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`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 IPR2021-00556
`U.S. Patent No. 10,028,026
`___________________
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`Case IPR2021-00556
`U.S. Patent No. 10,028,026
`
`I.
`II.
`
`B.
`
`C.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ....................................................................................... 1
`THE BOARD SHOULD DENY THE PETITION UNDER FINTIV. .......... 4
`A.
`Factor 1 strongly favors denial because neither parallel district
`court case has been stayed and all the evidence indicates that
`Judge Albright would not grant a stay. ............................................... 9
`Factor 2 strongly favors denial because the trials will begin
`long before the FWD deadline, and Judge Albright has
`repeatedly confirmed, “We’re going to go to trial.” ..........................12
`Factor 3 strongly favors denial because, by the projected
`institution deadline, the parties and the district court will have
`made significant investment in the parallel cases. .............................18
`Factor 4 strongly favors denial because there is significant
`overlap between AT&T’s copycat Petition and the issues that
`will be tried in the parallel district court cases...................................22
`Factor 5 strongly favors denial because the parties involved in
`this IPR are the same as in the parallel district court cases. ...............26
`Factor 6 strongly favors denial because the merits are weak and
`other discretionary factors favor denial. ............................................27
`1.
`The merits favor denial. ..........................................................28
`Apple v. Uniloc 2017 also favors denial. .................................29
`2.
`III. CONCLUSION ..........................................................................................31
`
`
`
`D.
`
`E.
`
`F.
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`- i -
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`Case IPR2021-00556
`U.S. Patent No. 10,028,026
`PATENT OWNER’S UPDATED EXHIBIT LIST
`
`
`2002
`
`2003
`
`2004
`
`Exhibit No. Description
`Intentionally Left Blank
`2001
`Complaint for Patent Infringement, Broadband iTV, Inc. v. DISH
`Network, LLC, Case No. 6:19-cv-00716-ADA (W.D. Tex.),
`December 19, 2019.
`Transcript of Telephonic Discovery Hearing Before the Honorable
`Alan D. Albright, Broadband iTV, Inc. v. DISH Network, LLC,
`Case No. 6:19-cv-00716-ADA (W.D. Tex.), August 31, 2020.
`“The last thing anyone should think about WDTX is that it is patent
`plaintiff friendly, says Albright,” (IAM, Apr. 7, 2020),
`https://www.iam-media.com/law-policy/albright-the-last-thing-
`anyone-should-think-about-venue-it-plaintiff-friendly (accessed
`Sept. 14, 2020).
`Order Denying Motion to Stay Case, Continental Intermodal
`Group-Trucking, LLC v. Sand Revolution, LLC, Case No. 7:18-cv-
`00147 (W.D. Tex.), July 22, 2020.
`Order Denying Motion to Stay Case, Kerr Machine Co. v. Vulcan
`Indus. Holdings, LLC, Case No. 6:20-cv-00200 (W.D. Tex.),
`August 18, 2020.
`Divisional Standing Order Regarding Trials in Waco, U.S. District
`Court for the Western District of Texas, August 18, 2020.
`Divisional Standing Order Regarding Trials in Waco, U.S. District
`Court for the Western District of Texas, September 23, 2020.
`Divisional Standing Order Regarding Trials in Waco, U.S. District
`Court for the Western District of Texas, March 24, 2020.
`Order Granting Motion to Consolidate Cases, Broadband iTV, Inc.
`v. AT&T Services, Inc., Case No. 6:19-cv-00712 (W.D. Tex.), April
`15, 2020.
`Minute Entry for Proceedings held before Judge Alan D. Albright,
`Broadband iTV, Inc. v. DISH Network, LLC, Case No. 6:19-cv-
`00716 (W.D. Tex.), August 31, 2020.
`“Roku Tells WDTX Patent Jury Its Tech's Web Access Is Key”
`Law360, October 5, 2020,
`https://www.law360.com/articles/1302893/print?section=ip
`(accessed October 20, 2020).
