U.S. Patent No. 10,621,228
`Patent Owner’s Response to Motion to Exclude
`IPR2021-01413
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`Paper No.
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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 EXCLUDE EVIDENCE
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`Patent Owner’s Response to Motion to Exclude
`IPR2021-01413
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`Paper No.
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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 EXCLUDE EVIDENCE
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`U.S. Patent No. 10,621,228
`Patent Owner’s Response to Motion to Exclude
`IPR2021-01413
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`MemoryWeb, LLC (“Patent Owner”) submits this Response to Petitioner’s
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`Motion to Exclude (Paper 44) filed by Unified Patents, LLC (“Petitioner” or
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`“Unified”).
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`I.
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`Factual Background
`Petitioner seeks to exclude Exhibits 2041, 2042, and 2045. Exhibits 2041 and
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`2042 show Cambridge English Dictionary entries for the terms “responsive,” and
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`“caus[ing].” Both terms are recited in limitations 1[b] and 1[l] of the ‘228 patent,
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`which are subject to claim construction disputes. See e.g., Paper 35, 2 – 8. Exhibit
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`2045 is a copy of U.S. Patent No. 11,061,524, a patent issued to Petitioner’s expert,
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`Dr. Benjamin B. Bederson. EX2046, 80:4-9
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`Patent Owner introduced and cross-examined Dr. Bederson regarding each of
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`the contested exhibits to test the opinions of Dr. Bederson’s Second declaration
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`(EX1038) submitted with Petitioner’s Reply. See e.g. EX2046, 52:7-25, 59:7-20,
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`79:18-80:2. While Patent Owner’s Sur-Reply does not explicitly cite to the contested
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`exhibits or offer them as substantive evidence, they were marked at Dr. Bederson’s
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`deposition and provide context for the testimony reflected in the transcript. Id. Thus,
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`Patent Owner submitted them with the Sur-Reply.
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`On October 17, 2022, Petitioner emailed the Board seeking leave to move to
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`strike each of Exhibits 2041-2045 and portions of the Sur-Reply or, alternatively,
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`1
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`U.S. Patent No. 10,621,228
`Patent Owner’s Response to Motion to Exclude
`IPR2021-01413
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`file a sur-sur reply. EX1040, 1-2. The Board declined to authorize a motion to strike
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`and authorized a sur-sur-reply instead. Id. Pursuant to the Board’s authorization,
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`Petitioner filed a sur-sur-reply. See Paper 42. Petitioner’s sur-sur-reply addressed
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`Exhibit 2043 (providing Dictionary.com entries for the term “caus[ing]”) and
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`Exhibit 2044 (a demonstrative depicting different types of views). Paper 42, 1-5.1
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`Having failed to receive authorization to move to strike the contested exhibits,
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`Petitioner now makes a second attempt in the form of a motion to exclude.
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`II.
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`Petitioner Has Not Met Its Burden
`The party moving to exclude bears the burden of proving “that it is entitled to
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`the requested relief.” See 37 C.F.R. § 42.20(c). Petitioner has not met its burden
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`here.
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`A.
`Petitioner’s Motion to Exclude Is Improper
`Having already tried (and failed) to receive authorization to move to strike the
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`contested exhibits, it is improper for Petitioner to seek equivalent relief in the form
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`of a motion to exclude here. See EX1040. Petitioner’s Motion primarily alleges a
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`procedural violation of 37 C.F.R. § 42.23(b) based on Patent Owner allegedly
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`1 While the Board’s authorization expressly referenced “Exhibits 2041-2045”
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`Petitioner declined to address Exhibits 2041, 2042, and 2045 in the sur-sur-reply.
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`2
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`U.S. Patent No. 10,621,228
`Patent Owner’s Response to Motion to Exclude
`IPR2021-01413
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`providing “new evidence.” Paper 44, 1-4. The Consolidated Trial Practice Guide
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`instructs parties to address alleged procedural violations of this nature by requesting
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`“authorization to file a motion to strike.” Consolidated Trial Practice Guide, 80; see
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`Ascend Performance Operations LLC v. Samsung SDI Co., IPR2020-00349, Paper
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`53, 12 (July 15, 2021) (“We agree … [that] objections to the late-filed exhibits
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`should have been brought as a motion to strike, instead of a motion to exclude”).
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`As instructed by the Consolidated Trial Practice Guide, Petitioner sought
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`authorization to move to strike. EX1040, 1-2. Petitioner’s email request identified
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`each of “Exhibits 2041-2045” and asserted the same violation of “37 C.F.R.
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`42.23(b)” alleged in the Motion to Exclude. Id., 2; Paper 44, 1-4. After considering
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`Petitioner’s request, the Board declined to authorize a motion to strike. Instead, the
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`Board authorized a sur-sur reply, which Petitioner prepared and filed. EX1040, 1;
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`see Paper 42. Petitioner’s Motion to Exclude does not explain why Petitioner should
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`be permitted to seek relief in the form of a motion to exclude, when authorization to
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`move to strike the same exhibits has already been denied.
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`B.
