Trials@uspto.gov
`571-272-7822
`
`
` Paper 15
` Entered: July 10, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ERICSSON INC. and
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01077
`Patent 5,963,557
`____________
`
`
`
`Before BRIAN J. McNAMARA, JUSTIN BUSCH, and
`MINN CHUNG, Administrative Patent Judges.
`
`Opinion for the Board filed by Administrative Patent Judge MINN CHUNG
`
`Opinion Dissenting-in-part filed by Administrative Patent Judge JUSTIN
`BUSCH
`
`CHUNG, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review and
`Grant of Motion for Joinder
`37 C.F.R. § 42.108
`37 C.F.R. § 42.122
`
`

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`Case IPR2015-01077
`Patent 5,963,557
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`
`I. INTRODUCTION
`
`Ericsson Inc. and Telefonaktiebolaget LM Ericsson (“Petitioner”)
`
`filed a Petition (Paper 1, “Pet.”) to institute an inter partes review of claims
`
`11 and 25 (the “challenged claims”) of U.S. Patent No. 5,963,557 (“the ’557
`
`patent”). See 35 U.S.C. §§ 311–19. The Petition involves the same parties
`
`and the same patent at issue in an instituted trial proceeding, Ericsson Inc.
`
`and Telefonaktiebolaget LM Ericsson v. Intellectual Ventures II LLC, Case
`
`IPR2014-01412 (“the ’1412 proceeding”). Petitioner concurrently filed a
`
`Motion for Joinder (Paper 3, “Mot.”), seeking to join this proceeding with
`
`the ’1412 proceeding. Subsequently, Intellectual Ventures II LLC (“Patent
`
`Owner”) filed an Opposition to Petitioner’s Motion for Joinder (Paper 7,
`
`“Opp.”). Pursuant to our Order Setting Dates (Paper 8), Patent Owner filed
`
`a Preliminary Response (Paper 10, “Prelim. Resp.”) on June 15, 2015, and
`
`Petitioner filed its Reply In Support of Motion for Joinder (Paper 9,
`
`“Reply”) on the same day.
`
`For the reasons described below, we institute an inter partes review of
`
`claims 11 and 25 of the ’557 patent and grant Petitioner’s Motion for
`
`Joinder.
`
`
`
`A. Related Proceedings
`
`Petitioner indicates the ’557 patent is at issue in the following
`
`proceedings. Pet. 1–2.
`
`Title
`
`Docket Number
`
`Intellectual Ventures I LLC v. AT & T
`Mobility LLC
`
`1:13-cv-01668-LPS (D. Del.)
`
` 2
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`

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`Case IPR2015-01077
`Patent 5,963,557
`
`
`Title
`
`Docket Number
`
`Intellectual Ventures I LLC v. Leap
`Wireless International Inc.
`
`Intellectual Ventures I LLC v. Nextel
`Operations Inc.
`
`1:13-cv-01669-LPS (D. Del.)
`
`1:13-cv-01670-LPS (D. Del.)
`
`Intellectual Ventures I LLC v. T-Mobile
`USA Inc.
`
`1:13-cv-01671-LPS (D. Del.)
`
`Intellectual Ventures I LLC v. United
`States Cellular Corp.
`
`1:13-cv-01672-LPS (D. Del.)
`
`
`On April 29, 2014, Petitioner filed a motion to intervene in the
`
`aforementioned proceedings. Id. at 2. On September 8, 2014, the district
`
`court granted that motion, and severed the cases into ten separate cases. Id.
`
`As the result, the ’557 patent is also at issue in the following proceedings.
`
`Id. at 2–3.
`
`Title
`
`Docket Number
`
`Intellectual Ventures II LLC v. AT & T
`Mobility LLC
`
`1:14-cv-01229-LPS (D. Del.)
`
`Intellectual Ventures II LLC v. Leap
`Wireless International Inc.
`
`Intellectual Ventures II LLC v. Nextel
`Operations Inc.
`
`1:14-cv-01230-LPS (D. Del.)
`
`1:14-cv-01231-LPS (D. Del.)
