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` UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`NETFLIX, INC.,
`Petitioner,
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`v.
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`REALTIME ADAPTIVE STREAMING LLC,
`Patent Owner.
`____________________
`
`Case IPR2018-01630
`Patent No. 9,769,477
`____________________
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`Case IPR2018-01630
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`TABLE OF CONTENTS
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`I.
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`Introduction ..................................................................................................... 1
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`II.
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`Background of the ’477 patent and challenged claims ................................... 3
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`III.
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`Petitioner’s proposed claim constructions ...................................................... 7
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`IV. The Petition should be denied under § 325(d)................................................ 7
`
`A.
`
`The Petition presents the same or substantially the same prior
`art previously before the Office ........................................................... 8
`
`B.
`
`The Board should deny institution ..................................................... 10
`
`V.
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`The Petition should be denied under § 314(a) per General Plastic ............. 13
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`VI. Ground 1 does not show that the prior art discloses or suggests “a first
`asymmetric data compression encoder . . . configured to compress
`data blocks containing video or image data at a higher data
`compression rate than a second asymmetric data compression
`encoder” ........................................................................................................ 20
`
`A.
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`B.
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`C.
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`
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`Limitation 1[B] requires two asymmetric data compression
`encoders, with the first encoder being configured to compress
`video or image data faster than the second encoder .......................... 20
`
`The Petition’s allegations do not even attempt to show that Imai
`teaches one encoder that is “configured to” compress at a higher
`rate than another encoder ................................................................... 24
`Petitioner’s argument that limitation 1[B] would be met by chance reads
`1.
`“configured to” out of the limitation ......................................................... 25
`The Petition’s argument that Imai teaches “different asymmetric data
`compression encoders” that have “different data compression rates” is
`both inadequate and unsupported.............................................................. 27
`The Petition’s suggested modification runs contrary to Imai’s goal of
`ensuring that audio data can be reproduced in real time ........................... 31
`
`3.
`
`2.
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`The Petition also fails to show that Pauls teaches one encoder
`that is “configured to” compress at a higher rate than another
`encoder, and thus cannot demonstrate obviousness ........................... 34
`The Petition points to no disclosure or discussion of compression rates of
`1.
`any encoder in Pauls ................................................................................. 35
`Ground 1’s Pauls-based theory further fails because it also fails to meet
`the “configured to” requirement of Claim 1 ............................................. 37
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`2.
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`D.
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`The combination of Imai and Pauls does not address the failures
`of either reference to disclose limitation 1[B] .................................... 37
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`VII. Ground 1 further fails with respect to Claim 20’s dependents because
`it does not purport to address the additional limitations of Independent
`Claim 20 ........................................................................................................ 39
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`VIII. Ground 1 does not explain how a POSITA would combine the
`references ...................................................................................................... 41
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`IX. The Petition fails to explain why a POSITA would make its alleged
`modifications ................................................................................................ 45
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`X.
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`The Petition does not address the tradeoffs inherent in its motivation
`to modify Pauls’s encoders ........................................................................... 54
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`XI. The expert declaration cannot cure the Petition’s deficiencies .................... 57
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`XII. The Petition’s analysis of all challenged claims fails because the
`Petition relies on its flawed analysis of the independent claims the
`claims’ shared limitations ............................................................................. 58
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`XIII. Conclusion .................................................................................................... 59
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`EXHIBIT LIST
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`Exhibit No.
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`2001
`
`Description
`Declaration of Kayvan B. Noroozi in Support of Motion for
`Admission Pro Hac Vice.
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`I.
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`Introduction
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`While Netflix may be the perfect venue for presenting strategically timed
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`sequels, the Patent Trial and Appeal Board is not. Having filed one petition against
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`the ’477 patent only months ago based in part on the combination of Imai and
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`Pauls, Netflix asks the Board to consider yet another petition against the same
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`patent based on the same prior art combination. The Board’s limited resources
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`should not be allocated to permitting such abusive and serial gamesmanship. As
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`the Board has recognized in General Plastic and its progeny, including with
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`respect to prior abusive serial petitions brought against Realtime patents, the
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`approach Netflix pursues here is intended to severely prejudice Patent Owner and
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`to waste the Board’s time and resources. The Board should not encourage
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`petitioners to take multiple bites at the apple by filing a series of strategically timed
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`petitions against the same patent based on the same prior art. The Board should
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`instead deny institution based on General Plastic. Moreover, the Board can, and
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`should, also deny institution based on § 325(d).
