UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
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`CAVIUM, INC.,
`Petitioner,
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`v.
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`ALACRITECH, INC.,
`Patent Owner
`________________
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`Case IPR2017-01732
`U.S. Patent No. 7,673,072
`________________
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`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 35 U.S.C. § 313 AND 37 C.F.R. § 42.107
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`I.
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`II.
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`TABLE OF CONTENTS
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`Page
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`INTRODUCTION ........................................................................................... 1
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`OVERVIEW OF THE ’072 PATENT ............................................................ 4
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`A.
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`B.
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`The ’072 Patent Specification ............................................................... 4
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`The ’072 Patent Claims ......................................................................... 6
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`III. OVERVIEW OF THE ASSERTED PRIOR ART .......................................... 8
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`A. U.S. Patent No. 5,937,169 (“Connery”) ................................................ 8
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`IV. CLAIM CONSTRUCTION .......................................................................... 10
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`A.
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`B.
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`Cavium’s Petition Should Be Denied Because It Alleges
`The Challenged Claims Are Indefinite ............................................... 10
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`Petitioner’s Proposed Terms for Construction Do Not
`Affect Alacritech’s Non-Obviousness Argument in This
`Preliminary Response .......................................................................... 11
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`V.
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`THE BOARD SHOULD DENY THE PETITION BECAUSE
`IT FAILS TO DISCLOSE ALL REAL PARTIES IN
`INTEREST .................................................................................................... 12
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`A.
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`B.
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`C.
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`The Relationship Between Cavium and QLogic Is
`Sufficiently Close ................................................................................ 13
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`Cavium Effectively Controls QLogic ................................................. 15
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`Cavium Effectively Controls Dell ....................................................... 16
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`D. Dell Desires Review of the ’072 Patent .............................................. 18
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`E.
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`F.
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`Intel Has Effective Choice as to the Legal Theories and
`Proofs of Dell and Cavium .................................................................. 18
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`Finding QLogic, Dell, and Intel Are Real Parties in
`Interest Is Consistent with Legislative Intent ...................................... 20
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`VI. THE BOARD SHOULD DECLINE INSTITUTION UNDER
`35 U.S.C. § 325(D) BECAUSE ALL THE PRIOR ART HAS
`ALREADY BEEN CONSIDERED BY THE OFFICE ................................ 21
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`VII. THERE IS NO REASONABLE LIKELIHOOD THAT THE
`PETITIONER WILL PREVAIL UNDER GROUND 1 (THE
`ONLY GROUND) ......................................................................................... 22
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`A. All Claims of The ’072 Patent Are Fully Supported By
`The Provisional Application, and Therefore Connery is
`Not Prior Art........................................................................................ 23
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`1.
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`“Creating headers for the segments, by the
`interface device, from [the/a] template header,”
`and “prepending the headers to the segments” ......................... 25
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`2.
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`Protocols other than TCP/IP ..................................................... 30
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`VIII. ALACRITECH RESERVES ITS RIGHTS UNDER THE
`PENDING OIL STATES CASE AT THE UNITED STATES
`SUPREME COURT ...................................................................................... 33
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`IX. CONCLUSION ............................................................................................. 33
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`TABLE OF AUTHORITIES
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`Page
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`Cases
`Alacritech, Inc. v. CenturyLink, Inc.,
`2:16-cv-00693-JRG-RSP (E.D. Tex.) ................................................... 1, 13
`Alacritech, Inc. v. Dell Inc.,
`2:16-cv-00695-RWS-RSP (E.D. Tex.) ................................................. 1, 13
`Alacritech, Inc. v. Wistron Corp.,
`2:16-cv-00692-JRG-RSP (E.D. Tex.) ................................................... 1, 13
`ams AG v. 511 Innovations, Inc.,
`Case IPR2016-01788 (PTAB Mar. 15, 2017) .......................................... 10
