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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________
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`SAMSUNG ELECTRONICS CO., LTD., AND
`SAMSUNG ELECTRONICS AMERICA, INC.,
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`Petitioners,
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`V.
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`EVOLVED WIRELESS LLC,
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`Patent Owner
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`_____________________
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`Case IPR2017-00106
`Patent 8,218,481
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`_____________________
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`PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION FOR JOINDER
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`TABLE OF CONTENTS
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`Page
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`TABLE OF CONTENTS ........................................................................................... i
`I.
`Introduction ...................................................................................................... 1
`II.
`Statement of Material Facts .............................................................................. 1
`III. The Board Should Deny Petitioner’s Motion Because Petitioner
`Already Elected Grounds in IPR2016-01342 .................................................. 3
`A.
`Legal Standard ....................................................................................... 3
`B.
`Petitioner Has Failed to Meet Its Burden of Setting Forth the
`Reasons that Joinder Is Appropriate ..................................................... 4
`IV. The Board Should Deny Petitioner’s Motion as to Ground 2, Claims 4
`and 2, Because the Board Did Not Institute Those Grounds in
`IPR2016-00758 ................................................................................................ 5
`A.
`Petitioner’s Grounds for Instituting Claims 4 and 11 Are
`Identical to Rejected Grounds in the Underlying Petition .................... 5
`Petitioner Has Failed to Meet Its Burden of Setting Forth the
`Reasons that Joinder Is Appropriate with Respect to Ground 2,
`Claims 4 and 11 ..................................................................................... 6
`V. Conclusion ........................................................................................................ 8
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`B.
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`i
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
`Bungie, Inc., v. Acceleration Bay, LLC,
`IPR2015-00567, Decision Granting Motion for Joinder in Part,
`Paper 11 (PTAB July 7, 2016) .............................................................................. 3
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`Ciena Corp., et al. v. Capella Photonics, Inc.,
`IPR2015-00894, Decision Granting Motion for Joinder,
`Paper 12 (PTAB Sept. 22, 2015) .......................................................................... 7
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`Ciena Corp., et al. v. Capella Photonics, Inc.,
`IPR2015-01958, Decision Granting Motion for Joinder,
`Paper 11 (PTAB Apr. 1, 2016) ............................................................................. 7
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`Dell Inc. v. Network-1 Security Solutions, Inc.,
`IPR2013-00385, Decision Granting Motion for Joinder,
`Paper 17 (PTAB July 29, 2013) ............................................................................ 7
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`Dot Hill Systems Corp. v. Crossroads Systems, Inc.,
`IPR2015-00822, Decision Granting Motion for Joinder in Part,
`Paper 18 (PTAB Sept. 17, 2015) .......................................................................... 8
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`Ion Geophysical Corp. and Ion Int’l S.A.R.L. v. Westerngeco LLC,
`IPR2015-00567, Decision Granting Motion for Joinder in Part,
`Paper 14 (PTAB Apr. 23, 2015) ........................................................................... 8
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`LG Electronics, Inc. v. ATI Technologies ULC,
`IPR2015-01620, Decision Denying Motion for Joinder,
`Paper 10 (PTAB Feb. 2, 2016) ............................................................................. 3
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`Mylan Pharmaceuticals Inc. v. Novartis AG, et al.,
`IPR2015-00265, Decision Granting Motion for Joinder,
`Paper 17 (PTAB Apr. 10, 2015) ........................................................................... 7
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`Perfect World Entertainment, Inc. v. Uniloc USA, Inc., et al.,
`IPR2015-01026, Decision Granting Motion for Joinder,
`Paper 10 (PTAB Aug. 3, 2015) ............................................................................ 7
`ii
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`Sierra Wireless America, Inc. et al v. M2M Solutions LLC,
`IPR2016-01073, Decision Granting Motion for Joinder,
`Paper 17 (PTAB Sept. 29, 2016) ......................................................................... 7
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`Sony Corp., et al. v. Memory Integrity, LLC,
`IPR2015-01376, Decision Granting Motion for Joinder in Part,
`Paper 12 (PTAB Sept. 29, 2015) .......................................................................... 7
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`Other Authorities
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`37 C.F.R. § 42.20(c) ................................................................................................... 3
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`iii
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`I.
