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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`XILINX, LLC,
`Petitioner,
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`v.
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`FG SRC LLC,
`Patent Owner
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`Case IPR2021-00633
`Patent No. 7,149,867
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`PETITIONER’S MOTION FOR JOINDER
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`I.
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`Case IPR2021-00633
`Attorney Docket No: 42653-0026IP1
`STATEMENT OF PRECISE RELIEF REQUESTED
`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Petitioner Xilinx,
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`LLC moves for joinder with the inter partes review instituted against U.S. Patent
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`No. 7,149,867 (“the ’867 Patent”) in Intel Corporation, v. FG SRC LLC, IPR2021-
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`01449 (“the 1449 Proceeding”). This motion is timely filed within one month of
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`institution in the 1449 Proceeding. Xilinx has consulted with counsel for Intel
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`Corporation, the current petitioner in the 1449 Proceeding, and Intel does not does
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`not oppose Xilinx’s request for joinder.
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`Xilinx requests institution of the Petition for inter partes review filed
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`concurrently herewith. Xilinx’s Petition is materially the same as the petition filed
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`in the 1449 Proceeding. Xilinx’s Petition and the petition in the 1449 Proceeding
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`challenge the same claims, on the same grounds, and rely on the same prior art and
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`evidence, including an identical declaration from the same expert.1
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`Xilinx agrees to proceed solely on the grounds, evidence, and arguments
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`advanced, or that will be advanced, in the 1449 Proceeding as instituted. Xilinx’s
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`Petition therefore warrants institution under 35 U.S.C. § 314, and 35 U.S.C. § 315(c)
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`permits Xilinx’s joinder to the instituted 1449 Proceeding.
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`1 The declaration is an exact duplicate of the declaration in the 1449 Proceeding.
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`1
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`Case IPR2021-00633
`Attorney Docket No: 42653-0026IP1
`Further, upon joining the 1449 Proceeding, Xilinx will act as an “understudy”
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`and will not assume an active role unless Intel ceases to participate in the 1449
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`Proceeding. Intel will maintain the lead role in the proceeding so long as it remains
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`in the proceeding. These limitations will avoid lengthy and duplicative briefing.
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`Xilinx also will not seek additional depositions or deposition time. Xilinx agrees to
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`the foregoing conditions even in the event that other IPRs filed by other, third-party
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`petitioners are joined with the 1449 Proceeding. Accordingly, the proposed joinder
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`will neither unduly complicate the 1449 Proceeding nor delay its schedule.
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`In fact, joinder will help efficiently resolve the disputes among the parties. By
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`joinder, a single Board decision may dispose of the issues raised in the 1449
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`Proceeding for all interested parties. Further, joinder will narrow the issues in the
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`co-pending district court actions because Xilinx and Intel have each, contingent upon
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`institution/joinder, stipulated to forego raising the same grounds of unpatentability
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`in their respective parallel litigations. These considerable efficiencies at the district
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`courts incur only de minimis cost at the PTAB. Joinder will not complicate or delay
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`the 1449 Proceeding, and will not adversely affect any schedule set in that
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`proceeding.
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`Joinder will not unduly prejudice any party. Because joinder will not add any
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`new substantive issues, delay the schedule, burden deponents, or increase needless
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`filings, any additional costs on Patent Owner will be minimal. On the other hand,
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`Case IPR2021-00633
`Attorney Docket No: 42653-0026IP1
`denial of joinder would prejudice Xilinx. Xilinx’s interests may not be adequately
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`protected in the 1449 Proceeding, particularly if Intel settles with Patent Owner.
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`Xilinx should be allowed to join in a proceeding affecting a patent asserted against
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`it. Joinder is especially appropriate here, where Patent Owner withheld its
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`infringement allegations against Xilinx for 2.5 years. See Pet. at 14-15. Patent
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`Owner’s litigation tactics should not exclude Xilinx from the PTAB.
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`II. BACKGROUND AND RELATED PROCEEDINGS
`FG SRC LLC is the purported owner of the ’867 Patent. The ’867 Patent is
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`involved in at least each of the following litigations:
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`Court
`Number
`2-18-cv-00317 W.D. Wash.
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`Filed
`Feb. 26, 2018
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`Name
`SRC Labs, LLC et al v.
`Amazon Web Services, Inc et
`al
`FG SRC, LLC v. Intel
`Corporation
`1-20-cv-00601
`Apr. 30, 2020
`D. Del.
`FG SRC LLC v. Xilinx, Inc.
