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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
`__________________________________________________________________
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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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`
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`U.S. Pat. No. 8,694,657
`Issue Date: April 8, 2014
`Title: REAL TIME COMMUNICATIONS SYSTEM
`__________________________________________________________________
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`PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE
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`Case No. IPR2016-011591
`_____________________________________________________________
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`1 Case No. IPR2017-00659 has been joined with this proceeding.
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`I.
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`II.
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`IPR2016-01159
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`U.S. Pat. No. 8,694,657
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`TABLE OF CONTENTS
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`Page
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`Introduction ...................................................................................................... 1
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`Ex. 1021, Second Declaration of Tal Lavian, Ph.D. ....................................... 1
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`a.
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`b.
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`c.
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`The new “other programs” arguments and supporting citations
`should be excluded from evidence.
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`The new “channels” arguments and supporting citations should
`be excluded from evidence
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`The new “private messages” arguments and supporting citations
`should be excluded from evidence
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`2
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`3
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`4
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`III. Conclusion ....................................................................................................... 5
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`i
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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 this motion to exclude
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`Petitioner Facebook Inc.’s evidence.
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`II. Ex. 1021, Second Declaration of Tal Lavian, Ph.D.
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`Certain portions of the reply declaration of Dr. Tal Lavian (Ex. 1021) should
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`also be excluded because the declaration includes evidence that exceeds the
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`propose scope of a petitioner's reply. FRE 401, 402, 403, and 37 C.F.R. §
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`42.23(b). Pursuant to 37 C.F.R. § 42.23(b), certain portions of the reply
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`declaration should be excluded because they contain citations, references, and
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`arguments provided for the first time in the reply and they go beyond the
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`permissible scope of a reply. These certain portions are not responsive to Patent
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`Owner's response and could have been presented in the Petition. Accordingly,
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`Petitioner's late inclusion of these certain portions are prejudicial to Patent Owner
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`because Patent Owner would have addressed these new citations, references, and
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`arguments in its preliminary response and/or response. Moreover, these certain
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`portions should be deemed attempted gamesmanship as Petitioner uses the Board
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`institution decision and Patent Owner's responses to perfect their arguments
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`impermissibly by changing the scope of the challenged grounds. The following
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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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`paragraphs contain examples of certain portions that should be excluded. Patent
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`Owner also respectfully requests that the Board exclude any other sections that
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`impermissibly change the scope of Petitioner's challenges and/or are not responsive
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`to the Patent Owner's response.
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`a.
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`The new “other programs” arguments and supporting citations
`should be excluded from evidence.
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`Regarding Exhibit 1021, ¶ 54 at lines 1–17, Petitioner presents new
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`arguments which exceed the scope of the petition, and are irrelevant, confusing,
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`and misleading with respect to the instituted grounds authorized for trial.
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`Additionally, this section amounts to an attempt to construe the “other programs”
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`limitation with new argument not previously presented in the petition. Indeed,
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`Petitioner did not provide a construction for “other programs” and any attempt to
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`do so now would be improper. 37 CFR 42.104(b)(3). None of Petitioner’s new
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`arguments are related to this original argument in the petition. Accordingly, the
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`Board should exclude this narrowly tailored section from evidence.
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`Regarding Exhibit 1021, ¶ 54 at lines 1–17, Petitioner presents new
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`arguments to allege the disclosure of the “other programs” limitations in the
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`Roseman reference. Petitioner supports its new arguments with new citations
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`which are absent, and lack suggestion, from the petition. Particularly, Petitioner
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`attempts to support its new arguments alleging the disclosure of “other programs”
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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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`at ¶ 54 at lines 17–22 with citations to Roseman at 12:1-5 and 12:9-10 and
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`discussion of Windows and Macintosh client software alternatives. Petitioner’s
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`new arguments amount to a drastic departure from its narrowly-tailored arguments
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`in the Petition, which are merely directed to “other programs” being the computer
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`programs associated with the various meeting or conference rooms maintained on
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`the host computer. Ex. 1002 at ¶ 73 . None of Petitioner’s new arguments are
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`related to this original argument in the petition. Accordingly, these narrowly
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`tailored sections of the reply declaration should be excluded from evidence.
