`571.272.7822
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`Paper No. 5
`Entered: August 26, 2019
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`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 IPR2019-00786
`Patent 9,769,477
`_______________
`
`Before GEORGIANNA W. BRADEN, KEVIN W. CHERRY, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Motion for Joinder
`35 U.S.C § 314; 35 U.S.C § 315(c); 37 C.F.R. § 42.122(b)
`
`
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`IPR2019-00786
`Patent 9,769,477 B2
`
`
`I.
`INTRODUCTION
`Petitioner, Comcast Cable Communications, LLC, filed a Petition
`(Paper 1, “Pet.”) requesting inter partes review of claims 1–6, 9–14, 20–22,
`and 25–27 of U.S. Patent No. 9,769,477 B2 (Ex. 1001, “the ’477 patent”).
`Realtime Adaptive Streaming LLC, did not file a Preliminary Response.
`Petitioner also filed a Motion for Joinder to join as a petitioner in
`IPR2018-01187. Paper 3 (“Mot.”). Petitioner filed the Petition and Motion
`for Joinder on March 4, 2019, within one month after we instituted trial in
`IPR2018-01187.
`As explained further below, we determine institution is warranted on
`the same grounds as instituted in IPR2018-01187 and grant Petitioner’s
`Motion for Joinder.
`
`A. Related Matters
`As required by 37 C.F.R. § 42.8(b)(2), Petitioner identifies various
`judicial or administrative matters that would affect or be affected by a
`decision in this proceeding. Pet. 67.
`
`IPR2018-01187
`B.
`In IPR2018-01187, Netflix, Inc., challenged claims 1–6, 9–14, 20–22,
`and 25–27 of the ’477 patent. After considering the Petition and Patent
`Owner’s Preliminary Response, we instituted review of the claims
`challenged in that case. Netflix, Inc. v. Reltime Adaptive Streaming LLC,
`Case IPR2018-01187 (PTAB Feb. 4, 2019) (Paper 22, “Netflix Inst.”).
`Thus, the instituted review in IPR2018-01187 involves the following
`grounds of unpatentability:
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`IPR2019-00786
`Patent 9,769,477 B2
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`
`References
`
`Imai1
`Pauls
`
`Imai and Pauls2
`
`Imai, Pauls, and Chao3
`
`Basis
`§ 103
`§ 103
`
`§ 103
`
`§ 103
`
`Claims Challenged
`1, 3–5, 12–14
`1, 3–6, 9–14
`
`1, 3–6, 9–14
`
`2, 11, 20–22, 25–27
`
`Netflix Inst. 6–7. Netflix also relied on the Declaration of James A.
`Storer, Ph.D. (“Dr. Storer”) (IPR2018-01187, Ex. 1003). See id.
`
`II. DISCUSSION
`Petitioner’s Motion for Joinder states the Petition “challenges the
`same claims” and “asserts only the ground that the board has already
`instituted in the Netflix IPR,” while only relying “on the same exhibits and
`expert declaration” as submitted by Netflix. Mot. 6–7; accord id. (“because
`the invalidity grounds in the petition are identical to those instituted in the
`Netflix IPR, there are no new arguments for [Patent Owner] to address.”).
`Thus, for the same reasons stated in our Decision on Institution in
`IPR2018-01187, we determine institution is warranted here. See generally
`Netflix Inst.
`Having determined that institution is warranted, we consider
`Petitioner’s Motion for Joinder. Section 315(c) provides, in relevant part,
`
`1 Japanese Patent Application Publication No. H11-331305, published Nov.
`30, 1999 (Ex. 1005, “Imai”).
`2 European Patent Application Publication No. EP0905939A2, published
`Mar. 31, 1999 (Ex. 1007, “Pauls”).
`3 International PCT Patent Application Publication No. WO 98/40842,
`published Sept. 17, 1998 (Ex. 1016, “Chao”).
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`IPR2019-00786
`Patent 9,769,477 B2
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`that “[i]f more than 1 petition for a post-grant review under this chapter is
`properly filed against the same patent and the Director determines that more
`than 1 of these petitions warrants the institution of a post-grant review under
`section 324, the Director may consolidate such reviews into a single post-
`grant review.” When determining whether to grant a motion for joinder we
`consider factors such as timing and impact of joinder on the trial schedule,
`cost, discovery, and potential simplification of briefing. See Kyocera Corp.
