IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––
`
`ARRIS SOLUTIONS, INC.,
`Petitioner
`
`v.
`
`REALTIME ADAPTIVE STREAMING LLC,
`Patent Owner
`
`––––––––––
`
`Patent No. 8,934,535
`Issued: January 13, 2015
`Filed: September 20, 2013
`Title: SYSTEMS AND METHODS FOR VIDEO AND AUDIO
`DATA STORAGE AND DISTRIBUTION
`
`––––––––––
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c),
`37 C.F.R. § 42.122(b) TO RELATED
`INTER PARTES REVIEW IPR2018-01169
`
`
`
`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––
`
`ARRIS SOLUTIONS, INC.,
`Petitioner
`
`v.
`
`REALTIME ADAPTIVE STREAMING LLC,
`Patent Owner
`
`––––––––––
`
`Patent No. 8,934,535
`Issued: January 13, 2015
`Filed: September 20, 2013
`Title: SYSTEMS AND METHODS FOR VIDEO AND AUDIO
`DATA STORAGE AND DISTRIBUTION
`
`––––––––––
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c),
`37 C.F.R. § 42.122(b) TO RELATED
`INTER PARTES REVIEW IPR2018-01169
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`II.
`III.
`
`Statement of Precise Relief Requested ............................................................ 1
`Statement of Material Facts and Related Proceedings .................................... 2
`Statement of Reasons for Relief Requested .................................................... 7
`A.
`Legal Standard ....................................................................................... 7
`
`B.
`
`C.
`
`Petitioner’s Motion for Joinder is Timely ............................................. 8
`
`Each Factor Weighs in Favor of Joinder ............................................... 8
`
`1.
`2.
`3.
`
`Joinder with the Netflix IPR is Appropriate ............................... 8
`Petitioner Proposes No New Grounds of Unpatentability .......... 9
`Joinder Will Not Unduly Burden or Negatively Impact
`the Netflix IPR Trial Schedule .................................................... 9
`Petitioner Proposes Procedures to Simplify Briefing and
`Discovery .................................................................................. 10
`IV. Conclusion ..................................................................................................... 13
`
`4.
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`Kyocera Corp. v. Softview LLC,
`Case No. IPR2013-00004, slip op. (PTAB Apr. 24, 2013) .................................. 6
`
`Mylan Pharmaceuticals Inc. v. Dr. Falk Pharma GmbH,
`Case No. IPR2016-01386, slip op. (PTAB Nov. 30, 2016) ............................... 10
`
`Mylan Pharms. Inc. v. Novartis AG,
`Case No. IPR2015-00268, slip op. (PTAB Apr. 10, 2015) .................................. 9
`
`Samsung Elecs., Co., Ltd., et al. v. Raytheon Co.,
`Case No. IPR2016-00962, slip op. (PTAB Aug. 24, 2016) ............................. 6, 7
`
`Sony Corp. v. Memory Integrity, LLC,
`Case No. IPR2015-01353, slip op. (PTAB Oct. 15, 2015) ............................ 8, 10
`
`STATUTES
`
`35 U.S.C. § 315(b) ..................................................................................................... 5
`
`35 U.S.C. § 315(c) ................................................................................................. 1, 5
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.53 ....................................................................................................... 9
`
`37 C.F.R. § 42.122(b) ........................................................................................ 1, 5, 6
`
`ii
`
`
`
`I.
`
`Statement of Precise Relief Requested
`
`ARRIS Solutions, Inc. (“Petitioner”) respectfully submits this Motion for
`
`Joinder together with a Petition for Inter Partes Review of U.S. Patent No.
`
`8,394,535 (“ARRIS Petition”) filed contemporaneously herewith. The Board
`
`instituted inter partes review of claims 1–14 of the ’535 Patent in Netflix, Inc., v.
`
`Realtime Adaptive Streaming LLC, Case No. IPR2018-01169 on January 17, 2019
`
`(“Netflix IPR”). Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), ARRIS
`
`requests institution of inter partes review for claims 1-14 of the ’535 Patent and
`
`requests joinder with IPR2018-01169.
