From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Jeff,
`
`Hayes, Jennifer
`Thursday, June 8, 2023 3:14 PM
`Kushan, Jeffrey P.; Schwartz, Daniel
`Werber, Matthew; Girgis, Diana; Mahoney, Matthew;
`'steve.baughman@groombridgewu.com'; Christopher, Angelo; Fougere, Josh
`RE: IPR2022-00031 - Meet and Confer
`
`As Dan indicated, we are available at 2:30pm PT/5:30 pm ET for the proposed meet and confer.
`
`We strongly disagree that MemoryWeb has engaged in any dilatory conduct. We promptly raised the issue of estoppel
`with Apple as soon as the issue arose. The RPI issues are only relevant to the estoppel/termination; accordingly, the RPI
`discovery issue only arose when estoppel arose. MemoryWeb was not “unquestionably late.” Rather, it timely raised
`these issues with you and the Board. The Board has further acknowledged the unprecedented circumstances of these
`proceedings, which required clarification from the Director on the Board’s procedures on the RPI issue.
`
`First, your email raises the issue of forfeiture; the Board’s Order only contemplated waiver – not forfeiture. Second, we
`don’t understand the basis of your forfeiture argument. Please identify any cases that support your position that
`forfeiture is relevant to these proceedings or that MemoryWeb has the burden of proof on that issue. Third, you email
`refers to rules governing the belated raising of issues but failed to identify what those rules. Please identify the
`referenced rules.
`
`Please let us know your position on the Protective Order as we would like to include that Protective Order with the
`subpoena to Unified; the Protective Order is the same Protective Order entered in the Unified IPR.
`
`While we believe our initial proposal is appropriate and reserve all rights to raise that proposal in its original form to the
`Board, below we provide an alternative proposal in the interest of compromise and for our discussion:
`
`
`
`
`
`First Phase of Briefing
`o Due Date 1: Two weeks from Board’s Order following joint proposal
` MemoryWeb’s Brief on Additional Discovery and Document and Testimony Subpoena to Unified
`Patents
`Apple’s Brief on Forfeiture
`
`o Due Date 2: Two weeks after Due Date 1
`Apple’s Response to MemoryWeb’s Brief on Additional Discovery and Subpoena to Unified
`
`Patents (to the extent Apple intends to oppose the Motions)
` MemoryWeb’s Response to Apple’s Brief on Forfeiture
`Second Phase of Briefing
`o Due Date 3: Within 7 days of Board Order on the First Phase of Briefing or by August 9, whichever is
`earlier
` MemoryWeb will file as exhibits in this proceeding the non-confidential exhibits in IPR2021-
`01413 pertaining to RPI
`If a deposition of a Unified witness is conducted, Apple shall be entitled to participate and
`separately examine the witness after MemoryWeb has completed its examination; the parties
`agree to negotiate with Unified in good faith regarding the production of documents and
`deposition scheduling and scope
`
`
`
`1
`
`MemoryWeb Ex. 2040
`Apple, Inc. v. MemoryWeb, LLC - IPR 2022-00031
`
`

