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`___________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________
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`COMCAST CABLE COMMUNICATIONS, LLC
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`Petitioner
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`v.
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`REALTIME ADAPTIVE STREAMING, LLC
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`Patent Owner
`
`___________
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`Patent No. 8,934,535
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`___________
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`MOTION FOR JOINDER
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`I.
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`INTRODUCTION
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`Petitioner Comcast Cable Communications, LLC (“Petitioner” or
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`“Comcast”) submits concurrently with this motion a petition for inter partes
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`review of U.S. Patent No. 8,934,535 (the “’535 Patent”) based on the identical
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`grounds that form the basis for the pending inter partes review initiated by Netflix,
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`Inc. concerning the same patent: Case No. IPR2018-01169 (the “Netflix IPR”).
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`Petitioner respectfully requests that the accompanying petition be instituted
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`and moves the Board to join this proceeding with the Netflix IPR pursuant to 35
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`U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b). Petitioner merely requests
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`an opportunity to join with the Netflix IPR as an “understudy” to Netflix, only
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`assuming an active role in the event Netflix settles with Patent Owner Realtime
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`Adaptive Streaming, LLC (“Realtime”). Petitioner does not seek to alter the
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`grounds upon which the Board has already instituted the Netflix IPR, and joinder
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`will have no impact on the Netflix IPR’s existing schedule. Petitioner has
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`conferred with counsel for Netflix and confirmed that it does not oppose this
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`motion. This motion is timely as it was filed within one month of the institution of
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`IPR2018-01169. 35 U.S.C. § 21(b); 37 C.F.R. § 42.122(b).
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`II.
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`BACKGROUND AND RELATED PROCEEDINGS
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`In 2017 and 2018, Realtime filed a number of lawsuits alleging infringement
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`of various patents including the ’535 Patent. As noted above, Realtime sued
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`1
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`Netflix for infringement of several patents including the ’535 Patent in the District
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`of Delaware in November 2017. Realtime sued Comcast for infringement of
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`several patents including the ’535 Patent in the District of Colorado in June 2018.
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`The ’535 Patent has been asserted in the following lawsuits:
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`• Realtime Data LLC d/b/a IXO v. Echostar Corp., Case No. 6:17-cv-84
`(E.D. Tex.);
`
`• Realtime Data LLC d/b/a IXO v. DISH Network Corporation et al., Case
`No. 6:17-cv-00421 (E.D. Tex.);
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`• Realtime Adaptive Streaming LLC v. Sling TV, LLC, Case No. 1:17-
`cv2097 (D. Colo.);
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`• Realtime Adaptive Streaming LLC v. Amazon.com, Inc., Case No. 6:17-
`cv-549 (E.D. Tex.);
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`• Realtime Adaptive Streaming LLC v. EchoStar Technologies, LLC et al.,
`Case No. 6:17-cv-00567 (E.D. Tex.);
`
`• Realtime Adaptive Streaming LLC v. Hulu, LLC, Case No. 2:17-cv-7611
`(C.D. Cal.);
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`• Realtime Adaptive Streaming LLC v. Cisco Systems, Inc., Case No. 6:17-
`cv-591 (E.D. Tex.);
`
`• Realtime Adaptive Streaming LLC v. Brightcove, Inc., Case No. 1:17-cv-
`1519 (D. Del.);
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`• Realtime Adaptive Streaming LLC v. Haivision Network Video, Inc., Case
`No. 1:17-cv-1520 (D. Del.);
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`• Realtime Adaptive Streaming LLC v. Polycom, Inc., Case No. 1:17-cv-
`2692 (D. Colo.);
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`• Realtime Adaptive Streaming LLC v. Netflix, Inc., Case No. 1:17-cv-1692
`(D. Del.);
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`2
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`
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`• Realtime Adaptive Streaming LLC v. Sony Elecs., Inc., Case No. 1:17-cv-
`1693 (D. Del.);
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`• Realtime Adaptive Streaming LLC v. Apple, Inc., Case No. 1:17-cv-2869
`(D. Colo.);
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`• Realtime Adaptive Streaming LLC v. Adobe Systems Inc., Case No. 1:18-
`cv-10355 (D. Mass.);
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`• Realtime Adaptive Streaming LLC v. Samsung Elec. Co., Ltd., Case No.
