Broadband iTV, Inc.

Patent Trials and Appeals Board

Apr 1, 2021

IPR2020-01332 (P.T.A.B. Apr. 1, 2021)

Trials@uspto.gov Paper 24
571-272-7822 Date: April 1, 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.

IPR2020-01332
Patent 10,506,269 B2

Before JEFFREY S. SMITH, JUSTIN T. ARBES, and
DANIEL J. GALLIGAN, Administrative Patent Judges.
GALLIGAN, Administrative Patent Judge.
DECISION
Denying Patent Owner’s Request for Rehearing of
Decision Granting Institution of Inter Partes Review
37 C.F.R. § 42.71(d)

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I. INTRODUCTION
Patent Owner Broadband iTV, Inc. requests reconsideration of our
Institution Decision (Paper 14, “Inst. Dec.”), in which we instituted inter
partes review of claims 1–17 of U.S. Patent No. 10,506,269 B2 (Ex. 1001,
“the ’269 patent”). Paper 19 (“Req. Reh’g”). Patent Owner argues that, in
our Institution Decision, we “misapprehended or overlooked key facts and
abused [our] discretion in evaluating and weighing the Fintiv[1] factors” and
“abused [our] discretion with respect to 35 U.S.C. § 325(d).” Req.
Reh’g 3, 14. Patent Owner also “suggests that an Expanded Panel decide
this Request to secure and maintain uniformity in applying Board precedent
in” Fintiv and Advanced Bionics, LLC v. MED-EL Elektromedizinische
Geräte GmbH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020)
(precedential). Req. Reh’g 1.
Our governing statutes and regulations do not provide for parties to
request, or panels to authorize, an expanded panel. See generally 35 U.S.C.
§ 6; 37 C.F.R. §§ 41.1–42.412. The Chief Judge, however, may consider
panel expansions upon a “suggestion” from a judge, panel, or party. PTAB
Standard Operating Procedure (SOP) 1,2 15; see also Apple Inc. v.
Rensselaer Polytechnic Inst., IPR2014-00319, Paper 20 at 2 n.1 (PTAB Dec.
12, 2014) (expanded panel) (per curiam).
The Standard Operating Procedure exemplifies some of the reasons
for which the Chief Judge may expand a panel. PTAB SOP 1, 15 (§ III.M).

1 Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20,
2020) (precedential).
2 Available at
https://www.uspto.gov/sites/default/files/documents/SOP%201%20R15%20
FINAL.pdf.
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For example, an expanded panel may be appropriate “to secure and maintain
uniformity of the Board’s decisions, e.g., in related cases ordinarily
involving different three judge panels.” Id. (§ III.M.1).
Upon receiving the Rehearing Request, we followed the procedure set
forth in § III.M.3 of SOP 1 regarding a suggestion for an expanded panel. In
this case, the Chief Judge has considered Patent Owner’s suggestion for an
expanded panel but has determined that an expanded panel is not warranted.
For the reasons that follow, Patent Owner’s request for rehearing is
denied.

II. ANALYSIS
A. Applicable Legal Standard
The standard for a request for rehearing is set forth in 37 C.F.R.
§ 42.71(d), which provides in relevant part:
The burden of showing a decision should be modified lies with
the party challenging the decision. The request must specifically
identify all matters the party believes the Board misapprehended
or overlooked, and the place where each matter was previously
addressed in a motion, an opposition, or a reply.
“When rehearing a decision on petition, a panel will review the decision for
an abuse of discretion.” 37 C.F.R. § 42.71(c). A rehearing request is not an
opportunity for the requesting party to reargue its case or merely to express
disagreement with the underlying decision. Nor is it an opportunity for the
moving party to present new arguments that were not in its original
submissions.

