Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper No. 5
`Filed: August 13, 2019
`
`
`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 IPR2019-00760
`Patent 8,934,535 B2
`
`
`
`
`
`
`
`
`
`Before KEVIN W. CHERRY, GARTH D. BAER, and
`NABEEL U. KHAN, Administrative Patent Judges.
`CHERRY, 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. 5
`Filed: August 13, 2019
`
`
`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 IPR2019-00760
`Patent 8,934,535 B2
`
`
`
`
`
`
`
`
`
`Before KEVIN W. CHERRY, GARTH D. BAER, and
`NABEEL U. KHAN, Administrative Patent Judges.
`CHERRY, 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)
`
`
`
`
`
`
`IPR2019-00760
`Patent 8,934,535 B2
`
`I. INTRODUCTION
`A. Background
`Comcast Cable Communications, LLC (“Petitioner”) filed a Petition
`(Paper 1, “Pet.”) to institute an inter partes review of claims 1–6, 8–12, and
`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 Sling TV, L.L.C., et al. v. Realtime
`Adaptive Streaming, LLC, Case IPR2018-01342 (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 ʼ535 patent is involved in a number of
`related matters. See Pet. 4–6.
`
`2
`
`
`
`IPR2019-00760
`Patent 8,934,535 B2
`
`C. Asserted Grounds of Unpatentability
`Petitioner challenges claims 1–6, 8–12, and 14 of the ʼ535 patent on
`the following grounds:
`Reference(s)
`Dvir1
`Dvir
`Dvir and Ishii2
`
`Challenged Claim(s)
`1, 2, 9, 10, and 14
`1, 2, 9, 10, and 14
`3–6, 8, 11, and 12
`
`Basis
`§ 102
`§ 103(a)
`§ 103(a)
`
`Pet. 8.
`
`II. DISCUSSION
`A. Institution of Inter Partes Review
`In its Motion for Joinder, Petitioner represents that this Petition
`“challenge[s] the same claims of the ’535 Patent challenged in the DISH IPR
`and asserts only the grounds that the Board has already instituted in the
`DISH IPR.” Mot. 7. Moreover, Petitioner submits that “[t]here are no new
`arguments for the Board to consider,” and the Petition “relies on the same
`exhibits and expert declaration as the DISH IPR so there is no new or
`additional evidence for the Board to consider.” Id. at 7–8. Our independent
`review of the Petition and the DISH IPR petition confirms Petitioner’s
`representations, and that the Petitions in the two proceedings are
`substantially the same.
`The DISH IPR petition was filed by Sling TV, L.L.C., Sling Media
`L.L.C., DISH Network L.L.C., and DISH Technologies L.L.C. (collectively
`“DISH”), on July 3, 2018, challenging claims 1–6, 8–12, and 14 of the ’535
`
`
`1 Dvir, U.S. Patent No. 6,557,001 B1, iss. Apr. 29, 2003, filed Nov. 12, 1999
`(Exhibit 1004, “Dvir”).
`2 U.S. Pat. No. 5,675,789 (issued Oct. 7, 1997) (Ex. 1005, “Ishii”).
`
`3
`
`
`
`IPR2019-00760
`Patent 8,934,535 B2
`patent on the same grounds raised in this Petition.3 See DISH IPR,
`Paper 9, 8. Patent Owner filed a preliminary response to the DISH IPR
`petition on November 8, 2018. DISH IPR, Paper 6. We instituted inter
`partes review based on the DISH IPR petition on January 31, 2019. DISH
`IPR, Paper 9 (“DISH IPR Institution Decision”). Patent Owner filed a
`Response to the DISH IPR petition on April 1, 2019. DISH IPR, Paper 14.
`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 ’535 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.
`
`
`3 GOOGLE LLC filed IPR2019-00748 and was joined as a petitioner to the
`DISH IPR (DISH and GOOGLE LLC shall be collectively referred to as the
`“DISH IPR petitioners”). See DISH IPR, Paper 9; Case IPR2019-00748,
`Paper 5.
