UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`SLING TV, L.L.C., et al.,
`Petitioner
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`v.
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`REALTIME ADAPTIVE STREAMING LLC,
`Patent Owner
`____________
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`Case IPR2018-01342
`Patent 8,934,535
`____________
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`PATENT OWNER’S RESPONSE TO PETITIONER’S MOTION TO
`SUPPLEMENT WITH NEW EXPERT OPINIONS
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`SLING TV, L.L.C., et al.,
`Petitioner
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`v.
`
`REALTIME ADAPTIVE STREAMING LLC,
`Patent Owner
`____________
`
`Case IPR2018-01342
`Patent 8,934,535
`____________
`
`
`PATENT OWNER’S RESPONSE TO PETITIONER’S MOTION TO
`SUPPLEMENT WITH NEW EXPERT OPINIONS
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`Petitioner seeks to add a new expert declaration about a claim construction
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`IPR2018-01342
`U.S. Patent No. 8,934,535
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`that was mentioned in another IPR. Petitioner did not propose this construction and
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`still does not assert it is correct. Nevertheless, Petitioner seeks to present additional
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`opinions “in the alternative.” Because this is not proper supplemental information,
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`and because Petitioner was aware of the construction at least a month before the
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`Petition, this motion to supplement should be denied.
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`I.
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`RELEVANT FACTS
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`On June 4, 2018, Netflix filed a Petition challenging claims 1–14 of the U.S.
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`Patent No. 8,934,535 (“’535 patent”). IPR2018-01169 (“Netflix IPR”), Paper 4 at 1.
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`Netflix proposed that the term “access profile” be construed as “information
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`regarding the number or frequency of reads or writes.” Id. at 10.
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`A month later, on July 3, 2018, DISH filed this Petition challenging claims 1–
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`6, 8–12, and 14 of the ’535 patent. IPR2018-01342, Paper 2 at 1. The Petition noted
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`that the ’535 patent is subject to pending IPRs and referenced the Netflix IPR. Id. at
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`2. The Petition proposed that the term “access profile” be construed as “information
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`that enables a controller to determine a compression routine that is associated with
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`a data type of the data to be compressed.” Id. at 19–20.
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`On January 17, 2019, the Board issued its institution decision in the Netflix
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`IPR. IPR2018-0116, Paper 20. The Board adopted as its preliminary construction
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`1
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`for “access profile” the same construction that Netflix proposed: “information
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`IPR2018-01342
`U.S. Patent No. 8,934,535
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`regarding the number or frequency of reads or writes.” Id. at 11–12.
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`On January 31, 2019, the Board issued its institution decision in this IPR.
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`IPR2018-01342, Paper 9. The Board noted that Petitioner proposed a construction
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`for “access profile” but Patent Owner did not address this construction in the
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`preliminary response. Id. at 10. Thus, the Board did not construe “access profile.”
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`II. ARGUMENT
`A.
`Petitioner seeks to introduce new expert opinions for a
`construction it does not contend is correct.
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`Petitioner seeks to introduce the supplemental expert declaration of Dr. Acton.
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`IPR2018-01342, Paper 13 (“Mot.”) at 6, Proposed Ex. 1029. In the declaration, Dr.
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`Acton provides opinions “in the alternative only” (id.) and adds a new theory under
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`the construction of “access profile” as ““information regarding the number or
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`frequency of reads or writes.” Importantly, neither Petitioner nor Dr. Acton assert
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`that this alternative construction is correct. As Petitioner acknowledges, it “continues
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`to assert that its previously proposed construction of the ‘access profile’ term offered
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`with its petition is the proper BRI construction of access profile.’” Id.
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`Thus, Petitioner seeks to introduce a new theory—not the type of
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`“supplemental information” sometimes allowed by the Board. See Palo Alto
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`Networks, Inc. v. Juniper Networks, Inc., IPR2013-00369, Paper 37 at 3 (allowing
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`exhibits relating to public accessibility because it “does not change the grounds of
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`2
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`unpatentability authorized in this proceeding”). Indeed, Petitioner fails to identify
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`IPR2018-01342
`U.S. Patent No. 8,934,535
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`any new “information” or evidence it seeks to supplement. For example, Petitioner
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`does not seek to introduce the Board’s institution decision in the Netflix IPR. Nor
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`does Dr. Acton mention or rely on that decision. Instead, Dr. Acton merely states he
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`is providing alternative opinions under a different construction that “DISH’s counsel
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`asked [him] to consider.” Proposed Ex. 1029 ¶ 224.
