`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________________________
`
`
`
`FACEBOOK, INC.,
`Petitioner,
`
`
`v.
`
`
`WINDY CITY INNOVATIONS LLC,
`Patent Owner.
`
`
`
`
`
`Patent No. 8,694,657
`Issue Date: April 8, 2014
`Title: REAL TIME COMMUNICATIONS SYSTEM
`
`
`
`____________________________________________________________
`
`SUPPLEMENTAL PATENT OWNER’S RESPONSE
`
`Case No. IPR2016-011591
`___________________________________________________________
`
`
`
`1 IPR2017-00659 has been joined with this proceeding.
`
`
`
`i
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`
`I.
`
`II.
`
`Page No(s).
`
`INTRODUCTION ........................................................................................... 1
`
`SUMMARY OF THE ’657 PATENT AND THE ALLEGED PRIOR
`ART ................................................................................................................. 2
`
`III.
`
`PROPER CONSTRUCTION OF DISPUTED TERMS ................................. 2
`
`A.
`
`Token ..................................................................................................... 2
`
`B.
`
`Database ................................................................................................ 2
`
`IV. THE JOINED CLAIMS ARE VALID AND NON-OBVIOUS ..................... 2
`
`A.
`
`Claims 189 and 465 Are Valid and Non-Obvious ................................ 3
`
`B.
`
`Claims 203, 209, 215, 221, 477, 482, 487 and 492 Are Not
`Unpatentable .......................................................................................... 3
`
`1.
`
`2.
`
`3.
`
`“Software alternatives” ............................................................... 4
`
`“wherein both of the client software alternatives…allow
`at least some of the participator computers to form at
`least one group” .......................................................................... 8
`
`“wherein the determining whether the first user identity
`is censored includes determining that the first user
`identity is censored from the sending of the data
`presenting the [video / audio / graphic / multimedia]” ............... 9
`
`V.
`
`CONCLUSION .............................................................................................. 10
`
`
`
`
`
`
`
`ii
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`Windy City Innovations LLC (“Patent Owner”) submits this supplemental
`
`response to the newly-added ground in IPR2016-01159 (the “1159 IPR”) which
`
`has been joined from IPR2017-00659 (the “659 IPR”).2 Particularly, Patent Owner
`
`responds to Facebook Inc.’s (“Petitioner”) ground presented in its petition (’659
`
`IPR, Paper 2) regarding claims 203, 209, 215, 221, 477, 482, 487 and 492 (the
`
`“Joined Claims”) of U.S. Patent No. 8,458,245 (Ex. 1001, the “’245 Patent”). This
`
`supplemental response is timely pursuant to the Board’s Amended Scheduling
`
`Order (Original IPR, Paper No. 40).
`
`Patent Owner respectfully submits that this supplemental response
`
`demonstrates that the Joined Claims are not obvious over combinations based on
`
`U.S. Patent No. 6,608,636 to Roseman (Ex. 1003, “Roseman”) for a number of
`
`reasons. The Board should find that Petitioner has failed to establish by a
`
`preponderance of the evidence the invalidity of each of the Joined Claims.
`
`
`
`2 This response is intended to address Petitioner’s substantive arguments regarding
`
`the grounds authorized for trial and is not intended to be any form of acquiescence
`
`regarding the propriety of the Board’s joinder and institution decisions on these
`
`grounds.
`
`
`
`
`
`
`
`II.
`
`SUMMARY OF THE ’657 PATENT AND THE ALLEGED PRIOR
`ART
`
`Summaries of the ’657 Patent and each alleged prior-art reference have been
`
`submitted in Patent Owner’s Response (Paper 22 at 5-8).
`
`III. PROPER CONSTRUCTION OF DISPUTED TERMS
`
`A. Token
`
`Petitioner and the Board in its institution decision have both adopted a
`
`construction of “token” as “piece of information associated with user identity.”
`
`For the purpose of this Petition only, Patent Owner also adopts a similar
`
`construction.
`
`B. Database
`
`For the reasons set forth in Patent Owner’s Response (Paper 22 at 8-12), a
`
`database should be construed as “a collection of logically-related data which is
`
`stored with persistence and associated tools for interacting with the data, such as a
`
`DBMS.”
`
`IV. THE JOINED CLAIMS ARE VALID AND NON-OBVIOUS
`
`In arriving at an obviousness determination, the Board must sufficiently
`
`explain and support the conclusions that the prior-art references disclose all the
`
`elements recited in the Challenged Claims and a relevant skilled artisan not only
`
`could have made, but would have been motivated to combine all the prior-art
`
`references in the way the patent claims, and reasonably expected success. Pers.
