Trials@uspto.gov
`571-272-7822
`
`Paper 25
`Date: April 1, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DISH NETWORK L.L.C.,
`Petitioner,
`v.
`BROADBAND iTV, INC.,
`Patent Owner.
`
`IPR2020-01267
`Patent 10,028,026 B2
`
`
`
`
`
`
`
`
`
`Before JEFFREY S. SMITH, JUSTIN T. ARBES, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`ARBES, Administrative Patent Judge.
`
`DECISION
`Denying Patent Owner’s Request for Rehearing of Decision on Institution
`37 C.F.R. § 42.71(d)
`
`INTRODUCTION
`I.
`Patent Owner filed a Request for Rehearing (Paper 18, “Req. Reh’g”)
`of our Decision (Paper 15, “Dec.”) to institute an inter partes review of
`claims 1–16 of U.S. Patent No. 10,028,026 B2 (Ex. 1001, “the ’026 patent”).
`Petitioner contends that we “misapprehended or overlooked key facts and
`legal precedent, and abused [our] discretion when evaluating and weighing”
`
`
`
`
`571-272-7822
`
`Paper 25
`Date: April 1, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DISH NETWORK L.L.C.,
`Petitioner,
`v.
`BROADBAND iTV, INC.,
`Patent Owner.
`
`IPR2020-01267
`Patent 10,028,026 B2
`
`
`
`
`
`
`
`
`
`Before JEFFREY S. SMITH, JUSTIN T. ARBES, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`ARBES, Administrative Patent Judge.
`
`DECISION
`Denying Patent Owner’s Request for Rehearing of Decision on Institution
`37 C.F.R. § 42.71(d)
`
`INTRODUCTION
`I.
`Patent Owner filed a Request for Rehearing (Paper 18, “Req. Reh’g”)
`of our Decision (Paper 15, “Dec.”) to institute an inter partes review of
`claims 1–16 of U.S. Patent No. 10,028,026 B2 (Ex. 1001, “the ’026 patent”).
`Petitioner contends that we “misapprehended or overlooked key facts and
`legal precedent, and abused [our] discretion when evaluating and weighing”
`
`
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`IPR2020-01267
`Patent 10,028,026 B2
`the factors set forth in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11
`(PTAB Mar. 20, 2020) (precedential) (“Fintiv”). Req. Reh’g 1. Patent
`Owner also “suggests an Expanded Panel should review and reverse the
`[Decision] to maintain uniformity in how panels apply Board precedent.”
`Id.
`
`Our governing statutes and regulations do not provide for parties to
`request, or panels to authorize, an expanded panel. See generally 35 U.S.C.
`§ 6; 37 C.F.R. §§ 41.1–42.412. The Chief Judge, however, may consider
`panel expansion upon a “suggestion” from a judge, panel, or party. PTAB
`Standard Operating Procedure (SOP) 1,1 15; see also Apple Inc. v.
`Rensselaer Polytechnic Inst., IPR2014-00319, Paper 20 at 2 n.1 (PTAB
`Dec. 12, 2014) (expanded panel) (per curiam).
`The Standard Operating Procedure exemplifies some of the reasons
`for which the Chief Judge may expand a panel. PTAB SOP 1, 15 (§ III.M).
`For example, an expanded panel may be appropriate “to secure and maintain
`uniformity of the Board’s decisions, e.g., in related cases ordinarily
`involving different three judge panels.” Id. (§ III.M.1).
`Upon receiving the Rehearing Request, we followed the procedure set
`forth in § III.M.3 of SOP 1 regarding a suggestion for an expanded panel.
`In this case, the Chief Judge has considered Patent Owner’s suggestion for
`an expanded panel but has determined that an expanded panel is not
`warranted.
`For the reasons stated below, Patent Owner’s Request for Rehearing is
`denied.
`
`
`1 Available at https://www.uspto.gov/sites/default/files/documents/
`SOP%201%20R15%20FINAL.pdf.
`
`2
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`IPR2020-01267
`Patent 10,028,026 B2
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`II. STANDARD OF REVIEW
`When rehearing a decision on petition, the Board will review the
`decision for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of
`discretion occurs if a decision is based on an erroneous interpretation of law,
`if a factual finding is not supported by substantial evidence, or if the
`decision represents an unreasonable judgment in weighing relevant factors.”
`Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party
`requesting rehearing bears the burden of showing an abuse of discretion, and
`“[t]he request must specifically identify all matters the party believes the
`Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).
`
`
`III. ANALYSIS
`A. Patent Owner’s Request to Admit New Evidence
`Before turning to Patent Owner’s arguments regarding discretionary
`denial under 35 U.S.C. § 314, we consider Patent Owner’s request to admit
`new evidence into the record. See Req. Reh’g 2–3. A precedential Board
`decision advises that,
`[i]deally, a party seeking to admit new evidence with a rehearing
`request would request a conference call with the Board prior to
`filing such a request so that it could argue “good cause” exists
`for admitting the new evidence. Alternatively, a party may argue
`“good cause” exists in the rehearing request itself.
`Huawei Device Co., Ltd. v. Optis Cellular Tech., LLC, IPR2018-00816,
`Paper 19 at 4 (PTAB Jan. 8, 2019) (precedential). “Absent a showing of
`‘good cause’ prior to filing the request for rehearing or in the request for
`rehearing itself, new evidence will not be admitted.” Patent Trial and
`Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 90, available
`at https://www.uspto.gov/TrialPracticeGuideConsolidated. At Patent
`
`3
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`IPR2020-01267
`Patent 10,028,026 B2
`Owner’s request, we held a conference call with the parties before Patent
`Owner filed its rehearing request to hear arguments on whether good cause
`exists to admit certain new evidence. See Ex. 2034 (transcript of February 2,
`2021, conference call).
`During the call, Patent Owner sought authorization to file three items
`in this proceeding:
`(1) Petitioner’s Final Invalidity Contentions and relevant claim
`charts served January 8, 2021, in Broadband iTV, Inc. v. DISH
`Network, L.L.C., Case No. 6:19-cv-716 (W.D. Tex.)2 (“the Texas
`case”);
`(2) AT&T Services, Inc., AT&T Communications, LLC, and
`DIRECTV, LLC’s Final Invalidity Contentions and relevant
`claim charts served January 29, 2021, in Broadband iTV, Inc. v.
`AT&T Services, Inc., Case No. 6:19-cv-712 (W.D. Tex.), and
`Broadband iTV, Inc. v. DirecTV, LLC, Case No. 6:19-cv-714
`(W.D. Tex.)
`(consolidated
`into Case No. 6:19-cv-712
`(1:20-cv-717-ADA), “the AT&T case”); and
`(3) a PACER report of the current docket in the Texas case.
`Ex. 2034, 6:15–25. Patent Owner explained that Petitioner’s final invalidity
`contentions “include about 180 claim charts that total about 7,500 pages”
`and that “AT&T’s [final invalidity] contentions include about 50 charts
`totaling over 17,000 pages.” Id. at 7:24–8:3. Patent Owner argued that good
`cause exists to admit this evidence, which Petitioner disputed. See generally
`id.
`
`On the call, we expressed concern with the volume of information
`Patent Owner sought to introduce, and Patent Owner agreed to file a much
`smaller volume of information (approximately 1,000 pages). Id. at
`23:24–31:1. We reserved ruling on Patent Owner’s request to admit the new
`
`2 We refer to the United States District Court for the Western District of
`Texas as “the Texas court.”
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`IPR2020-01267
`Patent 10,028,026 B2
`evidence because, at that point, we could not reach a “good cause”
`determination without knowing exactly what Patent Owner would seek to
`admit, and we instructed Patent Owner to present its arguments regarding
`good cause in its rehearing request. Id. at 31:8–32:8, 35:5–12.
`After the conference call, Patent Owner filed a total of 538 pages of
`evidence in Exhibits 2031–2033, significantly less than the initial volume of
`evidence it sought to introduce. Patent Owner argues that good cause exists
`to admit this evidence because “it is highly relevant to the Fintiv analysis”
`and “provides critical new information about the state of the parallel
`litigation, showing significant investment under factor 3 and nearly complete
`overlap under factor 4.” Req. Reh’g 2–3. Patent Owner also notes that the
`invalidity contentions were both served in January 2021, and, therefore,
`could not have been submitted with Patent Owner’s Preliminary Response
`(Paper 9, “Prelim. Resp.”), which was filed in October 2020. Req. Reh’g 3.
