Trials@uspto.gov
`571-272-7822
`
`Paper 49
`Date: August 25, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AT&T SERVICES, INC. and DIRECTV, LLC,
`Petitioner,
`v.
`BROADBAND iTV, INC.,
`Patent Owner.
`
`IPR2021-00603
`Patent 9,998,791 B2
`
`Before JEFFREY S. SMITH, JUSTIN T. ARBES, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`ARBES, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`INTRODUCTION
`I.
`A. Background and Summary
`AT&T Services, Inc. and DIRECTV, LLC (collectively, “Petitioner”)
`filed a Petition (Paper 1, “Pet.”) requesting inter partes review of claims
`1–3, 5–12, and 14–18 of U.S. Patent No. 9,998,791 B2 (Ex. 1001, “the
`
`

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`IPR2021-00603
`Patent 9,998,791 B2
`’791 patent”) pursuant to 35 U.S.C. § 311(a). Concurrently, Petitioner filed
`a Motion for Joinder pursuant to 35 U.S.C. § 315(c) and 37 C.F.R.
`§ 42.122(b), seeking to be joined as a party to DISH Network L.L.C. v.
`Broadband iTV, Inc., Case IPR2020-01280 (“the DISH IPR”), which also
`involves claims 1–3, 5–12, and 14–18 of the ’791 patent. Paper 3 (“Mot.”).
`Patent Owner Broadband iTV, Inc. filed an Opposition to Petitioner’s
`Motion for Joinder. Paper 8 (“Opposition” or “Opp.”).1 Petitioner filed a
`Reply to Patent Owner’s Opposition to Petitioner’s Motion for Joinder.
`Paper 10 (“Reply”). Patent Owner filed a Preliminary Response to the
`Petition. Paper 11 (“Prelim. Resp.”).
`Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an
`inter partes review unless the information in the petition and preliminary
`response “shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” For the reasons that follow, we determine that institution of inter
`partes review is warranted on the same grounds instituted in the DISH IPR
`and grant Petitioner’s Motion for Joinder.
`
`
`1 Patent Owner’s Opposition was untimely. See 37 C.F.R. § 42.25(a)(1)
`(“An opposition is due one month after service of the motion.”). “A late
`action will be excused on a showing of good cause or upon a Board decision
`that consideration on the merits would be in the interests of justice.”
`37 C.F.R. § 42.5(c)(3). Patent Owner argues that consideration of the
`Opposition would be in the interests of justice because (1) Patent Owner
`should be afforded an opportunity to be heard on the merits of Petitioner’s
`joinder arguments, (2) Petitioner was not prejudiced by the delay in filing,
`and (3) Patent Owner’s arguments are “the same as those” presented in
`Patent Owner’s opposition in related Case IPR2021-00556, so Petitioner was
`“already on notice of [Patent Owner’s] positions.” Opp. 1–3. We agree, and
`excuse the late filing in the interests of justice.
`
`2
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`IPR2021-00603
`Patent 9,998,791 B2
`
`B. Related Matters
`The parties indicate that the ’791 patent is the subject of Broadband
`iTV, Inc. v. DISH Network L.L.C., Case No. 6:19-cv-716 (W.D. Tex.)2
`(“the DISH case”), as well as Broadband iTV, Inc. v. AT&T Services, Inc.,
`Case No. 6:19-cv-712 (W.D. Tex.), and Broadband iTV, Inc. v. DirecTV,
`LLC, Case No. 6:19-cv-714 (W.D. Tex.), which were consolidated into
`Broadband iTV, Inc. v. AT&T Services, Inc., Case No. 1:20-cv-717
`(W.D. Tex.) (“the AT&T case”). See Pet. 5–6; Paper 6, 1.
`DISH Network L.L.C. (“DISH”) previously filed a petition
`challenging claims 1–3, 5–12, and 14–18 of the ’791 patent in the
`DISH IPR. DISH also filed a second petition challenging claims of the
`’791 patent in Case IPR2020-01281, which was denied. DISH filed
`petitions challenging claims of related patents asserted in the district court
`cases in Cases IPR2020-01267 (granted), IPR2020-01268 (denied),
`IPR2020-01332 (granted), IPR2020-01333 (denied), IPR2020-01359
`(granted), and IPR2020-01360 (denied).
