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.
`BROWNE, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`Denying Motion to Terminate
`Granting Motion for Protective Order
`Granting Motions to Seal
`35 U.S.C. § 318(a); 37 C.F.R. § 42.14
`
`
`
`
`MemoryWeb Ex. 2121
`Samsung v. MemoryWeb - IPR 2022-00222
`
`
`
`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.
`BROWNE, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`Denying Motion to Terminate
`Granting Motion for Protective Order
`Granting Motions to Seal
`35 U.S.C. § 318(a); 37 C.F.R. § 42.14
`
`
`
`
`MemoryWeb Ex. 2121
`Samsung v. MemoryWeb - IPR 2022-00222
`
`
`
`INTRODUCTION
`I.
`We have authority to hear this inter partes review under 35 U.S.C.
`§ 6. This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
`and 37 C.F.R. § 42.73. For the reasons discussed below, we determine that
`Petitioner, Samsung Electronics Co., Ltd., has shown by a preponderance of
`the evidence that claims 1–17 of U.S. Patent No. 10,621,228 B2 (Ex. 1001,
`“the ’228 patent”) are unpatentable, but has not shown by a preponderance
`of the evidence that claims 18 and 19 are unpatentable. See 35 U.S.C.
`§ 316(e) (2018); 37 C.F.R. § 42.1(d) (2019).
`
`Procedural History
`Petitioner, Samsung Electronics Co., Ltd., filed a Petition (Paper 2,
`“Pet.”) requesting inter partes review of claims 1–19 of U.S. Patent No.
`10,621,228 B2 (Ex. 1001, “the ’228 patent”).1 MemoryWeb, LLC (“Patent
`Owner” or “MemoryWeb”) filed a Preliminary Response. Paper 8 (“Prelim.
`Resp.”). With our authorization, Petitioner filed a Preliminary Reply (Paper
`9) and Patent Owner filed a Preliminary Sur-Reply (Paper 10). Based upon
`the record at that time, we instituted inter partes review on all challenged
`claims on the grounds presented in the Petition. Paper 12 (“Institution
`Decision” or “Dec.”).
`
`1 We refer to the present proceeding, Samsung Electronics Co. Ltd. v.
`MemoryWeb, LLC, IPR2022-00222, as “the Samsung proceeding,” “this
`proceeding,” or “the instant proceeding” to distinguish it from two other
`related proceedings challenging the ’228 patent. Those other proceedings
`are Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413 (“the
`Unified proceeding” or “Unified”) and Apple, Inc. v. MemoryWeb, LLC,
`IPR2022-00031 (“the Apple proceeding”).
`
`MemoryWeb Ex. 2121
`Samsung v. MemoryWeb - IPR 2022-00222
`
`
`
`After institution, Patent Owner filed a Response (Paper 19, “PO
`Resp.”), Petitioner filed a Reply (Paper 24, “Pet. Reply”), and Patent Owner
`filed a Sur-reply (Paper 30, “PO Sur-reply”).
`On March 16, 2023, an oral hearing was held. A transcript of the
`hearing was made a part of this record. Paper 34.
`In the Unified proceeding, which challenged claims 1–7 of the ’228
`patent, the Board entered an Order (Paper 56 (confidential)) on March 8,
`2023, identifying Samsung as an unnamed Real Party in Interest (the “RPI
`Order”), and on March 14, 2023, entered a Final Written Decision (Paper 58
`(confidential)) finding claims 1–7 of the ’228 Patent unpatentable.
`In an email to the Board dated March 15, 2023, counsel for Patent
`Owner requested authorization to file a motion to terminate the Samsung
`proceeding in light of the Board’s Final Written Decision in the Unified
`proceeding. Ex. 3006; see also Ex. 3002, 24:18–25:7, 38:16–41:6.
`On March 31, 2023, a joint conference call was held with counsel
`from the Unified, Samsung, and Apple proceedings to discuss the impact of
`the Board’s Final Written Decision in the Unified proceeding. Ex. 3002.
`The topics discussed on the conference call included the Board’s RPI Order
`in the Unified proceeding, Patent Owner’s request to file a motion to
`terminate the Samsung proceeding, as well as issues related to real party in
`interest, waiver, estoppel and discovery, among others. See id.
