`
`
`
`
`
`
`
`
`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
`___________________
`
`Case IPR2020-01267
`Patent 10,028,026
`___________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`

`

`IPR2020-01267
`U.S. Patent No. 10,028,026
`
`I.
`II.
`
`2.
`
`3.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`THE ’026 PATENT ......................................................................................... 3
`A. Overview of the ’026 Patent .................................................................. 3
`1. Web-Based Content Management System ................................. 4
`2.
`Drill Down Navigation ............................................................... 6
`3.
`Templatized VOD Displays ........................................................ 7
`III. THE BOARD SHOULD EXERCISE ITS DISCRETION TO DENY
`THE PETITION UNDER 35 U.S.C. §§ 314(A) AND 325(D). ...................... 8
`A. Applying the NHK-Fintiv framework under Section 314(a),
`each Fintiv factor weighs in favor of denying institution;
`collectively, the factors weigh heavily in favor of denial. .................. 12
`1.
`Factor 1 favors denial because the parallel litigation has
`not been stayed and the evidence indicates that Judge
`Albright will not grant a stay. ................................................... 14
`Factor 2 strongly favors denial because trial will begin
`between two and three months before the FWD deadline,
`and Judge Albright confirmed, “We’re going to go to
`trial.”.......................................................................................... 16
`Factor 3 strongly favors denial because, by the projected
`institution deadline, the parties and the district court will
`have made significant investment in the parallel
`litigation. ................................................................................... 22
`Factor 4 strongly favors denial because there is
`significant overlap between the issues that will be tried in
`the different tribunals; DISH’s Petition mirrors the
`invalidity contentions. ............................................................... 24
`Factor 5 strongly favors denial because the parties
`involved in this IPR are the same as in the district court
`proceeding. ................................................................................ 27
`Factor 6 strongly favors denial because DISH’s Petition
`suffers procedural defects, the merits are weak, and the
`
`4.
`
`5.
`
`6.
`
`
`
`- i -
`
`

`

`B.
`
`IPR2020-01267
`U.S. Patent No. 10,028,026
`Board would need to invest significant time to duplicate
`the district court’s claim construction. ...................................... 27
`a)
`Considerations implicated by § 325(d) favor denial. ..... 27
`b)
`The merits favor denial. .................................................. 28
`c)
`The Petition suffers serious procedural deficiencies,
`favoring denial. ............................................................... 28
`Claim construction issues favor denial. .......................... 29
`d)
`Applying the two-part Becton, Dickinson-Advanced Bionics
`framework under Section 325(d) further supports discretionary
`denial. .................................................................................................. 30
`1.
`Part One: DISH advances the same or substantially the
`same art and arguments that were previously presented to
`the Office. .................................................................................. 32
`a)
`Gonder was previously presented to and considered
`by the Office during prosecution of the ’026 patent. ..... 33
`The disclosures of Son and Kelts relied on by DISH
`are substantially the same as Novak and arguments
`already presented to the Office. ...................................... 34
`Part Two: DISH fails to identify material error in the
`Office’s previous evaluation of the art and arguments. ............ 37
`IV. LEVEL OF A PERSON HAVING ORDINARY SKILL IN THE ART ...... 40
`V.
`SUMMARIES OF THE ASSERTED REFERENCES ................................. 40
`A. Gonder ................................................................................................. 40
`B.
`Son ....................................................................................................... 43
`C.
`Kelts ..................................................................................................... 45
`VI. BECAUSE CABLELABS IS NOT PROPERLY INCORPORATED BY
`REFERENCE, GONDER DOES NOT INCLUDE ITS DISCLOSURE
`AND DISH CANNOT SHOW A REASONABLE LIKELIHOOD OF
`PREVAILING. .............................................................................................. 46
`VII. DISH FAILS TO MEET ITS BURDEN TO IDENTIFY WITH
`PARTICULARITY THE REFERENCES RELIED UPON FOR EACH
`GROUND IN THE PETITION. .................................................................... 50
`
`b)
`
`2.
`
`
`
`- ii -
`
`

