UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`SAMSUNG ELECTRONICS CO., LTD. et al,
`Petitioner,
`
`v.
`
`MEMORYWEB, LLC,
`Patent Owner.
`
`Case IPR2022-00222
`Patent 10,621,228
`
`PETITIONER’S REPLY TO PATENT OWNER’S
`
`MOTION TO TERMINATE
`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`SAMSUNG ELECTRONICS CO., LTD. et al,
`Petitioner,
`
`v.
`
`MEMORYWEB, LLC,
`Patent Owner.
`
`Case IPR2022-00222
`Patent 10,621,228
`
`PETITIONER’S REPLY TO PATENT OWNER’S
`
`MOTION TO TERMINATE
`
`
`
`Proceeding No.: IPR2022-00222
`Attorney Docket: 39843-0117IP1
`
`UPDATED EXHIBIT LIST
`
`SAMSUNG-1001 U.S. Patent No. 10,621,228 to Christopher J. Desmond, et al.
`(“the ’228 patent”)
`
`SAMSUNG-1002 Excerpts from the Prosecution History of the ’228 Patent (“the
`Prosecution History”)
`
`SAMSUNG-1003 Declaration of Dr. Philip Greenspun
`
`SAMSUNG-1004 Curriculum Vitae of Dr. Philip Greenspun
`
`SAMSUNG-1005 U.S. Patent App. Pub. No. 2011/0122153 A1 (“Okamura”)
`
`SAMSUNG-1006 U.S. Patent App. Pub. No. 2010/0058212 A1 (“Belitz”)
`
`SAMSUNG-1007 to SAMSUNG-1019
`
`RESERVED
`
`SAMSUNG-1020 Tim Grey, Adobe Photoshop Lightroom Workflow: The Digital
`Photographer's Guide (2007)
`
`SAMSUNG-1021 U.S. Patent App. Pub. No. 2011/0074811 A1 (“Hanson”)
`
`SAMSUNG-1022 Stephen Shankland, “What’s the best Web site for geotagged
`photos?,” CNET (Mar. 18, 2009), available at
`https://www.cnet.com/tech/computing/whats-the-best-web-site-
`for-geotagged-photos/
`
`SAMSUNG-1023 Panoramio, “Embedding a Panoramio map into your web page”
`(Archive.org: Mar. 28, 2010), available at
`https://web.archive.org/web/20100328215828/http://www.pano
`ramio.com:80/help/embedding
`
`SAMSUNG-1024 Shu-Wai Chow, PHP Web 2.0 Mashup Projects, Packt
`Publishing (2007)
`
`ii
`
`
`
`Proceeding No.: IPR2022-00222
`Attorney Docket: 39843-0117IP1
`
`
`SAMSUNG-1025 Complaint for Declaratory Judgment, MyHeritage (USA), Inc.
`et al. v. MemoryWeb, LLC, Case No. 1:21-cv-02666, Dkt. 1
`(N.D. Ill. May 17, 2021)
`
`
`SAMSUNG-1026 U.S. Patent App. Pub. No. 2009/0113350 A1 (“Hibino”)
`
`SAMSUNG-1027 U.S. Patent App. Pub. No. 2006/0165380 A1 (“Tanaka”)
`
`SAMSUNG-1028 Complaint for Infringement, MemoryWeb, LLC v. Samsung
`Electronics Co., Ltd. and Samsung Electronics America, Inc.,
`Case No. 21-cv-411 (W.D. Tex.)
