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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Cavium, Inc.,
`Petitioner
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`v.
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`Alacritech, Inc.,
`Patent Owner
`U.S. Patent No. 8,805,948
`Filing Date: September 26, 2013
`Issue Date: August 12, 2014
`Inter Partes Review No. 2018-00403
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`Title: Intelligent network interface system and method for protocol processing
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`MOTION FOR JOINDER
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`DM2\7959178.5
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`I.
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`INTRODUCTION
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`Cavium, Inc. (“Cavium” or “Petitioner”) submits this motion for the petition
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`for inter partes review of U.S. Patent No. 8,805,948 (“the ‘948 patent”) filed on
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`December 27, 2017, Case No. IPR2018-00403 (the “Petition”). The Petition was
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`based on the identical grounds that form the basis for the pending inter partes review
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`initiated by Intel Corporation (“Intel”) concerning the same patent, Case No.
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`IPR2018-00234 (the “0234 IPR”).
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`Petitioner respectfully requests that the Petition be instituted and moves that
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`the Petition be joined with the 0234 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 0234 IPR as an “understudy” to Intel, only assuming an active role in the
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`event Intel no longer is a party to these proceedings. Petitioner does not seek to alter
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`the grounds upon which the Board will institute the 0234 IPR, and joinder will have
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`no impact on the Intel ‘948 IPR’s expected schedule since an institution decision is
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`not due for several months. Petitioner has conferred with counsel for Intel, which
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`does not oppose this motion. This motion is timely as the 0234 IPR petition was
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`only recently filed and the Board has not yet issued an institution decision. 35 U.S.C.
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`§ 21(b); 37 C.F.R. § 42.122(b).
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`II.
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`BACKGROUND AND RELATED PROCEEDINGS
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`DM2\7959178.5
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`Alacritech, the owner of the ‘948 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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`On November 22, 2017, Intel filed a petition for inter partes review against
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`the ‘948 Patent (IPR2018-00234). This IPR ia awaiting institution by the Board. In
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`addition to this motion to join the 0234 IPR, Petitioner is filing a related motion to
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`join IPR2018-00226 filed by Intel seeking review of U.S. Pat. No. 7,124,205.
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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,
`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 that the
`Director, after receiving a preliminary response under section 313 or
`the expiration of the time for filing such a response, determines
`warrants the institution of an inter partes review under section 314.
`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
`Petitioner submits that (1) joinder is appropriate because it will promote
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`efficient determination of the validity of the ‘948 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 does Intel ‘948 IPR petition (0234 IPR petition) and is based on the same
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`testimony from the same technical expert; (3) joinder would not affect the expected
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`schedule in the Intel ‘948 IPR (0234 IPR) nor would it increase the complexity of
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`that proceeding; and (4) Petitioner is willing to accept an understudy role in the Intel
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`‘948 IPR (0234 IPR) to simply discovery and minimize the burden on the parties
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`and the Board. Absent joinder, the Board will be burdened with entertaining two
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`separate IPRs against the ‘948 patent on identical grounds, wasting resources and
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`losing efficiency, and the parties will be subject to redundant discovery obligations.
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`Accordingly, joinder should be granted.
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`A.
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`Joinder Will Promote the Efficient Determination of the ‘948
`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 0234 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 consolidated
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`filings rather than respond to separate filings from the separate petitioners. The
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`Board has granted motions for joinder in similar circumstances. See, e.g., Decision
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`on Joinder, 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 ‘948
`IPR
`The Petition asserts only grounds that are awaiting the Board’s institution in
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`the 0234 IPR, supported by the same technical expert and the same testimony. There
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`are no new grounds for the Board to consider. Likewise, the Petition relies on the
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`same prior art exhibits.1
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`1 Petitioner has substituted the original version of Ex. 1013 in the instant Petition
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`for the 30th Edition of Ex. 1013 asserted in the 0234 IPR. However, the portions
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`relied on as part of the grounds are identical. Likewise, the instant Petition relies
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`on a different evidentiary declaration and affidavit to show the public availability
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`C.