`6:18-cv-00113 (E.D. Tex.);
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`• Realtime Adaptive Streaming LLC v. Wowza Media Systems LLC, Case
`No. 1:18-cv-00927 (D. Colo.);
`
`• Realtime Adaptive Streaming LLC v. Google LLC et al, Case No. 2:18-
`cv-03629 (C.D. Cal.);
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`• Realtime Adaptive Streaming LLC v. Avaya Inc., Case No. 1:18-cv-01046
`(D. Colo.);
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`• Realtime Adaptive Streaming LLC v. Broadcom Corporation et al., Case
`No. 1:18-cv-01048 (D. Colo.);
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`• Realtime Adaptive Streaming LLC v. LG Electronics Inc. et al, Case No.
`6:18-cv-00215 (E.D. Tex.);
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`• Realtime Adaptive Streaming LLC v. Advanced Micro Devices, Inc., Case
`No. 1:18-cv-01173 (D. Colo.);
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`• Realtime Adaptive Streaming LLC v. Intel Corporation, Case No. 1:18-
`cv-01175 (D. Colo.);
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`• Realtime Adaptive Streaming LLC v. Mitel Networks, Inc., Case No.
`1:18- cv-01177 (D. Colo.);
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`• Realtime Adaptive Streaming LLC v. Charter Communications, Inc. et al,
`Case No. 1:18-cv-01345 (D. Colo.);
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`• Realtime Adaptive Streaming LLC v. Cox Communications, Inc., Case
`No. 8:18-cv-00942 (C.D. Cal.); and
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`3
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`
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`• Realtime Adaptive Streaming LLC v. Comcast Cable Communications,
`LLC, Case No. 1:18:cv-01446 (D. Colo.).
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`Several of these lawsuits have since been dismissed.
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`In June 2018, Hulu, LLC, Amazon.com, Inc., and Netflix, Inc. filed a
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`petition for inter partes review challenging claims 1-14 of the ’535 Patent. Case
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`No. IPR2018-01169, Paper 8. Hulu and Amazon subsequently filed a joint motion
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`to terminate their participation in the proceeding, which the Board granted. Case
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`No. IPR2018-01169, Paper 18. The Board instituted review with Netflix as the
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`sole petitioner on January 17, 2019. Case No. IPR2018-01169, Paper 20.
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`In addition to the Netflix IPR (IPR2018-01169), several other petitions for
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`inter partes review have been filed challenging claims of the ’535 Patent:
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`• Unified Patents Inc. v. Realtime Adaptive Streaming LLC, Case No.
`IPR2018-00883 (challenging claims 15-17, 19, and 22-23);
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`• Hulu, LLC, Amazon.com, Inc., and Netflix, Inc. v. Realtime Adaptive
`Streaming LLC, Case No. IPR2018-01170 (challenging claims 15-30);
`
`• Sling TV LLC, et al v. Realtime Adaptive Streaming LLC, Case No.
`IPR2018-01332 (challenging claims 15-17, 19, 21, 22, and 24);
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`• Sling TV LLC, et al v. Realtime Adaptive Streaming LLC, Case No.
`IPR2018-01342 (challenging claims 1-6, 8-12, and 14); and
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`• Cisco Systems, Inc. v. Realtime Adaptive Streaming LLC, Case No.
`IPR2018-01384 (challenging claims 1-6, 8-12, 14-17, 19, 21, 22, and 24).
