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
`____________
`
`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
`____________
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW IPR2020-01267
`
`
`
`I.
`II.
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`STATEMENT OF REASONS FOR RELIEF REQUESTED ........................ 2
`A.
`Legal Standard ....................................................................................... 2
`B.
`The Four Factors Favor Joinder ............................................................ 3
`1.
`Reasons Why Joinder is Appropriate .......................................... 4
`2.
`Petitioners Do Not Propose New Grounds of Unpatentability ... 5
`3.
`Joinder Will Not Negatively Impact the DISH IPR Schedule .... 5
`4.
`Discovery and Briefing Can Be Simplified ................................ 6
`5.
`Joinder Will Result in No Prejudice to Patent Owner ................ 8
`III. CONCLUSION ................................................................................................ 8
`
`i
`
`
`
`I.
`
`INTRODUCTION
`AT&T Services, Inc. and DIRECTV, LLC (collectively “Petitioners” or
`
`“AT&T”) respectfully submit this Motion for Joinder, concurrently with a Petition
`
`(“AT&T’s Petition”) for inter partes review of U.S. Patent No. 10,028,026 (“the
`
`’026 Patent”).
`
`Pursuant to 35 U.S.C. ¶ 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b),
`
`AT&T requests institution of inter partes review and joinder with IPR2020-01267
`
`(“DISH IPR”), which was instituted on January 21, 2021. DISH Network L.L.C. v.
`
`Broadband iTV, Inc., IPR2020-01267, Paper 15 (PTAB Jan. 21, 2021). The instant
`
`Petition is substantially identical to the DISH Petition; it involves the same claims
`
`of the same patent, the same grounds of unpatentability, and the same supporting
`
`evidence. This Motion for Joinder and AT&T’s Petition are timely because they
`
`are being filed less than one month after the January 21, 2021 decision instituting
`
`trial in the DISH IPR. See 37 C.F.R. § 42.122(b).
`
`AT&T’s Petition and Motion for Joinder are being filed to ensure that a
`
`petitioner remains to complete the trial if DISH Network L.L.C. (“DISH”) reaches
`
`a settlement with the Patent Owner or is otherwise terminated from the proceeding.
`
`Upon joining the DISH IPR proceeding, AT&T will act as an “understudy” and
`
`will not assume an active role unless DISH ceases to participate. No new grounds
`
`are being raised by AT&T, and no alteration of the DISH IPR schedule will be
`
`
`
`necessary due to the joinder of AT&T. The joinder will promote judicial efficiency
`
`in determining the patentability of the ’026 Patent without prejudice to the Patent
`
`Owner.
`
`AT&T has notified counsel for DISH and counsel for Patent Owner
`
`regarding the subject of this motion. Counsel for DISH indicated that DISH will
`
`not oppose this motion. Counsel for Patent Owner has indicated that Patent Owner
`
`will oppose this motion.
`
`In light of the similarities of the proceedings, the potential benefit to the
`
`public and the Board that would accrue by AT&T’s participation in the DISH IPR
`
`proceeding in the event that DISH’s participation terminates unexpectedly, and the
`
`lack of prejudice to Patent Owner, Petitioner respectfully requests that the Board
`
`join AT&T as a party to the DISH IPR.
`
`II.
`
`STATEMENT OF REASONS FOR RELIEF REQUESTED
`A.
`Legal Standard
`Per 35 U.S.C. § 315(c), the Board may grant a motion for joining a
`
`petitioner for inter partes review to another inter partes review proceeding. See 35
`
`U.S.C. § 315(c). In determining whether to exercise its discretion to grant a motion
`
`for joinder, the Board considers: (1) reasons why joinder is appropriate; (2) any
`
`new grounds of unpatentability asserted in the petition; (3) what impact (if any)
`
`joinder would have on the trial schedule for the existing review; and (4)
`
`2
`
`
`
`specifically how briefing and discovery may be simplified. See Dell, Inc. v.
`
`Network-1 Security Solutions, Inc., IPR2013-00385, Paper 17 at 3 (July 29, 2013).
`
`AT&T addresses each of these points below.
`
`A petitioner may request joinder, without prior authorization, up to one
`
`month after the institution date of the proceeding to which joinder is requested. 37
`
`C.F.R. § 42.122(b); Taiwan Semiconductor Mfg. Co., Ltd. v. Zond LLC, IPR2014-
`
`00781 and IPR2014-00782, Paper 5 at 3 (PTAB May 29, 2014). AT&T’s Petition
`
`and this motion are being filed within one month of the Board’s decision instituting
`
`trial in the DISH IPR on January 21, 2021. This motion is therefore timely. See,
`
`e.g., Biotronik, Inc. v. Atlas IP LLC, IPR2015-00534, Paper 10 (PTAB Feb. 25,
`
`2015) (granting motion for joinder filed concurrently with institution of IPR
`
`review).