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`Yet if the Board were to look beyond the egregious procedural abuses this
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`Petition presents, it would ultimately also find the Petition’s substance to be devoid
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`of merit, and undeserving of institution.
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`Limitation 1[B] requires that a specific “first” encoder be “configured to”
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`compress at a higher rate than a specific “second” encoder. The Federal Circuit has
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`made clear that limitations reciting “configured to” can only be met by prior art
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`that teaches purposeful design. See Aspex Eyewear v. Marchon Eyewear, 672 F.3d
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`1335, 1349 (Fed. Cir. 2012) (contrasting an apparatus that “can be made to serve
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`[the] purpose” with one that is “configured to accomplish the specified objective”).
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`Thus, limitation 1[B] can only be met by showing that the prior art teaches
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`or renders obvious designing a system in which one specific encoder (a “first”
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`encoder) will—by design (“configured to”)—compress at a higher rate than
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`another specific encoder (the “second” encoder).
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`The Petition never even attempts to make that showing. Rather, the Petition
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`simply argues that it is probabilistically likely that one prior art encoder would at
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`times compress at a higher rate than others in a given system. But that argument
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`only proves that the Petition’s theory cannot meet the “configured to” requirement
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`of limitation 1[B]. Since any encoder in the Petition’s theory could compress at a
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`higher rate than any other encoder, it necessarily follows that no specific encoder is
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`“configured to” compress at a higher rate than any other specific encoder, as
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`limitation 1[B] actually requires.
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`Thus, institution should be denied because the Petition fails to show that the
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`prior art, alone or combined, meets limitation 1[B].
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`Moreover, the Petition also fails to explain how the prior art combination
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`would read onto the challenged claims, and why an ordinary artisan would have
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`sought to make the Petition’s proposed modification, as the law requires.
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`This sequel is not worth the price of admission. Institution should be denied.
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`II. Background of the ’477 patent and challenged claims
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`Petitioner challenges Claims 7, 8, 15-19, 23, 24, 28, and 29 of U.S. Patent
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`No. 9,769,477. The Petition’s challenge is based on the following Grounds:
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`Ground
`Ground 1
`Ground 2
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`Ground 3
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`Challenged Claims
`Basis
`References
`Imai and Pauls Obviousness (§103) 15-19, 28, 29
`Imai, Pauls, and
`Obviousness (§103) 7, 23
`Dawson
`Imai, Pauls, and
`Lai
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`Obviousness (§103) 8, 24
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`The ’477 patent “is directed to a system and method for compressing and
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`decompressing based on the actual or expected throughput (bandwidth) of a system
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`employing data compression . . . .” Ex. 1001 at 7:66-8:3. The invention seeks to
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`“provide[] a desired balance between execution speed (rate of compression) and
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`efficiency (compression ratio).” Id. at 8:24-27. For example, where the speed of
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`the encoder causes a “bottleneck” because “the compression system cannot
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`maintain the required or requested data rates,” “then the controller will command
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`the data compression system to utilize a compression routine providing faster
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`compression . . . so as to mitigate or eliminate the bottleneck.” Id. at 14:14-24.
