Trials@uspto.gov
`571-272-7822
`
`Paper 14
`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.
`
`IPR2021-00556
`Patent 10,028,026 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
`1–16 of U.S. Patent No. 10,028,026 B2 (Ex. 1001, “the ’026 patent”)
`
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`IPR2021-00556
`Patent 10,028,026 B2
`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 IPR2020-01267 (“the DISH IPR”), which also involves claims 1–16 of
`the ’026 patent. Paper 3 (“Mot.”). Patent Owner Broadband iTV, Inc. filed
`an Opposition to Petitioner’s Motion for Joinder. Paper 9 (“Opposition” or
`“Opp.”). 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 12 (“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.
`
`
`B. Related Matters
`The parties indicate that the ’026 patent is the subject of Broadband
`iTV, Inc. v. DISH Network L.L.C., Case No. 6:19-cv-716 (W.D. Tex.)1
`(“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
`
`
`1 We refer to the United States District Court for the Western District of
`Texas as “the Texas court.”
`
`2
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`IPR2021-00556
`Patent 10,028,026 B2
`Broadband iTV, Inc. v. AT&T Services, Inc., Case No. 1:20-cv-717
`(W.D. Tex.) (“the AT&T case”). See Pet. 4–5; Paper 5, 1.
`DISH Network L.L.C. (“DISH”) previously filed a petition
`challenging claims 1–16 of the ’026 patent in the DISH IPR. DISH also
`filed a second petition challenging the same claims in Case IPR2020-01268,
`which was denied. DISH filed petitions challenging claims of related
`patents asserted in the district court cases in Cases IPR2020-01280
`(granted), IPR2020-01281 (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 IPR2021-00603 and IPR2021-00649.
`Two different petitioners previously filed petitions challenging claims
`of a parent patent to the ’026 patent, U.S. Patent No. 7,631,336 B2, in
`Cases IPR2014-01222 and CBM2014-00189, both of which were denied.
`See Pet. 6; Paper 5, 2.
`
`
`C. Illustrative Claim
`Challenged claim 1 of the ’026 patent is independent. Claims 2–16
`depend, directly or indirectly, from claim 1. Claim 1 recites:2
`1. An Internet-connected digital device for receiving, via
`the Internet, video content to be viewed by a subscriber of a
`video-on-demand system using a hierarchically arranged
`electronic program guide,
`the Internet-connected digital device being configured to
`obtain and present to the subscriber an electronic program guide
`
`
`2 Claim 1 was corrected in two certificates of correction dated December 4,
`2018, and February 12, 2019. Ex. 1001.
`
`3
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`IPR2021-00556
`Patent 10,028,026 B2
`as a templatized video-on-demand display, which uses at least
`one of a plurality of different display templates to which the
`Internet-connected digital device has access, to enable a
`subscriber using the Internet-connected digital device to navigate
`in a drill-down manner through titles by category information in
`order to locate a particular one of the titles whose associated
`video content is desired for viewing on the Internet-connected
`digital device using the same category information as was
`designated by a video content provider in metadata associated
`with the video content;
`wherein the templatized video-on-demand display has
`been generated in a plurality of layers, comprising:
`(a) a first layer comprising a background screen to provide
`at least one of a basic color, logo, or graphical theme to display;
`(b) a second layer comprising a particular display template
`from the plurality of different display templates layered on the
`background screen, wherein the particular display template
`comprises one or more reserved areas that are reserved for
`displaying content provided by a different layer of the plurality
`of layers; and
`(c) a third layer comprising reserved area content
`generated using the received video content, the associated
`metadata and an associated plurality of images to be displayed in
`the one or more reserved areas in the particular display template
`as at least one of text, an image, a navigation link, and a button,
`wherein the navigating through titles in a drill-down
`manner comprises navigating from a first level of the hierarchal
`structure of a video-on-demand content menu to a second level
`of the hierarchical structure to locate the particular one of the
`titles, and
`wherein a first template of the plurality of different display
`templates is used as the particular display template for the
`templatized display for displaying the first level of the
`hierarchical structure and wherein a second template of the
`plurality of different display templates is used as the particular
`display template for the templatized display for displaying the
`second level of the hierarchical structure,
`
`4
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`IPR2021-00556
`Patent 10,028,026 B2
`wherein the received video content was uploaded to a
`Web-based content management system by a content provider
`device associated with the video content provider via the Internet
`in a digital video format, along with associated metadata
`including title information and category information, and along
`with the associated plurality of images designated by the video
`content provider, the associated metadata specifying a respective
`hierarchical location of a respective title of the video content
`within the electronic program guide to be displayed on the
`Internet-connected digital device using
`the
`respective
`hierarchically-arranged category information associated with the
`respective title,
`wherein at least one of the uploaded associated plurality of
`images designated by the video content provider is displayed
`with
`the associated respective
`title
`in
`the
`templatized
`video-on-demand display.