`
`
`SAMSUNG-1029 Plaintiff MemoryWeb, LLC’s First Supplemental Initial
`Infringement Contentions, MemoryWeb, LLC v. Samsung
`Electronics Co., Ltd. and Samsung Electronics America, Inc.,
`Case No. 21-cv-411-ADA (W.D. Tex. Nov. 24, 2021)
`
`
`SAMSUNG-1030 Agreed Scheduling Order, MemoryWeb, LLC v. Samsung
`Electronics Co., Ltd. and Samsung Electronics America, Inc.,
`Case No. 21-cv-411-ADA (W.D. Tex. Nov. 23, 2021)
`
`
`SAMSUNG-1031 U.S. Patent No. 6,215,523 (“Anderson”)
`
`SAMSUNG-1032 U.S. Patent App. Pub. No. 2008/0133526 (“Haitani”)
`
`SAMSUNG-1033 U.S. Patent App. Pub. No. 2008/0306921 (“Rothmuller”)
`
`SAMSUNG-1034 U.S. Patent App. Pub. No. 2013/0198602 (“Kokemohr”)
`
`SAMSUNG-1035 U.S. Patent App. Pub. No. 2013/0326338 (“Secord”)
`
`SAMSUNG-1036 U.S. Patent App. Pub. No. 2007/0016575 (“Hurst-Hiller”)
`
`SAMSUNG-1037 Stipulation Letter
`
`SAMSUNG-1038 Email from Board Authorizing Petitioner’s Reply
`
`SAMSUNG-1039 RESERVED
`
`iii
`
`
`
`Proceeding No.: IPR2022-00222
`Attorney Docket: 39843-0117IP1
`
`
`
`SAMSUNG-1040 Transcript of the deposition of Dr. Glenn Reinman dated
`November 16, 2022
`
`
`SAMSUNG-1041 Second Declaration of Dr. Philip Greenspun
`
`SAMSUNG-1042 Adam C. Engst, Visual Quickstart Guide iPhoto ’09
`(2009)(“Engst”)
`
`
`SAMSUNG-1043 U.S. Patent App. Pub. No. 2009/0196510 (“Gokturk”)
`
`SAMSUNG-1044 Petitioner’s Demonstratives
`
`SAMSUNG-1045 “Behest.” Merriam-Webster.com Dictionary, Merriam-Webster,
`https://www.merriam-webster.com/dictionary/behest. Accessed
`13 Oct. 2023.
`
`
`
`
`
`iv
`
`
`
`Proceeding No.: IPR2022-00222
`Attorney Docket: 39843-0117IP1
`
`
` INTRODUCTION
`MemoryWeb’s Motion to Terminate (“Motion”) should be rejected, and the
`
`Board should issue a final written decision (“FWD”) addressing all challenged
`
`claims of the ’228 patent.
`
`The Motion must be rejected because, first and foremost, Samsung is not a
`
`real party-in-interest (“RPI”) of Unified Patents (“Unified”). As detailed below,
`
`there is no evidence to even remotely suggest that Unified’s IPR petition in
`
`IPR2021-01413 (“Unified IPR”) was filed at Samsung’s behest or with Samsung’s
`
`control. No substantive communications occurred between Samsung and Unified,
`
`and Samsung did not direct the filing of the Unified IPR. Rather than attempting
`
`to rebut the additional evidence relevant to the RPI determination that Samsung
`
`provided in this proceeding, MemoryWeb largely (and improperly) just points to
`
`the vacated RPI Order from the Unified IPR—where Samsung was not allowed to
`
`participate—and demands that the Board just reinstate the same. But the evidence
`
`in this proceeding fails to establish an RPI relationship between Samsung and
`
`Unified, much less meet MemoryWeb’s burden to prove the same.
`
`A second critical failure of MemoryWeb’s motion is that MemoryWeb has
`
`not met its burden to demonstrate that the decision in the Unified IPR is final. As
`
`discussed below, MemoryWeb itself filed a request for rehearing of the Board’s
`
`decision in the Unified IPR, thereby continuing the proceeding and delaying the
`
`
`
`1
`
`
`
`estoppel that flows from a final written decision. Because the Board is still
`
`Proceeding No.: IPR2022-00222
`Attorney Docket: 39843-0117IP1
`
`
`reviewing the Unified IPR, the Board’s work is not yet complete and its decision
`
`remains nonfinal. Without a final decision, estoppel cannot attach.
`
`Further, MemoryWeb’s attempt at extending its flawed termination
`
`arguments to claims 8-19, which were not challenged in the Unified IPR, similarly
`
`falls flat. The application of estoppel solely to claims previously challenged
`
`comports with the well-defined provisions of § 315(e) and is consistent with
`
`Federal Circuit and Board precedent. Regardless of the Board’s determination on
`
`the RPI issue, no estoppel can attach to claims 8-19.
`
`Finally, all issues on the merits have been fully briefed and orally argued for
`
`months. What’s more, this panel has already considered and issued a FWD on
`
`similar grounds that were advanced in IPR2022-00221 (concerning
`
`US10,423,658). For at least these reasons, equitable considerations and the public
`
`interest support the Board issuing a FWD on all claims 1-19 of the ’228 patent.
`
` SAMSUNG IS NOT ESTOPPED FROM CHALLENGING CLAIMS 1-7
`Samsung should not be estopped under 35 U.S.C. § 315(e)(1) from
`
`challenging claims 1-7 of the ’228 patent because Samsung is not an RPI of
`
`Unified and could not have reasonably raised, in the Unified IPR, the grounds
`
`advanced in Samsung’s proceeding. Furthermore, notwithstanding the absence of
`
`
`
`2
`
`
`
`evidence substantiating contentions of RPI in this proceeding, the estoppel issue is
`
`Proceeding No.: IPR2022-00222
`Attorney Docket: 39843-0117IP1
`
`
`one that MemoryWeb purposefully waived/forfeited during the regular course of
`
`these proceedings and should not be allowed to relitigate at this extremely late
`
`stage.
