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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`VIRNETX, INC. AND SCIENCE APPLICATION INTERNATIONAL
`CORPORATION,
`Patent Owner
`
`Patent No. 7,921,211
`Issued: April 5, 2011
`Filed: August 17, 2007
`Inventors: Victor Larson, et al.
`Title: AGILE NETWORK PROTOCOL FOR SECURE COMMUNICATIONS
`USING SECURE DOMAIN NAMES
`____________________
`
`Inter Partes Review No. IPR2013-00397
`__________________________________________________________________
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`PETITIONER’S MOTION FOR JOINDER OF PROCEEDINGS
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`
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`Paper No. 8
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`
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`IPR2013-00397 – Motion for Joinder
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`Pursuant to the authorization granted by the Panel on August 14, 2013 in
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`Paper No. 7, Petitioner Apple Inc. (“Petitioner” or Apple) moves to have the Board
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`join IPR proceedings IPR2013-00397 & -00398 to each other and with IPR
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`proceeding IPR2013-00378 filed by New Bay Capital, LLC (“NBC”), each of
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`which concerns U.S. Patent No. 7,921,211.
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`I.
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`Relevant Facts
`Apple filed petitions seeking inter partes review of the ’211 patent on July
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`1, 2013. Each petition challenged the patentability of claims 1-3, 5-8 and 14-60
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`based on three references: Aventail, Provino, and Beser (Exs. 1007-1009). On
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`June 23, 2013, NBC filed its petition challenging the patentability of claims 36, 37,
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`47, and 51 over one references: Kiuchi (Ex. 1002 in IPR2013-00378). NBC also
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`filed a petition challenging claims 1, 2, 5, 16, 21, and 27of U.S. Patent No.
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`7,418,504 (IPR2013-00377). The claims of the ’504 and ’211 patents are
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`effectively identical to each other,1 and thus, the Board’s decisions on those two
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`petitions will address the patentability of claims 1, 2, 5, 16, 21, 27, 36, 37, 47, and
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`51 of both the ’504 and ’211 patents.
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`1 For example, claims 36 are identical, except the fourth element, in which the
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`bracketed language is swapped: “[supporting an indication that | indicating in
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`response to the query] whether the [DNS] system supports establishing a secure
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`communication link.”
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`1
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`IPR2013-00397 – Motion for Joinder
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`The ’211 patent is a member of a family of patents owned by VirnetX that
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`includes U.S. Patent Nos. 6,502,135, 7,490,151, and 7,418,504. The specifications
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`of these patents are nearly identical. VirnetX has asserted varying sets of claims of
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`the ’211 and other of its patents against Apple and other entities in numerous
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`lawsuits. In August of 2010, VirnetX sued Apple and five other entities (the “2010
`
`Litigation”). VirnetX asserted “at least” claims 1, 2, 5, 6, 14-23, 26-28, 33-47, 50-
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`52, and 57-60 of the ’211 patent against Apple and claims 1, 6, 8, 9, 14-17, 19-23,
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`26-36, 38-41, 43-47, and 50-60 against co-defendant Cisco. After trial, it obtained
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`a judgment of infringement against Apple on, inter alia, claims 36, 37, 47, and 51
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`of the ’211 patent. That action now is on appeal to the Federal Circuit.
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`On December 31, 2012, VirnetX served a new complaint on Apple asserting
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`infringement of “at least” claims 1, 2, 5, 6, 14-23, 26-28, 33-47, 50-52, and 57-60
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`of the ’211 patent (the “2012 Litigation”). See Ex. 1050 at 9-10. When VirnetX
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`served this new complaint on Apple, it established a 12 month period for Apple to
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`submit a petition for inter partes review of the ’211 patent that runs until
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`December 31, 2013. 35 U.S.C. § 315(b); see Petition at 1-3. The new complaint
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`led to a civil action, now pending in the Eastern District of Texas, that will go to
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`trial on October 13, 2015.
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`2
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`IPR2013-00397 – Motion for Joinder
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`VirnetX also asserted the ’211 patent against Microsoft in a separate lawsuit
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`filed in April 2013,2 and it has asserted it against numerous other defendants in
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`actions filed in 2010 and 2011.3
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`II. Argument
`Apple submits that joinder of the proceedings is fully warranted. See
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`IPR2013-00004, Paper 15 at 4; Dell v. Network-1 Security Solutions, Inc.,
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`IPR2013-00385, Paper 17 at 2-3. Joinder is proper under the statutory design of
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`inter partes review, will simplify and reduce the number of issues before the Board
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`and will enable streamlined proceedings (i.e., one coordinated proceeding instead
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`of three separate proceedings). In addition, the Board can manage the joined
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`proceeding in a way that does not impact scheduling or conduct of the proceedings.
