IPR2022-00222
`Patent No. 10,621,228
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS CO., LTD.
`Petitioner
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`v.
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`MEMORYWEB, LLC
`Patent Owner
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`Patent No. 10,621,228
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`Inter Partes Review No. IPR2022-00222
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`PATENT OWNER’S RESPONSE BRIEF ADDRESSING ALLEGED
`WAIVER AND/OR FORFEITURE
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`Patent No. 10,621,228
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS CO., LTD.
`Petitioner
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`v.
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`MEMORYWEB, LLC
`Patent Owner
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`Patent No. 10,621,228
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`Inter Partes Review No. IPR2022-00222
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`PATENT OWNER’S RESPONSE BRIEF ADDRESSING ALLEGED
`WAIVER AND/OR FORFEITURE
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`IPR2022-00222
`Patent No. 10,621,228
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`PO’s Response Brief on Alleged Forfeiture/Waiver
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`TABLE OF CONTENTS
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`Page(s)
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`I.
`INTRODUCTION ............................................................................................... 1
`II. FACTUAL BACKGROUND .............................................................................. 2
`A. Unified’s IPR .............................................................................................. 2
`B.
`Samsung’s IPR ............................................................................................ 2
`1. MemoryWeb’s Preliminary Response ................................................... 3
`2. MemoryWeb’s Response and Sur-Reply ............................................... 3
`III. ARGUMENT ....................................................................................................... 3
`A.
`Samsung’s “Gamesmanship” Accusations Are Baseless ........................... 3
`B.
`Samsung Misunderstands or Mischaracterizes the RPI Issue .................... 5
`C. MemoryWeb Did Not Forfeit or Waive the Relief Sought in its
`Contemplated Motion to Terminate ...................................................... 6
`1. MemoryWeb’s Motion to Terminate is Not Untimely .......................... 7
`2.
`SharkNinja Does Not Support Samsung’s Forfeiture and Waiver
`Arguments ................................................................................. 11
`To the Extent Necessary, Good Cause Exists to Proceed with Limited
`Discovery and MemoryWeb’s Motion to Terminate ........................... 14
`IV. CONCLUSION .................................................................................................. 16
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`D.
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Abbott Lab’ys v. Cordis Corp.,
`710 F.3d 1318 (Fed. Cir. 2013) ............................................................................ 4
`Apple Inc. v. MPH Techs. Oy,
`No. 2021-1355, 2022 WL 4103286 (Fed. Cir. Sept. 8, 2022) .............................. 4
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) ............................................................................ 4
`Facebook, Inc. v. Windy City Innovations, LLC,
`973 F.3d 1321 (Fed. Cir. 2020) .......................................................................... 11
`Glob. Shade Corp. v. with-U E-Com. (Shanghai) Co., Ltd.,
`IPR2021-00365, Paper 36 (PTAB July 25, 2022) .............................................. 16
`Google LLC v. Uniloc 2017 LLC,
`IPR2020-00447, Paper 24 (PTAB May 11, 2021) ............................................. 10
`In re Nuvasive, Inc.,
`842 F.3d 1376 (Fed. Cir. 2016) ......................................................................... 10
`Kofax, Inc. v. Uniloc USA, Inc. et al.,
`IPR2015-01207, Paper 22 (PTAB June 2, 2016) ............................................... 10
`Kofax, Inc. v. Uniloc USA, Inc. et al.,
`IPR2015-01207, Paper 24 (PTAB July 20, 2016) .............................................. 10
`SharkNinja Operating LLC v. iRobot Corp.,
`IPR2020-00734, Paper 11 (PTAB Oct. 6, 2020) ................................................ 12
`Telefonaktiebolaget LM Ericsson v. TCL Corp.,
`941 F.3d 1341 (Fed. Cir. 2019) .......................................................................... 15
`United States v. Olano,
`507 U.S. 725 (1993) .............................................................................................. 6
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`Statutes
`35 U.S.C. § 314(a) ..................................................................................................... 3
`35 U.S.C. § 315(c) ................................................................................................... 11
`35 U.S.C. § 315(d) ................................................................................................... 11
`35 U.S.C. § 315(e)(1) ................................................................................... 1, 7, 8, 11
`Regulations
`37 C.F.R. § 42.122(b) .............................................................................................. 11
`37 C.F.R. § 42.25(b) .................................................................................................. 7
`37 C.F.R. § 42.5(a) ..................................................................................................... 9
`37 C.F.R. § 42.5(c)(3) .......................................................................................... 7, 14
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`IPR2022-00222
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`Exhibit
`No.
