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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`JOINT 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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`JOINT MOTION TO SEAL
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`IPR2022-00031
`Patent No. 10,621,228
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`Patent Owner MemoryWeb, LLC (“MemoryWeb”) and Petitioner Apple, Inc.
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`(“Apple”) submit this Motion to Seal (“Motion”) Patent Owner’s Demonstrative
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`Exhibit in support of its Motion to Terminate (“Patent Owner’s Demonstrative”)
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`(Exhibit 2125) and Petitioner’s Demonstrative Exhibit in support of its Motion to
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`Terminate
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`(“Petitioner’s Demonstrative”)
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`(Exhibit
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`1119)
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`(collectively,
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`“Demonstratives”). The parties jointly submit this Motion to safeguard Unified,
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`Apple, Samsung and MemoryWeb’s confidential information, pursuant to the
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`Protective Order.1 See Paper 52. The parties will provide redacted versions of the
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`Demonstratives once they have had the opportunity to consult with the relevant
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`parties to determine the extent of the redactions.
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`As discussed in greater detail below, the forthcoming redacted version of the
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`Demonstratives will rely on and discuss the confidential information disclosed in
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`exhibits previously filed under seal. See Paper 72; see also Paper 70.2
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`1 The relevant parties with respect to this Motion are Apple, Inc. (“Apple” or
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`“Petitioner”), Samsung Electronics Co., Ltd. (“Samsung”), and Unified Patents,
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`LLC (“Unified”).
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`2 The Board has yet to grant Patent Owner’s Motion to Seal portions of Patent
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`Owner’s Reply in support of its Motion to Terminate (“Reply”) and the exhibits cited
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`1
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`IPR2022-00031
`Patent No. 10,621,228
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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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`protective order as to the confidential information.”3 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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`therein, and the Motion to Seal portions of Petitioner’s Opposition to the Motion to
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`Terminate and certain of the exhibits thereto.
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`3 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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`2
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`IPR2022-00031
`Patent No. 10,621,228
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`First, the Demonstratives and the exhibits cited therein contain non-public,
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`highly confidential proprietary business information pertaining to Petitioner’s and
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`Samsung’s contractual relationship with Unified and confidential communications
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`between MemoryWeb and Unified. This information includes confidential
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`commercial information that Unified, Apple, Samsung and MemoryWeb have not
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`made, and do not intend to make, publicly available. The parties also understand that
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`this information was produced pursuant to the Protective Order. As discussed above,
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`a redacted version of the Demonstratives is forthcoming.
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`Second, public disclosure of this information would expose the relevant
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`parties’ confidential business activities. The Demonstratives and the exhibits cited
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`therein contain information that the relevant parties maintain as confidential. The
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`parties believe that the public will not be harmed by sealing the confidential business
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`information.
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`Third, the Demonstratives are directly relevant to whether Apple is a real party
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`in interest (“RPI”) to Unified’s IPR and will be used in support of the parties
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`arguments at the oral hearing. See Unified Patents, LLC v. MemoryWeb, LLC,
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`IPR2021-01413. The parties must rely on confidential information to present
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`arguments related to whether Apple 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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`3
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`IPR2022-00031
`Patent No. 10,621,228
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`Demonstratives (redactions forthcoming) should be sealed. The parties respectfully
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`request that the Board 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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`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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`The Demonstratives contains screenshots of exhibits and other information
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`that have been marked “Confidential” or “HIGHLY CONFIDENTIAL –
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`ATTORNEYS’ EYES ONLY” under the Protective Order in this case. As such, the
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`Demonstratives contains sensitive business information that was previously filed
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`under seal in this proceeding. The parties and the other relevant parties assert that
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`this sensitive business information has not been published or otherwise made
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`publicly available. The Demonstratives rely on and discusses the confidential
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`aspects of exhibits previously filed under seal. Redacted versions of the
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`Demonstratives are forthcoming.
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`The balance favors protecting the relevant parties’ confidential information.
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`The information in the Demonstratives is not related to patentability, the scope of
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`4
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`IPR2022-00031
`Patent No. 10,621,228
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`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 whether
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`Petitioner is an RPI to the Unified IPR. The information relates to business dealings
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`between Unified and its members, including Petitioner and Samsung. Unified has
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`represented this information is not known to the public. See e.g., Unified Patents,
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`IPR2021-01413, Paper 24 at 7. The information also relates to Unified’s confidential
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`dealings with MemoryWeb.
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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 the Demonstratives at the oral hearing
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`without the chance of incidental public exposure of confidential business
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`information. The public interest is well-served in keeping this information
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`confidential.
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`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 the
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`Demonstratives are forthcoming. The parties will submit a redacted versions after
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`the relevant parties have had the opportunity to review following submission of the
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`Motion. The redactions will be limited in nature and scope to the confidential
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`information.
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`5
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`IPR2022-00031
`Patent No. 10,621,228
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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 parties
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`hereby request a conference call with the Board to discuss any concerns prior to the
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`Board issuing a decision on the Motion.
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`V. CONCLUSION
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`For the foregoing reasons, the parties respectfully request that the Board seal
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`and protect the relevant parties’ confidential information in the unredacted versions
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`of the Demonstratives.
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`Respectfully submitted,
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`Dated: October 17, 2023
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`By:
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`6
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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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`/ Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
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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 Joint Motion to
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`Seal was served on October 17, 2023, upon the following parties via electronic
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`service:
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`Jeffrey P. Kushan
`Thomas A. Broughan, III
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`jkushan@sidley.com
`tbroughan@sidley.com
`SidleyAppleMemoryWebIPRs@sidley.com
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`J. Steven Baughman
`Groombridge, Wu, Baughman & Stone LLP
`801 17th Street, NW, Suite 1050
`Washington, DC 20006
`Steve.baughman@groombridgewu.com
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`Counsel for Petitioner, Apple Inc.
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`/s/ Jennifer Hayes
`By:
`Lead Counsel for Patent Owner
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`1
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