Filed: July 14, 2023
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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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`––––––––––––––––––
`
`Case No. IPR2022-00031
`U.S. Patent No. 10,621,228
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`––––––––––––––––––
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`OPENING BRIEF ON GOOD CAUSE, SUPPLEMENTAL INFORMATION,
`AND ADDITIONAL DISCOVERY
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`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`––––––––––––––––––
`
`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 RESPONSE TO PATENT OWNER’S
`OPENING BRIEF ON GOOD CAUSE, SUPPLEMENTAL INFORMATION,
`AND ADDITIONAL DISCOVERY
`
`
`
`
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`IPR2022-00031
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`Apple Response Brief on Waiver/Forfeiture
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`TABLE OF CONTENTS
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`INTRODUCTION ............................................................................................ 1
`I.
`II. ARGUMENT .................................................................................................... 1
`A. MEMORYWEB HAS NOT MET ITS BURDEN TO SHOW GOOD CAUSE
`FOR ITS LATE ACTION AND DELAY. ..................................................... 1
`1. MemoryWeb Did Not Timely Raise RPI or Estoppel. ................... 1
`2. MemoryWeb Did Not Meet Its Burden to Show Good Cause. ...... 4
`B. MEMORYWEB HAS NOT MET ITS BURDEN TO JUSTIFY LATE
`SUBMISSION OF SUPPLEMENTAL INFORMATION. ...............................10
`1. MemoryWeb Could Have Timely Submitted the Information. ....10
`2. MemoryWeb Has Not Shown Consideration of the Untimely
`Evidence Serves the Interests of Justice. .....................................12
`3. MemoryWeb’s Cited Precedent Is Contrary to MemoryWeb’s
`Position. .......................................................................................14
`C. MEMORYWEB SHOULD NOT BE AUTHORIZED TO PURSUE
`ADDITIONAL DISCOVERY. ...................................................................15
`III. CONCLUSION...............................................................................................17
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`Apple Response Brief on Waiver/Forfeiture
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Arris Grp., Inc. v. C-Cation Techs., LLC,
`No. IPR2015-00635, Paper 10 (PTAB May 1, 2015) .......................................... 9
`Kofax, Inc. v. Uniloc USA, Inc.,
`No. IPR2015-01207, 2016 WL 8944779 (PTAB July 20, 2016) ..................... 7, 8
`SharkNinja Operating LLC v. iRobot Corp.,
`No. IPR2020-00734, Paper 11 (PTAB Oct. 6, 2020) ........................................... 6
`Statutes
`35 U.S.C. § 315(e)(1) ............................................................................................. 2, 3
`Regulations
`37 C.F.R. Part 42, Subpart A ................................................................................... 14
`37 C.F.R. § 42.5(c)(3) ................................................................................................ 1
`37 C.F.R. § 42.25(b) .............................................................................................. 1, 4
`37 C.F.R. § 42.123(b) .............................................................................................. 15
`77 Fed. Reg. 48621-22 (Aug. 14, 2012) .................................................................. 12
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`Apple Response Brief on Waiver/Forfeiture
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`I.
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`INTRODUCTION
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`MemoryWeb’s opening brief largely ignores the two requirements that it
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`must satisfy here. It does not show that good cause exists to excuse its intentional
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`delay in raising real-party-in-interest (“RPI”) and estoppel arguments, nor does it
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`show that the late submission of evidence—possessed more than a year before this
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`proceeding was instituted—serves the interests of justice. The Board should deny
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`MemoryWeb’s improper attempt to raise new arguments and introduce new
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`evidence at this late stage of the proceeding.
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`II. ARGUMENT
`A. MemoryWeb Has Not Met Its Burden to Show Good Cause For
`Its Late Action and Delay.
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`To excuse its intentional delay in raising RPI and estoppel arguments in this
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`proceeding, MemoryWeb must establish “good cause or that consideration on the
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`merits would be in the interests of justice.” 37 C.F.R. § 42.5(c)(3). Its opening
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`brief does not come close to doing so.
