Atty Docket No. FABO-041/01US
`(309101-2163)
`
`
`
`
`IPR2017-00622
`U.S. Patent No. 8,694,657
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
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`
`
`
`
`
`
`
`
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`FACEBOOK, INC.
`Petitioner
`
`v.
`
`WINDY CITY INNOVATIONS, LLC
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2017-00622
`Patent No. 8,694,657
`__________________
`
`REPLY TO OPPOSITION TO MOTION FOR JOINDER
`
`
`
`
`(309101-2163)
`
`
`
`
`IPR2017-00622
`U.S. Patent No. 8,694,657
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`FACEBOOK, INC.
`Petitioner
`
`v.
`
`WINDY CITY INNOVATIONS, LLC
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2017-00622
`Patent No. 8,694,657
`__________________
`
`REPLY TO OPPOSITION TO MOTION FOR JOINDER
`
`
`
`
`
`Atty Docket No. FABO-041/01US
`
`IPR2017-00622
`(309101-2163)
`
`U.S. Patent No. 8,694,657
`Petitioner respectfully submits this Reply in support of Petitioner’s Motion
`
`for Joinder (Paper 3) (“Motion”) and in reply to Patent Owner’s opposition (Paper
`
`7) (“Opposition”). Patent Owner does not demonstrate any reason why the Board
`
`should deny joinder in view of the substantial good cause shown in the Motion.
`
`Patent Owner raises several arguments, none of which warrant denial of joinder.
`
`I.
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`PETITIONER HAS NOT RAISED ANY NEW ARGUMENTS
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`First, Patent Owner argues that Petitioner’s Joinder Petition and Microsoft’s
`
`Original Petition are not “substantially the same” based on a count of number of
`
`pages dedicated to the analysis for Claim 189. (Paper 7 at 2 (alleging that the
`
`Original Petition directed 5 pages to Claim 189 and the Joinder Petition devotes 18
`
`pages).) Patent Owner’s argument is misleading at best and ignores the substance
`
`of the analysis, which is, in fact, substantially the same. The Original Petition
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`devoted 14 pages to Claim 1 plus a few additional pages to Claim 189 because
`
`much of the Claim 189 analysis referred back to similar limitations of Claim 1.
`
`(IPR2016-01155, Paper 1 at 18-32 (Claim 1), 32-37 (Claim 189, referring back to
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`§V.C.1 regarding Claim 1).) The Joinder Petition does not address Claim 1 and
`
`therefore presents the same substantive analysis as to Claim 189 in the first
`
`instance. (Compare IPR2016-01155, Paper 1 at 18-37 with Paper 1 at 18-35.)
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`Patent Owner incorrectly alleges that the Joinder Petition raises “new
`
`arguments” to correct alleged “mistakes” in the Original Petition, and points to the
`
`1
`
`
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`Atty Docket No. FABO-041/01US
`
`IPR2017-00622
`(309101-2163)
`
`U.S. Patent No. 8,694,657
`fact that Claim 1 recites censoring of receiving data while Claim 189 reciting
`
`censoring of sending data. (Paper 7 at 2.) However, Patent Owner does not
`
`identify any new argument in the Joinder Petition or any alleged “mistake” that is
`
`being corrected. In fact, the Original Petition accounted for this difference
`
`between Claims 1 and 189, and the Joinder Petition adopts the same analysis that
`
`the Original Petition presented on these limitations. (IPR2016-01155, Paper 1 at
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`27-29 and 32 (discussing prior art disclosure of Claim 1 “censored from receiving
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`data” limitation), 33-35 and 36-37 (discussing prior art disclosure of Claim 189
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`“censored from sending data” limitation), Joinder Petition at 27-31 and 34-35
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`(adopting the Original Petition’s analysis regarding censoring of sending and
`
`receiving data).)
`
`In sum, Patent Owner does not identify any assertion, argument, or citation
`
`that is contained in the Joinder Petition but was not contained in the Original
`
`Petition. Joinder is fully appropriate here.
`
`II.
`
`PETITIONER IS NOT USING THE BOARD’S DECISION AS A
`ROADMAP
`Patent Owner alleges that Petitioner proposes multiple claim constructions
`
`as a matter of “gamesmanship” and alleges that Petitioner is “using the Board’s
`
`decision as a roadmap.” (Paper 7 at 3.) These assertions are simply not true. In
`
`fact, to maintain full consistency for joinder purposes, Petitioner’s Joinder Petition
`
`2
`
`
`
`Atty Docket No. FABO-041/01US
`
`IPR2017-00622
`(309101-2163)
`
`U.S. Patent No. 8,694,657
`proposes the identical claim constructions and reasoning that were set forth in the
`
`Original Petition, without accounting
`
`for any subsequent analysis or
`
`determinations by the Board. (See Paper 1 at 9, n. 1.) With respect to the
`
`allegation of “multiple claim constructions” between the present case and other
`
`proceedings, the Petition notes that Petitioner “does not believe that there is any
`
`material difference between the stated positions for purposes of the respective
`
`proceedings.” (Id.) Patent Owner does not argue that there is any material
`
`difference between the constructions proposed in the different proceedings for the
`
`purposes of the respective proceedings. Thus, any differences in the wording of
`
`any proposed claim constructions do not present any reason to deny joinder.