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`Introduction
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`Patent Owner, Evolved Wireless, LLC, respectfully requests that the Board
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`deny Petitioner Samsung Electronics Co., Ltd., and Samsung Electronics America,
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`Inc.’s Motion to Join IPR2016-00758 (the “Instituted Petition). Petitioner’s petition
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`for inter partes review of U.S. Patent No. 8,218,481 (the “’481 Patent”) –
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`IPR2017-00106 – filed concurrently with Petitioner’s Motion for Joinder, relies on
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`three grounds that were previously addressed by the Board in IPR2016-00758,
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`including a ground that the Board denied in part. Petitioner seeks to reintroduce
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`these previously rejected arguments without any justification. In addition,
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`Petitioner intentionally chose not to assert these grounds earlier, before the one-
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`year filing window closed, when it submitted its own Petition for inter partes
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`review in IPR2016-01342. Petitioner’s motion should be denied.
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`II.
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`Statement of Material Facts
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`1. Over a year ago, Patent Owner concurrently filed patent infringement
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`litigations against Petitioner and the Original Petitioner1 in the Instituted Petition
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`asserting the ’481 Patent and other related patents. See Evolved Wireless, LLC v.
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`Samsung Electronics Co., Case No. 15-545-SLR-SRF (D. Del., filed June 26,
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`1 “Original Petitioner” refers collectively to HTC Corporation, HTC America, Inc.,
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`and ZTE (USA), Inc.
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`2015); Evolved Wireless, LLC v. HTC Corp., Case No. 14-543-SLR-SRF (D. Del.,
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`filed June 26, 2015); and Evolved Wireless, LLC v. ZTE (USA) Inc., Case No. 15-
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`546-SLR-SRF (D. Del., filed June 26, 2015).
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`2. On March 23, 2016, Original Petitioner filed a petition for inter partes
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`review of the ’481 Patent, in IPR2016-00758. The Board denied institution on
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`some of the claims. See generally, IPR2016-00758, Paper 12.
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`3. On July 5, 2016, Petitioner filed a petition for inter partes review of the
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`’481 Patent, in IPR2016-01342, together with ZTE (USA), Inc. That case is still
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`pending.
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`4. On September 16, 2016, the Board instituted proceedings in IPR2016-
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`00758 against claims 1, 2, 8, and 9 based on an anticipation ground under the non-
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`patent reference Panasonic 7922 and claims 3 and 10 on an obviousness ground
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`under Panasonic 792 and the non-patent reference Panasonic 1143. IPR2016-
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`00758, Paper 12. The Board also instituted proceedings against claims 6 and 13 on
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`an obviousness ground under Panasonic 792, Panasonic 114, and the non-patent
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`reference Chu.4 IPR2016-00758, Paper 12. The Board rejected Original
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`2 See IPR2016-00758, Ex. 1002 (identical to IPR2017-00106, Ex. 1002).
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`3 See IPR2016-00758, Ex. 1003 (identical to IPR2017-00106, Ex. 1003).
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`4 See IPR2016-00758, Ex. 1004 (identical to IPR2017-00106, Ex. 1004).
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`2
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`Petitioner’s ground challenging claims 4 and 11 as obvious over the combination
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`of Panasonic 792 and Panasonic 114. IPR2016-00758, Paper 12.
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`4. Petitioner here indiscriminately seeks institution and joinder of all
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`grounds presented in the IPR2016-00758 petition, including the grounds that the
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`Board expressly rejected.
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`III. The Board Should Deny Petitioner’s Motion Because Petitioner Already
`Elected Grounds in IPR2016-01342
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`The Board should deny Petitioner’s Motion for Joinder because Petitioner
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`had every opportunity to make these arguments in its previous IPR petition
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`regarding the ‘481 Patent and elected not to do so.
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`A. Legal Standard
`Whether to grant joinder must be determined on a “case-by-case basis,
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`taking into account the particular facts of each case” and may be “authorized when
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`warranted, but the decision to grant joinder is discretionary.” LG Electronics, Inc.
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`v. ATI Technologies ULC, IPR2015-01620, Paper 10, at 5 (Feb. 2, 2016) (citation
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`omitted). As the moving party, Petitioner “has the burden of proof to establish that
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`it is entitled to the requested relief.” 37 C.F.R. § 42.20(c). “A motion for joinder
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`should (1) set forth the reasons joinder is appropriate; (2) identify any new grounds
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`of unpatentability asserted in the petition; (3) explain what impact (if any) joinder
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`would have on the trial schedule for the existing review; and (4) address
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`specifically how briefing and discovery may be simplified.” Bungie, Inc., v.
