UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`DISH Network, L.L.C.,
`Petitioner
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`v.
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`TQ Delta LLC,
`Patent Owner
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`U.S. Patent No. 7,835,430
`Filing Date: June 3, 2009
`Issue Date: November 16, 2010
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`Inter Partes Review No. 2016-_____
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`Title: Multicarrier Modulation Messaging for Frequency Domain Received Idle
`Channel Noise Information
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`MOTION FOR JOINDER
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`I.
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`INTRODUCTION
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`DISH Network L.L.C. (“DISH” OR “Petitioner”) submits concurrently with this motion a
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`Petition for Inter Partes Review of U.S. Patent No. 7,835,430 (the “’430 patent”) (“Petition”)
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`based on the identical grounds that form the basis for the pending inter partes review initiated by
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`Cisco Systems, Inc. concerning the same patent, Case No. IPR2016-01006 (the “Cisco IPR”).
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`DISH respectfully requests that the Petition be instituted and moves that the Petition be
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`joined with the Cisco IPR pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b).
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`DISH merely requests an opportunity to join with the Cisco IPR as an “understudy” to Cisco,
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`only assuming an active role in the event Cisco settles with Patent Owner TQ Delta, LLC (“TQ
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`Delta”). DISH does not seek to alter the grounds upon which the Board has already instituted the
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`Cisco IPR, and joinder will have no impact on the IPR’s existing schedule. DISH has conferred
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`with Cisco and Cisco does not oppose this motion. Under Rule 42.122(b), this motion is timely
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`as it was filed within one month of the institution of IPR2016-01006.
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`II.
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`BACKGROUND AND RELATED PROCEEDINGS
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`TQ Delta, the owner of the ’430 patent, sued six companies, including DISH, in the
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`District of Delaware in July 2015 for infringement of U.S. Pat. Nos. 6,961,369, 7,835,430,
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`8,238,412, 8,432,956, 8,611,404, 8,718,158, 9,014,243, and 9,094,268 (collectively, the
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`“Asserted Patents.”). These litigations are TQ Delta LLC v. Comcast Cable Communications,
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`LLC, No. 1-15-cv-00611 (D. Del. 2015); TQ Delta LLC v. CoxCom, LLC et al., No. 1-15-cv-
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`00612 (D. Del. 2015); TQ Delta LLC v. DIRECTV et al., No. 1-15-cv-00613 (D. Del. 2015); TQ
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`Delta LLC v.DISH Network Corporation et al., No. 1-15-cv-00614 (D. Del. 2015); TQ Delta
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`LLC v. Time Warner Cable Inc., et al., No. 1-15-cv-00615 (D. Del. 2015); and TQ Delta LLC v.
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`Verizon Communications, Inc. et al., Inc., No. 1-15-cv-00616 (D. Del. 2015). TQ Delta
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`subsequently voluntarily dismissed the ‘369 and ‘956 patents.
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`In May 2016, Cisco Systems, Inc. (“Cisco”) filed six petitions for inter partes review
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`against five of the Asserted Patents. See IPR Case Nos. IPR2016-01006 (‘430 patent), -01007
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`(‘956 patent), -01008 (‘412 patent), -01009 (‘412 patent), -01020 (‘243 patent) and -01021 (‘158
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`patent). The Board instituted each of these IPRs on November 4, 2016. Id. In addition to this
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`motion to join IRP2016-01006, Petitioner is filing related motions to join IPR Case Nos.
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`IPR2016-01008, -01020 and -01021.
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`Several other IPRs have been filed against Asserted Patents and are awaiting institution.
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`These include IPR2016-01160 (‘404 patent), filed by the ARRIS Group, Inc. (“ARRIS”) on June
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`6, 2016, IPR2016-01466 (‘404 patent), filed by Cisco on July 20, 2016, IPR2016-01469 (‘268
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`patent) and -01470 (‘404 patent), filed by DISH on July 21, 2016, and IPR2016-01760 (‘268
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`patent) filed by Cisco on September 8, 2016.
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`Finally, several other IPRs have been filed on the asserted patents but were denied
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`institution. On July 17, 2015, ARRIS filed IPR2016-00428 (‘430 patent), -00429 (‘956 patent),
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`and -00430 (‘412 patent.) On June 22, 2016, the Board denied institution of these IPRs.
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`III. LEGAL STANDARD AND APPLICABLE RULES
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`Joinder is governed by 35 U.S.C. § 315(c), which reads as follows:
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`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.
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`A motion for joinder should “(1) set forth the reasons why joinder is appropriate; (2)
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`identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if
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`any) joinder would have on the trial schedule for the existing review; and (4) address specifically
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`how briefing and discovery may be simplified.” See Decision on Joinder, IPR2013-00385 (Paper
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`No. 17, July 29, 2013); see also Order Authorizing Joinder, IPR2013-00004 (Paper No. 15, April
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`24, 2013.) Petitioner that submits the factors outlined below support granting of the present
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`Motion for Joinder.
