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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`____________
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`GOOGLE LLC,
`Petitioner
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`v.
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`REALTIME ADAPTIVE STREAMING LLC,
`Patent Owner
`____________
`
`Case IPR2019-01035
`Patent 9,769,477
`____________
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`PATENT OWNER’S PRELIMINARY
`RESPONSE SUR-REPLY
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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
`____________
`
`
`PATENT OWNER’S PRELIMINARY
`RESPONSE SUR-REPLY
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`PATENT OWNER’S EXHIBIT LIST
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`2002
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`2003
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`Exhibit No. Description
`2001
`Excerpts of Petitioner Google’s invalidity contentions in Case
`2:18-cv-03629-GW-JC (C.D. Cal.) served on January 18, 2019.
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`Petitioner Google’s election of asserted prior art in Case 2:18-cv-
`03629-GW-JC (C.D. Cal.) served on February 8, 2019.
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`Scheduling Order, Case 2:18-cv-03629-GW-JC, D.I. 67 (C.D.
`Cal. May 23, 2019)
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`Google’s final election of asserted prior art in Case 2:18-cv-
`03629-GW-JC (C.D. Cal.) served September 9, 2019.
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`Excerpts of Google’s invalidity expert report in Case 2:18-cv-
`03629-GW-JC (C.D. Cal.) served September 16, 2019.
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`2004
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`2005
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`
`i
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`IPR2019-01035
`POPR Sur-reply
`Google’s reply contains a fatal admission. It concedes that this “Petition is
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`largely a copy of the petition in the Sony IPR” (IPR2018-01413). Paper 7 at 2, n. 2
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`(emphasis added). The Sony petition was filed on July 31, 2018. But this Petition
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`was not filed until May 6, 2019—more than nine months later. Thus, by Google’s
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`own admission, it could have filed this Petition about nine months earlier.
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`This excessive, unjustified delay is just what the General Plastic factors were
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`designed to prevent. As a result of Google’s delay, the PTAB will decide the patent-
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`ability of the same ’477 patent claims in two prior IPRs at least seven months before
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`this IPR. And a district court will conduct a separate trial—involving the same par-
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`ties, patent claims, prior art, and invalidity arguments—seven months before.
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`Google’s nine-month delay ensures that instituting this IPR will waste the Board’s
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`resources and unfairly prejudice Realtime. Institution should be denied.
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`The General Plastic Factors Weigh Strongly Against Institution
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`Factor 2. Google agrees Factor 1 is not dispositive but wrongly argues that
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`Factor 2 favors institution. Compare POPR (Paper 6) at 5–7, with Reply (Paper 7)
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`at 1. To the extent Factor 2 is not neutral, it weighs against institution. The Netflix
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`petitions were filed in June and September 2018. Brooks is a publicly available pa-
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`tent and Google knew of it by July 2018. Thus, Google “knew or should have known
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`of” Brooks at the time of the Netflix petitions. General Plastics at 9.
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`Factor 3. Google’s reply confirms that Factor 3 weighs against institution.
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`1
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`IPR2019-01035
`POPR Sur-reply
`Realtime showed how Google studied the Netflix IPRs and tailored its Petition based
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`on the POPRs and institution decisions. See POPR at 8–10. In reply, Google con-
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`cedes it “had access to the POPRs and Institution Decisions.” Reply at 2. Google’s
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`main argument is that it copied the Sony petition, not the Netflix petitions. Id. at 2,
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`n.2. But a comparison between the Sony petition and Google’s “largely copied” Pe-
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`tition proves Realtime’s point. Google’s Petition attempts to fill in gaps from the
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`Sony petition based on information gained from the Netflix IPRs.
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`The Sony petition argues (in one paragraph) that Brooks teaches encoders
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`“that result in different data compression rates.” See IPR2018-01413, Paper 3 at 32–
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`33. But Brooks only mentions compression ratios, not rates. And as Realtime ex-
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`plained in the Netflix IPRs, there is a significant distinction between compression
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`ratios and compression rates. See POPR at 8–9. Google’s Petition attempts to im-
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`prove on Sony’s petition by expanding the one paragraph into three pages. See Pet.
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`(Paper 1) at 32–34. Google’s Petition acknowledges that Brooks’s teachings are
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`about compression ratios and attempts to explain the connection between compres-
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`sion ratios and rates. Id. This is exactly what was discussed in the Netflix IPRs and
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`what was missing from the Sony petition.
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`The differences with the Sony petition confirms that Google derived an unfair
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`benefit from the Netflix IPRs. Google’s assertion that it could not obtain any benefit
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`because the IPRs were instituted (Reply at 2) is false. The benefit is the opportunity
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`2
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`IPR2019-01035
`POPR Sur-reply
`to address potential defects in the Petition. Whether the Netflix IPRs were instituted
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`under a preliminary record is irrelevant.