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`Claim 1 is directed to a system that selects among “asymmetric data
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`compression encoders” where “a first asymmetric data compression encoder . . . is
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`configured to compress . . . at a higher data compression rate than a second
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`asymmetric data compression encoder.” Claim 1 of the ’477 patent recites:
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`Element Claim 1
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`1[PR]
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`A system, comprising:
`
`1[A]
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`a plurality of different asymmetric data compression encoders,
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`wherein each asymmetric data compression encoder of the
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`plurality of different asymmetric data compression encoders is
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`configured to utilize one or more data compression algorithms,
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`and
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`1[B]
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`wherein a first asymmetric data compression encoder of the
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`plurality of different asymmetric data compression encoders is
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`configured to compress data blocks containing video or image
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`data at a higher data compression rate than a second asymmetric
`
`data compression encoder of
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`the plurality of different
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`asymmetric data compression encoders; and
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`1[C]
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`one or more processors configured to:
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`determine one or more data parameters, at least one
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`of the determined one or more data parameters
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`relating to a throughput of a communications
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`channel measured in bits per second; and
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`1[D]
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`select one or more asymmetric data compression
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`encoders from among the plurality of different
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`asymmetric data compression encoders based upon,
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`at least in part, the determined one or more data
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`parameters.
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`
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`The specification of the ‘477 patent makes clear that “data compression rate”
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`
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`refers to the “execution speed of the algorithm.” Id. at 1:63-67. Thus, Claim 1 and
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`its dependents require a “first asymmetric data compression encoder” that is
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`“configured to compress” at a higher execution speed than a “second asymmetric
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`data compression encoder.”
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`Independent Claim 20, by contrast, requires “a first video data compression
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`encoder . . . configured to compress at a higher compression ratio than a second
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`data compression encoder.” Thus, unlike Claim 1, which recites a compression
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`rate (i.e., speed), Claim 20 recites compression ratio (i.e., size of the compressed
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`data compared to the uncompressed data). Claim 20 further requires “at least one
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`of the video data compression encoders” to be “configured to utilize an arithmetic
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`data compression algorithm.” Claim 20 recites:
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`Element Claim 20
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`20[PR]
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`A system comprising;
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`20[A]
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`a plurality of video data compression encoders;
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`20[B]
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`wherein at least one of the plurality of video data
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`compression encoders
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`is configured
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`to utilize an
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`asymmetric data compression algorithm, and
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`20[C]
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`wherein at least one of the plurality of video data
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`compression encoders is configured to utilize an
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`arithmetic data compression algorithm,
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`20[D]
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`wherein a first video data compression encoder of
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`the plurality of video data compression encoders is
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`configured to compress at a higher compression
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`ratio than a second data compression encoder of the
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`plurality of data compression encoders; and
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`20[E]
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`one or more processors configured to:
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`determine one or more data parameters, at least one
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`of the determined one or more data parameters
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`relating to a throughput of a communications
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`channel; and
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`20[F]
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`select one or more video data compression encoders
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`from among the plurality of video data compression
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`encoders based upon, at least in part, the determined
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`one or more data parameters.
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`III. Petitioner’s proposed claim constructions
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`The Board does not construe claim terms unnecessary to resolve the
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`controversy. Shenzhen Liown Electronics Co. v. Disney Enterprises, Inc.,
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`IPR2015-01656, Paper 7 at 10 (Feb. 8, 2016) (citing Vivid Techs., Inc. v. Am. Sci.
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`& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
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`Petitioner has proposed constructions for the terms “asymmetric data
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`compression encoder[s],” “data blocks,” and “video or image data profile.” Pet. 6-
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`11. These terms do not require construction in order to resolve the parties’ dispute.
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`Rather, as this Preliminary Response demonstrates, the Board should deny
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`institution in full regardless of Petitioner’s proposed constructions of “asymmetric
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`data compression encoder[s],” “video or image data profile,” or “data blocks.”
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`Accordingly, the Board need not construe “asymmetric data compression
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`encoder[s],” “video or image data profile,” or “data blocks.”
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`IV. The Petition should be denied under § 325(d)
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`Under 35 U.S.C. § 325(d), the Board may, in its discretion, deny institution
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`of any Petition that presents “the same or substantially the same prior art or
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`arguments previously [ ] presented to the Office.” Neil Ziegmann, N.P.Z., Inc. v.
