IPR2022-00031
`Patent Nos. 10,621,228
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`Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, INC.
`Petitioner
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`v.
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`MEMORYWEB, LLC
`Patent Owner
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`Patent No. 10,621,228
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`Inter Partes Review No. IPR2022-00031
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`PATENT OWNER’S RESPONSE BRIEF ON ALLEGED WAIVER AND
`FORFEITURE
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`Patent Nos. 10,621,228
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`Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC.
`Petitioner
`
`
`v.
`
`MEMORYWEB, LLC
`Patent Owner
`
`Patent No. 10,621,228
`
`
`
`
`
`
`
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`Inter Partes Review No. IPR2022-00031
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`PATENT OWNER’S RESPONSE BRIEF ON ALLEGED WAIVER AND
`FORFEITURE
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`IPR2022-00222
`Patent No. 10,621,228
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`PO’s Response Brief on Alleged Waiver/Forfeiture
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`TABLE OF CONTENTS
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`Page(s)
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`INTRODUCTION ............................................................................................... 1
`I.
`II. FACTUAL BACKGROUND .............................................................................. 2
`A.
`The Unified IPR ......................................................................................... 2
`B.
`Apple’s IPR................................................................................................. 3
`III. ARGUMENT ....................................................................................................... 3
`A. MemoryWeb Did Not Forfeit or Waive the Relief Sought in its
`Contemplated Motion to Terminate ...................................................... 3
`1. MemoryWeb’s Motion to Terminate and Discovery is Not Untimely .. 4
`If Required, Good Cause Exists to Allow MemoryWeb Limited
`Discovery and Authorization to Move to Terminate ............................. 7
`Apple is Not Prejudiced ........................................................................ 8
`The Unified Protective Order Prevented MemoryWeb from
`Introducing the RPI Evidence from Unified ............................... 9
`The Unified Final Written Decision was a Condition Precedent to
`MemoryWeb’s Estoppel Argument ..................................................... 10
`D. Apple’s “Constitutional and Statutory” Rights are not Violated .............. 11
`IV. CONCLUSION .................................................................................................. 13
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`B.
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`C.
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`1.
`2.
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`i
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`IPR2022-00222
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`PO’s Response Brief on Alleged Waiver/Forfeiture
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Abbott Lab’ys v. Cordis Corp.,
`710 F.3d 1318 (Fed. Cir. 2013) .......................................................................... 11
`
`Apple Inc. v. Uniloc 2017 LLC
`IPR2019-01667, Paper 49 (PTAB Apr. 7, 2021) ............................................. 4, 5
`Glob. Shade Corp. v. with-U E-Com. (Shanghai) Co., Ltd.,
`IPR2021-00365, Paper 36 (PTAB July 25, 2022) .......................................... 9, 10
`Kofax, Inc. v. Uniloc USA, Inc. et al.,
`IPR2015-01207, Paper 22 (PTAB June 2, 2016) ......................................... 11, 12
`Kofax, Inc. v. Uniloc USA, Inc. et al.,
`IPR2015-01207, Paper 24 (PTAB July 20, 2016) .............................................. 12
`
`Microsoft Corp. v. IPA Techs., Inc.,
`IPR2019-00810, Paper 8 at 3 (PTAB Sep. 5, 2019) ............................................. 8
`United States v. Olano,
`507 U.S. 725 (1993) .............................................................................................. 3
`Statutes
`35 U.S.C. § 315(e)(1) ................................................................................... 1, 2, 5, 10
`Regulations
`37 C.F.R. § 42.5(c)(3) ................................................................................................ 7
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`ii
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`IPR2022-00222
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`PO’s Response Brief on Alleged Waiver/Forfeiture
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`LISTING OF EXHIBITS
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`Exhibit
`No.
