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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________________
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`SAMSUNG ELECTRONICS CO., LTD. et al,
`Petitioner,
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`v.
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`MEMORYWEB, LLC,
`Patent Owner.
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`Case IPR2022-00222
`Patent 10,621,228
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`PETITIONER’S BRIEF ON FORFEITURE AND/OR WAIVER
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`The law is clear. When a party is required to put in evidence to place a
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`Proceeding No.: IPR2022-00222
`Attorney Docket: 39843-0117IP1
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`particular issue into dispute—as was MemoryWeb’s obligation to raise its real
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`party in interest (“RPI”) argument—said party must do so in a timely fashion, or
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`otherwise it has “waived its arguments on this issue.” In re NuVasive, Inc., 842
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`F.3d 1376, 1380-81 (Fed. Cir. 2016); see also 37 CFR § 42.25(b) (“A party should
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`seek relief promptly after the need for relief is identified.”).1
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`Yet through a series of deliberate actions, MemoryWeb repeatedly chose not
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`to challenge Samsung’s identification of RPI and Samsung’s position that it was
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`not an RPI to the prior Unified IPR. See Petition, 92. As apparent from its activity
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`in IPR2021-01413, from the outset, MemoryWeb’s strategy involved arguing that
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`Samsung was an RPI to the prior Unified IPR and that Samsung’s IPR should be
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`estopped upon entry of a Final Written Decision in the Unified IPR, which was
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`required by statute to occur before the oral hearing in Samsung’s IPR. But rather
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`than seeking to develop a record to support its position in this proceeding,
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`MemoryWeb sat on its hands. To this point, MemoryWeb did not bother to seek
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`proper entry into this record of timely evidence that Samsung was an RPI to the
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`Unified IPR. By choosing not to renew its pre-institution argument regarding RPI
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`1 All emphasis added unless otherwise noted.
`1
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`in this proceeding, MemoryWeb made the decision not to challenge Samsung’s
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`and the Board’s RPI identification.
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`Rather than properly raising its arguments and evidence in this proceeding as
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`the law requires, MemoryWeb chose to raise the issue in a different proceeding
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`that did not include Samsung. Worse, MemoryWeb’s arguments and evidence in
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`the Unified IPR were cloaked by seal and could not even be reviewed by
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`Samsung—the party that would be aggrieved if MemoryWeb’s arguments were
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`successful. With its conduct, MemoryWeb clearly sought to prevent Samsung due
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`process and spring a trap that would ensnare Samsung into an estoppel that
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`Samsung had no ability to fairly defend against. This type of gamesmanship
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`should not be permitted, much less rewarded.
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`If desiring its consideration in this proceeding, MemoryWeb should have
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`confronted Samsung with its RPI arguments and evidence at a time when briefing
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`and discovery were open within this proceeding. By seeking an advisory opinion
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`in a proceeding that did not involve Samsung and then waiting until the eve of oral
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`argument to spring its trap (after briefing and discovery had been closed for
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`months), MemoryWeb has prejudiced Samsung by, inter alia, frustrating the
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`efficiency and speed of IPR. Indeed, by unilaterally taking away, through its
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`gamesmanship, Samsung’s opportunity to consider and rebut any RPI related
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`arguments during the normal course this proceeding, MemoryWeb has frustrated
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`2
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`Samsung’s objective in pursuing IPR by burdening Samsung with the prospect of
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`unanticipated costs and delay.
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`MemoryWeb should not be rewarded with an extended proceeding that
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`allows it to re-do discovery and briefing that could have, and should have, been
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`completed on the normal schedule in this proceeding. The only basis for
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`MemoryWeb’s untimely request—its own deliberate delay—stands in stark
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`contrast to the good cause required to justify such extended proceedings.
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`Notably, MemoryWeb has offered no reasonable justification for delaying
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`introduction of RPI arguments and corresponding evidence into this proceeding.
