`571-272-7822
`
`
`Paper 38
` Date: June 15, 2023
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD.,
`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.
`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 the RPI and estoppel issues in this proceeding. See id. at 2–3.
`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
`Apple as an RPI (Paper 56 (confidential)) in that proceeding.
`On June 1, 2023, the Board issued an Order directing the parties to
`confer and submit a proposed joint briefing schedule and discovery plan to
`address the RPI, estoppel, and waiver issues. Paper 37. The parties
`
`
`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.
`
`2
`
`
`
`IPR2022-00222
`Patent 10,621,228 B2
`
`submitted their joint proposal to the Board by email on June 9, 2023.
`Ex. 3004.
`After considering the parties’ positions, the procedural history of this
`case, and the parties’ proposed briefing schedule (Ex. 3005, First Phase), it
`is
`
`ORDERED that by June 30, 2023, the parties shall each file their
`opening briefs addressing the topics set forth in Exhibit 3005 for Due Date
`1, not to exceed 7000 words; and
`FURTHER ORDERED that by July 14, 2023, the parties shall each
`file their response briefs addressing the topics set forth in Exhibit 3005 for
`Due Date 2, not to exceed 3500 words.
`
`
`3
`
`
`
`IPR2022-00222
`Patent 10,621,228 B2
`
`FOR PETITIONER:
`
`W. Karl Renner
`Jeremy J. Monaldo
`Hyun Jin In
`FISH & RICHARDSON P.C.
`Axf-ptab@fr.com
`jjim@fr.com
`in@fr.com
`
`FOR PATENT OWNER:
`
`Jennifer Hayes
`George Dandalides
`Mathew A. Werber
`NIXON PEABODY LLP
`jenhayes@nixonpeabody.com
`gdandalides@nixonpeabody.com
`mwerber@nixonpeabody.com
`
`
`
`
`
`
`4
`
`
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