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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`––––––––––––––––––
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`APPLE INC.,
`Petitioner,
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`v.
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`MEMORYWEB, LLC,
`Patent Owner.
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`––––––––––––––––––
`
`Case No. IPR2022-00031
`U.S. Patent No. 10,621,228
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`––––––––––––––––––
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO TERMINATE
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`PUBLIC VERSION
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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 OPPOSITION TO PATENT OWNER’S
`MOTION TO TERMINATE
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`PUBLIC VERSION
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`IPR2022-00031
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`Petitioner’s Opposition to Motion to Terminate
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`TABLE OF CONTENTS
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`B.
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`INTRODUCTION ............................................................................................ 1
`I.
`II. ARGUMENT .................................................................................................... 4
`A. UNIFIED COULD NOT REASONABLY HAVE RAISED GROUNDS BASED
`ON A3UM IN ITS PROCEEDING. ............................................................ 4
`1. The Apple Grounds Based on A3UM (EX1005)............................ 5
`2. MemoryWeb Cannot Meet Its Burden Under §315(e)(1) ............. 6
`APPLE IS NOT AN RPI OF UNIFIED. ....................................................12
`1. Apple Has No Ability to Direct, Control, or Influence Unified’s
`Actions Regarding IPR Proceedings ...........................................15
`2. No Substantive Communications Occurred Between Unified and
`Apple Regarding MemoryWeb or the ’228 Patent ......................18
`3. Unified’s Business Model Does Not Make Apple an RPI. ..........21
`4. Unified’s IPR Was Not Filed for the Benefit of Apple or at
`Apple’s Behest, But in Unified’s Own Interest. ...........................25
`5. Unified Did Not Take Apple’s Interests into Account in Deciding
`Whether to File an IPR Against the ’228 Patent .........................28
`6. Apple and Unified Do Not Share Board Members ......................29
`THE RPI AND ESTOPPEL ISSUES ARE WAIVED..................................30
`C.
`TERMINATING THIS PROCEEDING UNDER §315(D) IS IMPROPER .....31
`D.
`III. CONCLUSION...............................................................................................33
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Apple Inc. v. SmartFlash, LLC,
`CBM2015-00015, Paper 49 (PTAB Nov. 4, 2015) .............................................. 3
`Apple Inc. v. MemoryWeb, LLC,
`IPR2022-00033, Paper 39 (PTAB May 18, 2023) ............................................... 6
`Apple Inc. v. MemoryWeb, LLC,
`PGR2022-00006, Paper 41 (PTAB June 7, 2023) ................................................ 6
`Apple Inc. v. Uniloc 2017 LLC,
`IPR2019-01667, Paper 49 (PTAB Apr. 7, 2021) ......................................... 14, 17
`Applications in Internet Time v. RPX Corporation,
`897 F.3d 1336 (Fed. Cir. 2018) ...................................................................passim
`Consol. Bearings Co. v. United States,
`348 F.3d 997 (Fed. Cir. 2003) ............................................................................ 14
`Encino Motorcars, LLC v. Navarro,
`579 U.S. 211 (2016) ............................................................................................ 14
`Ironburg Inventions Ltd. v. Valve Corp.,
`64 F.4th 1274 (Fed. Cir. 2023) ................................................................... 4, 5, 10
`Palomar Techs., Inc. v. MRSI Sys., LLC,
`No. 18-10236-FDS, 2020 WL 2115625 (D. Mass. May 4, 2020) ........................ 5
`RadLAX Gateway Hotel, LLC v. Amalgamated Bank,
`566 U.S. 639 (2012) ............................................................................................ 31
`Robert Bosch, LLC v. Iancu,
`778 Fed. App’x 871 (Fed. Cir. 2019) ................................................................. 14
`RPX Corp. v, Applications In Internet Time LLC,
`IPR2015-01750, Paper 128 (PTAB Oct. 2, 2020) .............................................. 13
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`Unified Patents Inc. v. Bradium Techs. LLC,
`IPR2018-00952, Paper 31 (PTAB Dec. 20, 2018)
` ........................................................................................................... 22, 23, 25, 29
`Unified Pats., LLC v. Cellular Commc’ns Equip. LLC,
`IPR2018-00091, Paper 33 (PTAB May 22, 2019) ......................................passim
`Unified Pats., LLC v. MemoryWeb, LLC,
`IPR2021-01413, Paper 62 (Mar. 22, 2023) ................................................ 1, 3, 14
`Unified Pats., LLC v. Uniloc 2017 LLC,
`IPR2019-00453, Paper 38 (PTAB July 22, 2020) .............................................. 13
`Unified v. Realtime Adaptive Streaming,