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`2001
`
`WITHDRAWN
`
`Description
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`2002
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`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`Hyunmo Kang et al., Capture, Annotated, Browse, Find, Share:
`Novel Interfaces for Personal Photo Management, International
`Journal of Human-Computer Interaction, 23(3), 315-37 (2007)
`(“Kang”)
`
`Jaffe et al., Generating Summaries and Visualization for Large
`Collections of Geo-Referenced Photographs, Proceedings of the
`8th ACM SIGMM International Workshop on Multimedia
`Information Retrieval, MIR 2006, October 26-27, 2006 (“Jaffe”)
`
`Allan Hoffman, Create Great iPhone Photos: Apps, Tips, Tricks,
`and Effects, No Starch Press, Inc. (Copyright 2011)
`
`U.S. Patent Publication No. 2010/0171763 (“Bhatt”)
`
`Feb. 8, 2022 eBay Order Confirmation for “Apple Aperture 3
`Upgrade for Mac Brand New Photography”
`
`Apple Inc. Aperture Software License Agreement
`
`Declaration of John Leone, Cisco Systems, Inc. v. Centripetal
`Networks, Inc., IPR2018-01436, EX1005 (July 20, 2018)
`
`Aperture 3 User Manual,
`http://documentation.apple.com/aperture/usermanual (Archive.org:
`July 26, 2010)
`
`Aperture 3 User Manual,
`http://documentation.apple.com/aperture/usermanual (Archive.org:
`Feb. 17, 2010)
`
`2011
`
`RESERVED
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`iii
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`IPR2022-00222
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`Exhibit
`No.
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`PO’s Response Brief on Alleged Waiver/Forfeiture
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`
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`Description
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`2012
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`2013
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`2014
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`2015
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`2016
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`2017
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`2018
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`2019
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`2020
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`2021
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`2022
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`2023
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`2024
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`2025
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`2026
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`RESERVED
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`Apple, Inc., www.apple.com, (Archive.org: Mar. 12, 2010)
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`Devin Coldewey, Review: Aperture 3, CrunchGear
`(https://techcrunch.com/2010/03/19/review-aperture-3/) (last
`accessed Feb. 2, 2022)
`
`Hilary Greenbaum, Who Made Google’s Map Pin?, The New York
`Times, (Apr. 18, 2011)
`
`Google Developers, Customizing a Google Map: Custom Markers
`(last accessed Feb. 17, 2022)
`
`KML4Earth, Google Earth/Maps Public Icons,
`http://kml4earth.appspot.com:80/icons.html (Archive.org May 27,
`2012)
`
`Declaration of Angelo J. Christopher
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`RESERVED
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`RESERVED
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`Apple, Inc., “Apple Human Interface Guidelines” (Aug. 20, 2009)
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`Wilbert O. Galitz, “The Essential Guide to User Interface Design:
`An Introduction to GUI Design Principles and Techniques,” Wiley
`Publishing, Inc. (3rd Ed.) (2007)
`
`Transcript of Deposition of Dr. Loren Terveen (Vol. I)
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`Transcript of Deposition of Dr. Loren Terveen (Vol. II)
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`Declaration of Rajeev Surati, Ph.D
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`Transcript of Deposition of Matthew Birdsell
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`IPR2022-00222
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`Exhibit
`No.
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`PO’s Response Brief on Alleged Waiver/Forfeiture
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`Description
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`2027
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`2028
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`2029
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`2030
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`2031
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`2032
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`2033
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`2034
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`2035
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`2036
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`2037
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`2038
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`2039
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`2040
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`2041
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`2042
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`2043
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`Affidavit of Nathaniel E Frank-White
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`RESERVED
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`RESERVED
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`RESERVED
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`RESERVED
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`eBay Receipt (August 15, 2022)
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`Jennifer Tidwell, Designing Interfaces, O’Reilly (1st Ed. 2005)
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`RESERVED
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`Patent Owner’s Demonstrative Exhibit
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`Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413,
`Petitioner’s Updated Mandatory Notices (Paper 57)
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`Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413, Final
`Written Decision (Public Version) (Paper 67)
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`Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413,
`Decision Granting Director Review (Public Version) (Paper 76)
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`Email from Counsel for Patent Owner to Counsel for Petitioner
`Regarding MemoryWeb’s Motion to Terminate (Mar. 14, 2023)
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`Email Chain between Counsel for Patent Owner and Counsel for
`Petitioner (Jun. 2-8, 2023)
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`Unified Patents Document Subpoena, Attachment A
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`Unified Patents Testimony Subpoena, Attachment A
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`Apple Document Production Requests, Attachment A
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`IPR2022-00222
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`Exhibit
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`PO’s Response Brief on Alleged Waiver/Forfeiture
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`Description
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`2044
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`2045
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`2046
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`Declaration of Jennifer Hayes
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`Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413, Order
`Identifying Real Party in Interest (Public Version) (Paper 79)
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`Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413,
`Petitioner’s Motion to Seal and For Entry of Protective Order
`(Paper 10)
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`Patent No. 10,621,228
`Pursuant to the Board’s June 15, 2023 Order (Paper 45), MemoryWeb, LLC
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`(“MemoryWeb”) hereby submits its response to Apple Inc.’s (“Apple”) Brief on
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`Waiver and Estoppel (Paper 46).
