throbber
Trials@uspto.gov
`571-272-7822
`
`Paper No. 10
`Entered: June 1, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC.,
`Petitioner,
`
`v.
`
`WINDY CITY INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00622
`Patent 8,694,657 B1
`____________
`
`
`
`Before KARL D. EASTHOM, DAVID C. MCKONE, and J. JOHN LEE,
`Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`Institution of Inter Partes Review and
`Order Granting Petitioner’s Motion
`for Joinder of IPR2017-00622 With IPR2016-01155
`37 C.F.R. § 42.108
`37C.F.R. § 42.122(b)
`
`
`
`
`
`

`

`IPR2017-00622
`Patent 8,694,657 B1
`
`I. INTRODUCTION
`
`On January 7, 2017, Facebook, Inc. (“Petitioner”) filed a Petition
`
`(Paper 2, “Pet.” or “Joinder Petition”) for inter partes review of U.S. Patent
`
`No. 8,694,657 B1 (Ex. 1001, “the ’657 patent”). With its Petition, Petitioner
`
`filed a Motion for Joinder (Paper 3, “Mot.”) with Microsoft Corp. v. Windy
`
`City Innovations, LLC, Case No. IPR2016-01155 (“the Microsoft IPR”).
`
`Windy City Innovations, LLC (“Patent Owner”) filed an Opposition to
`
`Facebook’s Motion for Joinder (Paper 7, “Opp.”) and a Preliminary
`
`Response (Paper 9, “Prelim. Resp.”). Petitioner filed a Reply to Opposition
`
`to Motion for Joinder (Paper 8, “Reply”).
`
`The Petition was filed after the one-year statutory time period set forth
`
`in 35 U.S.C. § 315(b) and 37 C.F.R. § 42.101(b). Nevertheless, as Petitioner
`
`notes (Mot. 4), the time bar does not apply if the Petition is accompanied by
`
`a request for joinder and joinder is granted. See 35 U.S.C. § 315(b); 37
`
`C.F.R. § 42.122(b). Since the filing of Petitioner’s Motion for Joinder,
`
`Microsoft and Patent Owner settled and, on April 24, 2017, moved to
`
`terminate the Microsoft IPR. Microsoft IPR, Paper 29. On May 10, 2017,
`
`we granted the motion to terminate as to Microsoft, but held the motion in
`
`abeyance as to Patent Owner pending the outcome of Petitioner’s Motion for
`
`Joinder. Microsoft IPR, Paper 31.
`
`The Microsoft IPR involves challenges to approximately 150 claims
`
`of the ’657 patent. Microsoft IPR, Paper 1, 3–4 (“Microsoft Petition” or
`
`“Original Petition”). By contrast, Petitioner challenges only two of those
`
`claims, claims 189 and 465. Mot. 1. On May 4, 2017, we held a conference
`
`call with Petitioner and Patent Owner to discuss the impact of settlement
`
`between Microsoft and Patent Owner on the Motion for Joinder. In
`
`
`
`2
`
`