`

`
`
`Apple will produce to MemoryWeb responsive non-privileged documents as follows: (i) all
`communications with Unified relating to MemoryWeb, the ‘228 patent, the Unified IPR, or this
`IPR (IPR2022-00031); and (ii) all agreements or contracts between Apple and Unified, including
`Apple’s membership agreement and any amendments or add-ons
`Apple may provide a declaration from a witness familiar with the documents it is
`
`producing. MemoryWeb would be allowed a 4 hour deposition of that witness
`o Due Date 4: Within 14 days of completion of authorized discovery from Apple and Unified Patents
` MemoryWeb’s Motion to Terminate
` MemoryWeb serves its motion for relief will address at least: (1) estoppel under 35
`U.S.C. § 315(e)(1) as to claims 1-7, including addressing Apple’s RPI status in the Unified
`IPR, and (2) discretionary estoppel based on at least 35 U.S.C. § 315(d), 37 CFR § 42.72,
`and 37 CFR § 42.5 as to claims 8-19. The brief will be limited to 30 pages
`o Due Date 5: Within 14 days of MemoryWeb’s Motion to Terminate
`Apple Response to Motion to Terminate
`
`Apple’s brief will also be limited to 30 pages and cannot raise waiver or forfeiture
`
`If Apple submits declaration, Apple will make declarant available within 7 days
`
`o Due Date 6: Within 14 days of Apple’s Response to MemoryWeb’s Motion to Terminate
` MemoryWeb Reply in Support of Motion to Terminate
` MemoryWeb’s brief will be limited to 12 pages
` Motions to Exclude
`o Due Date 7: Two weeks before oral hearing
` Motions to Exclude (if any)
`o Due Date 8: One week before Oral Hearing
` Opposition to Motions to Exclude (if any)
` Oral Hearing
`o Due Date 9: At the Board’s convenience prior to the statutory deadline
`
`Jennifer
`
`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
`
`This email message and any attachments are confidential and may be protected by the attorney/client or other applicable privileges. The information is intended to
`be conveyed only to the designated recipient(s) of the message. If you are not an intended recipient, please notify the sender immediately and delete the message
`from your email system. Unauthorized use, dissemination, distribution or reproduction of this message by other than the intended recipient is strictly prohibited and
`may be unlawful. Thank you.
`
`From: Kushan, Jeffrey P. <jkushan@sidley.com>
`Sent: Thursday, June 8, 2023 11:34 AM
`To: Hayes, Jennifer <jenhayes@nixonpeabody.com>; Schwartz, Daniel <djschwartz@nixonpeabody.com>
`Cc: Werber, Matthew <mwerber@nixonpeabody.com>; Girgis, Diana <dgirgis@nixonpeabody.com>; Mahoney,
`Matthew <mmahoney@sidley.com>; 'steve.baughman@groombridgewu.com'
`2
`
`MemoryWeb Ex. 2040
`Apple, Inc. v. MemoryWeb, LLC - IPR 2022-00031
`
`

`

`<steve.baughman@groombridgewu.com>; Christopher, Angelo <achristopher@nixonpeabody.com>; Fougere, Josh
`<jfougere@sidley.com>
`Subject: RE: IPR2022-00031 - Meet and Confer
`
`Hi Jennifer and Dan,
`
`Could you please respond to my email from this morning regarding a conference to discuss what we provide to the
`Board tomorrow? I am still available between 3 and 6 pm eastern.
`
`Thanks,
`
`Jeff
`
`JEFFREY P. KUSHAN
`
`SIDLEY AUSTIN LLP
`+1 202 736 8914
`jkushan@sidley.com
`
`From: Kushan, Jeffrey P.
`Sent: Thursday, June 8, 2023 8:43 AM
`To: 'Hayes, Jennifer' <jenhayes@nixonpeabody.com>; 'Schwartz, Daniel' <djschwartz@nixonpeabody.com>
`Cc: 'Werber, Matthew' <mwerber@nixonpeabody.com>; 'Girgis, Diana' <dgirgis@nixonpeabody.com>;
`Mahoney, Matthew <mmahoney@sidley.com>; 'steve.baughman@groombridgewu.com'
`<steve.baughman@groombridgewu.com>; 'Christopher, Angelo' <achristopher@nixonpeabody.com>; Fougere,
`Josh <jfougere@sidley.com>
`Subject: RE: IPR2022-00031 - Meet and Confer
`
`Jennifer and Dan,
`
`In view of the panel’s mandate for us to provide a joint submission on further conduct of the proceedings by
`tomorrow, I suggest we set up a call today. I am available other than 1-3 eastern. Maybe sometime between 3
`and 6 pm eastern? Let me know if a time in that window would work for you.
`
`Jeff
`
`JEFFREY P. KUSHAN
`
`SIDLEY AUSTIN LLP
`+1 202 736 8914
`jkushan@sidley.com
`
`From: Kushan, Jeffrey P.
`Sent: Wednesday, June 7, 2023 8:30 PM
`To: 'Hayes, Jennifer' <jenhayes@nixonpeabody.com>; Schwartz, Daniel
`<djschwartz@nixonpeabody.com>
`Cc: Werber, Matthew <mwerber@nixonpeabody.com>; Girgis, Diana <dgirgis@nixonpeabody.com>;
`
`3
`
`MemoryWeb Ex. 2040
`Apple, Inc. v. MemoryWeb, LLC - IPR 2022-00031
`
`

