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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`RPX CORPORATION
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`Petitioner
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`V.
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`MACROSOLVE, INC.
`Patent Owner
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`Case IPR2014-00140
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`Patent 7,822,816
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`NOTICE OF PROPOSED MOTIONS
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`BY PATENT OWNER
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`PATENT OWNER’S NOTICE OF PROPOSED MOTIONS
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`Pursuant to the Office Trial Practice Guide, Patent Owner, Macrosolve, Inc. provides its
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`notice regarding anticipated motions. The initial conference call in this matter is scheduled for
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`June 19, 2014. At present the Patent Owner contemplates at least the following motions:
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`1.
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`The patent involved in this proceeding, US. Patent No. 7,822,816, was recently
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`the subject of Ex Parte Reexamination Certificate No. 10187,
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`issued June 10, 2014, which
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`canceled all claims.
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`It is contemplated that the Reexamination Certificate represents the final
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`disposition of the Ex-Parte ’816 patent reexamination. Patent Owner accordingly requests
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`permission to file a motion to terminate this IPR pursuant to 37 CPR. § 42.72 because the
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`claims of the ’81 6 Patent have already been canceled and the present Inter Partes review is moot.
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`However, Patent Owner points out that a continuation application is still pending before the
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`United States Patent & Trademark Office.
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`2.
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`Motion for Discovery Regarding the Membership of Requestor RPX and the Real
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`Party or Parties—in—Interest of Requestor. As detailed in Patent Owner’s Preliminary Response,
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`at the time of filing of the present Inter Partes Review (IPR), the ‘816 patent was being enforced
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`in the United States District Court for the Eastern District of Texas. The ‘816 patent had been in
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`litigation with numerous Defendants for over one year prior to the filing of the Request for Inter
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`Partes Review. RPX boasts a membership network of 168 client companies of these less than
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`half are publicly identified by RPX. Patent Owner respectfully requests discovery as to all the
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`members of Petitioner RPX in order to determine the real party-in-interest in the present IPR.
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`3.
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`Motion to Dismiss for Lack of Standing Subject Matter Jurisdiction.
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`It
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`is
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`anticipated that discovery of the members of Petitioner RPX will reveal a real party or parties-in-
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`interest who would be precluded by statute from filing the present Request for Inter Partes
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`Review pursuant to U.S.C. § 315(b) and 37 C.F.R. § 42.101(b). Subject to the determination of
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`the real party or parties-in-interest, Patent Owner requests permission to file a Motion to Dismiss
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`for Lack of Standing or Alternatively Lack of Subject Matter Jurisdiction.
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`4.
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`Motion to Take the Deposition of AL. Navasimha Reddy. Petitioner submitted
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`the Declaration of Dr. Reddy in support of its Petition for Inter Partes Review. Patent Owner
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`requests permission to take the deposition of Dr. Reddy.
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`Patent Owner does not presently intend to file any other motions but nevertheless
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`reserves the right to file a motion to exclude evidence or a motion for observation on the dates
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`set forth in the scheduling order for this case, as well as to request permission to file any other
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`motions that become necessary as the case develops (e.g., additional motions for discovery).
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`June 17, 2014
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`#3406l-v
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`Respectfully submitted,
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`/terry 1. watt/
`Terry L. Watt
`Registration No. 42214
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`Scott R. Zingerman
`Registration No. 35,422
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`Customer No. 22206
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`CERTIFICATE OF SERVICE
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`The undersigned certifies, in accordance with 37 CPR. § 42.205, that service was made
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`on the PETITIONER as follows:
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`Manner of Service:
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`US. Mail
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`Documents served:
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`PATENT OWNER’S NOTICE OF PROPOSED MOTIONS
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`Persons Served:
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`David L. McCombs
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`Thomas B. King
`Theodore M. Foster
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`HAYNES AND BOONE, LLP
`2323 Victory Avenue, Ste. 700
`Dallas, TX 75219
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`W T
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`erry L. Watt
`Reg. No. 42214
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`#37837—v
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