`Trials@uspto.gov
`571-272-7822 Entered: January 25, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORPORATION and CAVIUM, INC.,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Cases IPR2017-01391 (Patent 7,237,036 B2)
`IPR2017-01392 (Patent 7,337,241 B2)
`IPR2017-01393 (Patent 9,055,104 B2)
`IPR2017-01405 (Patent 7,124,205 B2)
`IPR2017-01406 (Patent 7,673,072 B2)
`IPR2017-01409 (Patent 8,131,880 B2)
`IPR2017-01410 (Patent 8,131,880 B2)1
`____________
`
`
`
`Before STEPHEN C. SIU, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`1 Cavium, Inc., which filed petitions in Cases IPR2017-01707,
`IPR2017-01714, IPR2017-01718, IPR2017-01728, IPR2017-01735,
`IPR2017-01736, and IPR2017-01737, has been joined as a petitioner in
`these proceedings. This Order applies to each referenced case. The parties
`are not authorized to use this heading style.
`
`
`
`IPR2017-01391 (Patent 7,237,036 B2)
`IPR2017-01392 (Patent 7,337,241 B2)
`IPR2017-01393 (Patent 9,055,104 B2)
`IPR2017-01405 (Patent 7,124,205 B2)
`IPR2017-01406 (Patent 7,673,072 B2)
`IPR2017-01409 (Patent 8,131,880 B2)
`IPR2017-01410 (Patent 8,131,880 B2)
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`By email message dated January 23, 2018, Patent Owner, Alacritech,
`Inc., requested the Board’s permission to file contingent motions to amend
`pursuant to 37 C.F.R. § 42.121 in each of the above-captioned cases and
`proposed a briefing schedule therefor. Patent Owner represented in its email
`message that it conferred with Petitioner, Intel Corporation and Cavium,
`Inc., and that, although Petitioner intends to oppose the motions to amend,
`Petitioner does not oppose Patent Owner’s proposed briefing schedule.
`Patent Owner also represented that the parties have agreed to different due
`dates for Patent Owner’s Response to the Petition and for Petitioner’s Reply
`to Patent Owner’s Response than those set forth in the Scheduling Order
`entered in each case, as expressly permitted in each Scheduling Order (see,
`e.g., IPR2017-01391, Paper 9, 2 (PTAB Nov. 28, 2017)).
`In view of the parties’ agreement as to the briefing schedule for Patent
`Owner’s motions to amend and as to the due dates for Patent Owner’s
`Response and Petitioner’s Reply, we grant Patent Owner’s request. In
`particular:
`Patent Owner is authorized to file a Motion To Amend, not to exceed
`12 pages, in each case, by January 29, 2018;
`
`2
`
`
`
`IPR2017-01391 (Patent 7,237,036 B2)
`IPR2017-01392 (Patent 7,337,241 B2)
`IPR2017-01393 (Patent 9,055,104 B2)
`IPR2017-01405 (Patent 7,124,205 B2)
`IPR2017-01406 (Patent 7,673,072 B2)
`IPR2017-01409 (Patent 8,131,880 B2)
`IPR2017-01410 (Patent 8,131,880 B2)
`
`
`Petitioner is authorized to file an Opposition to Patent Owner’s
`Motion To Amend, not to exceed 25 pages, in each case, by April 4, 2018;
`Patent Owner is authorized to file a Reply to Petitioner’s Opposition
`to Patent Owner’s Motion To Amend, not to exceed 25 pages, in each case,
`by May 18, 2018; and
`Petitioner is authorized to file a Sur-reply to Patent Owner’s Reply to
`Petitioner’s Opposition to Patent Owner’s Motion To Amend, not to exceed
`12 pages, in each case, by June 1, 2018.
`Further, the due date for Patent Owner’s Response to the Petition,
`currently set for February 5, 2018, is changed to February 14, 2018; and the
`due date for Petitioner’s Reply to Patent Owner’s Response to the Petition,
`currently set for April 18, 2018, is changed to April 27, 2018. All other due
`dates set forth in the respective Scheduling Orders remain unchanged.
