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 (U.S. Patent No. 10,028,026 B2)
`IPR2020-01280 and IPR2020-01281 (U.S. Patent No. 9,998,791 B2)
`IPR2020-01332 and IPR2020-01333 (U.S. Patent No. 10,506,269 B2)
`IPR2020-01359 and IPR2020-01360 (U.S. Patent No. 9,648,388 B2)
`_________________________________________________________________
`DISH NETWORK’S PRELIMINARY RESPONSE REPLY
`_________________________________________________________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`DISH NETWORK L.L.C.,
`Petitioner,
`v.
`BROADBAND iTV, INC.,
`Patent Owner.
`
`____________________________
`
`IPR2020-01267 and IPR2020-01268 (U.S. Patent No. 10,028,026 B2)
`IPR2020-01280 and IPR2020-01281 (U.S. Patent No. 9,998,791 B2)
`IPR2020-01332 and IPR2020-01333 (U.S. Patent No. 10,506,269 B2)
`IPR2020-01359 and IPR2020-01360 (U.S. Patent No. 9,648,388 B2)
`_________________________________________________________________
`DISH NETWORK’S PRELIMINARY RESPONSE REPLY
`_________________________________________________________________
`
`
`
`Pursuant to the authorization provided by the Board, Petitioner DISH Network
`
`L.L.C. (“DISH”) respectfully submits this reply to Patent Owner Broadband iTV
`
`Inc’s (“BBiTV’s”) preliminary responses in the above proceedings.
`
`BBiTV argues that the Board should apply Apple v. Fintiv and deny institution
`
`in view of a November 2021 scheduled trial date in a co-pending district court case
`
`between BBiTV and DISH. (See, e.g., IPR2020-01280, Paper 9, pp. 10, 17-22.)
`
`Under Apple v. Fintiv, the Board considers the “proximity of the court’s trial date to
`
`the Board’s projected statutory deadline for a final written decision” when assessing
`
`whether institution is appropriate. IPR2020-00019, Paper 10, p. 6 (P.T.A.B. Mar.
`
`20, 2020) (precedential). While a scheduled trial date is listed among other factors,
`
`the Board has effectively treated it as a dominant and determinative factor. Indeed,
`
`it does not appear that the Board has ever cited Apple v. Fintiv to deny institution
`
`where trial in a parallel litigation was set to occur after the final written decision.
`
`When applying Apple v. Fintiv, the Board “generally take[s] courts’ trial
`
`schedules at face value absent some strong evidence to the contrary.” See Apple v.
`
`Fintiv, IPR2020-00019, Paper 15 at 13 (P.T.A.B. May 13, 2020) (informative). That
`
`practice cannot withstand the Federal Circuit’s recent holding in In re Apple Inc.,
`
`No. 2020-135, – F.3d –, 2020 WL 6554063 (Fed. Cir. Nov. 9, 2020). There, the
`
`Federal Circuit explained that, at least in the case of the specific judge before whom
`
`the parallel litigation is pending here (Judge Albright in the WDTX), taking a
`
`-1-
`
`
`
`scheduled trial date at “face value” constitutes error. See id. at *8.
`
`More particularly, In re Apple Inc. reviewed a decision by Judge Albright
`
`denying a motion to transfer venue. See id., *1. The judge’s decision was premised,
`
`in part, on the fact that he “[had] already set the trial date” leading to a “prospective
`
`time for filing to trial” of 18.4 months, which was faster than the average time to
`
`trial in the jurisdiction to which transfer was sought. Id., *8. The Federal Circuit
`
`rejected this reasoning, explaining that Judge Albright’s “fast-paced schedule is not
`
`particularly relevant” when assessing the relative speed differences between two
`
`jurisdictions because “the forum itself has not historically resolved cases so
`
`quickly.” Id. The Federal Circuit then went on to emphasize that scheduled trial
`
`dates—especially those where the “anticipated time to trial is significantly shorter
`
`than the district’s historical time to trial,” like Judge Albright’s—can only be
`
`considered “speculat[ive].” Id. Thus, the respective jurisdictions’ average trial
`
`times—and not the aggressive trial dates set by Judge Albright—are the relevant
`
`metrics for determining which jurisdiction will reach resolution first. See id.
