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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 REPLY TO
`PETITIONERS OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE
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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
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`U.S. Patent No. 6,314,289
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`Petitioner’s opposition (Paper 56) fails to provide any adequate rebuttal to
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`Patent Owner’s articulated grounds for exclusion. At a high level, Patent Owner’s
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`motion identified three recurring problems that mandate exclusion here: (1)
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`Petitioner’s untimely submission of evidence based on a critical misinterpretation
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`of the framework for shifting the burden of production, (2) evidence that is
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`incomplete or not cited in its papers, and (3) evidence that is hearsay, not properly
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`authenticated, or otherwise inadmissible. These issues are addressed in turn below.
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`I.
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`Exhibits Based On Untimely Reply and Evidence Submitted Therewith
`Petitioner’s attempt to justify the untimely and improper evidence submitted
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`in connection with its Reply (including Exs. 1025 – 1027) reflects a profound
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`misunderstanding of the applicable burdens in this case. It is well established that
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`petitioners in IPR proceedings bear the initial “burden of production.” See
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`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379 (Fed. Cir.
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`2015). This burden of production requires “going forward with evidence” and not
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`just conclusory argument. Id. (quoting Tech. Licensing Corp. v. Videotek, Inc.,
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`545 F.3d 1316, 1327 (Fed. Cir. 2008)); Coalition for Affordable Drugs IV LLC v.
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`Pharmacyclics, Inc., Case IPR2015-01076, Paper 33 at 5 (Oct. 19, 2015)
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`(petitioner must “come forward with sufficient evidence to make a threshold
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`showing that the reference relied upon is available prior art”) (citing cases).
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`Moreover, petitioners must present their “prima facie case of unpatentability” in
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`Case IPR2018-00690
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`U.S. Patent No. 6,314,289
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`the petition itself as opposed to waiting until reply. Consolidated Trial Practice
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`Guide (Nov. 2019) (“TPG”) at 73; Unified Patents Inc. v. Moaec Tech., LLC, Case
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`IPR2018-10758, Paper 12 at 20 (Apr. 17, 2019) (petitioner has “initial burden of
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`production … to establish the references relied upon are indeed prior art”).
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`Petitioner mistakenly attempts to analogize its situation to that of a patent
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`challenger who seeks to meet its burden by relying on self-explanatory art such as
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`a patent with a filing date that on its face antedates the filing date of the patent. See
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`Dynamic Drinkware, 800 F.3d at 1377 (citing “Raymond” patent with May 2000
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`filing date as prior art to patent with Nov. 2000 filing date); Tech. Licensing, 545
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`F.3d at 1326 (citing 1993 data sheets as prior art to patent issued from application
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`filed in 1995). However, if a petitioner seeks to rely upon a later-filed patent as
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`prior art (as Petitioner does here), it must present evidence showing the cited patent
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`properly qualifies as prior art based on entitlement to an earlier date, e.g., via an
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`antedating provisional. See, e.g., MasterImage 3D, Inc. v. RealD Inc., Case
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`IPR2015-00035, Paper 79 at 14 (Apr. 20, 2016) (applying Dynamic Drinkware:
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`“the burden of production started with Petitioner and remains with Petitioner to
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`establish that Schuck is entitled to claim priority to the [] provisional” because “the
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`[challenged] patent was filed before the actual filing date of Schuck”). The burden
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`of production will not be met if the petition fails to do this. See, e.g., SPTS Tech.
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`Ltd. v. Plasma-Therm LLC, Case IPR2017-02164, Paper 8 at 7-8 (Apr. 3, 2018)
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`(petitioner’s burden not met where petition failed to demonstrate that cited
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`reference was entitled to provisional filing date) (citing cases); Comcast Cable
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`Comm’s, LLC v. Promptu Systems Corp., Case IPR2018-00343, Paper 56 at 69-71,
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`76 (July 18, 2019) (petition “must provide reasonable notice to Patent Owner” and
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`not mere “barebones analysis” as to how the provisional “provides support for the
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`subject matter relied upon”; rejecting as untimely the “new arguments and
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`evidence submitted in Petitioner’s Reply” in an attempt to remedy the “glaring
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`deficiencies in the Petition”) (citing Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064,
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`1080 (Fed. Cir. 2015)); Unified Patents, IPR2018-10758, Paper 12 at 20 (petitioner
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`failed to meet burden of production by simply asserting without evidence that
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`alleged prior art CIP patent was entitled to earlier priority date).1
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`Petitioner SXM clearly failed to meet its burden of production here. For
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`example, Petitioner chose to rely on the Smallcomb patent with its filing date of
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`December 30, 1998 (Ex. 1003), despite conceding that the ’289 patent is entitled to
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`a filing date several weeks earlier on December 3, 1998. See Exs. 1001, 1002
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`(Lyon Decl.) ¶ 60. The Smallcomb reference on its face is thus insufficient to
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`present a prima facie case. Moreover, the Petition failed to offer any evidence or
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`explanation suggesting that Smallcomb might plausibly claim priority to any
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`1 In re Giacomini is an inapposite ex parte case with a waiver issue not found here.
