UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________________________
`
`ZTE USA, Inc.
`Petitioner
`
`v.
`
`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC
`Patent Owner
`
`__________________________________
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 7,542,045
`
`Case IPR No. IPR2016-00667
`
`__________________________________
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c),
`37 C.F.R. §§ 42.22, AND 42.122(b)
`
`
`
`Mail Stop Patent Board Patent
`Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450 Alexandria, VA 22313-1450
`
`
`
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________________________
`
`ZTE USA, Inc.
`Petitioner
`
`v.
`
`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC
`Patent Owner
`
`__________________________________
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 7,542,045
`
`Case IPR No. IPR2016-00667
`
`__________________________________
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c),
`37 C.F.R. §§ 42.22, AND 42.122(b)
`
`
`
`Mail Stop Patent Board Patent
`Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450 Alexandria, VA 22313-1450
`
`
`
`U.S. Patent No. 7,542,045
`ZTE Motion for Joinder
`
`I.
`
`INTRODUCTION
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`ZTE USA, Inc. (“Petitioner”) submits concurrently herewith a Petition for
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`Inter Partes Review of U.S. Patent No. 7,542,045 (“the ’045 Patent”) (“Petition”)
`
`based on grounds identical to those asserted in HTC Corp. et al. v. Parthenon
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`Unified Memory Architecture, LLC, IPR2015-01502 (“the HTC IPR”).
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`Pursuant to 35 US.C. § 315(c), Petitioner respectfully moves that this
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`Petition be instituted and joined with the HTC IPR, which has already been
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`instituted. The Petition is a copy of the HTC IPR petition (“the HTC Petition”) in
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`all material aspects, challenging the same claims of the ’045 Patent on the same
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`grounds while relying on the same prior art and evidence. Joining the Petition to
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`the HTC IPR will result in a consolidated IPR with six petitioners—HTC Corp.,
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`HTC America, Inc., LG Electronics, Inc., Samsung Electronics Co., Ltd., and
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`Samsung Electronics America, Inc. (collectively, “the Initial Petitioners”), and
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`Petitioner—thereby promoting an efficient determination of the validity of the ’045
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`Patent.
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`Petitioner requests that the institution of this Petition be limited solely to the
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`grounds that were instituted in the HTC IPR, and further requests an opportunity to
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`join the HTC IPR as an “understudy,” only assuming an active role in the event
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`that at least one of the Initial Petitioners settle with Parthenon Unified Memory
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`Architecture LLC (“Parthenon”). This petition does not add or alter any arguments
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`1
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`that have already been considered by the Board, and this petition does not seek to
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`U.S. Patent No. 7,542,045
`ZTE Motion for Joinder
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`expand the grounds of invalidity that the Board has already found support of
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`institution of IPR proceedings. In addition, joinder will have no impact on the
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`schedule in the HTC IPR.
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`Accordingly, Petitioner respectfully requests that this motion for joinder to
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`the HTC IPR be granted.
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`II. BACKGROUND AND RELATED PROCEEDINGS
`Parthenon is the owner of the ’045 Patent. In 2014 and 2015, Parthenon
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`sued nine (9) different companies, including Petitioner and the Initial Petitioners,
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`for allegedly infringing the ’045 Patent (the “Underlying Litigation”). The Initial
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`Petitioners filed their petition for inter partes review of the ’045 Patent on June 24,
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`2015. Parthenon filed its preliminary response on October 7, 2015. The Board
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`issued a decision granting Institution on Grounds B-D in the HTC IPR on January
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`6, 2016. Petitioner here moves for joinder with the HTC IPR.
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`III. STATEMENT OF REASONS FOR THE REQUESTED RELIEF
`A. Legal standards and applicable rules
`The Board has discretion to join a filed IPR petition to an IPR proceeding.
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`35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b); see also Dell Inc. v. Network-1 Sec.
