Paper No. ___
`Filed: January 29, 2015
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`
`
`HUGHES NETWORK SYSTEMS, LLC and
`HUGHES COMMUNICATIONS, INC.,
`Petitioner,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_____________________________
`
`Case IPR2015-00059
`Patent 7,916,781
`
`_____________________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107
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`

`
`TABLE OF CONTENTS
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`Case IPR2015-00059
`Patent 7,916,781
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`Page
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`I.
`
`II.
`
`INTRODUCTION .......................................................................................... 1
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`FAILURE TO NAME REAL PARTIES-IN-INTEREST.............................. 3
`
`A.
`
`B.
`
`C.
`
`The Real Party-In-Interest Requirement .............................................. 4
`
`The Petition Fails To Identify Real Parties-In-Interest ........................ 5
`1.
`EchoStar Is a Real Party-In-Interest .......................................... 5
`
`DISH Is a Real Party-In-Interest ................................................ 7
`2.
`
`Failure to Identify Real Parties-in-Interest Is Fatal to the
`Petition ................................................................................................ 13
`
`III. EXPERT QUALIFICATIONS AND HINDSIGHT .................................... 14
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`IV. CLAIM CONSTRUCTION ......................................................................... 17
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`V.
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`PROPOSED GROUNDS OF CHALLENGE .............................................. 19
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`A. Ground 1 Fails .................................................................................... 19
`1.
`The Petition Does Not Establish That Divsalar Qualifies
`
`As Prior Art .............................................................................. 19
`2.
`Divsalar Does Not Anticipate Claims 1 or 2 ........................... 23
`
`B. Ground 2 Fails .................................................................................... 27
`
`1.
`
`
`Ping Does Not Teach or Suggest A “First Encoding
`Operation Being a Linear Transform Operation” as
`Recited in Claim 1.................................................................... 27
`The Ground 2 Challenges to Additional Claims Are
`Similarly Deficient ................................................................... 32
`C. Ground 3 Fails .................................................................................... 33
`
`2.
`
`
`D. Ground 4 Fails .................................................................................... 34
`1.
`Claim-by-Claim Undisclosed Limitations ............................... 34
`
`Insufficient and Illogical Rationale to Combine ...................... 38
`2.
`
`Ground 5 Fails .................................................................................... 40
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`E.
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`VI. CONCLUSION ............................................................................................. 43
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`VII. APPENDIX ................................................................................................... 44
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`
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`-i-
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`Case IPR2015-00059
`Patent 7,916,781
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`I.
`
`INTRODUCTION
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`The Board should not institute inter partes review (IPR) on claims 1, 2, 3, 4,
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`5, 6, 7, 13, 14, 15, 16, and 19 of U.S. Patent No. 7,916,781 (“the ‘781 patent”)
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`because petitioner, Hughes Network Systems, LLC and Hughes Communications,
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`Inc. (“Petitioner” or “Hughes”), has filed a fatally flawed petition and has not met
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`its burden of showing it has a reasonable likelihood of prevailing on any of its
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`proposed grounds of unpatentability.
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`The ‘781 patent represents a seminal improvement to coding systems and
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`methods used for digital satellite transmission. It discloses an ensemble of codes
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`called irregular repeat-accumulate (IRA) codes, which are specific types of error-
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`correcting codes. These IRA codes enable a transmission rate close to the
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`theoretical limit, while also providing the advantage of a low encoding complexity.
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`See, e.g., Ex. 2001 p. 1711 (noting inventors’ unique contribution).
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`Moreover, the current industry standard for digital satellite transmissions
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`uses channel codes that are the claimed IRA codes. This digital satellite
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`transmission standard is titled “Digital Video Broadcasting (DVB); Second
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`generation framing structure, channel coding and modulation systems for
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`Broadcasting, Interactive Services, News Gathering and other broadband satellite
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`applications” (the “DVB-S2 standard”). Experts in the industry widely credit the
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`involved inventors for the IRA codes that the DVB-S2 standard uses. See, e.g., Ex.
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`2002 p. 0001, n.8; see also Ex. 2003 p. 0001, n.8.
