`571-272-7822
`
`Paper No. 9
` Entered: June 6, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CAVIUM, INC.,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00403
`Patent 8,805,948 B2
`
`Before STEPHEN C. SIU, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review and
`Granting Petitioner’s Motion for Joinder
`35 U.S.C. § 314(a), 37 C.F.R. § 42.122
`
`
`
`
`
`IPR2018‐00403
`
`Patent 8,805,948 B2
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`
`
`INTRODUCTION
`I.
`Cavium, Inc. (“Petitioner”), filed a Petition (Paper 1, “Pet.”) for inter
`partes review of claims 1, 3, 6–8, 17, 19, 21, and 22 of U.S. Patent No.
`8,805,948 B2 (Ex. 1001) pursuant to 35 U.S.C. §§ 311–319. On the same
`day as filing the Petition, Petitioner filed a Motion for Joinder. Paper 3
`(“Joinder Motion” or “Mot.”). The Joinder Motion seeks to join Cavium as
`a petitioner in Intel Corp. v. Alacritech, Case IPR2018-00234 (“the 234
`IPR”). Mot. 1. The Joinder Motion indicates Intel Corp., Petitioner in the
`234 IPR, does not oppose Cavium’s request to join that proceeding. Id.
`However, the Joinder Motion is silent regarding Patent Owner’s position
`regarding the Joinder Motion.
`Alacritech, Inc. (“Patent Owner”) did not file an Opposition to the
`Joinder Motion. Patent Owner filed a Preliminary Response that is silent
`regarding the Joinder Motion. Paper 8 (“Prelim. Resp.”).
`As explained further below, we institute trial in this inter partes
`review on the same ground as instituted in IPR2018-00234 and we grant
`Petitioner’s Motion for Joinder.
`
`
`II. DISCUSSION
`A.
`Institution of Trial
`In IPR2018-00234, Petitioner Intel challenges the patentability of
`claims 1, 3, 6–8, 17, 19, 21, and 22 as unpatentable under 35 U.S.C. 103(a)
`
`2
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`IPR2018‐00403
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`Patent 8,805,948 B2
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`over the combined disclosures of Thia,1 Tanenbaum96,2 and Stevens2.3
`IPR2018-00234 Paper 2, 18. After considering the Petition and the Patent
`Owner’s Preliminary Response in IPR2018-00234, we instituted trial for the
`above-identified ground of unpatentability. See IPR2018-00234, Paper 7.
`Petitioner here (Cavium) represents that this Petition is substantively
`identical to the Petition in IPR2018-00234 challenging the same claims
`based on the same ground. Mot. 1. We have considered the relevant
`Petitions and we agree with Petitioner’s representation that this Petition is
`substantially identical to the Petition in IPR2018-00234. Compare Pet., with
`IPR2018-00234, Paper 2.
`Patent Owner’s Preliminary Response does not point out any
`differences from its Preliminary Response in the 234 IPR. After reviewing
`Patent Owner’s Preliminary Response here and in the 234 IPR, we find the
`two responses to be substantially identical. Compare Prelim. Resp., with
`IPR2108-00234 Paper 6.
`Accordingly, for essentially the same reasons stated in our Decision to
`Institute in IPR2018-00234, we conclude Petitioner has established a
`reasonable likelihood of prevailing with respect to at least one challenged
`claim and we institute trial in this proceeding for claims 1, 3, 6–8, 17, 19, 21,
`and 22 on the same ground as in IPR2018-00234.
`
`1 Y.H. Thia and C.M. Woodside, A Reduced Operation Protocol Engine
`(ROPE) for a Multiple-Layer Bypass Architecture, 1995 (“Thia,” Ex. 1015).
`2 Andrew S. Tanenbaum, Computer Networks, Third Edition, 1996
`(“Tanenbaum96,” Ex. 1006).
`3 W. Richard Stevens et al., TCP/IP Illustrated, Volume 2, 1995
`(“Stevens2,” Ex. 1013).
`
`3
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`IPR2018‐00403
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`Patent 8,805,948 B2
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`B. Motion for Joinder
`Based on authority delegated to us by the Director, we have discretion
`to join an inter partes review to a previously instituted inter partes review.
`35 U.S.C. § 315(c). Section 315(c) provides, in relevant part, that “[i]f the
`Director institutes an inter partes review, the Director, in his or her
`discretion, may join as a party to that inter partes review any person who
`properly files a petition under section 311.” Id.
`Without opposition to the Joinder Motion from any party, we grant
`Petitioner’s Motion for Joinder with the 234 IPR subject to the condition
`that:
`
`In the joined proceeding, Petitioner here (i.e., Cavium,
`Inc.) will be bound by all substantive and procedural filings and
`representations of current Petitioner in IPR2018-00234 (i.e.,
`Intel Corp.), without a separate opportunity to be heard, whether
`orally or in writing, unless and until the joined proceeding is
`terminated with respect to Petitioner Intel in IPR2018-00234.
`In view of the foregoing, we determine that joinder based upon the
`above-noted condition will have little or no impact on the timing, cost, or
`presentation of the trial on the instituted ground. Moreover, discovery and
`briefing will be simplified if the proceedings are joined.
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`IPR2018‐00403
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`Patent 8,805,948 B2
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`III. ORDER
`After due consideration of the record before us, and for the foregoing
`
`reasons, it is:
`
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`hereby instituted for claims 1, 3, 6–8, 17, 19, 21, and 22 of the ’948 patent as
`unpatentable under 35 U.S.C. 103(a) over the combined disclosures of Thia,
`Tanenbaum96, and Stevens2;
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2018-00234 is granted, and Cavium, Inc. is joined as a petitioner in
`IPR2018-00234;
`FURTHER ORDERED that the ground on which an inter partes
`review was instituted in Case IPR2018-00234 remain unchanged, and no
`other grounds are instituted in the joined proceedings;
`FURTHER ORDERED that Petitioner here (i.e., Cavium, Inc.) will be
`bound by all substantive and procedural filings and representations of
`current Petitioner in IPR2018-00234 (i.e., Intel Corp.), without a separate
`opportunity to be heard, whether orally or in writing, unless and until the
`proceeding is terminated with respect to Intel Corp;
`FURTHER ORDERED that the schedule for this proceeding shall be
`governed by the current schedule and any changes in the schedule for
`IPR2018-00234;
`FURTHER ORDERED that IPR2018-00403 is terminated under
`37 C.F.R. § 42.72, and that all future filings are to be made only in IPR2018-
`00234;
`FURTHER ORDERED that the case caption in IPR2019-00234 for all
`further submissions shall be changed to add Petitioner (Cavium, Inc.) as a
`
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`5
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`IPR2018‐00403
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`Patent 8,805,948 B2
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`named Petitioner, and to indicate by footnote the joinder of Petitioner
`Cavium, Inc. to that proceeding, as indicated in the attached sample case
`caption; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2018-00234.
`
`PETITIONER:
`
`PATENT OWNER:
`
`6
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORP., and
`CAVIUM, INC.,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-002344
`Patent 8,805,948 B2
`
`4 Cavium, Inc, which filed a Petition in Case IPR2018-00403, has been
`joined as a petitioner in this proceeding.
`
`