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` Paper No. ____
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` Filed: March 23, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________________
`
`TOYOTA MOTOR CORPORATION
`Petitioner
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES, LLC
`Patent Owner
`____________________________________________
`
`
`
`CASE IPR2015-00857
`PATENT NO. 7,384,177
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`
`____________________________________________
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`
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`
`
`MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
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`
`
`CASE IPR2015-00857
`PATENT NO. 7,384,177
`
`Contents
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`STATEMENT OF PRECISE RELIEF REQUESTED ....................................... 1
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`STATEMENT OF MATERIAL FACTS ................................................................. 3
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`
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`I.
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`II.
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`III.
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`STATEMENT OF REASONS FOR RELIEF REQUESTED ........................... 4
`
`A.
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`Joinder is appropriate because it will not impact the Board’s ability
`to complete the review in a timely manner. ................................................... 6
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`B.
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`Joinder will promote efficiency and conserve resources. ............................ 8
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`C. Without joinder, Petitioner may be prejudiced. ............................................ 9
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`D.
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`Joinder will not prejudice IDT or LGD. ...................................................... 10
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`IV. CONCLUSION........................................................................................................... 11
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`i
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`TABLE OF AUTHORITIES
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`CASE IPR2015-00857
`PATENT NO. 7,384,177
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` Page(s)
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`
`
`Statutes
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`35 U.S.C. § 102 ....................................................................................................................... 1, 4
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`35 U.S.C. § 103 .................................................................................................................. 1, 3, 4
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`35 U.S.C. § 315 ....................................................................................................................... 1, 5
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`Regulations
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`37 C.F.R. § 42.22 ...................................................................................................................... 2
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`37 C.F.R. § 42.122 ................................................................................................................. 1, 2
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`Board Authority
`
`Dell Inc. v. Network-1 Security Sols., Inc.,
`IPR2013-00385, Paper 17 (July 29, 2013) ........................................................... 5, 10, 11
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`Jiawei Technology (HK) Ltd., et al. v. Simon Nicholas Richmond,
`IPR2015-00580, Paper 16 (Feb. 13, 2015) ...................................................................... 8
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`SAP America Inc. v. Clouding IP, LLC,
`IPR2014-00306, Paper 13 (May 19, 2014) .............................................................. 10, 11
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`
`
`
`
`ii
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`
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`I.
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`CASE IPR2015-00857
`PATENT NO. 7,384,177
`
`STATEMENT OF PRECISE RELIEF REQUESTED
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`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Toyota Motor Corp.
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`(“Petitioner”) respectfully requests that it be joined as a party to the following
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`instituted inter partes review proceeding on the same patent at issue in this case
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`(IPR2015-00857), U.S. Patent No. 7,384,177 (“the ’177 Patent”): LG Display Co., Ltd.
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`v. Innovative Display Technologies LLC, IPR2014-01362 (the “LGD IPR”). The Board
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`instituted inter partes review in the LGD IPR on the following grounds:
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`Reference
`US 5,054,885 (Melby)
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`Claims
`1–3, 5–7, 9–10, 13–15, 19, 21,
`23–25, and 27
`1, 2, 6–7, 9–10, 13–15, 19, 21,
`US 5,453,885
`23, 24, and 26
`(Nakamura)
`(IPR2014-01362, Paper 12, at 9, 11 (Mar. 2, 2015)). Petitioner in this case asserts
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`Grounds
`Sec. 103
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`Sec. 102
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`substantially the same grounds to those instituted in the LGD IPR against many of
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`the same claims (shown in bold below) and one additional dependent claim (shown in
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`italics below), which Petitioner argues is anticipated by a reference applied against the
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`corresponding independent claim in the LGD IPR:1
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`Reference
`US 5,054,885 (Melby)
`US 5,453,885
`(Nakamura)
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`1 Petitioner filed another IPR petition (IPR2015-00835) on March 5, 2015, which
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`Claims
`1, 6–7, 9–10, 13–15, and 19
`1, 6–7, 9–10, 13–15, 19, and 22
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`Grounds
`Sec. 103
`Sec. 102
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`addressed U.S. Patent No. 7,384,177, based on different grounds. No joinder is being
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`sought with respect to the IPR2015-00835 petition.
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`1
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`Toyota Motor Corp. v. IDT, IPR2015-00857, Paper 2, at iv (Mar. 9, 2015). That
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`CASE IPR2015-00857
`PATENT NO. 7,384,177
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`additional dependent claim, claim 22, Patent Owner IDT asserted against only
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`Petitioner in litigation.