`IPR2018-00883, Paper 36 (PTAB Nov. 27, 2028) ....................................... 22, 26
`Uniloc, 2017 LLC v. Facebook Inc.,
`989 F.3d 1018 (Fed. Cir. 2021) ...................................................................passim
`Ventex Co., Ltd. v. Columbia Sportswear N. Am., Inc.,
`IPR2017-00651, Paper 148 (PTAB Jan. 24, 2019) (precedential) .................... 13
`Vicor Corp. v. SynQor, Inc.,
`869 F.3d 1309 (Fed. Cir. 2017) .......................................................................... 14
`Statutes
`5 U.S.C. § 556(d) ....................................................................................................... 4
`5 U.S.C. § 706(2)(A) ................................................................................................ 14
`35 U.S.C. § 315(e) ............................................................................................... 4, 32
`35 U.S.C. § 315(e)(1) ......................................................................................... 1, 3, 6
`Other Authorities
`37 C.F.R. § 42.20(c) ................................................................................................... 4
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`Petitioner’s Opposition to Motion to Terminate
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`I.
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`INTRODUCTION
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`MemoryWeb identifies no basis to terminate this proceeding, which has
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`already advanced through institution, briefing, and final hearing. The Board thus
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`should issue a final written decision (“FWD”) addressing each claim of U.S. Patent
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`10,621,228 (“’228”).
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`First, MemoryWeb has not met its burden of establishing that Unified
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`Patents (“Unified”) could have reasonably raised and defended grounds based on
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`A3UM (EX1005) in IPR2021-01413 (“Unified”). Remarkably, after vigorously
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`disputing that A3UM (EX1005) could have been found by a skilled artisan,
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`MemoryWeb reverses course and now claims a “skilled searcher” could have
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`found it. But MemoryWeb’s own evidence shows otherwise: its “skilled searcher”
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`(Mr. Lyhmn) pursued a hindsight-driven, scorched-earth campaign that ultimately
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`failed to locate EX1005 (i.e., the user manual for v3.0.0 of the Aperture 3 product
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`on which Apple’s challenge is based). MemoryWeb also claimed Apple had not
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`proven A3UM was adequately disseminated to the public. The Board found it was
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`by relying on evidence inaccessible to Unified about how A3UM was
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`disseminated, particularly testimony of an Apple employee. Each point
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`independently shows Unified could not have reasonably raised grounds based on
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`A3UM (EX1005) in IPR2021-01413. Because 35 U.S.C. §315(e)(1) does not
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`apply, MemoryWeb’s real-party-in-interest (“RPI”) arguments are moot.
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`Second, Apple is not an RPI of Unified. Numerous Board panels have
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`found the relationship between Unified and its Members—including Apple—do
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`not make those members RPIs of Unified under Applications in Internet Time v.
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`RPX Corporation, 897 F.3d 1336 (Fed. Cir. 2018) (“AIT”). In its now-vacated RPI
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`order in Unified—still cited by MemoryWeb—the Board distinguished those past
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`decisions by finding
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` EX2080, 10, 25-28. But undisputed evidence proves:
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`. MemoryWeb thus wholly
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`abandons the Board’s findings regarding the
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`yielding a record indistinguishable from those before prior panels finding Apple
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`was not an RPI of Unified. A different conclusion here, with no material change of
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`facts or law, would be unsupported, an unexplained change in Office policy, and
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`an arbitrary and capricious abuse of discretion under the Administrative Procedure
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`Act (“APA”).