`
`ARRIS’s request for joinder is timely because it is made no later than one
`
`month after the January 17, 2019 institution date of the Netflix IPR. The ARRIS
`
`Petition is substantively identical to the Netflix Petition, and ARRIS only seeks
`
`institution on the same claims, prior art, and grounds for unpatentability that were
`
`instituted in the Netflix IPR. Therefore, the ARRIS Petition warrants institution for
`
`at least the same reasons that the Board instituted the Netflix IPR. In addition,
`
`ARRIS proposes to streamline discovery and briefing by taking an “understudy
`
`role.” ARRIS submits that joinder is appropriate because it will not unduly burden
`
`or prejudice the parties to the Netflix IPR while efficiently resolving the question
`
`of the ’535 Patent’s validity in a single proceeding.
`
`1
`
`
`
`II.
`
`Statement of Material Facts and Related Proceedings
`
`1.
`
`On November 21, 2017, Realtime Adaptive Streaming LLC (“Patent
`
`Owner”) filed a civil action alleging that Netflix, Inc. infringes the ’535 Patent, as
`
`well as five other patents. Realtime Adaptive Streaming LLC v. Netflix, Inc. et al.,
`
`Case No. 1:17-cv-01692 (D. Del.).
`
`2.
`
`Netflix filed a petition for inter partes review of the ’535 Patent on
`
`June 4, 2018. Netflix, Inc., v. Realtime Adaptive Streaming LLC, Case No.
`
`IPR2018-01169.
`
`3.
`
`On January 17, 2019, the Board instituted a trial on all challenged
`
`claims (claims 1–14). Id. (Paper 20).
`
`4.
`
`On November 6, 2017 Realtime Adaptive Streaming LLC, filed a
`
`second amended complaint in a separate ongoing civil action in the United States
`
`District Court for the District of Colorado alleging that ARRIS infringes the ’535
`
`Patent, as well as one of the other patents asserted against Netflix. Realtime Data
`
`LLC d/b/a IXO v. Sling TV LLC, Case No. 1:17-cv-02097 (D. Colo.).
`
`5.
`
`The ’535 Patent is further the subject of the following judicial or
`
`administrative matters:
`
`• Sling TV LLC et al v. Realtime Adaptive Streaming LLC, IPR2018-
`
`01331, Patent Trial and Appeal Board;
`
`2
`
`
`
`• Sling TV LLC, et al., v. Realtime Adaptive Streaming LLC, IPR2018-
`
`01332, Patent Trial and Appeal Board;
`
`• Sling TV LLC, et al., v. Realtime Adaptive Streaming LLC, IPR2018-
`
`01342, Patent Trial and Appeal Board;
`
`• Unified Patents Inc. v. Realtime Adaptive Streaming LLC, IPR2018-
`
`00883, Patent Trial and Appeal Board;
`
`• Hulu, LLC, Amazon.com, Inc., and Netflix, Inc. v. Realtime Adaptive
`
`Streaming LLC, IPR2018-01170, Patent Trial and Appeal Board;
`
`• Hulu, LLC v. Realtime Adaptive Streaming LLC, IPR2018-01090,
`
`Patent Trial and Appeal Board;
`
`• Hulu, LLC et al v. Realtime Adaptive Streaming LLC, IPR2018-
`
`01169, Patent Trial and Appeal Board;
`
`• Amazon.com, Inc. et al v. Realtime Adaptive Streaming LLC,
`
`IPR2018-01187, Patent Trial and Appeal Board;
`
`• Hulu, LLC et al v. Realtime Adaptive Streaming LLC, IPR2018-
`
`01195, Patent Trial and Appeal Board;
`
`• Hulu, LLC et al v. Realtime Adaptive Streaming LLC, IPR2018-
`
`01189, Patent Trial and Appeal Board;
