Trials@uspto.gov
`571-272-7822
`
`Paper: 58
`Entered: June 11, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORP., CAVIUM, INC., and WISTRON COPORATION,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-013911 Patent 7,237,036 B2
`Case IPR2017-01406 Patent 7,673,072 B2
`____________
`
`INTEL CORP., CAVIUM, INC., and DELL INC.,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-014052 Patent 7,124,205 B2
`Case IPR2017-01409 Patent 8,131,880 B2
`
`1 Cavium, Inc., which filed petitions in Cases IPR2017-01707 and IPR2017-
`01718, and Wistron Corporation, which filed petitions in Cases IPR2018-
`00327 and IPR2018-00329, have been joined as petitioners in IPR2017-
`01391 and IPR2017-01406.
`2 Cavium, Inc., which filed petitions in Cases IPR2017-01735 and IPR2017-
`01736, and Dell, Inc., which filed petitions in Cases IPR2018-00336 and
`IPR2018-00338, have been joined as petitioners in IPR2017-01405 and
`IPR2017-01409.
`
`
`571-272-7822
`
`Paper: 58
`Entered: June 11, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORP., CAVIUM, INC., and WISTRON COPORATION,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-013911 Patent 7,237,036 B2
`Case IPR2017-01406 Patent 7,673,072 B2
`____________
`
`INTEL CORP., CAVIUM, INC., and DELL INC.,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-014052 Patent 7,124,205 B2
`Case IPR2017-01409 Patent 8,131,880 B2
`
`1 Cavium, Inc., which filed petitions in Cases IPR2017-01707 and IPR2017-
`01718, and Wistron Corporation, which filed petitions in Cases IPR2018-
`00327 and IPR2018-00329, have been joined as petitioners in IPR2017-
`01391 and IPR2017-01406.
`2 Cavium, Inc., which filed petitions in Cases IPR2017-01735 and IPR2017-
`01736, and Dell, Inc., which filed petitions in Cases IPR2018-00336 and
`IPR2018-00338, have been joined as petitioners in IPR2017-01405 and
`IPR2017-01409.
`
`
`
`IPR2017-01391 – Patent 7,237,036 B2
`IPR2017-01405 – Patent 7,124,205 B2
`IPR2017-01406 – Patent 7,673,072 B2
`IPR2017-01409 – Patent 8,131,880 B2
`
`____________
`
`Before STEPHEN C. SIU, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`ORDER3
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`3 This order addresses issues that are similar in all identified cases. We
`exercise our discretion to issue one order to be filed in each case. The
`parties are not authorized to use this style heading in subsequent papers.
`
`2
`
`
`
`IPR2017-01391 – Patent 7,237,036 B2
`IPR2017-01405 – Patent 7,124,205 B2
`IPR2017-01406 – Patent 7,673,072 B2
`IPR2017-01409 – Patent 8,131,880 B2
`
`On May 11, 2018, and May 23, 2018, Patent Owner, Alacritech Inc.,
`contacted the Board by email to request permission to file motions to make
`certain corrections to its Contingent Motions to Amend in the above-
`captioned proceedings (i.e., IPR2017-01391 Paper 21; IPR2017-01405
`Paper 20; IPR2017-01406 Paper 25; and IPR2017-01409 Paper 20).
`Exs. 3001, 3002.
`With respect to IPR2017-01391, Patent Owner seeks to correct
`“misnumbered dependencies and an incorrect column heading” in the claim
`listing set forth in Exhibit C to its Contingent Motion to Amend. Ex. 3001.
`Patent Owner contends that the correct citations were provided in Exhibit A
`to the corresponding motion, which relates to the same patent and includes
`corresponding claim language and amendments. Id. Patent Owner further
`represents that Petitioner, Intel Corp. (“Intel”), does not oppose Patent
`Owner’s motion to correct. Id.
`With respect to IPR2017-01405, Patent Owner seeks to correct a
`“typographical error in the claim amendments . . . where the ‘second third
`position’ [in proposed substitute claim 41] was supposed to read the
`‘[[second]] third portion.’” Ex. 3002. Patent Owner further represents that
`Intel does not oppose correction, on the condition that it will be permitted to
`raise arguments about the revised claim language in “its sur-reply.” Id.4
`
`4 We note in this regard that Petitioner has not requested, and we do not
`authorize at this time, the filing of a sur-reply to Patent Owner’s Contingent
`Motion to Amend in any of the above-identified cases.
`
`3
`
`
`
`IPR2017-01391 – Patent 7,237,036 B2
`IPR2017-01405 – Patent 7,124,205 B2
`IPR2017-01406 – Patent 7,673,072 B2
`IPR2017-01409 – Patent 8,131,880 B2
`
`
`
`With respect to IPR2017-01406, Patent Owner seeks to correct an
`omitted “‘and’ before ‘a media access control (MAC) layer address…’ in
`proposed substitute claim 36” and to correct a typographical error in an
`Exhibit number. Ex. 3001. Patent Owner represents that “Petitioner has
`already responded to the contingent motion as if the error had been
`corrected” and further represents that Intel does not oppose Patent Owner’s
`motion to correct. Id.
