Strang, Jonathan (DC)
`From:
`Karl Renner <renner@fr.com>
`Sent:
`Friday, April 7, 2023 8:32 PM
`To:
`Trials
`Cc:
`Kushan, Jeffrey P.; Strang, Jonathan (DC); Hayes, Jennifer; Christopher, Angelo;
`ellyar@unifiedpatents.com; michelle@unifiedpatents.com; roshan@unifiedpatents.com; Rosen,
`Lauren (LA); Werber, Matthew; Girgis, Diana; Broughan III, Thomas A.; Reid, Christine; Sidley Apple v.
`MemoryWeb IPRs; Jeremy Monaldo; Hyun Jin In; jonathan@unifiedpatents.com; Mahoney, Matthew;
`Karl Renner; Schwartz, Daniel
`IPR2021-01413; IPR2022-00031; IPR2022-00222 (USP 10,621,228)
`
`Subject:
`
`Your Honors,
`
`Pursuant to the Board’s direction on the March 31, 2023 conference call, the parties submit this joint email.
`
`The parties to all three IPRs agree in principle that a Protective Order with sufficient attorneys’ eyes only (“AEO”)
`protections would provide sufficient protection for Unified Patents, LLC’s (“Unified’s”) confidential information. Apple
`and Samsung desire “inspection” of the confidential record in Unified’s IPR by Apple and Samsung counsel. That said,
`the parties do not agree that the Board’s rules allow counsel of non-parties, Apple and Samsung, to “inspect” the
`confidential record in Unified’s IPR.
`
`Notably, the parties to all three IPRs (IPR2021-01413, IPR2022-00031, and IPR2022-00222) agree that this entire exercise
`would be moot if the Board were to grant the rehearing requested by Unified and vacate the order concerning real
`parties in interest in the Unified IPR. (MemoryWeb, of course, does not agree that the Board should grant the rehearing
`request; MemoryWeb further does not agree that the Board should vacate the order.)
`
`The parties respectfully request a follow-up conference with the Board to discuss the conduct of each of the proceedings
`once the Board has considered the information provided by this communication.
`
`MemoryWeb’s Position
`Subject to authorization from the Board, MemoryWeb is prepared to proceed with its contemplated motions to
`terminate in the Apple and Samsung proceedings (IPR2022-00031 and IPR2022-00222), as the Board has already decided
`that Apple and Samsung are RPIs to the Unified IPR. MemoryWeb understands Apple and Samsung are requesting
`access to confidential materials from the Unified IPR prior to any briefing but takes no position on the disputes between
`Unified and Apple and Samsung regarding confidentiality.
`
`MemoryWeb disagrees with Apple and Samsung’s contention that the alleged waiver issue should be considered prior to
`MemoryWeb’s motions to terminate. To the extent Apple and/or Samsung wish to argue waiver, MemoryWeb proposes
`that they do so in their oppositions to MemoryWeb’s motions to terminate.
`
`In light of the unique circumstances and lack of precedent addressing these procedural issues, MemoryWeb agrees that
`good cause exists for extending the one-year statutory deadlines in the Apple and Samsung proceedings.
`
`MemoryWeb received Samsung’s position and believes it inappropriately advances substantive arguments that go
`beyond the scope of the Board’s request. Nevertheless, MemoryWeb endeavors to respond and reserves the right to
`address Samsung’s arguments more fully in an appropriate procedural context.
`
`1
`
`IPR2022-00031
`Ex. 3002
`
`

`

`First, Samsung argues that MemoryWeb must prove a negative – no waiver – prior to receiving authorization to file its
`motion to terminate. There was no waiver and there is no requirement that MemoryWeb disprove Samsung’s (or
`Apple’s) waiver defense prior to receiving authorization for its motions. As stated above, Samsung and Apple may raise
`waiver in their oppositions if they so choose. And contrary to Samsung’s assertion below, MemoryWeb did advance
`argument on the RPI/estoppel issues in the Samsung proceeding. See, e.g., POR at 64-66; POSR at 33.
`
`
`Second, Samsung also argues that MemoryWeb must submit evidence in the Samsung proceeding that Samsung is an
`RPI to the Unified IPR. MemoryWeb disagrees: the Board properly resolved the RPI issue in the Unified IPR. Alternatively,
`in the event the Board determines (1) evidence of Samsung/Apple’s RPI status must be entered in the Samsung/Apple
`proceeding and (2) a discovery order is necessary to obtain that information, MemoryWeb requests leave to take that
`discovery.
`
`
`Apple’s Position
`Apple believes that due process demands that it be informed of the basis of the Board’s determination that it is a real-
`party-in-interest of Unified in the Unified proceeding (IPR2021-01413). To gain that understanding, Apple believes it
`would be appropriate to permit it’s outside counsel to inspect the record in the Unified IPR proceeding that bears on the
`RPI issue, including both evidence and papers. Apple further believes that this inspection of the record by outside
`counsel should occur immediately to enable Apple to determine how best to protect its interests in IPR2022-00031 and
`other matters.
`
`
`Apple believes the Board has the authority to permit outside counsel for Apple to inspect the record of evidence and the
`papers within the Unified IPR proceeding under 35 U.S.C. 315(d), as all three proceedings concern the same
`patent. Apple further believes the Board has the authority under § 315(d) and under 37 C.F.R. § 42.5 to “determine a
`proper course of conduct in a proceeding for any situation not specifically covered” and “may waive or suspend a
`requirement of parts 1, 41, and 42 and may place conditions on the waiver or suspension.” Apple opposes additional
`discovery in IPR2022-00031 on the RPI issue, as it is untimely and has been waived by MemoryWeb.
`
`
`Apple believes the RPI issue raised in IPR2021-01413 and the RPI issue MemoryWeb is attempting to belatedly raise in
`IPR2022-00031 would both be rendered moot if the Board were to grant the rehearing requested by Unified and vacate
`the order concerning real parties in interest in the Unified IPR. Apple also believes the most efficient and non-prejudicial
`path to all of the parties at this stage of their respective proceedings would be for the Board to defer a decision on
`further proceedings in IPR2022-00031 until a decision is rendered on the rehearing request filed by Unified.
`
`
`To be clear, Apple does not believe MemoryWeb is allowed to raise an RPI issue at this point in its proceeding because it
`has waived the right to do so. If the RPI decision in the Unified IPR proceeding is not vacated, Apple submits that the
`Board must take up the issue of waiver as a threshold issue before entertaining any additional proceedings or briefing on
`RPI and estoppel.
`
`In view of the complexity of this situation, Apple is not opposed to the Board finding that IPR2022-00031 is an
`exceptional case that would warrant deferral of the final written decision for a period up to six months.
`
`
`Samsung’s Position
`Samsung believes that “inspection” of the record of the Unified IPR proceeding is necessary to allow Samsung to make
`informed decisions on the issues raised by MemoryWeb’s request to move to terminate Samsung’s IPR. In addition to
`AEO inspection of the entirety of the papers and evidence in the Unified IPR proceeding, Samsung requests “inspection”
`by Samsung’s in-house counsel of versions of the papers and evidence in the Unified IPR proceeding that redact
`confidential information specific to Apple. Samsung believes that Unified should be able to appropriately redact the
`papers and evidence to limit the inspection by Samsung’s in-house counsel to only confidential information that is
`appropriate for Samsung’s review.
`
`In terms of what additional process would be necessary in Samsung’s IPR if the Board deems additional process to be
`warranted, Samsung below attempts to offer insight to aid in the Board’s consideration of the RPI/estoppel issue.
`
`2
`
`

