`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`SIRIUS XM RADIO INC.,
`Petitioner,
`
`v.
`
`FRAUNHOFER-GESELLSCHAFT ZUR FÖRDERUNG DER
`ANGEWANDTEN FORSCHUNG E.V.,
`Patent Owner.
`____________________
`
`Case IPR2018-00681
`Patent No. 7,061,997
`
`__________________________________________________________
`
`PETITIONER’S SUPPLEMENTAL AUTHORITY BRIEF IN SUPPORT OF
`ITS REQUEST FOR REHEARING
`
`
`
`
`
`
`
`Petitioner’s Supplemental Authority Brief
`IPR2018-00681 (U.S. Patent No. 7,061,997)
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`Background ...................................................................................................... 1
`
`SXM Should Be Permitted To Amend Its RPI Disclosures ............................ 2
`
`The Board’s Recent Precedential Decisions Confirm That
`SXM’s Request To Amend Its RPI Disclosures Is Not Time
`Barred .................................................................................................... 2
`
`The Relevant Factors Confirm That SXM Should Be Permitted
`To Amend Its RPI Designations............................................................ 3
`
`1.
`
`2.
`
`3.
`
`4.
`
`There Have Been No Attempts To Circumvent The
`§ 315(b) Bar Or Estoppel Rules .................................................. 3
`
`There Has Been No Bad Faith By SXM ..................................... 4
`
`There Is No Prejudice To Patent Owner ..................................... 6
`
`There Has Been No Gamesmanship ........................................... 6
`
`A.
`
`B.
`
`
`
`i
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`
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`Petitioner’s Supplemental Authority Brief
`IPR2018-00681 (U.S. Patent No. 7,061,997)
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Federal Cases
`Adello Biologics LLC v. Amgen Inc.,
`Case PGR2019-00001, Paper 11 (PTAB Feb. 14, 2019) ............................passim
`
`Proppant Express Investments, LLC v. Oren Technologies, LLC,
`Case IPR2017-01917, Paper 86 (PTAB Feb. 13, 2019) ..............................passim
`
`Wi-Fi One, LLC v. Broadcom Corp.,
`878 F.3d 1364 (Fed. Cir. 2018)) ........................................................................... 3
`
`Federal Statutes
`
`35 U.S.C. § 312(a) ................................................................................................. 2, 3
`
`35 U.S.C. § 315(b) ............................................................................................. 2, 3, 7
`
`Regulations
`
`37 C.F.R. § 42.11 ....................................................................................................... 5
`
`
`
`
`
`ii
`
`
`
`Petitioner’s Supplemental Authority Brief
`IPR2018-00681 (U.S. Patent No. 7,061,997)
`
`Petitioner Sirius XM Radio Inc. (“SXM” or “Petitioner”) respectfully
`
`submits this brief setting forth the reasons that two recently designated precedential
`
`decisions support SXM’s pending Request for Rehearing – specifically,
`
`Proppant Express Investments, LLC v. Oren Technologies, LLC, Case IPR2017-
`
`01917 (PTAB Feb. 13, 2019) (Paper 86) (“Proppant”) and Adello Biologics LLC v.
`
`Amgen Inc., Case PGR2019-00001 (PTAB Feb. 14, 2019) (Paper 11) (“Adello”).
`
`I.
`
`BACKGROUND
`
`On September 6, 2018, the Board denied institution of the Petition because it
`
`found that Sirius XM Holdings Inc. (“Holdings”) should have been named a real
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`party-in-interest (“RPI”) and that Petitioner had not shown good cause to permit a
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`modification to the RPI designations without changing the Petition’s filing date.
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`Paper 12 (the “Institution Decision”).1 On October 5, 2018, SXM filed a Request
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`for Rehearing (Paper 13, “Request”) setting forth reasons why the Institution
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`Decision should be reconsidered, including the fact that the Board overlooked the
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`good cause for allowing SXM to amend its disclosures to designate Holdings as an
`
`RPI without impacting the Petition’s filing date. Request at 12-15. Subsequently,
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`SXM informed the Board of newly issued decisions supporting SXM’s position
`
`
`1 The Institution Decision did not address whether Liberty Media Corp. (“Liberty”)
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`is an RPI, but the arguments presented here apply to both Holdings and Liberty.
