`
`In re Patent of:
`U.S. Patent No.:
`Issue Date:
`Appl. Serial No.:
`Filing Date:
`Title:
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`Attorney Docket No.: 104677-5008-826
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`Hulst et al.
`8,033,458
`October 11, 2011
`12/943,847
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`November 10, 2010
`DATA STORAGE AND ACCESS SYSTEMS
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`
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`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`MOTION FOR JOINDER
`UNDER 35 U.S.C. § 325(c) AND 37 C.F.R. §§ 42.22 AND 42.222(b) AND
`REQUEST FOR SHORTENED RESPONSE TIME FOR
`PATENT OWNER’S PRELIMINARY RESPONSE
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`Attorney Docket No 104677-5008-826
`CBM of U.S. Patent No. 8,033,458 B2
`STATEMENT OF THE PRECISE RELIEF REQUESTED
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`I.
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`Apple Inc. (“Petitioner” or “Apple”) respectfully requests joinder pursuant to
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`35 U.S.C. § 325(c) and 37 C.F.R. § 42.222(b) of the concurrently filed Petition for
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`Covered Business Method Review of U.S. Patent No. 8,033,458 (“the ’458 Patent”)
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`(“Apple Petition”) with pending Covered Business Method review, CBM2014-00192
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`(“Samsung CBM”), which was instituted by the Board on April 2, 2015. CBM2014-
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`00192, Pap. 7.
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`Joinder is appropriate because it will promote efficient resolution of the validity
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`of the ’458 Patent, as the timely Apple Petition involves the same ’458 patent, same
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`claim at issue, and same § 101 grounds instituted in the Samsung CBM, while relying
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`on the same arguments and evidentiary record.1 No new grounds of unpatentability
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`are asserted in the petition, and there will be at most a minimal impact on the trial
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`schedule for the existing review; further, Apple identifies in Section III.D, below,
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`procedures the Board may adopt to simplify briefing and discovery. Notably, while
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`Apple previously filed a petition directed at the same claim on § 101 grounds, Apple’s
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`petition was not instituted on the claim challenged here because the Board had already
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`instituted Samsung’s CBM the week before. Apple thus seeks to join the Samsung
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`proceedings so that, if necessary, Apple can ensure that the proceedings on this claim
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`1 Apple’s Exhibits are identical to their corresponding Samsung Exhibits, but have
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`been re-stamped as “Apple” exhibits.
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`Attorney Docket No 104677-5008-826
`CBM of U.S. Patent No. 8,033,458 B2
`continues in the event Samsung seeks to terminate them based on settlement or other
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`factors.
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` In conjunction with this request for joinder, Petitioner respectfully requests
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`that, to the extent Patent Owner Smartflash LLC (“Smartflash” or “Patent Owner”)
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`determines to file a Preliminary Response despite the fact that the Apple Petition
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`presents identical arguments, the Board specify a shortened response period of at
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`most two (2) weeks (to May 14, 2015) . Petitioner has also requested a call with the
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`Board to discuss scheduling for these proceedings, including the time for briefing on
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`this Motion.
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`Petitioner also informed counsel for Patent Owner of its intent to seek joinder,
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`and Patent Owner has indicated that it opposes.
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`II. STATEMENT OF MATERIAL FACTS
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`A. On September 26, 2014, petitioners Samsung Electronics America, Inc.,
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`Samsung Electronics Co., Ltd., and Samsung Telecommunications America,
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`LLC (“Samsung”) requested Covered Business Method review of claim 11 of
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`the ’458 patent under two grounds of unpatentability. CBM2014-00192, Pap.
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`2.
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`B.
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`The Patent Owner, listed as Smartflash LLC (“Smartflash” or “Patent
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`Owner”), submitted a Preliminary Response on January 6, 2015. CBM2014-
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`00192, Pap. 5.
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`Attorney Docket No 104677-5008-826
`CBM of U.S. Patent No. 8,033,458 B2
`In a decision dated April 2, 2015, the Board instituted Covered Business
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`C.
