Case 4:16-cv-01730-YGR Document 46 Filed 05/04/16 Page 1 of 5
`
`
`
`COOLEY LLP
`HEIDI L. KEEFE (178960)
`hkeefe@cooley.com
`MARK R. WEINSTEIN (193043)
`mweinstein@cooley.com
`PHILLIP E. MORTON (pro hac vice)
`pmorton@cooley.com
`REUBEN H. CHEN (228725)
`rchen@cooley.com
`3175 Hanover Street
`Palo Alto, CA 94304-1130
`Telephone:
`(650) 843-5000
`Facsimile:
`(650) 849-7400
`
`Attorneys for Defendant Facebook, Inc.
`
`
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`SAN FRANCISCO DIVISION
`
`WINDY CITY INNOVATIONS, LLC,
`
`Case No. 4:16-cv-01730-YGR
`
`Plaintiff,
`
`
`
`v.
`
`FACEBOOK, INC.,
`
`Defendant.
`
`FACEBOOK, INC.’S ADMINISTRATIVE
`MOTION REGARDING THE
`IDENTIFICATION OF ASSERTED CLAIMS
`
`
`
`Nearly a year after filing this case, Windy City Innovations, LLC (“Windy City”) has refused
`
`to identify which of the 830 claims in the four asserted patents are asserted against Facebook, Inc.
`
`(“Facebook”). By this point, Windy City has no excuse to continue withholding which of the 830
`claims it specifically intends to assert in this case.1 Disclosure of asserted claims now will help to
`avoid the unnecessary expense and burden of analyzing invalidity and non-infringement for claims
`
`
`
` 1
`
` Facebook is not requesting early disclosure of infringement contentions, only an identification of
`the claims Windy City intends to assert. Facebook anticipates that Windy City’s disclosure of
`infringement contentions will likely proceed under the schedule set in the Patent Local Rules.
`
`
`
`FACEBOOK’S ADMIN. MOTION. RE ASSERTED CLAIMS
` NO. 4:16-CV-01730-YGR
`
`
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`COOLEY LLP
`ATTORNEYS AT LAW
`PALO ALTO
`
`

`

`Case 4:16-cv-01730-YGR Document 46 Filed 05/04/16 Page 2 of 5
`
`
`
`Windy City never intends to assert. Moreover, disclosure of asserted claims now may help to
`
`narrow this litigation through the inter partes review process at the Patent and Trademark Office.
`
`With the deadline for petitions for inter partes review fast approaching on June 3, 2016, 35 U.S.C. §
`315(b)2, Facebook respectfully moves for an administrative order requiring Windy City to identify
`no more than forty asserted claims across the four asserted patents no later than May 16, 2016. 3
`
`I.
`
`PROCEDURAL HISTORY
`On June 2, 2015, Windy City sued Facebook in the Western District of North Carolina,
`alleging infringement of four asserted patents that collectively include a total of 830 claims. 4
`All four asserted patents share the same specification, the same named inventor, and are
`
`continuations of the same parent patent. Under the complaint’s “one count,” Windy City did not
`
`reveal a single asserted claim allegedly infringed by Facebook or clearly identify the accused
`products beyond the entirety of “Facebook.com” and “Facebook apps.”5 By refusing to identify any
`specific asserted claims or accused products, Windy City left Facebook with the burden of guessing
`
`what claims and products Windy City believes are infringing.
`
`On July 24, 2015, Facebook filed a motion to dismiss under Rule 12(b)(6). As explained in
`
`the motion to dismiss, Windy City’s complaint failed to provide the notice required by the Federal
`
`Rules and the standards set forth by the Supreme Court. (E.g., Dkt. 20 at 2-7). In view of the recent
`amendment of the Federal Rules eliminating Form 18, the deficiencies are even more striking.6 The
`
`
`
` 2
`
` Congress created the inter partes review procedure to provide a “timely, cost-effective alternative
`to litigation.” Changes to Implement Inter Partes Review Proceedings, Post-Grant Review
`Proceedings, and Transitional Program for Covered Business Method Patents, 77 Fed. Reg. 48,680,
`48,680 (Aug. 14, 2012) (codified at 37 C.F.R. § 42.100, et seq.). Inter partes review allows
`petitioners to challenge the validity of patents under 35 U.S.C. §§ 102 and/or 103 based on prior art
`patents and printed publications. 35 U.S.C. §§ 311(b), 316(a); 37 C.F.R. §§ 42.51, 42.53.
`3 On May 3, 2016, the parties met-and-conferred telephonically, and Windy City stated that it would
`oppose this administrative motion. (Declaration of Phillip E. Morton in Support of Facebook, Inc.’s
`Administrative Motion Regarding the Identification of Asserted Claims (“Morton Decl.”), ¶ 3.)
`4 U.S. Patent No. 8,407,356 includes 37 claims. U.S. Patent No. 8,458,245 includes 58 claims.
`U.S. Patent No. 8,473,552 includes 64 claims. U.S. Patent No. 8,694,657 includes 671 claims.
`5 Facebook’s Rule 12(b)(6) motion is fully briefed and pending. (Dkt. 21, 22.)
`6 Applying the newly amended Federal Rules of Civil Procedure in this case is “just and
`practicable.” See H.R. Doc. No. 114-33, at 2 (2015). See also Rembrandt Patent Innovations LLC
`
`2
`
`FACEBOOK’S ADMIN. MOTION. RE ASSERTED CLAIMS
` NO. 4:16-CV-01730-YGR
`
`
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`COOLEY LLP
`ATTORNEYS AT LAW
`PALO ALTO
`
`