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`The ‘781 patent is directed to serial concatenation of interleaved
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`convolutional codes forming turbo-like codes. For example, claim 1 of the ‘781
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`Case IPR2015-00059
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`patent recites the following:
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`A method of encoding a signal, comprising:
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`receiving a block of data in the signal to be encoded, the block of
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`data including information bits;
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`performing a first encoding operation on at least some of the
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`information bits, the first encoding operation being a linear
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`transform operation that generates L transformed bits; and
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`performing a second encoding operation using the L transformed bits
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`as an input, the second encoding operation including an
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`accumulation operation in which the L transformed bits
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`generated by the first encoding operation are accumulated, said
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`second encoding operation producing at least a portion of a
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`codeword, wherein L is two or more.
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`As discussed further below, the petition can be dismissed for a number of
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`reasons. For example, the petition fails to properly identify all real parties-in-
`
`interest, a fatal deficiency that cannot be cured, given that the earliest filing date
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`that could be accorded to the corrected petition would not fall within the one-year
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`period specified in 35 U.S.C. § 315(b).1 While the Board can deny institution
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`based on this reason alone and without considering the merits, also fatal to
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`proposed Ground 1 is Petitioner’s failure to establish that the reference relied upon,
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`Divsalar, even qualifies as a prior art printed publication. The petition suffers from
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`
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`1 Petitioner has filed six petitions for inter partes review: IPR2015-00059,
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`IPR2015-00060, IPR2015-00061, IPR2015-00067, IPR2015-00068, and IPR2015-
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`00081. All six petitions similarly fail to properly name all real parties-in-interest.
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`Case IPR2015-00059
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`other deficiencies as well. Significantly, the proposed grounds of challenge fail to
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`demonstrate that each feature of claims 1, 2, 3, 4, 5, 6, 7, 13, 14, 15, 16, and 19 of
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`the ‘781 patent is found in the prior art. Accordingly, institution of inter partes
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`review should be denied.
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`II.
`
`FAILURE TO NAME REAL PARTIES-IN-INTEREST
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`As a threshold matter, the petition should be dismissed because Hughes
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`failed to identify all real parties-in-interest as required by 35 U.S.C. § 312(a)(2)
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`and 37 C.F.R. § 42.8(b)(1). The petition identifies only Hughes Network Systems,
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`LLC and Hughes Communications, Inc. as real parties-in-interest.2 It at least fails
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`to identify EchoStar Corporation (“EchoStar”), even though Hughes is the wholly
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`owned subsidiary of EchoStar, and DISH Network Corporation, DISH Network
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`L.L.C. and dishNET Satellite Broadband L.L.C. (collectively, “DISH”), even
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`though EchoStar and DISH are under common control.3 The existence of
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`
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`2 While the petition notes that “EchoStar Corporation is the parent of Hughes
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`Satellite Systems Corporation, which is the parent of Hughes Communications,
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`Inc.,” it does not identify EchoStar as a real party-in-interest. Pet. p. 1.
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`3 The decision to mention EchoStar but not identify it a real party-in-interest
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`was not a mere oversight, but a strategic decision. Caltech asserted the ‘781 patent
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`against Hughes in federal district court and named DISH Network Corporation,
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`DISH Network L.L.C., and dishNET Satellite Broadband L.L.C. as co-defendants.
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`Ex. 1021 p. 2. On September 30, 2014, Caltech filed a motion for leave to amend
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`financially controlling interests, closely intertwined business relationships,
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`overlapping ownership and management, indemnification agreements, shared
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`counsel and common litigation strategy clearly establish under the totality of the
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`circumstances that EchoStar and DISH are real parties-in-interest to this
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`proceeding. Petitioner’s failure to identify them as real parties-in-interest is fatal to
`
`the petition.
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`A. The Real Party-In-Interest Requirement
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`The requirement regarding real parties-in-interest is clear: “A petition [for
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`inter partes review] may be considered only if . . . [it] identifies all real parties in
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`interest.” 35 U.S.C. § 312(a)(2). Identification of real parties-in-interest assists
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`“members of the Board in identifying potential conflicts” and assures “proper
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`application of the statutory estoppel provisions.” Trial Practice Guide, 77 Fed.
`
`Reg., 48,759 (Aug. 14, 2012). The requirement “seeks to protect patent owners
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`from harassment via successive petitions by the same or related parties, to prevent
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`parties from having a ‘second bite at the apple,’ and to protect the integrity of both
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`the USPTO and Federal Courts by assuring that all issues are promptly raised and
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`vetted.” Id.
