Christopher, Angelo
`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Jennifer,
`
`Jeremy Monaldo <Monaldo@fr.com>
`Wednesday, March 15, 2023 11:08 AM
`Hayes, Jennifer; Hyun Jin In
`Werber, Matthew; Schwartz, Daniel; Christopher, Angelo; Christopher O. Green; Karl
`Renner
`RE: IPR 2022-00222
`
`Samsung opposes a motion for a stay or termination of the proceeding. If the Board desires to speak with the parties
`today, we are available between 2-4 PM ET.
`
`Best,
`Jeremy
`
`Jeremy Monaldo :: Principal :: Fish & Richardson P.C.
`+1 (202) 626-7717 direct :: Monaldo@fr.com
`fr.com :: Bio :: LinkedIn :: Twitter
`
`From: Hayes, Jennifer <jenhayes@nixonpeabody.com>
`Sent: Wednesday, March 15, 2023 10:35 AM
`To: Jeremy Monaldo <Monaldo@fr.com>; Hyun Jin In <in@fr.com>
`Cc: Werber, Matthew <mwerber@nixonpeabody.com>; Schwartz, Daniel <djschwartz@nixonpeabody.com>;
`Christopher, Angelo <achristopher@nixonpeabody.com>; Christopher O. Green <cgreen@fr.com>; Karl Renner
`<renner@fr.com>
`Subject: RE: IPR 2022-00222
`
`Jeremy,
`
`Unfortunately, Unified has refused to allow us to provide either the Final Written Decision or the Real Party in Interest
`Order to you – any confidential information in those decisions is Unified’s confidential information. Unified has also at
`least for the time being refused to provide redacted versions of either decision.
`
`The authority for Patent Owner’s motion to terminate is found in 35 U.S.C. § 315(e)(1), as stated in our email below. As
`an RPI to the Unified IPR, Samsung is estopped from “maintain[ing] a proceeding before the Office with respect to that
`claim on any ground that the petitioner raised or reasonably could have raised during” the Unified IPR. 35 U.S.C. §
`315(e)(1); see also Kofax, Inc. v. Uniloc USA, Inc., IPR2015-01207, Paper 22 (PTAB Jun. 2, 2016).
`
`As to staying the proceeding pending resolution of the estoppel issue, the Board has previously “held in abeyance all
`remaining deadlines, including the requested oral argument, pending the determination of whether [the] proceeding
`should be terminated is consideration of estoppel under in 35 U.S.C. § 315(e)(1)” pursuant to 35 U.S.C. § 316(b) and 37
`C.F.R. § 42.72. Apple, Inc. v. Papst Licensing GmbH and Co., KG, IPR2016-01860, Paper 28 at 2-3 (Jan. 10, 2018). As we
`previously explained, good cause exists for a similar stay in this case to allow the Board to determine whether Samsung
`
`1
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`

`

`is estopped from presenting oral argument on claims 1-7 (which it is) before the oral argument. We also think the stay is
`appropriate given Unified’s refusal to share either decision in view of tomorrow’s hearing.
`
`As to claims 8-19, the Board has discretion to terminate IPRs pursuant to at least 35 U.S.C. § 315(d), 37 CFR § 42.72, and
`37 CFR § 42.5. In declining to exercise its discretion not to institute under 35 U.S.C. § 314, the Board found that Samsung
`“is not related to Unified Patents.” Paper 12 at 11. The Board has now determined that Samsung was an RPI to the
`Unified IPR. Unified’s failure to properly identify Samsung as an RPI at the outset affected the Board’s decision to
`institute this third IPR against the ‘228 patent.
`
`Patent Owner reserves the right identify additional authority in support of its stay request and the motion to terminate.
`
`Please let us know Samsung’s position and your availability for a call with the Board today about the stay.
`
`Jennifer
`
`From: Jeremy Monaldo <Monaldo@fr.com>
`Sent: Tuesday, March 14, 2023 7:17 PM
`To: Hayes, Jennifer <jenhayes@nixonpeabody.com>; Hyun Jin In <in@fr.com>
`Cc: Werber, Matthew <mwerber@nixonpeabody.com>; Schwartz, Daniel <djschwartz@nixonpeabody.com>;
`Christopher, Angelo <achristopher@nixonpeabody.com>; Christopher O. Green <cgreen@fr.com>; Karl Renner
`<renner@fr.com>
`Subject: RE: IPR 2022-00222
`
`[EXTERNAL E-MAIL]
`Be Aware of Links and Attachments
`
`Jennifer,
`
`We have not seen the final written decision and it is presently filed as Parties and Board only. Is it possible to send us a
`version that redacts any confidential information? We’d like to consider the Board’s decision on the prior art and its
`implications on the Thursday hearing.
`
`Can you also let us know your basis for suggesting that Samsung’s IPR should be stayed and terminated as a
`consequence of a final written decision finding claims 1-7 of the 228 patent unpatentable? Do you have authority to
`support a finding of estoppel under these circumstances?
`
`Further, no evidence has been submitted in this proceeding to support a finding of estoppel. Although Samsung does
`not believe estoppel should apply to any claim in this proceeding, it seems clear that estoppel should not apply any of
`the claims that were not challenged in the Unified IPR. Do you have any basis to suggest estoppel should apply to claims
`that were not challenged in the Unified IPR?
`
`Best,
`Jeremy
`
`Jeremy Monaldo :: Principal :: Fish & Richardson P.C.
`+1 (202) 626-7717 direct :: Monaldo@fr.com
`fr.com :: Bio :: LinkedIn :: Twitter
`
`2
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`

