PUBLIC VERSION
`
`Trials@uspto.gov
`Tel: 571-272—7822
`
`Paper No. 29
`Entered: October 11, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNIFIED PATENTS, INC,
`
`P etitioner,
`
`V.
`
`REALTIME ADAPTIVE STREAMING, LLC,
`P atent Owner.
`
`Case IPR2018-00883
`
`Patent 8,934,535 B2
`
`Before KEVIN W. CHERRY, GARTH D. BAER, and
`NABEEL U. KHAN, Administrative PatentJudges.
`
`KHAN, Administrative Patent Judge.
`
`DECISION
`
`Institution of Inter Partes Review
`
`35 U. S. C, 59 314
`
`PUBLIC VERSION
`
`
`
`Trials@uspto.gov
`Tel: 571-272—7822
`
`Paper No. 29
`Entered: October 11, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNIFIED PATENTS, INC,
`
`P etitioner,
`
`V.
`
`REALTIME ADAPTIVE STREAMING, LLC,
`P atent Owner.
`
`Case IPR2018-00883
`
`Patent 8,934,535 B2
`
`Before KEVIN W. CHERRY, GARTH D. BAER, and
`NABEEL U. KHAN, Administrative PatentJudges.
`
`KHAN, Administrative Patent Judge.
`
`DECISION
`
`Institution of Inter Partes Review
`
`35 U. S. C, 59 314
`
`PUBLIC VERSION
`
`
`
`IPR2018-00883
`
`Patent 8,934,53 5 B2
`
`PUBLIC VERSION
`
`I.
`
`INTRODUCTION
`
`A. Background
`
`Unified Patents, Inc. (“Petitioner”) filed a Petition (Paper 2, “P et.”) to
`
`institute an i nterpartes review of claims 15, l6, 17, 19, 22, and 23 (the
`
`“challenged claims”) of U. S. Patent No. 8,934,535 B2 (Exhibit 1001, “the
`
`’535 Patent”). Realtime Adaptive Streaming, LLC (“Patent Owner”) timely
`filed a Preliminary Response. Paper 11 (“Prelim Resp”). At the request of
`
`the parties, we authorized additional briefing on the issue of whether
`
`Petitioner had named all of the real parties-in—interest (“RPIs”). Paper 18.
`
`Patent Owner filed a supplemental brief (Paper 21, “P .O. Supp. Br.”) and
`
`Petitioner filed a response (Paper 25, “Pet. Resp”). We have authority
`
`under 37 C.F.R. §42.4(a) and 35 U.S.C. § 314, which provides that an inter
`
`partes review may not be instituted unless the information presented in the
`
`Petition “shows that there is a reasonable likelihood that the petitioner would
`
`prevail with respect to at least 1 of the claims challenged in the petition.”
`
`Having considered the arguments and the associated evidence presented in
`
`the Petition and the Preliminary Response, for the reasons described below,
`
`we institute inlerpartes review of all the challenged claims on all the
`
`grounds set forth in the Petition.
`
`B. Related Proceedings
`
`The parties inform us that the ”535 Patth is involved in the following
`
`litigations:
`
`0 Realtime Data, LLCV. Echostar Corp. , No. 6:17—cv—84 (E.D. Tex.)
`
`0 Realtime Data LLC d/b/a 1X0 v. DISHNetwork Corporation er al. ,
`6:17—cv—00421 (ED. Tex.)
`
`2
`
`PUBLIC VERSION
`
`
`
`PUBLIC VERSION
`
`IPR2018-00883
`
`Patent 8,934,535 B2
`
`0 RealtimeAdaptive Streaming, LLCV. Sling TV, LLC, NO. 1:17—CV—
`2097 (D. C010.)
`
`0 Realti me Adaptive Streaming, LLC v. Amazon. com, Inc. , N0. 6:17—CV-
`549 (ED. Tex.)
`
`o Realtime Adaptive StreamingLLC v. EchoStar Technologies, LLC et
`al., No. 6:17—cv-00567 (E.D. Tex.).
`
`0 Realtime Adaptive Streaming, LLCV. Hula, LLC, N0. 2:17—CV—7611
`(CD. Cal.)
`
`0 Realtime Adaptive Streaming, LLC v. Cisco Systems, Inc. , N0. 6:17—
`cv-591 (E.D. Tex.)
`
`- Realtime Adaptive Streaming, 'LLC v. Brightcove, Inc. , N0. 1:17-CV—
`1519 (D. Del.)
`
`0 Realtime Adaptive Streaming, LLC v. Hai vision Network Video, Inc. ,
`N0. 1:17—CV—152O (D. Del.)
`
`0 Realtime Adaptive Streaming, LLC v. Polycom, Inc. , N0. 1:17-cv—
`2692 (D. C010.)
`
`0 RealtimeAdaptive Streaming, LLCV. Netflix, Inc,,N0. 1:17-CV-1692
`(D. Del.)
