UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`SLING TV L.L.C., SLING MEDIA, L.L.C.,
`DISH NETWORK L.L.C., DISH TECHNOLOGIES L.L.C.,
`GOOGLE LLC, and COMCAST CABLE COMMUNICATIONS, LLC,
`Petitioners,
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`v.
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`REALTIME ADAPTIVE STREAMING LLC,
`Patent Owner.
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`Case IPR2018-013421
`U.S. Patent No. 8,934,535
`______________________
`
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`DISH PETITIONERS’ NOTICE OF APPEAL TO THE
`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`
`
`1 GOOGLE LLC, who filed a petition in IPR2019-00748, and COMCAST CABLE
`COMMUNICATIONS, LLC, who filed a petition in IPR2019-00760, have been
`joined as petitioners in this proceeding, but are not parties to the appeal.
`
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`SLING TV L.L.C., SLING MEDIA, L.L.C.,
`DISH NETWORK L.L.C., DISH TECHNOLOGIES L.L.C.,
`GOOGLE LLC, and COMCAST CABLE COMMUNICATIONS, LLC,
`Petitioners,
`
`v.
`
`REALTIME ADAPTIVE STREAMING LLC,
`Patent Owner.
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`
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`
`
`
`
`Case IPR2018-013421
`U.S. Patent No. 8,934,535
`______________________
`
`
`DISH PETITIONERS’ NOTICE OF APPEAL TO THE
`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`
`
`1 GOOGLE LLC, who filed a petition in IPR2019-00748, and COMCAST CABLE
`COMMUNICATIONS, LLC, who filed a petition in IPR2019-00760, have been
`joined as petitioners in this proceeding, but are not parties to the appeal.
`
`
`
`Attorney Docket: 45035-0002IP4
`Proceeding: IPR2018-01342
`Pursuant to 37 C.F.R. § 90.2(a), 35 U.S.C. § 142, and Federal Circuit Rule
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`15(a)(1), Appellants Sling TV L.L.C., Sling Media, L.L.C., DISH Network L.L.C.,
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`and DISH Technologies L.L.C. (collectively “DISH”), respectfully give Notice
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`that they hereby appeal to the United States Court of Appeals for the Federal
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`Circuit the Patent Trial and Appeal Board’s (“Board”) Partial Termination
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`Decision in IPR2018-01342 (Paper 45, attached hereto as Ex. A), and from all
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`other underlying orders, decisions, rulings and opinions that are adverse to DISH.
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`The Board entered its Partial Termination Decision on January 17, 2020, and thus,
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`this petition is timely filed within the 63-day period allowed by 37 C.F.R.
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`§ 90.3(a)(1).
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`For the limited purpose of providing the Director with the information
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`requested in 37 C.F.R. § 90.2(a)(3)(ii), issues in DISH’s appeal may include,
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`without limitation, that: (1) the Board’s determination that DISH’s petition was
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`time barred by 35 U.S.C. § 315(b), and any findings the Board made to support this
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`determination; (2) the Board’s application of the legally erroneous Precedential
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`Opinion Panel decision in GoPro, Inc. v. 360Heros, Inc., IPR2018-01754, Paper
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`38 (Aug. 23, 2019); (3) the Board’s retroactive application of precedent in
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`contravention of the PTAB Standard Operating Procedure 2, which permits
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`precedent be applied only to a “subsequent matter,” 5 U.S.C. § 551(4), and 35
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`U.S.C. §§ 2, 316; (4) the Board’s failure to adhere to the law of the case doctrine
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`1
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`
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`Attorney Docket: 45035-0002IP4
`Proceeding: IPR2018-01342
`by terminating this proceeding under 35 U.S.C. § 315(b) after deciding in its
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`Institution Decision that DISH’s petition satisfied § 315(b)’s requirements; (5) the
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`impropriety and unenforceability of the Precedential Opinion Panel’s adjudicatory
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`rulemaking, including in GoPro, Inc. v. 360Heros, Inc., IPR2018-01754, Paper 38
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`(Aug. 23, 2019), under at least the Administrative Procedures Act, 5 U.S.C.
