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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`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
`___________________
`
`
`FRAUNHOFER’S PATENT OWNER PRELIMINARY RESPONSE
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Case IPR2018-00681
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`TABLE OF CONTENTS
`
`B.
`
`C.
`
`2.
`
`Page
`INTRODUCTION ........................................................................................ 1
`THE PETITION IS DEFECTIVE BECAUSE IT FAILS TO
`NAME ALL REAL PARTIES-IN-INTEREST ........................................... 4
`A.
`Factual Background ............................................................................ 5
`1.
`Sirius XM Holdings Inc. .......................................................... 5
`2.
`Liberty Media Corporation .................................................... 11
`SXM Holdings and Liberty Media are Real Parties-In-
`Interest .............................................................................................. 11
`1.
`SXM Holdings Fully Controls Sirius XM Based on its
`Identical Executive Leadership and Intertwined
`Operation ................................................................................ 11
`Liberty Media Substantially Controls Sirius XM
`Through its Corporate Parent SXM Holdings ....................... 17
`The Petition Must be Dismissed as Sirius XM Failed to
`Disclose All Real Parties-In-Interest Within the One-Year
`Bar Date ............................................................................................ 18
`III. THE ’997 PATENT .................................................................................... 21
`A.
`Summary of the ’997 Patent ............................................................. 21
`B.
`Prosecution History of the ’997 Patent ............................................ 25
`IV. THE PRIOR ART DIFFERS FROM THE ’997 PATENT ........................ 26
`A.
`Tsujishita Overview ......................................................................... 26
`B.
`Classen Overview ............................................................................. 31
`LEVEL OF ORDINARY SKILL ............................................................... 32
`
`I.
`II.
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`V.
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`Page
`VI. CLAIM CONSTRUCTION ....................................................................... 32
`A.
`Claim Construction Standard ........................................................... 32
`B.
`Preamble Is Limiting ........................................................................ 33
`VII. THE PETITION’S GROUNDS 1 AND 2 COMBINATIONS
`SHOULD BE DENIED .............................................................................. 38
`A. Neither Tsujishita (Ground 1) Nor Tsujishita in View of the
`Knowledge of a POSA (Ground 2) Discloses or Teaches
`“each symbol being differentially coded in the direction of
`the frequency axis” as Recited in Claim 1 ....................................... 38
`Neither Tsujishita (Ground 1) Nor Tsujishita in View of the
`Knowledge of a POSA (Ground 2) Discloses or Teaches “a
`M-PSK decision device” as Recited in Claim 1............................... 40
`VIII. THE PETITION’S GROUND 3 COMBINATION SHOULD BE
`DENIED...................................................................................................... 43
`IX. CONCLUSION ........................................................................................... 44
`
`
`B.
