UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`T-Mobile US, Inc., T-Mobile USA, Inc., TeleCommunication Systems, Inc.,
`Ericsson Inc., and Telefonaktiebolaget LM Ericsson,
`Petitioners,
`
`v.
`
`TracBeam, LLC,
`Patent Owner.
`____________
`
`Case Unassigned
`Patent 7,525,484 B2
`____________
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`Submitted Electronically via the Patent Review Processing System
`
`
`PETITIONERS’ MOTION FOR JOINDER TO RELATED INTER PARTES
`REVIEW OF U.S. PATENT NO. 7,525,484 UNDER 35 U.S.C. § 315(c) AND
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`T-Mobile US, Inc., T-Mobile USA, Inc., TeleCommunication Systems, Inc.,
`Ericsson Inc., and Telefonaktiebolaget LM Ericsson,
`Petitioners,
`
`v.
`
`TracBeam, LLC,
`Patent Owner.
`____________
`
`Case Unassigned
`Patent 7,525,484 B2
`____________
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`Submitted Electronically via the Patent Review Processing System
`
`
`PETITIONERS’ MOTION FOR JOINDER TO RELATED INTER PARTES
`REVIEW OF U.S. PATENT NO. 7,525,484 UNDER 35 U.S.C. § 315(c) AND
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION ........................................................................................... 1
`
`LEGAL STANDARD ..................................................................................... 2
`
`
`
` Applicable Rule ..................................................................................... 2 A.
`
`B.
`
`
`The Board Has Authority to Join the New ’484 Petition ...................... 3
`
`III. RELIEF REQUESTED ................................................................................... 3
`
`IV. STATEMENT OF MATERIAL FACTS ........................................................ 3
`
`V.
`
`PETITIONERS’ MOTION FOR JOINDER IS TIMELY .............................. 6
`
`VI.
`
`JOINDER IS APPROPRIATE ........................................................................ 7
`
`A.
`
`
`B.
`
`
`C.
`
`
`D.
`
`
`Joinder is Appropriate to Alleviate Prejudice to Petitioners and
`so the Board May Consider the Patentability of Claim 25 in
`View of a More Complete Record ........................................................ 7
`
`The New ’484 Petition is Closely Related to IPR2015-01708 ............. 9
`
`Other Panels Have Joined Newly Filed IPRs in Similar
`Circumstances ..................................................................................... 11
`
`Joinder Should Not Materially Affect the Trial Schedule in
`IPR2015-01708, and Will Not Complicate Discovery or
`Briefing ................................................................................................ 13
`
`VII. CONCLUSION ..............................................................................................15
`
`i
`
`
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`T-Mobile US, Inc., T-Mobile USA, Inc., TeleCommunication Systems, Inc.,
`
`Ericsson Inc., and Telefonaktiebolaget LM Ericsson (collectively, “Petitioners”)
`
`respectfully submit this Motion for Joinder, together with a Petition for Inter
`
`Partes Review of Claim 25 of U.S. Patent No. 7,525,484 (the “New ’484
`
`Petition”). Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Petitioners
`
`request institution of inter partes review and joinder with the instituted inter partes
`
`review concerning U.S. Patent No. 7,525,484 (“the ’484 Patent”) in T-Mobile US,
`
`Inc. et al. v. TracBeam, LLC, Case No. IPR2015-01708 (“IPR2015-01708”), which
`
`was instituted on February 8, 2016.
`
`This Petition is justified by several factors, including: (1) the prejudice to
`
`Petitioners caused by Patent Owner’s assertion of an unreasonable number of
`
`claims in the co-pending litigation; (2) recent deposition testimony from Dr.
`
`Dennis Dupray, a named inventor of the ’484 Patent, that was not available when
`
`the Petition in IPR2015-01708 was filed; and (3) the public interest in adjudicating
`
`the validity of a clearly invalid claim and having consistent outcomes concerning
`
`similar sets of claimed subject matter and prior art.
