Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper No. 8
`Entered: December 15, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CAVIUM, INC.,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01735
`Patent 7,124,205 B2
`
`
`
`Before STEPHEN C. SIU, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`SIU, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review and
`Granting Petitioner’s Motion for Joinder
`35 U.S.C. §§ 314(a), 315(c); 37 C.F.R. §§ 42.108, 42.122
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper No. 8
`Entered: December 15, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CAVIUM, INC.,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01735
`Patent 7,124,205 B2
`
`
`
`Before STEPHEN C. SIU, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`SIU, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review and
`Granting Petitioner’s Motion for Joinder
`35 U.S.C. §§ 314(a), 315(c); 37 C.F.R. §§ 42.108, 42.122
`
`
`
`
`
`
`
`IPR2017‐01735
`
`Patent 7,124,205 B2
`
`
`
`INTRODUCTION
`I.
`Cavium, Inc. (“Cavium” or “Petitioner”), filed a Petition (Paper 1,
`“Pet.”) for inter partes review of claims 3, 9, 10, 16, 22, 24–33, 35, and 36
`of U.S. Patent No. 7,124,205 B2 (“the ’205 Patent”) (Ex. 1001) pursuant to
`35 U.S.C. §§ 311–319. Within days of filing the Petition, Petitioner filed a
`Motion for Joinder. Paper 3 (“Joinder Motion” or “Mot.”). The Joinder
`Motion seeks to join Petitioner as a party to Intel Corp. v. Alacritech, Case
`IPR2017-01405 (“the 1405 IPR”). Mot. 1. The Joinder Motion indicates
`Intel Corp. (“Intel”), Petitioner in the 1405 IPR, does not oppose Cavium’s
`request to join that proceeding. Id.
`As explained further below, we institute trial in this inter partes
`review on the same grounds as instituted in IPR2017-01405 for claims 3, 9,
`10, 16, 22, 24–30, 35, and 36 and we grant Petitioner’s Motion for Joinder.
`
`II. DISCUSSION
`A.
`Institution of Trial
`In IPR2017-01405, Petitioner Intel challenges the patentability of
`claims 3, 9, 10, 16, 22, 24–33, 35, and 36 of the ’205 Patent on the following
`grounds:
`
`
`
`2
`
`
`
`IPR2017‐01735
`
`Patent 7,124,205 B2
`
`
`
`
`
`
`Basis
`§ 103
`
`§ 103
`
`Claims challenged
`3, 9, 10, 16, 22, 27–33,
`35, and 36
`24–26
`
`Reference(s)
`Thia,1 Satran I,2 and
`Satran II3
`Thia, Satran I, Satran II,
`and Carmichael4
`IPR2017-01405, Paper 1.
`After considering the Petition and the Patent Owner’s Preliminary
`Response in IPR2017-01405, we instituted trial for claims 3, 9, 10, 16, 22,
`27–30, 35, and 36 under 35 U.S.C. § 103(a) as unpatentable over Thia,
`Satran I, and Satran II and claims 24–26 under 35 U.S.C. § 103(a) as
`unpatentable over Thia, Satran I, Satran II, and Carmichael. See IPR2017-
`01405, Paper 8. Petitioner here (Cavium) represents that this Petition is
`substantively identical to the Petition in IPR2017-01405 and challenges the
`same claims based on the same grounds. Mot. 1. We have considered the
`relevant Petitions and we agree with Petitioner’s representation that this
`Petition is substantially identical to the Petition in IPR2017-01405.
`Compare Pet., with IPR2017-01405, Paper 1.
`Patent Owner’s Preliminary Response does not point out any
`differences from its Preliminary Response in the 1405 IPR. However, after
`reviewing Patent Owner’s Preliminary Response here and in the 1405 IPR,
`we find the two responses to be substantially identical, with one exception.
`
`
`1 Y.H. Thia and C.M. Woodside, “A Reduced Operation Protocol Engine
`(ROPE) for a Multiple-Layer Bypass Architecture,” 1995 (“Thia,”
`Ex. 1015).
`2 J. Satran, et al., “SCSI/TCP (SCSI over TCP),” 2000 (“Satran I,”
`Ex. 1056).
`3 J. Satran, et al., “iSCSI (Internet SCSI),” 2000 (“Satran II,” Ex. 1057).
`4 US Patent 5,894,560, issued April 13, 1999 (“Carmichael,” Ex. 1053).
`
`3
`
`
`
`IPR2017‐01735
`
`
`
`Patent 7,124,205 B2
`
`
`We note that, here, Patent Owner argues that QLogic, Inc. (“QLogic”)
`should have been named as a real party-in-interest because QLogic, a wholly
`owned subsidiary of Cavium, is a supplier to, and indemnitor of, Dell (the
`defendant in related infringement litigation), and Cavium’s only interest in
`the ’205 patent is that of its subsidiary QLogic. See Prelim. Resp. 28–36. In
`the 1405 IPR, Patent Owner presented a similar argument in its Preliminary
`Response that Petitioner Intel should have named Cavium and Dell as real
`parties-in-interest because of the alleged supplier-indemnitor relationship
`between Intel and Dell and Cavium and Dell. IPR2017-01405, Paper 7.
