`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
`
`APPLE, INC.
`Petitioner
`
`
`v.
`
`MEMORYWEB, LLC
`Patent Owner
`
`Patent No. 10,621,228
`
`
`Inter Partes Review No. IPR2022-00031
`
`
`JOINT MOTION TO EXPUNGE
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`4880-0615-3111.5
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`IPR2022-00222
`Patent No. 10,621,228
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`I.
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`INTRODUCTION
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`
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`Joint Motion to Expunge
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`Pursuant
`
`to 37 C.F.R. § 42.56, Patent Owner MemoryWeb, LLC
`
`(“MemoryWeb”) and Petitioner Apple, Inc. (“Apple”) (collectively, the “Parties”)
`
`jointly file this Motion to Expunge (“Motion”) certain confidential information in
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`the record of this proceeding.
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`This Motion is timely filed on December 27, 2023, within 45 days of the Final
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`Written Decision (Paper 85) which issued on November 17, 2023. See Patent Trial
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`Appeal Board Consolidated Trial Practice Guide November 2019 (“CTPG”) at 21-
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`22.
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`However, the Parties respectfully request that the Board defer ruling on this
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`Motion and preserve the record in its entirety, maintaining all confidential
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`documents filed in this proceeding under seal, until resolution of any rehearing
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`request or appeal in this proceeding and any rehearing requests or appeals in related
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`proceedings initiated by Unified Patents, LLC (“Unified”) (IPR2021-01413) and
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`Samsung Electronics Co., Ltd. (“Samsung”) (IPR2022-00222) (collectively, the
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`“Related Proceedings”), or alternatively, until the period for filing a notice of appeal
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`expires in this proceeding or in the Related Proceedings. In other words, the
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`confidential record should be preserved pending resolution of any rehearing requests
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`and appeals for not only the present proceeding, but also the Related Proceedings.
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`4880-0615-3111.5
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`1
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`IPR2022-00222
`Patent No. 10,621,228
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`II. DOCUMENTS AT ISSUE
`The Parties respectfully submit that the following confidential documents be
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`Joint Motion to Expunge
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`
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`expunged from the record as they contain Patent Owner’s, Petitioner’s, Samsung’s
`
`and Unified’s confidential business information (collectively, the “Confidential
`
`Documents”):
`
` Paper 57 (Patent Owner’s Motion to Terminate) (confidential version)
`
` Paper 64 (Petitioner’s Opposition to Motion to Terminate) (confidential
`
`version)
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` Paper 71 (Patent Owner’s Reply in Support of Patent Owner’s Motion to
`
`Terminate) (confidential version)
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` Paper 78 (Patent Owner’s Confidential Updated Exhibit List) (confidential
`
`version)
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` Paper 80 (Final Written Decision) (confidential version)
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` Paper 82 (Patent Owner’s Updated Exhibit List) (confidential version)
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` Exhibit 1095
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` Exhibit 1096
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` Exhibit 1097
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` Exhibit 1098
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` Exhibit 1099
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`4880-0615-3111.5
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`2
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`Joint Motion to Expunge
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`IPR2022-00222
`Patent No. 10,621,228
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` Exhibit 1100
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` Exhibit 1117
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` Exhibit 1118
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` Exhibit 1119 (confidential version)
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` Exhibit 2068 (confidential version)
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` Exhibit 2069
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` Exhibit 2070
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` Exhibit 2071
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` Exhibit 2072
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` Exhibit 2073
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` Exhibit 2074
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` Exhibit 2075
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` Exhibit 2077 (confidential version)
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` Exhibit 2078
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` Exhibit 2079
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` Exhibit 2080 (confidential version)
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` Exhibit 2081
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` Exhibit 2083
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` Exhibit 2084
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`4880-0615-3111.5
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`3
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`Joint Motion to Expunge
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`IPR2022-00222
`Patent No. 10,621,228
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` Exhibit 2085
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` Exhibit 2086
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` Exhibit 2088
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` Exhibit 2089
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` Exhibit 2090
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` Exhibit 2091 (confidential version)
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` Exhibit 2096 (confidential version)
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` Exhibit 2114
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` Exhibit 2115
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` Exhibit 2116
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` Exhibit 2117
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` Exhibit 2125 (confidential version)
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`For the reasons set forth below, the Parties request that the Confidential
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`Documents be expunged.
