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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`§ Attorney Docket No.:
`United States Patent No.: 8,532,641
`§
`110797-0004-659
`Inventors: Russell W. White,
`§ Customer No. 28120
`Kevin R. Imes
`Formerly Application No.: 13/673,391 § Petitioners:
`Issue Date: Sept. 10, 2013
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`Samsung Electronics Co., Ltd.;
`Filing Date: Nov. 9, 2012
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`Samsung Electronics America, Inc.
`Priority Date: March 28, 2000
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`Former Group Art Unit: 2646
`Former Examiner: Erika Washington
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`For: SYSTEM AND METHOD FOR MANAGING MEDIA
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`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
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`PETITIONERS’ MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b) AND
`REQUEST FOR SHORTENED RESPONSE TIME FOR PATENT
`OWNER’S PRELIMINARY RESPONSE
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`Inter Partes Review
`United States Patent No. 8,532,641
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`I.
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`RELIEF REQUESTED
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`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Petitioners Samsung
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`Electronics Co., Ltd. and Samsung Electronics America, Inc. (“Petitioners”) hereby
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`move for joinder of the limited grounds raised in its new Petition for Inter Partes
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`Review (“IPR”) of United States Patent No. 8,532,641 (“the ‘641 patent”)—filed
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`concurrently with this Motion—with the already-instituted IPR for the ‘641 patent,
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`Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. v. Affinity Labs of Texas,
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`LLC (“Affinity”), IPR2014-01181, which involve the same patent, same parties, and
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`overlapping prior art references.
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`In conjunction with this request for joinder, Petitioners respectfully request
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`that the Board specify a shortened response period of six (6) weeks (until April 10,
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`2015) in which Patent Owner Affinity (“Patent Owner”) may file a Preliminary
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`Response to the Petition.
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`II.
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`STATEMENT OF MATERIAL FACTS
`1.
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`On July 28, 2014, Petitioners filed a petition for inter partes review of the
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`‘641 patent for claims 1-3 and 5-14 based on the Ito reference in view of the Haartsen,
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`Nokia, Rydbeck, and/or Galensky references. See IPR2014-01184, Paper 2.1
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`1 On July 28, 2014, Petitioners also filed two other petitions for inter partes review of
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`the ‘641 patent challenging claims 1-3 and 5-14 (IPR2014-01182 and IPR2014-01184)
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`based on different grounds and different prior art references. The Board instituted
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`1
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`Inter Partes Review
`United States Patent No. 8,532,641
`On January 30, 2015 the Board instituted trial in that proceeding on
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`2.
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`claims 8 and 11-14. See IPR2014-01181, Paper 10 at 19.
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`3.
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`The prior art relied on for the grounds instituted in IPR2014-01181 is
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`Ito in view of Haartsen, Nokia, Rydbeck and/or Galensky. See IPR2014-01181, Paper
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`10 at 19.
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`4.
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`The same patent, Petitioners, and Patent Owner are involved in the
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`already-instituted IPR2014-01181 and the new Petition filed concurrently with this
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`Motion, and it is Petitioners’ understanding that the same counsel for each party from
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`the already-instituted IPR will represent Petitioners and Patent Owner in the new
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`Petition proceedings.
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`5.
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`The new Petition challenges claims 1-3, 5-7, 9 and 10 (“Challenged
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`Claims”) on prior art grounds. Claims 1-3, 5-7, 9 and 10 were challenged in the earlier
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`petition in IPR2014-01181 but were not instituted for trial. See IPR2014-01181, Paper
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`10 at 19.
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`for trial in IPR2014-01182, claims 1-3 and 5-14 (based on the primary prior art
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`reference “Abecassis”) and in IPR2014-01184, claims 8, 11, 13 and 14 (based on the
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`primary prior art reference “Ohmura”). See IPR2014-01182, Paper 10 and IPR2014-
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`001184, Paper 10. Petitioners are also concurrently filing a new Petition for inter partes
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`review of claims 1-3, 5-7, 9-10 and 12 of the ‘641 patent based on the Hu reference.
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`Inter Partes Review
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`In particular, the new Petition asserts grounds based on 35 U.S.C. § 103
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`6.