`
`• Amazon.com, Inc. et al v. Realtime Adaptive Streaming LLC,
`
`IPR2018-01227, Patent Trial and Appeal Board;
`
`3
`
`
`
`• Sony Corporation et al v. Realtime Adaptive Streaming LLC,
`
`IPR2018-01299, Patent Trial and Appeal Board;
`
`• Cisco Systems, Inc. v. Realtime Adaptive Streaming LLC, IPR2018-
`
`01384, Patent Trial and Appeal Board;
`
`• Sony Corporation et al v. Realtime Adaptive Streaming LLC,
`
`IPR2018-01413, Patent Trial and Appeal Board;
`
`• Sony Corporation et al v. Realtime Adaptive Streaming LLC,
`
`IPR2018-01439, Patent Trial and Appeal Board;
`
`• Netflix, Inc. et al v. Realtime Adaptive Streaming LLC, IPR2018-
`
`01630, Patent Trial and Appeal Board;
`
`• Netflix, Inc. et al v. Realtime Adaptive Streaming LLC, IPR2018-
`
`01817, Patent Trial and Appeal Board;
`
`• Netflix, Inc. et al v. Realtime Adaptive Streaming LLC, IPR2019-
`
`00209, Patent Trial and Appeal Board;
`
`• Realtime Adaptive Streaming v. Adobe Systems Inc., Case No. 2:18-
`
`cv-09344, Central District of California;
`
`• Realtime Adaptive Streaming LLC v. Hulu, LLC, Case No. 2:17-cv-
`
`07611, Central District of California;
`
`• Realtime Adaptive Streaming LLC v. Google LLC et al., Case No.
`
`2:18-cv-03629, Central District of California;
`
`4
`
`
`
`• Realtime Adaptive Streaming LLC v. Cox Communications, Inc., Case
`
`No. 8:18-cv-00942, Central District of California;
`
`• Realtime Data LLC d/b/a IXO v. Sling TV LLC et al, Case No. 1:17-
`
`cv-02097, District of Colorado;
`
`• Realtime Adaptive Streaming LLC v. Apple Inc., Case No. 1:17-cv-
`
`02869, District of Colorado;
`
`• Realtime Adaptive Streaming LLC v. Avaya, Inc., Case No. 1:18-cv-
`
`01046, District of Colorado;
`
`• Realtime Adaptive Streaming LLC v. Broadcom Corporation et al.,
`
`Case No. 1:18-cv-01048, District of Colorado;
`
`• Realtime Adaptive Streaming LLC v. Charter Communications, Inc. et
`
`al, Case No. 1:18-cv-01345, District of Colorado;
`
`• Realtime Adaptive Streaming, LLC v. Comcast Cable
`
`Communications, LLC d/b/a Xfinity et al, Case No. 1:18-cv-01446,
`
`District of Colorado;
`
`• Realtime Adaptive Streaming LLC v. Polycom, Inc., Case No. 1:17-
`
`cv-02692, District of Colorado;
`
`• Realtime Adaptive Streaming LLC v. Advanced Micro Devices, Inc.,
`
`Case No. 1:18-cv-01173, District of Colorado;
`
`5
`
`
`
`• Realtime Adaptive Streaming LLC v. Intel Corporation, Case No.
`
`1:18-cv-01175, District of Colorado;
`
`• Realtime Adaptive Streaming LLC v. Mitel Networks, Inc., Case No.
`
`1:18-cv-01177, District of Colorado;
`
`• Realtime Adaptive Streaming LLC v. Wowza Media Systems LLC,
`
`Case No. 1:18-cv-00927, District of Colorado;
`
`• Realtime Adaptive Streaming LLC v. Brightcove Inc. et al, Case No.
`
`1:17-cv-01519, District of Delaware;
`
`• Realtime Adaptive Streaming LLC v. Haivision Network Video Inc.,
`
`Case No. 1:17-cv-01520, District of Delaware;
`
`• Realtime Adaptive Streaming LLC v. Netflix, Inc. et al, Case No. 1:17-
`
`cv-01692, District of Delaware;
`
`• Realtime Adaptive Streaming LLC v. Sony Electronics Inc., Case No.
