Case No. IPR2018-00234
`U.S. Patent No. 8,805,948
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`INTEL CORP., CAVIUM, LLC, and DELL INC.,
`Petitioners,
`
`v.
`ALACRITECH, INC.,
`Patent Owner.
`______________________
`Case IPR2018-002341
`U.S. Patent No. 8,805,948
`______________________
`DECLARATION OF KARINEH KHACHATOURIAN IN SUPPORT OF
`PETITIONER CAVIUM, LLC’S SUPPLEMENTAL BRIEF REGARDING
`35 U.S.C. § 315(b)
`EXHIBIT 1501
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`
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`1 Cavium, LLC, who filed a Petition in Case IPR2018-00403, and Dell Inc., who
`filed a Petition in Case IPR2018-01307, have been joined as petitioners in this
`proceeding.
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`Cavium Ex. 1501.001
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`I, Karineh Khachatourian, declare:
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`Case No. IPR2018-00234
`U.S. Patent No. 8,805,948
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`1.
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`I am a partner in the law firm of Rimon, P.C., working in the firm’s
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`office in Palo Alto, California. In making this declaration, it is not my intention,
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`nor the intention of Cavium, LLC, to waive the attorney-client privilege, the
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`attorney-work produce immunity, or any other applicable privilege.
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`2.
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`Attached hereto as Exhibit A is a true and correct copy of relevant
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`excerpts of Plaintiff Alacritech’s Sur-Reply Regarding Cavium, Inc.’s Motion to
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`Intervene (D.I. 119) filed on February 2, 2017 in the district court litigation.
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`I hereby declare that all statements made herein of my own knowledge are
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`true and that all statements made on information or belief are believed to be true;
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`and further that these statements were made with the knowledge that willful false
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`statements and the like so made are punishable by fine or imprisonment, or both,
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`under Section 1001 or Title 18 of the United States Code and that such willful false
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`statements may jeopardize the results of these proceedings.
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`Dated: February 26, 2019
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`/s/ Karineh Khachatourian
`Karineh Khachatourian
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`1
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`Cavium Ex. 1501.002
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`Case No. IPR2018-00234
`U.S. Patent No. 8,805,948
`
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`CERTIFICATE OF SERVICE
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`I hereby certify that on February 26, 2019, a copy of the DECLARATION
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`OF KARINEH KHACHATOURIAN IN SUPPORT OF PETITIONER
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`CAVIUM, LLC’S SUPPLEMENTAL BRIEF REGARDING 35 U.S.C. §
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`315(b) was served by filing this document through the PTAB’s E2E Filing System
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`as well as delivering a copy via electronic mail upon the following:
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`James M. Glass (Reg. No. 46,729)
`Quinn Emanuel Urquhart & Sullivan LLP
`51 Madison Ave., 22nd Fl.
`New York, NY 10010
`Tel.: (212) 849-7000
`Email: jimglass@quinnemanuel.com
`
`Joseph M. Paunovich (Reg. No. 59,033)
`Quinn Emanuel Urquhart & Sullivan LLP
`865 S. Figueroa Street, 10th Fl.
`Los Angeles, CA 90017
`Tel.: (213) 443-3000
`Email: joepaunovich@quinnemanuel.com
`
`Brian E. Mack (Reg. No. 57,189)
`Quinn Emanuel Urquhart & Sullivan LLP
`50 California Street, 22nd Fl.
`San Francisco, CA 94111
`Tel.: (415) 875-6600
`Email: brianmack@quinnemanuel.com
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`2
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`Cavium Ex. 1501.003
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`Mark Lauer (Reg. No. 36,578)
`Silicon Edge Law Group LLP
`7901 Stoneridge Dr., Ste. 528
`Pleasanton, CA 94588
`Tel.: (925) 621-2121
`Email: mark@siliconedgelaw.com
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`Dated: February 26, 2019
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`
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`Case No. IPR2018-00234
`U.S. Patent No. 8,805,948
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`
`
`/s/ David T. Xue
`David T. Xue
`Reg. No. 54,554
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`3
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`Cavium Ex. 1501.004
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`EXHIBIT A
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`EXHIBIT A
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`Cavium Ex. 1501.005
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`Case 2:16-cv-00693-JRG-RSP Document 119 Filed 02/02/17 Page 1 of 8 PageID #: 3332
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`
` IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`ALACRITECH, INC.,
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`
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`Plaintiff,
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`Case No. 2:16-cv-693-JRG
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`v.
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`CENTURYLINK COMMUNICATIONS
`LLC, et al.
`
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`Defendants.
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`ALACRITECH, INC.,
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`Plaintiff,
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`v.
