Filed: January 10, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`INTEL CORP. and CAVIUM, INC.,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`______________________
`
`Case IPR2017-014061
`U.S. Patent No. 7,673,072
`______________________
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION FOR ADDITIONAL DISCOVERY
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` 1
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` Cavium, Inc., which filed a Petition in Case IPR2017-01707, has been joined as a
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`petitioner in this proceeding.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`INTEL CORP. and CAVIUM, INC.,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`______________________
`
`Case IPR2017-014061
`U.S. Patent No. 7,673,072
`______________________
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION FOR ADDITIONAL DISCOVERY
`
`
`
`
`
`
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` 1
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` Cavium, Inc., which filed a Petition in Case IPR2017-01707, has been joined as a
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`petitioner in this proceeding.
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`TABLE OF CONTENTS
`
`Introduction ...................................................................................................... 1
`I.
`Intel is the Real Party in Interest ..................................................................... 2
`II.
`III. The Requested Discovery is Not “Necessary in the Interest of Justice” ......... 3
`A. Garmin Factor 1: No “Useful Information” Exists ............................... 3
`1.
`Alacritech’s Arguments are Based on Speculation .................... 3
`2.
`Information .................................................................................. 7
`B.
`Burdensome ........................................................................................... 8
`IV. Conclusion ....................................................................................................... 9
`
`The Requested Discovery Will Not Yield Useful
`
`Garmin Factor 5: Alacritech’s Requested Discovery is Overly
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`
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`i
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`Case IPR2017-01406
`U.S. Patent No. 7,673,072
`
`I.
`
`INTRODUCTION
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`As shown by the attached declarations, the Defendants and Intervenor
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`Cavium had no role in preparing and filing the Petitions.2 Ex. 1110; Ex. 1111.
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`Defendants are not real parties-in-interest (RPIs) and no amount of discovery will
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`show otherwise.
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`Discovery in inter partes review (“IPR”) is “less than what is normally
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`available in district court patent litigation” because “Congress intended inter partes
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`review to be a quick and cost effective alternative to litigation.” Apple Inc. v.
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`Achates Reference Publishing, Inc., IPR2013-00080, Paper 18 at 3 (PTAB April 3,
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`2013). The Board must therefore be “conservative in authorizing additional
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`discovery.” Id. Additional discovery should only be permitted when such
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`discovery is “necessary in the interest of justice.” Id. at 4. And the requested
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`discovery must be premised on more than “mere possibility.” Id. There must be
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`“factual evidence or support” underlying a request for additional discovery that
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`demonstrate that “something useful [to the proceeding] will be found.” Id.
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`Alacritech, despite all of its rhetoric, has failed entirely to satisfy this standard.
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`
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` 2
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` IPR2017-01391, IPR2017-01392, IPR2017-01393, IPR2017-01405, IPR2017-
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`01406, IPR2017-01409, IPR2017-01410.
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`
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`1
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`Case IPR2017-01406
`U.S. Patent No. 7,673,072
`Alacritech’s Motion, which is premised on nothing more than Alacritech’s
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`“belief,” is precisely the type of “fishing expedition” the PTAB has cautioned
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`against. Alacritech’s “evidence” is nothing more than vague and speculative
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`allegations regarding indemnification and joint defense. Alacritech has failed to
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`make any evidentiary showing—and any effort to do so is futile.
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`II.
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`INTEL IS THE REAL PARTY IN INTEREST
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`The RPI is “the party that desires review of the patent”—that is, the party “at
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`whose behest the petition has been filed.” Office Patent Trial Practice Guide, 77
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`Fed. Reg. 48,756 at 48,759 (Aug. 14, 2012). “For example, a party that funds and
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`directs and controls an IPR ... petition or proceeding constitutes a ‘real part-in-
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`interest.’” Id. at 58,760. The RPI requirement exists to ensure that a non-party is
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`not “litigating through a proxy.” Ricoh Americas Corp. v. MPHJ Tech. Invest.,
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`LLC, IPR2015-01178, Paper 8 at 1 (PTAB Aug. 6, 2015). Moreover, the RPI
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`analysis is a narrowly tailored inquiry into the “relationship between a party and a
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`proceeding;” not the relationship between parties. Id.
