Atty Docket No. FABO-041/00US
`(309101-2121)
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`IPR2016-01159
`U.S. Patent 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
`
`
`
`FACEBOOK, INC.
`Petitioner
`
`v.
`
`WINDY CITY INNOVATIONS, LLC
`Patent Owner
`
`
`Case IPR2016-011591
`U.S. Patent No. 8,694,657
`
`
`
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`PETITIONER’S OPPOSITION TO MOTION TO EXCLUDE
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`1 Case IPR2017-00659 has been joined with this proceeding.
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`(309101-2121)
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`IPR2016-01159
`U.S. Patent 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
`
`
`Case IPR2016-011591
`U.S. Patent No. 8,694,657
`
`
`
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`PETITIONER’S OPPOSITION TO MOTION TO EXCLUDE
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`
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`1 Case IPR2017-00659 has been joined with this proceeding.
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`Atty Docket No. FABO-041/00US
`(309101-2121)
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`IPR2016-01159
`U.S. Patent No. 8,694,657
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`Petitioner Facebook, Inc. respectfully submits this Opposition to Patent
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`Owner Windy City Innovations LLC’s Motion to Exclude (Paper No. 39
`
`(“Motion”)).
`
`I.
`
`INTRODUCTION
`Patent Owner’s Motion seeks to have excluded certain portions of the
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`Second Declaration of Tal Lavian, Ph.D. (Ex. 1021) because “they contain
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`citations, references, and arguments provided for the first time in the reply and they
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`go beyond the permissible scope of a reply.” (Mot. at 1.) Patent Owner’s Motion
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`should be denied in its entirety.
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`First, a motion to exclude is not the proper vehicle for a complaint about
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`arguments and supporting evidence being outside the proper scope of a reply.
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`Second, even if the Board were to consider the substance of the Motion, the
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`challenged portions of Dr. Lavian’s declaration are clearly within the proper scope
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`of a reply and otherwise admissible, and Patent Owner falls far short of meeting its
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`burden of establishing inadmissibility.2
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`2 The Motion also fails to “identify the objections in the record” as required by 37
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`C.F.R. § 42.64(c).
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`
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`1
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`Atty Docket No. FABO-041/00US
`(309101-2121)
`II.
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`IPR2016-01159
`U.S. Patent No. 8,694,657
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`PATENT OWNER’S MOTION SHOULD BE DENIED BECAUSE IT
`IS PROCEDURALLY IMPROPER
`A proper motion to exclude should be directed to the admissibility of
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`evidence under the Federal Rules of Evidence or other law governing the
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`admissibly of evidence, and not to issues relating to the timing or scope of that
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`evidence. Vibrant Media v. Gen. Elec. Co., No. IPR2013-00172, Final Written
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`Decision, Paper 50 at 41 (P.T.A.B. July 28, 2014), citing 37 C.F.R. § 42.64(c) and
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`Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,767; Canon Inc. v. Papst
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`Licensing Gmbh & Co. KG, No. IPR2016-01211, Paper 24 at 2 (P.T.A.B. Aug. 2,
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`2017).
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`The Board has repeatedly explained that a motion to exclude is not the
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`proper vehicle for a complaint about arguments and supporting evidence being
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`outside the proper scope of a reply. See Palo Alto Networks, Inc. v. Finjan, Inc.,
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`No. IPR2016-00151, Paper 51 at 23 (P.T.A.B. Mar. 15, 2017) (“[W]e have stated
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`repeatedly that a motion to exclude is not a vehicle for arguing that Petitioner’s
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`arguments and supporting evidence are outside the proper scope of a reply.”);
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`South-Tek Sys., LLC v. Engineered Corrosion Sols., LLC, No. IPR2016-00136,
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`Paper 52 at 8 (P.T.A.B. May 10, 2017) (“A motion to strike or a motion to exclude
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`is not the proper mechanism for raising the issue of whether a reply or reply
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`evidence is beyond the proper scope.”); Canon, No. IPR2016-01211, Paper 24 at 2
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`(Aug. 2, 2017) (“[A] motion to exclude is not a proper mechanism to present
`2
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`Atty Docket No. FABO-041/00US
`(309101-2121)
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`IPR2016-01159
`U.S. Patent No. 8,694,657
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`argument that a reply and evidence filed in support of the reply are outside the
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`scope of a proper reply under 37 C.F.R. § 42.23(b)”); Blackberry Corp. v. Zipit
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`Wireless, Inc., No. IPR2014-01508, Paper 49 at 40 (P.T.A.B. Mar. 29, 2016)
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`(denying motion to exclude); Facebook, Inc. v. Software Rights Archive, LLC, No.
