Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
`
` Paper No. 49
`
` Entered: August 14, 2017
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC.,
`Petitioner,
`
`v.
`
`WINDY CITY INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-011411
`Patent 8,458,245 B1
`____________
`
`
`
`Before KARL D. EASTHOM, DAVID C. McKONE, and J. JOHN LEE,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`1 IPR2017-00655 has been joined with this proceeding.
`
`
`
`
`571.272.7822
`
`
`
`
`
`
`
` Paper No. 49
`
` Entered: August 14, 2017
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC.,
`Petitioner,
`
`v.
`
`WINDY CITY INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-011411
`Patent 8,458,245 B1
`____________
`
`
`
`Before KARL D. EASTHOM, DAVID C. McKONE, and J. JOHN LEE,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`1 IPR2017-00655 has been joined with this proceeding.
`
`
`
`
`
`IPR2016-01141
`Patent 8,458,245 B1
`
`
`INTRODUCTION
`On June 3, 2016, Microsoft Corporation (“Microsoft”) filed a petition
`
`(Paper 1) in the present case seeking inter partes review of claims 1–58 of
`U.S. Patent No. 8,458,245 B1 (Ex. 1001, “the ’245 patent”). An inter partes
`review was instituted on claims 1–40 on December 12, 2016. Paper 8.
`
`One month later, on January 12, 2017, Facebook, Inc. (“Facebook”)
`filed a petition in IPR2017-00655 (“655 IPR”) seeking inter partes review of
`claims 1–15, 17, and 18 of the ’245 patent. 655 IPR, Paper 2. Along with
`that petition, Facebook filed a motion requesting joinder with the present
`proceeding. 655 IPR, Paper 3.
`
`While Facebook’s petition and joinder motion were pending,
`Microsoft and Patent Owner Windy City Innovations, LLC (“Windy City”)
`reached a settlement agreement and filed a Joint Motion to Terminate the
`present proceeding on April 24, 2017. Paper 25. The Joint Motion did not
`mention Facebook’s joinder motion or the 655 IPR.
`
`Subsequently, on May 2, 2017, Windy City filed a preliminary
`response in the 655 IPR. 655 IPR, Paper 7. Windy City did not, however,
`file an opposition to Facebook’s joinder motion or argue that joinder with
`the present proceeding would be inappropriate if an inter partes review was
`instituted on Facebook’s petition.
`
`In a May 10, 2017, decision, we granted the Joint Motion to
`Terminate in the present proceeding, but only with respect to Microsoft.
`Paper 27 (“1st Term. Dec.”). Noting Facebook’s pending joinder motion,
`we did not decide at that time whether to grant the motion with respect to the
`entire proceeding, indicating we would do so after deciding whether
`Facebook would be joined as a party to this proceeding. Id. at 2–3.
`
`2
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`
`
`IPR2016-01141
`Patent 8,458,245 B1
`
`On May 31, 2017, we granted Facebook’s joinder motion. Paper 28
`
`(“Joinder Inst. Dec.”). We noted that Facebook challenged claims 1–15, 17,
`and 18 of the ’245 patent on the same asserted grounds of unpatentability,
`based on the same arguments and evidence, as in Microsoft’s petition with
`respect to those claims in the present proceeding. Id. at 3, 8. Further, we
`clarified that, after joinder, Facebook is “the petitioner” in this proceeding
`for purposes of 35 U.S.C. § 318(a), which in relevant part requires the Board
`to “issue a final written decision with respect to the patentability of any
`patent claim challenged by the petitioner” (emphasis added). Id. at 9. Thus,
`we made clear that all claims formerly challenged by Microsoft prior to its
`termination, but which were not challenged by Facebook, were no longer
`part of this proceeding. Id.
`
`After joining Facebook as a party to the present proceeding, we issued
`a second decision on June 7, 2017, to address the remaining issues with the
`Joint Motion to Terminate. Paper 29 (“2nd Term. Dec.”). In that decision,
`we denied the Joint Motion to Terminate with respect to Windy City because
`Facebook remained as an active petitioner. Id. at 2–3. On June 14, 2017,
`Windy City filed a Request for Rehearing. Paper 35 (“Req. Reh’g”).
