From:
`To:
`Subject:
`Date:
`
`Browne, Lynne
`Browne, Lynne
`FW: IPR2022-00222: Samsung v. MemoryWeb - Proposal from the Parties on further conduct of the proceedings
`Thursday, June 15, 2023 4:32:55 PM
`
`From: Hayes, Jennifer <jenhayes@nixonpeabody.com>
`Sent: Friday, June 9, 2023 8:57 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Schwartz, Daniel <djschwartz@nixonpeabody.com>; Werber, Matthew
`<mwerber@nixonpeabody.com>; Christopher, Angelo <achristopher@nixonpeabody.com>; Jeremy
`Monaldo <Monaldo@fr.com>; Karl Renner <renner@fr.com>; Hyun Jin In <in@fr.com>; IPR39843-
`0116IP1 <IPR39843-0116IP1@fr.com>; Girgis, Diana <dgirgis@nixonpeabody.com>
`Subject: IPR2022-00222: Samsung v. MemoryWeb - Proposal from the Parties on further conduct of
`the proceedings
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Your Honors,
`
`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 Board’s Order following joint proposal
`MemoryWeb’s Brief on Additional Discovery and Document and Testimony Subpoena to
`Unified Patents
`Samsung’s Brief on Forfeiture and/or Waiver
`Due Date 2: Two weeks after Due Date 1
`Samsung’s Response to MemoryWeb’s Brief on Additional Discovery and Subpoena to
`Unified Patents
`MemoryWeb’s Response to Samsung’s Brief on Forfeiture and/or Waiver
`
`
`Second Phase
`Due Date 3: If the First Phase of Briefing concludes with a Board Order granting MemoryWeb
`discovery on each of the items listed below, within 7 days of Board Order on the First Phase of
`Briefing
`
`
`
`
`
`
`
`o MemoryWeb will file as exhibits in this proceeding the non-confidential exhibits in
`IPR2021-01413 pertaining to RPI
`
`o If a deposition of a Unified witness is conducted, Samsung 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 deposition
`scheduling and scope
`
`

`

`o Samsung will produce to MemoryWeb, under seal, responsive non-privileged documents
`as follows: all non-privileged communications with Unified relating to MemoryWeb, the
`‘228 patent, the Unified IPR, or this IPR (IPR2022-00031); all agreements or contracts
`between Samsung and Unified, including Samsung’s membership agreement and any
`amendments or add-ons; a declaration (with any supporting exhibits) from a relevant
`Samsung declarant that addresses Samsung’s relationship with Unified as it relates to
`the present proceeding; and, a privilege log.
`o MemoryWeb would be permitted a deposition of that witness of that witness
`Due Date 4: If the First Phase of Briefing concludes with a Board Order granting MemoryWeb
`discovery and authorizes a motion to terminate, within 14 days of completion of authorized
`discovery from Samsung and Unified Patents
`MemoryWeb’s Motion to Terminate
`The brief will be limited to 30 pages
`Due Date 5: Within 21 days of MemoryWeb’s Motion to Terminate
`Samsung Response to Motion to Terminate
`Samsung’s brief will also be limited to 30 pages
`If Samsung submits declaration, Samsung will make declarant available within 7 days of
`Due Date 5
`Due Date 6: Within 7 days of Samsung’s response or 7 dates after a deposition if Samsung
`submits a declaration with its Response, MemoryWeb may file a 10 page reply
`Motions to Exclude
`Due Date 7: Two weeks before oral hearing
`Motions to Exclude (if any)
`Due Date 8: One week before Oral Hearing
`Opposition to Motions to Exclude (if any)
`
`Oral Hearing
`Due Date 9: At the Board’s convenience prior to the statutory deadline
`
`
`Best Regards,
`
`Jennifer Hayes
`
`
`Jennifer Hayes
`Partner
`jenhayes@nixonpeabody.com
`T/ 213.629.6179 M/ 650.575.2400 F/ 866.781.9391
`Nixon Peabody LLP
`300 South Grand Avenue, Suite 4100, Los Angeles, CA 90071-3151
`nixonpeabody.com @NixonPeabodyLLP
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