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
`______________________
`
`PETITIONER’S MOTION TO SEAL
`
`
`
`
`
`
`
`
`
`
`
`
`1 Cavium, LLC (formerly Cavium, Inc.) which filed a Petition in Case IPR2018-
`
`00403, and Dell Inc., which filed a Petition in Case IPR2018-01307, have been
`
`joined as petitioners in this proceeding.
`
`
`
`
`
`

`

`
`
`
`
`
`
`Case IPR2018-00234
`U.S. Patent No. 8,805,948
`
`Petitioner Intel Corporation (“Petitioner”) hereby moves to seal certain
`
`portions of the Board’s June 4, 2019 Order (“Paper 66”) that reference highly
`
`confidential information of the Petitioner. Good cause exists for granting this motion
`
`because Paper 66 includes highly confidential information. Attached to this Motion
`
`as Exhibit A is a redacted version of Paper 66 for filing onto the Public Record.
`
`I. MOTION TO SEAL
`
`The record of an inter partes review proceeding, including documents and
`
`things, is made available to the public, except as otherwise ordered. 37 C.F.R.
`
`§ 2.14. But despite the default rule of public availability, the Board will seal
`
`confidential information for “good cause,” because it is necessary to “strike a
`
`balance between the public’s interest in maintaining a complete and understandable
`
`file history and the parties’ interest in protecting truly sensitive information.” 37
`
`C.F.R. § 42.54(a); 77 Fed. Reg. 48756, 48760 (Aug. 14, 2012). As set forth in the
`
`Office Trial Practice Guide, the Board treats confidential information “consistent
`
`with Federal Rule of Civil Procedure 26(c)(1)(G), which provides for protective
`
`orders for trade secret or other confidential research, development, or commercial
`
`information.” Id. at 48760.
`
`2
`
`

`

`In accordance with rules and procedures, Petitioner moves to seal portions of
`
`Case IPR2018-00234
`U.S. Patent No. 8,805,948
`
`
`
`Paper 66.
`
`The redacted version of Paper 66 is redacted to protect highly sensitive,
`
`commercial information related to the relationship between Intel and its customers
`
`and other internal Intel business practices. For example, Paper 66 includes specific
`
`details about and quotes from commercially sensitive agreements with Intel’s
`
`customer Dell. As such, portions of Paper 66 are designated Petitioner’s Restricted
`
`– Attorneys’ Eyes Only under the Protective Order in this IPR.
`
`Because Paper 66 contains certain confidential business information as
`
`indicated above, the public disclosure of which could cause Petitioner irreparable
`
`harm, good cause exists to seal portions of demonstrative exhibits as Petitioner’s
`
`Restricted – Attorneys’ Eyes Only information under the Protective Order. In
`
`addition, the information that Petitioner requests to be sealed was submitted only to
`
`rebut Patent Owner’s arguments regarding real party in interest. The information is
`
`otherwise unimportant to the merits of this proceeding, and therefore the public’s
`
`interest in having access to this information is minimal.
`
`II. CERTIFICATION OF NON-PUBLICATION
`
`On behalf of Petitioner, the undersigned counsel certifies that the information
`
`sought to be sealed by this Motion has not, to their knowledge, been published or
`
`otherwise made public.
`
`3
`
`

`

`
`III. CONCLUSION
`
`Case IPR2018-00234
`U.S. Patent No. 8,805,948
`
`For the foregoing reasons, Petitioner respectfully requests that the Board grant
`
`the motion to seal certain portions of the Board’s June 4, 2019 Order that reference
`
`highly confidential information of the Petitioner.
`
`
`
`
`
`
`
`4
`
`

