`Filed: June 30, 2023
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MEMORYWEB, LLC,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2022-00031
`U.S. Patent No. 10,621,228
`
`––––––––––––––––––
`
`PETITIONER’S OPENING BRIEF IN RESPONSE TO
`CONDUCT OF THE PROCEEDING ORDER (PAPER 45)
`
`
`
`
`

`

`IPR2022-00031
`
`Apple Opening Brief on Waiver/Estoppel
`
`TABLE OF CONTENTS
`
`INTRODUCTION ............................................................................................ 1
`I.
`II. BACKGROUND .............................................................................................. 7
`III. ARGUMENT .................................................................................................. 14
`A. MEMORYWEB CANNOT RAISE AN RPI ARGUMENT IN THESE
`PROCEEDINGS NOW. ........................................................................... 14
`1. To Be Timely, a Patent Owner Must Raise an RPI Issue No Later
`than Its POR and Must Raise It In the Proceeding Where It
`Contends a Petitioner Should Be Estopped. ................................ 15
`2. MemoryWeb Failed to Timely Raise an RPI Issue It Plainly
`Could Have. ................................................................................. 17
`3. There Is No Basis to Excuse MemoryWeb’s Intentional and
`Dilatory Conduct. ........................................................................ 19
`a. Good Cause Should Not Be Found When a Party
`Intentionally Delays Acting or When Excusing Delay
`Prejudices the Other Party. .................................................. 19
`b. MemoryWeb Cannot Establish Good Cause. ...................... 23
`B. MEMORYWEB CANNOT RAISE AN ESTOPPEL ARGUMENT IN THESE
`PROCEEDINGS NOW. ........................................................................... 26
`1. MemoryWeb’s Free-Floating Estoppel Argument Is Untimely. . 27
`2. MemoryWeb’s Conduct In Other Proceedings Forecloses Its
`“Timely Raised” Estoppel Assertions Here. ............................... 28
`3. MemoryWeb Cannot Show Good Cause to Excuse Its Untimely
`Effort to Assert Estoppel. ............................................................. 29
`IV. EXCUSING MEMORYWEB’S DILATORY CONDUCT WOULD
`VIOLATE APPLE’S RIGHTS. ................................................................. 29
`V. CONCLUSION .............................................................................................. 31
`
`
`
`
`i
`
`
`

`

`IPR2022-00031
`
`Apple Opening Brief on Waiver/Estoppel
`
`I.
`
`INTRODUCTION
`
`There is no real-party-in-interest (“RPI”) relationship between Apple Inc.
`
`(“Apple”) and Unified Patents (“Unified”). That issue is not before the Board
`
`here, and the Board need not reach it.1 The reason is simple: MemoryWeb has
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`waived and/or forfeited its ability to raise an RPI issue in this proceeding, or to
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`allege estoppel under 35 U.S.C. § 315(e)(1) based on an RPI issue.
`
`MemoryWeb intentionally chose to not assert in this proceeding that there is
`
`an RPI relationship between Apple and Unified in challenging U.S. Patent No.
`
`10,621,228 (“the ’228 patent”) until after this proceeding had been submitted for
`
`decision by the Board in March of 2023. EX1093, 10. MemoryWeb also cannot
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`deny it could have raised its RPI assertions earlier: it did so in IPR2021-01413
`
`(“Unified”) in December of 2021 and did so again in IPR2022-00222 (“Samsung”)
`
`in March of 2022. See Unified, Paper 8, 22-28 (Dec. 17, 2021); Samsung, Paper 8,
`
`30-31 (Mar. 16, 2022).
`
`
`Apple is not addressing MemoryWeb’s incorrect assertion that Apple is an
`
`1
`
`RPI of Unified in Unified in this brief. That issue would be relevant only if the
`
`Board authorizes briefing on the RPI and estoppel issues, which it has not at this
`
`stage. See IPR2022-00031 (“Apple”), Paper 45, Ex. 3005. Apple expressly
`
`reserves its position on that issue.
`
`1
`
`