`
`1
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`
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`Petitioner’s Supplemental Authority Brief
`IPR2018-00681 (U.S. Patent No. 7,061,997)
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`that Holdings should not be considered an RPI, and SXM’s requests to modify its
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`RPI designations in the event that the Board continued to disagree with SXM. Exs.
`
`1025-1028. After the Board designated the Proppant and Adello decisions
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`precedential, the panel permitted SXM to submit this brief, which demonstrates
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`that SXM should be permitted to amend its RPI disclosures without impacting the
`
`Petition’s filing date and have its Petition decided on the merits.
`
`II.
`
`SXM SHOULD BE PERMITTED TO AMEND ITS RPI
`DISCLOSURES
`A. The Board’s Recent Precedential Decisions Confirm That SXM’s
`Request To Amend Its RPI Disclosures Is Not Time Barred
`The Board recently confirmed in Proppant (at 7) and Adello (at 3) that the
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`requirements under 35 U.S.C. § 312(a) are not jurisdictional, making any alleged
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`error or omission rectifiable without impacting the filing date of the Petition. More
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`specifically, Proppant explained that “the Board may, under 35 U.S.C. § 312(a),
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`accept updated mandatory notices as long as the petition would not have been
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`time-barred under 35 U.S.C. § 315(b) if it had included the real party in interest.”
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`Proppant at 7; see also Adello at 3-4. These decisions are consistent with SXM’s
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`arguments throughout this proceeding based on Lumentum (precedential) and other
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`decisions. See Request at 1, 7-9; see also Paper 9 (“Reply”) at 3-4.
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`In Proppant and Adello, the Board emphasized that where “none of the now
`
`named real parties in interest was subject to the § 315(b) time bar, i.e., none of
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`2
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`
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`Petitioner’s Supplemental Authority Brief
`IPR2018-00681 (U.S. Patent No. 7,061,997)
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`them had been served with a complaint more than one year before the filing date of
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`the Petition,” the Board “may under 35 U.S.C. § 312(a) accept updated mandatory
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`notices.” Proppant at 7; see also Adello at 3. Here, it is undisputed that Holdings
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`was never served with a complaint and could not, therefore, be subject to the §
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`315(b) time bar. Under such circumstances, and as explained below, “the Director
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`can, and does allow the petitioner to add a [RPI].” Id. (quoting Wi-Fi One, LLC v.
`
`Broadcom Corp., 878 F.3d 1364, 1374 n.9 (Fed. Cir. 2018)).
`
`B.
`
`The Relevant Factors Confirm That SXM Should Be Permitted
`To Amend Its RPI Designations
`
`The Board has considered four factors when determining whether to allow a
`
`petitioner to amend its RPI disclosures while maintaining the original filing date:
`
`“(1) attempts to circumvent the § 315(b) bar or estoppel rules, (2) bad faith by the
`
`petitioner, (3) prejudice to the patent owner caused by the delay, or
`
`(4) gamesmanship by the petitioner.” Proppant at 6-7. As shown below, these
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`factors confirm that SXM should be permitted to amend its RPI designations
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`without affecting the Petition’s filing date.
`
`1.
`
`There Have Been No Attempts To Circumvent The § 315(b)
`Bar Or Estoppel Rules
`
`Holdings has not been served with a complaint and thus was not subject to
`
`any time bar at the time the Petition was filed. Accordingly, there was no attempt,
`
`and in fact could be no attempt, to circumvent the § 315(b) time bar by omitting
`
`3
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`
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`Petitioner’s Supplemental Authority Brief
`IPR2018-00681 (U.S. Patent No. 7,061,997)
`
`Holdings. Proppant at 9 (finding no attempt to circumvent the § 315(b) time bar
`
`when “at the time of the original filing of the Petition, none of the now [proposed]
`
`real parties in interest was subject to the § 315(b) time bar”); see also Request at
`
`10-12. Nor could there have been any attempt to circumvent the § 315(e) estoppel
`
`rules when no Final Written Decision has issued with respect to the ’997 Patent.