`
`
`
`2
`
`
`
`
`
`Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017).
`
`The obviousness inquiry must exclude hindsight and avoid reading into the
`
`prior art the patent’s teachings. Graham v. John Deere Co., 383 U.S. 1, 36 (1966).
`
`A. Claims 189 and 465 Are Valid and Non-Obvious
`
`The Joined Claims depend from independent claims 189 and 465. On March
`
`31, 2017, Patent Owner submitted its Patent Owner’s Response regarding the
`
`validity and non-obviousness of claims 189 and 465. (Paper 22) Accordingly, the
`
`Joined Claims are valid and non-obvious for at least the reasons submitted in its
`
`Patent Owner’s Response.
`
`B. Claims 203, 209, 215, 221, 477, 482, 487 and 492 Are Not
`Unpatentable
`
`Claims 203, 209, 215, 221, 477, 482, 487 and 492 each require the limitation
`
`“wherein the computer system provides access via any of two client software
`
`alternatives, wherein both of the client software alternatives allow respective user
`
`identities to be recognized and allow at least some of the participator computers to
`
`form at least one group in which members can send communications and receive
`
`communications.” The prior art of record fails to disclose and/or suggest this
`
`
`
`3
`
`
`
`
`
`limitation in its entirety and thus the claims are valid and non-obvious. Ex. 20053
`
`at ¶¶ 65-72.
`
`1.
`
`“Software alternatives”
`
`First, the cited prior art fails to disclose and/or suggest “wherein the
`
`computer system provides access via any of two client software alternatives.” In
`
`its institution decision, the Board stated that the parties had not yet explicitly stated
`
`what “two client software alternatives” means within the scope of the claims of the
`
`’627 Patent. (Paper 7 at 33.) However, the Board declined to institute based on
`
`Petitioner’s argument that “whisper mode” and “child rooms” constituted two
`
`client software alternatives. (Paper 7 at 35.) The Board also identified the
`
`following disclosure of the ’657 Patent that describes two client software
`
`alternatives:
`
`While platform controlled embodiments are within the scope of the
`
`invention, it is particularly advantageous to have a platform independent
`
`
`
`3 In an effort to control expenses, Petitioner refers back to the expert testimony set
`
`forth in the previously-filed Declaration of Jaime G. Carbonell (Ex. 2005) for
`
`supporting evidence. Even though Dr. Carbonell’s testimony may refer to different
`
`claims, the underlying opinions and contents of the Declaration apply with equal
`
`force to the corresponding subject matter of the Joined Claims.
`
`
`
`4
`
`
`
`
`
`embodiment, i.e. an embodiment that is byte code compiled.
`
`Ex. 1001 at 4:32-35.
`
`The Board addressed this claim limitation in the context of several other
`
`Petitions for Inter Partes Review of the ’657 Patent, including IPR2016-01137, -
`
`01138, -01146, and -01147. For example, in the -01137 decision Denying
`
`Institution, the Board stated:
`
`The challenged claims, however, require “both of the two client
`
`software alternatives” to allow members in “at least one group . . . [to] send
`
`communications and receive communications . . . wherein at least some of
`
`the communications are received in real time via the Internet network.” See,
`
`e.g., Ex. 1001, 21:29– 36 (emphases added).
`
`IPR2016-01137, Paper No. 8 at 9 (emphasis in original).
`
`The Roseman reference does not teach two client software alternatives that
`
`send and receive communications in real time via the Internet network. Client
`
`software, in the context of the ’657 Patent, is the software that communicates with
`
`and accesses information on the coordinator computer. Roseman only discloses a
`
`single type of client software, which is the embodiment described throughout the
`
`specification and shown in the figures, e.g., Figure 9. This single embodiment of
`
`software communicates with the host to receive “a common image” that is created
`
`by the host. e.g., Ex. 1003 at 7:30-39. Roseman does not indicate how a second
`
`
`
`5
`
`
`
`
`
`alternative would be able to communicate with the host computer to receive the
`
`common image or to interact with it. For example, a Telenet-based solution for
`
`Roseman would likely not work in this context without GUI support. Ex. 2005 at
`
`¶ 70. Moreover, Roseman’s disclosure of the “Windows Context” is not an
`
`affirmative teaching of another client software alternative. Instead, Roseman
`
`explicitly states that the context described throughout the disclosure has “presumed
`
`that the local computers are utilizing Windows.” Ex. 1003 at 12:1-10. Even when
`
`Roseman states that “the invention is not limited to systems utilizing these
`
`particular environments,” one of ordinary skill in the art would not have
`
`understood such a statement to be a disclosure of a second client software
`
`alternative. Ex. 2005 at ¶ 70. Nor does Roseman indicate how any of its client
`
`software could be modified so as to make second software alternative.
