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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LG ELECTRONICS, INC.
`Petitioner
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`v.
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`CELLULAR COMMUNICATIONS EQUIPMENT LLC
`Patent Owner
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`INTER PARTES REVIEW OF U.S. PATENT NO. 8,385,966
`Case IPR No.: IPR2016-00178
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`MOTION FOR JOINDER TO INTER PARTES REVIEW
`(35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b))
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`By:
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`Filed on behalf of Petitioners
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`Rajeev Gupta, Reg. No. 55,873
`Joshua L. Goldberg, Reg. No. 59,369
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`901 New York Avenue, N.W.
`Washington, D.C. 20001-4413
`Telephone: 202-408-4000
`Facsimile: 202-408-4400
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`I.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
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`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), LG Electronics,
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`Inc. moves for joinder with the Inter Partes Review of U.S. Patent No. 8,385,966,
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`Kyocera Commn’s, Inc. v. Cellular Commn’s Equip. LLC, IPR2015-01559 (“the
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`Kyocera IPR”), for which an institution decision is pending. This motion is timely
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`because it is filed before one month of institution of the Kyocera IPR. 37 C.F.R.
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`§ 42.122(b).
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`Petitioner requests institution of its concurrently filed Petition for Inter
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`Partes Review. The Petition is a carbon copy of the original Kyocera IPR petition
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`in all material respects. The only changes are in the introduction to identify the
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`correct Petitioner, and in the mandatory notices under 37 C.F.R. § 42.8(b). The
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`concurrently filed Petition and the Kyocera IPR petition challenge the same claims
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`of the ’966 patent on the same grounds relying on the same prior art and evidence,
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`including declarations identical in substance from the same declarants and expert.1
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`Petitioner requests that the institution of its Petition be limited solely to the
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`grounds that will be instituted in the Kyocera IPR. Petitioner agrees to proceed
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`solely on the grounds, evidence, and arguments advanced, or that will be advanced,
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`1 The declarations have been updated only to reflect retention by Petitioner and are
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`otherwise identical to the declarations submitted in the Kyocera IPR.
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`in the Kyocera IPR as instituted. Thus, the Petition warrants institution under
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`35 U.S.C. § 314, and 35 U.S.C. § 315(c) permits Petitioner’s joinder to the
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`Kyocera IPR.
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`Further, if joined, Petitioner agrees to adhere to all applicable deadlines in
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`the Kyocera IPR and coordinate all filings with the Petitioner in the Kyocera IPR
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`(“the Kyocera Petitioner”). The Kyocera Petitioner will maintain the lead role in
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`the proceedings so long as it is a party to the proceedings. Petitioner agrees to
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`consolidated filings for all substantive papers in the proceeding. The Kyocera
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`Petitioner and Petitioner will be jointly responsible for the consolidated filings.
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`Petitioner will not advance any arguments separate from those advanced by
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`Petitioner and the Kyocera Petitioner in the consolidated filings. These limitations
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`will avoid lengthy and duplicative briefing. Also, Petitioner will not seek
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`additional depositions or deposition
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`time, and will coordinate deposition
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`questioning and hearing presentations with the Kyocera Petitioner. Petitioner
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`agrees to the foregoing conditions even in the event that other IPRs filed by other,
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`third-party petitioners are joined with the Kyocera IPR.
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`Joinder will help efficiently resolve the disputes among the parties. By
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`joinder, a single Board decision may dispose of the issues raised in the Kyocera
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`IPR for all interested parties. Further, the Patent Owner has asserted the ’966
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`patent in district court against LG Electronics, Inc., and LG Electronics U.S.A.,
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`Inc. (“LGE”). Joinder will estop LGE from asserting in district court those issues
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`resolved in a final written decision in the Kyocera IPR, thus narrowing the issues
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`in the district court actions. See 35 U.S.C. § 315(e)(2). Finally, joinder would not
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`complicate or delay the Kyocera IPR, and would not adversely affect any schedule
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`set in that proceeding. In sum, joinder would promote efficient adjudication in
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`multiple forums. On the other hand, if instituted, maintaining the Petitioner’s IPR
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`proceeding separate from that of the Kyocera IPR would entail needless
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`duplication of effort.
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`Joinder will not unduly prejudice any party. The Kyocera Petitioner
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`consents to Petitioner’s joinder. Because joinder will not add any new substantive
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`issues, delay the schedule, burden deponents, or increase needless filings, any
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`additional costs on the Patent Owner would be minimal. On the other hand, denial
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`of joinder would prejudice LGE. Their interests may not be adequately protected
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`in the Kyocera IPRs, particularly if the Kyocera Petitioner settles with the Patent
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`Owner. Petitioner should be allowed to join in a proceeding affecting a patent
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`asserted against it.
