`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
`
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`PETITIONER’S SUPPLEMENTAL REPLY
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`1 Case No. IPR2017-00709 has been joined with this proceeding.
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`
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`IPR2016-01156
`Petitioner’s Supplemental Reply
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`Patent Owner’s Supplemental Response (Paper 45 (“Supp. Resp.”)) is little
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`more than a rehash of the arguments it previously made in IPR2016-01156, with
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`which this proceeding was joined. In its Order Granting Petitioner’s Motion for
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`Joinder in IPR2017-00709, the Board correctly observed that “the claim language of
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`the present challenged claims is very similar to that of several of the claims on which
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`we instituted review in the 1156 IPR.” (Paper 11 in IPR2017-00709, at 6.) The
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`Board also correctly observed that “Facebook’s arguments and evidence supporting
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`its contention that the present challenged claims are unpatentable are substantially
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`similar to its arguments and evidence with respect to the corresponding claims in the
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`1156 IPR.” (Id. at 7-8) Accordingly, it should come as no surprise that Patent
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`Owner’s Supplemental Response adds little, if anything, to its previous arguments.
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`Patent Owner did not submit a new expert declaration or any additional evidence to
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`support its defense of claims 19 and 22-25.
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`Nevertheless, in the interest of completeness, Petitioner will address each of
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`Patent Owner’s arguments below. For convenience and ease of reference for the
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`Board, and to avoid the need to consider identical issues multiple times, Petitioner
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`will also identify when an argument addressed herein was already covered (in more
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`detail) by the previous submissions by the parties. For the reasons stated below, the
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`Board should find that claims 19 and 22-25 are unpatentable based on the instituted
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`grounds.
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`1
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`IPR2016-01156
`Petitioner’s Supplemental Reply
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`I.
`CLAIM CONSTRUCTION
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`Patent Owner proposes the same constructions for “database” and “censor”
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`(and “censorship”) that it proposed in its -1156 Response. As explained in detail in
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`Petitioner’s Reply (Paper 31 (“Reply”)), Patent Owner’s proposed construction for
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`“censor” ignores express statements in the specification and instead relies on
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`extrinsic evidence and was already considered and rejected by the Board. (Paper 31
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`(“Reply”) at 3.) Patent Owner’s proposed construction for “database” lacks intrinsic
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`support, and its extrinsic support (the unsupported testimony of its expert) overlooks
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`the facts that a “database” and a “database management system” (“DBMS”) are two
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`different things and that a database does not require a DBMS. (Reply at 3-7; Lavian
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`Second Decl., Ex. 1021, ¶¶ 10-17.) Patent Owner’s proposed constructions should
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`be rejected.2
`II. CLAIMS 19 AND 22-25 ARE UNPATENTABLE
`A. Claim 19 – “Particular computers being associated with a
`respective login name and a password”
`As the Petition explained, claim 19 is similar in many respects to claim 7,
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`except that claim 19 recites “particular computers being associated with a
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`respective login name and a password,” whereas claim 7 recites “a respective login
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`2 As explained below, even if the Board were to adopt Patent Owner’s “database”
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`construction, it would not distinguish the prior art.
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`2
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`IPR2016-01156
`Petitioner’s Supplemental Reply
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`name and a password corresponding to a respective user identity.” Patent Owner
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`contends that this difference is somehow significant because, according to Patent
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`Owner, the login name and password under the combination of Roseman and
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`Rissanen are associated with the user, but not with the user’s computer.
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`But for purposes of applying the prior art, Patent Owner’s distinction has no
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`meaningful significance. Under the combination of Roseman and Rissanen, the
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`login name and password are actually associated with both the user identity and
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`with the user’s participator computer. This is because the user enters its login name
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`and password into its participator computer to gain access to the system. (Rissanen,
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`1:37-39 (“Typically, the computer system prompts the user to enter the user’s
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`account code and then prompts the user to enter the assigned password . . .”), 1:33-
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`34 (explaining that the “account code” stores the user’s “login identification”)
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`(underlining added).) As the Petition explained, “if a participant computer is
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`associated with a valid pass-code and key, a data connection is made with that
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`participant computer and audio and video connections may also be made.” (Petition,
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`at 29 (underlining added).) The login name and password are thus clearly associated
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`with the participator computer employed by the user.
