`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`SIRIUS XM RADIO INC.,
`Petitioner,
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`v.
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`DRAGON INTELLECTUAL PROPERTY, LLC,
`Patent Owner.
`___________
`
`Case IPR2015-01735
`Patent 5,930,444
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`
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`Before KAREN I. SWEENEY, Trial Paralegal.
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`PATENT OWNER’S PARTIAL OPPOSITION TO
`PETITIONER’S MOTION FOR JOINDER
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`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`PROCEDURAL BACKGROUND ................................................................ 2
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`LEGAL STANDARD ON JOINDER ............................................................ 5
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`III. THE SIRIUS PETITION SEEKS TO ADD NEW EVIDENCE AND
`NEW ISSUES TO THE DISH IPR ................................................................ 6
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`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
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`CONCLUSION ............................................................................................. 13
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`IV.
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`V.
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`-i-
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`Patent Owner Dragon Intellectual Property, LLC (“Dragon” or “Patent
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`Owner”) submits this partial opposition to Petitioner Sirius XM Radio Inc.’s
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`(“Sirius” or “Petitioner”) motion to join the petition it filed on August 14, 2015 to
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`a currently pending proceeding initiated by DISH Network L.L.C. (“DISH”).
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`Patent Owner submits this opposition early because of the representation made by
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`Sirius that the motion for joinder is unopposed. That is not the case, and Patent
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`Owner respectfully submits this partial opposition. The petition Sirius filed on
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`August 14, 2015, more than eighteen months after it was served with a complaint
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`alleging infringement of the patent it now seeks to challenge, seeks to add new
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`evidence to the DISH proceeding that is not relevant to any ground of invalidity
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`that has been instituted by the Board. Sirius’s effort to join the proceeding in a
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`manner that introduces new evidence to the existing proceeding should be denied
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`on that ground alone.
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`Sirius’s effort to introduce new evidence and issues through a joinder motion
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`also should be rejected because more than a year has elapsed since Sirius was
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`served with a complaint for infringement of the patent at issue. Sirius did not bring
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`a challenge of its own within the one year statutory time period, and Sirius is time
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`barred from bringing new challenges to the patent on which it was sued more than
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`one year ago. The new evidence Sirius seeks to introduce also was available to
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`DISH at the time DISH filed its petition, and the only reason Sirius seeks to add it
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`now is to fix perceived problems with the evidence DISH did include in its
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`petition. Moreover, Sirius waited until the last possible moment to seek to inject
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`new issues into the DISH IPR, filing its joinder petition on the final day. To allow
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`Sirius to introduce new evidence now to an ongoing proceeding would be unfairly
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`prejudicial to Patent Owner, and would be highly disruptive to the schedule set by
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`the Board in the DISH IPR. There is no justification for joining Sirius’s petition
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`with the DISH petition in a way that includes new evidence.1
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`I.
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`PROCEDURAL BACKGROUND
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`As Sirius notes in its Petition, Patent Owner sued Sirius and DISH for
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`infringement of U.S. Patent No. 5,930,444 (“’444 patent”) in December 2013.
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`Dragon Intellectual Property, LLC v. Sirius XM Radio Inc., Civil Action No. 1:13-
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`cv-02067-RGA (D. Del), D.I. 1 (“Complaint for Patent Infringement”). Sirius was
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`served with the complaint on or about December 26, 2013. Id., D.I. 4 (“Summons
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`and Proof of Service”). Under 35 U.S.C. § 315(b), the time for Sirius to file a
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`petition for inter partes review of the ’444 Patent expired on or about December
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`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.
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`26, 2014. Sirius did not to file a petition for inter partes review within the one
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`year window.
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`DISH, however, did file a petition for inter partes review within the one year
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`statutory period. See DISH Network L.L.C. v. Dragon Intellectual Property, LLC,
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`IPR2015-00499 (the “DISH IPR”), Paper 1. DISH asserted ten proposed grounds
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`of invalidity. Id. Patent Owner filed its preliminary response to the DISH Petition
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`on April 23, 2015. Id., Paper 6. The Board instituted inter partes review of the
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`’444 Patent on two grounds asserted in the DISH Petition. Id., (“Institution
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`Decision”), Paper 7 at *20. As is particularly relevant here, the Board declined to
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`institute review on asserted grounds 1-7 on the basis that DISH had not established
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`that the asserted prior art, “Truog,” qualified as a printed publication. Id. at *10-
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`11; see also Apple Inc. v. DSS Technology Management, Inc., IPR2015-00369,
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`Paper 14 (citing with approval the Institution Decision).
