Paper No. 11
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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 CORP.,
`Petitioner,
`
`v.
`
`WINDY CITY INNOVATIONS LLC,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2017-00606
`U.S. Patent No. 8,694,657 B1
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`––––––––––––––––––
`
`PETITIONER’S PRELIMINARY REPLY
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`MICROSOFT CORP.,
`Petitioner,
`
`v.
`
`WINDY CITY INNOVATIONS LLC,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2017-00606
`U.S. Patent No. 8,694,657 B1
`
`––––––––––––––––––
`
`PETITIONER’S PRELIMINARY REPLY
`
`
`
`
`
`IPR2017-00606
`
`
`
`Petitioner’s Preliminary Reply
`
`Petitioner submits the following per the Board’s March 21 Order (Paper 10).
`
`Patent Owner argues that the presently challenged claims include the limitation at
`
`issue in IPR2016-01137, where institution was denied against a related patent, and
`
`urges the Board to deny institution on the same basis. Paper 8 at 2-7. Patent
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`Owner is incorrect. The claim language challenged here is materially broader than
`
`the language at issue in the 1137 proceeding, and encompasses the prior art.
`
`In the 1137 proceeding, the Board denied institution after concluding that
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`the prior art, Brown (Ex. 1012), did not disclose the following limitation:
`
`wherein both of the two client software alternatives … allow
`at least some of the participator computers to form at least one group
`in which members can send communications and receive
`communications from another of the members, wherein at least some
`of the communications are received in real time ….
`
`IPR2016-01137, Paper 8 at 8-10 (emphasis added). The Board determined this
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`language required that “the communications in a group pursuant to each of the
`
`client software alternatives must include real-time communications.” Id. at 9. In
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`other words, the Board ruled that the claim language at issue in the 1137
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`proceeding explicitly connected the “two client software alternatives” to the same
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`“group” where communications are “received in real time.” See id.
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`Here, there is no such connection between any claimed “two client software
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`alternatives” and “real time” communications. Patent Owner points to certain
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`1
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`
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`IPR2017-00606
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`
`
`Petitioner’s Preliminary Reply
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`limitations from claims 189 and 203 (which depends on claim 189 via claim 202),
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`but the plain language of those claims demonstrates the argument’s error:
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`189. A method of communication via an Internet network …
`the method including: … determining whether the first user identity
`and the second user identity are able to form a group to send and to
`receive real-time communications; …
`
`202. The method of claim 189, 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.
`
`203. The method of claim 202, wherein the computer system
`provides access via any of two client software alternatives, wherein
`both of the client software alternatives allow respective user identities
`to be recognized and allow at least some of the participator computers
`to form at least one group in which members can send
`communications and receive communications.
`
`IPR2017-00606, Paper 8 at 3-4 (emphasis added); Ex. 1001 at 36:51-38:26.
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`In the 1137 proceeding, the antecedent basis for “the communications []
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`received in real time” was the previously recited “group” comprising the “two
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`client software alternatives.” Here, however, claim 189 introduces a first “group”
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`formed “to receive real-time communications,” and claim 203 introduces a second
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`“group” comprising “both of the client software alternatives” to “send
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`communications and receive communications.” The two claimed “groups” and
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`2
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`
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`IPR2017-00606
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`
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`Petitioner’s Preliminary Reply
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`“communications” are introduced without any antecedent basis or other language
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`that requires them to be connected. The basis for the Board’s finding in the 1137
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`proceeding—the antecedent basis connecting two claim phrases—is simply not
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`present in the claims at issue here.
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`Patent Owner’s argument incorrectly presumes that these two claimed
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`groups must be the same. See Paper 8 at 4-5 (referring to “the group”). But claims
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`189 and 203 introduce two separate claimed groups, neither of which includes
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`“both client software alternatives” and requires “real time” communication. The
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`657 patent expressly contemplates multiple groups with different memberships,
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`see, e.g., Ex. 1001 at 2:18-24, 4:61-67, different client embodiments with distinct
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`capabilities, id. at 4:32-35, 7:39-41, 8:37-38, 10:54-56, and that “various different
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`modifications are possible and are within the true spirit of the invention,” id. at
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`20:52-59. The challenged claims merely require “both client software alternatives”
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`participate in “communications,” not “real-time communications.”
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`Finally, the claim language at issue here is identical to the language recited
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`by claims instituted upon in IPR2016-01155. For example, claim 203 (at issue
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`here) and 334 (at issue there) both ultimately depend on claim 189 and recite the
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`same functionality, and Patent Owner offers no rationale rooted in the language of
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`the claims for why review should be instituted on one but not the other.
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`For the foregoing reasons, the challenged claims should be cancelled.
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`3
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`
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`IPR2017-00606
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`
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`Petitioner’s Preliminary Reply
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`Dated: March 29, 2017
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`Respectfully Submitted,
`
`/Joseph Micallef/
`Joseph A. Micallef
`Reg. No. 39,772
`SIDLEY AUSTIN LLP
`1501 K Street NW
`Washington, DC 20005
`Attorney for Petitioner
`
`4
`
`
`
`IPR2017-00606
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`
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`Petitioner’s Preliminary Reply
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on this 29th day of
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`March, 2017, I caused to be served a true and correct copy of the foregoing and
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`any accompanying exhibits by e-mail on the following counsel:
`
`Peter Lambrianakos, plambrianakos@brownrudnick.com
`Vincent J. Rubino, III, vrubino@brownrudnick.com
`Alfred R. Fabricant, afabricant@brownrudnick.com
`
`
`Dated: March 29, 2017
`
`Respectfully Submitted,
`
`/Joseph Micallef/
`Joseph A. Micallef
`Reg. No. 39,772
`SIDLEY AUSTIN LLP
`1501 K Street NW
`Washington, DC 20005
`Attorney for Petitioner
`
`
`
`
`
`
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