`By: P. Andrew Riley
`Christopher Johns
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, L.L.P.
`901 New York Avenue, NW
`Washington, DC 20001–4413
`Telephone: 202-408-4000
`E–mail:
`Qurio904-IPR@finnegan.com
`
`
`
`Jonathan Stroud
`Unified Patents Inc.
`1875 Connecticut Ave. NW, Floor 10
`Washington, D.C., 20009
`Telephone: 202-805-8931
`E-mail:
`jonathan@unifiedpatents.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________________
`
`UNIFIED PATENTS, INC.
`Petitioner
`
`v.
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`QURIO HOLDINGS, INC.
`Patent Owner
`___________________________________________
`
`IPR2016-00998
`Patent 7,787,904
`Seeking to Party Join IPR2015-02005
`
`___________________________________________
`
`MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`IPR2016-00998
`Patent 7,787,904
`Motion for Joinder
`
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`Under 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Petitioner Unified
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`Patents Inc. requests silent party joinder with the recently instituted Inter Partes
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`Review of U.S. Patent No. 7,787,904 (the “’904 patent”) in DirecTV, LLC v. Qurio
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`Holdings, Inc., IPR2015-02005 (the “DirecTV IPR”). The original petitioners have
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`taken no position on Unified’s joinder request at this time. Qurio Holdings, LLC
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`opposes. This motion is timely because it is filed no later than one month after
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`institution of the DirecTV IPR, which the Board instituted on April 4, 2016.
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`IPR2015-02005, Paper 9 (Apr. 4, 2016); 37 C.F.R. §42.122(b).
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`Unified requests institution of its concurrently filed Petition for Inter Partes
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`Review and silent party joinder to the instituted proceeding. Unified’s Petition is a
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`near copy of the original DirecTV IPR petition in all material respects. Unified seeks
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`to add no new substance, arguments, or exhibits to the dispute. In its petition,
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`Unified copied sections IV to VII of the DirecTV IPR—the substantive sections.
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`Unified made changes to sections I to III and VII to identify the correct petitioner
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`and the petitioner’s wish for joinder, to supply the mandatory notices required by 37
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`C.F.R. § 42.8(b), and to comply with the new word-count requirement under 37
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`C.F.R. § 42.24 et seq. Unified’s petition and the DirecTV IPR petition challenge the
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`same claims of the ’904 patent on the same grounds, relying on the same prior art
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`IPR2016-00998
`Patent 7,787,904
`Motion for Joinder
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`and evidence, and includes declarations identical in substance to those submitted in
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`the DirecTV IPR petition. Unified agrees to proceed solely on the grounds,
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`evidence, and arguments advanced, or that will be advanced, in the DirecTV IPR as
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`instituted, and agrees to a silent, subordinate role in those proceedings. Unified is in
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`the process of seeking to retain the expert from the original proceeding. Thus, the
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`petition warrants institution under 35 U.S.C. § 314, and 35 U.S.C. § 315(c) permits
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`(and encourages) Unified’s joinder to the DirecTV IPR.
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`If joined, Unified agrees to subordinate itself with a silent role, requesting no
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`briefing or participation in depositions or the oral argument absent settlement by the
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`original petitioners, thus allowing the original petitioners to lead the joined
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`proceedings, in line with common Board practice. Thus, joinder with the DirecTV
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`IPR would have almost no effect on either procedure or substance.
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`Further, Unified Patents Inc. has been instituted into IPR2016-01940 on a
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`related patent also owned by Qurio, who is represented by the same counsel, on a
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`similar schedule, before the same Board panel. To the extent there are any facts
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`relevant to any procedural issues raised here, such as a real party-in-interest
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`challenge, that have not already been timely raised or are not based on facts
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`redundant in the other proceeding, Unified agrees to stipulate to being bound in this
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`IPR2016-00998
`Patent 7,787,904
`Motion for Joinder
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`IPR to any procedural decisions made in IPR2016-01940, and submits additional
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`voluntary discovery here.
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`Unified believes that the vast majority of relevant information between this
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`IPR and IPR2016-01940 will be the same, but has nonetheless filed updated
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`voluntary discovery. (We note that Qurio has not asked for any additional discovery
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`in instituted IPR2016-01940 or the denied IPR2016-01991 based on the same patent
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`at issue here, either from Unified or from the Board.) These actions eliminate the
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`possibility that joinder would complicate the issues if joined or might contribute to
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`delay.
