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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________
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`TOYOTA MOTOR NORTH AMERICA, INC., ET AL.
`Petitioner
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`v.
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`CRUISE CONTROL TECHNOLOGIES LLC
`Patent Owner
`_____________
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`Case IPR2014-00280
`Patent 6,324,463
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`_____________
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`TOYOTA ET AL.’S OPPOSITION TO CCT’S MOTION FOR JOINDER
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`TOYOTA ET AL.’S OPPOSITION TO CCT’S MOTION FOR JOINDER
`Case IPR2014-00280
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`TABLE OF CONTENTS
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`I.
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`II.
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`INTRODUCTION .................................................................................................................... 1
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`PRECISE RELIEF REQUESTED ........................................................................................... 2
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`III.
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`STATEMENT OF MATERIAL FACTS ................................................................................ 2
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`IV.
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`ARGUMENT ............................................................................................................................ 5
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`A.
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`B.
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`C.
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`D.
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`E.
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`CCT’s Request that the IPR Petitions Be Denied is Improper ................................6
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`CCT’s Request for Joinder is Impermissible by Statute ..........................................7
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`CCT Has Not Met Its Burden in Establishing Entitlement to the
`Requested Joinder ....................................................................................................8
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`Petitioner Would Be Prejudiced by Joinder or Consolidation .................................9
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`Joinder or Consolidation Would Ultimately Increase the Board’s
`Burden ....................................................................................................................11
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`F.
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`Joinder or Consolidation Would Be Impractical ...................................................12
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`V.
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`CONCLUSION....................................................................................................................... 15
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`ii
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`I.
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`INTRODUCTION
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`Petitioner Toyota Motor North America, Inc. (“Toyota”) and co-Petitioners
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`Subaru of America, Inc. (“Subaru”), American Honda Motor Co., Inc. (“Honda”),
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`Ford Motor Company (“Ford”), Jaguar Land Rover North America LLC
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`(“Jaguar”), Volvo Cars of North America LLC (“Volvo”), and Nissan North
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`America Inc. (“Nissan”) respectfully request that the Board deny Patent Owner
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`Cruise Control Technologies LLC’s (“CCT”) motion requesting joinder of inter
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`partes review proceeding IPR2014-00280 with separate inter partes review
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`proceedings IPR2014-00279 (filed by Petitioners Subaru et al.), IPR2014-00281
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`(filed by Petitioners Ford et al.), IPR2014-00289 (filed by Petitioners Honda et al.),
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`and IPR2014-00291 (filed by Petitioners Nissan et al.).
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`The Board should deny CCT’s motion because joinder at this time is
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`impermissible by statute, would prejudice Petitioner Toyota, and would deny the
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`Board “the focus and clarity afforded by [multiple] smaller proceedings with
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`different prior art issues.” Liberty Mutual Insurance Co. v. Progressive Casualty
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`Insurance Co., CBM2012-00002, Paper 16 (February 22, 2013) at 2. Additionally,
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`CCT has not met its burden in requesting joinder.
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`TOYOTA ET AL.’S OPPOSITION TO CCT’S MOTION FOR JOINDER
`Case IPR2014-00280
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`II.
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`PRECISE RELIEF REQUESTED
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`
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`Petitioner and co-Petitioners request that the Board deny CCT’s motion for
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`joinder of inter partes review proceedings IPR2014-00279, IPR2014-00280,
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`IPR2014-00281, IPR2014-00289, and IPR2014-00291.
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`III. STATEMENT OF MATERIAL FACTS
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`1.
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`On December 21, 2012, CCT filed separate complaints in the United
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`States District Court for the District of Delaware respectively against Ford, Jaguar,
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`Subaru, and Volvo alleging infringement of U.S. Patent No. 6,324,463 (the “’463
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`Patent). Additionally, on January 15, 2013, CCT filed separate complaints in the
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`United States District Court for the District of Delaware respectively against
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`Honda, Nissan, and Toyota alleging infringement of the ‘463 Patent.
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`2.
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`On December 20, 2013, Petitioner Subaru and co-Petitioners Toyota,
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`Honda, Ford, Jaguar, Volvo, and Nissan filed a first inter partes review petition
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`(IPR2014-00279) requesting review of claims 1-5, 12-16, 18-21, 23, 25-31, and
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`34-36 of the ’463 Patent based on references Mizuno and Miura. Subaru of
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`America, Inc., et al. v. Cruise Control Technologies LLC, IPR2014-00279, Paper 1
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`(December 20, 2013) at 6. Petitioner Subaru also submitted a supporting expert
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`declaration by David A. McNamara. IPR2014-00279, Exhibit 1007 (December 20,
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`2
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`TOYOTA ET AL.’S OPPOSITION TO CCT’S MOTION FOR JOINDER
`Case IPR2014-00280
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`2013). Matthew D. Satchwell is the only Lead Counsel identified in the petition
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`for IPR2014-00279. IPR2014-00279, Paper 1 at 3.
