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
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`v.
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`BROADBAND ITV, INC.,
`Patent Owner
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`
`Case No. IPR2020-01268
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`PETITIONER’S EXPLANATION OF MULTIPLE PETITIONS
`CHALLENGING U.S. PATENT 10,028,026 AND RANKING OF
`PETITIONS
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`DISH NETWORK L.L.C.,
`Petitioner
`
`v.
`
`BROADBAND ITV, INC.,
`Patent Owner
`
`
`Case No. IPR2020-01268
`
`
`PETITIONER’S EXPLANATION OF MULTIPLE PETITIONS
`CHALLENGING U.S. PATENT 10,028,026 AND RANKING OF
`PETITIONS
`
`
`
`
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`Pursuant to the July 2019 Trial Practice Guide Update, Petitioner DISH
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`Network L.L.C. (“DISH”) provides this paper explaining the need to file two parallel
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`petitions requesting inter partes review (“IPR”) of claims 1-16 of U.S. Patent No.
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`10,028,026. DISH is requesting IPR of the ’026 patent in Petition No. IPR2020-
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`01267 based on the references Gonder, Son, and Kelts (the “Gonder Petition”), and
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`Petition No. IPR2020-01268 based on the references Hecht, Son, Scheffler and
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`CableLabs (the “Hecht Petition”). The ’026 patent is owned by Broadband iTV, Inc.
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`(“Patent Owner”).
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`A. Two Petitions Are Necessary Based On The ’026 Patent’s Lengthy
`and Complex Claims.
`Although it is common practice to present IPR petitions with two grounds in
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`a single petition, DISH must present its two grounds in two petitions because the
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`length and complexity of the claims of the ’026 patent make it impossible to present
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`both grounds within the word limit. For example, Claim 1 of the ’026 patent is 500
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`words long, and is broken up into seven paragraphs. And Patent Owner is asserting
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`15 of the 16 claims challenged by the petitions.
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`DISH’s petitions are also long because they must present multiple references
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`as a result of the way the claims were drafted. Because VOD systems were well-
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`known in the prior art, most references, including those with the most detailed and
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`relevant disclosures, focus on advances in specific areas of an overall VOD system.
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`The challenged claims, in contrast, were drafted by concatenating elements from
`1
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`across an entire VOD system. For example Claim 1 of the ’026 patent contains
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`limitations directed to multiple parts of a video on demand system; including the
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`types of metadata sent from the providers to the cable company, the ingest of that
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`information, the use of that information to create an electronic program guide, the
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`structure and contents of the screens within that guide, the transmission of that guide
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`to end users, and how those users interact with that guide to find and request
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`programming. The petitions therefore require multiple references, each of which
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`must be discussed and analyzed along with the motivation to combine them.
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`Moreover, as explained below, the parties have a dispute about the priority date of
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`the ’026 patent, which required additional words to address. As a result of these
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`unique circumstances, both the Gonder Petition and Hecht Petition approach the
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`word limits even though each only presents a single obviousness ground.
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`B. A Second Ground Is Needed Due To Non-Substantive
`Vulnerabilities with DISH’s First Ground.
`DISH’s second ground is necessary because of non-substantive vulnerabilities
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`with the first ground. Although both petitions show a reasonable likelihood that at
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`least one claim of the ’026 patent is invalid, DISH ranks the petitions as follows:
`
`Grounds
`Rank Petition
`1
`IPR2020-01267 Obviousness over Gonder, Son and/or Kelts
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`2
`
`IPR2020-01268 Obviousness over Hecht, Son, Scheffler and/or CableLabs
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`2
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`
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`While substantively stronger, the Gonder ground has potential exposure to a non-
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`substantive basis for denial, discussed below. Although DISH believes neither basis
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`is meritorious, the ground presented in the Hecht Petition does not share this
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`exposure and is provided to ensure that the claims of the ’026 patent can be examined
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`on the merits and the state of the prior art.
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`The Gonder reference on which DISH’s first ground relies could be antedated,
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`as the parties dispute the priority and invention dates of the ’026 patent. The ’026
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`patent purports to claim priority to a patent filed in July 2004, but it is also descended
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`from another patent issued from a continuation-in-part application filed in March
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`2007. As explained in more detail in DISH’s petitions and in the accompanying
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`supporting declarations of Dr. Samuel Russ, DISH contends that the ’026 patent’s
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`claims rely on the new matter added in the continuation-in-part and are therefore
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`entitled only to the March 2007 priority date. Patent Owner, however, contends that
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`claims 1-9 of the ’026 patent are entitled to the July 2004 priority date and have an
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`invention date as early as October 2003.
