`Tel: 571-272-7822
`
`
`
`Paper No. 37
`Filed: July 16, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ARRIS SOLUTIONS, INC.,
`Petitioner,
`v.
`REALTIME ADAPTIVE STREAMING LLC,
`Patent Owner.
`
`Case IPR2019-00674
`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)
`
`
`
`
`
`
`IPR2019-00674
`Patent 8,934,535 B2
`
`I. I. INTRODUCTION
`A. Background
`ARRIS Solutions, Inc. (“Petitioner”) filed a Petition (Paper 2, “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 Adaptive Streaming, LLC v. Sling TV, LLC, No. 1:17-cv-
`2097 (D. Colo.)
` Realtime Adaptive Streaming, LLC v. Amazon.com, Inc., No. 6:17-cv-
`00549 (E.D. Tex.)
` Realtime Adaptive Streaming LLC v. EchoStar Technologies, LLC et
`al., No. 6:17-cv-00567 (E.D. Tex.).
`
`2
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`IPR2019-00674
`Patent 8,934,535 B2
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` Realtime Adaptive Streaming, LLC v. Hulu, LLC, No. 2:17-cv-7611
`(C.D. Cal.)
` Realtime Adaptive Streaming, LLC v. Cisco Systems, Inc., No. 6:17-
`cv-591 (E.D. Tex.)
` Realtime Adaptive Streaming, LLC v. Brightcove, Inc., No. 1:17-cv-
`1519 (D. Del.)
` Realtime Adaptive Streaming, LLC v. Haivision Network Video, Inc.,
`No. 1:17-cv-1520 (D. Del.)
` Realtime Adaptive Streaming, LLC v. Polycom, Inc., No. 1:17-cv-
`2692 (D. Colo.)
` Realtime Adaptive Streaming, LLC v. Netflix, Inc., No. 1:17-cv-1692
`(D. Del.)
` Realtime Adaptive Streaming, LLC v. Sony Elecs., Inc., No. 1:17-cv-
`1693 (D. Del.)
` Realtime Adaptive Streaming, LLC v. Apple, Inc., No. 1:17-cv-2869
`(D. Colo.)
` Realtime Adaptive Streaming, LLC v. Adobe Sys. Inc., No. 1:18-cv-
`10355 (D. Mass.)
` Realtime Adaptive Streaming, LLC v. Samsung Elec. Co., Ltd., No.
`6:18-cv-00113 (E.D. Tex.)
` Realtime Adaptive Streaming LLC v. Wowza Media Systems LLC, No.
`1:18-cv-00927 (D. Colo.)
` Realtime Adaptive Streaming LLC v. Google LLC et al, No. 2:18-cv-
`03629 (D.C. Cal.)
` Realtime Adaptive Streaming LLC v. Avaya Inc., No. 1:18-cv-01046
`(D. Colo.)
` Realtime Adaptive Streaming LLC v. Broadcom Corporation et al.,
`No. 1:18-cv-01048 (D. Colo.)
` Realtime Adaptive Streaming LLC v. LG Electronics Inc. et al, No.
`6:18-cv-00215 (E.D. Tex.)
` Realtime Adaptive Streaming LLC v. Advanced Micro Devices, Inc.,
`No. 1:18-cv-01173 (D. Colo.)
`
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`IPR2019-00674
`Patent 8,934,535 B2
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` Realtime Adaptive Streaming LLC v. Intel Corporation, No. 1:18-cv-
`01175 (D. Colo.)
` Realtime Adaptive Streaming LLC v. Mitel Networks, Inc., No. 1:18-
`cv-01177 (D. Colo.)
` Realtime Adaptive Streaming LLC v. Charter Communications, Inc. et
`al, No. 1:18-cv-01345 (D. Colo.)
` Realtime Adaptive Streaming LLC v. Cox Communications, Inc., No.
`8:18-cv-00942 (C.D. Cal.)
` Realtime Adaptive Streaming LLC v. Comcast Cable
`Communications, LLC, No. 1:18-cv-01446 (D. Colo.)
`Pet. 63–65.