`
`
`D. Evidence
`Petitioner relies on the following prior art:
`U.S. Patent No. 8,434,118 B2, filed May 27, 2004, issued
`Apr. 30, 2013 (Ex. 1005, “Gonder”);
`U.S. Patent No. 7,159,233 B2, filed Jan. 29, 2001, issued
`Jan. 2, 2007 (Ex. 1006, “Son”); and
`U.S. Patent Application Publication No. 2001/0030667
`A1, published Oct. 18, 2001 (Ex. 1007, “Kelts”).
`
`
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`
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`IPR2021-00556
`Patent 10,028,026 B2
`E. Prior Art and Asserted Grounds
`Petitioner asserts that claims 1–16 of the ’026 patent are unpatentable
`on the following grounds:
`Claims Challenged
`1–16
`1–16
`
`References/Basis
`Gonder, Son4
`Gonder, Son, Kelts
`
`35 U.S.C. §
`103(a)3
`103(a)
`
`
`
`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.
`
`
`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 ’026 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.
`4 Petitioner asserts that claims 1–16 are unpatentable “over the combination
`of Gonder, Son, and/or Kelts, when considered in view of the knowledge of
`a person of ordinary skill in the art.” Pet. 7. As stated in the Decision on
`Institution in the DISH IPR, we understand Petitioner to be asserting two
`obviousness grounds, with Kelts applied solely in the alternative, and we do
`not include the general knowledge of a person of ordinary skill in the art in
`listing the grounds themselves, recognizing that such knowledge is
`considered in every obviousness analysis. See IPR2020-01267, Paper 15,
`10–11 n. 4 (“Decision on Institution” or “Dec. on Inst.”).
`
`6
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`IPR2021-00556
`Patent 10,028,026 B2
`“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,
`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. 1–31.
`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
`
`7
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`2.
`
`3.
`
`4.
`
`IPR2021-00556
`Patent 10,028,026 B2
`https://www.uspto.gov/TrialPracticeGuideConsolidated. We consider the
`following factors to assess “whether efficiency, fairness, and the merits
`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 ’026 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
`
`6.
`
`8
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`IPR2021-00556
`Patent 10,028,026 B2
`IPR Decision on Institution. Compare Pet. 1–4, 7, 11–73, with
`IPR2020-01267, Paper 1, 1–4, 6, 10–75.
`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 IPR2020-01267,
`Paper 9, 8–30; IPR2020-01267, 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 January 21, 2021. Dec. on Inst. 11–25, 61.
`Patent Owner filed a request for rehearing and suggestion for expanded
`panel review, arguing that we erred in our analysis of the Fintiv factors.
`IPR2020-01267, Paper 18. The Chief Judge determined that an expanded
`panel was not warranted and we denied Patent Owner’s request for
`rehearing. IPR2020-01267, Paper 25 (“Reh’g Dec.”).
`Specifically, in the DISH IPR, we determined that factor 1 was neutral
`to the exercise of our discretion. Dec. on Inst. 12–14. 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
`
`9
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`IPR2021-00556
`Patent 10,028,026 B2
`Dec. 6. After our decision on rehearing, the Texas court denied DISH’s
`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.
`14–18. 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 14. 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 approximately ten
`months from now 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 17 (citations omitted). With respect to the AT&T case, we found that
`the issues “effectively balance each other out” because although there was
`
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`IPR2021-00556
`Patent 10,028,026 B2
`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 trials
`have been delayed. Reh’g Dec. 6–8.
`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 receiving
`notice of Patent Owner’s infringement positions for all asserted claims . . .
`and prior to the parties exchanging proposed claim terms for construction
`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 Gonder, Son,
`and Kelts,” and, thus, the factor weighed in favor of discretionary denial.
`See Dec. on Inst. 21–23; Reh’g Dec. 12–13.
`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
`
`11
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`IPR2021-00556
`Patent 10,028,026 B2
`timing, but weighed against discretionary denial with respect to the AT&T
`case. See Dec. on Inst. 23; Reh’g Dec. 13–14.
`As to factor 6, we determined on the preliminary record that the
`merits of DISH’s case were “straightforward and strong, at least as to the
`asserted ground based on Gonder, Son, and Kelts, and Patent Owner [had]
`not yet made a persuasive response to [DISH’s] allegations.” Dec. on Inst.
`23–25. Accordingly, the merits weighed against discretionary denial. See
`id. at 24; Reh’g Dec. 14–16.
