`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`FACEBOOK, INC.
`Petitioner
`
`v.
`
`WINDY CITY INNOVATIONS, LLC
`Patent Owner.
`
`
`Case IPR2016-01159
`Patent 8,694,6571
`
`
`PETITIONER’S SUPPLEMENTAL REPLY
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`
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`
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`1 IPR2017-00659 has been joined with this proceeding.
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`IPR2016-01159
`Petitioner’s Supplemental Reply
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`
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`Patent Owner’s Supplemental Response (Paper 45 (“Supp. Resp.”)) is little
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`more than a rehash of the arguments it previously made in IPR2016-01159, with
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`which this proceeding was joined. In its Order Granting Petitioner’s Motion for
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`Joinder in IPR2017-00659, the Board correctly observed that “although the newly
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`challenged claims are not identical to those challenged in the -1159 Petition, the
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`substance is very similar such that the addition of claims 203, 209, 215, 221, 477,
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`482, 487, and 492 is not likely to affect the scope of the trial significantly.” (Paper
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`11 in IPR2017-00659, at 9.) The Board also correctly observed that “the substance
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`of Petitioner’s claim construction arguments and summaries of the prior art
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`references is essentially the same in the instant Petition as in the -1159 Petition.”
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`(Id.) Accordingly, it should come as no surprise that Patent Owner’s Supplemental
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`Response adds little, if anything, to its previous arguments. Patent Owner did not
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`submit a new expert declaration or any additional evidence to support its defense of
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`claims 203, 209, 215, 221, 477, 482, 487, and 492.
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`Nevertheless, in the interest of completeness, Petitioner will address each of
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`Patent Owner’s arguments below. For convenience and ease of reference for the
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`Board, and to avoid the need to consider identical issues multiple times, Petitioner
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`will also identify when an argument addressed herein was already covered (in more
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`detail) by the previous submissions by the parties. For the reasons stated below, the
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`1
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`IPR2016-01159
`Petitioner’s Supplemental Reply
`
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`Board should find that claims 203, 209, 215, 221, 477, 482, 487, and 492 are
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`unpatentable based on the instituted grounds.
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`I.
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`CLAIM CONSTRUCTION
`Patent Owner proposes the same construction for “database” that it proposed
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`in its -1159 Response. As explained in detail in Petitioner’s Reply (Paper 31
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`(“Reply”)), Patent Owner’s proposed construction for “database” lacks intrinsic
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`support, and its extrinsic support (the unsupported testimony of its expert) overlooks
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`the facts that a “database” and a “database management system” (“DBMS”) are two
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`different things and that a database does not require a DBMS. (Reply at 3-7; Lavian
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`Second Decl., Ex. 1021, ¶¶ 10-17.) The Board should therefore reject Patent
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`Owner’s unsupported definition of “database.”2
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`II. CLAIMS 203, 209, 215, 221, 477, 482, 487 AND 492 ARE
`UNPATENTABLE
`A. Reassertion of Patent Owner’s Arguments for Claims 189 and 465
`Patent Owner first argues that claims 203, 209, 215, 221, 477, 482, 487 and
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`492 are not unpatentable for the same reasons as the arguments it made with respect
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`to claims 189 and 465. (Supp. Resp. at 3.) Patent Owner does not offer new
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`2 As explained in the Reply, even if the Board were to adopt Patent Owner’s
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`“database” construction, it would not distinguish the prior art. (Reply at 14-15.)
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`2
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`IPR2016-01159
`Petitioner’s Supplemental Reply
`
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`arguments regarding claims 189 and 465. The unpatentability of claims 189 and 465
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`was fully addressed in the Petition and Reply.
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`B.
`“software alternatives”
`Patent Owner next argues that Roseman does not disclose “two client software
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`alternatives” by repeating nearly verbatim its arguments from its -1159 Response.
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`(Compare Supp. Resp. at 4-8 with Paper 22 (“Resp.”) at 31-35.) These arguments
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`were fully addressed in the Reply. (Reply at 20-21.)
