Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper No. 9
`Entered: April 16, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WISTRON CORPORATION,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00328
`Patent 7,337,241 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. §§ 42.108, 42.122
`
`INTRODUCTION
`I.
`Wistron Corporation (“Wistron” or “Petitioner”) filed a Petition
`(Paper 1, “Pet.”) for inter partes review of claims 1–24 of U.S. Patent No.
`7,337,241 B2 (“the ’241 Patent”) (Ex. 1001) pursuant to 35 U.S.C. §§ 311–
`319. Contemporaneous with the filing of the Petition, Petitioner filed a
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper No. 9
`Entered: April 16, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WISTRON CORPORATION,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00328
`Patent 7,337,241 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. §§ 42.108, 42.122
`
`INTRODUCTION
`I.
`Wistron Corporation (“Wistron” or “Petitioner”) filed a Petition
`(Paper 1, “Pet.”) for inter partes review of claims 1–24 of U.S. Patent No.
`7,337,241 B2 (“the ’241 Patent”) (Ex. 1001) pursuant to 35 U.S.C. §§ 311–
`319. Contemporaneous with the filing of the Petition, Petitioner filed a
`
`
`
`
`
`IPR2018‐00328
`
`Patent 7,337,241 B2
`
`
`Motion for Joinder. Paper 3 (“Joinder Motion” or “Mot.”). The Joinder
`Motion seeks to join Wistron as a Petitioner in Intel Corp. and Cavium, Inc.
`v. Alacritech, Inc., Case IPR2017-013921 (“the 1392 IPR”). Mot. 1. The
`Joinder Motion indicates Intel Corp. (“Intel”) and Cavium, Inc. (“Cavium”),
`current Petitioners in the 1392 IPR, do not oppose Wistron’s request to join
`that proceeding. Id.
`Alacritech, Inc. (“Patent Owner”) did not file an Opposition to the
`Joinder Motion. Instead, Patent Owner filed a Preliminary Response that is
`silent regarding the Joinder Motion. Paper 8 (“Prelim. Resp.”).
`As explained further below, we institute trial in this inter partes
`review on the same grounds as instituted in the 1392 IPR, and we grant
`Petitioner’s Joinder Motion.
`
`
`II. DISCUSSION
`A.
`Institution of Trial
`In the 1392 IPR, Intel and Cavium challenge the patentability of
`claims 1–24 of the ’241 Patent on the following grounds:
`
`Claims challenged
`1–8, 18, 22, and 23
`
`9–17, 19–21, and 24
`
`References
`Erickson,2 Tanenbaum96,3
`and Alteon4
`Erickson and
`
`1 Cavium, Inc., which filed a petition and motion for joinder in Case
`IPR2017-01728, has been joined as a petitioner in the 1392 IPR.
`2 U.S. Patent No. 5,768,618. (“Erickson,” Ex. 1005).
`3 Andrew S. Tanenbaum, Computer Networks, Third Edition, 1996
`(“Tanenbaum96,” Ex. 1006).
`4 Alteon Networks Inc., Gigabit Ethernet Technical Brief: Achieving End-to-
`End Performance, 1996. (“Alteon,” Ex. 1033).
`
`Basis
`§ 103
`
`§ 103
`
`2
`
`
`
`
`
`
`
`IPR2018‐00328
`
`Patent 7,337,241 B2
`
`
`Tanenbaum96
`IPR2017-01392, Paper 4, 14–15.
`After considering the Petition and Patent Owner’s Preliminary
`Response in the 1392 IPR, we instituted trial for the above-identified
`grounds of unpatentability. See IPR2017-01392, Paper 11, 26. Petitioner
`here, Wistron, represents that the present Petition is substantively identical
`to the Petition in the 1392 IPR, challenges the same claims based on the
`same grounds, and is supported by “substantially the same expert
`declaration.” Mot. 4. We have considered the relevant Petitions and we
`agree with Petitioner’s representation that this Petition is substantially
`identical to the Petition in the 1392 IPR. Compare Pet., with IPR2017-
`01392, Paper 4.
`Patent Owner’s Preliminary Response does not expressly identify any
`differences from its Preliminary Response in the 1392 IPR. However, after
`reviewing Patent Owner’s Preliminary Responses here and in the 1392 IPR,
`we find the two responses to be substantially identical, with one exception.
`We note that, here, Patent Owner argues that Intel should have been named
`as a real party-in-interest because Intel is a supplier and indemnitor to
`Wistron and is an intervenor in Patent Owner’s litigation against Wistron.
