UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SLING TV L.L.C., SLING MEDIA, L.L.C.,
`DISH NETWORK L.L.C., DISH TECHNOLOGIES L.L.C.,
`Petitioners
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`v.
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`REALTIME ADAPTIVE STREAMING LLC,
`Patent Owner
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`Case IPR2018-01342
`U.S. Patent No. 8,934,535
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`PETITIONERS’ OPPOSITION TO PATENT OWNER’S
`MOTION TO TERMINATE THE PROCEEDING
`UNDER 35 U.S.C. § 315(b)
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`Attorney Docket: 45035-0002IP4
`IPR2018-01342
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`TABLE OF CONTENTS
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`I. 
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`GoPro Should Not Be Applied To this Already-Instituted Proceeding .......... 2 
`A.  GoPro Is Not Binding Under Standard Operating Procedure #2 ............. 2 
`B.  Law of the Case Prevents Altering the Board’s Time Bar Ruling ........... 5 
`C.  The POP’s Adjudicatory Rulemaking Violates the APA ......................... 6 
`D.  Applying GoPro Would Be Unfair To DISH ........................................... 7 
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`II. 
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`35 U.S.C. § 315(b) Does Not Bar DISH’s Petition ......................................... 8 
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`III.  CONCLUSION .............................................................................................. 10 
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`Attorney Docket: 45035-0002IP4
`IPR2018-01342
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`TABLE OF AUTHORITIES
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`PAGES
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`CASES
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`ABM Onsite Servs.-W., Inc. v. NLRB, 849 F.3d 1137 (D.C. Cir. 2017) .................... 7
`Aqua Prod. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) ............................................... 6
`Bowen v. Georgetown Univ. Hosp., 488 U.S. 204 (1988) ......................................... 3
`Encino Motorcars LLC v. Navarro, 136 S. Ct. 2117 (2016) ..................................... 7
`Facebook, Inc., v. Windy City Innovs., LLC, No. 18-1400
`(Fed. Cir. Aug. 7, 2019) ............................................................................. 7, 9, 10
`General Plastic Indus. Co., v. Canon Kabushiki Kaisha, IPR2016-01357 ........... 2, 3
`GoPro, Inc., v. 360Heros, Inc., IPR2018-01754 ..............................................passim
`GTNX, Inc. v. INTTRA, Inc., CBM2014-00072 ..................................................... 3, 4
`Henderson v. Shinseki, 562 U.S. 428 (2011) ............................................................. 4
`Hoechst-Roussel v. Lehman, 109 F.3d 756 (Fed. Cir. 1997) ................................... 10
`Intergraph Corp. v. Intel Corp., 253 F.3d 695 (Fed. Cir. 2001) ............................... 5
`Lexecon Inc. v. Milberg Weis Bershad Hynes & Lerach, 523 U.S. 26 (1998) .......... 9
`Lopez v. Davis, 531 U.S. 230 (2001) ......................................................................... 5
`Netflix, Inc. v. Realtime Adaptive Streaming, LLC, IPR2018-01169 ........................ 8
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) ........................................... 9
`Regions Hosp. v. Shalala, 522 U.S. 448 (1998) ...................................................... 10
`Sebelius v. Auburn, 568 U.S. 145 (2013) ................................................................... 4
`South-Tek Sys. v. Eng’d Corrosion Sols., No. IPR2016-00136 ................................. 5
`Thryv, Inc. v. Click-to-Call, No. 18-916 (U.S.) ......................................................... 4
`US v. Mead Corp., 533 U.S. 218 (2001) .................................................................... 7
`Yanko v. US, 869 F.3d 1328 (Fed. Cir. 2017) ............................................................ 9
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`PAGES
`STATUTES/REGULATIONS
`5 U.S.C. § 551 ............................................................................................................ 3
`5 U.S.C. § 553 ............................................................................................................ 6
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`Attorney Docket: 45035-0002IP4
`IPR2018-01342
`PAGES
`STATUTES/REGULATIONS
`5 U.S.C. § 706 ............................................................................................................ 7
`35 U.S.C. §§ 2 ............................................................................................................ 3
`35 U.S.C. § 271 ................................................................................................ 6, 9, 10
`35 U.S.C. § 311 ........................................................................................................ 10
`35 U.S.C. § 315 .................................................................................... 1, 4, 5, 8, 9, 10
`35 U.S.C. § 316 ...................................................................................................... 3, 6
`35 U.S.C. § 325 .......................................................................................................... 4
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`Attorney Docket: 45035-0002IP4
`IPR2018-01342
`The Board should decline Realtime’s request to undo institution based on
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`Realtime’s § 315(b) time bar argument1—one that the Board has already
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`rejected—for at least the following reasons:
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`First, the POP decision in GoPro, Inc., v. 360Heros, Inc., IPR2018-01754,
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`Paper 38 (Aug. 23, 2019), is of no moment here. Standard Operating Procedure
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`(SOP) #2 mandates that precedential decisions, such as GoPro, are binding Board
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`authority only in subsequent matters. Since GoPro issued after this IPR instituted,