`
`Intellectual Ventures II LLC v. T-Mobile
`USA Inc.
`
`1:14-cv-01232-LPS (D. Del.)
`
`Intellectual Ventures II LLC v. United
`States Cellular Corp.
`
`1:14-cv-01233-LPS (D. Del.)
`
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`U.S. Patent 6,370,153, which issued from a continuation-in-part
`
`application of the application that resulted in the ʼ557 patent, is also the
`
`subject of an instituted trial proceeding, Ericsson Inc. and
`
`Telefonaktiebolaget LM Ericsson v. Intellectual Ventures II LLC, Case
`
`IPR2014-01471 (“the ’1471 proceeding”).
`
`
`
`B. The ’557 Patent
`
`The ’557 patent relates to a method and system for enabling point-to-
`
`point and multicast communication in a network using three types of
`
`communication channels—namely, upstream payload channels, upstream
`
`control channels, and downstream channels. Ex. 1001, Abstract. Figure 7 of
`
`the ’557 patent is reproduced below.
`
`
`
`Figure 7 illustrates the three types of communication channels allocated by
`
`the network of the invention.
`
`The ’557 patent discloses that a central controller at the head end of
`
`the network is connected to the subscriber stations via a shared medium. Ex.
`
`1001, col. 8, ll. 2–5. An upstream payload channel carries payload data
`
`from the stations to the central controller, and an upstream control channel is
`
`used to transmit upstream control data. Downstream channels carry data
`
`from the central controller to the stations. Id. at col. 8, ll. 34–48. To allow
`
`“contention free transmission” on an upstream payload channel (id. at col.
`
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`11, ll. 33–34), stations send reservation requests on the upstream control
`
`channel to the central controller, which responds by assigning specific
`
`upstream transmission slots to each station and indicating the slot
`
`assignment by transmitting a control message (“reservation grant”) to the
`
`stations on the downstream channel (id. at col. 8, ll. 51–55, col. 13, ll. 39–
`
`48). Each station then transmits payload data only in the assigned slots of
`
`the upstream payload channel. Id. at col. 8, ll. 56–58.
`
`
`
`C. Claims
`
`Claims 11 and 25 are reproduced below with the key limitations
`
`emphasized in italics:
`
`11. A network comprising:
`
`a centralized controller,
`
`a station connected to said centralized controller over a
`shared medium,
`
`a first distinct shared unidirectional transmission path
`being established between said centralized controller and said
`station for transmitting data from said centralized controller to
`said station, wherein the first path being a downstream channel,
`and
`
`at least a second and third distinct shared unidirectional
`transmission paths being established between said centralized
`controller and said station for transmitting data from said
`station to said centralized controller, wherein the second and
`third paths each being an upstream channel,
`
`wherein said station transmitting reservation requests
`data on said second path and receiving a payload data
`transmission grant from said centralized controller on said first
`path to transmit payload data on said third path from said
`station to said centralized controller on time-slots allocated by
`said centralized controller, and
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`receiving said
`wherein said centralized controller
`reservation request data on said second path from said station
`and transmitting on said first path a payload data transmission
`grant to said station for transmitting payload data on said third
`path on said time-slots allocated by said centralized controller
`and
`
`wherein said first path is a broadcasting downstream
`channel carrying MPEG2 transport packets.
