UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Dell Inc.,
`Petitioner
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`v.
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`Alacritech, Inc.,
`Patent Owner
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`U.S. Patent No. 7,337,241
`Filing Date: September 27, 2002
`Issue Date: February 26, 2008
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`Inter Partes Review No. IPR2018-00372
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`Title: Fast-Path Apparatus For Receiving Data Corresponding To A TCP
`Connection
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`MOTION FOR JOINDER
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Dell Inc.,
`Petitioner
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`v.
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`Alacritech, Inc.,
`Patent Owner
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`U.S. Patent No. 7,337,241
`Filing Date: September 27, 2002
`Issue Date: February 26, 2008
`
`Inter Partes Review No. IPR2018-00372
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`Title: Fast-Path Apparatus For Receiving Data Corresponding To A TCP
`Connection
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`MOTION FOR JOINDER
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`I.
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`INTRODUCTION
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`Dell Inc. (“Dell” or “Petitioner”) submits this motion for joinder of the
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`petition for inter partes review of U.S. Patent No. 7,337,241 (“the ’241 patent”) filed
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`on December 27, 2017, Case No. IPR2018-00372 (the “Petition”). Dell’s Petition
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`is based on grounds identical to those that form the basis for the instituted inter
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`partes reviews initiated by Intel Corporation (“Intel”) concerning the same patent,
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`Case No. IPR2017-01392 (the “Intel ’241 IPR”), to which Cavium’s inter partes
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`review, Case No. IPR2017-01728 (the “Cavium ’241 IPR) has been joined, and to
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`which Case No. IPR2018-00328 (the “Wistron ’241 IPR”) also seeks joinder.
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`Petitioner respectfully requests that its Petition be instituted and moves that
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`the Petition be joined with the Intel ’241 IPR pursuant to 35 U.S.C. § 315(c) and
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`37 C.F.R. §§ 42.22 and 42.122(b). Petitioner merely requests an opportunity to join
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`with the Intel ’241 IPR as an “understudy” to Intel and Cavium, only assuming an
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`active role in the event Intel and Cavium are no longer a party to these proceedings.
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`Petitioner does not seek to alter the grounds upon which the Board instituted the
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`Intel ’241 IPR, and joinder will have no impact on the Intel ’241 IPR’s existing
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`schedule. Petitioner has conferred with counsel for Intel and Cavium, which do not
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`oppose this motion. This motion is timely as the Intel ’241 IPR petition was
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`instituted on November 30, 2017 and this filing is made within one month of that
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`institution date. 35 U.S.C. §§ 21(b), 315(c); 37 C.F.R. § 42.122(b).
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`II.
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`BACKGROUND AND RELATED PROCEEDINGS
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`Alacritech, the owner of the ’241 patent, sued CenturyLink, Inc., Wistron
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`Corp., and Dell Inc., in the District Court for the Eastern District of Texas in July
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`2015 for infringement of U.S. Pat. Nos. 7,124,205, 7,237,036, 7,337,241, 7,673,072,
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`8,131,880, 8,805,948, 9,055,104, and 7,945,699 (collectively, the “Asserted
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`Patents”). The litigations are Alacritech, Inc. v. CenturyLink, Inc., 2:16-cv-00693-
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`JRG-RSP (E.D. Tex.); Alacritech, Inc. v. Wistron Corp., 2:16-cv-00692-JRG-RSP
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`(E.D. Tex.); and Alacritech, Inc. v. Dell Inc., 2:16-cv-00695-RWS-RSP (E.D. Tex.).
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`In May and June 2017, Intel Corporation filed twelve petitions for inter partes
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`review against the Asserted Patents, including Case Nos. IPR2017-01391 (‘036
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`patent), -01392 (‘241 patent), -01393 (‘104 patent), -01395 (‘948 patent), -01402
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`(‘205 patent), -01405 (‘205 patent), -01406 (‘072 patent), -01409 (‘880 patent), -
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`01410 (‘880 patent), -01559 (‘699 patent), -01705 (‘072 patent), and -01713 (‘241
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`patent). Decisions granting institution have been issued in IPR Case Nos. IPR2017-
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`01391, -01392, -01393, -01405, -01406, -01409, and -01410. Case No. IPR2017-
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`01732 is awaiting a decision on institution. In addition to this motion to join
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`IPR2017-01405, Petitioner is filing related motions to join other instituted Intel
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`IPRs. Intel has also filed more recent petitions in Case Nos. IPR2018-00226 and -
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`00234. Wistron has filed more recent petitions in Case Nos. IPR2018-00327, -
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`00328, and -00329.
