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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________
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`DISH NETWORK L.L.C.,
`Petitioner
`
`v.
`
`BROADBAND iTV, INC.,
`Patent Owner
`___________________
`
`Case IPR2020-01267
`Patent 10,028,026 B2
`___________________
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`
`
`PATENT OWNER’S REQUEST FOR REHEARING OF THE DECISION
`GRANTING INSTITUTION OF INTER PARTES REVIEW (PAPER 15)
`AND SUGGESTION FOR EXPANDED PANEL REVIEW
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`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
`
`
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`Case IPR2020-01267
`U.S. Patent No. 10,028,026 B2
`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 1
`I.
`LEGAL STANDARDS ................................................................................... 1
`II.
`III. EXPANDED PANEL REVIEW ..................................................................... 1
`IV. GOOD CAUSE EXISTS TO CONSIDER NEW EVIDENCE. ..................... 2
`V. ARGUMENTS ................................................................................................ 3
`A.
`Factor 1: The Panel misapprehended or overlooked that the stay
`factor requires reviewing the evidence, particularly any proffered
`case-specific evidence, and predicting whether a stay is likely to
`be granted if a proceeding is instituted. ................................................ 4
`Factors 2 and 4: The Panel should consider the AT&T case. ............... 6
`Factor 3: The Panel misapprehended or overlooked the parties’
`significant investment in the parallel litigation and overstated
`DISH’s purported diligence in filing the Petition. ................................ 8
`1.
`The Panel misapprehended or overlooked the parties’
`significant investment in the parallel litigation, reaching a
`conclusion inconsistent with Sand Revolution and Fintiv II. ..... 9
`The Panel overstated DISH’s purported diligence in filing
`the petition; Snap instructs otherwise. ......................................11
`Factor 5: The Panel misapprehended or overlooked that when the
`petitioner and the defendant in the parallel proceeding are the
`same party, factor 5 weighs in favor of denying institution................12
`Factor 6: The Panel misapprehended or overlooked that DISH’s
`Petition controls the proceeding and the Board is not free to cure
`DISH’s defective Petition; the merits are weak. .................................14
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`B.
`C.
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`2.
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`D.
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`E.
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`Case IPR2020-01267
`U.S. Patent No. 10,028,026
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`I.
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`INTRODUCTION
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`Patent Owner Broadband iTV, Inc. (“BBiTV”) respectfully requests rehear-
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`ing of the January 21, 2021 Decision Granting Institution of Inter Partes Review.
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`Paper 15 (“DI”). The Panel misapprehended or overlooked key facts and legal
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`precedent, and abused its discretion when evaluating and weighing the Fintiv fac-
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`tors. BBiTV also respectfully suggests an Expanded Panel should review and re-
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`verse the DI to maintain uniformity in how panels apply Board precedent.
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`II. LEGAL STANDARDS
`A party dissatisfied with a decision may file a request for rehearing. 37
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`C.F.R. § 42.71(d). The request must specifically identify all matters the party be-
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`lieves the Board misapprehended or overlooked, and the place where each matter
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`was previously addressed. Id. The Board reviews such requests for an abuse of dis-
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`cretion. Id. “An abuse of discretion occurs if a decision is based on an erroneous
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`interpretation of law, if a factual finding is not supported by substantial evidence,
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`or if the decision represents an unreasonable judgment in weighing relevant fac-
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`tors.” Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004).
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`III. EXPANDED PANEL REVIEW
`Under the Board’s SOP 1 (Revision 15), BBiTV respectfully suggests that
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`an Expanded Panel decide this Request to secure and maintain uniformity in apply-
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`ing Board precedent in NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., IPR2018-
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`U.S. Patent No. 10,028,026
`00752, Paper 8 (PTAB Sept. 12, 2018), Apple Inc. v. Fintiv, Inc., IPR2020-00019,
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`Paper 11 (PTAB Mar. 20, 2020) (“Fintiv”), and their progeny. That institution de-
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`cisions are largely nonappealable, Thryv, Inc. v. Click-to-Call Techs., LP, 140 S.
