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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`DISH NETWORK, L.L.C.,
`Petitioner
`
`v.
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`BROADBAND iTV, INC.,
`Patent Owner
`
`____________________
`
`IPR2020-01267 and IPR2020-01268 (Patent 10,028,026 B2)
`IPR2020-01280 and IPR2020-01281 (Patent 9,998,791 B2)
`IPR2020-01332 and IPR2020-01333 (Patent 10,506,269 B2)
`IPR2020-01359 and IPR2020-01360 (Patent 9,648,388 B2)
`____________________
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`
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-14
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`TABLE OF CONTENTS
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`I.
`DISH begins with a false premise: Fintiv factor 2 is not dispositive. ............. 1
`Apple is inapposite; Fintiv is the binding Board authority. ............................. 2
`II.
`III. DISH’s policy arguments are irrelevant and unavailing. ................................ 3
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`- i -
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`In Re: Apple Inc., 979 F.3d 1332 (Fed. Cir. 2020) (“Apple”) does not affect
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`the Board’s analysis of Fintiv factor 2. In its Dec. 3rd Reply (“Reply”), Petitioner,
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`DISH Network L.L.C. (“DISH”), argues that Apple and public policy require the
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`Board to consider a district’s average time to trial, as opposed to a scheduled trial
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`date, when evaluating Fintiv factor 2. But Apple addressed venue transfer in Fifth
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`Circuit district courts, not discretionary denial at the Board. Fintiv is binding Board
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`authority, and factor 2 favors denying institution when, as here, the district court
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`trial date is earlier than the Board’s FWD deadline. Even so, factor 2 is not disposi-
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`tive, as DISH asserts. Fintiv requires evaluating and weighing six factors—the
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`framework Patent Owner, Broadband iTV, Inc. (“BBiTV”), applied in its POPRs.
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`I.
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`DISH begins with a false premise: Fintiv factor 2 is not dispositive.
`DISH did not address the Fintiv factors in its Petitions. It now attempts to
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`roll the entire Fintiv analysis into factor 2, arguing that the Board “has effectively
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`treated it as a dominant and determinative factor.” Reply, 1. DISH cites no support
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`for this argument, which is untrue and mischaracterizes how panels have been ap-
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`plying Fintiv. Even a cursory review of post-Fintiv decisions shows that the Board,
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`as a whole, has been faithfully evaluating all six factors, taking the “holistic ap-
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`proach” that Fintiv requires. Simply put, “this one factor is not dispositive.” SK In-
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`novation Co., Ltd., v. LG Chem, Ltd., IPR2020-00981, Paper 13 at 11 (PTAB Nov.
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`30, 2020); see also Fitbit, Inc. v. Philips North Am. LLC, IPR2020-00828, Paper
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`- 1 -
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`13 at 21 (PTAB Nov. 3, 2020) (“no single factor is determinative”).
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`DISH is also incorrect that “the Board has [not] ever cited Apple v. Fintiv to
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`deny institution where trial in a parallel litigation was set to occur after the final
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`written decision.” Reply, 1. In Fitbit, the Board denied Fitbit’s petition despite the
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`Fitbit trial “likely [occurring] after a [FWD] would issue.” Fitbit, 8-11. Favoring
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`denial, the challenged patent was also asserted in another suit in a different district
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`against non-party Garmin, and the Garmin trial was set before the FWD. Id.
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`Here, the four challenged patents are also asserted against AT&T in WDTX,
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`and the AT&T trial is set to occur before the FWD deadline. See IPR2020-01332
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`POPR, 16, 18, 26. So even if the DISH case is transferred, as DISH speculates, the
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`Board should follow Fitbit and evaluate factor 2 based on the AT&T trial date.
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`Moreover, the Board has also denied IPRs despite uncertainty about the trial
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`date, e.g., Intel Corp. v. VLSI Tech. LLC, IPR2020-00141, Paper 16 at 9-11 (PTAB
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`June 4, 2020) (trial in WDTX), and where “a firm trial date in [WDTX]” was not
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`set, Intel Corp., v. VLSI Tech. LLC, IPR2020-00582, Paper 19 at 6-7 (PTAB Oct.
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`1, 2020). The Intel decisions further demonstrate that factor 2 is not dispositive.
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`II. Apple is inapposite; Fintiv is the binding Board authority.
`DISH’s reliance on Apple is misplaced. Apple addressed venue transfer in
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`Fifth Circuit district courts, not discretionary denial at the Board. 979 F.3d at 1338,
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`1344. Fintiv remains binding authority, and factor 2 favors denying institution
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`- 2 -
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`when, as here, the district court trial date is earlier than the FWD deadline.
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`The DISH trial is set for November 15, 2021, two to three months before the
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`FWD deadline in each IPR. The court stated that trial is “not going to be delayed,”
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`IPR2020-01332, EX2002, 9:3, and issued an order after Apple reconfirming the
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`trial date, IPR2020-01332, EX2024, indicating that Apple has not affected the trial
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`date. See Apple Inc., v. Pinn, Inc., IPR2020-00999, Paper 15 at 9 (PTAB Dec. 8,
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`2020) (“court repeatedly has reminded the parties that the … trial date is firm”).
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`III. DISH’s policy arguments are irrelevant and unavailing.
`DISH argues that “[c]onsidering average time to trial also is better policy”
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`and that patentees “should not be able to use aggressive (but unlikely) trial sched-
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`ules to” avoid IPR. Reply, 3. The Board has rejected policy arguments, explaining
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`that the Director has discretion under § 314(a) and has elected to exercise that dis-
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`cretion as outlined in the precedential NHK and Fintiv decisions. E.g., Apple Inc.,
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`v. Maxell, Ltd., IPR2020-00203, Paper 12 at 17 (PTAB July 6, 2020); see also
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`Supercell Oy v. GREE, Inc., IPR2020-00513, Paper 11 at 10 (PTAB June 24, 2020)
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`(rejecting petitioner’s argument about fast-moving districts). DISH’s policy argu-
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`ment is also unavailing because average time to trial does not account for the nu-
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`ances of each case. Fintiv requires a “fact-driven” analysis, Fitbit, 21, considering
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`the “facts and circumstances” of each case, SK Innovation, 17. The policy underly-
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`ing Fintiv is not best served by deviating from this case-specific approach.
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`- 3 -
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`Respectfully submitted,
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Michael D. Specht/
`
`Michael D. Specht (Reg. No. 54,463)
`Attorney for Patent Owner
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`
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`Date: December 10, 2020
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`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371-2600
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`- 4 -
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`CERTIFICATION OF SERVICE
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`The undersigned hereby certifies that on December 10, 2020, a true and cor-
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`rect copy of the foregoing PATENT OWNER’S SUR-REPLY TO PETI-
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`TIONER’S REPLY TO PATENT OWNER’S PRELIMINARY RESPONSE
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`was served electronically via e-mail on the following counsel for Petitioner:
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`Alyssa Caridis (Lead Counsel)
`K. Patrick Herman (Back-up Counsel)
`ORRICK, HERRINGTON, & SUTCLIFFE LLP
`A8CPTABDocket@orrick.com
`P52PTABDocket@orrick.com
`
`
`Respectfully submitted,
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`
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Michael D. Specht/
`
`Michael D. Specht (Reg. No. 54,463)
`Attorney for Patent Owner
`
`
`
`Date: December 10, 2020
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371-2600
`
`15950151_1.docx
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