`Petitioner filed petitions challenging claims of related patents asserted
`in the district court cases in Cases IPR2021-00556 and IPR2021-00649.
`Two different petitioners previously filed petitions challenging claims
`of a patent related to the ’791 patent, U.S. Patent No. 7,631,336 B2, in
`Cases IPR2014-01222 and CBM2014-00189, both of which were denied.
`See Pet. 6–7; Paper 6, 2.
`
`
`
`2 We refer to the United States District Court for the Western District of
`Texas as “the Texas court.”
`
`3
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`IPR2021-00603
`Patent 9,998,791 B2
`
`C. Illustrative Claim
`Challenged claim 1 of the ’791 patent is independent. Claims 2, 3,
`5–12, and 14–18 depend directly from claim 1. Claim 1 recites:
`1. A method for video-on-demand content delivery for
`providing video-on-demand services to a plurality of television
`service subscribers via a television service provider system that
`comprises a video-on-demand content delivery system having
`one or more computers, the method comprising:
` (a) receiving, at the one or more computers of the
`video-on-demand content delivery system of the television
`service provider system from a Web-based content management
`system,
`at least the following digital content:
`(i) a first video content, along with
`(ii) first metadata, associated with the first video
`content and usable in a video-on-demand content menu,
`the first metadata comprising:
`(1) first title information comprising a first
`
`title,
`
`content provider designated
`first
`(2)
`hierarchically arranged category information and
`subcategory information to specify a location of the
`first title information for the video content in a
`predetermined video-on-demand application, the
`first
`content provider designated
`category
`information
`and
`subcategory
`information
`associated with the first title information of the first
`video content using a same hierarchical structure of
`categories and subcategories as is to be used for
`placement of the first title information in the
`predetermined video-on-demand application; and
`(3) first time information for availability of
`the first video content for scheduling of viewing of
`the first video content through the predetermined
`video-on-demand application;
`
`4
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`IPR2021-00603
`Patent 9,998,791 B2
`wherein the first video content was uploaded to the
`Web-based content management system by a content provider
`device associated with a first video content provider via the
`Internet in a digital video format, along with the associated first
`metadata including first title information, and first content
`provider
`designated
`hierarchically
`arranged
`category
`information and subcategory information designated by the first
`video content provider, to specify a hierarchical location of the
`first title of the first video content within the video-on-demand
`content menu using the first category information and first
`subcategory
`information associated with
`the
`first
`title
`information;
`(b) storing, at a video server comprising one or more
`computers
`and
`computer-readable memory operatively
`connected to the one or more computers of the video server,
`respective video content, including the first video content,
`wherein the video server is associated with the video-on-demand
`content delivery system and is configured to supply the
`respective video content, upon request, for transmission to a set
`top box operatively connected to TV equipment of a television
`service subscriber;
`(c) providing a respective set top box operatively
`connected to respective TV equipment of a respective television
`service subscriber with access to the video-on-demand content
`menu for navigating through titles, including the first title of the
`first video content, by hierarchically-arranged category
`information and subcategory information including at least the
`first category information and the first subcategory information
`in order to locate a respective one of the titles whose associated
`video content is desired for viewing on the respective TV
`equipment,
`wherein the video-on-demand content menu lists the titles
`using the same hierarchical structure of category information and
`subcategory information as was designated by one or more video
`content providers, including the first video content provider, in
`the uploaded metadata for the respective video content, wherein
`a plurality of different video display templates, including a first
`video display template, are accessible to the set top box, and
`wherein
`the predetermined video-on-demand application
`
`5
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`IPR2021-00603
`Patent 9,998,791 B2
`accesses the first video display template for generating and
`displaying the video-on-demand content menu at the respective
`TV equipment of the respective television service subscriber;
`(d) determining, at the predetermined video-on-demand
`application, which titles are available for selection from the
`video-on-demand content menu at a respective time based at
`least in part on respective time information during which the
`respective video content associated with the respective time
`information can be accessed
`through
`the predetermined
`video-on-demand application; and
`(e) in response to (i) the respective television service
`subscriber selecting, via a control unit in communication with the
`respective set top box, the first title associated with the first video
`content from the hierarchically-arranged category information
`and subcategory information of the video-on-demand content
`menu, and (ii) the respective set top box transmitting an
`electronic request for the first video content associated with the
`selected first title, retrieving the first video content from the
`video server, and transmitting the first video content to the
`respective set top box for display of the first video content on the
`respective TV equipment of the respective television service
`subscriber.