`

`Mahoney, Matthew <mmahoney@sidley.com>; 'steve.baughman@groombridgewu.com'
`<steve.baughman@groombridgewu.com>; Christopher, Angelo <achristopher@nixonpeabody.com>;
`Fougere, Josh <jfougere@sidley.com>
`Subject: RE: IPR2022-00031 - Meet and Confer
`
`Counsel,
`
`In its order, the panel did not endorse any particular course of conduct in this proceeding, nor did it
`suggest that MemoryWeb need not comply with the rules governing the belated raising of issues or
`requests for additional discovery. Moreover, and contrary to your assertions, the issue that
`MemoryWeb is belatedly attempting to raise in this proceeding and prove via additional discovery is
`that Apple is an RPI of Unified in IPR2021-01413. Without that predicate, the earlier issuance of a final
`written decision in the Unified Proceeding is legally irrelevant.
`
`MemoryWeb is unquestionably late in raising the RPI issue, in seeking to introduce new evidence and in
`seeking authorization for additional discovery. For example, by January of 2022, MemoryWeb
`possessed much of the evidence that it now seeks to introduce in this proceeding. In May of 2022 (the
`same month trial was instituted in this proceeding), MemoryWeb took the deposition of Mr.
`Jakel. Under the Board’s rules and practices, MemoryWeb must establish that good cause exists for it to
`belatedly seek the relief it is pursuing, and must establish its attempt to provide supplemental
`information and to obtain additional discovery now (after final argument and submission of the case to
`the Board for decision) serves the interests of justice. See, e.g., 37 CFR 42.5(c)(3), 42.12(a), 42.25(b),
`42.123(b). These are burdens MemoryWeb must satisfy as a condition precedent of being authorized to
`move for relief, introduce additional evidence or seek additional discovery. If MemoryWeb fails to meet
`its burdens, the additional discovery and briefing it is proposing would be moot.
`
`We do not agree with your proposed schedule. In it, you allocate unrealistically short deadlines for
`Apple to respond and provide MemoryWeb with an unwarranted final brief in each phase. Apple has
`already been materially prejudiced by MemoryWeb’s dilatory conduct in this proceeding. MemoryWeb
`also has an unfair advantage by its familiarity with numerous exhibits containing confidential
`information as well as the unredacted vacated RPI order in the Unified Proceeding. MemoryWeb’s self-
`serving schedule ignores both points, causes additional prejudice to Apple and is entirely unacceptable.
`
`We also oppose entry and use in this proceeding of the deposition transcript of Kevin Jakel. Apple was
`not able to participate in that deposition or examine the witness independently, and even to this date
`has no knowledge of Mr. Jakel’s testimony or its putative significance to the RPI issue in IPR2021-
`01413. Apple would suffer additional prejudice if that testimonial evidence were used in this
`proceeding. If MemoryWeb wishes to introduce testimony from a Unified witness, it may only do that
`through a deposition of that witness in Apple’s presence and which provides Apple the ability to
`independently examine the witness. Apple also does not waive, and indeed expressly reserves, the right
`to pursue all other rights and objections -- including, by way of example only, that the transcript taken in
`IPR2021-01413 would be inadmissible hearsay in this proceeding.
`
`Nonetheless, if Memory agrees to the structure of the proposed schedule below (which includes a
`threshold issue briefing phase), and if the Board subsequently decides that additional discovery and
`briefing is warranted, Apple will (subject to its objections) voluntarily produce responsive non-privileged
`documents MemoryWeb is seeking from Apple and will not oppose third party discovery of a Unified
`witness and documents. Apple also would not oppose MemoryWeb initiating attempts to secure
`authorization for a deposition of a Unified witness independent of the briefing schedule set forth below,
`with the understanding that any such deposition would only proceed if the Board finds discovery
`warranted and occurs during the period authorized for discovery (e.g., August).
`
`4
`
`MemoryWeb Ex. 2040
`Apple, Inc. v. MemoryWeb, LLC - IPR 2022-00031
`
`