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`Method review on one of the two requested grounds, i.e., that Claim 11 is
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`directed to patent ineligible subject matter under 35 U.S.C. § 101. CBM2014-
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`00192, Pap. 7.
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`D. Apple’s own earlier petition for review of Claim 11 on § 101 grounds—
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`although granted on other claims—was denied as to Claim 11 on April 10,
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`2015 in light of the institution of trial on that claim in CBM2014-00192. See
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`CBM2015-00016, Pap. 23, at 20.
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`E.
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`The Apple Petition that accompanies the present Motion for Joinder was
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`filed within 20 days of the decision noted above in CBM2015-00016, and
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`includes only this same ground of unpatentability that was instituted in the
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`Samsung CBM for the ’458 patent (CBM2014-00192).
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
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`The Leahy-Smith America Invents Act (“AIA”) permits joinder of Covered
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`Business Method review (“CBM”) proceedings. The statutory provision governing
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`joinder of post-grant review proceedings (applicable to CBMs under AIA § 18(a)(1)) is
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`35 U.S.C. § 325(c), which reads as follows:
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`(c) JOINDER.-- If more than 1 petition for a post-grant
`review under this chapter is properly filed against the same
`patent and the Director determines that more than 1 of
`these petitions warrants the institution of a post-grant
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`Attorney Docket No 104677-5008-826
`CBM of U.S. Patent No. 8,033,458 B2
`review under section 324, the Director may consolidate
`such reviews into a single post-grant review.
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`37 C.F.R. § 42.222(a) provides that, “[w]here another matter involving the
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`patent is before the Office, the Board may during the pendency of the post-grant
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`review enter any appropriate order regarding the additional matter including providing
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`for the stay, transfer, consolidation, or termination of any such matter.” “The Board
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`will determine whether to grant joinder on a case-by-case basis, taking into account
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`the particular facts of each case, substantive and procedural issues, and other
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`considerations.” IPR2013-00385, Pap. 17 at 3 (citing 157 CONG. REC. S1376 (daily
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`ed. Mar. 8, 2011) (statement of Sen. Kyl)). “The Board’s rules for AIA proceedings
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`‘shall be construed to secure the just, speedy, and inexpensive resolution of every
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`proceeding.’” CBM2014-00115, Pap. 8 at 19 (citing 37 C.F.R. § 42.1(b); 77 Fed. Reg.
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`at 48,758). And the Board should “also take into account the policy preference for
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`joining a party that does not present new issues that might complicate or delay an
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`existing proceeding.” See IPR2013-00385, Pap. 17 at 10 (citing 157 CONG. REC.
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`S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (“[Sections 315(c) and 325(c)
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`allow joinder of inter partes and post-grant reviews.] The Office anticipates that
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`joinder will be allowed as of right – if an inter partes review is instituted on the basis
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`of a petition, for example, a party that files an identical petition will be joined to that
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`proceeding, and thus allowed to file its own briefs and make its own arguments.”)
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`(emphasis added)).
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`Attorney Docket No 104677-5008-826
`CBM of U.S. Patent No. 8,033,458 B2
`The Board has identified a Representative Order, IPR2013-0004 Paper 15,
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`regarding motions for joinder, which directs a movant to: (1) “explain the reasons
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`why joinder is appropriate,” (2) “identify any new ground of unpatentability being
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`raised” in the petition, (3) explain how the impact on the schedule and costs of the
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`current proceedings will be minimized, and (4) “specifically address how briefing
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`and/or discovery may be simplified to minimize schedule impact.” IPR2013-0004,
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`Pap. 15 at 4. These factors are addressed below and all point to granting the instant
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`motion.
