Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper No. 51
`Entered: May 29, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DELL INC.,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00375
`Patent 7,673,072 B2
`____________
`
`
`Before STEPHEN C. SIU, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review and
`Granting Petitioner’s Motion for Joinder
`35 U.S.C. § 314(a), 37 C.F.R. §§ 42.108, 42.122
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper No. 51
`Entered: May 29, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DELL INC.,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00375
`Patent 7,673,072 B2
`____________
`
`
`Before STEPHEN C. SIU, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review and
`Granting Petitioner’s Motion for Joinder
`35 U.S.C. § 314(a), 37 C.F.R. §§ 42.108, 42.122
`
`
`
`
`
`
`
`
`
`IPR2018‐00375
`
`Patent 7,673,072 B2
`
`
`
`INTRODUCTION
`I.
`Dell Inc. (“Dell” or “Petitioner”), filed a Petition (Paper 2, “Pet.”) for
`inter partes review of claims 1–21 of U.S. Patent No. 7,673,072 B2 (“the
`’072 Patent”) (Ex. 1001) pursuant to 35 U.S.C. §§ 311–319. Petitioner also
`filed a Motion for Joinder. Paper 3 (“Joinder Motion” or “Mot.”). The
`Joinder Motion seeks to join Dell as a petitioner in Intel Corp. v. Alacritech,
`Case IPR2017-01406 (“the 1406 IPR”), to which Cavium, Inc. (“Cavium”)
`and Wistron Corporation (“Wistron”) have previously been joined. Mot. 1;
`see IPR2017-01707, Paper 8; IPR2018-00329, Paper 9. The Joinder Motion
`indicates Intel Corp. (“Intel”) and Cavium do not oppose Dell’s request to
`join that proceeding.1 Id. Alacritech, Inc. (“Patent Owner”) filed a
`Preliminary Response. Paper 8 (“Prelim. Resp.”).
`As explained further below, we institute trial in this inter partes
`review on the same ground as instituted in the 1406 IPR, and we grant
`Petitioner’s Motion for Joinder.
`
`
`II. DISCUSSION
`A.
`Institution of Trial
`In the 1406 IPR, Intel, Cavium, and Wistron challenge the
`patentability of claims 1–21 of the ’072 Patent under 35 U.S.C. § 103 over
`Erickson2 and Tanenbaum96.3 IPR2017-01406, Paper 1.
`
`
`1 We note that Dell’s Petition and Joinder Motion were filed prior to the
`joinder of Wistron as a petitioner in the 1406 IPR on April 20, 2018.
`2 U.S. Patent No. 5,768,618. (“Erickson,” Ex. 1005).
`3 Andrew S. Tanenbaum, Computer Networks, Third Edition, 1996
`(“Tanenbaum96,” Ex. 1006).
`
`2
`
`
`
`IPR2018‐00375
`
`Patent 7,673,072 B2
`
`
`
`After considering the Petition and the Patent Owner’s Preliminary
`Response in the 1406 IPR, we instituted trial for the above-identified ground
`of unpatentability. See IPR2017-01406, Paper 10. Petitioner here (Dell)
`represents that the present Petition is substantively identical to the Petition in
`the 1406 IPR and challenges the same claims based on the same ground.
`Mot. 1. We have considered the relevant Petitions and we agree with
`Petitioner’s representation that this Petition is substantially identical to the
`Petition in the 1406 IPR. Compare Pet., with IPR2017-01406, Paper 1.
`Patent Owner’s Preliminary Response does not expressly identify any
`differences from its Preliminary Response in the 1406 IPR. However, after
`reviewing Patent Owner’s Preliminary Responses here and in the 1406 IPR,
`we find the two responses to be substantially identical, with the exceptions
`that Patent Owner argues here that Intel should have been named as a real
`party in interest, whereas Patent Owner presented arguments in the
`Preliminary Response in the 1406 IPR that Intel should have named Cavium
`and Dell as real parties in interest, and Patent Owner omits from the present
`Preliminary Response certain arguments that were made in the Preliminary
`Response in the 1406 IPR. See IPR2017-01406, Paper 9, 17, 18–20 (arguing
`in the context of Patent Owner’s assertion that Dell and Cavium should have
`been named as real parties in interest in the 1406 IPR that “Dell Desires
`Review of the ’072 Patent” and that “Intel Has Effective Choice as to the
`Legal Theories and Proofs of Dell and Cavium”).
`On the record before us, for purposes of this Decision, and for similar
`reasons as in the 1406 IPR, we determine there is insufficient evidence that
`Intel controlled, or had the opportunity to control, this Petition and, thus, is
`not a real party in interest. See Case IPR2017-01406, Paper 10, 3–6.
`
`
`
`3
`
`
`
`IPR2018‐00375
`
`
`
`Patent 7,673,072 B2
`
`
`Moreover, as in the 1406 IPR, there is no allegation that naming additional
`real parties in interest would bar Petitioner in the instant proceeding. See id.
