`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`SIRIUS XM RADIO INC.,
`Petitioner,
`
`v.
`FRAUNHOFER-GESELLSCHAFT ZUR FORDERNUNG DER
`ANGEWANDTEN E.V.,
`Patent Owner.
`____________________
`Case IPR2018-00690
`Patent 6,314,289
`__________________________________________________________
`
`PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
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`
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude Evidence
`IPR2018-00690 (U.S. Patent No. 6,314,289)
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`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`Exhibit 1002 (Dr. lyon’s expert declaration) is Admissible as it
`provides evidence supporting petitioner’s arguments for
`unpatentability ................................................................................................. 1
`Exhibit 1003 (Smallcomb) is Relevant as it supports the
`unpatentability of the challenged claims ......................................................... 3
`III. Exhibits 1008 and 1031 Are Admissible as part of the knowledge of a
`person of Ordinary skill in the art as cited and discussed in the petition ........ 4
`IV. Exhibit 1010 is an Admissible dictionary definition of
`“demultiplexer” that supports the petition ....................................................... 6
`Exhibits 1014-1016 are admissible to show that petitioner timely filed
`the petition ....................................................................................................... 7
`VI. Exhibit 1018 is Admissible .............................................................................. 7
`VII. Exhibit 1025 (Dr. Lyon’s reply declaration) is Admissible as it rebuts
`argument and evidence presented in the patent owner’s response ................11
`VIII. Exhibits 1026 and 1027 are Admissible as proper rebuttal evidence to
`arguments and evidence presented in patent owner’s response ....................12
`IX. Exhibit 1032 is Admissible because it is relevant .........................................14
`X.
`Conclusion .....................................................................................................15
`
`V.
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`i
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude Evidence
`IPR2018-00690 (U.S. Patent No. 6,314,289)
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Apple Inc. v. Smartflash LLC,
`CBM2014-00102, Paper 52 (PTAB Sept. 25, 2015) ...................................... 3, 14
`Dynamic Drinkware, LLC, v. Nat’l Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) ................................................................ 4, 12, 13
`In re Giacomini,
`612 F.3d 1380 (Fed. Cir. 2010) .................................................................... 13, 14
`Leonard v. Stemtech Intern. Inc.,
`834 F.3d 376 (Fed. Cir. 2016) ............................................................................ 15
`SK Innovation Co., Ltd. v. Celgard LLC,
`IPR2014-00679, Paper 58 (PTAB Sept. 25, 2015)............................................... 2
`SK Innovation Co., Ltd. v. Celgard LLC,
`IPR2014-00680, Paper 57 (PTAB Sept. 25, 2015)............................................... 2
`Tech. Licensing Corp. v. Videotek, Inc.,
`545 F. 3d 1316 (Fed. Cir. 2008) ........................................................... 3, 4, 12, 13
`Trivascular, Inc., v. Samuels,
`812 F.3d 1056 (Fed. Cir. 2016). Indeed, the Institution Decision ........................ 3
`Other Authorities
`37 C.F.R. 11.18(b)(1) ................................................................................................. 8
`37 C.F.R. § 42.5(d) .................................................................................................. 10
`37 C.F.R. § 42.6(e) ................................................................................................... 17
`37 C.F.R. § 42.11 ....................................................................................................... 8
`37 C.F.R. § 42.20(c) .................................................................................................... i
`37 C.F.R. § 42.23(b) ................................................................................................ 13
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`ii
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2018-00690 (U.S. Patent No. 6,314,289)
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`37 C.F.R. § 42.64(b)(2) .............................................................................................. 5
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`iii
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`
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude Evidence
`IPR2018-00690 (U.S. Patent No. 6,314,289)
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`Petitioner, Sirius XM Radio Inc. (“Petitioner”), opposes Fraunhofer-
`
`Gesellschaft Zur Fordernung Der Angewandten E.V. (“Patent Owner”)’s Motion to
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`Exclude (Paper 53, the “Motion”). For the reasons set forth below, Patent Owner’s
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`request to exclude Petitioner’s Exhibits 1002, 1003, 1008, 1010, 1014-1016, 1018,
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`1025-1028, 1031, 1032 fails to meet its “burden of proof to establish that it is
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`entitled to the requested relief.” 37 C.F.R. § 42.20(c).