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`Attached hereto, Intel has submitted sworn declarations from both its in-
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`house counsel, S. Christopher Kyriacou, and its lead attorney, Garland Stephens,
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`stating that Intel was solely responsible for filing these Petitions—(1) Intel alone
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`made the decision to file the Petitions, (2) Defendants and Cavium did not direct,
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`control, request or suggest that Intel file the Petitions, (3) Intel received no input
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`2
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`Case IPR2017-01406
`U.S. Patent No. 7,673,072
`and did not consult with any other entity or person in preparing the Petitions, (4)
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`Intel did not share any drafts or summaries of the Petitions prior to filing the
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`Petitions, and (5) Intel paid all costs associated with the Petitions. Ex. 1110, ¶¶ 3-
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`7; Ex. 1111, ¶¶ 2-4.
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`After Intel intervened in the three Alacritech Litigations (“Litigations”),
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`Alacritech filed counterclaims against Intel accusing Intel of infringement. Ex.
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`1112. Intel has a direct interest in invalidating these patents and, in its own
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`capacity, without consultation with any of the Defendants, filed these Petitions to
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`protect that interest. Ex. 1110, ¶ 4; Ex. 1111, ¶¶ 2-3.
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`III. THE REQUESTED DISCOVERY IS NOT “NECESSARY IN THE
`INTEREST OF JUSTICE”
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`The Board has articulated five factors that are relevant to determining
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`whether Alacritech is entitled to additional discovery. Garmin Int’l, Inc. v. Cuozzo
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`Speed Techs, IPR2012-00001, Paper 26 at 6 (PTAB March 5, 2013). Alacritech
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`has failed to meet its burden in showing such discovery is necessary.
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`A. Garmin Factor 1: No “Useful Information” Exists
`1.
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`Alacritech’s Arguments are Based on Speculation
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`Under the first factor, Alacritech must present evidence “tending to show
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`beyond speculation that in fact something useful will be uncovered.” Garmin,
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`Paper 26 at 6. Alacritech’s “evidence” only shows (1) indemnification obligations
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`and (2) a joint defense in the Litigations. Neither of these supports Alacritech’s
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`
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`3
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`Case IPR2017-01406
`U.S. Patent No. 7,673,072
`allegation that there is “intentional concealment” of the RPIs. See, e.g., Broadcom
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`Corp. v. Ericsson, IPR2013-00601, Paper 23 (PTAB Jan. 24, 2014) (denying
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`discovery request with respect to a petitioner under similar facts).
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`Alacritech relies heavily on the fact that Intel has certain indemnification
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`obligations. Yet, the fact that Intel has indemnification obligations does not show
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`“beyond speculation” that the Defendants had any role in drafting and filing the
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`Petitions. Wavemarket Inc. v. Locationet Systems, IPR2014-00199, Paper 34 at 6
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`(PTAB Aug. 11, 2014) (finding indemnification agreements and shared counsel
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`failed to demonstrate beyond speculation that something useful would be
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`obtained). And importantly, Alacritech has no evidence beyond speculation that
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`Defendants “fund”, “direct”, or “control” the Petitions—because they do not.
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`Alacritech claims that it “was forced to file a motion to compel the
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`indemnification and defense agreements” in the Litigations. Motion at 3. To the
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`contrary, Alacritech only filed that as a contingent motion on the last day of
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`discovery in retaliation for Intel moving to compel production of Alacritech’s
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`litigation funding agreements. These litigation discovery disputes have no bearing
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`on this matter. Nor would the evidence sought show any improper identification of
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`RPIs in the Petitions. See Ricoh, Paper 8 at 2 (“[A]ll litigation where a ... retailer is
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`a party and the manufacturer is not raises issues of indemnification... If we allowed
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`4
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`Case IPR2017-01406
`U.S. Patent No. 7,673,072
`discovery on the real party in interest in every such situation, our timely and
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`efficient review procedure would be lost.”)
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`Second, Alacritech relies on the fact that Intel is a co-defendant in the
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`Litigations. However, this does not show that any of the Defendants is a RPI. See
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`Office Patent Trial Practice Guide, 77 F3d. Reg. at 48760 (“[I]f Party A is part of a
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`Joint Defense Group with Party B in a patent infringement suit ... Party A is not a
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`‘real party-in-interest’ ... based solely on its participation in that Group.”).
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`Alacritech offers no evidence beyond pure speculation that Defendants or Cavium
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`control or have the right to control this proceeding. See Wavermarket, Paper 34 at
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`6 (finding joint defense/common interest agreement does not demonstrate beyond
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`speculation that something useful will be uncovered regarding RPI). They do not.
