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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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`SIRIUS XM RADIO INC.,
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`Petitioner
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`v.
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`FRAUNHOFER-GESELLSCHAFT ZUR FORDERNUNG DER
`ANGEWANDTEN E.V.,
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`Patent Owner
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`___________
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`Case IPR2018-00690
`U.S. Patent No. 6,314,289 B1
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`PATENT OWNER’S OPPOSITION TO
`PETITIONERS MOTION TO EXCLUDE PATENT OWNER’S EVIDENCE
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`Mail Stop: PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Case IPR2018-00690
`U.S. Patent No. 6,314,289
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`Fraunhofer-Gesellschaft zur Fordernung der Angewandten E.V.
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`(“Fraunhofer” or “Patent Owner”) respectfully submits this response in opposition
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`to Sirius XM Radio Inc.’s (“SXM” or “Petitioner”) motion to exclude Patent
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`Owner’s evidence (“SXM Motion” or “Motion”) (Paper 52).
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`Petitioner’s Motion should be denied in its entirety as it is premised on a
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`fatal internal inconsistency. Specifically, Petitioner argues that the Board should
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`permit the untimely evidence and new issues presented in Petitioner’s Reply but
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`that it should also reject Patent Owner’s efforts to respond to the same in its Sur-
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`Reply. This argument cannot be correct; on this point, the Board’s Consolidated
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`Trial Practice Guide (November 2019 edition) (“TPG”) treats replies and sur-
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`replies the same: “While replies and sur-replies can help crystalize issues for
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`decision, a reply or sur-reply that raises a new issue or belatedly presents evidence
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`may not be considered.” Id. at 74; see also id. at 73 (“Petitioner may not submit
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`new evidence or argument in reply that it could have presented earlier, e.g., to
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`make out a prima facie case of unpatentability”).
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`As Patent Owner demonstrated earlier, the Petition originally filed in this
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`case failed to even attempt to demonstrate that Smallcomb (Ex. 1003) and
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`Campanella (Ex. 1005) might be entitled to the priority dates of their respective
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`provisional applications. This showing was indisputably part of Petitioner’s prima
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`Case IPR2018-00690
`U.S. Patent No. 6,314,289
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`facie burden of production in the first instance. See Dynamic Drinkware, LLC v.
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`Nat’l Graphics, Inc., 800 F.3d 1375, 1379-81 (Fed. Cir. 2015); see also
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`Masterimage 3D, Inc. v. RealD Inc., IPR2015-00035, Paper 79, at 10, 14 (PTAB
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`Apr. 20, 2016) (“[T]he burden of production started with Petitioner and remains
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`with Petitioner to establish that [the cited prior art] is entitled to claim priority to
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`the [] provisional…”). Nevertheless, Petitioner failed to provide any substantive
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`priority analysis in its Petition, and did not even submit the provisional
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`applications themselves (Exs. 1026, 1027) until the filing of its Reply.
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`To the extent that the Board allows the new issues and untimely evidence
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`presented in the Reply, then Patent Owner’s Sur-Reply and supporting material
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`must be allowed as well. Indeed, the subject matter that Petitioner seeks to exclude
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`is directly responsive to the new evidence and arguments regarding the provisional
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`applications that Petitioner improperly presented for the first time in Reply.
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`Accordingly, the Motion should be denied for the reasons detailed further below.
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`I.
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`EXHIBIT 2050
`Petitioner objects to the Declaration of Ernst Eberlein (Ex. 2050)
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`accompanying Patent Owner’s Sur-Reply (Paper 42) on three grounds: (1) that the
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`submission allegedly violates the TPG, specifically that the “sur-reply may not be
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`accompanied by new evidence other than deposition transcripts of the cross-
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`examination of any reply witness,” (2) that it “could have [been] submitted with
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`Case IPR2018-00690
`U.S. Patent No. 6,314,289
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`[the] Patent Owner Response,” and (3) Petitioner will have no “opportunity to
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`respond or investigate through discovery or deposition the veracity of the
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`declaration.” SXM Motion at 2-4.
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`Regarding (1), the TPG states, “While replies and sur-replies can help
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`crystalize issues for decision, a reply or sur-reply that raises a new issue or
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`belatedly presents evidence may not be considered.” TPG at 74. It further states,
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`“Petitioner may not submit new evidence or argument in reply that it could have
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`presented earlier, e.g. to make out a prima facie case of unpatentability.” Id. at 73.