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`B.
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`The new opinions could and should have been included with the
`original Petition
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`An IPR petition is required to include a complete statement of the petitioner’s
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`theories and arguments. See 35 U.S.C. § 312(a)(3) (requiring petitions to identify
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`“with particularity . . . the grounds on which the challenge to each claim is based”);
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`Trial Practice Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) (prohibiting
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`parties from submitting evidence necessary for a prima facie showing of obviousness
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`in reply). As the Federal Circuit held: “It is of the utmost importance that petitioners
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`in the IPR proceedings adhere to the requirement that the initial petition identify with
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`particularity the evidence that supports the grounds for the challenge to each
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`claim.”). Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed.
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`Cir. 2017); see also Pfizer v. Chugai Pharmaceutical, IPR2017-01357, Paper 56 at
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`19 (PTAB Nov. 28, 2018) (rejecting petitioner’s attempt to add a new theory because
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`3
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`rather than “explaining how its original theory was correct,” the new argument
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`IPR2018-01342
`U.S. Patent No. 8,934,535
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`amounted to “a new theory . . . absent from the petition”).
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`Here, there is no reason Petitioner could not have included its new alternative
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`theory with its Petition. Petitioner had full view of the intrinsic evidence of the
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`challenged ’535 patent and could have analyzed any constructions the Board might
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`adopt. Indeed, Petitioner asserts that its motion is justified because the Board might
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`construe access profile “more narrowly” than its proposal. Motion at 6. But if this is
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`so, that possibility existed at the time of the Petition.
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`Further, Petitioner was aware of the alternate construction at least a month
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`before its Petition. This Petition was filed on July 4, 2018. A month earlier, on June
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`4, Netflix filed its petition and proposed the same construction for which Petitioner
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`now seeks to supplement. The Petition even references the Netflix IPR. Thus, with
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`full awareness of Netflix’s proposed construction, Petitioner decided to omit it. It
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`should not be allowed to add an entire declaration on that construction now.
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`C. The Board should deny the motion to supplement.
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`The Board should exercise its discretion to deny Petitioner’s motion to
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`supplement. See Redline Detection, LLC v. Star Envirotech, Inc., IPR2013-00106,
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`Paper 24 at 4 (“Nothing in [37 C.F.R. § 42.123] suggests . . . that such a motion
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`would be granted no matter the circumstance.”). Even where the request is made
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`within one month of institution and the supplemental information is relevant, the
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`4
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`Board has denied motions to supplement. See Laboratoire Francais v. Novo Nordisk
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`IPR2018-01342
`U.S. Patent No. 8,934,535
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`Healthcare AG, IPR2017-00028, Paper 22.
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`The Laboratoire decision is instructive. There, the petitioner sought to submit
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`five additional exhibits related to a French book chapter. Id. at 2. The Board
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`acknowledged that the s request to supplement was timely and that the information
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`appeared to be relevant. But the Board pointed out, though, that § 42.123(a) “does
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`not require [the Board] to accept all supplemental information if timely submitted
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`and relevant.” Id. at 2. Noting its discretion “to grant or deny motions as it sees fit,”
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`the Board denied petitioner’s request to supplement. Id. at 3.
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`The Board gave two reasons for its denial. First, the Board explained that §
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`42.123(a) “is not intended to offer a petitioner a routine avenue for bolstering
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`deficiencies in a petition,” which there were raised in the POPR. The Board
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`explained that the rule is not intended to allow Petitioners to strategically withhold
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`certain evidence and adopt a “wait-and-see” approach. Id. at 4.
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`Second, the Board highlighted that the petitioner had not explained why it
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`could not have presented the supplemental information in its petition. Id. at 4.
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`Despite petitioner’s arguments that it only recently discovered the book chapter, the
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`Board cited evidence that this was not an “obscure reference,” and the Board was
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`“not persuaded that Petitioner could not have discovered [the book chapter] upon a
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`diligent search prior to filing its original Petition.” Id. at 5.
