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
`U.S. PATENT NO. 5,930,444
`________________________________________
`
`
`REPLY IN SUPPORT OF MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c),
`37 C.F.R. §§ 42.22 AND 42.122(b) TO RELATED
`INTER PARTES REVIEW IPR2015-00499
`
`
`
`
`
`
`
`
`
`
`
`________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________________________
`
`SIRIUS XM RADIO INC.,
`
`Petitioner,
`
`v.
`
`DRAGON INTELLECTUAL PROPERTY, LLC,
`
`Patent Owner.
`
`________________________________________
`
`Case IPR2015-01735
`U.S. PATENT NO. 5,930,444
`________________________________________
`
`
`REPLY IN SUPPORT OF MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c),
`37 C.F.R. §§ 42.22 AND 42.122(b) TO RELATED
`INTER PARTES REVIEW IPR2015-00499
`
`
`
`
`
`
`
`
`
`
`
`Reply in Support of Motion for Joinder to Related Inter Partes Review
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`Table of Contents
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`Page
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`I. SIRIUS XM’S MOTION FOR JOINDER SEEKS TO JOIN THE DISH
`IPR ON THE SAME GROUNDS INSTITUTED BY THE BOARD .......... 1
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`II. THE BOARD ROUTINELY GRANTS JOINDER REQUESTS WHEN
`ADDITIONAL EVIDENCE IS PRESENTED ............................................... 2
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`III. JOINDER WILL NOT ALTER THE SCHEDULE OF THE DISH IPR ... 4
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`IV. THE SIRIUS XM IPR IS TIMELY ................................................................ 5
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`V. CONCLUSION .................................................................................................. 5
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`I.
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`Reply in Support of Motion for Joinder to Related Inter Partes Review
`
`SIRIUS XM’S MOTION FOR JOINDER SEEKS TO JOIN THE DISH
`IPR ON THE SAME GROUNDS INSTITUTED BY THE BOARD
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`Dragon does not oppose Sirius XM’s request for joinder based on what the
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`Board has already instituted with respect to the DISH IPR. Instead, Dragon’s
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`opposition misconstrues Sirius XM’s motion and the Sirius XM IPR by claiming
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`that Sirius XM seeks to expand the scope of the DISH IPR by purportedly raising
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`new issues and grounds of unpatentability. That is not true.
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`More particularly, the scope of the DISH IPR is currently subject to DISH’s
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`Request for Rehearing Pursuant to 37 C.F.R. § 42.71(d) (the “Rehearing
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`Request”). Notably, and a point entirely ignored by Dragon’s opposition, Sirius
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`XM has represented to the Board that “it will proceed on the grounds presented in
`
`the DISH Rehearing Request to the extent the Board institutes them. In the event
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`the Board denies in whole or in part the DISH Rehearing Request, Sirius XM
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`agrees to be bound by such decision and will withdraw any grounds the Board does
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`not institute.” IPR2015-01735, Paper 3 at 8, n.2 (“Sirius XM’s Motion”).
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`Accordingly, if the Board institutes the DISH IPR on the additional grounds
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`identified in the Rehearing Request (such as with respect to the Truog reference),
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`then Sirius XM seeks to join those additional grounds and include the two
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`declarations that it has submitted with the Sirius XM IPR.1 If the Board denies the
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`1 The two declarations Sirius XM offers provide evidence to address the Board’s
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`
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`1
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`
`
`Reply in Support of Motion for Joinder to Related Inter Partes Review
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`Rehearing Request, then Sirius XM seeks to join (and Dragon does not oppose) the
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`more limited scope of the DISH IPR, which make the two declarations moot.
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`Either way, and contrary to Dragon’s contentions, Sirius XM seeks invalidation on
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`the same grounds presented in the DISH IPR and Sirius XM has raised no new
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`issues or grounds for unpatentability.
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`Moreover, Dragon’s repeated refrain that “the new evidence that Sirius seeks
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`to add to the DISH IPR is not relevant to any ground on which review had been
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`instituted” misunderstands Sirius XM’s joinder request and associated IPR. As
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`explained above, Sirius XM has limited its request to join the DISH IPR based on
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`the current grounds the Board has instituted, and any additional grounds that may
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`be instituted in response to the Rehearing Request.
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`II. THE BOARD ROUTINELY GRANTS JOINDER REQUESTS WHEN
`ADDITIONAL EVIDENCE IS PRESENTED
`
`
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`The Board routinely grants motions for joinder where the moving party
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`intends to present limited additional evidence. For example, in T-Mobile USA v.
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`Mobile Telecomm. Techs., LLC, the Board granted joinder where the petitioner
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`introduced new evidence – including a new expert declaration – to support the
`
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`concerns and make it clear and unequivocal that Truog was a printed publication
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`“‘sufficiently accessible to the public interested in the art.’” DISH IPR, Paper 7 at
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`10-11 (citations omitted).
`
`
`
`2
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`
`
`Reply in Support of Motion for Joinder to Related Inter Partes Review
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`prior art and invalidity theories presented in the instituted petition. See IPR2015-
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`00015, Paper 13 (April 8, 2015); see also id., Paper 12 at 3-4 (March 9, 2015)
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`(discussing additional declaration). The Board noted that “to the extent there are
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`differences in Petitioner’s evidence and arguments regarding . . . the substantive
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`application of the prior art to the claims, resolving these differences in a single
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`proceeding is the most efficient course of action.” Id., Paper 13 at 5 (emphasis
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`added); see also Samsung Electronics Co. v. Virginia Innovation Sciences, Inc.,
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`IPR2014-00557, Paper 10 at 18 (June 13, 2014) (granting motion for joinder for an
`
`IPR challenging new, but related claims, with a “substantially overlapping”
`
`declaration more than a year after the filing of the complaint in the underlying
`
`action); Ariosa Diagnostics v. Isis Innovation, Ltd., IPR2013-00250, Paper 25 at 5
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`(September 3, 2013) (granting motion for joinder despite differences in the prior
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`art presented where there was “an overlap in the cited prior art”).
