`
`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
`
`__________________________________________________________
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
`DISMISS THE PETITION UNDER 35 U.S.C. § 315(b)
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`IPR2018-00690
`U.S. Patent No. 6,314,289
`
`Page
`
`I.
`
`II.
`
`Introduction ................................................................................................. - 1 -
`
`Legal Standard ............................................................................................ - 2 -
`
`III. Sirius XM Timely Filed The Petition ......................................................... - 3 -
`
`A. All Requirements Of 35 U.S.C. § 312(a) were Met ......................... - 3 -
`
`B.
`
`The Filing Date of the Petition Was Already Confirmed ................ - 6 -
`
`C. Alternatively, Sirius XM Requests Confirmation of the
`February 22, 2018 Filing Date ......................................................... - 9 -
`
`IV. Conclusion ................................................................................................ - 11 -
`
`
`
`
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`2Wire, Inc. v. TQ Delta LLC,
`IPR2015-00239, Paper 10 (PTAB Jan. 15, 2015) .............................................. 10
`
`Apple Inc. v. Whitserve, LLC,
`IPR2014-00268, Paper 16 (PTAB Feb. 5, 2014) ............................................ 4, 10
`
`ConMed Corp. v. Bonutti Skeletel Innovations LLC,
`IPR2013-00624, Paper 22 (PTAB Mar. 14, 2014) ............................................... 9
`
`Cultec, Inc. v. Stormtech LLC,
`IPR2017-00526, Paper 14 (PTAB Jul. 17, 2017) ................................................. 5
`
`LG Electronics, Inc. v. Cellular Commc’ns Equip. LLC,
`IPR2016-00711, Paper 9 (PTAB May 17, 2016) ................................................. 5
`
`Oracle Corp. v. Maz Encryption Techs. LLC,
`IPR2014-00472, Paper 9 (PTAB May 1, 2014) ................................................. 10
`
`Terremark North America LLC et al. v. Joao Control & Monitoring
`Sys., LLC,
`IPR2015-01482, Paper 10 (PTAB Dec. 28, 2015) ............................................... 6
`
`Teva Pharms. USA, Inc. v. Monosol RX, LLC,
`IPR2016-00281, Paper 21 (PTAB May 23, 2016) ............................................... 5
`
`Statutes
`
`35 U.S.C. § 312(a) ..................................................................................................... 3
`
`35 U.S.C. § 315(b) ..................................................................................................... 1
`
`Other Authorities
`
`37 C.F.R. § 42.15(a) ................................................................................................... 2
`
`37 C.F.R. § 42.20(a) ................................................................................................... 2
`
`37 C.F.R. § 42.20(c) ................................................................................................... 2
`
`ii
`
`
`
`37 C.F.R. § 42.103(b) ................................................................................................ 2
`37 CPR. § 42.103(b) ................................................................................................ 2
`
`37 C.F.R. § 42.104 ..................................................................................................... 2
`37 CPR. § 42.104 ..................................................................................................... 2
`
`37 C.F.R. § 42.104(c) ............................................................................................... 10
`37 CPR. § 42.104(c) ............................................................................................... 10
`
`37 C.F.R. § 42.105 ..................................................................................................... 2
`37 CPR. § 42.105 ..................................................................................................... 2
`
`37 C.F.R. § 42.106 ..................................................................................................... 5
`37 CPR. § 42.106 ..................................................................................................... 5
`
`
`
`
`
`iii
`
`iii
`
`
`
`EXHIBIT NO.
`
`PETITIONER’S EXHIBIT LIST
`
`DESCRIPTION
`
`Exhibit-1013 Declaration of Jonathan S. Caplan
`
`Exhibit-1014 Screenshot of IPR Petition documents filed in AIA Review
`IPR2018-00690 from June 14, 2018
`
`Exhibit-1015 Screenshot of Documents for AIA Review IPR2018-00690
`
`Exhibit-1016 Docket for AIA Review IPR2018-00690 and payment
`information from June 15, 2018
`
`Exhibit-1017 Inter Partes Review for Patent No. 6,314,289 mailing receipts to
`Counsel, postmarked February 22, 2018
`
`Exhibit-1018 February 23, 2018 E-mail from Jonathan Caplan to
`Trials@uspto.gov regarding filing fees for IPR2018-00690
`
`Exhibit-1019 Proposed Protective Order
`
`
`
`iv
`
`
`
`IPR2018-00690
`U.S. Patent No. 6,314,289
`
`I.
