`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION
`Petitioner,
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`v.
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`WINDY CITY INNOVATIONS LLC
`Patent Owner.
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`Patent No. 8,694,657
`Title: REAL TIME COMMUNICATIONS SYSTEM
`____________________
`Inter Partes Review No. IPR2017-00606
`____________________
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`PETITIONER’S MOTION FOR JOINDER
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`I.
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`II.
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`Petitioner’s Motion for Joinder
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`TABLE OF CONTENTS
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`Page
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`Introduction ...................................................................................................... 1
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`Background and Related Proceedings ............................................................. 2
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`III. Argument ......................................................................................................... 4
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`A.
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`B.
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`C.
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`Joinder is Appropriate ........................................................................... 5
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`Little or No Impact on IPR Trial Schedule ........................................... 7
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`Briefing and Discovery Will Be Simplified .......................................... 8
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`D. No Prejudice to Patent Owner if Proceedings Are Joined .................... 9
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`IV. Conclusion ....................................................................................................... 9
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`I.
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`Introduction
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`Petitioner’s Motion for Joinder
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`Microsoft filed a petition for inter partes review of U.S. Patent No.
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`8,694,657 (“657 Patent”), in IPR2016-01155 (The “Earlier IPR”), challenging over
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`150 of the 657 Patent’s 671 claims. The Earlier IPR was instituted on December 8,
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`2016 as to all challenged claims. Petitioner Microsoft Corporation (“Microsoft”)
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`hereby moves under 35 U.S.C. § 315(c) to join the present proceeding to the
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`Earlier IPR. Doing so will add to the proceeding eight dependent claims1—
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`asserted by Patent Owner against Petitioner in district court after Petitioner filed
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`the Earlier IPR—that directly depend from claims on which trial is already
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`instituted. These eight claims contain a single limitation that is identical to one
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`found in claims for which trial is already instituted.2 The minimal additional work
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`1 Claims 203, 209, 215, 221, 477, 482, 487, and 492 (the “Petition Claims”).
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`2 The analysis of these additional claims with respect to this limitation can be
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`found in the concurrently filed petition in Section V.E starting on page 38. That
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`analysis is the same analysis set forth in the Earlier IPR in Section V.D.17 on
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`pages 60-62. The concurrently filed petition also addresses claims 189, 202, 208,
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`214, 220, 465, 476, 481, 486, and 492 but only because the Petition Claims depend
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`from these claims. The concurrently filed petition also addresses claim 1, but only
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`1
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`Petitioner’s Motion for Joinder
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`to address these claims is “strongly outweighed by the public interest in having
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`consistency of outcome concerning similar sets of claimed subject matter and prior
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`art,” and Microsoft accordingly requests that this petition be joined to the Earlier
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`IPR. See Samsung Electronics Co., Ltd. V. Virginia Innovation Sciences, Inc.,
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`IPR2014-00557, Paper 10 at 18 (PTAB June 13, 2014).
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`II. Background and Related Proceedings
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`On June 2, 2015, Patent Owner filed a complaint alleging infringement of
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`the 657 Patent against Petitioner. Windy City Innovations, LLC v. Microsoft
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`Corporation, 1:15-cv-103 (W.D.N.C.). This case was transferred to the Northern
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`District of California (No. 3:16-cv-01729-RS). Patent Owner also filed a
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`complaint against Facebook, Inc. Windy City Innovations, LLC v. Facebook, Inc.,
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`1:15-cv-102 (W.D.N.C.). This case also was transferred to the Northern District of
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`to make it clear that the analysis here is the same as in the Earlier IPR—the Earlier
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`IPR analyzed claims 189 and 465 with reference to claim 1. The analysis of
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`claims 1, 189, 202, 208, 214, 220, 465, 476, 481, 486, and 492 presented in the
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`concurrently filed petition is the same analysis set forth in the Earlier IPR. Trial
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`has already been instituted with respect to claims 1, 189, 202, 208, 214, 220, 465,
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`476, 481, 486, and 492 in the Earlier IPR proceeding.
