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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________________
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`PATENT TRIAL AND APPEAL BOARD
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`______________________
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`WISTRON CORP.
`Petitioner
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`v.
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`ALACRITECH INC.
`Patent Owner
`
`____________________________
`
`CASE: IPR2018-00329
`U.S. PATENT NO. 7,673,072
`____________________________
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`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. §315(c), 37 C.F.R. §§ 42.22 and 42.122(b)
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`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`IPR2018-00329
`U.S. Patent No. 7,673,072
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`TABLE OF CONTENTS
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`STATEMENT OF RELIEF REQUESTED .............................................. 1
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`STATEMENT OF MATERIAL FACTS .................................................. 2
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`I.
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`II.
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`III.
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`STATEMENT OF REASONS FOR REQUESTED RELIEF .................. 3
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`a.
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`b.
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`Legal Standards ............................................................................... 3
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`Joinder is Appropriate ..................................................................... 4
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`i.
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`ii.
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`No New Grounds of Unpatentability are Presented ............. 7
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`Joinder Will Not Impact The Board’s Ability to
`Complete the Review in a Timely Manner ........................... 8
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`iii. Briefing and Discovery Will be Simplified .......................... 9
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`iv.
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`There is No Prejudice to the Patent Owner ........................... 9
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`IV. CONCLUSION ........................................................................................ 10
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`IPR2018-00329
`U.S. Patent No. 7,673,072
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`
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`I.
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`STATEMENT OF RELIEF REQUESTED
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`Wistron Corp. (“Petitioner”) respectfully submits this Motion for Joinder
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`together with the presently submitted Petition for inter partes review (“IPR”) of
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`claims 1-21 (“the challenged claims”) of U.S. Patent No. 7,673,072 (“this Petition”
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`or “the Present Petition” and “the 072 patent”). Pursuant to 35 U.S.C. §315(c) and
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`37 C.F.R. § 42.122(b), Petitioner hereby requests IPR of the challenged claims and
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`joinder with Intel Corp. v. Alacritech, Inc., IPR2017-01406 (“the Intel IPR”) which
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`was instituted on November 28, 2017. Joinder is appropriate because it will
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`promote judicial efficiency, promote consistent resolution of the unpatentability
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`grounds at issue and will not prejudice the parties of the Intel IPR.
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`Petitioner notes that Cavium, Inc. has been joined to the Intel IPR.
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`Cavium’s joinder has minimal impact on this Motion, but Petitioner agrees that
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`should Intel terminate its involvement, Petitioner will continue to play the role of a
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`“silent understudy” to Cavium’s involvement in the proceeding.
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`This Motion and this Petition are being filed within one month of the
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`institution decision in the Intel IPR, and are therefore timely. Counsel for
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`Petitioner has conferred with Counsel for Intel as well as Counsel for Cavium Inc.,
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`which was previously joined to the Intel IPR, and both Intel and Cavium do not
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`oppose joinder. Additionally, Counsel for Petitioner has conferred with Counsel
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`for Patent Owner Alacritech Inc. (“Alacritech”) by sending an email indicating
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`1
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`IPR2018-00329
`U.S. Patent No. 7,673,072
`intent to file “silent understudy” motions for joinder on December 18, 2017, by
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`sending a draft of the motion for joinder on December 19, 2017, and drafts of the
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`petitions on December 19, 2017 and December 20, 2017. Patent Owner has not
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`indicated whether or not it opposes this motion.
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`II.
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`STATEMENT OF MATERIAL FACTS
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`On June 30, 2016, Alacritech sued Petitioner, SMS InfoComm Corporation,
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`and Wiwynn Corporation in the Eastern District of Texas alleging infringement of
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`the ‘072 patent. See Alacritech Inc. v. Wistron Corp. et al., case no. 2-16-cv-00692
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`(E.D. Tex. June 30, 2016). On the same day in a different proceeding (“the Dell
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`proceeding”), Alacritech sued Dell Inc. See Alacritech Inc. v. Dell Inc., case no. 2-
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`16-cv-00695 (E.D. Tex. June 30, 2016). On February 15, 2017, Intel intervened in
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`the Dell proceeding and subsequently timely filed the Intel Petition on May 9,
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`2017 within one year of the commencement of the Dell Proceeding. See Intel
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`Corp. v. Alacritech, Inc., IPR2017-01406, Paper 2 (P.T.A.B. May 9, 2017). The
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`Board instituted IPR of the challenged claims on November 28, 2017. On
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`December 15, 2017, Cavium, Inc. was joined to the Intel Petition. Cavium, Inc. v.