`

`IPR2020-01267
`U.S. Patent No. 10,028,026
`VIII. THE COMBINATION OF GONDER, SON, AND KELTS FAILS TO
`DISCLOSE EACH AND EVERY ELEMENT OF THE CLAIMS. ............ 52
`A.
`The combination fails to disclose the required templatized EPG
`display having three distinct layers. .................................................... 52
`1.
`Gonder’s two-layer selection screens do not disclose the
`Claim 1 elements of first and third layers of the claimed
`three-layer templatized VOD display. ...................................... 53
`The Petition fails to show how Gonder and Kelts or Gonder and
`Son disclose the Claim 1 element of “[a]n Internet-connected
`digital device for receiving, via the Internet, video content.” ............. 56
`Gonder and Son fail to show “the received video content was
`uploaded to a Web-based content management system … along
`with associated metadata including title information and
`category information … specifying a respective hierarchical
`location of a respective title of the video content within the
`electronic program guide.” .................................................................. 59
`IX. DISH’S RATIONALES FOR COMBINING GONDER, SON, AND
`KELTS ARE INSUFFICIENT. ..................................................................... 62
`CONCLUSION .............................................................................................. 66
`
`B.
`
`C.
`
`X.
`
`
`
`
`
`
`
`
`
`- iii -
`
`

`

`IPR2020-01267
`U.S. Patent No. 10,028,026
`PATENT OWNER’S EXHIBIT LIST
`
`
`2001
`
`2002
`
`2003
`
`Exhibit No. Description
`Complaint for Patent Infringement, Broadband iTV, Inc. v. DISH
`Network, LLC, Case No. 6:19-cv-00716-ADA (W.D. Tex.),
`December 19, 2019.
`Transcript of Telephonic Discovery Hearing Before the Honorable
`Alan D. Albright, Broadband iTV, Inc. v. DISH Network, LLC,
`Case No. 6:19-cv-00716-ADA (W.D. Tex.), August 31, 2020.
`“The last thing anyone should think about WDTX is that it is patent
`plaintiff friendly, says Albright,” (IAM, Apr. 7, 2020),
`https://www.iam-media.com/law-policy/albright-the-last-thing-
`anyone-should-think-about-venue-it-plaintiff-friendly (accessed
`Sept. 14, 2020).
`Order Denying Motion to Stay Case, Continental Intermodal
`Group-Trucking, LLC v. Sand Revolution, LLC, Case No. 7:18-cv-
`00147 (W.D. Tex.), July 22, 2020.
`Order Denying Motion to Stay Case, Kerr Machine Co. v. Vulcan
`Indus. Holdings, LLC., Case No. 6:20-cv-00200 (W.D. Tex.),
`August 18, 2020.
`Divisional Standing Order Regarding Trials in Waco, U.S. District
`Court for the Western District of Texas, August 18, 2020.
`Divisional Standing Order Regarding Trials in Waco, U.S. District
`Court for the Western District of Texas, September 23, 2020.
`Divisional Standing Order Regarding Trials in Waco, U.S. District
`Court for the Western District of Texas, March 24, 2020.
`Order Granting Motion to Consolidate Cases, Broadband iTV, Inc.
`v. DISH Network, LLC, Case No. 6:19-cv-00712 (W.D. Tex.), April
`15, 2020.
`Minute Entry for Proceedings held before Judge Alan D. Albright,
`Broadband iTV, Inc. v. DISH Network, LLC, Case No. 6:19-cv-
`00716 (W.D. Tex.), August 31, 2020.
`“Roku Tells WDTX Patent Jury Its Tech's Web Access Is Key”
`Law360, October 5, 2020,
`https://www.law360.com/articles/1302893/print?section=ip
`(accessed October 20, 2020).
`Order Denying Motion to Dismiss, Broadband iTV, Inc. v. DISH
`Network, LLC, Case No. 6:19-cv-00716-ADA (W.D. Tex.), July
`25, 2020.
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`
`
`- iv -
`
`

