Trials@uspto.gov
`571-272-7822
`
`Paper 15
`Date: January 21, 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
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`I.
`
`INTRODUCTION
`
`A. Background and Summary
`
`Petitioner DISH Network L.L.C. filed a Petition (Paper 1, “Pet.”)
`
`requesting inter partes review of claims 1–16 of U.S. Patent No. 10,028,026
`
`B2 (Ex. 1001, “the ’026 patent”) pursuant to 35 U.S.C. § 311(a). Patent
`
`Owner Broadband iTV, Inc. filed a Preliminary Response (Paper 9, “Prelim.
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`IPR2020-01267
`Patent 10,028,026 B2
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`Resp.”) pursuant to 35 U.S.C. § 313. Petitioner also filed an explanation for
`
`filing multiple petitions ranking its Petition in this proceeding ahead of its
`
`petition in Case IPR2020-01268 (Paper 3). Patent Owner filed a response
`
`(Paper 8). With our authorization (Paper 11), Petitioner filed a Reply
`
`(Paper 13, “Reply”) and Patent Owner filed a Sur-Reply (Paper 14,
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`“Sur-Reply”) directed solely to an issue regarding whether we should
`
`exercise our discretion to deny the Petition under 35 U.S.C. § 314(a).
`
`Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an
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`inter partes review unless the information in the petition and preliminary
`
`response “shows that there is a reasonable likelihood that the petitioner
`
`would prevail with respect to at least 1 of the claims challenged in the
`
`petition.” For the reasons that follow, we institute an inter partes review as
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`to claims 1–16 of the ’026 patent on all grounds of unpatentability asserted
`
`in the Petition.
`
`
`
`B. Related Matters
`
`The parties indicate that the ’026 patent is the subject of three district
`
`court cases: Broadband iTV, Inc. v. DISH Network L.L.C.,
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`Case No. 6:19-cv-716 (W.D. Tex.)1 (“the Texas case”), 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, “the AT&T case”). See Pet. 4; Paper 6, 1;
`
`Ex. 2009. Petitioner filed another petition challenging claims 1–16 of the
`
`’026 patent in Case IPR2020-01268, and filed six other petitions challenging
`
`
`1 We refer to the United States District Court for the Western District of
`Texas as “the Texas court.”
`
`2
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`IPR2020-01267
`Patent 10,028,026 B2
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`claims of related patents also asserted in the district court cases in
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`Cases IPR2020-01280, IPR2020-01281, IPR2020-01332, IPR2020-01333,
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`IPR2020-01359, and IPR2020-01360. Two different petitioners previously
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`filed petitions challenging claims of a parent patent to the ’026 patent,
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`U.S. Patent No. 7,631,336 B2 (Ex. 1013, “the ’336 patent”), in
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`Cases IPR2014-01222 and CBM2014-00189, both of which were denied.
`
`See Pet. 5; Paper 6, 2.
`
`
`
`C. The ’026 Patent
`
`The ’026 patent discloses devices and methods for “converting,
`
`navigating and displaying video content uploaded from the Internet on a
`
`digital TV video-on-demand platform.” Ex. 1001, col. 1, ll. 42–46.
`
`Video-on-demand (VOD) systems allow a viewer to “navigate through a
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`program guide via the remote control unit and send a request via the set-top
`
`box for a desired video program to be addressed from the head-end to the
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`subscriber’s set-top box for display on the TV.” Id. at col. 2, ll. 3–19.
`
`The ’026 patent explains that “VOD content offerings [were] expected to
`
`increase dramatically” in the future and it was “desirable to find a way
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`for . . . vast numbers of content publishers to transmit their programs to the
`
`home TV, and to enable home TV viewers to find something of interest for
`
`viewing among the vast numbers of new programs.” Id. at col. 2,
`
`l. 66–col. 3, l. 12.
`
`The disclosed VOD content delivery system “offers a gateway for
`
`greatly expanding TV viewing from a relatively small number of
`
`studio-produced program channels to a large number of new commercial
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`publishers and ultimately a vast number of self-publishers or so-called
`
`‘citizen’ content publishers.” Id. at col. 3, ll. 3–12. The system provides
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`subscribers with an electronic program guide (EPG) for navigating through
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`“hierarchically-arranged categories and subcategories” to find the title of
`
`desired video content, allowing subscribers to locate titles of interest “by
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`navigating through the hierarchical addressing scheme of the provider’s
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`EPG.” Id. at col. 3, l. 16–col. 4, l. 5.
