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`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. and DISH TECHNOLOGIES L.L.C.,
`Petitioner,
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`v.
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`SAFECAST LIMITED LLC,
`Patent Owner.
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`Case IPR2023-01116
`Patent 9,392,302 B2
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`PETITIONER’S REPLY
`TO PATENT OWNER’S RESPONSE
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`Case No. IPR2023-01116
`Attorney Docket No: 45035-0013IP1
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`Pursuant to the Scheduling Order (Paper 10), DISH Network L.L.C. and
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`DISH Technologies L.L.C. (“Petitioner”) hereby submits this Petitioner’s Reply in
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`IPR2023-01116 relating to U.S. Patent 9,392,302 (“the ’302 patent”). The Petition
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`identified two invalidity grounds: (1) Ground 1: Patten in view of Ben-Rubi and
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`Applicant Admitted Prior Art (“AAPA”); and (2) Ground 2: Patten in view of Ben-
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`Rubi, AAPA, and Plotnick. Collectively, these grounds establish that claims 1–4,
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`6–9, and 12–15 (“the Challenged Claims”) of the ’302 patent are unpatentable. In
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`this proceeding, SafeCast Limited LLC (“Patent Owner”) did not file a Patent
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`Owner Response.
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`The Board has already determined the Challenged Claims are unpatentable
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`in a parallel proceeding involving the same patent and claims. See Google LLC v.
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`SafeCast Limited LLC, IPR2023-00652, Paper 16 (Final Written Decision) at 50
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`(P.T.A.B. Oct. 3, 2024) (“ORDERED that Petitioner establishes by a
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`preponderance of evidence that challenged claims 1–4, 6–9, and 12–15 are
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`unpatentable”). Patent Owner did not file a notice of appeal in that IPR and all
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`appeal rights are exhausted. All that remains is for the issuance and publication of
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`the certificate confirming the cancellation of all the Challenged Claims. See 37
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`C.F.R. § 42.80 (“After the Board issues a final written decision in an inter partes
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`review, . . . and the time for appeal has expired . . . the Office will issue and
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`1
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`Case No. IPR2023-01116
`Attorney Docket No: 45035-0013IP1
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`publish a certificate canceling any claim of the patent finally determined to be
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`unpatentable[.]”)
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`Further, the Petition’s unchallenged arguments in this proceeding
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`demonstrate the unpatentability of the Challenged Claims by a preponderance of
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`the evidence. Although Patent Owner filed a Preliminary Response on April 9,
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`2024, it did not meaningfully dispute the Petition’s arguments. Paper 8 (“Prelim.
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`Resp.”). The Board correctly found that the Preliminary Response did not contest
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`the Petition’s arguments and sometimes agreed with them. See Paper 9
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`(“Institution Decision”) at 9 (“Patent Owner does not dispute Petitioner’s claim
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`constructions.”), id. at 17 (“Patent Owner does not specifically address Petitioner’
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`showing for the preamble.”), id. at 18 (“Patent Owner does not contest Petitioner’s
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`showing with respect to this limitation.”), id. at 19 (“Patent Owner agrees that
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`Patten ‘generally disclose[s] an advertisement supply means.’”), id. at 22 (“This
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`line of argument generally denies Petitioner’s showing without specificity.”), id. at
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`23 (“Similar to the first line of argument, this line of argument fails to address the
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`combined teachings of Patten and Ben-Rubi, and the knowledge of an artisan of
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`ordinary skill, as relied upon in the Petition.”), id. at 32 (“Patent Owner generally
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`relies on its arguments with respect to claim 1.”). In light of the Petition’s
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`arguments and Patent Owner’s failure to meaningfully dispute those arguments, the
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`2
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`Case No. IPR2023-01116
`Attorney Docket No: 45035-0013IP1
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`Board correctly concluded “there is a reasonable likelihood that Petitioner will
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`prevail with respect to at least one challenged claim” and “institute[d] an inter
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`partes review of the ’302 patent.” Id. at 2.
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`The Scheduling Order that issued in parallel with the Institution Decision
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`notes that Patent Owner “may file” a response to the Petition by September 19,
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`2024. Paper 10 at 9, 12. The Scheduling Order further noted that, “[i]f Patent
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`Owner elects not to file a response, Patent Owner must arrange a conference call
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`with the parties and the Board.” Id. at 9. On September 19, 2024, Patent Owner
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`did not submit a Patent Owner Response (POR), nor did it arrange the required
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`conference call with the parties and the Board. Patent Owner has still not done so.
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`Because Patent Owner did not raise any arguments challenging the Petition’s
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`evidence and analysis in a POR, this Reply does not address or raise any arguments
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`in reply. See also Paper 10 at 9 (“Patent Owner is cautioned that any arguments
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`not raised in the response may be deemed waived.”).
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`On this record, if the Board has not already issued and published a certificate
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`canceling claims 1–4, 6–9, and 12–15 in the Google proceeding, IPR2023-00652,
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`then, in view of the Petition’s substantial—and largely undisputed—evidence,
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`Petitioner respectfully requests issuance of a Final Written Decision finding all
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`Challenged Claims unpatentable based on the Grounds identified above. Further,
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`3
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`Case No. IPR2023-01116
`Attorney Docket No: 45035-0013IP1
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`at this time, Petitioner does not intend to request an oral hearing.
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`Dated: December 12, 2024
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`Respectfully submitted,
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` /Adam R. Shartzer/
`Adam R. Shartzer, Reg. No. 57,264
`Ruffin B. Cordell, Reg. No. 33,487
`Timothy Riffe, Reg. No. 43,881
`Jack R. Wilson, Reg. No. 75,011
`Daniel Y. Lee, Reg. No. 72,848
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
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`Attorneys for Petitioner
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`4
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`Case No. IPR2023-01116
`Attorney Docket No: 45035-0013IP1
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`CERTIFICATION UNDER 37 CFR § 42.24(d)
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`Under the provisions of 37 CFR § 42.24(d), the undersigned hereby certifies
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`that the word count for the foregoing Petitioner’ Reply to Patent Owner’s
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`Response totals 703, which is less than the 5,600 allowed under 37 CFR
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`§ 42.24(b)(1).
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`Dated: December 12, 2024
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`Respectfully submitted,
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` /Adam R. Shartzer/
`Adam R. Shartzer, Reg. No. 57,264
`Ruffin B. Cordell, Reg. No. 33,487
`Timothy Riffe, Reg. No. 43,881
`Jack R. Wilson, Reg. No. 75,011
`Daniel Y. Lee, Reg. No. 72,848
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
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`Attorneys for Petitioner
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`Case No. IPR2023-01116
`Attorney Docket No: 45035-0013IP1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e)(4), the undersigned certifies that on December
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`12, 2024, a complete and entire copy of this Petitioner’s Reply to Patent Owner’s
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`Response were provided by email to the Patent Owner by serving the
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`correspondence address of record as follows:
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`Allen J. Oh
`Registration No. 42,047
`ALLEN J. OH LAW OFFICE
`23505 Birch Road
`Rogers, Minnesota 55374
`Telephone: (763) 242-4401
`Email: allen.oh@icloud.com
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`/Anastasia Renard/
`Anastasia Renard
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`renard@fr.com
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