`On May 4, 2023, the Chief Administrative Patent Judge determined
`that good cause existed to extend the one-year period for issuing a Final
`Written Decision in this case in view of the limited time remaining before
`
`MemoryWeb Ex. 2121
`Samsung v. MemoryWeb - IPR 2022-00222
`
`
`
`expiration of the one-year period for issuing a Final Written Decision and
`under the unique circumstances of this case. Paper 35.
`On May 18, 2023, we issued an Order extending the one-year
`pendency of this proceeding by up to six months. Paper 36.
`On May 22, 2023, the Director issued a public version2 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, we issued an Order directing the parties to confer
`and submit a proposed joint briefing schedule and discovery plan to address
`the waiver, RPI, and estoppel issues. Paper 37. The parties submitted their
`joint proposal by email on June 9, 2023. Ex. 3005.
`On June 15, 2023, we issued an Order setting a briefing schedule for
`the parties to submit their arguments on the issues outlined in Exhibit 3005
`(First Phase). Paper 45.3
`On June 30, 2023, Patent Owner filed its opening brief on the issues
`of good cause, supplemental information, and additional discovery (Paper
`40), and Petitioner filed its opening brief on the issues of waiver and
`estoppel (Paper 39).
`
`2 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.
`3 Paper 45 is the corrected version of the Conduct of Proceeding Order
`(Paper 38).
`
`MemoryWeb Ex. 2121
`Samsung v. MemoryWeb - IPR 2022-00222
`
`
`
`On July 14, 2023, Patent Owner filed its response brief on the issues
`of waiver and estoppel (Paper 43), and Petitioner filed its response brief on
`the issues of good cause, supplemental information, and additional discovery
`(Paper 42).
`On August 22, 2023, we issued an Order setting a schedule for the
`parties to conduct discovery on the RPI issue, to brief Patent Owner’s
`requested motion to terminate, to file motions to exclude, and for a second
`oral hearing (Paper 44).
`With respect to Patent Owner’s motion to terminate, Patent Owner
`filed its opening brief (Paper 52, “PO Mot. Term.”), Petitioner filed an
`opposition (Paper 53, “Pet. Mot. Reply”), Patent Owner filed a reply (Paper
`57, “PO Mot. Reply”).
`On November 20, 2023, a second oral hearing was held to permit the
`parties to address the issues of waiver, real party in interest, estoppel, and
`termination, among others Related Matters
`The parties state that the ’228 patent is related to the following U.S.
`Patents: 9,098,531 (“the ’531 Patent”); 9,552,376 (“the ’376 Patent”);
`10,423,658 (“the ’658 Patent”); 11,017,020 (“the ’020 Patent”); 11,163,823
`(“the ’823 Patent”), and 11,170,042 (“the ‘042 Patent”). Paper 4, 2; Paper
`11, 1. The parties further state that the ’228 patent is related to pending U.S.
`Patent Application 17/459,933. Paper 4, 3; Paper 11, 2.
`The parties identify the following as related district court matters:
`MemoryWeb, LLC v. Apple Inc., No. 6:21-cv-00531 (W.D. Tex.);
`MemoryWeb, LLC v. Samsung Electronics Co., Ltd. et al., No. 6:21-cv-0411
`
`MemoryWeb Ex. 2121
`Samsung v. MemoryWeb - IPR 2022-00222
`
`
`
`(W.D. Tex.); and MyHeritage (USA), Inc. et. al. v. MemoryWeb, LLC, No.
`1:21-cv-02666 (N.D. Ill.). Paper 4, 2; Paper 11, 1.
`As noted in the prior section of this decision, the parties identify the
`’228 patent as the subject the Unified proceeding and the Apple proceeding.
`The parties also identify the following related patents as the subjects of the
`following petitions: Samsung Electronics Co., LTD. v. MemoryWeb LLC,
`IPR 2022-00221 (‘658 patent); Apple Inc. v. MemoryWeb, LLC, IPR2022-
`00032 (’376 patent); Apple Inc. v. MemoryWeb, LLC, IPR2022-00111 (‘020
`patent); Apple Inc. v. MemoryWeb, LLC, PGR2022-00006 (‘020 patent);
`Apple Inc. v. MemoryWeb, LLC, IPR2022-00033 (’658 patent); and Apple
`Inc. v. MemoryWeb, LLC, IPR2022-00032 (’376 patent). Paper 4, 2–3;
`Paper 11, 1–2. Petitioner also identifies Samsung Electronics Co., LTD. v.
