UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`SIRIUS XM RADIO INC.,
`Petitioner,
`
`v.
`
`DRAGON INTELLECTUAL PROPERTY, LLC,
`Patent Owner.
`___________
`
`Case IPR2015-01735
`Patent 5,930,444
`
`
`
`
`
`
`
`Before KAREN I. SWEENEY, Trial Paralegal.
`
`PATENT OWNER’S PARTIAL OPPOSITION TO
`PETITIONER’S MOTION FOR JOINDER
`
`
`
`
`
`
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`SIRIUS XM RADIO INC.,
`Petitioner,
`
`v.
`
`DRAGON INTELLECTUAL PROPERTY, LLC,
`Patent Owner.
`___________
`
`Case IPR2015-01735
`Patent 5,930,444
`
`
`
`
`
`
`
`Before KAREN I. SWEENEY, Trial Paralegal.
`
`PATENT OWNER’S PARTIAL OPPOSITION TO
`PETITIONER’S MOTION FOR JOINDER
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`PROCEDURAL BACKGROUND ................................................................ 2
`
`LEGAL STANDARD ON JOINDER ............................................................ 5
`
`III. THE SIRIUS PETITION SEEKS TO ADD NEW EVIDENCE AND
`NEW ISSUES TO THE DISH IPR ................................................................ 6
`
`JOINDER OF THE SIRIUS PETITION INCLUSIVE OF THE NEW
`EVIDENCE AND NEW ISSUES WILL NECESSARILY REQUIRE
`SIGNIFICANT CHANGES TO THE SCHEDULE FOR THE DISH
`IPR ................................................................................................................ 11
`
`CONCLUSION ............................................................................................. 13
`
`IV.
`
`V.
`
`
`-i-
`
`
`
`
`
`Patent Owner Dragon Intellectual Property, LLC (“Dragon” or “Patent
`
`Owner”) submits this partial opposition to Petitioner Sirius XM Radio Inc.’s
`
`(“Sirius” or “Petitioner”) motion to join the petition it filed on August 14, 2015 to
`
`a currently pending proceeding initiated by DISH Network L.L.C. (“DISH”).
`
`Patent Owner submits this opposition early because of the representation made by
`
`Sirius that the motion for joinder is unopposed. That is not the case, and Patent
`
`Owner respectfully submits this partial opposition. The petition Sirius filed on
`
`August 14, 2015, more than eighteen months after it was served with a complaint
`
`alleging infringement of the patent it now seeks to challenge, seeks to add new
`
`evidence to the DISH proceeding that is not relevant to any ground of invalidity
`
`that has been instituted by the Board. Sirius’s effort to join the proceeding in a
`
`manner that introduces new evidence to the existing proceeding should be denied
`
`on that ground alone.
`
`Sirius’s effort to introduce new evidence and issues through a joinder motion
`
`also should be rejected because more than a year has elapsed since Sirius was
`
`served with a complaint for infringement of the patent at issue. Sirius did not bring
`
`a challenge of its own within the one year statutory time period, and Sirius is time
`
`barred from bringing new challenges to the patent on which it was sued more than
`
`one year ago. The new evidence Sirius seeks to introduce also was available to
`
`DISH at the time DISH filed its petition, and the only reason Sirius seeks to add it
`
`-1-
`
`
`
`
`
`now is to fix perceived problems with the evidence DISH did include in its
`
`petition. Moreover, Sirius waited until the last possible moment to seek to inject
`
`new issues into the DISH IPR, filing its joinder petition on the final day. To allow
`
`Sirius to introduce new evidence now to an ongoing proceeding would be unfairly
`
`prejudicial to Patent Owner, and would be highly disruptive to the schedule set by
`
`the Board in the DISH IPR. There is no justification for joining Sirius’s petition
`
`with the DISH petition in a way that includes new evidence.1
`
`I.
`
`PROCEDURAL BACKGROUND
`
`As Sirius notes in its Petition, Patent Owner sued Sirius and DISH for
`
`infringement of U.S. Patent No. 5,930,444 (“’444 patent”) in December 2013.