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`
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`This Motion is timely under 37 C.F.R. §§ 42.22 and 42.122(b) because it is
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`being submitted prior to one month after the institution date (March 2, 2015) in the
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`LGD IPR. 37 C.F.R. § 42.122(b). Petitioner contacted the parties in the LGD IPR
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`regarding this motion for joinder prior to filing and the petitioner in that proceeding
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`(LG Display) does not oppose. Patent Owner opposes.
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`Petitioner respectfully submits that joinder of these proceedings is appropriate.
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`Joinder will not impact the Board’s ability to complete its review in the statutorily
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`prescribed timeframe. Indeed, the invalidity grounds raised in this inter partes review
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`proceeding are substantially the same as the invalidity grounds instituted in the LGD
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`IPR. The present petition omits several dependent claims and adds one invalidity
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`ground for one additional dependent claim (claim 22) based on the Nakamura
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`reference at issue in the LGD IPR. Accordingly, joinder will ensure the Board’s
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`efficient and consistent resolution of the issues surrounding the invalidity of the ’177
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`patent based on the instituted grounds. Moreover, joinder would not prejudice the
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`LGD IPR parties because the scope and timing of the LGD IPR proceeding should
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`remain the same. Finally, the Board can implement procedures that are designed to
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`minimize any impact to the schedule of the LGD IPR, by requiring, for example,
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`2
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`consolidated filings and coordination among petitioners. For these reasons and the
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`CASE IPR2015-00857
`PATENT NO. 7,384,177
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`reasons outlined herein, joinder should be granted.
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`II.
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`STATEMENT OF MATERIAL FACTS
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`1.
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`On March 10, 2014, Innovative Display Technologies LLC (“IDT” or
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`“Patent Owner”) filed a complaint in the United States District Court for the Eastern
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`District of Texas accusing Petitioner of infringing several patents, including the ’177
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`Patent. See Innovative Display Technologies LLC v. Toyota Motor Corp. et al., 2:14-cv- 00200-
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`JRG (E.D. Tex.) (hereinafter, “the Underlying Litigation”).
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`2.
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`In its Complaint, IDT purports to be the owner of the ’177 Patent. See
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`id.
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`3.
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`LG Display Co., Ltd. (“LGD”) filed a petition for inter partes review of
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`the ’177 Patent on August 22, 2014 (the “LGD Petition”). See IPR2014-01362,
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`Paper 2 (Aug. 22, 2014).
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`4.
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`IDT has asserted the ’177 Patent against LGD in co-pending litigation in
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`the United States District Court for the District of Delaware. See id. at 1.
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`5.
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`The LGD petition included seven grounds for invalidity, and the Board
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`instituted IPR based on the following grounds:
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`a)
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`Claims 1-3, 5-7, 9-10, 13-15, 19, 21, And 23-25, 27 Are
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`Unpatentable Under 35 U.S.C. § 103(a) As Being Obvious Over Melby; and
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`3
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`CASE IPR2015-00857
`PATENT NO. 7,384,177
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`b)
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`Claims 1, 2, 6, 7, 9, 10, 13, 14, 15, 19, 21, 23-24, And 26 Are
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`Unpatentable Under 35 U.S.C. § 102 As Being Anticipated By Nakamura.
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`IPR2014-01362, Paper 12 (March 2, 2015).
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`6.
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`The two invalidity grounds raised in this inter partes review proceeding are
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`substantially identical to the two invalidity grounds a and b instituted in the LGD IPR
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`petition, save for the omission of certain dependent claims and the addition of
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`dependent claim 22 to ground b:
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`a) Claims 1, 6-7, 9-10, 13-15, And 19 Are Unpatentable Under 35 U.S.C.
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`§ 103(a) As Being Obvious Over Melby; and
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`b) Claims 1, 6-7, 9-10, 13-15, 19, And 22 Are Unpatentable Under 35
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`U.S.C. § 102 As Being Anticipated By Nakamura. See Toyota Motor Corp. v. IDT,
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`IPR2015-00857, Paper 2 (Mar. 9, 2015) at iv.
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`Joinder of inter partes review proceedings is permitted under 35 U.S.C. § 315(c),
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`which provides:
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`(c) JOINDER.—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
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`CASE IPR2015-00857
`PATENT NO. 7,384,177
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`warrants the institution of an inter partes review under
`section 314.
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`35 U.S.C. § 315(c).