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`There Has Been No Bad Faith By SXM
`
`2.
`There has been no bad faith by SXM in either omitting Holdings as an RPI
`
`or making multiple requests to amend its disclosures. Instead SXM’s actions
`
`evidence good faith. In particular, SXM provided un-rebutted testimony from its
`
`General Counsel supporting its good faith belief and argument in its Reply and
`
`Request that Holdings is not an RPI and further explicitly requested leave to update
`
`its disclosures in the event the Board disagreed with SXM. Reply at 1; Request at
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`13-15. Then, after the panel disagreed with SXM’s argument regarding Holdings’
`
`status as an RPI, SXM again requested to amend its RPI disclosures and
`
`subsequently identified new decisions supporting its position. Exs. 1025-1028;
`
`Request at 9. All of SXM’s actions and representations strongly evidence good
`
`faith efforts relating to the RPI disclosures. Adello at 5 (“Given the severe
`
`penalties imposed on one who knowingly and willfully falsifies or conceals a
`
`material fact . . . we are satisfied with Adello’s express representation that is did
`
`not act in bad faith, or engage in gamesmanship.”)
`
`4
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`
`
`Petitioner’s Supplemental Authority Brief
`IPR2018-00681 (U.S. Patent No. 7,061,997)
`
`Notwithstanding this, Patent Owner (“PO”) has erroneously imputed bad
`
`faith to Petitioner’s actions by incorrectly asserting that SXM never requested the
`
`opportunity to amend its disclosures or delayed in identifying the RPIs. See, e.g.
`
`Ex. 1028 at 2. To the contrary, SXM has only demonstrated diligence in
`
`requesting at every opportunity the Board’s permission to amend its RPIs, if the
`
`Board maintains that Holdings is an RPI, including in its Reply, its Request and in
`
`e-mails to the Board as decisions issued supporting SXM’s position.
`
`SXM’s decision not to immediately amend its notices to name Holdings as
`
`an RPI after the Institution Decision was intended to maintain its “duty of candor
`
`and good faith to the Office” as it retained a good faith belief that, under the facts
`
`and law, Holdings did not qualify as an RPI. 37 C.F.R. § 42.11. SXM maintains
`
`that Holdings should not be considered an RPI for the reasons articulated in its
`
`Reply and Request, but given that the precedential Proppant decision “approved” a
`
`petitioner’s request to update its disclosures to identify additional RPIs “without
`
`admitting they are in fact real parties-in-interest,” SXM is filing, and requests that
`
`the Board accept, updated mandatory notices herewith, naming Holdings and
`
`Liberty as RPIs. Proppant at 14. Consistent with this approach, Proppant held
`
`that “Petitioner is correct that the Board has approved this type of disclosure a
`
`number of times,” noting that there is “nothing wrong with this approach as the
`
`identification fulfills the key purposes of identifying the [RPIs].” Id. at 14-15.
`
`5
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`
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`Petitioner’s Supplemental Authority Brief
`IPR2018-00681 (U.S. Patent No. 7,061,997)
`
`There Is No Prejudice To Patent Owner
`
`3.
`In its briefing on the subject, including the Preliminary Response, Sur-Reply
`
`to Petitioner’s Reply to the Preliminary Response, and Response to the Request for
`
`Rehearing, PO has never argued that it would be prejudiced if the Board granted
`
`Petitioner’s request to amend its RPI designations. Request at 12-13. Adello
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`notably confirms that permitting a Petitioner to amend its disclosures does not
`
`cause prejudice because, even in circumstances where certain facts did not
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`“exonerate Petitioner[] from omitting” an RPI, (1) “[a]llowing Petitioners to update
`
`the mandatory notices while maintaining the original filing date promotes the core
`
`functions of RPI disclosures and secures a ‘just, speedy, and inexpensive
`
`resolution’ of this proceeding”; and (2) “neither the statute nor the rule governing
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`RPI disclosures is designed to award a patent owner such a windfall.” Adello, at 3-
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`5. Here, it would turn Adello on its head to award PO such a windfall.
