UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`ALTICE USA, INC.,
`Petitioner,
`v.
`TOUCHSTREAM TECHNOLOGIES INC.,
`Patent Owner
`
`U.S. Patent No. 11,048,751
`Filing Date: August 25, 2017
`Issue Date: June 29, 2021
`Title: PLAY CONTROL OF CONTENT ON A DISPLAY DEVICE
`Inter Partes Review No. IPR2024-01263
`_____________________
`
`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c) and
`37 C.F.R. §§ 42.22 and 42.122(b)
`
`
`
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`ALTICE USA, INC.,
`Petitioner,
`v.
`TOUCHSTREAM TECHNOLOGIES INC.,
`Patent Owner
`
`U.S. Patent No. 11,048,751
`Filing Date: August 25, 2017
`Issue Date: June 29, 2021
`Title: PLAY CONTROL OF CONTENT ON A DISPLAY DEVICE
`Inter Partes Review No. IPR2024-01263
`_____________________
`
`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c) and
`37 C.F.R. §§ 42.22 and 42.122(b)
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`TABLE OF CONTENTS ........................................................................................... I
`I.
`STATEMENT OF RELIEF REQUESTED ..................................................... 2
`II.
`STATEMENT OF REASONS FOR RELIEF REQUESTED ......................... 3
`A.
`Legal Standards ..................................................................................... 3
`B. Altice’s Motion Is Timely ..................................................................... 4
`C.
`Joinder Is Appropriate ........................................................................... 4
`1.
`No New Grounds of Unpatentability in the Petition ................... 5
`2.
`No Impact on the Schedule for the Existing IPR Proceeding ..... 5
`3.
`Briefing and Discovery Will Be Simplified ................................ 6
`4.
`Prejudice to Patent Owner ........................................................... 7
`III. CONCLUSION ................................................................................................ 7
`
`
`
`i
`
`
`
`
`
`I.
`
`STATEMENT OF RELIEF REQUESTED
`Petitioner Altice USA, Inc. (“Altice” or “Petitioner”) respectfully requests
`
`joinder of the concurrently filed petition for inter partes review of U.S. Patent No.
`
`11,048,751
`
`(“the
`
`’751 Patent”)
`
`(IPR2024-01263) with Comcast Cable
`
`Communications, LLC v. Touchstream Technologies, Inc. IPR2024-00324, instituted
`
`July 24, 2024 (“the Comcast IPR”). (See IPR2024-00324, Paper 13.) The instant
`
`Petition is substantially the same as the Comcast IPR: it involves the same patent,
`
`the same claims, the same grounds of unpatentability, and the same evidence
`
`(including the same prior art combinations) as the Comcast IPR. If joined, as
`
`discussed further below, Altice will assume a “silent understudy” role and will not
`
`take an active role in the inter partes review proceeding unless the Comcast
`
`Petitioner ceases to participate in the instituted IPR.
`
`The instant Petition also relies on the same declaration put forth by David B.
`
`Lett (“Comcast Declarant”) in the Comcast IPR. Thus, the proposed joinder will
`
`neither unduly complicate the Comcast IPR nor delay its schedule. As such, the
`
`joinder will promote judicial efficiency in determining patentability in the Comcast
`
`IPR without prejudice to Patent Owner.
`
`Finally, this Motion for Joinder, and accompanying Petition, are timely
`
`because they are filed less than one month after a decision instituting trial in the
`
`Comcast IPR. 37 C.F.R. § 42.122(b) (“no later than one month after the institution
`
`2
`
`
`
`
`
`date of any inter partes review for which joinder is requested.”). Accordingly, Altice
`
`respectfully requests that the Board grant this Motion for Joinder.
`
`II.
`
`STATEMENT OF REASONS FOR RELIEF REQUESTED
`A. Legal Standards
`The Leahy-Smith America Invents Act (AIA) permits joinder of inter partes
`
`review (IPR) proceedings. Joinder is governed by 35 U.S.C. § 315(c), which states:
`
`(c) 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 partes review under section 314.