`

`IPR2020-01267
`U.S. Patent No. 10,028,026
`
`2013
`
`2014
`
`2015
`
`2016
`2017
`
`Exhibit No. Description
`Dish Network LLC’s Preliminary Invalidity Contentions,
`Broadband iTV, Inc. v. DISH Network, LLC, Case No. 6:19-cv-
`00716-ADA (W.D. Tex.), June 25, 2020.
`Intentionally Left Blank
`Defendants’ Opening Claim Construction Brief, Broadband iTV,
`Inc. v. DISH Network, LLC, Case No. 6:19-cv-716, U.S. District
`Court for the Western District of Texas, dated September 10, 2020.
`Intentionally Left Blank
`U.S. Patent Appl. Publ. No. 2002/00104099 to Novak (“Novak”)
`“Roku Beats $41M Infringement Claim In Texas Trial” Law360,
`October 14, 2020,
`https://www.law360.com/articles/1319005/print?section=ip
`(accessed October 21, 2020).
`“3 Things To Know After Busy WDTX Patent Judge's 1st Trial”
`Law360, October 16, 2020,
`https://www.law360.com/articles/1320360/print?section=ip
`(accessed October 21, 2020).
`Transcript of Telephonic Discovery Hearing Before the Honorable
`Alan D. Albright, Broadband iTV, Inc. v. DISH Network, LLC,
`Case No. 6:19-cv-00716-ADA (W.D. Tex.), March 26, 2020.
`
`2018
`
`2019
`
`2020
`
`
`
`
`
`
`- v -
`
`

`

`IPR2020-01267
`U.S. Patent No. 10,028,026
`
`I.
`
`INTRODUCTION
`U.S. Patent No. 10,028,026 (“the ’026 patent”), which claims priority to
`
`2004, claims innovative, non-obvious backend technical solutions for efficiently
`
`provisioning video content to viewers through a digital TV infrastructure. In the
`
`early 2000s, digital TV and video-on-demand (“VOD”) were nascent technologies.
`
`Patent Owner Broadband iTV, Inc. (“BBiTV”) was an early leader in VOD
`
`technologies, providing innovations including those claimed in the ’026 patent for
`
`uploading, converting, navigating, and displaying video content that helped foster
`
`the growth of digital TV and VOD systems.
`
`DISH Network L.L.C. (“DISH”) petitions for review of claims 1-16 of the
`
`’026 patent. Their Petition should be denied because it is procedurally flawed and
`
`fails to demonstrate a reasonable likelihood that any claims will be found
`
`unpatentable. Additionally, the Board need not even reach the merits, as the facts
`
`and circumstances here warrant denying institution under both Sections 314(a) and
`
`325(d).
`
`First, as to the merits, instead of specifying a coherent ground or
`
`combination challenging the claims, DISH attempts to hedge its arguments,
`
`repeatedly using “and/or” to refer to possible combinations of the Gonder, Son,
`
`and Kelts references. DISH attempts to leave enough ambiguity to later change
`
`course in how it applies the references against the claims. But in doing so, DISH
`
`
`
`- 1 -
`
`

`

`IPR2020-01267
`U.S. Patent No. 10,028,026
`fails to meet its burden under 37 C.F.R. § 42.104(b)(2) and 35 U.S.C. § 312 to
`
`present grounds with sufficient particularity. As such, the Petition should be
`
`denied.
`
`Second, DISH fails to show a proper motivation to combine the Gonder,
`
`Son, and Kelts references. Rather it cobbles together these disparate references
`
`using the ’026 claims as a roadmap without a legally sufficient explanation of a
`
`motivation to combine the references. As such, the Petition should be denied.
`
`Third, even assuming the references can be combined, they fail to disclose
`
`fundamental elements of claim 1. For example, Gonder’s two-layer content
`
`selection screens do not disclose the claim 1 elements of first and third layers of
`
`the claimed three-layer templatized VOD display. In fact, as acknowledged in
`
`Gonder, the carousel-based architecture of Gondor is too slow for even displaying
`
`limited graphics and not compatible with the ’026 patent’s claimed three-layer
`
`templatized approach.
`
`However, the Board need not reach the merits, but rather should deny the
`
`Petition using its discretionary denial authority under Sections 325(d) and 314(a).
`
`Under Section 314(a), the NHK-Fintiv discretionary denial factors weigh heavily in
`
`favor of denial. The ’026 patent is involved in parallel district court litigation that
`
`involves the same parties, claim construction standard, issues, arguments, and
`
`evidence that DISH presented in its Petition. Trial is scheduled to begin November
`
`
`
`- 2 -
`
`