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`III. LEGAL STANDARDS
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`37 C.F.R. § 42.56 provides that “[a]fter denial of a petition to institute a trial
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`or after final judgment in a trial, a party may file a motion to expunge confidential
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`information in the record.” Similarly, the CTPG states that “[t]here is an expectation
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`that information will be made public where the existence of the information is
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`4880-0615-3111.5
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`IPR2022-00222
`Patent No. 10,621,228
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`referred to in a decision to grant or deny a request to institute a review or is identified
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`Joint Motion to Expunge
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`
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`in a final written decision following a trial. A party seeking to maintain the
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`confidentiality of information, however, may file a motion to expunge the
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`information from the record prior to the information becoming public.” CTPG at 22.
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`A party seeking expungement from the record must show good cause by
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`demonstrating “that any information sought to be expunged constitutes confidential
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`information, and that [the party’s] interest in expunging it outweighs the public’s
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`interest in maintaining a complete and understandable history of this inter partes
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`review.” Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., IPR2013-00453,
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`Paper 97 at 2 (PTAB Apr. 15, 2015).
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`IV. REASONS FOR RELIEF REQUESTED
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`A.
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`Procedural Background
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`All the Confidential Documents in this matter disclose confidential
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`information relating to the real parties in interest (“RPI”) issue raised by Patent
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`Owner. Where possible, redacted versions of these documents are or will be
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`available to the public, and information regarding the contents of the information is
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`in the record, as detailed in the following table:
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`Confidential Version Redacted Version Information Regarding Redacted
`Content
`(Patent Owner’s
`Paper
`58
`Unopposed Motion to Seal); Paper
`72 (Order Granting Patent Owner’s
`
`Paper 57 (Patent
`Owner’s Motion to
`Terminate)
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`Exhibit 2126
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`4880-0615-3111.5
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`5
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`IPR2022-00222
`Patent No. 10,621,228
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`Paper 64 (Petitioner’s
`Opposition to Patent
`Owner’s Motion to
`Terminate)
`Paper 71 (Patent
`Owner’s Reply in
`Support of Patent
`Owner’s Motion to
`Terminate)
`Paper 78 (Patent
`Owner’s Confidential
`Updated Exhibit List)
`
`Paper 68
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`Exhibit 2127
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`Paper 79
`
`Paper 80 (Final
`Written Decision)
`Paper 82
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`Paper 85
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`Paper 83
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`Exhibit 1095
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`Exhibit 1096
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`Exhibit 1097
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`Exhibit 1098
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`Exhibit 1099
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`4880-0615-3111.5
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`
`No redacted
`version available.
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`No redacted
`version available.
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`No redacted
`version available.
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`No redacted
`version available.
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`No redacted
`version available.
`
`6
`
`
`
`Joint Motion to Expunge
`
`Motion to Seal)
`Paper 65 (Petitioner’s Unopposed
`Motion to Seal); Paper 73 (Order
`Granting Petitioner’s Motion
`to
`Seal)
`(Patent Owner’s
`56
`Paper
`Unopposed Motion to Seal)
`
`(Patent Owner’s
`77
`Paper
`Unopposed Motion to Seal); Paper
`84 (Order Granting Patent Owner’s
`Motion to Seal)
`N/A
`
`(Patent Owner’s
`81
`Paper
`Unopposed Motion to Seal); Paper
`84 (Order Granting Patent Owner’s
`Motion to Seal)
`Paper 65 (Petitioner’s Unopposed
`Motion to Seal); Paper 73 (Order
`Granting Petitioner’s Motion
`to
`Seal)
`Paper 65 (Petitioner’s Unopposed
`Motion to Seal); Paper 73 (Order
`Granting Petitioner’s Motion
`to
`Seal)
`Paper 65 (Petitioner’s Unopposed
`Motion to Seal); Paper 73 (Order
`Granting Petitioner’s Motion
`to
`Seal)
`Paper 65 (Petitioner’s Unopposed
`Motion to Seal); Paper 73 (Order
`Granting Petitioner’s Motion
`to
`Seal)
`Paper 65 (Petitioner’s Unopposed
`Motion to Seal); Paper 73 (Order
`Granting Petitioner’s Motion
`to
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`IPR2022-00222
`Patent No. 10,621,228
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`Exhibit 1100
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`Exhibit 1117
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`Exhibit 1118
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`No redacted
`version available.
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`No redacted
`version available.
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`No redacted
`version available.
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`Exhibit 1119
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`Exhibit 1119
`(redacted version)
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`Exhibit 2068
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`Exhibit 2055
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`Exhibit 2069
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`Exhibit 2070
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`Exhibit 2071
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`Exhibit 2072
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`Exhibit 2073
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`4880-0615-3111.5
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`No redacted
`version available.