`

`IPR2022-00031
`
`Apple Opening Brief on Waiver/Estoppel
`
`MemoryWeb likewise chose not to assert in this proceeding, at any time
`
`before it was submitted for decision, that Apple should be estopped under 35
`
`U.S.C. § 315(e)(1) because of a supposed RPI relationship between Apple and
`
`Unified. Again, nothing prevented MemoryWeb from making this assertion
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`earlier: it did so in Unified starting in June of 2022, and it made a parallel
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`assertion in September of 2022 in Samsung.
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`MemoryWeb thus intentionally chose to not raise either an RPI or a
`
`§ 315(e)(1) estoppel issue in this proceeding before it was submitted to the panel
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`for decision, as evidenced by its actions in both of the other proceedings
`
`concerning the ’228 patent. MemoryWeb now seeks to improperly capitalize on its
`
`own intentional delay.
`
`The Board should not tolerate this gamesmanship. MemoryWeb’s
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`intentional delay in raising both issues has prejudiced Apple and wasted resources
`
`of both the Board and the parties. Had MemoryWeb timely raised the RPI issue
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`after it first believed one existed (i.e., which it did in 2021 when it asserted its RPI
`
`issue in Unified), Apple could have sought to align the schedules of this
`
`proceeding with Unified, thereby eliminating the possibility of estoppel under
`
`§ 315(e)(1). Now that the Final Written Decision (“FWD”) in Unified has issued,
`
`however, Apple cannot do that.
`
`2
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`

`

`IPR2022-00031
`
`Apple Opening Brief on Waiver/Estoppel
`
`Forfeiture and/or waiver2 is the proper consequence of MemoryWeb’s
`
`dilatory and prejudicial conduct. Specifically, the Board should find that, at this
`
`stage of the proceeding, MemoryWeb has waived and/or forfeited its ability to
`
`raise a new RPI issue or to seek estoppel under § 315(e)(1) in this proceeding.
`
`First, MemoryWeb has waived and/or forfeited its ability to raise an RPI
`
`issue now. As the Director observed in its recent order, the proper proceeding for
`
`MemoryWeb to have raised an RPI issue was this one, not Unified. Unified, Paper
`
`76, 5 (May 22, 2023). And as the Board has consistently held in other cases, the
`
`
`Apple refers to issues as “forfeited and/or waived” throughout this brief.
`
`2
`
`Generally speaking, “forfeiture is the failure to make the timely assertion of a right,
`
`[and] waiver is the ‘intentional relinquishment or abandonment of a known right.’”
`
`See, e.g., In re Google Tech. Holdings LLC, 980 F.3d 858, 862 (Fed. Cir. 2020).
`
`The Federal Circuit and the Board, however, have used the terms “forfeiture” and
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`“waiver” interchangeably. Id. (observing that the Court has “seemingly … used
`
`the terms interchangeably at times” and that the Court “mainly uses the term
`
`‘waiver’ when applying the doctrine of ‘forfeiture.’”). See also FN4, infra. The
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`Board’s interchangeable use of the words shows that nothing should turn on the
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`distinction here.
`
`3
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`

`

`IPR2022-00031
`
`Apple Opening Brief on Waiver/Estoppel
`
`proper time for MemoryWeb to raise an RPI issue was no later than when it filed
`
`its Patent Owner Response (“POR”). See § III.A.1, infra.
`
`Waiver and/or forfeiture is particularly appropriate in situations like this,
`
`where MemoryWeb could have raised its arguments at the proper time and chose
`
`not to. That is unquestionably true here—MemoryWeb advanced its RPI
`
`arguments in Unified in December of 2021 (i.e., nine months before its POR here)
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`and its parallel RPI issue in Samsung six months before it filed its POR in this
`
`proceeding. See Unified, Paper 8, 22-28 (Dec. 17, 2021); Samsung, Paper 8, 30-31
`
`(Mar. 16, 2022); Apple POR, Paper 20 (Sept. 23, 2022). MemoryWeb must live
`
`with the consequences of its decision not to timely raise an RPI issue in this
`
`proceeding.
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`Likewise, before this proceeding was submitted for decision, MemoryWeb
`
`had never alleged that Apple should be estopped under 35 U.S.C. § 315(e)(1).
`
`Again, it certainly could have done so long before its POR date. For example, in
`
`Unified, MemoryWeb made that allegation on June 6, 2022, stating that “the
`
`Board should find that Apple and Samsung are estopped from challenging the
`
`validity of claims 1-7 of the ’228 patent in related proceedings [i.e., the Apple
`
`proceeding]” because of a supposed RPI relationship. Unified POR, Paper 23 at
`
`14-15. It likewise alleged in Samsung on September 6, 2022 that, “[s]hould the
`
`Board determine in a final written decision that Samsung is an unnamed RPI in the
`
`4
`
`

