UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`SLING TV L.L.C., SLING MEDIA, L.L.C.,
`DISH NETWORK L.L.C., DISH TECHNOLOGIES L.L.C.
`Petitioners
`
`v.
`
`REALTIME ADAPTIVE STREAMING LLC,
`Patent Owner.
`____________________
`
`Case IPR2018-013421
`Patent 8,867,535
`____________________
`
`
`PATENT OWNER’S REPLY TO MOTION TO
`TERMINATE IPR AS TIME-BARRED UNDER § 315(b)
`
`
`
`
`1 An identical version of this reply was filed in IPR2018-1342 on October 7,
`
`2019 (Paper 33). On September 26, 2019, Google filed its opposition to the
`
`motion in both IPR2018-1342 and this terminated IPR, IPR2019-00748. For
`
`completeness, Realtime also files this reply in IPR2019-00748.
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`SLING TV L.L.C., SLING MEDIA, L.L.C.,
`DISH NETWORK L.L.C., DISH TECHNOLOGIES L.L.C.
`Petitioners
`
`v.
`
`REALTIME ADAPTIVE STREAMING LLC,
`Patent Owner.
`____________________
`
`Case IPR2018-013421
`Patent 8,867,535
`____________________
`
`
`PATENT OWNER’S REPLY TO MOTION TO
`TERMINATE IPR AS TIME-BARRED UNDER § 315(b)
`
`
`
`
`1 An identical version of this reply was filed in IPR2018-1342 on October 7,
`
`2019 (Paper 33). On September 26, 2019, Google filed its opposition to the
`
`motion in both IPR2018-1342 and this terminated IPR, IPR2019-00748. For
`
`completeness, Realtime also files this reply in IPR2019-00748.
`
`
`
`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S REPLY TO MOTION TO TERMINATE
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`Sling Seeks to Overrule the PTAB’s Precedents, Policies, and Positions ...... 1
`A. GoPro is binding authority under SOP 2. ................................................. 1
`§ 315(b) is jurisdictional and mandatory. .................................................. 3
`B.
`The law of the case doctrine does not apply here. ..................................... 4
`C.
`D.
`The POP’s system of precedent is fully consistent with the APA. ........... 5
`The Google/Comcast Joinders Do Not Change the Result ............................ 6
`A.
`§ 315(b) requires termination of IPR2018-01342. .................................... 6
`B.
`Sling is the RPI of Google/Comcast in IPR2018-01342 ........................... 7
`The Board Should Not Substitute Google/Comcast for Sling. .................. 9
`C.
`D. Google/Comcast have no remedy in this IPR. .......................................... 9
`III.
`Fairness Weighs Strongly in Favor of Termination ..................................... 10
`
`
`
`
`
`
`i
`
`
`
`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S REPLY TO MOTION TO TERMINATE
`
`For the reasons in Patent Owner’s Motion to Terminate (Paper de) and this
`
`Reply (Paper dd), IPRfegh-egdif should be terminated in its entirety.
`
`I.
`
`Sling Seeks to Overrule the PTAB’s Precedents, Policies, and Positions
`
`Sling’s opposition (Paper de) is full of arguments that contradict the PTO and
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`PTAB’s established precedents, policies, and positions. Incredibly, Sling asks the
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`Board to find that GoPro was wrongly decided (id. at h–l); that the entire POP sys-
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`tem is unconstitutional (id. at n–o); and that § dgp(b) is purely optional (id. at p). qe
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`Board should decline Sling’s unlawful invitations.
`
`A. GoPro is binding authority under SOP 2.
`
`Sling argues that GoPro “cannot” apply to this case because its petition was
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`filed and instituted before GoPro issued. qe Federal Circuit’s GTNX decision sug-
`
`gests otherwise. qere, the precedential SecureBuy decision was designated prece-
`
`dential after the petition was filed, and it was brought to the Board’s attention two
`
`months after the institution decision. GTNX, Inc. v. INTTRA, Inc., CBMfegi-eeeof,
`
`Paper fe at f. qe only difference from this case is that in GTNX, the SecureBuy
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`became precedent between the preliminary response and institution decision but
`
`here, GoPro became precedent between institution and completion of discovery.
