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`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 8,934,535
`_________________
`
`JOINED PETITIONERS GOOGLE LLC AND COMCAST CABLE
`COMMUNICATIONS, LLC’S JOINT OPPOSITION TO
`PATENT OWNER’S MOTION TO TERMINATE
`
`
`
`
`
`1 GOOGLE LLC, who filed a petition in IPR2019-00748, and COMCAST CABLE
`COMMUNICATIONS, LLC, who filed a petition in IPR2019-00760, have been
`joined as petitioners in this proceeding.
`
`
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`IPR2018-01342
`Patent 8,934,535
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`
`TABLE OF CONTENTS
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`2.
`
`
`I.
`INTRODUCTION ...............................................................................1
`II. ARGUMENTS ....................................................................................1
`A. Google and Comcast Were Not Time Barred ..................................1
`1.
`Google’s and Comcast’s Petitions Were Granted and
`Their Respective Proceedings Were Duly Instituted ...............1
`Google and Comcast Were Entitled to Rely on the
`Propriety of the Board’s Institution Decision in DISH’s
`IPR2018-01342 .................................................................3
`B. DISH’s Alleged Untimeliness Should Not Be Attributed to
`Google and Comcast ...................................................................4
`1.
`Realtime’s Real Party-in-Interest Argument Lacks Merit ........4
`2.
`Click-to-Call Does Not Support Equal Treatment of
`Google and Comcast with DISH ..........................................5
`The Board Has Authority to Maintain This Proceeding ....................6
`The Board Has Authority to Allow Google and Comcast to
`Proceed to Trial ..........................................................................8
`III. CONCLUSION ................................................................................. 10
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`C.
`D.
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`IPR2018-01342
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`TABLE OF AUTHORITIES
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` Page(s)
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`Federal Cases
`BioDelivery Sciences International, Inc. v. Aquestive Therapeutics,
`Inc.,
`935 F.3d 1362, 2019 WL 4062525 (Fed. Cir. Aug. 29, 2019) ......................... 8
`Civil Aeronautics Bd. v. Delta Air Lines, Inc.,
`367 U.S. 316 (1961) ................................................................................. 4
`Click-to-Call Technologies, LP v. Ingenio, Inc.,
`899 F.3d 1321 (Fed. Cir. 2018) .............................................................. 5, 6
`Dell Inc. v. Alacritech, Inc.,
`IPR2018-01307, Paper 8 (Jan. 11, 2019) ..................................................... 4
`Facebook, Inc. v. Windy City Innovations LLC,
`IPR2016-01155, Paper 32 (June 1, 2017)..................................................... 7
`FCC v. Fox Television Stations,
`556 U.S. 502 (2009) ............................................................................... 10
`GoPro, Inc. v. 360Heros, Inc.,
`IPR2018-01754, Paper 38 (Aug. 23, 2019) .................................................. 1
`In re Intex Recreation Corp.,
`Order No. 18-131, 2018 WL 3089215 (Fed. Cir. June 13, 2018) ..................... 9
`Kyocera Corp. v. SoftView LLC,
`IPR2013-00004, Paper 15 (Apr. 24, 2013) ................................................... 3
`Microsoft Corp. v. UNILOC 2017 LLC,
`IPR2019-00744, Paper 11 (Sept. 4, 2019) ................................................ 3, 4
`Power Integrations, Inc. v. Semiconductor Components Industries,
`LLC,
`926 F.3d 1306 (Fed. Cir. 2019) .................................................................. 5
`Proppant Express Investments, LLC v. Oren Technologies, LLC,
`IPR2018-00914, Paper 38 (Mar. 13, 2019)............................................... 2, 6
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`Rodale Press, Inc. v. FTC,
`407 F.2d 1252 (D.C. Cir. 1968) .................................................................. 4
`WesternGeco LLC v. ION Geophysical Corp.,
`889 F.3d 1308 (Fed. Cir. 2018) .................................................................. 5
`Federal Statutes
`35 U.S.C. § 314(a) ........................................................................................ 4
`35 U.S.C. § 315(b) ............................................................................... passim
`35 U.S.C. § 315(c) ........................................................................................ 9
`35 U.S.C. § 315(d) .................................................................................... 3, 9
`35 U.S.C. § 317(a) ........................................................................................ 7
`Rules
`Fed. R. Civ. Proc. 21 ..................................................................................... 9
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`iii
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`1101
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`1102
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`1103
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`
`EXHIBITS
`Proof of Service re Summons and Complaint for Google LLC,
`Realtime Adaptive Streaming LLC, v. Google LLC, D.I. 18, Case No.