`

`IPR2020-01267
`U.S. Patent No. 10,028,026
`15, 2021, between two and three months before the statutory deadline for issuing a
`
`final written decision. This is a quintessential case for denying institution to avoid
`
`duplicating the district court’s efforts and to avoid reaching inconsistent results.
`
`Additionally, under Section 325(d), the Becton, Dickinson-Advanced Bionics
`
`factors also weigh heavily in favor of denial. DISH’s Petition rehashes art and
`
`arguments that the Patent Office already evaluated during examination. The
`
`Petition, for example, presents obviousness grounds based on the primary
`
`reference Gonder. In the Notice of Allowance, the Examiner identified Gonder as
`
`pertinent to the applicant’s disclosure, demonstrating the Examiner evaluated
`
`Gonder just before allowing the claims. And despite asserting Gonder as the
`
`primary reference, DISH does not allege that the Office erred in evaluating this art,
`
`which is necessary to avoid denial under Section 325(d).
`
`II. THE ’026 PATENT
`A. Overview of the ’026 Patent
`The ’026 patent issued on July 17, 2018 and is titled “System for Addressing
`
`On-Demand TV Program Content on TV Services Platform of a Digital TV
`
`Services Provider.” EX1001, (45), (54). The ’026 patent claims priority to U.S.
`
`Patent No. 7,631,336, filed on March 12, 2007, and U.S. Patent No. 7,590,997,
`
`filed on July 30, 2004. Id., (60).
`
`
`
`- 3 -
`
`

`

`IPR2020-01267
`U.S. Patent No. 10,028,026
`The ’026 patent generally relates to “the provision of video content to
`
`viewers through digital TV infrastructure, and more particularly, to converting,
`
`navigating, and displaying video content uploaded from the Internet on a digital
`
`TV video-on-demand platform.” Id., 1:42-46.
`
`The ’026 patent describes the background of prior art digital TV systems and
`
`services, including video-on-demand (VOD), which in 2004 was still relatively
`
`new. Id., 2:13-19. The ’026 patent recognized that “VOD content offerings are
`
`expected to increase dramatically from a few ‘channels’ with a few score or
`
`hundred ‘titles’ listed on each today to scores or hundreds of channels with
`
`thousands if not millions of titles on each in the foreseeable future.” Id., 2:66-3:3.
`
`Facing this explosion in VOD content and recognizing the need for
`
`improved VOD platform systems, Milton Diaz Perez, the sole inventor of the ’026
`
`patent, devised novel and non-obvious end-to-end solutions that improved the
`
`ingest, processing, listing and access of VOD content. These solutions introduced
`
`the concepts of (1) a web-based content management system (“WBCMS”); (2) drill
`
`down navigation of a VOD menu by category information; and (3) templatized
`
`VOD displays.
`
`1. Web-Based Content Management System
`The WBCMS bridged the gap between the Internet, where uploaded content
`
`could be of any digital media type and come from any web-based source, and a
`
`
`
`- 4 -
`
`