`
`0 Realtime Adaptive Streaming, LLCV. Sony Elecs., Inc. , N0. 1:17—CV—
`1693 (D. Del.)
`
`- RealtimeAdaptive Streaming, LLCV. Apple, Inc.,N0. 1:17-CV—2869
`(D. C010.)
`
`0 Realtime Adaptive Streaming, LLC v. Adobe Sys. Inc. , N0. 1 :18-CV-
`10355 (D. Mass.)
`
`0 Realtime Adaptive Streaming, LLCV. Samsang Elec. Co., Ltd. , N0.
`6:18—CV—001 13 (ED. Tex.)
`
`o Realtime Adaptive StreamingLLC v. Wowza Media Systems LLC, N0.
`1:18-CV—00927 (D. C010.)
`
`0 Realtime Adaptive Streaming LLC v. Google LLCet al, No. 2:18-CV-
`03629 (D.C. Cal.)
`
`0 Realtime Adaptive StreamingLLC v. Avaya Inc. , N0. 1 :18-CV-01046
`(D. C010.)
`
`3
`
`PUBLIC VERSION
`
`
`
`PUBLIC VERSION
`
`IPR2018-00883
`
`Patent 8,934,535 B2
`
`Realti me Adaptive Streaming LLC v. Broadcom Corporation et al. ,
`No. 1 :18—CV—01048 (D. Colo.)
`
`Realtime Adaptive Streaming LLC 12. LG Electronics Inc. et al, NO.
`6:18-CV—00215(E.D.Tex.)
`
`Realtime Adaptive Streaming LLC v. Advanced Micro Devices, Inc. ,
`No. 1:18—CV-01l73 (D. Colo.)
`
`Realtime Adaptive StreamingLLC v. Intel Corporation, No. 1:18—cv-
`01175 (D. C010.)
`
`Realtime Adaptive StreamingLLC v. Mitel Networks, Inc. , N0. 1 :18—
`CV—Ol 177 (D. Colo.)
`
`Realti me Adaptive StreamingLLC v. Cox Communications, Inc. , N0.
`8:18—CV-OO942 (CD. Cal.)
`
`Realtime Adaptive StreamingLLC V. Charter Communications, Inc. et
`al, No. 1:18—CV-Ol345 (D. Colo.)
`
`Realti me Adaptive Streaming, LLC 12. Comcast Cable
`Communications, LLC d/b/a Xfinity et al, No. 1—18—CV—01446 (D.
`Colo.)
`
`Pet. 1—2; Paper 10, 2—4.
`
`Patent Owner further informs us that the ’5 35 Patent is involved in the
`
`following interpartes review proceedings:
`
`Hulu, LLC et al v. Realtime Adaptive StreamingLLC,1PR2018—01169
`
`Hulu, LLC et al v. Realtime Adaptive StreamingLLC,1PR2018—01170
`
`Sling TVLLC et al v. Realtime Adaptive StreamingLLC, 1PR2018-
`01332
`
`Sling TVLLC et al v. Realtime Adaptive StreamingLLC, IPR2018—
`01342
`
`Cisco Systems, Inc. v. Realti me Adaptive Streaming LLC, IPR2018-
`01384
`
`Paper 10, 1—2.
`
`4
`
`PUBLIC VERSION
`
`
`
`IPR2018-00883
`
`Patent 8,934,535 B2
`
`PUBLIC VERSION
`
`C. The ’535 Patent
`
`The ’535 Patent relates generally to compressing and decompressing
`
`data based on an actual or expected throughput (bandwidth) of a system.
`
`Ex. 1001 , 1:21—25. The ’5 35 Patent explains that data compression
`
`algorithms can have varied performance characteristics. Ex. 1001, 1:32—35.
`
`For example, with a typical dictionary—based compression algorithm, such as
`
`Lempel—Ziv, the size of the dictionary can affect the performance of the
`
`algorithm. Ex. 1001, 1:35—38. A large dictionary may yield very good
`
`compression ratios, but may make the algorithm take a long time to execute.
`
`On the other hand, a smaller dictionary would yield a faster compression
`
`time but at the expense of lower compression ratio. Ex. 1001, 1:3 8—44.
`
`Thus, one challenge in employing data compression is selecting the
`
`appropriate algorithm from a variety of algorithms for a given application or
`
`system. The desired balance between speed and efficiency is an important
`
`factor in determining which algorithm to select for data compression. A
`
`system that provides dynamic modification of compression system
`
`parameters to provide an optimal balance between speed and compression
`
`ratio is highly desirable. Ex. 1001, 1:56—60.
