Trials@uspto.gov
`571-272-7822
`
` Paper No. 9
`Entered: April 20, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WISTRON CORPORATION,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00329
`Patent 7,673,072 B2
`____________
`
`Before STEPHEN C. SIU, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, 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. §§ 42.108, 42.122
`
`INTRODUCTION
`I.
`Wistron Corporation (“Wistron” or “Petitioner”) filed a Petition
`(Paper 1, “Pet.”) for inter partes review of claims 1–21 of U.S. Patent
`No. 7,673,072 B2 (“the ’072 Patent”) (Ex. 1001) pursuant to 35 U.S.C.
`§§ 311–319. Contemporaneous with the filing of the Petition, Petitioner
`
`
`571-272-7822
`
` Paper No. 9
`Entered: April 20, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WISTRON CORPORATION,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00329
`Patent 7,673,072 B2
`____________
`
`Before STEPHEN C. SIU, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, 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. §§ 42.108, 42.122
`
`INTRODUCTION
`I.
`Wistron Corporation (“Wistron” or “Petitioner”) filed a Petition
`(Paper 1, “Pet.”) for inter partes review of claims 1–21 of U.S. Patent
`No. 7,673,072 B2 (“the ’072 Patent”) (Ex. 1001) pursuant to 35 U.S.C.
`§§ 311–319. Contemporaneous with the filing of the Petition, Petitioner
`
`
`
`
`
`IPR2018‐00329
`
`Patent 7,673,072 B2
`
`
`filed a Motion for Joinder. Paper 3 (“Joinder Motion” or “Mot.”). The
`Joinder Motion seeks to join Wistron as a petitioner in Intel Corp. and
`Cavium, Inc. v. Alacritech, Inc., Case IPR2017-014061 (“the 1406 IPR”).
`Mot. 1. The Joinder Motion indicates Intel Corp. (“Intel”) and Cavium, Inc.
`(“Cavium”), current petitioners in the 1406 IPR, do not oppose Wistron’s
`request to join that proceeding. Id.
`Alacritech, Inc. (“Patent Owner”) did not file an Opposition to the
`Joinder Motion. Instead, 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 the 1406 IPR, and we grant
`Petitioner’s Joinder Motion.
`
`
`II. DISCUSSION
`A.
`Institution of Trial
`In the 1406 IPR, Intel and Cavium challenge the patentability of
`claims 1–21 of the ’072 Patent on the following ground:
`
`References
`Erickson2 and
`Tanenbaum963
`IPR2017-01406, Paper 1, 14.
`
`Basis
`§ 103
`
`Claims challenged
`1–21
`
`
`1 Cavium, Inc., which filed a petition and motion for joinder in Case
`IPR2017-01707, has been joined as a petitioner in the 1406 IPR.
`2 U.S. Patent No. 5,768,618. (“Erickson,” Ex. 1005).
`3 Andrew S. Tanenbaum, Computer Networks, Third Edition, 1996
`(“Tanenbaum96,” Ex. 1006).
`
`2
`
`
`
`IPR2018‐00329
`
`Patent 7,673,072 B2
`
`
`
`After considering the Petition and Patent Owner’s Preliminary
`Response in the 1406 IPR, we instituted trial for the above-identified ground
`of unpatentability. See IPR2017-01406, Paper 10, 21. Petitioner here,
`Wistron, represents that the present Petition is substantively identical to the
`Petition in the 1406 IPR, challenges the same claims based on the same
`ground, and is supported by “substantially the same expert declaration.”
`Mot. 4. We have considered the relevant Petitions and we agree with
`Petitioner’s representation that this Petition is substantially identical to the
`Petition in the 1406 IPR. Compare Pet., with IPR2017-01406, Paper 1.
`Patent Owner’s Preliminary Response does not expressly identify any
`differences from its Preliminary Response in the 1406 IPR. However, after
`reviewing Patent Owner’s Preliminary Responses here and in the 1406 IPR,
`we find the two responses to be substantially identical, with one exception.
`We note that, here, Patent Owner argues that Intel should have been named
`as a real party in interest because Intel is a supplier and indemnitor to
`Wistron and is an intervenor in Patent Owner’s litigation against Wistron.
`Prelim. Resp. 12–13. In the 1406 IPR, Patent Owner presented a similar
`argument in its Preliminary Response that Petitioner Intel should have
`named Dell Inc. (“Dell”) and Cavium as real parties in interest because of
`alleged supplier-indemnitor relationships between Intel and Dell and
`between Cavium and Dell. IPR2017-01406, Paper 9, 12–21. Here, Patent
`Owner argues the supplier/indemnitor relationship between Intel and
`Wistron requires that Intel be named as a real party in interest. Prelim.
