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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`LG ELECTRONICS, INC., TOSHIBA
`CORPORATION, AND VIZIO, INC..
`
`Petitioners,
`v.
`
`STRAIGHT PATH IP GROUP, INC.,
`
`Patent Owner.
`
`
`
`Case IPR2015-01015
`Patent 6,009,469
`
`
`
`
`PETITIONERS’ UNOPPOSED MOTION TO WITHDRAW THE
`MOTION FOR JOINDER
`
`
`
`

`

`
`
`Pursuant to the Board’s authorization granted in its email of June 1, 2015,
`
`Petitioners respectfully submit this Unopposed Motion to Withdraw the Motion for
`
`Joinder.
`
`I.
`
`Statement of Material Facts
`1.
`
`On October 31, 2014, Petitioners LG Electronics, Inc. (“LGE”),
`
`Toshiba Corp. (“Toshiba”) and VIZIO, Inc. (“VIZIO”) together with Hulu, LLC
`
`(“Hulu”) filed a petition for Inter Partes review of claims 1-3, 5, 6, 9, 10, 14, 17
`
`and 18 of U.S. Patent No. 6,009,469 (“the ’469 patent”). (Case IPR 2015-00198,
`
`Paper 1).
`
`2.
`
`On March 6, 2015, the Board issued a decision instituting Inter Partes
`
`review of claims 1-3, 5, 6, 9, 10, 14, 17 and 18 of the ’469 patent in Case IPR2014-
`
`01367 (“the Samsung IPR”).
`
`3.
`
`On April 6, 2015, Petitioners filed the underlying Petition in this
`
`proceeding requesting Inter Partes review of claims 1-3, 5, 6, 9, 10, 14, 17 and 18.
`
`(Paper 1). The Petition is a carbon copy of the petition in the Samsung IPR in all
`
`material respects. (Paper 3 at p. 1). The Petition was filed concurrently with a
`
`Motion for Joinder (“the Joinder Motion”) with the Samsung IPR. (Paper 3).
`
`4.
`
`As explained in the Petition, if the Board denied Inter Partes review
`
`of claims 1-3, 5, 6, 9, 10, 14, 17 and 18 of the ’469 patent in Case IPR2015-00198,
`
`Petitioners would be left with no avenue to challenge the ’469 patent in an Inter
`
`\
`
`1
`
`

`

`
`
`Partes review unless joined in the Samsung IPR. (Paper 1 at p. 2). Thus,
`
`Petitioners filed the present Petition and Joinder Motion.
`
`5.
`
`On May 15, 2015, the Board issued a decision instituting Inter Partes
`
`review of claims 1-3, 5, 6, 9, 10, 14, 17 and 18 of the ’469 patent in Case IPR2015-
`
`00198. (Case 2015-00198, Paper 24).
`
`II.
`
`Remarks
`
`Petitioners respectfully submit that in view of the Board’s decision to
`
`institute Inter Partes review of the ’469 patent in Case IPR2015-00198, it is
`
`unnecessary for Petitioners to also participate in the Samsung IPR.
`
`To conserve the Parties’ and the Board’s resources, Petitioners believe it is
`
`appropriate to withdraw their request to join the Samsung IPR and proceed only in
`
`Case IPR2015-00198. For at least this reason, Petitioners believe that there is good
`
`cause to withdraw the Joinder Motion. Petitioners acknowledge that withdrawal of
`
`the Joinder Motion will result in a decision not to institute the Petition as time
`
`barred.
`
`
`
`\
`
`
`
`2
`
`

`

`
`
`III. Conclusion
`For the reasons presented above, Petitioners respectfully request that the
`
`Board order that the Joinder Motion (Paper 3) is WITHDRAWN and that the Joint
`
`Motion for Entry of Joint Stipulated Order (Paper 7) be DISMISSED as moot.
`
`
`
`Dated: June 3, 2015
`
`
`
`Respectfully submitted,
`
`
`
`/Rajeev Gupta/
`
`
`
`
`
`
`
`
`
`Rajeev Gupta, Reg. No. 55,873
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`901 New York Ave NW
`Washington, D.C. 20001
`Ph: 202-408-4000 F: 202-408-4400
`
`Filed on behalf of Petitioners
`
`
`
`3
`
`
`
`\
`
`

`

`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on June 3, 2015, I caused a true and correct copy of this
`Unopposed Motion to Withdraw the Motion for Joinder to be served upon the
`Patent Owner by filing this document through the Patent Review Processing
`System as well as by delivering a copy via email to the following attorneys of
`record for the Patent Owner:
`
`
`
`William A. Meunier (Lead Counsel)
`Email: WAMeunier@mintz.com
`Matthew D. Durell (Backup Counsel)
`Email: MDurell@mintz.com
`
`Service Email: StraightPathIPRs@mintz.com
`
`Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
`One Financial Center
`Boston, MA 02111
`
`
`
`
`
`
`
`
`
`
`
`/Rajeev Gupta/
`
`
`
`
`
`
`
`
`
`Rajeev Gupta, Reg. No. 55,873
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`901 New York Ave NW
`Washington, D.C. 20001
`Ph: 202-408-4000
`F: 202-408-4400
`
`
`
`
`
`
`
`
`
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`
`
`
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`
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`
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`
`
`\
`
`

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