Filed on behalf of Microsoft Corporation
`
`By: John D. Vandenberg (Reg. No. 31,312)
`
`john.vandenberg@klarquist.com
`Stephen J. Joncus (Reg. No. 44,809)
`stephen.joncus@klarquist.com
`Klarquist Sparkman LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Telephone: (503) 595-5300
`Facsimile: (503) 595-5301
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`MICROSOFT CORPORATION
`Petitioner
`
`v.
`
`PROXYCONN, INC.
`Patent Owner
`
`____________
`
`
`Patent 6,757,717 B1
`
`____________
`
`MOTION FOR JOINDER TO RELATED
`INSTITUTED INTER PARTES REVIEW (37 C.F.R. § 42.122(b))
`
`
`
`By: John D. Vandenberg (Reg. No. 31,312)
`
`john.vandenberg@klarquist.com
`Stephen J. Joncus (Reg. No. 44,809)
`stephen.joncus@klarquist.com
`Klarquist Sparkman LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Telephone: (503) 595-5300
`Facsimile: (503) 595-5301
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`MICROSOFT CORPORATION
`Petitioner
`
`v.
`
`PROXYCONN, INC.
`Patent Owner
`
`____________
`
`
`Patent 6,757,717 B1
`
`____________
`
`MOTION FOR JOINDER TO RELATED
`INSTITUTED INTER PARTES REVIEW (37 C.F.R. § 42.122(b))
`
`
`
`
`
`Petitioner Microsoft Corporation files this Motion for Joinder of the Petition
`
`For Inter Partes Review Of Claims 6, 7, 9, 11, 12 And 14 Of U.S. Patent No.
`
`6,757,717 (“Second Petition”), with the instituted inter partes review, Microsoft
`
`Corporation v. Proxyconn, Inc., Case No. IPR2012-00026 (TLG) (“IPR2012-
`
`00026”), pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b).
`
`No fee is required for consideration of this Motion. Petitioner has paid the
`
`fee for the IPR2012-00026 and will be paying the fee for the Second Petition for
`
`inter partes review. Should this be incorrect, the Patent Office is authorized to
`
`charge Deposit Account 02-4550 the necessary fee.
`
`I.
`
`APPLICABLE RULES
`
`37 C.F.R. § 42.122(b) states:
`
`Request for joinder. Joinder may be requested by a patent owner or
`
`petitioner. Any request for joinder must be filed, as a motion under
`
`§ 42.22, no later than one month after the institution date of any
`
`inter partes review for which joinder is requested. The time period
`
`set forth in § 42.101(b) shall not apply when the petition is
`
`accompanied by a request for joinder.
`
`II. RELIEF REQUESTED
`
`In this Motion, Petitioner Microsoft requests that the Second Petition be
`
`joined with IPR2012-00026.
`
`MOTION FOR JOINDER
`
`
`
`Page 1
`
`
`
`
`
`III. STATEMENT OF MATERIAL FACTS
`
`1.
`
`On November 4, 2011, Proxyconn, Inc. filed a suit against Microsoft
`
`and three Microsoft customers (Dell, HP and Acer), Proxyconn Inc. v. Microsoft
`
`Corporation, et al., Case No. SA CV11-1681 DOC (JPRx) [consolidated with Case
`
`Nos. SA CV11-1682 DOC (JPRx), SA CV11-1683 DOC (JPRx), and SA CV11-
`
`1684 DOC (JPRx)], pending in the U.S. District Court for the Central District of
`
`California (the “’717 Concurrent Litigation”).
`
`2.
`
`On September 18, 2012, Microsoft filed a Petition for Inter Partes
`
`Review requesting review of claims 1, 3, 10-12, 14 and 22-24 of U.S. Patent No.
`
`6,757,717, now styled, Microsoft Corporation v. Proxyconn, Inc., Case No.
`
`IPR2012-00026 (TLG). That set of challenged claims constituted the entire set of
`
`claims in this patent that Proxyconn had by then asserted, at some point, in the
`
`’717 Concurrent Litigation.
`
`3.
`
`On October 9, 2012, Proxyconn informed Microsoft that, in addition
`
`to the claims already identified, it intended to assert claims 6 and 9.
`
`4.
`
`On November 2, 2012, Proxyconn and Microsoft entered into a
`
`stipulation to stay the ’717 Concurrent Litigation unless the Board declines to
`
`institute an inter partes review or unless the Board agrees to institute an inter partes
`
`review on less than all challenged claims and Proxyconn selects to terminate the
`
`stipulation. (Ex. 1012). The stipulation included an agreement by Proxyconn and
`
`MOTION FOR JOINDER
`
`
`
`Page 2
`
`
`
`
`
`Microsoft that Microsoft shall file a second inter partes review challenging at least
`
`claims 6 and 9 within three weeks of the Board instituting an inter partes review
`
`based on the September 18, 2012 petition.