`Having considered Patent Owner’s arguments on rehearing and the
`parties’ arguments during the conference call on February 2, 2021, we grant
`Patent Owner’s request to admit Exhibits 2031–2033 with the Request for
`Rehearing and discuss the evidence below where relevant.
`
`
`B. Discretionary Denial Under 35 U.S.C. § 314(a)
`Patent Owner argues that we “misapprehended or overlooked key
`facts and abused [our] discretion in evaluating and weighing the Fintiv
`factors.” Req. Reh’g 3. Patent Owner also argues that we should consider
`the AT&T case in evaluating the second and fourth Fintiv factors. Id. For
`the reasons explained below, we disagree that we should exercise discretion
`to deny institution.
`
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`5
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`IPR2020-01267
`Patent 10,028,026 B2
`1. Whether the Court Granted a Stay or Evidence Exists that One
`May Be Granted if a Proceeding Is Instituted
`In the Decision, we stated that “[i]t would be improper to speculate, at
`this stage, what the Texas court might do regarding a motion to stay, given
`the particular circumstances of this case.” Dec. 13 (emphasis added).
`Patent Owner argues that, by stating this, we “expressly declined to evaluate,
`and thus overlooked, [the] evidence” that Patent Owner introduced with its
`Preliminary Response. Req. Reh’g 4–5 (citing Prelim. Resp. 14–16, 18).
`We disagree. Rather, we evaluated Patent Owner’s arguments and evidence
`in making our determination. See Dec. 12–14.
`Further, on May 7, 2020, Petitioner filed a motion to transfer, which
`has not been decided by the Texas court, and, therefore, has been pending
`for over ten months. Ex. 2033, 5 (Docket No. 37). As we noted in the
`Decision, this pending motion introduces some uncertainties as to the current
`trial schedule in the Texas case, and the same is true as to the possibility for
`a stay. See Dec. 17.
`After considering Patent Owner’s arguments on rehearing, we
`maintain that this factor is neutral to the exercise of our discretion.
`
`2. Proximity of the Court’s Trial Date to the Board’s Projected
`Statutory Deadline for a Final Written Decision
`After evaluating the parties’ arguments and the evidence of record, we
`determined that “this factor is, at most, slightly in favor of exercising our
`discretion to deny the Petition.” Dec. 14–18. In arriving at this
`determination, we noted that there is a pending motion to transfer in the
`Texas case that, if granted, “would necessitate a new trial date.” Id. at 17.
`We also were
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`Patent 10,028,026 B2
`not persuaded that we should instead refer to the trial date of the
`AT&T case (for which Petitioner’s motion to transfer is
`irrelevant), at least because Patent Owner does not present any
`evidence of duplication between Petitioner’s contentions in this
`proceeding and the invalidity contentions of the defendants in
`that case (factor 4).
`Id. at 18 n.5.
`On rehearing, Patent Owner argues that we should consider the Texas
`case and the AT&T case “collectively” and that “the AT&T [case], in the
`same court with the same schedule, mitigates concerns about the pending
`transfer motion because trial is set more than two months before the
`projected final decision deadline, AT&T has not filed a motion for stay, and
`the Panel would duplicate the district court’s efforts.” Req. Reh’g 6–7.
`Patent Owner also alleges that there is overlap between issues in this
`proceeding and in the AT&T case. Id. at 7–8.