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`Petitioner explained that the claimed two client software alternatives were
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`obvious, among other reasons, because it would have been obvious to adapt the
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`participator software in Roseman to run on multiple computing platforms, such as
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`Windows and Macintosh. (Reply at 20; Ex. 1021, ¶ 54; -659 Petition at 53.) Patent
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`Owner argues that “‘Windows and Macintosh’ are not client software, but are
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`instead operating systems.” (Supp. Resp. at 6.) Petitioner already explained that it
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`did not point to the Windows and Macintosh operating systems themselves as the
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`two client software alternatives, but rather, to versions of the participator software
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`in Roseman adapted to run on those platforms. (Reply at 20; Ex. 1021, ¶ 54; -659
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`Petition at 53.) Patent Owner does not dispute that a person of ordinary skill in the
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`art would have been motivated to adapt the participator computer software in
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`Roseman to run on multiple platforms, among other reasons, to increase the number
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`of people who could use it. (-659 Petition at 53; Ex. 1021, ¶ 54.)
`3
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`IPR2016-01159
`Petitioner’s Supplemental Reply
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`Patent Owner next argues in conclusory fashion that “even if one were to
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`create Windows and Macintosh embodiments of the Roseman system, it would not
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`meet this claim limitation.” (Supp. Resp. at 7.) Patent Owner does not provide any
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`reasoning to support this assertion. Patent Owner appears to rely on statements in
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`the ’657 specification identifying “Tellnet” and “JAVA” as exemplary embodiments
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`of client software alternatives, but the claims are not limited to those embodiments.
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`Patent Owner also asserts that, instead of creating Windows or Macintosh
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`versions of the client software, a person of ordinary skill in the art would have been
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`motivated to use a cross-platform or platform-independent implementation. (Supp.
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`Resp. at 7-8.) But the plain language of the claim does not exclude platform-specific
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`client software alternatives. In fact, the specification makes clear that although a
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`platform-independent implementation such as Java bytecode may be advantageous,
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`the claims also cover platform-specific (platform-controlled) embodiments. (’657,
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`4:32-35 (“While platform controlled embodiments are within the scope of the
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`invention, it is particularly advantageous to have a platform independent
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`embodiment, i.e., an embodiment that is byte code compiled.”) (underlining added).)
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`C.
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`“wherein both of the client software alternatives . . . allow at least
`some of the participator computers to form at least one group”
`Patent Owner next argues that Roseman fails to disclose/suggest “wherein
`
`both of the client software alternatives . . . allow at least some of the participator
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`4
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`IPR2016-01159
`Petitioner’s Supplemental Reply
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`computers to form at least one group.” (Supp. Resp. at 8.) Patent Owner contends
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`that “Petitioner is improperly relying on the child room as both a software alternative
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`and as a group.” (Supp. Resp. at 8.) To begin with, Patent Owner misleadingly
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`conflates the software itself (“software alternative”) and the functionality that the
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`software enables—the ability to form at least one “group.” Patent Owner does not
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`dispute that Roseman’s Whisper Mode and child room software features enable
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`forming a group. Patent Owner also argues without any support that the Whisper
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`Mode and child room software features cannot themselves be client software
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`alternatives because “[b]oth child room and whisper mode are common features to
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`the same software.” (Supp. Resp. at 9.) Patent Owner cites to paragraphs 67-69 of
`
`its expert declaration, which do not relate to Patent Owner’s “same software”
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`argument. There is no reason that software that includes alternative ways for
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`providing functionality does not disclose software alternatives.
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`Moreover, Patent Owner completely ignores the second way that Petitioner
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`explained that Roseman discloses the “client software alternatives”—namely,
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`Windows and Macintosh versions of the conferencing software. Because each of
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`Windows and Macintosh alternatives implement the features of the conferencing
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`software, they both allow participator computes to form groups using Whisper Mode
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`and child rooms. (-659 Petition at 53.) The Petition explained:
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`5
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`IPR2016-01159
`Petitioner’s Supplemental Reply
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`The videoconferencing software on the local computers allows users to
`create a group of two or more users who can send and receive
`communications. 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. (Roseman, 9:16-25, 15:6-
`9 & Fig. 17B.) As to the child-room software, a user of a local computer
`who drags in other participants forms a group comprising those users.
`(Roseman, 10:18-23, 15:55-67 & Fig. 21B.)
`
`(-659 Petition at 56.)
`
`
`D.
`
`“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)
`Claims 203, 209, 215 and 221 depend from, respectively, dependent claims
`
`202, 208, 214, and 220, which recite that the censoring determination “includes
`
`determining that the first user identity is censored from the sending of the data
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`presenting the [video (202) / audio (208) / graphic (214) / multimedia (220)].” Patent
`
`Owner appears to present two separate arguments, and neither has merit.
