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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________
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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 FÖRDERUNG DER
`ANGEWANDTEN FORSCHUNG E.V.,
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`Patent Owner.
`____________________
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`Case IPR2018-00690
`U.S. Patent No. 6,314,289
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`__________________________________________________________
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`PETITIONER’S REPLY IN SUPPORT OF ITS MOTION TO EXCLUDE
`PATENT OWNER’S EVIDENCE
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`Petitioner’s Reply ISO Motion to Exclude Evidence
`IPR2018-00690 (U.S. Patent No. 6,314,289)
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`Petitioner (“SXM”) submits this Reply in support of its Motion to Exclude
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`Evidence (Paper 54, the “Mot.”) and in reply to Patent Owner’s (“PO”) Opposition
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`thereto (Paper 57, “Opp.”). PO’s Opposition ignores the untimeliness of Exhibits
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`2050-2055 and its violations of the FRE, the Board’s Consolidated Trial Practice
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`Guide (the “TPG”), and Federal Circuit precedent. PO claims its “new issues and
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`untimely evidence” were submitted in response to SXM’s Reply. PO’s arguments
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`fail.
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`PO’s new evidence, and arguments based thereon, were not responsive to
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`those raised in the Reply (i.e. whether Smallcomb ’258 supports at least one claim
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`of Smallcomb and whether the cited portions of Smallcomb were carried over). See
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`Reply at 22–26. While SXM was permitted to include “rebuttal evidence in support
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`of its reply,” PO’s Sur-Reply violated the TPG’s express prohibition against
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`submitting new evidence other than cross-examination deposition transcripts which
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`PO could have, but chose not to include, after foregoing deposing SXM’s expert.
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`I.
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`Exhibits 2050–2055 Should Be Excluded
`PO does not dispute that Exhibits 2050-2055 (the Eberlein Declaration and
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`related documents), in its Sur-Reply, violate the TPG. Mot. at 2-4; (“The sur-reply
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`may not be accompanied by new evidence other than deposition transcripts of the
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`cross-examination of any reply witness.”). Rather, PO baselessly attacks SXM’s
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`evidence, an argument that is (1) irrelevant to PO’s improper introduction of new
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`1
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`
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`Petitioner’s Reply ISO Motion to Exclude Evidence
`IPR2018-00690 (U.S. Patent No. 6,314,289)
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`evidence in its Sur-Reply and (2) meritless because petitioners are explicitly
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`permitted to cite new rebuttal evidence in a Reply.
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`PO relies on Exhibits 2050-2055 to challenge Smallcomb’s status as prior
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`art, an issue it addressed in the POR without this evidence.1 Mot. at 3; POR at 48-
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`49; Reply at 20-22. PO attempts to justify its belated introduction of evidence on
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`Dynamic Drinkware and Masterimage,2 but both cases support the exclusion of
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`this evidence. Paper 46 at 3-4. As in Dynamic Drinkware, SXM met its initial
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`burden of production by arguing that prior art Smallcomb anticipated the claims.
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`Dynamic Drinkware, 800 F.3d at 1379. The burden then shifted to PO “to argue or
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`produce evidence” that Smallcomb does not anticipate or is not prior art because
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`the claims are entitled to an earlier date. Id. at 1380. PO only chose one of those
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`1 PO incorrectly contends (Opp. at 3) that SXM “fail[ed] to carry its burden” in
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`showing that Smallcomb is prior art. That question ultimately goes to the burden of
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`persuasion, not the burden of production. Dynamic Drinkware, LLC v. Nat’l
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`Graphics, Inc., 800 F.3d 1375, 1378-79 (Fed. Cir. 2015).
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`2 PO’s reliance on dicta from Masterimage 3D, Inc. v. RealD Inc., IPR2015-00035,
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`Paper 79 (PTAB Apr. 20, 2016), a case pre-dating Seabery (cited herein), fails as
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`the petitioner there admitted that the provisional did not support the claims, so the
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`petitioner could never satisfy its burden of production or persuasion. Id. at 12–13.
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`2
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`Petitioner’s Reply ISO Motion to Exclude Evidence
`IPR2018-00690 (U.S. Patent No. 6,314,289)
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`options in its POR, arguing that Smallcomb did not anticipate the claims, allegedly
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`because the provisional “does not support the claims of Smallcomb.” POR at 49.
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`Having been on notice of Smallcomb’s priority date, PO was obligated to
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`supply argument and evidence that “the claims are entitled to an earlier date” so
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`that SXM would have had an adequate opportunity to address such argument and
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`evidence. Dynamic Drinkware at 1380; see also Paper 30 at 7 (PO “is cautioned
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`that any arguments for patentability not raised in the response may be deemed
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`waived.”).3 It did not. At no point, including in an e-mail to the Board regarding
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`SXM’s Reply (see Paper 39), did PO do so or request the opportunity to exceed the
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`scope of a Sur-Reply to raise new arguments.4
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`3 PO acknowledges that Mr. Eberlein himself “authenticated” exhibits and
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`describes the alleged conception of the ‘289 Patent. But, the Federal Circuit has
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`instructed that “evidence of corroboration must not depend solely on the inventor
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`himself,” and thus the Eberlein Declaration cannot be used to antedate the
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`Smallcomb ‘258 provisional. Apator Miitors APS v. Kamstrup A/S, 887 F.3d 1293,
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`1295 (Fed. Cir. 2018).
