McPhie, David
`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Follow Up Flag:
`Flag Status:
`
`Hedvat, Shannon H. <SHedvat@KRAMERLEVIN.com>
`Thursday, July 19, 2018 1:31 PM
`Trials
`Caplan, Jonathan S.; Baghdassarian, Mark; Price, Jeffrey H.; McPhie, David; Redjaian,
`Babak; Yorks, Ben; #FraunhoferIPRs [Int]
`IPR2018-00689 and IPR2018-00690
`
`FollowUp
`Flagged
`
`Your Honors,
`
`Petitioner Sirius XM respectfully requests the relief outlined herein in IPR2018-00689 and IPR2018-00690 and
`is available for a call with the Board, should the Board so require, to address the issues identified below.
`
`Based on correspondence with Patent Owner, Patent Owner has indicated that it opposes Sirius XM’s
`request. Sirius XM requested that Patent Owner insert a short description to explain its basis for opposing
`Sirius XM’s request, but Patent Owner refused and instead demanded that the parties present briefing to the
`Board so that the Board may determine whether to grant the requests below. Sirius XM does not believe
`briefing is necessary for the Board to grant the requested relief to file replies. Counsel for both parties are
`available for a call on Monday, July 23rd and Tuesday, July 24th at the Board’s convenience.
`
`IPR2018-00689 – Petitioner requests permission to submit a reply to Patent Owner’s Preliminary Response to
`address the following:
`
`
`1. Patent Owner incorrectly asserts that Sirius XM was required to identify Sirius XM Holdings and
`Liberty Media as real parties in interest. Sirius XM will explain through case law and company
`information that neither Sirius XM Holdings nor Liberty Media is a real party interest. In addition,
`Sirius XM will explain that, in circumstances such as these, the PTAB routinely grants requests to
`amend RPI disclosures without affecting the filing date accorded to the petition.
`
`
`IPR2018-00690 – Petitioner requests permission to submit a reply to Patent Owner’s Preliminary Response to
`address the following:
`
`
`
`
`1. Patent Owner incorrectly asserts that Sirius XM was required to identify Sirius XM Holdings and
`Liberty Media as real parties in interest. Sirius XM will explain through case law and company
`information that neither Sirius XM Holdings nor Liberty Media is a real party interest. In addition,
`Sirius XM will explain that, in circumstances such as these, the PTAB routinely grants requests to
`amend RPI disclosures without affecting the filing date accorded to the petition.
`
`2. Patent Owner ignores the Board’s explicit instruction, in an e-mail dated June 22, that Patent Owner
`may not argue any response to Sirius XM’s Opposition to Patent Owner’s Motion to Dismiss (Paper
`9) “in its Patent Owner Response” should “the Board decide[] to institute.” Sirius XM will explain
`and request that Patent Owner’s arguments in its Preliminary Response addressing the Motion to
`Dismiss are incorrect and should be disregarded.
`
`
`1
`
`Fraunhofer Ex 2038-p 1
`Sirius v Fraunhofer
`IPR2018-00690
`
`

`

`3. Patent Owner presents a legally erroneous request that Sirius XM be prohibited from relying upon its
`expert declaration in support of its obviousness grounds. Sirius XM will explain that there is no
`basis for Patent Owner’s request.
`
`4. Patent Owner incorrectly asserts that the prior art reference Smallcomb does not qualify as prior
`art. Sirius XM will explain that Smallcomb is entitled to the date of its provisional application thus
`rendering it prior art to the challenged patent.
`
`
`Respectfully submitted,
`Shannon Hedvat
`Counsel for Petitioner
`
`
`
`Shannon H. Hedvat
`Associate
`
`
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas, New York, New York 10036
`T 212.715.9185 M 973.809.4768 F 212.715.8385
`shedvat@kramerlevin.com
`
`
`Bio
`
`This communication (including any attachments) is intended solely for the recipient(s) named above and may contain 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 by return e-mail message and delete all copies of the original communication.
`Thank you for your cooperation.
`
`
`2
`
`Fraunhofer Ex 2038-p 2
`Sirius v Fraunhofer
`IPR2018-00690
`
`