`

`IPR2017-00622
`Patent 8,694,657 B1
`
`preparation for the conference call, we asked the parties to be prepared to
`
`discuss how the Motion to Terminate in the Microsoft IPR changes or
`
`affects the Motion for Joinder, in particular with respect to the following
`
`issues if joinder were to be granted: (1) case schedules, (2) discovery, and
`
`(3) claims on which trial was instituted in IPR2016-01155 but which
`
`Petitioner does not challenge in its Petition. Below, we grant the Joinder
`
`Motion, explain why the Petition establishes a reasonable likelihood that
`
`Petitioner will prevail with respect to claims 189 and 465, and explain that
`
`the scope of the joined proceeding is limited to the patentability of claims
`
`189 and 465.
`
`
`
`II. ANALYSIS
`
`A. Petitioner Has Shown that Joinder Is Appropriate
`
`Other panels of this Board have counseled that a motion for joinder
`
`should (1) set forth reasons why joinder is appropriate; (2) identify any new
`
`grounds of unpatentability asserted in the petition; (3) explain what impact
`
`(if any) joinder would have on the trial schedule for the existing review; and
`
`(4) address specifically how briefing and discovery may be simplified.
`
`See, e.g., Kyocera Corp. v. Softview LLC, Case IPR2013-00004, slip op. at 4
`
`(PTAB Apr. 24, 2013) (Paper 15).
`
`As explained below, the Petition is substantively the same as the
`
`Microsoft Petition as to claims 189 and 465; thus, there are no new grounds
`
`of unpatentability or new evidence asserted in the Petition. Also, we expect
`
`the impact of joinder on the existing schedule, briefing, and discovery to be
`
`minimal. Petitioner filed its Petition and Motion for Joinder months before
`
`Microsoft and Patent Owner settled; thus, continuation of the Microsoft IPR
`
`
`
`3
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`IPR2017-00622
`Patent 8,694,657 B1
`
`after settlement was foreseeable and any prejudice to Patent Owner due to
`
`continuation is not undue. Thus, joinder is appropriate.
`
`
`
`1. The Substance of the Petition Is the Same as the Microsoft
`IPR
`
`As Petitioner argues (Mot. 6), we “routinely grant[] motions for
`
`joinder where the party seeking joinder introduces identical arguments and
`
`the same grounds raised in the existing proceeding.” Samsung Electronics
`
`Co., Ltd. v. Raytheon Co., Case IPR2016-00962, slip op. at 9 (PTAB
`
`Aug. 24, 2016) (Paper 12) (emphases in original). The parties disagree
`
`whether the Petition advances the same substance for claims 189 and 465 as
`
`advanced in the Microsoft IPR.
`
`According to Petitioner, “[t]he Joinder Petition [Paper 3] is
`
`substantively the same as the Original Petition [of IPR2016-01155] as to the
`
`subset of challenged claims, with only non-substantive differences such as
`
`those related to the formalities of the different party filing the petition.”
`
`Mot. 7.
`
`Patent Owner argues that Petitioner seeks to correct mistakes in the
`
`Microsoft Petition “by including nearly 18 pages worth of arguments against
`
`Claim 189” and “blatantly attempts to insert new arguments in its Joinder
`
`Petition.” Opp. 2. Patent Owner cites generally to pages 32–37 of the
`
`Petition, but identifies no examples of corrections or new arguments. Id.
`
`Patent Owner further argues that Petitioner “propos[ed] multiple claim
`
`constructions on the same ’657 Patent for each of the proposed terms in the
`
`Joinder Petition, positioning itself to improperly benefit from inconsistent
`
`and alternative constructions before the Board.” Id. at 3. Patent Owner does
`
`not list any examples of such inconsistencies. We note that Petitioner has
`
`
`
`4
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`IPR2017-00622
`Patent 8,694,657 B1
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`copied the claim construction arguments presented by Microsoft in the
`
`Microsoft IPR. Compare Microsoft Pet. 8–12 with Pet. 9–14.
`
`In reply, Petitioner argues that “[t]he Original Petition 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,” and
`
`“[t]he Joinder Petition does not address Claim 1 and therefore presents the
`
`same substantive analysis as to Claim 189 in the first instance.” Reply 1.
`
`According to Petitioner, “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.” Id. at 2.
`
`We have analyzed the Petition in this proceeding and the Microsoft
`
`Petition. In the Microsoft IPR, Microsoft presented its analysis primarily for
`
`claim 1. Microsoft Pet. 18–32. For claim 189, Microsoft referred back to its
`
`analysis of claim 1 for overlapping material and supplemented it with
`
`additional analysis particular to claim 189. Id. at 32–37. Petitioner’s
`
`analysis of claim 189 in the Petition in this proceeding appears simply to
`
`copy the substance presented for both claim 1 and claim 189 in the
`
`Microsoft Petition, albeit presented together for claim 189. Pet. 18–35.
`
`Patent Owner has not pointed to any examples where Petitioner has deviated
`
`from the analysis presented by Microsoft and we find no substantive