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`As recorded in a stipulated Order in the District Court proceeding, while the
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`DISH Petition was pending, Sirius sought Patent Owner’s agreement to a stay of
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`the District Court proceedings. The stay Sirius requested was based on its
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`commitment to seek to join the DISH proceeding “[i]f and when the PTAB
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`institutes the DISH IPR.” Dragon Intellectual Property, LLC, v. Sirius XM Radio
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`Inc., Civil Action No. 1:13-cv-02067-RGA (D. Del), D.I. 102 at 2 (“Stipulated
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`Order to Stay Litigation Pending Inter Partes Review”) (attached to this
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`Opposition as Exhibit 2001). Sirius also agreed that if it is permitted joinder, that
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`it would “not seek to alter the schedule set by the PTAB for the DISH IPR.” Id.
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`Although it is time barred under 35 U.S.C. § 315(b) and 37 C.F.R. § 42.101
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`from pursuing an independent IPR proceeding, Sirius now seeks to join the DISH
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`IPR. Sirius’s petition is similar in many ways to the DISH petition, but it differs in
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`that it seeks to introduce new issues and evidence in the form of two new
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`declarations to the already instituted DISH IPR. The new evidence is intended to
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`address the deficiencies the Board identified in respect of the Truog reference
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`(“Truog”). In so doing, Sirius seeks to expand the scope of the DISH IPR through
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`the introduction of testimony of two new witnesses whose testimony would need to
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`be tested.
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`Sirius’s attempt to add new issues to the DISH IPR should be rejected.
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`Allowing new evidence into an instituted proceeding would be manifestly unfair to
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`Patent Owner. Sirius had the opportunity to file its own IPR and submit whatever
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`evidence it wanted before the statutory bar arose. Sirius chose not to. Aside from
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`the manifest unfairness to Patent Owner of the introduction of new evidence at this
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`late stage, the Board’s rules and authorities do not permit Sirius’s proposed
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`addition of new issues to the DISH IPR. If Sirius is permitted to join the DISH
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`IPR, its effort to introduce new issues and evidence should be rejected.
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`II. LEGAL STANDARD ON JOINDER
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`The Board has discretion to join together a later filed petition for inter partes
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`review with an inter partes review that has already been instituted. 35 U.S.C. §
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`315(c). Section 315(c) provides:
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`If the Director institutes an inter partes review, the
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`Director, in his or her discretion, may join as a party to
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`that inter partes review any person who properly files a
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`petition under section 311 that the Director, after
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`receiving a preliminary response under section 313 or the
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`expiration of the time for filing such a response,
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`determines warrants the institution of an inter partes
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`review under section 314.
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`Joinder is decided on a “case-by-case basis, taking into account the particular facts
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`of each case, substantive and procedural issues, and other considerations.” Shaw
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`Industries Group, Inc. v. Automated Creel Systems, Inc., IPR2013-00584, Paper 20
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`at *3. Joinder may be authorized when warranted, but the decision to grant joinder
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`is discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b). “When exercising
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`that discretion, the Board is mindful that patent trial regulations, including the rules
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`for joinder, must be construed to secure the just, speedy, and inexpensive
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`resolution of every proceeding.” Atoptech Inc. v. Synopsys Inc., IPR2015-00760,
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`Paper 14 at *6; see 35 U.S.C. § 316(b); 37 C.F.R. § 42.1(b).
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`In considering joinder requests, the Board has manifested “the policy
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`preference for joining a party that does not present new issues that might
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`complicate or delay an existing proceeding.” Dell Inc. v. Network-1 Security
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`Solutions, Inc., IPR 2013-00385, Paper 17 at *10. As the moving party, the
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`Petitioner has the burden of proof in establishing that joinder is appropriate under
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`37 C.F.R. § 42.20(d).
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`III. THE SIRIUS PETITION SEEKS TO ADD NEW EVIDENCE AND
`NEW ISSUES TO THE DISH IPR
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`In the DISH IPR, the Board declined to institute inter partes review on the
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`asserted grounds that relied on Truog. IPR2015-00499, Paper 7 at *20. The Board
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`determined that DISH did not establish that Truog qualifies as a printed
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`publication. Id. at *11. Thus, the new evidence that Sirius seeks to add to the
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`DISH IPR is not relevant to any ground on which review has been instituted.2
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`In its motion for joinder, Sirius seeks to fix the deficiencies of the DISH
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`Petition by adding new evidence regarding the Truog thesis. Sirius has introduced
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`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).
