Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 40
`Entered: August 14, 2017
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC.,
`Petitioner,
`
`v.
`
`WINDY CITY INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`IPR2016-01156; Patent 8,458,245 B11
`IPR2016-01159; Patent 8,694,657 B12
`____________
`
`
`
`Before KARL D. EASTHOM, DAVID C. MCKONE, and J. JOHN LEE,
`Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`AMENDED SCHEDULING ORDER
`
`
`1 Case IPR2017-00709 has been joined with this proceeding.
`2 Case IPR2017-00659 has been joined with this proceeding.
`
`
`
`
`Tel: 571-272-7822
`
`Paper 40
`Entered: August 14, 2017
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC.,
`Petitioner,
`
`v.
`
`WINDY CITY INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`IPR2016-01156; Patent 8,458,245 B11
`IPR2016-01159; Patent 8,694,657 B12
`____________
`
`
`
`Before KARL D. EASTHOM, DAVID C. MCKONE, and J. JOHN LEE,
`Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`AMENDED SCHEDULING ORDER
`
`
`1 Case IPR2017-00709 has been joined with this proceeding.
`2 Case IPR2017-00659 has been joined with this proceeding.
`
`
`
`
`
`IPR2016-01156; Patent 8,458,245 B1
`IPR2016-01159; Patent 8,694,657 B1
`
`On July 31, 2017, we instituted a trial in IPR2017-00659 and joined it
`to IPR2016-01159. IPR2016-01159, Paper 34. On August 1, 2017, we
`instituted a trial in IPR2017-00709 and joined it to IPR2016-01156.
`IPR2016-01156, Paper 34. On August 2, 2017, via email, we directed the
`parties to meet and confer to propose, by August 9, 2017, agreed reasonable
`adjustments to the schedule of the joined cases to accommodate the claims
`newly challenged in the joinder petitions, and an agreed proposal on the
`scope of additional discovery, if requested, or, if the parties could not reach
`agreement, to submit competing proposals. The parties did not reach
`agreement and submitted competing proposals by email. The parties
`propose as follows:
`Petitioner’s Proposal
`Patent Owner shall submit a Supplemental Response (no more
`than three pages) by September 11, followed by the Petitioner’s
`Supplemental Reply (no more than three pages) on September
`25. The Supplemental Response and Supplemental Reply shall
`be limited to the joined claims and, with respect to those claims,
`identifying where in previously-filed Patent Owner Responses or
`Petitions
`the
`limitations
`recited
`in
`those claims were
`addressed. No new evidence may be presented.
`Patent Owner’s Proposed Modifications to the Schedule
`Patent Owner proposes no changes to the existing due dates,
`including the hearing date. Patent Owner proposes the following
`additions to the schedule for supplemental briefing, which shall
`be limited solely to the newly-added claims from IPR2017-
`00709 and -00659, now joined to IPR2016-01156, -01159,
`respectively.
`Patent Owner will submit a Supplemental Response (20-pages
`limit) by September 11. Petitioner may submit a Supplemental
`Reply (10-page limit) by September 25. Depending on whether
`Patent Owner and/or Petitioner submit supporting evidence with
`
`2
`
`
`
`IPR2016-01156; Patent 8,458,245 B1
`IPR2016-01159; Patent 8,694,657 B1
`their briefs, additional dates are provided for motions and
`responses regarding observations and excluding evidence.
`Patent Owner’s proposed schedule is outlined in the table
`below.