`With respect to IPR2017-01409, Patent Owner contends that the
`citations for proposed substitute claim 61 in Exhibit A of its contingent
`motion “were inadvertently copied from another case and not updated to
`correctly identify the written description support.” Id. Patent Owner further
`contends that “[t]he correct citations were provided in Exhibit A of Case
`IPR2017-01410, which relates to the same patent and includes
`corresponding claim language and amendments,” and Patent Owner “would
`like to copy the citations from Exhibit A in Case IPR2017-01410 into the
`corresponding limitations of Exhibit A in Case IPR2017-01410.” Id.
`According to Patent Owner, Intel opposes Patent Owner’s request to correct.
`Id.
`
`We have reviewed Patent Owner’s requests and the referenced papers,
`and we authorize Patent Owner to file the requested corrections. We find
`that the corrections Patent Owner seeks to make in IPR2017-01391 and
`IPR2017-01405 are apparent from the documents themselves. Although the
`error in the IPR2017-01406 could be resolved either by addition of the word
`“and,” as Patent Owner seeks, or by addition of the word “or,” we note that
`
`4
`
`
`
`IPR2017-01391 – Patent 7,237,036 B2
`IPR2017-01405 – Patent 7,124,205 B2
`IPR2017-01406 – Patent 7,673,072 B2
`IPR2017-01409 – Patent 8,131,880 B2
`
`
`Petitioner contemplated and addressed both possibilities in its Response in
`Opposition to the Contingent Motion to Amend in that case (see IPR2017-
`01406 Paper 40, 10, 22–23), and as noted above, Patent Owner represents
`that Intel does not oppose correction.
`Lastly, although we find that the errors in IPR2017-01409 would not
`necessarily have been apparent from the documents themselves, particularly
`because Exhibit A appears on its face to refer the correct application and
`merely cites the wrong paragraphs of that application (see IPR2017-01409,
`Paper 20, viii (citing “Exemplary Support in the ’237 Application”)), and
`although we also take notice of Intel’s stated objection to the correction, we
`find that Petitioner also recognized that “[t]he majority of the substantive
`amendments are simply limitations borrowed from instituted claims of the
`880 Patent in this IPR or in Case IPR2017-01410” and that “completely
`different portions of the original disclosure” are cited in IPR2017-01410 for
`the same amended limitations. IPR2017-01409 Paper 38, 2, 6. Patent
`Owner also raises arguments applicable to those citations. See, e.g., id. at 6
`(“These citations [from IPR2017-01410] also fail to specify ‘a packet
`memory’ or describe what it means for a header buffer to be ‘separate from’
`a packet memory.”). On the present record, we conclude that Petitioner
`would not be unfairly prejudiced by Patent Owner’s proposed corrections.
`In consideration of the foregoing, it is
`ORDERED that Patent Owner shall be permitted to file corrected
`exhibits in its Contingent Motions to Amend in Cases IPR2017-01391,
`
`5
`
`
`
`IPR2017-01391 – Patent 7,237,036 B2
`IPR2017-01405 – Patent 7,124,205 B2
`IPR2017-01406 – Patent 7,673,072 B2
`IPR2017-01409 – Patent 8,131,880 B2
`
`
`IPR2017-01405, IPR2017-01406, and IPR2017-01409, as proposed and
`limited as follows:
`Correction of claim dependencies and column headings in
`Exhibit C of IPR2017-01391 Paper 21, to correspond with
`Exhibits A and B thereto;
`Bracketing of the word “second” in each instance of the phrase
`“second third” in proposed claim 41 in Exhibits A–C of
`IPR2017-01405 Paper 20;
`Insertion of “and” before “a media access control (MAC) layer
`address” in proposed claim 36 in Exhibits A–C of
`IPR2017-01406 Paper 25; and
`Replacement of citations in Exhibit A of IPR2017-01409
`Paper 20 with citations from Exhibit A of IPR2017-01410
`Paper 20; and
`FURTHER ORDERED that the foregoing corrected exhibits shall be
`filed no later than Friday, June 15, 2018.
`
`6
`
`
`
`IPR2017-01391 – Patent 7,237,036 B2
`IPR2017-01405 – Patent 7,124,205 B2
`IPR2017-01406 – Patent 7,673,072 B2
`IPR2017-01409 – Patent 8,131,880 B2
`
`
`PETITIONER:
`
`Garland Stephens
`Adrian Percer
`Jeremy Lang
`WEIL, GOTSHAL & MANGES LLP
`garland.stephens@weil.com
`adrian.percer@weil.com
`jason.lang@weil.com
`
`Christopher TL Douglas
`Kirk Bradley
`ALSTON & BIRD LLP
`christopher.douglas@alston.com
`kirk.bradley@alston.com
`
`Patrick McPherson
`David Xue
`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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