`MemoryWeb LLC, IPR2022-00885 (’823 patent); and Samsung Electronics
`Co., LTD. v. MemoryWeb LLC, PGR2022-00034 (’823 patent) as
`proceedings involving related patents. Paper 11, 1–2.
`
`The ’228 patent
`The ’228 patent for a “Method and Apparatus for Managing Digital
`Files” issued April 14, 2020. Ex. 1001, codes (45), (54). It “relates
`generally to the management of digital files and, more particularly, to a
`computer-implemented system and method for managing and using digital
`files such as digital photographs.” Id. at 1:21–24. The ’228 patent purports
`to resolve a need for complementing “the widespread availability of digital
`files” by providing “a medium that allows people to organize, view, preserve
`and share these files with all the memory details captured, connected and
`vivified via an interactive interface.” Id. at 1:61–65.
`
`MemoryWeb Ex. 2121
`Samsung v. MemoryWeb - IPR 2022-00222
`
`
`
`Figure 41 of the ’228 patent is reproduced below.
`
`
`
`Figure 41 shows a screenshot of a Single Application Dot-Tag Filter in
`Location Application View that allows a user’s access to digital files
`associated with a particular location. Id. at 4:7–8, 29:41–57. As shown in
`Figure 41, Location Application View 0870 displays Digital Files within an
`interactive map. Id. at Fig. 41, 29:41–44. Individual or groups of Digital
`Files are illustrated as photo thumbnails 0874, 0875 on the map and a user
`can zoom in and out or select the thumbnail to see all the Digital Files with
`the same location as depicted in Figure 34 below. Id. at Fig. 41, 29:48–55.
`
`MemoryWeb Ex. 2121
`Samsung v. MemoryWeb - IPR 2022-00222
`
`
`
`Figure 34 of the ’228 patent is reproduced below.
`
`
`
`Figure 34 shows a screenshot of Location Application Views. Id. at 3:64.
`As shown in Figure 34, Location Application Views include a first Multiple
`Location Application View 1600 for displaying all the locations that were
`created within a user’s Application. Id. at Fig. 34, 24:16–19. A second
`Single Location Application View 1630 is displayed when one of the
`thumbnails, for example, photo thumbnail 0874 from the Location
`Application View 0870 in Figure 41 is selected. Id. at Fig. 34, 29:48–52. In
`this example, displayed in the Single Location Application View 1630 are
`the individual location name 1632, thumbnails of each Digital File within
`specific collections such as one photo 1633 taken at Wrigley Field 1634 that
`
`MemoryWeb Ex. 2121
`Samsung v. MemoryWeb - IPR 2022-00222
`
`
`
`is associated with the location called Wrigley Field. Id. at Fig. 34, 24:37–
`43.
`
`Figure 32 of the ’228 patent is reproduced below.
`
`
`Figure 32 shows a screenshot of People Application Views. Id. at 3:62. As
`shown in Figure 32, People Application Views include a first Multiple
`People Application View 1400 for displaying all the people that were
`created within a user’s Application, and can be selected by a user “from any
`Application Views within the Application.” Id. at Fig. 32, 22:59–64. For
`each person, such as for Jon Smith as an example, a thumbnail 1403 for that
`person is shown. Id. at Fig. 32, 23:1–5. A second Single People Profile
`Application View 1430 can be displayed. Id. at Fig. 32, 23:12–13. This
`
`MemoryWeb Ex. 2121
`Samsung v. MemoryWeb - IPR 2022-00222
`
`
`
`example shows individual JC Jon Smith with the following information
`depicted: individual’s name 1431, profile photo 1440 that can be changed,
`and a number of photos 1452 associated with that person along with
`thumbnail 1446 of each photo. Id. at Fig. 32, 23:13–25.
`
`Challenged Claims
`Petitioner challenges claims 1–19. Pet. 1. Claim 1 is the sole
`independent claim. Ex. 1001, 35:32–36:11.