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`it is not binding authority. Moreover, GoPro did not deprive the Board of
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`jurisdiction, as § 315(b) is a nonjurisdictional claim-processing rule. The Board
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`implicitly agreed in GoPro, as it acknowledged that the time bar may be tolled in
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`certain instances. Second, applying GoPro retroactively here would run afoul of
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`the law of the case doctrine. The Board already has considered and ruled that
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`DISH timely filed its petition, and no exceptions apply because there are no new
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`facts and GoPro is not a change in the law applicable to this prior matter. Third,
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`applying GoPro to this case would violate the APA. The IPR statute demands
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`rulemaking through “regulations,” not ad hoc adjudication like the POP process.
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`Finally, fairness dictates that the Board proceed to a final written decision.
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`DISH timely filed its petition in compliance with Board precedent at the time of
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`filing. Retroactive application of an earlier filing deadline would be profoundly
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`1 The facts underlying the time-bar dispute are found in Paper 7 at 2-3.
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`1
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`Attorney Docket: 45035-0002IP4
`IPR2018-01342
`unfair, and violate fundamental notions of due process. In addition, Realtime
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`should not get a windfall from GoPro as Realtime did not seek rehearing when the
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`Board previously ruled that DISH’s petition was timely, and, in any event,
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`Realtime can seek redress on appeal. Termination, however, would severely
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`prejudice DISH as it may compromise DISH’s ability to obtain appellate review.
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`I. GoPro Should Not Be Applied To this Already-Instituted Proceeding
`A. GoPro Is Not Binding Under Standard Operating Procedure #2
`GoPro cannot apply to this proceeding. SOP #2 commands that precedential
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`Board decisions are “binding Board authority in subsequent matters involving
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`similar facts or issues.” SOP #2 III.D (rev. 10).2 Relying on then-prevailing
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`precedent, DISH timely filed its petition on July 3, 2018, and this IPR instituted on
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`January 31, 2019. The POP decision in GoPro did not issue until almost seven
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`months later, on August 23, 2019. Thus, the petition here was filed and instituted
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`well before the GoPro POP decision issued. This proceeding is not subsequent to
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`GoPro and, thus, GoPro is not binding authority.
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`The Board consistently has applied the “subsequent matters” proviso to
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`avoid ensnaring cases like this one. For example, General Plastic Indus. Co., v.
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`Canon Kabushiki Kaisha, IPR2016-01357 (Sept. 6, 2017), is a precedential
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`decision that provides a framework for determining institution of multiple petitions
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`2 Unless otherwise noted, all emphasis added.
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`2
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`Attorney Docket: 45035-0002IP4
`IPR2018-01342
`for a single patent. In no case did the Board revisit institution in ongoing
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`proceedings to consider General Plastic after it became precedential.3 Nor should
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`it have. Ignoring SOP #2 would wreak havoc on IPR administration and frustrate
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`the Board’s statutory obligation to issue final written decisions within one year of
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`institution by creating an avenue for parties to constantly revisit institution for
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`pending IPRs. 35 U.S.C. § 316(a)(11). SOP #2—which permits precedential
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`decisions to guide future matters without impeding prior ones—must be followed.4
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`The GTNX decision cited by Realtime does not change the outcome. GTNX
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`followed the SecureBuy decision, which was deemed precedential before GTNX
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`instituted, making GTNX a “subsequent matter.” See GTNX, Inc. v. INTTRA, Inc.,
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`CBM2014-00072, Paper 20 at 2 & n.3 (Dec. 10, 2014). The GTNX Board found
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`SecureBuy bound it per SOP #2. Id. at 4. Further, the GTNX Board revisited
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`institution based on an argument not raised before institution, making the
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`termination motion the Board’s first chance to address the argument. Here, the
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`3 SOP #2 rev. 9, in force for Gen. Plastics, had the “subsequent matters” proviso.
