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`Case IPR2019-01015
`U.S. Patent 8,799,468
`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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`IPR NO.: 2019-01015
`ATTORNEY DOCKET NO.: 081841.0120
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`PETITIONER’S REPLY TO PATENT OWNER’S PRELIMINARY
`RESPONSE
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`I.
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`Case IPR2019-01015
`U.S. Patent 8,799,468
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`INTRODUCTION
`After the Petition in this matter was filed, the Board designated its decision in
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`NHK Spring as precedential, and the District Court in the parallel proceeding
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`construed the claims, denied a motion to stay, and set a trial date. Patent Owner
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`relied on these intervening developments in its Preliminary Response. See
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`Preliminary Response (“POPR”) at 5-11. By email, the Board granted Petitioner’s
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`request to file a reply addressing whether these circumstances warrant denial of
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`institution. They do not.
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`II. ARGUMENT
`A. The Parallel District Court Proceeding Does Not Provide a Basis
`for Denying Institution Under NHK Spring
`As an initial matter, the Preliminary Response incorrectly suggests that
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`Petitioner delayed filing the Petition and caused a duplication of resources with the
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`parallel District Court proceeding. To the contrary, the parties mutually agreed to
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`delay all discovery until an early mediation occurred on April 17, 2019 and, once
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`the mediation ended unsuccessfully, the Petition was filed less than a week later.
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`The Petition was filed just before Markman occurred, before fact discovery opened,
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`and before a trial date was set. In fact, the District Court did not set a trial date until
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`well after the filing of the Petition. These are not circumstances that warrant a denial
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`of institution.
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`In an attempt to analogize this case to NHK Spring, Petitioner incorrectly
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`Case IPR2019-01015
`U.S. Patent 8,799,468
`contends that the invalidity grounds in the instant Petition completely overlap with
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`the District Court proceeding. See POPR at 6 (“[E]ach of the issues raised in the
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`Petition … will be decided by the District Court.”); NHK Spring Co. v. Inti-Plex
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`Techs., Inc., IPR2018-00752, Paper 8 at 19, 20 (PTAB Sept. 12, 2018). While that
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`was the situation in NHK Spring, it is not true here.
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`First, unlike the key fact in NHK Spring, Petitioner does not intend to rely on
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`the same invalidity grounds in the parallel District Court proceeding if the Petition
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`is instituted. Patent Owner here merely speculates the invalidity grounds will be the
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`same. See POPR at 9 (“Assuming that Petitioner has presented its best arguments
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`for invalidity in its Petition, Patent Owner expects that the District Court will rule
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`on the same grounds.”) (emphasis added). However, invalidity contentions are not
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`due until September 13, 2019, and if the Petition is instituted, Petitioner will not
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`rely on the grounds raised in the Petition. The Board has distinguished NHK Spring
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`where, as here, there is not a substantial overlap of the invalidity issues because the
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`asserted prior art in each proceeding is “substantially different.” Comcast Cable
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`Commc’ns, LLC v. Veveo, Inc., IPR2019-00237, Paper 15 at 11-12 (PTAB July 5,
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`2019).
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`Second, most of the claims challenged in the Petition will not be decided in
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`the district court proceeding, whereas there was complete overlap in NHK Spring.
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`Specifically, the Petition here challenges fifteen claims, but Patent Owner must
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`Case IPR2019-01015
`U.S. Patent 8,799,468
`reduce the number of asserted claims to just six by December 1, 2019, thereby
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`leaving at least nine claims challenged in the Petition that will not be decided in the
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`District Court proceeding. See EX2009 (Scheduling order). This fact also supports
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`institution, as the Board has previously found. See IPR2019-00237, Paper 15 at 12.
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`Also, NHK Spring was “decided chiefly on § 325(d)” and is distinguishable
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`where, as here, § 325(d) “is not an independent reason for denial.” Samsung Elecs.
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`Co. v. Immersion Corp., IPR2018-01502, Paper 11 at 35-36 (PTAB Mar. 29, 2018);
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`see also Intel Corp. v. Qualcomm Inc., IPR2019-00128, Paper 9 (PTAB May 29,
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`2019) (“[T]he panel in NHK Spring chose to deny institution based on factors
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`independent from its consideration of the parallel district court proceeding.”). The
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`Board in NHK Spring found that all six factors under § 325(d) weighed in favor of
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`denying institution, noting “importantly” that “the asserted art is a subset of the same
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`prior art that the Examiner applied … [and] the arguments Petitioner advances in its
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`Petition are substantially similar to the findings the Examiner made.” IPR2018-
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`00752, Paper 8 at 18. Those facts are not present here, where the Petition presents
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`new art and arguments.
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`B.
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`The District Court’s Construction of “Selectively Transmit” Does
`Not Impact the Petition’s Demonstration of Success on the Merits
`Petitioner has not proposed inconsistent claim constructions in the Petition
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`and the District Court, nor was that Court’s construction at odds with the
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`constructions in the Petition. During claim construction, the District Court ordered
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`Case IPR2019-01015
`U.S. Patent 8,799,468
`construction of six terms. For the construction of the “selectively transmit” term,
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`the District Court adopted a construction that is consistent with and nearly identical
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`to the Petitioner’s construction as shown below.