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`As noted in the Patent Owner Response (Paper 34), the Petitioner made no attempt
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`at all to fulfill its burden of production to show that Smallcomb (Ex. 1003), though
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`filed after the effective filing date of the ’289 patent, was entitled to an earlier
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`effective prior art date that might render it prior art to the challenged claims.
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`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379-81 (Fed.
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`Cir. 2015); see also Masterimage 3D, Inc. v. RealD Inc., IPR2015-00035, Paper
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`79, at 10 (PTAB Apr. 20, 2016) (noting “the burden of production is initially on
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`Petitioner” to show a reference “is entitled to the filing date of the [parent]
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`provisional”). The Board highlighted Petitioner’s failure to carry its burden,
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`stating “the Petition does not sufficiently show that the Smallcomb patent is prior
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`art to the ’289 patent.” Paper 29 at 26.
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`Case IPR2018-00690
`U.S. Patent No. 6,314,289
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`Subsequently, as detailed in Patent Owner’s Sur-Reply (Paper 42) and
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`Motion to Exclude Petitioner’s Evidence (Paper 53), Petitioner violated the TPG’s
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`admonition against “submit[ting] new evidence or argument in reply that it could
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`have presented earlier, e.g. to make out a prima facie case of unpatentability” by
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`submitting new evidence (in the form of a Reply expert declaration, and copies of
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`provisional applications related to Smallcomb and Campanella, Exs. 1025-1027)
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`and new arguments, including extensive claim charts, to attempt to make out a
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`prima facie showing that the cited references are prior art for the first time in the
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`Reply. Petitioner sought authorization to strike these untimely arguments by an
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`email to the Board dated February 21, 2020, but the Board denied Patent Owner’s
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`request noting, “[t]he propriety or impropriety of the identified portions of the
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`reply will be addressed, if necessary, in our Final Written Decision.” Paper 39 at
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`3. As a result, Patent Owner was obliged to present arguments and evidence in the
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`Sur-Reply responsive to the new arguments and evidence introduced in the Reply.
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`Despite its own violation of the TPG’s restriction against late presentation of
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`arguments and evidence, Petitioner now asks the Board to exclude Patent Owner’s
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`evidence that was submitted in response to Petitioner’s untimely Reply
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`submissions. Such exclusion would be profoundly prejudicial and is unwarranted
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`U.S. Patent No. 6,314,289
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`here. In fact, there is no justification for excluding Patent Owner’s Sur-Reply
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`evidence that would not also extend to Petitioner’s Reply evidence.
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`Petitioner argues that, because Patent Owner “had every opportunity to
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`submit that evidence in its POR,” its submission in the Sur-Reply is untimely.
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`SXM Motion at 3. This statement is likewise incorrect. Petitioner fundamentally
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`misunderstands the applicable burden of production, which rests squarely on
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`Petitioner to make out a prima facie showing of invalidity in its Petition. Dynamic
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`Drinkware, 800 F.3d at 1379-81; Masterimage 3D, IPR2015-00035, Paper 79, at
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`10. Though Petitioner had every opportunity to submit arguments and evidence
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`pertaining to Smallcomb’s effective prior art date in its Petition, it did not even
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`attempt to do so. Thus, the burden of production never shifted to Patent Owner,
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`particularly as the filing dates for Smallcomb and Campanella are after the filing
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`date of the ’289 patent. Compare Exs. 1003 and 1005 with Ex. 1001. In any
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`event, regardless of whether Petitioner believes Patent Owner could have proved
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`Smallcomb was not prior art in the POR, the fact remains that Petitioner had the
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`burden of production, failed to even attempt to fulfill it, and never shifted the
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`burden to Patent Owner. See Paper 29 at 26 (“[T]he Petition does not sufficiently
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`show that the Smallcomb patent is prior art to the ’289 patent.”).
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`U.S. Patent No. 6,314,289
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`Petitioner’s grievance that it “would not have an opportunity to respond or
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`investigate through discovery or deposition the veracity of the declaration” is
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`similarly unavailing. Patent Owner informed Petitioner that it intended to file
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`additional material responsive to the new issues in the Reply, and Petitioner never
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`requested or indicated a need for further deposition or other discovery. In any
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`event, the consequences of Petitioner’s late presentation of its prima facie case are
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`its own to bear, and highlight the critical importance of the Board’s directive to
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`submit evidence or argument for making a prima facie case of unpatentability in
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`the Petition itself. Petitioner simply failed to do that here.
