Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper No. 17
`Entered: May 7, 2019
`
`
`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.,
`Petitioner,
`v.
`REALTIME ADAPTIVE STREAMING, LLC,
`Patent Owner.
`
`
`
`
`
`Case IPR2018-01342
`Patent 8,934,535 B2
`
`
`
`
`
`
`
`
`
`Before KEVIN W. CHERRY, GARTH D. BAER, and
`NABEEL U. KHAN, Administrative Patent Judges.
`CHERRY, Administrative Patent Judge.
`
`
`
`
`ORDER
`Denying Petitioner’s Request to File Supplement Information;
`Conduct of the Proceeding
`37 C.F.R. §§ 42.5, 42.123(a)
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper No. 17
`Entered: May 7, 2019
`
`
`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.,
`Petitioner,
`v.
`REALTIME ADAPTIVE STREAMING, LLC,
`Patent Owner.
`
`
`
`
`
`Case IPR2018-01342
`Patent 8,934,535 B2
`
`
`
`
`
`
`
`
`
`Before KEVIN W. CHERRY, GARTH D. BAER, and
`NABEEL U. KHAN, Administrative Patent Judges.
`CHERRY, Administrative Patent Judge.
`
`
`
`
`ORDER
`Denying Petitioner’s Request to File Supplement Information;
`Conduct of the Proceeding
`37 C.F.R. §§ 42.5, 42.123(a)
`
`
`
`
`
`
`IPR2018-01342
`Patent 8,934,535 B2
`We instituted inter partes review in this proceeding on January 31,
`2019. Paper 9 (“Inst. Dec.”). On February 27, 2019, Petitioner requested,
`via email, authorization to file a motion to submit supplemental information
`in each of the above-referenced proceedings. That request was discussed
`during the initial conference call on March 11, 2019. On the call, we
`authorized Petitioner to file a motion to submit supplemental information
`pursuant to 37 C.F.R. § 42.123, and Patent Owner to file an opposition to
`that motion. Petitioner thereafter filed its Motion to Submit Supplemental
`Information under 37 C.F.R. § 42.123(a) (“Pet. Mot.,” Paper 13), and Patent
`Owner filed its Opposition to Petitioner’s Motion to Submit Supplemental
`Information (Paper 14).
`
`DISCUSSION
`37 C.F.R. § 42.123(a) states:
`(a) Motion to submit supplemental information. Once a trial has been
`instituted, a party may file a motion to submit supplemental information in
`accordance with the following requirements:
`(1) A request for the authorization to file a motion to submit
`supplemental information is made within one month of the date the trial is
`instituted.
`(2) The supplemental information must be relevant to a claim for
`which the trial has been instituted.
`In determining whether to grant a motion to submit supplemental
`information, we are guided by the principle of ensuring “the efficient
`administration of the Office, and the ability of the Office to timely complete
`[instituted IPR] proceedings.” 35 U.S.C. § 316(b); see Redline Detection,
`LLC v. Star Envirotech, Inc., 811 F.3d 435, 445 (Fed. Cir. 2015) (“Requiring
`
`2
`
`
`
`IPR2018-01342
`Patent 8,934,535 B2
`admission of supplemental information so long as it was timely submitted
`and relevant to the IPR proceeding would cut against this [§ 316(b)]
`mandate and alter the intended purpose of IPR proceedings.”).
`Petitioner complied with subpart (1) of Section 42.123(a) by making
`its request within one month of institution. As to subpart (2) of Section
`42.123(a), Petitioner seeks to submit proposed Exhibit 1029, the
`Supplemental Declaration of Dr. Scott Acton. Paper 13, 1.
`This case is one of several inter partes reviews brought by different
`petitioners against U.S. Patent No. 8,934,535 B2. Inst. Dec. 4. One of these
`related cases is IPR2018-01169. Id. In IPR2018-01169, we preliminarily
`adopted the construction of the petitioner in that case, Netflix, Inc., of the
`term “access profile.” Case IPR2018-01169, Paper 20, 11–12. Patent
`Owner disputes that construction. Case IPR2018-01169, Paper 25, 6–14
`(IPR2018-01169 Patent Owner Response). In this case, Petitioner offered a
`different construction for the term “access profile.” Paper 4, 10–12. We did
`not expressly adopt Petitioner’s construction in this proceeding, and instead
`determined that no construction was necessary at the institution stage. Inst.
`Dec. 10.
`The alleged relevance of the Supplemental Declaration is to address
`our preliminary construction the term “access profile” from IPR2018-01169.
`Pet. Mot. 1–2. We find here that, regardless of whether the Supplemental
`Declaration sought to be submitted is “relevant to a claim” under 37 C.F.R.
`§ 42.123(a)(2), the submission of those documents based on an anticipated
`construction, or to preemptively rebut anticipated arguments, would not
`comport with our obligation to ensure “the efficient administration of the
`
`3
`
`
`
`IPR2018-01342
`Patent 8,934,535 B2
`Office, and the ability of the Office to timely complete [instituted IPR]
`proceedings.” See 35 U.S.C. § 316(b).
`We understand, however, Petitioner’s concern that we might adopt a
`construction that no party has briefed in this proceeding, especially given
`that Patent Owner has stated that it disagrees with our preliminary
`construction of “access profile” from IPR2018-01169. Accordingly, we
`direct Patent Owner to address in its Patent Owner Response in this
`proceeding why it believes our preliminary construction of “access profile”
`from IPR2018-01169 is incorrect.1 Patent Owner should also address why it
`believes that Petitioner, in this proceeding, fails to make its case under our
`preliminary construction of “access profile” from IPR2018-01169.2 Any
`arguments not raised in the Patent Owner Response will be considered
`waived. Petitioner may submit directly responsive rebuttal evidence and
`arguments in support of its reply. Under Board procedures, a petitioner is
`allowed to submit evidence with its reply to rebut an argument raised in the
`patent owner response. See, e.g., Office Patent Trial Practice Guide, August
`2018 Update, 14, 83 Fed. Reg. 39,989 (Aug. 13, 2018) (“a petitioner may
`submit directly responsive rebuttal evidence in support of its reply”).
`
`
`1 We realize that Patent Owner’s Response is currently due May 21, 2019.
`Paper 15, 1. We encourage the parties to work together to allow Patent
`Owner additional time to address these issues. If the parties are unable to
`reach an agreement, Patent Owner should contact the Board and request an
`extension of time.
`2 If Patent Owner believes it needs additional words for its Patent Owner
`Response beyond those provided for in our rules to address our preliminary
`construction of “access profile” and Petitioner’s challenges under that
`construction, Patent Owner should contact the Board and request those
`additional words.
`
`4
`
`
`
`IPR2018-01342
`Patent 8,934,535 B2
`For the reasons given, it is hereby:
`ORDERED that Petitioner’s Motion to Submit Supplemental
`Information under 37 C.F.R. § 42.123(a) is DENIED.
`
`
`
`
`
`
`5
`
`
`
`IPR2018-01342
`Patent 8,934,535 B2
`
`PETITIONER:
`
`Ruffin Cordell
`Adam Shartzer
`Brian Livedalen
`FISH & RICHARDSON P.C.
`cordell@fr.com
`shartzer@fr.com
`bvl@fr.com
`
`
`
`PATENT OWNER:
`
`Neil Rubin
`Kent Shum
`RUSS AUGUST & KABAT
`nrubin@raklaw.com
`kshum@raklaw.com
`
`
`
`
`6
`
`
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