Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper No. 9
`Entered: June 1, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DELL INC.,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00374
`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
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper No. 9
`Entered: June 1, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DELL INC.,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00374
`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
`
`
`
`
`
`
`
`IPR2018-00374
`Patent 9,055,104 B2
`
`
`
`
`
`INTRODUCTION
`I.
`Dell Inc. (“Dell” or “Petitioner”), filed a Petition (Paper 2, “Pet.”) for
`inter partes review of claims 1, 6, 9, 12, and 15 of U.S. Patent No. 9,055,104
`B2 (“the ’104 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 IPR2017-01393 (“the 1393 IPR”).
`Mot. 1. Another Petitioner, Cavium Inc. (“Cavium”), also filed a petition for
`inter partes review of the ’104 Patent and moved for joinder to the 1393 IPR
`(Case No. IPR2017-01714 (“the 1714 IPR”)). We instituted the 1714 IPR
`and joined Cavium as a party to the 1393 IPR. See IPR2017-01714 Paper 8.
`The Joinder Motion indicates Intel Corp. (“Intel”) and Cavium,
`Petitioner in the 1393 IPR, do not oppose Dell’s motion to join the 1393
`IPR. Mot. 1–2. 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 IPR2017-01393 and in IPR2017-
`1714, and we grant Petitioner’s Motion for Joinder.
`
`
`II. DISCUSSION
`A.
`Institution of Trial
`In the 1393 IPR, Intel challenged the patentability of claims 1, 6, 9,
`12, 15, and 22 of the ’104 Patent on the following grounds:
`
`2
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`
`
`IPR2018-00374
`Patent 9,055,104 B2
`
`
`
`
`
`
`Basis
`§ 103
`§ 103
`
`Claims challenged
`1, 6, 9, 12, 15, and 22
`1, 6, 9, 12, and 15
`
`Reference(s)
`Connery1
`Connery and Boucher2
`IPR2017-01393, 18-19.
`After considering Intel’s Petition and the Patent Owner’s Preliminary
`Response in the 1393 IPR, we instituted trial for claims 1, 6, 9, 12, 15, and
`22 based on both of the above-identified grounds of unpatentability and
`denied review of claim 22.3 Correspondingly, we instituted trial for the
`same grounds and claims in the 1714 IPR.
`Petitioner here (Dell) represents that this Petition is substantively
`identical to Intel’s 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 Petitions in IPR2017-01393 and in IPR2017-
`01714. Compare Pet. with IPR2017-01393 Paper 2 and IPR2017-01714
`Paper 1.
`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
`
`
`1 U.S. Patent No. 5,937,169 (“Connery,” Ex. 1043).
`2 PCT Patent Publication No. WO 00/13091 (“Boucher,” Ex. 1049).
`3 We instituted only claims 1, 6, 9, 12, and 15 on both grounds in our
`original Decision on Institution. IPR2017-01393 Paper 1, 9. In a later
`Order, we added claim 22 as a newly instituted claim to be reviewed.
`IPR2017-01393 Paper 38. We accept Dell’s Petition as seeking joinder as a
`party for all claims and grounds instituted in the 1393 IPR, including claim
`22.
`
`3
`
`
`
`
`
`IPR2018-00374
`Patent 9,055,104 B2
`
`
`(Paper 7), 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 in this Petition fundamentally because Intel is a
`supplier to, and indemnitor of, Dell (a defendant in related infringement
`litigation). Prelim. Resp. 23–30. In the 1393 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. IPR2017-01393, Paper 7, 23–33.
`We have reviewed Patent Owner’s arguments. On the record before
`us, for purposes of this Decision, and for similar reasons as in the 1393 IPR
`and in the 1714 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 IPR2017-01393, Paper 8, 16–20. Moreover,
`as in the 1393 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 IPR2017-01393, 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, 15, and
`22 on the same grounds as in IPR2017-01393.
`
`4
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`
`
`IPR2018-00374
`Patent 9,055,104 B2
`
`
`
`
`
`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 1393 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 IPR2017-01393 (i.e., Intel Corp. and Cavium 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. and Cavium 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 1393 IPR.
`
`
`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 ’104 Patent as follows: (1) claims 1, 6, 9,
`12, 15, and 22 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;
`
`5
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`
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`IPR2018-00374
`Patent 9,055,104 B2
`
`
`
`
`
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2017-01393 is granted, and Dell 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;
`FURTHER ORDERED that Petitioner here (i.e., Dell Inc.) will be
`bound by all substantive and procedural filings and representations of
`current Petitioner in IPR2017-01393 (i.e., Intel Corp. and Cavium, 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. and
`Cavium Inc.;
`FURTHER ORDERED that the schedule for this proceeding shall be
`governed by the current schedule and any changes in the schedule for
`IPR2017-01393;
`FURTHER ORDERED that IPR2018-000374 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 (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 IPR2017-01393.
`
`
`
`
`6
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`IPR2018-00374
`Patent 9,055,104 B2
`
`PETITIONER:
`
`For IPR2018-00374:
`Christopher Douglas
`Kirk Bradley
`ALSTON & BIRD LLP
`Christopher.douglas@alston.com
`Kirk.bardley@alston.com
`
`For IPR2017-01393:
`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
`
`
`7
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORP., CAVIUM, INC., and DELL INC.,
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-013934
`Patent 9,055,104 B2
`
`
`
`
`4 Cavium, Inc., which filed a Petition in Case IPR2017-01714 and Dell Inc.,
`which filed a Petition in Case IPR2018-00374, have been joined as
`petitioners in this proceeding.
`
`
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