`v. SoftView, LLC, Case IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013)
`(Paper 15).
`Under the circumstances of this case, we determine that joinder is
`appropriate. Because the present Petition does not include any issues
`beyond those in the already instituted case, it will have minimal impact on
`the existing case. “Petitioner agrees to assume a limited ‘understudy’ role”
`and “would only take on an active role if Netflix were no longer a party to
`the IPR.” Mot. 8. Because Petitioner relies on the declaration as does
`Netflix, no additional depositions will be required. See id. at 7.
`Under these circumstances, we agree with Petitioner that joinder is
`appropriate and will not unduly impact the ongoing trial in IPR2018-01187.
`We limit Petitioner Comcast Cable Communications, LLC’s participation in
`the joined proceeding, such that (1) Netflix alone is responsible for all
`petitioner filings in the joined proceeding until such time that it is no longer
`an entity in the joined proceeding, and (2) Comcast Cable Communications,
`LLC is bound by all filings by Netflix in the joined proceeding, except for
`(a) filings regarding termination or settlement and (b) filings where Comcast
`Cable Communications, LLC receives permission to file an independent
`paper. Comcast Cable Communications, LLC must obtain prior Board
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`IPR2019-00786
`Patent 9,769,477 B2
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`authorization to file any paper or to take any action on its own in the joined
`proceeding, so long as Netflix remains as a non-terminated petitioner in the
`joined proceeding. This arrangement promotes the just and efficient
`administration of the ongoing trial in Case IPR2018-01187and protects the
`interests of Netflix as original petitioner in Case IPR2018-01187, and of
`Patent Owner.
`For the foregoing reasons, and with the limitations discussed above,
`Petitioner’s Motion for Joinder is granted.
`
`III. ORDER
`
`Accordingly, it is:
`ORDERED that a inter partes review is hereby instituted as to claims
`1–6, 9–14, 20–22, and 25–27 of the ’477 patent on the following asserted
`grounds:
`(1) Claims 1, 3–5, 12–14 under 35 U.S.C. § 103 as unpatentable
`over Imai;
`(2) Claims 1, 3–6, 9–14 under 35 U.S.C. § 103 as unpatentable
`over Pauls;
`(3) Claims 1, 3–6, 9–14 under 35 U.S.C. § 103 as unpatentable
`over Imai and Pauls; and
`(4) Claims 2, 11, 20–22, 25–27 under 35 U.S.C. § 103 as
`unpatentable over Imai, Pauls, and Chao;
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2018-01187 is granted, and Comcast Cable Communications, LLC is
`joined as a petitioner in that case pursuant to 37 C.F.R. § 42.122, based on
`the conditions discussed above;
`FURTHER ORDERED that the Petition is dismissed, pursuant to
`37 C.F.R. § 42.71(a);
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`IPR2019-00786
`Patent 9,769,477 B2
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`FURTHER ORDERED that the Scheduling Order in place for
`IPR2018-01187 (Paper 23) shall govern the joined proceeding;
`FURTHER ORDERED that all future filings in the joined proceeding
`shall be made only in IPR2018-01187;
`FURTHER ORDERED that the case caption in IPR2018-01187 for all
`further submissions shall be changed to add Comcast Cable
`Communications, LLC Inc. as a named Petitioner after Netflix and to
`indicate by footnote the joinder of IPR2018-01187 to that proceeding, as
`indicated in the attached sample case caption; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2018-01187.
`
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`IPR2019-00786
`Patent 9,769,477 B2
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`FOR PETITIONER:
`
`James Day
`Daniel Callaway
`FARELLA BRAUN + MARTEL LLP
`jday@fbm.com
`dcallaway@fbm.com
`
`
`FOR PATENT OWNER:
`
`Shami Messinger PLLC
`1000 Wisconsin Ave. NW, Suite 200
`Washington, DC 20007
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`IPR2019-00786
`Patent 9,769,477 B2
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`Sample Case Caption
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NETFLIX INC., and
`COMCAST CABLE COMMUNICATIONS, LLC,
`Petitioner,
`
`v.
`
`REALTIME ADAPTIVE STREAMING LLC,
`Patent Owner.
`____________
`
`Case IPR2018-011874
`Patent 9,769,477 B2
`____________
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`4 Comcast Cable Communications, LLC, which filed a petition in
`IPR2019-00786, has been joined as a party to this proceeding
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