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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`__________________
`
`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 IPR2018-00682
`Patent No. 6,931,084
`
`__________________________________________________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE
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`
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`
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`
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`TABLE OF CONTENTS
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`IPR2018-00682
`U.S. Patent No. 6,931,084
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`Page
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`I.
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`II.
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`Sirius XM Properly Identified The RPIs ......................................................... 1
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`Patent Owner’s Erroneous View Of The Law ................................................. 4
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`i
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`IPR2018-00682
`U.S. Patent No. 6,931,084
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`TABLE OF AUTHORITIES
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` Page(s)
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`Federal Cases
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`Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc.
`IPR2013-00453, Paper 88 (PTAB Jan. 6, 2015) .................................................. 3
`
`Daifuku Co., Ltd. et al. v. Murata Machinery, Ltd.,
`IPR2015-01538, Paper 11 (PTAB Jan. 19, 2016) ........................................ 1, 2, 3
`
`Eli Lilly & Co. v. Teva Pharm. USA, Inc.,
`619 F.3d 1329 (Fed. Cir. 2010) ............................................................................ 5
`
`Galderma S.A. et al. v. Allergan Industrie, SAS, et al,
`IPR2014-01422, Paper 14 (PTAB Mar. 5, 2015) ................................................. 2
`
`Lemelson v. General Mills, Inc.,
`968 F.2d 1202 (Fed. Cir. 1992) ............................................................................ 4
`
`Lumentum Holdings, Inc. et al. v. Capella Photonics, Inc.,
`IPR2015-00739, Paper 38 (PTAB Mar. 4, 2016) ................................................. 3
`
`Proppant Express Investments, LLC et al. v. Oren Techs., LLC,
`IPR2017-02103, Paper 8 (PTAB Jan. 10, 2018) .................................................. 4
`
`RPX Corp. & Vimeo, Inc., v. Link Engine Techs. LLC,
`IPR2017-00886, Paper 11 (PTAB Aug. 18, 2017) ............................................... 4
`
`Rubicon Comms., LP, v. Lego A/S,
`IPR2016-01187, Paper 40 (PTAB Dec. 16, 2016) ............................................... 4
`
`Woods v. DeAngelo Marine Exhaust, Inc.,
`692 F.3d 1272 (Fed. Cir. 2012) ............................................................................ 5
`
`Zoll Lifecor Corp. v. Philips Electronics North America Corp. et al.,
`IPR2013-00609, Paper 15 (PTAB Mar. 20, 2014) ........................................... 2, 3
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`- ii -
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`IPR2018-00682
`U.S. Patent No. 6,931,084
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`EXHIBIT LIST
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`EXHIBIT NO.
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`DESCRIPTION
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`Exhibit 1018 Declaration of Patrick L. Donnelly
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`- iii -
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`IPR2018-00682
`U.S. Patent No. 6,931,084
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`I.
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`SIRIUS XM PROPERLY IDENTIFIED THE RPIS
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`Sirius XM Radio Inc. (“Radio”) named all real parties in interest (“RPIs”) in
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`its Petition and Patent Owner’s (“PO”) contrary arguments (Paper 8 (“Resp.”) at 4-
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`5, 18-20) should be rejected. As explained in the accompanying declaration, Sirius
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`XM Holdings Inc. (“Holdings”) and Liberty Media Corporation (“Liberty”) are not
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`RPIs because they (1) do not direct or control business activities and operations of
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`Radio; and (2) have not directed, controlled, funded (e.g., PTO or legal fees) or
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`otherwise been involved in these proceedings. Ex. 1018, ¶¶ 3-15. Moreover,
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`Holdings is a non-operational holding company and owns all the issued and
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`outstanding capital stock of Radio, while Liberty’s connection is even more
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`attenuated as it merely owns 70% of the outstanding common stock of Holdings.
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`Id., ¶¶ 3-4, 7-9.
