From:
`To:
`Cc:
`
`Subject:
`Date:
`
`Redjaian, Babak
`"Trials"
`Caplan, Jonathan S.; Baghdassarian, Mark; Hedvat, Shannon H.; McPhie, David; Yorks, Ben; Vakili, Kamran;
`Price, Jeffrey H.; Redjaian, Babak
`[EXTERNAL] RE: IPR2018-00681, -00682, -00689, -00690 - Supplemental Authority
`Friday, February 08, 2019 1:40:07 PM
`
`Your Honors,
`
`Petitioner SXM’s request below is improper and should be denied. It the latest of a string of
`repeated attempts by SXM to make additional submissions to the Board on the RPI issue, even
`though the Board already stated weeks ago that “[n]o additional briefing is authorized at this time.”
`See 1/16/2018 email from Andrew Kellogg. Thus, SXM’s submission of substantive arguments in the
`email brief below directly violates the Board’s instructions in this case.
`
`In any event, the new arguments in Petitioner’s email should be rejected on the merits. The Board’s
`decision denying institution in this case is entirely consistent with the non-precedential ZTE
`decision. The Board in ZTE applied existing law and exercised its discretion to permit amendment
`because the petitioner there (unlike SXM) proved that this was in the interest of justice based on a
`different set of facts. For example, the petitioner in ZTE had already indirectly identified the missing
`RPI in its original petition, and had further shown diligence by immediately filing an updated
`mandatory notice as soon as the omission was raised. None of those facts are present here.
`
`Respectfully submitted,
`
`Babak Redjaian
`Counsel for Patent Owner
`
`
`From: Price, Jeffrey H. <JPrice@KRAMERLEVIN.com>
`Sent: Thursday, February 7, 2019 2:00 PM
`To: 'Trials' <Trials@USPTO.GOV>
`Cc: Caplan, Jonathan S. <JCaplan@KRAMERLEVIN.com>; Baghdassarian, Mark
`<MBaghdassarian@KRAMERLEVIN.com>; ~Hedvat, Shannon <shedvat@kramerlevin.com>; McPhie,
`David <DMcPhie@irell.com>; Yorks, Ben <BYorks@irell.com>; Redjaian, Babak
`<BRedjaian@irell.com>; Vakili, Kamran <KVakili@irell.com>
`Subject: IPR2018-00681, -00682, -00689, -00690 - Supplemental Authority
`
`Your Honors,
`
`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 attached decision, ZTE (USA) Inc. v. Fundamental Innovation Systems Int’l LLC, IPR2018-
`00425, Paper 34 (February 6, 2019), provides 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.
`
`Petitioner Sirius XM Radio Inc. – Exhibit 1023, p. 1
`Sirius XM v. Fraunhofer – IPR2018-00690
`U.S. Patent No. 6,314,289
`
`

`

`
`This new decision fully supports Petitioner’s aforementioned request first made in its Reply to
`Patent Owner’s Preliminary Responses and repeated in each of its Requests for Rehearing.
`See, e.g., IPR2018-00681, Paper 9 at 3-4 and Paper 13 at 7-15. In particular, after the Board
`found that the petitioner had failed to identified all real parties in interest, the Board
`concluded that “[o]n the whole, we find it in the interest of justice to allow Petitioner to
`update its mandatory notices, while maintaining the proceeding’s original filing date. Doing
`so furthers the purpose of 35 U.S.C. § 312(a)(2) and avoids significant prejudice to Petitioner
`(i.e., dismissal of its Petition), without undue prejudice to Patent Owner.” ZTE at 8.
`
`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.
`
`Best regards,
`Jeff Price
`Counsel for Petitioner, Sirius SM Radio, Inc.
`
`Jeffrey H. Price
`Associate
`
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas, New York, New York 10036
`T 212.715.7502 F 212.715.8302
`jprice@kramerlevin.com
`
`Bio
`
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`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
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`
`
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`
`Petitioner Sirius XM Radio Inc. – Exhibit 1023, p. 2
`Sirius XM v. Fraunhofer – IPR2018-00690
`U.S. Patent No. 6,314,289
`
`