`
`The Four Factors Favor Joinder
`B.
`Each of the four factors weigh in favor of granting AT&T’s Motion for
`
`Joinder. AT&T’s Petition is substantively identical to the petition in the DISH IPR.
`
`AT&T’s Petition does not present any new grounds of unpatentability. And
`
`because AT&T agrees to take on an “understudy” role in the DISH IPR
`
`proceeding, joinder will have minimal or no impact on the pending schedule of the
`
`DISH IPR. See Sony Corp. v. Memory Integrity, LLC., IPR2015-01353, Paper No.
`
`11 at 6-9 (PTAB Oct. 5, 2015) (granting motion for joinder where petitioner agreed
`
`3
`
`
`
`to an “understudy” role). Moreover, the briefing and discovery will be simplified
`
`by resolving all issues in a single proceeding.
`
`Reasons Why Joinder is Appropriate
`1.
`AT&T seeks to join the DISH IPR proceeding in order to ensure that an
`
`accused infringer with an active interest in the proceeding remains a party to this
`
`Trial in the event that DISH’s participation is terminated prior to completion.
`
`Accordingly, joining AT&T to the DISH IPR proceeding is the most practical way
`
`to secure the just, speedy, and inexpensive resolution of the challenge to the ’026
`
`Patent. See 37 C.F.R. § 42.1(b).
`
`Joinder is appropriate because AT&T’s Petition does not raise any new
`
`grounds of unpatentability and does not create any issues that might complicate or
`
`delay the DISH IPR proceeding. The Board “routinely grants motions for joinder
`
`where the party seeking joinder introduces identical arguments and the same
`
`grounds raised in the existing proceeding.” Samsung Elecs. Co., Ltd. v. Raytheon
`
`Co., IPR2016-00962, Paper 12 at 9 (PTAB Aug. 24, 2016) (internal quotations and
`
`citations omitted). Here, joinder with the DISH IPR is appropriate because
`
`AT&T’s 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). Therefore, good cause
`
`4
`
`
`
`exists for joining AT&T to the DISH IPR proceeding so that the Board can
`
`efficiently “secure the just, speedy, and inexpensive resolution” of AT&T’s and
`
`DISH’s petitions in a single proceeding. See 37 C.F.R. § 42.1(b).
`
`2.
`
`Petitioners Do Not Propose New Grounds of
`Unpatentability
`AT&T’s Petition is substantially identical to the petition in the DISH IPR.
`
`AT&T challenges the same claims of the ’026 Patent, based on the same invalidity
`
`grounds, and the same arguments. The same expert declarant is used, and the
`
`expert’s declarations in the two cases are identical. Further, unity of exhibits and
`
`exhibit numbering with the DISH IPR has also been maintained. Accordingly, no
`
`new grounds are being introduced and no disruption to the DISH IPR schedule is
`
`necessary to resolve the issues raised in AT&T’s Petition. See Sony Corp. v.
`
`Memory Integrity, LLC., IPR2015-01353, Paper No. 11 at 5-6 (PTAB Oct. 5, 2015)
`
`(granting motion for joinder where petitioners relied “on the same prior art, same
`
`arguments, and same evidence, including the same expert and a substantively
`
`identical declaration”).
`
`Joinder Will Not Negatively Impact the DISH IPR Schedule
`3.
`This motion is being filed within one month of the institution of the DISH
`
`IPR, and AT&T agrees to adhere to all applicable deadlines set forth in the DISH
`
`IPR Scheduling Order. The Patent Owner’s Response will not be negatively
`
`impacted because the issues in AT&T’s Petition are identical to the issues
`
`5
`
`
`
`presented in the DISH IPR petition. Patent Owner will thus not be required to
`
`provide any additional analysis or arguments beyond what it will already provide
`
`in response to the petition in the DISH IPR proceeding. AT&T is introducing no
`
`additional evidence or witnesses. Thus, no additional depositions will be needed.
`
`Accordingly, the trial schedule for the DISH IPR should not be adversely impacted
`
`by AT&T’s joinder.
`
`Discovery and Briefing Can Be Simplified
`4.
`Petitioner agrees to take an “understudy” role, which will simplify briefing
`
`and discovery. In this “understudy” role, AT&T agrees to the following conditions
`
`upon joining the DISH IPR proceeding (i.e., IPR2020-01267) so long as DISH
`
`remains an active party in that proceeding:
`
`(a) AT&T 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 AT&T;
`
`(b) AT&T shall not present any argument or make any presentation at oral
`
`hearing on issues not solely involving AT&T;
`
`(c) AT&T shall not seek to cross-examine or defend the cross-examination
`
`of any witness, unless the topic of cross-examination concerns issues solely
`
`involving AT&T; and
`
`6
`
`
`
`(d) AT&T shall not seek discovery from Patent Owner on issues not solely
`
`involving AT&T.
