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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SLING TV L.L.C., SLING MEDIA, L.L.C.,
`DISH NETWORK L.L.C., DISH TECHNOLOGIES L.L.C.
`Petitioners
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`v.
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`REALTIME ADAPTIVE STREAMING LLC,
`Patent Owner.
`____________________
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`Case IPR2018-013421
`Patent 8,867,535
`____________________
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`
`PATENT OWNER’S REPLY TO MOTION TO
`TERMINATE IPR AS TIME-BARRED UNDER § 315(b)
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`1 An identical version of this reply was filed in IPR2018-1342 on October 7,
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`2019 (Paper 33). On September 26, 2019, Google filed its opposition to the
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`motion in both IPR2018-1342 and this terminated IPR, IPR2019-00748. For
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`completeness, Realtime also files this reply in IPR2019-00748.
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`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S REPLY TO MOTION TO TERMINATE
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`TABLE OF CONTENTS
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`I.
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`II.
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`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
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`i
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`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S REPLY TO MOTION TO TERMINATE
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`For the reasons in Patent Owner’s Motion to Terminate (Paper de) and this
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`Reply (Paper dd), IPRfegh-egdif should be terminated in its entirety.
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`I.
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`Sling Seeks to Overrule the PTAB’s Precedents, Policies, and Positions
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`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.
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`A. GoPro is binding authority under SOP 2.
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`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-
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`gests otherwise. qere, the precedential SecureBuy decision was designated prece-
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`dential after the petition was filed, and it was brought to the Board’s attention two
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`months after the institution decision. GTNX, Inc. v. INTTRA, Inc., CBMfegi-eeeof,
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`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
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`here, GoPro became precedent between institution and completion of discovery.
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`qis is not a meaningful difference that would justify maintaining this IPR and
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`ignoring precedent. qat the Board has already taken an action contrary to the PTO’s
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`interpretation of § dgp(b) does not justify taking a final agency action (issuing a FWD
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`1
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`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S REPLY TO MOTION TO TERMINATE
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`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-
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`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
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`be decided under overruled authority from before institution. qat cannot be right.
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`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
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`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.
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`2
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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
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`cases after SAS. In most cases, the Board revised the institution decision to institute
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`on all challenged claims. In some cases, the Board reversed its decision to institute
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`issued way before SAS and denied institution. See BioDelivery Sci. Int’l, Inc. v.
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`Aquestive Cerapeutics, Inc., IPRfegp-eegnp, Paper lg (Feb. o, fegl) (reconsidering
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`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.
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`B.
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`§ 315(b) is jurisdictional and mandatory.
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`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
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`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).
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`Further, both § dgp(b) and § dfp(a)(g) have the identical phrase “may not be
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`instituted” and the Federal Circuit approved the PTAB’s treatment of that language
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`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.
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`Sling argues that § dgp(b) cannot be jurisdictional because “the Board held
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`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
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`the availability of an equitable tolling” in a future case. GoPro, Paper dh at fd n.o.
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`3
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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).
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`Sling’s jurisdictional argument is also a red herring. Even if § dgp(b) were not
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`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
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`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.
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`Sling’s “law of the case” argument also fails. qat doctrine is not even appli-
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`cable here. As Sling’s cited cases explain, the doctrine applies to lower courts, when
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`they are deciding cases after remand from a higher court. Intergraph Corp. v. Intel
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`Corp., fpd F.dd nlp, nlo (Fed. Cir. feeg) (“the general rule is that ‘an appellate
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`court’s decision of issues must be followed in all subsequent trial or intermediate
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`appellate proceedings in the same case.’”) Sling’s cited cases involved decisions
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`after remand from the Federal Circuit and are inapposite. Intergraph, fpd F.dd at
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`nlo; South-Tek Sys. v. Eng’g Corrosion Sols., No. IPRfegn-eegdn, Paper ne at f.
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`Nor could the law of the case have any force here. Patent Owner cites a pleth-
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`ora of cases confirming the Board has full authority to—and frequently does—revisit
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`its institution decisions and terminate IPRs after institution. Paper de at i–n (citing
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`4
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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.
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`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.,
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`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
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`and the Assistant Attorney General who heads the DOJ Civil Division.