`
`qis is not a meaningful difference that would justify maintaining this IPR and
`
`ignoring precedent. qat the Board has already taken an action contrary to the PTO’s
`
`interpretation of § dgp(b) does not justify taking a final agency action (issuing a FWD
`
`1
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`
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`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S REPLY TO MOTION TO TERMINATE
`
`or IPR certificate) that is outside the Board’s statutory power under GoPro. qe
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`Board’s decision of this motion and any FWD will be actions “subsequent” to the
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`decision in GoPro and must follow that binding precedent.
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`Indeed, patent owners may raise standing challenges in the POR or at trial.
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`See oo FR ihnol, ihnlp, col. f (“After institution, standing issues may still be raised
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`during the trial.”); Synopsys, Inc. v. Mentor Graphics Corp., IPRfegf-eeeif, Paper
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`fo at i (June fg, fegd) (Board does not find rule “as precluding a patent owner re-
`
`sponse from including issues of standing.”). Under Sling’s argument, even though
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`patent owners can raise standing challenges after institution, those challenges must
`
`be decided under overruled authority from before institution. qat cannot be right.
`
`Sling’s reliance on General Plastic (Paper de at f–d) is misplaced. General
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`Plastic merely set forth seven “non-exhaustive” factors the Board “may consider” in
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`exercising discretion to deny institution. It did not interpret any statutory provision,
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`nor mandate the consideration of any specific factors. Nothing in General Plastic
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`suggested that any earlier institution decision was improper. General Plastic itself
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`was a codification of existing Board practice. Its list of factors was taken from the
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`Board’s Nvidia decision, which was issued more than go months before General
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`Plastic was designed precedential. A precedential opinion that a non-exhaustive list
`
`of factors the Board “may” consider in exercising discretion is far different from a
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`precedential opinion that sets forth a binding interpretation of statute.
`
`2
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`
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`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S REPLY TO MOTION TO TERMINATE
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`Far more relevant is how the Board handled institution decisions in pending
`
`cases after SAS. In most cases, the Board revised the institution decision to institute
`
`on all challenged claims. In some cases, the Board reversed its decision to institute
`
`issued way before SAS and denied institution. See BioDelivery Sci. Int’l, Inc. v.
`
`Aquestive Cerapeutics, Inc., IPRfegp-eegnp, Paper lg (Feb. o, fegl) (reconsidering
`
`institution decision after FWD and remand from Federal Circuit). Consistent with
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`that handling, the Board has full authority to revisit institution here.
`
`B.
`
`§ 315(b) is jurisdictional and mandatory.
`
`Sling argues that § dgp(b) is not jurisdictional. qe Federal Circuit en banc
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`says it is. Click-To-Call Techs., LP v. Ingenio, Inc., Yellow-Pages.com, LLC, hll
`
`F.dd gdfg, gdfp (Fed. Cir. fegh) (“Because the subject petition was time-barred, the
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`Board lacked jurisdiction to institute the IPR proceedings.”) (emphasis added).
`
`Further, both § dgp(b) and § dfp(a)(g) have the identical phrase “may not be
`
`instituted” and the Federal Circuit approved the PTAB’s treatment of that language
`
`in § dfp(a)(g) as a “jurisdictional limit.” GTNX, Inc. v. INTTRA, Inc., ohl F.dd gdel,
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`gdgd (Fed. Cir. fegp). qere is no logical reason to treat § dgp(b) differently.
`
`Sling argues that § dgp(b) cannot be jurisdictional because “the Board held
`
`that it may ‘toll’ the § dgp(b) time bar in certain instances.” Paper de at i. qis is a
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`misrepresentation. GoPro merely says in dicta that it “may revisit the question of
`
`the availability of an equitable tolling” in a future case. GoPro, Paper dh at fd n.o.
`
`3
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`
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`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S REPLY TO MOTION TO TERMINATE
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`Further, even if a deadline could be tolled, that does not mean it is not jurisdictional.
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`See Classic Concepts, Inc. v. Linen Source, Inc., ogn F.dd gfhf, gfhi (lth Cir. fegd)
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`(discussing tolling of jurisdictional deadline to file notice of appeal).