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`I.
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`INTRODUCTION
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`Consistent with applicable Board precedent, MemoryWeb proved that Unified
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`Patents, LLC (“Unified”) failed to identify Apple as an RPI in IPR2021-01413
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`(hereinafter, “Unified”). When Unified resulted in a final written decision,
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`MemoryWeb immediately sought to terminate this proceeding because Apple is
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`estopped from proceeding under at least 35 U.S.C. § 315(e)(1). Apple claims that
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`MemoryWeb waived or forfeited its right to argue estoppel because it violated
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`“well-established” precedent for addressing RPI issues, yet Apple failed to identify
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`a single Board rule or decision that supports its position.
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`According to Apple, MemoryWeb needed to fully litigate the RPI issue a
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`second time in this proceeding in order to properly raise the issue. However, prior
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`to the Director’s Decision, nothing suggested that MemoryWeb would have to re-
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`prove in this proceeding that Unified failed to name Apple as an RPI. Indeed,
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`Apple’s position here would require patent owners like MemoryWeb to not only
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`endure multiple PTAB proceedings addressing the same prior art and validity
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`challenges by different challengers, but also to litigate multiple times the same RPI
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`issues in multiple proceedings. Such a result is highly inefficient and prejudicial to
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`patent owners. To the extent the Board considers Apple’s waiver/forfeiture
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`arguments, good cause exists to consider MemoryWeb’s estoppel arguments now
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`given that the Board recognizes that there has not “been a circumstance like this
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`before” in the first instance, and subsequent intervening guidance from the Director.
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`EX3003, 49:7-20.
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`II.
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`FACTUAL BACKGROUND
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`MemoryWeb has defended three inter partes reviews filed by Unified, Apple,
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`and Samsung Electronics Co., Ltd. (“Samsung”). Paper 47 (“MemoryWeb Br.”), 1.
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`A. The Unified IPR
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`Unified’s petition challenging the ‘228 patent identified Unified as the sole
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`RPI (hereinafter, “Unified”). MemoryWeb Br., 1; EX2045, 2. MemoryWeb
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`challenged Unified’s identification of itself as the sole RPI and obtained discovery
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`from Unified. MemoryWeb Br., 2.
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`On March 8, 2023, the Board found that Apple and Samsung should have been
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`identified as RPIs in Unified (“the RPI Order”). EX2045, 34. The Board reached this
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`issue “to avoid unnecessary prejudice” to MemoryWeb in having to “unnecessarily
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`defend against two subsequent IPR challenges.” Id., 6. The RPI Order also found
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`that the “underlying purpose of Section 315(e) would potentially be frustrated” if it
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`declined to consider the RPI. Id. The Board entered a Final Written Decision in
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`Unified on March 14, 2023 (the “the Unified FWD”). EX2044, 3-5.
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`The Director vacated the RPI Order because, in the Director’s view,
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`determining whether Apple and Samsung were RPIs was “not necessary to resolve
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`the” Unified IPR (hereinafter, “the Director Decision”). MemoryWeb Br., 3-4;
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`EX2038.
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`B. Apple’s IPR
`Apple filed its Petition challenging the ‘228 patent on October 30, 2021.
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`Apple was aware of the Unified IPR at least as early as October 2021 because its
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`Petition affirmatively identified the Unified IPR as a related matter. Pet., 2-3.
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`Apple’s Petition identifies Apple as the sole RPI in this proceeding. Id., 2.
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`III. ARGUMENT
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`A. MemoryWeb Did Not Forfeit or Waive the Relief Sought in its
`Contemplated Motion to Terminate
`
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`“Waiver is different from forfeiture.” United States v. Olano, 507 U.S. 725,
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`733 (1993). Specifically, forfeiture involves “the failure to make the timely assertion
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`of a right,” whereas “waiver is the intentional relinquishment or abandonment of a
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`known right.” Id. (quoting John v. Zerbst, 304 U.S. 458, 464 (1938)). The Federal
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`Circuit has instructed that “it is worth attending to which label is the right one in a
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`particular case” because these “scenarios can have different consequences for
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`challenges raised on appeal.” In re Google Tech. Holdings LLC, 980 F.3d 858, 862
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`(Fed. Cir. 2020).
