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`IPR2017-00606
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`PATENT NO. 8,694,657
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`MICROSOFT CORPORATION
`Petitioner
`v.
`
`WINDY CITY INNOVATIONS LLC
`Patent Owner
`
`
`
`Patent No. 8,694,657
`Issue Date: April 8, 2014
`Title: REAL TIME COMMUNICATIONS SYSTEM
`__________________________________________________________________
`
`WINDY CITY INNOVATIONS LLC’S PRELIMINARY RESPONSE
`TO PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,694,657
`
`Case No. IPR2017-00606
`________________________________________________________________
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`TABLE OF CONTENTS
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`
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`IPR2017-00606
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`PATENT NO. 8,694,657
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`I.
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`II.
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`INTRODUCTION ........................................................................................... 1
`
`PETITIONER HAS NOT DEMONSTRATED A REASONBLE
`LIKELIHOOD OF SUCCESS FOR THE SINGLE GROUND
`ADVANCED IN THE PETITION AND THE PETITION SHOULD
`BE DENIED. ................................................................................................... 2
`
`A.
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`B.
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`Brown Does Not Disclose Two Client Software Alternatives
`that Provide Real Time Communications ............................................. 2
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`The Board’s Institution Decision in the Earlier IPR Does Not
`Support Institution of this Petition ........................................................ 7
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`III. CONCLUSION ................................................................................................ 8
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`i
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`I.
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`INTRODUCTION
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`IPR2017-00606
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`PATENT NO. 8,694,657
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`On January 7, 2017, Microsoft Corporation (“Petitioner”) submitted a
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`Petition (the “Petition”) to institute inter partes review (“IPR”) of U.S. Patent No.
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`8,694,657 (Ex. 1001, the “’657 Patent”), challenging dependent claims 203, 209,
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`215, 221, 477, 482, 487, and 492 (“the Challenged Claims”). Also on January 7,
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`2017, Microsoft filed a Petitioner’s Motion for Joinder to join this proceeding with
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`IPR2016-01155 (the “Earlier IPR” or the “-01155 IPR”) on the basis that the
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`Challenged Claims purportedly contain a single limitation which is identical to one
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`found in claims for which trial is already instituted. Joinder Motion, Paper 3 at 1.
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`The Petition should be denied because the Board has already denied
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`institution of claims containing the limitation “at least two software alternatives . .
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`. wherein both of the client software alternatives 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” in real time over the same reference
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`asserted here, Brown. Specifically, in IPR 2016-01137 (the “-01137 IPR”), the
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`Board denied institution of the challenged claims of U.S. Patent No. 8,473,552 (the
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`“’552 Patent”), which is a continuation of the ’657 Patent, because the Brown
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`reference did not disclose two client software applications that enable real-time
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`1
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`IPR2017-00606
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`PATENT NO. 8,694,657
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`group member communications. IPR2016-01137, Termination Decision, Paper 8
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`at 9.
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`The Petition should also be denied because while claims with similar
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`limitations were instituted in the Earlier IPR, the claims were never analyzed by
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`the Board. Rather, the claims were instituted in the Board’s discretion without any
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`determination that the cited prior art discloses any of the limitations shared with
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`the Challenged Claims.
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`The deficiencies of the Petition detailed herein demonstrate that Petitioner
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`has not met its burden to demonstrate a reasonable likelihood that it would prevail
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`in showing unpatentability of any of the Challenged Claims.
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`II.
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`PETITIONER HAS NOT DEMONSTRATED A REASONBLE
`LIKELIHOOD OF SUCCESS FOR THE SINGLE GROUND
`ADVANCED IN THE PETITION AND THE PETITION SHOULD BE
`DENIED
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`A. Brown Does Not Disclose Two Client Software Alternatives that
`Provide Real-Time Communications
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`Petitioner contends that the Challenged Claims are unpatentable over Brown
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`in view of Sociable Web because Brown allegedly discloses three examples of
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`client applications—the “Sysop Tools” client applications, the chat application,
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`and the BBS client applications—that allow users to form at least one group that
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`can send and receive communications. (See Petition, Paper 2 at 38-39). Petitioner
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`overlooks that the independent claims from which the Challenged Claims depend
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`2
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`IPR2017-00606
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`PATENT NO. 8,694,657
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`require that these communications be real-time communications, and that Brown
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`discloses, at most, only one client application for real-time communications.