`We additionally provide the following guidance with respect to the
`proposed motions to amend in accordance with 37 C.F.R. § 42.121. First,
`Patent Owner is reminded that each Motion To Amend must be responsive
`to a ground of unpatentability on which trial was instituted in the respective
`case and may not seek to enlarge the scope of the claims of the respective
`patent or introduce new subject matter. Id. § 42.121(a)(2). Further, a
`motion to amend may cancel a challenged claim or propose a reasonable
`number of substitute claims, where a “reasonable” number is presumed to be
`only one substitute claim per challenged claim. Id. § 42.121(a)(3). This
`presumption may be rebutted upon demonstration of a need to present more
`
`3
`
`
`
`IPR2017-01391 (Patent 7,237,036 B2)
`IPR2017-01392 (Patent 7,337,241 B2)
`IPR2017-01393 (Patent 9,055,104 B2)
`IPR2017-01405 (Patent 7,124,205 B2)
`IPR2017-01406 (Patent 7,673,072 B2)
`IPR2017-01409 (Patent 8,131,880 B2)
`IPR2017-01410 (Patent 8,131,880 B2)
`
`than one substitute claim per challenged claim. Id. Each Motion To Amend
`also must include a claim listing, which may be included as an appendix to
`the Motion,2 that shows clearly the changes made to the claim or claims for
`which substitute claims are presented and that sets forth the support in the
`original disclosure (or in an earlier filed disclosure for each claim for which
`benefit of the filing date of the earlier filed disclosure is sought) for each
`substitute claim. Id. § 42.121(b). We further direct the parties to the Office
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766–67 (Aug. 14, 2012)
`and the Office’s Memorandum Re: Guidance on Motions to Amend in view
`of Aqua Products (Nov. 17, 2017) (available at https://www.uspto.gov/sites/
`default/files/documents/guidance_on_motions_to_amend_11_2017.pdf)
`(discussing Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017)) for
`additional guidance. Pursuant to the guidance set forth in the latter
`Memorandum, the Board will not place the burden of persuasion on Patent
`Owner with respect to the patentability of substitute claims presented in a
`Motion To Amend, but rather will determine whether substitute claims are
`unpatentable by a preponderance of the evidence based on the entirety of the
`record, including any Opposition made by Petitioner.
`
`
`
`2 Such appendix shall not count against the page limit for the Motion To
`Amend.
`
`4
`
`
`
`IPR2017-01391 (Patent 7,237,036 B2)
`IPR2017-01392 (Patent 7,337,241 B2)
`IPR2017-01393 (Patent 9,055,104 B2)
`IPR2017-01405 (Patent 7,124,205 B2)
`IPR2017-01406 (Patent 7,673,072 B2)
`IPR2017-01409 (Patent 8,131,880 B2)
`IPR2017-01410 (Patent 8,131,880 B2)
`
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner has satisfied the requirement of
`conferring with the Board prior to filing a Motion To Amend under
`37 C.F.R. § 42.121(a) in each of the above-captioned cases;
`FURTHER ORDERED that Patent Owner is authorized to file a
`Motion To Amend in each case, not to exceed 12 pages, by January 29,
`2018;
`
`FURTHER ORDERED that Petitioner is authorized to file an
`Opposition to Patent Owner’s Motion To Amend in each case, limited to
`25 pages in length, by April 4, 2018;
`FURTHER ORDERED that Patent Owner is authorized to file a
`Reply to Petitioner’s Opposition to Patent Owner’s Motion To Amend in
`each case, limited to 25 pages in length, by May 18, 2018;
`FURTHER ORDERED that Petitioner is authorized to file a Sur-reply
`to Patent Owner’s Reply to Petitioner’s Opposition to Patent Owner’s
`Motion To Amend in each case, limited to 12 pages in length, by June 1,
`2018;
`
`FURTHER ORDERED that Patent Owner’s due date for filing its
`Response to the Petition, currently set for February 5, 2018, is changed to
`February 14, 2018;
`
`5
`
`
`
`IPR2017-01391 (Patent 7,237,036 B2)
`IPR2017-01392 (Patent 7,337,241 B2)
`IPR2017-01393 (Patent 9,055,104 B2)
`IPR2017-01405 (Patent 7,124,205 B2)
`IPR2017-01406 (Patent 7,673,072 B2)
`IPR2017-01409 (Patent 8,131,880 B2)
`IPR2017-01410 (Patent 8,131,880 B2)
`
`
`FURTHER ORDERED that Petitioner’s Reply to Patent Owner’s
`Response to the Petition, currently set for April 18, 2018, is changed to
`April 27, 2018; and
`FURTHER ORDERED that all other due dates set forth in the
`respective Scheduling Order in each case remain unchanged.
`
`
`
`
`
`6
`
`
`
`IPR2017-01391 (Patent 7,237,036 B2)
`IPR2017-01392 (Patent 7,337,241 B2)
`IPR2017-01393 (Patent 9,055,104 B2)
`IPR2017-01405 (Patent 7,124,205 B2)
`IPR2017-01406 (Patent 7,673,072 B2)
`IPR2017-01409 (Patent 8,131,880 B2)
`IPR2017-01410 (Patent 8,131,880 B2)
`
`FOR PETITIONER:
`Garland Stephens
`Anne M. Cappella
`Adrian Percer
`Jeremy Jason Lang
`WEIL, GOTSHAL & MANGES LLP
`garland.stephens@weil.com
`anne.cappella@weil.com
`adrian.percer@weil.com
`jason.lang@weil.com
`
`Patrick D. McPherson
`David T. Xue
`DUANE MORRIS LLP
`PDMcPherson@duanemorris.com
`DTXue@duanemorris.com
`
`
`FOR PATENT OWNER:
`
`James M. Glass
`Joseph Paunovich
`Brian Mack
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`jimglass@quinnemanuel.com
`joepaunovich@quinnemanuel.com
`brianmack@quinnemanuel.com
`
`Mark Lauer
`SILICON EDGE LAW GROUP LLP
`mark@siliconedgelaw.com
`
`
`7
`
`