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`Without joinder, if both the DirecTV IPR and Unified IPR are instituted on
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`identical grounds, the two proceedings would go forward on a similar schedule but
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`as two separate proceedings. Both the Patent Owner and the Board would need to
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`duplicate efforts, and both Unified and the original petitioners may be prejudiced by
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`inconsistent arguments and decisions. And a denial of joinder and denial of
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`institution would prejudice Unified Patents, as it would lose the not insignificant
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`filing fee and would lose its opportunity to timely resolve the patentability of the
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`patent in question.
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`Joinder will not unduly prejudice any party. The original petitioners have
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`taken no position on Unified’s joinder at this time, but have filed two similar
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`4
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`IPR2016-00998
`Patent 7,787,904
`Motion for Joinder
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`petitions and motions to join days ago, on related patents.) Because joinder will not
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`add any new substantive issues, delay the schedule, burden deponents, or increase
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`needless filings, any additional costs on the Patent Owner would be minimal.
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`On the other hand, denial of joinder would prejudice Petitioner. Its interests
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`may not be adequately protected in the DirecTV IPR, particularly if the original
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`petitioners settle with the Patent Owner.
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`II. BACKGROUND AND RELATED PROCEEDINGS
`A. Related Proceedings
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`Patent Owner Qurio Holdings, Inc., asserted the ’904 patent against a number
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`of companies: Qurio Holdings, Inc. v. DirecTV, LLC, No. 3-15-cv-01986 (N.D. CA
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`May 4, 2015) and Qurio Holdings, Inc. v. Dish Network Corp., et al., No.
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`3-15-cv-00930 (N.D. CA, Feb. 27, 2015). In addition to the DirecTV IPR, the Board
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`instituted inter partes review in IPR2016-00007, Dish Network, LLC v. Qurio
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`Holdings, LLC, on April 4, 2016, and in IPR2016-00080, on April 24, 2016. On May
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`1, 2016, DirectTV itself filed IPR2016-00993 and IPR2016-00994, seeking to join
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`Dish network’s IPR2016-00005 and IPR2016-00080, respectively.
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`A. Legal Standard
`The Board has discretion to join a properly filed IPR petition to an IPR
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`proceeding, particularly where the parties seek to add new substantive issues or
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`IPR2016-00998
`Patent 7,787,904
`Motion for Joinder
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`join a proceeding once they are barred from filing their own independent petition.
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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. & Dev.
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`Co. of the Hebrew Univ. of Jerusalem, IPR2013-00326, Paper 15, at 3-4; Microsoft
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`Corp. v. Proxyconn, Inc., IPR2013-00109, Paper 15, at 3-4. The Board decides
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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
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`issues, and other considerations.” Dell,
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`IPR2013-00385, Paper 19, at 3. The movants bear the burden of proof in
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`establishing entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). A
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`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.
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`Dell, IPR2013-00385, Paper 19, at 4.
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`As a seven-member panel noted in Target Corporation v. Destination
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`Maternity Corp., IPR2014-00508, Paper 28 (Feb. 12, 205), during the Senate’s
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`March 2011 debates on the AIA, Senator Kyl explained that the Senate encouraged
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`the USPTO to allow liberal “identical petition” party joinder: “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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`6
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`IPR2016-00998
`Patent 7,787,904
`Motion for Joinder
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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.” 157 Cong. Rec. S 1376 (daily ed. Mar.
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`8, 2011) (statement of Sen. Kyl) (emphasis added).
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`B.
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`Joinder Is Appropriate Because It Will Not Add Any New
`Grounds of Unpatentability Or Have An Impact On The
`Procedural Schedule
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`Unified’s Petition asserts the same grounds and combinations of prior art and
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`evidence that the Board considered in deciding whether to institute the DirecTV
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`IPR. To simply issues and for efficiency, Unified’s petition copies the substance of
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`the petition in IPR2015-02005 and declaration. Unified does not seek to reintroduce
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`any grounds or claims not instituted in the DirecTV IPR or elsewhere and seeks only
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`to join the proceeding as instituted. The Patent Owner should not require any
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`discovery beyond that which it may need in the DirecTV IPR—nor should the Board
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`permit any. Unified’s Petition presents no new substantive issues relative to the
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`DirecTV IPR and does not seek to broaden the scope of the DirecTV IPR.
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`For efficiency, Unified will voluntarily:
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`1. Adhere to all applicable deadlines in the DirecTV IPR;
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`2. Submit “consolidated” filings with the original petitioners, as set forth
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`above in the statement of precise relief requested, with DirecTV drafting, arguing,
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`and leading such filings;
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`7
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`IPR2016-00998
`Patent 7,787,904
`Motion for Joinder
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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 original petitioners remain in the
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`proceeding.