`18-cv-03629 FMO (JCx) (C.D. Cal.)
`Proof of Service re Summons and Complaint for YouTube, LLC,
`Realtime Adaptive Streaming LLC, v. Google LLC, D.I. 15, Case No.
`18-cv-03629 FMO (JCx) (C.D. Cal.)
`Proof of Service re Summons and Complaint for Comcast Corporation,
`Realtime Adaptive Streaming, LLC v. Comcast Cable Communications,
`LLC and Comcast Corporation, D.I. 19, Case No. 18-cv-01446 PAB
`(STV) (D. Col..)
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`I.
`
`INTRODUCTION
`Realtime’s motion to terminate IPR2018-01342 should be denied at least as
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`to joined petitioners Google and Comcast. Realtime relies on GoPro, Inc. v.
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`360Heros, Inc., in which the POP ruled that the § 315(b) time bar is triggered by
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`service of a deficient pleading. IPR2018-01754, Paper 38 at 6 (Aug. 23, 2019)
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`(precedential). GoPro is inapplicable to Google and Comcast, because neither was
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`served with a complaint alleging infringement of the ’535 patent more than one year
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`prior to the filing their respective Petitions. The only question is whether Google
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`and Comcast should be prevented from maintaining IPR2018-01342 solely because
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`they were joined as petitioners. They should not, because they are not time-barred
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`and they have fully complied with the statutory and regulatory requirements
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`governing IPR proceedings as well as the Board’s precedent.
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`II. ARGUMENTS
`A. Google and Comcast Were Not Time Barred
`1. Google’s and Comcast’s Petitions Were Granted and Their
`Respective Proceedings Were Duly Instituted
`It is undisputed that Google’s Petition in IPR2019-00748 and Comcast’s
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`Petition in IPR2019-00760 were timely filed under 35 U.S.C. § 315(b). Google was
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`first served with a complaint alleging infringement of the ’535 patent on May 4,
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`2018 (Exs. 1101, 1102), and Comcast was first served with a complaint alleging
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`infringement of the ’535 patent on July 20, 2018 (Ex. 1103). Google and Comcast
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`filed their Petitions on February 27, 2019, and February 28, 2019, respectively.
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`IPR2019-00748, Paper 4; IPR2019-00760, Paper 4. Accordingly, Google’s and
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`Comcast’s respective Petitions complied with § 315(b), as well as the other statutory
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`and regulatory requirements governing IPR proceedings. In each proceeding, the
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`Board was “persuaded that Petitioner ha[d] demonstrated a reasonable likelihood
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`that it will succeed,” and “an inter partes review [was] instituted.” IPR2019-00748,
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`Paper 5 at 6; IPR2019-00760, Paper 5 at 5–6.
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`At the same time, the Board exercised its discretion to grant Google’s and
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`Comcast’s motions to join DISH’s already-instituted IPR2018-01342. By granting
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`joinder, the Board necessarily determined that all applicable threshold requirements,
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`including those under § 314, were met, without having to repeat “superfluous”
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`“determination[s] already made in the existing proceeding.” Proppant Express Invs.,
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`LLC v. Oren Techs., LLC, IPR2018-00914, Paper 38 at 12 (Mar. 13, 2019)
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`(precedential) (“[B]y referencing § 314 in § 315(c), Congress required a separate
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`determination that the petition accompanying a joinder request shows a reasonable
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`likelihood of prevailing on at least one claim.”)
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`As it typically does when granting joinder, the Board administratively
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`terminated Google’s and Comcast’s instituted proceedings in view of their right to
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`maintain IPR2018-01342 should DISH no longer be involved. IPR2019-00748,
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`Paper 5 at 7; IPR2019-00760, Paper 5 at 6. Those case-management actions were
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`within the discretion of the Board, and not pursuant to any statutory command.
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`Indeed, Congress left the management of IPR proceedings to the Board’s discretion.
