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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 MOTION FOR OBSERVATIONS
`ON CROSS-EXAMINATION
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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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`Exhibit #
`2001
`2002
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`2003
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`2004
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`2005
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`2006
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`2007
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`2008
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`2009
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`2010
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`2011
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`2012
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`2013
`2014
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`2015
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`2016
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`IPR2016-01155
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`U.S. Pat. No. 8,694,657
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`Exhibit List
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`Exhibit Name
`Declaration of Chandrajit Bajaj, Ph.D.
`Merriam-Webster’s Collegiate Dictionary, Tenth Edition
`(1994)
`Microsoft Press Computer Dictionary, Third Edition
`(1997)
`Macmillan Encyclopedia of Computers (Gary G. Bitter
`ed., Macmillan Publ. Co. 1992)
`Excerpt from David W. South, The Computer and
`Information Science and Technology Abbreviations and
`Acronyms Dictionary, CRC Press, May 6, 1994
`Declaration of Jaime G. Carbonell, Ph.D.
`Deposition Transcript of Christopher M. Schmandt,
`dated February 22, 2017
`Deposition Transcript of Robert Stein, dated March 1,
`2017
`Deposition Transcript of Judith S. Donath, dated
`February 23, 2017
`IDS filed Jan. 14, 2017 for U.S. Patent Application No.
`14/246,965
`Bob Metcalfe, Predicting the Internet’s catastrophic
`collapse and ghost sites galore in 1996, InfoWorld,
`p.61 (Dec. 4, 1995)
`AOL could strike gold with IM patent, CNN.com. (Dec.
`19, 2002)
`U.S. Patent No. 6,449,344 to Yair Goldfiner et al.
`Decision Denying Institution in IPR2016-01137
`157 Cong. Rec. S1360-02, Proceedings and Debates of
`the 112th Congress, First Session (March 8, 2011)
`Deposition Transcript of Christopher Schmandt, dated
`July 25, 2017
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`IPR2016-01155
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`U.S. Pat. No. 8,694,657
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`Pursuant to the Board’s scheduling order2 (Paper 13), Patent Owner Windy
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`City Innovations LLC respectfully submits this motion for observations on cross-
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`examination of Mr. Christopher Schmandt, whose deposition was taken on July 25,
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`2017.
`
`(1)
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`In exhibit 2015, on page 12, line 12 through page 13, line 15, Mr.
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`Schmandt testifies there is no copyright or publication date on the face of the
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`Sociable Web document (Ex. 1019), that the face of the Sociable Web document
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`included the date January 11, 1998, and that Mr. Schmandt understood that January
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`11, 1998 represented the date of the Sociable Web document’s the earliest archived
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`version. This testimony is relevant to Petitioner’s assertion that the Sociable Web
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`reference was publicly available before April 1, 1996 (Petition, Paper 1 at 17-18).
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`The testimony is relevant because it contradicts Petitioner’s assertion that the
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`Sociable Web is prior art.
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`(2)
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`In exhibit 2015, on page 18, line 16 through page 22, line 24, Mr.
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`Schmandt testifies that Exhibit 1021 indicates that the Sociable Web document
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`(Ex. 1019) was not printed and distributed at the conference. This testimony is
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`relevant to (a) Mr. Schmandt’s prior testimony in the same deposition (Exhibit
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`2015, page 12, line 12 through page 16, line 15) that he based his prior-art opinions
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`on the Sociable Web document itself being printed and published at a 1994
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`2 Due Date 4 remains unaffected by the filing of the parties’ scheduling stipulations and the Board’s revised
`scheduling order in this case.
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`U.S. Pat. No. 8,694,657
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`conference, (b) the Board’s institution decision (Paper 12 at 20-21) where the
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`Board states that the “Sociable Web paper that was presented to conference
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`attendees…in 1994,” and (c) Petitioner’s Reply (Paper 44 at 7-8) in which
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`Petitioner states that copies of the paper were distributed at the conference. The
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`testimony is relevant because it contradicts Mr. Schmandt and Petitioner’s
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`assertions that the Sociable Web paper is prior art, i.e. a “printed publication”
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`having a publication date prior to April 1, 1996. The testimony is also relevant
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`because it contradicts the Board’s understanding that the Sociable Web document
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`itself, not the project or work as a system, was made available to the conference
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`attendees and should be considered prior art.