`
`A. Samsung Is Not an RPI of Unified
`
`The Federal Circuit has explained that “[d]etermining whether a non-party is
`
`a ‘real party in interest’ demands a flexible approach that takes into account both
`
`equitable and practical considerations, with an eye toward determining whether the
`
`non-party is a clear beneficiary that has a preexisting, established relationship with
`
`the petitioner.” Applications in Internet Time v. RPX Corporation, 897 F.3d 1336
`
`1351 (Fed. Cir. 2018)(“AIT”).
`
`The Federal Circuit has since cautioned against overly broad interpretations
`
`of RPI relationships, noting that “the heart of the [RPI] inquiry is focused on
`
`‘whether a petition has been filed at a party’s behest,’” and that “[w]ithout ...
`
`evidence of control, in addition to no evidence of joint funding, or even any
`
`evidence of substantial coordination between the parties as to their respective
`
`decisions to bring these proceedings, a finding that [Samsung] is an RPI of or in
`
`privity with [Unified] here would be improper.” Uniloc 2017 LLC v. Facebook
`
`Inc., 989 F.3d 1018, 1028-1029 (Fed. Cir. 2021)(emphasis added)(“Uniloc 2017”).
`
`
`
`3
`
`
`
`The PTAB has similarly recognized that it “must be cautious not to
`
`Proceeding No.: IPR2022-00222
`Attorney Docket: 39843-0117IP1
`
`
`‘overextend[]’ the reasoning set forth in AIT to any situation where ‘a party
`
`benefits generally from the filing of the Petition and also has a relationship with
`
`the Petitioner.’” Ventex Co., Ltd. v. Columbia Sportswear N. Am., Inc., IPR2017-
`
`00651, Paper 148, 10 (PTAB Jan. 24, 2019)(precedential).
`
` Faced with similar circumstances in past cases involving Unified with regard
`
`to the RPI issue, other panels have previously examined the evidence and
`
`consistently found that Unified and its members were not RPIs. See EX2090, 4-5,
`
`Table of Authorities (Unified’s identification of 26 decisions finding Unified to be
`
`the sole RPI). In Unified Patents v. American Patents, for instance, the Board
`
`considered similar evidence as provided in this proceeding—including the same
`
`Samsung Membership Agreement—and found that Samsung and Unified were not
`
`RPIs. See Unified Patents, LLC v. American Patents, LLC, IPR2019-00482, Paper
`
`115, 47-52 (PTAB Aug. 6, 2019). Overlapping evidence in this proceeding does
`
`not compel a dissimilar finding. Indeed, as this panel recognized at the time of
`
`institution in this proceeding, “there is no evidence that [Samsung] controls
`
`[Unified] and [Samsung’s] interests differ from [Unified’s].” Paper 12 at 11.
`
`Against the backdrop of this correct observation, MemoryWeb has failed to
`
`demonstrate evidence to the contrary during this proceeding. In fact, additional
`
`evidence provided in this proceeding after the oral hearing, which the panel did not
`4
`
`
`
`
`
`have access to in deciding the now vacated RPI Order from the Unified IPR,
`
`Proceeding No.: IPR2022-00222
`Attorney Docket: 39843-0117IP1
`
`
`provides further clarity informing a conclusion that Samsung has never been and is
`
`not an RPI of Unified.1
`
`a. Evidence Does Not Establish That the Unified IPR Was Filed at
`Samsung’s Behest or for Its Benefit
`
`
`As noted above, “whether a petition has been filed at a party’s behest” is at
`
`“the heart of the [RPI] inquiry.” Uniloc 2017 at 1028-1029. In the instant
`
`proceeding, MemoryWeb has not established the factual predicate to support a
`
`
`1 MemoryWeb argues, regarding the vacated RPI Order, that “the Director did not
`
`find error with the Board’s analysis finding that Apple and Samsung were RPIs to
`
`the Unified IPR.” Motion, 6-7 (emphasis original). This is false. The entirety of
`
`the RPI Order was vacated by the Director, who in no way suggested that its
`
`holdings were persuasive or that the RPI issue needed to be addressed in this
`
`proceeding. The vacated RPI Order is discussed here only because MemoryWeb
`
`improperly cites to and relies upon its holdings heavily throughout its Motion.
