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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
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`v.
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`MEMORYWEB, LLC
`Patent Owner
`____________
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`Case No. IPR2021-01413
`Patent 10,621,228
` ____________
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`PETITIONER’S REPLY TO PATENT OWNER’S OPPOSITION TO
`MOTION TO EXCLUDE
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`IPR2021-01413
`U.S. Patent 10,621,228
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`As Petitioner’s Motion to Exclude (Paper 44) explained, Exhibits 2041, 2042,
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`and 2045—which were not cited by Patent Owner or Petitioner in the briefing of this
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`proceeding—should be excluded. Nothing in Patent Owner’s opposition (Paper 45)
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`changes this conclusion.
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`Patent Owner suggests that Petitioner must explain why it is “permitted to
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`seek relief in the form of a motion to exclude.” Paper 45, 3. However, no explanation
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`is needed; no prior authorization is required for motions to exclude, which are
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`different from motions to strike. See Scheduling Order (Paper 16), 10 (“Either party
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`may file a motion to exclude evidence (37 C.F.R. § 42.64(c))”). Further, while
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`Petitioner was authorized a sur-sur reply to respond to portions of the sur-reply
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`relying on Exhibits 2043 and 2044 (not subject to this motion), Petitioner could not
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`respond to Exhibits 2041, 2042, and 2045 because Patent Owner never cited to them
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`or Dr. Bederson’s testimony about them in its sur-reply. These exhibits should be
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`excluded, at least to preclude new arguments during the hearing.
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`I. PETITIONER’S MOTION TO EXCLUDE IS PROPER
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`Patent Owner states that in view of the Trial Practice Guide (“TPG”) and
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`Ascend Performance Operations LLC v. Samsung SDI Co. (IPR2020-00349)
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`(“Ascend”), the relief Petitioner requested in its Motion to Exclude is improper
`1
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`IPR2021-01413
`U.S. Patent 10,621,228
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`because it should have been brought via a Motion to Strike. Paper 45, 2-3. Patent
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`Owner conflates the two motions. Motions to Exclude are the correct avenue to
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`address evidence filed (including evidence filed but not cited) with a Patent Owner’s
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`sur-reply pursuant to 37 C.F.R. § 42.23(b). See, e.g., Netflix v. Divx, IPR2020-00511,
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`Paper 46, 54-56 (PTAB Aug. 13, 2021); Netflix, Inc. v. DivX, LLC, IPR2020-00558,
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`Paper 50, 32-36 (PTAB Aug. 23, 2021; Intel Corp. v. Parkervision, Inc., IPR2020-
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`01265, Paper 44, 74-75 (PTAB Jan. 21, 2022); Hamilton Techs. LLC v. Fleur
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`Tehrani, IPR2020-01199, Paper 57, 51-54 (PTAB Dec. 28, 2021) (all cases granting
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`Motions to Exclude evidence filed with a Patent Owner’s sur-reply pursuant to 37
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`C.F.R. § 42.23(b)).
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`II.
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`37 C.F.R. § 42.23(b) MANDATES EXCLUSION
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`Patent Owner relies on Edwards Lifesciences Corp. v. Cardiovalve Ltd.
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`(IPR2021-00383) (“Edwards”) and Ascend to assert the Board “has not always
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`applied Rule 42.23(b) in the manner suggested by Petitioner” and “has allowed
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`exhibits ‘used during cross-examination…for the limited purpose of allowing the
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`Board to understand the context of the cross-examination.’” Paper 45, 3-4. This
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`reliance is misplaced for at least two reasons.
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`2
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`IPR2021-01413
`U.S. Patent 10,621,228
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`First, unlike in Edwards and Ascend, neither Dr. Bederson testimony related
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`to Exhibits 2041, 2042, and 2045, nor the exhibits themselves were ever cited in the
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`sur-reply. Edwards, IPR2021-00383, Paper 39, 1; Ascend, IPR2020-00349, Paper
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`38, 10. This is exactly the kind of scenario to which § 42.23(b) applies.
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`Second, Exhibits 2041, 2042, and 2045 do not provide the Board with
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`understanding of the context of Dr. Bederson’s cross examination testimony because
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`during Dr. Bederson’s reply deposition, where these exhibits were first introduced
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`by Patent Owner, he testified that he had not seen these exhibits before in this
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`proceeding and was not familiar with them. EX2046, 190:3-12; see Netflix,
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`IPR2020-00511, Paper 46, 52–55 (granting motion to exclude, finding exhibits did
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`not provide context as the declarant testified he had not seen them before); see also
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`Netflix, IPR2020-00558, Paper 50, 32-36. Edwards and Ascend are distinguishable
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`because in those proceedings no such testimony regarding the declarant’s knowledge
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`of the exhibits at issue was brought to the Board’s attention. Edwards, Paper 39;
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`Ascend, Paper 38, Paper 47. Exhibits 2041, 2042, and 2045 were not reliable to test
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`Dr. Bederson’s opinions and, therefore, should be excluded.
