`
`
`
`
`
`
`
`
`
`
`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.,
`Petitioners
`
`v.
`
`REALTIME ADAPTIVE STREAMING LLC
`Patent Owner
`
`_________________
`
`Case IPR2018-013421
`Patent 8,934,535
`_________________
`
`JOINED PETITIONERS GOOGLE LLC AND COMCAST CABLE
`COMMUNICATIONS, LLC’S JOINT OPPOSITION TO
`PATENT OWNER’S MOTION TO TERMINATE
`
`
`
`
`
`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
`
`
`TABLE OF CONTENTS
`
`2.
`
`
`I.
`INTRODUCTION ...............................................................................1
`II. ARGUMENTS ....................................................................................1
`A. Google and Comcast Were Not Time Barred ..................................1
`1.
`Google’s and Comcast’s Petitions Were Granted and
`Their Respective Proceedings Were Duly Instituted ...............1
`Google and Comcast Were Entitled to Rely on the
`Propriety of the Board’s Institution Decision in DISH’s
`IPR2018-01342 .................................................................3
`B. DISH’s Alleged Untimeliness Should Not Be Attributed to
`Google and Comcast ...................................................................4
`1.
`Realtime’s Real Party-in-Interest Argument Lacks Merit ........4
`2.
`Click-to-Call Does Not Support Equal Treatment of
`Google and Comcast with DISH ..........................................5
`The Board Has Authority to Maintain This Proceeding ....................6
`The Board Has Authority to Allow Google and Comcast to
`Proceed to Trial ..........................................................................8
`III. CONCLUSION ................................................................................. 10
`
`
`C.
`D.
`
`
`
`
`
`i
`
`
`
`IPR2018-01342
`Patent 8,934,535
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Federal Cases
`BioDelivery Sciences International, Inc. v. Aquestive Therapeutics,
`Inc.,
`935 F.3d 1362, 2019 WL 4062525 (Fed. Cir. Aug. 29, 2019) ......................... 8
`Civil Aeronautics Bd. v. Delta Air Lines, Inc.,
`367 U.S. 316 (1961) ................................................................................. 4
`Click-to-Call Technologies, LP v. Ingenio, Inc.,
`899 F.3d 1321 (Fed. Cir. 2018) .............................................................. 5, 6
`Dell Inc. v. Alacritech, Inc.,
`IPR2018-01307, Paper 8 (Jan. 11, 2019) ..................................................... 4
`Facebook, Inc. v. Windy City Innovations LLC,
`IPR2016-01155, Paper 32 (June 1, 2017)..................................................... 7
`FCC v. Fox Television Stations,
`556 U.S. 502 (2009) ............................................................................... 10
`GoPro, Inc. v. 360Heros, Inc.,
`IPR2018-01754, Paper 38 (Aug. 23, 2019) .................................................. 1
`In re Intex Recreation Corp.,
`Order No. 18-131, 2018 WL 3089215 (Fed. Cir. June 13, 2018) ..................... 9
`Kyocera Corp. v. SoftView LLC,
`IPR2013-00004, Paper 15 (Apr. 24, 2013) ................................................... 3
`Microsoft Corp. v. UNILOC 2017 LLC,
`IPR2019-00744, Paper 11 (Sept. 4, 2019) ................................................ 3, 4
`Power Integrations, Inc. v. Semiconductor Components Industries,
`LLC,
`926 F.3d 1306 (Fed. Cir. 2019) .................................................................. 5
`Proppant Express Investments, LLC v. Oren Technologies, LLC,
`IPR2018-00914, Paper 38 (Mar. 13, 2019)............................................... 2, 6
`
`ii
`
`
`
`IPR2018-01342
`Patent 8,934,535
`
`Rodale Press, Inc. v. FTC,
`407 F.2d 1252 (D.C. Cir. 1968) .................................................................. 4
`WesternGeco LLC v. ION Geophysical Corp.,
`889 F.3d 1308 (Fed. Cir. 2018) .................................................................. 5
`Federal Statutes
`35 U.S.C. § 314(a) ........................................................................................ 4
`35 U.S.C. § 315(b) ............................................................................... passim
`35 U.S.C. § 315(c) ........................................................................................ 9
`35 U.S.C. § 315(d) .................................................................................... 3, 9
`35 U.S.C. § 317(a) ........................................................................................ 7
`Rules
`Fed. R. Civ. Proc. 21 ..................................................................................... 9
`
`iii
`
`
`
`IPR2018-01342
`Patent 8,934,535
`
`
`1101
`
`1102
`
`1103
`
`
`
`EXHIBITS
`Proof of Service re Summons and Complaint for Google LLC,
`Realtime Adaptive Streaming LLC, v. Google LLC, D.I. 18, Case No.
