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`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 IPR2020-01268
`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
`
`
`
`
`
`

`

`Case IPR2020-01268
`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 ................................. 5
`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). ...................... 9
`A. Applying the NHK-Fintiv framework under § 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.
`
`
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`- i -
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`

`

`B.
`
`b)
`
`c)
`
`Case IPR2020-01268
`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 Becton, Dickinson-Advanced Bionics framework
`under § 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)
`Hecht is cumulative with and substantively weaker
`than Gonder, which was presented to the Office
`during prosecution of the ’026 patent. ............................33
`DISH admits that CableLabs was previously
`presented to the Office. ...................................................35
`Scheffler, relied on by DISH for the same claim
`features as CableLabs, is cumulative of CableLabs. ......35
`The disclosure of Son relied on by DISH is
`substantially the same as Novak and arguments
`already presented to the Office. ......................................37
`Part Two: DISH fails to identify material error in the
`Office’s previous evaluation of the art and arguments. ............39
`IV. LEVEL OF A PERSON HAVING ORDINARY SKILL IN THE ART ......42
`V.
`SUMMARIES OF THE ASSERTED REFERENCES .................................42
`A. Hecht....................................................................................................42
`B.
`Son .......................................................................................................43
`C.
`Scheffler ..............................................................................................45
`D.
`CableLabs ............................................................................................46
`
`d)
`
`2.
`
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`

`Case IPR2020-01268
`U.S. Patent No. 10,028,026
`VI. DISH FAILS TO MEET ITS BURDEN TO IDENTIFY WITH
`PARTICULARITY THE REFERENCES RELIED UPON FOR EACH
`GROUND IN THE PETITION. ....................................................................47
`VII. DISH’S GROUNDS REQUIRE COMBINING EMBODIMENTS IN
`HECHT BUT FAIL TO IDENTIFY SUFFICIENT RATIONALE FOR
`DOING SO, RENDERING THE COMBINATION DEFICIENT. ..............49
`VIII. THE COMBINATION OF HECHT, SON, SCHEFFLER, AND
`CABLELABS FAILS TO DISCLOSE EACH AND EVERY ELEMENT
`OF THE CLAIMS. ........................................................................................53
`A. Hecht’s nodes are not templates and therefore Hecht fails to
`disclose [1.b]. ......................................................................................54
`Hecht fails to tie any aspect of its disclosure to video-on-
`demand content or metadata used in an electronic program
`guide. ...................................................................................................60
`Hecht does not describe how metadata is used to generate the
`menus, nor can Son, Scheffler, and CableLabs fill in the gaps. .........64
`IX. CONCLUSION ..............................................................................................67
`
`
`B.
`
`C.
`
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`Case IPR2020-01268
`U.S. Patent No. 10,028,026
`PATENT OWNER’S EXHIBIT LIST
`
`
`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
`September 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.
`
`Exhibit No.
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`
`
`- iv -
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`

`

`Exhibit No.
`
`2013
`
`2014
`
`2015
`
`2016
`2017
`
`2018
`
`2019
`
`2020
`
`2021
`
`Case IPR2020-01268
`U.S. Patent No. 10,028,026
`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.
`U.S. Patent No. 8,434,118 B2, to Gonder et al., issued April 30,
`2013.
`
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`

