Case 1:17-cv-02097-RBJ Document 172 Filed 04/08/20 USDC Colorado Page 1 of 12
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF COLORADO
`
`REALTIME ADAPTIVE STREAMING, LLC
` Plaintiff,
`v.
`SLING TV L.L.C.,
`SLING MEDIA L.L.C.,
`DISH TECHNOLOGIES L.L.C.,
`DISH NETWORK L.L.C., AND
`ARRIS SOLUTIONS, INC.,
` Defendants.
`
`
`CIVIL ACTION NO. 1:17-CV-02097-RBJ
`
`PATENT CASE
`JURY TRIAL DEMANDED
`
`JOINT STATUS REPORT
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`As directed by the Court’s minute order (Dkt. No. 171), the Parties1 submit this joint
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`status report regarding the telephonic status conference scheduled for April 23, 2020. The Parties
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`provide the following summary of IPR proceedings for the five asserted patents:
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`Patent
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`USP 8,867,610
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`Asserted against
`DISH and ARRIS
`
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`Status of IPRs and Appeals
`• Summary – PTAB instituted Defendants’ IPRs on the ’610 Patent
`finding there is a reasonable likelihood that all claims are
`unpatentable, but the IPRs have been terminated at the PTAB as time-
`barred, subject to appeal by DISH and ARRIS.
`• On 8/8/2019, the PTAB in IPR2019-00746 granted ARRIS’s request
`to join IPR2018-01331, joined ARRIS as a Petitioner in IPR2018-
`01331, and then terminated IPR2019-00746.
`• On 1/31/2020, the PTAB terminated IPR2018-01331 by Petitioner
`DISH and joinder Petitioner ARRIS on the ’610 patent.
`• On 2/4/2020, the PTAB denied ARRIS’s request for Rehearing on
`termination of IPR2019-00746.
`• On 3/16/2020, Petitioners DISH and ARRIS filed notices of appeal to
`the Federal Circuit for IPR2018-01331.
`
`
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`1 “Parties” means Plaintiff Realtime Adaptive Streaming, LLC (“Realtime”) and Defendants
`Sling TV L.L.C, Sling Media L.L.C, DISH Technologies L.L.C., DISH Network L.L.C.,
`(together, “DISH”) and ARRIS Solutions, Inc. (“ARRIS”).
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`1
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`Case 1:17-cv-02097-RBJ Document 172 Filed 04/08/20 USDC Colorado Page 2 of 12
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`Patent
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`USP 8,934,535
`Asserted against
`DISH and ARRIS
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`USP 8,929,442
`Asserted against
`ARRIS only
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`Status of IPRs and Appeals
`• On 3/24/2020, Petitioners DISH and ARRIS filed notices of appeal to
`the Federal Circuit for IPR2018-01331 and ARRIS filed a notice of
`appeal to the Federal Circuit for IPR2019-00746.
`• Aside from Defendants’ pending appeals, there are currently no
`pending IPRs (whether instituted or not) at the PTAB on the ’610
`patent.
`• Summary – All challenged claims of the ’535 Patent have been found
`unpatentable by the PTAB (subject to appeal by Realtime) or
`disclaimed by Realtime, and Petitioner DISH been terminated at the
`PTAB as time-barred, subject to appeal by DISH.
`• On 1/18/2019, Realtime disclaimed claims 15-30 of the ’535 patent.
`• On 1/10/2020, the PTAB issued a final written decision (“FWD”) in
`IPR2018-01169 by Petitioners Netflix, ARRIS, and Comcast finding
`all challenged claims 1–14 of the ’535 patent to be unpatentable.
`• On 1/17/2020, the PTAB terminated Petitioner DISH from IPR2018-
`01342 but continued the proceeding with Petitioners Google and
`Comcast
`• On 2/27/2020, the PTAB issued a FWD in IPR2018-01342 by
`Petitioners Google and Comcast finding claims 1–6, 8–12, 14 of the
`’535 patent to be unpatentable.
