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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 IPR2018-00689
`Patent No. 6,993,084
`
`__________________________________________________________
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`PETITIONER’S REQUEST FOR REHEARING
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`Petitioner’s Request for Rehearing
`IPR2017-00689 (U.S. Patent No. 6,993,084)
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`TABLE OF CONTENTS
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`Page
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`I.
`
`II.
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`Introduction ...................................................................................................... 1
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`Legal Standard ................................................................................................. 2
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`III. The Board Should Grant Petitioner’s Request ................................................ 2
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`A.
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`B.
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`The Board Misapprehended Federal Circuit Law ................................. 2
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`The Board Ignored The PTAB’s Precedential Lumentum
`Decision ................................................................................................. 7
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`C.
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`Good Cause Exists to Amend Petitioner’s RPI Designations ............... 9
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`1.
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`2.
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`3.
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`4.
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`Good Cause Exists When There Is No Attempt to
`Circumvent the AIA’s Time Bar and Estoppel Rules .............. 10
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`Good Cause Exists When There Is No Prejudice ..................... 12
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`Good Cause Exists Because Petitioner Made Good Faith
`Arguments That Holdings Is Not An RPI ................................. 13
`
`The Board Erred in Finding No Good Cause for
`Petitioner Not Updating Its RPI Designations .......................... 14
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`D.
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`The Interests of Justice Would be Served by Permitting
`Amendment of the RPI Designations .................................................. 15
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`IV. Relief Requested ............................................................................................ 15
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`i
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`Petitioner’s Request for Rehearing
`IPR2017-00689 (U.S. Patent No. 6,993,084)
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`TABLE OF AUTHORITIES
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` Page(s)
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`Federal Cases
`Applications in Internet Time, LLC, v. RPX Corp.,
`897 F.3d 1336 (Fed. Cir. 2018) ...................................................................passim
`
`Daifuku Co., Ltd., et al. v. Murata Machinery, Ltd.,
`IPR2015-01538, Paper 11 (PTAB Jan. 19, 2016) ................................................ 6
`
`Global Tel*Link Corp. v. Securus Techs., Inc.,
`IPR2015-01225, Paper 44 (PTAB Dec. 14, 2016) ............................................... 6
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`Lumentum Holdings, Inc. v. Capella Photonics, Inc.,
`IPR2015-00739, Paper 38 (PTAB Mar. 4, 2016) ........................................passim
`
`Merck Sharp & Dohme Corp. v. Mayne Pharma Int’l PTY Ltd.,
`IPR2016-01186, Paper 70 (PTAB Dec. 13, 2017) ....................................... 11, 15
`
`Microsoft Corp. v. DataTern, Inc.,
`755 F. 3d 899 (Fed. Cir. 2014) ............................................................................. 5
`
`Mobile Tech, Inc. v. Sennco Sol’ns, Inc.,
`IPR2017-02199, Paper 9 (PTAB Apr. 10, 2018) ................................................. 7
`
`Puzhen Life USA, LLC v. Esip Series 2, LLC,
`IPR2017-02197, Paper 13 (PTAB Apr. 11, 2018) ............................................... 7
`
`Reflectix, Inc. v. Promethean Tech,
`IPR2015-00039, Paper 18 (PTAB Apr. 24, 2015) ............................................. 13
`
`Rubicon Comms., LP, v. Lego,
`IPR2016-01187, Paper 40 (PTAB Dec. 16, 2016) ................................. 11, 13, 15
`
`Star Fruits S.N.C. v. U.S.,
`393 F. 3d 1277 (Fed. Cir. 2005) ....................................................................... 3, 9
`
`Wi-Fi One, LLC, v. Broadcom Corp,
`878 F.3d 1364 (Fed. Cir. 2018) ........................................................................ 8, 9
`
`ZOLL Lifecor Corp. v. Philips Elecs. N. Am. Corp.,
`Case IPR2013-00606, Paper 13 (PTAB Mar. 20, 2014) .................................. 8, 9
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`ii
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`Petitioner’s Request for Rehearing
`IPR2017-00689 (U.S. Patent No. 6,993,084)
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`Federal Statutes
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`35 U.S.C. § 312(a) ............................................................................................. 1, 7, 9
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`35 U.S.C. § 315(b) ........................................................................................... 5, 9, 10
`
`Rules
`
`Fed. R. Civ. P. 7.1 .................................................................................................... 12
`
`Regulations
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`37 C.F.R. § 42.1(b) .................................................................................................. 12
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`37 C.F.R. § 42.11 ............................................................................................... 14, 15
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`37 C.F.R. § 42.71(c) ................................................................................................... 2
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`37 C.F.R. § 42.71(d) .................................................................................................. 2
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`37 C.F.R. § 42.71(d)(2) .............................................................................................. 2
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`iii
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`Petitioner’s Request for Rehearing
`IPR2017-00689 (U.S. Patent No. 6,993,084)
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`
`INTRODUCTION
`On September 21, 2018, the Board denied institution of inter partes review
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`I.
