Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper No. 24
`Filed: August 13, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`v.
`REALTIME ADAPTIVE STREAMING LLC,
`Patent Owner.
`
`Case IPR2019-00748
`Patent 8,934,535 B2
`
`
`
`
`
`
`
`
`
`Before KEVIN W. CHERRY, GARTH D. BAER, and
`NABEEL U. KHAN, Administrative Patent Judges.
`CHERRY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`Paper No. 24
`Filed: August 13, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`v.
`REALTIME ADAPTIVE STREAMING LLC,
`Patent Owner.
`
`Case IPR2019-00748
`Patent 8,934,535 B2
`
`
`
`
`
`
`
`
`
`Before KEVIN W. CHERRY, GARTH D. BAER, and
`NABEEL U. KHAN, Administrative Patent Judges.
`CHERRY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`IPR2019-00748
`Patent 8,934,535 B2
`
`I. INTRODUCTION
`A. Background
`Google LLC (“Petitioner”) filed a Petition (Paper 1, “Pet.”) to institute
`an inter partes review of claims 1–6, 8–12, and 14 (the “challenged claims”)
`of U.S. Patent No. 8,934,535 B2 (Exhibit 1001, “the ’535 patent”).
`Concurrently, Petitioner filed a Motion for Joinder seeking to join Petitioner
`as party to Sling TV, L.L.C., et al. v. Realtime Adaptive Streaming, LLC,
`Case IPR2018-01342 (PTAB) (“the DISH IPR”). Paper 3 (“Mot.”).
`Realtime Adaptive Streaming, LLC (“Patent Owner”) has not filed a
`Preliminary Response. 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.” For the reasons described
`below, we institute inter partes review of all the challenged claims, and
`grant Petitioner’s Motion for Joinder.
`
`B. Related Proceedings
`Petitioner informs us that the ʼ535 patent is involved in a number of
`related matters. See Pet. 4–7.
`
`2
`
`
`
`IPR2019-00748
`Patent 8,934,535 B2
`
`C. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1–6, 8–12, and 14 of the ʼ535 patent on
`the following grounds:
`Reference(s)
`Dvir1
`Dvir
`Dvir and Ishii2
`
`Challenged Claim(s)
`1, 2, 9, 10, and 14
`1, 2, 9, 10, and 14
`3–6, 8, 11, and 12
`
`Basis
`§ 102
`§ 103(a)
`§ 103(a)
`
`Pet. 8.
`
`II. DISCUSSION
`A. Institution of Inter Partes Review
`In its Motion for Joinder, Petitioner represents that this Petition and
`the DISH IPR petition are “substantially identical; they contain the same
`grounds (based on the same prior art combinations and supporting evidence)
`against the same claims.” Mot. 3. Our independent review of the Petition
`and the DISH IPR petition confirms Petitioner’s representations. See
`Ex. 1026 (illustrating the differences between the DISH IPR petition and the
`present Petition).
`The DISH IPR petition was filed by Sling TV, L.L.C., Sling Media
`L.L.C., DISH Network L.L.C., and DISH Technologies L.L.C. (collectively
`“DISH”), on July 3, 2018, challenging claims 1–6, 8–12, and 14 of the ’535
`patent on the same grounds raised in this Petition. See DISH IPR,
`Paper 9, 8. Patent Owner filed a preliminary response to the DISH IPR
`
`
`1 Dvir, U.S. Patent No. 6,557,001 B1, (issued Apr. 29, 2003) (filed Nov. 12,
`1999) (Exhibit 1004, “Dvir”).
`2 U.S. Pat. No. 5,675,789 (issued Oct. 7, 1997) (filed Jun. 26, 1996) (Ex.
`1005, “Ishii”).
`
`3
`
`
`
`IPR2019-00748
`Patent 8,934,535 B2
`petition on November 8, 2018. DISH IPR, Paper 6. We instituted inter
`partes review based on the DISH IPR petition on January 31, 2019. DISH
`IPR, Paper 9 (“DISH IPR Institution Decision”). Patent Owner filed a
`Response to the DISH IPR petition on April 1, 2019. DISH IPR, Paper 19.
