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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 REPLY IN SUPPORT OF ITS
`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 reply in support of its motion to
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`exclude evidence (“Motion”), responsive to Petitioner’s opposition to the same.
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`II. THE MOTION TO EXCLUDE IS PROCEDURALLY PROPER
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`Petitioner argues incorrectly that this Motion to exclude evidence is
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`improper. The Board should reject these arguments for at least the following
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`reasons.
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`First, Petitioner mischaracterizes Patent Owner’s challenge as one solely
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`directed to 37 C.F.R. § 42.23(b). While the narrowly-tailored portions should be
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`excluded for violating 37 C.F.R. § 42.23(b), Patent Owner’s arguments are further
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`grounded properly in the Federal Rules of Evidence. Particularly, Patent Owner
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`alleges correctly that certain narrowly-tailored portions of the record should be
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`deemed inadmissible as irrelevant (FRE 401 and 402) or otherwise prejudicial,
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`confusing, and/or misleading (FRE 403). As explained in the Motion, those
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`portions resulting in new arguments should be excluded for at least being: (a)
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`irrelevant to the authorized grounds for trial, (b) unfairly prejudicial as concealing
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`grounds and perfecting arguments with previously-unapplied references, (c)
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`confusing to the issues instituted by the Board, and (d) misleading with respect to
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`2 Due Date 6 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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`the content and scope of the prior art.
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`Second, Petitioner’s cases are inapposite because the motions in those
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`proceedings relied solely on scope without any discussion regarding admissibility
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`under the Federal Rules of Evidence. See, e.g., Palo Alto Networks, Inc. v. Finjan,
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`Inc., No. IPR2016-00151, Paper 39 at 1 (P.T.A.B. Dec. 28, 2016); Facebook, Inc.
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`et. al v. Software Rights Archive, LLC, No. IPR2013-00478, Paper 47 at 1-2
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`(P.T.A.B. Sep. 26, 2014). To the extent that any order cited by Petitioner can be
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`reasonably construed to mean that the Board will automatically deny properly-
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`preserved requests to exclude evidence based on the Federal Rules of Evidence,
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`such practice would fall squarely in conflict with controlling case law.
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`Third, the rules provide that “[a] motion to exclude evidence must be filed to
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`preserve any objection” and that, upon institution, “any objection must be filed
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`within five business days of service of evidence.” 37 C.F.R. §§ 42.64(c),
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`42.64(b)(1). Patent Owner complied with the rules and timely filed its objections,
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`supporting each and every request to exclude in this Motion. Paper 47.
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`Petitioner’s argument, if accepted, would force patent owners to noncompliance
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`with the Board’s rules.
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`Fourth, Petitioner fails to point to any binding or precedential case law for
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`self-serving reasons. The Federal Circuit has repeatedly acknowledged the
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`requirements of the Board to apply rules and practice procedures in accordance
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`IPR2016-01155
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`U.S. Pat. No. 8,694,657
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`with a patent owner’s due process rights. The Federal Circuit has held that, during
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`inter partes review, a patent owner “is undoubtedly entitled to notice and a fair
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`opportunity to meet the grounds of rejection.” Belden Inc. v. Berk-Tek LLC, 805
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`F.3d 1064, 1080 (Fed. Cir. 2015). The Belden Court endorsed the practice that a
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`Petitioner’s “reply may only respond to arguments raised in the corresponding
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`opposition or patent owner response” and that “if the petitioner submits a new
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`expert declaration with its Reply, the patent owner can respond in multiple ways.”
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`Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080-1081 (Fed. Cir. 2015).
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`Particularly, the Patent Owner “can move to exclude the declaration” and “can
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`dispute the substance of the declaration at oral hearing before the Board.” Id.