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`Patent Owner’s suggestion that the claim requires some kind of special or
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`direct connection between the user’s login name and password and the computer
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`itself is unsupported by the claim language and the specification. The claim simply
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`3
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`IPR2016-01156
`Petitioner’s Supplemental Reply
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`recites “particular computers being associated with a respective login name and a
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`password,” and imposes no limits on how that association must be implemented or
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`expressed, or when it must exist. The Board has previously construed the word
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`“associated” as “connected or related,” and held that the term does not require a pre-
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`existing relationship. See Apple Inc. v. Arrendi S.A.R.L., Case IPR2014-00207, Final
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`Written Decision, Paper 32, at 7-8 (P.T.A.B. June 9, 2005).
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`This broad definition is consistent with the specification of the ’245 patent.
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`The specification itself describes the claimed login name and password as being
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`associated with the user identity: “The login/password screen is shown, and the user
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`enters his/her assigned login/password combination and clicks the ‘Login to Chat’
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`button. If the password was entered correctly, a confirmation box appears on the
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`screen.” (’245, 18-21 (emphasis added).) Just like Roseman and Rissanen, the login
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`name and password in the ’245 specification are associated with the participator
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`computer by virtue of the fact that the participator computer was used to input that
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`information. Nothing in the specification suggests, let alone requires, a direct
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`relationship between the login name/password and the computer itself.
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`B.
`“Tokens”
`Patent Owner next repeats nearly verbatim its arguments that Roseman does
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`not disclose “tokens.” (Compare Supp. Resp. at 7-9 with Resp. at 18-20.) Patent
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`Owner’s arguments were fully addressed in the Reply. (Reply at 14-16.)
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`4
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`IPR2016-01156
`Petitioner’s Supplemental Reply
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`Patent Owner’s arguments cannot be reconciled with the plain disclosures in
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`Roseman. (Reply at 15.) Patent Owner ignores the plain language of the agreed-
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`upon construction of “token,” which merely requires a piece of information
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`associated with user identity. (Reply at 15-16.) The claims do not require that the
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`association with user identity be implemented in any particular way. Roseman
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`expressly discloses that the “Level 1” key is “for the invitee only” and “may not be
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`passed to any other person and may not be copied.” (Roseman, 9:37, 9:43-44.)
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`Moreover, the claim does not require that the “association” with user identity
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`be encoded into the key itself, and restrictions on a key are enforced when the person
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`associated with the key attempts to use the key to access the conference room.
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`(Reply at 16; Ex. 1021, ¶ 46.) Nor is there any basis to argue that the tokens must
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`perform the five unclaimed functions that Windy City lists. (Reply at 16.)
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`C.
`“Database”
`Patent Owner repeats nearly verbatim its arguments related to the “database”
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`limitation from its Response. (Compare Supp. Resp. at 9-13 with Resp. at 21-25.)
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`As explained in the Reply, these arguments fail. (Reply at 10-19.)
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`Patent Owner first speculates that the host computer in Roseman may not
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`actually store the keys because, according to Patent Owner, the meeting room in
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`Roseman could have applied a “hash function” to determine if a key is valid. (Supp.
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`Resp. at 9.) As explained in the Reply, this argument should be rejected for at least
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`5
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`IPR2016-01156
`Petitioner’s Supplemental Reply
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`two reasons. First, Patent Owner’s argument is legally irrelevant because it
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`improperly attacks Roseman individually but ignores the fact that the Petition cited
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`Roseman in combination with Rissanen to show that it would have been obvious to
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`store the “keys” in a database. (Reply at 11; -709 Petition at 17-18, 40-42.) Patent
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`Owner concedes that “Rissenan [sic] discloses a database” (Supp. Resp. at 10), so
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`whether Roseman itself discloses storage of keys is beside the point. Second, Patent
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`Owner’s “hash function” argument is based on pure speculation. (Reply at 11-12.)
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`Roseman does not suggest, let alone disclose, the use of any hash function for
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`checking the validity of keys. (Ex. 1021, ¶ 29.) Moreover, the use of such a “hash
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`function” is inconsistent with the teachings in Roseman. (Id., ¶¶ 29-30; Roseman,
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`4:23-25, 9:42-43, 9:49-50, 9:54-55.)
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`Patent Owner also argues that a person of ordinary skill in the art would not
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`have been motivated to combine Rissanen and Roseman. (Supp. Resp. at 10-11.)
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`Patent Owner’s physical combinability argument is contrary to established law.