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`2001 Withdrawn
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`PO’s Response Brief on Alleged Forfeiture/Waiver
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`LISTING OF EXHIBITS
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`Description
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`2002
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`Japanese Unexamined Patent Application Publication No. 2001-
`160058 and Certified English Translation (“Fujiwara”)
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`2003 Withdrawn
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`2004
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`U.S. Patent No. 6,714,215 (“Flora”)
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`2005
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`Supplemental Declaration of Kevin Jakel, Unified Patents, LLC v.
`MemoryWeb, LLC, IPR2021-01413 (Dec. 30, 2021) (redacted version)
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`2006
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`3 Questions for Unified Patents CEO Post-Oil States (Part II)
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`2007
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`2008
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`2009
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`Petition for Inter Partes Review, Apple Inc. v. MemoryWeb, LLC,
`IPR2022-00031, Paper 1 (PTAB Oct. 30, 2021)
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`Brief of Amicus Curiae Unified Patents Inc. in Cuozzo Speed
`Technologies, LLC v. Michelle K. Lee et al.
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`Unified Patents September 3, 2021 Press Release regarding
`MemoryWeb IPR
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`2010
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`Unified Patents September 9, 2021 email regarding MemoryWeb IPR
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`2011
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`2012
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`2013
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`Unified Patent’s website link (FAQs)
`(https://www.unifiedpatents.com/faq)
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`Case Readiness Status Report, MemoryWeb, LLC v. Samsung
`Electronics Co., Ltd. and Samsung Electronics America, Inc., Case No.
`21-cv-411 (W.D. Tex.) (Sept. 3, 2021)
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`Amended Complaint, MemoryWeb, LLC v. Samsung Electronics Co.,
`Ltd. and Samsung Electronics America, Inc., Case No. 21-cv-411
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`IPR2022-00222
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`Exhibit
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`PO’s Response Brief on Alleged Forfeiture/Waiver
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`Description
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`(W.D. Tex.) (Nov. 24, 2021)
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`2014
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`2015
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`Excerpts from Defendant Samsung Electronics Co. Ltd. and Samsung
`Electronics America, Inc.’s Initial Invalidity Contentions,
`MemoryWeb, LLC v. Samsung Electronics Co., Ltd. and Samsung
`Electronics America, Inc., Case No. 21-cv-411 (W.D. Tex.) (Jan. 31,
`2022)
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`Joint Motion for Entry of Agreed Scheduling Order, MemoryWeb, LLC
`v. Samsung Electronics Co., Ltd. and Samsung Electronics America,
`Inc., Case No. 21-cv-411 (W.D. Tex.) (Oct. 1, 2021)
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`2016
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`MV3 Partners LLC v. Roku Inc., 6:18-cv-00308, (W.D. Texas) D.I. 83
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`2017
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`2018
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`IAM, “The last thing anyone should think about WDTX is that it is
`patent plaintiff friendly, says Albright” (Apr. 7, 2020)
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`Pages from The Way Back Machine The Wayback Machine-
`https://web.archive.org/web/20000510141416/http://www.photo.net:80
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`2019
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`Cluster Map, Thumbnail, First Combination Comparison
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`2020
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`2021
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`2022
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`2023
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`2024
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`2025
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`Japanese Unexamined Patent Application Publication No. 2007-
`323544 and Certified English Translation (“Takakura”)
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`Patent Owner Response, Unified Patents, LLC v. MemoryWeb, LLC,
`IPR2021-01413, Paper 30 (Redacted Version)
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`Transcript of the deposition of Dr. Philip Greenspun dated August 26,
`2022
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`Declaration of Professor Glenn Reinman, Ph.D.
