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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________
`
`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 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
`
`
`
`
`
`
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`IPR2020-01268
`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. ................................................................................................ 1
`No priority date issue has been raised. .................................................. 2
`Hecht does not materially differ from Gonder, and DISH does
`not explain why general differences between grounds justifies
`multiple petitions. .................................................................................. 3
`III. CONCLUSION ................................................................................................ 5
`
`B.
`C.
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`- i -
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`IPR2020-01268
`U.S. Patent No. 10,028,026
`
`I.
`
`INTRODUCTION
`The November 2019 Consolidated Trial Practice Guide (“TPG”) provides
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`the Board’s policy and a framework for analyzing concurrently filed petitions. The
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`TPG explains that, “[b]ased on the Board’s experience, one petition should be
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`sufficient to challenge the claims of a patent in most situations.” TPG, 59.
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`Petitioners filing concurrent petitions must justify why multiple petitions are
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`“necessary” and then “rank[] … the petitions in the order in which it wishes the
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`Board to consider the merits.” TPG, 59-60. DISH fails to provide sufficient reasons
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`why multiple petitions are necessary, and therefore, if the Board institutes inter
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`partes review, it should not institute multiple proceedings against the ’026 patent.
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`II. DISH HAS NOT PROVIDED SUFFICIENT JUSTIFICATION TO
`INSTITUTE MULTIPLE PROCEEDINGS.
`DISH argues that multiple petitions against the ’026 patent are needed
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`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
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`DISH’s first petition could potentially be antedated (id., 3); and (3) each petition
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`allegedly “presents a meritorious, unique obviousness ground with different system
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`architectures and analytical frameworks” (id., 4). None of DISH’s arguments are
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`sufficient to justify instituting multiple proceedings.
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`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
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`- 1 -
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`IPR2020-01268
`U.S. Patent No. 10,028,026
`because the length and complexity of the claims of the ’026 patent make it
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`impossible to present both grounds within the word limit.” Paper 3, 1. But DISH
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`fails to explain why it is “impossible” to present both grounds in a single petition,
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`and DISH’s characterization of the claims as merely an “incremental
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`improvement” on well-known systems (Pet., 1) undercuts its argument that two
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`petitions are necessary because “of the way the claims were drafted” (Paper 3, 1).
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`DISH challenges only 16 claims, the text of which accounts for only about
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`two full columns of the ’026 patent. EX1001, 22:11-24:38. Neither the number nor
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`the length of the claims is exceptional and warrants multiple petitions. The average
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`number of claims challenged per patent in fiscal year 2019 was 16, the same
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`number DISH challenges. Fitbit, Inc. v. Koninklijke Philips N.V., IPR2020-00772,
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`Paper 14 at 26 n.8 (PTAB Oct. 19, 2020). And DISH’s assertion that the claims are
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`long or complex does not justify multiple petitions. Volkswagen Group of America,
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`Inc. v. Michigan Motor Technologies LLC, IPR2020-00161, Paper 8 at 10
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`(P.T.A.B. June 2, 2020) (“Nor does Petitioner explain sufficiently how the claims
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`are so ‘lengthy’ and ‘compounded by convoluted claim language’ so as to warrant
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`institution of multiple petitions in accordance with the Consolidated Trial.”).
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`B. No priority date issue has been raised.
`DISH further argues that the Gonder reference could potentially be
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`antedated, and therefore multiple petitions are needed. Paper 3, 2-4. However,
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`- 2 -
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`IPR2020-01268
`U.S. Patent No. 10,028,026
`Petitioner’s argument does not amount to a “priority date” issue as contemplated
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`by the TPG. According to DISH, Gonder was filed in May 2004. So even if the
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`patent is entitled to the earliest priority claim (July 2004), Gonder would still
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`qualify as prior art under § 102(e).
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`DISH insinuates that BBiTV may seek to swear behind Gonder. Paper 3, 3.
