Adobe Inc. v. Realtime Adaptive Streaming LLC

I'll research this case across PTAB records, docket sources, and legal press.

Case overview: Adobe Inc. v. Realtime Adaptive Streaming LLC, IPR2019-00712

A note on framing first: the case in the metadata is not a district‑court infringement suit — it is an inter partes review at the PTAB (Paper: Final Written Decision, Aug. 17, 2020) that Adobe filed as a defense to Realtime's infringement campaign. The infringement litigation itself proceeded in two parallel district court actions, and the IPR is best understood as the tail that wagged that dog.

Parties. Adobe Inc. is the operating company — the San Jose software vendor whose media tools (Media Encoder, Premiere Pro, After Effects, Flash/Flash Player, Flash Media Server, Adobe HTTP Dynamic Streaming) implement H.264‑based delivery. It appears here as petitioner, having been sued by Realtime in the District of Massachusetts on Feb. 23, 2018 (No. 1:18‑cv‑10355‑WGY, Judge William G. Young, https://dockets.justia.com/docket/massachusetts/madce/1:2018cv10355/[196273](/patent/196273)). Realtime Adaptive Streaming LLC is a non‑practicing patent‑assertion entity — a New York LLC with a Tyler, Texas business address — that is an affiliate of Realtime Data LLC d/b/a IXO, the well‑known compression‑portfolio plaintiff. EchoStar's SEC disclosure describes Realtime Adaptive Streaming flatly as "an entity that seeks to license an acquired patent portfolio without itself practicing any of the claims recited therein" (https://www.sec.gov/Archives/edgar/data/[1415404](/patent/1415404)/000155837025007050/tmb-20250331x10q.htm). Realtime was represented in these campaigns by Russ August & Kabat (Philip Wang, Reza Mirzaie, Shani Williams), per the Federal Circuit's opinion in Realtime Adaptive Streaming LLC v. Netflix, Inc., Nos. 2021‑1484 et al. (Fed. Cir. July 27, 2022).

Accused technology and asserted patents. In the district court actions Realtime asserted seven patents against Adobe: the Fallon patents '046 (7,386,046, "Bandwidth Sensitive Data Compression and Decompression"), '535 (8,934,535), '477 (9,769,477), '907 (9,762,907) and '442, plus '298 (9,578,298) and RE46,777 (reissue of 8,634,462). The accused instrumentalities were Adobe's H.264/H.264‑SVC‑enabled encoding and streaming products — Adobe Media Encoder, Premiere Pro, After Effects, Flash Media Server/Encoding Server and HTTP Dynamic Streaming (HDS) — with Realtime pointing to Adobe's own documentation on H.264, CAVLC/CABAC and bit‑rate adaptation (complaint reproduced at https://insight.rpxcorp.com/litigation_documents/[12816010](/patent/12816010)). Only the '442 was at issue in this IPR: "System and method for video and audio data distribution" (issued Jan. 6, 2015 from App. 14/134,933; a continuation in the '046 chain, earliest priority Feb. 13, 2001; inventors James Fallon and Stephen McErlain). Technically, the '442 claims a method of decompressing a compressed video/audio data block in which the compression algorithm was selected from a set of algorithms based on the throughput (bandwidth) of a communication channel, where at least one algorithm is "asymmetric" (compression and decompression times differ significantly) — essentially bandwidth‑sensitive codec/bit‑rate selection. Adobe challenged claims 1–15; a parallel ARRIS petition (IPR2019‑01222) and later petitions (IPR2019‑01586/01587) attacked claims 16–29 of the same patent.

