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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`Charter Communications, Inc.
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`Petitioner
`
`v.
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`Sprint Communications Company
`
`Patent Owner
`
`
`Case Nos. IPR2019-01135, IPR2019-01137, IPR2019-01139
`Patent No. 6,757,907
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`
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`PETITIONER’S NOTICE
`(As Authorized by the Board via Email Dated July 29, 2019)
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`
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`Patent Owner Sprint Communications Company (“Sprint”) has taken
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`numerous inconsistent positions with respect to the scope of the ’7907 patent claims
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`in both the pending district court litigation as well as prior litigation involving the
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`patent. As detailed below, these inconsistent positions have forced Petitioner
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`Charter Communications, Inc. (“Petitioner”) to file three separate petitions covering
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`the various possible permutations of Sprint’s arguments. For example, when Sprint
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`asserted the ’7907 patent against Comcast Cable Communications, LLC in Comcast
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`Cable Commc’ns, LLC v. Sprint Commc’ns Co., LP, Case No. 2:12-cv-859-JD (E.D.
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`Pa.), it took the position that the claims do not require using a set-top box to remotely
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`control the claimed video-on-demand system. The Comcast court rejected Sprint’s
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`proposed construction and instead held that the ’7907 patent disclaimed the use of a
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`set-top box for remote control. Based on its adopted construction, the Comcast court
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`granted summary judgment of non-infringement of the ’7907 patent, because the
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`accused Comcast product required a set-top box for remote control of the video-on-
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`demand system. Despite this judgment, in its pending district court litigation against
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`Petitioner, Sprint accuses Petitioner’s products of infringing the ’7907 patent even
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`though those products also use a set-top box for remote control of the video-on-
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`demand system. It is unclear to what extent Sprint contends the set-top boxes in
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`Petitioner’s accused products are relevant to the accused functionality and whether
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`it contends, despite the prior Comcast court’s constructions, that the set-top boxes in
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`
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`1
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`
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`Petitioner’s accused products perform the accused remote control. Accordingly,
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`based on Sprint’s inconsistent positions, Petitioner was forced to file three separate
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`petitions based on the different disclosures of “video-on-demand systems” in the
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`prior art references.
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`
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`Ordering of Petitions. Although Petitioner’s petitions are all meritorious,
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`non-cumulative, and justified in light of the numerous positions Sprint has taken and
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`may take, Petitioner requests that the Board consider them in the following order:
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`Rank Petition
`A
`IPR2019-01135 (Pet. 1 of 3)
`B
`IPR2019-01139 (Pet. 3 of 3)
`C
`IPR2019-01137 (Pet. 2 of 3)
`
`Primary References
`Sampsell
`Humpleman
`Ellis
`
`
`
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`The following are exemplary material differences between the petitions:
`
`(1)
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`Sprint’s inconsistent litigation positions: In the pending district court
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`litigation, Sprint fails to provide specific and consistent positions on the scope of the
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`claims. As noted above, Sprint previously asserted the ’7907 patent against Comcast
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`Cable Communications, LLC in Case No. 2:12-cv-859-JD (E.D. Pa.). In construing
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`the terms “a video-on-demand system” (claim 1) and “operating a video-on-demand
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`system” (claims 21 and 41), the Comcast court held that the ’7907 patent disclaims
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`the use of a set-top box for remote control because the patent disparages the prior
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`art’s reliance on set-top boxes and does not include a set-top box in any of its
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`embodiments. (Petition Ex. 1010 at 28-32.) Based on these claim constructions, the
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`Comcast court granted summary judgment of non-infringement. Comcast Cable
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`
`
`2
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`
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`
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`Commc’ns, LLC v. Sprint Commc’ns Co., LP, 203 F. Supp. 3d 499, 553 (E.D. Pa.
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`2016). Nonetheless, Sprint now asserts that Petitioner’s products that use a set-top
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`box for remote control—like the Comcast product—infringe the ’7907 patent.
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`Therefore, Petitioner was forced to file different petitions to address Sprint’s
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`disparate reading of “a video-on-demand system” as used in the claims based on
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`prior art references that: (1) include a docking station for remote control of the
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`video-on-demand system (Sampsell); (2) do not include any set-top box or docking
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`station (Humpleman); and (3) disclose a set-top box in some embodiments but do
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`not use it for remote control of the video-on-demand system (Ellis).
