`Patent 7,917,843
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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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`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
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`Petitioners,
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`v.
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`Arendi S.A.R.L.,
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`Patent Owner
`____________
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`Case IPR2014-01142
`Patent 7,917,843
`____________
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`ARENDI’S OPPOSITION TO MOTION FOR JOINDER
`FILED BY SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC
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`Case IPR2014-01142
`Patent 7,917,843
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`TABLE OF CONTENTS
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`I. INTRODUCTION .............................................................................................. 1
`II. FACTUAL BACKGROUND ............................................................................ 1
`A. Samsung Seeks to Add its Inter Partes Review to the Apple IPR ................. 1
`III. GROUND FOR JOINDER ............................................................................... 3
`A. Joinder Would Introduce Subject Matter that Falls Outside the Scope of Inter
`Partes Review ............................................................................................... 5
`B. Joinder Would Effectively Introduce New Grounds into the Apple IPR ........ 7
`C. Joinder Would Prejudice Arendi ................................................................... 8
`D. Joinder Would Add Significant Complexity, Delay and Cost to the Apple
`IPR, Thereby Unduly Delaying Its Resolution .............................................. 8
`Joinder Would Introduce New Evidence .................................................... 8
`i.
`ii. Joinder Would Expand and Complicate Discovery .................................. 10
`iii. Joinder Would Disrupt the Schedule of the Apple IPR, Leading to Undue
`Delays in Reaching Final Decision .......................................................... 11
`iv. Samsung has Improperly Numbered the Exhibits for its IPR .................... 12
`IV. Conclusion ..................................................................................................... 13
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`TABLE OF AUTHORITIES
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`Cases
`Arendi S.A.R.L. v. Samsung Electronics Co. Ltd., et al., Case No. 1:2012cv01598
`(D. Del.) .............................................................................................................. 1
`Arthrex, Inc. v. Bonutti Skeletal Innovations LLC, IPR2013-00632, Paper No. 23 . 4
`Dell Inc. v. Network-1 Security Solutions, Inc., IPR2013-00385, Paper No. 17 ...... 9
`Microsoft Corp. v. Proxyconn, Inc.,IPR2013-00109, Paper No. 15 .................... 3, 4
`Motorola Mobility LLC v. SoftView LLC, IPR2013-00256, Paper No. 10 ............... 9
`NetApp, Inc. v. PersonalWeb Technologies, LLC & Level 3 Communications, IPR
`2013-00319, Paper No. 15 ................................................................................... 3
`Statutes
`35 U.S.C. § 102 .................................................................................................. 5, 6
`35 U.S.C. § 103 .................................................................................................. 5, 6
`35 U.S.C. § 311(b) ................................................................................................. 5
`Regulations
`37 C.F.R. § 42.101(b) ............................................................................................. 4
`37 C.F.R. § 42.51(b) ............................................................................................. 10
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`I. INTRODUCTION
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`Patent Owner Arendi S.A.R.L. (“Arendi”) respectfully requests that the
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`Board deny Petitioners Samsung Electronics Co., Ltd., Samsung Electronics
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`America, Inc., and Samsung Telecommunications America, LLC’s (“Samsung”)
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`motion requesting joinder of IPR2014-01142 (“Samsung IPR”) with IPR2014-
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`00208 (“Apple IPR”). The Samsung IPR and the Apple IPR each concern U.S.
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`Patent No. 7,917,843 (“the ’843 patent”).
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`The Board should deny Samsung’s motion because joinder will incorporate
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`subject matter that forms an improper basis for challenging a patent via inter partes
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`review, require a burdensome amount of additional discovery and expert
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`testimony, and prevent a timely conclusion of the Apple IPR.
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`II. FACTUAL BACKGROUND
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`A. Samsung Seeks to Add its Inter Partes Review to the Apple IPR
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`On December 4, 2012, Arendi served a complaint against Samsung alleging
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`that certain Samsung products infringe certain claims of the ’843 patent. See
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`Ex.2001, Arendi S.A.R.L. v. Samsung Electronics Co. Ltd., et al., Case No.
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`1:2012cv01598 (D. Del.).
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`On December 2, 2013, Apple Inc., Google Inc., and Motorola Mobility LLC
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`filed a request for inter partes review of the claims of the ’843 patent. With this
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`request, Apple submitted a Declaration of Dr. Daniel A. Menascé. At this time,
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`Samsung did not take any actions against the ’843 patent.
