Paper No. 3
`
`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. 8,051,181
`Issued: November 1, 2011
`Filed: February 27, 2007
`Inventors: Victor Larson, et al.
`Title: Method for establishing secure communication link between computers of
`virtual private network
`____________________
`
`Inter Partes Review No. IPR2014-00485 and -00486
`__________________________________________________________________
`
`
`PETITIONER’S MOTION FOR JOINDER
`
`
`
`
`
`
`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. 8,051,181
`Issued: November 1, 2011
`Filed: February 27, 2007
`Inventors: Victor Larson, et al.
`Title: Method for establishing secure communication link between computers of
`virtual private network
`____________________
`
`Inter Partes Review No. IPR2014-00485 and -00486
`__________________________________________________________________
`
`
`PETITIONER’S MOTION FOR JOINDER
`
`
`
`
`
`
`Motion for Joinder in IPR2014-00485 & -00486
`
`I.
`
`INTRODUCTION
`
`Six petitions filed separately by Apple Inc. and Microsoft Corp. against two
`
`very closely related patents raise a set of overlapping issues that are most
`
`efficiently addressed in one inter partes review proceeding. By this motion, Apple
`
`requests that its petitions regarding U.S. Patent No. 8,051,181 (the ’181 patent) and
`
`U.S. Patent No. 7,987,274 (the ’274 patent) be considered concurrently with
`
`Microsoft’s petitions regarding the ’274 patent, and moves to join any proceedings
`
`based on these petitions in a single proceeding.1
`
`Joinder is justified because it will enable the Office to efficiently and in a
`
`timely certain dispose of common issues of patentability affecting sets of patent
`
`claims that Patent Owner has admitted are not patentably distinct. Specifically,
`
`during examination of the ’181 and ’274 patents, the Office rejected claims in each
`
`patent as being unpatentable over claims in the other. SOF ¶¶ 9, 13. Patent Owner
`
`did not dispute the merits of these double patenting findings, but instead
`
`acquiesced by filing terminal disclaimers of each patent over the other.2 SOF ¶¶ 6,
`
`1
`IPR2013-00485 and -00486 were filed by Apple on the ’181 patent,
`
`IPR2014-00483 and 00484 were filed by Apple on the ’274 patent, and IPR2014-
`
`00403 and -00404 were filed by Microsoft on the ’274 patent.
`
`2
`
`Patent Owner also acquiesced to double patenting rejections of the ’181
`
`patent claims over U.S. Patent No. 7,188,180 (the ’180 patent) by filing a terminal
`
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`Motion for Joinder in IPR2014-00485 & -00486
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`8, 11-12, 16-17. Patent Owner thus admitted the ’181 and ’274 patent claims are
`
`not patentably distinct.
`
`Joinder is clearly justified given the interdependence of the patentability of
`
`the claims in the ’181 and ’274 patents. In addition, joinder is warranted in view
`
`of the substantial degree of commonality of issues presented in IPR2014-00483, -
`
`00484, -00485 and -00486 relative to IPR2014-00403 and -00404. For example,
`
`the petitions rely on substantially the same primary references and advance
`
`substantially similar grounds of unpatentability for the ’181 and ’274 patents.
`
`Joinder also is warranted because it will enable inter partes review of the
`
`’181 patent claims alongside the patentably indistinct ’274 patent claims.
`
`Although the ’181 patent was asserted in an action for infringement more than one
`
`year before the date petitions in IPR2014-00485 and -00486 were filed, the Board
`
`is authorized to conduct inter partes review on the basis of these petitions as they
`
`are accompanied by a motion for joinder. See 35 U.S.C. § 315(b). Granting the
`
`present joinder motion will further the statutory purpose of the inter partes review
`
`system, as it will reduce the number of issues the district court in related litigation
`
`involving the ’181 patent must resolve at trial (now scheduled for October 2015).
`
`Other factors relevant to joinder favor granting this motion, including: (i) the
`
`same schedule for various proceedings can be adopted, (ii) discovery can be
`
`disclaimer linking the ’181 patent to the ’180 patent. SOF ¶¶ 7, 10, 13.
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`Motion for Joinder in IPR2014-00485 & -00486
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`coordinated to minimize burdens on the parties and witnesses, and (iii) joinder will
`
`not materially affect the range of issues needing to be addressed by the Board and
`
`by the parties in the joined proceedings. Because all these factors support joining
`
`these proceedings, Petitioner requests the Board to grant this motion for joinder.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`1.