`Apple Inc. v. Immersion Corp.,
`Case IPR2016-01372 (Jan. 11, 2017) ......................................................... 3
`Ariad Pharm., Inc. v. Eli Lilly & Co.,
`598 F.3d 1336 (Fed. Cir. 2010) ................................................................ 24
`Benson & Ford, Inc. v. Wanda Petroleum Co.,
`833 F.2d 1172 (5th Cir. 1987) .................................................................. 17
`In re Herschler,
`591 F.2d 693 (CCPA 1979) ...................................................................... 24
`In re Kaslow,
`707 F.2d 1366 (Fed. Cir. 1983) ................................................................ 24
`LizardTech, Inc. v. Earth Res. Mapping, Inc.,
`424 F.3d 1336 (Fed. Cir. 2005) ................................................................ 24
`Oil States Energy Servs. LLC v. Greene’s Energy Group, LLC,
`Case No. 16-712, certiorari granted (U.S. Jun. 12, 2017) ....................... 33
`Space Exploration Technologies Corp. v. Blue Origin LLC,
`Case IPR2014-01378 (Mar. 3, 2015) .......................................................... 3
`In re Steele,
`305 F.2d 859 (CCPA 1962) ...................................................................... 11
`Vas-Cath, Inc. v. Mahurkar,
`935 F.2d 1555 (Fed. Cir. 1991) ................................................................ 24
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`
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`Statutory Authorities
`35 U.S.C. § 102 ............................................................................................... 3
`35 U.S.C. § 103 ............................................................................................... 3
`35 U.S.C. § 103(a) .......................................................................................... 1
`35 U.S.C. § 312(a)(2) .................................................................................... 12
`35 U.S.C. § 313 ............................................................................................... 1
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`35 U.S.C. § 314 ............................................................................................... 4
`35 U.S.C. § 314(a) .............................................................................. 8, 23, 33
`35 U.S.C. § 315 ............................................................................................. 17
`35 U.S.C. § 315(b) ........................................................................................ 17
`35 U.S.C. §316 (e) ........................................................................................ 23
`35 U.S.C. § 325(d) ........................................................................................ 21
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`Rules and Regulations
`37 C.F.R. § 42.8(b)(1) ................................................................................... 12
`37 C.F.R. § 42.100(b) ................................................................................... 10
`37 C.F.R. § 42.106(b) .................................................................................... 12
`37 C.F.R. § 42.107(a) ...................................................................................... 1
`37 C.F.R. § 42.108 .......................................................................................... 4
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48759-60
`(Aug. 14, 2012) .................................................................................. passim
`H.R. Rept. No 112-98 (2011) (Judiciary Committee Report on H.R. 1249,
`June 1, 2011) ............................................................................................. 20
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`Legislative Materials
`157 Cong. Rec. S1034, S1041 (Mar. 1, 2011) .............................................. 20
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`PATENT OWNER’S LIST OF EXHIBITS
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`Exhibit #
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`Description
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`Ex. 2001
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`Declaration of Paul Prucnal Regarding IPR2017-01406
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`Ex. 2002
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`Ex. 2003
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`Intel Corporation’s Motion to Intervene, Case No. 2:16-
`cv-00693-JRG-RSP, Dkt. 71 (E.D. Tex., Oct. 31, 2016).
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`Declaration of Karineh Khachatourian ISO Cavium’s
`Motion to Intervene, Case No. 2:16-cv-00693-JRG-RSP,
`Dkt. 109-3 (E.D. Tex., Jan. 13, 2017).
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`Ex. 2004
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`Not used
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`Ex. 2005
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`Not used
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`Ex. 2006
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`Memorandum Opinion and Order on Claim
`Construction, Case No. 2:16-cv-00693-JRG-RSP, Dkt.
`362 (E.D. Tex., September 21, 2017)
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`Ex. 2007
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`Not used
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`Ex. 2008
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`Not used
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`Ex. 2009
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`Cavium’s Motion to Intervene, Case No. 2:16-cv-00693-
`JRG-RSP, Dkt. 109 (E.D. Tex., Jan. 13, 2017).
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`Ex. 2010
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`Curriculum Vitae of Paul Prucnal
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`U.S. Patent No. 7,673,072
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`I.
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`INTRODUCTION
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`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107(a), Patent Owner
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`Alacritech Inc. (“Alacritech”) submits this Preliminary Response to the Petition for
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`Inter Partes Review (“the Petition”) filed in this matter.1 Petitioner Cavium, Inc.
