`571-272-7822
`
`
`
`Paper 45
` Date: June 15, 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
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2022-00031
`Patent 10,621,228 B2
`
`Petitioner, Apple, Inc. (“Apple” or “Petitioner”), filed a petition
`
`requesting inter partes review of claims 1–19 of U.S. Patent No. 10,621,228
`
`B2 (“the ’228 patent”). Paper 1. On May 20, 2022, the Board instituted
`
`trial. Paper 12.
`
`In a related proceeding challenging claims 1–7 of the ’228 patent,
`
`Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413 (the “Unified
`
`proceeding”), the Board entered an Order (Paper 56 (confidential)) on March
`
`8, 2023, identifying Apple as an unnamed Real Party in Interest (“RPI”), and
`
`on March 14, 2023, entered a Final Written Decision (Paper 58
`
`(confidential)) finding claims 1–7 unpatentable.
`
`Patent Owner, MemoryWeb, LLC (“MemoryWeb” or “Patent
`
`Owner”) seeks leave to file a motion to terminate this proceeding in view of
`
`the Board’s Final Written Decision in the Unified proceeding. Ex. 3002, 1.
`
`Apple opposes Patent Owner’s request, and asserts that MemoryWeb has
`
`waived the RPI and estoppel issues in this proceeding. Id. at 2.
`
`On May 22, 2023, the Director issued a public version1 of a Decision
`
`Granting Director Review (Paper 76, “Director’s Decision”) in the Unified
`
`proceeding, vacating-in-part the Final Written Decision (Section I.B) (Paper
`
`58 (confidential) and Paper 67 (public)) and the Board’s Order identifying
`
`Apple as an RPI (Paper 56 (confidential)) in that proceeding.
`
`On May 30, 2023, the Board issued an Order directing the parties to
`
`confer and submit a proposed joint briefing schedule and discovery plan to
`
`address the RPI, estoppel, and waiver issues. Paper 43. The parties
`
`
`1 On May 16, 2023, a confidential version of the Director’s Decision
`Granting Director Review (Paper 74) was issued, but made available only to
`the parties and the Board.
`
`2
`
`
`
`IPR2022-00031
`Patent 10,621,228 B2
`
`submitted their joint proposal to the Board by email on June 9, 2023. Ex.
`
`3005.2
`
`After considering the parties’ positions, the procedural history of this
`
`case, and the parties’ proposed briefing schedule (Ex. 3005, First Phase), it
`
`is
`
`ORDERED that by June 30, 2023, the parties shall each file their
`
`opening briefs addressing the topics set forth in Exhibit 3005 for Due Date
`
`1, not to exceed 7000 words; and
`
`FURTHER ORDERED that by July 14, 2023,3 the parties shall each
`
`file their response briefs addressing the topics set forth in Exhibit 3005 for
`
`Due Date 2, not to exceed 3500 words.
`
`
`
`
`2 Exhibit 3005 is being entered concurrently with this Order.
`3 The Board has shortened the parties’ proposed time-period for Due Date 2
`from three weeks to two weeks.
`
`3
`
`
`
`IPR2022-00031
`Patent 10,621,228 B2
`
`FOR PETITIONER:
`
`Jeffrey P. Kushan
`SIDLEY AUSTIN LLP
`jkushan@sidley.com
`
`FOR PATENT OWNER:
`
`Jennifer Hayes
`George Dandalides
`NIXON PEABODY LLP
`jenhayes@nixonpeabody.com
`gdandalides@nixonpeabody.com
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
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