`

`IPR2022-00031
`
`Apple Opening Brief on Waiver/Estoppel
`
`Unified IPR, Samsung should be estopped from maintaining the present IPR
`
`challenge under Section 315(3)(1). . .” Samsung POR, Paper 19, 64-65. Both
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`statements were made before MemoryWeb filed its POR in the Apple proceeding
`
`on September 23, 2022. Apple, Paper 20.
`
`MemoryWeb has attempted to justify its dilatory and prejudicial conduct by
`
`contending, in communications with the Board and with Apple, that it raised
`
`“estoppel” in a timely manner because it did so shortly after the Unified FWD
`
`issued. On a conference call with the Board, for example, MemoryWeb stated that
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`“we don’t believe that there’s been any waiver on the RPI issue in the Apple case”
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`because the “only issue or question is when did estoppel apply.” EX3003, 23:13-
`
`20; see also id. at 40:4-13. To Apple, MemoryWeb has similarly said that it
`
`“promptly raised the issue of estoppel with Apple as soon as the issue arose.”
`
`EX1093, 1; see also EX1093, 7 (“Estoppel did not arise until the Final Written
`
`Decision issued in the Unified IPR. MemoryWeb promptly approached Apple and
`
`the Board about its requests.”).
`
`MemoryWeb’s own actions and statements in the Unified and Samsung
`
`proceedings again refute its putative excuse. In the two other proceedings,
`
`MemoryWeb not only acknowledged that estoppel under § 315(e)(1) rests on a
`
`predicate finding of an RPI relationship, but recognized that briefing the
`
`§ 315(e)(1) estoppel issue during the proceeding was necessary. For example,
`
`5
`
`

`

`IPR2022-00031
`
`Apple Opening Brief on Waiver/Estoppel
`
`MemoryWeb alleged in Unified that Apple should be estopped in papers it filed as
`
`early as June 6, 2022. See, e.g., Unified, Paper 23, 14-16. MemoryWeb had no
`
`impediment to doing so here: it knew a FWD would issue in Unified before one
`
`issued in this proceeding because the Unified proceeding was instituted two
`
`months before the Apple proceeding. And MemoryWeb’s assertion that it was
`
`proper to withhold its estoppel assertion until after the Unified FWD issued is
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`belied by its own conduct in Samsung, where it raised both the RPI and estoppel
`
`issues six months before the Unified FWD issued. See Samsung, Paper 19, 64-65
`
`(Sept. 6, 2022). If MemoryWeb believed what it says today, it would have waited
`
`to raise both issues until after the Unified FWD issued. The Board should reject
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`MemoryWeb’s post-hoc justifications for its dilatory and prejudicial conduct.
`
`MemoryWeb’s other excuse is its contention that Apple should have known
`
`of the RPI and estoppel issues because MemoryWeb had raised them in the Unified
`
`proceeding. EX3003, 39:13-23. But MemoryWeb ignores that Apple has never
`
`been afforded notice of or any opportunity to be heard in the Unified proceeding,
`
`and that the bulk of the arguments and evidence on both issues were (and remain)
`
`inaccessible to Apple. MemoryWeb furthermore ignores its own burden to at least
`
`contest Apple’s representation that it was the sole RPI in this proceeding. See
`
`Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018). And, notably,
`
`MemoryWeb did raise RPI and estoppel assertions in the Samsung proceeding.
`
`6
`
`

`

`IPR2022-00031
`
`Apple Opening Brief on Waiver/Estoppel
`
`See Samsung, Paper 8, 30-31 (Mar. 16, 2022); id., Paper 10, 1 (Apr. 26, 2022); id.,
`
`Paper 19, 64-65 (Sept. 6, 2022); id., Paper 30, 33 (Feb. 2, 2023); id., Paper 34, 64
`
`(Mar. 16, 2023). The record thus shows that MemoryWeb deliberately delayed
`
`raising the RPI and estoppel arguments it has long intended to use against Apple in
`
`this proceeding without any justification.
`
`Given MemoryWeb’s clear waiver and/or forfeiture of these issues, the
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`Board should decline to authorize further briefing on RPI or estoppel and should
`
`proceed to the merits of Apple’s patentability challenges to claims 1-19 of the ’228
`
`patent.
`
`II. BACKGROUND
`
`Three inter partes review proceedings have been filed concerning the ’228
`
`patent.
`
`
`
`
`
`
`
`On September 3, 2021, Unified Patents filed its petition concerning
`the ’228 patent. Unified Patents, LLC v. MemoryWeb, LLC, No.
`IPR2021-01413, Paper 2.
`
`On October 30, 2021, Apple filed its petition concerning the ’228
`patent on October 30, 2021. Apple Inc. v. MemoryWeb, LLC, No.
`IPR2022-00031, Paper 1.
`
`On December 3, 2021, Samsung filed its petition concerning the ’228
`patent. Samsung Elecs. Co. v. MemoryWeb, LLC, No. IPR2022-
`00222, Paper 2.
`
`7
`
`