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`of U.S. Patent No. 6,993,084 (“the ‘3084 Patent”), finding that “Petitioner has not
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`satisfied its burden of establishing that Holdings has been properly omitted as an
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`RPI in this proceeding.” Paper 11 (the “Decision”).1 Petitioner respectfully
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`requests that the Board grant this Request for Rehearing (the “Request”) and
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`consider the merits of the Petition for several reasons.
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`First, the Board misapprehended the Federal Circuit’s decision in
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`Applications in Internet Time, LLC, v. RPX Corp., 897 F.3d 1336 (Fed. Cir. 2018)
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`(“RPX”) by ignoring the two critical questions that lie at the heart of the RPI
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`inquiry. Had the Board conducted the full inquiry outlined by the Federal Circuit,
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`Holdings would not be considered an RPI.
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`Second, the Board ignored the PTAB’s precedential decision in Lumentum
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`Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739, Paper 38 (Mar. 4,
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`2016), which explains that 35 U.S.C. § 312(a) is not jurisdictional and makes an
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`error under § 312(a) rectifiable. Rather than follow this precedential opinion, the
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`Board incorrectly relied on decisions that pre-date and are inconsistent with
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`1 The Board did not address whether Liberty Media Corp. is an RPI. However, the
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`arguments presented herein with respect to Holdings apply to Liberty as well.
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`1
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`Petitioner’s Request for Rehearing
`IPR2017-00689 (U.S. Patent No. 6,993,084)
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`Lumentum. The Board’s post-Lumentum decisions consistently permit a petitioner
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`to amend its disclosures to correct any issues with the disclosed RPIs without
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`changing the filing date of the original petition.
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`Third, the Board overlooked factors and rejected Petitioner’s arguments that
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`good cause exists for, and that the interests of justice would be served by,
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`permitting Petitioner to rectify its good faith decision not to list Holdings as an RPI
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`without changing the original petition’s filing date.
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`II. LEGAL STANDARD
`“A party dissatisfied with a decision may file a request for rehearing without
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`prior authorization from the Board” and must “specifically identify all matters the
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`party believes the Board misapprehended or overlooked, and the place where each
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`matter was previously addressed in a motion, an opposition, or a reply.” 37 C.F.R.
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`§ 42.71(d). “When rehearing a decision on petition, a panel will review the
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`decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). This Request is timely
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`filed within 30 days from the Decision. 37 C.F.R. § 42.71(d)(2).
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`III. THE BOARD SHOULD GRANT PETITIONER’S REQUEST
`A. The Board Misapprehended Federal Circuit Law
`In finding that Holdings is an RPI, the Board applied a test whereby “the
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`RPI inquiry includes the ‘opportunity to control that might reasonably be expected
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`between two formal coparties,’ and takes into account both equitable and practical
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`considerations, with an eye toward determining whether the non-party is a clear
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`2
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`Petitioner’s Request for Rehearing
`IPR2017-00689 (U.S. Patent No. 6,993,084)
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`beneficiary that has a preexisting, established relationship with the Petitioner.”
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`Decision at 5. The Board, however, incorrectly omitted the “two questions”
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`identified by the Federal Circuit that lie at the heart of the inquiry:
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`Indeed, the Trial Practice Guide, on which the Board relied, suggests
`that the agency understands the “fact-dependent” nature of this
`inquiry, explaining that the two questions lying at its heart are [1]
`whether a non-party “desires review of the patent” and [2]
`whether a petition has been filed at a nonparty’s “behest.” Trial
`Practice Guide, 77 Fed. Reg. at 48,759.
`
`RPX at 1351 (emphasis added).