`We consider Patent Owner’s arguments as to issue overlap in
`analyzing Fintiv factor 4 below. As to Patent Owner’s reliance on the
`AT&T case for factor 2, we agree with Patent Owner that the lack of a
`transfer motion in that case mitigates the particular concern we raised in the
`Decision regarding the pending transfer motion in the Texas case. But the
`AT&T case raises a different issue that works against Patent Owner for this
`factor. As we discussed in the Decision, Petitioner pointed out that the
`Texas court has issued orders delaying trials due to the COVID-19
`pandemic, and Petitioner argued that these trials will need to be rescheduled,
`which will cause cascading delays that affect other trials. See Paper 1
`(“Pet.”), 7–8 (citing Exs. 1021–1023, 1033, 1034); Dec. 14–15. Patent
`Owner countered that these orders “permit different divisions in the Western
`District [of Texas] to make their own determinations whether to proceed
`
`7
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`IPR2020-01267
`Patent 10,028,026 B2
`with jury trials based on the situation in their locations” and that, “[o]n
`August 18, 2020, Judge Albright issued a Divisional Standing Order
`Regarding Trials In Waco indicating that the Waco ‘Division may safely
`conduct trials.’” Prelim. Resp. 19–20 (citing Exs. 1033, 1034, 2006, 2007).
`The AT&T case, however, was transferred to the Austin Division of the
`Texas court, although it was kept on the docket of Judge Albright. Ex. 3003
`(Order Transferring Case to the Austin Division). The Orders cited by
`Patent Owner (Exhibits 2006 and 2007) govern trials in the Waco Division.
`Because the AT&T case is in the Austin Division where jury trials have been
`delayed, we cannot ignore that the AT&T case introduces potential delay
`issues that are not present in the Texas case.
`We already determined that Fintiv factor 2, at most, slightly favors
`exercising discretion to deny. Dec. 18. The AT&T case introduces issues
`that effectively balance each other out, as discussed above. Therefore,
`we maintain that this factor slightly favors exercising discretion to deny.
`
`3. Investment in the Parallel Proceeding by the Court and the Parties
`In the Decision, we determined that “this factor weighs strongly
`against exercising our discretion to deny the Petition.” Dec. 18–21.
`On rehearing, Patent Owner argues that we (1) “misapprehended or
`overlooked the parties’ significant investment in the parallel litigation,” and
`(2) “overstated [Petitioner]’s purported diligence in filing the [P]etition.”
`Req. Reh’g 9–12. We address each of these in turn.
`
`
`a) The Parties’ Investment in the Parallel Litigation
`Patent Owner argues that, in the Decision, we focused on the Texas
`court’s actions in ruling on claim construction and on Petitioner’s motion to
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`Patent 10,028,026 B2
`dismiss under 35 U.S.C. § 101 but overlooked the parties’ investment in
`briefing and arguing these matters. Req. Reh’g 9. We did not overlook
`these efforts; we expressly addressed them. Dec. 18–20. Patent Owner
`simply disagrees with our assessment, but this is not the purpose of a
`rehearing request. See supra Section II. Further, in support of its argument
`regarding the parties’ investment in claim construction and § 101 briefing,
`Patent Owner merely refers to various entries on the docket of the Texas
`case. Req. Reh’g 10 (citing Ex. 2033, Docket Nos. 17, 28, 32, 56,
`62–64, 67, 68). Patent Owner discussed these efforts in its previous briefing
`and, therefore, is simply rearguing its case on rehearing. See Prelim.
`Resp. 23. Again, we considered, and did not overlook, what Patent Owner
`cited.
`
`Patent Owner further argues that, “other than acknowledging that
`[Patent Owner] indicated final infringement and invalidity contentions
`would be served before the institution decision on January 8, 2021, the Panel
`overlooked the parties’ significant investments in preparing final
`contentions.” Req. Reh’g 10 (citing Dec. 19). We did not overlook these
`efforts; rather, we expressly considered them along with the fact that
`discovery had only recently begun and expert discovery does not begin until
`June 2021. Dec. 19. Further, it is not clear on this record why the effort
`Patent Owner expended in preparing final infringement contentions was
`“significant” because the contentions are not in the record. Petitioner
`submitted Exhibit 1026, which is a cover document for Patent Owner’s
`preliminary infringement contentions in the Texas case. Exhibit 1026 itself
`is four pages, one of which is the signature page, and mostly recites
`boilerplate. This document does not show any significant level of
`investment. Exhibit 1026 states that Patent Owner’s “preliminary
`
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`IPR2020-01267
`Patent 10,028,026 B2
`infringement contentions are attached hereto as Exhibits 1–4,” each of which
`corresponds to a different patent involved in inter partes reviews: Exhibit 1
`(the ’026 patent), Exhibit 2 (U.S. Patent No. 10,506,269 B2
`(IPR2020-01332)), Exhibit 3 (U.S. Patent No. 9,998,791 B2
`(IPR2020-01280)), and Exhibit 4 (U.S. Patent No. 9,648,388 B2
`(IPR2020-01359)). Only the first contentions pertaining to the ’026 patent
`have been entered in this proceeding (as Exhibit 1027). That claim chart has
`screen shots of Petitioner’s products and links to websites to show how each
`element of the asserted claims is allegedly met, which is what one would
`expect from an infringement claim chart in the ordinary course of litigation.
