Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 9
`Entered: January 31, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SLING TV, L.L.C., SLING MEDIA, L.L.C.,
`DISH NETWORK L.L.C., DISH TECHNOLOGIES L.L.C.,
`Petitioners,
`
`v.
`
`REALTIME ADAPTIVE STREAMING, LLC,
`Patent Owner.
`____________
`
`
`
`
`
`
`
`Case IPR2018-01331
`Patent 8,867,610 B2
`____________
`
`
`
`Before KEVIN W. CHERRY, GARTH D. BAER, and NABEEL U. KHAN,
`Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`571-272-7822
`
`
`Paper No. 9
`Entered: January 31, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SLING TV, L.L.C., SLING MEDIA, L.L.C.,
`DISH NETWORK L.L.C., DISH TECHNOLOGIES L.L.C.,
`Petitioners,
`
`v.
`
`REALTIME ADAPTIVE STREAMING, LLC,
`Patent Owner.
`____________
`
`
`
`
`
`
`
`Case IPR2018-01331
`Patent 8,867,610 B2
`____________
`
`
`
`Before KEVIN W. CHERRY, GARTH D. BAER, and NABEEL U. KHAN,
`Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`Case IPR2018-01331
`Patent 8,867,610 B2
`
`
`Sling TV, L.L.C., Sling Media, L.L.C., DISH Network L.L.C., DISH
`Technologies L.L.C. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting inter partes review of claims 1, 2, 6, 8–14, 16, and 18 of U.S.
`Patent No. 8,867,610 B2 (Ex. 1001, “the ’610 patent”). Realtime Adaptive
`Streaming, LLC (“Patent Owner”) timely filed a Preliminary Response.
`Paper 6 (“Prelim. Resp.”). At the parties’ request, we authorized additional
`briefing addressing whether the petition is time barred under 35 U.S.C
`§ 315(b). Petitioner filed a Reply to the Preliminary Response (Paper 7,
`“Reply”) and Patent Owner filed a Sur Reply (Paper 8, “Sur Reply”).
`Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be
`instituted unless “the information presented in the petition . . . and any
`response . . . 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 set forth below, we conclude that there is a
`reasonable likelihood that Petitioner would prevail in establishing the
`unpatentability of at least one of the challenged claims. Therefore, we
`institute inter partes review of the challenged claims.
`
`
`I. BACKGROUND
`A. RELATED PROCEEDINGS
`The parties assert the ’610 patent is involved in Realtime Adaptive
`Streaming LLC v. EchoStar Technologies, LLC, Case No. 6-17-cv-00567
`(E.D. Tex. Oct. 10, 2017); Realtime Data LLC d/b/a IXO v. Sling TV LLC.,
`Case No. 1-17-cv-02097 (D. Colo. Aug. 31, 2017); Realtime Data LLC d/b/a
`IXO v. DISH Network Corp., Case No. 6-17-cv-00421 (E.D. Tex. Jul. 19,
`2017); Realtime Adaptive Streaming LLC v. Hulu, LLC., Case No. 2-17-cv-
`07611 (C.D. Cal. Oct. 17, 2017); and Realtime Data LLC d/b/a IXO v.
`2
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`Case IPR2018-01331
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`
`EchoStar Corp., Case No. 6-17-cv-00084 (E.D. Tex. Feb. 14, 2017). The
`’610 patent is also the subject of IPR2018-01090 (PTAB May 18, 2018) and
`IPR2018-01195 (PTAB June 6, 2018). Pet. 4–5; Paper 3, 2.
`B. THE ’610 PATENT
`The ’610 patent describes “[d]ata compression and decompression
`methods for compressing and decompressing data based on an actual or
`expected throughput (bandwidth) of a system.” Ex. 1001, Abstract. The
`’610 patent’s method uses “suitable compression algorithm[s] that provide[]
`a desired balance between execution speed (rate of compression) and
`efficiency (compression ratio)” when available bandwidth and processing
`power are limited. Id. at 8:8–13. “[B]andwidth sensitive” compression is
`performed by a controller that tracks a “number of pending access requests
`to [a] memory system” to determine available “throughput (bandwidth)” of
`“a system employing [the] data compression.” Id. at 9:11–15, 10:31–45.
`Depending on throughput, the controller selects a compression algorithm
`with faster compression (but a lower compression ratio) or one with an
`optimal compression ratio (but slower compression time) to optimize storage
`and minimize bottlenecks. Id. at 13:29–51.
