I R E L L & M A N E L L A L L P
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`INCLUDING PROFESSIONAL CORPORATIONS
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`Hon. Bryan F. Moore
`Hon. Brian J. McNamara
`Hon. Stacey G. White
`Patent Trial and Appeal Board
`United States Patent & Trademark Office
`600 Dulany St.
`Alexandria, VA 22314
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`Re: Notice of Parties to Parallel Litigation Relating to IPR2013-00004 /
`IPR2013-00257 and IPR2013-00007 / IPR2013-00256
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`Dear Judges Moore, McNamara and White:
`Patent Owner SoftView LLC1 had previously brought to the Board's attention
`parallel district court litigations relating to IPR2013-00004 / IPR2013-00257 and
`IPR2013-00007 / IPR2013-00256. See Patent Owner Softview LLC's Notice
`Pursuant to 37 C.F.R. 42.8, IPR2013-00004 (Paper No. 10) and IPR2013-00007
`(Paper No. 8) at 2 (identifying consolidated case SoftView LLC v. Apple Inc., et al.,
`Case No. 1:10-cv-00389-LPS (D. Del.) ("the District Court Litigations")); see also
`Memorandum Order, IPR2013-00004 (Ex. 2054) and IPR2013-00007 (Ex. 2075) at 3
`("[L]itigation should be somewhat simplified due to the estoppel effect on Kyocera –
`and Moving Defendants' agreements to be bound").
`
`Given the identification of the final composition of the Panel in the Trial
`Hearing Order dated December 19, 2013 (IPR2013-00004 [Paper No. 45] and
`IPR2013-00007 [Paper No. 44]), Patent Owner wishes to note that, in addition to
`Petitioners Kyocera Corp. and Motorola Mobility LLC, the following are current
`parties to the District Court Litigations:
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`1 Softview was an operating company founded by Gary Rohrabaugh, named
`inventor on the patents that are the subject of the IPRs, to commercialize the
`ClearView browser, the commercial embodiment of the inventions disclosed in those
`patents. Mr. Rohrabaugh was also a founder of Catarra, which previously owned the
`rights to the ClearView browser and to its patents.
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`A REGISTERED LIMITED LIABILITY LAW PARTNERSHIP
`INCLUDING PROFESSIONAL CORPORATIONS
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`I R E L L & M A N E L L A L L P
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`Hons. Moore, McNamara & White
`December 27, 2013
`Page 2
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`AT&T Mobility LLC
`Apple Inc.
`Dell Inc.
`Futurewei Technologies Inc.
`HTC America Inc.
`HTC Corp.
`Huawei Technologies, Co., Ltd.
`LG Electronics Mobilecomm USA Inc.
`LG Electronics USA, Inc.
`LG Electronics, Inc.
`Samsung Electronics America, Inc.
`Samsung Electronics Co. Ltd.
`Samsung Telecommunications America LLC
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`Patent Owner further notes that there may exist a "covered relationship,"
`between Judge White and Dell, Inc., ("Dell"), pursuant to 5 C.F.R. §
`2635.502(b)(1)(iv): "An employee has a covered relationship with: … (iv) Any
`person for whom the employee has, within the last year, served as an … attorney." It
`is Patent Owner's understanding that Judge White represented Dell as an attorney in
`multiple patent lawsuits within the past year. IPR2013-00004 (Ex. 2058) and
`IPR2013-00007 (Ex. 2079) at 12; IPR2013-00004 (Ex. 2059) and IPR2013-00007
`(Ex. 2080) at 26; IPR2013-00004 (Ex. 2060) and IPR2013-00007 (Ex. 2081) at 40-
`41; IPR2013-00004 (Ex. 2061) and IPR2013-00007 (Ex. 2082) at 55; and IPR2013-
`00004 (Ex. 2062) and IPR2013-00007 (Ex. 2083) at 5.
