Filed October 23, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
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`INTEL CORPORATION, CAVIUM, LLC, and DELL INC.,1
`Petitioner
`v.
`ALACRITECH, INC.,
`Patent Owner
`______________________
`Case IPR2018-00234
`U.S. Patent No. 8,805,948
`______________________
`PETITIONERS’ UNOPPOSED MOTION TO PRESERVE THE RECORD
`PENDING APPEAL
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`1 Cavium, LLC (formerly Cavium, Inc.) (“Cavium”) which filed a Petition in Case
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`IPR2018-00403, and Dell Inc. (“Dell”), which filed a Petition in Case IPR2018-
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`01307, have been joined as petitioners in this proceeding.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
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`INTEL CORPORATION, CAVIUM, LLC, and DELL INC.,1
`Petitioner
`v.
`ALACRITECH, INC.,
`Patent Owner
`______________________
`Case IPR2018-00234
`U.S. Patent No. 8,805,948
`______________________
`PETITIONERS’ UNOPPOSED MOTION TO PRESERVE THE RECORD
`PENDING APPEAL
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`1 Cavium, LLC (formerly Cavium, Inc.) (“Cavium”) which filed a Petition in Case
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`IPR2018-00403, and Dell Inc. (“Dell”), which filed a Petition in Case IPR2018-
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`01307, have been joined as petitioners in this proceeding.
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`I. RELIEF REQUESTED
`Pursuant to the Board’s authorization dated October 21, 2019 (see Paper 77),
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`Petitioner Intel Corporation (“Intel”), Cavium, and Dell (collectively “Petitioners”)
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`respectfully request that the Board (i) preserve the record for appeal by maintaining
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`the confidentiality of Exhibits 1414, 1422-24, 1449, 1452, 1502, 1504, 1506, 2038,
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`2501, 2503, and 2601 and Papers 42, 45, 49, 50, 53, 65, 66, 71, and 75 and (ii)
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`provide the parties an opportunity to file a motion to expunge those documents
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`within 45 days after all appeal rights have been exhausted or within 45 after the
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`deadline to file a notice of appeal if no such notice is filed. Petitioners have
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`conferred with Patent Owner, Alacritech, Inc. (“Alacritech”), and Alacritech does
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`not oppose this Motion. Alacritech reserves its right to oppose any motions to
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`expunge.
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`II. BACKGROUND
`The Board entered a stipulated protective order on October 2, 2018 and a
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`revised protective order on December 20, 2018. See Ex. 2401 at 33:2-6; Paper 33.
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`During the course of this proceeding, Intel filed motions to seal all or portions
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`of Exhibits 1414, 1422-1424, 1449, 1452, 1504, and 1506 and Papers 45, 53, 66, and
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`71 (which cited those Exhibits) as containing confidential business information. See
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`Papers 36, 46, 55, 62, 68, 73, and 74. Cavium moved to seal Exhibit 1502 as
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`containing confidential business information. See Paper 58. Alacritech moved to
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`seal Exhibits 2038, 2501, 2503, and 2601 and Papers 42, 49, 50, and 75 (which cited
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`those Exhibits) as containing confidential business information or information
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`designated as such by another party. See Papers 17, 43, 51, 61, and 76. The motions
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`to seal are pending before the Board. Additionally, the Board filed Paper 65, the
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`transcript from the oral hearing on March 4, 2019, under seal because it included
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`confidential information. See Paper 65 at 51:18-52:10. The parties submitted
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`redactions to the Board on May 31st. See Paper 67 (redacted version of the
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`transcript).
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`On June 4, 2019, the Board entered an Order Dismissing the Petition,
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`Vacating Institution of Inter Partes Review, and Terminating Inter Partes Review
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`(“Order”) (Paper 66). The Board denied Petitioners’ Motion for Reconsideration on
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`August 28, 2019. (Paper 71). On October 14, 2019, Intel contacted the Board and
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`the parties to seek preservation of the record and an extension for the deadline to file
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`motions to expunge. The Board authorized Petitioners to file this motion on October
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`21, 2019. (Paper 77).