`The ’610 patent teaches that “another factor that is used to determine
`the compression algorithm is the type of data to be processed.” Id. at 11:30–
`32. The controller “associates different data types (based on, e.g., a file
`extension) with preferred one(s) of the compression algorithms.” Id. at
`11:31–39. Because different data types have different access rates, the ’610
`patent seeks to improve system performance with a compression algorithm
`customized according to characteristics of the received data to balance
`
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`“execution speed (rate of compression) and efficiency (compression ratio).”
`Id. at 8:8–13.
`
`C. ILLUSTRATIVE CLAIM
`Petitioner challenges claims 1, 2, 6, 8–14, 16, and 18. Claims 1 and 9
`
`are the only independent claims challenged in the Petition. Independent
`claim 1 is illustrative of the claimed subject matter and is reproduced below.
`1. A method, comprising:
`determining, a parameter or an attribute of at least a portion of a
`data block having video or audio data;
`selecting one or more compression algorithms from among a
`plurality of compression algorithms to apply to the at least the
`portion of the data block based upon the determined parameter
`or attribute and a throughput of a communication channel, at
`least one of the plurality of compression algorithms being
`asymmetric; and
`compressing the at least the portion of the data block with the
`selected compression algorithm after selecting the one or more,
`compression algorithms.
`Id. at 20:1–13.
`
`D. ASSERTED GROUNDS OF UNPATENTABILITY
`Petitioner asserts the following grounds of unpatentability. Pet. 6.
`Reference(s)
`Basis
`Challenged Claim(s)
`Vishwanath1
`§ 102(a)/(e) 1, 6, 9, and 16
`
`Vishwanath
`
`Vishwanath and Ishii2
`
`§ 103(a)
`
`§ 103(a)
`
`1, 6, 9, and 16
`
`14
`
`§ 103(a)
`
`2, 8, 10–13, and 18
`
`Vishwanath and Kalra3
`
`1 U.S. Pat. No. 6,216,157 (issued April 10, 2001) (Ex. 1004, “Vishwanath”).
`2 U.S. Pat. No. 5,675,789 (issued Oct. 7, 1997) (Ex. 1005, “Ishii”).
`3 U.S. Pat. No. 5,953,506 (issued Sept. 14, 1999) (Ex. 1006, “Kalra”).
`4
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`
`II. ANALYSIS
`In its Preliminary Response, Patent Owner does not challenge
`Petitioner’s substantive patentability arguments. Instead, Patent Owner
`contends the Petition is time barred under 35 U.S.C § 315(b) and that, in the
`alternative, we should exercise our discretion to deny the Petition under 35
`U.S.C § 325(d).
`
`A. APPLICATION OF § 315(b) TIME BAR
`Section 315(b) provides that “an inter partes review may not be
`instituted if the petition requesting the proceeding is filed more than 1 year
`after the date on which the petitioner, real party in interest or privy of the
`petitioner is served with a complaint alleging infringement of the patent.” 35
`U.S.C. § 315(b) (2018). Patent Owner asserts Petitioner is time barred under
`§ 315(b), because Petitioner was served with a complaint alleging
`infringement of the ’610 patent more than one year before it filed the present
`petition. See Prelim. Resp. 1 (citing Click-to-Call Techs., LP v. Ingenio,
`Inc., 899 F.3d 1321 (Fed. Cir. 2018) (en banc)). For the reasons that follow,
`we determine the Petition is not time barred.
`On June 6, 2017, Realtime Data LLC (“Realtime Data”) filed and
`subsequently served an amended complaint in the Eastern District of Texas
`naming Petitioner and alleging infringement of the ’610 patent. Prelim.
`Resp. 2 (citing Realtime Data LLC v. EchoStar Corp., No. 6:17-cv-00084-
`RWS-JDL). When Realtime Data filed its complaint, however, it did not
`own the ’610 patent, because it had previously recorded an assignment to
`Realtime Adaptive Streaming on March 7, 2017. See Ex. 1023. Realtime
`Data thus voluntarily dismissed the complaint without prejudice, and on
`October 10, 2017, Realtime Adaptive Streaming filed a complaint again
`
`
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`Case IPR2018-01331
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`
`naming Petitioner and alleging infringement of the ’610 patent. Reply 2.
`Less than one year later, on July 3, 2018, Petitioner filed its Petition in this
`case. See Pet. 79.
