IPR2022-00031
`Patent No. 10,621,228
`
`
`Paper No.
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`
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC.
`Petitioner
`
`
`v.
`
`MEMORYWEB, LLC
`Patent Owner
`
`Patent No. 10,621,228
`
`Inter Partes Review No. IPR2022-00031
`
`
`PATENT OWNER’S UNOPPOSED MOTION FOR ENTRY OF
`PROTECTIVE ORDER
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`MemoryWeb Ex. 2040
`Samsung v. MemoryWeb - IPR 2022-00222
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`Patent No. 10,621,228
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`Paper No.
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`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC.
`Petitioner
`
`
`v.
`
`MEMORYWEB, LLC
`Patent Owner
`
`Patent No. 10,621,228
`
`Inter Partes Review No. IPR2022-00031
`
`
`PATENT OWNER’S UNOPPOSED MOTION FOR ENTRY OF
`PROTECTIVE ORDER
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`MemoryWeb Ex. 2040
`Samsung v. MemoryWeb - IPR 2022-00222
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`IPR2022-00031
`Patent No. 10,621,228
`
`
`Exhibit
`No.
`
`LISTING OF EXHIBITS
`
`Description
`
`2001
`
`WITHDRAWN
`
`Hyunmo Kang et al., Capture, Annotated, Browse, Find, Share:
`Novel Interfaces for Personal Photo Management, International
`Journal of Human-Computer Interaction, 23(3), 315-37 (2007)
`(“Kang”)
`
`Jaffe et al., Generating Summaries and Visualization for Large
`Collections of Geo-Referenced Photographs, Proceedings of the
`8th ACM SIGMM International Workshop on Multimedia
`Information Retrieval, MIR 2006, October 26-27, 2006 (“Jaffe”)
`
`Allan Hoffman, Create Great iPhone Photos: Apps, Tips, Tricks,
`and Effects, No Starch Press, Inc. (Copyright 2011)
`
`U.S. Patent Publication No. 2010/0171763 (“Bhatt”)
`
`Feb. 8, 2022 eBay Order Confirmation for “Apple Aperture 3
`Upgrade for Mac Brand New Photography”
`
`Apple Inc. Aperture Software License Agreement
`
`Declaration of John Leone, Cisco Systems, Inc. v. Centripetal
`Networks, Inc., IPR2018-01436, EX1005 (July 20, 2018)
`
`Aperture 3 User Manual,
`http://documentation.apple.com/aperture/usermanual (Archive.org:
`July 26, 2010)
`
`Aperture 3 User Manual,
`http://documentation.apple.com/aperture/usermanual (Archive.org:
`Feb. 17, 2010)
`
`
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`
`
`MemoryWeb Ex. 2040
`Samsung v. MemoryWeb - IPR 2022-00222
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`
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`IPR2022-00031
`Patent No. 10,621,228
`
`
`Exhibit
`No.
`
`Description
`
`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`2020
`
`2021
`
`2022
`
`2023
`
`2024
`
`2025
`
`
`
`RESERVED
`
`RESERVED
`
`Apple, Inc., www.apple.com, (Archive.org: Mar. 12, 2010)
`
`Devin Coldewey, Review: Aperture 3, CrunchGear
`(https://techcrunch.com/2010/03/19/review-aperture-3/) (last
`accessed Feb. 2, 2022)
`
`Hilary Greenbaum, Who Made Google’s Map Pin?, The New York
`Times, (Apr. 18, 2011)
`
`Google Developers, Customizing a Google Map: Custom Markers
`(last accessed Feb. 17, 2022)
`
`KML4Earth, Google Earth/Maps Public Icons,
`http://kml4earth.appspot.com:80/icons.html (Archive.org May 27,
`2012)
`
`Declaration of Angelo J. Christopher
`
`RESERVED
`
`RESERVED
`
`Apple, Inc., “Apple Human Interface Guidelines” (Aug. 20, 2009)
`
`Wilbert O. Galitz, “The Essential Guide to User Interface Design:
`An Introduction to GUI Design Principles and Techniques,” Wiley
`Publishing, Inc. (3rd Ed.) (2007)
`
`Transcript of Deposition of Dr. Loren Terveen (Vol. I)
`
`Transcript of Deposition of Dr. Loren Terveen (Vol. II)
`
`Declaration of Rajeev Surati, Ph.D
`
`
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`MemoryWeb Ex. 2040
`Samsung v. MemoryWeb - IPR 2022-00222
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`IPR2022-00031
`Patent No. 10,621,228
`
`
`Exhibit
`No.
