From:
`To:
`Cc:
`Subject:
`Date:
`
`Trials
`Caplan, Jonathan S.; Redjaian, Babak; Trials
`Baghdassarian, Mark; Hedvat, Shannon H.; Price, Jeffrey H.; McPhie, David; Yorks, Ben; Vakili, Kamran
`[EXTERNAL] RE: IPR2018-00681, -00682, -00689, -00690 - Supplemental Authority
`Thursday, April 25, 2019 3:39:39 PM
`
`Counsel,
`
`The panel will issue an order addressing this matter soon.
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`Direct: 571-272-5366
`
`
`
`From: Caplan, Jonathan S. <JCaplan@KRAMERLEVIN.com>
`Sent: Monday, April 22, 2019 4:19 PM
`To: Redjaian, Babak <BRedjaian@irell.com>; Trials <Trials@USPTO.GOV>
`Cc: Baghdassarian, Mark <MBaghdassarian@KRAMERLEVIN.com>; Hedvat, Shannon H.
`<SHedvat@KRAMERLEVIN.com>; Price, Jeffrey H. <JPrice@KRAMERLEVIN.com>; McPhie, David
`<DMcPhie@irell.com>; Yorks, Ben <BYorks@irell.com>; Vakili, Kamran <KVakili@irell.com>; Caplan,
`Jonathan S. <JCaplan@KRAMERLEVIN.com>
`Subject: RE: IPR2018-00681, -00682, -00689, -00690 - Supplemental Authority
`
`Your Honors,
`
`Petitioner requests that the Board ignore Patent Owner’s overly argumentative and misleading
`email.
`
`The Board has not entered any order in the above referenced cases foreclosing further requests to
`submit supplemental authority. The email from Andrew Kellogg referred to in Patent Owner’s email
`is attached for reference. Given that there are now precedential cases directly bearing on an issue
`in these pending cases, there should be no question that Petitioner’s request to supply
`supplemental authority is proper.
`
`As the record shows, Petitioner did not make any substantive arguments in its email to the Board.
`On the other hand, Patent Owner’s response is replete with arguments that should be ignored.
`Considering Patent Owner’s arguments without the benefit of Petitioner’s views on how these
`precedential opinions align with the facts of these cases unfairly prejudices Petitioner. To the extent
`that the Board is willing to consider Patent Owner’s arguments, Petitioner requests the opportunity
`to file a five page paper responsive to those arguments.
`
`Respectfully submitted,
`
`Petitioner Sirius XM Radio Inc. – Exhibit 1022, p. 1
`Sirius XM v. Fraunhofer – IPR2018-00682
`U.S. Patent No. 6,931,084
`
`

`

`Jonathan Caplan
`Lead Counsel for Petitioner, Sirius XM Radio Inc.
`
`
`
`Jonathan S. Caplan
`Partner and Co-chair, Intellectual Property
`
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas, New York, New York 10036
`T 212.715.9488 M 973.420.5047 F 212.715.7718
`
`This communication (including any attachments) is intended solely for the recipient(s) named above and may contain
`information that is confidential, privileged or legally protected. Any unauthorized use or dissemination of this
`communication is strictly prohibited. If you have received this communication in error, please immediately notify the sender
`by return e-mail message and delete all copies of the original communication. Thank you for your cooperation.
`
`
`From: Redjaian, Babak [mailto:BRedjaian@irell.com]
`Sent: Monday, April 22, 2019 1:50 PM
`To: trials@uspto.gov
`Cc: Baghdassarian, Mark; Hedvat, Shannon H.; Price, Jeffrey H.; McPhie, David; Yorks, Ben; Vakili,
`Kamran; Redjaian, Babak; Caplan, Jonathan S.
`Subject: [EXTERNAL] RE: IPR2018-00681, -00682, -00689, -00690 - Supplemental Authority
`
`Your Honors,
`
`Petitioner SXM’s request below is improper and should be denied. It the latest of a string of
`repeated attempts by SXM to make additional submissions to the Board on the RPI issue, even
`though the Board already stated months ago that “[n]o additional briefing is authorized at this
`time.” See 1/16/2018 email from Andrew Kellogg. Thus, SXM’s submission of substantive
`arguments in the email brief below directly violates the Board’s instructions in this case.
`
`In any event, the substantive arguments in Petitioner’s email are incorrect and the cited case law is
`inapposite. Adello involved the inadvertent omission of an RPI that the petitioner immediately
`moved to correct once it was raised to its attention. In Proppant, the Board raised sua sponte
`whether a third party should be considered an RPI based on new Federal Circuit precedent, and in
`response the petitioner immediately moved to correct. By contrast, in this case, SXM Holdings was a
`clear RPI under previous and current precedent, yet the Petitioner SXM made a deliberate decision
`to withhold disclosure of this RPI in an attempt to game the estoppel rules. Moreover, when Patent
`Owner raised the omission, Petitioner did not diligently file a motion to correct or even seek leave to
`file a motion to correct, but rather persisted in its original (meritless) position. Then after it lost on
`this issue, Petitioner filed a request for rehearing with untimely arguments seeking to correct its
`disclosures. Thus, there is significant evidence in this case of improper circumvention,
`gamesmanship, and bad faith, which is not present in the newly cited PTAB case law.
`
`To the extent that Petitioner is granted leave to submit additional briefing or the Board feels that
`
`Petitioner Sirius XM Radio Inc. – Exhibit 1022, p. 2
`Sirius XM v. Fraunhofer – IPR2018-00682
`U.S. Patent No. 6,931,084
`
`

