Atty Docket No. FABO-041/00US
`(309101-2121)
`
`
`
`
`
`
`IPR2016-01159
`U.S. Patent No. 8,694,657
`
`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
`
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION FOR
`OBSERVATIONS ON CROSS EXAMINATION
`
`
`
`
`
`
`
`1 Case IPR2017-00659 has been joined with this proceeding.
`
`
`
`
`
`(309101-2121)
`
`
`
`
`
`
`IPR2016-01159
`U.S. Patent No. 8,694,657
`
`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
`
`
`PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION FOR
`OBSERVATIONS ON CROSS EXAMINATION
`
`
`
`
`
`
`
`1 Case IPR2017-00659 has been joined with this proceeding.
`
`
`
`
`
`
`Atty Docket No. FABO-041/00US
`(309101-2121)
`
`
`
`
`IPR2016-01159
`U.S. Patent No. 8,694,657
`
`Patent Owner’s Motion for Observations on Cross Examination of
`
`Facebook’s Reply Witness Dr. Lavian (Paper No. 38), contains argumentative
`
`observations and should be expunged. Nevertheless, Petitioner respectfully
`
`submits the following responses.
`
`a.
`
`Response to Observation “a” (purportedly relevant to “any Association
`between Keys and Invitations in Roseman”)
`
`Petitioner responds that Patent Owner mischaracterizes Dr. Lavian’s
`
`testimony. In Exhibit 2013, on page 13, lines 17 to 20, Dr. Lavian testified
`
`regarding a “hypothetical situation that you may have a key that was not sent to
`
`anyone. So it’s a key without an invitation.” Dr. Lavian further testified on page
`
`13 at lines 21 to 22 that he “need[ed] to investigate and see if this is the situation.”
`
`Moreover, the testimony cited by Patent Owner is not relevant because the Petition
`
`focuses on keys that are actually sent to users. In fact, the page of the Petition
`
`Patent Owner cites explains that Roseman “discloses a security mechanism in
`
`which users must be invited and have an appropriate ‘key’ to enter the conference
`
`room.” (Petition at 11 (bold in original, underlining added).)
`
`b.
`
`
`
`Response to Observation “b” (purportedly relevant to “Bob Metcalfe
`being a Leading Figure with Respect to the Internet”)
`
`Petitioner responds that this observation is improper because it is both
`
`argumentative and fails to provide a citation to allegedly relevant arguments made
`
`in the record. See, e.g., Medtronic, Inc. v. Nuvasive, Inc., No. IPR2013-00506,
`
`
`
`1
`
`
`
`Atty Docket No. FABO-041/00US
`(309101-2121)
`
`
`
`
`IPR2016-01159
`U.S. Patent No. 8,694,657
`
`Paper 37 at 3-4 (P.T.A.B. Oct. 15, 2014) (dismissing motion for observations
`
`containing argument); Xilinx, Inc. v. Papst Licensing GMBH & Co., KG, No.
`
`IPR2016-00104, Paper 22 at 9-10 (P.T.A.B. May 3, 2017) (expunging motion for
`
`observation where patent owner alleged testimony was relevant but failed to
`
`provide a citation to where patent owner’s arguments were made in the record). In
`
`particular, Patent Owner improperly argues that Dr. Lavian’s “testimony is
`
`relevant because it provides evidence that a person of ordinary skill in the art
`
`would have taken Metcalfe’s prediction seriously in 1996.” Petitioner further
`
`responds that Patent Owner mischaracterizes Dr. Lavian’s testimony. In Exhibit
`
`2013, on page 15, lines 8 to 9, Dr. Lavian testified that Bob Metcalfe “was not an
`
`expert of Internet traffic.” In Exhibit 2013, on page 27, lines 12 to 14, Dr. Lavian
`
`further testified that Bob Metcalfe “was respectable in the area of LAN and the
`
`cable of Layer 2, not the performance of the Internet.”
`
`c.
`
`Response to Observation “c” (purportedly relevant to “Article entitled
`‘Sage who warned of Net’s Collapse eats his words.’”)
`
`Petitioner responds that this observation is improper because it is both
`
`argumentative and fails to provide a citation to allegedly relevant arguments made
`
`in the record. See, e.g., Medtronic, No. IPR2013-00506, Paper 37 at 3-4; Xilinx,
`
`No. IPR2016-00104, Paper 22 at 9-10. In particular, Patent Owner improperly
`
`argues that Dr. Lavian’s “testimony is relevant because it shows the degree that
`
`Metcalfe’s prediction did come true.” Petitioner further responds that Patent
`2
`
`
`
`
`
`Atty Docket No. FABO-041/00US
`(309101-2121)
`
`
`
`
`IPR2016-01159
`U.S. Patent No. 8,694,657
`
`Owner mischaracterizes Dr. Lavian’s testimony. In Exhibit 2013, on page 24,
`
`lines 19, Dr. Lavian testified that he did not know whether alleged outages
`
`occurred. Moreover, Dr. Lavian’s testimony that Patent Owner cites is not relevant
`
`because it provides no support for such outages actually occurring or for
`
`Metcalfe’s alleged prediction.
