Filed: September 29, 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,
`
`v.
`
`MEMORYWEB, LLC,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2022-00031
`U.S. Patent No. 10,621,228
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`––––––––––––––––––
`
`PETITIONER’S UNOPPOSED MOTION TO SEAL
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`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MEMORYWEB, LLC,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2022-00031
`U.S. Patent No. 10,621,228
`
`––––––––––––––––––
`
`PETITIONER’S UNOPPOSED MOTION TO SEAL
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`
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`IPR2022-00031
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`Petitioner’s Unopposed Motion to Seal
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`Table of Contents
`I.
`Introduction .................................................................................................... 1
`II. Governing Rules and PTAB Guidance ........................................................ 2
`III. There Is Good Cause to Grant Petitioner’s Motion to Seal Confidential
`Information from a Third Party .................................................................. 3
`A.
`Petitioner’s Opposition to Patent Owner’s Motion to Terminate
`Should Be Sealed................................................................................... 5
`Ex. 1095 Should be Sealed .................................................................... 6
`B.
`Ex. 1096 Should be Sealed .................................................................... 6
`C.
`Ex. 1097 Should be Sealed .................................................................... 7
`D.
`Ex. 1098 Should be Sealed .................................................................... 7
`E.
`Ex. 1099 Should be Sealed .................................................................... 7
`F.
`Ex. 1100 Should be Sealed .................................................................... 8
`G.
`Ex. 1117 Should be Sealed .................................................................... 8
`H.
`Ex. 1118 Should be Sealed .................................................................... 9
`I.
`IV. Non-Confidential Version ............................................................................. 9
`V. Request for Conference Call with the Board ............................................ 10
`VI. Conclusion .................................................................................................... 10
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`
`
`
`i
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`IPR2022-00031
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`I.
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`Introduction
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`Petitioner’s Unopposed Motion to Seal
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`Petitioner Apple Inc. (“Apple”) respectfully submits this unopposed Motion
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`to Seal Petitioner’s Opposition to Patent Owner’s Motion to Terminate as well as
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`Exhibits 1095, 1096, 1097, 1098, 1099, 1100, 1117, and 1118. Petitioner submits
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`this Motion to Seal (“Motion”) to safeguard the confidential information of the
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`relevant parties to this proceeding, pursuant to the Protective Order.1 See Paper 52.
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`Petitioner proposes to seal documents in two categories: First, Petitioner
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`proposes to seal its Opposition to Patent Owner’s Motion to Terminate. Petitioner
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`will provide a redacted version of its Opposition to Patent Owner’s Motion to
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`Terminate once Petitioner has had the opportunity to consult with the relevant
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`parties to determine the required redactions. Second, Petitioner proposes to seal
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`exhibits that contain confidential information and have been designated as
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`confidential pursuant to the Protective Order (Paper 52). These include Exhibits
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`1095, 1096, 1097, 1098, 1099, 1100, 1117, and 1118.
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`1 The relevant parties include Apple Inc. (“Petitioner” or “Apple”), MemoryWeb,
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`LLC (“Patent Owner” or “MemoryWeb”), Samsung Electronics Co., Ltd.
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`(“Samsung”), and Unified Patents, LLC (“Unified”).
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`1
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`IPR2022-00031
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`Petitioner’s Unopposed Motion to Seal
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`Petitioner’s Opposition to Patent Owner’s Motion to Terminate and the
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`aforementioned exhibits comprise confidential information, as described below.
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`Further, Petitioner certifies that is has conferred with Patent Owner who does not
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`oppose this Motion to Seal.
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`II. Governing Rules and PTAB Guidance
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`Pursuant to 35 U.S.C. § 316(a)(1) and 37 C.F.R. § 42.14, a party may file a
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`document with the intent that it remain under seal by filing a concurrent motion to
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`seal, and if accompanied with a motion to seal, the document shall be provisionally
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`sealed pending the outcome of the motion. See also 35 U.S.C. § 316(a)(7) (“The
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`Director shall prescribe regulations . . . providing for protective orders governing
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`the exchange and submission of confidential information”). The Trial Practice
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`Guide provides that “[t]he rules identify confidential information in a manner
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`consistent with Federal Rule of Civil Procedure 26(c)(1)(G), which provides for
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`protective orders for trade secret or other confidential research, development, or
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`commercial information. 37 C.F.R. § 42.54.” Trial Practice Guide at 19.