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`As discussed below, Apple has not established that MemoryWeb failed to
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`make the timely assertion of its rights or intentionally relinquished or abandoned a
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`known right. Apple has not identified any authority prior to the Director Decision
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`suggesting that MemoryWeb needed to introduce arguments and evidence in this
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`proceeding regarding Apple’s RPI status in Unified to reserve MemoryWeb’s rights
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`in the event Unified resulted in a final written decision.
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`1. MemoryWeb’s Motion to Terminate and Discovery is Not
`Untimely
`Apple argues that “[i]f a patent owner disagrees with a petitioner’s RPI
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`identification . . . the latest time a patent owner may lodge such an argument or
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`objection is in the POR.” Apple Br., 15. MemoryWeb did that in Unified.
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`MemoryWeb does not contend that Apple failed to name Unified as an RPI in this
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`proceeding. Thus, there was nothing for MemoryWeb to respond or object to in its
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`Response in this proceeding with respect to the identification of RPIs.
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`Because MemoryWeb is challenging Unified’s RPI identification (not
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`Apple’s), Apple argues that the Board’s precedent regarding the timing for RPI
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`objections should also apply “when the patent owner tries to belatedly raise an RPI
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`issue in a different proceeding.” Apple Br., 16. The only authority Apple offers for
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`this assertion is Apple Inc. v. Uniloc 2017 LLC, IPR2019-01667, Paper 49 (PTAB
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`Apr. 7, 2021) (“Uniloc”). Id., 16-17.
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`In Uniloc, Unified filed a petition challenging a Uniloc patent (IPR2019-
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`00453), and Apple subsequently filed its own petition (IPR2019-01667). In the
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`Unified proceeding, the Board found that Apple was not an unnamed RPI. IPR2019-
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`00453, Paper 38. Nevertheless, patent owner (Uniloc) requested authorization to file
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`a Motion to Terminate the Apple proceeding based on estoppel under 35 U.S.C. §
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`315(e)(1). Id., Paper 25, 3. Notably, the Board granted patent owner’s request (id.,
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`Paper 33, 2), despite it being patent owner’s first time raising the RPI issue in the
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`Apple proceeding (id., Paper 49, 8). In the Motion to Terminate, patent owner argued
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`that Apple “should have been named as a real party in interest or privy of Unified
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`Patents in the 453 proceeding and, therefore, is estopped.” Id., Paper 49, 9. The
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`Board ultimately denied patent owner’s motion because it sought to challenge “the
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`correctness of a Final Decision entered in a different proceeding” and the Board must
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`“assum[e] that the conclusion in the 453 Final Decision is correct and that Unified
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`Patents correctly identified itself as the sole real party in interest in the 453
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`proceeding.” Id., 10. Thus, as most, Uniloc stands for the proposition that failure to
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`raise an RPI issue in the earlier proceeding prevented patent owner from doing so
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`in the later proceeding.
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`As demonstrated in Uniloc, MemoryWeb properly raised the RPI issue in the
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`earlier proceeding. And, the Board here cannot assume Unified correctly named
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`itself as the sole RPI like in Unified because the Board has already found otherwise.
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`See EX2045. Thus, Uniloc further confirms that MemoryWeb followed the Board’s
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`guidance in litigating Apple’s RPI status in Unified.
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`Apple also cites the Director Decision in Unified as supporting its view of the
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`Board’s “well-established timing requirements.” Apple Br., 17. As shown above,
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`however, the Director Decision flipped the timing requirements by stating that the
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`Board should not have addressed the RPI issue in the earlier proceeding, and
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`should do so in the later proceeding. In addition, and at risk of stating the obvious,
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`MemoryWeb could not follow the Director Decision’s guidance when it filed its
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`Response because the Director Decision did not issue until May 22, 2023 – 8 months
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`after MemoryWeb’s Response, i.e., the time at which Apple asserts it should have
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`been done. Apple’s suggestion that it was “clear that the proper proceeding in which
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`to raise an RPI issue . . . was this proceeding” prior to the Director Decision is
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`undermined by the Board’s actions in Unified. EX2045; EX3004, 49:7-20
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`(expressing doubts as to whether “there’s been a circumstance like this before”).