`Claim 1 is reproduced below with Petitioner’s limitation numbering4
`included for ease of reference.
`[1pre] 1. A method comprising:
`[1a] responsive to a first input, causing a map view to be
`displayed on an interface, the map view including:
`[1b] (i) an interactive map;
`[1c] (ii) a first location selectable thumbnail image at a
`first location on the interactive map; and
`[1d] (iii) a second location selectable thumbnail image at
`a second location on the interactive map;
`[1e] responsive to an input that is indicative of a selection of the
`first location selectable thumbnail image, causing a first location
`view to be displayed on the interface, the first location view
`including (i) a first location name associated with the first
`location and (ii) a representation of at least a portion of one
`digital file in a first set of digital files, each of the digital files in
`the first set of digital files being produced from outputs of one or
`more digital imaging devices, the first set of digital files
`including digital files associated with the first location;
`[1f] responsive to an input that is indicative of a selection of the
`second location selectable thumbnail image, causing a second
`location view to be displayed on the interface, the second
`location view including (i) a second location name associated
`with the second location and (ii) a representation of at least a
`
`4 From Petitioner’s Listing of Challenged Claims. Pet. v.
`
`MemoryWeb Ex. 2121
`Samsung v. MemoryWeb - IPR 2022-00222
`
`
`
`portion of one digital file in a second set of digital files, each of
`the digital files in the second set of digital files being produced
`from outputs of the one or more digital imaging devices, the
`second set of digital files including digital files associated with
`the second location; and
`[1g] responsive to a second input that is subsequent to the first
`input, causing a people view to be displayed on the interface, the
`people view including:
`[1h] (i) a first person selectable thumbnail image including
`a representation of a face of a first person, the first person
`being associated with a third set of digital files including
`digital photographs and videos;
`[1i] (ii) a first name associated with the first person, the
`first name being displayed adjacent to the first person
`selectable thumbnail image;
`[1j] (iii) a second person selectable thumbnail image
`including a representation of a face of a second person, the
`second person being associated with a fourth set of digital
`files including digital photographs and videos; and
`[1k] (iv) a second name associated with the second person,
`the second name being displayed adjacent to the second
`person selectable thumbnail image.
`Ex. 1001, 35:32–36:11.
`
`
`
`
`MemoryWeb Ex. 2121
`Samsung v. MemoryWeb - IPR 2022-00222
`
`
`
`NON-PUBLIC VERSION—PROTECTIVE ORDER MATERIAL
`
`IPR2022-00222
`Patent 10,621,228 B2
`
`D.=Asserted Ground of Unpatentability
`
`Petitioner asserts the following ground of unpatentability:
`
`Claim(s) Challenged|35 U.S.C. §° Reference(s)/Basis
`
`Okamura,° Belitz’
`
`
`
`Pet. 1.
`
`E.
`
`Other Evidence
`
`Declaration orDeposition Date|Nuon
`
` Deposition of Philip Greenspun, Ph.D.
`
`Declaration of Philip Greenspun, Ph.D.
`Deposition of Glenn Reinman, Ph.D
`Declaration of Philip Greenspun, Ph.D.
`Declaration of Glenn Reinman,Ph.D.
`
`Ex. 1003
`Ex. 1040
`Ex. 1041
`Ex. 2001
`Ex. 2022
`Ex. 2023
`Declaration of Glenn Reinman, Ph.D.
`Ex. 2062
`Deposition of Kevin Jakel
`Ex. 2071
`Declaration of Kevin Jakel
`Ex. 2085
`Deposition of Kevin Jakel
`
`Declaration of Youngmo Koo September 17, 2023|Ex. 2099
`
`
`
`> The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. The ’228 patent claimspriority
`to Patent Application No. 13/157,214, providing an effective filing date of
`June 9, 2011. See Ex. 1001, code (63). Because this priority date is before
`the effective date of the applicable AIA amendments (March 16, 2013), we
`use the pre-AIA version of 35 U.S.C. §103 in this proceeding.
`° Okamuraet al., U.S. Patent Publication No. 2011/0122153 A1, published
`May 26, 2011 (Ex. 1005) (“Okamura”).
`7 Belitz et al., U.S. Patent Publication No. 2010/0058212 A1, published
`March4, 2010 (Ex. 1006) (“Belitz”).