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`TABLE OF AUTHORITIES
`
`Case IPR2018-00681
`Patent No. 7,061,997
`
` Page(s)
`
`Cases
`Anthony Parker v. Sirius XM Radio Inc.,
`No. 8:15-cv-01710-JSM-EAJ (M.D. Fla) ........................................................... 17
`Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) .......................................................................... 42
`Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc.,
`Case IPR2013-00453 (PTAB Jan. 6, 2015) .................................................. 13, 14
`Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc.,
`289 F.3d 801 (Fed. Cir. 2002) ............................................................................ 37
`Eaton Corp. v. Rockwell Int’l Corp.,
`323 F.3d 1332 (Fed. Cir. 2003) .......................................................................... 34
`Eli Lilly & Co. v. Teva Pharm. USA, Inc.,
`619 F.3d 1329 (Fed. Cir. 2010) .......................................................................... 43
`Erik Knutson v. Sirius XM Radio Inc.,
`No. 12-cv-0418-AJB (S.D. Cal.) ........................................................................ 16
`Francis W. Hooker v. Sirius XM Radio Inc.,
`No. 4:13-cv-3 (E.D. Va.) .................................................................................... 17
`Galderma S.A. v. Allergan Industrie, SAS,
`Case IPR2014-01422 (PTAB Mar. 5, 2015) .............................................. 4, 5, 13
`Galderma,
`Case IPR2014-01422, Paper No. 14 ....................................................... 13, 14, 15
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ............................................................................ 42
`Kraft Foods Group Brands LLC v. TC Heartland, LLC,
`2016 U.S. Dist. LEXIS 28318 (D. Del. 2016) .................................................... 37
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`
`KSR Int’l Co. v. Teleflex Inc.,
`127 S.Ct. 1727 (2007) ......................................................................................... 42
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .................................................... 34, 38
`Poly-America, LP v. GSE Lining Technology, Inc.,
`383 F. 3d 1303 (Fed. Cir. 2004) ......................................................................... 35
`SoundExchange, Inc. v. Sirius XM Radio, Inc.,
`No.13-cv-1290-RJL (D.D.C.) ............................................................. 6, 10, 11, 16
`SoundExchange, Inc. v. Sirius XM Radio, Inc.,
`No.17-cv-02666-RJL (D.D.C.) ..................................................................... 11, 16
`Storage Technology Corp. v. Cisco Systems, Inc.,
`329 F. 3d 823 (Fed. Cir. 2003) ........................................................................... 35
`Vitronics Corp. v. Conceptronic Inc.,
`90 F.3d 1576 (Fed. Cir. 1996) ............................................................................ 38
`Woods v. DeAngelo Marine Exhaust, Inc.,
`692 F.3d 1272 (Fed. Cir. 2012) .......................................................................... 42
`Yefim Elikman v. Sirius XM Radio Inc. and Career Horizons, Inc.,
`No. 1:15-cv-02093 (N.D. Ill.) ............................................................................. 17
`Zoll Lifecor Corp. v. Philips Elec. N. Am. Corp.,
`Case IPR2013-00606 (PTAB Mar. 10, 2014) .................................... 4, 14, 15, 19
`Statutes
`35 U.S.C. § 102(e) ..................................................................................................... 1
`35 U.S.C. § 103 .......................................................................................................... 1
`35 U.S.C. § 312(a) ................................................................................................... 20
`35 U.S.C. § 312(a)(2) ....................................................................................... 1, 4, 45
`35 U.S.C. § 314(a) ................................................................................................... 45
`35 U.S.C. § 315(b) ......................................................................................... 3, 19, 20
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`
`Regulations
`37 C.F.R. § 42.8(b)(1) .......................................................................................... 1, 20
`37 C.F.R. § 42.100(b) .............................................................................................. 33
`37 C.F.R. §§ 42.104 and 42.106(a)(1) ....................................................................... 3
`37 C.F.R. § 42.106 ................................................................................................... 19
`37 C.F.R. § 42.106(a) ............................................................................................... 19
`77 Fed. Reg. 47,756, 48,759 (Aug. 14, 2012) ........................................................... 4
`77 Fed. Reg. 48,680, 48,689 (Aug. 14, 2012) ......................................................... 19
`77 Fed. Reg. at 48,759 ........................................................................................... 4, 5
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`EXHIBIT LIST
`
`
`
`
`
`Fraunhofer Ex.
`2001
`Fraunhofer Ex.
`2002
`Fraunhofer Ex.
`2003
`Fraunhofer Ex.
`2004
`Fraunhofer Ex.
`2005
`Fraunhofer Ex.
`2006
`Fraunhofer Ex.
`2007
`Fraunhofer Ex.
`2008
`Fraunhofer Ex.
`2009
`
`Fraunhofer Ex.
`2010
`Fraunhofer Ex.
`2011
`Fraunhofer Ex.
`2012
`
`Fraunhofer Ex.
`2013
`
`Fraunhofer Ex.
