`571-272-7822
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`Paper No. 9
`Entered: May 18, 2018
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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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`DELL, INC.,
`Petitioner,
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`v.
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`ALACRITECH, INC.,
`Patent Owner.
`____________
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`Case IPR2018-00338
`Patent 8,131,880 B2
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`
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`Before STEPHEN C. SIU, DANIEL N. FISHMAN, and
`CHARLES BOUDREAU, Administrative Patent Judges.
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`SIU, Administrative Patent Judge.
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`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
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`IPR2018‐00338
`Patent 8,131,880 B2
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`INTRODUCTION
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`I.
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`Dell, Inc. (“Dell” or “Petitioner”), filed a Petition (Paper 1, “Pet.”) for
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`inter partes review of claims 1, 5–10, 12, 14, 16, 17, 20–23, 27, 28, 45, and
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`55 of U.S. Patent No. 8,131,880 B2 (“the ’205 Patent”) (Ex. 1001) pursuant
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`to 35 U.S.C. §§ 311–319. Petitioner also filed a Motion for Joinder. Paper 3
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`(“Joinder Motion” or “Mot.”). The Joinder Motion seeks to join Dell as a
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`petitioner in Intel Corp. v. Alacritech, Case IPR2017-01409 (“the 1409
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`IPR”), to which Cavium, Inc. (“Cavium”) has previously been joined. Mot.
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`1; see IPR2017-01736, Paper 8. The Joinder Motion indicates Intel Corp.
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`(“Intel”) and Cavium, current Petitioners in the 1409 IPR, do not oppose
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`Dell’s request to join that proceeding. Id. Alacritech, Inc. (“Patent Owner”)
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`filed a Preliminary Response. Paper 8 (“Prelim. Resp.”).
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`As explained further below, we institute trial in this inter partes
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`review on the same ground as instituted in IPR2017-01409, and we grant
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`Petitioner’s Motion for Joinder.
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`II. DISCUSSION
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`A.
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`Institution of Trial
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`In IPR2017-01409, Intel and Cavium challenge the patentability of
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`claims 1, 5–10, 12, 14, 16, 17, 20–23, 27, 28, 45, and 55 of the ’880 Patent
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`under 35 U.S.C. § 103 over Thia1 and Tanenbaum.2 IPR2017-01409, Paper
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`1.
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`1 Y.H. Thia and C.M. Woodside, “A Reduced Operation Protocol Engine
`(ROPE) for a Multiple-Layer Bypass Architecture,” 1995 (“Thia,”
`Ex. 1015).
`2 Andrew S. Tanenbaum, Computer Networks, Third Edition, 1996
`(“Tanenbaum,” Ex. 1006).
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`2
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`IPR2018‐00338
`Patent 8,131,880 B2
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`After considering the Petition and the Patent Owner’s Preliminary
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`Response in IPR2017-01409, we instituted trial for the above-identified
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`ground of unpatentability. See IPR2017-01409, Paper 8. Petitioner here
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`(Dell) represents that this Petition is substantively identical to the Petition in
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`IPR2017-01409 and challenges the same claims based on the same ground.
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`Mot. 1. We have considered the relevant Petitions and we agree with
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`Petitioner’s representation that this Petition is substantially identical to the
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`Petition in IPR2017-01409. Compare Pet., with IPR2017-01409, Paper 1.
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`Accordingly, for essentially the same reasons stated in our Decision to
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`Institute in IPR2017-01409, we conclude Petitioner has established a
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`reasonable likelihood of prevailing with respect to at least one challenged
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`claim, and we institute trial in this proceeding for claims 1, 5–10, 12, 14, 16,
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`17, 20–23, 27, 28, 45, and 55 on the same ground as in IPR2017-01409.