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`Ct. 1367, 1372-73 (2020), enhances the need for Expanded Panel Review here.
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`IV. GOOD CAUSE EXISTS TO CONSIDER NEW EVIDENCE.
`Huawei permits a party to provide new evidence with a request for rehearing
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`upon showing good cause. Huawei Device Co., Ltd. v. Optis Cellular Tech., LLC,
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`IPR2018-00816, Paper 19 at 3-4 (PTAB Jan. 8, 2019) (precedential). Here, good
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`cause exists for the Panel to consider Exhibits 2031-2033, including DISH’s final
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`invalidity contentions (EX2031) and AT&T’s final invalidity contentions
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`(EX2032), collectively including over 200 claim charts and over 20,000 pages.1
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`First, the Panel previously granted DISH’s request to brief an unrelated Fed-
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`eral Circuit decision, finding good cause existed merely because DISH argued that
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`the decision was relevant to the Board’s analysis of the second Fintiv factor. Paper
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`11 at 3 (“[W]e determine that there is good cause for a limited reply based on Peti-
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`tioner’s assertions regarding the potential relevance of the Apple decision to our
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`analysis of the second Fintiv factor.”). The new evidence here is not just “poten-
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`1 Accounting for the Panel’s concern about the amount of material to review,
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`BBiTV significantly pruned Exhibits 2031 and 2032, seeking to provide only the
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`most relevant portions of defendants’ contentions for the Panel’s consideration.
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`U.S. Patent No. 10,028,026
`tially relevant”; it is highly relevant to the Fintiv analysis. It provides critical new
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`information about the state of the parallel litigation, showing significant investment
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`under factor 3 and nearly complete overlap under factor 4, as discussed below.
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`Second, both sets of contentions were served in January 2021, and thus
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`BBiTV could not have filed them with its POPR. AT&T’s contentions were served
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`January 29, 2021, after the DI issued. Third, DISH suffers no prejudice if the Panel
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`considers this evidence. By contrast, BBiTV suffers significant prejudice in poten-
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`tially having to defend its patents in IPRs that should not have been instituted. Fi-
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`nally, good cause exists because considering this evidence furthers the policy ob-
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`jectives undergirding Fintiv: efficiency, fairness, and integrity of the patent system.
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`V. ARGUMENTS
`The Panel misapprehended or overlooked key facts and abused its discretion
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`in evaluating and weighing the Fintiv factors. Under Board precedent, each Fintiv
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`factor weighs in favor of denying institution. Under factors 2 and 4, the Panel
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`should also consider the AT&T case, set for trial in November 2021, because
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`AT&T’s final invalidity contentions demonstrate that the Panel will duplicate
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`much of the district court’s efforts. See Paper 9 (“POPR”), 14; Paper 14, 2.
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`The Panel failed to properly determine the relative weights of the factors.
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`The Panel held that factor 1 is “neutral,” DI, 13; factor 2 “is, at most, slightly in fa-
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`vor of” discretionary denial, DI, 18; factor 3 “weighs strongly against” denial, DI,
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`U.S. Patent No. 10,028,026
`21; factor 4 “weighs in favor of” denial, DI, 23; factor 5 weighs “at most, slightly
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`in favor” of denial, DI, 23; and factor 6 and the merits “weigh against” denial, DI,
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`24. Each factor more strongly favors denial than what the Panel determined. Criti-
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`cally, the Panel should have found that factor 3 favors denial, rather than “weighs
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`strongly against” denial. Given that the Panel found only that factors 3 and 6 weigh
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`against denial, even if factor 3 was determined to be neutral, this would tip the
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`scale in favor of denying institution.
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`A.
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`Factor 1: The Panel misapprehended or overlooked that the stay
`factor requires reviewing the evidence, particularly any proffered
`case-specific evidence, and predicting whether a stay is likely to be
`granted if a proceeding is instituted.
`The first Fintiv factor asks “whether the court granted a stay or evidence ex-
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`ists that one may be granted if a proceeding is instituted.” Fintiv, Paper 11 at 6.