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`Independent claim 189, which Petitioner asserts is representative, provides:
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`189. A method of communicating via an Internet network by using a
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`computer system including a controller computer and a database which
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`serves as a repository of tokens for other programs to access, thereby
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`affording information to each of a plurality of participator computers which
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`are otherwise independent of each other, the method including:
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`affording some of the information to a first of the participator
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`computers via the Internet network, responsive to an
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`authenticated first user identity;
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`affording some of the information to a second of the participator
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`computers via the Internet network, responsive to an
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`authenticated second user identity; and
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`determining whether the first user identity and the second user
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`identity are able to form a group to send and to receive real-
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`time communications; and
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`determining whether the first user identity is individually censored
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`from sending data in the communications, the data presenting at
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`least one of a pointer, video, audio, a graphic, and multimedia
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`by determining whether a respective at least one parameter
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`corresponding to the first user identity has been determined by
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`an other of the user identities; and
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`3
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`IPR2017-00606
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`PATENT NO. 8,694,657
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`if the user identities are able to form the group, forming the group and
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`facilitating sending the communications that are not censored
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`from the first participator computer to the second participator
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`computer, wherein the sending is in real time and via the
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`Internet network, and wherein, for the communications which
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`are received and which present an Internet URL, facilitating
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`handling the Internet URL via the computer system so as to find
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`content specified by the Internet URL and presenting the
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`content at an output device of the second participator computer,
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`and
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`if the first user identity is censored from the sending of the data, not
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`allowing sending the data that is censored from the first
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`participator computer to the second participator computer.
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`Ex. 1001, ’657 Patent, claim 189 (emphasis added).
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`In the emphasized claim limitation above, a group is formed to send and to
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`receive real-time communications. Dependent claim 203, one of the Challenged
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`Claims, ultimately depends from claim 189 and provides:
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`203. The method of claim 202, wherein the computer system provides
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`access via any of two client software alternatives, wherein both of the client
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`software alternatives allow respective user identities to be recognized and
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`allow at least some of the participator computers to form at least one group
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`in which members can send communications and receive communications.
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`Ex. 1001, ’657 Patent, claim 203. This limitation introduces the requirement that
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`the group in which members may send and receive real-time communications
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`4
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`IPR2017-00606
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`PATENT NO. 8,694,657
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`pursuant to claim 189 is formed via any of two software alternatives. Thus, the
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`two client software alternatives must allow the members to send and receive real-
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`time communications.
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`This critical limitation is indistinguishable from the limitation of claim 1 of
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`the ’552 Patent, which was challenged in the -01137 IPR. Claim 1 of the ’552
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`Patent provides:
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`1. Apparatus to control communication, the apparatus including:
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`a controller computer system including a controller computer and a
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`database which serves as a repository of tokens for other programs to access,
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`thereby affording information to each of a plurality of participator computers
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`which are otherwise independent of each other, through an Internet network,
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`responsive to a respective authenticated user identity, wherein the controller
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`computer system is programmed to provide access to the controller
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`computer system via any of two client software alternatives, wherein both of
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`the two client software alternatives allow the respective user identities to be
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`recognized by the controller computer system and allow at least some of the
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`participator computers to form at least one group in which members can
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`send communications and receive communications from another of the
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`members, wherein at least some of the communications are received in real
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`time via the Internet network, and wherein the at least one of client software
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`alternatives allows the controller computer system to determine whether at
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`least one of the user identities, individually, is censored from data
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`representing at least one of a pointer, video, audio, graphic, and multimedia
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`such that the data that is censored is not presented by the corresponding
`5
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`IPR2017-00606
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`PATENT NO. 8,694,657
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`participator computer, the controller computer system controlling real-time
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`communications by:
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`storing each said user identity and a respective authorization to send
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`multimedia data, the multimedia data comprising graphical data; and
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`if permitted by the user identity corresponding to one of the
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`participator computers, allowing the one of the participator computers to
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`send multimedia data to another of the participator computers.
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`IPR2016-01137, Ex. 1001, ’552 Patent, Claim 1 (emphasis added).
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`In the -01137 IPR, the Board found that Brown did not disclose this
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`limitation because Brown discloses only one client software alternative that
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`provides real-time communications: Brown’s chat services. IPR2016-01137,
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`Termination Decision, Paper 8 at 9. The Board found no evidence that the Sysop
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`Tools provided for real-time communications, and also found that the BBS
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`application was specifically used for non-real-time communications. See id. For
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`this reason, the Board denied institution of the -01137 Petition.
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`This Petition should be denied for the same reason. Because the Challenged
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`Claims introduce two client software alternatives that are used in a group to send
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`and receive the communications recited in the independent claims, the two client
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`software alternatives must enable real-time communications. In analyzing the
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`dependent claims separately in the Petition, Petitioner attempts to avoid the
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`requirement of real-time communication introduced in the independent claims and
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`6
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`IPR2017-00606
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`PATENT NO. 8,694,657
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`which must continue to be a limitation in the Challenged Claims. As such, the
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`Petitioner does not address that Brown cannot meet the “two client software
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`alternatives” requirement because, as the Board found in the -01137 Petition, only
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`one client software application in Brown enables real-time communications, and
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`the Sociable Web does not supply this missing limitation. Petitioner has thus
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`failed to meet its burden to demonstrate a reasonable likelihood that it would
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`prevail in showing unpatentability of any of the Challenged Claims.
