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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________
`
`
`GOOGLE LLC
`Petitioner
`
`v.
`
`REALTIME ADAPTIVE STREAMING LLC
`Patent Owner
`
`_________________
`
`Case IPR2019-01035
`Patent 9,769,477
`_________________
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`PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
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`
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`
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`INTRODUCTION
`PO’s arguments under 35 U.S.C. § 314(a) based on prior Netflix (IPR2018-
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`IPR2019-01035
`Patent 9,769,477
`
`
`I.
`
`01187, -01630) and Sony IPRs (IPR2018-01413) should be rejected. When properly
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`balanced, the General Plastic factors favor institution.
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`II. ARGUMENT
`PO admits that the first General Plastic factor favors of institution. So does
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`the second because PO points to no evidence that Google knew or should have
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`known of the prior art asserted in its Petition at the time Netflix’s first petition was
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`filed. As PO recognizes, Brooks was only cited in the Sony IPR, but that IPR was
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`terminated before the filing of any POPR. (POPR, 10.)
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`The third General Plastic factor favors institution. PO argues that Google
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`benefited from access to PO’s POPRs and the Institution Decisions in the Netflix
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`IPRs because Google’s petition was filed later in time.1 (POPR, 7-8.) Were that the
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`case, a patentee could negate defendants’ statutory rights to file an IPR merely by
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`filing a complaint against one party, and waiting until after that party had filed an
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`IPR and obtained an Institution Decision before filing actions against other parties.
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`Therefore, the relevant question is whether Google obtained an unfair benefit from
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`1 Due to settlement, PO did not file a POPR in the Sony IPR.
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`1
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`Netflix’s POPR and Institution Decision. Gen. Plastic Indus. Co. v. Canon
`
`IPR2019-01035
`Patent 9,769,477
`
`Kabushiki Kaisha, IPR2016-01357, Paper 19 at 17-18 (Sept. 6, 2017) (precedential).
`
`First, the fact that Google had access to the POPRs and Institution Decisions
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`in the Netflix IPRs is attributable to PO’s decision to sue Google more than five
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`months after Netflix. PO cannot claim unfairness when its own litigation conduct is
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`at least partially to blame. Second, there is no evidence that Google derived an unfair
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`advantage, for example, by changing its prior art positions in view of the Netflix
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`IPRs.2 Contrary to PO’s contention that Google tailored its Petition to address PO’s
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`arguments in the Netflix POPRs relating to the “compression rate” limitation (POPR,
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`8-10), the Petition simply explains how this limitation is disclosed by Brooks.
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`Indeed, Google could not have derived such benefit given that the Board instituted
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`the Netflix IPRs rejecting PO’s prior art arguments.
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`The fourth and fifth General Plastic factors also favor institution. Google, as
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`a first time Petitioner, was entitled to utilize the full statutorily granted period to file
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`an IPR petition. That Google “may have been able to file the Petition earlier” does
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`2 PO notes that Google’s Petition copies paragraphs directly from Sony’s petition
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`with respect to Brooks (POPR, 8), but this fact only underscores that Google did not
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`tailor its Petition based on the Netflix IPRs. Instead, Google’s Petition is largely a
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`copy of the petition in the Sony IPR, which was terminated before a POPR was filed.
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`2
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`not show that Google gained an unfair advantage by filing at the one year date.
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`IPR2019-01035
`Patent 9,769,477
`
`Found. Med. Inc. v. Guardant Health Inc., IPR2019-00634, Paper 10 at 39-40 (Aug.
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`19, 2019); Ericsson Inc. v. Intellectual Ventures II LLC, IPR2018-01689, Paper 15
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`at 58-62 (Apr. 16, 2019) (noting that the petitioner is “free to wait to file” until the
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`statutory bar date regardless of when Petitioner came to know of the prior art).
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`Here, any purported delay in the filing of Google’s petition resulted from PO’s
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`strategic staggering of its infringement complaints and its narrowing of the asserted
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`claims against Google as late as January 23, 2019. (Ex. 1020.)
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`While the Board has faulted a party for waiting until its statutory bar date,
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`those cases are distinguishable. In Valve, (i) the two Petitioners (Valve and HTC)
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`were similarly situated because they were sued at the same time and Valve was the
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`licensor of the technology incorporated in HTC’s accused products, and (ii) Valve
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`filed its Petition after the Board denied HTC’s petition. Valve Corp. v. Electronic
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`Scripting Prod., Inc., IPR2019-00062, Paper 11 at 13-14 (Apr. 2, 2019)
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`(precedential). In NetApp, the Board found that factors four and five weighed against
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`institution because NetApp’s petition was largely duplicative of prior petitions.
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`NetApp Inc. v. Realtime Data LLC, IPR2017-01195, Paper 9 at 11-13 (Oct. 12,
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`2017). No such concerns are implicated here because there is no allegation that
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`Google and Netflix are similarly situated like in Valve; Netflix’s IPRs, unlike in
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`3
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`
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`Valve, were instituted; the grounds in Google’s petition are different from those at
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`IPR2019-01035
`Patent 9,769,477
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`issue in the Netflix IPRs; and the Sony IPR was terminated upon settlement.
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`The sixth and seventh General Plastic factors also favor institution. Unlike
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`NetApp, upon which PO heavily relies (POPR, 13-18), the grounds presented in
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`Google’s Petition are very distinct from those in the Netflix IPRs. IPR2017-01195,
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`Paper 9 at 12-13. Hence, the Board’s concern in NetApp that it would need to
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`conduct an entirely new proceeding involving numerous issues considered in the
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`previously instituted proceedings is not implicated here. Id.
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`Ultimately, the Board must balance fairness considerations with respect to all
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`parties. Realtime and the Netflix Petitioners controlled the timing of the filing of
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`the district court complaints and the Netflix IPRs, respectively. Accordingly, it
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`would be highly unfair and prejudicial “to impart onto [Google] the consequences
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`of the actions of other, unrelated parties, and without regard to the merits of
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`[Google’s] case.” Cook, Inc. v. Medtronic Inc., IPR2019-00123, Paper 11 at 41-42.
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`Instead, the Board should take into account “the purpose of the availability of inter
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`partes review to parties accused of infringement” and the fact that the multiple IPRs
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`are simply the result of PO’s “own litigation activity.” Samsung Elecs. Am., Inc. v.
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`Uniloc Luxembourg S.A., IPR2017-01801, Paper 8 at 26 (Feb. 6, 2018).
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`III. CONCLUSION
`The Board should grant Google’s Petition to institute IPR of the ’477 patent.
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`4
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`Dated: September 17, 2019
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`IPR2019-01035
`Patent 9,769,477
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`Respectfully submitted,
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`By: /Naveen Modi/
` Naveen Modi (Reg. No. 46,224)
` Counsel for Petitioner
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`5
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`CERTIFICATE OF SERVICE
`I hereby certify that on September 17, 2019, I caused a true and correct copy
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`IPR2019-01035
`Patent 9,769,477
`
`of the foregoing Reply to Patent Owner’s Preliminary Response was served by
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`electronic means, as agreed by the parties, upon Counsel for Patent Owner at the
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`following address of record:
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`rak_realtimedata@raklaw.com
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`
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`By: /Naveen Modi/
` Naveen Modi (Reg. No. 46,224)
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`6
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