`
`
`
`25. A multiple access method via a shared medium of a
`network, said network comprising a centralized controller and a
`plurality of stations connected to said centralized controller
`over a shared medium, wherein a first distinct shared
`unidirectional transmission path is established between said
`centralized controller and said stations for broadcasting data
`from said centralized controller to said stations, at least second
`and third distinct shared unidirectional transmission paths for
`transmitting data from said stations
`to said centralized
`controller, wherein the first path being a downstream channel
`and said second and third paths each being an upstream
`channel, said multiple access method comprising the steps of:
`
`transmitting from a particular station reservation request
`data on said second path and receiving a payload data
`transmission grant message from said centralized controller on
`said first path to transmit payload data packets on said third
`path from said particular station to said centralized controller on
`payload time-slots allocated by said centralized controller,
`
`transmitting from said particular station said reservation
`request data on said second path if said particular station fails to
`receive a grant message from said centralized controller within
`a predetermined time delay or if said particular station receives
`a collision status message from said centralized controller on
`said first path to retransmit said reservation request according to
`a collision resolution algorithm,
`
`receiving by said centralized controller said reservation
`request data on said second path from said particular station,
`and
`transmitting on said first path said payload data
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`for
`to said particular station
`transmission grant data
`transmission on said third path of payload data on said payload
`time-slots allocated by said centralized controller, and
`
`optionally detecting by said centralized controller a
`collision due to simultaneous transmission of said reservation
`requests by two or more stations on the same reservation time-
`slot of said second path, and then transmitting said collision
`statuses of said reservation requests on said first path to said
`stations, which will retransmit their reservation requests
`according to said collision resolution algorithm,
`
`wherein said first path is a broadcasting downstream
`channel carrying MPEG2 transport packets.
`
`
`
`D. Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability (Pet. 5–6,
`
`13–60):
`
`Claims Challenged
`
`Statutory Basis
`
`Ground
`
`11 and 25
`
`§ 103(a)
`
`11 and 25
`
`§ 103(a)
`
`11 and 25
`
`§ 103(a)
`
`Obvious over the ’450 patent1
`(Pet. 18–37, Ground 1)
`
`Obvious over the ’450 patent
`and the ’219 patent2 (Pet. 37–
`47, Ground 2)
`
`Obvious over the ’450 patent
`and the Bungum publication3
`(Pet. 47–51, Ground 3)
`
`
`1 Ex. 1005, U.S. Patent No. 5,392,450 (Feb. 21, 1995).
`2 Ex. 1006, U.S. Patent No. 6,334,219 B1 (Dec. 25, 2001).
`3 Ex. 1011, O.W. Bungum, Transmultiplexing, Transcontrol and
`Transscrambling of MPEG-2/DVB Signal, September 12–16, 1996,
`INTERNATIONAL BROADCASTING CONVENTION, CONFERENCE PUBLICATION
`NO. 428, 288–293.
`
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`II. CLAIM CONSTRUCTION
`
`As set forth above, the concluding “wherein” clauses of claims 11 and
`
`25 are identical, and recite “wherein said first path is a broadcasting
`
`downstream channel carrying MPEG2 transport packets” (the “MPEG2
`
`limitation”). Petitioner contends that three terms included in the portions of
`
`the claims preceding the concluding MPEG2 limitation—namely,
`
`“transmission path,” “optionally,” and “time-slot”—should be construed
`
`expressly. Id. at 14–18. With respect to the terms “transmission path” and
`
`“optionally,” Petitioner contends that we should adopt the constructions of
`
`the terms provided in our Decision to Institute in the ’1412 proceeding. Id.
`
`at 14–17. Regarding “time-slot,” Petitioner argues that we should construe
`
`the term as the Board construed “slot” in the Decision to Institute in the
`
`’1471 proceeding. Id. at 17–18.
`
`Patent Owner contends the terms “transmission path” and “time-slot”
`
`need not be construed expressly because the plain and ordinary meaning of
`
`each term is clear. Prelim. Resp. 7. Patent Owner also contends that the
`
`construction of the term “optionally” adopted for the purposes of our
`
`Decision to Institute in the ’1412 proceeding was erroneous, and, therefore,
`
`should be discarded. Id. at 8–11.
`
`These claim construction disputes have no bearing on the patentability
`
`issues presented in this proceeding because the parties’ patentability disputes
`
`focus on the concluding MPEG2 limitation of claims 11 and 25, which does
`
`not recite any of the three disputed terms. In other words, there is no dispute
`
`in this proceeding that would turn on the construction of the terms
`
`“transmission path,” “optionally,” or “time-slot.” Therefore, for purposes of
`
`this Decision, we need not revisit the preliminary claim construction
`
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`determinations in our Decisions instituting trial in the related proceedings.
`
`See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`
`1999) (only those terms that are in controversy need to be construed, and
`
`only to the extent necessary to resolve the controversy).