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`Under 37 C.F.R. 42.54, the Board may grant a motion to seal “for good
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`cause.” The moving party has the burden of proof under 37 C.F.R. § 42.20(c).
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`2
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`IPR2022-00031
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`Petitioner’s Unopposed Motion to Seal
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`III. There Is Good Cause to Grant Petitioner’s Motion to Seal Confidential
`Information from a Third Party
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`There is good cause for the Board to grant this Motion to Seal. Good cause
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`exists if the movant “(1) the information sought to be sealed is truly confidential,
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`(2) a concrete harm would result upon public disclosure, (3) there exists a genuine
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`need to rely in the trial on the specific information sought to be sealed, and (4), on
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`balance, an interest in maintaining confidentiality outweighs the strong public
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`interest in having an open record.” See Argentum Pharm. LLC v. Alcon Research,
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`Ltd., No. IPR2017-01053, Paper 27 at 4 (PTAB Jan. 19, 2018) (citing 37 C.F.R. §
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`42.54(a)).
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`The four requirements for good cause are met here. First, Petitioner’s
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`Opposition to Patent Owner’s Motion to Terminate and Exhibits 1095, 1096, 1097,
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`1098, 1099, 1100, 1117, and 1118 contain either “non-public, highly confidential
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`proprietary business information []about Unified’s members and information
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`regarding Unified’s business operations—that [Unified] maintains as confidential
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`trade secrets,” or correspondingly non-public, highly confidential proprietary
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`business information about Apple. See Unified Patents, LLC v. MemoryWeb Inc.,
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`No. IPR2021-01413, Paper 24 at 2-3; see also id., Paper 26 at 3 (PTAB June 14,
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`2022) (granting Unified’s Motion to Seal). Unified has also represented that these
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`documents contain “confidential, sensitive commercial information, including
`3
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`IPR2022-00031
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`Petitioner’s Unopposed Motion to Seal
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`closely held information related to Unified’s core business” and that “Unified
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`guards such information closely to protect its members as well as its own business
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`from copying by others.” Id. at 3. Further, Unified has represented that this
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`information has not been made publicly available and that Unified has no intention
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`to make this information publicly available. Id. Petitioner will provide a redacted
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`version of its Opposition to Patent Owner’s Motion to Terminate. Due to the
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`confidential nature of Exhibits 1095, 1096, 1097, 1098, 1099, 1100, 1117, and
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`1118, Petitioner cannot meaningfully provide redacted versions of these documents
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`and therefore respectfully requests that these exhibits remain under seal in their
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`entirety.
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`Second, if the information in these exhibits were publicly disclosed, Unified
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`has represented that its business model would suffer a concrete harm because
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`public disclosure would expose Unified’s business model to copying by other
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`businesses. See Unified, No. IPR2021-01413, Paper 24 at 3. Further, if these
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`documents were publicly disclosed, Unified has represented that public disclosure
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`would adversely affect its members. Id. Unified further explained that it seeks to
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`preserve its contractual obligations to maintain the confidential information of its
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`members, including Apple, which is contained within these exhibits. Id.
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`4
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`IPR2022-00031
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`Petitioner’s Unopposed Motion to Seal
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`Third, the documents proposed to be sealed and the information within them
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`are genuinely necessary for Petitioner to rely on in this proceeding as one of the
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`disputes in this proceeding is whether Petitioner is a real party in interest (“RPI”).
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`Thus, Petitioner has to rely on this confidential information to prove that Petitioner
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`is not an RPI of Unified.
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`Fourth, the interest in maintaining confidentiality outweighs the public
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`interest in having an entirely open record. Unified, for instance, represents that
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`sealing documents with its confidential business information will not harm the
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`public. See Unified, No. IPR2021-01413, Paper 24 at 3-4.