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`35 U.S.C. § 315(d). As detailed further below, the Board should employ its
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`discretion now to ensure that the considerable efforts of Google, Comcast, Realtime,
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`and the Board in reaching the merits of IPR2018-01342, which were made in
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`reliance on the Board’s case-management decisions, do not go to waste.
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`2. Google and Comcast Were Entitled to Rely on the Propriety
`of the Board’s Institution Decision in DISH’s IPR2018-01342
`According to Realtime, Google and Comcast could have avoided the alleged
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`defect that DISH’s Petition “was never properly instituted” by filing their own stand-
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`alone petitions. (Mot. at 7, 10.)
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`Google and Comcast, however, cannot be faulted for filing Petitions that are
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`substantially identical to DISH’s, taking an “understudy” role to DISH, and relying
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`on DISH’s expert witness testimony. Google and Comcast simply complied with
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`the Board’s regular practice of joining petitioners that file “copycat” petitions,
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`“where joinder would not affect the cost, procedural complexity, or scheduling.”
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`Microsoft Corp. v. UNILOC 2017 LLC, IPR2019-00744, Paper 11 at 13 (Sept. 4,
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`2019) (denying joinder due to differences in positions between petitions and
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`declarants); see also Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15 at
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`4 (Apr. 24, 2013). This practice furthers the AIA’s objective of “establish[ing] a
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`more efficient and streamlined patent system that will improve patent quality and
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`limit unnecessary and counterproductive litigation costs.” Microsoft, Paper 11 at
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`12–13. And, as parties appearing before an agency, Google and Comcast were
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`entitled to rely on the propriety of the agency’s institution decision in IPR2018-
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`01342, see Civil Aeronautics Bd. v. Delta Air Lines, Inc., 367 U.S. 316, 329–31
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`(1961); Rodale Press, Inc. v. FTC, 407 F.2d 1252, 1256 (D.C. Cir. 1968), which
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`specifically addressed the time-bar issue raised by Realtime based on the law at the
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`time, see IPR2018-01342, Paper 9 at 12–14. Had Google and Comcast filed stand-
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`alone petitions to pursue separate proceedings, they would have been subject to the
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`Board’s discretionary denial of institution under 35 U.S.C. § 314(a) in view of
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`already-instituted proceedings. With these considerations in mind, Google and
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`Comcast filed their Petitions and motions for joinder. In contrast, Realtime’s
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`rationale would cut against the Board’s practice that parties move for joinder in a
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`way that “will have little or no impact on the timing, cost, or presentation of the trial
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`on the instituted ground.” See, e.g., Dell Inc. v. Alacritech, Inc., IPR2018-01307,
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`Paper 8 at 5 (Jan. 11, 2019).
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`B. DISH’s Alleged Untimeliness Should Not Be Attributed to Google
`and Comcast
`Realtime’s Real Party-in-Interest Argument Lacks Merit
`1.
`Realtime argues that any IPR involving Google or Comcast is time-barred
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`under § 315(b) because DISH is a time-barred real party-in-interest (“RPI”) due to
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`its control of this proceeding so far. (Mot. at 8.) However, “the best reading of
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`§ 315(b) requires consideration of privity and RPI relationships arising after filing
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`but before institution.” Power Integrations, Inc. v. Semiconductor Components
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`Indus., LLC, 926 F.3d 1306, 1315 (Fed. Cir. 2019) (emphasis added). Because DISH
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`did not fund or control Google’s or Comcast’s respective Petitions or proceedings
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`prior to institution, DISH cannot be an RPI in those proceedings.
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`Similarly, DISH’s role in IPR2018-01342 after joinder does not create an RPI
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`relationship because Google and Comcast were merely joined for the purposes of
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`increasing efficiency and reducing the burden on the parties and the Board. See
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`IPR2019-00748, Paper 3 at 4–8; IPR2019-00760, Paper 3 at 6–9. That is, although
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`Google and Comcast were joined as petitioners, Google’s, Comcast’s, and DISH’s
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`interests are separate from one another. Indeed, the Board’s orders granting joinder
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`recognize that Google and Comcast may need to address “points of disagreement
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`with [DISH].” IPR2019-00748, Paper 6 at 7; IPR2019-00760, Paper 6 at 6. If
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`anything, the only common interest among the petitioners is a desire to invalidate
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`the ’535 patent, but that, without more, does not establish an RPI relationship. See
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`WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1321–22 & n.8 (Fed.
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`Cir. 2018).