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`Corrected Patent Owner’s Response
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`Transcript of the deposition of Dr. Philip Greenspun dated January 19,
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`Exhibit
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`2023
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`PO’s Response Brief on Alleged Forfeiture/Waiver
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`Description
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`2026
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`2027
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`2028
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`2029
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`2030
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`2031
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`2032
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`2033
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`2034
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`2035
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`2036
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`Views 1 – 6 Comparison
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`Patent Owner’s Demonstrative Exhibit
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`Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413,
`Petitioner’s Motion to Seal and For Entry of Protective Order (Paper
`10)
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`Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413,
`Petitioner’s Updated Mandatory Notices (Paper 57)
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`Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413, Final
`Written Decision (Public Version) (Paper 67)
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`Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413, Decision
`Granting Director Review (Public Version) (Paper 76)
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`Email Chain between Counsel for Patent Owner and Counsel for
`Petitioner (Mar. 13-15, 2023)
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`Unified Patents Document Subpoena
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`Unified Patents Testimony Subpoena
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`Samsung Document Production Requests
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`Email Chain between Counsel for Patent Owner and Counsel for
`Petitioner (June. 5-9, 2023)
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`2037
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`Declaration of Jennifer Hayes
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`2038
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`Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413, Order
`Identifying Real Party in Interest (Public Version) (Paper 79)
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`IPR2022-00222
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`Pursuant
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`to
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`PO’s Response Brief on Alleged Forfeiture/Waiver
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`the Board’s Order
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`(Paper 38), MemoryWeb, LLC
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`(“MemoryWeb”) hereby submits its brief responding to Samsung Electronics Co.,
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`Ltd.’s (“Samsung”) Brief on Forfeiture and/or Waiver (Paper 39).
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`I.
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`INTRODUCTION
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`Consistent with applicable Board precedent, MemoryWeb proved that Unified
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`Patents, LLC (“Unified”) failed to identify Samsung as an RPI in IPR2021-01413
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`(hereinafter, “Unified”). When Unified resulted in a final written decision,
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`MemoryWeb immediately sought to terminate this proceeding because Samsung is
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`estopped under at least 35 U.S.C. § 315(e)(1). Samsung claims that MemoryWeb
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`waived or forfeited its right to argue estoppel because its approach violated “clear”
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`precedent yet cannot identify a single Board rule or decision that supports its
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`position.
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`Prior to the Director’s Decision, nothing suggested that MemoryWeb would
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`have to re-prove in this proceeding that Unified failed to name Samsung as an RPI.
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`Indeed, Samsung’s position here would require patent owners like MemoryWeb to
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`not only endure multiple PTAB proceedings addressing the same prior art and
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`validity by different challengers, but also to litigate multiple times the same RPI
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`issues in multiple proceedings. Such a result is highly inefficient and prejudicial to
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`patent owners. To the extent the Board considers Samsung’s waiver/forfeiture
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`arguments, good cause exists to consider MemoryWeb’s estoppel arguments now
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`given that the Board recognizes that there has not “been a circumstance like this
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`before” in the first instance, and subsequent intervening guidance from the Director.
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`EX3002, 49:7-20.
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`II.
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`FACTUAL BACKGROUND
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`MemoryWeb has defended three inter partes reviews filed by Unified, Apple,
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`Inc. (“Apple”), and Samsung. Paper 40 (“MemoryWeb Br.”), 1.
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`A. Unified’s IPR
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`Unified’s petition challenging the ‘228 patent identified Unified as the sole
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`RPI (hereinafter, “Unified”). MemoryWeb Br., 1; EX2038, 2. MemoryWeb
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`challenged Unified’s identification of itself as the sole RPI and obtained discovery
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`from Unified. MemoryWeb Br., 2.
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`On March 8, 2023, the Board found that Apple and Samsung should have been
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`identified as RPIs in Unified (“the RPI Order”). EX2038, 34; MemoryWeb Br. 2-3.
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`The Board entered a Final Written Decision in Unified on March 14, 2023 (the “the
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`Unified FWD”). EX2030, 3-5; MemoryWeb Br. 2-3.
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`The Director subsequently vacated the RPI Order (“the Director Decision”).
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`MemoryWeb Br., 3-4; EX2038.
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`B.