`

`However, Samsung believes that “inspection” of the record of the Unified IPR proceeding is here again necessary to
`allow Samsung to offer fully informed thoughts on the extent (e.g., scope, timing, cadence) of process needed to ensure
`that Samsung is provided a full and fair opportunity to address implicated issues.
`
`
`Samsung believes that, to establish estoppel of Samsung’s challenge to claims 1-7 in Samsung’s IPR of the ’228 patent,
`MemoryWeb has the burden of demonstrating, with arguments and supporting evidence in Samsung’s IPR, the following
`facts: (1) that the Unified IPR resulted in a final written decision under section 318(a), (2) that Samsung was a real party
`in interest or privy of Unified in the Unified IPR, and (3) that Unified raised or reasonably could have raised the grounds
`pursued in Samsung’s IPR. The record in Samsung’s IPR does not have any evidence to support a factual determination
`of any of these three requirements.
`
`
`Further, because Samsung was not a party to Unified’s IPR (IPR2021-01413), Samsung cannot be bound by decisions
`rendered in that proceeding. Indeed, before estoppel is applied in any way that limits Samsung’s rights, Samsung must
`have an opportunity to confront all allegations and evidence bearing on the above three requirements. Because
`MemoryWeb has not advanced within the Samsung IPR proceeding record arguments and evidence on these three
`requirements, if rehearing concludes with the RPI determination in Unified’s IPR (IPR2021-01413) intact and if the Board
`does not find waiver of MemoryWeb’s RPI/estoppel arguments, it is Samsung’s position that any subsequent process
`must begin with MemoryWeb demonstrating, consistent with rules governing motion practice that apply to issues not
`subject to waiver, why MemoryWeb, as the moving party, is entitled to the relief sought in its motion and why
`MemoryWeb is entitled to submit new evidence into the Samsung IPR record if seeking to use the same to support its
`motion.
`
`
`To the extent that the Board allows MemoryWeb to submit its requested motion and to submit new evidence in support
`of its requested motion, it is necessary to allow Samsung to address the evidence relied upon by MemoryWeb and to
`allow Samsung the opportunity to furnish additional evidence both to impeach MemoryWeb evidence and to otherwise
`inform the record. In this regard, the procedures of a typical PTAB trial are, at a minimum, needed to assess any further
`consideration of MemoryWeb’s estoppel arguments and evidence in Samsung’s IPR.
`
`
`Unified’s Position
`Unified agrees that its confidential information may be sufficiently protected via amended AEO protections, but only if it
`is produced to parties in a relevant proceeding, e.g., after consolidation or pursuant to a valid third-party subpoena.
`
`
`Apple and Samsung propose an unprecedented third-party “inspection” of protected materials in the Unified IPR. That is
`not permissible for two reasons. First, the Trial Practice Guide does not provide for third-party access to protected
`materials. Trial Practice Guide 107-116 (granting access only to parties, their representatives, and the Office).
`
`
`Second, making documents available for inspection is discovery. See, e.g., FRCP 34 (document production). There is no
`mechanism for non-parties to take discovery. Calling discovery by another name does not change that fact, and
`permitting inspection would threaten the fundamental safeguards inherent in the Board’s discovery rules.
`
`
`Waiting for the POP decision may moot the entire issue, and it also provides the best path to consolidation. If the POP
`declines review, the panel will regain authority over the proceeding and proceed to the rehearing request. See SOP 2 at
`7-8. The Board will then have an opportunity to consolidate because rehearing tolls the time for appeal (37 C.F.R. §
`90.3), and Apple does not object to extending its one-year deadline.
`
`
`Very Respectfully,
`
`
`Daniel Schwartz, counsel for MemoryWeb
`
`Jeffery Kushan, counsel for Apple
`
`
`Karl Renner, counsel for Samsung
`
`3
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`

`

`
`Jonathan Strang, counsel for Unified
`
`
`
`
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