`571.272.7822
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`Paper No. 7
`Entered: November 18, 2019
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`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.
`_______________
`
`IPR2019-01109
`Patent 9,769,477 B2
`_______________
`
`Before GEORGIANNA W. BRADEN, KEVIN W. CHERRY, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Motion for Joinder
`35 U.S.C § 324; 35 U.S.C § 325(c); 37 C.F.R. § 42.122(b)
`
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`IPR2019-01109
`Patent 9,769,477 B2
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`
`INTRODUCTION
`I.
`Petitioner, Comcast Cable Communications, LLC, filed a Petition
`(Paper 1, “Pet.”) requesting inter partes review of claims 7, 8, 15–19, 23, 24,
`28, and 29 of U.S. Patent No. 9,769,477 B2 (Ex. 1001, “the ’477 patent”).
`Realtime Adaptive Streaming LLC (“Patent Owner”) did not file a
`Preliminary Response.
`Petitioner also filed a Motion for Joinder to join as a petitioner in
`IPR2018-01630. Paper 3 (“Mot.”). Petitioner filed the Petition and Motion
`for Joinder on May 17, 2019, within one month after we instituted trial in
`IPR2018-01630.
`As explained further below, we determine institution is warranted on
`the same grounds as instituted in IPR2018-01630 and grant Petitioner’s
`Motion for Joinder.
`
`A. Related Matters
`As required by 37 C.F.R. § 42.8(b)(2), Petitioner identifies various
`judicial or administrative matters that would affect or be affected by a
`decision in this proceeding. Pet. 71–73.
`
`IPR2018-01630
`B.
`In IPR2018-01630, Netflix, Inc., challenged claims 7, 8, 15–19, 23,
`24, 28, and 29 of the ’477 patent. After considering the Petition and Patent
`Owner’s Preliminary Response, we instituted review of the claims
`challenged in that case. Netflix, Inc. v. Realtime Adaptive Streaming LLC,
`IPR2018-01630 (PTAB April 19, 2019) (Paper 13, “Netflix Inst.”). Thus,
`the instituted review in IPR2018-01630 involves the following grounds of
`unpatentability:
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`IPR2019-01109
`Patent 9,769,477 B2
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`Basis
`References
`§ 103
`Imai1 and Pauls2
`Imai, Pauls, and Dawson3 § 103
`
`Claims Challenged
`15–19, 28, and 29
`7, 23
`
`Imai, Pauls, and Lai4
`
`§ 103
`
`8, 24
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`Netflix Inst. 7. Netflix also relied on the Declaration of James A.
`Storer, Ph.D. (“Dr. Storer”) (IPR2018-01630, Ex. 1003). See id.
`
`II. DISCUSSION
`Petitioner’s Motion for Joinder states the Petition “challenges the
`same claims” and “asserts only the ground that the board has already
`instituted in the Netflix IPR,” while only relying “on the same exhibits and
`expert declaration” as submitted by Netflix. Mot. 7; accord id. (“there are
`no new arguments for the Board to address.”). Thus, for the same reasons
`stated in our Decision on Institution in IPR2018-01630, we determine
`institution is warranted here. See generally Netflix Inst.
`Having determined that institution is warranted, we consider
`Petitioner’s Motion for Joinder. Section 325(c) provides, in relevant part,
`that “[i]f more than 1 petition for a post-grant review under this chapter is
`properly filed against the same patent and the Director determines that more
`than 1 of these petitions warrants the institution of a post-grant review under
`
`1 Japanese Patent Application Publication No. H11331305, published
`Nov. 30, 1999 (Ex. 1005, “Imai”).
`2 European Patent Application Publication No. EP0905939A2, published
`Mar. 31, 1999 (Ex. 1007, “Pauls”).
`3 U.S. Patent No. 5,553,160, issued Sep. 3, 1996 (Ex. 1025, “Dawson”).
`4 U.S. Patent No. 6,407,680 B1, issued Jun. 18, 2002 (Ex. 1016, “Lai”).
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`Patent 9,769,477 B2
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`section 324, the Director may consolidate such reviews into a single post-
`grant review.” When determining whether to grant a motion for joinder, we
`consider factors such as timing and impact of joinder on the trial schedule,
`cost, discovery, and potential simplification of briefing. See Kyocera Corp.
`v. SoftView, LLC, Case IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013)
`(Paper 15).
`Under the circumstances of this case, we determine that joinder is
`appropriate. Because the present Petition does not include any issues
`beyond those in the already instituted case, it will have minimal impact on
`the existing case. “Petitioner agrees to assume a limited ‘understudy’ role”
`and “would only take on an active role if Netflix were no longer a party to
`the IPR.” Mot. 5, 7, 8. Because Petitioner relies on the same declaration as
`does Netflix, no additional depositions will be required. See id. at 7–8.
