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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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`U.S. Pat. No. 8,694,657
`Issue Date: April 8, 2014
`Title: REAL TIME COMMUNICATIONS SYSTEM
`__________________________________________________________________
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`PATENT OWNER’S REPLY IN SUPPORT OF ITS
`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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`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 reply in support of its
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`motion to exclude evidence (“Motion”), responsive to Petitioner’s opposition to the
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`same.
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`II.
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` THE MOTION TO EXCLUDE IS PROCEDURALLY PROPER
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`Petitioner argues incorrectly that this Motion to exclude evidence is
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`improper. The Board should reject these arguments for at least the following
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`reasons.
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`First, Petitioner mischaracterizes Patent Owner’s challenge as one solely
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`directed to 37 C.F.R. § 42.23(b). While the narrowly-tailored portions should be
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`excluded for violating 37 C.F.R. § 42.23(b), Patent Owner’s arguments are further
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`grounded properly in the Federal Rules of Evidence. Particularly, Patent Owner
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`alleges correctly that certain narrowly-tailored portions of the record should be
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`deemed inadmissible as irrelevant (FRE 401 and 402) or otherwise prejudicial,
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`confusing, and/or misleading (FRE 403). As explained in the Motion, those
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`portions resulting in new arguments should be excluded for at least being: (a)
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`irrelevant to the authorized grounds for trial, (b) unfairly prejudicial as concealing
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`grounds and perfecting arguments with previously-unapplied references, (c)
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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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`confusing to the issues instituted by the Board, and (d) misleading with respect to
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`the content and scope of the prior art.
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`Second, Petitioner’s cases are inapposite because the motions in those
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`proceedings relied solely on scope without any discussion regarding admissibility
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`under the Federal Rules of Evidence. See, e.g., Palo Alto Networks, Inc. v. Finjan,
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`Inc., No. IPR2016-00151, Paper 39 at 1 (P.T.A.B. Dec. 28, 2016); Facebook, Inc.
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`et. al v. Software Rights Archive, LLC, No. IPR2013-00478, Paper 47 at 1-2
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`(P.T.A.B. Sep. 26, 2014). To the extent that any order cited by Petitioner can be
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`reasonably construed to mean that the Board will automatically deny properly-
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`preserved requests to exclude evidence based on the Federal Rules of Evidence,
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`such practice would fall squarely in conflict with controlling case law.
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`Third, the rules provide that “[a] motion to exclude evidence must be filed to
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`preserve any objection” and that, upon institution, “any objection must be filed
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`within five business days of service of evidence.” 37 C.F.R. §§ 42.64(c),
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`42.64(b)(1). Patent Owner complied with the rules and timely filed its objections,
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`supporting each and every request to exclude in this Motion. Paper 33.
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`Petitioner’s argument, if accepted, would force patent owners to noncompliance
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`with the Board’s rules.
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`Fourth, Petitioner fails to point to any binding or precedential case law for
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`IPR2016-01159
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`U.S. Pat. No. 8,694,657
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`self-serving reasons. The Federal Circuit has repeatedly acknowledged the
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`requirements of the Board to apply rules and practice procedures in accordance
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`with a patent owner’s due process rights. The Federal Circuit has held that, during
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`inter partes review, a patent owner “is undoubtedly entitled to notice and a fair
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`opportunity to meet the grounds of rejection.” Belden Inc. v. Berk-Tek LLC, 805
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`F.3d 1064, 1080 (Fed. Cir. 2015). The Belden Court endorsed the practice that a
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`Petitioner’s “reply may only respond to arguments raised in the corresponding
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`opposition or patent owner response” and that “if the petitioner submits a new
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`expert declaration with its Reply, the patent owner can respond in multiple ways.”
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`Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080-1081 (Fed. Cir. 2015).
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`Particularly, the Patent Owner “can move to exclude the declaration” and “can
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`dispute the substance of the declaration at oral hearing before the Board.” Id.