`From: Hayes, Jennifer <jenhayes@nixonpeabody.com>
`Sent: Tuesday, March 14, 2023 9:03 PM
`To: Jeremy Monaldo <Monaldo@fr.com>; Hyun Jin In <in@fr.com>
`Cc: Werber, Matthew <mwerber@nixonpeabody.com>; Schwartz, Daniel <djschwartz@nixonpeabody.com>;
`Christopher, Angelo <achristopher@nixonpeabody.com>; Christopher O. Green <cgreen@fr.com>
`Subject: RE: IPR 2022-00222
`
`[This email originated outside of F&R.]
`
`Counsel,
`
`As a follow up to yesterday’s email, the Board issued its final written decision today in which it found that claims 1-7 of
`the ‘228 patent unpatentable. In view of this decision, we would like to schedule a call with the Board tomorrow. Can
`you please let us know your position on the stay and motion to terminate as well as your availability for a call with the
`Board tomorrow.
`
`Thanks.
`
`Jennifer
`
`From: Hayes, Jennifer
`Sent: Monday, March 13, 2023 4:45 PM
`To: Jeremy Monaldo <Monaldo@fr.com>; 'Hyun Jin In' <in@fr.com>
`Cc: Werber, Matthew <mwerber@nixonpeabody.com>; Schwartz, Daniel <djschwartz@nixonpeabody.com>;
`Christopher, Angelo <achristopher@nixonpeabody.com>; Christopher O. Green <cgreen@fr.com>
`Subject: IPR 2022-00222 (noclean)
`
`Counsel,
`
`As reflected in the attached Updated Mandatory Notices filed by Unified Patents, LLC (“Unified”) on March 10, 2023 in
`IPR2021-01413 (“the Unified IPR”), the Board determined that Samsung Electronics Co., Ltd. (“Samsung”) is a real party-
`in-interest (“RPI”) to the Unified IPR challenging claims 1-7 of the ‘228 patent. A final written decision is expected
`tomorrow (March 14) in the Unified IPR.
`
`Once the Unified IPR final written decision issues, Patent Owner intends to seek authorization from the Board to (1)
`move to terminate IPR2022-00222 because Samsung would be estopped from maintaining this IPR pursuant to at least
`35 U.S.C. § 315(e)(1) and (2) move to stay this IPR pursuant to at least 35 U.S.C. § 315(d) until the Board determines
`whether Samsung is estopped. Presenting oral argument constitutes “maintain[ing] a proceeding before the Office” and
`would be prohibited should the Board determine that Samsung is estopped. 35 U.S.C. § 315(e)(1). Thus, good cause
`exists for a stay to allow the Board to determine whether estoppel applies before proceeding with oral argument or
`otherwise allowing Samsung to continue to maintain this IPR.
`
`Please let us know Samsung’s position on the stay and motion to terminate and your availability for a call with the Board
`tomorrow or Wednesday.
`
`Jennifer
`
`3
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`

`

`Jennifer Hayes
`Partner
`jenhayes@nixonpeabody.com
`T/ 213.629.6179 M/ 650.575.2400 F/ 866.781.9391
`Nixon Peabody LLP
`300 South Grand Avenue, Suite 4100, Los Angeles, CA 90071-3151
`nixonpeabody.com @NixonPeabodyLLP
`
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