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`3
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`III. PETITIONER FACES UNDUE PREJUDICE
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`IPR2021-01413
`U.S. Patent 10,621,228
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`Patent Owner states “Petitioner can hardly claim prejudice here” because it
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`was authorized and filed a sur-sur reply to address portions of Patent Owner’s sur-
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`reply that relied on Exhibits 2043 and 2044, those of Exhibits 2041-2045 that Patent
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`Owner relied on in its sur-reply. Paper 45, 5; Paper 42, 1-5. But Patent Owner’s
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`statement is belied by another part of its opposition, which asserts for the first time
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`in this proceeding that exhibits 2041, 2042, 2045—exhibits Petitioner could not
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`address in its sur-sur reply because they were not relied on by Patent Owner in Patent
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`Owner’s sur-reply—are “relevant to claim construction” regarding “disputed claim
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`terms” and reflect on Dr. Bederson.1 Paper 45, 5-6. By not having the opportunity to
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` Exhibit 2045, a patent that issued over a year ago listing Dr. Bederson as an
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` 1
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`inventor, is irrelevant to this proceeding. Patent Owner disingenuously states Dr.
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`Bederson “was unable to respond substantively because he hadn’t ‘even read the
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`claim’” of the patent. Paper 45, 6; EX2046, 79:18-80:2, 81:9-11. But Dr. Bederson
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`testified that Exhibit 2045 was “not something that I have read in many years and I
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`have not considered this claim in a long time.” EX2046, 88:15-19, 90:3-5.
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`4
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`IPR2021-01413
`U.S. Patent 10,621,228
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`address exhibits 2041, 2042, and 2045 or Dr. Bederson’s deposition testimony
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`associated with them, Petitioner faces undue prejudice. Patent Owner had every
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`opportunity to (1) question Dr. Bederson regarding these exhibits during his first
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`deposition, (2) file these exhibits with its Patent Owner’s Response and substantively
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`discuss them there, or (3) substantively discuss these exhibits in its sur-reply, in
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`which case Petitioner would have at least had the possibility of addressing them in
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`the sur-sur reply. Patent Owner did none of this and instead raised new arguments
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`about them for the first time in its opposition. Paper 45, 5-6.
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`Exhibits 2041, 2042, and 2045 should be excluded to prevent Patent Owner
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`from presenting its improper new arguments. Allowing Exhibits 2041, 2042, and
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`2045 to bear on this proceeding would allow Patent Owner to have raised
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`“completely new evidence during a deposition” and “introduce that evidence into
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`the record with a sur-reply,” which “depriv[][es]” Petitioner “the opportunity to fully
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`address that evidence,” the very situation Ascend sought to avoid. IPR2020-00349,
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`Paper 53, 12. Thus, Petitioner faces undue prejudice if Exhibits 2041, 2042, and
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`2045 are not excluded.
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`5
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`IPR2021-01413
`U.S. Patent 10,621,228
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`IV. EXHIBITS 2041, 2042, AND 2045 SHOULD BE EXCLUDED UNDER
`THE FEDERAL RULES OF EVIDENCE (“FRE”) 401-403
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`As explained, Exhibits 2041, 2042, and 2045 do not provide context for Dr.
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`Bederson’s testimony and are not relied upon, even indirectly, in the parties’ briefs.
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`Supra, 3. Accordingly, these exhibits are irrelevant and should be excluded under
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`FRE 401-403. And Patent Owner’s statement that “the Board rarely excludes
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`exhibits under FRE 401-403” is undercut by Ascend, which granted a motion to
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`exclude exhibits which were “never relied upon.” Ascend, IPR2020-00349, Paper
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`53, 13 (PTAB July 15, 2021); see also SK Innovation Co.., Ltd., v. Celgard, LLC,
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`IPR2014-00679, Paper 58, 49 (PTAB Sept. 25, 2015) (excluding exhibits that Patent
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`Owner did not rely on as irrelevant under FRE 401 and 402); Shimano Inc., v.
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`Globeride, Inc., IPR2015-00273, Paper 40, 27-28 (PTAB June 16, 2016).
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`V. CONCLUSION
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`For at least the foregoing reasons, Exhibits 2041, 2042, and 2045 should be
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`excluded.
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`Date: December 6, 2022
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`Respectfully submitted,
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`/Ellyar Y. Barazesh/
`Ellyar Y. Barazesh
`Reg. No. 74,096
`Counsel for Petitioner
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`6
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`CERTIFICATE OF SERVICE
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`IPR2021-01413
`U.S. Patent 10,621,228
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`The undersigned hereby certifies
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`that a copy of
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`the
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`foregoing
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`PETITIONER’S REPLY TO PATENT OWNER’S OPPOSITION TO MOTION
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`TO EXCLUDE was served on December 6, 2022, via electronic mail, as agreed to
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`by counsel, upon the following counsel for Patent Owner:
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`
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`Jennifer Hayes
`Nixon Peabody LLP
`300 South Grand Avenue, Suite 4100
`Los Angeles, CA 90071-3151
`jenhayes@nixonpeabody.com
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`George Dandalides
`Nixon Peabody LLP
`70 West Madison, Suite 5200
`Chicago, IL 60602-4224
`gdandalides@nixonpeabody.com
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`Matthew A. Werber
`Nixon Peabody LLP
`70 West Madison, Suite 5200
`Chicago, IL 60602-4224
`mwerber@nixonpeabody.com
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`Date: December 6, 2022
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`/Ashley F. Cheung/
`Ashley F. Cheung
`Paralegal
`Unified Patents, LLC
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