Atty Docket No. FABO-041/00US
`(309101-2121)
`
`
`
`
`IPR2016-01159
`U.S. Patent No. 8,694,657
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`FACEBOOK, INC.
`Petitioner
`
`v.
`
`WINDY CITY INNOVATIONS, LLC
`Patent Owner
`
`
`
`Case IPR2016-01159
`U.S. Patent No. 8,694,657
`
`
`
`
`
`PETITIONER FACEBOOK, INC.’S OBJECTIONS TO PATENT
`OWNER’S EVIDENCE PURSUANT TO 37 C.F.R. § 42.64(b)(1)
`
`
`(309101-2121)
`
`
`
`
`IPR2016-01159
`U.S. Patent No. 8,694,657
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`FACEBOOK, INC.
`Petitioner
`
`v.
`
`WINDY CITY INNOVATIONS, LLC
`Patent Owner
`
`
`
`Case IPR2016-01159
`U.S. Patent No. 8,694,657
`
`
`
`
`
`PETITIONER FACEBOOK, INC.’S OBJECTIONS TO PATENT
`OWNER’S EVIDENCE PURSUANT TO 37 C.F.R. § 42.64(b)(1)
`
`
`
`Atty Docket FABO-041/00US
`(309101-2121)
`
`
`
`
`
`IPR2016-01159
`U.S. Patent No. 8,694,657
`
`Pursuant to 37 C.F.R. § 42.64(b)(1), Petitioner Facebook, Inc. (“Petitioner”)
`
`objects to the admissibility of the following evidence submitted by Patent Owner
`
`Windy City Innovations LLC (“Patent Owner”) with its Response to Petition
`
`(Paper No. 22), filed March 31, 2017. These objections are made within five
`
`business days from the filing and service of the Patent Owner’s Response to
`
`Petition. Petitioner objects to the following documents on the following bases:
`
`Ex. 2005, Declaration of Jaime G. Carbonell, Ph.D.
`
`Petitioner objects to the exhibit because the opinions presented in the
`
`declaration are conclusory, there has not been an adequate showing that the
`
`testimony is the product of sufficient facts or data, or reliable principles or
`
`methods, and there is no indication that the testimony will help the Board
`
`understand the evidence or determine a fact in issue. FRE 401, 403, 702.
`
`Petitioner objects to this exhibit because the declarant is unqualified as an
`
`expert to provide technical opinions of a person having ordinary skill in the art.
`
`Thus, the declarant’s opinions present in the exhibit are inadmissible. FRE 702.
`
`Petitioner objects to the exhibit to the extent the Declaration relies on
`
`Exhibits 2008-2012 because they are inadmissible as discussed herein. FRE 401,
`
`402, 403, 801, 802, 901, 902. Moreover, the relied-upon exhibits are inadmissible
`
`as not qualified to be the basis for an expert opinion. FRE 703. Patent Owner has
`
`
`
`1
`
`
`
`Atty Docket FABO-041/00US
`(309101-2121)
`
`not established that these exhibits reasonably would be relied upon by experts in
`
`IPR2016-01159
`U.S. Patent No. 8,694,657
`
`
`
`
`the field.
`
`Petitioner objects to this exhibit as containing inadmissible hearsay that does
`
`not fall under any exception. FRE 801, 802, 803, 804, 805, 807. To the extent
`
`Patent Owner relies on the contents of this exhibit for the truth of the matter
`
`asserted, Petitioner objects to such contents as inadmissible hearsay. To the extent
`
`Patent Owner relies on the exhibits cited therein for the truth of the matter asserted,
`
`Petitioner objects to such contents as inadmissible hearsay under FRE 801 and 802.
`
`Petitioner objects to this exhibit as irrelevant and inadmissible. FRE 401,
`
`402. The contents of the exhibit are not relevant to claim construction, novelty,
`
`obviousness, or any issue related to the instituted ground. Nor do they correspond
`
`to any particular argument, and are thus not probative of any particular fact at
`
`issue.