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`Petition Construction
`“transmitting all content requests to
`take place within the service provider
`network in response to the controller
`instructions’ decision to transmit the
`content requests”
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`District Court Construction
`“transmitting all selected content
`requests through the service provider
`network in response to the controller
`instructions’ decision to transmit the
`content requests”
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`Patent Owner first assumes the District Court’s construction is correct without
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`explaining why that construction is better than Petitioner’s proposed construction.
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`Patent Owner then argues that the two small differences between the constructions
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`(in bold italics above) means that the Petition is fatally “keyed” to an improper
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`construction. POPR at 11. To make this flawed argument, Patent Owner ignores
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`that the two constructions are virtually the same. As the claim itself makes clear, a
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`decision is made to transmit certain (i.e. selected) content requests and then, in a
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`later step, all such content requests are “transmitted” “in response to the controller
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`instructions’ decision to transmit” them. Patent Owner drops the later portion of
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`the construction in order to argue that the prior art only teaches “all content
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`requests—rather than only all selected content requests—are transmitted” (POPR at
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`11). But, the Petition fully explains how the “selected” element is met.
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`The Petition states, for example, that “[t]he transmission of content requests
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`… is ‘selective’ because the check at step 704 determines whether the STB
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`Case IPR2019-01015
`U.S. Patent 8,799,468
`[subscription] level is sufficient before accessing a DOD service that requires a
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`content request to be transmitted.” Petition at 43; see also id. (“[T]he second
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`processor is configured to selectively transmit the content request (demand that the
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`server provide requested client specific data in response to determining whether to
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`access the requested content).”). Thus, Patent Owner’s theory that Petitioner
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`“attempt[s] to read ‘selectively’ out of the claim element” overlooks the actual
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`argument in the Petition and the later portion of Petitioner’s claim construction.
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`POPR at 23.
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`Importantly, the intent of Petitioner’s proposed construction was not to read
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`“selectively” out of the element as Patent Owner asserts, but rather, to indicate that
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`the transmission of all content requests was selective because all are transmitted only
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`in response to the controller instructions’ decision to transmit. See e.g., Petition at
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`39 (“[U]pon receiving a content request made by the user via the EPG, the STB
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`makes a determination as to whether or not to attempt access to the content.”).
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`Therefore, the District Court adopted a construction that is consistent with
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`Petitioner’s proposed construction.
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`Similarly, there is no material difference between the use of the terms “within”
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`and “through.” Indeed, the District Court agreed with Petitioner on this term that
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`“because ‘all’ communications take place within the service provider network, the
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`specification requires that ‘content requests’ also travel within the service provider
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`5
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`Case IPR2019-01015
`U.S. Patent 8,799,468
`network.” See EX2003 at 5 (emphasis added). While the District Court’s final
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`construction ultimately used the word “through” rather than “takes place within,”
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`Patent Owner fails to present any argument or evidence that this difference is
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`material in the context of the complete construction. See POPR at 19-29 (failing to
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`argue this difference has any impact on Petition).
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`This is not the situation presented in United Microelectronics where the Board
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`found that the Petitioner’s construction erroneously imported a method step into an
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`apparatus claim, and the Petition therefore “fail[ed] to explain adequately how the
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`prior art discloses or suggests a device” under the proper construction. United
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`Microelectronics Corp. v. Lone Star Silicon Innovations LLC, IPR2017-01513,
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`Paper 8 at 12, 17 (May 22, 2018). Here, to the contrary, the constructions are
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`consistent, and the Petition demonstrates a likelihood of success under both
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`constructions.
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`III. CONCLUSION
`For the reasons set forth above and in the Petition, this IPR should be
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`instituted.
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`Date: August 30, 2019
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`/Eliot. D. Williams/
`Eliot D. Williams (Reg. No. 50,822)
`G. Hopkins Guy III (Reg. No. 35,866)
`1001 Page Mill Road, Bld. 1, Suite 200
`Palo Alto, California 94304-1007
`650.739.7511
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`Ali Dhanani (Reg. No. 66,233)
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`Case IPR2019-01015
`U.S. Patent 8,799,468
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`910 Louisiana St.
`Houston, TX 77002
`713.229.1108
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`Attorneys for Petitioner, DISH Network
`L.L.C.
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`Case IPR2019-01015
`U.S. Patent 8,799,468
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`CERTIFICATE OF SERVICE
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`I hereby certify that on August 30, 2019, I caused a true and correct copy of
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`the foregoing Petitioner’s Reply to Patent Owner’s Preliminary Response to be
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`served via electronic mail on the following counsel of record for Patent Owner at
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`the email addresses listed below.
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`Lead Counsel
`Benjamin R. Johnson
`Reg. No. 64,483
`Toler Law Group, PC 8500 Bluffstone
`Cove Suite A201 Austin, TX 78759
`bjohnson@tlgiplaw.com
`Tel. 512-327-5515
`Fax 512-327-5575
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`Back-up Counsel
`Jeffrey G. Toler
`Reg. No. 38,342 Toler Law Group, PC
`8500 Bluffstone Cove Suite A201
`Austin, TX 78759
`jtoler@tlgiplaw.com
`Tel. 512-327-5515
`Fax 512-327-5575
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`Date: August 30, 2019
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`/Eliot D. Williams/
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