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`Fintiv also articulated this factor as evaluating “whether a stay exists or is likely to
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`be granted if a proceeding is instituted.” Id. (heading). In both articulations, the lat-
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`ter half of this factor requires a panel to review any proffered evidence, particularly
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`case-specific evidence, and predict whether a stay is likely to be granted if a pro-
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`ceeding is instituted. The stay factor does not require a panel to engage in specula-
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`tion, but rather in an evidence-based assessment of the facts for a given case.
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`BBiTV presented both general and case-specific evidence showing a stay is
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`highly unlikely. POPR, 14-16 ((i) the court’s statement during a teleconference that
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`the IPR is “independent of” and does not affect the district court trial, (ii) general
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`statements from the judge of his views against staying trial in view of IPR, and (iii)
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`the court’s decisions denying stays under similar circumstances); see also id. at 18
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`(“We’re going to go to trial.”). The Panel expressly declined to evaluate, and thus
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`overlooked, this evidence, averring that “determining how the Texas court might
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`handle the issue of whether to stay any of the related cases when no motion for
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`stay has been filed invites conjecture.” DI, 13. The Panel further ruled, “[i]t would
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`be improper to speculate, at this stage, what the Texas court might do regarding a
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`motion to stay, given the particular circumstances of this case. Accordingly, this
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`factor is neutral to the exercise of our discretion.” Id. Because the Panel expressly
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`declined to evaluate “whether a stay … is likely to be granted if a proceeding is in-
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`stituted,” Fintiv, Paper 11 at 6, its decision is based on an erroneous interpretation
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`of Fintiv and represents an unreasonable judgment in weighing factor 1.
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`Sand Revolution2 and Fintiv II,3 which the Panel cited, do not support the
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`Panel’s decision. The panels in Sand Revolution and Fintiv II could not predict
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`whether a stay was likely because the record lacked specific evidence, which is not
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`the case here. Sand Revolution, Paper 24 at 7 (“In the absence of specific evidence,
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`2 Sand Revolution II, LLC v. Continental Intermodal Group – Trucking LLC,
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`IPR2019-01393, Paper 24 (PTAB June 16, 2020) (informative).
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`3 Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13,
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`2020) (informative) (“Fintiv II”).
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`U.S. Patent No. 10,028,026
`we will not attempt to predict how the district court in the related district court liti-
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`gation will proceed because the court may determine whether or not to stay any in-
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`dividual case, including the related one, based on a variety of circumstances and
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`facts beyond our control and to which the Board is not privy.”) (emphasis added).
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`Fintiv II, Paper 15 at 12 (“We decline to infer, based on actions taken in different
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`cases with different facts, how the District Court would rule should a stay be re-
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`quested by the parties in the parallel case here.” (emphasis added)).
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`The evidence BBiTV presented with its POPR demonstrates that a stay of
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`the district court case is highly unlikely, and thus factor 1 is not neutral—it favors
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`denying institution. E.g., Garmin Int’l, Inc. v. Koninklijke Philips N.V., IPR2020-
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`00754, Paper 11 at 9-11 (PTAB Oct. 27, 2020) (finding factor 1 weighs in favor of
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`denial because stay “unlikely”).
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`Expanded Panel Review is suggested to confirm that panels must review
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`proffered evidence to evaluate whether a stay “is likely to be granted if a proceed-
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`ing is instituted,” Fintiv, Paper 11 at 6. The Expanded Panel should reverse the DI.
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`Factors 2 and 4: The Panel should consider the AT&T case.
`B.
`Factor 2, which considers proximity of the court’s trial date to the Board’s
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`projected statutory deadline for a final decision, Fintiv, Paper 11 at 6, strongly fa-
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`vors denial, particularly considering the DISH and AT&T cases collectively.