`
`I.
`
`EXHIBIT 1002 (DR. LYON’S EXPERT DECLARATION) IS
`ADMISSIBLE AS IT PROVIDES EVIDENCE SUPPORTING
`PETITIONER’S ARGUMENTS FOR UNPATENTABILITY
`Exhibit 1002 (Dr. Lyon’s Declaration) is admissible because it relies on
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`relevant evidence to demonstrate the unpatentability of the challenged claims, and
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`there is no evidentiary basis to exclude portions of Dr. Lyon’s Declaration for
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`multiple reasons described below.
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`First, Patent Owner’s contention that Dr. Lyon relies on irrelevant
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`documents, namely Exhibits 1003 (Smallcomb) and 1005 (Campanella), wholly
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`lacks merit.1 Motion at 1. Exhibits 1003 and 1005 are central to Petitioner’s
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`contention that the prior art invalidates the ’289 Patent and are, therefore, relevant
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`by definition. Petitioner addresses the relevance of Exhibit 1003 below. See § II,
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`
`1 Patent Owner did not object to or move to exclude Exhibit 1005, demonstrating
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`that Patent Owner concedes the relevance of Exhibit 1005.
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`1
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`
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2018-00690 (U.S. Patent No. 6,314,289)
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`infra.
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`Second, there is no basis to exclude piecemeal sections of Dr. Lyon’s
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`Declaration particularly as Patent Owner cites no evidentiary rule supporting its
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`argument. Motion at 2. Indeed, the vast majority of the paragraphs Patent Owner
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`identified recount Dr. Lyon’s experience and the legal standards he applied in
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`developing his opinions (see, e.g., ¶¶ 1–24, 50–60, and 62–63), recite the claim
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`construction positions he applied in this proceeding (see, e.g., ¶¶ 75–80), are
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`introductory section paragraphs (see, e.g. ¶ 81), or are the claim charts referenced
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`in the Petition (at 24 n.2). The inclusion of such information in expert declarations
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`is routine and relevant under FRE 702, 703 and 803 because they reflect Dr.
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`Lyon’s expert opinions regarding the patentability of the challenged claims under
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`the proper legal standards.
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`Patent Owner cites no authority, under the FRE or otherwise, that suggests
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`that it would be appropriate to exclude portions of this integrated writing. See
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`Motion at 2. Tellingly, each non-precedential Board case cited in the Motion
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`involves the exclusion of an exhibit that was not cited anywhere in the party’s
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`papers rather than, as here, specific portions of an exhibit that was cited
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`extensively. SK Innovation Co., Ltd. v. Celgard LLC, IPR2014-00679, Paper 58 at
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`49 (PTAB Sept. 25, 2015) (excluding entire exhibits that were never cited); SK
`
`Innovation Co., Ltd. v. Celgard LLC, IPR2014-00680, Paper 57 at 27 (PTAB Sept.
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`2
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`
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2018-00690 (U.S. Patent No. 6,314,289)
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`25, 2015) (same); Apple Inc. v. Smartflash LLC, CBM2014-00102, Paper 52 at 37
`
`(PTAB Sept. 25, 2015) (same).
`
`II. EXHIBIT 1003 (SMALLCOMB) IS RELEVANT AS IT SUPPORTS
`THE UNPATENTABILITY OF THE CHALLENGED CLAIMS
`Smallcomb (Exhibit 1003) is relevant as it is one of the principle references
`
`demonstrating the unpatentability of the challenged claims and is, therefore, of
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`utmost relevance to these proceedings.
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`Patent Owner claims that Smallcomb is irrelevant because the Institution
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`Decision states that “the Petition does not sufficiently show that the Smallcomb
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`patent is prior art to the ’289 Patent.” Motion at 3. However, “the Board is not
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`bound by any findings made in its Institution Decision.” Trivascular, Inc., v.
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`Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016). Indeed, the Institution Decision
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`explicitly stated that it was based on a “preliminary record” and that trial was still
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`instituted on the Smallcomb-based grounds. Decision at 26.
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`The prior-art status of Smallcomb and the unpatentability of the challenged
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`claims over the Smallcomb-based grounds are live issues in the instituted
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`proceeding, making the Smallcomb reference itself fully relevant. See FRE 401.
