Sling Tv, L.L.C. v. Realtime Adaptive Streaming

Case: 20-1601 Document: 18 Page: 1 Filed: 03/16/2021 NOTE: This disposition is nonprecedential. United States Court of Appeals for the Federal Circuit ______________________ SLING TV, L.L.C., SLING MEDIA, L.L.C., DISH NETWORK L.L.C., DISH TECHNOLOGIES L.L.C., Appellants v. REALTIME ADAPTIVE STREAMING LLC, Appellee ANDREW HIRSHFELD, PERFORMING THE FUNCTIONS AND DUTIES OF THE UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE, Intervenor ______________________ 2020-1601, 2020-1602 ______________________ Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2018- 01331, IPR2018-01342. ______________________ Decided: March 16, 2021 ______________________ Case: 20-1601 Document: 18 Page: 2 Filed: 03/16/2021 2 SLING TV, L.L.C. v. REALTIME ADAPTIVE STREAMING RUFFIN B. CORDELL, Fish & Richardson P.C., Washing- ton, DC, argued for appellants. Also represented by MICHAEL JOHN BALLANCO, BRIAN JAMES LIVEDALEN, MATTHEW MOSTELLER, ADAM SHARTZER. PHILIP WANG, Russ August & Kabat, Los Angeles, CA, argued for appellee. Also represented by C. JAY CHUNG, REZA MIRZAIE, NEIL RUBIN. MICHAEL S. FORMAN, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, ar- gued for intervenor. Also represented by THOMAS W. KRAUSE, FARHEENA YASMEEN RASHEED, PETER JOHN SAWERT. ______________________ Before TARANTO, CHEN, and STOLL, Circuit Judges. TARANTO, Circuit Judge. Sling TV, LLC, Sling Media, LLC, Dish Network, LLC, and Dish Technologies, LLC (together, Sling) directly ap- peal the Patent Trial and Appeal Board’s determination to deinstitute two inter partes review proceedings, IPR2018- 01342 and IPR2018-01331, which involve, respectively, U.S. Patent Nos. 8,934,535 and 8,867,610, owned by Realtime Adaptive Streaming, LLC. See J.A. 11–24 (Jan. 17, 2020 deinstitution in IPR2018-01342); J.A. 1–9 (Jan. 17, 2020 deinstitution in IPR2018-01331). Sling also alter- natively petitions for a writ of mandamus. We dismiss in part and deny in part. This court’s docket No. 20-1602 is Sling’s direct appeal and mandamus petition challenging the Board’s actions in IPR2018-01342, which involves the ’535 patent. The dis- pute in No. 20-1602 is moot because, in separate proceed- ings, all patent claims at issue in this matter have already been finally determined to be unpatentable (Realtime dropped its appeals from the Board decisions so Case: 20-1601 Document: 18 Page: 3 Filed: 03/16/2021 SLING TV, L.L.C. v. REALTIME ADAPTIVE STREAMING 3 determining) and are now set for the ministerial act of can- cellation under 35 U.S.C. § 318(b). See Netflix, Inc. v. Realtime Adaptive Streaming, LLC, No. IPR2018-01169, 2020 WL 120083, at *1 (P.T.A.B. Jan. 10, 2020); No. 20- 1603, ECF No. 30 (Fed. Cir. Sept. 14, 2020) (Netflix); Google LLC v. Realtime Adaptive Streaming, LLC, No. IPR2018-01342, 2020 WL 959190, at *1 (P.T.A.B. Feb. 27, 2020); No. 20-1809, ECF No. 25 (Fed. Cir. Oct. 1, 2020) (Google and Comcast). We therefore dismiss both the ap- peal and the mandamus petition in No. 20-1602. This court’s docket No. 20-1601 is Sling’s direct appeal and mandamus petition challenging the Board’s decision to deinstitute IPR2018-01331, which involves the ’610 patent. We have held that the Board has the inherent authority to reconsider institution decisions (beyond the regulatory time for a patentee’s entitlement to seek reconsideration) and that a resulting decision to deinstitute is, like an orig- inal decision not to institute, “final and nonappealable” un- der 35 U.S.C. § 314(d). See, e.g., Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., 839 F.3d 1382, 1383 (Fed. Cir. 2016); GTNX, Inc. v. INTTRA, Inc., 789 F.3d 1309, 1311–13 (Fed. Cir. 2015); BioDelivery Sciences Int’l, Inc. v. Aquestive Therapeutics, Inc., 935 F.3d 1362, 1366 (Fed. Cir. 2019). Section 314(d)’s rule of nonappealability, we have also held, confirms the general unavailability of jurisdic- tion under 28 U.S.C. § 1295(a)(4) to hear an appeal from a decision not to institute. See Mylan Labs. Ltd. v. Janssen Pharmaceutica, N.V., No. 2021-1071, 2021 WL 936345, at *2–3 (Fed. Cir. Mar. 12, 2021). As for a mandamus petition challenging a decision not to institute, we recently held that this court has jurisdiction to entertain such a petition under 28 U.S.C. § 1651, see Mylan, 2021 WL 936345, at *3– 5, but we made clear that, given the commitment of non- institution decisions to agency discretion, we did not fore- see the strict mandamus standards for granting relief be- ing met except by constitutional claims, id. at *5–6. Case: 20-1601 Document: 18 Page: 4 Filed: 03/16/2021 4 SLING TV, L.L.C. v. REALTIME ADAPTIVE STREAMING In this matter, we see no basis for a disposition differ- ent from the one in Mylan: We dismiss the appeal and deny the mandamus petition. Sling has not shown that our prec- edent equating a deinstitution decision with an initial de- cision to deny institution was implicitly overruled by the Supreme Court in Thryv, Inc. v. Click-To-Call Technolo- gies, LP, 140 S. Ct. 1367 (2020), which did not involve or address such a deinstitution decision, or by our decision in Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345 (Fed. Cir. 2018), which could not overrule our precedent and did not involve a deinstitution decision (under 37 C.F.R. § 42.72) but entry of an adverse judgment (under 37 C.F.R. § 42.73). Nor has Sling presented a colorable constitu- tional claim. And Sling likewise has not identified a non- constitutional claim that newly suggests a persuasive jus- tification for granting mandamus or for providing an avail- able basis for direct-appeal jurisdiction that we did not foresee in Mylan: Sling’s challenges here, as in Mylan, are to an exercise of discretion not to institute. See J.A. at 5, 8 (exercising discretion, even aside from any binding Board precedent); J.A. 15–18 (same). In these circumstances, we dismiss Sling’s appeal and deny its petition in No. 20-1601. DISMISSED IN PART AND DENIED IN PART