`
`
`DISCUSSION
`A party requesting rehearing bears the burden of showing the decision
`
`should be modified. 37 C.F.R. § 42.71(d). The party must identify all
`matters it contends were misapprehended or overlooked by the Board. Id.
`Windy City requests rehearing of two decisions, each of which it contends
`was an abuse of discretion. First, Windy City contends our decision to
`terminate as to Microsoft, but not as to the entire proceeding, exceeded our
`
`3
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`
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`IPR2016-01141
`Patent 8,458,245 B1
`
`statutory authority. Req. Reh’g 5–9. Second, Windy City contends we
`exceeded our statutory authority by joining Facebook to this proceeding
`despite that Facebook challenges only a portion of the claims originally
`challenged by Microsoft. Id. at 9–12. As explained below, neither
`contention is supported by the relevant authorities, and the Request for
`Rehearing is denied.
`
`Termination As To Microsoft But Not As To Entire Proceeding
`A.
`As an initial matter, our decision to terminate as to Microsoft but not
`
`as to the entire proceeding was entered on May 10, 2017. See 1st Term.
`Dec. Windy City’s Request for Rehearing was not filed until June 14, 2017.
`See Req. Reh’g. Thus, with respect to this termination decision, Windy
`City’s Request was not timely filed. See 37 C.F.R. § 42.71(d)(1). For that
`reason alone, the Request for Rehearing should be denied as to this issue.
`
`Moreover, even had the Request been timely filed, Windy City’s
`arguments fail to establish that our decision was improper. It argues that our
`decision exceeded our statutory authority under 35 U.S.C. § 317(a). Req.
`Reh’g 5–9. Section 317(a) states the following:
`An inter partes review instituted under this chapter shall be
`terminated with respect to any petitioner upon the joint request
`of the petitioner and the patent owner, unless the Office has
`decided the merits of the proceeding before the request for
`termination is filed. . . . If no petitioner remains in the inter
`partes review, the Office may terminate the review or proceed
`to a final written decision under section 318(a).
`
`Pursuant to the statute, we “terminated [the inter partes review] with respect
`to any petitioner upon the joint request of the petitioner and the patent
`owner” by granting the Joint Motion to Terminate as to Microsoft. See
`
`4
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`
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`IPR2016-01141
`Patent 8,458,245 B1
`
`35 U.S.C. § 317(a); 1st Term. Dec. 2. Windy City does not contest that
`aspect of our decision. Rather, it argues our decision failed to follow the
`portion of § 317(a) that states, “[i]f no petitioner remains in the inter partes
`review, the Office may terminate the review or proceed to a final written
`decision.” Req. Reh’g 6–8.
`
`According to Windy City, once Microsoft was terminated, the Board
`was obligated to either terminate the entire review or proceed to a final
`written decision. Id. Indisputably, we did not terminate the entire review.
`Thus, Windy City contends the only other permissible option was to proceed
`to a final written decision. Id. Windy City asserts that our decision to hold
`in abeyance our ruling as to whether the entire proceeding should be
`terminated (until after deciding Facebook’s joinder motion) constituted a
`“suspension of the [inter partes] review,” which exceeded our authority
`under § 317(a) because the Board was obligated instead to “proceed to a
`final written decision.” Id.
`
`Windy City misconstrues the statute and our decision. First, the
`statute does not mandate that the Board either terminate the entire review or
`proceed to a final written decision. Rather, it states explicitly that the Board
`“may” do so. In contrast, as noted above, the same statutory provision states
`that an inter partes review “shall” be terminated with respect to a petitioner
`upon a joint request. We further note that when, as here, there are multiple
`cases before the Board involving the same patent, the Board is explicitly
`granted discretion to “enter any appropriate order,” including “the stay,
`transfer, consolidation, or termination” of such cases. See 37 C.F.R.