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`
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`- ii -
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`Case IPR2021-00556
`U.S. Patent No. 10,028,026
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`2013
`
`2014
`
`2015
`
`2016
`2017
`
`2018
`
`2019
`
`2020
`
`Exhibit No. Description
`Order Denying Motion to Dismiss, Broadband iTV, Inc. v. DISH
`Network, LLC, Case No. 6:19-cv-00716-ADA (W.D. Tex.), July
`25, 2020.
`Dish Network LLC’s Preliminary Invalidity Contentions,
`Broadband iTV, Inc. v. DISH Network, LLC, Case No. 6:19-cv-
`00716-ADA (W.D. Tex.), June 25, 2020.
`Defendants’ Opening Claim Construction Brief, Broadband iTV,
`Inc. v. DISH Network, LLC, Case No. 6:19-cv-716, U.S. District
`Court for the Western District of Texas, dated September 10, 2020.
`Intentionally Left Blank
`Intentionally Left Blank
`“Roku Beats $41M Infringement Claim In Texas Trial” Law360,
`October 14, 2020,
`https://www.law360.com/articles/1319005/print?section=ip
`(accessed October 21, 2020).
`“3 Things To Know After Busy WDTX Patent Judge's 1st Trial”
`Law360, October 16, 2020,
`https://www.law360.com/articles/1320360/print?section=ip
`(accessed October 21, 2020).
`Transcript of Telephonic Discovery Hearing Before the Honorable
`Alan D. Albright, Broadband iTV, Inc. v. DISH Network, LLC,
`Case No. 6:19-cv-00716-ADA (W.D. Tex.), March 26, 2020.
`Intentionally Left Blank
`BBiTV Court’s Claim Constructions Final At Hearing 11/13/20,
`Broadband iTV, Inc. v. DISH Network, LLC, Case No. 6:19-cv-
`00716, U.S. District Court for the Western District of Texas, dated
`November 13, 2020.
`Intentionally Left Blank
`Teleconference Transcript, November 25, 2020.
`DISH Final Invalidity Contentions and Example Claim Charts
`AT&T Final Invalidity Contentions and Example Claim Charts
`Intentionally Left Blank
`Intentionally Left Blank
`E-mail regarding motion for joinder of new inter partes review
`petition with IPR2020-01267, February 18, 2021.
`
`2021-2025
`
`2026
`
`2027-2029
`2030
`2031
`2032
`2033
`2034
`2035
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`- iii -
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`Case IPR2021-00556
`U.S. Patent No. 10,028,026
`
`2041
`
`2042
`
`2043
`
`2044
`
`Exhibit No. Description
`2036-2040
`Intentionally Left Blank
`PACER Docket Report, Broadband iTV, Inc. v. AT&T Services,
`Inc., Case No. 1:20-cv-00717-ADA (W.D. Tex.), retrieved June 14,
`2021.
`PACER Docket Report, Broadband iTV, Inc. v. DISH Network,
`LLC, Case No. 6:19-cv-00716-ADA (W.D. Tex.), retrieved June
`14, 2021.
`Court’s Memorandum Opinion and Order, Broadband iTV, Inc. v.
`DISH Network, LLC, Case No. 6:19-cv-00716-ADA (W.D. Tex.),
`Apr. 20, 2021.
`Court’s Claim Construction Order, Broadband iTV, Inc. v. DISH
`Network, LLC, Case No. 6:19-cv-00716-ADA (W.D. Tex.), Nov.
`20, 2020.
`Joint Motion to Amend Certain Scheduling Order Deadlines,
`Broadband iTV, Inc. v. AT&T Services, Inc., Case No. 1:20-cv-717-
`AD (W.D. Tex.), June 8, 2021.
`Thirteenth Supplemental Order Regarding Court Operations Under
`the Exigent Circumstances Created by the COVID-19 Pandemic
`(W.D. Tex.) (Feb. 2, 2021).
`Fourteenth Supplemental Order Regarding Court Operations Under
`the Exigent Circumstances Created by the COVID-19 Pandemic
`(W.D. Tex.) (Mar. 17, 2021).
`Order Denying Motion to Stay Case, Kerr Machine Co. v. Vulcan
`Indus. Holdings, LLC, Case No. 6:20-cv-00200 (W.D. Tex.), April
`7, 2021.