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`Carlis G. Stephens, IPR2015-01860, Paper 13 at 5-7 (September 6, 2017) (denying
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`rehearing of non-institution via expanded panel, including Chief Administrative
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`Patent Judge Ruschke and Deputy Chief Administrative Patent Judge Boalick).
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`“Section 325(d) informs that even where a petition may meet the elevated
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`standard of a reasonable likelihood that a challenger would prevail, the Office has
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`the discretion to deny the petition.” Id. at 7.
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`In determining whether to deny a Petition under § 325(d), the Board
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`conducts a two-step inquiry:
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`(1) whether the Petition presents “the same or substantially the same prior
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`art or arguments” as those previously presented to the Office, and if so;
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`(2) whether it is appropriate for the Board to exercise its discretion to deny
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`institution. Id. at 14-15.
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`As this section demonstrates, both requirements are met here, and institution
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`should be denied based on § 325(d) alone.
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`A. The Petition presents the same or substantially the same prior art
`previously before the Office
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`The Board has held that if a petition relies on a primary reference that is the
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`same art previously presented to the Office, that fact alone is “a sufficient basis”
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`for the Board to deny institution under § 325(d)—even if the Petition includes
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`other references that are not the same or substantially the same as those previously
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`before the Office. See Neil Ziegmann, N.P.Z., Inc. v. Carlis G. Stephens, IPR2015-
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`01860, Paper 13 at 21 n. 9 (September 6, 2017) (“Indeed, even if were [sic] to
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`accept Petitioner’s assertions concerning the secondary references, the presence of
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`Ziegmann alone, both in the Petition and the prosecution history, is a sufficient
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`basis to exercise our discretion under Section 325(d).”).
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`Here, the Petition is remarkably redundant of a prior petition by Netflix
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`itself. Netflix itself has previously asserted the primary reference in this petition,
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`Imai, against this same patent in an earlier IPR petition, including in combination
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`with Pauls. See IPR2018-01187, Paper 4 at 52-55. Indeed, the Petition’s entire
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`“Motivation to Combine” section for Ground 1 is copied almost verbatim from
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`Ground 3 of Netflix’s earlier petition. Compare IPR2018-01187, Paper 4 at 52-53
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`with Pet. 19-20. And Petitioner’s analysis of the shared limitations between the
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`independent and dependent claims is also copied directly from its earlier petition.
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`Compare IPR2018-01187, Paper 4 at 16-20 with Pet. 22-26; compare IPR2018-
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`01187, Paper 4 at 36-38 with Pet. 26-28; compare IPR2018-01187, Paper 4 at 20-
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`25 with Pet. 29-34; compare IPR2018-01187, Paper 4 at 38-40 with Pet. 34-36;
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`compare IPR2018-01187, Paper 4 at 25, 40 with Pet. 36-37; compare IPR2018-
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`01187, Paper 4 at 26-27 with Pet. 37-38; compare IPR2018-01187, Paper 4 at 41-
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`43 with Pet. 39-40; compare IPR2018-01187, Paper 4 at 59-61 with Pet. 41-42.
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`The Petition’s secondary reference, Pauls, was also asserted in the same
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`prior petition in the same combination, using the same language, against most of
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`the same limitations of the claims challenged here. Id. And Pauls was asserted
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`against all claims challenged here in a prior petition by Sony. Sony Corp. v.
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`Realtime Adaptive Streaming, IPR2018-01413, Paper 3 at 13 (asserting Pauls
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`against Claims 1-29).
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`Accordingly, the Board has discretion to deny institution under § 325(d).
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`IPR2015-01860, Paper 13 at 21 n. 9 (September 6, 2017) (“Indeed, even if were
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`[sic] to accept Petitioner’s assertions concerning the secondary references, the
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`presence of [the primary reference] alone, both in the Petition and the prosecution
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`history, is a sufficient basis to exercise our discretion under Section 325(d).”).
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`B.