`
`12
`
`MemoryWebEx. 2121
`Samsung v. MemoryWeb - IPR 2022-00222
`
`MemoryWeb Ex. 2121
`Samsung v. MemoryWeb - IPR 2022-00222
`
`
`
`
`
`II. ANALYSIS
`Forfeiture/Waiver8
`Petitioner’s Arguments
`1.
`Petitioner contends that Patent Owner has waived its ability to raise a
`real party in interest (“RPI”) issue in this proceeding. Paper 39.
`Specifically, Petitioner contends that Patent Owner knowingly waived the
`RPI Issue (id at 4–11), ignored PTAB Precedent (id. at 11–13), and should
`not be rescued from a predicament of its own making (id. at 13–15).
`In support of these contentions, Petitioner asserts that following
`institution, Patent Owner had the opportunity to rebut the Board’s initial RPI
`determination by properly and timely addressing the RPI issue in its Patent
`Owner Response. Paper 39, 6. Petitioner asserts that instead of rebutting
`the Board’s initial determination, Patent Owner “chose to not say anything at
`all, providing zero evidence/argument to rebut the RPI identification as
`provided in this proceeding by [Petitioner] and as endorsed by the Board in
`the institution decision. Id. According to Petitioner, “[t]here can be no
`clearer case of forfeiture/waiver.” Id. (citing Unified Patents, LLC, v.
`Gesture Technology Partners, LLC, IPR2021-00917, Paper 32, 5 (PTAB
`Dec. 16, 2022) (emphasis omitted); Google LLC v. Uniloc 2017 LLC,
`IPR2020-00447, Paper 24, 9-10 n. 6 (PTAB May 11, 2021); Consolidated
`
`8 Petitioner observes that the Federal Circuit and the Board “often use the
`terms ‘waiver’ and ‘forfeiture’ interchangeably” when discussing these
`principles.” Paper 39, 4 (citing In re Google Tech. Holdings LLC, 980 F.3d
`858, 862–863, n.8 (Fed. Cir. 2020)). For purposes of this decision, we use
`the terminology “waiver” or “waived.”
`
`MemoryWeb Ex. 2121
`Samsung v. MemoryWeb - IPR 2022-00222
`
`
`
`Trial Practice Guide (“CTPG”)9 at 94). Petitioner also asserts that Patent
`Owner even more clearly manifested its unmistakable intent to forfeit/waive
`the RPI issue because in its Sur-reply Patent Owner simply chose to
`proclaim that estoppel would apply if the Board determined that Petitioner is
`an unnamed RPI in the Unified proceeding without addressing much less
`acknowledging Petitioner’s argument that RPI had not been brought into
`dispute in this proceeding. Id. at 7 (citing Paper 30, 33).
`Petitioner notes that in the Unified proceeding, the initial institution
`decision (denying institution) was issued six months prior to Patent Owner’s
`filing of its Response in this proceeding. Paper 39, 7. Petitioner notes
`further that in the initial institution decision in the Unified proceeding, “the
`Board had declined to address the RPI issue because an RPI analysis was
`deemed to be not warranted in that proceeding as per ‘the Board’s
`precedential decision in SharkNinja Operating LLC v. iRobot Corp.,
`IPR2020-00734, Paper 11 at 18 (PTAB Oct. 6, 2020) (precedential).’” Id.
`(citing Unified, Paper 15, 13). Petitioner also notes that “Director Vidal, in
`the Decision Granting Director Review, later confirmed the applicability of
`SharkNinja’s reasoning to the Unified proceeding. Id. at 8 (citing Unified,
`Paper 76, 5).
`In view of these noted circumstances, Petitioner asserts that Patent
`Owner “knowingly and repeatedly refused to address the RPI issue in this
`proceeding” and that Petitioner’s “contention that it was not an RPI in the
`Unified IPR therefore stands unchallenged.” Paper 39, 9. In view of these
`
`9 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`
`MemoryWeb Ex. 2121
`Samsung v. MemoryWeb - IPR 2022-00222
`
`
`
`circumstances, Petitioner asserts further that its “only recourse appears to
`have been taking some sort of third party action in the Unified IPR—this
`assuming knowledge of papers and evidence under seal in that proceeding.”