`Joint Motion to Amend Certain Scheduling Order Deadlines,
`Broadband iTV, Inc. v. DISH Network, LLC, Case No. 6:19-cv-
`716-ADA (W.D. Tex.), June 11, 2021.
`
`2045
`
`2046
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`2047
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`2048
`
`2049
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`- iv -
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`Case IPR2021-00556
`U.S. Patent No. 10,028,026
`
`I.
`
`INTRODUCTION
`The Board should exercise its discretion and deny the Petition (Paper 1,
`
`“Pet.”) under 35 U.S.C. § 314(a) and Apple Inc. v. Fintiv, Inc., IPR2020-00019,
`
`Paper 11 (P.T.A.B. Mar. 20, 2020) (precedential) (“Fintiv”). On February 19,
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`2021, AT&T Services, Inc. and DIRECTV, LLC (collectively, “AT&T”) filed a
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`“copycat” petition seeking to join IPR2020-01267, which the Board instituted on
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`January 21, 2021. DISH Network L.L.C. v. Broadband iTV, Inc., IPR2020-01267,
`
`Decision on Institution (P.T.A.B. Jan. 21, 2021) (“DISH IPR”); id., Paper 25
`
`(P.T.A.B. Apr. 1, 2021) (rehearing denied). In the DISH IPR, the Board weighed
`
`the Fintiv factors but did not exercise its discretion, primarily because (i) DISH
`
`had filed a motion for venue transfer of its parallel district court case from the
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`Western District of Texas to the District of Colorado, which was pending when the
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`Board issued the institution decision and its decision on rehearing, and (ii) the
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`Board found DISH was diligent in filing its petition (the merits of which AT&T
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`copied and filed here). DISH IPR, DI at 14-18, 20-21; id., Paper 25 at 7-12.
`
`As with DISH, AT&T and Patent Owner are involved in co-pending district
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`court litigation in the Western District of Texas involving U.S. Patent No.
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`10,028,026, which is proceeding under the same schedule as the DISH case and is
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`scheduled for jury trial in November 2021 (about two months after an institution
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`decision is due in this proceeding).1 But unlike DISH, the issues leading the Board
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`to institute the DISH IPR are not present here. First, DISH’s motion for venue
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`transfer was denied, and AT&T did not move for venue transfer in its parallel case.
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`Second, AT&T was indisputably not diligent in petitioning for review of the
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`’026 patent. AT&T did not file a petition with its own merits arguments before
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`Section 315(b)’s one-year statutory bar expired, and waited until the end of the
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`period for seeking joinder before filing its copycat Petition. Notably, AT&T waited
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`to see how the Board would rule in the DISH IPR and had access to Patent
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`Owner’s subsequent arguments on rehearing (filed February 3, 2021), gaining
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`significant advantage before AT&T took any action. AT&T now seeks to
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`capitalize on that advantage, using the DISH IPR as a roadmap, as demonstrated by
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`the Fintiv arguments it advanced in the Petition. See Pet., 8-11. AT&T should not
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`be rewarded for its gamesmanship, particularly considering the specific facts and
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`circumstances surrounding the DISH and AT&T litigations.
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`In brief, the Fintiv factors strongly favor denying AT&T’s Petition in light
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`of the co-pending DISH and AT&T cases. At least because AT&T seeks to join the
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`1 On June 8, 2021, Patent Owner and AT&T jointly moved to extend the
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`close of expert discovery by a week, from August 5 to August 12, 2021. EX2045;
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`see also EX2049 (similar joint motion to extend expert discovery in the DISH
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`case).
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`DISH IPR and admittedly presents the same invalidity grounds, the Board should
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`consider both district court cases when evaluating the Fintiv factors here. To that
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`end, the Board should deny institution because:
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`• Factor 1: Neither AT&T nor DISH has requested stay in their
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`respective cases, and stay is highly unlikely.
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`• Factor 2: Two jury trials involving the same or substantially the same
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`validity issues are scheduled to be conducted in November 2021, well
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`before the final written decision is due in the DISH IPR.