`
`
`D. Evidence
`Petitioner relies on the following prior art:
`U.S. Patent No. 7,159,233 B2, filed Jan. 29, 2001, issued
`Jan. 2, 2007 (Ex. 1005, “Son”);
`U.S. Patent Application Publication No. 2010/0153997
`A1, published June 17, 2010, filed Nov. 23, 2009, continuation
`of application filed Jan. 21, 2004 (Ex. 1004, “Baumgartner”);
`U.S. Patent Application Publication No. 2005/0160458
`A1, published July 21, 2005, filed Jan. 21, 2004 (Ex. 1025,
`“Baumgartner II”);
`Robert G. Scheffler, Ingest & Metadata Partitioning:
`Requirements for Television on Demand (Ex. 1006, “Scheffler”);
`and
`
`6
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`IPR2021-00603
`Patent 9,998,791 B2
`CableLabs Video-on-Demand Content Specification
`Version 1.1, MD-SP-VOD-CONTENT1.1-01-020927 (2002)
`(Ex. 1009, “CableLabs”).
`
`
`
`E. Prior Art and Asserted Grounds
`Petitioner asserts that claims 1–3, 5–12, and 14–18 of the ’791 patent
`are unpatentable on the following grounds:
`Claim(s) Challenged 35 U.S.C. §
`
`1, 2, 5–12, 14–18
`
`103(a)3
`
`3
`
`103(a)
`
`
`
`References/Basis
`Baumgartner, Son, Scheffler,
`CableLabs
`Baumgartner, Son, Scheffler,
`CableLabs, Baumgartner II
`
`II. ANALYSIS
`Joinder for purposes of an inter partes review is governed by
`35 U.S.C. § 315(c), which states:
`JOINDER.—If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that inter
`partes review any person who properly files a petition under
`section 311 that the Director, after receiving a preliminary
`response under section 313 or the expiration of the time for filing
`such a response, determines warrants the institution of an inter
`parties review under section 314.
`“To join a party to an instituted [inter partes review (IPR)], the plain
`language of § 315(c) requires two different decisions.” Facebook, Inc. v.
`Windy City Innovations, LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). “First,
`
`3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the challenged claims
`of the ’791 patent have an effective filing date before the effective date of
`the applicable AIA amendment, we refer to the pre-AIA version of
`35 U.S.C. § 103.
`
`7
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`IPR2021-00603
`Patent 9,998,791 B2
`the statute requires that the Director (or the Board acting through a
`delegation of authority) . . . determine whether the joinder applicant’s
`petition for IPR ‘warrants’ institution under § 314.” Id. “Second, to effect
`joinder, § 315(c) requires the Director to exercise his discretion to decide
`whether to ‘join as a party’ the joinder applicant.” Id.
`
`
`A. Whether the Petition Warrants Institution
`1. Discretionary Denial Under 35 U.S.C. § 314(a)
`Institution of inter partes review is discretionary. See Harmonic Inc.
`v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is
`permitted, but never compelled, to institute an IPR proceeding.”); 35 U.S.C.
`§ 314(a) (“The Director may not authorize an inter partes review to be
`instituted unless the Director determines that the information presented in
`the petition filed under section 311 and any response filed under section 313
`shows that there is a reasonable likelihood that the petitioner would prevail
`with respect to at least 1 of the claims challenged in the petition.” (emphasis
`added)). In the Preliminary Response, Patent Owner contends that we
`should exercise our discretion to deny the Petition in view of the DISH and
`AT&T cases. Prelim. Resp. 1–29.
`The Board has held that the advanced state of a parallel district court
`action is a factor that may weigh in favor of denying a petition under
`§ 314(a). See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752,
`Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential); Patent Trial and Appeal
`Board Consolidated Trial Practice Guide (Nov. 2019), 58 & n.2, available at
`https://www.uspto.gov/TrialPracticeGuideConsolidated. We consider the
`following factors to assess “whether efficiency, fairness, and the merits
`
`8
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`

`

`2.
`
`3.
`
`4.