`
`The ’535 Patent describes two categories of compression
`
`algorithms—asymmetrical and symmetrical. An asymmetrical data
`
`compression algorithm is “one in which the execution time for the
`
`compression and decompression routines differ significantly.” Ex. 1001 ,
`
`9:64—66. Thus, in an asymmetrical algorithm, either the compression time is
`
`fast with the decompression time being slow, or vice versa. An example of
`
`an asymmetric algorithm is Lempel—Ziv. Ex. 1001, 1022—4. A symmetric
`
`compression algorithm, on the other hand, is “one in which the execution
`
`5
`
`PUBLIC VERSION
`
`
`
`PUBLIC VERSION
`
`IPR2018—00883
`
`Patent 8,934,535 B2
`
`time for the compression and the decompression routines are substantially
`
`similar. Examples of symmetrical algorithms include table—based
`
`compression schemes such as Huffman.” Ex. 1001 , 10:5—9. The total
`
`execution time of the compression and decompression portions of
`
`asymmetrical algorithms is typically higher than the total time for
`
`symmetrical algorithms. But an asymmetric algorithm typically achieves
`
`higher compression ratios. Ex. 1001, 10:10—14.
`
`The invention described in the ’535 Patent is directed to a system and
`
`method for compressing and decompressing based on the actual or expected
`
`throughput (bandwidth) of a system employing data compression and a
`
`technique of optimizing based upon planned, expected, predicted, or actual
`
`usage. Ex. 1001, 7:51-—55. A bandwidth sensitive data compression routine
`
`may be selected based on access profiles that enable the controller to
`
`determine a compression routine associated with a data type of the data to be
`
`compressed. Ex. 1001, 8 :4—8. The access profiles comprise information
`
`that enables the controller to select a suitable compression algorithm that
`
`provides the desired balance between speed and compression ratio.
`
`Ex. 1001. 8:8—13.
`
`These access profiles may take into account the overall throughput of
`
`a system as one factor in deciding whether to use an asymmetric or
`
`symmetric algorithm. Ex. 1001, 11:25—29. Another factor the access profile
`
`may track is the type of data to be processed. Ex. 1001, 11:29—31. For
`
`example, different data types (the type may be determined by a file
`
`extension of the data) may be associated with different compression
`
`algorithms. Ex. 1001, 11:35—40.
`
`6
`
`PUBLIC VERSION
`
`
`
`PUBLIC VERSION
`
`IPR2018-00883
`
`Patent 8,934,535 B2
`
`The ’535 Patent illustrates this concept with three categories of access
`
`profiles. In a first category, the access profile of a particular data type may
`
`specify that the data may be decompressed significantly more times than it is
`
`compressed. This is typical with operating systems, applications, and
`
`websites. EX. 1001, 12:1—12. In such a situation it may be suitable to utilize
`
`an asymmetric algorithm that provides slow compression routine and a fast
`
`decompression routine. EX. 1001, 12:14—20. Thus, the compression ratio
`
`achieved by using an asymmetric algorithm with slow compression will be
`
`higher than if a symmetric algorithm was used. Ex. 1001, 12:20—24.
`
`A second category is one in which the data would be compressed
`
`significantly more times than decompressed. Ex. 1001, 12:25—27. This is
`
`typical for automatically updating an inventory database. Here an
`
`asymmetric algorithm with a fast compression routine and a slow
`
`decompression routine would be most appropriate. Ex. 1001, 12:27—35.
`
`A third category is one in which the data is accessed with a similar
`
`number of reads and writes, and thus would be compressed and
`
`decompressed approximately the same number of times. EX. 1001, 12:3 6—
`
`39. This is typical of most user- generated data such as documents and
`
`spreadsheets. EX. 1001, 12:40—41. In this case, a symmetric algorithm that
`
`provides relatively fast compression and decompression would be
`
`preferable. EX. 1001, 12:41—43.
`
`In this way, the ’535 Patent describes a system that automatically
`
`selects an appropriate compression algorithm to optimize system throughput
`
`and based on the type of data being installed or stored. Ex. 1001, 14:27—39.
`
`7
`
`PUBLIC VERSION
`
`
`
`PUBLIC VERSION
`
`lPR2018-00883
`
`Patent 8,934,535 B2
`
`D. Illustrative Claim
`
`Of the challenged claims, claim 15 is independent and claims 16, 17,
`
`19, 22, and 23 depend from claim 15.
`
`Claim 15, reproduced below, is illustrative:
`
`15. A method, comprising:
`
`determining a parameter of at least a portion of a data
`
`block;
`
`selecting one or more asymmetric compressors from
`among a plurality of compressors based upon the determined
`parameter or attribute;
`
`compressing the at least the portion of the data block
`with the selected one or more asymmetric compressors to
`provide one or more compressed data blocks; and
`
`storing at least a portion ofthe one or more compressed
`data blocks.
`
`E. Asserted Grounds ofUnpal‘entability
`
`Petitioner challenges claims 15, 16, 17, 19, 22, and 23 ofthe ’535
`
`Patent on the following grounds:
`
`
`
`
`
`
`
`
`
`W w W m
`
`
`
`
`
`
`
`1 Dye, US. Patent No. 7,190,284, March 13, 2007 (EX. 1003, “‘Dye”).