`
`differences. Accordingly, we agree with Petitioner that the Petition’s
`
`analysis of claim 189 in this proceeding is substantively the same as
`
`Microsoft’s analysis in the Microsoft proceeding, and we reject Patent
`
`Owner’s arguments to the contrary.
`
`For claim 465, both the Microsoft Petition and the present Petition
`
`simply refer back to the respective analysis presented for claim 189.
`
`
`
`5
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`IPR2017-00622
`Patent 8,694,657 B1
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`Microsoft Pet. 38; Pet. 35. Thus, we agree with Petitioner that the substance
`
`presented in this proceeding as to claim 465 is the same as presented in the
`
`Microsoft IPR.
`
`
`
`2. Impact of Joinder on the Existing Schedule, Briefing, and
`Discovery
`
`The Motion for Joinder states that Petitioner’s joinder “presents no
`
`reason to materially delay or modify the existing trial schedule.” Mot. 8.
`
`Petitioner agrees to an “understudy” role until such time as Microsoft ceases
`
`to take an active role in the proceeding, a condition that has come to pass.
`
`Id. at 9–10. Patent Owner contends that it would be prejudiced by a grant of
`
`joinder due to “inefficiencies of additional analyses and briefing, increased
`
`expenditures of party and Board resources, and delayed resolution of the
`
`proceedings.” Opp. 3–4. Patent Owner, however, does not articulate with
`
`specificity any such prejudice.
`
`As noted above, Petitioner filed its Motion for Joinder on January 7,
`
`2017, more than three months prior to Patent Owner’s settlement with
`
`Microsoft and Microsoft’s subsequent termination. Thus, at the time the
`
`Joinder Motion was filed, Patent Owner was aware that the trial in IPR2016-
`
`01155 might proceed on its existing schedule regardless of settlement with
`
`Microsoft. Petitioner does not ask for significant adjustment of the schedule
`
`and Patent Owner does not specify a reason that adjustment will be
`
`necessary. By terminating Microsoft as discussed above and further below,
`
`and proceeding only on a subset of claims Microsoft challenged, Patent
`
`Owner is not unduly prejudiced.
`
`As to the scope of briefing and discovery, the Petition raises only a
`
`subset of the challenges raised in the Microsoft Petition. Thus, briefing and
`
`
`
`6
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`IPR2017-00622
`Patent 8,694,657 B1
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`discovery should be simplified as compared to the anticipated scope of the
`
`proceeding prior to the termination of Microsoft. In sum, the impact of
`
`joinder on the schedule, briefing, and discovery in IPR2016-01155 should be
`
`minimal.
`
`
`
`B. Petitioner Has Established a Reasonable Likelihood that It Would
`Prevail as to Claims 189 and 465
`
`In our Institution Decision in IPR2016-01155, we only addressed
`
`claims 1 and 597 specifically. Microsoft IPR, Paper 12, 24–35 (“Microsoft
`
`Dec.”). As to the remaining challenged claims, including claims 189 and
`
`465, we exercised our discretion to institute on those claims in light of our
`
`determination that Microsoft had shown a reasonable likelihood of
`
`prevailing as to at least one claim. Id. at 36. Below, we address the
`
`similarities and differences between claim 1 and claim 189, and Petitioner’s
`
`and Patent Owner’s respective analyses thereof, and determine that the
`
`Petition establishes a reasonable likelihood that Petitioner would prevail as
`
`to claim 189 as obvious over Brown1 and Sociable Web2. For the same
`
`reasons, we determine that the Petition establishes a reasonable likelihood
`
`that Petitioner would prevail as to claim 465 as obvious over Brown and
`
`Sociable Web.
`
`We provided a background of the ’657 patent in our Institution
`
`Decision in the Microsoft IPR. Microsoft Dec. 3–6. Likewise, we provided
`
`backgrounds of Brown and Sociable Web. Id. at 17–24. We preliminarily
`
`
`1 U.S. Patent No. 5,941,947, issued Aug. 24, 1999, filed Aug. 18, 1995
`(Ex. 1012, “Brown”)
`
`2 Donath & Robertson, The Sociable Web (Ex. 1019, “Sociable Web”)
`
`
`
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`IPR2017-00622
`Patent 8,694,657 B1
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`construed the terms “token,” “pointer,” and “censor.” Id. at 8–15. We also
`
`made a preliminary determination as to the level of ordinary skill in the art.
`
`Id. at 16. Each of these summaries and determinations remains applicable to
`
`the joined proceeding.
`
`Claim 189 recites (bracketed letters added) the following:
`
`189. [a] A method of communicating via an Internet
`network by using a computer system including a controller
`computer and a database which serves as a repository of tokens
`for other programs to access, thereby affording information to
`each of a plurality of participator computers which are otherwise
`independent of each other, the method including:
`
`[b] affording some of the information to a first of the
