Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper No. 36
`Filed: July 16, 2019
`
`
`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.
`
`Case IPR2019-00684
`Patent 8,934,535 B2
`
`
`
`
`
`
`
`
`
`Before KEVIN W. CHERRY, GARTH D. BAER, and
`NABEEL U. KHAN, Administrative Patent Judges.
`KHAN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`Paper No. 36
`Filed: July 16, 2019
`
`
`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.
`
`Case IPR2019-00684
`Patent 8,934,535 B2
`
`
`
`
`
`
`
`
`
`Before KEVIN W. CHERRY, GARTH D. BAER, and
`NABEEL U. KHAN, Administrative Patent Judges.
`KHAN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`IPR2019-00684
`Patent 8,934,535 B2
`
`I. INTRODUCTION
`A. Background
`Comcast Cable Communications, LLC (“Petitioner”) filed a Petition
`(Paper 1, “Pet.”) to institute an inter partes review of claims 1–14 (the
`“challenged claims”) of U.S. Patent No. 8,934,535 B2 (Exhibit 1001, “the
`’535 Patent”). Concurrently, Petitioner filed a Motion for Joinder seeking to
`join Petitioner as party to Netflix, Inc., v. Realtime Adaptive Streaming LLC,
`Case IPR2018-01169 (PTAB) (“the Netflix IPR”). Paper 3 (“Mot.”).
`Realtime Adaptive Streaming, LLC (“Patent Owner”) has not filed a
`Preliminary Response. We have authority under 37 C.F.R. § 42.4(a) and
`35 U.S.C. § 314, which provides that an inter partes review may not be
`instituted unless the information presented in the Petition “shows that there
`is a reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.” For the reasons described
`below, we institute inter partes review of all the challenged claims, and
`grant Petitioner’s Motion for Joinder.
`
`B. Related Proceedings
`Petitioner informs us that the ʼ535 Patent is involved in the following
`litigations:
`
` Realtime Adaptive Streaming v. Adobe Systems Inc., No. 2:18-cv-
`09344, (C.D. Cal.)
` Realtime Data LLC d/b/a IXO LLC v. Sling TV LLC, No. 1:17-cv-
`2097 (D. Colo.)
` Realtime Adaptive Streaming LLC v. Haivision Network Video Inc.,
`No. 1:17-cv-01520 (D. Del.)
` Realtime Adaptive Streaming LLC v. Netflix, Inc., No. 1:17-cv-1692
`(D. Del.)
`
`2
`
`
`
`IPR2019-00684
`Patent 8,934,535 B2
`
` Realtime Adaptive Streaming LLC v. Google LLC et al., No. 2:18-cv-
`03629 (D.C. Cal.)
` Realtime Adaptive Streaming LLC v. Comcast Cable
`Communications, LLC, No. 1:18-cv-01446 (D. Colo.)
`Pet. 63–64.
`Petitioner further informs us that the ʼ535 Patent is involved in the
`following inter partes review proceedings:
`
` Sling TV LLC et al., v. Realtime Adaptive Streaming LLC, IPR2018-
`01342
`
`C. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1–14 of the ʼ535 Patent on the following
`grounds:
`
`Basis Challenged Claims
`§ 103 1–14
`
`References
`Imai1 and Ishii2
`
`
`
`II. DISCUSSION
`A. Institution of Inter Partes Review
`Petitioner represents that “[t]his petition is substantively identical to
`the petition filed in the [IPR2018]-01169 proceeding and is based on the
`same exhibits.” Pet. 3. In its Motion for Joinder, Petitioner represents that
`this Petition “challenge[s] the same claims of the ’535 Patent challenged in
`the Netflix IPR and asserts only the grounds that the Board has already
`instituted in the Netflix IPR.” Paper 3, 7. Petitioner represents that “[t]here
`
`
`1 Imai, Japanese Patent Application Publication No. H11331305, published
`Nov. 30, 1999. (Ex. 1004). A Certified English translation of Imai was
`submitted as Exhibit 1005.
