Trials@uspto.gov
`571-272-7822
`
`
`Paper: 50
` Date: August 11, 2023
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MEMORYWEB, LLC,
`Patent Owner.
`____________
`
`IPR2022-00031
`Patent 10,621,228 B2
`____________
`
`
`Before LYNNE H. BROWNE, NORMAN H. BEAMER, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`571-272-7822
`
`
`Paper: 50
` Date: August 11, 2023
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MEMORYWEB, LLC,
`Patent Owner.
`____________
`
`IPR2022-00031
`Patent 10,621,228 B2
`____________
`
`
`Before LYNNE H. BROWNE, NORMAN H. BEAMER, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2022-00031
`Patent 10,621,228 B2
`
`Petitioner, Apple, Inc. (“Apple” or “Petitioner”), filed a petition
`requesting inter partes review of claims 1–19 of U.S. Patent No. 10,621,228
`B2 (“the ’228 patent”). Paper 1. On May 20, 2022, the Board instituted
`trial. Paper 12.
`In a related proceeding challenging claims 1–7 of the ’228 patent,
`Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413 (the “Unified
`proceeding”), the Board entered an Order (Paper 56 (confidential)) on March
`8, 2023, identifying Apple as an unnamed Real Party in Interest (“RPI”), and
`on March 14, 2023, entered a Final Written Decision (Paper 58
`(confidential)) finding claims 1–7 unpatentable.
`Patent Owner, MemoryWeb, LLC (“MemoryWeb” or “Patent
`Owner”) seeks leave to file a motion to terminate this proceeding in view of
`the Board’s Final Written Decision in the Unified proceeding. Ex. 3002, 1.
`Apple opposes Patent Owner’s request, and asserts that MemoryWeb has
`waived the RPI and estoppel issues in this proceeding. Id. at 2.
`On May 22, 2023, the Director issued a public version1 of a Decision
`Granting Director Review (Paper 76, “Director’s Decision”) in the Unified
`proceeding, vacating-in-part the Final Written Decision (Section I.B) (Paper
`58 (confidential) and Paper 67 (public)) and the Board’s Order identifying
`Apple as an RPI (Paper 56 (confidential)) in that proceeding.
`On May 30, 2023, the Board issued an Order directing the parties to
`confer and submit a proposed joint briefing schedule and discovery plan to
`address the RPI, estoppel, and waiver issues in this proceeding. Paper 43.
`
`
`1 On May 16, 2023, a confidential version of the Director’s Decision
`Granting Director Review (Paper 74) was issued, but made available only to
`the parties and the Board.
`
`2
`
`
`
`IPR2022-00031
`Patent 10,621,228 B2
`
`The parties submitted their joint proposal to the Board by email on June 9,
`2023. Ex. 3005.
`On June 15, 2023, the Board entered an Order setting a briefing
`schedule for the parties to file briefs addressing the topics set forth in Exhibit
`3005, First Phase. Paper 45.
`After considering the parties’ arguments in their briefs (Papers 46–
`49), we determine that good cause exists to grant Patent Owner’s request for
`discovery on the RPI issue in this case. The reasons for this determination
`include, but are not limited to, the nature of the issues in this case, the
`procedural history of this case, the Director’s Decision (Papers 74, 76)
`vacating-in-part the Final Written Decision (Section I.B) (Paper 58
`(confidential) and Paper 67 (public)) and the Board’s Order identifying
`Apple as an RPI (Paper 56 (confidential)) in the Unified proceeding, the
`statement in the Director’s Decision that “[t]he Board can and should make a
`determination of the real parties in interest or privity in any proceeding in
`which that determination may impact the underlying proceeding, for
`example, but not limited to, a time bar under 35 U.S.C. § 315(b) or an
`estoppel under 35 U.S.C. § 315(e) that might apply,” and the grant of a good
`cause extension of time in this proceeding by the Chief Administrative
`Patent Judge (Paper 41) to allow time for additional discovery and to
`consider a motion to dismiss this proceeding prior to issuing a Final Written
`Decision.
`
`
`
`
`3
`
`
`
`IPR2022-00031
`Patent 10,621,228 B2
`
`
`Moreover, given that a determination of the real parties in interest
`issue may impact this proceeding pursuant to at least 35 U.S.C. § 315(e), it
`is hereby ORDERED that
`(1) by August 21, 2023 (Due Date 3), MemoryWeb will file as
`exhibits in this proceeding the non-confidential exhibits filed in the
`Unified proceeding (IPR2021-01413) relevant to the RPI issue.
`Apple will produce to MemoryWeb responsive non-privileged
`documents as follows: (i) all communications with Unified Patents
`relating to MemoryWeb, the ’228 patent, the Unified proceeding,
`or this IPR (IPR2022-00031); and (ii) all agreements or contracts
`between Apple and Unified Patents, including Apple’s
`membership agreement and any amendments or add-ons.
`Apple may provide a declaration from a witness familiar with the
`documents it is producing. MemoryWeb is allowed a 4-hour
`deposition of that witness.
`If a deposition of a Unified Patents’ witness is conducted, Apple
`shall be entitled to participate and examine the witness after
`MemoryWeb has completed its examination.
`The parties will negotiate with Unified Patents in good faith
`regarding the production of documents, deposition scheduling and
`scope.
`Any deposition of a witness shall be conducted on a date
`acceptable to the parties and the witness, notwithstanding Due
`Date 3.
`
`4
`
`
`
`IPR2022-00031
`Patent 10,621,228 B2
`
`(2) by August 31, 2023 (Due Date 4), MemoryWeb may file a
`Motion to Terminate (“Motion”) of up to 7000 words.
`MemoryWeb’s Motion may address at least: (1) estoppel under 35
`U.S.C. § 315(e)(1) as to claims 1–7, including addressing Apple’s
`RPI status in the Unified proceeding, and (2) discretionary estoppel
`based on at least 35 U.S.C. § 315(d), 37 CFR § 42.72, and 37 CFR
`§ 42.5 as to claims 8–19.
`(3) by September 14, 2023 (Due Date 5), Apple may file a response
`to MemoryWeb’s Motion of up to 7,000 words.
`If Apple submits a declaration after Due Date 4, Apple will make
`the declarant available for a deposition within 7 days of Due Date
`5. MemoryWeb may file a Motion for Observations on the cross
`examination of the witness (not to exceed 1,000 words) within 7
`days of the deposition.
`(4) by September 28, 2023 (Due Date 6), MemoryWeb may file a
`reply to Apple’s response brief not to exceed 3,500 words. Each
`party may also file a Motion to Exclude.
`(5) by October 6, 2023 (Due Date 7), each party may file an
`opposition to the other party’s Motion to Exclude (if any).
`(6) an Oral Hearing on the subject matter addressed by the parties’
`briefing and any attendant motions shall be held by video-
`conference on October 13, 2023 (Due Date 8), at 1:00 pm
`Eastern time. Each party shall have 1 hour (60 minutes) to
`address the relevant issues and may reserve an appropriate amount
`of time for rebuttal.
`
`
`
`5
`
`
`
`IPR2022-00031
`Patent 10,621,228 B2
`
`
`
`FOR PETITIONER:
`
`Jeffrey P. Kushan
`SIDLEY AUSTIN LLP
`jkushan@sidley.com
`
`FOR PATENT OWNER:
`
`Jennifer Hayes
`George Dandalides
`NIXON PEABODY LLP
`jenhayes@nixonpeabody.com
`gdandalides@nixonpeabody.com
`
`
`
`
`
`
`
`
`6
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