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`2
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`In June and July 2017, Cavium, Inc., filed related petitions for inter partes
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`review, including Case Nos. IPR2017-01707 (’072 Patent), -01714 (’104 Patent), -
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`01718 (’036 Patent), -01728 (’241 Patent), -01732 (’072 Patent), -01735 (’205
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`Patent), -01736 (’880 Patent), and -01737 (’880 Patent), along with motions for
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`joinder with the corresponding Intel IPRs. Case Nos. IPR2017-01707, -01714, -
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`01718, -01728, -01735, -01736, and -01737 have each been instituted and Cavium’s
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`motions for joinder to the corresponding Intel IPRs have been granted.
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`III. LEGAL STANDARD AND APPLICABLE RULES
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`Joinder is governed by 35 U.S.C. § 315(c), which reads as follows:
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`Joinder.— If the Director institutes an inter partes review, the Director,
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`in his or her discretion, may join as a party to that inter partes review
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`any person who properly files a petition under section 311 that the
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`Director, after receiving a preliminary response under section 313 or
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`the expiration of the time for filing such a response, determines
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`warrants the institution of an inter partes review under section 314.
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`A motion for joinder should “(1) set forth the reasons why joinder is
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`appropriate; (2) identify any new grounds of unpatentability asserted in the petition;
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`(3) explain what impact (if any) joinder would have on the trial schedule for the
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`existing review; and (4) address specifically how briefing and discovery may be
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`simplified.” See Decision on Joinder, IPR2013-00385 (Paper No. 17, July 29, 2013);
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`see also Order Authorizing Joinder, IPR2013-00004 (Paper No. 15, April 24, 2013.)
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`Petitioner submits the factors outlined below in support of granting the present
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`Motion for Joinder.
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`IV. PETITIONER MEETS THE REQUIREMENTS FOR MOTION FOR
`JOINDER
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`Petitioner submits that (1) joinder is appropriate because it will promote
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`efficient determination of the validity of the ’241 patent without prejudice to
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`Alacritech, Inc.; (2) Petitioner’s petition raises the same grounds for unpatentability
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`as the Intel ’241 IPR petition and is based on the same testimony from the same
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`technical expert; (3) joinder would not affect the expected schedule in the Intel ’241
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`IPR nor would it increase the complexity of that proceeding; and (4) Petitioner is
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`willing to accept an understudy role in the Intel ’241 IPR to simplify discovery and
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`minimize the burden on the parties and the Board. Accordingly, joinder should be
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`granted.
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`A.
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`Joinder Will Promote the Efficient Determination of the ’241
`Patent’s Validity and Will Not Prejudice Alacritech
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`Granting joinder and allowing Petitioner to assume an understudy role will
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`not prejudice Alacritech or burden the Board. The Petition does not raise any issues
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`that are not already before the Board in the Intel ’241 IPR and thus the Board would
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`receive consolidated filings for the joined IPRs instead of redundant submissions in
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`separate IPRs. Likewise, Alacritech would only need to respond to a single set of
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`filings to which it would already be obligated to respond. The Board has granted
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`motions for joinder in similar circumstances. See, e.g., Decision on Joinder,
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`IPR2014-00743 (Paper 10, June 18, 2014).
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`Joinder is appropriate here to promote judicial efficiency and avoid
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`unnecessary expense to the parties.
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`B.
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`Petitioner’s Petition Raises the Same Grounds as the Intel ’241
`IPR, Which Has Been Instituted
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`The Petition asserts only grounds on which the Board has already determined
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`to grant institution in the Intel ’241 IPR, supported by the same technical expert and
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`the same testimony. There are no new arguments for the Board to consider.
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`Likewise, the Petition relies on the same exhibits.
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`C.
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`Joinder Will Not Affect the Schedule of the Intel ’241 IPR
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`Because Petitioner filed its pending IPR and corresponding motion for joinder
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`timely after the institution decision on the Intel ’241 IPR and is willing to accept the
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`existing schedule, allowing Petitioner to join the Intel ’241 IPR will not impact the
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`scheduling order for the Intel ’241 IPR or the Board’s ability to complete its review
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`within the statutory period. Section 316(a)(11) requires that IPR proceedings be
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`completed and the Board’s final decision issued no later than one year after the date
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`on which the Director notices the institution of the IPR. See also 37 C.F.R. §
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`42.100(c). Without any new issues present, there is no reason to delay or alter the
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`trial schedule already present in the Intel IPR, and Petitioner explicitly consents to
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`the existing trial schedule.
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`5
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`Moreover, Petitioner submits that Alacritech does not need to file a Patent
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`Owner’s Preliminary Response to its Petition, and requests that the Board proceed
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`without one. This is consistent with the Board’s Order in IPR2013-00256 (Paper 8,
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`June 13, 2013), which allowed the Patent Owner to file a preliminary response
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`addressing only those points raised in the new petition that were different from those
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`in the granted petition. Here, because the invalidity grounds in the Petition are
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`identical to those raised in the instituted Intel ’241 IPR, there are no new arguments
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`for Alacritech to address. Alternatively, Petitioner requests that the Board accelerate
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`the deadline for Alacritech’s Patent Owner’s Preliminary Response to respond to
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`this Petition so the Board can timely address the institution of the current Petition in
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`order to ensure that joinder would not impact any deadlines set in the Intel ’241 IPR
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`schedule.