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`More particularly, Petitioner met its initial burden “to put at issue whether there is
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`prior art alleged to anticipate” the challenged claims by citing Smallcomb, which
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`claims priority to an application “that is dated earlier than the apparent effective
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`date of the asserted patent claim.” Tech. Licensing Corp. v. Videotek, Inc., 545 F.
`3
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`
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2018-00690 (U.S. Patent No. 6,314,289)
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`3d 1316, 1329 (Fed. Cir. 2008). Once Patent Owner argued that Smallcomb was
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`not entitled to priority to the Smallcomb Provisional (Exhibit 1027), the burden
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`shifted back to Petitioner to show “that the contrary is true.” Id; see also see also
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`Dynamic Drinkware, LLC, v. Nat’l Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015)
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`(after a patent owner disputes the evidence or arguments that a reference is prior
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`art, the patent challenger may demonstrate entitlement to an earlier priority date).
`
`III. EXHIBITS 1008 AND 1031 ARE ADMISSIBLE AS PART OF THE
`KNOWLEDGE OF A PERSON OF ORDINARY SKILL IN THE ART
`AS CITED AND DISCUSSED IN THE PETITION
`Exhibits 1008 and 1031 are excerpts of a well-known textbook, J.G. Proakis,
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`Digital Communications, McGraw Hill, Inc. (3rd ed. 1995) (“Proakis”), cited and
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`discussed in the Petition and Dr. Lyon’s Declaration. Patent Owner’s contention
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`that they should be excluded because it was not afforded an opportunity to review
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`the full text fails for a number of reasons.
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`First, as confirmed during cross-examination, Patent Owner’s expert relied
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`on Proakis for his own declaration, and also taught a course on digital
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`communications using the same Proakis textbook (which he would still
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`recommend as a reference). Ex. 1029 at 21:10–22. Given this testimony, Patent
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`Owner’s protestations regarding not having access to the full writing ring hollow.
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`Second, Petitioner offered Patent Owner the opportunity to inspect the full
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`4
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2018-00690 (U.S. Patent No. 6,314,289)
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`text of Proakis on September 17, 2019,2 but Patent Owner never took up Petitioner
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`on its offer. Indeed, Patent Owner never once sent a request to review the textbook
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`(presumably because its own expert had the textbook). Instead, Patent Owner tries
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`to suggest that Petitioner prevented Patent Owner from gaining access to the
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`textbook due to a “no visitor policy” at Petitioner’s counsel’s offices because of the
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`Covid-19 pandemic. This is false. Petitioner offered to make the textbook available
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`for inspection long before the March 19, 2020 date when Petitioner’s counsel
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`informed Patent Owner its offices’ restrictions stemming from Covid-19. Ex. 2056.
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`Moreover, Petitioner’s actions after its counsel’s offices closure demonstrate
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`that it has been extremely accommodating to Patent Owner in view of the
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`pandemic. For example, in the co-pending district court litigation, Petitioner has
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`been working diligently to provide Patent Owner with the opportunity to conduct a
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`remote source code review, which, under the Protective Order, may only be
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`conducted in person at the offices of Petitioner’s counsel. Fraunhofer v. Sirius
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`XM, Case 1:17-cv-00184-JFB-SRF, D.I. 244 at n.1 (Per “Fraunhofer’s request, and
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`2 Paper 32 should not be “disregarded” as it was properly served pursuant to 37
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`C.F.R. § 42.64(b)(2). See Paper 32 at Certificate of Service; Motion at 4. Further, it
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`is proper for Supplemental Evidence to be considered as part of the record with
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`respect to an Opposition to a Motion to Exclude Evidence.
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`5
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2018-00690 (U.S. Patent No. 6,314,289)
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`in order to accommodate a remote source code review in view of the Covid-19
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`pandemic, SXM is working with Fraunhofer to amend the Protective Order (D.I.
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`90) to permit a remote source code review”).
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`Patent Owner also requests exclusion of Exhibit 1031 on the basis that cited
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`page numbers from Proakis are not included in either Exhibit 1008 or 1031.