`
`This omission constitutes an abuse of discretion and warrants reversal of the
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`Decision. Star Fruits S.N.C. v. U.S., 393 F. 3d 1277, 1281 (Fed. Cir. 2005) (“An
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`abuse of discretion occurs where the decision is based on an erroneous
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`interpretation of the law….”). Indeed, by ignoring these two questions, the
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`Decision, like in RPX, “was impermissibly shallow, both under the Trial Practice
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`Guide and the common law it incorporates.” RPX at 1351. As explained below,
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`consideration of these questions in light of the evidence before the Board
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`demonstrates that Holdings is not an RPI.
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`First, there can be no dispute that the Petition was not filed at the “behest”
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`of Holdings. Behest means “an authoritative order” or “an urgent prompting.” See
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`Merriam-Webster Dictionary, www.merriam-webster.com/dictionary/behest.
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`3
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`Petitioner’s Request for Rehearing
`IPR2017-00689 (U.S. Patent No. 6,993,084)
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`Here, Petitioner’s Reply provided un-rebutted testimony from its General Counsel,
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`Patrick L. Donnelly, explaining that Holdings (1) did not “direct or control
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`business activities and operations of Radio”; (2) has not “directed, controlled,
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`funded (e.g., PTO or legal fees) or otherwise been involved in these proceedings in
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`any way”; and (3) has not participated in or exercised any control over the decision
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`to file or the content of the petition in this proceeding.” Paper 8 (“Reply”) at 1
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`(citing Ex. 1025 at ¶¶ 3-15). By ignoring the first key question under RPX, the
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`Board overlooked the fact that Mr. Donnelly’s un-rebutted testimony categorically
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`showed that the Petition was not filed at the behest of Holdings. Importantly,
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`Patent Owner did not produce contradictory evidence, request further discovery on
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`this issue, or otherwise contest the accuracy of his testimony.
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`Second, Holdings is not the party that “desires review of the patent.” RPX,
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`at 1351. Notably, the Federal Circuit in RPX found that the question of whether a
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`party “desires review of the patent” turns in large part on whether that party “is
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`accused of infringing the… Patent.” RPX at 1354. Holdings is not a party to the
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`underlying district court litigation, and Mr. Donnelly’s un-rebutted testimony
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`confirms that Holdings has not been sued for infringement of the ‘3084 Patent and
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`indeed has no operations that would put it at risk of being accused of infringement.
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`Reply at 4; Ex. 1025 at ¶¶ 4, 11 (“Holdings is a non-operational holding company”
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`and “Fraunhofer did not sue Holdings or Liberty [] for patent infringement on the
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`4
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`Petitioner’s Request for Rehearing
`IPR2017-00689 (U.S. Patent No. 6,993,084)
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`Asserted Patents and neither Holdings nor Liberty [] could be sued for allegedly
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`infringing the Asserted Patents.”). By contrast, only Petitioner (Radio) could
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`conceivably face liability for infringing the patent. Id. Accordingly, the answer to
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`the second critical question under RPX confirms that Holdings is not an RPI.
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`The Board also ignored the portion of the Federal Circuit’s instructions that
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`an RPI analysis should consider and ensure that a patent owner is not subject to
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`“later judicial or administrative attacks on the same or related grounds by a party
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`that is so closely related to the original petitioner as to qualify as a real party in
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`interest.” RPX at 1350. Under this part of the inquiry, Holdings cannot be an RPI
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`as it would lack standing to bring or maintain a declaratory judgment under the
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`‘3084 Patent against Patent Owner because it could not be sued for infringement as
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`it has no business operations where it operates or could operate an allegedly
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`infringing product or service. Ex. 1025 at ¶ 4; see also Microsoft Corp. v.
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`DataTern, Inc., 755 F. 3d 899, 903 (Fed. Cir. 2014) (citing MedImmune, Inc. v.
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`Genentech, Inc., 549 U.S. 118, 127 (2007)). Nor could Holdings now maintain an
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`inter partes review of the ‘3084 Patent because Radio, the actual RPI, would be
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`time barred under 35 U.S.C. § 315(b).
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`Moreover, the Decision, in finding that Holdings is an RPI, incorrectly relied
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`on a rubric that “actual control is not the only measure for determining an unnamed
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`RPI” and “[i]nstead, the RPI inquiry includes ‘the opportunity to control that might
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`5
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`Petitioner’s Request for Rehearing
`IPR2017-00689 (U.S. Patent No. 6,993,084)
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`reasonably be expected between two formal coparties . . . .” Decision at 5. In so
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`doing, the Board violated the PTAB’s case law in two respects.