`
`Patent Owner fails to make any contrary showing.
`
`III. JOINDER WILL NOT PREJUDICE WINDY CITY GIVEN THE
`SUBSTANTIAL OVERLAP IN THE TWO PROCEEDINGS
`Finally, joinder in this case will cause no discernible prejudice to Windy
`
`City given the overlap in the subject matter of the two proceedings. The Joinder
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`Petition presents only a subset of the same content presented in the Original
`
`Petition. (See Paper 3 at 6-10.) Patent Owner alleges that there may be
`
`unspecified “additional analyses and briefing” and “increased expenditures” (Paper
`
`7 at 3), but fails to identify any additional analysis, briefing, or expenditures that
`
`allegedly would result from joinder. As set forth in its Motion (Paper 3 at 9-10),
`
`3
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`
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`Atty Docket No. FABO-041/01US
`
`IPR2017-00622
`(309101-2163)
`
`U.S. Patent No. 8,694,657
`Petitioner has agreed to an “understudy” role, and thus, all briefing, filings, and
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`depositions can proceed. If the lead original Petitioner (Microsoft) does not settle
`
`or otherwise cease participation, then the joinder will not materially affect Patent
`
`Owner.1 Only if Microsoft settles, then Petitioner would take over the case based
`
`on the existing record, and proceeding only as to joined claims 189 and 465.
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`Patent Owner alleges that joinder might result in “delayed resolution” (Paper
`
`7 at 3), but fails to show that joinder would require any delay of the Final Decision
`
`in these proceedings, much less any substantially prejudicial delay. In the event
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`that any reasonable adjustment to the schedule is appropriate, the rules provide for
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`such adjustment, which is routine in cases of joinder. See 37 C.F.R. § 42.100(c).
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`Finally, Patent Owner alleges that Petitioner “has not identified any reasons
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`why it elected to delay” in seeking joinder after the one-year window. (Paper 7 at
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`4-5.) However, Patent Owner ignores the fact that the Motion is timely filed
`
`within one month after institution of IPR2016-01155 as the rules expressly permit.
`
`
`1 Patent Owner argues that it is “baseless and speculative” that Microsoft might
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`settle or cease participation in its Original IPR (Paper 7 at 1-2), but that argument
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`does not present any basis to deny joinder. Joinder is a fully appropriate procedure
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`to maintain this IPR proceeding in the event that the original petitioner settles, and
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`Petitioner here seeks only a “understudy” role.
`
`4
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`
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`Atty Docket No. FABO-041/01US
`
`IPR2017-00622
`(309101-2163)
`
`U.S. Patent No. 8,694,657
`37 C.F.R. § 42.122(b) (“Any request for joinder must be filed, as a motion under §
`
`42.22, no later than one month after the institution date of any inter partes review
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`for which joinder is requested. The [one-year bar] time period set forth in §
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`42.101(b) shall not apply when the petition is accompanied by a request for
`
`joinder.”). Patent Owner does not demonstrate any reason why Petitioner should
`
`have moved for joinder before the Board decided whether or not to institute IPR on
`
`the Original Petition. Petitioner’s Motion is fully timely under the rules, and
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`Patent Owner does not demonstrate any reason to deny it.
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`IV. CONCLUSION
`For the reasons set forth in its Motion and above, Petitioner respectfully
`
`requests that the Board grant its Motion for Joinder with IPR2016-01155.
`
`
`Dated: March 3, 2017
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`
` Respectfully submitted,
`
`By: /Heidi L. Keefe
`
`Heidi L. Keefe
`
`Reg. No. 40,673
`
`Counsel for Petitioner
`Facebook, Inc.
`
`
`
`
`
`5
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`
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`Atty Docket No. FABO-041/01US
`(309101-2163)
`
`
`
`CERTIFICATE OF SERVICE
`
`IPR2017-00622
`U.S. Patent No. 8,694,657
`
`I hereby certify, pursuant to 37 C.F.R. § 42.6, that a complete copy of the
`attached REPLY TO OPPOSITION FOR MOTION FOR JOINDER is being
`served in its entirety on the 3rd day of March, 2017, via electronic mail on counsel
`of record for the Patent Owner as follows:
`
`
`Peter Lambrianakos
`plambrianakos@brownrudnick.com
`Vincent J. Rubino, III
`vrubino@brownrudnick.com
`Alfred R. Fabricant
`afabricant@brownrudnick.com
`Brown Rudnick LLP0
`
`
`
`
`
`
`/Heidi L. Keefe
`Heidi L. Keefe
`Reg. No. 40,673
`
`
`
`6
`
`
`
`Dated: March 3, 2017
`
`COOLEY LLP
`ATTN: Patent Docketing
`1299 Pennsylvania Ave. NW
`Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`
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