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`Samsung’s IPR
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`Samsung filed its petition challenging claims 1-19 of the ‘228 patent three
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`months after Unified’s petition was filed. See Petition. Both petitions rely on
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`Okamura (EX1005) as the primary reference in the proposed invalidity grounds.
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`1. MemoryWeb’s Preliminary Response
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`In its Preliminary Patent Owner Response, MemoryWeb argued, inter alia,
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`that the Board should exercise its discretion to deny institution in view of the
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`already-instituted Unified IPR pursuant to 35 U.S.C. § 314(a). Paper 8, 27. The
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`Institution Decision declined to deny institution under § 314(a), in part, because
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`Samsung was “not related to Unified Patents.” Paper 12, 11.
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`2. MemoryWeb’s Response and Sur-Reply
`MemoryWeb’s Patent Owner Response noted that MemoryWeb had “asked
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`the Board to determine that [Samsung] is an unnamed RPI” in Unified and that
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`“Samsung should be estopped from maintaining the present IPR challenge.” Paper
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`19, 64. MemoryWeb’s Sur-Reply reiterated the same. Paper 30, 33.
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`III. ARGUMENT
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`A.
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`Samsung’s “Gamesmanship” Accusations Are Baseless
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`Samsung claims that “MemoryWeb clearly sought to prevent Samsung due
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`process and spring a trap” by challenging Unified’s failure to name Samsung as RPI
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`in Unified. Paper 39, 2. This unfounded accusation is belied by the facts and the law.
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`Samsung cites no authority, prior to the Director Decision, dictating that
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`MemoryWeb should have raised Unified’s incorrect RPI identification in Unified in
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`this proceeding prior to issuance of the Unified FWD. Infra, §III.C.1.
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`Samsung will have a full and fair opportunity to respond to MemoryWeb’s
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`PO’s Response Brief on Alleged Forfeiture/Waiver
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`arguments and evidence regarding Samsung’s RPI status in Unified and estoppel if
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`the Board allows MemoryWeb proceed with limited discovery and its motion to
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`terminate. EX3004. Samsung cannot credibly claim that it would be deprived of due
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`process because it will have “notice and an opportunity to be heard by a disinterested
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`decision-maker.” Abbott Lab’ys v. Cordis Corp., 710 F.3d 1318, 1328 (Fed. Cir.
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`2013); see also Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015).
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`Samsung’s complaint that “MemoryWeb’s arguments and evidence in the
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`Unified IPR were cloaked by seal and could not even be reviewed by Samsung” is
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`disingenuous. Paper 39, 2. Samsung is fully aware of its business and financial
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`arrangements with Unified, including the terms and benefits of its membership
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`agreement. Samsung was also fully aware that MemoryWeb challenged Unified’s
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`failure to name Samsung as an RPI in Unified. To the extent certain evidence from
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`Unified was not accessible to Samsung, it was Unified—not MemoryWeb—that
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`sealed that evidence. MemoryWeb Br., 4-5. Far from engaging in “gamesmanship,”
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`MemoryWeb attempted to provide Samsung with access to the sealed RPI Order,
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`but Unified refused. EX2032, 1.
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`Samsung’s claim that MemoryWeb prejudiced Samsung by “frustrating the
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`efficiency and speed of IPR” and adding “unanticipated costs and delay” is also
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`disingenuous. Paper 39, 2-3. Samsung fails to explain how any perceived delay
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`actually prejudices it – especially as the Board has already found cause to extend the
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`statutory deadline to December 13, 2023 and any delay allows Samsung to maintain
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`the stay of the district court litigation. Paper 35. With respect to “unanticipated
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`costs,” Samsung’s claim that it “should not be the one paying the price by getting
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`embroiled in additional post-hearing discovery/briefing and being subject to
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`potential estoppel” is ironic because (i) had the Board addressed these issues in this
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`IPR as the Director now suggests it would have to expend the same resources; and
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`(ii) MemoryWeb has already paid the even heavier price of being embroiled in
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`multiple IPRs filed by related parties using the same primary reference to challenge
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`the ‘228 patent. Paper 39, 13; EX2038, 6.