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`IV. DISH MEETS THE REQUIREMENTS FOR MOTION FOR JOINDER
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`DISH submits that (1) joinder is appropriate because it will promote efficient
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`determination of the validity of the ’430 patent without prejudice to Cisco; (2) DISH’s petition
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`raises the same grounds for unpatentability as does Cisco’s petition; (3) joinder would not affect
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`the pending schedule in the Cisco IPR nor would it increase the complexity of that proceeding;
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`and (4) DISH is willing to accept an understudy role in the Cisco IPR to minimize burden and
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`schedule impact. Absent joinder, DISH could be prejudiced if the Cisco IPR is terminated
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`before the Board issues a final written decision. DISH could have to litigate the same positions in
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`the Petition before the District Court under a higher burden of proof, wasting resources and
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`losing efficiency. Accordingly, joinder should be granted.
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`A.
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`Joinder Will Promote the Efficient Determination of the ’430 Patent’s
`Validity and Will Not Prejudice Cisco or TQ Delta
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`Granting joinder and allowing DISH to assume an understudy role will not prejudice
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`Cisco. The Petition does not raise any issues that are not already before the Board in the Cisco
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`IPR. Joinder thus would not affect the timing of the Cisco IPR or content of TQ Delta’s
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`responses. The Board has granted motions for joinder in similar circumstances. See, e.g.,
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`Decision on Joinder, IPR2014-00743 (Paper 10, June 18, 2014). DISH has notified counsel for
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`Cisco of its intent to assume only an understudy role and Cisco does not oppose this motion.
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`Moreover, the Board’s final written decision on the ’430 patent will minimize issues in
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`the underlying litigation and could potentially resolve the underlying litigation altogether. This
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`would promote the efficient determination of the ’430 patent’s validity. If the Board allows
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`DISH to join the Cisco IPR and upholds the ’430 patent’s validity, DISH will be estopped from
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`further challenging the validity of the ’430 patent on the grounds in the Petition. See 35 U.S.C. §
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`315(e)(1). Joinder is appropriate here to promote judicial efficiency and avoid unnecessary
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`expense.
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`B.
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`DISH’s Petition Raises the Same Grounds As the Cisco IPR
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`The Petition asserts only grounds that the Board has already instituted in the Cisco IPR.
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`There are no new arguments for the Board to consider. Likewise, the Petition relies on the same
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`exhibits and expert declaration as the Cisco IPR.
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`C.
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`Joinder Will Not Affect the Schedule of the Cisco IPR
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`Allowing DISH to join the Cisco IPR will not impact the Board’s ability to complete its
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`review within the statutory period and according to the schedule already set in the Cisco IPR.
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`Section 316(a)(11) requires that IPR proceedings be completed and the Board’s final decision
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`issued within one year of the institution of the IPR. See also 37 C.F.R. § 42.100(c). DISH agrees
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`to an understudy role and does not raise any issues that are not already before the Board. The
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`invalidity grounds in the Petihtion are the same as those the Board already instituted in the Cisco
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`IPR. Given that DISH will assume an understudy role, its addition to this IPR proceeding will
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`not introduce any additional arguments, briefing, or need for discovery. See Decision on Joinder,
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`IPR2013-00495 (Paper 13, Sept. 16, 2013).
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`DISH submits that TQ Delta does not need to file a Patent Owner’s Preliminary
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`Response, and requests that the Board proceed without one. This is consistent with the Board’s
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`Order in IPR2013-00256 (Paper 8, June 13, 2013), which allowed the Patent Owner to file a
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`preliminary response addressing only those points raised in the new petition that were different
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`from those in the granted petition. Here, because the invalidity grounds in the Petition are
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`identical to those instituted in the Cisco IPR, there are no new arguments for TQ Delta to
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`address. TQ Delta already addressed the invalidity grounds in the Petition in its Preliminary
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`Response to the Cisco IPR. Alternatively, the Board could add an additional deadline for TQ
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`Delta to respond to this Petition. This deadline would not impact other deadlines in the schedule.
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`D.
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`DISH Agrees to Assume a Limited Role
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`As long as Cisco remains in the joined IPR, DISH agrees to assume a limited
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`“understudy” role. DISH would only take on an active role if Cisco were no longer a party to the
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`IPR. DISH presents no new grounds for invalidity and its presence in the proceedings will not
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`introduce any additional arguments, briefing or need for discovery.
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`V.
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`CONCLUSION
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`For the foregoing reasons, DISH respectfully requests that its Petition for Inter Partes
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`Review of the ’430 patent be granted and that the proceedings be joined with IPR2016-01006.
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`Dated: November 11, 2016
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`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (703) 456-8000; Fax: (202) 842-7899
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`Respectfully submitted,
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`By:
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`/Heidi L. Keefe/
`Heidi L. Keefe
`Reg. No. 40,673
`Counsel for Petitioner
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