Filed: February 27, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`GOOGLE LLC
`Petitioner
`v.
`REALTIME ADAPTIVE STREAMING LLC
`Patent Owner
`____________________
`Patent No. 8,934,535
`____________________
`MOTION FOR JOINDER TO INTER PARTES REVIEW IPR2018-01342
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`GOOGLE LLC
`Petitioner
`v.
`REALTIME ADAPTIVE STREAMING LLC
`Patent Owner
`____________________
`Patent No. 8,934,535
`____________________
`MOTION FOR JOINDER TO INTER PARTES REVIEW IPR2018-01342
`
`
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`Google’s Motion for Joinder with
`Case IPR2018-01342
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`TABLE OF CONTENTS
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` Page
`STATEMENT OF THE PRECISE RELIEF REQUESTED .......................... 1
`STATEMENT OF MATERIAL FACTS ........................................................ 2
`STATEMENT OF REASONS FOR RELIEF REQUESTED ........................ 3
`A.
`Legal Standard ....................................................................................... 3
`B.
`Each of the Factors Weighs in Favor of the Board Granting the
`Motion for Joinder ................................................................................. 4
`1.
`Joinder with the Sling IPR Is Appropriate .................................. 4
`2.
`Petitioner Does Not Propose New Grounds of
`Unpatentability ............................................................................ 5
`Joinder Will Not Negatively Impact the Sling IPR Trial
`Schedule ...................................................................................... 6
`Procedures to Simplify Briefing and Discovery ......................... 7
`4.
`IV. THE CLAIM CONSTRUCTION RULE CHANGE DOES NOT
`AFFECT THE INSTANT PETITION AND MOTION FOR
`JOINDER ......................................................................................................... 8
`CONCLUSION ................................................................................................ 9
`
`I.
`II.
`III.
`
`V.
`
`
`3.
`
`i
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`
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`Google’s Motion for Joinder with
`Case IPR2018-01342
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Dell, Inc. v. Network-1 Security Sols., Inc.,
`IPR2013-00385, Paper 17 (July 29, 2013) ........................................................... 4
`HTC v. Parthenon Unified Memory Architecture LLC.,
`IPR2017-00512, Paper No. 12 (June 1, 2017) ...................................................... 1
`LG v. Memory Integrity, LLC.,
`IPR2015-01353, Paper No. 11 (Oct. 5, 2015) .............................................. 4, 5, 8
`Noven Pharm., Inc. v. Novartis AG,
`IPR2014-00550, Paper No. 38 (Apr. 10, 2015) .................................................... 8
`Par Pharm., Inc. v. Novartis AG,
`IPR2016-01023, Paper No. 20 (Oct. 27, 2016) .................................................... 5
`Samsung Elecs. Am., Inc. v. Uniloc 2017 LLC,
`IPR2018-01383, Paper 9 (Nov. 19, 2018) ............................................................ 9
`Samsung Elecs. Co., Ltd. v. Raytheon Co.,
`IPR2016-00962, Paper No. 12 (Aug. 24, 2016) ................................................... 4
`Statutes
`35 U.S.C. § 315(c) ............................................................................................. 1, 3, 9
`Other Authorities
`37 C.F.R. § 42.1(b) ................................................................................................ 1, 5
`37 C.F.R. § 42.5(b) .................................................................................................... 9
`37 C.F.R. § 42.22 ....................................................................................................... 1
`37 C.F.R. § 42.53 ....................................................................................................... 8
`37 C.F.R. § 42.71(a) ................................................................................................... 9
`37 C.F.R. § 42.122 ..................................................................................................... 9
`
`ii
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`
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`Google’s Motion for Joinder with
`Case IPR2017-00392
`
`TABLE OF AUTHORITIES
`(continued)
`
` Page(s)
`37 C.F.R. § 42.122(b) ................................................................................................ 1
`
`
`iii
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`
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`Google’s Motion for Joinder with
`Case IPR2018-01342
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`Google LLC (“Petitioner” or “Google”) respectfully submits this Motion for
`
`I.