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`II. BACKGROUND AND RELATED PROCEEDINGS
`Cellular Communications Equipment, LLC (the “Patent Owner”) is the
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`owner of the ’966 Patent. The Patent Owner asserted the ’966 Patent against LGE
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`and Kyocera Communications,
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`Inc.
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`(“Kyocera”),
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`among others,
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`in
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`-3-
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`Communications Equipment LLC v. LG Electronics, Inc. et al., No. 6:14-cv-982
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`(E.D. Texas). On July 9, 2015, Kyocera filed its IPR petition, IPR2015-01559,
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`against the ’966 patent. The Board has not yet decided whether to institute the
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`Kyocera IPR. Petitioner here moves for joinder with the Kyocera IPR.
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`III. STATEMENT OF REASONS FOR THE REQUESTED RELIEF
`A. Legal Standards and Applicable Rules
`The time limitation set forth in 35 U.S.C. § 315(b) does not apply to a
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`request for joinder. 35 U.S.C. § 315(b). The Board has discretion to join a
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`properly filed IPR petition to an IPR proceeding. 35 U.S.C. § 315(c); 37 C.F.R.
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`§ 42.122(b); see also Dell Inc. v. Network-1 Sec. Solutions, Inc., IPR2013-00385,
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`Paper 19, at 4-6; Sony Corp. v. Yissum Res. & Dev. Co. of the Hebrew Univ. of
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`Jerusalem, IPR2013- 00326, Paper 15, at 3-4; Microsoft Corp. v. Proxyconn, Inc.,
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`IPR2013-00109, Paper 15, at 3-4. “The Board will determine whether to grant
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`joinder on a case-by-case basis, taking into account the particular facts of each
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`case, substantive and procedural issues, and other considerations.” Dell, IPR2013-
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`00385, Paper 19, at 3. The movants bear the burden of proof in establishing
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`entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). A motion for
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`joinder should:
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`(1) set forth the reasons why joinder is appropriate; (2) identify any
`new grounds of unpatentability asserted in the petition; (3) explain
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`what impact (if any) joinder would have on the trial schedule for the
`existing review; and (4) address specifically how briefing and
`discovery may be simplified.
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`Dell, IPR2013-00385, Paper 19, at 4.
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`B.
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`Joinder will not add any new grounds of unpatentability or have
`an impact on the trial schedule.
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`The Petition is based on the same grounds and combinations of prior art that
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`the Board will consider in deciding whether to institute the Kyocera IPR. For
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`simplicity and efficiency, Petitioner has copied the substance of Kyocera’s petition
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`and accompanying declarations. Petitioner does not seek to reintroduce grounds or
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`claims not in the Kyocera IPR and seek only to join the proceeding as instituted.
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`Petitioners have retained the same expert, who has submitted an identical
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`declaration as in the Kyocera IPR. The Patent Owner should not require any
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`discovery beyond that which it may need in the Kyocera IPR—nor should the
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`Board permit any. The Petition presents no new substantive issues relative to the
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`Kyocera IPR and does not seek to broaden the scope of the Kyocera IPR.
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`For efficiency’s sake, Petitioner will:
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`1. Adhere to all applicable deadlines in the Kyocera IPR;
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`2. Submit “consolidated” filings with the Kyocera Petitioner, as set forth
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`above in the statement of precise relief requested;
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`3. Refrain from requesting or reserving any additional depositions or
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`deposition time;
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`4. Refrain from requesting or reserving additional oral hearing time; and
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`5. Assume a second-chair role as long as the Kyocera Petitioner remains
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`in the proceeding.2
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`In view of these provisions, joinder should not affect the trial schedule.
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`C.
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`Joinder will promote efficiency by consolidating issues, avoiding
`wasteful duplication, and preventing inconsistency.
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`Petitioner presents identical arguments and supporting evidence as the
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`Kyocera IPR. Joinder will simplify briefing and discovery. Given that the
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`Kyocera IPR and the Petition address the same prior art and grounds for rejection
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`of the same claims, joining these proceedings allows for joint submissions and
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`discovery, further streamlining the proceedings. This should promote efficiency
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`and conserve the Board’s and the parties’ resources. Further, joinder will estop
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`LGE from asserting in district court those issues resolved in a final written decision
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`2 These limitations are consistent with previously granted joinder motions. See,
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`e.g., Enzymotech Ltd. v. Neptune Techs., IPR2014-00556, Paper 19 (July 9, 2014)
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`(agreeing to procedural concessions, such as “consolidated” responses); Gillette
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`Co. v. Zond, IPR2014-01016, Paper 13 (Nov. 10, 2014) (same); SAP Am. Inc. v.