`
`Petitioner and Dr. Lavian propose that “Windows and Macintosh” would
`
`constitute two client software alternatives within the scope of the claims. In fact,
`
`“Windows and Macintosh” are not client software, but are instead operating
`
`systems. Ex. 2005 at ¶ 71. Dr. Lavian states that “it was well-known that
`
`providing a software product for multiple computing platforms (e.g., Windows,
`
`Macintosh, etc.) was desirable because it makes the software more commercially
`
`attractive and increases the number of users who can use it.” Ex. 1002 at ¶119.
`
`However, this statement, even if true, does not contradict the fact that Roseman
`
`
`
`6
`
`
`
`
`
`only discloses a single client software alternative. Moreover, Dr. Lavian admits
`
`that it is not always possible to make the same software programs for different
`
`operating systems. Ex. 2006 at 157:6:1-158:11. Accordingly, even if one were to
`
`create Windows and Macintosh embodiments of the Roseman system, it would not
`
`meet this claim limitation.
`
`Further, a person of ordinary skill in the art would not be motivated to create
`
`Windows and Macintosh implementations. Regarding the software itself, the ’657
`
`Patent states that one of the software alternatives is utilizing Java with a byte-code
`
`implementation. Java and byte-code are cross-platform solutions that can run on
`
`both Windows and Macintosh. Indeed, the ’657 Patent itself states that byte code
`
`compiled software is an example of a “platform independent embodiment.” Ex.
`
`1001 at 4:33-35. The Board has stated that the Java embodiment is one of the two
`
`software alternatives disclosed by the ’657 Patent. Accordingly, one of ordinary
`
`skill in the art who was motivated to provide software that could work across
`
`different platforms and operating systems would have been motivated to utilize a
`
`single platform
`
`independent software
`
`implementation, such as a Java
`
`implementation, and would not have been motivated to provide additional
`
`alternatives to that cross-platform software. Ex. 2005 at ¶ 71. Dr. Lavian
`
`confirmed that there was significant hype regarding Java in the 1996 time frame
`
`which was part of “phenomena of the century.” Ex. 2006 at 135:7-13; 142:10-13.
`
`
`
`7
`
`
`
`
`
`Accordingly one of ordinary skill in the art at the time of the invention would not
`
`even be motivated to create the Windows and Macintosh implementations.
`
`Accordingly, Roseman does not render the claims of the ’657 Patent
`
`obvious, either alone or in combination with the other cited references, because the
`
`references do not teach or disclose providing two client software alternatives and
`
`because the two client software alternatives in the context of the Joined Claims
`
`would not have been obvious to one of ordinary skill in the art. Ex. 2005 at ¶¶ 65-
`
`72.
`
`2.
`
`“wherein both of the client software alternatives…allow at
`least some of the participator computers to form at least one
`group”
`
`Roseman fails to disclose and/or suggest “wherein both of the client
`
`software alternatives…allow at least some of the participator computers to form at
`
`least one group” as required by the Joined Claims. Submitting a two-sentence
`
`explanation, one sentence for each alleged software alternative, Petitioner fails to
`
`show that this portion of the limitation is met.
`
`Citing to Roseman at 9:16-25, 15:6-9 & Fig. 17B, Petitioner asserts that the
`
`first group can be a direct connection in Whisper Mode: “For example, a user of a
`
`local computer that activates the Whisper Mode software creates a two member
`
`group by selecting a particular party with whom to communicate.” Then citing to
`
`Roseman, 10:18-23, 15:55-67 & Fig. 21B, Petitioner asserts that the second group
`
`
`
`8
`
`
`
`
`
`can be child rooms: “[a]s to the child-room software, a user of a local computer
`
`who drags in other participants forms a group comprising those users.” This
`
`application of Roseman is problematic for at least two reasons. Both child room
`
`and whisper mode are common features to the same software and fail to address
`
`that “both software alternatives” allow for the group-forming feature. (Ex. 2005 at
`
`¶¶ 67-69.) To the extent that Petitioner relies on the interpretation that a feature is
`
`a software alternative, which runs counter to the requirements of the claims, then
`
`Petitioner is improperly relying on the child room as both a software alternative
`
`and as a group. Id. The Petition and its corresponding expert declaration fail to
`
`reconcile these issues. Accordingly, the Joined Claims are valid and non-obvious.