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`In fact, all of the briefing and discovery MemoryWeb now seeks could have been
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`raised earlier—no new facts or evidence concerning RPI have developed since the
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`filing of the present IPR. Even the fact that a final written decision later came out
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`in the Unified IPR was entirely foreseeable and does not excuse MemoryWeb from
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`intentionally forcing Samsung to sit on the sidelines with respect to the RPI issue
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`until it was too late for Samsung to respond in kind during the normal course of
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`this proceeding. Because MemoryWeb failed to timely raise these issues when it
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`clearly had an opportunity to do so in this proceeding, MemoryWeb has forfeited
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`and waived the issue of RPI and should not be relieved of the forfeiture/waiver that
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`MemoryWeb brought upon itself. Moreover, the issue of 35 U.S.C. § 315(e)
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`estoppel, which arises directly out of and is inescapably linked to the RPI issue, is
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`3
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`necessarily forfeited/waived by extension, as it cannot survive apart from a hitherto
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`non-existent RPI determination.
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`MemoryWeb should not be rewarded for its failure to timely raise its RPI
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`arguments and evidence by forcing Samsung into compressed post-hearing
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`discovery and briefing, in contravention of Congress’s intent for IPR proceedings
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`to be compact and cost-effective. Nor should MemoryWeb be allowed to re-
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`litigate, at this extremely late stage in the proceeding, issues that it clearly
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`forfeited/waived.
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` MEMORYWEB FAILED TO OFFER TIMELY ARGUMENTS AND
`EVIDENCE TO PUT THE RPI ISSUE INTO DISPUTE
`A. MemoryWeb Knowingly Forfeited/Waived the RPI Issue
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`It is well established that “forfeiture is the failure to make the timely
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`assertion of a right” and “waiver is the ‘intentional relinquishment or abandonment
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`of a known right.’” United States v. Olano, 507 U.S. 725, 733 (1993) (quoting
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`Johnson v. Zerbst, 304 U.S. 458, 464 (1938)). However, as the Federal Circuit
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`recognized, the court and parties often use the terms “waiver” and “forfeiture”
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`interchangeably. In re Google Tech. Holdings LLC 980 F.3d 858, 862-863 & n.8
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`(Fed. Cir. 2020). PTAB’s Trial Practice Guide and this proceeding’s Scheduling
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`Order, for instance, only mention waiver—and not forfeiture—with respect to
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`arguments that are not timely raised. On the other hand, the Federal Circuit noted,
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`4
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`for example in In re Google, that arguments not timely raised during the
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`proceedings before the Board are forfeited. In re Google Tech. Holdings LLC at
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`864.
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`Regardless of whether MemoryWeb’s shortcomings constitute forfeiture or
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`waiver (or both), the circumstances of the present case overwhelmingly point to a
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`clear case of MemoryWeb failing to raise the issue of RPI in a timely manner
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`during the course of these proceedings and doing so in a deliberate manner.
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`Indeed, MemoryWeb had multiple opportunities during the IPR proceeding to
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`address RPI issues. In each instance, it chose not to.
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`At the outset, in the Petition as filed, Samsung made clear that only
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`“Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.”
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`(collectively “Samsung”) were the real parties in interest. Petition, 92. Further,
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`Samsung explicitly stated that Samsung was not an RPI to petitions “filed by
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`Unified Patents LLC (IPR2021-01413)” and “filed by Apple Inc. (IPR2022-
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`00031).” Id.
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`The Board, at the time of institution, recognized Samsung’s RPI
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`identification, noting that they “agree with Petitioner that it is not related to
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`Unified Patents or Apple because there is no evidence that it controls Unified
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`Patents or Apple and its interests differ from Unified Patents and Apple.”
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`Institution Decision, 11.