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`II. EXHIBITS 2051, 2053 AND 2054
`Exs. 2051, 2053 and 2054 are documentary evidence proving the prior
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`conception and reduction to practice of the challenged claims relative to
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`Smallcomb and corroborating the statements to the same effect made in the
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`Eberlein Declaration (Ex. 2050). Petitioner seeks to exclude these materials,
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`alleging they are (1) untimely for the same reasons as Ex. 2050; (2) are not
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`properly authenticated; and (3) are hearsay evidence with no applicable exception.
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`With regard to (1), the same late submission of prima facie evidence in the
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`Reply by the Petitioner prompting the submission of Ex. 2050, as discussed above,
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`also prompted this supporting evidence. Thus, for the same reasons as above, to
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`the extent that Petitioner’s belated presentation of evidence and arguments in the
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`U.S. Patent No. 6,314,289
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`Reply is allowed, this evidence which is responsive to that presentation should not
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`be excluded as untimely.
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`With regard to (2), Petitioner alleges that “Patent Owner has not produced
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`evidence showing who authored these documents or demonstrated with any
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`evidence that each of the documents is what it purports to be.” SXM Motion at 5.
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`In fact, Exs. 2051, 2053 and 2054 all include distinctive characteristics such as
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`author identity, dates, and titles tending to show that the documents are what they
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`are held out to be. Most significantly, all have been specifically identified and
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`authenticated by the author of the documents themselves, Mr. Eberlein, via the
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`Eberlein Declaration. See Ex. 2050 at ¶ 6 (“Exhibit 2051 is a true and correct copy
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`of invention disclosure materials related to that proposal, which were prepared
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`October 1998.”); id. at ¶ 8 (“[D]ocument entitled, ‘Proposal for Puncturing Pattern
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`for 3/7 code,’ which I prepared on or about November 23, 1998. A true and
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`correct copy of this document is attached as Exhibit 2053.”); id. at ¶ 9 (“I also
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`personally prepared the Simulation Plan dated November 9, 1998 that is included
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`here as Exhibit 2054.”). Thus, Petitioner’s allegation that there is no evidence of
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`“who authored these documents” or “that each of the documents is what it purports
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`to be” is simply not correct.
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`U.S. Patent No. 6,314,289
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`Petitioner acknowledges the authenticating declaration of Mr. Eberlein, yet
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`maintains that it is insufficient because “Mr. Eberlein … does not establish any
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`first-hand knowledge of their authenticity[,] … does not established [sic] who
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`prepared them … [and] does not properly establish the date on which this
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`document was prepared …” SXM Motion at 5-6. The authentication requirement
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`is satisfied if the proponent presents “evidence sufficient to support a finding that
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`the item is what the proponent claims it is.” Fed. R. Evid. 901(a). In this case, a
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`declaration from the author himself, who has personal knowledge of the documents
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`and has specifically identified each as a true and correct copy on that basis, has
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`been presented. The Board has previously found “the necessary basis for
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`authentication” to be satisfied where a declarant (not even an author in that case)
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`attested to the source of the exhibits, and the exhibits themselves included
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`“distinctive characteristics” such as “dates, titles, publication names, etc.” Cisco
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`Systems, Inc. v. Centripetal Networks, Inc., IPR2018-01436, Paper 40, at 68
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`(PTAB Jan. 23, 2020). Here, the author himself has attested to the authenticity of
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`the exhibits, which include additional distinctive characteristics that further
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`establish that the documents are what they are held out to be.
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`With regard to (3), Petitioner’s thin allegation of hearsay is rebutted by
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`noting that Exs. 2051, 2053 and 2054 are not testimonial evidence or opinion cited
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`U.S. Patent No. 6,314,289
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`for the truth of what is asserted. Rather, the documents themselves are direct
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`evidence of the prior conception and reduction to practice of the claimed invention,
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`and thus do not qualify as hearsay in the first instance. Cf. Fed. R. Evid. 801(c)
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`(“‘Hearsay’ means a statement that … a party offers in evidence to prove the truth
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`of the matter asserted in the statement.”). Moreover, even if the exhibits were
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`hearsay, which they are not, they should still not be excluded at least because they
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`qualify as business records under Fed. R. Evid. 803(6) inasmuch as they were
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`made at or near the time of the statements, are records of the type kept in the
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`course of regularly conducted activity, and were made as a regular practice of that
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`activity, all of which are shown by the testimony of the author, Mr. Eberlein (Ex.