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`Reviews have been instituted in both the Netflix IPR (IPR2018-01169) and
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`IPR2018-01342. The other four proceedings (IPR2018-00883, IPR2018-01170,
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`IPR2018-01332, and IPR2018-01384) have been terminated.
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`4
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`
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`III. LEGAL STANDARD AND APPLICABLE RULES
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`Joinder is governed by 35 U.S.C. § 315(c), which reads as follows:
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`Joinder.— If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that inter
`partes review any person who properly files a petition under section
`311 that the Director, after receiving a preliminary response under
`section 313 or the expiration of the time for filing such a response,
`determines warrants the institution of an inter partes review under
`section 314.
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`A motion for joinder should “(1) set forth the reasons why joinder is
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`appropriate; (2) identify any new grounds of unpatentability asserted in the
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`petition; (3) explain what impact (if any) joinder would have on the trial schedule
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`for the existing review; and (4) address specifically how briefing and discovery
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`may be simplified.” Dell Inc. v. Network-1 Security Solutions, Inc., IPR2013-
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`00385, Paper 17 at 4 (PTAB July 29, 2013); see also Kyocera Corp. v. Softview
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`LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013) (representative). These
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`factors, as discussed below, support Petitioner’s motion for joinder with the Netflix
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`IPR.
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`IV. PETITIONER MEETS THE REQUIREMENTS FOR A MOTION
`FOR JOINDER
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`Petitioner submits that (1) joinder is appropriate because it will promote
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`efficient determination of the validity of the challenged claims of the ’535 Patent
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`without prejudice to Netflix or Realtime; (2) Petitioner’s petition raises the same
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`grounds for unpatentability as does Netflix’s petition; (3) joinder would not affect
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`5
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`the pending schedule in the Netflix IPR nor would it increase the complexity of
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`that proceeding; and (4) Petitioner is willing to accept an understudy role in the
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`Netflix IPR to avoid burden and schedule impact. Absent joinder, the Board could
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`be burdened with two parallel inter partes reviews addressing the same challenged
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`claims based on the same instituted grounds proceeding on two different schedules.
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`Accordingly, joinder should be granted.
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`A.
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`Joinder Will Promote the Efficient Determination of the Validity
`of the Challenged Claims of the ’535 Patent and Will Not
`Prejudice Netflix or Realtime
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`Granting joinder and allowing Petitioner to assume an understudy role will
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`not prejudice Netflix. The Petition does not raise any issues that are not already
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`before the Board in the Netflix IPR. Joinder thus would not affect the timing of the
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`Netflix IPR or content of Realtime’s responses. The Board has granted motions
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`for joinder in similar circumstances. See, e.g., Dell Inc. v. Alacritech, Inc.,
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`IPR2018-01307, Paper 8 at 5 (PTAB Jan. 11, 2019); Nidec Corp. v. Intellectual
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`Ventures LLC, IPR2018-00597, Paper 10 at 6 (PTAB Apr. 26, 2018); Google Inc.
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`v. B.E. Technology, LLC, IPR2014-00743, Paper 10 at 4-5 (PTAB June 18, 2014).
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`Petitioner has notified counsel for Netflix of this motion and confirmed that it does
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`not oppose joinder.
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`Moreover, the Board’s final written decision on the ’535 Patent will
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`minimize issues in the underlying litigation and could potentially contribute to
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`6
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`resolving the underlying litigation altogether. This would promote the efficient
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`determination of the ’535 Patent’s validity. If the Board allows Petitioner to join
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`the Netflix IPR and upholds the ’535 Patent’s validity, Petitioner will be estopped
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`from further challenging the validity of the ’535 Patent on the grounds in the
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`petition. 35 U.S.C. § 315(e)(1). Thus, joinder is appropriate here to promote
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`judicial efficiency and avoid unnecessary expense.
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`B.