`Applying a holistic assessment of the Fintiv factors, we declined to
`deny institution under § 314(a). See Dec. on Inst. 25; 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. 8–11; Prelim. Resp. 1–31.
`Indeed, many of Patent Owner’s arguments regarding discretionary denial
`are substantially the same as those addressed in our previous decisions.
`Compare Prelim. Resp. 9–12 with IPR2020-01267, Paper 9, 14–16 (citing
`the same evidence regarding factor 1), and IPR2020-01267, Paper 18, 4–6;
`compare Prelim. Resp. 23–24 with IPR2020-01267, Paper 18, 7–8 (citing
`
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`IPR2021-00556
`Patent 10,028,026 B2
`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, 20–21, 29–31. 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
`February 19, 2021, within one month of our Decision on Institution in the
`DISH IPR on January 21, 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, 29–31; 157 CONG. REC. S1376 (daily ed. Mar. 8,
`2011) (statement of Sen. Kyl) (“The Office anticipates that joinder will be
`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
`
`13
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`IPR2021-00556
`Patent 10,028,026 B2
`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. 11; 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. 1–31.
`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
`’026 patent challenged in the Petition for the same reasons. See Dec. on
`Inst. 32–60. 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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`IPR2021-00556
`Patent 10,028,026 B2
`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. 4–5.
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`IPR2021-00556
`Patent 10,028,026 B2
`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 makes two arguments in its Opposition. First, Patent
`Owner argues that Petitioner “should not be joined because the underlying
`proceeding should be terminated” for the reasons stated in Patent Owner’s
`request for rehearing in the DISH IPR, or, alternatively, the Motion should
`be held in abeyance pending a decision on that request. Opp. 1–2. Patent
`Owner’s request for rehearing, however, was denied after the filing of the
`Opposition.
`Second, Patent Owner argues that the Motion should be denied based
`on Petitioner’s “gamesmanship” because Petitioner was sued for
`infringement of the ’026 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
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`IPR2021-00556
`Patent 10,028,026 B2
`[DISH IPR] was instituted” and then filed its Motion for Joinder. Id. at 2–4.
`According to Patent Owner, we “expressly declined to consider” the AT&T
`case and “relied on [Petitioner’s] absence from the [DISH IPR] in [the]
`decision to institute that proceeding in the first place.” Id. at 1, 3–4. Patent
`Owner contends that the Fintiv analysis would have been different if
`Petitioner had been a party. Id. at 3–5.
`We disagree. As explained above, we considered all of the arguments
`that Patent Owner made in its preliminary response and request for rehearing
`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. 13, 16, 18 n.5; Reh’g
`Dec. 5–8, 10–14. Thus, Patent Owner’s assertion that we declined to
`consider the AT&T case is incorrect. 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 do not rely at all on Petitioner’s main prior art
`reference, Gonder. See Reh’g Dec. 12–13. 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 considering the parties’ arguments and the evidence presented,
`we are persuaded that it is appropriate under these circumstances to join
`Petitioner to the DISH IPR. Petitioner challenges the same claims that are
`challenged in the DISH IPR on the same grounds using the same prior art
`and evidence. Mot. 4–5. Petitioner explicitly agrees that it will take an
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`IPR2021-00556
`Patent 10,028,026 B2
`“understudy” role in the DISH IPR and only assume an active role should
`DISH cease to participate. Id. at 6–7. Petitioner further has shown that the
`trial schedule will not be affected at all by joinder. Id. at 5–6. Thus, joinder
`to the DISH IPR would result in the just, speedy, and inexpensive resolution
`of Petitioner’s challenge. See 37 C.F.R. § 42.1(b).
`Accordingly, for the reasons discussed above, we grant Petitioner’s
`Motion for Joinder and join Petitioner as a party to the DISH IPR.
`
`
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 1–16 of the ’026 patent is instituted with respect to all
`grounds set forth in the Petition;
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4(b), inter partes review of the ’026 patent shall commence
`on the entry date of this Decision, and notice is hereby given of the
`institution of a trial;
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`Case IPR2020-01267 is granted, and Petitioner is hereby joined as
`petitioners in Case IPR2020-01267;
`FURTHER ORDERED that the grounds on which trial in
`Case IPR2020-01267 were instituted are unchanged, and no other grounds
`are added in Case IPR2020-01267;
`FURTHER ORDERED that the Scheduling Order entered in
`Case IPR2020-01267 (Papers 16, 44) and schedule changes agreed by the
`parties in Case IPR2020-01267 (pursuant to the Scheduling Order) shall
`govern the trial schedule in Case IPR2020-01267;
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`IPR2021-00556
`Patent 10,028,026 B2