`
`A VOD application server at a cable head end manages a database of
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`templates and video content segments for “generating templatized VOD
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`content.” Id. at col. 5, ll. 24–29, Fig. 1A. “The VOD content is generated in
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`response to a viewer request signal transmitted from” the viewer’s digital
`
`set-top box to the cable head end. Id. at col. 5, ll. 29–33. The ’026 patent
`
`discloses that
`
`templates are of different types ordered in a hierarchy, and
`display of content in a template of a higher order includes links
`the viewer can select to content of a lower order in the hierarchy.
`Upon selecting a link using the remote control, the VOD
`Application Server 10 retrieves the template and video content
`of lower order and displays it to the viewer. Each successive
`templatized display may have further links to successively lower
`levels of content in the hierarchy, such that the viewer can use
`the series of linked templatized VOD displays as a “drill down
`navigation” method to find specific end content of interest.
`
`Id. at col. 6, ll. 9–20, Fig. 1B (depicting exemplary “drill down navigation”
`
`for a set of automobile infomercials, where the viewer can navigate by
`
`make, model, dealer, sales event, and inventory).
`
`
`
`
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`Figure 1C of the ’026 patent is reproduced below.
`
`Figure 1C depicts “a templatized VOD display . . . generated in layers.” Id.
`
`at col. 7, ll. 18–19. As shown in Figure 1C,
`
`
`
`[a] Background screen provides a basic color, logo, or graphical
`theme to the display. A selected Template (display frame)
`appropriate to the navigation level the intended display resides
`on is layered on the Background. The Template typically has a
`frame in which defined areas are reserved for text, display
`image(s), and navigation links (buttons). Finally, the desired
`content constituted by associated Text, Image & Buttons is
`retrieved from the database and layered on the Template. The
`resulting screen display shows the combined background logo or
`theme, navigation frame, and text, video images, and buttons.
`
`Id. at col. 7, ll. 19–30.
`
`The ’026 patent also describes a web-based content management
`
`system for “enabling an individual user to upload content from their
`
`computer via a web browser to display a consumer-generated video ad”
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`(e.g., a classified ad). Id. at col. 8, ll. 10–21, Fig. 2A. “The uploaded
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`content includes meta data for classifying the video ad by title and topical
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`area(s).” Id. at col. 8, ll. 21–22. A content conversion system
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`“automatically converts the consumer-generated content” into a “video
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`display format compatible with the VOD content delivery system,” and
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`“[t]he converted video ad is indexed by title and classified topical areas
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`according to the meta data supplied by the user.” Id. at col. 8, ll. 31–37,
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`col. 12, ll. 15–28.
`
`The ’026 patent discloses that “implementation of a VOD content
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`delivery system can be made on any digital television system that supports
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`real-time two-way data transfer and interactivity between the digital Set Top
`
`Box and application servers and VOD servers located at headends or other
`
`service points within the television system network.” Id. at col. 13,
`
`l. 65–col. 14, l. 4. Implementation of the disclosed VOD content delivery
`
`system for Internet Protocol Television (IPTV), where VOD is delivered in
`
`digital video packets using Internet Protocol (IP), “is identical [in operation]
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`to the [disclosed] digital cable implementation.” Id. at col. 14, ll. 4–13,
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`42–44.
`
`Figure 4 of the ’026 patent is reproduced below.
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`Patent 10,028,026 B2
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`Figure 4 depicts “a process flow for enabling content publishers on the
`
`Internet to upload video content to digital television service providers for
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`viewing on the home TV.” Id. at col. 4, ll. 58–61. An author or publisher
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`uploads content over the Internet from his or her computer, for example, to
`
`Web-based Content Management System 40. Id. at col. 15, ll. 26–38.
