IPR2022-00222
`Patent No. 10,621,228
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`Paper No.
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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 UNOPPOSED MOTION FOR ENTRY OF
`PROTECTIVE ORDER
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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
`
`SAMSUNG ELECTRONICS CO., LTD.
`Petitioner
`
`
`v.
`
`MEMORYWEB, LLC
`Patent Owner
`
`Patent No. 10,621,228
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`Inter Partes Review No. IPR2022-00222
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`PATENT OWNER’S UNOPPOSED MOTION FOR ENTRY OF
`PROTECTIVE ORDER
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`IPR2022-00222
`Patent No. 10,621,228
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`Exhibit
`No.
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`2001 WITHDRAWN
`
`LISTING OF EXHIBITS
`
`Description
`
`2002
`
`Japanese Unexamined Patent Application Publication No. 2001-
`160058 and Certified English Translation (“Fujiwara”)
`
`2003 Withdrawn
`
`2004
`
`U.S. Patent No. 6,714,215 (“Flora”)
`
`2005
`
`Supplemental Declaration of Kevin Jakel, Unified Patents, LLC v.
`MemoryWeb, LLC, IPR2021-01413 (Dec. 30, 2021) (redacted version)
`
`2006
`
`3 Questions for Unified Patents CEO Post-Oil States (Part II)
`
`2007
`
`2008
`
`2009
`
`Petition for Inter Partes Review, Apple Inc. v. MemoryWeb, LLC,
`IPR2022-00031, Paper 1 (PTAB Oct. 30, 2021)
`
`Brief of Amicus Curiae Unified Patents Inc. in Cuozzo Speed
`Technologies, LLC v. Michelle K. Lee et al.
`
`Unified Patents September 3, 2021 Press Release regarding
`MemoryWeb IPR
`
`2010
`
`Unified Patents September 9, 2021 email regarding MemoryWeb IPR
`
`Unified Patents’ website link (FAQs)
`(https://www.unifiedpatents.com/faq)
`
`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)
`
`Amended Complaint, MemoryWeb, LLC v. Samsung Electronics Co.,
`Ltd. and Samsung Electronics America, Inc., Case No. 21-cv-411
`
`
`
`2011
`
`2012
`
`2013
`
`
`
`
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`IPR2022-00222
`Patent No. 10,621,228
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`
`Exhibit
`No.
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`Description
`
`(W.D. Tex.) (Nov. 24, 2021)
`
`2014
`
`2015
`
`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)
`
`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)
`
`2016
`
`MV3 Partners LLC v. Roku Inc., 6:18-cv-00308, (W.D. Texas) D.I. 83
`
`2017
`
`2018
`
`IAM, “The last thing anyone should think about WDTX is that it is
`patent plaintiff friendly, says Albright” (Apr. 7, 2020)
`
`Pages from The Way Back Machine The Wayback Machine-
`https://web.archive.org/web/20000510141416/http://www.photo.net:80
`
`2019
`
`Cluster Map, Thumbnail, First Combination Comparison
`
`Japanese Unexamined Patent Application Publication No. 2007-
`323544 and Certified English Translation (“Takakura”)
`
`Patent Owner Response, Unified Patents, LLC v. MemoryWeb, LLC,
`IPR2021-01413, Paper 30 (Redacted Version)
`
`Transcript of the deposition of Dr. Philip Greenspun dated August 26,
`2022
`
`Declaration of Professor Glenn Reinman, Ph.D.
`
`Corrected Patent Owner’s Response
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`Transcript of the deposition of Dr. Philip Greenspun dated, January 19,
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`
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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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`IPR2022-00222
`Patent No. 10,621,228
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`
`Exhibit
`No.