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`for the Challenged Claims using the same primary prior art reference Ito in view of
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`Nokia, Haartsen, Rydbeck, and/or Galensky, and further in view of new references,
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`Ushiroda and Bork. Petitioners were not aware of the Ushiroda reference at the time
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`the earlier IPR2014-01181 petition was filed, and instead located that reference only
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`after the institution decision in IPR2014-01181.
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`7.
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`Petitioners rely in their new Petition on a supporting declaration from
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`the same expert who submitted a declaration in the already-instituted IPR2014-01181.
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`III. DISCUSSION
` The requested joinder will serve to secure the just, speedy, and inexpensive
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`resolution of these proceedings. Under 35 U.S.C. § 315(c):
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`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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`In addition, 37 C.F.R. § 42.122(b) provides that:
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`Joinder may be requested by a patent owner or petitioner. Any request
`for joinder must be filed, as a motion under §42.22, no later than one
`month after the institution date of any inter partes review for which
`joinder is requested. The time period set forth in §42.101(b) shall not
`apply when the petition is accompanied by a request for joinder.
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`Inter Partes Review
`United States Patent No. 8,532,641
`This Motion is timely under § 42.122(b) because Petitioners are filing it within
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`one month after the January 30, 2015 institution date for IPR2014-01181.
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`The Board has further provided that a motion for joinder should: (1) set forth
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`the reasons why joinder is appropriate; (2) identify any new grounds of unpatentability
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`asserted in the petition; (3) explain what impact (if any) joinder would have on the
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`trial schedule of the existing proceeding; and (4) address specifically how briefing and
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`discovery may be simplified. See, e.g., Kyocera Corp. v. Softview LLC, IPR2013-00004,
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`Paper 15 at 4 (Apr. 24, 2013). Analysis of these factors here warrants the Board’s use
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`of its discretion to grant the requested joinder.
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`The existence of several significant similarities between the already-instituted
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`IPR2014-01181 and the new Petition supports application of joinder. The same patent,
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`parties, and counsel are involved in both proceedings. The same expert for Petitioners
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`is involved in both proceedings—and, presumably, Patent Owner may use a common
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`expert in both proceedings. Patent Owner has already responded to, and the Board
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`has already analyzed for institution, prior petitions challenging every claim now at
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`issue in the new Petition, which contain overlapping subject matter with claims
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`already instituted for trial. And Petitioners assert here overlapping prior art references
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`as in the original petition for which trial has been instituted (IPR2014-01181).
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`Petitioners believed, in submitting their original petitions, that they had made
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`the required showing to invalidate claims 1-3, 5-7, 9 and 10 of the ‘641 patent. In its
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`January 30, 2015 Institution Decision, however, the Board determined that Petitioners
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`had not shown it was more likely than not that they would prevail in demonstrating
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`that Ito in combination with Haartsen, Nokia, Rydbeck and/or Galensky rendered
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`obvious claims 1-3, 5-7, 9 and 10. Specifically, the Board explained that, “[g]iven the
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`wireless nature of Ito, Petitioner has not explained sufficiently why communicating
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`information over Nokia’s physical interface would have been ‘advantageous’ or
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`‘convenient’ in Ito’s phone. . . . We are not persuaded, therefore, that Petitioner has
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`presented sufficient articulated reasoning with rational underpinning to support
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`combining Nokia’s physical interface with the specific wireless telephone device of
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`Ito.” IPR2014-01184, Paper 10 at 11-12.
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`While Petitioners respectfully disagree, the Ushiroda (Ex. 1411) and Bork
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`references (Ex. 1410) relied on in the new Petition resolve any concerns that the
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`Board had with respect to the combination of Ito and the physical interface of Nokia
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`that were expressed in IPR2014-01181. Ito discloses a wireless phone such as, for
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`example, a personal handy-phone system (“PHS”) telephone terminal device, and
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`Ushiroda expressly discloses PHS telephone devices that, in addition to wireless data
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`transfer capability, include a physical interface (like Nokia). In particular, Ushiroda
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`discloses PHS telephone devices with a physical interface for connecting to an
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`external data terminal and for recharging the battery. Ex. 1411 at Fig. 1; 1:7-9; 2:51-56;
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`2:61-65; 3:10-12, 4:40-51. Also like Nokia, Bork discloses a cellular telephone with a
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`single physical interface for data communication and recharging the battery, but Bork
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`additionally includes express teachings of the numerous benefits of having a single
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`Inter Partes Review
`United States Patent No. 8,532,641
`physical interface on a portable device that is capable of wireless communication,
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`including saving cost and travel space by eliminating the need for an additional cable,
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`eliminating the need for two dedicated power sources, and providing the ability to
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`recharge a portable device from a second device when no other power source is
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`available. See, e.g., Ex. 1410 at 2:54-63. Accordingly, Ushiroda and Bork address the
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`Board’s concern that Petitioners had failed to demonstrate in IPR2014-01181 why it
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`would have been beneficial or advantageous to be able to communicate information
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`over a physical interface on Ito’s wireless telephone, and confirm that a person of
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`ordinary skill in the art would have been motivated to implement the PHS telephone
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`device of Ito with a single physical interface that advantageously provides for both
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`data communication and recharging the battery.
