Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper No. 22
`Filed: August 8, 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 IPR2019-00746
`Patent 8,867,610 B2
`
`
`
`
`
`
`
`
`
`Before KEVIN W. CHERRY, GARTH D. BAER, and
`NABEEL U. KHAN, Administrative Patent Judges.
`BAER, 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. 22
`Filed: August 8, 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 IPR2019-00746
`Patent 8,867,610 B2
`
`
`
`
`
`
`
`
`
`Before KEVIN W. CHERRY, GARTH D. BAER, and
`NABEEL U. KHAN, Administrative Patent Judges.
`BAER, 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)
`
`
`
`
`
`
`IPR2019-00746
`Patent 8,867,610
`
`I. I. INTRODUCTION
`A. Background
`ARRIS Solutions, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`to institute an inter partes review of claims 1, 2, 6, 8–14, 16, and 18 (the
`“challenged claims”) of U.S. Patent No. 8,867,610 B2 (Exhibit 1001, “the
`’610 patent”). Concurrently, Petitioner filed a Motion for Joinder seeking to
`join Petitioner as party to Sling TV, L.L.C., et al. v. Realtime Adaptive
`Streaming, LLC, Case IPR2018-01331 (PTAB) (“the DISH 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 ʼ610 patent is involved in a number of
`related matters. See Paper 5, 1–2.
`
`2
`
`
`
`IPR2019-00746
`Patent 8,867,610
`
`C. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1, 2, 6, 8–14, 16, and 18 of the ʼ610
`patent on the following grounds:
`Reference(s)
`Vishwanath1
`Vishwanath
`Vishwanath and Ishii2
`Vishwanath and Kalra3
`
`Challenged Claim(s)
`1, 6, 9, and 16
`1, 6, 9, and 16
`14
`2, 8, 10–13, and 18
`
`Basis
`§ 102
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`Pet. 6
`
`II. DISCUSSION
`A. Institution of Inter Partes Review
`In its Motion for Joinder, Petitioner represents that this Petition “is
`substantively identical to the DISH Petition, containing only minor
`differences related to the formalities required by a different party filing the
`petition.” Paper 3, 5. Petitioner, therefore, represents that this Petition and
`the DISH 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. at 4–5. Our independent review
`of the Petition and the DISH IPR petition confirms Petitioner’s
`representations.
`The DISH IPR petition was filed on July 3, 2018, challenging claims
`1, 2, 6, 8–14, 16, and 18 of the ’610 patent on the same grounds raised in
`this Petition. See DISH IPR, Paper 9, 4. Patent Owner filed a preliminary
`
`
`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”).
`
`3
`
`
`
`IPR2019-00746
`Patent 8,867,610
`response to the DISH IPR petition on November 8, 2018. Id. at Paper 6
`(“DISH IPR Prelim. Resp.”). We instituted inter partes review based on the
`DISH IPR petition on January 31, 2019. Id. at Paper 9 (“DISH IPR
`Institution Decision”). Patent Owner filed a Response to the DISH IPR
`petition on March 21, 2019. Id., Paper 15 (“DISH 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 DISH IPR Institution Decision, we are persuaded
`Petitioner has demonstrated a reasonable likelihood of success in showing
`the unpatentability of the challenged claims of the ’610 patent on the same
`grounds raised and instituted in the DISH 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
`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).
`
`4
`
`
`
`IPR2019-00746
`Patent 8,867,610
`We instituted the DISH IPR on January 31, 2019. See DISH IPR
`Institution Decision (Paper 9). Petitioner filed this Petition and Motion for
`Joinder on February 27, 2019, i.e., within one month of the institution date
`of the DISH 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 DISH Petition, containing only minor
`differences related to the formalities required by a different party filing the
`petition.” Paper 3, 5. Petitioner represents that this Petition “does not
`present any new grounds of unpatentability” that are not already present in
`the DISH IPR Petition. Paper 3, 6. Because this Petition is substantively
`identical to the DISH 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 DISH IPR” and represents that it “explicitly consents to the existing
`trial schedule.” Paper 3, 6.
`Moreover, Petitioner “agrees to take an ‘understudy’ role in the joined
`proceeding, absent termination of the original petitioner, DISH, as a party.”
`Paper 3, 7. To that effect, Petitioner states that:
`(a) all filings by ARRIS in the joined proceeding be
`consolidated with the filings of the DISH, unless a filing solely
`concerns issues that do not involve DISH;
`(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 DISH;
`(c) ARRIS shall be bound by any agreement between Patent
`Owner and DISH concerning discovery and/or depositions; and
`(d) ARRIS at deposition shall not receive any direct, cross
`examination or redirect time beyond that permitted for DISH in
`
`5
`
`
`
`IPR2019-00746
`Patent 8,867,610
`this proceeding alone under either 37 C.F.R. § 42.53 or any
`agreement between Patent Owner and DISH.
`Paper 3, 7–8.
`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 DISH 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, 2, 6, 8–14, 16, and 18 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 DISH IPR,
`Petitioner is bound by the ultimate determination made in the DISH 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 DISH IPR.
`
`IV. ORDER
`For the reasons given, it is:
`ORDERED that an inter partes review is instituted in IPR2019-
`00746; and
`FURTHER ORDERED that the Motion for Joinder with IPR2018-
`01331 is granted, and Petitioner is joined as petitioner in IPR2018-01331;
`
`6
`
`
`
`IPR2019-00746
`Patent 8,867,610
`FURTHER ORDERED that IPR2019-00746 is terminated under 37
`C.F.R. § 42.72, and all further filings shall be made only in IPR2018-01331;
`FURTHER ORDERED that the DISH IPR petitioner and ARRIS
`SOLUTIONS, INC. shall file each paper due in IPR2018-01331 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 IPR2018-01331,
`ARRIS SOLUTIONS, INC. may not file any paper in addition to the
`consolidated paper filed by DISH IPR petitioner to address any points of
`disagreement with DISH IPR Petitioner 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 DISH IPR petitioner 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 produced by DISH IPR petitioner 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 DISH IPR petitioner 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 IPR2018-01331 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 IPR2018-01331.
`
`7
`
`
`
`IPR2019-00746
`Patent 8,867,610
`
`For PETITIONER: (IPR2018-01331)
`
`Ruffin Cordell
`Adam Shartzer
`Brian Livedalen
`FISH & RICHARDSON P.C.
`cordell@fr.com
`shartzer@fr.com
`bvl@fr.com
`
`For PATENT OWNER: (IPR2018-01331)
`
`Philip Wang
`Kent Shum
`Neil Rubin
`Reza Mirzaie
`C. Jay Chung
`RUSS AUGUST & KABAT
`pwang@raklaw.com
`kshum@raklaw.com
`nrubin@raklaw.com
`rmirzaie@raklaw.com
`jchung@raklaw.com
`
`
`
`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
`
`
`SLING TV, L.L.C., SLING MEDIA, L.L.C.,
`DISH NETWORK L.L.C., DISH TECHNOLOGIES L.L.C.,
`Petitioner,
`v.
`REALTIME ADAPTIVE STREAMING LLC,
`Patent Owner.
`
`Case IPR2018-013314
`Patent 8,867,610 B2
`
`
`
`
`
`
`
`
`
`Before KEVIN W. CHERRY, GARTH D. BAER, and
`NABEEL U. KHAN, Administrative Patent Judges.
`BAER, Administrative Patent Judge.
`
`
`
`4 ARRIS SOLUTIONS, INC., who filed a petition in IPR2019-00746 has
`been joined as petitioners in this proceeding.
`
`
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