`

`IPR2020-01267
`U.S. Patent No. 10,028,026
`VOD system on a digital TV service provider network. EX1001, 16:35-36, 3:16-
`
`4:5. The WBCMS enabled content producers to upload content for viewing by
`
`subscribers on a VOD system and specify metadata for a hierarchical location for
`
`the content in an electronic program guide (“EPG”). Id. Figure 2A shows an
`
`embodiment of a Classified Ad application for a VOD content delivery system that
`
`includes WBCMS 40:
`
`EX1001, FIG. 2A.
`
`
`
`“With this method, vast numbers of content publishers anywhere on the
`
`Internet can upload their programs to digital television service providers for
`
`viewing on the home TV, and home TV viewers can readily find something of
`
`interest for viewing among the vast numbers of new programs by navigating
`
`through the hierarchical addressing scheme of the provider’s EPG.” Id., 3:66-4:5.
`
`
`
`- 5 -
`
`

`

`IPR2020-01267
`U.S. Patent No. 10,028,026
`
`2.
`Drill Down Navigation
`The ’026 patent recognized that it is “desirable to find a way for such 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., 3:8-12. The EPG is organized using a hierarchical
`
`structure so that the subscriber may drill down through categories from a high level
`
`menu to successively lower levels. “Through the Gateway, the VOD Application
`
`leaves the Menu mode and enters the Drill Down Navigation mode for
`
`successively displays of hierarchically-ordered video content which allow the
`
`viewer to navigate to progressively more focused content.” Id., 6:34-38. As an
`
`example, Figure 1B shows a drill down navigation hierarchy for “Auto.”
`
`
`
`EX1001, FIG. 1B.
`
`“By carrying over the hierarchical address metadata into EPG navigation,
`
`the invention allows the content to be automatically listed in the EPG under the
`
`
`
`- 6 -
`
`

`

`IPR2020-01267
`U.S. Patent No. 10,028,026
`common addressing scheme to enable viewers to find any program of interest,”
`
`thereby relieving the service provider of significant overhead burden. Id., 17:47-
`
`51.
`
`3.
`Templatized VOD Displays
`Templatized EPG Displays standardize the display of information uploaded
`
`to the WBCMS, such as titles and cover art, at different levels of the Drill Down
`
`hierarchy, as shown for example in Figure 1C:
`
`
`
`EX1001, FIG. 1C.
`
`The ’026 patent describes the embodiment illustrated 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
`
`
`
`- 7 -
`
`

`

`IPR2020-01267
`U.S. Patent No. 10,028,026
`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.
`Id., 7:18-30.
`
`In that embodiment, “the 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.” Id., 6:9-20. A
`
`template need only be created once, but can be used many times by different
`
`content providers, leading to a significant reduction of burden and overhead for the
`
`service provider.
`
`III. THE BOARD SHOULD EXERCISE ITS DISCRETION TO DENY
`THE PETITION UNDER 35 U.S.C. §§ 314(A) AND 325(D).
`Institution of inter partes review is discretionary. 35 U.S.C. §§ 314(a),
`
`325(d); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he
`
`agency’s decision to deny a petition is a matter committed to the Patent Office’s
`
`discretion.”); Oil States Energy Servs. LLC v. Green’s Energy Grp., LLC, 138 S.
`
`Ct. 1365, 1371 (2018) (“The Decision whether to institute inter partes review is
`
`committed to the Director’s discretion.”); SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348,
`
`1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question
`
`whether to institute review ….”).
`
`
`
`- 8 -
`
`

`

`IPR2020-01267
`U.S. Patent No. 10,028,026
`The Board should exercise its discretion under §§ 314(a) and 325(d) to deny
`
`institution of DISH’s Petition for two independent but compounding reasons:
`
`First, the Board should deny institution under § 314(a) in view of its
`
`precedential decisions in NHK1 and Fintiv.2 The ’026 patent is involved in parallel
`
`district court litigation before Judge Alan Albright in the U.S. District Court for the
`
`Western District of Texas, Waco Division (the “parallel litigation”). The parallel
`
`litigation involves the same parties, claim construction standard, issues, arguments,
`
`and evidence that DISH presented in its Petition. The parties and the district court
`
`have already expended, and will continue to expend, substantial time and resources
`
`before an institution decision is due (i.e., January 25, 2021). And trial is set to
`
`begin November 15, 2021, between two and three months before a final written
`
`decision (“FWD”) would be due (i.e., January 25, 2022). Judge Albright recently
`
`confirmed he intends to hold trial on November 15, 2021, without delay. Notably,
`
`Judge Albright recently conducted an in-person, patent jury trial from October 5-9,
`
`
`1 NHK Spring Co., Ltd., v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8
`
`(P.T.A.B. Sept. 12, 2018) (precedential).
`
`2 Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20,
`
`2020) (precedential).
`
`
`
`- 9 -
`
`