`

`Dated: July 3, 2019
`
`
`
`
`
`Case IPR2018-00234
`U.S. Patent No. 8,805,948
`
`
`
`Respectfully submitted,
`
`/s/ Garland T. Stephens
`Garland T. Stephens, Reg. No. 37,242
`Melissa L. Hotze, Reg. No. 55,279
`Justin L. Constant, Reg. No. 66,883
`Weil, Gotshal & Manges LLP
`700 Louisiana, Suite 1700
`Houston, TX 77002
`Tel: (713) 546-5000
`Fax: (713) 224-9511
`garland.stephens@weil.com
`melissa.hotze@weil.com
`justin.constant@weil.com
`Anne M. Cappella, Reg. No. 43,217
`Adrian Percer, Reg. No. 46,986
`Amanda Branch (admitted pro hac vice)
`Weil, Gotshal & Manges LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065
`Tel: (650) 802-3000
`Fax: (650) 802-3100
`anne.cappella@weil.com
`adrian.percer@weil.com
`amanda.branch@weil.com
`William S. Ansley, Reg. No. 67,828
`Weil, Gotshal & Manges LLP
`2001 M Street, N.W, Suite 600
`Washington, DC 20036
`Tel: (202) 682-7000
`Fax: (202) 857-0940
`sutton.ansley@weil.com
`
`Attorneys for Petitioner Intel Corporation
`
`5
`
`

`

`
`
`Case IPR2018-00234
`U.S. Patent No. 8,805,948
`
`CERTIFICATE OF SERVICE
`I hereby certify that on July 3, 2019, a copy of PETITIONER’S MOTION
`
`TO SEAL was served by filing this document through the PTAB’s E2E Filing
`
`System as well as delivering a copy via electronic mail upon the following:
`
`James M. Glass
`Registration 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
`Registration 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
`Registration 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
`
`
`/s/ Melissa L. Hotze
`Melissa L. Hotze
`Reg. No. 55,279
`
`
`
`
`
`
`
`Dated: July 3, 2019
`
`
`
`
`
`
`
`
`
`

`

`EXHIBIT A
`
`EXHIBIT A
`
`

`

`Paper: 66
`Trials@uspto.gov
`Entered: June 4, 2019
`571-272-7822
`CONFIDENTIAL - BOARD AND PARTIES ONLY
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORP., CAVIUM, LLC, and
`DELL INC.,1
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`Case IPR2018-00234 (Patent 8,805,948 B2)
`____________
`
`
`Before STEPHEN C. SIU, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge FISHMAN.
`
`Opinion Dissenting filed by Administrative Patent Judge SIU.
`
`FISHMAN, Administrative Patent Judge.
`
`
`ORDER
`Dismissing the Petition, Vacating Institution of Inter Partes Review, and
`Terminating Inter Partes Review
`35 U.S.C. § 315(b) and 37 C.F.R. §§ 42.71(a), 42.72
`
`1 Cavium, Inc., which filed a petition in Case IPR2018-00403, and Dell Inc.,
`which filed a petition in IPR2018-01307, were joined as petitioners in
`IPR2018-00234. According to an updated mandatory notice filed in the
`captioned proceeding, Cavium, Inc. has now been converted to Cavium,
`LLC. See Paper 23.
`
`

`

`IPR2018-00234
`Patent 8,805,948 B2
`
`
`CONFIDENTIAL - BOARD AND PARTIES ONLY
`
`I. INTRODUCTION
`Petitioner Intel filed this Petition on November 22, 2017, requesting
`inter partes review of U.S. Patent No. 8,805,948 B2 (Ex. 1001, “the ’948
`patent”). Paper 2 (“Pet.”). We instituted trial for all challenged claims and
`grounds. Paper 7 (“Dec.” or “Decision”).
`For the reasons set forth below, we determine that Intel did not meet
`its burden to show that the Petition was not time-barred under 35 U.S.C.
`§ 315(b). Accordingly, we vacate our Decision to Institute and terminate
`this proceeding for all parties.
`
`
`A. Background
`The Petition asserts, “Intel Corporation is the real-party-in-interest.
`No other parties exercised or could have exercised control over this Petition;
`no other parties funded or directed this Petition.” Pet. 5. In its Preliminary
`Response (Paper 6, “Prelim. Resp.”), Patent Owner asserted this Petition “is
`time barred because it was filed more than one year after the date on which
`Alacritech’s Complaint for infringement was served on Dell Corporation, a
`privy of Petitioner Intel, and more than one year after the date on which Intel
`filed its motion to formally become a party to the underlying Litigation.”2
`Prelim. Resp. 5. In particular, Patent Owner argued Dell, Intel’s customer,
`tendered a claim for indemnification to Intel following Alacritech’s filing of
`
`
`2 Alacritech filed a complaint alleging, inter alia, infringement of claims of
`the ’948 patent by Dell on June 30, 2016, and, apparently, Dell was served
`with that complaint on July 5, 2016. See Paper 18, 58 n.5 (citing Ex. 2058).
`Intel filed its Motion to Intervene in the underlying infringement lawsuit on
`October 31, 2016. Ex. 1415; see also Ex. 2051.
`2
`
`