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`Clouding IP, LLC, IPR2014-00306, Paper 13 (May 19, 2014) (same).
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`-6-
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`in the Kyocera IPR, thus narrowing the issues in the district court actions. See
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`35 U.S.C. § 315(e)(2).
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`Joinder is Appropriate
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`D.
`The Board has previously stated that it is “mindful of a policy preference for
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`joining a party that does not present new issues.” Enzymotec Ltd. v. Neptune Techs
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`& Bioresources, Inc. IPR2014-00556, Paper No. 19 at 6 (July 9, 2014) (citing 157
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`CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (“The Office
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`anticipates that joinder will be allowed as of right – if an inter partes review is
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`instituted on the basis of a petition, for example, a party that files an identical
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`petition will be joined to that proceeding, and thus allowed to file its own briefs
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`and make its own arguments.”))
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`Here, because Petitioner seeks institution solely on the grounds, evidence,
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`and arguments advanced, or that will be advanced, in the Kyocera IPR, institution
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`is warranted under 35 U.S.C. § 314 and Petitioner’s joinder to the Kyocera IPR is
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`appropriate under 35 U.S.C. § 315(c). No new grounds of unpatentability are
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`asserted. As explained above, joinder would not adversely impact the trial
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`schedule, briefing, or discovery in the Kyocera IPR, and the remaining equities
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`compel joinder.
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`Petitioner is filing this Petition and joinder motion to ensure that the trial is
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`completed in the event that the Kyocera Petitioner reaches settlement with Patent
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`Owner.
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`1. Without joinder, LGE will be prejudiced
`A denial of joinder would prejudice LGE. Their substantial interests, as
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`parties against whom the ’966 patent has been asserted in a federal district court
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`action, may not be adequately protected by the Kyocera Petitioner in the Kyocera
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`IPRs. For example, LGE has an interest that the Kyocera IPR reach a final
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`determination to facilitate a timely and cost-effective end to the controversy
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`between LGE and the Patent Owner. LGE should be allowed to join in a
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`proceeding affecting a patent asserted against it.
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`Joinder will not unduly prejudice any party
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`2.
`The Kyocera Petitioner has already consented to Petitioner’s joinder. The
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`Petition raises issues already before the Board and long known to the Patent
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`Owner. Addressing patent validity in this proceeding, well on its way towards a
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`final determination, serves the parties’ and Board’s interests.
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`IV. CONCLUSION
`Joinder will not affect the substance, procedure, or scheduling of the
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`Kyocera IPR. Petitioner files this motion under the statutory joinder provisions as
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`contemplated by the AIA. Joinder will simplify the issues and promote efficiency,
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`justice, and speed.
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`For the foregoing reasons, Petitioner respectfully requests inter partes
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`review of U.S. Patent No. 8,385,966 and joinder with Kyocera Commn’s, Inc. v.
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`Cellular Commn’s Equip. LLC, IPR2015-01559.3
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`Dated: November 10, 2015
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`Respectfully submitted,
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`
`
`/Rajeev Gupta/
`Rajeev Gupta, Reg. No. 55,873
`Karthik Kumar, Ltd. Rec. No. L0906
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`901 New York Avenue, N.W.
`Washington, D.C. 20001-4413
`Telephone: 202-408-4000
`Facsimile: 202-408-4400
`
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`3 Although no fee is believed to be required, the Commissioner is authorized to
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`charge any additional fees required for this Motion, to Deposit Account No. 06-
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`0916.
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`-9-
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`CERTIFICATE OF SERVICE
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`The undersigned certifies service pursuant to 37 C.F.R. §§ 42.6(e) and
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`42.105(a) by Express Mail of a true and correct copy of this MOTION FOR
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`JOINDER TO INTER PARTES REVIEW on November 10, 2015, on counsel for
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`the Patent Owner at the correspondence addresses below:
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`MARTIN & FERRARO, LLP
`1557 Lake O’Pines Street, N.E.
`Hartville, OH 44632
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`Edward R. Nelson, III (ed@nelbum.com)
`S. Brannon Latimer (brannon@nelbum.com)
`Ryan P. Griffin (ryan@nelbum.com)
`Thomas C. Cecil (tom@nelbum.com)
`NELSON BUMGARDNER, P.C.
`3131 West 7th Street, Suite 300
`Fort Worth, TX 76107
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`Respectfully submitted,
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`
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`/Rajeev Gupta/
`Rajeev Gupta, Reg. No. 55,873
`Karthik Kumar, Ltd. Rec. No. L0906
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`901 New York Avenue, N.W.
`Washington, D.C. 20001-4413
`Telephone: 202-408-4000
`Facsimile: 202-408-4400
`
`
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`
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`Dated: November 10, 2015