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`“[H]ierarchical addressing metadata is associated with or tagged to the
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`content when uploaded to the Web-based Content Management System 40,
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`and is carried over into the VOD/EPG navigation scheme displayed on the
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`TV.” Id. at col. 17, ll. 44–47. “[T]he author or publisher selects the
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`category term, subcategory term(s) and title by which it is desired to find the
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`program title in the TV EPG display hierarchy.” Id. at col. 17, ll. 34–38.
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`Thus, “the addressing metadata identifying content uploaded on the Internet”
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`is the same as the “EPG hierarchical addressing scheme used for the VOD
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`program guide,” allowing the content to be “automatically listed in the EPG
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`under the common addressing scheme to enable viewers to find any program
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`of interest.” Id. at col. 17, ll. 30–34, 47–51.
`
`
`
`D. Illustrative Claim
`
`Challenged claim 1 of the ’026 patent is independent. Claims 2–16
`
`depend, directly or indirectly, from claim 1. Claim 1, with brackets noting
`
`identifiers referenced in the Petition, recites:2
`
`1. [1.preamble] An Internet-connected digital device for
`receiving, via the Internet, video content to be viewed by a
`subscriber of a video-on-demand system using a hierarchically
`arranged electronic program guide,
`
`
`2 Claim 1 was corrected in two certificates of correction dated December 4,
`2018, and February 12, 2019. Ex. 1001.
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`IPR2020-01267
`Patent 10,028,026 B2
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`Internet-connected digital device being
`the
`[1.a]
`configured to obtain and present to the subscriber an electronic
`program guide as a templatized video-on-demand display, which
`uses at least one of a plurality of different display templates to
`which the Internet-connected digital device has access, to enable
`a subscriber using the Internet-connected digital device to
`navigate in a drill-down manner through titles by category
`information in order to locate a particular one of the titles whose
`associated video content is desired for viewing on the
`Internet-connected digital device using the same category
`information as was designated by a video content provider in
`metadata associated with the video content;
`
`[1.b] wherein the templatized video-on-demand display
`has been generated in a plurality of layers, comprising:
`
`[1.b.(a)] (a) a first layer comprising a background screen
`to provide at least one of a basic color, logo, or graphical theme
`to display;
`
`[1.b.(b)] (b) a second layer comprising a particular display
`template from the plurality of different display templates layered
`on the background screen, wherein the particular display
`template comprises one or more reserved areas that are reserved
`for displaying content provided by a different layer of the
`plurality of layers; and
`
`[1.b.(c)] (c) a third layer comprising reserved area content
`generated using the received video content, the associated
`metadata and an associated plurality of images to be displayed in
`the one or more reserved areas in the particular display template
`as at least one of text, an image, a navigation link, and a button,
`
`[1.c] wherein the navigating through titles in a drill-down
`manner comprises navigating from a first level of the hierarchal
`structure of a video-on-demand content menu to a second level
`of the hierarchical structure to locate the particular one of the
`titles, and
`
`[1.d] wherein a first template of the plurality of different
`display templates is used as the particular display template for
`the templatized display for displaying the first level of the
`hierarchical structure and wherein a second template of the
`plurality of different display templates is used as the particular
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`IPR2020-01267
`Patent 10,028,026 B2
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`display template for the templatized display for displaying the
`second level of the hierarchical structure,
`
`[1.e] wherein the received video content was uploaded to
`a Web-based content management system by a content provider
`device associated with the video content provider via the Internet
`in a digital video format, along with associated metadata
`including title information and category information, and along
`with the associated plurality of images designated by the video
`content provider, the associated metadata specifying a respective
`hierarchical location of a respective title of the video content
`within the electronic program guide to be displayed on the
`Internet-connected digital device using
`the
`respective
`hierarchically-arranged category information associated with the
`respective title,
`
`[1.f] wherein at least one of the uploaded associated
`plurality of images designated by the video content provider is
`displayed with the associated respective title in the templatized
`video-on-demand display.
`
`
`
`E. Evidence
`
`Petitioner relies on the following prior art:
`
`U.S. Patent No. 8,434,118 B2, filed May 27, 2004, issued
`Apr. 30, 2013 (Ex. 1005, “Gonder”);
`
`U.S. Patent No. 7,159,233 B2, filed Jan. 29, 2001, issued
`Jan. 2, 2007 (Ex. 1006, “Son”); and
`
`U.S. Patent Application Publication No. 2001/0030667
`A1, published Oct. 18, 2001 (Ex. 1007, “Kelts”).