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`1. MemoryWeb Did Not Timely Raise RPI or Estoppel.
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`MemoryWeb claims it complied with 37 C.F.R. § 42.25(b) because it sought
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`relief “promptly” after the Final Written Decision (“FWD”) issued in IPR2021-
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`01413 (“Unified”). Paper 47, 10 (“MW Br.”). MemoryWeb, however,
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`misunderstands what issues it was required to raise “promptly” (RPI and estoppel)
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`and when it was required to do so (before filing its Patent Owner Response
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`(“POR”)).
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`Issuance of the Unified FWD, standing alone, cannot create estoppel under
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`35 U.S.C. § 315(e)(1)—it requires a predicate finding that an RPI relationship
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`exists between a petitioner (Apple) and the petitioner in an earlier proceeding
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`(Unified Patents). Without that predicate finding—which does not exist in light of
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`the Director’s Decision in Unified (EX2038)—the FWD in Unified is irrelevant to
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`this proceeding. See Paper 46 (“Apple Br.”), § III.B.1.
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`MemoryWeb knows this—it said as much in Unified and IPR2022-00222
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`(“Samsung”):
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`• In Unified, MemoryWeb stated on June 6, 2022, that “[i]f (1) this IPR
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`results in a final written decision and (2) Apple and Samsung are
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`RPIs (which they are), Apple and Samsung would be estopped from
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`maintaining their IPRs against claims 1-7 of the ‘228 patent. 35
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`U.S.C. § 315(e)(1).” Unified, POR, Paper 23, 16 (emphases added).
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`• In Samsung, MemoryWeb stated on September 6, 2022, that “[s]hould
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`the Board determine in a final written decision that Samsung is an
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`unnamed RPI in the Unified IPR, Samsung should be estopped from
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`maintaining the present IPR challenge under Section 315[e](1).
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`Samsung, POR, Paper 19, 64 (emphases added).
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`MemoryWeb’s own statements thus foreclose its argument now that § 315(e)(1)
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`estoppel exists independent of proof of an RPI relationship. Id.1
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`MemoryWeb’s additional timing assertions are baseless.
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`First, MemoryWeb argues no deadlines, either in this proceeding or the
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`Board’s rules, require “introducing evidence that Apple was an RPI to the Unified
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`IPR.” MW Br., 10. MemoryWeb ignores that the Board has consistently found
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`that parties must raise an RPI argument no later than the POR. Apple Br.,
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`§ III.A.1 (citing decisions).
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`Second, MemoryWeb claims the Director’s Decision held that this Panel
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`“‘should make a determination’ of Apple’s RPI status in the Unified IPR in this
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`proceeding because it would lead to estoppel and at least partial termination.”
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`MW Br., 11 (second emphasis added). That misreads the Director’s Decision,
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`which simply held that the Board “can and should make a determination of the real
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`parties in interest or privity in any proceeding in which that determination may
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`1 MemoryWeb’s conduct elsewhere eviscerates its analogous claim that “the
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`Director Decision’s new guidance [came] too late for MemoryWeb to raise its RPI
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`arguments earlier in this proceeding.” MW Br., 20-21. MemoryWeb actually did
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`raise these same RPI and estoppel issues, long before the Director’s Decision, in
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`Unified and Samsung.
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`impact the underlying proceeding.” EX2038, 5 (emphasis added). It did not say
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`the Board “should” suspend its timing rules, admit new evidence, or consider
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`waived and/or forfeited arguments that cannot “impact the underlying proceeding.”
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`Id. MemoryWeb’s gloss on the Director’s holding incorrectly presumes an RPI
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`assertion is timely whenever and under whatever circumstances it is made—an
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`assertion refuted by the rules and the Board’s past determinations finding an RPI
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`issue waived and/or forfeited if not raised by the POR. See Apple Br., § III.A.1.
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`2. MemoryWeb Did Not Meet Its Burden to Show Good Cause.