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`(“Cavium”) seeks Inter Partes Review (“IPR”) of claims 1-21 of U.S. Patent No.
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`7,673,072 (“the ’072 patent”), as allegedly being unpatentable under 35 U.S.C.
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`§ 103(a) in view of U.S. Patent No. 5,937,169 to Connery et al. (Ex. 1043,
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`“Connery”). The ’072 patent is assigned to Alacritech and is the subject of co-
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`pending litigation, Alacritech, Inc. v. CenturyLink, Inc., 2:16-cv-00693-JRG-RSP
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`(E.D. Tex.); Alacritech, Inc. v. Wistron Corp., 2:16-cv-00692-JRG-RSP (E.D.
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`Tex.); and Alacritech, Inc. v. Dell Inc., 2:16-cv-00695-RWS-RSP (E.D. Tex.),
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`which were all consolidated for pre-trial purposes (“the Litigation”).
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`The ’072 Patent discloses a system with “a specialized microprocessor
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`designed for processing network communications, avoiding the delays and pitfalls
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`of conventional software layer processing, such as repeated copying and interrupts
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`to the CPU,” and “freeing the host CPU from most protocol processing and
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`allowing improvements in other task.” Ex. 1001 at 5:44-47, 7:47-49. The ’072
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`1 This submission is timely as it is being filed within three months following the
`mailing date of the Notice of Filing Date Accorded to Petition. The three-month
`date following the July 27, 2017 mailing date is Friday, October 27, 2017. (Paper
`No. 6).
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`patent’s claims focus on the transmission side of the protocol processing. The host
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`gives raw data to the INIC which it must carve into segments, add headers to the
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`data, perform checksums on the segment, and then send it out. As explained in
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`more detail below, by relieving the host CPU of frequent and debilitating
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`interrupts, the claimed invention provides enhanced network and system
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`performance, faster data throughput, increased system stability, and an overall
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`better user experience.
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`In its Petition, Cavium asserts that the ’072 patent is invalid on the ground
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`that claims 1-21 of the ’072 patent are obvious over U.S. Patent No. 5,937,169 to
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`Connery et al. (Ex. 1043, “Connery”). As set forth below, Cavium’s Petition is
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`deficient on numerous grounds; thus, the Board should not institute this IPR on the
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`ground enumerated in the Petition.
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`First, Petitioner has not established that Connery is prior art to the ’072
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`patent. As acknowledged in Cavium’s Petition, the ’072 patent claims priority to
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`U.S. Provisional Application No. 60/061,809, filed October 14, 1997 (“the ’072
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`Provisional”). (Petition at 29.) Connery, in contrast, was filed on October 29,
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`1997—some fifteen days later—and does not claim the benefit of any earlier-filed
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`applications. (Ex. 1043.) Connery therefore does not constitute prior art. As
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`described in more detail below, Petitioner’s arguments regarding the written
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`description of the ‘072 Provisional consist exclusively of conclusory attorney
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`argument and are unpersuasive.
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`Second, Connery was already considered by the Office during the original
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`prosecution of the ‘072 patent. This Petition is therefore merely cumulative of the
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`arguments already considered and rejected by the Office in initial examination.
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`The Board should not second guess the Examiner and substitute its own opinion
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`for that of the original Examiner.
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`Third, Petitioner alleges certain claim terms and phrases are indefinite
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`because they are incapable of being understood by a person of ordinary skill in the
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`art (“POSA”). Because under Petitioner’s own contention these terms are
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`indefinite, Petition’s obviousness challenges cannot be sustained in this Petition.
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`See Space Exploration Technologies Corp. v. Blue Origin LLC, Case IPR2014-
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`01378, Paper 6, at 8-9 (Mar. 3, 2015) (“inter partes review is limited to grounds of
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`anticipation and obviousness under 35 U.S.C. §§ 102 and 103, not indefiniteness
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`under 35 U.S.C. § 112”); Apple Inc. v. Immersion Corp., Case IPR2016-01372,
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`Paper 7, at 20-21 (Jan. 11, 2017) (where Board is “unable to determine the scope
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`and meaning of [the challenged] claims . . . we cannot conduct the necessary
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`factual inquiry for determining obviousness with respect to these claims, such as
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`ascertaining differences between the claimed subject matter and the prior art”).