`
`1:17-cv-01693, District of Delaware;
`
`• Realtime Adaptive Streaming LLC v. Adobe Systems Incorporated,
`
`Case No. 1:18-cv-10355, District of Massachusetts;
`
`• Realtime Adaptive Streaming LLC v. Amazon.com, Inc. et al, Case
`
`No. 6:17-cv-00549, Eastern District of Texas;
`
`• Realtime Adaptive Streaming LLC v. EchoStar Technologies, LLC et
`
`al, Case No. 6:17-cv-00567, Eastern District of Texas;
`
`6
`
`
`
`• Realtime Adaptive Streaming LLC v. Cisco Systems, Inc., Case No.
`
`6:17-cv-00591, Eastern District of Texas;
`
`• Realtime Adaptive Streaming LLC v. Samsung Electronics Co., Ltd. et
`
`al, Case No. 6:18-cv-00113, Eastern District of Texas;
`
`• Realtime Adaptive Streaming LLC v. LG Electronics Inc. et al, Case
`
`No. 6:18-cv-00215, Eastern District of Texas.
`
`III.
`
`Statement of Reasons for Relief Requested
`
`Legal Standard
`A.
`The Board may join as a party to an instituted inter partes review a person
`
`who has properly filed a petition for inter partes review that warrants institution.
`
`35 U.S.C. § 315(c). A motion requesting joinder must be filed no later than one
`
`month after the date of institution for the inter partes review to which the person
`
`seeks joinder. 37 C.F.R. § 42.122(b). In addition, a petition for inter partes review
`
`is not subject to the one-year statutory time bar when the petition is accompanied
`
`by a request for joinder. 35 U.S.C. § 315(b); 37 C.F.R. § 42.122(b).
`
`A motion for joinder should (1) set forth reasons why joinder is appropriate;
`
`(2) identify any new grounds of unpatentability asserted in the petition; (3) explain
`
`what impact (if any) joinder would have on the trial schedule for the existing
`
`review; and (4) address specifically how briefing and discovery may be simplified.
`
`Samsung Elecs., Co., Ltd., et al. v. Raytheon Co., Case No. IPR2016-00962, slip
`
`7
`
`
`
`op. at 5 (PTAB Aug. 24, 2016) (Paper 12) (citing Kyocera Corp. v. Softview LLC,
`
`Case No. IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15)).
`
`B.
`
`Petitioner’s Motion for Joinder is Timely
`
`This Motion for Joinder is timely because it is filed within one month of the
`
`January 17, 2019 institution of the Netflix IPR. See 37 C.F.R. § 42.122(b).
`
`Furthermore, the one-year bar set forth in 37 C.F.R. § 42.101(b) does not apply to
`
`the ARRIS Petition because it was filed concurrently with this Motion for Joinder.
`
`37 C.F.R. § 42.122(b).
`
`C.
`
`Each Factor Weighs in Favor of Joinder
`
`1.
`
`Joinder with the Netflix IPR is Appropriate
`
`Joinder with the Netflix IPR is appropriate because the ARRIS Petition
`
`involves the same patent, challenges the same claims, relies on the same expert
`
`declaration, and is based on the same grounds and combinations of prior art
`
`submitted in the Netflix Petition. Further, the ARRIS Petition relies solely on
`
`grounds from the Netflix Petition that the Board instituted on January 17, 2019.
`
`The ARRIS Petition is substantively identical to the Netflix Petition, containing
`
`only minor differences related to the formalities required by a different party filing
`
`the petition. Other than these minor differences that stem from filing formalities,
`
`there are no changes to the facts, citations, evidence or arguments presented in the
`
`ARRIS Petition. Therefore, the ARRIS Petition warrants institution for at least the
`
`same reasons that the Board instituted the Netflix Petition. Because these
`
`8
`
`
`
`proceedings are substantively identical, good cause exists for joinder with the
`
`Netflix IPR so that the Board can efficiently resolve all grounds in a single
`
`proceeding.