`2 Ishii, U.S. Patent No. 5,675,789, Oct. 7, 1997 (Exhibit 1007, “Ishii”).
`
`3
`
`
`
`IPR2019-00684
`Patent 8,934,535 B2
`are no new arguments for the Board to consider” and that “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.” Paper 3, 7. Our
`independent review of the Petition and the Netflix IPR petition, including
`the expert declarations filed in both, confirm Petitioner’s representations.
`The Netflix IPR petition was filed on June 4, 2018, challenging claims
`1–14 of the ’535 Patent on the same grounds raised in this Petition. See
`Netflix IPR, Paper 8. Patent Owner filed a preliminary response to the
`Netflix IPR petition on October 24, 2018. Id. at Paper 19 (“Netflix IPR
`Prelim. Resp.”). We instituted inter partes review based on the Netflix IPR
`petition on January 17, 2019. Id. at Paper 20 (“Netflix IPR Institution
`Decision”). Patent Owner filed a Response to the Netflix IPR petition on
`March 27, 2019. Id. at Paper 26 (“Netflix IPR Resp.”). Patent Owner has
`not filed a Preliminary Response to this Petition.
`Accordingly, upon our review of the Petition and for the reasons
`discussed above and in the Netflix IPR Institution Decision, we are
`persuaded Petitioner has demonstrated a reasonable likelihood of success in
`showing the unpatentability of the challenged claims of the ’535 Patent on
`the same grounds raised and instituted in the Netflix IPR. We, therefore,
`institute inter partes review based on the Petition.
`
`B. Motion for Joinder
`Joinder in inter partes reviews is governed by 35 U.S.C. § 315(c),
`which reads:
`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
`
`4
`
`
`
`IPR2019-00684
`Patent 8,934,535 B2
`under section 313 or the expiration of the time for filing such a
`response, determines warrants the institution of an inter partes
`review under section 314.
`A motion for joinder should (1) set forth 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. See Kyocera Corp. v. SoftView LLC, Case IPR2013-00004,
`slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).
`We instituted the Netflix IPR on January 17, 2019. See Netflix IPR
`Institution Decision (Paper 20). Petitioner filed this Petition and Motion for
`Joinder on February 15, 2019, i.e., within one month of the institution date
`of the Netflix IPR. See Papers 2 and 3. Thus, Petitioner timely filed its
`Motion for Joinder. See 37 C.F.R. § 42.122(b).
`As discussed above, Petitioner represents that “[t]his petition is
`substantively identical to the petition filed in the [IPR2018]-01169
`proceeding and is based on the same exhibits.” Pet. 3. Petitioner represents
`that “[t]he Petition does not raise any issues that are not already before the
`Board in the Netflix IPR” (Paper 3, 6) and does not raise any “new
`arguments for the Board to consider” (Paper 3, 7). Because “the invalidity
`grounds in the Petition are identical to those instituted in the Netflix IPR”
`(Paper 3, 8), Petitioner argues “[j]oinder thus would not affect the timing of
`the Netflix IPR or content of Realtime’s responses” (Paper 3, 6).
`Moreover, “Petitioner is willing to accept an understudy role in the
`Netflix IPR to avoid burden and schedule impact.” Paper 3, 6. Petitioner
`represents “that so long as Netflix is actively engaged in the proceeding it
`
`5
`
`
`
`IPR2019-00684
`Patent 8,934,535 B2
`will not introduce any additional arguments (written or oral) or seek
`additional discovery.” Paper 3, 8.
`Patent Owner has not responded to Petitioner’s Motion for Joinder.
`Accordingly, on the basis of Petitioner’s representations described above, we
`agree that joining Petitioner to the Netflix IPR is appropriate under the
`present circumstances. We, therefore, grant Petitioner’s Motion for Joinder.