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`(Reply at 12-13.) As explained in the Reply, the test for obviousness is “not whether
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`the references could be physically combined but whether the claimed inventions are
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`rendered obvious by the teachings of the prior art as a whole.” Allied Erecting and
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`Dismantling Co., Inc. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir.
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`2016) (quoting In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc)). The
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`Petition cites Rissanen for a narrow purpose of showing disclosure of storing user
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`6
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`IPR2016-01156
`Petitioner’s Supplemental Reply
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`identity and authentication information in a database. (-709 Petition at 17-18, 41-
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`43.) There is simply nothing complicated about storing the “keys” Roseman in a
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`database, as suggested by Rissanen. (Ex. 1021, ¶ 38.) Dr. Carbonell himself
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`admitted at his deposition that databases as of early 1996 could be used to store user
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`identity and authentication information. (Ex. 1016, 43:17-44:7.) He further agreed
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`that nothing in Roseman prevents storage the keys in a database. (Id., 53:16-55:3.)
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`Even under Patent Owner’s incorrect proposed construction for “database,” one
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`would be disclosed by Roseman and Rissanen. (Reply at 14.) There appears to be
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`no dispute on this point. Patent Owner devotes most of its argument about the
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`“database” limitation to Roseman and does not appear to dispute that Rissanen
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`discloses the claimed database. Patent Owner specifically concedes in its Response
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`that “Rissenan [sic] discloses a database” (Supp. Resp. at 10). Roseman and
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`Rissanen disclose the claimed “database” even under Patent Owner’s improperly
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`narrow construction. (Ex.1021, ¶¶ 36-38.)
`
`D.
`“Other Programs to Access”
`Patent Owner repeats its arguments regarding a “database which serves as a
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`repository of tokens for other programs to access.” (Compare Supp. Resp. at 12-13
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`with Resp. at 24-25.) As explained in the Reply, each conference room is a distinct
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`and separate “combination of stored data and computer programs,” and thus, a
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`separate computer program. (Ex. 1021, ¶¶ 51-52; Roseman, 3:42-50, 9:61-10:17,
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`7
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`
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`IPR2016-01156
`Petitioner’s Supplemental Reply
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`12:16-18.) Moreover, Patent Owner’s arguments ignore Petitioner’s alternative
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`mapping in which the “other programs” take the form of the programs on the
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`participator computers of invitees who present their key to the host to gain access to
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`a conference room. (Reply at 17; -709 Petition at 43.)
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`E.
`“Internet”
`Patent Owner repeats its arguments that Roseman and Vetter cannot be
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`combined to show the “Internet” as in the claims. (Compare Supp. Resp. at 13-15
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`with Resp. at 21-25.) The Reply addressed these arguments. (Reply at 7-10.)
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`Bob Metcalfe’s statement
`
`in
`
`late 1995
`
`that
`
`the
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`Internet would
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`“catastrophically collapse in 1996” (Supp. Resp. at 14) was incorrect, and quickly
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`retracted, and would not have discouraged (and did not discourage) the industry from
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`using the Internet. (Ex.1021, ¶¶ 22, 25.) There is no evidence that people in the
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`industry took the prediction seriously or altered their behavior based on it.
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`Patent Owner also points to other communication technologies, such as ISDN
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`and ATM, but Federal Circuit law is clear that the existence of alternatives to the
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`Internet, even if those alternatives might have been advantageous in some respects,
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`does not teach away from use of the Internet or render the Internet non-obvious.
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`(Reply at 9 (quoting In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) and PAR
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`Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014).) Patent
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`Owner’s arguments are also undermined by statements in Vetter demonstrating that
`
`
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`8
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`
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`IPR2016-01156
`Petitioner’s Supplemental Reply
`
`he Internet was entirely suitable for conferencing systems such as the one described
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`in Roseman. (Ex. 1021, ¶ 21; Ex. 1005, p.77.) Dr. Lavian provided a full
`
`explanation in his opening declaration as to why the challenges reported in Vetter
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`were nothing more than garden variety networking issues that would not have
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`discouraged a person of ordinary skill in the art from combining with Roseman,
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`particularly with the many express motivations to combine in Vetter. (Ex. 1002 (-
`
`709), ¶¶ 54-57.) Patent Owner did not address any of those arguments.
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`F.
