Trials@uspto.gov
`571.272.7822
`
`
`
` Paper No. 34
`
` Entered: August 1, 2017
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC.,
`Petitioner,
`
`v.
`
`WINDY CITY INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00709
`Patent 8,458,245 B1
`____________
`
`
`
`Before KARL D. EASTHOM, DAVID C. McKONE, and J. JOHN LEE,
`Administrative Patent Judges.
`
`Opinion Concurring filed by Administrative Patent Judge LEE, in which
`Administrative Patent Judge McKONE joins.
`
`PER CURIAM.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`
`571.272.7822
`
`
`
` Paper No. 34
`
` Entered: August 1, 2017
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC.,
`Petitioner,
`
`v.
`
`WINDY CITY INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00709
`Patent 8,458,245 B1
`____________
`
`
`
`Before KARL D. EASTHOM, DAVID C. McKONE, and J. JOHN LEE,
`Administrative Patent Judges.
`
`Opinion Concurring filed by Administrative Patent Judge LEE, in which
`Administrative Patent Judge McKONE joins.
`
`PER CURIAM.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2017-00709
`Patent 8,458,245 B1
`
`INTRODUCTION
`On January 17, 2017, Facebook, Inc. (“Facebook”) filed a Petition
`
`(Paper 2, “Pet.”) requesting inter partes review of claims 19 and 22–25 (“the
`present challenged claims”) of U.S. Patent No. 8,458,245 B1 (Ex. 1001, “the
`’245 patent”). Concurrently with the Petition, Facebook filed a Motion for
`Joinder (Paper 3, “Mot.”), requesting that this proceeding be joined with
`Facebook, Inc. v. Windy City Innovations, LLC, Case IPR2016-01156
`(“1156 IPR”). Mot. 1. Patent Owner Windy City Innovations, LLC
`(“Windy City”) filed an Opposition to the Motion for Joinder (Paper 8,
`“Opp.”) but did not file a Preliminary Response. Facebook filed a Reply to
`the Opposition to the Motion for Joinder (Paper 9, “Reply”).
`For the reasons discussed below, we institute an inter partes review of
`
`all of the present challenged claims and grant the Motion for Joinder.
`
`
`BACKGROUND
`In June 2015, Windy City filed suit against Facebook in the U.S.
`
`District Court for the Western District of North Carolina. See Ex. 1017
`(“Complaint”). In the Complaint, Windy City identified four patents-in-suit,
`including the ’245 patent, and alleged that “Facebook has infringed and
`continues to infringe the patents-in-suit.” See id. at 2–3, 6–9. Although the
`asserted patents include over 800 total claims, no specific claims of the
`asserted patents were identified in the Complaint.
`
`Facebook moved to dismiss the Complaint on July 24, 2015, arguing
`inter alia that the Complaint’s infringement allegations were insufficiently
`specific to sustain the action. See Ex. 3001, 4 (Facebook’s Memorandum in
`Support of Motion to Dismiss). While waiting for the court to decide its
`
`2
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`Case IPR2017-00709
`Patent 8,458,245 B1
`
`Motion to Dismiss, Facebook also filed a Motion to Change Venue to the
`Northern District of California on August 25, 2015. See Ex. 3002, 2 (order
`granting Motion to Change Venue). The court did not decide Facebook’s
`Motion to Dismiss and, on March 16, 2016, the court instead granted
`Facebook’s Motion to Change Venue and transferred the case to the U.S.
`District Court for the Northern District of California. Id. at 7–8.
`
`After the case was transferred, counsel for Facebook contacted
`counsel for Windy City to request that Windy City identify a subset of
`claims from the asserted patents and restrict its infringement contentions to
`only those claims, but earlier than the relevant deadlines provided in
`applicable patent local rules. See Ex. 1013, 1–5. Facebook noted that the
`deadline for filing inter partes review petitions was upcoming, and asserted
`that Windy City’s refusal to identify specific claims would prejudice
`Facebook’s ability to focus such petitions on only those claims actually in
`controversy. See id. at 2. Although Windy City expressed willingness to
`negotiate, ultimately, those discussions failed to produce an agreement. See
`id. at 1–4.