`

`CONFIDENTIAL - BOARD AND PARTIES ONLY
`
`IPR2018-00234
`Patent 8,805,948 B2
`
`a patent infringement complaint against Dell and asserted that Intel
`intervened in the litigation based, at least in part, on its agreement to “defend
`and partially indemnify” Dell. Id. at 35–36 (citing IPR2017-01391 Ex.
`2002, 1 (Intel’s Motion to Intervene)).
`In our Decision on Institution we found, “On the record before
`us, . . . we are unable to ascertain whether Dell Corporation is a privy of
`Petitioner.”3 Dec. 17. We further stated:
`Even accepting as true Patent Owner’s allegations in the
`Preliminary Response (1) that Petitioner has agreed to “defend
`and partially indemnify” Dell Corporation in the district court
`litigation, (2) that Petitioner filed a motion to intervene in the
`district court litigation, (3) that Petitioner has provided invalidity
`contentions and claim construction arguments in the district
`court litigation, (4) that all of the defendants in the district court
`litigation have agreed to be bound to the same extent as Petitioner
`by the results of this and other petitions filed by Petitioner, and
`(5) that Intel became aware of the complaint against Dell
`Corporation shortly after it was filed—none of which allegations
`appear to be supported by evidence currently of record in this
`proceeding—those facts alone would not establish that Dell
`Corporation is a privy of Petitioner.
`Dec. 17–18. In essence, we found there was insufficient persuasive
`evidence at that preliminary stage that Dell controlled, or had the
`opportunity to control, this inter partes review proceeding. See Dec. 17 (“A
`common consideration is whether the non-party exercised or could have
`exercised control over a party’s participation in a proceeding.”) (quoting
`
`
`3 We note that the alleged supporting evidence relied upon in support of
`Patent Owner’s Preliminary Response arguments directed to § 315(b)
`consisted of two documents not of record in this case. Prelim. Resp. 35–36
`(citing Ex. 2002 in case IPR2017-01391 and citing “Dkt. 449”—neither
`document filed in this proceeding).
`
`3
`
`

`

`CONFIDENTIAL - BOARD AND PARTIES ONLY
`
`IPR2018-00234
`Patent 8,805,948 B2
`
`Office Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012)).
`In that regard, our analysis followed the analysis of other panels at the Board
`at that time, focusing on the issue of control over the inter partes review
`proceeding to determine whether Dell was a real party in interest or a privy
`of Intel.
`Our Decision on Institution was entered June 5, 2018. On July 9,
`2018, the U.S. Court of Appeals for the Federal Circuit issued a decision in
`Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1351 (Fed.
`Cir. 2018) (“AIT”). The Court in AIT addressed the Board’s analysis (by
`another panel) of real party in interest issues. We discuss the AIT decision in
`more detail below.
`Following entry of our Decision on Institution and issuance of the AIT
`decision, Alacritech filed a Patent Owner’s Response (Paper 18, “PO
`Resp.”) reiterating its arguments regarding Dell (and other litigation
`defendants) being a real party in interest or privy of Intel and, thus, that the
`Petition should be time-barred under § 315(b). PO Resp. 57–74. Alacritech
`also filed a Motion for Additional Discovery regarding the relationship
`between Intel and Dell (Paper 26), and Intel opposed that motion (Paper 28).
`We granted Alacritech’s Motion for Additional Discovery. Paper 31.
`Following our grant of Patent Owner’s Motion for Additional
`Discovery, Petitioner filed a Reply (Paper 35, “Reply”), reiterating its
`assertion that Dell and other litigation defendants are neither real parties in
`interest nor privies of Intel. Reply 16–26. Responsive to a request by Patent
`Owner, we authorized supplemental briefing directed narrowly to the
`question of the litigation defendants’ (Dell and others) status as real parties
`in interest and/or privies of Intel and the relationship of that status to the
`
`4
`
`

