UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________
`
`COMCAST CABLE COMMUNICATIONS, LLC
`
`Petitioner
`
`v.
`
`REALTIME ADAPTIVE STREAMING, LLC
`
`Patent Owner
`
`___________
`
`Patent No. 9,769,477
`
`___________
`
`MOTION FOR JOINDER
`
`
`
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________
`
`COMCAST CABLE COMMUNICATIONS, LLC
`
`Petitioner
`
`v.
`
`REALTIME ADAPTIVE STREAMING, LLC
`
`Patent Owner
`
`___________
`
`Patent No. 9,769,477
`
`___________
`
`MOTION FOR JOINDER
`
`
`
`I.
`
`INTRODUCTION
`
`Petitioner Comcast Cable Communications, LLC (“Petitioner” or
`
`“Comcast”) submits concurrently with this motion a petition for inter partes
`
`review of U.S. Patent No. 9,769,477 (the “’477 Patent”) based on the identical
`
`grounds that form the basis for the pending inter partes review initiated by Netflix,
`
`Inc. concerning the same patent: Case No. IPR2018-01630 (the “Netflix IPR”).
`
`Petitioner respectfully requests that the accompanying petition be instituted
`
`and further that this motion for joinder with the Netflix IPR pursuant to 35 U.S.C.
`
`§ 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b) be granted. Petitioner merely
`
`requests an opportunity to join with the Netflix IPR as an “understudy” to Netflix,
`
`only assuming an active role in the event Netflix settles with Patent Owner
`
`Realtime Adaptive Streaming, LLC (“Realtime”). Petitioner does not seek to alter
`
`the grounds upon which the Board has already instituted the Netflix IPR, and
`
`joinder will have no impact on the Netflix IPR’s existing schedule. Petitioner has
`
`conferred with counsel for Netflix and confirmed that it does not oppose this
`
`motion. This motion is timely as it was filed within one month of the institution of
`
`IPR2018-01630. 35 U.S.C. § 21(b); 37 C.F.R. § 42.122(b).
`
`II.
`
`BACKGROUND AND RELATED PROCEEDINGS
`
`In 2017 and 2018, Realtime filed a number of lawsuits alleging infringement
`
`of various patents including the ’477 Patent. Realtime sued Netflix for
`
`1
`
`
`
`infringement of several patents including the ’477 Patent in the District of
`
`Delaware in November 2017. Realtime sued Comcast for infringement of several
`
`patents including the ’477 Patent in the District of Colorado in June 2018. The
`
`’477 Patent has been asserted in the following lawsuits:
`
`• Realtime Adaptive Streaming LLC v. Amazon.com, Inc., Case No. 6:17-
`cv-549 (E.D. Tex.);
`
`• Realtime Adaptive Streaming LLC v. Hulu, LLC, Case No. 2:17-cv-7611
`(C.D. Cal.);
`
`• Realtime Adaptive Streaming LLC v. Cisco Systems, Inc., Case No. 6:17-
`cv-591 (E.D. Tex.);
`
`• Realtime Adaptive Streaming LLC v. Brightcove, Inc., Case No. 1:17-cv-
`1519 (D. Del.);
`
`• Realtime Adaptive Streaming LLC v. Haivision Network Video, Inc., Case
`No. 1:17-cv-1520 (D. Del.);
`
`• Realtime Adaptive Streaming LLC v. Polycom, Inc., Case No. 1:17-cv-
`2692 (D. Colo.);
`
`• Realtime Adaptive Streaming LLC v. Netflix, Inc., Case No. 1:17-cv-1692
`(D. Del.);
`
`• Realtime Adaptive Streaming LLC v. Sony Elecs., Inc., Case No. 1:17-cv-
`1693 (D. Del.);
`
`• Realtime Adaptive Streaming LLC v. Apple, Inc., Case No. 1:17-cv-2869
`(D. Colo.);
`
`• Realtime Adaptive Streaming LLC v. Adobe Systems Inc., Case No. 1:18-
`cv-10355 (D. Mass.);
`
`• Realtime Adaptive Streaming LLC v. Samsung Elec. Co., Ltd., Case No.