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`4 The “subsequent matters” proviso of SOP #2 is constitutionally required, as
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`“statutory grants of rulemaking authority will not be understood to encompass the
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`power to promulgate retroactive rules unless that power is conveyed by express
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`terms.” Bowen v. Georgetown Univ. Hosp., 488 U.S. 204, 208 (1988); 5 U.S.C.
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`§ 551(4). Congress has not codified such authority here. 35 U.S.C. §§ 2, 316.
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`3
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`Attorney Docket: 45035-0002IP4
`IPR2018-01342
`Board already considered and rejected Realtime’s § 315(b) time bar argument.
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`Finally, GTNX does not instruct that the Board lacks jurisdictional authority
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`to proceed, as Realtime contends. The GTNX decision rested on SecureBuy being
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`binding authority under SOP #2; its discussion of the Board’s jurisdiction under
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`§ 325 was merely in the context of whether a party could waive § 325, explaining
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`it could not because § 325 is jurisdictional. Id. The conclusion that § 315(b) is not
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`jurisdictional is evident from GoPro itself, where the Board held that it may “toll”
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`the § 315(b) time bar in certain instances—an option that would not be available if
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`the time bar were jurisdictional. GoPro, Paper 38 at 23 n.7. Indeed, the Supreme
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`Court has “repeatedly held that filing deadlines ordinarily are not jurisdictional”
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`but instead are “quintessential claim-processing rules.” Sebelius v. Auburn, 568
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`U.S. 145, 154 (2013). “[E]ven if important and mandatory,” claim-processing
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`rules to “take certain procedural steps at certain specified times” do not receive
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`“the jurisdictional brand” because they do not “govern a court’s adjudicatory
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`capacity.” Henderson v. Shinseki, 562 U.S. 428, 435 (2011).5
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`Courts must “inquire [as to] whether Congress has clearly stated that [a] rule
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`5 The precept that § 315(b) is jurisdictional is under Supreme Court review. See
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`Br. for Pet. at 23-24, Thryv, Inc. v. Click-to-Call, No. 18-916 (U.S. Sept. 3, 2019)
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`(“§ 315(b)’s time restraint does not limit the Board’s authority to invalidate a
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`challenged patent claim.”).
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`IPR2018-01342
`is jurisdictional” because “absent such a clear statement . . . the restriction [is]
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`nonjurisdictional.” Id. at 153. No clear statement exists here as § 315(b)’s time
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`bar uses the permissive “may,” whereas the same subsection elsewhere uses the
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`authoritative “shall.” Compare 35 U.S.C. § 315(b) (“An [IPR] may not be
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`instituted [if one year bar triggers]”), with id. (“limitation . . . shall not apply to a
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`request for joinder”); see Lopez v. Davis, 531 U.S. 230, 241 (2001) (contrasting
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`“Congress use of the permissive ‘may’ . . . with use of a mandatory ‘shall’ in the
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`very same section”). Thus, the § 315(b) time bar is not jurisdictional.
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`B.
`Law of the Case Prevents Altering the Board’s Time Bar Ruling
`The law of the case doctrine “generally bars the retrial of issues that were
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`previously resolved.” Intergraph Corp. v. Intel Corp., 253 F.3d 695, 697 (Fed.
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`Cir. 2001). The doctrine “applies in administrative proceedings, including at the
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`Board” and should only be disregarded when a party establishes “new material
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`evidence, a change in law, or manifest injustice.” South-Tek Sys. v. Eng’d
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`Corrosion Sols., No. IPR2016-00136, Paper 60 at 5 (Dec. 31, 2018). Those
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`exceptions do not apply here. There is no conclusive change in law to overcome
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`the law of the case doctrine. SOP #2 expressly instructs that the law has not
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`changed here, and the Federal Circuit has not weighed in on the issue. With the
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`law unsettled in the courts, the most prudent course is for the Board to reach a final
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`written decision, having already found DISH likely to prevail and not time-barred.
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`IPR2018-01342
`C. The POP’s Adjudicatory Rulemaking Violates the APA
`The Board should also not apply the GoPro decision here because the POP’s
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`adjudicatory rulemaking is defective under the APA. The IPR statute provides that
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`“[t]he Director shall prescribe regulations,” for “establishing and governing inter
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`partes review under this chapter and the relationship of such review to other
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`proceedings under this title,” such as district court actions under § 271. 35 U.S.C.