`

`Case 4:16-cv-01730-YGR Document 46 Filed 05/04/16 Page 3 of 5
`
`
`
`complaint included broad allegations of indirect and willful infringement reciting boilerplate
`
`language without any supporting facts. Facebook filed a motion to transfer, which was pending for
`
`nearly six months before the case was transferred to the Northern District of California on March 16,
`2016.7
`
`II.
`
`ARGUMENT
`It is well-established that courts may order plaintiffs to identify and limit the number of
`
`asserted claims. See Stamps.com v. Endicia, 437 F. App’x 897, 902 (Fed. Cir. 2011), reh’g denied
`
`(Aug. 1, 2011) (unpublished); Rambus v. LSI, No. 10-cv-05446 (N.D. Cal. Dec. 28, 2012) (Seeborg,
`
`J.) (Morton Decl. Ex. A at 3) (“In the patent context, the Federal Circuit has approved of district
`
`courts’ common practice of limiting the number of claims that can be asserted in order to streamline
`
`the litigation.”) (citing In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303 (Fed.
`
`Cir. 2011)). For example in Rambus, this court initially limited the plaintiff to 35 claims, even
`
`though there were nine asserted patents. (Morton Decl. Ex. A at 1-2.)
`
`Facebook respectfully requests that the Court require Windy City identify no more than forty
`
`asserted claims across the four asserted patents by May 16, 2016. To facilitate Windy City’s claim
`
`selection process, Facebook has offered to make its source code available for review by Windy
`
`City’s counsel and approved experts upon entry of a protective order, which Windy City rejected
`
`
`
`v. Apple Inc., No. 14-cv-05094, 2015 WL 8607390, at *2 (N.D. Cal. Dec. 13, 2015) (Alsup, J.)
`(applying amended pleading standard in case filed prior to December 1, 2015, in the context of a
`request to amend infringement contentions); Dao v. Liberty Life Assurance Co., No. 14-cv-04749,
`2016 WL 796095, at *3 (N.D. Cal. Feb. 23, 2016) (Laporte, J.) (applying amended rules in discovery
`dispute). Given how long Windy City has had to analyze its infringement contentions and the
`burden it would impose on Facebook to prepare invalidity and non-infringement defenses for 830
`claims and an unknown number of potentially accused products, it would be just and practicable to
`narrow the issues that will actually have to be tried, not only for judicial efficiency and streamlining
`the discovery process, but also to permit Facebook to seek meaningful inter partes review by the
`U.S. Patent and Trademark Office (“PTO”) of the patents and claims truly at issue.
`7 On August 25, 2015, Facebook filed a motion to transfer this action to the Northern District of
`California. (Dkt. 25.) Windy City filed an opposition, and on September 21, 2015, Facebook filed a
`reply brief. (Dkt. 29, 30.) The motion to transfer remained fully briefed on the North Carolina
`court’s docket for nearly six months. After the case was reassigned to a different judge, the North
`Carolina court granted Facebook’s motion to transfer on March 16, 2016. (Dkt. 31.)
`
`
`3
`
`FACEBOOK’S ADMIN. MOTION. RE ASSERTED CLAIMS
` NO. 4:16-CV-01730-YGR
`
`
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`COOLEY LLP
`ATTORNEYS AT LAW
`PALO ALTO
`
`