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B. Patent Owner’s Request to Admit New Evidence
Before turning to Patent Owner’s arguments regarding discretionary
denial under 35 U.S.C. §§ 314 and 325(d), we consider Patent Owner’s
request to admit new evidence into the record. See Req. Reh’g 2–3. A
precedential Board decision advises that,
[i]deally, a party seeking to admit new evidence with a rehearing
request would request a conference call with the Board prior to
filing such a request so that it could argue “good cause” exists
for admitting the new evidence. Alternatively, a party may argue
“good cause” exists in the rehearing request itself.
Huawei Device Co., Ltd. v. Optis Cellular Tech., LLC, IPR2018-00816,
Paper 19 at 4 (PTAB Jan. 8, 2019) (precedential). “Absent a showing of
‘good cause’ prior to filing the request for rehearing or in the request for
rehearing itself, new evidence will not be admitted.” Patent Trial and
Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 90, available
at https://www.uspto.gov/TrialPracticeGuideConsolidated. At Patent
Owner’s request, we held a conference call with the parties before Patent
Owner filed its rehearing request to hear arguments on whether good cause
exists to admit certain new evidence. See Ex. 2034 (transcript of February 2,
2021, conference call).
During the call, Patent Owner sought authorization to file three items
in this proceeding:
(1) Petitioner’s Final Invalidity Contentions and relevant claim
charts served January 8, 2021, in Broadband iTV, Inc. v. DISH
Network, L.L.C., Case No. 6:19-cv-716 (W.D. Tex.)3 (“the Texas
case”);
(2) AT&T’s Final Invalidity Contentions and relevant claim
charts served January 29, 2021, in Broadband iTV, Inc. v. AT&T

3 We refer to the United States District Court for the Western District of
Texas as “the Texas court.”
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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.) (consolidated into Case No. 6:19-cv-712 (1:20-cv-
717-ADA), “the AT&T case”); and
(3) a PACER report of the current docket in the Texas case.
Ex. 2034, 6:15–25. Patent Owner explained that Petitioner’s final invalidity
contentions “include about 180 claim charts that total about 7,500 pages”
and that “AT&T’s [final invalidity] contentions include about 50 charts
totaling over 17,000 pages.” Ex. 2034, 7:24–8:3. Patent Owner argued that
good cause exists to admit this evidence, which Petitioner disputed. See
generally Ex. 2034.
On the call, we expressed concern with the volume of information
Patent Owner sought to introduce, and Patent Owner agreed to file a much
smaller volume of information (approximately 1,000 pages). Ex. 2034,
23:24–31:1. We reserved ruling on Patent Owner’s request to admit the new
evidence because, at that point, we could not reach a “good cause”
determination without knowing exactly what Patent Owner would seek to
admit, and we instructed Patent Owner to present its arguments regarding
good cause in its rehearing request. Ex. 2034, 31:8–32:8, 35:5–12.
After the conference call, Patent Owner filed a total of 538 pages of
evidence in Exhibits 2031–2033, significantly less than the initial volume of
evidence it sought to introduce. Patent Owner argues that good cause exists
to admit this evidence because “it is highly relevant to the Fintiv analysis,
providing critical new information about the parallel litigation, showing
significant investment under factor 3 and nearly complete overlap under
factor 4.” Req. Reh’g 2. Patent Owner also notes that the invalidity
contentions were both served in January 2021, and, therefore, could not have
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been submitted with Patent Owner’s Preliminary Response (Paper 9,
“Prelim. Resp.”), which was filed in November 2020. Req. Reh’g 2.
Having considered Patent Owner’s arguments on rehearing and the
parties’ arguments during the conference call on February 2, 2021, we grant
Patent Owner’s request to admit this new evidence with the request for
rehearing, and we discuss this evidence below where relevant.

C. 35 U.S.C. § 325(d)
35 U.S.C. § 325(d) states, in pertinent part, “[i]n determining whether
to institute or order a proceeding under this chapter, chapter 30, or chapter
31, the Director may take into account whether, and reject the petition or
request because, the same or substantially the same prior art or arguments
previously were presented to the Office.” In the Institution Decision, we
applied the framework set out in Advanced Bionics for evaluating whether to
exercise our discretion under § 325(d). Inst. Dec. 10–19. After considering
the evidence of record, we determined that U.S. Patent Application
Publication No. 2006/0026655 A1 (Ex. 1008, “Perez”) was not presented to
the Office during examination of the application for the ’269 patent. Inst.
Dec. 12–15.
On rehearing, Patent Owner argues that Perez “previously was
presented to the Office” in an Information Disclosure Statement (IDS),
which, according to Patent Owner, “expressly made the Examiner aware of
both” U.S. Patent 7,590,997 B2 (“the ’997 patent”)4 and Perez, “listing both
the ’997 patent and its kind code, ‘B2.’” Req. Reh’g 14–15 (citing Ex. 1017,
232, 234; Prelim. Resp. 36; Manual of Patent Examining Procedure (MPEP)