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`These facts align squarely with Daifuku Co., Ltd., et al. v. Murata
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`Machinery, Ltd., IPR2015-01538, in which “a ‘holding company that merely holds
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`ownership of its subsidiaries and conducts no independent operations’” was found
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`not to be an RPI. Daifuku, Paper 11 at 8–9 (“The exercise or availability of
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`general ‘control’ that stock ownership vests in stockholders…will not make one
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`company a real party in interest of the other.”). Like in Daifuku, PO’s evidence
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`here, at best, only “establishes a [stock ownership] relationship between parties and
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`does not establish a relationship between Holdings and this proceeding.” Id. at 11.
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`- 1 -
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`IPR2018-00682
`U.S. Patent No. 6,931,084
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`PO’s reliance on Galderma S.A. v. Allergan Industrie, SAS, IPR2014-01422,
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`suggesting that an RPI is one that “has the power to ‘call the shots’” (Resp. at 14)
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`is misleading as the Board in Daifuku explained that this is not the “complete legal
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`principle.” Daifuku at 11. Rather, the “evidence as a whole must establish that the
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`nonparty possessed effective control over a party’s conduct…as measured from a
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`practical, as opposed to a purely theoretical, standpoint.” Id. Examples of such
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`practical control include “where a liability insurer assumes the insured’s defense;
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`where an indemnitor participates in defending an action brought against the
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`indemnitee; and where the owner of a close corporation assumes control of
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`litigation brought against the firm.” Id. Here, neither Holdings nor Liberty has
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`any such “practical control” of Radio because neither controls Radio’s business
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`activities nor has had any involvement in these proceedings. Ex. 1018, ¶¶ 3-15.
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`Instead, PO’s arguments focus on theoretical control based on the entities
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`having common addresses and overlapping officers disconnected from these
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`proceedings. Resp. at 6-14. Such arguments fail as the Board and Supreme Court
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`precedent confirm. Daifuku at 10–11 (“[E]vidence of a common address and
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`telephone number, substantial overlap of officers, and the other evidence on which
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`PO relies, establishes a relationship between parties; it does not establish a
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`relationship between Daifuku Holdings and this proceeding.”).
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`PO’s reliance on Zoll Lifecor Corp. v. Philips Electronics North America
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`- 2 -
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`IPR2018-00682
`U.S. Patent No. 6,931,084
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`Corp., IPR2013-00609, is similarly misplaced because, unlike there, Holdings and
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`Liberty are not accused of infringing the challenged patent and there is no evidence
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`that “the non-party possesse[s] effective control from a practical standpoint.” Zoll,
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`Paper 15 at 10; see also Ex. 1018, ¶¶ 10-15. Indeed, this is not a situation where a
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`non-party is litigating through a proxy. Daifuku at 7 (RPI “requirement exists to
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`ensure that a non-party is not ‘litigating through a proxy’”). There is also no
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`evidence of blurring the lines between Radio and Holdings or Liberty of the type
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`found in Atlanta Gas Light. There, the petitioner’s officer and its parent conducted
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`negotiations with the patent owner in the related litigation, represented himself as
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`an officer of the parent, and the parent may have paid the IPR filing and attorney
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`fees. Atlanta Gas Light, IPR2013-00453, Paper No. 88 at 9-10. No such evidence
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`is provided here (because none exists) connecting Radio with Liberty and Holdings
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`and therefore neither is an RPI.
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`If the Board considers Holdings and/or Liberty to be RPIs, Petitioner seeks
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`authorization to amend its mandatory notices without changing the Petition’s filing
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`date consistent with the Board’s precedent that the requirements of § 312(a) are not
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`jurisdictional. See, e.g., Lumentum Holdings, Inc. v. Capella Photonics, Inc.,
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`IPR2015-00739, Paper 38 at 5 (precedential opinion). The Board has routinely
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`permitted parties to amend their mandatory notices to name additional RPIs,
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`particularly where no evidence exists of prejudice to PO or any attempt by
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`- 3 -
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`IPR2018-00682
`U.S. Patent No. 6,931,084
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`Petitioner to circumvent the AIA’s time bar or estoppel provisions. See, e.g.,
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`Proppant Express Investments, LLC et al. v. Oren Techs., LLC, IPR2017-02103,
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`Paper 8 at 2-3; RPX Corp. & Vimeo, Inc., v. Link Engine Techs. LLC, IPR2017-
`
`00886, Paper 11 at 4; Rubicon Comms., LP, v. Lego A/S, IPR2016-01187, Paper 40
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`at 5 (allowing RPI “correction” because it would serve “the interests of justice”
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`and “advance the core functions” of the Trial Guide). Here, PO has not suffered
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`and cannot seriously claim any prejudice. Further, Holdings and Liberty are not
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`involved in the related litigation, and thus there are no § 315(b) time bar or §
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`315(e) estoppel concerns. Accordingly, this case falls squarely within those where
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`the Board permits parties to further identify RPIs without changing the filing date.