`Patent Owner asks us to read § 315(b)’s language broadly such that
`the June 6, 2017 complaint filed and served by non-patent owner Realtime
`Data triggered the one-year time bar. To this end, Patent Owner quotes
`Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co., where the Federal
`Circuit reaffirmed its holding in Click-to-Call, 899 F.3d 1321, noting that
`“[t]he statute endorses no exceptions for dismissed complaints.” Sur-Reply
`1 (quoting Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co., 905
`F.3d 1311 (Fed. Cir. 2018)) (emphasis in original). Petitioner responds that
`“Click-to-Call is not controlling and readily distinguishable because the
`entity that filed the June 2017 complaint, Realtime Data, LLC . . . did not
`own the patent and thus did not have standing to file the complaint in the
`first place.” Reply 1. Petitioner argues further that both § 315(b)’s title and
`its legislative history demonstrate “that the deadline would be triggered
`[only] after the patent owner filed a complaint.” Id. at 6.
`We agree with Petitioner that Click-to-Call does not control on the
`current facts. Click-to-Call established that a complaint’s later dismissal has
`no bearing on the one-year time bar. 899 F.3d at 1336. But, in Hamilton
`Beach Brands, Inc. v. f’real Foods, LLC, the Federal Circuit explained that
`the issue in this case—i.e., whether a complaint filed without standing
`
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`triggers § 315(b)’s time bar—was “not present, or considered, in Click-to-
`Call.” 908 F.3d 1328, 1337 (Fed. Cir. Nov. 16, 2018).4
`We further agree with Petitioner that only a patent owner’s action
`triggers § 315(b)’s time bar. Section 315(b) specifies that the time bar is
`triggered when “the petitioner is served with a complaint alleging
`infringement of the patent.” Although the statute’s text is not explicit as to
`who must file and serve the complaint, § 315(b) is titled “Patent Owner’s
`Action,” thus suggesting that only service of a patent owner’s complaint
`triggers the one-year time bar. See Yanko v. United States, 869 F.3d 1328,
`1333–34 (Fed. Cir. 2017) (quoting parenthetically Florida Dep’t of Revenue
`v. Piccadilly Cafeterias, Inc., 554 U.S. 33, 47 (2008)) (explaining that
`“statutory titles and section headings are tools available for the resolution of
`doubt about the meaning of a statute”). Section 315(b)’s legislative history
`suggests Congress envisioned that only a patent owner’s complaint would
`trigger the time bar:
`The House bill also extends the deadline for allowing an
`accused infringer to seek inter partes review after he has been
`sued for infringement. The Senate bill imposed a 6-month
`deadline on seeking IPR after the patent owner has filed an
`action for infringement. The final bill extends this deadline, at
`proposed section 315(b), to 1 year.
`157 Cong. Rec. S5429 (daily ed. Sept. 8, 2011) (statement of Sen. Kyl)
`emphasis added). In light of the statute’s ambiguity, the title’s clarity, and
`the legislative history, we read § 315(b) as requiring the Petitioner to be
`served with a patent owner’s complaint to trigger the one-year time bar.
`
`
`4 Despite holding Click-to-Call not controlling, the Federal Circuit did not
`resolve the time-bar issue in Hamilton Beach Brands for procedural reasons.
`908 F.3d at 1337.
`
`
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`
`B. DISCRETION TO DENY INSTITUTION UNDER § 325(d)
`35 U.S.C. § 325(d) provides that “[i]n determining whether to institute
`or order a proceeding . . . the Director may take into account whether, and
`reject the petition or request because, the same or substantially the same
`prior art or arguments previously were presented to the Office.” Patent
`Owner asserts that we should exercise our § 325(d) discretion to decline
`institution because “[t]he Petition’s sole primary reference—Vishwanath—
`was expressly analyzed and considered by the Office during prosecution of
`the ’610 patent.” Prelim. Resp. 7.
`We decline to exercise our discretion to deny the Petition under
`§ 325(d). During prosecution, after the applicant added a limitation
`requiring an asymmetric compression algorithm, the Examiner, without any
`relevant discussion, allowed the challenged claims over Vishwanath. See
`Ex. 1002, 247, 416, 438–46. The Examiner did so even though Vishwanath
`explicitly describes using Lempel-Ziv compression, which the ’610 patent
`explicitly characterizes as “asymmetric.” See Ex. 1004, 6:62–67; Ex. 1001,
`10:1–5. Notably absent from the prosecution history is any discussion or
`argument addressing whether Vishwanath teaches an asymmetric
`compression algorithm. Instead, as Petitioner notes, the Examiner appears
`“to have allowed the challenged claims over Vishwanath based on an
`improper assumption that Vishwanath does not disclose an ‘asymmetric’
`compression algorithm.” Pet. 24. Given the prosecution history’s cursory
`analysis of the asymmetric compression issue and the ’610 patent’s clear
`concession that Lempel-Ziv compression is asymmetric, and in light of the
`discretionary nature of § 325(d), we do not apply our discretion to decline to
`institute inter partes review.