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`On June 11, 2014, the Board instituted an inter partes review solely on the
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`ground of obviousness based on Pandit.
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`On July 11, 2014, Samsung served Arendi with a petition requesting inter
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`partes review challenging the ‘843 Patent. The petition was accompanied by
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`Samsung’s motion for joinder with the Apple IPR. In support of its IPR, Samsung
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`has submitted a substantial amount of new evidence to be examined and
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`considered in its IPR. The petition includes a total of nine (9) exhibits, including
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`the declaration and curriculum vitae of Dr. Paul Clark, an expert who was not used
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`in the Apple IPR. Samsung hides new evidence inside the declaration of Clark.
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`The declaration discusses unasserted and non-produced prior art including X
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`Windows, Microsoft Mail and Microsoft Word 95 in an attempt to satisfy missing
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`claim limitations of Pandit. An excerpt from Merriam-Webster’s Collegiate®
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`Dictionary, Tenth Edition, 1999 is also included as a new exhibit.
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`Given that Samsung filed its petition more than one year after it was served
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`with a complaint alleging infringement of the ‘843 patent, denial of this motion
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`will automatically require denial of its petition for an inter partes review. Should
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`the Board find that the burdens imposed by the Samsung IPR are not sufficient to
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`deny joinder at this time, it should consider Patent Owner’s Preliminary Response,
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`which will be filed by August 11, 2014 to demonstrate that Samsung’s petition
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`does not meet the reasonable likelihood of prevailing standard.
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`III. GROUND FOR JOINDER
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`The Board has considered some or all of the following factors when
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`deciding on joinder of IPR proceedings:
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`1. Whether the new proceeding would add new evidence. 1
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`2. Whether joinder would be discernibly prejudicial to a party. 2
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`3. Whether joinder will unduly delay the resolution of the proceeding. 3
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`4. Whether the exhibits in the proceedings are consistently numbered. 4
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`All of these factors are present here. The Apple IPR and the Samsung IPR
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`should not be joined, among other reasons, because the Samsung IPR petition
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`1 See, for example, NetApp, Inc. v. PersonalWeb Technologies, LLC & Level 3
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`Communications, IPR 2013-00319, Paper No. 15.
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`2 See, for example, Microsoft Corp. v. Proxyconn, Inc.,IPR2013-00109, Paper No.
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`15.
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`3 See, for example, Microsoft Corp. v. Proxyconn, Inc.,IPR2013-00109, Paper No.
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`15.
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`4 See, for example, Arthrex, Inc. v. Bonutti Skeletal Innovations LLC, IPR2013-
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`00632, Paper No. 23.
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`relies on evidence not present in the Apple IPR, in fact the Samsung IPR petition
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`relies on evidence, other than patents or printed publications, which is not a
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`competent basis for an inter partes review. Further, despite purporting to rely on
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`the same grounds as the Apple IPR, Samsung’s use of new evidence actually
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`introduces new grounds for the proceeding. Thus, Samsung seeks to assert new
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`grounds for challenging the ‘843 patent after the time period set forth in 37 C.F.R.
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`§ 42.101(b) has lapsed.
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`Moreover, Samsung has incorporated these new grounds into its Petition
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`after having the benefit of analyzing the Apple IPR, Arendi’s Preliminary
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`Response, and the Patent Trial and Appeal Board’s Decision to Institute the Inter
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`Partes Review. Supplementation of Apple’s petition with new grounds recited by
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`Samsung at this stage is not in the interest of justice. As a result, granting
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`Samsung’s motion for joinder would be prejudicial to Arendi.
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`Because new evidence compels additional discovery, joinder would also
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`unduly delay the resolution of the proceeding.
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`Lastly, the exhibits in the Samsung IPR are inconsistently numbered relative
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`to exhibits in the Apple IPR.
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`A. Joinder Would Introduce Subject Matter that Falls Outside the Scope
`of Inter Partes Review
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` A
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` petitioner for inter partes review may request to cancel as unpatentable
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`one or more claims of a patent on a ground that could be raised under 35 U.S.C. §
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`102 or 35 U.S.C. § 103 and only on the basis of prior art consisting of patents or
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`printed publications. See 35 U.S.C. § 311(b). Although Ground I of Samsung’s
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`petition purports to rely solely on U.S. Patent No. 5,859,636 to Pandit (“Pandit”),
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`in fact, this ground also relies on evidence that is not competent for challenging
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`patent claims under inter partes review. Because such evidence falls outside the
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`scope of inter partes review, the evidence should not be incorporated into the
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`Apple IPR via joinder.
