Trials@uspto. gov
`571—272—7822
`
`.
`
`Paper No. 9
`Entered: May 18, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DELL, INC.,
`P etitioner,
`
`V.
`
`ALACRITECH, INC. ,
`Patent Owner.
`
`Case IPR2018-00339
`
`Patent 8,131,880 B2
`
`Before STEPHEN C. SIU, DANIEL N. FISHMAN, and
`CHARLES BOUDREAU, Administrative Patent Judges.
`
`SIU, Administrative Patent Judge.
`
`DECISION
`
`Institution of Inter Partes Review and
`
`Granting Petitioner’s Motion for Joinder
`35 US. C. §314(a), 37C.F.R. §§ 42.108, 42.122
`
`
`
`IPR2018-00339
`
`Patent 8,131,880 B2
`
`I.
`
`INTRODUCTION
`
`.
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`Dell, Inc. (“Dell” or “Petitioner”), filed a Petition (Paper 1, “P et.”) for
`
`interpartes review of claims 32, 34, 35, 37—39, and 41—43 of US. Patent
`
`No. 8,131,880 B2 (“the ’880 Patent”) (Ex 1001) pursuant to 35 U.S.C.
`
`§§ 31 1—3 19. Petitioner also 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 IPR2017-01410 (“the 1410 IPR”), to which
`
`Cavium, Inc. (“Cavium”) has previously been joined. Mot. 1;see IPR2017-
`
`01737, Paper 8. The Joinder Motion indicates Intel Corp. (“Intel”) and
`
`Cavium, current Petitioners in the 14 l 0 IP R, do not oppose Dell’s request to
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`join that proceeding. Id. Alacritech, Inc. (“Patent Owner”) filed a
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`Preliminary Response. Paper 8 (“Prelim. Resp”).
`
`As explained further below, we institute trial in this interpartes
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`review on the same grounds as instituted in IPR2017—01410 for claims 32,
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`34, 35, 37—39, and 41—43, and we grant Petitioner’s Motion for Joinder.
`
`11.
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`DISCUSSION
`
`A.
`
`Institution ofTrz'al
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`In IPR2017-01410, Intel and Cavium challenge the patentability of
`
`claims 32,34, 35, 39, and 41—43 ofthe ’880 Patent under 35 U.S.C. § 103
`
`
`
`IPR2018-00339
`
`Patent 8, 13 1,880 B2
`
`over Thial and Tanenbaum2 and claims 37 and 38 under 35 U.S.C. § 103
`
`over Thia, Tanenbaum, and Nahum. 3 IPR2017—01410, Paper 1 .
`
`After considering the Petition and the Patent OWner’ s Preliminary
`
`Response in lPR2017-01410, we instituted trial for the above-identified
`
`grounds of unpatentability. See IPR2017-01410, Paper 8. Petitioner here
`
`(Dell) represents that this Petition is substantively identical to the Petition in
`
`IPR2017-01410 and challenges the same claims based on the same grounds.
`
`Mot. 1. We have considered the relevant Petitions and we agree with
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`Petitioner’s representation that this Petition is substantially identical to the
`
`Petition in IPR2017-Ol410. Compare Pet., with IPR2017-01410, Paper 1.
`
`Accordingly, for essentially the same reasons stated in our Decision to
`
`Institute in IPR2017-01410, we conclude Petitioner has established a
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`reasonable likelihood of prevailing with respect to at least one challenged
`
`claim, and we institute trial in this proceeding for claims 32, 34, 35, 37—39,
`
`and 4143 on the same grounds as in IPR2017-01410.
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`B. Motionfor Joinder
`
`Based on authority delegated to us by the Director, we have discretion
`
`to join a petitioner for interpartes review to a previously instituted inter
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`partes review. 35 U.S.C. §315(c). Section 315(0) provides, in relevant
`
`1 Y.H. Thia and OM. Woodside, “A Reduced Operation Protocol Engine
`(ROPE) for a Multiple-Layer Bypass Architecture,” 1995 (“Thia,”
`EX. 1015).
