`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAP America Inc.,
`
`Petitioner,
`
`v.
`
`Clouding IP, LLC
`
`Patent Owner.
`
`IPR2014-00306
`
`Patent 6,738,799
`
`PETITIONER’S REPLY IN SUPPORT OF ITS MOTION FOR JOINDER
`
`Mail Stop PATENT BOARD, PTAB
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`In its Opposition to the Motion for Joinder (“Opposition”) filed by Petitioner
`
`SAP America Inc., (“SAP” or “Petitioner”), Clouding IP, LLC (“Clouding”) makes
`
`one argument against joinder: it would require an extension of the current schedule
`
`to allow Clouding to depose SAP’s expert, and SAP did not propose an extended
`
`schedule in its motion.1 Opposition at 5-6, 8. This argument is without merit.
`
`Within the confines of the present schedule, Clouding would be able to depose
`
`SAP’s expert and even if a short extension was necessary, such a change to the
`
`schedule should not prevent joinder.
`
`In any event, to facilitate joinder SAP agrees to withdraw the declaration of
`
`Dr. Andrew Grimshaw submitted in support of SAP’s petition, and will agree
`
`instead to adopt the declaration of Dr. Norman Hutchinson (“Hutchinson
`
`Declaration”) submitted in support of the petition in IPR2013-00586 (the “‘586
`
`IPR”).2 Because SAP has withdrawn the declaration of Dr. Grimshaw, and has
`
`agreed to adopt the declaration of Dr. Hutchinson who has already been deposed by
`
`
`1
`Clouding also argues, as it did in its Preliminary Response (Paper 7 at 13-
`14), that the present IPR should not be instituted because the proposed grounds are
`redundant to those in the ‘586 IPR. As described in the Motion (at 8 n.2), this
`argument is without merit.
`2
`If desired, SAP is willing to submit an amended petition with citations to the
`Hutchinson Declaration.
`
`1
`
`
`
`
`
`Clouding, joinder will not require any change to the current schedule in the ‘586
`
`IPR.3 As such, Clouding’s opposition to SAP’s motion for joinder is moot.
`
`For these reasons, as well as those set forth in the Motion, SAP respectfully
`
`requests that its Petition for Inter Partes Review of U.S. Patent No. 6,738,799 be
`
`instituted and that the proceeding be joined with Unified Patents, Inc. v. Clouding
`
`IP, LLC, Case IPR2013-00586.
`
`Although SAP believes that no fee is required for this Motion, the
`
`Commissioner is hereby authorized to charge any additional fees which may be
`
`required for this Motion to Deposit Account No. 04-1073.
`
`
`3 While no other prejudice has been identified, SAP would agree to a
`reasonable extension to the schedule to address any other alleged prejudice caused
`by the joinder.
`
`2
`
`
`
`May 6, 2014
`
`Respectfully Submitted,
`
` /
`
` Frank C. Cimino, Jr. /
`Frank C. Cimino, Jr. (Reg. No. 39,945)
`Megan S. Woodworth (Reg. No. 53,655)
`S. Gregory Herrman (Reg. No. 66,271)
`DICKSTEIN SHAPIRO LLP
`1825 Eye Street, NW
`Washington, DC 20006-5403
`Tel: (202) 420-3601
`Fax: (202) 420-2201
`Email: CiminoF@dicksteinshapiro.com
` WoodworthM@dicksteinshapiro.com
` HerrmanG@dicksteinshapiro.com
`
`Attorneys for Petitioner
`SAP America, Inc.
`
`
`
`Dated:
`
`
`
`
`3
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies pursuant to 37 C.F.R. §§ 42.6(e) that
`
`PETITIONER’S REPLY IN SUPPORT OF ITS MOTION FOR JOINDER was
`
`served on the Patent Owner on May 6, 2014, by filing this document though the
`
`Patent Review Processing System as well as by delivering a copy via Federal
`
`Express at the following address:
`
`Tarek N. Fahmi, APC
`Ascenda Law Group, PC
`84 W. Santa Clara St.
`Suite 550
`San Jose, CA 95113
`
`Dated: ___May 6, 2014____
`
`
`
`
`
`
`
`
`
`By: __/S. Gregory Herrman/___________
` S. Gregory Herrman (Reg. No. 66,271)
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