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`Dragon’s opposition, however, relies on inapposite authority. In several of
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`the cases Dragon relies upon, the party seeking joinder raised entirely new
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`arguments (e.g., new prior art, different combinations of prior art, or unrelated
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`issues of standing) that would have required extensive modifications to the IPR
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`schedule. For example, in Sony Corp. of America v. Network-1 Security Solutions,
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`Inc., a motion for joinder was denied where the moving party challenged a new
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`claim, asserted several new grounds of unpatentability, and introduced five new
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`
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`3
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`
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`Reply in Support of Motion for Joinder to Related Inter Partes Review
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`prior art references. IPR2013-00386, Paper 16 at 7 (July 29, 2013); see also ZTE
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`Corp., et al v. Adaptix, Inc., IPR2015-01184, Paper 10 (July 24, 2015) (Petitioner
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`relied on “a different declarant in support of the proposed ground of
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`unpatentability”); Atoptech, Inc. v. Synopsys, Inc., IPR2015-00760, Paper 14 (July
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`21, 2015) (moving party sought to add new claims and arguments to an existing
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`IPR); Zhongshan Broad Ocean Motor Co., Ltd. v. Nidec Motor Corp., IPR2015-
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`00762 (July 20, 2015) (party seeking joinder was already a party to the instituted
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`IPR); Unified Patents, Inc. v. Personalized Media Commc’ns, LLC, IPR2015-
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`00521, Paper 14 (June 8, 2015) (second petition involved “new substantive issue”
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`regarding real party-in-interest). Here, by contrast, Sirius XM’s limited additional
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`evidence supports invalidity positions and prior art already before the Board.
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`III. JOINDER WILL NOT ALTER THE SCHEDULE OF THE DISH IPR
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`Dragon erroneously claims that the evidence Sirius XM seeks to add in the
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`Sirius XM IPR (assuming the Board institutes the additional grounds in response to
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`the Rehearing Request) will alter the DISH IPR schedule and prejudice Dragon.
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`To the contrary, joinder of the Sirius XM IPR to the DISH IPR will result in
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`increased efficiency for all the reasons outlined in Sirius XM’s opening motion. In
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`particular, despite Dragon’s contentions, the limited additional evidence in the
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`Sirius XM IPR does not require “substantial revisions to the case schedule” as it
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`does not alter the arguments presented in the DISH IPR. Significantly, if the
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`
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`4
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`
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`Reply in Support of Motion for Joinder to Related Inter Partes Review
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`Rehearing Request is granted, Dragon will be required to address the invalidity
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`grounds based on Truog as presented in the DISH IPR (irrespective of the evidence
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`contained in the Sirius XM IPR) and will only have to additionally address whether
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`Truog is a printed publication in view of the declarations. Accordingly, neither
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`Sirius XM’s joinder request nor the additional evidence should have any effect on
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`the schedule. Instead, joinder will provide for the “just, speedy, and inexpensive
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`resolution” of the DISH IPR and Sirius XM IPR and should be granted. See 37
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`C.F.R. § 42.1(b).
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`IV. THE SIRIUS XM IPR IS TIMELY
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`Dragon erroneously suggests that Sirius XM’s IPR is time barred. As
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`explained in Sirius XM’s motion, the one-year time limit “shall not apply when the
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`petition is accompanied by a request for joinder.” 37 C.F.R. §§ 42.101(b),
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`42.122(b); see also Sirius XM’s Motion at 6-7. Indeed, Dragon agreed to Sirius
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`XM’s joining the DISH IPR knowing that Sirius XM’s request would be submitted
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`more than one year after the complaint was filed in the underlying district court
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`litigation. See Sirius XM IPR, Paper 7, Ex. 2001. Dragon’s timeliness objection
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`must therefore be summarily rejected.
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`V. CONCLUSION
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`For the foregoing reasons, Sirius XM respectfully requests that the Board
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`grant its motion to join the instituted DISH IPR proceeding.
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`5
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`CERTIFICATE OF SERVICE
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`The undersigned certifies, in accordance with 37 C.F.R. § 42.6(e), that on
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`the 24th day of September, 2015, a complete and entire copy of the foregoing
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`“REPLY IN SUPPORT OF MOTION FOR JOINDER UNDER 35 U.S.C. §
`
`315(c), 37 C.F.R. §§ 42.22 AND 42.122(b) TO RELATED INTER PARTES
`
`REVIEW IPR2015-00499” was served on the patent owner at the correspondence
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`address of record for the subject patent,
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`Arman Katiraei
`Los Angeles Patent Group LLP
`8200 Wilshire Blvd.
`Suite 200
`Beverly Hills, CA 90211
`
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`via Federal Express overnight and to counsel for patent owner in the Lawsuit,
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`Jason Angell
`Freitas Angell & Weinberg LLP
`350 Marine Parkway
`Suite 200
`Redwood Shores, CA 94065
`jangell@fawlaw.com
`
`
`via electronic mail.
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` September 24, 2015
`Date
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`/Jonathan S. Caplan/ __________________
`Jonathan S. Caplan (Reg. No. 38,094)
`1177 Avenue of the Americas
`New York, NY 10036
`212.715.9100
`
`Attorneys for Petitioner, Sirius XM Radio
`Inc.
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