`6:18-cv-113 (E.D. Tex.);
`
`2
`
`
`
`• Realtime Adaptive Streaming LLC v. Wowza Media Systems LLC, Case
`No. 1:18-cv-927 (D. Colo.);
`
`• Realtime Adaptive Streaming LLC v. Google LLC et al, Case No. 2:18-
`cv-3629 (C.D. Cal.);
`
`• Realtime Adaptive Streaming LLC v. Avaya Inc., Case No. 1:18-cv-1046
`(D. Colo.);
`
`• Realtime Adaptive Streaming LLC v. Broadcom Corporation et al., Case
`No. 1:18-cv-1048 (D. Colo.);
`
`• Realtime Adaptive Streaming LLC v. LG Electronics Inc. et al, Case No.
`6:18-cv-215 (E.D. Tex.);
`
`• Realtime Adaptive Streaming LLC v. Advanced Micro Devices, Inc., Case
`No. 1:18-cv-1173 (D. Colo.);
`
`• Realtime Adaptive Streaming LLC v. Intel Corporation, Case No. 1:18-
`cv-1175 (D. Colo.);
`
`• Realtime Adaptive Streaming LLC v. Mitel Networks, Inc., Case No.
`1:18- cv-1177 (D. Colo.);
`
`• Realtime Adaptive Streaming LLC v. Charter Communications, Inc. et al,
`Case No. 1:18-cv-1345 (D. Colo.);
`
`• Realtime Adaptive Streaming LLC v. Cox Communications, Inc., Case
`No. 8:18-cv-942 (C.D. Cal.); and
`
`• Realtime Adaptive Streaming LLC v. Comcast Cable Communications,
`LLC, Case No. 1:18:cv-1446 (D. Colo.).
`
`Several of these lawsuits have since been dismissed.
`
`In September 2018, Netflix, Inc. filed a petition for inter partes review
`
`challenging claims 7, 8, 15-19, 23, 24, 28, and 29 of the ’477 Patent. Case No.
`
`IPR2018-01630, Paper 2. The Board instituted review on April 19, 2019. Case
`
`No. IPR2018-016307, Paper 13.
`
`3
`
`
`
`In addition to the Netflix IPR (IPR2018-01630), four other petitions for inter
`
`partes review have been filed challenging claims of the ’477 Patent:
`
`• Sony Corporation and Polycom, Inc., v. Realtime Adaptive Streaming
`LLC, Case No. IPR2018-01413 (challenging claims 1-29);
`
`• Netflix, Inc. v. Realtime Adaptive Streaming LLC, Case No. IPR2018-
`01187 (challenging claims 1-6, 9-14, 20-22, and 25-27);
`
`• Comcast Cable Communications, LLC v. Realtime Adaptive Streaming,
`LLC, Case No. IPR2019-00786 (challenging claims 1-6, 9-14, 20-22, and
`25-27); and
`
`• Google LLC v. Realtime Adaptive Streaming LLC, IPR2019-01035
`(challenging claims 1, 3, 4, 7, 9, 16, 17, and 20-22).
`
`The Sony proceeding (IPR2018-01413) has been terminated. Review was
`
`instituted in the earlier Netflix petition challenging the ’477 Patent (IPR2018-
`
`01187) on February 4, 2019, and Comcast filed a petition and motion to join the
`
`earlier Netflix proceeding. Review has not yet been instituted and no response has
`
`yet been filed in Comcast’s proceeding (IPR2019-00786), which remains pending.
`
`Similarly, review has not yet been instituted and no response has yet been filed in
`
`Google’s proceeding (IPR2019-01035), which remains pending.
`
`III. LEGAL STANDARD AND APPLICABLE RULES
`
`Joinder is governed by 35 U.S.C. § 315(c), which reads as follows:
`
`Joinder.— If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that inter
`partes review any person who properly files a petition under section
`311 that the Director, after receiving a preliminary response under
`section 313 or the expiration of the time for filing such a response,
`
`4
`
`
`
`determines warrants the institution of an inter partes review under
`section 314.