`
`U.S. Patent No. 8,051,181 (the ’181 patent) issued on November 1,
`
`2011 from U.S. Application No. 11/679,416 (the ’416 application). Ex. 1025.
`
`2.
`
`U.S. Patent No. 7,987,274 (the ’274 patent) issued on July 26, 2011
`
`from U.S. Application No. 11/839,987 (the ’987 application). Ex. 1027.
`
`3.
`
`U.S. Patent No. 7,188,180 (the ’180 patent) issued on March 6, 2007
`
`from U.S. Application No. 10/702,486 (the ’486 application). Ex. 1001.
`
`4.
`
`The ’181 and ’274 patents each claim benefit, inter alia, to the ’180
`
`patent (i.e., to the ’486 application), and to earlier filed applications to which the
`
`’180 patent claims benefit, including, inter alia, U.S. Application No. 09/504,783
`
`filed on February 15, 2000. See Exs. 1001, 1025 & 1027.
`
`5.
`
`6.
`
`The ’180, ’274 and ’181 patents have a nearly identical disclosure. Id.
`
`The ’181 patent is terminally disclaimed over the ’274 patent. Ex.
`
`1026 at 797, 1045.
`
`7.
`
`The ’181 patent is terminally disclaimed over the ’180 patent. Ex.
`
`1026 at 795, 1045.
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`Motion for Joinder in IPR2014-00485 & -00486
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`8.
`
`The ’274 patent is terminally disclaimed over the ’181 patent. Ex.
`
`1028 at 634, 2741.
`
`9.
`
`On April 8, 2010, claims 2, 24, 26 and 28-30 of the ’416 application
`
`(later issuing as claims 2, 24, 26, 28, 29 and 1, respectively of the ’181 patent)
`
`were rejected for obviousness-type double patenting over claim 1 of the ’987
`
`application (which later issued as claim 1 of the ’274 patent). Ex. 1026 at 783-785.
`
`10. Also on April 8, 2010, claims 2, 24, 26 and 28-30 of the ’416
`
`application (later issuing as claims 2, 24, 26, 28, 29 and 1, respectively of the ’181
`
`patent) were rejected for obviousness-type double patenting over claim 1 of the
`
`’180 patent. Ex. 1026 at 783-785.
`
`11. On October 8, 2010, in its response to the two double patenting
`
`rejections, Patent Owner did not dispute the merits of either finding of
`
`obviousness-type double patenting. Instead, Patent Owner argued the rejections
`
`should be withdrawn because it had terminally disclaimed the ’181 patent over
`
`each of the ’274 and ’180 patents. Ex. 1026 at 799, 805-816.
`
`12. Also on October 8, 2010, Patent Owner filed terminal disclaimers in
`
`the ’181 patent relative to each of the ’180 and ’274 patents. Ex. 1026 at 795
`
`(regarding the ’180 patent) and at 797 (regarding the ’987 application later issued
`
`as the ’274 patent). The terminal disclaimer form used by Patent Owner in both
`
`instances was entitled “Terminal Disclaimer to Obviate a Double Patenting
`
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`Motion for Joinder in IPR2014-00485 & -00486
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`Rejection Over a ‘Prior’ Patent”) (PTO/SB/26(07-09)). The Office entered these
`
`terminal disclaimers on November 4, 2011. Ex. 1026 at 1045. The Office did not
`
`maintain double patenting rejections over the ’180 and ’274 patents in a
`
`subsequent rejection, and the ’181 claims were later allowed. Ex. 1026 at 3311.
`
`13. On July 8, 2010, the ’274 patent claims were rejected for obviousness-
`
`type double patenting over claims 2-23 of the ’416 application (which later issued
`
`as claims 1-22 of the ’181 patent). Ex. 1028 at 380-381.
`
`14. On June 9, 2009, the ’274 patent claims were rejected for
`
`obviousness-type double patenting over the ’180 patent claims. Ex. 1028 at 183-
`
`186. The Office maintained this rejection in a later action. Ex. 1028 at 250.
`
`15. On January 8, 2010, Patent Owner responded to the non-statutory
`
`double patenting rejection of the ’274 claims based on the ’180 patent by arguing
`
`its provision of a terminal disclaimer obviated the rejection. Ex. 1028 at 282, 284.
