Case 1:17-cv-02097-RBJ Document 308-6 Filed 08/13/21 USDC Colorado Page 1 of 7
`Case 1:17-cv-02097-RBJ Document 308-6 Filed 08/13/21 USDC Colorado Page 1 of 7
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` EXHIBIT 4
`EXHIBIT 4
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`Case 1:17-cv-02097-RBJ Document 308-6 Filed 08/13/21 USDC Colorado Page 2 of 7
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` !
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`Philip X. Wang
`E-mail: pwang@raklaw.com
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, CA 90025
`Main: 310.826.7474
`Fax: 310.826.6991
`
`
`
`February 23, 2021
`
`Via Email
`
`Adam R. Shartzer, Esq.
`Fish & Richardson P.C.
`1000 Maine Avenue, S.W. Suite 1000
`Washington, DC 20024
`shartzer@fr.com
`
`
`
`Re: Realtime Adaptive Streaming, LLC v. Sling Media, L.L.C. et al., Civil Action
`No. 1:17‐cv‐02097‐RBJ (D. Colo.)
`
`Dear Adam:
`
` I
`
` write in response to your February 11, 2021 letter purporting to put Realtime on notice of
`alleged weaknesses in its case. In short, none of your arguments—addressed in more detail
`below—have merit. As one example, you argue that the claims of the ’610 patent are patent-
`ineligible under § 101. But as you know, DISH moved to dismiss under § 101 and the Court denied
`that motion. Thus, you are threatening fees on an issue DISH lost on. Your other arguments fare
`no better. They amount to bare assertions without adequate legal or factual basis.
`
`
`Indeed, the upshot of your letter to request relief from Realtime that DISH hasn’t been able
`to obtain from the Court. You request that Realtime either “(1) stipulate to dismiss its claims
`regarding the ’610 patent” or “(2) jointly seek to stay the litigation.” As to (1), DISH already
`moved to dismiss, which Realtime opposed and the Court denied. Further, DISH has never filed
`any other motion to dismiss, motion for judgment on the pleadings, or summary judgment motion
`on any issue. We believe this is because DISH lacks a good faith basis for such a motion. This
`confirms that Realtime’s claims are strong. We will not stipulate to dismissal.
`
`As to (2), whether the case should remain stayed was the identical issue the parties briefed
`and argued little over a month ago. The Court considered DISH’s arguments—including the ones
`in your letter—and determined that the stay should be lifted. Realtime agrees with the Court and
`will not agree to stay the case contrary to the Court’s order.
`
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`

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`Case 1:17-cv-02097-RBJ Document 308-6 Filed 08/13/21 USDC Colorado Page 3 of 7
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`Mr. Adam R. Shartzer
`February 23, 2021
`Page 2
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`he Dropped ’535 Patent
`
`
`Regarding the dropped ’535 patent, I refer you to my responses of February 13 and 20,
`2021, and incorporate those responses into this letter. Briefly, the case was stayed pending IPR in
`February 2019. The ’535 claims were subsequently canceled in an IPR filed by third-party Netflix.
`DISH also filed an IPR on the ’535 patent but was terminated from the proceeding when the PTAB
`determined that DISH was time-barred.
`
`On January 12, 2021—while the case was still stayed—Realtime filed a notice withdrawing
`its infringement claims for the ’535 patent. On January 14, Realtime said same thing in its joint
`report. On January 15, the Court lifted the stay and set a trial on the remaining patent (the ’610
`patent). Thus, Realtime hasn’t litigated the ’535 patent since before the stay and unequivocally
`withdrew the patent before the stay was lifted.
`
`Meanwhile, on January 13, 2021, your colleague Brian Livedalen sent me an email
`requesting that Realtime dismiss the ’535 patent with prejudice. On January 18, I responded and
`explained that the proper course is dismissal for mootness. As I wrote: “The asserted claims of the
`‘535 patent were cancelled in IPR. Thus, the appropriate course is for the ‘535 patent to be
`dismissed as moot for lack of jurisdiction. Realtime is willing to file a joint motion/stipulation to
`dismiss the ‘535 patent as moot.”