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`5
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`Following institution, MemoryWeb had the opportunity to rebut the Board’s
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`initial RPI determination by properly and timely addressing the RPI issue in its
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`Patent Owner Response (“POR”) of September 6, 2022. Instead, MemoryWeb
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`chose to not say anything at all, providing zero evidence/argument to rebut the RPI
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`identification as provided in this proceeding by Samsung and as endorsed by the
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`Board in the institution decision. There can be no clearer case of
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`forfeiture/waiver. See Unified Patents, LLC, v. Gesture Technology Partners,
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`LLC, IPR2021-00917, Paper 32, 5 (PTAB Dec. 16, 2022) (“By failing to raise the
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`issue of real party in interest or privity in Patent Owner’s Response (Paper 13), we
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`determine that Patent Owner waived those issues at trial. Patent Owner knew of
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`the issues and chose not to include it in its briefings post-institution.”); see also
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`Google LLC v. Uniloc 2017 LLC, IPR2020-00447, Paper 24, 9-10 n. 6 (PTAB May
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`11, 2021) (finding waiver because POR did not renew pre-institution argument);
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`NuVasive, 842 F.3d at 1380-81 (issues not renewed in POR are waived); IPR2022-
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`00222, Scheduling Order (Paper 13), 9 (Board explaining that “any arguments not
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`raised in the response may be deemed waived”); Trial Practice Guide, 94 (similarly
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`explaining Patent Owner’s waiver of unaddressed issues). And to the extent
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`MemoryWeb’s preliminary response (“POPR”) had presented any relevant
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`arguments/evidence related to the RPI issue, which Samsung does not see,
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`6
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`MemoryWeb incontrovertibly waived the same by choosing not to raise the issue
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`in the POR. See id.
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`Subsequently, in its Sur-Reply, MemoryWeb even more clearly manifested
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`its unmistakable intent to forfeit/waive the RPI issue. Specifically, in the
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`Petitioner’s Reply following MemoryWeb’s POR, Samsung had noted that
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`MemoryWeb has only ever raised the RPI issue in the Unified IPR and further that
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`MemoryWeb “has neither alleged nor submitted any evidence of direction, control,
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`joint funding, or any relevant communication or coordination between Samsung
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`and the other entity.” IPR2022-00222, Paper 24, 24. In response, in the Sur-
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`Reply, MemoryWeb simply chose to proclaim that “estoppel would apply if the
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`Board determines Petitioner is an unnamed RPI in the Unified IPR,” without
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`addressing much less acknowledging Samsung’s argument that RPI had not been
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`brought into dispute in this proceeding. IPR2022-00222, Paper 30, 33.
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`Speaking of the Unified IPR, it is worth noting that, in the corresponding
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`institution decision that came out nearly six months prior to MemoryWeb’s filing
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`of the POR in this proceeding, the Board had declined to address the RPI issue
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`because an RPI analysis was deemed to be not warranted in that proceeding as per
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`“the Board’s precedential decision in SharkNinja Operating LLC v. iRobot Corp.,
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`IPR2020-00734, Paper 11 at 18 (PTAB Oct. 6, 2020) (precedential).” Unified
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`Patents, LLC, v. MemoryWeb, LLC, IPR2021-01413, Paper 15, 13 (PTAB Mar. 14,
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`7
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`2022). Director Vidal, in the Decision Granting Director Review, later confirmed
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`the applicability of SharkNinja’s reasoning in this instance. See IPR2021-01413,
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`Paper 76, 5 (PTAB May 22, 2023) (confirming that “[t]he Board should not have
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`determined whether Apple and Samsung are RPIs in [the Unified] proceeding
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`given that determination was not necessary to resolve the proceeding.”).
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`But despite precedent laid out in SharkNinja and the Board’s reliance on the
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`same in declining to address the RPI issue in the Unified IPR institution decision,
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`MemoryWeb chose to raise the RPI issue in its POR in the Unified proceeding
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`while choosing not to raise the issue in the POR in this proceeding. That bears
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`repeating: MemoryWeb decided to (1) pursue the RPI issue in the Unified IPR
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`despite the Board having clearly explained, in the institution decision, why the RPI
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`issue need not be decided in that proceeding and (2) abandon the RPI issue in this
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`proceeding despite the Board having agreed with Samsung, in the institution
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`decision, that Samsung and Unified were not real parties in interest.
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`Incidentally, prior to institution in its POPR, MemoryWeb had argued that
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`“Samsung should have been named as a real party in interest in the Unified IPR.”