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`The facts relevant to good cause under 37 C.F.R. § 42.25(b) in this case are
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`undisputed and dispositive. They show that, long before MemoryWeb filed its
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`POR in this proceeding, it (i) possessed the evidence it now seeks to pursue via
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`discovery, (ii) knew the basis of its RPI arguments, and (iii) knew the relief it
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`wished to pursue. This is all clearly documented in the records of Unified2 and
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`See Unified, Paper 8, 22-28 (Dec. 17, 2021); id., Paper 23, 14-26 (June 6,
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`2
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`2022); id., Paper 35, 23-27 (Oct. 11, 2022); id., Paper 41, 2 (Nov. 1, 2022); id.,
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`Paper 52, 8 (Dec. 16, 2022).
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`Samsung.3 Because MemoryWeb cannot dispute any of these facts, it cannot
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`establish good cause to excuse its intentional and prejudicial delay in raising the
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`RPI/estoppel issue. See Apple Br., § III.A.3.b.
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`Instead of showing good cause, MemoryWeb offers a litany of excuses.
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`None have merit.
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`First, MemoryWeb claims the Director Decision was “‘new guidance’ or ‘an
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`intervening change in the law’” because it “substantially expanded SharkNinja’s
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`holding.” MW Br., 12-14. That is wrong—the Director simply applied
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`SharkNinja’s holding:
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`The precedential SharkNinja decision held that it best serves the
`Office’s interests in cost and efficiency to not resolve an RPI issue
`when “it would not create a time bar or estoppel under 35 U.S.C. §
`315” in that proceeding.
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`See Samsung, Paper 8, 30-31 (Mar. 16, 2022); id., Paper 10, 1 (Apr. 26,
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`2022); id., Paper 19, 64-65 (Sept. 6, 2022); id., Paper 30, 33 (Feb. 2, 2023); id.,
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`Paper 34, 64 (Mar. 16, 2023).
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`EX2038, 4 (emphases added).4 Consistent with that authority the Decision
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`explained that the Board “… should not have determined whether Apple and
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`Samsung are RPIs in this proceeding given that determination was not necessary to
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`resolve the proceeding.” The Director’s direct application of SharkNinja was
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`neither “new guidance” nor “an intervening change in the law.”
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`Second, MemoryWeb mischaracterizes the Director’s Decision as directing
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`this panel to consider its RPI and estoppel arguments now. See MW Br., 12. The
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`Director said nothing of the sort. She stated only that the Board should determine
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`RPIs “in any proceeding in which that determination may impact the underlying
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`proceeding.” EX2038, 5 (emphases added). No reading suggests the Director was
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`ordering this panel to consider MemoryWeb’s RPI issue or to disregard
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`MemoryWeb’s waiver and/or forfeiture of its ability to raise RPI and estoppel now
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`in this proceeding.
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`See also SharkNinja Operating LLC v. iRobot Corp., No. IPR2020-00734,
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`4
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`Paper 11, 18-19 (rejecting approach that “consider[s] whether other parties should
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`have been named as RPIs … even when there is no allegation that the failure to
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`name the purported RPI results in time bar, estoppel, or anything else material to
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`the case”) (emphasis added).
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`Third, MemoryWeb seeks refuge in the vacated Unified RPI decision,
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`contending it shows that MemoryWeb’s course of action was “reasonable and
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`appropriate” because the Unified “RPI Order agreed with MemoryWeb.” MW Br.,
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`12-13. But there is no decision in Unified. The Director’s vacatur made the
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`Order a nullity and found it should never have issued. That now non-existent
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`Order cannot justify MemoryWeb’s late action.