`18-cv-03629 FMO (JCx) (C.D. Cal.)
`Proof of Service re Summons and Complaint for YouTube, LLC,
`Realtime Adaptive Streaming LLC, v. Google LLC, D.I. 15, Case No.
`18-cv-03629 FMO (JCx) (C.D. Cal.)
`Proof of Service re Summons and Complaint for Comcast Corporation,
`Realtime Adaptive Streaming, LLC v. Comcast Cable Communications,
`LLC and Comcast Corporation, D.I. 19, Case No. 18-cv-01446 PAB
`(STV) (D. Col..)
`
`
`
`
`
`iv
`
`
`
`IPR2018-01342
`Patent 8,934,535
`
`I.
`
`INTRODUCTION
`Realtime’s motion to terminate IPR2018-01342 should be denied at least as
`
`to joined petitioners Google and Comcast. Realtime relies on GoPro, Inc. v.
`
`360Heros, Inc., in which the POP ruled that the § 315(b) time bar is triggered by
`
`service of a deficient pleading. IPR2018-01754, Paper 38 at 6 (Aug. 23, 2019)
`
`(precedential). GoPro is inapplicable to Google and Comcast, because neither was
`
`served with a complaint alleging infringement of the ’535 patent more than one year
`
`prior to the filing their respective Petitions. The only question is whether Google
`
`and Comcast should be prevented from maintaining IPR2018-01342 solely because
`
`they were joined as petitioners. They should not, because they are not time-barred
`
`and they have fully complied with the statutory and regulatory requirements
`
`governing IPR proceedings as well as the Board’s precedent.
`
`II. ARGUMENTS
`A. Google and Comcast Were Not Time Barred
`1. Google’s and Comcast’s Petitions Were Granted and Their
`Respective Proceedings Were Duly Instituted
`It is undisputed that Google’s Petition in IPR2019-00748 and Comcast’s
`
`Petition in IPR2019-00760 were timely filed under 35 U.S.C. § 315(b). Google was
`
`first served with a complaint alleging infringement of the ’535 patent on May 4,
`
`2018 (Exs. 1101, 1102), and Comcast was first served with a complaint alleging
`
`infringement of the ’535 patent on July 20, 2018 (Ex. 1103). Google and Comcast
`
`
`
`1
`
`
`
`IPR2018-01342
`Patent 8,934,535
`
`filed their Petitions on February 27, 2019, and February 28, 2019, respectively.
`
`IPR2019-00748, Paper 4; IPR2019-00760, Paper 4. Accordingly, Google’s and
`
`Comcast’s respective Petitions complied with § 315(b), as well as the other statutory
`
`and regulatory requirements governing IPR proceedings. In each proceeding, the
`
`Board was “persuaded that Petitioner ha[d] demonstrated a reasonable likelihood
`
`that it will succeed,” and “an inter partes review [was] instituted.” IPR2019-00748,
`
`Paper 5 at 6; IPR2019-00760, Paper 5 at 5–6.