`

`IPR2022-00031
`
`Apple Opening Brief on Waiver/Estoppel
`
`In each petition, each respective petitioner identified itself as the sole RPI.
`
`On December 17, 2021, MemoryWeb filed a Patent Owner Preliminary
`
`Response (POPR) in the Unified proceeding. Unified, Paper 8. In the Unified
`
`POPR, MemoryWeb stated:
`
`Apple and Samsung should have been [listed] as RPIs in this
`proceeding, and the failure to identify Apple and Samsung is a basis
`for the Board to deny institution pursuant to 35 U.S.C. § 312.
`
`Id. at 22-28.
`
`On February 23, 2022, MemoryWeb filed a POPR in the Apple proceeding.
`
`Apple, Paper 8. It did not dispute (i) Apple’s statement that Apple was the sole
`
`real party in interest of its proceeding or (ii) Apple’s description of the separate
`
`Unified proceeding (See Apple Pet., Paper 1, 2-3), nor did it contend that Apple
`
`was an RPI of Unified in the Unified proceeding.
`
`On March 14, 2022, the Board instituted trial in the Unified proceeding, but
`
`declined to determine whether Apple or Samsung were an RPI of Unified in that
`
`proceeding. Unified, Paper 15, 13-14.
`
`On March 16, 2022, MemoryWeb filed a POPR in the Samsung proceeding.
`
`Samsung, Paper 8. As it did in the Unified proceeding, MemoryWeb raised an RPI
`
`issue, stating: “Samsung should have been named as a real party in interest in the
`
`Unified IPR.” Id. at 30-31. MemoryWeb also acknowledged that, in Unified,
`
`8
`
`

`

`IPR2022-00031
`
`Apple Opening Brief on Waiver/Estoppel
`
`“[t]he Board declined to determine whether Samsung was a real party in interest in
`
`its Institution Decision.” Id. at 31 (citing Unified, Paper 15, 14 (Mar. 14, 2022)).
`
`On April 18 and 19, 2022, respectively, Apple and Samsung filed Replies to
`
`MemoryWeb’s POPRs in their respective proceedings. See Apple, Paper 10 (Apr.
`
`18, 2022); Samsung, Paper 9 (Apr. 19, 2022).
`
`On April 25, 2022, MemoryWeb filed a Sur-Reply in the Apple proceeding.
`
`Apple, Paper 11. Again, MemoryWeb did not raise any RPI issue or argument, or
`
`assert (as it had already done in Samsung) that Apple was an RPI in the Unified
`
`proceeding. Nor did MemoryWeb contend that estoppel under 35 U.S.C.
`
`§ 315(e)(1) would apply, despite recognizing that the Board had instituted trial in
`
`the Unified proceeding more than a month earlier. See Unified, Paper 15 (Mar. 14,
`
`2022). And MemoryWeb did not dispute Apple’s position that Apple was the sole
`
`RPI of the Apple proceeding or Apple’s description of the separate Unified
`
`proceeding.
`
`On April 26, 2022 (the next day), MemoryWeb filed its Sur-Reply in the
`
`Samsung proceeding. Samsung, Paper 10. It again contended that Samsung was as
`
`an RPI of Unified, stating “Samsung also does not deny that it should have been
`
`named an RPI in the Unified Petition.” Id. at 1.
`
`9
`
`

