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., et al.,
`Petitioners
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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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`REPLY TO REALTIME ADAPTIVE STREAMING LLC’S
`PATENT OWNER’S PRELIMINARY RESPONSE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SLING TV, L.L.C., et al.,
`Petitioners
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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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`REPLY TO REALTIME ADAPTIVE STREAMING LLC’S
`PATENT OWNER’S PRELIMINARY RESPONSE
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`Attorney Docket: 45035-0002IP4
`Case IPR2018-01342
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`TABLE OF CONTENTS
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`I.
`INTRODUCTION ........................................................................................... 1
`NATURE AND STAGE OF THE PROCEEDINGS ...................................... 2
`II.
`III. The Petition Is Not Time Barred Under § 315(b) ........................................... 3
`A. Realtime Data’s June 2017 Complaint Does Not Trigger § 315(b)’s
`Time Bar ................................................................................................... 3
`B. Click-To-Call Does Not Alter the Board’s Opinion ................................. 5
`IV. CONCLUSION ................................................................................................ 7
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`Attorney Docket: 45035-0002IP4
`Case IPR2018-01342
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`EXHIBITS
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`DISH1026
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`Executed Assignment of U.S. Patent No. 8,934,535
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`DISH1027
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`DISH1028
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`Complaint for Patent Infringement, Realtime Adaptive
`Streaming LLC v. EchoStar Technologies, L.L.C. et al., Case
`No. 6:17-cv-00567 (E.D. Tex. Oct. 10, 2017)
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`Complaint for Patent Infringement, Realtime Adaptive
`Streaming LLC v. Sling TV L.L.C. et al., Case No. 1:17-cv-
`02097 (D. Col. Oct. 10, 2017)
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`ii
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`Attorney Docket: 45035-0002IP4
`Case IPR2018-01342
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`I.
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`INTRODUCTION
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`Petitioners’ reply addresses the Federal Circuit’s Click-To-Call Techs., LP v.
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`Ingenio, Inc., YellowPages.com, LLC, 899 F.3d 1321 (Fed. Cir. 2018), decision
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`regarding 35 U.S.C. § 315(b), which issued after Petitioners filed the instant
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`petition. Patent Owner errs by relying on Click-To-Call for its assertion that
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`Petitioners are time-barred under 35 U.S.C. § 315(b) by the service of a June 2017
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`complaint. Click-To-Call is not controlling and readily distinguishable because the
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`entity that filed the June 2017 complaint, Realtime Data, LLC—not the Patent
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`Owner, Realtime Adaptive Streaming, LLC—did not own the patent and thus did
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`not have standing to file the complaint in the first place. The Federal Circuit
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`recently confirmed that Click-To-Call did not address this scenario. Hamilton
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`Beach Brands, Inc. v. f'real Foods, LLC, No. 2018-1274, 2018 WL 6005016, at *4
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`(Fed. Cir. Nov. 16, 2018) (“That f’real lacked standing to file its 2014 complaint
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`alleging infringement of the ’662 patent involves a circumstance not present, or
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`considered, in Click-to-Call. We do not decide that question in this appeal.”).
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`Click-To-Call is inapposite because that decision dealt with the effect of
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`actions subsequent to the filing of a proper federal complaint, in particular a
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`motion to dismiss without prejudice. The problem here is that the Patent Owner
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`relies on a complaint that was jurisdictionally defective at the time of filing
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`because the entity that filed the first complaint did not own the patent and did not
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`have standing to sue. Petitioners need not rely on subsequent events to satisfy
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`§ 315(b) because there was never a “proper federal pleading” in the first place.
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`The June 2017 complaint was a nullity as of its filing date. And while the Federal
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`Circuit has not addressed this particular circumstance, the Board has. As discussed
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`in detail below, prior Board opinions dictate a jurisdictionally deficient complaint,
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`such as the June 2017 complaint, does not trigger § 315(b)’s time bar.
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`II. NATURE AND STAGE OF THE PROCEEDINGS
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`On June 6, 2017, Realtime Data LLC (“Realtime Data”) filed an amended
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`complaint in the Eastern District of Texas alleging that Petitioners infringed U.S.
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`Patent No. 8,934,535 (“the ’535 Patent”), among others. IPR2018-01342, Paper
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`No. 6 at Ex. 2001 (PTAB Nov. 8, 2018) (“POPR”). Realtime Data served the
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`amended complaint on Petitioners a few days later. POPR at 4. But there was a
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`major problem with the complaint. Realtime Data did not own the ’535 patent. It
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`had previously transferred the ’535 Patent to a different company, Patent Owner
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`Realtime Adaptive Streaming, LLC (“Realtime Adaptive”) a few months earlier.