`

`CONFIDENTIAL - BOARD AND PARTIES ONLY
`
`IPR2018-00234
`Patent 8,805,948 B2
`
`§ 315(b) time bar. Patent Owner filed a Supplemental Brief (Paper 49), and
`Petitioner filed a Supplemental Brief in Opposition (Paper 53).
`The following table, in chronological order, summarizes relevant
`filings and events associated with, or relevant to, real party in interest and
`privity issues in this case.
`Date
`Event
`
`Paper/Exhibit
`No.
`Ex. 1422
`
`Ex. 1423
`
`Ex. 1416
`
`n/a (retrieved
`from PACER)
`
`n/a (retrieved
`from PACER)
`
`Exs. 1415, 2051
`
`Ex. 2505
`
`Ex. 1411
`
`Exs. 1412, 2506
`
`
`IPR2017-01395
`Paper 2
`IPR2017-01395
`Paper 8
`
`
`
`June 30, 2016
`
`July 5, 2016
`
`August 25,
`2016
`
`October 31,
`2016
`
`October 31,
`2016
`
`November 19,
`2016
`December 13,
`2016
`
`May 9, 2017
`
`Corporate Agreement between Dell
`and Intel executed
` Amendment to Corporate Agreement
`
`Alacritech files patent infringement
`complaint against Dell (and other
`defendants)
`Parties in this IPR stipulate to Dell
`being served with infringement
`complaint
`Dell files pro forma answer and
`counterclaims for declaratory
`judgment of non-infringement and
`invalidity
`Intel moves to intervene in Dell
`litigation to defend all claims of all
`patents
`Intel files complaint in intervention
`seeking declaratory judgment for
`non-infringement by Dell
`District Court grants Intel’s motion
`to intervene
`Alacritech answers Intel’s complaint
`with counterclaims of infringement
`directed at Intel
`Intel files petition in IPR2017-01395
`
`November 22,
`2017
`
`Board denies institution in IPR2017-
`01395
`
`5
`
`

`

`IPR2018-00234
`Patent 8,805,948 B2
`
`
`CONFIDENTIAL - BOARD AND PARTIES ONLY
`
`Intel files petition in IPR2018-00234 Paper 2
`
`November 22,
`2017
`December 4,
`2017
`December 5,
`2017
`December 27,
`2017
`June 5, 2018
`
`June 6, 2018
`
`July 3, 2018
`
`Intel files stipulated motion to stay
`litigation pending all IPRs
`District Court stays litigation
`pending all IPRs
`Cavium files petition in IPR2018-
`00403 with motion to join this case
` Board institutes inter partes review
`for this Petition (IPR2018-00234)
`Board institutes Cavium’s petition
`and joins Cavium as petitioner in this
`case
`Dell files petition in IPR2018-01307
`with motion to join this case
`Federal Circuit issues AIT decision
`Alacritech files Patent Owner’s
`Response in this case
`Board institutes Dell’s petition and
`joins Dell as petitioner in this case
`Intel files Reply in this case
`
`Exs. 1413, 2404
`
`n/a (retrieved
`from Pacer)
`IPR2018-00403
`Papers 1 and 3
`Paper 7
`
`Paper 9
`
`IPR2018-01307
`Papers 2 and 3
`
`Paper 18
`
`Paper 34
`
`Paper 35
`
`Paper 49
`
`Paper 53
`
`July 9, 2018
`September 20,
`2018
`January 11,
`2019
`January 11,
`2019
`Alacritech files supplemental brief
`February 19,
`regarding § 315(b) issue
`2019
`Intel files supplemental brief in
`February 26,
`response regarding § 315(b) issue
`2019
`We discuss the relevance of various of these actions/events to the real party
`in interest and privity issues below. However, first, we summarize the
`change in our analysis of real party in interest and privity issues caused by
`the recent AIT decision.
`
`
`B. Recent Case Law Development
`In the AIT decision, the Federal Circuit vacated a decision by a panel
`of the Board, finding the panel’s analysis regarding a real party in interest
`
`6
`
`