`§ 42.122(a); see also 35 U.S.C. § 315(d) (granting discretion to “determine
`the manner in which the inter partes review or other proceeding or matter
`
`5
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`
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`IPR2016-01141
`Patent 8,458,245 B1
`
`may proceed”). Consistent with this statutory framework, we considered
`Facebook’s pending petition challenging the same patent and motion for
`joinder with this proceeding, and concluded that we would first decide
`Facebook’s joinder motion (which was filed before the motion to terminate)
`before deciding whether to terminate the entire proceeding. 1st Term. Dec.
`2–3; see also 37 C.F.R. § 42.71(a) (providing that “[t]he Board may take up
`petitions or motions for decisions in any order”).
`
`Second, Windy City is incorrect that “proceed[ing] to a final written
`decision” under § 317(a) precludes our decision here. Windy City appears
`to argue that once Microsoft was terminated, “proceed to a final written
`decision” meant that the Board should have proceeded immediately to issue
`a final written decision. See Req. Reh’g 7–8. In particular, Windy City
`argues that our decision incorrectly indicated the Board could “proceed with
`the trial” because doing so is inconsistent with “proceed[ing] to a final
`written decision” under § 317(a). See id. Section 317(a), however, does not
`specify when the final written decision should issue, much less require it to
`be issued immediately without further trial.2 The applicable deadline for the
`final written decision remains one year from institution, as specified in
`35 U.S.C. § 316(a)(11) and 37 C.F.R. § 42.100(c). Thus, our decision to
`proceed with the trial without immediately issuing a final written decision
`was consistent with the applicable statutory provisions and regulations.
`
`Third, Windy City is mistaken that our decision “suspend[ed]
`indefinitely” this inter partes review. See Req. Reh’g 6; see also id. at 9
`
`
`2 We note that Windy City’s interpretation of the statute could conflict with
`other statutory provisions. For example, proceeding immediately to issue a
`final written decision could circumvent patent owners’ rights to an oral
`hearing under 35 U.S.C. § 316(a)(10).
`
`6
`
`
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`IPR2016-01141
`Patent 8,458,245 B1
`
`(“[T]he Board had no statutory authority to suspend [this proceeding]
`without a petitioner for three weeks . . . .”). To the contrary, our decision
`made clear that trial was to proceed. 1st Term. Dec. 3. Our decision did not
`state that the review was suspended, nor did it alter the case schedule in any
`way.3 As explained above, proceeding with trial was consistent with
`§ 317(a). It also was consistent with 37 C.F.R. § 42.74(a), contrary to
`Windy City’s arguments. See Req. Reh’g 8. Rule 42.74(a) provides that
`“the Board is not a party to the settlement and may independently determine
`any question of jurisdiction, patentability, or Office practice.” As explained
`in our decision (1st Term. Dec. 3), this provision indicates that the Board has
`the authority to proceed with the trial—i.e., “independently determine . . .
`patentability”—even when the petitioner has exited the case due to
`settlement. See, e.g., Blackberry Corp. v. MobileMedia Ideas LLC, Case
`IPR2013-00016, slip op. at 2–3 (PTAB Dec. 11, 2013) (Paper 31) (granting
`termination as to all petitioners, but denying termination of the inter partes
`review and instead proceeding without a petitioner).
`
`For the reasons explained above, our decision on May 10, 2017, to
`terminate as to Microsoft, but not the entire proceeding, was consistent with
`the applicable statutory provisions and Board rules. Thus, Windy City has
`not established that we misapprehended the law, or that our decision should
`be modified. Moreover, the Request for Rehearing with respect to this
`decision was not timely filed.
`
`
`
`3 The only changes to the case schedule since our decision on the Joint
`Motion to Terminate were either jointly stipulated by the parties, including
`Windy City (Paper 33), or requested by Windy City (Paper 38).
`
`7
`
`
`
`IPR2016-01141
`Patent 8,458,245 B1
`
`Joinder of Facebook
`B.
`Windy City contends our decision granting Facebook’s joinder motion
`
`was an abuse of discretion because 35 U.S.C. § 315(c) does not “provide
`authority or discretion to join a party to a portion of an inter partes review.”