`
`A motion for joinder should “(1) set forth the reasons why joinder is
`
`appropriate; (2) identify any new grounds of unpatentability asserted in the
`
`petition; (3) explain what impact (if any) joinder would have on the trial schedule
`
`for the existing review; and (4) address specifically how briefing and discovery
`
`may be simplified.” Dell Inc. v. Network-1 Security Solutions, Inc., IPR2013-
`
`00385, Paper 17 at 4 (PTAB July 29, 2013); see also Kyocera Corp. v. Softview
`
`LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013) (representative). These
`
`factors, as discussed below, support Petitioner’s motion for joinder with the Netflix
`
`IPR.
`
`IV. PETITIONER MEETS THE REQUIREMENTS FOR A MOTION
`FOR JOINDER
`
`Petitioner submits that (1) joinder is appropriate because it will promote
`
`efficient determination of the validity of the challenged claims of the ‘477 Patent
`
`without prejudice to Netflix or Realtime; (2) Petitioner’s petition raises the same
`
`grounds for unpatentability as does Netflix’s petition; (3) joinder would not affect
`
`the pending schedule in the Netflix IPR nor would it increase the complexity of
`
`that proceeding; and (4) Petitioner is willing to accept an understudy role in the
`
`Netflix IPR to avoid burden and schedule impact. Absent joinder, the Board could
`
`be burdened with two parallel inter partes reviews addressing the same challenged
`
`5
`
`
`
`claims based on the same instituted grounds proceeding on two different schedules.
`
`Accordingly, joinder should be granted.
`
`A.
`
`Joinder Will Promote the Efficient Determination of the Validity
`of the Challenged Claims of the ’477 Patent and Will Not
`Prejudice Netflix or Realtime
`
`Granting joinder and allowing Petitioner to assume an “understudy” role will
`
`not prejudice Netflix or Realtime. The Petition does not raise any issues that are
`
`not already before the Board in the Netflix IPR. Joinder thus would not affect the
`
`timing of the Netflix IPR or content of Realtime’s responses. The Board has
`
`granted motions for joinder in similar circumstances. See, e.g., Dell Inc. v.
`
`Alacritech, Inc., IPR2018-01307, Paper 8 at 5 (PTAB Jan. 11, 2019); Nidec Corp.
`
`v. Intellectual Ventures LLC, IPR2018-00597, Paper 10 at 6 (PTAB Apr. 26,
`
`2018); Google Inc. v. B.E. Technology, LLC, IPR2014-00743, Paper 10 at 4-5
`
`(PTAB June 18, 2014). Petitioner has notified counsel for Netflix of this motion
`
`and confirmed that it does not oppose joinder.
`
`Moreover, the Board’s final written decision on the ’477 Patent will
`
`minimize issues in the underlying litigation and could potentially contribute to
`
`resolving the underlying litigation altogether. This would promote the efficient
`
`determination of the ’477 Patent’s validity. If the Board allows Petitioner to join
`
`the Netflix IPR and upholds the ’477 Patent’s validity, Petitioner will be estopped
`
`from further challenging the validity of the ’477 Patent on the grounds in the
`
`6
`
`
`
`petition. 35 U.S.C. § 315(e)(1). Thus, joinder is appropriate here to promote
`
`judicial efficiency and avoid unnecessary expense.
`
`B.
`
`Petitioner’s Petition Raises the Same Grounds at Issue in the
`Netflix IPR
`
`The petition challenges the same claims of the ’477 Patent challenged in the
`
`Netflix IPR and asserts only the grounds that the Board has already instituted in the
`
`Netflix IPR. There are no new arguments for the Board to consider. Further, the
`
`petition relies on the same exhibits and expert declaration as the Netflix IPR so
`
`there is no new or additional evidence for the Board to consider.
`
`C.
`
`Joinder Will Not Affect the Schedule of the Netflix IPR
`
`Allowing Petitioner to join the Netflix IPR will not impact the Board’s
`
`ability to complete its review within the statutory period and according to the
`
`schedule already set in the Netflix IPR. Petitioner agrees to an “understudy” role
`
`and does not raise any issues that are not already before the Board. The invalidity
`
`grounds in the petition are the same as those the Board already instituted in the
`
`Netflix IPR. Given that Petitioner will assume an “understudy” role, its addition to
`
`the Netflix IPR will not introduce any additional arguments, briefing, or need for
`
`discovery. See, e.g., Dell Inc. v. Alacritech, Inc., IPR2018-01307, Paper 8 at 5
`
`(PTAB Jan. 11, 2019).