`
`2 Appelrnan, US. Patent No. 6,1 12,250,Aug. 29, 2000 (Ex. 1004,
`c‘Appelman”).
`
`3 Riddle, U.S. Patent No. 6,175,856 Bl, Jan. 16, 2001 (EX. 1005, “‘Riddle”).
`
`8
`
`PUBLIC VERSION
`
`
`
`PUBLIC VERSION
`
`IPR2018—00883
`
`Patent 8,934,535 B2
`
`F. Level OfOrdl'nary Skill
`
`P etitioner proposes that
`
`A person of ordinary skill in the art (“P OSITA”) for the
`’535 Patent at the time would have had a Bachelor’s Degree in
`Electrical Engineering or a related subject and three or more
`years of experience working with data compression systems
`and algorithms. EX1006, ll 17. Less work experience may be
`compensated by a higher level of education, such as a Master’s
`Degree, and vice versa. Id.
`
`Pet. 8. Patent Owner does not provide an alternative proposal for the level
`
`of ordinary skill. For purposes ofthis Decision, we adopt Petitioner’s
`
`proposed level of ordinary skill.
`
`G. Claim Interpretation
`
`In an interpartes review, we construe claim terms in an unexpired
`
`patent according to their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144—46 (2016)
`
`(upholding the use of the broadest reasonable interpretation standard).
`
`“Under a broadest reasonable interpretation, words of the claim must be
`
`given their plain meaning, unless such meaning is inconsistent with the
`
`specification and prosecution history.” Trz' vascular, Inc. v. Samaels, 812
`
`F.3d 1056, 1062 (Fed. Cir. 2016). Only terms that are in controversy need to
`
`be construed, and only to the extent necessary to resolve the controversy.
`
`See Wellman, Inc. v. Eastman Chem. C0., 642 F.3d 1355, 1361 (Fed. Cir.
`
`2011); Vivid Techs, Inc. v. Am. Sci. & Eng ’g, Inc, 200 F.3d 795, 803 (Fed.
`
`Cir. 1999).
`
`9
`
`PUBLIC VERSION
`
`
`
`PUBLIC VERSION
`
`IPRZOl 8-00883
`
`Patent 8,934,535 B2
`
`Petitioner proposes to construe “asymmetric compressors” as “a
`
`compressor in which the execution time for the compression and
`
`decompression routines differ significantly.” Pet. 9. Patent Owner agrees
`with this construction. Prelim. Resp. 34. Because Petitioner’s construction
`
`is consistent with the definition of “asymmetric compressors” from the ’535
`
`Patent, we adopt this construction. See Ex. lOOl, 9:63—66 ( “An
`
`asymmetrical data compression algorithm is referred to herein as one in
`
`which the execution time for the compression and decompression routines
`
`differ significantly”)
`
`11. DISCUSSION
`
`A. Real Parties in Interest
`
`In accordance with 35 U.S.C. § 312(a)(2) and 37 C.F.R. §42.8(b)(1),
`
`Petitioner identifies itself, Unified Patents, Inc., as the only real-party-in-
`
`interest (“RP 1”). Pet. 1. Patent Owner argues that the Petition should be
`
`denied because Petitioner has failed to identify all real parties in interest
`
`(RPIs), which it argues, are all members ofP etitioner’s “Content Zone.”
`
`P.O. Supp. Br., 1—2.
`
`1. Principles OfLaw
`
`A petition for interpartes review “may be considered only if .
`
`.
`
`. the
`
`petition identifies all real parties-in—interest.” 35 U.S.C. §312(a)(2). When
`
`a patent owner provides sufficient evidence prior to institution that
`
`reasonably brings into question the accuracy of a petitioner's identification
`
`of RPIs, the overall burden remains with the petitioner to establish that it has
`
`complied with the statutory requirement to identify all real parties in interest.
`
`10
`
`PUBLIC VERSION
`
`
`
`PUBLIC VERSION
`
`IPR2018-00883
`
`Patent 8,934,535 B2
`
`Zerto, Inc. v. EMC Corp, Case No.1PR2014—01295, slip op. at 6—7 (PTAB
`
`Feb. 12, 2015) (Paper 32).
`
`“[A]t a general level, the ‘real party—in-interest’ is the party that
`
`desires review of the patent.” Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48,756, 48,759 (Aug. 14, 2012) (“Trial Practice Guide”). “Whether a
`
`party who is not a named participant in a given proceeding nonetheless
`
`constitutes a ‘real party-in-interest’ .
`
`.