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`Third, MemoryWeb’s RPI and estoppel arguments were forfeited, and no
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`good cause exists to consider them now under the Board’s rules. Notably, the
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`Board has not made specific findings yet (as the APA requires) on the forfeiture
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`and good cause arguments presented by Apple in its over 10,000 words of ordered
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`briefing on those issues.
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`Fourth, the Board should reject MemoryWeb’s attempt to invent a new,
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`non-statutory discretionary estoppel concept to end review of claims 8-19. Doing
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`otherwise would be reversible legal error. Congress used precise language to
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`define estoppel in §315(e)(1), limiting it to specific claims addressed in an earlier
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`FWD. That forecloses reading §315(d) as authorizing termination of unchallenged
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`claims under an “estoppel” rationale. And MemoryWeb’s equity complaints are
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`baseless—they rest on the false premise that Apple colluded with Unified to
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`challenge the ’228 patent, and ignore that MemoryWeb, not Apple, is the party
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`engaged in gamesmanship by deliberately reserving its RPI/estoppel challenge
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`until after briefing and the hearing were complete.
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`Finally, regardless of its decision on the motion to terminate Apple from this
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`proceeding, the Board should issue a FWD on claims 1-19. The issues are fully
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`briefed and argued, and there is no settlement. In analogous settings, the Board has
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`issued a FWD even where a party could not further participate. Apple Inc. v.
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`SmartFlash, LLC, CBM2015-00015, Paper 49 (PTAB Nov. 4, 2015). It should
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`issue a FWD on all claims here.
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`II. ARGUMENT
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`MemoryWeb has the burden of proving it is entitled to the requested relief.
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`5 U.S.C. §556(d); 37 C.F.R. §42.20(c); Ironburg Inventions Ltd. v. Valve Corp., 64
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`F.4th 1274, 1299 (Fed. Cir. 2023). MemoryWeb failed to carry that burden.
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`A. Unified Could Not Reasonably Have Raised Grounds Based on
`A3UM in Its Proceeding.
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`Estoppel under 35 U.S.C. §315(e) bars a petitioner or RPI thereof from
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`maintaining a proceeding “on any ground that the petitioner raised or reasonably
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`could have raised during [an earlier] inter partes review” that results in a FWD
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`concerning the same claim. Unified could not have done so for Apple’s grounds
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`based on A3UM.
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`Logically, a ground that a party cannot support in a PTAB trial is not one
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`that could have reasonably been raised earlier by that party. Thus, if a party cannot
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`obtain evidence needed to prove the prior art status of a reference, a ground based
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`on that reference could not reasonably have been raised.
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`Additionally, the prior art must be something “a skilled searcher conducting
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`a diligent search reasonably would have been expected to discover.” Ironburg, 64
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`F.4th at 1299. Estoppel attaches to “what the searcher of ordinary skill would find
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`through reasonable diligence,” id., not what an actual searcher in fact did find
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`through whatever level of diligence she exercised. “If [the skilled searcher]
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`employed ‘scorched earth’ tactics to find the references making up the Non-
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`Petitioned Grounds, then its experience may be irrelevant to a determination of
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`what would have been discovered by an ordinarily skilled searcher acting with
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`merely reasonable diligence.” Id., 1298-99. Moreover, “every reasonable search
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`must have a stopping point,” and the skilled searcher standard should not rely upon
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`“hindsight analysis” to continue a search “if significant prior art had already been
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`located.” Palomar Techs., Inc. v. MRSI Sys., LLC, No. 18-10236-FDS, 2020 WL
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`2115625, *12 (D. Mass. May 4, 2020), id., *14 (“[I]n hindsight there will almost
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`always be a seemingly simple search pathway that could have led a searcher from
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`the patent to the reference.”).
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`1.
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`The Apple Grounds Based on A3UM (EX1005)
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`Apple’s grounds are based on a specific document: the HTML-based user
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`manual distributed with version 3.0.0 of the Aperture 3 software product
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`(EX1005). Petition, 13. To establish A3UM’s prior art status, Apple presented,
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`inter alia, testimony from Matthew Birdsell, an Apple employee “with personal
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`knowledge of the publication and dissemination of the [A3UM] in early 2010.” Id.