`Req. Reh’g 9–10. As noted above, however, Windy City did not oppose
`Facebook’s joinder motion. Despite having an opportunity to file an
`opposition, Windy City did not do so, nor did it otherwise present any
`arguments that granting joinder would be improper under § 315(c). We
`could not have misapprehended or overlooked an argument that was never
`made. See 37 C.F.R. § 42.71(d). A request for rehearing cannot be used to
`advance new arguments not previously presented, and Windy City has
`waived this argument as a result. See, e.g., Sophos, Inc. v. Finjan, Inc., Case
`IPR2015-01022, slip op. at 5, 7–10 (PTAB Jan. 28, 2016) (Paper 9)
`(denying a request for rehearing because the arguments had not been
`previously made).
`
`Even were we to consider Windy City’s untimely argument, however,
`Windy City does not demonstrate that our decision was an abuse of
`discretion or inconsistent with applicable law. Section 315(c) states in
`relevant part, “the Director, in his or her discretion, may join as a party [to
`an instituted inter partes review] . . . any person who properly files a petition
`under section 311 that the Director . . . determines warrants the institution of
`an inter partes review.” See also 37 C.F.R. § 42.122 (delegating the
`Director’s authority over requests for joinder to the Board).
`
`According to Windy City, § 315(c) does not “provide authority or
`discretion” to join a party that challenges fewer than all of the claims
`challenged by the original petitioner(s). See Req. Reh’g 9–10. Indeed,
`
`8
`
`
`
`IPR2016-01141
`Patent 8,458,245 B1
`
`Windy City argues that joinder is only permissible in two scenarios:
`(1) “joining a party with an ‘identical petition’ to an instituted review in
`full,” and (2) “allowing a party to present additional validity challenges.”
`Id. at 10–11. Windy City’s position, however, is not supported by the
`relevant authorities.
`
`First, § 315(c) does not recite any limitations on the challenges
`presented by the party seeking joinder. To the contrary, § 315(c) states that
`“any person who properly files a petition under section 311” may be joined,
`requiring only that the petition “warrants the institution of an inter partes
`review.” The statute does not address the specifics of challenged claims,
`asserted grounds of unpatentability, evidence relied upon, etc. Rather, such
`considerations are left to the Director’s “discretion” (and, thus, the Board’s
`discretion by delegation). 35 U.S.C. § 315(c) (stating “the Director, in his or
`her discretion, may join”); 37 C.F.R. § 42.122. Thus, far from failing to
`provide authority or discretion (Req. Reh’g 9–10), § 315(c) expressly
`provides for such discretion.
`
`Second, Windy City’s argument that joinder is only permissible in
`“two scenarios” is not supported by any cited authority. See Req. Reh’g 10–
`11. Windy City relies on the following statement in the legislative history of
`the Leahy-Smith America Invents Act:
`Sections 315(c) and 325(c) allow joinder of inter partes and
`post-grant reviews. The Office anticipates that joinder will be
`allowed as of right—if an inter partes review is instituted on the
`basis of a petition, for example, a party that files an identical
`petition will be joined to that proceeding, and thus allowed to
`file its own briefs and make its own arguments. If a party
`seeking joinder also presents additional challenges to validity
`that satisfy the threshold for instituting a proceeding, the Office
`will either join that party and its new arguments to the existing
`
`9
`
`
`
`IPR2016-01141
`Patent 8,458,245 B1
`
`
`proceeding, or institute a second proceeding for the patent. The
`Director is given discretion, however, over whether to allow
`joinder.
`
`157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl).4
`Although the above statement mentions, “for example,” a circumstance
`where “a party that files an identical petition” or “presents additional
`challenges to validity” (id.), Windy City does not identify any statement in
`the legislative history—or, indeed, any other authority—indicating that these
`examples are the only scenarios in which joinder is permissible. Moreover,
`to the extent that it provides guidance in understanding § 315(c), the above
`statement refutes Windy City’s contention that the Board lacks discretion
`with regard to joinder. Id. (“The Director is given discretion, however, over
`whether to allow joinder.”)
`
`Finally, the two cases cited by Windy City also do not support its
`arguments. First, Windy City cites ZTE Corporation v. Adaptix, Inc., Case
`IPR2015-01184, slip op. 4–7 (PTAB July 24, 2015) (Paper 10), noting that
`the panel denied joinder in that case “even when an otherwise identical
`petition was filed merely because the parties relied on a different expert.”