`Patent Owner did not seek to enter its final infringement contentions with its
`Request for Rehearing, and, therefore, we can only speculate as to the level
`of effort expended in their preparation, which Patent Owner characterizes as
`“significant.” See Req. Reh’g 10.
`Patent Owner also argues that Petitioner’s “submission (and [Patent
`Owner’s] subsequent consideration) of the final invalidity contentions
`served January 8, 2021, including about 180 claim charts,” favors exercising
`discretion to deny. Id. at 9. We can only speculate as to how much effort
`Patent Owner expended in its “consideration” of Petitioner’s contentions,
`but, regardless, in instituting review we considered that final invalidity
`contentions already would have been served. See Dec. 19.
`Patent Owner also argues that “[t]he [Texas] court and [Patent Owner]
`have also invested heavily in the related AT&T case, which presents
`overlapping invalidity considerations and should be considered when
`evaluating efficient use of judicial resources.” Req. Reh’g 10 (citing Prelim.
`Resp. 16). The defendants in the AT&T case are not parties to this
`
`10
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`IPR2020-01267
`Patent 10,028,026 B2
`proceeding.3 Patent Owner does not detail the efforts made by the Texas
`court and Patent Owner in the AT&T case, but argues that both the Texas
`case and the AT&T case are “in the same court with the same schedule,”
`which suggests similar efforts have been made in both cases and does not tip
`the scale any further in favor of exercising discretion to deny. See id. at 7.
`We note, though, that because the final invalidity contentions in the AT&T
`case were served on January 29, 2021 (after our Decision on January 21,
`2021), there could not have been any efforts by Patent Owner in reviewing
`them at the time of the Decision.
`
`
`b) Diligence in Filing Petition
`In the Decision, we stated that Petitioner’s filing of the Petition within
`three months of receiving Patent Owner’s preliminary infringement
`contentions indicated diligence that weighs against exercising discretion to
`deny. Dec. 20–21. On rehearing, Patent Owner argues that this is
`inconsistent with a precedential decision of the Board. Req. Reh’g 11–12
`(citing Snap, Inc. v. SRK Tech. LLC, IPR2020-00820, Paper 15 at 11 (PTAB
`Oct. 21, 2020) (precedential as to § II.A) (“Snap”)). Patent Owner,
`however, focuses only on the timing of the Petition in relation to the
`identification of asserted claims. In the Decision, we noted that Petitioner
`filed the Petition “less than three months after receiving notice of Patent
`Owner’s infringement positions for all asserted claims (including those not
`identified originally in the complaint) and prior to the parties exchanging
`
`
`3 We recognize that the defendants in the AT&T case recently filed a
`petition challenging the ’026 patent and motion for joinder as parties to the
`instant proceeding in Case IPR2021-00556. No decision on either filing has
`been made at this time, however.
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`proposed claim terms for construction and briefing claim construction issues
`in the Texas case.” Dec. 20–21. By contrast, in Snap, the petitioner argued
`that “the timing of filing enabled the Petition to take into account both
`parties’ claim construction positions, which resulted in a more focused and
`thorough petition than what would have been possible even weeks earlier.”
`Snap, Paper 15 at 12. Thus, the present case is distinguishable from Snap in
`that Petitioner did not wait until after learning Patent Owner’s claim
`construction positions to file the Petition.
`
`
`c) Factor 3 Determination
`Having considered Patent Owner’s arguments on rehearing, we
`maintain our determination that this factor weighs strongly against
`exercising our discretion to deny the Petition. See Dec. 21.
