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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`AT&T SERVICES, INC. and DIRECTV, LLC,
`Petitioners
`
`v.
`
`BROADBAND iTV, INC.,
`Patent Owner
`
`____________________
`
`Case IPR2021-00556
`Patent 10,028,026
`____________________
`
`
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S
`MOTION FOR JOINDER TO INTER PARTES REVIEW IPR2020-01267
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`
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`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-14
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`
`
`
`
`
`
`Case IPR2021-00556
`U.S. Patent No. 10,028,026
`
`I.
`II.
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`TABLE OF CONTENTS
`
`INTRODUCTION ....................................................................................... 1
`AT&T SHOULD NOT BE JOINED BECAUSE THE UNDERLYING
`PROCEEDING SHOULD BE TERMINATED. .......................................... 1
`III. AT&T’S JOINDER MOTION SHOULD BE DENIED ON THE MERITS. 2
`IV. CONCLUSION ........................................................................................... 6
`
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`- i -
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`Case IPR2021-00556
`U.S. Patent No. 10,028,026
`
`I.
`
`INTRODUCTION
`Patent Owner Broadband iTV, Inc. (“BBiTV”) opposes Petitioners’ AT&T
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`Services, Inc. and DirecTV, LLC’s (collectively, “AT&T”) Motion for Joinder
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`(Paper 3) to IPR2020-01267 (“the -1267 IPR”), filed by DISH Network, L.L.C.
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`(“DISH”). BBiTV timely files this Opposition within one month of service of
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`AT&T’s Motion. 37 C.F.R. § 42.25.
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`II. AT&T SHOULD NOT BE JOINED BECAUSE THE UNDERLYING
`PROCEEDING SHOULD BE TERMINATED.
`Given the facts and circumstances surrounding the litigation between all the
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`parties, the Board should grant BBiTV’s request for rehearing in IPR2020-01267,
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`terminate that proceeding, and deny AT&T’s Joinder Motion as moot for lack of
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`an underlying proceeding to join. In the -1267 IPR, BBiTV stressed that the Board
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`should consider the AT&T litigation when analyzing the Fintiv factors and deny
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`the -1267 Petition. The Board, however, expressly declined to consider the AT&T
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`litigation, instituting IPR on the limited facts surrounding the DISH litigation. See
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`IPR2020-01267, DI, 11-25. With the benefit of that limited ruling, AT&T now
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`seeks to join the -1267 IPR, with only eight months until a jury will address the
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`validity of the ’026 patent. AT&T’s Joinder Motion confirms that the Board should
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`deny the -1267 IPR under Fintiv. See IPR2020-01267, Paper 18, Request for
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`Rehearing. Accordingly, the Board should grant BBiTV’s Request for Rehearing
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`in the -1267 IPR.
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`- 1 -
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`Case IPR2021-00556
`U.S. Patent No. 10,028,026
`Additionally, the Board should hold AT&T’s Joinder Motion in abeyance
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`
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`until BBiTV’s Request for Rehearing in the -1267 IPR is resolved. BBiTV’s
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`position is now borne out by AT&T’s request for joinder. See IPR2020-01267,
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`Paper 18, 6-8. If the Board grants BBiTV’s Request for Rehearing and terminates
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`the -1267 IPR, AT&T’s Joinder Motion must be denied as moot. See, e.g., Ubisoft,
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`Inc. v. Uniloc USA, Inc., IPR2016-00414, Paper 16 at 5 (P.T.A.B. June 2, 2016) (If
`
`a proceeding is “no longer pending, it cannot serve as a proceeding to which
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`another proceeding may be joined”). Therefore, the Board should hold AT&T’s
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`Joinder Motion in abeyance until the Board rules on BBiTV’s Request for
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`Rehearing in the -1267 IPR.
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`III. AT&T’S JOINDER MOTION SHOULD BE DENIED ON THE
`MERITS.
`In the event the Board does not grant BBiTV’s Request for Rehearing in the
`
`-1267 IPR, it should deny AT&T’s Joinder Motion in view of AT&T’s
`
`gamesmanship. AT&T was served with an infringement complaint on December
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`20, 2019, more than one year ago, and is now time-barred from filing an IPR
`
`petition against U.S. Patent No. 10,028,026 (“the ’026 patent”). Instead of joining
`
`DISH at an earlier stage or filing its own IPR petition, AT&T waited to take
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`advantage of the Board’s institution analysis in the -1267 IPR, which specifically
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`evaluated whether to exercise its discretion to deny the petition based on AT&T’s
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`Case IPR2021-00556
`U.S. Patent No. 10,028,026
`absence from that proceeding. See IPR2020-01267, DI, 17-23. AT&T’s attempt to
`
`
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`now join a proceeding that was instituted based on AT&T’s lack of participation
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`should not be rewarded. Granting AT&T’s Joinder Motion would only encourage
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`similar gamesmanship by future parties.
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`AT&T had the opportunity to file an IPR petition for a year after being
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`served with BBiTV’s complaint, yet AT&T chose not to. AT&T is now time-
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`barred from filing a petition sans joining IPR2020-01267. Proppant Express
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`Investments, LLC v. Oren Techs., LLC, IPR2018-00914, Paper 38 at 18 (P.T.A.B.
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`Mar. 13, 2019) (cautioning that “[b]roadly exercising the discretion granted to the
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`Director in § 315(c) could effectively circumvent the time limitation in § 315(b) in
`
`many cases”), 19 (“The conduct of the parties and attempts to game the system
`
`may also be considered” when evaluating a motion for joinder) (precedential).
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`AT&T’s actions here are precisely the kind of “attempt[] to game the system”
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`cautioned against in Proppant.