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`3.
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`On December 20, 2013, Petitioner Toyota and co-Petitioners Subaru,
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`Honda, Ford, Jaguar, Volvo, and Nissan filed a second inter partes review petition
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`(IPR2014-00280) requesting review of claims 1-5, 12-16, 18, 19, 21, 25-28, and
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`34-36 of the ’463 Patent based, inter alia, on primary references Diamante
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`Owner’s Manual, Watanabe, and Celsior. Toyota Motor North America, Inc., et
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`al. v. Cruise Control Technologies LLC, IPR2014-00280, Paper 1 (December 20,
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`2013) at 6-7. Petitioner Toyota also submitted a supporting expert declaration by
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`Paul Green. IPR2014-00280, Exhibit 1011 (December 20, 2013). William H.
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`Mandir is the only Lead Counsel identified in the petition for IPR2014-00280.
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`IPR2014-00280, Paper 1 at 2-3.
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`4.
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`On December 20, 2013, Petitioner Ford and co-Petitioners Subaru,
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`Toyota, Honda, Jaguar, Volvo, and Nissan filed a third inter partes review petition
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`(IPR2014-00281) requesting review of claims 1-5, 12-31, and 34-36 of the ’463
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`Patent based, inter alia, on primary references Narita, NHTSA Report, and
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`Nagashima. Ford Motor Co., et al. v. Cruise Control Technologies LLC,
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`IPR2014-00281, Paper 1 (December 20, 2013) at 5-6. Petitioner Ford also
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`TOYOTA ET AL.’S OPPOSITION TO CCT’S MOTION FOR JOINDER
`Case IPR2014-00280
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`submitted a supporting expert declaration by Daniel A. Crawford. IPR2014-
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`00281, Exhibit 1011 (December 20, 2013). Matthew J. Moore is the only Lead
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`Counsel identified in petition for IPR2014-00281. IPR2014-00281, Paper 1 at 2-3.
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`5.
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`On December 23, 2013, Petitioner Honda and co-Petitioners Subaru,
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`Toyota, Ford, Jaguar, Volvo, and Nissan filed a fourth inter partes review petition
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`(IPR2014-00289) requesting review of claims 1-5, 12-15, 18-20, 25-28, and 34-36
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`of the ’463 Patent based, inter alia, on primary references Yoshimitsu and
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`Yagihashi. American Honda Motor Co., Inc., et al. v. Cruise Control Technologies
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`LLC, IPR2014-00289, Paper 3 (December 23, 2013) at 15-60. Petitioner Honda
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`also submitted a supporting expert declaration by David A. McNamara. IPR2014-
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`00289, Exhibit 1012 (December 23, 2013). John M. Caracappa is the only Lead
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`Counsel identified in thepetition for IPR2014-00289. IPR2014-00289, Paper 3 at
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`3-4.
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`6.
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`On December 23, 2013, Petitioner Nissan and co-Petitioners Subaru,
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`Toyota, Ford, Jaguar, Volvo, and Honda filed a fifth inter partes review petition
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`(IPR2014-00291) requesting review of claims 1-5, 12-16, 18, 19, 21, 25-31, and
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`34-36 of the ’463 Patent based, inter alia, on primary reference Prometheus.
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`Nissan North America, Inc., et al. v. Cruise Control Technologies LLC, IPR2014-
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`4
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`TOYOTA ET AL.’S OPPOSITION TO CCT’S MOTION FOR JOINDER
`Case IPR2014-00280
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`00291, Paper 1 (December 23, 2013) at 7. Petitioner Nissan also submitted a
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`supporting expert declaration by David A. McNamara. IPR2014-00291, Exhibit
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`1010 (December 23, 2013). Vaibhav P. Kadaba is the only Lead Counsel
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`identified in the petition for IPR20014-00291. IPR2014-00291, Paper 1 at 4-5.
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`7.
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`On April 9, 2014, a conference call was held between Judges Cocks,
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`Jung, and Hoskins and counsel for the respective parties. Counsel for CCT had
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`requested this call for the specific purpose of seeking authorization to file a motion
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`to join the five inter partes review proceedings. During the call, the panel of
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`judges noted that all five petitions have been assigned to the same panel of three
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`judges. Furthermore, during the call, the panel authorized CCT “to file its
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`requested motion to join the five related proceedings.” IPR2014-00280, Paper 14
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`(April 10, 2014) at 3-4.