`
`INTRODUCTION
`
`Pursuant to the Board’s instruction on June 6, 2018, Petitioner Sirius XM
`
`Radio Inc. (“SXM”) hereby submits this opposition to Patent Owner Fraunhofer-
`
`Gesellschaft Zur Förderung Der Angewandten Forschung E.V.’s (“Patent Owner”
`
`or “Fraunhofer”) Motion to Dismiss pursuant to 35 U.S.C. § 315(b) (Paper No. 7,
`
`the “Motion”).
`
`Patent Owner’s Motion relies on conclusory statements and a misleading
`
`and incomplete representation of the record to support its Motion. It is undisputed
`
`that on February 22, 2017, Fraunhofer filed a patent infringement action, captioned
`
`Fraunhofer v. Sirius XM, 1:17-cv-00184-JFB-SRF (D. Del.), asserting four patents
`
`against Sirius XM, including U.S. Patent No. 6,314,289 (the “‘289 Patent”). See
`
`Paper No. 1 at 2-3; see also Fraunhofer Exs. 2001-2002. Then, within the statutory
`
`deadline, Sirius XM filed Petitions for Inter Partes Review against each of the
`
`asserted patents in the underlying litigation, including the instant Petition regarding
`
`the ‘289 Patent, on February 22, 2018. As the Patent Trial and Appeal Board End
`
`to End docket (the “E2E System”) confirms, Sirius XM timely submitted all of the
`
`requisite papers and fees for the instant Petition on February 22, 2018. The Trial
`
`Paralegal for the Board confirmed the timely submission of the Petition when the
`
`Notice of Filing Date Accorded issued on April 4, 2018 according the Petition a
`
`filing date of February 22, 2018. See Paper No. 5 (the “Notice of Filing Date”).
`
`- 1 -
`
`
`
`Patent Owner premises its Motion entirely on a February 23, 2018 date
`
`shown on a publicly available portion of the E2E System, but effectively ignores
`
`that the data in the public and private portions of the E2E System, and the Notice
`
`of Filing Date, all confirm the February 22, 2018 filing date. Moreover, to the
`
`extent there is a clerical error in the identification of the filing date in the publicly
`
`available portion of the E2E System, the full E2E System data and the Notice of
`
`Filing Date make clear that the proper filing date for the instant Petition is
`
`February 22, 2018. In addition, Sirius XM promptly addressed any issues relating
`
`to the filing date that may have arisen due to the processing of the payment of the
`
`filing fees and confirmed that all requirements had been satisfied for the instant
`
`Petition, as further described herein. For these reasons, and as discussed further
`
`herein, Sirius XM hereby requests that Patent Owner’s Motion be denied.
`
`II. LEGAL STANDARD
`
`A Petition for Inter Partes Review will be accorded a filing date if (1) the
`
`content requirements of the petition have been met; (2) the fee for institution has
`
`been paid; and (3) the petition and relevant documents have been served on the
`
`patent owner. 37 C.F.R. §§ 42.104, 42.105, 42.15(a), 42.103(b).
`
`Where relief is sought, “other than a petition requesting the institution of a
`
`trial,” it is the “moving party [that] has the burden of proof to establish that it is
`
`entitled to the requested relief.” 37 C.F.R. §§ 42.20(a), (c).
`
`- 2 -
`
`
`
`III. SIRIUS XM TIMELY FILED THE PETITION
`
`Patent Owner’s Motion presents an incomplete representation of the record
`
`in this matter to create the misimpression that the requirements under 35 U.S.C. §
`
`312(a) were not satisfied. A full review of the E2E System records demonstrates
`
`that Patent Owner has failed to meet its burden of proof and its Motion should
`
`therefore be denied.
`
`A. All Requirements Of 35 U.S.C. § 312(a) were Met
`
`Patent Owner bases its Motion on the incorrect premise that Sirius XM filed
`
`the Petition on February 23, 2018 rather than on February 22, 2018. See generally
`
`Motion at 2 (alleging the Petition was filed “one year and one day after [Sirius XM
`
`was] served with the complaint”).1 Yet, the E2E System records unequivocally
`
`demonstrate that Sirius XM filed the Petition on February 22, 2018 and, consistent
`
`
`1 In its Motion, Patent Owner does not dispute the sufficiency of the contents or
`
`service of the Petition as there can be no dispute that Sirius XM properly served
`
`the Petition and related papers on February 22, 2018. Patent Owner mentions, in a
`
`footnote in its Motion, that there purportedly is “at least one factual error in the
`
`Certificate of Service.” Motion at 4, n.2. Patent Owner, however, does not dispute
`
`that it was timely served with the Petition, and as demonstrated in Exhibit 1017,
`
`Sirius XM timely served the Petition on Patent Owner’s counsel.