`
`III. ANALYSIS OF PETITIONER’S PRIOR ART CHALLENGES
`
`A. Claims 11 and 25 as Obvious over the ’450 Patent (Ground 1)
`
`The ’450 patent discloses a satellite communications system in which
`
`a satellite relays information between small-aperture terminals (SAT), which
`
`may be portable terminals (PT), and a hub network control terminal (NCT).
`
`Ex. 1005, Abstract. The NCT receives requests from the PTs, allocates
`
`channel resources, and broadcasts housekeeping messages. Id. Three
`
`separate data channels, each on a different frequency, are used to effect
`
`reservation and basic data transfer. Id. at col. 4, ll. 51–53. As shown in Fig.
`
`3, these are a forward channel 25-1 from the NCT (outbound), a reservation
`
`channel 25-2 from PT (inbound), and a return channel 25-3 from PT
`
`(inbound). Id. at col. 4, ll. 53–57.
`
`Petitioner contends claims 11 and 25 are unpatentable under 35
`
`U.S.C. § 103(a) over the ’450 patent. In particular, Petitioner contends that
`
`the ’450 patent discloses every limitation of claims 11 and 25 except for the
`
`concluding MPEG2 limitation. Petitioner provides explanations and cites
`
`disclosures of the ’450 patent supporting its contention. Pet. 20–28, 33–37.
`
`In addition, Petitioner relies upon the Declaration of Dr. Wayne Stark
`
`(“Stark Decl.,” Ex. 1003) to support its positions. Id. (citing Ex. 1003 ¶¶ 98,
`
`100, 101, 103–105, 113–115). Patent Owner does not dispute the ’450
`
`patent discloses every limitation of claims 11 and 25 except for the
`
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`concluding MPEG2 limitation; rather, Patent Owner’s rebuttal arguments
`
`focus on the MPEG2 limitation. See Prelim. Resp. 12–21. Based on this
`
`record and consistent with our preliminary determination in our Decision to
`
`Institute in the ’1412 proceeding, we are persuaded that, for purposes of this
`
`Decision, Petitioner has provided sufficient evidence to show that the ’450
`
`patent discloses all of the limitations of claims 11 and 25 except for the
`
`concluding MPEG2 limitation.
`
`Petitioner contends that, although the ’450 patent does not disclose
`
`transmitting MPEG2 transport packets, the ’450 patent renders the MPEG2
`
`limitation obvious in view of the knowledge of a person of ordinary skill in
`
`the art regarding the MPEG2 standard and technology. Pet. 29–32. Citing
`
`the testimony of Dr. Stark, Petitioner contends that it would have been
`
`obvious to a person of ordinary skill in the art to use the well-known,
`
`standardized MPEG2 packet format as a type of data transmitted over the
`
`network disclosed in the ’450 patent. Pet. 30–32 (citing Ex. 1003 ¶¶ 107–
`
`110). The evidence relied upon by Petitioner and Dr. Stark includes the
`
`ITU-T H.262 MPEG2 standard (“MPEG2 standard,” Ex. 1023)4 and the
`
`IEEE 802.14 standard (Ex. 1009). Id.; Ex. 1003 ¶¶ 83, 107–108.
`
`Petitioner contends a person of ordinary skill would have had a
`
`reasonable expectation of success in using the MPEG2 transport packets to
`
`transmit data on the downstream channel of the satellite network disclosed in
`
`the ’450 patent because the MPEG2 standard mentions the broadcast
`
`satellite service as one of the areas where the specified MPEG2 technology
`
`may be used. Pet. 31 (citing Ex. 1023; Ex. 1003 ¶ 108). Dr. Stark further
`
`
`4 According to Petitioner, the ITU-T H.262 standard is equivalent to the
`ISO/IEC International Standard 13818-2. Pet. 30; Ex. 1023, Foreword.
`
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`testifies that the IEEE 802.14 standard, discussed in the ’557 patent as
`
`admitted prior art (see Ex. 1001, col. 2, ll. 52–53, col. 3, ll. 48–49), required
`
`support of MPEG2 encoded data. Ex. 1003 ¶ 108 (citing Ex. 1009, 30).
