IPR2022-00031
`Patent No. 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 UNOPPOSED MOTION TO SEAL
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`Patent No. 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 UNOPPOSED MOTION TO SEAL
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`IPR2022-00031
`Patent No. 10,621,228
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`Patent Owner MemoryWeb, LLC (“MemoryWeb”) submits this Motion to
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`Seal (“Motion”) Patent Owner’s Motion to Terminate (Paper 57) and Exhibits 2068,
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`2069, 2070, 2071, 2072, 2073, 2074, 2075, 2077, 2078, 2079, 2080, 2081, 2083,
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`2084, 2085, 2086, 2088, 2089, 2089, 2090, 2091, and 2096. Patent Owner submits
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`this Motion to safeguard the confidential information of the relevant parties to this
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`proceeding, pursuant to the Protective Order.1 See Paper 52.
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`The exhibits that Patent Owner proposes to seal can be divided into three
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`distinct categories. First, Patent Owner seeks to seal its Motion to Terminate and the
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`Transcript of the September 7, 2023 Deposition of Kevin Jakel (Exhibit 2091).
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`Patent Owner will provide a redacted version of the Motion to Terminate and Exhibit
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`2091 once it has had the opportunity to consult with the relevant parties to determine
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`the extent of the redactions. Second, Patent Owner requests that the following
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`exhibits be filed under seal in their entirety pursuant to 37 C.F.R. § 42.54: Exhibits
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`2069, 2070, 2071, 2072, 2073, 2074, 2075, 2078, 2079, 2081, 2083, 2084, 2085,
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`2086, 2088, 2089, and 2090. These exhibits comprise production documents served
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`by Petitioner or third party Unified Patents, LLC designated as confidential pursuant
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`1 The relevant parties with respect to this Motion are Apple, Inc. (“Apple” or
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`“Petitioner”), Samsung Electronics Co., Ltd. (“Samsung”), and Unified Patents,
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`LLC (“Unified”).
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`1
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`IPR2022-00031
`Patent No. 10,621,228
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`to the protective order. Third, Patent Owner submits that the redacted versions of
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`Exhibits 2068, 2077, 2080, and 2096 are already evidence of record in this
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`proceeding or will be submitted concurrently with this Motion. See Exs. 2055, 2051,
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`2092, and 2097, respectively.
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`As discussed in greater detail below, each of the aforementioned exhibits
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`comprises confidential information, and the forthcoming redacted version of the
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`Motion to Terminate will rely on and discuss the confidential information disclosed
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`in such exhibits. Patent Owner also notes that the Board previously granted Unified’s
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`Motion to Seal several of the above-listed exhibits. See Unified Patents, LLC v.
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`MemoryWeb, LLC, IPR2021-01413, Paper 26 (PTAB Aug. 29, 2022).
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`Patent Owner certifies that it has conferred with all relevant parties through
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`counsel, and Petitioner does not oppose this Motion to seal.
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`I. MOTION TO SEAL
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`In an inter parties review, it is the default rule that all filings are publicly
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`available. 35 U.S.C. § 326(a)(1); 37 C.F.R. § 42.14. Where an exhibit contains
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`confidential information, a party may file “a motion to seal with a proposed
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`2
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`IPR2022-00031
`Patent No. 10,621,228
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`protective order as to the confidential information.”2 See 37 C.F.R. § 42.55; see also
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`35 U.S.C. § 326(a)(1). A motion to seal will only be granted if the movant
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`demonstrates “good cause.” 37 C.F.R. § 42.54(a). Good cause exists if the movant
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`“demonstrate[s] adequately that (1) the information sought to be sealed is truly
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`confidential, (2) a concrete harm would result upon public disclosure, (3) there exists
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`a genuine need to rely in the trial on the specific information sought to be sealed,
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`and (4), on balance, an interest in maintaining the confidentiality outweighs the
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`strong public interest in having an open record.” Argentum Pharm. LLC v. Alcon
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`Research, Ltd., IPR2017-01053, Paper 27 at 4 (PTAB Jan. 19, 2018) (citing 37
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`C.F.R. § 42.54(a)). All four prongs are satisfied here.