`
`This followed a prior response offering to provide this terminal disclaimer. Ex.
`
`1028 at 241-243. In its responses, Patent Owner did not dispute the finding of
`
`obviousness of the ’274 claims over the ’180 claims. Ex. 1028 at 282.
`
`16. On January 10, 2011, Patent Owner responded to the double patenting
`
`rejection of the ’274 claims based on the ’181 patent by arguing its provision of a
`
`terminal disclaimer obviated the rejection. Ex. 1028 at 11. Patent Owner did not
`
`dispute the merits of the Office’s finding of obviousness-type double patenting of
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`Motion for Joinder in IPR2014-00485 & -00486
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`the ’274 claims over the ’181 patent claims. Id.
`
`17. Also on January 10, 2011, Patent Owner filed a terminal disclaimer in
`
`the ’274 patent relative to the ’416 application that later issued as the ’181 patent.
`
`Ex. 1028 at 634. The terminal disclaimer was entered by the Office on February 8,
`
`2011. Ex. 1028 at 2741. The Office subsequently withdrew the double patenting
`
`rejection, and allowed the ’274 claims. Ex. 1028 at 3012-3016.
`
`18. The independent claims of the ’181 and ’274 patents are highly
`
`similar. Ex. 1029 ¶¶ 197-203. For example, claim 2 of the ’181 patent and claim 1
`
`of the ’274 patent, reproduced below, recite highly similar steps:
`
`’181 Patent
`2. A method of using a first device to
`communicate with a second device
`having a secure name, the method
`comprising:
`from the first device, sending a
`message to a secure name service, the
`message requesting a network address
`associated with the secure name of the
`second device;
`
`at the first device, receiving a message
`containing the network address
`associated with the secure name of the
`second device; and
`
`from the first device, sending a
`message to the network address
`associated with the secure name of the
`second device using a secure
`
`’274 Patent
`1. A method of accessing a secure
`network address, comprising:
`
`sending a query message from a first
`network device to a secure domain
`service, the query message requesting
`from the secure domain service a
`secure network address for a second
`network device;
`
`receiving at the first network device a
`response message from the secure
`domain name service containing the
`secure network address for the second
`network device; and
`
`sending an access request message
`from the first network device to the
`secure network address using a virtual
`private network communication link.
`
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`Motion for Joinder in IPR2014-00485 & -00486
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`communication link.
`
`19. Claims dependent from claim 2 of the ’181 patent are substantially
`
`similar to corresponding claims dependent from claim 1 of the ’274 patent. Ex.
`
`1029 ¶¶ 197-203. The table below identifies corresponding dependent claims in
`
`each of the ’181 and ’274 patents:
`
`’181 5
`
`’274 7
`
`6
`
`8
`
`7
`
`8
`
`9 10 11 14 15 16 17 18 20 21 22
`
`9 10 11 12 13
`
`2
`
`3
`
`4
`
`5
`
`14 15 16 17
`
`20. The additional independent claims in the ’181 patent (i.e., claims 1,
`
`24, 26, 28 and 29) do not add material distinctions to claim 2 of the ’181 patent or
`
`claims in the ’274 patent. For example, claim 16 of the ’274 patent specifies that
`
`the “second network device has an unsecure name” – a provision recited in claim
`
`26 of the ’181 patent. Similarly, claim 17 specifies “the secure network address is
`
`registered with the secure domain service prior to the step of sending a query
`
`message to a secure domain service.” A similar clause is found in claims 24 and
`
`26 of the ’181 patent. Independent claims 1, 28 and 29 of the ’181 patent simply
`
`express processes as instructions in “[a] non-transitory machine-readable medium.”
`
`21.
`
`In a Right of Appeal Notice (“RAN”) dated August 16, 2013 in inter
`
`partes reexamination control no. 95/001,949 (the ’949 Proceeding), the Office
`
`found all claims of the ’181 patent unpatentable. See Ex. 1072 (’949 Proceeding)
`
`at 1390-1391 (RAN dated 8/16/2013). The grounds of unpatentability that are the
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`Motion for Joinder in IPR2014-00485 & -00486
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`subject of the RAN include, inter alia, that (i) claims 1-12 are anticipated by Beser
`
`(Ex. 1031); (ii) claims 1-15, 18-23 and 29 are anticipated by Provino (Ex. 1003),
`
`and (iii) claims 24-26 are obvious based on Provino (Ex. 1003) in view of the
`
`H.323 protocol (Ex. 1077).
