`571-272-7822
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` Paper 26
`Entered: June 5, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CISCO SYSTEMS, INC. and AVAYA, INC.,
`Petitioner,
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01011
`Patent 6,108,704 C1
`____________
`
`Before KALYAN K. DESHPANDE, TRENTON A. WARD, and
`BART A. GERSTENBLITH, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`DECISION
`Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`Case IPR2015-01011
`Patent 6,108,704 C1
`
`
`INTRODUCTION
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`Cisco Systems, Inc. and AVAYA, Inc. (collectively, “Petitioner”)
`
`filed a Petition requesting an inter partes review of claims 1, 11, 12, 14, 16,
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`22, 23, 27, 30, and 31 of U.S. Patent No. 6,108,704 C1 (Ex. 1001, “the ’121
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`patent”). Paper 2 (“Pet.”). With the Petition, Petitioner filed a Motion for
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`Joinder (Paper 4, “Mot.”), seeking to join this case with Samsung Elecs. Co.
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`v. Straight Path IP Grp., Inc., IPR2014-01366 (PTAB Mar. 6, 2015), filed
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`by Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and
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`Samsung Telecommunications America, LLC (collectively, “Samsung”).
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`Petitioner indicates that Patent Owner does not oppose the Motion for
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`Joinder. Mot. 1. In a separate decision, entered today, we institute an inter
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`partes review as to the same claims and the same ground of unpatentability
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`for which we instituted trial in Samsung Elecs. Co. v. Straight Path IP Grp.,
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`Inc., IPR2014-01366. For the reasons that follow, Petitioner’s Motion for
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`Joinder is granted.
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`BACKGROUND
`
`Petitioner filed its Petition and Motion for Joinder on April 6, 2015,
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`within one month after the institution date of IPR2014-01366. On May 5,
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`2014, we held a conference call with counsel for the respective parties.
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`During the conference call, Patent Owner indicated that all of the parties
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`intended to file a stipulated proposed order defining the parameters of
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`joinder. The parties filed the stipulated proposed order on May 6, 2015. See
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`Paper 10.
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`2
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`Case IPR2015-01011
`Patent 6,108,704 C1
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`The Petition in this case asserts at least the grounds that claims 1, 11,
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`12, 22, and 23 of the ’704 patent are unpatentable under 35 U.S.C. § 103(a)
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`as obvious over Microsoft Manual1 and NetBIOS,2 and claims 14, 16, 27,
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`30, and 31 are unpatentable under 35 U.S.C. § 103(a) as obvious over
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`Microsoft Manual, NetBIOS, and Palmer.3 Pet. 7, 35–54. These are the
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`same claims and the same grounds for which we instituted trial in
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`IPR2014-01366. Samsung Elecs. Co. v. Straight Path IP Grp., Inc.,
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`IPR2014-01366, slip op. at 22 (PTAB Mar. 6, 2014) (Paper 12).
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`ANALYSIS
`
`The Leahy-Smith America Invents Act, Pub. L. No. 112-29 (2011),
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`permits joinder of like review proceedings. Thus, an inter partes review
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`may be joined with another inter partes review. The statutory provision
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`governing joinder of inter partes review proceedings is 35 U.S.C. § 315(c),
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`which provides:
`
`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.
`
`
`
`1 MICROSOFT WINDOWS NT 3.5, TCP/IP USER GUIDE (1994) (Ex. 1012,
`“Microsoft Manual”).
`2 THE OPEN GROUP, TECHNICAL STANDARD, PROTOCOLS FOR X/OPEN PC
`INTERWORKING: SMB, VERSION 2.0 (1992) (Ex. 1014, “NetBIOS”).
`3 U.S. Patent No. 5,375,068, issued Dec. 20, 1994 (Ex. 1020, “Palmer”).
`3
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`Case IPR2015-01011
`Patent 6,108,704 C1
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`As the movant, Petitioner bears the burden to show that joinder is
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`appropriate. 37 C.F.R. § 42.20(c). In its Motion for Joinder, Petitioner
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`contends that joinder is appropriate because “it is the most expedient way to
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`secure the just, speedy, and inexpensive resolution of the related
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`proceedings” because (1) Petitioner represents that IPR2015-01011 is
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`identical to IPR2014-01366 in all substantive aspects, including identical
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`grounds, analysis, exhibits, and relies upon the same expert declaration;
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`(2) Petitioner agrees to (a) incorporate its filings with Samsung, (b) not
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`advance any separate arguments from those advanced by Samsung, and
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`(c) to consolidated discovery; (3) joinder will not have any impact on the
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`IPR2014-01366 schedule; and (4) there will be no prejudice to Patent
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`Owner. Mot. 4–8.
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`Acting on behalf of the Director, we have discretion to join
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`proceedings. 35 U.S.C. § 315(c). In exercising our discretion, we consider
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`the impact of both substantive issues and procedural matters on the
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`proceedings.
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`The substantive issues in IPR2014-01366 will not be affected by
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`joinder because Petitioner asserts the ground of unpatentability for which
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`trial was instituted in IPR2014-01366, presents the same arguments as those
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`advanced by Samsung, and, therefore, our analysis would similarly institute
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`review of the claims for the same grounds for which trial was instituted in
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`IPR2014-01366. Compare Pet. 35–54 with Samsung Elecs. Co. v. Straight
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`Path IP Grp., Inc., IPR2014-01366, Paper 1, 32–49. Further, Petitioner
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`submits the same Declaration of Dr. Henry Houh that Samsung submitted in
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`4
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`Case IPR2015-01011
`Patent 6,108,704 C1
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`support of its Petition. See Ex. 1004; Samsung Elecs. Co. v. Straight Path
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`IP Grp., Inc., IPR2014-01366, Ex. 1004. Thus, the Petition in this
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`proceeding raises no new issues beyond those already before the Board in
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`IPR2014-01366.