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`§ 316(a)(4). Congress granted this rulemaking authority to “the Director,” not the
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`POP. The statute also demands rulemaking through “regulations,” not ad hoc
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`adjudication like the POP process. See Aqua Prod. v. Matal, 872 F.3d 1290, 1329
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`(Fed. Cir. 2017) (Moore, J., concurring) (“Congress only delegated the Director the
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`authority to [rulemake through § 316] through regulations.” (emphasis in
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`original)). This defect is meaningful:
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`[N]either the authority to designate opinions as precedential nor the
`process for doing so is to be found in the statute; rather this agency
`grant of power to itself is articulated only in the agency’s own Standard
`Operating Procedures. Regardless of whether precedential Board
`decisions constitute formal agency adjudication, they are not subject
`to the same requirements as notice and comment rulemaking through
`regulation.
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`through regulation
`is different from
`rulemaking through adjudication.
`Id. at 1331–32; see also 5 U.S.C. § 553. Moreover, the Federal Circuit has
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`suggested that POP decisions “will never qualify under the Administrative
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`Attorney Docket: 45035-0002IP4
`IPR2018-01342
`Procedures Act as a proper [notice and comment rulemaking].” See Tr. at 4:10-
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`6:07, Facebook, Inc., v. Windy City Innovs., LLC, No. 18-1400 (Fed. Cir. Aug. 7,
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`2019), available at http://oralarguments.cafc.uscourts.gov/default.aspx?fl=2018-
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`1400.mp3 (Plager, J.). Because POP decisions are “procedurally defective,” they
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`are unenforceable as rules and need not be followed. Encino Motorcars LLC v.
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`Navarro, 136 S. Ct. 2117, 2125 (2016); US v. Mead Corp., 533 U.S. 218 (2001).
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`The facts underlying Realtime’s § 315(b) challenge have not changed since
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`institution. With no conclusive change in law or facts, ignoring SOP #2 to reverse
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`course and apply the time bar would be arbitrary, capricious, an abuse of
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`discretion, and not in accord with law. ABM Onsite Servs.-W., Inc. v. NLRB, 849
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`F.3d 1137, 1146 (D.C. Cir. 2017); 5 U.S.C. § 706(2)(A). It also violates due
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`process, id. § 706(2)(B), U.S. Const. amend. V, and exceeds the Board’s authority
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`without observing procedures required by law, 5 U.S.C. § 706(2)(C)-(D).
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`D. Applying GoPro Would Be Unfair To DISH
`Fairness dictates that the Board proceed to a final written decision. DISH
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`timely filed its petition in compliance with the rules as they existed at the time of
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`filing. Retroactive application of an earlier filing deadline would be profoundly
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`unfair, and DISH would face undue prejudice if the Board abandons law of the
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`case and terminates this proceeding. DISH relied on the Board’s institution in
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`foregoing other opportunities. Had the Board denied institution, DISH could have
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`7
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`Attorney Docket: 45035-0002IP4
`IPR2018-01342
`sought joinder in Netflix, Inc. v. Realtime Adaptive Streaming, LLC, IPR2018-
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`01169. DISH also could have sought POP review on its own rather than be
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`saddled with a subsequent POP decision from a case in which DISH is not a party.
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`In addition, if the Board proceeds to final written decision, Realtime can
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`seek redress on appeal. Termination, however, would prejudice DISH as it may
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`compromise DISH’s ability to obtain appellate review. If the Board terminates
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`DISH under GoPro’s reasoning and the Federal Circuit ultimately vacates or
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`reverses GoPro, DISH may have no appellate recourse to rectify an improper
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`termination applying GoPro’s analysis. Proceeding to final written decision
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`preserves appeal rights for all parties. Realtime will not suffer injustice if this
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`proceeding continues because it did not seek rehearing or POP review of the
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`institution decision. And Realtime will not incur significant costs in doing so as
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`briefing is nearly complete (only Realtime’s sur-reply remains).
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`II.
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`35 U.S.C. § 315(b) Does Not Bar DISH’s Petition
`The Board correctly held that DISH’s petition is timely under § 315(b) and
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`that a complaint served by a non-patent owner did not trigger the time bar. Paper 9
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`at 11-14. As the Board determined, § 315(b) is ambiguous as to who must file a
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`complaint triggering the time bar. The Board properly analyzed the full operative
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`clause: “served with a complaint alleging infringement of the patent.” Id. at 13.