`

`IPR2022-00031
`
`Apple Opening Brief on Waiver/Estoppel
`
`On May 20, 2022, the Board instituted trial in the Apple proceeding. Apple,
`
`Paper 12. The Board found that only Apple and MemoryWeb were identified as
`
`RPIs. Id. at 2 (citing Pet., 2; Paper 6, 1; Paper 3, 2; Paper 7, 2).
`
`On June 6, 2022, in its Response in the Unified proceeding, MemoryWeb
`
`presented extensive arguments that both Apple and Samsung were RPIs of Unified.
`
`See Unified, Paper 23, 14-26 (June 6, 2022) (publicly filed as EX1030 on June 14,
`
`2022). The arguments were heavily redacted and cited to exhibits that were not
`
`(and still are not) fully publicly accessible. Id. (citing Exhibits EX1030, EX2027,
`
`EX2028, EX2029, EX2030, EX2032, EX2033, EX2034, and EX2036 (EX1031)).
`
`Notably, MemoryWeb also linked the RPI issue to estoppel under 35 U.S.C.
`
`§ 315(e)(1)—it claimed that Apple and Samsung should be estopped from
`
`continuing their respective proceedings because of the putative RPI relationship to
`
`Unified. Unified, Paper 23, 14-26 (June 6, 2022) (“… the Board should find that
`
`Apple and Samsung are estopped from challenging the validity of claims 1-7 of the
`
`‘228 patent in related proceedings…”).
`
`On June 13, 2022, the Board instituted trial in the Samsung proceeding.
`
`Samsung, Paper 12. In the decision, the Board observed that it had considered the
`
`RPI arguments presented by MemoryWeb, but determined that “[Samsung] is not
`
`related to Unified Patents or Apple because there is no evidence that it controls
`
`10
`
`

`

`IPR2022-00031
`
`Apple Opening Brief on Waiver/Estoppel
`
`Unified Patents or Apple and [Samsung]’s interests differ from Unified Patents and
`
`Apple.” Id. at 10-11.
`
`On July 15, 2022, following consultations between counsel for the parties,
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`Apple and MemoryWeb submitted a joint request to align the schedules of this and
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`three other Apple v. MemoryWeb proceedings (IPR2022-00032, IPR2022-00033,
`
`PGR2022-00006). EX3001, 5-6; see also EX1093, 11-23; Apple, Paper 17, 2
`
`(Aug. 26, 2022) (granting the joint request); EX3001, 1-2. This request did not
`
`address the Unified or Samsung proceedings.
`
`On September 6, 2022, in its Patent Owner Response in the Samsung
`
`proceeding, MemoryWeb again presented arguments expressly linking its RPI and
`
`estoppel issues, asserting that “[s]hould the Board determine in a final written
`
`decision that Samsung is an unnamed RPI in the Unified IPR, Samsung should be
`
`estopped from maintaining the present IPR challenge under Section 315(e)(1)…”
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`Samsung, Paper 19, 64.
`
`On September 23, 2022, MemoryWeb filed its Response in the Apple
`
`proceeding. Apple, Paper 20. Again, MemoryWeb did not assert an RPI issue or
`
`reference the Unified proceeding; nor did it suggest Apple should be estopped
`
`because of an RPI relationship to Unified.
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`On October 11, 2022, MemoryWeb filed a Sur-Reply in the Unified
`
`proceeding. Unified, Paper 35, 23-27 (Oct. 11, 2022) (publicly filed as EX1039 on
`
`11
`
`

`

`IPR2022-00031
`
`Apple Opening Brief on Waiver/Estoppel
`
`Oct. 13, 2022). MemoryWeb again argued that “Samsung and Apple are
`
`[u]nnamed RPIs” and that “Apple and Samsung would be estopped under §315(e)
`
`if they are RPIs…” Id. at 23, 27.
`
`On November 1, 2022, MemoryWeb filed a Request for Oral Argument in
`
`Unified, requesting that the RPI issue be discussed during the hearing. Unified,
`
`Paper 41, 2. On December 16, 2022, counsel for MemoryWeb argued at the
`
`hearing that “the Board must find that Apple and Samsung are real parties-in-
`
`interest in this particular IPR.” Unified, Paper 52, 8 (publicly filed as EX1042 on
`
`Jan. 9, 2023). Notably, counsel for MemoryWeb argued that the Board:
`
`… needs to make a finding about whether Samsung and Apple are
`real parties-in-interest in [the Unified] case so that the estoppel can
`– issue can then be raised in those other proceedings” (i.e., this
`proceeding).
`Id. at 8-9. Apple had no opportunity to participate in or rebut MemoryWeb’s
`
`arguments during this oral hearing.
`
`On January 27, 2023, and January 30, 2023, respectively, MemoryWeb filed
`
`a Request for Oral Argument and a Sur-Reply in the Apple proceeding. Apple,
`
`Paper 30; id., Paper 31. In these papers, MemoryWeb once again did not raise any
`
`RPI or estoppel assertion and never mentioned Unified or its IPR.
`
`On February 2, 2023, MemoryWeb filed a Sur-Reply in the Samsung
`
`proceeding. Samsung, Paper 30. It argued in that paper that “estoppel would apply
`
`12
`
`