`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.” Dell Inc. v. Network-1 Sec. Sols., Inc., IPR2013-00385, Paper 17 (PTAB
`
`July 29, 2013); Hyundai Motor Co. v. Am. Vehicular Scis. LLC, IPR2014-01543,
`
`Paper 11, at 3 (PTAB Oct. 24, 2014); Macronix Int’l Co. v. Spansion, IPR2014-
`
`00898, Paper 15, at 4 (PTAB Aug. 13, 2014) (quoting Kyocera Corp. v. Softview
`
`LLC, IPR2013-00004, Paper 15, at 4 (PTAB April 24, 2013)).
`
`3
`
`
`
`
`
`B. Altice’s Motion Is Timely
`A motion for joinder is timely if the moving party files within one month of
`
`institution of the inter partes review for which joinder is requested. 37 C.F.R.
`
`§ 42.122(b). Because Altice files this motion within one month after a decision on
`
`the institution of the Comcast IPR, this motion is timely.
`
`Joinder Is Appropriate
`C.
`Joinder is appropriate because Altice’s Petition does not raise any new
`
`grounds of unpatentability and does “not present issues that might complicate or
`
`delay” the Comcast IPR. See Enzymotec Ltd. v. Neptune Techs & Bioresources, Inc.,
`
`IPR2014-00556, Paper 19 (PTAB July 9, 2014). Altice’s Petition is substantially
`
`identical to the petition in the Comcast IPR, challenging the same claims of the
`
`’751 Patent on the same grounds and relying on the same expert testimony. The
`
`primary difference between Altice’s Petition and the petition filed in the Comcast
`
`IPR are the sections on Real Party-In-Interest, Related Matters, Counsel, and 35
`
`U.S.C. § 314(a), which have been appropriately updated.
`
`Further, to simplify this proceeding, and minimize the impact on the original
`
`proceeding, Altice relies on the same Comcast Declarant. Joinder would, therefore,
`
`have little, if any, impact on the Comcast IPR, the schedule would not be affected,
`
`no additional briefing or discovery would be required, and no additional burdens
`
`would be placed on any party or the PTAB, as detailed below.
`
`4
`
`
`
`
`
`No New Grounds of Unpatentability in the Petition
`1.
`Altice’s Petition does not assert any new grounds of unpatentability. It
`
`challenges the same claims (1–20) of the ’751 Patent based on the same arguments
`
`and analysis, prior art, evidence, and three grounds of unpatentability as the
`
`Comcast IPR. See, e.g., Hyundai, IPR2014-01543, Paper 11, at 2–4; Dell, IPR2013-
`
`00385, Paper 17, at 6–10. In addition, Altice filed the identical expert declaration of
`
`Comcast’s expert.
`
`No Impact on the Schedule for the Existing IPR Proceeding
`2.
`Because Altice’s Petition raises no new grounds of unpatentability, and
`
`because a Scheduling Order was established for the Comcast IPR less than one
`
`month ago, joinder should have no impact on the schedule of the Comcast IPR. See
`
`LG v. Memory Integrity, LLC, IPR2015-01353, Paper 11, at 6 (PTAB Oct. 5, 2015)
`
`(granting IPR and motion for joinder where “joinder should not necessitate any
`
`additional briefing or discovery from Patent Owner beyond that already required in
`
`[the original IPR]”). Altice will adhere to all applicable deadlines set in the
`
`Scheduling Order for the Comcast IPR.
`
`As discussed further below, Altice is willing to limit its participation in this
`
`proceedings to a “silent understudy.” In the event that the Comcast IPR is terminated
`
`with respect to the Comcast Petitioner, only then does Altice intend to “step into the
`
`shoes” of the dismissed petitioner and materially participate in the joined
`
`5
`
`
`
`
`
`proceedings. Accordingly, for the reasons stated above, joinder of Altice to the
`
`Comcast IPR will not affect the Board’s ability to complete its review and final
`
`decision within the statutory time limits under 35 U.S.C. § 316(a)(11) and 37
`
`C.F.R. § 42.100(c).
`
`Briefing and Discovery Will Be Simplified
`3.