`
`At the same time, the Board exercised its discretion to grant Google’s and
`
`Comcast’s motions to join DISH’s already-instituted IPR2018-01342. By granting
`
`joinder, the Board necessarily determined that all applicable threshold requirements,
`
`including those under § 314, were met, without having to repeat “superfluous”
`
`“determination[s] already made in the existing proceeding.” Proppant Express Invs.,
`
`LLC v. Oren Techs., LLC, IPR2018-00914, Paper 38 at 12 (Mar. 13, 2019)
`
`(precedential) (“[B]y referencing § 314 in § 315(c), Congress required a separate
`
`determination that the petition accompanying a joinder request shows a reasonable
`
`likelihood of prevailing on at least one claim.”)
`
`As it typically does when granting joinder, the Board administratively
`
`terminated Google’s and Comcast’s instituted proceedings in view of their right to
`
`maintain IPR2018-01342 should DISH no longer be involved. IPR2019-00748,
`
`Paper 5 at 7; IPR2019-00760, Paper 5 at 6. Those case-management actions were
`
`
`
`2
`
`
`
`IPR2018-01342
`Patent 8,934,535
`
`within the discretion of the Board, and not pursuant to any statutory command.
`
`Indeed, Congress left the management of IPR proceedings to the Board’s discretion.
`
`35 U.S.C. § 315(d). As detailed further below, the Board should employ its
`
`discretion now to ensure that the considerable efforts of Google, Comcast, Realtime,
`
`and the Board in reaching the merits of IPR2018-01342, which were made in
`
`reliance on the Board’s case-management decisions, do not go to waste.
`
`2. Google and Comcast Were Entitled to Rely on the Propriety
`of the Board’s Institution Decision in DISH’s IPR2018-01342
`According to Realtime, Google and Comcast could have avoided the alleged
`
`defect that DISH’s Petition “was never properly instituted” by filing their own stand-
`
`alone petitions. (Mot. at 7, 10.)
`
`Google and Comcast, however, cannot be faulted for filing Petitions that are
`
`substantially identical to DISH’s, taking an “understudy” role to DISH, and relying
`
`on DISH’s expert witness testimony. Google and Comcast simply complied with
`
`the Board’s regular practice of joining petitioners that file “copycat” petitions,
`
`“where joinder would not affect the cost, procedural complexity, or scheduling.”
`
`Microsoft Corp. v. UNILOC 2017 LLC, IPR2019-00744, Paper 11 at 13 (Sept. 4,
`
`2019) (denying joinder due to differences in positions between petitions and
`
`declarants); see also Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15 at
`
`4 (Apr. 24, 2013). This practice furthers the AIA’s objective of “establish[ing] a
`
`more efficient and streamlined patent system that will improve patent quality and
`
`
`
`3
`
`
`
`IPR2018-01342
`Patent 8,934,535
`
`limit unnecessary and counterproductive litigation costs.” Microsoft, Paper 11 at
`
`12–13. And, as parties appearing before an agency, Google and Comcast were
`
`entitled to rely on the propriety of the agency’s institution decision in IPR2018-
`
`01342, see Civil Aeronautics Bd. v. Delta Air Lines, Inc., 367 U.S. 316, 329–31
`
`(1961); Rodale Press, Inc. v. FTC, 407 F.2d 1252, 1256 (D.C. Cir. 1968), which
`
`specifically addressed the time-bar issue raised by Realtime based on the law at the
`
`time, see IPR2018-01342, Paper 9 at 12–14. Had Google and Comcast filed stand-
`
`alone petitions to pursue separate proceedings, they would have been subject to the
`
`Board’s discretionary denial of institution under 35 U.S.C. § 314(a) in view of
`
`already-instituted proceedings. With these considerations in mind, Google and
`
`Comcast filed their Petitions and motions for joinder. In contrast, Realtime’s
`
`rationale would cut against the Board’s practice that parties move for joinder in a
`
`way that “will have little or no impact on the timing, cost, or presentation of the trial
`
`on the instituted ground.” See, e.g., Dell Inc. v. Alacritech, Inc., IPR2018-01307,
`
`Paper 8 at 5 (Jan. 11, 2019).