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`WINSTRON CORPORATION, et al.,
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`
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`ALACRITECH, INC.,
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`
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`
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`Defendants.
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`LEAD CASE
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`JURY TRIAL DEMANDED
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`
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`Case No. 2:16-cv-692-JRG
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`JURY TRIAL DEMANDED
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`MEMBER CASE
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`
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`Case No. 2:16-cv-695-JRG
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`JURY TRIAL DEMANDED
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`MEMBER CASE
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`v.
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`DELL INC.,
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`Plaintiff,
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`Defendant.
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`PLAINTIFF ALACRITECH’S SUR-REPLY REGARDING CAVIUM, INC.’S MOTION
`TO INTERVENE
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`Cavium Ex. 1501.006
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`Case 2:16-cv-00693-JRG-RSP Document 119 Filed 02/02/17 Page 2 of 8 PageID #: 3333
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`Alacritech reiterates that it does not oppose Cavium’s permissive intervention as long as
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`it does not undermine or delay the orders, schedule, or discovery in this case. Alacritech offers
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`the following brief response to address some of the misstatements in Cavium’s Reply.
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`I.
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`ALACRITECH’S SUGGESTION THAT THE COURT CLARIFY THE TERMS
`OF CAVIUM’S INTERVENTION IS MERITED AND PROPER
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`As set forth in greater detail in Alacritech’s responses to both Intel’s and Cavium’s
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`motions to intervene – in view of the intentional and substantial delay in seeking to intervene
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`these parties face a fundamental choice under the law: either intervene subject to the current
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`schedule and orders or have their motions held untimely and unduly prejudicial to the existing
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`parties. Timeliness is a predicate for intervention, whether pursuant to Federal Rule of Civil
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`Procedure 24(a) or (b). Corley v. Jackson Police Department, 755 F.2d 1207, 1209 (5th Cir.
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`1985); Staley v. Harris County, 223 F.R.D. 458, 461 (S.D. Tex. 2004) (emphasis added). Having
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`waited for over six (6) months to move to intervene from the date it learned of its alleged interest
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`in the litigation (Dkt. 116 at 3), despite having been apprised by its indemnitee and Alacritech of
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`the schedule and substantive proceedings in this case, Cavium’s request cannot be granted unless
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`it proves that intervention will not prejudice the existing parties or the sanctity of the
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`proceedings. Compare Kneeland v. Nat’l Collegiate Athletic Ass’n, 806 F.2d 1285, 1289 (5th
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`Cir. 1987) (prejudice caused by four months of delay in filing motion to intervene rendered the
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`request untimely); Frazier v. Map Oil Tools, Inc., Civil Action No. C-10-4, 2010 WL 2352056,
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`at *5 (S.D. Tex. 2010) (same).
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`Cavium’s lament that it “should have the same rights as any other party” to weigh in on
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`the procedural and substantive issues already decided by the Court is foreclosed by its intentional
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`decision to wait until those orders were entered, discovery was well underway, and Markman
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`1
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`Cavium Ex. 1501.007
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`Case 2:16-cv-00693-JRG-RSP Document 119 Filed 02/02/17 Page 3 of 8 PageID #: 3334
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`proceedings had commenced.1 So too should its continued efforts to delay and evade discovery
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`be foreclosed in view of the pending subpoena and its request to become a party (who will
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`obviously then be subject to discovery).
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`A.
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`Cavium Is A Permissive Intervenor At Best
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`Cavium’s suggestion that its request to intervene pursuant to Federal Rule of Civil
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`Procedure 24(a) forecloses the Court from clarifying the terms on which intervention would be
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`timely is unsupported by law or logic. In any event, Cavium is not an intervenor by right –
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`having made no effort to show, as required by Fifth Circuit law, that there is any adversity
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`between it and the existing Defendants that would render the current representation inadequate.
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`Compare Dkt. 109 at 10 (“Cavium naturally has a greater interest than its customers in defending
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`allegations of patent infringement”) with Kneeland v. Nat'l Collegiate Athletic Ass'n, 806 F.2d
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`1285, 1288 (5th Cir. 1987) (holding that putative intervenor’s showing they “may have a slightly
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`greater interest in the litigation” is insufficient to demonstrate “any adversity of interest” as
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`required by Fed. R. Civ. P. 24(a)). Moreover, Cavium’s network interface controller devices are
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`but one component of the accused systems sold by Dell – they are not, as Cavium’s hyperbole
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`suggests, “the technology accused of infringement by Alacritech.” (Dkt, 109 at 9.) Unlike the
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`intervenors in the cases cited in its Motion, Cavium is not a manufacturer or supplier of the
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`accused systems in this case and its provision of certain components in the accused system
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`neither make its situation analogous to the cited case law nor establishes the type of indelible
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`property interest required by Federal Rule of Civil Procedure 24(a).
