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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MARVELL SEMICONDUCTOR, INC.,
`Petitioner,
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`v.
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`UNILOC 2017 LLC,
`Patent Owner.
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`––––––––––
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`Case No. IPR2019-01350
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`U.S. Patent No. 7,016,676
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`––––––––––
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`PETITIONER’S MOTION FOR CONSOLIDATION PURSUANT TO
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`35 U.S.C. § 315(d) AND 37 C.F.R. § 42.122(a)
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`IPR2019-01350
`Motion for Consolidation
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`Pursuant to 35 U.S.C. § 315(d) and 37 C.F.R. § 42.122(a), Petitioner
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`Marvell Semiconductor, Inc. (“Marvell”) respectfully requests consolidation of
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`schedules of this IPR (“Marvell IPR”) with the inter partes reviews concerning the
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`same patent in Microsoft Corporation v. Uniloc 2017 LLC, Case Nos. IPR2019-
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`01116 and IPR2019-01125 (collectively, the “Microsoft IPRs”).
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`Marvell and Microsoft filed their petitions independently. Marvell never
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`discussed its petitions with Microsoft, and Microsoft never discussed its petitions
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`with Marvell. Microsoft prepared and filed its petitions without any involvement
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`from Marvell, who had no control, provided no funding, and had no knowledge
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`that Microsoft was preparing petitions. Marvell only learned of Microsoft’s
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`petitions from their publication in PTAB dockets. Nonetheless, Microsoft’s
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`petitions state their uncertainty as to what an RPI is under applicable law and name
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`Marvell as an RPI “out of an abundance of caution”. To be clear, Marvell is not an
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`RPI or privy of the Microsoft petitions.
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`However, Marvell anticipates that Patent Owner Uniloc may attempt to
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`exploit Microsoft’s improper identification of Marvell and argue that somehow
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`Marvell is an RPI or privy (it is not). To protect Marvell from prejudice in case
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`PO engages in gamesmanship—for example by arguing that Marvell would be
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`estopped under 35 U.S.C. §315(e)(1) from maintaining its IPR should either of the
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`Microsoft proceedings reach final written decision first—Marvell requests that its
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`IPR2019-01350
`Motion for Consolidation
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`IPR (IPR2019-01349) be consolidated and aligned in schedule with the Microsoft
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`IPRs so that any Final Written Decisions issue in all 3 proceedings concurrently.
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`See Liberty Mut. Ins. Co. v Progressive Cas. Ins. Co., No. CBM2012-00004, Paper
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`64 at 5-9 (PTAB Apr. 1, 2014) (“The estoppel provision under 35 U.S.C.
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`§ 325(e)(1) could not have terminated the instant proceeding prior to issuance of
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`the final written decision, because the final written decision was issued
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`concurrently with the final written decision in CBM2012-00002.”).
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`Marvell emphasizes that it is only requesting consolidation for the purposes
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`of synchronizing the schedules of the Marvell IPR with the Microsoft IPRs.
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`Marvell is not requesting joint briefing or depositions in conjunction with the
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`Microsoft IPRs. While this motion specifically addresses consolidation for
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`IPR2019-01349, Marvell would also be amenable to consolidation of its co-
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`pending IPR2019-01350, which addresses different claims of the same challenged
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`patent.
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`Consolidation is available here as all IPRs at issue were filed within one year
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`of service of any relevant complaint. Given the improvements to case-
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`management efficiency if consolidation is granted, and the risk of prejudice to
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`Marvell if consolidation is denied, Petitioner Marvell respectfully requests that the
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`Board consolidate and synchronize the schedules of one or both of the Marvell
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`IPRs with the Microsoft IPRs.
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`IPR2019-01350
`Motion for Consolidation
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`Respectfully submitted,
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`SHEPPARD, MULLIN,
`RICHTER & HAMPTON LLP
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` /Harper Batts/
`Harper Batts (Reg. No. 56,160)
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`IPR2019-01350
`Motion for Consolidation
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on July 26, 2019, a true and correct copy
`of the foregoing PETITIONER’S MOTION FOR CONSOLIDATION
`PURSUANT TO 35 U.S.C. § 315 (d) and 37 C.F.R. § 42.122(a) was served in its
`entirety on the Patent Owner at the following address of record as listed on PAIR
`via FedEx Express® or Express Mail:
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`Russell Gross, Esq.
`Philips Intellectual Property & Standards
`465 Columbus Avenue, Suite 340
`Valhalla, NY 10595
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`The undersigned certifies that a true and correct copy of the PETITIONER’S
`MOTION FOR CONSOLIDATION PURSUANT TO 35 U.S.C. § 315 (d) and 37
`C.F.R. § 42.122(a) was also sent via electronic mail to the attorneys of record for
`Plaintiff in the concurrent litigation matters:
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`M. Elizabeth Day - eday@feinday.com
`David Alberti - dalberti@feinday.com
`Sal Lim - slim@feinday.com
`Marc Belloli - mbelloli@feinday.com
`Jeremiah Armstrong - jarmstrong@feinday.com
`Hong Lin - hlin@feinday.com
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`SHEPPARD, MULLIN,
`RICHTER & HAMPTON LLP
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` /Harper Batts/
`Harper Batts (Reg. No. 56,160)
`Attorney for Petitioner
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`Date: July 26, 2019
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`379 Lytton Ave.
`Palo Alto, CA 94301
`Tel: (650) 815-2673
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