`
`Sling’s jurisdictional argument is also a red herring. Even if § dgp(b) were not
`
`jurisdictional, it is certainly mandatory. It is a binding statutory limit on the Direc-
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`tor’s power to institute IPRs, and it must be followed by the Board. Sling’s argument
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`that § dgp(b) language of “may not” is permissive and really means “may or may
`
`not” is incorrect and frivolous. See Paper de at p.
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`C. The law of the case doctrine does not apply here.
`
`Sling’s “law of the case” argument also fails. qat doctrine is not even appli-
`
`cable here. As Sling’s cited cases explain, the doctrine applies to lower courts, when
`
`they are deciding cases after remand from a higher court. Intergraph Corp. v. Intel
`
`Corp., fpd F.dd nlp, nlo (Fed. Cir. feeg) (“the general rule is that ‘an appellate
`
`court’s decision of issues must be followed in all subsequent trial or intermediate
`
`appellate proceedings in the same case.’”) Sling’s cited cases involved decisions
`
`after remand from the Federal Circuit and are inapposite. Intergraph, fpd F.dd at
`
`nlo; South-Tek Sys. v. Eng’g Corrosion Sols., No. IPRfegn-eegdn, Paper ne at f.
`
`Nor could the law of the case have any force here. Patent Owner cites a pleth-
`
`ora of cases confirming the Board has full authority to—and frequently does—revisit
`
`its institution decisions and terminate IPRs after institution. Paper de at i–n (citing
`
`4
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`
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`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S REPLY TO MOTION TO TERMINATE
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`BioDelivery, Medtronic, and GTNX). And even if law of the case had any bearing,
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`it is easily disregarded in view of the POP’s new precedential decision in GoPro.
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`D. The POP’s system of precedent is fully consistent with the APA.
`
`Sling devotes two pages to arguing that the POP’s system of precedent vio-
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`lates the APA. Paper de at n–o. Of course, the Board should decline to find that the
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`POP system is unconstitutional. It is not. Sling’s citation to a Federal Circuit con-
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`curring opinion and oral argument is meaningless. qe issue in both cases was
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`whether precedential Board decisions are “binding” on the Federal Circuit (i.e.,
`
`whether they are to Chevron deference)—not whether they are a valid exercise of
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`the Director’s authority to bind USPTO employees such as members of the Board.
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`In Facebook, following the oral hearing, the United States filed an amicus
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`brief concerning the POP decision in Proppant. qe brief explained that the POP’s
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`rendering of interpretations “through a highly structured process that ‘foster[s] fair-
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`ness and deliberation,’” is permitted under the APA, and should be accorded Chev-
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`ron deference. qe brief was submitted on behalf of both the solicitor of the PTO
`
`and the Assistant Attorney General who heads the DOJ Civil Division.
`
`qe Board should respect the official position of the PTO and DOJ. Even if
`
`this position does not prevail, that would only change the level of deference that the
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`Federal Circuit would accord to POP decisions. It would not make POP decisions
`
`invalid or make them any less binding on the Board.
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`5
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`
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`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S REPLY TO MOTION TO TERMINATE
`
`
`Indeed, it is entirely proper for the Director to create the POP system of prec-
`
`edential decisions “that are binding on any and all USPTO employees.” SOP f at g–
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`f. For the Director to create this system to ensure consistency in institution decisions
`
`is particularly appropriate. qe Board institutes IPRs on behalf of the Director and
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`based on power conferred to the Director. GoPro is a direct result of the Director’s
`
`considerable efforts. It is binding on all members of the Board and must be followed.
`
`II. The Google/Comcast Joinders Do Not Change the Result
`
`Joined petitioners Google/Comcast make several vague arguments but fail to
`
`address the core statutory and jurisdictional issues. IPRfegh-egdif should never
`
`have instituted because the petition was time-barred under § dgp(b). qus, instituting
`
`that petition—and all subsequent events in the IPR—went beyond the Board’s au-
`
`thority. See Paper de at f–i. Statutory and jurisdictional defects cannot be retroac-
`
`tively cured many months after institution. qis IPR should be terminated.
`
`A.
`
`§ 315(b) requires termination of IPR2018-01342.