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`See Motorola Mobility LLC v. Softview, LLC, IPR2013-00256, Paper 10 at 2-3.
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`2 The complaint broadly alleges infringement of the patent without specifying
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`particular claims, and infringement contentions are not due until September 2013.
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`3 Specifically, VirnetX sued Avaya, Inc.; Mitel Networks Corp.; Mitel Networks,
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`Inc.; Siemens Enterprise Commc’ns GmbH & Co. KG; Siemens Enterprise
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`Commc’ns, Inc.; Siemens AG; Siemens Commc’ns, Inc.; and Siemens Corp. in
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`Case No. 6:11-cv-00018-LED (E.D. Tex.) and Aastra Techs. Limited; Aastra USA,
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`Inc.; Apple Inc.; Cisco Systems, Inc.; NEC Corp.; and NEC Corporation of
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`America in Case No. 6:10-cv-00417-LED (E.D. Tex.).
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`3
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`IPR2013-00397 – Motion for Joinder
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`Joinder Is Authorized and Appropriate
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`A.
`The Board is authorized to join these proceedings pursuant to 35 U.S.C. §
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`315(c). Dell, IPR2013-00385, Paper 17 at 2-6. In addition, joinder is not
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`precluded by § 315(b), were that provision found to apply to the instant petitions.
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`Id. As Apple explained in its petition, § 315(b) does not preclude the submission
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`of its petition or institution of trial on the basis of this petition. See Petition at 1-3.
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`Joinder will further the statutory purpose of the inter partes review authority
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`and is justified in this case. It will enable the Board to efficiently review, in a
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`single proceeding, the patentability of all the claims in the ’211 patent that VirnetX
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`has asserted in multiple actions against multiple defendants, including Apple. The
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`schedule of the joined proceedings is also fully compatible with the schedule of the
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`2012 Litigation. Because that litigation will not go to trial until October 2015, the
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`Board will have ample time to conduct a trial in the joined proceeding and to issue
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`a final written decision before the trial. The joined proceeding will thus provide an
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`alternative forum to efficiently review the patentability of claims being asserted in
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`district court litigation, will reduce the number of issues the district court must
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`address and will minimize any duplication of effort by the Board and the Court.
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`See Comments General Trial Rules, 77 Fed. Reg. at 48663. In other words, the
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`Board will be able to issue a decision on the challenged claims that will have a
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`meaningful impact on the 2012 Litigation without causing delay. See H.R. Rpt.
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`4
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`IPR2013-00397 – Motion for Joinder
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`112-98, at 45 (2011) (discussing “time limits during litigation”); 157 Cong. Rec.
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`S1326 (daily ed. Mar. 7, 2011) (statement of Sen. Sessions). Joining these
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`proceedings thus is perfectly consonant with the statutory purpose and design of
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`the inter partes review authority.
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`Joinder of the two proceedings initiated by Apple, which involve the same
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`exhibits and same primary references, also will help secure “the just, speedy, and
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`inexpensive resolution of” the proceedings before the Board. See LaRose Indus. v.
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`Capriola Corp., IPR2013-00121, Paper 11 at 24 (joining proceedings “filed on the
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`same day” involving “the same patent and parties” with “some overlap in the
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`asserted prior art”). Joining Apple’s proceedings with the NBC proceeding
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`(IPR2013-00377) will reduce the overall administrative burden on the Board of
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`individually conducting trials on each petition. Moreover, because the Board has
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`not yet decided on which grounds to institute review, it will be able to review the
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`grounds in the petitions, and institute a single trial in a manner that avoids undue
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`delay or complication. Motorola, IPR2013-00256, Paper 10 at 10 (granting joinder
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`where it would “not unduly complicate or delay” earlier-initiated proceeding).
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`Petitioner Is Willing to Limit the Grounds of Its Petition
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`B.