`Case IPR2020-01268
`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.
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`Patent Owner Broadband iTV, Inc. (“BBiTV”) was an early leader in VOD
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`technologies, providing innovations including those claimed in the ’026 patent for
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`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
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`and circumstances here warrant denying institution under both Sections 314(a) and
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`325(d).
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`First, as to the merits, instead of specifying a coherent ground or
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`combination challenging the claims, DISH attempts to hedge its arguments,
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`repeatedly using “and/or” to refer to possible combinations of the Hecht, Son,
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`Scheffler, and CableLabs references. But in doing so, DISH fails to meet its burden
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`Case IPR2020-01268
`U.S. Patent No. 10,028,026
`under 37 C.F.R. § 42.104(b)(2) and 35 U.S.C. § 312 to present grounds of rejection
`
`with sufficient particularity. As such, the Petition should be denied.
`
`Second, DISH relies on a combination of embodiments from Hecht, but fails
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`to provide sufficient rationale as to why and how a person of ordinary skill in the
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`art (“POSA”) would combine these elements. Rather, DISH offers a general
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`statement that Hecht describes a single device and that device could generally be
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`expected to perform similar functionalities in connection with different
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`embodiments. This rationale fails for at least two reasons—it alleges a POSA
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`could instead of would have combined the embodiments and, in any case, is far too
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`general.
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`Third, the combination of Hecht, Son, Scheffler, and CableLabs fails to
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`disclose or suggest all of the limitations of claim 1, particularly as they relate to
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`fundamental aspects of the claimed invention involving video-on-demand and
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`metadata associated with the video to be used to generate electronic program
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`guides (“EPG”). Hecht barely discloses video-on-demand at all, Son does not
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`describe the type of metadata required by the ’026 claims, and Scheffler, which
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`refers to CableLabs, proposes handling metadata in a divergent way.
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`However, the Board need not reach the merits, but rather should deny the
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`petition using its discretionary denial authority under Section 325(d) and 314(a).
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`Under Section 314(a), the NHK-Fintiv discretionary denial factors weigh heavily in
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`Case IPR2020-01268
`U.S. Patent No. 10,028,026
`favor of denial. The ’026 patent is involved in parallel district court litigation that
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`involves the same parties, claim construction standard, issues, arguments, and
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`evidence that DISH presented in its Petition. Trial is scheduled to begin November
`
`15, 2021, between two and three months before the statutory deadline for issuing a
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`final written decision. This is a quintessential case for denying institution to avoid
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`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. Each of the
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`references relied on in the Petition was either presented in original prosecution or
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`is cumulative to art that was. And DISH does not allege that the Office erred in
`
`evaluating the relied upon art or its equivalent, which is necessary to avoid denial
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`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
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`On-Demand TV Program Content on TV Services Platform of a Digital TV
`
`Services Provider” EX1101, (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).
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`Case IPR2020-01268
`U.S. Patent No. 10,028,026
`The ’026 patent generally relates to “the provision of video content to
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`viewers through digital TV infrastructure, and more particularly, to converting,
`
`navigating, and displaying video content uploaded from the Internet on a digital
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`TV video-on-demand platform.” Id., 1:42-46.
`
`The ’026 patent describes the background of prior art digital TV systems and
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`services, including video-on-demand (VOD), which in 2004 was still relatively
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`new. Id., 2:13-19. The ’026 patent recognized that “VOD content offerings are
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`expected to increase dramatically from a few ‘channels’ with a few score or
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`hundred ‘titles’ listed on each today to scores or hundreds of channels with
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`thousands if not millions of titles on each in the foreseeable future.” Id., 2:66-3:3.
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`“The VOD platform thus offers a gateway for greatly expanding TV viewing from
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`a relatively small number of studio-produced program channels to a large number
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`of new commercial publishers ….” Id., 3:3-8.
`
`Facing this explosion in VOD content and recognizing the need for
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`improved VOD platform systems, Milton Diaz Perez, the sole inventor of the ’026
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`patent devised novel and non-obvious end-to-end solutions that improved the
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`ingest, processing, listing, and access of VOD content. These solutions introduced
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`the concepts of (1) a web-based content management system (“WBCMS”); (2) drill
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`down navigation of a VOD menu by category information; and (3) templatized
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`VOD displays.
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`Case IPR2020-01268
`U.S. Patent No. 10,028,026
`1. Web-Based Content Management System
`The WBCMS bridged the gap between the Internet, where uploaded content
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`could be of any digital media type and come from any web-based source, and a
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`VOD system on a digital TV service provider network. EX1101, 16:35-36, 3:16-
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`4:5. The WBCMS enabled content producers to upload content for viewing by
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`subscribers on a VOD system and specify metadata for a hierarchical location for
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`the content in an electronic program guide (“EPG”). Id. Figure 2A shows an
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`embodiment of a Classified Ad application for a VOD content delivery system that
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`includes WBCMS 40:
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`EX1101, FIG. 2A.
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`
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`“With this method, vast numbers of content publishers anywhere on the Internet
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`can upload their programs to digital television service providers for viewing on the