`
`IPR2021-00603
`Patent 9,998,791 B2
`support the exercise of authority to deny institution in view of an earlier trial
`date in the parallel proceeding”:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`investment in the parallel proceeding by the court and the
`parties;
`overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20,
`2020) (precedential) (“Fintiv”). In evaluating these factors, we “take[] a
`holistic view of whether efficiency and integrity of the system are best
`served by denying or instituting review.” Id. at 6.
`As an initial matter, we note that the instant Petition is a standard
`“me-too” petition with respect to the DISH IPR. Petitioner states that its
`Petition is “substantially identical to the petition in the DISH IPR,”
`challenges the same claims of the ’791 patent based on the same grounds,
`and relies on the same supporting evidence and declarant testimony. Mot. 5.
`Patent Owner does not dispute that assertion. We have reviewed the Petition
`and it appears to be identical to the petition in the DISH IPR but for
`Petitioner’s mandatory notice information, arguments regarding
`discretionary denial, and citation to our claim interpretations in the DISH
`IPR Decision on Institution. Compare Pet. 1–4, 8–9, 13–80, with
`IPR2020-01280, Paper 1, 1–4, 7–8, 11–79.
`
`6.
`
`9
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`IPR2021-00603
`Patent 9,998,791 B2
`We also note that the issue of whether to exercise our discretion to
`deny institution of a trial based on the instant grounds of unpatentability
`previously was addressed and decided in the DISH IPR. Patent Owner
`argued extensively in its preliminary response and sur-reply in that
`proceeding that we should exercise our discretion to deny the petition under
`35 U.S.C. § 314(a) and Fintiv based on both of the related district court
`cases (i.e., the DISH case and the AT&T case). See IPR2020-01280,
`Paper 9, 9–30; IPR2020-01280, Paper 14, 1–3. We evaluated all of Patent
`Owner’s arguments regarding discretionary denial, disagreed that we should
`exercise our discretion to deny the petition, and instituted an inter partes
`review in the DISH IPR on February 4, 2021. IPR2020-01280, Paper 17,
`11–26, 72 (“Decision on Institution” or “Dec. on Inst.”). Patent Owner filed
`a request for rehearing and suggestion for expanded panel review, arguing
`that we erred in our analysis of the Fintiv factors. IPR2020-01280,
`Paper 21. The Chief Judge determined that an expanded panel was not
`warranted and we denied Patent Owner’s request for rehearing.
`IPR2020-01280, Paper 29 (“Reh’g Dec.”).
`Specifically, in the DISH IPR, we determined that factor 1 was neutral
`to the exercise of our discretion. Dec. on Inst. 12–13. We stated that
`“determining how the Texas court might handle the issue of whether to stay
`any of the related cases when no motion for stay has been filed invites
`conjecture” and “[i]t would be improper to speculate, at this stage, what the
`Texas court might do regarding a motion to stay, given the particular
`circumstances of this case.” Id. at 13. We also noted on rehearing that
`DISH had filed a motion to transfer in the DISH case, which “introduce[d]
`some uncertainties” as to the trial schedule and possibility of a stay. Reh’g
`Dec. 6. After our decision on rehearing, the Texas court denied DISH’s
`
`10
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`IPR2021-00603
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`motion to transfer. Ex. 2043. Subsequently, on August 13, 2021, the
`U.S. Court of Appeals for the Federal Circuit denied DISH’s petition for a
`writ of mandamus directing the Texas court to transfer the DISH case. In re
`DISH Network L.L.C., No. 2021-148, 2021 WL 3574047 (Fed. Cir. Aug. 13,
`2021). The court stated, however, that it was “confident the district court
`will reconsider its determination in light of the appropriate legal standard
`and precedent on its own” and that it “expect[ed] . . . that the district court
`will expeditiously reconsider this matter before resolving substantive issues
`in the case.” Id. at *2.
`As to factor 2, we determined in the DISH IPR that the factor
`weighed, at most, slightly in favor of discretionary denial. Dec. on Inst.
`13–18. Patent Owner argued at the time that the Texas court set a trial date
`of November 15, 2021, for both district court cases. Id. at 13. With respect
`to the DISH case, we noted that
`both parties speculate as to the likelihood that the trial date of
`November 15, 2021, would later be rescheduled in light of
`circumstances such as docket congestion and the global
`pandemic, with Petitioner arguing that a reschedule is likely and
`Patent Owner arguing the opposite. We cannot ignore the fact
`that the currently scheduled trial date is more than nine months
`away and much can change during this time. Further, although
`we do not speculate as to the likelihood that Petitioner’s motion
`to transfer the Texas case will be granted, the motion remains
`pending and would necessitate a new trial date if it were.
