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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ZTE USA, Inc.
`Petitioner
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`V.
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`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC
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`Patent Owner
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`Case IPR2016-00667
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`Patent No. 7,542,045
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`ZTE’S REPLY TO PATENT OWNER’S OPPOSITION TO PETITIONER’S
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`MOTION FOR JOINDER
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`
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`Case IPR20l6-00667
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`Patent No. 7,542,045
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`Patent Owner’s true reason for opposing ZTE’s joinder request is to gain an
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`inequitable advantage over ZTE. Patent Owner does not dispute that j oinder would
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`conserve the resources of the Board, Patent Owner, and Petitioner, or that the
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`Board has discretion to “waive or suspend a requirement [of the rules],” including
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`37 C.F.R. § 42.l22(b). Instead, Patent Owner argues that the rules should apply
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`with absolute formalism—hiding its true motive to keep ZTE out of the proceeding
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`at the PTAB but also bind ZTE to the PTAB proceeding’s outcome. Such a result
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`would be unjust given the short delay (caused by a change in counsel) and that
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`ZTE was within its statutory timeframe to file its own petition within a year from
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`service of the complaint.
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`1.
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`PATENT 0WNER’S RE UESTS ARE INE UITABLE
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`Petitioner merely requests that the Board grant its request as an understudy
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`to avoid duplicative proceedings, and does not raise or introduce any additional
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`arguments, briefing, or need for discovery. Patent Owner, however, inexplicably
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`requests that (1) Petitioner not be joined with the HTC IPR; (2) Petitioner’s IPR
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`not be instituted; and (3) Petitioner agrees to be estopped from asserting arguments
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`used in the HTC IPR at the district court. Patent Owner’s requests are unjust, and
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`Patent Owner cannot have it both ways.
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`If Petitioner cannot join the HTC IPR, and its Petition is not instituted, then
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`Petitioner will not be estopped from asserting arguments from the HTC IPR at the
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`Case IPR2016-00667
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`Patent No. 7,542,045
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`district court. Mindful of this, during a Meet and Confer associated with the
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`underlying litigation, Patent Owner nevertheless requested that Petitioner agree to
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`waive any arguments brought in the HTC IPR proceedings. Asking for waiver in
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`lieu of estoppel, while opposing Petitioner’s participation in IPR proceedings,
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`shows Patent Owner’s true motive.
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`The requested determination by the Board will directly impact whether the
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`underlying litigation in the Eastern District of Texas will be stayed. “District
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`courts typically consider .
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`.
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`. whether the stay will likely result in simplifying the
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`case before the court.” NFC Tech. LLC v. HTCAm., Inc., No. 2: 13-cv-1058-WCB,
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`2015 WL 1069111, at *2 (E.D. Tex. Mar. 11, 2015) (Bryson, J.) (citing Lennon
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`Image Techs., LLC v. Macy's Retail Holdings, Inc., No. 2: 13—cv—235, 2014 WL
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`4652117, at *2 (E.D. Tex. Sept. 17, 2014) (Gilstrap, J.)). “Congress intended to
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`place ‘a very heavy thumb on the scale in favor of a stay being granted,
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`since
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`737
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`“inter partes review was intended to provide a ‘faster, less costly altemative[] to
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`civil litigation to challenge patents.”’ Id. at *5 (quoting Sen. Chuck Grassley).
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`Furthermore, Judge Gilstrap is reluctant to grant stays unless a defendant will be
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`bound by estoppel, See, e.g., Vz'rtuaZAgz'Zz'ly Inc. v. Salesforcecom, Inc., 759 F.3d
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`1307 (Fed. Cir. 2014) (where the Circuit Court reversed the United States District
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`Court for the Eastern District of Texas, J. Rodney Gilstrap, J., 2014 WL 94371, for
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`denying a request for a stay pending PTAB review). With this in mind, Petitioner
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`Case IPR2016-00667
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`Patent No. 7,542,045
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`strongly urges the Board to allow Petitioner to assume an understudy role in the
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`aforementioned proceedings in the interest ofjustice.
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`2.
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`PETITIONER’S DELAY DOES NOT CAUSE HARM
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`Joining these proceedings with the prior HTC IPR will cause absolutely no
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`delay in the proceedings, and will not prejudice any party. The HTC IPR was
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`instituted on January 6, 2016. Petitioner filed its motion to join on February 26,
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`2016, only 20 days after the one month deadline under 37 C.F.R. § 42.122.
