Atty Docket No. FABO-041/01US
`(309101-2163)
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`
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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 RESPONSE TO PATENT OWNER’S MOTION FOR
`OBSERVATIONS ON CROSS-EXAMINATION
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`
`
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`1 Case IPR2017-00622 has been joined with this proceeding.
`
`
`(309101-2163)
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`
`
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`IPR2016-01155
`U.S. Patent No. 8,694,657
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
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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
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2016-011551
`Patent No. 8,694,657
`__________________
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION FOR
`OBSERVATIONS ON CROSS-EXAMINATION
`
`
`
`
`1 Case IPR2017-00622 has been joined with this proceeding.
`
`
`
`Atty Docket No. FABO-041/01US
`(309101-2163)
`
`
`
`
`IPR2016-01155
`U.S. Patent No. 8,694,657
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`Patent Owner’s Motion for Observations on the Cross-Examination of
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`Christopher Schmandt (Paper 51) contains excessively long and argumentative
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`observations in violation of the Office’s Trial Practice Guide and should be
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`expunged. (See 77 F.R. 48756 at 768 (Aug. 14, 2012).) Nevertheless, Petitioner
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`respectfully submits the following responses, numbered to correspond to Patent
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`Owner’s observations.
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`1.
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`The cited testimony does not contradict Petitioner’s assertion that the
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`Sociable Web is prior art as Patent Owner asserts in Observation 1. The 1998 date
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`on the face of the Internet Archive document is not relevant to the date of public
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`accessibility of the Sociable Web prior art disclosure. As discussed in the Petition,
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`supported by the Donath declaration, and accepted for the purposes of institution,
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`the Sociable Web article was publicly available no later than the date of the 2nd Int’l
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`Web Conference of October 1994, where Dr. Donath presented the article and made
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`it available on the conference’s website. (See Pet. at 17-18; Ex. 1031 at ¶¶ 6-7, 12;
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`Ex. 1021 at iii, ix.)
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`2.
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`Patent Owner’s Observation 2 mischaracterizes Mr. Schmandt’s
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`testimony and the express disclosures of Ex. 1021, the Oct. 1994 Web Conference
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`proceeding. Although counsel for Patent Owner attempted to prevent Mr. Schmandt
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`from reading these disclosures into the record, Mr. Schmandt testified that Ex. 1021
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`expressly states that “[a]ll conference papers are available in the electronic
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`1
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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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`proceedings which can be access via the conference home page at the URL listed
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`below.” (See Ex. 2015 at 17:7-19:13, referring to Ex. 1021 at iii.) Patent Owner’s
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`Observation 2 further ignores the unrebutted sworn testimony of Dr. Donath, who
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`testified the article was distributed both through the conference website and her own
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`MIT website. (See Ex. 1022, ¶¶ 9-13; Ex. 1020; Ex. 2009 at 13:17-14:21.)
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`3.
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`Patent Owner’s Observation 3 underscores the fact that questioning
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`directed to Mr. Schmandt improperly went beyond the scope of Mr. Schmandt’s
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`reply declaration, which never discussed the legal status of the Sociable Web article
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`as prior art. Indeed, Mr. Schmandt’s opening declaration did not address this issue
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`either, but instead is based on the assumption that the Sociable Web qualifies as a
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`prior art document. Mr. Schmandt explained this in his deposition. (See Ex. 2015
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`at 15:21-16:10.) Mr. Schmandt further testified that, even though he did actually
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`have personal knowledge (because he and Dr. Donath were both at MIT) that Dr.
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`Donath was working on the subject matter described in the Sociable Web and that
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`she presented that subject matter at a conference, he did not rely on that in forming
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`the opinions expressed in his declaration. (See id. at 13:16-14:19.)
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`4. Mr. Schmandt’s reply declaration provides his opinion on the proper
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`claim construction of the term “censor.” (See Ex. 1100, ¶¶ 11-12.) Mr. Schmandt’s
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`reply declaration contains no opinions on whether the prior art discloses the
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`censorship limitations of the challenged claims under Patent Owner’s proposed
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`2
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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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`construction, because the Patent Owner’s Response and Dr. Carbonell’s supporting
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`declaration did not dispute that the claim limitations containing the term “censor”
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`were disclosed in the prior art (under any construction). (See Reply (Paper 44) at 6,
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`8-9.) Mr. Schmandt’s opinions that the prior art discloses the “censor” claim
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`limitations are not implicated by this observation and were not disputed by Patent
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`Owner’s Response or Dr. Carbonell. (See Ex. 1003, ¶¶ 222-226, 232-237, 238-246,
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`257-262, 269-278, 281-285, 288-290, 310-313, 316-317.)
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`5.
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`Observation 5 mischaracterizes Mr. Schmandt’s opinions and the
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`arguments advanced by Petitioner. The claim language expressly recites that the
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`relevant claim step requires “determining whether the first user identity and the
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`second user identity are able to form a group.” Petitioner’s reply responds to Patent
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`Owner’s apparent argument that this claim limitation requires that the determination
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`be made as to both user identities simultaneously. (See Reply at 12; Ex. 1100 ¶¶ 26-
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`30.) The testimony of Mr. Schmandt cited by Patent Owner is not to the
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`contrary. (See Ex. 2015 at 131:20-132:10.)
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`6.
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`Contrary to Patent Owner’s Observation 6, Mr. Schmandt did not
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`testify that the only determination being made in Brown at 15:27-37 is whether a
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`user can know whether or not a note exists. Indeed, Mr. Schmandt testified
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`specifically that this section of Brown teaches a determination of whether “the group
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`is visible to other users.” (See Ex. 2015, 133:4-18; see also Ex. 1100 ¶ 27.) And in
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`3
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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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`any case, the disclosures of Brown speak for themselves. The cited section of Brown
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`teaches that “this feature may be used to hide from the view of regular users a BBS
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`folder (and its contents) that has been created for private correspondence between
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`members of a family, so that the only users who can see the folder (via the Explorer
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`or other client application) are the designated family members…. [O]nly those
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`authorized to access each node can see the node.” (See Ex. 1012, 15:27-37; see also
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`Ex. 1100, ¶¶ 27-29.)
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`7.
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`Patent Owner’s observation appears to be based on a mistake in the
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`questioning directed to Mr. Schmandt. In deposition, Mr. Schmandt was asked about
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`Column 33, lines 5-21 of the Brown reference, even though he did not refer to these
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`lines in his reply declaration. (See Ex. 2015 at 135:12, 135:17, 136:19.) In his reply
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`declaration, Mr. Schmandt referred to Column 31, lines 5-21 of Brown. (See Ex.
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`1100, ¶ 28.) Patent Owner’s accusation of Mr. Schmandt of contradicting his own
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`declaration thus makes no sense. Instead, it is clear that Patent Owner’s counsel
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`failed to properly direct Mr. Schmandt to the correct column of Brown during the
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`deposition, accounting for the confusion underlying this observation.
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`4
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`Atty Docket No. FABO-041/01US
`(309101-2163)
`
` Dated: August 16, 2017
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`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave. NW, Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
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`
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`
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`IPR2016-01155
`U.S. Patent No. 8,694,657
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` Respectfully submitted,
`
`By: /Heidi L. Keefe/
`
`Heidi L. Keefe
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`Reg. No. 40,673
`
`Counsel for Petitioner
`Facebook, Inc.
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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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`CERTIFICATE OF SERVICE
`I hereby certify, pursuant to 37 C.F.R. § 42.6, that a complete copy of the
`attached PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION
`FOR OBSERVATIONS ON CROSS-EXAMINATION 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
`
`
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`6
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