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`Regarding procedural matters, Petitioner argues that joinder would not
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`require any change to the trial schedule in IPR2014-01366. Mot. 7.
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`Petitioner further argues that joinder would “permit Petitioner to maintain its
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`ongoing interests in the Board’s review of the ʼ704 patent” in the event
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`Samsung withdraws from the proceeding. Id. at 8.
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`EXHIBIT 1001 REEXAMINTION CERTIFICATE
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`Exhibit 1001, in IPR2014-01366, does not include the Reexamination
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`Certificate. For example, amended claim 14 depends on amended claim 11,
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`which recites the same limitations as originally issued claims 10 and 11.
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`Samsung, in its Petition, presented arguments directed toward the claims as
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`amended. See Samsung Elecs. Co. v. Straight Path IP Grp., Inc., IPR2014-
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`01366, Paper 1. Petitioner, Samsung, and Patent Owner have not raised any
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`arguments or issues based on the failure to include the Reexamination
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`Certificate in Exhibit 1001. However, all further arguments must be directed
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`to the claims as amended by the Reexamination Certificate. Samsung and
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`Petitioner shall file a corrected Exhibit 1001 in IPR2014-01366 that includes
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`the Reexamination Certificate.
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`5
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`Case IPR2015-01011
`Patent 6,108,704 C1
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`CONCLUSION
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`Under the circumstances, we conclude Petitioner has demonstrated
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`that joinder will not unduly complicate or delay IPR2014-01366, and
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`therefore joinder is appropriate.
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`
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`Accordingly, it is:
`
`ORDER
`
` ORDERED that Petitioner’s Motion for Joinder with IPR2014-01366
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`is granted;
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` FURTHER ORDERED that this proceeding is joined with IPR2014-
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`01366;
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` FURTHER ORDERED that the ground on which a trial was instituted
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`in IPR2014-01366 is unchanged and that no other grounds raised in the
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`IPR2015-01011 Petition are authorized for inter partes review;
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` FURTHER ORDERED that the Scheduling Order for IPR2014-01366
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`(Paper 13) shall govern the joined proceedings;
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`
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`FURTHER ORDERED that throughout the proceeding, Samsung and
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`Petitioner will file papers as consolidated filings, except for motions that do
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`not involve the other party, in accordance with the Board’s established rules
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`regarding page limits. So long as they both continue to participate in the
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`merged proceeding, Samsung and Petitioner will identify each such filing as
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`a Consolidated Filing and will be responsible for completing all consolidated
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`filings;
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`
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`FURTHER ORDERED that Petitioner will refrain from requesting or
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`reserving any additional depositions or deposition time;
`6
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`Case IPR2015-01011
`Patent 6,108,704 C1
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`FURTHER ORDERED that Samsung and Petitioner will jointly
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`conduct the cross-examination of any given witness produced by Patent
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`Owner and the redirect of any given witness produced by Samsung or
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`Petitioner within the timeframe normally allotted by the rules for one party.
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`Samsung and Petitioner will not receive any separate cross-examination or
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`redirect time;
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`
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`FURTHER ORDERED that Patent Owner will conduct any cross-
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`examination of any given witness jointly produced by Samsung or Petitioner
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`and the redirect of any given witness produced by Straight Path within the
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`time frame normally allotted by the rules for one cross-examination or
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`redirect examination;
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`
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`FURTHER ORDERED that Samsung and Petitioner agree not to
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`request additional oral hearing time solely on the basis of the participation of
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`multiple petitioners;
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`
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`FURTHER ORDERED that Petitioner will assume a second-chair role
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`as long as Samsung remains in the proceeding. Should Samsung cease to be
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`in the proceeding, Petitioner will consolidate its activities with the remaining
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`petitioners for the remainder of the proceeding consistent with the applicable
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`rules and the direction of the Board;
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`
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`FURTHER ORDERED that IPR2015-01011 is instituted, joined, and
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`terminated under 37 C.F.R. § 42.72, and all further filings in the joined
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`proceeding shall be made in IPR2014-01366;
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`7
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`Case IPR2015-01011
`Patent 6,108,704 C1
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` FURTHER ORDERED that the case caption in IPR2014-01366 shall
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`be changed to reflect the joinder with this proceeding in accordance with the
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`attached example;
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` FURTHER ORDERED that all arguments and evidence are to be
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`presented according to the claims as amended under the Reexamination
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`Certificate. Samsung and Petitioner shall file a corrected Exhibit 1001 in
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`IPR2014-01366 that includes the Reexamination Certificate; and
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` FURTHER ORDERED that a copy of this Decision be entered into
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`the file of IPR2014-01366.
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`
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`FOR PETITIONER:
`
`Brian Erickson
`Jeff Cole
`DLA Piper, LLP
`Samsung-sp-ipr@dlapiper.com
`
`
`FOR PATENT OWNER:
`
`William Meunier
`Matthew Durell
`Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
`StraightpathIPRs@mintz.com
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`8
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`Trials@uspto.gov
`571-272-7822
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` Paper 12
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`
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` Entered: June 5, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
`CISCO SYSTEMS, INC., and AVAYA, INC.,
`Petitioner,
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-013661
`Patent 6,108,704 C1
`____________
`
`
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`1 IPR2015-01011 has been joined with this proceeding.
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