From: Kushan, Jeffrey P. <jkushan@sidley.com>
`Sent: Friday, May 12, 2023 12:48 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Jonathan.Strang@lw.com; monaldo@fr.com; renner@fr.com; Hayes, Jennifer <jenhayes@nixonpeabody.com>;
`ellyar@unifiedpatents.com; michelle@unifiedpatents.com; roshan@unifiedpatents.com; Lauren.Rosen@lw.com; 'Schwartz, Daniel'
`<djschwartz@nixonpeabody.com>; Werber, Matthew <mwerber@nixonpeabody.com>; Girgis, Diana
`<dgirgis@nixonpeabody.com>; in@fr.com; jonathan@unifiedpatents.com; Mahoney, Matthew <mmahoney@sidley.com>;
`steve.baughman@groombridgewu.com; Christopher, Angelo <achristopher@nixonpeabody.com>
`Subject: IPR2021-01413; IPR2022-00031; IPR2022-00222 -- Proposal on further proceedings
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on links, or opening
`attachments.
`
`Your Honors,
`
`Petitioner Apple Inc. requests a conference call to discuss the conduct of the proceedings in IPR2022-00031 in light of the Board’s
`order finding good cause to extend the deadline for providing the final written decision in this proceeding. Apple has consulted
`with counsel for MemoryWeb, Samsung and Unified Patents, and includes the positions of those parties on Apple’s proposals
`below. The parties are available for a call next week on Wednesday (5/17) between 3-5 eastern, Thursday (5/18) between 2 and 4
`pm eastern, and Friday (5/19) between 9:30 and 10:30 am.
`
`Sincerely,
`
`Jeff Kushan
`Counsel for Petitioner Apple Inc. (IPR2022-00031)
`
`>>>>>
`
`Apple Proposals and Position:
`
`Initially, paper 41 in IPR2022-00031 does not accurately represent Apple’s position. Apple’s position has been that MemoryWeb
`has waived its ability to raise an RPI issue in the -00031 proceeding, and that it would be improper for the Board to consider a new
`RPI issue (which would, inter alia, require related discovery) at this stage of the -00031 proceeding. Apple does, however, agree
`that good cause exists for extending the deadline to issue the final written decision in the -00031 proceeding.
`
`In view of the Board’s May 4, 2023 order and after further consideration, Apple submits there are only two appropriate options for
`proceeding in IPR2022-00031.
`
`Option A: The Board should issue an order in the -00031 proceeding requiring MemoryWeb to show good cause why, at this phase
`of the proceeding, MemoryWeb has not waived or forfeited its ability to present an argument based on its assertion that a real-
`party-in-interest relationship exists between Apple and Unified Patents. This briefing can be conducted pending disposition of the
`rehearing and Director review requests in IPR2021-01413. If the Board proceeds on this course, Apple proposes that MemoryWeb
`be given a 6,500 word brief to respond to the order, and that Apple be given a 6,500 word response to MemoryWeb’s brief.
`
`Option B: Pursuant to either the Board’s authority under, inter alia, 35 U.S.C. § 315(c) and (d), 35 U.S.C. § 316(a)(11) and 37 C.F.R.
`§ 42.122(a), or pursuant to the Director’s review authority, the Board should sua sponte join IPR2022-00031 and IPR2021-01413,
`
`

