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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 TO EXCLUDE 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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`I.
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`INTRODUCTION
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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 to exclude Petitioner
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`Facebook Inc.’s evidence.
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`II. EX. 1100, REPLY DECLARATION OF CHRISTOPHER
`SCHMANDT
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`Certain portions of the reply declaration of Christopher Schmandt
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`(Ex. 1100), particularly ¶ 21 at lines 4–17, ¶ 21 at lines 17–22, ¶ 22 at lines 1–14, ¶
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`23 at lines 1–7, ¶¶ 26–30, 1100, 1100, ¶ 42 at lines 3–40, ¶¶ 45-51 should be
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`excluded from evidence because the declaration includes evidence that exceeds the
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`proposed scope of a petitioner’s reply. FRE 401, 402, 403, and 37 C.F.R.
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`§ 42.23(b). Pursuant to 37 C.F.R. § 42.23(b), these certain portions of the reply
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`declaration should be excluded because they contain citations, references, and
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`arguments raised for the first time in the reply and they go beyond the permissible
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`scope of a reply. These certain portions are not responsive to Patent Owner’s
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`response and could have been presented in the Petition. Instead, Petitioner used
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`the Board’s institution decision and Patent’s Owner’s responses to perfect its
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`positions by impermissibly pivoting to new arguments, supporting its new
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`arguments with new references and new citations, and ultimately presenting
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`unauthorized grounds for trial. Accordingly, Petitioner’s late inclusion of these
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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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`IPR2016-01155
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`U.S. Pat. No. 8,694,657
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`certain portions is unduly prejudicial to Patent Owner because Patent Owner would
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`have addressed these new citations, references, and arguments in its responses. In
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`addition to excluding the certain sections of the reply declaration identified herein,
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`Patent Owner also respectfully requests that the Board exclude any other sections
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`that impermissibly change the scope of Petitioner’s challenges and/or are not
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`responsive to the Patent Owner’s response.
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`A. THE NEW “OTHER PROGRAMS” ARGUMENTS AND
`SUPPORTING CITATIONS SHOULD BE EXCLUDED FROM
`EVIDENCE.
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`Regarding Exhibit 1100, ¶ 21 at lines 4–17, Petitioner presents new
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`arguments and new citations to the ’356 Patent’s specification supporting what
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`appears to be a new written description or claim construction allegation. Not only
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`do these completely new arguments exceed the scope of the petition, but the new
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`arguments are irrelevant, confusing, and misleading with respect to the instituted
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`grounds authorized for trial. The written-description arguments exceed the
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`statutorily imposed scope of inter partes review proceedings. 37 CFR
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`42.104(b)(2). Additionally, this section amounts to an attempt to construe the
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`“other programs” limitation with new argument not previously presented in the
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`petition. Indeed, Petitioner did not provide a construction for “other programs”
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`and any attempt to do so now would be improper. 37 CFR 42.104(b)(3).
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`Petitioner’s new arguments amount to a drastic departure from its narrowly-
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`IPR2016-01155
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`U.S. Pat. No. 8,694,657
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`tailored arguments in the Petition, which are merely directed to “other programs”
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`being edit, search, lookup commands typed on the controller and executed at the
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`controller computer. Paper 2 at pp. 28-29. None of Petitioner’s new arguments are
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`related to this original argument in the petition. Accordingly, the Board should
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`exclude this narrowly-tailored section from evidence.
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`Regarding Exhibit 1100, ¶ 21 at lines 17–22, ¶ 22 at lines 1–14, and ¶ 23 at
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`lines 1–7, Petitioner presents new arguments to allege the disclosure of the “other
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`programs” limitations. Petitioner supports its new arguments with new citations
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`which are absent, and lack suggestion, from the petition. Particularly, Petitioner
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`attempts to support its new arguments alleging the disclosure of “other programs”
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`at ¶ 21 at lines 17–22 with citations to Ex. 1001 at 8:30-32. Petitioner attempts to
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`support its new arguments alleging the disclosure of “other programs” at Exhibit
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`1100, ¶ 22 at lines 1–17 with citations to Fig. 28, of “other programs” and new
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`citations to Ex. 1001 at 4:55–57, 11:14–59, and Figs. 28–34. Further, Petitioner
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`attempts to support its new arguments alleging the disclosure of “other programs at
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`Exhibit 1100, ¶ 23 at lines 1–10 with new citations to Ex. 1001 at 7:60–61.