`
`Joinder concurrently with a Petition (“the Google petition”) for inter partes review
`
`of U.S. Patent No. 8,934,535 (“the ’535 patent”).
`
`Pursuant to 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22 and 42.122(b), Google
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`requests institution of the concurrently filed Petition for inter partes review and
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`joinder with Sling TV L.L.C. v. Realtime Adaptive Streaming, LLC, IPR2018-
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`01342 (“the Sling IPR” or “the Sling proceeding”), which the Board instituted on
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`January 31, 2019, and concerns the same claims 1–6, 8–12, and 14 of the ’535
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`patent. This request is being submitted within the time set forth in 37 C.F.R.
`
`§ 42.122(b).
`
`Google submits that the request for joinder is consistent with the policy
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`surrounding inter partes reviews, as it is the most expedient way to “to secure the
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`just, speedy, and inexpensive resolution of every proceeding.” See 37 C.F.R.
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`§ 42.1(b); see also HTC v. Parthenon Unified Memory Architecture LLC.,
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`IPR2017-00512, Paper No. 12 at 5–6 (June 1, 2017). The Google petition and the
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`Sling IPR are substantially identical; they contain the same grounds (based on the
`
`same prior art combinations and supporting evidence) against the same claims.
`
`(See Ex. 1026, illustrating changes between the instant Petition and the Petition in
`
`IPR2018-01342.) Further, upon joining the Sling proceeding, Google will act as
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`1
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`Google’s Motion for Joinder with
`Case IPR2018-01342
`an “understudy” and will not assume an active role unless the current petitioners
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`cease to participate in the instituted IPR. Accordingly, the proposed joinder will
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`neither unduly complicate the Sling IPR nor delay its schedule. As such, the
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`joinder will promote judicial efficiency in determining the patentability of the ’535
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`patent without prejudice to Patent Owner.
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`II.
`
`STATEMENT OF MATERIAL FACTS
`1.
`The ’535 patent is at issue in an infringement action against Google in
`
`the Central District of California, Case No. 2:18-cv-03629.
`
`2.
`
`The ’535 patent is also at issue in other patent infringement actions:
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`Case Nos. 6:17-cv-00084 (E.D. Tex.); 6:17-cv-00421 (E.D. Tex.); 1:17-cv-02097
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`(D. Colo.); 6:17-cv-00549 (E.D. Tex.); 6:17-cv-00567 (E.D. Tex.); 2:17-cv-07611
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`(E.D. Tex.); 6:17-cv-00591 (E.D. Tex.); 1:17-cv-01519 (D. Del.); 1:17-cv-01519
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`(D. Del.); 1:17-cv-01520 (D. Del.); 1:17-cv-02692 (D. Colo.); 1:17-cv-01692 (D.
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`Del.); 1:17-cv-01693 (D. Del.); 1:17-cv-02869 (D. Colo.); 1:18-cv-10355 (D.
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`Mass.); 6:18-cv-00113 (E.D. Tex.); 1:18-cv-00927 (D. Colo.); 1:18-cv-01046 (D.
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`Colo.); 1:18-cv-01048 (D. Colo.); 6:18-cv-00215 (E.D. Tex.); 1:18-cv-01173 (D.
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`Colo.); 1:18-cv-01175 (D. Colo.); 1:18-cv-01177 (D. Colo.); 8:18-cv-00942 (C.D.
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`Cal.); 1:18-cv-01345 (D. Colo.); 1:18-cv-01446 (D. Colo.); 2:18-cv-09344 (C.D.
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`Cal.).
`
`3.
`
`The ’535 patent is or was also at issue in seven other IPR proceedings:
`
`2
`
`
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`Google’s Motion for Joinder with
`Case IPR2018-01342
`Case Nos. IPR2018-00883; IPR2018-01169; IPR2018-01170; IPR2018-01332;
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`IPR2018-01384; IPR2019-00674; IPR2019-00684.
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`4.
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`On July 3, 2018, Sling TV L.L.C., Sling Media L.L.C., DISH
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`Network L.L.C., and DISH Technologies L.L.C. filed a petition for inter partes
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`review (IPR2018-01342) (“the Sling petition”) requesting cancellation of claims 1–
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`6, 8–12, and 14 of the ʼ535 patent.