`

`CONFIDENTIAL - BOARD AND PARTIES ONLY
`
`IPR2018-00234
`Patent 8,805,948 B2
`
`issue in that case to be unduly narrow. AIT, 897 F.3d at 1339. The Court in
`AIT noted our Trial Practice Guide states that there are multiple factors
`relevant to determining whether an unnamed party may be a real party in
`interest in our proceedings. Id. at 1342 (citing Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012); Taylor v. Sturgell, 553
`U.S. 880 (2008)). In Taylor, the Supreme Court identified a non-exhuastive
`list of factors (the “Taylor factors”) that may be considered to identify a
`privity relationship. Taylor, 553 U.S. at 893–895.
`Following the AIT decision, the Federal Circuit issued a decision
`clarifying that the burden of persuasion remains on petitioners to identify all
`real parties in interest and to demonstrate that a petition is not time barred
`under 35 U.S.C. § 315(b). Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242
`(Fed. Cir. 2018). Subsequent to the AIT and Worlds decisions, the Board
`issued a precedential decision applying the principles of the AIT and Worlds
`decisions. Ventex Co. v. Columbia Sportswear N. Am., Inc., Case IPR2017-
`00651, 2019 WL 764130 (PTAB Jan. 24, 2019) (Paper 152) (precedential).
`The Court in AIT found the intent of Congress in § 315(b) “makes
`clear that Congress planned for the provision to apply broadly—sweeping in
`not only what might be traditionally known as real parties in interest, but
`privies as well.” AIT, 897 F.3d at 1346. The Court further found Congress
`“chose language that bars petitions where proxies or privies would benefit
`from an instituted IPR, even where the petitioning party might separately
`have its own interest in initiating an IPR.” Id. at 1347. The AIT Court
`remarked that the Board’s institution decision seemed to believe that it was
`enough to exclude a third party, Salesforce, as a real party in interest so long
`
`7
`
`

`

`CONFIDENTIAL - BOARD AND PARTIES ONLY
`
`IPR2018-00234
`Patent 8,805,948 B2
`
`as the petitioner in that case, RPX, had an independent reason to pursue the
`petitions. Id. at 1353. Instead, the Court emphasized,
`The point is not to probe RPX’s interest (it does not need any);
`rather, it is to probe the extent to which Salesforce—as RPX’s
`client—has an interest in and will benefit from RPX’s actions,
`and inquire whether RPX can be said to be representing that
`interest after examining its relationship with Salesforce. The
`Board’s focus on RPX’s motivations to the exclusion of
`Salesforce’s reveals its misunderstanding of controlling legal
`principles.
`Id. Ultimately, the Court in AIT held, “[d]etermining whether a non-party is
`a ‘real party in interest’ demands a flexible approach that takes into account
`both equitable and practical considerations, with an eye toward determining
`whether the non-party is a clear beneficiary that has a preexisting,
`established relationship with the petitioner.” Id. at 1351
`In AIT, Judge Reyna summarized the Taylor factors that may establish
`privity between parties as: “(1) an agreement between the parties to be
`bound; (2) pre-existing substantive legal relationships between the parties;
`(3) adequate representation by the named party; (4) the non-party’s control
`of the prior litigation; (5) where the non-party acts as a proxy for the named
`party to relitigate the same issues; and (6) where special statutory schemes
`foreclose successive litigation by the non-party (e.g., bankruptcy and
`probate).” AIT, 897 F.3d at 1360 (Reyna, J., concurring).
`Following the AIT decision, the Court in Worlds further held that a
`petitioner’s assertions in a petition that it is the sole real party in interest
`“should be accepted unless and until disputed by a patent owner” and that
`the “patent owner must produce some evidence to support its argument that
`a particular third party should be named a real party in interest.” Worlds,
`903 F.3d at 1242.
`
`8
`
`

