`571-272-7822
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`Paper No. 9
`Entered: June 1, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DELL INC.,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00372
`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), 315(c); 37 C.F.R. §§ 42.108, 42.122
`
`
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`IPR2018-00372
`Patent 7,337,241 B2
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`INTRODUCTION
`I.
`Dell Inc. (“Dell” or “Petitioner”), filed a Petition (Paper 2, “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. On the same
`day as filing the Petition, Dell filed a Motion for Joinder. Paper 3 (“Joinder
`Motion” or “Mot.”). The Joinder Motion seeks to join Dell as a party to
`Intel Corp. v. Alacritech, Case IPR2017-01392 (“the 1392 IPR”). Mot. 1.
`Previously, Cavium Inc. (“Cavium”) filed a substantively identical petition
`and motion for joinder in IPR2017-01728 (“the 1728 IPR”), and was joined
`as a party to the 1392 IPR. In addition, Wistron Inc. (“Wistron”) filed a
`substantively identical petition and motion for joinder in IPR2018-00328
`(“the 328 IPR”), and was joined as a party to the 1392 IPR.
`The Joinder Motion indicates Intel Corp. (“Intel”), Petitioner in the
`1392 IPR, did not oppose Cavium’s request to join the 1392 IPR, did not
`oppose Wistron’s request to join the 1392 IPR, and does not oppose Dell’s
`motion to join the 1392 IPR. Mot. 1. The Joinder Motion is silent regarding
`Patent Owner’s position regarding the Joinder Motion. Alacritech, Inc.
`(“Patent Owner”) filed a Preliminary Response that was silent regarding
`specific reference to Dell’s 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 IPR2017-01392, IPR2017-1728,
`and IPR2018-00328, and we grant Petitioner’s Motion for Joinder.
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`2
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`IPR2018-00372
`Patent 7,337,241 B2
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`II. DISCUSSION
`A.
`Institution of Trial
`In the 1392 IPR, Intel challenged 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
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`Basis
`§ 103
`
`Reference(s)
`Erickson,1 Tanenbaum,2
`and Alteon3
`Erickson and Tanenbaum
`§ 103
`IPR2017-01392 Paper 4, 14-15.
`After considering Intel’s Petition and the 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.
`Correspondingly, we instituted trial for the above-identified grounds of
`unpatentability in the 1728 IPR and in the 328 IPR.
`Petitioner here (Dell) represents that this Petition is substantively
`identical to Intel’s Petition in IPR2017-01392 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 IPR2017-01392. Compare Pet. with
`IPR2017-01392 Paper 4.
`Patent Owner’s Preliminary Response does not point out any
`differences from its Preliminary Response in the 1392 IPR. However, after
`
`
`1 U.S. Patent No. 5,768,618 (“Erickson,” Ex. 1005).
`2 Computer Networks, A. Tanenbaum, 3rd ed. (1996) (Ex. 1006,
`“Tanenbaum”).
`3 “Gigabit Ethernet Technical Brief: Achieving End-to-End
`Performance” by Alteon Networks (Ex. 1033, “Alteon”).
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`IPR2018-00372
`Patent 7,337,241 B2
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`reviewing Patent Owner’s Preliminary Response here and in the 1392 IPR,
`we find the two responses to be substantially identical, with only one notable
`exception. We note that Patent Owner argues that Intel Corporation
`(“Intel”), for a variety of reasons, should have been named as a real party-in-
`interest fundamentally because Intel is a supplier to, and indemnitor of, Dell
`(a defendant in related infringement litigation). Prelim. Resp. 28–34. In the
`1392 IPR, Patent Owner presented a similar argument in its Preliminary
`Response that Intel should have named Cavium and Dell as real parties-in-
`interest because of the alleged supplier-indemnitor relationships between
`Intel and Dell and between Cavium and Dell. IPR2017-01392 Paper 10, 29–
`38.
`
`We have reviewed Patent Owner’s arguments. On the record before
`us, for purposes of this Decision, and for 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, is not a real party-in-interest.
`See Case IPR2017-01392 Paper 11, 23–24. Moreover, as in the 1392 IPR,
`there is no allegation that naming additional real parties-in-interest 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 IPR2017-01392, 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 IPR2017-01392.
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`IPR2018-00372
`Patent 7,337,241 B2
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`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.
`We grant Petitioner’s Motion for Joinder with the 1392 IPR, subject to
`the condition that:
`Petitioner here (i.e., Dell Inc.) will be bound by all
`substantive and procedural filings and representations of current
`Petitioner in IPR2017-01392 (i.e., Intel Corp., Cavium Inc., and
`Wistron, Inc.), without a separate opportunity to be heard,
`whether orally or in writing, unless and until the proceeding is
`terminated with respect to Intel Corp., Cavium Inc., and Wistron,
`Inc.
`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 Dell is joined as a party to the 1392 IPR.
`
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`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,
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`IPR2018-00372
`Patent 7,337,241 B2
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`Tanenbaum, and Alteon, and (2) claims 9–17, 19–21, and 24 as obvious
`under 35 U.S.C. § 103(a) over Erickson and Tanenbaum;
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2017-01392 is granted, and Dell Inc. is joined as a petitioner 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 Petitioner here (i.e., Dell Inc.) will be
`bound by all substantive and procedural filings and representations of
`current Petitioner in IPR2017-01392 (i.e., Intel Corp., Cavium, Inc., and
`Wistron, Inc.), without a separate opportunity to be heard, whether orally or
`in writing, unless and until the proceeding is terminated with respect to Intel
`Corp., Cavium Inc. and Wistron, Inc.;
`FURTHER ORDERED that the schedule for this proceeding shall be
`governed by the current schedule and any changes in the schedule for
`IPR2017-01392;
`FURTHER ORDERED that IPR2018-000372 is terminated under
`37 C.F.R. § 42.72, and that all future filings 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 (Dell, Inc.) as a
`named Petitioner, and to indicate by footnote the joinder of Petitioner Dell
`Inc. 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.
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`IPR2018-00372
`Patent 7,337,241 B2
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`PETITIONER:
`For IPR2018-00372:
`Christopher Douglas
`Kirk Bradley
`ALSTON & BIRD LLP
`Christopher.douglas@alston.com
`Kirk.bardley@alston.com
`
`For IPR2017-01392:
`Garland Stephens
`Adrian Percer
`Jeremy Lang
`WEIL, GOTSHAL & MANGES LLP
`garland.stephens@weil.com
`adrian.percer@weil.com
`jason.lang@weil.com
`
`Patrick McPherson
`David Xue
`Karineh Khachatourian
`DUANE MORRIS LLP
`pdmcpherson@duanemorris.com
`dtxue@duanemorris.com
`karinehk@duanemorris.com
`
`PATENT OWNER:
`Jim Glass
`Joseph Paunovich
`Brian Mack
`QUINN EMANUEL URQUHART & SULLIVAN
`jimglass@quinnemanuel.com
`joepaunovich@quinnemanuel.com
`brainmack@quinnemanuel.com
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORP., CAVIUM, INC., WISTRON, INC., and DELL INC.,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-013924
`Patent 7,337,241 B2
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`4 Cavium, Inc., which filed a Petition in Case IPR2017-01728, Wistron, Inc.,
`which filed a Petition in Case IPR2018-00328, and Dell Inc., which filed a
`Petition in Case IPR2018-00372, have been joined as petitioners in this
`proceeding.
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`