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`Joinder Will Not Affect the Schedule of the Intel ‘948 IPR
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`Because Petitioner filed its pending IPR and corresponding motion for joinder
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`so soon after the filing of the 0234 IPR, allowing Petitioner to join the Intel 0234
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`IPR will not impact the expected scheduling order for the 0234 IPR or the Board’s
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`ability to complete its review within the statutory period. Section 316(a)(11)
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`requires that IPR proceedings be completed and the Board’s final decision issued no
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`later than one year after the date on which the Director notices the institution of the
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`IPR. See also 37 C.F.R. § 42.100(c). Petitioner submits that Alacritech does not
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`need to file a Patent Owner’s Preliminary Response, and requests that the Board
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`proceed without one. This is consistent with the Board’s Order in IPR2013-00256
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`(Paper 8, June 13, 2013), which allowed the Patent Owner to file a preliminary
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`response addressing only those points raised in the new petition that were different
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`from those in the granted petition. Here, because the invalidity grounds in the
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`Petition are identical to those raised in the 0234 IPR, there will be 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 address the institution of the current Petition
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`of Ex. 1013 than the petition in the 0234 IPR, but the grounds and prior art asserted
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`are the same.
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`concurrently with the 0234 IPR petition. Doing so would ensure that joinder would
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`not impact any deadlines set in the 0234 IPR schedule.
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`D.
`Petitioner Agrees to Assume a Limited Role
`Petitioner agrees to an understudy role should the instant Petition be joined
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`with the 0234 IPR. The invalidity grounds in the Petition are the same as those that
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`are waiting the Board’s institution in the 0234 IPR and the expert testimony in
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`support of the grounds are the same. Given that Petitioner will assume an understudy
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`role, joinder with this IPR proceeding will not introduce any additional arguments
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`or briefing. See Decision on Joinder, IPR2013-00495 (Paper 13, Sept. 16, 2013).
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`To the contrary, joinder will eliminate the need of the parties to file redundant briefs
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`and conduct redundant discovery, including redundant depositions of the parties’
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`respective expert witnesses, in the separate IPRs.
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`As long as Intel remains in the joined IPR, Petitioner agrees to assume a
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`limited “understudy” role. Petitioner would only take on an active role if Intel were
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`no longer a party to the IPR, or an issue unique to Petitioner were raised. Discovery
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`will be simplified in that there will be no need for redundant depositions of the
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`parties’ respective experts.
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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 ‘948 patent be granted and that the proceedings be joined
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`with IPR2018-00234.
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`Date: December 27, 2017
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`Duane Morris LLP
`505 9th Street, N.W., Suite 1000
`Washington, D.C. 20004
`Tel: (202) 776-7800
`Fax: (202) 776-7801
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`Respectfully submitted,
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`By: /Patrick D. McPherson/
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`Patrick D. McPherson
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`Reg. No. 46,255
`Counsel for Petitioner
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`CERTIFICATE OF SERVICE
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`I hereby certify, pursuant to 37 C.F.R. Section 42.6, that a complete copy of
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`the attached Motion for Joinder is being served via Federal Express on the 27th
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`day of December, 2017, the same day as the filing of the above-identified
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`document in the United States Patent and Trademark Office/Patent Trial and
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`Appeal Board, upon the Patent Owner by serving the correspondence address of
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`record with the USPTO as follows:
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`MARK LAUER
`Silicon Edge Law Group LLP
`7901 STONERIDGE DRIVE
`SUITE 528
`Pleasanton, California 94588
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`and upon counsel of record for the Patent Owner in the litigation pending before
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`the U.S. District Court for the Eastern District of Texas entitled Alacritech, Inc. v.
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`Dell Inc., 2:16-cv-00695-RWS-RSP (E.D. Tex.) as follows:
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`Claude M Stern
`Quinn Emanuel Urquhart & Sullivan - Redwood
`555 Twin Dolphin Dr.
`5th Floor
`Redwood Shores, CA 94065
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`Dated: December 27, 2017
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`/ Patrick D. McPherson /
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`Patrick D. McPherson (Reg. No. 46,255)
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