`
`d.
`
`Response to Observation “d” (purportedly relevant to “Article entitled
`‘Bob Metcalfe on What’s Wrong with the Internet.’”)
`
`Petitioner responds that this observation is improper because it is both
`
`argumentative and fails to provide a citation to allegedly relevant arguments made
`
`in the record. See, e.g., Medtronic, No. IPR2013-00506, Paper 37 at 3-4; Xilinx,
`
`No. IPR2016-00104, Paper 22 at 9-10. In particular, Patent Owner improperly
`
`argues that Dr. Lavian’s “testimony is relevant because it shows the part of the
`
`basis of Metcalfe’s prediction was reasonable.” Petitioner further responds that
`
`Patent Owner mischaracterizes Dr. Lavian’s testimony. In Exhibit 2013, on page
`
`27, line 25, to page 28, line 2, Dr. Lavian testified that he did not think Metcalfe’s
`
`“fear” was “based on any statistics or information.” Moreover, Dr. Lavian’s
`
`testimony that Patent Owner cites is not relevant because it provides no support for
`
`such Metcalfe’s alleged “fear” or “prediction” being reasonable.
`
`
`
`3
`
`
`
`Atty Docket No. FABO-041/00US
`(309101-2121)
`e.
`
`
`
`
`IPR2016-01159
`U.S. Patent No. 8,694,657
`
`Response to Observation “e” (purportedly relevant to “Books Authored
`by Loomis and Korth”)
`
`Petitioner responds that this observation is improper because it is both
`
`argumentative and fails to provide a citation to allegedly relevant arguments made
`
`in the record. See, e.g., Medtronic, No. IPR2013-00506, Paper 37 at 3-4; Xilinx,
`
`No. IPR2016-00104, Paper 22 at 9-10. In particular, Patent Owner improperly
`
`argues that Dr. Lavian’s “testimony is relevant because it casts doubt on whether
`
`more recent books during the relevant year of 1996 by these writers would provide
`
`the same information.” Petitioner further responds that Dr. Lavian’s testimony
`
`regarding not researching whether there were later editions of the cited books that
`
`Patent Owner cites is not relevant and does not “cast doubt” on whether the books’
`
`authors “would provide the same information” in 1996.
`
`f.
`
`Response to Observation “f” (purportedly relevant to “Video Traffic on
`the Internet in 1996”)
`
`Petitioner responds that this observation is improper because it is both
`
`argumentative and excessively cites testimony spanning numerous pages. See,
`
`e.g., Medtronic, No. IPR2013-00506, Paper 37 at 3-4; Xilinx, No. IPR2016-00104,
`
`Paper 22 at 9-10. In particular, Patent Owner attempts to use Dr. Lavian’s
`
`testimony to make improper arguments regarding Exhibit 2014, arguing that “Dr.
`
`Lavian acknowledged that the article states that multicast video traffic appeared
`
`poised to explode a few years before 1997. Dr. Lavian did not dispute that such
`
`
`
`4
`
`
`
`Atty Docket No. FABO-041/00US
`(309101-2121)
`
`
`
`
`IPR2016-01159
`U.S. Patent No. 8,694,657
`
`traffic had not exploded in that timeframe.” Petitioner further responds that Patent
`
`Owner mischaracterizes Dr. Lavian’s testimony. In the cited testimony, Exhibit
`
`2013, on page 51, lines 8 to 9, Dr. Lavian stated “I don’t have in front of me any
`
`information for either way” regarding statements in Exhibit 2014. Petitioner
`
`further responds that Dr. Lavian’s testimony that Patent Owner cites is not relevant
`
`to whether videoconferencing was becoming “increasingly frequent” on the
`
`
`
`By:
`
`
`
`
`Respectfully submitted,
`
`/Heidi L. Keefe/
`Heidi L. Keefe
`Reg. No. 40,673
`Counsel for Petitioner
`Facebook, Inc.
`
`Internet around 1996.
`
`
`
`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
`
`
`
`
`
`
`
`
`
`5
`
`
`
`Atty Docket No. FABO-041/00US
`(309101-2121)
`
`
`
`
`IPR2016-01159
`U.S. Patent No. 8,694,657
`
`CERTIFICATE OF SERVICE
`
`
`I hereby certify, pursuant to 37 C.F.R. § 42.6, that a complete copy of the
`
`attached PETITIONER’S RESPONSE TO PATENT OWNER’S MOTION
`FOR OBSERVATIONS ON CROSS EXAMINATION, 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
`
`
`
`
`
`6
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
