UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`DISH NETWORK L.L.C.,
`Petitioner,
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`v.
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`MULTIMEDIA CONTENT MANAGEMENT LLC,
`Patent Owner
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`IPR2019-01015
`PATENT 8,799,468
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`PATENT OWNER SUR-REPLY TO PETITIONER’S REPLY TO
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`DISH NETWORK L.L.C.,
`Petitioner,
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`v.
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`MULTIMEDIA CONTENT MANAGEMENT LLC,
`Patent Owner
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`IPR2019-01015
`PATENT 8,799,468
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`PATENT OWNER SUR-REPLY TO PETITIONER’S REPLY TO
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`IPR2019-01015
`U.S. Patent 8,799,468
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`Table of Contents
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`Introduction
`I.
`Institution Would Be An Inefficient Use of the Board’s Resources
`II.
`III. The Board Should Not Relitigate Claim Construction
`IV. Conclusion
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`1
`2
`5
`6
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`ii
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`IPR2019-01015
`U.S. Patent 8,799,468
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`Table of Exhibits
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`Exhibits to Petition
`U.S. Patent No. 8,799,468 (“’468 Patent”)
`U.S. Patent No. 9,465,925
`File History for U.S. Patent No. 8,799,468
`File History for U.S. Patent No. 8,122,128
`File History for U.S. Patent No. 9,465,925
`Declaration of Anthony Wechselberger
`Curriculum Vitae of Anthony Wechselberger
`U.S. Publication No. 2002/0049980 to Hoang
`(“Hoang ’980”)
`U.S. Patent No. 7,725,267 to Hoang (“Hoang ’267”)
`U.S. Publication No. 2003/0208561 to Hoang
`(“Hoang ’561”)
`Michael Adams, OpenCableTM Architecture (2000)
`(“OpenCable”)
`Complaint, Multimedia Content Management LLC v.
`DISH Network Corporation, Civil Action No.: 6:18-
`cv-00207-ADA
`Canadian Patent 2,321,462 to Cameron et al.
`(“Cameron”)
`U.S. Publication No. 2002/0162109 to Shteyn
`(“Shteyn”)
`U.S. Patent No. 5,974,503 to Venkatesh, et al.
`(“Venkatesh”)
`Unified Patents, Inc. v. Multimedia Content
`Management LLC, IPR2017-01934, Paper 9, Patent
`Owner Preliminary Response (PTAB Dec. 14, 2017)
`Newton’s Telecom Dictionary (15th Edition 1999)
`(excerpts)
`Unified Patents, Inc. v. Multimedia Content
`Management LLC, IPR2017-01934, Paper 10
`(Institution Decision) (PTAB Mar. 5, 2018)
`Microsoft Press Computer Dictionary (3rd Edition
`1997)
`Certification of the Library of Congress for Open
`Cable Architecture by Michael Adams, executed
`February 27, 2019
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`
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`EX1001
`EX1002
`EX1003
`EX1004
`EX1005
`EX1006
`EX1007
`EX1008
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`EX1009
`EX1010
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`EX1011
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`EX1012
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`EX1013
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`EX1014
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`EX1015
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`EX1016
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`EX1017
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`EX1018
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`EX1019
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`EX1020
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`IPR2019-01015
`U.S. Patent 8,799,468
`EX1021
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`EX1022
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`EX1023
`EX1024
`EX1025
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`EX1026
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`EX1027
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`EX1028
`EX1029
`EX1030
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`EX2001
`EX2002
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`EX2003
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`EX2004
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`EX2005
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`EX2006
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`Declaration of Curt Williams Concerning the
`“OpenCable Architecture” Reference by Michael
`Adams, executed March 15, 2019
`U.S. Publication No. 2003/0172376 to Coffin III
`(“Coffin”)
`Deposition of Joel Williams dated April 12, 2019
`Plaintiff’s Opening Claim Construction Brief (DI 51)
`Defendant’s Opening Claim Construction Brief (DI
`48)
`Plaintiff’s Responsive Claim Construction Brief (DI
`53)
`Defendant’s Responsive Claim Construction Brief
`(DI 52)
`Plaintiff’s Reply Claim Construction Brief (DI 59)
`Defendant’s Reply Claim Construction Brief (DI 58)
`Declaration of Anthony J. Wechselberger In Support
`of Defendant’s Opening Claim Construction Brief
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`Exhibits to POPR
`Declaration of Dr. Edwin A. Hernandez-Mondragon
`Petition for Inter Partes Review of Claims 1-5, 9,
`11-13, 19, 23-27, and 32-34 of U.S. Patent No.