`
`B. DISH’s Alleged Untimeliness Should Not Be Attributed to Google
`and Comcast
`Realtime’s Real Party-in-Interest Argument Lacks Merit
`1.
`Realtime argues that any IPR involving Google or Comcast is time-barred
`
`under § 315(b) because DISH is a time-barred real party-in-interest (“RPI”) due to
`
`its control of this proceeding so far. (Mot. at 8.) However, “the best reading of
`
`
`
`4
`
`
`
`IPR2018-01342
`Patent 8,934,535
`
`§ 315(b) requires consideration of privity and RPI relationships arising after filing
`
`but before institution.” Power Integrations, Inc. v. Semiconductor Components
`
`Indus., LLC, 926 F.3d 1306, 1315 (Fed. Cir. 2019) (emphasis added). Because DISH
`
`did not fund or control Google’s or Comcast’s respective Petitions or proceedings
`
`prior to institution, DISH cannot be an RPI in those proceedings.
`
`Similarly, DISH’s role in IPR2018-01342 after joinder does not create an RPI
`
`relationship because Google and Comcast were merely joined for the purposes of
`
`increasing efficiency and reducing the burden on the parties and the Board. See
`
`IPR2019-00748, Paper 3 at 4–8; IPR2019-00760, Paper 3 at 6–9. That is, although
`
`Google and Comcast were joined as petitioners, Google’s, Comcast’s, and DISH’s
`
`interests are separate from one another. Indeed, the Board’s orders granting joinder
`
`recognize that Google and Comcast may need to address “points of disagreement
`
`with [DISH].” IPR2019-00748, Paper 6 at 7; IPR2019-00760, Paper 6 at 6. If
`
`anything, the only common interest among the petitioners is a desire to invalidate
`
`the ’535 patent, but that, without more, does not establish an RPI relationship. See
`
`WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1321–22 & n.8 (Fed.
`
`Cir. 2018).
`
`2.
`
`Click-to-Call Does Not Support Equal Treatment of Google
`and Comcast with DISH
`Realtime also cites Click-to-Call Technologies, LP v. Ingenio, Inc., 899 F.3d
`
`1321, 1338 (Fed. Cir. 2018), for the proposition that Google and Comcast are an
`
`
`
`5
`
`
`
`IPR2018-01342
`Patent 8,934,535
`
`“undifferentiated unit” with DISH that together should receive equal treatment.
`
`(Mot. at 7.) In Click-to-Call, the Federal Circuit determined that § 315(b) “appl[ies]
`
`petition-by-petition,” “with the collection of petitioners on a single petition treated
`
`as a unit indistinguishable from each member of that collection.” 899 F.3d at 1338.
`
`Click-to-Call, however, concerned co-petitioners on a single petition instead of post-
`
`institution joined petitioners, and therefore is not applicable to Google and Comcast
`
`here. See id. at 1338–39 & n.8 (distinguishing the co-petitioner scenario of Click-
`
`to-Call from a scenario involving joined petitioners).
`
`Unlike in Click-to-Call, Google and Comcast each filed their own separate
`
`Petitions after IPR2018-01342 was instituted and therefore should not be treated as
`
`a single petitioner along with DISH. This is true even though Google and Comcast
`
`were later joined to IPR2018-01342. As with DISH’s Petition, Google’s and
`
`Comcast’s Petitions were each assessed on their own merits. Proppant, Paper 38 at
`
`12. As such, Google and Comcast should each get “separate treatment” from DISH
`
`and be permitted to maintain this proceeding. See Click-to-Call, 899 F.3d at 1338–
`
`39 & n.8.
