Atty Docket No. FABO-041/02US
`(309101-2164)
`
`
`
`
`IPR2017-00659
`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. IPR2017-00659
`Patent No. 8,694,657
`__________________
`
`REPLY TO OPPOSITION TO MOTION FOR JOINDER
`
`
`
`
`(309101-2164)
`
`
`
`
`IPR2017-00659
`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. IPR2017-00659
`Patent No. 8,694,657
`__________________
`
`REPLY TO OPPOSITION TO MOTION FOR JOINDER
`
`
`
`
`
`Atty Docket No. FABO-041/02US
`
`IPR2017-00659
`(309101-2164)
`
`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
`
`8) (“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.
`
`I.
`
`PETITIONER REQUESTS JOINDER FOR NEWLY-ASSERTED
`CLAIMS
`Patent Owner incorrectly asserts that its “district court complaint alleged and
`
`asserted infringement of all claims of the ’657 Patent.” (Paper 8 at 2 (emphasis
`
`added).) In fact, Patent Owner’s 10-page boilerplate complaint asserted four
`
`patents-in-suit and alleged that “Facebook’s Accused Instrumentalities meet claims
`
`of the patents-in-suit”—some unspecified “claims,” not “all claims.” (Windy City
`
`Innovations, LLC v. Facebook Inc., Case No. 4:16-cv-01730-YGR, ECF No. 1,
`
`¶ 23 (Ex. 1016).) Patent Owner never provided any specific infringement assertion
`
`for all 671 claims of the ’657 Patent, either in its complaint or otherwise.
`
`Patent Owner does not dispute that it did not disclose its litigation
`
`infringement contentions and specific asserted claims until October 19, 2016, long
`
`after the expiration of the original one-year IPR bar in early June 2016. (Paper 3 at
`
`2-4, 7-8.) This case is thus analogous to other joinder cases where the patent
`
`owner first identified its asserted claims after the one-year bar. (Id. at 5-6 (citing
`
`cases).) The Par Pharmaceutical case is inapposite. Par Pharmaceutical, Inc. v
`
`Novartis AG, IPR2016-01059, Paper No. 18. In that case, the Board denied joinder
`1
`
`
`
`Atty Docket No. FABO-041/02US
`
`IPR2017-00659
`(309101-2164)
`
`U.S. Patent No. 8,694,657
`as to one claim because the petitioner admitted that the only reason it had not
`
`included that claim in its original petition was an “inadvertent omission,” which
`
`was not sufficient justification. Id. at 15-16. By contrast here, the four patents-in-
`
`suit contain 830 claims, and Petitioner filed IPR petitions challenging dozens of
`
`claims prior to the one-year deadline without knowing which specific claims Patent
`
`Owner would assert. (Paper 3 at 2-4.) Patent Owner then strategically chose to
`
`assert claims that were not subject to an IPR petition. (Id.) Petitioner now seeks
`
`joinder only as to several newly-asserted dependent claims that are largely
`
`redundant of other already instituted claims from the original Petition, and are
`
`based on the same prior art as the original Petition. Joinder is thus appropriate to
`
`fulfill the objectives of a “just, speedy, and inexpensive resolution” in IPR (37
`
`C.F.R. §42.1(b)), rather than forcing the parties to litigate these claims’ invalidity
`
`in district court litigation.
`
`The Arris case is also distinguishable. Arris Group, Inc. et al. v. Cirrex
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`Systems LLC, Case No. IPR2015-00530, Paper 12. In Arris, the complaint alleged
`
`infringement of “one or more claims” of a 51-claim patent, nowhere near the 830
`
`claims across all four patents-in-suit, including the 671 claims in just the ’657
`
`patent. It would have been unreasonable here to burden the Board and parties with
`
`petitions on all 671 claims or all 830 claims. Moreover, unlike this case, the Arris
`
`joinder raised “new prior art references” and “combinations … not previously
`
`2
`
`
`
`Atty Docket No. FABO-041/02US
`(309101-2164)
`considered by the Board.” Id. at 7.
`
`
`
`
`IPR2017-00659
`U.S. Patent No. 8,694,657
`
`A more analogous case
`
`is Sony Corporation v. Yissum Research
`
`Development Company of the Hebrew University of Jerusalem, IPR2013-00326,
`
`Paper 15 (PTAB Sept. 24, 2013). There, the complaint against Petitioner Sony
`
`alleged infringement of “one or more claims” of a patent with 155 claims. Id. at 3;
`
`see HumanEyes Technologies Ltd. v. Sony Electronics, Inc., C.A. No. 12-398, Dkt.