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`No redacted
`version available.
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`No redacted
`version available.
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`No redacted
`version available.
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`No redacted
`version available.
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`7
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`
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`Joint Motion to Expunge
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`Seal)
`Paper 65 (Petitioner’s Unopposed
`Motion to Seal); Paper 73 (Order
`Granting Petitioner’s Motion
`to
`Seal)
`Paper 65 (Petitioner’s Unopposed
`Motion to Seal); Paper 73 (Order
`Granting Petitioner’s Motion
`to
`Seal)
`Paper 65 (Petitioner’s Unopposed
`Motion to Seal); Paper 73 (Order
`Granting Petitioner’s Motion
`to
`Seal)
`Paper 74 (Joint Motion to Seal);
`Paper 80 (Final Written Decision
`granting Joint Motion to Seal).
`Paper
`58
`(Patent Owner’s
`Unopposed Motion to Seal); Paper
`72 (Order Granting Patent Owner’s
`Motion to Seal)
`Paper
`58
`(Patent Owner’s
`Unopposed Motion to Seal); Paper
`72 (Order Granting Patent Owner’s
`Motion to Seal)
`Paper
`58
`(Patent Owner’s
`Unopposed Motion to Seal); Paper
`72 (Order Granting Patent Owner’s
`Motion to Seal)
`Paper
`58
`(Patent Owner’s
`Unopposed Motion to Seal); Paper
`72 (Order Granting Patent Owner’s
`Motion to Seal)
`Paper
`58
`(Patent Owner’s
`Unopposed Motion to Seal); Paper
`72 (Order Granting Patent Owner’s
`Motion to Seal)
`Paper
`58
`(Patent Owner’s
`Unopposed Motion to Seal); Paper
`72 (Order Granting Patent Owner’s
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`IPR2022-00222
`Patent No. 10,621,228
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`Exhibit 2074
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`Exhibit 2075
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`No redacted
`version available.
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`No redacted
`version available.
`
`Exhibit 2077
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`Exhibit 2051
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`Exhibit 2078
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`Exhibit 2079
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`No redacted
`version available.
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`No redacted
`version available.
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`Exhibit 2080
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`Exhibit 2092
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`Exhibit 2081
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`No redacted
`version available.
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`Exhibit 2083
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`Exhibit 2084
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`Exhibit 2085
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`4880-0615-3111.5
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`No redacted
`version available
`
`No redacted
`version available.
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`No redacted
`version available.
`8
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`
`
`Joint Motion to Expunge
`
`Motion to Seal)
`Paper
`58
`(Patent Owner’s
`Unopposed Motion to Seal); Paper
`72 (Order Granting Patent Owner’s
`Motion to Seal)
`Paper
`58
`(Patent Owner’s
`Unopposed Motion to Seal); Paper
`72 (Order Granting Patent Owner’s
`Motion to Seal)
`Paper
`58
`(Patent Owner’s
`Unopposed Motion to Seal); Paper
`72 (Order Granting Patent Owner’s
`Motion to Seal)
`Paper
`58
`(Patent Owner’s
`Unopposed Motion to Seal); Paper
`72 (Order Granting Patent Owner’s
`Motion to Seal)
`Paper
`58
`(Patent Owner’s
`Unopposed Motion to Seal); Paper
`72 (Order Granting Patent Owner’s
`Motion to Seal)
`Paper
`58
`(Patent Owner’s
`Unopposed Motion to Seal); Paper
`72 (Order Granting Patent Owner’s
`Motion to Seal)
`Paper
`58
`(Patent Owner’s
`Unopposed Motion to Seal); Paper
`72 (Order Granting Patent Owner’s
`Motion to Seal)
`Paper
`58
`(Patent Owner’s
`Unopposed Motion to Seal); Paper
`72 (Order Granting Patent Owner’s
`Motion to Seal)
`Paper
`58
`(Patent Owner’s
`Unopposed Motion to Seal); Paper
`72 (Order Granting Patent Owner’s
`Motion to Seal)
`Paper
`58
`(Patent Owner’s
`Unopposed Motion to Seal); Paper
`
`
`
`
`
`Joint Motion to Expunge
`
`72 (Order Granting Patent Owner’s
`Motion to Seal)
`Paper
`58
`(Patent Owner’s
`Unopposed Motion to Seal); Paper
`72 (Order Granting Patent Owner’s
`Motion to Seal)
`Paper
`58
`(Patent Owner’s
`Unopposed Motion to Seal); Paper
`72 (Order Granting Patent Owner’s
`Motion to Seal)
`Paper
`58
`(Patent Owner’s
`Unopposed Motion to Seal); Paper
`72 (Order Granting Patent Owner’s
`Motion to Seal)
`Paper
`58
`(Patent Owner’s
`Unopposed Motion to Seal); Paper
`72 (Order Granting Patent Owner’s
`Motion to Seal)
`Paper
`58