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`The Board should deny institution
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`The Board has declined to institute under § 325(d) where a petitioner
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`asserted the same combination against similar claims already challenged in a
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`previous petition. In EchoStar v. Realtime Data, the petitioner challenged a new
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`claim based on a combination of references, most of which had previously been
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`asserted against other claims of the same patent by a different petitioner. IPR2018-
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`00614, Paper 10 at 7 (September 5, 2018). And the petition presented substantially
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`the same arguments against the newly-challenged claim that a previous petitioner
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`had presented against a similar claim with overlapping limitations. Id. at 8-11. The
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`Board concluded that, although the art had not been asserted against the newly-
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`challenged claim, the common issues underlying both claims would cause the
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`Board to re-evaluate the same issues if it were to institute a trial:
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`The previous proceedings against the ’728 patent have not challenged
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`claim 25, the claim challenged here, which weighs against denying
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`institution in this proceeding under § 325(d). As discussed above,
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`however, claim 25 is quite similar to claim 24, which was challenged
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`in those proceedings, and the arguments offered here are strikingly
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`similar to those presented in IPR2017-00179 with respect to the
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`obviousness of the subject matter of claim 24 over the same
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`combination of references asserted here. Thus, were we to institute trial
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`here, the issues to be tried already would have been decided by the
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`Board in the earlier proceedings.
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`Id. at 12.
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`Here too, the Board will need to re-evaluate all of the limitations of
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`independent Claims 1 and 20 presented in Netflix’s earlier petition in order to
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`address the obviousness of the dependent claims challenged here. Institution here
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`would thus merely waste the Board’s resources to go over the same art it is already
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`considering. Id. at 12-13 (denying institution “considering the efficient use of the
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`Board’s administrative resources”).
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`Indeed, this case is more egregious than EchoStar v. Realtime because the
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`same arguments are presented by the same petitioner. This Petition reflects a
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`blatant attempt to circumvent the Board’s word limit. The Patent Office has set a
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`limit of 14,000 words for inter partes review petitions. 37 CFR § 42.24(a)(1)(i).
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`And it has stated expressly that the word limit for a single petition should be
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`sufficient for any petitioner to seek review of any particular claims, “in all but
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`exceptional cases,” and that the petitioner “may seek waiver of the word limits in
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`appropriate circumstances” if they are not sufficient:
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`Although, the number of claims at issue may affect the length of
`a petition, more often, the page length is governed by the
`discussion of the substantive unpatentability issues presented.
`. . . The Office expects that the word limits for inter partes
`review petitions, covered business method patent review
`petitions, and post-grant review petitions will be sufficient in all
`but exceptional cases. Furthermore, petitioners may seek
`waiver of the word limits in appropriate circumstances. 37 CFR
`42.24(a)(2).
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`USPTO 2015 Proposed Amendments to Rules, 80 Fed. Reg. at 50,738 (emphasis
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`added).
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`Petitioner’s cumulative 27,953 words across the two Petitions nearly doubles
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`the word limit that should be “sufficient in all but exceptional cases.” See Pet. 85
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`(13,980 words); IPR2018-01187, Paper 4 at 80 (13,973 words). Petitioner has
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`offered no explanation for why multiple petitions were needed or any evidence that
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`this is an “exceptional case.”
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`Nor do the number or complexity of the challenged claims justify multiple
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`petitions. Indeed, Sony found one petition sufficient to challenge all claims of the
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`’477 patent. IPR2018-01413, Paper 3 at 13 (asserting Pauls against Claims 1-29).
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`Instead, Petitioner has simply used 13,953 words above the 14,000 word limit to
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`raise numerous redundant challenges against the same claims. For example, claims
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`1, 3-5, and 12-14 are each challenged in three separate grounds in the first petition.
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`See IPR2018-01187, Paper 4 at 3 (listing claims challenged by each ground).
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`The Board should decline to waste its resources re-evaluating arguments that
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`Petitions have repeated in this second petition in an effort to evade the Board’s
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`word limit. The Board should deny institution based on § 325(d).
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`V. The Petition should be denied under § 314(a) per General Plastic
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`The Board has recognized that § 314(a) provides an additional discretionary
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`basis for denying institution of “follow on” petitions. General Plastic Indus. Co. v.
