IPR2021-01413 Unified Patents LLC v Memoryweb LLC May 22, 2023 paper 76

Director PTABDecision Review@uspto.gov Paper 76

571.272.7822 Date: May 22, 2023

PUBLIC VERSION

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE OFFICE OF THE UNDER SECRETARY OF COMMERCE

FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE

UNITED STATES PATENT AND TRADEMARK OFFICE

UNIFIED PATENTS, LLC,

Petitioner,

MEMORYWEB, LLC,

Patent Owner.

IPR2021-01413

Patent 10,621,228 B2

Before KATHERINE K. VIDAL, Under Secretary of Commerce for

Intellectual Property and Director of the United States Patent and

Trademark Office.

DECISION

Granting Director Review,

Vacating-in-part the Final Written Decision and Vacating Board Order

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I. INTRODUCTION

The Office received a request for Director Review of the Final

Written Decision (Paper 58 (confidential) and Paper 67 (public) (“Decision”

or “Final Written Decision”)) for the above-captioned case. See Paper 70

(confidential); Ex. 3100. Petitioner Unified Patents, LLC (“Unified”)

requests Director Review of the Board’s real party in interest (“RPI”)

determination in Section I.B. of the Decision that incorporates the Board’s

Order Identifying Real Party in Interest (Paper 56 (confidential) (“RPI

Order”)). Ex. 3100.

I have reviewed the request, the Board’s Decision, the RPI Order, and

the relevant filed papers and exhibits in the above-listed proceeding. I

determine that Director Review of the Board’s Decision is appropriate. See

Interim process for Director Review § 8 (setting forth scope of Director

Review) and § 10 (issues that may warrant Director Review). Concurrent

with this Decision, the Precedential Opinion Panel (“POP”) dismissed

Petitioner’s additional requests for rehearing and POP review of the RPI

Order. See Paper 62, Ex. 3001.

For the reasons set forth below, I vacate the Board’s RPI discussion in

the Final Written Decision (Section I.B.), and the RPI Order (Paper 56)

underlying that discussion.

II. BACKGROUND

Unified filed a Petition requesting inter partes review of claims 1–7 of

U.S. Patent No. 10,621,228 B2 (Ex. 1001, “the ’228 Patent”), certifying that

it “is the real party-in-interest.” Paper 2 (“Petition” or “Pet.”), 1. Although

Unified and Patent Owner MemoryWeb LLC (“MemoryWeb”) briefed and

argued, pre-institution, whether Unified should have named third parties

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Apple and Samsung as RPIs under 35 U.S.C. § 312(a)(2), the Board

“decline[d] to determine whether Apple and Samsung are real parties in

interest” in its Institution Decision because the Board found that “there is no

allegation in this proceeding of a time bar or estoppel based on an unnamed

RPI.” Paper 15, 13–14 (“Institution Decision”) (citing Paper 11, 1)

(emphasis added). Accordingly, the Board did “not address whether Apple

and Samsung are unnamed RPIs because, even if either were, it would not

create a time bar or estoppel under 35 U.S.C. § 315.” Id. at 13 (citing

SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11, 18

(PTAB Oct. 6, 2020) (precedential)). The Board instituted inter partes

review as to all challenged claims on all grounds raised in the Petition.

Following institution, MemoryWeb again argued that the Board

should terminate this proceeding because of Unified’s alleged failure to

name Apple and Samsung as RPIs. See Decision 4 (citing Paper 23, 14–26

(“Patent Owner’s Response” or “PO Resp.”) (confidential)). MemoryWeb

argued that, “[a]lternatively, the Board should find that Apple and Samsung

are estopped from challenging the validity of claims 1–7 of the ’228 patent

in” IPR2022-00031 (as to Apple) and IPR2022-00222 (as to Samsung). Id.

