Jeremy Monaldo <Monaldo@fr.com>
`Friday, June 9, 2023 7:35 PM
`Hayes, Jennifer
`Christopher, Angelo; Schwartz, Daniel; Werber, Matthew; Dandalides, George; Karl
`Renner; Hyun Jin In; Girgis, Diana; IPR39843-0117IP1
`RE: IPR2022-00222: Document(s) Filed - Samsung Electronics Co., Ltd. v. MemoryWeb,
`LLC
`
`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Jennifer,
`
`Understood re the non-confidential exhibits. As previously mentioned, Samsung does not agree that any of Mr. Jakel’s
`testimony (e.g., Exs. 1017, 1023, and 2036) is admissible in this proceeding and opposes the use of any testimony
`developed for another proceeding without Samsung’s involvement to preserve due process. We will intend to address
`these issues in relevant motions.
`
`Samsung does not agree to an unbounded oral hearing. Samsung would agree to the prior proposal as it relates to
`observations and Samsung’s comments related to the oral hearing. Alternatively, Samsung would not oppose a 10 page
`reply (1/3 of the length of the motion, which is consistent with Board rules) due 7 days after Samsung’s response or 7
`days after a deposition related to a declaration submitted with Due Date 5.
`
`Thanks,
`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: Friday, June 09, 2023 8:01 PM
`To: Jeremy Monaldo <Monaldo@fr.com>
`Cc: Christopher, Angelo <achristopher@nixonpeabody.com>; Schwartz, Daniel <djschwartz@nixonpeabody.com>;
`Werber, Matthew <mwerber@nixonpeabody.com>; Dandalides, George <gdandalides@nixonpeabody.com>; Karl
`Renner <renner@fr.com>; Hyun Jin In <in@fr.com>; Girgis, Diana <dgirgis@nixonpeabody.com>; IPR39843-0117IP1
`<IPR39843-0117IP1@fr.com>
`Subject: RE: IPR2022-00222: Document(s) Filed - Samsung Electronics Co., Ltd. v. MemoryWeb, LLC
`
`Jeremy,
`
`The non-confidential exhibits would include the non-confidential first Jakel declaration and the redacted versions of Mr.
`Jakel’s later testimony. MemoryWeb believes that any disputes about the use of such discovery should be addressed in
`a motion to exclude.
`
`1
`
`MemoryWeb Ex. 2036
`Samsung Electronics Co., LTD v. MemoryWeb, LLC - IPR 2022-00222
`
`

`

`MemoryWeb would be prejudiced if it is unable to submit a reply or present arguments that would otherwise be
`included in a reply at the hearing. If you are unwilling to agree to that language, then MemoryWeb will need to go back
`to requiring a Reply brief.
`
`Best,
`
`Jennifer
`
`From: Jeremy Monaldo <Monaldo@fr.com>
`Sent: Friday, June 9, 2023 4:40 PM
`To: Hayes, Jennifer <jenhayes@nixonpeabody.com>
`Cc: Christopher, Angelo <achristopher@nixonpeabody.com>; Schwartz, Daniel <djschwartz@nixonpeabody.com>;
`Werber, Matthew <mwerber@nixonpeabody.com>; Dandalides, George <gdandalides@nixonpeabody.com>; Karl
`Renner <renner@fr.com>; Hyun Jin In <in@fr.com>; Girgis, Diana <dgirgis@nixonpeabody.com>; IPR39843-0117IP1
`<IPR39843-0117IP1@fr.com>
`Subject: RE: IPR2022-00222: Document(s) Filed - Samsung Electronics Co., Ltd. v. MemoryWeb, LLC
`
`Jennifer,
`
`To confirm, the non-confidential exhibits in IPR2021-01413 are limited to non-testimony exhibits presently publicly
`accessible in IPR2021-01413, correct? Assuming that is correct, Samsung finds the first three edits acceptable. For the
`final edit related to the scope of the oral hearing, Samsung does not find it is necessary to comment on the scope of the
`hearing in the proposal to the Board. If we were to offer a comment, we would not want to leave the scope unbounded
`and, instead, would propose that the parties may present arguments at the hearing based on the filed briefs and the
`motion for observations. We understand some latitude to be built into the “based on” language, but would expect to
`have some level of understanding of the arguments to be presented going into the hearing.
`
`If you agree with the above comments, Samsung approves the subject matter of the plan for submission to the Board.
`
`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: Friday, June 09, 2023 5:45 PM
`To: Jeremy Monaldo <Monaldo@fr.com>
`Cc: Christopher, Angelo <achristopher@nixonpeabody.com>; Schwartz, Daniel <djschwartz@nixonpeabody.com>;
`Werber, Matthew <mwerber@nixonpeabody.com>; Dandalides, George <gdandalides@nixonpeabody.com>; Karl
`Renner <renner@fr.com>; Hyun Jin In <in@fr.com>; Girgis, Diana <dgirgis@nixonpeabody.com>; IPR39843-0117IP1
`<IPR39843-0117IP1@fr.com>
`Subject: RE: IPR2022-00222: Document(s) Filed - Samsung Electronics Co., Ltd. v. MemoryWeb, LLC
`
`Jeremy,
`
`2
`
`MemoryWeb Ex. 2036
`Samsung Electronics Co., LTD v. MemoryWeb, LLC - IPR 2022-00222
`
`