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`Case IPR2018-00690
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`earlier provisional application. With respect to Campanella (Ex. 1005), the
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`Petition did not assert reliance on any purported provisional filing date (March 27,
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`1998), nor was that date even identified in the Petition itself. The only basis
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`asserted in the Petition for the prior art status of Campanella was a PCT filing date
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`that Petitioner now admits is contrary to the teachings of the MPEP. Reply at 11.
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`Having failed to meet the required burden in its Petition for these two
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`references, Petitioner’s attempt to present new argument, expert opinion, and other
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`evidence for the first time in Reply—including the belated filing of the provisional
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`applications themselves—was untimely and improper. Thus, Exhibits 1026 and
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`1027 should be excluded along with the untimely expert opinions presented in
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`Exhibit 1025. Moreover, because Petitioner failed to timely present any evidence
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`that Smallcomb and Campanella might possibly qualify as prior art, expert
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`opinions corresponding to those references (e.g., Ex. 1002, ¶¶ 86-334) should be
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`excluded as well as the references themselves (e.g., Ex. 1003).
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`II. Evidence That Is Incomplete Or Not Cited In Papers
`Expert testimony not cited in the briefs should be excluded. Ex. 1002 is
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`more than 48,000 words, compared to the petition limit of 14,000 words. Ex. 1025
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`includes over 18,000 words—more than three times the reply limit. The Board has
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`excluded portions of expert declarations under similar circumstances. See, e.g.,
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`Conopco, Inc. v. Proctor & Gamble Co., IPR2013-00510, Paper 9, at 8 (Feb. 12,
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`U.S. Patent No. 6,314,289
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`2014); Denso Corp. v. Collision Avoidance Techs. Inc., IPR2017-01715, Paper 27,
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`at 5-6 (Jan. 22, 2019); see also 37 C.F.R. § 42.22(a)(2); Cisco Sys., Inc. v. C-
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`Cation Techs., LLC, Case IPR2014-00454, Paper 12 (Aug. 29, 2014) (informative).
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`Petitioner’s failure to cite in its briefing the evidence submitted as Exhibits 1010,
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`1031, and 1032 should also result in exclusion for the same reasons. The excuse
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`that these deficiencies are attributable to “typographical errors” is inadequate as
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`these “errors” were never corrected and merely confirm the prejudice in failing to
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`produce complete versions of this evidence in the first instance.
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`III. Evidence Not Properly Authenticated Or Otherwise Inadmissible
`Petitioner argues that Exhibits 1014-1016 and 1018 were authenticated via
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`attorney declarations (Papers 8 & 32) but these do not constitute proper evidence
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`presented in exhibit form per 37 C.F.R. § 42.63(a). The declarations are also not
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`“evidence about public records” under FRE 901(7), but rather describe email,
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`screenshots, and a mailing label that are not documents “recorded or filed in a
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`public office.” Moreover, the Price Declaration does not establish personal
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`knowledge, and the Caplan Declaration essentially admits that Ex. 1018 is hearsay.
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`FRE 803(5) does not apply as no lack of recollection has been presented and it is
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`not “offered by an adverse party.” The exhibit clearly describes an exceptional
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`circumstance (counsel making a late fee submission) and not a “regular practice”
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`of a “regularly conducted activity” under FRE 803(6). And FRE 807 cannot apply
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`U.S. Patent No. 6,314,289
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`as Petitioner could have reasonably attempted a proper non-hearsay declaration.
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`Date: May 12, 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
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`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 12, 2020,
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`a copy of the foregoing document PATENT OWNER’S REPLY TO
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
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`EXCLUDE was served, by electronic mail, as agreed to by the parties, upon the
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`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)
`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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`/Susan M. Langworthy/
`By:
` Susan M. Langworthy
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