`

`IPR2020-01267
`U.S. Patent No. 10,028,026
`2020, in MV3 Partners LLC v. Roku Inc., No. 6:18-cv-00308 (W.D. Tex.),
`
`demonstrating that patent jury trials are proceeding in the Waco Division.
`
`Further, the parallel litigation also involves three additional patents, each of
`
`which DISH has filed two IPR petitions against. The projected deadlines for FWDs
`
`in those IPRs are February 7, 2022, and February 18, 2022, which are even later
`
`than the projected deadline in this IPR. Instituting this IPR (as well as the IPRs
`
`challenging the other patents involved in the parallel litigation) would thus not be
`
`an efficient use of the Board’s resources; rather, it would be duplicative of the
`
`parallel litigation and would risk the two tribunals reaching inconsistent results.
`
`Second, the Board should deny institution under § 325(d) in view of its
`
`precedential decisions in Becton, Dickinson3 and Advanced Bionics.4 The same or
`
`substantially the same art and arguments that DISH advances in the Petition were
`
`previously presented to and considered by the Office during examination of the
`
`
`3 Becton, Dickinson and Company v. B. Braun Melsungen AG, IPR2017-
`
`01586, Paper 8 (P.T.A.B. Dec. 15, 2017) (§ III.C.5 designated precedential on
`
`August 2, 2019).
`
`4 Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH,
`
`IPR2019-01469, Paper 6 (P.T.A.B. Feb. 13, 2020) (designated precedential on
`
`March 24, 2020).
`
`
`
`- 10 -
`
`

`

`IPR2020-01267
`U.S. Patent No. 10,028,026
`’026 patent. DISH’s primary reference, Gonder, was analyzed by the Office during
`
`prosecution. Specifically, BBiTV disclosed Gonder in an information disclosure
`
`statement (IDS), causing the Examiner to analyze Gonder and to expressly identify
`
`Gonder as “pertinent to applicant’s disclosure.” EX1018, 1062-63. DISH’s
`
`secondary references, Son and Kelts, are substantially the same as and cumulative
`
`with the art (Novak) that was applied by the Office. Further, DISH applies Son and
`
`Kelts in the Petition in the same or substantially the same manner as the Examiner
`
`applied Novak during examination. But despite presenting the same or
`
`substantially the same art and arguments, DISH fails to analyze the Becton,
`
`Dickinson factors and fails to identify any material error that the Office allegedly
`
`committed when previously evaluating the art and arguments. These facts warrant
`
`denial of institution under § 325(d), and DISH’s silence dooms the Petition.
`
`NHK demonstrates that the discretionary denial factors under §§ 314(a) and
`
`325(d) should be considered holistically and may have a compounding effect. See
`
`NHK, Paper 8 at 20 (“… simply because we exercise our discretion to deny the
`
`Petition under § 325(d) does not mean that we cannot consider and weigh
`
`additional factors that favor denying institution under § 314(a).”) The Board in
`
`NHK first analyzed the Becton, Dickinson factors and determined it was
`
`appropriate to deny the petition under § 325(d). Id. at 11-18. The Board next
`
`explained that “the advanced state of the district court proceeding is an additional
`
`
`
`- 11 -
`
`