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`IPR2013-00478, Paper 58 at 37-38 (P.T.A.B. Feb. 2, 2015) (denying motion to
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`exclude).
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`Here, Patent Owner’s Motion is based entirely on the complaint that Dr.
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`Lavian’s second declaration exceeded the proper scope of a reply. In particular,
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`Patent Owner argues:
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`Certain portions of the reply declaration of Dr. Tal Lavian (Ex.
`1021) should also be excluded because the declaration includes
`evidence that exceeds the propose scope of a petitioner's reply.
`FRE 401, 402, 403, and 37 C.F.R. § 42.23(b). Pursuant to 37
`C.F.R. § 42.23(b), certain portions of the reply declaration
`should be excluded because they contain citations, references,
`and arguments provided for the first time in the reply and they
`go beyond the permissible scope of a reply. These certain
`portions are not responsive to Patent Owner’s response and
`could have been presented in the Petition.
`
`(Mot. at 1.) Accordingly, the Motion should be denied.
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`Furthermore, Patent Owner’s motion should be denied because the Board
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`has found it within its own discretion to determine if any evidence exceeds the
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`3
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`Atty Docket No. FABO-041/00US
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`IPR2016-01159
`U.S. Patent No. 8,694,657
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`proper scope of reply. See, e.g., Canon, No. IPR2016-01211, Paper 25 at 2 (Aug.
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`2, 2017). As the Board has explained, because it sits “as a non-jury tribunal with
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`administrative expertise, [it] is well-positioned to determine and assign appropriate
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`weight to evidence presented.” Liberty Mut. Ins. v. Progressive Casualty Ins. Co.,
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`No. CBM2012-00002, Paper 66 at 70 (P.T.A.B. Jan. 23, 2014); see also Sony
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`Computer Entm’t Am. LLC v. Game Controller Tech. LLC, No. IPR2013-00634,
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`Paper 32 at 32 (P.T.A.B. Apr. 14, 2015). As further explained below, each item of
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`Dr. Lavian’s declaration that Patent Owner objects to is properly within the
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`permitted scope of reply testimony.
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`III. PATENT OWNER’S MOTION SHOULD BE DENIED BECAUSE
`THE CHALLENGED EVIDENCE IS PROPER REPLY EVIDENCE
`Even if the Board considers the substance of the Motion, the challenged
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`portions of Dr. Lavian’s declaration are properly within the scope of a reply and
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`otherwise admissible, as explained below.
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`A. Dr. Lavian Reply Declaration re “Other Programs” (Ex. 1021, ¶
`54, lines 1-17)
`Patent Owner’s Motion first complains that Dr. Lavian offers new arguments
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`regarding the “other programs” limitation of the claims. (Mot. at 2.) But as the
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`objected-to portion makes clear, Dr. Lavian was directly responding to Dr.
`
`Carbonell’s argument that “nowhere is there a teaching in Roseman that more than
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`one program associated with the conference room accesses the database.” Dr.
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`4
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`Atty Docket No. FABO-041/00US
`(309101-2121)
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`IPR2016-01159
`U.S. Patent No. 8,694,657
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`Lavian’s response is far from a “drastic departure” in his testimony. Dr. Lavian
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`made clear in his first declaration that programs on participant computers disclose
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`the “other programs” limitation. (Ex. 1002 at ¶ 55.) In the objected-to portion, Dr.
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`Lavian is merely providing a natural explanation for his earlier testimony and
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`making the observation that Roseman teaches that there could be Windows and
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`Macintosh versions of client programs on participant computers that could access
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`the database at the controller computer. Because Dr. Lavian was responding to Dr.