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`Motion at 4. The pages are not missing. Instead, there were merely typographical
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`errors in Dr. Lyon’s citation to Exhibit 1031. Exhibt 1025 (Lyon Reply). In
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`particular, Dr. Lyon quoted Proakis in ¶ 55 of his Reply Declaration: “where
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`frequency, time and spatial diversity methods are described which overcome
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`conditions when ‘…channel attenuation is large, i.e., when the channel is in a deep
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`fade.’” This disclosure is located at pg. 777 of Proakis, which is provided in
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`Exhibit 1031. Similarly, Dr. Lyon presented the following quote, which is located
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`at pg. 468 of Exhibit 1031: “The topic of this subsection is the error rate
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`performance of the Viterbi algorithm on an additive white gaussian noise channel
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`with soft-decision decoding.” Lyon Reply, ¶ 105.
`
`IV. EXHIBIT 1010 IS AN ADMISSIBLE DICTIONARY DEFINITION OF
`“DEMULTIPLEXER” THAT SUPPORTS THE PETITION
`Exhibit 1010 is a dictionary definition of the term “demultiplexer.” Patent
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`Owner seeks to exclude this exhibit claiming that it was not cited in the Petition,
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`Reply, or Dr. Lyon’s Declaration. Motion at 5. That is not true. Dr. Lyon cited
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`Exhibit 1010 in ¶ 170 of his opening declaration (Exhibit 1002), but it was labeled
`6
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2018-00690 (U.S. Patent No. 6,314,289)
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`Exhibit 1012 due to a typographical error. A review of the exhibit in conjunction
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`with Dr. Lyon’s declaration confirms that Exhibit 1010 supports Dr. Lyon’s
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`contention that “[a] POSA would understand that a “de-multiplexer” performs
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`separation from a common input into several outputs,” so the exhibit is admissible.
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`Exhibit 1002, ¶ 170.
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`V. EXHIBITS 1014-1016 ARE ADMISSIBLE TO SHOW THAT
`PETITIONER TIMELY FILED THE PETITION
`Exhibits 1014–1016 are screen captures of the PTAB’s E2E filing system
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`that Petitioner relied upon to confirm that the Petition was timely filed, making
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`them relevant under FRE 401-403. See Paper 9. Exhibit 1014 is a screenshot from
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`a PTAB web page demonstrating that the requisite filing fees were timely debited
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`from Petitioner’s counsel’s USPTO deposit account; Exhibit 1015 is a screenshot
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`from a PTAB web page demonstrating that the Petition and Exhibits were timely
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`filed; and Exhibit 1016 is a screenshot from a PTAB webpage demonstrating that
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`the Petition, Exhibits, and payment were all timely received. Contrary to Patent
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`Owner’s assertion, these documents were authenticated in a declaration provided
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`by Jeffrey Price, who is Backup Counsel for Petitioner in this case. See Paper 32,
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`¶¶ 79. Notwithstanding this, such evidence from the E2E filing system is properly
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`authenticated Evidence About Public Records pursuant to FRE 901(7).
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`VI. EXHIBIT 1018 IS ADMISSIBLE
`On February 23, 2018, Lead Counsel for Petitioner, Jonathan Caplan sent an
`7
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2018-00690 (U.S. Patent No. 6,314,289)
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`email with several attachments to the PTAB’s email address at trials@uspto.gov.
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`Exhibit 1018 at 1. Mr. Caplan also submitted a sworn declaration authenticating
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`the exhibit and explaining the attendant circumstances immediately after an issue
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`arose regarding the payment of the Petition’s filing fees. Paper 8 at 1. Contrary to
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`Patent Owner’s contentions, the evidence is admissible under FRE 803 and 807.
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`FRE 807 permits hearsay where (1) the statement is supported by sufficient
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`guarantees of trustworthiness—after considering the totality of circumstances
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`under which it was made and evidence, if any, corroborating the statement; and
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`(2) it is more probative on the point for which it is offered than any other evidence
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`that the proponent can obtain through reasonable efforts. Here, Exhibit 1018 is
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`“supported by sufficient guarantees of trustworthiness” because it is submitted by a
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`Registered Patent Attorney (Mr. Caplan) who is bound by the duty of candor (37
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`C.F.R. § 42.11), and the declaration itself provides an attestation that the
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`statements therein are true. See 37 C.F.R. 11.18(b)(1).