`
`
`
`
`
`
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`Patent 10,028,026 B2
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`F. Prior Art and Asserted Grounds
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`Petitioner asserts that claims 1–16 of the ’026 patent are unpatentable
`
`on the following grounds:
`
`Claims Challenged
`
`35 U.S.C. §
`
`References/Basis
`
`1–16
`
`103(a)3
`
`Gonder, Son4
`
`
`3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the challenged claims
`of the ’026 patent have an effective filing date before the effective date of
`the applicable AIA amendment, we refer to the pre-AIA version of
`35 U.S.C. § 103.
`
`4 Petitioner asserts that claims 1–16 are unpatentable “over the combination
`of Gonder, Son, and/or Kelts, when considered in view of the knowledge of
`a person of ordinary skill in the art.” Pet. 6. The use of “and/or” in this
`context typically implies multiple asserted grounds. Reviewing Petitioner’s
`contentions regarding claim 1, Petitioner relies on Gonder as teaching
`certain limitations, relies on Son as teaching other limitations, and makes
`alternative arguments regarding Son and Kelts for other limitations. See,
`e.g., id. at 35–38 (relying on Gonder combined with either Son or Kelts for
`limitation 1.preamble), 38–42 (relying on Gonder alone, or “alternatively”
`in combination with Kelts, for limitation 1.a), 43–57 (relying on Gonder for
`limitations 1.b.(a)–(c), 1.c, 1.d, and 1.f), 55–57 (relying on Gonder
`combined with Son for limitation 1.e). Thus, we understand Petitioner to be
`asserting two obviousness grounds, with Kelts applied solely in the
`alternative. Also, we do not include the general knowledge of a person of
`ordinary skill in the art in listing the grounds themselves, recognizing that
`such knowledge is considered in every obviousness analysis. See 35 U.S.C.
`§ 311(b) (inter partes review “only on the basis of prior art consisting of
`patents or printed publications”); Koninklijke Philips N.V. v. Google LLC,
`948 F.3d 1330, 1337 (Fed. Cir. 2020) (“Although the prior art that can be
`considered in inter partes reviews is limited to patents and printed
`publications, it does not follow that we ignore the skilled artisan’s
`knowledge when determining whether it would have been obvious to modify
`the prior art. . . . Regardless of the tribunal, the inquiry into whether any
`‘differences’ between the invention and the prior art would have rendered
`the invention obvious to a skilled artisan necessarily depends on such
`artisan’s knowledge.”); Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir.
`
`10
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`IPR2020-01267
`Patent 10,028,026 B2
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`Claims Challenged
`
`35 U.S.C. §
`
`References/Basis
`
`1–16
`
`
`
`103(a)
`
`Gonder, Son, Kelts
`
`II. ANALYSIS
`
`A. Discretionary Denial Under 35 U.S.C. § 314(a)
`
`Institution of inter partes review is discretionary. See Harmonic Inc.
`
`v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is
`
`permitted, but never compelled, to institute an [inter partes review (IPR)]
`
`proceeding.”); 35 U.S.C. § 314(a) (“The Director may not authorize an inter
`
`partes review to be instituted unless the Director determines that the
`
`information presented in the petition filed under section 311 and any
`
`response filed under section 313 shows that there is a reasonable likelihood
`
`that the petitioner would prevail with respect to at least 1 of the claims
`
`challenged in the petition.” (emphasis added)). In the Preliminary Response,
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`Patent Owner contends that we should exercise our discretion to deny the
`
`Petition because Petitioner’s invalidity grounds will be resolved in the Texas
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`case before our deadline for a final written decision. Prelim. Resp. 8–30.
