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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
`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
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`FACEBOOK INC.
`Petitioner
`v.
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`WINDY CITY INNOVATIONS, LLC
`Patent Owner
`
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`
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`U.S. Pat. No. 8,694,657
`Issue Date: April 8, 2014
`Title: REAL TIME COMMUNICATIONS SYSTEM
`__________________________________________________________________
`
`PATENT OWNER’S MOTION FOR OBSERVATIONS ON CROSS
`EXAMINATION OF FACEBOOK’S REPLY WITNESS DR. LAVIAN
`
`Case No. IPR2016-011591
`_________________________________________________________________
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`1 Case No. IPR2017-00659 has been joined with this proceeding.
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`EXHIBIT LIST
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`IPR2016-01159
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`U.S. Pat. No. 8,694,657
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`Exhibit #
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`Exhibit Name
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`2001
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`2002
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`2003
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`2004
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`2005
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`2006
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`2007
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`2008
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`2009
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`2010
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`2011
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`2012
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`2013
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`2014
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`Declaration of Chandrajit Bajaj, Ph.D.
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`Merriam-Webster’s Collegiate Dictionary, Tenth Edition
`(1994)
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`Microsoft Press Computer Dictionary, Third Edition (1997)
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`Macmillan Encyclopedia of Computers (Gary G. Bitter ed.,
`Macmillan Publ. Co. 1992)
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`Declaration of Jaime G. Carbonell, Ph.D.
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`Deposition Transcript of Tal Lavian, Ph.D. dated March 8,
`2017
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`Errata Sheet to Deposition Transcript of Tal Lavian, Ph.D.
`March 8, 2017 deposition
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`IDS filed Jan. 14, 2017 for U.S. Patent Application No.
`14/246,965
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`Bob Metcalfe, Predicting the Internet’s catastrophic collapse
`and ghost sites galore in 1996, InfoWorld, p.61 (Dec. 4, 1995)
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`AOL could strike gold with IM patent, CNN.com. (Dec. 19,
`2002)
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`U.S. Patent No. 6,449,344 to Yair Goldfiner et al.
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`Encyclopedic Dictionary of Information Technology and
`Systems, A. E. Cawkell, De Gruyter Saur, (October 2013)
`7/20/17 Deposition Transcript of Dr. Tal Lavian, Ph.D.
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`Exhibit 9 to the 7/20/17 Deposition of Dr. Lavian; S. Floyd &
`V. Paxson, Why We Don't Know How to Simulate the Internet,
`Dec. 1997, Proceedings of the 1997 Winter Simulation
`Conference.
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`I.
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`Introduction
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`IPR2016-01159
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`U.S. Pat. No. 8,694,657
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`Pursuant to the Board’s scheduling order2 (Paper No. 8), Patent Owner
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`Windy City Innovations LLC respectfully submits observations on the July 20,
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`2017 cross-examination of Petitioner Facebook Inc.’s (“Petitioner”) reply witness,
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`Tal Lavian, Ph.D.
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`II. Observations on the Cross-Examination of Tal Lavian, Ph.D.
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`Exhibit 2013 is a copy of the cross-examination transcript of Dr. Tal Lavian,
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`Ph.D. Exhibits 1017, 108, 1019, 1020 and 2014 were referenced during the cross
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`examination of Dr. Lavian on his Second Declaration (Exhibit 1021) filed in
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`support of Petitioner’s Reply.
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`a. Observations Relevant to any Association between Keys and
`Invitations in Roseman
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`In Exhibit 2013, on page 13, lines 11 through 23, Dr. Lavian testified that in
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`the Roseman system a key does not necessarily need to be associated with an
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`invitation. This testimony is relevant because in Facebook’s original petition, it
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`stated that keys (without any limitation) disclose the token of the ’657 Patent.
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`Petition at 11.
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`b. Observations Relevant to Bob Metcalfe being a Leading Figure with
`Respect to the Internet
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`2 Due Date 4 remains unaffected by the filing of the parties’ scheduling stipulations and the Board’s revised
`scheduling order in this case.
