Vakili, Kamran
`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Your Honors,
`
`Caplan, Jonathan S. <JCaplan@KRAMERLEVIN.com>
`Monday, April 22, 2019 9:23 AM
`trials@uspto.gov
`Baghdassarian, Mark; ~Hedvat, Shannon; Price, Jeffrey H.; McPhie, David; Yorks, Ben;
`Redjaian, Babak; Vakili, Kamran
`IPR2018-00681, -00682, -00689, -00690 - Supplemental Authority
`
`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.
`
`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.
`
`1
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`Fraunhofer Ex 2040-p 1
`Sirius v Fraunhofer
`IPR2018-00689
`
`