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`
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`its complaint to add EchoStar as a defendant, and the motion was pending when
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`Hughes’s IPR was filed. Ex. 2004. Hughes and EchoStar surely recognized at the
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`time that stating EchoStar was a real party-in-interest would negatively impact
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`their opposition to the motion.
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`Real party-in-interest analysis is “highly fact-dependent” and judged by the
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`totality of the circumstances rather than any “bright-line test.” Id. There are a
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`number of relevant factors, including, but not limited to: (1) an agreement to be
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`bound; (2) pre-existing substantive legal relationships between the named and
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`unnamed parties, including preceding and succeeding owners, and assignee and
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`assignor; (3) adequate representation by someone with the same interests, such as a
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`trustee or fiduciary; (4) assumption of control over the proceeding; (5) agency; and
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`(6) a special statutory scheme expressly foreclosing successive litigation, such as
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`bankruptcy and probate proceedings. Taylor v. Sturgell, 553 U.S. 880, 893–895,
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`893 n.6 (2008); see also 77 Fed. Reg. at 48,759 (citing Taylor factors). “A
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`common consideration is whether the non-party exercised or could have exercised
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`control over a party’s participation in the proceeding.” 77 Fed. Reg. at 48,759.
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`The non-party’s participation may be overt or covert, and the evidence may be
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`direct or circumstantial, but the evidence as a whole must show that the non-party
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`possessed control, or the ability to control, from a practical standpoint. Gonzalez
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`v. Banco Cent. Corp., 27 F.3d 751, 759 (1st Cir. 1994).
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`B.
`
`The Petition Fails To Identify Real Parties-In-Interest
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`
`1.
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`EchoStar Is a Real Party-In-Interest
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`Here the relevant factors, including a parent/subsidiary relationship and a
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`financially controlling interest, suggest that EchoStar is a real party of interest that
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`should have been named in the petition.
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`First, control can be inferred from EchoStar’s “financially controlling
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`interest” in Hughes. See Zoll Lifecor Corp. v. Philips Elecs. N. Am. Corp.,
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`IPR2013-00609, Paper 15 at 10 (PTAB Mar. 20, 2014) (“financially controlling
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`interest” significant); see also 77 Fed.Reg. at 48,617 (same). Here there can be no
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`doubt as to the existence of a financially controlling interest because Hughes is a
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`wholly owned subsidiary of EchoStar. Ex. 2005 ¶ 4 (citing Ex. 1021 ¶ 4). In
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`EchoStar’s SEC filings, Hughes is referred to as a “segment” of EchoStar and
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`Hughes is presented as a central and essential component of EchoStar. Ex. 2006
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`pp. 8, 11-13. Put simply, for all purposes relevant to Hughes’ petition, EchoStar is
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`Hughes. See Copperweld Corp. v. Independence Tube Corp., 467 U.S. 752, 771
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`(1984) (“A parent and its wholly owned subsidiary have a complete unity of
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`interest. Their objectives are common, not disparate; their general corporate
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`actions are guided or determined not by two separate corporate consciousnesses,
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`but one.”). Thus EchoStar is a real party-in-interest.
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`Second, it is clear that EchoStar had the opportunity to control and could
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`have controlled Hughes’ participation in these proceedings. See Zoll, IPR2013-
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`00609, Paper 15 at 10-11; 77 Fed. Reg. at 48,759 (“[I]t should be enough that the
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`nonparty has the actual measure of control or opportunity to control that might
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`reasonably be expected between two formal coparties.”). Numerous documents
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`demonstrate that legal affairs are jointly and commonly controlled between Hughes
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`and EchoStar. EchoStar and Hughes share the same internal legal team including
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`the same General Counsel, who “is responsible for all legal and government affairs
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`of EchoStar and its subsidiaries” (Ex. 2007 p. 2), as well as an Associate General
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`Counsel. Ex. 2008 p. 1. Moreover, a parent corporation has a “real interest” in the
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`affairs of its subsidiary and thus EchoStar had a right to control the proceeding
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`involving Hughes. See Dalton v. Honda Motor Co., 425 F. App’x 886, 890 (Fed.
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`Cir. 2011). Given the fact that the same legal team controls legal decision-making
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`responsibilities for both EchoStar and Hughes, it is beyond dispute that EchoStar
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`“could have exercised control over [Hughes]’s participation in [the] proceeding.”