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`8.
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`On April 24, 2014, CCT filed a motion requesting joinder of the five
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`inter partes review proceedings, pursuant to 35 U.S. Code § 315(c). IPR2014-
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`00280, Paper 15 (April 24, 2014) at 1.
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`IV. ARGUMENT
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`The Board should not grant CCT’s motion because it is unauthorized, it is
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`statutorily prohibited under 35 U.S. Code § 315(c), Petitioner would be prejudiced
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`TOYOTA ET AL.’S OPPOSITION TO CCT’S MOTION FOR JOINDER
`Case IPR2014-00280
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`if the proceedings are joined, joinder would ultimately increase the burden on the
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`Board, CCT would not be prejudiced by denial of joinder, and joining the
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`proceedings would be impractical.
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`A. CCT’s Request that the IPR Petitions Be Denied is Improper
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`In its joinder motion, CCT argues that all of the related petitions should be
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`denied for allegedly violating the “One Petitioner, One Voice” rule. Id. at 8-11.
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`As an initial point, it must be recognized that CCT was not given leave to file a
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`motion requesting denial or dismissal of the petitions at this time, let alone for
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`violating the “One Petitioner, One Voice” rule. Rather, the Board has only
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`authorized CCT to file a motion requesting joinder. SOMF at para. 7; See also
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`IPR2014-00280, Paper 14 at 3-4. For this reason alone, CCT’s unauthorized
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`request should be disregarded. 37 C.F.R. § 42.20(b).
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`Notwithstanding, contrary to the allegations set forth by CCT in its motion,
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`Petitioner and co-Petitioners are not violating the “One Petitioner, One Voice”
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`rule. Rather, each petition (including that for the instant proceeding) designates a
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`single lead counsel. SOMF at paras. 2-6.
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`In its motion, CCT cites the Board’s decisions in Agilysys, Inc., et al. v.
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`Ameranth, Inc., CBM2014-00014, Paper 11 (February 11, 2014) and Fandango,
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`TOYOTA ET AL.’S OPPOSITION TO CCT’S MOTION FOR JOINDER
`Case IPR2014-00280
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`LLC, et al. v. Ameranth, Inc., CBM2014-00013, Paper 22 (March 24, 2014), which
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`held that the petitioners there violated the “One Petitioner, One Voice” rule.
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`However, in both of those proceedings, the petitioners were in blatant violation of
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`this rule expressly because each of plural petitioners designated its own lead
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`counsel to potentially forward different positions, resulting in a single petition with
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`multiple lead counsels. Agilysys, Inc., et al. v. Ameranth, Inc., CBM2014-00014,
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`Paper 11 (February 11, 2014) at 2; and Fandango, LLC, et al. v. Ameranth, Inc.,
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`CBM2014-00013, Paper 22 (March 24, 2014) at 2. This is clearly distinguishable
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`from the five petitions in question here, where each petition designates a single
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`lead counsel.
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`As such, CCT’s request should be denied since, for each petition, Petitioner
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`and co-Petitioners have designated a single lead counsel to speak with a uniform
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`voice for that petition.
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`B. CCT’s Request for Joinder is Impermissible by Statute
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`CCT has filed its motion requesting joinder of the five inter partes review
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`proceedings “[p]ursuant to 35 U.S.C § 315(c).” IPR2014-00280, Paper 15 at 1.
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`However, 35 U.S.C § 315(c) provides (emphasis added):
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`TOYOTA ET AL.’S OPPOSITION TO CCT’S MOTION FOR JOINDER
`Case IPR2014-00280
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`(c) Joinder.— If the Director institutes an inter partes
`review, the Director, in his or her discretion, may join as
`a party to that inter partes review any person who
`properly files a petition under section 311 that the
`Director, after receiving a preliminary response under
`section 313 or the expiration of the time for filing such a
`response, determines warrants the institution of an inter
`partes review under section 314.
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`Thus, the statute explicitly prohibits pre-institution joinder of inter partes
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`reviews. There can be no dispute about this fact, as the Board has confirmed the
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`same in denying a joinder request on the grounds that “35 U.S. Code § 315(c) only
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`permits joinder to a previously instituted case.” Fifth Third Bank v. Leon
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`Stambler, IPR2014-00244, Paper 4 (December 17, 2013) at 5.
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`As such, CCT’s motion requesting joinder is impermissible by statute and
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`should, therefore, be disregarded in its entirety.
