UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________________________
`
`CHARTER COMMUNICATIONS, INC.,
`
`Petitioner
`
`v.
`
`SPRINT COMMUNICATIONS COMPANY L.P.,
`
`Patent Owner
`
`_____________________________________________
`
`Case Nos. IPR2019-01135, IPR2019-01137, IPR2019-01139
`Patent No. 6,757,907
`
`_____________________________________________
`
`PATENT OWNER’S NOTICE REGARDING
`MULTIPLE SUCCESSIVE PETITIONS
`
`
`
`
`
`
`
`
`_____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________________________
`
`CHARTER COMMUNICATIONS, INC.,
`
`Petitioner
`
`v.
`
`SPRINT COMMUNICATIONS COMPANY L.P.,
`
`Patent Owner
`
`_____________________________________________
`
`Case Nos. IPR2019-01135, IPR2019-01137, IPR2019-01139
`Patent No. 6,757,907
`
`_____________________________________________
`
`PATENT OWNER’S NOTICE REGARDING
`MULTIPLE SUCCESSIVE PETITIONS
`
`
`
`
`
`
`
`
`
`
`As authorized by the Board’s email of July 29, 2019, Patent Owner Sprint
`
`Communications Company L.P. files this Notice in response to the Notice filed by
`
`Petitioner Charter Communications, Inc. on August 19, 2019.
`
`Between May 30 and June 4, 2019, Petitioner filed three Petitions for Inter
`
`Partes Review of U.S. Patent No. 6,757,907 (the “’7907 patent”). Combined, these
`
`Petitions assert nine grounds of challenge, and each ground is asserted against all
`
`fifty-three claims of the patent. With these filings, Petitioner imposes an unfair
`
`burden on Patent Owner and unnecessary costs on the Office and the patent system.
`
`See Trial Practice Guide Update at 26 (July 2019) (expressing concern about the
`
`“substantial and unnecessary burden on the Board and the patent owner” caused by
`
`parallel petitions and the effect on “fairness, timing, and efficiency”), available at
`
`https://www.uspto.gov/sites/default/files/documents/trial-practice-guide-
`
`update3.pdf (last visited Aug. 27, 2019). Despite raising nine grounds, Petitioner
`
`asserts only five total pieces of alleged prior art, which it rearranges in myriad
`
`configurations, as shown in the chart below. Rather than limit these grounds to a
`
`reasonable number or focus on arguments it deems superior, Petitioner foists the
`
`responsibility onto the Board to sift through hundreds of pages of repetitive briefing
`
`to consider, e.g., the combinations of Humpleman with Ellis or Yosuke (in IPR2019-
`
`01139) and Ellis with Humpleman and Yosuke (in IPR2019-01137). Cf. Nalox-1
`
`Pharms., LLC v. Opiant Pharms., Inc., IPR2019-00694, et al., 2019 WL 3483268,
`
`1
`
`
`
`
`
`at *1-2 (PTAB July 31, 2019) (agreeing that three Petitions “challenging the same
`
`patent . . . may place a substantial and unnecessary burden on the Board and Patent
`
`Owner, particularly if we determine the Petitions rely on substantially overlapping
`
`grounds and theories”).
`
`Case
`
`Grounds
`Sampsell & Yosuke, §103
`
`Overlap
`Only Ellis missing.
`
`IPR2019-01135
`
`Sampsell, Yosuke & Browne §103
`
`Sampsell, Yosuke & Humpleman, §103
`
`Ellis & Yosuke, §103
`
`IPR2019-01137
`
`Ellis, Yosuke & Browne, §103
`
`Ellis, Yosuke & Humpleman, §103
`
`Humpleman, §102
`
`IPR2019-01139
`
`Humpleman & Yosuke, §103
`
`Humpleman & Ellis, §103
`
`Only Sampsell
`missing.
`
`Only Sampsell
`missing.
`
`(See IPR2019-01135, Paper 2, 9; IPR2019-01137, Paper 2, 9; IPR2019-01139,
`
`Paper 2, 9.)
`
`Petitioner was given the opportunity to defend this conduct, and it cannot.
`
`First, Petitioner complains that Patent Owner has taken “numerous
`
`inconsistent positions” about claim scope. (Paper 6, 1.) Yet Petitioner identifies only
`
`one issue of claim scope—the use of a set-top box to control a “video-on-demand
`
`[VOD] system” of the claims—and no evidence that Patent Owner’s positon on that
`
`2
`
`
`
`
`
`single issue has been inconsistent in any way. Petitioner concedes that the Comcast
`
`court imported a negative limitation excluding the use of a set-top box for VOD
`
`system control, which was contrary to Patent Owner’s proposed constructions. (Id.,
`
`1. See generally EX1010, 27-35.) Patent Owner disagreed with the Comcast court’s
`
`constructions, then, and continues to oppose the use of those constructions in
`
`concurrent litigation. Patent Owner’s position has therefore been consistent.