4 The ’997 patent issued from the application that published as Perez.
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§ 609.04(a)). Patent Owner asserts that the MPEP “requir[es] Applicant to
submit either the patent or corresponding application publication in an IDS.”
Req. Reh’g 15 (citing MPEP § 609.04(a)). Patent Owner argues, therefore,
that “[t]he kind code ‘B2’ informed the Examiner of ‘a previously published
pre-grant publication’ corresponding to the ’997 patent. Indeed, [Perez] is
listed on the ’997 patent’s face. Thus, the IDS provided to the Office by the
Applicant indisputably made the Examiner aware of [Perez].” Req. Reh’g
15 (citations omitted).
Patent Owner’s arguments are unavailing. Section 609.04(a) of the
MPEP provides that “[a]n information disclosure statement (IDS) must
comply with the provisions of 37 CFR 1.98 as to content for the information
listed in the IDS to be considered by the Office” (emphasis added). For
example, “37 CFR 1.98(b) requires that each item of information in an IDS
be identified properly. U.S. patents must be identified by the inventor,
patent number, and issue date. U.S. patent application publications must be
identified by the applicant, patent application publication number, and
publication date.” MPEP § 609.04(a)(I). Thus, this section of the MPEP
specifies how an applicant should present information that the applicant
wants the Office to consider. During prosecution of the ’269 patent, the
applicant listed the ’997 patent on an IDS (Ex. 1017, 232, 234) so that it
would be “considered by the Office.” MPEP § 609.04(a). The applicant,
therefore, chose to submit for Office consideration a document that was not
prior art (the ’997 patent) rather than Perez, which contains the same
disclosure and is, based on the current record before us, prior art.
In the Institution Decision, we stated that
the applicant made the Examiner aware of a disclosure (the ’997
patent) that was not prior art to the ’269 patent, but Patent Owner
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does not direct us to anywhere in the prosecution history where
the applicant apprised the Examiner of the published application,
Perez, which would have been § 102(b) prior art to claims that
were entitled only to the 2007 CIP filing date.
Inst. Dec. 14. On rehearing, Patent Owner still does not direct us to
anywhere in the ’269 patent’s prosecution history where the applicant
apprised the Examiner of Perez. Rather, Patent Owner’s argument is that the
applicant’s listing of the ’997 patent, which has a kind code “B2,” coupled
with the fact that Perez is listed on the face of the ’997 patent, “indisputably
made the Examiner aware of” Perez. Req. Reh’g 15. Although kind code
“B2” indicates that there was a previously published pre-grant publication,
the entries on the IDS would not indicate that such a publication was prior
art in this case because the IDS lists the issue date (September 15, 2009), not
the filing date, of the ’997 patent. Ex. 1017, 232, 234. In any event, we
need not speculate as to what the Examiner may have been “aware of”
because § 325(d) is concerned with “prior art or arguments [that] previously
were presented to the Office” (emphasis added). As the record before us
makes clear, Perez was not “presented to the Office”; rather, the applicant
chose to identify on an IDS the ’997 patent, which is not prior art to the ’269
patent. See Inst. Dec. 12–15.
Based on the foregoing, we are not persuaded that we misapprehended
or overlooked any matters or abused our discretion in evaluating Patent
Owner’s § 325(d) arguments.

D. 35 U.S.C. § 314
Patent Owner argues that we “misapprehended or overlooked key
facts and abused [our] discretion in evaluating and weighing the Fintiv
factors.” Req. Reh’g 3. Patent Owner also argues that we should consider
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the AT&T case in evaluating the second and fourth Fintiv factors. Req.
Reh’g 3. For the reasons explained below, we disagree that we should
exercise discretion to deny institution.