`
`Hence, Petitioner contends, citing the testimony of Dr. Stark, that selecting a
`
`particular type of formatted data, such as the MPEG2 encoded data, to
`
`transmit data would have been a matter of common sense or a design choice,
`
`and that it would have been obvious to a person of ordinary skill in the art to
`
`combine prior art elements (the satellite network with a downstream
`
`broadcasting channel and the MPEG2 transport packets) according to known
`
`methods to yield predictable results (transmitting MPEG2 transport packets
`
`on the downstream broadcasting channel). Pet. 30–31 (citing Ex. 1003
`
`¶ 108).
`
`Patent Owner contends Dr. Stark’s opinion should be disregarded
`
`because his statements regarding the knowledge of a person of ordinary skill
`
`are based on inadmissible evidence. Specifically, Patent Owner contends
`
`the statements in paragraph 83 of the Stark Declaration labeled POSA1
`
`through POSA5 should be disregarded because they rely on references that
`
`have not been filed as exhibits in this proceeding. Prelim. Resp. 12–13. The
`
`statements POSA1 through POSA5, however, do not relate specifically to
`
`the MPEG2 limitation. See Ex. 1003 ¶ 83. Further, neither Dr. Stark nor
`
`Petitioner relies on POSA1–POSA5 to show the knowledge of a person of
`
`ordinary skill regarding the MPEG2 standard or technology specifically. See
`
`Ex. 1003 ¶¶ 83, 107–110; Pet. 29–32. Hence, nothing in Patent Owner’s
`
`argument concerning POSA1–POSA5 justifies disregarding the testimony of
`
`Dr. Stark concerning the knowledge of a person of ordinary skill regarding
`
`the MPEG2 limitation or the MPEG2 standard or technology.
`
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`Patent Owner also contends that we should disregard Dr. Stark’s
`
`assertion in POSA6 (Ex. 1003 ¶ 83) that a person of ordinary skill would
`
`know “details” of the 211-page MPEG2 technical specification because Dr.
`
`Stark provides no facts to support his conclusions and no discussion
`
`showing that any such unspecified details would have been known. Prelim.
`
`Resp. 13–14. At this preliminary stage, we are not persuaded Patent
`
`Owner’s disagreement with Dr. Stark concerning the level of knowledge that
`
`one of ordinary skill would have of the published MPEG2 standard justifies
`
`disregarding Dr. Stark’s opinion.
`
`We have reviewed Patent Owner’s substantive rebuttal arguments
`
`(Prelim. Resp. 12–21) and the evidence presented by Petitioner (Pet. 18–37)
`
`as well as the supporting testimony of Petitioner’s declarant, Dr. Stark
`
`(Ex. 1003 ¶¶ 83, 95, 97–116). At this preliminary stage, we credit the
`
`testimony of Dr. Stark and are persuaded that Petitioner has provided
`
`sufficient evidence, for purposes of this Decision, to show a person of
`
`ordinary skill in the art would have combined the teachings of the ’450
`
`patent with his or her knowledge regarding the MPEG2 standard and
`
`technology to render claims 11 and 25 obvious. Accordingly, based on the
`
`foregoing discussion, we are persuaded Petitioner has provided sufficient
`
`evidence that establishes a reasonable likelihood of prevailing in its
`
`challenge to claims 11 and 25 under 35 U.S.C. § 103(a) as obvious over the
`
`’450 patent.
`
`B. Claims 11 and 25 as Obvious over the Combination of
`the ’450 Patent and the ’219 Patent (Ground 2)
`
`Petitioner contends claims 11 and 25 are unpatentable under 35
`
`U.S.C. § 103(a) over the combination of the ’450 patent and the ’219 patent.
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`Similar to Ground 1, the parties’ patentability disputes focus on the
`
`concluding MPEG2 limitation as they do not dispute the ’450 patent
`
`discloses all limitations of claims 11 and 25 with the exception of the
`
`concluding MPEG2 limitation.