`
`
`I didn’t receive a response or hear anything on the ’535 patent for several weeks. Nor did
`DISH ever dispute that when claims are canceled by the PTO, the appropriate course is dismissal
`as moot. Indeed, many Federal Circuit cases confirm this. See, e.g., Fresenius USA, Inc. v. Baxter
`Int’l, Inc., 721 F.3d 1330, 1340 (Fed. Cir. 2013); Sanofi-Aventis U.S., LLC v. Dr. Reddy’s Labs.,
`Inc., 933 F.3d 1367, 1373 (Fed. Cir. 2019); B.E. Tech. L.L.C. v. Facebook Inc., 940 F.3d 675, 676–
`77 (Fed. Cir. 2019).
`
`More recently, on February 17, 2021, you stated that the parties’ only dispute as to the ’535
`patent is whether DISH should be deemed the prevailing party. You also asked Realtime to
`“stipulate” DISH is the prevailing party as to the ’535 patent. This request is inappropriate. First,
`the determination of prevailing party is a separate inquiry that will be made, if ever, after the
`conclusion of the case. Second, DISH is not the prevailing party on the ’535 patent. DISH has
`never prevailed on any infringement or validity issue on the ’535 patent either within this litigation
`or outside of it.
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`We are still waiting to hear on whether DISH will agree to dismiss the ’535 patent as moot.
`If so, Realtime would agree to not argue that because the dismissal says mootness (as opposed to
`"with prejudice”), DISH is precluded from being deemed the prevailing party on the ‘535 patent.
`That question can be briefed and determined at a later time. But Realtime continues to believe that
`DISH is not the prevailing party and reserves all other arguments.
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`

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`Case 1:17-cv-02097-RBJ Document 308-6 Filed 08/13/21 USDC Colorado Page 4 of 7
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`!
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`Mr. Adam R. Shartzer
`February 23, 2021
`Page 3
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`Infringement of ’610 Patent
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`Your letter also raises issues about (1) DISH’s purported license defense and (2) the scope
`of accused products. As to the license defense—for which DISH bears the burden—you continue
`to make bare assertions without adequate support. For example, you assert that certain DISH
`accused products and services use general-purpose “servers” from third parties. But, as we already
`explained on February 14, 2021, this doesn’t come close to establishing a license defense under
`the facts or the law.
`
` I
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` note that DISH has never fully articulated a license defense. For example, in a call on
`February 15, 2021 you simply referred us to RPX agreement and didn’t explain why you believed
`it provided a license defense. And I assured you that we’ve carefully studied the agreement and
`strongly disagree that DISH’s accused products, services, and functionality fall within the
`definition of licensed products. Nor has DISH ever moved to dismiss, for judgment on the
`pleadings, or for summary judgment on any license defense. We believe this is because DISH has
`not—and cannot—adduce the evidence required for such a defense.
`
`You also ignore other evidence that undermine DISH’s license defense. For example, it is
`undisputed that the accused functionality is designed by DISH and implements DISH’s proprietary
`software and source code. Indeed, your colleague Brian Livedalen represented in a February 9,
`2021 letter that “the vast majority of the relevant technical documentation in this case is in the
`form of source code[.]” DISH has never contended that DISH’s accused functionality is the
`proprietary information of third parties. Nor has DISH ever explained how the mere use of general-
`purpose servers provides a license defense.
`
`
`As to the scope of accused products, your complaints are moot because Realtime has
`voluntarily dropped products to streamline discovery, expert reports, and trial. And if any party
`has impeded discussions about the scope of accused products, it is DISH. I refer you to my
`response of February 12, 2021, and incorporate that response into this letter.