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`§§ 553, 706(2)(A)–(D), 35 U.S.C. § 316, and the Due Process Clause of U.S.
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`Const. amend. V; (6) the Board’s findings that conflict with the evidence of record,
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`are not supported by substantial evidence, and/or are arbitrary, capricious, an abuse
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`of discretion, or not otherwise in accord with law; and (7) any other issues decided
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`adversely to DISH in any orders, decisions, rulings and opinions.
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`Concurrent with this submission, a copy of this Notice of Appeal is being
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`filed with the Board. In addition, a copy of this Notice of Appeal, along with the
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`required docketing fees, are being filed electronically with the Clerk’s Office for
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`the United States Court of Appeals for the Federal Circuit.
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`2
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`Attorney Docket: 45035-0002IP4
`Proceeding: IPR2018-01342
`Respectfully submitted,
`
`
`
`/Adam R. Shartzer/
`Adam R. Shartzer, Reg. No. 57,264
`FISH & RICHARDSON P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: (202) 783-5070
`Fax: (877) 769-7945
`shartzer@fr.com
`
`Counsel for Appellants
`Sling TV L.L.C.,
`Sling Media, L.L.C.,
`DISH Network L.L.C., and
`DISH Technologies L.L.C.
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`Date: March 16, 2020
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`3
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`
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`Attorney Docket: 45035-0002IP4
`Proceeding: IPR2018-01342
`
`
`
`CERTIFICATE OF SERVICE
`
`
`In accordance with 37 CFR § 90.2(a)(1) and § 104.2, I hereby certify that on
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`March 16, 2020, in addition to being filed electronically through the Board’s E2E
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`System, the original version of the foregoing, Petitioners’ Notice of Appeal was
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`filed by hand on the Director of the United States Patent and Trademark Office, at
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`the following address:
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`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`Madison Building East, 10B20
`600 Dulany Street
`Alexandria, VA 22314-5793
`
`
`
`CERTIFICATE OF SERVICE
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` hereby certify that on March 16, 2020, a true and correct copy of the
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` I
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`foregoing, Petitioners’ Notice of Appeal, along with a copy of the Termination
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`Decision, was filed electronically with the Clerk’s Office of the United States
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`Court of Appeals for the Federal Circuit, at the following address:
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`United States Court of Appeals for the Federal Circuit
`717 Madison Place, N.W., Suite 401
`Washington, DC 20005
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`1
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`Attorney Docket: 45035-0002IP4
`Proceeding: IPR2018-01342
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e)(1), the undersigned certifies that on March 16,
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`2020, a complete and entire copy of this Petitioners’ Notice of Appeal was
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`provided via email, to the Patent Owner by serving the email correspondence
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`addresses of record as follows:
`
`Philip X. Wang
`C. Jay Chung
`Kent N. Shum
`Reza Mirzaie
`Neil A. Rubin
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Floor
`Los Angeles, CA 90025
`
`Email: pwang@raklaw.com
`Email: jchung@raklaw.com
`Email: kshum@raklaw.com
`Email: rmirzaie@raklaw.com
`Email: nrubin@raklaw.com
`Email: rak_realtimedata@raklaw.com
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`/Edward G. Faeth/
`Edward G. Faeth
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis MN 55402
`(202) 626-6420
`
`2
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`
`
`Exhibit A
`
`Exhibit A
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`Paper 45
`Entered: January 17, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SLING TV, L.L.C., SLING MEDIA, L.L.C.,
`DISH NETWORK L.L.C., DISH TECHNOLOGIES L.L.C.,
`GOOGLE LLC, and COMCAST CABLE COMMUNICATIONS, LLC,
`Petitioner,
`
`v.
`
`REALTIME ADAPTIVE STREAMING, LLC,
`Patent Owner.
`____________
`
`
`
`
`
`IPR2018-013421
`Patent 8,934,535 B2
`____________
`
`
`
`Before KEVIN W. CHERRY, GARTH D. BAER, and
`NABEEL U. KHAN, Administrative Patent Judges.