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`In deciding whether to allow joinder, the Board takes into account “the
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`particular facts of each case, substantive and procedural issues, and other
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`considerations,” while remaining “mindful that patent trial regulations, including the
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`rules for joinder, must be construed to secure the just, speedy, and inexpensive
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`resolution of every proceeding.” See Dell Inc. v. Network-1 Security Sols., Inc., IPR2013-
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`00385, Paper 17, at 3(July 29, 2013). The Board also takes into account “the policy
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`preference for joining a party that does not present new issues that might complicate
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`or delay an existing proceeding.” Id. at 10 (citing 157 Cong. Rec. S1376 (daily ed. Mar.
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`8, 2011) (statement of Sen. Kyl) (“The Office anticipates that joinder will be allowed
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`as of right – if an inter partes review is instituted on the basis of a petition, for
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`example, a party that files an identical petition will be joined to that proceeding, and
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`thus allowed to file its own briefs and make its own arguments.”)).
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`“A motion for joinder should: (1) set forth the reasons why joinder is
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`appropriate; (2) identify any new grounds of unpatentability asserted in the petition;
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`(3) explain what impact (if any) joinder would have on the trial schedule for the
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`existing review; and (4) address specifically how briefing and discovery may be
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`simplified.” Id. at 4. An analysis of each of these issues supports joinder.
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`5
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`A.
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`CASE IPR2015-00857
`PATENT NO. 7,384,177
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`Joinder is appropriate because it will not impact the Board’s ability
`to complete the review in a timely manner.
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`Joinder is appropriate because it will not impact the Board’s ability to complete
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`its review of the LGD IPR within the statutorily prescribed timeframe. First, this inter
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`partes review proceeding does not raise any new prior art over what has been asserted
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`in the LGD IPR. Specifically, Petitioner asserts in this inter partes review proceeding
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`substantially the same grounds of unpatentability instituted in the LGD IPR, and
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`Petitioner’s arguments regarding the asserted references are substantially identical to
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`the arguments LGD raised in the LGD IPR. The three differences that exist between
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`the grounds raised in this request for inter partes review and the grounds raised in the
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`LGD IPR will not impact the trial schedule or prejudice any party and the Board
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`should grant this motion for joinder.
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`The first difference–the omission of certain dependent claims from the instant
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`petition–will have no impact on the parties or the trial schedule as Petitioner will not
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`participate in the trial on those claims. The one additional dependent claim (claim 22)
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`asserted by Petitioner–the second difference–is based on the same Nakamura
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`reference on which the Board granted institution against the underlying independent
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`claim (claim 15). Claim 22 of the ’177 patent recites: “22. The assembly of claim 15
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`wherein the sheet, film, or substrate is comprised of multiple layers.” Ex. 1001, ’177
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`patent, col. 10:41-42. The additional anticipation argument with respect to dependent
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`claim 22 is straightforward, is based on the Nakamura reference already applied to the
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`6
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`independent base claim, and would not impact the Board’s ability to complete its
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`CASE IPR2015-00857
`PATENT NO. 7,384,177
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`review in a timely manner. Further, the addition of dependent claim 22 will not
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`prejudice the petitioner in the LGD IPR, who does not oppose joinder, or the patent
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`owner. Indeed, the joinder of dependent claim 22 into the LGD IPR is significantly
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`less burdensome on the Patent Owner than a separate inter partes review proceeding
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`addressing dependent claim 22 (and necessarily independent claim 15).
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`The third difference–Petitioner submitted a different expert declaration–also
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`should not affect the trial schedule. Petitioner obtained a separate expert declaration
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`to address dependent claim 22 (only asserted against Petitioner) and necessarily
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`independent claim 15. Petitioner’s expert also addressed the other claims asserted in
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`the present petition so that Petitioner could step in and take over the LGD IPR
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`should the parties to that proceeding reach a settlement. To minimize any impact on
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`the trial schedule if joined, if the Board prefers, Petitioner would be willing to rely on
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`the declaration and testimony of the expert offered in the LGD IPR for all claims
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`except dependent claim 22. For that dependent claim, Petitioner’s expert will be
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`available for his deposition on the same day as the expert in the LGD IPR, or on a
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`day most convenient to the parties in the LGD IPR.
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`Because the Petitioner raises only one additional uncomplicated issue of
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`unpatentability, joinder should not affect the Board’s ability to issue its final
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`determination within one year of institution in the LGD IPR.
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`7
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`CASE IPR2015-00857
`PATENT NO. 7,384,177
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`Joinder will promote efficiency and conserve resources.
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`B.
