`571-272-7822
`
`
`Paper 54
` Date: August 22, 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.
`
`
`REVISED SCHEDULING ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2022-00031
`Patent 10,621,228 B2
`
`On May 30, 2023, the Board issued an Order (Paper 43) directing the
`parties to confer and submit a proposed joint briefing schedule and discovery
`plan to address the real party in interest, estoppel, and waiver issues in this
`proceeding. 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 (Paper 45) setting a
`briefing schedule for the parties to file briefs addressing the topics set forth
`in Exhibit 3005, First Phase.
`On August 11, 2023, the Board issued an Order (Paper 50) granting
`Patent Owner’s request for discovery on the RPI issue and set a schedule for
`the parties to conduct discovery and files briefs on the RPI, estoppel and
`waiver issues.
`On August 18, 2023, the Board received an email from counsel
`(Exhibit 3006) jointly requesting modifications to the discovery and briefing
`schedule. The parties’ joint request is GRANTED, and the revised schedule
`is set out below.
`
`
`
`
`2
`
`
`
`IPR2022-00031
`Patent 10,621,228 B2
`
`(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.
`(2) by September 7, 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
`
`3
`
`
`
`IPR2022-00031
`Patent 10,621,228 B2
`
`
`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 21, 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 October 5, 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 11, 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 18, 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.
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`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
`
`
`
`
`
`
`
`
`5
`
`
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