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`1
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`IPR2016-01159
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`U.S. Pat. No. 8,694,657
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`In Exhibit 2013, on page 14, lines 16 through page 15, line 1 when
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`questioned whether Bob Metcalfe was a leading expert in 1996 with respect to
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`Internet traffic, Dr. Lavian testified that Dr. Metcalfe was in fact a respectable
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`credentialed person. This testimony is relevant because it provides evidence that a
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`person of ordinary skill in the art would have taken Metcalfe’s prediction seriously
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`in 1996.
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`c. Observations Relevant to Article entitled “Sage who warned of Net’s
`Collapse eats his words.”
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`In Exhibit 2013, on page 24, lines 11 through 19 Dr. Lavian testified with
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`respect to Exhibit 1019. Dr. Lavian did not dispute Metcalfe’s observations from
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`1997 with respect to significant network outages that had occurred in 1996. This
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`testimony is relevant because it shows the degree that Metcalfe’s prediction did
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`come true.
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`d. Observations Relevant to Article entitled “Bob Metcalfe on What’s
`Wrong with the Internet.”
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`In Exhibit 2013, on page 27, lines 13 through page 28, line 2, Dr. Lavian
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`testified with respect to Exhibit 1018. Dr. Lavian did not dispute that Metcalfe’s
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`offered a reasonable fear about the governance and management of the Internet in
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`the 1997 timeframe. This testimony is relevant because it shows the part of the
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`basis of Metcalfe’s prediction was reasonable.
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`e. Observations Relevant to Books Authored by Loomis and Korth
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`2
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`IPR2016-01159
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`U.S. Pat. No. 8,694,657
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`In Exhibit 2013, on pages 38 line 3 to 18 and pages 39 lines 16 to 23, Dr.
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`Lavian testified with respect to Exhibits 1017 and 1020 respectively. Exhibit 1017
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`is Database System Concepts authored by Henry Korth and Exhibit 1020 is The
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`Database Book by Mary Loomis. Dr. Lavian testified that to the best of his
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`knowledge the Korth book was published in 1991 and that he did not research if
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`there were later editions. Similarly, Dr. Lavian testified that to the best of his
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`knowledge the Loomis book was published in 1987 and that he did not research if
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`there were later editions. This testimony is relevant because it casts doubt on
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`whether more recent books during the relevant year of 1996 by these writers would
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`provide the same information.
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`f. Observations Relevant to Video Traffic on the Internet in 1996
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`In Exhibit 2013, on page 40, lines 6 through 24, and page 49, lines 17 to
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`page 51, line 9, Dr. Lavian testified regarding Exhibit 2014, an article entitled Why
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`We Don't Know How to Simulate the Internet. Dr. Lavian testified that he
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`recognized this article as one that was used as part of a networking examination in
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`his Ph.D. program and is typically used at top universities. Dr. Lavian
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`acknowledged that the article states that multicast video traffic appeared poised to
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`explode a few years before 1997. Dr. Lavian did not dispute that such traffic had
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`not exploded in that timeframe. This testimony is relevant because it provides
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`added information to evaluate Dr..Lavian’s reliance on Vetter to indicate that
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`IPR2016-01159
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`U.S. Pat. No. 8,694,657
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`videoconferencing was becoming increasingly frequent on the Internet around
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`1996. Ex. 1021 at ¶ 21.
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`Dated August 2, 2017
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`Respectfully submitted,
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`/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
`Email: vrubino@brownrudnick.com
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`4
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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 MOTION FOR OBSERVATIONS ON
`
`CROSS EXAMINATION OF FACEBOOK’S REPLY WITNESS DR. LAVIAN
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`has been served on Petitioner at the correspondence of the 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
`
`
`Dated August 2, 2017
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`By Email:
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`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
`Email: vrubino@brownrudnick.com
`
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