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`2.
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`Click-to-Call Does Not Support Equal Treatment of Google
`and Comcast with DISH
`Realtime also cites Click-to-Call Technologies, LP v. Ingenio, Inc., 899 F.3d
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`1321, 1338 (Fed. Cir. 2018), for the proposition that Google and Comcast are an
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`“undifferentiated unit” with DISH that together should receive equal treatment.
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`(Mot. at 7.) In Click-to-Call, the Federal Circuit determined that § 315(b) “appl[ies]
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`petition-by-petition,” “with the collection of petitioners on a single petition treated
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`as a unit indistinguishable from each member of that collection.” 899 F.3d at 1338.
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`Click-to-Call, however, concerned co-petitioners on a single petition instead of post-
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`institution joined petitioners, and therefore is not applicable to Google and Comcast
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`here. See id. at 1338–39 & n.8 (distinguishing the co-petitioner scenario of Click-
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`to-Call from a scenario involving joined petitioners).
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`Unlike in Click-to-Call, Google and Comcast each filed their own separate
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`Petitions after IPR2018-01342 was instituted and therefore should not be treated as
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`a single petitioner along with DISH. This is true even though Google and Comcast
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`were later joined to IPR2018-01342. As with DISH’s Petition, Google’s and
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`Comcast’s Petitions were each assessed on their own merits. Proppant, Paper 38 at
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`12. As such, Google and Comcast should each get “separate treatment” from DISH
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`and be permitted to maintain this proceeding. See Click-to-Call, 899 F.3d at 1338–
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`39 & n.8.
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`C. The Board Has Authority to Maintain This Proceeding
`Realtime’s argument that there is no proceeding for Google and Comcast to
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`maintain because DISH’s IPR should have never been instituted fails for several
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`reasons. (Mot. at 6–7.) First, Realtime does not cite a single case that supports its
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`conclusion. Second, based on the law at the time, DISH’s IPR was properly
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`instituted. See IPR2018-01342, Paper 9 at 12–14 (determining that a complaint not
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`served by a patent owner does not trigger the one-year time bar under § 315(b) based
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`on Federal Circuit precedent and the language and legislative history of the statute).
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`Third, the absence of a petitioner from a proceeding is of no issue.
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`The third point is contemplated by the statute regarding settlement, which
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`provides that an IPR may be terminated as to only a subset of petitioners. See 35
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`U.S.C. § 317(a). Even when no petitioner remains, the agency may “proceed to a
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`final written decision.” Id. To illustrate, in Facebook, Inc. v. Windy City Innovations
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`LLC, petitioner Facebook, which was outside the one-year period for filing a petition
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`under § 315(b), filed a petition with a motion for joinder under § 315(c) with a
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`proceeding initiated by Microsoft. IPR2016-01155, Paper 32 at 2, 6, 16 (June 1,
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`2017). Before Facebook’s joinder motion was ruled upon, Microsoft and the patent
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`owner settled and filed a joint motion to terminate the proceeding. Id., Paper 33 at
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`2 (June 7, 2017). The Board did terminate Microsoft, but nevertheless exercised its
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`discretion and joined Facebook, which maintained the proceeding as the sole
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`remaining petitioner. Id., Paper 53 at 4–7 (Aug. 14, 2017).
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`Here, the situation is much simpler. Unlike in Facebook, Google and Comcast
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`were joined in IPR2018-01342 before the present question arose as to DISH’s
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`termination. Google and Comcast were not time-barred from filing their own
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`Petitions under § 315(b), and could properly have done so had the Board then
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`indicated that DISH was time-barred. Now that Realtime is moving to terminate,
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`this proceeding is at a far-advanced stage with oral argument being the only
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`substantive milestone remaining. IPR2018-01342, Paper 28 at 2. Allowing Google
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`and Comcast to proceed would impose no undue burden and would avoid wasting
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`the resources expended thus far, while resolving the patentability questions in
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`Google’s and Comcast’s Petitions that the Board duly instituted. Therefore,
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`compared to Facebook, there is an even stronger basis for letting Google and
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`Comcast maintain this proceeding.