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`Fourth, MemoryWeb takes direct aim at the Director’s Decision, calling it
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`“contrary to” Federal Circuit law “and the purposes of the estoppel statute.” MW
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`Br., 13-14; see also id. at 16 (claiming that the “Director issued new guidance
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`turning the procedure MemoryWeb followed on its head”). This is neither the time
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`nor the place for MemoryWeb to relitigate the Director’s Decision. Nor can
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`MemoryWeb use the Decision as a post-hoc justification for its conduct. The
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`Director’s Decision plainly did not influence (much less justify) MemoryWeb’s
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`deliberate decision, made long ago, not to raise an RPI or estoppel argument in this
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`proceeding while it was raising those same arguments in Unified and Samsung.
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`Fifth, MemoryWeb argues it did not offend due process by litigating Apple’s
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`RPI status in a proceeding to which Apple was not a party, while consciously
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`declining to raise it in this proceeding where Apple is a party. MW Br., 15-16. In
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`support, MemoryWeb cites the Board’s pre-SharkNinja decision in Kofax, Inc. v.
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`Uniloc USA, Inc., No. IPR2015-01207, 2016 WL 8944779, at *1 (PTAB July 20,
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`2016). Kofax is inapposite. There, the Board denied a rehearing request from
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`Zebra to expunge a statement about estoppel from a decision to which Zebra was
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`not a party. Id. That would be like Apple seeking rehearing in the Unified
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`proceeding—something that Apple could not and did not do. Zebra also did not
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`“dispute that it [was] a real party in interest” with the petitioners in the later
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`proceeding (id. at 2)—something that Apple vigorously disputes here. The
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`Board’s dicta in Kofax cannot help MemoryWeb.
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`Sixth, MemoryWeb defends its decision to raise the question of whether
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`Apple was an RPI of Unified Patents in the Unified proceeding, rather than in the
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`present proceeding, stating that “MemoryWeb does not contend that Apple’s
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`identification of itself as the sole RPI in this proceeding is incorrect.” MW Br., 13.
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`But MemoryWeb did contend—in the Samsung proceeding—that Samsung was an
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`RPI of Unified in the Unified proceeding. Samsung, POR, Paper 19, 64.
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`MemoryWeb identifies no legitimate reason it could not have alleged that Apple
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`was an RPI of Unified in a timely manner in this proceeding, and there is none.5
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`5 MemoryWeb mischaracterizes third party discovery of Unified in this
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`proceeding as an insurmountable obstacle. It is not. The Board can authorize
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`discovery in the specific setting of privity or RPI relationships when a party
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`presents evidence showing, beyond speculation, that there is some connection to
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`Finally, MemoryWeb briefly addresses prejudice, contending it would be
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`“manifestly unfair” to find waiver and/or forfeiture after MemoryWeb “expended
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`significant resources proving that Apple and Samsung were RPIs in the Unified
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`IPR.” MW Br., 16. That is remarkable. MemoryWeb ignores not only that its
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`intentional delay in raising an RPI issue in this proceeding has prejudiced Apple
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`and the Board, but that “the procedure MemoryWeb followed” (id.) was wrong.
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`MemoryWeb also claims “[a]ny alleged prejudice to Apple pales in
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`comparison” to the (self-inflicted) prejudice MemoryWeb has experienced. Id.
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`But MemoryWeb ignores the incurable prejudice that its delay has caused Apple:
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`had MemoryWeb timely raised its RPI issue, Apple could have sought to align the
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`schedules of this proceeding with Unified to eliminate the possibility of estoppel.
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`Apple Br., 2, 24-25 (explaining this prejudice). MemoryWeb also ignores the
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`prejudice its late action has caused to the Board—disruption, delay and additional
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`work. Unlike Apple, who had no control over MemoryWeb’s gamesmanship,
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`MemoryWeb could have timely raised its RPI and estoppel arguments that it
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`instead chose to delay, and for which it seeks permission to raise belatedly now.
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`The Board should not allow it.
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`the third party. Arris Grp., Inc. v. C-Cation Techs., LLC, No. IPR2015-00635,
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`Paper 10 at 1-3, 6 (PTAB May 1, 2015).
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`B. MemoryWeb Has Not Met Its Burden to Justify Late Submission
`of Supplemental Information.