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`First, Patent Owner asserts that “Lichty merely discloses ignoring a user, not
`
`specifically excluding video, audio, graphic, or multimedia from being presented to
`
`a certain identity.” (Supp. Resp. at 9.) But this argument improperly focuses
`
`exclusively on Lichty and ignores that Lichty has been combined with Roseman.
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`Federal Circuit law is clear that “[n]on-obviousness cannot be established by
`6
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`IPR2016-01159
`Petitioner’s Supplemental Reply
`
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`attacking references individually where the rejection is based upon the teachings of
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`a combination of references.” In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed.
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`Cir. 1986). Here, Petitioner is not relying on Lichty for the claimed transmission of
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`video, audio, graphic or multimedia content – those limitations were supplied by
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`Roseman. The Petition cited Lichty for its disclosure of its censoring feature, and
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`relied on the host in Roseman to carry out the other features of the claim, including
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`the transmission of video, audio, content, graphic or multimedia content. (-659
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`Petition at 44-47.) Accordingly, under the combination of Roseman and Lichty,
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`when a first user is blocked from sending data to a second user via the censoring
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`features of Lichty, that user is blocked from sending video, audio, graphic or
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`multimedia content, whatever the case may be. The claims require nothing more.3
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`Patent Owner also makes the claim construction argument that the “user-
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`based ‘ignore’ approach [of Lichty] conflicts with the understanding of a censorship
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`according to a person of ordinary skill in the art.” (Id., at 10.) Patent Owner’s sole
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`3 Patent Owner cites to Paragraph 27 of its expert declaration filed with its -1159
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`Response. (Supp. Resp. at 9.) But that paragraph appears to have nothing to do with
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`Patent Owner’s argument. It simply discusses whether the filtering in Lichty is
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`performed on the client or the server. (Ex. 2005, ¶ 27.)
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`7
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`IPR2016-01159
`Petitioner’s Supplemental Reply
`
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`support for this assertion is Paragraph 64 of its expert declaration filed with its -1159
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`Response. But as Petitioner has previously explained, Dr. Carbonell’s opinions on
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`the construction of “censorship” rely entirely on extrinsic evidence, ignore the
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`express statements in the specification, and urge adoption of a construction that the
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`Board expressly rejected. (See Reply at 3; Ex. 1021, ¶¶ 7-9; Paper 7 (“Decision”) at
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`11-12; Second Lavian Decl. ¶ 8-9.)
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`III. CONCLUSION
`For the foregoing reasons, the Board should reject Patent Owner’s arguments
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`and enter a final decision also finding claims 203, 209, 215, 221, 477, 482, 487 and
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`492 invalid under 35 U.S.C. § 103 based on the prior art cited in the Petition.
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`
`Dated: September 25, 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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`By:
`
`
`
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`Respectfully submitted,
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`
`/Heidi L. Keefe/
`Heidi L. Keefe
`Reg. No. 40,673
`Counsel for Petitioner
`Facebook, Inc.
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`8
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`IPR2016-01159
`Petitioner’s Supplemental Reply
`
`
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`CERTIFICATE OF COMPLIANCE WITH WORD COUNT
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`
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`Pursuant to 37 C.F.R. § 42.24(d), I certify that this supplemental reply
`complies with the type-volume limits of 37 C.F.R. § 42.24(c)(1) because it contains
`1,745 words, according to the word-processing system used to prepare it, excluding
`the parts of this supplemental reply that are exempted by 37 C.F.R. § 42.24(c).
`
`
`
`DATED: SEPTEMBER 25, 2017
`
`COOLEY LLP
`ATTN: Heidi L. Keefe
`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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`1
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`IPR2016-01159
`Petitioner’s Supplemental Reply
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`CERTIFICATE OF SERVICE
`
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`I hereby certify, pursuant to 37 C.F.R. § 42.6, that a complete copy of the
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`attached PETITIONER’S SUPPLEMENTAL REPLY and related documents, are
`being served on the 25th day of September, 2017, by electronic mail on counsel of
`record for Patent Owner as follows:
`
`Vincent J. Rubino, III
`vrubino@brownrudnick.com
`Alfred R. Fabricant
`afabricant@brownrudnick.com
`Peter Lambrianakos
`plambrianakos@brownrudnick.com
`Shahar Harel
`sharel@brownrudnick.com
`Brown Rudnick LLP
`
`DATED: SEPTEMBER 25, 2017
`
`COOLEY LLP
`ATTN: Patent Docketing
`1299 Pennsylvania Avenue 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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`2
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