`2014
`
`Sirius XM Holdings Inc., SEC Form 10-K for the year
`ended December 31, 2017, Filed January 31, 2018
`Sirius XM Holdings Inc., SEC Form 8-K, November 14,
`2013
`Pandora Media, Inc., SEC Schedule 13D, September 22,
`2017
`Pandora Media, Inc., SEC Joint Filing Agreement (Exhibit
`A) to Schedule 13D, September 22, 2017
`Sirius XM Holdings Inc., SEC Form 8-K, January 11, 2018
`
`Sirius XM Holdings Inc., Exhibit 10.1 to SEC Form 8-K,
`January 10, 2018 (Meyer Employment Agreement)
`Sirius XM Holdings Inc., SEC Form 8-K, January 14, 2014
`
`Sirius XM Holdings Inc., Exhibit 10.1 to SEC Form 8-K,
`January 10, 2014 (Donnelly Employment Agreement)
`Executed Summons to Sirius XM Radio Inc., attaching
`Complaint for Patent Infringement, Dated February 22,
`2017
`Fraunhofer Complaint for Patent Infringement against
`Defendant Sirius XM Radio Inc., Filed February 22, 2017
`Sirius XM Holdings Inc., SEC Form 10-K for the year
`ended December 31, 2016, Filed February 2, 2017
`Defendant Sirius XM Radio Inc.’s Corporate Disclosure
`Statement Pursuant to Rule 7.1 of the Federal Rules of
`Civil Procedure, April 25, 2017
`Erik Knutson v. Sirius XM Radio Inc., No. 12-cv-0418-
`AJB (S.D. Cal.), First Amended Class Action Complaint
`for Damages, Filed May 29, 2015
`Francis W. Hooker v. Sirius XM Radio Inc., No. 4:13-cv-3
`(E.D. Va.), Class Complaint, Filed January 4, 2013
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`Yefim Elikman v. Sirius XM Radio Inc. and Career
`Horizons, Inc., No. 1:15-cv-02093 (N.D. Ill.), Second
`Amended Class Action Complaint, Filed April 1, 2015
`Anthony Parker v. Sirius XM Radio Inc., No. 8:15-cv-
`01710-JSM-EAJ (M.D. Fla), Class Action Complaint, Filed
`July 22, 2015
`Francis W. Hooker et al. v. Sirius XM Radio Inc., No. 4:13-
`cv-3 (E.D. Va.), Final Order Approving Settlement and
`Certifying the Settlement Class, Filed December 22, 2016
`File History of U.S. 7,061,997 (excerpted)
`
`Fraunhofer Ex.
`2015
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`Fraunhofer Ex.
`2016
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`Fraunhofer Ex.
`2017
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`Fraunhofer Ex.
`2018
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`STATEMENT OF MATERIAL FACTS IN DISPUTE
`Petitioner Sirius XM Radio Inc. did not submit a statement of material facts
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`in this Petition. Accordingly, no response is due pursuant to 37 C.F.R. § 42.23(a),
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`and no facts are admitted.
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`I.
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`INTRODUCTION
`U.S. Patent No. 7,061,997, entitled “Method and Apparatus for Fine
`
`Frequency Synchronization in Multi-Carrier Demodulation Systems” (“the ’997
`
`Patent”), is directed to a novel method and apparatus for fine frequency
`
`synchronization in a multi-carrier demodulation system. Sirius XM Radio Inc.
`
`(“Sirius XM” or “Petitioner”) requested inter partes review (“IPR”) of claims 1-3
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`(the “Challenged Claims”) of the ’997 patent, based on three grounds. Ground 1
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`challenges the validity of claims 1-3 based on anticipation under 35 U.S.C.
`
`§ 102(e) by Tsujishita (Ex. 1002); Ground 2 challenges the validity of claims 1-3
`
`based on obviousness under 35 U.S.C. § 103 by Tsujishita in view of the
`
`knowledge of a POSA; and Ground 3 challenges the validity of claims 1-3 based
`
`on obviousness under 35 U.S.C. § 103 by Tsujishita in view of Classen (Ex. 1003).