(quoting PO Resp. 14–15). Unified and MemoryWeb submitted briefing on

the RPI issue, and provided additional evidence as Exhibits 1030–1043 and

2027–2047. See Paper 29, 22–34 (Petitioner’s Reply) (confidential);

Paper 30 (public); Paper 35, 23–27 (Patent Owner’s Sur-Reply)

(confidential). The Board held a confidential hearing on the RPI issue. See

Paper 52 (confidential transcript); Paper 53 (public transcript).

Following the post-institution briefing, submission of additional

evidence, and confidential hearing, the Board issued an Order identifying

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Apple and Samsung as RPIs. See Decision 5 (incorporating RPI Order).

The Board determined that it was appropriate to decide whether Apple and

Samsung are RPIs in this proceeding “[b]ecause the issue of Section 315(e)

estoppel has been put before us [as relevant to the subsequent IPR

challenges filed by Apple and Samsung], and we now have a complete

factual record available to fully address the RPI question, and to avoid

unnecessary prejudice to Patent Owner.” RPI Order 6.

III. DISCUSSION

In the RPI Order, the Board held “if we do not decide the RPI issue

now, as Patent Owner urges, then the underlying purpose of Section 315(e)

would potentially be frustrated. Determining whether Apple or Samsung are

RPIs in this case is a necessary precursor to determining whether they would

be estopped in [] subsequent proceeding[s].” RPI Order 6. Absent an RPI

determination, “Patent Owner may have to continue to unnecessarily defend

against two subsequent IPR challenges filed by Apple and Samsung should

they have been named as RPIs in this case.” Id.

The precedential SharkNinja decision held that it best serves the

Office’s interests in cost and efficiency to not resolve an RPI issue when “it

would not create a time bar or estoppel under 35 U.S.C. § 315” in that

proceeding. SharkNinja, Paper 11, 18. SharkNinja further acknowledged

that patent owners “should not be forced to defend against later judicial or

administrative attacks on the same or related grounds by a party that is so

closely related to the original petitioner as to qualify as a real party in

interest,” but held that was not the case before the Board. Id. at 20 (quoting

Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1350 (Fed.

Cir. 2018)).

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Petitioner contends that SharkNinja’s reasoning should apply here,

where neither a time bar nor estoppel applies in this proceeding. See

Paper 70, 3. Accordingly, Petitioner contends “the panel erred by issuing a

non-binding advisory opinion” on RPI, which prejudices Apple and

Samsung by “prejudg[ing] the RPI issue without their participation,” where

that determination could bind Apple and Samsung in their subsequently-filed

proceedings. See id.

The Board can and should make a determination of the real parties in

interest or privity in any proceeding in which that determination may impact

the underlying proceeding, for example, but not limited to, a time bar under

35 U.S.C. § 315(b) or an estoppel under 35 U.S.C. § 315(e) that might

apply. That is not the situation here. The Board should not have determined

whether Apple and Samsung are RPIs in this proceeding given that

determination was not necessary to resolve the proceeding.

Accordingly, I vacate the Board’s RPI determination in the Final

Written Decision (pages 3–5, Section I.B.) and the Board’s RPI Order,

Paper 56, on which the Final Written Decision’s RPI determination is based.

IV. ORDER

In consideration of the foregoing, it is hereby:

ORDERED that the Board’s real party in interest determination in the

Final Written Decision (Section I.B.) is vacated; and

FURTHER ORDERED that the Board’s Order Identifying Real Party

in Interest (Paper 56) is vacated.

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PETITIONER:

Jonathan Strang

LATHAM & WATKINS LLP

jonathan.strang@lw.com

Michelle Aspen

Roshan Mansinghani

Ellyar Barazesh

UNIFIED PATENTS, LLC

michelle@unifiedpatents.com

roshan@unifiedpatents.com

ellyar@unifiedpatents.com

PATENT OWNER:

Jennifer Hayes

George Dandalides

NIXON PEABODY LLP

jenhayes@nixonpeabody.com

gdandalides@nixonpeabody.com