`Tel: 571-272-7822
`
`Paper 10
`Entered: March 21, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORP.,
`Petitioner,
`
`v.
`
`WINDY CITY INNOVATIONS LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00606
`Patent 8,694,657 B1
`____________
`
`
`
`Before KARL D. EASTHOM, DAVID C. MCKONE, and J. JOHN LEE,
`Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`ORDER
`Authorizing Reply to Patent Owner Preliminary Response
`37 C.F.R. § 42.108(c)
`
`
`
`IPR2017-00606
`Patent 8,694,657 B1
`On March 21, 2017, we held a teleconference to discuss Microsoft
`Corp.’s (“Petitioner”) email request for authorization to file a reply to Windy
`City Innovations LLC’s (“Patent Owner”) Preliminary Response (Paper 8).
`Petitioner seeks to join this proceeding to Microsoft Corporation v. Windy
`City Innovations LLC, Case No. IPR2016-01155, which involves the same
`patent. Paper 3. In the Preliminary Response, Patent Owner compares the
`claims in this proceeding to those from a related patent in a related
`proceeding, Microsoft Corporation v. Windy City Innovations LLC, Case
`No. IPR2016-01137 (“the 1137 Proceeding”). Paper 8, 5–7. In particular,
`Patent Owner contends that, in the 1137 Proceeding, we determined
`Petitioner’s showing to be lacking with respect to reading certain limitations
`of the claims at issue in that proceeding onto the prior art, and that those
`same claim limitations are present in the claims of the instant proceeding.
`Id.
`
`Petitioner seeks permission to file a 3-page reply responding to Patent
`Owner’s contention that the claims at issue in this proceeding contain the
`same limitation(s) Petitioner failed to show in the prior art asserted against
`the claims at issue in the 1137 Proceeding. As we explained on the
`teleconference, on the facts of this case, we are not persuaded that it is
`reasonable to expect Petitioner to have anticipated Patent Owner’s
`comparison of the claims at issue in this proceeding to those from a different
`patent in a different, albeit related, proceeding. Cf. In re NuVasive, Inc., 841
`F.3d 966, 968 (Fed. Cir. 2016). Thus, we find that Petitioner has shown
`good cause for seeking a reply.
`
`
`2
`
`
`
`IPR2017-00606
`Patent 8,694,657 B1
`
`It is
`
`ORDER
`
`ORDERED that Petitioner is authorized to file a 3-page reply to
`Patent Owner’s Preliminary Response;
`FURTHER ORDERED that the reply is limited to responding to
`Patent Owner’s argument that the claims at issue in this proceeding include a
`limitation(s) that Petitioner, in the 1137 Proceeding, failed to establish in the
`prior art; and
`FURTHER ORDERED that the reply is due by March 29, 2017.
`
`
`
`3
`
`
`
`IPR2017-00606
`Patent 8,694,657 B1
`PETITIONER:
`
`Joseph Micallef
`SIDLEY AUSTIN LLP
`iprnotices@sidley.com
`
`Todd Siegel
`KLARQUIST SPARKMAN LLP
`todd.siegel@klarquist.com
`
`PATENT OWNER:
`
`Peter Lambrianakos
`Vincent Rubino
`BROWN RUDNICK LLP
`plambrianakos@brownrudnick.com
`vrubino@brownrudnick.com
`
`4
`
`