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`-6-
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`two new declarants, Joni L. Cassidy and Marilyn McSweeney, and additional
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`evidence in the form of a Declaration of Joni L. Cassidy (“Cassidy Declaration”),
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`Ex. 1025, and a Declaration of Marilyn McSweeney (“McSweeney Declaration”),
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`Ex. 1026.
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`The additional evidence provided by Petitioner regarding Truog will
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`necessarily alter the scope of the proceedings. Joinder requests have been denied
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`in similar circumstances. For example, the Board has denied joinder when a
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`second petition that was similar to the first sought to introduce new evidence in the
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`form of a declaration to the previously existing proceeding. ZTE Corporation v.
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`Adaptix, Inc., IPR2015-01184, Paper 10 at *4. The Board agreed with the patent
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`owner that the new issues raised by reliance on the different declarant would
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`adversely impact the IPR. Id. at *5. The Board has on numerous occasions
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`expressed the policy against the joining of new issues that would complicate or
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`delay an existing proceeding. Sony Corporation of America v. Network-1 Security
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`Solutions, Inc., IPR2013-00386, Paper 16 at *7 (denying joinder when the petition
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`raised new substantive issues and included a new declaration that would likely
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`increase the amount of discovery required); Unified Patents, Inc. v. Personalized
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`Media Communications, LLC, IPR2015-00521, Paper 14 at *5 (denying joinder
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`when the potential for additional discovery presented a new substantive issue
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`beyond what was already before the Board in the existing IPR); but see Nintendo
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`of America, Inc. v. Babbage Holdings, LLC, IPR2015-00568, Paper 12 at *3
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`(allowing joinder because the petition did not introduce new issues or evidence and
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`solely relied on the exact same expert declaration considered by the board in
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`instituting the existing IPR). Even if the new issue is an evidentiary one, such as
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`the sufficiency of evidence required to prove qualification as a printed publication,
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`the Board has found that joinder would not be warranted in such a circumstance.
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`See Zhongshan Broad Ocean Motor Co., Ltd. v. Nidec Motor Corporation,
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`IPR2015-00762, Paper 12 at *13-15 (denying joinder when the petition added an
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`attesting affidavit for a reference of which institution was denied based on the
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`insufficiency of evidence).
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`Setting aside questions about the sufficiency or value of the new evidence
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`Sirius seeks to introduce, nothing in the Sirius motion suggests that the evidence
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`was available to DISH at the time DISH filed its IPR petition, and it appears that it
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`was. DISH made the decision not to include the evidence Sirius now seeks to
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`introduce in the DISH IPR. As the Board has determined in other analogous
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`circumstances, joinder of new issues (or petitions raising new issues) where, like
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`here, a second petition includes is “simply presenting arguments that reasonably
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`could have been made in the [existing IPR], but were not.” Atoptech, Inc. v.
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`Synopsys, Inc., IPR2015-00760, Paper 14 at *7-9 (“[W]e are mindful that
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`permitting second chances without constraint undermines judicial efficiency by
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`expending the Board’s limited resources on issues that were not presented
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`adequately the first time around.”).
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`Sirius claims that its proposal to supplement the DISH IPR with new
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`evidence to support the prior art status of Truog presents no new grounds of
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`unpatentability. This is obviously not the case. Patent Owner responded to the
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`evidence DISH presented, and the Board has instituted a proceeding on the DISH
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`petition based on the evidence DISH presented. If the Board were to allow the
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`new evidence from Sirius, it would be allowing DISH and Sirius to rely on new
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`evidence intended only to address the problems the Board identified in its
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`Institution Decision. These are grounds different from those the Board instituted.
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`Setting that aside, the Board should reject such an effort at a second bite at the
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`apple, as it has in other circumstances.
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`The new issues presented by the new Sirius evidence would require a
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`significant expansion of the DISH proceeding, which is well underway and moving
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`toward submission of the Patent Owner response on September 17. Permitting the
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`introduction of new evidence now would require substantial revisions to the case
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`schedule to enable Patent Owner to address the new evidence, possibly through a
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`new preliminary response or similar procedure that would put Patent Owner in a
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`similar position as it would have been if the evidence had been brought with the
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`DISH petition.
