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`IPR2016-01159
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`U.S. Pat. No. 8,694,657
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`FACEBOOK INC.
`Petitioner
`v.
`
`WINDY CITY INNOVATIONS, LLC
`Patent Owner
`
`
`
`
`
`U.S. Pat. No. 8,694,657
`Issue Date: April 8, 2014
`Title: REAL TIME COMMUNICATIONS SYSTEM
`__________________________________________________________________
`
`PATENT OWNER’S OBJECTIONS TO
`PETITIONER’S REPLY EVIDENCE
`
`Case No. IPR2016-01159
`__________________________________________________________________
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`IPR2016-01159
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`U.S. Pat. No. 8,694,657
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`Pursuant to 37 C.F.R. § 42.64(b)(1), Patent Owner Windy City Innovations
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`LLC objects to the admissibility of the following evidence submitted by Petitioner
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`Facebook Inc. on July 13, 2017 with its Petitioner’s Reply. These objections are
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`timely as made within business days of service of the evidence. Patent Owner
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`objects to the evidence as follows:
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`Ex. 1017, Excerpts from Henry Korth, et al., Database Systems Concepts
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`(1991)
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`Patent Owner objects to this exhibit as inadmissible hearsay because it
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`includes out of court statements offered for their truth and does not fall within any
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`exception to the rule against hearsay. FRE 801, 802. To the extent that the
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`authors(s) of the underlying document comment on the perception of others, the
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`exhibit is objected to as inadmissible hearsay. FRE 801, 802. The document
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`purports to be a copy of a publication and the purported authors of the publication
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`are not under oath and are not subject to cross-examination in this proceeding.
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`Patent Owner objects to this exhibit as not properly authenticated and not
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`self-authenticating. FRE 901, 902. Patent Owner objects to this exhibit as not
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`properly authenticated because the document is not accompanied by any evidence
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`that the document is authentic. FRE 901. Patent Owner objects to this exhibit as
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`not self-authenticating . FRE 902. Patent Owner objects to this exhibit as not
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`being an original document, an authentic duplicate, or a document excepted from
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`IPR2016-01159
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`U.S. Pat. No. 8,694,657
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`the original document requirement. FRE 1001, 1002, 1003, 1004. To the extent
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`Petitioner relies on the contents of this exhibit to prove the content of the original
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`document, Patent Owner objects to the exhibit as not being the original or an
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`admissible duplicate. The document is not an original document, nor does any
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`statute obviate requirement of the original document. FRE 1002. Even if the
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`Board deems a duplicate of the document to be admissible, which it is not, this
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`document is not a certified copy and genuine issues exist concerning the origin
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`and/or authenticity of this document. FRE 1003. Given the circumstances, this
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`exhibit is not excused from the original document requirement. FRE 1004.
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`Ex. 1018, Excerpts from IEEE Internet Computer, “Bob Metcalfe on
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`What’s Wrong with the Internet: It’s the Economy, Stupid” (March/April
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`1997)
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`Patent Owner objects to this exhibit as inadmissible hearsay because it
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`includes out of court statements offered for their truth and does not fall within any
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`exception to the rule against hearsay. FRE 801, 802. To the extent that the
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`authors(s) of the underlying document comment on the perception of others, the
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`exhibit is objected to as inadmissible hearsay. FRE 801, 802. The document
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`purports to be a copy of a publication and the purported authors of the publication
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`are not under oath and are not subject to cross-examination in this proceeding.
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`Patent Owner objects to this exhibit as irrelevant, confusing the issues,
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`IPR2016-01159
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`U.S. Pat. No. 8,694,657
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`misleading the fact-finders, and unfairly prejudicial. FRE 401, 402, 403. Patent
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`Owner objects to this exhibit as incomplete. Petitioner’s excerpts omit portions of
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`the underlying document which could contain contradictory disclosures.
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`Patent Owner objects to this exhibit as not properly authenticated and not
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`self-authenticating. FRE 901, 902. Patent Owner objects to this exhibit as not
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`properly authenticated because the document is not accompanied by any evidence
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`that the document is authentic. FRE 901. Patent Owner objects to this exhibit as
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`not self-authenticating . FRE 902. Patent Owner objects to this exhibit as not
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`being an original document, an authentic duplicate, or a document excepted from
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`the original document requirement. FRE 1001, 1002, 1003, 1004. To the extent
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`Petitioner relies on the contents of this exhibit to prove the content of the original
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`document, Patent Owner objects to the exhibit as not being the original or an
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`admissible duplicate. The document is not an original document, nor does any
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`statute obviate requirement of the original document. FRE 1002. Even if the
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`Board deems a duplicate of the document to be admissible, which it is not, this
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`document is not a certified copy and genuine issues exist concerning the origin
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`and/or authenticity of this document. FRE 1003. Given the circumstances, this
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`exhibit is not excused from the original document requirement. FRE 1004.