`

`I have “accepted” your changes but have a few edits to the version you circulated using the same formatting approach
`you used:
`
`
`
`
`
`First Phase of Briefing
`o Due Date 1: Two weeks from Board’s Order following joint proposal
` MemoryWeb’s Brief on Additional Discovery and Document and Testimony Subpoena to Unified
`Patents
`Samsung’s Brief on Forfeiture and/or Waiver
`
`o Due Date 2: Two weeks after Due Date 1
`Samsung’s Response to MemoryWeb’s Brief on Additional Discovery and Subpoena to Unified
`
`Patents
` MemoryWeb’s Response to Samsung’s Brief on Forfeiture and/or Waiver
`
`Second Phase of Briefing
`o Due Date 3: If the First Phase of Briefing concludes with a Board Order granting MemoryWeb discovery
`on each of the items listed below, within 7 days of Board Order on the First Phase of Briefing
`
` MemoryWeb will file as exhibits in this proceeding the non-confidential exhibits in IPR2021-
`01413 pertaining to RPI, which are Exs. 2011, 2015, 2016, 2017, 2018, and 1027
`
`MW Response – the list that you identified in the email is incomplete. Given the time of day and
`the short timeframe before our proposal needs to be submitted to the Board, we do not believe
`it is not feasible to identify a complete list with confidence that it will be accurate. A number of
`our team members have already left for the day and those that remain have other deadlines
`and commitments that would make this a very difficult task and would unnecessarily prejudice
`MemoryWeb.
`
`
`
`If a deposition of a Unified witness is conducted, Samsung shall be entitled to participate and
`separately examine the witness after MemoryWeb has completed its examination; the parties
`agree to negotiate with Unified in good faith regarding the deposition scheduling and scope
`
`
`
`Samsung will produce to MemoryWeb, under seal, responsive non-privileged documents as
`follows: all non-privileged communications with Unified relating to MemoryWeb, the ‘228
`patent, the Unified IPR, or this IPR (IPR2022-00031); all agreements or contracts between
`Samsung and Unified, including Samsung’s membership agreement and any amendments or
`add-ons; a declaration (with any supporting exhibits) from a relevant Samsung declarant that
`addresses Samsung’s relationship with Unified as it relates to the present proceeding; and, a
`privilege log.
` MemoryWeb would be permitted a deposition of that witness of that witness
`o Due Date 4: If the First Phase of Briefing concludes with a Board Order granting MemoryWeb discovery
`and authorizes a motion to terminate, within 14 days of completion of authorized discovery from
`Samsung and Unified Patents
` MemoryWeb’s Motion to Terminate
`
`The brief will be limited to 30 pages
`o Due Date 5: Within [[28]] 21 days of MemoryWeb’s Motion to Terminate
`Samsung Response to Motion to Terminate
`
`
`Samsung’s brief will also be limited to 30 pages
`
`3
`
`MemoryWeb Ex. 2036
`Samsung Electronics Co., LTD v. MemoryWeb, LLC - IPR 2022-00222
`
`