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`Petitioners have not yet decided whether to appeal the Board’s Order to the
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`U.S. Court of Appeals for the Federal Circuit. The deadline to file a notice of appeal
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`is October 30, 2019.
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`2
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`III. ARGUMENT
`Petitioners seek to extend the default deadline for unsealing Exhibits 1414,
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`1422-24, 1449, 1452, 1502, 1504, 1506, 2038, 2501, 2503, and 2601 and Papers 42,
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`45, 49, 50, 53, 65, 66, 71, and 75 in order to maintain the record intact until the
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`resolution of any appeal, should any Petitioner choose to file one. Confidential
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`information that is subject to a protective order will ordinarily become public 45
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`days after final judgment unless a motion to expunge is filed. 37 C.F.R. § 42.56;
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,761 (Aug. 14, 2012).
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`However, Petitioners have 63 days from entry of judgment to file a notice of appeal.
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`37 C.F.R. § 90.3. Petitioners cannot move to expunge their confidential information
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`because the Federal Circuit may need the current record to evaluate a possible
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`appeal.
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` Additionally, the Federal Circuit Rules require the Board to retain the record
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`of this proceeding pending appeal. Federal Circuit Rule 17(a) states that “[t]he
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`agency must retain the record[.]” Federal Circuit Rule 17(d) is entitled “Access of
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`Parties and Counsel to Original Record” and requires the parties and their counsel
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`have access to both the sealed and unsealed portions of the record “[w]hen a petition
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`for review or notice of appeal is filed[.]”
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`Accordingly, Petitioners request that the entire docket in this case be
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`preserved pending a possible appeal, including preservation of all sealed documents
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`in non-public form. The Board has previously granted similar requests. See Arctic
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`Cat, Inc. v. Polaris Indus. Inc., IPR2014-01427, Paper 62 at 2 (PTAB Mar. 8, 2016)
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`(ordering “any documents currently under seal in non-public form will be
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`maintained as such until the conclusion of any and all appeals”); IBM Corp. v.
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`Intellectual Ventures II LLC, IPR2014-00786, Paper 49 at 2-3 (PTAB Nov. 20,
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`2015) (ordering the record to be maintained and undisturbed pending the outcome
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`of any appeal); see also Illumina, Inc. v. The Trustees of Columbia University in the
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`City of New York, IPR2012-00006, Paper 133 at 3 (PTAB Apr. 25, 2014); Intelligent
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`Bio-Systems, Inc. v. Illumina Cambridge Ltd., IPR2013-00128, Paper 93 at 2-3
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`(PTAB Sept. 10, 2014); Chevron North America, Inc. v. Milwaukee Elec. Tool
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`Corp., IPR2015-00595, Paper 82 at 3 (PTAB Sept. 7, 2016); Merck Sharp & Dohme
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`Corp. v. Mayne Pharm. Int’l Pty Ltd., IPR2016-01186, Paper 75 at 4 (PTAB Feb. 8,
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`2018); Acrux DDS Pty Ltd. v. Kaken Pharm. Co., IPR2017-00190, Paper 101 at 2-3
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`(PTAB Dec. 21, 2018).
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`Petitioners further request that the Board extend the deadline for filing a
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`motion to expunge under 37 C.F.R. § 42.56 to allow the confidentiality of the sealed
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`documents to be preserved, such that the parties may file motions to expunge within
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`45 days after all appeal rights have been exhausted or within 45 after the deadline to
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`file a notice of appeal if no such notice is filed. See, e.g., Kayak Software Corp. v.
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`IBM Corp., IPR2016-00608, Paper 67 at 43-44 (PTAB Aug. 7, 2017); L-3
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`Commc’ns Holdings, Inc. v. Power Survey, LLC, IPR2014-00834, Paper 70 at 2-3
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`(PTAB Jan. 12, 2016).