`
`4
`
`
`
`IPR2019-00760
`Patent 8,934,535 B2
`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 DISH IPR on January 31, 2019. See DISH IPR
`Institution Decision. Petitioner filed this Petition and Motion for Joinder on
`February 28, 2019, i.e., within one month of the institution date of the DISH
`IPR. See Pet. & Mot. Thus, Petitioner timely filed its Motion for Joinder.
`See 37 C.F.R. § 42.122(b).
`As discussed above, we have determined that this Petition and the
`DISH IPR petition are
`substantially identical; Petitioner represents that its petition
`raises the same grounds for unpatentability as does DISH’s
`petition; joinder would not affect the pending schedule in the
`DISH IPR nor would it increase the complexity of that
`proceeding; and Petitioner is willing to accept an “understudy”
`role in the DISH IPR to avoid burden and schedule impact.
`Mot. 6.
`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
`1–6, 8–12, and 14 are unpatentable. At this preliminary stage, we have not
`
`5
`
`
`
`IPR2019-00760
`Patent 8,934,535 B2
`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-
`00760; and
`FURTHER ORDERED that the Motion for Joinder with IPR2018-
`01342 is granted, and Petitioner is joined as petitioner in IPR2018-01342;
`FURTHER ORDERED that IPR2019-00760 is terminated under 37
`C.F.R. § 42.72, and all further filings shall be made only in IPR2018-01342;
`FURTHER ORDERED that the DISH IPR petitioners and
`COMCAST CABLE COMMUNICATIONS, LLC shall file each paper due
`in IPR2018-01342 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 IPR2018-01342,
`COMCAST CABLE COMMUNICATIONS, LLC may not file any paper in
`addition to the consolidated paper filed by DISH IPR petitioners to address
`any points of disagreement with DISH IPR petitioners absent prior
`authorization from the Board, and that COMCAST CABLE
`
`6
`
`
`
`IPR2019-00760
`Patent 8,934,535 B2
`COMMUNICATIONS, LLC must request such authorization prior to filing
`any such additional paper;
`FURTHER ORDERED that DISH IPR petitioners and COMCAST
`CABLE COMMUNICATIONS, LLC 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 petitioners and
`COMCAST CABLE COMMUNICATIONS, LLC, within the timeframes
`set forth in 37 C.F.R. § 42.53(c) or agreed to by the parties;
`FURTHER ORDERED that DISH IPR petitioners and COMCAST
`CABLE COMMUNICATIONS, LLC 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 IPR2018-01342 shall
`be changed to reflect joinder of COMCAST CABLE
`COMMUNICATIONS, LLC 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 IPR2018-01342.
`
`
`
`
`
`
`
`
`
`
`7
`
`
`
`IPR2019-00760
`Patent 8,934,535 B2
`
`PETITIONER:
`
`James Day
`Daniel Callaway
`Farella Braun + Martel LLP
`jday@fbm.com
`dcallaway@fbm.com
`
`
`
`
`PATENT OWNER:
`
`Shami Messinger PLLC
`1000 Wisconsin Ave. NW
`Suite 200
`Washington DC 20007
`
`8
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper No. 5
`Filed: August 13, 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.,
`GOOGLE LLC, and COMCAST CABLE COMMUNICATIONS, LLC
`Petitioner,
`v.
`REALTIME ADAPTIVE STREAMING LLC,
`Patent Owner.
`
`Case IPR2018-013421
`Patent 8,867,610 B2
`
`
`
`
`
`
`
`
`
`Before KEVIN W. CHERRY, GARTH D. BAER, and
`NABEEL U. KHAN, Administrative Patent Judges.
`CHERRY, Administrative Patent Judge.
`
`
`
`1 GOOGLE LLC, who filed a petition in IPR2019-00748, and COMCAST
`CABLE COMMUNICATIONS, LLC, who filed a petition in IPR2019-
`00760, have been joined as petitioners in this proceeding.
`
`
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