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`Fourth, Petitioners have failed to name all real parties in interest. For the
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`reasons discussed below, both Dell and Cavium are unnamed real parties in interest
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`to this Petition. (See infra § VI.) Because this threshold requirement has not been
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`met, the Board should deny institution.
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`Accordingly, the Connery reference and Cavium’s arguments in the Petition
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`do not give rise to a reasonable likelihood that Cavium will prevail with respect to
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`any challenged claim of the ’072 patent. The Board should therefore not institute
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`review on any claim of the ’072 patent.2 See 35 U.S.C. § 314; 37 C.F.R. § 42.108.
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`II. OVERVIEW OF THE ’072 PATENT
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`A. The ’072 Patent Specification
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`The ’072 Patent discloses a system with “a specialized microprocessor
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`designed for processing network communications, avoiding the delays and pitfalls
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`of conventional software layer processing, such as repeated copying and interrupts
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`to the CPU,” and “freeing the host CPU from most protocol processing and
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`allowing improvements in other task.” Ex. 1001 at 5:44-47, 7:47-49.
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`2 Alacritech also respectfully reserves its rights under the Oil States case pending
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`before the United States Supreme Court, as set forth in Section IX of this
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`Preliminary Response.
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`The ’072 patent’s claims focus on the transmission side of the protocol
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`processing. See id. at 97:30-31 (“to form transmit packets”). Fig. 24 of the ’072
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`patent depicts a receiving embodiment with a specialized Intelligent Network
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`Interface Card (INIC) providing a fast path for protocol processing. Id. at Fig. 24.
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`“The transmit case works in much the same fashion . . . In fast-path mode,
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`the host gives raw data to the INIC which it must carve into MSS sized segments,
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`add headers to the data, perform checksums on the segment, and then send it out on
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`the drive.” Id. at 38:55-61 (emphasis added).
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`This “carving” process conducted by the INIC is reflected in Claim 1 as well
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`as all other independent claims, where it recites “dividing, by the interface device,
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`the data into segments.” Id. at 97:26. (emphasis added). As analyzed below, this
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`“dividing” step conducted by “the interface device” is not disclosed by either of the
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`cited references or their combination.
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`B.
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`The ’072 Patent Claims
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`The ’072 Patent includes 21 claims. All 21 claims are challenged in the
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`Petition. Claims 1, 9, and 15 are the independent claims and each recites
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`“dividing, by the interface device, the data into segments.” Claims 2-8, 10-14, and
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`16-21 depend on the independent claims. Independent claims 1, 9, and 15 are
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`reproduced below:
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`Claim 1. A method comprising:
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`establishing, at a host computer, a transport layer connection,
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`including creating a context
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`that
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`includes protocol header
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`information for the connection;
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`transferring the protocol header information to an interface device;
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`transferring data from the network host to the interface device, after
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`transferring the protocol header information to the interface device;
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`dividing, by the interface device, the data into segments;
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`creating headers for the segments, by the interface device, from a
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`template header containing the protocol header information; and
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`prepending the headers to the segments to form transmit packets.
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`Claim 9. A method comprising:
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`creating, at a computer, a context including protocol information and
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`status information for a network connection, the protocol information
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`providing a template header for the network connection;
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`transferring the protocol information and status information to an
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`interface device;
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`transferring data from the computer to the interface device, after
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`transferring the protocol information and status information to the
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`interface device;
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`dividing, by the interface device, the data into segments;
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`creating headers for the segments, by the interface device, from the
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`template header;
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`prepending the headers to the segments to form packets; and
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`transmitting the packets on a network.
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`Claim 15. A method comprising:
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`establishing, at a computer, a Transmission Control Protocol (TCP)
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`connection corresponding
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`to a context
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`that
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`includes status
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`information and Internet Protocol (IP) addresses and TCP ports for
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`the connection;
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`transferring the context to an interface device;
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`transferring data from the network host to the interface device;
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`dividing, by the interface device, the data into segments;
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`creating headers for the segments, by the interface device, from a
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`template header that includes the IP addresses and TCP ports; and
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`prepending the headers to the segments to form transmit packets.