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`5.
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`On January 31, 2019, the Board instituted the Sling petition for inter
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`partes review as to all challenged claims and all grounds.
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`6.
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`The Google petition and the Sling IPR are substantially identical; they
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`contain the same grounds (based on the same prior art combinations and
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`supporting evidence) against the same claims. (See Ex. 1026.)
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`A. Legal Standard
`Pursuant to 35 U.S.C. § 315(c), the Board may grant a motion for joining an
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`inter partes review petition with another inter partes review proceeding. The
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`Board, in determining whether to exercise its discretion to grant joinder, considers
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`whether the joinder motion: (1) sets forth the reasons why joinder is appropriate;
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`(2) identifies any new grounds of unpatentability asserted in the petition; (3)
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`explains what impact (if any) joinder would have on the trial schedule for the
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`existing review; and (4) addresses specifically how briefing and discovery may be
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`3
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`
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`Google’s Motion for Joinder with
`Case IPR2018-01342
` See Frequently Asked Question (“FAQ”) H5, available at
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`simplified.
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`http://www.uspto.gov/ip/boards/bpai/prps.jsp (last visited Feb. 27, 2019); see also
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`Dell, Inc. v. Network-1 Security Sols., Inc., IPR2013-00385, Paper 17 at 3 (July 29,
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`2013).
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`B.
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`Each of the Factors Weighs in Favor of the Board Granting the
`Motion for Joinder
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`All four factors weigh in favor of granting Petitioner’s motion for joinder.
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`The Google petition is substantively identical to the petition in the Sling IPR.
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`Google does not present any new grounds of unpatentability. Additionally, as all
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`issues are substantively identical and Google will act as an “understudy,” joinder
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`will have minimal or no impact on the pending schedule of the Sling IPR. See LG
`
`v. Memory Integrity, LLC., IPR2015-01353, Paper No. 11 at 6 (Oct. 5, 2015)
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`(granting motion for joinder where petitioners requested an “understudy” role).
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`Moreover, the briefing and discovery will be simplified by resolving all issues in a
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`single proceeding. Accordingly, joinder is appropriate.
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`1.
`Joinder with the Sling IPR Is Appropriate
`The Board “routinely grants motions for joinder where the party seeking
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`joinder introduces identical arguments and the same grounds raised in the existing
`
`proceeding.” Samsung Elecs. Co., Ltd. v. Raytheon Co., IPR2016-00962, Paper
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`No. 12 at 9 (Aug. 24, 2016) (internal quotations and citations omitted). Here,
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`4
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`
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`Google’s Motion for Joinder with
`Case IPR2018-01342
`joinder with the Sling IPR is appropriate because the Google petition introduces
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`identical arguments and the same grounds raised in the existing Sling proceeding
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`(i.e., it challenges the same claims of the same patent, relies on the same expert
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`declaration, and is based on the same grounds and combinations of prior art
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`submitted in the Sling petition). Other than minor differences, such as differences
`
`related to formalities of a different party filing the petition, there are no changes to
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`the facts, citations, evidence, or arguments introduced in the Google petition. (See
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`Ex. 1026.) Because these proceedings are substantively identical, good cause
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`exists for joining this proceeding with the Sling IPR so that the Board, consistent
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`with 37 C.F.R. § 42.1(b), can efficiently “secure the just, speedy, and inexpensive
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`resolution” of the Google and Sling petitions in a single proceeding.
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`2.
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`Petitioner Does Not Propose New Grounds of
`Unpatentability
`
`The Google petition is substantively identical to the petition in the Sling IPR
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`(i.e., challenging the same claims of the same patent, relying on the same expert
`
`declaration, and on the same grounds and combinations of prior art submitted in
`
`the Sling petition). See LG, IPR2015-01353, Paper No. 11 at 6 (granting
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`institution of IPR and motion for joinder where petitioners relied “on the same
`
`prior art, same arguments, and same evidence, including the same expert and a
`
`substantively identical declaration”); see also Par Pharm., Inc. v. Novartis AG,
`
`5
`
`
`
`Google’s Motion for Joinder with
`Case IPR2018-01342
`IPR2016-01023, Paper No. 20 at 14 (Oct. 27, 2016) (granting motion for joinder
`
`where petitioners “do not assert any new ground of unpatentability that is not
`
`already being considered in [an instituted IPR proceeding], rely on the same
`
`arguments and evidence, and do not require any modification to the existing
`
`schedule”).