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`13; EX1020. Mr. Birdell’s testimony established that “in February 2010,” the
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`HTML file set that constitutes A3UM “was included on the installation DVD in
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`retail packages of Aperture 3 that were sold and distributed within the United
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`States,” and that “once Aperture 3 was released, the A3UM HTML file set was
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`loaded onto a publicly accessible website.” Petition, 14, 16-17; EX2026, 3:19-
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`36:12, 36:21-37:25, 51:16-20, 54:6-22, 55:20-56:11, 59:6-8, 59:10-60:10, 62:4-
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`21). Mr. Birdsell also, critically, confirmed the A3UM HTML file set on the DVD
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`was identical to that published on Apple’s website. EX1020, ¶¶12-20; EX2026,
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`40:15-42:12.
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`MemoryWeb vigorously disputed that a skilled artisan exercising reasonable
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`diligence could have found A3UM and that A3UM had been adequately
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`disseminated. For example, MemoryWeb contended “a POSITA with the Aperture
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`3 installation DVD lacked any reasonable way of locating the HTML file set unless
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`they already knew what to look for and where to look.” POPR, 27-44; POR, 27-
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`36. MemoryWeb likewise asserted a skilled artisan “would have to take several
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`actions to locate the HTML file set on the Apple website, similar to how one
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`would have to scour the installation DVD” (POPR, 43) and argued a skilled artisan
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`could not have found A3UM exercising reasonable efforts (POR, 17-23).
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`The Board sided with Apple at institution and in FWDs in related
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`proceedings on the prior art status of A3UM. In so doing, it relied extensively on
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`Mr. Birdsell’s testimony. ID, 30-36; PGR2022-00006, Paper 41, 7-8, 12-30;
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`IPR2022-00032, Paper 42, 6-30; IPR2022-00033, Paper 39, 24-50.
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`2. MemoryWeb Cannot Meet Its Burden Under §315(e)(1)
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`For two independent reasons, MemoryWeb has failed to establish that
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`Unified could have reasonably advanced grounds based on A3UM.
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`First, MemoryWeb made no attempt to show Unified could have introduced
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`evidence in its proceeding comparable to Mr. Birdsell’s testimony that the Board
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`relied on to find A3UM was publicly disseminated. Unified would not have been
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`aware of Mr. Birdsell, much less his knowledge, and could not have obtained his
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`testimony or Apple’s corroborating internal records. Undisputed evidence shows
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`that neither Unified nor Apple knew of the other’s plans to challenge the ’228
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`patent, and Apple is
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`. Infra §II.B.
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`Second, MemoryWeb has failed to show that a “skilled searcher” would
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`have located A3UM by a reasonably diligent search. In fact, MemoryWeb’s
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`expert, Mr. Lhymn, testified that he did not find EX1005 despite being told of its
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`existence and specifically directed to look for it! EX1115, 120:20-121:20, 123:13-
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`15, 124:3-12, 135:22-136:8, 137:3-138:2, 141:2-13, 141:25-142:9, 157:9-158:2,
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`158:16-23.
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`MemoryWeb also cannot square its prior (incorrect) assertions about the
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`inability of a skilled artisan to locate and retrieve A3UM with its new assertions
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`that a skilled searcher in 2021 could. For example, MemoryWeb disputed that “a
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`skilled artisan exercising reasonable diligence would locate the HTML file set on
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`the Aperture 3 installation DVD,” instead arguing one would have to “scour the
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`installation DVD” because “there is simply no evidence that someone interested in
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`photo management systems would know about Aperture 3,” and “no evidence of
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`meaningful indexing such that a skilled artisan could reasonably locate A3UM
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`(EX1005) from the Apple website.” POPR, 31, 43 (emphases added); PO Sur-
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`Reply, 1-9 (“[An] interested artisan exercising reasonable diligence would [not] be
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`able to locate A3UM without prior knowledge of A3UM”); POR, 15-43.
