Atty Docket No. FABO-041/01US
`(309101-2163)
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`IPR2016-01155
`U.S. Patent 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
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`v.
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`WINDY CITY INNOVATIONS, LLC
`Patent Owner
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`Case No. IPR2016-011551
`Patent No. 8,694,657
`__________________
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`PETITIONER’S OPPOSITION TO MOTION TO EXCLUDE EVIDENCE
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`1 Case IPR2017-00622 has been joined with this proceeding.
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`(309101-2163)
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`IPR2016-01155
`U.S. Patent 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
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`v.
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`WINDY CITY INNOVATIONS, LLC
`Patent Owner
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`
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`Case No. IPR2016-011551
`Patent No. 8,694,657
`__________________
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`PETITIONER’S OPPOSITION TO MOTION TO EXCLUDE EVIDENCE
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`
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`1 Case IPR2017-00622 has been joined with this proceeding.
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`Atty Docket No. FABO-041/01US
`(309101-2163)
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`IPR2016-01155
`U.S. Patent No. 8,694,657
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`Table of Contents
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`Page
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`PATENT OWNER’S MOTION IS IMPROPER ........................................... 1
`I.
`II. MR. SCHMANDT’S REPLY TESTIMONY IS PROPERLY
`WITHIN THE SCOPE PERMITTED BY RULE 42.23(B) .......................... 3
`A. Mr. Schmandt’s Reply Testimony Regarding the “other
`programs” Claim Limitations Is Proper ............................................... 3
`B. Mr. Schmandt’s Reply Testimony Regarding the “determining
`whether the first user identity and the second user identity are
`able to form a group” Claim Limitations Is Proper ............................. 5
`Section II-C of Patent Owner’s Motion Was Apparently
`Erroneously Copied from its Motion in IPR2016-01067 and
`Has No Application Here ..................................................................... 7
`D. Mr. Schmandt’s Reply Testimony Regarding “Communicating
`via an Internet Network” and Discussing the Choquier
`Reference Is Proper .............................................................................. 8
`E. Mr. Schmandt’s Reply Testimony Regarding Motivation to
`Combine the Teachings of Brown and Sociable Web Is Proper .......... 9
`III. CONCLUSION ............................................................................................. 10
`
`C.
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`i
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`Atty Docket No. FABO-041/01US
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`IPR2016-01155
`U.S. Patent No. 8,694,657
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`Patent Owner’s motion to exclude reply testimony of Christopher Schmandt
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`is improper procedurally and unfounded in substance. Scores of Board panels have
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`consistently held that a motion to exclude evidence is not the correct procedure to
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`challenge reply testimony as allegedly exceeding the permitted scope of 37 C.F.R.
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`42.23(b). For this reason alone, Patent Owner’s improper motion should be denied
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`it is entirety. Even if considered, however, the motion rests on faulty grounds. Every
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`portion of testimony to which Patent Owner objects is in fact directly responsive to
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`arguments and opinions newly raised by Patent Owner and its expert, Dr. Carbonell.
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`I.
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`PATENT OWNER’S MOTION IS IMPROPER
`The Board has repeatedly explained that a motion to exclude is not the proper
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`vehicle to complain that arguments and supporting evidence are outside the proper
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`scope of a reply. See, e.g., Palo Alto Networks, Inc. v. Finjan, Inc., No. IPR2016-
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`00151, Paper 51 at 23 (P.T.A.B. Mar. 15, 2017) (“[W]e have stated repeatedly that
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`a motion to exclude is not a vehicle for arguing that Petitioner's arguments and
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`supporting evidence are outside the proper scope of a reply.”); South-Tek Sys., LLC
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`v. Engineered Corrosion Sols., LLC, No. IPR2016-00136, Paper 52 at 8 (P.T.A.B.
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`May 10, 2017) (“A motion to strike or a motion to exclude is not the proper
`
`mechanism for raising the issue of whether a reply or reply evidence is beyond the
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`proper scope.”); Canon Inc., et al. v. Papst Licensing GmbH & Co. KG, No.