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`Alacritech’s four pieces of alleged “evidence” regarding the joint defense
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`arrangement are nothing more than Alacritech’s own speculation. As joint
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`defendants in cases consolidated for pretrial activities, all parties must necessarily
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`coordinate invalidity theories because only one set of invalidity contentions is
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`permitted by the Court. See Ricoh, Paper 8 at 2 (finding that “the Petitioner and
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`infringing defendants are cooperating in the district court litigation is of no
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`moment to the real party in interest here”). Moreover, Alacritech’s claim that the
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`parties share the same “technical expert” is at best incomplete. Motion at 7. Intel
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`and the Defendants shared the same technical expert for the claim construction
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`5
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`Case IPR2017-01406
`U.S. Patent No. 7,673,072
`because the Court only allowed the defendants a single claim construction brief for
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`the three consolidated Litigations. Each of the Defendants and Intervenors had
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`their own technical experts for non-infringement and damages reports.
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`Third, Alacritech relies on redacted invoices from Dell. Alacritech offers no
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`dates, no meaningful description of the invoices, nor any other information, other
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`than baldly alleging that certain entries relate to art-based invalidity defenses. This
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`is unsurprising and not probative to this motion—the parties served invalidity
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`contentions in the Litigations. Intel has never seen those invoices, and, based on
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`Alacritech’s vague description, it is clear that Alacritech is only speculating they
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`cover work on the Petitions. Finally, Alacritech points to Defendants’ agreement
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`to be bound by the same estoppel as Intel. Motion at 7. But, Alacritech required
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`the Defendants to agree to be estopped as a condition to staying the Litigations
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`pending IPRs. Ex. 2017. None of this remotely suggests that the Defendants
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`controlled or directed or funded the Petitions.3
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`Indeed, Alacritech merely states throughout its Motion that it has a “belief”
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`that “documents exist” that will “demonstrate that Intel ... intentionally concealed
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`RPIs.” Motion at 1, 4. This use of the word “belief” signals speculation.
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` 3
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` The case that Alacritech relies on, IPR2017-00185, (Motion at 8, n.6) relates to a
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`Petitioner who was a wholly-owned subsidiary of the non-party and is inapposite.
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`6
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`Case IPR2017-01406
`U.S. Patent No. 7,673,072
`CaptionCall LLC v. Ulatratec, Inc., IPR2015-00636, Paper 42 at 17-18 (PTAB Feb
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`23, 2016) (finding that the use of the word “believes” in a motion for additional
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`discovery supported that the discovery requests were based on mere speculation).
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`Alacritech also suggests that “[c]ertain of Intel’s ... petitions” were “filed
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`more than one year after service of the Complaint on the original customer
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`defendants.” Motion at 6. To the contrary, every instituted Petition was filed prior
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`to the bar date for the earliest-sued Defendants.4 Alacritech’s contention that any
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`of these Petitions will be “time-barred” based on the one-year bar is wrong.
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`2.
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`The Requested Discovery Will Not Yield Useful Information
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`“Useful” under Garmin Factor 1 “does not mean merely ‘relevant’ and/or
`
`admissible.” Garmin, Paper 26 at 7. Instead, “useful” means “favorable in
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`substantive value to a contention of the party moving for discovery.” Id. None of
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`Alacritech’s discovery requests would result in production of anything of
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`substantive value to Alacritech.
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`The two interrogatories request identification of people (other than Petitioner
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`and Petitioners’ counsel) who provided assistance on the Petitions or received the
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`Petitions before they were filed. Ex. 2011. There are no such people. The
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` There are two additional Intel IPR petitions that were filed, but they have not yet
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` 4
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`been instituted and are not currently at issue.
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`7
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`Case IPR2017-01406
`U.S. Patent No. 7,673,072
`attached declarations demonstrate that the Petitions were prepared solely by
`
`Petitioner Intel and its counsel and no drafts of the Petitions or the Petitions
`
`themselves were shared prior to filing. Ex. 1110; Ex. 1111.
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`Further, Intel has nothing responsive to any of the RFPs that is relevant to
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`the issue of RPI. There are no other entities who have contributed monetarily to
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`the Petitions (RFP No. 3). Similarly, there are no other entities who have funded or
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`been involved in the preparation or filing of the Petitions (RFP No. 5). Nor does
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`Intel have access to the Dell invoices that Alacritech requests (RFP No. 4). The
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`remaining requests (RFP Nos. 1 and 2) relate to indemnification agreements, joint
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`defense agreements, and agreements related to the Petitions (RFP Nos. 1 and 2).