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`Rule 42.123(b) requires a party seeking to submit supplemental information
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`more than one month after institution to “show why the supplemental information
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`reasonably could not have been obtained earlier, and that consideration of the
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`supplemental information would be in the interests-of-justice.” The purpose of
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`Rule 42.123(b) is clear—it requires disclosure of known relevant information
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`promptly after institution to avoid delays and prejudice to the other party.
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`MemoryWeb has not shown it meets either requirement of Rule 42.123(b),
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`so it again argues the rule does not apply and then asks the Board to waive the rule.
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`See MW Br., §§ V.A, C. MemoryWeb again is wrong in each respect.
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`1. MemoryWeb Could Have Timely Submitted the Information.
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`MemoryWeb starts by disputing whether there was any “information
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`MemoryWeb possessed before this proceeding was instituted,” contending “[t]he
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`information MemoryWeb intends to introduce has yet to be produced by Unified
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`and/or Apple via discovery in this proceeding.” MW Br., 18. MemoryWeb also
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`claims that such documents “could not have been obtained earlier” because some
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`were subject to a protective order in Unified. Id., 18-19.
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`MemoryWeb simply misunderstands Rule 42.123(b), which concerns
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`information in the possession of a party up to one month after trial is instituted
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`(here, up to June 20, 2022). MemoryWeb cannot seriously dispute it had the
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`exhibits it now seeks to introduce in this proceeding6—it actually filed them in
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`Unified on June 6, 2022 with its POR.
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`MemoryWeb is also incorrect to argue that the Unified protective order
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`precluded MemoryWeb from filing anything in this proceeding. MW Br., 18-19.
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`Many of the Unified exhibits are not confidential —they are not subject to the
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`protective order—and MemoryWeb actually filed many of them in Samsung on
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`March 16, 2022 (see table below).
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`Unified Exhibits
`2009
`2010
`2011
`2012
`2013
`2014
`2015
`2016
`2017
`2018
`2019
`2031
`2032
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`Samsung Exhibits
`2005
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`2006
`2008
`2009
`2010
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`2011
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`See EX3005, 1 (MemoryWeb’s intention to “file as exhibits in this
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`proceeding the non-confidential exhibits in IPR2021-01413 pertaining to RPI”).
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`The fact that certain exhibits are subject to a protective order also does not
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`relieve MemoryWeb of its obligations under Rule 42.123(b). At best,
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`MemoryWeb might have needed to seek a comparable protective order or other
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`procedural protections in this proceeding—something MemoryWeb did not do.
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`MemoryWeb also points to Unified’s objections to introduction of its confidential
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`exhibits in this proceeding (MW Br., 4) but ignores that if MemoryWeb had acted
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`when it should have, the dispute could have been addressed during this
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`proceeding, rather than now.
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`2. MemoryWeb Has Not Shown Consideration of the Untimely
`Evidence Serves the Interests of Justice.
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`Rule 42.123(b) requires a party to show that consideration of the late-
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`submitted information serves the interests of justice, a standard more demanding
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`than “good cause”:
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`Specifically, to show good cause, a party would be required to
`make a particular and specific demonstration of fact. Under the
`interests-of-justice standard, the moving party would also be
`required to show that it was fully diligent in seeking discovery
`and that there is no undue prejudice to the non-moving party.
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`Umbrella Rules, 77 Fed. Reg. 48621-22 (Aug. 14, 2012) (emphases added); see
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`also id. at 48651, 48660-61. If the Board finds that MemoryWeb has not
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`established good cause, it must find MemoryWeb has not met the higher “interests
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`of justice” standard. Apple Br., 19.
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`MemoryWeb contends its late-submitted information meets this higher
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`standard simply because it believes the information is relevant. MW Br., 19
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`(contending “the evidence … is material as it gives rise to estoppel and a basis for
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`termination”). That cannot meet the “interests of justice” (or for that matter the
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`“good cause”) standard.
