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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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`GOOGLE LLC
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`Petitioner
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`v.
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`IRON OAK TECHNOLOGIES, LLC
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`(record) Patent Owner.
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`Case IPR2019-00110
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`Patent No. 5,699,275
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`MOTION FOR JOINDER
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`35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b)
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`IPR2019-00110
`Patent 5,699,275
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`I.
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`STATEMENT OF RELIEF REQUESTED
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`Google LLC (“Joinder Petitioner”) respectfully moves for joinder under 35
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`U.S.C. § 315(c) and 37 C.F.R. § 42.122(b) of its petition for inter partes review in
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`this proceeding (“Joinder Petition”) with the instituted inter partes review petition
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`in Samsung Electronics Co., Ltd. v. Iron Oak Technologies, Case No. IPR2018-
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`01552 (“Samsung Petition”).
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`The Joinder Petition is substantively identical to the Samsung Petition, relying
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`on the same grounds and the same evidence in challenging the same claim of the
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`same patent as the Samsung Petition. Moreover, Joinder Petitioner expressly agrees
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`to adhere to the Board’s schedule in IPR2018-01552 upon institution and to take an
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`“understudy” role in the joined proceedings. Accordingly, joinder is appropriate
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`because it will promote efficient resolution of the validity of the involved patent,
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`will not cause any undue delay, and will not prejudice or burden the parties in
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`IPR2018-01552.
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`This motion for joinder is timely under 37 C.F.R. §§ 42.22 and 42.122(b)
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`because it is being filed not more than 1 month after institution of the Samsung
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`Petition in IPR2018-01552 (instituted Feb. 27, 2019).
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`II.
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`STATEMENT OF MATERIAL FACTS
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`On August 21, 2018, Samsung Electronics Co., Ltd. (“Samsung”) filed a
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`petition for inter partes review (IPR2018-01552) of claim 1 of U.S. Patent No.
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`IPR2019-00110
`Patent 5,699,275
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`5,699,275 (“the ‘275 patent”), citing three grounds of unpatentability. A notice
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`according filing date was mailed on September 11, 2018. A preliminary response to
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`the Samsung Petition was filed on December 11, 2018.
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`On October 24, 2018, Joinder Petitioner filed its Joinder Petition in the instant
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`IPR2019-00110 proceeding challenging the same claim of the ‘275 patent on the
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`same grounds as the Samsung Petition. Compare Joinder Petition at 3-71, with
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`Samsung Petition at 3-71. Accordingly, as noted above, the Joinder Petition is
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`identical to the Samsung Petition, with only formal matters (such as the caption,
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`mandatory notices, signature of counsel and certificate of service) changed. A
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`preliminary response to the Joinder Petition was filed on February 15, 2019. That
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`preliminary response, according to Patent Owner, is “substantively identical” to
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`Patent Owner’s preliminary response in IPR2018-01552. POPR at 1.
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`On February 27, 2019, the Board instituted the Samsung Petition in IPR2018-
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`01552 as to all grounds set forth in the Samsung Petition.
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`III. STATEMENT OF REASONS FOR REQUESTED RELIEF
`A.
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`Legal Standard
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`The Leahy-Smith America Invents Act (“AIA”) explicitly provides for joinder
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`of inter partes review (“IPR”) proceedings. The statutory provision governing
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`joinder of IPR proceedings is 35 U.S.C. § 315(c) that reads as follows:
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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
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`IPR2019-00110
`Patent 5,699,275
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`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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`“Any request for joinder must be filed, as a motion under § 42.22, no later than one
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`month after the institution date of any inter partes review for which joinder is
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`requested.” 37 C.F.R. § 42.122(b).
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`In exercising its discretion to grant joinder, the Board considers the impact of
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`substantive and procedural issues on the proceedings, as well as other considerations,
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`while being “mindful that patent trial regulations, including the rules for joinder,
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`must be construed to secure the just, speedy, and inexpensive resolution of every
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`proceeding.” See Dell Inc. v. Network-1 Security Solutions, Inc., Case IPR2013-
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`00385, Paper No. 17 at 3 (PTAB July 29, 2013). The Board should “also take into
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`account the policy preference for joining a party that does not present new issues
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`that might complicate or delay an existing proceeding.” Id. at 10.
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`As the Board has explained, “A motion for joinder should: (1) set forth the
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`reasons why joinder is appropriate; (2) identify any new grounds of unpatentability
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`asserted in the petition; (3) explain what impact (if any) joinder would have on the
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`trial schedule for the existing review; and (4) address specifically how briefing and
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`discovery may be simplified.” Id. at 4. Each of these four factors is addressed in
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`IPR2019-00110
`Patent 5,699,275
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`turn below.
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`B.
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`Analysis
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`1.
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`Factor 1: Joinder Is Appropriate
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`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. et al. v. Raytheon Co., IPR2016-00962, Paper 12 at 9
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`(Aug. 24, 2016) (internal quotations and citations omitted); Enzymotec Ltd. et al. v.
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`Neptune Techs. & Bioresources, Inc. IPR2014-00556, Paper No. 19 at 6 (July 9,
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`2014) (The Board is “mindful of a policy preference for joining a party that does not
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`present new issues that might complicate or delay an existing proceeding.”).
