Trials@uspto.gov
`571-272-7822
`
`Paper 11
`Entered: January 19, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DISH NETWORK,LLC,
`Petitioner,
`
`V.
`
`TQ DELTA, LLC,
`Patent Owner.
`
`Case IPR2017-00255
`Patent 8,718,158 B2
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE,and
`TREVOR M. JEFFERSON,Administrative Patent Judges.
`
`MEDLEY,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 CFR. § 42.108
`
`Petitioner’s Motion for Joinder
`37 CFR. § 42.122(b)
`
`
`571-272-7822
`
`Paper 11
`Entered: January 19, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DISH NETWORK,LLC,
`Petitioner,
`
`V.
`
`TQ DELTA, LLC,
`Patent Owner.
`
`Case IPR2017-00255
`Patent 8,718,158 B2
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE,and
`TREVOR M. JEFFERSON,Administrative Patent Judges.
`
`MEDLEY,Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 CFR. § 42.108
`
`Petitioner’s Motion for Joinder
`37 CFR. § 42.122(b)
`
`
`
`IPR2017-00255
`Patent 8,718,158 B2
`
`I. INTRODUCTION
`
`DISH Network, L.L.C.(“Petitioner” or “Dish”) filed a Petition for
`
`inter partes review ofclaims 1-30 of U.S. Patent No. 8,718,158 B2
`
`(Ex. 1001, “the ’158 patent”). Paper 3 (“Pet.”). Concurrently withits
`
`Petition, Dish filed a Motion for Joinder with Cisco Systems, Inc. v. TQ
`
`Delta, LLC, Case IPR2016-01021 (“the Cisco IPR”). Paper 2 (“Mot.”). TQ
`
`Delta, LLC (“Patent Owner”) submits that it does not oppose joinder. See
`
`Paper 8. Patent Owneralso elected to waive its Preliminary Response. Id.
`
`For the reasons explained below,weinstitute an inter partes review of
`
`claims 1-30 of the ?158 patent and grant Dish’s Motion for Joinder.
`
`II. RELATED PROCEEDINGS
`
`Petitioner and Patent Owneridentify several pending judicial matters
`
`as relating to the ’158 patent. Pet. 1; Mot. 2-3; Paper 4, 2-3.
`
`In the Cisco IPR, weinstituted an inter partes review of claims 1-30
`
`of the ’158 patent on the following ground:
`
`
`
`Shively! and Stopler’
`
`nivel,Stole and
`
`amvely, Stopler, and
`
`
`
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`1, 2, 4, 15, 16, and 18
`3, 5, 14, 17, 19, and 28-30
`6, 9, 10, 12, 20, 23, 24, and 26
`
`
`
`
`
`
`
`'U.S. Patent No. 6,144,696; issued Nov. 7, 2000 (Ex. 1011) (“Shively”).
`? US. Patent No. 6,625,219 B1; issued Sept. 23, 2003 (Ex. 1012)
`(“Stopler”).
`3 U.S. Patent No. 6,424,646 B1; issued July 23, 2002 (Ex. 1013)
`(“Gerszberg”).
`“U.S. Patent No. 4,924,516; issued May 8, 1990 (Ex. 1017) (“Bremer”).
`
`2
`
`
`
`IPR2017-00255
`Patent 8,718,158 B2
`
`
`Ree
`‘| Shively, Stopler,
`. | Bremer, and Gerszberg
`§ 103(a)
`8, 11, 13, 22, 23, and 27
` Shively, Stopler,
`—
`
`Bremer, and Flammer®__|. § 103(a) _ TJand21
`
`
`Cisco Systems, Inc. v. TO Delta, LLC, Case IPR2016-01021, slip op. at 20—
`21 (PTAB Nov.4, 2016) (Paper 7) (“Cisco Dec.”).
`
`I. INSTITUTION OF INTER PARTES REVIEW
`The Petition in this proceeding asserts the same grounds of |
`unpatentability as the ones on which weinstituted review in the Cisco IPR.