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`First, (1) the forthcoming redacted portions of the Motion to Terminate and
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`Exhibit 2091, (2) the entirety of Exhibits 2069, 2070, 2071, 2072, 2073, 2074, 2075,
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`2078, 2079, 2081, 2083, 2084, 2085, 2086, 2088, 2089, and 2090; and (3) the
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`portions of Exhibits 2068, 2077, 2080, and 2096 (the redacted versions of these
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`exhibits are Exhibits 2055, 2051, 2092, and 2097, respectively) contain non-public,
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`highly confidential proprietary business information about Unified’s members (e.g.,
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`2 Patent Owner filed an unopposed motion for entry of a Protective Order (Paper 52)
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`and the Board granted Patent Owner’s motion (Paper 55). All relevant parties have
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`executed the Protective Order.
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`3
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`IPR2022-00031
`Patent No. 10,621,228
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`Apple and Samsung) and information regarding Unified’s business operations that
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`Unified maintains as confidential. As stated by Unified, “[t]his information includes
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`confidential, sensitive commercial information, including closely held information
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`related to Unified’s core business” and “Unified guards such information closely to
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`protect its members as well as its own business from copying by others.” See Unified
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`Patents, LLC v. MemoryWeb Inc., IPR2021-01413, Paper 26 at 3 (PTAB June 14,
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`2022). Unified has represented that it has not made, and does not intend to make,
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`this information publicly available and that this information is subject to
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`confidentiality obligations to third parties, including but not limited to Petitioner and
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`Samsung. See id. Due to the nature of Exhibits 2069, 2070, 2071, 2072, 2073, 2074,
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`2075, 2078, 2079, 2081, 2083, 2084, 2085, 2086, 2088, 2089, and 2090, Patent
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`Owner and the relevant parties cannot meaningfully provide redacted versions of
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`these documents, and Patent Owner requests that they remain under seal in their
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`entirety.
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`Second, public disclosure of this information “would expose Unified’s
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`business model and confidential business activities.” Unified Patents, IPR2021-
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`01413, Paper 26 at 3. Further, Unified represents that it has a contractual obligation
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`with third parties, including Petitioner and Samsung, to maintain the confidentiality
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`of the information contained within the relevant exhibits. Id. If such information
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`were publicly disclosed, “Unified’s members wishing to remain confidential would
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`IPR2022-00031
`Patent No. 10,621,228
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`be adversely affected.” Id. Unified also represents that the public will not be harmed
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`by sealing its confidential business information. Id.
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`Third, the exhibits at issue are directly relevant to whether Petitioner is a real
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`party in interest (“RPI”) to Unified’s IPR. See Unified Patents, LLC v. MemoryWeb,
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`LLC, IPR2021-01413. Patent Owner must rely on confidential information to prove
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`that Petitioner is an RPI to Unified’s IPR.
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`Fourth, on balance, the interest in maintaining confidentiality outweighs the
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`public interest in having an open record. Accordingly, the redacted portions of the
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`Motion to Terminate (redactions forthcoming) and Exhibits 2068, 2077, 2080, 2091
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`(redactions forthcoming) and 2096, and the entirety of Exhibits 2069, 2070, 2071,
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`2072, 2073, 2074, 2075, 2078, 2079, 2081, 2083, 2084, 2085, 2086, 2088, 2089, and
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`2090 should be sealed. Patent Owner respectfully requests that the Board grant this
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`Motion.
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`II. GOOD CAUSE EXISTS FOR SEALING THE MOTION TO
`TERMINATE AND THE RELEVANT EXHIBITS
`In deciding whether to seal exhibits, the Board must find “good cause” and
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`must “strike a balance between the public’s interest in maintaining a complete and
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`understandable file history and the parties’ interest in protecting truly sensitive
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`information.” Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001,
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`Paper 36 at 4 (PTAB Apr. 5, 2013).