`
`Description
`
`2026
`
`2027
`
`2028
`
`2029
`
`2030
`
`2031
`
`2032
`
`2033
`
`2034
`
`2035
`
`2036
`
`2037
`
`2038
`
`2039
`
`2040
`
`2041
`
`2042
`
`
`
`Transcript of Deposition of Matthew Birdsell
`
`Affidavit of Nathaniel E Frank-White
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`eBay Receipt (August 15, 2022)
`
`Jennifer Tidwell, Designing Interfaces, O’Reilly (1st Ed. 2005)
`
`RESERVED
`
`Patent Owner’s Demonstrative Exhibit
`
`Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413,
`Petitioner’s Updated Mandatory Notices (Paper 57)
`
`Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413, Final
`Written Decision (Public Version) (Paper 67)
`
`Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413,
`Decision Granting Director Review (Public Version) (Paper 76)
`
`Email from Counsel for Patent Owner to Counsel for Petitioner
`Regarding MemoryWeb’s Motion to Terminate (Mar. 14, 2023)
`
`Email Chain between Counsel for Patent Owner and Counsel for
`Petitioner (Jun. 2-8, 2023)
`
`Unified Patents Document Subpoena, Attachment A
`
`Unified Patents Testimony Subpoena, Attachment A
`
`
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`MemoryWeb Ex. 2040
`Samsung v. MemoryWeb - IPR 2022-00222
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`
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`IPR2022-00031
`Patent No. 10,621,228
`
`
`Exhibit
`No.
`
`Description
`
`2043
`
`2044
`
`2045
`
`2046
`
`2047
`
`Apple Document Production Requests, Attachment A
`
`Declaration of Jennifer Hayes
`
`Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413, Order
`Identifying Real Party in Interest (Public Version) (Paper 79)
`
`Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413,
`Petitioner’s Motion to Seal and For Entry of Protective Order
`(Paper 10)
`
`Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413, Order
`Entering Protective Order (Paper 26)
`
`
`
`
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`MemoryWeb Ex. 2040
`Samsung v. MemoryWeb - IPR 2022-00222
`
`
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`IPR2022-00031
`Patent No. 10,621,228
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`
`Patent Owner MemoryWeb, LLC (“MemoryWeb” or “Patent Owner”) hereby
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`moves for entry of the Protective Order appended below as Appendix A. Patent
`
`Owner has conferred with Petitioner via email. Petitioner does not oppose entry of
`
`the proposed Protective Order.
`
`I.
`
`Background
`
`On August 11, 2023, the Board issued Paper 50 granting leave for Patent
`
`Owner to conduct additional discovery and setting forth a schedule for briefing and
`
`hearings on Real Party in Interest (“RPI”), estoppel and termination issues in
`
`relation to Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413 (the “Unified
`
`proceeding”). Patent Owner, Petitioner and Unified have conferred regarding
`
`discovery matters and agreed that entry of the proposed protective order is warranted
`
`in view of the confidential nature of discovery likely to be produced.
`
`II. Discussion
`
`Good cause exists to enter the proposed Protective Order. The proposed
`
`Protective Order is similar to the protective order the Board entered in the Unified
`
`Proceeding to address Unified’s concerns over the handling of documents and
`
`testimony containing Unified’s confidential business information relating to
`
`Unified’s members and business operations. See, Ex. 2046 (Motion for Entry of
`
`Protective Order in Unified Proceeding); Ex. 2047 (order granting motion in Unified
`
`Proceeding). Patent Owner seeks discovery of similar Unified materials in the
`1
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`MemoryWeb Ex. 2040
`Samsung v. MemoryWeb - IPR 2022-00222
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`IPR2022-00031
`Patent No. 10,621,228
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`present proceeding. The proposed Protective order will also govern the handling of
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`confidential materials produced by Petitioner.