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`5
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`Both rationales apply here. First, allowing Petitioner to supplement would
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`IPR2018-01342
`U.S. Patent No. 8,934,535
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`give them an unfair strategic advantage. It would encourage petitioners to propose a
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`particular construction, and “wait-and-see” what happens with other petitions that
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`propose different constructions. It could, for example, could encourage petitioners
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`to propose overly broad constructions knowing that they could supplement the
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`record based on allegedly narrower constructions depending on what happens in
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`other IPRs. All the while, patent owners are deprived of full opportunity to respond
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`in the preliminary response.
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`Allowing petitioners to supplement in these circumstances would also
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`increase the prejudice to patent owners based on serial or “follow-on” petitions. The
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`Board has repeatedly recognized these concerns. See General Plastic Industrial Co.,
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`Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 17 (“Our intent in
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`formulating the [General Plastics] factors was to take undue inequities and
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`prejudices to Patent Owner into account. . . . Multiple, staggered petitions
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`challenging the same patent and same claims raise the potential for abuse.”).
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`Second, just like in Laboratoire, the Petitioner does not (and cannot) explain
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`why it could not have presented the purported supplemental information in its
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`Petition. See Laboratoire at 4. The facts here are even more compelling than
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`Laboratoire. There, the Board was not persuaded that petitioner could not have
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`discovered the book chapter based upon a diligent search. Here, Petitioner was aware
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`6
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`of Netflix’s proposed construction for “access profile” a month before its Petition
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`IPR2018-01342
`U.S. Patent No. 8,934,535
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`and decided not to include it.
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`D. The motion should be denied under § 42.123(b).
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`Finally, Petitioner alleges that its request is made under 37 C.F.R. § 42.123(a)
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`and that it has shown why this motion should be granted under this rule. But there is
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`unclear whether this motion should be decided under § 42.123(a).
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`Before contacting the Board, Petitioner did not meet and confer with Patent
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`Owner, nor allow reasonable opportunity to meet and confer. See Email from Adam
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`Shartzer to Board (February 27, 2019 at 3 pm) (“We informed Patent Owner’s
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`counsel yesterday that we would submit this request to the Board today.”). Petitioner
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`never previously indicated what “information” it intended to supplement. It was not
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`until more than a week later that Petitioner informed Patent Owner that it intended
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`to submit a new expert declaration on an alternate construction.
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`If Petitioner’s February 27 email is improper, then its request for authorization
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`was not made within one month of trial institution. Thus, § 42.123(b) applies, which
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`requires Petitioner to “show why the supplemental information reasonably could not
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`have been obtained earlier, and that consideration of the supplemental information
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`would be in the interests-of-justice.” Petitioner does not make this showing.
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`7
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`Dated: April 1, 2019
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`IPR2018-01342
`U.S. Patent No. 8,934,535
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`Respectfully submitted,
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`/s/ Neil A. Rubin
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`Neil A. Rubin (Reg. No. 67,030)
`Kent Shum (Reg. No. No. 61,117)
`Philip X. Wang (Reg. No. 74,621)
`Reza Mirzaie (Reg. No. 69,138)
`C. Jay Chung (Reg. No. 71,007)
`Attorneys for Patent Owner
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`Fax: (310) 826-6991
`nrubin@raklaw.com
`kshum@raklaw.com
`pwang@raklaw.com
`rmirzaie@raklaw.com
`jchung@raklaw.com
`rak_realtimedata@raklaw.com
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`8
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`IPR2018-01342
`U.S. Patent No. 8,934,535
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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 April
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`1, 2019, by filing this document through the Patent Review Processing System as
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`well as delivering a copy via electronic mail upon the following attorneys of record
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`for the Petitioner:
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`Ruffin B. Cordell
`Adam R. Shartzer
`Brian J. Livedalen
`IPR45035-0002IP3@fr.com
`PTABInbound@fr.com
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`Dated: April 1, 2019
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`/s/ Neil A. Rubin
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`Neil A. Rubin (Reg. No. 67,030)
`Kent Shum (Reg. No. 61,117)
`Philip X. Wang (Reg. No. 74,621)
`Reza Mirzaie (Reg. No. 69,138)
`C. Jay Chung (Reg. No. 71,007)
`Attorneys for Patent Owner
`
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`Fax: (310) 826-6991
`nrubin@raklaw.com
`kshum@raklaw.com
`pwang@raklaw.com
`rmirzaie@raklaw.com
`jchung@raklaw.com
`rak_realtimedata@raklaw.com
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