`
`Dragon Intellectual Property, LLC v. Sirius XM Radio Inc., Civil Action No. 1:13-
`
`cv-02067-RGA (D. Del), D.I. 1 (“Complaint for Patent Infringement”). Sirius was
`
`served with the complaint on or about December 26, 2013. Id., D.I. 4 (“Summons
`
`and Proof of Service”). Under 35 U.S.C. § 315(b), the time for Sirius to file a
`
`petition for inter partes review of the ’444 Patent expired on or about December
`
`
`1 Patent Owner is not aware of instances in which a motion to join has been
`“granted-in-part and denied-in-part.” Patent Owner does not object to Sirius
`joining the DISH proceeding to the extent that Sirius’s petition is based on the
`record existing in the DISH petition. If Sirius’s motion to join is only amenable to
`complete granting or denial (rather than granting or denial-in-part), the joinder
`request should be denied.
`
`-2-
`
`
`
`
`
`26, 2014. Sirius did not to file a petition for inter partes review within the one
`
`year window.
`
`DISH, however, did file a petition for inter partes review within the one year
`
`statutory period. See DISH Network L.L.C. v. Dragon Intellectual Property, LLC,
`
`IPR2015-00499 (the “DISH IPR”), Paper 1. DISH asserted ten proposed grounds
`
`of invalidity. Id. Patent Owner filed its preliminary response to the DISH Petition
`
`on April 23, 2015. Id., Paper 6. The Board instituted inter partes review of the
`
`’444 Patent on two grounds asserted in the DISH Petition. Id., (“Institution
`
`Decision”), Paper 7 at *20. As is particularly relevant here, the Board declined to
`
`institute review on asserted grounds 1-7 on the basis that DISH had not established
`
`that the asserted prior art, “Truog,” qualified as a printed publication. Id. at *10-
`
`11; see also Apple Inc. v. DSS Technology Management, Inc., IPR2015-00369,
`
`Paper 14 (citing with approval the Institution Decision).
`
`As recorded in a stipulated Order in the District Court proceeding, while the
`
`DISH Petition was pending, Sirius sought Patent Owner’s agreement to a stay of
`
`the District Court proceedings. The stay Sirius requested was based on its
`
`commitment to seek to join the DISH proceeding “[i]f and when the PTAB
`
`institutes the DISH IPR.” Dragon Intellectual Property, LLC, v. Sirius XM Radio
`
`Inc., Civil Action No. 1:13-cv-02067-RGA (D. Del), D.I. 102 at 2 (“Stipulated
`
`Order to Stay Litigation Pending Inter Partes Review”) (attached to this
`
`-3-
`
`
`
`
`
`Opposition as Exhibit 2001). Sirius also agreed that if it is permitted joinder, that
`
`it would “not seek to alter the schedule set by the PTAB for the DISH IPR.” Id.
`
`Although it is time barred under 35 U.S.C. § 315(b) and 37 C.F.R. § 42.101
`
`from pursuing an independent IPR proceeding, Sirius now seeks to join the DISH
`
`IPR. Sirius’s petition is similar in many ways to the DISH petition, but it differs in
`
`that it seeks to introduce new issues and evidence in the form of two new
`
`declarations to the already instituted DISH IPR. The new evidence is intended to
`
`address the deficiencies the Board identified in respect of the Truog reference
`
`(“Truog”). In so doing, Sirius seeks to expand the scope of the DISH IPR through
`
`the introduction of testimony of two new witnesses whose testimony would need to
`
`be tested.
`
`Sirius’s attempt to add new issues to the DISH IPR should be rejected.
`
`Allowing new evidence into an instituted proceeding would be manifestly unfair to
`
`Patent Owner. Sirius had the opportunity to file its own IPR and submit whatever
`
`evidence it wanted before the statutory bar arose. Sirius chose not to. Aside from
`
`the manifest unfairness to Patent Owner of the introduction of new evidence at this
`
`late stage, the Board’s rules and authorities do not permit Sirius’s proposed
`
`addition of new issues to the DISH IPR. If Sirius is permitted to join the DISH
`
`IPR, its effort to introduce new issues and evidence should be rejected.