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`In addition to Pandit, Ground I relies upon the purported personal
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`knowledge of Samsung’s expert, Dr. Paul Clark. Dr. Clark’s declaration, in turn, is
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`used to reference other evidence that is of record neither in the Apple IPR nor in
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`the Samsung petition. In the absence of disclosure in Pandit of “configured by” 5,
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`Dr. Clark provides testimony concerning his purported personal experience in
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`configuring window managers, (Ex. 1007, par. 27; Petition, first paragraph of page
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`17), as well as testimony concerning the alleged nature of X Windows in Microsoft
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`5 “To the extent that building the menus of Pandit does not explicitly disclose that
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`the menu is “configured by” the first application program, …”, Petition at p. 17.
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`Word 95, without submitting a patent or printed publication describing X Windows
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`or Microsoft Word 95.
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`To read on second information dependent on the type of first information,
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`the claim chart on p. 18 of the Petition relies upon first information being a phone
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`number and second information being contact information associated with the
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`phone number. To demonstrate using the phone number (“first information”) as a
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`search term as claimed, the Petition merely states “See narrative below.” Petition,
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`p. 18. Pandit only discloses an Add to Address Book command without any
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`disclosure or suggestion of using the phone number in a search. Pandit fails to
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`disclose allowing a user command to initiate a search using a phone number or any
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`other contact information (particularly, name-, person-, company- or address-
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`related information). Instead of relying on Pandit for this missing claim element,
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`Samsung’s narrative recites allegations relating to the operation of Microsoft Mail
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`cloaked as “common sense.” Petition, page 18, 22, 28, and 29. No patent or
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`printed publication is submitted describing Microsoft Mail.
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`Nowhere does Samsung provide patents or printed publications under 35
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`U.S.C. § 102 or 35 U.S.C. § 103 to address the missing claim limitations discussed
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`above. In fact, the Petition contains little more than Dr. Clark’s blanket assertions
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`and conclusory remarks about the alleged operations of particular products. In this
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`manner, Ground I relies on products that are not disclosed in patents or printed
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`publications and Dr. Clark’s testimony about those products. Since only patents
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`and printed publications are a competent basis for in an inter partes review, joining
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`the Samsung IPR with the Apple IPR would introduce improper grounds for the
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`proceeding.
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`B. Joinder Would Effectively Introduce New Grounds into the Apple IPR
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`Although Samsung claims to use the same grounds as the Apple IPR for
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`challenging the ‘843 patent, in fact, Samsung has augmented the arguments from
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`the Apple IPR’s Petition (these elaborations have been called out in the table in
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`Section (D)(i)). As noted above, Samsung seeks to fit Dr. Clark’s statements on
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`the functionality of X Windows, Microsoft Mail, and Microsoft Word 95 under the
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`Apple IPR’s rubric of “common sense”. However, by relying on these products,
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`Samsung presents new grounds for invalidity of the claims by asserting alleged
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`functionalities of X Windows, Microsoft Mail, and/or Microsoft Word 95 in
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`addition to Pandit, while at the same time shielding these products from analysis
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`by asserting them only in expert testimony.
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`In this manner, the Samsung IPR reaches beyond the Apple IPR’s remaining
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`ground of obviousness based solely on Pandit. Since the Samsung IPR includes
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`new grounds for the proceeding, the motion for joinder should be denied.
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`C. Joinder Would Prejudice Arendi
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`In the Apple IPR, Arendi filed its Preliminary Response on March 12, 2014.
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`As noted above, through its new evidence, Samsung is introducing new, albeit
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`cloaked, grounds for challenge. The new grounds add challenges at a late date
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`after availing itself of review of Apple’s petition, Arendi’s preliminary response
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`and the Board’s institution decision. Because joinder would be prejudicial to
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`Arendi, the motion for joinder should be denied.
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`D. Joinder Would Add Significant Complexity, Delay and Cost to the
`Apple IPR, Thereby Unduly Delaying Its Resolution
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`i.