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`Since the cited references, alone or in combination with each other, fail to
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`disclose the element “dividing, by the interface device, the data into segments,”
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`which is present in all the independent claims, this Petition should not be instituted
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`pursuant to 35 U.S.C. § 314(a).
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`III. OVERVIEW OF THE ASSERTED PRIOR ART
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`A. U.S. Patent No. 5,937,169 (“Connery”)
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`Connery appears on the face of the ’072 patent under “References Cited”
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`and was initialed by the Examiner in an Information Disclosure Statement (IDS)
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`dated February 21, 2008. Ex. 1002.262. Connery was therefore already
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`considered by the Examiner during the prosecution of the ’072 patent, which was
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`found to be allowable over Connery.
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`Connery discloses a data processing system with program memory that
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`includes a TCP/IP protocol stack and a “segmentation mode.” (Ex. 1001 at 5:44-
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`50.) A MAC driver is included in the program memory which supports the
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`segmentation mode. (Id. at 5:51-58.) The system has a network interface card
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`that includes resources to manage TCP/IP segmentation. (Id.) A large datagram
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`may be sent to the MAC driver, which “cut[s] the datagram into packets, using
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`‘template’ headers from the datagram along with simple rules to product the actual
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`packets to be sent on the media.” (Id. at 7:12-21.) Figure 5 of Connery,
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`reproduced below, shows some of these steps.
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`Notably, Connery is silent as to how the TCP and IP headers are combined
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`with the “MSS sized segments” shown above in step 206 before the “packet send
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`process” at step 208. Connery is also silent as to several other limitations present
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`in the challenged claims.
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`IV. CLAIM CONSTRUCTION
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`In an IPR proceeding, a claim is given its “broadest reasonable construction
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`in light of the specification of the patent in which it appears.” 37 C.F.R.
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`§ 42.100(b). For the purposes of these proceedings, Alacritech has construed the
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`claims below to faithfully adhere to Federal Circuit precedent regarding claim
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`construction, and to accurately reflect the meaning that each term would have to a
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`person of ordinary skill in the art.
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`A. Cavium’s Petition Should Be Denied Because It Alleges The
`Challenged Claims Are Indefinite
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`Petitioner expressly contends that the limitations “context” appearing in all
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`independent claims and “status information” in independent claims 9 and 15 must
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`be construed for this Petition and are indefinite. See Petition at 26-28 (“Petitioner
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`respectfully submits that the following terms shall be construed for this IPR . . .
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`Petitioner contends that ‘context’ is indefinite as used in the 072 Patent claims . . .
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`Petitioner has taken the position that ‘status information’ as used in the 072 Patent
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`is indefinite.”). This contention, without more, should end the Board’s inquiry into
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`all independent claims and their dependent claims.
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`“If [the Board’s] unpatentability analysis requires ‘considerable speculation
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`as to the meaning and assumptions as to the scope’s of the claims, the differences
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`between the claimed invention and the prior art cannot be ascertained.” ams AG v.
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`511 Innovations, Inc., Case IPR2016-01788, Paper No. 15 at 6 (PTAB Mar. 15,
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`2017) (quoting In re Steele, 305 F.2d 859, 862 (CCPA 1962)). “In other words,
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`without ascertaining proper claim scope,” the Board “cannot conduct a necessary
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`factual inquiry for determining obviousness—ascertaining differences between the
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`claimed subject matter and the prior art.” Id. (quotation marks and citations
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`omitted). Where, as here, a Petitioner’s own submission asserts that challenged
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`claims (claims 1-21) are indefinite in scope, the Board cannot institute an
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`obviousness trial against those claims. See id. at 11-12 (denying institution on all
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`claims based on indefiniteness in independent claim). The Board should therefore
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`deny institution of this Petition as to claims 1-21 on this basis alone.
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`B.
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`Petitioner’s Proposed Terms for Construction Do Not Affect
`Alacritech’s Non-Obviousness Argument in This Preliminary
`Response
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`Petitioner alleges the under the broadest reasonable construction standard,
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`the term “prepending” would have been understood to mean “adding to the front.”