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`2023
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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
`
`2031
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`2032
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`2033
`
`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
`
`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)
`
`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 Chain between Counsel for Patent Owner and Counsel for
`Petitioner (Mar. 13-15, 2023)
`
`Unified Patents Document Subpoena
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`Unified Patents Testimony Subpoena
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`Samsung Document Production Requests
`
`Email Chain between Counsel for Patent Owner and Counsel for
`Petitioner (June 5-9, 2023)
`
`2037
`
`Declaration of Jennifer Hayes
`
`Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413, Order
`Identifying Real Party in Interest (Public Version) (Paper 79)
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`Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413, Order
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`
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`2038
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`2039
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`IPR2022-00222
`Patent No. 10,621,228
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`
`Exhibit
`No.
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`Description
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`Entering Protective Order (Paper 26)
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`2040
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`2041
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`Apple, Inc. v. MemoryWeb, LLC, IPR2022-00031, Motion for Entry of
`Protective Order (Paper 52)
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`Apple, Inc. v. MemoryWeb, LLC, IPR2022-00031, Motion Order
`Granting Motion for Protective Order (Paper 55)
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`IPR2022-00222
`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
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`Owner has conferred with Petitioner via email. Petitioner does not oppose entry of
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`the proposed Protective Order.
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`I.
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`Background
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`On August 22, 2023, the Board issued Paper 44 granting leave for Patent
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`Owner to conduct additional discovery and setting forth a schedule for briefing and
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`hearings on Real Party in Interest (“RPI”), estoppel and termination issues in
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`relation to Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413 (the “Unified
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`proceeding”). Patent Owner, Petitioner and Unified have conferred regarding
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`discovery matters and agreed that entry of the proposed protective order is warranted
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`in view of the confidential nature of discovery likely to be produced.
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`II. Discussion
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`Good cause exists to enter the proposed Protective Order. The proposed
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`Protective Order is similar to the protective order the Board entered in the Unified
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`Proceeding to address Unified’s concerns over the handling of documents and
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`testimony containing Unified’s confidential business information relating to
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`Unified’s members and business operations. See, Ex. 2028 (Motion for Entry of
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`Protective Order in Unified Proceeding); Ex. 2039 (Order granting motion in Unified
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`Proceeding). The proposed Protective Order is identical (with the exception of a
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`IPR2022-00222
`Patent No. 10,621,228
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`correction of a minor typo) to the protective order the Board entered in the Apple
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`proceeding. See, Ex. 2040 (Motion for Entry of Protective Order in Apple
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`Proceeding); Ex. 2041 (Order granting motion in Apple Proceeding). Patent Owner
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`seeks discovery of similar Unified materials in the present proceeding. The proposed
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`Protective order will also govern the handling of confidential materials produced by
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`Petitioner.
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`The proposed Protective Order differs from the Board’s Default Protective
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`Order in Appendix B of the Patent Trial and Appeal Consolidated Trial Practice
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`Guide, November 2019 (“TPG”) in that the proposed Protective Order includes a
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`“HIGHLY CONFIDENTIAL – ATTORNEY’S EYES ONLY” designation at
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`Unified and Samsung’s request. Additionally, the proposed Protective Order
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`identifies the persons to which access to confidential information is limited and
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`clarifies the treatment of confidential materials unless the Board determines that
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`information does not qualify for confidential treatment. Per Unified and Samsung’s
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`request, these changes are designated to limit access to certain materials by each
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`party’s representatives and in-house counsel. The Board determined that the
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`differences in the proposed Protective Order differed from the Board’s Default
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`Protective Order in the Unified proceeding address the parties’ obligations and do
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`not limit the Board’s authority in this proceeding. Ex. 2039, p. 4. The only
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`difference between the Proposed Protective Order and the Protective Order in the
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`IPR2022-00222
`Patent No. 10,621,228
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`Unified proceeding is that it imposes further restrictions on the parties and do not
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`limit Board’s authority in this proceeding.
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`Accordingly, good cause exists for granting this unopposed motion and entry
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`of the proposed Protective Order.