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`(2) Different video-on-demand system disclosures: Given Sprint’s vague
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`and inconsistent infringement allegations in the litigations, Petitioner relies on
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`separate and distinct primary references that each disclose a different video-on-
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`demand system—one in each petition. IPR2019-1135 relies on primary reference
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`Sampsell. Sampsell discloses an image display system that is capable of displaying
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`user selected video images on two displays—the first display device can be a screen
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`or display and the second display can be a video remote-control that is integrated
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`with a computer monitor, such as a WEB-TV device. (Sampsell, Abstract, 13:12-
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`16.) While Sampsell does not use a set-top box for remote control, it does disclose
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`a docking station for the video remote-control to “hold the remote control” and to
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`passively “send[] and receiv[e] RF signals.” (Sampsell, 11:45-12:12.)
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`
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`3
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`
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`IPR2019-1139 relies on primary reference Humpleman. Humpleman
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`discloses a system that generates a program guide to watch video content over a
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`network that bridges various electronic devices, such as a digital video device, a
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`digital TV, and a PC. (Humpleman, Abstract, 1:16-18, 4:20-24, 5:39-67, Figs. 6-8,
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`10-11.) Humpleman does not disclose the use of a set-top box, as neither the term
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`“set-top box” nor any analogous term appears in Humpleman.
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`IPR2019-1137 relies on primary reference Ellis. Ellis discloses a video-on-
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`demand system that allows a user to remotely control the system using a remote
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`program access device so that the user can remotely play a stored program or a
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`currently broadcasted program on the remote program access device or on television
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`equipment. (Ellis, 2:23-28, 2:47-60, 5:9-12, Fig. 2d.) While Ellis discloses using a
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`set-top box for control in some embodiments, it explicitly discloses that these
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`embodiments are “alternative” embodiments and explicitly teaches not using the set-
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`top box for control in the other embodiments. (Ellis, 7:53-65, 8:10-20, 9:4-6.)
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`While Sampsell, Humpleman, and Ellis each invalidate the claims under the
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`Comcast court’s construction, it is unclear which construction Sprint will rely on in
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`the district court litigation and PTAB proceedings against Petitioner. Therefore,
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`Petitioner was required to file three petitions based on different primary prior art
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`references to cover the various constructions Sprint may rely on in these
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`proceedings.
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`
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`4
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`(3) Priority date: Each petition relies on primary references (Sampsell,
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`Humpleman, and Ellis) that qualify as prior art under § 102(e) and have different
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`effective dates. To the extent Sprint tries to antedate any of these references, the
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`difference in priority dates, ranging from June 24, 1998 (Humpleman) to July 16,
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`1999 (Ellis), could be dispositive and is a key difference between these petitions.
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`(4) Number of claims: The ’7907 patent has 53 total claims. Although
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`Sprint has not asserted all 53 claims against Petitioner in the pending district court
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`litigation, Sprint has yet to affirmatively state that it will not assert any specific
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`claims against Petitioner in the future. Petitioner was thus required to challenge all
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`53 claims. Given the number of claims, Petitioner was required to file three separate
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`petitions with different primary references in order to adequately address the
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`numerous claim limitations present in the ’7907 patent.
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`*
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`*
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`*
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`
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`The Board should consider all three petitions and not exercise its discretion to
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`deny institution in an IPR potentially impacting the video-on-demand feature set in
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`millions of homes. No petition is redundant, and the materiality of the differences
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`between the petitions are amplified by Sprint’s shifting positions on claim
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`construction (i.e., what is a “video-on-demand system”), obviousness-specific
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`defenses, antedating the prior art, and the teachings of the prior art.
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`5
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`Respectfully submitted,
`
`Dated: August 19, 2019 By: /s/ Deepa Acharya
`Deepa Acharya (Reg. No. 64,648)
`Quinn Emanuel Urquhart & Sullivan LLP
`1300 I Street NW, Suite 900
`Washington, D.C. 20005
`Tel: (202) 538-8000
`Fax: (202) 538-8100
`deepaacharya@quinnemanuel.com
`
`Attorney for Petitioner Charter
`Communications, Inc.
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`
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`6
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing PETITIONER’S
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`NOTICE was served electronically via e-mail on August 19, 2019 on the following
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`counsel of record for Patent Owner:
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`sisrael@shb.com
`
`kfriesen@shb.com
`
`cguastello@shb.com
`
`rdykal@shb.com
`
`rschletzbaum@shb.com
`
`
`
`Dated: August 19, 2019 By: /s/ Deepa Acharya
`Deepa Acharya (Reg. No. 64,648)
`Quinn Emanuel Urquhart & Sullivan LLP
`1300 I Street NW, Suite 900
`Washington, D.C. 20005
`Tel: (202) 538-8000
`Fax: (202) 538-8100
`deepaacharya@quinnemanuel.com
`
`Attorney for Petitioner Charter
`Communications, Inc.
`
`
`
`
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