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`Moreover, while Director Decision states that the RPI issue should be decided
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`in the second of two related IPRs, it does not indicate when the Board should decide
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`that issue in the second IPR. In the absence of guidance to the contrary, the Board
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`should find MemoryWeb was not untimely in raising the issue at the time of the
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`Final Written Decision in Unified.
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`Apple notes
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`that MemoryWeb “assert[ed] a Samsung-Unified RPI
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`relationship existed in the Samsung proceeding . . . in March of 2022.” Apple Br.,
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`18. This does not evidence waiver or forfeiture for several reasons. First, as
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`discussed herein, Apple offers no authority holding that MemoryWeb was obligated
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`to assert an Apple-Unified RPI relationship prior to the issue of estoppel becoming
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`ripe. Second, MemoryWeb argued in Unified that estoppel was the basis for deciding
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`RPI. EX2045, 4. This refutes any suggestion that MemoryWeb intentionally
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`abandoned or relinquished its rights. Third, from a practical perspective, even if
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`MemoryWeb had included the same arguments as it did in the Samsung proceeding,
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`there is little doubt that the parties would be in the exact same position as they are
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`today – the corresponding Samsung matters demonstrates that Apple’s likely
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`assertion that it was not an RPI in response to MemoryWeb’s arguments would
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`likely have garnered the same result as in the Samsung proceeding, i.e., the Board
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`denying MemoryWeb’s assertions and proceeding in the same manner to the present
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`procedural posture.
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`B.
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`If Required, Good Cause Exists to Allow MemoryWeb Limited
`Discovery and Authorization to Move to Terminate
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`Even if, arguendo, the Board credits Apple’s arguments and considers
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`MemoryWeb’s requested relief to be a “late action,” good cause exists to excuse any
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`untimeliness in introducing evidence and arguments regarding Apple’s RPI status in
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`the Unified IPR. 37 C.F.R. § 42.5(c)(3). As discussed above and in MemoryWeb’s
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`Opening Brief, it was reasonable and appropriate for MemoryWeb to litigate Apple’s
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`RPI status in Unified rather than this proceeding. Supra, § III.A; MemoryWeb Br.,
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`9-20. The Director Decision represents “new guidance” or “an intervening change
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`in the law,” which constitutes good cause. Microsoft Corp. v. IPA Techs., Inc.,
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`IPR2019-00810, Paper 8 at 3 (PTAB Sep. 5, 2019).
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`1.
`Apple is Not Prejudiced
`Apple claims that “good cause” cannot exist because Apple has been
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`prejudiced, and under the Board’s precedent, “if a moving party’s delay does cause
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`prejudice to the non-moving party, good cause should not be found.” Apple Br., 23.
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`None of Apple’s proffered authority stands for this proposition. At best, prejudice to
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`the non-moving party is just one factor the Board may consider in determining
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`whether good cause exists. See id., 22. In any event, Apple has not established any
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`meaningful prejudice.
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`The only way Apple alleges that it was “prejudiced” is that “[i]f MemoryWeb
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`had made an RPI argument in this proceeding before September 2022 . . . then Apple
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`could have sought to align the schedules of the Unified and Apple proceedings so
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`that the FWDs would issue on the same date.” Apple Br., 24-25. It is hard to see how
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`the lack of scheduling alignment am
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`Any alleged prejudice to Apple pales in comparison to the prejudice to
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`MemoryWeb if Apple’s arguments are accepted. It would be manifestly unjust and
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`fundamentally unfair to MemoryWeb if MemoryWeb were procedurally barred from
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`seeking to terminate this IPR, even though it successfully proved that Apple was an
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`RPI to the Unified IPR, in view of the Director Decision’s new guidance coming too
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`late for MemoryWeb to raise its RPI arguments earlier in this proceeding. Further,
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`depriving MemoryWeb of at least the opportunity to present its estoppel arguments
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`would be contrary to the purposes of the estoppel statute, which is to prevent
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`MemoryWeb from having to “unnecessarily defend against two subsequent IPR
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`challenges filed by Apple and Samsung.” EX2045, 6. Similarly, to accept Apple’s
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`arguments would require patent owners in the future to face the untenable position
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`of having to not only face multiple validity challenges (including those relying on
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`the same prior art references) and also endure having to prove in multiple
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`proceedings the existence of an RPI issue. Such is not the intent of the PTAB’s
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`statutory mandate.
