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`IPR2017-00659
`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. IPR2017-00659
`__________________________________________________________________
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`I.
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`INTRODUCTION
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`IPR2017-00659
`PATENT NO. 8,694,657
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`Absent joinder, this Petition is barred from institution because Petitioner
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`Facebook Inc. waited more than one year after being served with a complaint
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`alleging infringement of the ’657 Patent.1 On June 3, 2016, Facebook petitioned
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`the Board to challenge the same patent in IPR2016-01159 (“Original Petition”).
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`Petitioner now appeals to the Board’s discretion to join this Petition (“Joinder
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`Petition”) with its own Original Petition.
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`Petitioner seeks a second bite at the apple. Joinder would add seventeen
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`(17) pages worth of new arguments on sixteen claims2 including substantive
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`arguments on the independent claims from which these claims depend. See Paper
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`2 at pp. 51-68. Additionally, the new Lavian Declaration adds 20 pages of expert
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`analysis and argument. See Ex. 1002, pp. 61-81. None of these arguments were
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`presented in the Original Petition or Declaration. As its sole reason for its joinder
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`request, Petitioner alleges incorrectly that Patent Owner asserted the joinder claims
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`1 On June 2, 2015, Facebook Inc. was served with a complaint alleging
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`infringement of the ’657 Patent in Windy City Innovations, LLC v. Facebook, Inc.,
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`Civ. A. No. 15-cv-00102-GM (W.D. N.C.), transferred to 16-cv-1730 (N.D. Ca.).
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`2 While this Petition challenges 8 new claims (203, 209, 215, 221, 477, 482, 487,
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`and 492), the Petition includes new arguments on 16 total claims because it
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`addresses “intermediate dependent” claims 202, 208, 214, 220, 476, 481, 486, and
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`491.
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`IPR2017-00659
`PATENT NO. 8,694,657
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`after the one-year bar. As explained below, Petitioner’s Motion is based on
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`mischaracterizations of the facts and law, and Petitioner fails to articulate a proper
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`reason for joinder.
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`Patent Owner, Windy City Innovations, LLC, opposes Petitioner’s Motion
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`for Joinder (Paper 3) and requests denial because Petitioner has not met its burden
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`to show entitlement to joinder.
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`PETITIONER HAD NOTICE OF THE NEWLY-ADDED CLAIMS
`II.
`FROM THE DATE OF SERVICE OF THE COMPLAINT
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`In an attempt to circumvent the one-year bar imposed by 35 U.S.C. § 315(b),
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`Petitioner mischaracterizes the additional joinder claims as “newly-asserted
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`claims.” See Paper 3 at 8. However, Petitioner was on notice of these very claims
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`long before the one-year bar and Petitioner could have included argument in its
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`Original Petition. See IPR2016-01159, Paper 1.
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`Patent Owner’s district court complaint alleged and asserted infringement of
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`all claims of the ’657 Patent. Petitioner understood the scope of these allegations,
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`as evidenced by Petitioner’s own arguments filed in a later-denied administrative
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`motion in district court seeking that Patent Owner narrow the scope of its already-
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`asserted claims by “narrowing the case to forty claims.” See Petitioner’s Exhibit
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`1013 at p. 4. Petitioner also acknowledges that it had notice of these assertions
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`when it invokes a reasonableness standard for selecting its initially-challenged
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`claims and grounds in filing its Original Petition. See Paper 3 at 1-2. However, no
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`IPR2017-00659
`PATENT NO. 8,694,657
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`such standard exists for challenges before this Board.
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`Petitioner improperly characterizes the Preliminary Election of Asserted
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`Claims ordered by the district court3 as the first time claims 203, 209, 215, 221,
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`477, 482, 487, and 492 were asserted against Petitioner. Petitioner has known of
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`these claims at least since the service of the complaint in that case.
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`Petitioner provides no reason for its lack of diligence and delaying its
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`joinder attempt (from either service of the complaint or the infringement
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`contentions) until the very last minute. Not only are the facts wrong, but the
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`relevant case law favors denial of joinder.
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`Petitioner relies solely on the Amneal case, but Amneal applies only to
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`newly-asserted claims. Accordingly, Amneal is irrelevant to the present
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`circumstances where Patent Owner already asserted the newly-challenged claims
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`in its original complaint in district court years ago. Instead, the present
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`circumstances align directly with those of Arris Group, Inc. et al. v. Cirrex Systems
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`LLC, Case No. IPR2015-00530, Paper 12 at 8-9 (PTAB July 27, 2015) (denying
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`joinder when Petitioner failed to provide any basis for why it could not have
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`3 Dkt. 50 of Windy City Innovations, LLC v. Facebook Inc., No. 4:16-cv-01730
`(N.D. Cal.) (May 17, 2015) [“Order Denying 46 Administrative Motion. However,
`the Court will require a preliminary election of asserted claims and prior art and
`employ a form of order modeled by the Federal Circuit. The parties shall address
`the topic in their Joint Case Management Conference Statement. Entered by Hon.