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`5
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`IPR2022-00031
`Patent No. 10,621,228
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`Exhibit 2068 is a deposition transcript of Unified’s Chief Executive Officer,
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`Kevin Jakel in IPR2021-01413, and was marked in its entirety as “HIGHLY
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`CONFIDENTIAL – ATTORNEYS’ EYES ONLY” during the deposition. This
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`transcript includes sensitive business information with Unified asserts has not been
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`published or otherwise been made publicly available. Exhibit 2055 represents a
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`public version of Exhibit 2068, from which the confidential information has been
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`redacted.
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`Exhibit 2069 is Petitioner’s membership agreement with Unified and has been
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`marked “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES ONLY” under the
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`Protective Order in this case. This document contains sensitive business information
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`that Petitioner and Unified assert has not been published or otherwise made publicly
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`available. Due to the nature of Exhibit 2069, Patent Owner and the relevant parties
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`cannot meaningfully provide redacted versions of this document, and request that it
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`remain sealed in its entirety.
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`Exhibit 2070 is an email communication that has been marked “Confidential”
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`under the Protective Order in this case. This document contains sensitive business
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`information that Unified asserts has not been published or otherwise made publicly
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`available. Due to the nature of Exhibit 2070, Patent Owner and the relevant parties
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`cannot meaningfully provide redacted versions of this document, and request that it
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`remain sealed in its entirety.
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`IPR2022-00031
`Patent No. 10,621,228
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`Exhibit 2071 is an email communication that that has been marked
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`“Confidential” under the Protective Order in this case. This document contains
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`sensitive business information that Unified asserts has not been published or
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`otherwise made publicly available. Due to the nature of Exhibit 2071, Patent Owner
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`and the relevant parties cannot meaningfully provide redacted versions of this
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`document, and request that it remain sealed in its entirety.
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`Exhibit 2072 is an email communication that has been marked “Confidential”
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`under the Protective Order in this case. This document contains sensitive business
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`information that Unified asserts has not been published or otherwise made publicly
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`available. Due to the nature of Exhibit 2072, Patent Owner and the relevant parties
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`cannot meaningfully provide redacted versions of this document, and request that it
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`remain sealed in its entirety.
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`Exhibit 2073 is a Unified membership agreement marked “HIGHLY
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`CONFIDENTIAL – ATTORNEYS’ EYES ONLY” under the Protective Order in
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`this case. This document contains sensitive business information that Samsung and
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`Unified assert has not been published or otherwise made publicly available. Due to
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`the nature of Exhibit 2073, Patent Owner and the relevant parties cannot
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`meaningfully provide redacted versions of this document, and request that it remain
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`sealed in its entirety.
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`Exhibit 2075 is a listing of email addresses corresponding to Exhibit 2074.
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`IPR2022-00031
`Patent No. 10,621,228
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`Both exhibits have been marked “HIGHLY CONFIDENTIAL – ATTORNEYS’
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`EYES ONLY” under the Protective Order in this case. These documents contain
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`sensitive business information which Unified asserts has not been published or
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`otherwise been made publicly available. Due to the nature of Exhibits 2074 and
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`2075, Patent Owner and the relevant parties cannot meaningfully provide redacted
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`versions of these documents, and request that they remain sealed in their entirety.
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`Exhibit 2077 is a Supplemental Declaration of Kevin Jakel in IPR2021-01413.
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`Exhibit 2077 has been marked “HIGHLY CONFIDENTIAL – ATTORNEYS’
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`EYES ONLY” under the Protective Order in this case. This declaration contains
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`sensitive business information which Unified asserts has not been published or
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`otherwise been made publicly available. Exhibit 2051 represents a public version of
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`Exhibit 2077, from which the confidential information has been redacted.