`

`additional analysis of these cases would be helpful, Patent Owner is willing to submit an additional
`formal response.
`
`Respectfully submitted,
`
`Babak Redjaian
`Counsel for Patent Owner
`
`From: Caplan, Jonathan S. <JCaplan@KRAMERLEVIN.com>
`Sent: Monday, April 22, 2019 9:23 AM
`To: trials@uspto.gov
`Cc: Baghdassarian, Mark <MBaghdassarian@KRAMERLEVIN.com>; ~Hedvat, Shannon
`<shedvat@kramerlevin.com>; Price, Jeffrey H. <JPrice@KRAMERLEVIN.com>; McPhie, David
`<DMcPhie@irell.com>; Yorks, Ben <BYorks@irell.com>; Redjaian, Babak <BRedjaian@irell.com>;
`Vakili, Kamran <KVakili@irell.com>
`Subject: IPR2018-00681, -00682, -00689, -00690 - Supplemental Authority
`
`Your Honors,
`
`Petitioner, Sirius XM Radio Inc., writes to notify the panel of supplemental authority bearing
`on Petitioner’s outstanding Requests for Rehearing in the above-identified cases.
`
`The Board recently designated as precedential two decisions that provide further legal support
`for Petitioner’s request that, in the event the Board considers Petitioner’s original
`identification of real parties in interest to be inadequate, the Board permit Petitioner to amend
`its Mandatory Notices to identify additional real parties in interest without changing the
`Petitions’ filing dates as set forth in Petitioner’s Replies to Patent Owner’s Preliminary
`Responses and pending Requests for Rehearing, in each of the above-referenced
`actions. See, e.g., IPR2018-00681, Paper 9 at 3-4 and Paper 13 at 7-15.
`
`These precedential decisions are Proppant Express Investments, LLC v. Oren Technologies,
`LLC, IPR2017-01917, Paper 86 (entered February 13, 2019, designated April 16, 2019)
`and Adello Biologics LLC v. Amgen Inc., PGR2019-00001, Paper 11 (entered February 14,
`2019, designated April 16, 2019).
`
`Petitioner does not believe any briefing regarding this supplemental authority is necessary.
`However, should the Board seek briefing on this authority, Petitioner would be happy to
`provide such a submission. Patent Owner’s counsel, copied on this communication, indicated
`that they object.
`
`Respectfully submitted,
`Jonathan Caplan
`Lead Counsel for Petitioner, Sirius XM Radio Inc.
`
`
`Petitioner Sirius XM Radio Inc. – Exhibit 1022, p. 3
`Sirius XM v. Fraunhofer – IPR2018-00682
`U.S. Patent No. 6,931,084
`
`

`

`Jonathan S. Caplan
`Partner and Co-chair, Intellectual Property
`
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas, New York, New York 10036
`T 212.715.9488 M 973.420.5047 F 212.715.7718
`jcaplan@kramerlevin.com
`
`Bio
`
`This communication (including any attachments) is intended solely for the recipient(s) named above and may contain
`information that is confidential, privileged or legally protected. Any unauthorized use or dissemination of this
`communication is strictly prohibited. If you have received this communication in error, please immediately notify the sender
`by return e-mail message and delete all copies of the original communication. Thank you for your cooperation.
`
`
`PLEASE NOTE: This message, including any attachments, may include privileged,
`confidential and/or inside information. Any distribution or use of this communication by
`anyone other than the intended recipient(s) is strictly prohibited and may be unlawful. If you
`are not the intended recipient, please notify the sender by replying to this message and then
`delete it from your system. Thank you.
`
`Petitioner Sirius XM Radio Inc. – Exhibit 1022, p. 4
`Sirius XM v. Fraunhofer – IPR2018-00682
`U.S. Patent No. 6,931,084
`
`