`Prelim. Resp. 29–30. In the 1392 IPR, Patent Owner presented a similar
`argument in its Preliminary Response that Petitioner Intel should have
`named Cavium and Dell Inc. (“Dell”) as real parties-in-interest because of
`alleged supplier-indemnitor relationships between Intel and Dell and
`between Cavium and Dell. IPR2017-01392, Paper 10, 28–38. Here, Patent
`Owner argues the supplier/indemnitor relationship between Intel and
`
`3
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`
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`IPR2018‐00328
`
`
`
`Patent 7,337,241 B2
`
`
`Wistron requires that Intel be named as a real party-in-interest. Prelim.
`Resp. 28–37.
`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
`1392 IPR, we determine there is insufficient evidence that Intel controlled,
`or had the opportunity to control, this Petition and, thus, that Intel is not a
`real party-in-interest. See IPR2017-01392, Paper 11, 21–25. Moreover, 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). As in the 1392 IPR, Patent Owner does
`not allege that naming additional real parties-in-interest such as Intel would
`bar Petitioner in the instant proceeding. See IPR2017-01392, Paper 11, 23–
`24.
`
`Accordingly, for essentially the same reasons stated in our Decision to
`Institute in the 1392 IPR, 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 1–24 on the same
`grounds as in that case.
`
`
`
`B. Motion for Joinder
`Based on authority delegated to us by the Director, we have discretion
`to join a petitioner for inter partes review as a party 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
`
`
`
`IPR2018‐00328
`
`Patent 7,337,241 B2
`
`
`
`Without opposition to the Joinder Motion from any party, we grant
`Petitioner’s Motion for Joinder with the 1392 IPR subject to the condition
`that:
`
`
`
`In the joined proceeding, Petitioner here (i.e., Wistron
`Corporation) will be bound by all substantive and procedural
`filings and representations of current Petitioners in IPR2017-
`01392 (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 both
`Intel and Cavium in IPR2017-01392.
`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 Wistron is joined as a petitioner in the 1392
`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 of the ’241 Patent as follows: (1) claims 1–8,
`18, 22, and 23 as obvious under 35 U.S.C. § 103(a) over Erickson,
`Tanenbaum96, and Alteon and (2) claims 9–17, 19–21, and 24 as obvious
`under 35 U.S.C. § 103(a) over Erickson and Tanenbaum96;
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2017-01392 is granted and Wistron Corporation is joined as a petitioner
`in IPR2017-01392 pursuant to 37 C.F.R. § 42.122(b), on the condition that:
`In the joined proceeding, Petitioner here (i.e., Wistron Corporation) will be
`
`5
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`
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`IPR2018‐00328
`
`
`
`Patent 7,337,241 B2
`
`
`bound by all substantive and procedural filings and representations of
`current Petitioners in IPR2017-01392 (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 both
`Intel and Cavium in IPR2017-01392;
`FURTHER ORDERED that the grounds on which an inter partes
`review was instituted in Case IPR2017-01392 remain unchanged, and no
`other grounds are instituted in the joined proceedings;
`FURTHER ORDERED that the Scheduling Order in place for
`IPR2017-01392 (Paper 12) shall govern the joined proceeding;
`FURTHER ORDERED that IPR2018-00328 is terminated under
`37 C.F.R. § 42.72, and that all future filings in the joined proceeding are to
`be made only in IPR2017-01392;
`FURTHER ORDERED that the case caption in IPR2017-01392 for all
`further submissions shall be changed to add Petitioner (Wistron Corporation)
`as a named Petitioner, and to indicate by footnote the joinder of Petitioner
`Wistron 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 IPR2017-01392.
`
`
`
`
`
`
`
`6
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`
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`IPR2018‐00328
`
`
`
`Patent 7,337,241 B2
`
`PETITIONER for IPR2018-00328:
`
`Benjamin E. Weed
`Erik J. Halverson
`K&L GATES LLP
`benjamin.weed.ptab@klgates.com
`erik.halverson@klgates.com
`
`PETITIONER for IPR2017-01392:
`
`Garland Stephens
`Adrian Percer
`David Xue
`WEIL, GOTSHAL & MANGES LLP
`Garland.stephens@weil.com
`Adrian.percer@weil.com
`Jason.lang@weil.com
`
`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 M. Mack
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`jimglass@quinnemanuel.com
`joepaunovich@quinnemanuel.com
`brianmack@quinnemanuel.com
`
`
`
`
`
`7
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`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper No.
`Entered:
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORP., CAVIUM, INC., and
`WISTRON CORPORATION,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-013921
`
`Patent 7,337,241 B2
`
`
`
`
`
`
`
`1 Wistron Corporation, who filed a Petition in Case IPR2018-00328, has
`been joined as a petitioner in this proceeding.
`
`2
`
`
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