`
`qe plain language of § dgp(b) requires termination of this IPRfegh-egdif
`
`proceeding. § dgp(b) states that IPR “may not be instituted if the petition requesting
`
`the proceeding after the date on which the petitioner, real party in interest, or privy
`
`of the petitioner is served with a complaint[.]” Here, “the petition” is Sling’s petition
`
`filed July d, fegh. Paper f. And “the petitioner” is Sling alone. Id. at g. Google/Com-
`
`cast’s joinder motions filed eight months later (in late Feb. fegl) cannot change these
`
`6
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`
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`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S REPLY TO MOTION TO TERMINATE
`
`facts. qe petition and petitioner for which the Board instituted review are still the
`
`same. And under § dgp(b), that petition was time-barred and “may not be instituted.”
`
`Even if Google/Comcast’s later joinders could “retroactively amend” the July
`
`fegh petition, that makes no difference. At most, Google/Comcast might be consid-
`
`ered co-petitioners along with Sling in the original petition. qat petition would still
`
`be time-barred because Sling is time-barred. See Click-To-Call at gddh (“Petitioners
`
`are properly treated as an undifferentiated unit that filed an untimely petition.”). But
`
`there is no basis in fact or law to treat Google/Comcast’s joinder petitions as if they
`
`were filed on July d, fegh in this IPR. Both were filed eight months later, in separate
`
`IPR proceedings, and had nothing to do with this IPR being instituted.
`
`B.
`
`Sling is the RPI of Google/Comcast in IPR2018-01342
`
`qe statutory RPI provisions provide an independent basis for why any pro-
`
`ceeding Google/Comcast seek to maintain is time-barred. Sling has funded and con-
`
`trolled every aspect of this IPR. It prepared the petition filed July d, fegh and con-
`
`trolled every substantive event for the next g year and d months. See, e.g., Papers n,
`
`gd, gn, fe, fd, fn. Indeed, Google/Comcast are not even authorized to file papers in
`
`this proceeding. See Email from Google Counsel Phillip W. Citroen to Board on
`
`l/fn/fegl at p:dd pm PST (“Counsel for Google and Comcast, however, are not able
`
`to file authorized papers on their own behalf in this proceeding.”). Sling even filed
`
`Google/Comcast’s opposition brief to this motion (Paper df).
`
`7
`
`
`
`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S REPLY TO MOTION TO TERMINATE
`
`qese facts confirm that Sling is the RPI of this IPR and any petitions/peti-
`
`tioners joined into this IPR. Medtronic, Inc. v. Robert Bosch Health. Sys. Inc.,
`
`IPRfegi-eeihh, Paper pf at o–h (Mar. gn, fegp) (RPI factors include “relationship
`
`to the petition itself,” “whether the non-party is funding or directing proceeding,”
`
`and whether the non-party “assumed control over the litigation”). Sling substantively
`
`prepared all the petitions in this IPR and has primarily funded, directed, and assumed
`
`control of every motion, declaration, and deposition in this IPR.
`
`Google/Comcast’s citation to Power Integrations (Google Opp’n at p) is mis-
`
`leading and undermines its argument. Power Integrations concerned a petitioner’s
`
`change of ownership and addressed whether § dgp(b) requires consideration of RPI
`
`relationships only at filing (as the petitioner argued) or arising after filing but before
`
`institution (as the patent owner argued). Power Integrations, Inc. v. Semiconductor
`
`Components Indus., lfn F.dd gden, gdgi (Fed. Cir. fegl). qe court held that § dgp(b)
`
`requires consideration of RPI relationships arising after filing but expressly declined
`
`to limit consideration of events arising after institution. Id. at gdgi–gp, fn. h.
`
`Here, Sling has been the RPI at every possible moment: at the time of filing;
`
`after filing but before institution; and after institution until today. Sling is and has
`
`always been the RPI of this IPR. qus, any petition Google/Comcast seeks to main-
`
`tain is time-barred because the RPI is time-barred.
`
`8
`
`
`
`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S REPLY TO MOTION TO TERMINATE
`
`
`C. The Board Should Not Substitute Google/Comcast for Sling.