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`• Factor 3: The parties and the district court have invested significant
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`resources in the parallel cases, which are currently deep in discovery.
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`• Factor 4: The grounds in the Petition significantly, if not entirely,
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`overlap with the invalidity contentions advanced in the DISH and
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`AT&T district court cases, and AT&T was far from diligent in filing
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`the instant Petition.
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`• Factor 5: The parties before the Board and district court are the same.
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`• Factor 6: And as demonstrated in Patent Owner’s recent filings in the
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`DISH IPR, DISH’s merits arguments are fatally flawed.
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`Applying the Fintiv analysis thus overwhelmingly demonstrates that the
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`Board should exercise its discretion to deny AT&T’s Petition. Additionally, the
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`concerns for fundamental fairness undergirding General Plastic Industrial Co.,
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`U.S. Patent No. 10,028,026
`Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (P.T.A.B. Sept. 6,
`
`2017) and Apple Inc. v. Uniloc 2017 LLC, IPR2020-00854, Paper 9 (P.T.A.B. Oct.
`
`28, 2020)—disfavoring the wait-and-see approach and using a party’s or the
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`Board’s positions as a roadmap to advance a challenge at the Board—further
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`demonstrate that exercising discretion is warranted here.
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`II. THE BOARD SHOULD DENY THE PETITION UNDER FINTIV.
`The Board “is free … to determine that for reasons of administrative
`
`efficiency an IPR will not be instituted, as agencies generally are free, for similar
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`reasons, to choose not to initiate enforcement proceedings.” Mylan Labs. Ltd. v.
`
`Janssen Pharmaceutica, N.V., 989 F.3d 1375, 1382 (Fed. Cir. 2021); see also 35
`
`U.S.C. § 314(a); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016)
`
`(“[T]he agency’s decision to deny a petition is a matter committed to the Patent
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`Office’s discretion.”).
`
`“To join a party to an instituted IPR, the plain language of § 315(c) requires
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`two different decisions.” Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d
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`1321, 1332 (Fed. Cir. 2020). First, the Board “determine[s] whether the joinder
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`applicant’s petition for IPR ‘warrants’ institution under § 314.” Id. Second, if the
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`petition warrants institution, the Board then “decide[s] whether to ‘join as a party’
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`the joinder applicant.” Id. In short, before determining whether to join Petitioner
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`AT&T as a party to the DISH IPR, the Board should first determine whether the
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`petition warrants institution under § 314(a). See LG Elecs., Inc. v. Ancora Techs.,
`
`Inc., IPR2021-00581, Paper 16, 6 (P.T.A.B. June 10, 2021); Apple Inc., IPR2020-
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`00854, Paper 9 at 8.
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`Under Section 314(a), the Board has discretion to deny instituting a petition
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`in light of “events in other proceedings related to the same patent, either at the
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`Office, in district courts, or the ITC.” November 2019 Consolidated Trial Practice
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`Guide (“TPG”), 58. The Board applies the following factors, enumerated in the
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`precedential order in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (P.T.A.B.
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`Mar. 20, 2020), when determining whether to exercise its discretion in light of
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`parallel district court litigation:
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`1) whether the court granted a stay or evidence exists that one may be
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`granted if a proceeding is instituted;
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`2) proximity of the court’s trial date to the Board’s projected statutory
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`deadline for a final written decision;
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`3) investment in the parallel proceeding by the court and the parties;
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`4) overlap between issues raised in the petition and in the parallel
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`proceeding;
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`5) whether the petitioner and the defendant in the parallel proceeding are
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`the same party; and
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`6) other circumstances that impact the Board’s exercise of discretion,
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`including the merits.
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`Fintiv, Paper 11 at 6. “These factors relate to whether efficiency, fairness, and the
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`merits support the exercise of authority to deny institution in view of an earlier trial
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`date in the parallel proceeding.” Id.