`

`IPR2018-00234
`Patent 8,805,948 B2
`
`
`CONFIDENTIAL - BOARD AND PARTIES ONLY
`
`More recently, the Board issued a precedential decision in Ventex
`applying the holdings of AIT and determined that a customer of the
`petitioner, a customer that was time-barred under § 315(b), was an unnamed
`real party in interest at the time the petition was filed. Ventex, 2019 WL
`764130, at *5. The Ventex panel reviewed the pre-existing close business
`relationship between the petitioner (vendor) and its customer (accused by the
`patent owner of patent infringement), a relationship including an
`indemnification obligation, and reviewed further evidence that the customer
`benefitted from the petitioner’s actions responsive to that indemnification
`obligation. Id. at 6–10. The Ventex decision also analyzed factors that may
`evidence a privity relationship and determined that the customer was a privy
`of the petitioner at the time the petition was filed. Id. at 11–15 (citing
`Taylor, 553 U.S. at 894–895; AIT, 897 F.3d at 1360 (Reyna, J., concurring)).
`The Ventex decision holds that, of the non-exhaustive list of factors in
`Taylor (the “Taylor factors”), “[a]nalysis under any one of the factors can
`support a finding of privity.” Id. at 12 (citing AIT, 897 F.3d at 1363 (Reyna,
`J., concurring)).
`
`
`II. ANALYSIS
`A. Dell is a Real Party In Interest
`Applying the principles of the AIT and Worlds decisions to the present
`record as developed through trial, and placing the burden of persuasion on
`Petitioner, we are persuaded that Dell was a real party in interest in this
`
`9
`
`

`

`CONFIDENTIAL - BOARD AND PARTIES ONLY
`
`IPR2018-00234
`Patent 8,805,948 B2
`
`proceeding at the time of filing the Petition.4 In other words, mindful of the
`burden of persuasion following Patent Owner raising the issue and
`presenting argument and evidence, Petitioner fails to persuade us that Dell
`was not a real party in interest at the time of filing this Petition.
`Following the analysis in AIT, we determine that Dell, as Intel’s
`customer, had a pre-existing, long-term, legal and financial relationship with
`Intel, including an arrangement under which Intel indemnified and defended
`Dell. We further determine that Dell had an interest in and benefitted from
`Intel’s actions leading up to and including filing this Petition. Specifically,
`(1) Dell benefitted from Intel’s actions in litigation to indemnify and defend
`Dell, (2) Intel’s strategy to challenge the ’948 patent includes filing this
`Petition that benefitted Dell, and (3) Intel adequately represented Dell’s
`interests before the Board in this Petition.
`
`
`1. Dell is a Beneficiary of Intel’s Intervention in Litigation
`Initially, we observe that Dell has been a beneficiary of Intel’s
`participation in the underlying litigation brought by Alacritech against Dell.
`Intel and Dell have been in a long-term, vendor-customer relationship
`
` Ex 1422
`
`(“Corporate Agreement”
`
`
`
`
`
`
`
`4 We note that Dell was not only a real party in interest at the time of filing
`this Petition, but was also joined as a petitioner after filing its own petition
`and motion for joinder in IPR2018-01307. See Case IPR2018-01307 Papers
`2, 3, 8. Counsel for Cavium asserts joined parties are not subject to the time
`bar of § 315(b). We address that argument below.
`10
`
`

`

`IPR2018-00234
`Patent 8,805,948 B2
`
`
`CONFIDENTIAL - BOARD AND PARTIES ONLY
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`11
`
`