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`In sum, Samsung chose to enter into a business relationship with Unified—an
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`entity whose core mission is to file IPRs—and was apparently content “to sit on the
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`sidelines” and let Unified handle the RPI issues until MemoryWeb achieved a result
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`that was unfavorable for Samsung and Unified. Paper 39, 3; EX2038. As detailed
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`below, none of MemoryWeb’s actions were inconsistent with applicable Board
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`precedent and certainly do not reflect any “gamesmanship.” Infra, §III.C.
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`B.
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`Samsung Misunderstands or Mischaracterizes the RPI Issue
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`Samsung appears to fundamentally misapprehend the dispute: MemoryWeb
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`has not argued that Samsung’s identification of itself and Samsung Electronics
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`America, Inc. as the sole RPIs in this proceeding is incorrect. Rather, MemoryWeb
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`argues that Samsung is estopped from maintaining this proceeding because Unified
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`resulted in a Final Written Decision and Samsung is an RPI in Unified. EX2038. The
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`fact that MemoryWeb did not challenge “the RPI identification as provided in this
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`proceeding by Samsung” has no bearing on whether Samsung is estopped from
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`maintaining this proceeding. Br. at 5-6.
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`C. MemoryWeb Did Not Forfeit or Waive the Relief Sought in its
`Contemplated Motion to Terminate
`Samsung has not established that MemoryWeb waived or forfeited its right to
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`seek at least partial termination of this IPR based on estoppel. Nothing in
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`MemoryWeb’s Patent Owner Response or Sur-Reply reflects an intentional
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`relinquishment or abandonment (i.e., waiver) of MemoryWeb’s right to seek
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`termination based on the Unified FWD and Samsung’s RPI status in Unified that is
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`a waiver. United States v. Olano, 507 U.S. 725, 733 (1993). Indeed, MemoryWeb’s
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`Response and Sur-Reply could not have intentionally relinquished or abandoned that
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`right because the right did not exist until the Unified FWD issued on March 14, 2023.
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`Supra, §II.A.
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`Similarly, forfeiture does not apply because MemoryWeb timely requested
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`authorization to seek relief based on the Unified FWD. United States v. Olano, 507
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`U.S. at 733 (1993) (forfeiture involves “the failure to make the timely assertion of a
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`right.”). Samsung has not identified any Board rule or decision suggesting that
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`MemoryWeb’s requested relief is a “late action.” And even if, arguendo,
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`MemoryWeb’s request is considered “late,” there is ample good cause to consider
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`the merits given the unprecedented facts of this case.
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`1. MemoryWeb’s Motion to Terminate is Not Untimely
`The Board rules provide that “[a] party should seek relief promptly after the
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`need for relief is identified.” 37 C.F.R. § 42.25(b). MemoryWeb did that. Estoppel
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`is triggered when a related proceeding—in this case, Unified—results in a final
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`written decision. MemoryWeb promptly sought to terminate this proceeding
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`pursuant to 35 U.S.C. § 315(e)(1) the day before the Board issued the Unified FWD.
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`EX2032. Samsung cannot credibly claim that MemoryWeb failed to promptly seek
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`termination of this proceeding upon issuance of the Unified FWD. 37 C.F.R. §
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`42.25(b).
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`Samsung has not articulated how MemoryWeb’s motion to terminate,
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`including the associated RPI arguments and limited discovery regarding the same,
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`is a “late action” under the Board’s rules. 37 C.F.R. § 42.5(c)(3). The Board “may
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`set times by order” and “[t]imes set by rule are default and may be modified by
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`order.” 37 C.F.R. § 42.5(c)(1). The scheduling order did not set a deadline for
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`moving to terminate based on estoppel. Paper 13.1 The Board’s rules do not
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`1 The scheduling order and the Board’s Trial Practice Guide merely provide that
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`expressly set a deadline for moving to terminate based on the estoppel flowing from
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`a petitioner’s RPI status in a different proceeding. See 37 C.F.R. § 42 et. seq.
