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`IPR2016-01155
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`U.S. Pat. No. 8,694,657
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
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`FACEBOOK INC.
`Petitioner
`v.
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`WINDY CITY INNOVATIONS, LLC
`Patent Owner
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`U.S. Pat. No. 8,694,657
`Issue Date: April 8, 2014
`Title: REAL TIME COMMUNICATIONS SYSTEM
`__________________________________________________________________
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`PATENT OWNER’S OBJECTIONS TO
`PETITIONER’S REPLY EVIDENCE
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`Case No. IPR2016-011551
`__________________________________________________________________
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`1 Case IPR2017-00622 has been joined to this proceeding.
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`IPR2016-01155
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`U.S. Pat. No. 8,694,657
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`Pursuant to 37 C.F.R. § 42.64(b)(1), Patent Owner Windy City Innovations
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`LLC objects to the admissibility of the following evidence submitted by Petitioner
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`Facebook Inc. on July 13, 2017 with its Petitioner’s Reply. These objections are
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`timely as filed within five business days of service of the evidence. Patent Owner
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`objects to the evidence as follows:
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`Ex. 1100, Reply Declaration of Christopher Schmandt
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`Patent Owner objects to this exhibit to the extent the Declaration relies on
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`Exhibits 1102, 1103, and 1104 because they are inadmissible as discussed herein.
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`FRE 401, 402, 403, 801, 802, 901, 902, 1001, 1002, 1003, and 1004. Patent
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`Owner further objects to this exhibit to the extent the Declaration relies on exhibits
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`having outstanding objections which were served on December 22, 2016. For the
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`purposes of objecting to this exhibit, the objections served on December 22, 2016
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`are incorporated by reference.
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`Patent Owner objects to this exhibit as containing inadmissible hearsay that
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`does not fall under any exception. FRE 801, 802, 803, 804, 805, 807. To the
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`extent Petitioner relies on the contents of this exhibit for the truth of the matter
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`asserted, Patent Owner objects to such contents as inadmissible hearsay. To the
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`extent Petitioner relies on the exhibits cited therein (e.g., Exhibits 1102, 1103, and
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`1104) for the truth of the matter asserted, Patent Owner objects to such contents as
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`inadmissible hearsay under FRE 801 and 802.
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`IPR2016-01155
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`U.S. Pat. No. 8,694,657
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` Exhibit 1100, ¶ 21 at lines 4–17, regarding new arguments and new
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`citations to the ’356 specification supporting what appears to be a new
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`written description allegation.
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` Exhibit 1100, ¶ 21 at lines 17–22, regarding new arguments alleging
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`disclosure of “other programs” by a controller computer and new
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`citations to Ex. 1001 at 5:37-40, 7:31-36, 8:1-3, 8:37-38, 10:36-43,
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`and Fig. 2 in support thereof.
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` Exhibit 1100, ¶ 22 at lines 1–17 including Fig. 28, regarding new
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`arguments alleging disclosure of “other programs” and new citations
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`to Ex. 1001 at 10:54-11:31, and Figs. 28–34.
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` Exhibit 1100, ¶ 23 at lines 1–10, regarding new arguments alleging
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`disclosure of “other programs” and new citations to Ex. 1001 at 7:32-
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`36.
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` Exhibit 1100, ¶¶ 26–30, newly and unilaterally limiting the relevant
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`disclosure of the ’657 patent to Ex. 1001, 7:60-8:4, 8:14-16, 8:57-9:23
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`and inserting new arguments alleging disclosure of “determing
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`whether the first user identity and the second user identity are able to
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`form a group to send and to receive real-time communications” and
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`new citations to and/or excerpts from Ex. 1012 at 15:27-37, 31:5-21,
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`10:36-45.
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`IPR2016-01155
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`U.S. Pat. No. 8,694,657
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` Exhibit 1100, ¶ 33, regarding new arguments alleging the motivation
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`“to use” and new citations to and/or excerpts from Ex. 1012, 7:4-6.