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`Acceleration Bay, LLC, IPR2015-00567, Paper 11, at 11 (July 7, 2016).
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`B. Petitioner Has Failed to Meet Its Burden of Setting Forth the Reasons
`that Joinder Is Appropriate
`Petitioner filed its first petition for inter partes review within one year of
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`service of Patent Owner’s complaint alleging infringement, in IPR2016-01342.
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`Petitioner was fully aware of the 758 Petition when it filed the 1342 Petition.
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`Indeed, Petitioner was joined in the 1342 Petition by ZTE, one of the Original
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`Petitioners on the 758 Petition. Petitioner did not, however, rely on the grounds
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`advanced in the instant Petition, and instead made the strategic decision to
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`manipulate the grounds from the 758 Petition in order to assert that the 1342
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`Petition was not redundant to the 758 Petition. See IPR2016-01342, Petition for
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`Inter Partes Review, Paper 2, at 55 (July 5, 2016); IPR2016-01342, Patent
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`Owner’s Preliminary Response, Paper 7, at 14 (Oct. 24, 2016).
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`Now, however, Petitioner seeks to rely on the grounds advanced in the 758
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`Petition, more than a year after service of the complaint. Petitioner has not
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`explained why it chose not to assert these arguments in its first petition. Instead,
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`Petitioner claims that joinder is appropriate because “it will not prejudice the
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`parties or impact the substantive issues and schedule in the 758 Proceeding.” But
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`Petitioner had every opportunity to advance these grounds before the one-year
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`window close and elected not to do so.
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`4
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`Petitioner has failed to meet its burden of setting forth the reasons why
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`joinder is appropriate. The Board should exercise its discretion to deny Petitioner’s
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`Motion for Joinder, because Petitioner already submitted a timely petition in which
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`it elected not to incorporate the grounds it raises here, including grounds the Board
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`has already explicitly rejected.
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`IV. The Board Should Deny Petitioner’s Motion as to Ground 2, Claims 4
`and 2, Because the Board Did Not Institute Those Grounds in IPR2016-
`00758
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`The Board should deny the motion in its entirety. Even if it does not,
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`however, the Board should deny Petitioner’s Motion for Joinder with respect to
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`Ground 2, claims 4 and 11, alleging obviousness in view of Panasonic 792 and
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`Panasonic 114, because the Board has already rejected these grounds.
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`A. Petitioner’s Grounds for Instituting Claims 4 and 11 Are Identical to
`Rejected Grounds in the Underlying Petition
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`Petitioner challenges claims 4 and 11 as obvious over the combination of
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`Panasonic 792 and Panasonic 114, despite the Board rejecting those grounds in
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`Original Petitioner’s petition. IPR2017-00106, Paper 1; IPR2016-00758, Paper 12.
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`Joinder of such non-instituted claims should not be permitted.
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`Petitioner presents the very same arguments that the Board previously
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`rejected in the Instituted Petition when denying institution as to Claims 4 and 11.
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`As Petitioner concedes in its Motion for Joinder, “[t]he Samsung Petition raises the
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`5
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`same grounds of unpatentability for which the 758 Proceeding was instituted,
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`challenges the same claims, and relies on the same prior art, arguments and
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`evidence presented in ZTE and HTC’s petition for inter partes review. . . . Indeed,
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`the substantive challenges presented in the Samsung Petition are copied verbatim
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`from the ZTE and HTC petition and rely on the same supporting expert
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`declaration. . . . [The Samsung Petition] does not add to or alter any argument that
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`has already been considered by the Board.” IPR2017-00106, Paper 2. In short,
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`Petitioner freely admits that it has recycled Original Petitioner’s petition.
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`The Board denied Original Petitioner institution of claims 4 and 11, because
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`“ZTE ha[d] not demonstrated a reasonable likelihood of establishing that claims 4
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`and 11 would have been obvious over the combination of Panasonic 792 and
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`Panasonic 114.” IPR2016-00758, Paper 12, at 16. The same result must apply here.
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`Petitioner seeks to impermissibly reintroduce these non-instituted grounds, despite
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`the Board’s previous ruling.
