IPR2019-01015
`U.S. Patent 8,799,468
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DISH NETWORK L.L.C.,
`Petitioner,
`
`v.
`
`MULTIMEDIA CONTENT MANAGEMENT LLC
`Patent Owner
`
`IPR2019-01015
`PATENT 8,799,468
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S REQUEST FOR
`REHEARING
`
`
`U.S. Patent 8,799,468
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DISH NETWORK L.L.C.,
`Petitioner,
`
`v.
`
`MULTIMEDIA CONTENT MANAGEMENT LLC
`Patent Owner
`
`IPR2019-01015
`PATENT 8,799,468
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S REQUEST FOR
`REHEARING
`
`
`
`IPR2019-01015
`U.S. Patent 8,799,468
`
`I.
`
`INTRODUCTION
`
`Petitioner’s Request for Rehearing does not show how the Board actually
`
`misapprehended Petitioner’s argument. The Board denied institution of all grounds
`
`after a full consideration of the art, the claims, and the evidence. Petitioner now
`
`claims the Board acted “upon a misapprehension of the argument set forth in the
`
`Petition.” (Request for Rehearing, Paper No. 12 (“Request”), p. 1). However,
`
`Petitioner’s new argument does not address the fundamental technical flaws the
`
`Board identified in denying institution of the instant IPR. Further, even if
`
`Petitioner’s argument did solve these issues, Petitioner simply ignored multiple
`
`other, independent reasons the Board provided in support of institution denial. For
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`at least these reasons, Petitioner has failed to show how the Board abused its
`
`discretion in denying institution of the instant IPR.
`
`II. ARGUMENT
`
`Petitioner Ignores Multiple Independent Reasons the Board
`A.
`Provided In Support of Institution Denial
`In denying institution, the Board provided at least five independent reasons
`
`to support the Board’s decision. Petitioner’s request only addresses three of those
`
`reasons. Thus, in addition to the fact that Petitioner’s argument regarding the three
`
`addressed reasons is flawed—see Section II.B below—the Board should reject
`
`Petitioner’s Request because Petitioner did not speak to all reasons for the Board’s
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`1
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`IPR2019-01015
`U.S. Patent 8,799,468
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`denial.
`
`As Petitioner notes, (Request at 4–5), the Board stated at least five reasons to
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`deny institution:
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`1. “Petitioner’s proposed combination would use both unidirectional access
`
`control and bidirectional access control for the same data request.” Request at 4
`
`(citing Institution Decision, Paper No. 11 (“Decision”), p. 16).
`
`2. “Petitioner has not sufficiently explained why an ordinarily skilled artisan
`
`would have been motivated to use both the prior art access control using bidirectional
`
`communication and
`
`the
`
`improved access control using unidirectional
`
`communications at the same time.” Request at 4 (citing Decision at 16).
`
`3. “Petitioner has failed to establish why an ordinarily skilled artisan would
`
`have used both access control paradigms for the same data request.” Request at 4
`
`(citing Decision at 17).
`
`4. “Petitioner’s inference that this system would then also utilize account
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`control using the resource-intensive bidirectional communications is speculative and
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`not sufficiently supported by the evidence of record.” Request at 4 (citing Decision
`
`at 16).
`
`5. “Petitioner does not explain persuasively why an ordinarily skilled artisan
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`would have continued to use unidirectional communications to provide access
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`control for a data request when using bidirectional communications already
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`2
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`IPR2019-01015
`U.S. Patent 8,799,468
`provides access control for the same data request.” Request at 4 (citing Decision at
`
`17).
`
`Petitioner attempts to explain why Ground 1 does not expressly rely on both
`
`unidirectional access control and bidirectional access control for the same data
`
`request. E.g., Request at 5–9. However, Petitioner’s argument is only directed to
`
`items (1), (3), and (5) in Petitioner’s list of the Board’s reasons. Petitioner’s
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`Request does not address in any way the Board’s holding that “Petitioner has not
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`sufficiently explained why an ordinarily skilled artisan would have been motivated
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`to use both the prior art access control using bidirectional communication and
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`the improved access control using unidirectional communications at the same
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`time,” (Decision at 15) (emphasis added), nor the holding that “Petitioner’s
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`inference that this system would then also utilize account control using the
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`resource-intensive bidirectional communications is speculative and not
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`sufficiently supported by the evidence of record,” (Decision at 16) (emphasis
`
`added).