`
`No. 1 at ¶29 (D. Del. Mar. 29, 2012). Sony filed an initial IPR petition on certain
`
`claims. IPR2013-00326, Paper 15 at 2. Later, the patent owner asserted three
`
`claims that were not challenged in IPR, and Sony filed a second petition against
`
`those claims and moved for joinder. Id. at 6. The Board granted joinder, finding
`
`that because “no specific … infringement assertions were made originally” with
`
`respect to those three additional claims, “Petitioner’s challenge … [was] a
`
`reasonable and timely response to Patent Owner’s litigation posture, as opposed to
`
`a dilatory, unilateral action.” Id. Likewise here, Petitioner challenges only newly-
`
`asserted dependent claims that were not identified until after the original Petition
`
`and expiration of the original one-year bar. Joinder is fully appropriate.
`
`II. THE JOINDER PETITION ADDRESS ONLY MINOR DEPENDENT
`CLAIM LIMITATIONS BASED ON THE SAME PRIOR ART
`Patent Owner incorrectly alleges that Petitioner’s motion for joinder “states
`
`that the Joinder Petition contains ‘no new substantive issues’ as compared to the
`
`Original Petition.” (Paper 8 at 4.) In fact, that purportedly quoted language is not
`3
`
`
`
`Atty Docket No. FABO-041/02US
`
`IPR2017-00659
`(309101-2164)
`
`U.S. Patent No. 8,694,657
`contained in Petitioner’s Motion or Petition. Instead, Petitioner’s Motion shows
`
`that the Joinder Petition presents “similar” issues as the Original Petition and
`
`“addresses only minor dependent claim limitations that are disclosed and obvious
`
`in view of the same prior art disclosures.” (Paper 3 at 1, 8-11.) Patent Owner does
`
`not address Petitioner’s explanation, and only incorrectly asserts that the Petition
`
`and expert declaration contain 17 pages and 20 pages, respectively, of alleged
`
`“new positions” and “new analyses and arguments.” (Paper 8 at 4.) But Patent
`
`Owner’s page-counting exercise fails to discuss those pages’ substantive content.
`
`Apple Inc. v. VirnetX Inc., IPR2016-00063, Paper 13 at 5 (PTAB Jan. 25, 2016)
`
`(discounting patent owner’s complaints of unexplained and unsupported
`
`“additional issue[s]” due to joinder). In fact, the vast majority of the cited content
`
`merely reiterates the same analysis that Petitioner previously presented for already-
`
`instituted claims 189 and/or 465, or shows how the same “two client software
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`alternatives” limitation repeats throughout these dependent claims. (Paper 2 at 51-
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`68; Ex. 1002 at 61-79.) Given that Patent Owner first asserted these claims after
`
`the filing of the original Petition, as noted previously, good cause exists to address
`
`these claims and their minor additional limitations based on the same prior art.
`
`III. JOINDER WILL NOT PREJUDICE PATENT OWNER GIVEN THE
`SUBSTANTIAL OVERLAP IN THE PROCEEDINGS
`Finally, Patent Owner alleges that there may be “undue delay,” “prejudice,”
`
`“additional analyses and briefing” and “increased expenditures” (Paper 8 at 5), but
`4
`
`
`
`Atty Docket No. FABO-041/02US
`
`IPR2017-00659
`(309101-2164)
`
`U.S. Patent No. 8,694,657
`fails to substantiate any of these allegations. Apple, IPR2016-00063, Paper 13 at 5.
`
`Patent Owner fails to demonstrate any reason why addressing only a few minor
`
`dependent claims with similar instituted claim limitations based on the same prior
`
`art would materially expand this case, and the rules provide for reasonable
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`schedule adjustments in cases of joinder. See 37 C.F.R. § 42.100(c). Patent
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`Owner also alleges “delay,” but ignores the fact that the Motion was timely filed
`
`within one month after institution of IPR2016-01159, as the rules expressly permit.
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`37 C.F.R. § 42.122(b). Patent Owner does not demonstrate any reason why
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`Petitioner should have moved for joinder before the Board decided whether or not
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`to institute IPR in IPR2016-01159. Petitioner’s Motion is timely under the rules
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`and ample good cause exists to grant joinder.
`
`IV. CONCLUSION
`For the reasons set forth in its Motion and above, Petitioner respectfully
`
`requests that the Board grant its Motion for Joinder with IPR2016-01159.
`
`Dated: March 10, 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
`
`
`
`Atty Docket No. FABO-041/02US
`(309101-2164)
`
`IPR2017-00659
`U.S. Patent No. 8,694,657
`
`
`
`CERTIFICATE OF SERVICE
`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 10th 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
`Shahar Harel
`sharel@brownrudnick.com
`Brown Rudnick LLP
`
`
`
`
`
`
`/Heidi L. Keefe
`Heidi L. Keefe
`Reg. No. 40,673
`
`
`
`6
`
`
`
`Dated: March 10, 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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