`
`On May 4, 2016, Facebook filed a motion seeking an order requiring
`Windy City to identify no more than forty asserted claims across the patents-
`in-suit. Ex. 1014, 1–2. The court denied the motion, but indicated it would
`“require a preliminary election of asserted claims and prior art,” ordering the
`parties to address the topic in their joint statement for the case management
`conference. Ex. 1015, 1. The case management conference was not held
`until July 25, 2016. See Ex. 3003.
`
`Facebook filed its petition in the 1156 IPR on June 3, 2015, just prior
`to the one-year deadline set forth in 35 U.S.C. § 315(b). See 1156 IPR,
`
`3
`
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`Case IPR2017-00709
`Patent 8,458,245 B1
`
`Paper 1 (“1156 Pet.”). The petition in the 1156 IPR challenged claims 1–15,
`17, and 18 of the ’245 patent. Id. at 3.
`
`After the case management conference, on October 19, 2016, Windy
`City served disclosures in the district court case, pursuant to applicable
`patent local rules, identifying claims 19 and 22–25 of the ’245 patent as
`allegedly infringed by Facebook. Ex. 1016, 2. Subsequently, on December
`15, 2016, we instituted an inter partes review of claims 1–15, 17, and 18 of
`the ’245 patent in the 1156 IPR on the ground of unpatentability under
`35 U.S.C. § 103(a) in view of Roseman,1 Rissanen,2 Vetter,3 Pike,4 and
`Westaway5 (claims 1–5, 7, 9–14), and additionally Lichty6 (claims 6, 8, 15,
`17 and 18). 1156 IPR, slip op. at 30–31 (PTAB Dec. 15, 2016) (Paper 7,
`“1156 Inst. Dec.”). Pursuant to 37 C.F.R. § 42.122(b), Facebook filed the
`present Petition and Motion for Joinder on January 17, 2017, seeking to
`challenge the claims of the ’245 patent identified in Windy City’s October
`19, 2016 disclosures. See Mot. 7–8.
`
`
`ANALYSIS
`An inter partes review may be joined with another inter partes
`
`review, subject to certain statutory provisions:
`
`
`1 U.S. Patent No. 6,608,636 B1, filed May 13, 1992, issued Aug. 19, 2003
`(Ex. 1003, “Roseman”).
`2 European Patent Application Pub. No. 0621532 A1, published Oct. 26,
`1994 (Ex. 1004, “Rissanen”).
`3 Ronald J. Vetter, Videoconferencing on the Internet, COMPUTER, Jan. 1995,
`at 77–79 (Ex. 1005, “Vetter”).
`4 Mary Ann Pike et al., USING MOSAIC (1994) (Ex. 1006, “Pike”).
`5 U.S. Patent No. 5,226,176, issued July 6, 1993 (Ex. 1007, “Westaway”).
`6 Tom Lichty, THE OFFICIAL AMERICAN ONLINE® FOR MACINTOSHTM
`MEMBERSHIP KIT & TOUR GUIDE (1994) (Ex. 1008, “Lichty”).
`
`4
`
`
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`Case IPR2017-00709
`Patent 8,458,245 B1
`
`(c) JOINDER.—If the Director institutes an inter partes review,
`the Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition under
`section 311 that the Director, after receiving a preliminary
`response under section 313 or the expiration of the time for filing
`such a response, determines warrants the institution of an inter
`parties review under section 314.
`
`35 U.S.C. § 315(c); see also 37 C.F.R. § 42.122. As the moving party,
`Facebook bears the burden of proving that it is entitled to the requested
`relief. 37 C.F.R. § 42.20(c).