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`DISH’s pending motion to transfer weighed heavily on the Panel when eval-
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`uating factor 2. See DI, 17 (“the motion remains pending and would necessitate a
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`new trial date if it were” granted), 17-18 (“with trial currently scheduled for just
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`roughly two months before the due date for the final written decision and a motion
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`for transfer pending, there is at least some persuasive evidence that delays are pos-
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`sible.”). BBiTV explained that the AT&T trial, in the same court with the same
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`schedule, mitigates concerns about the pending transfer motion because trial is set
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`more than two months before the projected final decision deadline, AT&T has not
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`filed a motion for stay, and the Panel would duplicate the district court’s efforts.
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`POPR, 14, 16; Paper 14, 2. The Panel declined to consider the AT&T case “at least
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`because [BBiTV did] not present any evidence of duplication” in the AT&T case,
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`DI, 18 n.5, which implicates Fintiv factor 4.
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`The Panel subsequently permitted BBiTV to submit portions of DISH’s and
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`AT&T’s final invalidity contentions, EX2034, 31:8-33:16, which demonstrate
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`overlap with DISH’s IPR grounds. DISH’s Petition challenges claims 1-16 as al-
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`legedly obvious over Gonder, Son, and Kelts. DI, 10-11. DISH’s final contentions
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`extensively overlap DISH’s IPR arguments, challenging claims 1-9 and 11-16 us-
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`ing the same art and nearly verbatim obviousness arguments. EX2031, 0001 (list-
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`ing claims), 0011-12 (listing art), 0034-39 (Gonder-Son-Kelts combination), 0088-
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`104 (example Gonder claim chart). “DISH also incorporate[d] all references, con-
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`tentions, and claim charts provided by AT&T and DirecTV (“AT&T”) in AT&T’s
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`invalidity contentions by reference ….” EX2031, 0013.
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`AT&T also alleges claims 1-9, 11-13, and 15-16 were obvious, and also re-
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`lies on Son and a related Kelts patent (Exhibit 1007 is a publication of the earliest
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`filed application in the Kelts family). EX2032, 0002 (listing claims and Son), 0014
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`(Son), 0016 (Kelts), 0018 (Kelts), 0025 (Son), 0027 (Son), 0029 (Son), 0038-47
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`(Table 5 relying on Kelts and Son). Notably, AT&T became aware of Son
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`“through DISH’s [IPR] petitions,” id. at 0002, showing that AT&T is reviewing
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`and aligning its invalidity positions with DISH’s IPR challenges.
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`Individually and collectively, the final contentions show the Panel will du-
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`plicate the district court’s efforts, even if DISH’s motion is granted. The AT&T lit-
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`igation bolsters the case to deny DISH’s Petition. And BBiTV stipulates that it will
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`no longer assert claim 14 of the ’026 patent against DISH if the Panel denies
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`DISH’s Petitions against the ’026 patent, aligning the cases even closer. EX2034,
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`12:7-15.
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`C.
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`Factor 3: The Panel misapprehended or overlooked the parties’
`significant investment in the parallel litigation and overstated
`DISH’s purported diligence in filing the Petition.
`The Panel’s decision that the third Fintiv factor “weighs strongly against ex-
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`ercising our discretion to deny the Petition,” DI, 21, “represents an unreasonable
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`judgment in weighing” this factor and thus is an abuse of discretion, Arnold P’ship,
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`362 at 1340. The Panel misapprehended or overlooked the parties’ significant in-
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`vestment in the parallel litigation, focusing on the district court’s investment while
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`overlooking or discounting the parties’ efforts. Despite recognizing that “[t]he pre-
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`sent circumstances are somewhat analogous to those of Sand Revolution,” DI, 19-
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`20, the Panel’s conclusion that factor 3 weighs “strongly against” denial is incon-
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`sistent with Sand Revolution and Fintiv II—both informative—which considered
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`similarly advanced parallel litigation before the same court and judge. The Panel
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`further overstated DISH’s purported diligence in filing its Petition; DISH was not
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`diligent. Factor 3 weighs heavily in favor of denying institution. POPR, 22-24.
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`1.
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`The Panel misapprehended or overlooked the parties’ sig-
`nificant investment in the parallel litigation, reaching a con-
`clusion inconsistent with Sand Revolution and Fintiv II.