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`77 Fed. Reg. at 48,759.4 It is actually inconceivable here that EchoStar lacked
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`control, or ability to control. That too makes EchoStar a real party-in-interest.
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`2.
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`DISH Is a Real Party-In-Interest
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`Examination of the Taylor factors and DISH’s financially controlling
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`interest in Hughes, among other things, suggest that DISH is a real party of interest
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`that should have been disclosed in the petition.
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`First, DISH and EchoStar (Hughes’s parent) are under common control
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`because the controlling shareholder of DISH has a “financially controlling interest”
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`in Hughes. See Zoll, IPR2013-00609 (Paper 15) at 10; Rules of Practice for Trials
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`Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and
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`Appeal Board Decisions, 77 Fed. Reg. 48,617 (Aug. 14, 2012). In fact, EchoStar
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`and DISH literally were the same company until the DISH Network service brand
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`was spun off as DISH Network Corporation on January 1, 2008. Ex. 2005 ¶ 9.
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`While EchoStar and DISH are now technically separate entities, a substantial
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`majority of the voting power of both companies is owned by Charles W. Ergen,
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`who acts as Chairman of both companies. Ex. 2006 p. 8. Mr. Ergen possesses
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`
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`4 All emphasis added unless otherwise noted
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`approximately 80.8% of the total voting power of EchoStar and 85.1% of the
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`voting power of DISH; he has the ability to elect a majority of directors and to
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`control all matters requiring stockholder approval at both companies, making both
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`EchoStar and DISH “controlled companies” under NASDAQ listing rules. See id.
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`at 42-43; Ex. 2009 p. 47. EchoStar and DISH are under “common control” as
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`explicitly represented in public documents. Ex. 2010 p. 15 (“EchoStar and DISH
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`are entities under common control.”). Additionally, transactions between EchoStar
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`and DISH are not even considered arm’s length transactions because of the
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`common ownership and management. Ex. 2006 p. 7 (“We have potential conflicts
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`of interest with DISH Network due to our common ownership and management.”).
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`Thus DISH is a real party-in-interest.
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`Second, the close relationship between Hughes, EchoStar, DISH indicates
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`that the three companies remain so inextricably intertwined such that all are real
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`parties-in-interest. See 77 Fed. Reg. at 48,760 (non-party’s “relationship with the
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`petitioner” is relevant to real party-in-interest analysis). When DISH spun off of
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`EchoStar, DISH entered into agreements to provide EchoStar with management
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`and administrative services, including legal services. Ex. 2006 pp. 24, 195. DISH
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`and EchoStar have overlapping directors and executive officers, many of whom
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`have financial interests in both companies, including Mr. Ergen and an Executive
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`Vice President “responsible for the development and implementation of advanced
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`technologies that are of potential utility and importance to both.” Id. pp. 43, 198.
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`DISH’s General Counsel, who “is responsible for all legal and government affairs
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`for DISH Network and its subsidiaries,” is also an EchoStar director. Ex. 2009
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`p. 30. Here the companies are so intertwined and there is so much “corporate
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`blurring” that both entities should be considered real parties-in-interest, in addition
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`to Hughes. See Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc.,
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`IPR2013-00453, Paper 88 at 6, 11 (PTAB Jan. 6, 2015). This is yet another
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`reason why DISH should be considered a real party-in-interest.
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`Third, the highly dependent legal and business relationships between
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`Hughes, EchoStar and DISH also
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`suggest that the three companies share
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`a common interest in the IPR
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`proceedings and a motive to control.
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`See Paramount Home Entertainment
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`Inc. v. Nissim Corp., IPR2014-00961,
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`Paper 11 at 8 (PTAB Dec. 29, 2014) (parties to patent-related litigation had
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`“documented interest” in invalidating patent). As discussed above, one of the
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`potentially infringing products in the district court litigation is a set-top box used
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`by DISH. EchoStar is the sole supplier of DISH’s set-top boxes. Ex. 2009 p. 16.
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`Moreover, DISH Network has historically been “the primary customer of our
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`EchoStar Technologies segment,” accounting for 90.1%, 76.9% and 79.4% of
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`segment revenue for the years ended December 31, 2013, 2012 and 2011,
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`respectively. Ex. 2006 p. 10. Finally, Hughes has an agreement with DISH
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`through 2024 to distribute satellite internet services under DISH’s dishNET brand.