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`Solutions, Inc., IPR2013-00385, Paper 19, at 4-6; Sony Corp. v. Yissum Res. &
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`Dev. Co. of the Hebrew Univ. of Jerusalem, IPR2013-00326, Paper 15, at 3-4;
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`2
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`
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`Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109, Paper 15, at 3-4. “The Board
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`U.S. Patent No. 7,542,045
`ZTE Motion for Joinder
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`will determine whether to grant joinder on a case-by-case basis, taking into account
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`the particular facts of each case, substantive and procedural issues, and other
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`considerations.” Dell, IPR2013-00385, Paper 19, at 3. The movants bear the
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`burden of proof in establishing entitlement to the requested relief. 37 C.F.R.
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`§§ 42.20(c), 42.122(b). A motion for 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
`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.
`
`Dell, IPR2013-00385, Paper 19, at 4.
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`The Board also has discretion to “waive or suspend a requirement [of the
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`rules]” including 37 C.F.R. § 42.122(b). 37 C.F.R § 42.5(b).
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`Special circumstances warrant a waiver of 37 C.F.R. § 42.122(b)
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`B.
`Petitioner submits that the following special circumstances warrant
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`invocation of waiver of pertinent requirements (most notably the requirement of
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`Rule 42.122 that motions for joinder be filed no later than one month after the
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`institution date of the IPR for which joinder is requested) pursuant to Board’s
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`authority set forth in Rule 42.5(b):
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`3
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`U.S. Patent No. 7,542,045
`ZTE Motion for Joinder
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`
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`The Petition raises only arguments and grounds that are
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`substantively identical to the arguments and grounds in the HTC
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`IPR. PTAB decisions now clearly indicate that the copy-and-paste
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`method is the preferred means to join an instituted IPR. See, e.g.,
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`Sony Corp. of America, et al. v. Network-1 Security Solutions, Inc.,
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`IPR2013-00495, Paper No. 13, at 4 (Sep. 16, 2013). Thus, there
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`would be no new issues beyond those already before the Board.
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`
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`Petitioner agrees to an “understudy” role in the HTC IPR.
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`Petitioner will not file additional written submissions, nor will it pose
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`questions at depositions or argue at oral hearing without prior
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`permission. Only in the event that at least one of the Initial Petitioners
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`settle, will Petitioner seek to become active in the HTC IPR.
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`
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`Petitioner will be greatly prejudiced if not joined. If Parthenon
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`settles with the Initial Petitioners, and if a final decision in the HTC
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`IPR is not issued, then Petitioner will have to meet a much higher
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`standard (clear and convincing) when arguing invalidity before the
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`court than before the Board (preponderance of the evidence).
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`
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`The Petition is filed not more than one year of service of the
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`complaint on February 26, 2015. Thus, the instant Petition is not
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`4
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`U.S. Patent No. 7,542,045
`ZTE Motion for Joinder
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`subject to the one year time bar of Section 315(b). Accordingly,
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`joining the Petition with the HTC IPR will prevent multiple IPR
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`proceedings on the same patent asserting the same grounds.
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`C.
`
`Joinder will not impact the schedule or the Board’s ability to
`complete the review within the one-year period
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`Joinder in this case will not impact the Board’s ability to complete its review
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`in a timely manner. Section 316(a)(11) provides that IPR proceedings should be
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`completed and the Board’s final decision issued within one year of institution of
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`the review. See also 37 C.F.R. § 42.100(c). Here, joinder will not affect the
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`Board’s ability to issue its final determination within one year because Petitioner
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`agrees to an understudy role and does not raise any issues that are not already
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`before the Board. Indeed, the Petition includes only those grounds on which the
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`HTC IPR was instituted, copying all material aspects of the instituted grounds from
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`the HTC Petition.
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`Given that Petitioner will assume an understudy role, its presence will not
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`introduce any additional arguments, briefing, or need for discovery.
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`Petitioner only offers identical support that the Initial Petitioners previously
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`introduced. For example, the Petition relies on the expert witness already involved
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`in the HTC IPR, Dr. Santhana Chari. Petitioner has not submitted a new
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`declaration.