`
`qe Board should not wholly substitute Google/Comcast for Sling and pro-
`
`ceed to a final decision based on Sling’s petition and timeline. Google’s reliance on
`
`the settlement provision of § dgo(a) and the Facebook case is inapposite. Paper df at
`
`o–h. § dgo(a) allows a proceeding to continue upon settlement if the IPR was validly
`
`instituted. § dgo(a) does not override or provide an exception to § dgp(b). In Face-
`
`book (currently under appeal), the Board instituted review of Microsoft petition,
`
`which was not time-barred. See IPRfegn-eggpp, Paper gf. Here, in contrast, Sling’s
`
`July fegh petition that was instituted is indisputably time-barred. qe Board cannot
`
`maintain that institution or this proceeding without violating GoPro.
`
`D. Google/Comcast have no remedy in this IPR.
`
`IPRfege-egdof should be terminated. Google/Comcast argue that “the Board
`
`has the authority to reconsider its joinder and termination decisions in Google’s and
`
`Comcast’s IPRs[.]” Google Opp’n at h. If so, the right procedure is for Google/Com-
`
`cast to file motions for reconsideration in IPRfegl-eeoih and -eeone. Another
`
`joined petitioner, ARRIS, did just that. See IPRfegl-eeoin, Paper f (seeking recon-
`
`sideration of joinder to IPRfegh-egddg). qere is no reason Google/Comcast cannot
`
`do the same. Patent Owner can then file responses and the Board can appropriately
`
`determine whether those proceedings should be terminated.
`
`9
`
`
`
`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S REPLY TO MOTION TO TERMINATE
`
`
`III. Fairness Weighs Strongly in Favor of Termination
`
`qis IPR should never have instituted. Any fairness considerations weigh
`
`strongly in favor of termination. Petitioners argue that they timely filed their peti-
`
`tions / joinder motions and complied with all rules at the time. Not so. qe POP in
`
`GoPro did not create some new rule governing future petitions, but rather interpreted
`
`a provision of the AIA that has existed unchanged since fegg. qe joined petitioners
`
`were aware of the time-bar issue but decided to join anyway. Now that GoPro issued,
`
`there can be no unfair prejudice just for applying § dgp(b) correctly.
`
`Petitioners’ fairness arguments are fundamentally flawed because no one has
`
`a right to IPR institution or to bring an IPR proceeding. qe Board’s decision to
`
`institute an IPR is always discretionary, and the Board has frequently exercised its
`
`discretion to deny IPR petitions that (unlike the present petition) satisfied all require-
`
`ments for institution. See General Plastic. While petitioners will not be able to pur-
`
`sue this untimely IPR, they will still have full opportunity to raise its invalidity ar-
`
`guments, either as affirmative defenses in district court or through other forms of
`
`post-grant review such as ex parte reexamination.
`
`In contrast, patent owners like Realtime have a valuable, constitutionally pro-
`
`tected right to their patents. Patent owners also have rights under the IPR system,
`
`including statutory limits for when IPRs can be instituted. Because GoPro and §
`
`dgp(b) require it, and because fairness supports it, this IPR should be terminated.
`
`10
`
`
`
`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S REPLY TO MOTION TO TERMINATE
`
`
`
`
`Dated: October 8, 2019
`
`
`
`
`
`
`
`
`
`
`/ Philip X. Wang/
`Philip X. Wang (Reg. No. 74,621)
`Neil A. Rubin (Reg. (cid:128)(cid:129),(cid:130)(cid:131)(cid:130))
`Attorneys for Patent Owner
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`Fax: (310) 826-6991
`pwang@raklaw.com
`nrubin@raklaw.com
`rak_realtimedata@raklaw.com
`
`11
`
`
`
`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S REPLY TO MOTION TO TERMINATE
`
`
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e)(1))
`
`The undersigned hereby certifies that the above document was served on
`
`October 8, 2019, by filing this document through the Patent Trial and Appeal Board
`
`End to End system as well as delivering a copy via electronic mail upon the following
`
`attorneys of record for Petitioners:
`
`Naveen Modi
`Joseph E. Palys
`Phillip W. Citroën
`S. Emily Lee
`PAUL HASTINGS LLP
`875 15th St. N.W.
`Washington, D.C. 2005
`Telephone: 202-551-1700
`Email: PH-Google-Realtime-IPR@paulhastings.com
`
`
`
`
`
`/ Philip X. Wang/
`Philip X. Wang (Reg. No. 74,621)
`
`
`
`Dated: October 8, 2019
`
`
`
`
`
`
`
`
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