`

`
`
`If Samsung submits declaration, Samsung will make declarant available within 7 days of Due
`Date 5, and MemoryWeb may file a Motion for Observations on the cross examination of the
`reply witness within 7 days of the deposition.
`
`MW Response – We believe 21 days is sufficient for this deadline – I note that we reached an
`agreement with Apple that the response deadline would be 21 days for this deadline. Also,
`because Samsung has the opportunity to submit a declaration, MemoryWeb needs a way to
`make the cross-examination of that witness part of the record in order for it to be considered by
`the Board. As a compromise, we propose that MemoryWeb be permitted to file a Motion for
`Observations on the cross examination of the reply witness within 7 days of the deposition.
`
` Motions to Exclude
`o Due Date 7: Two weeks before oral hearing
` Motions to Exclude (if any)
`o Due Date 8: One week before Oral Hearing
` Opposition to Motions to Exclude (if any)
` Oral Hearing
`o Due Date 9: At the Board’s convenience prior to the statutory deadline
`The parties agree that, at the oral hearing, MemoryWeb may present arguments that would
`
`otherwise have been submitted in a Reply and Samsung may respond to those arguments that
`would have otherwise been submitted in a Sur-Reply, as well as any observations by
`MemoryWeb on a deposition under Due Date 5.
`
`Please let me know your response to these modifications or whether you would like to discuss the proposal further.
`
`Best,
`
`Jennifer
`
`From: Jeremy Monaldo <Monaldo@fr.com>
`Sent: Friday, June 9, 2023 1:54 PM
`To: Hayes, Jennifer <jenhayes@nixonpeabody.com>
`Cc: Christopher, Angelo <achristopher@nixonpeabody.com>; Schwartz, Daniel <djschwartz@nixonpeabody.com>;
`Werber, Matthew <mwerber@nixonpeabody.com>; Dandalides, George <gdandalides@nixonpeabody.com>; Karl
`Renner <renner@fr.com>; Hyun Jin In <in@fr.com>; Girgis, Diana <dgirgis@nixonpeabody.com>; IPR39843-0117IP1
`<IPR39843-0117IP1@fr.com>
`Subject: RE: IPR2022-00222: Document(s) Filed - Samsung Electronics Co., Ltd. v. MemoryWeb, LLC
`
`Jennifer,
`
`We offer Samsung’s responses inline below and have edited the proposal with strikethrough/brackets showing proposed
`deletions and underline showing proposed additions (other than the term “non-confidential,” which was underlined in
`the most recent proposal).
`
`We disagree that MemoryWeb has the burden to prove it has not waived or forfeited its ability to raise the RPI/estoppel
`issues. You have never identified any cases that support or justify your argument that forfeiture or waiver apply this
`case or that MemoryWeb holds the burden of persuasion to show that it has not waived or forfeited these
`arguments. Accordingly, we propose that Samsung file an opening brief addressing the waiver and forfeiture issues and
`
`4
`
`MemoryWeb Ex. 2036
`Samsung Electronics Co., LTD v. MemoryWeb, LLC - IPR 2022-00222
`
`