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`Should the Board deny the relief requested herein, Petitioners respectfully
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`request that the Board provide the parties with a reasonable amount of time from the
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`denial to file a motion to expunge the confidential material.
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`IV. CONCLUSION
`Based on the foregoing, Petitioners respectfully request that the Board (i)
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`preserve the record for appeal by maintaining the confidentiality of Exhibits 1414,
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`1422-24, 1449, 1452, 1502, 1504, 1506, 2038, 2501, 2503, and 2601 and Papers 42,
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`45, 49, 50, 53, 65, 66, 71, and 75 and (ii) provide an opportunity to file a motion to
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`expunge those documents within 45 days after all appeal rights have been exhausted
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`or within 45 after the deadline to file a notice of appeal if no such notice is filed.
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`Dated: October 23, 2019
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`Respectfully Submitted,
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`/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
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`Anne M. Cappella, Reg. No. 43,217
`Adrian Percer, Reg. No. 46,986
`Amanda Branch (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
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`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
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`Attorneys for Petitioner Intel
`Corporation
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` /s/ Karineh Khachatourian
`Karineh Khachatourian (pro hac vice)
`David Xue, Reg. No. 54,554
`Rimon Law
`2479 E Bayshore Road, Suite 210
`Palo Alto, CA 94303
`Tel: (650) 461-4433
`karinehk@rimonlaw.com
`david.xue@rimonlaw.com
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`Attorneys for Petitioner Cavium. LLC
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` /s/ Brady Cox
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`Christopher Douglas, Reg. No. 56,950
`Kirk Bradley, Reg. No. 46,571
`Alston & Bird
`Bank of America Plaza
`101 South Tryon Street, Suite 4000
`Charlotte, NC 28280
`christopher.douglas@alston.com
`kirk.bradley@alston.com
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`Brady Cox (pro hac vice)
`Alston & Bird
`Chase Tower
`2200 Ross Avenue, Suite 2300
`Dallas, TX 75201
`brady.cox@alston.com
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`Attorneys for Petitioner for Dell Inc.
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`CERTIFICATE OF SERVICE
`I hereby certify that on October 23, 2019, a copy of PETITIONERS’
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`UNOPPOSED MOTION TO PRESERVE THE RECORD PENDING
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`APPEAL was served by filing this document through the PTAB’s E2E Processing
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`System as well as delivering a copy via electronic mail upon the following counsel
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`of record:
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`alacritech-ipr-team@quinnemanuel.com
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`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
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`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
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`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
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`Attorneys for Patent Owner Alacritech, Inc.
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`Karineh Khachatourian
`Rimon Law
`2479 E Bayshore Road, Suite 210
`Palo Alto, CA 94303
`Tel.: (650) 461-4433
`Email: karinehk@rimonlaw.com
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`David Xue
`Rimon Law
`2479 E Bayshore Road, Suite 210
`Palo Alto, CA 94303
`Tel.: (650) 461-4433
`Email: david.xue@rimonlaw.com
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`Attorneys for Petitioner Cavium, LLC
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`Christopher Douglas
`Alston & Bird
`Bank of America Plaza
`101 South Tryon Street, Suite 4000
`Charlotte, NC 28280
`Tel.: (704) 444-1119
`Email: christopher.douglas@alston.com
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`Kirk Bradley
`Alston & Bird
`Bank of America Plaza
`101 South Tryon Street, Suite 4000
`Charlotte, NC 28280
`Tel.: (704) 444-1030
`Email: kirk.bradley@alston.com
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`Brady Cox
`Alston & Bird
`Chase Tower
`2200 Ross Avenue, Suite 2300
`Dallas, TX 75201
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`Tel.: (214) 922-3400
`Email: brady.cox@alston.com
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`Attorneys for Petitioner for Dell Inc.
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`Dated: October 23, 2019
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`/s/ Garland T. Stephens
`Garland T. Stephens
`Reg. No. 37,242
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