`

`IPR2020-01267
`U.S. Patent No. 10,028,026
`factor that weigh[ed] in favor of denying the Petition under § 314(a),” and
`
`determined that it was also appropriate to deny under § 314(a). Id. at 20.
`
`Here, considered holistically, the relevant discretionary denial factors under
`
`both §§ 314(a) and 325(d) strongly favor exercising discretion because judicial
`
`efficiency and consistency between tribunals (Board and district court) and within
`
`the Office (Board and examining corps) are best served by denying institution.
`
`A. Applying the NHK-Fintiv framework under Section 314(a), each
`Fintiv factor weighs in favor of denying institution; collectively,
`the factors weigh heavily in favor of denial.
`Section 314(a) grants the Director discretion to deny instituting a petition,
`
`including in light of “events in other proceedings related to the same patent, either
`
`at the Office, in district courts, or the ITC.” November 2019 Consolidated Trial
`
`Practice Guide (“TPG”), 58. The Board applies the NHK-Fintiv framework when
`
`determining whether to exercise this discretion in light of parallel district court
`
`litigation. Under this framework, the Board weighs the following six non-
`
`exhaustive factors enumerated in the precedential Fintiv order:
`
`1) whether the court granted a stay or evidence exists that one may be
`
`granted if a proceeding is instituted;
`
`2) proximity of the court’s trial date to the Board’s projected statutory
`
`deadline for a final written decision;
`
`3) investment in the parallel proceeding by the court and the parties;
`
`
`
`- 12 -
`
`

`

`IPR2020-01267
`U.S. Patent No. 10,028,026
`4) 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.
`
`Fintiv, Paper 11 at 6.
`
`“These factors relate to whether efficiency, fairness, and the merits support
`
`the exercise of authority to deny institution in view of an earlier trial date in the
`
`parallel proceeding.” Id. Individually, each factor weighs in favor of denying
`
`DISH’s Petition. Collectively, the factors weigh heavily in favor of exercising
`
`discretion because “efficiency and integrity of the system are best served by
`
`denying” institution. Id. Notably, DISH knew or should have known of the Fintiv
`
`factors but did not address these factors directly in its Petition.
`
`Before analyzing each factor, BBiTV provides a brief background of
`
`relevant litigation. The parallel litigation between BBiTV and DISH involves the
`
`’026 patent as well as U.S. Patent Nos. 9,648,388; 9,998,791; and 10,506,269.
`
`EX2001. DISH has filed two IPRs against each patent. Pet., 4-5; see IPR2020-
`
`01268 (second petition against the ’026 patent); IPR2020-01280, -01281 (’791
`
`
`
`- 13 -
`
`

`

`IPR2020-01267
`U.S. Patent No. 10,028,026
`patent); IPR2020-01332, -01333 (’269 patent); IPR2020-01359, -01360 (’388
`
`patent).
`
`The ’026, ’388, ’791, and ’269 patents are also involved in litigation
`
`between BBiTV and AT&T (No. 6:19-cv-712-ADA) and between BBiTV and
`
`DirectTV (No. 6:19-cv-714-ADA), both before Judge Albright in the Western
`
`District of Texas. Paper 6, 1; see also EX1015, 1. The AT&T and DirectTV cases
`
`were consolidated under the AT&T case number, and thus will be called the
`
`“AT&T litigation.” EX2009. Neither AT&T nor DirectTV have filed IPRs against
`
`the patents-in-suit. And the AT&T litigation is proceeding with the same schedule
`
`as the parallel litigation between BBiTV and DISH. EX1015.
`
`1.
`
`Factor 1 favors denial because the parallel litigation has not
`been stayed and the evidence indicates that Judge Albright
`will not grant a stay.
`Factor 1 favors denial. The parallel litigation has not been stayed and DISH
`
`presents no evidence that a stay may be granted. Rather, the evidence indicates that
`
`Judge Albright would not grant a stay even if the Board were to institute review.
`
`During an August 31, 2020 teleconference between the parties and the
`
`Court, Judge Albright stated his views that this IPR is “independent of” and does
`
`not affect the parallel litigation. EX2002, 13:13-22. He further indicated, “I feel
`
`like everyone oughta get a jury trial in front of an Article III judge.” Id.; see also
`
`EX2003, 1. Because a stay may deprive BBiTV of a jury trial, Judge Albright’s
`
`
`
`- 14 -
`
`