`
`
`4. Overlap Between Issues Raised in the Petition and
`in the Parallel Proceeding
`After evaluating the parties’ arguments and the evidence of record, we
`determined that even though one of the challenged claims in this proceeding
`is not asserted in the Texas case, “there is overlap as to the claims and the
`asserted grounds based on Gonder, Son, and Kelts” and, therefore, “this
`factor weighs in favor of exercising our discretion to deny the Petition.”
`Dec. 21–23. On rehearing, Patent Owner argues that Petitioner’s final
`invalidity contentions show overlap with the asserted grounds based on
`Gonder, Son, and Kelts. Req. Reh’g 7–8 (citing Ex. 2031). That is what we
`found in the Decision, however.
`Patent Owner further argues that overlap between issues in this
`proceeding and the AT&T case supports exercising discretion to deny. Id.
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`In particular, Patent Owner argues that the defendants in the AT&T case
`allege obviousness based on Son and “a related Kelts patent” (U.S. Patent
`No. 8,046,804 B2) and stated that they became aware of Son from
`Petitioner’s petitions seeking inter partes review. Id. at 8 (citing Ex. 2032,
`2, 14, 16, 18, 25, 27, 29, 38–47). We have reviewed the cited invalidity
`contentions and find only minimal overlap between the issues raised in the
`AT&T case and this proceeding. Petitioner relies on Gonder as allegedly
`teaching the majority of the limitations of the claims, and relies on
`combinations with Son and Kelts for certain limitations. See Dec. 46–60;
`Pet. 35–57. The defendants in the AT&T case rely on a set of base
`references (which does not include Gonder), and cite Son and the “related
`Kelts patent” (not Kelts) in combination with those references. Ex. 2032,
`38–47. Thus, there is less overlap with respect to the AT&T case than we
`already determined existed with respect to the Texas case. Regardless, we
`already determined that Fintiv factor 4 weighs in favor of exercising
`discretion to deny. Dec. 21–23. Patent Owner’s reliance on the AT&T case
`on rehearing does not change our factor 4 determination.
`
`5. Whether the Petitioner and the Defendant in the Parallel Proceeding
`Are the Same Party
`In the Decision, we noted that the fact that Petitioner is the defendant
`in the Texas case “could weigh either in favor of, or against, exercising
`discretion to deny institution, depending on which tribunal was likely to
`address the challenged patent first.” Dec. 23. We then determined that “this
`factor is, at most, slightly in favor of exercising our discretion to deny the
`Petition.” Id. On rehearing, Patent Owner argues that we inappropriately
`“collaps[ed] the fifth Fintiv factor into the second.” Req. Reh’g 13–14.
`
`13
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`We disagree. In this factor, Fintiv considers whether the Board would be
`“redoing the work of another tribunal.” Fintiv, Paper 11 at 14. Thus, the
`timing of the parallel proceeding is relevant to consider in this factor. In any
`event, we determined that this factor, at most, slightly favors exercising
`discretion to deny. Dec. 23.
`Moreover, many of Patent Owner’s arguments on rehearing are based
`on the AT&T case, to which Petitioner is not a party. See Req. Reh’g 6–8,
`10. Fintiv advises that, “[i]f a petitioner is unrelated to a defendant in an
`earlier court proceeding, the Board has weighed this fact against exercising
`discretion to deny institution.” Fintiv, Paper 11 at 13–14. Thus, to the
`extent Patent Owner requests us to reconsider our Decision in light of the
`AT&T case, this factor weighs against exercising discretion to deny.
`
`6. Other Circumstances that Impact the Board’s Exercise of Discretion,
`Including the Merits
`In the Decision, we determined that “the merits in this proceeding,
`taken as a whole, weigh against discretionary denial.” Dec. 24. On
`rehearing, Patent Owner argues that we “misapprehended or overlooked that
`[the] Petition controls the proceeding and the Panel is not free to cure
`[Petitioner’s] defective Petition.” Req. Reh’g 14–15. Patent Owner
`contends that “[t]he Panel correctly held that [the CableLabs specification] is
`not properly incorporated into Gonder, . . . which should have ended the
`inquiry into the merits, or at least demonstrated sufficient weakness to find
`factor 6 neutral or favoring denial,” but we instead “crafted [our] own
`unpatentability theory that Gonder teaches the disputed elements without
`[the CableLabs specification] and that [the CableLabs specification] can be
`
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`used to show common knowledge/common sense.” Id. at 15 (citing
`Pet. 21–23, 41, 53–57; Dec. 51–53).