Procedural posture and why it matters. Adobe filed the petition on Feb. 27, 2019 — almost exactly one year after the Massachusetts complaint, i.e., at the edge of the § 315(b) bar (that timing is my inference from the two filing dates; the service date itself I could not verify). The Board instituted on Sept. 12, 2019 on two grounds: anticipation/obviousness over Tso (U.S. 6,185,625), and obviousness over Vishwanath (6,216,157) in view of Kidder (5,898,833). Notably, the institution decision declined Realtime's invitation to deny the petition for Adobe's failure to propose a construction of "asymmetric," even while rejecting Adobe's apparent reading — a discretionary call Realtime pressed again at the Feb. 2020 oral hearing (institution decision: https://klarquist.com/wp-content/uploads/2019/09/Adobe-v-Realtime-Inst-Dec.pdf; hearing transcript at PTABs P‑TACTS). The Final Written Decision of Aug. 17, 2020 held all challenged claims 1–15 unpatentable (authored by APJ Kevin W. Cherry, per Patexia's IPR2019‑00712 summary, https://services.patexia.com/lawsuits/Adobe-Inc-v-Realtime-Adaptive-Streaming-LLC-id-[122861](/patent/122861)). The district court case before Judge George H. Wu in C.D. Cal. (No. 2:18‑cv‑09344‑GW‑JC, where Realtime asserted '442 claim 8 against Adobe and litigated claim construction in July 2019) was stayed in January 2020 pending the IPRs and then dismissed with prejudice on a joint motion filed March 9, 2021 — the usual signature of a settlement or license, though the terms are not public (Unified Patents docket: https://portal.unifiedpatents.com/litigation/California%20Central%20District%20Court/case/2:18-cv-09344). The case is notable on three axes: (1) IPR linkage — it was one of well over a dozen PTAB challenges (Adobe, Netflix, Sling/DISH, Sony, ARRIS, Unified Patents, Acronis) that collectively knocked out the Fallon patent family, with the '442 ultimately losing all claims across the Adobe and ARRIS proceedings; (2) NPE assertion patterns — Realtime filed a broad 2017–18 campaign against streaming, CDN, storage and cloud defendants, and the

I'll research the litigation chronology and the parallel PTAB proceedings in parallel.

Now let me dig into the C.D. Cal. docket chronology and the IPR paper trail.

Key finding: the C.D. Cal. stay motion was actually denied in May 2019. Let me verify the later stay and the sibling IPRs.

I'll start by locating the known IPWatchdog article and searching several angles on this case.

Let me check whether that IPWatchdog roundup actually discusses the Adobe/Realtime proceeding, and search for additional coverage.

Let me verify whether the IPWatchdog roundup mentions Adobe/Realtime, and look for additional coverage angles.

Press coverage of Adobe v. Realtime — what actually exists

Bottom line: dedicated press coverage of IPR2019-00712 itself is essentially absent. I searched the case caption, both party names, the '442 patent number, the "Tso"/"Vishwanath"/"Kidder" grounds, and the Aug. 17, 2020 outcome. I found no Reuters, Bloomberg Law, Law360, Ars Technica, The Verge, or Patently-O article reporting the Final Written Decision, and no reporting of any settlement figure or damages number for this IPR. That is unsurprising given the posture: it was one of a dozen-plus PTAB challenges to the Fallon family, it ended at the Board rather than in a jury verdict, and the '442's cancellation was one line-item in a much larger Realtime campaign. The substantive public record for this case lives in PTAB papers, the C.D. Cal. docket, and later Federal Circuit opinions — not in the trade press.

The one article in the news index does not appear to discuss this case. IPWatchdog published the 2019-08-15 piece as a weekly PTAB institution-decision roundup ("23 institution-phase decisions… 14 institutions and nine denials"), and the portions I retrieved cover only Facebook v. BlackBerry (photo-tagging patent), Apple v. Firstface (IPR2019-00611/00612/00613 on the '557 and '373 fingerprint-activation patents), and Apple v. Nartron, where IPWatchdog's angle was the PTAB's serial-petition problem — noting the panel acknowledged parallel petitions are "generally disfavored" but instituted anyway. I could not retrieve the full text, so I cannot rule out a brief mention, but there is a structural reason to doubt one: Adobe's institution decision in IPR2019-00712 issued Sept. 12, 2019, a month after this roundup's Aug. 15 publication date, so the proceeding would not yet have had an institution to report. I'm flagging this explicitly rather than manufacturing a link between the article and this case.