`
`The Board has held that the advanced state of a parallel district court
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`action is a factor that may weigh in favor of denying a petition under
`
`§ 314(a). See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752,
`
`
`2013) (“[T]he knowledge of [an ordinarily skilled] artisan is part of the store
`of public knowledge that must be consulted when considering whether a
`claimed invention would have been obvious.”); Dow Jones & Co. v. Ablaise
`Ltd., 606 F.3d 1338, 1349 (Fed. Cir. 2010) (“[The obviousness] analysis
`requires an assessment of the . . . ‘background knowledge possessed by a
`person having ordinary skill in the art.’” (citing KSR Int’l Co. v. Teleflex
`Inc., 550 U.S. 398, 401 (2007))). We address Patent Owner’s argument that
`Petitioner fails to state its asserted grounds with particularity herein. See
`infra Section II.F.1.
`
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`Patent 10,028,026 B2
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`Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential) (“NHK”); Patent Trial
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`and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 58 & n.2,
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`available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“Trial
`
`Practice Guide”). We consider the following factors to assess “whether
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`efficiency, fairness, and the merits support the exercise of authority to deny
`
`institution in view of an earlier trial date in the parallel proceeding”:
`
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`
`2.
`
`3.
`
`4.
`
`proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`
`investment in the parallel proceeding by the court and the
`parties;
`
`overlap between issues raised in the petition and in the
`parallel proceeding;
`
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`
`6.
`
`other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20,
`
`2020) (precedential) (“Fintiv”). In evaluating these factors, we “take[] a
`
`holistic view of whether efficiency and integrity of the system are best
`
`served by denying or instituting review.” Id. at 6. Upon consideration of
`
`these factors, we decline to exercise our discretion to deny the Petition.
`
`
`
`1. Whether the Court Granted a Stay or Evidence Exists That One
`May Be Granted if a Proceeding is Instituted
`
`The Fintiv panel indicated that, in previous Board decisions, the
`
`existence of a district court stay pending Board resolution of an inter partes
`
`review has weighed strongly against discretionary denial, while a denial of
`
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`such a stay request sometimes weighs in favor of discretionary denial.
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`Fintiv, Paper 11 at 6–8.
`
`Patent Owner argues that the ’026 patent is asserted in the Texas case
`
`and in the AT&T case against AT&T Services, Inc. and DirecTV, LLC,
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`neither of which have been stayed. Prelim. Resp. 14. Patent Owner further
`
`asserts that a stay is unlikely in the Texas case based on comments made by
`
`the Texas court during a telephonic hearing and how the Texas court has
`
`handled other cases. Id. at 14–15. Finally, Patent Owner argues that a stay
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`is unlikely in the AT&T case because those defendants have not filed
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`petitions for inter partes review. Id. at 16.
`
`However, determining how the Texas court might handle the issue of
`
`whether to stay any of the related cases when no motion for stay has been
`
`filed invites conjecture. It would be improper to speculate, at this stage,
`
`what the Texas court might do regarding a motion to stay, given the
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`particular circumstances of this case. Accordingly, this factor is neutral to
`
`the exercise of our discretion. Cf. Sand Revolution II, LLC v. Continental
`
`Intermodal Group – Trucking LLC, IPR2019-01393, Paper 24 at 7 (PTAB
`
`June 16, 2020) (informative) (“Sand Revolution”) (“In the absence of
`
`specific evidence, we will not attempt to predict how the district court in the
`
`related district court litigation will proceed because the court may determine
`
`whether or not to stay any individual case, including the related one, based
`
`on a variety of circumstances and facts beyond our control and to which the
`
`Board is not privy.”); Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at
`
`12 (PTAB May 13, 2020) (informative) (“Fintiv II”) (“We decline to infer,
`
`based on actions taken in different cases with different facts, how the
`
`District Court would rule should a stay be requested by the parties in the
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`parallel case here. This factor does not weigh for or against discretionary
`
`denial in this case.”).
`
`
`
`
`
`2. Proximity of the Court’s Trial Date to the Board’s Projected
`Statutory Deadline For a Final Written Decision
`
`Patent Owner contends that the Texas court set a trial date of
`
`November 15, 2021, which is “between two and three months before the
`
`Board’s projected statutory deadline” for issuing a final written decision in
`
`this proceeding. Prelim. Resp. 16–18; see Ex. 2010 (“The Court is assigning
`
`a trial date of November 15, 2021.”). Patent Owner also points to statements
`
`made by the Texas court indicating that the trial date will not be moved.