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`There Has Been No Gamesmanship
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`4.
`There has been no gamesmanship by Petitioner. PO has repeatedly accused
`
`SXM of gamesmanship, stating that the omission of Holdings as an RPI was meant
`
`to game the estoppel provisions and allow for Holdings to file subsequent petitions.
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`See Paper 11 at 4; Paper 17 at 10; Ex. 1028. The accusation is baseless.
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`First, PO’s argument miscasts and turns SXM’s argument on its head by
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`characterizing SXM’s statement (in its Reply) that Holdings “was not subject to
`
`6
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`
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`Petitioner’s Supplemental Authority Brief
`IPR2018-00681 (U.S. Patent No. 7,061,997)
`
`any ‘§ 315(b) time bar or § 315(e) estoppel concerns’” as an alleged attempt “to try
`
`to keep open the possibility of a future IPR petition by Holdings.” But PO’s
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`characterization is the exact opposite of SXM’s actual argument. Paper 17 at 10.
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`In its Reply, SXM argued that “the Board has routinely permitted parties to
`
`amend their mandatory notices to name additional RPIs, particularly where no
`
`evidence exists of prejudice to PO or any attempt by Petitioner to circumvent the
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`AIA’s time bar or estoppel provisions.” Reply at 3. SXM then concluded “that
`
`this case falls squarely within those where the Board permits parties to further
`
`identify RPIs without changing the filing date” at least in part because “there are
`
`no § 315(b) time bar or § 315(e) estoppel concerns.” Id. at 4. In other words,
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`because Holdings was neither time barred nor estopped at the time the Petition was
`
`filed, its omission as an RPI was not made in an attempt to game the time bar or
`
`estoppel provisions. See § II.B.1, supra.
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`Second, Petitioner posits a hypothetical scenario where Holdings later files a
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`petition that would necessarily implicate § 315(b). As SXM explained in the
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`Request, “the statutory rules would not permit Holdings to file a petition after
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`Petitioner (Radio), an undisputed RPI, had already filed a Petition and the time for
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`Petitioner to file a petition has passed.” Request at 10. Therefore, there is no
`
`situation, hypothetical or otherwise, where Holdings could bring a subsequent IPR
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`on the ‘997 Patent to circumvent the time bar or estoppel rules.
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`7
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`
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`Petitioner’s Supplemental Authority Brief
`IPR2018-00681 (U.S. Patent No. 7,061,997)
`
`Respectfully submitted,
`
`/Jonathan S. Caplan/
`
`
`
`Jonathan S. Caplan (Reg. No. 38,094)
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Tel: 212.715.9488 Fax: 212.715.8000
`
`
`
`Dated: May 6, 2019
`
`
`
`(Case No. IPR2018-00681) Attorneys for Petitioner
`
`8
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that a true and
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`correct copy of the foregoing Supplemental Authority Brief in Support of Request
`
`for Rehearing was served on May 6, 2019, by filing this document through the
`
`PTAB E2E System as well as delivering via electronic mail upon the following
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`counsel of record for Petitioner:
`
`
`
`
`
`
`
`Ben J. Yorks (byorks@irell.com)
`Babak Redjaian (bredjaian@irell.com)
`David McPhie (dmcphie@irell.com)
`Irell & Manella LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067
`FraunhoferIPRs@irell.com
`
`/Jonathan S. Caplan/
`
`
`
`Jonathan S. Caplan (Reg. No. 38,094)
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Tel: 212.715.9488 Fax: 212.715.8000
`
`
`9
`
`
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