The most on-point coverage is a law-firm blog post about the parallel district court stay fight, which turns directly on Adobe's IPR strategy here. Jones Day's PTAB Litigation Blog (also republished on Mondaq on 2019-06-27) reported that Judge George H. Wu of the C.D. Cal. denied Adobe's motion to stay in Realtime Adaptive Streaming LLC v. Adobe Sys. Inc., No. 2:18-cv-09344, ECF No. 75 (May 14, 2019). The analysis is squarely about this IPR: Realtime asserted seven patents against Adobe, five of the seven were already in IPR, but "Adobe only filed an IPR petition challenging one of the patents" — i.e., the '442 petition that became IPR2019-00712. Jones Day reported that the court denied the stay because Adobe offered only a limited estoppel (grounds actually raised) rather than the full § 315(e)(2) scope for the third-party IPRs, and because Adobe could have joined the third-party proceedings as an "understudy" but did not. That article is a useful corrective to a purely outcome-focused account: it shows the single-petition strategy that produced the Aug. 2020 win cost Adobe the stay in May 2019 — the case was only later stayed in January 2020, consistent with the chronology in the earlier sections above.

Party messaging, and a telling silence. MarketScreener, carrying a PRNewswire release (2020-11-16), reported Realtime's own account of its litigation position — a Federal Circuit remand reinstating "159 claims across five patents," and PTAB wins on the '046 patent, quoting Managing Member Stephen McErlain that the decisions "validate Realtime's decades-long and vital inventions in the field of digital data compression." Notably, that release came roughly three months after the Aug. 17, 2020 FWD cancelled all of claims 1–15 of the '442, and does not mention the '442 or the Adobe proceeding at all — a selective framing worth noting as advocacy rather than reporting. Earlier, Unified Patents (2018-04-09) characterized Realtime Adaptive Streaming as "a Realtime Data affiliate and well-known NPE" while listing Adobe among the targets of the sibling '535 patent, which is the closest thing to an industry-observer take on the campaign in which this IPR sat. For downstream significance, the coverage I could find is about sibling matters, not this one — e.g., a Law360 index listing for 2025-02-05 headlined "Dish Gets Nothing After $3.9M Fee Award Axed In IP Appeal," concerning the DISH/Sling branch of Realtime's campaign (I found only the index entry, not the article body, and it does not discuss Adobe).

Where accounts differ / caveats. There is no press-versus-record conflict to report on this IPR, because there is no press record to compare — the only friction I can document is between Realtime's Nov. 2020 press release (victory framing) and the PTAB's Aug. 2020 FWD (all challenged claims unpatentable). Analysts and executives did not comment on IPR2019-00712 in anything I could retrieve; the "market impact" question is unanswered in the sources I found, and I'd rather say so than infer an Adobe licensing payment from the March 2021 joint dismissal with prejudice, which the earlier sections correctly flagged as consistent with a settlement but not proof of one. Finally, note that the practical significance of the Board's ruling is documented in judicial opinions rather than journalism — the Federal Circuit's treatment of Realtime's '535/'610 assertions in the DISH/Sling appeals discusses PTAB outcomes in the same patent family, while the '442's own cancellation across the Adobe and ARRIS proceedings appears in the PTAB record (IPR2019-01222) rather than in any trade-press account I located.