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`Therefore, the unredacted version of Petitioner’s Opposition to Patent
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`Owner’s Motion to Terminate (redacted version forthcoming) as well as Exhibits
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`1095, 1096, 1097, 1098, 1099, 1100, 1117, and 1118 in their entirety should be
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`sealed. Petitioner respectfully requests that the Board grants this Motion.
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`A.
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`Petitioner’s Opposition to Patent Owner’s Motion to Terminate
`Should Be Sealed
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`In its Opposition to Patent Owner’s Motion to Terminate, Petitioner replies
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`to Patent Owner’s assertions related to the RPI issue in this proceeding. In order to
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`show that Petitioner is not an RPI of Unified, Petitioner must include in its
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`Opposition confidential information that has not been published or otherwise made
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`publicly available. Petitioner will provide a redacted version of Petitioner’s
`5
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`IPR2022-00031
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`Petitioner’s Unopposed Motion to Seal
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`Opposition to Patent Owner’s Motion to Terminate once Petitioner has had the
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`opportunity to consult with the relevant parties to determine the required
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`redactions.
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`B.
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`Ex. 1095 Should be Sealed
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`Exhibit 1095 is Exhibit B of the Membership Agreement between Unified
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`and Apple. This exhibit has been marked as “CONFIDENTIAL” under the
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`Protective Order in this case. This exhibit includes confidential business
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`information which Unified represents has not been published or otherwise made
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`publicly available. Due to the confidential nature of Exhibit 1095, Petitioner
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`cannot meaningfully provide a redacted version of this exhibit. Therefore,
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`Petitioner requests that Exhibit 1095 is sealed in its entirety.
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`C. Ex. 1096 Should be Sealed
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`Exhibit 1096 is Exhibit C of the Membership Agreement between Unified
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`and Apple. This exhibit has been marked as “CONFIDENTIAL” under the
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`Protective Order in this case. This exhibit includes confidential business
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`information which Unified represents has not been published or otherwise made
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`publicly available. Due to the confidential nature of Exhibit 1096, Petitioner
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`cannot meaningfully provide a redacted version of this exhibit. Therefore,
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`Petitioner requests that Exhibit 1096 is sealed in its entirety.
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`6
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`IPR2022-00031
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`Petitioner’s Unopposed Motion to Seal
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`D. Ex. 1097 Should be Sealed
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`Exhibit 1097 is the Initial Service Agreement between Unified and Apple.
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`This exhibit has been marked as “CONFIDENTIAL” under the Protective Order in
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`this case. This exhibit includes confidential business information which Unified
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`represents has not been published or otherwise made publicly available. Due to the
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`confidential nature of Exhibit 1097, Petitioner cannot meaningfully provide a
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`redacted version of this exhibit. Therefore, Petitioner requests that Exhibit 1097 is
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`sealed in its entirety.
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`E.
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`Ex. 1098 Should be Sealed
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`Exhibit 1098 is the 2018 Letter Agreement between Unified and Apple.
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`This exhibit has been marked as “CONFIDENTIAL” under the Protective Order in
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`this case. This exhibit includes confidential business information which Unified
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`represents has not been published or otherwise made publicly available. Due to the
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`confidential nature of Exhibit 1098, Petitioner cannot meaningfully provide a
`
`redacted version of this exhibit. Therefore, Petitioner requests that Exhibit 1098 is
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`sealed in its entirety.
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`F.
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`Ex. 1099 Should be Sealed
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`Exhibit 1099 is the 2022 Letter Agreement between Unified and Apple.
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`This exhibit has been marked as “CONFIDENTIAL” under the Protective Order in
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`7
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`IPR2022-00031
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`Petitioner’s Unopposed Motion to Seal
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`this case. This exhibit includes confidential business information which Unified
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`represents has not been published or otherwise made publicly available. Due to the
`
`confidential nature of Exhibit 1099, Petitioner cannot meaningfully provide a
`
`redacted version of this exhibit. Therefore, Petitioner requests that Exhibit 1099 is
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`sealed in its entirety.
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`G. Ex. 1100 Should be Sealed
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`Exhibit 1100 is the 2023 Letter Agreement between Unified and Apple.