`Id. at 10. In addition, Petitioner asserts that the party seeking to avail itself
`of relief must create a record and establish a baseline of evidence and create
`a reasonable opportunity for the party targeted by such relief to understand
`the allegation, and respond to it. Id. at 10.
`In addition, Petitioner asserts that Patent Owner should have known
`by the institution date of the Unified proceeding that it was the wrong
`proceeding to challenge any alleged RPI issue involving Unified because
`even if Petitioner and Apple were unnamed RPI’s it would not create a time
`bar or estoppel under 35 U.S.C. § 315. Paper 38, 11–12 (citing Unified,
`Paper 15, 13). Petitioner asserts that Patent Owner repeatedly ignored the
`Board’s guidance and PTAB precedent and should not be excused from the
`plain notice and diligence requirements in PTAB proceedings. Id. at 14.
`Patent Owner’s Response
`2.
`Patent Owner responds that prior to the Director’s Decision in the
`Unified proceeding, nothing suggested that it would have to re-prove in this
`proceeding that Unified failed to name Petitioner as an RPI. Paper 43, 1.
`Patent Owner contends that Petitioner “cites no authority, prior to the
`Director Decision, dictating that [it] should have raised Unified’s incorrect
`RPI identification in Unified in this proceeding prior to issuance of the
`Unified FWD.”10 Id. at 3 (citing id. at 6–11). Patent Owner contends
`
`10 Final written decision.
`
`MemoryWeb Ex. 2121
`Samsung v. MemoryWeb - IPR 2022-00222
`
`
`
`further that Petitioner’s complaint that Patent Owner’s arguments and
`evidence in the Unified proceeding were cloaked by seal and could not even
`be reviewed by Petitioner is disingenuous because Petitioner “is fully aware
`of its business and financial arrangements with Unified, including the terms
`and benefits of its membership agreement.” Id. at 4. Patent Owner also
`contends that Petitioner was also fully aware that Patent Owner challenged
`Unified’s failure to name Petitioner as an RPI in Unified. Id. In addition,
`Patent Owner contends that Petitioner’s claim that it prejudiced Petitioner
`“by ‘frustrating the efficiency and speed of IPR’ and adding ‘unanticipated
`costs and delay’ is also disingenuous” because Petitioner “fails to explain
`how any perceived delay actually prejudices it — especially as the Board
`has already found cause to extend the statutory deadline to December 13,
`2023, and any delay allows [Petitioner] to maintain the stay of the district
`court litigation.” Id. at 4–5 (citing Paper 39, 2–3; Paper 35).
`Patent Owner responds further that nothing in its Response or Sur-
`reply reflects an intentional waiver of its right to seek termination of this
`proceeding based on the final written decision in the Unified proceeding and
`Petitioner’s status as an unnamed RPI in that proceeding. Paper 43, 6 (citing
`United States v. Olano, 507 U.S. 725, 733 (1993)). Patent Owner asserts
`further that its Response and Sur-Reply “could not have intentionally
`relinquished or abandoned that right because the right did not exist until the
`Unified FWD issued on March 14, 2023.” Id. (citing id. at 2). In addition,
`Patent Owner asserts that it has timely requested authorization to seek relief
`based on the final written decision in the Unified proceeding. Id. (citing
`Olano, 507 U.S. at 733).
`
`MemoryWeb Ex. 2121
`Samsung v. MemoryWeb - IPR 2022-00222
`
`
`
`Patent Owner also responds that Petitioner mischaracterizes
`SharkNinja. Paper 43, 12. According to Patent Owner, “[i]n SharkNinja,
`the Board declined to address the patent owner’s RPI arguments at the
`institution stage, in part, because there was ‘no allegation or evidence that’
`the unnamed RPI was ‘barred or estopped’ or ‘purposely omitted . . . to gain
`some advantage.’” Id. (citing SharkNinja, Paper 11, 19). Petitioner asserts
`further that “SharkNinja did not hold that the Board must decline to address
`the petitioner’s failure to identify all RPIs in the final written decision” and
`that “the Director Decision represents a significant expansion of the
`reasoning in SharkNinja and constitutes new guidance or an intervening
`change in the law, which supplies good cause to excuse any untimeliness
`on” Patent Owner’s part. Id. (Paper 40, 7–10).