`
`-4-
`
`
`
`
`
`II. LEGAL STANDARD ON JOINDER
`
`The Board has discretion to join together a later filed petition for inter partes
`
`review with an inter partes review that has already been instituted. 35 U.S.C. §
`
`315(c). Section 315(c) provides:
`
`If 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 that the Director, after
`
`receiving a preliminary response under section 313 or the
`
`expiration of the time for filing such a response,
`
`determines warrants the institution of an inter partes
`
`review under section 314.
`
`Joinder is decided on a “case-by-case basis, taking into account the particular facts
`
`of each case, substantive and procedural issues, and other considerations.” Shaw
`
`Industries Group, Inc. v. Automated Creel Systems, Inc., IPR2013-00584, Paper 20
`
`at *3. Joinder may be authorized when warranted, but the decision to grant joinder
`
`is discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b). “When exercising
`
`that discretion, the Board is mindful that patent trial regulations, including the rules
`
`for joinder, must be construed to secure the just, speedy, and inexpensive
`
`-5-
`
`
`
`
`
`resolution of every proceeding.” Atoptech Inc. v. Synopsys Inc., IPR2015-00760,
`
`Paper 14 at *6; see 35 U.S.C. § 316(b); 37 C.F.R. § 42.1(b).
`
`In considering joinder requests, the Board has manifested “the policy
`
`preference for joining a party that does not present new issues that might
`
`complicate or delay an existing proceeding.” Dell Inc. v. Network-1 Security
`
`Solutions, Inc., IPR 2013-00385, Paper 17 at *10. As the moving party, the
`
`Petitioner has the burden of proof in establishing that joinder is appropriate under
`
`37 C.F.R. § 42.20(d).
`
`III. THE SIRIUS PETITION SEEKS TO ADD NEW EVIDENCE AND
`NEW ISSUES TO THE DISH IPR
`
`In the DISH IPR, the Board declined to institute inter partes review on the
`
`asserted grounds that relied on Truog. IPR2015-00499, Paper 7 at *20. The Board
`
`determined that DISH did not establish that Truog qualifies as a printed
`
`publication. Id. at *11. Thus, the new evidence that Sirius seeks to add to the
`
`DISH IPR is not relevant to any ground on which review has been instituted.2
`
`In its motion for joinder, Sirius seeks to fix the deficiencies of the DISH
`
`Petition by adding new evidence regarding the Truog thesis. Sirius has introduced
`
`
`2 On July 30, 2015, DISH filed a Request for Rehearing of the determination that
`Truog does not qualify as a printed publication. IPR2015-00499, Paper 9; but see
`Apple Inc. v. DSS Technology Management, Inc., IPR2015-00369, Paper 14 (citing
`to and discussing the DISH IPR in denying request for rehearing where petitioner
`had not submitted sufficient evidence to establish that a thesis on file with
`Massachusetts Institute of Technology qualified as a printed publication).
`
`-6-
`
`
`
`
`
`two new declarants, Joni L. Cassidy and Marilyn McSweeney, and additional
`
`evidence in the form of a Declaration of Joni L. Cassidy (“Cassidy Declaration”),
`
`Ex. 1025, and a Declaration of Marilyn McSweeney (“McSweeney Declaration”),
`
`Ex. 1026.
`
`The additional evidence provided by Petitioner regarding Truog will
`
`necessarily alter the scope of the proceedings. Joinder requests have been denied
`
`in similar circumstances. For example, the Board has denied joinder when a
`
`second petition that was similar to the first sought to introduce new evidence in the
`
`form of a declaration to the previously existing proceeding. ZTE Corporation v.
`
`Adaptix, Inc., IPR2015-01184, Paper 10 at *4. The Board agreed with the patent
`
`owner that the new issues raised by reliance on the different declarant would
`
`adversely impact the IPR. Id. at *5. The Board has on numerous occasions
`
`expressed the policy against the joining of new issues that would complicate or
`
`delay an existing proceeding. Sony Corporation of America v. Network-1 Security
`
`Solutions, Inc., IPR2013-00386, Paper 16 at *7 (denying joinder when the petition
`
`raised new substantive issues and included a new declaration that would likely
`
`increase the amount of discovery required); Unified Patents, Inc. v. Personalized
`
`Media Communications, LLC, IPR2015-00521, Paper 14 at *5 (denying joinder
`
`when the potential for additional discovery presented a new substantive issue
`
`beyond what was already before the Board in the existing IPR); but see Nintendo
`
`-7-
`
`
`
`
`
`of America, Inc. v. Babbage Holdings, LLC, IPR2015-00568, Paper 12 at *3
`
`(allowing joinder because the petition did not introduce new issues or evidence and
`
`solely relied on the exact same expert declaration considered by the board in
`
`instituting the existing IPR). Even if the new issue is an evidentiary one, such as
`
`the sufficiency of evidence required to prove qualification as a printed publication,
`
`the Board has found that joinder would not be warranted in such a circumstance.