`• On 3/10/2020, Patent Owner Realtime filed a notice of appeal to the
`Federal Circuit for IPR2018-01169.
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`•
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`• Summary – Claims 1-15 of the ’442 Patent are subject to a pending
`IPR but claims 16–29 are not subject to any pending IPRs. Only
`Claim 8 is asserted in the Complaint against ARRIS.
`In IPR2019-00712 by Petitioner Adobe, a FWD concerning claims 1-
`15 of the ’442 patent is expected by Sept. 2020.
`In IPR2019-01222 by Petitioner ARRIS, a FWD concerning claims
`1-15 of the ’442 patent is expected by Jan. 2021.
`• On 3/16/2020, the PTAB denied institution of IPR2019-01585 by
`Petitioner ARRIS concerning claims 16–29 of the ’442 patent.
`• On 3/16/2020, the PTAB denied institution of IPR2019-01586 by
`Petitioner ARRIS concerning claims 16–29 of the ’442 patent.
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`•
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`2
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`Patent
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`USP 9,578,298
`Asserted against
`ARRIS only
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`USP RE46,777
`Asserted against
`ARRIS only
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`
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`Status of IPRs and Appeals
`• Summary – Claims 1–4, 7–11, and 13 of the ’298 Patent are subject
`to a pending IPR, but other claims not subject to any pending IPRs.
`Only Claim 1 is asserted in the Complaint against ARRIS.
`• On 1/14/2020, the PTAB issued a FWD in IPR2018-01227 by
`Petitioner Netflix confirming the patentability of all claims 1–19 of
`the ’298 patent.
`In IPR2019-01036 by Petitioner Google, a FWD concerning claims
`1–4, 7–11, and 13 of the ’298 patent is expected by Nov. 2020.
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`•
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`• Summary – All challenged claims of the ’777 Patent have been
`found unpatentable by the PTAB and/or disclaimed (canceled) by
`Realtime. Only Claim 1 is asserted in the Complaint against ARRIS.
`• On 1/15/2020, the PTAB issued a FWD in IPR2018-01189 finding
`claims 1–12 and 14 of the ’777 patent to be unpatentable.
`• Patent Owner Realtime did not appeal IPR2018-01189.
`• On 3/5/2020, Realtime disclaimed clams 1, 3-7, 9, and 11 of the ’777
`patent.
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`Based on this summary, the Parties submit the following competing proposals in advance
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`of the April 23 telephonic status conference. The Parties believe that the telephonic hearing is not
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`necessary but are happy to attend should the Court have any questions.
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`Plaintiff Realtime’s Position: This consolidated case involves two groups of patents: (1)
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`the ’610 and ’535 patents asserted against DISH and ARRIS; and (2) the ’442, ’298, and ’777
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`patents asserted against ARRIS only. Of the five patents, only IPRs on certain claims of the ’442
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`and ’298 patents against ARRIS remain. There are no pending IPRs on the ’610 and ’535 patents
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`against DISH. Therefore, Realtime believes that severing DISH into a separate case and lifting
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`the stay as to DISH is appropriate.
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`As to severance, the DISH moved to sever on September 26, 2018 (Dkt. 123) and ARRIS
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`3
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`Case 1:17-cv-02097-RBJ Document 172 Filed 04/08/20 USDC Colorado Page 4 of 12
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`joined that motion (Dkt. 125). The Court did not rule on that motion and deemed it moot when
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`this case was stayed. Dkt. 163. Defendants’ current position on severance has not changed. In
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`correspondence leading to this joint submission, ARRIS represented that “it believes severance is
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`appropriate in this matter.” And DISH declined to take a position.
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`Realtime believes that if DISH is to be severed, the appropriate time is now. Because
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`there are no pending IPRs for patents against DISH, severing the DISH case and allowing it to
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`continue would promote the just and speedy resolution of disputes. See FRCP 1. Further, the
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`Parties stipulated that for any claims that survive IPR, “the stay should be lifted and the case
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`allowed to proceed while any appeals from the PTAB decisions are pending.” Dkt. 161 at 2. That
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`applies to all claims of the ’610 patent, which were not invalidated in IPR and are not subject to
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`any additional IPRs. If the DISH case is severed, Realtime will drop other patent claims and
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`proceed on the ’610 patent against DISH. See id. at 2 (agreeing that Realtime can drop cancelled
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`claims and lift the stay for “the asserted claims [that] survive the IPRs”).