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`D. The Board Has Authority to Allow Google and Comcast to Proceed
`to Trial
`Alternatively, the Board has the authority to reconsider its joinder and
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`termination decisions in Google’s and Comcast’s IPRs in the interest of reaching a
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`final written decision. BioDelivery Scis. Int’l, Inc. v. Aquestive Therapeutics, Inc.,
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`935 F.3d 1362, 2019 WL 4062525, at *3 (Fed. Cir. Aug. 29, 2019) (discussing
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`administrative agencies’ “inherent authority to reconsider their decisions”). The
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`Board initially decided, in its discretion and based on then-controlling law, to grant
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`Google’s and Comcast’s properly-postured joinder motions for the sake of
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`efficiency. Although the GoPro decision has since issued, it should not be viewed
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`as foreclosing the efficient resolution of issues of patentability by Google and
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`Comcast who duly raised them. Google’s and Comcast’s current postures are only
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`the result of the Board’s exercise of its authority and discretion in instituting, joining,
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`and terminating their proceedings, as the statutes do not prescribe the specifics of
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`these agency actions. See 35 U.S.C. § 315(c), (d); Facebook, Paper 53 at 9
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`(discussing the Board discretionary actions in managing IPR proceedings). And the
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`intervening GoPro decision itself was the result of the Board’s exercise of its
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`authority and discretion. SOP 2 (Rev. 10) at 2 (citing congressionally granted
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`authority under 35 U.S.C. §§ 6(a), 3(a)(2)(A), 2(b)(2)(A)). The Board has the
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`authority now to reorient Google and Comcast, in whatever way it sees fit to avoid
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`offending GoPro, in order to reach a final decision on patentability. 2
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`After meeting all the statutory and regulatory requirements, Google and
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`Comcast cannot be faulted for complying with the Board’s precedent at the time
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`2 The Board’s discretion in managing the proceedings before it is similar to a district
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`court’s discretion in managing its docket. The Board, for example, can consider
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`severing the IPR2018-01342 proceeding into two, similar to how a district court can
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`sever a case under the Fed. R. Civ. Proc. 21 upon determining “whether keeping
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`claims together in a single case would comport with the principles of fundamental
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`fairness or would result in prejudice to either side.” In re Intex Recreation Corp.,
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`Order No. 18-131, 2018 WL 3089215, at *3 (Fed. Cir. June 13, 2018) (internal
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`quotation marks and citations omitted).
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`regarding joinder and observing the then-controlling authority applied in the DISH
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`institution decision, which decided the time-bar issue. If the Board were to terminate
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`as to Google and Comcast under a newly-adopted understanding of § 315(b) that is
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`indisputably inapplicable to Google and Comcast, such an action would not only be
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`unfair but also unreasonable and arbitrary. See FCC v. Fox Television Stations, 556
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`U.S. 502, 515 (2009) (noting that “serious reliance interests” “must be taken into
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`account” when an agency changes its position). The unjust result of terminating
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`Google and Comcast—who complied with all the legal and regulatory requirements
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`and followed the Board’s preference for the efficiencies and cost savings of joined
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`proceedings—can be avoided here by permitting Google and Comcast to proceed
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`with an IPR proceeding challenging the ’535 patent based on the grounds in their
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`respective Petitions.
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`III. CONCLUSION
`For the reasons set forth above, the Board should maintain an inter partes
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`review proceeding with at least Google and Comcast as petitioners.
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`Dated: September 26, 2019
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`Respectfully submitted,
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`By: /Naveen Modi/
` Naveen Modi (Reg. No. 46,224)
` Counsel for Petitioner
` Google LLC
`
`By: /James L. Day/
` James L. Day (Reg. No. 72,681)
` Counsel for Petitioner
` Comcast Cable Communications, LLC
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`CERTIFICATE OF SERVICE
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`I hereby certify that on September 26, 2019, I caused a true and correct copy
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`of the foregoing Joint Opposition to Patent Owner’s Motion to Terminate to be
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`served by electronic means, as agreed by the parties, upon Counsel for Patent
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`Owner at the following addresses of record:
`
`Philip X. Wang (pwang@raklaw.com)
`C. Jay Chung (jchung@raklaw.com)
`Kent N. Shum (kshum@raklaw.com)
`Reza Mirzaie (rmirzaie@raklaw.com)
`Neil A. Rubin (nrubin@raklaw.com)
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`rak_realtimedata@raklaw.com
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`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`
` /s/ James L. Day
`James L. Day
`Registration No. 72,681
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`