`
`Joinder is appropriate because the New ’484 Petition is closely related to the
`
`petition from instituted proceeding IPR2015-01708. The New ’484 Petition
`
`includes the same parties, the same challenged patent, the same claim construction
`
`
`
`1
`
`
`
`positions, the same expert witness, and the same prior art combination that was
`
`presented in the instituted petition for IPR2015-01708. Moreover, the New ’484
`
`Petition is narrowly tailored because it challenges only one claim, Claim 25. In
`
`addition, the New ’484 Petition uses the same exhibits as IPR2015-01708, with the
`
`only differences being (i) the deposition testimony of a named inventor on the ’484
`
`Patent, Dennis Dupray (Ex. 1027), (ii) an updated declaration by the same expert
`
`used in IPR2015-01708, Dr. Michalson (Ex. 1006), and (iii) other related
`
`Institution Decisions (Exs. 1024-1026).
`
`Petitioners are willing to streamline discovery and briefing in the joined
`
`proceeding. Accordingly, joinder is appropriate because it will not prejudice the
`
`parties, will allow the Board to consider the patentability of Claim 25 in view of a
`
`more complete record, and will promote the efficient resolution of the question of
`
`validity of the ’484 patent in fewer proceedings.
`
`II. LEGAL STANDARD
` Applicable Rule A.
`
`Petitioners rely on 37 C.F.R. § 42.122(b), which states:
`
`(b) Request for joinder. Joinder may be requested by a patent owner
`or petitioner. Any request for joinder must be filed, as a motion under
`§42.22, no later than one month after the institution date of any inter
`partes review for which joinder is requested. The time period set forth
`in §42.101(b) shall not apply when the petition is accompanied by a
`request for joinder.
`
`
`
`2
`
`
`
`The Board Has Authority to Join the New ’484 Petition
`
`B.
`
`“The Leahy-Smith America Invents Act, Publ. L. No. 112-29, 125 Stat. 284
`
`(2011) (“AIA”) permits the joinder of like proceedings.” Enzymotec Ltd. v.
`
`Neptune Tech. & Bioresources, Inc., IPR2014-00556, Paper No. 19 at 3 (July 9,
`
`2014). The Board has authority under 35 U.S.C. § 315(c) to join a properly-filed
`
`subsequent inter partes review petition to an instituted inter partes review
`
`proceeding. Whether to grant joinder is considered “on a case-by-case basis,
`
`taking into account the particular facts of each case, substantive and procedural
`
`issues, and other considerations.” Id. at 4. “A motion for joinder should: (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.” Id.
`
`III. RELIEF REQUESTED
`Petitioners request that the New ’484 Petition be joined with IPR2015-
`
`01708.
`
`IV. STATEMENT OF MATERIAL FACTS
`1. TracBeam, LLC owns U.S. Patent No. 7,525,484 (“the ’484 Patent”). The
`
`’484 Patent contains twelve (12) independent claims and seventy-seven (77) total
`
`claims. (Ex. 1002 (’484 Patent))
`
`2. On August 8, 2014, TracBeam, LLC (“Patent Owner”) filed a suit against
`3
`
`
`
`
`
`Petitioners in TracBeam, LLC v. T-Mobile US, Inc., Case No. 6:14-cv-00678,
`
`pending in the U.S. District Court for the Eastern District of Texas (“the TracBeam
`
`Lawsuit”), which includes the ’484 Patent. TracBeam originally asserted that T-
`
`Mobile infringed 57 Claims of the ’484 Patent. TracBeam also originally asserted
`
`22 claims of the ’153 Patent, 40 claims of the ’231 Patent, and 27 claims of the
`
`’327 Patent.
`
`3. On August 11, 2015, Petitioners filed three separate petitions to address the
`
`asserted Claims of the ’484 Patent: a first ’484 Petition requesting inter partes
`
`review of Claims 1, 2, 6, 24, 25, 51, 71, and 72 of the ’484 Patent (“the First ’484
`
`Petition”); a related Petition challenging Claims 27, 39, and 62 of the ’484 Patent
`
`(“the Second ’484 Petition”); and a third related Petition challenging Claims 64
`
`and 67 of the ’484 Patent (“the Third ’484 Petition”). T-Mobile US, Inc. et al v.
`
`TracBeam, LLC, IPR2015-01708, Paper No. 1; IPR2015-01711, Paper No. 1;
`
`IPR2015-1709, Paper No. 1.
`
`4. Shortly after the IPR Petitions were filed, Patent Owner narrowed the
`
`asserted claims in the TracBeam Lawsuit to only nine claims for the ’484 Patent,
`
`dropping the majority of the asserted claims that Petitioners had challenged in the
`
`three ’484 Petitions.