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`home TV, and home TV viewers can readily find something of interest for viewing
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`Case IPR2020-01268
`U.S. Patent No. 10,028,026
`among the vast numbers of new programs by navigating through the hierarchical
`
`addressing scheme of the provider’s EPG.” Id., 3:66-4:5.
`
`Drill Down Navigation
`2.
`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
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`enable home TV viewers to find something of interest for viewing among the vast
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`numbers of new programs.” EX1101, 3:8-12. To aid the subscriber in locating
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`programs of interest, the EPG is organized using a hierarchical structure so that the
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`subscriber may drill down through categories from a high level menu to
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`successively lower levels. “Through the Gateway, the VOD Application leaves the
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`Menu mode and enters the Drill Down Navigation mode for successively displays
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`of hierarchically-ordered video content which allow the viewer to navigate to
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`progressively more focused content.” Id., 6:34-40. As an example, Figure 1B
`
`shows a drill down navigation hierarchy for “Auto”. A user may select a Make
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`(e.g., Toyota) and a Model (e.g., Corolla) to drill down into video-on-demand
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`content relating to Toyota Corollas.
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`Case IPR2020-01268
`U.S. Patent No. 10,028,026
`
`EX1101, FIG. 1B.
`
`
`
`“By carrying over the hierarchical address metadata into EPG navigation,
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`the invention allows the content to be automatically listed in the EPG under the
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`common addressing scheme to enable viewers to find any program of interest,”
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`thereby relieving the service provider of significant overhead burden. EX1101,
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`17:47-51.
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`Templatized VOD Displays
`3.
`Templatized EPG Displays standardize the display of information uploaded
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`to the WBCMS, such as titles and cover art, at different levels of the Drill Down
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`hierarchy, as shown for example in Figure 1C:
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`Case IPR2020-01268
`U.S. Patent No. 10,028,026
`
`
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`EX1101, FIG. 1C.
`
`The ’026 patent describes the embodiment described 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. EX1101, 7:18-30.
`In that embodiment, “the templates are of different types ordered in a
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`hierarchy, and display of content in a template of a higher order includes links the
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`viewer can select to content of a lower order in the hierarchy.” Id., 6:9-20. A
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`template need only be created once, but can be used many times by different
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`Case IPR2020-01268
`U.S. Patent No. 10,028,026
`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 ….”).
`
`The Board should exercise its discretion under §§ 314(a) and 325(d) to deny
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`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
`
`
`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).
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`Case IPR2020-01268
`U.S. Patent No. 10,028,026
`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
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`begin November 15, 2021, more than two months before a final written decision
`
`would be due (i.e., January 25, 2022). Judge Albright recently confirmed he
`
`intends to hold trial on November 15, 2021, without delay. Instituting IPR would
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`thus not be an efficient use of the Board’s resources; rather, it would be duplicative
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`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
`
`3 Becton, Dickinson and Co. 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
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`March 24, 2020).
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`Case IPR2020-01268
`U.S. Patent No. 10,028,026
`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
`
`’026 patent. DISH’s primary reference, Hecht, is cumulative with Gonder, DISH’s
`
`primary reference in its parallel petition in IPR2020-01267, which was analyzed by
`
`the Office during prosecution. Specifically, BBiTV disclosed Gonder in an
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`information disclosure statement (IDS), causing the Examiner to analyze Gonder
`
`and to identify Gonder as “pertinent to applicant’s disclosure.” EX1118, 1062-63.
`
`DISH’s secondary reference CableLabs was also presented to the Office during
`
`prosecution. Id., 578, 844. DISH’s remaining references, Son and Scheffler, are
`
`substantially the same as and cumulative with the art (Novak and CableLabs) that
`
`was presented to and applied by the Office. 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).”) Indeed, the Board
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`Case IPR2020-01268
`U.S. Patent No. 10,028,026
`in NHK first analyzed the Becton, Dickinson factors and determined it was
`
`appropriate 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
`
`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.
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`A. Applying the NHK-Fintiv framework under § 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,
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`including in light of “events in other proceedings related to the same patent, either
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`at the Office, in district courts, or the ITC.” November 2019 Consolidated Trial
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`Practice Guide (“TPG”), 58. The Board applies the NHK-Fintiv framework when
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`determining whether to exercise this discretion in light of parallel district court
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`litigation. Under this framework, the Board weighs the following six non-
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`exhaustive factors enumerated in the precedential Fintiv order:
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`1) whether the court granted a stay or evidence exists that one may be
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`granted if a proceeding is instituted;
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`2) proximity of the court’s trial date to the Board’s projected statutory
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`deadline for a final written decision;
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`3) investment in the parallel proceeding by the court and the parties;
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`4) overlap between issues raised in the petition and in the parallel
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`proceeding;
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`5) whether the petitioner and the defendant in the parallel proceeding are
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`the same party; and
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`6) other circumstances that impact the Board’s exercise of discretion,
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`including the merits.
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`Fintiv, Paper 11 at 6.
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`“These factors relate to whether efficiency, fairness, and the merits support
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`the exercise of authority to deny institution in view of an earlier trial date in the
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`parallel proceeding.” Id. Individually, each factor weighs in favor of denying
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`DISH’s Petition. Collectively, the factors weigh heavily in favor of exercising
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`discretion because “efficiency and integrity of the system are best served by