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`2.
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`The Unified Protective Order Prevented MemoryWeb from
`Introducing the RPI Evidence from Unified
`Apple argues MemoryWeb waived or forfeited its estoppel arguments because
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`MemoryWeb “possessed the information and evidence” regarding Unified’s RPI
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`status before its Response. Apple Br., 23-24. As an initial matter, the evidence
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`MemoryWeb seeks in its requested additional discovery has not yet been produced.
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`Apple also ignores that the protective order in Unified that barred MemoryWeb from
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`simply introducing the evidence from Unified into evidence in this proceeding.
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`MemoryWeb Br., 2, 13-14; Ex. 2045. In this case, “the better course is to have a
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`complete record of the evidence to facilitate public access as well as appellate
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`Patent No. 10,621,228
`review.” Glob. Shade Corp. v. with-U E-Com. (Shanghai) Co., Ltd., No. IPR2021-
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`00365, Paper 36 at 92 (PTAB July 25, 2022).
`
`C. The Unified Final Written Decision was a Condition Precedent to
`MemoryWeb’s Estoppel Argument
`Apple acknowledges, as it must, that it could not be estopped unless and until
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`Unified resulted in a final written decision. Apple Br., 26-27. That did not occur until
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`March 14, 2023. Nevertheless, Apple argues that MemoryWeb waived or forfeited
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`its estoppel arguments because the RPI issue is “inextricably linked.” Id., 26.
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`Estoppel applies if three conditions are met: (1) the second IPR petitioner was
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`an RPI in the first IPR; (2) the grounds in the second IPR reasonably could have
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`been asserted in the first IPR; and (3) the first IPR results in a final written decision.
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`35 U.S.C. § 315(e). If Apple’s arguments are accepted, the parties and the Board
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`must expend resources litigating the first condition (including potential third-party
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`subpoenas), even though the third condition has not yet and may never occur. Apple
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`does not argue that MemoryWeb waived or forfeited its arguments regarding the
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`second condition by failing to raise them in its Response or Sur-Reply. See Apple
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`Br., 26-29. It would be illogical to require the patent owner to argue only one of the
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`three conditions for estoppel in its response to reserve its rights to seek estoppel later,
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`especially given the potential that the exercise may become moot if the third
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`condition never occurs.
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`Patent No. 10,621,228
`Instead, the better approach would be to wait until the third condition occurs
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`or is imminent before the parties expend resources litigating the remainder of the
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`requirements for estoppel. And even if Apple’s arguments regarding the proper
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`procedure for raising estoppel were accepted (which they should not), good cause
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`exists to consider MemoryWeb’s arguments given that this issue has never been
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`addressed before. Supra, § III.B.
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`D. Apple’s “Constitutional and Statutory” Rights are not Violated
`Apple’s claim that “[i]f the Board does not conclude that MemoryWeb has
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`forfeited and/or waived the RPI and estoppel issues, these proceedings will run afoul
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`of Apple’s constitutional and statutory rights” is objectively baseless. Apple Br., 29.
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`Apple will be able to examine Unified’s CEO regarding his testimony that
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`MemoryWeb relied on in Unified to prove that Apple was an RPI. EX3005. Apple
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`will also have a full and fair opportunity to respond to MemoryWeb estoppel
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`arguments, including Apple’s RPI status in Unified. Id. Under these circumstances,
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`Apple cannot deny that it will have “notice and an opportunity to be heard by a
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`disinterested decision-maker,” i.e., due process. Abbott Lab’ys v. Cordis Corp., 710
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`F.3d 1318, 1328 (Fed. Cir. 2013).
`
`Apple also argues that “adjudicating Apple’s alleged status as an RPI in the
`
`Unified proceeding was a violation of Apple’s fundamental due process and
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`statutory rights.” Apple Br., 29-30. The Board has found otherwise. In Kofax, Inc. v.
