Trials@uspto.gov
`571-272-7822
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`
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`Paper No. 8
`Entered: January xx, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DELL INC.,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-01307
`Patent 8,805,948 B2
`_____________
`
`
`Before STEPHEN C. SIU, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`FISHMAN, 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. § 42.122
`
`
`
`
`
`
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`
`
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`571-272-7822
`
`
`
`
`
`
`Paper No. 8
`Entered: January xx, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DELL INC.,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-01307
`Patent 8,805,948 B2
`_____________
`
`
`Before STEPHEN C. SIU, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`FISHMAN, 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. § 42.122
`
`
`
`
`
`
`
`
`
`
`
`IPR2018‐01307
`Patent 8,805,948 B2
`
`
`
`INTRODUCTION
`
`I.
`
`
`
`Dell Inc. (“Dell”) filed a Petition (Paper 2, “Pet.”) for inter partes
`
`review of claims 1, 3, 6–8, 17, 19, 21, and 22 of U.S. Patent No. 8,805,948
`
`B2 (Ex. 1001, “the ’948 patent”) pursuant to 35 U.S.C. §§ 311–319.
`
`Concurrent with the Petition, Petitioner filed a Motion for Joinder. Paper 3
`
`(“Joinder Motion” or “Mot.”). The Joinder Motion seeks to join Dell as a
`
`petitioner in Intel Corp. v. Alacritech, Case IPR2018-00234 (“the 234 IPR”),
`
`to which Cavium LLC (formerly Cavium, Inc.) (“Cavium”) has also been
`
`joined as a petitioner. Mot. 1; see IPR2018-00403, Paper 10. The Joinder
`
`Motion indicates Intel Corp. (“Intel”) and Cavium do not oppose Dell’s
`
`request to join the 234 IPR. Id. Alacritech, Inc. (“Alacritech” or “Patent
`
`Owner”) filed a Preliminary Response (Paper 7, “Prelim. Resp.”), but did
`
`not file a timely opposition to the Joinder Motion.
`
`As explained further below, we institute trial in this inter partes
`
`review on the same ground as instituted in the 234 IPR, and we grant Dell’s
`
`Motion for Joinder.
`
`
`
`II. DISCUSSION
`
`A.
`
`Institution of Trial
`
`In the 234 IPR, Intel and Cavium challenge claims 1, 3, 6–8, 17, 19,
`
`21, and 22 as unpatentable under 35 U.S.C. § 103(a) over the combined
`
`2
`
`
`
`IPR2018‐01307
`Patent 8,805,948 B2
`
`
`disclosures of Thia,1 Tanenbaum96,2 and Stevens2.3 IPR2018-00234, Paper
`
`
`
`2, 18. After considering the Petition and the Patent Owner’s Preliminary
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`Response in the 234 IPR, we instituted trial on this ground of
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`unpatentability. See IPR2018-00234, Paper 7 (“234 IPR Dec. on Inst.”).
`
`Dell represents that the present Petition is substantively identical to the
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`Petition in the 234 IPR (“234 IPR Petition”) challenging the same claims on
`
`the same ground. Mot. 1. We have considered the relevant Petitions and we
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`agree with Dell’s representation that this Petition is substantially identical to
`
`the 234 IPR Petition. Compare Pet., with IPR2018-00234, Paper 2.
`
`After comparing the Preliminary Response in this proceeding and the
`
`234 IPR, we find the present Preliminary Response repeats from the 234 IPR
`
`certain background statements concerning the ’948 patent and the prior art,
`
`as well as arguments concerning the prior art status of the Stevens2
`
`reference. Compare Prelim. Resp., with IPR2018-00234, Paper 6. The
`
`present Preliminary Response, however, expands upon an argument, initially
`
`raised with respect to the 234 IPR Petition, that the presented challenge is
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`time-barred. Compare Prelim. Resp., with IPR2018-00234, Paper 6. More
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`particularly, Patent Owner contends the present Petition is time-barred under
`
`35 U.S.C. § 315(b), because it was filed more than one year after Alacritech
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`served Dell, Wistron Corporation, Wiwynn Corporation, SMS InfoComm
`
`
`1 Y. H. Thia and C. M. Woodside, A Reduced Operation Protocol Engine
`(ROPE) for a Multiple-Layer Bypass Architecture, Springer Science+
`Business Media Dordrecht (1995) (“Thia,” Ex. 1015).
`2 Andrew S. Tanenbaum, Computer Networks, Prentice Hall PTR 3rd ed.
`(1996) (“Tanenbaum96,” Ex. 1006).
`3 W. Richard Stevens and Gary R. Wright, TCP/IP Illustrated Volume 2: The
`Implementation, Addison-Wesley (1995) (“Stevens2,” Ex. 1013).
`
`3
`
`
`
`IPR2018‐01307
`Patent 8,805,948 B2
`
`
`Corporation, CenturyLink Inc., Tier 3, Inc., Savvis Communications Corp.,
`
`
`
`and CenturyLink Communications LLC (collectively, “the Dell, Wistron,
`
`and CenturyLink entities”) with complaints for infringement of the
`
`’948 patent. See Prelim. Resp. 1, 30–45.4 Although § 315(b) expressly
`
`provides that the “1 year” time limitation set forth therein does not apply to a
`
`request for joinder under § 315(c), Patent Owner’s arguments are premised
`
`on the Dell, Wistron, and CenturyLink entities being undisclosed real parties
`
`in interest in the 234 IPR as a result of indemnification obligations owed to
`
`them by Intel, such that the 234 IPR Petition was time-barred. Id. at 30–31,
`
`31 n.7.