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`This exhibit has been marked as “CONFIDENTIAL” under the Protective Order in
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`this case. This exhibit includes confidential business information which Unified
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`represents has not been published or otherwise made publicly available. Due to the
`
`confidential nature of Exhibit 1100, Petitioner cannot meaningfully provide a
`
`redacted version of this exhibit. Therefore, Petitioner requests that Exhibit 1100 is
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`sealed in its entirety.
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`H. Ex. 1117 Should be Sealed
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`Exhibit 1117 is Petitioner’s Opposition to Patent Owner’s Motion to
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`Terminate, filed in Apple Inc. v. Uniloc 2017 LLC, No. IPR2019-10667, Paper 39
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`(filed Feb. 23, 2021), which was filed under seal in those proceedings. Due to the
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`confidential nature of Exhibit 1117, Petitioner cannot meaningfully provide a
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`
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`8
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`IPR2022-00031
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`Petitioner’s Unopposed Motion to Seal
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`redacted version of this exhibit. Therefore, Petitioner requests that Exhibit 1117 is
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`sealed in its entirety.
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`I.
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`Ex. 1118 Should be Sealed
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`Exhibit 1118 is the Declaration of Jeff Lasker who is the Principal Counsel
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`and Senior Manager of Special Deals & Analytics in the Intellectual Property
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`group at Apple’s legal department. This exhibit has been marked as “HIGHLY
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`CONFIDENTIAL” under the Protective Order in this case. This declaration
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`includes confidential business information regarding Apple’s business, the
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`operation of Apple’s legal department, and Apple’s agreements with Unified that
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`has not been published or otherwise made publicly available. Due to the
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`confidential nature of Exhibit 1118, Petitioner cannot meaningfully provide a
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`redacted version of this exhibit. Therefore, Petitioner requests that Exhibit 1118 is
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`sealed in its entirety.
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`IV. Non-Confidential Version
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`As required by the Board’s Trial Practice Guide, the Default Protective
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`Order, and the agreed-upon Protective Order, a non-confidential redacted version
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`of Petitioner’s Opposition to Patent Owner’s Motion to Terminate is forthcoming.
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`Petitioner will submit the redacted version of this documents after the relevant
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`9
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`IPR2022-00031
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`Petitioner’s Unopposed Motion to Seal
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`parties have had an opportunity to review it. The redactions will be limited in
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`nature and scope to the confidential information.
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`V. Request for Conference Call with the Board
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`If the Board is not inclined to grant Petitioner’s unopposed Motion to Seal,
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`Petitioner and the relevant parties respectfully request a conference call with the
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`Board to address any concerns that the Board may have prior to a decision on the
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`Motion being issued.
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`VI. Conclusion
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`For the foregoing reasons, Petitioner respectfully requests that the Board
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`grant this unopposed Motion to Seal Petitioner’s Opposition to Patent Owner’s
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`Motion to Terminate as well as Exhibits 1095, 1096, 1097, 1098, 1099, 1100,
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`1117, and 1118.
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`Dated: September 29, 2023
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`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 Petitioners
`
`
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`10
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`IPR2022-00031
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`Petitioner’s Unopposed Motion to Seal
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`CERTIFICATE OF COMPLIANCE
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`I hereby certify that this Motion complies with the type-volume limitations
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`of 37 C.F.R. § 42.24, because it contains 10 pages, excluding the parts of the
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`Motion exempted by 37 C.F.R. § 42.24.
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`
`
`
`
`Dated: September 29, 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 Petitioners
`
`
`
`
`
`
`
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`IPR2022-00031
`
`Petitioner’s Unopposed Motion to Seal
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`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 29th day of September, 2023, a copy of this
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`Motion to Seal has been served by electronic mail on the following addresses for
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`patent owner(s):
`
`Jennifer Hayes, jenhayes@nixonpeabody.com
`George Dandalides, gdandalides@nixonpeabody.com
`Matthew A. Werber, mwerber@nixonpeabody.com
`Daniel Schwartz, djschwartz@nixonpeabody.com
`Angelo Christopher, achristopher@nixonpeabody.com
`
`Dated: September 29, 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 Petitioners
`
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