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`Ex. 1019, Reuters article entitled “Sage who warned of Net’s collapse
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`eats his words (April 11, 1997)
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`IPR2016-01159
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`U.S. Pat. No. 8,694,657
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`Patent Owner objects to this exhibit as inadmissible hearsay because it
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`includes out of court statements offered for their truth and does not fall within any
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`exception to the rule against hearsay. FRE 801, 802. To the extent that the
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`authors(s) of the underlying document comment on the perception of others, the
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`exhibit is objected to as inadmissible hearsay. FRE 801, 802. The document
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`purports to be a copy of a publication and the purported authors of the publication
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`are not under oath and are not subject to cross-examination in this proceeding.
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`Patent Owner objects to this exhibit as irrelevant and inadmissible. FRE
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`401, 402.
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`Patent Owner objects to this exhibit as not properly authenticated and not
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`self-authenticating. FRE 901, 902. Patent Owner objects to this exhibit as not
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`properly authenticated because the document is not accompanied by any evidence
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`that the document is authentic. FRE 901. Patent Owner objects to this exhibit as
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`not self-authenticating . FRE 902. Patent Owner objects to this exhibit as not
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`being an original document, an authentic duplicate, or a document excepted from
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`the original document requirement. FRE 1001, 1002, 1003, 1004. To the extent
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`Petitioner relies on the contents of this exhibit to prove the content of the original
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`document, Patent Owner objects to the exhibit as not being the original or an
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`admissible duplicate. The document is not an original document, nor does any
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`statute obviate requirement of the original document. FRE 1002. Even if the
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`IPR2016-01159
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`U.S. Pat. No. 8,694,657
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`Board deems a duplicate of the document to be admissible, which it is not, this
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`document is not a certified copy and genuine issues exist concerning the origin
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`and/or authenticity of this document. FRE 1003. Given the circumstances, this
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`exhibit is not excused from the original document requirement. FRE 1004.
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`Ex. 1020, Excerpts from Mary Loomis, The Database Book (1988)
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`Patent Owner objects to this exhibit as inadmissible hearsay because it
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`includes out of court statements offered for their truth and does not fall within any
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`exception to the rule against hearsay. FRE 801, 802. To the extent that the
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`authors(s) of the underlying document comment on the perception of others, the
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`exhibit is objected to as inadmissible hearsay. FRE 801, 802. The document
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`purports to be a copy of a publication and the purported authors of the publication
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`are not under oath and are not subject to cross-examination in this proceeding.
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`Patent Owner objects to this exhibit as irrelevant, confusing the issues,
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`misleading the fact-finders, and unfairly prejudicial. FRE 401, 402, 403. Patent
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`Owner objects to this exhibit as incomplete. Petitioner’s excerpts omit portions of
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`the underlying document which could contain contradictory disclosures.
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`Patent Owner objects to this exhibit as not properly authenticated and not
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`self-authenticating. FRE 901, 902. Patent Owner objects to this exhibit as not
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`properly authenticated because the document is not accompanied by any evidence
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`IPR2016-01159
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`U.S. Pat. No. 8,694,657
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`that the document is authentic. FRE 901. Patent Owner objects to this exhibit as
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`not self-authenticating . FRE 902. Patent Owner objects to this exhibit as not
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`being an original document, an authentic duplicate, or a document excepted from
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`the original document requirement. FRE 1001, 1002, 1003, 1004. To the extent
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`Petitioner relies on the contents of this exhibit to prove the content of the original
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`document, Patent Owner objects to the exhibit as not being the original or an
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`admissible duplicate. The document is not an original document, nor does any
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`statute obviate requirement of the original document. FRE 1002. Even if the
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`Board deems a duplicate of the document to be admissible, which it is not, this
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`document is not a certified copy and genuine issues exist concerning the origin
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`and/or authenticity of this document. FRE 1003. Given the circumstances, this
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`exhibit is not excused from the original document requirement. FRE 1004.
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`Ex. 1021, Second Declaration of Tal Lavian, Ph.D.
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`Patent Owner objects to this exhibit to the extent the Declaration relies on
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`Exhibits 1017, 1018, 1019, and 1020 because they are inadmissible as discussed
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`herein. FRE 401, 402, 403, 801, 802, 901, 902, 1001, 1002, 1003, and 1004.
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`Patent Owner further objects to this exhibit to the extent the Declaration relies on
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`exhibits having outstanding objections which were served on December 22, 2016.