`Here, Patent Owner argues the parent/subsidiary relationship between
`Petitioner and QLogic and the supplier/indemnitor relationship between
`QLogic and Dell require that QLogic be named as a real party-in-interest.
`See Prelim. Resp. 28–36.
`We have reviewed Patent Owner’s arguments. On the record before
`us and for purposes of this Decision, and for the similar reasons as in the
`1405 IPR, we determine there is insufficient evidence that QLogic
`controlled, or had the opportunity to control, this Petition and, thus, is not a
`real party-in-interest. See Case IPR2017-01405, Paper 8, 15–19. Moreover,
`as in the 1405 IPR, there is no allegation that naming additional real parties-
`in-interest such as QLogic or Dell would bar Petitioner in the instant
`proceeding. See id. Accordingly, the issue Patent Owner raises is not
`jurisdictional. See Lumentum Holdings, Inc. v. Capella Photonics, Inc.,
`Case IPR2015-00739, slip op. at 6 (PTAB March 4, 2016) (Paper 38)
`(precedential).
`Accordingly, for essentially the same reasons stated in our Decision to
`Institute in IPR2017-01405, we conclude Petitioner has established a
`
`4
`
`
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`IPR2017‐01735
`
`Patent 7,124,205 B2
`
`
`reasonable likelihood of prevailing with respect to at least one challenged
`claim and we institute trial in this proceeding for claims 3, 9, 10, 16, 22, 24–
`30, 35, and 36 on the same grounds as in IPR2017-01405.
`
`
`
`
`
`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
`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
`Petitioner’s Motion for Joinder with the 1405 IPR, subject to the condition
`that Cavium will be bound by all substantive and procedural filings and
`representations of Intel in the 1405 IPR, without a separate opportunity to be
`heard, whether orally or in writing, unless and until the proceeding is
`terminated with respect to Intel.
`In view of the foregoing, we determine that joinder based upon the
`above-noted condition will have little or no impact on the timing, cost, or
`presentation of the trial on the instituted grounds. Moreover, discovery and
`briefing will be simplified if Cavium is joined as a party to the 1405 IPR.
`
`
`
`
`
`
`5
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`IPR2017‐01735
`
`Patent 7,124,205 B2
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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 is
`hereby instituted for claims of the ’205 Patent as follows: (1) claims 3, 9,
`10, 16, 22, 27–30, 35, and 36 as obvious under 35 U.S.C. § 103(a) over
`Thia, Satran I, and Satran II and (2) claims 24–26 as obvious under 35
`U.S.C. § 103(a) over Thia, Satran I, Satran II, and Carmichael;
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2017-01405 is granted and Cavium, Inc. is joined as a petitioner in
`IPR2017-01405;
`FURTHER ORDERED that the grounds on which an inter partes
`review was instituted in Case IPR2017-01405 remain unchanged, and no
`other grounds are instituted in the joined proceedings;
`FURTHER ORDERED that Petitioner here (i.e., Cavium, Inc.) will be
`bound in IPR2017-01405 by all substantive and procedural filings and
`representations of current Petitioner in IPR2017-01405 (i.e., Intel Corp.),
`without a separate opportunity to be heard, whether orally or in writing,
`unless and until the proceeding is terminated with respect to Intel Corp.;
`FURTHER ORDERED that the Scheduling Order in place for
`IPR2017-01405 (Paper 9) shall govern the proceeding;
`FURTHER ORDERED that IPR2017-01735 is terminated under
`37 C.F.R. § 42.72, and that all future filings are to be made only in IPR2017-
`01405;
`FURTHER ORDERED that the case caption in IPR2017-01405 for all
`further submissions shall be changed to add Petitioner (Cavium, Inc.) as a
`
`
`
`6
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`IPR2017‐01735
`
`Patent 7,124,205 B2
`
`
`named Petitioner, and to indicate by footnote the joinder of Petitioner
`Cavium, Inc. to that proceeding, as indicated in the attached sample case
`caption; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2017-01405.
`
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`7
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`IPR2017‐01735
`
`Patent 7,124,205 B2
`
`PETITIONER:
`
`Patrick McPherson
`pdmcpherson@duanemorris.com
`
`David Xue
`dtxue@duanemorris.com
`
`
`
`PATENT OWNER:
`
`Jim Glass
`jimglass@quinnemanuel.com
`
`Joseph Paunovich
`joepaunovich@quinnemanuel.com
`
`Brian Mack
`brianmack@quinnemanuel.com
`
`
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`8
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORP. and
`CAVIUM, INC.,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-014051
`Patent 7,124,205 B2
`
`
`
`
`1 Cavium, Inc., which filed a Petition in Case IPR2017-01735, has been
`joined as a petitioner in this proceeding.
`
`
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