Hayes, Jennifer
`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
`Thursday, June 08, 2023 4:13:48 PM
`image001.png
`
`From:
`To:
`Cc:
`Subject:
`Date:
`Attachments:
`
`Jeff,
`
`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
`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
`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
`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
`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
`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
`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
`
`Petitioner Apple Inc., Ex. 1093, p. 1
`Apple Inc. v. MemoryWeb, LLC, IPR2022-00031
`
`

`

`If Apple submits declaration, Apple will make declarant available within 7 days
`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
`Due Date 7: Two weeks before oral hearing
`Motions to Exclude (if any)
`Due Date 8: One week before Oral Hearing
`Opposition to Motions to Exclude (if any)
`
`Oral Hearing
`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' <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'
`
`Petitioner Apple Inc., Ex. 1093, p. 2
`Apple Inc. v. MemoryWeb, LLC, IPR2022-00031
`
`

`

`<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>;
`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
`
`Petitioner Apple Inc., Ex. 1093, p. 3
`Apple Inc. v. MemoryWeb, LLC, IPR2022-00031
`
`

`

`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).
`
`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.
`
`
`
`
`
`
`
`
`
`Petitioner Apple Inc., Ex. 1093, p. 4
`Apple Inc. v. MemoryWeb, LLC, IPR2022-00031
`
`

`

`- 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
`+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
`
`Petitioner Apple Inc., Ex. 1093, p. 5
`Apple Inc. v. MemoryWeb, LLC, IPR2022-00031
`
`

`

`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;
`
`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 Unified IPR, and (2)
`
`Petitioner Apple Inc., Ex. 1093, p. 6
`Apple Inc. v. MemoryWeb, LLC, IPR2022-00031
`
`

`

`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
`
`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
`
`Petitioner Apple Inc., Ex. 1093, p. 7
`Apple Inc. v. MemoryWeb, LLC, IPR2022-00031
`
`

`

`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>; 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.
`
`Petitioner Apple Inc., Ex. 1093, p. 8
`Apple Inc. v. MemoryWeb, LLC, IPR2022-00031
`
`

`

`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
`+1 202 736 8914
`jkushan@sidley.com
`
`*****************************************************************************
`***********************
`This e-mail is sent by a law firm and may contain information that is privileged or confidential.
`If you are not the intended recipient, please delete the e-mail and any attachments and notify us
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`
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`
`Petitioner Apple Inc., Ex. 1093, p. 9
`Apple Inc. v. MemoryWeb, LLC, IPR2022-00031
`
`

`

`From:
`To:
`
`Cc:
`Subject:
`Date:
`Attachments:
`
`Hayes, Jennifer
`"SidleyAppleMemoryWebIPRs@sidley.com"; "jkushan@sidley.com"; "tbroughan@sidley.com";
`"sborder@sidley.com"
`Schwartz, Daniel; Werber, Matthew; Christopher, Angelo; Girgis, Diana
`IPR2022-00031 - Patent Owner"s Motion to Terminate
`Tuesday, March 14, 2023 6:29:16 PM
`2023-03-10 - Paper 57 - Petitioner"s Updated Mandatory Notices 4887-0514-3382 v.1.pdf
`
`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
`
`
`
`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.
`
`
`
`
`Petitioner Apple Inc., Ex. 1093, p. 10
`Apple Inc. v. MemoryWeb, LLC, IPR2022-00031
`
`

`

`Richardson, Shirley
`From:
`Hayes, Jennifer <jenhayes@nixonpeabody.com>
`Sent:
`Tuesday, July 19, 2022 4:21 PM
`To:
`Kushan, Jeffrey P.; Sidley Apple v. MemoryWeb IPRs; Smith, Kyle
`Cc:
`Girgis, Diana; Border, Scott
`Subject:
`RE: IPR2022-00031 and IPR2022-00033; APPLE, INC. v. MEMORYWEB, LLC
`
`Jeff, 
` 
`Confirmed that we will be taking Mr. Birdsell’s deposition remotely.  We have retained Optus to making the arrangements and will follow up when the remote 
`deposition logistics have been set up. 
` 
`Thank you for providing the alternative dates.  My only concern is with the Due Date 3 deadline in view of the Thanksgiving/Christmas holidays and because I 
`also have the Unified oral argument during that time period (Dec. 16).   I propose we move Due Date 3 to Jan. 6, 2023. 
`
` I
`
` will follow up separately as to the dates offered for Dr. Terveen.  
`
` 
`Best, 
`
`Jennifer 
` 
`From: Kushan, Jeffrey P. <jkushan@sidley.com>  
`Sent: Tuesday, July 19, 2022 11:28 AM 
`To: Hayes, Jennifer <jenhayes@nixonpeabody.com>; Sidley Apple v. MemoryWeb IPRs <SidleyAppleMemoryWebIPRs@sidley.com>; Smith, Kyle 
`<kyle.smith@sidley.com> 
`Cc: Girgis, Diana <dgirgis@nixonpeabody.com>; Border, Scott <sborder@sidley.com> 
`Subject: RE: IPR2022‐00031 and IPR2022‐00033; APPLE, INC. v. MEMORYWEB, LLC 
` 
`Hi Jennifer, 
` 
`Regarding Mr. Birdsell’s deposition, please confirm you will be doing that remotely, and when you will be providing logistics for the remote deposition.  I assume 
`9 am will be fine as a start time, but can confirm that as we get closer to the deposition. 
` 
`Assuming that we will shift the patent owner response dates to September 23, one date that we can offer now for Dr. Terveen would be September 13, and part 
`of the 14th if you think you need a second day.  Let me know if that works for you. 
` 
`
`1
`
`Petitioner Apple Inc., Ex. 1093, p. 11
`Apple Inc. v. MemoryWeb, LLC, IPR2022-00031
`
`

`

`Finally, I think we need to come up with an interim change to the schedules until the Board gets back to us on what they can do on shifting the oral hearing 
`date.  If we set Due Date 1 as September 23 as we discussed, we can try to nudge the next few dates earlier so that we can get completion of briefing in line with 
`the February 24 hearing date of the first two proceedings.  Here is my attempt to do that.  You’ll note that I’m trying to apportion the shortening of the 
`deadlines between both sides.  The shortened peri