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`2
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`Petitioner’s Motion for Joinder
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`California (No. 3:16-cv-01730-RS). On June 3, 2016, Microsoft filed the Earlier
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`IPR challenging the 657 Patent.3 On June 3, 2016, Facebook filed IPR2016-01159
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`also challenging the 657 Patent. On October 20, 2016, more than four months after
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`Petitioner’s § 315(b) bar date passed, Patent Owner served its infringement
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`contentions on Microsoft in the 1:15-cv-103 case, identifying for the first time
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`which of the 671 claims of the 657 Patent it accused Microsoft of infringing. In its
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`infringement contentions, Patent Owner asserted independent claims 189 and 465
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`as well as dependent claims 203, 209, 215, 221, 477, 482, 487, and 492 of the 657
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`Patent. Trial was instituted in IPR2016-01155 on December 8, 2016 on all claims
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`3 The Earlier IPR challenged claims 1, 2, 18, 27, 35, 43, 51, 65, 79, 93, 100, 108,
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`114, 126, 138, 150, 156, 168, 170, 172, 176, 178, 180, 182–90, 202, 208, 214, 220,
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`226, 238, 250, 262, 268, 274, 280, 292, 304, 316, 322, 328, 334, 336, 340, 342,
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`344, 346, 348, 350, 352–54, 362, 366, 370, 374, 378, 386, 394, 402, 406, 410, 414,
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`422, 430, 438, 442, 450, 452, 454, 456, 458, 460, 462, 464–66, 476, 481, 486, 491,
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`496, 505, 515, 525, 530, 535, 545, 555, 565, 570, 580, 582, 584, 586, 588, 590,
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`592, 594, 596–98, 606, 607, 615–17, 619, 621, 622, 624–26, 628, 630, 632–34,
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`636, 638, 640–42, 644, 646, and 648–71.
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`3
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`Petitioner’s Motion for Joinder
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`challenged by the Earlier IPR, including independent claims 189 and 465. Trial
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`was instituted in IPR2016-01159 on December 12, 2016.
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`Concurrently with this motion, Petitioner files a petition for inter partes
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`review of the 657 Patent that challenges dependent claims 203, 209, 215, 221,
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`465, 477, 482, 487, and 492. See Paper 1.
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`III. Argument
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`Petitioner respectfully requests the Board exercise its discretion to institute
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`this IPR and grant its joinder with the Earlier IPR, pursuant to 35 U.S.C. § 315(c),
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`37 C.F.R. § 42.22, and 37 C.F.R. § 42.122(b). Doing so would add claims 203,
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`209, 215, 221, 477, 482, 487, and 492 to the claims challenged in the Earlier IPR.
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`Adding these claims raises no new substantive issues. These claims contain
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`merely a subset of the same claim limitations challenged in the Earlier IPR, and are
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`challenged using the same claim constructions, same arguments, same exhibits,
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`and same expert and expert declaration. Petitioner therefore seeks (1) a
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`determination that this IPR warrants institution; and (2) joinder of this IPR into the
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`Earlier IPR proceeding.
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`The challenged claims raise a subset of the same issues raised in the Earlier
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`IPR. Challenged claim 203 depends from claim 202, claim 209 depends from
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`claim 208, claim 215 depends from claim 214, claim 221 depends from claim 220,
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`4
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`Petitioner’s Motion for Joinder
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`claim 477 depends from claim 476, claim 482 depends from claim 481, claim 487
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`depends from claim 486, and claim 492 depends from claim 491. The parent
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`claims—202, 208, 214, 220, 476, 481, 486, and 491—are all claims for which trial
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`in the proceeding has been instituted. See Paper 12 at 36-37 (Institution Decision).