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`Dell is a party to the District Court Litigations, and thus would be a direct and
`substantial beneficiary of any cancellation of any claims in the IPRs. Moreover, in
`connection with a Court-ordered stay of the District Court Litigations, Dell has
`explicitly agreed to an estoppel based on the outcome of these IPRs. Memorandum
`Order, IPR2013-00004 (Ex. 2054) and IPR2013-00007 (Ex. 2075) at 3 ("[L]itigation
`should be somewhat simplified due to the estoppel effect on Kyocera – and Moving
`Defendants' agreements to be bound"); see also SoftView LLC v. Apple Inc., et al.,
`Case No., 1:10-cv-00389-LPS, D.I. 1010, IPR2013-00004 (Ex. 2057) and IPR2013-
`00007 (Ex. 2078) at 4 ("[S]hould the Court grant the requested stay (D.I. 981), the
`Moving Defendants [including Dell] would agree to be bound to the PTAB's
`determinations as to the specific prior art combinations actually considered by the
`PTAB during the review"). It is also Patent Owner's understanding that Judge White
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`A REGISTERED LIMITED LIABILITY LAW PARTNERSHIP
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`I R E L L & M A N E L L A L L P
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`Hons. Moore, McNamara & White
`December 27, 2013
`Page 3
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`has also previously worked for and represented Motorola, who is a named party in
`the IPRs.
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`Patent Owner respectfully submits this information because the Board may
`consider it to be relevant in identifying potential conflicts and complying with
`applicable standards of ethical conduct, including the standards set forth in 5 C.F.R. §
`2635.502(a):
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`Where an employee … knows that a person with whom he has a
`covered relationship is or represents a party to such matter, and where
`the employee determines that the circumstances would cause a
`reasonable person with knowledge of the relevant facts to question his
`impartiality in the matter, the employee should not participate in the
`matter unless he has informed the agency designee of the appearance
`problem and received authorization ….
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`Patent Owner is available for a call at the Board's convenience if the Board
`were to believe that such a call would be appropriate.
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` Respectfully submitted,
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`Dated: December 27, 2013
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`By: /Ben Yorks/
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`Ben Yorks
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`IRELL & MANELLA LLP
`Ben Yorks, Esq.
`PTO Reg. No. 33,609
`Babak Redjaian, Esq.
`PTO Reg. No. 42,096
`840 Newport Center Drive, Suite 400
`Newport Beach, CA 92660
`Telephone: (949) 760-0991
`Fax: (949) 760-5200
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`Attorneys for Patent Owner
`SoftView LLC
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`A REGISTERED LIMITED LIABILITY LAW PARTNERSHIP
`INCLUDING PROFESSIONAL CORPORATIONS
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`I R E L L & M A N E L L A L L P
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`Hons. Moore, McNamara & White
`December 27, 2013
`Page 4
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on December 27,
`2013, a copy of the foregoing document "Notice of Parties to Parallel Litigation
`Relating to IPR2013-00004 / IPR2013-00257 and IPR2013-00007 / IPR2013-00256"
`and related exhibits were served by electronic mail, as agreed to by the parties, upon
`the following:
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`Richard P. Bauer (richard.bauer@kattenlaw.com)
`Michael Dorfman (michael.dorfman@kattenlaw.com)
`Michael Tomsa (michael.tomsa@kattenlaw.com)
`Eric C. Cohen (eric.cohen@kattenlaw.com)
`Katten Muchin Rosenman LLP
`2900 K Street NW – Suite 200
`Washington, DC 20007-5118
`(202) 625-3500 (tel)
`(202) 298-7570 (fax)
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`Counsel for Kyocera Corporation.
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`John C. Alemanni (jalemanni@kilpatricktownsend.com)
`Candice C. Decaire (CDecaire@kilpatricktownsend.com)
`David A. Reed (DaReed@kilpatricktownsend.com)
`KILPATRICK TOWNSEND & STOCKTON LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101-2400
`(336) 607-7311 (tel)
`(336) 734-2621 (fax)
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`Counsel for Motorola Mobility LLC.
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`/Babak Redjaian/
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