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`IPR2016-01211, Paper 25 at 2, (P.T.A.B. Aug. 2, 2017) (“[A] motion to exclude is
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`1
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`not a proper mechanism to present argument that a reply and evidence filed in
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`support of the reply are outside the scope of a proper reply under 37 C.F.R. §
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`42.23(b)”); Blackberry Corp. v. Zipit Wireless, Inc., No. IPR2014-01508, Paper 49
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`at 40 (P.T.A.B. Mar. 29, 2016); Facebook, Inc. et. al v. Software Rights Archive,
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`LLC, No. IPR2013-00478, Paper 58 at 37-38 (P.T.A.B. Feb. 2, 2015).
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`A motion to exclude should be directed to the admissibility of evidence under
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`the Federal Rules of Evidence or other law governing the admissibly of evidence,
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`and not issues relating to the timing or scope of that evidence. Vibrant Media v.
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`Gen. Elec. Co., No. IPR2013-00172, Final Written Decision, Paper 50 at
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`41(P.T.A.B. July 28, 2014), citing 37 C.F.R. § 42.64(c) and Office Patent Trial
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`Practice Guide, 77 Fed. Reg. at 48,767; Canon, No. IPR2016-01211, Paper 25 at 2
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`(Aug. 2, 2017). Tellingly, Patent Owner failed to cite a single supportive authority
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`in its effort to use the rules of evidence to object to the scope of Mr. Schmandt’s
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`reply testimony.
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`Furthermore, Patent Owner’s motion should be denied because the Board has
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`found it within its own discretion to determine if any evidence exceeds the proper
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`scope of reply. See, e.g., Canon, No. IPR2016-01211, Paper 25 at 2 (Aug. 2, 2017).
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`As the Board has explained, because it sits “as a non-jury tribunal with
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`administrative expertise, [it] is well-positioned to determine and assign appropriate
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`weight to evidence presented.” Liberty Mut. Ins. v. Progressive Casualty Insurance
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`2
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`Atty Docket No. FABO-041/01US
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`IPR2016-01155
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`Co., No. CBM2012-00002, Paper 66 at 70 (P.T.A.B. Jan. 23, 2014); see also Sony
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`Computer Entm’t Am. LLC v. Game Controller Tech. LLC, No. IPR2013-00634,
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`Paper 32 at 32 (P.T.A.B. Apr. 14, 2015). As further explained below, each item of
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`Mr. Schmandt’s declaration that Patent Owner objects to is properly within the
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`permitted scope of reply testimony.
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`II. MR. SCHMANDT’S REPLY TESTIMONY IS PROPERLY WITHIN THE SCOPE
`PERMITTED BY RULE 42.23(B)
`A reply may “respond to arguments raised in the corresponding opposition,
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`patent owner preliminary response, or patent owner response.” 37 C.F.R. § 42.23(b).
`
`All of Mr. Schmandt’s reply testimony properly responds to arguments raised in
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`Patent Owner’s response, and is also well-grounded in his original testimony
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`A. Mr. Schmandt’s Reply Testimony Regarding the “other programs”
`Claim Limitations Is Proper
`Regarding Exhibit 1100, ¶ 21 at lines 4–17, Patent Owner mischaracterizes
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`the scope of Petitioner’s and Mr. Schmandt’s original arguments presented with the
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`Petition. Contrary to Patent Owner’s myopic view of the Petition, these originally-
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`presented arguments were not limited to “edit, search, lookup commands typed on
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`the controller and executed on the controller computer.” (See Mot. at 3; cf. Pet. at
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`20-22.)2 Nor was Mr. Schmandt’s opening testimony limited to programs operating
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`2 Indeed, it appears that Patent Owner copied Section II-A of its motion from its
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`3
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`on the controller computer as Patent Owner contends. (See Mot. at 3.) As Mr.
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`Schmandt explained in his original declaration, the “other programs” are disclosed
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`by the cited Brown prior art in the context of both controller computer and
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`participator computer programs. (See Ex. 1003, ¶¶ 179-188, 263-264, 306-307.)
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`Indeed, Patent Owner’s motion contradicts its Patent Owner Response (“POR”),
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`which focused exclusively on Mr. Schmandt’s opinions concerning disclosure of the
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`“other programs” on the participator computers running telnet programs. (See POR
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`at 20-22.)