`As discussed above, this inter partes review proceeding presents substantially the
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`same arguments for unpatentability as the LGD IPR. Given that the LGD IPR and
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`the instant petition address the same prior art and substantially the same grounds for
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`rejection of the claims at issue, joining these proceedings allows for joint submissions
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`and discovery to streamline the proceedings. Indeed, conducting the proceedings in
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`this manner should promote efficiency and conserve the Board’s and the parties’
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`resources by streamlining and consolidating all patentability challenges to the ’177
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`patent based on Nakamura and Melby into a single trial.
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`Petitioner sees the need for only one minor adjustment to the procedural
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`schedule. Specifically, the Petitioner suggests that the Board require the Patent
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`Owner’s Preliminary Response solely on dependent claim 22 be due by April 26,
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`2015, one month before the Patent Owner’s response to the petition in the LGD IPR.
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`The Board has authority to expedite a preliminary response under 37 C.F.R.
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`§ 42.5(c)(1). See Jiawei Technology (HK) Ltd., et al. v. Simon Nicholas Richmond, IPR2015-
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`00580, Paper 16, at 2 (Feb. 13, 2015) (expediting Patent Owner’s Preliminary
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`Response where “the new ground involves only four claims and is substantially similar
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`to the old ground, with the addition of a new reference Patent Owner is familiar
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`already.”). This minor adjustment will allow the Board to maintain the current
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`procedural schedule. Thus, joinder is appropriate.
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`8
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`CASE IPR2015-00857
`PATENT NO. 7,384,177
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`C. Without joinder, Petitioner may be prejudiced.
`Petitioner could be prejudiced if it is not permitted to join and participate in the
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`LGD IPR, impacting not only this inter partes review proceeding, but also the
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`Underlying Litigation. Any decision in the LGD IPR will likely simplify, or perhaps
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`resolve, the issues in LGD’s litigation and Petitioner’s Underlying Litigation.
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`However, because the LGD IPR does not address claim 22–a claim not asserted
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`against LGD–Petitioner could be prejudiced in having to continue the Underlying
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`Litigation on claim 22 even if LGD succeeds in its IPR. Accordingly, joinder is thus
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`necessary to allow Petitioner an opportunity to protect its interests with respect to
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`matters that are at issue in both the inter partes review proceedings and the Underlying
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`Litigation.
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`As noted above in footnote 1, Petitioner has challenged claims 1, 6-7, 9-10, 13-
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`15, 19, and 22 of the ’177 Patent in a petition for a separate IPR proceeding. See Toyota
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`Motor Corp. v. IDT, IPR2015-00835, Paper 2 (Mar. 5, 2015). The grounds asserted in
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`that petition are entirely distinct from the grounds asserted in the instant petition–
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`there is no overlap between the asserted references and any IPR that is instituted on
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`that petition will necessarily lag behind the already-instituted LGD IPR. As such,
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`Petitioner’s interests in prosecuting each separate petition are distinct, because each
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`petition provides an independent defense against the Patent Owner’s infringement
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`claims in litigation.
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`9
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`CASE IPR2015-00857
`PATENT NO. 7,384,177
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`Joinder will not prejudice IDT or LGD.
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`D.
`Permitting joinder will not prejudice the Patent Owner or LGD. Petitioner’s
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`proposed grounds for instituting IPR–based on the same Melby and Nakamura
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`references–are substantially identical to those instituted by the Board in the LGD IPR,
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`and therefore, joinder will not impact the scope or timing of the LGD IPR. Indeed,
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`LGD does not oppose joinder.
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`Moreover, joinder is likely more convenient and efficient for the Patent Owner
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`because it will provide a single trial on these common grounds. By allowing such
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`common grounds of invalidity to be addressed in a single proceeding, the interests of
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`all parties and the Board will be well served.
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`Further, briefing and discovery can be simplified to minimize any impact on
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`the participants and to streamline the filings for the Board. For example, upon
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`granting joinder, the Board can adopt procedures similar to those adopted in Dell,
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`IPR2013-00385, Paper 17, and SAP America Inc. v. Clouding IP, LLC, IPR2014-00306,
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`Paper 13 (May 19, 2014). In those proceedings, the Board required that the petitioners
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`make consolidated filings, for which the first petitioner was responsible, and allowed
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`the new petitioner to file an additional seven-page paper. Applied here, the Board
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`could allow Petitioner to file an additional paper addressing claim 22. See Dell,
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`IPR2013-00385, Paper 17 at 11; SAP, IPR2014-00306, Paper 13 at 5. The Board also
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`permitted the patent owner to respond to any separate filing, limiting the page limit to
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`10
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`
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`that used in the separate filing. See Dell, IPR2013-00385, Paper 17 at 11; SAP,
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`CASE IPR2015-00857
`PATENT NO. 7,384,177
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`IPR2014-00306, Paper 13 at 5. Adopting a similar procedure in this case would thus
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`help to minimize any delay that could arise from lengthy briefing submitted by each
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`party, while at the same time providing all parties an opportunity to be heard. See Dell,
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`IPR2013-00385, Paper 17 at 8.
