UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AT&T SERVICES, INC. and DIRECTV, LLC,
`Petitioners,
`
`v.
`
`BROADBAND iTV, INC.,
`Patent Owner.
`____________
`
`Case No. IPR2021-00556
`Patent No. 10,028,026
`____________
`
`REPLY IN SUPPORT OF MOTION FOR JOINDER TO INTER PARTES
`REVIEW IPR2020-01267
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AT&T SERVICES, INC. and DIRECTV, LLC,
`Petitioners,
`
`v.
`
`BROADBAND iTV, INC.,
`Patent Owner.
`____________
`
`Case No. IPR2021-00556
`Patent No. 10,028,026
`____________
`
`REPLY IN SUPPORT OF MOTION FOR JOINDER TO INTER PARTES
`REVIEW IPR2020-01267
`
`
`
`TABLE OF CONTENTS
`THE BOARD DENIED PATENT OWNER’S REQUEST FOR
`REHEARING IN THE DISH IPR................................................................... 1
`DENIAL OF JOINDER IS INAPPROPRIATE HERE .................................. 1
`THE BOARD DID NOT RELY ON AT&T’S ABSENCE FROM THE
`DISH IPR IN ITS INSTITUTION DECISION .............................................. 3
`THE LEVEL OF INVESTMENT AND OVERLAP BETWEEN THE DISH
`IPR AND AT&T DISTRICT COURT CASE IS MINIMAL ......................... 4
`CONCLUSION ................................................................................................ 5
`
`I.
`
`II.
`III.
`
`IV.
`
`V.
`
`i
`
`
`
`BI’s arguments are not supported by the record or the Board’s precedent,
`
`and the Board should grant AT&T’s motion to join the DISH IPR.
`
`I.
`
`THE BOARD DENIED PATENT OWNER’S REQUEST FOR
`REHEARING IN THE DISH IPR
`As an initial matter, Patent Owner’s argument that the Board should deny
`
`AT&T’s request for joinder because the DISH IPR should be terminated is moot.
`
`On April 1, 2021, the Board denied Patent Owner’s request for rehearing of the
`
`Board’s decision to institute the DISH IPR and refusal to exercise discretionary
`
`denial under 35 U.S.C. § 314(a). See IPR2020-01267, Paper 25. Patent Owner’s
`
`argument is moot.
`
`II.
`
`DENIAL OF JOINDER IS INAPPROPRIATE HERE
`Citing only Proppant Express for support, Patent Owner argues that
`
`AT&T’s motion for joinder should be denied “in view of AT&T’s gamesmanship,”
`
`as “AT&T is now time-barred from filing a petition sans joining IPR2020-01267.”
`
`Paper 9 at 2-3. According to Patent Owner, AT&T’s late request to join the DISH
`
`IPR, instead of filing its own IPR petition, “[is] precisely the kind of ‘attempt[] to
`
`game the system’ cautioned against in Proppant.” Id. at 3. BI’s reliance on
`
`Proppant Express is misplaced.
`
`The issue in Proppant Express was whether the Board should exercise its
`
`discretion to grant same-party joinder and new-issue joinder. See Proppant
`
`Express Investments, LLC v. Oren Techs., LLC, IPR2018-00914, Paper 38 (PTAB
`
`1
`
`
`
`Mar. 13, 2019) at 19-21 (denying same party and issue joinder “[b]ecause
`
`Petitioner’s own conduct created the need for it to request joinder” to fix
`
`petitioner’s errors in an existing IPR proceeding). “The factors and considerations
`
`for joinder that does not involve same party and new issues are different that [sic]
`
`those set forth in Proppant Express.” Kingston Tech. Co., Inc. v. Securewave
`
`Storage Solutions, Inc., IPR202-00139, Paper 12 at 14 (PTAB Mar. 23, 2020). As
`
`explained in the AIA legislative history: “The Office anticipates that joinder will
`
`be allowed as of right—if an inter partes review is instituted on the basis of a
`
`petition, . . . a party that files an identical petition will be joined to that
`
`proceeding.” Id. at 14 (internal quotations and citations omitted).
`
`Here, unlike Proppant Express, AT&T is not seeking same-party joinder or
`
`joinder of new issues. To the contrary, AT&T merely seeks to join DISH’s IPR,
`
`and AT&T’s Petition is a “me-too” petition that includes identical arguments and
`
`the same grounds of invalidity already at issue in the DISH IPR. Furthermore,
`
`AT&T will act only as an understudy and will not assume an active role in the
`
`joined proceeding unless and until DISH ceases to participate. The Board
`
`routinely grants joinder in circumstances such as these. See, e.g., id. at 14
`
`(granting joinder where the petition was a “me-too” petition that didn’t add any
`
`new issues); BlackBerry Corp. v. Uniloc 2017 LLC, IPR2019-01282, Paper 11 at
`
`6-8 (PTAB Nov. 5, 2019) (granting joinder where the petition was substantively
`
`2
`
`
`
`identical to the instituted petition and the petitioner agreed to an understudy role);
`
`Samsung Elecs. Co., Ltd. v. Raytheon Co., IPR2016-00962, Paper 12 at 5-9 (PTAB
`
`Aug. 24, 2016) (same); Oracle America, Inc. v. Realtime Data LLC, IPR2016-
`
`01671, Paper 15 at 4-8 (PTAB Mar. 8, 2017) (granting joinder where the petitioner
`
`asserted the same grounds of unpatentability as the instituted IPR, despite the
`
`petitioner having filed an earlier petition based on different grounds).