`Compare Pet. 12-63, with Cisco Dec. 20-21. Indeed, Petitioner contends
`that the Petition asserts only the groundsthat the Board instituted in the
`Cisco IPR, there are no new arguments for the Board to consider, and
`Petitioner relies on the same exhibits and expert declaration as the Cisco
`IPR. Mot. 5.
`y
`Forthe samereasonsset forth in ourinstitution decision in the Cisco
`IPR, we determinethat the information presented in Dish’s Petition shows a
`reasonablelikelihood that Petitioner would prevail in showingthat
`(a) claims 1, 2, 4, 15, 16, and 18 would have been obvious over Shively and
`Stopler, (b) claims 3, 5, 14, 17, 19, and 28-30 would have been obvious over
`Shively, Stopler, and Gerszberg,(c) claims 6,9, 10, 12, 20, 23, 24, and 26
`would have been obvious over Shively, Stopler, and Bremer, (d) claims 8,
`11, 13, 22, 25, and 27 would have been obviousover Shively, Stopler,
`
`|
`
`Bremer, and Gerszberg, and (e) claims 7 and 21 would have been obvious
`
`over Shively, Stopler, Bremer, and Flammer. See Cisco Dec. 7-20.
`
`> U.S. Patent No. 5,515,369; issued May 7, 1996 (Ex. 1019) (“Flammer’).
`;
`
`
`
`IPR2017-00255
`Patent 8,718,158 B2
`
`Accordingly, weinstitute an inter partes review on the same groundsas the
`
`ones on which weinstituted review in the Cisco IPR. We donotinstitute
`
`inter partes review on any other grounds.
`
`IV. GRANT OF MOTION FOR JOINDER
`
`The Petition and Motion for Joinderin this proceeding were accorded
`
`a filing date of November11, 2016. See Paper 7. Thus, Petitioner’s Motion
`
`for Joinder is timely because joinder was requested no later than one month
`
`after the institution date of the Cisco IPR, i.e., November 4, 2016. See 37
`
`C.F.R. § 42.122(b).
`The statutory provision governing joinder in inter partes review
`proceedings is 35 U.S.C. § 315(c), which reads:
`|
`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 whoproperly files a petition under section
`311 that the Director, after receiving a preliminary response
`undersection 313 or the expiration of the time for filing such a
`response, determines warrants the institution of an inter partes
`review undersection 314.
`
`A motion for joinder should (1) set forth reasons why joinder is appropriate;
`
`(2) identify any new grounds of unpatentability asserted in the petition;
`
`(3) explain what impact(if any) joinder would haveonthetrial schedule for
`
`the existing review; and (4) address specifically how briefing and discovery
`
`may be simplified. See Kyocera Corp. v. Softview LLC, Case IPR2013-
`
`00004,slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).
`
`Asnoted, the Petition in this case asserts the same unpatentability
`
`grounds on which weinstituted review in the Cisco IPR. See Mot. 5. Dish
`
`also relies on the sameprior art analysis and expert testimony submitted by
`
`the Cisco Petitioners. See id. Indeed, the Petition is nearly identical to the
`
`4
`
`
`
`IPR2017-00255
`Patent 8,718,158 B2
`
`petition filed by the Cisco Petitioners with respect to the grounds on which
`
`review wasinstituted in the Cisco IPR. See id. Thus,this inter partes
`
`review doesnot present any groundor matter notalready at issue in the
`
`Cisco IPR.
`
`Ifjoinder is granted, Dish anticipates participating in the proceeding
`
`in a limited capacity absent termination of Cisco Petitioner as a party. Jd. at
`
`6. Dish agrees to “assume a limited ‘understudy’ role” and “would only take
`
`on an active role if Cisco were no longera party to the IPR.” Dish further
`
`represents that it “presents no new groundsfor invalidity and its presence in
`the proceedingswill not introduce any additional arguments, briefing or
`
`need for discovery.” Jd. Because Dish expects to participate only in a
`
`limited capacity, Dish submits that joinder will not impactthe trial schedule
`
`for the Cisco IPR. Id. at 5—6.