`In addition, Patent Owner responds that Petitioner mischaracterizes
`the Institution Decision in the Unified proceeding. Paper 43, 13. According
`to Patent Owner, “[t]he Unified Institution Decision merely explained that
`‘an RPI analysis is not required at institution’ – it did not indicate that the
`Board would not perform an RPI analysis in its final written decision.” Id.
`(citing Unified, Paper 15 as 13–14). Patent Owner responds further that
`Petitioner’s mischaracterization of the Institution Decision in the Unified
`proceeding is also belied by the RPI Order in that proceeding, where the
`Board discussed SharkNinja yet decided the RPI issue. Id. (citing Ex. 2038,
`3, 5–6). Patent Owner asserts that the Board’s RPI Order refutes Petitioner’s
`spurious claim that Patent Owner ignored clear PTAB precedent. Id. (citing
`Paper 39, 13). Moreover, according to Patent Owner, “if SharkNinja was
`
`MemoryWeb Ex. 2121
`Samsung v. MemoryWeb - IPR 2022-00222
`
`
`
`such ‘clear’ precedent, then Unified surely would have cited it in Unified.”
`Id.
`
`Discussion
`3.
`After considering the evidence and the arguments of the parties, we
`determine that the weight of the evidence establishes that Patent Owner has
`not waived any right it may have to raise the RPI issue or assert estoppel
`under 35 U.S.C. § 315(e)(1) in this proceeding.
`Notice
`a)
`35 U.S.C. § 312 (a)(2) states that “[a] petition filed under section 311
`may be considered only if . . . the petition identifies all real parties in
`interest.” 37 C.F.R. § 42.8 (b)(1) of the Board’s rules regarding mandatory
`notices also requires that the petition “[i]dentify each real party-in-interest
`for the party.”
`Citing 35 U.S.C. § 312, Patent Owner first alleged in its Patent Owner
`Preliminary Response in the Unified proceeding filed on December 12,
`2021, that “the Petition fails to name all real parties-in-interest (“RPIs”),
`including at least Samsung and Apple, and should therefore be denied.” See
`Unified, Paper 8, 22. Patent Owner repeated this same allegation in the
`Unified proceeding approximately six months later in its Response filed on
`June 6, 2022. See Unified, Paper 23, 14 (“the Board should terminate this
`proceeding because Petitioner has failed to name all real parties-in-interest
`(“RPIs”), including at least Samsung and Apple”). The question thus
`becomes whether Patent Owner properly noticed Petitioner it was alleging
`that Petitioner was an unnamed RPI in the Unified case, so that Petitioner
`would have fair notice and an opportunity to respond.
`
`MemoryWeb Ex. 2121
`Samsung v. MemoryWeb - IPR 2022-00222
`
`
`
`In this proceeding, Patent Owner stated in its Response that it had
`“asked the Board to determine that Petitioner is an unnamed RPI” in the
`Unified proceeding. PO Resp. 64 (citing Ex. 2021, 18–26). Patent Owner
`further requested that Petitioner be estopped from maintaining this
`proceeding if the final written decision in the Unified proceeding determined
`that Petitioner was an unnamed RPI in that proceeding. Id. Patent Owner
`maintained its position that Petitioner was an unnamed RPI in the Unified
`proceeding in its Sur-reply where it reiterated its position that if Petitioner is
`found to be an unnamed RPI in the Unified proceeding it should be estopped
`from maintaining this proceeding. PO Sur-reply 33. Thus, Petitioner was
`clearly on notice that its RPI status in the Unified proceed was at issue in this
`proceeding.
`
`Estoppel
`b)
`Our rules provide that “[a] party should seek relief promptly after the
`need for relief is identified.” 37 C.F.R. § 42.25(b) (2023). As outlined
`above, Patent Owner clearly indicated its intent to request estoppel if
`Petitioner was found to be an RPI in the Unified proceeding in its Response
`and Sur-reply. Thus, Patent Owner did not waive its right to request that
`Petitioner be estopped in this proceeding. Moreover, we agree with Patent
`Owner that the issue in this proceeding is not whether Petitioner is an RPI in
`this proceeding (as it surely must be), but whether Petitioner should be
`estopped from maintaining this proceeding because it is an unnamed RPI in
`the Unified proceeding.