`
`
`
`5
`
`
`
`finding that the Unified IPR was filed at Samsung’s behest,2 let alone for its
`
`Proceeding No.: IPR2022-00222
`Attorney Docket: 39843-0117IP1
`
`
`benefit.
`
`Samsung’s Mr. Koo spoke on behalf of Petitioner and, in so doing, did not
`
`equivocate in clarifying that Samsung “did not have any interactions with Unified
`
`regarding its decision to file the Unified IPR or its choice of particular claims to
`
`challenge.” EX2099, ¶5. Indeed, Samsung “did not give any input to Unified
`
`concerning its decision to challenge the ’228 Patent” and further “did not give any
`
`input to Unified in its preparation of the Unified IPR.” Id., ¶4. Such testimony is
`
`wholly consistent with that given by Unified’s Mr. Kevin Jakel, who confirmed
`
`that
`
` with companies like Samsung “don’t...require
`
`[Unified] to file challenges” and that it’s strictly “Unified’s decision to use
`
`challenges as a deterrence tool or not.” EX2085, 158:20-159:2. As Mr. Jakel
`
`further explained, it is impossible for Unified’s members to provide “any input or
`
`control, [or] direction over any of [Unified’s] filing activities.” Id., 158:8-19; see
`
`also id., 181:7-16, 182:8-183:2. In fact, in the now vacated RPI Order, this panel
`
`acknowledged that “Unified’s members do not exercise direction or control over
`
`
`2 Merriam-Webster defines “behest” as “an authoritative order: COMMAND” or,
`
`alternatively, “an urgent prompting.” SAMSUNG-1045, 1.
`
`
`
`
`
`6
`
`
`
`Unified’s decisions to contest patents and its filings” and that “[t]here is no
`
`Proceeding No.: IPR2022-00222
`Attorney Docket: 39843-0117IP1
`
`
`evidence of overt direction or control by Unified’s members in the record.”
`
`EX2074, 26. No evidence in this record supports a finding to the contrary, or a
`
`finding otherwise that the Unified IPR was filed at Samsung’s behest.
`
`The Board has repeatedly considered similar facts in previous cases
`
`involving Unified and consistently came to the logical conclusion that Unified did
`
`not act on its members’ behest and further that it was not in an RPI relationship
`
`with its members. See, e.g., Unified Patents, LLC v. American Patents, LLC,
`
`IPR2019-00482, Paper 115, 46-47 (finding that Unified’s petition was not “filed at
`
`Member’s ‘behest’” and that Unified “properly named itself as the only RPI”); see
`
`also Charles Alan Wright, Arthur R. Miller & Edward H. Cooper, Federal
`
`Practice & Procedure § 4449 (“Unauthorized commencement of an action by
`
`another ordinarily should not make [one] a party, unless [one] has himself done
`
`something that makes it reasonable for an adversary to believe the action is
`
`authorized.”).
`
`Nor did Samsung happen to benefit from Unified’s unauthorized actions any
`
`more than others in the zone, the vast majority of whom are not paying members
`
`of Unified. As Mr. Jakel testified, Unified believed that filing the Unified IPR
`
`would result in “a deterrence impact on the technology area” in a way that would
`
`“benefit everyone in the zone from consumers and people buying products in the
`7
`
`
`
`
`
`space, all the way up to the component manufacturers in the technology area.”
`
`Proceeding No.: IPR2022-00222
`Attorney Docket: 39843-0117IP1
`
`
`EX2085, 194:24-195:15. MemoryWeb acknowledges the wide-reaching impact of
`
`the Unified IPR on not just the paying members but on the public in general,
`
`noting that any benefit/liability resulting from Unified’s actions extends to “the
`
`public who [Unified] professes to protect (including its members),” regardless of
`
`whether they are a “Unified member or not.” Motion, 20-21. Particularly in a case
`
`like this, where Samsung was not subject to any time-bar preventing them from
`
`filing its own petition, “a benefit to a member from an IPR filed by [Unified] must
`
`be weighed against the benefit that member receives from filing its own IPR in
`
`which that member can control the prior art references chosen, the counsel used,
`
`the amount of money spent, and whether or not to settle the case.” Unified Patents
`
`Inc. v. Bradium Techs. LLC, IPR2018-00952, Paper 31, 10-11 (PTAB Dec. 20,
`
`2018).