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`DISH1026 (recorded assignment of the ’535 patent to Realtime Adaptive that was
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`executed on March 7, 2017). Unsurprisingly, Realtime Data later voluntarily
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`dismissed its complaint without prejudice. POPR at 4 n.3. Realtime Adaptive then
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`filed its first complaints on October 10, 2017 in the Eastern District of Texas and
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`the District of Colorado. DISH1027; DISH1028.
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`On July 3, 2018, less than a year after the filing of the October 2017
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`complaints by the actual patent owner, Petitioners petitioned for Inter Partes
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`Review of the ’535 Patent. On August 16, 2018, the Federal Circuit issued a
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`decision in, Click-To-Call Techs., LP v. Ingenio, Inc., YellowPages.com, LLC, 899
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`F.3d 1321 (Fed. Cir. 2018), that addressed, inter alia, the application of 35 U.S.C.
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`§ 315(b)’s time bar to a complaint for patent infringement that has been voluntarily
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`dismissed. In its Preliminary Response, Realtime Adaptive argued that the
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`petition, which was timely under the Board’s practice before Click-to-Call, was
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`now time-barred by the June 2017 amended complaint. POPR at 1-5. Realtime
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`Adaptive did not address the fact that it did not file and serve the June 2017
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`amended complaint on which it relies. See id.
`III. THE PETITION IS NOT TIME BARRED UNDER § 315(b)
`Patent Owner Realtime Adaptive cannot rely on Realtime Data’s June 2017
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`complaint to trigger 35 U.S.C. § 315(b)’s time bar because that complaint is a
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`nullity as a matter of law. As a prior Board opinion put it, it was “not a proper
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`federal pleading” that can trigger § 315(b). And the Board’s opinion is consistent
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`with Click-to-Call’s reasoning and § 315(b)’s legislative history.
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`A. Realtime Data’s June 2017 Complaint Does Not Trigger § 315(b)’s
`Time Bar
`Realtime Data’s June 2017 complaint did not trigger the one-year time bar
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`under § 315(b) because it was not a “proper federal pleading.” See Hamilton
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`Beach Brands, Inc. v. f’real Foods, LLC, IPR2016-01107, 2016 WL 7985447, at
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`*4 (P.T.A.B. Nov. 30, 2016) (“Institution Decision”).
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`In Hamilton Beach, f’real served Hamilton Beach with a complaint alleging
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`patent infringement along with other claims in 2014. Id., at *2. In 2016, it moved
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`to dismiss its patent infringement claims without prejudice because it did not own
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`the asserted patents. Id., at *3. On the same day, the patent owner filed and
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`subsequently served a new complaint reasserting the same patent infringement
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`causes of action. Id. The Board concluded that because f’Real lacked standing to
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`file the original complaint, the complaint was not a “proper federal pleading” and
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`did not trigger the one-year time bar under § 315(b). Id., at *3-*4 (“Thus, the
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`allegation of infringement of the ’662 patent in the 2014 Complaint was not a
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`proper federal pleading and did not trigger the one-year time period under 35
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`U.S.C. § 315(b).”).
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`The present matter is indistinguishable from Hamilton Beach. Realtime
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`Adaptive, the patent owner, did not file or serve the June 2017 complaint it relies
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`on to trigger § 315(b)’s time bar. See DISH1026. Assignment records show that
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`the complaint was “jurisdictionally defective” because it was filed by a company
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`that did not own the patent (DISH1026), “and the defect could not be cured after
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`the filing date of the complaint, e.g., by a subsequent assignment or by joining the
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`patent title holder to the lawsuit.” Institution Decision, 2016 WL 7985447, at *3.
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`Realtime Data’s June 2017 complaint, in other words, was not “a proper federal
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`pleading” that could trigger § 315(b)’s time bar. Id., at *4.
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`Federal Circuit precedent similarly dictates that a complaint filed by an
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`entity without standing is a legal nullity as of the filing date. The Federal Circuit
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`has held that “‘[i]f . . . plaintiff lacked . . . standing, the suit must be dismissed, and
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`the jurisdictional defect cannot be cured after the inception of the lawsuit.”
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`Abraxis Bioscience, Inv. v. Navinta LLC, 625 F.3d 1359, 1363 (Fed. Cir. 2010); see
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`also Schreiber Foods, Inc. v. Beatrice Cheese, Inc., 402 F.3d 1198, 1203 (Fed. Cir.
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`2005) (same). Other courts have likewise reached the same conclusion. See, e.g.,
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`Fabro Oriented Polymers, Inc. v. McCormick, 2002 U.S. Dist. LEXIS 9224, at
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`*17-*24 (W.D. Mich. May 7, 2002) (a patentee’s “amendment of the pleadings
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`cannot rewrite history and cure a standing defect.”); Cortlandt St. Recovery Corp.
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`v. Hellas Telecomm., S.a.r.l, 790 F.3d 411, 423 (2d Cir. 2015) (“in the absence of a
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`plaintiff with standing, this lawsuit was a nullity.”).