`
`Pet. at 6.
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`The Patent Trial and Appeal Board (“Board”) should deny the Petition
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`because it does not present a reasonable likelihood that Petitioners will prevail as
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`to any challenged claim. As detailed below, the Petition fails both procedurally
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`and on the merits.
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`Regarding procedure, the Petition is defective because it fails to name all
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`real parties-in-interest in violation of 35 U.S.C. § 312(a)(2) and 37 C.F.R.
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`§ 42.8(b)(1). For example, the Petition omits any disclosure of Sirius XM’s parent,
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`Sirius XM Holdings Inc. (“SXM Holdings”), even though it is clearly a real party-
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`in-interest because:
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`• SXM Holdings controls Sirius XM as a wholly owned subsidiary.
`
`• SXM Holdings has admitted that it has “no operations independent of …
`
`Sirius XM.”
`
`• At least nine of the executive officers of Sirius XM and SXM Holdings
`
`are identical, and the public record demonstrates a number of them have
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`specific overlapping duties. For example, Mr. Patrick Donnelly, the
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`Executive Vice President, General Counsel and Secretary for both Sirius
`
`XM and SXM Holdings, has responsibility for selecting, hiring, and
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`supervising outside counsel for both entities.
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`• Sirius XM and SXM Holdings share the same business address.
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`• SXM Holdings not only has the power to control litigation involving
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`Sirius XM, but has actually exercised that control on a number of
`
`occasions.
`
`Based on these admissions of overlapping structure, management, and control,
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`SXM Holdings is indisputably a real-party-in-interest in this case along with
`
`Petitioner Sirius XM. By the same token, Liberty Media Corporation (“Liberty
`
`Media”) is also a real party-in-interest as it owns approximately 70% of the
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`outstanding shares of SXM Holdings’ common stock and has “significant
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`influence” over the affairs, policies, and operations of SXM Holdings.
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`Because the Petition fails to disclose SXM Holdings and Liberty Media as
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`real parties-in-interest, the Petition’s filing date must be vacated. 37 C.F.R.
`
`§§ 42.104 and 42.106(a)(1). Moreover, any attempt to correct the Petition would
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`be futile because the corrected petition would not fall within the 1-year period set
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`forth in 35 U.S.C. § 315(b). Thus, this deficiency should result in the Petition
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`being dismissed in its entirety.
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`The Petition should also be dismissed on the merits because the Petition has
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`failed to make a prima facie showing that the Challenged Claims are anticipated or
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`obvious under any Ground. For example, neither Tsujishita nor Classen, alone or
`
`in combination (under any Ground), disclose, teach, or suggest the limitation “each
`
`symbol being differentially coded in the direction of the frequency axis” from the
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`preamble of claim 1. The Petition instead attempts to argue that this preamble term
`
`is simply not limiting, even though it is repeatedly described as part of the
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`“invention” and was specifically relied upon during prosecution. The cited art also
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`lacks an “M-PSK decision device” and other features recited in claim 1. To be
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`clear, this is not a situation in which there is proper evidence presented by the
`
`Petition that Patent Owner simply disputes. The Petition fails to present anything
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`other than conclusory assertions on key elements of its theory. Accordingly, the
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`Petition can and should be dismissed based on its substantive deficiencies as well.
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`II. THE PETITION IS DEFECTIVE BECAUSE IT FAILS TO NAME
`ALL REAL PARTIES-IN-INTEREST
`A petition for inter partes review “may be considered only if … the petition
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`identifies all real parties-in-interest.” 35 U.S.C. § 312(a)(2) (emphasis added).