`
`In actuality, Samsung sees limited benefit—if any—from Unified’s actions
`
`in challenging the ’228 patent, especially where Samsung decided to independently
`
`challenge a different claim set as in the Unified IPR in order to protect its own
`
`interests. See EX2099, ¶5 (“In this case in particular, Samsung filed its own IPR
`
`against more and different claims to protect its own interests without any
`
`coordination with Unified (or anyone else).”). As MemoryWeb acknowledges,
`
`even if the Unified IPR were to be successful, Samsung “would still face potential
`8
`
`
`
`
`
`Proceeding No.: IPR2022-00222
`Attorney Docket: 39843-0117IP1
`
`liability for claims 8-19.” Motion, 20. Indeed, in the co-pending district court case
`
`which is currently stayed pending resolution of the corresponding PTAB
`
`proceedings (including this one), MemoryWeb can simply choose to drop claims
`
`1-7 from contention, thus leaving Samsung to defend against claims 8-19 that were
`
`not otherwise challenged in the Unified IPR. Not only would Unified’s success in
`
`invalidating claims 1-7 have very little positive impact for Samsung, the potential
`
`of Unified’s departure from Samsung’s desired claim construction along with other
`
`strategic considerations could in reality end up hurting Samsung overall in the
`
`district court litigation.
`
`As Mr. Jakel testified, the Unified IPR only challenged a subset of the
`
`claims because Unified “independently pick[s] whichever claims [Unified] think[s]
`
`are not patentable in view of the prior art.” EX2085, 119:16-120:4. If the Unified
`
`IPR were designed to benefit Samsung, as opposed to merely creating a general
`
`deterrence effect against NPEs in the zone, Unified would have challenged all
`
`asserted claims 1-19. The failure to do so reflects true independence in Unified’s
`
`actions and not some attempt at gaming the system as MemoryWeb alleges. In
`
`fact, contrary to MemoryWeb’s narrative, Unified regularly challenges patents that
`
`are not asserted against any of its member companies. EX2085, 210:7-211:9;
`
`EX2077, 13-14, 22, 32. Not surprisingly, non-members often derive more benefit
`
`from Unified’s challenges than do its paying members. EX2085, 211:10-212:8;
`9
`
`
`
`
`
`Proceeding No.: IPR2022-00222
`Attorney Docket: 39843-0117IP1
`
`EX2077, 22, 32. To the extent MemoryWeb argues that Unified specifically chose
`
`the ’228 patent because it was asserted against Samsung and Apple, Mr. Jakel
`
`dispelled such a notion, explaining that “Apple and Samsung are two of the most
`
`highly litigated companies in the world, so they’re going to show up in lots and
`
`lots of NPE activity.” EX2085, 184:20-185:7.
`
`Accordingly, the only “alignment” between Unified and its members,
`
`including Samsung, lies in the common goal of deterring NPEs from improperly
`
`asserting low-quality and overbroad patents and providing an alternative to
`
`“litigation against NPEs.” EX2085, 197:6-199:10; see also EX2057, 1; EX2088,
`
`5. That is, Unified’s stated objective of deterring NPE activity based on invalid
`
`patents is what aligns its interests with entities in its zones, regardless of whether
`
`the entity is a member or not. Id.
`
`b. The Record is Devoid of Evidence Demonstrating Relevant
`Communication or Coordination Between Samsung and Unified
`
`
`MemoryWeb also has not established the factual predicate to support a
`
`finding that any relevant communication/coordination occurred between Samsung
`
`and Unified. In fact, undisputed evidence shows that there was no communication
`
`or coordination between Samsung and Unified leading up to the Unified IPR or the
`
`Samsung IPR. See Motion, 23-24; EX2099, ¶4. Nor was there any
`
`communication at all between Samsung and Unified concerning any topic related
`
`
`
`10
`
`
`
`to MemoryWeb or the ’228 patent, save for a general inquiry that Samsung made
`
`Proceeding No.: IPR2022-00222
`Attorney Docket: 39843-0117IP1
`
`
`after the RPI finding in the Unified IPR was publicly made known. Id. The clear
`
`lack of communication between Samsung and Unified confirms that Samsung
`
`could not have directed, controlled, or otherwise influenced Unified’s IPR—or
`
`vice versa.
`
`Nevertheless, MemoryWeb baselessly contends that “Unified emailed
`
`Samsung, Apple and all other paying members to notify that Unified challenged a
`
`patent ‘asserted against Apple and Samsung,’” in so doing suggesting that such
`
`press releases served as some sort of member-directed communication. Motion,
`
`16-17. However, as Mr. Jakel clarified, such press releases were nothing more
`
`than mass emails that were sent to everyone on Unified’s email distribution list,
`
`including both members and non-members alike. EX2085, 61:8-23, 163:14-19,
`
`168:11-14, 169:14-21, 171:6-14. Further, as Mr. Jakel went on to explain, these
`
`press release emails served to complement Unified’s broad NPE deterrence efforts
`
`by widely publicizing its deterrence activities. EX2085, 199:11-200:22.