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`Intel does not have any agreements related to the Petitions with the Defendants or
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`Cavium. Furthermore, as set forth above, Alacritech has failed to establish, beyond
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`mere speculation, that the requested discovery regarding indemnification and joint
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`defense agreements will contain any useful information.
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`B. Garmin Factor 5: Alacritech’s Requested Discovery is Overly
`Burdensome
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`Alacritech’s discovery requests are not “narrowly tailored.” Motion at 10.
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`To the contrary, RFPs No. 1 and 2 seek information that would be unduly
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`burdensome to obtain, is highly confidential, and in many cases privileged.
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`RFP No. 1 does not just ask for indemnity agreements, but instead asks for,
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`among other things, “documents giving rise to such indemnification obligations.”
`8
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`Case IPR2017-01406
`U.S. Patent No. 7,673,072
`This vague request encompasses a range of commercially sensitive and highly
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`confidential documents that may in some cases be privileged. The pending
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`Litigations involved three separate (and litigated) protective orders to prevent
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`Defendants, Cavium and Intel from seeing certain confidential information that
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`each produced to Alacritech. Intel is a competitor of Cavium—and would not
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`share this type of information with Cavium. It is overly burdensome to have Intel
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`produce such confidential information when Alacritech has not demonstrated that
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`those agreements in any way provide for Defendants’ right or ability to control
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`these Petitions. And, as the submitted declarations show, neither Defendants nor
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`Cavium have any such right or ability. Ex. 1110; Ex. 1111.
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`RFP No. 2 seeks agreements and proposals for agreements, including any
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`discussions, related to the Petitions or the Challenged Patents. Not only does this
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`request irrelevant information, it also requests joint defense agreements and
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`communications about those joint defense agreements, which are privileged under
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`the common interest doctrine and not discoverable. Moreover, Alacritech has not
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`provided any evidence beyond speculation that these agreements provide the
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`Defendants with the right or ability to control the Petitions.
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`IV. CONCLUSION
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`Petitioner respectfully requests that Alacritech’s Motion be denied.
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`9
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`Dated: January 10, 2018
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`
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`Case IPR2017-01406
`U.S. Patent No. 7,673,072
`
`Respectfully submitted,
`
`
`/s/ Garland T. Stephens
`Garland T. Stephens, Reg. No. 37,242
`Weil, Gotshal & Manges LLP
`700 Louisiana, Suite 1700
`Houston, TX 77002
`Tel: (713) 546-5000
`Fax: (713) 224-9511
`garland.stephens@weil.com
`
`Anne M. Cappella, Reg. No. 43,217
`Adrian Percer, Reg. No. 46,986
`Jeremy Jason Lang, Reg. No. 73,604
`Weil, Gotshal & Manges LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065
`Tel: (650) 802-3141
`Fax: (650) 802-3100
`anne.cappella@weil.com
`adrian.percer@weil.com
`jason.lang@weil.com
`
`Attorneys for Petitioner Intel Corporation
`
`
`
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`10
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`
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`CERTIFICATE OF SERVICE
`
`I hereby certify that on January 10, 2018, a copy of PETITIONER’S
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`OPPOSITION TO PATENT OWNER’S MOTION FOR ADDITIONAL
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`DISCOVERY was served by filing this document through the PTAB’s E2E Filing
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`System as well as delivering a copy via electronic mail upon the following:
`
`James M. Glass
`Registration No. 46,729
`Quinn Emanuel Urquhart & Sullivan LLP
`51 Madison Ave., 22nd Fl.
`New York, NY 10010
`Tel.: (212) 849-7000
`Email: jimglass@quinnemanuel.com
`
`Joseph M. Paunovich
`Registration No. 59,033
`Quinn Emanuel Urquhart & Sullivan LLP
`865 S. Figueroa Street, 10th Fl.
`Los Angeles, CA 90017
`Tel.: (213) 443-3000
`Email: joepaunovich@quinnemanuel.com
`
`Brian E. Mack
`Registration No. 57,189
`Quinn Emanuel Urquhart & Sullivan LLP
`50 California Street, 22nd Fl.
`San Francisco, CA 94111
`Tel.: (415) 875-6600
`Email: brianmack@quinnemanuel.com
`
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`
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`
`
`Mark Lauer
`Registration No. 36,578
`Silicon Edge Law Group LLP
`7901 Stoneridge Dr., Ste. 528
`Pleasanton, CA 94588
`Tel.: (925) 621-2121
`Email: mark@siliconedgelaw.com
`
`
`
`Dated: January 10, 2018
`
`/s/ Garland T. Stephens
`Garland T. Stephens
`Reg. No. 37,242
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