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`To these parent claims, each of the newly asserted claims add a single
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`identical limitation: “wherein the computer system provides access via any of two
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`client software alternatives, wherein both of the client software alternatives allow
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`respective user identities to be recognized and allow at least some of the
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`participator computers to form at least one group in which members can send
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`communications and receive communications.” This specific limitation is already
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`at issue in this proceeding. Microsoft’s Earlier IPR challenged claims 168, 334,
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`454, 456, and 580, which each recite the limitation verbatim, and expressly
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`explained how the prior art discloses the limitation. See Paper 1 at 60-62; see also
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`Ex. 1003(¶¶890-901). The Board instituted trial on each of these claims in the
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`Earlier IPR proceeding. See Paper 12 at 36-37.
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`A.
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`Joinder is Appropriate
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`Joinder is appropriate because it is the most expedient way to secure the just,
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`speedy and inexpensive resolution of the related proceedings. See 35 U.S.C. §
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`316(b); 37 C.F.R. § 42.1(b). As explained in Microsoft v. Proxyconn:
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`5
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`Petitioner’s Motion for Joinder
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`Based upon the admitted facts and our own findings, supra, we have
`determined that this policy [of just, speedy, and inexpensive
`resolution of a proceeding] would best be served by granting
`Petitioner’s motion. The same patents and parties are involved in both
`proceedings. There is an overlap in the cited prior art. There is no
`discernible prejudice to either party. Petitioner has been diligent and
`timely in filing the motion. And while some adjustments to the
`schedule have been necessary, there is not undue delay. In sum, the
`relevant factors of which we are aware all weigh in favor of granting
`this motion.
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`IPR2013-00109, Paper 15 at 4-5 (PTAB Feb. 25, 2013); see also Target Corp. v.
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`Destination Maternity Corp., IPR2014-00508, Paper 31 at 4 (Expanded PTAB
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`panel Feb. 12, 2015); Cardiocom, LLC v. Robert Bosch Healthcare Sys, Inc.,
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`IPR2013-00469, Paper 21 at 14 (PTAB Jan 28, 2014); ABB Inc. v. ROY-G-BIV
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`Corp., IPR2013-00282, Paper 15 at 3-4 (PTAB Aug. 9, 2013); Larose Indus. V.
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`Capriola Corp., IPR2013-00121, Paper 11 at 23-24 (PTAB June 28, 2013). As in
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`the cited cases, the same patent and parties are involved in both proceedings, but
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`here the prior art and arguments are exactly the same, rather than merely
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`overlapping.
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`Indeed, the specific circumstance here, where the Patent owners newly
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`asserts infringement of claims after a Petitioner has filed an IPR petition, has been
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`recognized as one in which joinder is appropriate. See, e.g., Amneal Pharms., LLC
`6
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`Petitioner’s Motion for Joinder
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`v. Endo Pharms. Inc., Case IPR2014-01365, Paper 13 at 14 (PTAB Feb. 4, 2015)
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`(“Because Patent Owner asserted claims 44 and 47 for the first time after Petitioner
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`filed its first Petition, and after the § 315(b) bar date passed, we are persuaded that
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`Petitioner has shown that joinder is justified ….”).
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`Moreover, Microsoft’s present petition is timely filed under 37 C.F.R. §
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`42.122(b) – i.e., within one month of the Board’s December 8, 2016 decision to
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`institute trial in the Earlier IPR. See IPR2016-01155, Paper 12 at 1; 37 C.F.R. §
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`42.122(b). In addition, the time periods set forth in 37 C.F.R. §42.101(b) do not
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`apply to the present petition, because it is accompanied by this motion for joinder.
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`37 C.F.R. § 42.122(b).
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`B.
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`Little or No Impact on IPR Trial Schedule
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`The trial schedule for the Earlier IPR would not need to be delayed to effect
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`joinder. Because the present petition challenges a subset of the same grounds
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`based on the same evidence and with the same expert declaration, the proceedings
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`can be joined without any change to the trial schedule. Enzymotec Ltd. v. Neptune
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`Techs. & Bioresources Inc., Case IPR2014-00556, Paper 19 at 5 (PTAB July 9,
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`2014) “[Petitioner’s] assertion that claims 2 and 25, as well as claims 3 and 26, are
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`unpatentable as anticipated is based on the prior art already of record …. Thus,
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`we are persuaded that the impact of joinder on the previous proceeding will be
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`7
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`Petitioner’s Motion for Joinder
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`minimal from both a procedural and substantive view point.”) (emphasis added).