`Patent Owner has not filed a Preliminary Response to this Petition.
`Accordingly, upon our review of the Petition and for the reasons
`discussed above and in the DISH IPR Institution Decision, we are persuaded
`Petitioner has demonstrated a reasonable likelihood of success in showing
`the unpatentability of the challenged claims of the ’535 patent on the same
`grounds raised and instituted in the DISH IPR. We, therefore, institute inter
`partes review based on the Petition.
`
`B. Motion for Joinder
`Joinder in inter partes reviews is governed by 35 U.S.C. § 315(c),
`which reads:
`If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that inter
`partes review any person who properly files a petition under
`section 311 that the Director, after receiving a preliminary
`response under section 313 or the expiration of the time for filing
`such a response, determines warrants the institution of an inter
`partes review under section 314.
`
`A motion for joinder should (1) set forth reasons why joinder is appropriate;
`(2) identify any new grounds of unpatentability asserted in the petition; (3)
`explain what impact (if any) joinder would have on the trial schedule for the
`existing review; and (4) address specifically how briefing and discovery may
`be simplified. See Kyocera Corp. v. SoftView LLC, Case IPR2013-00004,
`slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).
`
`4
`
`
`
`IPR2019-00748
`Patent 8,934,535 B2
`We instituted the DISH IPR on January 31, 2019. See DISH IPR
`Institution Decision. Petitioner filed this Petition and Motion for Joinder on
`February 27, 2019, i.e., within one month of the institution date of the DISH
`IPR. See Pet. & Mot. Thus, Petitioner timely filed its Motion for Joinder.
`See 37 C.F.R. § 42.122(b).
`As discussed above, Petitioner represents that this Petition and the
`DISH IPR petition are “substantially identical; they contain the same
`grounds (based on the same prior art combinations and supporting evidence)
`against the same claims.” Mot. 1. Petitioner represents that this Petition
`“does not present any new grounds of unpatentability” that are not already
`present in the DISH IPR Petition. Id. at 4. Because this Petition is
`substantively identical to the DISH IPR Petition, Petitioner argues Patent
`Owner will not be required to present any additional responses or arguments.
`Petitioner argues there is no reason to delay or alter the trial schedule already
`present in the DISH IPR and represents that it “explicitly consents to the
`existing trial schedule.” Id. at 6.
`Moreover, Petitioner “agrees to take an ‘understudy’ role.” Id. at 7.
`To that effect, Petitioner states that:
`(a) all filings by Google in the joined proceeding be
`consolidated with the filings of [DISH], unless a filing concerns
`issues solely involving Google;
`(b) Google shall not be permitted to raise any new grounds not
`already instituted by the Board in the [DISH IPR], or introduce
`any argument or discovery not already introduced by [DISH];
`(c) Google shall be bound by any agreement between Patent
`Owner and [DISH] concerning discovery and/or depositions;
`and
`(d) at deposition, Google shall not receive any direct, cross
`examination or redirect time beyond that permitted under either
`
`5
`
`
`
`IPR2019-00748
`Patent 8,934,535 B2
`37 C.F.R. § 42.53 or any agreement between Patent Owner and
`[DISH].
`Mot. 7–8.
`Patent Owner has not responded to Petitioner’s Motion for Joinder.
`Accordingly, on the basis of Petitioner’s representations described above, we
`agree that joining Petitioner to the DISH IPR is appropriate under the
`present circumstances. We, therefore, grant Petitioner’s Motion for Joinder.
`
`III. CONCLUSION
`For the foregoing reasons, we are persuaded that Petitioner has
`demonstrated a reasonable likelihood that it will succeed in showing claims
`1–6, 8–12, and 14 are unpatentable. At this preliminary stage, we have not
`made a final determination with respect to the patentability of the challenged
`claims or any underlying factual and legal issues.