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`Petitioner downplays the additional evidence as “limited” and equates the
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`new issues it presents with the substance of the instituted DISH IPR. The
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`additional evidence is not offered in connection with any ground on which review
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`has been instituted, but is intended to addresses seven out of the eight grounds on
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`which the Board declined to institute.3 Furthermore, these grounds have not been
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`argued on the merits or been considered by the Board in the DISH IPR because of
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`the dispositive finding that Truog does not qualify as a printed publication.
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`The Sirius Petition is not “virtually identical” to the DISH IPR because the
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`two additional declarations relied upon by Sirius present new issues. The Board
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`should deny joinder as to the new issues raised by the new evidence because this
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`type of evidence was available and reasonably could have been presented when the
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`DISH IPR was filed, and because it is counter to the policy preference
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`demonstrated by the Board of denying joinder when new issues have the potential
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`to alter the scope of the proceedings.
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`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.
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`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.
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`
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`The schedule for the DISH IPR as instituted has already been determined in
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`the Board’s Scheduling Order. IPR2015-00499, Paper 8. The practical effects of
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`granting Petitioner’s motion for joinder and adding new issues to the DISH IPR
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`would include causing significant changes to the schedule of the DISH IPR. Sirius
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`has stipulated that it “will not seek to alter the schedule set by the PTAB for the
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`DISH IPR.” Ex. 2001 at 2. Filing its petition and seeking to introduce new
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`evidence into an existing proceeding threatens an outcome contrary to that to
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`which Sirius agreed in a stipulated order entered by the District Court. Id.
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`Petitioner again downplays the impact of the new evidence and issues it presents.
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`Testing of the evidentiary significance of the new Sirius evidence may involve
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`significant additional discovery, such as new depositions of Sirius’s new fact
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`witnesses, a new preliminary response, and the Board’s consideration of the new
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`evidence in the context of the other evidence DISH presented. This will inevitably
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`and unnecessarily delay the DISH IPR.
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`The Sirius request to join new issues and evidence with the DISH
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`proceeding threatens to disrupt the schedule of the proceeding that the Board
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`established, and would require an extension to the case schedule that would not
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`allow the Board to fulfill its statutory mandate of completing the DISH proceeding
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`within one year after institution. 35 U.S.C. § 316(a)(11). If Petitioner’s motion for
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`joinder is granted inclusive of the new evidence and issues, the established
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`schedule set by the Board for the IPR is likely to be greatly impacted. IPR2015-
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`00499, Paper 8. Under the circumstances presented by Sirius’s request to add
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`evidence to the DISH proceeding, Sirius cannot establish the good cause necessary
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`to extend the proceeding beyond one year from institution.
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`Finally, the proposal by Sirius to introduce new evidence and issues into the
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`DISH proceeding risks substantial unfair prejudice to Patent Owner. Patent Owner
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`expended substantial resources in addressing the evidence DISH presented with its
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`Petition. Patent Owner’s preliminary response was served on April 23, 2015, and
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`since the Institution Decision, Patent Owner has been preparing its Patent Owner
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`Response, which will be filed on or before September 17. Requiring Patent Owner
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`to shift gears now and to address new issues and evidence is manifestly unfair.
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`This is particularly true in this case, where Sirius decided to adopt a “wait and see”
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`approach that relied on others to file petitions challenging the ’444 Patent, rather
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`than filing its own petition during the one year statutory period, and where the
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`evidence Sirius seeks to introduce at this late stage was available at the time the
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`DISH petition was filed.
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`V. CONCLUSION
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`For the foregoing reasons, Patent Owner respectfully requests that the
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`motion for joinder be denied-in-part. If Sirius’s motion to join the DISH
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`proceeding is granted, the Board should not join the new issues and evidence from
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`the Sirius petition with the DISH IPR.
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`Dated: August 26, 2015
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`By:/s/Jason S. Angell
`Jason S. Angell
`Reg. No. 51,408
`Counsel for Patent Owner
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`CERTIFICATE OF SERVICE
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`It is certified that a copy of the foregoing and Exhibit 2001 has been served
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`on Petitioner via electronic mail transmission addressed to the persons at the
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`addresses below:
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`Jonathan S. Caplan
`Mark A. Baghdassarian
`James Hannah
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`jcaplan@kramerlevin.com
`mbaghdassarian@kramerlevin.com
`jhannah@kramerlevin.com
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`Date: August 26, 2015
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`
`
`/s/Jason S. Angell
`Jason S. Angell
`Reg. No. 51,408
`Counsel for Patent Owner
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`-14-