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` Exhibit 1100, ¶ 46, regarding new arguments alleging motivation and
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`the disclosure of Internet by a document (Choquier) which was not
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`previously presented as prior art and new citations to and/or excerpts
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`from Ex. 1022.
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` Exhibit 1100, ¶¶ 49-50, regarding new arguments alleging motivation
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`and new citations to and/or excerpts from Ex. 1019 at 4 and a figure
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`within ¶ 50.
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`Ex. 1102, Excerpts from Henry Korth, et al., Database Systems Concepts
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`(1991)
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`Patent Owner objects to this exhibit as inadmissible hearsay because it
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`includes out of court statements offered for their truth and does not fall within any
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`exception to the rule against hearsay. FRE 801, 802. To the extent that the
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`authors(s) of the underlying document comment on the perception of others, the
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`exhibit is objected to as inadmissible hearsay. FRE 801, 802. The document
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`purports to be a copy of a publication and the purported authors of the publication
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`are not under oath and are not subject to cross-examination in this proceeding.
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`IPR2016-01155
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`U.S. Pat. No. 8,694,657
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`Patent Owner objects to this exhibit as irrelevant, confusing the issues,
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`misleading to the fact-finders, and unfairly prejudicial. FRE 401, 402, and 403.
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`Patent Owner objects to this exhibit as incomplete. Petitioner’s excerpt omits
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`portions which could contain contradictory disclosures.
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`Patent Owner objects to this exhibit as not properly authenticated and not
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`self-authenticating. FRE 901, 902. Patent Owner objects to this exhibit as not
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`properly authenticated because the document is not accompanied by any evidence
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`that the document is authentic. FRE 901. Patent Owner objects to this exhibit as
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`not self-authenticating . FRE 902. Patent Owner objects to this exhibit as not
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`being an original document, an authentic duplicate, or a document excepted from
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`the original document requirement. FRE 1001, 1002, 1003, 1004. To the extent
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`Petitioner relies on the contents of this exhibit to prove the content of the original
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`document, Patent Owner objects to the exhibit as not being the original or an
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`admissible duplicate. The document is not an original document, nor does any
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`statute obviate requirement of the original document. FRE 1002. Even if the
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`Board deems a duplicate of the document to be admissible, which it is not, this
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`document is not a certified copy and genuine issues exist concerning the origin
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`and/or authenticity of this document. FRE 1003. Given the circumstances, this
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`exhibit is not excused from the original document requirement. FRE 1004.
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`Ex. 1103, Excerpts from IEEE Internet Computer, “Bob Metcalfe on
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`IPR2016-01155
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`U.S. Pat. No. 8,694,657
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`What’s Wrong with the Internet: It’s the Economy, Stupid” (March/April
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`1997)
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`Patent Owner objects to this exhibit as inadmissible hearsay because it
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`includes out of court statements offered for their truth and does not fall within any
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`exception to the rule against hearsay. FRE 801, 802. To the extent that the
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`authors(s) of the underlying document comment on the perception of others, the
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`exhibit is objected to as inadmissible hearsay. FRE 801, 802. The document
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`purports to be a copy of a publication and the purported authors of the publication
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`are not under oath and are not subject to cross-examination in this proceeding.
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`Patent Owner objects to this exhibit as irrelevant, confusing the issues,
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`misleading to the fact-finders, and unfairly prejudicial. FRE 401, 402, and 403.
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`Patent Owner objects to this exhibit as not properly authenticated and not
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`self-authenticating. FRE 901, 902. Patent Owner objects to this exhibit as not
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`properly authenticated because the document is not accompanied by any evidence
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`that the document is authentic. FRE 901. Patent Owner objects to this exhibit as
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`not self-authenticating . FRE 902. Patent Owner objects to this exhibit as not
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`being an original document, an authentic duplicate, or a document excepted from
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`the original document requirement. FRE 1001, 1002, 1003, 1004. To the extent
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`Petitioner relies on the contents of this exhibit to prove the content of the original
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`document, Patent Owner objects to the exhibit as not being the original or an
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`IPR2016-01155
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`U.S. Pat. No. 8,694,657
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`admissible duplicate. The document is not an original document, nor does any
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`statute obviate requirement of the original document. FRE 1002. Even if the
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`Board deems a duplicate of the document to be admissible, which it is not, this
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`document is not a certified copy and genuine issues exist concerning the origin
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`and/or authenticity of this document. FRE 1003. Given the circumstances, this
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`exhibit is not excused from the original document requirement. FRE 1004.