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`The Board has repeatedly characterized this statutory requirement as a “threshold
`
`issue” that precedes any substantive review of the merits of any challenges
`
`presented in a petition. See Zoll Lifecor Corp. v. Philips Elec. N. Am. Corp., Case
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`IPR2013-00606, at 8 (PTAB Mar. 10, 2014) (Paper 13); Galderma S.A. v. Allergan
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`Industrie, SAS, Case IPR2014-01422, at 5 (PTAB Mar. 5, 2015) (Paper 14). The
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`purpose of the disclosure is to assist the Board in identifying potential conflicts,
`
`assuring proper application of statutory bar and estoppel provisions, and assessing
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`credibility of evidence presented in a proceeding, among other things. See Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 47,756, 48,759 (Aug. 14, 2012); Zoll
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`Lifecor, Case IPR2013-00606, Paper No. 13, at 12. Full and timely disclosure of
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`all real parties-in-interest is thus necessary “to protect the integrity of both the
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`USPTO and Federal Courts by assuring that all issues are promptly raised and
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`vetted.” 77 Fed. Reg. at 48,759.
`
`The Petitioner is the party that bears the “burden … to establish that it has
`
`complied with the statutory requirement to identify all the real parties-in-interest.”
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`Galderma, Case IPR2014-01422, Paper 14, at 5. The question of whether an entity
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`is a real party-in-interest is a “highly fact dependent question.” 77 Fed. Reg. at
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`Case IPR2018-00681
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`48,759. “A common consideration [in this analysis] is whether the non-party
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`exercised or could have exercised control over a party’s participation in a
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`proceeding.” Id. From a practical standpoint, this inquiry may involve
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`examination of “shared corporate leadership” and whether the entities involved
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`have become “so intertwined that it is difficult … to determine precisely where one
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`ends and another begins.” Galderma, Case IPR2014-01422, Paper 14, at 8.
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`A.
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`Factual Background
`1.
`Sirius XM Holdings Inc.
`Sirius XM is the sole Petitioner and only real party-in-interest identified in
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`this case. Pet. at 2. However, Sirius XM Holdings Inc. (“SXM Holdings”)
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`reported in a recent annual report filing with the Security and Exchange
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`Commission (“SEC”) that Sirius XM is actually a “wholly-owned subsidiary” of
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`SXM Holdings. Ex. 2001-4, Sirius XM Holdings Inc., Security and Exchange
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`Commission Form 10-K for the year ended December 31, 2017. 1 Specifically,
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`1 Retrievable from:
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`https://www.sec.gov/Archives/edgar/data/908937/000090893718000014/siri-
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`20171231x10k.htm
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`Sirius XM became a wholly-owned subsidiary of SXM Holdings on November 15,
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`2013. Ex. 2002-2, Sirius XM Holdings Inc., SEC Form 8-K, November 14, 2013. 2
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`SXM Holdings has further admitted that it has “no operations independent
`
`of its wholly-owned subsidiary, Sirius XM.” Ex. 2001-4 (emphasis added).
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`Indeed, at least nine of the executive officers of SXM Holdings and Sirius XM are
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`identical. The following is a list of executive officers of Sirius XM:
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`
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`Ex. 2004-2, Joint Filing Agreement to Schedule 13D (Sept. 22, 2017). 3 The names
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`2 Retrievable from:
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`https://www.sec.gov/Archives/edgar/data/908937/000119312513443688/d6
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`27857d8k12b.htm
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`3 Retrievable from:
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`and titles are exactly the same for all nine officers of SXM Holdings:
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`Ex. 2004-3; see also Ex. 2003-6, -11, Schedule 13D (Sept. 22, 2017). 4 The
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`signatory to the Schedule 13D and Joint Filing Agreement is Patrick Donnelly, on
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`behalf of both Sirius XM and SXM Holdings. Ex. 2003-12; Ex. 2004-1. The CEO
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`of both Sirius XM and SXM Holdings, James Meyer, is also listed as a director for
`
`
`https://www.sec.gov/Archives/edgar/data/1230276/000119312517301078/d
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`458882dex99a.htm . Exhibit 2004 (The Joint Filing Agreement to Schedule 13D)
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`is listed as Exhibit A to Schedule 13D filed by Pandora Media, Inc. regarding the
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`purchase of shares of stock by Sirius XM. Ex. 2003-1, -6 to -8, -11.