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`For the purposes of objecting to this exhibit, the objections served on December
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`22, 2016 are incorporated by reference.
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`IPR2016-01159
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`U.S. Pat. No. 8,694,657
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`Patent Owner objects to this exhibit as containing inadmissible hearsay that
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`does not fall under any exception. FRE 801, 802, 803, 804, 805, 807. To the
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`extent Petitioner relies on the contents of this exhibit for the truth of the matter
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`asserted, Patent Owner objects to such contents as inadmissible hearsay. To the
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`extent Petitioner relies on the exhibits cited therein (e.g., Exhibits 1017, 1018,
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`1019, and 1020) for the truth of the matter asserted, Patent Owner objects to such
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`contents as inadmissible hearsay under FRE 801 and 802.
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`Patent Owner objects to this exhibit as irrelevant, confusing the issues,
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`misleading the fact-finders, a waste of time, and unfairly prejudicial because it
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`includes evidence that exceeds the proper scope of a petitioner’s reply. FRE 401,
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`402, 403. Pursuant to 37 C.F.R. § 42.23(b), Patent Owner objects to the
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`submission of this reply declaration because it contains references and arguments
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`provided for the first time in the reply and it goes beyond the permissible scope of
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`a reply submission. The evidence, as identified below, could have been presented
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`in the Petition and its late inclusion is prejudicial to Patent Owner. For example,
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`the following portions of Dr. Lavian’s second declaration constitute new evidence
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`which exceeds the proper scope of a petitioner’s reply and/or depends from
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`impermissible new evidence under at least FRE 401, 402, 403, and 37 C.F.R. §
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`42.23(b):
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` Exhibit 1021, ¶ 12 at lines 8–13, regarding the new Korth document
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`IPR2016-01159
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`U.S. Pat. No. 8,694,657
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`and the definition of a DBMS.
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` Exhibit 1021, ¶ 13 at lines 1-5, regarding the understanding of a
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`person of ordinary skill in the art and the reliance of software
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`programs on a DBMS.
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` Exhibit 1021, ¶ 13at lines 5–14 and ¶ 14, lines 1–13, regarding the
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`new Loomis document.
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` Exhibit 1021, ¶ 37 at lines 2-7, regarding a relational database and
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`previously non-alleged attributes and definitions of databases in
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`Rissanen, e.g. 5:9-14, 5:24-48, 8:8-13.
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` Exhibit 1021, ¶ 54 at lines 1–17, regarding new arguments on the
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`“other programs” limitation.
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` Exhibit 1021, ¶ 74 at lines 1–6, regarding new arguments directed to
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`the channel limitation being met by a “connection” instead of a
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`“room” and the new citation to Roseman 11:10–17.
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` Exhibit 1021, ¶ 75 at lines 4–10, regarding new arguments and
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`citations to Roseman 9:26–32, 15:35–39, and 15:10–14.
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` Exhibit 1021, ¶ 76 at lines 6–8, regarding new arguments and citations
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`to Roseman 14:53–61 and 14:53–67.
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`IPR2016-01159
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`U.S. Pat. No. 8,694,657
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`Moreover, Patent Owner objects to the second Lavian declaration as
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`irrelevant, misleading the fact-finders, confusing the issues, and unfairly
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`prejudicial because it seeks to import arguments and grounds from other Petitions
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`and Declarations into this proceeding. FRE 401, 402, 403, and 37 C.F.R. §
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`42.23(b). In one of many examples, Dr. Lavian takes arguments directed to the
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`“software alternatives” limitations in IPR2016-01158 and IPR2016-01159 and
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`applies the arguments to different limitations directed to “other programs” in
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`IPR2016-01156. See Exhibit 1021 at ¶ 54. Accordingly, the declaration exceeds
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`its permissible scope.
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`Dated July 20, 2017
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`Respectfully submitted,
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`/Vincent J. Rubino, III /
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`Vincent J. Rubino, III (Reg. No. 68,594)
`Lead Counsel for Patent Owner
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Tel: 212-209-4800
`Fax: 212-209-4801
`Email: vrubino@brownrudnick.com
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`IPR2016-01159
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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 OBJECTIONS TO PETITIONER’S
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`REPLY EVIDENCE has been served on Petitioner at the correspondence of the
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`Petitioner as follows:
`
`By Email:
`
`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:
`
`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
`
`
`July 20, 2017
`
`
`
`
`By Email:
`
`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
`
`By Email:
`
`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
`
` /Vincent J. Rubino, III/
`
`
`Vincent J. Rubino, III (Reg. No. 68,594)
`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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