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`First, by relying on an “opportunity to control” analysis, the Board found
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`Holdings to be an RPI based on “Holdings’ full ownership of Petitioner, its
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`identical management composition, and evidence of its past control in legal matters
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`involving Petitioner control [unrelated to the instant Petition].” Decision at 6.
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`This analysis misapprehends the Board’s prior rulings, as Petitioner explained in
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`its Reply, that require a clear link between the non-party (i.e., Holdings) and this
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`specific proceeding. Global Tel*Link Corp. v. Securus Techs., Inc., IPR2015-
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`01225, Paper 44 at 12 (“The inquiry is focused on the relationship of the party to
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`the proceeding at issue; demonstrating a relationship between the parties is not
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`sufficient.” (emphasis added)). Here, Mr. Donnelly’s testimony confirmed that
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`Holdings had absolutely no involvement in these proceedings. Ex. 1025 at ¶¶ 13-
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`15. At best, the Board found Holdings exercised some past control over other
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`unrelated legal proceedings based on general statements in publicly filed
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`documents. That fails to satisfy the link required to these proceedings.
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`Second, the Board misapprehended case law that a mere parent-subsidiary
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`relationship, including through stock ownership by an entity with no independent
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`operations, is not sufficient to mark a party an RPI. Daifuku Co., Ltd., et al. v.
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`Murata Machinery, Ltd., IPR2015-01538, Paper 11 at 8-9 (2016) (“The exercise or
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`6
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`Petitioner’s Request for Rehearing
`IPR2017-00689 (U.S. Patent No. 6,993,084)
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`availability of general ‘control’ that stock ownership vests in stockholders, such as
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`in… parent-subsidiary relationships… will not make one company a [RPI] of the
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`other.” (citations omitted); Mobile Tech, Inc. v. Sennco Sol’ns, Inc., IPR2017-
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`02199, Paper 9 (PTAB 2018) (McGraw, APJ) (same); Puzhen Life USA, LLC v.
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`Esip Series 2, LLC, IPR2017-02197, Paper 13 (PTAB, 2018) (Kaiser, APJ) (same).
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`Notably, the Board’s analysis would violate this case law because any parent
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`holding company would be an RPI as it would have an “opportunity to control” its
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`subsidiary. Here, even if Holdings’ stock ownership may allow it to have an
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`opportunity to control Radio, that is insufficient to make it an RPI, particularly in
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`light of Mr. Donnelly’s unrebutted testimony that Holdings has no independent
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`operations and had, and would have, no involvement in these proceedings. Reply
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`at 1-2; Ex. 1025 at ¶¶ 5, 7, 10-15.
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`The Board Ignored The PTAB’s Precedential Lumentum Decision
`B.
`If the Board disagrees that Holdings is not an RPI for the reasons described
`
`in Section III.A., Petitioner requests that the Board reconsider the Decision and
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`permit Petitioner to rectify its RPI designations under the PTAB’s precedential
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`Lumentum decision. Lumentum supported Petitioner’s request for “authorization to
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`amend its mandatory notices without changing the Petition’s filing date consistent
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`with the Board’s precedent that the requirements of § 312(a) are not jurisdictional.”
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`Reply at 5; Lumentum at 5 (“Simply stated, § 312(a) sets forth requirements that
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`7
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`Petitioner’s Request for Rehearing
`IPR2017-00689 (U.S. Patent No. 6,993,084)
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`must be satisfied for the Board to give consideration to a petition, however, a lapse
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`in compliance with those requirements does not deprive the Board of jurisdiction
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`over the proceeding, or preclude the Board from permitting such lapse to be
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`rectified.”).
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`Indeed, the Federal Circuit has positively cited to Lumentum to support its
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`view that the RPI designation is a “‘minor statutory technicality’… merely about
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`preliminary procedural requirements that may be corrected if they fail to reflect
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`real-world facts” and explained its reasoning as follows:
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`For example, if a petition fails to identify all real parties in
`interest under § 312(a)(2), the Director can, and does, allow the
`petitioner to add a [RPI]. See, e.g., Intel Corp. v. Alacritech, Inc.,
`No. IPR2017-01392, Paper No. 11, at 23 (P.T.A.B. [] 2017); Elekta,
`Inc. v. Varian Medical Sys., Inc., No. IPR2015–01401, 2015 WL
`9898990, at *4, *6 (P.T.A.B. [] 2015). For this reason, the PTO has
`established procedures to rectify noncompliance of § 312(a)(2).