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`Petitioner’s new arguments amount to a drastic departure from its narrowly-
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`tailored arguments in the Petition which are merely directed to “other programs”
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`being edit, search, lookup commands typed on the controller and executed at the
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`controller computer. Paper 2 at pp. 28-29. None of Petitioner’s new arguments are
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`IPR2016-01155
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`U.S. Pat. No. 8,694,657
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`related to this original argument in the petition. Accordingly, these narrowly-
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`tailored sections of the reply declaration should be excluded from evidence.
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`B.
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`THE NEW “DETERMINING WHETHER THE FIRST USER
`IDENTITY AND THE SECOND USER IDENTITY ARE ABLE TO
`FORM A GROUP TO SEND AND TO RECEIVE REAL-TIME
`COMMUNICATIONS” ARGUMENTS AND SUPPORTING
`CITATIONS SHOULD BE EXCLUDED FROM EVIDENCE.
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`Regarding Exhibit 1100, ¶¶ 26–30, Petitioner presents new arguments to
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`allege the disclosure of “via the Internet” limitations. Petitioner supports its new
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`arguments with new citations which are absent, and lack suggestion, from the
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`petition. Particularly, Petitioner supports its new arguments with the ’657 patent to
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`Ex. 1001, 7:60-8:4, 8:14-16, 8:57-9:23 and Ex. 1012 at 15:27-37, 31:5-21, 10:36-
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`45 . Petitioner’s new arguments amount to a drastic departure from its narrowly-
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`tailored arguments in the Petition, which are merely directed to (1) tools for
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`“adding, deleting, and modifying chat rooms, (2) joining chat rooms, and (3) a
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`general discussion of access rights, none of which were explained sufficiently to
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`glean any semblance of a determination as to whether multiple identities are able to
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`form a group. Paper 1 at pp. 25-26. Likely identifying these holes, Petitioner and
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`Mr. Schmandt now attempt a drastic departure from the initial challenges. For the
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`first time, Petitioner unilaterally limits the relevant disclosure of the ’657 patent to
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`Ex. 1001, 7:60-8:4, 8:14-16, 8:57-9:23. Constituting new argument, this section
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`amounts to an attempt to construe the terms of the limitation with new positions
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`IPR2016-01155
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`U.S. Pat. No. 8,694,657
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`not previously presented in the petition. Indeed, Petitioner did not provide a
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`construction for this limitation and any attempt to do so now would be improper.
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`37 CFR 42.104(b)(3). Additionally, Petitioner inserts new arguments alleging
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`disclosure of “determining whether the first user identity and the second user
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`identity are able to form a group to send and to receive real-time communications”
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`and new citations to and/or excerpts from Ex. 1012 at 15:27-37, 31:5-21, 10:36-45.
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`Mr. Schmandt’s new arguments improperly expand the scope of Petitioner’s
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`original positions and introduce new challenges unauthorized for trial.
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`Accordingly, these narrowly-tailored sections of the reply declaration should be
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`excluded from evidence.
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`C. THE NEW ARGUMENTS DIRECTED TO THE “API
`MULTIPLEXING AND DEMULTIPLEXING API MESSAGES BY
`TYPE, CREATING A VIRTUAL CONNECTION” LIMITATIONS
`AND SUPPORTING CITATIONS SHOULD BE EXCLUDED FROM
`EVIDENCE.
