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`Examiner: Unassigned
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`Group Art Unit: Unassigned
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`Monday, April 29, 2013
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`In re: Gary B. Rohrabaugh and
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`Scott A. Sherman
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`Patent No.: 7,461,353
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`Issued: December 2, 2008
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`For: Scalable Display of
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`Internet Content on Mobile Devices
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`MOTION FOR JOINDER
`UNDER 37 C.F.R. §§ 42.22 AND 42.122(b)
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`Motorola Mobility LLC (“Petitioner” or “Motorola Mobility”) submits
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`concurrently herewith a Petition for Inter Partes Review of U.S. Patent No.
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`7,461,353 (“Petition”). Petitioner respectfully requests that its Petition be granted
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`and that the proceedings be joined pursuant to 35 U.S.C. § 315(c) and 37 C.F.R.
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`§ 42.122(b) with the pending inter partes review proceedings concerning the same
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`patent in Kyocera Corporation v. SoftView LLC, Case IPR2013-00007 (“Kyocera
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`IPR”). Petitioner submits that joinder is appropriate because it will promote
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`efficient resolution of the issues without affecting scheduling for the pending
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`proceeding and will not prejudice the parties to the Kyocera IPR. Absent joinder,
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`Petitioner may be prejudiced because its interests will not be adequately
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`represented in the pending inter partes review proceedings.
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`Petitioner’s motion for joinder and accompanying Petition are timely under
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`37 C.F.R. §§ 42.22 and 42.122(b), as they are submitted within one month of
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`March 29, 2013, the date that the Kyocera IPR was instituted.1
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`I.
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`Background and Related Proceedings
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`SoftView LLC is the owner of U.S. Patent No. 7,461,353 (the “‘353 Patent”)
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`and related U.S. Patent No. 7,831,926 (the “‘926 Patent”). In 2010, SoftView sued
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`Apple, Inc. and AT&T Mobility for infringement of the ‘353 Patent and the ‘926
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`Patent (the “Patents-in-Suit”). SoftView LLC v. Apple Inc. et al., Case No. 10-389-
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`LPS (D. Del.) (the “Underlying Litigation”). On September 30, 2011, SoftView
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`filed an amended complaint alleging for the first time that Petitioner and 16 new
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`defendants infringed the ‘353 and ‘926 Patents. Id. (D.I. 108-3). The cases against
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`all of the defendants are consolidated for pre-trial purposes, and discovery is
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`ongoing.
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`In addition to the Underlying Litigation, the ‘353 Patent is the subject of
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`three pending reexamination proceedings including: (i) Inter Partes Reexamination
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`1 On April 26, 2013, counsel for Petitioner confirmed with Judge Joni Chang of
`the Patent Trial and Appeal Board that § 42.122(b) provides for filing motions for
`joinder and that prior authorization for filing a motion for joinder with a petition is
`not required under the Board’s rules. The Board further provided express
`authorization for Motorola’s Motion for Joinder on April 29, 2013. Judge Chang
`expressed that the Board would welcome the opportunity to discuss Petitioner’s
`joinder motion with Petitioner and the parties to the Kyocera IPR. Petitioner has
`reached out to the Board to schedule a conference and anticipates that a conference
`will occur soon.
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`2
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`No. 95/000,634; (ii) Ex Parte Reexamination No. 90/009,994; and (iii) Inter Partes
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`Reexamination No. 95/002,132. Petitioner filed the request for Inter Partes
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`Reexamination No. 95/002,132; Apple, Inc. requested the other two pending
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`reexaminations.
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`Kyocera Corporation filed its petition for inter partes review of the ‘353
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`Patent on October 2, 2012. On December 21, 2012, the Patent Trial and Appeal
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`Board (“Board”) stayed the three pending reexamination proceedings, including
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`the reexamination filed by Petitioner, in view of Kyocera’s IPR petition. Kyocera
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`Corporation v. SoftView LLC, Case IPR2013-00007, Paper No. 9 (Order to Stay
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`the Concurrent Reexaminations). The Board noted that all of the claims
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`challenged by Kyocera would be reexamined in the pending reexaminations and
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`that the grounds of challenge in the Kyocera IPR are based on prior art references
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`on which many of the rejections in the pending reexaminations are also based. Id.
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`The Board determined that there was good cause to stay the pending reexamination
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`proceedings to avoid duplicating efforts and potential inconsistencies among the
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`proceedings. Id.