`
`
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`
`C. CLAIM CONSTRUCTION
`Petitioner proposes that we construe “data packet” to include “at least
`a single unit of data, which may range in size from individual bits through
`complete files or collection of multiple files.” Id. at 14. Petitioner further
`proposes that we construe “parameter” to include “any recognizable data
`token or descriptor,” and “compression algorithms being asymmetric” to
`include “an algorithm where compression of data and decompression of that
`compressed data take different amounts of time.” Id. at 15–16. Patent
`Owner does not address Petitioner’s proposed constructions. Based on the
`current record, we find that no express claim construction is necessary to
`determine whether to institute inter partes review of the challenged claims.
`See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999) (“[O]nly those terms need be construed that are in controversy, and
`only to the extent necessary to resolve the controversy.”).
`
`D. ASSERTED PRIOR ART
`1. Vishwanath (Ex. 1004)
`Vishwanath teaches a “[m]ethod and apparatus to deliver an
`application to a client through a transmission medium.” Ex. 1004, Abstract.
`Vishwanath describes “automatically modify[ing]” the application in view
`of the type of application and the transmission medium delivering the
`application, among other things. Id. at 2:8–35. Particularly relevant to this
`case, Vishwanath teaches “automatically select[ing] [a] compression
`algorithm in view of the application, the transmission medium and the
`client.” Id. at 6:33–35. Vishwanath further describes that “the parameters
`used to choose the compression algorithm include” such parameters as
`“[i]nput data type, whether it is text, graphics, natural images, audio or
`
`
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`9
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`Case IPR2018-01331
`Patent 8,867,610 B2
`
`video,” as well as “[t]he transmission medium . . . , which affects the
`bandwidth, error rate and latency.” Id. at 6:50–59.
`2. Ishii (Ex. 1005)
`Relevant to this case, Ishii teaches “select[ing] [a] data compression
`method suitable for [a] file considering the data attribute (whether it is text
`data or binary data such as programs and image data) and access frequency,
`included among the control information concerning the file.” Ex. 1005, 6:1–
`5.
`3. Kalra (Ex. 1006)
`Kalra is directed to “an apparatus and method for encoding, storing,
`transmitting and decoding multimedia information.” Ex. 1006, Abstract.
`Petitioner relies on Kalra for teaching (1) storing compressed data, see
`Pet. 66 (citing Ex. 1006, 4:9–15); (2) retrieving compressed data based on
`central processing unit (CPU) utilization, see id. at 67 (citing Ex. 1006,
`Abstract, 16:49–67, 19:56–62); and (3) retrieving compressed data based on
`communication channel throughput, see id. at 71 (citing Ex. 1006, 15:33–45,
`19:46–64).
`
`E. ASSERTED GROUNDS
`1. Ground 1: Anticipation of Claims 1, 6, 9, and 16 based on Vishwanath
`Petitioner contends Vishwanath anticipates claims 1, 6, 9 and 19. Id.
`at 26–41. Patent Owner does not address Petitioner’s anticipation contention
`in its Preliminary Response. On the current record, we determine that
`Petitioner has set forth a reasonable likelihood of succeeding on this
`challenge, as outlined below.
`
`
`
`10
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`Case IPR2018-01331
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`
`
`a. Claim 1
`Claim 1 recites a “method comprising: determining, a parameter or an
`attribute of at least a portion of a data block having video or audio data.”
`Petitioner asserts Vishwanath teaches this limitation because it describes
`“receiving, at a server, a ‘client request’ for an application,” and explicitly
`discloses that the requested application can be “audio or video.” Pet. 26
`(citing Ex. 1004, 4:13–37, 6:50–67). In addition, Vishwanath teaches that
`“parameters [are] used to choose the compression algorithm,” for the
`application. Ex. 1004, 6:50–51. As Petitioner notes, “A POSITA . . . would
`have understood that in order to consider the particular ‘parameters used to
`choose the compression algorithm,’ these parameters must be determined by
`the system.” Pet. 29.