`III. STATEMENT OF REASONS FOR THE RELIEF REQUESTED
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`1-20-cv-00834 W.D. Tex.
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`Apr. 24, 2020
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`A. Legal Standards and Applicable Rules
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`The Board has discretion to join a properly filed IPR petition to an existing
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`IPR proceeding. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b); see also Dell Inc.
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`v. Network-1 Sec. Solutions, Inc., IPR2013-00385, Paper 19, at 4-6; Sony Corp. v.
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`Yissum Res. & Dev. Co. of the Hebrew Univ. of Jerusalem, IPR2013- 00326, Paper
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`15, at 3-4; Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109, Paper 15, at 3-4.
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`“The Board will determine whether to grant joinder on a case-by-case basis, taking
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`into account the particular facts of each case, substantive and procedural issues, and
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`other considerations.” Dell, IPR2013-00385, Paper 19, at 3. The movants bear the
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`burden of proof in establishing entitlement to the requested relief. 37 §§ 42.20(c),
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`42.122(b). A 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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`B.
`Joinder with the 1449 Proceeding Is Appropriate
`The Board “routinely grants motions for joinder where the party seeking
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`joinder introduces identical arguments and the same grounds raised in the existing
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`proceeding.” Samsung Elecs. Co., Ltd. v. Raytheon Co., IPR2016-00962, Paper No.
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`12 at 9 (Aug. 24, 2016) (emphasis added) (internal quotations and citations omitted).
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`Here, joinder with the 1449 Proceeding is appropriate because Xilinx’s Petition
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`introduces identical unpatentability arguments and the same grounds raised in the
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`petition of the 1449 Proceeding. In other words, both petitions contain the same
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`grounds based on the same prior art combinations and supporting evidence against
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`the same claims. Indeed, there are no material changes to the facts, citations,
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`Attorney Docket No: 42653-0026IP1
`evidence, or arguments used in demonstrating satisfaction of the implicated claims
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`by the applied prior art.
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` Because these proceedings introduce identical
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`unpatentability arguments and the same grounds, good cause exists for joinder, so
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`that the Board, consistent with 37 C.F.R. § 42.1(b), can efficiently “secure the just,
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`speedy, and inexpensive resolution” of this proceeding and the 1449 Proceeding.
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`Moreover, Xilinx notes that the Board has indicated that the factors outlined
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`by General Plastics are not particularly relevant here “where a different petitioner
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`files a ‘me-too’ or ‘copycat’ petition in conjunction with a timely motion to join.”
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`See, e.g., Celltrion, Inc. v. Genentech, Inc., IPR2018-01019, Paper 11 at 9-11 (PTAB
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`Oct. 30, 2018); Pfizer, Inc. v Genentech, Inc., IPR2017-02063, Paper 25 at 7-8
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`(PTAB Feb. 21, 2018). And the present facts stand in stark contrast to the recent
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`Apple Inc. v. Uniloc 2017 LLC case where the Board denied institution and joinder
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`based on General Plastic. See IPR2020-00854, Paper 9 (PTAB “Precedential” Oct.
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`28, 2020). In that case, the second-in-time petitioner seeking joinder had previously
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`petitioned for, and been denied, inter partes review of the same patent. Id. at 2. Not
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`so here. This is Xilinx’s first challenge against the ’867 Patent at the PTAB, and
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`there is no risk of prejudice or abuse. Rather, through grant of this joinder, the Board
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`is simply offered the opportunity to ensure that the 1449 Proceeding is not
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`prematurely terminated based on opportunistic settlement by Patent Owner with
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`fewer than all parties against which it has asserted the subject patent.
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`C.
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`Case IPR2021-00633
`Attorney Docket No: 42653-0026IP1
`Joinder Will Not Add Any New Grounds of Unpatentability or
`Impact the Trial Schedule
`The Petition is based on the same grounds and combinations of prior art in the
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`1449 Proceeding. For simplicity and efficiency, Xilinx has copied the substance of
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`the petition in the 1449 Proceeding and its accompanying expert declaration. Xilinx
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`does not seek to introduce grounds or claims not currently in the 1449 Proceeding
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`and seeks only to join the proceeding as instituted. Patent Owner should not require
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`any discovery beyond that which it may need in the 1449 Proceeding—nor should
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`the Board permit any. The present Petition introduces no new substantive issues
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`relative to the 1449 Proceeding and does not seek to broaden the scope of the 1449
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`Proceeding.