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`POPR, 30-31. MemoryWeb even provided some evidence that allegedly supported
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`its claim that Samsung and Unified were somehow RPIs. See id., 30-32 (citing to
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`Exs. 2005-2011). But as noted above, MemoryWeb very clearly and knowingly
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`forfeited/waived these arguments by failing to raise the RPI issue in the POR. And
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`8
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`instead of choosing to pursue the RPI issue in this proceeding where the Board had
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`provisionally denied MemoryWeb’s RPI argument at institution, MemoryWeb
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`chose to abandon those arguments here and instead pursue them in the Unified
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`IPR, where the Board did not decide the RPI issue at institution based on clear
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`precedent laid out in SharkNinja.
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`Ultimately, for gamesmanship or otherwise, MemoryWeb knowingly and
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`repeatedly refused to address the RPI issue in this proceeding. Samsung’s
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`contention that it was not an RPI in the Unified IPR therefore stands unchallenged.
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`Yet now, over three months after the Oral Hearing and over a year since the
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`institution decision, MemoryWeb for the first time seeks additional discovery and
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`briefing in this proceeding regarding RPI. As demonstrated above, this issue could
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`and should have been raised long ago. There is no reason why it couldn’t have
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`been raised earlier. MemoryWeb’s attempt to surface this issue for the first time
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`now, after oral argument, flouts the intent of Congress and the well-established
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`Board practice of providing a compact and speedy proceeding.
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`Interestingly, during the Oral Hearing for this proceeding, Judge Trock
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`questioned MemoryWeb’s counsel regarding Samsung’s lack of opportunity “to
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`contest the issue of whether or not it ever was a real party-in-interest in the prior
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`proceeding.” IPR2022-00222, Paper 34, 31:17-32:2. Judge Trock’s question
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`highlights the procedural dilemma created by MemoryWeb where, because
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`9
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`MemoryWeb never raised the RPI issue in this proceeding until now, Samsung’s
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`only recourse appears to have been taking some sort of third party action in the
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`Unified IPR—this assuming knowledge of papers and evidence under seal in that
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`proceeding. Indeed, in responding to Judge Trock, MemoryWeb’s counsel
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`suggested that “in terms of due process, the appropriate actions that should have
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`been taken was that Samsung should have requested leave to intervene and [in] the
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`Unified proceeding to present [its] evidence that it was not a real party-in-interest
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`in that proceeding, where the real party in issue was in dispute.” Id., 32:3-7. Here,
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`MemoryWeb’s counsel acknowledges that the RPI issue was never in dispute in
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`the Samsung proceeding and further suggests the extraordinary and unheard of step
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`of having Samsung intervene in the Unified proceeding.
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`MemoryWeb is wrong. The party seeking to avail itself of relief (i.e.,
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`MemoryWeb) must create a record and establish a baseline of evidence and create
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`a reasonable opportunity for the party targeted by such relief (i.e., Samsung) to
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`understand the allegation, and respond. Samsung should not be somehow required
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`to intervene in a proceeding between third parties to preserve its rights. Not
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`surprisingly, the extreme action of a third party intervention is not something that
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`is remotely contemplated—in the Trial Practice Guide or elsewhere. And why
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`would it? MemoryWeb had every opportunity to properly raise the RPI issue in
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`this proceeding through well-established and widely recognized procedural
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`10
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`mechanisms that were no less available to it during the regular course of this
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`proceeding than during the course of the Unified proceeding.
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`Also, during the Oral Hearing and in response to Samsung’s counsel’s
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`explanation that MemoryWeb had waived the RPI issue by failing to put any
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`evidence into the record in this proceeding to substantiate its position that Samsung
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`and Unified were RPIs, Judge Trock noted that he was sympathetic to Samsung’s
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`position on the issue of RPI waiver but queried, hypothetically, how the Board
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`should deal with the estoppel issue “[i]f there is an order by the Board that
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`Samsung was found to be a real party-in-interest” in the Unified IPR. IPR2022-
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`00222, Paper 34, 14:21-15:10. Notably, Director Vidal vacated the Board’s RPI
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`determination in the Unified IPR, rendering moot the concern expressed through
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`the question: the Board need not deal with the estoppel issue because the RPI issue
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`has been forfeited/waived by MemoryWeb and, as a consequence, no other RPI
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`determinations will come into existence. See IPR2021-01413, Paper 76, 5 (PTAB
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`May 22, 2023) (vacating the Board’s RPI determination and the RPI Order).
