`571-272-7822
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`Paper No. 8
`Entered: Dec. 13, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CAVIUM, INC.,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01714
`Patent 9,055,104 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), 315(c); 37 C.F.R. §§ 42.108, 42.122
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`IPR2017‐01714
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`Patent 9,055,104 B2
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`INTRODUCTION
`I.
`Cavium, Inc. (“Cavium” or “Petitioner”), filed a Petition (Paper 1,
`“Pet.”) for inter partes review of claims 1, 6, 9, 12, 15, and 22 of U.S. Patent
`No. 9,055,104 B2 (“the ’104 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-
`01393 (“the 1393 IPR”). Mot. 1. The Joinder Motion indicates Intel Corp.
`(“Intel”), Petitioner in the 1393 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. 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 grounds as instituted in IPR2017-01393, and we grant
`Petitioner’s Motion for Joinder.
`II. DISCUSSION
`A.
`Institution of Trial
`In IPR2017-01393, Petitioner Intel challenges the patentability of
`claims 1, 6, 9, 12, 15, and 22 of the ’104 Patent on the following grounds:
`
`Reference(s)
`Connery1
`Connery and Boucher2
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`1 U.S. Patent No. 5,937,169 (“Connery,” Ex. 1043).
`2 PCT Patent Publication No. WO 00/13091 (“Boucher,” Ex. 1049).
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`Claims challenged
`1, 6, 9, 12, 15, and 22
`1, 6, 9, 12, and 15
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`Basis
`§ 103
`§ 103
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`2
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`IPR2017‐01714
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`Patent 9,055,104 B2
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`IPR2017-01393, Paper 2, 15–16.
`After considering the Petition and the Patent Owner’s Preliminary
`Response in IPR2017-01393, we instituted trial for claims 1, 6, 9, 12, and 15
`based on both of the above-identified grounds of unpatentability and denied
`review of claim 22. See IPR2017-01393, Paper 8, 2, 21. Petitioner here
`(Cavium) represents that this Petition is substantively identical to the
`Petition in IPR2017-01393 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 IPR2017-01393. Compare Pet. with IPR2017-
`01393, Paper 2.
`Patent Owner’s Preliminary Response does not point out any
`differences from its Preliminary Response in the 1393 IPR. However, after
`reviewing Patent Owner’s Preliminary Response here and in the 1393 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 Cavium’s only interest in
`the ’104 patent is that of its subsidiary QLogic. See Prelim. Resp. 23–31. In
`the 1393 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. IPR2017-01393, Paper 7.
`Here, Patent Owner argues the parent/subsidiary relationship between
`Petitioner and QLogic and the supplier/indemnitor relationship between
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`Patent 9,055,104 B2
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`QLogic and Dell require that QLogic be named as a real party-in-interest.
`See Prelim. Resp. 23–31.
`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
`1393 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 IPR2017-01393, Paper 8, 16–20. Moreover,
`as in the 1393 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 19. 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 IPR2017-01393, 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, 6, 9, 12, and 15
`on the same grounds as in IPR2017-01393.
`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.
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`IPR2017‐01714
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`Patent 9,055,104 B2
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`Without opposition to the Joinder Motion from any party, we grant
`Petitioner’s Motion for Joinder with the 1393 IPR, subject to the condition
`that:
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`Petitioner here (i.e., Cavium, Inc.) will be bound by all
`substantive and procedural filings and representations of current
`Petitioner in IPR2017-01393 (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..
`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 1393 IPR.
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`III. ORDER
`After due consideration of the record before us, and for the foregoing
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`reasons, it is:
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`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`hereby instituted for claims of the ’104 Patent as follows: (1) claims 1, 6, 9,
`12, and 15 as obvious under 35 U.S.C. § 103(a) over Connery and (2) claims
`1, 6, 9, 12, and 15 as obvious under 35 U.S.C. § 103(a) over Connery and
`Boucher;
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2017-01393 is granted, and Cavium, Inc. is joined as a petitioner in
`IPR2017-01393;
`FURTHER ORDERED that the grounds on which an inter partes
`review was instituted in Case IPR2017-01393 remain unchanged, and no
`other grounds are instituted in the joined proceedings;
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`Patent 9,055,104 B2
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`FURTHER ORDERED that Petitioner here (i.e., Cavium, Inc.) will be
`bound by all substantive and procedural filings and representations of
`current Petitioner in IPR2017-01393 (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
`IPR2017-01393 (Paper 9) shall govern the proceeding;
`FURTHER ORDERED that IPR2017-01714 is terminated under
`37 C.F.R. § 42.72, and that all future filings are to be made only in IPR2017-
`01393;
`FURTHER ORDERED that the case caption in IPR2017-01393 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 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
`into the record of IPR2017-01393.
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`IPR2017‐01714
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`Patent 9,055,104 B2
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`PETITIONER:
`Patrick McPherson
`pdmcpherson@duanemorris.com
`
`Garland T. Stephens
`Jeremy Jason Lang
`Adrian Percer
`WEIL, GOTSHAL & MANGES LLP
`garland.stephens@weil.com
`jason.lang@weil.com
`adrian.percer@weil.com
`
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`PATENT OWNER:
`James M. Glass
`Joseph M. Paunovich
`Brian E. Mack
`jimglass@quinnemanuel.com
`joepaunovich@quinnemanuel.com
`brianmack@quinnemanuel.com
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`INTEL CORP., and
`CAVIUM, INC.,
`Petitioner,
`
`v.
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`ALACRITECH, INC.,
`Patent Owner.
`____________
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`Case IPR2017-013933
`Patent 9,055,104 B2
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`3 Cavium, Inc., which filed a Petition in Case IPR2017-01714, has been
`joined as a petitioner in this proceeding.
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