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`The Board should exercise its discretion under Section 314(a) and Fintiv,
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`and deny institution of AT&T’s Petition. The ’026 patent is involved in two
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`parallel district court cases before Judge Alan Albright in the U.S. District Court
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`for the Western District of Texas: the DISH case (No. 6-19-cv-00716) and the
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`AT&T case (No. 1-20-cv-00717). See also EX2010. These cases involve the same
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`parties, issues, arguments, and evidence that AT&T presented in its copycat
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`Petition (and that DISH presented in the copied petition). Both district court cases
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`are proceeding under the same (or nearly the same) schedule, with jury trial
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`scheduled for November 2021. EX1019; EX2011; EX2045; EX2049. Judge
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`Albright has repeatedly confirmed he intends to conduct jury trials in November
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`2021, and he has been successfully conducting jury trials since October 2020.
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`EX2018; EX2019; see also EX2007; EX2008; EX2009; EX2046; EX2047 (last
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`standing order regarding court operations).
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`In July 2020, DISH filed two petitions against the ’026 patent. On January
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`21, 2021, the Board granted review of the ’026 patent in IPR2020-01267. See
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`DISH IPR, DI. On February 3, 2021, Patent Owner requested rehearing of the
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`Board’s Fintiv analysis. DISH IPR, Paper 18. And on February 19, 2021—only
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`about nine months before the November 2021 jury trials in the parallel DISH and
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`AT&T cases, and having the benefit of Patent Owner’s arguments—AT&T filed
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`its copycat Petition and motion to join the DISH IPR.
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`While the facts and circumstances surrounding the AT&T case alone
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`warrant discretionary denial, the Board should consider both the DISH and AT&T
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`cases when deciding whether to institute AT&T’s Petition. In filing a copycat
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`Petition and motion for joinder, AT&T hitched its wagon directly to the DISH IPR
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`and indirectly to the DISH district court case, in which DISH presented the same
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`invalidity grounds as in the DISH IPR. Accordingly, AT&T’s ties to the DISH case
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`are much stronger than in other cases where the Board has denied institution in
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`light co-pending district court litigation between the patent owner and a third party.
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`Mylan is one such case and is instructive here. Mylan Labs. Ltd. v. Janssen
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`Pharmaceutica, N.V., IPR2020-00440, Paper 17 (P.T.A.B. Sept. 16, 2020); Mylan
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`Labs. Ltd., 989 F.3d 1375 (mandamus denied). The Board in Mylan analyzed the
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`Fintiv factors in light of two parallel district court cases: one between the parties to
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`the IPR (the “Mylan litigation”), the other between the patent owner and third-
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`party Teva (the “Teva litigation”). Mylan Labs. Ltd., IPR2020-00440, Paper 17 at
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`9-11. Finding that the facts and circumstances of the Teva litigation warranted
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`denial, the Board denied institution of Mylan’s petition. See id. at 16-21.
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`Fitbit is also instructive. Fitbit, Inc. v. Philips N. Am., LLC, IPR2020-00828,
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`Paper 13 (P.T.A.B. Nov. 3, 2020). There, the Board considered two separate
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`litigations: one between the parties to the IPR (the “Fitbit litigation”), the other
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`between the patent owner and third-party Garmin (the “Garmin litigation”).
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`Considering the facts and circumstances of both cases, the Board again evaluated
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`the Fintiv factors and exercised its discretion to deny institution. See id., 12-16.
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`Notably, despite having the benefit of knowing Patent Owner’s Finitv
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`arguments before filing its Petition, see DISH IPR, DI; id., Paper 18, AT&T does
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`not even attempt to distinguish Mylan or Fitbit or explain why the Board should
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`not consider the DISH district court case (in addition to AT&T’s case).
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`Accordingly, both the facts and the law strongly favor denying AT&T’s
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`Petition in light of the parallel DISH and AT&T cases. Below, each Fintiv factor is
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`analyzed with respect to both district court cases. But, again, the facts and
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`circumstances surrounding the AT&T Petition alone warrant denial; the DISH IPR
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`and district court litigation compound the case for discretionary denial.
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`A.
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`Factor 1 strongly favors denial because neither parallel district
`court case has been stayed and all the evidence indicates that
`Judge Albright would not grant a stay.