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`B.
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`The Board’s Institution Decision in the Earlier IPR Does Not
`Support Institution of this Petition
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`Petitioner argues in its joinder motion that since the “two client software
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`alternatives” limitation is already at issue in the Earlier IPR, this Petition should be
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`instituted and joined to the Earlier IPR. Joinder Motion, Paper 3 at 4–5. This
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`rationale for institution should be rejected because the Board never analyzed the
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`claims with similar limitations in the Earlier IPR when deciding to grant
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`institution.
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`The claims analyzed in the Earlier IPR, claims 1 and 597, do not contain the
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`“two client software alternatives” limitation. See IPR2016-01155, Decision, Paper
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`12 at 6-8. Rather, this limitation is found in claims 168, 334, 454, 456, and 580,
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`which the Board instituted in an exercise of its discretion, and not because the
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`Board found that Petitioner demonstrated that there was a reasonable likelihood
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`7
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`IPR2017-00606
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`PATENT NO. 8,694,657
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`that it would prevail with respect to these claims. See id. at 2. Given that the
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`Board declined to institute the -01137 IPR based on its analysis of the same
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`limitation over the same prior art references asserted here, the Board should reach
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`the same conclusion here.
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`III. CONCLUSION
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`For the foregoing reasons, Patent Owner respectfully requests that the Board
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`deny institution of the Petition in its entirety.
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`Dated: February 23, 2017
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`Respectfully submitted,
`
`/Peter Lambrianakos/
`
`Peter Lambrianakos (Reg. No. 58,279)
`Lead 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
`
`Vincent J. Rubino, III (Reg. No. 68,594)
`Backup 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
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`8
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`IPR2017-00606
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`PATENT NO. 8,694,657
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`CERTIFICATE OF WORD COUNT
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`
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`The undersigned hereby certifies that the portions of the above-captioned
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`WINDY CITY INNOVATIONS, LLC’S PRELIMINARY RESPONSE TO
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,694,657
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`specified in 37 C.F.R. § 42.24 has 1,700 words in compliance with the 14,000
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`word limit set forth in 37 C.F.R. § 42.24. This word count was prepared using
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`Microsoft Word 2010.
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`Respectfully Submitted,
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`Dated: February 23, 2017
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`By:
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` /Peter Lambrianakos/
`
`
`Peter Lambrianakos (Reg. No. 58,279)
`Lead Counsel for Patent Owner
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Tel: 212-209-4800
`Fax: 212-209-4801
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`IPR2017-00606
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`PATENT NO. 8,694,657
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6(e)(4) & 42.105(b)
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`
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`A copy of WINDY CITY INNOVATIONS, LLC’S PRELIMINARY
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`RESPONSE TO PETITION FOR INTER PARTES REVIEW OF U.S. PATENT
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`NO. 8,694,657 has been served on Petitioner at the correspondence of the
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`Petitioner as follows:
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`By Email:
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`Joseph A. Micallef
`SIDLEY AUSTIN LLP
`1501 K Street, N.W.
`Washington, D.C., 20005
`Tel. 202-736-8492
`Fax. 202-736-8711
`iprnotices@sidley.com
`jmicallef@sidley.com
`
`By Email:
`
`Herman F. Webley
`SIDLEY AUSTIN LLP
`1501 K Street, N.W.
`Washington, D.C., 20005
`Tel. 202-736-8609
`Fax. 202-736-8711
`hwebley@sidley.com
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`
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`Dated: February 23, 2017
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`By:
`
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`By Email:
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`John W. McBride
`SIDLEY AUSTIN LLP
`1 South Dearborn St.
`Chicago, Illinois 60603
`Tel. 312-853-7014
`Fax. 312-853-7036
`jwmcbride@sidley.com
`
`By Email:
`
`Todd M. Siegel
`KLARQUIST SPARKMAN LLP
`121 SW Salmon Street, Ste. 1600
`Portland, OR 97204
`Tel. 503-595-5300
`Fax. 503-595-5301
`todd.siegel@klarquist.com
`
` /Peter Lambrianakos/
`
`
`Peter Lambrianakos (Reg. No. 58,279)
`Lead Counsel for Patent Owner
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Tel: 212-209-4800
`Fax: 212-209-4801
`
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