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`A. Joinder Is Appropriate
`The Board has authority to join a properly-filed CBM petition to an instituted
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`CBM proceeding. See 35 U.S.C. § 325(c). Petitioner submits that the Apple Petition
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`and concurrently filed Motion for Joinder are timely under 35 U.S.C. § 325(c) and 37
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`C.F.R. §§ 42.22 and 42.222(b). 37 C.F.R. § 42.222 states that a motion for joinder is
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`to be filed “no later than one month after the institution date of any post-grant review
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`for which joinder is requested.” CBM2014-00192 was instituted on April 2, 2015.
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`CBM2014-00192, Pap. 7. The Petitioner filed the Apple Petition concurrently with
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`this Motion for Joinder on April 30, 2015, which is no later than one month from the
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`institution of CBM2014-00192.
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`Further, joinder is appropriate as the Apple Petition involves the same ’458
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`patent with the same claim at issue and challenged on the same instituted ground with
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`the same arguments raised by Samsung. Accordingly, the Apple Petition does not
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`Attorney Docket No 104677-5008-826
`CBM of U.S. Patent No. 8,033,458 B2
`raise new grounds of unpatentability not already authorized in the institution decision
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`of CBM2014-00192. In addition, Apple re-filed the same declaration from the same
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`declarant as in the Samsung CBM petition, Dr. Jeffrey Bloom. The only substantive
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`differences in Apple’s Petition are that portions regarding prior art references on
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`which a trial was not instituted in the Samsung CBM petition have been removed,
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`discussions regarding claim construction now reflect the Board’s claim constructions
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`in its institution decision in CBM2014-00192,2 and the sections on Real Party-In-
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`Interest, Related Matters, and Counsel have been appropriately updated. Based on
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`the substantial identity of the Apple Petition with the Samsung Petition, the
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`arguments and evidence present no new issues that would complicate or delay the
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`proceeding.
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`Furthermore, Apple seeks joinder based only on the instituted grounds. Apple
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`previously sought Covered Business Method review of claims 1, 6, 8, 10, and 11of the
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`’458 Patent on §101 grounds in CBM2015-00016. There, the Board agreed that Apple
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`“demonstrated that it is more likely than not that the challenged claims are
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`unpatentable under 35 U.S.C. § 101,” but declined to institute CBM review of claim
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`2 As noted in Apple’s Petition, Apple submits that, under these circumstances and the
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`broadest reasonable interpretation standard applicable in this review, it would be
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`appropriate for the Patent Trial and Appeal Board (“PTAB”) to adopt the
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`constructions that it set forth in its institution decision in CBM2014-00192.
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`Attorney Docket No 104677-5008-826
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`11 because CBM2014-00192 had already instituted review of that claim on § 101
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`grounds. See CBM2015-00016 (Pap. 23) at 20. In light of that denial, less than three
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`weeks ago, Apple should be permitted to join these proceedings to ensure that, even if
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`Samsung should seek to terminate its involvement in CBM2014-00192 (e.g., as a result
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`of settlement), Apple would be able to see the § 101 challenge to claim 11 through to
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`a final written decision, since it was not permitted to do so in CBM2015-00016.
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`For all of the aforementioned reasons, joinder is appropriate.
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`B. No New Grounds of Unpatentability Are Asserted In the Petition
`The Apple petition does not assert any new grounds of unpatentability. It
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`involves the same ’458 patent and—as discussed above—the same arguments,
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`evidence and grounds of unpatentability as the Board instituted in CBM2014-00192.
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`Although it otherwise presents the same arguments as the Samsung Petition, the
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`Apple Petition here removes grounds on which the Board did not institute in
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`CBM2014-00192, and Apple does not assert those grounds in its concurrently filed
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`petition.
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`C. Joinder Will Have At Most a Minimal Impact On the Trial Schedule And
`Costs For the Existing Review
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`Joinder will have minimal impact on the trial schedule and costs for the existing
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`review. Here, joinder need not materially affect the schedule and will minimize costs
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`because Petitioner does not raise any issues that are not already before the Board.