`8,799,468, Unified Patents Inc. v. Catonian IP
`Management LLC, Case IPR2017-01934
`Markman Construction Order for Multimedia
`Content Management LLC v. Dish Network
`Corporation, Case No. 6:18-cv-00207-ADA (W.D.
`Tex. June 17, 2019)
`“Information technology – Generic coding of
`moving pictures and associated audio information:
`Systems,” International Standard, ISO/EIC 13818-1,
`Second edition, 2000-12-01
`“Digital Video Broadcasting (DVB); DVB
`interaction channel for Cable TV distribution
`systems (CATV),” ETSI Standard, ETSI ES 200
`800, V1.3.1 (2001-10)
`Defendant’s Responsive Claim Construction Brief
`for Multimedia Content Management LLC v. Dish
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`iv
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`IPR2019-01015
`U.S. Patent 8,799,468
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`EX2007
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`EX2008
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`EX2009
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`EX2010
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`EX2011
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`EX2012
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`Network Corporation, Case No. 6:18-cv-00207-
`ADA (W.D. Tex. April 5, 2019)
`Order Denying Motion to Stay Pending Inter Partes
`Review of U.S. Patent Numbers 8,799,468 and
`9,465,925 for Multimedia Content Management LLC
`v. Dish Network Corporation, Case No. 6:18-cv-
`00207-ADA (W.D. Tex. May 30, 2019)
`Decision Denying Institution of Inter Partes Review,
`NHK Spring Co., Ltd. v. Intri-Plex Technologies,
`Inc., Case IPR2018-00752, U.S. Patent No.
`6,183,841, September 12, 2018
`Plaintiff Multimedia Content Management LLC and
`Defendant Dish Network L.L.C.’s Scheduling Order
`for Multimedia Content Management LLC v. Dish
`Network Corporation, Case No. 6:18-cv-00207-
`ADA (W.D. Tex. June 5, 2019)
`Transcript of Markman Hearing Before the
`Honorable Alan D. Albright for Multimedia Content
`Management LLC v. Dish Network Corporation,
`Case No. 6:18-cv-00207-ADA (W.D. Tex. May 7,
`2019)
`Transcript of Hearing on Motion to Dismiss Before
`the Honorable Alan D. Albright for Multimedia
`Content Management LLC v. Dish Network
`Corporation, Case No. 6:18-cv-00207-ADA (W.D.
`Tex. May 7, 2019)
`Exhibit E to Defendant’s Opening Claim
`Construction Brief, Declaration of Anthony J.
`Wechselberger, for Multimedia Content
`Management LLC v. Dish Network Corporation,
`Case No. 6:18-cv-00207-ADA (W.D. Tex. March
`15, 2019)
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`v
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`I.
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`Introduction
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`IPR2019-01015
`U.S. Patent 8,799,468
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`Petitioner’s Reply to Patent Owner’s Preliminary Response, Paper No. 7
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`(“Reply”), only addresses issues that should have been in the Petition, improperly
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`expanding the Petition beyond the permitted page count. Nevertheless, Petitioner’s
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`Reply illustrates why instituting the Petition would be an inefficient use of the
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`Board’s resources. See July 2019 Update to PTAB Trial Practice Guide (“Guide”),
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`at 23 (recognizing the AIA was designed to “limit unnecessary and
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`counterproductive litigation costs.”).
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`Petitioner claims to need further briefing because, after filing the Petition,
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`“the Board designated its decision in NHK Spring as precedential, and the District
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`Court in the parallel proceeding construed the claims, denied a motion to stay, and
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`set a trial date.” Pet. at 1. However, the designation of NHK Spring did not change
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`the content of that decision. Further, Petitioner was more than aware that the
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`District Court would be construing the claims three days after it filed the Petition,
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`and that the trial would likely occur prior to the Board reaching a decision in any
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`IPR. EX2011 (Transcript of Hearing on Motion to Dismiss, Nov. 28, 2018) at 41
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`(“At the—either at the end of that day [of the Markman hearing] or the next day
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`you’ll get a claim construction ruling from me . . . [and] I anticipate [a trial date]
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`would be within a year or more quickly . . . .”). Indeed, trial is set for July 20,
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`2020, months before any decision is due in this IPR.