`
`The proposed Protective Order differs from the Board’s Default Protective
`
`Order in Appendix B of the Patent Trial and Appeal Consolidated Trial Practice
`
`Guide, November 2019 (“TPG”) in that the proposed Protective Order includes a
`
`“HIGHLY CONFIDENTIAL – ATTORNEY’S EYES ONLY” designation at
`
`Unified and Apple’s request. Additionally, the proposed Protective Order identifies
`
`the persons to which access to confidential information is limited and clarifies the
`
`treatment of confidential materials unless the Board determines that information
`
`does not qualify for confidential treatment. Per Unified and Apple’s request, these
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`changes are designed to limit access to certain materials by each party’s
`
`representatives and in-house counsel. The Board determined that the differences in
`
`the proposed Protective Order differed from the Board’s Default Protective Order in
`
`the Unified proceeding address the parties’ obligations and do not limit the Board’s
`
`authority in this proceeding. Ex. 2047, p. 4. The only differences between the
`
`Proposed Protective Order and the Protective Order in the Unified proceeding is that
`
`it imposes further restrictions on the parties and do not limit Board’s authority in this
`
`proceeding.
`
`Accordingly, good cause exists for granting this unopposed motion and entry
`
`of the proposed Protective Order.
`
`2
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`MemoryWeb Ex. 2040
`Samsung v. MemoryWeb - IPR 2022-00222
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`
`
`IPR2022-00031
`Patent No. 10,621,228
`
`
`
`
`Respectfully submitted,
`
`Dated: August 18, 2023
`
`
`
`By:
`
`
`
`
`
`/Jennifer Hayes/
`Jennifer Hayes
`Reg. No. 50,845
`Nixon Peabody LLP
`300 South Grand Avenue,
`Suite 4100,
`Los Angeles, CA 90071-3151
`Tel. 213-629-6179
`Fax 866-781-9391
`
`3
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`MemoryWeb Ex. 2040
`Samsung v. MemoryWeb - IPR 2022-00222
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`IPR2022-00031
`Patent No. 10,621,228
`
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing Patent Owner’s
`
`Motion for Entry of Protective Order was served on August 18, 2023, upon the
`
`following parties via electronic service:
`
`Jeffrey P. Kushan
`Thomas A. Broughan, III
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`jkushan@sidley.com
`tbroughan@sidley.com
`SidleyAppleMemoryWebIPRs@sidley.com
`
`J. Steven Baughman
`Groombridge, Wu, Baughman & Stone LLP
`801 17th Street, NW, Suite 1050
`Washington, DC 20006
`Steve.baughman@groombridgewu.com
`
`Counsel for Petitioner, Apple Inc.
`
`
`
`
`
`
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`
`
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`
`
`
`
`
`
`/s/ Jennifer Hayes
`By:
`Lead Counsel for Patent Owner
`
`
`
`
`4
`
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`MemoryWeb Ex. 2040
`Samsung v. MemoryWeb - IPR 2022-00222
`
`
`
`APPENDIX A
`
`MemoryWeb Ex. 2040
`Samsung v. MemoryWeb - IPR 2022-00222
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC.
`Petitioner
`
`v.
`
`MEMORYWEB, LLC
`Patent Owner
`
`Patent No. 10,621,228
`
`
`
`
`
`
`
`Inter Partes Review No. IPR2022-00031
`
`
`
`PROTECTIVE ORDER
`
`MemoryWeb Ex. 2040
`Samsung v. MemoryWeb - IPR 2022-00222
`
`
`
`IPR2022-00031
`U.S. Patent No. 10,621,228
`The following Protective Order will govern the filing and treatment of
`
`confidential information in the proceeding:
`
`Protective Order
`
`This protective order governs the treatment and filing of confidential
`
`information, including documents and testimony.
