`
`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 IPR2018-00689
`Patent No. 6,993,084
`
`__________________________________________________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE
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`
`
`
`
`
`
`TABLE OF CONTENTS
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`IPR2018-00689
`U.S. Patent No. 6,993,084
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`Page
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`I.
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`Sirius XM Properly Identified The Real Parties in Interest ............................ 1
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`i
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`IPR2018-00689
`U.S. Patent No. 6,993,084
`
`TABLE OF AUTHORITIES
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` Page(s)
`
`PTAB Cases
`Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc.
`IPR2013-00453, Paper 88 (PTAB Jan. 6, 2015) .................................................. 4
`
`Daifuku Co., Ltd. et al. v. Murata Machinery, Ltd.,
`IPR2015-01538, Paper 11 (PTAB Jan. 19, 2016) ........................................ 2, 3, 4
`
`Galderma S.A. et al. v. Allergan Industrie, SAS, et al,
`IPR2014-01422, Paper 14 (PTAB Mar. 5, 2015) ................................................. 2
`
`Lumentum Holdings, Inc. et al. v. Capella Photonics, Inc.,
`IPR2015-00739, Paper 38 (PTAB Mar. 4, 2016) ................................................. 4
`
`Proppant Express Investments, LLC et al. v. Oren Techs., LLC,
`IPR2017-02103, Paper 8 (PTAB Jan. 10, 2018) .................................................. 5
`
`RPX Corp. & Vimeo, Inc., v. Link Engine Techs. LLC,
`IPR2017-00886, Paper 11 (PTAB Aug. 18, 2017) ............................................... 5
`
`Rubicon Comms., LP, v. Lego A/S,
`IPR2016-01187, Paper 40 (PTAB Dec. 16, 2016) ............................................... 5
`
`Zoll Lifecor Corp. v. Philips Electronics North America Corp. et al.,
`IPR2013-00609, Paper 15 (PTAB Mar. 20, 2014) ........................................... 3, 4
`
`
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`- ii -
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`
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`IPR2018-00689
`U.S. Patent No. 6,993,084
`
`EXHIBIT LIST
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`EXHIBIT NO.
`
`DESCRIPTION
`
`Exhibit 1025 Declaration of Patrick L. Donnelly
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`- iii -
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`
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`IPR2018-00689
`U.S. Patent No. 6,993,084
`
`I.
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`SIRIUS XM PROPERLY IDENTIFIED THE REAL PARTIES IN
`INTEREST
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`Sirius XM Radio Inc. (“Radio”) properly named all real parties in interest
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`(“RPIs”) in its Petition. Patent Owner dedicates almost half of its Preliminary
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`Response to erroneously claim that Radio failed to identify all RPIs in its Petition.
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`Paper 7 (“Resp.”) at 4-5, 8-28. As explained below, there is no basis for Patent
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`Owner’s position. However, even if the Board concluded that additional entities
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`should be identified, the instant case is the exact scenario where the Board permits
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`parties to further identify RPIs without any effect on the filing date of the Petition.
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`As explained in the accompanying declaration of Mr. Patrick L. Donnelly,
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`Radio’s Executive Vice President, General Counsel and Secretary, Sirius XM
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`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 in any way. Ex. 1025 at ¶¶ 3-15.
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`Moreover, Holdings is a non-operational holding company and owns all the issued
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`and 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. at ¶¶ 3-4, 7-9. Under these circumstances, the Board’s precedent clearly shows
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`that such entities do not qualify as RPIs.
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`- 1 -
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`IPR2018-00689
`U.S. Patent No. 6,993,084
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`Indeed, these facts align squarely with Daifuku Co., Ltd., et al. v. Murata
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`Machinery, Ltd., IPR2015-01538. In that case, the Board found that “a ‘holding
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`company that merely holds ownership of its subsidiaries and conducts no
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`independent operations’” was found not to be an RPI. Daifuku, Paper 11 at 8–9
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`(“The exercise or availability of general ‘control’ that stock ownership vests in
`
`stockholders…will not make one company a real party in interest of the other.”).
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`Like in Daifuku, Patent Owner’s evidence here, at best, only “establishes a [stock
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`ownership] relationship between parties and does not establish a relationship
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`between Holdings and this proceeding.” Id. at 11. Moreover. Mr. Donnelly has
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`confirmed that neither Holdings nor Liberty has had or will have any involvement
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`in these proceedings and they only have a stock ownership interest in Radio. Ex.
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`1025 at ¶¶ 5, 7, 10-15.