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`4 PO’s purported “inform[ing]” SXM of “additional material” it intended to file is
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`of no import (Opp. at 6) as PO did not identify the “material” and further, SXM
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`specifically informed PO of the prohibition against such new evidence. Ex. 1034.
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`3
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`
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`Petitioner’s Reply ISO Motion to Exclude Evidence
`IPR2018-00690 (U.S. Patent No. 6,314,289)
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`PO attempts to justify its prohibited conduct by claiming SXM submitted
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`evidence in its Reply. But this is a different situation. Unlike PO’s Sur-Reply,
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`SXM’s Reply properly presented evidence under Federal Circuit precedent and the
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`Administrative Procedure Act (“APA”) because PO had “adequate notice and
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`opportunity to respond.” Genzyme Therapeutic Prod. Ltd. P’ship v. Biomarin
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`Pharm. Inc., 825 F. 3d 1360, 1366 (Fed. Cir. 2016); see also Lone Star Silicon
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`Innovs v. Iancu, No. 2019-1669, 2020 WL 1487265, at 6 (Fed. Cir. Mar. 25, 2020)
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`(citing In re NuVasive, Inc., 841 F.3d 966, 975 (Fed. Cir. 2016)) (confirming that
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`“the Board is within its authority to institute review and consider even arguments
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`that were not asserted in the petition ‘after giving [the patent owner] a full and fair
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`opportunity to submit additional evidence and arguments on that point.’”); Philips
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`v. Google LLC, 948 F.3d 1330 (Fed. Cir. 2020) (proper to consider evidence not
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`raised in the petition to support grounds raised in the Petition and to consider
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`evidence of a POSITA’s knowledge as disclosing certain claim limitations); Robert
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`Bosch, LLC, v. Iancu, No. 2017-2122 (Fed. Cir. 2019).
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`Notably, PO had the right and opportunity to submit arguments and evidence
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`to rebut SXM’s Reply arguments and evidence, i.e. Smallcomb ’258’s support of
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`“at least one claim of” Smallcomb. MPEP §2136.03, III (to claim benefit to
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`provisional, “at least one claim of the patent must be supported by the disclosure”).
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`That is, the TPG permitted PO to cross-examine SXM’s expert Dr. Lyon about his
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`4
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`Petitioner’s Reply ISO Motion to Exclude Evidence
`IPR2018-00690 (U.S. Patent No. 6,314,289)
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`Reply Declaration, file the deposition transcript, and comment on the same. See
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`TPG at 73. PO did not take that opportunity. Ex. 1035; see also Belden Inc. v.
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`Berk-Tek LLC, 805 F. 3d 1064, 1081-82 (finding sur-replies afford patent owner
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`sufficient opportunity to respond to reply evidence and argument under the APA).
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`Further, PO’s suggestion (at 1-2) that it could disregard the TPG and
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`introduce new evidence in its Sur-Reply because SXM was required to “make out a
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`prima face showing of invalidity in its Petition” misconstrues the law. Relying on
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`Dynamic Drinkware, the Board has explained that there is no requirement for a
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`Petition to set out a prima facie case that a patent is “qualified prior art based on a
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`provisional application”5 and that evidence establishing the same may be supplied
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`after institution.” Seabery No. Amer. Inc. v. Lincoln Global, Inc., IPR2016-00840,
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`Paper 40 at 6–7 (PTAB Mar. 15, 2017) (citing Dynamic Drinkware).
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`This guidance is precisely what SXM followed here, and PO’s attempt to
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`explain away its own deficiencies by lodging assertions against SXM’s evidence
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`should be disregarded. For the foregoing reasons, those set forth in the Motion, the
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`Motion should be granted.
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`5 Indeed, PO acknowledges that such an alleged “prima facie case” is distinct from
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`Petitioner’s “prima facie case of unpatentability,” which has always been based on
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`SXM’s citations to the Smallcomb patent. See Opp. at 1-2.
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`5
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`
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`Petitioner’s Reply ISO Motion to Exclude Evidence
`IPR2018-00690 (U.S. Patent No. 6,314,289)
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`
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`Respectfully submitted,
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`
`
`/Jonathan S. Caplan/
`
`Jonathan S. Caplan (Reg. No. 38,094)
`Mark Baghdassarian (pro hac vice pending)
`Shannon H. 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
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`Dated: May 12, 2020
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`
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`(Case No. IPR2018-00690)
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`Attorneys for Petitioner
`Sirius XM Radio Inc.
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`
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`
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`6
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`
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`Petitioner’s Reply ISO Motion to Exclude Evidence
`IPR2018-00690 (U.S. Patent No. 6,314,289)
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`
`CERTIFICATE OF SERVICE
`The undersigned certifies, in accordance with 37 C.F.R. § 42.6(e), that
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`service was made on the Patent Owner as detailed below.
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`Date of service May 12, 2020
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`Manner of service Electronic Mail
`(byorks@irell.com; bredjaian@irell.com;
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`dmcphie@irell.com; kvakili@irell.com).
`
`
`Documents served PETITIONER’S REPLY IN SUPPORT OF MOTION TO
`EXCLUDE PATENT OWNER’S EVIDENCE
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`Persons Served Ben J. Yorks;
`Babak Redjaian;
`David McPhie; and
`Kamran Vakili
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`
`
`
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`/Jonathan S. Caplan /
`Jonathan S. Caplan
`Registration No. 38,094
`Counsel for Petitioner
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`7
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`
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