`at 5. Accordingly, the issue Patent Owner raises is not jurisdictional. See
`Lumentum Holdings, Inc. v. Capella Photonics, Inc., Case IPR2015-00739,
`slip op. at 6 (PTAB March 4, 2016) (Paper 38) (precedential).
`Accordingly, for essentially the same reasons stated in our Decision to
`Institute in the 1406 IPR, we conclude Petitioner has established a
`reasonable likelihood of prevailing with respect to at least one challenged
`claim, and we institute trial in this proceeding for claims 1–21 on the same
`ground as in that case.
`
`
`
`B. Motion for Joinder
`Based on authority delegated to us by the Director, we have discretion
`to join a petitioner for inter partes review to a previously instituted inter
`partes review. 35 U.S.C. § 315(c). Section 315(c) provides, in relevant
`part, that “[i]f 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.” Id.
`Without opposition to the Joinder Motion from any party, we grant
`Petitioner’s Motion for Joinder with the 1406 IPR subject to the condition
`that, in the joined proceeding, Dell will be bound by all substantive and
`procedural filings and representations of Intel, Cavium, and Wistron in the
`1406 IPR, without a separate opportunity to be heard, whether orally or in
`writing, unless and until the joined proceeding is terminated with respect to
`all three of Intel, Cavium, and Wistron.
`
`4
`
`
`
`IPR2018‐00375
`
`Patent 7,673,072 B2
`
`
`
`In view of the foregoing, we determine that joinder based upon the
`above-noted condition will have little or no impact on the timing, cost, or
`presentation of the trial on the instituted ground. Moreover, discovery and
`briefing will be simplified if Dell is joined as a petitioner in the 1406 IPR.
`
`
`
`
`III. ORDER
`After due consideration of the record before us, and for the foregoing
`
`reasons, it is:
`
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`hereby instituted for claims 1–21 of the ’072 Patent as obvious under 35
`U.S.C. § 103(a) over Erickson and Tanenbaum96;
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2017-01406 is granted, and Dell Inc., is joined as a petitioner in
`IPR2017-01406 pursuant to 37 C.F.R. § 42.122(b), on the condition that, in
`the joined proceeding, Petitioner here (i.e., Dell Inc.) will be bound by all
`substantive and procedural filings and representations of current Petitioner in
`IPR2017-01406 (i.e., Intel Corp., Cavium, Inc., and Wistron Corporation),
`without a separate opportunity to be heard, whether orally or in writing,
`unless and until the joined proceeding is terminated with respect to
`Petitioners Intel, Cavium, and Wistron in IPR2017-01406;
`FURTHER ORDERED that the ground on which an inter partes
`review was instituted in Case IPR2017-01406 remains unchanged, and no
`other grounds are instituted in the joined proceedings;
`FURTHER ORDERED that the Scheduling Order in place for
`IPR2017-01406 (Paper 12) shall govern the joined proceedings;
`
`5
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`
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`IPR2018‐00375
`
`Patent 7,673,072 B2
`
`
`
`FURTHER ORDERED that IPR2018-00375 is terminated under
`37 C.F.R. § 42.72, and that all future filings in the joined proceeding are to
`be made only in IPR2017-01406;
`FURTHER ORDERED that the case caption in IPR2017-01406 for all
`further submissions shall be changed to add Petitioner (Dell Inc.) as a named
`Petitioner, and to indicate by footnote the joinder of Petitioner Dell to that
`proceeding, as indicated in the attached sample case caption; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2017-01406.
`
`
`
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`
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`
`
`6
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`IPR2018‐00375
`
`
`
`Patent 7,673,072 B2
`
`PETITIONER:
`Christopher TL Douglas
`Kirk Bradley
`ALSTON & BIRD LLP
`christopher.douglas@alston.com
`kirk.bradley@alston.com
`
`Garland Stephens
`Adrian Percer
`Jeremy Lang
`WEIL, GOTSHAL & MANGES LLP
`Garland.stephens@weil.com
`Adrian.percer@weil.com
`Jason.lang@weil.com
`
`Patrick D. McPherson
`David T. Xue, Ph.D.
`Karineh Khachatourian
`DUANE MORRIS LLP
`pdmcpherson@duanemorris.com
`dtxue@duanemorris.com
`karinehk@duanemorris.com
`
`PATENT OWNER:
`James M. Glass
`Joseph M. Paunovich
`Brian E. Mack
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`jimglass@quinnemanuel.com
`joepaunovich@quinnemanuel.com
`brianmack@quinnemanuel.com
`
`
`
`
`
`7
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORP., CAVIUM, INC.,
`WISTRON CORPORATION, and DELL INC.
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-014061
`Patent 7,673,072 B2
`
`
`
`
`1 Cavium, Inc., which filed a Petition in Case IPR2017-01707, Wistron
`Corporation, which filed a Petition in Case IPR2018-00329, and Dell Inc.,
`which filed a Petition in Case IPR2018-00375, have been joined as
`petitioners in this proceeding.
`
`
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