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`The POP in GoPro found the statute unambiguous, but erred in focusing on the
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`IPR2018-01342
`narrower phrase “served with a complaint” divorced from “alleging infringement
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`of the patent.” GoPro, Paper 38 at 9-12, 21, 23-24; see Lexecon Inc. v. Milberg
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`Weis Bershad Hynes & Lerach, 523 U.S. 26, 36 (1998) (“[A] statute is to be
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`considered in all its parts when construing any one of them.”).
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`The phrase “alleging infringement of the patent” is ambiguous, as it does not
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`indicate whose patent is at issue and in isolation makes no sense.6 The Board
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`correctly resolved this ambiguity with § 315(b)’s heading—“Patent Owner’s
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`Action”—which demands that the patent owner allege infringement. Paper 9 at 13
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`(citing Yanko v. US, 869 F.3d 1328, 1333-34 (Fed. Cir. 2017) (“[S]ection headings
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`are tools available for the resolution of doubt about the meaning of a statute.”)).
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`As the Board recognized, the legislative history also informs that the time bar
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`triggers “after the patent owner has filed an action for infringement.” Id. (quoting
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`157 Cong. Rec. S5429 (daily ed. Sept. 8, 2011) (statement of Sen. Kyl)).
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`The Patent Act’s statutory framework also informs the meaning of “alleging
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`6 Only claims—i.e., the “patented invention” of § 271(a)—can be infringed, not
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`patents. See Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en
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`banc) (“[C]laims of a patent define the invention . . . .”); Tr. at 28:33-28:44,
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`Facebook, No. 18-1400 (Prost, C.J., “Maybe you could make an argument that
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`infringement of the patent can’t possibly mean infringement of the patent because
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`that doesn’t make any sense, so it must mean infringement of the claims.”).
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`9
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`Attorney Docket: 45035-0002IP4
`IPR2018-01342
`infringement of the patent.” See Regions Hosp. v. Shalala, 522 U.S. 448, 460 n.5
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`(1998) (“In expounding a statute, we must . . . look to the provisions of the whole
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`law, and to its object and policy.”). 35 U.S.C. § 271(a), entitled “Infringement of
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`patent,” clarifies “alleging infringement” means the “make[], use[], offer[] to sell,
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`or [sale of] any patented invention” “without authorization.” Authorization must
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`come from a patent owner. Thus, a complaint alleging infringement must come
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`from a patent owner or authorized representative (i.e., exclusive licensee). See
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`Hoechst-Roussel v. Lehman, 109 F.3d 756, 759 (Fed. Cir. 1997) (explaining § 271
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`requires activity undertaken “without the authority of the patent owner.”).
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`The AIA also confirms patent owners must allege infringement. Antecedent
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`basis for “the patent” comes from § 311, which states the “patent” is the patent
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`owner’s patent. See 35 U.S.C. § 311 (“a person who is not the owner of a patent
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`may file … a petition to institute an [IPR] of the patent.”). Section 311 shows that
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`the IPR framework delineates between those who can file IPRs (“a person who is
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`not the owner of a patent”) and those who cannot (patent owners), further proving
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`that only patent owners may allege infringement of the patent under § 315(b).7
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`III. CONCLUSION
`For these reasons, DISH requests the Board deny Realtime’s Motion.
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`7 The Federal Circuit suggested § 315(b) “mean[s] infringement of the claims.” Tr.
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`at 27:50-29:02, Facebook, No. 18-1400. Realtime cannot show time bars by claim.
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`10
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`Attorney Docket: 45035-0002IP4
`IPR2018-01342
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`Respectfully submitted,
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` /Adam R. Shartzer/
`Adam R. Shartzer, Reg. No. 57,264
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`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
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`Attorney for Petitioners
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`Dated: September 26, 2019
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`Attorney Docket: 45035-0002IP4
`IPR2018-01342
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e)(4), the undersigned certifies that on September
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`26, 2019, a complete and entire copy of this Petitioners’ Opposition to Patent
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`Owner’s Motion to Terminate the Proceeding under 35 U.S.C. § 315(b) provided
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`via email to the Patent Owner by serving the correspondence email addresses of
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`record as follows:
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`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
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`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/
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`Edward G. Faeth
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(202) 626-6420
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`1
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