`
`Briefly, the case was unstayed and the parties resumed discovery on January 15, 2021. Yet
`DISH waited until February 1 to raise any dispute about the scope of accused products. That day,
`DISH raised a Broadcom issue regarding three products (“SlingStudio Hub, Hopper3, and Hopper
`with Sling”) that the parties had started discussing before the stay. DISH also made various
`assertions about additional products that were never previously discussed between the parties.
`(“Sling TV App ‘A LA CARTE TV’, HopperGo, Dish Anywhere app, 4K Joey, Wired Joey,
`Wireless Joey, Super Joey, VIP722, and VIP722K.”).
`
`Realtime promptly responded the next day (on February 2). Regarding the three previously-
`discussed products, we wrote: “Please send us executed versions of the two declarations. After
`receiving the executed declarations, and based on their representations, Realtime would agree to
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`

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`Case 1:17-cv-02097-RBJ Document 308-6 Filed 08/13/21 USDC Colorado Page 5 of 7
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`!
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`Mr. Adam R. Shartzer
`February 23, 2021
`Page 4
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`not pursue the ‘Hopper3 set-top box,’ ‘Hopper with Sling set-top box,’ and ‘SlingStudio Hub’ in
`this case (i.e., not include those three devices as accused products in expert reports).”
`
`Although we expected to receive the signed declarations immediately, DISH delayed in
`providing them for another 8 days (until February 10). And on that day, DISH provided new and
`different declarations never previously discussed. DISH also made brand new assertions that it had
`never raised before, including in DISH’s most recent email (on February 1).
`
`Of course, it is improper for DISH to create new declarations only a few weeks before
`opening reports and demand that Realtime immediately drop certain products before discovery
`and depositions. Despite these antics, we wrote back on February 12 and agreed to further
`streamlining based on the new declarations provided just two days earlier:
`
`
`Based on the executed declarations, and as we previously informed
`you, Realtime agrees to not pursue “Hopper3 set-top box,” “Hopper
`with Sling set-top box,” and “SlingStudio Hub” in this case (i.e., not
`include those three devices as accused products in expert reports).
`Further, based on the new declarations and representations provided
`for the first time on Feb. 10th, Realtime agrees not to pursue the “4k
`Joey,” “Joey 1,” “Joey 2,” “Wireless Joey,” “Super Joey,” “Vip
`722K,” and “VIP 722.”
`
`These agreements are voluntary, intended to streamline discovery
`and trial, and should not be interpreted as any concession or
`agreement with DISH’s arguments.
`
`
`This record confirms that Realtime has always acted expeditiously in voluntarily narrowing
`
`the accused products—despite DISH’s own delays and shifting-sands approach. And more
`recently, Realtime has proposed rescheduling depositions to promote efficiency. In sum, your
`complaints about Realtime’s discovery conduct are meritless and contradicted by the record.
`
`
`Validity of ’610 Patent
`
`As you know, the ’610 patent is presumed to be valid, and DISH must prove invalidity by
`clear and convincing evidence. DISH has twice challenged the validity of the ’610 patent in this
`case (under §§ 101 and 112) and failed both times. Like these prior challenges, the invalidity
`assertions in your letter lack merit. They don’t come close to meeting DISH’s burden.
`
`
`First, you are simply wrong that the PTAB’s institution decision in IPR2018-01331 is a
`“determination” on the merits of invalidity. DISH’s IPR petition was time-barred, and Realtime’s
`preliminary response focused entirely on the time-bar issue. The Board’s institution decision was
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`Case 1:17-cv-02097-RBJ Document 308-6 Filed 08/13/21 USDC Colorado Page 6 of 7
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`!
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`Mr. Adam R. Shartzer
`February 23, 2021
`Page 5
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`based on an incomplete record and didn’t consider the arguments and evidence presented in
`Realtime’s POR. Indeed, at institution, “the Board is considering the matter preliminarily without
`the benefit of a full record. The Board is free to change its view of the merits after further
`development of the record[.]” Trivascular, Inc., v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016).
