Trials@uspto.gov
`571-272-7822
`
`
`Paper: 44
` Date: August 22, 2023
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`MEMORYWEB, LLC,
`Patent Owner.
`____________
`
`IPR2022-00222
`Patent 10,621,228 B2
`____________
`
`
`Before LYNNE H. BROWNE, NORMAN H. BEAMER, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`PER CURIAM.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`571-272-7822
`
`
`Paper: 44
` Date: August 22, 2023
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`MEMORYWEB, LLC,
`Patent Owner.
`____________
`
`IPR2022-00222
`Patent 10,621,228 B2
`____________
`
`
`Before LYNNE H. BROWNE, NORMAN H. BEAMER, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`PER CURIAM.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2022-00222
`Patent 10,621,228 B2
`
`Petitioner, Samsung Electronics Co., Ltd. (“Samsung” or
`“Petitioner”), filed a petition requesting inter partes review of claims 1–19
`of U.S. Patent No. 10,621,228 B2 (“the ’228 patent”). Paper 2. On June 13,
`2022, the Board instituted trial. Paper 12.
`In a related proceeding challenging claims 1–7 of the ’228 patent,
`Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413 (the “Unified
`proceeding”), the Board entered an Order (Paper 56 (confidential)) on March
`8, 2023, identifying Samsung as an unnamed Real Party in Interest (“RPI”),
`and on March 14, 2023, entered a Final Written Decision (Paper 58
`(confidential)) finding claims 1–7 unpatentable.
`Patent Owner, MemoryWeb, LLC (“MemoryWeb” or “Patent
`Owner”) seeks leave to file a motion to terminate this proceeding in view of
`the Board’s Final Written Decision in the Unified proceeding. Ex. 3001, 1.
`Samsung opposes Patent Owner’s request, and asserts that MemoryWeb has
`waived the RPI and estoppel issues in this proceeding. See id. at 2–3.
`On May 22, 2023, the Director issued a public version1 of a Decision
`Granting Director Review (Paper 76, “Director’s Decision”) in the Unified
`proceeding, vacating-in-part the Final Written Decision (Section I.B) (Paper
`58 (confidential) and Paper 67 (public)) and the Board’s Order identifying
`Samsung as an RPI (Paper 56 (confidential)) in that proceeding.
`On June 1, 2023, the Board issued an Order directing the parties to
`confer and submit a proposed joint briefing schedule and discovery plan to
`
`
`1 On May 16, 2023, a confidential version of the Director’s Decision
`Granting Director Review (Paper 74) was issued, but made available only to
`the parties and the Board.
`
`2
`
`
`
`IPR2022-00222
`Patent 10,621,228 B2
`
`address the RPI, estoppel, and waiver issues. Paper 37. The parties submitted
`their joint proposal to the Board by email on June 9, 2023. Ex. 3005.
`On June 15, 2023, the Board entered an Order setting a briefing
`schedule for the parties to file briefs addressing the topics set forth in Exhibit
`3005, First Phase. Paper 38.
`After considering the parties’ arguments in their briefs, we determine
`that good cause exists to grant Patent Owner’s request for discovery on the
`RPI issue in this case. The reasons for this determination include, but are
`not limited to, the nature of the issues in this case, the procedural history of
`this case, the Director’s Decision, vacating-in-part the Final Written
`Decision and the Board’s Order identifying Samsung as an RPI in the
`Unified proceeding, the statement in the Director’s Decision that “[t]he
`Board can and should make a determination of the real parties in interest or
`privity in any proceeding in which that determination may impact the
`underlying proceeding, for example, but not limited to, a time bar under 35
`U.S.C. § 315(b) or an estoppel under 35 U.S.C. § 315(e) that might apply,”
`and the grant of a good cause extension of time in this proceeding by the
`Chief Administrative Patent Judge to allow time for additional discovery and
`to consider a motion to dismiss this proceeding prior to issuing a Final
`Written Decision.
