UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Cavium, Inc.,
`Petitioner
`
`v.
`
`Alacritech, Inc.,
`Patent Owner
`U.S. Patent No. 7,673,072
`Filing Date: June 25, 2007
`Issue Date: March 2, 2010
`Inter Partes Review No. 2017-01732
`
`Title: Fast-path apparatus for transmitting data corresponding to a TCP connection
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`
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`MOTION FOR JOINDER
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`DM2\7972030.3
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`Cavium, Inc.,
`Petitioner
`
`v.
`
`Alacritech, Inc.,
`Patent Owner
`U.S. Patent No. 7,673,072
`Filing Date: June 25, 2007
`Issue Date: March 2, 2010
`Inter Partes Review No. 2017-01732
`
`Title: Fast-path apparatus for transmitting data corresponding to a TCP connection
`
`
`
`MOTION FOR JOINDER
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`DM2\7972030.3
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`I.
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`INTRODUCTION
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`Cavium, Inc. (“Cavium” or “Petitioner”) submits this motion for the petition
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`for inter partes review of U.S. Patent No. 7,673,072 (“the ‘072 patent”) filed July 3,
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`2017, Case No. IPR2017-01732 (the “Petition”). The Petition was based on the
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`identical grounds that form the basis for the pending inter partes review initiated by
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`Intel Corporation (“Intel”) concerning the same patent, Case No. IPR2017-01705
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`(the “Intel ‘072 IPR”).
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`Petitioner respectfully requests that the Petition be instituted and moves that
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`the Petition be joined with the Intel ‘072 IPR pursuant to 35 U.S.C. § 315(c) and
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`37 C.F.R. §§ 42.22 and 42.122(b). Petitioner merely requests an opportunity to join
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`with the Intel ‘072 IPR as an “understudy” to Intel, only assuming an active role in
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`the event Intel no longer is a party to these proceedings. Petitioner does not seek to
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`alter the grounds upon which the Board will institute the Intel ‘072 IPR, and joinder
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`will have no impact on the Intel ‘072 IPR’s existing schedule. Petitioner has
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`conferred with counsel for Intel, which does not oppose this motion. This motion is
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`timely as the Intel ‘072 IPR petition was only recently filed and the Board has not
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`yet issued an institution decision. 35 U.S.C. § 21(b); 37 C.F.R. § 42.122(b).
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`II.
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`BACKGROUND AND RELATED PROCEEDINGS
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`Alacritech, the owner of the ‘072 patent, sued CenturyLink, Inc., Wistron
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`Corp., and Dell Inc., in the District Court for the Eastern District of Texas in July
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`DM2\7972030.3
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`2015 for infringement of U.S. Pat. Nos. 7,124,205, 7,237,036, 7,337,241, 7,673,072,
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`8,131,880, 8,805,948, 9,055,104, and 7,945,699 (collectively, the “Asserted
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`Patents”). The litigations are Alacritech, Inc. v. CenturyLink, Inc., 2:16-cv-00693-
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`JRG-RSP (E.D. Tex.); Alacritech, Inc. v. Wistron Corp., 2:16-cv-00692-JRG-RSP
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`(E.D. Tex.); and Alacritech, Inc. v. Dell Inc., 2:16-cv-00695-RWS-RSP (E.D. Tex.).
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`In May and June 2017, Intel filed twelve petitions for inter partes review
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`against the Asserted Patents. See IPR Case Nos. IPR2017-01391 (‘036 patent), -
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`01392 (‘241 patent), -01393 (‘104 patent), -01395 (‘948 patent), -01402 (‘205
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`patent), -01405 (‘205 patent), -01406 (‘072 patent), -01409 (‘880 patent), -01410
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`(‘880 patent), -01559 (‘699 patent), -01705 (‘072 patent) and -01713 (‘241 patent).
