Kramer Levin Secures Request for Rehearing Win before the PTAB for Sirius XM

The Patent Trial and Appeal Board (the Board) has granted Sirius XM Radio, Inc. (Sirius XM)’s Requests for Rehearing of its earlier decisions denying four inter partes review Petitions based on Sirius XM’s identification of Real Parties in Interest.  Successful Rehearing Requests are exceedingly rare, being granted only about five percent of the time. 

Sirius XM filed the Petitions for Inter Partes Review in Case Nos. IPR2018-00681, IPR2018-00682, IPR2018-00689, and IPR2018-00690, challenging four patents owned by Fraunhofer Gesellschaft zur Forderung der Angewandten Forschung eV.  The Board denied each Petition under 35 U.S.C. § 312 finding that Sirius XM should have identified Sirius XM Holdings, Inc. as a Real Party in Interest at the time the Petitions were filed. 

Nine months after the Board denied the Petitions, and based on Sirius XM’s challenges to the Board’s decisions including filing Requests for Rehearing and notifying the Board of precedential opinions supporting Sirius XM’s position, the Board reversed course and acknowledged that its “institution decision was based on an erroneous interpretation of the law” as set forth in two precedential decisions, Proppant Express Investments, LLC v. Oren Technologies, LLC, Case IPR2017–01917 (Feb. 13, 2019) (Paper 86) (precedential) (Proppant), and Adello Biologics LLC v. Amgen Inc., Case PGR2019–00001 (Feb. 14, 2019) (Paper 11) (precedential) (Adello). These decisions clarify that failures in identifying all RPIs are not “designed to award a patent owner . . . a windfall” and that “[t]he Board may, under 35 U.S.C. § 312(a), accept updated mandatory notices as long as the petition would not have been time barred under 35 U.S.C. § 315(b) if it had included the real party in interest.” Adello at 3; Proppant at 7.  

In determining that Sirius XM would be permitted to amend its identification of Real Parties in Interest without altering the filing dates of the Petitions, the Board considered the following four factors: “whether there have been (1) attempts to circumvent the § 315(b) bar or estoppel rules, (2) bad faith by the petitioner, (3) prejudice to the patent owner caused by the delay, or (4) gamesmanship by the petitioner.” Finding that Holdings was not subject to the § 315(b) time bar at the time of filing and no evidence of an attempt circumvent the estoppel rules, bad faith, gamesmanship, or prejudice to the Patent Owner, the Board determined that Sirius XM should be allowed to add Holdings as a Real Party in Interest without changing the Petitions’ filing dates. The Board will now consider Sirius XM’s Petitions on their merits.

Law360 reported on the win.