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`Mr. Caplan’s declaration further authenticates exhibits that were attached
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`thereto and corroborate the statements made in the email. See Exhibit 1018 at 3
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`(screenshot of the Petition, demonstrating requisite amount in Petitioner’s Deposit
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`Account on Feb. 22, 2018); id. at 4 (screenshot of the Petition, demonstrating that
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`Petitioner authorized the USPTO to charge its deposit account); id. at 5–6
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`(screenshot of the PTAB website showing an “INPROCESS” payment status); id.
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`8
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2018-00690 (U.S. Patent No. 6,314,289)
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`at 7–11 (internal emails and screenshots regarding the “INPROCESS” payments
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`status). Mr. Caplan swore to the authenticity of these supporting documents. Paper
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`8 at ¶ 3. Moreover, there can be no question that the statements are “more
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`probative on the point for which it is offered than any other evidence that the
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`proponent can obtain through reasonable efforts.” Mr. Caplan directly oversaw
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`and was involved in the events relating to these statements.
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`Exhibit 1018 is further admissible under FRE 803(5) (Recorded
`
`Recollection) and 803(6) (the Business Records). Under 803(5), the evidence is
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`admissible if it “(A) is on a matter the witness once knew about but now cannot
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`recall well enough to testify fully and accurately; (B) was made or adopted by the
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`witness when the matter was fresh in the witness’s memory; and (C) accurately
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`reflects the witness’s knowledge.” There can be no dispute all three elements have
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`been satisfied here as Mr. Caplan describes in the email events that transpired soon
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`after they occurred, were fresh in his memory at the time they were made and
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`accurately reflect his knowledge as shown by the e-mail itself.
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`Under FRE 803(6), the evidence is admissible if “(A) the record was made
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`at or near the time by — or from information transmitted by—someone with
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`knowledge [here Mr. Caplan had the knowledge]; (B) the record was kept in the
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`course of a regularly conducted activity of a business [here, the e-mail and exhibits
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`were kept in the ordinary course of Mr. Caplan’s law firm]; (C) making the record
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`9
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2018-00690 (U.S. Patent No. 6,314,289)
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`was a regular practice of that activity [Mr. Caplan wrote the email as part of his
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`regular activities as an attorney representing Petitioner]; (D) all these conditions
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`are shown by the testimony of the custodian or another qualified witness . . . [here,
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`Mr. Caplan confirmed this in his declaration] and (E) the opponent does not show
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`that the source of information or the method or circumstances of preparation
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`indicate a lack of trustworthiness [Patent Owner has made no such showing].
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`Patent Owner’s argument that Exhibit 1018 has not been authenticated is
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`meritless. Mr. Caplan, the author of the email in question, authenticated the email
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`in a sworn declaration. See Paper 8 at ¶¶ 3–4. Further, as a communication sent to a
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`government email address, Exhibit 1018 is properly authenticated Evidence About
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`Public Records under FRE 901(7). And because the Board received the email, the
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`panel can verify that the copy filed is the same that was sent to the Board.
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`Patent Owner also argues that Exhibit 1018 represents “an impermissible ex
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`parte communication with the Board in violation of 37 C.F.R. § 42.5(d).” Motion
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`at 7. However, the email included within Exhibit 1018 was sent at the direction of
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`Mr. Kellogg prior to Patent Owner appointing counsel to the case, so there was no
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`opposing counsel of record to copy on the email. Further, Patent Owner fails to
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`explain any basis under the FRE for excluding Exhibit 1018 on a theory of an
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`“impermissible ex parte communication” or identify any instance in which the
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`Board has excluded such an exhibit. Still further, Patent Owner can demonstrate no
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`10
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2018-00690 (U.S. Patent No. 6,314,289)
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`prejudice stemming from Exhibit 1018 as it had (but did not take) the opportunity
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`to cross-examine Mr. Caplan on the substance of the exhibit and his testimony
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`concerning the same. See Paper 8 at ¶¶ 3–4.