`

`IPR2022-00031
`
`Apple Opening Brief on Waiver/Estoppel
`
`if the Board determines [Samsung] is an unnamed RPI in the Unified IPR.” Id. at
`
`33.
`
`On March 8, 2023, the Board issued a confidential order concerning RPI in
`
`the Unified Proceeding. Unified, Paper 56; see id., Paper 57, 1 (Mar. 10, 2023)
`
`(“On March 8, 2023, the Board issued an order finding ‘that Apple Inc. and
`
`Samsung Electronics Co, Ltd. are Real Parties in Interest to this Proceeding[.]’
`
`Paper 56, 34”). MemoryWeb did not provide timely notice of this order or identify
`
`any RPI or estoppel issue in the Apple proceeding following the order.
`
`On March 10, 2023, Unified filed and served on MemoryWeb an Updated
`
`Mandatory Notice in the Unified proceeding identifying Apple and Samsung as
`
`RPIs. Unified, Paper 57, 1.
`
`On March 14, 2023, the Board held an oral hearing in Apple. At the hearing,
`
`MemoryWeb did not mention the March 8 RPI order (Unified, Paper 56), Unified’s
`
`Updated Mandatory Notice (Unified, Paper 57), or otherwise raise any RPI issue,
`
`and did not contend that Apple should be estopped from arguing any issues at the
`
`hearing or otherwise continuing with or maintaining the entirety of its proceeding.
`
`Apple, Paper 44.
`
`Also on March 14, 2023, the Board issued a confidential FWD in the Unified
`
`proceeding. Unified, Paper 58.
`
`13
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`

`

`IPR2022-00031
`
`Apple Opening Brief on Waiver/Estoppel
`
`Approximately two hours after the oral hearing in Apple concluded,
`
`MemoryWeb’s counsel sent counsel for Apple an email raising for the first time
`
`RPI and estoppel issues. EX1093, 10. In that email, MemoryWeb’s counsel
`
`stated:
`
`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).
`
`Id.
`
`On March 16, 2023, the Board conducted an oral hearing in the Samsung
`
`proceeding, during which MemoryWeb raised RPI and estoppel issues. Samsung,
`
`Paper 34, 30, 64.
`
`III. ARGUMENT
`A. MemoryWeb Cannot Raise an RPI Argument in These
`Proceedings Now.
`
`In this proceeding, by not timely raising an RPI issue of which it has been
`
`aware since 2021, MemoryWeb has waived and/or forfeited its ability to now
`
`argue that Apple and Unified are RPIs of one another or to introduce new evidence
`
`on such an issue. There is no basis to excuse MemoryWeb’s delay given that it
`
`was both intentional and has prejudiced Apple.
`
`14
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`