`
`22. The ’949 Proceeding is presently the subject of an appeal pending
`
`before the Board on the grounds maintained in the RAN. Ex. 1072 at 1505.
`
`23. The ’181 patent was the subject of a complaint for infringement that
`
`was served on Apple Inc. in November of 2011, which led to civil action no. 11-
`
`cv-00563-LED (E.D. Tex.). That action was consolidated in June 2013 with a
`
`different action in which the ’181 patent had not been asserted (i.e., civil action no.
`
`6:12-cv-00855-LED). The ’181 was also the subject of an ITC proceeding (i.e.,
`
`337-TA-858), filed on September 14, 2012, which was subsequently withdrawn by
`
`Patent Owner in May of 2013.
`
`24. The ’274 and ’180 patents have not been asserted against Apple Inc.
`
`III. ARGUMENT
`
`Under 35 U.S.C. § 315(b), the Board is authorized to join proceedings based
`
`on petitions involving different patents. 35 U.S.C. § 315(c) (“…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 … determines warrants
`
`the institution of an inter partes review under section 314”); 37 C.F.R. 42.122(b).
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`Motion for Joinder in IPR2014-00485 & -00486
`
`The joinder authority applicable to IPR proceedings is distinct from that governing
`
`post grant review proceedings, which only authorizes joinder for petitions on the
`
`same patent. See 35 U.S.C. § 325(c) (“JOINDER.--If more than 1 petition for a
`
`post-grant review under this chapter is properly filed against the same patent …”).
`
`
`
`The Board has identified several factors that are relevant to a motion for
`
`joinder. For example, in IPR2013-00386, the Board explained:
`
`A motion for joinder should: (1) set forth the reasons why joinder is
`
`appropriate; (2) identify any new grounds of unpatentability asserted
`
`in the petition; (3) explain what impact (if any) joinder would have on
`
`the trial schedule for the existing review; and (4) address specifically
`
`how briefing and discovery may be simplified.
`
`See IPR2013-00004, Paper 15 at 4; Frequently Asked Question (“FAQ”) H5
`
`on the Board’s website at http://www.uspto.gov/ip/boards/bpai/prps.jsp.
`
`Each of these factors is addressed below, and, when considered, strongly
`
`supports granting this motion for joinder.
`
`A. Reasons Why Joinder Is Necessary and Appropriate
`As explained in § I, above, Patent Owner has conceded the ’181 and ’274
`
`
`
`patent claims are not patentably distinct. Specifically: (i) it acquiesced to the
`
`finding by the Office that the ’181 claims were unpatentable over the ’274 claims
`
`by filing a terminal disclaimer to overcome the Office’s finding of obviousness-
`
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`Motion for Joinder in IPR2014-00485 & -00486
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`type double patenting rather than dispute that finding (SOF ¶¶ 6, 9, 11-12) and (ii)
`
`it acquiesced to the Office’s finding that the ’274 claims were unpatentable over
`
`the ’181 patent claims by again filing a terminal disclaimer rather than disputing
`
`the Office’s finding of non-statutory double patenting (SOF ¶¶ 8, 13-17). Patent
`
`Owner cannot now contend the ’181 and ’274 patent claims are patentably distinct.
`
`Also, all of the ’181 patent claims presently stand rejected in the ’949 inter
`
`partes reexamination proceeding, now on appeal before the Board. SOF ¶¶ 21-22.
`
`When that proceeding might conclude, however, cannot be predicted.3 There is
`
`thus a material possibility the ’274 patent claims will be found unpatentable in an
`
`inter partes review proceeding before the Board concludes the reexamination
`
`proceedings involving the patentably indistinct ’181 patent claims. If that occurs,
`
`Patent Owner will be precluded, pursuant to 37 C.F.R. § 42.73(d)(3), from
`
`contending the ’181 claims are patentable, as it has already conceded they are not
`
`3
`By way of illustration, the Director of the Central Reexamination Unit
`
`recently vacated appeals – 8 months after the appeals were taken and nearly 3
`
`months after briefs were filed – in Control Nos. 95/001,788 and 95/001,789
`
`involving two related patents of Patent Owner to enable the Examiner to consider a
`
`belatedly filed supplemental expert report that the Examiner – prior to issuing the
`
`RANs – stated he had considered and found to not alter his conclusions on
`
`patentability. Ex. 1086 at 5; Ex. 1087 at 5. Both proceedings now await action.