`participator computers via the Internet network,
`responsive to an authenticated first user identity;
`
`[c] affording some of the information to a second of the
`participator computers via the Internet network,
`responsive to an authenticated second user identity;
`and
`
`[d] determining whether the first user identity and the
`second user identity are able to form a group to send
`and to receive real-time communications; and
`
`is
`identity
`the first user
`[e] determining whether
`individually censored from sending data in the
`communications, the data presenting at least one of
`a pointer, video, audio, a graphic, and multimedia
`by determining whether a respective at least one
`parameter corresponding to the first user identity
`has been determined by an other of the user
`identities; and
`
`[f] if the user identities are able to form the group, forming
`the
`group
`and
`facilitating
`sending
`the
`communications that are not censored from the first
`participator computer to the second participator
`computer, wherein the sending is in real time and
`via the Internet network, and wherein, for the
`
`
`
`8
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`IPR2017-00622
`Patent 8,694,657 B1
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`communications which are received and which
`present an Internet URL, facilitating handling the
`Internet URL via the computer system so as to find
`content specified by
`the Internet URL and
`presenting the content at an output device of the
`second participator computer, and
`
`[g] if the first user identity is censored from the sending of
`the data, not allowing sending the data that is
`censored from the first participator computer to the
`second participator computer.
`
`Claim 189 is similar to claim 1. Limitations 189[a]–[d] appear
`
`verbatim in claim 1. In our Institution Decision in IPR2016-01155, we
`
`addressed Microsoft’s allegations as to the limitations of claim 1 that
`
`correspond to limitations 189[a]–[d]. Microsoft Dec. 24–28. Patent Owner
`
`does not present new arguments as to these limitations. For the reasons
`
`given in our Institution Decision in the Microsoft IPR, Petitioner’s evidence
`
`supports a finding that Brown and Sociable Web teach limitations 189[a]–
`
`[d].
`
`We note that, in the Microsoft IPR, Patent Owner argued that Brown
`
`does not teach affording information via the Internet in its chat embodiment.
`
`Microsoft IPR, Paper 9, 18–21 (“Microsoft Prelim. Resp.”). Patent Owner
`
`reiterates that argument in this proceeding, but does not add to it materially.
`
`Prelim. Resp. 6. The argument is still unpersuasive. See Microsoft Dec. 25.
`
`As to limitations 189[e]–[g], they differ from corresponding
`
`limitations in claim 1 in that, where claim 1 recites “receiving” data,
`
`claim 189 recites “sending” data. Microsoft addressed these differences in
`
`its Petition, and Petitioner copied that analysis in its Petition in this
`
`proceeding. Microsoft Pet. 33–37; Pet. 28–29, 32, 34–35. In the Microsoft
`
`
`
`9
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`IPR2017-00622
`Patent 8,694,657 B1
`
`IPR, Patent Owner incorporated its arguments as to claim 1 for claims 189
`
`and 465. Microsoft Prelim. Resp. 23.
`
`We addressed the limitations of claim 1 that correspond to
`
`limitations 189[e] and [g] at pages 29–30 of our Institution Decision in the
`
`Microsoft IPR. As an initial matter, in our preliminary construction of
`
`“censor,” we addressed specifically the recitation of claim 1, “the first user
`
`identity is individually censored from receiving data in the
`
`communications,” and noted that it “refers to control of data received by the
`
`first user identity, individually, and is not limited to data suppressed based
`
`on the content of those data or by a moderator.” Id. at 12–15. For the same
`
`reasons, “the first user identity is individually censored from sending data in
`
`the communications,” as recited in claim 189, refers to control of data sent
`
`by the first user identity, individually, and is not limited to data suppressed
`
`based on the content of those data or by a moderator.
`
`In our Institution Decision in the Microsoft IPR, we pointed to
`
`Petitioner’s identification in Brown of access controls specified in an access
`
`rights database, and Brown’s description of varying privilege levels for users
`
`with access to a given group, as evidencing “determining whether the first
`
`user identity is individually censored from receiving data,” as recited in
`
`claim 1. Microsoft Dec. 29–30. Microsoft argued that similar disclosure of
`
`limiting participation in or denying access to a chat room based on assigned
`
`privileges and access rights teaches “determining whether the first user
`
`identity is individually censored from sending data in the communications,”
`
`as recited in claim 189. Microsoft Pet. 33–34. Petitioner copies these
`
`arguments. Pet. 28–29. For reasons similar to those given for claim 1, and
`
`
`
`10
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`IPR2017-00622