`

`IPR2020-01267
`U.S. Patent No. 10,028,026
`statements are strong evidence that he would not grant a stay even if the Board
`
`institutes review.
`
`Judge Albright’s recent orders denying motions for stay in Continental v.
`
`Sand Revolution and Kerr v. Vulcan provide further evidence confirming that
`
`Judge Albright would not stay the parallel litigation even if the Board were to
`
`institute review. EX2004; EX2005. The Court’s July 22, 2020 Order in
`
`Continental v. Sand Revolution followed on the heels of the Board reversing course
`
`and instituting review in Sand Revolution II, LLC v. Continental Intermodal
`
`Group-Trucking LLC, IPR2019-01393, Paper 24 (P.T.A.B. June 16, 2020)
`
`(informative). Despite the instituted IPR, the Court denied Defendants’ motion to
`
`stay because, among other reasons, it “strongly believes in the Seventh
`
`Amendment” and the “Plaintiff opposes the stay.” EX2004.
`
`The Court’s August 2, 2020 Order in Kerr v. Vulcan cited similar reasons for
`
`denying a motion to stay filed before the Board issued institution decisions.
`
`EX2005. And despite the Board proceedings being pre-institution, the Kerr Order
`
`is notable because the Court stated a reason for denial was that “[e]ven if the
`
`PTAB institutes, the Court anticipates that the trial date will occur before” the
`
`Board would issue final written decisions. Id. BBiTV would oppose any motion by
`
`DISH to stay the parallel litigation pending IPR.
`
`
`
`- 15 -
`
`

`

`IPR2020-01267
`U.S. Patent No. 10,028,026
`Finally, the AT&T defendants have not filed IPRs against the patents-in-suit,
`
`and there is no evidence that Judge Albright would stay the AT&T litigation. See
`
`Mylan Labs. Ltd v. Janssen Pharma. NV, IPR2020-00440, Paper 17 at 13-14
`
`(P.T.A.B. Sept. 16, 2020) (considering two litigations, one between patent owner
`
`Janssen and IPR petitioner Mylan, the other between Janssen and third party Teva,
`
`and finding that stay was unlikely in either litigation). So even if Judge Albright
`
`did an about-face and stayed the parallel litigation, the AT&T litigation would
`
`proceed, continuing to risk duplication and inconsistency between the tribunals.
`
`Because stay has not been granted in the parallel litigation and the evidence
`
`strongly indicates that no stay will be granted even if the Board instituted review,
`
`Fintiv factor 1 weighs in favor of denial.
`
`2.
`
`Factor 2 strongly favors denial because trial will begin
`between two and three months before the FWD deadline,
`and Judge Albright confirmed, “We’re going to go to trial.”
`When “the court’s trial date is earlier than the projected statutory deadline,
`
`the Board generally has weighed this fact in favor of exercising authority to deny
`
`institution under NHK.” Fintiv, Paper 11 at 9. Numerous Board decisions,
`
`including the Board’s informative Decision Denying Institution in Fintiv
`
`(following the precedential Order in Fintiv), have held that trial between two and
`
`three months before the FWD deadline weighs in favor of denying institution.
`
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 (P.T.A.B. May 13, 2020)
`
`
`
`- 16 -
`
`

`

`IPR2020-01267
`U.S. Patent No. 10,028,026
`(informative) (two months); E-One, Inc. v. Oshkosh Corp., IPR2019-00161, Paper
`
`16 (P.T.A.B. May 15, 2019) (one month); E-One, Inc. v. Oshkosh Corp.,
`
`IPR2019-00162, Paper 16 (P.T.A.B. June 5, 2019) (one month); Netflix, Inc. et al.
`
`v. Uniloc 2017 LLC, IPR2020-00008, Paper 13 (P.T.A.B. Apr. 13, 202