`
`CHERRY, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting-in-Part and Denying-in-Part Patent Owner’s Motion to Terminate
`37 C.F.R. § 42.5(a)
`
`
`1 GOOGLE LLC, who filed a petition in IPR2019-00748, and COMCAST
`CABLE COMMUNICATIONS, LLC, who filed a petition in IPR2019-
`00760, have been joined as petitioners in this proceeding.
`
`
`
`IPR2018-01342
`Patent 8,934,535 B2
`
`
`On September 6, 2019, we authorized Patent Owner Realtime
`Adaptive Streaming, LLC (“Realtime Adaptive Streaming” or “Patent
`Owner”) to file a motion to terminate this proceeding in view of the
`Precedential Opinion Panel’s2 recent decision in GoPro, Inc. v. 360Heros,
`Inc., IPR2018-01754, Paper 38 (Aug. 23, 2019) (precedential). See
`Paper 27. Patent Owner filed its Motion to Terminate (Paper 30, “Motion”
`or “Mot.”) on September 16, 2019. Petitioner Sling TV, Sling Media, Dish
`Network, Dish Technologies (collectively, “Sling”) filed an opposition
`(Paper 31, “Sling Opposition” or “Sling Opp.”). Joined parties Google LLC
`and Comcast Communications LLC also filed a joint opposition to the
`Motion (Paper 32, “Joined Opposition” or “Joined Opp.”). Patent Owner
`filed a reply. Paper 33 (“Reply”).
`For the following reasons, we grant-in-part and deny-in-part Patent
`Owner’s Motion. For the reasons explained below, Sling is terminated as a
`petitioner, but the motion is otherwise denied.
`
`I.
`
`INTRODUCTION
`A. BACKGROUND
`On June 6, 2017, Realtime Data LLC (“Realtime Data”) filed and
`subsequently served an amended complaint in the Eastern District of Texas,
`Realtime Data LLC v. EchoStar Corp., No. 6:17-cv-00084-RWS-JDL
`naming Sling as a defendant and alleging infringement of U.S. Patent No.
`8,934,535 B2 (Ex. 1001, “the ’535 Patent”). See Ex. 2001. When Realtime
`Data filed its complaint, however, it did not own the ’535 Patent, because it
`
`
`2 See PTAB Standard Operating Procedure 2 (Revision 10) (Sept. 20, 2018)
`(“SOP2”). We shall refer to the Precedential Opinion Panel as “POP.”
`2
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`IPR2018-01342
`Patent 8,934,535 B2
`
`had previously recorded an assignment to Realtime Adaptive Streaming on
`March 7, 2017. See Ex. 1026. Realtime Data thus voluntarily dismissed the
`complaint without prejudice, and on October 10, 2017, Realtime Adaptive
`Streaming filed a complaint again naming Sling as a defendant and alleging
`infringement of the ’535 Patent. Paper 7, 2. Less than one year later, on
`July 3, 2018 Sling filed its Petition in this case. See Paper 2, 66.
`In its Preliminary Response, Patent Owner argued that we should not
`institute review because the Petition was barred under 35 U.S.C. § 315(b).
`Paper 6. We allowed Sling to file a reply on this issue (Paper 7), and Patent
`Owner to file a Sur-Reply (Paper 8).
`On January 31, 2019, we instituted this proceeding. See Paper 9
`(“Decision on Institution” or “Dec. on Inst.”). We determined that Sling had
`demonstrated a reasonable likelihood of prevailing on at least one
`challenged claim, and that the Petition was not barred under 35 U.S.C.
`§ 315(b) because Realtime Data did not own the ’535 Patent when it served
`a complaint alleging infringement of the ’535 Patent on Sling. See id. at 11–
`14. In particular, we construed 35 U.S.C. § 315(b) based on the statute’s
`heading—“Patent Owner’s Action”—to require that the party serving the
`complaint had to be the owner of the patent. See id.
`On February 27, 2019, Google LLC (“Google”) filed a petition in
`IPR2019-00748 challenging the ’535 Patent. See IPR2019-00748, Paper 1
`(“Google Petition”). Google’s petition was accompanied by a motion for
`joinder to this proceeding. See IPR2019-00748, Paper 3 (“Google Joinder”).