`
`The ’219 patent discloses channel allocation for a hybrid optical fiber-
`
`coaxial cable network used in providing communications in telephone, data,
`
`television, and video services. Ex. 1006, col. 1, ll. 25–31. The ’219 patent
`
`states that its principles could be applied to other networks such as wireless
`
`networks. Id. at col. 18, ll. 59–67. The ’219 patent discloses a head end
`
`providing downstream transmission of control and telephony information,
`
`which may be on orthogonal carriers in a first bandwidth, and upstream
`
`transmission from service units in a second bandwidth using at least one
`
`control channel for transmission of upstream control data and a plurality of
`
`telephony information channels for transmission for upstream telephony
`
`information. Id. at col. 5, ll. 36–45. Telephony information in the ’219
`
`patent includes telephone services and digital data transfer services. Id. at
`
`col. 1, ll. 29–31.
`
`Petitioner contends the ’219 patent discloses that the downstream
`
`telephony information includes MPEG encoded data. Pet. 41 (citing
`
`Ex. 1006, col. 111, ll. 52–58; Ex. 1003 ¶ 126). Petitioner further contends
`
`that the ’219 patent provides a motivation to use MPEG2 transport packets
`
`instead of MPEG packets because the patent states that digital video can be
`
`formatted in “MPEG or equivalent” form. Id. at 42 (quoting Ex. 1006,
`
`col. 111, l. 58) (internal quotation marks omitted). Petitioner also argues it
`
`would have been obvious to a person of ordinary skill to use MPEG2
`
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`transport packets as a matter of common sense or a design choice because
`
`MPEG2 was a well-known evolution of MPEG. Id. (citing Ex. 1003 ¶ 126).
`
`Petitioner contends a person of ordinary skill would have been
`
`motivated to combine the ’450 patent and the ’219 patent because the ’219
`
`patent provides an express motivation to use its concepts in wireless
`
`networks, which would have included the satellite network of the ’450
`
`patent. Id. (citing Ex. 1006, col. 18, ll. 59–67). Citing the testimony of Dr.
`
`Stark, Petitioner further contends combining the ’450 patent and the ’219
`
`patent would have been simply a combination of known prior art elements (a
`
`downstream telephony channel broadcasting MPEG2 data of the ’219 patent
`
`and the satellite network of the ’450 patent) according to known methods
`
`(adding the downstream telephony channel broadcasting MPEG2 transport
`
`packets to the satellite network) to yield predictable results (broadcasting
`
`data according to the MPEG2 format). Id. at 42–43 (citing Ex. 1003 ¶¶ 118–
`
`122).
`
`Patent Owner contends the proposed combination would not have
`
`been obvious to a person of ordinary skill in the art because, although the
`
`’219 patent addresses HFC networks with a lower delay and much higher
`
`data rate of 4 Mbps, Petitioner has provided “no factual support to
`
`demonstrate that the network disclosed in the ’450 patent could support the
`
`MPEG-2 format.” Prelim. Resp. 22. Patent Owner’s argument focuses,
`
`however, on whether the networks can be combined, not on what the
`
`combined teachings of the references would have suggested to a person of
`
`ordinary skill.
`
`At this preliminary stage, we credit the testimony of Dr. Stark and are
`
`persuaded that Petitioner has provided sufficient evidence, for purposes of
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`this Decision, to show that a person of ordinary skill in the art would have
`
`combined the teachings of the ’450 patent and the ’219 patent to render
`
`claims 11 and 25 obvious. Accordingly, based on the foregoing discussion,
`
`we are persuaded Petitioner has provided sufficient evidence that establishes
`
`a reasonable likelihood of prevailing in its challenge to claims 11 and 25
`
`under 35 U.S.C. § 103(a) as obvious over the combination of the ’450 patent
`
`and the ’219 patent.
`
`C. Claims 11 and 25 as Obvious over the Combination of
`the ’450 Patent and the Bungum Publication (Ground 3)
`
`Petitioner challenges claims 11 and 25 as obvious under 35 U.S.C.