`37 C.F.R. § 42.23(b) Does Not Mandate Exclusion
`Petitioner claims the contested exhibits are subject to a “blanket prohibition”
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`under Rule 42.23(b) because they are “not deposition transcripts.” Paper 44, 2. The
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`Board, however, has not always applied Rule 42.23(b) in the manner suggested by
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`3
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`U.S. Patent No. 10,621,228
`Patent Owner’s Response to Motion to Exclude
`IPR2021-01413
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`Petitioner. For example, the Board has allowed exhibits “used during cross-
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`examination . . . for the limited purpose of allowing the Board to understand the
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`context of the cross-examination.” See e.g. Edwards Lifesciences Corp. v.
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`Cardiovalve Ltd., No. IPR2021-00383, 2022 WL 2812478, Paper 60 at 87 (July 18,
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`2022) (“allowing exhibits to be used in this manner merely allows them to be used
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`as an adjunct to reading and understanding the deposition transcript”); see also
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`Ascend, IPR2020-00349, Paper 53 at 12 (“if exhibits are introduced during a
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`deposition for the purposes of testing the witness’ testimony, a party should be able
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`to submit those exhibits with the transcript, so the Board has the full context
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`available in order to evaluate the testimony”).
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`Petitioner filed the contested exhibits for this same “limited purpose” here.
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`Edwards, No. IPR2021-00383, Paper 60 at 87. For this reason, Intel Corp. v.
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`Parkervision, Inc., relied on by Petitioner, is inapplicable. IPR2020-01265, Paper
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`44, 74 (Jan. 21, 2022). In Intel Corp., the disputed exhibit was “used by Patent
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`Owner to raise new arguments” also excluded by the Board. Id.; Paper 44, 2. These
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`circumstances are not present here. Netflix v. Divx, and Hamilton Technologies LLC
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`v. Tehrani, also cited by Petitioner, similarly concern exhibits substantively relied
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`on in sur-reply briefs. IPR2020-00511, Paper 46, 54-55 (Aug. 13, 2021); No.
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`IPR2020-01199, Paper 57, 53 (Dec. 28, 2021); Paper 44, 2. Further, none of
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`4
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`U.S. Patent No. 10,621,228
`Patent Owner’s Response to Motion to Exclude
`IPR2021-01413
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`Petitioner’s cited cases involve a movant who had previously received authorization
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`for a sur-sur-reply upon requesting a motion to strike.
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`C.
`Petitioner Faces No Undue Prejudice
`Petitioner has also failed to articulate any undue prejudice if the contested
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`exhibits are allowed. To address alleged prejudice relating to Exhibits 2041-2045,
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`the Board authorized a sur-sur-reply, which Petitioner prepared and filed. EX1040,
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`Paper 42, Having been granted that opportunity, Petitioner can hardly claim
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`prejudice here.
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`Petitioner’s cited authorities are distinguishable for this reason as well. For
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`example, Netflix noted that the petitioner did not “have an opportunity to respond to
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`new evidence provided with Patent Owner’s Sur-reply” but that is not the case here.
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`IPR2020-00511, Paper 46, 55; see also Intel Corp., IPR2020-01265Paper 44, 74
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`(noting “Petitioner lacks an opportunity to respond to new evidence submitted with
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`a sur-reply”)
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`D.
`Petitioner’s Arguments Regarding FRE 401 – 403 Lack Merit
`Petitioner concludes by arguing that the contested exhibits are irrelevant and
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`therefore inadmissible under FRE 401-403. Petitioner is incorrect. As explained
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`above, Patent Owner submitted the disputed exhibits to provide context for Dr.
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`Bederson’s deposition testimony.
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`5
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`U.S. Patent No. 10,621,228
`Patent Owner’s Response to Motion to Exclude
`IPR2021-01413
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`Further, these exhibits are relevant to claim construction. Exhibits 2041 and
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`2042 are Cambridge English Dictionary entries for the disputed claim terms
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`“responsive” and “caus[ing].” See e.g., Paper 35, 2-8 (limitations 1[b] and 1[l] of the
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`‘228 patent). Exhibit 2045 provides a copy of Dr. Bederson’s recently issued ‘524
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`patent. EX2046, 80:4-11. When cross examined regarding claim language recited in
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`claim 1 of his ‘524 patent (issued July 13, 2021), Dr. Bederson testified that he was
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`unable to respond substantively because he hadn’t “even read the claim.” EX2046,
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`91:1. For at least these reasons, the contested exhibits are relevant to the issue of this
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`proceeding.
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`Finally, the Board rarely excludes exhibits under FRE 401-403. Instead, the
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`Board typically “considers any objections under Rules 401 and 403 as going to
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`weight, rather than admissibility.” Club Champion LLC v. True Spec Golf LLC,
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`IPR2019-01148, Paper 87, 67 (Dec. 2, 2020).
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`III. Conclusion
`For at least the foregoing reasons, the Motion to Exclude should be denied.
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`U.S. Patent No. 10,621,228
`Patent Owner’s Response to Motion to Exclude
`IPR2021-01413
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`Respectfully submitted,
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`Dated: December 1, 2022
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`
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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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`U.S. Patent No. 10,621,228
`Patent Owner’s Response to Motion to Exclude
`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 Exclude filed therewith was served on December 1, 2022,
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`upon the following parties via electronic service:
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`ellyar@unifiedpatents.com
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`michelle@unifiedpatents.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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