`

`MemoryWeb will file an opening brief that addresses the interest of justice issue relating to its discovery requests as
`part of its motion for additional discovery and a Unified subpoena.
`
`Samsung Response - Before any discovery is conducted, or even considered, and certainly before any post discovery
`briefing is offered, MemoryWeb needs to demonstrate that it deserves to file a motion and, thereafter, that the
`proceeding is rightly encumbered by additional discovery. A party that has forfeited/waived an issue does not deserve
`discovery on it, so forfeiture/waiver should be addressed as a predicate matter. We offer this as justification for briefing
`forfeiture/waiver first and for having MemoryWeb make an initial showing in this regard. Nevertheless, in the interests
`of compromise, Samsung finds MemoryWeb’s updated proposal for the first phase of briefing to be generally
`acceptable.
`
`We also disagree that our plan circumvented the rules of discovery. While we believe our initial proposal is appropriate
`and reserve all rights to raise that proposal in its original form to the Board, below we provide an alternative proposal in
`the interest of compromise and to clarify our earlier position for your consideration:
`
`
`
`
`
`First Phase of Briefing
`o Due Date 1: Two weeks from Board’s Order following joint proposal
` MemoryWeb’s Brief on Additional Discovery and Document and Testimony Subpoena to Unified
`Patents
`Samsung’s Brief on Forfeiture and/or Waiver
`
`o Due Date 2: Two weeks after Due Date 1
`Samsung’s Response to MemoryWeb’s Brief on Additional Discovery and Subpoena to Unified
`
`Patents
` MemoryWeb’s Response to Samsung’s Brief on Forfeiture and/or Waiver
`
`Samsung Response - Samsung generally finds the first phase of briefing to be acceptable, but wants to confirm
`the briefing can address Forfeiture and/or Waiver.
`
`Second Phase of Briefing
`o Due Date 3: If the First Phase of Briefing concludes with a Board Order granting MemoryWeb discovery
`on each of the items listed below, within 7 days of Board Order on the First Phase of Briefing or by
`August 9, whichever is earlier
`
`Samsung Response – We have deleted the “by August 9, whichever is earlier” language because, if the
`Board does not reach a decision by August 9 on the First Phase of Briefing, that would automatically
`trigger discovery without Board authorization. Samsung does not agree to any discovery, unless first
`authorized by the Board. Also, MemoryWeb’s proposal is not contingent on the Board granting
`discovery. We propose adding that contingency above. If the Board does not authorize discovery (or
`does not authorize any particular item of discovery), the unauthorized discovery should not proceed.
`
` MemoryWeb will file as exhibits in this proceeding the non-confidential exhibits in IPR2021-
`01413 pertaining to RPI, which are Exs. 2011, 2015, 2016, 2017, 2018, and 1027
`
`Samsung Response – In its initial request, MemoryWeb proposed a limited number of exhibits
`for discovery. We understand this request to refer to the non-confidential exhibits from
`MemoryWeb’s initial request. For the sake of clarity, we have added the list of non-confidential
`documents to the above item for discovery. Please confirm this is accurate.
`
`
`
`If a deposition of a Unified witness is conducted, Samsung shall be entitled to participate and
`separately examine the witness after MemoryWeb has completed its examination; the parties
`agree to negotiate with Unified in good faith regarding the production of documents and
`deposition scheduling and scope
`
`5
`
`MemoryWeb Ex. 2036
`Samsung Electronics Co., LTD v. MemoryWeb, LLC - IPR 2022-00222
`
`

`

`Samsung Response – The “production of documents” language suggests further discovery that
`will not be addressed by MemoryWeb’s motion for additional discovery. At this point in the
`proceeding, any discovery should comport with the Board’s rules for additional discovery and be
`addressed in MemoryWeb’s motion. We are unclear as to what documents would be produced
`as part of the deposition.
`
`
`
`Samsung will produce to MemoryWeb, under seal, responsive non-privileged documents as
`follows: (1) all non-privileged communications with Unified relating to MemoryWeb, the ‘228
`patent, the Unified IPR, or this IPR (IPR2022-00031); all agreements or contracts between
`Samsung and Unified, including Samsung’s membership agreement and any amendments or
`add-ons; a declaration (with any supporting exhibits) from a relevant Samsung declarant that
`addresses Samsung’s relationship with Unified as it relates to the present proceeding; and, a
`privilege log.
` MemoryWeb would be permitted a deposition of that witness of that witness
`
`Samsung Response – this is acceptable to Samsung.
`o Due Date 4: If the First Phase of Briefing concludes with a Board Order granting MemoryWeb discovery
`and authorizes a motion to terminate, within 14 days of completion of authorized discovery from
`Samsung and Unified Patents
` MemoryWeb’s Motion to Terminate
`
`The brief will be limited to 30 pages
`
`Samsung Response – similar to the comments above, Samsung submits that the filing of the
`motion should be contingent on Board authorization.
`o Due Date 5: Within [[14]] 28 days of MemoryWeb’s Motion to Terminate
`Samsung Response to Motion to Terminate
`
`
`Samsung’s brief will also be limited to 30 pages and cannot raise waiver or forfeiture
`If Samsung submits declaration, Samsung will make declarant available within 7 days
`
`o Due Date 6: Within 14 days of Apple’s Response to MemoryWeb’s Motion to Terminate
` MemoryWeb Reply in Support of Motion to Terminate
` MemoryWeb’s brief will be limited to 12 pages
`
`Samsung Response – Although Samsung expects the forfeiture/waiver issues to be resolved in
`the First Phase of Briefing, Samsung does not perceive a need to limit the content of its
`response at this stage. Given the limited time remaining in the proceeding and the lateness with
`which this issue was raised, the schedule does not afford time for reply briefing. Also, the
`proposed 14 day period for Samsung’s response is unfair and far too short. MemoryWeb has
`had months to consider its motion to terminate, has been in possession of the evidence it seeks
`to enter even longer, and has already filed briefing related to that evidence. It also has the time
`related to discovery before its 14 day period begins. This imbalance is highly prejudicial to
`Samsung and providing Samsung with only 14 days for its responsive brief is unfair. We propose
`a 28 day period above.
`
`Instead of building in a reply to the agreed schedule, Samsung acknowledges MemoryWeb’s
`ability to request a reply after Samsung’s Response on a showing of good cause, if
`needed/justifiable, and time permits.
`
` Motions to Exclude
`
`6
`
`MemoryWeb Ex. 2036
`Samsung Electronics Co., LTD v. MemoryWeb, LLC - IPR 2022-00222
`
`