`
`Prelim. Resp. 18–19; see Ex. 2002, 8:10–13 (“The Court has moved a
`
`couple of trial dates, and I think 100 percent of the time, it was because the
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`parties jointly requested us to do so.”), 8:22–9:19 (“So let me say this on the
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`record. I’m going to trial. . . . And I don’t know what might have led
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`anyone in this case . . . to believe that I would push back the trial in this
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`case. It’s not going to be delayed. We’re going to go to trial. . . . So I’m
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`slightly uncertain of whatever that underlying issues were that raised
`
`concern on anyone’s part about me moving the trial date, but that’s not
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`going to happen. So hopefully that takes that issue off the board.”).
`
`Petitioner argues, however, that it is “highly likely that trial will occur
`
`much later” than November 2021 because of “the growing volume of patent
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`cases pending before” the Texas court as well as delays caused by the
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`COVID-19 pandemic. Pet. 7–8 (citing Exs. 1022, 1023). Specifically,
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`Petitioner points to orders of the Texas court delaying all civil trials for a
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`period of time in 2020 and asserts that “[a]ll of these trials will need to be
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`rescheduled, causing cascading delays and likely continuances of more
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`recently filed cases, including the parallel district court proceeding at issue
`
`here.” Id. at 8 (citing Exs. 1021, 1033, 1034). Petitioner also filed a motion
`
`to transfer the Texas case to the U.S. District Court for the District of
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`Colorado, which has not yet been decided. Id. at 9.
`
`In its Reply, Petitioner argues that, due to a recent decision of the
`
`U.S. Court of Appeals for the Federal Circuit, In re Apple Inc., 979 F.3d
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`1332 (Fed. Cir. 2020), we should not take the November 15, 2021, trial date
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`at “face value” and instead should refer to the Texas court’s “average time to
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`trial” (over two years). Reply 1, 3 (quoting Fintiv II, Paper 15 at 13;
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`emphasis omitted). The Federal Circuit in Apple granted a petition for
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`mandamus directing the Texas court to transfer a patent infringement case.
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`979 F.3d at 1335. In doing so, the Court observed that in assessing the
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`factor of “administrative difficulties flowing from court congestion,”
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`“a court’s general ability to set a fast-paced schedule is not particularly
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`relevant,” particularly where “the forum itself has not historically resolved
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`cases so quickly.” Id. at 1344. The Court stated that the factor “frequently
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`calls for speculation. For example, scheduled trial dates are often subject to
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`change, and the district court’s anticipated time to trial is significantly
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`shorter than the district’s historical time to trial.” Id. at 1344 n.5. According
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`to Petitioner, the Apple decision supports its view that trial is unlikely to
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`occur by the currently scheduled trial date and increases the likelihood that
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`Petitioner’s own motion to transfer will be granted (in which case a new trial
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`date would be set). Reply 1–3.
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`Patent Owner responds that Petitioner’s view is unfounded given the
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`Texas court’s past statements, recent orders from the Texas court regarding
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`the scheduling of trials in light of the COVID-19 pandemic, and the fact that
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`the Texas court recently completed a jury trial. Prelim. Resp. 19–20 (citing
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`Exs. 2006, 2007, 2011, 2018, 2019). Patent Owner further contends that the
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`Apple decision is inapplicable because it addressed a different issue—venue
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`transfer—and the Texas court here has confirmed the November 15, 2021,
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`trial date. Sur-Reply 2–3; see Ex. 3002, 1 (“The Court confirmed that the
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`Jury Trial date is November 15, 2021.”). With respect to Petitioner’s
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`pending motion to transfer, Patent Owner states that even if the Texas case
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`against Petitioner is transferred, the AT&T case would proceed to trial with
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`the same schedule. Sur-Reply 2; see Ex. 1015 (Scheduling Order applying
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`to all of the cases).