`
`MemoryWeb Ex. 2121
`Samsung v. MemoryWeb - IPR 2022-00222
`
`
`
`Timing
`c)
`The circumstances of this proceeding are unique in that neither the
`parties nor the Board could have known, prior to the Director’s Decision,
`that the Director would vacate the Board’s RPI order in the Unified
`proceeding. Petitioner asserts that Patent Owner should have submitted its
`evidence that Petitioner was an unnamed RPI in the Unified proceeding
`when it noticed Petitioner that RPI was at issue in that proceeding. We
`disagree. At the time Patent Owner filed its Response and Sur-reply it
`appeared that the question of whether or not Petitioner was an RPI in the
`Unified proceeding would be resolved in that proceeding. We do not agree
`with Petitioner that Patent Owner should have known at the time that it filed
`its Response and Sur-reply in this case that the precedent set forth in
`SharkNinja would be extended to preclude the Board’s consideration of the
`RPI issue in its final written decision in the Unified proceeding.
`For these reasons, we determine that Patent Owner has not waived its
`right to raise a real party in interest issue in this proceeding.
`
`Real Party in Interest
`Petitioner states that “Samsung Electronics Co., Ltd. and Samsung
`Electronics America, Inc. are the real parties in interest.” Pet. 92. Patent
`Owner states that it, MemoryWeb, LLC, is the real party in interest. Paper
`4, 2.
`
`Whether Petitioner is a RPI in this proceeding is not at issue. At issue
`is whether Petitioner is an unnamed RPI in the Unified proceeding.
`
`MemoryWeb Ex. 2121
`Samsung v. MemoryWeb - IPR 2022-00222
`
`
`
`Legal Principles
`a)
`We authorized discovery and briefing to allow the parties to address
`this issue. Paper 44; Paper 45. Our regulations require that parties
`“[i]dentify each real party-in-interest for the party” as part of its mandatory
`notices, and to timely update any change in the information provided in
`those notices. 37 C.F.R. §§ 42.8(a), (b)(1) (2023). The parties have a duty
`of candor and good faith when they comply with the requirements set forth
`in Section 42.8. See 37 C.F.R. § 42.11(a) (2023) (stating that parties have a
`duty of candor and good faith in proceedings).
`The mandatory notice provision requiring the identification of all real
`parties in interest serves important notice functions to patent owners, to
`identify whether the petitioner is barred from filing a petition because of a
`real party in interest that is time-barred or otherwise estopped, and to the
`Board, to identify conflicts of interests that are not readily apparent from the
`identity of the petitioner. See NOF Corp. v. Nektar Therapeutics, IPR2019-
`01397, Paper 24 at 6 (PTAB Feb. 10, 2020) (citing Patent Trial and Appeal
`Board Consolidated Trial Practice Guide 12 (Nov. 2019) (“TPG”)).11
`Whether a non-party is an RPI is a “highly fact-dependent question”
`and must be considered on a case-by-case basis. Ventex Co. v. Columbia
`Sportswear N. Am., Inc., IPR2017-00651, Paper 152 at 6 (PTAB Jan. 24,
`2019) (precedential). With respect to a petition’s identification of real
`parties in interest, the Federal Circuit has stated that
`
`11 Available at
`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf?MURL=
`
`MemoryWeb Ex. 2121
`Samsung v. MemoryWeb - IPR 2022-00222
`
`
`
`[a] petition is presumed to identify accurately all RPIs. See
`Zerto, Inc. v. EMC Corp., Case IPR2014-01295, slip op. at 6–7
`(PTAB Mar. 3, 2015) (Paper 34). When a patent owner provides
`sufficient evidence prior to institution that reasonably brings into
`question the accuracy of a petitioner’s identification of RPIs, the
`overall burden remains with the petitioner to establish that it has
`complied with the statutory requirement to identify all RPIs.
`Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1343 (Fed.
`Cir. 2018) (“AIT”). In a slightly later case, the Federal Circuit also stated
`that
`
`[a] “petitioner’s initial identification of the real parties in interest
`should be accepted unless and until disputed by a patent owner.”
`Worlds Inc. v. Bungie, Inc., 903 F.3
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
