`
`
`
`
`
`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
`Patent No. 6,314,289
`
`
`
`PATENT OWNER’S MOTION TO DISMISS THE PETITION AS TIME-
`BARRED UNDER 35 U.S.C. § 315(b)
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`10518371
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Case IPR2018-00690
`Patent No. 6,314,289
`
`Page
`
`
`INTRODUCTION ........................................................................................ 1
`I.
`LEGAL STANDARD .................................................................................. 1
`II.
`III. THE PETITION MUST BE DISMISSED UNDER 35 U.S.C.
`§ 315(b) ......................................................................................................... 2
`IV. CONCLUSION ............................................................................................. 5
`
`
`10518371
`
`
`
`- i -
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Case IPR2018-00690
`Patent No. 6,314,289
`
` Page(s)
`
`Cases
`Cultec, Inc. v. Stormtech LLC,
`IPR2017-00526, Paper 14 (PTAB Jul. 17, 2017) ................................................. 4
`LG Electronics, Inc. v. Cellular Commc’ns Equip. LLC,
`IPR2016-00711, Paper 9 (PTAB May 17, 2016) ................................................. 4
`
`Terremark North America LLC et al. v. Joao Control & Monitoring
`Sys., LLC,
`IPR2015-01482, Paper 10 (PTAB Dec. 28, 2015) ............................................... 5
`Teva Pharms. USA, Inc. v. Monosol RX, LLC,
`IPR2016-00281, Paper 21 (PTAB May 23, 2016) ............................................... 4
`Statutes
`35 U.S.C. § 312(a) ..................................................................................................... 2
`35 U.S.C. § 315(b) ............................................................................................. 1, 2, 5
`Regulations
`37 C.F.R. § 42.101(b) ................................................................................................ 1
`37 C.F.R. § 42.106(a) ................................................................................................. 2
`
`10518371
`
`
`
`- ii -
`
`
`
`
`
`Case IPR2018-00690
`Patent No. 6,314,289
`
`Fraunhofer Ex.
`2001
`
`Fraunhofer Ex.
`2002
`Fraunhofer Ex.
`2003
`
`Fraunhofer Ex.
`2004
`
`EXHIBIT LIST
`Executed Summons to Sirius XM Radio Inc., attaching
`Complaint for Patent Infringement, Dated February 22,
`2017
`Fraunhofer Complaint for Patent Infringement against
`Defendant Sirius XM Radio Inc., Filed February 22, 2017
`PTAB E2E Search Result for AIA Review Number:
`IPR2016-00690, https://ptab.uspto.gov/#/login (search
`“AIA Review #” for “IPR2016-00690”) (retrieved June 6,
`2018)
`PTAB E2E Search Result for AIA Review Number:
`IPR2016-00690, https://ptab.uspto.gov/#/login (search
`“AIA Review #” for “IPR2016-00690”) (retrieved April 18,
`2018)
`
`
`
`
`
`10518371
`
`
`
`- iii -
`
`
`
`
`
`
`I.
`
`Case IPR2018-00690
`Patent No. 6,314,289
`
`INTRODUCTION
`Patent Owner hereby moves to dismiss the Petition in this case as time-
`
`barred under 35 U.S.C. § 315(b). The Board authorized Patent Owner to file this
`
`motion in an email dated June 6, 2018.
`
`A petition for inter partes review must be filed within one year after
`
`Petitioner was served with a complaint alleging infringement. 35 U.S.C. § 315(b);
`
`37 C.F.R. § 42.101(b). In this case, Patent Owner indisputably served Petitioner
`
`with a complaint alleging infringement of U.S. Patent No. 6,314,289 (“the ’289
`
`patent”) on February 22, 2017. The Patent Trial and Appeal Board’s PTAB E2E
`
`system shows that the Petition for inter partes review of U.S. Patent No.
`
`6,314,289, assigned Case No. IPR2018-00690, has a filing date of February 23,
`
`2018. This is more than one year after Petitioner was served with the complaint.
`
`Therefore, the Patent Trial and Appeal Board (“Board”) should dismiss the Petition
`
`as time-barred under 35 U.S.C. § 315(b).
`
`II. LEGAL STANDARD
`An inter partes review “may not be instituted if the petition requesting the
`
`proceeding is filed more than 1 year after the date on which the petitioner, real
`
`party in interest, or privy of the petitioner is served with a complaint alleging
`
`infringement of the patent.” 35 U.S.C. § 315(b). This same time bar is reflected in
`
`the USPTO’s trial practice rules. 37 C.F.R. § 42.101(b). A petition is only
`
`10518371
`
`
`
`- 1 -
`
`
`
`
`
`
`accorded a filing date once (1) a petition has been filed; (2) payment has been
`
`Case IPR2018-00690
`Patent No. 6,314,289
`
`made; and (3) the complete petition is served on the patent owner. 35 U.S.C.
`
`§ 312(a); 37 C.F.R. § 42.106(a). Petitioner bears the burden of showing that these
`
`requirements are met.
`
`III. THE PETITION MUST BE DISMISSED UNDER 35 U.S.C. § 315(b)
`The Petition in this case must be dismissed because it was not filed until
`
`after the statutory deadline established by 35 U.S.C. § 315(b). Petitioner Sirius
`
`XM Radio Inc. was indisputably served with a complaint alleging infringement of
`
`the ’289 patent on February 22, 2017. See Ex. 2001-1 to -2; Ex. 2002-1, -10 to -
`
`12. Specifically, Exhibit 2001 shows that the summons and the “attached
`
`complaint” were served on Sirius XM Radio Inc.’s designated agent on February
`
`22, 2017. Ex. 2001-1 to -2. Exhibit 2002 is the complaint filed and served by
`
`Patent Owner on Petitioner alleging that Petitioner infringes the ’289 patent. Ex.