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`4 Retrievable from:
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`https://www.sec.gov/Archives/edgar/data/1230276/000119312517301078/d
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`458882dsc13d.htm
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`both entities. Ex. 2004-2 to -3. Moreover, the filings reflect that both Sirius XM
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`and SXM Holdings have the same physical business address: 1290 Avenue of the
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`Americas, New York, New York 10104. Ex. 2004-2 to -3.
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`Other publicly available information sheds further light on the overlapping
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`nature of these dual positions at Sirius XM and SXM Holdings. For example, the
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`employment agreement for CEO James Meyer (dated January 10, 2018) specifies
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`Mr. Meyer’s overlapping duties between Sirius XM and SXM Holdings:
`
`Duties and Reporting Relationship. (a) The Executive shall continue
`his employment as the Chief Executive Officer of both the Company
`[Sirius XM] and Sirius XM Holdings Inc. (“Holdings”), and shall
`have the rights, powers, authorities and duties commensurate with the
`position of the Chief Executive Officer. … During the Term (as
`defined below), the Executive shall, on a full-time basis and consistent
`with the needs of the Company [Sirius XM] and Holdings to achieve
`the goals of the Company [Sirius XM] and Holdings, use his skills
`and render services to the best of his ability, and devote all of his
`working time and efforts, in supervising the business and affairs of the
`Company [Sirius XM] and Holdings.
`
`Ex. 2005-2, Sirius XM Holdings Inc., SEC Form 8-K, January 11, 2018 (Meyer
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`Employment Agreement) 5; Ex. 2006-1, Sirius XM Holdings Inc., Exhibit 10.1 to
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`5 Retrievable from:
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`SEC Form 8-K, January 10, 2018 (Meyer Employment Agreement). 6
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`Similarly, the employment agreement for Mr. Patrick Donnelly (the
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`Executive Vice President, General Counsel and Secretary of both entities) specifies
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`his overlapping duties between Sirius XM and SXM Holdings:
`
`Duties and Reporting Relationship. (a) The Executive shall continue
`his employment as the Executive Vice President, General Counsel and
`Secretary of the Company [Sirius XM] and serve as the Executive
`Vice President, General Counsel and Secretary of Sirius XM Holdings
`Inc. (“Holdings”). In such capacity, the Executive shall be
`responsible for the legal affairs of the Company [Sirius XM] and
`Holdings, including all legal aspects of their obligations as reporting
`companies under the Securities Exchange Act of 1934, as amended;
`and the selection, hiring and supervision of outside counsel for the
`companies.
`
`Ex. 2007-2, Sirius XM Holdings Inc., SEC Form 8-K, January 14, 2014 (Donnelly
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`https://www.sec.gov/Archives/edgar/data/908937/000090893718000005/siri
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`-20180111x8xk.htm
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`6 Retrievable from:
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`https://www.sec.gov/Archives/edgar/data/908937/000090893718000005/me
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`yerjimemplagmt.htm
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`Employment Agreement); 7 Ex. 2008-1, Sirius XM Holdings Inc., Exhibit 10.1 to
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`Case IPR2018-00681
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`SEC Form 8-K, January 10, 2014 (Donnelly Employment Agreement) (emphasis
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`added). 8
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`SXM Holdings also states in its filings with the SEC that “we are a
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`defendant” in a variety of legal proceedings, based on lawsuits that name only
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`Sirius XM (and not SXM Holdings) as a defendant. For example:
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`ITEM 3. LEGAL PROCEEDINGS
`In the ordinary course of business, we are a defendant or party
`to various claims and lawsuits, including the following discussed
`below. …
`This matter is captioned SoundExchange, Inc. v. Sirius XM
`Radio, Inc., No.13-cv-1290-RJL (D.D.C.) …
`This matter is titled SoundExchange, Inc. v. Sirius XM Radio,
`Inc., No.17-cv-02666-RJL (D.D.C.) …
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`Ex. 2001-31 to -33 (emphasis added).
