Unified Patents, LLC v. MemoryWeb LLC

Unified Patents, LLC, a member-based organization focused on deterring Non-Practicing Entities (NPEs) from asserting low-quality patents, initiated a Post-Grant Review (PGR) against MemoryWeb LLC. Unified Patents operates by challenging the validity of patents at the Patent Trial and Appeal Board (PTAB) on behalf of its members, independently of their direct influence, to reduce frivolous patent litigation. MemoryWeb LLC appears to function as a patent assertion entity (PAE) in the digital file management space, holding and asserting patents in this technology area. The patent at issue in this specific PGR is U.S. Patent No. 11,163,823, which broadly covers methods and apparatus for managing digital files. The alleged infringing technology, while not directly "accused" in a PGR context, pertains to the fundamental operations of organizing and handling digital data, a field critical to many modern technology companies.

This case was heard at the Patent Trial and Appeal Board (PTAB), an administrative tribunal within the U.S. Patent and Trademark Office. The PTAB is a specialized venue for reviewing patentability, offering a more streamlined and often faster alternative to district court litigation. The procedural posture involves Unified Patents petitioning the PTAB to find claims 1-20 of MemoryWeb's patent unpatentable, culminating in a Final Written Decision by the PTAB that indeed found these claims unpatentable.

The case is notable for several reasons, primarily due to Unified Patents' role in challenging patents held by NPEs and the broader context of MemoryWeb's patent assertion activities. While this particular PGR focuses on patent 11,163,823, related proceedings involving MemoryWeb's other digital file management patents (e.g., U.S. Patent No. 10,621,228) against Unified Patents' members like Apple and Samsung have drawn significant attention to "Real Party in Interest" (RPI) disputes. These RPI controversies, where MemoryWeb argued that Unified's members should be named as co-petitioners, highlight the strategic importance of third-party challenges like those brought by Unified Patents in the patent ecosystem and the ongoing judicial scrutiny of their operational independence. MemoryWeb has also pursued appeals of PTAB invalidity decisions related to its portfolio at the Federal Circuit, indicating a persistent effort to defend its digital file management patents.

The case Unified Patents, LLC v. MemoryWeb LLC, PGR2022-00034, involves a Post-Grant Review (PGR) of U.S. Patent No. 11,163,823. This proceeding led to the unpatentability of the challenged claims.

Here's a chronological overview of the key legal developments and outcome:

PGR Filing & Initial Pleadings:

• 2022-03-30: Unified Patents, LLC filed a Post-Grant Review (PGR) petition (PGR2022-00034) against MemoryWeb LLC, challenging U.S. Patent No. 11,163,823. The petition asserted that Unified Patents was the sole real party-in-interest (RPI). MemoryWeb filed a preliminary response arguing that Apple and Samsung should have been named as RPIs.
• The challenged patent, US11163823B2, is directed to a method and apparatus for managing digital files.

Pre-trial Motions of Substance (within the PGR context):

• 2022-11-17: The PTAB issued an order denying MemoryWeb's request for discovery of a declarant's unfiled draft declaration.
• During the PGR proceeding, MemoryWeb, the Patent Owner, raised the issue of Real Party-in-Interest (RPI), contending that Apple and Samsung should have been identified as RPIs due to their membership with Unified Patents and alleged benefits received from Unified's patent challenges.

Final Written Decision & Outcome:

• 2023-03-29: The PTAB issued a Final Written Decision in PGR2022-00034, finding claims 1-20 of U.S. Patent No. 11,163,823 unpatentable.
• The PTAB also addressed the RPI issue in a related IPR (IPR2021-01413 involving MemoryWeb's U.S. Patent No. 10,621,228 B2, which also involved Unified Patents).

Appeal:

• MemoryWeb LLC appealed the PTAB's unpatentability finding to the Federal Circuit under case number 24-1322.
• 2024-01-04: MemoryWeb LLC filed its appeal at the Federal Circuit.
• 2025-12-19: The Federal Circuit affirmed the PTAB's ruling that U.S. Patent No. 11,163,823 was unpatentable, closing the appellate battle. This affirmance extinguished the patent's enforceability.

Parallel PTAB IPR/PGR Proceedings and their effect on litigation:

• While PGR2022-00034 specifically targeted U.S. Patent No. 11,163,823, MemoryWeb LLC was involved in other related PTAB proceedings and district court litigation concerning its patent portfolio, including other patents related to digital file management.
• IPR2021-01413: Unified Patents, LLC also filed an Inter Partes Review petition against MemoryWeb, LLC, concerning U.S. Patent No. 10,621,228 B2. In this IPR, the PTAB initially made an RPI determination, but the Director of the USPTO later partially vacated this determination, concluding it was not necessary to resolve the underlying proceeding.
• IPR2022-00222: In a separate IPR ([Samsung Electronics Co. Ltd.](/litigations/by-plaintiff/Samsung%20Electronics%20Co.%20Ltd.) v. MemoryWeb, LLC, IPR2022-00222), the PTAB issued a final written decision on December 8, 2023, holding that Unified Patents was the sole real party-in-interest, consistent with its independent operation without influence from members like Samsung.
• District Court Litigation: MemoryWeb, LLC had also asserted the '228 patent (U.S. Patent No. 10,621,228 B2) in district court proceedings against Samsung Electronics Co., Ltd. (Case No. 6:21-cv-00411, W.D. Tex.) and Apple Inc. (Case No. 6:21-cv-00531, W.D. Tex.).
• Separately, MemoryWeb, LLC v. Samsung Electronics Co., Ltd. (Case No. 3:22-cv-03776, N.D. Cal.) was a patent infringement case filed in June 2022, implicating five U.S. patents including those related to photo management. This case was dismissed with prejudice on March 9, 2026, without proceeding to trial.
• Another appeal, Memoryweb, LLC v. Unified Patents, LLC (Federal Circuit Case No. 24-1328) concerning U.S. Patent No. 10,621,228 B2, was filed on January 5, 2024, and terminated on October 24, 2025, by stipulated dismissal, with no merits ruling.

Unified Patents, LLC generally utilizes its in-house legal team for post-grant review (PGR) proceedings before the Patent Trial and Appeal Board (PTAB). While specific counsel of record for PGR2022-00034, Unified Patents, LLC v. MemoryWeb LLC, could not be definitively identified from publicly available summaries and legal news, the organization's Senior Patent Counsel are typically responsible for such matters.

Attorneys who prepare and litigate post-grant proceedings before the PTAB for Unified Patents, LLC, and therefore are likely candidates for roles in cases such as PGR2022-00034, include:

• Jordan Rossen, Senior Patent Counsel

  • Firm: Unified Patents, LLC (In-house)
  • Office Location: Washington, D.C. (Based on prior firm locations and Unified Patents' general hiring preferences for DC area, though remote work is possible).
  • Relevant Experience: Prior to joining Unified, Rossen practiced in the intellectual property litigation departments at Ropes & Gray and Paul Hastings for eleven years, representing clients before the PTAB, International Trade Commission, district courts, and the Federal Circuit across various industries including computer hardware and software, data processing, and medical devices.

• David Seastrunk, Senior Patent Counsel

  • Firm: Unified Patents, LLC (In-house)
  • Office Location: Undisclosed; often remote or Washington, D.C. area.
  • Relevant Experience: Before joining Unified Patents, Seastrunk practiced at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, where he was involved in all phases of post-grant proceedings, district court cases, and International Trade Commission investigations.

• Michelle Callaghan, Senior Patent Counsel

  • Firm: Unified Patents, LLC (In-house)
  • Office Location: Undisclosed; often remote or Washington, D.C. area.
  • Relevant Experience: Callaghan previously practiced at Erise IP, focusing on defending clients against patent demands in district courts, challenging patents before the PTAB, and preparing opinions on patent validity and infringement.

• Ellyar Barazesh, Senior Patent Counsel

  • Firm: Unified Patents, LLC (In-house)
  • Office Location: Undisclosed; often remote or Washington, D.C. area.
  • Relevant Experience: Barazesh's experience includes practice at Stoel Rives LLP and Wilmer, Cutler, Pickering, Hale, and Dorr LLP, with a focus on post-grant proceedings and district court litigation, as well as patent prosecution. His technical background spans electrical and mechanical technologies.

• Kelly Hughes, Senior Patent Counsel

  • Firm: Unified Patents, LLC (In-house)
  • Office Location: Undisclosed; often remote or Washington, D.C. area.
  • Relevant Experience: Hughes supports Unified's PTAB and appellate practice. She previously worked as a patent attorney at Erise IP, concentrating on patent litigations and PTAB practice.

Unified Patents, LLC, as a membership organization, aims to deter the assertion of "bad patents" through various activities, including filing post-grant petitions. While the specific names of the attorneys who represented Unified Patents in PGR2022-00034 are not explicitly listed in the available public information, these in-house Senior Patent Counsel are key members of their team responsible for PTAB litigation.

Jennifer Hayes has been identified as lead counsel representing MemoryWeb LLC in the Post-Grant Review (PGR) case PGR2022-00034.

• Name: Jennifer Hayes
• Role: Lead Counsel for Patent Owner
• Firm and Office Location: Information not found in the provided search results.
• Relevant Patent Litigation Experience: Information not found in the provided search results.

The search results indicate Jennifer Hayes signed a "PATENT OWNER'S REPLY TO PETITIONER'S OPPOSITION TO PATENT OWNER'S MOTION TO EXCLUDE" in the PGR2022-00034 proceeding. Further details regarding her firm, office location, and specific patent litigation experience were not readily available in the provided snippets. While other related PTAB cases involving MemoryWeb LLC were mentioned, specific counsel for MemoryWeb in those cases were not detailed in the same manner.