Trials@uspto.gov
`571-272-7822
`
`Paper 22
`Entered: October 3, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORPORATION,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00226 (Patent 7,124,205 B2)
`Case IPR2018-00234 (Patent 8,805,948 B2)
`____________
`
`CAVIUM, LLC,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00401 (Patent 7,945,699 B2) 1
`____________
`
`1 This Order applies to each captioned case. The parties are not authorized
`to use this heading style for any subsequent papers.
`
`
`571-272-7822
`
`Paper 22
`Entered: October 3, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORPORATION,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00226 (Patent 7,124,205 B2)
`Case IPR2018-00234 (Patent 8,805,948 B2)
`____________
`
`CAVIUM, LLC,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00401 (Patent 7,945,699 B2) 1
`____________
`
`1 This Order applies to each captioned case. The parties are not authorized
`to use this heading style for any subsequent papers.
`
`
`
`IPR2018-00226 (Patent 7,124,205 B2)
`IPR2018-00234 (Patent 8,805,948 B2)
`IPR2018-00401 (Patent 7,945,699 B2)
`
`Before STEPHEN C. SIU, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`
`ORDER
`Authorizing Motion for Additional Discovery
`37 C.F.R. § 42.51(b)(2)
`
`
`
`
`1.
`
`Introduction
`
`A conference call was held on October 2, 2018, between counsel for
`
`the respective parties and Judges Boudreau and Siu. Petitioner Intel
`
`Corporation (“Intel”) was represented on the call by Garland Stephens,
`
`Melissa Hotze, and Anne Capella. Petitioner Cavium, LLC (“Cavium”) was
`
`represented by Patrick McPherson, Karineh Khachatourian, and David Xue.
`
`Patent Owner Alacritech, Inc. (“Alacritech”) was represented by James
`
`Glass, Joseph Paunovich, and Sean Li. The conference call was requested
`
`by Alacritech to discuss authorization to file a motion for additional
`
`discovery related to the relationship, if any, between each of Intel and
`
`Cavium, on the one hand, and Dell, Inc. (“Dell”) and CenturyLink, which
`
`Alacritech alleges to be undisclosed real parties in interest, on the other
`
`hand.
`
`2.
`
`Discussion
`
`Pursuant to 37 C.F.R. § 42.51(b)(2), a party may move for additional
`
`discovery where the parties fail to agree to the scope of voluntary discovery
`
`in an inter partes review proceeding.
`
`2
`
`
`
`IPR2018-00226 (Patent 7,124,205 B2)
`IPR2018-00234 (Patent 8,805,948 B2)
`IPR2018-00401 (Patent 7,945,699 B2)
`
`
`As stated during the aforementioned October 2 conference call, we
`
`authorize Alacritech to file a motion for additional discovery in each of the
`
`captioned cases. More specifically, Alacritech is authorized to file a single,
`
`substantively identical motion for additional discovery from Intel in both
`
`IPR2018-00226 and IPR2018-00234, given the identicality of the Petitioner
`
`entity in those cases. Alacritech is also authorized to file a separate motion
`
`for additional discovery from Cavium in IPR2018-00401. The motions shall
`
`not exceed ten pages in length each, and are due no later than Thursday,
`
`October 11, 2018. We direct Alacritech’s attention to the requirement of
`
`37 C.F.R. § 42.51(b)(2) that the moving party must show that such
`
`additional discovery is in the “interests of justice.” We also direct
`
`Alacritech’s attention to Garmin International, Inc. v. Cuozzo Speed
`
`Technologies LLC, IPR2012-00001, Paper 26 (PTAB Mar. 5, 2013)
`
`(precedential), laying out factors to be considered in connection with a
`
`motion for additional discovery. Alacritech shall file its proposed discovery
`
`requests as an exhibit in the respective cases. Although such exhibits will
`
`not count against the ten-page limit in each case, Alacritech is cautioned that
`
`we expect to take into account, in making our determination whether to grant
`
`its motions, whether the discovery requests are sufficiently narrowly tailored
`
`to result in obtaining relevant, admissible evidence of privity between Intel
`
`or Cavium, on the one hand, and Dell or CenturyLink, on the other hand.
`
`Should Alacritech file its motions, we authorize Intel to file
`
`substantively identical oppositions in IPR2018-00226 and IPR2018-00234,
`
`and we authorize Cavium to file an opposition in IPR2018-00401. The
`
`3
`
`
`
`IPR2018-00226 (Patent 7,124,205 B2)
`IPR2018-00234 (Patent 8,805,948 B2)
`IPR2018-00401 (Patent 7,945,699 B2)
`
`oppositions shall not exceed ten pages in length and are due no later than
`
`Friday, October 19, 2018.
`
`
`
`It is
`
`ORDER
`
`ORDERED that, in each of the captioned inter partes review
`
`proceedings, Alacritech is authorized to file a motion for additional
`
`discovery that shall not exceed ten pages in length, and is due no later than
`
`October 11, 2018;
`
`FURTHER ORDERED that any such motions for additional
`
`discovery filed in IPR2018-00226 and IPR2018-00234 are to be
`
`substantively identical to each other;
`
`FURTHER ORDERED that Alacritech shall file proposed discovery
`
`requests as an exhibit in the respective cases, which exhibit will not count
`
`against the ten-page limit set forth above;
`
`FURTHER ORDERED that Intel is authorized to file a substantively
`
`identical opposition to any such motions filed by Alacritech in IPR2018-
`
`00226 and IPR2018-00234, no later than October 19, 2018; and
`
`FURTHER ORDERED that Cavium is authorized to file an
`
`opposition to any such motion filed by Alacritech in IPR2018-00401.
`
`
`
`
`
`4
`
`
`
`IPR2018-00226 (Patent 7,124,205 B2)
`IPR2018-00234 (Patent 8,805,948 B2)
`IPR2018-00401 (Patent 7,945,699 B2)
`
`FOR PETITIONER INTEL CORPORATION:
`
`Garland T. Stephens
`William S. Ansley
`Anne M. Capella
`Justin L. Constant
`Melissa L. Hotze
`Adrian Percer
`WEIL, GOTSHAL & MANGES LLP
`garland.stephens@weil.com
`sutton.ansley@weil.com
`anne.cappella@weil.com
`justin.constant@weil.com
`melissa.hotze@weil.com
`adrian.percer@weil.com
`
`FOR PETITIONER CAVIUM, LLC:
`
`Patrick McPherson
`DUANE MORRIS LLP
`pdmcpherson@duanemorris.com
`
`Karineh Khachatourian
`David Xue
`RIMÔN, P.C.
`karinehk@rimonlaw.com
`david.xue@rimonlaw.com
`
`
`FOR PATENT OWNER ALACRITECH, INC.:
`
`James M. Glass
`Brian E. Mack
`Joseph M. Paunovich
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`jimglass@quinnemanuel.com
`brianmack@quinnemanuel.com
`joepaunovich@quinnemanuel.com
`
`5
`
`
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