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`5
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`
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`Parthenon has filed a preliminarily response to the grounds asserted in the
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`U.S. Patent No. 7,542,045
`ZTE Motion for Joinder
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`
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`HTC IPR on October 7, 2015. HTC, IPR2015-01502, Paper 7 (Oct. 7, 2015).
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`Thus, Petitioner submits that Parthenon does not need to file a Patent Owner’s
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`Preliminary Response, and requests that the Board proceed without it. See
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`Motorola Mobility LLC v. Softview LLC, IPR2013-00256, Paper 8 (June 13, 2013)
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`(allowing the Patent Owner to file a preliminary response addressing only those
`
`points raised in the new petition that were different from those in the granted
`
`petition). Here, because the invalidity grounds are, word-for-word, identical to
`
`those grounds petitioned for in the HTC IPR, there is nothing new for Parthenon to
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`address.
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`Further, for efficiency’s sake, Petitioner will:
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`1. Adhere to all applicable deadlines in the HTC IPR;
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`2. Submit “consolidated” filings with the Initial Petitioners, 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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`6
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`U.S. Patent No. 7,542,045
`ZTE Motion for Joinder
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`5. Assume a understudy role as long as the Initial Petitioners remain in
`
`the proceeding.1
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`In view of these provisions, joinder should not affect the trial schedule.
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`D.
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`Joinder is appropriate because it would enhance efficiency by
`avoiding duplicate efforts and avoid prejudice to Petitioner
`
`A final written decision on the validity of the ’045 Patent will at least
`
`minimize issues in the Underlying Litigation and, at most, resolve the Underlying
`
`Litigation altogether. Allowing Petitioner to join would also avoid inconsistency
`
`and avoid prejudice to Petitioner in the event that Parthenon settles with the Initial
`
`Petitioners. Section 317(a) provides that an inter partes review “shall be
`
`terminated with respect to any petitioner upon the joint request of the petitioner
`
`and the patent owner” unless the Board has already reached its decision on the
`
`merits. If no petitioner remains after settlement, “the Office may terminate the
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`review.” Id. Thus, if Parthenon were to reach a settlement with each of the Initial
`
`Petitioners, the HTC IPR could terminate without proceeding to a final written
`
`decision.
`
`
`1 These limitations are consistent with previously granted joinder motions. See, e.g., Enzymotech
`Ltd. v. Neptune Techs., IPR2014-00556, Paper 19 (July 9, 2014) (agreeing to procedural
`concessions, such as “consolidated” responses); Gillette Co. v. Zond, IPR2014-01016, Paper 13
`(Nov. 10, 2014) (same); SAP Am. Inc. v. Clouding IP, LLC, IPR2014-00306, Paper 13 (May 19,
`2014) (same).
`
`7
`
`
`
`Indeed, if the Board terminated the HTC IPR, Petitioner would have to
`
`U.S. Patent No. 7,542,045
`ZTE Motion for Joinder
`
`
`
`reargue the exact same arguments that the Initial Petitioners have already asserted
`
`are reasonably likely to prevail in the HTC IPR petition. Arguments related to
`
`both claim construction and validity will have to be briefed and considered again,
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`thereby increasing the work for both Petitioner and Parthenon.
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`The potential for inconsistency would be also heightened because Petitioner
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`would face a higher burden before the District Court of proving the invalidity of
`
`claims 1, 2, 4-7, 9, 10, 12, 13, 15-17 by clear and convincing evidence, as opposed
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`to the lower burden here of a preponderance of the evidence. See 35 U.S.C. §
`
`316(e). Having to overcome a higher burden to get the same result is by definition
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`prejudicial to Petitioner.
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`Consider further that if the Board permits Petitioner to join the HTC IPR,
`
`and the ’045 Patent is upheld in a final decision, Petitioner will be estopped from
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`further challenging the validity of the patent on these grounds, avoiding
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`duplication of Parthenon’s efforts at least as to Petitioner. See 35 U.S.C. §
`
`315(e)(1). Accordingly, to avoid duplicate efforts, the possibility of
`
`inconsistencies, and prejudice to Petitioner, joinder is appropriate.