`
`As an initial matter, the Motion for Joinder meets the requirements of
`37 C.F.R. § 42.122(b) because the Motion was filed on January 17, 2017,
`which is not later than one month after the 1156 IPR was instituted on
`December 15, 2016.7
`
`Although the Board frequently grants motions for joinder where the
`asserted grounds of unpatentability, and supporting arguments and evidence,
`are the same as in the preceding case, the Motion here seeks to join
`challenges to different claims than in the 1156 IPR. Facebook argues,
`however, that the present challenged claims are “substantially similar” to the
`claims challenged in the 1156 IPR and, thus, “do not raise any substantial
`new issues” given that Facebook relies on essentially the same evidence as
`in the 1156 IPR. Mot. 9–10. According to Facebook, this “substantial
`overlap between the instant proceeding and the [1156 IPR]” indicates
`joinder would promote the expedient and efficient resolution of the issues.
`Id. at 10, 12. Further, Facebook asserts that Windy City would not be
`unduly prejudiced because the present Petition does not raise substantial new
`
`
`7 January 15, 2017, was a Sunday, and January 16, 2017, was Martin Luther
`King, Jr. Day.
`
`5
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`Case IPR2017-00709
`Patent 8,458,245 B1
`
`issues or subject matter, enabling Windy City to address the challenges to
`the present challenged claims “without significant additional burden,
`expense, or delay.” Id. at 12.
`
`Windy City disputes Facebook’s characterization of the present
`challenged claims as substantially similar to the claims challenged in the
`1156 IPR. Opp. 2–5. Thus, Windy City contends it would be unduly
`prejudiced by being forced to respond to voluminous new arguments and
`analyses, which would place on it a significant additional burden. Id. at 8.
`
`A key issue, therefore, is whether the present challenged claims, and
`Facebook’s arguments and evidence against them, are similar enough to
`those in the 1156 IPR such that Windy City would not be subject to an
`undue additional burden to address them. As explained below, we agree
`with Facebook.
`
`First, the claim language of the present challenged claims is very
`similar to that of several of the claims on which we instituted review in the
`1156 IPR. For example, claim 7 (1156 IPR) and claim 19 (present Petition)
`are substantially similar in language and scope. By way of illustration,
`claim 7 recites, “a first of the participator computers running software
`communicating a private message to the computer system,” and claim 19
`recites, “a first of the plurality of participator computers being programmed
`to communicate such that a private message is sent to the computer system.”
`Claim 7 further recites, “the private message comprising a pointer” and
`“receiving a communication via the pointer provided within the private
`message” where “the communication includ[es] pre-stored data representing
`at least one of video, a graphic, sound, and multimedia.” Similarly, claim 19
`recites, “the private message including a pointer pointing to a
`
`6
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`Case IPR2017-00709
`Patent 8,458,245 B1
`
`communication that includes pre-stored data representing at least one of a
`video, a graphic, sound, and multimedia.”
`
`Although Windy City demonstrates that the language of claim 7 and
`that of claim 19 are not identical, it does not explain why any of the
`identified “differences” are substantial. See Opp. 3–5. To the contrary, we
`conclude that the differences are not substantial, at least to the extent that the
`differences do not place an undue burden on Windy City beyond the burden
`it already bears with respect to claim 7 in the 1156 IPR. For example,
`claim 7 recites, “the second of the participator computers determines
`internally whether or not the second of the participator computers can
`present the communication” (emphasis added)8 where “the communication
`includ[es] pre-stored data.” Claim 19 recites, “the second participator
`computer internally determines whether or not the second participator
`computer can present the pre-stored data” (emphasis added). Although the
`claim language differs, we are persuaded the difference is sufficiently minor
`such that it would not unduly burden Windy City to analyze and address it.
`Likewise, claims 22–25 challenged in the present Petition also recite
`limitations that are substantially similar to the limitations of claims already
`in the 1156 IPR, specifically claims 9–12. See Mot. 11.