`Resp. 12–21.
`We have reviewed Patent Owner’s arguments. On the record before
`us and for purposes of this Decision, and for similar reasons as in the 1406
`
`
`
`3
`
`
`
`IPR2018‐00329
`
`
`
`Patent 7,673,072 B2
`
`
`IPR, we determine there is insufficient evidence that Intel controlled, or had
`the opportunity to control, this Petition and, thus, that Intel is not a real party
`in interest. See IPR2017-01406, Paper 10, 3–6. Moreover, the issue Patent
`Owner raises is not jurisdictional. See Lumentum Holdings, Inc. v. Capella
`Photonics, Inc., Case IPR2015-00739, slip op. at 6 (PTAB March 4, 2016)
`(Paper 38) (precedential). As in the 1406 IPR, Patent Owner does not allege
`that naming additional real parties in interest such as Intel would bar
`Petitioner in the instant proceeding. See IPR2017-01406, Paper 10, 5–6.
`Accordingly, for essentially the same reasons stated in our Decision to
`Institute in the 1406 IPR, 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 1–21 on the same
`ground as in that case.
`
`
`
`B. Motion for Joinder
`Based on authority delegated to us by the Director, we have discretion
`to join a petitioner for inter partes review as a party 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 1406 IPR subject to the condition
`that:
`
`In the joined proceeding, Petitioner here (i.e., Wistron
`Corporation) will be bound by all substantive and procedural
`filings and representations of the current petitioners in IPR2017-
`
`4
`
`
`
`
`
`IPR2018‐00329
`
`Patent 7,673,072 B2
`
`
`
`01406 (i.e., Intel Corp. and Cavium, Inc.), without a separate
`opportunity to be heard, whether orally or in writing, unless and
`until the joined proceeding is terminated with respect to both
`Intel and Cavium in IPR2017-01406.
`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 grounds. Moreover, discovery and
`briefing will be simplified if Wistron is joined as a petitioner in the 1406
`IPR.
`
`
`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 1–21 of the ’072 Patent as obvious under
`35 U.S.C. § 103(a) over Erickson and Tanenbaum96;
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2017-01406 is granted and Wistron Corporation is joined as a petitioner
`in IPR2017-01406 pursuant to 37 C.F.R. § 42.122(b), on the condition that:
`In the joined proceeding, Petitioner here (i.e., Wistron Corporation) will be
`bound by all substantive and procedural filings and representations of the
`current petitioners in IPR2017-01406 (i.e., Intel Corp. and Cavium, Inc.),
`without a separate opportunity to be heard, whether orally or in writing,
`unless and until the joined proceeding is terminated with respect to both
`Intel and Cavium in IPR2017-01406;
`
`
`
`5
`
`
`
`IPR2018‐00329
`
`Patent 7,673,072 B2
`
`
`
`
`
`FURTHER ORDERED that the ground on which an inter partes
`review was instituted in Case IPR2017-01406 remains unchanged, and no
`other grounds are instituted in the joined proceeding;
`FURTHER ORDERED that the Scheduling Order in place for
`IPR2017-01406 (Paper 12) shall govern the joined proceeding;
`FURTHER ORDERED that IPR2018-00329 is terminated under
`37 C.F.R. § 42.72, and that all future filings in the joined proceeding are to
`be made only in IPR2017-01406;
`FURTHER ORDERED that the case caption in IPR2017-01406 for all
`further submissions shall be changed to add Petitioner (Wistron Corporation)
`as a named petitioner, and to indicate by footnote the joinder of Petitioner
`Wistron 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 IPR2017-01406.
`
`
`
`
`
`
`
`6
`
`
`
`
`
`IPR2018‐00329
`
`
`
`Patent 7,673,072 B2
`
`PETITIONER:
`
`Benjamin E. Weed
`Erik J. Halverson
`K&L GATES LLP
`benjamin.weed.PTAB@klgates.com
`erik.halverson@klgates.com
`
`PATENT OWNER:
`
`James M. Glass
`Joseph M. Paunovich
`Brian E. Mack
`Ziyong Li
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`jimglass@quinnemanuel.com
`joepaunovich@quinnemanuel.com
`brianmack@quinnemanuel.com
`seanli@quinnemanuel.com
`
`Mark Lauer
`SILICON EDGE LAW GROUP LLP
`mark@siliconedgelaw.com
`
`
`
`
`
`
`
`
`7
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORP., CAVIUM, INC., and
`WISTRON CORPORATION,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-014064
`Patent 7,673,072 B2
`
`
`
`
`4 Wistron Corporation, which filed a Petition in Case IPR2018-00329, has
`been joined as a petitioner in this proceeding.
`
`
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