`
`5.
`
`On December 21, 2013, the Board instituted trial on claims 1, 3, 10,
`
`and 22-24 (“IPR2012-00026 Decision”).
`
`6.
`
`On January 3, 2013, Proxyconn served supplemental infringement
`
`contentions on Microsoft asserting additional claims 6, 7, and 9.
`
`7.
`
`On January 4, 2013, Microsoft filed a Motion for Rehearing of the
`
`Decision On Request For Inter Partes Review in IPR2012-00026, arguing in part
`
`that the trial should include claims 11, 12, and 14.
`
`8.
`
`Concurrently with this Motion, Microsoft is filing its Second Petition,
`
`challenging claims 6, 7, and 9, and also again challenging claims 11, 12, and 14
`
`but on new grounds.
`
`9.
`
`Submitted with the Second Petition is Exhibit 1012, a true and correct
`
`copy of the Joint Stipulation Requesting Stay of Case Pending Inter Partes Review,
`
`filed on November 2, 2012 in the ’717 Concurrent Litigation (Dkt. No. 90).
`
`IV. ARGUMENT
`
`The Board has authority under 35 U.S.C. § 315(c) to join a properly-filed
`
`second inter partes review petition to an instituted inter partes review proceeding.
`
`This request for joinder is timely and the time periods set forth in 37 C.F.R. §
`
`MOTION FOR JOINDER
`
`
`
`Page 3
`
`
`
`
`
`42.101(b) do not apply to the Second Petition because it is accompanied by this
`
`request for joinder. 37 C.F.R. § 42.122(b).
`
`The Second Petition involves the same parties—Proxyconn and Microsoft—
`
`and the same patent. Both parties agree to this requested joinder. (Ex. 1012).
`
`Thus, the patent owner is not prejudiced by joinder of the Second Petition with
`
`IPR2012-00026.
`
`The Second Petition challenges six claims. Three of the challenged claims
`
`(claims 6, 7, and 9) were asserted in the litigation only after the first petition was
`
`filed. Petitioner has not unduly delayed seeking inter partes review of these newly
`
`asserted claims.
`
`The other three claims (claims 11, 12, and 14) were part of IPR2012-00026
`
`and Microsoft has filed a motion for rehearing of the decision to exclude those
`
`three claims from the trial. Microsoft also has included claims 11, 12, and 14 in
`
`the Second Petition, arguing different grounds for invalidating the claims, in part
`
`based on the Board’s claim interpretation in its IPR2012-00026 Decision.
`
`Joinder will not unduly delay the IPR2012-00026. The patent owner has
`
`stipulated to not file a response to this Second Petition.
`
`Therefore, the Second Petition is related to IPR2012-00026, and joining the
`
`Second Petition with IPR2012-00026 would not prejudice or alarm Proxyconn.
`
`Microsoft requests joinder of the Second Petition with IPR2012-00026.
`
`MOTION FOR JOINDER
`
`
`
`Page 4
`
`
`
`
`
`Dated: January 11, 2013
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`/John D. Vandenberg/
`John D. Vandenberg
`Registration No. 31312
`Stephen J. Joncus
`Registration No. 44809
`Klarquist Sparkman LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Telephone: (503) 595-5300
`Facsimile: (503) 595-5301
`
`MOTION FOR JOINDER
`
`
`
`Page 5
`
`
`
`
`
`Certificate of Service in Compliance With 37 C.F.R. § 42.6(e)(4)
`
`The undersigned certifies that a complete copy of this Motion for Joinder
`
`was served on the official correspondence address for the ’717 Patent shown in
`
`PAIR and the attorneys of record for Plaintiff in this proceeding and in the
`
`concurrent litigation matter:
`
`MATTHEW L. CUTLER
`BRYAN K. WHEELOCK
`DOUGLAS A. ROBINSON
`HARNESS, DICKEY & PIERCE, PLC
`7700 BONHOMME, SUITE 400
`ST. LOUIS, MO 63105
`
`GENE SCOTT
`PATENT LAW & VENTURE GROUP
`36 EXECUTIVE PARK, SUITE #110
`IRVINE, CALIFORNIA 92614
`
`MARC A. FENSTER
`ANDREW D. WEISS
`RUSS AUGUST & KABAT
`12424 WILSHIRE BOULEVARD, 12TH FLOOR
`LOS ANGELES, CALIFORNIA 90025
`
`via EXPRESS MAIL, on January 11, 2013.
`
`
`By:
`
`
`
`
`
`/John D. Vandenberg/
`John D. Vandenberg
`Registration No. 31312
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Telephone: (503) 595-5300
`Facsimile: (503) 595-5301
`
`CERTIFICATE OF SERVICE
`
`
`
`Page 1
`
`
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