`
`In addition, Petitioner argues in every Petition that the references disclose the
`
`claimed subject matter of the ’7907 patent under both the Comcast court’s
`
`construction and Patent Owner’s. (IPR2019-01135, Paper 2, 27-30, 33; IPR2019-
`
`01137, Paper 2, 26-28, 30-31, 33-34; IPR2019-01139, Paper 2, 22-24, 26, 32, 62,
`
`75-76.) The difference between these constructions is therefore not material. Even
`
`if Petitioner is only allowed institution on a single Petition, it will have addressed
`
`both constructions.
`
`Second, the differences between the disclosures of the cited references are not
`
`material for essentially the same reason. As shown in its Notice, Petitioner’s position
`
`in these proceedings (with which Patent Owner disagrees) is that “Sampsell,
`
`Humpleman, and Ellis each invalidate the claims under the Comcast court’s
`
`construction.” (Paper 6, 4.) That construction gives the claims a narrower scope than
`
`they would have under the construction Patent Owner has proposed in litigation.
`
`Petitioner does not appear to dispute that anything encompassed by the narrower
`
`3
`
`
`
`
`
`construction would also be encompassed by the broader one. Petitioner therefore
`
`fails to identify any differences between the prior art references that would be
`
`material to the outcome on any of its Petitions.
`
`The differences identified in the cited art are not material for the further reason
`
`that Petitioner relies on various overlapping combinations of its primary references
`
`in each Petition, as shown in the chart above.
`
`Third, there is no priority date issue. The ’7907 patent does not claim priority
`
`to any earlier filings. (See EX1001, cover.) And Petitioner’s suggestion that
`
`antedating might be an issue is pure speculation. The filing dates of the primary
`
`references do not differ significantly; they are all within a 13-month span (June 24,
`
`1998 to July 16, 1999). And the earliest prior conception Sprint has alleged in
`
`litigation was September 1999.
`
`Fourth, the number of claims also does not justify the burden of instituting
`
`review on multiple parallel petitions. Petitioner challenged every claim of the ’7907
`
`patent in every ground of every Petition. In other words, the “number of claims” is
`
`not a difference between the Petitions at all, let alone a material difference. If the
`
`Board institutes on any Petition, Petitioner will have the opportunity to be heard on
`
`several grounds challenging each claim of the ’7907 patent; instituting on more than
`
`one Petition is not necessary to ensure this.
`
`4
`
`
`
`
`
`Petitioner’s arguments rely on facts common to nearly all infringement
`
`litigation. In the early stages of a case, claims will not yet be construed and discovery
`
`will be ongoing. Thus, claim scope, the identity of the claims to be tried, and the
`
`date of invention will all be uncertain. But this uncertainty alone does not justify
`
`filing or instituting on multiple parallel petitions for review, as Petitioner contends.
`
`If Petitioner wants to preserve a broad range of theories, it remains free to withdraw
`
`its Petitions and pursue invalidity defenses in district court. Choosing inter partes
`
`review instead means accepting a “quick and cost effective alternative[] to
`
`litigation.” H.R. Rep. No. 112-98, Part 1, at 48 (2011) (underline added); see id.
`
`(“[T]he Committee intends for the USPTO to address potential abuses and current
`
`inefficiencies under its expanded procedural authority.”). Instituting parallel
`
`proceedings here, based on run-of-the-mill litigation uncertainty, would encourage
`
`multiple-petition filings and undermine the purpose of inter partes review. The
`
`Board should exercise its discretion not to do so.
`
`CONCLUSION
`
`“[M]ultiple petitions by a petitioner are not necessary in the vast majority of
`
`cases,” Trial Practice Guide Update at 26 (July 2019), and Petitioner has not shown
`
`this case to be an exception to the general rule. Accordingly, if the Board decides to
`
`institute review of the ’7907 patent on any of the Petitions—a decision unjustified
`
`on its merits—it should restrict Petitioner to only one Petition.
`
`5
`
`
`
`
`
`Dated: September 9, 2019
`
` Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`By:
`
`
`
`
`
`
`/Sharon A. Israel/
`Sharon A. Israel
`Reg. No. 41,867
`Kyle E. Friesen
`Reg. No. 65,371
`SHOOK HARDY AND BACON LLP
`600 Travis St
`Suite 3400
`Houston, TX 77002
`
`Christine Guastello
`Reg. No. 58,716
`Aaron E. Hankel
`Reg. No. 60,663
`Ryan D. Dykal
`Reg. No. 63,793
`Ryan J. Schletzbaum
`Reg. No. 70,850
`SHOOK HARDY AND BACON LLP
`2555 Grand Boulevard
`Kansas City, MO 64108
`
`Counsel for Patent Owner
`
`
`
`6
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that a copy
`
`of the foregoing was served on September 9, 2019 via email, with consent of
`
`Petitioner, directed to the following addresses: deepaacharya@quinnemanuel.com,
`
`jimglass@quinnemanuel.com,
`
`patrickstafford@quinnemanuel.com,
`
`and
`
`cameronclawson@quinnemanuel.com.
`
`
`
`Dated: September 9, 2019
`
`
`
`
`
`
`
`
`
`
`
`
`/Sharon A. Israel/
`Sharon A. Israel
`Reg. No. 41,867
`
`
`
`
`
`
`
`7
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