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`Ex. 2006 p. 11; Ex. 2009 pp. 200-201. The legal, strategic, and operational
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`relationships illustrate a highly interdependent, triangular relationship between
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`these entities:
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`This strategic triangular alignment creates strong commonality of interest
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`and makes lack of control and coordination between the three virtually
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`inconceivable.
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`Fourth, an indemnification agreement at the time of the DISH spin-off
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`suggests that DISH has a “financially controlling interest” and a “pre-existing
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`substantive legal relationship” with EchoStar and thus, by extension, Hughes. See
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`Taylor, 553 U.S. at 893–895; 77 Fed. Reg. at 48,759. In the spin-off, DISH
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`distributed its digital set-top box business and infrastructure and other assets and
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`liabilities to EchoStar.5 Ex. 2006 p. 8. As part of the deal, DISH is contractually
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`obligated to indemnify EchoStar “for any liabilities or damages resulting from
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`intellectual property claims relating to the period prior to the Spin-off as well as
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`DISH Network’s acts or omissions following the Spin-off.” Id. pp. 174, 186-188.
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`EchoStar publicly acknowledges that it is the ultimate source of the DISH and
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`Hughes products at issue in the Caltech infringement suit, including DISH’s set-
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`top box receivers and Hughes’ satellite broadband products. Ex. 2010 p. 32
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`(“Caltech claims that the HopperTM set-top box that we [EchoStar] design and sell
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`to DISH Network, as well as certain of our Hughes segment’s satellite broadband
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`5 Indeed, here there could be said to be a pre-existing substantive legal
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`relationships between “preceding and succeeding owners” of the potentially
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`infringing products under the second Taylor factor. See Taylor, 553 U.S. at 894.
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`products and services, infringe the asserted patents by implementing the DVB-S2
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`standard.”). EchoStar also publicly acknowledges that “[w]e [EchoStar, Hughes,
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`and DISH] intend to vigorously defend this case.” Id. This establishes not only a
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`financially controlling interest, but also “an agreement to be bound” under the first
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`Taylor factor and a “pre-existing substantive legal relationship” under the second.
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`See Taylor, 553 U.S. at 893-94. This too makes DISH a real party-in-interest.
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`Fifth, there is substantial evidence that EchoStar and DISH have participated
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`in and actually exercised control over this proceeding and the related litigation.
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`EchoStar’s subsidiary (Hughes) and DISH are co-defendants in the federal action
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`brought by Caltech in the Central District of California.6 EchoStar’s subsidiary
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`(Hughes) and DISH are represented by the same counsel in that litigation and have
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`acted in concert throughout the litigation, whether under a joint defense agreement
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`or otherwise. Ex. 2011 p. 1 (“Counsel of record for the following party or parties:
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`Dish Network Corporation, Dish Network LLC Hughes Communications Inc.,
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`Hughes Network Systems LLC, dishNET Satellite Broadband LLC”).
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`The companies jointly responded to Caltech’s complaint (Ex. 2005 pp. 1, 3),
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`and their cooperation has continued throughout, including the joint filing of
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`invalidity contentions. Ex. 2012. At the initial scheduling conference on April 7th,
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`
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`6 As noted above, Caltech’s motion to formally add EchoStar as a defendant
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`was pending before the district court at the time the companies filed their petition
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`for inter partes review.
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`2014, the companies even jointly informed the district court they would be
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`pursuing inter partes review of the Caltech patents before the PTAB:
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`MR. MARCUS: Good afternoon, Your Honor. David Marcus from
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`the Wilmer Hale firm on behalf of defendants [Dish Network
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`Corporation, Dish Network LLC Hughes Communications Inc.,
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`Hughes Network Systems LLC, dishNET Satellite Broadband LLC].
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`Ex. 2013, 0003:22-24.
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`
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`THE COURT: Are you really going to contend that it’s invalid?
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`MR. MARCUS: Absolutely, Your Honor. And that brings me to
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`another point.
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`...
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`We also, I wanted to bring to the Court’s attention we anticipate
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`bringing an IPR review in the patent office.
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`Ex. 2013, 0034:22 – 0035:5.
