Broadband iTV, Inc.

Patent Trials and Appeals Board

Feb 12, 2021

IPR2020-01360 (P.T.A.B. Feb. 12, 2021)

Trials@uspto.gov Paper 15
571-272-7822 Date: February 15, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

DISH NETWORK L.L.C.,
Petitioner,
v.
BROADBAND iTV, INC.,
Patent Owner.

IPR2020-01360
Patent 9,648,388 B2

Before JEFFREY S. SMITH, JUSTIN T. ARBES, and
DANIEL J. GALLIGAN, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

IPR2020-01360
Patent 9,648,388 B2
2
I. INTRODUCTION
A. Background and Summary
On July 31, 2020, Petitioner DISH Network L.L.C. filed a Petition
(Paper 1, “Pet.” or “the 1360 Petition”) requesting inter partes review of
claims 1, 2, 5, and 7–19 of U.S. Patent No. 9,648,388 B2 (Ex. 1101, “the
’388 patent”). Patent Owner Broadband iTV, Inc. filed a Preliminary
Response. Paper 8 (“Prelim. Resp.”). Petitioner also filed a separate paper
providing an explanation for filing multiple petitions ranking its petition in
Case IPR2020-01359 ahead of its Petition in this proceeding. Paper 3.
Patent Owner filed a response. Paper 7. With our authorization (Paper 9),
Petitioner filed a Reply (Paper 11) and Patent Owner filed a Sur-Reply
(Paper 12) directed solely to an issue regarding whether we should exercise
our discretion to deny the Petition under 35 U.S.C. § 314(a).
The standard for instituting review is set forth in 35 U.S.C. § 314(a),
which provides that
[t]he 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.
Thus, § 314(a) does not mandate institution, even if the reasonable
likelihood threshold is met. 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 Office’s discretion.”); see also 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.”).

IPR2020-01360
Patent 9,648,388 B2
3
For the reasons that follow, we do not institute an inter partes review
in this proceeding.
B. Related Matters
The parties indicate that the ’388 patent is the subject of three district
court cases: Broadband iTV, Inc. v. DISH Network, L.L.C.,
Case No. 19-cv-716 (W.D. Tex.), Broadband iTV, Inc. v. AT&T Services,
Inc., Case No. 19-cv-712 (W.D. Tex.), and Broadband iTV, Inc. v. DirecTV,
LLC, Case No. 19-cv-714 (W.D. Tex.). See Pet. 3; Paper 5, 1. Petitioner
filed another petition challenging claims 1–19 of the ’388 patent in Case
IPR2020-01359 (Paper 1) (“1359 Pet.” or “the 1359 Petition”) on the same
day it filed this Petition, and Petitioner filed six other petitions challenging
claims of related patents also asserted in the district court cases in
Cases IPR2020-01267, IPR2020-01268, IPR2020-01280, IPR2020-01281,
IPR2020-01332, and IPR2020-01333. Different petitioners previously filed
two petitions challenging claims of a related patent to the ’388 patent,
U.S. Patent No. 7,631,336 B2, in Cases IPR2014-01222 and
CBM2014-00189, both of which were denied. See Pet. 4; Paper 5, 2.
C. Real Parties in Interest
Petitioner identifies the following real parties in interest: DISH
Network L.L.C. and DISH Network Corporation. Pet. 3. Patent Owner
identifies itself as the real party in interest. Paper 5, 1.
IPR2020-01360
Patent 9,648,388 B2
4
D. Prior Art and Asserted Ground
Petitioner asserts that claims 1, 2, 5, and 7–19 of the ’388 patent are
unpatentable on the following ground:
Claims Challenged 35 U.S.C. § References/Basis
1, 2, 5, 7–19 103(a)1 Son,
2 Scheffler,3
CableLabs,4 Kelts5

II. ANALYSIS
The Board’s November 2019 Consolidated Trial Practice Guide6
(“TPG”) advises that “one petition should be sufficient to challenge the
claims of a patent in most situations” but also “recognizes that there may be
circumstances in which more than one petition may be necessary, including,
for example, when the patent owner has asserted a large number of claims in
litigation or when there is a dispute about priority date requiring arguments
under multiple prior art references.” TPG 59. The TPG further provides:
To aid the Board in determining whether more than one
petition is necessary, if a petitioner files two or more petitions
challenging the same patent, then the petitioner should, in its
petitions or in a separate paper filed with the petitions, identify:
(1) a ranking of the petitions in the order in which it wishes the