`In the DISH IPR, the Board found that factor 1 was neutral. DISH IPR, DI at
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`12-14; id., Paper 25 at 6. For the reasons discussed below—including that (i) the
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`parallel cases have advanced much further than at the time of the January 21, 2021
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`DI in the DISH IPR and (ii) there is still no evidence that either case will be
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`stayed—factor 1 strongly favors discretionary denial.
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`Factor 1 asks “whether the court granted a stay or evidence exists that one
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`may be granted if a proceeding is instituted.” Fintiv, Paper 11 at 6. Fintiv also
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`articulated this factor as evaluating “whether a stay exists or is likely to be granted
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`if a proceeding is instituted.” Id. (heading). In both articulations, the latter half of
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`this factor requires a panel to review any proffered evidence, particularly case-
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`specific evidence, and predict whether a stay is likely to be granted if a proceeding
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`is instituted. The stay factor does not require a panel to engage in speculation, but
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`rather in an evidence-based assessment of the facts for a given case.
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`Neither parallel district court case has been stayed, and AT&T presents no
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`evidence that any stay may be sought or granted. Rather, the evidence indicates
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`that Judge Albright has not and would not grant a stay even though the Board
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`instituted review in the DISH IPR. See EX2041; EX2042.
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`During an August 31, 2020 teleconference between the parties and the court,
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`Judge Albright stated his views that an IPR is “independent of” and does not affect
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`the parallel litigation. EX2003, 13:13-22. He further indicated, “I feel like
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`everyone oughta get a jury trial in front of an Article III judge.” Id.; see also
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`EX2004, 1. Judge Albright’s statements are strong evidence that he would not
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`grant a stay even if AT&T and DISH moved for stay in their respective cases.
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`Judge Albright’s orders denying motions for stay in Continental v. Sand
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`Revolution and Kerr v. Vulcan provide further evidence confirming that Judge
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`Albright would not stay the parallel litigation in view of the Board’s institution
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`decision. EX2005; EX2006; EX2048. The court’s July 22, 2020 Order in
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`Continental v. Sand Revolution followed on the heels of the Board reversing course
`
`and instituting review in Sand Revolution II, LLC v. Cont’l Intermodal Grp.-
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`Trucking LLC, IPR2019-01393, Paper 24 (P.T.A.B. June 16, 2020) (“Sand
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`Revolution”) (informative). Despite the instituted IPR, the court denied
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`Defendants’ motion to stay because, among other reasons, it “strongly believes [in]
`
`the Seventh Amendment” and the “Plaintiff opposes the stay.” EX2005.
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`The court’s August 2, 2020 and April 7, 2021 Orders in Kerr v. Vulcan cited
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`similar reasons for denying a motion to stay filed before the Board issued
`
`institution decisions and a renewed motion to stay after the Board’s institution
`
`decision. EX2006; EX2048. The Kerr Orders are notable because the court stated a
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`reason for denial was that “the Court anticipates that the trial date will occur
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`before” the Board’s final written decisions and would provide a more “complete
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`resolution of the issues including infringement, all potential grounds of invalidity,
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`and damages.” EX2006; EX2048, 4-5. BBiTV would oppose any motion to stay
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`the parallel cases pending IPR.
`
`Finally, there is no evidence that Judge Albright would stay either AT&T’s
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`or DISH’s case. The Board in Mylan found that a stay was unlikely to be granted
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`due to the advanced stage of the litigations and weighed factor 1 towards denying
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`institution without either party indicating a pending motion for a stay or an
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`intention (or even contemplation) to file a motion in either litigation. See Mylan
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`Labs. Ltd., IPR2020-00440, Paper 17 at 13-14; see also Cisco Sys., Inc. v. Oyster
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`Optics, LLC, IPR2021-00238, Paper 10 at 11 (P.T.A.B. June 1, 2021) (“We know
`
`of no authority treating as a prerequisite that Petitioner must already have filed a
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`motion for stay or have represented that it will be filing a motion for stay in related
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`district court litigation[.]”). Similarly, there is no pending motion to stay and any
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`motion would unlikely be granted due to the advanced stage of the parallel
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`litigation.
