`
`
`
`
`
`
`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 RESPONSE TO
`PETITIONER’S RANKING OF MULTIPLE PETITIONS
`
`
`
`
`
`
`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.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`DISH HAS NOT PROVIDED SUFFICIENT JUSTIFICATION TO
`INSTITUTE MULTIPLE PROCEEDINGS. .................................................. 1
`A.
`The alleged length of the claims does not warrant multiple
`petitions. ................................................................................................ 2
`No priority date issue has been raised. .................................................. 3
`Hecht does not materially differ from Gonder, and DISH does
`not explain why general differences between grounds justifies
`multiple petitions. .................................................................................. 4
`III. CONCLUSION ................................................................................................ 5
`
`B.
`C.
`
`
`
`
`
`
`- i -
`
`
`
`IPR2020-01267
`U.S. Patent No. 10,028,026
`
`I.
`
`INTRODUCTION
`The November 2019 Consolidated Trial Practice Guide (“TPG”) provides
`
`the Board’s policy and a framework for analyzing concurrently filed petitions. The
`
`TPG explains that, “[b]ased on the Board’s experience, one petition should be
`
`sufficient to challenge the claims of a patent in most situations.” TPG, 59.
`
`Petitioners filing concurrent petitions must justify why multiple petitions are
`
`“necessary” and then “rank[] … the petitions in the order in which it wishes the
`
`Board to consider the merits.” TPG, 59-60. DISH fails to provide sufficient reasons
`
`why multiple petitions are necessary, and therefore, if the Board institutes inter
`
`partes review, it should not institute multiple proceedings against the ’026 patent.
`
`II. DISH HAS NOT PROVIDED SUFFICIENT JUSTIFICATION TO
`INSTITUTE MULTIPLE PROCEEDINGS.
`DISH argues that multiple petitions against the ’026 patent are needed
`
`because: (1) the length of the claims “make[s] it impossible to present both
`
`grounds within the word limit” (Paper 3, 1); (2) the Gonder reference relied on in
`
`DISH’s first petition could potentially be antedated (id., 3); and (3) each petition
`
`allegedly “presents a meritorious, unique obviousness ground with different system
`
`architectures and analytical frameworks” (id., 4). None of DISH’s arguments are
`
`sufficient to justify instituting multiple proceedings.
`
`
`
`- 1 -
`
`
`
`IPR2020-01267
`U.S. Patent No. 10,028,026
`A. The alleged length of the claims does not warrant multiple
`petitions.
`DISH first argues that “DISH must present its two grounds in two petitions
`
`because the length and complexity of the claims of the ’026 patent make it
`
`impossible to present both grounds within the word limit.” Paper 3, 1. But DISH
`
`fails to explain why it is “impossible” to present both grounds in a single petition,
`
`and DISH’s characterization of the claims as merely an “incremental
`
`improvement” on well-known systems (Pet., 1) undercuts its argument that two
`
`petitions are necessary because “of the way the claims were drafted” (Paper 3, 1).
`
`DISH challenges only 16 claims, the text of which accounts for only about
`
`two full columns of the ’026 patent. EX1001, 22:11-24:38. Neither the number nor
`
`the length of the claims is exceptional and warrants multiple petitions. The average
`
`number of claims challenged per patent in fiscal year 2019 was 16, the same
`
`number DISH challenges. Fitbit, Inc. v. Koninklijke Philips N.V., IPR2020-00772,
`
`Paper 14 at 26 n.8 (PTAB Oct. 19, 2020). And DISH’s assertion that the claims are
`
`long or complex does not justify multiple petitions. Volkswagen Group of America,
`
`Inc. v. Michigan Motor Technologies LLC, IPR2020-00161, Paper 8 at 10
`
`(P.T.A.B. June 2, 2020) (“Nor does Petitioner explain sufficiently how the claims
`
`are so ‘lengthy’ and ‘compounded by convoluted claim language’ so as to warrant
`
`institution of multiple petitions in accordance with the Consolidated Trial.”).
`
`
`
`- 2 -
`
`
`
`IPR2020-01267
`U.S. Patent No. 10,028,026
`
`B. No priority date issue has been raised.
`DISH further argues that the Gonder reference could potentially be
`
`antedated, and therefore multiple petitions are needed. Paper 3, 2-4. However,
`
`Petitioner’s argument does not amount to a “priority date” issue as contemplated
`
`by the TPG. According to DISH, Gonder was filed in May 2004. So even if the
`
`patent is entitled to the earliest priority claim (July 2004), Gonder would still
`
`qualify as prior art under § 102(e).
`
`DISH insinuates that BBiTV may seek to swear behind Gonder. Paper 3, 3.
`
`But the question of whether BBiTV can swear behind Gonder is a different issue
`
`than whether the ’026 patent has priority to 2004. And, regardless, any speculation
`
`that BBiTV may seek to swear behind Gonder does not justify multiple petitions.
`
`See Comcast Cable Commn’s, LLC v. Rovi Guides, Inc., IPR2019-01376, Paper 9
`
`at 10 (P.T.A.B. Feb. 10, 2020) (“The possibility that Rovi might seek to antedate
`
`references is insufficient as a rationale to justify the inefficiencies and costs
`
`associated with instituting a parallel inter partes review.”); see also Apple Inc. v.
