Trials@uspto.gov
`571-272-7822
`
`
`Paper 37
` Entered: June 1, 2023
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`MEMORYWEB, LLC,
`Patent Owner.
`____________
`
`IPR2022-00222
`Patent 10,621,228 B2
`____________
`
`
`Before LYNNE H. BROWNE, NORMAN H. BEAMER, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`BROWNE, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`571-272-7822
`
`
`Paper 37
` Entered: June 1, 2023
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`MEMORYWEB, LLC,
`Patent Owner.
`____________
`
`IPR2022-00222
`Patent 10,621,228 B2
`____________
`
`
`Before LYNNE H. BROWNE, NORMAN H. BEAMER, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`BROWNE, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2022-00222
`Patent 10,621,228 B2
`
`Petitioner, Samsung Electronics Co., LTD. (“Samsung” or
`“Petitioner”), filed a Petition requesting inter partes review of claims 1–19
`of U.S. Patent No. 10,621,228 B2 (“the ’228 patent”). Paper 2. On June 13,
`2022, the Board instituted trial. Paper 12.
`In a related proceeding challenging claims 1–7 of the ’228 patent,
`Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413 (the “Unified
`proceeding”), the Board entered an Order (Paper 56 (confidential)) on March
`8, 2023, identifying Samsung as an unnamed Real Party in Interest (“RPI”),
`and on March 14, 2023, entered a Final Written Decision (Paper 58
`(confidential)) finding claims 1–7 unpatentable.
`On March 31, 2023, the Board held a conference call with counsel for
`the parties in this proceeding, as well as counsel for the parties in the Unified
`proceeding and counsel for the parties in Apple Inc. v. MemoryWeb, LLC,
`IPR2022-00031 (the “Apple proceeding”). Ex. 3002. On April 7, 2023,
`pursuant to the Board’s request, counsel for the parties provided their
`respective positions on how to move forward in these proceedings. Ex.
`3001. On May 12, 2023, counsel provided the Board with additional
`information on their respective positions. Ex. 1003.
`Patent Owner, MemoryWeb, LLC (“MemoryWeb” or “Patent
`Owner”) seeks leave to file a motion to terminate this proceeding in view of
`the Board’s Final Written Decision in the Unified proceeding. Ex. 3001, 1.
`Samsung opposes Patent Owner’s request, and asserts that MemoryWeb has
`waived its right to raise the RPI issue in this proceeding. Id. at 2–3.
`Samsung believes it would be appropriate to permit its outside counsel to
`inspect the record in the Unified proceeding that bears on the RPI issue, but
`opposes additional discovery in this proceeding on that issue. Id.
`
`2
`
`
`
`IPR2022-00222
`Patent 10,621,228 B2
`
`MemoryWeb asserts that to the extent Samsung wishes to argue waiver, that
`Samsung do so in its opposition to MemoryWeb’s requested motion to
`terminate. Id. at 1.
`On May 4, 2023, in accordance with 37 C.F.R. § 42.100(c), the Chief
`Administrative Patent Judge determined that good cause exists to extend the
`one-year period for issuing a Final Written Decision in this proceeding in
`light of the Board’s Final Written Decision in the Unified proceeding. Paper
`35. On May 18, 2023, we issued an Order extending the one-year pendency
`of this proceeding for up to six months. Paper 36.
`On May 22, 2023, the Director issued a public version1 of a Decision
`Granting Director Review (Paper 76, “Director’s Decision”) in the Unified
`proceeding, vacating-in-part the Final Written Decision (Section I.B) (Paper
`58 (confidential) and Paper 67 (public)) and the Board’s Order identifying
`Samsung as an RPI (Paper 56 (confidential)) in that proceeding. The
`Director’s Decision states that “[t]he Board can and should make a
`determination of the real parties in interest or privity in any proceeding in
`which that determination may impact the underlying proceeding, for
`example, but not limited to, a time bar under 35 U.S.C. § 315(b) or an
`estoppel under 35 U.S.C. § 315(e) that might apply.” Paper 76, 5.
`After considering the parties’ positions and the procedural history of
`this case and the related proceedings, the parties are directed to prepare and
`submit for consideration a detailed discovery plan and briefing schedule
`
`
`1 On May 16, 2023, a confidential version of the Director’s Decision
`Granting Director Review (Paper 74) was issued, but made available only to
`the parties and the Board.
`
`3
`
`
`
`IPR2022-00222
`Patent 10,621,228 B2
`
`designed to address the RPI, estoppel, and waiver issues. The discovery
`plan and briefing schedule should be designed to address the following
`issues: 1) whether Samsung should have been named as an RPI in the
`Unified proceeding; 2) whether Samsung is estopped from maintaining this
`proceeding, or a portion of this proceeding, pursuant to 35 U.S.C.
`§ 315(e)(1); and 3) whether MemoryWeb has waived any right to assert
`estoppel under 35 U.S.C. § 315(e)(1) in this proceeding. In preparing the
`discovery plan and briefing schedule, the parties should consider the burdens
`of proof for the RPI, estoppel, and waiver issues to the extent they are
`addressed in Ironburg Inventions Ltd. v. Valve Corp.. No. 21-2296 (Fed. Cir.
`Apr. 3, 2023) and Applications in Internet Time, LLC v. RPX Corp., 897
`F.3d 1336 (Fed. Cir. 2018).
`Accordingly, it is
`ORDERED that the parties shall confer and develop a proposed joint
`discovery plan and briefing schedule in accordance with this Order; and
`FURTHER ORDERED that the parties shall report back to the Board
`via e-mail no later than June 7, 2023, providing the proposed joint discovery
`plan and briefing schedule, indicating any items on which the parties
`disagree.
`
`
`4
`
`
`
`IPR2022-00222
`Patent 10,621,228 B2
`
`FOR PETITIONER:
`
`Walter Renner
`Axf-ptab@fr.com
`
`Jeremy Monaldo
`jjm@fr.com
`
`Hyun Jin In
`in@fr.com
`
`
`FOR PATENT OWNER:
`
`Jennifer Hayes
`jenhayes@nixonpeabody.com
`
`George Dandalides
`gdandalides@nixonpeabody.com
`
`
`
`
`
`
`
`
`5
`
`
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