`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`IPR2019-01125
`Patent 7,016,676 B2
`
`
`_________________
`
`
`
`
`PETITIONER’S UPDATED
`MANDATORY NOTICE UNDER 37 C.F.R. § 42.8
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-01125
`Patent 7,016,676
`Petitioner, Microsoft Corporation, hereby files this updated mandatory notice
`
`pursuant to 37 C.F.R. § 42.8.
`
`I.
`
`REAL PARTY-IN-INTEREST (37 C.F.R. § 42.8 (b)(1))
`In its Petition, Microsoft included the following statement in its statement on
`
`real party-in-interest (“RPI”):
`
`Microsoft notes that in the related district court litigation,
`patent owner accuses Microsoft of infringement based on
`its use of a component Microsoft obtained from Marvell
`Semiconductor. Microsoft has requested
`defense/indemnity from Marvell, and Marvell has refused
`to defend/indemnify Microsoft.
`
`Microsoft submits this update to its mandatory notices to advise the Board as
`
`follows:
`
`•
`
`On July 16, 2019, Marvell agreed to retain a law firm to enter an
`
`appearance in the litigation on behalf of Microsoft to assist Microsoft
`
`with the defense of that matter with respect to U.S. Patent 7,016,676 to
`
`the extent any allegations are against Microsoft products containing
`
`Marvell components. In doing so, Marvell maintains that IPR
`
`proceedings are outside the scope of the indemnity provisions in the
`
`Marvell-Microsoft Agreement and that Marvell is not responsible for
`
`Petitioner’s Updated Mandatory Notice
`
`Page 1
`
`
`
`IPR2019-01125
`Patent 7,016,676
`costs and/or fees incurred by counsel retained by Microsoft relating to
`
`Microsoft’s IPR proceedings.
`
`•
`
`•
`
`Marvell still maintains that Microsoft's claim for indemnity falls
`
`outside the scope of their agreement.
`
`On August 5, 2019, Marvell-designated counsel entered an appearance
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`on Microsoft’s behalf in that litigation.
`
`Respectfully submitted,
`
`August 19, 2019
`
`
`
`
`
`
`By: /Derrick W. Toddy/
`Derrick W. Toddy (Registration No. 74,591)
`derrick.toddy@klarquist.com
`Andrew M. Mason (Registration No. 64,034)
`andrew.mason@klarquist.com
`Todd M. Siegel (Registration No. 73,232)
`todd.siegel@klarquist.com
`KLARQUIST SPARKMAN, LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Tel: 503-595-5300
`Fax: 503-595-5301
`
`Counsel for Petitioner
`
`
`
`Petitioner’s Updated Mandatory Notice
`
`Page 2
`
`
`
`IPR2019-01125
`Patent 7,016,676
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that on August 19, 2019, a true and correct copy
`
`of Petitioner’s Updated Mandatory Notice was served on counsel for
`
`Uniloc 2017 LLC via electronic mail as follows:
`
`Ryan Loveless – Lead Counsel
`ryan@etheridgelaw.com
`Brett Mangrum – Back-up Counsel
`brett@etheridgelaw.com
`James Etheridge – Back-up Counsel
`jim@etheridgelaw.com
`Jeffrey Huang – Back-up Counsel
`jeff@etheridgelaw.com
`Etheridge Law Group
`2600 E. Southlake Blvd., Ste. 120-324
`Southlake, TX 76092
`
`
`
`
`
`
`
`
`
`By: /Derrick W. Toddy/
`Derrick W. Toddy (Registration No. 74,591)
`derrick.toddy@klarquist.com
`KLARQUIST SPARKMAN, LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Tel: 503-595-5300
`Fax: 503-595-5301
`
`Counsel for Petitioner
`
`Certificate Of Service
`
`
`
`Page 1
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`
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