`

`IPR2022-00031
`
`Apple Opening Brief on Waiver/Estoppel
`
`1.
`
`To Be Timely, a Patent Owner Must Raise an RPI Issue No
`Later than Its POR and Must Raise It In the Proceeding Where
`It Contends a Petitioner Should Be Estopped.
`
`Section 312 requires any petition to “identif[y] all real parties in interest. . .”
`
`35 U.S.C. § 312(a)(2). Additionally, parties must file notices of related matters to
`
`“[i]dentify any other judicial or administrative matter that would affect, or be
`
`affected by, a decision in the proceeding.” 37 C.F.R. § 42.8(b)(2).
`
`If a patent owner disagrees with a petitioner’s RPI identification as being
`
`either over- or under-inclusive, the latest time a patent owner may lodge such an
`
`argument or objection is in the POR. Numerous Board decisions recognize that
`
`deadline, holding that failing to raise an RPI issue in the POR forfeits and/or
`
`waives the issue.3 See, e.g., Unified Patents v. JustService.net LLC, IPR2020-
`
`01258, 2022 WL 494800, at *1 (PTAB Feb. 16, 2022) (“Patent Owner did not
`
`raise the RPI issue in its post-institution Response. We agree with Petitioner that
`
`Patent Owner has thus forfeited any RPI arguments.”); Unified Patents Inc. v.
`
`Mobility Workx, LLC, IPR2018-01150, 2019 WL 6481774, at *1 (PTAB Dec. 2,
`
`2019) (“Patent Owner argued in its Preliminary Response that Petitioner failed to
`
`name all real parties in interest (RPIs) in its Petition as required by 35 U.S.C. §
`
`
`As these decisions illustrate, the Board has used the terms “forfeiture” and
`
`3
`
`“waiver” interchangeably.
`
`15
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`IPR2022-00031
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`Apple Opening Brief on Waiver/Estoppel
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`312(a)([2])…. Patent Owner does not present this argument in its Patent Owner
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`Response and, therefore, has waived it.”); Funai Elec. Co. v. Gold Charm Ltd., No.
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`IPR2015-01468, 2016 WL 7995297, at *22 (PTAB Dec. 27, 2016) (same); Unified
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`Patents Inc. v. Nonend Inventions N.V., IPR2016-00174, Paper 26 at 6-7 (PTAB
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`May 8, 2017) (patent owner waived RPI arguments because it did not present its
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`RPI contentions in its patent owner response).
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`The same is true when the patent owner tries to belatedly raise an RPI issue
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`in a different proceeding. In Apple Inc. v. Uniloc 2017 LLC, IPR2019-01667,
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`Unified filed a petition challenging a Uniloc patent (IPR2019-00453, Paper 2 (Dec.
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`31, 2018)), and Apple later filed a separate petition challenging the same patent
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`(IPR2019-01667, Paper 1 (Oct. 16, 2019)). Uniloc asserted that Apple was an RPI
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`in the separate Unified proceeding (No. IPR2019-00453 POR, Paper 13, 19-34
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`(Nov. 5, 2019)), but did not mention RPI in its POR in the Apple proceeding (No.
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`IPR2019-01667, Paper 10 (July 14, 2020)). Instead, Uniloc asserted for the first
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`time in its Sur-Reply that Apple should be estopped in the Apple proceeding
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`because it should have been found to be an RPI in the Unified proceeding (even
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`though the Board in Unified had previously found to the contrary). See No.
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`IPR2019-01667, Paper 13, 2-6 (Nov. 17, 2020). The Board found that Uniloc
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`raised the RPI/estoppel issue too late: “We agree with Petitioner that Patent Owner
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`has not provided a persuasive reason for raising estoppel for the first time in its
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`16
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`IPR2022-00031
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`Apple Opening Brief on Waiver/Estoppel
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`Sur-reply. Patent Owner’s arguments are untimely, as are Patent Owner’s
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`discovery requests.” No. IPR2019-01667, Paper 49, 7-8 (Apr. 7, 2021).
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`In addition to these well-established timing requirements, it is also clear that
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`the proper proceeding in which to raise an RPI issue as between Apple and Unified
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`was this proceeding. The Director’s decision explicitly holds as much: “The
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`Board should not have determined whether Apple and Samsung are RPIs” in the
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`Unified proceeding, but “can and should make a determination of the real parties in
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`interest or privity in any proceeding in which that determination may impact the
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`underlying proceeding, for example, but not limited to, a time bar under 35 U.S.C.
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`§ 315(b) or an estoppel under 35 U.S.C. § 315(e) that might apply.” Unified, Paper
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`76, 5 (May 22, 2023).
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`2. MemoryWeb Failed to Timely Raise an RPI Issue It Plainly
`Could Have.
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`In this proceeding, unlike both Unified and Samsung, MemoryWeb never
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`raised an RPI issue before the evening of March 14, 2023—roughly two hours
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`after the oral hearing in this proceeding concluded and the proceeding had been
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`submitted for decision by the Board. EX1093, 10.
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`MemoryWeb also could have raised its Apple-Unified RPI assertions long
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`before it filed its POR in Apple—it first alleged an RPI relationship existed
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`between Apple and Unified nine months before MemoryWeb filed its POR here.
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`Unified, Paper 8, 22-28 (Dec. 17, 2021); Apple, Paper 20 (Sept. 23, 2022).
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`17
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`IPR2022-00031
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`Apple Opening Brief on Waiver/Estoppel
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`Notably, Unified did assert a Samsung-Unified RPI relationship existed in the
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`Samsung proceeding independent from its assertions of estoppel, and did that in
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`March of 2022, almost a year before it first raised an RPI issue in Apple. See
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`Samsung, Paper 8, 30-31 (Mar. 16, 2022); see also id., Paper 10, 1 (Apr. 26, 2022);
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`id., Paper 19, 64-65 (Sept. 6, 2022); id., Paper 30, 33 (Feb. 2, 2023).