`And “there is a significant difference between a petitioner’s burden to establish a ‘reasonable
`likelihood of success’ at institution, and actually proving [unpatentability] by a preponderance of
`the evidence at trial.” Id. (citing 35 U.S.C. §§ 314(a) and 316(e)). The Board never issued a final
`decision in IPR2018-01331, nor made any determination on the merits.
`
`Likewise, your accusation that Realtime engaged in “procedural maneuvering” cannot be
`taken seriously. It is DISH—not Realtime—that has abused the IPR process. I remind you that (1)
`DISH filed an IPR petition that was time-barred; (2) opposed further briefing on the time-bar issue;
`(3) filed a yet anIPR (IPR2019-00746) seeking to circumvent time-bar rules through joinder-upon-
`joinder; (4) asked the PTAB to overturn GoPro find that the Precedential Opinion Panel system is
`unconstitutional; (5) argued that the PTAB lacks authority to reconsider its decisions; and (6)
`appealed IPR2018-01331 to the Federal Circuit despite overwhelming authority that the Federal
`Circuit lacks jurisdiction to hear the appeal. All these machinations were improper.
`
`Second, the PTO’s reexam of the ’610 patent is at an early stage and doesn’t support
`invalidity. As your letter states, the examiner issued a “non-final” office action raising a new
`“question” of patentability. This is a fry cry from an invalidity determination as you suggest.
`Indeed, the examiner already allowed the ’610 patent claims over the prior art, and we are confident
`the validity of the claims will be upheld. Instead of arguing the merits, we understand you be
`complaining that Realtime “pressed forward and sought to lift the stay.” But the Court already
`rejected DISH’s argument and found the pending reexam doesn’t support a stay. We agree with
`the Court. Realtime has the right to timely enforcement of its patent rights.
`
`Third, your arguments about patent-eligibility mischaracterize the facts and law. Only one
`court has analyzed the patent-eligibility of the ’610 claims. That is this Court’s ruling in denying
`DISH’s motion to dismiss. Further—and contrary to your false assertion—the Central District of
`California issued an order upholding the patent-eligibility of the related ’535, ’046, and ’477
`patents. You argue that a “comparison” of the ’610 claims to the ’535 claims reveals that the ’610
`claims are likely to receive the same outcome. But this contradicts your argument because claims
`1–14 of the ’535 patent, and all claims of the ’046 and ’477 patents, were all found to be patent-
`eligible in the court’s order. Thus, the Central District of California’s ruling strongly supports the
`validity of the ’610 patent. 1
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`
`
`1 Your statements about the Netflix case (in footnote 1) are also nonsensical and false. The court’s
`ruling about “forum shopping” in that case has nothing to do with any of: (1) the ’610 patent, (2)
`the facts and issues of this case, or (3) the assertions in your letter.
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`

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`Case 1:17-cv-02097-RBJ Document 308-6 Filed 08/13/21 USDC Colorado Page 7 of 7
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`! N
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`Mr. Adam R. Shartzer
`February 23, 2021
`Page 6
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`ext, instead of addressing the ’610 patent claims, you resort to misdirection by pointing
`to wholly unrelated cases not involving patents/claims conceived by the Realtime inventors. But
`your contention of alleged “similarity” cannot substitute for a total failure of legal and factual
`proof. Indeed, the ’610 claims are most similar to themselves. And this Court already found that
`these claims are patent-eligible when it denied DISH’s motion to dismiss.
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`Philip
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`* * *
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`In sum, none of the arguments in your February 11, 2021 letter have merit. They
`mischaracterize the record and seek to obtain—through correspondence—relief that DISH has
`failed to obtain on the merits. Indeed, that DISH chose these particular arguments only reinforces
`the objective strength of Realtime’s case. The ’610 patent is valid and infringed, we ask that you
`refrain from casting aspersions without any proper basis. We also ask that you refrain from
`unnecessary distractions as Realtime continues to litigate this case on the merits.
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`Yours truly,
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