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`Exhibit 2079 is a listing of email addresses corresponding to Exhibit 2078.
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`Both exhibits have been marked “HIGHLY CONFIDENTIAL – ATTORNEYS’
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`EYES ONLY” under the Protective Order in this case. These documents contain
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`sensitive business information which Unified asserts has not been published or
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`otherwise been made publicly available. Due to the nature of Exhibits 2078 and
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`2079, Patent Owner and the relevant parties cannot meaningfully provide redacted
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`versions of these documents, and request that they remain sealed in their entirety.
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`Exhibit 2080 is the Order Identifying Real Party-in-Interest in IPR2021-01413
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`IPR2022-00031
`Patent No. 10,621,228
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`and has been marked “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES
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`ONLY” under the Protective Order in this case. This Order contains sensitive
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`business information which Unified asserts has not been published or otherwise been
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`made publicly available. Exhibit 2092 represents a public version of Exhibit 2080,
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`from which the confidential information has been redacted.
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`Exhibit 2081 is an email communication that has been marked “Confidential”
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`under the Protective Order in this case. This document contains sensitive business
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`information that Unified asserts has not been published or otherwise made publicly
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`available. Due to the nature of Exhibit 2081, Patent Owner and the relevant parties
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`cannot meaningfully provide redacted versions of this document, and request that it
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`remain sealed in its entirety.
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`Exhibit 2084 is an email communication that has been marked “HIGHLY
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`CONFIDENTIAL – ATTORNEYS’ EYES ONLY” under the Protective Order in
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`this case. These documents contain sensitive business information that Unified
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`asserts have not been published or otherwise made publicly available. Due to the
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`nature of Exhibits 2083 and 2084, Patent Owner and the relevant parties cannot
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`meaningfully provide redacted versions of these documents, and request that they
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`remain sealed in their entirety.
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`Exhibits 2085 and 2086 are communications that have been marked
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`“Confidential” under the Protective Order in this case. These documents contain
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`9
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`IPR2022-00031
`Patent No. 10,621,228
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`sensitive business information that Unified asserts have not been published or
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`otherwise made publicly available. Due to the nature of Exhibits 2085 and 2086,
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`Patent Owner and the relevant parties cannot meaningfully provide redacted versions
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`of these documents, and request that they remain sealed in their entirety.
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`Exhibit 2088 is a letter agreement marked “Confidential” under the Protective
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`Order in this case. This document contains sensitive business information that
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`Unified asserts has not been published or otherwise made publicly available. Due to
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`the nature of Exhibit 2088, Patent Owner and the relevant parties cannot
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`meaningfully provide redacted versions of this document, and request that it remain
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`sealed in its entirety.
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`Exhibit 2089 is an email communication forwarding Exhibit 2090. Both
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`exhibits have been marked “HIGHLY CONFIDENTIAL – ATTORNEYS’ EYES
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`ONLY” under the Protective Order in this case. These documents contain sensitive
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`business information that Unified asserts have not been published or otherwise made
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`publicly available. Due to the nature of Exhibits 2089 and 2090, Patent Owner and
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`the relevant parties cannot meaningfully provide redacted versions of these
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`documents, and request that they remain sealed in their entirety.
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`Exhibit 2091 is a deposition transcript of Unified’s Chief Executive Officer,
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`Kevin Jakel in this proceeding, and was marked in its entirety as “HIGHLY
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`CONFIDENTIAL – ATTORNEYS’ EYES ONLY” during the deposition. This
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`IPR2022-00031
`Patent No. 10,621,228
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`transcript includes sensitive business information which Unified asserts has not been
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`published or otherwise been made publicly available. A public version of Exhibit
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`2091, from which the confidential information has been redacted, is forthcoming.