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`Joinder will not impact the 1449 Proceeding trial schedule because the present
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`Petition presents no new issues or grounds of unpatentability. See LG, IPR2015-
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`01353, Paper No. 11 at 6 (granting IPR and motion for joinder where “joinder should
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`not necessitate any additional briefing or discovery from Patent Owner beyond that
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`already required in [the original IPR]”). Further, Xilinx explicitly consents to the
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`trial schedule as adopted in the 1449 Proceeding. There are no new issues for the
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`Board to address, and Patent Owner will not be required to present any additional
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`responses or arguments.
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`The Patent Owner’s Response will also not be negatively impacted because
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`the substantive issues presented in the present Petition are identical to the issues
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`Case IPR2021-00633
`Attorney Docket No: 42653-0026IP1
`presented in the 1449 Proceeding. Patent Owner will not be required to provide any
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`additional analysis or arguments beyond what it will already provide in responding
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`to the petition in the 1449 Proceeding. Also, because the present Petition relies on
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`the same expert declaration, only a single deposition is needed for the proposed
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`joined proceeding.
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`Accordingly, joinder with the 1449 Proceeding does not unduly burden or
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`negatively impact the trial schedule.
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`D.
`Procedures to Simplify Briefing and Discovery
`Xilinx explicitly agrees to take an “understudy” role, which will simplify
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`briefing and discovery. Specifically, Xilinx explicitly agrees, upon joining the 1449
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`Proceeding, that the following conditions, as previously approved by the Board in
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`similar circumstances, shall apply so long as Intel remains an active party:
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`a) Xilinx will join all of Intel’s filings and oral arguments in the 1449
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`Proceeding, unless a filing or oral argument concerns issues solely
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`involving Xilinx;
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`b) Xilinx shall not be permitted to raise any new grounds not instituted by
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`the Board in the 1449 Proceeding, or introduce any argument or
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`discovery not introduced by Intel;
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`c) Xilinx shall be bound by any agreement between Patent Owner and the
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`current Xilinx concerning discovery and/or depositions; and
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`Attorney Docket No: 42653-0026IP1
`d) Xilinx at deposition shall not receive any direct, cross examination or
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`redirect time beyond that permitted under either 37 C.F.R. § 42.53 or
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`any agreement between Patent Owner and Intel.
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`See Noven Pharmaceuticals, Inc. v. Novartis AG, IPR2014-00550, Paper No. 38 at
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`5 (Apr. 10, 2015). Unless and until Intel ceases to participate, Xilinx will not assume
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`an active role in the 1449 Proceeding.
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`Thus, by Xilinx accepting an “understudy” role, the parties can comply with
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`the trial schedule assigned to the 1449 Proceeding without needing any duplicative
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`efforts by the Board or Patent Owner. These steps minimize the possibility of any
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`complication or delay from joinder. See LG, IPR2015-01353, Paper No. 11 at 6-7
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`(granting IPR and motion for joinder because “joinder would increase efficiency by
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`eliminating duplicative filings and discovery, and would reduce costs and burdens
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`on the parties as well as the Board” where petitioners agreed to an “understudy”
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`role). Xilinx is further willing to agree to any other reasonable conditions the Board
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`deems necessary.
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`IV. CONCLUSION
`Joinder will not affect the substance, procedure, or scheduling of the 1449
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`Proceeding. Xilinx files this motion under the statutory joinder provisions as
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`contemplated by the AIA. Joinder will simplify the issues and promote efficiency,
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`justice, and speed.
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`Case IPR2021-00633
`Attorney Docket No: 42653-0026IP1
`For the foregoing reasons, Xilinx respectfully requests inter partes review of
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`U.S. Patent No. 7,149,867 and joinder with Intel Corporation, v. FG SRC LLC,
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`IPR2021-01449.
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`Date: March 15, 2021
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`Customer Number 26191
`Fish & Richardson P.C.
`Telephone: (202) 783-5070
`Facsimile: (877) 769-7945
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` Respectfully submitted,
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`/Kenneth Wayne Darby Jr./
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` David M. Hoffman, Reg. No. 54,174
` Kenneth Wayne Darby Jr., Reg. No. 65,068
` Attorneys for Petitioner
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`Case IPR2021-00633
`Attorney Docket No: 42653-0026IP1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e), the undersigned certifies that on March 15,
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`2021, a complete and entire copy of this Petitioner’s Motion for Joinder was
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`provided via FedEx to the Patent Owner by serving the correspondence email
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`address of record as follows:
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`LARKIN HOFFMAN DALY & LINDGREN, LTD.
`8300 Norman Center Drive
`Suite 1000
`Minneapolis MN 55437
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`/Edward G. Faeth/
`Edward G. Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
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