Petition for Inter Partes Review of U.S. Patent No. 8,694,657
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`Paper No. 3
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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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`U.S. Patent No. 8,694,657
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`TITLE: REAL TIME COMMUNICATIONS SYSTEM
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`____________________
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`Inter Partes Review No. IPR2017-00656
`____________________
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`PETITIONER’S MOTION FOR JOINDER
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`Paper No. 3
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`MICROSOFT CORPORATION
`Petitioner,
`
`v.
`
`WINDY CITY INNOVATIONS LLC
`Patent Owner.
`
`U.S. Patent No. 8,694,657
`
`TITLE: REAL TIME COMMUNICATIONS SYSTEM
`
`____________________
`
`Inter Partes Review No. IPR2017-00656
`____________________
`
`
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`PETITIONER’S MOTION FOR JOINDER
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`I.
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`II.
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`Petitioner’s Motion for Joinder
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`TABLE OF CONTENTS
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`Page
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`Introduction ...................................................................................................... 1
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`Background and Related Proceedings ............................................................. 1
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`III. Discussion ........................................................................................................ 2
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`A.
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`Reasons Why Joinder is Appropriate .................................................... 3
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`1.
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`2.
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`Substantively Identical Petitions ................................................. 3
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`Consolidated Filings and Discovery ........................................... 3
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`B. No New Grounds of Unpatentability .................................................... 5
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`C. No Impact on IPR Trial Schedule ......................................................... 5
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`D.
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`E.
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`Briefing and Discovery Will Be Simplified .......................................... 5
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`No Prejudice to Patent Owner if Proceedings Are Joined .................... 5
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`IV. Conclusion ....................................................................................................... 6
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`i
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`I.
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`Introduction
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`Petitioner’s Motion for Joinder
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`Facebook, Inc. (“Facebook”) filed a petition for inter partes review of U.S.
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`Patent No. 8,694,657 (“’657 patent”), in IPR2016-01159 (“Facebook IPR”). The
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`Facebook IPR was accorded a filing date of June 3, 2016, and trial was instituted
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`on December 12, 2016 on all challenged claims. Petitioner hereby moves under 35
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`U.S.C. § 315(c) to join the present proceeding to the Facebook IPR. Counsel for
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`Petitioner has conferred with counsel for Facebook, who do not oppose Petitioner’s
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`motion.
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`II. Background and Related Proceedings
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`On June 2, 2015, Patent Owner filed a complaint alleging infringement of
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`the ’657 patent by Facebook. Windy City Innovations, LLC v. Facebook, Inc., 16-
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`cv-102 (W.D. N.C.). On June 3, 2016, Facebook filed a petition for inter partes
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`review of the ’657 patent, and trial was instituted on December 12, 2016 on all
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`challenged claims. Concurrently with this motion, Petitioner has filed a petition
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`for inter partes review of the ’657 patent that is substantively identical to the
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`Facebook IPR. See Paper 1.
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`On June 2, 2015, Patent Owner also filed a complaint alleging infringement
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`of the ’657 patent by Petitioner. Windy City Innovations, LLC v. Microsoft
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`Corporation, 1:15-cv-103 (W.D.N.C.). On June 3, 2016, Petitioner filed a petition
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`IPR2016-01155 for inter partes review of the ’657 patent. See IPR2016-01155.
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`1
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`Petitioner’s Motion for Joinder
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`Trial was instituted in that proceeding on December 8, 2012. On January 7, 20171,
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`Petitioner filed IPR202017-00606 concurrently with a motion for joinder to the
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`IPR2016-01155 proceeding. On January 7, 2017, Facebook filed IPR2017-00622
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`also concurrently with a motion for joinder to the IPR2016-01155 proceeding.
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`III. Discussion
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`Petitioner respectfully requests the Board exercise its discretion to institute
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`this IPR and grant its joinder with the Facebook IPR, pursuant to 35 U.S.C. §
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`315(c), 37 C.F.R. § 42.22, and 37 C.F.R. § 42.122(b). This IPR is substantively
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`identical to the Facebook IPR. Both IPRs challenge the same claims on the same
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`grounds, include the same claim constructions and the same arguments, rely on the
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`same exhibits, and use the same expert and the same expert declaration. Petitioner
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`therefore seeks (1) a determination that this IPR warrants institution; and (2)
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`joinder of this IPR into the Facebook IPR. That would result in Petitioner joining
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`the Facebook IPR without any change to its scope or schedule. In support of this
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`motion, Petitioner proposes consolidated filings and other procedural
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`accommodations designed to streamline the proceedings.
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`1 Due to an error with filing through PTAB E2E, the filing date currently appears
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`on PTAB E2E as January 9, 2017. Petitioner is working to have the filing date
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`corrected.
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`2
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`Petitioner’s Motion for Joinder
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`A. Reasons Why Joinder is Appropriate
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`Joinder is appropriate because it is the most expedient way to secure the just,
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`speedy and inexpensive resolution of the related proceedings. See 35 U.S.C. §
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`316(b); 37 C.F.R. § 42.1(b). This IPR is substantively identical to the Facebook
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`IPR, and thus would avoid multiplication of issues before the Board. Given the
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`duplicative nature of these petitions, joinder of the related proceedings is
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`appropriate. Further, Petitioner agrees to consolidated filings and discovery.
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`1.