`
`. to that proceeding is a highly fact-
`
`dependent question” with no “bright line test,” and is assessed “on a case—
`
`by—case basis.” Trial Practice Guide, 48,759 (citing Taylor v. Sturgell, 553
`
`U. S. 880, 893—95 (2008)). A common consideration is whether the non—
`
`party exercised or could have exercised control over the proceeding. Trial
`
`Practice Guide, 48,759 (citing Charles Alan Wright, Arthur R. Miller &
`
`Edward H. Cooper, Federal Practice & Procedure (“Wright & Miller”)
`
`§ 4451). The concept of control generally means that “the nonparty has the
`
`actual measure of control or opportunity to control that might reasonably be
`
`expected between two formal coparties.” Id. Actual control is, however, not
`
`the only measure, thus, in addition, “[d]etermining whether a non-party is a
`
`“real party in interest’ demands a flexible approach that takes into account
`
`both equitable and practical considerations, with an eye toward determining
`
`whether the non—party is a clear beneficiary that has a preexisting,
`
`established relationship with the petitioner.” Applications in Internet Time,
`
`LLCv. RPXCorp., 897 F.3d 1336, 1351 (Fed. Cir. 2018) (“AH”). Relevant
`
`factors in the RPI analysis include “Party A’s relationship with the
`
`petitioner; Party A’s relationship to the petition itself, including the nature
`
`and/or degree of involvement in the filing; and the nature of the entity filing
`
`the petition.” TrialPractice Guide, 48,760.
`
`1 1
`
`PUBLIC VERSION
`
`
`
`PUBLIC VERSION
`
`IPR2018-00883
`
`Patent 8,934,535 B2
`
`2. Arguments
`
`Patent Owner’s arguments are premised on its contention that
`
`Petitioner’s members are beneficiaries of this Petition and have a
`
`preexisting, established relationship with Petitioner. P.O. Supp. Br., 4.
`
`Patent Owner explains that Petitioner is a for—profit entity that “organizes its
`
`customer relationships into specific technology ‘areas’ or ‘zones’ based on
`
`their interest” and that this particular IPR falls within Petitioner’s “Content
`
`Zone.” P .O. Supp. Br., 4 (citing Ex. 2003, 2—3). Several Content Zone
`
`members have been accused of infringing the ”535 Patent. P.O. Supp. Br., 4
`
`(citing Ex. 2003, ll). Patent Owner singles out one such member,-,
`
`but argues all members of Petitioner’s “Content Zone,” would benefit if trial
`
`is instituted as a result of this Petition and are, therefore, RPIs. P.O. Supp.
`
`Br., 5 (citing Ex. 2003, 3—10).
`
`P atent Owner characterizes P etitioner’ s “relationship with its
`
`members [as being] dominated by [P etitioner’s] filing of IP Rs to benefit
`
`them.” P.O. Supp. Br., 5. For example, Patent Owner argues that the fees
`
`paid by Petitioner’s customers are overwhelmingly spent on filing IP Rs, and
`
`that such fact is marketed to those customers as a benefit of membership.
`
`P.O. Supp. Br., 6—7 (citing Ex. 2007, 2; 2008, 9, 11 (—
`
`—. m Supp.Br.,s<citngx
`
`2008,19).
`
`12
`
`PUBLIC VERSION
`
`
`
`PUBLIC VERSION
`
`IPR2018-00883
`
`Patent 8,934,535 B2
`
`Patent Owner argues that Petitioner “acts as. .
`
`. an association that
`
`‘assert[s] the personal rights of its members’” because Petitioner is not at
`
`risk of being sued on the patent it challenges, only its members are. P.O.
`
`Supp. Br., 8 (citing Ex. 2004, 14:21—25, 16:2—7). Patent Owner also argues
`
`that Petitioner acts as an “attorney—in—fact” for its members, because its
`
`customers hire it “with full knowledge that most of their fees will be used to
`
`file petitions within the selected zone, reducing their litigation risk.” P.O.
`
`Supp. Br., 8 (citing EX. 2006, 2 (stating that Petitioner’s strategy-
`_».
`
`In response, Petitioner argues that P atent Owner interprets AIT too
`
`broadly and ignores the many facts that distinguish the circumstances
`
`present here from those in AIT. Pet. Resp. , 1.
`
`According to Petitioner, P atent Owner incorrectly interprets A]T as
`
`proposing a "benefits-plus-relationship" standard where any nonparty that
`
`benefits from an IPR and has any relationship to the Petitioner is considered
`
`an RPI. P.O. Supp. Br., 6. Petitioner alleges that finding Petitioner to be an
`
`attorney-in-fact because members hire it with full knowledge that most of
`their fees will be used to file petitions is contrary to the common law‘of RPI
`
`and preclusion. P.O. Supp. Br., 7 (citing Taylor v. Sturgell, 553 U. S. 880,
`906 (2008); Wright & Miller § 4454 n. 19). Similarly, Petitioner argues its
`
`members are not RPIs under P atent Owner’ s “Association Theory” merely
`
`due to their paid memberships being combined with some shared interest
`
`because “[o]rdinarly, preclusion requires participation and control—an
`
`association’s mere ‘interest as an advocate of the interests of its members’ is
`
`not sufficient.” P.O. Supp. Br., 9—10 (citing Wright & Miller § 4451).