`
`5. To narrow the issues and streamline the district court litigation, on
`
`November 16, 2015 Petitioners agreed to a Narrowing Agreement, in which Patent
`
`
`
`4
`
`
`
`Owner agreed to limit the issues in dispute in the District Court litigation in
`
`exchange for limiting the issues in Petitioners’ multiple Inter Partes Reviews.
`
`6. Based on this Narrowing Agreement, on November 24, 2015, the parties
`
`filed Joint Motions to Limit Petitions for the First ’484 Petition (IPR2015-1708,
`
`Paper No. 7) and the Second ’484 Petition (IPR2015-01711, Paper No. 6). Also on
`
`November 24, 2015, the parties filed a Joint Motion to Terminate Proceedings the
`
`Third ’484 Petition (Case No. IPR2015-01709, Paper No. 6).
`
`7. On December 1, 2015, the Board granted the parties’ Joint Motions to
`
`Limit Petitions and removed Claims 2, 6, 24, 71, and 72 from the First ’484
`
`Petition, leaving only Claims 1, 25, and 51 at issue (IPR2015-1708, Paper No. 9),
`
`and removed Claims 39 and 62 from the Second ’484 Petition, leaving only Claim
`
`27 at issue (IPR2015-01711, Paper No. 8). The Board further granted the Joint
`
`Motion to Terminate, resulting in the Third ’484 Petition that challenged Claims 64
`
`and 67 being completely terminated (Case No. IPR2015-01709, Paper No. 8).
`
`8. On February 8, 2016, the Board issued a decision instituting inter partes
`
`review of Claim 27 of the ’484 Patent, the only remaining claim in the Second
`
`‘484 Petition (IPR2015-01711, Paper No. 9).
`
`9. Also on February 8, 2016, the Board issued a decision instituting inter
`
`partes review of Claims 1 and 51 of the ’484 Patent in IPR2015-01708 (Paper No.
`
`10) (the “Decision”). In the Decision, the Board declined to institute inter partes
`
`
`
`5
`
`
`
`review of Claim 25. In particular, the Board’s analysis of Claim 25 found that the
`
`prior art did not disclose “wherein neither of the first and second position
`
`information is dependent on the other.” See Decision at 17-20.
`
`10. On February 17, 2016, Dr. Dennis Dupray, a named inventor of the ’484
`
`Patent was deposed in connection with the co-pending litigation. (Ex. 1027.) Part
`
`of his testimony concerned how different location techniques produced location
`
`estimates. Specifically, he explained that prior to TracBeam’s invention, both cell
`
`tower triangulation and GPS techniques often operated independently of the other,
`
`each providing unique location estimates.
`
`11. Because Patent Owner’s deposition testimony was not available at the time
`
`Petitioners filed the First ’484 Petition and the Second ’484 Petition, the Board did
`
`not have an opportunity to consider the relevant evidence it contains how a person
`
`of ordinary skill in the art would understand the operation of a GPS location
`
`technique and a cellular time-of-arrival technique and its relation to the limitations
`
`of Claim 25.
`
`V.
`
`PETITIONERS’ MOTION FOR JOINDER IS TIMELY
`
`This motion is made within one month of the date the trial was instituted in
`
`IPR2015-01708, as required by 37 C.F.R. § 42.122(b). Trial was instituted in
`
`IPR2015-01708 on February 8, 2016, and the instant motion has been filed on or
`
`before March 9, 2016. This Motion for Joinder is therefore timely and the time
`
`
`
`6
`
`
`
`period set forth in 37 C.F.R. § 42.101(b) does not apply to the New ’484 Petition
`
`because it is accompanied by this Motion for Joinder. See 37 C.F.R. § 42.122(b).
`
`VI. JOINDER IS APPROPRIATE
`Petitioners respectfully submit that joinder is appropriate for at least the
`
`reasons described below.
`
`A.
`
`
`Joinder is Appropriate to Alleviate Prejudice to Petitioners and so
`the Board May Consider the Patentability of Claim 25 in View of
`a More Complete Record
`
`This Motion for Joinder is justified by at least three factors. First, Patent
`
`Owner asserted more than 140 claims against petitioner T-Mobile in the co-
`
`pending litigation. At the time Petitioners filed the original IPRs, Patent Owner
`
`was still asserting nearly 80 claims. Patent Owner’s assertion of an unreasonable
`
`number of claims was undoubtedly meant to hinder T-Mobile’s ability to challenge
`
`the asserted claims using the IPR process. By comparison, in Patent Owner’s other
`
`lawsuits that were filed before the current IPR procedures were available, Patent
`
`Owner asserted under 20 claims against each defendant from the outset. Indeed,
`
`due to the large number of asserted claims against T-Mobile, Petitioner was forced
`
`to file 10 petitions selectively challenging a large subset of these claims.