1. Whether the Court Granted a Stay or Evidence Exists that One
May Be Granted if a Proceeding Is Instituted
In the Institution Decision, we stated that “[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.” Inst. Dec. 21
(emphasis added). Patent Owner argues that, by stating this, we “expressly
declined to evaluate, and thus overlooked, [the] evidence” that Patent Owner
introduced with its Preliminary Response. Req. Reh’g 4 (citing Prelim.
Resp. 17–18). We disagree. Rather, we evaluated Patent Owner’s
arguments and evidence in making our determination. See Inst. Dec. 20–21.
Furthermore, on May 7, 2020, Petitioner filed a motion to transfer,
which has not been decided by the Texas court, and, therefore, has been
pending for over ten months. Ex. 2033, 5 (Dkt. No. 37). As we noted in the
Institution Decision, this pending motion introduces some uncertainties as to
the current trial schedule in the Texas case (Inst. Dec. 25), and the same is
true as to the possibility for a stay.
After consider Patent Owner’s arguments on rehearing, we maintain
this factor is neutral to the exercise of our discretion.

2. Proximity of the Court’s Trial Date to the Board’s Projected
Statutory Deadline for a Final Written Decision
After evaluating the parties’ arguments and the evidence of record, we
determined that “this factor is, at most, slightly in favor of exercising our
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discretion to deny the Petition.” Inst. Dec. 21–26. In arriving at this
determination, we noted that there is a pending motion to transfer in the
Texas case that, if granted, “would necessitate a new trial date.” Inst.
Dec. 25. We also were
not persuaded that we should instead refer to the trial date of the
AT&T case (for which Petitioner’s motion to transfer is
irrelevant), at least because Patent Owner does not present any
evidence of duplication between Petitioner’s contentions in this
proceeding and the invalidity contentions of the defendants in
that case (factor 4).
Inst. Dec. 25 n.8.
On rehearing, Patent Owner argues that we should consider the Texas
case and the AT&T case “collectively” and that “the AT&T [case], in the
same court with the same schedule, mitigates concerns about the pending
transfer motion because trial is set months before the projected final decision
deadline, AT&T has not filed a motion for stay, and the Panel would
duplicate the district court’s efforts.” Req. Reh’g 6. Patent Owner also
alleges that there is overlap between issues in this proceeding and in the
AT&T case. Req. Reh’g 7–8.
We consider Patent Owner’s arguments as to issue overlap in
analyzing Fintiv factor 4 below. As to Patent Owner’s reliance on the
AT&T case for factor 2, we agree with Patent Owner that the lack of a
transfer motion in that case mitigates the particular concern we raised in the
Decision regarding the pending transfer motion in the Texas case. But the
AT&T case raises a different issue that works against Patent Owner for this
factor. As we discussed in the Decision on Institution (p. 22), Petitioner
pointed out that the Texas court has issued orders delaying trials due to the
COVID-19 pandemic, and Petitioner argued that these trials will need to be
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rescheduled, which will cause cascading delays that affect other trials.
Paper 1 (“Pet.”) at 7–8 (citing Exs. 1014, 1020, 1021, 1025, 1026). Patent
Owner countered that these orders “permit different divisions in the Western
District [of Texas] to make their own determinations whether to proceed
with jury trials based on the situation in their locations” and that, “[o]n
August 18, 2020, Judge Albright issued a Divisional Standing Order
Regarding Trials In Waco indicating that the Waco ‘Division may safely
conduct trials.’” Prelim. Resp. 22–23 (citing Exs. 1025, 1026, 2006, 2007).
The AT&T case, however, was transferred to the Austin Division of the
Western District of Texas, although it was kept on the docket of Judge
Albright. Ex. 3003 (Order Transferring Case to the Austin Division). The
Orders cited by Patent Owner (Exs. 2006 and 2007) govern trials in the
Waco division. Because the AT&T case is in the Austin division where jury
trials have been delayed, we cannot ignore that the AT&T case introduces
potential delay issues that are not present in the Texas case.
We already determined that Fintiv factor 2, at most, slightly favors
exercising discretion to deny. Inst. Dec. 26. The AT&T case introduces
issues that effectively balance each other out, as discussed above.
Therefore, we maintain that this factor slightly favors exercising discretion
to deny.