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`qe Board should respect the official position of the PTO and DOJ. Even if
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`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
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`invalid or make them any less binding on the Board.
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`5
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`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S REPLY TO MOTION TO TERMINATE
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`Indeed, it is entirely proper for the Director to create the POP system of prec-
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`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
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`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
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`considerable efforts. It is binding on all members of the Board and must be followed.
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`II. The Google/Comcast Joinders Do Not Change the Result
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`Joined petitioners Google/Comcast make several vague arguments but fail to
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`address the core statutory and jurisdictional issues. IPRfegh-egdif should never
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`have instituted because the petition was time-barred under § dgp(b). qus, instituting
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`that petition—and all subsequent events in the IPR—went beyond the Board’s au-
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`thority. See Paper de at f–i. Statutory and jurisdictional defects cannot be retroac-
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`tively cured many months after institution. qis IPR should be terminated.
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`A.
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`§ 315(b) requires termination of IPR2018-01342.
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`qe plain language of § dgp(b) requires termination of this IPRfegh-egdif
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`proceeding. § dgp(b) states that IPR “may not be instituted if the petition requesting
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`the proceeding after the date on which the petitioner, real party in interest, or privy
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`of the petitioner is served with a complaint[.]” Here, “the petition” is Sling’s petition
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`filed July d, fegh. Paper f. And “the petitioner” is Sling alone. Id. at g. Google/Com-
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`cast’s joinder motions filed eight months later (in late Feb. fegl) cannot change these
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`6
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`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S REPLY TO MOTION TO TERMINATE
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`facts. qe petition and petitioner for which the Board instituted review are still the
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`same. And under § dgp(b), that petition was time-barred and “may not be instituted.”
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`Even if Google/Comcast’s later joinders could “retroactively amend” the July
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`fegh petition, that makes no difference. At most, Google/Comcast might be consid-
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`ered co-petitioners along with Sling in the original petition. qat petition would still
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`be time-barred because Sling is time-barred. See Click-To-Call at gddh (“Petitioners
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`are properly treated as an undifferentiated unit that filed an untimely petition.”). But
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`there is no basis in fact or law to treat Google/Comcast’s joinder petitions as if they
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`were filed on July d, fegh in this IPR. Both were filed eight months later, in separate
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`IPR proceedings, and had nothing to do with this IPR being instituted.
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`B.
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`Sling is the RPI of Google/Comcast in IPR2018-01342
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`qe statutory RPI provisions provide an independent basis for why any pro-
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`ceeding Google/Comcast seek to maintain is time-barred. Sling has funded and con-
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`trolled every aspect of this IPR. It prepared the petition filed July d, fegh and con-
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`trolled every substantive event for the next g year and d months. See, e.g., Papers n,
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`gd, gn, fe, fd, fn. Indeed, Google/Comcast are not even authorized to file papers in
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`this proceeding. See Email from Google Counsel Phillip W. Citroen to Board on
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`l/fn/fegl at p:dd pm PST (“Counsel for Google and Comcast, however, are not able
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`to file authorized papers on their own behalf in this proceeding.”). Sling even filed
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`Google/Comcast’s opposition brief to this motion (Paper df).
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`7
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`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S REPLY TO MOTION TO TERMINATE
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`qese facts confirm that Sling is the RPI of this IPR and any petitions/peti-
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`tioners joined into this IPR. Medtronic, Inc. v. Robert Bosch Health. Sys. Inc.,
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`IPRfegi-eeihh, Paper pf at o–h (Mar. gn, fegp) (RPI factors include “relationship
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`to the petition itself,” “whether the non-party is funding or directing proceeding,”
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`and whether the non-party “assumed control over the litigation”). Sling substantively
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`prepared all the petitions in this IPR and has primarily funded, directed, and assumed
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`control of every motion, declaration, and deposition in this IPR.
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`Google/Comcast’s citation to Power Integrations (Google Opp’n at p) is mis-
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`leading and undermines its argument. Power Integrations concerned a petitioner’s
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`change of ownership and addressed whether § dgp(b) requires consideration of RPI
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`relationships only at filing (as the petitioner argued) or arising after filing but before
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`institution (as the patent owner argued). Power Integrations, Inc. v. Semiconductor
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`Components Indus., lfn F.dd gden, gdgi (Fed. Cir. fegl). qe court held that § dgp(b)
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`requires consideration of RPI relationships arising after filing but expressly declined
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`to limit consideration of events arising after institution. Id. at gdgi–gp, fn. h.