`
`MemoryWeb further suggests that the “Samsung Membership Report”
`
`served to “entic[e] Samsung to renew its subscription” on promise of filing patent
`
`challenges for Samsung. Motion, 17. Again, any alleged link between these two
`
`things is categorically unproven and false. As Mr. Jakel explained,
`
`
`
`
`
`
`
`11
`
`
`
`Proceeding No.: IPR2022-00222
`Attorney Docket: 39843-0117IP1
`
`
`
`
`. The
`
`complete lack of substantive communications between Unified and Samsung
`
`stands in stark contrast to the circumstance in AIT. See Unified Pats., LLC v.
`
`Cellular Commc’ns Equip. LLC, IPR2018-00091, Paper 33, 17 (PTAB May 22,
`
`2019).
`
`MemoryWeb’s argument that Unified employs a “willful blindness” strategy
`
`in intentionally avoiding discussions with its members is, on this record, similarly
`
`without merit. Motion, 23-24. Far from being part of some nefarious scheme to
`
`skirt PTAB rules, Unified’s business model and deterrence strategy were
`
`specifically designed “to comply with all of the laws,” including with regard to
`
`RPI. EX2085, 188:5-189:9; see also id., 212:18-215:23 (“[W]e didn't want
`
`to...ever be giving companies two bites at the apple, and that's because we wanted
`
`to maintain our...independence...And we think following the rules is the
`
`responsible attorney thing to do when there's no other guidance on day one.”).
`
`So yes, Unified’s avoidance of substantive communication with its members
`
`was intentional; but it was intentionally done so as to comply with all laws in
`
`Unified’s genuine efforts at deterring NPE activity in a truly independent manner.
`
`Id.; see also id., 194:5-23. Unified cannot be faulted for intentionally seeking to
`12
`
`
`
`
`
`follow the law and disallowing company control over multiple challenges to a
`
`Proceeding No.: IPR2022-00222
`Attorney Docket: 39843-0117IP1
`
`
`patent. That is, Unified’s following of the law cannot serve as evidence that it is
`
`somehow not following the law here. A contrary determination defies logic and
`
`would be nonsensical.
`
`c. Unified’s Business Model Is Aimed at Deterring NPE Activity
`
`
`Unified’s business model, which the PTAB has consistently viewed as
`
`failing to create an RPI relationship with its members, endeavored to “comply with
`
`the real party-in-interest rules from day one” and allow Unified to conduct its “own
`
`independent business which is deterrence[.]” EX2085, 86:14-87:12; see also id.,
`
`212:18-215:23 (“[W]e’ve maintained our independence and not collaborated with
`
`companies and not shared litigation strategies and not done any of the things that
`
`would have compromised any of our independence from day one.”); Unified Pats.,
`
`LLC v. Cellular Commc’ns Equip. LLC, IPR2018-00091, Paper 33, 11-12 (PTAB
`
`May 22, 2019)(Board rejecting the argument that “the business model of Unified
`
`implies that Unified files IPRs to benefit its members”); see also Unified Patents
`
`Inc. v. Bradium Techs. LLC, IPR2018-00952, Paper 31, 8-9 (PTAB Dec. 20,
`
`2018)(Board finding that Unified’s “business model of filing IPRs as a general
`
`practice to clear certain technology areas or ‘Zones’” was “not enough to make any
`
`individual member an RPI”). Nothing has changed in the way Unified goes about
`
`
`
`13
`
`
`
`its deterrence efforts to somehow alter this proven lack of an RPI relationship
`
`Proceeding No.: IPR2022-00222
`Attorney Docket: 39843-0117IP1
`
`
`between Unified and its members. EX2085, 86:14-87:12, 44:2-17.
`
`To this day, Unified’s business model remains singularly focused on
`
`deterrence and protecting its zones in an independent manner without regard to any
`
`individual member (paying or not). EX2085, 86:14-88:4. As Mr. Jakel explained,
`
`Unified strived to differentiate itself from entities like RPX that paid millions of
`
`dollars to NPEs to settle cases because he believes such actions incentivize—not
`
`deter—further NPE activity. Id., 197:13-22.
`
`
`
`
`
`
`
`
`
` Accordingly, Unified’s view toward settlements are
`
`aligned with its general objective of deterring NPE activity. It is also noteworthy
`
`that MemoryWeb now argues on one hand that Unified is not acting in its “own
`
`interest” yet on the other reached out to Unified demanding payment such that
`
`Unified may presumably further its self interest.