`

`Proposed Schedule:
`
`June 30: MemoryWeb files a brief not exceeding 7500 words that sets forth (i) why good cause exists
`for it to raise the RPI issue at this stage of the proceeding pursuant to 37 CFR 42.5(c)(3) and 42.25(b), (ii)
`why the late consideration of supplemental information MemoryWeb possessed before this proceeding
`was instituted serves the interests of justice pursuant to 37 CFR 42.123(b), (iii) why MemoryWeb’s
`request for additional discovery serves the interests of justice pursuant to 37 CFR 42.51(b)(2)(i), and (iv)
`why MemoryWeb has not otherwise forfeited its ability to raise the RPI issue at this stage in the
`proceeding.
`
`July 21: Apple files a response not to exceed 7500 words.
`
`August 4 (estimate): If the Board finds that MemoryWeb has met its burdens, then the following
`briefing schedule would apply after such a finding, with the assumption that the Board will set a
`deadline for completion of discovery of August 21)
`
`- Within 3 days of the Board’s order (approximately August 7)
`o MemoryWeb will file as exhibits in this proceeding the non-confidential exhibits in
`IPR2021-01413 pertaining to RPI.
`o MemoryWeb may pursue a third party deposition of a Unified employee. If a deposition
`is conducted, Apple shall be entitled to participate and separately examine the witness
`after MemoryWeb has completed its examination.
`o MemoryWeb may pursue third party discovery of confidential documents in IPR2021-
`01413.
`o Apple will produce to MemoryWeb responsive non-privileged documents as follows: (i)
`all communications with Unified relating to MemoryWeb, the ‘228 patent, the Unified
`IPR, or this IPR (IPR2022-00031); and (ii) all agreements or contracts between Apple and
`Unified, including Apple’s membership agreement and any amendments or add-ons.
`o Apple may provide a declaration from a witness familiar with the documents it is
`producing. MemoryWeb would be allowed a 4 hour deposition of that witness.
`
`- Within 4 days of the deadline set for completion of discovery (e.g., August 25), MemoryWeb
`serves its motion for relief addressing (i) why it believes Apple is an RPI of Unified in IPR2021-
`01413, and (ii) why Apple should be estopped from participating in this proceeding. The brief
`will be limited to 7500 words.
`
`- Within 28 days of service of MemoryWeb’s motion for relief (e.g., Sept 22), Apple serves its
`opposition. Apple’s brief will also be limited to 7500 words.
`
`- Within 30 days of completion of briefing, the Board conducts an oral hearing on the issues
`raised in the briefing (e.g., October 20).
`
`November 20, 2023: FWD deadline.
`
`JEFFREY P. KUSHAN
`
`SIDLEY AUSTIN LLP
`1501 K Street, N.W.
`Washington, DC 20005
`
`5
`
`MemoryWeb Ex. 2040
`Apple, Inc. v. MemoryWeb, LLC - IPR 2022-00031
`
`

`

`+1 202 736 8914
`jkushan@sidley.com
`www.sidley.com
`
`JEFFREY P. KUSHAN
`
`SIDLEY AUSTIN LLP
`+1 202 736 8914
`jkushan@sidley.com
`
`From: Hayes, Jennifer <jenhayes@nixonpeabody.com>
`Sent: Tuesday, June 6, 2023 1:38 PM
`To: Kushan, Jeffrey P. <jkushan@sidley.com>; Schwartz, Daniel
`<djschwartz@nixonpeabody.com>
`Cc: Werber, Matthew <mwerber@nixonpeabody.com>; Girgis, Diana
`<dgirgis@nixonpeabody.com>; Mahoney, Matthew <mmahoney@sidley.com>;
`'steve.baughman@groombridgewu.com' <steve.baughman@groombridgewu.com>;
`Christopher, Angelo <achristopher@nixonpeabody.com>; Fougere, Josh <jfougere@sidley.com>
`Subject: RE: IPR2022-00031 - Meet and Confer
`
`Jeff:
`
`We confirm MemoryWeb still intends to file a motion to terminate IPR2022-00031 as set forth in
`our March 14, 2023 and April 7, 2023 emails. We also confirm that MemoryWeb intends to seek
`discovery from Unified and Apple as contemplated in the Board’s May 30, 2023 Order and
`requested in our April 7, 2023 email.
`
`Pursuant to the Board’s Order, MemoryWeb proposes the following discovery plan and briefing
`schedule:
`
`MemoryWeb’s Proposed Discovery Plan
`
`First, MemoryWeb seeks an order from the Board permitting MemoryWeb to apply for a
`subpoena to Unified Patents, LLC (“Unified”) pursuant to 35 U.S.C. § 24 seeking documents and
`testimony from IPR2021-01413 (“the Unified IPR”) relating to the real-party-in-interest (“RPI”)
`issue. Specifically, the subpoena would seek the following documents and testimony from Unified:
`
`1. Unified documents that MemoryWeb and/or the Board cited in the Unified IPR, including
`Exs. 2011, 2015, 2016, 2017, 2018, 2027, 2028, 2029, 2032, 2033, 1024, 1025, 1027, and
`1029 in the Unified IPR;
`2. The Declaration of Kevin Jakel dated Sept. 2, 2021 (Ex. 1017 in the Unified IPR). If Apple
`stipulates to the admissibility of Ex. 1017 from the Unified IPR in this proceeding, we can
`remove this item as it was not designated under the Unified IPR Protective Order;
`
`6
`
`MemoryWeb Ex. 2040
`Apple, Inc. v. MemoryWeb, LLC - IPR 2022-00031
`
`