`
`See Zhongshan Broad Ocean Motor Co., Ltd. v. Nidec Motor Corporation,
`
`IPR2015-00762, Paper 12 at *13-15 (denying joinder when the petition added an
`
`attesting affidavit for a reference of which institution was denied based on the
`
`insufficiency of evidence).
`
`Setting aside questions about the sufficiency or value of the new evidence
`
`Sirius seeks to introduce, nothing in the Sirius motion suggests that the evidence
`
`was available to DISH at the time DISH filed its IPR petition, and it appears that it
`
`was. DISH made the decision not to include the evidence Sirius now seeks to
`
`introduce in the DISH IPR. As the Board has determined in other analogous
`
`circumstances, joinder of new issues (or petitions raising new issues) where, like
`
`here, a second petition includes is “simply presenting arguments that reasonably
`
`could have been made in the [existing IPR], but were not.” Atoptech, Inc. v.
`
`Synopsys, Inc., IPR2015-00760, Paper 14 at *7-9 (“[W]e are mindful that
`
`permitting second chances without constraint undermines judicial efficiency by
`
`-8-
`
`
`
`
`
`expending the Board’s limited resources on issues that were not presented
`
`adequately the first time around.”).
`
`Sirius claims that its proposal to supplement the DISH IPR with new
`
`evidence to support the prior art status of Truog presents no new grounds of
`
`unpatentability. This is obviously not the case. Patent Owner responded to the
`
`evidence DISH presented, and the Board has instituted a proceeding on the DISH
`
`petition based on the evidence DISH presented. If the Board were to allow the
`
`new evidence from Sirius, it would be allowing DISH and Sirius to rely on new
`
`evidence intended only to address the problems the Board identified in its
`
`Institution Decision. These are grounds different from those the Board instituted.
`
`Setting that aside, the Board should reject such an effort at a second bite at the
`
`apple, as it has in other circumstances.
`
`The new issues presented by the new Sirius evidence would require a
`
`significant expansion of the DISH proceeding, which is well underway and moving
`
`toward submission of the Patent Owner response on September 17. Permitting the
`
`introduction of new evidence now would require substantial revisions to the case
`
`schedule to enable Patent Owner to address the new evidence, possibly through a
`
`new preliminary response or similar procedure that would put Patent Owner in a
`
`similar position as it would have been if the evidence had been brought with the
`
`DISH petition.
`
`-9-
`
`
`
`
`
`Petitioner downplays the additional evidence as “limited” and equates the
`
`new issues it presents with the substance of the instituted DISH IPR. The
`
`additional evidence is not offered in connection with any ground on which review
`
`has been instituted, but is intended to addresses seven out of the eight grounds on
`
`which the Board declined to institute.3 Furthermore, these grounds have not been
`
`argued on the merits or been considered by the Board in the DISH IPR because of
`
`the dispositive finding that Truog does not qualify as a printed publication.
`
`The Sirius Petition is not “virtually identical” to the DISH IPR because the
`
`two additional declarations relied upon by Sirius present new issues. The Board
`
`should deny joinder as to the new issues raised by the new evidence because this
`
`type of evidence was available and reasonably could have been presented when the
`
`DISH IPR was filed, and because it is counter to the policy preference
`
`demonstrated by the Board of denying joinder when new issues have the potential
`
`to alter the scope of the proceedings.
`
`
`3 Even if the DISH rehearing request is granted such that the invalidity grounds
`relying on Truog are a part of the DISH IPR, the DISH IPR should proceed on the
`evidence DISH presented with its petition, rather than as supplemented by Sirius.
