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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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`HULU, LLC, AMAZON.COM, INC., and NETFLIX, INC.
`Petitioners,
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`v.
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`REALTIME ADAPTIVE STREAMING LLC
`Patent Owner.
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`Case IPR2018-01169
`Case IPR2018-01170
`Case IPR2018-01187
`Case IPR2018-01189
`Case IPR2018-01227
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`JOINT MOTION TO TERMINATE INTER PARTES REVIEWS AS TO
`HULU, LLC AND AMAZON.COM, INC.
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`Patent 8,934,535
`Patent 8,934,535
`Patent 9,769,477
`Patent RE46,777
`Patent 9,578,298
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`Patent Owner Realtime Adaptive Streaming LLC and Petitioners Hulu, LLC
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`and Amazon.com, Inc. (“Parties”) have reached a settlement. Pursuant to 35 U.S.C.
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`§ 317(a) and 37 C.F.R. §§ 42.72 and 42.74, The Parties request termination with
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`respect to petitioners Hulu and Amazon of the inter partes reviews of U.S. Patent
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`Nos. 8,934,535; 9,769,477; RE46,777; and 9,578,298 (“Patents-in-suit”), Cases
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`IPR2018-01169; IPR2018-01170; IPR2018-01187; IPR2018-01189; and IPR2018-
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`01227. The Parties were authorized to file this Joint Motion by the Board (via
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`email) on October 1, 2018.
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`As required under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), true copies
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`of the two settlement agreements that resolve the disputes in the above-captioned
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`inter partes reviews relating to the Patents-in-suit are filed herewith as exhibits.
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`There are no other collateral agreements between the Parties made in connection
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`with, or in contemplation of, the termination sought.
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), Realtime and
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`Hulu, and Realtime and Amazon are concurrently filing Joint Requests to Keep
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`Separate, which asks the Board to treat the two settlement agreements as business
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`confidential information, and to keep them separate from the files of these
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`proceedings and the files of the Patents-in-suit.
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`I.
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`Statement of Precise Relief Requested
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`The Parties jointly request that the Board terminate the inter partes reviews
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`2
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`of U.S. Patent Nos. 8,934,535; 9,769,477; RE46,777; and 9,578,298, Cases
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`IPR2018-01169; IPR2018-01170; IPR2018-01187; IPR2018-01189; and IPR2018-
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`01227, with respect to Hulu and Amazon. Netflix will remain as the sole petitioner
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`in these inter partes reviews.
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`II. Reasons Why Termination Is Appropriate
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`Termination of these proceedings with respect to Hulu and Amazon is
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`proper. Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this
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`chapter shall be terminated with respect to any petitioner upon the joint request of
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`the petitioner and the patent owner, unless the Office has decided the merits of the
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`proceeding before the request for termination is filed.” Because Realtime, Hulu,
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`and Amazon jointly request termination, and the Board has not yet decided the
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`merits of the proceedings, the Board should terminate the proceedings with respect
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`to Hulu and Amazon.
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`The litigation between Realtime and Hulu, and Realtime and Amazon,
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`involving the Patents-in-suit were dismissed on September 25, 2018, and
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`September 24, 2018, respectively. The Parties do not contemplate any litigation or
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`proceeding involving the Patents-in-suit in the foreseeable future.
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`III. No Future Participation by Petitioner Hulu and Amazon
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`Hulu and Amazon will not be participating further in these proceedings.
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`3
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`IV. Conclusion
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`The Parties have settled all disputes relating to the Patents-in-suit. Because
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`Realtime, Hulu, and Amazon jointly request termination, and the Board has not yet
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`decided the merits of the proceedings, the Parties respectfully request the Board to
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`terminate the proceedings with respect to Hulu and Amazon. Netflix will remain as
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`the sole petitioner in these inter partes reviews.
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`Date: October 3, 2018
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`Respectfully submitted,
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` /Kent N. Shum/
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`Kent N. Shum (Reg. No. 61,117)
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`kshum@raklaw.com
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`Counsel for Patent Owner Realtime
`Adaptive Streaming LLC
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` /Harper Batts/
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`Harper Batts (Reg. No. 56,160)
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`Sheppard Mullin Richter & Hampton
`LLP
`379 Lytton Avenue
`Palo Alto, CA 94301-1479
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`4
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`650-815-2600
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`Jennifer L. Nall (Reg. No. 57,053)
`Baker Botts, LLP
`98 San Jacinto Boulevard
`Suite 1500
`Austin, TX 78701
`512-332-2507
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`Counsel for Petitioners Hulu, LLC
`and Amazon.com, Inc.
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`5
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e)(1))
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`The undersigned hereby certifies that the above document was served on
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`October 3, 2018, by filing this document through the Patent Trial and Appeal
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`Board End to End system as well as delivering a copy via electronic mail upon the
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`following attorneys of record for the Petitioner:
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`Harper Batts, hbatts@sheppardmullin.com
`Eliot Williams, eliot.williams@bakerbotts.com
`Jennifer Nall, jennifer.nall@bakerbotts.com
`dlrealtimeiprservice@bakerbotts.com
`dl-realtime-ipr-service@bakerbotts.com
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`Date: October 3, 2018
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` /Kent N. Shum/
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`Kent N. Shum (Reg. No. 61,117)
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`Fax: (310) 826-6991
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`Counsel for Patent Owner Realtime
`Adaptive Streaming LLC
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