`Yvonne Gonzalez Rogers. (This is a text-only entry generated by the court. There
`is no document associated with this entry.) (Entered: 05/17/2016)”]
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`IPR2017-00659
`PATENT NO. 8,694,657
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`challenged the additional claims in the first petition). In Arris, the Board rejected a
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`similar set of joinder claims, finding expressly that a district court complaint
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`alleging infringement of “one or more claims” put Petitioner on notice of all
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`claims. Id. Accordingly, the Board should reject Petitioner’s notice-based
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`arguments and deny joinder.
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`III. THE JOINDER PETITION RAISES NEW SUBSTANTIVE ISSUES
`WITH NO JUSTIFICATION FOR THE DELAY
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`Petitioner again mischaracterizes the facts when it states that the Joinder
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`Petition contains “no new substantive issues” as compared to the Original Petition.
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`While the Joinder Petition adds eight new claims, Petitioner also adds arguments
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`for “intermediate dependent” claims and submits additional arguments for a total
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`of sixteen claims in support its new positions. Petitioner’s new arguments add up
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`to 17 pages worth of new positions in the argument section alone. See Paper 2 at
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`pp. 51-68. Moreover, these new arguments cite to a new expert report supporting
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`the newly-challenged claims and its intermediate-dependent claims, adding 20
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`pages worth of new analyses and arguments. See Ex. 1003, pp. 61-81. While the
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`Board has granted joinder for new arguments, each of those cases included “some
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`justification for the delay in raising the grounds.” Par Pharmaceutical, Inc. v
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`Novartis AG, IPR2016-01059, Paper No. 18 at 16 (Decision - Granting, Granting
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`in Part, and Denying Motions for Joinder) (P.T.A.B. Oct. 27, 2016) (“We exercise
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`our discretion and deny joinder of this proceeding…In [the first petition],
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`IPR2017-00659
`PATENT NO. 8,694,657
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`Petitioner neglected to include an analysis of claim 43 and offers now the analysis
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`it could have offered then…This is not a case where circumstances have changed
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`that would make joinder an equitable remedy for Petitioner.”) (citations omitted).
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`Other than its factually incorrect statement that Patent Owner has not asserted the
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`newly-challenged claims, Petitioner advances no such justification.
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`IV. JOINDER WOULD CAUSE UNDUE DELAY AND PREJUDICE
`PATENT OWNER
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`Adding newly challenged claims to its own Original Petition––and
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`arguments for the newly-challenged claims and its intermediate dependent claims–
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`–now would result in undue delay and prejudice to Patent Owner. New analyses,
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`additional briefing, and scheduling adjustments would undoubtedly result from
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`granting joinder. In addition to legal fees, Patent Owner will incur additional costs
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`in expediting new expert analyses for sixteen claims with accompanying
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`arguments to address these otherwise statutorily-barred challenges. Granting
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`joinder would result in Facebook circumventing estoppel doctrines and statutory
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`limitations on petitioners, all within the Board’s familiarity and not belabored here.
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`Any efficiency related to joining its own already statutorily-barred petition must be
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`outweighed by the inefficiencies of additional analyses and briefing, increased
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`expenditures of party and Board resources, and delayed resolution of the
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`proceedings.
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`Petitioner has not identified any reasons why it elected to delay joining its
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`IPR2017-00659
`PATENT NO. 8,694,657
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`own new proceeding until the last minute, despite having every opportunity to
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`advance these grounds before the one-year window.
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`V. 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 to its own
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`Original Petition and to deny institution of the Joinder Petition.
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`/Vincent J. Rubino, III /
`By:
`Vincent J. Rubino, III (Reg. No. 68,594)
`Lead Counsel for Patent Owner
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Telephone: 212-209-4800
`Facsimile: 212-209-4801
`Email: vrubino@brownrudnick.com
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`Dated: February 13, 2017
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`IPR2017-00659
`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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`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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`/Vincent J. Rubino, III /
`Vincent J. Rubino, III (Reg. No. 68,594)
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Telephone: 212-209-4800
`Facsimile: 212-209-4801
`Email: vrubino@brownrudnick.com
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`February 13, 2017
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`By:
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