3. Investment in the Parallel Proceeding by the Court and the Parties
In the Institution Decision, we determined that “this factor weighs
strongly against exercising our discretion to deny the Petition.” Inst.
Dec. 26–29. On rehearing, Patent Owner argues (1) that we
“misapprehended or overlooked the parties’ significant investment in the
parallel litigation” (Req. Reh’g 8–10) and (2) that we “overstated
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[Petitioner]’s purported diligence in filing the [P]etition” (Req. Reh’g 10–
12). We address each of these in turn.
a) The Parties’ Investment in the Parallel Litigation
Patent Owner argues that, in the Institution Decision, we focused on
the Texas court’s actions in ruling on claim construction and on Petitioner’s
motion to dismiss under 35 U.S.C. § 101 but overlooked the parties’
investment in briefing and arguing these matters. Req. Reh’g 9. We did not
overlook these efforts; we expressly addressed them. Dec. Inst. 26–28.
Patent Owner simply disagrees with our assessment, but this is not the
purpose of a rehearing request. See § II.A above. Furthermore, in support
of its argument regarding the parties’ investment in claim construction and
§ 101 briefing, Patent Owner merely refers to various entries on the docket
of the Texas case. Req. Reh’g 9 (citing Ex. 2033, Dkt. Nos. 17, 28, 32, 56,
62–64, 67, 68). Patent Owner cited these efforts in its previous briefing and,
therefore, is simply rearguing its case on rehearing. See Prelim. Resp. 25–
26. Again, we considered, and did not overlook, what Patent Owner cited.
Patent Owner further argues that, “other than acknowledging that
[Patent Owner] indicated final infringement and invalidity contentions
would be served before the institution decision on January 8, 2021, the Panel
overlooked the parties’ significant investments in preparing final
contentions.” Req. Reh’g 9 (citing Inst. Dec. 27). We did not overlook
these efforts; rather, we expressly considered them along with the fact that
discovery had only recently begun and expert discovery does not begin until
June 2021. Inst. Dec. 27. Furthermore, it is not clear on this record why the
effort Patent Owner expended in preparing final infringement contentions
was “significant” because the contentions are not in the record. Petitioner
submitted Exhibit 1022, which is a cover document for Patent Owner’s
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preliminary infringement contentions in the Texas case. Exhibit 1022 itself
is four pages, one of which is the signature page, and mostly recites
boilerplate. This document does not show any significant level of
investment. Exhibit 1022 states that Patent Owner’s “preliminary
infringement contentions are attached hereto as Exhibits 1-4,” each of which
corresponds to a different patent involved in inter partes reviews: Exhibit 1
(U.S. Patent No. 10,028,026 B2 (IPR2020-01267)), Exhibit 2 (the ’269
patent)), Exhibit 3 (U.S. Patent No. 9,998,791 B2 (IPR2020-01280)), and
Exhibit 4 (U.S. Patent No. 9,648,388 B2 (IPR2020-01359)). None of these
exhibits has been entered in this proceeding, but in IPR2020-01267,
Petitioner submitted the claim chart for the challenged patent in that case as
Exhibit 1027. That claim chart has screen shots of DISH products and links
to websites to show how each element of the asserted claims is allegedly
met, which is what one would expect from an infringement claim chart in
the ordinary course of litigation. Patent Owner did not seek to enter its final
infringement contentions with its rehearing request, and, therefore, we can
only speculate as to the level of effort expended in their preparation, which
Patent Owner characterized as “significant.” See Req. Reh’g 9.
Patent Owner also argues that Petitioner’s “submission (and [Patent
Owner]’s subsequent consideration) of the final invalidity contentions
served January 8, 2021, including about 180 claim charts,” favors exercising
discretion to deny. Req. Reh’g 9. We can only speculate as to how much
effort Patent Owner expended in its “consideration” of Petitioner’s
contentions, but, regardless, in instituting review we considered that final
invalidity contentions already would have been served. See Inst. Dec. 27.
Patent Owner also argues that “[t]he [Texas] court and [Patent Owner]
have also invested heavily in the related AT&T case, which presents
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overlapping invalidity considerations and should be considered when
evaluating efficient use of judicial resources.” Req. Reh’g 10 (citing Prelim.
Resp. 18). AT&T is not a party to this proceeding, and, therefore, AT&T’s
efforts do not favor exercising discretion to deny. Patent Owner does not
detail the efforts made by the Texas court and Patent Owner in the AT&T
case, but Patent Owner argues that both the Texas case and the AT&T case
are “in the same court with the same schedule,” which suggests similar
efforts have been made in both cases and does not tip the scale any further in
favor of exercising discretion to deny. See Req. Reh’g 6. We note, though,
that because the final invalidity contentions in the AT&T case were served
on January 29, 2021 (after our Decision on January 27, 2021), there could
not have been any efforts by Patent Owner in reviewing them at the time of
the Decision.
b) Diligence in Filing Petition
In the Institution Decision, we stated that Petitioner’s filing of the
Petition within three months of receiving Patent Owner’s preliminary
infringement contentions indicated diligence that weighs against exercising
discretion to deny. Inst. Dec. 28–29. On rehearing, Patent Owner argues
that this is inconsistent with a precedential decision of the Board. Req.
Reh’g 11–12 (citing Snap, Inc. v. SRK Tech. LLC, IPR2020-00820, Paper 15
at 11 (PTAB Oct. 21, 2020) (precedential as to § II.A)). Patent Owner,
however, focuses only on the timing of the Petition in relation to the
identification of asserted claims. In the Institution Decision, we noted that
Petitioner filed the Petition “less than three months after receiving notice of
Patent Owner’s infringement positions for all asserted claims (including
those not identified originally in the complaint) and prior to the parties
exchanging proposed claim constructions and briefing claim construction
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issues in the Texas case.” Inst. Dec. 28–29. By contrast, in Snap, the
petitioner argued that “the timing of filing enabled the Petition to take into
account both parties’ claim construction positions, which resulted in a more
focused and thorough petition than what would have been possible even
weeks earlier.” Snap, Paper 15 at 12. Thus, the present case is
distinguishable from Snap in that Petitioner did not wait until after learning
Patent Owner’s claim construction positions to file the Petition.
c) Factor 3 Determination
Having considered Patent Owner’s arguments on rehearing, we
maintain our determination that this factor weighs strongly against
exercising our discretion to deny the Petition. See Inst. Dec. 29.