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`In sum, Realtime desires to lift the stay as to DISH, and there is no reason to wait nearly
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`a year for the outcome of IPRs that only implicate ARRIS. Realtime is mindful of the
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`coronavirus epidemic and will work with the Court and DISH to set a reasonable schedule and
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`other accommodations (e.g., depositions by video). Other patent litigations have proceeded in
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`this way, and delaying cases indefinitely will only increase the backlog on the courts.
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`Should the Court decline to sever and lift the stay as the DISH, Realtime requests that the
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`Court schedule a status conference after January 7, 2021, when all IPR proceedings will be
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`complete. Realtime also reserves the right to seek to lift the stay for DISH and ARRIS before
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`January 2021, for example, if claims are dropped or IPRs are terminated. Finally, if DISH is not
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`4
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`severed now, it should be precluded from seeking severance at a later date. It would be unfair for
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`DISH to oppose severance now and then change positions after the stay is lifted.
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`Defendants’ Position: Any request to lift the stay at this juncture is premature. The
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`parties originally agreed to stay this proceeding in view of co-pending inter partes review (IPR)
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`proceedings on the basis that there was a reasonable likelihood that the asserted patent claims
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`were invalid in view of prior art. Those very same issues that justified the stay in 2019 persist
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`today with respect to the four patents that Realtime seeks to assert.2 IPR proceedings remain
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`pending for two patents, namely, the ’298 and ’442 patents. Those decisions will not be
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`complete until January 2021.
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`As to the two patents for which IPR proceedings have completed at the Patent Trial and
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`Appeal Board (PTAB) level (the ’535 and ’610 patents), several facts are undisputed. It is
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`undisputed that the PTAB found that both patents were likely invalid in the institution decisions
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`previously reviewed by this Court. It is undisputed that the PTAB found that all asserted claims
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`of the ’535 patent are unpatentable in two separate proceedings that have now become final and
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`plaintiff is appealing at least the first decision. See Netflix, Inc. v. Realtime Adaptive Streaming,
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`LLC, No. IPR2018-01169, 2020 WL 120083, at *14 (P.T.A.B. Jan. 10, 2020); Google LLC et al.
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`v. Realtime Adaptive Streaming, LLC, No. IPR2018-01342, 2020 WL 959190, at *16 (P.T.A.B.
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`Feb. 27, 2020).
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`It is undisputed that the PTAB originally found that the DISH IPR proceedings were
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`timely despite the fact that a Realtime-associated entity that did not own the patent (and
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`therefore, did not have standing to sue) asserted it against DISH more than a year earlier. See
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`2 As noted in the chart above, all asserted claims of the ’777 patent were found unpatentable, and Realtime did not
`appeal that decision.
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`5
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`e.g., Dkt. No. 159-2 at 11-14; Dkt. No.159-3 at 5-7. After completion of all discovery in the
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`proceeding and oral arguments on the merits, the PTAB reversed course on purely procedural
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`grounds, finding that the complaint filed by a Realtime entity made DISH’s petition untimely.
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`For the ’535 patent, the PTAB terminated DISH but ultimately found the challenged claims
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`unpatentable as Google and Comcast remained as petitioners. As to the ’610 patent, the PTAB
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`terminated the proceeding as to all parties, including ARRIS which joined the proceeding as a
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`co-petitioner. DISH and ARRIS have respectively appealed the PTAB’s decision on the
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`timeliness issue and the PTAB’s statutory interpretation. This issue cuts across many IPR
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`proceedings and is vigorously contested in many current Federal Circuit appeals. And
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`importantly, the PTAB has not altered, reversed, or otherwise disturbed its initial merits
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`determination that there is a reasonable likelihood that the challenged claims are unpatentable.
