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`Entered: June 28, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
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`VERITAS TECHNOLOGIES LLC,
`Petitioner
`v.
`REALTIME DATA LLC,
`Patent Owner
`_______________________
`Case Unassigned
`U.S. Patent No. 7,161,506
`_______________________
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`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c),
`37 C.F.R. §§ 42.22, AND 42.122(b)
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`Motion for Joinder
`U.S. Patent No. 7,161,506
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`TABLE OF CONTENTS
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`Page
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`STATEMENT OF PRECISE RELIEF REQUESTED ................................... 1
`I.
`BACKGROUND AND RELATED PROCEEDINGS ................................... 2
`II.
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ........................ 4
`A.
`Legal Standard ....................................................................................... 4
`B.
`Joinder will not affect the Board’s ability to timely complete
`the review. ............................................................................................. 5
`Joinder will promote efficiency by consolidating issues,
`avoiding wasteful duplication, and preventing inconsistency. ............. 7
`D. Without joinder, Petitioner may be prejudiced. .................................... 7
`E.
`Joinder will not prejudice Realtime or Dell. ......................................... 8
`IV. CONCLUSION ................................................................................................ 8
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`C.
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`Motion for Joinder
`U.S. Patent No. 7,161,506
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`TABLE OF AUTHORITIES
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` Page(s)
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`CASES
`Motorola Mobility LLC v. Softview LLC,
`IPR2013-00257, Paper 10 (P.T.A.B. June 20, 2013) ........................................... 4
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`STATUTES
`35 U.S.C. § 315(c) ................................................................................................. 1, 4
`35 U.S.C. § 316(a)(11) ............................................................................................... 6
`Pub. L. No. 112-29, 125 Stat. 284 (2011) .................................................................. 4
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`REGULATIONS
`37 C.F.R. § 42.22 ....................................................................................................... 1
`37 C.F.R. § 42.74 ....................................................................................................... 7
`37 C.F.R. § 42.100(c) ................................................................................................. 6
`37 C.F.R. § 42.122 ................................................................................................. 1, 4
`77 Fed. Reg. 48,680 (Aug. 14, 2012) ........................................................................ 4
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`ii
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`Motion for Joinder
`U.S. Patent No. 7,161,506
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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED
`Veritas Technologies LLC (“Veritas” or “Petitioner”) submits this Motion
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`for Joinder concurrently with a Petition for Inter Partes Review (IPR) (“Petition”),
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`under 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b), of claims 104 and
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`105 of U.S. Patent No. 7,161,506 (“the ’506 Patent”) (Ex. 1001).
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`Petitioner requests institution of IPR and party joinder with the pending,
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`instituted IPR titled, Dell, Inc. v. Realtime Data LLC d/b/a IXO, Case No.
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`IPR2017-00176 (“the Dell IPR”), based on grounds identical to those in that
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`proceeding. Dell Inc., EMC Corporation, Hewlett-Packard Enterprise Co., and HP
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`Enterprise Services, LLC, initiated the Dell IPR proceeding by petitioning the
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`Board on November 14, 2016. The Board instituted the Dell IPR on May 30,
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`2017. Petitioner timely files the Petition and this motion within one month of the
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`institution of the Dell IPR. 37 C.F.R. § 42.122(b).
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`Joinder will efficiently resolve the challenges presented in the Petition and
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`the instituted grounds of the Dell IPR and will not prejudice the patent owner or
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`the first-petitioner Dell. Intentionally, the Petition is nearly word-for-word
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`identical to the petition in the Dell IPR in an effort to avoid multiplication of issues
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`1
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`Motion for Joinder
`U.S. Patent No. 7,161,506
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`before the Board.1 Further, the expert declarations submitted with the Petition are
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`from the same declarants and are essentially identical to the declarations submitted
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`in the Dell IPR.2
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`Should the panel join the parties, Petitioner agrees to subordinate itself,
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`allowing Dell to lead the joined proceedings absent settlement by Dell, in line with
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`common Board practice. Joinder with the Dell IPR would minimally affect its
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`procedure and substance. Lead petitioner Dell has stated to Petitioner that it does
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`not oppose joinder.