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`Unlike the panels in Sand Revolution and Fintiv II, which could not predict
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`whether a stay was likely because the record lacked specific evidence, here there is
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`specific evidence demonstrating that stays of the district court cases are highly
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`U.S. Patent No. 10,028,026
`unlikely. Sand Revolution, IPR2019-01393, Paper 24 at 7 (informative) (“In the
`
`absence of specific evidence, we will not attempt to predict how the district court
`
`in the related district court litigation will proceed because the court may determine
`
`whether or not to stay any individual case, including the related one, based on a
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`variety of circumstances and facts beyond our control and to which the Board is
`
`not privy.”)2; Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (P.T.A.B.
`
`May 13, 2020) (informative) (“Fintiv II”) (“We decline to infer, based on actions
`
`taken in different cases with different facts, how the District Court would rule
`
`should a stay be requested by the parties in the parallel case here.”). Judge Albright
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`has clarified that there will not be any delay, such as a stay, and trial will begin on
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`November 15, 2021, months before the Board’s FWD, continuing the risk of
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`duplication and inconsistency between the tribunals.
`
`Because stay has neither been requested nor granted in the parallel cases,
`
`and the evidence strongly indicates that no stay would be granted, Fintiv factor 1
`
`weighs strongly in favor of denial.
`
`B.
`
`Factor 2 strongly favors denial because the trials will begin long
`before the FWD deadline, and Judge Albright has repeatedly
`confirmed, “We’re going to go to trial.”
`In the DISH IPR, the Board held that factor 2, at best, slightly favored
`
`exercising discretion, finding that (i) DISH’s then-pending transfer motion and (ii)
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`2 Emphasis added unless otherwise noted.
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`alleged uncertainty due to docket congestion and COVID-19 cut against exercising
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`discretion. DISH IPR, DI at 14-18; id., Paper 25 at 6-8. For the reasons discussed
`
`below—including that DISH’s transfer motion was denied and, in denying the
`
`motion, Judge Albright dispelled any speculation about the ability of his court to
`
`conduct jury trials—factor 2 strongly favors discretionary denial. EX2043, 11.
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`When “the court’s trial date is earlier than the projected statutory deadline,
`
`the Board generally has weighed this fact in favor of exercising authority to deny
`
`institution under NHK.” Fintiv, IPR2020-00019, Paper 11 at 9. Numerous Board
`
`decisions, including the Board’s informative Decision Denying Institution in Fintiv
`
`(following the precedential Order in Fintiv), have held that trial between two and
`
`three months before the FWD deadline weighs in favor of denying institution.
`
`Fintiv II, IPR2020-00019, Paper 15 (informative) (two months); E-One, Inc. v.
`
`Oshkosh Corp., IPR2019-00161, Paper 16 (P.T.A.B. May 15, 2019) (one month);
`
`E-One, Inc. v. Oshkosh Corp., IPR2019-00162, Paper 16 (P.T.A.B. June 5, 2019)
`
`(one month); Netflix, Inc. et al. v. Uniloc 2017 LLC, IPR2020-00008, Paper 13
`
`(P.T.A.B. Apr. 13, 2020) (two months); Next Caller Inc. v. TRUSTID, Inc.,
`
`IPR2019-00961, Paper 10 (P.T.A.B. Oct. 16, 2019) (three months); Next Caller
`
`Inc. v. TRUSTID, Inc., IPR2019-00962, Paper 10 (P.T.A.B. Oct. 16, 2019) (three
`
`months); Next Caller Inc. v. TRUSTID, Inc., IPR2019-00963, Paper 8 (P.T.A.B.
`
`Oct. 28, 2019) (three months); see also U.S. Venture, Inc. v. Sunoco Partners
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`Mktg. & Terminals L.P., IPR2020-00728, Paper 10 at 8-9 (P.T.A.B. Oct. 1, 2020)
`
`(finding that factor 2 favored denial where the trial date was not set but the Board
`
`estimated trial “some three or four months before we issue our final decision”);
`
`Intel Corp. v. VLSI Tech. LLC, IPR2020-00582, Paper 19 at 6-7 (P.T.A.B. Oct. 1,
`
`2020) (finding that factor 2 favored denial where the trial date was not set but
`
`was “likely to occur months before any final written decision”); Fitbit, Inc.,
`
`IPR2020-00828, Paper 13 at 8-11 (considering two litigations, one between patent
`
`owner Philips and IPR petitioner Fitbit, the other between Philips and third party
`
`Garmin, and finding that although the Fitbit trial date was not set, the Garmin trial
`
`“will take place several months prior to the final decision”).