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`
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`Respectfully submitted,
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`Dated: August 31, 2023
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`
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`By:
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`
`
`
`
`/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
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`3
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`IPR2022-00222
`Patent No. 10,621,228
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing Patent Owner’s
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`Motion for Entry of Protective Order was served on August 31, 2023, upon the
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`following parties via electronic service:
`
`Walter Karl Renner
`Jeremy Monaldo
`Hyun Jin In
`Christopher O. Green
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`IPR39843-0117IP1@fr.com
`PTABInbound@fr.com
`axf-ptab@fr.com
`jjm@fr.com
`in@fr.com
`cgreen@fr.com
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`/s/ Jennifer Hayes
`By:
`Lead Counsel for Patent Owner
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`4
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`APPENDIX A
`APPENDIX A
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.
`Petitioner
`
`v.
`
`MEMORYWEB, LLC
`Patent Owner
`
`Patent No. 10,621,228
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`
`
`
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`
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`Inter Partes Review No. IPR2022-00222
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`
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`PROTECTIVE ORDER
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`
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`IPR2022-00222
`U.S. Patent No. 10,621,228
`The following Protective Order will govern the filing and treatment of
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`confidential information in the proceeding:
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`Protective Order
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`This protective order governs the treatment and filing of confidential
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`information, including documents and testimony.
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`1. Confidential information shall be clearly marked “CONFIDENTIAL –
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`PROTECTIVE ORDER MATERIAL” or “HIGHLY CONFIDENTIAL –
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`ATTORNEYS’ EYES ONLY.”
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`2. Access to confidential information marked “HIGHLY CONFIDENTIAL
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`– ATTORNEYS’ EYES ONLY” is limited to the following individuals who have
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`executed the acknowledgement appended to this order:
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`(A) Outside counsel. Outside counsel of record for a party in the proceeding,
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`including employees of outside counsel of record’s law firm(s) to whom it is
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`reasonably necessary to disclose this information to assist outside counsel of
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`record in connection with this proceeding, including members of their firms,
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`associate attorneys, paralegal, clerical, and other regular employees of such
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`counsel. All in-house counsel and other representatives of the parties (other
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`than outside counsel of record) shall not be allowed to view HIGHLY
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`CONFIDENTIAL – ATTORNEYS’ EYES ONLY Information.
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`1
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`IPR2022-00222
`U.S. Patent No. 10,621,228
`(B) Experts. Retained experts of a party in the proceeding who further certify
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`in the Acknowledgement that they are not a competitor to any party, or a
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`consultant for, or employed by, such a competitor with respect to the subject
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`matter of the proceeding.
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`(C) The Office. Employees and representatives of the United States Patent and
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`Trademark Office who have a need for access to the confidential information
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`shall have such access without the requirement to sign an Acknowledgement.
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`Such employees and representatives shall include the Director, members of the
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`Board and their clerical staff, other support personnel, court reporters, and other
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`persons acting on behalf of the Office.
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`(D) Support Personnel. Administrative assistants, clerical staff, court reporters
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`and other support personnel of the foregoing persons who are reasonably
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`necessary to assist those persons in the proceeding shall not be required to
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`sign an Acknowledgement, but shall be informed of the terms and
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`requirements of the Protective Order by the person they are supporting who
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`receives confidential information.
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`3. Access
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`to confidential
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`information marked “CONFIDENTIAL –
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`PROTECTIVE ORDER MATERIAL” is limited to the following individuals who
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`have executed the acknowledgment appended to this order:
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`2
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`IPR2022-00222
`U.S. Patent No. 10,621,228
`(A) Above Personnel. Those persons or entities identified in paragraph 2 of
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`this Protective Order under the conditions set forth in that paragraph.
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`(B) Parties. Persons who are owners of a patent involved in the proceeding
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`and other persons who are named parties to the proceeding.
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`(C) In-house counsel. In-house counsel of a party; provided, however, that no
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`more than three such in-house counsel shall be afforded access to confidential
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`information.