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`II. BACKGROUND AND RELATED PROCEEDINGS
`The ’506 patent is assigned on its face to Realtime Data LLC (“Realtime” or
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`“Patent Owner”). Realtime has asserted the ’506 patent against Petitioner and
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`numerous other parties in E.D. Tex.: Realtime Data LLC v. Packeteer, Inc., filed
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`April 18, 2008 as 6:08-cv-00144 (terminated February 2, 2010); Realtime Data
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`LLC v. Morgan Stanley, filed July 22, 2009 as 6:09-cv-00326 (terminated
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`September 21, 2011); Realtime Data LLC v. CME Group Inc., filed July 22, 2009
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`1 The only differences between the Dell IPR petition and the Petition are shown in
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`redline in Ex. 1031.
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`2 The only differences between the declarations supporting the Dell IPR petition
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`and the declarations supporting the Petition are shown in redline in Exs. 1032–33.
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`2
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`Motion for Joinder
`U.S. Patent No. 7,161,506
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`as 6:09-cv-00327 (terminated September 21, 2011); Realtime Data LLC v.
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`Thomson Reuters, filed July 23, 2009 as 6:09-cv-00333 (terminated September 21,
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`2011); Realtime Data LLC v. T-Mobile, USA, Inc., filed September 23, 2010 as
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`6:10-cv-00493 (terminated March 28, 2013); Realtime Data LLC v. Hewlett
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`Packard Enterprise Co., filed February 26, 2016 as 6:16-cv-00086; Realtime Data
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`LLC v. Savvis Communications Corp., filed February 26, 2016 as 6:16-cv-00087;
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`Realtime Data LLC v. Oracle America, Inc., filed February 26, 2016 as 6:16-cv-
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`00088 (terminated May 15, 2017); Realtime Data LLC v. Dell Inc., filed February
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`26, 2016 as 6:16-cv-00089; Realtime Data LLC v. Silver Peak Systems, Inc., filed
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`February 26, 2016 as 6:17-cv-00071 (transferred April 25, 2017 to N.D. Cal. as
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`4:17-cv-02373); Realtime Data LLC v. Rackspace US, Inc., filed June 29, 2016 as
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`6:16-cv-00961; Realtime Data LLC v. Fujitsu America, Inc., filed July 21, 2016 as
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`6:16-cv-01035 (transferred April 13, 2017 to N.D. Cal. as 3:17-cv-02109); and
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`Realtime Data LLC v. Vembu Technologies, Inc., filed July 22, 2016 as 6:16-cv-
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`01037 (terminated November 14, 2016). Motions to stay the proceedings pending
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`inter partes review have been granted in at least the 6:16-cv-00086, -00087, and -
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`00089 actions. In addition to the Dell IPR, the ’506 patent is currently also being
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`challenged by Teradata Operations, Inc. in IPR2017-00806 (filed January 30,
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`2017), and by NetApp, Inc. and Rackspace US, Inc. in IPR2017-01660 (filed June
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`22, 2017).
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`3
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`Motion for Joinder
`U.S. Patent No. 7,161,506
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`A. Legal Standard
`The Leahy-Smith America Invents Act (AIA) allows an IPR party to be
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`joined with a preexisting IPR. See generally Pub. L. No. 112-29, 125 Stat. 284
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`(2011). The statutory provision governing IPR joinder, 35 U.S.C. § 315(c), reads:
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`(c) JOINDER. – If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that inter
`partes review any person who properly files a petition under section
`311 that the Director, after receiving a preliminary response under
`section 313 or the expiration of the time for filing such a response,
`determines warrants the institution of an inter partes review under
`section 314.
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`Under its discretion, the Board considers how joinder will affect the
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`substance and procedure of the preexisting proceeding. See, e.g., Decision on
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`Motion for Joinder, Motorola Mobility LLC v. Softview LLC, IPR2013-00257,
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`Paper 10 (P.T.A.B. June 20, 2013). In its response to comments on the Board’s
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`proposed joinder rule, 37 C.F.R. § 42.122, the PTO indicated that “joinder would
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`allow the Office to consolidate issues and to account for timing issues that may
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`arise” when instituting multiple proceedings involving the same patent. Changes
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`to Implement Inter Partes Review Proceedings, 77 Fed. Reg. 48,680, 48,707 (Aug.