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`Substantively Identical Petitions
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`Petitioner represents that this IPR presents identical issues to the Facebook
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`IPR in all substantive respects. They include identical grounds, analysis, and
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`exhibits, and rely upon the same expert declarant and declaration. Accordingly,
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`joining this IPR proceeding with the Facebook IPR proceeding would not entail
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`any duplication of effort.
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`2.
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`Consolidated Filings and Discovery
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`Because the grounds of unpatentability in this IPR and the Facebook IPR are
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`the same, the case is amenable to consolidated filings. Petitioner agrees to
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`consolidated filings for all substantive papers and to work with counsel for
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`Facebook to incorporate Petitioner’s positions into Facebook’s efforts, so long as
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`Facebook is a party to the joined proceedings. Specifically, Petitioner agrees to
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`work with Facebook to incorporate Petitioner’s positions with those of Facebook in
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`3
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`Petitioner’s Motion for Joinder
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`consolidated filings, subject to the ordinary page limits for one party, and agrees
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`not to make arguments separate from those advanced in the consolidated filings.
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`This agreement thus avoids lengthy and duplicative briefing.
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`Consolidated discovery is also appropriate given that Petitioner and
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`Facebook are using the same expert declarant who has submitted an identical
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`declaration in the two proceedings. Petitioner therefore agrees that Facebook will
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`be responsible for conducting cross and re-direct examination of witnesses and that
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`no additional depositions would be needed, if joinder is granted, and that it will
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`work with Facebook prior to any deposition to incorporate Petitioner’s positions
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`into Facebook’s questioning. Petitioner further agrees that depositions should take
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`place in the normal time allotted with counsel for Facebook responsible for
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`examination and defense of witnesses, albeit with attendance by Petitioner’s
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`counsel.
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`Petitioner further agrees to work with Facebook prior to any hearing to
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`incorporate Petitioner’s positions into Facebook’s presentations, with counsel for
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`Facebook responsible for making the presentation at the hearing, again with
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`attendance by Petitioner’s counsel at any such hearing. These procedures would
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`remove or minimize any complication, duplication, or delay caused by joinder.
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`4
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`Petitioner’s Motion for Joinder
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`B. No New Grounds of Unpatentability
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`This IPR raises no new grounds of unpatentability from those of the
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`Facebook IPR because the corresponding petitions are substantively identical.
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`C. No Impact on IPR Trial Schedule
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`The trial schedule for the Facebook IPR would not need to be delayed to
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`effect joinder. Because Petitioner raises the same grounds based on the same
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`evidence and the same expert declaration, Petitioner can join Facebook’s
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`proceeding without any change to the trial schedule. The joint proceeding would
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`allow the Board and the parties to focus on the merits in one consolidated
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`proceeding in a timely manner.
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`D. Briefing and Discovery Will Be Simplified
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`Joinder will simplify briefing and discovery because Petitioner seeks an
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`order similar to that issued in The Gillette Company v. Zond, LLC, IPR2014-01012
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`(PTAB October 23, 2014) (Paper 13). Petitioner and Facebook will engage in
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`consolidated filings and discovery, which will simplify the briefing and discovery
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`process. Petitioner will assume an “understudy” role, and only assume an active
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`role in the event that Facebook settles with Patent Owner.
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`E. No Prejudice to Patent Owner if Proceedings Are Joined
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`Joinder with the Facebook IPR will not cause any prejudice to the Patent
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`Owner. If Petitioner joins the Facebook IPR, there will be no additional issues or
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`5
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`Petitioner’s Motion for Joinder
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`costs to the Board or Patent Owner above and beyond those presented by the
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`Facebook IPR on its own.
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`Institution and joinder will also promote judicial efficiency. Congress
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`created these proceedings as a more efficient way to litigate patent validity issues.
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`Instituting trial and granting joinder will have no negative effect on the Board and
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`Patent Owner’s resources, and will instead promote administrative and judicial
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`economy before the Board and in district court. Joinder of this proceeding with
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`that of Facebook is thus fundamentally fair to all involved.
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`IV. Conclusion
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`For the foregoing reasons, Petitioner respectfully requests that the Board (1)
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`determine that institution of trial is warranted; and (2) join the present proceeding
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`into the Facebook IPR (IPR2016-01159).
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`Dated: January 12, 2017
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`Respectfully Submitted,
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`/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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`6
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`Petitioner’s Motion for Joinder
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 12th day of January, 2017, a true and correct
`copy of the foregoing document was served in its entirety in the manner indicated
`below on the following:
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`
`Peter K. Trzyna, ESQ.
`PO BOX 7131
`Chicago IL 60680
`Pkt-law@sbcglobal.net
`Pktlawoffice@gmail.com
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`Peter Lambrianakos
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`plambrianakos@brownrudnick.com
`afabricant@brownrudnick.com
`vrubino@brownrudnick.com
`
`Bradley W. Caldwell
`Jason D. Cassady
`John Austin Curry
`Warren J. McCarty
`CALDWELL CASSADY & CURRY
`2101 Cedar Springs Road, Suite 1000
`Dallas, Texas 75201
`bcaldwell@caldwellcc.com
`jcassady@caldwellcc.com
`acurry@caldwellcc.com
`wmccarty@caldwellcc.com
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`Respectfully submitted,
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`/ Joseph A. Micallef /
`Joseph A. Micallef
`Registration No. 39,772
`Attorney for Petitioner
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`7
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`Dated: January 12, 2017
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`U.S. Mail Priority Express & Email
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`Federal Express & Email
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`Federal Express & Email
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