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`(3)
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`In exhibit 2015, on page 15, line 10 through page 16, line 15, Mr.
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`Schmandt testifies that his opinions on the Sociable Web document’s (Exhibit
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`1019) prior-art status and relevance to this case are based on the advice of legal
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`counsel for Facebook Inc., and that he relied on the opinions of legal counsel. This
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`testimony is relevant to the Petition (Petition, Paper 1 at 17-18) because it
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`contradicts Petitioner’s assertion that the Sociable Web document itself is prior art.
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`(4)
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`In exhibit 2015, on page 65, line 24 through 66 line 12, Mr.
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`Schmandt testifies he has no opinion as to whether the prior art would disclose
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`censorship if the Board adopted Dr. Carbonell’s construction of the censor terms.
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`This testimony is relevant to the Petition (Paper 1 at pp. 27 and 32), Mr.
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`IPR2016-01155
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`U.S. Pat. No. 8,694,657
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`Schmandt’s original declaration (Ex. 1003 at pp. 144), where Petitioner and Mr.
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`Schmandt allege disclosure of the censor limitations only in view of their own
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`construction. The testimony is relevant because, if the Board adopts Patent
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`Owner’s constructions, Mr. Schmandt’s testimony would contradict Petitioner’s
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`assertions that Petitioner disputes whether the prior art discloses the censor
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`limitations.
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`(5)
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`In exhibit 2015, on page 131, line 20 through page 131, line 10, Mr.
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`Schmandt testifies the claimed determination needs to be made as to multiple user
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`identities, i.e. both a first user identity and a second user identity. This testimony
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`is relevant to Mr. Schmandt’s reply declaration (Ex. 1100 at paragraph 26) and
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`Petitioner’s Reply Brief (Paper 44 at 12), in which Mr. Schmandt and Petitioner
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`state that the limitation does not require that this determining step must make a
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`determination of multiple user identities. The testimony is relevant because it
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`contradicts Mr. Schmandt’s testimony and Petitioner’s arguments regarding the
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`limitation “determining whether the first user identity and the second user identity
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`are able to form a group to send and receive real-time communication.”
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`(6)
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`In exhibit 2015, on page 132, line 20 through page 135, line 11, Mr.
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`Schmandt testifies that the determining step is met by whether a note exists and
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`that the only determination made in column 15, lines 27-37 of the Brown reference
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`is whether a user can know that a note exists. This testimony is relevant to Mr.
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`IPR2016-01155
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`U.S. Pat. No. 8,694,657
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`Schmandt’s reply declaration (Ex. 1100 at paragraph 27) and Petitioner’s Reply
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`Brief (Paper 44 at 13-14), in which Mr. Schmandt and Petitioner state that the
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`same section of the Brown references teaches determining whether members of a
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`family are able to form a family group. The testimony is relevant because it
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`contradicts Mr. Schmandt’s testimony and Petitioner’s arguments and calls into
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`question Mr. Schmandt’s credibility in determining the breadth of the claim
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`limitation.
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`(7)
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`In exhibit 2015, on page 135, line 12 through page 137, line 21, Mr.
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`Schmandt testifies he has never read column 31, lines 5-21 of the Brown reference.
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`This testimony is relevant to Mr. Schmandt’s reply declaration (Ex. 1100 at
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`paragraph 28) and Petitioner’s Reply Brief (Paper 44 at 15-16), in which Mr.
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`Schmandt and Petitioner state that the same section of the Brown references
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`teaches determining whether members of a family are able to form a family group.
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`The testimony is relevant because it contradicts Mr. Schmandt’s testimony and
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`Petitioner’s arguments and calls into question Mr. Schmandt’s credibility and the
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`veracity of his declarations.
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`Dated August 2, 2017
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`Respectfully submitted,
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`/Peter Lambrianakos /
`
`Peter Lambrianakos (Reg. No. 58,279)
`Lead Counsel for Patent Owner
`Brown Rudnick LLP
`7 Times Square
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`IPR2016-01155
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`U.S. Pat. No. 8,694,657
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`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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`
`
`A copy of PATENT OWNER’S MOTION FOR OBSERVATIONS
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`ON CROSS-EXAMINATION has been served on Petitioner at the correspondence
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`of the Petitioner as follows:
`
`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
`
`
`
`August 2, 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:
`
`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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