Paper: 8
`Trials@uspto.gov
`571-272-7822 Entered: December 6, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CAVIUM, INC.,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01734
`Patent 7,124,205 B2
`____________
`
`
`
`Before STEPHEN C. SIU, DANIEL N. FISHMAN, and
`WILLIAM M. FINK, Administrative Patent Judges.
`
`FINK, 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)
`
`
`
`

`

`IPR2017-01734
`Patent 7,124,205 B2
`
`I. INTRODUCTION
`Cavium, Inc. (“Petitioner”) requests inter partes review of claims 1,
`4–8, 11, and 13 of U.S. Patent No. 7,124,205 B2 (“the ’205 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.”).
`Within a few days of filing 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 IPR2017-01402 (“the 1402
`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 ’205
`patent in the 1402 IPR. On November 6, 2017, however, we entered a
`Decision in the 1402 IPR denying the Petition as to all challenges. 1402
`IPR, Paper 8 (“1402 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 IPR2017-01402 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 1402 IPR. Joinder Motion 1. As Petitioner states,
`[t]he Petition asserts only grounds that are awaiting the Board’s
`institution in the Intel [1402] IPR, supported by the same
`
`2
`
`

`

`IPR2017-01734
`Patent 7,124,205 B2
`
`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 6, 2017, we denied institution of inter
`partes review on the grounds of obviousness over Thia and SMB, and Thia,
`SMB, and Carmichael. 1402 Institution Decision 2, 7. In our Decision, we
`determined that, “because the record does not support SMB as a publicly
`available printed publication, . . . Petitioner has not established a reasonable
`likelihood of prevailing on its grounds of unpatentability with respect to
`claims 1, 4–8, 11, and 13.” Id. at 7. Here, Petitioner presents grounds and
`arguments in support of the public availability of SMB1 identical to those we
`found insufficient in our previous Decision.2 See Pet. 14 n.3; Ex. 1074
`(“Rampersad Declaration”); 1402 Institution Decision 4. Accordingly, for
`the reasons discussed in our Decision (see id. at 3–7), we deny the Petition
`in this proceeding.
`
`
`1 X/Open Company Ltd., Protocols for X/Open PC Interworking: SMB,
`Version 2, Technical Standard, 1992 (“SMB,” Ex. 1055).
`2 On Friday, December 1, 2017 at 11:50 PM, Petitioner contacted the Board
`via email requesting a conference to “seek leave to file a Reply to the Patent
`Owner’s Preliminary Responses pursuant to 37 C.F.R. § 42.108(c) in the
`form of two supplemental declarations related to the public accessibility of
`Exhibit 1055.” As an initial matter, our rules only permit supplemental
`information after to institution of inter partes review. See 37 C.F.R. §
`42.123 (“Once a trial has been instituted, a party may file a motion to submit
`supplemental information . . . .”). Moreover, not having heard from
`Petitioner in the 4 weeks since we denied the 1402 Petition, we have relied
`on Petitioner’s representation that there are no new exhibits or arguments for
`the Board to consider over the 1402 Petition. See Joinder Motion 4.
`Accordingly, we deny Petitioner’s request.
`3
`
`

`

`IPR2017-01734
`Patent 7,124,205 B2
`
`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.
`
`
`
`
`
`4
`
`

`

`IPR2017-01734
`Patent 7,124,205 B2
`
`PETITIONER:
`Patrick D. McPherson
`DUANE MORRIS LLP
`
`PDMcPherson@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
`
`
`
`5
`
`