`
`C. The Board Has Authority to Maintain This Proceeding
`Realtime’s argument that there is no proceeding for Google and Comcast to
`
`maintain because DISH’s IPR should have never been instituted fails for several
`
`reasons. (Mot. at 6–7.) First, Realtime does not cite a single case that supports its
`
`
`
`6
`
`
`
`IPR2018-01342
`Patent 8,934,535
`
`conclusion. Second, based on the law at the time, DISH’s IPR was properly
`
`instituted. See IPR2018-01342, Paper 9 at 12–14 (determining that a complaint not
`
`served by a patent owner does not trigger the one-year time bar under § 315(b) based
`
`on Federal Circuit precedent and the language and legislative history of the statute).
`
`Third, the absence of a petitioner from a proceeding is of no issue.
`
`The third point is contemplated by the statute regarding settlement, which
`
`provides that an IPR may be terminated as to only a subset of petitioners. See 35
`
`U.S.C. § 317(a). Even when no petitioner remains, the agency may “proceed to a
`
`final written decision.” Id. To illustrate, in Facebook, Inc. v. Windy City Innovations
`
`LLC, petitioner Facebook, which was outside the one-year period for filing a petition
`
`under § 315(b), filed a petition with a motion for joinder under § 315(c) with a
`
`proceeding initiated by Microsoft. IPR2016-01155, Paper 32 at 2, 6, 16 (June 1,
`
`2017). Before Facebook’s joinder motion was ruled upon, Microsoft and the patent
`
`owner settled and filed a joint motion to terminate the proceeding. Id., Paper 33 at
`
`2 (June 7, 2017). The Board did terminate Microsoft, but nevertheless exercised its
`
`discretion and joined Facebook, which maintained the proceeding as the sole
`
`remaining petitioner. Id., Paper 53 at 4–7 (Aug. 14, 2017).
`
`Here, the situation is much simpler. Unlike in Facebook, Google and Comcast
`
`were joined in IPR2018-01342 before the present question arose as to DISH’s
`
`termination. Google and Comcast were not time-barred from filing their own
`
`
`
`7
`
`
`
`IPR2018-01342
`Patent 8,934,535
`
`Petitions under § 315(b), and could properly have done so had the Board then
`
`indicated that DISH was time-barred. Now that Realtime is moving to terminate,
`
`this proceeding is at a far-advanced stage with oral argument being the only
`
`substantive milestone remaining. IPR2018-01342, Paper 28 at 2. Allowing Google
`
`and Comcast to proceed would impose no undue burden and would avoid wasting
`
`the resources expended thus far, while resolving the patentability questions in
`
`Google’s and Comcast’s Petitions that the Board duly instituted. Therefore,
`
`compared to Facebook, there is an even stronger basis for letting Google and
`
`Comcast maintain this proceeding.
`
`D. The Board Has Authority to Allow Google and Comcast to Proceed
`to Trial
`Alternatively, the Board has the authority to reconsider its joinder and
`
`termination decisions in Google’s and Comcast’s IPRs in the interest of reaching a
`
`final written decision. BioDelivery Scis. Int’l, Inc. v. Aquestive Therapeutics, Inc.,
`
`935 F.3d 1362, 2019 WL 4062525, at *3 (Fed. Cir. Aug. 29, 2019) (discussing
`
`administrative agencies’ “inherent authority to reconsider their decisions”). The
`
`Board initially decided, in its discretion and based on then-controlling law, to grant
`
`Google’s and Comcast’s properly-postured joinder motions for the sake of
`
`efficiency. Although the GoPro decision has since issued, it should not be viewed
`
`as foreclosing the efficient resolution of issues of patentability by Google and
`
`Comcast who duly raised them. Google’s and Comcast’s current postures are only
`
`
`
`8
`
`
`
`IPR2018-01342
`Patent 8,934,535
`
`the result of the Board’s exercise of its authority and discretion in instituting, joining,