`

`IPR2018-00234
`Patent 8,805,948 B2
`
`
`CONFIDENTIAL - BOARD AND PARTIES ONLY
`
`
`
`
`
`
`Dell was served with a complaint alleging infringement of the ’948
`patent (and other patents) on July 5, 2016. Thus, Dell clearly would benefit
`from any proceeding that may cancel claims at issue in the litigation
`involving the ’948 patent.
`The evidence of record shows that Intel acted to defend Dell against
`the infringement allegations in District Court. In a declaration dated
`October 27, 2016, shortly after Alacritech’s service of the complaint on Dell
`in July of 2016, S. Christopher Kyriacou (Intel’s in-house counsel) testified
`that Dell “asked Intel to indemnify, defend, and hold it harmless from
`Alacritech Inc.’s (‘Alacritech’) claims in this action concerning Intel
`products, based on an indemnity agreement relating to Dell’s purchases of
`Intel products.” Ex. 2054 ¶ 2. Mr. Kyriacou further testified in that
`declaration that, “[b]ased on the nature of the claims at issue in this suit,
`Intel has agreed to defend and partially indemnify Dell against Alacritech’s
`allegations against Dell products with Ethernet controllers provided by
`Intel.” Id. ¶ 3. On October 31, 2016, Intel filed a Motion to Intervene in the
`District Court infringement proceeding against Dell. Ex. 2051. In that
`motion, Intel argued to the District Court,
`Intel seeks to intervene because many of Alacritech’s
`infringement allegations in the Complaint against Dell target
`networking technology that Intel supplied to Dell. Indeed, the
`Complaint in this action specifically accuses certain Dell
`products of infringement based on their use of Intel Ethernet
`cards and controllers,
`including Intel’s 82599 Ethernet
`Controller. Further, Intel has agreed to defend and partially
`indemnify Dell as to Alacritech’s allegations based on Intel
`
`12
`
`

`

`IPR2018-00234
`Patent 8,805,948 B2
`
`
`CONFIDENTIAL - BOARD AND PARTIES ONLY
`
`components incorporated into the accused Dell products. As
`such, Intel has a substantial, direct financial interest in the
`outcome of this litigation.
`Intel and Dell have sought Alacritech’s permission for
`Dell to share Alacritech’s infringement contentions concerning
`Intel components with Intel since Alacritech served them on
`September 9, 2016, designated as “Confidential” under this
`Court’s protective order. Alacritech has repeatedly refused, most
`recently on October 21, 2016 in meeting and conferring with
`Intel on this motion. As Intel and Dell have told Alacritech, lack
`of access to Alacritech’s contentions has inhibited Intel from
`fully assessing the scope of Alacritech’s allegations concerning
`Intel components and the extent of Intel’s indemnity obligations.
`Nevertheless, to avoid delay, Intel now voluntarily seeks to
`intervene to defend its products and its customer Dell based on
`the allegations in the Complaint.
`Ex. 2051, 6 (emphasis added). Thus, the extent of Intel’s indemnification
`obligation may have been unclear at the time of its motion to intervene, and,
`indeed,
`
`
`
`
`
`
` Nonetheless, Intel chose to intervene in the
`District Court proceeding at least in part to defend its customer Dell.
`Additionally, in response to Alacritech’s authorized request for
`production of documents, Intel provided a few documents and a privilege
`log indicating it considered twelve documents privileged and, thus, exempt
`from production under our orders. See Ex. 2501. We make no presumptions
`and decline to speculate, regarding the specific content of such privileged
`communications—their content is not of record and we need not determine
`the propriety of the privilege assertions. However, we note that documents
`1–4, 7, 8, and 10–12 are identified in the log as communications between
`
`13
`
`

`

`CONFIDENTIAL - BOARD AND PARTIES ONLY
`
`IPR2018-00234
`Patent 8,805,948 B2
`
`counsel for Intel and counsel for Dell
`
`
`
`
` Id. at 2. Thus, it
`can be concluded from the privilege log per se, without speculating as to the
`content of such discussions, that
`
` and that, after such communications, Intel
`intervened in the District Court litigation and filed a petition seeking
`cancellation of the claims of the ’948 patent asserted by Alacritech against
`Dell. See Ex. 1415, 6 (“Intel now voluntarily seeks to intervene to defend its
`products and its customer Dell based on the allegations in the Complaint.”
`(emphasis added)).
`In its efforts to defend its customer Dell, contemporaneous with its
`motion to intervene, Intel filed a complaint in intervention seeking, inter
`alia, a declaratory judgment that “Dell does not directly or indirectly
`infringe any claim of the 948 Patent by making, using, selling, offering to
`sell, marketing, licensing or importing products that incorporate Intel
`networking technology.” Ex. 2505, 6. Again, Dell is the beneficiary of
`Intel’s actions.
`Furthermore, Intel’s motion to intervene avers “Intel seeks to
`intervene in this patent infringement action filed by Alacritech, Inc.
`(‘Alacritech’) to protect its interests and the interests of its customer, Dell
`Inc. (‘Dell’), the defendant in this action.” Ex. 1415, 6. Thus, Intel admits
`that its intervention in the litigation is, at least in part, for the benefit of its
`customer Dell (as well as other customers).
`Thus, Dell was a clear beneficiary of Intel’s intervention in the
`District Court litigation to indemnify and defend Dell. Intel’s intervention
`
`14
`
`

