`571-272-7822
`
`
`Paper 42
` Entered: May 16, 2023
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MEMORYWEB, LLC,
`Patent Owner.
`____________
`
`IPR2022-00031
`Patent 10,621,228 B2
`____________
`
`
`Before LYNNE H. BROWNE, NORMAN H. BEAMER, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`
`ORDER
`Extending One-Year Pendency for Good Cause
`35 U.S.C. § 316(a)(11); 37 C.F.R. § 42.100(c)
`
`
`
`
`
`
`IPR2022-00031
`Patent 10,621,228 B2
`
`Petitioner filed a Petition requesting inter partes review of claims 1–
`19 of U.S. Patent No. 10,621,228 B2. On May 20, 2022, the Board
`instituted trial. Paper 12. The one-year period normally available to issue a
`Final Written Decision expires on May 19, 2023.
`In this proceeding, however, Patent Owner MemoryWeb, LLC seeks
`leave to file a motion to dismiss this proceeding in view of the Board’s Final
`Written Decision in Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-
`01413 (“Unified Patents”), entered as Paper 58 in that proceeding on March
`14, 2023, and the Board’s Order Identifying Real Party in Interest entered as
`Paper 56 on March 8, 2023. Petitioner Apple Inc. (“Apple”) opposes Patent
`Owner’s request to file a motion to dismiss, and alternatively seeks leave for
`discovery on the matters addressed in Paper 56 identifying Apple as a Real
`Party in Interest in the Unified Patents proceeding.
`Pursuant to 35 U.S.C. § 316(a)(11), “the final determination in an
`inter partes review [shall] be issued not later than 1 year after the date on
`which the Director notices the institution of a review under this chapter,
`except that the Director may, for good cause shown, extend the 1-year
`period by not more than 6 months . . . .” The Director has delegated the
`authority to extend the one-year period to the Chief Administrative Patent
`Judge. See 37 C.F.R. § 42.100(c). In particular, 37 C.F.R. § 42.100(c)
`provides:
`An inter partes review proceeding shall be administered such
`that pendency before the Board after institution is normally no
`more than one year. The time can be extended by up to six
`months for good cause by the Chief Administrative Patent
`Judge . . . .
`
`2
`
`
`
`IPR2022-00031
`Patent 10,621,228 B2
`
`In accordance with 37 C.F.R. § 42.100(c), the Chief Administrative
`Patent Judge has determined that good cause exists to extend the one-year
`period for issuing a Final Written Decision here. Paper 41; 37 C.F.R.
`§ 42.100(c). Accordingly, the time to administer the present proceeding is
`extended by up to six months.
`The Board will issue an order in due course providing instructions to
`the parties regarding the particular procedures for moving forward in this
`proceeding.
`
`Accordingly, it is
`ORDERED that good cause exists to extend the time of pendency in
`this proceeding; and
`FURTHER ORDERED that this proceeding is extended by up to six
`months.
`
`
`3
`
`
`
`IPR2022-00031
`Patent 10,621,228 B2
`
`FOR PETITIONER:
`
`Jeffrey P. Kushan
`Thomas A. Broughan, III
`SIDLEY AUSTIN LLP
`jkushan@sidley.com
`tbroughan@sidley.com
`
`J. Steven Baughman
`GROOMBRIDGE, WU, BAUGHMAN & STONE LLP
`steve.baughman@groombridgewu.com
`
`FOR PATENT OWNER:
`
`Jennifer Hayes
`George Dandalides
`NIXON PEABODY LLP
`jenhayes@nixonpeabody.com
`gdandalides@nixonpeabody.com
`
`
`
`
`
`
`
`
`4
`
`