Trials@uspto.gov
`571-272-7822
`
`Paper 30
`Entered: April 12, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DISH NETWORK L.L.C.,
`Petitioner,
`v.
`BROADBAND iTV, INC.,
`Patent Owner.
`
`IPR2020-01280 (Patent 9,998,791 B2)
`IPR2020-01359 (Patent 9,648,388 B2)1
`
`
`
`
`
`
`
`
`
`Before JEFFREY S. SMITH, JUSTIN T. ARBES, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`ARBES, Administrative Patent Judge.
`
`ORDER
`Granting Petitioner’s Motions to Submit Supplemental Information
`37 C.F.R. § 42.123
`
`As previously authorized, Petitioner filed in each of the instant
`proceedings a Motion to Submit Supplemental Information. See
`
`
`1 This Order addresses an issue pertaining to both cases. Therefore, we
`exercise our discretion to issue a single Order to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`
`571-272-7822
`
`Paper 30
`Entered: April 12, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DISH NETWORK L.L.C.,
`Petitioner,
`v.
`BROADBAND iTV, INC.,
`Patent Owner.
`
`IPR2020-01280 (Patent 9,998,791 B2)
`IPR2020-01359 (Patent 9,648,388 B2)1
`
`
`
`
`
`
`
`
`
`Before JEFFREY S. SMITH, JUSTIN T. ARBES, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`ARBES, Administrative Patent Judge.
`
`ORDER
`Granting Petitioner’s Motions to Submit Supplemental Information
`37 C.F.R. § 42.123
`
`As previously authorized, Petitioner filed in each of the instant
`proceedings a Motion to Submit Supplemental Information. See
`
`
`1 This Order addresses an issue pertaining to both cases. Therefore, we
`exercise our discretion to issue a single Order to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`
`
`IPR2020-01280 (Patent 9,998,791 B2)
`IPR2020-01359 (Patent 9,648,388 B2)
`IPR2020-01280, Paper 26 (“Mot.”); IPR2020-01359, Paper 22.2 Petitioner
`seeks to submit as supplemental information Exhibits 1033–10363 pertaining
`to the alleged public accessibility of one of the prior art references relied
`upon by Petitioner in its Petitions. Patent Owner did not file an opposition
`to either Motion. For the reasons stated below, Petitioner’s Motions are
`granted.
`As the moving party, Petitioner bears the burden of proving that it is
`entitled to the requested relief. 37 C.F.R. § 42.20(c). Under 37 C.F.R.
`§ 42.123(a), a party may file a motion to submit supplemental information
`if the following requirements are met: (1) a request for authorization to file
`the motion is made within one month of the date the trial was instituted, and
`(2) the supplemental information is relevant to a claim for which trial has
`been instituted. Both requirements are met here.
`First, trial was instituted in Case IPR2020-01280 on February 4, 2021,
`and in Case IPR2020-01359 on February 12, 2021. Petitioner requested
`authorization to file the Motions by email on March 4, 2021.
`Second, in each proceeding, Petitioner relied on Scheffler
`(Exhibit 1006) in its asserted grounds of unpatentability. Paper 1 (“Pet.”), 8.
`Petitioner argued that Scheffler is a prior art printed publication under
`35 U.S.C. §§ 102(a) and (b) because it “was included as part of the 2003
`[National Cable and Telecommunications Association (NCTA)] Technical
`
`
`2 The facts of the two proceedings are similar. We refer herein to the papers
`and exhibits filed in Case IPR2020-01280 for convenience.
`3 Exhibit 1034 includes attached “Appendi[ces]” A–F. Petitioner is again
`reminded that evidence must be filed individually as numbered exhibits,
`rather than attachments to another exhibit. See 37 C.F.R. § 42.63; Paper 17
`(“Dec.”), 52 n.12.
`
`2
`
`
`
`IPR2020-01280 (Patent 9,998,791 B2)
`IPR2020-01359 (Patent 9,648,388 B2)
`Papers,” which “were published, distributed, and made available to
`thousands of NCTA members by at least June 2003,” and “[t]he Technical
`Papers that included Scheffler were also indexed and available from libraries
`by September 2003.” Pet. 29. As support for those arguments, Petitioner
`submitted a declaration from the author of Scheffler, an affidavit of the
`Office Manager of the Internet Archive, and a letter from a German library.