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`Contrary to Petitioner’s arguments, the Federal Circuit explained that “a party may
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`move to exclude evidence, whether as improper under the response-only
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`regulation, under the Trial Practice Guide's advice, or on other grounds. §
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`42.64(c).” (Emphasis added.) Id. at 1081. Citing to Belden, the Board has
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`endorsed this very type of motion and ruled against a party for its failure to move
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`to exclude new arguments presented through expert testimony. Ceramtec GMBH
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`v. Ceramedic, LLC, No. IPR2015-00398, Paper 36 at 12 (P.T.A.B. July, 1, 2016)
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`[“Patent Owner also did not file a motion to exclude portions of Petitioner’s expert
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`testimony…see also Belden, Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1081 (Fed. Cir.
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`2015) (identifying options for Patent Owner faced with new evidence in Reply).”].
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`IPR2016-01155
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`U.S. Pat. No. 8,694,657
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`“Once the Board identifies new issues presented for the first time in reply, neither
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`this court nor the Board must parse the reply brief to determine which, if any, parts
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`of that brief are responsive and which are improper. As the Board noted, ‘it will
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`not attempt to sort proper from improper portions of the reply.’” Intelligent Bio-
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`Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016).
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`Accordingly, this motion is proper and should not be denied without consideration.
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`III. EX. 1100, REPLY DECLARATION OF CHRISTOPHER
`SCHMANDT
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`Contrary to Petitioner’s permissive take on the rules regarding petitioner
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`replies (Opp. at § II), “[a] reply may only respond to arguments raised in the
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`corresponding opposition, patent owner preliminary response, or patent owner
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`response.” (Emphasis added.) 37 C.F.R. § 42.23(b).
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`Regarding Exhibit 1100, ¶ 21 at lines 4–17, ¶ 21 at lines 17–22, ¶ 22 at lines
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`1–14, and ¶ 23 at lines 1–7, Petitioner’s response reaffirms Patent Owner’s bases
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`for its request to exclude this portion for the reasons presented in the Motion.
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`Petitioner’s response lacks substance and fails to adequately explain how the
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`particular portion is responsive to Dr. Carbonell’s arguments or based on a position
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`authorized for trial. Moreover, Petitioner all but admits that it presents new
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`arguments because it could not understand the challenged claims. Opp. at 4.
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`Regarding Exhibit 1100, ¶¶ 26–30, Petitioner’s “sufficient particularity”
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`argument falls flat because Patent Owner specifically identified new arguments to
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`IPR2016-01155
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`U.S. Pat. No. 8,694,657
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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. Regarding Exhibit 1100, ¶¶ 45-51, Petitioner’s “sufficient particularity”
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`argument falls flat because Patent Owner specifically identified new motivations
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`and new citations to and/or excerpts from Ex. 1019 at 4 and a figure within ¶ 50.
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`Regarding Exhibit 1100, ¶¶ 26–30, ¶ 46, ¶¶ 45-51, Petitioner’s response
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`reaffirms Patent Owner’s bases for its request to exclude this portion for the
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`reasons presented in the Motion. Petitioner’s response lacks substance and fails to
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`adequately explain how the particular portion is responsive to Dr. Carbonell’s
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`arguments or based on a position authorized for trial.
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`IV. CONCLUSION
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`In sum, none of Petitioner’s responses indicate any responsiveness to Dr.
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`Carbonell’s arguments or any support to relate back the new arguments to the
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`authorized grounds for trial. Because the above-identified portions are irrelevant,
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`unfairly prejudicial, confusing, and/or misleading, Patent Owner respectfully
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`requests exclusion of ¶ 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 of the reply
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`declaration of Christopher Schmandt (Ex. 1100) from the evidentiary record.
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`Dated August 23, 2017
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`Respectfully submitted,
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`/Peter Lambrianakos /
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`Peter Lambrianakos (Reg. No. 58,279)
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`IPR2016-01155
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`U.S. Pat. No. 8,694,657
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`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 REPLY IN SUPPORT OF ITS MOTION
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`TO EXCLUDE EVIDENCE has been served on Petitioner at the correspondence
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`of the Petitioner as follows:
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`By Email:
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`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:
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`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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`August 23, 2017
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`By Email:
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`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
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`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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