`
`Unsurprisingly, Patent Owner dropped the majority of the asserted claims soon
`
`after Petitioners filed the original IPRs, narrowing to just 15 claims. This
`
`gamesmanship made it unrealistic to proactively address each of Patent Owner’s
`
`
`
`7
`
`
`
`conceivable arguments in the original IPRs.
`
`Second, the only new evidence Petitioners introduce in the New ’484
`
`Petition is deposition testimony of Patent Owner and an updated expert declaration
`
`from the same expert, Dr. Michalson. This information was unavailable to
`
`Petitioners when the First ’484 Petition was filed. The Board thus did not have an
`
`opportunity to consider Patent Owner’s testimony in determining whether to
`
`institute inter partes review with respect to Claim 25.
`
`The testimony is relevant not only to what a person of skill in the art would
`
`recognize as being disclosed by the prior art Loomis reference, but also to what the
`
`inventors of the ’484 Patent considered to be disclosed in the prior art generally.
`
`During his deposition, Dr. Dupray admitted that it was known in the art at
`
`the time of the ’484 Patent that a GPS location technique and a cellular
`
`triangulation technique could each produce independent location estimates of a
`
`mobile device:
`
`Q. Is GPS dependent on cell tower triangulation?
`A. No, sir. It's not -- oh, I don't think so.
`Q. Is cell tower [triangulation] dependent on GPS?
`A. That's a difficult -- that's a difficult question to answer.
`Q. Why?
`A. Because it may or may not be in certain circumstances.
`Q. So cell tower triangulation doesn't have to be dependent on GPS,
`correct?
`
`
`
`8
`
`
`
`A. There may be a version.
`Q. There was a version of cell tower triangulation prior to
`TracBeam's invention that did not involve GPS, correct? . . .
`A. I don't have any in mind right at this time. My belief is there
`probably was. . . .
`Q. So [] prior art techniques did exist prior to your invention that were
`not dependent on each other, correct? . . .
`A. I believe so.
`
`(Ex. 1027 at 332:11 - 333:4, 334:2-12 (emphasis added).)
`
`This testimony illustrates that the prior art teaches the very limitation that
`
`the Board relied on in declining to institute Claim 25 (i.e., “wherein neither of the
`
`first and second position information is dependent upon the other”). (See Ex. 1025
`
`at 19-20.) Dr. Dupray’s testimony confirms the teachings of Loomis and Wortham:
`
`that multiple, independent location techniques can output location estimates of a
`
`mobile station, wherein neither location estimate is dependent on the other.
`
`Third, given that both the prior art and Dr. Dupray’s testimony confirm that
`
`the limitations of Claim 25 were known, and that inter partes review has been
`
`instituted for the other claims of similar scope, it would be against the public’s
`
`interest not to institute inter partes review of this clearly invalid claim. Joining
`
`these two proceedings is therefore just.
`
`The New ’484 Petition is Closely Related to IPR2015-01708
`
`B.
`
`Petitioners respectfully submit that joinder is also appropriate because the
`
`
`
`9
`
`
`
`New ’484 Petition is closely related to IPR2015-01708 and thus there would be no
`
`prejudice to Patent Owner from joinder. The New ’484 Petition involves the same
`
`parties, the same patent, and the same subject matter as IPR2015-01708. Further,
`
`the New ’484 Petition is narrowly-tailored in that it challenges a single claim,
`
`Claim 25. The grounds of invalidity in the New ’484 Petition are the same as those
`
`advanced in IPR2015-01708 (i.e., that Claim 25 is obvious under 35 U.S.C. § 103
`
`over Loomis in view of Wortham). Furthermore, Petitioners are using the same
`
`expert witness in both proceedings, and substantially the same exhibits.