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`1 Of note, Cavium is clearly participating in the joint defense group’s development and
`presentation of claim construction arguments. Defendants have included Cavium on their
`correspondence and service of documents relating to claim construction, including the initial
`exchange of proposed constructions. As a courtesy, Alacritech did the same and ensured that
`Cavium was copied on its service of initial proposed constructions pursuant to P.R. 4-2.
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`2
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`Cavium Ex. 1501.008
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`Case 2:16-cv-00693-JRG-RSP Document 119 Filed 02/02/17 Page 4 of 8 PageID #: 3335
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`Since any intervention by Cavium would be pursuant to Federal Rule of Civil Procedure
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`24(b), there is no dispute that the Court can and should condition intervention on Cavium’s
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`integration into the case in a manner that prevents it from delaying the case or prejudicing
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`Alacritech’s efforts to obtain highly relevant discovery. Stringfellow v. Concerned Neighbors in
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`Action, 480 U.S. 370, 378 (1987); Harris v. Amoco Prod. Co., 768 F.2d 669, 675 (5th Cir. 1985)
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`(upholding conditions imposed on permissive intervention stating “to the extent it can, the
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`district court has a concomitant prerogative . . . to condition the intervention so as to minimize
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`delay and not prejudice the existing parties.”) (emphasis added).
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`B.
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`The Conditions Imposed On Cavium’s Intervention Are Necessitated By
`Cavium’s Own Conduct To Date
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`Cavium’s argument that Alacritech “has not articulated (and cannot articulate) any
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`prejudice” it will suffer as a result of Cavium’s decision to delay its motion by several months is
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`wrong. (Dkt. 116 at 4.) Had Cavium promptly filed its Motion when it learned of its interest
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`(either when QLogic was put on notice by Dell in July or when QLogic was acquired by Cavium
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`in August), it could have participated in essentially every single procedural and substantive event
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`that has taken place in this case – Alacritech would already have prepared and served
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`infringement contentions on it; Cavium would already have served Invalidity Contentions (or
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`joined Defendants’ Invalidity Contentions); and it certainly would already have produced the
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`discovery it continues to withhold or would be facing a pending motion to compel. See Dkt. 46
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`(Docket Control Order). Instead, Cavium waited, refused to tell Alacritech whether it even
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`intended to intervene, and withheld (and continues to withhold) discovery responsive to
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`Alacritech’s subpoena. As such, if Cavium intervenes, Alacritech necessarily will have to
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`grapple with preparing any necessary infringement contentions on an expedited basis, yet
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`another serial round of invalidity contentions, and expedite the initial disclosures and additional
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`3
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`Cavium Ex. 1501.009
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`Case 2:16-cv-00693-JRG-RSP Document 119 Filed 02/02/17 Page 5 of 8 PageID #: 3336
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`disclosures required by the Discovery Order. Despite the burden, Alacritech is amenable to
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`doing these things so that the overlapping issues presented by Cavium’s proposed Declaratory
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`Judgment Complaint can be considered in an efficient and timely manner and asks only that the
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`Court’s order impose the necessary conditions to ensure that the efficiencies that underpin
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`permissive joinder are actually effectuated and that Alacritech’s interest in the expeditious
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`resolution of its complaints are not prejudiced.
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`Indeed, had Cavium behaved reasonably to date, Alacritech’s request would not have
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`been necessary. For example, Cavium complains about the sufficiency of Alacritech’s
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`infringement contentions against Dell’s products with QLogic network interface controllers.
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`(Dkt. 116 at 5.) But, though Cavium characterizes the contentions as drawn primarily to its
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`QLogic products (e.g., Dkt. 109 at 8), Cavium has refused to produce a single document or line
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`of source code in this case despite receiving Alacritech’s subpoena two months ago. Had
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`Cavium produced documents and evidence a month ago, by the statutory deadline for its
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`response to the subpoena, Alacritech would not need an order mandating the expeditious
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`provision of discovery or conditioning Cavium’s intervention thereon.
