UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`U.S. Patent No. 7,475,246
`: Attorney Docket No. 081841.0119
`In Re:
`Inventor: Moskowitz, Scott A.;
`
`:
`Berry, Mike W.
`:
`
`
`Aug. 4, 2000
`:
`
`
`Filed:
`Jan. 6, 2009
`
`
`: IPR Nos.: IPR2019-01357, -01358
`Issued:
`Assignee: Wistaria Trading Ltd.
`Title:
`Secure personal content server
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`Submitted Electronically via the Patent Trial and Appeal Board End to End System
`NOTICE RANKING AND EXPLAINING DIFFERENCES
`BETWEEN PETITIONS FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,475,246
`
`Active 41322307.2
`
`1
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`U.S. Patent No. 7,475,246
`: Attorney Docket No. 081841.0119
`In Re:
`Inventor: Moskowitz, Scott A.;
`
`:
`Berry, Mike W.
`:
`
`
`Aug. 4, 2000
`:
`
`
`Filed:
`Jan. 6, 2009
`
`
`: IPR Nos.: IPR2019-01357, -01358
`Issued:
`Assignee: Wistaria Trading Ltd.
`Title:
`Secure personal content server
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`Submitted Electronically via the Patent Trial and Appeal Board End to End System
`NOTICE RANKING AND EXPLAINING DIFFERENCES
`BETWEEN PETITIONS FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 7,475,246
`
`Active 41322307.2
`
`1
`
`
`
`
`
`Notice Ranking and Explaining Differences Between Petitions
`
`Pursuant to the July 2019 Update to the USPTO Trial Practice Guide, DISH
`
`Network Corporation, DISH Network L.L.C., and DISH Network Service L.L.C.
`
`(collectively, “Petitioner” or “DISH”) hereby submits this notice ranking and
`
`explaining the differences between two concurrently filed petitions for inter partes
`
`review of U.S. Patent No. 7,475,246 (“’246 Patent”), IPR2019-01357 and IPR2019-
`
`01358, filed herewith (the “Petitions”).
`
`The Petitions challenge non-overlapping claims of the ‘246 Patent based on
`
`non-overlapping grounds. To the extent Petitioner’s burden under 35 U.S.C. §
`
`314(a) is met for the Petitions, institution of both of the Petitions is critical to allow
`
`Petitioner to challenge all of the asserted claims in pending litigation.
`
` U.S. Patent No. 7,475,246 is currently involved in a pending lawsuit
`
`involving Petitioner entitled Blue Spike LLC et al. v. DISH Network Corporation et
`
`al., United States District Court for the District of Delaware, Case No. 1:19-CV-
`
`00160-LPS-CJB (the “District Court Litigation”). In that case, Blue Spike has
`
`asserted claims 1, 17, 20, 21, 24, 25, and 31 of the ‘246 Patent, of which claims 1,
`
`17, 20, 24, and 31 are independent. As shown in detail below, challenging all of the
`
`asserted claims requires five different obviousness grounds and five prior art
`
`references. Due to the word limit of 37 C.F.R. § 42.24(a)(1)(i), two petitions are
`
`necessary for Petitioner to meet its burden for all of these claims and grounds under
`
`35 U.S.C. § 314(a). Accordingly, Petitioner has filed two non-overlapping petitions:
`
`1
`
`
`
`Notice Ranking and Explaining Differences Between Petitions
`
`one challenging claims 1, 20, 21, 24, and 25 of the ’246 Patent (“Petition 1”) and
`
`another challenging claims 17 and 31 (“Petition 2”).
`
`1. Ordering of Petitions
`Although both petitions are non-overlapping, meritorious, and necessary to
`
`address Blue Spike’s asserted claims, Petitioner requests that the Board consider the
`
`petitions in the following order:
`
`1. Petition for Inter Partes Review of Claims 1, 20, 21, 24, and 25 of U.S. Patent
`No. 7,475,246.
`2. Petition for Inter Partes Review of Claims 17 and 31 of U.S. Patent No.
`7,475,246.
`2. Material Differences Between the Petitions
`As shown in the table below, each Petition challenges non-overlapping
`
`asserted claims of the ’246 Patent. Petition 1 challenges independent claims 1, 20,
`
`and 24 and dependent claims 21 and 25, and Petition 2 challenges independent
`
`claims 17 and 31.