`
`This Petition simply identifies new inventor testimony further demonstrating
`
`the invalidity of Claim 25, and provides further clarification on how the Loomis-
`
`Wortham combination satisfies the claim limitations that the Board relied on in its
`
`prior decision not to institute inter partes review of this claim. The Board has
`
`already confirmed that it would have been obvious to one of ordinary skill in the
`
`art to modify Loomis to provide its terrestrial location capabilities using the
`
`cellular-based location technique taught by Wortham. (See Ex. 1025 at 14 (holding
`
`“Petitioner is reasonably likely to show that a skilled artisan would have combined
`
`Loomis and Wortham.”)). Thus, joinder is appropriate at least because the New
`
`’484 Petition is closely related to IPR2015-01708 with little new evidence, and it is
`
`justified by Patent Owner’s litigation tactics.
`
`
`
`10
`
`
`
`
` Other Panels Have Joined Newly Filed IPRs C.
`Circumstances
`
`in Similar
`
`The Board has previously joined a subsequent IPR petition (filed after the
`
`one-year bar) in which the new proceeding challenges claims that were denied
`
`institution in the earlier proceeding. See Samsung Elecs. Co. Ltd. v. Virginia
`
`Innovation Sciences, Inc., IPR2014-00557, Paper No. 10 (PTAB June 13, 2014).
`
`After the Board denied institution of certain claims, Samsung filed a new petition
`
`on those previously-denied claims. The new petition asserted the same prior art
`
`references relied upon in the original petition, but focused on a different
`
`combination of the previously-asserted references:
`
`[T]he only additional subject matter added by claims 58 and 63
`to the subject matter of the claims for which a trial already has been
`instituted in IPR2013-00571 is HDMI, for which the Petition cites the
`Seaman reference. The relevance of Seaman with respect to HDMI is
`addressed already
`in
`the context of
`trials concerning
`the
`unpatentability of certain claims in related proceedings IPR2013-
`00569. … Accordingly, the minimal additional amount of work
`required on the part of Patent Owner to address claims 58 and 63 of
`the ’398 Patent is strongly outweighed by the public interest in having
`consistency of outcome concerning similar sets of claimed subject
`matter and prior art.
`Samsung, Paper No. 10 at 17-18. As in Samsung, Petitioners here rely on the same
`
`prior art at issue in the original Petition. With respect to this IPR proceeding, the
`
`primary difference from the instituted claims is that Claim 25 requires “for at least
`11
`
`
`
`
`
`one location L…neither of the first and second position information is dependent
`
`upon the other.” As acknowledged in the recent testimony of named inventor
`
`Dennis Dupray, and explained in Dr. Michalson’s expert declaration, this is not a
`
`novel requirement. (See Ex. 1027 at 332:11-333:4, 334:2-12; Expert Decl. §
`
`IX.G.3.) Further, both Loomis and Wortham teach this very limitation.
`
`Location techniques that provide independent position results, such as GPS
`
`and ground-based techniques, have been known for decades. (Expert Decl. §
`
`VII.B.) Petitioners
`
`respectfully contend
`
`that Loomis discloses multiple
`
`embodiments, including both dependent and independent location techniques. For
`
`example, Loomis acknowledges that, in an embodiment known in the prior art
`
`Kelley patent that is incorporated by reference in Loomis, the radio LD system can
`
`determine the phase differences using a stationary FM signal monitor (rather than
`
`using the outdoor LD system). See (Ex. 1008 (Loomis) at 4:62-65, 11:6-15, 10:49-
`
`55). In those embodiments, the radio LD system would not rely on the outdoor LD
`
`system for the radio LD phase measurements, and thus the radio and outdoor LD
`
`systems would each determine locations independently from each other.
`
`Nonetheless, Wortham unambiguously discloses a cell-tower location
`
`technique that generates a location estimate which does not depend on any
`
`satellite-based position information. (Ex. 1009 (Wortham) at 14:3-12.) The
`
`relevance of Wortham with respect to a time-of-arrival technique that produces an
`
`
`
`12
`
`
`
`independent location estimate has already been discussed by the Board in a related
`
`proceeding. Specifically, the Board stated that Wortham “describes that TOA
`
`data may be used to compute pseudoranges, which are then used to compute a
`
`position fix of the mobile unit.” (Ex. 1024 (Institution Decision from IPR2015-
`
`01681) at 18-19 (emphasis added).) As explained in greater detail in Section
`
`VIII.D.6 of the attached Petition, Wortham’s time-of-arrival positioning technique
`
`calculates a location of a mobile station independently of a GPS technique.