4. Overlap Between Issues Raised in the Petition and
in the Parallel Proceeding
After evaluating the parties’ arguments and the evidence of record, we
determined that “there is overlap as to the claims and the asserted ground
based on Perez and Kelts” and, therefore, that “this factor weighs in favor of
exercising our discretion to deny the Petition.” Inst. Dec. 29–30. On
rehearing, Patent Owner argues that overlap between issues in this
proceeding and the AT&T case further supports exercising discretion to
deny. Req. Reh’g 7–8. In particular, Patent Owner argues that the
defendants in the AT&T case allege obviousness based on “a related Kelts
patent” and also that AT&T relies on “a related Perez publication . . . against
related patents.” Req. Reh’g 7 (citing Ex. 2032, 1, 2, 6, 16, 18, 38–47).
The Perez publication on which AT&T relies is U.S. Patent
Publication No. 2007/0157252 A1 (“the ’7252 publication”), which is the
publication of U.S. Patent Application No. 11/685,188 (“the ’188
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application”). Ex. 2032, 2. The ’269 patent purports to claim priority to the
’188 application through continuations and a divisional, and the ’188
application is a continuation-in-part of the application that published as
Perez, the publication relied on by Petitioner in this proceeding. Ex. 1001,
code (60); Ex. 1008, code (21). Thus, it is not clear, on this record, how the
’7252 publication is prior art to the claims of the ’269 patent, assuming the
claims of the ’269 patent have support in the ’188 application. Regardless,
this is less overlap than we already determined existed with respect to the
Texas case, and we already determined that Fintiv factor 4 weighs in favor
of exercising discretion to deny. Inst. Dec. 29–30. Thus, Patent Owner’s
reliance on the AT&T case on rehearing does not change our factor 4
determination.