`
`§ 103(a) over the combination of the ’450 patent and the Bungum
`
`publication. Petitioner contends that the Bungum publication, entitled
`
`“Transmultiplexing, Transcoding, and Transscrambling of MPEG-2/DVB
`
`Signal,” (“Bungum,” Ex. 1011) is available as prior art under 35 U.S.C.
`
`§ 102(a). Pet. 47. Similar to Grounds 1 and 2, the parties’ patentability
`
`disputes focus on the concluding MPEG2 limitation of the challenged
`
`claims.
`
`Bungum discloses broadcasting signals over satellite, telecom, and
`
`cable networks using the MPEG-2/DVB standard.5 Ex. 1011, Abstract.
`
`Figure 1 of the Bungum publication is reproduced below.
`
`
`5 The ISO/IEC 13818-1 standard, the MPEG-2/DVB standard cited in
`Bungum (Ex. 1011, 293 n.2), is the same MPEG-2 standard discussed in the
`’557 patent (Ex. 1001, col. 14, ll. 19–24), which appears to be an earlier
`version of the ITU-T H.262 / ISO/IEC International Standard 13818-2
`discussed in Ground 1 (see Ex. 1023, Foreword).
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`Figure 1 describes a transmultiplexer that receives MPEG-2/DVB transport
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`streams from multiple signal sources. See Ex. 1011, 288. Bungum discloses
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`that a digital broadcaster can take the downstream MPEG2 transport streams
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`received from the satellite broadcast and multiplex the signal with other
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`transport streams from other sources. See id. at Abstract, 288–289.
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`Petitioner contends that Bungum teaches the MPEG2 limitation of
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`claims 11 and 25 and that the combination of Bungum and the ’450 patent
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`teaches all of the limitations of claims 11 and 25. Pet. 48–51 (citing
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`Ex. 1011, Abstract, Figure 1, 288–289; Ex. 1003 ¶ 137). Citing the
`
`testimony of Dr. Stark, Petitioner further contends that a person of ordinary
`
`skill would have been motivated to combine the ’450 patent with Bungum
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`because Bungum teaches that MPEG2 signals are broadcast over satellite
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`channels and MPEG2 was well-known as an international technical
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`standard. Pet. 50 (citing Ex. 1003 ¶ 138). Petitioner also contends that
`
`sending MPEG2 files over the network of the ʼ450 patent would have been
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`simply a combination of known prior art elements (broadcasting MPEG2
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`data on a downstream broadcasting channel in a satellite network) according
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`to known methods (using the MPEG2 format, which was well-known and
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`taught by Bungum for satellite networks) to yield predictable results
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`(broadcasting MPEG2 transport packets over satellite networks). Id. at 50–
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`51 (citing Ex. 1003 ¶ 138).
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`Patent Owner does not dispute the teachings of Bungum, but, rather,
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`focuses on the reasons to combine the ’450 patent with Bungum. Prelim.
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`Resp. 22–24. Specifically, Patent Owner contends that a person of ordinary
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`skill would not have been motivated to make the proposed combination
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`because Bungum is directed to unidirectional broadcasting, whereas the ’450
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`patent describes a bidirectional multiple access satellite system with three
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`channels. Id. at 22–23. Patent Owner also contends, similar to its argument
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`in Ground 2, that although Bungum discloses broadband networks with a
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`low delay and high data rates, Petitioner has not established “the network
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`disclosed in the ’450 patent could support the MPEG-2 format or why a
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`POSA would use a low-rate channel design of the ’450 patent to transmit
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`high-rate video.” Id. at 23. Similar to Ground 2, Patent Owner’s arguments
`
`focus on whether the networks can be combined, not on what the combined
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`teachings of the references would have suggested to a person of ordinary
`
`skill in the art.
`
`At this preliminary stage, we credit the testimony of Dr. Stark and are
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`persuaded that Petitioner has provided sufficient evidence, for purposes of
`
`this Decision, to show a person of ordinary skill in the art would have
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`combined the teachings of the ’450 patent and Bungum to render claims 11
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`and 25 obvious. Accordingly, based on the foregoing discussion, we are
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`persuaded Petitioner has provided sufficient evidence that establishes a
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`reasonable likelihood of prevailing in its challenge to claims 11 and 25
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`under 35 U.S.C. § 103(a) as obvious over the combination of the ’450 patent
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`and the Bungum publication.