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`The Board granted the Kyocera IPR on March 29, 2013. Soon thereafter,
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`Kyocera filed a motion to stay the Underlying Litigation pending the outcome of
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`the Kyocera IPR. SoftView LLC v. Apple Inc. et al., Case 10-389-LPS (D. Del.)
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`(D.I. 940). That motion is pending.
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`3
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`Petitioner understands that the parties to the Kyocera IPR have stipulated to
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`postpone the first deadline – the due date for SoftView’s response to Kyocera’s
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`petition and any motion to amend the patent – to June 28, 2013. Oral argument is
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`set for January 7, 2014.
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`II.
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`Joinder will not impact the Board’s ability to complete the review
`within the one-year period
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`Joinder in this case will not impact the Board’s ability to complete its review
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`in a timely manner. 35 U.S.C. § 316(a)(11) and associated rule 37 C.F.R.
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`§ 42.100(c) provide that inter partes review proceedings should be completed and
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`the Board’s final decision issued within one year of institution of the review. The
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`same provisions provide the Board with flexibility to extend the one-year period by
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`up to six months for good cause, or in the case of joinder. Id. (§ 316(a)(11)). In
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`this case, joinder should not affect the Board’s ability to issue its final
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`determination within one year because Petitioner does not raise any issues that are
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`not already before the Board.
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`The Petition for Inter Partes Review of the ‘353 Patent submitted by
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`Petitioner is based on the same grounds and same combinations of prior art that
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`were submitted by Kyocera Corporation and granted by the Board in the Kyocera
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`IPR, for which joinder is requested. The first deadline in the Kyocera IPR is the
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`due date for SoftView’s response to Kyocera’s petition (37 C.F.R. § 42.120) and
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`any motion to amend the patent (37 C.F.R. § 42.121). Petitioner understands that
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`4
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`SoftView and Kyocera have stipulated to postpone this deadline to June 28, 2013 –
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`two months from the date of this motion. Should the Board determine to grant
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`Petitioner’s request for joinder, SoftView will have ample time to complete its
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`submissions by its deadline. Because Petitioner’s inter partes review petition does
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`not raise any new issues, SoftView’s response would not require any analysis
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`beyond what SoftView is already required to undertake to respond to Kyocera’s
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`petition.
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`Motorola respectfully suggests that further briefing and discovery may be
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`simplified, further to minimize any impact to the schedule or the volume of
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`materials to be submitted to the Board. Given that Kyocera and Motorola will be
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`addressing the same prior art and the same bases for rejection of the claims at
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`issue, the Board may order Kyocera and Motorola to consolidate their submissions
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`and to conduct joint discovery where appropriate. Conducting the proceedings in
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`this manner should avoid further complication or delay.
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`III. Joinder would enhance efficiency by consolidating issues, avoiding
`duplicate efforts, and preventing inconsistencies among the pending
`proceedings
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`The validity of the ‘353 patent is squarely at issue in, as described above, (a)
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`the District Court litigation, (b) three pending reexaminations (presently stayed in
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`light of the Kyocera IPR), and (c) the Kyocera IPR. In deciding to stay the
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`reexamination requested by Petitioner and the two reexaminations requested by
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`5
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`Apple Inc., the Board recognized that conducting the reexaminations concurrently
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`with the Kyocera IPR “would duplicate efforts within the Office and could
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`potentially result in inconsistencies among the proceedings. Amendment of the
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`claims in the reexamination proceedings could change the scope of the claims
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`challenged in [the Kyocera IPR] while the Board is conducting its review.”
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`Kyocera Corporation v. SoftView LLC, Case IPR2013-00007, Paper No. 9 (Order
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`to Stay the Concurrent Reexaminations). The same logic urges joinder.
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`Determining the same validity questions concerning the ‘353 Patent in
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`multiple concurrent proceedings would duplicate efforts, and create a risk of
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`inconsistent results. Proceeding with a consolidated inter partes review would
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`avoid inefficiency and potential inconsistency and would result in a final written
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`decision within one year. The decision in the inter partes review will resolve the
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`issues in the reexaminations, and, if it is determined that the patent claims are
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`unpatentable, would also resolve the district court proceedings. For these reasons,
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`and especially because Petitioner raises the same validity questions as those
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`already before the Board in the Kyocera IPR, joinder is appropriate.
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`IV. Without joinder, Motorola Mobility may be prejudiced.
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`Petitioner would be prejudiced if it is not permitted to join and to participate
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`in the Kyocera IPR which will affect not only Petitioner’s pending inter partes
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`6
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`reexamination, but also will likely simplify, or even entirely resolve, issues in the
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`Underlying Litigation.