`
`3.
`
`Joinder Will Not Negatively Impact the Sling IPR Trial
`Schedule
`Joinder will have minimal impact, if any, on the Sling IPR trial schedule
`
`because the Google petition presents no new issues or grounds of unpatentability.
`
`See LG, IPR2015-01353, Paper No. 11 at 6 (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]”). Further,
`
`Petitioner explicitly consents to the existing trial schedule. There are no new
`
`issues for the Board to address, and Patent Owner will not be required to present
`
`any additional responses or arguments.
`
`Patent Owner’s Response will also not be negatively impacted because the
`
`issues presented in the Google petition are identical to the issues presented in the
`
`Sling petition. Patent Owner will not be required to provide any additional
`
`analysis or arguments beyond what it will already provide in responding to the
`
`petition in the Sling IPR. Also, because the Google petition relies on the same
`
`6
`
`
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`Google’s Motion for Joinder with
`Case IPR2018-01342
`expert and the same declaration, only a single deposition is needed for the
`
`proposed joined proceeding.
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`Accordingly, joinder with the Sling IPR does not unduly burden or
`
`negatively impact the trial schedule.
`
`4.
`Procedures to Simplify Briefing and Discovery
`Google explicitly agrees to take an “understudy” role which will simply
`
`briefing and discovery. Specifically, Google explicitly agrees, upon joining the
`
`Sling proceeding, that the following conditions, as previously approved by the
`
`Board in similar circumstances, shall apply so long as the current petitioner in
`
`IPR2018-01342 remains an active party:
`
`a) all filings by Google in the joined proceeding be consolidated with the
`
`filings of the current petitioner, unless a filing concerns issues solely
`
`involving Google;
`
`b) Google shall not be permitted to raise any new grounds not already instituted
`
`by the Board in the Sling IPR, or introduce any argument or discovery not
`
`already introduced by the current petitioners;
`
`c) Google shall be bound by any agreement between Patent Owner and the
`
`current petitioners concerning discovery and/or depositions; and
`
`7
`
`
`
`Google’s Motion for Joinder with
`Case IPR2018-01342
`d) at deposition, Google shall not receive any direct, cross examination or
`
`redirect time beyond that permitted under either 37 C.F.R. § 42.53 or any
`
`agreement between Patent Owner and the current petitioners.
`
`See Noven Pharm., Inc. v. Novartis AG, IPR2014-00550, Paper No. 38 at 5 (Apr.
`
`10, 2015). Unless and until the current petitioners cease to participate in the
`
`instituted IPR proceeding, Google will not assume an active role therein.
`
`Thus, by Google accepting an “understudy” role, Patent Owner and the
`
`current petitioners can comply with the existing trial schedule without needing any
`
`duplicative efforts by the Board or Patent Owner. These steps will minimize any
`
`potential complications or delay that potentially may result by joinder. See LG,
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`IPR2015-01353, Paper No. 11 at 6–7 (granting IPR and motion for joinder because
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`“joinder would increase efficiency by eliminating duplicative filings and
`
`discovery, and would reduce costs and burdens on the parties as well as the Board”
`
`where petitioners agreed to an “understudy” role). Google is further willing to
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`agree to any other reasonable conditions the Board deems necessary.