`Factor 3 “consider[s] the amount and type of work already completed in the
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`parallel litigation by the court and the parties at the time of the institution deci-
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`sion.” Fintiv, Paper 11 at 9. The Panel, however, focused on the district court’s ef-
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`forts while overlooking or discounting the parties’ efforts. DI, 18-19.
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`As of the Institution Decision, the parties’ investment in the parallel litiga-
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`tion includes: (i) full briefing as to DISH’s motion to dismiss under § 101, (ii) full
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`claim construction briefing on 19 claim terms and attending a Markman hearing,
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`and (iii) DISH’s submission (and BBiTV’s subsequent consideration) of the final
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`invalidity contentions served January 8, 2021, including about 180 claim charts.
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`The Panel overlooked or discounted these efforts. Regarding DISH’s motion
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`to dismiss under § 101, the Panel focused on the court’s order denying the motion
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`without prejudice, DI, 18-19, but overlooked the parties’ investment in fully brief-
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`ing the issue, see EX2033 (Dkt nos. 17, 28, 32). Regarding claim construction, the
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`Panel focused on the fact that the court’s “five-page Order listing constructions for
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`19 terms” did “not provid[e] explanations for those constructions” and “con-
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`stru[ed] 12 of the 19 terms to have their ‘[p]lain and ordinary meaning,’” DI, 19,
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`but overlooked or discounted the parties’ investment in fully briefing and arguing
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`at the Markman hearing, see EX2033 (Dkt nos. 56, 62-64, 67-68). And, other than
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`acknowledging that BBiTV indicated final infringement and invalidity contentions
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`would be served before the institution decision on January 8, 2021, the Panel over-
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`looked the parties’ significant investments in preparing final contentions. DI, 19.
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`Collectively, the court and the parties have invested substantial resources in-
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`to the parallel litigation. The court and BBiTV have also invested heavily in the re-
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`lated AT&T case, which presents overlapping invalidity considerations and should
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`be considered when evaluating efficient use of judicial resources. POPR, 16.
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`That the Panel was “not persuaded that the level of investment so far by the
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`Texas court and the parties in the Texas case supports exercising our discretion to
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`deny institution,” DI, 20, is inconsistent with Sand Revolution and Fintiv II, which
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`analyzed similarly advanced parallel litigation before the same court and judge,
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`and held that factor 3 weighed somewhat or marginally in favor of discretionary
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`denial. Fintiv II, Paper 15 at 13-14 (“Based on the level of investment and effort
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`already expended on claim construction and invalidity contentions in the District
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`Court, this factor weighs somewhat in favor of discretionary denial.”); Sand Revo-
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`lution, 10-11 (“we find that this factor weighs only marginally, if at all, in favor of
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`exercising discretion”). Indeed, the Panel recognized that “[t]he present circum-
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`stances are somewhat analogous to those of Sand Revolution,” DI, 19-20, but
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`reached a drastically different and inconsistent conclusion as to factor 3.
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`2.
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`The Panel overstated DISH’s purported diligence in filing
`the petition; Snap instructs otherwise.
`The Panel overstated DISH’s purported diligence in filing the Petition. See
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`DI, 20 (“Petitioner’s diligence in filing its Petition also weighs against exercising
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`our discretion to deny institution.”). “If the evidence shows that a petitioner filed
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`its petition expeditiously, such as promptly after becoming aware of the claims be-
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`ing asserted, this fact has weighed against denying institution.” Snap, Inc. v. SRK
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`Technology LLC, IPR2020-00820, Paper 15 at 11 (PTAB Oct. 21, 2020) (§ II.A
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`precedential). “If, however, the evidence shows that the petitioner did not file its
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`petition expeditiously, such as at or around the same time that the patent owner re-
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`sponded to the petitioner’s invalidity contentions, or even if a petitioner cannot ex-
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`plain the delay in filing its petition, these facts have favored denial.” Id.