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`Alacritech, Inc., IPR2017-01707, Paper 8 (P.T.A.B. Dec. 15, 2017).
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`As a result of this Motion, Petitioner is not subject to the one-year time bar
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`for this Petition. See 35 U.S.C. §315(b); 37 C.F.R. §42.122(b). Accordingly the
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`filing of this Motion and this Petition are timely. See 37 C.F.R. §42.122(b). The
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`2
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`IPR2018-00329
`U.S. Patent No. 7,673,072
`grounds of unpatentability are identical to the positions in the Intel IPR.
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`III. STATEMENT OF REASONS FOR REQUESTED RELIEF
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`a. Legal Standard
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`The Board has the authority under 35 U.S.C. §315(c) to grant a motion for
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`joinder of a party filing a proper IPR petition to a previously instituted IPR
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`proceeding. This authority is discretionary. See 35 U.S.C. §315(b); 37 C.F.R.
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`§42.122(b).
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`In exercising this discretionary authority, the Board considers the impact
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`joinder would have on the proceedings, including substantive and procedural
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`issues, as well as other issues that may be implicated by joinder, while remaining
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`“mindful that patent trial regulations, including the rules for joinder, must be
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`constructed to secure the just, speedy, and inexpensive resolution of every
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`proceeding.” See Dell, Inc. v. Network-1 Security Solutions, Inc., IPR2013-00385,
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`Paper No. 17 at 3 (P.T.A.B. July 29, 2013) at 3. The Board should consider “the
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`policy preference for joining a party that does not present new issues that might
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`complicate or delay an existing proceeding.” Id. at 10. Under this framework,
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`joinder of this Petition with the Intel IPR is appropriate.
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`Specifically, a “motion for joinder should: (1) set forth the reasons why
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`joinder is appropriate; (2) identify any new grounds of unpatentability asserted in
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`the petition; (3) explain what impact (if any) joinder would have on the trial
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`3
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`IPR2018-00329
`U.S. Patent No. 7,673,072
`schedule for the existing review; and (4) address specifically how briefing and
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`discovery may be simplified.” Id. at 4. Each of these issues is addressed fully
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`herein and each favors granting this Motion.
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`b. Joinder is Appropriate
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`Although joinder is discretionary, it is appropriate here because this Petition
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`does “not present issues that might complicate or delay” the instituted Intel IPR.
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`See Enzymotec Ltd. v. Neptune Techs & Bioresources, Inc., IPR2014-00556, Paper
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`19 at 6 (P.T.A.B. July 9, 2014) (“we are mindful of a policy preference for joining
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`a party that does not present new issues that might complicate or delay an existing
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`proceeding”). As this Petition contains the same ground on which the Intel IPR
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`was instituted—and no additional grounds—joinder would secure the just, speedy,
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`and inexpensive resolution of the related proceedings.
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`This Petition presents identical grounds, relies on the same prior art, and
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`substantially the same expert declaration of the same expert as the Intel IPR.
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`Additionally, given that Intel and Petitioner have presented identical arguments
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`relying on identical evidence, Petitioner agrees that, should this Motion be granted,
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`Petitioner will not file additional briefing, will not request additional deposition
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`time, and will not request any additional oral hearing time.1 With regard to any
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`1 Petitioner reserves the right to attend depositions, the oral hearing, phone
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`conferences, and other events that may occur during the proceeding. However
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`4
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`IPR2018-00329
`U.S. Patent No. 7,673,072
`oral hearing, Intel—to the extent they do not leave the proceeding—will be
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`responsible for the presentation before the Board and Petitioner will not request
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`any additional time to independently argue any points or attempt to submit its own
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`demonstratives. Accordingly, Petitioner plans to play the role of a “silent
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`understudy” in the proceedings unless Intel terminates its involvement in the Intel
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`IPR. Family Care Ltd. v. Allergen, Inc., IPR 2017-00566 Paper 12, page 9
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`(P.T.A.B. July 12, 2017).
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`Petitioner moves to join the Intel IPR to ensure that the instituted proceeding
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`reaches a Final Written Decision in the event that Intel settles with Patent Owner
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`and the parties request the review be dismissed. In that regard, “[a]n inter partes
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`review…shall be terminated with respect to any petitioner upon the joint request of
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`the petitioner and the patent owner.” 35 U.S.C. § 317(a). In the event that the
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`Intel IPR is terminated with respect to Intel and Cavium, Petitioner intends to “step
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`into the shoes” of the dismissed petitioner and materially participate in the joined
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`proceedings at that time.