`
`13
`
`PUBLIC VERSION
`
`
`
`PUBLIC VERSION
`
`IPR2018-00883
`
`Patent 8,934,535 B2
`
`Under the correct interpretation of A]T, Petitioner argues, its members
`
`are not RPIs. For example, Petitioner argues there is no dispute that “(1)
`
`Unified solely directed, controlled, and funded this IPR; (2) no member
`
`communicated with Unified or knew about the IPR before it was filed; and
`
`(3) no member has participated in this IP R, either explicitly or implicitly.”
`
`P.O. Supp. Br., 3. Similarly, Petitioner emphasizes that it does not work
`
`with its members to resolve then litigations; no significant payments were
`
`made shortly before the Petition was filed; Petitioner does not share any
`
`board members and has no corporate relationships with any of its members
`(beyond membership itself); there was no offer to, or request by, members
`
`for Petitioner to reach out to Patent Owner regarding any litigation;
`
`Petitioner does not communicate with any member regarding its desires or to
`
`coordinate strategies; most of the members that are alleged to be RPIs,
`
`including -, were not involved in litigation with Patent Owner when
`
`this IPRwas filed; and no member had filed an earlier petition that was
`
`denied or was otherwise time—barred from filing an IPR. P .O. Supp. Br., 4—
`
`5.
`
`3. Analysis
`
`At this stage of the proceeding, and based on the facts in the current
`
`record, we are persuaded that Petitioner has carried its burden in complying
`
`with 35 U.S.C. § 312(a) and identifying all RPIs.
`
`We agree with Petitioner that Patent Owner is overextending the
`
`reasoning of AIT. The RPI analysis set out in A]T and the common law
`
`require more than simply confining the analysis to determining whether a
`
`party benefits generally from the filing of this Petition and also has a
`
`14
`
`PUBLIC VERSION
`
`
`
`PUBLIC VERSION
`
`IPR2018—00883
`
`Patent 8,934,535 B2
`
`relationship with the Petitioner. While the court in A]T looked to the fact
`
`that RPX was a “for—profit company whose clients pay for its portfolio of
`
`‘patent risk solutions,” it did not end its analysis there. AIT, 897 F.3d at
`
`1351. Instead, it proceeded deeper to ascertain the nature of the relationship
`
`between Salesforce, RPX and the specific IP Rs filed, and the nature of the
`
`benefit to Salesforce from RPX’s IPRs. Finding extensive and specific ties
`
`between the two parties as they relate to the IP Rs, the Federal Circuit was
`
`ultimately compelled to vacate the Board’ s decision and remand for further
`
`proceeding to consider “the full range of relationships under § 315(b) and
`
`the common law that could make Salesforce a real party in interest.” A]T,
`
`897 F.3d at 1358.
`
`We start then by analyzing the nature and degree of the relationship
`
`between Petitioner, the members of its Content Zone, and the filing of this
`
`IP R. There are nearly two hundred companies in the Content Zone. See
`
`EX. 2003, 4—10. Many of those companies pay subscription fees for their
`
`membership in the zone, but at least some pay no fee at all. Ex. 1018 11 5.
`
`The fees are allocated to the zone in which the subscribing member belongs.
`
`Ex. 2004, 103 :1 6—1 9. Using money allocated to the Content Zone,
`inninn_ nnininn iiinn
`petitions such as this one (EX. 1018 11 13) and claims its strategy-
`— (EX. 2006, 2). In this regard, Petitioner is
`
`similar to RPX, which is a for—profit company that also files IP Rs to serve its
`
`clients and claims its interests are “100% aligned” with those clients. AIT,
`
`897 F.3d at 1343, 1352. As we explained above, ending the inquiry here and
`
`basing the decision on the aforementioned similarities would be premature
`
`and cut short the RPI analysis set out in A]T. It would also run afoul of “the
`
`15
`
`PUBLIC VERSION
`
`
`
`PUBLIC VERSION
`
`1PR2018—00883
`
`Patent 8,934,535 B2
`
`general rule that a litigant is not bound by a judgment to which she was not a
`
`party” except in discrete and l'nnited circumstances. Taylor, 553 US. at 898.
`
`Looking more deeply, we initially note there is no evidence that any
`
`of Petitioner’ s members controlled, directed, or directly financed this
`
`proceeding. The vast majority of the Content Zone members have not been
`
`accused of infringing the ’535 Patent. EX. 2003, 4—10; Paper 10. As for the
`
`members that have been accused, some were sued after Petitioner had
`
`already filed this IP R. Paper 10. There is no evidence that there was any
`
`communication at all between the nonparties and Petitioner regarding filing
`
`this Petition, or that any Content Zone member even knew beforehand of
`
`Petitioner’s intent to file this Petition. Additionally, there is no evidence
`
`here, as there was in A]T, of communications between Petitioner and any of
`
`its members regarding the underlying litigations involving the ”535 Patent.
