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`IPR2017-00622
`PATENT NO. 8,694,657
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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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`FACEBOOK INC.
`Petitioner
`v.
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`WINDY CITY INNOVATIONS, LLC
`Patent Owner
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`U.S. Pat. No. 8,694,657
`Issue Date: April 8, 2014
`Title: REAL TIME COMMUNICATIONS SYSTEM
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`__________________________________________________________________
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`WINDY CITY INNOVATIONS, LLC’S OPPOSITION TO
`FACEBOOK INC.’S MOTION FOR JOINDER
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`Case No. IPR2017-00622
`__________________________________________________________________
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`I.
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`INTRODUCTION
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`IPR2017-00622
`PATENT NO. 8,694,657
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`Absent joinder, this Petition is statutorily barred from institution because
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`Petitioner Facebook Inc. waited more than one year after being served with a
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`complaint alleging infringement of the ’657 Patent.1 On June 3, 2016, Petitioner
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`filed a petition in IPR2016-01155 to challenge the ’657 Patent, including Claims
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`189 and 465 (“Facebook’s Original Petition”). On the same day, Microsoft
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`petitioned the Board to challenge the same patent in IPR2016-01155 (“Microsoft’s
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`Original Petition”). Petitioner now appeals to the Board’s discretion to join this
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`Petition (“Joinder Petition”) with Microsoft’s Original Petition. Patent Owner,
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`Windy City Innovations, LLC, respectfully opposes Petitioner’s Motion for Joinder
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`(Paper 3) because Petitioner has not met its burden and is not entitled to the
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`requested relief.
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`II. PETITIONER HAS NOT MET ITS BURDEN
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`Petitioner sets forth two reasons why joinder is appropriate: (1) the similarity
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`1 On June 2, 2015, Facebook was served with a complaint alleging infringement
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`of the ’657 Patent in Windy City Innovations, LLC v. Facebook Inc., 1:15-cv-
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`00102 (W.D.N.C.), later transferred to the Northern District of California (4:16-cv-
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`01730). On June 2, 2015, Microsoft was served with a complaint alleging
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`infringement of the ’657 Patent in Windy City Innovations, LLC v. Microsoft
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`Corporation, 1:15-cv-00103 (W.D.N.C.), later transferred to the Northern District
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`of California (4:16-cv-01729).
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`IPR2017-00622
`PATENT NO. 8,694,657
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`of the petitions, and (2) to maintain Microsoft’s Original IPR in the event of that
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`Microsoft settles or otherwise ceases participation. The latter reason is insufficient
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`as baseless and speculative. As explained below, the petitions are not
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`“substantively the same” as alleged by Petitioner.
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`III. PETITIONER’S NEW ARGUMENTS
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`Petitioner advances alternative facts when it states that the Joinder Petition
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`is “substantively the same” as Microsoft’s Original Petition. In Microsoft’s
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`Original Petition, Microsoft used five (5) pages to broadly address Claim 189,
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`largely citing back to Claim 1 arguments, repeating claim language, and broadly
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`asserting obviousness. See Orig. Pet. at 32–37. Given the differences in coverage
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`and perspective between the two claims––for one, Claim 1 is directed to censoring
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`from receiving data, while Claim 189 covers censoring from sending data––Patent
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`Owner has justifiably relied on Microsoft’s wave of the hand in forming its defense
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`to Microsoft’s Original Petition. Seeking to correct the mistakes of Microsoft’s
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`Original Petition by including nearly 18 pages2 worth of arguments against Claim
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`189, Petitioner blatantly attempts to insert new arguments in its Joinder Petition.
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`See Join. Pet. at 18–35. Granting joinder would result in both Petitioner Facebook
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`and Microsoft circumventing estoppel doctrines and statutory limitations on
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`petitioners, all within the Board’s familiarity and not belabored here.
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`2 Based on a 230-word page, this amounts to an estimated additional 4140 words.
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`IPR2017-00622
`PATENT NO. 8,694,657
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`IV. PETITIONER’S NEW CLAIM CONSTRUCTIONS
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`Moreover, Petitioner now admits to proposing multiple claim constructions
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`on the same ’657 Patent for each of the proposed terms in the Joinder Petition3,
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`positioning itself to improperly benefit from inconsistent and alternative
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`constructions before the Board. In addition to estoppel considerations, Facebook
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`and Microsoft are employing gamesmanship tactics, using the Board’s decisions as
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`a roadmap to develop their positions and overcome their shortcomings.
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`V. JOINDER WOULD PREJUDICE PATENT OWNER
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`Benefits appear to be illusory here, as Petitioner projects some delay and a
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`“reasonable adjustment” to the schedule. Any efficiency related to joining this
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`already statutorily-barred petitioner must be outweighed by the inefficiencies of
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`additional analyses and briefing, increased expenditures of party and Board
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`resources, and delayed resolution of the proceedings. Petitioner further fails to
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`identify any burdens arising from Facebook and Microsoft’s collective blitz of
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`second bites at the apple: ten concurrently-filed new petitions, each with motions
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`to join one of the seven of eleven surviving IPRs against Patent Owner.4 Petitioner
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`3 See Joinder Pet. at p. 9.
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`4 Between January 7th and 17th, Facebook and Microsoft have collectively filed 10
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`new petitions with accompanying joinder motions in in IPR2017-00603, -00605, -
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`00606, -00622, -00624, -00655, -00656, -00659, -00669, and -00709, seeking
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`IPR2017-00622
`PATENT NO. 8,694,657
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`has not identified any reasons why it elected to delay joining these new
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`proceedings until the last minute, despite having every opportunity to advance
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`these grounds before the one-year window.
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`VI. CONCLUSION
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`Statutory estoppel provisions were designed to address the very
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`circumstances of this case to “protect patent owners from harassment via
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`successive petitions by the same or related parties, to prevent parties from having a
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`second bite at the apple, and to protect the integrity of both the PTO and Federal
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`Courts by assuring that all issues are promptly raised and vetted.” 77 FR 48759.
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`In light of the particular facts of this case, Patent Owner respectfully requests that
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`the Board use its discretion to deny Petitioner’s Motion for Joinder.
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`Dated: February 6, 2017
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`
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`By:
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`/Peter Lambrianakos /
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`Peter Lambrianakos (Reg. No. 58,279)
`Lead Counsel for Patent Owner
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Telephone: 212-209-4800
`Facsimile: 212-209-4801
`Email: plambrianakos@brownrudnick.com
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`joinder to one of IPR2016-01067, -01141, -01155, -01156, -01157, -01158, and -
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`01159.
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`IPR2017-00622
`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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`A copy of WINDY CITY INNOVATIONS, LLC’S OPPOSITION TO
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`FACEBOOK INC.’S MOTION FOR JOINDER has been served on Petitioner’s
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`counsel of record at the correspondence of the Petitioner as follows:
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`By Email:
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`Phillip E. Morton (Reg. No. 57,835)
`pmorton@cooley.com
`zpatdcdocketing@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington D.C. 20004
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`
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`By Email:
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`Heidi L. Keefe (Reg. No. 40,673)
`hkeefe@cooley.com
`zpatdcdocketing@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
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`By Email:
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`Andrew C. Mace (Reg. No. 63,342)
`amace@cooley.com
`zpatdcdocketing@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
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`/Peter Lambrianakos /
`Peter Lambrianakos (Reg. No. 58,279)
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Telephone: 212-209-4800
`Facsimile: 212-209-4801
`Email: plambrianakos@brownrudnick.com
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`February 6, 2017
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`By:
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