`
`III. CONCLUSION
`For the foregoing reasons, we are persuaded that Petitioner has
`demonstrated a reasonable likelihood that it will succeed in showing claims
`1–14 are unpatentable under 35 U.S.C. § 103. At this preliminary stage, we
`have not made a final determination with respect to the patentability of the
`challenged claims or any underlying factual and legal issues.
`Given that Petitioner is being joined as a party to the Netflix IPR,
`Petitioner is bound by the ultimate determination made in the Netflix IPR.
`See 35 U.S.C. §§ 315(e)(1), 325(d); 37 C.F.R. § 42.73(d)(1). Accordingly,
`Petitioner shall not advance any arguments regarding these claims in this
`proceeding; all grounds raised by Petitioner regarding these claims will be
`addressed in the Netflix IPR.
`
`IV. ORDER
`For the reasons given, it is:
`ORDERED that an inter partes review is instituted in IPR2019-
`00684; and
`FURTHER ORDERED that the Motion for Joinder with IPR2018-
`01169 is granted, and Petitioner is joined as petitioner in IPR2018-01169;
`FURTHER ORDERED that IPR2019-00684 is terminated under 37
`C.F.R. § 42.72, and all further filings shall be made only in IPR2018-01169;
`
`6
`
`
`
`IPR2019-00684
`Patent 8,934,535 B2
`FURTHER ORDERED that Netflix and Comcast Cable
`Communications, LLC, shall file each paper due in IPR2018-01169 as
`consolidated, except for a motion that does not involve the other party,
`subject to the page limits set forth in 37 C.F.R. § 42.24;
`FURTHER ORDERED that for each paper due in IPR2018-01169
`Comcast Cable Communications, LLC may not file any paper in addition to
`the consolidated paper filed by Netflix to address any points of disagreement
`with Netflix absent prior authorization from the Board, and that Comcast
`Cable Communications, LLC must request such authorization prior to filing
`any such additional paper;
`FURTHER ORDERED that Netflix and Comcast Cable
`Communications, LLC shall collectively designate attorneys to conduct the
`cross-examination of any witness produced by Patent Owner and the redirect
`of any witness produced by Netflix and Comcast Cable Communications,
`LLC, within the timeframes set forth in 37 C.F.R. § 42.53(c) or agreed to by
`the parties;
`FURTHER ORDERED that Netflix and Comcast Cable
`Communications, LLC shall collectively designate attorneys to present at the
`oral hearing, if requested and scheduled, in a consolidated argument;
`FURTHER ORDERED that the case caption in IPR2018-01169 shall
`be changed to reflect joinder of Comcast Cable Communications, LLC as a
`petitioner in accordance with the attached example; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2018-01169.
`
`
`
`7
`
`
`
`IPR2019-00684
`Patent 8,934,535 B2
`
`For PETITIONER:
`
`James Day
`Daniel Callaway
`FARELLA BRAUN + MARTEL LLP
`jday@fbm.com
`dcallaway@fbm.com
`
`
`
`For PATENT OWNER:
`
`
`
`
`8
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper No.__
`Filed: ____, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`NETFLIX, INC., ARRIS SOLUTIONS, INC. and
`COMCAST CABLE COMMUNICATIONS, LLC,
`Petitioner,
`v.
`REALTIME ADAPTIVE STREAMING LLC,
`Patent Owner.
`
`Case IPR2018-011693
`Patent 8,934,535 B2
`
`
`
`
`
`
`
`
`
`Before KEVIN W. CHERRY, GARTH D. BAER, and
`NABEEL U. KHAN, Administrative Patent Judges.
`KHAN, Administrative Patent Judge.
`
`
`
`3 ARRIS SOLUTIONS, INC., who filed a petition in IPR2019-00674, and
`Comcast Cable Communications, LLC, who filed a petition in IPR2019-
`00684, have been joined as petitioners in this proceeding.
`
`
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