`
`Petitioner attempts to wave away these two bases of rejection by re-arguing
`
`the Petition, providing no reason to explain how or why the Board misapprehended
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`Petitioner’s argument. For example, Petitioner states that the “Institution Decision
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`faulted the Petition for reliance on ‘resource-intensive’ bidirectional
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`communications techniques. But Petitioner’s Ground 1 selectively restricts the use
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`3
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`IPR2019-01015
`U.S. Patent 8,799,468
`of the bidirectional communications link to only authorized realtime content
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`requests.” (Request at 11) (citing Decision at 15). Nothing in this brief aside
`
`addresses the Board’s fundamental declaration that any use of “the resource-
`
`intensive bidirectional communications is speculative and not sufficiently
`
`supported by the evidence of record.” (Decision at 16).
`
`Further, Petitioner’s argument does not address the underlying problem with
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`Petitioner’s proposed combination: the inclusion of both unidirectional and
`
`bidirectional communications in a system that expressly disparages bidirectional
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`communication. See, e.g., EX1008, Hoang ʼ980, [0005]. Petitioner did not attempt
`
`to provide any new and/or supplemental evidence to support its assertion that the
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`Board somehow misunderstood Petitioner’s initial argument in the Petition.
`
`Petitioner’s position—that one of ordinary skill in the art would be motivated to
`
`use both unidirectional and bidirectional communications in the same system—
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`remains purely speculative. Based on nothing more, the Board should deny
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`Petitioner’s Request. However, as detailed in the next section, Petitioner’s
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`remaining arguments are also flawed.
`
`B.
`
`The Board Did Not Misapprehend Petitioner’s Argument
`
`In denying institution, the Board correctly noted that Petitioner relied on a
`
`system that combines both unidirectional communication and bidirectional
`
`communication in a single system: “Petitioner has not sufficiently explained why
`
`4
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`IPR2019-01015
`U.S. Patent 8,799,468
`an ordinarily skilled artisan would have been motivated to use both the prior art
`
`access control using bidirectional communication and the improved access control
`
`using unidirectional communication at the same time.” Decision at 16. Nothing in
`
`Petitioner’s Request deviates from this argument. E.g., Request at 5–6 (“As
`
`explained in the Petition, adding a bidirectional link was desirable because it
`
`would permit the modified unidirectional control system ‘to control access to
`
`user-initiated VOD programming,’ which was ‘the Holy Grail.’”) (emphasis
`
`modified). Petitioner’s current insistence that “Ground 1 of the [P]etition
`
`exclusively relied upon Hoang 980’s unidirectional control technique,” (Request at
`
`5) (emphasis in original), is, at best, disingenuous. See, e.g., Pet. at 29 (“This bi-
`
`directional transmission of a content request back to the server is obvious over the
`
`combination of Hoang 980’s uni-directional preferred embodiment system in Figs.
`
`7 and 8 with the bi-directional systems of Hoang 980’s Figs. 3 and 4 taught in the
`
`same patent disclosure.”).
`
`The Board Fully Considered Petitioner’s Argument And The
`
`1.
`Art
`
`The Board correctly summarized Petitioner’s argument that relies on both a
`
`unidirectional and a bidirectional system of Hoang ‘980:
`
`Petitioner relies on both the unidirectional and bidirectional systems
`taught by Hoang ’980 to meet the limitations of claim 1. For example,
`Petitioner relies on the unidirectional embodiment that employs a
`
`5
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`IPR2019-01015
`U.S. Patent 8,799,468
`central controlling server to generate subscription data packets to be
`transmitted to client’s set top boxes for the limitation “a controller node
`coupled to the service provider network.” See Pet. 27‒33 (citing Ex.
`1008, Fig. 7). Petitioner relies on the bidirectional embodiment that
`transmits content requests to the cable system service provider network
`for the limitation “at least a second processor coupled to the second one
`or more network interfaces, wherein the second processor is to
`selectively transmit content requests to the service provider network in
`accordance with the controller instructions.” See Pet. 45‒53 (citing Ex.