`Id. (citing Exs. 1008, 1026, 1032). Patent Owner argued in its Preliminary
`Response that Petitioner failed to establish that Scheffler is a prior art
`printed publication. Paper 9, 47–51. We concluded, based on the record at
`the time, that Petitioner had “established a reasonable likelihood that
`Scheffler is a prior art printed publication under 35 U.S.C. §§ 102(a) and
`(b).” Dec. 50–57.
`Petitioner now seeks to file:
`(1) Ex. 1033: An excerpt from the copy of the 2003 NCTA
`Technical Papers, including the Scheffler article, available at the
`[Technische Informationsbibliothek (TIB)] library; (2) Ex. 1034:
`A declaration of a
`library cataloging expert discussing
`bibliographic records relating to the copy of the 2003 NCTA
`Technical Papers available at the TIB library; (3) Ex. 1035:
`A declaration noting that the TIB library’s copy of the Scheffler
`article is the same as Ex. 1006 in [these] proceeding[s]; and
`(4) Ex. 1036: The copyright registration for the 2003 NCTA
`Technical Papers.
`Mot. 1. Petitioner argues that the exhibits “all relate to the date of
`publication of Scheffler, one of the prior art references at issue in [these]
`proceeding[s].” Id. at 2–3. We agree that the exhibits are relevant to the
`claims for which trial has been instituted because they pertain to the alleged
`public accessibility of Scheffler and Petitioner’s arguments in the Petition as
`to how Scheffler allegedly was publicly accessible. See Pet. 29.
`
`3
`
`
`
`IPR2020-01280 (Patent 9,998,791 B2)
`IPR2020-01359 (Patent 9,648,388 B2)
`Petitioner, therefore, has satisfied the requirements of 37 C.F.R.
`§ 42.123(a). We also are persuaded that allowing Petitioner to submit the
`supplemental information at this time (rather than, for example, with its
`reply in response to Patent Owner’s response) is appropriate. See Redline
`Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 446 (Fed. Cir. 2015)
`(“[T]imeliness and relevancy provide additional requirements that must be
`construed within the overarching context of the PTAB’s regulations
`governing [inter partes review] and general trial proceedings.”). Doing so
`will supplement the existing record on whether Scheffler was publicly
`accessible and allow a more complete record for cross-examination and
`briefing during trial, and will not delay the trial schedule. Further, the
`exhibits “do not change any of the grounds of unpatentability” or “change
`[Petitioner’s] argument regarding why (and by when) Scheffler is prior art,”
`and “Patent Owner can still raise any sufficiency challenges it believes have
`merit with regard to Scheffler in its Response” in each proceeding. See
`Mot. 3–5; Redline, 811 F.3d at 447–448.
`Finally, although we concluded based on the record at the institution
`stage that Petitioner had shown a reasonable likelihood of prevailing on its
`asserted grounds, the final written decision in each proceeding will be based
`on a fully developed record and assessed on a preponderance of the evidence
`standard. In granting the Motions, we express no opinion on the merits of
`the additional evidence submitted by Petitioner or its admissibility. See
`37 C.F.R. §§ 42.62, 42.64.
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner’s Motion to Submit Supplemental
`Information in each of the instant proceedings is granted.
`
`
`4
`
`
`
`IPR2020-01280 (Patent 9,998,791 B2)
`IPR2020-01359 (Patent 9,648,388 B2)
`FOR PETITIONER:
`
`Alyssa Caridis
`K. Patrick Herman
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`a8cptabdocket@orrick.com
`p52ptabdocket@orrick.com
`
`
`FOR PATENT OWNER:
`
`Sal Lim
`David Alberti
`Hong Lin
`FEINBERG DAY KRAMER ALBERTI LIM TONKOVICH
`& BELLOLI LLP
`slim@feinday.com
`dalberti@feinday.com
`hlin@feinday.com
`
`Michael D. Specht
`Jason A. Fitzsimmons
`Richard M. Bemben
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`mspecht-ptab@sternekessler.com
`jfitzsimmons-ptab@sternekessler.com
`rbemben-ptab@sternekessler.com
`
`Kevin Greenleaf
`DENTONS US LLP
`kevin.greenleaf@dentons.com
`
`
`
`5
`
`
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