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`(Petition at 27.) For the purposes of the Petition only, Patent Owner takes no
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`position as to the proper interpretation of this term but will assume Petitioner’s
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`interpretation is correct.3
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`3 In the district court case between the parties, Petitioner argued that “prepending”
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`also implied a temporal limitation. In other words, Petitioner argued that the
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`header must be prepended to the data after the data is already set and not in a
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`The remaining two terms proposed by Petitioner for construction, “context”
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`and “status information,” do not otherwise affect Alacritech’s argument in this
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`preliminary response. Therefore, it is unnecessary for Alacritech to address them
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`for purpose of this preliminary response.
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`V. THE BOARD SHOULD DENY THE PETITION BECAUSE IT FAILS
`TO DISCLOSE ALL REAL PARTIES IN INTEREST
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`A requirement of a petition includes identifying “all real parties in interest.”
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`35 U.S.C. § 312(a)(2).4 The Board should deny institution of this IPR because the
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`Petition fails to identify all real parties in interest as required by 35 U.S.C.
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`§ 312(a)(2) and 37 CFR § 42.8(b)(1).
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`
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`“piecemeal assembly” fashion where the header is written to a buffer and then the
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`data is appended at some later time. The Court rejected this argument. (Ex. 2006
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`at 35.)
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`4 See also IPR2014-00689, Paper No. 22 (Aug. 12, 2014) (holding that failing to
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`list a real party in interest can result in the petition to be considered “an incomplete
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`petition” under Rule 42.106(b), not entitled to receive a filing date).
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`The Petition identifies only one real party in interest: Cavium.5 In doing so,
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`the Petitioner at least fails to identify at least QLogic Corporation (“QLogic”)—a
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`subsidiary of Cavium being a supplier of defendant Dell Inc. (“Dell”) in
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`Alacritech’s patent infringement lawsuit over the ’072 Patent.6 Cavium also failed
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`to disclose the district court defendant Dell, and another indemnifier Intel, the de
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`facto driver of this case.
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`A. The Relationship Between Cavium and QLogic Is Sufficiently
`Close
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`“Privity is essentially a shorthand statement that collateral estoppel is to be
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`applied in a given case. . . . The concept refers to a relationship between the party
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`to be estopped and the unsuccessful party in the prior litigation which is
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`5 See Petition at 2 (“Petitioner, Cavium, Inc., is the real-party-in-interest. No other
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`parties exercised or could have exercised control over this petition; no other parties
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`funded or directed this Petition.”).
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`6 The co-pending district court cases, Alacritech v. CenturyLink, Alacritech v.
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`Wistron, and Alacritech v. Dell, were filed on June 30, 2106, and consolidated for
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`pre-trial purposes. In January 2017, Cavium filed a motion to intervene in the
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`district court case because Dell’s accused products used components supplied by
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`QLogic. Ex. 2009 at 1.
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`sufficiently close so as to justify application of the doctrine of collateral estoppel.”
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`Office Patent Trial Practice Guide, 77 Fed. Reg. at 48759.
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`Cavium is QLogic’s parent company and QLogic is Cavium’s wholly owned
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`subsidiary. As Cavium’s Motions to Intervene filed in district court makes it clear,
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`Cavium itself is not a supplier of Dell. Ex.0009.005. Instead, it is Cavium’s
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`wholly subsidiary QLogic that is Dell’s supplier. Id (“Cavium seeks to intervene
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`because some of Alacritech’s infringement allegations in the Complaint in this
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`action specifically accuse some Dell products of infringement based in part on
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`their use of QLogic network adapters, including, among others, QLogic 57840S-k
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`quad port 10GbE blade KR NDC”). There is no direct indemnification relationship
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`between Cavium and Dell. The indemnification relationship is between QLogic
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`and Dell. Cavium was involved in this lawsuit only because QLogic is Cavium’s
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`wholly owned subsidiary. Ex.2009.005 (“Cavium’s interest in this litigation is
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`based on the involvement of its wholly-owned subsidiary, QLogic Corporation
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`(‘QLogic’).”).
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`Cavium admitted that it “has a substantial, direct financial interest in the
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`outcome of this litigation.” Ex.2009.005. Cavium also admitted that it “can offer
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`technical knowledge and expertise that its customer lacks, as the designer and
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`manufacturer of the QLogic technology targeted by Alacritech’s infringement
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`allegations. Moreover, issues litigated in this action may affect other Cavium
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`customers in the event that they are sued by Alacritech or its successors.”
