From:
`To:
`Cc:
`
`Subject:
`Date:
`Attachments:
`
`Kushan, Jeffrey P.
`Trials
`"Hayes, Jennifer"; Schwartz, Daniel; Werber, Matthew; Girgis, Diana; Mahoney, Matthew;
`"steve.baughman@groombridgewu.com"; Christopher, Angelo; Fougere, Josh
`IPR2022-00031: Proposal from the Parties on further conduct of the proceedings
`Friday, June 9, 2023 4:42:47 PM
`image001.png
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Pursuant to the Board’s direction, the parties have met and conferred and jointly recommend the
`following further proceedings in the above-noted IPR proceeding.
`
`First Phase
`Due Date 1: Two weeks from the Board’s Order following the joint proposal, each party files one
`brief not exceeding 7000 words.
`MemoryWeb files brief addressing:
`Why good cause exists to raise RPI/estoppel issue now pursuant to 37 CFR 42.5(c)(3) and
`42.25(b),
`Why the late consideration of supplemental information MemoryWeb possessed before this
`proceeding was instituted serves the interests of justice pursuant to 37 CFR 42.123(b),
`MemoryWeb’s motion for additional discovery from Apple on the RPI issue, and
`MemoryWeb’s motion for additional discovery from Unified Patents on the RPI issue.
`Apple files brief addressing why MemoryWeb has waived and/or forfeited its ability to raise the
`RPI/estoppel issue.
`
`Due Date 2: Three weeks from service of opening round briefs, each party files one brief not
`exceeding 3500 words.
`Apple responds to MemoryWeb’s opening brief.
`MemoryWeb responds to Apple’s opening brief.
`Apple may also present conditional discovery requests of Unified if discovery is authorized.
`
`
`Second Phase
`Due Date 3: If the Board authorizes briefing on estoppel, submission of additional information
`and additional discovery, then within 15 days of the Board’s Order:
`MemoryWeb will file as exhibits in this proceeding the non-confidential exhibits in IPR2021-
`01413 pertaining to RPI.
`Apple will produce to MemoryWeb responsive non-privileged documents as follows: (i) all
`communications with Unified relating to MemoryWeb, the ‘228 patent, the Unified IPR, or this
`IPR (IPR2022-00031); and (ii) all agreements or contracts between Apple and Unified, including
`Apple’s membership agreement and any amendments or add-ons
`Apple may provide a declaration from a witness familiar with the documents it is producing.
` MemoryWeb would be allowed a 4 hour deposition of that witness.
`If a deposition of a Unified witness is conducted, Apple shall be entitled to participate and
`separately examine the witness after MemoryWeb has completed its examination.
`
`

`

`The parties agree to negotiate with Unified in good faith regarding the production of
`documents and deposition scheduling and scope.
`The parties have a disagreement about and reserve their positions on the admissibility and
`permissible use in this proceeding of the prior Jakel deposition transcript (i.e., EX2036 in
`IPR2021-01413).
`Any deposition of a witness shall be conducted on a date acceptable to the parties,
`notwithstanding Due Date 3.
`
`Due Date 4: Within 14 days of completion of authorized discovery from Apple and Unified
`Patents, MemoryWeb may file a Motion to Terminate of up to 7000 words.
`MemoryWeb’s motion for relief may address at least: (1) estoppel under 35 U.S.C. § 315(e)(1)
`as to claims 1-7, including addressing Apple’s RPI status in the Unified IPR, and (2) discretionary
`estoppel based on at least 35 U.S.C. § 315(d), 37 CFR § 42.72, and 37 CFR § 42.5 as to claims 8-
`19.
`
`
`Due Date 5: Within 21 days of MemoryWeb’s Motion to Terminate, Apple may file a response to
`MemoryWeb’s Motion to Terminate of up to 7,000 words.
`If Apple submits a declaration after Due Date 4, Apple will make declarant available for
`deposition within 7 days of Due Date 5, and MemoryWeb may file a Motion for Observations
`on the cross examination of the reply witness (not to exceed 1,000 words) within 7 days of the
`deposition.
`
`Due Date 6: Two weeks before oral hearing each party may file a motion to exclude.
`
`Due Date 7: One week before the Oral Hearing, each party may file an opposition to the other
`party’s Motion to Exclude (if any)
`
`
`
`Due Date 8: Oral hearing (the Board’s convenience prior to the statutory deadline).
`The parties agree that, at the oral hearing, MemoryWeb may present arguments that would
`otherwise have been submitted in a Reply and Apple may respond to those arguments that
`would have otherwise been submitted in a Sur-Reply, as well as any observations by
`MemoryWeb on a deposition under Due Date 5.
`
`
`
`JEFFREY P. KUSHAN
`
`SIDLEY AUSTIN LLP
`1501 K Street, N.W.
`Washington, DC 20005
`+1 202 736 8914
`jkushan@sidley.com
`www.sidley.com
`
`
`
`

`

`
`
`****************************************************************************
`************************
`This e-mail is sent by a law firm and may contain information that is privileged or
`confidential.
`If you are not the intended recipient, please delete the e-mail and any attachments and notify
`us
`immediately.
`
`****************************************************************************
`************************
`
`