`
`In addition, the substantial questions of invalidity as to the ’535 Patent are of
`
`interest to ARRIS, which stands accused of infringing the ’535 Patent, as well to
`
`the broader public interest in the likely invalidity of an issued patent. Joinder is
`
`therefore appropriate for the additional reason that the invalidity grounds as to the
`
`challenged and joined claims can be resolved through the participation of ARRIS
`
`even if the original petitioner, Netflix, were to reach a settlement with Patent
`
`Owner, or otherwise cease to participate in the proceeding.
`
`2.
`
`Petitioner Proposes No New Grounds of Unpatentability
`
`As discussed above, the ARRIS Petition does not present any new grounds
`
`of unpatentability, and is substantively identical to the Netflix Petition. This factor
`
`weighs in favor of granting joinder because the Board “routinely grants motions
`
`for joinder where the party seeking joinder introduces identical arguments and the
`
`same grounds raised in the existing proceeding.” Samsung Elecs. Co., slip op. at 9
`
`(internal quotations and citations omitted) (emphases in the original).
`
`3.
`
`Joinder Will Not Unduly Burden or Negatively Impact the
`Netflix IPR Trial Schedule
`
`Because the ARRIS Petition is substantively identical to the Netflix Petition,
`
`with the same grounds challenging the same claims, as instituted by the Board,
`
`9
`
`
`
`there are no new issues for Patent Owner to address. Due to the same issues being
`
`presented in the Netflix Petition, Patent Owner will not be required to present any
`
`additional responses or arguments. See Sony Corp. v. Memory Integrity, LLC,
`
`IPR2015-01353, slip op. at 6 (PTAB Oct. 15, 2015) (Paper 11) (granting IPR and
`
`motion for joinder where “joinder should not necessitate any additional briefing or
`
`discovery from Patent Owner beyond that already required in [the original IPR].”).
`
`Without any new issues present, there is no reason to delay or alter the trial
`
`schedule already present in the Netflix IPR, and ARRIS explicitly consents to the
`
`existing trial schedule. Further, the Patent Owner Preliminary Response already
`
`filed in the Netflix IPR addresses any and all issues in the ARRIS Petition because
`
`the issues are substantively identical to the issues of the Netflix Petition. See Patent
`
`Owner’s Preliminary Response, Case No. IPR2018-01169 (Paper 19).
`
`The Patent Owner Response will not be negatively impacted because the
`
`issues presented in the Netflix Petition are identical to the issues presented in the
`
`ARRIS Petition. Patent Owner will not be required to provide any additional
`
`analysis or arguments beyond what it will already provide in responding to the
`
`Netflix Petition. Also, because the ARRIS Petition relies on the same expert and a
`
`substantively identical declaration, only a single deposition is needed for the
`
`proposed joined proceeding.
`
`4.
`
`Petitioner Proposes Procedures to Simplify Briefing and
`Discovery
`
`10
`
`
`
`Additionally, ARRIS agrees to take an “understudy” role in the joined
`
`proceeding, absent termination of the original petitioner, Netflix, as a party. In
`
`particular, ARRIS agrees that, in the joined proceeding, the following conditions
`
`shall apply so long as Netflix remains an active party, as previously approved by
`
`the Board in similar circumstances:
`
`(a)
`
`all filings by ARRIS in the joined proceeding be consolidated with the
`
`filings of the Netflix, unless a filing solely concerns issues that do not
`
`involve Netflix;
`
`(b) ARRIS shall not be permitted to raise any new grounds not already
`
`instituted by the Board, or introduce any argument or discovery not
`
`already introduced by Netflix;
`
`(c) ARRIS shall be bound by any agreement between Patent Owner and
`
`Netflix concerning discovery and/or depositions; and
`
`(d) ARRIS at deposition shall not receive any direct, cross examination or
`
`redirect time beyond that permitted for Netflix in this proceeding
`
`alone under either 37 C.F.R. § 42.53 or any agreement between Patent
`
`Owner and Netflix.