`

`Case 4:16-cv-01730-YGR Document 46 Filed 05/04/16 Page 4 of 5
`
`
`
`because it is not prepared to review Facebook’s source code. (Morton Decl. Ex. B.)
`
`As illustrated in the attached correspondence, Windy City would not consider any
`
`identification of asserted claims unless the Defendants (Facebook and Microsoft) agreed to reduce
`
`the prior art they may assert before Windy City has identified any information about the scope of the
`
`case, including accused products, asserted claims, and infringement contentions. (Morton Decl. Ex.
`
`B.) Facebook is willing to engage in meaningful efforts to narrow the scope of this case, including
`
`reducing asserted prior art references, but such a reduction is more appropriate after Windy City
`
`provides basic information about the asserted claims, accused products, and infringement
`
`contentions explaining how Windy City is alleging infringement by Facebook.
`
`Windy City should know which claims it intends to assert from its pre-filing diligence and
`
`upcoming infringement contentions. Windy City should not be permitted to continue to keep
`
`Facebook in the dark about the asserted claims, particularly in view of the upcoming deadline for
`
`petitions for inter partes review petitions fast approaching. See Adaptix, Inc. v. Dell, Inc., No. 5-14-
`
`cv-01259-PSG, 2015 U.S. Dist. LEXIS 23134, at *25 (N.D. Cal. Feb. 24, 2015) (Grewal, M.J.)
`
`(finding that defendants would be unduly prejudiced by amendment of infringement contentions
`
`after statutory IPR deadline). Narrowing the case to forty asserted claims now will help to
`
`streamline the parties’ upcoming infringement and invalidity contentions, and focus any inter partes
`
`review petitions that may be filed before the June 3, 2015 statutory deadline.
`
`III. CONCLUSION
`Accordingly, Facebook respectfully requests that the Court order Windy City to identify no
`
`more than forty asserted claims by May 16, 2016.
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`4
`
`FACEBOOK’S ADMIN. MOTION. RE ASSERTED CLAIMS
` NO. 4:16-CV-01730-YGR
`
`
`
`
`
`28
`COOLEY LLP
`ATTORNEYS AT LAW
`PALO ALTO
`
`

`

`Case 4:16-cv-01730-YGR Document 46 Filed 05/04/16 Page 5 of 5
`
`
`
`Dated: May 4, 2016
`
`
`COOLEY LLP
`
`/s/ Heidi L. Keefe
`Heidi L. Keefe
`Mark R. Weinstein
`Reuben H. Chen
`Phillip E. Morton
`COOLEY LLP
`3175 Hanover Street
`Palo Alto, CA 94304-1130
`
`Attorneys for Defendant
`FACEBOOK, INC.
`
`5
`
`FACEBOOK’S ADMIN. MOTION. RE ASSERTED CLAIMS
` NO. 4:16-CV-01730-YGR
`
`
`
`
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`26
`
`27
`
`28
`COOLEY LLP
`ATTORNEYS AT LAW
`PALO ALTO
`
`