`Accordingly, whether trial in the Texas case takes place before,
`contemporaneously with, or after our twelve-month final written
`decision statutory deadline involves at least some assumptions.
`Id. at 16–17 (citations omitted). With respect to the AT&T case, we found
`that the issues “effectively balance each other out” because although there
`was no pending motion to transfer in the AT&T case (and thus no possible
`delay from transfer), the AT&T case is in the Austin Division where jury
`
`11
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`IPR2021-00603
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`trials have been delayed. Reh’g Dec. 7–8; see also Dec. on Inst. 17 n.4
`(considering both the DISH case and the AT&T case, but noting that the
`parties’ arguments were assessed “primarily” based on the DISH case to
`which the majority of the arguments were directed).
`As to factor 3, we determined that the factor weighed strongly against
`discretionary denial. See Dec. on Inst. 18–21; Reh’g Dec. 8–12. We noted
`that the facts at the time were somewhat analogous to those of Sand
`Revolution II, LLC v. Continental Intermodal Group – Trucking LLC,
`IPR2019-01393, Paper 24 at 10–11 (PTAB June 16, 2020) (informative),
`with the parties having “exchanged preliminary infringement and invalidity
`contentions” and the Texas court having “denied a motion to dismiss,
`conducted a Markman hearing, and entered a short Order construing claim
`terms,” and further noted DISH’s pending motion to transfer and the
`possibility that DISH would refile its motion to dismiss under 35 U.S.C.
`§ 101. See Dec. on Inst. 19–20; Reh’g Dec. 8–11. We also found that
`DISH’s diligence in filing its Petition “less than three months after first
`receiving notice of Patent Owner’s infringement positions for all asserted
`claims . . . and prior to the parties exchanging proposed claim constructions
`and briefing claim construction issues” in the DISH case weighed against
`discretionary denial. See Dec. on Inst. 20–21; Reh’g Dec. 11–12.
`As to factor 4, we determined that with respect to the AT&T case,
`there was “only minimal overlap,” but with respect to the DISH case, there
`was “overlap as to the claims and identified grounds based on Baumgartner,
`Son, Scheffler, CableLabs, and Baumgartner II,” and, thus, the factor
`weighed in favor of discretionary denial. See Dec. on Inst. 17 n.4, 22–23;
`Reh’g Dec. 12–14.
`
`12
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`IPR2021-00603
`Patent 9,998,791 B2
`As to factor 5, we determined that the factor weighed, at most, slightly
`in favor of discretionary denial with respect to the DISH case based on its
`timing, but weighed against discretionary denial with respect to the AT&T
`case. See Dec. on Inst. 24; Reh’g Dec. 14–15.
`As to factor 6, we determined on the preliminary record that the
`merits of DISH’s case were “straightforward and strong as to both of
`[DISH’s] asserted grounds, and Patent Owner [had] not yet made a
`persuasive response to [DISH’s] allegations.” Dec. on Inst. 24–25.
`Accordingly, the merits weighed against discretionary denial. See id. at 25;
`Reh’g Dec. 15–16.
`Applying a holistic assessment of the Fintiv factors, we declined to
`deny institution under § 314(a). See Dec. on Inst. 26; Reh’g Dec. 16. The
`DISH IPR is currently pending. Patent Owner filed its response, DISH filed
`its reply, and the scheduled date for oral argument is approximately two
`months away.
`Thus, as explained above, the issue of whether to exercise our
`discretion to deny institution of a trial based on the instant grounds of
`unpatentability was decided in our full analysis of the Fintiv factors in the
`DISH IPR Decision on Institution and rehearing decision. The issue to be
`decided now is whether to join Petitioner as a party to the ongoing trial—
`not, for instance, whether to conduct a completely separate trial involving
`Petitioner. We have considered all of the parties’ arguments regarding
`discretionary denial in this proceeding and see no reason to reach a different
`conclusion than in the DISH IPR. See Pet. 10–13; Prelim. Resp. 1–29.
`Indeed, many of Patent Owner’s arguments regarding discretionary denial
`are substantially the same as those addressed in our previous decisions.