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`14, 2012). Here, joining Petitioner to the Dell IPR is appropriate.
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`Motion for Joinder
`U.S. Patent No. 7,161,506
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`B.
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`Joinder will not affect the Board’s ability to timely complete the
`review.
`Intentionally, the Petition is identical to the petition in the Dell IPR in an
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`effort to avoid multiplication of issues. For simplicity and efficiency, Petitioner
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`has essentially copied Dell’s IPR petition. See Ex. 1031 (redline comparison).
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`Petitioner does not seek to reintroduce grounds or combinations of prior art or
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`claims not instituted in the Dell IPR, and seeks only to join the proceeding as
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`instituted. Petitioner is retaining the same experts as Dell, Drs. Charles D.
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`Creusere and Scott Bennett. The supporting declarations of Drs. Creusere and
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`Bennett are essentially identical to the declarations they previously submitted in
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`the Dell IPR. See Exs. 1032-33 (redline comparisons).
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`Realtime should not require any discovery beyond that which it may need in
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`the Dell IPR—nor should the Board permit any. The Petition presents no new
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`substantive issues relative to the Dell IPR and does not seek to broaden the scope
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`of the Dell IPR or request additional discovery. Any new evidence merely
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`supports arguments already before the Board. For efficiency’s sake, if joined,
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`Petitioner and Dell have agreed that Dell’s counsel will act as the lead counsel as
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`long as Dell remains in the proceeding.
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`Motion for Joinder
`U.S. Patent No. 7,161,506
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`Joinder will not impact the Board’s ability to complete its review in a timely
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`manner.3 Section 316(a)(11) provides that IPR proceedings should be completed
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`and the Board’s final decision issued within one year of institution of the review.
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`See also 37 C.F.R. § 42.100(c). Here, joinder will not affect the Board’s ability to
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`issue its final determination within one year because Petitioner agrees to
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`substantially the same arguments instituted in the Dell IPR, retains the same expert
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`and submits an essentially identical declaration, and agrees to consolidated
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`discovery. Indeed, the Petition includes only those grounds on which the Dell
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`petitioned for IPR, and the invalidity grounds were largely copied verbatim from
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`Dell’s IPR petition.
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`In view of the above, Petitioner submits that the current schedule in the Dell
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`IPR can stay unchanged. At most, the Board can add an additional deadline for
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`Realtime to respond to this Motion, but this deadline will not impact other
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`deadlines in the schedule.
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`3 Petitioner notes that 35 U.S.C. § 316(a)(11) and associated rule 37 C.F.R. §
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`42.100(c) also grant the Board flexibility to extend the one-year period by up to six
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`months in the case of joinder, if needed.
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`Motion for Joinder
`U.S. Patent No. 7,161,506
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`C.
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`Joinder will promote efficiency by consolidating issues, avoiding
`wasteful duplication, and preventing inconsistency.
`Petitioner presents nearly identical supporting evidence as the Dell IPR and
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`essentially identical arguments for patent invalidity as instituted in the Dell IPR.
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`Joinder will simplify briefing and discovery. Given that the Dell IPR and the
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`Petition address the same prior art and grounds for rejection of the same claims,
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`joining these proceedings allows for joint submissions and discovery, further
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`streamlining the proceedings. This should promote efficiency and conserve the
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`Board’s and the parties’ resources. By contrast, the determination of the same
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`patent validity questions for the ’506 patent in multiple proceedings would
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`duplicate efforts, and create a risk of inconsistent results. Joinder avoids that.
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`D. Without joinder, Petitioner may be prejudiced.
`Petitioner may be prejudiced if it is not permitted to join in the Dell IPR.
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`Realtime has asserted the ’506 patent against Petitioner in pending litigation. See
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`generally Realtime Data LLC v. Savvis Communications Corp., Case No. 6:16-cv-
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`00087 (E.D. Tex.). Petitioner should be permitted to join the pending IPR to
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`participate in proceedings affecting a patent asserted against it, and thereby
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`allowed to continue the proceedings should Dell and Realtime settle under 37
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`C.F.R. § 42.74 before a final written decision is issued.