`

`o Due Date 7: Two weeks before oral hearing
` Motions to Exclude (if any)
`o Due Date 8: One week before Oral Hearing
` Opposition to Motions to Exclude (if any)
` Oral Hearing
`o Due Date 9: At the Board’s convenience prior to the statutory deadline
`
`Samsung Response – the proposal for motions to exclude and oral hearing are acceptable to Samsung.
`
`Please let me know if you would like to discuss this proposal further.
`
`Best,
`Jeremy
`
`Jeremy Monaldo :: Principal :: Fish & Richardson P.C.
`+1 (202) 626-7717 direct :: Monaldo@fr.com
`fr.com :: Bio :: LinkedIn :: Twitter
`
`From: Jeremy Monaldo
`Sent: Friday, June 09, 2023 2:33 PM
`To: 'Hayes, Jennifer' <jenhayes@nixonpeabody.com>
`Cc: Christopher, Angelo <achristopher@nixonpeabody.com>; Schwartz, Daniel <djschwartz@nixonpeabody.com>;
`Werber, Matthew <mwerber@nixonpeabody.com>; Dandalides, George <gdandalides@nixonpeabody.com>; Karl
`Renner <renner@fr.com>; Hyun Jin In <in@fr.com>; Girgis, Diana <dgirgis@nixonpeabody.com>; IPR39843-0117IP1
`<IPR39843-0117IP1@fr.com>
`Subject: RE: IPR2022-00222: Document(s) Filed - Samsung Electronics Co., Ltd. v. MemoryWeb, LLC
`
`Thanks Jennifer. We wanted to acknowledge receipt and confirm that we are aiming to have a response to you by ~4:30
`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: Thursday, June 08, 2023 6:37 PM
`To: Jeremy Monaldo <Monaldo@fr.com>
`Cc: Christopher, Angelo <achristopher@nixonpeabody.com>; Schwartz, Daniel <djschwartz@nixonpeabody.com>;
`Werber, Matthew <mwerber@nixonpeabody.com>; Dandalides, George <gdandalides@nixonpeabody.com>; Karl
`Renner <renner@fr.com>; Hyun Jin In <in@fr.com>; Girgis, Diana <dgirgis@nixonpeabody.com>; IPR39843-0117IP1
`<IPR39843-0117IP1@fr.com>
`Subject: RE: IPR2022-00222: Document(s) Filed - Samsung Electronics Co., Ltd. v. MemoryWeb, LLC
`
`7
`
`MemoryWeb Ex. 2036
`Samsung Electronics Co., LTD v. MemoryWeb, LLC - IPR 2022-00222
`
`