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`denying” institution. Id. Notably, DISH knew or should have known of the Fintiv
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`factors but did not address these factors directly in its Petition.
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`Before analyzing each factor, BBiTV provides a brief background of
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`relevant litigation. The parallel litigation between BBiTV and DISH involves the
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`’026 patent as well as U.S. Patent Nos. 9,648,388; 9,998,791; and 10,506,269.
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`EX2001. DISH has filed two IPRs against each patent. Pet., 4-5; see IPR2020-
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`01267 (second petition against the ’026 patent); IPR2020-01280, -01281 (’791
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`patent); IPR2020-01332, -01333 (’269 patent); IPR2020-01359, -01360 (’388
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`patent).
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`The ’026, ’388, ’791, and ’269 patents are also involved in litigation
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`between BBiTV and AT&T (No. 6:19-cv-712-ADA) and between BBiTV and
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`DirectTV (No. 6:19-cv-714-ADA), both before Judge Albright in the Western
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`District of Texas. Paper 6, 1; see also EX1015, 1. The AT&T and DirectTV cases
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`were consolidated under the AT&T case number, and thus will be called the
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`“AT&T litigation.” EX2009. Neither AT&T nor DirectTV have filed IPRs against
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`the patents-in-suit. And the AT&T litigation is proceeding with the same schedule
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`as the parallel litigation between BBiTV and DISH. EX1015.
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`1.
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`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
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`presents no evidence that a stay may be granted. Rather, the evidence indicates that
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`Judge Albright would not grant a stay even if the Board were to institute review.
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`During an August 31, 2020 teleconference between the parties and the Court,
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`Judge Albright stated his views that this IPR is “independent of” and does not
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`affect the parallel litigation. EX2002, 13:13-22. He further indicated, “I feel like
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`everyone oughta get a jury trial in front of an Article III judge.” Id.; see also
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`EX2003, 1. Because a stay may deprive BBiTV of a jury trial, Judge Albright’s
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`statements are strong evidence that he would not grant a stay even if the Board
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`institutes review.
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`Judge Albright’s recent orders denying motions for stay in Continental v.
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`Sand Revolution and Kerr v. Vulcan provide further evidence confirming that
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`Judge Albright would not stay the parallel litigation even if the Board were to
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`institute review. EX2004; EX2005. The Court’s July 22, 2020 Order in
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`Continental v. Sand Revolution followed on the heels of the Board reversing course
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`and instituting review in Sand Revolution II, LLC v. Continental Intermodal
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`Group-Trucking LLC, IPR2019-01393, Paper 24 (P.T.A.B. June 16, 2020)
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`(informative). Despite the instituted IPR, the Court denied Defendants’ motion to
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`stay because, among other reasons, it “strongly believes in the Seventh
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`Amendment” and the “Plaintiff opposes the stay.” EX2004.
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`The Court’s August 2, 2020 Order in Kerr v. Vulcan cited similar reasons for
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`denying a motion to stay filed before the Board issued institution decisions.
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`EX2005. And despite the Board proceedings being pre-institution, the Kerr Order
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`is notable because the Court stated a reason for denial was that “[e]ven if the
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`PTAB institutes, the Court anticipates that the trial date will occur before” the
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`Board would issue final written decisions. Id. BBiTV would oppose any motion by
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`DISH to stay the parallel litigation pending IPR.
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`Finally, the AT&T defendants have not filed IPRs against the patents-in-suit,
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`and there is no evidence that Judge Albright would stay the AT&T litigation. See
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`Mylan Labs. Ltd v. Janssen Pharma. NV, IPR2020-00440, Paper 17 at 13-14
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`(P.T.A.B. Sept. 16, 2020) (considering two litigations, one between patent owner
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`Janssen and IPR petitioner Mylan, the other between Janssen and third party Teva,
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`and finding that stay was unlikely in either litigation). So even if Judge Albright
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`did an about-face and stayed the parallel litigation, the AT&T litigation would
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`proceed, continuing to risk duplication and inconsistency between the tribunals.
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`Because stay has not been granted in the parallel litigation and the evidence
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`strongly indicates that no stay will be granted even if the Board instituted review,
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`Fintiv factor 1 weighs in favor of denial.
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`2.
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`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,
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`the Board generally has weighed this fact in favor of exercising authority to deny
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`institution under NHK.” Fintiv, Paper 11 at 9. Numerous Board decisions,
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`including the Board’s informative Decision Denying Institution in Fintiv
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`(following the precedential Order in Fintiv), have held that trial between two and
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`three months before the FWD deadline weighs in favor of denying institution.
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`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 (P.T.A.B. May 13, 2020)
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`(informative) (two months); E-One, Inc. v. Oshkosh Corp., IPR2019-00161, Paper
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`16 (P.T.A.B. May 15, 2019) (one month); E-One, Inc. v. Oshkosh Corp.,
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`IPR2019-00162, Paper 16 (P.T.A.B. June 5, 2019) (one month); Netflix, Inc. et al.
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`v. Uniloc 2017 LLC, IPR2020-00008, Paper 13 (P.T.A.B. Apr. 13, 2020) (two
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`months); Next Caller Inc. v. TRUSTID, Inc., IPR2019-00961, Paper 10 (P.T.A.B.
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`Oct. 16, 2019) (three months); Next Caller Inc. v. TRUSTID, Inc., IPR2019-
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`00962, Paper 10 (P.T.A.B. Oct. 16, 2019) (three months); Next Caller Inc. v.
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`