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`The joint proceeding would allow the Board and the parties to focus on the merits
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`in one consolidated proceeding in a timely manner.
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`At most, joinder of the two proceedings would require only minor
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`adjustments to the schedule and should not unduly delay the final hearing or final
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`decision in the Earlier IPR. And Petitioner is willing to make appropriate revisions
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`to the schedule to maximize efficiency of the proceedings. Such minor
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`adjustments to the schedule, if necessary, would not be undue delay. Proxyconn,
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`IPR2013-00109, Paper 15 at 4-5; Samsung, IPR2014-00557, Paper 10 at 18.
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`C. Briefing and Discovery Will Be Simplified
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`Briefing and discovery in the instant proceeding can be simplified to
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`minimize any impact on the schedule of the Earlier IPR. First, as discussed above,
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`all of the limitations of the claims challenged in the present petition have been
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`considered in view of the same art but with respect to other claims. This complete
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`overlap in issues simplifies briefing and discovery. Second, Petitioner relies on the
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`same testimony from the same expert witness in both proceedings (Ex. 1003 from
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`the Earlier IPR). Thus discovery can be simplified by arranging for a single
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`deposition of Microsoft’s expert. See Samsung, IPR2014-00557, Paper 10 at 17-18
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`(finding minimal added work “strongly” outweighed by public interest).
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`8
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`Petitioner’s Motion for Joinder
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`D. No Prejudice to Patent Owner if Proceedings Are Joined
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`Windy City will not be prejudiced by joinder of these two proceedings.
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`Petitioner filed the present petition timely, and as discussed above, the
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`substantially complete overlap in claimed subject matter, prior art references, and
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`expert witness testimony allows Windy City to efficiently prepare briefs and
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`engage in discovery without significant burden, expense, or delay. Further, as
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`discussed above, any adjustments to the trial schedule in the Earlier IPR resulting
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`from joinder should be minor.
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`IV. Conclusion
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`For the foregoing reasons, Petitioner respectfully requests that the Board (1)
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`determine that institution of trial is warranted; and (2) join the present proceeding
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`into the Earlier IPR (IPR2016-01155).
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`Dated: January 7, 2017
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`Respectfully Submitted,
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`/Joseph A. Micallef/
`Joseph A. Micallef
`Registration No. 39,772
`SIDLEY AUSTIN LLP
`1501 K Street NW
`Washington, DC 20005
`Attorney for Petitioner
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`9
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`Petitioner’s Motion for Joinder
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`U.S. Mail Priority Express & Email
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 7th day of January, 2017, a true and correct copy
`of the foregoing document was served in its entirety in the manner indicated below
`on the following:
`
`
`Peter K. Trzyna, ESQ.
`PO BOX 7131
`Chicago IL 60680
`Pkt-law@sbcglobal.net
`Pktlawoffice@gmail.com
`
`Peter Lambrianakos
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`plambrianakos@brownrudnick.com
`afabricant@brownrudnick.com
`vrubino@brownrudnick.com
`
`Bradley W. Caldwell
`Jason D. Cassady
`John Austin Curry
`Warren J. McCarty
`CALDWELL CASSADY & CURRY
`2101 Cedar Springs Road, Suite 1000
`Dallas, Texas 75201
`bcaldwell@caldwellcc.com
`jcassady@caldwellcc.com
`acurry@caldwellcc.com
`wmccarty@caldwellcc.com
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`
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`Federal Express & Email
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`Federal Express & Email
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`Dated: January 7, 2017
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`Respectfully submitted,
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`/ Joseph A. Micallef /
`Joseph A. Micallef
`Registration No. 39,772
`Attorney for Petitioner
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`
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`ACTIVE 219071281v.3
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`
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