Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper No. 8
`Entered: December 15, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CAVIUM, INC.,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01718
`Patent 7,237,036 B2
`
`
`
`Before STEPHEN C. SIU, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, 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, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CAVIUM, INC.,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01718
`Patent 7,237,036 B2
`
`
`
`Before STEPHEN C. SIU, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, 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
`
`
`
`
`
`
`
`
`
`IPR2017‐01718
`
`Patent 7,237,036 B2
`
`
`
`INTRODUCTION
`I.
`Cavium, Inc. (“Cavium” or “Petitioner”) filed a Petition (Paper 1,
`“Pet.”) for inter partes review of claims 1–7 of U.S. Patent No. 7,237,036
`B2 (“the ’036 patent”) (Ex. 1001) pursuant to 35 U.S.C. §§ 311–319.
`Approximately one week after 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-
`01391 (“the 1391 IPR”). Mot. 1. The Joinder Motion indicates that Intel
`Corp. (“Intel”), Petitioner in the 1391 IPR, does not oppose Cavium’s
`request to join that proceeding. Id. However, the Joinder Motion is silent
`regarding Patent Owner’s position regarding the Joinder Motion.
`Alacritech, Inc. (“Patent Owner”) did not file an Opposition to the
`Joinder Motion. Moreover, Patent Owner filed a Preliminary Response that
`is silent regarding the Joinder Motion. Paper 7 (“Prelim. Resp.”).
`As explained further below, we institute trial in this inter partes
`review on the same ground as instituted in IPR2017-01391, and we grant
`Petitioner’s Motion for Joinder.
`II. DISCUSSION
`A.
`Institution of Trial
`In IPR2017-01391, Petitioner Intel challenges the patentability of
`claims 1–7 of the ’036 patent on the following ground:
`
`Basis
`References
`Erickson1 and Tanenbaum2 § 103
`
`1 U.S. Patent No. 5,768,618, issued June 16, 1998 (“Erickson,” Ex. 1005).
`2 Andrew S. Tanenbaum, Computer Networks (3d ed. 1996) (“Tanenbaum,”
`Ex. 1006).
`
`Claims challenged
`1–7
`
`2
`
`
`
`IPR2017‐01718
`
`
`
`
`
`Patent 7,237,036 B2
`
`IPR2017-01391, Paper 2, 14–15.
`After considering the Petition and the Patent Owner’s Preliminary
`Response in IPR2017-01391, we instituted trial for claims 1–7 based on the
`above-identified ground of unpatentability. See IPR2017-01391, Paper 8, 3,
`18. Petitioner here (Cavium) represents that the instant Petition is
`substantively identical to the Petition in IPR2017-01391 and challenges the
`same claims based on the same ground. Mot. 1. We have considered the
`relevant Petitions, and we agree with Petitioner’s representation that the
`instant Petition is substantially identical to the Petition in IPR2017-01391.
`Compare Pet., with IPR2017-01391, Paper 2.
`Patent Owner’s Preliminary Response does not point out any
`differences from its Preliminary Response in the 1391 IPR. However, after
`reviewing Patent Owner’s Preliminary Responses here and in the 1391 IPR,
`we find the two responses to be substantially identical, with one exception.
`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 that Cavium’s only interest
`in the ’036 patent is that of its subsidiary QLogic. See Prelim. Resp. 13–20.
`In the 1391 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. IPR2017-01391,
`Paper 7. Here, Patent Owner argues the parent/subsidiary relationship
`between Petitioner and QLogic and the supplier/indemnitor relationship
`
`3
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`IPR2017‐01718
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`
`
`Patent 7,237,036 B2
`
`
`between QLogic and Dell require that QLogic be named as a real party in
`interest. See Prelim. Resp. 13–20.
`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
`1391 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 IPR2017-01391, Paper 8, 3–6. Moreover, as
`in the 1391 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. at 5. 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 IPR2017-01391, we conclude Petitioner has established a
`reasonable likelihood of prevailing with respect to at least one challenged
`claim, and we institute trial in this proceeding for claims 1–7 on the same
`ground as in IPR2017-01391.
`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.
`
`4
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`IPR2017‐01718
`
`Patent 7,237,036 B2
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`
`
`
`
`Without opposition to the Joinder Motion from any party, we grant
`Petitioner’s Motion for Joinder with the 1391 IPR, subject to the condition
`that Cavium will be bound by all substantive and procedural filings and
`representations of Intel in the 1391 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 ground. Moreover, discovery and
`briefing will be simplified if Cavium is joined as a party to the 1391 IPR.
`
`
`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 1–7 of the ’036 patent under 35 U.S.C. § 103(a)
`over and Erickson and Tanenbaum;
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2017-01391 is granted, and Cavium, Inc. is joined as a petitioner in
`IPR2017-01391;
`FURTHER ORDERED that the ground on which an inter partes
`review was instituted in Case IPR2017-01391 remains unchanged, and no
`other grounds are instituted in the joined proceedings;
`FURTHER ORDERED that Petitioner here (i.e., Cavium, Inc.) will be
`bound in IPR2017-01391 by all substantive and procedural filings and
`representations of current Petitioner in IPR2017-01391 (i.e., Intel Corp.),
`
`5
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`IPR2017‐01718
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`Patent 7,237,036 B2
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`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
`IPR2017-01391 (Paper 9) shall govern the proceeding;
`FURTHER ORDERED that IPR2017-01718 is terminated under
`37 C.F.R. § 42.72, and that all future filings are to be made only in IPR2017-
`01391;
`FURTHER ORDERED that the case caption in IPR2017-01391 for all
`further submissions shall be changed to add Petitioner (Cavium, Inc.) as a
`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 IPR2017-01391.
`
`
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`6
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`IPR2017‐01718
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`
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`Patent 7,237,036 B2
`
`PETITIONER:
`Patrick D. McPherson
`David T. Xue, Ph.D.
`DUANE MORRIS LLP
`PDMcPherson@duanemorris.com
`DTXue@duanemorris.com
`
`
`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. and
`CAVIUM, INC.,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-013913
`Patent 7,237,036 B2
`
`
`
`
`3 Cavium, Inc., which filed a Petition in Case IPR2017-01718, has been
`joined as a petitioner in this proceeding.
`
`
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