` Proposed Schedule in IPR2016-01156, -01159
`Due Date 5
`-Resp. to Observations
`8/16/2017
`(unchanged)
`-Reply to Mot. to Exclude
`Due Date 6
`-Reply to Mot. to Exclude
`(DD6);
`(unchanged)
`Due Date 1A
`
`8/23/2017
`
`9/11/2017
`
`9/25/2017
`
`10/5/2017
`
`10/12/2017
`
`10/17/2017
`
`
`Due Date 2A
`
`Due Date 4A
`
`Due Date 5A
`
`Due Date 6A
`
`-PO Supplemental Response,
`-PO Motion to Amend Joined
`Claims
`-Petitioner’s Supplemental
`Reply
`-Petitioner's Supplemental
`Opposition to Supplemental
`Motion to Amend
`-Motion for Observations on
`supplemental cross-
`examinations
`-Motion to Exclude evidence
`submitted with supplemental
`briefing
`-Response to supplemental
`observations
`-Opposition to motion to
`exclude evidence submitted
`with supplemental briefing
`-Reply to opposition to motion
`to exclude evidence submitted
`with supplemental briefing
`
`3
`
`
`
`IPR2016-01156; Patent 8,458,245 B1
`IPR2016-01159; Patent 8,694,657 B1
`Due Date 7
`Oral Hearing
`(unchanged)
`
`10/19/2017
`
`
`As can be seen, the parties agree on dates for submitting Patent
`Owner’s response to the petitions submitted in IPR2017-00659 and
`IPR2017-00709 (“the joinder petitions”) and Petitioner’s corresponding
`replies to those responses (September 11, 2017, and September 25, 2017,
`respectively). The parties also agree that any additional briefing and
`discovery will be limited to the claims newly challenged in the joinder
`petitions. The parties do not agree, however, on page limits for those papers
`or the allowed scope. The parties also do not agree on the scope of
`additional discovery to accommodate the joinder petitions. Petitioner would
`preclude new evidence and limit Patent Owner to identifying where, in
`Patent Owner’s previous responses, particular claim limitations were
`addressed. Patent Owner’s proposal contemplates additional evidence and
`depositions, but does not provide specificity. It also limits Patent Owner to
`addressing the newly-challenged claims, but does not limit Patent Owner to
`referencing its earlier responses. Patent Owner’s proposal also provides
`adjustments to the schedule for a motion to amend, observations (in the
`event of new depositions), and motions to exclude as to the joinder petitions,
`while Petitioner is silent as to those dates.
`We conclude that Patent Owner’s proposal is reasonable and
`Petitioner’s proposal is unreasonable. Focusing on IPR2016-01159 and
`IPR2017-00659, Petitioner filed 68 pages of briefing and over eighty pages
`of declaration testimony as part of the joinder petition.3 IPR2017-00659,
`
`
`3 The same issues are present in IPR2016-01156 and IPR2017-00709.
`
`4
`
`
`
`IPR2016-01156; Patent 8,458,245 B1
`IPR2016-01159; Patent 8,694,657 B1
`Paper 2, Ex. 1002. In granting joinder, we noted that the joinder petition
`raised issues very similar to those raised in the original petition. IPR2017-
`01159, Paper 34, 8–9. Nevertheless, the issues are not identical. The newly-
`challenged claims are similar to those previously challenged, but not the
`same. Likewise, the new testimonial evidence Petitioner advances is similar,
`but not the same as, that previously introduced. Patent Owner should be
`given an opportunity to respond, introduce evidence of its own, and
`challenge Petitioner’s new evidence. See 35 U.S.C. § 316(a)(8). A response
`limited to 3 pages with no additional evidence and limited to referencing
`prior papers effectively would deny Patent Owner a response under these
`circumstances. Thus, Petitioner’s proposal is unreasonable on its face.
`On the other hand, Patent Owner’s proposed limit of 20 pages allows
`for a meaningful response without significantly adding to the complexity of
`the case. Patent Owner’s proposed schedule also provides timing for
`additional discovery, provides for objections to that discovery, and
`contemplates Patent Owner’s right to file a motion to amend the claims first
`challenged in IPR2017-00709.4 See 35 U.S.C. §§ 316(a)(5), 316(a)(9).
`As to limits on any additional depositions, we direct the parties to
`meet and confer and reach agreement on the time and location. See
`37 C.F.R. § 42.53(d)(2). We remind Petitioner that, in granting its joinder
`petitions, we accepted its representations that it would agree to “reasonable
`and appropriate” adjustments to the schedule. IPR2016-01159, Paper 34,
`10. Given the tight time frames remaining in these proceedings, we
`recognize that the requirement that cross-examination should take place
`
`
`4 Because the ’657 patent is expired, no motion to amend is available in
`IPR2016-01159.
