IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`––––––––––
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`––––––––––
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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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`STATEMENT REGARDING MULTIPLE PETITIONS
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`––––––––––
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`––––––––––
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`MARVELL SEMICONDUCTOR, INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`––––––––––
`
`
`Case No. IPR2019-01350
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`U.S. Patent No. 7,016,676
`
`––––––––––
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`STATEMENT REGARDING MULTIPLE PETITIONS
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`IPR2019-01350
`Multiple Petition Statement
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`Petitioner Marvell Semiconductor, Inc., (“Marvell”) submits this paper
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`pursuant to the July 2019 Update to the AIA Trial Practice Guide. Marvell filed two
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`petitions against the ’676 patent and ranks them (1) IPR2019-01349 challenging
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`claims 1, 2, 5, and (2) IPR2019-01350 challenging claims 3, 6-9. Two petitions were
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`necessary to prevent potential prejudice to Marvell and to address potential priority
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`date disputes by Patent Owner (“PO”). Institution of both petitions will be an
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`efficient use of resources because it requires minimal additional work for the Board.
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`I. Two Petitions Were Needed to Prevent Prejudice
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`The petitions rely on the same prior art grounds but challenge different, non-
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`overlapping sets of claims. The first petition (IPR2019-01349) challenges the same
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`set of claims (1, 2, and 5) challenged by another party, Microsoft, who prepared and
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`filed its petitions without any involvement from Marvell. Marvell is not an RPI or
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`privy of the Microsoft petitions. Marvell never discussed its petitions with
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`Microsoft, and Microsoft never discussed its petitions with Marvell. Marvell had no
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`control, provided no funding, and had no knowledge that Microsoft was preparing
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`petitions. Marvell learned of Microsoft’s petitions from their publication in PTAB
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`dockets. Nonetheless, Microsoft’s petitions state their uncertainty as to what an RPI
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`is under applicable law and name Marvell an RPI “out of an abundance of caution”.
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`Even though Marvell is not an RPI or privy of the Microsoft petitions, Marvell
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`anticipates that PO may attempt to exploit Microsoft’s improper identification of
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`-1-
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`IPR2019-01350
`Multiple Petition Statement
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`Marvell. To protect Marvell from prejudice in case PO engages in gamesmanship,
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`Marvell split its challenge into two petitions, with one petition matching the claims
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`challenged by Microsoft. This split facilitates consolidation and schedule alignment,
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`as requested in Marvell’s motion to consolidate.
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`There is no prejudice to the PO here. Neither the PO Preliminary Response
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`nor an Institution Decision have issued in Microsoft’s proceedings. And even if
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`Marvell were a RPI or privy, which it is not, neither Microsoft nor Marvell are time-
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`barred under §315(b). Both of Marvell’s petitions should be allowed to go forward.
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`II. Two Petitions Were Needed to Address Potential Priority Disputes
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`Although the ’676 patent does not claim priority to it, an earlier German
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`patent application is referenced in the file history. The Examiner marked in the
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`Notice of Allowance that no certified foreign documents had been received and the
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`conditions of 35 § U.S.C. 119 had not been met. Thus far PO has not claimed an
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`earlier priority date, nor are they entitled to one. However, because PO may
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`attempt to argue that it can somehow rely upon the German application, Marvell
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`included one set of grounds based on the priority date on the face of the ’676
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`patent (the Sherman grounds) and another that pre-dates the filing date of the
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`German patent application (the Shellhammer grounds).
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`-2-
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`IPR2019-01350
`Multiple Petition Statement
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`III. The Second Petition Adds Minimal Additional Work
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`Should the Board institute the first petition (IPR2019-01349), the Board can
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`efficiently resolve the grounds of the second petition (IPR2019-01350) with
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`minimal additional work. Both petitions rely on the same exact prior art and
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`combinations. The second petition addresses one additional limitation in claims 6
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`and 7. It also addresses claims 3 and 8, but the analysis for those claims
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`substantially overlaps with claims 2 and 5 of the first petition, given the similarities
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`of the elements.
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`As a result, despite the formality of two petitions, the aggregate amount of
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`content is comparable to that of a single petition because the second petition
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`effectively addresses the elements and issues of the first petition, plus the
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`additional elements discussed above. Unlike other situations where multiple
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`petitions increase content, here the division of claims provided minimal additional
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`space. Table 1 illustrates some similarities and differences in the petitions:
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`Table 1: Table Comparing Petitions
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`IPR2019-
`01349
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`IPR2019-
`01350
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`Comments
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`1
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`2
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`5
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`(1)
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`3
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`8
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`IPR2019-01350 did not challenge claim 1 but addressed
`it as part of dependent claim 3.
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`These claims have related elements and analysis.
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`These claims have related elements and analysis.
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`-3-
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`IPR2019-01350
`Multiple Petition Statement
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`6
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`7
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`9
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`This claim adds one limitation beyond claim 1.
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`This claim adds one limitation beyond claim 1.
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`This claim is nearly identical to claim 1.
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`IV. The Differences in the Petitions Are Material
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`Despite their similarities, the differences between the petitions—the
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`challenged claims—are material and denial of either petition would be highly
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`prejudicial to Marvell. Here, the division of claims into two petitions was
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`necessitated by the improper identification of Marvell in Microsoft’s petitions.
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`Should one petition be denied, Marvell would be deprived of a fair opportunity to
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`challenge one half of the claims of the ’676 patent, or the other.
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`This is not a situation where multiple petitions attack the same claims,
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`leveraging the extra space to assert additional prior art references or permutations
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`of references. Nor is this a situation where multiple petitions allow more grounds
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`to be asserted in each petition. Here, two petitions were filed for procedural
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`reasons to facilitate consolidation and schedule alignment, where the aggregate
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`content of both petitions, if consolidated, would be comparable to a single petition
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`in normal circumstances. Between the two petitions, there is effectively a total of
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`two primary references and five grounds. Institution of both petitions would be
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`efficient and economical.
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`IPR2019-01350
`Multiple Petition Statement
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`V. Conclusion
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`Marvell has attempted to minimize any potential disruption or impact by
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`requesting, in its separately-filed motion to consolidate, that its IPRs be aligned in
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`schedule with the Microsoft IPRs. This would eliminate any argument by Patent
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`Owner that Marvell is intentionally creating a staggered schedule at the PTAB.
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`Moreover, Institution would not prejudice or burden Patent Owner Uniloc, who has
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`filed nearly 200 patent ligations since 2018, including at least 4 separate litigations
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`asserting the ’676 patent against various companies.
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`As explained above, institution of both petitions would be an efficient use of
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`the Board’s resources and require minimal additional work. Denial of the petitions
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`would prejudice Marvell by depriving it of a fair opportunity to challenge the ’676
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`patent due to the unilateral identification of Marvell by third-party petitions.
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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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`-5-
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`IPR2019-01350
`Multiple Petition Statement
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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 MULTIPLE PETITION STATEMENT 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 MULTIPLE
`PETITION STATEMENT 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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`Date: July 26, 2019
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`379 Lytton Ave.
`Palo Alto, CA 94301
`Tel: (650) 815-2673
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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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`-6-
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