`
`In addition, Facebook’s arguments and evidence supporting its
`contention that the present challenged claims are unpatentable are
`substantially similar to its arguments and evidence with respect to the
`
`8 Windy City correctly notes that the Motion and present Petition includes an
`inaccurate reproduction of part of claim 7. See Opp. 2–3. Facebook
`represents these discrepancies were unintended and immaterial
`typographical errors. Reply 1–2. We disregard the inaccurate portions of
`the Motion and Petition and base our analysis on the actual language of the
`claim in the ’245 patent.
`
`7
`
`
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`Case IPR2017-00709
`Patent 8,458,245 B1
`
`corresponding claims in the 1156 IPR. See Pet. 9–12; compare id. at 21–56
`(argument regarding claim 19), with 1156 Pet. 51–55 (argument regarding
`claim 7); compare Pet. 56–57 (argument regarding claims 22–25), with 1156
`Pet. 50, 55–56 (argument regarding claims 9–12 and similar claims 3–5).
`The asserted prior art, and the specific teachings relied on, are substantially
`similar, as are the alleged rationales to combine the references and the expert
`testimony cited in support. See, e.g., Pet. 23–24, 36–37, 41–42; 1156 Pet.
`19–20, 29–30, 36–38. Additionally, Facebook’s claim construction
`arguments are the same. Compare Pet. 7–9, with 1156 Pet. 4–6. Although
`Windy City asserts that “[t]hirty-seven (37) pages of the Joinder Petition
`contain new arguments,” it does not explain why they are “new” or identify
`any specific argument or evidence as substantively different from the
`arguments and evidence presented in the 1156 IPR. Opp. 8.
`
`In sum, upon review of the present Petition, we conclude that it
`presents substantially similar arguments and evidence as presented in the
`1156 IPR, and that any differences are not substantial enough to impose an
`undue burden on Windy City beyond its existing burden in the 1156 IPR.
`As a result, we also agree with Facebook that joinder would not
`“substantially expand the subject matter at issue” in the 1156 IPR, and that
`joinder “would require only reasonable adjustments to the schedule [of the
`1156 IPR] that need not unduly delay the final hearing and final decision.”
`See Mot. 12–13.
`
`Windy City, however, advances another argument as to why the
`Motion for Joinder should be denied. According to Windy City, Facebook
`was “on notice” of the present challenged claims before it filed the 1156 IPR
`and, thus, these claims should have been challenged in the 1156 IPR.
`
`8
`
`
`
`
`
`Case IPR2017-00709
`Patent 8,458,245 B1
`
`Opp. 5–7. Although an unreasonable delay in raising an unpatentability
`challenge is often a sufficient basis to deny joinder, we are persuaded the
`delay in this case was not unreasonable. First, the Complaint in the district
`court litigation did not identify any specific claims, alleging only that
`Facebook “has infringed and continues to infringe the patents-in-suit” and
`that its website and applications “meet claims of the patents-in-suit.”
`Ex. 1017, 6. Second, Facebook attempted multiple times to ascertain which
`claims of the ’245 patent were actually the subject of Windy City’s
`infringement allegations. For example, Facebook filed a Motion to Dismiss
`for lack of specificity in the Complaint, which raised the issue and prompted
`Windy City to respond. See Ex. 3001. Facebook also attempted to negotiate
`an agreement whereby Windy City would identify a reasonable subset of the
`800+ possible claims, and also filed a motion seeking an order compelling
`Windy City to do so. See Ex. 1013; Ex. 1014. We are not persuaded
`Facebook should be penalized for failing to guess accurately which claims
`Windy City intended to assert considering the circumstances here,
`particularly the sheer number of possible claims. In addition, we note that a
`substantial portion of the delay appears to have been due to the time the
`district court required to decide Facebook’s Motion to Change Venue and
`transfer the case, rather than a lack of diligence on the part of Facebook.