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`VII. EXHIBIT 1025 (DR. LYON’S REPLY DECLARATION) IS
`ADMISSIBLE AS IT REBUTS ARGUMENT AND EVIDENCE
`PRESENTED IN THE PATENT OWNER’S RESPONSE
`Exhibit 1025 (Dr. Lyon’s Reply Declaration) is admissible because it relies
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`on relevant evidence—specifically, Exhibits 1026 (Campanella ’591) and 1027
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`(Smallcomb ’258)—and there is no basis to exclude portions of Dr. Lyon’s
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`Declaration. Campanella ’591 and Smallcomb ’258 are relevant and central to
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`Petitioner’s rebuttal of Patent Owner’s arguments that Campanella and Smallcomb
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`are not prior art. Petitioner demonstrates below the reasons why such evidence was
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`appropriately presented in reply to Patent Owner’s response. See §§ VIII and IX,
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`infra; see generally Petitioner’s Reply.
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`There is also no basis to exclude piecemeal sections of Dr. Lyon’s Reply
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`Declaration. Indeed, Patent Owner cites no evidentiary rule supporting its
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`argument. Motion at 10. The vast majority of the paragraphs identified set out legal
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`standards he applied in forming his opinions (see, e.g., ¶ 36) or are introductory or
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`conclusory paragraphs (see, e.g. ¶¶ 1–4, 7, 8, 35, and 42). These are statements
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`routinely presented in expert declarations and are relevant to understanding his
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`opinions.
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`11
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`Finally, contrary to Patent Owner’s assertion, Paragraphs 62–108 are cited in
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`Petitioner’s Reply and therefore are properly presented within Dr. Lyon’s Reply
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`Declaration. Compare Motion at 9 with Reply at 25.
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`VIII. EXHIBITS 1026 AND 1027 ARE ADMISSIBLE AS PROPER
`REBUTTAL EVIDENCE TO ARGUMENTS AND EVIDENCE
`PRESENTED IN PATENT OWNER’S RESPONSE
`Campanella ’591 and Smallcomb ’258 are relevant and should not be
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`excluded. Patent Owner argues that these provisional applications are irrelevant
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`because they are part of an alleged belated effort to make a prima facie showing of
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`invalidity in the Reply.” Motion at 9. That is not true.
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`Petitioner made its prima facie showing of invalidity based on the patents
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`issued to Campanella and Smallcomb. See generally Petition. As a result, these
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`exhibits, and the arguments premised thereon, are timely because Petitioner met its
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`initial burden of production to “introduce sufficient evidence to put at issue
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`whether there is prior art alleged to anticipate the claims being asserted” in the
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`Petition. Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1329 (Fed. Cir.
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`2008); see also Dynamic Drinkware, LLC, v. Nat’l Graphics, Inc., 800 F.3d 1375
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`(Fed. Cir. 2015) (finding that a patent challenger meets its initial burden by arguing
`
`that a reference anticipated the asserted claims).
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`After Patent Owner came “forward with evidence and argument to the
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`contrary” in its Response, the burden of production returned to Petitioner, at which
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`12
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2018-00690 (U.S. Patent No. 6,314,289)
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`time Petitioner was entitled to produce additional evidence and argument. Tech.
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`Licensing, 545 F.3d at 1327; see also Dynamic Drinkware, 800 F.3d at 1380
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`(holding that after the burden of production shifts back to the patent challenger, the
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`patent challenger may demonstrate entitlement to an earlier priority date through a
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`provisional application). Petitioner’s citation of evidence to counter Patent
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`Owner’s arguments was, therefore, entirely proper under Tech. Licensing, Dynamic
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`Drinkware, and 37 C.F.R. § 42.23(b).
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`Patent Owner’s argument that Petitioner did not meet its initial burden is
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`meritless because Patent Owner elevates Petitioner’s obligations far beyond the
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`requirements set forth in Dynamic Drinkware and Tech. Licensing. See Patent
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`Owner Response at 49; Sur-Reply at 9–11. As explained above, Dynamic
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`Drinkware and Tech. Licensing require that a petitioner make a showing of
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`invalidity based on the prior art and not, as Patent Owner suggests, to anticipate an
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`argument regarding the priority date that Patent Owner has not yet made. See, e.g.,
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`Dynamic Drinkware, 800 F.3d at 1379 (“Dynamic also had the initial burden of
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`production, and it satisfied that burden by arguing that Raymond anticipated the
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`asserted claims of the 196 patent under §102(e)(2).”). That is what Petitioner did
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`here. Petition at 15, 19.
