Paper 12
`Trials@uspto.gov
`571-272-7822 Entered: February 27, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DISH NETWORK, LLC,
`Petitioner,
`
`v.
`
`TQ DELTA, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00254
`Patent 9,014,243 B2
`____________
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: February 27, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DISH NETWORK, LLC,
`Petitioner,
`
`v.
`
`TQ DELTA, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00254
`Patent 9,014,243 B2
`____________
`
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`IPR2017-00254
`Patent 9,014,243 B2
`
`I. INTRODUCTION
`DISH Network, L.L.C. (“Petitioner” or “Dish”) filed a Petition for
`inter partes review of claims 1‒25 of U.S. Patent No. 9,014,243 B2
`(Ex. 1001, “the ’243 patent”). Paper 3 (“Pet.”). Concurrently with its
`Petition, Dish filed a Motion for Joinder with Cisco Systems, Inc. v. TQ
`Delta, LLC, Case IPR2016-01020 (“the Cisco IPR”). Paper 2 (“Mot.”).
`Dish represents that the petitioner in the Cisco IPR—Cisco Systems, Inc.—
`does not oppose the Motion for Joinder. Mot. 2. TQ Delta, LLC (“Patent
`Owner”) submits that it does not oppose joinder. See Paper 7. Patent Owner
`also elected to waive its Preliminary Response. Id.
`For the reasons explained below, we institute an inter partes review of
`claims 1–25 of the ’243 patent and grant Dish’s Motion for Joinder.
`
`II. RELATED PROCEEDINGS
`Petitioner and Patent Owner identify several pending judicial matters
`as relating to the ’243 patent. Pet. 1–2; Mot. 2–3; Paper 5, 2–3.
`
`2
`
`
`
`IPR2017-00254
`Patent 9,014,243 B2
`
`In the Cisco IPR, we instituted an inter partes review of claims 1–25
`of the ’243 patent on the following grounds:
`
`References
`Shively1 and Stopler2
`Shively, Stopler, and
`Gerszberg3
`
`Challenged Claims
`Basis
`1–3, 7–9, 13–16, and 20–22
`§ 103(a)
`§ 103(a) 4–6, 10–12, 17–19, and 23–25
`
`Cisco Systems, Inc. v. TQ Delta, LLC, Case IPR2016-01020, slip op. at 16
`(PTAB Nov. 4, 2016) (Paper 7) (“Cisco Dec.”).
`
`III. INSTITUTION OF INTER PARTES REVIEW
`The Petition in this proceeding asserts the same grounds of
`unpatentability as the ones on which we instituted review in the Cisco IPR.
`Compare Pet. 11–53, with Cisco Dec. 16. Indeed, Petitioner contends that
`the Petition asserts only the grounds that the Board instituted in the Cisco
`IPR, there are no new arguments for the Board to consider, and the
`Petitioner relies on the same exhibits and expert declaration as in the Cisco
`IPR. Mot. 5.
`For the same reasons set forth in our institution decision in the Cisco
`IPR, we determine that the information presented in Dish’s Petition shows a
`reasonable likelihood that Petitioner would prevail in showing that (a)
`claims 1–3, 7–9, 13–16, and 20–22 would have been obvious over Shively
`and Stopler and (b) claims 4–6, 10–12, 17–19, and 23–25 would have been
`
`
`1 U.S. Patent No. 6,144,696; issued Nov. 7, 2000 (Ex. 1011) (“Shively”).
`2 U.S. Patent No. 6,625,219 B1; issued Sept. 23, 2003 (Ex. 1012)
`(“Stopler”).
`3 U.S. Patent No. 6,424,646 B1; issued July 23, 2002 (Ex. 1013)
`(“Gerszberg”).
`
`3
`
`
`
`IPR2017-00254
`Patent 9,014,243 B2
`
`obvious over Shively, Stopler, and Gerszberg. See Cisco Dec. 6–16.
`Accordingly, we institute an inter partes review on the same grounds as the
`ones on which we instituted review in the Cisco IPR. We do not institute
`inter partes review on any other grounds.
`
`IV. GRANT OF MOTION FOR JOINDER
`The Petition and Motion for Joinder in this proceeding were accorded
`a filing date of November 11, 2016. See Paper 4. Thus, Petitioner’s Motion
`for Joinder is timely because joinder was requested no later than one month
`after the institution date of the Cisco IPR, i.e., November 4, 2016. See 37
`C.F.R. § 42.122(b).
`The statutory provision governing joinder in inter partes review
`proceedings is 35 U.S.C. § 315(c), which reads:
`If the Director institutes an inter partes review, the Director, in
`his or her discretion, may join as a party to that inter partes
`review any person 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.
`
`A motion for joinder should (1) set forth reasons why joinder is appropriate;
`(2) identify any new grounds of unpatentability asserted in the petition;
`(3) explain what impact (if any) joinder would have on the trial schedule for
`the existing review; and (4) address specifically how briefing and discovery
`may be simplified. See Kyocera Corp. v. Softview LLC, Case IPR2013-
`00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).