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`Petitioner’s change of counsel was the cause for the delay, and Petitioner’s new
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`counsel was not retained until well after the February 6, 2016 deadline. The
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`moment Petitioner’s current counsel was hired, counsel worked diligently and with
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`urgency to prepare and file the instant IPR Petition and motion for joinder as soon
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`as was reasonably practicable. Petitioner’s current counsel also replaced previous
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`counsel in the underlying litigation in the U.S. District Court for the Eastern
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`District of Texas on March 2, 2016, which was also after the February 6 deadline.
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`The chart below shows the timeline of the current IPR proceedings.
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`
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`No.
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`Sarnsung
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`’753
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`HTC, LG, and
`Sarnsung
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`June 24, 2015
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`Sarnsung
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`’ 3 68
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`ZTE
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`’045
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`ZTE
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`’ 753
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`ZTE
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`February 26,
`2016
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`February 26,
`2016
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`N/A
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`February 26,
`2016
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`N/A
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`Case IPR2016-00667
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`Patent No. 7,542,045
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`Instituted
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`2016
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`January 6,
`2016
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`2016
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`N/A
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`Response filed
`on 4/6/2016
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`Patent Owner
`Response filed
`on 4/6/2016
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`Response filed
`on 4/6/2016
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`Awaiting
`decision on
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`motion to 'oin
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`Awaiting
`decision on
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`motion to 'oin
`
`Awaiting
`decision on
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`motion to 'oin
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`01500
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`IPR2015-
`01501
`
`01502
`
`IPR20 l 6-
`01666
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`IPR20 l 6-
`01667
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`IPR20 l 6-
`01670
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`Petitioner respectfully submits that 37 C.F.R. § 42.122 was designed to be
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`equitable in nature and ensure a just and speedy resolution of these types of cases,
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`and thus respectfully requests that the Board use its discretion to permit j oinder
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`rather than allow for the possibility of another IPR proceeding.
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`Moreover, Patent Owner’s assertion that Petitioner does not provide
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`reasonable bases that would justify an exercise of discretion by the Board could not
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`be farther from the truth. In fact, if granted an understudy role, Petitioner offers to
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`jettison additional IPR proceedings on the same patent asserting the same
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`grounds—thus assisting with the speedy and inexpensive resolution of the
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`proceedings.
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`Case IPR2016-00667
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`Patent No. 7,542,045
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`If allowed to join the proceedings, Petitioner will not file additional
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`submissions, pose questions at depositions or oral hearing without prior
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`permission, and only seek to become active in the IPR proceeding in the event that
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`at least one of the Initial Petitioners settle.
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`For the foregoing reasons, Petitioner respectfully requests that the
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`proceedings be joined with the HTC IPR.
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`Dated: April 16, 2016
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`Respectfully submitted,
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`/Lionel M. LaVenue/
`
`Lionel M. Lavenue
`
`Registration No. 46,859
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`11955 Freedom Dr.
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`Two Freedom Square
`Reston, VA 20190
`Tel: 571.203.2700
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`Fax: 202.408.4400
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`COUNSEL FOR PETITIONER
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`ZTE USA, Inc.
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`CERTIFICATE OF SERVICE
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`Case IPR2016-00667
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`Patent No. 7,542,045
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`The undersigned hereby certifies that a copy of the foregoing ZTE’s Reply
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`to Patent Owner’s Opposition to Petitioner’s Motion for Joinder was served on
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`April 16, 2016, Via email directed to counsel of record for the Patent Owner at the
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`following:
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`Masood Anj om
`Registration No. 62,167
`manj om@azalaw.com
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`Amir Alavi
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`Pending Pro Hac Vice Motion
`aalaVi@azalaW.com
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`Scott Clark
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`Registration No. 51,251
`sclark@azalaw.com
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`Michael McBride
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`Pending Pro Hac Vice Motion
`mmcbride@azalaw.com
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`AHMAD, ZAVITSANOS, ANAIPAKOS, ALAVI & MENSING P.C.
`1221 McKinney, Suite 2500
`Houston, TX 77010
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`Dated: April 16, 2016
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`/Ashley F. Cheung/
`Ashley F. Cheung
`Case Manager
`
`FINNEGAN, HENDERSON, FARABOW,
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`GARRETT & DUNNER, LLP