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`These limitations are consistent with the great majority of previously granted
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`joinder motions. See, e.g., Enzymotech Ltd. v. Neptune Techs., IPR2014-00556,
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`Paper 19 (July 9, 2014) (agreeing to procedural concessions, such as “consolidated”
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`responses); Gillette Co. v. Zond, IPR2014-01016, Paper 13 (Nov. 10, 2014) (same);
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`SAP Am. Inc. v. Clouding IP, LLC, IPR2014-00306, Paper 13 (May 19, 2014)
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`(same).
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`This request is also similar to those where other third parties that have been
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`joined to ongoing proceedings. For example, in Black Swamp IP, LLC v. VirnetX
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`Inc., IPR2016-00167, the PTAB instituted joinder of third-party Black Swamp IP,
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`LLC to an ongoing IPR filed by Mangrove Partners Master Fund, Ltd.,
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`IPR2015-01047. On February 4, 2016, the Board granted the opposed joinder
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`motion, finding that, despite different arguments in the petitions, different analyses,
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`a lack of expert opinion, and nine previous IPR challenges, joinder was appropriate.
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`See IPR2016-00167, Paper 12, at 4–7.
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`8
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`IPR2016-00998
`Patent 7,787,904
`Motion for Joinder
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`Here, Unified’s joinder posture goes further to ease the burden on the Board
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`and the parties. Unified has presented the identical arguments, the identical analyses,
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`and the patent has only been the subject of a handful of challenges, all related to the
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`parties at hand. Voluntarily, Unified has agreed to multiple procedural expedients
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`not found in the Black Swamp IP situation. And Unified is already a party to a
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`related proceeding on a related patent.
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`Furthermore, any discovery or challenges with respect to real party-in-interest
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`should have no impact on the schedule. Unified will take the supplementary measure
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`of stipulating to be bound here by any procedural decision on real party-in-interest
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`made in a related ongoing proceeding between the same parties, on before the same
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`panel, on a patent in the same family. Unified has been instituted into
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`IPR2016-01940 on a related patent also owned by Qurio. Unified stipulates that it
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`will be bound by any decision on real party-in-interest in that IPR that has been
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`timely raised.
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`To the extent Qurio argues that there may be facts relevant only to this patent
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`and this IPR joinder that would complicate the issue, Unified again submits updated
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`voluntary discovery in the form of interrogatory responses, attesting to the fact that
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`Unified has had no communication with any members concerning the instant patent,
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`9
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`IPR2016-00998
`Patent 7,787,904
`Motion for Joinder
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`IPRs, or strategy, and that Unified has and will continue to maintain sole and
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`independent control and discretion throughout this proceeding. See Ex. 1027.
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`These additional measures thus result in no delay and no additional issues
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`here, thus eliminating the possibility that joinder would not vastly simply the issues
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`or might contribute to delay. Joinder here will not affect the trial schedule because of
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`these voluntary concessions by Unified.
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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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`Unified presents identical arguments and supporting evidence as the DirecTV
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`IPR. Joinder here will simplify briefing and discovery. Given that the DirecTV IPR
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`and Unified’s Petition address the same prior art and grounds for rejection of the
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`same claims, joining these proceedings allows for joint submissions and discovery,
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`further streamlining the proceedings. This should promote efficiency and conserve
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`the Board’s and the parties’ resources.
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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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`10
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`IPR2016-00998
`Patent 7,787,904
`Motion for Joinder
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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.”)).
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`Because Unified seeks institution solely on the grounds, evidence, and
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`arguments advanced, or that will be advanced, in the DirecTV IPR, institution is
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`warranted under 35 U.S.C. § 314 and Petitioner’s joinder to the DirecTV 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 schedule,
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`briefing, or discovery in the DirecTV IPR, and the remaining equities compel
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`joinder.
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`Unified is filing this Petition and joinder motion to ensure that the trial is
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`completed in the event that the original petitioners reach settlement with Patent
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`Owner.
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`E. Without Joinder, Unified May be Prejudiced
`Unified may be prejudiced if it is not permitted to join in the DirecTV IPR.
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`Unified was founded to deter NPE litigation on patents of questionable merit,
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`protecting technology sectors like content delivery, the technology at issue in the
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`’904 patent, by challenging the merits of NPE patents that it believes are
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`unpatentable. In keeping with its purpose, Unified filed an IPR challenging all
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`claims of the ’904 patent on the same exact grounds as the original petition. Because
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`11
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`IPR2016-00998
`Patent 7,787,904
`Motion for Joinder
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`the Board instituted IPR on all of the grounds presented in the DirecTV IPR and
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`because Unified is not barred by statute from seeking review of the ’904 patent,
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`Unified requests that IPR be instituted on the same grounds and that the Board join
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`the two proceedings.