`
`In our Decision to Institute in the 234 IPR, we preliminarily
`
`considered such arguments to the extent they were presented in the 234 IPR
`
`and were not persuaded by the evidence then of record that the 234 IPR
`
`Petition was time-barred. See 234 IPR Dec. on Inst. 15–19. Further,
`
`although we note that the record is subject to further development,
`
`particularly given that the alleged indemnification obligations are the subject
`
`of ongoing additional discovery recently authorized in the 234 IPR (see
`
`IPR2018-00234, Paper 31), we conclude, for the reasons stated in our
`
`Decision to Institute in the 234 IPR, that Dell has established on the record
`
`currently before us a reasonable likelihood of prevailing with respect to at
`
`least one challenged claim. Accordingly, we institute trial in this proceeding
`
`
`4 Section 315(b) provides that “[a]n inter partes review may not be instituted
`if the petition requesting the proceeding is filed more than 1 year after the
`date on which the petitioner, real party in interest, or privy of the petitioner
`is served with a complaint alleging infringement of the patent. The time
`limitation set forth in the preceding sentence shall not apply to a request for
`joinder under [35 U.S.C. § 315(c)].”
`
`4
`
`
`
`IPR2018‐01307
`Patent 8,805,948 B2
`
`
`for claims 1, 3, 6–8, 17, 19, 21, and 22 on the same ground as in the 234
`
`
`
`IPR.
`
`B. Motion for Joinder
`
`Based on authority delegated to us by the Director, we have discretion
`
`to join a petitioner for inter partes review to a previously instituted inter
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`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
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`Dell’s Motion for Joinder with the 234 IPR subject to the condition that, in
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`the joined proceeding, Dell will be bound by all substantive and procedural
`
`filings and representations of Intel and Cavium in the 234 IPR, without a
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`separate opportunity to be heard, whether orally or in writing, unless and
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`until the proceeding is terminated with respect to both Intel and Cavium.
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`In view of the foregoing, we determine that joinder based upon the
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`above-noted condition will have little or no impact on the timing, cost, or
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`presentation of the trial on the instituted ground. Moreover, discovery and
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`briefing will be simplified if Dell is joined as a petitioner in the 234 IPR.
`
`
`
`
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`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 of
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`the ʼ948 patent is hereby instituted to determine obviousness of claims 1, 3,
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`6–8, 17, 19, 21, and 22 over Thia, Tanenbaum96, and Stevens2; and
`
`5
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`
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`IPR2018‐01307
`Patent 8,805,948 B2
`
`
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`FURTHER ORDERED that Dell’s Motion for Joinder with IPR2018-
`
`
`
`00234 is granted, and Dell is joined as a petitioner in IPR2018-00234
`
`pursuant to 37 C.F.R. § 42.122(b), on the condition that, in the joined
`
`proceeding, Dell will be bound by all substantive and procedural filings and
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`representations of the current petitioners in IPR2018-00234 (i.e., Intel and
`
`Cavium), without a separate opportunity to be heard, whether orally or in
`
`writing, unless and until the proceeding is terminated with respect to both
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`Intel and Cavium;
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`FURTHER ORDERED that the ground on which an inter partes
`
`review was instituted in IPR2018-00234 remains unchanged, and no other
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`grounds are instituted in the joined proceeding;
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`FURTHER ORDERED that the Scheduling Order in IPR2018-00234
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`(Paper 8), as modified by any stipulation of the parties, shall continue to
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`govern IPR2018-00234;
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`FURTHER ORDERED that IPR2018-01307 is terminated under
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`37 C.F.R. § 42.72, and that all future filings are to be made only in
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`IPR2018-00234;
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`FURTHER ORDERED that the case caption in IPR2018-00234 for all
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`further submissions shall be changed to add Dell as a named petitioner, and
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`to indicate by footnote the joinder of Dell to that proceeding, as indicated in
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`the attached sample case caption; and
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`FURTHER ORDERED that a copy of this Decision shall be entered
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`into the record of IPR2018-00234.
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`6
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`IPR2018‐01307
`Patent 8,805,948 B2
`
`FOR PETITIONER:
`
`Christopher TL Douglas
`Kirk Bradley
`Derek S. Neilson
`ALSTON & BIRD LLP
`christopher.douglas@alston.com
`kirk.bradley@alston.com
`derek.neilson@alston.com
`
`
`
`FOR PATENT OWNER:
`
`James M. Glass
`Joseph M. Paunovich
`Brian E. Mack
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`jimglass@quinnemanuel.com
`joepaunovich@quinnemanuel.com
`brianmack@quinnemanuel.com
`
`Mark Lauer
`SILICON EDGE LAW GROUP LLP
`mark@siliconedgelaw.com
`
`7
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORP., CAVIUM LLC, and DELL INC.,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-002341
`Patent 8,805,948 B2
`
`
`
`
`1 Cavium LLC (formerly Cavium, Inc.), which filed a Petition in Case
`IPR2018-00403, and Dell Inc., which filed a Petition in Case IPR2018-
`01307, have been joined as petitioners in this proceeding.
`
`
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