`
`Additionally, each Petition asserts non-overlapping obviousness grounds
`
`against the asserted claims. Petition 1 asserts two obviousness grounds: Yeung in
`
`view of Lee and Yeung in view of Lee and Downs. Petition 2 asserts three different
`
`obviousness grounds: Yeung, Yeung in view of Levine, and Yeung in view of Lee,
`
`Levine, and Rhoads.
`
`2
`
`
`
`Notice Ranking and Explaining Differences Between Petitions
`
`Finally, the Petitions assert non-overlapping prior art references. The Downs
`
`reference is relied upon only in Petition 1, whereas the Levine and Rhoads references
`
`are relied upon only in Petition 2.
`
`
`
`Challenged Claims of the
`’246 Patent
`(independent claims in bold)
`
`Asserted References
`
`Grounds
`
`Petition 1
`
`Petition 2
`
`1, 20, 21, 24, and 25
`
`17 and 31
`
`Yeung, Lee, and Downs Yeung, Lee, Levine,
`and Rhoads
`1. Claim 17 is obvious
`over Yeung.
`2. Claim 17 is obvious
`over Yeung in view
`of Levine.
`3. Claim 31 is obvious
`over Yeung, Lee,
`Levine, and Rhoads
`
`1. Claims 1, 20, 21, 24,
`and 25 are obvious
`over Yeung in view
`of Lee
`2. Claims 1, 20, 21, 24,
`and 25 are obvious
`over Yeung in view
`of Lee and Downs.
`
`
`
`
`For these reasons, neither Petition is redundant of the other, and both Petitions
`
`are necessary for Petitioner to challenge all of the claims asserted in the District
`
`Court Litigation in light of the word limits of 37 C.F.R. § 42.24(a)(1)(i).
`
`Accordingly, the Board should exercise its discretion to institute both of the Petitions
`
`filed herewith.
`
`3
`
`
`
`Notice Ranking and Explaining Differences Between Petitions
`
`
`July 19, 2019
`
`
`
`
`
`
`
`Respectfully Submitted,
`
`/Eliot D. Williams/____________________
`Eliot D. Williams (Reg. No. 50,822)
`G. Hopkins Guy III (Reg. No. 35,866)
`Baker Botts L.L.P.
`1001 Page Mill Road, Bld. 1, Suite 200
`Palo Alto, California 94304-1007
`650.739.7511
`
`Ali Dhanani (Reg. No. 66,233)
`Baker Botts L.L.P.
`910 Louisiana St.
`Houston, TX 77002
`713.229.1108
`
`Attorneys for Petitioner, DISH Network
`L.L.C., DISH Network Corporation, and
`Dish Network Service L.L.C.
`
`4
`
`
`
`Notice Ranking and Explaining Differences Between Petitions
`
`CERTIFICATE OF SERVICE
`
`In accordance with 37 C.F.R. §§42.6(e) and 42.105, the undersigned certifies
`
`that on July 19, 2019, a complete and entire copy of the NOTICE RANKING AND
`
`EXPLAINING DIFFERENCES BETWEEN PETITIONS FOR INTER
`
`PARTES REVIEW OF U.S. PATENT NO. 7,475,246 was served on the patent
`
`owner at the correspondence address of record for the subject patent:
`
`
`and to counsel for patent owner in the Lawsuit,
`
`
`Bruce T. Margulies
`Neifeld IP Law, PC
`5400 Shawnee Road, Suite 310
`Alexandria, VA 22312-2300
`
`Timothy Devlin
`Devlin Law Firm LLC
`1526 Gilpin Avenue
`Wilmington, DE 19806
`
`
`via FedEx overnight
`
`Date: July 19, 2019
`
`
`
`
`
`
`
`
`
`/Eliot D. Williams/
`Eliot D. Williams (Reg. No. 50,822)
`G. Hopkins Guy III (Reg. No. 35,866)
`Ali Dhanani (Reg. No. 66,233)
`
`1001 Page Mill Road, Bldg. 1, Suite 200
`Palo Alto, California 94304-1007
`650.739.7511
`Attorneys for Petitioner, DISH Network
`L.L.C., and DISH Network Corporation
`
`5
`
`
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