`Compare Prelim. Resp. 8–12 with IPR2020-01280, Paper 9, 15–16 (citing
`
`13
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`

`IPR2021-00603
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`the same evidence regarding factor 1), and IPR2020-01280, Paper 21, 3–5;
`compare Prelim. Resp. 21–23 with IPR2020-01280, Paper 21, 7–8 (citing
`the same evidence regarding factor 4). The primary difference now is with
`respect to timing—i.e., the district court cases understandably have
`progressed further than they had at the time of the DISH IPR Decision on
`Institution. At the same time, the trial schedule of the cases remains at least
`somewhat uncertain, given the Texas court’s reconsideration of its decision
`denying DISH’s motion to transfer and the fact that trials in the DISH and
`AT&T cases are both scheduled to begin on the same day. See DISH, 2021
`WL 3574047, at *2 (instructing the Texas court to reconsider the decision on
`DISH’s motion to transfer “before resolving substantive issues in the case”).
`Under the particular factual circumstances of this case, we also are not
`persuaded by Patent Owner’s arguments that Petitioner was “gaming the IPR
`system” by waiting to see whether a trial was instituted in the DISH IPR and
`then seeking joinder, or that we should exercise our discretion to deny the
`Petition based on the “policies” of other Board decisions allegedly
`disfavoring use of another party’s petition as a “roadmap.” See Prelim.
`Resp. 2–4, 19–20, 28–29. The inter partes review statute permits joinder
`and the Board’s rules permit a motion for joinder within one month of
`institution in the underlying proceeding. See 35 U.S.C. § 315(c); 37 C.F.R.
`§ 42.122(b). Petitioner’s Motion for Joinder is timely, as it was filed on
`March 4, 2021, within one month of our Decision on Institution in the DISH
`IPR on February 4, 2021. Further, we do not see why it would be
`appropriate to fault Petitioner for using DISH’s petition as a “roadmap”
`when Petitioner’s requested relief is to be joined as a party to the DISH IPR.
`See Prelim. Resp. 2–4, 28–29; 157 CONG. REC. S1376 (daily ed. Mar. 8,
`2011) (statement of Sen. Kyl) (“The Office anticipates that joinder will be
`
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`IPR2021-00603
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`allowed as of right—if an inter partes review is instituted on the basis of a
`petition, for example, a party that files an identical petition will be joined to
`that proceeding, and thus allowed to file its own briefs and make its own
`arguments.” (emphasis added)). A trial was instituted in the DISH IPR and
`will be going forward regardless of whether Petitioner’s Motion for Joinder
`is granted. See Pet. 12; Garmin Int’l, Inc. v. Philips N. Am. LLC,
`IPR2020-00910, Paper 8 at 25–26 (PTAB Nov. 19, 2020) (determining that
`the fact that the petitioner moved for joinder in an “understudy role”
`weighed “relatively strongly against” discretionary denial, and noting that
`“[d]enying institution and joinder . . . would not avoid potential duplicative
`efforts, because the [existing inter partes review] would still go forward”).
`After considering all of the party’s arguments in this proceeding and
`taking “a holistic view of whether efficiency and integrity of the system are
`best served by denying or instituting review,” Fintiv, Paper 11 at 6, we
`decline to deny institution under § 314(a).
`
`
`2. Merits of Petitioner’s Grounds of Unpatentability
`Patent Owner’s sole argument in the Preliminary Response is that we
`should exercise our discretion to deny the Petition under 35 U.S.C. § 314(a)
`and Fintiv. Prelim. Resp. 1–29.
`We incorporate our previous analysis regarding the asserted grounds
`of unpatentability, and conclude that Petitioner has demonstrated a
`reasonable likelihood of prevailing with respect to at least one claim of the
`’791 patent challenged in the Petition for the same reasons. See Dec. on
`Inst. 34–71. Therefore, we determine that the Petition warrants institution of
`inter partes review on all claims and all grounds asserted in the Petition.