`
`and terminating their proceedings, as the statutes do not prescribe the specifics of
`
`these agency actions. See 35 U.S.C. § 315(c), (d); Facebook, Paper 53 at 9
`
`(discussing the Board discretionary actions in managing IPR proceedings). And the
`
`intervening GoPro decision itself was the result of the Board’s exercise of its
`
`authority and discretion. SOP 2 (Rev. 10) at 2 (citing congressionally granted
`
`authority under 35 U.S.C. §§ 6(a), 3(a)(2)(A), 2(b)(2)(A)). The Board has the
`
`authority now to reorient Google and Comcast, in whatever way it sees fit to avoid
`
`offending GoPro, in order to reach a final decision on patentability. 2
`
`After meeting all the statutory and regulatory requirements, Google and
`
`Comcast cannot be faulted for complying with the Board’s precedent at the time
`
`
`2 The Board’s discretion in managing the proceedings before it is similar to a district
`
`court’s discretion in managing its docket. The Board, for example, can consider
`
`severing the IPR2018-01342 proceeding into two, similar to how a district court can
`
`sever a case under the Fed. R. Civ. Proc. 21 upon determining “whether keeping
`
`claims together in a single case would comport with the principles of fundamental
`
`fairness or would result in prejudice to either side.” In re Intex Recreation Corp.,
`
`Order No. 18-131, 2018 WL 3089215, at *3 (Fed. Cir. June 13, 2018) (internal
`
`quotation marks and citations omitted).
`
`
`
`9
`
`
`
`IPR2018-01342
`Patent 8,934,535
`
`regarding joinder and observing the then-controlling authority applied in the DISH
`
`institution decision, which decided the time-bar issue. If the Board were to terminate
`
`as to Google and Comcast under a newly-adopted understanding of § 315(b) that is
`
`indisputably inapplicable to Google and Comcast, such an action would not only be
`
`unfair but also unreasonable and arbitrary. See FCC v. Fox Television Stations, 556
`
`U.S. 502, 515 (2009) (noting that “serious reliance interests” “must be taken into
`
`account” when an agency changes its position). The unjust result of terminating
`
`Google and Comcast—who complied with all the legal and regulatory requirements
`
`and followed the Board’s preference for the efficiencies and cost savings of joined
`
`proceedings—can be avoided here by permitting Google and Comcast to proceed
`
`with an IPR proceeding challenging the ’535 patent based on the grounds in their
`
`respective Petitions.
`
`III. CONCLUSION
`For the reasons set forth above, the Board should maintain an inter partes
`
`review proceeding with at least Google and Comcast as petitioners.
`
`
`
`
`
`
`
`10
`
`
`
`IPR2018-01342
`Patent 8,934,535
`
`
`Dated: September 26, 2019
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /Naveen Modi/
` Naveen Modi (Reg. No. 46,224)
` Counsel for Petitioner
` Google LLC
`
`By: /James L. Day/
` James L. Day (Reg. No. 72,681)
` Counsel for Petitioner
` Comcast Cable Communications, LLC
`
`
`
`11
`
`
`
`IPR2018-01342
`Patent 8,934,535
`
`
`CERTIFICATE OF SERVICE
`I hereby certify that on September 26, 2019, I caused a true and correct copy
`
`of the foregoing Joint Opposition to Patent Owner’s Motion to Terminate was served
`
`by electronic means, as agreed by the parties, upon Counsel for Patent Owner at the
`
`following address of record:
`
`Philip X. Wang (pwang@raklaw.com)
`C. Jay Chung (jchung@raklaw.com)
`Kent N. Shum (kshum@raklaw.com)
`Reza Mirzaie (rmirzaie@raklaw.com)
`Neil A. Rubin (nrubin@raklaw.com)
`
`rak_realtimedata@raklaw.com
`
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`
`
`By: /Naveen Modi/
`
`
`
` Naveen Modi (Reg. No. 46,224)
`
`
`
`
`
`12
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