`
`See Mylan Pharms. Inc. v. Novartis AG, Case No. IPR2015-00268, slip op. at 5–6
`
`(PTAB Apr. 10, 2015) (Paper 17) (finding that same proposed limitations “are
`
`consistent with the ‘understudy’ role that Petitioner agrees to assume, as well as
`
`11
`
`
`
`Petitioner’s assertion that its presence would not require introducing any additional
`
`arguments, briefing, or discovery.”).
`
`ARRIS would assume a primary role only if Netflix ceased to participate in
`
`the proceeding. The Board has consistently found that that the acceptance of an
`
`“understudy” role removes any undue complications or delay that might allegedly
`
`result from joinder. See, e.g., Sony Corp. v. Memory Integrity, LLC, Case No.
`
`IPR2015-01353, slip op. at 7 (PTAB Oct. 15, 2015) (Paper 11); see also Mylan
`
`Pharmaceuticals Inc. v. Dr. Falk Pharma GmbH, Case No. IPR2016-01386, slip
`
`op. at 6 (PTAB Nov. 30, 2016) (Paper 9).
`
`Moreover, since no party to the Netflix IPR has notified1 ARRIS that it
`
`intends to oppose this motion for joinder, it is unlikely that any additional briefing
`
`by any party would be required by virtue of this motion.
`
`1 Netflix has affirmatively indicated to ARRIS that it does not oppose this motion.
`
`Patent Owner stated the following: “Patent Owner takes no position on the
`
`statements in this motion but does not oppose the relief sought.”
`
`12
`
`
`
`IV. Conclusion
`
`For the reasons stated above, ARRIS respectfully requests that the Board
`
`institute ARRIS’s concurrently filed Petition for Inter Partes Review of U.S.
`
`Patent No. 8,934,535, and grant joinder with the Netflix, Inc., v. Realtime Adaptive
`
`Streaming LLC, Case No. IPR2018-01169 proceeding.
`
`Dated: February 15, 2019
`
`Respectfully submitted,
`
`BAKER BOTTS L.L.P.
`
`/Jennifer Librach Nall/
`
`Jennifer Librach Nall
`Reg. No. 57,053
`98 San Jacinto Blvd
`Suite 1500
`Austin, TX 78701-4078
`Phone: (512) 322-2500
`Facsimile: (512) 322-2501
`jennifer.nall@bakerbotts.com
`
`LEAD ATTORNEY FOR PETITIONER
`ARRIS Solutions, Inc.
`
`13
`
`
`
`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e), 42.105(a))
`
`The undersigned hereby certifies that on February 15, 2019, true and correct
`
`copies of the foregoing MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c),
`
`37 C.F.R. § 42.122(b) TO RELATED INTER PARTES REVIEW IPR2018-
`
`01169 was served in its entirety on the following parties via FedEx Express® or
`
`Express Mail:
`
`Shami Messinger PLLC
`1000 Wisconsin Ave. NW, Suite 200
`Washington, DC 20007
`
`Harper Batts
`Chris Ponder
`Jeffrey Liang
`SHEPPARD MULLIN RICHTER &
`HAMPTON L.L.P.
`379 Lytton Avenue
`Palo Alto, CA 94301
`
`Neil A. Rubin
`Kent Shum
`RUSS AUGUST & KABAT
`12323 Wilshire Boulevard, 12th Floor
`Los Angeles, CA 90025
`
`BAKER BOTTS L.L.P.
`
`/Jennifer Librach Nall/
`Jennifer Librach Nall (Reg. No. 57,053)
`Lead Attorney for Petitioner
`
`Date: February 15, 2019
`
`98 San Jacinto Boulevard
`Suite 1500
`Austin, TX 78701-4078
`(512) 322-2500
`
`1
`
`
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