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`Ex. 1104, Reuters article entitled “Sage who warned of Net’s collapse
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`eats his words (April 11, 1997)
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`Patent Owner objects to this exhibit as inadmissible hearsay because it
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`includes out of court statements offered for their truth and does not fall within any
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`exception to the rule against hearsay. FRE 801, 802. To the extent that the
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`authors(s) of the underlying document comment on the perception of others, the
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`exhibit is objected to as inadmissible hearsay. FRE 801, 802. The document
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`purports to be a copy of a publication and the purported authors of the publication
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`are not under oath and are not subject to cross-examination in this proceeding.
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`Patent Owner objects to this exhibit as irrelevant, confusing the issues,
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`misleading to the fact-finders, and unfairly prejudicial. FRE 401, 402, and 403.
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`Patent Owner objects to this exhibit as not properly authenticated and not
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`self-authenticating. FRE 901, 902. Patent Owner objects to this exhibit as not
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`IPR2016-01155
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`U.S. Pat. No. 8,694,657
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`properly authenticated because the document is not accompanied by any evidence
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`that the document is authentic. FRE 901. Patent Owner objects to this exhibit as
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`not self-authenticating . FRE 902. Patent Owner objects to this exhibit as not
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`being an original document, an authentic duplicate, or a document excepted from
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`the original document requirement. FRE 1001, 1002, 1003, 1004. To the extent
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`Petitioner relies on the contents of this exhibit to prove the content of the original
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`document, Patent Owner objects to the exhibit as not being the original or an
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`admissible duplicate. The document is not an original document, nor does any
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`statute obviate requirement of the original document. FRE 1002. Even if the
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`Board deems a duplicate of the document to be admissible, which it is not, this
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`document is not a certified copy and genuine issues exist concerning the origin
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`and/or authenticity of this document. FRE 1003. Given the circumstances, this
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`exhibit is not excused from the original document requirement. FRE 1004.
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`Dated July 20, 2017
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`Respectfully submitted,
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`/Peter Lambrianakos /
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`Peter Lambrianakos (Reg. No. 58,279)
`Lead Counsel for Patent Owner
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Tel: 212-209-4800
`Fax: 212-209-4801
`Email: plambrianakos@brownrudnick.com
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`IPR2016-01155
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`U.S. Pat. No. 8,694,657
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`CERTIFICATE OF SERVICE
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`
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`A copy of PATENT OWNER’S OBJECTIONS TO PETITIONER’S
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`REPLY EVIDENCE has been served on Petitioner at the correspondence of the
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`Petitioner as follows:
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`By Email:
`
`Heidi L. Keefe (Reg. No. 40,673)
`hkeefe@cooley.com
`zpatdcdocketing@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`
`By Email:
`
`Andrew C. Mace (Reg. No. 63,342)
`amace@cooley.com
`zpatdcdocketing@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
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`
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`July 20, 2017
`
`
`
`
`By Email:
`
`Phillip E. Morton (Reg. No. 57,835)
`pmorton@cooley.com
`zpatdcdocketing@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington D.C. 20004
`
`By Email:
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`Daniel J. Knauss (Reg. No. 56,393)
`dknauss@cooley.com
`zpatdcdocketing@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`
` /Peter Lambrianakos/
`
`
`Peter Lambrianakos (Reg. No. 58,279)
`Lead Counsel for Patent Owner
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Tel: 212-209-4800
`Fax: 212-209-4801
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`By:
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