`

`provided the FWD and the RPI Order (Paper 56) in IPR2021-01413 are first vacated. To be clear, Apple submits that joinder would
`be appropriate only if the FWD and RPI Order in the -1413 proceeding (for which rehearing/review requests are pending) are
`vacated. Joining the proceedings would render it unnecessary for the Board to resolve any potential 35 U.S.C. § 315(e)(1) estoppel
`or RPI issue concerning Apple because one FWD would issue in a joined proceeding that addresses both proceedings, thereby
`rendering both issues moot.
`
`Apple also does not oppose Samsung’s alternative to Apple’s Option B, provided that the Board vacate the FWD and RPI orders in
`IPR2021-01413 and then simultaneously issue final written decisions in at least IPR2022-00031 (Apple v. MemoryWeb) and
`IPR2021-01413 (Unified v. MemoryWeb).
`
`Finally, Apple opposes Samsung’s Option C (below). Apple believes that Options A and B provide the most appropriate vehicles for
`addressing the issue raised by MemoryWeb’s original request, and avoids the Board having to resolve the disagreements among
`the parties about whether and how access to the confidential portions of the Unified record may be made accessible to entities
`that are not party to the Unified v. MemoryWeb proceeding.
`
`
`Unified Patents position:
`
`Unified does not have an alternative proposal, and takes no position regarding “Option A.”
`
`Unified does not oppose Apple’s originally proposed “Option B.” Unified, like Apple, considers joinder acceptable only if the FWD
`and the RPI Order Paper 56 are first vacated. Unified maintains that the RPI Order and the portion of the FWD discussing the RPI
`Order should be vacated for the reasons it explained in its requests for rehearing, POP Review (of the Order), and Director Review
`(of the FWD).
`
`As for Samsung’s alternative Option B, Unified agrees that the RPI Order and the portion of the FWD discussing the RPI Order
`should be vacated. Unified does not see any need for an extension even if its FWD is vacated for the same reasons the Board does
`not need to extend the time for a FWD when any other FWD is vacated on rehearing, POP Review, or Director Review. Unified
`otherwise agrees, however, that this option avoids complications associated with merging three proceedings with records that
`were fully developed independently.
`
`Unified opposes Samsung’s Option C for the reasons explained in the Joint Email to the Board (Ex. 3003 in Unified’s IPR2021-
`01413). In short, such an inspection is unprecedented and impermissible under the Trial Practice Guide and the Protective Order.
`Further, such an inspection is by definition, discovery—it is a document production. There is no mechanism in the Board’s rules for
`non-parties to take such discovery. Permitting such an inspection would threaten the fundamental safeguards inherent in the
`Board’s discovery rules.
`
`
`Samsung Position:
`
`As to Option A, Samsung endorses the procedure set forth in Apple’s proposal and submits that a similar briefing schedule on
`waiver should be entered in IPR2022–00222.
`
`As to Option B, Samsung agrees that the FWD and the RPI Order (Paper 56) in IPR2021-01413 should be vacated. However, as an
`alternative to joinder, Samsung would prefer for Unified’s IPR to be extended for good cause and placed on the same schedule as
`the recently extended Samsung and Apple IPRs. With that extension, the schedules of the three proceedings against MemoryWeb’s
`’228 Patent can be aligned and final written decisions can be entered concurrently in each of the three proceedings, thereby
`allowing all issues on the prior art and RPI to be resolved at the same time based on insights gained through discovery and briefing
`that accounts for Samsung/Apple evidence/positions, in contrast to the earlier decision rendered in -01413 that was devoid of the
`same. This approach is similar to proposed Option B, but through it, separate proceedings would be maintained to avoid
`complications related to merging three separate proceedings with separate records and separate petitions.
`
`Also, as an additional Option C, Samsung renews its previously communicated proposal that would allow Samsung and Apple to
`inspect the record in the -01413 proceeding prior to endorsing a proposal for additional procedures. As previously communicated,
`Samsung believes that “inspection” of the record of the Unified IPR proceeding is necessary to allow Samsung to offer fully
`informed thoughts on the extent (e.g., scope, timing, cadence) of process needed to ensure that Samsung is provided a full and fair
`opportunity to address implicated issues.
`
`
`
`

`

`MemoryWeb position:
`
`MemoryWeb asserts that this email submission is untimely and unnecessary, as the parties previously submitted their positions in
`the April 7, 2023, email requested by the Board. In that email, Apple and Samsung made similar requests to those made again
`here, including raising issues of waiver and vacatur. None of the Petitioners in these proceedings have provided any basis for this
`new submission (Apple’s purported basis is the recent finding of good cause existing to extend the FWD deadlines without
`explaining how that requires simply re-submitting previous positions set forth for the Board). With Apple and Samsung making the
`same requests again, MemoryWeb maintains its requests for authorization to file motions to terminate in the Apple and Samsung
`proceedings as indicated in the parties’ April 7 email.
`
`With respect to the Petitioners’ “Options” discussed above, MemoryWeb provides the following positions:
`
`Consistent with its positions set forth in the April 7, 2023, email, MemoryWeb opposes the waiver issues and vacatur issues and
`therefore opposes Option A, Option B, and Samsung’s Modified Option B.
`
`Option A: MemoryWeb has previously explained that Apple’s assertion of waiver lacks merit for various reasons, including but not
`limited to, the following: (i) waiver is only properly raised as a defense to a claim and, accordingly, to the extent Apple raises a
`waiver argument, it is only appropriate to do so in response to MemoryWeb’s motion to terminate; and (ii) Apple cites no authority
`for the proposition that waiver has occurred here especially in light Apple’s knowledge of the co-pending Unified Patents
`proceeding.
`
`Option B and Samsung’s Modified Option B: MemoryWeb similarly opposes Option B as at least untimely and procedurally
`unfounded (to the extent the Board grants certain briefing on these issues.
`
`Option C: As previously indicated to the Board, MemoryWeb does not oppose allowing Apple and Samsung to inspect the record in
`the Unified Patents proceeding prior to endorsing a proposal for additional proceedings.
`
`JEFFREY P. KUSHAN
`
`SIDLEY AUSTIN LLP
`+1 202 736 8914
`jkushan@sidley.com
`
`
`
`
`
`
`****************************************************************************************************
`This e-mail is sent by a law firm and may contain information that is privileged or confidential.
`If you are not the intended recipient, please delete the e-mail and any attachments and notify us
`immediately.
`
`****************************************************************************************************
`
`