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`MemoryWeb’s past assertions about a skilled artisan directly refute its new
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`assertions about a skilled searcher in 2021, recognizing that the skills and
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`knowledge of the two are plainly distinct. For example, a skilled searcher in 2021
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`would not have known: (i) of photo management products available in 2010 (e.g.,
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`Aperture 3), (ii) that help files for MacOS applications were usually stored as
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`HTML files within a specific location in the application bundle, or (iii) that the
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`HTML file set that constitutes EX1005 could be retrieved from the Aperture v3.0
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`Installation DVD. The skilled artisan’s knowledge of all those things contributed
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`to the Board’s conclusion that A3UM was prior art. ID, 29-36.
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`The testimony of MemoryWeb’s expert, Mr. Lhymn, also directly refutes its
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`assertions that Unified could have raised A3UM. Most notably, Mr. Lhymn
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`testified that, even after resorting to scorched-earth search tactics specifically
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`designed to support MemoryWeb’s estoppel arguments (a business he touts), he
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`could not find A3UM (EX1005). EX1115, 33:24-47:11, 168:23-169:5. Instead,
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`he found only a 2012 version of A3UM (EX2107), published after the priority date
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`of the ’228 patent and thus worthless as prior art under his own search parameters.
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`EX1115, 157:9-158:2; EX2011, ¶37.
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`Tellingly, Mr. Lhymn never addressed a putative “redline” of EX2107 to
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`EX1005 that was prepared by counsel. MemoryWeb contends EX2107 is
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`“substantively identical” to EX1005. That is both false and irrelevant.1 EX2107 is
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`the user manual for a 2012 version of Aperture 3, and has numerous sections
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`corresponding to new features of Aperture not found in EX1005. See EX1116.
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`EX2017 is also irrelevant: it was not available in 2010 and is not EX1005.
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`Indeed, Mr. Lhymn admits none of his exhibits are actually A3UM (EX1005) with
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`its 2009 copyright date. EX1115, 135:22-136:8, 122:25-124:12, 137:18-143:17,
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`149:6-150:5, 151:23-152:20, 156:12-157:13.
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`Mr. Lhymn’s other testimony is irrelevant or not credible:
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`• His investigation improperly started from knowledge of A3UM’s
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`existence and, relying on hindsight, addressed “whether [A3UM]
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`could have been found by a skilled searcher’s diligent search” by
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`September 3, 2021, and used a search tool he admitted he had not
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`used until 2023 despite testifying about his “experience” with it in
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`EX2099 misrepresents sections of EX2107 as being present in EX1005,
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`1
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`which is demonstrably false. See EX1116.
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`2021. EX2111, ¶¶4, 38; EX1115, 27:7-28:20, 32:13-33:23, 47:21-
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`49:3, 56:13-57:1, 57:23-65:25, 66:14-67:13, 172:9-175:1.
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`• MemoryWeb argues a reasonable searcher would have Mr. Lhymn’s
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`search, and that, after “review[ing] the references cited in each of the
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`results, including Salvador,” would have discovered “a citation to an
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`Aperture manual.” Mot., 29. But to reach Salvador—the 100th result
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`in Mr. Lhymn’s relevance-ranked list—a searcher following his stated
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`methodology would have had to first review the 99 preceding
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`references and the thousands of references they list. EX2111, ¶¶34,
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`39, 41-42; EX2100; EX1115, 48:9-49:4, 51:5-57:22, 58:15-59:10,
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`68:15-69:5, 69:19-85:7, 86:2-89:16. That is the type of “scorched
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`earth campaign” Ironburg held insufficient. 64 F.4th at 1297.
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`• Mr. Lhymn conceded the document cited by Salvador is not A3UM,
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`but a 2006 document called “Aperture Getting Started”:
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`EX2101 (cover); EX2111, ¶42; EX1115, 99:22-101:25, 114:1-115:17,
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`116:10-119:15, 121:3-20, 148:11-18. He also did not try to retrieve
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`the document using the URL Salvador provides, or search for it by
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`title. Instead, inexplicably and supposedly prompted by Salvador, Mr.