`
`The same principle applies here. Like the decision at issue in In re Apple, the
`
`Board’s institution decision here requires (as one element of the analysis) a
`
`comparison of the projected times to decision in the parallel district-court litigation
`
`and in the PTAB. If Judge Albright (the party who is most knowledgeable about
`
`whether trial can actually occur in the parallel litigation when scheduled) cannot take
`
`-2-
`
`
`
`his own scheduled trial date as a given without engaging in speculation and
`
`committing error, than the Board (who has no special knowledge about the judge’s
`
`ability to timely reach trial) cannot either. It follows that the only relevant date for
`
`the Board to consider is the WDTX’s average time to trial. This, according to the
`
`Federal Circuit, exceeds 2 years. See In re Apple, 2020 WL 6554063, *8. In other
`
`words, it would be erroneous and speculative for the Board to assume that trial in
`
`the parallel litigation will occur as scheduled in November 2021. Instead, a date in
`
`2022 is more likely. The Board’s final decisions are due no later than February 2022.
`
`Considering average time to trial also is better policy. Patent holders should
`
`not be able to use aggressive (but unlikely) trial schedules to shut the doors to the
`
`PTAB. Moreover, DISH submits that the In re Apple decision increases the chances
`
`that trial will not occur before Judge Albright at all. DISH has filed a motion to
`
`transfer. If transferred (either by the trial court or by the Federal Circuit after
`
`mandamus), trial will need to be rescheduled. And, Judge Albright indicated at a
`
`November 13, 2020 claim construction hearing that he was waiting for the Federal
`
`Circuit’s In re Apple decision before ruling on DISH’s motion, to ensure he does not
`
`issue an “inconsistent” ruling. While a full accounting of all the facts underlying
`
`DISH’s transfer motion is beyond the scope of this paper, at the very least, the
`
`judge’s expressed desire to issue a “[c]onsistent” decision casts further doubt on the
`
`November 2021 trial date and renders that date even less relevant.
`
`-3-
`
`
`
`Dated: December 3, 2020
`
`Respectfully submitted,
`
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`
` /Alyssa Caridis/
`Alyssa Caridis, Reg. No. 57,545
`Orrick, Herrington & Sutcliffe LLP
`777 South Figueroa Street, Suite 3200
`Los Angeles, CA 90017-5855
`Telephone: (213) 629-2020
`Email: A8CPTABDocket@orrick.com
`
`K. Patrick Herman, Reg. No. 75,018
`Orrick, Herrington & Sutcliffe LLP
`51 West 52nd Street
`New York, NY 10019
`Telephone: 212-506-3596; F: 212-506-5151
`Email: P52PTABDocket@orrick.com
`
`Attorneys for Petitioner DISH Network
`L.L.C.
`
`-4-
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby confirms that the foregoing PRELIMINARY
`
`RESPONSE REPLY was caused to be served on December 3, 2020 via email upon
`
`the following counsel of record for Patent Owner:
`
`David Alberti (dalberti@feinday.com)
`Sal Lim (slim@feinday.com)
`Hong Lin (hlin@feinday.com)
`FEINBERG DAY KRAMER ALBERTI LIM TONKOVICH &
`BELLOLI LLP
`
`Michael D. Specht (mspecht-PTAB@sternekessler.com)
`Jason A. Fitzsimmons (jfitzsimmons-PTAB@sternekessler.com)
`Richard M. Bemben (rbemben-PTAB@sternekessler.com)
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`Kevin Greenleaf (kevin.greenleaf@dentons.com)
`DENTONS US LLP
`
`fdalb-bbitv@feinday.com
`
`PTAB@sternekessler.com
`
`/Alyssa Caridis/
`Alyssa Caridis, Reg. No. 57,545
`Orrick, Herrington & Sutcliffe LLP
`777 South Figueroa Street, Suite 3200
`Los Angeles, CA 90017-5855
`Telephone: (213) 629-2020
`Email: A8CPTABDocket@orrick.com
`
`
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