`(Patent Owner’s
`Unopposed Motion to Seal); Paper
`72 (Order Granting Patent Owner’s
`Motion to Seal)
`Paper
`58
`(Patent Owner’s
`Unopposed Motion to Seal); Paper
`72 (Order Granting Patent Owner’s
`Motion to Seal)
`Paper
`70
`(Patent Owner’s
`Unopposed Motion to Seal)
`Paper
`70
`(Patent Owner’s
`Unopposed Motion to Seal)
`Paper
`70
`(Patent Owner’s
`Unopposed Motion to Seal)
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`IPR2022-00222
`Patent No. 10,621,228
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`Exhibit 2086
`
`Exhibit 2088
`
`Exhibit 2089
`
`Exhibit 2090
`
`Exhibit 2091
`
`No redacted
`version available.
`
`No redacted
`version available.
`
`No redacted
`version available.
`
`No redacted
`version available.
`
`A redacted version
`is being submitted
`with this motion.
`
`Exhibit 2096
`
`Exhibit 2097
`
`Exhibit 2114
`
`Exhibit 2115
`
`Exhibit 2116
`
`No redacted
`version available.
`No redacted
`version available.
`No redacted
`version available.
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`4880-0615-3111.5
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`IPR2022-00222
`Patent No. 10,621,228
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`Exhibit 2117 1
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`Exhibit 2125
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`
`
`Joint Motion to Expunge
`
`No redacted
`version available.
`Exhibit 2128
`
`(Patent Owner’s
`70
`Paper
`Unopposed Motion to Seal)
`Paper 74 (Joint Motion to Seal);
`Paper 80 (Final Written Decision
`granting Joint Motion to Seal).
`
`
`
`
`
`Patent Owner and Petitioner filed unopposed or joint Motions to Seal
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`regarding the above referenced Confidential Documents. See Paper 58; Paper 65;
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`Paper 70; Paper 74; Paper 77; Paper 81. The Board has granted each Motion to Seal
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`except the Motion filed as Paper 70 (regarding Patent Owner’s Reply in Support of
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`its Motion to Terminate (Paper 71) and Exhibits 2114–2117 filed October 10, 2023),
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`which the Board has not yet ruled on. See Paper 72; Paper 73; Paper 80; Paper 84.
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`B. Good Cause Exists for Expunging the Confidential Documents
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`As detailed in the Parties’ Motions to Seal (Papers 58, 65, 70, 74, 77, 81), the
`
`identified documents contain Patent Owner’s, Petitioner’s, Samsung’s and Unified’s
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`highly confidential business information related to the RPI issues raised by Patent
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`Owner in this proceeding. The identified documents also relate to Unified’s
`
`confidential dealings with MemoryWeb. Patent Owner, Petitioner, Samsung, and
`
`
`1 Given the Board’s disposition of the motion to terminate, Petitioner contends that
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`Exhibit 2117 does not contain any non-confidential information that is relevant to
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`these proceedings, and therefore a redacted version of the transcript is unnecessary.
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`4880-0615-3111.5
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`10
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`IPR2022-00222
`Patent No. 10,621,228
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`Unified guard their information in order to protect their respective businesses.
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`Joint Motion to Expunge
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`
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`The Parties understand that the information sought to be expunged is truly
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`confidential, as the information includes confidential and sensitive business
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`information derived from the confidential exhibits and relating, for example, to
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`information about Unified’s members and information regarding Unified’s business
`
`operations, which the Parties understand that Unified maintains as confidential. As
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`a further example, the Parties understand that the information sought to be expunged
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`also includes information about Petitioner’s confidential and internal business and
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`legal strategies with respect to intellectual property, which are generally not shared
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`publicly or with third parties.