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`Patent Owner’s reliance on Galderma S.A. v. Allergan Industrie, SAS,
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`IPR2014-01422, suggesting that an RPI is one that “has the power to ‘call the
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`shots’” (Resp. at 24) is misleading as the Board in Daifuku explained that this is
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`not the “complete legal principle.” Daifuku at 11. Rather, the “evidence as a
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`whole must establish that the nonparty possessed effective control over a party’s
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`conduct…as measured from a practical, as opposed to a purely theoretical,
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`standpoint.” Id. Examples of such practical control include “where a liability
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`insurer assumes the insured’s defense; where an indemnitor participates in
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`- 2 -
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`IPR2018-00689
`U.S. Patent No. 6,993,084
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`defending an action brought against the indemnitee; and where the owner of a
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`close corporation assumes control of litigation brought against the firm.” Id. Here,
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`neither Holdings nor Liberty has any such “practical control” of Radio because
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`neither controls Radio’s business activities nor has had any involvement in these
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`proceedings as Mr. Donnelly has confirmed. Ex. 1025 at ¶¶ 3-15.
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`Patent Owner’s arguments focus on extrapolating generalities to demonstrate
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`theoretical control based on, for example, the entities having common addresses
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`and overlapping officers disconnected from these proceedings. Resp. at 8-25.
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`Such arguments fail as the Board’s precedent confirms. Daifuku at 10–11
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`(“[E]vidence of a common address and telephone number, substantial overlap of
`
`officers, and the other evidence on which Patent Owner relies, establishes a
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`relationship between parties; it does not establish a relationship between Daifuku
`
`Holdings and this proceeding.”). Patent Owner has not because it cannot present
`
`any evidence tying Holdings or Liberty to these proceedings. The direct evidence
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`confirms that neither Holdings nor Liberty has had or will have any involvement in
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`these proceedings. Ex. 1025 at ¶¶ 11-15.
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`Further revealing Patent Owner’s tenuous position is its reliance on e-mail
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`communications between Mr. Donnelly and Patent Owner’s counsel. Resp. at 19.
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`The pre-suit e-mail from Patent Owner’s counsel (Ex. 2030) is clearly directed to
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`Mr. Donnelly at Radio because the underlying agreement between the parties is
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`- 3 -
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`IPR2018-00689
`U.S. Patent No. 6,993,084
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`between Radio and Patent Owner, as Fraunhofer’s complaint in the underlying
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`litigation confirms. Ex. 2002 at ¶¶ 23, 26. This understanding is further confirmed
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`by the undisputed fact that Patent Owner sued Radio, not Holdings. Accordingly,
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`this e-mail correspondence only further supports that Holdings is not an RPI.
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`Moreover, Patent Owner’s reliance on Zoll Lifecor Corp. v. Philips
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`Electronics North America Corp., IPR2013-00609, is similarly misplaced because,
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`unlike there, Holdings and Liberty are not accused of infringing the challenged
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`patent and there is no evidence that “the non-party possesse[s] effective control
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`from a practical standpoint.” Zoll, Paper 15 at 10; see also Ex. 1025 at ¶¶ 10-15.
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`Indeed, this is not a situation where a non-party is litigating through a proxy,
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`confirming that neither Holdings nor Liberty is an RPI. Daifuku at 7 (RPI
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`“requirement exists to ensure that a non-party is not ‘litigating through a proxy’”).
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`There is also no evidence of blurring the lines between Radio and Holdings
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`or Liberty of the type found in Atlanta Gas Light as Patent Owner erroneously
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`suggests in its Response. 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. Indeed, all evidence is to the contrary. Ex. 1025 at
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`- 4 -
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`IPR2018-00689
`U.S. Patent No. 6,993,084
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`¶¶ 4-15.
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`Notwithstanding the foregoing, if the Board considers Holdings and/or
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`Liberty to be RPIs, Petitioner seeks authorization to amend its mandatory notices
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`without changing the Petition’s filing date consistent with the Board’s precedent
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`that the requirements of § 312(a) are not jurisdictional. See, e.g., Lumentum
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`Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739, Paper 38 at 5
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`(precedential opinion). The Board has routinely permitted parties to amend their
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`mandatory notices to name additional RPIs, particularly where no evidence exists
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`of prejudice to Patent Owner or of any attempt by Petitioner to circumvent the
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`AIA’s time bar or estoppel provisions. See, e.g., Proppant Express Investments,
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`LLC et al. v. Oren Techs., LLC, IPR2017-02103, Paper 8 at 2-3; RPX Corp. &
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`Vimeo, Inc., v. Link Engine Techs. LLC, IPR2017-00886, Paper 11 at 4; Rubicon
`
`Comms., LP, v. Lego A/S, IPR2016-01187, Paper 40 at 5 (allowing RPI
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`“correction” because it would serve “the interests of justice” and “advance the core
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`functions” of the Trial Guide). Here, Patent Owner has not suffered and cannot
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`seriously claim any prejudice. Further, Holdings and Liberty are not involved in
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`the related litigation, and thus there are no § 315(b) time bar or § 315(e) estoppel
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`concerns. Accordingly, this case falls squarely within those where the Board
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`permits parties to further identify RPIs without changing the filing date.
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`IPR2018-00689
`U.S. Patent No. 6,993,084
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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: August 21, 2018
`
`
`
`(Case No. IPR2018-00689)
`
`Attorneys for Petitioner
`Sirius XM Radio Inc.
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`- 6 -
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`
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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 August 21, 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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