`
`Petitioner objects to this exhibit as confusing the issues, misleading the fact-
`
`finders, and/or a waste of time because the contents of this exhibit are of minimal
`
`probative value and do not relate to claim construction, novelty, obviousness, or
`
`any issue related to the instituted ground. FRE 403. Petitioner objects to this
`
`exhibit as unfairly prejudicial. FRE 403.
`
`
`
`2
`
`
`
`Atty Docket FABO-041/00US
`(309101-2121)
`
`
`
`
`
`IPR2016-01159
`U.S. Patent No. 8,694,657
`
`Ex. 2008, IDS filed Jan. 14, 2017 for U.S. Patent Application No.
`
`14/246,965
`
`Petitioner objects to this exhibit as inadmissible hearsay because it includes
`
`out of court statements offered for their truth and does not fall within any
`
`exception to the rule against hearsay. FRE 801, 802. To the extent that the
`
`authors(s) of the underlying document comment on the perception of others, opine
`
`on the functionalities of a product or process, and/or comment on the purported
`
`state of the art, the exhibit is objected to as inadmissible hearsay. FRE 801, 802.
`
`The document purports to be a copy and the purported authors are not under oath
`
`and are not subject to cross-examination in this proceeding.
`
`Petitioner objects to this exhibit as irrelevant and inadmissible. FRE 401,
`
`402. The contents of the exhibit are not relevant to claim construction, novelty,
`
`obviousness, or any issue related to the instituted ground. The contents of the
`
`exhibit do not correspond to any particular argument, and are thus not probative of
`
`any particular fact at issue. Further, this exhibit is irrelevant because Patent Owner
`
`and/or Dr. Carbonell have not established that this exhibit reasonably would be
`
`relied upon by experts in the field. FRE 401, 402, 702.
`
`Petitioner objects to this exhibit as confusing the issues, misleading the fact-
`
`finders, and/or a waste of time because the cited portions are of minimal probative
`
`value and do not relate to claim construction, novelty, obviousness, or any issue
`
`
`
`3
`
`
`
`Atty Docket FABO-041/00US
`(309101-2121)
`
`related to the instituted ground. FRE 403. Petitioner objects to this exhibit as
`
`IPR2016-01159
`U.S. Patent No. 8,694,657
`
`
`
`
`unfairly prejudicial. FRE 403.
`
`Petitioner objects to this exhibit as not properly authenticated and not self-
`
`authenticating. FRE 901, 902. For at least these reasons, Petitioner objects to this
`
`exhibit.
`
`Ex. 2009, Bob Metcalfe, Predicting the Internet’s catastrophic collapse
`
`and ghost sites galore in 1996, InfoWorld, p.61 (Dec. 4, 1995)
`
`Petitioner objects to this exhibit as inadmissible hearsay because it includes
`
`out of court statements offered for their truth and does not fall within any
`
`exception to the rule against hearsay. FRE 801, 802. To the extent that the
`
`authors(s) of the underlying document comment on the perception of others, opine
`
`on the functionalities of a product or process, and/or comment on the purported
`
`state of the art, the exhibit is objected to as inadmissible hearsay. FRE 801, 802.
`
`The document purports to be a copy and the purported authors are not under oath
`
`and are not subject to cross-examination in this proceeding.
`
`Petitioner objects to this exhibit as irrelevant and inadmissible. FRE 401,
`
`402. The contents of the exhibit are not relevant to claim construction, novelty,
`
`obviousness, or any issue related to the instituted ground. The contents of the
`
`exhibit do not correspond to any particular argument, and are thus not probative of
`
`any particular fact at issue. Further, this exhibit is irrelevant because Patent Owner
`
`
`
`4
`
`
`
`Atty Docket FABO-041/00US
`(309101-2121)
`
`and/or Dr. Carbonell have not established that this exhibit reasonably would be
`
`IPR2016-01159
`U.S. Patent No. 8,694,657
`
`
`
`
`relied upon by experts in the field. FRE 401, 402, 702.