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`Patent Owner’s related contention that Mr. Schmandt’s testimony amounts to
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`“a new written description or claim construction” argument is also meritless. (See
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`Mot. at 2.) To the contrary, Petitioner and Mr. Schmandt do not propose to construe
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`the term “other programs,” and Mr. Schmandt’s cited opinions directly respond to
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`Dr. Carbonell’s effort to narrowly limit the meaning of “other programs” in a manner
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`motion to exclude in IPR2016-01067, even though the prior art cited in that case is
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`Major BBS and the other Galacticomm References, while in this case the relevant
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`prior art is the Brown patent. (See IPR2016-01067, Paper 53 at 2-3.) Petitioner has
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`responded to the best of its ability despite Patent Owner’s apparent error, and
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`reserves the right to object to, and seek to strike, any attempt by Patent Owner to
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`cure this apparent defect through a reply brief.
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`4
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`IPR2016-01155
`U.S. Patent No. 8,694,657
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`that is contradicted by the specification. (See Ex. 1100, ¶ 21-22.) These arguments
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`could not have been presented sooner because it was not until Dr. Carbonell’s
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`declaration that Patent Owner’s unduly narrow reading of the challenged claims
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`became apparent. See, e.g., Vibrant Media, Inc. v. Gen’l Elec. Co., IPR2013-00172,
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`Paper 50 at 41 (“The very nature of a reply is to respond to the Opposition, which in
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`this case is the Patent Owner Response…. The need for relying on evidence not
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`previously discussed in the Petition may not exist until a certain point has been raised
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`in the Patent Owner Response.”).
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`Regarding Exhibit 1100, ¶ 21 at lines 17–22, ¶ 22 at lines 1–17, and ¶ 23 at
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`lines 1–10, Mr. Schmandt’s testimony is directly responsive to Dr. Carbonell’s
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`argument that telnet programs on the participator computers could not qualify as the
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`“other programs” of the challenged claims. (See Ex. 1100, ¶ 21 (expressly and
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`directly responding to Dr. Carbonell’s opinions in ¶ 34 of Ex. 2006).) Mr.
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`Schmandt’s responsive testimony points out that the specification provides extensive
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`disclosure of a telnet embodiment, contradicting Dr. Carbonell’s arguments that
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`telnet could not serve as the “other programs” of the challenged claims. (See id. at
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`¶¶ 21-22.)
`
`B. Mr. Schmandt’s Reply Testimony Regarding the “determining
`whether the first user identity and the second user identity are able
`to form a group” Claim Limitations Is Proper
`Regarding Ex. 1100, ¶¶ 26-30, as a threshold matter Patent Owner waived any
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`5
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`Atty Docket No. FABO-041/01US
`(309101-2163)
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`IPR2016-01155
`U.S. Patent No. 8,694,657
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`objection because it failed to object to the testimony with “sufficient particularity,”
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`as required by 37 C.F.R. § 42.64(b)(1), instead submitting a blanket objection to five
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`full paragraphs of Mr. Schmandt’s reply declaration. The objection also failed to
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`explain, as is required, where in the record this evidence was relied on. Such vague
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`and ambiguous objections fail to comply with the requirements of 37 C.F.R. §
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`42.64(b)(1), which requires objection with “sufficient particularity.” See, e.g.,
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`Corning Inc. v. DSM IP Assets B.V., IPR2013-00050, Paper 77 at 50.
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`Even if considered, this section of Mr. Schmandt’s reply declaration is
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`properly responsive to Dr. Carbonell’s arguments.3 Patent Owner’s motion
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`mischaracterizes the scope of the arguments raised in the Petition, which explained
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`in detail how the system described in Brown discloses determination of the ability
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`of a first and second user identity to form a group. (See Mot. at 4-5; cf. Pet. at 25-
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`26, Ex. 1003, ¶¶ 211-219.) Patent Owner complains that Mr. Schmandt’s reply
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`declaration amounts to a new “attempt to construe the terms,” but this is not so. (See
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`Mot. at 4-5.) To the contrary, Mr. Schmandt’s testimony merely discusses the plain
`
`
`3 Apparently copying from its motion to exclude in IPR2016-01067, Patent owner
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`refers to the cited paragraphs of Mr. Schmandt’s reply declaration as pertaining to
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`“‘via the Internet’ limitations.” (See Mot. at 4.) The cited paragraphs, however,
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`refer only to the claim limitation noted in the heading to this section.