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`Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (Sept. 6, 2017). The Board
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`has exercised its discretion under § 314(a) to deny institution of a subsequent
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`petition against a previously challenged patent, applying the seven-factor test set
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`forth in General Plastic. See, e.g., NetApp v. Realtime Data, IPR2017-01195,
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`Paper 9 at 10 (Oct. 12, 2017).
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`The General Plastic factors similarly warrant non-institution here.
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`Factor 1 addresses “whether the same petitioner previously filed a petition
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`directed to the same claims of the same patent.” IPR2016-01357, Paper 19 at 9.
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`This factor weighs against institution.
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`Netflix’s earlier petition challenged the independent claims from which all
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`the claims challenged in this second Petition depend. IPR2018-01187, Paper 4 at 3.
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`The Board has found that Factor 1 weighs in favor of denying institution in such
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`circumstances. In Apple v. Immersion Corp., IPR2017-01371, the Board addressed
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`a second petition challenging claims depending from those challenged in a
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`previous petition. Paper 7 at 11-13 (November 21, 2017). It found that Factor 1
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`weighed against institution because “Challenges to these dependent claims must
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`necessarily invoke challenges to the independent claims from which they depend,”
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`and denied institution. Id at 11, 17; Fujifilm v. Sony, IPR2018-00060, Paper 8 at 8-
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`9 (finding that all factors weigh against institution where “although different
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`claims are involved, many of the issues addressed in the [previous proceeding]
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`would be present in the instant proceeding”).
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`Here too, the Petition’s challenges to the dependent claims “must necessarily
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`invoke challenges to the independent claims from which they depend,” and both
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`independent claims were challenged in Netflix’s earlier petition. Apple v.
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`Immersion Corp., IPR2017-01371, Paper 7 at 11. That is highlighted by the
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`Petitioner’s copying of the motivation to combine and virtually all of the analysis
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`of the independent claims from its prior petition. Supra at Section IV.A.
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`Moreover, as in Apple, “Petitioner does not explain adequately why it could not
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`have addressed dependent claims [7, 8, 15–19, 23, 24, 28, and 29] in the First
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`Petition.” Apple v. Immersion Corp., IPR2017-01371, Paper 7 at 12-13.
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`Accordingly, Factor 1 weighs strongly against institution.
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`Factor 2 addresses “whether at the time of filing the first petition the
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`petitioner knew of the prior art asserted in the second petition or should have
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`known of it.” IPR2016-01357, Paper 19 at 9. This factor weighs strongly against
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`institution.
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`Not only did Netflix know of Imai and Pauls, it asserted them in the exact
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`same combination in its prior petition. And Dawson, the Petition’s third reference,
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`is listed on page 3 of the ‘477 Patent. The Petition offers no reason it could not
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`have located Lai, a publicly-available US patent, prior to filing the instant petition.
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`Accordingly, this factor also weighs against institution. Apple v. Immersion Corp,
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`IPR2017-01371, Paper 7 at 14 (“Because Petitioner knew or should have known of
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`three out of the four references, including the two primary references, asserted in
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`its Second Petition when it filed its First Petition, and provided no explanation of
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`why it could not have raised the last reference in the First Petition, this factor
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`weighs against institution.”).
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`Factor 3 considers the extent to which a later petitioner had the opportunity
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`to “tailor its arguments to address issues identified by the patent owner and/or the
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`Board during a prior proceeding.” IPR2017-01354, Paper 16 at 11. This factor
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`weighs strongly against institution.
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`As the Board recognized in General Plastic, the use of “multiple, staggered
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`petitions challenging the same patent and same claims” creates “the potential for
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`abuse,” allows later petitioners to use prior proceedings “as a roadmap,” and is
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`“unfair to patent owners.” IPR2016-01357, Paper 19 at 17-18. That is the case
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`here.
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`Netflix filed this second Petition almost two months after Sony filed its
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`petition—also based on Pauls and challenging the same claims. See IPR2018-
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`01413 (filed July 31, 2018). Netflix thus had ample opportunity to study Sony’s
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`petition and use it as a roadmap for its own arguments.