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`Estoppel applies if three conditions are met: (1) the second IPR petitioner was
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`the petitioner or an RPI in the first IPR; (2) the grounds in the second IPR reasonably
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`could have been asserted in the first IPR; and (3) the first IPR results in a final written
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`decision. 37 U.S.C. § 315(e)(1). Samsung does not argue that MemoryWeb waived
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`or forfeited its arguments regarding the second and third conditions. Instead,
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`Samsung argues that MemoryWeb waived or forfeited its arguments regarding the
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`first condition because it did not previously introduce evidence and arguments from
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`Unified regarding Samsung’s RPI status. See Paper 39, 4-11.
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`As an initial matter, the protective order in Unified prevented MemoryWeb
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`from submitting much of the RPI evidence from Unified into evidence in this
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`proceeding. Paper 39, 4-5. But more to the point, the Final Written Decision in
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`Unified was a condition precedent to MemoryWeb’s estoppel argument. In other
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`words, for purposes of this proceeding, the issue of Samsung’s RPI status in Unified
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`only became ripe when the Unified FWD issued. If Unified did not result in a final
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`written decision, Samsung’s RPI status in Unified would be a moot point. Significant
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`party and Board resources may have been wasted litigating the RPI issue in this
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`“arguments not raised in the response may be deemed waived.” Paper 13, 9.
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`proceeding (which would have required third party subpoenas) if Unified did not
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`result in a final written decision. That is why the Board should find that
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`MemoryWeb’s Response did not waive or forfeit its RPI arguments. Instead, the
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`appropriate time to do so was when the Unified FWD issued.
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`The Director Decision instructs that “[t]he Board can and should make a
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`determination of the” RPIs “in any proceeding in which that determination may
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`impact the underlying proceeding.” EX2031, 5. Notably, the Director did not specify
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`when the Board should make that determination. Id. Where, as here, a “situation [is]
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`not specifically covered by” the Board’s rules, “[t]he Board may determine a proper
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`course of conduct.” 37 C.F.R. § 42.5(a). The Board should determine that the proper
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`course of conduct in this IPR is to allow MemoryWeb to proceed with limited
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`discovery and its motion to terminate. 37 C.F.R. § 42.5(a).
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`As the Board recognized the highly unique nature of the procedural history of
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`these matters, it is not surprising that the cases cited by Samsung do not support its
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`argument that MemoryWeb was obligated to challenge Unified’s identification of
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`RPIs in its Response in this proceeding. Paper 39, 6. In Unified Patents, LLC v.
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`Gesture Tech. Partners, LLC, the Board found issue with not challenging the RPI in
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`the first-filed IPR. IPR2021-00917, Paper 32, 5 (PTAB Dec. 16, 2022). Following
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`the same reasoning, MemoryWeb did just what the Board instructed patent owners
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`to do – MemoryWeb challenged Unified’s RPI identification in the first-filed IPR.
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`9
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`IPR2022-00222
`Patent No. 10,621,228
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`The other cases cited by Samsung are inapposite and do not concern RPI issues. In
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`PO’s Response Brief on Alleged Forfeiture/Waiver
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`Google LLC v. Uniloc 2017 LLC, the Board found that the patent owner waived a
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`patentability argument that was only raised in the preliminary response. IPR2020-
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`00447, Paper 24, 9-10 n.6 (PTAB May 11, 2021); see also In re Nuvasive, Inc., 842
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`F.3d 1376, 1380 (Fed. Cir. 2016) (same).
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`Samsung’s suggestion that it was deprived due process because the RPI Order
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`was entered without its participation has been rejected. In Kofax, Inc. v. Uniloc USA,
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`Inc. et al., the Board found that Zebra, who was not a party to the IPR, was an RPI.
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`IPR2015-01207, Paper 22 at 1-2, 11-12 (PTAB June 2, 2016). Zebra requested
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`rehearing and argued that it was not a party or an RPI to the earlier proceeding and
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`that—as Samsung argues in this case—it was “deprived . . . of its due process rights.”
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`Kofax, Inc. v. Uniloc USA, Inc. et al., IPR2015-01207, Paper 24 at 1, 4 (PTAB July
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`20, 2016). The Board rejected Zebra’s due process argument because there was “no
`
`authority for an alleged real party in interest (RPI) to be notified or permitted to
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`present any facts or arguments on this issue in the context of an RPI
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`determination.” Id. at 4-5 (internal quotation marks omitted). Kofax belies
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`Samsung’s due process arguments and further supports that litigating Samsung’s
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`RPI status in Unified was consistent with Board procedures prior to the Director
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`Decision.