`
`Factor 2 strongly favors denial because the district court’s trial date is set for
`
`just two months after the Board’s Institution Decision in this proceeding and
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`anywhere from over two months to eight months before the Board’s projected
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`statutory deadline for issuing a FWD in the DISH IPR. When there is a motion for
`
`joinder, the Board evaluates the proximity of the court’s trial date to the Board’s
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`projected statutory deadline at the time of the instant proceeding’s Institution
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`Decision. LG Elecs., Paper 16 at 8 (“Here, as of the time of this Decision, the
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`parallel trial in the LG case would appear to have already started, more than eight
`
`months before a Final Written Decision would be due in the proceeding which
`
`Petitioner seeks to join.” (emphasis in original)). The Board’s Institution Decision
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`in this case is due September 15, 2021. See 35 U.S.C. § 314(b) (a decision on
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`institution is due “within 3 months after … receiving a preliminary response to the
`
`petition”).
`
`Pending AT&T’s motion to join the DISH IPR, the projected statutory
`
`deadline to issue a FWD is January 21, 2022, but this deadline would be
`
`extendable up to six months if AT&T is joined. See 35 U.S.C. § 316(a)(11) (setting
`
`the deadline to issue a final written decision “not later than 1 year after the date on
`
`which the Director notices the institution of a review…except that the Director
`
`may, for good cause shown, extend the 1-year period by not more than 6 months,
`
`and may adjust the time periods in this paragraph in the case of joinder under
`
`section 315(c)”). The district court jury trials are scheduled to begin November 15,
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`2021, anywhere from over two months to eight months before the projected
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`deadline for issuing a FWD in the DISH IPR. EX2011; Pet., 9 (conceding
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`“AT&T’s trial date is also set for November 2021 in the same court as DISH.”);
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`see id. (further conceding “AT&T has no transfer motion on file”); LG Elecs.,
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`Paper 16 at 8 (finding factor 2 weighed against institution since the parallel trial
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`would start more than eight months before a FWD).
`
`Further strengthening the case for denial under factor 2, Judge Albright has
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`repeatedly and unambiguously stated that the parallel cases will proceed to trial
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`without delay. EX2003, 8:10-13, 8:24-9:19, 11:17-20. During the August 31, 2020
`
`teleconference between the parties and the Court, Judge Albright stated:
`
`THE COURT: So let me say this on the record. I’m going to trial.
`… And I don’t know what might have led anyone in this case … to
`believe that I would push back the trial in this case. It’s not going to
`be delayed. We’re going to go to trial.
`
`EX2003, 8:22-9:3; see also id., 9:15-18 (“So I’m slightly uncertain of
`
`whatever that underlying issues were that raised concern on anyone’s part
`
`about me moving the trial date, but that’s not going to happen.”). Judge
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`Albright also clarified that, when his court moved trial dates in other cases, it
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`was only in response to joint requests from the litigants: “The Court has
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`moved a couple of trial dates, and I think 100 percent of the time, it was
`
`because the parties jointly requested us to do so.” Id., 8:10-13.
`
`As mentioned, in the DISH district court case, DISH moved for venue
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`transfer to the District of Colorado. On April 20, 2021, Judge Albright denied
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`DISH’s motion, rejecting DISH’s arguments that the district court schedule might
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`be affected by the COVID-19 pandemic:
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`On the contrary, this Court held a Markman hearing for this case on
`November 13, 2020 in the middle of the pandemic. Further, this Court
`has demonstrated its capability of conducing in-person jury trials in a
`safe and efficient manner in the COVID-19 pandemic. This Court
`held its first patent jury trial in October 2020, and has held three
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`more in-person jury trials in the first quarter of 2021 already.
`Thus,
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