Paper No. 9
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION
`Petitioner,
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`v.
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`WINDY CITY INNOVATIONS LLC
`Patent Owner.
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`____________________
`Case No. IPR2017-00606
`U.S. Patent No. 8,694,657
`____________________
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`PETITIONER’S REPLY IN SUPPORT OF ITS MOTION FOR JOINDER
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION
`Petitioner,
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`v.
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`WINDY CITY INNOVATIONS LLC
`Patent Owner.
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`____________________
`Case No. IPR2017-00606
`U.S. Patent No. 8,694,657
`____________________
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`PETITIONER’S REPLY IN SUPPORT OF ITS MOTION FOR JOINDER
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`IPR2017-00606
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`Petitioner’s Reply ISO Its Motion for Joinder
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`Petitioner Microsoft Corporation’s Motion for Joinder (Paper 3, “Mot.”)
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`should be granted because joinder would add no new issues and cause no undue
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`prejudice or delay. Patent Owner advances three arguments in opposition (Paper 7,
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`“Opp.”), none of which have merit.
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`First, Patent Owner incorrectly asserts that joinder would add “new
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`arguments” and “new substantive issues.” Opp. at 1, 3-4. But Patent Owner does
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`not dispute that each claim that Petitioner seeks to join recites a “limitation that is
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`identical to one found in claims for which trial is already instituted.” See id.; Mot.
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`at 1. Indeed, the present petition simply adds eight claims that directly depend
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`from claims on which trial is already instituted, each of which contains a single
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`limitation that is identical to one already found in claims for which trial is already
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`instituted.2 Petitioner’s earlier IPR challenged claims 168, 334, 454, 456, and 580,
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`which each recite the challenged limitation verbatim, and expressly explained how
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`the prior art discloses the limitation. Mot. at 5. The Board instituted trial on each
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`of these claims in the earlier proceeding. See IPR2016-01155, Paper 12 at 36-37.
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`Patent Owner’s opposition never explains how the new claims Petitioner seeks to
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`2 Challenged claims 203, 209, 215, 221, 477, 482, 487, and 492 depend on claims
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`202, 208, 214, 220, 476, 481, 486, and 491, respectively. Trial was instituted on
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`all of these parent claims. IPR2016-01155, Paper 12 at 36-37.
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`1
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`IPR2017-00606
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`challenge are meaningfully different from those claims on which an IPR was
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`Petitioner’s Reply ISO Its Motion for Joinder
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`already instituted, or how their consideration would require consideration of “new
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`substantive issues.” See Apple Inc. v. VirnetX Inc., IPR2016-00063, Paper 13 at 5
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`(PTAB Jan. 25, 2016) (discounting a patent owner’s complaints of unexplained
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`and unsupported “additional issue[s]” due to joinder).
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`Second, Patent Owner alleges that Petitioner was on notice, prior to the
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`filing of IPR2016-01155, that these additional claims were alleged infringed, based
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`on Patent Owner’s complaint in the distric court action. Opp. 2-3. But that
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`complaint simply stated that “Microsoft’s Accused Instrumentalities meet claims
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`of the patents-in-suit.” Case 1:15-cv-00103-GCM, Dkt. No. 1 at ¶30 (W.D.N.C.
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`June 2, 2015). This expansive allegation gave Petitioner no meaningful notice of
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`which claims Patent Owner would put at issue in litigation, especially given that
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`the ’657 patent was asserted along with three other patents and itself includes 671
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`claims.3 It was not until it served its infringement contentions on October 20,
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`3 Petitioner moved to dismiss Patent Owner’s complaint on this basis: “The
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`Complaint alleges only that Microsoft ‘infringes claims of the patents-in-suit.’ …
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`[T]he generality and breadth of these allegations fail to provide Microsoft with any
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`meaningful notice of what is at issue in this case and what it must defend, and for
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`these reasons alone Windy City’s direct infringement claims should be dismissed.”
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`Case No. 1:15-cv-00103-GCM, Dkt. No. 15 at 2 (W.D.N.C. July 24, 2015); but see
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`2
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`IPR2017-00606
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`2016, over four months after Petitioner’s Section 315(b) date, see IPR2016-01155,
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`Petitioner’s Reply ISO Its Motion for Joinder
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`Paper 1 at 2, that Patent Owner identified for the first time which of the 671 claims
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`it actually accused Petitioner of infringing.