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`Given the overlap in subject matter and prior art, the requested joinder
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`preserves for the Board and the parties significant efficiencies by permitting these
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`prior art arguments to be addressed in a single proceeding. The proposed schedule
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`would permit the efficient conduct of briefing, discovery and argument on these
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`issues, and enable the Board’s resolution of the invalidity issues presented across these
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`petitions. With particular reference to discovery, Petitioners rely on the same expert in
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`their new Petition as in their original petitions, thus simplifying discovery and making
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`it possible to hold a single deposition of this witness for all proceedings. See, e.g.,
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`Ariosa Diagnostics v. Isis Innovation Limited, IPR2013-00250, Paper 24 at 4. Given the
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`overlap in subject matter between the claims challenged in this petition, the same is
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`Inter Partes Review
`United States Patent No. 8,532,641
`likely to be true for any expert testimony offered by Patent Owner. Given the
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`significant overlap in challenged subject matter (the Challenged Claims in the new
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`Petition have been previously analyzed by the Board and include elements common to
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`the already-instituted claims), prior art issues, common discovery and briefing will
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`enable both the parties and the Board to preserve efficiencies while addressing all of
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`these issues concerning the ’641 patent.
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`Joinder here need not have any appreciable effect on the trial schedule of the
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`proceedings in the already-instituted IPR2014-01181. Petitioners have attached
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`hereto a proposed schedule on which the joined proceeding can move forward
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`without delaying the resolution of the earlier-filed petition, and—as they have
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`indicated to counsel for Patent Owner—Petitioners are amenable to discussing with
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`Patent Owner such further adjustments of the proposed schedule as may be
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`appropriate (e.g., to accommodate schedule concerns and promote efficient
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`resolution).2
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`To accommodate joinder with the pending IPR2014-01181 trial, some
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`compression of the general default schedule for this new Petition will be necessary.
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`Subject to the possibility of negotiating a joint proposal on schedule, Petitioners
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`2 Counsel for Patent Owner has confirmed that, if the Board determines that joinder
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`is appropriate, Patent Owner agrees that the parties should cooperate with the Board
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`regarding scheduling of the joined proceedings.
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`accordingly request at the outset that the Board provide a shortened period of six (6)
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`weeks (until April 10, 2015) for a Patent Owner Preliminary Response to the new
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`Petition. As reflected in the proposed schedule, Petitioners contemplate that their
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`own periods for response will also be compressed. Given the significant overlap of
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`issues and evidence, however, Petitioners respectfully submit that neither party would
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`need to be unfairly prejudiced by the shortening of these periods from the general
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`timelines provided as a default for entirely new invalidity proceedings. In connection
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`with the Preliminary Response, for example, Patent Owner and its counsel are already
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`quite familiar with—and have already responded to Petitions concerning—the patent
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`and claims at issue, as well as overlapping prior art references at issue here.
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`IV. CONCLUSION
`For the foregoing reasons, Petitioners respectfully request that the Board grant
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`joinder of trial, if instituted, on the new Petition filed concurrently with this Motion,
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`with the pending trial in IPR2014-01181. In addition, Petitioners respectfully request a
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`shortened period of six (6) weeks (until April 10, 2015) for a Patent Owner
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`Preliminary Response.