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`These IPRs are awaiting institution by the Board. In addition to this motion to join
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`IPR2017-01705, Petitioner is filing related motions to join IPR Case Nos. IPR2017-
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`01391, -01392, -01393, -01395, -01402, -01405, -01406, -01409, -01410, -01559,
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`and -01713.
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`III. LEGAL STANDARD AND APPLICABLE RULES
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`Joinder is governed by 35 U.S.C. § 315(c), which reads as follows:
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`Joinder.— If 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 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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`DM2\7972030.3
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`A motion for joinder should “(1) set forth the reasons why joinder is
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`appropriate; (2) identify any new grounds of unpatentability asserted in the petition;
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`(3) explain what impact (if any) joinder would have on the trial schedule for the
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`existing review; and (4) address specifically how briefing and discovery may be
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`simplified.” See Decision on Joinder, IPR2013-00385 (Paper No. 17, July 29, 2013);
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`see also Order Authorizing Joinder, IPR2013-00004 (Paper No. 15, April 24, 2013.)
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`Petitioner submits the factors outlined below in support of granting the present
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`Motion for Joinder.
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`IV. PETITIONER MEETS THE REQUIREMENTS FOR MOTION FOR
`JOINDER
`Petitioner submits that (1) joinder is appropriate because it will promote
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`efficient determination of the validity of the ‘072 patent without prejudice to
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`Alacritech, Inc.; (2) Petitioner’s petition raises the same grounds for unpatentability
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`as does Intel ‘072 IPR petition and is based on the same testimony from the same
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`technical expert; (3) joinder would not affect the expected schedule in the Intel ‘072
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`IPR nor would it increase the complexity of that proceeding; and (4) Petitioner is
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`willing to accept an understudy role in the Intel ‘072 IPR to simply discovery and
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`minimize the burden on the parties and the Board. Absent joinder, the Board will
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`be burdened with entertaining two separate IPRs against the ‘072 patent on identical
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`grounds, wasting resources and losing efficiency, and the parties will be subject to
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`redundant discovery obligations. Accordingly, joinder should be granted.
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`DM2\7972030.3
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`A.
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`Joinder Will Promote the Efficient Determination of the ‘072
`Patent’s Validity and Will Not Prejudice Alacritech
`Granting joinder and allowing Petitioner to assume an understudy role will
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`not prejudice Alacritech or burden the Board. The Petition does not raise any issues
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`that are not already before the Board in the Intel ‘072 IPR and thus the Board would
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`receive consolidated filings for the joined IPRs instead of redundant submissions in
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`separate IPRs. Likewise, Alacritech would only need to respond to consolidated
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`filings rather than respond to separate filings from the separate petitioners. The
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`Board has granted motions for joinder in similar circumstances. See, e.g., Decision
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`on Joinder, IPR2014-00743 (Paper 10, June 18, 2014).
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`Joinder is appropriate here to promote judicial efficiency and avoid
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`unnecessary expense to the parties.
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`B.
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`Petitioner’s Petition Raises the Same Grounds as the Intel ‘072
`IPR
`The Petition asserts only grounds that are awaiting the Board’s institution in
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`the Intel ‘072 IPR, supported by the same technical expert and the same testimony.
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`There are no new arguments for the Board to consider. Likewise, the Petition relies
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`on the same exhibits.
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`C.