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`Ex. 2009.005. The intimate relationship between Cavium and QLogic creates
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`privity and makes QLogic a real party in interests.
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`B. Cavium Effectively Controls QLogic
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`Cavium has direct control over QLogic, not only because QLogic is
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`Cavium’s wholly owned subsidiary, but also Cavium has made important decisions
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`on behalf of QLogic in this case.
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`For example, in Cavium’s motion to intervene, it laid out the history of the
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`patent infringement case. None of it ever mentions what QLogic did actively.
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`Quite opposite, QLogic only took a passive role during the litigation in receiving
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`an indemnification letter from Dell. Ex. 2009.005-.006. Since the beginning of
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`this litigation, it appears that all communications have been conducted between
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`Cavium and Dell directly. See Ex. 2009.007 (“Cavium contacted Alacritech in
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`early December . . . based on Cavium’s unavailability during the holidays . . .
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`Cavium’s potential intervention in the action has been discussed with Alacritech’s
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`counsel . . . Cavium attempted to avoid contested motion practice”).
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`Most importantly, Cavium made a key decision on behalf of QLogic, which
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`is to “propose as an alternative that the parties could avoid motion practice by
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`Alacritech dismissing the claims against Dell as to the QLogic products and then
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`filing a new complaint to assert those claims directly against QLogic.” Ex.
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`2009.003. In other words, Cavium has the power to waive QLogic’s objection and
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`offer it as a defendant as an exchange of dismissing Dell. The evidence of control
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`here is overwhelming. In IPR2014-01380, the Board found the petitioner General
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`Electric Company (“GE”) failed to disclose a real party interest, Oklahoma Gas &
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`Electric Company (“OG&E”), whom the petitioner had control over in a district
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`court case. Id. Here, for the same reason, Cavium also failed to disclose a real
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`party in interest, its subsidiary and direct supplier of Dell, QLogic, over which
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`Cavium fully controls.
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`C. Cavium Effectively Controls Dell
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`“There are multiple factors relevant to the question of whether a non-party
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`may be recognized as a ‘real party in interest’ or ‘privy.’ A common consideration
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`is whether the non-party exercised or could have exercised control over a party’s
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`participation in a proceeding.” Office Patent Trial Practice Guide, 77 Fed. Reg. at
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`48759-60. “Absolute control, however, is not necessary. Instead, a nonparty will
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`be found to have control if it ‘has the actual measure of control or opportunity to
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`control that might reasonably be expected between two formal coparties.’
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`Moreover, actual control is not required; the opportunity to exert the appropriate
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`level of control is sufficient.” IPR2014-01380, Paper No. 34 at 8 (April 5, 2015)
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`(internal citations omitted).
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`In IPR2014-01380, the petitioner GE’s control over the district court
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`defendant was based on their agreement stating that “Petitioner would ‘provide a
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`full and unqualified defense to OG&E.’” Id.7 Cavium has a similar agreement
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`with Dell. Cavium’s litigation in-house declares in the district court case that
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`“Dell has requested that Cavium indemnify, defend and hold it harmless from
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`Alacritech, Inc.’s (“Alacritech”) claims in this action that concern QLogic
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`products, based on an indemnity agreement relating to Dell’s purchases of QLogic
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`products. . . . Based on the nature of the claims at issue in this suit, Cavium has
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`agreed to defend and partially indemnify Dell as to the claims against Dell
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`products incorporating Cavium/QLogic’s technology .” Ex. 2003 at 1 (emphasis
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`added). Indemnification is a factor favoring finding of privity. See IPR2014-
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`01380, Paper No. 34 at 7-8 (“indemnitors . . . assume control of litigation against
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`the parties they indemnify.”); see also Benson & Ford, Inc. v. Wanda Petroleum
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`7 In IPR2014-01380, the petitioner GE argued that “only privity with respect to the
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`present inter partes review proceeding, not privity with respect to the [district
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`court] lawsuit, is relevant to the application of the § 315(b) bar,” but this was
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`expressly rejected by the Board. See IPR2014-01380, Paper No. 34 at 1