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`Factors 4 and 5. Based on Google’s own admission, Factors 4 and 5 weigh
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`heavily against institution. Google admits that this Petition “is largely a copy” of the
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`Sony petition filed on July 31, 2018. Thus, Google not only knew of the art but
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`already had a full petition it could copy and adapt. Yet it waited an additional nine
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`months—until May 6, 2019—before filing this Petition. This is inexcusable.
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`Unable to justify its delay, Google resorts to twisting the facts and the law.
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`Google refers to Realtime’s alleged “staggering of its infringement complaints.” Re-
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`ply at 3. But Google was served on May 4, 2018, and all ’477 IPRs were filed after
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`that date. Google received the Sony petition about three months after being served.
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`Yet it filed this Petition one year and two days after service. Realtime’s election of
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`claims in January 2019 is also irrelevant. Sony’s petition challenged all claims, 1–
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`29, of the ’477 patent. Google’s Petition challenges a subset of those claims. Since
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`Google’s Petition is “largely a copy” of the Sony petition, nothing prevented Google
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`from challenging additional claims of the ’477 patent before January 2019.
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`Google also attempts to distinguish Realtime’s cited cases for reasons that
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`have nothing to do with Factors 4 and 5. See Reply at 3–4 (discussing Valve I and
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`NetApp). Factors 4 and 5 concern the length of time between when the petitioner
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`learned of the prior art and the filing of the petition and whether petitioner provides
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`3
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`IPR2019-01035
`POPR Sur-reply
`adequate explanation for that delay. General Plastics at 9. Here, it is undisputed that
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`Google learned of Brooks by July 31, 2018 and delayed more than nine months.
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`Indeed, Google’s delay is far worse than the delay in Valve and NetApp (POPR at
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`10–12) because Google already had a petition it largely copied.
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`Factors 6 and 7. These efficiency factors weigh strongly against institution.
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`Google does not dispute that because of its delay, the PTAB and district court are
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`set to rule of the validity of the same ’477 patent claims in three other proceedings
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`long before this IPR. See POPR at 13–14. Nor does Google dispute that the far ad-
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`vanced district court litigation involves the identical issues as this IPR and that NHK
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`Spring is squarely on point. See id. at 14–16.
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`Indeed, since this POPR was filed, developments in the district court confirm
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`that the parties’ April 2019 trial will be duplicative of this IPR. On September 9,
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`2019, Google served its final election of prior art and elected Brooks for the ’477
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`patent. Ex. 2004 (Google Final Election) at 2. And on September 17, Google served
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`its invalidity expert report and presented the same invalidity arguments, anticipation
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`and obviousness, for Brooks. See Ex. 2005 (Excerpts of Google Invalidity Report).
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`The district court trial will conclude seven months before this IPR.
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`Thus, instead of being an “efficient alternative to district court litigation,” this
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`IPR is a repetitive and long-staggered attack. It wastes the Board’s finite resources
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`and unfairly prejudices Realtime. Institution should be denied.
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`4
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`IPR2019-01035
`POPR Sur-reply
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`Respectfully submitted,
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`Dated: September 27, 2019
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`
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`
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`/s/ Philip X. Wang
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`Philip X. Wang (Reg. No. 74,621)
`C. Jay Chung (Reg. No. 71,007)
`Reza Mirzaie (Reg. No. 69,138)
`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
`jchung@raklaw.com
`rmirzaie@raklaw.com
`rak_realtimedata@raklaw.com
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`
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`5
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`IPR2019-01035
`POPR Sur-reply
`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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`September 27, 2019, by filing this document through the Patent Trial and Appeal
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`Board End to End system as well as delivering a copy via electronic mail upon the
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`following attorneys of record for the Petitioner:
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`Naveen Modi (Reg. No. 46,224)
`naveenmodi@paulhastings.com
`PH-Google-Realtime-IPR@paulhastings.com
`Joseph E. Palys (Reg. No. 46,508)
`josephpalys@paulhastings.com
`Howard Herr (pro hac vice admission to be requested)
`howardherr@paulhastings.com
`Paul Hastings LLP
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`
`
`
`
`/s/ Philip X. Wang
`
`Philip X. Wang (Reg. No. 74,621)
`C. Jay Chung (Reg. No. 71,007)
`Reza Mirzaie (Reg. No. 69,138)
`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
`jchung@raklaw.com
`rmirzaie@raklaw.com
`rak_realtimedata@raklaw.com
`
`
`Dated: September 27, 2019
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