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`b.
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`The new “channels” arguments and supporting citations should
`be excluded from evidence
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` Regarding Exhibit 1021, ¶ 74 at lines 1–6, Petitioner presents new
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`arguments which exceed the scope of the petition, and are irrelevant, confusing,
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`and misleading with respect to the instituted grounds authorized for trial.
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`Additionally, this section amounts to an attempt to construe the “channel”
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`limitation with new argument not previously presented in the petition. Indeed,
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`None of Petitioner’s new arguments are related to this original argument in the
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`petition. Accordingly, the Board should exclude this narrowly tailored section
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`from evidence.
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`Regarding Exhibit 1021, ¶ 74 at lines 1–6, Petitioner presents new
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`arguments to allege the disclosure of the “channel” limitation in the Roseman
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`IPR2016-01159
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`U.S. Pat. No. 8,694,657
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`reference. Petitioner supports its new arguments with new citations which are
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`absent, and lack suggestion, from the petition. Particularly, Petitioner attempts to
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`support its new arguments alleging the disclosure of “channel” at ¶ 74 at lines 1-6
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`with citations to Roseman at 11:10-17 and discussion of connections between
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`participator computers. Petitioner’s new arguments amount to a drastic departure
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`from its narrowly-tailored arguments in the Petition, which did not discuss the
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`“channel” limitation. None of Petitioner’s new arguments are related to this
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`original argument in the petition. Accordingly, these narrowly tailored sections of
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`the reply declaration should be excluded from evidence.
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`c.
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`The new “private messages” arguments and supporting citations
`should be excluded from evidence
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`Regarding Exhibit 1021, ¶ 75 at lines 4–10, Petitioner presents new
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`arguments which exceed the scope of the petition, and are irrelevant, confusing,
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`and misleading with respect to the instituted grounds authorized for trial. Indeed,
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`None of Petitioner’s new arguments are related to this original argument in the
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`petition. Accordingly, the Board should exclude this narrowly tailored section
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`from evidence.
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`Regarding Exhibit 1021, ¶ 75 at lines 4–10, Petitioner presents new
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`arguments to allege the disclosure of the “private messages” limitation in the
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`Roseman reference. Petitioner supports its new arguments with new citations
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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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`which are absent, and lack suggestion, from the petition. Particularly, Petitioner
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`attempts to support its new arguments alleging the disclosure of “private
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`messages” at ¶ 75 at lines 4-10 with citations to Roseman at 9:26–32, 15:35–39,
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`and 15:10–14 and discussion of notes that are created at one participator
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`computer, sent to the host computer, and received by the recipient
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`participator computer.. Petitioner’s new arguments amount to a drastic departure
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`from its narrowly-tailored arguments in the Petition, which did not discuss private
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`messages. Accordingly, these narrowly tailored sections of the reply declaration
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`should be excluded from evidence.
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`III. Conclusion
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`For at least the reasons presented herein, Patent Owner respectfully requests
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`exclusion of at least ¶ 54 at lines 1–17, ¶ 74 at lines 1–6, and ¶ 75 at lines 4–10 of
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`the reply declaration of Dr. Tal Lavian (Ex. 1021) from the evidentiary record.
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`Patent Owner also respectfully requests that the Board exercise its discretion to
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`exclude any other sections that it deems impermissibly change the scope of
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`Petitioner's authorized grounds for trial and/or are not responsive to the Patent
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`Owner's response.
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`Dated August 2, 2017
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`Respectfully submitted,
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`/Vincent J. Rubino, III/
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`IPR2016-01159
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`U.S. Pat. No. 8,694,657
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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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`6
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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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`A copy of PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE has
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`been served on Petitioner at the correspondence of the Petitioner as follows:
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`By Email:
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`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
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`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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