`
`Both Facebook and Windy City cite decisions of other panels of the
`Board in other cases as allegedly supporting their positions. See Mot. 6–7;
`Opp. 6–7. Joinder, however, is inherently a fact-specific inquiry that
`depends on the circumstances of each individual case. In particular, Windy
`City cites Arris Group, Inc. v. Cirrex Systems LLC, Case IPR2015-00530,
`slip op. at 8–9 (PTAB July 27, 2015) (Paper 12). In Arris, however, the
`
`9
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`
`
`
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`Case IPR2017-00709
`Patent 8,458,245 B1
`
`panel denied joinder in part because joinder would have required
`consideration of new grounds of unpatentability, including three new prior
`art references that had not previously been asserted. Id. at 10. Thus, joinder
`would have entailed significant additional burden and cost on the patent
`owner. Further, the oral hearing of the earlier proceeding in Arris was less
`than one month away. Id. Here, in contrast, the new challenges in the
`present Petition are substantially similar to those in the 1156 IPR and do not
`rely on new prior art or significant new evidence; joinder would not impose
`an undue burden on Windy City; and the schedule of the 1156 IPR is less
`advanced. We determine the balance of the circumstances in this case
`supports Facebook.
`
`Before joinder may be granted, however, we must also first determine
`that institution of an inter partes review is warranted under § 314.9
`35 U.S.C. § 315(c). As discussed above, the present challenged claims are
`substantively similar to claims on which we already instituted inter partes
`review in the 1156 IPR based on essentially the same asserted ground, prior
`art, evidence, and arguments. Thus, we determine that Facebook has
`established a reasonable likelihood of prevailing on the ground of
`unpatentability asserted in the present Petition for essentially the same
`reasons as articulated for the corresponding claims in the 1156 IPR. See
`35 U.S.C. § 314(a); 1156 Inst. Dec. 15–27. We also note that Windy City
`did not file a preliminary response or argue that the present Petition failed to
`establish a reasonable likelihood of prevailing.
`
`
`9 Although the present Petition was filed more than one year after Facebook
`was served with a complaint alleging infringement of the ’245 patent, the
`one-year statutory time bar for filing a petition does not apply in the context
`of joinder. See 35 U.S.C. § 315(b).
`
`10
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`
`
`
`
`Case IPR2017-00709
`Patent 8,458,245 B1
`
`Based on the facts and circumstances discussed above, we determine
`
`Facebook has established good cause for joining this proceeding with the
`1156 IPR. We determine that granting the Motion for Joinder under these
`circumstances would help “secure the just, speedy, and inexpensive
`resolution” of these proceedings. See 37 C.F.R. § 42.1(b). For the above
`reasons, we conclude that trial should be instituted and the Motion for
`Joinder granted.
`
`
`ORDER
`
`It is
`
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review in
`
`IPR2017-00709 is hereby instituted for claims 19 and 22–25 of the ’245
`patent on the grounds of unpatentability set forth above, and no other
`grounds are authorized;
`
`FURTHER ORDERED that Facebook’s Motion for Joinder is
`granted;
`
`FURTHER ORDERED that IPR2017-00709 is hereby joined with
`IPR2016-01156;
`
`FURTHER ORDERED that IPR2017-00709 is terminated under
`37 C.F.R. § 42.72, and all further filings in the joined proceeding are to be
`made in IPR2016-01156;
`
`FURTHER ORDERED that a copy of this Decision will be entered
`into the record of IPR2016-01156; and
`
`FURTHER ORDERED that the case caption in IPR2016-01156 shall
`be modified to reflect joinder with this proceeding in accordance with the
`attached example.
`
`11
`
`
`
`Case IPR2017-00709
`Patent 8,458,245 B1
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC.,
`Petitioner,
`
`v.
`
`WINDY CITY INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00709
`Patent 8,458,245 B1
`____________
`
`
`
`Before KARL D. EASTHOM, DAVID C. McKONE, and J. JOHN LEE,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge, with whom McKONE, Administrative
`Patent Judge, joins, concurring.
