From: Despertt, Sonja [maiito:Sonja.Despertt@USPTO.GOV] On Behalf Of Trials
`Sent: Monday, July 01, 2013 5:39 AM
`To: Cook, Elliot; Trials
`Cc: 'robert.mukai@bipc.com'; 'charles.wieland@bipc.com‘; Greg Dovel; Lavenue, Lionel; Gramenopoulos, C. Gregory;
`Weisenberger, Theresa; 'rwalters@mwe.com'; ‘chawkins@mwe.com'; 'Gabriel, Ray'
`Subject: RE: IPR2013-00071 & IPR2013-00386 - US. Patent No. 6,218,930
`
`Counsel,
`
`This is an improper submission and in the future you need to seek authorization from the Board prior to submitting
`something like this.
`if you have any further questions, please contact the Board.
`
`Regards,
`Sonja Despertt
`
`From: Cook, Elliot [mailto:Elliot.Cook@finn§gan.com]
`Sent: Wednesday, June 26, 2013 9:36 PM
`To: Trials
`
`Cc: 'robert.mukai@bipc.com'; 'charles.wieland@bipc.com'; 'greg@dovellaw.com'; Lavenue, Lionel; Gramenopoulos, C.
`Gregory; Weisenberger, Theresa; 'rwalters@mwe.com'; 'chawkins@mwe.com'; 'Gabriel, Ray'
`Subject: IPR2013—00071 & IPR2013—00386 — US. Patent No. 6,218,930
`
`Dear Members of the Patent Trial and Appeal Board,
`
`Further to today’s call in lPR2013—00071 and lPR2013—00386, Petitioners Sony, Axis, and HP provide, for the Board’s
`reference and Network-1’s counsel, the legislative history mentioned during that call. A copy is also provided.
`
`”Sections 315(c) and 325(c) allow joinder of inter partes and post—grant reviews. The Office anticipates that
`joinder will be allowed as of right—if an inter partes review is instituted on the basis of a petition, for example, a
`party that files an identical petition will be joined to that proceeding, and thus allowed to file its own briefs and
`make its own arguments. if a party seeking joinder also presents additional challenges to validity that satisfy the
`threshold for instituting a proceeding, the Office will either join that party and its new arguments to the existing
`proceeding, or institute a second proceeding for the patent. The Director is given discretion, however, over
`whether to allow joinder. This safety valve will allow the Office to avoid being overwhelmed if there happens to
`be a deluge ofioinder petitions in a particular case.” 157 Cong. Rec. $1360, $1376 (daily ed. Mar. 8, 2011)
`(statement of Sen. Kyl).
`
`Additionally, an issue was raised concerning the six references in the petition; namely, Woodmas, Television Production,
`Smith, Lehr, Matsuno, and Lamb. Of these references, Woodmas, Lehr, Matsuno, and Lamb were charted and/or listed
`in the December 2012 Invalidity Contentions served on Network-1 in the underlying litigation.
`in addition, Woodmas
`1
`
`N1-2014
`
`

`

`and Matsuno are included in the other IPRs (lPR2013—00092 and iPR2013—OOO71) to which Network—1 has already
`provided their Preliminary Response. Thus, at most, only two references (Television Production and Smith) could
`possibly be new.
`
`Best regards,
`Elliot
`
`Elliot C. Cook
`
`Attorney at Law
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`@1955 Freedom Brive, Reston, VA 2§4QO~56275
`office 57’1—203-2?38 l mobile 202~675»9518 l fax 202-40841400
`elliot.cook@finnegan.com l www.finnegan.com
`
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`exempt from disctosnre under applicable Saw. ii you believe you have received the message in error, nieaee adwee the sender by return email and delete it train
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`
`