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`Regarding Exhibit 1100, ¶ 42 at lines 3–40, Petitioner presents new
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`arguments to allege the disclosure of “the API multiplexing and demultiplexing
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`API messages by type, creating a virtual connection” limitations. Petitioner
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`supports its new arguments with new citations which are absent, and lack
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`suggestion, from the Petition. For the first time in this case, Petitioner asserts that
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`Choquier discloses and/or suggests this limitation and supports its new argument
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`with new citations to and/or excerpts from Ex. 1010. Petitioner’s new arguments
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`IPR2016-01155
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`U.S. Pat. No. 8,694,657
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`amount to a drastic departure from its narrowly-tailored arguments in the Petition,
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`which are merely directed to “the API multiplexing and demultiplexing API
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`messages by type, creating a virtual connection” being suggested the Major BBS
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`reference only will be slated for release at a later date (Ex. 1014 at p. 6). Paper 2 at
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`pp. 38-42. Mr. Schmandt’s new arguments about a Choquier combination
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`improperly expand the scope of Petitioner’s original positions and introduce new
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`challenges unauthorized for trial. Accordingly, these narrowly-tailored sections of
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`the reply declaration should be excluded from evidence.
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`D. THE NEW “COMMUNICATING VIA AN INTERNET NETWORK”
`ARGUMENTS BASED ON THE NEW CHOQUIER REFERENCE.
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`Regarding Exhibit 1100, ¶ 46, Petitioner presents new arguments based on a
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`brand new reference to allege a teaching of “communicating via an Internet
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`network” and to bolster its motivation to combine the Brown and the Sociable Web
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`references to suggest the Internet limitations. Petitioner presents the teachings of
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`Choqiuer (Ex. 1022) for the first time in this case, based on the impermissible
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`ground that Brown “cites” Choquier. Indeed, the Petition lacks argument
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`referencing Choquier and Choquier was not presented in any of the authorized
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`grounds for trial. Brown does not incorporate Choquier by reference. Brown at
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`col. 1, lines 1-27. Accordingly, Petitioner’s inclusion of Choquier at this late stage
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`amounts to an egregious overstep and any Choquier-based arguments should be
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`excluded from evidence.
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`E.
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`IPR2016-01155
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`U.S. Pat. No. 8,694,657
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`THE NEW “MOTIVATION TO COMBINE THE TEACHINGS OF
`BROWN AND SOCIABLE WEB”
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`Regarding Exhibit 1100, ¶¶ 45-51, Petitioner presents new arguments to
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`impermissibly bolster its combination of the Brown and Sociable Web references.
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`With respect to “communicating via an Internet network,” the extent of Petitioner’s
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`allegations were as follows: Brown’s BBS service provided an Internet feed,
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`Brown’s WAN included TCP/IP protocol, Brown WAN included lines by
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`telecommunications providers, Sociable Web included chat over WWW, and the
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`combination of Brown and Sociable Web was obvious because Brown provided a
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`BBS with an application containing a WWW browsing service and Sociable web
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`included chat over WWW. Paper 1 at 19-20. Without saying the word motivation,
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`Petitioner submitted “expand and efficientize online communications” as its
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`reasoning to combine the two references. Id. Now, for the first time in this case,
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`Petitioner alleges new motivations and new citations to and/or excerpts from Ex.
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`1019 at 4 and a figure within ¶ 50. Petitioner presents new allegations that Brown
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`and Sociable Web now together and/or separately each disclose the Internet
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`limitations and attempts to mend their differences with a new combination based
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`on Choquier. Accordingly, Petitioner’s Exhibit 1100, ¶¶ 45-51 should be excluded
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`from evidence.
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`III. CONCLUSION.
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`For at least the reasons presented herein, Patent Owner respectfully requests
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`IPR2016-01155
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`U.S. Pat. No. 8,694,657
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`exclusion of ¶ 21 at lines 4–17, ¶ 21 at lines 17–22, ¶ 22 at lines 1–14, ¶ 23 at lines
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`1–7, ¶¶ 26–30, 1100, 1100, ¶ 42 at lines 3–40, ¶¶ 45-51 of the reply declaration of
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`Christopher Schmandt (Ex. 1100) from the evidentiary record. Patent Owner also
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`respectfully requests that the Board exercise its discretion to exclude any other
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`sections that it deems impermissibly change the scope of Petitioner’s authorized
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`grounds for trial and/or are not responsive to the Patent Owner’s response
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`Dated August 2, 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 MOTION TO EXCLUDE EVIDENCE has
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`been served on Petitioner at the correspondence of the 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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`August 2, 2017
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`
`
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`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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