`Patent Owner did not file a preliminary response. On August 13, 2019, we
`instituted inter partes review and joined Google as a party to this
`
`
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`3
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`IPR2018-01342
`Patent 8,934,535 B2
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`proceeding. See Paper 26 (IPR2019-00748 Institution Decision) (“748 Inst.
`Dec.”).
`On February 28, 2019, Comcast Cable Communications, LLC
`(“Comcast”) filed a petition in IPR2019-00760 challenging the ’535 Patent.
`See IPR2019-00760, Paper 1 (“Comcast Petition”). Comcast’s petition was
`accompanied by a motion for joinder to this proceeding. See IPR2019-
`00760, Paper 3 (“Comcast Joinder”). Patent Owner did not file a
`preliminary response. On August 13, 2019, we instituted inter partes review
`and joined Comcast as a party to this proceeding. See Paper 25 (IPR2019-
`00760 Institution Decision) (“760 Inst. Dec.”).
`Google and Comcast were also both sued for infringement of the ’535
`Patent. Google was sued for infringement of the ’535 Patent in Realtime
`Adaptive Streaming, LLC v. Google LLC & YouTube, Case No. 2:18-cv-
`03629 FMO (JCx) (C.D. Cal.) (“Google Action”). Ex. 1101, 1. Google was
`served with the complaint in the Google Action on May 4, 2018. Id. at 2.
`Comcast was sued for infringement of the ’535 Patent in Realtime Adaptive
`Streaming, LLC v. Comcast Cable Communications, LLC & Comcast Corp.,
`Case No. 1:18-CV-01446-PAB-STV (D. Colo.) (“Comcast Action”). See
`Ex. 1103. Comcast was served with the complaint in the Comcast Action on
`July 20, 2018. See id.
`
`B. LEGAL STANDARD
`Section 315(b) provides that “an inter partes review may not be
`instituted if the petition requesting the proceeding is filed more than 1 year
`after the date on which the petitioner, real party in interest or privy of the
`petitioner is served with a complaint alleging infringement of the patent.”
`35 U.S.C. § 315(b) (2018). The Federal Circuit recently held that
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`IPR2018-01342
`Patent 8,934,535 B2
`
`“[35 U.S.C.] § 315(b)’s time bar is implicated once a party receives notice
`through official delivery of a complaint in a civil action, irrespective of
`subsequent events.” Click-to-Call Techs. v. Ingenio, Inc., 899 F.3d 1321,
`1330 (Fed. Cir. 2018) (“Click-to-Call”). According to the Federal Circuit,
`“the plain meaning of the phrase ‘served with a complaint’ is ‘presented
`with a complaint’ or ‘delivered a complaint’ in a manner prescribed by law.”
`Click-to-Call, 899 F.3d at 1330. Moreover, “Congress chose the date of
`service, as opposed to some other event, as the trigger for § 315(b)’s time
`bar because service of a complaint is the seminal notice-conferring event in
`a district court action.” Id. at 1332.
`The Precedential Opinion Panel has determined that “[t]he service of a
`pleading asserting a claim alleging infringement, including where the
`serving party lacks standing to sue or the pleading is otherwise deficient,
`triggers the one-year time period for a petitioner to file a petition under 35
`U.S.C. § 315(b).” GoPro, Paper 38, at 24.
`II. ANALYSIS
`A. SLING
`Patent Owner submits that it is undisputed that Sling was served with
`a complaint more than one year before the filing date of the Petition. Mot. 1.
`Patent Owner further submits that, even though Realtime Data did not own
`the ’535 Patent, GoPro holds that § 315(b) still bars the Petition and this
`proceeding should be dismissed. Id. at 1–6.
`Sling raises several arguments why the case should not be terminated
`with respect to them. Sling Opp. 2–5. Sling argues that SOP2 “commands
`that precedential Board decisions are ‘binding Board authority in subsequent
`matters involving similar facts or issues.’” Id. at 2. Because GoPro issued
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`IPR2018-01342
`Patent 8,934,535 B2
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`after this proceeding was instituted, Sling argues that GoPro is not binding
`under SOP2. Id.