`Moreover, given that a determination of the real parties in interest
`issue may impact this proceeding pursuant to at least 35 U.S.C. § 315(e), it
`is hereby ORDERED that
`
`3
`
`
`
`IPR2022-00222
`Patent 10,621,228 B2
`
`(1) by September 18, 2023 (Due Date 3)2, MemoryWeb will file as
`exhibits in this proceeding the non-confidential exhibits filed in the
`Unified proceeding (IPR2021-01413) relevant to the RPI issue.
`Samsung will produce to MemoryWeb responsive non-privileged
`documents as follows: (i) all communications with Unified Patents
`relating to MemoryWeb, the ’228 patent, the Unified proceeding,
`or this IPR (IPR2022-00222); and (ii) all agreements or contracts
`between Samsung and Unified Patents, including Samsung’s
`membership agreement and any amendments or add-ons.
`Samsung may provide a declaration from a witness familiar with
`the documents it is producing. MemoryWeb is allowed a 4-hour
`deposition of that witness.
`If a deposition of a Unified Patents’ witness is conducted,
`Samsung shall be entitled to participate and examine the witness
`after MemoryWeb has completed its examination.
`The parties will negotiate with Unified Patents in good faith
`regarding the production of documents, deposition scheduling and
`scope.
`Any deposition of a witness shall be conducted on a date
`acceptable to the parties and the witness, notwithstanding Due
`Date 3.
`(2) by September 29, 2023 (Due Date 4), MemoryWeb may file a
`Motion to Terminate (“Motion”) of up to 7000 words.
`MemoryWeb’s Motion may address at least: (1) estoppel under 35
`
`
`2 See Exhibit 3005 for parties’ proposed discovery schedule.
`
`4
`
`
`
`IPR2022-00222
`Patent 10,621,228 B2
`
`
`U.S.C. § 315(e)(1) as to claims 1–7, including addressing
`Samsung’s RPI status in the Unified proceeding, and (2)
`discretionary estoppel based on at least 35 U.S.C. § 315(d), 37
`CFR § 42.72, and 37 CFR § 42.5 as to claims 8–19.
`(3) by October 13, 2023 (Due Date 5), Samsung may file a response
`to MemoryWeb’s Motion of up to 7,000 words.
`If Samsung submits a declaration after Due Date 4, Samsung will
`make the declarant available for a deposition within 7 days of Due
`Date 5. MemoryWeb may file a Motion for Observations on the
`cross examination of the witness (not to exceed 1,000 words)
`within 7 days of the deposition.
`(4) by October 27, 2023 (Due Date 6), MemoryWeb may file a reply
`to Samsung’s response brief not to exceed 3,500 words. Each
`party may also file a Motion to Exclude.
`(5) by November 3, 2023 (Due Date 7), each party may file an
`opposition to the other party’s Motion to Exclude (if any).
`(6) an Oral Hearing on the subject matter addressed by the parties’
`briefing and any attendant motions shall be held by video-
`conference on November 13, 2023 (Due Date 8), at 1:00 pm
`Eastern time. Each party shall have 1 hour (60 minutes) to
`address the relevant issues and may reserve an appropriate amount
`of time for rebuttal.
`
`
`
`
`
`
`5
`
`
`
`IPR2022-00222
`Patent 10,621,228 B2
`
`
`
`FOR PETITIONER:
`
`W. Karl Renner
`Jeremy Monaldo
`Hyun Jin In
`FISH & RICHARDSON P.C.
`Axf-ptab@fr.com
`jjm@fr.com
`in@fr.com
`
`
`
`FOR PATENT OWNER:
`
`Jennifer Hayes
`George Dandalides
`NIXON PEABODY LLP
`jenhayes@nixonpeabody.com
`gdandalides@nixonpeabody.com
`
`
`
`
`
`
`
`
`6
`
`
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