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`In previous proceedings, the Board has exercised its discretion not to
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`Petitioner’s involvement will not be an impediment to scheduling such
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`activities. In order to ensure that any potential transition in the event of an Intel
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`termination, Petitioner respectfully requests that should this Motion be granted,
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`they be included as an observer in all proceedings.
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`5
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`IPR2018-00329
`U.S. Patent No. 7,673,072
`terminate a review after dismissing the petitioner because of a pending joinder
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`motion in a related proceeding. See MediaTek Inc., et al. v. Bandspeed, Inc.,
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`IPR2015-00314, Paper 20 at 3 (P.T.A.B. Sept. 17, 2015) (“We exercise the
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`discretion afforded under 35 U.S.C. § 317(a) to decline, at this time, to terminate
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`these proceedings with respect to Patent Owner”). Further, the Board noted that a
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`motion for joinder was pending in MediaTek and exercised its discretion to wait for
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`a ruling on the motion for joinder to consider whether to terminate the instituted
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`IPR.
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`In the event Intel and Cavium move to terminate the Intel IPR before the
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`Board decides this Motion, Petitioner respectfully requests that any such
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`determination with regard to termination be delayed until the Board has ruled on
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`this Motion. If the Intel IPR is terminated before joinder occurs, the resources
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`expended by the Board and the parties would be wasted and a proceeding with
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`identical grounds of unpatentability would be repeated in the district court,
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`requiring the parties to expend duplicative resources rearguing the same issues and
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`reiterating the same arguments.
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`Petitioner notes that it would be time barred from filing a Petition without
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`this Motion. However, joinder is warranted to permit Petitioner to protect its
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`interest in ensuring the instituted proceedings are seen through to Final Written
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`Decision. See 37 C.F. R. § 42.122(b).
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`6
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`IPR2018-00329
`U.S. Patent No. 7,673,072
`Petitioner also submits that this Motion has been authorized by 37 C.F.R.
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`42.122(b) which “authorize[s] the filing of a motion for joinder.” ZTE
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`Corporation v. Cellular Communications Equipment, IPR2017-01079, Paper 10 at
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`p.5 (P.T.A.B October 4, 2017). Accordingly, Petitioner respectfully submits that
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`pre-authorization from the Board is not necessary.
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`Accordingly, joinder is appropriate in the present case as the grant of this
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`Motion would eliminate
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`the possibility of duplicate efforts, expensive
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`reconsideration of decided issues and ensures a just, speedy, and inexpensive
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`resolution of these proceedings. For the reasons above, joinder of the Present IPR
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`to the Intel IPR will not affect the Board’s ability to complete its review and issue
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`a final decision within the statutory time limits under 35 U.S.C. § 316(a)(11) and
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`37 C.F.R. § 42.100(c).
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`i. No New Grounds of Unpatentability are Presented
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`The Board instituted the Intel IPR on one ground based on 35 U.S.C. § 103
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`with respect to the challenged claims with regard to U.S. Patent No. 5,768,618
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`(“Erickson”) and Andrew Tanenbaum, COMPUTER NETWORKS (3d ed. 1996)
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`(“Tanenbaum”). This Petition asserts that the challenged claims of the 072 patent
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`are invalid under 35 U.S.C. § 103 in view of Erickson and Tanenbaum.
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`This Petition challenges the same claims as the Intel IPR, relying on the
`
`same grounds as the Intel IPR, with the same arguments as the Intel IPR, and relies
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`7
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`IPR2018-00329
`U.S. Patent No. 7,673,072
`on the same evidence and the same testimony of Dr. Horst as the Intel IPR.
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`Accordingly no new claims and no new grounds of unpatentability will be added to
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`the Intel IPR as a result of a grant of this Motion. However, should the Board elect
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`to deny this Motion and in the event Intel terminates the Intel IPR before a Final
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`Written Decision can be reached, extensive resources by the parties as well as by
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`the Board would have been wasted. This Motion seeks to ensure that the
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`proceedings continue through a Final Written Decision.
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`ii. Joinder Will Not Impact The Board’s Ability to Complete the
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`Review in a Timely Manner
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`Granting Petitioner’s Motion for Joinder will not impact the Board’s ability
`
`to complete the Intel IPR in a timely manner. The Board endeavors to complete
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`IPR proceedings and issue final written decisions within one year of institution.