`To minimize the burden on the Board, and in view of the Panel’s comments
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`during the August 5, 2013 telephone conference, Apple is willing to limit the
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`grounds of unpatentability upon which it is requesting inter partes review of the
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`5
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`IPR2013-00397 – Motion for Joinder
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`’504 patent. First, in the context of this motion, Apple requests the Board to
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`consider only those grounds presented in petition nos. IPR2013-00397 and -00398
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`that are based on the Aventail publication, Ex. 1007, and the Beser patent, Ex.
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`1009. See IPR2013-00397, Petition at 6; IPR2013-00398, Petition at 6.4 While the
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`other grounds identified in its petitions are fully warranted, Apple recognizes that
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`limiting the grounds of its petitions will substantially reduce the number of issues
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`that the Panel must address and will conserve the time and resources of the Board.
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`Second, although Apple has contested more claims of the ’504 patent in its
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`petitions than NBC has, the issues raised by the additional claims will not
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`complicate the joined proceedings in any significant way. The additional claims
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`being disputed by Apple present the same or highly similar concepts and
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`limitations and do not raise unique patentability questions. See Ariosa Diagnostics
`
`v. Isis Innovation, IPR2012-00022, Paper 32 at 5 (permitting joinder of new
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`petition where new challenges were “premised on the same grounds [as the] earlier
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`proceeding, adding only additional references as needed to address the limitations
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`of the dependent claims.”). Notably, the three independent claims, 1, 36, and 60,
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`4 The resulting grounds upon which inter partes review is requested are (a) grounds
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`(i) to (iii) in the IPR2013-00397 Petition, and (b) grounds (i) to (ii) of the
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`IPR2013-00398 Petition.
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`6
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`IPR2013-00397 – Motion for Joinder
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`contain the same four claim elements, but are directed to a system, a machine-
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`readable medium, and a method, respectively for performing those same elements.
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`See Petition at 19-21. Additionlly, each of claim 36’s dependent claims is identical
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`or nearly so to a dependent claim for claim 1. In total, Apple is challenging fewer
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`than 30 distinct claims, and many of those claims are substantially similar, e.g.,
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`claims 19-21, (id. at 31-33), 43-45, (id.), 29-32, (id. at 39-42), and 53-56, (id.).
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`Thus, considering the additional claims challenged by Apple will not substantially
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`increase the burden on Board, which already will be considering claims 1, 2, 5, 16,
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`21, 27, 36, 37, 47, and 51.
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`The Board has permitted joinder of proceedings involving different prior art
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`and different claims. For example, the Board allowed joinder of a second petition
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`challenging certain claims not originally asserted by the patent owner after it had
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`instituted trial to review the originally asserted claims. See, e.g., Microsoft Corp.
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`v. Proxyconn, Inc., IPR2013-00109, Paper 14 at 2-3. Similarly, the Board has
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`permitted joinder based on a petition seeking review of claims that were the subject
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`of a first trial on the basis of prior art the PTAB previously declined to review. See
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`ABB, Inc. v. Roy-G-Biv Corp., IPR2013-00282, Paper 6.
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`Here, allowing the joined proceeding to address claims beyond those
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`addressed in NBC’s petition is appropriate in view of Patent Owner’s decision to
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`file multiple infringement suits against multiple parties raising various
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`7
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`IPR2013-00397 – Motion for Joinder
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`combinations of its claims. For example, Patent Owner is alleging that Apple
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`infringes multiple claims not addressed in NBC’s petition. Patent Owner also has
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`recently filed lawsuits against third parties broadly alleging infringement of all
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`claims of the ’504 patent. Because Patent Owner has repeatedly asserted various
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`combinations of the claims in serial litigation, consideration of claims that are not
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`presented in the NBC petition is warranted, particularly in view of the statutory
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`purpose of IPR proceedings. See § II.A, above.
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`C.
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`Joinder Will Not Impact the Schedule and Will Simplify the
`Board’s Review of the Issues
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`Unlike motions for joinder filed after a trial has been instituted, here, the
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`Board can establish, and the parties can follow, a single schedule in the joined
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`proceedings. Petitioner believes that doing so will substantially minimize the
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`burdens on the Board and the parties. For example, in a joined IPR proceeding, it
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`is anticipated that only one expert witness per petitioner, and one or two witnesses
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`from Patent Owner, will present testimony. Depositions of this small number of
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`witnesses can be readily accommodated within a standard IPR schedule.