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`In response to MemoryWeb’s suggestion that Samsung could have sought to
`
`10
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`
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`IPR2022-00222
`Patent No. 10,621,228
`
`participate in the RPI dispute in Unified, Samsung argues that doing so would have
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`PO’s Response Brief on Alleged Forfeiture/Waiver
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`
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`been an “extraordinary and unheard of step” that is not “remotely contemplated . . .
`
`in the Trial Practice Guide or elsewhere.” Paper 39, 10. A party joining and
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`participating in an IPR filed by another is hardly “unheard of.” Id. The Federal
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`Circuit has confirmed that 35 U.S.C. § 315(c) “permits the Director, at his or her
`
`discretion, to join any person as a party to an already-instituted IPR.” Facebook, Inc.
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`v. Windy City Innovations, LLC, 973 F.3d 1321, 1335 (Fed. Cir. 2020); see also 37
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`C.F.R. § 42.122(b). Samsung also could have sought consolidation of this IPR and
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`Unified. Id.; 35 U.S.C. § 315(d).
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`Finally, considering MemoryWeb’s estoppel arguments would not “flout[] the
`
`intent of Congress and the well-established Board practice of providing a compact
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`and speed proceeding.” Paper 39, 9. To the contrary, barring MemoryWeb’s estoppel
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`arguments and allowing multiple related parties to successively challenge the claims
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`of the ‘228 patent – while also requiring patent owners to re-litigate the same RPI
`
`issues in multiple proceedings – would flout the intent of Congress and the well-
`
`established Board practice of avoiding duplicative proceedings. See 35 U.S.C. §
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`315(e)(1); EX2038, 6.
`
`2.
`
`SharkNinja Does Not Support Samsung’s Forfeiture and
`Waiver Arguments
`Central to Samsung’s waiver and forfeiture arguments is its claim that
`
`11
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`
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`IPR2022-00222
`Patent No. 10,621,228
`
`MemoryWeb ignored “well-established precedent” holding that Unified “was the
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`PO’s Response Brief on Alleged Forfeiture/Waiver
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`
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`wrong proceeding to be challenging the RPI issue” because doing so conflicts with
`
`the Board’s precedential decision in SharkNinja Operating LLC v. iRobot Corp. Br.
`
`at 12. This argument mischaracterizes SharkNinja.
`
`In SharkNinja, the Board declined to address the patent owner’s RPI
`
`arguments at the institution stage, in part, because there was “no allegation or
`
`evidence that” the unnamed RPI was “barred or estopped” or “purposely omitted...
`
`to gain some advantage.” SharkNinja, IPR2020-00734, Paper 11 at 19 (PTAB Oct.
`
`6, 2019). The Board instituted the IPR because naming all RPIs was “a procedural
`
`requirement that can be corrected” and the petitioner “offered to update its
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`mandatory notices and identify” the unnamed RPI. Id. at 18. In other words,
`
`SharkNinja merely held that it “is unnecessary for purposes of rendering a decision
`
`on institution of trial” to decide whether the petitioner failed to identify all RPIs. Id.
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`at 19.
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`SharkNinja did not hold that the Board must decline to address the petitioner’s
`
`failure to identify all RPIs in the final written decision. While the Director Decision
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`cited SharkNinja, the Director Decision represents a significant expansion of the
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`reasoning in SharkNinja and constitutes new guidance or an intervening change in
`
`the law, which supplies good cause to excuse any untimeliness on MemoryWeb’s
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`part. Paper 40, 7-10. Samsung has not identified any authority (prior to the Director
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`12
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`
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`IPR2022-00222
`Patent No. 10,621,228
`
`Decision) holding that the RPI issue should be decided in a proceeding other than
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`PO’s Response Brief on Alleged Forfeiture/Waiver
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`
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`the one where the failure to name all RPIs occurred. Indeed, the Board has expressed
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`doubts as to whether “there’s been a circumstance like this before.” EX3002, 49:7-
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`20.