Sources

• Facebook Targets Blackberry Photo Tagging Patent, Apple Takes Aim at Firstface and Continues Serial Challenges Against Nartron - Facebook Targets Blackberry Photo Tagging Patent, Apple Takes Aim at Firstface and Continues Serial Challenges Against Nartron
• Nartron Archives
• Facebook Archives - Posts Tagged: "Facebook"
• 37. Apple has directly infringed and/or indirectly infringed, and continues to directly infringe and/or indirectly infringe, one...
• UNITED STATES PATENT AND TRADEMARK OFFICE
• Apple's suggestion that the button must be operational while the mobile communication terminal is not receiving power is unsuppo...
• UNITED STATES PATENT AND TRADEMARK OFFICE
• Edward R
• patentability
• Realtime argues that “the disclosed inventions
• **_issue in that case
• Plaintiff-Appellant Realtime Adaptive Streaming LLC (“Realtime” or “plaintiff”) initially sued DISH and related Sling entities (...

Threshold point on posture

This is not a district‑court infringement action — it is an inter partes review (IPR2019‑00712) before the PTAB. Adobe Inc. is the petitioner (the functional "plaintiff" side under the caption you supplied), and Realtime Adaptive Streaming LLC is the patent owner (the functional defendant). There is no "complaint," no PACER docket, and no local counsel; counsel appear via powers of attorney and mandatory notices under 37 C.F.R. §§ 42.8, 42.10. I therefore give you the petitioner's team first, then — because "plaintiff" could also mean the plaintiff in the underlying District of Massachusetts / C.D. Cal. suits where Realtime sued Adobe — Realtime's team as a cross‑reference.

---

1. Counsel for the petitioner / "plaintiff" side — Adobe Inc.

Notes and caveats:

• The publicly indexed PTAB counsel field for IPR2019‑00712 lists only Jeremy Monaldo for the petitioner (GreyB/IPverse case record), which is consistent with his being lead counsel; a full back‑up roster would come from Adobe's Power of Attorney (Paper filed 2019‑02‑27) and updated mandatory notices, which I was not able to pull in full text.
• Adobe's trial deposition in this IPR was noticed at Fish & Richardson's San Diego office (12390 El Camino Real), consistent with Fish being Adobe's IPR counsel of record.
• No in‑house Adobe attorney appears in the public filings I could retrieve. I am not aware of any, and I will not guess at one.
• Nothing in this IPR was sealed as to counsel identity; the limitation is simply that I could not open Adobe's mandatory‑notice paper itself.

---

2. Cross‑reference — counsel for the patent owner, Realtime Adaptive Streaming LLC (the plaintiff in the underlying district‑court suits)

All from Russ August & Kabat, 12424 Wilshire Blvd., 12th Floor, Los Angeles, CA 90025 (www.raklaw.com):

---

Sourcing / confidence

• High confidence: Monaldo as petitioner's lead counsel and hearing advocate (he is addressed as Petitioner's counsel in the 18 June 2020 hearing transcript; GreyB/PTAB case record lists him as the sole "Petitioner Counsel"); Fish & Richardson as Adobe's firm (its San Diego office hosted Adobe's noticed deposition; Monaldo's firm affiliation confirmed on fr.com).
• High confidence: the Russ August & Kabat slate for Realtime (appears throughout the IPR papers, the PHV papers, and the parallel Realtime v. Adobe / Realtime v. Sling dockets).
• Medium confidence: Diana Bradley's precise designation (attorney on the team vs. formally designated back‑up counsel).
• Not established: any Adobe in‑house counsel of record; the complete back‑up counsel list from Adobe's 2019 power of attorney (I did not retrieve that paper's full text). I have not invented any names to fill those gaps.

I'll research the counsel of record across the PTAB proceeding and any parallel district court litigation.

Let me pull the specific counsel designations in this IPR and the parallel district court dockets.

Let me confirm Adobe's side counsel of record (PTAB and district court) and the final written decision's appearances.

Framing note (important)

IPR2019-00712 is an inter partes review, not a district‑court infringement action — there are technically no "defendants," only petitioner and patent owner. Treating the case metadata in this prompt as authoritative (Adobe = plaintiff/petitioner; Realtime Adaptive Streaming LLC = defendant/respondent), the "defense" side here is Realtime as patent owner. I've therefore given you (1) Realtime's PTAB counsel of record in IPR2019-00712, and (2) for completeness, Adobe's counsel of record as the actual defendant in the parallel infringement suit on the '442 patent, Realtime Adaptive Streaming LLC v. Adobe Inc., No. 2:18‑cv‑09344‑GW‑JCx (C.D. Cal.) (originally filed in D. Mass. as No. 1:18‑cv‑10355‑WGY, and transferred to C.D. Cal. on 10/31/2018). No in‑house counsel appears on either record.