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`Joinder Will Not Affect the Schedule of the Intel ‘072 IPR
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`Because Petitioner filed its pending IPR and corresponding motion for joinder
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`so soon after the filing of the Intel ‘072 IPR, allowing Petitioner to join the Intel ‘072
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`DM2\7972030.3
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`IPR will not impact the expected scheduling order for the Intel ‘072 IPR or the
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`Board’s ability to complete its review within the statutory period. Section
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`316(a)(11) requires that IPR proceedings be completed and the Board’s final
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`decision issued no later than one year after the date on which the Director notices
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`the institution of the IPR. See also 37 C.F.R. § 42.100(c). Petitioner submits that
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`Alacritech does not need to file a Patent Owner’s Preliminary Response, and
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`requests that the Board proceed without one. This is consistent with the Board’s
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`Order in IPR2013-00256 (Paper 8, June 13, 2013), which allowed the Patent Owner
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`to file a preliminary response addressing only those points raised in the new petition
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`that were different from those in the granted petition. Here, because the invalidity
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`grounds in the Petition are identical to those raised in the Intel ‘072 IPR, there will
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`be no new arguments for Alacritech to address. Alternatively, Petitioner requests
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`that the Board accelerate the deadline for Alacritech’s Patent Owner’s Preliminary
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`Response to respond to this Petition so the Board can address the institution of the
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`current Petition concurrently with the Intel ‘072 IPR petition. Doing so would
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`ensure that joinder would not impact any deadlines set in the Intel ‘072 IPR schedule.
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`D.
`Petitioner Agrees to Assume a Limited Role
`Petitioner agrees to an understudy role and does not raise any issues that are
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`not already before the Board. The invalidity grounds in the Petition are the same as
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`those that are waiting the Board’s institution in the Intel ‘072 IPR and the expert
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`DM2\7972030.3
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`testimony in support of the grounds are the same. Given that Petitioner will assume
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`an understudy role, joinder with this IPR proceeding will not introduce any
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`additional arguments, briefing, or need for discovery. See Decision on Joinder,
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`IPR2013-00495 (Paper 13, Sept. 16, 2013). To the contrary, joinder will eliminate
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`the need of the parties to file redundant briefs and conduct redundant discovery,
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`including redundant depositions of the parties’ respective expert witnesses, in the
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`separate IPRs.
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`As long as Intel remains in the joined IPR, Petitioner agrees to assume a
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`limited “understudy” role. Petitioner would only take on an active role if Intel were
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`no longer a party to the IPR. Discovery will be simplified in that there will be no
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`need for redundant depositions of the parties’ respective experts.
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`V.
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`CONCLUSION
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`For the foregoing reasons, Petitioner respectfully requests that its Petition for
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`Inter Partes Review of the ‘072 patent be granted and that the proceedings be joined
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`with IPR2017-01705.
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`Date: July 6, 2017
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`
`Duane Morris LLP
`505 9th Street, N.W., Suite 1000
`Washington, D.C. 20004
`Tel: (202) 776-7800
`Fax: (202) 776-7801
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`DM2\7972030.3
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`6
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`Respectfully submitted,
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`By: /Patrick D. McPherson/
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`Patrick D. McPherson
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`Reg. No. 46,255
`Counsel for Petitioner
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`CERTIFICATE OF SERVICE
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`I hereby certify, pursuant to 37 C.F.R. Section 42.6, that a complete copy of
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`the attached Motion for Joinder is being served via Federal Express on the 6th day
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`of July, 2017, the same day as the filing of the above-identified document in the
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`United States Patent and Trademark Office/Patent Trial and Appeal Board, upon
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`the Patent Owner by serving the correspondence address of record with the
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`USPTO as follows:
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`MARK LAUER
`Silicon Edge Law Group LLP
`7901 STONERIDGE DRIVE
`SUITE 528
`Pleasanton, California 94588
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`and upon counsel of record for the Patent Owner in the litigation pending before
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`the U.S. District Court for the Eastern District of Texas entitled Alacritech, Inc. v.
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`Dell Inc., 2:16-cv-00695-RWS-RSP (E.D. Tex.) as follows:
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`Claude M Stern
`Quinn Emanuel Urquhart & Sullivan - Redwood
`555 Twin Dolphin Dr.
`5th Floor
`Redwood Shores, CA 94065
`
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`Dated: July 6, 2017
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`
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`/ Patrick D. McPherson /
`Patrick D. McPherson (Reg. No. 46,255)
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`DM2\7972030.3
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