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`Lhymn performed Google and eBay2 searches for “Apple aperture
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`manual.” EX1115, 90:3-93:11. But even this hindsight-directed
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`search never located A3UM (EX1005). EX1115, 88:25-94:24, 95:11-
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`102:20, 119:2-14, 147:8-16, 148:1-18, 152:21-153:15, 154:5-155:22,
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`159:2-162:8.
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`• Mr. Lhymn opines that one of the 519 refences cited on the face of the
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`’228 patent (“Hoffman”) “mentions the Apple Aperture product.”
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`EX2111, ¶51. But Mr. Lhmyn’s declaration omits that Hoffman was
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`specifically identified to him by MemoryWeb’s counsel, not through
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`searching, and includes 216 pages of material with no reference to
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`Aperture version 3 or its user manual. EX1115, 162:9-168:15,
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`170:21-175:5.
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`• Mr. Lhymn could not rule out that a skilled searcher would have
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`ended his search before arriving at Salvador and Hoffman, calling
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`2 Mr. Lhymn admits he obtained no DVDs from eBay, does not know which
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`versions were for sale there as of 2021, and provided no evidence an ordinarily-
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`skilled searcher would have known how to access user manuals from the DVD.
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`EX1115, 155:6-156:11, 159:2-15.
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`“patent searching” an “art form” where searchers “ha[ve] to make”
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`decisions including “whether to review all of the citations.” EX1115,
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`20:21-26:23, 29:3-8, 50:8-53:6, 53:25-54:6, 82:18-83:14, 84:22-85:5,
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`85:19-23, 106:17-108:11.
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`• Mr. Lhymn knew a specific version of A3UM was used in Apple’s
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`grounds, but not which one. EX1115, 103:15-22, 120:16-19, 136:9-
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`147:2.
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`MemoryWeb thus utterly fails to meet its burden of showing Apple’s
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`A3UM-based grounds could have been reasonably raised by Unified in IPR2021-
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`01413. Estoppel cannot apply.
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`B. Apple is Not an RPI of Unified.3
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`The Federal Circuit has cautioned that “the heart of the [RPI] inquiry is
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`focused on whether a petition has been filed at a party’s behest,” not merely
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`whether the third party has a relationship with the petitioner and would receive a
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`direct benefit. Uniloc, 2017 LLC v. Facebook Inc., 989 F.3d 1018, 1027-29 (Fed.
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`Cir. 2021) (cleaned up). A “key consideration” in that analysis is “control”—
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`3 MemoryWeb relies on its assertion that Apple is an RPI of Unified, and
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`waives any argument based on privity. Mot., 9 n.2. Nevertheless, the evidence
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`demonstrating Apple is not an RPI also demonstrates it is not a privy of Unified.
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`whether the alleged real party in interest “exercises or could exercise control” over
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`an IPR petitioner. Id.
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`The Board articulated a variety of factors relevant to the RPI assessment in
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`RPX Corp. v, Applications In Internet Time LLC, IPR2015-01750, Paper 128, 10
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`(PTAB Oct. 2, 2020). The Board has also recognized it “must be cautious not to
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`‘overextend[]’ the reasoning set forth in AIT to any situation where ‘a party
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`benefits generally from the filing of the Petition and also has a relationship with
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`the Petitioner.’” Ventex Co., Ltd. v. Columbia Sportswear N. Am., Inc., IPR2017-
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`00651, Paper 148, 10 (PTAB Jan. 24, 2019) (precedential).