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`But the question of whether BBiTV can swear behind Gonder is a different issue
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`than whether the ’026 patent has priority to 2004. And, regardless, any speculation
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`that BBiTV may seek to swear behind Gonder does not justify multiple petitions.
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`See Comcast Cable Commn’s, LLC v. Rovi Guides, Inc., IPR2019-01376, Paper 9
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`at 10 (P.T.A.B. Feb. 10, 2020) (“The possibility that Rovi might seek to antedate
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`references is insufficient as a rationale to justify the inefficiencies and costs
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`associated with instituting a parallel inter partes review.”); see also Apple Inc. v.
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`Seven Networks, LLC, IPR2020-00281, Paper 10 at 8 (P.T.A.B. Aug. 14, 2020)
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`(denying institution of multiple proceedings in part because “no dispute about
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`priority dates has been raised” and petitioner’s concern of antedating a reference
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`“is based on speculation and thus insufficient to make a second Petition
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`necessary”).
`
`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
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`- 3 -
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`IPR2020-01268
`U.S. Patent No. 10,028,026
`should be instituted because each petition presents a meritorious, unique
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`obviousness ground with different system architectures and analytical
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`frameworks.” Paper 3, 4. But DISH does not provide any explanation of how
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`Hecht is materially different from or stronger than Gonder with respect to the
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`challenged claims; rather, DISH admits that the Gonder-based ground is
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`“substantively stronger.” Paper 3, 3. Moreover, as explained in the POPRs, the
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`primary references are cumulative, and therefore institution of two petitions would
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`be duplicative.
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`DISH’s general allegation that the petition grounds are “different” is simply
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`insufficient to justify institution of multiple petitions. It is well established that
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`merely stating that the art cited in two petitions is “different” or an argument is
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`being made under a “different” statutory basis is not sufficient to justify multiple
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`petitions. See, e.g., Pfenex Inc. v. Glaxosmithkline Biologicals SA, IPR2019-01027,
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`Paper 12 at 13-14 (P.T.A.B. Nov. 13, 2019) (“[T]he mere fact that Petitioner may
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`have had additional art to assert, including a different statutory basis for asserting
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`that art, does not, on these facts, justify the additional burden of a second petition
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`directed to the same claims.”); Palette Life Sciences, Inc. v. Incept LLC, IPR2020-
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`00003, Paper 8 at 8 (P.T.A.B. Apr. 17, 2020) (“Simply saying that the Petitions
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`present alternative arguments directed to the same claims is not a sufficiently
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`meaningful explanation to establish that the differences between the Petitions are
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`- 4 -
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`IPR2020-01268
`U.S. Patent No. 10,028,026
`material and justify exercising our discretion to institute additional petitions. The
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`November 2019 TPG nowhere indicates that mere alternative arguments that are
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`different from each other constitute sufficient justification for filing multiple
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`petitions.”).
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`III. CONCLUSION
`DISH has failed to satisfy its burden of explaining why the Board should
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`make an exception to its guidance that “one petition should be sufficient to
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`challenge the claims of a patent in most situations.” TPG, 59. And instituting both
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`IPRs would place significant burden on BBiTV, who has already had to file two
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`sets of preliminary papers to refute DISH’s arguments that are redundant with (i)
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`arguments DISH is currently advancing in parallel district court litigation and (ii)
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`arguments that the Patent Office already considered during prosecution. DISH’s
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`approach is contrary to the goal of making the patent system more efficient, and
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`thus, if the Board institutes inter partes review, it should exercise its discretion to
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`deny institution of multiple proceedings against the ’026 patent. See Fitbit,
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`IPR2020-00772, Paper 14 at 27.
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`Date: October 23, 2020
`
`1100 New York Ave, NW
`Washington, DC 20005
`(202) 772-8756
`
`IPR2020-01268
`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
`
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`- 6 -
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`IPR2020-01268
`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
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`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
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`
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`Date: October 23, 2020
`
`1100 New York Ave, NW
`Washington, DC 20005
`(202) 772-8756
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`15734694.1
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