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`B. Moti on for Joi nder
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`Based on authority delegated to us by the Director, we have discretion
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`to join a petitioner for inter partes review to a previously instituted inter
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`partes review. 35 U.S.C. § 315(c). Section 315(c) provides, in relevant
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`part, that “[i]f the Director institutes an inter partes review, the Director, in
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`his or her discretion, may join as a party to that inter partes review any
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`person who properly files a petition under section 311.” Id.
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`Without opposition to the Joinder Motion from any party, we grant
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`Petitioner’s Motion for Joinder with the 1409 IPR subject to the condition
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`that, in the joined proceeding, Dell will be bound by all substantive and
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`procedural filings and representations of Intel and Cavium in the 1409 IPR,
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`without a separate opportunity to be heard, whether orally or in writing,
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`3
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`IPR2018‐00338
`Patent 8,131,880 B2
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`unless and until the joined proceeding is terminated with respect to both
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`Intel and Cavium.
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`In view of the foregoing, we determine that joinder based upon the
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`above-noted condition will have little or no impact on the timing, cost, or
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`presentation of the trial on the instituted ground. Moreover, discovery and
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`briefing will be simplified if Dell is joined as a petitioner in the 1409 IPR.
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`III. ORDER
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`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
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`hereby instituted for claims 1, 5–10, 12, 14, 16, 17, 20–23, 27, 28, 45, and
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`55 of the ’880 Patent as obvious under 35 U.S.C. § 103(a) over Thia and
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`Tanenbaum;
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`FURTHER ORDERED that Petitioner’s Motion for Joinder with
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`IPR2017-01409 is granted and Dell, Inc., is joined as a petitioner in
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`IPR2017-01409 pursuant to 37 C.F.R. § 42.122(b), on the condition that, in
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`the joined proceeding, Petitioner here (i.e., Dell, Inc.) will be bound by all
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`substantive and procedural filings and representations of current Petitioner in
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`IPR2017-01409 (i.e., Intel Corp. and Cavium, Inc.), without a separate
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`opportunity to be heard, whether orally or in writing, unless and until the
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`joined proceeding is terminated with respect to Petitioners Intel and Cavium
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`in IPR2017-01409;
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`FURTHER ORDERED that the ground on which an inter partes
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`review was instituted in Case IPR2017-01409 remains unchanged, and no
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`other grounds are instituted in the joined proceedings;
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`4
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`IPR2018‐00338
`Patent 8,131,880 B2
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`FURTHER ORDERED that the Scheduling Order in place for
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`IPR2017-01409 (Paper 9) shall govern the joined proceedings;
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`FURTHER ORDERED that IPR2018-00338 is terminated under
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`37 C.F.R. § 42.72, and that all future filings in the joined proceeding are to
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`be made only in IPR2017-01409;
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`FURTHER ORDERED that the case caption in IPR2017-01409 for all
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`further submissions shall be changed to add Petitioner (Dell, Inc.) as a
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`named Petitioner, and to indicate by footnote the joinder of Petitioner
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`Cavium to that proceeding, as indicated in the attached sample case caption;
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`and
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`FURTHER ORDERED that a copy of this Decision shall be entered
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`into the record of IPR2017-01409.
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`5
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`IPR2018‐00338
`Patent 8,131,880 B2
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`PETITIONER:
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`Christopher Douglas
`christopher.douglas@alston.com
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`Kirk Bradley
`kirk.bradley@alston.com
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`PATENT OWNER:
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`Jim Glass
`jimglass@quinnemanuel.com
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`Joseph Paunovich
`joepaunovich@quinnemanuel.com
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`Brian Mack
`brianmack@quinnemanuel.com
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`6
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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.,
`CAVIUM, INC., and DELL, INC.
`Petitioner,
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`v.
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`ALACRITECH, INC.,
`Patent Owner.
`____________
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`Case IPR2017-014091
`Patent 8,131,880 B2
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`1 Cavium, Inc., which filed a Petition in Case IPR2017-01736, and Dell,
`Inc., which filed a Petition in Case IPR2018-00338, have been joined as
`petitioners in this proceeding.
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