`

`Jeremy,
`
`Thank you for providing your proposal.
`
`We disagree that MemoryWeb has the burden to prove it has not waived or forfeited its ability to raise the RPI/estoppel
`issues. You have never identified any cases that support or justify your argument that forfeiture or waiver apply this
`case or that MemoryWeb holds the burden of persuasion to show that it has not waived or forfeited these
`arguments. Accordingly, we propose that Samsung file an opening brief addressing the waiver and forfeiture issues and
`MemoryWeb will file an opening brief that addresses the interest of justice issue relating to its discovery requests as
`part of its motion for additional discovery and a Unified subpoena.
`
`We also disagree that our plan circumvented the rules of discovery. While we believe our initial proposal is appropriate
`and reserve all rights to raise that proposal in its original form to the Board, below we provide an alternative proposal in
`the interest of compromise and to clarify our earlier position for your consideration:
`
`
`
`
`
`
`
`First Phase of Briefing
`o Due Date 1: Two weeks from Board’s Order following joint proposal
` MemoryWeb’s Brief on Additional Discovery and Document and Testimony Subpoena to Unified
`Patents
`Samsung’s Brief on Forfeiture
`
`o Due Date 2: Two weeks after Due Date 1
`Samsung’s Response to MemoryWeb’s Brief on Additional Discovery and Subpoena to Unified
`
`Patents
` MemoryWeb’s Response to Samsung’s Brief on Forfeiture
`Second Phase of Briefing
`o Due Date 3: Within 7 days of Board Order on the First Phase of Briefing or by August 9, whichever is
`earlier
` MemoryWeb will file as exhibits in this proceeding the non-confidential exhibits in IPR2021-
`01413 pertaining to RPI
`If a deposition of a Unified witness is conducted, Samsung shall be entitled to participate and
`separately examine the witness after MemoryWeb has completed its examination; the parties
`agree to negotiate with Unified in good faith regarding the production of documents and
`deposition scheduling and scope
`Samsung will produce to MemoryWeb, under seal, responsive non-privileged documents as
`follows: (1) all non-privileged communications with Unified relating to MemoryWeb, the ‘228
`patent, the Unified IPR, or this IPR (IPR2022-00031); all agreements or contracts between
`Samsung and Unified, including Samsung’s membership agreement and any amendments or
`add-ons; a declaration (with any supporting exhibits) from a relevant Samsung declarant that
`addresses Samsung’s relationship with Unified as it relates to the present proceeding; and, a
`privilege log.
` MemoryWeb would be permitted a deposition of that witness of that witness
`o Due Date 4: Within 14 days of completion of authorized discovery from Samsung and Unified Patents
` MemoryWeb’s Motion to Terminate
`
`The brief will be limited to 30 pages
`o Due Date 5: Within 14 days of MemoryWeb’s Motion to Terminate
` Apple Response to Motion to Terminate
` Apple’s brief will also be limited to 30 pages and cannot raise waiver or forfeiture
`If Apple submits declaration, Apple will make declarant available within 7 days
`
`o Due Date 6: Within 14 days of Apple’s Response to MemoryWeb’s Motion to Terminate
` MemoryWeb Reply in Support of Motion to Terminate
` MemoryWeb’s brief will be limited to 12 pages
`
`
`
`8
`
`MemoryWeb Ex. 2036
`Samsung Electronics Co., LTD v. MemoryWeb, LLC - IPR 2022-00222
`
`

`

` Motions to Exclude
`o Due Date 7: Two weeks before oral hearing
` Motions to Exclude (if any)
`o Due Date 8: One week before Oral Hearing
` Opposition to Motions to Exclude (if any)
` Oral Hearing
`o Due Date 9: At the Board’s convenience prior to the statutory deadline
`
`Please let me know if you would like to discuss this proposal further.
`
`Jennifer
`
`From: Jeremy Monaldo <Monaldo@fr.com>
`Sent: Wednesday, June 7, 2023 7:23 PM
`To: Hayes, Jennifer <jenhayes@nixonpeabody.com>
`Cc: Christopher, Angelo <achristopher@nixonpeabody.com>; Schwartz, Daniel <djschwartz@nixonpeabody.com>;
`Werber, Matthew <mwerber@nixonpeabody.com>; Dandalides, George <gdandalides@nixonpeabody.com>; Karl
`Renner <renner@fr.com>; Hyun Jin In <in@fr.com>; Girgis, Diana <dgirgis@nixonpeabody.com>; IPR39843-0117IP1
`<IPR39843-0117IP1@fr.com>
`Subject: RE: IPR2022-00222: Document(s) Filed - Samsung Electronics Co., Ltd. v. MemoryWeb, LLC
`
`Jennifer,
`
`We were able to speak with Samsung this evening and offer the following comments in response to MemoryWeb’s
`response to Samsung’s initial proposal.
`
`We continue to disagree as to whether waiver should be addressed first. As an initial matter, MemoryWeb needs to
`justify authorization for its motion to terminate through satisfaction of the Board’s good cause standard.
`
`Also, MemoryWeb is attempting to submit information after the Board’s one-month deadline for submitting
`supplemental information. For this information, the Board’s rules state that MemoryWeb “must show why the
`supplemental information reasonably could not have been obtained earlier, and that consideration of the supplemental
`information would be in the interests-of-justice.” 37 CFR § 42.123(b). In addition to justifying its motion to terminate,
`MemoryWeb needs to justify its late submission of supplemental information.
`
`Further, your discovery plan seeks to circumvent the Board’s rules for discovery. As set forth in the Trial Practice Guide
`at page 24, “[a] request for additional discovery must be in the form of a motion, although the parties may agree to such
`discovery among themselves.” Your plan also fails to account for the statutorily required showing that the discovery is
`“necessary in the interest of justice.” 35 U.S.C. § 316(a)(5)(B); see also 37 CFR § 42.51 (“The moving party must show
`that such additional discovery is in the interests of justice”).
`
`To expedite briefing of these issues, Samsung proposes an initial round of briefing where MemoryWeb submits a brief
`that addresses the following issues:
`
`(1) good cause why MemoryWeb should be authorized to file a motion to terminate and has not waived or
`forfeited its ability to raise the RPI/estoppel issues;
`(2) why information MemoryWeb seeks to submit reasonably could not have been obtained earlier, and that
`consideration of it would be in the interests-of-justice; and
`(3) why MemoryWeb’s request for additional discovery is in the interests of justice.
`
`9
`
`MemoryWeb Ex. 2036
`Samsung Electronics Co., LTD v. MemoryWeb, LLC - IPR 2022-00222
`
`