`
`Weagree with Petitioner that joinder with the Cisco IPRis
`
`appropriate under the circumstances. Accordingly, we grant Petitioner’s
`
`Motion for Joinder.
`
`V. ORDER
`
`Accordingly,it is:
`
`ORDEREDthatan inter partes review is instituted in IPR2017-
`
`00255;
`
`FURTHER ORDEREDthat the Motion for Joinder with IPR2016-
`
`01021 is granted, and DISH Network, L.L.C. is joined as a petitioner in
`
`IPR2016-01021;
`
`FURTHER ORDEREDthat IPR2017-00255 is terminated under
`
`37 C.F.R. § 42.72, and all further filings shall be made only in IPR2016-
`
`01021;
`
`
`
`IPR2017-00255
`Patent 8,718,158 B2
`
`FURTHER ORDEREDthat, subsequentto joinder, the groundsfor
`
`trial in IPR2016-01021 remain unchanged;
`
`FURTHER ORDEREDthat, subsequentto joinder, the Scheduling
`
`Orderin place for IPR2016-01021 (Paper 8) remains unchanged;
`
`FURTHER ORDEREDthat in IPR2016-01021, the Cisco Petitioner
`
`and Dish will file each paper, except for a motion that does not involve the
`
`other party, as a single, consolidated filing, subject to the page limits set
`
`forth in 37 C.F.R. § 42.24, and shall identify each suchfiling as a
`
`consolidated filing;
`
`FURTHER ORDEREDthatfor any consolidated filing, if Dish
`
`wishesto file an additional paper to address points of disagreement with the
`
`Cisco Petitioner, Dish must request authorization from the Boardto file a
`
`motion for additional pages, and no additional paper maybefiled unless the
`
`Board grants such a motion;
`
`FURTHER ORDEREDthat the Cisco Petitioner and Dish shall
`
`collectively designate attorneys to conduct the cross-examination of any
`
`witness produced by Patent Ownerandthe redirect of any witness produced
`
`by the Cisco Petitioner and Dish, within the timeframesset forth in 37
`
`C.F.R. § 42.53(c) or agreed to by the parties;
`
`FURTHER ORDEREDthat the Cisco Petitioner and Dish shall
`
`collectively designate attorneys to presentat the oral hearing, if requested
`
`and scheduled, in a consolidated argument;
`
`FURTHER ORDEREDthatthe case caption in IPR2016-01021 shall
`
`be changedto reflect joinder of Dish as a petitioner in accordance with the
`
`attached example; and
`
`
`
`IPR2017-00255
`Patent 8,718,158 B2
`
`FURTHER ORDEREDthata copy of this Decision shall be entered
`
`into the record of IPR2016-01021.
`
`FOR DISH PETITIONER:
`
`Heidi L. Keefe
`Stephen McBride
`COOLEY LLP
`hkeefe@cooley.com
`smcbride@cooley.com
`Dish-TQDelta@cooley.com
`zpatdcdocketing@cooley.com
`
`FOR CISCO PETITIONER:
`
`David McCombs
`Theo Foster
`HAYNES AND BOONE, LLP
`David.mccombs.ipr@haynesboone.com
`Ipr.theo.foster@haynesboone.com
`
`FOR PATENT OWNER:
`
`Peter J. McAndrews
`Thomas J. Wimbiscus
`Scott P. McBride
`Christopher M. Scharff
`MCANDREWS, HELD & MALLOY, LTD.
`pmcandrews@mcandrews-ip.com
`twimbiscus@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`escharff@mcandrews-ip.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CISCO SYSTEMS,INC. and DISH NETWORK,LLC,
`Petitioner,
`
`Vv.
`
`TQ DELTA, LLC,
`Patent Owner.
`
`Case IPR2016-01021!
`Patent 8,718,158 B2
`
`' DISH Network, L.L.C., whofiled a Petition in IPR2017-00255, has been
`joined as a petitionerin this proceeding.
`
`
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