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`If joinder is not granted and the two IPRs proceed separately but in parallel,
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`there is a risk of inconsistent positions or decisions. With different schedules,
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`Unified as the trailing party may be further prejudiced in that arguments or positions
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`taken in the leading IPR may affect those in Unified’s trailing IPR. Should the
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`petition be denied, Unified will be prejudiced through the loss of its filing fees, the
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`loss of timing for its challenge, and a hindered ability to effectively deter NPE
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`activity.
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`Joining the two proceedings would be the most efficient way of handling an
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`IPR on the ’904 patent, while allowing both the original petitioners and Unified to
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`participate in the consolidated filings, thus preventing either party from being
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`prejudiced.
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`F.
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`Joinder Is Unopposed by Petitioner and Will Not Prejudice Any
`Party
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`The original Petitioner has not opposed Unified’s joinder request, taking no
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`position on the joinder at this time. (Unified notes that original Petitioner DirectTV
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`filed two similar petitions and motions to join days ago, on related patents.) Unified
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`12
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`IPR2016-00998
`Patent 7,787,904
`Motion for Joinder
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`filed its IPR Petition within one month of the Board’s decision to institute IPR.
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`Unified’s Petition raises issues already before the Board and long known to the
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`Patent Owner. Joining Unified’s petition with the DirecTV IPR, well on its way
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`towards a final determination, serves the parties’ and Board’s interests.
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`Permitting joinder will not prejudice the Patent Owner, and in fact will inure
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`to its benefit. Without joinder, should Unified’s petition be granted, the Patent
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`Owner would need to submit filings in two proceedings which, even if copies of
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`each other, would require some additional time, money, and effort. Without the
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`guarantee of joined depositions of the experts, the Patent Owner would incur the
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`expense of duplicate depositions. Granting joinder will bind Unified to the decisions
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`of the Board and resolve the dispute between the parties here. Denial would leave
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`those issues unresolved and lead to further complication and waste. Thus, joining the
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`proceedings would be more convenient for the Patent Owner. Addressing patent
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`validity in a single proceeding with a statutory deadline serves the parties’ and
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`Board’s interests.
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`IV. CONCLUSION
`Joinder will not affect the substance, procedure, or scheduling of the DirecTV
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`IPR. Unified files this motion under the statutory joinder provisions as contemplated
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`by the AIA. Joinder will simplify the issues and promote efficiency, justice, and
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`13
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`IPR2016-00998
`Patent 7,787,904
`Motion for Joinder
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`speed. Unified thus requests IPR on U.S. Patent No. 7,787,904 and joinder with
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`DirecTV, LLC v. Qurio Holdings, Inc., IPR2015-02005.
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`Respectfully submitted,
`By: /P. Andrew Riley/
`P. Andrew Riley, Reg. No. 66,290
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, L.L.P.
`901 New York Ave, NW
`Washington, DC, 20001
`Telephone: 202.408.4000
`Facsimile: 202.408.4400
`Email: Qurio904-IPR@finnegan.com
`
`
`
`
`
`Jonathan Stroud
`Unified Patents Inc.
`1875 Connecticut Avenue, NW, Floor 10
`Washington, DC 20009
`Telephone: 202-805-8931
`E-mail: jonathan@unifiedpatents.com
`ATTORNEYS FOR PETITIONER
`UNIFIED PATENTS, INC.
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`Dated: May 4, 2016
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`IPR2016-00998
`Patent 7,787,904
`Motion for Joinder
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`CERTIFICATE OF SERVICE
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`
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`The undersigned certifies service pursuant to 37 C.F.R. § 42.6(e) Express
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`Mail of a true and correct copy of this MOTION FOR JOINDER UNDER 37
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`C.F.R. §§ 42.22 AND 42.122(b) on May 4, 2016, on counsel for the Patent Owner
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`at the correspondence addresses below:
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`FlashPoint Technology and Withrow & Terranova
`106 Pinedale Springs Way
`Cary NC 27511
`
`Kirk A. Vander Leest
`kvanderleest@mcandrews-ip.com
`James P. Murphy
`jmurphy@mcandrews-ip.com
`Sharon Ann Hwang
`shwang@mcandrews-ip.com
`McAndrews, Held & Malloy, P.C.
`Northwestern Atrium Center
`500 West Madison Street, Suite 3400
`Chicago, IL 60661
`
`Joseph V. Mauch
`jmauch@sflaw.com
`Richard F. Munzinger
`rmunzinger@sflaw.com
`Shartsis Friese LLP
`One Maritime Plaza, 18th Floor
`San Francisco, CA 94111
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`IPR2016-00998
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`Patent 7,787,904
`Motion for Joinder
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`5/; Lauren K“. Yo 11
`Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
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`GARRETT & DUNNER, L.L.P.