`1008, Figs. 3, 4, 6).
`Decision at 12–13. The Board also considered Patent Owner’s Argument on this
`
`point:
`
`In particular, Patent Owner argues the unidirectional and bidirectional
`systems are not easily interchangeable or interoperable. Id. at 13. Patent
`Owner also argues Petitioner has not shown that the unidirectional and
`bidirectional systems are predictable variations of each other. Id. at 14.
`According to Patent Owner, Hoang ’980 disparages the bidirectional
`system to extoll the virtues of unidirectional systems. Id. at 14 (citing
`Ex. 1008 ¶ 5).
`
`Patent Owner argues combining the bidirectional and unidirectional
`systems would require the expenditure of significant processing and
`bandwidth in order to function, defeating the purpose of implementing
`access control using unidirectional communications, the primary
`benefit identified in Hoang ’980. See Prelim. Resp. 15. Dr. Hernandez’s
`testimony supports Patent Owner’s assertions. See Ex. 2001 ¶¶ 54‒62.
`
`6
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`
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`IPR2019-01015
`U.S. Patent 8,799,468
`Decision at 14–15. The Board also fully reviewed the prior art reference in question
`
`and the facts:
`
`Hoang ’980 teaches that one problem in the video-on-demand and data-
`on-demand industry is being able to control the access of a client’s set
`top box to on-demand programming without using bidirectional
`communications. Ex. 1008 ¶ 5. Hoang ’980 teaches traditional
`unidirectional communications had limitations in controlling access to
`programming, necessitating the use of bidirectional communications at
`the cost of a significant increase processing and bandwidth resources.
`Id. ¶ 5. Hoang ’980 explains the manner in which bidirectional
`communications were used in prior art systems to control access to
`programming, detailing such communications
`in embodiments
`described in Figures 4‒6. Id. ¶¶ 15‒24.
`
`Hoang ’980 teaches that its invention replaces the bidirectional
`communications used to control access to programming in prior art
`systems with an improved method that only needs unidirectional
`communications, detailing such communications in embodiments
`described in Figures 7‒11. Id. ¶¶ 25‒27, 48‒78.
`Decision at 14. The Board properly considered both the facts presented and the
`
`arguments presented by both the Petitioner and the Patent Owner. Based on the
`
`consideration, the Board decided not to institute the instant IPR. Decision at 17.
`
`2.
`
`Petitioner’s Technical Argument Remains Flawed
`
`As noted throughout Patent Owner’s Preliminary Response, an ordinarily skill
`
`7
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`IPR2019-01015
`U.S. Patent 8,799,468
`artisan would not understand Petitioner’s proposed combination to function in the
`
`manner Petitioner suggests. See, e.g., Patent Owner’s Preliminary Response, Paper
`
`6 (“POPR”), at 22–28. Petitioner continues to rely on Hoang ’980’s statement that
`
`“all aspects of the present invention can be implemented within the bi-directional
`
`communication paradigm, the only difference being that even more features can be
`
`provided to the digital broadcast and DOD user when a bidirectional communication
`
`link is available.” Request at 10–11. That one sentence does not carry the day for
`
`Petitioner. See POPR at 25.
`
`As detailed above, Petitioner’s Request does not address Petitioner’s failure
`
`to support its speculative claim that unidirectional and bidirectional systems could
`
`be seamlessly combined. See also POPR at 25, Further, Petitioner’s Reqeust does
`
`not address the underlying problem of Hoang ʼ980’s disparagement of bidirectional
`
`systems. See id.; see also EX2001, Hernandez Decl., ¶61; EX1008, [0018–19,
`
`0025].