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`2050). Accordingly, Petitioner’s motion to exclude Exs. 2051, 2053 and 2054
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`should be denied.
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`III. EXHIBITS 2052 AND 2055
`Petitioner similarly seeks to exclude Exs. 2052 and 2055 based on the
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`allegation that they “were improperly included with Patent Owner’s Sur-Reply”
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`and that “Patent Owner could have and should have included these exhibits in its
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`POR.” SXM Motion at 7-8. Like the other exhibits discussed above, Exs. 2052
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`and 2055 were submitted in response to Petitioner’s belated attempt to introduce
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`prima facie evidence and arguments, for the first time in its Reply, to show that
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`Smallcomb (Ex. 1003) qualifies as prior art to the challenged claims. Specifically,
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`U.S. Patent No. 6,314,289
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`Ex. 2052 (published international application WO 00/36783 [PCT/EP98/07850],
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`the direct parent of the ’289 patent) shows that the invention of the ’289 patent was
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`constructively reduced to practice at least as early as the December 3, 1998 filing
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`date of the ’289 patent’s parent international application, and Ex. 2055 (USPTO
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`examination file history of Smallcomb, U.S. patent no. 6,247,158 [Ex. 1003])
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`shows that, if Smallcomb were prior art (which it is not), it still fails to teach all
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`elements of the challenged claims, including at least a “redundancy adding encoder
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`… arranged to output … two portions of output bits.” Because Petitioner never
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`even attempted in the Petition to fulfill its burden of production to show that
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`Smallcomb was prior art to the challenged claims, the burden of production never
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`shifted to Patent Owner to disprove that Smallcomb invalidated the challenged
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`claims in the POR. Dynamic Drinkware, 800 F.3d at 1379-81; Masterimage 3D,
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`IPR2015-00035, Paper 79, at 10. Petitioner’s late presentation of prima facie
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`evidence and arguments in the Reply, and the Board’s denial of Patent Owner’s
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`request to strike those new arguments, necessitated Patent Owner’s submission of
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`responsive arguments and evidence in its Sur-Reply, including these exhibits. To
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`admit Petitioner’s late submission of prima facie arguments and evidence, and
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`exclude Patent Owner’s rebuttal arguments and evidence as untimely, would be
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`U.S. Patent No. 6,314,289
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`extremely unfair and prejudicial to Patent Owner. Accordingly, Petitioner’s
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`request to exclude Exs. 2052 and 2055 should be denied.
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`IV. CONCLUSION
`For the foregoing reasons, Patent Owner opposes Petitioner’s Motion to
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`Exclude Patent Owner’s exhibits (2050-2055), and Petitioner’s Motion should be
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`denied.
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`Date: May 5, 2020
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`.
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`Respectfully submitted,
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`/Ben J. Yorks/
`Ben J. Yorks (Reg. No. 33,609)
`Babak Redjaian (Reg. No. 42,096)
`David McPhie (Reg. No. 56,412)
`Kamran Vakili (Reg. No. 64,825)
`Irell & Manella LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067
`Tel: (310) 277-1010
`Fax: (310) 203-7199
`Email: FraunhoferIPRs@irell.com
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`Case IPR2018-00690
`U.S. Patent No. 6,314,289
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on May 5, 2020,
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`a copy of the foregoing document PATENT OWNER’S OPPOSITION TO
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`PETITIONERS MOTION TO EXCLUDE PATENT OWNER’S EVIDENCE
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`was served, by electronic mail, as agreed to by the parties, upon the following:
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`KRAMER LEVIN NAFTALIS & FRANKEL LLP
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`Jonathan Caplan (Reg. No. 38,094)
`jcaplan@kramerlevin.com
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`Mark Baghdassarian (pro hac vice pending)
`mbaghdassarian@kramerlevin.com
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`Jeffrey H. Price (Reg. 69,141)
`jprice@kramerlevin.com
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`Shannon Hedvat (Reg. No. 68,417)
`shedvat@kramerlevin.com
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`
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`/Susan M. Langworthy/
`By:
` Susan M. Langworthy
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