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`Moreover, the Parties understand that Unified, and possibly its members (e.g.,
`
`Petitioner) would suffer several concrete harms from the public disclosure of the
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`Confidential Documents. See Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-
`
`01413, Paper 73 at 9 (PTAB Apr. 28, 2023). Because the confidential information
`
`details Unified’s proprietary and closely guarded business model and methods and
`
`the specific dealings with Unified’s members (e.g., Petitioner), public access to this
`
`information could give Unified’s competitors and would-be rivals unfair competitive
`
`advantages, including a roadmap of how to replicate Unified’s business model. Id.
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`Public disclosure of this information could also undermine Unified’s business and
`
`competitiveness in the market and may expose Unified’s members (e.g., Petitioner)
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`IPR2022-00222
`Patent No. 10,621,228
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`and their confidential information to potential harms and jeopardize contractual and
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`Joint Motion to Expunge
`
`
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`confidential agreements between Unified and its members. Id. at 9-10.
`
`The Confidential Documents do not relate to the merits of the case, but instead
`
`only involve the RPI issue. The Board’s Final Written Decision (Paper 85) resolved
`
`the RPI issue on the basis of waiver and/or forfeiture, and the Board’s decision did
`
`not rely upon or refer to any of the confidential information that had been disclosed
`
`with respect to the RPI issue. For this reason, the public interest in having access to
`
`the details of Unified’s and Petitioner’s confidential business dealings is minimal,
`
`while the public interest is well-served in keeping such business information readily
`
`available and exchangeable between parties based on voluntary discovery without
`
`the fear of incidental public exposure of confidential business information.
`
`Moreover, given the information that is publicly available in the record
`
`regarding the contents of the Confidential Documents, as well as the Board’s Final
`
`Written Decision resolving the RPI issue on the grounds of waiver/forfeiture without
`
`reliance on the Confidential Documents, the record provides a “complete and
`
`understandable file history for public notices purposes” and the Confidential
`
`Documents were not material to the Board’s patentability determination, so there is
`
`no public interest in now making the Confidential Documents publicly available.
`
`CTPG at 21-22; see also MPEP § 724.05. Accordingly, good cause exists for
`
`protecting Patent Owner’s, Petitioner’s, and Unified’s confidential information by
`12
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`4880-0615-3111.5
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`IPR2022-00222
`Patent No. 10,621,228
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`expunging the Confidential Documents.
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`
`
`V. CONCLUSION
`
`Joint Motion to Expunge
`
`Because the Confidential Documents contain Patent Owner’s, Petitioner’s,
`
`Samsung’s and Unified’s highly confidential business information, redacted
`
`versions of some of the Confidential Documents are available to the public, and the
`
`Confidential Documents are not relevant to the merits of the case, the Parties
`
`respectfully request that the Board expunge Papers 57, 64, 71, 78, 80, and 82 and
`
`Exhibits 1095, 1096, 1097, 1098, 1099, 1100, 1117, 1118, 1119, 2068, 2069, 2070,
`
`2071, 2072, 2073, 2074, 2075, 2077, 2078, 2079, 2080, 2081, 2083, 2084, 2085,
`
`2086, 2088, 2089, 2090, 2091, 2096, 2114, 2115, 2116, 2117, and 2125 from the
`
`record pursuant to 37 C.F.R. § 42.56. Should the Board not be inclined to grant the
`
`present Motion, the Parties hereby respectfully request a conference call with the
`
`Board to discuss any concerns prior to the Board issuing a decision on the Motion.
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`
`
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`4880-0615-3111.5
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`13
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`IPR2022-00222
`Patent No. 10,621,228
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`
`Respectfully submitted,
`
`
`
`Joint Motion to Expunge
`
`Dated: December 29, 2023
`
`
`
`
`
`
`
`
`
`
`By: /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
`
`Attorney for Patent Owner
`
`By: /Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
` Tel. 202-7368914
`
`Attorney for Petitioner
`
`
`
`
`4880-0615-3111.5
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`14
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`IPR2022-00222
`Patent No. 10,621,228
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`
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`
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`Joint Motion to Expunge
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Joint Motion to
`
`Expunge was served on December 29, 2023, upon the following parties via
`
`electronic service:
`
`jkushan@sidley.com
`
`tbroughan@sidley.com
`
`SidleyAppleMemoryWebIPRs@sidley.com
`
`Steve.baughman@groombridgewu.com
`
`
`
`Counsel for Petitioner, Apple, Inc.
`
`
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`
`
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`
`
`
`
`
`
`
`
`
`
`/s/ Jennifer Hayes
`By:
`Lead Counsel for Patent Owner
`
`
`
`
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`4880-0615-3111.5
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`
`1
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`