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 Reply In Support of its Motion to Terminate
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`(“Reply”) (Paper 71) and Exhibits 2114, 2115, 2116 and 2117. Patent Owner
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`submits this Motion to safeguard Petitioner’s confidential information, pursuant to
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`the Protective Order.1 See Paper 52. Patent Owner will provide redacted versions of
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`the Reply and Exhibit 2117 once it has had the opportunity to consult with the
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`relevant parties to determine the extent of the redactions.
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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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`Reply will rely on and discuss the confidential information disclosed in such
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`exhibits.
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`Patent Owner certifies that it has conferred with Petitioner through counsel,
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`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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`1 The relevant parties with respect to this Motion are Apple, Inc. (“Apple” or
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`“Petitioner”) and Unified Patents, LLC (“Unified”).
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`1
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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, the Reply, and Exhibits 2114-2117 contain non-public, highly
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`confidential proprietary business information pertaining to Petitioner’s contractual
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`relationship with Unified Patents LLC. Patent Owner understands that this
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`information includes confidential commercial information that Petitioner has not
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`made, and does not intend to make, publicly available. Patent Owner also
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`understands that this information was produced pursuant to the Protective Order.
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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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`IPR2022-00031
`Patent No. 10,621,228
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`Due to the nature of Exhibits 2114, 2115, and 2116, Patent Owner and Petitioner
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`cannot meaningfully provide redacted versions of these documents, and Patent
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`Owner requests that they remain under seal in their entirety.
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`Second, public disclosure of this information would expose Petitioner’s
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`confidential business activities. Patent Owner understands the Reply and Exhibits
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`2114-2117 contain information Petitioner maintains as confidential. Patent Owner
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`believes that the public will not be harmed by sealing its confidential business
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`information.
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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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`Reply and Exhibit 2117 (redactions forthcoming) and the entirety of Exhibits 2114,
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`2115, and 2116 should be sealed. Patent Owner respectfully requests that the Board
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`grant this 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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`IPR2022-00031
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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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`Exhibit 2114 is an exhibit to an agreement between Apple and Unified that
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`has been marked “Confidential” under the Protective Order in this case. This
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`document contains sensitive business information that Petitioner asserts has not been
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`published or otherwise made publicly available. Due to the nature of Exhibit 2114,
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`Patent Owner and Petitioner 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 2115 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 Petitioner asserts has not been published or otherwise made publicly
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`available. Due to the nature of Exhibit 2115, Patent Owner and Petitioner 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 2116 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 Petitioner asserts has not been published or otherwise made publicly
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`available. Due to the nature of Exhibit 2116, Patent Owner and Petitioner cannot
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`IPR2022-00031
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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 2117 is a deposition transcript of an Apple witness marked “HIGHLY
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`CONFIDENTIAL – ATTORNEYS’ EYES ONLY” by Petitioner. Petitioner has
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`asserted this document contains sensitive business information that has not been
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`published or otherwise made publicly available. A public version of Exhibit 2117,
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`from which the confidential information has been redacted, is forthcoming. Patent
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`Owner’s Reply relies on and discusses the confidential aspects of exhibits being filed
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`under seal pursuant to this motion. A redacted version of the Reply is forthcoming.
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`The balance favors protecting Petitioner’s confidential information. The
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`information in the aforementioned exhibits is not related to patentability, the scope
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`of the ʾ228 patent, or any matter generally impacting the public interest in evaluating
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`the ʾ228 patent. Rather, the information sought to be sealed relates to Petitioner’s
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`status as an RPI to the Unified IPR. The information relates to business dealings
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`between Unified and its members, including Petitioner. Unified has represented this
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`information is not known to the public. See e.g., Unified Patents, IPR2021-01413,
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`Paper 24 at 7.
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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 Reply without the
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`IPR2022-00031
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`chance of incidental public exposure of confidential business information. The
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`public interest is well-served in keeping this information confidential.
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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, non-confidential redacted versions of Exhibit
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`2117 and the Reply are forthcoming. Patent Owner will submit redacted versions
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`after the relevant parties have had the opportunity to review following submission
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`of the Motion. The redactions are minimal and limited in nature and scope to the
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`confidential information.
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`Patent Owner submits that the remaining exhibits are highly confidential in
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`their entireties. Patent Owner certifies that, to the best of its knowledge and
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`understanding, the information sought to be sealed by this Motion has not been
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`published or 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 unredacted versions
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`IPR2022-00031
`Patent No. 10,621,228
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`of the Reply and Exhibit 2117, and Exhibits 2114, 2115, and 2116.
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`Respectfully submitted,
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`Dated: October 10, 2023
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`By:
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`/Jennifer Hayes/
`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 October 10, 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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