`
`1. Confidential information shall be clearly marked “CONFIDENTIAL –
`
`PROTECTIVE ORDER MATERIAL” or “HIGHLY CONFIDENTIAL –
`
`ATTORNEYS’ EYES ONLY.”
`
`2. Access to confidential information marked “HIGHLY CONFIDENTIAL
`
`– ATTORNEYS’ EYES ONLY” is limited to the following individuals who have
`
`executed the acknowledgement appended to this order:
`
`(A) Outside counsel. Outside counsel of record for a party in the proceeding,
`
`including employees of outside counsel of record’s law firm(s) to whom it is
`
`reasonably necessary to disclose this information to assist outside counsel of
`
`record in connection with this proceeding, including members of their firms,
`
`associate attorneys, paralegal, clerical, and other regular employees of such
`
`counsel. All in-house counsel and other representatives of the parties (other
`
`than outside counsel of record) shall not be allowed to view HIGHLY
`
`CONFIDENTIAL – ATTORNEYS’ EYES ONLY Information.
`
`
`
`1
`
`MemoryWeb Ex. 2040
`Samsung v. MemoryWeb - IPR 2022-00222
`
`
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`IPR2022-00031
`U.S. Patent No. 10,621,228
`(B) Experts. Retained experts of a party in the proceeding who further certify
`
`in the Acknowledgement that they are not a competitor to any party, or a
`
`consultant for, or employed by, such a competitor with respect to the subject
`
`matter of the proceeding.
`
`(C) The Office. Employees and representatives of the United States Patent and
`
`Trademark Office who have a need for access to the confidential information
`
`shall have such access without the requirement to sign an Acknowledgement.
`
`Such employees and representatives shall include the Director, members of the
`
`Board and their clerical staff, other support personnel, court reporters, and other
`
`persons acting on behalf of the Office.
`
`(D) Support Personnel. Administrative assistants, clerical staff, court reporters
`
`and other support personnel of the foregoing persons who are reasonably
`
`necessary to assist those persons in the proceeding shall not be required to
`
`sign an Acknowledgement, but shall be informed of the terms and
`
`requirements of the Protective Order by the person they are supporting who
`
`receives confidential information.
`
`3. Access
`
`to confidential
`
`information marked “CONFIDENTIAL –
`
`PROTECTIVE ORDER MATERIAL” is limited to the following individuals who
`
`have executed the acknowledgment appended to this order:
`
`
`
`2
`
`MemoryWeb Ex. 2040
`Samsung v. MemoryWeb - IPR 2022-00222
`
`
`
`IPR2022-00031
`U.S. Patent No. 10,621,228
`(A) Above Personnel. Those persons or entities identified in paragraph 2 of
`
`this Protective Order under the conditions set forth in that paragraph.
`
`(B) Parties. Persons who are owners of a patent involved in the proceeding
`
`and other persons who are named parties to the proceeding.
`
`(C) In-house counsel. In-house counsel of a party; provided, however, that no
`
`more than three such in-house counsel shall be afforded access to confidential
`
`information.
`
`5. Persons receiving confidential
`
`information (including
`
`information
`
`designated “Highly Confidential – Attorneys’ Eyes Only”) shall use reasonable
`
`efforts to maintain the confidentiality of such information, including:
`
`(A) Maintaining such information in a secure location to which persons not
`
`authorized to receive the information shall not have access;
`
`
`
`3
`
`MemoryWeb Ex. 2040
`Samsung v. MemoryWeb - IPR 2022-00222
`
`
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`IPR2022-00031
`U.S. Patent No. 10,621,228
`Otherwise using reasonable efforts to maintain the confidentiality of the
`
`(B)
`
`information, which efforts shall be no less rigorous than those the recipient uses to
`
`maintain the confidentiality of information not received from the disclosing party;
`
`(C)
`
`Ensuring that support personnel of the recipient who have access to the
`
`confidential information understand and abide by the obligation to maintain the
`
`confidentiality of information received that is designated as confidential; and
`
`(D)
`
`Limiting the copying of confidential information to a reasonable number
`
`of copies needed for conduct of the proceeding and maintaining a record of the
`
`locations of such copies.