`
`I concur with the result reached in the Decision of the Board, but I
`
`write separately to express my concerns regarding an important issue. The
`Decision determines that Petitioner Facebook, Inc. (“Facebook”) has met its
`burden to prove it is entitled to the requested joinder with IPR2016-01156.
`Facebook, however, already is a party to IPR2016-01156; in fact, it is the
`sole petitioner in that proceeding. In granting Facebook’s Motion for
`Joinder, the Decision implicitly concludes that the requested joinder is
`authorized by the applicable statute, namely 35 U.S.C. § 315(c).
`
`
`
`
`
`
`
`Case IPR2017-00709
`Patent 8,458,245 B1
`
`Section 315(c) states in relevant part that “the Director, in his or her
`
`discretion, may join as a party to [the earlier-instituted] inter partes review
`any person who properly files a petition under section 311 that the Director
`. . . determines warrants the institution of an inter parties review” (emphases
`added). The statute, therefore, grants the authority and discretion to institute
`trial and grant joinder to the Director. See id. Consequently, the Board’s
`authority to institute trial and grant joinder actually is an exercise of the
`Director’s authority—which was delegated to the Board via regulation—on
`the Director’s behalf. See 37 C.F.R. §§ 42.4(a), 42.122.
`
`The relevant regulations, however, are silent as to how § 315(c)
`should be interpreted with respect to whether a party (i.e., Facebook in the
`present case) may be joined “as a party” to an inter partes review to which it
`is already a party—so-called “same-party joinder.” Although I am aware
`that panels of the Board, including an expanded panel, have decided that
`§ 315(c) should be interpreted as authorizing same-party joinder, no such
`decisions have yet been made precedential and none are binding on this
`panel. See, e.g., Target Corp. v. Destination Maternity, Corp., Case
`IPR2014–00508, slip op. (Feb. 12, 2015) (Paper 28).
`My view is that § 315(c), when properly interpreted, does not
`
`authorize same-party joinder because a party cannot be joined to a
`proceeding “as a party” if it already is a party to that proceeding. In this
`respect, I agree with the reasoning set forth in SkyHawke Technologies, LLC
`v. L&H Concepts, LLC, Case IPR2014-01485, slip op. 3–4 (Mar. 20, 2015)
`(Paper 13).
`
`I recognize, however, that the Director has taken the position before
`the U.S. Court of Appeals for the Federal Circuit that § 315(c) authorizes
`
`2
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`Case IPR2017-00709
`Patent 8,458,245 B1
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`same-party joinder. See, e.g., Brief for Intervenor – Director of the United
`States Patent and Trademark Office at 32–39, Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., No. 2016-2321 (Fed. Cir. filed Jan. 12,
`2017). Despite my disagreement with that interpretation, because our
`decision on whether to grant Facebook’s Motion for Joinder is an exercise of
`the Director’s authority on the Director’s behalf, I concur with the
`Decision’s application of the Director’s view of § 315(c).
`
`
`
`3
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`
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`Case IPR2017-00709
`Patent 8,458,245 B1
`
`PETITIONER:
`
`Heidi L. Keefe
`Phillip E. Morton
`Andrew C. Mace
`COOLEY LLP
`hkeefe@cooley.com
`pmorton@cooley.com
`amace@cooley.com
`FB_WindyCity_PTAB_IPR@cooley.com
`
`
`
`PATENT OWNER:
`
`Vincent Rubino
`Peter Lambrianakos
`BROWN RUDNICK LLP
`vrubino@brownrudnick.com
`plambrianakos@brownrudnick.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Example Case Caption for Joined Proceeding
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC.,
`Petitioner,
`
`v.
`
`WINDY CITY INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-011561
`Patent 8,458,245 B1
`____________
`
`
`Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`1 Case IPR2017-00709 has been joined with this proceeding.
`
`
`
`
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