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`6
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`Atty Docket No. FABO-041/01US
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`IPR2016-01155
`U.S. Patent No. 8,694,657
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`claim language, which Petitioner does not propose to construe, in a direct response
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`to the new effort by Dr. Carbonell to limit the scope of the claims contrary to the
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`teachings of the specification. (See Ex. 1100, ¶ 26, expressly citing and responding
`
`to Ex. 2006, ¶ 42.)
`
`Moreover, the specific citations of Brown that Patent Owner complains about
`
`– Ex. 1012 at 15:27-37, 31:5-21, and 10:36-45 – are entirely proper. First, the
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`Petition cited and discussed these same passages for the same limitation (the
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`“determining” step). (See Ex. 1003, ¶ 212 (citing 15:27-37 and 31:1-21) and ¶ 218
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`(citing 10:36-45).) Second, Mr. Schmandt cites these disclosures in testimony that
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`directly responds to Dr. Carbonell’s allegation that Brown does not disclose that
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`more than one user identity is involved in the group determination steps disclosed in
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`Brown. (See Ex. 1100, ¶¶ 26-28, expressly citing and responding to Ex. 2006, ¶ 42.)
`
`The cited paragraphs of Mr. Schmandt’s reply thus do not go beyond a direct
`
`response to the newly–raised arguments in Patent Owner’s Response, which (as was
`
`noted in the Reply) contains sections of garbled and unintelligible text. (See Reply
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`(Paper 44) at 16-17.)
`
`C.
`
`Section II-C of Patent Owner’s Motion Was Apparently
`Erroneously Copied from its Motion in IPR2016-01067 and Has No
`Application Here
`The entirety of Section II-C of Patent Owner’s motion is apparently another
`
`example of copying from its motion to exclude filed in IPR2016-01067. (See Mot.
`
`7
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`Atty Docket No. FABO-041/01US
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`IPR2016-01155
`U.S. Patent No. 8,694,657
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`at 5-6.) Patent Owner’s objection focuses on API/multiplexing/demultiplexing
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`claim limitations, but the challenged claims of the ʼ657 patent at issue in this case
`
`do not contain those limitations. Accordingly, Section II-C of Patent Owner’s
`
`motion does not merit a response.
`
`D. Mr. Schmandt’s Reply Testimony Regarding “Communicating via
`an Internet Network” and Discussing the Choquier Reference Is
`Proper
`Regarding Exhibit 1100, ¶ 46, Patent Owner falsely asserts that the Choquier
`
`patent (Ex. 1022) was presented with the reply “for the first time in this case” and
`
`that “the Petition lacks argument referencing Choquier.” (Mot. at 6.) Yet the
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`Petition and Mr. Schmandt’s opening declaration do in fact specifically cite and
`
`discuss Choquier, and explain why it shows that Brown discloses the Internet
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`limitations of the claims. (See Pet. at 20; Ex. 1003, ¶¶ 168-172.) Mr. Schmandt’s
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`reply declaration at ¶ 46 does nothing more than refer back to these original
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`disclosures and note the failure of Patent Owner and Dr. Carbonell to respond to
`
`them. (See Ex. 1100, ¶ 46.)
`
`Indeed, Patent Owner is apparently not familiar with its own filings in this
`
`case, given that its Preliminary Response specifically addressed the Petition’s
`
`reference to the same Choquier reference that Patent Owner now objects to as new.
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`(See Preliminary Response (Paper 9) at 20-21.) Thus Patent Owner’s own
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`submissions contradict the assertions it makes in its motion to exclude.