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`B. Petitioner Has Failed to Meet Its Burden of Setting Forth the Reasons
`that Joinder Is Appropriate with Respect to Ground 2, Claims 4 and
`11
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`In both its Petition and its Motion for Joinder, Petitioner provides no new
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`reasons the Board should institute claims 4 and 11 beyond Original Petitioner’s
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`recycled and rejected arguments, and none of the case law cited by Petitioner
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`supports joinder under these circumstances. Indeed, Petitioner presents a case in
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`6
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`which the Board expressly rejected identical grounds not instituted in the prior
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`proceeding. See Sony Corp., et al. v. Memory Integrity, LLC, IPR2015-01376,
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`Paper 12, at 2-3, 14-15 (Sept. 29, 2015). There, petitioners presented the same
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`grounds presented in the underlying petition, including grounds for which the
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`Board previously denied institution. The Board refused to permit such rejected
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`arguments from proceeding after granting joinder, “consistent with [the Board’s]
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`institution decision” in the underlying petition. Id. at 3. As in Sony Corp.,
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`IPR2015-01376, permitting these arguments to proceed here would effectively
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`give Petitioner—both old and new—a chance to institute a ground the Board
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`previously found deficient. The Board has already decided that these exact
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`arguments are insufficient. The same result applies here for the same reasons.
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`Petitioner also supports its request for Joinder with numerous cases in which
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`the petitioner raised solely the instituted grounds from the prior proceeding, unlike
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`Petitioner’s present Motion. See Sierra Wireless America, Inc. et al v. M2M
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`Solutions LLC, IPR2016-01073, Paper 17 (Sept. 29, 2016); Ciena Corp., et al. v.
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`Capella Photonics, Inc., IPR2015-01958, Paper 11 (Apr. 1, 2016); Ciena Corp., et
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`al. v. Capella Photonics, Inc., IPR2015-00894, Paper 12 (Sept. 22, 2015); Perfect
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`World Entertainment, Inc. v. Uniloc USA, Inc., et al., IPR2015-01026, Paper 10
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`(Aug. 3, 2015); Mylan Pharmaceuticals Inc. v. Novartis AG, et al., IPR2015-
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`00265, Paper 17 (Apr. 10, 2015); Dell Inc. v. Network-1 Security Solutions, Inc.,
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`IPR2013-00385, Paper 17 (July 29, 2013). None of these cases considered grounds
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`not instituted in the underlying petition.
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`Instead, as in Sony Corp., IPR2015-01376, the Board routinely prohibits
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`previously rejected grounds from proceeding in a joined case when those grounds
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`are raised a second time by the new petitioner. See Bungie, Inc. v. Acceleration
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`Bay, LLC, IPR2016-00936, Paper 11, at 2 (July 7, 2016); Dot Hill Systems Corp. v.
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`Crossroads Systems, Inc., IPR2015-00822, Paper 18, at 6 (Sept. 17, 2015); Ion
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`Geophysical Corp. and Ion Int’l S.A.R.L. v. Westerngeco LLC, IPR2015-00567,
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`Paper 14, at 3 (Apr. 23, 2015). Petitioner has provided no case law or rationale for
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`instituting and joining Ground 2, Claims 4 and 11. Petitioner presents the exact
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`same argument for instituting Ground 2, Claims 4 and 11 that the Board has
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`already found insufficient. The Board should apply its previous rejection of that
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`argument here.
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`V. Conclusion
`For the reasons outlined above, Patent Owner respectfully requests that the
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`Board deny Petitioner’s Motion for Joinder. If the Board does not deny Petitioner’s
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`Motion for Joinder in full, then Patent Owner respectfully requests that the Board
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`deny, in part, Petitioner’s Motion for Joinder as it relates to Ground 2, Claims 4
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`and 11 of the underlying petition for inter partes review.
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`Dated: November 14, 2016.
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`Respectfully Submitted,
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`s/ Ryan M. Schultz
`Registration No. 65,134
`Robins Kaplan LLP
`800 LaSalle Avenue
`2800 LaSalle Plaza
`Minneapolis, MN 55402-2015
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this November 14, 2016, a copy of this Patent
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`Owner’s Opposition to Petitioner’s Motion for Joinder has been served in its
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`entirety by electronic mail to the Petitioners:
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`jimglass@quinnemanuel.com
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`kevinjohnson@quinnemanuel.com
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`toddbriggs@quinnemanuel.com
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`johnmckee@quinnemanuel.com
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`Dated: November 14, 2016
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`Respectfully submitted,
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`s/ Ryan M. Schultz
`Registration No. 65,134
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`Attorney for Patent Owner
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