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`Here, joinder is appropriate because the Joinder Petition relies on identical
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`arguments and the same grounds raised in the Samsung Petition. Specifically, the
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`Joinder Petition involves the same patent, the same challenged claim, the same prior
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`art, the same exhibits, the same declarations from the same experts, and the same
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`grounds that were instituted in IPR2018-01552. Compare Joinder Petition at 3-71,
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`with Samsung Petition at 3-71.
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`Accordingly, because the Joinder Petition and the Samsung Petition are
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`substantially identical, good cause exists for joining the proceedings so that the
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`Board can efficiently resolve the common grounds in both. Joinder is also
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`appropriate because the Joinder Petition does not present any new issues that would
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`IPR2019-00110
`Patent 5,699,275
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`complicate or delay the proceeding. Finally, joinder is appropriate because the
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`substantial questions of invalidity raised in the Samsung Petition affect the Joinder
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`Petitioner, given that Patent Owner has also asserted the ’275 patent against Joinder
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`Petitioner.
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`2.
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`Factor 2: No New Grounds of Unpatentability Are Asserted
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`As noted above with respect to Factor 1, the Joinder Petition is substantially
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`identical to the Samsung Petition, and involves the same patent, the same challenged
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`claim, the same prior art, and the same grounds as the Samsung Petition.
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`Accordingly, the Joinder Petition does not present any new grounds of
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`unpatentability.
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`3.
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`Factor 3: Joinder Would Have No Impact on the Schedule in
`IPR2018-01552
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`Because the Joinder Petition is substantially identical to the Samsung Petition,
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`there are no new issues for the Patent Owner to address. Moreover, Joinder
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`Petitioner hereby expressly consents to the trial schedule the Board entered in
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`IPR2018-01552. As noted below, Petitioner also agrees to take an “understudy” role
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`in IPR2018-01552, so long as Samsung remains an active party in IPR2018-01552.
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`In addition, because the Joinder Petition relies on the same expert declarations, no
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`additional depositions will be needed for in the joined proceedings. Accordingly,
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`joinder will have little or no impact on the trial schedule in IPR2018-01552.
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`IPR2019-00110
`Patent 5,699,275
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`4.
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`Factor 4: Procedures to Simplify Briefing and Discovery
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`Joining the IPR petitions will simplify discovery. As explained above, the
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`Joinder Petition relies on the same grounds and expert declarations, and Joinder
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`Petitioner expressly agrees to the existing trial schedule in IPR2018-01552. Joinder
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`Petitioner further agrees that, so long as Samsung remains an active party to the
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`proceeding, the following conditions shall apply:
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`a. All filings by the Joinder Petitioner in the joined proceedings shall be
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`consolidated with the filings of Samsung, unless a filing solely concerns
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`issues that do not involve Samsung or concerns issues which Samsung
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`intends to waive (e.g., a motion to amend claims which Samsung does
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`not seek to oppose in full);1
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`b. Joinder Petitioner shall not be permitted to raise any new grounds not
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`already instituted by the Board, or introduce any argument or discovery
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`not already introduced by Samsung;
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`c. Joinder Petitioner shall be bound by any agreement between Patent
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`Owner and Samsung concerning discovery and/or depositions; and
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`1 In the event that Joinder Petitioner believes that a short separate filing is warranted
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`under this paragraph 4.a, then Joinder Petitioner will promptly request a conference
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`call to seek permission and explain its reasons to submit a short separate filing.
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`IPR2019-00110
`Patent 5,699,275
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`d. Joinder Petitioner at deposition shall not receive any direct, cross
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`examination or redirect time beyond that permitted for Samsung in this
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`proceeding alone under either 37 C.F.R. § 42.53 or any agreement
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`between Patent Owner and Samsung.
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`See Mylan Pharms. Inc. v. Novartis AG, IPR2014-00550, Paper 38 at 5 (PTAB Apr.
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`10, 2015); Samsung Elecs., Co., Ltd. v. Raytheon Co., IPR2016-00962, Paper 12 at
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`6 (Aug. 24, 2016); Nidec Corp. v. Intellectual Ventures II LLC, IPR2018- 00598
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`Paper 10 at 5-6 (Apr. 26, 2018).
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`Finally, Patent Owner will not be prejudiced by the Board’s grant of this
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`motion because Joinder Petitioner expressly agrees to take an “understudy” role.
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`Therefore, there would be no additional procedural complexity as Joinder Petitioner
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`would only take the primary role if Samsung ceases to participate in the IPR. See,
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`e.g. Teva Pharmaceuticals USA, Inc. v. Allergan, Inc., IPR2017-00579, Paper No. 9
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`at 5; Mylan Pharmaceuticals Inc. v. Novartis AG et al., IPR2015-00268, Paper No.
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`17 at 5.
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`IV. CONCLUSION
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`For the foregoing reasons, Joinder Petitioner respectfully requests that this
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`proceeding be joined with IPR2018-01552.
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`IPR2019-00110
`Patent 5,699,275
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`Date: February 28, 2019
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`Respectfully submitted,
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`/ Andrew S. Baluch /
`Andrew S. Baluch (RN 57,503)
`Counsel for Petitioner
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`IPR2019-00110
`Patent 5,699,275
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing MOTION FOR
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`JOINDER was served on February 28, 2019 at the following service address of
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`record:
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`adeaver@joneswalker.com
`bmcaughan@yettercoleman.com
`jandrews@yettercoleman.com
`clonvick@yettercoleman.com
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`By: / Andrew S. Baluch /
`Andrew S. Baluch (RN 57,503)
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