`

`Samsung proposes that MemoryWeb be given two weeks from the Board’s order to submit its brief and that Samsung
`be given two weeks to submit an opposition.
`
`Should the Board determine that MemoryWeb meets the requirements of good cause for its motion and meets the
`interests of justice standard for supplemental information and/or additional discovery after the initial round of briefing,
`Samsung would agree to produce, under seal:
`
`1. All non-privileged communications with Unified relating to MemoryWeb, the ‘228 patent, the Unified
`IPR, or this IPR (IPR2022-00031);
`
`2. All agreements or contracts between Samsung and Unified, including Samsung’s membership
`agreement and any amendments or add-ons; and
`
`3. A declaration (with any supporting exhibits) from a relevant Samsung declarant that addresses
`Samsung’s relationship with Unified as it relates to the present proceeding.
`
`Samsung proposes the production of the additional evidence listed in item (3) to expedite its consideration and make
`the Samsung declarant available for deposition before MemoryWeb’s motion to terminate. Although Samsung would be
`fine with submitting this additional evidence with its response to MemoryWeb’s motion to terminate, Samsung is
`offering to provide this evidence earlier given the compressed schedule remaining in this proceeding. The intent would
`be to alleviate the need for Samsung to submit additional testimonial evidence with its response to MemoryWeb’s
`motion to terminate, noting that Samsung has not seen the full scope of the evidence that MemoryWeb would be
`authorized to submit (assuming the Board authorizes further process after the initial round of briefing) and reserves the
`right to request authorization to submit additional testimonial evidence after reviewing MemoryWeb’s motion to
`terminate.
`
`Samsung also would agree not to oppose third party discovery on Unified Patents in the form of “A deposition of Kevin
`Jakel, which would proceed in accordance with 37 C.F.R. 42.53(c)(1),” assuming the Board’s standard procedures apply
`and Samsung has the opportunity to question Kevin Jakel after MemoryWeb. Samsung does not agree that Exs. 1017,
`1023, and 2036 are admissible in this proceeding and opposes the use of any testimony developed for another
`proceeding without Samsung’s involvement to preserve due process.
`
`Customary procedures for evidentiary objections should be maintained for any evidence submitted during any
`additional process.
`
`As to a briefing schedule, Samsung proposes a cadence that provides MemoryWeb with a motion and Samsung with a
`response/opposition. Given the limited time remaining in the proceeding and the lateness with which this issue was
`raised, the schedule does not afford time for reply briefing. Also, the proposed 14 day period for Samsung’s
`response/opposition is unfair and far too short. MemoryWeb has had months to consider its motion to terminate, has
`been in possession of the evidence it seeks to enter even longer, and has already filed briefing related to that
`evidence. This imbalance is highly prejudicial to Samsung and providing Samsung with only 14 days for its responsive
`brief is unfair.
`
`Finally, MemoryWeb’s proposal does not account for an oral hearing to discuss the RPI/estoppel issues. MemoryWeb
`has already had the opportunity to discuss RPI (and a majority of the evidence it seeks through additional discovery)
`with the same panel of judges in an oral hearing that did not involve Samsung. It would be unfair to preclude Samsung
`from having the opportunity to discuss these issues in an oral hearing. Accordingly, any process related to RPI/estoppel
`should end with an oral hearing.
`
`To the extent MemoryWeb agrees with the above proposals, Samsung proposes the following schedule:
`
`
`
`Initial Phase of Briefing
`
`10
`
`MemoryWeb Ex. 2036
`Samsung Electronics Co., LTD v. MemoryWeb, LLC - IPR 2022-00222
`
`