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`Numerous panels of the Board have examined Unified’s membership
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`agreements (including with Apple) under the AIT factors and have uniformly found
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`they do not establish a RPI relationship:
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`• Unified Pats., LLC v. Cellular Commc’ns Equip. LLC, IPR2018-
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`00091, Paper 33, 10 (PTAB May 22, 2019) (“CCE”), 10
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`(“acknowledg[ing] that five Board cases decided post-AIT cited by
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`Unified find Unified’s members are not RPIs under the broader AIT
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`rubric,” and, after considering the Apple-Unified membership
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`agreement, concluding “we do not find that [Apple] is an RPI”);
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`• Unified Pats., LLC v. Uniloc 2017 LLC, IPR2019-00453, Paper 38,
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`56-59 (PTAB July 22, 2020) (“[O]ther decisions by the Board… have
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`held that Unified is the sole RPI absent a showing of control or
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`involvement by the Unified member. Consequently, the evidence and
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`arguments advanced by Patent Owner do not lead us to determine that
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`Apple is an unnamed RPI to this proceeding.”);
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`• Apple Inc. v. Uniloc 2017 LLC, IPR2019-01667, Paper 49, 8-10
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`(PTAB Apr. 7, 2021) (denying motion to terminate on the basis that
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`Apple is an RPI of Unified “on the merits of the motion”);
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`• Unified Pats., LLC v. MemoryWeb, LLC, IPR2021-01413, Paper 62
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`(Mar. 22, 2023) at Table of Authorities, Nos. 14-39 (Unified
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`compiling 26 Board decisions finding Unified is sole RPI).
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`None of the facts relevant to the Board’s past determinations differ here,
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`which compels the same conclusion: Apple is not an RPI of Unified. A decision
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`to the contrary would not only lack substantial evidence but constitute “an
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`‘[u]nexplained inconsistency’ in agency policy” that is arbitrary and capricious.
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`Consol. Bearings Co. v. United States, 348 F.3d 997, 1007 (Fed. Cir. 2003);
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`Encino Motorcars, LLC v. Navarro, 579 U.S. 211, 222 (2016); Vicor Corp. v.
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`SynQor, Inc., 869 F.3d 1309, 1323 (Fed. Cir. 2017); Robert Bosch, LLC v. Iancu,
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`778 Fed. App’x 871, 874-75 (Fed. Cir. 2019); 5 U.S.C. §706(2)(A).
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`1.
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`Apple Has No Ability to Direct, Control, or Influence
`Unified’s Actions Regarding IPR Proceedings
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`“Without… evidence of control, in addition to no evidence of joint funding,
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`or even any evidence of substantial coordination between the parties as to their
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`respective decisions to bring these proceedings, a finding that [Apple] is an RPI of
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`or in privity with [Unified] here would be improper.” Uniloc 2017, 989 F.3d at
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`1029. But MemoryWeb simply ignores the “control” issue.
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`It is undisputed that Apple has no ability to direct or control Unified’s
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`activities with respect to the ’228 patent or any other issue and provided no
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`funding or direction specific to Unified’s ’228 IPR. EX2077, ¶24; EX2091, 146:8-
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`15, 156:12-19, 173:2-24; EX1118, ¶¶10, 14-17, 22-23.
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`In its vacated Unified RPI order,4 the Board portrayed
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` EX2080, 10,
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`24-26; EX2069, 2-3. But MemoryWeb made no attempt to defend (or even
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`The Director vacated the order in its entirety, in no way suggesting that its
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`4
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`holdings have even persuasive weight (or that RPI should be addressed) in these
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`proceedings. EX2038, 5. Apple discusses the vacated Order only because
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`MemoryWeb improperly relies on it. Mot., 3-5.
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`mention) the Board’s findings on this supposed
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` That is
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`because undisputed evidence shows this
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` four years before the ’228 patent issued.
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`EX1095, ¶4; EX2091, 140:13-143:13, 151:2-153:9; EX2077, 9 n.1; EX1118, ¶14.
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`Moreover, the language of the
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`. And when the
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`140:13-143:13, 144:9-147:15; EX2077, 9 n.1. These restrictions long pre-date
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`issuance of the ’228 patent and have never been weakened. EX2091, 157:5-158:7;
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`EX2069; EX1095; EX1098; EX1099; EX1100.
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`Another panel of the Board directly considered and rejected an argument
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`that the 2013 Apple-Unified membership agreement
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` rendered Apple an RPI of Unified in CCE. EX2077, 9 n.1.