`Lumentum Holdings, Inc. v. Capella Photonics, Inc., No. IPR2015-
`00739, 2016 WL 2736005, at *3 (P.T.A.B. [] 2016) (precedential); 37
`C.F.R. §§ 42.8(a)(3), 42.8(b)(1). In contrast, if a petition is not filed
`within a year after a [RPI], or privy of the petitioner is served with a
`complaint, it is time-barred by § 315(b), and the petition cannot be
`rectified and in no event can IPR be instituted.
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`Wi-Fi One, LLC, v. Broadcom Corp, 878 F.3d 1364, 1374 n.9 (Fed. Cir. 2018)
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`(emphasis added).
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`8
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`Petitioner’s Request for Rehearing
`IPR2017-00689 (U.S. Patent No. 6,993,084)
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`The Board overlooked Petitioner’s reliance on Lumentum and, instead,
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`followed ZOLL Lifecor Corp. v. Philips Elecs. N. Am. Corp., Case IPR2013-
`
`00606, for the proposition that the proper designation of an RPI is a “‘threshold
`
`issue’ for substantive review of the merits of the challenges presented in the
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`Petition.” Decision at 3. But ZOLL pre-dates Lumentum and the Federal Circuit’s
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`Wi-Fi One decision.2 Notably, the Board gave no basis for ignoring Lumentum
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`decision in favor of an older and inconsistent decision and therefore was an abuse
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`of discretion. Star Fruits S.N.C., 393 F. 3d at 1281.
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`In short, 35 U.S.C. § 312(a) is not jurisdictional and does not, on its own,
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`warrant denying inter partes review under Lumentum and Wi-Fi One.
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`Accordingly, Petitioner requests that it be permitted to amend its RPI designations
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`without changing the original filing date of the Petition.
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`C. Good Cause Exists to Amend Petitioner’s RPI Designations
`The Board stated that Petitioner “does not offer any good cause for its
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`omission of Holdings, and has not actually amended its mandatory notices to
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`include Holdings as an RPI.” Decision at 7. To the contrary, the Board
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`2 In fact, every case Patent Owner used to argue that Petitioner’s “RPI disclosure is
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`not curable” pre-dated the Lumentum decision. Paper 15 (“Sur-Reply”) at 5. In
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`contrast, Petitioner relied on cases post-Lumentum. Reply at 5 (collecting cases).
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`9
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`Petitioner’s Request for Rehearing
`IPR2017-00689 (U.S. Patent No. 6,993,084)
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`overlooked the good cause Petitioner has shown.
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`1. Good Cause Exists When There Is No Attempt to
`Circumvent the AIA’s Time Bar and Estoppel Rules
`
`Petitioner’s Reply specifically explained that “[t]he Board has routinely
`
`permitted parties to amend their mandatory notices to name additional RPIs,
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`particularly where no evidence exists… of any attempt by Petitioner to
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`circumvent the AIA’s time bar or estoppel provisions” because, as confirmed
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`by Mr. Donnelly’s testimony, Holdings is “not involved in the related litigation,
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`and thus there are no § 315(b) time bar or § 315(e) estoppel concerns.” Reply at 5.
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`Here, Holdings has not been served with a complaint for infringement of the ‘3084
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`Patent that would implicate the time bar under 35 U.S.C. § 315(b) and Radio
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`timely filed its Petition. Therefore, there has been no attempt to circumvent the
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`AIA’s time bar. Reply at 2, 5; Ex. 1025 at ¶ 11.
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`Similarly, there was no attempt to circumvent the AIA’s estoppel rules.
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`More specifically, the statutory rules would not permit Holdings to file a petition
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`after Petitioner (Radio), an undisputed RPI, had already filed a Petition and the
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`time for Petitioner to file a petition has passed. Where, as here, there is no attempt
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`to avoid estoppel, the Board has found good cause to allow a Petitioner to amend
`
`its RPI designations without changing the petition’s original filing date:
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`On the current record, we are not persuaded that Petitioner has
`attempted to circumvent estoppel rules, or that Patent Owner has
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`10
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`Petitioner’s Request for Rehearing
`IPR2017-00689 (U.S. Patent No. 6,993,084)
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`yet suffered any prejudice from the omission of Smallworks, LLC as a
`real party-in-interest. In view of this, we determine that allowing
`the requested correction would be in the interests of justice and
`would advance the core functions described in the Trial Practice
`Guide for the real party-in-interest requirement. Additionally, we
`determine that allowing the requested correction would also promote
`“the just, speedy, and inexpensive resolution of our proceedings.” 37
`C.F.R. § 42.1. Accordingly, we exercise our discretion to allow
`Petitioner to file a corrected Petition listing Smallworks, LLC as a
`real party-in-interest, without changing the June 10, 2016 filing
`date of the Petition. See 37 C.F.R. §§ 42.5(b), (c)(3).