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`Carbonell’s argument, Dr. Lavian’s reply was proper. See 37 C.F.R. § 42.23(b)
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`(“A reply may only respond to arguments raised in the corresponding opposition,
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`patent owner preliminary response, or patent owner response.”); see also, e.g.,
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`Blackberry Corp. v. Zipit Wireless, Inc., No. IPR2014-01508, Paper 49 at 41
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`(P.T.A.B. Mar. 29, 2016), Liberty Mutual Ins., No. CBM2012-00002, Paper 66 at
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`68-69 (Jan. 23, 2014).
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`Patent Owner also complains that the objected-to portion is “irrelevant,
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`confusing and misleading.” (Mot. at 2.) However, the Board should disregard
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`these objections because Patent Owner fails to offer any explanation for them as
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`required by the rules. See 37 C.F.R. § 42.64(c) (“A motion to exclude evidence . . .
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`must explain the objections.”); see also Liberty Mutual Ins., No. CBM2012-00002,
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`Paper 66 at 61 (Jan. 23, 2014) (“A motion to exclude evidence also must . . .
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`[e]xplain each objection”) (citing Office Patent Trial Practice Guide, 77 Fed. Reg.
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`
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`5
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`Atty Docket No. FABO-041/00US
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`IPR2016-01159
`U.S. Patent No. 8,694,657
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`48765, 48767 (Aug. 14, 2012)). Moreover, Patent Owner’s baseless objections fall
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`far short of meeting Patent Owner’s burden to establish that the material it seeks to
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`exclude is inadmissible. See Sipnet EU S.R.O. v. Straight Path IP Group, Inc., No.
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`IPR2013-00246, Paper 63 at 2 (P.T.A.B. Oct. 9, 2014) (citing 37 C.F.R. §§
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`42.20(c), 42.62(a)). In any event, while Petitioner’s Reply does not even cite to or
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`otherwise rely on Dr. Lavian’s objected-to observation, it is clearly relevant to the
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`“other programs” limitation and not somehow confusing or misleading.
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`B. Dr. Lavian Reply Declaration re “Channels” (Ex. 1021, ¶ 74, lines
`1-6)
`Patent Owner’s Motion next complains that Dr. Lavian offers new
`
`arguments regarding the “channels” limitation (Mot. at 3), which is a limitation
`
`specific to the ’356 patent.3 Dr. Lavian’s testimony is proper reply evidence.
`
`To begin with, Dr. Lavian is addressing the Board’s construction of
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`“channel,” which was construed after Dr. Lavian submitted his first declaration.
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`(See IPR2017-01157, Paper No. 7 at 9 (construing “channel” as “group of
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`participator computers in active communication”).) Moreover, far from being the
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`“drastic departure” that Windy City claims, Dr. Lavian’s analysis in his reply
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`declaration closely tracks the analysis in his first declaration. (Compare IPR2017-
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`3 Dr. Lavian offered a single identical second declaration to respond to issues in
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`IPR2016-01156, IPR2016-01157, IPR2016-01158 and IPR2016-01159.
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`6
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`Atty Docket No. FABO-041/00US
`(309101-2121)
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`IPR2016-01159
`U.S. Patent No. 8,694,657
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`01157, Ex. 1002 at ¶ 105 (discussing “group of participants” connected “via the
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`host computer” that “allows them to communicate”) with Ex. 1021 at ¶ 74
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`(discussing “group of participator computers in active communication”).) In
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`addition, Dr. Lavian’s second declaration is clear in the preceding paragraph that
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`he is responding to arguments by Dr. Carbonell. (Ex. 1021 at ¶ 73 (citing
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`Carbonell Decl. (Ex. 2005) at ¶¶ 67-69).) Dr. Lavian’s declaration testimony is
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`properly responsive to the Board’s claim construction determination and the
`
`arguments of Patent Owner’s expert.
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`Patent Owner also again complains that the objected-to portion is
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`“irrelevant, confusing and misleading” and again fails to offer any explanation.
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`(Mot. at 3.) As explained already, the Board should accordingly disregard these
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`objections. Dr. Lavian’s testimony is plainly relevant to the “channels” limitation
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`of the ’356 patent and not confusing or misleading.