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`DISH filed the Petition more than two months after receiving BBiTV’s ini-
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`tial infringement contentions. POPR, 24. DISH did not explain its delay, id., which
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`is particularly necessary given that DISH’s Petition is essentially cut-and-paste
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`from its initial invalidity contentions, id. at 25 (“In fact, DISH’s Petition repeats,
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`nearly verbatim, the arguments DISH advanced in its initial invalidity contentions.
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`Compare Pet., 68-75, with, EX2013, 24-30.”).
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`Snap confirms the timing of DISH’s Petition filing is at best neutral and
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`should not weigh against denying institution. Snap determined that about a three-
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`month gap between the petitioner becoming aware of the asserted claims and filing
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`its petition was not a prompt filing. Snap, Paper at 12 (petitioner received conten-
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`tions January 31, 2020; petition filed April 8, 2020; Board stated “the Petition was
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`filed neither expeditiously nor with delay because, although it was not filed
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`promptly after Petitioner became aware of the claims being asserted ….”). DISH’s
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`filing more than two months after becoming aware of the full set of asserted claims
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`and silence regarding its delay (despite its invalidity arguments in the Petition mir-
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`roring its initial invalidity contentions) should not lead to a different conclusion.
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`Expanded Panel Review is suggested to maintain uniformity in how panels
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`apply Board precedent. The Panel’s decision as to investment is inconsistent with
`
`Sand Revolution and Fintiv II. The Panel’s decision about DISH’s purported dili-
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`gence is inconsistent with Snap. Thus, the Expanded Panel should reverse the DI.
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`D.
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`Factor 5: The Panel misapprehended or overlooked that when the
`petitioner and the defendant in the parallel proceeding are the
`same party, factor 5 weighs in favor of denying institution.
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`When the petitioner and the defendant in the parallel proceeding are the
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`same party, factor 5 weighs in favor of denying institution—not “at most, slightly
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`in favor” of denying institution, as the Panel held. DI, 23 (emphasis added).
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`The Board’s binding authority, as well as its informative decisions interpret-
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`ing this authority, hold that when the petitioner and the defendant in the parallel
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`proceeding are the same party, Fintiv factor 5 weighs in favor of denying institu-
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`tion. NHK, Paper 8 at 20; Sotera Wireless, Inc., v. Masimo Corp., IPR2020-01019,
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`Paper 12 at 19 (PTAB Dec. 1, 2020) (precedential as to § II.A) (“Petitioner and Pa-
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`tent Owner acknowledge the parties are the same in the inter partes proceeding and
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`in the parallel proceeding …. Thus, this factor supports denying institution.” (em-
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`phasis added)); Fintiv II, Paper 15 at 15 (“Because the petitioner and the defendant
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`in the parallel proceeding are the same party, this factor weighs in favor of discre-
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`tionary denial.”) (emphasis added)); Sand Revolution, Paper 24 at 12-13 (“Alt-
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`hough it is far from an unusual circumstance that a petitioner in inter partes review
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`and a defendant in a parallel district court proceeding are the same, or where a dis-
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`trict court is scheduled to go to trial before the Board’s final decision would be due
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`in a related inter partes review, this factor weighs in favor of discretionary deni-
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`al.”) (emphasis added; citing Fintiv).
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`Snap determined that factor 5 was “neutral or, at most, weigh[ed] slightly in
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`favor of exercising discretion to deny institution” when the petitioner was also the
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`district court defendant. Snap, Paper 15 at 16. But Snap is easily distinguished on
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`its facts because in Snap the district court proceeding had been stayed and there
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`was not substantial overlap between the invalidity contentions and the petitioner’s
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`challenges. Id. The opposite facts are present in this case—neither the DISH nor
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`the AT&T case has been stayed and there is substantial overlap under factor 4.
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`Here, there is no dispute that DISH is both IPR petitioner and the district
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`court defendant. See DI, 23. Factor 5 thus weighs in favor of denying institution.