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`Each side has filed appeals on the ’535 and ’610 patent IPR’s, and there is no more
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`clarity on the validity of Realtime’s patents than when the Court put the stay in place in 2019.
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`Continuing the stay will allow the Federal Circuit and PTAB to resolve the numerous
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`outstanding invalidity and procedural issues before expending Court, party, and potentially,
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`public resources on unnecessary litigation.
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`Finally, Realtime’s representation that “the Parties stipulated that for any claims that
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`survive IPR, ‘the stay should be lifted and the case allowed to proceed while any appeals from
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`the PTAB decisions are pending’” is incorrect. The beginning of the cropped quote requires as a
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`condition of lifting the stay that “the patentability of all asserted claims is confirmed in the
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`IPRs”:
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`Case 1:17-cv-02097-RBJ Document 172 Filed 04/08/20 USDC Colorado Page 7 of 12
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`Dkt. 161 at 2. Given that many asserted claims have been found invalid and none of the asserted
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`’610 claims were found patentable, the condition is not satisfied and the appeals must be
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`completed before the stay is lifted. The stay should remain until all appeals have run or, at the
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`very least, until January 2021 when the remaining IPR’s complete.
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`The nature of Realtime’s partial stay request—which asks the Court to advance its ’610
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`patent claims against DISH while further delaying the same claims against ARRIS—is also
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`procedurally flawed and creates more problems than it solves. Realtime’s request requires the
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`Court to i) lift the stay as to all parties, ii) rule on severance, iii) reinstitute the stay as to ARRIS
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`only, and iv) conduct an expensive and time-consuming trial on just a handful of Realtime’s
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`claims. Realtime, however, overlooks the fact that there are no pending motions requesting
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`severance.3 There is no need to go through wasteful briefing addressing the complex procedural
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`machinations proposed by Realtime while the PTAB and Federal Circuit proceedings remain in
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`flux.4
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`Moreover, Realtime’s request to serially litigate the ’610 patent by staggering the DISH
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`and ARRIS schedules will also ultimately prove wasteful. While DISH previously requested
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`3 In its stay order, the Court mooted all motions, including DISH’s motion to sever. Dkt. No. 162.
`4 Notably, Realtime does not commit to dismissing its ’535 patent claim with prejudice.
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`7
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`Case 1:17-cv-02097-RBJ Document 172 Filed 04/08/20 USDC Colorado Page 8 of 12
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`severance, it agreed to maintain the same schedule as ARRIS—and for good reason. Realtime’s
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`’610 patent claims implicate similar party and third-party discovery, expert discovery, and claim
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`construction issues. By serially litigating the ’610 patent, Realtime would require the Court,
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`parties, and third parties to engage in the following activities on two separate occasions:
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`• Third-party prior art and licensing depositions
`• Additional claim construction briefing based on new prosecution history created by
`Realtime’s arguments during the IPRs
`• DISH depositions (as one accused ARRIS product incorporates DISH technology)
`• Expert reports and depositions on invalidity
`• Summary judgment motions on invalidity
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`There is no need to duplicate this work, especially on a patent for which the PTAB found that
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`there is a reasonable likelihood that all asserted claims are invalid.5
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`Lifting the stay now is also unworkable given the significant disruptions caused by the
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`COVID-19 pandemic. Prior to the stay, the parties were on the eve of scheduling the first of
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`several party and non-party depositions with roughly eight weeks left in fact discovery. If the
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`stay were lifted, the litigation would pick up where things left off. State and local government
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`stay-at-home orders and travel restrictions to address the pandemic, however, would severely
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`hamper any attempt to conduct depositions for the foreseeable future. For example, several of
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`DISH’s attorneys live in Virginia, where the Governor ordered all residents to stay at home until
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`June 10, 2020. Commonwealth of Virginia Executive Order,
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`https://www.governor.virginia.gov/media/governorvirginiagov/executive-actions/EO-55-
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`5 Realtime’s request to enjoin DISH from moving for severance in the future because DISH allegedly opposes
`severance now makes little sense. The current situation here is of Realtime’s own making. Realtime sued DISH and
`ARRIS in the same case and opposed DISH’s motion to sever, which naturally resulted in consolidated discovery
`and merits-related briefing between the Defendants. Realtime’s request to disjoin the consolidated schedules—at
`the expense of Defendants, third parties, and the Court—to suit its own needs has nothing to do with whether
`severance of eventual trials is mandated by controlling statutes.