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`There, the Board found there was “not sufficient evidence showing [Apple] is or
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`was controlling or had an opportunity to control this IPR.” CCE, 15. The Apple-
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`Unified Agreement also was considered in Uniloc 2017, with Uniloc arguing
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`Apple
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`. EX1117, 11. Apple “prevail[ed] on the merits” of
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`the motion to terminate. IPR2019-01667, Paper 49, 8 n.7.
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`There also is no evidence that Unified “crafted its
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`and its
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` with an eye to avoid naming members as RPIs.”
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`EX2080, 28. Concluding otherwise would ignore these
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` purpose:
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`namely, to ensure Unified can act independently in performing its deterrence
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`activities without external influence. EX2077, ¶¶10, 22.5 Nor are the
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`cosmetic. The evidence is undisputed that Apple has never sought, desired, or
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`been invited to provide input into Unified’s decision-making about starting or
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`conducting any specific patent challenge, including Unified’s ’228 IPR. EX1118,
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`¶¶15-23. Nor could it, given the
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`.
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`2.
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`No Substantive Communications Occurred Between Unified
`and Apple Regarding MemoryWeb or the ’228 Patent
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`Consistent
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` with Unified,
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`the evidence is undisputed that Apple had no discussions with Unified (or any
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`other form of input) regarding MemoryWeb or the ’228 patent before Unified filed
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`its IPR. EX1118, ¶¶22-23; EX2077, ¶¶16, 22; EX2068, 48:4-24, 136:16-137:10.
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`There is also no attorney-client or principal-agent relationship between Unified and
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`Apple. EX2077, ¶¶7, 23; EX1118, ¶13. Thus, as the Board has previously
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`recognized, Unified’s lack of substantive communications with its members
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`regarding challenged patents stands in stark contrast to AIT. See CCE, 17.
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`MemoryWeb points to two press releases received by Apple from Unified.
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`Mot., 24-25. But the evidence conclusively demonstrates these regularly issued
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`press releases and newsletters—including those mentioning the ’228 patent—were
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`mass emails Unified sent to hundreds or thousands of Unified members and non-
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`members, and contained only public information (e.g., the filing of the IPR and its
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`institution). EX2091, 163:14-19, 168:11-14, 169:14-21, 171:6-14; EX2077, ¶17.
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`Mr. Jakel also refuted MemoryWeb’s contention these public announcements were
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`sent only to Unified’s paying members. EX2091, 58:5-17, 61:5-62:21; EX2068,
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`55:6-56:5. These two mass emails are the only items the Board identified in its
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`vacated Unified RPI order as evidence of communications between Unified and
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`Apple. EX2080, 23.
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`With no evidence of relevant, substantive discussions regarding the ’228
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`patent, MemoryWeb resorts to misdirection.
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`First, MemoryWeb points (as did the Board in its vacated order, EX2080,
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`23-24) to a
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` (EX2083), an
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`entity that is not a party to this proceeding. Mot., 12-14, 17-18. That document is
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`irrelevant and highly misleading—EX2083
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`. Moreover, while
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`EX2068, 49:13-50:5; also EX2091, 95:25-96:25, 97:15-98:15, 173:25-174:4.
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`Consistent with that testimony,
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` of Apple confirmed that neither he nor
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`anyone else at Apple participated in a meeting
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`. EX1118, ¶24. Mr. Jakel also explained that the
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`. E.g., EX2091, 178:3-179:6;
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`EX2083, UNIFIED_000030.
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`Second, MemoryWeb cites a brief conversation where
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`, and the suggestion that it retroactively created an RPI relationship is
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`nonsensical.
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`The evidence also refutes MemoryWeb’s theory. It shows that
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`. EX2091, 75:5-
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`76:25, 81:6-82:4, 82:19-83:11, 84:4-8, 89:25-90:2, 174:21-175:15; EX1118, ¶¶25-
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`29. Critically, Apple and Unified did not discuss any other issues concerning the
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`’228 patent. Id. And this brief, non-substantive discussion was the only
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`conversation between Apple and Unified regarding any aspect of Unified’s IPR.
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`Id.
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`Finally, MemoryWeb attempts to use an apparent pause in Unified’s IPR
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`filings since the Board’s vacated RPI order to infer an RPI relationship between
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`Apple a
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