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`NHK, Paper 5 at 20; Sotera, Paper 12 at 19; Fintiv II, Paper 15 at 15; Sand Revolu-
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`tion, Paper 24 at 12-13. The Panel averred that the “fact [that DISH is both peti-
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`tioner and district court defendant] could weigh either in favor of, or against, exer-
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`cising discretion to deny institution, depending on which tribunal was likely to ad-
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`dress the challenged patent first.” DI, 23. The Board’s binding authority does not
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`support collapsing the fifth Fintiv factor into the second, as the Panel suggested.
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`Expanded Panel Review is suggested to ensure that the Board is uniformly
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`applying factor 5. On review, the Expanded Panel should reverse the DI.
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`E.
`
`Factor 6: The Panel misapprehended or overlooked that DISH’s
`Petition controls the proceeding and the Board is not free to cure
`DISH’s defective Petition; the merits are weak.
`The Panel misapprehended or overlooked that DISH’s Petition controls the
`
`proceeding and the Panel is not free to cure DISH’s defective Petition. SAS Inst., v.
`
`Iancu, 138 S. Ct. 1348, 1357 (2018) (“[T]he petitioner’s contentions . . . define the
`
`
`
`- 14 -
`
`
`
`Case IPR2020-01267
`U.S. Patent No. 10,028,026
`scope of the litigation all the way from institution through to conclusion.”); In re
`
`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (The Board is
`
`not “free to adopt arguments on behalf of petitioners that could have been, but
`
`were not, raised by the petitioner during an IPR.”); Arthrex, Inc. v. Smith & Neph-
`
`ew, Inc., 935 F.3d 1319, 1326 (Fed. Cir. 2019) (“Nor may the Board craft new
`
`grounds of unpatentability not advanced by the petitioner.”).
`
`DISH argued that CableLabs is incorporated by reference in Gonder, and
`
`thus relied on the incorporation of CableLabs as necessary for its obviousness
`
`combination. Pet., 21-23, 41, 53-57. Indeed, DISH relied on CableLabs to address
`
`elements [1.a], [1.b], and [1.e]. Pet., 41, 53-57. The Panel correctly held that Ca-
`
`bleLabs is not properly incorporated into Gonder, DI, 51, which should have ended
`
`the inquiry into the merits, or at least demonstrated sufficient weakness to find fac-
`
`tor 6 neutral or favoring denial. The Panel, however, crafted its own unpatentabil-
`
`ity theory that Gonder teaches the disputed elements without CableLabs and that
`
`CableLabs can be used to show common knowledge/common sense. DI, 51-53.
`
`This was error. Common sense cannot be used to teach missing limitations in this
`
`case. See Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1361 (Fed. Cir. 2016). Re-
`
`gardless, the Panel was not free to craft new theories that DISH did not advance.
`
`DISH argued Gonder incorporates CableLabs and relied on disclosures in Cable-
`
`Labs. DISH was wrong and should lose on the merits. Factor 6 favors denial.
`
`
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`- 15 -
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`
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`
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`Case IPR2020-01267
`U.S. Patent No. 10,028,026
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Richard M. Bemben/
`
`Richard M. Bemben, Reg. No. 68,658
`Counsel for Patent Owner
`
`Date: February 3, 2021
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`
`- 16 -
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`
`
`Case IPR2020-01267
`U.S. Patent No. 10,028,026
`CERTIFICATION OF SERVICE
`
`The undersigned hereby certifies that the foregoing PATENT OWNER’S
`
`REQUEST FOR REHEARING OF THE DECISION GRANTING INSTI-
`
`TUTION OF INTER PARTES REVIEW (PAPER 15) AND SUGGESTION
`
`FOR EXPANDED PANEL REVIEW was served electronically via e-mail on
`
`February 3, 2021, in its entirety on the following Attorneys for Petitioner:
`
`
`
`Alyssa Caridis (Lead Counsel)
`K. Patrick Herman (Back-up Counsel)
`ORRICK, HERRINGTON, & SUTCLIFFE, LLP
`A8CPTABDocket@orrick.com
`P52PTABDocket@orrick.com
`
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Richard M. Bemben/
`
`Richard M. Bemben, Reg. No. 68,658
`Counsel for Patent Owner
`
`Date: February 3, 2021
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`16188726.2
`
`
`
`
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