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`Notably, MemoryWeb entirely ignores its diligence burden: it nowhere
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`identifies a legitimate reason why it failed to submit—before June 20, 2022, one
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`month after institution of this proceeding—the non-confidential exhibits in its
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`possession or failed to seek discovery and entry into this proceeding under a
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`protective order of confidential ones. And MemoryWeb’s claim that “the Director
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`Decision’s new guidance [came] too late for MemoryWeb to raise its RPI
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`arguments earlier in this proceeding” (MW Br., 20-21) rings hollow: MemoryWeb
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`actually did submit many of these exhibits in both Unified and Samsung.
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`MemoryWeb’s response on prejudice is again remarkable and entirely
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`deficient—it contends Apple is not prejudiced because Apple will have “an
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`adequate opportunity to respond and produce contrary evidence” later, and because
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`Apple already possesses some of this evidence. MW Br., 19-20. MemoryWeb’s
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`first point would entirely vitiate the rule, as it would excuse every late submission
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`of information as long as it is entered before the FWD issues. Its second point
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`ignores that Apple’s alleged knowledge of certain evidence does not mean it is
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`relevant, proper to consider, or that Apple consents to its submission here. Most
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`significantly, MemoryWeb ignores the rule’s requirement to consider the prejudice
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`the party’s late action causes to the other party. Here, MemoryWeb’s late action
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`has caused actual prejudice to Apple that cannot be remedied. See Apple Br., 2,
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`24-25 (explaining this prejudice in detail). MemoryWeb cannot avoid the
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`consequences of its deliberate decision to delay.
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`3. MemoryWeb’s Cited Precedent Is Contrary to MemoryWeb’s
`Position.
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`MemoryWeb cites Federal Circuit cases and Board practices to defend its
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`conduct. None actually help its case.
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`In Redline Detection, LLC v. Star Envirotech, Inc., the Federal Circuit
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`affirmed the Board’s denial of a request to submit supplemental information—
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`exactly the result warranted here. 811 F.3d 435, 437, 441 (Fed. Cir. 2015).
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`MemoryWeb nevertheless contends that Redline “made clear that whether to admit
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`supplemental information ‘is also informed by 37 C.F.R. Part 42, Subpart A.’”
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`MW Br., 17. But the next sentence in Redline explains that “[s]ubpart A requires
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`USPTO regulations ‘be construed to secure the just, speedy, and inexpensive
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`resolution of every proceeding.’” 811 F.3d at 443. Those maxims supported
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`denial of a request for supplemental information in Redline and support denial of
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`such a request here: allowing MemoryWeb to submit long-possessed evidence now
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`will cause further delays and undermine the goal of “just, speedy, and inexpensive
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`resolution.”
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`MemoryWeb’s other case is likewise unhelpful. Valmont Indus., Inc. v.
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`Lindsay Corp., held that a petitioner need not seek leave to submit supplemental
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`information under § 42.123 when another rule (§ 42.23(b)) “specifically
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`permit[ted]” the submission of additional evidence in reply. 730 F. App’x 918,
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`922 (Fed. Cir. 2018). MemoryWeb cites no rule that “specifically permits”
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`introduction of MemoryWeb’s information, nor could it.
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`MemoryWeb’s final assertion is its most telling—that “patent owners
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`routinely submit information with their response after institution without needing
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`to comply with 37 C.F.R. § 42.123(b).” MW Br., 18. As Apple’s opening brief
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`showed, the latest time to raise an RPI argument was in MemoryWeb’s “response
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`after institution” (Apple Br., § III.A.1), and the reason the parties and the Board are
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`here now is that MemoryWeb did not do that. That point establishes forfeiture
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`and/or waiver, not a basis to excuse compliance with a rule designed to prevent the
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`late submission of supplemental information.
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`C. MemoryWeb Should Not Be Authorized to Pursue Additional
`Discovery.