`
`C. Dr. Lavian Reply Declaration re “Private Messages” (Ex. 1021, ¶
`75, lines 4-10)
`Lastly, Patent Owner’s Motion complains that Dr. Lavian offers new
`
`arguments regarding the “private messages” limitation (Mot. at 4), which is
`
`another issue specific to the ’356 patent. Dr. Lavian’s testimony is again proper
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`reply evidence.
`
`Dr. Lavian makes clear in a preceding paragraph that he is again responding
`
`to arguments by Dr. Carbonell. (Ex. 1021 at ¶ 73 (citing Carbonell Decl. (Ex.
`7
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`Atty Docket No. FABO-041/00US
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`IPR2016-01159
`U.S. Patent No. 8,694,657
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`2005) at ¶¶ 67-69).) As part of that response, Dr. Lavian provides a summary of
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`his analysis from his first declaration, stating that “[f]or the claimed ‘private
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`messages,’ I pointed to Roseman’s note-passing feature” and identifying various
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`citations to Roseman. (Ex. 1021 at ¶ 75.) Dr. Lavian’s statements and Roseman
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`citations are consistent with his first declaration. For example, when discussing
`
`this claim limitation in his first declaration, Dr. Lavian stated:
`
`Roseman discloses pseudo-code programming for the host computer,
`which is also shown in Figures 15-22. (Roseman, 12:66-13:2.) This
`software functionality performs functions such as responding to a file
`being dragged onto the virtual conference/meeting table (Fig. 16A),
`one participant sending a private note to another (Fig. 17C) . . . .
`
`(Ex. 1002, IPR2017-01157 at ¶ 100.) Dr. Lavian merely excerpts this cited
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`“pseudo-code” in his reply declaration. In addition, in his first declaration, Dr.
`
`Lavian referred to his analysis of claim 1[b] “for further examples of private
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`messages in Roseman.” That analysis, in particular paragraph 80, further explains
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`that “[a] participant can pass a private textual note” and cites Roseman at column
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`9, lines 26-31, which Dr. Lavian likewise cites in his second declaration. Thus,
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`this last objected-to portion is also proper reply evidence.
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`Patent Owner also again complains that the objected-to portion is
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`“irrelevant, confusing and misleading” and again fails to offer any explanation.
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`
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`8
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`Atty Docket No. FABO-041/00US
`(309101-2121)
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`IPR2016-01159
`U.S. Patent No. 8,694,657
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`(Mot. at 3.) The Board should disregard these objections. Dr. Lavian’s testimony
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`is clearly relevant and admissible.4
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`IV. CONCLUSION
`For the foregoing reasons, Patent Owner’s Motion to Exclude should be
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`denied.
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`
`
`Dated: August 16, 2017
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave. NW, Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
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`
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`
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`By:
`
`
`
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`Respectfully submitted,
`
`/Heidi L. Keefe/
`Heidi L. Keefe
`Reg. No. 40,673
`Counsel for Petitioner
`Facebook, Inc.
`
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`4 Patent Owner also requests that the Board generally “exclude any other sections
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`that that it deems impermissibly change the scope of Petitioner’s authorized
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`grounds for trial and/or are not responsive to the Patent Owner’s response.” (Mot.
`
`at 5.) Patent Owner’s request should be rejected because it fails to satisfy the
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`requirements of a proper motion to exclude. See, e.g., Liberty Mutual Ins., No.
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`CBM2012-00002, Paper 66 at 61 (Jan. 23, 2014) (listing requirements of a motion
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`to exclude evidence).
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`
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`9
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`Atty Docket No. FABO-041/00US
`(309101-2121)
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`IPR2016-01159
`U.S. Patent No. 8,694,657
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`CERTIFICATE OF SERVICE
`
`
`I hereby certify, pursuant to 37 C.F.R. § 42.6, that a complete copy of the
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`attached PETITIONER’S OPPOSITION TO MOTION TO EXCLUDE, and
`related documents, are being served on the 16th day of August, 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
`Brown Rudnick LLP
`
`DATED: AUGUST 16, 2017
`
`COOLEY LLP
`ATTN: Patent Docketing
`1299 Pennsylvania Ave. NW
`Suite 700
`Washington, D.C. 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
`
`
`
`
`
`
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`10
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`
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