`2 Andrew S. Tanenbaum, Computer Networks, Third Edition, 1996
`(“Tanenbaum,”Ex. 1006).
`3 Erich M. Nahum, et al., Performancelssues in Parallelized Network
`Protocols,” Proceedings ofthe First Symposium on Operating Systems
`Design and Implementation, November 1994 (“Nahum,” Ex. 1079)..
`
`3
`
`
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`IPR2018-00339
`
`Patent 8, 13 1,880 B2
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`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 31 1.” Id.
`
`Without opposition to the Joinder Motion from any party, we grant
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`Petitioner’s Motion for Joinder with the 1410 IPR subject to the condition
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`that, in the joined proceeding, Dell will be bound by all substantive and
`
`procedural filings and representations of Intel and Cavium in the 1410 IPR,
`
`without a separate opportunity to be heard, whether orally or in writing,
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`unless and until the joined proceeding is terminated with respect to both
`
`Intel and Cavium.
`
`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 grounds. Moreover, discovery and
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`briefing will be simplified if Dell is joined as a petitioner in the 1410 IPR.
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`III. ORDER
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`After due consideration of the record before us, and for the foregoing .
`
`reasons, it is:
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`ORDERED that pursuant to 35 U. S.C. § 3 14, an interpartes review is
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`hereby instituted for claims 32, 34, 35, 39, and 41—43 of the ’880 Patent as
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`obvious under 35 U.S.C. § 103(a) over Thia and Tanenbaum and claims 37
`
`and 38 ofthe ’880 Patent as obvious under 35 U, S.C. § 103(a) over Thia,
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`Tanenbaum, and Nahum;
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`FURTHER ORDERED that Petitioner’ s Motion for Joinder with
`
`IPR2017-Ol410 is granted and Dell, Inc., is joined as a petitioner in
`
`IPR2017-01410 pursuantto 37 C.F.R. §42.122(b), on the condition that, in
`
`
`
`IPR2018-00339 I
`
`Patent 8,13 1 ,880 B2
`
`the joined proceeding, Petitioner here (i.e., Dell, Inc.) will be bound by all
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`substantive and procedural filings and representations of current Petitioner in
`
`IPR2017-01410 (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 Petitioners Intel and Cavium
`
`in IPR2017-01410;
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`FURTHER ORDERED that the grounds on which an interpartes
`
`review was institUted in Case IPR2017-01410 remain unchanged, and no
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`other grounds are instituted in the joined proceedings;
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`FURTHER ORDERED that the Scheduling Order in place for
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`IPR2017-01410 (Paper 9) shall govern the joined proceedings;
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`FURTHER ORDERED that IPR2018-0033 9 is terminated under
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`37 CF .R. § 42.72, and that all future filings in the joined proceeding are to
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`be made only in IPR2017-01410;
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`FURTHER ORDERED that the case caption in IPR2017-01410 for all
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`further submissions shall be changed to add Petitioner (Dell, Inc.) as a
`
`named Petitioner, and to indicate by footnote the joinder of Petitioner
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`Cavium to that proceeding, as indicated in 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 ofIPR2017-01410.
`
`
`
`IPR2018-00339
`
`Patent 8,131,880 B2
`
`PETITIONER:
`
`Christopher Douglas
`Christopher.douglas@alston.com
`
`Kirk Bradley
`kirk.bradle
`
`alston.com
`
`PATENT OWNER:
`
`Jim Glass
`
`1' imglass@guinnemanuel.com
`
`Joseph P aunovich
`joepaunovicthguinnemanuel.com
`
`Brian Mack
`
`brianmack§d>guinnemanueL com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INTEL CORP., CAVIUM, INC., and DELL, INC.
`Petitioner,
`
`V.
`
`ALACRITECH, INC.,
`Patent Owner.
`
`Case IPR2017—01410l
`
`Patent 8,131,880 B2
`
`1 Cavium, Inc, which filed a Petition in Case IPR2017-01737, and Dell, Inc.,
`which filed a Petition in Case IPR201 8-00339, have been joined as
`petitioners in this proceeding.
`
`