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`Patent No. 10,621,228
`Uniloc USA, Inc. et al., the Board found that Zebra, who was not a party to the IPR,
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`was an RPI. IPR2015-01207, Paper 22 at 1-2, 11-12 (PTAB June 2, 2016). Zebra
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`requested rehearing and argued that it did not participate in the earlier proceeding
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`and that it was “deprived . . . of its due process rights.” Kofax, Inc. v. Uniloc USA,
`
`Inc. et al., IPR2015-01207, Paper 24 at 1, 4 (PTAB July 20, 2016). The Board
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`rejected Zebra’s due process argument because there was “no authority for an
`
`alleged real party in interest (RPI) to be notified or permitted to present any facts
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`or arguments on this issue in the context of an RPI determination.” Id. at 4-5
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`(internal quotation marks omitted). Kofax belies Apple’s due process arguments and
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`further supports that litigating Apple’s RPI status in Unified was consistent with
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`Board procedures prior to the Director Decision.
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`Apple also claims surprise and complains that it “has not seen the factual basis
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`for MemoryWeb’s allegations.” Apple Br., 26. This is disingenuous. For starters,
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`Apple is well aware of its business and financial arrangement with Unified,
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`including the benefits of its membership agreement. Apple was also aware of
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`Unified. It defies credulity that a sophisticated litigant like Apple would not have
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`reviewed the public filings in Unified, which contained arguments that Apple was
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`an RPI. Indeed, Apple does not appear to represent that it was unaware of the RPI
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`issue prior to March 2023. To the extent certain evidence was not known to Apple,
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`it was Unified that sealed it. Contrary to Apple’s accusations of “gamesmanship,”
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`Patent No. 10,621,228
`MemoryWeb tried to provide Apple with access to the sealed RPI Order, but Unified
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`refused. EX2039 (informing Apple’s counsel “[w]e requested that Unified allow us
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`to provide you with both the” RPI Order and Unified FWD, but “Unified has refused
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`to allow us to share those with you or provide redacted versions”).
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`IV. CONCLUSION
`For the foregoing reasons, MemoryWeb respectfully requests that the Board
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`find that MemoryWeb did not waive or forfeit its estoppel/RPI arguments or RPI
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`discovery requests. For the reasons set forth in MemoryWeb’s Opening Brief (Paper
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`46) MemoryWeb respectfully requests that the Board issue an order authorizing
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`MemoryWeb to apply for subpoenas directed to Unified and Kevin Jakel in his
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`capacity as CEO of Unified, obtain discovery from Apple, and allow MemoryWeb
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`to proceed with its contemplated motion to terminate based on Apple being estopped
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`from maintaining this proceeding.
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`Respectfully submitted,
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`Dated: July 14, 2023
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`By:
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`13
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`/Jennifer Hayes/
`Jennifer Hayes
`Reg. No. 50,845
`Nixon Peabody LLP
`300 South Grand Avenue,
`Suite 4100,
`Los Angeles, CA 90071-3151
`Tel. 213-629-6179
`Fax 866-781-9391
`
`
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`IPR2022-00222
`Patent No. 10,621,228
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`PO’s Response Brief on Alleged Waiver/Forfeiture
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`CERTIFICATION OF WORD COUNT
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`Pursuant to 37 C.F.R. § 42.24(d), the undersigned hereby certifies that the
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`foregoing Patent Owner’s Response Brief Addressing Alleged Waiver and/or
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`Forfeiture is produced using a 14-point Times New Roman font and contains
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`approximately 2,974 words, which is less than the 3,500 total words permitted by
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`the Board’s June 15, 2023 Order. Paper 45, 3. Counsel relies on the word count of
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`the computer program used to prepare the response on July 14, 2023.
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`
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`Dated: July 14, 2023
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`
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`By:
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`/s/ Jennifer Hayes
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`Lead Counsel for Patent Owner
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`14
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`IPR2022-00222
`Patent No. 10,621,228
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`PO’s Response Brief on Alleged Waiver/Forfeiture
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing Patent Owner’s
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`
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`Response Brief Addressing Alleged Waiver and/or Forfeiture together with all
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`exhibits filed therewith was served on July 14, 2023, upon the following parties via
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`electronic service:
`
`Jeffrey P. Kushan
`Thomas A. Broughan, III
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`jkushan@sidley.com
`tbroughan@sidley.com
`SidleyAppleMemoryWebIPRs@sidley.com
`
`J. Steven Baughman
`Groombridge, Wu, Baughman & Stone LLP
`801 17th Street, NW, Suite 1050
`Washington, DC 20006
`Steve.baughman@groombridgewu.com
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`Counsel for Petitioner, Apple Inc.
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`/s/ Jennifer Hayes
`By:
`Lead Counsel for Patent Owner
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`15
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