`
`2002-1, -10 to -12. Both the summons and the complaint bear the same case
`
`number. Ex. 2001-1; Ex. 2002-1.
`
`Petitioner filed an inter partes review of the ’289 patent on February 23,
`
`2018, one year and one day after being served with the complaint alleging
`
`infringement of the ’289 patent. The PTAB’s E2E system, available on the Web at
`
`https://ptab.uspto.gov/#/login, indicates that the inter partes review for the ’289
`
`patent was assigned AIA Review Number IPR2018-00690 and has a filing date of
`
`10518371
`
`
`
`- 2 -
`
`
`
`
`
`
`February 23, 2018. This is reflected in Exhibit 2003 (reproduced below), which is
`
`Case IPR2018-00690
`Patent No. 6,314,289
`
`a portion of a screen capture of the PTAB E2E system for IPR2018-00690
`
`accessed via a web browser on June 6, 2018:
`
`
`
`Exhibit 2004 is another screen shot of the PTAB E2E system, retrieved on
`
`April 18, 2018, which shows the same filing date (“02/23/2018”) for IPR2018-
`
`00690.1 Indeed, as of the date of filing of this Motion, the PTAB E2E system still
`
`shows this same filing date.
`
`
`1 Although a Notice of Filing Date Accorded to Petition issued on April 4,
`
`2018 that listed a filing date of February 22, 2018 (see IPR2018-000690, Paper 5,
`
`at 1), the PTAB E2E system has at all times shown the actual filing date to be
`
`February 23, 2018.
`
`10518371
`
`
`
`- 3 -
`
`
`
`
`
`Because the Petition’s filing date as shown in the PTAB E2E system is more
`
`Case IPR2018-00690
`Patent No. 6,314,289
`
`
`
`than one year after Petitioner was served with a complaint alleging infringement of
`
`the ’289 patent, the Petition is time-barred and therefore should be dismissed. See,
`
`e.g., Cultec, Inc. v. Stormtech LLC, IPR2017-00526, Paper 14, at 13-14 (PTAB Jul.
`
`17, 2017) (denying institution of proceeding where petition filed one year and one
`
`day after service of complaint); Teva Pharms. USA, Inc. v. Monosol RX, LLC,
`
`IPR2016-00281, Paper 21, at 13-14 (PTAB May 23, 2016) (denying institution of
`
`proceeding where petition filed one year and one day after service of complaint);
`
`LG Electronics, Inc. v. Cellular Commc’ns Equip. LLC, IPR2016-00711, Paper 9,
`
`at 2 (PTAB May 17, 2016) (dismissing proceeding where “Petitioner filed their
`
`petition in this proceeding … more than one year after the date on which the
`
`Petitioner was served with a complaint alleging infringement.”); Terremark North
`
`America LLC et al. v. Joao Control & Monitoring Sys., LLC, IPR2015-01482,
`
`Paper 10 (PTAB Dec. 28, 2015) (denying institution where petition was accorded a
`
`filing date one year and one day after service of complaint).2
`
`
`2 It is also not clear whether Petitioner timely satisfied the payment and
`
`service requirements in this case. Patent Owner is aware of at least one factual
`
`error in the Certificate of Service provided with the Petition, which represents that
`
`10518371
`
`
`
`- 4 -
`
`
`
`
`
`
`IV. CONCLUSION
`Because the Petition in the instant inter partes review was not filed within
`
`Case IPR2018-00690
`Patent No. 6,314,289
`
`the statutory deadline established by 35 U.S.C. § 315(b), the Petition should be
`
`dismissed and the Board should decline to institute an inter partes review.
`
`
`
`Date: June 13, 2018
`
`Respectfully submitted,
`
`
`
`
`/s/ Ben J. Yorks
`Ben J. Yorks (Reg. No. 33,609)
`Babak Redjaian (Reg. No. 42,096)
`David McPhie (Reg. No. 56,412)
`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
`
`
`a “courtesy” copy of a “complete and entire copy” of the petition was provided to
`
`counsel for Patent Owner “via electronic email” on February 22, 2018. Pet. at 103.
`
`But in fact, no such copy was provided to Patent Owner’s counsel via electronic
`
`mail, contrary to Petitioner’s representation in the Certificate of Service.
`
`10518371
`
`
`
`- 5 -
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Case IPR2018-00690
`Patent No. 6,314,289
`
`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on June 13, 2018,
`
`a copy of the foregoing document PATENT OWNER’S MOTION TO
`
`DISMISS THE PETITION AS TIME-BARRED UNDER 35 U.S.C. § 315(b)
`
`and EXHIBITS 2001-2004 were served, by electronic mail, as agreed to by the
`
`parties, upon the following:
`
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`
`Jonathan Caplan (Reg. No. 38,094)
`JCaplan@kramerlevin.com
`
`Mark Baghdassarian (pro hac vice)
`mbaghdassarian@kramelevin.com
`
`Jeffrey H. Price (Reg. 69,141)
`jprice@kramerlevin.com
`
`Shannon Hedvat (Reg. 68,417)
`shedvat@kramerlevin.com
`
`
`
`
`
` /s/ Susan Langworthy
`By:
` Susan Langworthy
`
`
`
`
`
`10518371
`
`
`- i -
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