`

`3. The Supplemental Declaration of Kevin Jakel dated Dec. 30, 2021 (Ex. 1023 in the Unified
`IPR), which was designated “Highly Confidential – Attorneys’ Eyes Only” under the
`Protective Order in the Unified IPR;
`4. The transcript of Kevin Jakel’s May 26, 2022 deposition in the Unified IPR (Ex. 2036 in the
`Unified IPR), also designated “Highly Confidential – Attorneys’ Eyes Only” under the
`Protective Order in the Unified IPR; and
`5. A deposition of Kevin Jakel, which would proceed in accordance with 37 C.F.R. 42.53(c)(1)
`unless Apple agrees no further deposition is necessary and Exs. 1017, 1023 and 2036 are
`admissible.
`Second, MemoryWeb seeks additional discovery from Apple pursuant to 37 C.F.R. § 42.51(b)(2).
`Specifically, MemoryWeb seeks:
`
`1. All communications with Unified relating to MemoryWeb, the ‘228 patent, the Unified
`IPR, or this IPR (IPR2022-00031); and
`
`2. All agreements or contracts between Apple and Unified, including Apple’s membership
`agreement and any amendments or add-ons.
`The Board applies a five-factor test to determine whether discovery is “necessary in the interest
`of justice” in an IPR. Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, Paper 26 at 6-7
`(PTAB Mar. 5, 2013). The first factor—whether “something useful will be uncovered”—favors
`discovery because the Board already determined that Apple should have been named as an RPI
`in the Unified IPR and the discovery is narrowly tailored to seek the same materials the Board
`already relied on to make that finding. Factor 2 favors discovery because MemoryWeb is not
`seeking Apple or Unified’s litigation positions. Factor 3 favors discovery at least because Unified
`has refused to allow confidential materials from the Unified IPR to be used in this proceeding
`absent a court order. Factors 4 and 5 favor discovery because MemoryWeb’s requests are easily
`understandable, narrowly tailored, and not overly burdensome.
`
`MemoryWeb intends to request that the Board waives the requirement that it file a separate
`motion for authorization for these discovery requests under 37 C.F.R. § 42.52(a). See, e.g., LG
`Chem, Ltd. v. Celgard, LLC, IPR2014-00692, Paper 51 at 3 (PTAB Apr. 13, 2015). Should the Board
`require a motion as a predicate for the additional discovery from Apple and/or the Unified
`subpoena, MemoryWeb proposes the following briefing schedule:
`
` Within 3 days of the Board’s authorization of the motions, MemoryWeb files a 10-page
`motion for additional discovery from Apple and/or a 10-page motion for a subpoena to
`Unified pursuant to 35 U.S.C. § 24.
` Within 7 days of MemoryWeb’s motions, Apple files 10-page response brief(s).
`To facilitate this discovery from Apple and Unified, attached please find a draft protective order
`for this proceeding.
`
`Briefing Schedule for MemoryWeb’s Motion to Terminate
`
`MemoryWeb proposes the following briefing schedule for its motion to terminate:
`
` Within 14 days of completion of the discovery outlined above (i.e., after production of
`the requested documents from Apple and Unified and Mr. Jakel’s deposition, whichever
`is later), MemoryWeb files a 30-page motion to terminate based on (1) estoppel under
`35 U.S.C. § 315(e)(1) as to claims 1-7, including addressing Apple’s RPI status in the
`7
`
`MemoryWeb Ex. 2040
`Apple, Inc. v. MemoryWeb, LLC - IPR 2022-00031
`
`