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`Although DISH has a strong basis to dispute both the July 2004 priority date
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`and Patent Owner’s claims of an even earlier conception date, the Gonder patent has
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`a filing date of May 2004 and a publication date of December 2005. It could,
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`therefore, be antedated if Patent Owner prevails on both issues. While DISH would
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`have preferred to obtain discovery before filing two petitions, fact discovery in the
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`3
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`co-pending litigation has not begun. And the Board has made it clear through its
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`recent decisions that any delay would expose DISH’s petitions to risk of
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`discretionary denial. Because it is unlikely that the invention date issue will be
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`resolved at the institution stage, the Board should institute IPR on both the Gonder
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`Petition and Hecht Petition to ensure that the ’026 patent’s validity can be assessed
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`based on the substantive disclosures of prior-art references, regardless of the
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`determinations made concerning the priority and conception dates of the ’026 patent.
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`C. The Gonder Petition and Hecht Petition are Non-Cumulative.
`Both the Gonder Petition and Hecht Petition should be instituted because
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`each petition presents a meritorious, unique obviousness ground with different
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`system architectures and analytical frameworks. The Gonder petition relies
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`primarily on the Gonder patent, which teaches a carousel-based cable headend
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`system for distributing menus and video content to end-user terminal devices. The
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`Gonder patent has a strong disclosure of using metadata and images provided by
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`the content provider to populate the video-on-demand menus, as claimed in the
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`’026 patent. The Son reference, which teaches a server that can receive and
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`distribute web-based uploads of video content, is added to provide a straight-
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`forward modification to Gonder’s disclosed method of receiving video content
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`from content providers over the Internet (as the claims require). And this petition
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`uses Kelts to teach some of the navigation behaviors recited in the claims.
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`4
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`The Hecht Petition describes a very different system using the Hecht patent
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`as a primary reference. The Hecht patent is focused on an end-user device that
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`receives video content directly from a number of potential sources, including
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`Internet sources. While the Hecht petition also relies on Son for the web-based
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`upload of video content, Son serves a broader role for the Hecht ground—
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`essentially acting as the entire backend architecture of the combination. Hecht’s
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`discussion of the use of metadata is also different from Gonder, in that Hecht
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`teaches a broad and flexible node-based menu generated on the end-user device.
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`The Hecht Petition also differs in that it relies on Scheffler and CableLabs to teach
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`the provision of metadata by the content provider and the use of that metadata to
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`structure the EPG. Thus, the grounds in the petitions are based on different art and
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`different invalidity theories.
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`These different combined systems each independently demonstrate the
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`obviousness of the challenged claims, and are non-cumulative. Each should be
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`instituted to allow for the full, substantive review of the validity of the claims of
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`the ’026 patent.
`
`/Alyssa Caridis/
`Alyssa Caridis
`USPTO Reg. No. 57,545
`Orrick, Herrington & Sutcliffe LLP
`777 South Figueroa Street, Suite 3200
`Los Angeles, CA 90017-5855
`
` Attorneys for Petitioner
`5
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`CERTIFICATION OF SERVICE ON PATENT OWNER
`Pursuant to 37 C.F.R. §§ 42.6(e), 42.8(b)(4) and 42.105, the undersigned
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`certifies that on July 10, 2020, a complete and entire copy of PETITIONER’S
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`EXPLANATION OF MULTIPLE PETITIONS CHALLENGING U.S. PATENT
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`10,028,026 AND RANKING OF PETITIONS was served via Federal Express,
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`postage prepaid, on the Patent Owner by serving the correspondence address of
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`record for the ’026 Patent:
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`AMSTER, ROTHSTEIN & EBENSTEIN LLP
`90 Park Avenue
`New York, NY 10016
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`A courtesy copy was provided to Patent Owner’s litigation counsel in the
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`
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`action Broadband iTV, Inc. v. DISH Network, L.L.C., Case No. 6:19-cv-716 pending
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`between Petitioner and Patent Owner and involving the ’026 Patent:
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`
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`FEINBERG DAY KRAMER ALBERTI LIM
`TONKOVICH & BELLOLI LLP
`Robert F. Kramer (rkramer@feinday.com)
`M. Elizabeth Day (eday@feinday.com)
`David Alberti (dalberti@feinday.com)
`Sal Lim (slim@feinday.com)
`Marc Belloli (mbelloli@feinday.com)
`Lawrence G. McDonough (lmcdonough@feinday.com)
`Hong Lin (hlin@feinday.com)
`Jeremiah A. Armstrong (jarmstrong@feinday.com)
`577 Airport Blvd., Suite 250
`Burlingame, CA 94010
`Tel: 650-825-4300
`Fax: 650-460-8443
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`6
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`/Alyssa Caridis/
`
`Alyssa Caridis
`USPTO Reg. No. 57,545
`Orrick, Herrington & Sutcliffe LLP
`777 South Figueroa Street, Suite 3200
`Los Angeles, CA 90017-5855
`
`Attorneys for Petitioner
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`7
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