`
`5
`
`
`
`IPR2016-01156; Patent 8,458,245 B1
`IPR2016-01159; Patent 8,694,657 B1
`more than a week before the filing date for a paper in which it is to be used
`(37 C.F.R. § 42.53(d)(2)) may not be feasible, and we waive that
`requirement.
`Regarding any motion to amend the newly-challenged claims in
`IPR2016-01156, we remind Patent Owner that it must confer with the Board
`before filing such a motion and should do so at least 10 business days before
`Due Date 1A (Sept. 11, 2017). See IPR2016-01156, Paper 8, 3.
`No teleconference is necessary to discuss these issues at this time.
`We accept Patent Owner’s proposal and modify the schedule in IPR2016-
`01156 and IPR2016-01159 accordingly.
`
`For the reasons given, it is
`ORDERED that the schedule in IPR2016-01156 and IPR2016-01159
`is modified as set forth in the following Due Date Appendix.
`
`
`
`
`6
`
`
`
`IPR2016-01156; Patent 8,458,245 B1
`IPR2016-01159; Patent 8,694,657 B1
`DUE DATE APPENDIX
`
`DUE DATE 5 ......................................................................... August 16, 2017
`Response to observation (Original IPR2016-01156 and IPR2016-
`01159 proceedings)
`Opposition to motion to exclude (Original IPR2016-01156 and
`IPR2016-01159 proceedings)
`
`DUE DATE 6 ......................................................................... August 23, 2017
`Reply to opposition to motion to exclude (Original IPR2016-01156
`and IPR2016-01159 proceedings)
`
`DUE DATE 1A (joined proceedings) ............................... September 11, 2017
`Patent owner’s response to the joinder petition
`Patent Owner’s motion to amend the joined claims (IPR2016-01156
`only)
`
`DUE DATE 2A (joined proceedings) ............................... September 25, 2017
`Petitioner’s reply to patent owner’s response to joinder petition
`Petitioner’s opposition to motion to amend the joined claims
`(IPR2016-01156 only)
`
`DUE DATE 4A (joined proceedings) ..................................... October 5, 2017
`Motion for observation regarding supplemental cross-examination of
`reply witness
`Motion to exclude evidence submitted with joinder petition, response
`to joinder petition, and reply to patent owner’s response to
`joinder petition
`
`DUE DATE 5A (joined proceedings) ................................... October 12, 2017
`Response to observation regarding supplemental cross-examination of
`reply witness
`Opposition to motion to exclude evidence submitted with joinder
`petition, response to joinder petition, and reply to patent owner’s
`response to joinder petition
`
`7
`
`
`
`IPR2016-01156; Patent 8,458,245 B1
`IPR2016-01159; Patent 8,694,657 B1
`DUE DATE 6A (joined proceedings) ................................... October 17, 2017
`Reply to opposition to motion to exclude evidence submitted with
`joinder petition, response to joinder petition, and reply to patent
`owner’s response to joinder petition
`
`DUE DATE 7 ...................................................................... October 19, 2017
`Oral argument
`
`
`8
`
`
`
`IPR2016-01156; Patent 8,458,245 B1
`IPR2016-01159; Patent 8,694,657 B1
`PETITIONER:
`
`Heidi L. Keefe
`Phillip E. Morton
`Andrew C. Mace
`Daniel J. Knauss
`Mark R. Weinstein
`COOLEY LLP
`hkeefe@cooley.com
`pmorton@cooley.com
`amace@cooley.com
`dknauss@cooley.com
`mweinstein@cooley.com
`
`
`PATENT OWNER:
`
`Vincent J. Rubino, III
`Peter Lambrianakos
`Alfred R. Fabricant
`Shahar Harel
`BROWN RUDNICK LLP
`vrubino@brownrudnick.com
`plambrianakos@brownrudnick.com
`afabricant@brownrudnick.com
`sharel@brownrudnick.com
`
`
`
`9
`
`
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