`
`- 3 -
`
`
`
`with the E2E Systems records, the Petition has been properly accorded a
`
`February 22, 2018 filing date.
`
`In particular, the E2E System records reveal that the Petition (Paper No. 1),
`
`all of the exhibits thereto (Exhibits 1001-1012), and Sirius XM’s Power of
`
`Attorney (Paper No. 2) are identified with a “Filing Date” of “2/22/2018.” Exhibit
`
`1014 at 2, 4-6. In addition, the E2E System identifies “02/22/2018 23:03:00” as
`
`the “Transaction Date” for payment of all of the requisite fees for the Petition. Id.
`
`at 8. Petitioner respectfully submits that the E2E System dates indicating February
`
`22, 2018 as the filing date for every petition paper and the filing fees demonstrate
`
`the proper filing date for and timeliness of the Petition. See generally Apple Inc. v.
`
`Whitserve, LLC, IPR2014-00268, Paper 16 at 4 (PTAB Feb. 5, 2014) (according
`
`weight to the “Filing Date[s]” identified on the record).
`
`Patent Owner purports to rely upon the public view of the E2E System in its
`
`Exhibits 2003 and 2004 showing a February 23, 2018 date. However, Patent
`
`Owner fails to explain or reveal in its Motion that the complete records in the E2E
`
`System, accessible to Patent Owner, including filing dates for every Petition paper
`
`and payment, show that all of the Petition papers and fees were filed on February
`
`22, 2018. More specifically, when selecting “View Documents” on the page
`
`shown in Petitioner’s exhibits, the results identify a “Filing Date” of “02/22/2018”
`
`for the Petition, the exhibits thereto and Sirius XM’s Power of Attorney. Exhibits
`
`- 4 -
`
`
`
`1015, 1016. As a result, Patent Owner’s Exhibits 2003 and 2004 misrepresent the
`
`complete E2E System records regarding the Petition and, as a result, Patent Owner
`
`erroneously suggests that “the PTAB E2E system has at all times shown the actual
`
`filing date to be February 23, 2018.” Motion at 3, n.1.
`
`In addition to and consistent with the E2E System, the Notice of Filing Date
`
`confirmed that “[t]he petition for inter partes review filed in the [instant]
`
`proceeding has been accorded the filing date of February 22, 2018.” Paper No. 5
`
`at 1. Incredibly, Patent Owner only makes a passing reference to the Notice of
`
`Filing Date in a footnote of its Motion.2
`
`Furthermore, the cases which Patent Owner relies upon are inapposite to the
`
`instant proceedings and pertain to facts and circumstances not present here. See
`
`Cultec, Inc. v. Stormtech LLC, IPR2017-00526, Paper 14 (PTAB Jul. 17, 2017)
`
`(payment not made until day after one-year deadline); Teva Pharms. USA, Inc. v.
`
`Monosol RX, LLC, IPR2016-00281, Paper 21 (PTAB May 23, 2016) (filing made
`
`after midnight as a result of alleged “freezing” of the filing system); LG
`
`Electronics, Inc. v. Cellular Commc’ns Equip. LLC, IPR2016-00711, Paper 9
`
`
`2 In fact, Petitioner does not dispute nor address that the Board only issues a Notice
`
`of Filing Date when the requirements under 37 C.F.R. § 42.106 have been met. 37
`
`C.F.R. § 42.106.
`
`- 5 -
`
`
`
`(PTAB May 17, 2016) (dismissal based on “Joint Motion of Petitioner and Patent
`
`Owner to Dismiss Proceeding”) Terremark North America LLC et al. v. Joao
`
`Control & Monitoring Sys., LLC, IPR2015-01482, Paper 10 (PTAB Dec. 28, 2015)
`
`(alleged delay in filing based in part of “apparent[] malfunctioning” of filing
`
`system that was not sufficiently demonstrated).
`
`
`
`For at least these reasons, and in particular, in light of the E2E System’s data
`
`confirming the Petition’s filing date of February 22, 2018, the Motion should be
`
`denied.