`Petitioner contends Vishwanath further teaches claim 1’s “selecting
`one or more compression algorithms from among a plurality of compression
`algorithms to apply to the at least the portion of the data block” because
`“Vishwanath’s adaptive-transmission transducer selects an ‘appropriate
`compression algorithm’ to compress the requested data from among ‘[a]
`number of compression algorithms[] applicable.’” Pet. 30 (citing Ex. 1004,
`6:7–15, 6:32–67, Fig. 7).
`For claim 1’s requirement that the recited selection must be “based
`upon the determined parameter or attribute and a throughput of a
`communication channel,” Petitioner explains that “Vishwanath’s adaptive-
`transmission transducer includes a ‘multimode compressor’ that
`‘automatically selects the compression algorithm in view of the application,
`the transmission medium 154 and the client.’” Id. at 31 (quoting Ex. 1004,
`6:33–35). Moreover, as Petitioner notes, Vishwanath teaches that its
`
`
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`Case IPR2018-01331
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`
`“compression selection is based on ‘the bandwidth, acceptable error rates,
`and the latency of the transmission medium.’” Id. (citing Ex. 1004, 2:62–64,
`6:50–67).
`For the limitation requiring “at least one of the plurality of
`compression algorithms being asymmetric,” Petitioner explains Vishwanath
`teaches choosing a compression algorithm from among several algorithms,
`including “Lempel-Ziv (LZ),” which the ’610 patent explicitly recognizes is
`asymmetric. Pet. 32–34; see Ex. 1004, 6:62–67; Ex. 1001, 10:2–4.
`For claim 1’s final limitation requiring “compressing the at least the
`portion of the data block with the selected compression algorithm after
`selecting the one or more compression algorithms,” Petitioner relies on
`Vishwanath’s teaching that “the multimode compressor ‘perform[s] the
`compression’” using the selected compression algorithm. Pet. 34 (quoting
`Ex. 1004, 7:1–12).
`Based on its contentions, at this stage of the proceeding, we are
`persuaded that Petitioner has established sufficiently that Vishwanath
`discloses each limitation, and therefore anticipates, claim 1.
`b. Remaining Claims and Grounds
`In addition to claim 1, Petitioner asserts Vishwanath anticipates
`claims 6, 9, and 16. Id. at 35–41. In its Preliminary Response, Patent
`Owner does not challenge Petitioner’s substantive anticipation arguments.
`We have reviewed Petitioner’s contentions with respect to claims 6, 9, and
`16, and determine that the Petition provides the requisite showing, at this
`stage of the proceeding, that Vishwanath discloses the subject matter of
`these claims. See id. Petitioner further asserts claims 1, 6, 9, and 16 would
`have been obvious over Vishwanath, id. at 41–44; claim 14 would have been
`
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`obvious over Vishwanath and Ishii, id. at 44–53; and claims 2, 8, 10–13, and
`18 would have been obvious over Vishwanath and Kalra, id. at 53–78.
`Patent Owner does not challenge Petitioner’s substantive obviousness
`arguments in its Preliminary Response. We have reviewed Petitioner’s
`contentions with respect to its obviousness grounds and determine that,
`based on the current record, the Petition shows a reasonable likelihood that it
`would prevail with respect to its obviousness contentions. See id. at 41–78.
`
`III. CONCLUSION
`For the foregoing reasons, we institute trial on all of the challenged
`claims and grounds identified in the Petition. Any discussion of facts in this
`Decision is only for the purposes of institution and is not dispositive of any
`issue related to any ground on which we institute review. We note again that
`Patent Owner has not, at this stage of the proceeding, addressed Petitioner’s
`substantive patentability analysis and supporting evidence. The Board’s
`final determination will be based on the record as fully developed during
`trial.
`
`IV. ORDER
`
`Accordingly, it is:
`ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes
`review of claims 1, 2, 6, 8–14, 16, and 18 of the ’610 patent is instituted,
`commencing on the entry date of this Decision; and
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial.
`
`
`
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`PETITIONERS:
`Ruffin B. Cordell
`Adam R. Shartzer
`Brian J. Livedalen
`FISH & RICHARDSON P.C.
`IPR45035-0002IP2@fr.com
`PTABInbound@fr.com
`
`
`PATENT OWNER:
`
`Neil A. Rubin
`Kent Shum
`RUSS AUGUST & KABAT
`nrubin@raklaw.com
`kshum@raklaw.com
`rak_realtimedata@raklaw.com
`
`
`
`14
`
`
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