`
`8
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`E.
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`U.S. Patent No. 7,542,045
`ZTE Motion for Joinder
`
`Because no new grounds are advanced in the Petition, joinder will
`not prejudice Parthenon
`
`Granting joinder and permitting Petitioner to assume the understudy role
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`will not prejudice Parthenon. Petitioner raises no issues that are not already before
`
`the Board, such that joinder would not affect the HTC IPR or the content of
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`Parthenon’s preliminary response, when it becomes due. Petitioner’s understudy
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`role ensures that Parthenon will not suffer any additional costs. Indeed, Petitioner
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`will only assume the role of lead counsel if the Initial Petitioners and Parthenon
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`each reach a settlement agreement. Petitioners have done everything conceivable
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`to minimize the burden on the other parties in the HTC IPR in exchange for the
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`opportunity to be a part of the HTC IPR.
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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. 7,542,045 be granted and that the
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`proceedings be joined with HTC IPR.
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`Although Petitioner believes that no fee is required for this Motion, the
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`Commissioner is hereby authorized to charge any additional fees which may be
`
`required for this Motion to Deposit Account No. 06-0916.
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`9
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`
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`Dated: February 26, 2016
`
`U.S. Patent No. 7,542,045
`ZTE Motion for Joinder
`
`
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`Respectfully submitted,
`
`
`
`
`
`
`
`/Lionel M. Lavenue/
`Lionel M. Lavenue
`Registration No. 46,859
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
`11955 Freedom Dr.
`Two Freedom Square
`Reston, VA 20190
`Tel: 571.203.2700
`Fax: 202.408.4400
`
`COUNSEL FOR PETITIONER ZTE
`USA, Inc.
`
`10
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`
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`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.P.R. §§ 42.6(e) and 42.105(a), this is to certify that I
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`caused to be served a true and correct copy of the foregoing MOTION FOR
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`JOINDER UNDER 37 C.F.R. §§ 42.22 AND 42.122(b) by Federal Express
`
`delivery, on this 26th day of February, 2016 on the Patent Owner at the
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`correspondence address of the Patent Owner as follows:
`
`David V. Carlson
`SEED INTELLECTUAL PROPERTY LAW GROUP PLLC
`701 Fifth Avenue,
`Suite 5400
`Seattle, WA 98104
`
`Alisa Anne Lipski, Esq. (alipski@azalaw.com)
`Amir H. Alavi, Esq. (aalavi@azalaw.com)
`Brian Ervin Simmons, Esq. (bsimmons@azalaw.com)
`Jamie Alan Aycock, Esq. (jamieaycock@azalaw.com)
`Justin Yee-Jin Chen, Esq. (jchen@azalaw.com)
`Kenneth Alan Young, Esq. (kyoung@azalaw.com)
`Kyril Vladimir Talanov, Esq. (ktalanov@azalaw.com)
`Masood Anjom, Esq. (manjom@azalaw.com)
`Michael Dean McBride, Esq. (mmcbride@azalaw.com)
`Scott W Clark, Esq. (sclark@azalaw.com)
`Demetrios Anaipakos, Esq. (danaipakos@azalaw.com)
`AHMAD, ZAVITSANOS, ANAIPAKOS, ALAVI & MENSING P.C.
`3460 One Houston Center
`1221 McKinney Street
`Houston, TX 77010
`
`
`
`
`
`11
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`
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`Dated: February 26, 2016
`
`
`U.S. Patent No. 7,542,045
`ZTE Motion for Joinder
`
`
`
`Respectfully submitted,
`
`
`
`
`
`/Ashley F. Cheung/
`Ashley F. Cheung
`Case Manager
`
`Finnegan, Henderson, Farabow, Garrett &
`Dunner, LLP
`
`
`
`12
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