`
`Moreover, AT&T timely filed its Motion for Joinder within one month of
`
`the Board’s decision instituting trial in the DISH IPR, and AT&T’s Petition is not
`
`time-barred under § 315(b). 37 C.F.R. § 42.122(b); see also 35 U.S.C. § 315(b)
`
`(indicating that the one-year time limitation “shall not apply to a request for joinder
`
`under subsection (c)”). As such, Patent Owner’s reliance on Proppant Express is
`
`improper and its arguments are unavailing.
`
`III. THE BOARD DID NOT RELY ON AT&T’S ABSENCE FROM THE
`DISH IPR IN ITS INSTITUTION DECISION
`Contrary to Patent Owner’s suggestion, no portion of the Board’s institution
`
`decision in the DISH IPR relied on AT&T’s participation or lack thereof in
`
`evaluating whether to exercise its discretion under Fintiv.1 See IPR2020-01267,
`
`1 In Patent Owner’s request for rehearing, Patent Owner argued that the Board
`
`should have considered the AT&T district court proceeding when analyzing Fintiv
`
`factors 2 and 4. See Paper 15 at 3.
`
`3
`
`
`
`Paper 15 at 12-25. Nor did the Board’s decision denying rehearing rely on
`
`AT&T’s absence. Rather, the Board simply observed that (1) the “AT&T case
`
`introduces issues that effectively balance each other out” and render Fintiv factor 2
`
`neutral as to AT&T; and (2) there is “only minimal overlap between the issues
`
`raised in the AT&T case and [the DISH IPR]” with respect to Fintiv factor 4.
`
`IPR2020-01267, Paper 25 at 7-8, 13; see also IPR2020-01280, Paper 17 at 17 n.4.
`
`In any event, joinder will not result in any prejudice to Patent Owner because the
`
`issues in AT&T’s Petition are identical to those in the DISH IPR and the schedule
`
`of the DISH IPR will remain unchanged. See Paper 3 at 5-8.
`
`IV. THE LEVEL OF INVESTMENT AND OVERLAP BETWEEN THE
`DISH IPR AND AT&T DISTRICT COURT CASE IS MINIMAL
`Patent Owner’s final argument against joinder is that there is “substantial
`
`overlap” between the DISH IPR and AT&T district court case and that “the
`
`investment and the degree of overlap in the parallel district court proceeding would
`
`be materially affected.” Paper 9 at 4-5. Patent Owner is incorrect.
`
`First, Patent Owner’s argument conflates the Fintiv factors with the Kyocera
`
`factors considered for joinder. The Fintiv factors—which include investment in
`
`parallel litigation and overlap between issues in IPR and parallel litigation—are
`
`relevant to institution of an IPR, not joinder to an existing IPR. As explained in
`
`AT&T’s Motion, all four Kyocera factors favor joinder. See Paper 3 at 3-8.
`
`Regardless, as previously explained, AT&T’s final invalidity contentions in
`
`4
`
`
`
`the district court case do not rely on the Grounds in the Petition. See Paper 1 at 9-
`
`10. In fact, AT&T’s invalidity contentions do not even identify Gonder as a prior
`
`art reference. See id.; see also IPR2020-01267, Paper 25 at 13 (“[DISH] relies on
`
`Gonder as allegedly teaching the majority of the limitations of the claims, and
`
`relies on combinations with Son and Kelts for certain limitations. . . . The
`
`defendants in the AT&T case rely on a set of base references (which does not
`
`include Gonder), and cite Son and the “related Kelts patent” (not Kelts) in
`
`combination with those references.”). Thus, as the Board noted in the DISH IPR,
`
`there is little overlap between the invalidity grounds in the Petition and those
`
`presented in the AT&T district court case. See IPR2020-01267, Paper 25 at 13.
`
`Finally, the AT&T district court case has not progressed significantly further
`
`than the DISH case, and the Board has previously recognized that the investment
`
`by the Texas court and the parties in the AT&T case strongly favors institution.
`
`IPR2020-01267, Paper 15 at 20-21; Paper 25 at 8-12.
`
`V.
`
`CONCLUSION
`For at least the reasons given above and those set forth in AT&T’s Motion
`
`for Joinder, AT&T respectfully requests that its Petition for IPR of the ’026 Patent
`
`be instituted and that AT&T be joined to the DISH IPR.
`
`5
`
`
`
`Dated: April 19, 2021
`
`Respectfully submitted,
`BAKER BOTTS L.L.P.
`Attorney for Petitioners
`
` /s/ Roger Fulghum
`Roger Fulghum
`Reg. No. 39,678
`
`6
`
`
`
`CERTIFICATE OF SERVICE
`
`In accordance with 37 C.F.R. §§ 42.6(e), the undersigned certifies that on
`
`the 19th day of April, 2021, a complete and entire copy of REPLY IN SUPPORT
`
`OF MOTION FOR JOINDER TO INTER PARTES REVIEW IPR2020-01267
`
`was served on Patent Owner via electronic mail at the following correspondence
`
`addresses:
`
` slim@feinday.com
`
` dalberti@feinday.com
`
` mspecht-PTAB@sternekessler.com
`
` jfitzsimmons-PTAB@sternekessler.com
`
` rbemben-PTAB@sternekessler.com
`
` hlin@feinday.com
`
` kevin.greenleaf@dentons.com
`
` rtonkovich@feinday.com
`
` fdalb-bbitv@feinday.com
`
` PTAB@sternekessler.com
`
`7
`
`
`
`Dated: April 19, 2021
`
`Respectfully submitted,
`
`/s/ Roger Fulghum
`BAKER BOTTS L.L.P.
`Roger Fulghum
`State of Texas Bar No. 00790724
`One Shell Plaza, 910 Louisiana
`Houston, Texas 77002
`Telephone: (713) 229-1707
`Facsimile: (713) 229-2707
`
`Attorney for Petitioners AT&T
`SERVICES, INC. AND DIRECTV, LLC
`
`8
`
`
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