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`5. Persons receiving confidential
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`information (including
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`information
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`designated “Highly Confidential – Attorneys’ Eyes Only”) shall use reasonable
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`efforts to maintain the confidentiality of such information, including:
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`(A) Maintaining such information in a secure location to which persons not
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`authorized to receive the information shall not have access;
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`3
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`IPR2022-00222
`U.S. Patent No. 10,621,228
`Otherwise using reasonable efforts to maintain the confidentiality of the
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`(B)
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`information, which efforts shall be no less rigorous than those the recipient uses to
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`maintain the confidentiality of information not received from the disclosing party;
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`(C)
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`Ensuring that support personnel of the recipient who have access to the
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`confidential information understand and abide by the obligation to maintain the
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`confidentiality of information received that is designated as confidential; and
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`(D)
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`Limiting the copying of confidential information to a reasonable number
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`of copies needed for conduct of the proceeding and maintaining a record of the
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`locations of such copies.
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`6. Persons receiving confidential information shall use the following
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`procedures to maintain the confidentiality of the information:
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`(A) Documents and Information Filed With the Board.
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`(i) A party may file documents or information with the Board along
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`with a Motion to Seal. The Motion to Seal should provide a non-
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`confidential description of the nature of the confidential information
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`that is under seal, and set forth the reasons why the information is
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`confidential and should not be made available to the public. A party
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`may challenge the confidentiality of the information by opposing the
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`Motion to Seal. The submission shall be treated as confidential and
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`remain under seal, unless the Board determines that the documents or
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`4
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`IPR2022-00222
`U.S. Patent No. 10,621,228
`information do not to qualify for confidential treatment. The
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`information shall remain under seal unless the Board determines that
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`some or all of the information does not qualify for confidential
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`treatment.
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`(ii) Where confidentiality is alleged as to some but not all of the
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`information submitted to the Board, the submitting party shall file
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`confidential and non-confidential versions of its submission, together
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`with a Motion to Seal the confidential version setting forth the reasons
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`why the information redacted from the non-confidential version is
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`confidential and should not be made available to the public. A party may
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`challenge the confidentiality of the information by opposing the Motion
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`to Seal. The non-confidential version of the submission shall clearly
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`indicate the locations of information that has been redacted. The
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`confidential version of the submission shall be filed under seal. The
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`redacted information shall remain under seal unless the Board
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`determines that some or all of the redacted information does not qualify
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`for confidential treatment.
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`(B) Documents and Information Exchanged Among the Parties. Documents
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`(including deposition transcripts) and other information designated as
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`confidential that are disclosed to another party during discovery or other
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`5
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`IPR2022-00222
`U.S. Patent No. 10,621,228
`proceedings before the Board shall be clearly marked as “CONFIDENTIAL
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`– PROTECTIVE ORDER MATERIAL” or “HIGHLY CONFIDENTIAL –
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`ATTORNEYS’ EYES ONLY” and shall be produced in a manner that
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`maintains its confidentiality.
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`7. Within 60 days after the final disposition of this action, including the
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`exhaustion of all appeals and motions, each party receiving confidential information
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`must return, or certify the destruction of, all copies of the confidential information
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`to the producing party.
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`6
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`IPR2022-00222
`U.S. Patent No. 10,621,228
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`EXHIBIT A
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`SAMSUNG ELECTRONICS CO., LTD. v. MEMORY WEB, LLC
`Case No. IPR2022-00222
`U.S. Patent 10,621,228
`
`Standard Acknowledgment for Access to Protective Order Material
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`I _________________________________________ , affirm that I have read
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`the Protective Order; that I will abide by its terms; that I will use the confidential
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`information only in connection with this proceeding and for no other purpose; that I
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`will only allow access to support staff who are reasonably necessary to assist me in
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`this proceeding; that prior to any disclosure to such support staff I informed or will
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`inform them of the requirements of the Protective Order; that I am personally
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`responsible for the requirements of the terms of the Protective Order and I agree to
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`submit to the jurisdiction of the Office and the United States District Court for the
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`Eastern District of Virginia for purposes of enforcing the terms of the Protective
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`Order and providing remedies for its breach.
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`Executed on ____________________ , 20__.
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`1
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