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`If the Board concludes that MemoryWeb has not met its burden to show
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`good cause or interests of justice—as it should—the Board need not consider any
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`discovery requests. Indeed, the parties’ proposed schedule to the Board explicitly
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`Apple Response Brief on Waiver/Forfeiture
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`premised the second phase of proceedings only if “the Board authorizes briefing on
`
`estoppel.” Ex. 3005, 1. Because the Board should not authorize such briefing,
`
`MemoryWeb’s discovery requests should be denied as moot.
`
`MemoryWeb also has created confusion about Apple’s position on the
`
`discovery MemoryWeb seeks from Unified. In its brief, MemoryWeb explains
`
`that it seeks “authorization to serve (1) a document subpoena requesting
`
`confidential exhibits from the Unified IPR relating to Apple’s RPI status (Ex.
`
`2041) and (2) a deposition subpoena seeking testimony from Kevin Jakel in his
`
`capacity as Unified’s CEO that is the same or similar to the declaration and
`
`deposition testimony from Mr. Jakel in the Unified IPR (Ex. 2042).” MW Br., 21-
`
`25. In addition, MemoryWeb says that it “understands that Apple does not oppose
`
`these subpoenas if the Board allows the parties to proceed to the proposed second
`
`briefing phase.” Id. at 21.
`
`The last point is what creates confusion. To be clear, Apple does not
`
`consent to entry of all of the confidential exhibits from the Unified proceeding. It
`
`opposes entry of the prior Jakel deposition transcript in this record, as Apple was
`
`not able to participate in that deposition and is entitled to separately examine any
`
`witness whose testimony is to be admitted and considered. Ex. 3005.
`
`MemoryWeb seemingly understood this, as it is asking for a new deposition of Mr.
`
`Jakel on the same topics as his prior deposition. Apple maintains that the only
`
`16
`
`
`
`IPR2022-00031
`
`Apple Response Brief on Waiver/Forfeiture
`
`proper use of the deposition transcript of Mr. Jakel’s prior deposition would be for
`
`cross-examination of Mr. Jakel in this proceeding, if it occurs.
`
`With this clarification, Apple again stands by its representations in Exhibit
`
`3005 but reiterates that the Board should not reach the issue.
`
`III. CONCLUSION
`
`For the foregoing reasons, and those in Apple’s opening brief (Paper 46), the
`
`Board should find that MemoryWeb has not met its burden to show good cause
`
`exists to belatedly raise its RPI and estoppel arguments, and has not shown that the
`
`interests of justice support the belated submission of exhibits it possessed when
`
`this trial was instituted.
`
`Dated: July 14, 2023
`
`Respectfully Submitted,
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`SIDLEY AUSTIN LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`jkushan@sidley.com
`(202) 736-8914
`Attorney for Petitioner
`
`17
`
`
`
`IPR2022-00031
`
`Apple Response Brief on Waiver/Forfeiture
`
`CERTIFICATE OF COMPLIANCE
`
`I hereby certify that this brief complies with the type-volume limitations set
`
`in Paper 45 because it contains 3,432 words, excluding the parts of the brief
`
`exempted by 37 C.F.R. § 42.24.
`
`
`
`
`
`Dated: July 14, 2023
`
`Respectfully Submitted,
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`SIDLEY AUSTIN LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`jkushan@sidley.com
`(202) 736-8914
`Attorney for Petitioner
`
`
`
`
`
`
`
`IPR2022-00031
`
`Apple Response Brief on Waiver/Forfeiture
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 14th day of July, 2023, a copy of this Response
`
`Brief on Waiver/Forfeiture has been served by electronic mail on the following
`
`addresses for patent owner(s):
`
`Jennifer Hayes, jenhayes@nixonpeabody.com
`George Dandalides, gdandalides@nixonpeabody.com
`Matthew A. Werber, mwerber@nixonpeabody.com
`Daniel Schwartz, djschwartz@nixonpeabody.com
`
`Dated: July 14, 2023
`
`Respectfully Submitted,
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`SIDLEY AUSTIN LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`jkushan@sidley.com
`(202) 736-8914
`Attorney for Petitioner
`
`
`
`
`
`
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