5. Whether the Petitioner and the Defendant in the Parallel Proceeding
Are the Same Party
In the Institution Decision, we noted that the fact that Petitioner is the
defendant in the Texas case “could weigh either in favor of, or against,
exercising discretion to deny institution, depending on which tribunal was
likely to address the challenged patent first.” Inst. Dec. 31. We then
determined that “this factor is, at most, slightly in favor of exercising our
discretion to deny the Petition.” Inst. Dec. 31. On rehearing, Patent Owner
argues that we inappropriately “collaps[ed] the fifth Fintiv factor into the
second.” Req. Reh’g 13. We disagree. In this factor, Fintiv considers
whether the Board would be “redoing the work of another tribunal.” Fintiv,
Paper 11 at 14. Thus, the timing of the parallel proceeding is relevant to
consider in this factor. In any event, we determined that this factor, at most,
slightly favors exercising discretion to deny. Inst. Dec. 31.
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Moreover, many of Patent Owner’s arguments on rehearing are based
on the AT&T case, to which Petitioner is not a party. See Req. Reh’g 6–7,
10. Fintiv advises that, “[i]f a petitioner is unrelated to a defendant in an
earlier court proceeding, the Board has weighed this fact against exercising
discretion to deny institution.” Fintiv, Paper 11 at 13–14. Thus, to the
extent Patent Owner requests us to reconsider our Institution Decision in
light of the AT&T case, this factor weighs against exercising discretion to
deny.

6. Other Circumstances that Impact the Board’s Exercise of Discretion,
Including the Merits
In the Institution Decision, we determined that “the merits in this
proceeding, taken as a whole, weigh against discretionary denial.” Inst.
Dec. 32. On rehearing, Patent Owner argues that we erred in considering
Kelts’s disclosure of hand-held computers and video game consoles to teach
mobile devices and interactive mobile applications because, according to
Patent Owner, Petitioner argued that “similar conventional devices are not
mobile and do not include interactive mobile applications.” Req. Reh’g 14
(citing Inst. Dec. 48–49; Pet. 14).
We disagree with Patent Owner. In discussing the priority of the
challenged claims, Petitioner argued that “[t]he only type of subscriber
device discussed in the Perez reference and ’997 patent is a conventional [set
top box (STB)], which is not mobile and is not connected to the Internet.”
Pet. 14. Therefore, Petitioner did not argue that hand-held computers and
game consoles were similar to STBs. In our Institution Decision, we noted
that Kelts discloses hand-held computers and video game consoles, the latter
being expressly recited in claim 16 of the ’269 patent, and we stated,
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therefore, that, “even if Kelts’s phones and [personal digital assistants
(PDAs)] were as limited as Patent Owner suggests, this does not take away
from Kelts’s teachings of other devices capable of displaying the user
interface and content requested through that user interface.” Inst. Dec. 48–
49 (citing Ex. 1007 ¶ 138). Thus, we did not overlook Petitioner’s priority
arguments.
We also did not “dismiss[]” Patent Owner’s arguments regarding
Kelts’s phones and PDAs. See Req. Reh’g 14. Rather, we stated that, based
on the current record, “we disagree with Patent Owner’s contentions
regarding the limited functionality of Kelts’s phones.” Inst. Dec. 49 (citing
Ex. 1007 ¶¶ 3, 101).

7. Overall Reassessment of Fintiv Factors
After considering Patent Owner’s arguments on rehearing, we are not
persuaded that we misapprehended or overlooked any matters or abused our
discretion in declining to exercise discretion to deny institution.

III. CONCLUSION
After considering Patent Owner’s arguments on rehearing, we are not
persuaded that we misapprehended or overlooked any matters or abused our
discretion. We, therefore, decline to exercise our discretion to deny
institution under 35 U.S.C. §§ 314 or 325(d).

IV. ORDER
In view of the foregoing, it is:
ORDERED that Patent Owner’s Request for Rehearing of the Board’s
Institution Decision is denied.
IPR2020-01332
Patent 10,506,269 B2
19
For PETITIONER:
Alyssa Caridis
Patrick Herman
ORRICK, HERRINGTON & SUTCLIFFE LLP
A8cptabdocket@orrick.com
P52ptabdocket@orrick.com

For PATENT OWNER:

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

Michael Specht
Jason Fitzsimmons
Richard Bemben
STERNE KESSLER GOLDSTEIN & FOX PLLC
Mspecht-ptab@sternekessler.com
Jfitzsimmons-ptab@sternekessler.com
Rbemben-ptab@sternekessler.com

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