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`The papers MemoryWeb filed in Unified—to the extent Apple can see and
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`make reference to them—also show that MemoryWeb had obtained its RPI-related
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`evidence in Unified before September of 2022.4 See, e.g., Unified POPR, Paper 8,
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`22-28 (Dec. 17, 2021) (citing Exhibits EX2009, EX2010, EX2011, EX2012,
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`EX2013, EX2014, EX2015, EX2016, EX2017, EX2018, and EX2019); id., POR,
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`Paper 23, viii-ix, 18-23 (June 6, 2022) (further entering Exhibits EX2027, EX2028,
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`EX2029, EX2030, EX2031, EX2032, EX2033, EX2034, and citing EX2036
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`(Deposition of Unified CEO (May 26, 2022))).
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`MemoryWeb thus could have raised its RPI assertions and sought to
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`introduce its RPI evidence in the Apple proceeding long before it filed its POR in
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`this proceeding in September 2022. Apple, Paper 20 (Sept. 23, 2022).
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`MemoryWeb, however, elected to not do either in this proceeding up to and even
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`after its POR was filed. Under the rationale employed by the Board in many
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`4 Many of these exhibits are inaccessible to Apple or heavily redacted.
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`18
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`IPR2022-00031
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`Apple Opening Brief on Waiver/Estoppel
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`analogous proceedings, MemoryWeb has waived and/or forfeited its ability to raise
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`the RPI issue in this proceeding.
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`3.
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`There Is No Basis to Excuse MemoryWeb’s Intentional and
`Dilatory Conduct.
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`A “late action will be excused on a showing of good cause or upon a Board
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`decision that consideration on the merits would be in the interests of justice.” 37
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`C.F.R. § 42.5(c)(3). “The PTO considers the interests of justice as slightly higher
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`than good cause. . .” Ultratec, Inc. v. CaptionCall, LLC, 872 F.3d 1267, 1272
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`(Fed. Cir. 2017); see also Patent Trial and Appeal Board, Consolidated Trial
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`Practice Guide, 24 (Nov. 2019) (referring to the “good cause” standard as “slightly
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`more liberal” than the “interests of justice” standard); 77 Fed. Reg. 48,612, 48,641
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`(Aug. 14, 2012) (similar). Because MemoryWeb cannot establish “good cause” on
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`the present record, it follows a fortiori that it cannot establish that the “interests of
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`justice” would be met based on the same record.
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`a.
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`Good Cause Should Not Be Found When a Party
`Intentionally Delays Acting or When Excusing Delay
`Prejudices the Other Party.
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`The Board requires a party to establish “good cause” to excuse or forgive a
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`missed deadline in an IPR proceeding. 37 C.F.R. § 42.5(c)(3). The “good cause”
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`standard looks to the moving party’s (i) ability to have acted in a timely manner,
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`(ii) its diligence in seeking to remedy its delinquent conduct, and (iii) whether
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`19
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`IPR2022-00031
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`Apple Opening Brief on Waiver/Estoppel
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`excusing the delay prejudices the non-moving party. MemoryWeb’s conduct fails
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`each of these metrics.
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`Courts have found no “good cause” exists when a “proposed amendment
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`rests on information that the party knew, or should have known, in advance of the
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`deadline.” High Point Design LLC v. Buyer’s Direct, Inc., 621 F. App’x 632, 644
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`(Fed. Cir. 2013) (internal quotes omitted). By the same token, “a defendant’s
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`tactical wait-and-see bypassing of an opportunity to” raise an issue, especially
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`when “the course of proceedings might well have been altered by” raising it
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`sooner, is a “scenario that presents at least an obvious starting point for a claim of
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`forfeiture.” In re Micron Tech., Inc., 875 F.3d 1091, 1102 (Fed. Cir. 2017)
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`(discussing forfeiture of venue objections).
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`The PTO’s “good cause” articulations are in accord. Most notably, during
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`the rulemaking process for 37 C.F.R. § 42.5(c)(3), “[o]ne comment requested
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`guidance as to what would be considered ‘good cause’ or ‘in the interests of
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`justice,’ justifying an extension of time or a late submission to avoid inconsistent
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`application of the rule.” 77 Fed. Reg. at 48,628. After observing that the
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`“standard is specific to the particular facts of the proceeding and must be made on
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`a case-by-case basis,” the agency provided an “example where times may be
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`extended”—namely, when, “through no fault of either party, relevant information
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`comes to light that requires briefing that could not occur in the allotted times for
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`IPR2022-00031
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`Apple Opening Brief on Waiver/Estoppel
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`taking action.” Id. (emphases added). Logically, then, a party who is at fault, or
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`who could have complied with “allotted times,” should have a much steeper
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`burden to establish good cause. That is consistent with earlier decisions of the
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`Board, where it has refused to