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`D.
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`Petitioner Agrees to Assume a Limited Role
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`Petitioner agrees to an understudy role and does not raise any issues that are
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`not already before the Board. In particular, Petitioner agrees that, in the joined
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`proceeding, the following conditions shall apply so long as Intel remains an active
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`party, as previously approved by the Board in similar circumstances:
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`(a) all filings by Petitioner in the joined proceeding be consolidated with the
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`filings of Intel, unless a filing solely concerns issues that do not involve Intel or
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`Cavium;
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`6
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`(b) Petitioner shall not be permitted to raise any new grounds not already
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`instituted by the Board, or introduce any argument or discovery not already
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`introduced by Intel or Cavium;
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`(c) Petitioner shall be bound by any agreement between Patent Owner and
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`Intel or Cavium concerning discovery and/or depositions; and
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`(d) Petitioner at deposition shall not receive any direct, cross examination or
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`redirect time beyond that permitted for Intel or Cavium in this proceeding alone
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`under either 37 C.F.R. § 42.53 or any agreement between Patent Owner and Intel or
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`Cavium.
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`See Mylan Pharms. Inc. v. Novartis AG, Case No. IPR2015-00268, slip op. at 5–6
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`(PTAB Apr. 10, 2015) (Paper 17) (finding that same proposed limitations “are
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`consistent with the ‘understudy’ role that Petitioner agrees to assume, as well as
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`Petitioner’s assertion that its presence would not require introducing any additional
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`arguments, briefing, or discovery.”). Petitioner would assume a primary role only if
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`Intel and Cavium ceased to participate in the proceeding.
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`The invalidity grounds in the Petition are the same as those instituted in the
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`Intel ’241 IPR. The expert testimony in support of the grounds are presented by the
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`same expert and address the same grounds that were instituted in the Intel ’241 IPR.
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`Given that Petitioner will assume an understudy role to Intel and Cavium, joinder
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`with this IPR proceeding will not introduce any additional arguments, briefing, or
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`7
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`need for discovery. See Decision on Joinder, IPR2013-00495 (Paper 13, Sept. 16,
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`2013).
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`As long as Intel or Cavium remain in the joined IPR, Petitioner agrees to
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`assume a limited “understudy” role. Petitioner would only take on an active role if
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`Intel and Cavium were no longer parties to the IPR. Discovery will be simplified in
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`that there will be no need for redundant depositions, briefing, or hearings.
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`V.
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`CONCLUSION
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`For the foregoing reasons, Petitioner respectfully requests that its Petition for
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`Inter Partes Review of the ’241 patent be granted and that the proceedings be joined
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`with IPR2017-01392.
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`Date: December 27, 2017
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`ALSTON & BIRD LLP
`101 South Tryon Street, Suite 4000
`Charlotte, North Carolina 28280
`P 704-444-1119
`F 704-444-1111
`christopher.douglas@alston.com
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`Respectfully submitted,
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`By: /Christopher Douglas/
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`Christopher Douglas
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`Reg. No. 56,950
`Counsel for Petitioner
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`8
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`CERTIFICATE OF SERVICE
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`The undersigned certifies, in accordance with 37 C.F.R. § 42.105 and
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`§ 42.6(e), that service was made on the Patent Owner as detailed below.
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`Date of service December 27, 2017
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`Manner of service
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`Electronic service by FTP (consented to by Patent Owner)
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`Documents served Motion for Joinder
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`Persons served
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`Patent Owner’s Address of Record:
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`MARK LAUER
`Silicon Edge Law Group LLP
`7901 STONERIDGE DRIVE
`SUITE 528
`Pleasanton, California 94588
`Fax: (925) 621-2119
`Phone: 925-621-2121
`Email: Mark@SiliconEdgeLaw.com
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`
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`Additional Addresses Known as Likely to Effect Service:
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`Claude M Stern
`Quinn Emanuel Urquhart & Sullivan - Redwood
`555 Twin Dolphin Dr.
`5th Floor
`Redwood Shores, CA 94065
`Email: claudestern@quinnemanuel.com
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`
`Jim Glass
`Quinn Emanuel Urquhart & Sullivan – New York
`51 Madison Avenue, 22nd Floor,
`New York, New York 10010
`jimglass@quinnemanuel.com
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`Dated: December 27, 2017
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` / Christopher TL Douglas /
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`Christopher TL Douglas
`Lead Counsel for Petitioners
`Registration No. 56,950
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`10
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