`We disagree with Sling. This Motion to Terminate is just such a
`“subsequent matter,” even if the original Petition is not. But we need not
`resolve the exact contours of SOP2 because we have “inherent authority to
`reconsider [our] decisions,” regardless of whether Patent Owner filed a
`request for rehearing. Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc.,
`839 F.3d 1382, 1386 (Fed. Cir. 2016). Here, although we disagree with
`Sling’s contention that GoPro is not binding, we find GoPro’s reasoning
`persuasive, regardless of whether GoPro is binding in this case under SOP2,
`and apply it to reconsider our Decision to Institute. As GoPro explained,
`Click-to-Call held that § 315(b) is unambiguous, and, given that the statute
`is unambiguous, our resort, in our Decision to Institute, to the statute’s
`heading—“Patent Owner’s Action”—to interpret the statute was a clear legal
`error. See GoPro, Paper 38, at 10. For the reasons explained in detail in
`GoPro, we agree with Patent Owner that our construction of § 315(b) to
`require that the complaint be served by the owner of the patent was
`incorrect. See id. at 9–24.
`Sling further argues that the law-of-the-case doctrine bars our
`reconsideration. Sling Opp. 5. The law-of-the-case doctrine does not apply
`if “one of three ‘exceptional circumstances’ exists: ‘the evidence on a
`subsequent trial was substantially different, controlling authority has since
`made a contrary decision of the law applicable to such issues, or the decision
`was clearly erroneous and would work a manifest injustice.’” Smith Int’l,
`Inc. v. Hughes Tool Co., 759 F.2d 1572, 1576 (Fed. Cir. 1985). In addition
`to being subject to a later contrary decision of the law by a controlling
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`IPR2018-01342
`Patent 8,934,535 B2
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`authority, we determine that, as explained in GoPro, our reliance on the
`statute’s heading was a clear error in view of Click-to-Call’s determination
`that the statute was unambiguous. Moreover, we determine that allowing
`Sling to remain in this proceeding despite the statutory bar would be unjust.
`Thus, even if GoPro were not binding authority, given that our decision was
`clearly erroneous and would work a manifest injustice, we disagree with
`Sling that the law-of-the-case doctrine bars reconsidering our Decision to
`Institute.
`Sling also argues that, to the extent its decisions are binding, the POP
`violates the Administrative Procedures Act. Sling Opp. 6–7. Although we
`disagree, we need not reach the question,3 because, as we explained above,
`regardless of whether GoPro is binding in this particular case, we find its
`reasoning persuasive that we committed legal error in our construction of
`§ 315(b) in light of the Federal Circuit’s decision in Click-to-Call that
`§ 315(b)’s time bar is implicated once a party receives notice through
`official delivery of a complaint in a civil action, irrespective of subsequent
`events. See Click-to-Call, 899 F.3d at 1330. Thus, Sling’s arguments that
`the POP violates the APA are irrelevant in this case.4
`
`
`3 As Sling acknowledges, the issue of whether POP violates the
`Administrative Procedures Act is currently pending before the Federal
`Circuit in Facebook, Inc., v. Windy City Innovs., LLC, No. 18-1400 (Fed.
`Cir. Aug. 7, 2019). See Sling Opp. 6–7. As such, we do not analyze the
`issue in detail.
`4 Sling also argues that POP violates its due process rights under the Fifth
`Amendment to the U.S. Constitution. See Sling Opp. 7. However, this
`argument is not developed in any way, so we do not find it persuasive.
`7
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`IPR2018-01342
`Patent 8,934,535 B2
`
`
`Finally, Sling argues that it would be unfair to apply GoPro to Sling
`in this case. Sling Opp. 8–10.5 We disagree. As we explained, § 315(b)
`bars Sling from seeking inter partes review. We have no discretion to
`maintain Sling as a Petitioner in this proceeding given the clear statutory
`command. Thus, the question of fairness does not persuade us otherwise.
`Having determined that, under the proper construction of the statute,
`the service of a pleading alleging infringement, even where the serving party
`lacks standing to sue or the pleading is otherwise deficient, triggers the one-
`year time period for a petitioner to file a petition under 35 U.S.C. § 315(b),
`and having determined that Sling did not file a petition during this one year
`period, we grant Patent Owner’s motion to terminate with respect to Sling.