`
`B.
`
`The Filing Date of the Petition Was Already Confirmed
`
`Upon preparing the Petition for filing on February 22, 2018, Sirius XM
`
`noticed that additional funds were needed in its PTO Deposit Account to cover the
`
`filing fees for the instant Petition, but Sirius XM addressed those issues in the
`
`afternoon of February 22, 2018 – well prior to filing the Petition. Exhibit 1013
`
`(Declaration of Jonathan S. Caplan, “Caplan Decl.”) at ¶¶ 3-4. Nonetheless, in an
`
`abundance of caution, Sirius XM prepared for the requisite fees to be paid with a
`
`debit card and in the alternative its PTO Deposit Account to ensure that all fees
`
`would be paid with the filing. Exhibit 1018 at 1-2. Despite taking steps with the
`
`bank to ensure that the debit transaction would be processed, an error appeared to
`
`have occurred during submission of the payment for the Petition. See generally
`
`Exhibit 1018. Nonetheless, because Sirius XM had, pursuant to the guidelines on
`
`- 6 -
`
`
`
`the Board’s website, identified its Deposit Account as an alternative form of
`
`payment, and more than sufficient funds had cleared in its PTO Deposit Account
`
`on February 22, 2018 (see Exhibit 1018 at 3, 4), Sirius XM understood that the
`
`payment would be processed through its Deposit Account. While the records, as
`
`described above, indicate that the payment was processed on the evening of
`
`February 22, 2018, Sirius XM promptly contacted the PTAB Trial Division to
`
`ensure that any potential internal tracking error was clarified. Caplan Decl. at ¶¶ 3-
`
`4.
`
`In particular, to the extent there was any ambiguity surrounding the filing
`
`date of the Petition based on processing payment of the filing fees for the instant
`
`Petition, any ambiguity was resolved immediately upon Sirius XM’s filing of the
`
`Petition. Specifically, the day after Sirius XM filed the Petition, Sirius XM’s
`
`counsel contacted the PTAB Trial Division when it was unclear in the E2E System
`
`whether the Petition filing fee payment was processed and the Petition had been
`
`afforded its February 22, 2018 filing date – based on an apparent technical error
`
`with processing of the payment of the fees for the Petition. Caplan Decl. at ¶¶ 3-4;
`
`Exhibit 1018. The PTAB Trial Division noted the status of the Petition filing fee
`
`payment (“INPROCESS” – see Exhibit 1018 at 1-2) and instructed Sirius XM to
`
`submit an e-mail outlining Sirius XM’s actions in processing and uploading the
`
`Petition and payment on February 22, 2018. Caplan Decl. ¶ 4; see also Exhibit
`
`- 7 -
`
`
`
`1018. Sirius XM promptly did so. Id.
`
`Specifically, on February 23, 2018, as instructed by the PTAB Trial
`
`Division, Sirius XM submitted correspondence to the PTAB Trial Division which
`
`provided documentation demonstrating that when Sirius XM filed the Petition, it
`
`not only provided a debit card for processing the requisite payment, but also
`
`alternatively authorized its Deposit Account to be utilized for payment of all fees.3
`
`Caplan Decl. ¶¶ 3-4; Exhibit 1018 at 3-4. As explained in Exhibit 1018, while
`
`there was an apparent error in the processing of the debit card for payment of the
`
`Petition filing fees, Sirius XM’s Deposit Account was sufficiently funded on
`
`February 22, 2018 to cover all of the fees for the Petition, as reflected in the
`
`documentation provided to the PTAB Trial Division. Id. In particular, Sirius XM
`
`sent a federal wire to its PTO Deposit Account with additional funds to cover all
`
`filing fees, and that federal wire was received by the PTO account on
`
`February 22, 2018. See Exhibit 1018 at 3. Consistent with and subsequent to the
`
`
`3 Sirius XM’s identification of the Deposit Account as an alternative form of
`
`payment was pursuant to the USPTO’s guidance, on its website, which establishes
`
`that “‘pre-authorization to charge a deposit account may also be used to satisfy any
`
`deficiency in payment, thus preserving the original filing date or payment date of
`
`an application.’” Exhibit 1018 at 2.
`
`- 8 -
`
`
`
`submission of this documentation, the PTAB Trial Division properly accorded and
`
`reflected the February 22, 2018 filing date to the Petition in the E2E System.
