`Trials@uspto.gov
`571-272-7822 Entered: December 5, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CAVIUM, INC.,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01729
`Patent 8,805,948 B2
`____________
`
`
`
`Before STEPHEN C. SIU, DANIEL N. FISHMAN, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Dismissing Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`IPR2017-01729
`Patent 8.805,948 B2
`
`I. INTRODUCTION
`Cavium, Inc. (“Petitioner”) requests inter partes review of claims 1, 3,
`6–9, 11, 14–17, 19, 21, and 22 of U.S. Patent No. 8,805,948 B2 (“the ’948
`patent,” Ex. 1001) pursuant to 35 U.S.C. §§ 311 et seq. Paper 1 (“Pet.”).
`Alacritech, Inc. (“Patent Owner”) filed a preliminary response. Paper 7
`(“Prelim. Resp.”).
`Concurrently with the Petition, Petitioner filed a Motion for Joinder.
`Paper 3 (“Joinder Motion.”). The Joinder Motion seeks to join this
`proceeding with Intel Corp. v. Alacritech, Case IPR2017-01395 (“the 1395
`IPR”). Joinder Motion 1.
`At the time Petitioner filed its Petition and Joinder Motion, the Board
`had not yet decided whether to institute inter partes review of the ’948
`patent in the 1395 IPR. On November 22, 2017, however, we entered a
`Decision in the 1395 IPR denying the Petitioner as to all challenges. 1395
`IPR, Paper 8 (“1395 Institution Decision” or “Decision”).
`For the reasons that follow, we determine that the Joinder Motion
`should be dismissed as moot and the Petition for inter partes review denied.
`
`II. DISMISSAL OF MOTION FOR JOINDER
`Because the petition in IPR2017-01395 was denied and inter partes
`review was not instituted, Petitioner’s Joinder Motion is dismissed as moot.
`35 U.S.C. § 315(c).
`
`III. DENIAL OF INTER PARTES REVIEW
`Petitioner states that the Petition is “based on the identical grounds
`that form the basis for the pending inter partes review initiated by Intel
`Corporation” in the 1395 IPR. Joinder Motion 1. As Petitioner states,
`
`2
`
`
`
`IPR2017-01729
`Patent 8.805,948 B2
`
`[t]he Petition asserts only grounds that are awaiting the Board’s
`institution in the Intel [1395] IPR, supported by the same
`technical expert and the same testimony. There are no new
`arguments for the Board to consider. Likewise, the Petition relies
`on the same exhibits.
`Id. at 4.
`As noted above, on November 22, 2017, we denied institution of inter
`partes review on the grounds of obviousness over Thia, Tanenbaum96, and
`Stevens2. 1395 Institution Decision 8. In our Decision, we determined that,
`“because the record does not support Stevens2 as a publicly accessible
`printed publication, we find that Petitioner has not established a reasonable
`likelihood of prevailing on its sole ground of unpatentability with respect to
`claims 1, 3, 6–9, 11, 14–17, 19, 21, and 22.” Id. at 8. Here, Petitioner
`presents grounds and arguments in support of the public availability of
`Stevens21 identical to those we found insufficient in our previous Decision.
`Compare Pet. 38 n.6; Ex. 1063 (“Stansbury Declaration”) with 1395
`Institution Decision 5–6. Accordingly, for the reasons discussed in our
`Decision in IPR2017-01395 (id. at 4–8), we deny the Petition in this
`proceeding.
`
`IV. ORDER
`
`
`
`
`Accordingly, it is:
`ORDERED that the Motion for Joinder is dismissed as moot; and
`FURTHER ORDERED that the Petition is denied and no inter partes
`review is instituted.
`
`
`1 W. Richard Stevens et al., TCP/IP Illustrated, Volume 2, 1995 (“Stevens2,”
`Ex. 1013).
`
`3
`
`
`
`IPR2017-01729
`Patent 8.805,948 B2
`
`FOR PETITIONER:
`Patrick McPherson
`pdmcpherson@duanemorris.com
`
`FOR PATENT OWNER:
`
`Jim Glass
`jimglass@quinnemanuel.com
`
`Jospeh Paunovich
`joepaunovich@quinnemanuel.com
`
`Brian Mack
`brianmack@quinnemanuel.com
`
`
`
`
`4
`
`