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`7
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`Motion for Joinder
`U.S. Patent No. 7,161,506
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`E.
`Joinder will not prejudice Realtime or Dell.
`Permitting joinder will not prejudice Realtime or Dell and will in fact
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`streamline the proceedings and reduce the costs and burdens on the parties for
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`several reasons. First, joinder will most certainly decrease the number of papers
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`the parties must file by eliminating a duplicative proceeding. Second, joinder will
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`also reduce by half the time and expense for depositions and other discovery
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`required in separate proceedings. Third, joinder creates case management
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`efficiencies for the Board and parties without any prejudice to Realtime. Fourth,
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`Petitioner raises issues already before the Board and long known to Realtime.
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`Fifth, lead petitioner Dell does not oppose joinder. Addressing the same patent
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`validity questions in a single proceeding with a statutory deadline serves the
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`parties’ and Board’s interests.
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`IV. CONCLUSION
`Joinder will not affect the substance, procedure, or scheduling of the Dell
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`IPR. Petitioner files under the statutory joinder provisions as contemplated by the
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`AIA. Joinder will simplify the issues and promote efficiency, justice, and speed.
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`8
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`Motion for Joinder
`U.S. Patent No. 7,161,506
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`Petitioner respectfully requests the accompanying IPR petition on U.S.
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`Patent No. 7,161,506 be instituted and joinder be granted with Dell Inc. v. Realtime
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`Data LLC d/b/a IXO, Case No. IPR2017-00176.4
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`Dated: June 28, 2017
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`Respectfully submitted,
`/Jonathan D. Link/
`Jonathan D. Link (Reg. No. 41,548)
`Jonathan.Link@lw.com
`LATHAM & WATKINS LLP
`555 Eleventh Street NW, Suite 1000
`Washington, DC 20004
`T: (202) 637-2243, F: (202) 637-2201
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`Lisa K. Nguyen (Reg. No. 58,018)
`Lisa.Nguyen@lw.com
`LATHAM & WATKINS LLP
`140 Scott Drive
`Menlo Park, CA 94025
`T: (650) 328-4848, F: (650) 463-2600
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`Counsel for Petitioner Veritas
`Technologies LLC
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`4 Although Petitioner believes no fee is required for this Motion, Petitioner
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`authorizes the Commissioner to charge any additional fees required for this
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`Motion, to Deposit Account No. 506269.
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`Motion for Joinder
`U.S. Patent No. 7,161,506
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. §42.6(e), I certify that on this 28th day of June,
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`2017, a copy of Motion For Joinder Under 35 U.S.C. § 315(c), 37 C.F.R. §§
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`42.22, and 42.122(b) was served by FEDERAL EXPRESS overnight delivery on
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`the Patent Owner at the official correspondence address for U.S. Patent No.
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`7,161,506 shown on PAIR as follows:
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`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, DC 20005
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`and at an additional address likely to effect service:
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`William P. Rothwell
`NOROOZI PC
`2245 Texas Drive, Suite 300
`Sugar Land, TX 77479
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`Courtesy copies of the foregoing were further served by FEDERAL
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`EXPRESS overnight delivery on the Patent Owner’s litigation counsel as follows:
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`Marc A. Fenster
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, California 90025
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`Courtesy copies of the foregoing were further served by FEDERAL
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`EXPRESS overnight delivery on the lead counsel of record for the Petitioners in
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`Dell, Inc. v. Realtime Data LLC d/b/a IXO, Case No. IPR2017-00176, as follows:
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`1
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`Motion for Joinder
`U.S. Patent No. 7,161,506
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`Andrew R. Sommer
`WINSTON & STRAWN LLP
`1700 K Street NW
`Washington, D.C. 20006-3817
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`/Jonathan D. Link/
`Jonathan D. Link (Reg. No. 41,548)
`Jonathan.Link@lw.com
`LATHAM & WATKINS LLP
`555 Eleventh Street NW, Suite 1000
`Washington, DC 20004
`T: (202) 637-2243, F: (202) 637-2201
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`Counsel for Petitioner Veritas
`Technologies LLC
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`2
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