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`Inter Partes Review
`United States Patent No. 8,532,641
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`February 27, 2015
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`Gabrielle E. Higgins (Backup Counsel)
`Reg. No. 38,916
`ROPES & GRAY LLP
`1900 University Avenue – Suite 600
`East Palo Alto, CA 94303
`P: 650-617-4000 /F: 650-617-4090
`gabrielle.higgins@ropesgray.com
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`Respectfully submitted,
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`By:/J. Steven Baughman/
`J. Steven Baughman (Lead Counsel)
`Reg. No. 47,414
`ROPES & GRAY LLP
`One Metro Center, 700 12th St. – Ste. 900
`Washington, DC 20005-3948
`P: 202-508-4606 / F: 202-383-8371
`steven.baughman@ropesgray.com
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`Mailing address for all PTAB correspondence: ROPES & GRAY LLP
`IPRM – Floor 43, Prudential Tower, 800 Boylston Street, Boston, MA 02199-3600
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`Attorneys for Petitioners, Samsung Electronics Co., Ltd., and Samsung Electronics America, Inc.
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`Inter Partes Review
`United States Patent No. 8,532,641
`PETITIONERS’ PROPOSED SCHEDULE
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`Patent Owner Preliminary
`Response
`Due Date 1
`Patent owner’s response to
`the petition
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`Patent owner’s motion to
`amend the patent
`Due Date 2
`Petitioner’s reply to patent
`owner’s response to petition
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`Petitioner’s opposition to
`motion to amend
`Due Date 3
`Patent owner’s reply to
`petitioner’s opposition to
`motion to amend
`Due Date 4
`Motion for observation
`regarding cross-examination
`of reply witness
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`Motion to exclude evidence
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`Request for oral argument
`Due Date 5
`Response to observation
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`Opposition to motion to
`exclude
`Due Date 6
`Reply to opposition to
`motion to exclude
`Due Date 7
`Oral argument (if requested)
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`Current Schedule in
`IPR2014-01181
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`Petitioner’s Proposal for
`Joined Proceeding
`April 10, 2015
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`April 30, 2015
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`July 2, 2015 (assuming
`institution decision circa
`May 8, 2015)
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`July 30, 2015
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`August 27, 2015
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`August 31, 2015
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`September 18, 2015
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`September 21, 2015
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`October 2, 2015
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`October 5, 2015
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`October 9, 2015
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`October 13, 2015
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`October 16, 2015
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`October 28, 2015
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`October 28, 2015
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`Inter Partes Review
`United States Patent No. 8,532,641
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`§ Attorney Docket No.:
`United States Patent No.: 8,532,641
`§
`110797-0004-658
`Inventors: Russell W. White,
`§ Customer No. 28120
`Kevin R. Imes
`Formerly Application No.: 13/673,391 § Petitioners:
`Issue Date: Sept. 10, 2013
`§
`Samsung Electronics Co., Ltd.;
`Filing Date: Nov. 9, 2012
`§
`Samsung Electronics America, Inc.
`Priority Date: March 28, 2000
`§
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`§
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`§
`§
`§
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`Former Group Art Unit: 2646
`Former Examiner: Erika Washington
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`
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`For: SYSTEM AND METHOD FOR MANAGING MEDIA
`
`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
`
`
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`CERTIFICATE OF SERVICE
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`It is certified that a copy of Petitioners’ Motion For Joinder Under 35 U.S.C.
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`§ 315(c) And 37 C.F.R. § 42.122(b) And Request For Shortened Time For Patent
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`Owner’s Preliminary Response, was served on February 27, 2015 by causing the
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`aforementioned document to be deposited in the United States Postal Service as
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`Express Mail postage (EF 070 058 395 US) pre-paid in an envelope addressed to:
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`TROP, PRUNER & HU, P.C.
`Samuel Epstein
`John Garza
`Dan Hu
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`Inter Partes Review
`United States Patent No. 8,532,641
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`Fred Pruner
`Edwin Richards
`Mark Rozman
`Timothy Trop
`1616 S. VOSS ROAD, SUITE 750
`HOUSTON TX 77057-2631
`Attorneys for Patent Owner Affinity Labs of Texas, LLC
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`By: /s/ Kathryn N. Hong
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`Kathryn N. Hong
`ROPES & GRAY LLP
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`Mailing address for all PTAB correspondence:
`ROPES & GRAY LLP
`IPRM – Floor 43
`Prudential Tower
`800 Boylston Street
`Boston, MA 02199-3600
`Attorneys for Petitioners
`Samsung Electronics Co., Ltd.,
`Samsung Electronics America, Inc.
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