`
`By: Richard D. Mc Leod (Reg. No. 46,921)
`
`rick.mcleod@klarquist.com
`Michael D. Jones (Reg. No. 41,879)
`michael.jones@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
`
`____________
`
`ABB INC.
`Petitioner
`
`v.
`
`ROY-G-BIV CORPORATION
`Patent Owner
`
`____________
`
`
`Patent 6,516,236 B1
`
`____________
`
`MOTION FOR JOINDER TO RELATED
`INSTITUTED INTER PARTES REVIEW (37 C.F.R. § 42.122(b))
`
`
`
`
`
`Petitioner ABB Inc. files this Motion for Joinder of the Petition For Inter
`
`Partes Review Of Claims 1-10 Of U.S. Patent No. 6,516,236 B1 (“Second
`
`Petition”), with the instituted inter partes review, ABB Inc. v. ROY-G-BIV
`
`Corporation, Case No. IPR2013-00062 (“IPR2013-00062”), 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 IPR2013-00062 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 ABB Inc. requests that the Second Petition be
`
`joined with IPR2013-00062.
`
`MOTION FOR JOINDER
`
`
`
`Page 1
`
`
`
`
`
`III. STATEMENT OF MATERIAL FACTS
`
`1.
`
`On November 21, 2011, ABB was served with a complaint for
`
`infringement of U.S. Patent No. 6,516,236. That suit is currently pending in the
`
`U.S. District Court for the Eastern District of Texas, styled ROY-G-BIV
`
`Corporation v. ABB, Inc. et al., 6:11-cv-00622-LED – ED Tex. (Tyler).
`
`2.
`
`On November 21, 2012, ABB filed a Petition for Inter Partes Review
`
`requesting review of claims 1-10 of the ’236 patent, now styled, ABB, Inc. v. Roy-
`
`G-Biv Corporation, Case No. IPR2013-00062.
`
`3.
`
`On April 18, 2013, the Board instituted trial on claims 1-4 and 8-10 in
`
`ABB, Inc. v. Roy-G-Biv Corporation, Case No. IPR2013-00062.
`
`4.
`
`On May 2, 2013, ABB filed a Motion for Reconsideration of Decision
`
`on Institution of Inter Partes Review in IPR2013-00062. That motion is pending.
`
`5.
`
`Concurrently with this Motion, ABB is filing its Second Petition,
`
`challenging claims 1-10 of the ’236 patent.
`
`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. §
`
`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).
`
`MOTION FOR JOINDER
`
`
`
`Page 2
`
`
`
`
`
`The Second Petition involves the same parties, the same patent, the same
`
`claims, and much of the same prior art. In the Second Petition, ABB argues new
`
`grounds for the unpatentability of the challenged claims, based in part on the
`
`Board’s claim interpretation in its decision in IPR2013-00062. Therefore, the
`
`Second Petition is related to IPR2013-00062, and joining the Second Petition with
`
`IPR2013-00062 would not prejudice ROY-G-BIV Corporation. ABB Inc. requests
`
`joinder of the Second Petition with IPR2013-00062.
`
`
`
`Dated: May 17, 2013
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Richard D. Mc Leod/
`Richard D. Mc Leod
`Registration No. 46,921
`Michael D. Jones
`Registration No. 41,879
`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 3
`
`
`
`
`
`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 ’236 Patent shown in
`
`PAIR and the attorneys of record for Patent Owner in Trial No. IPR2013-00062:
`
`MICHAEL SCHACHT
`SCHACHT LAW OFFICE, INC.
`ROY-G-BIV CORPORATION
`SUITE 202, 2801 MERIDIAN ST.
`BELLINGHAM WA 98225
`
`RICHARD T. BLACK
`JOEL B. ARB
`FOSTER PEPPER PLLC
`1111 THIRD AVENUE, SUITE 3400
`SEATTLE, WASHINGTON 98101-3299
`TEL: (206) 447-6251
`FAX: (206) 749-2062
`BLACR@FOSTER.COM
`ARDJO@FOSTER.COM
`
`
`via EXPRESS MAIL, on May 17, 2013.
`
`
`By:
`
`/Richard D. Mc Leod/
`Richard D. Mc Leod
`Registration No. 46,921
`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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