`
`Petitioner believes that Realtime does not need to file a Patent Owner’s
`
`Preliminary Response in response to the petition, and requests that the Board
`
`7
`
`
`
`proceed without one. This is consistent with the Board’s Order in IPR2013-00256
`
`(Paper 8), which allowed the Patent Owner to file a preliminary response
`
`addressing only those points raised in the new petition that were different from
`
`those in the granted petition. Here, because the invalidity grounds in the petition
`
`are identical to those instituted in the Netflix IPR, there are no new arguments for
`
`Realtime to address. Realtime already addressed the invalidity grounds in the
`
`petition in its Preliminary Response to the Netflix IPR. Alternatively, the Board
`
`could add an additional deadline for Realtime to respond to this petition. Such a
`
`deadline would not impact other deadlines in the Netflix IPR schedule.
`
`Petitioner Agrees to Assume a Limited “Understudy” Role
`D.
`As long as Netflix remains in the joined inter partes review proceeding,
`
`Petitioner agrees to assume a limited “understudy” role. Petitioner would only take
`
`on an active role if Netflix were no longer a party to the IPR. Petitioner presents
`
`no new grounds for invalidity and agrees that, so long as Netflix is actively
`
`engaged in the proceeding, it will not introduce any additional arguments (written
`
`or oral) or seek additional discovery.
`
`V.
`
`THE CLAIM CONSTRUCTION RULE CHANGE DOES NOT
`AFFECT COMCAST’S PETITION OR MOTION TO JOIN
`
`The Board instituted the Netflix IPR subject to the broadest reasonable
`
`interpretation (BRI) standard. See IPR2018-01630, Paper 13 at 17. Although the
`
`claim construction standard has changed from BRI to the district court standard
`
`8
`
`
`
`under Phillips for petitions filed on or after November 13, 2018, the Board should
`
`apply the BRI standard to Comcast’s petition. Comcast is simply seeking joinder
`
`in the Netflix IPR as a co-petitioner. See 35 U.S.C. § 315(c) (“may join as a party
`
`to that inter partes review”). Granting this motion for joinder would therefore
`
`result in Comcast being “joined as a petitioner in that case” (i.e., the Netflix IPR)
`
`and the dismissal of Comcast’s separate, virtually identical petition. See, e.g.,
`
`Samsung Electronics America, Inc. v. Uniloc 2017 LLC, IPR2018-01383, Paper 9
`
`at 6 (PTAB Nov. 19, 2018). Thus, the rules applicable to the Netflix IPR (e.g., the
`
`BRI standard) should apply following institution and joinder here.
`
`VI. CONCLUSION
`
`For the foregoing reasons, Petitioner respectfully requests that its petition for
`
`inter partes review of Claims 7, 8, 15-19, 23, 24, 28, and 29 of the ’477 Patent be
`
`granted and that joinder be granted with the Netflix IPR (Case No. IPR2018-
`
`01630).
`
`Respectfully submitted,
`
` /s/ James L. Day
`James L. Day
`Registration No. 72,681
`Attorney for Petitioner
`
`9
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on May 17, 2019, I caused a complete and entire copy
`
`of this Motion for Joinder to be served by express mail, or means at least as fast
`
`and reliable as express mail, on the following counsel of record identified on U.S.
`
`PAIR:
`
`Shami Messinger PLLC
`Attn: Michael Messinger, Khaled Shami, or Edward Yee
`1000 Wisconsin Ave. NW, Suite 200
`Washington, D.C. 20007
`
`Courtesy copies were also sent by electronic means to the Patent Owner’s
`
`litigation counsel at the following addresses:
`
`Jay Chung (jchung@raklaw.com)
`Brian D. Ledahl (bledahl@raklaw.com)
`Marc A. Fenster (mfenster@raklaw.com)
`Philip X. Wang (pwang@raklaw.com)
`Reza Mirzaie (rmirzaie@raklaw.com)
`Eric B. Fenster (eric@fensterlaw.net)
`
` /s/ James L. Day
`James L. Day
`Registration No. 72,681
`
`May 17, 2019
`235 Montgomery Street
`San Francisco, CA
`
`
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