`B. GOOGLE AND COMCAST
`Patent Owner also seeks to terminate this proceeding with respect to
`joined Petitioners Google and Comcast. Mot. 6–10; Reply 7–10. Patent
`Owner asserts that “[i]f the Board vacates its earlier institution decision and
`terminates the IPR, the challenges to the ’535 Patent by Google and Comcast
`in this IPR will likewise be terminated,” because Sling’s petition was time-
`barred. Mot. 6–7. We disagree with Patent Owner that the termination of
`Sling requires the termination of Google and Comcast. Mot. 6–7. Google
`and Comcast filed timely petitions for inter partes review (IPR2019-00748
`and 760). We determined that those petitions had a reasonable likelihood of
`prevailing and instituted trial on both petitions. See 748 Inst. Dec.; 760 Inst.
`Dec. Thus, Google and Comcast have valid, independent and instituted
`petitions that must be decided regardless of what happens to Sling.
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`5 The Sling petitioners refer to themselves collectively as “DISH.”
`8
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`IPR2018-01342
`Patent 8,934,535 B2
`
`
`Patent Owner argues against the timeliness of Google and Comcast’s
`petitions by asserting that Sling is a real party in interest for Google’s and
`Comcast’s petitions, and therefore Sling’s § 315(b) bar also applies to
`Google and Comcast. Mot. 7–8; Reply 7–8. In support of this contention,
`Patent Owner notes that Google and Comcast copied Sling’s petition, and
`argues that because only Sling had control over the content of Sling’s
`petition, Sling is therefore a real party in interest for both the Google and
`Comcast petitions. Mot. 7–8.
`“Determining 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 v. RPX Corp., 897 F.3d 1336,
`1351 (Fed. Cir. 2018). Here, the mere fact that Google and Comcast copied
`Sling’s publicly available petition in drafting their own petitions does not
`necessarily make Sling a real party in interest for those petitions. Indeed, the
`“practical considerations” surrounding Google’s and Comcast’s actions
`suggest otherwise. See Application in Internet Time, 897 F.3d at 1351. The
`Board’s joinder practice strongly favors petitions that are substantially
`similar to the petition that the party seeks to join. See Blackberry Corp. v.
`UNILOC 2017 LLC, IPR2019-01283, Paper 10, at 8–9 (Nov. 5, 2019)
`(Institution Decision) (the Board “routinely grants motion for joinder where
`the party seeking joinder introduces identical arguments and the same
`grounds raised in the existing proceeding”). Google’s and Comcast’s
`copying of Sling’s petition is entirely consistent with this routine and normal
`practice at the Board. Moreover, as Google’s and Comcast’s requests for
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`IPR2018-01342
`Patent 8,934,535 B2
`
`joinder make clear, the reason for seeking joinder is so that Google and
`Comcast can maintain the proceeding in the event that Sling, for example,
`settles. See Google Joinder 8; Comcast Joinder 9. Thus, rather than Sling
`being a “clear beneficiary,” the record suggests that the petitions and joinder
`requests were filed to allow Google and Comcast to maintain the proceeding
`even if Sling no longer wished the case to proceed. Patent Owner provides
`no other evidence that there were “preexisting, established relationship[s]”
`regarding these petitions between Sling, Google, and Comcast before we
`instituted these proceedings.
`Patent Owner does point to certain post-institution actions by Sling as
`demonstrating that Sling is a real party in interest to Google’s and Comcast’s
`petitions. See Mot. 8; Reply 7–8. We are not persuaded that these post-
`institution activities demonstrate that Sling is a real party in interest for the
`Google and Comcast petitions. Setting aside whether changes to real party
`in interest status after institution are even relevant, see Power Integrations,
`Inc. v. Semiconductor Components Indus., LLC, 926 F.3d 1306, 1314 & n.8
`(Fed. Cir. 2019), we determine that the actions Patent Owner points to, when
`considered in context, do not suggest that Sling is a real party in interest for
`the Google and Comcast petitions. For example, Patent Owner points to
`Sling’s filing and signing of the reply to the Patent Owner Response and
`appearing at the deposition of Patent Owner’s expert. But we disagree that
`those actions indicate that Sling is a real party in interest to the Google and
`Comcast petitions. Rather, those actions are a product of the restrictions we
`placed on Google and Comcast in granting their motions for joinder. As we
`explained in our decisions instituting their petitions and granting joinder, we
`granted Google’s and Comcast’s requests, in part, based on their agreement
`
`
`
`10
`
`
`
`IPR2018-01342
`Patent 8,934,535 B2
`
`to take an understudy role in this proceeding. 748 Inst. Dec. 5; 760 Inst.