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`Here, Sling has been the RPI at every possible moment: at the time of filing;
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`after filing but before institution; and after institution until today. Sling is and has
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`always been the RPI of this IPR. qus, any petition Google/Comcast seeks to main-
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`tain is time-barred because the RPI is time-barred.
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`8
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`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S REPLY TO MOTION TO TERMINATE
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`C. The Board Should Not Substitute Google/Comcast for Sling.
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`qe Board should not wholly substitute Google/Comcast for Sling and pro-
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`ceed to a final decision based on Sling’s petition and timeline. Google’s reliance on
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`the settlement provision of § dgo(a) and the Facebook case is inapposite. Paper df at
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`o–h. § dgo(a) allows a proceeding to continue upon settlement if the IPR was validly
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`instituted. § dgo(a) does not override or provide an exception to § dgp(b). In Face-
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`book (currently under appeal), the Board instituted review of Microsoft petition,
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`which was not time-barred. See IPRfegn-eggpp, Paper gf. Here, in contrast, Sling’s
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`July fegh petition that was instituted is indisputably time-barred. qe Board cannot
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`maintain that institution or this proceeding without violating GoPro.
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`D. Google/Comcast have no remedy in this IPR.
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`IPRfege-egdof should be terminated. Google/Comcast argue that “the Board
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`has the authority to reconsider its joinder and termination decisions in Google’s and
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`Comcast’s IPRs[.]” Google Opp’n at h. If so, the right procedure is for Google/Com-
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`cast to file motions for reconsideration in IPRfegl-eeoih and -eeone. Another
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`joined petitioner, ARRIS, did just that. See IPRfegl-eeoin, Paper f (seeking recon-
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`sideration of joinder to IPRfegh-egddg). qere is no reason Google/Comcast cannot
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`do the same. Patent Owner can then file responses and the Board can appropriately
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`determine whether those proceedings should be terminated.
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`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S REPLY TO MOTION TO TERMINATE
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`III. Fairness Weighs Strongly in Favor of Termination
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`qis IPR should never have instituted. Any fairness considerations weigh
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`strongly in favor of termination. Petitioners argue that they timely filed their peti-
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`tions / joinder motions and complied with all rules at the time. Not so. qe POP in
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`GoPro did not create some new rule governing future petitions, but rather interpreted
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`a provision of the AIA that has existed unchanged since fegg. qe joined petitioners
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`were aware of the time-bar issue but decided to join anyway. Now that GoPro issued,
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`there can be no unfair prejudice just for applying § dgp(b) correctly.
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`Petitioners’ fairness arguments are fundamentally flawed because no one has
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`a right to IPR institution or to bring an IPR proceeding. qe Board’s decision to
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`institute an IPR is always discretionary, and the Board has frequently exercised its
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`discretion to deny IPR petitions that (unlike the present petition) satisfied all require-
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`ments for institution. See General Plastic. While petitioners will not be able to pur-
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`sue this untimely IPR, they will still have full opportunity to raise its invalidity ar-
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`guments, either as affirmative defenses in district court or through other forms of
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`post-grant review such as ex parte reexamination.
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`In contrast, patent owners like Realtime have a valuable, constitutionally pro-
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`tected right to their patents. Patent owners also have rights under the IPR system,
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`including statutory limits for when IPRs can be instituted. Because GoPro and §
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`dgp(b) require it, and because fairness supports it, this IPR should be terminated.
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`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S REPLY TO MOTION TO TERMINATE
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`Dated: October 8, 2019
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`/ 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
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`IPR2018-01342 (’535 Patent)
`PATENT OWNER’S REPLY TO MOTION TO TERMINATE
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e)(1))
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`The undersigned hereby certifies that the above document was served on
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`October 8, 2019, by filing this document through the Patent Trial and Appeal Board
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`End to End system as well as delivering a copy via electronic mail upon the following
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`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)
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`
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`Dated: October 8, 2019
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