`

`Unified IPR, and (2) discretionary estoppel based on at least 35 U.S.C. § 315(d), 37 CFR §
`42.72, and 37 CFR § 42.5 as to claims 8-19.
` Within 14 days of MemoryWeb’s motion to terminate, Apple files a 30-page response to
`the motion to terminate.
` Within 7 days of Apple’s response, MemoryWeb files a 12-page reply.
`We disagree with your assertion that “MemoryWeb has not clearly identified what relief it is
`seeking from the Board concerning ‘estoppel.’” MemoryWeb identified the basis for its motion to
`terminate as early as March 14, 2023. But for the avoidance of doubt, MemoryWeb does not
`contend that “Unified is an RPI of Apple” as suggested in your email. Rather, MemoryWeb
`contends, as the Board previously found, that Apple was an RPI in the Unified IPR.
`
`Because it was an RPI to the Unified IPR, Apple is estopped from “maintain[ing] a proceeding
`before the Office with respect to that claim on any ground that the petitioner raised or reasonably
`could have raised during” the Unified IPR. 35 U.S.C. § 315(e)(1).
`
`As to claims 8-19, the Board has discretion to terminate pursuant to at least 35 U.S.C. § 315(d),
`37 CFR § 42.72, and 37 CFR § 42.5. The unique circumstances of this case warrant exercise of that
`discretion because had Unified identified Apple as an RPI in its petition, as it was required to do,
`MemoryWeb would have argued that the Board should exercise its discretion under 35 U.S.C. §
`314 to deny institution of Apple’s follow-on petition.
`
`MemoryWeb reserves the right to identify additional authority and arguments in support of its
`motion to terminate.
`
`Alleged Waiver
`
`We disagree with Apple’s assertion that MemoryWeb is required to file “a motion to belatedly
`raise a new issue in this proceeding.” The Board’s Order does not appear to request or
`contemplate the filing of such a motion as a predicate to the requested discovery plan and briefing
`schedule. As previously explained in our April 7, 2023 email, MemoryWeb’s position is that any
`alleged “waiver” should be raised in Apple’s response to the motion to terminate. Estoppel did
`not arise until the Final Written Decision issued in the Unified IPR. MemoryWeb promptly
`approached Apple and the Board about its requests.
`
`To the extent MemoryWeb is required to demonstrate good cause “to belatedly raise a new
`issue in this proceeding” (which we strongly disagree with), good cause exists at least because
`MemoryWeb reasonably litigated the RPI issue in the Unified IPR, which Apple identified as
`related in its initial petition, and estoppel did not arise until the Final Written Decision issued in
`the Unified IPR.
`
`We can be available to meet and confer anytime today or tomorrow other than 8-8:30 PT, or
`Thursday.
`
`Best regards,
`
`Jennifer
`
`8
`
`MemoryWeb Ex. 2040
`Apple, Inc. v. MemoryWeb, LLC - IPR 2022-00031
`
`