`
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`B. Whether to Join Petitioner as a Party to the DISH IPR
`Joinder may be authorized when warranted, but the decision to grant
`joinder is discretionary. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. We
`determine whether to grant joinder on a case-by-case basis, taking into
`account the particular facts of each case, substantive and procedural issues,
`and other considerations. When exercising that discretion, we are mindful
`that patent trial regulations, including the rules for joinder, must be
`construed to secure the just, speedy, and inexpensive resolution of every
`proceeding. See 35 U.S.C. § 316(b); 37 C.F.R. § 42.1(b). As such, any
`motion for joinder must be filed “no later than one month after the institution
`date of any inter partes review for which joinder is requested.” 37 C.F.R.
`§ 42.122(b). Petitioner timely filed its Petition and Motion for Joinder.
`As the moving party, Petitioner has the burden of proof in establishing
`entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b).
`A motion for joinder should: (1) set forth the reasons why joinder is
`appropriate; (2) identify any new grounds of unpatentability asserted in the
`petition; (3) explain what impact (if any) joinder would have on the trial
`schedule for the existing review; and (4) address specifically how briefing
`and discovery may be simplified. See Kyocera Corp. v. SoftView LLC,
`IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013); PTAB E2E
`Frequently Asked Question H5, available at https://www.uspto.gov/patents/
`ptab/ptab-e2e-frequently-asked-questions.
`Petitioner argues that joinder is appropriate because the Petition
`“includes identical arguments and the same grounds raised in the existing
`DISH IPR proceeding (i.e., challenges the same claims of the same patent,
`relies on the same expert declaration, and is based on the same grounds and
`combinations of prior art submitted in the DISH Petition).” Mot. 4.
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`Petitioner contends that joinder will not impact the trial schedule of the
`DISH IPR because Petitioner “is introducing no additional evidence or
`witnesses” and “agrees to adhere to all applicable deadlines set forth in the
`DISH IPR Scheduling Order.” Id. at 5–6. Further, Petitioner “agrees to take
`an ‘understudy’ role” in the DISH IPR “so long as DISH remains an active
`party in that proceeding,” which “will simplify briefing and discovery.” Id.
`at 6. Specifically, Petitioner “shall not make any substantive filing and shall
`be bound by the filings of DISH, unless a filing concerns termination and
`settlement, or issues solely involving [Petitioner],” “shall not present any
`argument or make any presentation at oral hearing on issues not solely
`involving [Petitioner],” “shall not seek to cross-examine or defend the
`cross-examination of any witness, unless the topic of cross-examination
`concerns issues solely involving [Petitioner],” and “shall not seek discovery
`from Patent Owner on issues not solely involving [Petitioner].” Id. at 6–7.
`Petitioner states that DISH does not oppose the Motion for Joinder and
`joinder of Petitioner as a party will not prejudice Patent Owner. Id. at 2, 8.
`Patent Owner argues that the Motion should be denied based on
`Petitioner’s “gamesmanship” because Petitioner was sued for infringement
`of the ’791 patent in 2019, but “[i]nstead of joining DISH at an earlier stage
`or filing its own IPR petition,” Petitioner “lay in wait until the [DISH IPR]
`was instituted” and then filed its Motion for Joinder. Opp. 3–4. According
`to Patent Owner, we “relied on [Petitioner’s] absence from the [DISH IPR]
`in [the] decision to institute that proceeding in the first place.” Id. at 4.
`Patent Owner contends that the Fintiv analysis would have been different if
`Petitioner had been a party. Id. at 4–5.
`We disagree. As explained above, we considered all of the arguments
`that Patent Owner made in its preliminary response and request for rehearing
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`regarding the Fintiv factors with respect to the AT&T case (as well as the
`DISH case) in the DISH IPR Decision on Institution and weighed them
`accordingly. See supra Section II.A; Dec. on Inst. 12, 15, 17 n.4, 19, 22–24;
`Reh’g Dec. 7–8, 11–15. We also do not find significant overlap between
`Petitioner’s invalidity arguments in the AT&T case and the grounds of
`unpatentability in this proceeding, particularly given that the invalidity
`arguments involve numerous possible combinations and do not rely at all on
`Scheffler. See Reh’g Dec. 13–14. Finally, to the extent Patent Owner
`contends that Petitioner improperly waited to file its Petition and Motion for
`Joinder rather than filing earlier as DISH did, we are not persuaded that
`Petitioner engaged in unfair gamesmanship, as the Board’s rules expressly
`permit a motion for joinder within one month of institution in the underlying
`proceeding. See 37 C.F.R. § 42.122(b).
`Upon consid