`
`Similarly, there is no evidence here, as there was in A1T, that any of
`
`the Content Zone members share officers or board members with Petitioner,
`
`or have any corporate relationships with Petitioner aside from their
`
`membership. EX. 2003, 29; EX. 1018 11 6. There also is no evidence of a
`
`“very significant payment shortly before” this IPR was filed. A]T, 897 F. 3d
`
`at 1342. Perhaps most significantly, there is no evidence that any member
`
`desires review of the ’535 Patent but is time—barred from filing an IPR—a
`
`fact that was crucial in AIT. Id. at 1353 (“Given that. .
`
`. any IPR petitions
`
`Salesforce might have wanted to file would have been tirne—barred, this
`
`evidence at least suggests that RPX may have filed the three IPR petitions,
`
`in part, to benefit Salesforce”), 1355 (“[T]he evidence submitted indicates
`
`the company’s understanding that the very challenges to validity included in
`
`the IPR petitions were challenges Salesforce would like to have made if not
`
`16
`
`PUBLIC VERSION
`
`
`
`PUBLIC VERSION
`
`IPR2018-00883
`
`Patent 8,934,535 B2
`
`time—barred from doing so”), 1356 (no evidence contradicts “AIT ’s theory
`
`that RPX filed IPR petitions challenging the two patents asserted in the
`
`Salesforce action to benefit Salesforce, where Salesforce itself was time—
`
`barred from filing petitions”).
`
`In AIT, these accumulated factors4 raised a concern that RPX” s actions
`
`appeared tailored to benefit Salesforce specifically. This, combined with the
`
`fact that RPX advertises itself as an “extension of a client’s in-house legal
`
`team,” not only demonstrated a deep and extensive tie between RP X and
`
`Salesforce, but also raised the issue of whether RPX was acting as an
`
`attorney—in—fact on behalf of Salesforce. AIT, 897 F.3d at 1357. Here,
`
`Petitioner asserts that it “has no attorney—client relationship with its members
`
`and is not an extension of any member’s in-house legal team.” P.O. Supp.
`
`Br., 4 (citing Ex. 1018 1] 4). Unlike A]T, the circumstances here do not
`
`warrant calling this assertion into question. There is no evidence of any
`
`member having had communications with Petitioner regarding any
`
`underlying litigation involving the ’535 Patent. No member has had its
`
`petitions denied. No member is time-barred from filing its own IPRs.
`
`— Time
`
`evidence does not point to any specific member whose ties with Petitioner
`
`4 The Federal Circuit found the timing of RPX’s petitions, just three weeks
`after Salesforce’s CBM petitions were denied, the fact that Salesforce was
`tirne—barred from challenging the patents, and the sudden termination of
`communications between RPX and Salesforce regarding Salesforce’ s
`underlying litigation, as all indicating “a mutual desire to avoid entering into
`an express agreement under which RPX would file IPR petitions challenging
`MT’S patents for Salesforce’s benefit.” AIT, 897 F.3d at 1355 n.6,
`
`17
`
`PUBLIC VERSION
`
`
`
`IPR2018-00883
`
`Patent 8,934,535 B2
`
`PUBLIC VERSION
`
`are so extensive to imply that Petitioner filed this IPR at the behest of that
`
`member or that it was acting as an attorney—in—fact on behalf of that member.
`
`Finally, we assess Patent Owner’s allegations regarding -,
`
`which it singles out as notable amongst the nearly two hundred Content
`
`Zone members. P.O. Supp. Br., 1—2. Patent Owner emphasizesthat,l
`
`—. P.O. Supp.Br., 1 (citing EX. 2008, 9, 11, 19).
`Thus, Patent Owner argues “there can be no doubt that- is an RPI.”
`
`P.O. Supp. Br., 1. At first glance, these facts indicate a more specific tie
`
`between-, Petitioner, and the filing of this IPR. Looking more
`closely, however, the current record suggests that- ’ 8 relationship to
`
`Petitioner and this IPR is not significantly different than that of the other
`
`members. First,- was not accused of infringement at the time
`Petitioner filed this IPR and Petitioner had no way of knowing that-
`
`would be accused of infringing the ’5 35 Patent at that time. Nor is there any
`
`evidence that- itself knew that it would be accused of infringing the
`
`’535 Patent when this IPR was filed. Thus, beyond the general benefit
`
`received from Petitioner’ 8 common practice of filing IPRs in relevant
`
`technology areas, the evidence does not point to any further specific benefits
`
`- would have received from Petitioner’s actions in return for the
`membership payments it was making. Second, it appears—
`
`_. m.