`Dec. 5. We do not agree with Patent Owner that this understudy role
`transforms Sling into a real party in interest for the Google and Comcast
`petitions. Patent Owner’s reliance on the Trial Practice Guide’s statements
`that a party that controls the proceeding constitutes a real party in interest
`(see Mot. 8 (citing PTAB Trial Practice Guide, 77 Fed. Reg. 48,756, at
`48,760)) is not persuasive because, although Sling is undoubtedly a real
`party in interest for its petition, that does not make it a real party in interest
`for the Google and Comcast petitions.6
`Patent Owner contends that under Proppant Express Investments, LLC
`v. Oren Technologies, LLC, IPR2018-00914, Paper 38 (Mar. 13, 2019)
`(precedential), we should exercise our discretion and deny joinder because
`Comcast and Google “should not be permitted to circumvent the time bar by
`way of joinder, transmuting petitions with time-barred petitioners or time-
`barred real parties in interest into timely petitions.” Mot. 9. We disagree
`with Patent Owner’s contention that the Board’s decision in Proppant
`requires termination.7 Mot. 8–9. Contrary to Patent Owner’s implication,
`neither Google nor Comcast was attempting to evade the § 315(b) time bar.
`
`
`6 Patent Owner also points to Sling’s filing of Google and Comcast’s
`Opposition as further evidence of control, but that is merely a result of
`restrictions in the PTAB End2End system (“E2E”) that restricts who can file
`documents on a particular docket. Reply 7–8. We decline to interpret those
`software restrictions as evidence that Sling is a real party in interest for the
`Google and Comcast petitions.
`7 Patent Owner also raises Sling’s new petition—IPR2019-01589—and
`request to join this proceeding filed in that case. See Mot. 9; IPR2019-
`01589, Papers 2, 3. We believe that issue should be addressed if and when
`we decide whether to institute Sling’s petition.
`11
`
`
`
`
`
`IPR2018-01342
`Patent 8,934,535 B2
`
`As we explained above, both Google and Comcast filed their Petitions
`before the one-year deadline. Google and Comcast’s petitions were timely,
`so the concerns of Proppant that parties will evade the time bar are not
`implicated here. Indeed, Google and Comcast acted in a way to conserve the
`Board’s and Patent Owner’s resources by joining this existing proceeding.
`To the extent that Patent Owner is relying on its argument that Sling is a real
`party in interest of Google’s and Comcast’s petitions, we disagree with that
`contention as explained above. Therefore, we are not persuaded that there is
`any effort by Google or Comcast to evade the § 315(b) bar, or that Proppant
`requires termination.
` In its Reply, Patent Owner emphasizes our administrative closure of
`IPR2019-00748 and 760. Reply 9. However, the administrative closures of
`IPR2019-00748 and 760 were merely to simplify record keeping, prevent
`misfiling, and maintain integrity of the record. Our decision was not a
`substantive decision on the merits. We decline to require parties to seek
`rehearing of this type of ministerial action as Patent Owner suggests. See id.
`In sum, we determine that Google’s and Comcast’s petitions are not
`barred and should be allowed to proceed. The only remaining question is
`how to do so. Patent Owner seems to suggest that we must essentially start
`the trial over with new briefing. Reply 9 (“The Board should not wholly
`substitute Google/Comcast for Sling and proceed to a final decision on
`Sling’s petition and timeline.”). We do not agree. The record in IPR2018-
`01342 is fully developed. Patent Owner has had a full opportunity to
`participate, and has done so. Google and Comcast have already agreed to
`rely on the papers already filed in the record by Sling. See Google Joinder
`8; Comcast Joinder 9. Starting the trial over would be a significant waste of
`
`
`
`12
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`
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`IPR2018-01342
`Patent 8,934,535 B2
`
`the parties’ resources when no prejudice exists to either party from using the
`existing record. We could have the papers in IPR2018-01342 refiled in
`IPR2018-00748 and 760, but this also would require an unnecessary
`administrative effort. The fairest and most practical approach is to simply
`use the existing docket in IPR2018-01342 as a consolidated docket for
`IPR2019-0748 and IPR2019-00760. Our rules and statute allow us to
`consolidate co-pending matters. See 35 U.S.C. § 315(d); 37 C.F.R.