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`Contrary to Petitioner’s arguments, the Federal Circuit explained that “a party may
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`move to exclude evidence, whether as improper under the response-only
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`regulation, under the Trial Practice Guide's advice, or on other grounds. §
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`42.64(c).” (Emphasis added.) Id. at 1081. Citing to Belden, the Board has
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`endorsed this very type of motion and ruled against a party for its failure to move
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`to exclude new arguments presented through expert testimony. Ceramtec GMBH
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`v. Ceramedic, LLC, No. IPR2015-00398, Paper 36 at 12 (P.T.A.B. July, 1, 2016)
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`[“Patent Owner also did not file a motion to exclude portions of Petitioner’s expert
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`IPR2016-01159
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`U.S. Pat. No. 8,694,657
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`testimony…see also Belden, Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1081 (Fed. Cir.
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`2015) (identifying options for Patent Owner faced with new evidence in Reply).”].
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`“Once the Board identifies new issues presented for the first time in reply, neither
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`this court nor the Board must parse the reply brief to determine which, if any, parts
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`of that brief are responsive and which are improper. As the Board noted, ‘it will
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`not attempt to sort proper from improper portions of the reply.’” Intelligent Bio-
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`Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016).
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`Accordingly, this motion is proper and should not be denied without consideration.
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`III. EX. 1021, SECOND DECLARATION OF TAL LAVIAN, PH.D.
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`Contrary to Petitioner’s permissive take on the rules regarding petitioner
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`replies, “[a] reply may only respond to arguments raised in the corresponding
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`opposition, patent owner preliminary response, or patent owner response.”
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`(Emphasis added.) 37 C.F.R. § 42.23(b).
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`Regarding Exhibit 1021, ¶ 54 at lines 1–17, including citations to Roseman
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`at 12:1-5 and 12:9-10 and discussion of Windows and Macintosh client software
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`alternatives, Petitioner’s bare “natural explanation” response reaffirms Patent
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`Owner’s bases for its request to exclude this portion for the reasons presented in
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`the Motion. Petitioner’s response lacks substance and fails to adequately explain
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`how the particular portion is responsive to Dr. Carbonell’s arguments or based on a
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`position authorized for trial.
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`IPR2016-01159
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`U.S. Pat. No. 8,694,657
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` Regarding Exhibit 1021, ¶ 74 at lines 1–6 with citations to Roseman at
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`11:10-17 and discussion of connections between participator computers,
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`Petitioner’s response reaffirms Patent Owner’s bases for its request to exclude this
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`portion for the reasons presented in the Motion. Petitioner’s response lacks
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`substance and fails to adequately explain how the particular portion is responsive
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`to Dr. Carbonell’s arguments or based on a position authorized for trial.
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`Regarding Exhibit 1021, ¶ 75 at lines 4–10, Petitioner’s response reaffirms
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`Patent Owner’s bases for its request to exclude this portion for the reasons
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`presented in the Motion. Petitioner’s response lacks substance and fails to
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`adequately explain how the particular portion is responsive to Dr. Carbonell’s
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`arguments or based on a position authorized for trial.
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`IV. CONCLUSION
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`In sum, none of Petitioner’s responses indicate any responsiveness to Dr.
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`Carbonell’s arguments or any support to relate back the new arguments to the
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`authorized grounds for trial. Because the above-identified portions are irrelevant,
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`unfairly prejudicial, confusing, and/or misleading, Patent Owner respectfully
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`requests exclusion of at least ¶ 54 at lines 1–17 and ¶ 74 at lines 1–6 of the reply
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`declaration of Dr. Tal Lavian (Ex. 1021) from the evidentiary record.
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`Respectfully submitted,
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`5
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`Dated August 23, 2017
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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/
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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 REPLY IN SUPPORT OF ITS MOTION
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`TO EXCLUDE EVIDENCE has been served on Petitioner at the correspondence
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`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
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`By Email:
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`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 23, 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
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`By Email:
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`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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