`
`Entered: June 7, 2017
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC.,
`Petitioner,
`
`v.
`
`WINDY CITY INNOVATIONS LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01067 (Patent 8,407,356 B1)1
`Case IPR2016-01141 (Patent 8,458,245 B1)2
`Case IPR2016-01155 (Patent 8,694,657 B1)3
`____________
`
`
`Before KARL D. EASTHOM, DAVID C. McKONE, and J. JOHN LEE,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`DECISION
`Motion to Terminate
`37 C.F.R. § 42.74
`
`
`
`
`
`1 Case IPR2017-00624 has been joined with IPR2016-01067.
`2 Case IPR2017-00655 has been joined with IPR2016-01141.
`3 Case IPR2017-00622 has been joined with IPR2016-01155.
`
`
`
`
`
`
`IPR2016-01067 (Patent 8,407,356 B1)
`IPR2016-01141 (Patent 8,458,245 B1)
`IPR2016-01155 (Patent 8,694,657 B1)
`
`
`Microsoft Corporation (“Microsoft”) initiated each of the above-
`captioned cases. See, e.g., Paper 2 (original petition filed by Microsoft).4
`Following institution of trial in these cases, Facebook, Inc. (“Facebook” or
`“Petitioner”) filed petitions in IPR2017-00622, IPR2017-00624, and
`IPR2017-00655, with accompanying motions for joinder to the above-
`captioned cases. See, e.g., Paper 33, 2. After Facebook filed its motions for
`joinder, Microsoft and Patent Owner, Windy City Innovations LLC, reached
`a settlement agreement and filed a Joint Motion to Terminate Proceeding in
`each of the present cases (“Motions to Terminate”). See, e.g., Paper 30. On
`May 10, 2017, we granted the Motions to Terminate but only as to
`Microsoft; we exercised our discretion under 35 U.S.C. § 317(a) and
`37 C.F.R. § 42.74(a) to hold in abeyance our ruling on the Motions as to
`Patent Owner and each proceeding as a whole in light of Facebook’s
`pending joinder motions. E.g., Paper 32, 3. Ultimately, we granted the
`joinder motions and joined Facebook to the above-captioned cases. E.g.,
`Paper 33. As a result, Facebook is now the sole Petitioner in each
`proceeding. See, e.g., id. at 9.
`We now return to the Motions to Terminate. As we have previously
`recognized, 35 U.S.C. § 317(a) provides that “[a]n 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” (emphases added). Pursuant to § 317(a), the present
`
`4 All citations herein are to IPR2016-01067. Similar filings were made in all
`of the above-captioned cases.
`
`2
`
`
`
`IPR2016-01067 (Patent 8,407,356 B1)
`IPR2016-01141 (Patent 8,458,245 B1)
`IPR2016-01155 (Patent 8,694,657 B1)
`
`inter partes reviews have been terminated with respect to then-petitioner
`Microsoft upon the joint request of Microsoft and Patent Owner. The
`current Petitioner (Facebook), however, has not requested termination. In
`light of the fact that an active petitioner remains in each of these cases, we
`determine that termination of these proceedings is not warranted. Therefore,
`the Motions to Terminate are denied as to Patent Owner, and, as a result,
`each proceeding as a whole will not be terminated at this juncture.
`
`
`ORDER
`
`It is
`ORDERED that the Motions to Terminate are denied as to Patent
`Owner, and each proceeding as a whole is not terminated at this time.
`
`3
`
`
`
`IPR2016-01067 (Patent 8,407,356 B1)
`IPR2016-01141 (Patent 8,458,245 B1)
`IPR2016-01155 (Patent 8,694,657 B1)
`
`
`PATENT OWNER:
`
`Peter Lambrianakos
`Vincent J. Rubino, III
`Alfred R. Fabricant
`BROWN RUDNICK LLP
`plambrianakos@brownrudnick.com
`vrubino@brownrudnick.com
`afabricant@brownrudnick.com
`
`
`4
`
`
`
`
`
`PETITIONER:
`
`Heidi L. Keefe
`Phillip E. Morton
`Andrew C. Mace
`COOLEY LLP
`hkeefe@cooley.com
`pmorton@cooley.com
`amace@cooley.com
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