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`1
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`IPR2019-01015
`U.S. Patent 8,799,468
`Petitioner chose to ignore these issues. Instead, Petitioner asks the Board to
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`relitigate claim construction—upon which its invalidity arguments rely—based on
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`a Petition with “a high degree of overlap between the evidence and arguments
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`presented in the Board proceeding and the district court case,”1 and where the
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`District Court proceedings will finish before the IPR. Petitioner’s willingness to
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`consume the Board’s resources to relitigate claim construction on an extended
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`timeline is not an efficient use of the Board’s resources, and the Petition should
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`therefore be denied.
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`II.
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`Institution Would Be An Inefficient Use of the Board’s Resources
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`Petitioner argues that the Board’s precedential designation of NHK Spring
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`somehow changes the analysis of whether the Board has discretion to deny
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`institution of the instant IPR. Reply at 1–3. NHK Spring’s designation as
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`precedential has no bearing on the Board’s discretionary analysis under the
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`relevant statute, 35 U.S.C. § 314.
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`“Sections 314(a) and 324(a) provide the Director with discretion to deny a
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`petition.” Guide at 22. The Board listed several factors “to aid the Board’s
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`assessment of ‘the potential impacts on both the efficiency of the inter partes
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`review process and the fundamental fairness of the process for all parties’” in
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`exercising that discretion. Id. (internal citations omitted). These factors are “not
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`1 E-One, Inc. v. Oshkosh Corp., IPR019-00162, Paper 16, at 8.
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`2
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`IPR2019-01015
`U.S. Patent 8,799,468
`exclusive and are not intended to represent all situations where it may be
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`appropriate to deny a petition.” Id.
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`Additional factors include District Court proceedings. Id. Specific factors
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`from District Court proceedings include the overlap of evidence and arguments
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`presented in the Petition and the District Court. E-One, Inc., at 8. Accordingly, a
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`“balanced assessment of all relevant circumstances,” (Guide at 22), would consider
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`the factors discussed below, and weighs in favor of denying the Petition.
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`First, the ʼ468 Patent has been the subject of a previous IPR, in which the
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`Board denied institution. EX1018. While acknowledging the existence of the
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`previous IPR, Petitioner has provided no analysis as to how or why this Petition is
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`materially different from the previous Petition. See generally Pet. at 9–15.
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`Second, the District Court will evaluate Petitioner’s prior art and determine
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`validity prior to the Board having a chance to do so. Petitioner argues that “if the
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`Petition is instituted, Petitioner will not rely on the grounds raised in the Petition.”
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`Pet. at 2 (emphasis modified). Petitioner attempts to have it both ways—asking the
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`Board to institute the IPR so that Petitioner can simultaneously attack the Patents
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`on multiple fronts (wasting the resources of the District Court and the Board),
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`while acknowledging that if the Board refuses institution, Petitioner may continue
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`to argue its cited art in the District Court.
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`3
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`IPR2019-01015
`U.S. Patent 8,799,468
`Third, the Board may deny institution where there is a “high degree of
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`overlap” in the disputed claims between the Petition and the District Court
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`proceedings. E-Onc, Inc. at 8. In this IPR, all of the asserted claims in the District
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`Court proceedings are challenged in the IPR.2 Thus, there is complete overlap. The
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`only claims Petitioner identifies as non-overlapping are dependent claims. As
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`demonstrated by Petitioner’s own evidence, the huge bulk of time and resources in
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`both the IPR and District Court have been and will be devoted to determining
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`validity of the independent claims. E.g., Pet. at 20–54 (35 pages devoted to
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`independent Claim 1), at 65–66 (single page devoted to dependent Claim 29).