`
`Seven Networks, LLC, IPR2020-00281, Paper 10 at 8 (P.T.A.B. Aug. 14, 2020)
`
`(denying institution of multiple proceedings in part because “no dispute about
`
`priority dates has been raised” and petitioner’s concern of antedating a reference
`
`“is based on speculation and thus insufficient to make a second Petition
`
`necessary”).
`
`
`
`- 3 -
`
`
`
`IPR2020-01267
`U.S. Patent No. 10,028,026
`C. Hecht does not materially differ from Gonder, and DISH does not
`explain why general differences between grounds justifies
`multiple petitions.
`DISH finally argues that “[b]oth the Gonder Petition and Hecht Petition
`
`should be instituted because each petition presents a meritorious, unique
`
`obviousness ground with different system architectures and analytical
`
`frameworks.” Paper 3, 4. But DISH does not provide any explanation of how
`
`Hecht is materially different from or stronger than Gonder with respect to the
`
`challenged claims; rather, DISH admits that the Gonder-based ground is
`
`“substantively stronger.” Paper 3, 3. Moreover, as explained in the POPRs, the
`
`primary references are cumulative, and therefore institution of two petitions would
`
`be duplicative.
`
`DISH’s general allegation that the petition grounds are “different” is simply
`
`insufficient to justify institution of multiple petitions. It is well established that
`
`merely stating that the art cited in two petitions is “different” or an argument is
`
`being made under a “different” statutory basis is not sufficient to justify multiple
`
`petitions. See, e.g., Pfenex Inc. v. Glaxosmithkline Biologicals SA, IPR2019-01027,
`
`Paper 12 at 13-14 (P.T.A.B. Nov. 13, 2019) (“[T]he mere fact that Petitioner may
`
`have had additional art to assert, including a different statutory basis for asserting
`
`that art, does not, on these facts, justify the additional burden of a second petition
`
`directed to the same claims.”); Palette Life Sciences, Inc. v. Incept LLC, IPR2020-
`
`
`
`- 4 -
`
`
`
`IPR2020-01267
`U.S. Patent No. 10,028,026
`00003, Paper 8 at 8 (P.T.A.B. Apr. 17, 2020) (“Simply saying that the Petitions
`
`present alternative arguments directed to the same claims is not a sufficiently
`
`meaningful explanation to establish that the differences between the Petitions are
`
`material and justify exercising our discretion to institute additional petitions. The
`
`November 2019 TPG nowhere indicates that mere alternative arguments that are
`
`different from each other constitute sufficient justification for filing multiple
`
`petitions.”).
`
`III. CONCLUSION
`DISH has failed to satisfy its burden of explaining why the Board should
`
`make an exception to its guidance that “one petition should be sufficient to
`
`challenge the claims of a patent in most situations.” TPG, 59. And instituting both
`
`IPRs would place significant burden on BBiTV, who has already had to file two
`
`sets of preliminary papers to refute DISH’s arguments that are redundant with (i)
`
`arguments DISH is currently advancing in parallel district court litigation and (ii)
`
`arguments that the Patent Office already considered during prosecution. DISH’s
`
`approach is contrary to the goal of making the patent system more efficient, and
`
`thus, if the Board institutes inter partes review, it should exercise its discretion to
`
`deny institution of multiple proceedings against the ’026 patent. See Fitbit,
`
`IPR2020-00772, Paper 14 at 27.
`
`
`
`
`
`- 5 -
`
`
`
`
`
`
`
`
`
`
`
`
`
`Date: October 23, 2020
`
`1100 New York Ave, NW
`Washington, DC 20005
`(202) 772-8756
`
`IPR2020-01267
`U.S. Patent No. 10,028,026
`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX, P.L.L.C.
`
`/Michael D. Specht/
`
`
`Michael D. Specht
`Registration No. 54,463
`Counsel for Patent Owner
`
`
`
`
`
`
`
`- 6 -
`
`
`
`IPR2020-01267
`U.S. Patent No. 10,028,026
`CERTIFICATION OF SERVICE
`The undersigned hereby certifies that the foregoing PATENT OWNER’S
`
`RESPONSE TO PETITIONER’S RANKING OF MULTIPLE PETITIONS
`
`was served electronically via e-mail on October 23, 2020, in its entirety on the
`
`following counsel for Petitioner:
`
` Alyssa Caridis (Lead Counsel)
` K. Patrick Herman (Back-up Counsel)
`ORRICK, HERRINGTON, & SUTCLIFFE, LLP
`A8CPTABDocket@orrick.com
`P52PTABDocket@orrick.com
`
`
`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX, P.L.L.C.
`
`
`/Michael D. Specht/
`
`Michael D. Specht
`Registration No. 54,463
`Counsel for Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`
`Date: October 23, 2020
`
`1100 New York Ave, NW
`Washington, DC 20005
`(202) 772-8756
`
`15734618.2
`
`
`
`
`
`