`Trials@uspto.gov
`571-272-7822 Entered: October 2, 2015
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`COX COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`C-CATION TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01796
`Patent 5,563,883
`____________
`
`
`
`Before BARBARA A. BENOIT, LYNNE E. PETTIGREW, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`
`PETTIGREW, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`IPR2015-01796
`Patent 5,563,883
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`I. INTRODUCTION
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`Cox Communications, Inc. (“Petitioner” or “Cox”) filed a Petition for
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`inter partes review of claims 1, 3, and 4 of U.S. Patent No. 5,563,883
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`(Ex. 1001, “the ’883 patent”). Paper 1 (“Pet.”). Concurrently with its
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`Petition, Cox filed a Motion for Joinder with ARRIS Group, Inc. v. C-Cation
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`Technologies, LLC, Case IPR2015-00635 (“the ARRIS IPR”). Paper 3
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`(“Mot.”). Cox represents that ARRIS does not oppose the Motion for
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`Joinder. Mot. 1. Patent Owner did not file an opposition to Cox’s Motion
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`for Joinder after being given an opportunity to do so. See Paper 5. Patent
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`Owner elected to waive a Preliminary Response in view of Cox’s Motion for
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`Joinder and the representations made therein, discussed in more detail
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`below. Paper 8.
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`For the reasons explained below, we institute an inter partes review of
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`claims 1, 3, and 4 of the ’883 patent and grant Cox’s Motion for Joinder.
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`II. RELATED PROCEEDINGS
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`The parties indicate that Patent Owner has asserted the ’883 patent
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`against Petitioner and other defendants in C-Cation Technologies, LLC v.
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`Atlantic Broadband Group LLC, No. 1:15-cv-00295 (D. Del.). Pet. 2;
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`Mot. 2; Paper 7, 1. The parties also indicate that Patent Owner has asserted
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`the ’883 patent against ARRIS and other defendants in C-Cation
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`Technologies, LLC v. Time Warner Cable Inc., No. 2:14-cv-00059 (E.D.
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`Tex.). Pet. 2; Mot. 2; Paper 7, 1.
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`In the ARRIS IPR, we instituted an inter partes review of claims 1, 3,
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`and 4 of the ’883 patent. ARRIS Group, Inc. v. C-Cation Techs., LLC, Case
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`IPR2015-00635 (PTAB July 31, 2015) (Paper 19) (“ARRIS Dec.”). Another
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`petition challenging the ’883 patent, along with a motion for joinder with the
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`2
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`IPR2015-01796
`Patent 5,563,883
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`ARRIS IPR, is pending. See Unified Patents Inc. v. C-Cation Techs., LLC,
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`Case IPR2015-01045 (Papers 2, 11). In addition, the ’883 patent has been
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`the subject of two other petitions for inter partes review. In Cisco Systems,
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`Inc. v. C-Cation Technologies, LLC, Case IPR2014-00454 (PTAB Aug. 29,
`
`2014) (Paper 12), the Board denied institution of inter partes review. In
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`ARRIS Group, Inc. v. C-Cation Technologies, LLC, Case IPR2014-00746
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`(PTAB Nov. 24, 2014) (Paper 22), the Board instituted inter partes review,
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`and subsequently granted Patent Owner’s request for adverse judgment
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`(Paper 28).
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`III. INSTITUTION OF INTER PARTES REVIEW
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`In the ARRIS IPR, we instituted an inter partes review on the only
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`grounds asserted in ARRIS’s petition: (a) claims 1 and 4 under 35 U.S.C.
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`§ 103(a) as obvious over MPT 1343,1 MPT 1347,2 and MPT 1327,3 and
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`(b) claim 3 under 35 U.S.C. § 103(a) as obvious over MPT 1343,
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`MPT 1347, MPT 1327, Zdunek,4 and Dufresne.5 ARRIS Dec. 23. The
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`Petition filed in this proceeding is nearly identical to the petition filed in the
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`ARRIS IPR and asserts the same grounds on which we instituted review in
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`
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`1 MPT 1343 PERFORMANCE SPECIFICATION: SYSTEM INTERFACE
`SPECIFICATION FOR RADIO UNITS TO BE USED WITH COMMERCIAL TRUNKED
`NETWORKS OPERATING IN BAND III SUB-BANDS 1 AND 2 (1991) (Ex. 1006,
`“MPT 1343”).
`2 MPT 1347 RADIO INTERFACE SPECIFICATION FOR COMMERCIAL TRUNKED
`NETWORKS OPERATION IN BAND III, SUB-BANDS 1 AND 2 (1991) (Ex. 1007,
`“MPT 1347”).
`3 MPT 1327 A SIGNALLING STANDARD FOR TRUNKED PRIVATE LAND MOBILE
`RADIO SYSTEMS (1991) (Ex. 1005, “MPT 1327”).
`4 U.S. Patent No. 4,870,408, issued Sept. 26, 1989 (Ex. 1008, “Zdunek”).
`5 U.S. Patent No. 4,920,533, issued Apr. 24, 1990 (Ex. 1009, “Dufresne”).
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`3
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`IPR2015-01796
`Patent 5,563,883
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`the ARRIS IPR. Pet. 5–6; Mot. 1. For the same reasons set forth in our
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`institution decision in the ARRIS IPR, we determine that the information
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`presented in Cox’s Petition shows a reasonable likelihood that Petitioner
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`would prevail in showing that claims 1, 3, and 4 of the ’883 patent are
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`unpatentable. See ARRIS Dec. 13–21. Accordingly, we institute an inter
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`partes review on the same grounds as those on which we instituted review in
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`the ARRIS IPR.