---

1. Realtime Adaptive Streaming LLC — respondent / "defendant" in IPR2019-00712

Source: Realtime's Updated Mandatory Notices under 37 C.F.R. § 42.8(a)(2) (filed Dec. 18, 2019; updated Jan. 31, 2020) and Updated Power of Attorney, as posted on the PTAB's public docket (ptacts.uspto.gov) and mirrored at Docket Alarm; also the parallel Updated Power of Attorney covering IPR2019-00712, ‑01035 and ‑01036 (Feb. 3, 2020).

Service/e‑mail of record: rak_realtimedata@raklaw.com (with individual @raklaw.com addresses). The power of attorney is executed by Richard Tashjian, Manager of Realtime.

Caveat on sibling matters: In several other Realtime IPRs (e.g., IPR2018‑01187), Noroozi PC (Joel P.N. Stonedale, Kayvan B. Noroozi) took over as lead counsel in August 2019 with RAK as back‑up. I found no Noroozi PC appearance in IPR2019‑00712 itself — the record there shows Russ August & Kabat throughout. Flagging this because a search across "Realtime IPR counsel" will surface the Noroozi names and they should not be attributed to this docket without a filing.

---

2. Adobe Inc. — defendant in the parallel infringement suit, petitioner here

Source: C.D. Cal. docket (No. 2:18‑cv‑09344) and D. Mass. predecessor docket (No. 1:18‑cv‑10355), as reflected in Justia, Unified Patents' litigation portal, and Patexia; corroborated by the Dec. 20, 2019 Reader deposition transcript in the C.D. Cal. case, which lists "FISH & RICHARDSON P.C. BY: JONATHAN J. LAMBERSON, ESQ., 500 Arguello Street, Redwood City."

Caveat: A copy of the institution decision in Adobe v. Realtime is hosted on Klarquist Sparkman's website (klarquist.com). That hosting alone is not evidence that Klarquist was counsel of record in IPR2019‑00712 — the PTAB papers, the deposition transcript, and the e‑mail domain of record all point to Fish & Richardson. I could not verify a Klarquist appearance in this specific IPR, so I would not list Klarquist as counsel here without the actual power of attorney/mandatory notice.

---

Reliability of these identifications

• Well sourced: Realtime's PTAB designations (primary documents: its own Updated Mandatory Notices and Power of Attorney filed in this IPR, retrieved from the PTAB's public document system); Adobe's district‑court appearances (docket entries and a filed deposition transcript); Lamberson's withdrawal (ECF 223 order); Tsuei's pro hac vice grant (Board order, Dec. 31, 2019).
• Less well sourced: Office assignments for the Fish attorneys other than Lamberson and Monaldo (inferred from the Boston docket and firm listings, not from a firm bio page I could open today); the precise firm name of Realtime's Boston local counsel in the original D. Mass. action (James E. Kruzer, who filed the complaint and pro hac vice motion, and David Godkin). Those two are local counsel for Realtime as plaintiff in the predecessor action — I have not confirmed their firm affiliation and would not state it without a check.
• Nothing is sealed as to counsel identity. The C.D. Cal. case did have sealed filings (e.g., Realtime's application for leave to file under seal, granted at ECF 156), but counsel listings are public.
• Post‑termination: The IPR terminated Aug. 17, 2020 (all of claims 1–15 unpatentable, Final Written Decision by APJ Kevin W. Cherry). Any Federal Circuit appeal appearances would be a separate docket; I did not verify appellate counsel and am not asserting any names for that stage.