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`Joinder Would Introduce New Evidence
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`By virtue of using Dr. Paul Clark instead of Dr. Daniel A. Menascé for its
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`expert, the Samsung IPR includes evidence that is outside of the scope of the
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`Apple IPR. In this manner, the entire declaration and curriculum vitae of Dr. Clark
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`would be new additional evidence that will need to be addressed by Arendi in a
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`joint IPR.6 See Ex. 1007 and 1008. Furthermore, any reliance upon Dr. Clark’s
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`6 Although Samsung relies on Dell Inc. v. Network-1 Security Solutions, Inc.,
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`IPR2013-00385, Paper No. 17, and Motorola Mobility LLC v. SoftView LLC,
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`IPR2013-00256, Paper No. 10, to support its motion for joinder, neither case
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`introduced an additional expert subject to be deposed.
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`declaration throughout the Samsung IPR Petition would also be new evidence.
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`Citations to Dr. Clark’s declaration have been set forth in the table below:
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`Page No.
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`Section
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`5-6
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`6
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`7
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`12-14
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`17
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`18
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`22, 27, 28
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`Section III(D), Claim Construction
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`Section III(E), Person of Ordinary Skill in the Art
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`Section III(G), Supporting Evidence
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`Section V(A), Prior Art – Pandit (U.S. Patent No. 5,859,636),
`arguments regarding Pandit’s alleged operation
`Section V(A), Prior Art – Pandit (U.S. Patent No. 5,859,636),
`arguments regarding configuring the menu by the first application
`program to overcome absence of disclosure in Pandit
`Section V(A), Prior Art – Pandit (U.S. Patent No. 5,859,636),
`arguments regarding searching an address book for duplicate
`entries to overcome absence of disclosure in Pandit
`Section V(A), Prior Art – Pandit (U.S. Patent No. 5,859,636),
`arguments regarding enabling a user to call a person with an
`identified name by searching the address book, and, if the name
`corresponded to multiple numbers in the address book, displaying
`them for selection to overcome absence of disclosure in Pandit
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`Additionally, by virtue of using the Merriam-Webster’s Collegiate®
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`Dictionary, the Samsung IPR includes further evidence that is outside of the scope
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`of the Apple IPR. In this manner, the definition of “configure” provided by this
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`dictionary is new evidence for the Apple IPR, as well as any reliance on this
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`definition found in the Samsung IPR Petition. See Ex. 1009; see also Petition,
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`page 5.
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`Therefore, for at least the forgoing reasons, joining the Samsung IPR to the
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`Apple IPR would introduce new evidence into the proceeding.
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`ii.
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`Joinder Would Expand and Complicate Discovery
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`In keeping with the Board’s interest in delivering an inexpensive resolution
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`to an IPR, discovery is strictly limited. 37 C.F.R. § 42.51(b). Nevertheless, cross
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`examination of affidavit testimony is routine discovery. The Samsung IPR would
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`add the testimony of a new witness, Dr. Paul Clark. Additional testimony from
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`Arendi’s witness(es) would also be expected. These witnesses will be asked to
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`address all of the new issues mentioned herein that would be imposed by the
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`Samsung IPR. The added difficulties of scheduling, preparing for and attending
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`these depositions would bog down and significantly increase the cost of
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`prosecuting the Apple IPR.
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`Further, statements in Dr. Clark’s declaration would compel discovery
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`beyond the scope originally required by the Apple IPR. Because Dr. Clark has
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`characterized products that were purportedly available contemporaneously with the
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`filing of the ‘843 patent without having made any objective information about
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`those products available to the Patent Owner, joinder with the Apple IPR would
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`require investigation into those products. As a beginning matter, Samsung must
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`produce the products, including “X Windows”, “Microsoft Mail”, and “Microsoft
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`Word 95”, so that Patent Owner can examine their functionality, and evaluate the
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`claims being made by Dr. Clark. At the very least, product specifications, user
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`manuals, marketing materials, and trade publications should be produced. But to
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`the extent printed publications might be relied upon, these would raise new
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`grounds outside the scope of the Apple IPR. Without sufficient discovery of the
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`products discussed by Dr. Clark, Patent Owner would be prejudiced by the
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`introduction of the Clark declaration.
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`Therefore, for at least the forgoing reasons, joining the Samsung IPR to the
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`Apple IPR would expand and complicate discovery in the proceeding.
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`iii.