`Patent 8,694,657 B1
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`in light of our construction of “censor,” noted above, Petitioner’s evidence is
`
`sufficient to support a finding that Brown teaches limitation 189[e].
`
`As to the limitation of claim 1 corresponding to limitation 189[g], we
`
`credited Microsoft’s argument that Brown’s access rights can prevent a user
`
`from receiving data and, thus, the data will not be presented from the second
`
`participator computer to the output device. Microsoft IPR, Paper 12, 30.
`
`Microsoft presented similar evidence in Brown of access rights preventing
`
`users from sending data. Microsoft Pet. 36–37. Petitioner copies these
`
`arguments. Pet. 34–35. For reasons similar to those given for claim 1,
`
`Petitioner’s evidence is sufficient to support a finding that Brown teaches
`
`limitation 189[g].
`
`We addressed the limitation of claim 1 that corresponds to
`
`limitation 189[f] at pages 31–32 of our Institution Decision in the
`
`Microsoft IPR. Microsoft contended that the same evidence showed
`
`limitation 189[f]. Microsoft Pet. 35–36. Petitioner copies this argument.
`
`Pet. 31–34.
`
`As Microsoft did, Petitioner relies on two sets of disclosures in Brown
`
`as allegedly showing “determining whether the first user identity and the
`
`second user identity are able to form a group to send and to receive real-time
`
`communications,” as recited in claim 189. First, according to Petitioner,
`
`Brown describes users who are system operators (“Syops”) using Sysop
`
`Tools to add, delete, or modify chat rooms, defining and assigning tokens to
`
`define user groups that will be given access to the chat rooms. Pet. 25–26.
`
`Second, Petitioner argues that Brown’s users form groups by joining a
`
`particular chat room. Id. at 26. Petitioner refers to these same examples in
`
`Brown as teaching “if the user identities are able to form the group, forming
`
`
`
`11
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`IPR2017-00622
`Patent 8,694,657 B1
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`the group and facilitating sending the communications that are not censored
`
`from the first participator computer to the second participator computer,” as
`
`recited in claim 189. Id. at 31–32. In the Microsoft IPR, we determined that
`
`this evidence supported a finding that Brown teaches this limitation.
`
`Microsoft Dec. 31.
`
`Patent Owner argues that Brown does not teach “if the user identities
`
`are able to form the group, forming the group and facilitating sending the
`
`communications that are not censored from the first participator computer to
`
`the second participator computer,” as recited in claim 189. Prelim. Resp. 9.
`
`Patent Owner argues that Petitioner’s analysis of this claim limitation
`
`(Pet. 31–32) is too conclusory and lacking in explanation. Prelim. Resp. 10–
`
`11. We disagree. In the Microsoft IPR, we explained, in reference to the
`
`corresponding limitation of claim 1, that Microsoft showed sufficiently that
`
`Brown teaches user identities forming a group and communicating with each
`
`other using a Chat service. Microsoft IPR, Paper 12, 31. We addressed this
`
`disclosure in detail in evaluating “determining whether the first user identity
`
`and the second user identity are able to form a group to send and to receive
`
`real-time communications,” as recited in claim 1 and also in claim 189[d].
`
`Id. at 28. Patent Owner’s argument that this limitation was missing from
`
`claim 1 was unpersuasive at that stage of the case. Microsoft Prelim. Resp.
`
`21–22; Microsoft Dec. 31.
`
`In presenting a similar argument in this proceeding, Patent Owner
`
`appears to make a claim construction argument, contending that to meet the
`
`limitation “if the user identities are able to form the group, forming the
`
`group and facilitating sending the communications that are not censored
`
`from the first participator computer to the second participator computer,” as
`
`
`
`12
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`IPR2017-00622
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`recited in claim 189, “the formation of the group must be predicated on the
`
`condition expressly required by the claim: that existing user identities
`
`possess certain capabilities that allow them to form a group including those
`
`user identities.” Prelim. Resp. 11. Further, Patent Owner argues that this
`
`limitation requires “forming, i.e., creating, groups or predicating the
`
`formation of a group on the condition that user identities themselves possess
`
`the ability to form the group.” Id. at 13.
`
`Patent Owner does not cite evidence or provide reasoned analysis in
`
`support of its construction. Nevertheless, the ’657 patent describes
`
`arbitrating users into a group using tokens assigned in advance to control the
`
`properties and access assigned to the users, much as is described in the
`
`example of Brown relied upon by Petitioner:
`
`Each token is used to control the ability of a user to gain access