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`There was no distinction to be made between particular defendants, rather
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`the defendants represented they collectively anticipated bringing IPR challenges at
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`the patent office. The companies subsequently filed the IPRs, with overlap
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`between district court litigation counsel for Hughes and DISH, and IPR counsel in
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`this proceeding. 7
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`
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`7 Hughes’ backup counsel in this inter partes proceeding (G. Hopkins Guy,
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`III) is currently counsel for both Hughes and DISH in the district court proceeding,
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`although he just recently requested to withdraw from the district court proceeding.
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`Ex. 2011.
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`The companies have, in fact, advanced in lock step throughout the course of
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`the litigation. It is inconceivable that control over development of prior art
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`identification and argument, which is similarly reflected in both the PTAB and
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`district court invalidity attacks, rested solely with one defendant, particularly
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`where both parties are represented by the same counsel at the district court (with
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`overlap in counsel at the PTAB), and acted uniformly throughout the litigation.
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`Moreover, a comparison of the arguments advance in the district court
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`litigation and the arguments advanced in this proceeding suggests a common
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`litigation strategy and, therefore, control. See Zoll, IPR2013-00609, Paper 15 at 12
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`(“unified actions” in “multi-state patent war” indicative of control). Indeed, the
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`prior art and arguments advanced in the district court litigation are the same prior
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`art and arguments raised in the petition. See Ex. 2012 pp. 47-62; Ex. 2014 pp. 4-6.
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`Moreover, as noted above, there is overlap between district court litigation counsel
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`for Hughes and DISH, and IPR counsel in this proceeding. The existence of
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`common counsel and common arguments, as well as joint representations to the
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`district court regarding the IPRs, strongly suggests a common litigation strategy.
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`Such “unified action” provides, at a minimum, circumstantial evidence of control.
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`This is more than ample evidence to warrant denial of the petition for failure
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`to name all real parties-in-interest, particularly under the totality of circumstances.
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`C.
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`Failure to Identify Real Parties-in-Interest Is Fatal to the Petition
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`As demonstrated above, the petition fails to identify all real parties-in-
`
`interest and thus is incomplete. See Zoll, IPR2013-00609, Paper 15 at 16-17.
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`Incomplete petitions are not accorded a filing date, and thus the petition is not
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`entitled to its October 2014 filing date. See 37 C.F.R. § 42.106(b); see also
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`Zoll, IPR2013-00609, Paper 15 at 16-17 (failure to name all real parties-in-
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`interest is a substantive deficiency requiring a new filing date). Moreover,
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`correcting the omission through amendment would be futile here because, even
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`if corrected, the earliest filing date that could be accorded to the petition would
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`not fall within the one-year period specified in 36 U.S.C. § 315(b) for at least
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`one real party-in-interest. Nintendo of Am. Inc. v. Motion Games, LLC,
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`IPR2014-00164, Paper 29 at 2 (PTAB 2014); see also Pet. p. 1 (noting Nov. 12,
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`2013 effective service date). According, the Board should dismiss the petition
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`and deny institution of inter partes review on these grounds. See Zoll,
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`IPR2013-00609, Paper 15 at 16-17.
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`III. EXPERT QUALIFICATIONS AND HINDSIGHT
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`In view of Petitioner’s failure to properly name all real parties-in-interest,
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`and the futility of belatedly correcting the omission, the Board need not address the
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`Petitioner’s invalidity arguments – which are without merit.
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`Should the Board review the grounds of challenge, as an initial matter, any
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`such review should attribute little, if any, weight to the declaration testimony of
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`Petitioner’s expert Dr. Pfister, submitted as Ex. 1010.8 According to Petitioner, the
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`8 Numerous paragraphs of Ex. 1010 are not cited or relied upon anywhere in the
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`petition and can be ignored for this reason as well. In fact, Petitioner’s exhibit list
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`is populated with numerous exhibits that are cited nowhere in the petition. Any
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`ordinary level of skill in the art is “very high,” requiring either a “Ph.D. in
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`electrical or computer engineering with emphasis in signal processing,
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`communications, or coding, or a master’s degree in the above area with at least
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`three years of work experience in this field at the time of the alleged [sic]
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`invention.” Pet. p. 12; Ex. 1010 ¶ 44. Dr. Pfister, however, states he does not meet
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`his own definition as a person of ordinary skill in the art at the time of filing. Ex.