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`Temporary-Stay-at-Home-Order-Due-to-Novel-Coronavirus-(COVID-19).pdf. In Colorado,
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`where the DISH entities are headquartered, the governor has issued a comparable order.
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`Governor of Colorado Executive Order, https://www.colorado.gov/governor/news/gov-polis-
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`announces-statewide-stay-home-order-provides-update-colorado-response-covid-19. Thus,
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`lifting the stay at this time would be unproductive and impractical, given the travel and close
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`contact required to prepare witnesses and conduct depositions.
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`For these reasons, Defendants respectfully request that the Court continue the stay.
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`Dated: April 8, 2020
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`Respectfully submitted,
`
`/s/ Adam R. Shartzer
`Ruffin B. Cordell
`Adam R. Shartzer
`Brian J. Livedalen
`FISH & RICHARDSON P.C.
`1000 Maine Ave SW, Suite 1000
`Washington, D.C. 20024
`PH: 202-783-5070
`FX: 202-783-2331
`cordell@fr.com
`shartzer@fr.com
`livedalen@fr.com
`
`Michael R. Ellis
`FISH & RICHARDSON P.C.
`1717 Main Street, Suite 5000
`Dallas, TX 75201
`PH: 214-747-5070
`FX: 214-747-2091
`ellis@fr.com
`
`Attorneys for Defendants Sling TV L.L.C.,
`Sling Media L.L.C., DISH Technologies L.L.C.,
`and DISH Network L.L.C
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`Case 1:17-cv-02097-RBJ Document 172 Filed 04/08/20 USDC Colorado Page 10 of 12
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`
`/s/ Jennifer Librach Nall
`David B. Weaver
`Jennifer Librach Nall
`Aashish G. Kapadia
`Baker Botts L.L.P.
`98 San Jacinto Boulevard
`Suite 1500
`Austin, TX 78701-4078
`Phone: (512) 322-2587
`Fax: (512) 322-3687
`david.weaver@bakerbotts.com
`jennifer.nall@bakerbotts.com
`aashish.kapadia@bakerbotts.com
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`
`Michelle J. Eber
`Baker Botts L.L.P.
`
`One Shell Plaza
`910 Louisiana Street
`Houston, TX 77002
`Phone: (713) 229-1223
`Fax: (713) 229-7732
`michelle.eber@bakerbotts.com
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`Attorneys for ARRIS Solutions, Inc
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`/s/ Philip X. Wang
`Marc A. Fenster (CA SBN 181067)
`Reza Mirzaie (CA SBN 246953)
`Brian D. Ledahl (CA SBN 186579)
`C. Jay Chung (CA SBN 252794)
`Philip X. Wang (CA SBN 262239)
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, CA 90025
`(310) 826-7474
`mfenster@raklaw.com
`rmirzaie@raklaw.com
`bledahl@raklaw.com
`jchung@raklaw.com
`pwang@raklaw.com
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`Eric B. Fenster (CO Atty Reg # 33264)
`ERIC B. FENSTER, LLC
`1522 Blake Street, Suite 200
`Denver, CO 80202
`(303) 921-3530
`Eric@fensterlaw.net
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`Attorneys for Plaintiff
`Realtime Adaptive Streaming LLC
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`CERTIFICATE OF SERVICE
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` hereby certify that the counsel of record who are deemed to have consented to electronic
`service are being served on April 8, 2020, with a copy of this document via electronic service.
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`/s/ Philip X. Wang
`Philip X. Wang
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