`to other tokens in a token hierarchy arbitration process. The
`arbitration also includes controlling a user’s ability to moderate
`communications
`involving a group or subgroup of
`the
`participator computers 5. Once in a group, temporary tokens are
`assigned for priority to moderate/submoderate groups (a group is
`sometimes known as a channel in multiplexing terminology).
`
`Accordingly, tokens are used by the controller computer 5 to
`control a user’s group priority and moderation privileges, as well
`as controlling who joins the group, who leaves the group, and the
`visibility of members in the group. Visibility refers to whether a
`user is allowed to know another user is in the chat group.
`
`Ex. 1001, 7:60–8:6; see id. at 9:1–15. Thus, we are not persuaded that the
`
`claim language excludes a system in which users join or form chat groups
`
`based on permissions assigned to them in advance by a Sysop.
`
`Under its proposed construction, Patent Owner argues that
`
`configuring a family by using Sysop Tools to designate family members, as
`
`described in Brown, does not teach “if the user identities are able to form the
`
`
`
`13
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`IPR2017-00622
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`group, forming the group and facilitating sending the communications that
`
`are not censored from the first participator computer to the second
`
`participator computer,” as recited in claim 189, because “the alleged group
`
`formation is based on the actions of the Sysop, not the user identities.”
`
`Prelim. Resp. 11. According to Patent Owner, “Brown’s Syosp
`
`modifications do not amount to creating a group only upon the precondition
`
`that the user identities, which will form the group, are determined to have
`
`the ability to form the group.” Id. at 12. Patent Owner argues that “the
`
`distinction between Brown and the claimed invention [is that] Brown
`
`requires a Sysop to add a group.” Id. As explained above, we are not
`
`persuaded that claim 189 excludes groups formed by users according to
`
`parameters set in advance by a Sysop. Moreover, even if we were to adopt
`
`Patent Owner’s implicit construction, Patent Owner’s argument would not
`
`be persuasive because Petitioner cites to an example in Brown in which the
`
`Sysop is one of the users forming the group. Pet. 32.
`
`Patent Owner also argues that a user joining an existing chat room, as
`
`described in Brown, does not teach “if the user identities are able to form the
`
`group, forming the group and facilitating sending the communications that
`
`are not censored from the first participator computer to the second
`
`participator computer,” as recited in claim 189. Prelim. Resp. 12–13.
`
`According to Patent Owner, this example violates “the condition that user
`
`identities themselves possess the ability to form the group.” Id. at 13. As
`
`noted above, Patent Owner does not provide any persuasive evidence or
`
`argument that this is a requirement of claim 189. Thus, Patent Owner’s
`
`argument is unpersuasive.
`
`
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`14
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`IPR2017-00622
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`In sum, Petitioner’s evidence supports a finding that Brown teaches
`
`“if the user identities are able to form the group, forming the group and
`
`facilitating sending the communications that are not censored from the first
`
`participator computer to the second participator computer,” as recited in
`
`claim 189. Accordingly, Petitioner has established a reasonable likelihood
`
`that it would prevail with respect to claim 189 as obvious over Brown and
`
`Sociable Web.
`
`Claim 465 is a system claim that recites limitations substantially the
`
`same as the method steps of claim 189. Petitioner contends that claim 465 is
`
`unpatentable for the same reasons given for claim 189. Pet. 35. Patent
`
`Owner argues claims 189 and 465 together. Prelim. Resp. 9. For the
`
`reasons given for claim 189, Petitioner has established a reasonable
`
`likelihood that it would prevail with respect to claim 465 as obvious over
`
`Brown and Sociable Web.
`
`
`
`C. Scope of the Challenge in the Joined Proceeding
`
`As noted above, Microsoft challenged approximately 150 claims of
`
`the ’657 patent in the Microsoft Petition. In contrast, Petitioner challenges
`
`only claims 189 and 465 in this proceeding. To guide the parties in
`
`conducting discovery and presenting arguments, we make clear that the
`
`parties should pursue only claims 189 and 465 in the joined proceeding.
`
`According to the statute, “[i]f an inter partes review is instituted and
`
`not dismissed under this chapter, the Patent Trial and Appeal Board shall
`
`issue a final written decision with respect to the patentability of any patent
`
`claim challenged by the petitioner and any new claim added under section
`
`316(d).” 35 U.S.C. § 318(a). Thus, in the joined proceeding, we must issue
`
`
`
`15
`
`