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`Samsung mischaracterizes the Institution Decision in Unified in arguing that
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`“MemoryWeb decided to... pursue the RPI issue in the Unified IPR despite the Board
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`having clearly explained, in the institution decision, why the RPI issue need not be
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`decided in that proceeding.” Paper 39, 8. The Unified Institution Decision merely
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`explained that “an RPI analysis is not required at institution” – it did not indicate
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`that the Board would not perform an RPI analysis in its final written decision.
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`Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413, Paper 15 at 13-14
`
`(PTAB Mar. 14, 2022). Samsung’s mischaracterization of the Unified Institution
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`Decision is also belied by the RPI Order, where the Board discussed SharkNinja yet
`
`decided the RPI issue. EX2038, 3, 5-6. The Board’s RPI Order refutes Samsung’s
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`spurious claim that MemoryWeb “ignore[d] clear PTAB precedent.” Paper 39, 13.
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`What is more, if SharkNina was such “clear” precedent, then Unified surely would
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`have cited it in Unified. Id. But Unified did not; it litigated the merits of
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`MemoryWeb’s arguments about Samsung’s RPI status in Unified and lost. EX2038.
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`13
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`PO’s Response Brief on Alleged Forfeiture/Waiver
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`
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`IPR2022-00222
`Patent No. 10,621,228
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`D. To the Extent Necessary, Good Cause Exists to Proceed with
`Limited Discovery and MemoryWeb’s Motion to Terminate
`Even if, arguendo, the Board considers MemoryWeb’s requested relief to be
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`a “late action,” good cause exists to excuse any untimeliness. MemoryWeb Br., 12-
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`15; 37 C.F.R. § 42.5(c)(3). As discussed herein and in the Opening Brief, it was
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`reasonable and appropriate for MemoryWeb to litigate Samsung’s RPI status in
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`Unified rather than this proceeding. MemoryWeb Br., 7-11; infra, §§III.A, III.C. The
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`Director Decision addressed a situation the Board had yet to address and constitutes
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`new guidance or an intervening change in the law, which in turn supplies good cause.
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`Microsoft, Paper 8 at 3.
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`Samsung acknowledges that the Board has discretion to consider arguments
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`it considers to be untimely. Samsung Opening Br (Paper 39), 14 (citing Apple Inc.
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`v. MPH Techs. Oy, No. 2021-1355, 2022 WL 4103286 (Fed. Cir. Sept. 8, 2022)).
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`The only reason Samsung provides for not exercising that discretion is that
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`MemoryWeb “repeatedly ignored the Board’s guidance and PTAB precedent” to
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`find itself in “an unnecessary procedural quagmire.” Paper 39, 14-15. But tellingly,
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`Samsung cannot identify any “Board[] guidance and PTAB precedent” prior to the
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`Director Decision suggesting that MemoryWeb was required to submit arguments
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`and evidence regarding Samsung’s RPI status in Unified in this proceeding prior to
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`the Unified FWD. Id.; supra, §§III.A, III.C.
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`14
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`
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`IPR2022-00222
`Patent No. 10,621,228
`
`MemoryWeb has been forced “to unnecessarily defend against two
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`PO’s Response Brief on Alleged Forfeiture/Waiver
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`subsequent IPR challenges filed by Apple and Samsung.” EX2038, 6; AIT I, 897
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`F.3d at 1350.
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`And
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`tellingly, Samsung’s view of PTAB procedure would require
`
`MemoryWeb to further litigate the same RPI issue in multiple proceedings –
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`especially where Samsung was aware of the issue and chose to allow the Unified
`
`Board to fully address before determining the result was not to its liking.
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`MemoryWeb expended significant time and resources proving that Samsung
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`should have named as an RPI in Unified. It would be manifestly unfair if
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`MemoryWeb were deprived of an opportunity to present arguments and evidence as
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`to Samsung’s RPI status and why it is estopped from maintaining this proceeding
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`because the Director Decision issued new guidance or an intervening change in law.
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`As set forth in the Opening Brief, it is in the interests of justice for the Board
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`to consider evidence regarding Samsung’s RPI status in Unified in this proceeding.
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`Paper 40, 12-15. When the “evidence is reasonably viewed as material, and the
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`opponent has adequate
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