`We disagree with Patent Owner. Petitioner in certain portions of its
`Petition relies on disclosures from both Gonder and the CableLabs
`specification, arguing that the CableLabs specification is incorporated by
`reference in Gonder. See Dec. 48–49, 51–53 (citing Pet. 21–23, 53–57).
`As explained in the Decision, we are not persuaded based on the current
`record that the CableLabs specification is incorporated by reference, but are
`persuaded that Petitioner’s contentions regarding the cited disclosures of
`Gonder itself are sufficient to demonstrate a reasonable likelihood of
`prevailing. Id. at 49–53. That preliminary finding (i.e., not relying on
`anything in the CableLabs specification) is sufficient alone for purposes of
`institution. We also noted, though, that “based on the current record, we do
`not see why, even if the CableLabs specification is not incorporated by
`reference in Gonder itself, it cannot be considered as showing the
`background knowledge that a person of ordinary skill in the art would have
`had in reading Gonder,” noting, for example, certain arguments in the
`Petition and supporting declaration pertaining to the CableLabs specification
`as a known standard. Id. at 52–53 (citing Pet. 41; Ex. 1002 ¶¶ 105, 172).
`Accordingly, we “encouraged [the parties] to address the relevance of the
`CableLabs specification in their papers during trial.” Id. In doing so, we
`merely identified an issue that would benefit from further development at
`trial. We did not create a new theory of unpatentability or rely on “common
`knowledge” or “common sense” as teaching a missing claim limitation, as
`Patent Owner contends. See Req. Reh’g 15.
`Petitioner had the burden at the institution stage to show a reasonable
`likelihood of prevailing, and we found that burden met with respect to
`
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`
`IPR2020-01267
`Patent 10,028,026 B2
`Petitioner’s arguments regarding the disclosure of Gonder (without the
`CableLabs specification). See Dec. 49–53. The relevance of Petitioner’s
`additional arguments regarding the CableLabs specification can be
`addressed during trial (when Patent Owner will have the opportunity, for
`example, to cross-examine Petitioner’s declarant), and our ultimate decision
`on whether unpatentability is proven by a preponderance of the evidence
`will be based on the complete record at the end of trial.
`
`
`7. Overall Reassessment of Fintiv Factors
`After considering Patent Owner’s arguments on rehearing, we are not
`persuaded that we misapprehended or overlooked any matters or abused our
`discretion in declining to exercise discretion to deny institution.
`
`
`IV. CONCLUSION
`Based on the foregoing discussion, we determine that Patent Owner
`has not demonstrated that we misapprehended or overlooked any matters in
`the Decision or abused our discretion. We, therefore, decline to exercise our
`discretion to deny institution under 35 U.S.C. § 314.
`
`
`V. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s Request for Rehearing is denied.
`
`
`16
`
`
`
`IPR2020-01267
`Patent 10,028,026 B2
`FOR PETITIONER:
`
`Alyssa Caridis
`K. Patrick Herman
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`a8cptabdocket@orrick.com
`p52ptabdocket@orrick.com
`
`
`FOR PATENT OWNER:
`
`Sal Lim
`David Alberti
`Hong Lin
`Russell Tonkovich
`FEINBERG DAY KRAMER ALBERTI LIM TONKOVICH
`& BELLOLI LLP
`slim@feinday.com
`dalberti@feinday.com
`hlin@feinday.com
`
`Michael D. Specht
`Jason A. Fitzsimmons
`Richard M. Bemben
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`mspecht-ptab@sternekessler.com
`jfitzsimmons-ptab@sternekessler.com
`rbemben-ptab@sternekessler.com
`
`Kevin Greenleaf
`DENTONS US LLP
`kevin.greenleaf@dentons.com
`
`
`
`17
`
`
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