`As a “silent understudy,” Altice agrees that, if joined, the following conditions
`
`will apply so long as Comcast remains an active party, as previously approved by
`
`the Board in other joinder circumstances:
`
`(a)
`
`all filings by Altice in the joined proceeding will be consolidated
`
`with the filings of Comcast, unless a filing solely concerns issues that do not involve
`
`Comcast;
`
`(b) Altice shall not be permitted to raise any new grounds not
`
`instituted by the Board in the Comcast IPR, or introduce any argument not already
`
`introduced by Comcast;
`
`With regard to taking of testimony, Altice will abide by 37 C.F.R.
`
`§ 42.53 or any agreement between Patent Owner and Comcast. See Mylan Pharms.
`
`Inc. v. Novartis AG, IPR2015-00268, Paper 17, at 5–6 (PTAB Apr. 10, 2015)
`
`(finding the same proposed limitations “are consistent with the ‘understudy’ role that
`
`Petitioner agrees to assume, as well as Petitioner’s assertion that its presence would
`
`6
`
`
`
`
`
`not require introducing any additional arguments, briefing, or discovery.”). Altice
`
`also is willing to abide by any additional conditions the Board deems appropriate.
`
`Prejudice to Patent Owner
`4.
`Joinder of Petitioner to the Comcast IPR will not create any additional burden
`
`on Patent Owner. Patent Owner need not expend any additional resources above and
`
`beyond those required in the current Comcast IPR. Moreover, joinder eliminates the
`
`need for Patent Owner to participate in multiple, staggered inter partes review
`
`proceedings instituted upon identical grounds of unpatentability.1
`
`III. CONCLUSION
`For the foregoing reasons, Altice respectfully requests that its Petition for
`
`Inter Partes Review of the ’751 Patent be granted and that the proceedings be joined
`
`with IPR2024-00324.
`
`Dated: August 16, 2024
`
`Respectfully Submitted,
`
`
`
`/Scott Border/
`Scott M Border (lead counsel)
`Reg. No. 77,744
`WINSTON & STRAWN LLP
`1901 L Street, N.W.
`Washington, D.C. 20036
`T: 202-282-5100
`sborder@winston.com
`
`
`
`1 The argument that joinder may theoretically frustrate settlement between Comcast
`and Patent Owner is not a basis to deny joinder because that same possibility exists
`in every joinder situation. Glob. Foundries U.S. Inc. v . Godo Kaisha IP Bridge 1,
`IPR2017-00925 and IPR2017-00926, Paper 13, at 10 (PTAB June 9, 2017).
`
`7
`
`
`
`
`
`
`
`
`
`Krishnan Padmanabhan (backup
`counsel)
`(pro hac vice to be submitted)
`Christopher Gresalfi (backup counsel)
`Reg. No. 78,949
`WINSTON & STRAWN LLP
`200 Park Ave,
`New York, NY, 10166
`T: (212) 294-6700
`Kpadmanabhan@winston.com
`Cgresalfi@winston.com
`
`
`
`
`
`8
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on this 16th day of
`
`August, 2024, I caused to be served a true and correct copy of PETITIONER’S
`
`MOTION FOR JOINDER UNDER 37 C.F.R. §§ 42.22 AND 42.122(b) by FedEx
`
`on the following:
`
`SHOOK, HARDY & BACON LLP
`Touchstream Technologies (149550)
`INTELLECTUAL PROPERTY DEPARTMENT
`2555 Grand Blvd.
`Kansas City, MO 64108
`
` A
`
` courtesy copy of this Petition was also served upon litigation counsel for
`
`Patent Owner via email, as follows:
`
`Ryan Dykal ( rdykal@bsfllp.com )
`Jordan T. Bergsten ( jbergsten@bsfllp.com )
`BOIES SCHILLER FLEXNER LLP
`1401 New York Avenue, NW
`Washington, DC 20005
`
`Sabina Mariella ( smariella@bsfllp.com )
`BOIES SCHILLER FLEXNER LLP
`55 Hudson Yards
`New York, NY 10001
`
`Dated: August 16, 2024
`
`Respectfully Submitted,
`
`
`
`/Scott Border/
`Scott M Border (lead counsel)
`Reg. No. 77,744
`WINSTON & STRAWN LLP
`1901 L Street, N.W.
`Washington, D.C. 20036
`T: 202-282-5100
`sborder@winston.com
`
`
`9
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