`

`
`
`o MemoryWeb’s Brief on Good Cause and Interests of Justice
` Due Date: Two Weeks from Board’s Order
`o Samsung’s Response to MemoryWeb’s Brief on Good Cause and Interests of Justice
` Due Date: Two Weeks from MemoryWeb’s Brief
`Subsequent Phase of Briefing To the Extent the Board Orders Further Proceedings After the Initial Phase of
`Briefing
`o MemoryWeb’s Motion to Terminate
` Due Date: Within 14 days of completion of any authorized discovery
`o Samsung’s Opposition to MemoryWeb’s Motion to Terminate
` Due Date: Within four weeks of MemoryWeb’s Motion
` Motion to Exclude
`o Due Date: Two weeks before oral hearing
` Opposition to Motion to Exclude
`o Due Date: One week before oral hearing
` Oral Hearing
`o Due Date: At least one month before statutory deadline
`
`Best Regards,
`Jeremy
`
`Jeremy Monaldo :: Principal :: Fish & Richardson P.C.
`+1 (202) 626-7717 direct :: Monaldo@fr.com
`fr.com :: Bio :: LinkedIn :: Twitter
`
`From: Jeremy Monaldo
`Sent: Wednesday, June 07, 2023 2:19 PM
`To: 'Hayes, Jennifer' <jenhayes@nixonpeabody.com>
`Cc: Christopher, Angelo <achristopher@nixonpeabody.com>; Schwartz, Daniel <djschwartz@nixonpeabody.com>;
`Werber, Matthew <mwerber@nixonpeabody.com>; Dandalides, George <gdandalides@nixonpeabody.com>; Karl
`Renner <renner@fr.com>; Hyun Jin In <in@fr.com>; Girgis, Diana <dgirgis@nixonpeabody.com>; IPR39843-0117IP1
`<IPR39843-0117IP1@fr.com>
`Subject: RE: IPR2022-00222: Document(s) Filed - Samsung Electronics Co., Ltd. v. MemoryWeb, LLC
`
`Thanks Jennifer. Just sent.
`
`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, June 07, 2023 2:16 PM
`To: Jeremy Monaldo <Monaldo@fr.com>
`Cc: Christopher, Angelo <achristopher@nixonpeabody.com>; Schwartz, Daniel <djschwartz@nixonpeabody.com>;
`Werber, Matthew <mwerber@nixonpeabody.com>; Dandalides, George <gdandalides@nixonpeabody.com>; Karl
`Renner <renner@fr.com>; Hyun Jin In <in@fr.com>; Girgis, Diana <dgirgis@nixonpeabody.com>; IPR39843-0117IP1
`
`11
`
`MemoryWeb Ex. 2036
`Samsung Electronics Co., LTD v. MemoryWeb, LLC - IPR 2022-00222
`
`

`

`<IPR39843-0117IP1@fr.com>
`Subject: Re: IPR2022-00222: Document(s) Filed - Samsung Electronics Co., Ltd. v. MemoryWeb, LLC
`
`Jeremy,
`
`The proposed email to the Board is acceptable.
`
`Jennifer
`
`Sent from my iPhone
`
`On Jun 7, 2023, at 11:07 AM, Jeremy Monaldo <Monaldo@fr.com> wrote:
`
`Thanks Jennifer. We are considering your proposal with our client, but time zone differences make
`things difficult. Would MemoryWeb oppose emailing the Board to request an extension to
`Friday? Below, we offer a proposed ema