`
`3.
`
`“wherein the determining whether the first user identity is
`censored includes determining that the first user identity is
`censored from the sending of the data presenting the [video
`/ audio / graphic / multimedia]”
`
`Claims 203, 209, 215, 221 depend from intermediate claims 202, 208, 214,
`
`and 220, respectively. The intermediate claims require “wherein the determining
`
`whether the first user identity is censored includes determining that the first user
`
`identity is censored from the sending of the data presenting the [video / audio /
`
`graphic / multimedia]”. Petitioner asserts only Roseman’s whisper-mode feature in
`
`view of Lichty’s screening out of certain messages. But Lichty merely discloses
`
`ignoring a user, not specifically excluding video, audio, graphic or multimedia
`
`from being presented to a certain identity. (Ex. 2005 at ¶27) Lichty excludes a
`
`
`
`9
`
`
`
`
`
`user, not content or data from being presented. Id. This user-based “ignore”
`
`approach conflicts with the understanding of a censorship according to a person of
`
`ordinary skill in the art. (Ex. 2005 at ¶ 64) Accordingly, a person of ordinary skill
`
`in the art would not have been motivated to combine Roseman with Lichty for the
`
`purposes of censoring video, audio, graphic, and/or multimedia data.
`
`Moreover, Petitioner’s assertion that the same reasoning from limitation
`
`189[d] applies to the present limitations is incorrect for at least the reason that
`
`189[d] fails to apply to the level of particularity of claims 202, 208, 214, and 220,
`
`and thus Petitioner fails to address each and every limitation of the claims.
`
`Accordingly, the cited prior art fails to disclose and/or suggest claims 202, 203,
`
`208, 209, 214, 215, 220, and 221.
`
`V. CONCLUSION
`
`For the foregoing reasons, Patent Owner respectfully requests that the Board
`
`confirm the validity of the Joined Claims.
`
`
`
`
`
`Respectfully submitted,
`
`Dated September 11, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Vincent J. Rubino/
`
`
`
`
`
`Vincent J. Rubino, III (Reg. No. 68,594)
`Lead Counsel for Patent Owner
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Telephone: 212-209-4800
`Facsimile: 212-209-4801
`
`10
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Email: vrubino@brownrudnick.com
`
`Peter Lambrianakos (Reg. No. 58,279)
`Backup Counsel for Patent Owner
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Tel: 212-209-4800
`Fax: 212-209-4801
`Email: plambrianakos@brownrudnick.com
`
`Alfred R. Fabricant
`(Admitted Pro Hac Vice)
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Telephone: 212-209-4800
`Facsimile: 212-209-4801
`Email: afabricant@brownrudnick.com
`
`
`
`Shahar Harel (Reg. No. 73,203)
`Backup Counsel for Patent Owner
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Telephone: 212-209-4800
`Facsimile: 212-209-4801
`Email: sharel@brownrudnick.com
`
`
`11
`
`
`
`
`
`CERTIFICATE OF WORD COUNT
`
`
`
`The undersigned hereby certifies that the portions of the above-captioned
`
`Supplemental Patent Owner’s Response has 2,116 words in compliance with the
`
`14,000 word limit set forth in 37 C.F.R. § 42.24. This word count was prepared
`
`using Microsoft Word 2010.
`
`
`
`
`
`
`
`September 11, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully Submitted,
`
` /Vincent J. Rubino/
`
`
`
`Vincent J. Rubino, III (Reg. No. 68,594)
`Lead Counsel for Patent Owner
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Telephone: 212-209-4800
`Facsimile: 212-209-4801
`Email: vrubino@brownrudnick.com
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`A copy of the Supplemental Patent Owner’s Response has been
`
`served on Petitioner at the correspondence of the Petitioner as follows:
`
`By Email:
`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
`
`
`September 11, 2017
`
`
`
`
`
`By Email:
`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
`
`
`
` /Vincent J. Rubino/
`
`
`
`
`
`
`
`
`
`Vincent J. Rubino, III (Reg. No. 68,594)
`Lead Counsel for Patent Owner
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Telephone: 212-209-4800
`Facsimile: 212-209-4801
`Email: vrubino@brownrudnick.com
`
`
`
`
`
`
`
`
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