`
`Rubicon Comms., LP, v. Lego, IPR2016-01187, Paper 40 at 5 (emphasis added);
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`see also Merck Sharp & Dohme Corp. v. Mayne Pharma Int’l PTY Ltd., IPR2016-
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`01186, Paper 70 at 5 (“Absent any indication of an attempt to circumvent
`
`estoppel rules, a petitioner’s bad faith, or prejudice to a patent owner caused by
`
`the delay, permitting a petitioner to amend a challenged RPI disclosure while
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`maintaining the original filing date promotes the core functions described in the
`
`Trial Practice Guide, while also promoting ‘the just, speedy, and inexpensive
`
`resolution of our proceedings.’ 37 C.F.R. § 42.1(b).”) (emphasis added).
`
`Notably, Patent Owner’s Sur-Reply misled the Board by making up a
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`baseless argument that “Petitioner SXM chose to withhold disclosure of real
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`parties-in-interest [] Holdings and Liberty [] from its Petition on the rationale that
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`those closely related parties should be free to file subsequent petitions as needed
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`11
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`Petitioner’s Request for Rehearing
`IPR2017-00689 (U.S. Patent No. 6,993,084)
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`without any ‘§ 315(e) estoppel concerns.’” Sur-Reply at 1. No evidence supported
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`this contention and Mr. Donnelly’s declaration directly contradicted it. Reply at 1-
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`5. Moreover, as noted, the statutory rules expressly would prohibit Holdings from
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`filing such a petition because the deadline for Radio to file a petition passed.
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`Accordingly, good cause exists to permit Petitioner to amend its RPI designations.3
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`2. Good Cause Exists When There Is No Prejudice
`Petitioner also argued that good cause exists to permit amendment of the
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`RPI designations without changing the filing date of the Petition because Patent
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`Owner would not be prejudiced by the amendment. Reply at 5. Patent Owner, in
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`response, did not dispute this lack of prejudice.
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`While the Board referenced Petitioner’s prejudice argument (Decision at 7),
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`the Board did not appreciate that a lack of prejudice alone constitutes good cause
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`to permit Petitioner to amend its RPI designations based on prior Board decisions.
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`3 Patent Owner further erroneously suggested in its Sur-Reply that Petitioner’s
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`disclosure of Holdings in the district court litigation shows that it intentionally hid
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`Holdings as an RPI. However, the district court rule under Fed. R. Civ. P. 7.1
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`requires a party to identify “any parent corporation and any publicly held
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`corporation owning 10% or more of its stock.” This stock ownership is very
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`different than the analysis for an RPI under the Federal Circuit’s RPX case.
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`12
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`Petitioner’s Request for Rehearing
`IPR2017-00689 (U.S. Patent No. 6,993,084)
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`See, e.g., Rubicon at 5 (“On the current record, we are not persuaded that Petitioner
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`has attempted to circumvent estoppel rules, or that Patent Owner has yet suffered
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`any prejudice from the omission of Smallworks, LLC as a real party-in-interest.”
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`(emphasis added)). Because Patent Owner concedes that no prejudice exists, good
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`cause exists to permit Petitioner to amend its RPI designations.
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`3. Good Cause Exists Because Petitioner Made Good Faith
`Arguments That Holdings Is Not An RPI
`
`Petitioner’s Reply used four of its allotted five pages presenting its good-
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`faith argument that Holdings should not be considered an RPI. See Reply at 1–4.
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`The Board overlooked that these good-faith arguments support a finding of good
`
`cause to permit Petitioner to amend its RPI designations. See Reflectix, Inc. v.
`
`Promethean Tech, IPR2015-00039, Paper 18 at 15 (2015) (finding that good cause
`
`to excuse the late identification of an RPI exists where Petitioner’s “incorrect RPI
`
`determination was… objectively reasonable.”). Petitioner explained that it fully
`
`considered the Board’s jurisprudence and concluded that Holdings was not an RPI
`
`for the reasons described in Section III.A, supra, and Petitioner’s Reply.