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`C. CCT Has Not Met Its Burden in Establishing Entitlement to the
`Requested Joinder
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`As the moving party, CCT “has the burden of proof in establishing
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`entitlement to the requested relief.” NetApp, Inc. v. PersonalWeb Technologies,
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`LLC, IPR2013-00319, Paper 18 (July 22, 2013) at 4. In this regard, the Board has
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`established that “[a] motion for joinder should: (1) set forth the reasons why
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`joinder is appropriate; (2) identify any new grounds of unpatentability asserted in
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`TOYOTA ET AL.’S OPPOSITION TO CCT’S MOTION FOR JOINDER
`Case IPR2014-00280
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`the petition; (3) explain what impact (if any) joinder would have on the trial
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`schedule for the existing review; and (4) specifically address how briefing and
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`discovery may be simplified.” Id.
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`As CCT has not addressed any of these four requirements, CCT has
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`unequivocally failed to meet its burden in requesting joinder and, therefore, its
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`motion should be denied.
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`At most, CCT argues that it would be prejudiced if joinder is denied due to
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`the cost of five inter partes proceedings. IPR2014-00280, Paper 15 at 12.
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`However, CCT filed separate lawsuits against each of the above-listed Petitioner
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`and co-Petitioners and therefore placed the burden of defending the validity of its
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`patent against multiple parties on itself. SOMF at para. 1. Certainly, it is not the
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`task of the Board and Petitioner to minimize this burden brought on by CCT’s own
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`litigious behavior.
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`D. Petitioner Would Be Prejudiced by Joinder or Consolidation
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`As a matter of right, each of the above listed Petitioner and co-Petitioners is
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`entitled to file a separate petition requesting inter partes review within one year of
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`being served with a complaint alleging infringement. See 35 U.S.C. § 311 and 35
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`U.S.C. § 315(b). Although the five different petitions filed by the respective
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`9
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`TOYOTA ET AL.’S OPPOSITION TO CCT’S MOTION FOR JOINDER
`Case IPR2014-00280
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`parties list the same overall combination of petitioners, the primary Petitioner for
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`each proceeding is different, and the co-Petitioners are included for the purpose of
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`preserving the pendency of each proceeding in case one party settles with CCT.
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`Similarly, the lead counsel for each petition differs, in accordance with the primary
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`Petitioner for each proceeding.
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`Joinder or consolidation at this time would force Petitioners to choose one
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`lead counsel for all of the proceedings, and would diminish the ability of each
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`Petitioner (other than the one Petitioner corresponding to the sole lead counsel) to
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`control its respective petition. For example, the petition for the instant proceeding
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`(IPR2013-00280) was filed by primary Petitioner Toyota to raise grounds based on
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`Toyota’s own prior art (i.e., Toyota’s Celsior manual). Given that this prior art is
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`practiced, to this day, by Toyota, this art is clearly most relevant to Toyota and
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`therefore included in the petition prepared primarily by Toyota’s counsel and
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`designating Toyota’s counsel as lead counsel. Consolidating at this time would
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`thus prejudice Petitioner Toyota, and potentially deny it the ability to exercise
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`substantial control over the arguments with respect to the prior art that it practices.
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`TOYOTA ET AL.’S OPPOSITION TO CCT’S MOTION FOR JOINDER
`Case IPR2014-00280
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`E. Joinder or Consolidation Would Ultimately Increase the Board’s
`Burden
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`As stated above, although the five different petitions list the same overall
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`combination of petitioners, the primary Petitioner for each proceeding is different,
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`and the co-Petitioners are included for the purpose of preserving the pendency of
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`each proceeding in case one party settles with CCT. Absent such inclusion of co-
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`Petitioners, there is no guarantee that the prior art issues presented in a single inter
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`partes review petition filed by a sole Petitioner would be preserved if that
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`Petitioner were to settle with CCT. (See, e.g., IPR2014-00244, Paper 4 at 5, where
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`joinder request denied after petitioners in earlier-filed petition settled with patent
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`owner thereby terminating the earlier proceeding).
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`As an alternative to the approach taken here, each Petitioner could have
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`separately filed five petitions (for a total of 25 petitions) in order to ensure that all
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`of the various prior art issues are considered irrespective of settlement by another
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`Petitioner. However, such a scenario would have resulted in a much larger number
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`of petitions with substantial overlap in prior art issues (e.g., the Celsior manual
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`would have potentially been cited in five different petitions), thereby creating
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`undue burden on both the Board and CCT. To reduce such burden on the Board,
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`11
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`TOYOTA ET AL.’S OPPOSITION TO CCT’S MOTION FOR JOINDER
`Case IPR2014-00280
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`all of the instant primary Petitioners coordinated their respective petitions to avoid
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`redundancy and present different prior art issues in each.