`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-
`01331
` Sling TV LLC, et al., v. Realtime Adaptive Streaming LLC, IPR2018-
`01332
` Sling TV LLC, et al., v. Realtime Adaptive Streaming LLC, IPR2018-
`01342
` Unified Patents Inc. v. Realtime Adaptive Streaming LLC, IPR2018-
`00883
` Hulu, LLC, Amazon.com, Inc., and Netflix, Inc. v. Realtime Adaptive
`Streaming LLC, IPR2018-01170
` Hulu, LLC v. Realtime Adaptive Streaming LLC, IPR2018-01090
` Hulu, LLC et al v. Realtime Adaptive Streaming LLC, IPR2018-01169
` Amazon.com, Inc. et al v. Realtime Adaptive Streaming LLC,
`IPR2018-01187
` Hulu, LLC et al v. Realtime Adaptive Streaming LLC, IPR2018-01195
` Hulu, LLC et al v. Realtime Adaptive Streaming LLC, IPR2018-01189
` Amazon.com, Inc. et al v. Realtime Adaptive Streaming LLC,
`IPR2018-01227
`
`4
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`IPR2019-00674
`Patent 8,934,535 B2
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` Sony Corporation et al v. Realtime Adaptive Streaming LLC,
`IPR2018-01299
` Cisco Systems, Inc. v. Realtime Adaptive Streaming LLC, IPR2018-
`01384
` Sony Corporation et al v. Realtime Adaptive Streaming LLC,
`IPR2018-01413
` Sony Corporation et al v. Realtime Adaptive Streaming LLC,
`IPR2018-01439
` Netflix, Inc. et al v. Realtime Adaptive Streaming LLC, IPR2018-
`01630
` Netflix, Inc. et al v. Realtime Adaptive Streaming LLC, IPR2018-
`01817
` Netflix, Inc. et al v. Realtime Adaptive Streaming LLC, IPR2019-
`00209
`
`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
`In its Motion for Joinder, Petitioner represents that this Petition “is
`substantively identical to the Netflix Petition, containing only minor
`differences related to the formalities required by a different party filing the
`
`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”).
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`IPR2019-00674
`Patent 8,934,535 B2
`petition.” Paper 3, 8. Petitioner, therefore, represents that this Petition and
`the Netflix IPR petition “involve[] the same patent, challenges the same
`claims, relies on the same expert declaration, and is based on the same
`grounds and combinations of prior art.” Id. 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., 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
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`IPR2019-00674
`Patent 8,934,535 B2
`311 that the Director, after receiving a preliminary response
`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 this Petition “is
`substantively identical to the Netflix Petition, containing only minor
`differences related to the formalities required by a different party filing the
`petition.” Paper 3, 8. Petitioner represents that this Petition “does not
`present any new grounds of unpatentability” that are not already present in
`the Netflix IPR Petition. Paper 3, 9. Because this Petition is substantively
`identical to the Netflix IPR Petition, Petitioner argues Patent Owner will not
`be required to present any additional responses or arguments. Petitioner
`argues “there is no reason to delay or alter the trial schedule already present
`in the Netflix IPR” and represents that it “explicitly consents to the existing
`trial schedule.” Paper 3, 10.
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`IPR2019-00674
`Patent 8,934,535 B2
`Moreover, Petitioner “agrees to take an ‘understudy’ role in the joined
`proceeding, absent termination of the original petitioner, Netflix, as a party.”
`Paper 3, 11. To that effect, Petitioner states that:
`(a) all filings by ARRIS in the joined proceeding be
`consolidated with the filings of the Netflix, unless a filing
`solely concerns issues that do not involve Netflix;
`(b) ARRIS shall not be permitted to raise any new grounds not
`already instituted by the Board, or introduce any argument or
`discovery not already introduced by Netflix;
`(c) ARRIS shall be bound by any agreement between Patent
`Owner and Netflix concerning discovery and/or depositions;
`and
`(d) ARRIS at deposition shall not receive any direct, cross
`examination or redirect time beyond that permitted for Netflix
`in this proceeding alone under either 37 C.F.R. § 42.53 or any
`agreement between Patent Owner and Netflix.
`Paper 3, 11.
`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.
`
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`IPR2019-00674
`Patent 8,934,535 B2
`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-
`00674; 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 IPR2019-00674 is terminated under 37
`C.F.R. § 42.72, and all further filings shall be made only in IPR2018-01169;
`FURTHER ORDERED that Netflix and ARRIS SOLUTIONS, INC.
`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,
`ARRIS SOLUTIONS, INC. 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 ARRIS
`SOLUTIONS, INC. must request such authorization prior to filing any such
`additional paper;
`FURTHER ORDERED that Netflix and ARRIS SOLUTIONS, INC.
`shall collectively designate attorneys to conduct the cross-examination of
`any witness produced by Patent Owner and the redirect of any witness
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`IPR2019-00674
`Patent 8,934,535 B2
`produced by Netflix and ARRIS SOLUTIONS, INC., within the timeframes
`set forth in 37 C.F.R. § 42.53(c) or agreed to by the parties;
`FURTHER ORDERED that Netflix and ARRIS SOLUTIONS, INC.
`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 ARRIS SOLUTIONS, INC. 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.
`
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`IPR2019-00674
`Patent 8,934,535 B2
`
`For PETITIONER:
`
`Jennifer Nall
`Eliot Williams
`Andrew Wilson
`Michelle Eber
`BAKER BOTTS L.L.P
`jennifer.nall@bakerbotts.com
`eliot.williams@bakerbotts.com
`andrew.wilson@bakerbotts.com
`michelle.eber@bakerbotts.com
`
`
`
`For PATENT OWNER:
`
`
`
`
`
`
`
`
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`11
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`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.
`
`