`Given that Petitioner is being joined as a party to the DISH IPR,
`Petitioner is bound by the ultimate determination made in the DISH IPR.
`See 35 U.S.C. §§ 315(e)(1), 325(d); 37 C.F.R. § 42.73(d)(1). Accordingly,
`Petitioner shall not advance any arguments regarding these claims in this
`proceeding; all grounds raised by Petitioner regarding these claims will be
`addressed in the DISH IPR.
`
`IV. ORDER
`For the reasons given, it is:
`ORDERED that an inter partes review is instituted in IPR2019-
`00748; and
`FURTHER ORDERED that the Motion for Joinder with IPR2018-
`01342 is granted, and Petitioner is joined as petitioner in IPR2018-01342;
`
`6
`
`
`
`IPR2019-00748
`Patent 8,934,535 B2
`FURTHER ORDERED that IPR2019-00748 is terminated under 37
`C.F.R. § 42.72, and all further filings shall be made only in IPR2018-01342;
`FURTHER ORDERED that the DISH IPR petitioner and GOOGLE
`LLC shall file each paper due in IPR2018-01342 as consolidated, except for
`a motion that does not involve the other party, subject to the page limits set
`forth in 37 C.F.R. § 42.24;
`FURTHER ORDERED that for each paper due in IPR2018-01342,
`GOOGLE LLC may not file any paper in addition to the consolidated paper
`filed by DISH IPR petitioner to address any points of disagreement with
`DISH IPR Petitioner absent prior authorization from the Board, and that
`GOOGLE LLC must request such authorization prior to filing any such
`additional paper;
`FURTHER ORDERED that DISH IPR petitioner and GOOGLE LLC
`shall collectively designate attorneys to conduct the cross-examination of
`any witness produced by Patent Owner and the redirect of any witness
`produced by DISH IPR petitioner and GOOGLE LLC, within the
`timeframes set forth in 37 C.F.R. § 42.53(c) or agreed to by the parties;
`FURTHER ORDERED that DISH IPR petitioner and GOOGLE LLC
`shall collectively designate attorneys to present at the oral hearing, if
`requested and scheduled, in a consolidated argument;
`FURTHER ORDERED that the case caption in IPR2018-01342 shall
`be changed to reflect joinder of GOOGLE LLC as a petitioner in accordance
`with the attached example; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2018-01342.
`
`
`7
`
`
`
`IPR2019-00748
`Patent 8,934,535 B2
`
`PETITIONER:
`
`Naveen Modi
`Joseph Palys
`Phillip Citroen
`Emily Lee
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`josephpalys@paulhastings.com
`phillipcitroen@paulhastings.com
`emilylee@paulhastings.com
`
`
`PATENT OWNER:
`
`Shami Messinger PLLC
`1000 Wisconsin Ave. NW
`Suite 200
`Washington DC 20007
`
`
`Philip X. Wang
`Kent Shum
`Neil Rubin
`C. Jay Chung
`Reza Mirzaie
`RUSS AUGUST & KABAT
`pwang@raklaw.com
`kshum@raklaw.com
`nrubin@raklaw.com
`jchung@raklaw.com
`rmirzaie@raklaw.com
`
`
`
`
`
`8
`
`
`
`IPR2019-00748
`Patent 8,934,535 B2
`
`
`
`
`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., and
`GOOGLE LLC,
`Petitioner,
`v.
`REALTIME ADAPTIVE STREAMING LLC,
`Patent Owner.
`
`Case IPR2018-013421
`Patent 8,867,610 B2
`
`
`
`
`
`
`
`
`
`Before KEVIN W. CHERRY, GARTH D. BAER, and
`NABEEL U. KHAN, Administrative Patent Judges.
`CHERRY, Administrative Patent Judge.
`
`
`
`1 GOOGLE LLC, who filed a petition in IPR2019-00748 has been joined as
`petitioner in this proceeding.
`
`9
`
`
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