UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________
`
`
`
`NETFLIX, INC.,
`Petitioner,
`
`v.
`
`
`AFFINITY LABS OF TEXAS, LLC,
`Patent Owner.
`
`
`
`__________________________________
`
`Case IPR2017-00122
`Patent 9,444,868 B2
`__________________________________
`
`
`
`PETITIONER’S UPDATED MANDATORY NOTICES
`PURSUANT TO 37 C.F.R. § 42.8
`
`
`
`
`___________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________
`
`
`
`NETFLIX, INC.,
`Petitioner,
`
`v.
`
`
`AFFINITY LABS OF TEXAS, LLC,
`Patent Owner.
`
`
`
`__________________________________
`
`Case IPR2017-00122
`Patent 9,444,868 B2
`__________________________________
`
`
`
`PETITIONER’S UPDATED MANDATORY NOTICES
`PURSUANT TO 37 C.F.R. § 42.8
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.8, Petitioner Netflix, Inc. (“Petitioner”) hereby
`
`submits the following Updated Mandatory Notices information to update the
`
`mailing address for Petitioner’s counsel.
`
`I. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(A)(1)
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`The real party in interest is Netflix, Inc.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`The ’868 patent is the subject of a patent infringement lawsuit brought by
`
`Affinity in the Western District of Texas, Case No. 1:15-cv-00849. U.S. Patent No.
`
`9,094,802 (“’802 patent”) is also the subject of the same suit. Netflix has petitioned
`
`for IPR of the ’802 patent in IPR2016-01701.
`
`Other sibling patents to the ’868 patent have been the subject of adverse
`
`decisions in District Courts and at the Board. These sibling patents are all
`
`continuations of the same parent ’812 application, share the same specification,
`
`and have substantively similar claims. In two District Court cases, recently
`
`affirmed by the Federal Circuit,1 Judges Manske and Smith found every claim of
`
`two of these sibling patents, U.S. Patent Nos. 7,970,379 and 8,688,085, to be
`
`ineligible for patenting under 35 U.S.C. § 101 and, in doing so, found the claims
`
`
`1 Affinity v. Amazon.com Inc., --- F.3d ---- 2016 WL 5335502 (Sep. 23, 2016);
`Affinity v. DirecTV, LLC, --- F.3d ---- 2016 WL 5335501 (Sep. 23, 2016).
`
`1
`
`
`
`provided no inventive concept. Ex. 1009, p. 6; Ex. 1010, pp. 14, 19. As stated by
`
`Judge Smith, “[t]he ’085 patent solves no problems, includes no implementation
`
`software, designs no system.” Ex. 1009, p. 6. The claims of the ’085 patent are
`
`substantively similar to those of the ’868 patent, allegedly including the “bitrate-
`
`switching” feature. In fact, invalidated claim 16 of the ’085 patent is similar to the
`
`independent claims of the ’868 patent. Compare Ex. 1001, 18:56-19:24, 19:48-
`
`20:10, 19:49-21:6 with Ex. 1008 (’085 patent), 20:6-20:24, 20:30-36.
`
`Three other siblings to the ’868 patent have had claims rendered
`
`unpatentable by the Board. First, in IPR2014-00209 and -00212, the Board held
`
`claims 16, 19 and 20 of U.S. Patent No. 7,953,390 unpatentable. This decision too
`
`was recently affirmed by the Federal Circuit. Ex. 1013. Second, in IPR2014-
`
`01181, -01182 and -01184, the Board held claims 1-3 and 5-14 of U.S. Patent No.
`
`8,532,641 unpatentable in light various combinations of art. Third—and most
`
`relevant here—in the ’407 IPR, the Board held claims 1, 2, 5-8, and 10 of the ’007
`
`patent unpatentable in light of Treyz and Fuller. The claims of the ’007 patent are
`
`strikingly similar to Challenged Claims, which add more words but not substance.
`
`See Ex. 1007, ¶¶79-81.
`
`Affinity cannot escape these prior invalidity rulings on similar claims by
`
`simply rearranging claim limitations. Given the extensive overlap in claim
`
`language between the unpatentable claims of the ’007 patent and the claims of the
`
`2
`
`
`
`’868 patent at issue here, to promote judicial economy and to the extent feasible,
`
`Netflix respectfully requests that this proceeding be assigned to the same panel that
`
`presided over IPR2014-00209, -00212, and IPR2014-00407, -00408 (Judges
`
`Turner, Pettigrew, and Tornquist).
`
`C. Lead and Back-Up Counsel and Service Information Under 37
`C.F.R. § 42.8(b)(3) and (4)
`
`Hector Ribera (Reg. No. 54,397)
`Marton Ribera Schumann & Chang
`LLP
`548 Market St. Suite 36117
`San Francisco, CA 94104
`Email: hector@martonribera.com
`Tel: (415) 360-2512
`
`David D. Schumann (Reg. No. 53,569)
`Marton Ribera Schumann & Chang
`LLP
`548 Market St. Suite 36117
`San Francisco, CA 94104
`Email: david@martonribera.com
`Tel: (415) 360-2513
`
`
`
`Petitioner consents to electronic service by delivering the documents to the
`
`email addresses of primary and backup counsel.
`
`
`Date: March 31, 2017
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`By: /Hector Ribera/
`
`
`Hector Ribera (Reg. No. 54,397)
`Marton Ribera Schumann & Chang LLP
`548 Market St. Suite 36117
`San Francisco, CA 94104
`Email: hector@martonribera.com
`Tel: (415) 360-2513
`
`Attorney for Petitioner
`
`3
`
`
`
`CERTIFICATE OF SERVICE
`As authorized by Patent Owner’s Mandatory Notice, I hereby certify that on
`
`March 31, 2017, a copy of this document has been served in its entirety by
`
`electronic mail on Patent Owner’s lead and backup counsel.
`
`Ryan M. Schultz, Esq.
`(Reg. No. 65,134)
`Robins Kaplan LLP
`2800 LaSalle Plaza, 800 LaSalle
`Avenue
`Minneapolis, MN 55402
`Tel: 612-349-8408
`Fax: 612-339-4181
`RSchultz@RobinsKaplan.com
`
`Shui Li, Esq.
`(Reg. No. 74,617)
`Robins Kaplan LLP
`2800 LaSalle Plaza, 800 LaSalle
`Avenue
`Minneapolis, MN 55402
`Tel: 612-349-0655
`Fax: 612-339-4181
`SLi@RobinsKaplan.com
`
`By: /Hector Ribera/
`
`
`Hector Ribera (Reg. No. 54,397)
`Marton Ribera Schumann & Chang LLP
`548 Market St. Suite 36117
`San Francisco, CA 94104
`Email: hector@martonribera.com
`Tel: (415) 360-2512
`
`Attorney for Petitioner
`
`
`
`
`
`Date: March 31, 2017
`
`
`
`4
`
`
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