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`Motion for Joinder in IPR2014-00485 & -00486
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`patentably distinct from the ’274 patent claims. See 37 C.F.R. § 42.73(d)(3)
`
`(patent owner precluded from “taking action inconsistent with the adverse
`
`judgment, including obtaining in any patent: (i) a claim that is not patentably
`
`distinct from a finally refused or canceled claim.”). Granting this joinder motion
`
`will enable the Board to conserve its limited resources, obviate the need to conduct
`
`independent proceedings on two patents having patentably indistinct claims, and
`
`prevent a potentially wasted investment of time conducting an appeal of the ‘949
`
`Proceeding due to the effect of 37 C.F.R. §42.73(d)(3). Instead, joinder will enable
`
`the Board to address, in a single inter partes review proceeding and in a time-
`
`certain manner, the common patentability issues facing the ’181 and ’274 patents.
`
`
`
`Joinder is also warranted because the issues raised in the petitions filed by
`
`Apple (IPR2014-00483 to -00486) and Microsoft (IPR2014-00403 and -00404) are
`
`highly similar. As shown in the table below, there is a substantial overlap in the
`
`grounds raised by Apple and Microsoft in their petitions (e.g., the same four
`
`primary references are used, the same claims in the ’274 patent are being
`
`challenged). The ’274 and ’181 patents also have a nearly identical disclosure
`
`(SOF ¶ 5) and their claims have the same effective filing date (i.e., not earlier than
`
`April of 2000) (SOF ¶ 4). This means there will be no distinct issues of
`
`applicability of the prior art to the claims in the ’274 and ’181 patents, and
`
`consistent interpretations will be used for the claim terms. The high degree of
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`Motion for Joinder in IPR2014-00485 & -00486
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`similarity between the claims of the ’274 and ’181 patents (see SOF ¶¶ 18-20) also
`
`means no additional effort of consequence should be required to compare the
`
`claims to the teachings of the primary references or assess the patentability defects
`
`that have been identified. There is thus a strong justification for joining the
`
`petitions contesting the patentability of the claims in the ’181 and ’274 patents.4
`
`IPR2014
`Patent
`
`Provino
`(Ex. 1003)
`
`Kiuchi
`(Ex. 1004)
`
`Beser
`(Ex. 1031)
`
`RFC 2543
`(Ex. 1033)
`
`-00403
`’274
`1-5, 7, 8,
`10, 12,
`13, 15,
`17, 18
`
`
`
`
`
`
`
`-00404
`’274
`
`
`
`1-5, 7, 8,
`10, 12,
`15, 17
`
`
`
`
`
`-00483
`’274
`1-5, 7, 8,
`10, 12,
`13, 15,
`17, 18
`
`-00484
`’274
`
`-00485
`’181
`
`-00486
`’181
`
`
`
`
`
`1-29
`
`
`
`
`
`1-6, 8-9,
`13-19,
`21-29
`
`1-29
`
`1-5, 7, 8,
`10, 12,
`15, 17
`1-5, 7, 8,
`10, 12,
`13, 15,
`17, 18
`
`
`
`
`
`1-5, 7, 8,
`10, 12,
`13, 15,
`17, 18
`
`
`
`
`
`1-29
`
`
`4
`Petitioner also has filed petitions contesting the ’180 patent (i.e., IPR2014-
`
`00481 and -00482) which present the same grounds as those in IPR2014-00401
`
`and -00405 filed by Microsoft. Petitioner believes any joined proceedings
`
`involving the ’274 and ’181 patents can be coordinated with those proceedings.
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`Motion for Joinder in IPR2014-00485 & -00486
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`B. New Grounds of Patentability in the Apple Petitions
`As shown in the table above, the -00483 and -00484 petitions present
`
`substantially overlapping grounds relative to the -00403 and -00404 petitions, and
`
`present additional grounds based on Beser (Ex. 1031) and RFC 2543 (Ex. 1033).
`
`The petitions against the ’181 patent (-00485 and -00486) rely on the same four
`
`primary references, but as that patent has different claims, different explanations
`
`are provided as to why the ’181 claims are unpatentable over those four references.