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`
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`IV. JOINDER
`
`Petitioner contends joinder is appropriate for several reasons,
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`including efficiency and simplification of briefing and discovery. Mot. 6.
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`Petitioner also contends that joinder would not have a substantial impact on
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`the trial schedule in the ’1412 proceeding. Id. Petitioner contends that the
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`Board has previously allowed joinder of additional grounds presented by the
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`same party where “[t]he same patents and parties are involved in both
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`proceedings,” “[t]here is an overlap in the cited prior art,” “[t]here is no
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`discernible prejudice to either party,” and “[p]etitioner has been diligent and
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`timely in filing the motion.” Id. at 7, quoting Microsoft Corp. v. Proxyconn,
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`Inc., IPR 2013-00109, Paper 15, slip. op. 4 (PTAB Feb. 25, 2013) (internal
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`quotation marks omitted).
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`Petitioner contends it has been diligent and timely in filing its Motion
`
`for Joinder because claim 11 has been asserted by Patent Owner only
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`recently in the co-pending district court patent infringement cases and
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`Petitioner filed its Motion within one month of the date of institution of the
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`’1412 proceeding, as required by 37 C.F.R. § 42.122(b). Id. at 6, 9. As
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`discussed above, this Petition involves the same parties and the same patent
`
`at issue in the ’1412 proceeding. Petitioner contends that this Petition
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`challenges only two additional claims of the ’557 patent, claims 11 and 25,
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`which are entirely duplicative of the claims challenged in the ’1412
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`proceeding except for their respective concluding “wherein” clauses. Id. at
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`7. As discussed above, the concluding “wherein” clauses of claims 11 and
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`25 recite identical limitations, i.e., the MPEG2 limitation. Petitioner further
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`contends that this Petition relies on the same prior art as the ’1412
`
`proceeding with the exception of the Bungum publication, which is relied
`
`upon only for the concluding MPEG2 limitation. Id. at 8. Hence, Petitioner
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`argues, addressing this additional limitation would provide efficiency while
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`not substantially increasing the burden on the Board or the parties in the
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`’1412 proceeding. Id. at 6.
`
`Petitioner further contends, for similar reasons, joinder would simplify
`
`the briefing and discovery in this case. Petitioner argues, because the parties
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`are the same and the claim elements, prior art, and arguments substantially
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`overlap, one set of responsive briefing, as opposed to two sets largely
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`addressing the same issue, would reduce briefing efforts and conserve the
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`Board’s and the parties’ resources. Id. at 10. Petitioner additionally asserts
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`that it relies on the testimony of the same expert, Dr. Stark, to support its
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`arguments in both proceedings. Hence, deposing witnesses once, instead of
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`conducting two depositions directed to substantially the same issues and
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`questions would be more efficient. Id. Further, Petitioner contends Patent
`
`Owner would not suffer any discernable prejudice from joinder because
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`Patent Owner already had the opportunity to consider the overlapping art
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`and issues. Id. at 8–9.
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`Patent Owner contends joinder should be denied because, properly
`
`construed, 35 U.S.C. § 315(c) does not allow joinder of issues. Opp. 3–5.
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`Patent Owner argues, although the Board currently does not have a uniform
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`view of whether § 315(c) authorizes joinder of grounds presented in
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`different petitions by the same party, the Board’s decisions that allowed such
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`joinder are incorrect. Id. at 4–5.
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`Addressing the issues specific to this proceeding, Patent Owner
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`contends Petitioner had notice regarding claims 11 and 25 at the time of
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`filing of its petition for the ’1412 proceeding because the complaints in the
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`co-pending patent infringement cases alleged infringement of “one or more”
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`and “any or all” of the claims of the ’557 patent. Id. at 1, 8. We are not
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`persuaded that such broad and general allegations constitute notice specific
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`to claims 11