`
`Supp. Br, 9 (citing EX. 2010, 15). For example, at least one other member,
`
`1 8
`
`PUBLIC VERSION
`
`
`
`PUBLIC VERSION
`IPR2018-00883
`
`
`Patent 8,934,535 B2
`
`
`
`not accused of infringement by Patent Owner,
`
`
`
`
`
`. Id.
`
`
`
`In sum, we do not find membership in Petitioner's Content Zone and
`
`
`
`
`
`
`
`
`
`the general benefits accruing from such membership to be sufficient under
`
`
`
`
`
`
`
`the principles espoused by AIT and the common law to require that all such
`
`
`
`
`
`members be identified as RPis under§ 312(a)(2). Further, because the
`
`
`
`
`
`
`
`
`
`
`
`
`
`evidence on this record has demonstrated the relationships between Content
`
`
`
`
`
`
`
`
`
`
`
`Zone members and Petitioner to be far less extensive than between RPX and
`
`
`
`
`
`
`
`
`
`
`
`
`
`Salesforce in AIT, we agree with Petitioner that its particular members are
`
`
`
`not unnamed RP Is in this case. Accordingly, at this stage of the proceeding,
`
`
`
`
`
`
`
`
`
`we are persuaded that Petitioner has carried its burden in complying with 35
`
`
`
`
`
`
`
`U.S.C. § 312(a).
`
`
`
`B.Discretion under 35 US. C. § 325(d)
`
`
`
`
`
`Pa tent Owner emphasizes that the Petition's primary reference and
`
`
`
`
`
`
`
`
`
`one of its secondary references, Dye and Riddle, respectively, were listed on
`
`
`
`
`
`
`
`
`
`an IDS and acknowledged by the Examiner during prosecution. Prelim.
`
`
`
`
`
`
`
`Resp. 6. Although neither Dye, nor Riddle, were explicitly discussed by the
`
`
`
`
`
`
`
`
`
`
`
`Examiner, Pa tent Owner urges us to exercise our discretion to deny
`
`
`
`
`
`
`
`
`
`institution. Prelim. Resp. 6-7.
`
`
`
`
`
`Institution of inter partes review is discretionary. See Harmonic Inc.
`
`
`
`
`
`
`
`
`
`v.Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016)("thePTOis
`
`
`
`
`
`
`
`permitted, but never compelled, to institute an IPR proceeding"). In
`
`
`
`
`
`particular, § 325( d) states that "[i]n determining whether to institute ... the
`
`
`
`
`
`
`
`
`
`
`
`
`
`Director may take into account whether ... the same or substantially the
`
`
`
`
`
`
`
`same prior art or arguments previously were presented to the Office." While
`
`
`
`
`
`
`
`
`
`19
`PUBLIC VERSION
`
`
`
`PUBLIC VERSION
`
`IPR2018-00883
`
`Patent 8,934,535 B2
`
`Patent Owner is correct that the Board has discretion to deny institution even
`
`when certain prior art references are not explicitly discussed or applied by
`
`the Examiner against the claims during prosecution, the Board typically
`
`exercises its discretion to decline institution under 35 U.S.C. §325(d) when
`
`the cited art was previously presented to and extensively considered by the
`
`Office. See, e. g. , Kayak Software Corp. v. International Business Machines
`
`Corp. , Case CBM2016-00075, 2016 WL 11034653 (PTAB Dec. 15, 2016)
`
`(Paper 16).
`
`This is not the case here as neither Dye nor Riddle were discussed or
`
`substantively considered during prosecution. We also note that the IDS in
`
`which Dye and Riddle appear lists 566 total United States Patents and some
`
`number of other references as well. Riddle appears as the 360th patent and
`
`Dye appears as the 478th on the IDS. Ex. 1002, 268, 274. Under such
`
`circumstances, with the vast number ofreferences listed on the IDS, we
`
`decline to exercise our discretion to deny institution.
`
`C. Anticipation over Dye
`
`I. Overview ofDye
`
`Dye relates to an Integrated Memory Controller (IMC) that includes
`
`data compression and decompression engines for improved data efficiency
`
`and bandwidth. Ex. 1003, 3:3—5. “The memory controller includes a
`
`compression/decompression engine, preferably parallel data compression
`
`and decompression slices, that are embedded into the memory control logic
`
`of the memory controller.” Ex. 1003, 3:6—9.
`
`The IMC disclosed in Dye preferably uses lossless data compression
`
`and decompression schemes, but may also include one or more lossy
`
`compression schemesfor audio/video/graphics data. Ex. 1003, 49—15. As
`
`20
`
`PUBLIC VERSION
`
`
`
`PUBLIC VERSION
`
`lPR2018—00883
`
`Patent 8,934,535 B2
`
`an example of lossless
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