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`In this context, Patent Owner’s reliance on Arris Group, Inc. v. Cirrex
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`Systems LLC is misplaced. Opp. at 3. Unlike here, that petition introduced “new
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`prior art references” and “combinations … not previously considered by the
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`Board.” IPR2015-00530, Paper 12 at 7 (PTAB July 27, 2015). Moreover, the
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`complaint in that case alleged infringement of “one or more claims” of a patent
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`with only 51 claims. Id. at 8-9. Here, however, Patent Owner’s complaint
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`generally alleged infringement of “claims of the patents-in-suit,” which in the ’657
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`patent’s case included more than thirteen times as many claims as the Arris patent.
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`A more analogous situation is found in Sony Corporation v. Yissum
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`Research Development Company of the Hebrew University of Jerusalem,
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`IPR2013-00326, Paper 15 (PTAB Sept. 24, 2013). There, the patent owner served
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`a complaint alleging infringement of “one or more claims” of a patent with 155
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`claims. Id. at 3; see HumanEyes Tech. Ltd. v. Sony Elec., Inc., C.A. No. 12-398,
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`Dkt. No. 1 at ¶29 (D. Del. Mar. 29, 2012). Petitioner Sony filed an initial IPR
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`Case No. 16-cv-01729-YGR, Dkt. No. 54 at 5-9 (N.D. Cal. June 17, 2016)
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`(denying this aspect of Petitioner’s motion to dismiss).
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`3
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`IPR2017-00606
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`petition against a subset of those claims. IPR2013-00326, Paper 15 at 2. Later,
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`Petitioner’s Reply ISO Its Motion for Joinder
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`and after the filing of the IPR, the patent owner strategically identified three claims
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`for assertion that were not at issue in the IPR. Id. at 6. Sony then filed a second
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`IPR petition against those claims and timely requested joinder to its initial petition.
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`Id. The Board found that because “no specific claim … infringement assertions
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`were made originally” with respect to those three additional claims, “Petitioner’s
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`challenge … [was] a reasonable and timely response to Patent Owner’s litigation
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`posture, as opposed to a dilatory, unilateral action,” and thus granted joinder. Id.
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`Here, Petitioner likewise responded to “a litigation shift by Patent Owner”
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`by challenging claims not subject “specific … infringement assertions” until after
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`the filing of the original IPR. See id. Allowing joinder is thus an appropriate and
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`efficient way to deal with Patent Owner’s vague complaint and excessively large
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`number of issued claims. This is especially true where the newly challenged
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`claims recite the same limitations as those previously challenged.
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`Finally, Patent Owner asserts, largely without explanation, that joinder
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`would cause undue prejudice and delay. Opp. at 4-5. For example, Patent Owner
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`complains of the supposed circumvention of “estoppel doctrines and statutory
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`limitations,” id., but 35 U.S.C. § 315(c) explicitly exempts requests for joinder
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`from the timing requirements of § 315(b), and allowing institution against these
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`eight new claims would subject petitioner to additional estoppel after any final
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`4
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`IPR2017-00606
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`written decision. See § 315(e). Patent Owner also makes no attempt to explain
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`Petitioner’s Reply ISO Its Motion for Joinder
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`what “additional analyses and briefing” and “increased expenditures of party and
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`Board resources” (Opp. at 5) would be required by considering eight additional
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`claims that recite identical limitations to claims already at issue in the previous
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`IPR. Further, Patent Owner offers no explanation for why joinder would result in
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`“delayed resolution” of the original proceeding (Opp. at 5) — joinder of the two
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`proceedings would require at most only minor adjustments to the schedule that
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`would not unduly delay the final hearing or final decision in the original
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`proceeding. Patent Owner’s complaints amount to a general allegation of
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`prejudice, and should not be given weight. Conversely, granting joinder would
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`allow eight claims that recite limitations already found to be likely unpatentable to
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`undergo the “just, speedy, and inexpensive resolution” of an inter partes review
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`proceeding (37 C.F.R. §42.1(b)), rather than forcing the parties to litigate these
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`issues in in two different forums.
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`For these reasons, Petitioner’s motion for joinder should be granted.
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`Dated: March 3, 2017
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`Respectfully Submitted,
`/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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`5
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`IPR2017-00606
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`Petitioner’s Reply ISO Its Motion for Joinder
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`CERTIFICATE OF SERVICE
`I hereby certify that on this 3rd day of March, 2017, a true and correct copy
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`of the foregoing document was served in its entirety in the manner indicated below
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`on the following:
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`Peter Lambrianakos, plambrianakos@brownrudnick.com
`Vincent J. Rubino, III, vrubino@brownrudnick.com
`Alfred R. Fabricant, afabricant@brownrudnick.com
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`Dated: March 3, 2017
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`Respectfully submitted,
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`/Joseph Micallef/
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`Joseph A. Micallef
`Registration No. 39,772
`Attorney for Petitioner
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