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`B. Click-To-Call Does Not Alter the Board’s Opinion
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`As Patent Owner acknowledges, Click-To-Call addresses the effect of
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`“subsequent events” after the service of a complaint in a civil action. POPR at 2, 4
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`(emphasis in original). It does not address whether a complaint that is a legal
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`nullity can trigger § 315(b), as the Federal Circuit recently confirmed. Hamilton
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`Beach Brands, Inc., 2018 WL 6005016, at *4. Because the June 2017 complaint is
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`a legal nullity, there is nothing for a subsequent event to undo.
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`The Board’s Hamilton Beach opinion is consistent with Click-to-Call. In
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`Click-to-Call, the Federal Circuit implicitly assumed that the “complaint” was a
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`proper federal pleading.1 Like Congress, the Federal Circuit need not specify that
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`the “complaint” be proper. It is a bedrock principle of patent law that “[a] patentee
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`shall have remedy by civil action for infringement of his patent.” 35 U.S.C. § 281
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`1 To hold otherwise would permit any third party without any ownership interests
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`in a patent to trigger § 315(b) simply by serving a complaint.
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`Case IPR2018-01342
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`(emphasis added). And “Congress must be presumed to draft . . . in light of . . .
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`background [legal] principle[s].” Young v. United States, 535 U.S. 43, 49–50
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`(2002). Moreover, the Federal Circuit began its analysis with a reference to §
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`315(b)’s title, “Patent Owner’s Action” (Click-To-Call, 899 F.3d at 1330), which
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`confirms the limited scope of § 315(b)’s reach. See Yanko v. United States, 869
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`F.3d 1328, 1333-34 (Fed. Cir. 2017) (“statutory titles and section headings are
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`tools available for the resolution of doubt about the meaning of a statute.”)
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`The legislative history of § 315(b) also demonstrates that its time bar only
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`concerns proper federal pleadings because Congress only envisioned that the
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`deadline would be triggered after the patent owner filed a complaint:
`The House bill also extends the deadline for allowing an accused
`infringer to seek inter partes review after he has been sued for
`infringement. The Senate bill imposed a 6-month deadline on seeking
`IPR after the patent owner has filed an action for infringement. The
`final bill extends this deadline, at proposed section 315(b), to 1
`year. . . . Current law imposes no deadline on seeking inter partes
`reexamination. And in light of the present bill’s enhanced estoppels,
`it is important that the section 315(b) deadline afford defendants a
`reasonable opportunity to identify and understand the patent claims
`that are relevant to the litigation.
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`157 Cong. Rec. S5429 (daily ed. Sept. 8, 2011) (statement of Sen. Kyl) (emphasis
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`added). As reflected above, the entire purpose of § 315(b) and the AIA, more
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`generally, is to provide petitioners with an efficient alternative to district court
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`6
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`Attorney Docket: 45035-0002IP4
`Case IPR2018-01342
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`litigation while providing adequate protections to patent owners. See id.; see also
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`157 Cong. Rec. S1375-76 (daily ed. March 8, 2011) (statement of Sen. Kyl). But
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`when a party without standing initiates the suit, there is no balancing to be done
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`because there is no patent owner and no legitimate district court litigation.2
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`The Board’s decision in Hamilton Beach is thus consistent with Click-to-
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`Call’s reasoning and § 315(b)’s legislative history.
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`IV. CONCLUSION
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`For the reasons in the Petition and the Reply, Petitioners requests Inter
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`Partes Review of the Challenged Claims.
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`2 Notably, the Click-to-Call Court’s rationale for imposing a bar for dismissed
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`complaints—that the “service of a complaint is the seminal notice-conferring
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`event”—does not apply here. Click-To-Call, 899 F.3d at 1332. Since Realtime
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`Data was not the patent owner, its complaint did not even provide adequate notice
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`under 35 U.S.C. § 287. In Lans v. Digital Equip. Corp., 252 F.3d 1320, 1326–28,
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`59 U.S.P.Q.2d 1057 (Fed. Cir. 2001) (“the actual notice requirement of § 287(a)
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`demands notice of the patentee’s identity as well as notice of infringement.”).
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`Attorney Docket: 45035-0002IP4
`Case IPR2018-01342
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`Respectfully submitted,
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`/s/ 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: December 4, 2018
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`8
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`Attorney Docket: 45035-0002IP4
`Case IPR2018-01342
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e), the undersigned certifies that on December
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`4, 2018, a complete and entire copy of this Petitioner Reply to Patent Owner
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`Preliminary Response and its supporting exhibits were provided via email, to the
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`Patent Owner by serving the email correspondence addresses of record as follows:
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`Neil A. Rubin
`Kent Shum
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Floor
`Los Angeles, CA 90025
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`Email: nrubin@raklaw.com
`Email: kshum@raklaw.com
`Email: rak_realtimedata@raklaw.com
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`/Edward G. Faeth/
`Edward G. Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
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