`As noted, the Petition in this case asserts the same unpatentability
`ground on which we instituted review in the Cisco IPR. See Mot. 5. Dish
`also relies on the same prior art analysis and expert testimony submitted by
`
`4
`
`
`
`IPR2017-00254
`Patent 9,014,243 B2
`
`the Cisco Petitioner. See id. Indeed, the Petition is nearly identical to the
`petition filed by the Cisco Petitioner with respect to the grounds on which
`review was instituted in the Cisco IPR. See id. Thus, this inter partes
`review does not present any ground or matter not already at issue in the
`Cisco IPR.
`If joinder is granted, Dish anticipates participating in the proceeding
`in a limited capacity absent termination of Cisco Petitioner as a party. Id. at
`6. Dish agrees to “assume a limited ‘understudy’ role” and “would only take
`on an active role if Cisco were no longer a party to the IPR.” Id. Dish
`further represents that it “presents no new grounds for invalidity and its
`presence in the proceedings will not introduce any additional arguments,
`briefing or need for discovery.” Id. Because Dish expects to participate
`only in a limited capacity, Dish submits that joinder will not impact the trial
`schedule for the Cisco IPR. Id. at 5–6.
`We agree with Petitioner that joinder with the Cisco IPR is
`appropriate under the circumstances. Accordingly, we grant Petitioner’s
`Motion for Joinder.
`
`V. ORDER
`
`
`
`Accordingly, it is:
` ORDERED that an inter partes review is instituted in IPR2017-
`00254;
`FURTHER ORDERED that the Motion for Joinder with IPR2016-
`01020 is granted, and DISH Network, L.L.C. is joined as a petitioner in
`IPR2016-01020;
`
`5
`
`
`
`IPR2017-00254
`Patent 9,014,243 B2
`
`FURTHER ORDERED that IPR2017-00254 is terminated under
`37 C.F.R. § 42.72, and all further filings shall be made only in IPR2016-
`01020;
`
`FURTHER ORDERED that, subsequent to joinder, the grounds for
`trial in IPR2016-01020 remain unchanged;
`
`FURTHER ORDERED that, subsequent to joinder, the Scheduling
`Order in place for IPR2016-01020 (Paper 8) remains unchanged;
`FURTHER ORDERED that in IPR2016-01020, the Cisco Petitioner
`and Dish will file each paper, except for a motion that does not involve the
`other party, as a single, consolidated filing, subject to the page limits set
`forth in 37 C.F.R. § 42.24, and shall identify each such filing as a
`consolidated filing;
`FURTHER ORDERED that for any consolidated filing, if Dish
`wishes to file an additional paper to address points of disagreement with the
`Cisco Petitioner, Dish must request authorization from the Board to file a
`motion for additional pages, and no additional paper may be filed unless the
`Board grants such a motion;
`FURTHER ORDERED that the Cisco Petitioner and Dish shall
`collectively designate attorneys to conduct the cross-examination of any
`witness produced by Patent Owner and the redirect of any witness produced
`by the Cisco Petitioner and Dish, within the timeframes set forth in 37
`C.F.R. § 42.53(c) or agreed to by the parties;
`FURTHER ORDERED that the Cisco Petitioner and Dish shall
`collectively designate attorneys to present at the oral hearing, if requested
`and scheduled, in a consolidated argument;
`
`6
`
`
`
`IPR2017-00254
`Patent 9,014,243 B2
`
`FURTHER ORDERED that the case caption in IPR2016-01020 shall
`be changed to reflect joinder of Dish as a petitioner in accordance with the
`attached example; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2016-01020.
`
`
`
`FOR DISH PETITIONER:
`Heidi L. Keefe
`Stephen McBride
`COOLEY LLP
`hkeefe@cooley.com
`smcbride@cooley.com
`
`FOR CISCO PETITIONER:
`David McCombs
`Theo Foster
`HAYNES AND BOONE, LLP
`David.mccombs.ipr@haynesboone.com
`Ipr.theo.foster@haynesboone.com
`
`
`FOR PATENT OWNER:
`Peter J. McAndrews
`Thomas J. Wimbiscus
`Scott P. McBride
`Christopher M. Scharff
`MCANDREWS, HELD & MALLOY, LTD.
`pmcandrews@mcandrews-ip.com
`twimbiscus@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`cscharff@mcandrews-ip.com
`
`7
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CISCO SYSTEMS, INC. and DISH NETWORK, LLC,
`Petitioner,
`
`v.
`
`TQ DELTA, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-010201
`Patent 9,014,243 B2
`____________
`
`
`
`
`
`
`1 DISH Network, L.L.C., who filed a Petition in IPR2017-00254, has been
`joined as a petitioner in this proceeding.
`
`
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