`

`IPR2017-00622
`Patent 8,694,657 B1
`
`a final written decision regarding the patentability of “any patent claim
`
`challenged by the petitioner.” Id.
`
`Although Microsoft challenged many claims in addition to claims 189
`
`and 465, the Microsoft IPR has been terminated as to Microsoft under 35
`
`U.S.C. § 317, which dictates that “[a]n inter partes review instituted under
`
`this chapter shall be terminated with respect to any petitioner upon the joint
`
`request of the petitioner and the patent owner, unless the Office has decided
`
`the merits of the proceeding before the request for termination is filed.”
`
`Thus, petitioner Microsoft no longer challenges any claims of the ’657
`
`patent in the joined proceeding. Petitioner Facebook now is “the petitioner”
`
`for purposes of § 318(a). Accordingly, we are required by § 318(a) to issue
`
`a final written decision only as to the claims challenged by Facebook, i.e.,
`
`claims 189 and 465. For the avoidance of doubt, we dismiss from the joined
`
`proceeding and, for purposes of § 318(a), will not consider challenges to the
`
`patentability of the following claims:
`
`1, 2, 18, 27, 35, 43, 51, 65, 79, 93, 100, 108, 114, 126, 138, 150,
`156, 168, 170, 172, 176, 178, 180, 182–88, 190, 202, 208, 214,
`220, 226, 238, 250, 262, 268, 274, 280, 292, 304, 316, 322, 328,
`334, 336, 340, 342, 344, 346, 348, 350, 352–54, 362, 366, 370,
`374, 378, 386, 394, 402, 406, 410, 414, 422, 430, 438, 442, 450,
`452, 454, 456, 458, 460, 462, 464, 466, 476, 481, 486, 491, 496,
`505, 515, 525, 530, 535, 545, 555, 565, 570, 580, 582, 584, 586,
`588, 590, 592, 594, 596–98, 606, 607, 615–17, 619, 621, 622,
`624–26, 628, 630, 632–34, 636, 638, 640–42, 644, 646, and 648–
`71.
`
`
`
`III. CONCLUSION
`
`Petitioner has established a reasonable likelihood that claims 189 and
`
`465 are unpatentable. We have not yet made a final determination of the
`
`
`
`16
`
`