`
`Petitioner objects to this exhibit as confusing the issues, misleading the fact-
`
`finders, and/or a waste of time because the cited portions are of minimal probative
`
`value and do not relate to claim construction, novelty, obviousness, or any issue
`
`related to the instituted ground. FRE 403. Petitioner objects to this exhibit as
`
`unfairly prejudicial. FRE 403.
`
`Petitioner objects to this exhibit as not properly authenticated and not self-
`
`authenticating. FRE 901, 902. For at least these reasons, Petitioner objects to this
`
`exhibit.
`
`Ex. 2010, AOL could strike gold with IM patent, CNN.com. (Dec. 19,
`
`2002)
`
`Petitioner objects to this exhibit as inadmissible hearsay because it includes
`
`out of court statements offered for their truth and does not fall within any
`
`exception to the rule against hearsay. FRE 801, 802. To the extent that the
`
`authors(s) of the underlying document comment on the perception of others, opine
`
`on the functionalities of a product or process, and/or comment on the purported
`
`state of the art, the exhibit is objected to as inadmissible hearsay. FRE 801, 802.
`
`The document purports to be a copy and the purported authors are not under oath
`
`and are not subject to cross-examination in this proceeding.
`
`
`
`5
`
`
`
`Atty Docket FABO-041/00US
`(309101-2121)
`
`
`
`
`
`IPR2016-01159
`U.S. Patent No. 8,694,657
`
`Petitioner objects to this exhibit as irrelevant and inadmissible. FRE 401,
`
`402. The contents of the exhibit are not relevant to claim construction, novelty,
`
`obviousness, or any issue related to the instituted ground. The contents of the
`
`exhibit do not correspond to any particular argument, and are thus not probative of
`
`any particular fact at issue. Further, this exhibit is irrelevant because Patent Owner
`
`and/or Dr. Carbonell have not established that this exhibit reasonably would be
`
`relied upon by experts in the field. FRE 401, 402, 702.
`
`Petitioner objects to this exhibit as confusing the issues, misleading the fact-
`
`finders, and/or a waste of time because the cited portions are of minimal probative
`
`value and do not relate to claim construction, novelty, obviousness, or any issue
`
`related to the instituted ground. FRE 403. Petitioner objects to this exhibit as
`
`unfairly prejudicial. FRE 403.
`
`Petitioner objects to this exhibit as not properly authenticated and not self-
`
`authenticating. FRE 901, 902. For at least these reasons, Petitioner objects to this
`
`exhibit.
`
`Ex. 2011, U.S. Patent No. 6,449,344 to Yair Goldfinger et al.
`
`Petitioner objects to this exhibit as inadmissible hearsay because it includes
`
`out of court statements offered for their truth and does not fall within any
`
`exception to the rule against hearsay. FRE 801, 802. To the extent that the
`
`authors(s) of the underlying document comment on the perception of others, opine
`
`
`
`6
`
`
`
`Atty Docket FABO-041/00US
`(309101-2121)
`
`on the functionalities of a product or process, and/or comment on the purported
`
`IPR2016-01159
`U.S. Patent No. 8,694,657
`
`
`
`
`state of the art, the exhibit is objected to as inadmissible hearsay. FRE 801, 802.
`
`The document purports to be a copy and the purported authors are not under oath
`
`and are not subject to cross-examination in this proceeding.
`
`Petitioner objects to this exhibit as irrelevant and inadmissible. FRE 401,
`
`402. The contents of the exhibit are not relevant to claim construction, novelty,
`
`obviousness, or any issue related to the instituted ground. The contents of the
`
`exhibit do not correspond to any particular argument, and are thus not probative of
`
`any particular fact at issue. Further, this exhibit is irrelevant because Patent Owner
`
`and/or Dr. Carbonell have not established that this exhibit reasonably would be
`
`relied upon by experts in the field. FRE 401, 402, 702.