`
`IV. THE CLAIM CONSTRUCTION RULE CHANGE DOES NOT
`AFFECT THE INSTANT PETITION AND MOTION FOR JOINDER
`The Board instituted inter partes review in the Sling IPR under the broadest
`
`reasonable interpretation (BRI) standard. See IPR2018-01342, Paper 9 at 9. While
`
`the claim construction standard has changed from BRI to Phillips for petitions filed
`
`8
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`
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`Google’s Motion for Joinder with
`Case IPR2018-01342
`on or after November 13, 2018, the Board should apply the BRI standard to
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`Google’s Petition. Google is simply seeking joinder as a co-petitioner to the Sling
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`proceeding. See 35 U.S.C. § 315(c) (“join as a party to that inter partes review”).
`
`As is customary, granting of this motion would result in Google being “joined as a
`
`petitioner in that case [i.e., the Sling petition] pursuant to 37 C.F.R. § 42.122” and
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`the dismissal of Google’s copy-cat Petition pursuant to 37 C.F.R. § 42.71(a). See,
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`e.g., Samsung Elecs. Am., Inc. v. Uniloc 2017 LLC, IPR2018-01383, Paper 9 at 6
`
`(Nov. 19, 2018) (emphasis added). Thus, the rules applicable to the Sling
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`proceeding (e.g., the BRI claim construction standard) should also apply to
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`Google’s instant proceeding because “that case,” i.e., the Sling IPR, will proceed
`
`and Google’s copy-cat Petition will be dismissed.1
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`V. CONCLUSION
`Based on the factors discussed above, Google respectfully requests that the
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`Board grant the Google petition and grant joinder with the Sling IPR.
`
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`1 If the Board deems that its rule(s) require application of the Phillips standard to
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`Google’s Petition, Google seeks waiver of such rule(s) pursuant to 37 C.F.R.
`
`§ 42.5(b).
`
`9
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`
`
`Dated: February 27, 2019
`
`Google’s Motion for Joinder with
`Case IPR2018-01342
`Respectfully submitted,
`
`By: /Naveen Modi/
`Naveen Modi (Reg. No. 46,224)
`Counsel for Petitioner
`
`
`
`10
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`
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`Google’s Motion for Joinder with
`Case IPR2018-01342
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on February 27, 2019, I caused a true and correct copy
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`of the foregoing Motion for Joinder to Inter Partes Review IPR2018-01342 to be
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`served via express mail on the Patent Owner at the following correspondence
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`address of record as listed on PAIR:
`
`Shami Messinger PLLC
`1000 Wisconsin Ave. NW
`Suite 200
`Washington DC 20007
`
`In addition, a courtesy copy of the motion was served electronically upon
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`counsel of record for Patent Owner in the litigation pending before the U.S.
`
`District Court for the Central District of California entitled Realtime Adaptive
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`Streaming LLC v. Google LLC, Case No. 2:18-cv-03629 (C.D. Cal.) at the
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`following addresses:
`
`Marc A. Fenster
`mfenster@raklaw.com
`Reza Mirzaie
`rmirzaie@raklaw.com
`Brian D. Ledahl
`bledahl@raklaw.com
`Paul Kroeger
`pkroeger@raklaw.com
`C. Jay Chung
`jchung@raklaw.com
`Philip X. Wang
`pwang@raklaw.com
`Russ August & Kabat
`12424 Wilshire Boulevard, 12th Floor
`
`
`
`
`
`Google’s Motion for Joinder with
`Case IPR2018-01342
`
`Los Angeles, California 90025
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`A courtesy copy of the motion was also served electronically upon counsel
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`of record in Sling TV L.L.C. v. Realtime Adaptive Streaming, LLC, IPR2018-
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`01342 at the following addresses:
`
`
`Counsel for petitioners:
`
`Ruffin B. Cordell
`Adam R. Shartzer
`Brian J. Livedalen
`IPR45035-0002IP4@fr.com
`PTABInbound@fr.com
`Fish & Richardson P.C.
`3200 RBC Plaza,
`60 South Sixth Street
`Minneapolis, MN 55402
`
`
`Counsel for patent owner:
`
`Neil A. Rubin
`nrubin@raklaw.com
`Kent Shum
`kshum@raklaw.com
`Russ August & Kabat
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, California 90025
`
`
`
`
`
`By: /Naveen Modi/
`Naveen Modi (Reg. No. 46,224)
`
`
`
`
`
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