`
`Lastly, contrary to MemoryWeb’s assertions, filing invalidity challenges is
`
`just one of various different deterrence activities that Unified regularly engages in.
`
`EX2085, 185:12-187:18; see also EX2057, 1; EX2088, 5.
`
`
`
`14
`
`
`
`Proceeding No.: IPR2022-00222
`Attorney Docket: 39843-0117IP1
`
`
`* * *
`
`For at least the reasons above, Samsung is not an RPI of Unified,3 and thus
`
`no estoppel should apply to Samsung’s challenge of claims 1-7.4
`
`
`3 While MemoryWeb contends that “Samsung is an unnamed RPI or privy of
`
`Unified” (Motion, 9)(emphasis added), MemoryWeb does not materially advance a
`
`privity argument and fails to even mention, among other things, the Taylor factors.
`
`Taylor v. Sturgell, 553 U.S. 880 (2008). Rather, MemoryWeb simply handwaves
`
`and declares that “the term ‘RPI’ refers to both RPI and privy....” Motion, 10 n.2.
`
`Thus, MemoryWeb’s treatment is insufficient to bring the question of privity in
`
`dispute.
`
`4 MemoryWeb relies on the declaration of Mr. Lhymn to support its argument that
`
`Unified “reasonably could have raised” a challenge based on the Belitz reference
`
`in the Unified IPR. Motion, 27-29. However, while Mr. Lhymn appears to have
`
`conducted a specialized search that allegedly returned 76 search results including
`
`Belitz as the 37th result, conspicuously missing in these 76 search results are the
`
`other main references relied upon in the Unified IPR such as Okamura and Flora,
`
`thus highlighting the hindsight-driven nature of the search. See EX2111, ¶44
`
`(citing to EX2110).
`
`
`
`15
`
`
`
`B. Samsung is Not Estopped Because the Unified IPR is Not Final
`
`Proceeding No.: IPR2022-00222
`Attorney Docket: 39843-0117IP1
`
`
`MemoryWeb’s motion overlooks a critical fact necessary for the relief it
`
`seeks—the Board’s decision in the Unified IPR is not final. The Supreme Court
`
`has long held that “pendency of reconsideration renders the underlying decision
`
`not yet final.” Stone v. INS, 514 U.S. 386, 392 (1995)(“The timely filing of a
`
`motion to reconsider renders the underlying order non-final for the purposes of
`
`judicial review.”)(emphasis added). Here, MemoryWeb itself filed a request to
`
`reconsider the March 14, 2023 decision in the Unified IPR, rendering that decision
`
`nonfinal per Supreme Court precedent. See IPR2021-01413, Paper 69 (“Patent
`
`Owner’s Request for Rehearing”); 37 C.F.R. § 42.2 (“Rehearing means
`
`reconsideration”). Because MemoryWeb’s request for reconsideration remains
`
`pending, the Board has not reached its final written decision in the Unified IPR,
`
`and, thus, estoppel cannot attach.
`
`The Board’s rules confirm this long-held view from the Supreme Court. For
`
`example, 37 CFR 42.2 defines “final” as meaning:
`
`final for the purpose of judicial review to the extent
`
`available. A decision is final, only if it dispose of all
`
`necessary issues with regard to the party, seeking judicial
`
`review, and does not indicate that further action is
`
`required. (emphasis added).
`16
`
`
`
`
`
`Thus, the Board’s decision of March 14, 2023 in the Unified IPR is not final
`
`Proceeding No.: IPR2022-00222
`Attorney Docket: 39843-0117IP1
`
`
`for the purpose of judicial review. Indeed, the Board’s rules explicitly prevent
`
`judicial review of the Board’s decision at the time of MemoryWeb’s motion. 37
`
`C.F.R. § 90.3(b)(1)(“A timely request for rehearing will reset the time for appeal or
`
`civil action to no later than sixty-three (63) days after action on the request.”); 37
`
`C.F.R. § 41.81 (“The parties to an appeal to the Board may not appeal to the U.S.
`
`Court of Appeals for the Federal Circuit under § 1.983 of this title until all parties’
`
`rights to request rehearing have been exhausted, at which time the decision of the
`
`Board is final and appealable by any party to the appeal to the Board.”). For these
`
`reasons, the Board’s own rules comport with Supreme Court precedent and
`
`confirm that the March 14, 2023 decision in the Unified IPR is nonfinal.