`
`Petitioner objects to this exhibit as confusing the issues, misleading the fact-
`
`finders, and/or a waste of time because the cited portions are of minimal probative
`
`value and do not relate to claim construction, novelty, obviousness, or any issue
`
`related to the instituted ground. FRE 403. Petitioner objects to this exhibit as
`
`unfairly prejudicial. FRE 403. For at least these reasons, Petitioner objects to this
`
`exhibit.
`
`Ex. 2012, The Computer and Information Science and Technology
`
`Abbreviations and Acronyms Dictionary, David W. South, CRC Press (6 May
`
`1994)
`
`
`
`7
`
`
`
`Atty Docket FABO-041/00US
`(309101-2121)
`
`
`
`
`
`IPR2016-01159
`U.S. Patent No. 8,694,657
`
`Petitioner objects to this exhibit as inadmissible hearsay because it includes
`
`out of court statements offered for their truth and does not fall within any
`
`exception to the rule against hearsay. FRE 801, 802. To the extent that the
`
`authors(s) of the underlying document comment on the perception of others, opine
`
`on the functionalities of a product or process, and/or comment on the purported
`
`state of the art, the exhibit is objected to as inadmissible hearsay. FRE 801, 802.
`
`The document purports to be a copy and the purported authors are not under oath
`
`and are not subject to cross-examination in this proceeding.
`
`Petitioner objects to this exhibit as irrelevant and inadmissible. FRE 401,
`
`402. The contents of the exhibit are not relevant to claim construction, novelty,
`
`obviousness, or any issue related to the instituted ground. The contents of the
`
`exhibit do not correspond to any particular argument, and are thus not probative of
`
`any particular fact at issue. Further, this exhibit is irrelevant because Patent Owner
`
`and/or Dr. Carbonell have not established that this exhibit reasonably would be
`
`relied upon by experts in the field. FRE 401, 402, 702.
`
`Petitioner objects to this exhibit as confusing the issues, misleading the fact-
`
`finders, and/or a waste of time because the cited portions are of minimal probative
`
`value and do not relate to claim construction, novelty, obviousness, or any issue
`
`related to the instituted ground. FRE 403. Petitioner objects to this exhibit as
`
`unfairly prejudicial. FRE 403.
`
`
`
`8
`
`
`
`Atty Docket FABO-041/00US
`(309101-2121)
`
`
`
`
`
`IPR2016-01159
`U.S. Patent No. 8,694,657
`
`Petitioner objects to this exhibit as not properly authenticated and not self-
`
`authenticating. FRE 901, 902. For at least these reasons, Petitioner objects to this
`
`exhibit.
`
`Respectfully submitted,
`
`
`/Heidi L. Keefe/
`Heidi L. Keefe
`Reg. No. 40,673
`Counsel for Petitioner
`Facebook, Inc.
`
`
`
`
`
`By:
`
`
`
`
`
`Dated: April 7, 2017
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`
`
`9
`
`
`
`
`
`
`
`Atty Docket FABO-041/00US
`(309101-2121)
`
`
`
`
`
`IPR2016-01159
`U.S. Patent No. 8,694,657
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify, pursuant to 37 C.F.R. § 42.6, that a complete copy of the
`attached PETITIONER FACEBOOK, INC.’S OBJECTIONS TO PATENT
`OWNER’S EVIDENCE PURSUANT TO 37 C.F.R. § 42.64(B)(1) and related
`documents, are being served on the 7th day of April, 2017, by electronic mail on
`counsel of record for the 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: APRIL 7, 2017
`
`COOLEY LLP
`ATTN: Patent Docketing
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington, D.C. 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`143984450 v1
`
`
`
`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
`
`
`
`
`
`10
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