`
`See, e.g., Noven Pharm., Inc. v. Novartis AG, IPR2014-00550, Paper 38 at 5
`
`(PTAB April 10, 2015). Unless and until the current petitioner in IPR2020-01267
`
`ceases to participate in the instituted DISH IPR proceeding, AT&T will not assume
`
`an active role therein.1
`
`Accordingly, due to AT&T taking only an “understudy” role, Patent Owner
`
`and DISH can comply with the existing trial schedule without needing any
`
`duplicative efforts by the Board or the Patent Owner. These steps will minimize or
`
`eliminate any potential complications or delay that could potentially result from
`
`joinder. See Sony Corp. v. Memory Integrity, LLC., IPR2015-01353, Paper No. 11
`
`at 6-7 (PTAB Oct. 5, 2015) (granting motion because “joinder would increase
`
`efficiency by eliminating duplicative filings and discovery, and would reduce costs
`
`and burdens on the parties as well as the Board” where second petitioner agreed to
`
`“understudy” role). AT&T will also abide by any additional conditions the Board
`
`deems appropriate for an “understudy” role.
`
`1 For clarity, should DISH’s participation in this IPR proceeding terminate, AT&T
`would take over primary responsibility for subsequent filings and discovery.
`
`7
`
`
`
`Joinder Will Result in No Prejudice to Patent Owner
`5.
`As noted above, AT&T’s joining of the DISH IPR proceeding should not
`
`result in any prejudice to Patent Owner.2 No additional grounds or arguments are
`
`being introduced, no new evidence or issues are being added, and no additional
`
`briefing should be necessary as a result of AT&T’s joinder. Thus, the Patent
`
`Owner would not need to expend any additional resources above and beyond those
`
`required in the current DISH IPR proceeding.
`
`III. CONCLUSION
`For the reasons given above, AT&T respectfully requests that its Petition for
`
`Inter Partes Review of the ’026 Patent be instituted and that AT&T be joined to
`
`the DISH IPR proceeding IPR2020-01267.
`
`2 Any argument that joinder may frustrate settlement between DISH and Patent
`
`Owner would not be a basis to deny joinder because the same possibility would
`
`exist in any joinder situation. Global Foundries U.S. Inc. v. Godo Kaisha IP
`
`Bridge 1, IPR2017-00925 and IPR2017-00926, Paper 13 at 10 (PTAB Jun. 9,
`
`2017).
`
`8
`
`
`
`Dated: February 19, 2021
`
`Respectfully submitted,
`BAKER BOTTS L.L.P.
`Attorney for Petitioners
`
` /s/ Roger Fulghum
`Roger Fulghum
`Reg. No. 39,678
`
`9
`
`
`
`CERTIFICATE OF SERVICE
`
`In accordance with 37 C.F.R. §§ 42.6(e), the undersigned certifies that on
`
`the 19th day of February, 2021, a complete and entire copy of PETITIONERS’
`
`MOTION FOR JOINDER was served on Patent Owner via Federal Express at the
`
`following correspondence addresses:
`
`AMSTER, ROTHSTEIN & EBENSTEIN LLP
`90 Park Avenue
`New York, NY 10016
`A courtesy copy was provided via Federal Express to Patent Owner’s lead
`
`counsel in the inter partes review proceeding DISH Network L.L.C. v. Broadband
`
`iTV, Inc., IPR2020-01267 pending before the Patent Trial and Appeal Board:
`
`Sal Lim
`Feinberg Day Kramer Alberti Lim Tonkovich & Beloli
`577 Airport Blvd., Suite 250
`Burlingame, CA 94010
`
`Michael D. Specht
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3932
`
`Kevin Greenleaf
`DENTONS US LLP
`1530 Page Mill Road, Suite 200
`Palo Alto, California 94304-1125
`
`10
`
`
`
`Additionally, a courtesy copy was provided via Federal Express to Patent
`
`Owner’s litigation counsel in the action Broadband iTV, Inc. v. AT&T Services,
`
`Inc. et al, Case No. 1:20-cv-717 pending between Petitioners and Patent Owner
`
`and involving the ’026 Patent:
`
`Jack Wesley Hill
`Ward, Smith & Hill PLLC
`1507 Bill Owens Pkwy
`Longview, TX 75604
`
`
`
`Dated: February 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
`
`11
`
`
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