`
`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 IPR2018-00690
`U.S. Patent No. 6,314,289
`__________________________________________________________
`
`PETITIONER’S REQUEST FOR ORAL ARGUMENT
`
`
`
`
`
`Petitioner’s Request for Oral Argument
`IPR2018-00690 (U.S. Patent No. 6,314,289)
`
`Pursuant to 37 C.F.R. § 42.70(a) and the Board’s August 19, 2019,
`
`Scheduling Order (Paper No. 30), Sirius XM Radio Inc. (“Petitioner”) requests an
`
`opportunity to present oral argument regarding the patentability of claims 1–15 and
`
`17–33, and 35 (the “Challenged Claims”) of U.S. Patent No. 6,314,289 (“the ’289
`
`Patent”). The oral argument is scheduled to be held on May 19, 2020. Paper
`
`No. 12 at 10. Without waiving consideration of any issue not identified below,
`
`Petitioner requests one hour to address the following issues:
`
`1.
`
`Issues related to the Board’s Institution Decision and the grounds
`
`instituted in the Decision;
`
`2. Whether Chen alone or in view of Campanella renders claims 1–15,
`
`17–33, and 33 obvious under 35 U.S.C. § 103;
`
`3. Whether Smallcomb anticipates claims 1–6, 8–14, 17–23, 25–32, and
`
`35 under 35 U.S.C. § 102;
`
`4. Whether Smallcomb alone or in view of Campanella renders claims
`
`1–15, 17–33, and 35 obvious under 35 U.S.C. § 103;
`
`Rebuttal of any arguments made by Patent Owner;
`
`Any additional issues on which the Board seeks clarification; and
`
`Response to any issues Patent Owner raises in its Request for Oral
`
`5.
`
`6.
`
`7.
`
`Argument.
`
`1
`
`
`
`Petitioner’s Request for Oral Argument
`IPR2018-00690 (U.S. Patent No. 6,314,289)
`
`Petitioner respectfully reserves the right to supplement and/or amend the
`
`foregoing statement of issues to the extent the Rules permit.
`
`At oral argument, Petitioner requests the use of audio/visual equipment to
`
`display demonstrative exhibits, including the use of a projector and screen.
`
`Dated: April 7, 2020
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/Jonathan S. Caplan/
`
`Jonathan S. Caplan (Reg. No. 38,094)
`Mark Baghdassarian (pro hac vice
`forthcoming)
`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
`
`(Case No. IPR2018-00690)
`
`Attorneys for Petitioner
`Sirius XM Radio Inc.
`
`
`
`
`
`2
`
`
`
`Petitioner’s Request for Oral Argument
`IPR2018-00690 (U.S. Patent No. 6,314,289)
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies, in accordance with 37 C.F.R. § 42.6(e), that
`
`service was made on the Patent Owner as detailed below.
`
`Date of service April 7, 2020
`
`Manner of service Electronic Mail
`(byorks@irell.com; bredjaian@irell.com;
`dmcphie@irell.com; kvakili@irell.com)
`
`
`
`Documents served PETITIONER’S REQUEST FOR ORAL ARGUMENT
`
`Persons Served (Ben J. Yorks; Babak Redjaian; David McPhie; Kamran
`Vakili)
`
`
`
`
`/Jonathan S. Caplan /
`Jonathan S. Caplan
`Registration No. 38,094
`Counsel for Petitioner
`
`3
`
`
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