`
`8
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`Atty Docket No. FABO-041/01US
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`IPR2016-01155
`(309101-2163)
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`U.S. Patent No. 8,694,657
`E. Mr. Schmandt’s Reply Testimony Regarding Motivation to
`Combine the Teachings of Brown and Sociable Web Is Proper
`Regarding Exhibit 1100, ¶¶ 45-51, Patent Owner’s blanket objection to seven
`
`full paragraphs of Mr. Schmandt’s declaration lacks the required particularity and is
`
`therefore waived. (See Section II-B, supra.)
`
`Even if considered, Patent Owner’s arguments are meritless. Patent Owner
`
`focuses on alleged deficiencies in the Petition, finding fault in the omission of the
`
`specific word “motivation” in the discussion of why one of skill in the art would
`
`have combined the teachings of the Brown and Sociable Web references. (See Mot.
`
`at 7; cf. Pet. at 19-20.) Patent Owner’s motion completely ignores the testimony
`
`provided by Mr. Schmandt in his opening declaration (and cited in the Petition),
`
`which provided detailed discussion concerning motivation to combine that spans
`
`three full paragraphs, and supports the arguments in the Petition regarding
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`combinability of the references. (See Ex. 1003, ¶¶ 165-167.)
`
`Furthermore, Mr. Schmandt’s testimony is directly responsive to Dr.
`
`Carbonell’s specific arguments concerning alleged non-combinability of the two
`
`references, which were presented for the first time in Dr. Carbonell’s declaration
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`accompanying the Patent Owner Response. See Vibrant Media, IPR2013-00172,
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`Paper 50 at 41. Patent Owner alleges that Mr. Schmandt’s reply introduced “new
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`citations” from Sociable Web (Mot. at 7.), but in fact these disclosures were
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`discussed in detail in Mr. Schmandt’s opening declaration. (See Ex. 1003, ¶ 249-
`9
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`Atty Docket No. FABO-041/01US
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`IPR2016-01155
`U.S. Patent No. 8,694,657
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`250.) In his reply testimony, Mr. Schmandt again referenced these same disclosures
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`as a specific rebuttal to Dr. Carbonell’s argument that actual multimedia data is not
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`transmitted from the Sociable Web server. (See Ex. 1100, ¶ 49, responding to Ex.
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`2006 at ¶ 21.)
`
`Finally, Patent Owner’s allegation that these paragraphs contain new opinions
`
`that the prior art references “disclose” the Internet limitations is puzzling and
`
`baseless. (Mot. at 7.) As noted in Mr. Schmandt’s reply declaration, Patent Owner’s
`
`Response never disputed that the Brown and Sociable Web references disclose the
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`Internet limitations, but instead focused only on motivation to combine. (See Ex.
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`1100, ¶ 32; see also Reply (Paper 44) at 17-18.)
`
`III. CONCLUSION
`For these reasons, Patent Owner’s motion to exclude should be denied.
`
`
`
` Dated: August 16, 2017
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave. NW, Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
` Respectfully submitted,
`
`By: /Heidi L. Keefe/
`
`Heidi L. Keefe
`
`Reg. No. 40,673
`
`Counsel for Petitioner
`Facebook, Inc.
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`10
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`Atty Docket No. FABO-041/01US
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`IPR2016-01155
`U.S. Patent No. 8,694,657
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`CERTIFICATE OF SERVICE
`I hereby certify, pursuant to 37 C.F.R. § 42.6, that a complete copy of the
`attached PETITIONER’S OPPOSITION TO MOTION TO EXCLUDE
`EVIDENCE is being served in its entirety on the 16th day of August, 2017, via
`electronic mail on counsel of record for the Patent Owner as follows:
`
`
`/Heidi L. Keefe
`Heidi L. Keefe
`Reg. No. 40,673
`
`
`
`Peter Lambrianakos
`plambrianakos@brownrudnick.com
`Vincent J. Rubino, III
`vrubino@brownrudnick.com
`Alfred R. Fabricant
`afabricant@brownrudnick.com
`Shahar Harel
`sharel@brownrudnick.com
`Enrique W. Iturralde
`eiturralde@brownrudnick.com
`Brown Rudnick LLP
`
`
`Dated: August 16, 2017
`
`COOLEY LLP
`ATTN: Patent Docketing
`1299 Pennsylvania Ave. NW
`Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`
`
`
`
`
`
`11
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`
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