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`Petitioner submitted its request for inter partes reexamination on August 31,
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`2012, before the inter partes review provisions of the America Invents Act went
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`into effect. See Inter Partes Reexamination No. 95/002,132. As described above,
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`that reexamination and two others (filed by Apple, Inc.) were pending before the
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`Kyocera IPR was granted, and were stayed in view of the Kyocera IPR on
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`December 21, 2012. Kyocera Corporation v. SoftView LLC, Case IPR2013-00007,
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`Paper No. 9 (Order to Stay the Concurrent Reexaminations). The Board
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`recognized that its decision in the Kyocera IPR “will likely simplify the issues in
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`the reexaminations.” Id. For the same reasons, the decision in the Kyocera IPR
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`will likely simplify, or even resolve, the issues in the Underlying Litigation.
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`Joinder is warranted to permit Petitioner to protect its interests in the matters at
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`issue in the inter partes reexamination and Underlying Litigation.
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`The possibility of settlement between SoftView and Kyocera and the
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`resulting impact on Petitioner further supports that joinder is appropriate. 35
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`U.S.C. § 317(a) provides that an inter partes review “shall be terminated with
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`respect to any petitioner upon the joint request of the petitioner and the patent
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`owner” unless the Board has already reached its decision on the merits. If no
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`petitioner remains after settlement, “the Office may terminate the review.” Id. If
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`7
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`SoftView and Kyocera were to reach a settlement, the pending Kyocera IPR thus
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`may terminate without proceeding to a final written decision. Petitioner has a
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`significant interest in seeing the IPR proceedings through to a final decision, given
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`the potential impact on Petitioner’s stayed inter partes reexamination and
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`Petitioner’s defense
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`in
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`the Underlying Litigation. Joinder would protect
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`Petitioner’s interests and avoid the potential prejudice to Petitioner that could result
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`from a settlement between SoftView and Kyocera.
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`V.
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`Joinder will not prejudice SoftView or Kyocera
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`Permitting joinder will not prejudice SoftView or Kyocera. Petitioner raises
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`no issues that are not already before the Board, such that joinder would not affect
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`the timing of the Kyocera IPR or the content of SoftView’s response due on June
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`28, 2013. Moreover, even if the Board were to determine that joinder would
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`require an extension to the schedule, such an extension is permitted by law and is
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`not a reason for denying joinder. 35 U.S.C. § 316(a)(1); 37 C.F.R. § 42.100(c).
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`VI. Conclusion
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`For the foregoing reasons, Petitioner respectfully requests that its Petition for
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`Inter Partes Review of U.S. Patent No. 7,461,353 be granted and that the
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`proceedings be joined with Kyocera Corporation v. SoftView LLC, Case IPR2013-
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`00007.
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`8
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`The undersigned attorney may be reached by telephone at (336) 607-7311.
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`Although Petitioner believes that no fee is required for this Motion, the
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`Commissioner is hereby authorized to charge any additional fees which may be
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`required for this Motion to Deposit Account No. 20-1430.
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`Respectfully submitted,
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`Date: April 29, 2013
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`
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`/John C. Alemanni/
`John C. Alemanni
`Reg. No. 47,384
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`Counsel for Petitioner
`Motorola Mobility LLC
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`KILPATRICK TOWNSEND & STOCKTON LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101-2400
`(336) 607-7311 (tel)
`(336) 734-2621 (fax)
`jalemanni@kilpatricktownsend.com
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`9
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6, I hereby certify that on Monday, April 29,
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`2013, a
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`true copy of
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`the accompanying MOTION FOR JOINDER
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`UNDER 37 C.F.R. §§ 42.22 AND 42.122(b) was served upon the following, by
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`EXPRESS MAIL®:
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`Morgan Chu (mchu@irell.com)
`Samuel K. Lu (slu@irell.com)
`Irell & Manella LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067-4276
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`Counsel for SoftView LLC
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`Richard Bauer (Richard.Bauer@Kattenlaw.com)
`Michael S. Tomsa (Michael.Tomsa@Kattenlaw.com)
`Katten Muchin Rosenman LLP
`2900 K Street NW – Suite 200
`Washington, DC 20007-5118
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`Counsel for Kyocera Corporation
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`/John C. Alemanni/
`John C. Alemanni
`Reg. No. 47,384
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`Counsel for Petitioner
`Motorola Mobility LLC
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`KILPATRICK TOWNSEND & STOCKTON LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101-2400
`(336) 607-7311 (tel)
`(336) 734-2621 (fax)
`jalemanni@kilpatricktownsend.com
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`10
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