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`Joining or consolidating the proceedings at this time would effectively
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`penalize the Petitioners for their good faith effort to challenge the validity of the
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`‘463 Patent in an efficient manner with minimal burden on the Board.
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`In that same vein, joining or consolidating the proceedings at this time
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`would discourage multiple accused infringers in future proceedings from
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`collaborating, and would instead encourage the filing of large numbers of separate
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`petitions with overlapping prior art and divergent positions (e.g., claim
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`construction) by each party thereby increasing the Board’s burden and
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`contradicting the Board’s policy “to secure the just, speedy, and inexpensive
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`resolution of every proceeding.” 37 C.F.R. § 42.1(b).
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`F. Joinder or Consolidation Would Be Impractical
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`In the five related petitions at issue here, the petitioning parties have worked
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`together to present different prior art issues in each proceeding, while avoiding
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`redundancy. SOMF at paras. 2-6. Furthermore, across the five petitions, three
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`different experts have submitted declarations. As such, joinder or consolidation is
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`neither necessary, nor practical, here.
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`12
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`TOYOTA ET AL.’S OPPOSITION TO CCT’S MOTION FOR JOINDER
`Case IPR2014-00280
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`In a similar scenario previously before the Board, i.e., where a petitioner
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`filed multiple petitions with different primary prior art references in each, the
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`Board has denied joinder. See CBM2012-00002, Paper 16 at 2; See also Liberty
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`Mutual Insurance Co. v. Progressive Casualty Insurance Co, CBM2012-00004,
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`Paper 15 (February 22, 2013) at 2.
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`Specifically, among the past decisions regarding joinder of America Invents
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`Act (AIA) post-grant proceedings, most of which relate to a Petitioner attempting
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`to circumvent the one-year statutory bar for filing a petition, the circumstances in
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`CBM2012-00002 and CBM2012-00004 are the most closely related to those here.
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`Namely, as in the instant case, multiple petitions were simultaneously filed
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`requesting review of overlapping sets of claims of the same patent. See
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`CBM2012-00002, Paper 1 (September 16, 2012) at 23; See also CBM2012-00004,
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`Paper 1 (September 16, 2012) at 22. Also, as in the instant case, each petition
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`relied on different primary references in the proposed grounds of rejection. See id.
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`However, in CBM2012-00002 and CBM2012-00004, the Board denied the parties’
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`request for joinder in favor of “the focus and clarity afforded by [multiple] smaller
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`proceedings with different prior art issues.” CBM2012-00002, Paper 16 at 2; and
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`TOYOTA ET AL.’S OPPOSITION TO CCT’S MOTION FOR JOINDER
`Case IPR2014-00280
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`CBM2012-00004, Paper 15 at 2. CCT has provided no reason as to why the
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`instant case is distinguishable from this precedent.
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`In fact, separate smaller proceedings are even more warranted in the instant
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`case as compared to CBM2012-00002 and CBM2012-00004, since the five
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`different proceedings here involve more than just “different prior art issues” that
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`would make consolidation impractical. For example, the five different proceedings
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`here involve different sets of challenged claims, different expert declarants,
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`different primary petitioners, and different lead counsels, all of which would be
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`difficult and impractical, if not impossible, to reconcile if joined into one
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`proceeding. For this reason, the Board has held that these factors weigh against
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`joinder. See, e.g., Ariosa Diagnostics v. Isis Innovation Limited, IPR2103-00250,
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`Paper 24 (PTAB, Sept. 3, 2013) at 2-3.
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`TOYOTA ET AL.’S OPPOSITION TO CCT’S MOTION FOR JOINDER
`Case IPR2014-00280
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`V. CONCLUSION
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`For at least these reasons, the Board should deny CCT’s motion for joinder.
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`Respectfully submitted,
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` /William H. Mandir /
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`William H. Mandir
`Registration No. 32,156
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`Sughrue Mion, PLLC
`Telephone: (202) 293-7060
`Facsimile: (202) 293-7860
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`WASHINGTON OFFICE
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`23373
`CUSTOMER NUMBER
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`Date: May 8, 2014
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the attached Opposition to CCT’s
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`Motion for Joinder was sent via e-mail on May 8, 2014, to the following:
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`John R. Kasha, Reg. No. 53,100
`Kasha Law LLC
`14532 Dufief Mill Rd.
`North Potomac, MD 20878
`(703) 867-1886
`john.kasha@kashalaw.com
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`Counsel of Record for U.S. Patent No.
`6,324,463
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`Date: May 8, 2014
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`Respectfully submitted,
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`
` /William H. Mandir /
`William H. Mandir
`Registration No. 32,156
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