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`If the Board institutes this IPR, both Patent Owner and Petitioner will be
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`forced to expend significant time and resources debating the validity of the
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`independent claims in two separate arenas concurrently. Requiring strict identity of
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`asserted and challenged claims, as Petitioner argues (Reply at 3), does not
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`contribute to “a more efficient and streamlined patent system,” Guide at 23, is
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`2 Petitioner notes that there are fifteen challenged claims, while Patent Owner may
`currently only assert six in litigation. Reply at 2–3. Patent Owner notes that the
`number of asserted claims may still be altered by the parties, and Petitioner’s list of
`fifteen challenged claims is almost identical to the list of claims from which Patent
`Owner may choose the to-be-asserted claims (the list does not include dependent
`Claim 28). Thus, were Patent Owner to add claims to the District Court
`proceedings, those claims would necessarily come from the list of challenged
`claims.
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`4
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`IPR2019-01015
`U.S. Patent 8,799,468
`contrary to the Board’s precedent, E-One, Inc.at 8, and requires parallel Board and
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`District Court validity litigation.
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`Instituting the instant IPR would waste the Board’s resources at least
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`because the parallel District Court proceedings will have determined the validity of
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`the challenged independent claims and a bulk of (if not all) the challenged
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`dependent claims before the Board reaches a decision. Further, as detailed below,
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`the Board would be forced to relitigate claim construction for the same claims,
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`under the same standard, on substantially the same record, as that already
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`considered and decided by the District Court. For at least these reasons, the Board
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`should deny institution.
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`III. The Board Should Not Relitigate Claim Construction
`Petitioner argues that its submitted constructions—which do not match the
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`District Court’s constructions—do not impact Petitioner’s success on the merits.
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`Reply at 3–6. Petitioner gives no reason why Petitioner failed to include this
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`argument in the Petition and it was fully aware that the District Court would
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`construe the challenged claims3 three days after it filed the Petition. EX2011 at 41.
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`Petitioner was at no risk of losing its ability to file this IPR (Petitioner had until
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`July 25, 2019 to file this IPR. 35 U.S.C. § 315(b)). Instead of waiting three days to
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`3 For the purposes of claim construction, the District Court considered all of the
`challenged claims except Claim 28.
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`5
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`IPR2019-01015
`U.S. Patent 8,799,468
`accommodate the District Court’s claim construction, Petitioner now asks the
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`Board to relitigate claim construction based on arguments already made and
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`adjudicated in the District Court. That is the definition of “wasting resources.”
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`The Board gives the District Court’s claim construction due weight
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`particularly where, as here, the record in the district court and the record before the
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`Board are largely identical for the purposes of claim construction. See EX1024–30
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`(claim construction briefing); 2012, 1006 (identifying the same expert in support of
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`Petitioner’s claim construction); see also Guide at 14–15 (noting the relevance of
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`the similarity of the records). That is the case here.
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`Petitioner has provided no basis as to why the District Court’s claim
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`construction is wrong, what part of the IPR record is different from the District
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`Court record, or given any other reason for the Board to reject the District Court’s
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`claim construction. Petitioner’s plea should thus fall on deaf ears.
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`IV. Conclusion
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`Patent Owner respectfully requests that all challenges in the present IPR be
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`dismissed.
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`Date: September 6, 2019
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`
`
`/s/ Benjamin R. Johnson
`Benjamin R. Johnson
`Reg. No. 64,483
`Jeffrey G. Toler
`Reg. No. 38,342
`TOLER LAW GROUP
`8500 Bluffstone Cove
`Suite A201
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`6
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`
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`IPR2019-01015
`U.S. Patent 8,799,468
`Austin, Texas 78759
`Telephone: (512) 327-5515
`Facsimile: (512) 327-5575
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`Attorneys for Patent Owner
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`7
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`IPR2019-01015
`U.S. Patent 8,799,468
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e), we certify that an electronic copy of the
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`foregoing Patent Owner’s Sur-Reply to Patent Owner’s Preliminary Response, along
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`with any accompanying exhibits was served on Petitioner’ counsel of record at the
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`following address:
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`eliot.williams@bakerbotts.com
`hop.guy@bakerbotts.com
`ali.dhanani@bakerbotts.com.
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`Date: September 6, 2019
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`Respectfully submitted,
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`
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`By: /s/ Angie K. Blazek
`Angie K. Blazek
`8500 Bluffstone Cove
`Suite A201
`Austin, Texas 78759
`Telephone: 512-327-5515
`Facsimile: 512-327-5575
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`i
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