`
`Consideration of the additional grounds presented in the Apple petitions will
`
`not impose burdens on the Board relative to consideration of the grounds in the -
`
`00403 and -00404 petitions. The primary independent claims in the ’274 and ‘181
`
`patents share the same structure and key claim elements, and the ’274 claim
`
`elements are simply narrower than their counterparts in the ’181 claims (e.g.,
`
`“query message” vs. “message”; “secure domain name” vs. “secure name”; “secure
`
`domain name service” vs. “secure name service”). SOF ¶¶ 18-20; Ex. 1029
`
`¶¶ 199, 200, 202. Considering the two additional primary references applied to the
`
`’274 and ’181 patent claims (i.e., Beser (Ex. 1031) and RFC 2543 (Ex. 1033)) also
`
`will not impose a significant burden on the Board – while each reference describes
`
`distinct systems, each system achieves secure communications via IP tunneling and
`
`VPNs, and refers to well known Internet protocols in doing so. Patent Owner also
`
`is familiar with Beser and RFC 2543, which are at issue in related IPR and inter
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`Motion for Joinder in IPR2014-00485 & -00486
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`partes reexamination proceedings (e.g., IPR2014-00237-00238, the ’949
`
`Proceeding). Consideration of additional secondary references also will not be
`
`burdensome, given the limited role those references play in supporting the findings
`
`of obviousness. Consideration of the additional grounds thus will not impose an
`
`unreasonable burden on the Board or the Parties.
`
`Impact on the Trial Schedule
`
`C.
`Granting this motion for joinder will have no impact on the trial schedule of
`
`the various proceedings. The Apple petitions were submitted well before trial
`
`might be instituted on the IPR2014-00403 and -00404 petitions, and the Board can
`
`thus readily accommodate consideration of the Apple petitions within the schedule
`
`it sets for evaluating the Microsoft petitions. There also is no prejudice to Patent
`
`Owner, given that Apple’s petitions have been filed well before the date Patent
`
`Owner’s preliminary response would be due. Further, as neither briefing nor
`
`discovery in the Microsoft proceedings has begun, the Board can issue a single
`
`scheduling order for the joined proceedings. See IPR2013-00327, Paper 15 at 3-4.
`
`Proposals for Briefing in the Joined Proceedings
`
`D.
`In the interest of efficiency, Petitioner is willing to accept reasonable
`
`restrictions on discovery as long as they do not preclude Petitioner from effectively
`
`participating in the joined proceeding. For example, based on the petitions that
`
`have been filed, only one expert witness per petitioner has provided testimony.
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`Motion for Joinder in IPR2014-00485 & -00486
`
`Patent Owner likewise should need only one or two witnesses to support its
`
`position. Depositions of this small number of witnesses can be readily
`
`accommodated within a standard IPR schedule. Apple is also willing to coordinate
`
`with Microsoft to avoid duplicative cross-examination of Patent Owner witnesses
`
`(e.g., providing that only one party conducts cross-examination of each witness on
`
`each ground advanced in the joined proceedings).
`
`Petitioner also is willing to accept other conditions on the conduct of the
`
`joined proceeding, such as limiting its participation to the unique grounds
`
`presented in its petitions, and by providing joint comments with Microsoft on the
`
`common grounds. See Motorola, IPR2013-00256, Paper 10 at 2-3. For example,
`
`if the Board instituted review on the basis of the two primary references advanced
`
`by Apple in its petitions, along with grounds based on references advanced by both
`
`Apple and Microsoft, Apple would limit its reply to grounds based on the prior art
`
`it alone has advanced, and would file a joint reply on the remaining grounds.
`
`IV. Conclusion
`Because the factors relevant to grant of a motion for joinder strongly support
`
`joining IPR2014-0403, -0404, -0483, -0484, -0485 and -0486, Petitioner requests
`
`this joinder motion be granted.
`
`
`
`
`
`- 15 -
`
`
`
`Motion for Joinder in IPR2014-00485 & -00486
`
`Dated: March 10, 2014
`
`
`
`
`
`
`
`Respectfully Submitted,
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan (Reg No. 43,401)
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`jkushan@sidley.com
`
`
`
`
`
`
`
`Motion for Joinder in IPR2014-00485 & -00486
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 10th day of March 2014, a copy of this Third Party
`Proposal on Discovery, has been served in its entirety by e-mail on the following
`counsel of record for patent owner:
`
`Joseph E. Palys
`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
`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
`
`
`Dated:
`
`March 10, 2014
`
`
`
`Respectfully submitted,
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`
`
`
`
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