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`7 Retrievable from:
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`https://www.sec.gov/Archives/edgar/data/908937/000093041314000155/c76
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`153_8k.htm
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`8 Retrievable from:
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`https://www.sec.gov/Archives/edgar/data/908937/000093041314000155/c76
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`153_ex10-1.htm
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`2.
`Liberty Media Corporation
`In its most recent annual report, SXM Holdings reported that Liberty Media
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`Corporation (“Liberty Media”) is the beneficial owner of “approximately 70% of
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`the outstanding shares of [SXM] Holdings’ common stock.” Ex. 2001-4, -28. The
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`report further states that Liberty Media has “significant influence” over SXM
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`Holdings and has the ability to control the business affairs of SXM Holdings:
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`As of December 31, 2017, Liberty Media beneficially owned
`approximately 70% of Holdings’ common stock and has the ability
`to influence our affairs, policies and operations. Two Liberty Media
`executives and one other member of the board of directors of Liberty
`Media are members of our board of directors. … Liberty Media can
`also determine the outcome of all matters requiring general
`stockholder approval, including the election of the board of directors
`and changes to our certificate of incorporation or by-laws. Liberty
`Media can also cause or prevent a change of control of Holdings
`and could preclude any unsolicited acquisition of our company. . . .
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`Ex. 2001-28 to -29 (emphasis added).
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`B.
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`SXM Holdings and Liberty Media are Real Parties-In-Interest
`1.
`SXM Holdings Fully Controls Sirius XM Based on its
`Identical Executive Leadership and Intertwined Operation
`Based on this factual record, SXM Holdings is clearly an undisclosed real
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`party-in-interest in this case. The public documents cited above show the close
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`relationship between SXM Holdings and Sirius XM, and demonstrate that Sirius
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`XM’s business is fully controlled by its corporate parent. The relationship between
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`these two entities goes far beyond that of a parent and subsidiary; the respective
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`executive leadership teams are exactly identical, and SXM Holdings goes so far as
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`to hold itself out as a defendant in cases where only Sirius XM has been formally
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`named in a lawsuit. See Section II.A.1 above.
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`The Board has consistently found that a real party-in-interest existed in other
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`cases where there was a significant overlap in executive leadership. For example,
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`in Galderma, a single individual (Mr. Antunes) served as CEO of the petitioner as
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`well as the corporate parent of the petitioner. Galderma, Case IPR2014-01422,
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`Paper No. 14, at 12. The Board concluded that, in his role as “CEO of both parent
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`and subsidiary,” Mr. Antunes “wield[ed] a significant degree of effective control
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`over the present matter,” which “strongly implie[d] an involved and controlling
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`parent corporation representing the unified interests of itself and Petitioner.” Id.
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`(emphasis added and internal quotation omitted). The Board further noted that it
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`did not matter whether Mr. Antunes actually exercised this control; it was
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`“sufficient” that he had the “power” to do so. Id. The Board relied on this and
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`other overlap in personnel between the two companies and ultimately denied the
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`petition for failure to disclose the parent as a real party-in-interest. Id. at 10-13.