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`As in these prior cases, LGD and Petitioner can also coordinate their
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`questioning at depositions to avoid redundancy. See Dell, IPR2013-00385, Paper 17 at
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`12; SAP, IPR2014-00306, Paper 13 at 6. As noted, Petitioner would be willing to rely
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`on the declaration and testimony from LGD’s expert for all claims except dependent
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`claim 22. For that claim, Petitioner’s expert will be provided for deposition on the
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`same day as LGD’s expert, or on a day most convenient to the parties.
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`For these reasons, joinder will not prejudice any party, but rather will promote
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`the just, speedy, and inexpensive resolution of these proceedings.
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`IV. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that its Petition for
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`Inter Partes Review of U.S. Patent No. 7,384,177 (2015IPR-00857) be instituted and that
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`this proceeding be joined with LG Display Co., Ltd. v. Innovative Display Technologies
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`LLC, IPR2014-01362.
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`11
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`
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`Although Petitioner believes that no fee is required for this Motion, the
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`CASE IPR2015-00857
`PATENT NO. 7,384,177
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`
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`Commissioner is hereby authorized to charge any additional fees that may be required
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`for this Motion to Deposit Account No. 06-0916.
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`12
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`Dated: March 23, 2015
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`CASE IPR2015-00857
`PATENT NO. 7,384,177
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`Respectfully submitted,
`
`
` /P. Andrew Riley/
`P. Andrew Riley, Lead Counsel
`Reg. No. 66,290
`FINNEGAN, HENDERSON,
`FARABOW, GARRETT & DUNNER, LLP
`901 New York Avenue, NW
`Washington, DC 20001
`Tel: (202) 408-4266
`Fax: (202) 408-4400
`Email: andrew.riley@finnegan.com
`
`Thomas W. Winland, Back-up Counsel
`Reg. No. 27,605
`FINNEGAN, HENDERSON,
`FARABOW, GARRETT & DUNNER, LLP
`901 New York Avenue, NW
`Washington, DC 20001
`Tel: (202) 408-4085
`Fax: (202) 408-4400
`Email: tom.winland@finnegan.com
`
`David C. Reese, Back-up Counsel
`Reg. No. 67,942
`FINNEGAN, HENDERSON,
`FARABOW, GARRETT & DUNNER, LLP
`901 New York Avenue, NW
`Washington, DC 20001
`Tel: (202) 408-6098
`Fax: (202) 408-4400
`Email: david.reese@finnegan.com
`
`Counsel for Petitioner
`Toyota Motor Corporation
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`13
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`CASE IPR2015-00857
`PATENT NO. 7,384,177
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that, on this 23rd day of March, 2015, a true and
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`
`
`
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`correct copy of the foregoing MOTION FOR JOINDER PURSUANT TO 35
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`U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b) was served by EXPRESS MAIL on the
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`attorney of record for the Patent Owner, with a courtesy copy being sent by electronic
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`mail to the attorneys of record in the co-pending litigation, at the following addresses:
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`
`
`Donald L. Otto, Esq.
`Renner, Otto, Boisselle & Sklar, LLP
`1621 Euclid Avenue
`19th Floor
`Cleveland, OH 44115
`dotto@rennerotto.com
`
`Justin B. Kimble
`Jeffrey R. Bragalone
`Bragalone Conroy PC
`2200 Ross Avenue
`Suite 4500 - West
`Dallas, TX 75201
`jkimble@bcpc-law.com
`jbragalone@bcpc-law.com
`
`David E. Warden
`Ahmad, Zavitsanos, Anaipakos, Alavi & Mensing PC
`3460 One Houston Center
`1221 McKinney Street
`Houston, TX 77010-2009
`dwarden@azalaw.com
`
`
`
`
`
`
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`14
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`Dated: March 23, 2015
`
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`CASE IPR2015-00857
`PATENT NO. 7,384,177
`
`/Ashley F. Cheung/
`Ashley F. Cheung
`Case Manager
`FINNEGAN, HENDERSON,
`FARABOW, GARRETT & DUNNER, LLP
`
`15
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