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`Moreover, Petitioner filed this Petition almost four months after its first
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`petition based on the same combination. IPR2018-01187 (filed June 4, 2018). If
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`this proceeding and the prior petition were both instituted (which neither should
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`be), Netflix and its expert will have the opportunity to track Realtime’s arguments
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`and evidence in the prior proceeding at every step, and adjust their tactics
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`accordingly. Given that both proceedings rely on the same combination and make
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`essentially the same arguments, the ability to adjust tactics based on the earlier
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`proceeding would be especially prejudicial.
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`As the Board observed in General Plastic, such an approach would be
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`“unfair,” and abusive, and would allow Petitioner to simply use prior proceedings
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`as a roadmap—precisely the outcome General Plastic has eschewed. Accordingly,
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`Factor 3 weighs strongly against institution here.
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`Factor 4 addresses Petitioner’s delay between learning of the art and filing
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`the petition. IPR2017-01195, Paper 9 at 11-12. This factor also weighs strongly
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`against institution. Netflix was sued in November of 2017, see Case No. 1:17-cv-
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`0692 (D. Del), but waited ten months to file this Petition, despite filing a petition
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`based on the same combination of Imai and Pauls almost four months earlier.
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`Meanwhile, Dawson was readily available to Petitioner on page 3 of the patent.
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`And the Petition provides no reason—whether by way of excuse or justification—
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`for why it could not have located Lai (a U.S. patent) or filed this Petition earlier.
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`Those facts thus indicate that Netflix engaged in deliberate and unnecessary delay.
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`Under much less egregious circumstances, the Board has found that factor
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`four weighs against institution. See NetApp v. Realtime, IPR2017-01354, Paper 16
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`at 12 (noting that the “record contains no evidence that NetApp could not have
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`located the fourth reference, Chu (a U.S. patent)” earlier); see also NetApp v.
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`Realtime, IPR2017-01195, Paper 9 at 12 (Oct. 12, 2017) (“The record also contains
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`no evidence that NetApp could not have located Kitagawa (a U.S. patent) at an
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`earlier date.”).
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`On this record, Factor 4 very strongly warrants against institution.
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`Factor 5, which relates to Petitioner’s explanation for any delay, also weighs
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`strongly against institution. As explained above, Petitioner provides no explanation
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`at all for the delay in filing this Petition, despite having drafted much of it four
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`months earlier.
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`Factor 6 relates to the finite resources of the Board. This factor too weighs
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`strongly against institution. Instituting this third Petition on the same patent—
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`addressing the same claims and art as the Sony petition and the same combination
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`of references as Netflix’s first petition—would create a waste of the Board’s
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`resources. See NetApp v. Realtime, IPR2017-01354, Paper 16 at 13 (concluding
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`that requiring “the Board to conduct an entirely separate proceeding involving he
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`same patent, all but one of the same claims, and three of the five same prior art
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`references” “would be a significant waste of the Board’s resources”). Moreover,
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`institution would also cause significant prejudice to Patent Owner, which would be
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`forced to repeatedly defend the ’477 patent against the same art at significant cost
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`and delay. Id.
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`Factor 7 considers the Board’s ability to resolve the proceeding within a
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`year. That factor also weighs against institution. The Board has consistently found
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`that Factor 7 weighs against institution where (1) the filer of a follow-on petition
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`fails to seek coordination or consolidation with a co-pending petition; and (2)
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`coordination or consolidation would be practical. For example, in NetApp v.
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`Realtime Data, the Board found that the petitioner’s failure to seek coordination or
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`consolidation with the “still pending . . . IPRs [which] are not so advanced that
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`coordination would be impractical” prevented the Board from disposing of the
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`petitions efficiently. See NetApp v. Realtime Data, IPR2017-01354, Paper 16 at 13.
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`It concluded that “conduct[ing] . . . an entirely separate proceeding” would be “a
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`significant waste of the Board’s resources.” Id.; see also NetApp v. Realtime Data,
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`IPR2017-01195, Pape