`
`Moreover, if the Board’s jurisprudence on the RPI issue has changed
`
`because of RPX, such that any non-party having an “established relationship with
`
`the petitioner” that could conceivably benefit from an inter partes review of a
`
`patent is now considered a per se RPI, that intervening change itself weighs in
`
`favor of finding good cause to allow Petitioner to amend its RPI designations.
`
`13
`
`
`
`Petitioner’s Request for Rehearing
`IPR2017-00689 (U.S. Patent No. 6,993,084)
`
`
`
`4.
`
`The Board Erred in Finding No Good Cause for Petitioner
`Not Updating Its RPI Designations
`
`Despite demonstrating good cause to allow the amendment of its RPI
`
`designations, the Board faulted Petitioner for having “not actually amended its
`
`mandatory notices to include Holdings as an RPI” and for “condition[ing] its
`
`willingness to add Holdings on our finding that the Petition was deficient.”
`
`Decision at 7. However, Petitioner had no reason to update its RPI designations
`
`while the Board was considering evidence and arguments to resolve the question of
`
`whether Holdings is in fact an RPI and while Petitioner sought authorization in its
`
`Reply (at 5) to amend its mandatory notices if the Board deemed Holdings an RPI.
`
`Thus, the Board punished Petitioner for not updating its RPI designations while the
`
`Board considered whether or not Holdings is an RPI, which runs counter to the
`
`Federal Circuit’s guidance. Wi-Fi One, 878 F.3d at 1374 (RPI designations
`
`correctable upon determination that the original designations “fail to reflect real-
`
`world facts”). Petitioner respectfully submits that this was an abuse of discretion.
`
`Notably, if Petitioner had updated its RPI designation during the pendency
`
`of the motion on that issue, Petitioner would have been in violation of its “duty of
`
`candor and good faith to the Office.” 37 C.F.R. § 42.11. Because Petitioner
`
`reasonably maintained in its Reply that Radio was the sole RPI, Petitioner could
`
`not have amended its RPI designations while simultaneously meeting its § 42.11
`
`14
`
`
`
`Petitioner’s Request for Rehearing
`IPR2017-00689 (U.S. Patent No. 6,993,084)
`
`obligations. Accordingly, Petitioner’s decision not to amend its RPI designations
`
`should not weigh against its contingent request to amend.
`
`D. The Interests of Justice Would be Served by Permitting
`Amendment of the RPI Designations
`
`The Board misapprehended and overlooked the arguments and cases cited in
`
`Petitioner’s Reply where the Board found that considering a Petition on the merits
`
`was in the interests of justice in circumstances mirroring those at issue in this case.
`
`Reply at 5 (“The Board has routinely permitted parties to amend their mandatory
`
`notices to name additional RPIs, particularly where no evidence exists of prejudice
`
`to Patent Owner or of any attempt by Petitioner to circumvent the AIA’s time bar
`
`or estoppel provisions.”). Here, as explained, the Board has confirmed this
`
`principle in multiple cases. Reply at 5; Section III.C.1-C.2 supra; Rubicon
`
`Comms. at 5; Merck Sharp at 5. Thus, the Board misapprehended the law and
`
`overlooked Petitioner’s arguments demonstrating that the interests of justice are
`
`served “where no evidence exists of prejudice to Patent Owner or of any attempt
`
`by Petitioner to circumvent the AIA’s time bar or estoppel provisions.” Reply at 5.
`
`IV. RELIEF REQUESTED
`For these reasons, Petitioner respectfully requests that the Board find that
`
`Holdings is not an RPI or permit Petitioner to amend its RPI designations without
`
`changing the Petition filing date and the Board consider the Petition on its merits.
`
`15
`
`
`
`Petitioner’s Request for Rehearing
`IPR2017-00689 (U.S. Patent No. 6,993,084)
`
`Respectfully submitted,
`
`/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 Fax: 212.715.8000
`
`
`
`Dated: October 5, 2018
`
`
`
`(Case No. IPR2018-00689) Attorneys for Petitioner
`
`16
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that a true and
`
`correct copy of the foregoing Request for Rehearing was served on October 5,
`
`2018, by filing this document through the PTAB E2E System as well as delivering
`
`via electronic mail upon the following counsel of record for Petitioner:
`
`
`
`
`
`
`
`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 Fax: 212.715.8000
`
`17
`
`
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