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`Moreover, joining the proceedings at this stage will not prejudice either Patent
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`Owner or NBC. The Board has yet to institute a trial on the patent, and it will be
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`able to evaluate the arguments of both petitioners and any response from the Patent
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`Owner prior to instituting such trial. The Board will then be able to define the
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`scope of the issues and select the grounds that will lead to the most efficient
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`8
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`
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`IPR2013-00397 – Motion for Joinder
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`resolution of all these proceedings. Cf. Netapp, Inc. v. Personal Web Techs, LLC,
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`IPR2013-00319, Paper 18 (denying joinder because new petition was filed after
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`trial was instituted, raised new substantive issues that would delay schedule, and
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`would disrupt coordination between five other IPRs).
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`D. Briefing and Discovery Can Be Streamlined
`In the interest of efficiency, Petitioner is willing to accept reasonable
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`restrictions on discovery so long as they do not preclude it from independently
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`challenging the claims. In addition, Petitioner is willing to accept the condition
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`that each party limit its participation to the grounds presented in its respective
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`petition(s). See Motorola, IPR2013-00256, Paper 10 at 2-3. Thus, if the Board
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`instituted review on the basis of the two primary references advanced by Apple and
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`one primary reference advanced by NBC, Apple would be willing to limit its
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`comments to issues raised by its prior art, and forgo comments on NBC’s grounds.
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`Petitioner Has Shown a Need to Use this Forum
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`E.
`Apple also has a need to use this process as a cost-effective alternative to
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`district court litigation. This need outweighs any counterveiling consideration of
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`joinder, including the burden and prejudice to the parties as discussed above.
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`Apple presently is defending itself against multiple lawsuits filed by the Patent
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`Owner that assert dozens of claims from the ’504 patent and related patents. Also,
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`Petitioner has faced substantial procedural challenges in addressing invalidity
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`9
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`IPR2013-00397 – Motion for Joinder
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`issues in district court. For example, in the 2010 Litigation, even though Patent
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`Owner asserted at trial over a dozen claims from four different patents, Apple was
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`given only 12 hours of trial time to put on an invalidity, non-infringement,
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`inequitable conduct, and damages case.
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`Finally, VirnetX will suffer no prejudice from joinder. VirnetX has filed
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`multiple actions against multiple parties over several years, each changing in scope
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`and the particular claims being asserted. By joining the present proceedings, the
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`Board will be able to limit, in the aggregate, the grounds at issue in these various
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`proceedings. Thus, joinder will enable the efficient resolution of these proceedings
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`before the Board without affecting the schedule of concurrent litigation and will
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`reduce, rather than increase the complexity of the concurrent litigation by reducing
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`the number of issues in those proceedings.
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`III. Conclusion
`For all of these reasons, Apple submits that joinder is warranted between
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`IPR2013-00397 & -00398 and IPR2013-00378.
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`Dated: August 21, 2013
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`
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`Respectfully Submitted,
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`/Jeffrey P. Kushan/
`Jeffrey P. Kushan (Reg No. 43,401)
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`jkushan@sidley.com
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`
`
`10
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`
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`IPR2013-00397 – Motion for Joinder
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 21st day of August 2013, a copy of this Motion
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`for Joinder, has been served in its entirety by e-mail and Express Mail on the
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`following counsel of record for patent owner:
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`Joseph E. Palys (Reg. No. 46,508)
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, L.L.P.
`11955 Freedom Drive
`Reston, VA 20190-5675
`Phone: (571) 203-2700
`Fax: (202) 408-4400
`E-mail: joseph.palys@finnegan.com
`
`Naveen Modi (Reg. No. 46,224)
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, L.L.P.
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone: 202-408-4065
`Facsimile: 202-408-4400
`E-mail: naveen.modi@finnegan.com
`
`And on counsel for New Bay Capital:
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`rasher@sunsteinlaw.com and
`jklayman@sunsteinlaw.com or otherwise to
`Robert M. Asher
`Jeffrey T. Klayman
`Sunstein Kann Murphy & Timbers LLP
`125 Summer Street
`Boston, MA 02110-1618
`617 443 9292 (phone)
`617 443 0004 (fax)
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`
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`Page 1
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`IPR2013-00397 – Motion for Joinder
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`Dated: August 21, 2013
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`Respectfully submitted,
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`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`Attorney for Petitioner
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`Page 2
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