`
`The Federal Circuit has endorsed this view. LeftsnRights, Inc. v. 33Across,
`
`Inc., Appeal No. 2020-1672, Order on Motion (Fed. Cir. 2020)(nonprecedential)
`
`(“Because LeftsnRights timely filed a request for rehearing, which remains
`
`pending with the Board, there is no final Board decision yet to review.”); Power-
`
`Packer North America, Inc. v. G.W. Lisk Company, Inc., Appeal Nos. 2019-1900, -
`
`1964, Order (Fed. Cir. 2019)(nonprecedential). And it has been embraced by
`
`District Court’s as well. BTG International Limited, et al., v. Amneal
`
`Pharmaceuticals LLC, et al., Civ. Nos. 15-cv-5909, 16-cv-2449, 17-cv-6435
`
`(KM)(JBC), Consolidated Opinion, p. 27a (U.S.D.J. 2018):
`17
`
`
`
`
`
`Proceeding No.: IPR2022-00222
`Attorney Docket: 39843-0117IP1
`
`
`The issue is whether the PTAB’s decision, which is
`subject to a pending motion for reconsideration, is “final”
`for purposes of § 315(e). I conclude that it is not, and for
`this reason, too, my consideration of validity issues is not
`estopped. I think finality, for these purposes, should track
`the concept as it is used in the closely related context of
`exhaustion and appealability. “The parties to an appeal to
`the Board may not appeal to the U.S. Court of Appeals
`for the Federal Circuit under§ 1.983 of this title [Appeal
`to the United States Court of Appeals for the Federal
`Circuit in inter partes reexamination] until all parties'
`rights to request rehearing have been exhausted, at which
`time the decision of the Board is final and appealable by
`any party to the appeal to the Board.” 37 C.F.R. § 41.81
`(emphasis added). See 37 C.F.R. 90.3(b)(1)(deadline to
`appeal runs from PTAB’s action on request for
`rehearing).
`Further, treatment of the Board’s decision of March 14, 2023 as nonfinal is
`
`consistent with the Supreme Court’s guidance in Arthrex. See United States v.
`
`Arthrex, Inc., 594 U.S. ___ (2021). As the Court explained, “[o]nly an officer
`
`properly appointed to a principal office may issue a final decision binding the
`
`Executive Branch in the proceeding before us.” Id., p. 19. The Court expounded
`
`that, “[a]lthough the APJs’ appointment by the Secretary allowed them to lawfully
`
`adjudicate the petition in the first instance, see Freytag, 501 U.S. __, at 881–882,
`
`
`
`18
`
`
`
`they lacked the power under the Constitution to finally resolve the matter within
`
`Proceeding No.: IPR2022-00222
`Attorney Docket: 39843-0117IP1
`
`
`the Executive Branch.” Id., p. 22. Here, the Board’s decision of March 14, 2023
`
`in the Unifed IPR was the lawful adjudication of Unified’s “petition in the first
`
`instance,” but it could not have been the PTAB’s “final” written decision because
`
`the Director had not yet had an opportunity to review it. To maintain consistency
`
`with the Court’s decision in Arthrex (and the Board’s own rules discussed above),
`
`the Board should not treat the Board’s decision of March 14, 2023 in the Unified
`
`IPR as “final” and should not attach estoppel to it.
`
`Finally, enforcing estoppel at the time when a Board’s decision becomes
`
`“final” and ready for judicial review is predictable and consistent with the Office’s
`
`framework for Director Review. Without question, the Director has the power to
`
`review decisions initially adjudicated by the Board and vacate them. Look no
`
`further than the Unified IPR, where the Director vacated-in-part the Board’s
`
`decision of March 14, 2023. IPR2021-01413, Paper 76 (PTAB May 22, 2023); see
`
`also Med-El Elektromedizinische Geräte GES.M.B.H. v. Advanced Bionics AG,
`
`IPR2020-01016, Paper 44 (PTAB August 22, 2022)(“Granting Rehearing,
`
`Vacating the Final Written Decision, and Remanding to the PTAB Panel for
`
`Further Proceedings”). Attaching estoppel to a decision that can be vacated and
`
`remanded for further proceedings makes little sense, is inconsistent with Board
`
`rules, and is inconsistent with Supreme Court precedent. Instead, attaching
`19
`
`
`
`
`
`estoppel when a decision is unquestionably “final” and the Board’s work is truly
`
`Proceeding No.: IPR2022-00222
`Attorney Docket: 39843-0117IP1
`
`
`complete is predictable and avoids the issues and inconsistencies noted above. For
`
`these reasons, the Board’s decision of March 14, 2023, in the Unified IPR should
`
`not be considered
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