1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011) (“AIA”), amended 35 U.S.C. § 103. Based on the chain of priority of
the ’388 patent, we refer to the pre-AIA version of 35 U.S.C. § 103.
2 US 7,159,233, filed Jan. 29, 2001, issued Jan. 2, 2007 (Ex. 1105).
3 Robert G. Scheffler, Ingest & Metadata Partitioning: Requirements for
Television on Demand (Ex. 1006).
4 CableLabs Video-on-Demand Content Specification Version 1.1
(Ex. 1109).
5 US 2001/0030667 A1, published Oct. 18, 2001 (Ex. 1107).
6 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
IPR2020-01360
Patent 9,648,388 B2
5
Board to consider the merits, if the Board uses its discretion to
institute any of the petitions, and (2) a succinct explanation of the
differences between the petitions, why the issues addressed by
the differences are material, and why the Board should exercise
its discretion to institute additional petitions if it identifies one
petition that satisfies petitioner’s burden under 35 U.S.C.
§ 314(a).
TPG 59–60; see TPG 60 n.3 (“A separate paper filed with the petitions is
limited to providing this explanation and shall be no more than 5 pages
where the same paper is filed with each petition.”).
Petitioner filed another petition, the 1359 Petition, challenging
claims 1–19 of the ’388 patent as obvious in view of Baumgartner
(Ex. 1104, US 2010/0153997 A1), Son, Scheffler, and CableLabs. In its
paper explaining why two are petitions necessary, Petitioner argues that (a)
the ’388 patent includes lengthy, complex claims, (b) Patent Owner has
vaguely alleged that the claims of the ’388 patent may have an earlier
priority date than Baumgartner,7 and (c) the 1360 Petition is not cumulative
to the 1359 Petition. See generally Paper 3. According to Petitioner,
Baumgartner teaches a complete VOD system and hierarchical guide, and
Son, Scheffler, and CableLabs provide details of Baumgartner’s generic
features. Paper 3, 5. Petitioner contends that Son focuses primarily on the
VOD system and that such a system can be combined with the VOD guide
of Kelts. Id. In its responsive paper, Patent Owner asserts that Petitioner

7 Baumgartner is a continuation of an application filed on January 21, 2004.
Ex. 1104, code (63). Patent Owner has asserted in the related district court
case between the parties that claims 1–19 of the ’388 patent have a priority
date of “at least as early as July 30, 2004, but no earlier than October 2003.”
Ex. 1127, 2–3.
IPR2020-01360
Patent 9,648,388 B2
6
does not explain why Son is materially different from Baumgartner. Paper
7, 4.
Even were we to agree with Petitioner that the claims are lengthy and
complex, and that Patent Owner may show that the ’388 patent has an earlier
priority date than Baumgartner, there is still considerable overlap between
the 1360 Petition and the 1359 Petition. The first ground asserted in the
1359 Petition and the single ground asserted here each rely on four
references, where three of the references, Son, Scheffler, and CableLabs, are
identical. Further, all of the claims challenged in the 1360 Petition are also
challenged in the 1359 Petition. As a result, both Petitions contain the same
descriptions of the ’388 patent, the same claim constructions, the same
descriptions of Son, Scheffler, and CableLabs, and rely on the same
teachings of Son, Scheffler, and CableLabs to teach a VOD system,
providing metadata along with VOD content, and using the metadata to
generate a VOD menu. Compare Pet 9–24, 28–31, 33–39, 43, 46, with 1359
Pet. 11–18, 26–33, 39, 41–42, 44–46, 49.
The main difference between the Petitions is that the first ground of
the 1359 Petition relies on Baumgartner to teach a hierarchical VOD menu,
and the single ground of the 1360 Petition relies on Kelts to teach the
hierarchical VOD menu. See Paper 3, 5. Petitioner has not persuasively
explained why it was unable to present an additional ground that relies on
Kelts to teach a hierarchical VOD guide in the same Petition that presents a
ground relying on Baumgartner to teach such a guide, given that both
grounds present the same claim constructions, use the same secondary
references, and rely on the same teachings of the secondary references to
teach the same claim limitations.
IPR2020-01360
Patent 9,648,388 B2
7
We do not find the asserted differences between the 1359 Petition and
the 1360 Petition, as explained by Petitioner, to be sufficiently material to
outweigh the inefficiencies and burden on the Board and on Patent Owner
that would result from instituting both Petitions. See TPG at 59. Instituting
both Petitions would unnecessarily place a substantial burden on the Board
and on Patent Owner. Rather, instituting only one Petition addresses the
patentability of all challenged claims.
We therefore determine that one petition is sufficient to address the
challenged claims of the ’388 patent. Although the 1359 Petition does not
resolve the priority date issue identified by the 1360 Petition, Petitioner has
ranked the 1359 Petition as the stronger petition of the two. Paper 3, 3. For
the reasons explained in our institution decision in that case, which issues
concurrently with this Decision, we determine Petitioner has shown a
reasonable likelihood of prevailing on its challenge based on the
combination of Baumgartner, Son, Scheffler, and CableLabs.

III. CONCLUSION
Based on the foregoing, we do not institute an inter partes review in
this proceeding.

IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied and no inter partes review is
instituted in this proceeding.

IPR2020-01360
Patent 9,648,388 B2
8
FOR PETITIONER:
Alyssa Caridis
K. Patrick Herman
ORRICK, HERRINGTON & SUTCLIFFE LLP
a8cptabdocket@orrick.com
p52ptabdocket@orrick.com

FOR PATENT OWNER:

Sal Lim
David Alberti
Hong Lin
FEINBERG DAY KRAMER ALBERTI LIM TONKOVICH
& BELLOLI LLP
slim@feinday.com
dalberti@feinday.com
hlin@feinday.com

Michael D. Specht
Jason A. Fitzsimmons
Richard M. Bemben
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
mspecht-ptab@sternekessler.com
jfitzsimmons-ptab@sternekessler.com
rbemben-ptab@sternekessler.com

Kevin Greenleaf
DENTONS US LLP
kevin.greenleaf@dentons.com