`§ 42.122(a). To be clear, we are not reviving or amending Sling’s petition.
`We are merely accepting the limitations of the existing electronic filing
`system and enabling the most efficient and speedy resolution of these cases.
`See 37 C.F.R. § 42.1. This can be accomplished by treating the existing
`docket in IPR2018-01342 as the docket for the consolidated proceedings of
`IPR2019-00748 and 760, which will allow us to expeditiously decide these
`cases.
`This effort for a speedy resolution also addresses Patent Owner’s
`argument regarding discretionary denial. Mot. 10. As Patent Owner notes,
`the trial in the underlying district court case involving Google is scheduled
`to occur April 7, 2020, a month after Patent Owner asserts that the final
`written decision is due. Id. at 9–10. Thus, Patent Owner argues, if Google
`had filed a later standalone petition after Sling’s petition had been filed, we
`might have exercised our discretion to deny institution of such a later
`petition under NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752,
`Paper 8, at 19–20 (Sept. 12, 2018), because it would be inefficient for the
`Board to consider issues that the district court would resolve first. Id. at 10.
`We decline to speculate about what we may have done regarding NHK
`Spring if Google had filed a later standalone petition because that is not the
`
`
`
`13
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`IPR2018-01342
`Patent 8,934,535 B2
`
`situation we are presented with in this case. Here, the matter has been fully
`briefed and an oral hearing has been held. Google and Comcast have agreed
`not to submit independent briefing or argument in this matter. Thus, the
`case can be resolved well before the district court case involving Google, so
`no NHK Spring issue exists.
`
`
`III. CONCLUSION
`In conclusion, we agree with Patent Owner that Sling TV, Sling
`Media, Dish Network, and Dish Technologies should be terminated from
`this proceeding based on GoPro and Click-to-Call. However, we do not
`agree with Patent Owner that Google and Comcast should be terminated.
`We determine that the most administratively simple way to conclude these
`proceedings is to maintain the docket in IPR2018-01342, to have it serve as
`a consolidated docket for IPR2019-00748 and 760, and to decide these
`petitions on the existing record developed in IPR2018-01342. This will
`allow us to resolve these matters expeditiously and without wasting the
`parties’ resources. We shall enter a Final Written Decision in these
`consolidated matters in due course.
`IV. ORDER
`ORDERED that Patent Owner’s Motion to Terminate is granted-in-
`part and denied-in-part;
`FURTHER ORDERED that Petitioners Sling TV, Sling Media, Dish
`Network, Dish Technologies are terminated;
`FURTHER ORDERED that IPR2019-00748 and IPR2019-00760 are
`consolidated; and
`
`
`
`14
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`
`
`IPR2018-01342
`Patent 8,934,535 B2
`
`
`FURTHER ORDERED that the existing docket in IPR2018-01342
`will be treated as the consolidated docket for IPR2019-00748 and IPR2019-
`00760.
`
`
`
`SO ORDERED.
`
`
`
`PETITIONER:
`Ruffin Cordell
`Adam Shartzer
`Brian Livedalen
`FISH & RICHARDSON P.C.
`cordell@fr.com
`shartzer@fr.com
`bvl@fr.com
`
`
`
`PATENT OWNER:
`
`Philip Wang
`Kent Shum
`Neil Rubin
`Reza Mirzaie
`C. Jay Chung
`RUSS AUGUST & KABAT
`pwang@raklaw.com
`kshum@raklaw.com
`nrubin@raklaw.com
`rmirzaie@raklaw.com
`jchung@raklaw.com
`
`
`
`15
`
`
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