`

`CONFIDENTIAL - BOARD AND PARTIES ONLY
`
`IPR2018-00234
`Patent 8,805,948 B2
`
`sought to defend Dell against the alleged infringement of the ’948 patent.
`Dell would benefit from Intel’s intervention, to alleviate its potential liability
`to Alacritech from the District Court litigation.
`
`
`2. Dell is a Beneficiary of Intel’s Filing of Petitions
`An aspect of Intel’s strategy defending Dell clearly includes filing this
`Petition (and the prior petition in IPR2017-01395), as Dell is a beneficiary of
`Intel’s efforts to cancel claims of the ’948 patent at issue in the underlying
`litigation against Dell.
`Intel argues it was under no obligation to indemnify Dell (or any other
`defendant in the District Court litigation); it did not cooperate with Dell in
`deciding to file this Petition (or the earlier petition in IPR2017-01395); and
`it did not receive cooperation or funding from Dell (or other defendants) in
`preparing and filing these petitions. Reply 18–19 (citing in-house and
`outside counsel declaration Exs. 1301, 1302, both dated October 19, 2018).
`Intel’s outside counsel and lead attorney in this proceeding, Garland
`Stephens, also testified in January 2019 that,
`
`
`
`
` Ex. 1414 ¶ 5.
`Thus, Intel asserts it filed this Petition (and the earlier petition in IPR2017-
`01395) for its own benefit and not at the behest of Dell (or any other
`defendant). Reply 19. In the oral hearing on March 4, 2019, Mr. Stephens
`again argued that Intel had no obligation to indemnify or defend Dell with
`respect to the ’948 patent. Paper 65 (“Tr.”), 13:18–21
`
`
`
`15
`
`

`

`IPR2018-00234
`Patent 8,805,948 B2
`
`
`CONFIDENTIAL - BOARD AND PARTIES ONLY
`
`
`
`
`Petitioner’s arguments are not persuasive. As the Court held in AIT, it
`matters not whether Intel had an interest in filing this Petition independent of
`Dell, but instead, the focus is on whether Dell, Intel’s customer, had an
`interest in, and benefitted from, Intel’s filing of this Petition. AIT, 897 F.3d
`at 1353. As discussed above, Dell clearly benefits from Intel’s Petition for
`review seeking cancellation of claims at issue in the underlying litigation—
`regardless of what, if any, other reasons Intel may have had to file the
`Petition.
`
`3. Intel Adequately Represented Dell’s Interest in This Petition
`Dell sought to join this proceeding by filing a petition in IPR2018-
`01307 and moving to join the proceeding. Dell’s petition was, substantively,
`identical to Intel’s Petition in this case. Case IPR2018-01307 Paper 3, 4
`(“Petitioner’s petition raises the same grounds for unpatentability as the Intel
`’948 IPR petition and is based on the same testimony from the same
`technical expert . . . .”), 5 (“The Petition asserts only grounds on which the
`Board has already determined to grant institution in the Intel ’948 IPR,
`supported by the same technical expert and the same testimony. There are
`no new arguments for the Board to consider. Likewise, the Petition relies on
`the same exhibits.”).
`Granting joinder does not require identity of the arguments and
`evidence between Dell’s petition and Intel’s original petition. Dell
`apparently felt Intel’s arguments and evidence in this proceeding were
`sufficient to support its interest in challenging the patentability of claims of
`
`16
`
`

`

`CONFIDENTIAL - BOARD AND PARTIES ONLY
`
`IPR2018-00234
`Patent 8,805,948 B2
`
`the ’948 patent and filed a substantively identical pet