovery pursuant to a subpoena
`
`issued by a United States District Court.”). Indeed, the Board has recognized as
`
`much in the two cases where Patent Owner seeks to use Petitioner’s confidential
`
`information—ordering MemoryWeb to request additional discovery. Apple Inc. v.
`
`MemoryWeb, LLC, IPR2022-00031, Paper 45 (June 15, 2023) and Samsung Elecs.
`
`Co., Ltd. v. MemoryWeb, LLC, IPR2022-00222, Paper 38 (June 15, 2023).
`
`At bottom, Patent Owner seeks to delay expungement for purposes that
`
`contravene the Protective Order. Patent Owner did not provide any viable basis for
`
`its requested delay. The Board should deny Patent Owner’s request.
`
`
`
`4
`
`
`
`III. Conclusion
`
`IPR2021-01413
`U.S. Patent 10,621,228
`
`
`Petitioner respectfully requests that the Board grant its Motion to Expunge
`
`after resolution of this proceeding, including rehearings and appeals (if any), and
`
`expunge Papers 13, 23, 29, 35, 52, 56, 58, 62, and 70, and Exhibits 1023-1025, 1029,
`
`2028, 2030, 2032-2034, and 2036. See Paper 73.
`
`Petitioner also respectfully renews its request that, if the Board denies
`
`Petitioner’s Motion to Expunge, that the Board do so without prejudice so Petitioner
`
`may file another Motion to Expunge if appropriate.
`
`
`
`Dated: June 27, 2023
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Ellyar Y. Barazesh/
`Ellyar Y. Barazesh
`Reg. No. 74,096
`Counsel for Petitioner
`
`
`
`
`
`5
`
`
`
`IPR2021-01413
`U.S. Patent 10,621,228
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on June 27, 2023 a copy of the foregoing
`
`PETITIONER’S REPLY IN SUPPORT OF ITS MOTION TO EXPUNGE was
`
`filed on P-TACTS and served via email directed to counsel of record for the patent
`
`owner at the following:
`
`Jennifer Hayes
`Nixon Peabody LLP
`300 South Grand Avenue, Suite 4100
`Los Angeles, CA 90071-3151
`jenhayes@nixonpeabody.com
`
`George Dandalides
`Nixon Peabody LLP
`70 West Madison, Suite 5200
`Chicago, IL 60602-4224
`gdandalides@nixonpeabody.com
`
`Matthew A. Werber
`Nixon Peabody LLP
`70 West Madison, Suite 5200
`Chicago, IL 60602-4224
`mwerber@nixonpeabody.com
`
`Dated: June 27, 2023
`
`Respectfully submitted,
`
`/Ashley F. Cheung/
`Ashley F. Cheung
`
`Paralegal
`Unified Patents, LLC
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
