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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS CO., LTD.,
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`Petitioner,
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`ARENDI S.A.R.L.,
`Patent Owner.
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`Case NO. IPR2014—01518
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`Patent NO. 6,323,853
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`SAMSUNG’S REPLY TO ARENDI’S OPPOSITION TO SAMSUNG’S
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`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(C) AND
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`37 C.F.R. §§ 42.22 AND 42.12203)
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`
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`Docket No. 032449.0031-US10
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`IPR2014-01518
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`In a communication dated January 9, 2015, the Board authorized Petitioner
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`Samsung Electronics Co., Ltd.
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`(“Samsung”) to file the present reply to the
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`opposition to the motion for joinder to IPR2014-00452 (“the Google IPR”) filed by
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`Patent Owner Arendi S.A.R.L. (“Arendi”) (Paper 7).
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`Arendi presents three arguments in opposition to joinder, none of which is
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`meritorious. First, Arendi argues that joinder will “disrupt
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`the Google IPR
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`schedule and introduce burdens of additional depositions and redundant filings.”
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`Id. at 6. To alleviate any concerns that this could be the case, Samsung agrees to
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`take on a “limited ‘understudy’ role” without a separate opportunity to actively
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`participate. Sony Corp., et al. v. Network—I Security Solutions, Inc., IPR2013—
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`00495, Paper 13, p. 6. In particular, Samsung agrees to:
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`1.
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`Refrain from filing its own substantive papers as long as the
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`Petitioners in the Google IPR remain in the proceeding;
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`2.
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`Refrain from requesting or reserving additional deposition time,
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`or re-conducting depositions, such as the deposition of Patent Owner’s
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`expert, already conducted by Petitioners in the Google IPR;
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`3.
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`Refrain from requesting or reserving any additional oral hearing
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`time; and
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`4.
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`Assume an understudy role as long as the Petitioners in the
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`Google IPR remain in the proceeding.
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`In essence, Samsung requests that the Board merely join it as a party to the
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`Google IPR. Target Corp. v. Destination Maternity Corp, IPR2014—00508, Paper
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`Docket No. 032449.0031-U810
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`IPR2014-01518
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`18, pp. 10—11. Samsung agrees to subordinate itself into an understudy role,
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`allowing the Petitioners in the Google IPR to lead the proceeding, absent
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`settlement and termination of the Petitioners in that proceeding. The Petitioners in
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`the Google IPR have no objection to joining Samsung in such an “understudy”
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`role.
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`Given an “understudy” role for Samsung, the Google IPR can continue to
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`progress on its existing schedule, and there will be no “redundant and wasteful
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`effort” or “additional attorney and expert witness fees and expenses.” Paper 7, pp.
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`26-27. With Samsung in an “understudy” role, there would be no need for another
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`Patent Owner Response, no need to re—depose Patent Owner’s expert, and no need
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`to revise the schedule already agreed to by Arendi and the Google IPR Petitioners.
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`Therefore, joinder of Samsung in an “understudy” role would neither “unduly
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`delay the resolution of the proceeding” nor “be discernibly prejudicial” to Arendi.
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`Id. at 25-26.
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`Second, Arendi’s argument that the petition should be denied because it
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`“duplicates the grounds” of the Google IPR weighs in favor of joinder, not against
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`it. Id. at 2. As Arendi admits, “almost Samsung’s entire petition has been copied
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`and pasted from the Google lPR’s original petition,” “Samsung raises the same
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`issues presented by the Google IPR,” and “Samsung uses the same expert, Dennis
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`Allison, and submits a declaration by Mr. Allison that
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`.
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`.
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`. makes the same
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`Docket No. 032449.003] -USlO
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`IPR2014—01518
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`substantive statements regarding Goodhand, Padwick, and the alleged invalidity of
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`claims 1—79 of the ‘853 Patent.” Id. at 3—4. As Arendi’s admissions make clear,
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`Samsung’s petition and declaration will
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`introduce no new substantive issues.
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`Therefore, joining Samsung as a party to the Google IPR Where those same issues
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`will be litigated is entirely proper, and it is unnecessary to invoke 35 U.S.C. §
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`325(d) to avoid a “duplicate” proceeding.
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`Third, Arendi argues that it was somehow improper for Samsung to “rely
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`upon joinder” even though Samsung was not time-barred. Id. at 6. As the Board
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`recognizes, nothing in 35 U.S.C. § 315(c) limits joinder only to parties who are
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`otherwise time-barred. Target Corp, IPR2014—00508, Paper 18 at 10 (“If an inter
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`partes review of a particular patent
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`is underway at
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`the Board, a time-barred
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`petitioner (as well as a non-time-barred petitioner) may request to join it as a
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`party”) (emphasis added).
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`Joinder to IPR2014-00452 will introduce no new substantive issues, and, with
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`Samsung’s circumscribed “understudy” role, will not complicate or delay that
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`proceeding. Therefore, joinder is appropriate, and Samsung requests that its Motion
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`be granted.
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`
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`Docket No. 032449.0031-U810
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`IPR2014-01518
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`Date: January 16, 2015
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`Respectfully submitted,
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`Andrea G. Reisterr‘"
`Registration N0.: 36,253
`Gregory S. Diseher
`Registration N0.: 42,488
`COVINGTON & BURLING LLP
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`One CityCenter
`850 Tenth Street NW
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`Washington, DC 20001
`(202) 662-6000
`Attorneys for Petitioner
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`
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`Docket No. 032449.0031-U810
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`IPR2014-01518
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6, I hereby certify that on this 16th day of January 2015,
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`the foregoing Samsung’s Reply to Arendi’s Opposition to Samsung’s Motion for
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`Joinder Under 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b) was served
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`by electronic mail by agreement of the parties on the following counsel of record for
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`patent owner.
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`Robert M. Asher
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`Bruce D. Sunstein
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`Sunstein Kann Murphy & Timbers LLP
`rasher@sunsteinlaw.com
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`bsunstein@sunsteinlaw.com
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`A courtesy copy was provided to Counsel for Petitioners in IPR2014—00452:
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`Matthew A. Smith
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`Zhuanjia Gu
`Turner Boyd LLP
`smith@turnerboyd.com
`gu@turnerbody.com
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`Date: January 16, 2015
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`Andrea GVReister, Esq.
`Registration No.: 36,253
`
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