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`B. MemoryWeb Ignored PTAB Precedent in Forfeiting/Waiving the RPI
`Issue
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`For the reasons provided above, MemoryWeb should have known—by no
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`later than the March 14, 2022 institution date of the Unified IPR—that the Unified
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`IPR was the wrong proceeding to challenge any alleged RPI issue involving
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`11
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`Unified since the Board “need not address whether Apple and Samsung are
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`unnamed RPIs because, even if either were, it would not create a time bar or
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`estoppel under 35 U.S.C. § 315.” IPR2021-01413, Paper 15, 13. Specifically, as
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`per SharkNinja, the Board “need not address whether [a party] is an unnamed RPI
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`because, even if it were, it would not create a time bar or estoppel under 35 U.S.C.
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`§ 315.” SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11, 18
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`(PTAB Oct. 6, 2020) (precedential). In fact, Director Vidal later confirmed in the
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`Unified IPR that the “precedential SharkNinja decision held that it best serves the
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`Office’s interests in cost and efficiency to not resolve an RPI issue when ‘it would
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`not create a time bar or estoppel under 35 U.S.C. § 315’ in that proceeding.”
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`IPR2021-01413, Paper 76, 5 (citing SharkNinja, Paper 11, 18).
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`Thus, based at least on well-established precedent in SharkNinja,
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`MemoryWeb should have known that the Unified IPR—where a time bar or
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`estoppel under 35 U.S.C. § 315 was completely out of play—was the wrong
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`proceeding to be challenging the RPI issue if it genuinely desired to preserve a
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`future estoppel argument against Samsung. In fact, MemoryWeb did know this, as
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`the Board conveyed the precedential decision in SharkNinja and its implications to
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`MemoryWeb in the Unified institution decision. See IPR2021-01413, Paper 15, 13
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`(the Board explaining that it “need not address whether Apple and Samsung are
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`12
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`unnamed RPIs [in the Unified IPR] because, even if either were, it would not
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`create a time bar or estoppel under 35 U.S.C. § 315.”).
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`At the time of this realization—i.e., no later than the March 14, 2022
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`institution date of the Unified IPR—MemoryWeb had a choice. MemoryWeb
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`could have continued to press forward the RPI issue in the Unified IPR in
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`contravention of clear guidance provided in SharkNinja and in the Unified
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`institution decision; or MemoryWeb could have spent the next six months
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`preparing to properly raise the RPI issue in the Samsung IPR by the September 6,
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`2022 POR deadline. MemoryWeb deliberately and knowingly chose the former
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`despite the clear precedent set out in SharkNinja, and, as a consequence, it should
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`now have to live with that decision.
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`Samsung, who had no say in MemoryWeb’s decision to ignore clear PTAB
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`precedent, should not be the one paying the price by getting embroiled in
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`additional post-hearing discovery/briefing and being subject to potential estoppel
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`based on an RPI issue that was long ago forfeited/waived by MemoryWeb. See
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`IPR2021-00917, Paper 32, 5 (PTAB Dec. 16, 2022); IPR2020-00447, Paper 24, 9-
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`10 n. 6 (PTAB May 11, 2021); NuVasive, 842 F.3d at 1380-81; IPR2022-00222,
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`Paper 13, 9; Trial Practice Guide, 94.
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`C. MemoryWeb Should Not Be Rescued from a Predicament of Its Own
`Making
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`13
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`While Samsung strongly believes, for at least the reasons provided above,
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`that the RPI and any resulting estoppel issues have been unequivocally waived—or
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`otherwise forfeited—by MemoryWeb based at least on its repeated failure to
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`address the same in this proceeding, Samsung nevertheless recognizes that there
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`are instances where the Board may make a determination sua sponte even if a party
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`had failed to timely advance a particular argument, and that such an argument may
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`not always be deemed to be forfeited. See, e.g., Apple Inc. v. MPH Techs. Oy,
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`Nos. 2021-1355, 2021-1356, 2022 WL 4103286, at *4 (Fed. Cir. Sept. 8, 2022)
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`(the court “declin[ing] to find forfeiture where neither party disputed the
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`construction of a [claim] term and the Board nevertheless issued a sua sponte
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`construction in its final written decision that diverged from the parties’
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`understanding of the claim”).