`
`Therefore, as the instant Petition was filed within the statutory deadline, Patent
`
`Owner’s Motion should be denied.
`
`C. Alternatively, Sirius XM Requests Confirmation of the
`February 22, 2018 Filing Date
`
`Notwithstanding the foregoing, and even assuming if there had been a
`
`
`
`processing error preventing payment of Petition filing fee – which Sirius XM
`
`maintains there was not – the Board routinely allows for a “correction” of the filing
`
`date where a technical or clerical error occurred that prevented payment from
`
`occurring. The facts where such correction of the filing date is allowed comport
`
`with the situation faced by Sirius XM, although Sirius XM was able to complete
`
`payment of the Petition filing fees and meet its filing requirements and be accorded
`
`its proper filing date in this case.
`
`For example, Sirius XM identified a potential shortfall in its Deposit
`
`Account, immediately replenished the Account, arranged for debit payment as an
`
`alternative form of payment, confirmed the alternate payment should work with
`
`Citibank and authorized payment from our Deposit Account as well. See generally
`
`Exhibit 1018. These facts fall well within the case law according the requested
`
`filing date for a petition. See e.g., ConMed Corp. v. Bonutti Skeletel Innovations
`
`LLC, IPR2013-00624, Paper 22 (PTAB Mar. 14, 2014) (“When, as here, the record
`
`- 9 -
`
`
`
`supports a finding that a clerical error occurred, the Board may grant appropriate
`
`relief under 37 C.F.R. § 42.104(c) whether the party making the error admits to it
`
`or not.”); Oracle Corp. v. Maz Encryption Techs. LLC, IPR2014-00472, Paper 9
`
`(PTAB May 1, 2014) (according earlier filing date where “PRPS access . . . was
`
`indeed compromised” and petitioner “followed Board instructions . . . curing the
`
`incompleteness by the first business day following” the initial filing date); see also
`
`generally Apple Inc. v. Whitserve, LLC, IPR2014-00268, Paper 16 (PTAB Feb. 5,
`
`2014) (granting motion to correct filing date where PTAB system indicated that
`
`petitioner had timely filed the petition, exhibits and fee).
`
`Recognizing the February 22, 2018 filing date for the instant Petition is
`
`particularly appropriate where a petitioner, like Sirius XM here (as discussed
`
`above), promptly contacted the Board and addressed any potential concern
`
`regarding a possible clerical error. See e.g., 2Wire, Inc. v. TQ Delta LLC,
`
`IPR2015-00239, Paper 10 (PTAB Jan. 15, 2015) (according the one-year filing
`
`date where petitioner “promptly took action to ensure the proper filing date of the
`
`petitions”).
`
`Thus, even if a clerical or technical error in processing the payment of the
`
`fees took place, despite a sufficiently-funded and authorized alternative method of
`
`payment, there is no basis to change the duly accorded filing date of February 22,
`
`2018 for the instant Petition. To the extent the Board determines that any such
`
`- 10 -
`
`
`
`correction is needed, Sirius XM respectfully requests that the Petition be accorded
`
`a filing date of February 22, 2018 to be reflected in all portions of the E2E System.
`
`IV. CONCLUSION
`
`For the foregoing reasons, Sirius XM respectfully requests that Patent
`
`Owner’s Motion be denied.
`
`
`
`Dated: June 20, 2018
`
`
`
`Respectfully submitted,
`
`
`
`
`
`/Jonathan S. Caplan/
`
`Jonathan S. Caplan (Reg. No. 38,094)
`Mark Baghdassarian (pro hac vice)
`Shannon 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
`
`(Case No. IPR2018-00690)
`
`Attorneys for Petitioner
`Sirius XM Radio Inc.
`
`- 11 -
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that a true and
`
`correct copy of the foregoing Opposition to Patent Owner’s Motion to Dismiss was
`
`served on June 20, 2018, by filing this document through the PTAB E2E System as
`
`well as delivering via electronic mail upon the following counsel of record for
`
`Patent Owner:
`
`
`
`
`
`Ben J. Yorks (byorks@irell.com)
`Babak Redjaian (bredjaian@irell.com)
`David McPhie (dmcphie@irell.com)
`Irell & Manella LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067
`FraunhoferIPRs@irell.com
`
`
`
`/Jonathan S. Caplan/
`
`Jonathan S. Caplan (Reg. No. 38,094)
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Tel: 212.715.9488
`
`
`
`- 1 -
`
`
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