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`In particular, AT&T alleges that “Patent Owner would not need to expend
`
`any additional resources above and beyond those required in the current DISH IPR
`
`proceeding,” Mot., 8, but AT&T ignores that the Board relied on AT&T’s absence
`
`from the -1267 IPR in its decision to institute that proceeding in the first place.
`
`And despite being aware of the -1267 IPR (see, e.g., IPR2020-01267, EX2032,
`
`0002 (discussing references “brought to Defendants’ attention through DISH’s
`
`- 3 -
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`Case IPR2021-00556
`U.S. Patent No. 10,028,026
`petitions for inter partes review…”)), AT&T lay in wait until the -1267 IPR was
`
`
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`instituted, allowing the Board to decide institution on the limited facts surrounding
`
`DISH’s district court litigation. Thus, joinder of AT&T at this stage, after the
`
`Board performed its Fintiv analysis assuming AT&T was not a party to the
`
`proceeding, would highly prejudice BBiTV.
`
`For example, in its institution decision in IPR2020-01267, the Board
`
`determined that the trial date in the parallel district-court was uncertain due, in
`
`part, to DISH’s pending transfer motion. IPR2020-01267, DI, 17-18 (“[W]ith trial
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`currently scheduled for just roughly two months before the due date for the final
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`written decision and a motion to transfer pending, there is at least some persuasive
`
`evidence that delays are possible”). As AT&T acknowledges, “AT&T has no
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`transfer motion on file.” Pet., 9. Therefore, AT&T’s presence in the -1267 IPR
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`would have had a significant effect on the Board’s original discretionary denial
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`analysis. See IPR2020-01267, Paper 18, 6-8; Apple Inc. v. Fintiv, Inc., IPR2020-
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`00019, Paper 11 at 5-6 (P.T.A.B. Mar. 20, 2020) (precedential) (factor 2).
`
`Additionally, AT&T’s final invalidity contentions further demonstrate
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`substantial overlap between the issues present in the parallel district court
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`proceeding and the -1267 IPR. For example, AT&T’s final invalidity contentions
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`include obviousness grounds based upon U.S. Patent No. 7,159,233 (“Son”) and
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`U.S. Patent Publication No. 2001/030667 (“Kelts”), two of the three references
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`- 4 -
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`Case IPR2021-00556
`U.S. Patent No. 10,028,026
`asserted in the -1267 IPR. See IPR2020-01267, EX2032, 0002 (listing claims and
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`
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`Son), 0014 (Son), 0016 (Kelts), 0018 (Kelts), 0025 (Son), 0027 (Son), 0029 (Son),
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`0038-47 (Table 5 relying on Kelts and Son).1 Indeed, AT&T admitted that it
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`became aware of Son “through DISH’s petitions for inter partes review.” Id.,
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`0002. Thus, if AT&T were a party to the -1267 IPR, the investment and the degree
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`of overlap in the parallel district court proceeding would be materially affected.
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`IPR2020-01267, Paper 18, 8-11; Fintiv, 5-6 (factors 3-5).
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`For at least these reasons, joinder of AT&T to IPR2020-01267 would
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`prejudice BBiTV because the Board instituted IPR2020-01267 assuming AT&T’s
`
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`1 AT&T attempts to dismiss the overlap between its district court case and
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`the -1267 IPR by “submit[ting] that it will not rely on the [same] Grounds” in
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`district court. Pet., 9 (emphasis added). But this stipulation does not remove
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`AT&T’s invalidity challenges based upon the Son and Kelts references from
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`district court. Therefore, significant “concerns regarding duplicative efforts and
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`potentially conflicting decisions” still remain. Sand Revolution II, LLC v.
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`Continental Intermodal Grp. – Trucking LLC, IPR2019-01393, Paper 24 at 12 n.5
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`(P.T.A.B. Jun. 16, 2020) (informative). Moreover, AT&T waited to present this
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`stipulation until after the -1267 IPR was instituted.
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`- 5 -
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`absence from the proceeding.
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`Case IPR2021-00556
`U.S. Patent No. 10,028,026
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`IV. CONCLUSION
`Because a grant of BBiTV’s Request for Rehearing in the -1267 IPR would
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`be dispositive of AT&T’s Joinder Motion, the Board should rule on BBiTV’s
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`Request for Rehearing before addressing the Joinder Motion. In any event,
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`however, the Board should deny AT&T’s Joinder Motion in view of AT&T’s
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`gamesmanship and the resulting prejudice to BBiTV.
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`
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Michael D. Specht/
`
`Michael D. Specht (Reg. No. 54,463)
`Attorney for Patent Owner
`
`
`
`Date: March 19, 2021
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371-2600
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`- 6 -
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`Case IPR2021-00556
`U.S. Patent No. 10,028,026
`CERTIFICATION OF SERVICE
`
`The undersigned hereby certifies that on March 19, 2021, a true and correct
`
`copy of the foregoing PATENT OWNER’S OPPOSITION TO
`
`PETITIONER’S MOTION FOR JOINDER TO INTER PARTES REVIEW
`
`IPR2020-01267 was served electronically via e-mail on the following counsel for
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`Petitioner:
`
`
`
`Roger Fulghum (Lead Counsel)
`Jeffery S. Becker (Back-up Counsel)
`Morgan G. Mayne (Back-up Counsel)
`BAKER BOTTS L.L.P.
`roger.fulghum@bakerbotts.com
`jeff.becker@bakerbotts.com
`morgan.mayne@bakerbotts.com
`
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Michael D. Specht/
`
`Michael D. Specht (Reg. No. 54,463)
`Attorney for Patent Owner
`
`
`
`Date: March 19, 2021
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371-2600
`
`
`
`
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