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`But especially in a case like ours where a party (i.e., MemoryWeb) has
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`repeatedly ignored the Board’s guidance and PTAB precedent to implicate
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`themselves in the procedural predicament that they now find themselves in, said
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`party should not later be excused from the plain notice and diligence requirements
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`in PTAB proceedings and be given the extraordinary relief of post-oral hearing
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`discovery and briefing on an issue that it chose to ignore in the first place during
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`the regular course of this proceeding. And while we agree with Director Vidal that
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`the Board “can and should make” an RPI determination in certain scenarios,
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`14
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`MemoryWeb in this instance should not be allowed to contort PTAB guidelines
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`and precedent to help relieve itself of an unnecessary procedural quagmire that it
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`created of its own strategic volition.
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`Declining post-oral hearing discovery and briefing for an issue raised out of
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`time by MemoryWeb is keeping with the Board’s handling of past cases where a
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`party had multiple chances to raise the issue but failed to do so. See NuVasive, 842
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`F.3d at 1380-81 (issues not renewed in POR are waived); Unified Patents, LLC, v.
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`Gesture Technology Partners, LLC, IPR2021-00917, Paper 32, 5 (PTAB Dec. 16,
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`2022) (“By failing to raise the issue of real party in interest or privity in Patent
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`Owner’s Response (Paper 13), we determine that Patent Owner waived those
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`issues at trial. Patent Owner knew of the issues and chose not to include it in its
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`briefings post-institution.”); Google LLC v. Uniloc 2017 LLC, IPR2020-00447,
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`Paper 24, 9-10 n. 6 (PTAB May 11, 2021) (finding waiver because POR did not
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`renew pre-institution argument); see also IPR2022-00222, Scheduling Order
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`(Paper 13), 9 (Board explaining that “any arguments not raised in the response may
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`be deemed waived”); Trial Practice Guide, 94 (similarly explaining Patent Owner’s
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`waiver of unaddressed issues).
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` Conclusion
`It was MemoryWeb who, in this proceeding, chose to knowingly abandon its
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`pre-institution RPI argument following the Board’s rejection of the same in the
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`15
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`institution decision and decided, instead, to solely pursue it in a different
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`proceeding (i.e., Unified IPR) where its determination would have had no bearing
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`on the outcome in that case, given the lack of time bar or estoppel issues there.
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`And it was MemoryWeb who, with RPI arguments and evidence cloaked by seal in
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`the Unified proceeding, sought to ensnare Samsung with late allegations of
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`unnamed RPIs in this proceeding, rather than properly confronting Samsung at the
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`appropriate time and allowing Samsung to defend itself during the normal course
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`of this proceeding.
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`In short, MemoryWeb put itself into this position and should not, in the
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`interest of justice, be rewarded by being given the chance to re-litigate the RPI
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`issue (and by extension other issues arising therefrom), particularly after having
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`deliberately chosen to not raise such issue in the appropriate proceeding at the
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`appropriate time.
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`Dated: June 30, 2023
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` /W. Karl Renner/
`W. Karl Renner, Reg. No. 41,265
`Jeremy J. Monaldo, Reg. No. 58,680
`Hyun Jin In, Reg. No. 70,014
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
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`Attorneys for Petitioner
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`16
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`Proceeding No.: IPR2022-00222
`Attorney Docket: 39843-0117IP1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(1) and 42.6(e)(4)(iii), the undersigned
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`certifies that on June 30, 2023, a complete and entire copy of this Petitioner’s Brief
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`on Forfeiture and/or Waiver was provided via email to the Patent Owner by
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`serving the email correspondence addresses of record as follows:
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`Jennifer Hayes
`George Dandalides
`Matthew A. Werber
`Nixon Peabody LLP
`300 South Grand Avenue, Suite 4100
`Los Angeles, CA 90071-3151
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`Email: jenhayes@nixonpeabody.com
`gdandalides@nixonpeabody.com
`mwerber@nixonpeabody.com
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`/Kristyn Waldhauser/
`Kristyn Waldhauser
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
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`17
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