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`Galderma relied on other, similar cases where a real party-in-interest was
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`identified based on “shared corporate leadership” and a general blurring of
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`“corporate boundaries.” Id. at 8. For example, in Atlanta Gas Light Co. v. Bennett
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`Regulator Guards, Inc., Case IPR2013-00453, at 2–6 (PTAB Jan. 6, 2015) (Paper
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`88), the Board determined that “a parent company was an unnamed real party-in-
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`interest where petitioner’s ‘Vice President, Supply Chain and Fleet’ held the same
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`title in the parent company, conducted negotiations with the patent owner on behalf
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`of both petitioner and parent, and generally blurred the distinctions between the
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`parent and its subsidiaries.” Galderma, Case IPR2014-01422, Paper No. 14, at 7-8
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`(citing Atlanta Gas, Case IPR2013-00453, Paper 88, at 2-6). The Board in Atlanta
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`Gas relied on the fact that the companies were “so intertwined that it is difficult …
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`to determine precisely where one ends and another begins.” Atlanta Gas, Case
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`IPR2013-00453, Paper 88, at 11. Similarly, in Zoll Lifecor, a corporate parent of
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`the petitioner was found to be in real party-in-interest based in part on a shared
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`executive officer and in-house attorney who provided legal advice to both entities.
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`Zoll Lifecor, Case IPR2013-00606, Paper No. 13, at 12.
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`In the present case, the sharing of corporate leadership and blurring of
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`corporate boundaries is even more extensive than in any of these prior cases where
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`a real party-in-interest was found. Sirius XM and SXM Holdings do not merely
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`share a few corporate executives in common, but rather their entire nine-person
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`executive teams are exactly the same, even down to the specific corporate titles
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`assigned to each individual. See Ex. 2004-2 to -3, Joint Filing Agreement to
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`Schedule 13D (Sept. 22, 2017). This “strongly implies an involved and controlling
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`parent corporation representing the unified interests of itself and Petitioner.”
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`Galderma, Case IPR2014-01422, Paper No. 14, at 12 (internal quotation omitted).
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`Sirius XM and SXM Holdings also have the same business address (1290 Avenue
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`of the Americas, New York, New York 10104). Ex. 2004-2 to -3. SXM Holdings
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`has even admitted that it “has no operations independent of its wholly-owned
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`subsidiary, Sirius XM.” Ex. 2001-4. Taken together, these facts demonstrate a
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`“significant degree of effective control” such that SXM Holdings clearly has the
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`power to “call the shots” over the present matter. See Galderma, Case IPR2014-
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`01422, Paper No. 14, at 12.
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`Further evidence of SXM Holdings’ failure to “maintain[] well-defined
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`corporate boundaries” can be found in its annual report, which uses language that
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`effectively subsumes the subsidiary Sirius XM within its corporate parent: “The
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`terms ‘Holdings,’ ‘we,’ ‘us,’ ‘our,’ and ‘our company’ as used herein and unless
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`otherwise stated or indicated by context, refer to Sirius XM Holdings Inc. and its
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`subsidiaries ….”). Ex. 2001-4 (emphasis added); see Zoll Lifecor, Case IPR2013-
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`00606, Paper No. 13, at 15 (finding additional real party-in-interest where parent
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`and subsidiary “repeatedly held themselves out … as a single entity”).
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`SXM Holdings and Sirius XM have also demonstrated the significant
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`overlap in the responsibilities of its shared leadership team on matters directly
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`related to the Petition. For example, Mr. Meyer’s responsibility as CEO of both
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`companies is “on a full-time basis and consistent with the needs of the Company
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`[Sirius XM] and Holdings to achieve the goals of the Company [Sirius XM] and
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`Holdings.” Ex. 2006-1. In other words, Mr. Meyer has the power to exercise a
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`significant degree of control over both companies, including the power to control
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`prosecution or defense of legal proceedings in court or the Patent Office—whether
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`exercised or not. Similarly, Mr. Donnelly is “responsible for the legal affairs of the
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`Company [Sirius XM] and Holdings, including . . . . the selection, hiring and
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`supervision of outside counsel for the companies.” Ex. 2008-1. This power is
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`exercised indiscriminately with respect to both SXM Holdings and Sirius XM.
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`Indeed, in its annual report, SXM Holdings represents to the public that it controls
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`litigation involving Sirius XM, stating “we are a defendant or party in various
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`claims and lawsuits” based on law