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`Similarly, in In re Giacomini, 612 F.3d 1380, 1383 (Fed. Cir. 2010), the
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`Examiner met its initial burden of production citing a reference as prior art as of its
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`13
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`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
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`provisional filing date. Having not challenged the Examiner to demonstrate that the
`
`provisional provided written description support for the patent, the burden of
`
`production never shifted back to the Examiner, so the Federal Circuit found that
`
`the patent had the same patent-defeating effect as if it were filed on the provisional
`
`application’s filing date. Id. at 1384. Thus, In re Giacomini demonstrates that the
`
`initial burden of production may be satisfied by an assertion that a patent is prior
`
`art as of its provisional date.
`
`Finally, because the prior-art status of Smallcomb and Campanella are live
`
`issues in the instituted proceeding, Exhibits 1026 and 1027 fully relevant.
`
`IX. EXHIBIT 1032 IS ADMISSIBLE BECAUSE IT IS RELEVANT
`Patent Owner argues that Exhibit 1032 should be excluded because it is not
`
`cited in the Petition or Reply. Motion at 10. However, Patent Owner admits that
`
`Exhibit 1032 was cited in Dr. Lyon’s Reply Declaration, and its own cited case law
`
`(see Motion at 10) establishes that such a citation is sufficient to demonstrate
`
`relevance under the FRE. See Apple Inc. v. Smartflash LLC, CBM2014-00102,
`
`Paper 52 at 37 (PTAB Sept. 25, 2015) (declining to exclude an exhibit that was
`
`reviewed by a declarant).
`
`Further, Patent Owner presents a substantive argument to exclude evidence
`
`based on an overly narrow reading of the definition of “diversity.” See Motion at
`
`10 (“Yet the cited portion refers only to frequency diversity, not code diversity, in
`
`14
`
`
`
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2018-00690 (U.S. Patent No. 6,314,289)
`
`microwave communications, not radio communications. Thus, it is inapposite even
`
`in the limited instances where it is cited.”). This assertion is patently untrue. The
`
`definition of diversity refers to techniques (of which frequency diversity is one
`
`example) that increase the likelihood that at least one of the diverse paths “will get
`
`through well”:
`
`Exhibit 1032.
`
`
`
`Further still, Patent Owner’s arguments as to relevance of this definition fail
`
`at least because (1) the satellite communications spectrum overlaps the microwave
`
`communications spectrum and, (2) Patent Owner does not introduce any evidence
`
`that the term “diversity” has different meanings in “microwave communications”
`
`and “radio communications.” See Motion at 11. In any case, Patent Owner’s
`
`argument goes to the weight that should be accorded to the evidence, not its
`
`admissibility. See Leonard v. Stemtech Intern. Inc., 834 F.3d 376, 391 (Fed. Cir.
`
`2016) (finding that a disagreement regarding an expert’s methodology and
`
`assumptions go to the weight of the evidence, not its admissibility).
`
`X. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that the Panel
`
`deny Patent Owner’s Motion to Exclude.
`
`15
`
`
`
`Dated: May 5, 2020
`
`
`
`
`
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2018-00690 (U.S. Patent No. 6,314,289)
`
`
`
`Respectfully submitted,
`
`
`
`/Jonathan S. Caplan/
`Jonathan S. Caplan (Reg. No. 38,094)
`Mark Baghdassarian (pro hac vice
`forthcoming)
`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.
`
`16
`
`
`
`Petitioner’s Opposition to Patent Owner’s Motion to Exclude
`IPR2018-00690 (U.S. Patent No. 6,314,289)
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies, in accordance with 37 C.F.R. § 42.6(e), that
`
`service was made on the Patent Owner as detailed below.
`
`Date of service May 5, 2020
`
`Manner of service Electronic Mail
`(byorks@irell.com; bredjaian@irell.com;
`dmcphie@irell.com; kvakili@irell.com)
`
`
`
`Documents served PETITIONER’S OPPOSITION TO PATENT OWNER’S
`MOTION TO EXCLUDE
`
`Persons Served (Ben J. Yorks; Babak Redjaian; David McPhie; Kamran
`Vakili)
`
`
`
`
`
`
`/Jonathan S. Caplan /
`Jonathan S. Caplan
`Registration No. 38,094
`Counsel for Petitioner
`
`17
`
`
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