`

`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
`
`This email message and any attachments are confidential and may be protected by the attorney/client or other applicable privileges. The
`information is intended to be conveyed only to the designated recipient(s) of the message. If you are not an intended recipient, please notify
`the sender immediately and delete the message from your email system. Unauthorized use, dissemination, distribution or reproduction of this
`message by other than the intended recipient is strictly prohibited and may be unlawful. Thank you.
`
`From: Kushan, Jeffrey P. <jkushan@sidley.com>
`Sent: Tuesday, June 6, 2023 7:20 AM
`To: Schwartz, Daniel <djschwartz@nixonpeabody.com>; Hayes, Jennifer
`<jenhayes@nixonpeabody.com>
`Cc: Werber, Matthew <mwerber@nixonpeabody.com>; Girgis, Diana
`<dgirgis@nixonpeabody.com>; Mahoney, Matthew <mmahoney@sidley.com>;
`'steve.baughman@groombridgewu.com' <steve.baughman@groombridgewu.com>;
`Christopher, Angelo <achristopher@nixonpeabody.com>; Fougere, Josh <jfougere@sidley.com>
`Subject: RE: IPR2022-00031 - Meet and Confer
`
`[EXTERNAL E-MAIL]
`Be Aware of Links and Attachments
`
`Counsel,
`
`We have not received a response to our email to you from last Friday morning. As you are
`aware, the parties have been instructed to provide their views on conduct of the proceeding by
`this Friday, June 9. Please provide a response to our email at your earliest convenience, and
`indicate when you are available between now and Thursday to meet and confer.
`
`Thank you.
`
`Jeff Kushan
`
`JEFFREY P. KUSHAN
`
`SIDLEY AUSTIN LLP
`+1 202 736 8914
`jkushan@sidley.com
`
`From: Kushan, Jeffrey P.
`Sent: Friday, June 2, 2023 9:59 AM
`To: 'Schwartz, Daniel' <djschwartz@nixonpeabody.com>
`Cc: Hayes, Jennifer <jenhayes@nixonpeabody.com>; Werber, Matthew
`<mwerber@nixonpeabody.com>; Girgis, Diana <dgirgis@nixonpeabody.com>;
`
`9
`
`MemoryWeb Ex. 2040
`Apple, Inc. v. MemoryWeb, LLC - IPR 2022-00031
`
`

`

`Mahoney, Matthew <mmahoney@sidley.com>;
`steve.baughman@groombridgewu.com; Christopher, Angelo
`<achristopher@nixonpeabody.com>; Fougere, Josh <jfougere@sidley.com>
`Subject: IPR2022-00031 - Meet and Confer
`
`Counsel,
`
`We are writing pursuant to the Board’s order dated May 30, 2023, which instructs the
`parties to meet and confer regarding the conduct of this proceeding.
`
`We ask that you first confirm that MemoryWeb intends to pursue both the estoppel and
`discovery issues addressed in the Board’s order. Should MemoryWeb wish to do so, it
`will need to seek authorization from the Board to file two motions: (i) a motion to
`belatedly raise a new issue in this proceeding (RPI and estoppel under 35 U.S.C. §
`315(e)(1)) and (ii) a motion for additional discovery. Under the PTAB’s rules and
`precedent, MemoryWeb must identify the basis for obtaining the relief it is seeking, and
`must raise and discuss that basis with opposing counsel before seeking authorization
`from the Board. MemoryWeb has not done that to date for either of the motions
`noted above.
`
`For example, MemoryWeb has not clearly identified what relief it is seeking from the
`Board concerning “estoppel,” or on what basis it seeks to raise that new
`issue. MemoryWeb also has stated alternatively that it is seeking to estop Apple from
`participating in this proceeding regarding claims 1-7 or from all claims of the ‘228
`patent. Further, there is no RPI order or finding in IPR2021-01413, which was the prior
`basis of MemoryWeb’s RPI-based estoppel assertion. Please state what relief
`MemoryWeb is actually pursuing and explain the precise basis of that relief (e.g., why
`MemoryWeb contends Unified is an RPI of Apple, and what facts support that
`contention).
`
`Similarly, MemoryWeb has not identified to Apple whether it intends to pursue that
`additional discovery from Apple or from a third party, the nature of the additional
`discovery it is pursuing (e.g., production of documents, interrogatories, deposition of
`Apple or a third party witness) or the specific items of evidence MemoryWeb is seeking
`to obtain by additional discovery. Also, as additional discovery in an IPR is governed by
`the “interests of justice” standard (not “good cause”), MemoryWeb needs to identify
`what interests of justice are served by the Board granting the discovery. We need
`MemoryWeb’s position on each of these points to determine our client’s position on
`MemoryWeb’s request for additional discovery, and to formulate an appropriate
`schedule.
`
`We await your response, and are prepared to meet and confer next week and discuss
`appropriate schedules after we have received your response.
`
`Sincerely,
`
`Jeff Kushan
`
`JEFFREY P. KUSHAN
`
`SIDLEY AUSTIN LLP
`
`10
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`MemoryWeb Ex. 2040
`Apple, Inc. v. MemoryWeb, LLC - IPR 2022-00031
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`

`

`+1 202 736 8914
`jkushan@sidley.com
`
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`11
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`MemoryWeb Ex. 2040
`Apple, Inc. v. MemoryWeb, LLC - IPR 2022-00031
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