`Req. Reh’g 11. The decision in ZTE did not, however, hold that the Board
`lacks discretion over joinder or that joinder is impermissible per se if the
`joinder petition is not identical. Rather, the panel in ZTE weighed multiple
`factors, including that joinder in that case would have required the patent
`owner to depose multiple experts and would have raised “new issues” for the
`patent owner to address. ZTE, slip op. at 4–5. In fact, the panel in ZTE
`recognized that “the decision to grant joinder is discretionary.” Id. at 6. We
`
`
`4 Windy City filed a copy of this legislative history, but it was misnumbered
`as Exhibit 2011. Windy City may refile it as Exhibit 2013.
`
`10
`
`
`
`IPR2016-01141
`Patent 8,458,245 B1
`
`note that Windy City does not identify in its Request for Rehearing any error
`in our determination that joinder with the present case would not involve any
`new evidence, or raise new issues or arguments. See Joinder Inst. Dec. 8.
`Windy City also relies on Dell Inc. v. Electronics and
`
`Telecommunications Research Institute, Case IPR2015-00549, slip op. 7–8
`(PTAB Mar. 26, 2015) (Paper 10) (representative). Req. Reh’g 11–12. The
`facts of Dell, however, are very different from those of the present case. In
`Dell, the petitioners sought joinder with an earlier-instituted inter partes
`review, IPR2014-00901, and challenged the same claims on the same
`grounds. Id. at 2–3. The panel held that the petitioners were estopped under
`35 U.S.C. § 315(e)(1) from challenging all but two of the challenged claims
`based on a third, still-earlier inter partes review, IPR2013-00635, in which
`the Board had issued a final written decision. Id. at 4–6. Although the
`petitioners were not estopped from challenging the two remaining claims,
`the panel determined that joinder would “unnecessarily complicate” the
`earlier proceeding, which already had been subject to joinder and already
`had two petitioners, by adding new petitioners challenging a different set of
`claims than the existing petitioners (i.e., a subset), thereby imposing
`additional burdens on the patent owner. Id. at 7–8. Unlike Dell, the 655 IPR
`did not have an existing petitioner challenging a different set of claims
`because Microsoft had been terminated from the case, and joinder did not
`impose additional burdens on Windy City to respond to multiple petitioners
`with different challenges. Moreover, the panel in Dell made clear that its
`denial of joinder was an exercise of discretion based on the facts and
`circumstances of that case. Id. at 7–8. Thus, Windy City’s assertions of
`
`11
`
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`IPR2016-01141
`Patent 8,458,245 B1
`
`inconsistency with Dell are unfounded, and Dell does not support its
`arguments on rehearing.
`
`For the reasons set forth above, we conclude that our decision to join
`Facebook to the present proceeding was consistent with applicable law.
`Moreover, Windy City presents arguments that were not previously made,
`which is improper for a rehearing request.
`
`
`CONCLUSION
`As explained above, Windy City has not identified any matter that we
`
`misapprehended or overlooked, nor has Windy City established that our
`decisions were improper under governing law or an abuse of discretion. See
`37 C.F.R. § 42.71. Therefore, Windy City has not carried its burden to show
`that our decisions should be modified. Id.
`
`
`ORDER
`
`It is
`ORDERED that Windy City’s Request for Rehearing is denied.
`
`
`
`
`
`
`
`
`12
`
`
`
`IPR2016-01141
`Patent 8,458,245 B1
`
`PETITIONER:
`
`Heidi Keefe
`Phillip E. Morton
`Andrew C. Mace
`Mark R. Weinstein
`Daniel J. Knauss
`COOLEY LLP
`hkeefe@cooley.com
`pmorton@cooley.com
`amace@cooley.com
`dknauss@cooley.com
`mweinstein@cooley.com
`
`
`PATENT OWNER:
`
`Peter Lambrianakos
`Vincent Rubino
`BROWN RUDNICK LLP
`plambrianakos@brownrudnick.com
`vrubino@brownrudnick.com
`
`
`
`
`
`
`
`13
`
`
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