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`II.
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`PATENT OWNER’S ERRONEOUS VIEW OF THE LAW
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`PO presents an erroneous view of Federal Circuit law relating to applicant’s
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`acquiescence during prosecution. Resp. at 29-34, 48-50. PO does not and cannot
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`dispute that (a) the examiner found all elements of claims 19-21 (corresponding to
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`challenged claims 1-3) unpatentable as obvious and well known in the art; and (b)
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`the applicant made no argument to dispute the examiner’s findings that these
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`claims were present in the prior art. Ex. 1003 at 3-5, 8-23. Where an applicant
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`amends claims with no objection to or statement disputing the examiner’s findings,
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`the public is entitled to view such actions as acquiescence regarding the prior art.
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`Lemelson v. General Mills, Inc., 968 F.2d 1202, 1207–08 (Fed. Cir. 1992)
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`- 4 -
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`IPR2018-00682
`U.S. Patent No. 6,931,084
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`(applicant “cannot acquiesce to a rejection and to an agreed alternative, and now
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`years later shift his stance 180° to argue for a second bite at the abandoned apple”).
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`PO’s discussion of Woods v. DeAngelo Marine Exhaust, Inc., 692 F.3d 1272
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`(Fed. Cir. 2012), and Eli Lilly & Co. v. Teva Pharm. USA, Inc., 619 F.3d 1329,
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`1340 (Fed. Cir. 2010), is wrong. Resp. at 32-34. During prosecution, the
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`applicants in Woods and Eli Lilly raised disputes regarding the examiner’s findings
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`that every rejected claim element was present in the prior art while here, the
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`applicant failed to make a single argument disputing such findings by the
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`examiner. E.g., Petition at 3-5, 24-27; Woods, 692 F.3d at 1287. In both cases, the
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`Federal Circuit reasoned that because the applicant challenged the presence of at
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`least one claim element in the prior art, the applicant’s failure to challenge the
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`other elements would not be “presumed to have conceded the presence in the prior
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`art of every claim limitation he had no reason to dispute.” Id.; accord Eli Lilly,
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`619 F.3d at 1340 (no acquiescence because applicant made several arguments
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`disputing the examiner’s invalidity rejections). Indeed, the court made a clear
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`distinction in Woods between complete silence and challenging some, but not all,
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`rejections in determining applicant’s concessions. Id. Thus, applicant should be
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`found to have acquiesced. Even if not found to have acquiesced, all of the
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`limitations are found in the prior art for the reasons explained in the Petition.
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`IPR2018-00682
`U.S. Patent No. 6,931,084
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`Respectfully submitted,
`
`
`
`
`
`/Jonathan S. Caplan/
`
`Jonathan S. Caplan (Reg. No. 38,094)
`Mark Baghdassarian (pro hac vice)
`Shannon Hedvat (Reg. 68,417)
`Jeffrey H. Price (Reg. No. 69,141)
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Tel: 212.715.9488
`
`Dated: June 28, 2018
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`
`
`(Case No. IPR2018-00682)
`
`Attorneys for Petitioner
`Sirius XM Radio Inc.
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`- 6 -
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`CERTIFICATE OF SERVICE
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`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 Petitioner’s Reply to Patent Owner’s Preliminary
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`Response, and Exhibit thereto, was served on June 28, 2018, by filing this
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`document through the PTAB E2E System as well as delivering via electronic mail
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`upon the following counsel of record for Patent Owner:
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`
`
`
`
`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
`
`
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`- 1 -
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