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`The proximity factor in Fintiv, on its face, asks us to evaluate our
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`discretion in light of trial dates that have been set in parallel litigations. See
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`Fintiv, Paper 11 at 3, 5 (“NHK applies to the situation where the district
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`court has set a trial date to occur earlier than the Board’s deadline to issue a
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`final written decision in an instituted proceeding.”; “When the patent owner
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`raises an argument for discretionary denial under NHK due to an earlier trial
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`date, the Board’s decisions have balanced the [six] factors [listed in
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`Fintiv].”) (citing NHK, Paper 8 (footnote omitted)), 9 (considering situations
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`where “the court’s trial date is earlier than the projected statutory deadline”
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`and “the court’s trial date is at or around the same time as the projected
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`statutory deadline or even significantly after the projected statutory
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`deadline”). We recognize that panels of the Board have assessed this factor
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`on a case-by-case basis. On one hand, the Fintiv panel took the district
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`court’s trial schedule at “face value” and declined to question it “absent
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`some strong evidence to the contrary.” Fintiv II, Paper 15 at 12–13. On the
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`other hand, the Sand Revolution panel was persuaded by the uncertainty in
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`the schedule (including that caused by the parties agreeing to jointly request
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`rescheduling of the trial date on several occasions and the global pandemic)
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`despite a scheduled trial date. Sand Revolution, Paper 24 at 8–9. Moreover,
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`as recognized in Sand Revolution, “even in the extraordinary circumstances
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`under which the entire country is currently operating because of the
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`COVID-19 pandemic, the Board continues to be fully operational.” Id. at 9.
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`Here, both parties speculate as to the likelihood that the trial date of
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`November 15, 2021, would later be rescheduled in light of circumstances
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`such as docket congestion and the global pandemic, with Petitioner arguing
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`that a reschedule is likely and Patent Owner arguing the opposite. See
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`Pet. 7–9; Prelim. Resp. 18–21; Reply 1–3; Sur-Reply 1–3. We cannot
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`ignore the fact that the currently scheduled trial date is approximately ten
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`months from now and much can change during this time. Further, although
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`we do not speculate as to the likelihood that Petitioner’s motion to transfer
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`the Texas case will be granted, the motion remains pending and would
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`necessitate a new trial date if it were. Accordingly, whether trial in the
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`Texas case takes place before, contemporaneously with, or after our
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`twelve-month final written decision statutory deadline involves at least some
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`assumptions.
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`This factor looks at the proximity of the trial date to the date of our
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`final written decision to assess the weight to be accorded a trial date set
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`earlier than the expected final written decision date. The proximity inquiry
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`is a proxy for the likelihood that the trial court will reach a decision on
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`validity issues before the Board reaches a final written decision. A trial set
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`to occur soon after the institution decision is fairly likely to happen prior to
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`the Board’s final written decision, even if the trial date were postponed due
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`to intervening circumstances. Here, however, with trial currently scheduled
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`for just roughly two months before the due date for the final written decision
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`and a motion to transfer pending,5 there is at least some persuasive evidence
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`that delays are possible. Thus, the efficiency and system integrity concerns
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`that animate the Fintiv analysis are not particularly strong. Accordingly, this
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`factor is, at most, slightly in favor of exercising our discretion to deny the
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`Petition.
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`3. Investment in the Parallel Proceeding by the Court and the Parties
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`If, at the time of the institution decision, the district court has issued
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`substantive orders related to the challenged patent, such as a claim
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`construction order, this fact weighs in favor of denial. See Fintiv, Paper 11
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`at 9–10. On the other hand, if the district court has not issued such orders,
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`this fact weighs against discretionary denial. Id. at 10. “[T]he weight to
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`give claim construction orders may vary depending upon a particular district
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`court’s practices. For example, some district courts may postpone
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`significant discovery until after it issues a claim construction order, while
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`others may not.” Id. at 10 n.17.
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`Patent Owner argues that, by the time of this Decision, “the parties
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`and the district court will have invested significant time and resources in the
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`parallel litigation.” Prelim. Resp. 22. First, Patent Owner contends that the
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`Texas court denied Petitioner’s motion to dismiss under 35 U.S.C. § 101.
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`Id. at 23. The Texas court, however, merely stated that it “does not believe
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`this is one of the rare cases where it is appropriate to resolve the Section 101
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`5 Under the particular factual circumstances presented, we are 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). See Prelim. Resp. 24–27; Sur-Reply 2.
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`IPR2020-01267
`Patent 10,028,