`

`IPR2017-00622
`Patent 8,694,657 B1
`
`patentability of these claims or the construction of any claim term. We grant
`
`Petitioner’s Motion for Joinder. The scope of the joined proceeding is
`
`limited to the patentability of claims 189 and 465.
`
`
`
`IV. ORDER
`
`For the reasons given, it is:
`
`ORDERED that inter partes review is instituted in IPR2017-00622 as
`
`to claims 189 and 465 of U.S. Patent No. 8,694,657 B1 on the same grounds
`
`as those in the Microsoft IPR, and no other grounds are authorized;
`
`FURTHER ORDERED that IPR2017-00622 is joined to the
`
`Microsoft IPR, the Scheduling Order in the Microsoft IPR is unchanged and
`
`shall be applied to the joined proceeding;
`
`FURTHER ORDERED that all further filings in the joined proceeding
`
`shall be made in the Microsoft IPR, IPR2016-01155;
`
`FURTHER ORDERED that, having joined IPR2017-00622 and
`
`IPR2016-01155, under 37 C.F.R. § 42.72, IPR2017-00622 is terminated;
`
`FURTHER ORDERED that challenges to the following claims are
`
`dismissed from the joined proceeding:
`
`1, 2, 18, 27, 35, 43, 51, 65, 79, 93, 100, 108, 114, 126, 138, 150,
`156, 168, 170, 172, 176, 178, 180, 182–88, 190, 202, 208, 214,
`220, 226, 238, 250, 262, 268, 274, 280, 292, 304, 316, 322, 328,
`334, 336, 340, 342, 344, 346, 348, 350, 352–54, 362, 366, 370,
`374, 378, 386, 394, 402, 406, 410, 414, 422, 430, 438, 442, 450,
`452, 454, 456, 458, 460, 462, 464, 466, 476, 481, 486, 491, 496,
`505, 515, 525, 530, 535, 545, 555, 565, 570, 580, 582, 584, 586,
`588, 590, 592, 594, 596–98, 606, 607, 615–17, 619, 621, 622,
`
`
`
`17
`
`

`

`IPR2017-00622
`Patent 8,694,657 B1
`
`624–26, 628, 630, 632–34, 636, 638, 640–42, 644, 646, and 648–
`71; and
`
`FURTHER ORDERED that the caption in IPR2016-01155 shall be
`
`changed to reflect joinder with IPR2017-00622 as shown on the attached
`
`page.
`
`
`
`
`
`18
`
`

`

`Trials@uspto.gov
`571-272-7822
`
`Paper No. __
`Entered: __
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC.,
`Petitioner,
`
`v.
`
`WINDY CITY INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-011551
`Patent 8,694,657 B1
`____________
`
`
`
`
`
`
`
`
`
`1 Case IPR2017-00622 has been joined with this proceeding.
`
`

`

`IPR2017-00622
`Patent 8,694,657 B1
`
`
`PETITIONER:
`
`Heidi Keefe
`
`hkeefe@cooley.com
`
`Phillip Morton
`
`pmorton@cooley.com
`
`Andrew Mace
`
`amace@cooley.com
`
`
`
`PATENT OWNER:
`
`Peter Lambrianakos
`plambrianakos@brownrudnick.com
`
`Vincent Rubino
`vrubino@brownrudnick.com
`
`
`
`20
`
`

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