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`Cavium also argues that Alacritech somehow “delayed Cavium’s intervention” by
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`refusing to meet and confer in good faith. The correspondence belies the veracity of this
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`position. Ex. A (M.Clark 1/20/2017 email with chain). As is evidenced from the multitude of
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`email in which Alacritech asked and continues to ask Cavium to meet and confer with it – and
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`Cavium abjectly refuses (or does not respond at all)– any delays are a problem exclusively of
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`Cavium’s making. Indeed, it is not as Cavium represents to the Court that Alacritech “refused to
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`simply consent to Caviuim’s motion” (Dkt. 116 at 5), but that Cavium would not meet and
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`confer or even disclose to Alacritech whether or when it intended to move to intervene. Cavium
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`4
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`Cavium Ex. 1501.010
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`Case 2:16-cv-00693-JRG-RSP Document 119 Filed 02/02/17 Page 6 of 8 PageID #: 3337
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`represents to the Court that it “will meet all of its obligations,” but that representation is already
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`false since Cavium’s obligations included producing relevant documents responsive to
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`Alacritech’s subpoena and meeting and conferring in good faith regarding its proposed
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`intervention, neither of which Cavium has done. The pattern of obstructionist behavior, which
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`continues despite Cavium’s representation to the Court that it “is diligently preparing to
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`participate in this action,” is exactly why Alacritech has requested modest conditions on
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`Cavium’s intervention.
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`Finally, Cavium’s allegations regarding the “recent expansion of the scope of the action
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`with respect to the accused products of other parties,” is neither true nor relevant. (Dkt. 116 at
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`4.) Alacritech did not add any new infringement theories or asserted claims that were not
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`previously at issue in this case when it served infringement contentions on Intel. At most, it
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`included products that perform the accused functionalities in the same manner as the products
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`already at issue, which were identified by Intel and put at issue by Intel’s Declaratory Judgment
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`claim.2 Thus, in view of the inaccuracy of Cavium’s characterization of Alacritech’s
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`contentions, Cavium’s argument simply underscores its awareness and involvement in all
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`proceedings in the case including those relating to other defendants – which should make its
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`integration under the existing schedule a noncontroversial request.3
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`2 Cavium states that “[w]hether Alacritech will expand the scope of the case further as to
`QLogic accused products (or those of other parties) is known only to Alacritech,” but the reality
`is that the scope of any compulsory counterclaims is largely driven by the scope of the products
`that Cavium – not Alacritech – puts at issue in this litigation.
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`3 Cavium’s argument that Alacritech “denied Cavium’s counsel access for months to a license
`agreement that supposedly may provide a complete defense as to QLogic products” is a non-
`sequitur and false. Cavium offers no reason why the license agreement would have affected its
`decision to intervene in this litigation or the evaluation of intervention under Rule 24 (nor would
`Cavium offer any reason for reviewing the license at the time it demanded access to it from
`Alacritech). Furthermore, the narrow license in question was terminated nearly a year ago.
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`5
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`Cavium Ex. 1501.011
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`Case 2:16-cv-00693-JRG-RSP Document 119 Filed 02/02/17 Page 7 of 8 PageID #: 3338
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`Dated: February 2, 2017
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`/s/ Joseph M. Paunovich by permission Claire
`Henry _
`
`Claude M. Stern
`California State Bar No. 96737
`claudestern@quinnemanuel.com
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`555 Twin Dolphin Drive, 5th Floor
`Redwood Shores, CA 94065
`Telephone: (650) 801-5000
`Facsimile: (650) 801-5100
`
`Joseph M. Paunovich
`joepaunovich@quinnemanuel.com
`California State Bar No. 228222
`Jordan Brock Kaericher
`California State Bar No. 265953
`jordankaericher@quinnemanuel.com
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`865 South Figueroa Street, 10th Floor
`Los Angeles, CA 90017
`Telephone: (213) 443-3000
`Facsimile: (213) 443-3100
`
`T. John Ward, Jr.
`Texas State Bar No. 00794818
`jw@wsfirm.com
`Claire Abernathy Henry
`Texas State Bar No. 24053063
`claire@wsfirm.com
`Andrea L. Fair
`Texas State Bar No. 24078488
`andrea@wsfirm.com
`WARD, SMITH & HILL, PLLC
`1507 Bill Owens Parkway
`Longview, Texas 75604
`Telephone: (903) 757-6400
`Facsimile: (903) 757-2323
`
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`ATTORNEYS FOR PLAINTIFF
`ALACRITECH, INC.
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`6
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`Cavium Ex. 1501.012
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`Case 2:16-cv-00693-JRG-RSP Document 119 Filed 02/02/17 Page 8 of 8 PageID #: 3339
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that the foregoing document was filed electronically in
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`compliance with Local Rule CV-5(a). As such, this document was served on all counsel who
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`have consented to electronic service on this 2nd day of February, 2017. Local Rule CV-
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`5(a)(3)(A).
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`/s/ Claire Henry
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`7
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`Cavium Ex. 1501.013
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