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`Indeed, the Petition includes only those grounds on which the Samsung CBM was
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`Attorney Docket No 104677-5008-826
`CBM of U.S. Patent No. 8,033,458 B2
`instituted, and the invalidity grounds were essentially copied verbatim from the
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`Samsung CBM petition. Because the claim is challenged on § 101 grounds—a legal
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`inquiry—and the same record, there will not be a need for additional factual findings
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`or discovery based on joinder of an additional party. As noted above, Apple has re-
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`filed the same expert declaration submitted by Samsung, and so this declaration
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`contains no material that is not already in the previously-filed declaration.
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`Accordingly, a second deposition of a second expert is not necessary. Also, the
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`specific procedures detailed below to simplify briefing and discovery should help
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`avoid any impact on the trial schedule and minimize costs. As noted above, Petitioner
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`has also requested a call with the Board to discuss scheduling for these proceedings,
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`and would propose a common schedule. In particular, because this Petition raises
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`identical issues, Patent Owner may not require a Preliminary Response, and even if
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`one is filed, Apple respectfully submits that the Board may be in a position to decide
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`again the same question of institution within a few weeks, likely before the current
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`Due Date 1 for Patent Owner’s Response in the CBM2014-00192 matter. To the
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`extent this may not be practical, and to the extent Patent Owner deems it necessary
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`despite the identity of arguments and evidence, Apple would agree that Patent Owner
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`may file an additional seven-page supplemental Response addressing the Apple
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`Petition one week after current Due Date 1, on June 8, 2015. The remainder of the
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`existing schedule could then remain unchanged, as outlined in the attached
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`Petitioner’s Proposed Schedule. Alternatively, Apple is amenable, in coordination
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`Attorney Docket No 104677-5008-826
`CBM of U.S. Patent No. 8,033,458 B2
`with Samsung and Patent Owner, to other arrangements the Board deems
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`appropriate.
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`Accordingly, this factor also points in favor of joinder.
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`D. Procedures to Simplify Briefing and Discovery
`Given that Petitioner Apple will be addressing identical grounds for an identical
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`claim, the Board may adopt procedures similar to those adopted in IPR2013-00256
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`and IPR2013-00385. In those cases, the Board ordered the petitioners to file
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`consolidated filings, for which the first set of petitioners (here, Samsung) were
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`responsible, and allowed the new petitioner (here, Apple) to file separate filings, if any,
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`of no more than seven pages directed only to points of disagreement with the other
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`petitioners. IPR2013-00385, Pap. 17 at 8; IPR2013-00256, Pap. 10 at 8-9. The Board
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`also allowed the Patent Owner a corresponding number of pages to respond to any
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`separate filings. Id. The Board recognized that this procedure would minimize any
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`complication or delay caused by joinder, while providing the parties an opportunity to
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`address all issues that may arise. Apple agrees to such procedures in the present case.
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`In addition, Apple agrees to coordinate and work together with Samsung to
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`manage the time normally allotted and to avoid redundancy. See IPR2013-00385,
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`Paper 17 at 9; IPR2013-00256, Paper 10 at 9-10. Furthermore, Apple agrees that
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`Samsung will be permitted to ask questions before Apple at any deposition and
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`present argument before Apple at any oral argument if Samsung so chooses. See
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`IPR2013-00385, Paper 17 at 9. Further, if the parties are unable to reach agreement,
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`Attorney Docket No 104677-5008-826
`CBM of U.S. Patent No. 8,033,458 B2
`Apple will request a conference call. Id. Consequently, these procedures will help
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`minimize any prejudice or burden on the parties based on joinder.