`
`Because this Petition concerns the same patent, the same prior art
`
`combinations, the same claim constructions, the same expert witness, and nominal
`
`additional subject matter, “the minimal additional amount of work required on the
`
`part of the Patent Owner to address [Claim 25] is strongly outweighed by the
`
`public interest in having consistency of outcome concerning similar sets of claimed
`
`subject matter and prior art.” See Samsung, IPR2014-00557 at 18.
`
`D.
`
`
`Joinder Should Not Materially Affect the Trial Schedule in
`IPR2015-01708, and Will Not Complicate Discovery or Briefing
`
`Petitioners have shown good cause for joining this proceeding. The two
`
`proceedings involve the same parties, the same patent, and identical prior art
`
`references. The Petitions are substantially similar, including, for example, the
`
`discussions regarding the technology at issue in the ’484 Patent, claim
`
`construction, the prior art, and much of the claim analysis. The declaration
`
`evidence is nearly identical to that in IPR2015-01708, and what little new material
`
`
`
`13
`
`
`
`is included in the expert declaration relates to Patent Owner’s deposition
`
`testimony, other embodiments in Loomis, and portions of Wortham the Board has
`
`found persuasive in related proceedings. Thus, joinder of one additional claim,
`
`challenged using the same prior art, will not unduly complicate these proceedings.
`
`Further, joinder will not unduly delay the proceedings or otherwise prejudice
`
`Patent Owner. The following example schedule would allow both petitions to be
`
`heard at the oral argument scheduled on November 8 and 9:
`
`Event
`Filing Date
`
`IPR2015-01708
`August 11, 2015
`
` New ’484 Petition
`March 8, 2016
`
`PO Preliminary Response November 16, 2015
`
`May 9, 2016
`
`Institution Date
`
`February 8, 2016
`
`TBD
`
`Patent Owner Response May 9, 2016
`
`October 3, 2016
`
`Petitioners Reply
`
`August 8, 2016
`
`October 17, 2016
`
`Oral Argument
`
`November 8-9, 2016
`
`November 8-9, 2016
`
`Given that the issues are almost identical to those in IPR2015-01708, Patent
`
`Owner should have no issue submitting its preliminary response on May 9, 2016
`
`(the same day its response is due in IPR2015-01708). Under the rules, the Board
`
`would then have until August to determine whether to institute a trial on Claim 25.
`
`Given the similarity of the New ’484 Petition to IPR2015-01708, Patent Owner
`
`should not need much time to prepare its Response to the New ’484 Petition, and
`
`
`
`14
`
`
`
`
`
`therefore Petitioners propose October 3, 2016 for such Response. Petitioners are
`
`willing to file their Reply by October 17, 2016, so long as Patent Owner makes any
`
`declarant available for deposition immediately after. This would allow the joined
`
`proceedings to have the same oral argument date of November 8-9, 2016.
`
`The above is merely a proposal, and Petitioners are willing to be flexible
`
`with Patent Owner to arrive at a mutually agreeable schedule that allows for
`
`joinder. Petitioners are willing to streamline discovery and briefing in the joined
`
`proceeding, such that joinder will not unduly delay the proceedings or otherwise
`
`prejudice Patent Owner in any discernable way. For example, Petitioners are
`
`willing to extend the deadline for Patent Owner to file its Patent Owner Response
`
`in IPR2015-01708 (currently set for May 9, 2016). Petitioners are also willing to
`
`forfeit a reasonable portion of its response period if necessary to provide Patent
`
`Owner with sufficient time to address the additional issue in the New ’484 Petition.
`
`VII. CONCLUSION
`For at least these reasons, joinder is appropriate. Petitioners respectfully
`
`request that the Board join the New ’484 Petition with IPR2015-01708.
`
`DATED: March 8, 2016
`
`
`
`
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`Respectfully submitted,
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`/Brian W. Oaks/
`Brian W. Oaks
`Reg. No. 44,981
`BAKER BOTTS LLP
`Counsel for Petitioners
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that, pursuant to 37 C.F.R. §§ 42.6(e) and
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`42.105(b), the Patent Owner has been served with a copy of this Petition for Inter
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`Partes Review and supporting materials at the correspondence address of record for
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`the ’484 Patent:
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`DATED: March 8, 2016
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`Dennis Dupray
`1801 Belvedere Dr.
`Golden, CO 80401
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`Respectfully Submitted,
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`/Brian W. Oaks/
`Brian W. Oaks
`Reg. No. 44,981
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`16
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