Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 11
`Date: November 27, 2020
`
`
`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.
`____________
`
`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)1
`____________
`
`
`
`Before JEFFREY S. SMITH, JUSTIN T. ARBES, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`1 This Order addresses an issue pertaining to all eight cases. Therefore, we
`exercise our discretion to issue a single Order to be filed in each case. Other
`than as expressly authorized herein, the parties are not authorized to use this
`style heading for any subsequent papers.
`
`

`

`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)
`
`
`A conference call in the above proceedings was held on November 25,
`
`2020, among respective counsel for Petitioner and Patent Owner, and
`
`Judges Smith, Arbes, and Galligan.2 The call was requested by Petitioner to
`
`seek authorization to file a five-page reply to Patent Owner’s Preliminary
`
`Responses in these proceedings. Patent Owner argues in each Preliminary
`
`Response that we should exercise our discretion to deny the Petition under
`
`35 U.S.C. § 314(a) based on the state of the related district court case
`
`involving the challenged patents, Broadband iTV, Inc. v. DISH Network,
`
`L.L.C., Case No. 19-cv-00716 (W.D. Tex.). E.g., IPR2020-01267, Paper 9
`
`at 8–30 (citing Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB
`
`Mar. 20, 2020) (precedential) (“Fintiv”)). Petitioner argued during the call
`
`that a recent decision (issued after the filing of the Petitions in the instant
`
`proceedings), In re Apple Inc., No. 2020-135, – F.3d –, 2020 WL 6554063
`
`(Fed. Cir. Nov. 9, 2020), is relevant to the second Fintiv factor—proximity
`
`of the court’s trial date to the Board’s projected statutory deadline for a final
`
`written decision. According to Petitioner, the decision shows that trial is not
`
`likely to occur on the date currently set by the district court (November 15,
`
`2021) and also increases the likelihood that Petitioner’s motion to transfer in
`
`the related district court case will be granted (in which case a new trial date
`
`would be set).
`
`Patent Owner opposed Petitioner’s request, arguing that the Apple
`
`decision is irrelevant to the second Fintiv factor because it dealt only with a
`
`petition for a writ of mandamus regarding a motion to transfer and the
`
`
`2 A court reporter, retained by Patent Owner, was present on the call. Patent
`Owner shall file a transcript of the call as an exhibit in each proceeding.
`
`
`
`2
`
`

`

`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)
`
`district court recently confirmed the November 15, 2021, trial date in the
`
`related district court case. Patent Owner also argued that Petitioner’s
`
`position that its motion to transfer is more likely to be granted based on the
`
`Apple decision is mere speculation and also incorrect, given that the facts
`
`pertaining to that motion are different from those in Apple.
`
`As stated during the call, we determine that there is good cause for
`
`a limited reply based on Petitioner’s assertions regarding the potential
`
`relevance of the Apple decision to our analysis of the second Fintiv factor.
`
`See 37 C.F.R. § 42.108(c). To ensure that both parties are heard on the
`
`issue, we also authorize Patent Owner to file a sur-reply responding to
`
`Petitioner’s arguments. The parties may not present arguments regarding
`
`any other Fintiv factor or any other issue in their papers.
`
`Finally, Patent Owner requested authorization to file a copy of the
`
`district court’s claim constructions in all proceedings in which they have not
`
`been filed already. Petitioner did not oppose the request, and Patent Owner
`
`did so after the call pursuant to our authorization.
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that Petitioner is authorized to file a Reply in the instant
`
`proceedings, limited to three pages and addressing only the issue described
`
`above, by December 3, 2020;
`
`FURTHER ORDERED that Patent Owner is authorized to file a
`
`Sur-Reply, limited to three pages and responding to Petitioner’s Reply, by
`
`December 10, 2020; and
`
`
`
`3
`
`

`

`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)
`
`
`FURTHER ORDERED that the parties shall file a single Reply and
`
`Sur-Reply in all eight proceedings using a caption referring to all of the
`
`proceedings.
`
`
`
`
`
`4
`
`

`

`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)
`
`FOR PETITIONER:
`
`Alyssa Caridis
`K. Patrick Herman
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`a8cptabdocket@orrick.com
`p52ptabdocket@orrick.com
`
`
`
`FOR PATENT OWNER:
`
`Sal Lim
`David Alberti
`Hong Lin
`FEINBERG DAY KRAMER ALBERTI LIM TONKOVICH
`& BELLOLI LLP
`slim@feinday.com
`dalberti@feinday.com
`hlin@feinday.com
`
`
`Michael D. Specht
`Jason A. Fitzsimmons
`Richard M. Bemben
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`mspecht-ptab@sternekessler.com
`jfitzsimmons-ptab@sternekessler.com
`rbemben-ptab@sternekessler.com
`
`
`Kevin Greenleaf
`DENTONS US LLP
`kevin.greenleaf@dentons.com
`
`
`
`
`
`5
`
`