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`Joinder Would Disrupt the Schedule of the Apple IPR, Leading to
`Undue Delays in Reaching Final Decision
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`Arendi has already scheduled a deposition for Dr. Menasce, the expert used
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`in the Apple IPR, for Thursday, August 7, 2014. If the Samsung IPR were joined
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`to the Apple IPR, Arendi would also need to depose Dr. Clark regarding the results
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`of discovery with respect to, among other things, X Windows, Microsoft Mail, and
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`Microsoft Word 95. Both discovery and preparation for the Clark deposition
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`would require a substantial amount of time and effort, and neither has commenced
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`yet. Since the Apple IPR is already in progress, joining the Samsung IPR would
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`disrupt the schedule of the Apple IPR. In fact, such joinder would require
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`significant revisions to the schedule to accommodate the expanded discovery
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`required by the Samsung IPR. Therefore, for at least the forgoing reasons, joining
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`the Samsung IPR to the Apple IPR would disrupt the Apple IPR, leading to undue
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`delays in its resolution.
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`iv. Samsung has Improperly Numbered the Exhibits for its IPR
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`Because the exhibits in the Samsung IPR are not consistently numbered with
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`the exhibits in the Apple IPR, joining the two cases would require renumbering
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`and relabeling of some exhibits, which would delay the proceedings.
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`In particular, the Office Action in the prosecution of the ’843 patent, dated
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`October 28, 2010 was numbered as Ex. 1002 in the Samsung IPR, but Ex. 1004 in
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`the Apple IPR. Applicant’s response in prosecution of the ’843 patent, dated
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`December 8, 2010, was numbered as Ex. 1003 in the Samsung IPR, but Ex. 1005
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`in the Apple IPR. The amendment in prosecution of the ’854 patent, dated January
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`24, 2008, was numbered as Ex. 1004 in the Samsung IPR, but Ex. 1003 in the
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`Apple IPR. Finally, U.S. Patent No. 5,859,636 (“Pandit”) was numbered as Ex.
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`1005 in the Samsung IPR, but Ex. 1009 in the Apple IPR. Therefore, for at least
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`the forgoing reasons, joining the Samsung IPR to the Apple IPR would introduce
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`an administrative burden that would delay the proceedings of the Apple IPR.
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`IV. Conclusion
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`For all the foregoing reasons, Samsung’s motion for joinder should be
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`denied and the Board should proceed to an orderly and timely consideration of the
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`Apple IPR.
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`Dated: August 4, 2014
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` Respectfully submitted,
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`03324/00509 2140324.1
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` /Robert M. Asher, #30,445/
`Robert M. Asher, Reg. No. 30,445
`Bruce D. Sunstein, Reg. No. 27,234
`John J. Stickevers, Reg. No. 39,387
`Dorothy Wu, Reg. No. 69,535
` Sunstein Kann Murphy & Timbers LLP
`th Floor
` 125 Summer Street, 11
` Boston, MA 02110-1618
`(617) 443-9292
`Attorney for Patent Owner, Arendi S.A.R.L.
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`CERTIFICATE OF SERVICE
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` It is certified that on August 4, 2014, a copy of Arendi’s Opposition to
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`Motion for Joinder has been served on Petitioner as provided in 37 C.F.R. §
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`42.6(e) via electronic mail addressed to counsel of record for Petitioners at the
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`following addresses:
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`LEAD COUNSEL FOR PETITIONER
`SAMSUNG
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`ANDREA G. REISTER
`areister@cov.com
`Registration No. 36,253
`COVINGTON & BURLING LLP
`1201 Pennsylvania Avenue NW
`Washington, DC 20004
`Tel: (202) 662-5141
`Fax: (202) 778-5141
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`BACK-UP COUNSEL FOR
`PETITIONER SAMSUNG
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`GREGORY S. DISCHER
`gdischer@cov.com
`Registration No. 42,488
`COVINGTON & BURLING LLP
`1201 Pennsylvania Avenue NW
`Washington, DC 20004
`Tel: (202) 662-5141
`Fax: (202) 778-5141
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`Date: August 4, 2014
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` /Robert M. Asher, #30,445 /
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` Robert M. Asher
`Registration No. 30,445
`Sunstein Kann Murphy & Timbers LLP
`125 Summer Street
`Boston, MA 02110
`Tel: (617) 443-9292
`Fax: (617) 443-0004
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