`“Pointer”
`Patent Owner repeats nearly verbatim its arguments from its Response
`
`regarding a “pointer-triggered private message” to argue that the references do not
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`disclose a “pointer.” (Compare Supp. Resp. at 15-17 with Resp. at 31-33.) These
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`arguments were fully addressed in the Reply. (Reply at 21-22.)
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`The Petition explained that the host in Roseman “sends a pointer in the form
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`of a clickable icon to the table of each participant.” (Reply at 21-22; -709 Petition
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`at 33-34; Roseman, 14:53-57.) Roseman therefore clearly discloses transmission of
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`a message that contains the icon that, when activated, makes the file available. (-
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`709 Petition at 33-34.) Moreover, the Petition provided an alternative mapping in
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`view of Pike which the “pointer” could have been a message containing a URL that
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`causes a computer to fetch and retrieve a document. (-709 Petition at 35.) Patent
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`Owner’s only response to this argument is to assert – with no evidence – that it
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`9
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`IPR2016-01156
`Petitioner’s Supplemental Reply
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`would not have been obvious to use the Internet with Roseman. (Supp. Resp. at 16-
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`17.) This argument fails for the reasons explained in Part II.E above.
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`G.
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`“Internally Determines Whether or Not the Second of the
`Participator Computers Can Present the Communication”
`Patent Owner repeats its argument that Pike and Westaway do not disclose
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`the step of “internally determin[ing] whether or not” the second participator
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`computer can present the communication. (Compare Supp. Resp. at 17-20 with
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`Resp. at 33-38.) The Reply fully addressed these arguments. (Reply at 22-23.)
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`The Reply explained that the fact that the web browser in Pike can behave
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`differently based on the type of data it encounters – directly presenting “text and
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`inline graphics” but using a viewer for everything else – confirms that the software
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`“internally determines” whether it can present the data. (Reply at 22-23; Pike, p.96;
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`-709 Petition at 50-51.) Westaway also discloses the claimed determination by
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`detecting when the software programs needed to process data are not present and
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`specifically discloses an embodiment in which missing software is obtained from a
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`remote computer over a network. (Reply at 23; -709 Petition at 51-53.)
`III. CONCLUSION
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`For the foregoing reasons, the Board should reject Patent Owner’s arguments
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`and enter a final decision also finding claims 19 and 22-25 invalid under 35 U.S.C.
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`§ 103 based on the prior art cited in the Petition.
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`10
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`
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`IPR2016-01156
`Petitioner’s Supplemental Reply
`
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`Dated: September 25, 2017
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`
`
`
`
`By:
`
`
`
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`Respectfully submitted,
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`
`/Heidi L. Keefe/
`Heidi L. Keefe
`Reg. No. 40,673
`Counsel for Petitioner
`Facebook, Inc.
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`11
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`IPR2016-01156
`Petitioner’s Supplemental Reply
`
`CERTIFICATE OF COMPLIANCE WITH WORD COUNT
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`
`
`
`
`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
`
`Pursuant to 37 C.F.R. § 42.24(d), I certify that this supplemental reply
`complies with the type-volume limits of 37 C.F.R. § 42.24(c)(1) because it contains
`2,368 words, according to the word-processing system used to prepare it, excluding
`the parts of this supplemental reply that are exempted by 37 C.F.R. § 42.24(c).
`
`
`
`DATED: SEPTEMBER 25, 2017
`
`COOLEY LLP
`ATTN: Heidi L. Keefe
`Patent Docketing
`1299 Pennsylvania Ave. NW,
`Suite 700
`Washington, D.C. 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`
`
`
`
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`
`
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`1
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`IPR2016-01156
`Petitioner’s Supplemental Reply
`
`CERTIFICATE OF SERVICE
`
`
`
`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
`
`
`I hereby certify, pursuant to 37 C.F.R. § 42.6, that a complete copy of the
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`attached PETITIONER’S SUPPLEMENTAL REPLY and related documents, are
`being served on the 25th day of September, 2017, by electronic mail on counsel of
`record for Patent Owner as follows:
`
`Vincent J. Rubino, III
`vrubino@brownrudnick.com
`Alfred R. Fabricant
`afabricant@brownrudnick.com
`Peter Lambrianakos
`plambrianakos@brownrudnick.com
`Shahar Harel
`sharel@brownrudnick.com
`Brown Rudnick LLP
`
`DATED: SEPTEMBER 25, 2017
`
`COOLEY LLP
`ATTN: Patent Docketing
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington, D.C. 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`
`
`
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`2
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