`Under these circumstances, we agree with Petitioner that joinder is
`appropriate and will not unduly impact the ongoing trial in IPR2018-01630.
`We limit Petitioner Comcast Cable Communications, LLC’s participation in
`the joined proceeding, such that (1) Netflix alone is responsible for all
`petitioner filings in the joined proceeding until such time that it is no longer
`an entity in the joined proceeding, and (2) Comcast Cable
`Communications, LLC is bound by all filings by Netflix in the joined
`proceeding, except for (a) filings regarding termination or settlement and (b)
`filings where Comcast Cable Communications, LLC receives permission to
`file an independent paper. Comcast Cable Communications, LLC must
`obtain prior Board authorization to file any paper or to take any action on its
`own in the joined proceeding, so long as Netflix remains as a non-terminated
`petitioner in the joined proceeding. This arrangement promotes the just and
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`IPR2019-01109
`Patent 9,769,477 B2
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`efficient administration of the ongoing trial in IPR2018-01630 and protects
`the interests of Netflix as original petitioner in IPR2018-01630, and of
`Patent Owner.
`For the foregoing reasons, and with the limitations discussed above,
`Petitioner’s Motion for Joinder is granted.
`
`III. ORDER
`
`Accordingly, it is:
`ORDERED that inter partes review is hereby instituted as to claims 7,
`8, 15–19, 23, 24, 28, and 29 of the ’477 patent on the following asserted
`grounds:
`(1) Claims 15–19, 28, and 29 under 35 U.S.C. § 103 as
`unpatentable over Imai and Pauls;
`(2) Claims 7 and 23 under 35 U.S.C. § 103 as unpatentable over
`Imai, Pauls, and Dawson; and
`(3) Claims 8 and 24 under 35 U.S.C. § 103 as unpatentable over
`Imai, Pauls, and Lai;
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2018-01630 is granted, and Comcast Cable Communications, LLC is
`joined as a petitioner in that case pursuant to 37 C.F.R. § 42.222, based on
`the conditions discussed above;
`FURTHER ORDERED that the Petition is dismissed, pursuant to
`37 C.F.R. § 42.71(a);
`FURTHER ORDERED that the Scheduling Order in place for
`IPR2018-01630 (Paper 14) shall govern the joined proceeding;
`FURTHER ORDERED that all future filings in the joined proceeding
`shall be made only in IPR2018-01630;
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`IPR2019-01109
`Patent 9,769,477 B2
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`FURTHER ORDERED that the case caption in IPR2018-01630 for all
`further submissions shall be changed to add Comcast Cable
`Communications, LLC as a named Petitioner after Netflix and to indicate by
`footnote the joinder of IPR2018-01630 to that proceeding, as indicated in the
`attached sample case caption; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2018-01630.
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`IPR2019-01109
`Patent 9,769,477 B2
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`For PETITIONER (Comcast Cable Communications, LLC):
`
`James Day
`Daniel Callaway
`FARELLA BRAUN + MARTEL LLP
`jday@fbm.com
`dcallaway@fbm.com
`
`
`For PATENT OWNER in IPR2019-01109:
`Philip Wang
`C. Jay Chung
`Neil Rubin
`Kent Shum
`Reza Mirzaie
`RUSS AUGUST & KABAT
`pwang@raklaw.com
`jchung@raklaw.com
`nrubin@raklaw.com
`kshum@raklaw.com
`rmirzaie@raklaw.com
`
`For PATENT OWNER in IPR2018-01630:
`
`Neil Rubin
`Kent Shum
`RUSS AUGUST & KABAT
`nrubin@raklaw.com
`kshum@raklaw.com
`
`Joel Stonedale
`Kayvan Noroozi
`NOROOZI PC
`joel@noroozipc.com
`kayvan@noroozipc.com
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`IPR2019-01109
`Patent 9,769,477 B2
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`For PETITIONER in IPR2018-01630 (Netflix):
`
`Harper Batts
`Chris Ponder
`SHEPPARD MULLIN RICHTER & HAMPTON LLP
`hbatts@sheppardmullin.com
`cponder@sheppardmullin.com
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`IPR2019-01109
`Patent 9,769,477 B2
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`Sample Case Caption
`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NETFLIX, INC. and
`COMCAST CABLE COMMUNICATIONS, LLC,
`Petitioner,
`
`v.
`
`REALTIME ADAPTIVE STREAMING, LLC,
`Patent Owner.
`____________
`
`IPR2018-016305
`Patent 9,769,477 B2
`____________
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`5 Comcast Cable Communications, LLC, which filed a petition in IPR2019-
`01109, has been joined as a party to this proceeding.
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