From:
`Sent:
`To:
`
`Cc:
`
`Subject:
`
`Hayes, Jennifer
`Wednesday, March 15, 2023 4:47 PM
`Kushan, Jeffrey P.; 'ellyar@unifiedpatents.com'; 'michelle@unifiedpatents.com'';
`'roshan@unifiedpatents.com'
`Schwartz, Daniel; Werber, Matthew; Christopher, Angelo; Girgis, Diana;
`'SidleyAppleMemoryWebIPRs@sidley.com'; 'tbroughan@sidley.com'
`RE: IPR2022-00031 - Patent Owner's Motion to Terminate
`
`Follow Up Flag:
`Flag Status:
`
`Follow up
`Completed
`
`Jeff,
`
`We requested that Unified allow us to provide you with both the Final Written Decision and the Real Party in Interest
`Order because both only potentially implicate Unified confidential information. Unified has refused to allow us to share
`those with you or provide redacted versions that we can share with you.
`
`Ellyar, We again renew our request that you provide at least redacted versions of both the FWD and the RPI Order so
`that we can share them with both counsel for Apple and Samsung.
`
`Jennifer
`
`From: Kushan, Jeffrey P. <jkushan@sidley.com>
`Sent: Wednesday, March 15, 2023 9:50 AM
`To: Hayes, Jennifer <jenhayes@nixonpeabody.com>; 'ellyar@unifiedpatents.com' <ellyar@unifiedpatents.com>;
`'michelle@unifiedpatents.com'' <michelle@unifiedpatents.com'>; 'roshan@unifiedpatents.com'
`<roshan@unifiedpatents.com>
`Cc: Schwartz, Daniel <djschwartz@nixonpeabody.com>; Werber, Matthew <mwerber@nixonpeabody.com>;
`Christopher, Angelo <achristopher@nixonpeabody.com>; Girgis, Diana <dgirgis@nixonpeabody.com>;
`'SidleyAppleMemoryWebIPRs@sidley.com'; 'tbroughan@sidley.com'
`Subject: RE: IPR2022-00031 - Patent Owner's Motion to Terminate
`
`[EXTERNAL E-MAIL]
`Be Aware of Links and Attachments
`
`Counsel,
`
`We received your request for our position on a motion you intend to file with the Board regarding IPR2021-01413. We
`are unable to assess your request, as we are unable access significant portions of the record in the other proceeding,
`including the final written decision, the order on real-party-in-interest, the hearing transcript, several papers of each
`party (e.g., papers 29, 25, 126, 136), and numerous exhibits (i.e., 1023-1025, 1029, 2027-2030, 2032-2034, 2036). We
`do not know why the record is sealed, or whose confidential information prompted the Board to restrict access to
`portions of the record. Until we are able to review the full record of the -01413 proceeding, we cannot take a position
`on your request.
`
`We also note that the updated mandatory notices that you sent with your email indicate that the Petitioner disagrees
`with the order and is seeking review of it. IPR2021-01413, Paper 92 at 1 (“Unified disagrees with this finding and is in
`
`1
`
`MemoryWeb Ex. 2039
`Apple, Inc. v. MemoryWeb, LLC - IPR 2022-00031
`
`

`

`the process of seeking review of it.”) We need to understand the nature and status of the review that Petitioner
`referenced in its mandatory notices, and the schedule for any such review.
`
`We are including counsel for Petitioner in the -01413 proceeding on this email and request that you and they reach
`some form of an agreement that would enable us to review the presently inaccessible portions of the record of IPR2021-
`01413. We would be willing to enter into a suitable agreement to maintain the confidentiality of any information
`provided.
`
`To be clear, we do not agree with the Board’s determination regarding the real-party-in-interests of IPR2021-01413 or
`its order.
`
`Please let us have your response to this request.
`
`Jeff Kushan
`
`JEFFREY P. KUSHAN
`
`SIDLEY AUSTIN LLP
`+1 202 736 8914
`jkushan@sidley.com
`
`From: Hayes, Jennifer <jenhayes@nixonpeabody.com>
`Sent: Tuesday, March 14, 2023 6:29 PM
`To: 'SidleyAppleMemoryWebIPRs@sidley.com'; 'jkushan@sidley.com'; 'tbroughan@sidley.com';
`'sborder@sidley.com'
`Cc: Schwartz, Daniel <djschwartz@nixonpeabody.com>; Werber, Matthew <mwerber@nixonpeabody.com>;
`Christopher, Angelo <achristopher@nixonpeabody.com>; Girgis, Diana <dgirgis@nixonpeabody.com>
`Subject: IPR2022-00031 - Patent Owner's Motion to Terminate
`
`Counsel,
`
`As reflected in the attached Updated Mandatory Notices filed by Unified Patents, LLC (“Unified”) on March 10,
`2023 in IPR2021-01413 (“the Unified IPR”), the Board determined that Apple is a real party-in-interest (“RPI”) to
`the Unified IPR challenging claims 1-7 of the ‘228 patent. A final written decision issued today (March 14) in the
`Unified IPR finding claims 1-7 of the ‘228 patent are unpatentable.
`
`In light of the final written decision and RPI findings in the Unified IPR, Patent Owner intends to seek
`authorization from the Board to move to terminate IPR2022-00031 at least as to claims 1-7 because Apple is
`estopped from maintaining this IPR pursuant to at least 35 U.S.C. § 315(e)(1) and 315(d).
`
`Please let us know Apple’s position on the motion to terminate and your availability for a call with the Board this
`week.
`
`Thanks.
`
`Jennifer
`
`2
`
`MemoryWeb Ex. 2039
`Apple, Inc. v. MemoryWeb, LLC - IPR 2022-00031
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`

`

`Jennifer Hayes
`Partner
`jenhayes@nixonpeabody.com
`T/ 213.629.6179 M/ 650.575.2400 F/ 866.781.9391
`Nixon Peabody LLP
`300 South Grand Avenue, Suite 4100, Los Angeles, CA 90071-3151
`nixonpeabody.com @NixonPeabodyLLP
`
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`
`3
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`MemoryWeb Ex. 2039
`Apple, Inc. v. MemoryWeb, LLC - IPR 2022-00031
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`