`
`Moreover, as noted in the POPR, a person of ordinary skill in the art would
`
`understand the teachings of Hoang ʼ980 to disclose a bidirectional communication
`
`system that is nonfunctional for the purposes to which Petitioner cites. POPR at 26,
`
`EX2001, Hernandez Decl., ¶¶ 67, 71–72, 74–75 (“The exemplary STB that is shown
`
`in FIG. 8 and that is used for the DOD system does not have a QAM modulator,
`
`which would be required for Petitioners position to be correct. A [quadrature phase
`
`8
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`
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`IPR2019-01015
`U.S. Patent 8,799,468
`shift keying (“QPSK”)] modulator is also not shown or described, making
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`Petitioner’s position truly illogical.”). As an additional example, one of ordinary skill
`
`in the art would not understand Hoang ʼ980 as disclosing a bidirectional
`
`communication system in which a gateway unit communicates with a controller
`
`node via the service provider network as Petitioner suggests. See POPR at 27–28
`
`(citing EX1008, [0019]; EX2001, Hernandez Decl., ¶¶ 68–80)
`
`As Dr. Hernandez noted in his Declaration supporting the POPR:
`
`It is my opinion that Hoang ’980 fails to disclose or suggest a bi-
`directional system. It is my further opinion that Hoang ’980’s
`unidirectional teachings cannot be modified by what Hoang ’980
`discloses to produce a bi-directional system. It is my opinion that,
`contrary to Petitioner’s suggestion, a POSITA would not, and could
`not, simply use block 370 in the bi-directional system and method
`described by Hoang ’980 to implement the block 706 in the
`unidirectional system and method described by Hoang ’980.
`Petitioner’s suggested combination is fundamentally flawed.
`EX2001, Hernandez Decl., ¶ 81 (emphasis added). In the Request, Petitioner simply
`
`provides a two-page block quotation of its original argument. Request at 9–11.
`
`Petitioner does not provide any reason in the Request to suspect or rebut Dr.
`
`Hernandez’s conclusions, either by explaining how the Board—which cited Dr.
`
`Hernandez in support of Patent Owner’s argument (Decision at 15)—misunderstood
`
`Dr. Hernandez, or by providing new evidence. See, e.g., Request at 9–12. Because
`
`9
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`IPR2019-01015
`U.S. Patent 8,799,468
`Petitioner fails to provide any reason why its original technical argument succeeds
`
`in the face of the Board’s reasoned analysis, the Board should reject Petitioner’s
`
`Request and maintain denial of institution.
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`C. Conclusion
`
`Petitioner’s Request for Rehearing does not address each of the independent
`
`grounds for the Board’s denial of institution in the instant IPR. Further, Petitioner’s
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`Request did not address the underlying technical flaws in Petitioner’s argument to
`
`combine the unidirectional and bidirectional aspects of Hoang, which the Board
`
`rejected. For at least these reasons, the Board should deny Petitioner’s Request for
`
`Rehearing and maintain denial of institution.
`
`Date: January 13, 2020
`
`
`
`
`
`Respectfully submitted,
`
`/s/ Benjamin R. Johnson
`Benjamin R. Johnson
`Reg. No. 64,483
`Jeffrey G. Toler
`Reg. No. 38,342
`MCDONNELL, BOEHNEN, HULBERT, &
`BERGHOFF, L.L.P.
`300 South Wacker Drive
`Chicago, Illinois 60606
`Telephone: (312) 913-0001
`Facsimile: (312) 913-0002
`
`Attorneys for Patent Owner
`
`10
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`
`
`
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`CERTIFICATE OF SERVICE
`
`IPR2019-01015
`U.S. Patent 8,799,468
`
` I
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` certify that an electronic copy of the foregoing PATENT OWNER’S
`
`OPPOSITION TO PETITIONER’S REQUEST FOR REHEARING was served on
`
`Petitioner’ counsel of record at the following address:
`
`Eliot D. Williams
`G. Hopkins Guy III
`Baker Botts L.L.P.
`1001 Page Mill Road, Bld. 1, Suite 200
`Palo Alto, California 94304-1007
`650.739.7500
`
`Ali Dhanani
`Baker Botts L.L.P.
`910 Louisiana St.
`Houston, TX 77002
`713.229.1108
`
`Date: January 13, 2020
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /s/ Benjamin R. Johnson
`Benjamin R. Johnson
`MCDONNELL, BOEHNEN,
`HULBERT, & BERGHOFF, L.L.P.
`300 South Wacker Drive
`Chicago, Illinois 60606
`Telephone: (312) 913-0001
`Facsimile: (312) 913-0002
`
`
`
`i
`
`
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