`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Follow Up Flag:
`Flag Status:
`
`Counsel,
`
`Hedvat, Shannon H. <SHedvat@KRAMERLEVIN.com>
`Friday, July 13, 2018 6:51 AM
`Redjaian, Babak; Yorks, Ben; McPhie, David; #FraunhoferIPRs [Int]
`Caplan, Jonathan S.; Baghdassarian, Mark; Price, Jeffrey H.
`IPR2018-00689 and IPR2018-00690
`
`FollowUp
`Completed
`
`Sirius XM intends to request the opportunity to file a reply to Patent Owner’s Preliminary Responses in IPR Nos. 2018‐
`00689 and 2018‐00690 on the issues identified below. Please let us know if Patent Owner consents.
`
`IPR2018‐00689
`
`1. Patent Owner incorrectly asserts that Sirius XM was required to identify Sirius XM Holdings and Liberty
`Media as real parties in interest. Sirius XM will explain through case law and company information that
`neither Sirius XM Holdings nor Liberty Media is a real party interest.
`
`IPR2018‐00690
`
`1. Patent Owner incorrectly asserts that Sirius XM was required to identify Sirius XM Holdings and Liberty
`Media as real parties in interest. Sirius XM will explain through case law and company information that
`neither Sirius XM Holdings nor Liberty Media is a real party interest.
`
`2. Patent Owner incorrectly asserts that the prior art reference Smallcomb does not qualify as prior art. Sirius
`XM will explain that Smallcomb is entitled to the date of its provisional application thus rendering it prior art
`to the challenged patent.
`
`3. Patent Owner presents a legally erroneous request that Sirius XM be prohibited from relying upon its expert
`declaration in support of its obviousness grounds. Sirius XM will explain that there is no basis for Patent
`Owner’s request.
`
`4. Patent Owner ignores the Board’s explicit instruction, in an e‐mail dated June 22, that Patent Owner
`may not argue any response to Sirius XM’s Opposition to Patent Owner’s Motion to Dismiss (Paper 9) “in its
`Patent Owner Response” should “the Board decide[] to institute.” Sirius XM will explain and request that
`Patent Owner’s arguments in its Preliminary Response addressing the Motion to Dismiss are incorrect
`and should be disregarded.
`
`Please provide your response by 5pm EST today and provide times that you are available for a call with the Board on
`Monday and Tuesday next week. We are available for a meet and confer on Monday or Tuesday if you would like to
`discuss before we submit our request to the Board.
`
`Regards,
`Shannon
`
`1
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`Fraunhofer Ex 2025-p 1
`Sirius v Fraunhofer
`IPR2018-00682
`
`
`
`
`
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`Shannon H. Hedvat
`Associate
`
`
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas, New York, New York 10036
`T 212.715.9185 M 973.809.4768 F 212.715.8385
`shedvat@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.
`
`
`2
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`Fraunhofer Ex 2025-p 2
`Sirius v Fraunhofer
`IPR2018-00682
`
`