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`See 35 U.S.C. § 316(a)(11); 37 C.F.R. § 42.100(c). Granting this Motion will not
`
`affect the Board’s ability to issue such a decision within this required one-year
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`timeframe because this Petition contains the identical ground on which the Intel
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`IPR was instituted and Petitioner agrees to undertake the role of a silent understudy
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`unless Intel terminates their involvement in the proceeding.
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`Should this Motion be granted, Petitioner will not file additional briefing,
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`will not request additional deposition time, and will not request any additional oral
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`hearing time. Moreover, granting this Motion will not impact the Board’s Trial
`
`8
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`IPR2018-00329
`U.S. Patent No. 7,673,072
`Schedule. Accordingly joinder of this Petition to the Intel IPR will not affect the
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`Board’s ability to complete its review and issue a final written decision within the
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`statutory time limits under 35 U.S.C. § 316(a)(11) and 37 C.F.R. § 42.100(c).
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`iii. Briefing and Discovery Will be Simplified
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`The aforementioned agreements between Petitioner and Intel will ensure a
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`speedy and simplified trial, minimizing any impact granting this Motion may have
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`on the proceedings. As noted, Petitioner will not rely upon any additional
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`evidence, Petitioner will not request any additional briefing, Petitioner will not
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`request any additional time during depositions or at hearings.
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`Accordingly, if this Motion is granted, briefing and discovery in the joined
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`proceeding will be no more complex than if Petitioner had never been joined.
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`Consolidated briefing and discovery will ensure a simplified and efficient joined
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`proceeding.
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`iv. There is No Prejudice to the Patent Owner
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`Granting this Motion will not create any additional burden on the Patent
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`Owner. The Patent Owner will not be required to expend any additional resources
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`above and beyond what they are already required to do in the Intel IPR. Moreover,
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`Petitioner notes that joinder will bind Petitioner to the same estoppel provisions
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`that apply to Intel with regard to Erickson and Tanenbaum. Accordingly, there
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`will in fact be a reduced burden to Patent Owner should this Motion be granted.
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`9
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`IPR2018-00329
`U.S. Patent No. 7,673,072
`By allowing the identical grounds of unpatentability of this Petition and the
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`Intel IPR to be addressed in a single proceeding, the interests of all parties and the
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`Board will be well served.
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`IV. CONCLUSION
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`In view of the arguments set forth above, Petitioner respectfully requests that
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`the Board institute the presently submitted Petition upon the same grounds
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`instituted in IPR2017-01406 and grant this Motion to join this proceeding with that
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`of instituted IPR2017-01406.
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`Respectfully submitted by
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`K&L Gates LLP,
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`By:
`
`
`
`/Benjamin E. Weed/
`Benjamin E. Weed
`Reg. No. 65,939
`Date: December 21, 2017
`
`
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`10
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`
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`IPR2018-00329
`U.S. Patent No. 7,673,072
`CERTIFICATE OF SERVICE
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`I hereby certify that on December 21, 2017, a true and correct copy of the
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`foregoing was caused to be served via Federal Express Priority Overnight® on the
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`following counsel of record for Patent Owner at the following addresses:
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`MARK A. LAUER
`Silicon Edge Law Group LLP
`7901 Stoneridge Drive
`Suite 528
`Pleasanton, CA 94588
`
`With a courtesy copy emailed to the Patent Owner’s litigation counsel of
`record in IPR2017-01406:
`
`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
`
`And a courtesy copy emailed to Intel’s counsel of record in IPR2017-01406:
`
`Garland T. Stephens
`Jeremy Jason Lang
`Anne Cappella
`Adrian Percer
`WEIL, GOTSHAL & MANGES LLP
`garland.stephens@weil.com
`jason.lang@weil.com
`anne.cappella@weil.com
`adrian.percer@weil.com
`Intel.Alacritech.IPR@weil.com
`
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`IPR2018-00329
`U.S. Patent No. 7,673,072
`And a courtesy copy emailed to Cavium’s counsel of record, as joined to
`IPR2017-01406:
`
`Patrick D. McPherson
`David T. Xue
`DUANE MORRIS LLP
`PDMcPherson@duanemorris.com
`DTXue@duanemorris.com
`
`
`
`
`
`/Benjamin E. Weed/
`Benjamin E. Weed
`Reg. No. 65,939
`Customer No. 24573
`K&L GATES LLP
`Benjamin.weed.PTAB@klgates.com
`T: (312) 781-7166
`F: (312) 827-8152
`Date: December 21, 2017
`70 W. Madison Street, Suite 3100
`Chicago, IL 60602
`
`By:
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