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`1010 ¶ 45. He is right about this, at least because his graduate work mainly
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`occurred after the critical date. Id. at ¶ 4. Dr. Pfister cannot speak with first-hand
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`knowledge about what those in the art at the relevant time knew and could do.
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`Under Board precedent, Dr. Pfister’s testimony can be accorded no weight.
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`See Schott Gemtron v. SSW Holding Co., IPR2013-00358, Paper 106 at 17-18
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`(PTAB 2014) (discounting expert testimony for lack of sufficient post-degree
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`experience). Indeed, the fact that an expert witness was not an expert in the
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`relevant field at the relevant time is grounds for not considering the testimony at all
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`in some instances. Flex-Rest, LLC v. Steelcase, Inc., 455 F.3d 1351, 1360-61 (Fed.
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`Cir. 2006).
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`In this case, Dr. Pfister’s testimony can be largely discounted. Dr. Pfister
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`cannot reliably testify about how those of ordinary skill in the art would have
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`
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`exhibit, or content of an exhibit, not specifically cited in the petition should be
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`deemed irrelevant to the content of the petition and wholly ignored. See e.g., 37
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`C.F.R. §42.22(a)(2).
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`understood the art because he only achieved that level of proficiency after the
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`inventors on the present invention had been publically recognized for their solution
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`to the problem. The only way for Dr. Pfister to avoid impermissible hindsight
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`would be to forget his hard-earned knowledge after the critical date, while he was
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`still working on his doctorate, and cast his imagination back to the perspective of a
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`person he never was.
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`This point is particularly relevant in this IPR for several reasons. Numerous
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`paragraphs of Dr. Pfister’s declaration, particularly in the section “Background on
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`the Relevant Technology,” fail to cite a single reference or shred of evidence in
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`support of proffered commentary. Ex. 1010 ¶¶ 16-23, 25, 27; cf. § 42.65(a) (expert
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`testimony without basis accorded no weight). Much of the commentary simply
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`repeats Hughes’ and DISH’s litigation positions. Dr. Pfister, however, lacks
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`personal knowledge of either the background of the technology or developments in
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`the field at the relevant time. Instead, he relies on impermissible hindsight
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`reconstruction of the state of the art formed in the context of supporting a litigation
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`position. As a consequence, his testimony cited in the petition is often barely
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`explained or conclusory in nature, while failing to identify any supporting facts or
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`data, such as the assertion that that “the combination of . . . repetition and
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`permutation constitute a linear transform operation.” Pet. p. 14 (citing Ex. 1010 ¶
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`144) (discussed below). Curiously, even when Dr. Pfister is presented as a fact
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`witness rather than an expert witness, he asserts critical facts without corroboration
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`or stating a basis in personal knowledge. See, e.g., Ex. 1010 ¶ 29 (appearing to
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`testify about the availability of a web posting); cf. Fed. Reg. Evid. 602 (requiring
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`personal knowledge of facts).
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`Hughes elected to rely on an expert witness who is not qualified under his
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`own definition to testify about the state of the art at the time of invention. When
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`he testifies as an expert, he often cites no underlying facts or data. When he
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`testifies as a lay witness, he fails to establish personal knowledge. Sometimes it is
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`not clear what kind of witness he is, such as when he testifies about what the
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`district court did without agreeing or disagreeing in his capacity as an expert (or
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`establishing personal knowledge of the court’s actions). Hughes has not
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`established his qualifications as a witness in any capacity in this proceeding. His
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`testimony is more prejudicial than relevant; hence, the Board in its capacity as a
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`gatekeeper ensuring the integrity of the record should accord Dr. Pfister’s
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`testimony little, if any, weight.
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`IV. CLAIM CONSTRUCTION
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`Pursuant to 37 C.F.R. § 42.104, the content of a petition must specifically set
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`forth how the challenged claims are to be construed (Rule 104(b)(3)) in addition to
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`supporting an assertion the challenged claim is unpatentable (Rule 104(b)(4)). For
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`purposes of its Preliminary Response, Caltech will focus on the petition’s failure to
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`satisfy this rule. Petitioner’s proffered claim constructions are set forth at pages
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`11-13 of the petition, but are deficient for several reasons, including the reasons set
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`forth below.
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`The petition addresses pr