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`E. Request for Shortened Preliminary Response Period
`Petitioner respectfully requests that the Board specify a shortened response
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`period of at most two (2) weeks (to May 14, 2015) for Patent Owner to file a
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`Preliminary Response to the Petition, to the extent it determines such a Response is
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`necessary. Patent Owner and its counsel are already quite familiar with the patent and
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`claim at issue, as well as the specific ground of unpatentability at issue here. Patent
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`Owner has already provided a Preliminary Response in CBM2014-00192, and there
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`has already briefed, for example, the threshold question of whether the patent at issue
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`qualifies for a CBM review, and also included argument responding to the § 101
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`grounds on which institution was ultimately granted. Given the common issues
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`already raised in each proceeding, this will not cause undue prejudice, and will increase
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`the efficiencies for the parties and the Board. Since this Petition involves identical
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`issues, Apple respectfully submits the Board may be in a position to resolve this same
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`question of institution approximately two weeks after the Patent Owner’s Preliminary
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`Response, should Patent Owner choose to submit one.
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`IV. Conclusion
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`For the foregoing reasons, Petitioner respectfully requests that its Petition for
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`Covered Business Method Review of U.S. Patent No. 8,033,458 be granted, and that
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`the Board grant this Motion for Joinder to join this proceeding with CBM2014-00192
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`CBM of U.S. Patent No. 8,033,458 B2
`and for a shortened period of at most two (2) weeks (to May 14, 2015) for a Patent
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`Owner Preliminary Response, together with an accelerated schedule for briefing on
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`this Motion.
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`Dated: April 30, 2015
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`Respectfully submitted,
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`By: /J. Steven Baughman/
`J. Steven Baughman, Lead Counsel
`Reg No. 47,414
`ROPES & GRAY LLP
`One Metro Center
`700 12th Street NW, Suite 900
`Washington, DC 20005-3948
`steven.baughman@ropesgray.com
`
`Mailing address for all PTAB
`correspondence:
`ROPES & GRAY LLP,
`IPRM – Floor 43
`Prudential Tower
`800 Boylston Street
`Boston, MA 02199-3600
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`Attorneys for Petitioner, Apple Inc.
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`Attorney Docket No 104677-5008-826
`CBM of U.S. Patent No. 8,033,458 B2
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`PETITIONER’S PROPOSED SCHEDULE
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`Current Schedule in
`CBM2014-00192
`(See Pap. 8)
`June 1, 2015
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`July 31, 2015
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`Petitioner’s Proposal
`for Schedule with
`Joinder
`June 1, 2015
`To the extent necessary,
`a 7-page supplemental
`Response addressing
`Apple Petition may be
`submitted on June 8,
`2015 (assuming
`institution decision circa
`May 28, 2015)
`July 31, 2015
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`August 31, 2015
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`August 31, 2015
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`September 21, 2015
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`September 21, 2015
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`October 5, 2015
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`October 5, 2015
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`October 13, 2015
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`October 13, 2015
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`October 29, 2015
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`October 29, 2015
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`-13-
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`Due Date 1
`Patent owner’s response to the
`petition
`Patent owner’s motion to amend
`the patent
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`Due Date 2
`Petitioner’s reply to patent
`owner’s response to petition
`Petitioner’s opposition to motion
`to amend
`Due Date 3
`Patent owner’s reply to
`petitioner’s opposition to motion
`to amend
`Due Date 4
`Motion for observation regarding
`cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`Due Date 5
`Response to observation
`Opposition to motion to exclude
`Due Date 6
`Reply to opposition to motion to
`exclude
`Due Date 7
`Oral argument (if requested)
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the foregoing MOTION FOR
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`JOINDER UNDER 35 U.S.C. § 325(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
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`AND REQUEST FOR SHORTENED RESPONSE TIME FOR PATENT
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`OWNER’S PRELIMINARY RESPONSE has been served by U.S. Express Mail on
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`Patent Owner indicated for U.S. Patent No. 8,033,458 B2 through the following
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`correspondence address of record:
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`Davidson Berquist Jackson & Gowdey LLP
`8300 Greensboro Dr, Suite 500
`McLean, VA 22102
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`Dated: April 30, 2015
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`
`
` /Lauren N. Robinson /
`Lauren N. Robinson
`ROPES & GRAY LLP
`1900 University Ave., 6th Floor
`East Palo Alto, CA 94303
`(650) 617-4000
`
`