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`Exhibit 2096 is Unified’s Petition for Director Review of the Final Written
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`Decision in IPR2021-01413 and has been marked “HIGHLY CONFIDENTIAL –
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`ATTORNEYS’ EYES ONLY” under the Protective Order in this case. This Petition
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`contains sensitive business information which Unified asserts has not been published
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`or otherwise been made publicly available. Exhibit 2097 represents a public version
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`of Exhibit 2096, from which the confidential information has been redacted.
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`Patent Owner’s Motion to Terminate relies on and discusses the confidential
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`aspects of exhibits being filed under seal pursuant to this motion. A redacted version
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`of the Motion to Terminate is forthcoming.
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`The balance favors protecting the relevant parties’ highly confidential
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`information. The information in the aforementioned exhibits is not related to
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`patentability, the scope of the ʾ228 patent, or any matter generally impacting the
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`public interest in evaluating the ʾ228 patent. Rather, the information sought to be
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`sealed relate to Petitioner’s and Samsung’s status as RPIs to the Unified IPR. The
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`information relates to business dealings between Unified and its members, including
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`Petitioner and Samsung. Unified has represented this information is not known to
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`the public. See e.g., Unified Patents, IPR2021-01413, Paper 24 at 7.
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`IPR2022-00031
`Patent No. 10,621,228
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`The relevant exhibits were provided with the expectation that they would
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`remain confidential, pursuant to the Protective Order. The Board should seal this
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`information so that Patent Owner can rely on these exhibits in its Motion to
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`Terminate without the chance of incidental public exposure of confidential business
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`information. The public interest is well-served in keeping this information
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`confidential.
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`Unified has represented that the relevant exhibits contain its “business
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`strategies and dealings with its members [which] constitute highly confidential
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`business information, as well as trade secrets.” Id., at 8. Unified further states that
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`“[s]everal potential harms would occur if this highly confidential business
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`information were to be disclosed” including “provid[ing] Unified’s competitors and
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`would-be business rivals with a roadmap of how to replicate Unified’s unique,
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`valuable business model.” Id., at 8-9.
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`III. NON-CONFIDENTIAL VERSIONS
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`As required by the Board’s Trial Practice Guide, the Default Protective Order,
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`and the agreed-upon Protective Order, a non-confidential redacted version of the
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`Motion to Terminate and Exhibit 2091 is forthcoming. Patent Owner will submit a
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`redacted version of the Motion to Terminate and Exhibit 2091 after the relevant
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`parties have had the opportunity to review following submission of the Motion. The
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`redactions are minimal and limited in nature and scope to the confidential
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`IPR2022-00031
`Patent No. 10,621,228
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`information.
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`Patent Owner submits that the remaining exhibits are either highly
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`confidential in their entireties, or a public version is already available in the record.
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`Patent Owner certifies that, to the best of its knowledge and understanding,
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`the information sought to be sealed by this Motion has not been published or
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`otherwise made publicly available.
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`IV. REQUEST FOR CONFERENCE CALL WITH THE BOARD
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`Should the Board not be inclined to grant the present Motion, the Patent
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`Owner and the relevant parties hereby request a conference call with the Board to
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`discuss any concerns prior to the Board issuing a decision on the Motion.
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`V. CONCLUSION
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`For the foregoing reasons, Patent Owner respectfully requests that the Board
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`seal and protect the relevant parties’ confidential information in the unredacted
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`version of the Motion to Terminate and Exhibits 2068, 2069, 2070, 2071, 2072,
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`2073, 2074, 2075, 2077, 2078, 2079, 2080, 2081, 2083, 2084, 2085, 2086, 2088,
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`2089, 2089, 2090, 2091, and 2096.
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`IPR2022-00031
`Patent No. 10,621,228
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`Respectfully submitted,
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`Dated: September 15, 2023
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`/Jennifer Hayes/
`By:
`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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`IPR2022-00031
`Patent No. 10,621,228
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Patent Owner’s
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`Unopposed Motion to Seal was served on September 15, 2023, upon the following
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`parties via electronic service:
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`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
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`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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`1
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