`
`6. Persons receiving confidential information shall use the following
`
`procedures to maintain the confidentiality of the information:
`
`(A) Documents and Information Filed With the Board.
`
`(i) A party may file documents or information with the Board along
`
`with a Motion to Seal. The Motion to Seal should provide a non-
`
`confidential description of the nature of the confidential information
`
`that is under seal, and set forth the reasons why the information is
`
`confidential and should not be made available to the public. A party
`
`may challenge the confidentiality of the information by opposing the
`
`Motion to Seal. The submission shall be treated as confidential and
`
`remain under seal, unless the Board determines that the documents or
`
`
`
`4
`
`MemoryWeb Ex. 2040
`Samsung v. MemoryWeb - IPR 2022-00222
`
`
`
`IPR2022-00031
`U.S. Patent No. 10,621,228
`information do not to qualify for confidential treatment. The
`
`information shall remain under seal unless the Board determines that
`
`some or all of the information does not qualify for confidential
`
`treatment.
`
`(ii) Where confidentiality is alleged as to some but not all of the
`
`information submitted to the Board, the submitting party shall file
`
`confidential and non-confidential versions of its submission, together
`
`with a Motion to Seal the confidential version setting forth the reasons
`
`why the information redacted from the non-confidential version is
`
`confidential and should not be made available to the public. A party may
`
`challenge the confidentiality of the information by opposing the Motion
`
`to Seal. The non-confidential version of the submission shall clearly
`
`indicate the locations of information that has been redacted. The
`
`confidential version of the submission shall be filed under seal. The
`
`redacted information shall remain under seal unless the Board
`
`determines that some or all of the redacted information does not qualify
`
`for confidential treatment.
`
`(B) Documents and Information Exchanged Among the Parties. Documents
`
`(including deposition transcripts) and other information designated as
`
`confidential that are disclosed to another party during discovery or other
`
`
`
`5
`
`MemoryWeb Ex. 2040
`Samsung v. MemoryWeb - IPR 2022-00222
`
`
`
`IPR2022-00031
`U.S. Patent No. 10,621,228
`proceedings before the Board shall be clearly marked as “CONFIDENTIAL
`
`– PROTECTIVE ORDER MATERIAL” or “HIGHLY CONFIDENTIAL –
`
`ATTORNEYS’ EYES ONLY” and shall be produced in a manner that
`
`maintains its confidentiality.
`
`7. Within 60 days after the final disposition of this action, including the
`
`exhaustion of all appeals and motions, each party receiving confidential information
`
`must return, or certify the destruction of, all copies of the confidential information
`
`to the producing party.
`
`
`
`6
`
`MemoryWeb Ex. 2040
`Samsung v. MemoryWeb - IPR 2022-00222
`
`
`
`IPR2022-00031
`U.S. Patent No. 10,621,228
`
`EXHIBIT A
`
`APPLE INC. v. MEMORY WEB, LLC
`Case No. IPR20222-00031
`U.S. Patent 10,621,228
`
`Standard Acknowledgment for Access to Protective Order Material
`
`I _________________________________________ , affirm that I have read
`
`the Protective Order; that I will abide by its terms; that I will use the confidential
`
`information only in connection with this proceeding and for no other purpose; that I
`
`will only allow access to support staff who are reasonably necessary to assist me in
`
`this proceeding; that prior to any disclosure to such support staff I informed or will
`
`inform them of the requirements of the Protective Order; that I am personally
`
`responsible for the requirements of the terms of the Protective Order and I agree to
`
`submit to the jurisdiction of the Office and the United States District Court for the
`
`Eastern District of Virginia for purposes of enforcing the terms of the Protective
`
`Order and providing remedies for its breach.
`
`Executed on ____________________ , 20__.
`
`
`
`1
`
`MemoryWeb Ex. 2040
`Samsung v. MemoryWeb - IPR 2022-00222
`
`
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