`
`-10-
`
`
`
`
`
`IV. JOINDER OF THE SIRIUS PETITION INCLUSIVE OF THE NEW
`EVIDENCE AND NEW ISSUES WILL NECESSARILY REQUIRE
`SIGNIFICANT CHANGES TO THE SCHEDULE FOR THE DISH
`IPR.
`
`
`
`The schedule for the DISH IPR as instituted has already been determined in
`
`the Board’s Scheduling Order. IPR2015-00499, Paper 8. The practical effects of
`
`granting Petitioner’s motion for joinder and adding new issues to the DISH IPR
`
`would include causing significant changes to the schedule of the DISH IPR. Sirius
`
`has stipulated that it “will not seek to alter the schedule set by the PTAB for the
`
`DISH IPR.” Ex. 2001 at 2. Filing its petition and seeking to introduce new
`
`evidence into an existing proceeding threatens an outcome contrary to that to
`
`which Sirius agreed in a stipulated order entered by the District Court. Id.
`
`Petitioner again downplays the impact of the new evidence and issues it presents.
`
`Testing of the evidentiary significance of the new Sirius evidence may involve
`
`significant additional discovery, such as new depositions of Sirius’s new fact
`
`witnesses, a new preliminary response, and the Board’s consideration of the new
`
`evidence in the context of the other evidence DISH presented. This will inevitably
`
`and unnecessarily delay the DISH IPR.
`
`The Sirius request to join new issues and evidence with the DISH
`
`proceeding threatens to disrupt the schedule of the proceeding that the Board
`
`established, and would require an extension to the case schedule that would not
`
`-11-
`
`
`
`
`
`allow the Board to fulfill its statutory mandate of completing the DISH proceeding
`
`within one year after institution. 35 U.S.C. § 316(a)(11). If Petitioner’s motion for
`
`joinder is granted inclusive of the new evidence and issues, the established
`
`schedule set by the Board for the IPR is likely to be greatly impacted. IPR2015-
`
`00499, Paper 8. Under the circumstances presented by Sirius’s request to add
`
`evidence to the DISH proceeding, Sirius cannot establish the good cause necessary
`
`to extend the proceeding beyond one year from institution.
`
`Finally, the proposal by Sirius to introduce new evidence and issues into the
`
`DISH proceeding risks substantial unfair prejudice to Patent Owner. Patent Owner
`
`expended substantial resources in addressing the evidence DISH presented with its
`
`Petition. Patent Owner’s preliminary response was served on April 23, 2015, and
`
`since the Institution Decision, Patent Owner has been preparing its Patent Owner
`
`Response, which will be filed on or before September 17. Requiring Patent Owner
`
`to shift gears now and to address new issues and evidence is manifestly unfair.
`
`This is particularly true in this case, where Sirius decided to adopt a “wait and see”
`
`approach that relied on others to file petitions challenging the ’444 Patent, rather
`
`than filing its own petition during the one year statutory period, and where the
`
`evidence Sirius seeks to introduce at this late stage was available at the time the
`
`DISH petition was filed.
`
`-12-
`
`
`
`
`
`V. CONCLUSION
`
`
`
`For the foregoing reasons, Patent Owner respectfully requests that the
`
`motion for joinder be denied-in-part. If Sirius’s motion to join the DISH
`
`proceeding is granted, the Board should not join the new issues and evidence from
`
`the Sirius petition with the DISH IPR.
`
`
`
`Dated: August 26, 2015
`
`
`
`
`
`By:/s/Jason S. Angell
`Jason S. Angell
`Reg. No. 51,408
`Counsel for Patent Owner
`
`
`
`-13-
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`It is certified that a copy of the foregoing and Exhibit 2001 has been served
`
`on Petitioner via electronic mail transmission addressed to the persons at the
`
`addresses below:
`
`Jonathan S. Caplan
`Mark A. Baghdassarian
`James Hannah
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`jcaplan@kramerlevin.com
`mbaghdassarian@kramerlevin.com
`jhannah@kramerlevin.com
`
`Date: August 26, 2015
`
`
`
`/s/Jason S. Angell
`Jason S. Angell
`Reg. No. 51,408
`Counsel for Patent Owner
`
`
`
`-14-
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