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`Petitioner’s Petition Raises the Same Grounds at Issue in the
`Netflix IPR
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`The petition challenged the same claims of the ’535 Patent challenged in the
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`Netflix IPR and asserts only the grounds that the Board has already instituted in the
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`Netflix IPR. There are no new arguments for the Board to consider. Further, the
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`petition relies on the same exhibits and expert declaration as the Netflix IPR so
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`there is no new or additional evidence for the Board to consider.
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`C.
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`Joinder Will Not Affect the Schedule of the Netflix IPR
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`Allowing Petitioner to join the Netflix IPR will not impact the Board’s
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`ability to complete its review within the statutory period and according to the
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`schedule already set in the Netflix IPR. Petitioner agrees to an “understudy” role
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`and does not raise any issues that are not already before the Board. The invalidity
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`grounds in the petition are the same as those the Board already instituted in the
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`Netflix IPR. Given that Petitioner will assume an “understudy” role, its addition to
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`the Netflix IPR will not introduce any additional arguments, briefing, or need for
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`7
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`
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`discovery. See, e.g., Dell Inc. v. Alacritech, Inc., IPR2018-01307, Paper 8 at 5
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`(PTAB Jan. 11, 2019).
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`Petitioner believes that in response to the petition Realtime does not need to
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`file a Patent Owner’s Preliminary Response, and requests that the Board proceed
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`without one. This is consistent with the Board’s Order in IPR2013-00256 (Paper
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`8), which allowed the Patent Owner to file a preliminary response addressing only
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`those points raised in the new petition that were different from those in the granted
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`petition. Here, because the invalidity grounds in the Petition are identical to those
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`instituted in the Netflix IPR, there are no new arguments for Realtime to address.
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`Realtime already addressed the invalidity grounds in the Petition in its Preliminary
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`Response to the Netflix IPR. Alternatively, the Board could add an additional
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`deadline for Realtime to respond to this Petition. This deadline would not impact
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`other deadlines in the Netflix IPR schedule.
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`Petitioner Agrees to Assume a Limited “Understudy” Role
`D.
`As long as Netflix remains in the joined inter partes review proceeding,
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`Petitioner agrees to assume a limited “understudy” role. Petitioner would only take
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`on an active role if Netflix were no longer a party to the IPR. Petitioner presents
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`no new grounds for invalidity and agrees that so long as Netflix is actively engaged
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`in the proceeding it will not introduce any additional arguments (written or oral) or
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`seek additional discovery.
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`8
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`V.
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`CONCLUSION
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`For the foregoing reasons, Petitioner respectfully requests that its petition for
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`inter partes review of claims 1-14 of the ’535 Patent be granted and that the
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`proceedings be joined with the Netflix IPR (Case No. IPR2018-01169).
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`Respectfully submitted,
`
` /s/ James L. Day
`James L. Day
`Registration No. 72,681
`Attorney for Petitioner
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`9
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`
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`CERTIFICATE OF SERVICE
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`I hereby certify that on February 15, 2019, I caused a complete and entire
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`copy of this Motion for Joinder to be served by express mail, or means at least as
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`fast and reliable as express mail, on the following counsel of record identified on
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`U.S. PAIR:
`
`Shami Messinger PLLC
`Attn: Michael Messinger, Khaled Shami, or Edward Yee
`1000 Wisconsin Ave. NW, Suite 200
`Washington, D.C. 20007
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`Courtesy copies were also sent by electronic means to the Patent Owner’s
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`litigation counsel at the following addresses:
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`Jay Chung (jchung@raklaw.com)
`Brian D. Ledahl (dledahl@raklaw.com)
`Marc A. Fenster (mfenster@raklaw.com)
`Philip X. Wang (pwang@raklaw.com)
`Reza Mirzaie (rmirzaie@raklaw.com)
`Eric B. Fenster (eric@fensterlaw.net)
`
` /s/ James L. Day
`James L. Day
`Registration No. 72,681
`
`February 15, 2019
`235 Montgomery Street
`San Francisco, CA
`
`