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`IV. GRANT OF MOTION FOR JOINDER
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`The Petition and Motion for Joinder in this proceeding were accorded
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`a filing date of August 24, 2015. See Paper 4. Thus, Petitioner’s Motion for
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`Joinder is timely because joinder was requested no later than one month
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`after the institution date of the ARRIS IPR, i.e, July 31, 2015. See 37 C.F.R.
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`§ 42.122(b).
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`The statutory provision governing joinder in inter partes review
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`proceedings is 35 U.S.C. § 315(c), which reads:
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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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`A motion for joinder should (1) set forth reasons why joinder is appropriate;
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`(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
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`the existing review; and (4) address specifically how briefing and discovery
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`may be simplified. See Kyocera Corp. v. Softview LLC, Case IPR2013-
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`00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).
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`4
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`IPR2015-01796
`Patent 5,563,883
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`As noted, the Petition in this case asserts the same invalidity grounds
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`and presents the same arguments as the petition in the ARRIS IPR. See
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`Mot. 6. Cox also has retained the same expert as ARRIS and submitted a
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`declaration in this proceeding that is virtually the same as the declaration
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`submitted by ARRIS in the ARRIS IPR. See id. Thus, this inter partes
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`review does not present any ground or matter not already at issue in the
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`ARRIS IPR.
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`If joinder is granted, Cox agrees to let ARRIS take the lead in all
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`matters, adopting an “understudy” role as long as ARRIS remains an active
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`participant in the inter partes review. Id. at 7–8. Cox agrees to work with
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`ARRIS to submit consolidated filings, except for motions that do not involve
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`the other party. Id. at 7. Cox also represents that it will rely on ARRIS to
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`take testimony and defend depositions of all witnesses, unless ARRIS
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`wishes otherwise. Id. Finally, Cox states it “is willing to agree to any other
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`procedural concessions that will minimize complication or delay and result
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`in a speedy trial with little or no impact on the ARRIS IPR or the Board.”
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`Id. In view of its agreement to consolidated filings and subordination, Cox
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`submits that joinder will not impact the trial schedule for the ARRIS IPR.
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`Id. at 8.
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`We agree with Petitioner that joinder with the ARRIS IPR is
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`appropriate under the circumstances. Accordingly, we grant Petitioner’s
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`Motion for Joinder.
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`
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`Accordingly, it is:
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`V. ORDER
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` ORDERED that an inter partes review is instituted in IPR2015-
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`01796;
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`5
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`IPR2015-01796
`Patent 5,563,883
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`FURTHER ORDERED that the Motion for Joinder with IPR2015-
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`00635 is granted, and Cox Communications, Inc. is joined as a petitioner in
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`IPR2015-00635;
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`FURTHER ORDERED that IPR2015-01796 is terminated under
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`37 C.F.R. § 42.72, and all further filings shall be made only in IPR2015-
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`00635;
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`FURTHER ORDERED that, subsequent to joinder, the grounds for
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`trial in IPR2015-00635 remain unchanged;
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`
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`FURTHER ORDERED that, subsequent to joinder, the Scheduling
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`Order in place for IPR2015-00635 (Paper 20) remains unchanged;
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`FURTHER ORDERED that in IPR2015-00635, ARRIS and Cox will
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`file each paper, except for a motion that does not involve the other party, as
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`a single, consolidated filing, subject to the page limits set forth in 37 C.F.R.
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`§ 42.24, and shall identify each such filing as a consolidated filing;
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`FURTHER ORDERED that for any consolidated filing, if Cox wishes
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`to file an additional paper to address points of disagreement with ARRIS,
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`Cox must request authorization from the Board to file a motion for
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`additional pages, and no additional paper may be filed unless the Board
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`grants such a motion;
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`FURTHER ORDERED that ARRIS and Cox shall collectively
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`designate attorneys to conduct the cross-examination of any witness
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`produced by Patent Owner and the redirect of any witness produced by
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`ARRIS and Cox, within the timeframes set forth in 37 C.F.R. § 42.53(c) or
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`agreed to by the parties;
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`6
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`IPR2015-01796
`Patent 5,563,883
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`FURTHER ORDERED that ARRIS and Cox shall collectively
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`designate attorneys to present at the oral hearing, if requested and scheduled,
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`in a consolidated argument;
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`FURTHER ORDERED that the case caption in IPR2015-00635 shall
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`be changed to reflect joinder of Cox as a petitioner in accordance with the
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`attached example; and
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`FURTHER ORDERED that a copy of this Decision shall be entered
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`into the record of IPR2015-00635.
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`
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`FOR PETITIONER:
`
`Mitchell G. Stockwell
`mstockwell@kilpatricktownsend.com
`
`Michael J. Turton
`mturton@kilpatricktownsend.com
`
`
`
`FOR PATENT OWNER:
`
`Walter E. Hanley
`whanley@kenyon.com
`
`David J. Kaplan
`djkaplan@kenyon.com
`
`David J. Cooperberg
`dcooperberg@kenyon.com
`
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`7
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARRIS GROUP, INC., and COX COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`C-CATION TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-006351
`Patent 5,563,883
`____________
`
`
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`
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`1 Cox Communications, Inc., who filed a Petition in IPR2015-01796, has
`been joined as a petitioner in this proceeding.