`571.272.7822
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` Paper No. 28
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` Entered: May 31, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC.,
`Petitioner,
`
`v.
`
`WINDY CITY INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00655
`Patent 8,458,245 B1
`____________
`
`
`
`Before KARL D. EASTHOM, DAVID C. McKONE, and J. JOHN LEE,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Motion for Joinder
`37 C.F.R. § 42.122(b)
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`Case IPR2017-00655
`Patent 8,458,245 B1
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`INTRODUCTION
`On January 12, 2017, Facebook, Inc. (“Facebook”) filed a Petition
`
`(Paper 2, “Pet.”) requesting inter partes review of claims 1–15, 17, and 18
`(“the challenged claims”) of U.S. Patent No. 8,458,245 B1 (Ex. 1001, “the
`’245 patent”). Concurrently with the Petition, Facebook filed a Motion for
`Joinder (Paper 3, “Mot.”), requesting that this proceeding be joined with
`Microsoft Corp. v. Windy City Innovations, LLC, Case IPR2016-01141
`(“1141 IPR”). Mot. 1. Patent Owner Windy City Innovations, LLC
`(“Windy City”) filed a Preliminary Response (Paper 7, “Prelim. Resp.”) but
`did not file an opposition to the Motion for Joinder.
`
`Since the filing of Facebook’s Motion for Joinder, Windy City and the
`petitioner in the 1141 IPR (“Microsoft”) have settled and, on April 24, 2017,
`moved to terminate the 1141 IPR. 1141 IPR, Paper 25. We granted the
`motion to terminate as to Microsoft, but held the motion in abeyance as to
`Windy City pending the outcome of Facebook’s Motion for Joinder in the
`present case. 1141 IPR, slip op. at 3–4 (PTAB May 10, 2017) (Paper 27).
`For the reasons discussed below, we institute an inter partes review of
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`all challenged claims and grant Facebook’s Motion for Joinder.
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`
`INSTITUTION OF INTER PARTES REVIEW
`In the 1141 IPR, we instituted an inter partes review of claims 1–40
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`of the ’245 patent as allegedly unpatentable under 35 U.S.C. § 103(a) based
`on the combined teachings of Major BBS1 and Higley2. 1141 IPR, slip op.
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`1 GALACTICOMM, INC., THE MAJOR BBS VERSION 6.2 SYSTEM OPERATIONS
`MANUAL (1994) (Ex. 1012, “Major BBS”). We note that the Preliminary
`Response refers to this reference as “Stein.”
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`2
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`at 32 (PTAB Dec. 12, 2016) (Paper 8) (“1141 Inst. Dec.”). Facebook
`represents that the Petition in this proceeding challenges claims 1–15, 17,
`and 18 on the same grounds of unpatentability, relying on the same evidence
`and arguments, as presented in the 1141 IPR. Mot. 1. According to
`Facebook, the only substantive difference between its Petition and the
`petition in the 1141 IPR is that Facebook does not challenge claims 16 and
`19–40.3 See id. In addition, Facebook asserts it is not barred from filing the
`Petition because the one-year deadline to file a petition seeking inter partes
`review after being served with a complaint alleging infringement of the
`challenged patent does not apply when the petition is accompanied by a
`request for joinder. Pet. 2; see 35 U.S.C. § 315(b); 37 C.F.R. § 42.122(b).
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`Windy City does not dispute that the present Petition is substantively
`the same as the petition in the 1141 IPR with respect to the challenged
`claims, but argues that institution is not warranted because the Petition
`nonetheless fails to establish a reasonable likelihood of prevailing on any of
`its asserted grounds of unpatentability. See Prelim. Resp. 3–4; see also
`35 U.S.C. § 315(c) (authorizing joinder only after a determination that the
`petition “warrants institution of an inter partes review under section 314”);
`35 U.S.C. § 314(a) (prohibiting institution absent a determination that the
`information presented in the petition “shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
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`2 U.S. Patent No. 5,790,793, filed Apr. 4, 1995, issued Aug. 4, 1998
`(Ex. 1010, “Higley”).
`3 The petition in the 1141 IPR also challenged claims 41–58, which
`Facebook also does not challenge in the present Petition. See 1141 Inst.
`Dec. 5–6. An inter partes review was not instituted, however, with respect
`to those claims in the 1141 IPR. See id. at 32.
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`claims challenged in the petition”). Specifically, Windy City advances three
`arguments against the Petition: (1) the asserted prior art fails to teach or
`suggest certain limitations of the challenged claims; (2) the Petition fails to
`articulate a sufficient motivation to combine Major BBS and Higley; and (3)
`a person of ordinary skill would not have had a reasonable expectation of
`success in combining the asserted teachings of the prior art. See Prelim.
`Resp. 3–4.
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`Based on the evidence currently of record and the arguments
`presented in the Petition, we determine Facebook has demonstrated a
`reasonable likelihood of prevailing on each of its asserted grounds of
`unpatentability for essentially the same reasons as explained in our Decision
`on Institution in the 1141 IPR. See 1141 Inst. Dec. 14–25, 29–31. In
`reaching this determination, we consider the information presented in Windy
`City’s Preliminary Response, which includes arguments it did not present in
`the 1141 IPR prior to institution in that case, but Windy City’s positions are
`not persuasive on this record, as explained below.
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`As noted above, Windy City first argues the asserted prior art fails to
`teach or suggest certain limitations of the challenged claims. Prelim. Resp.
`12–14. Claim 1 of the ’245 patent recites, “a controller computer system
`adapted to communicate responsive to a respective authenticated user
`identity corresponding respectively to each of a plurality of participator
`computers.” Claim 7, the only other challenged independent claim, recites,
`“a computer system communicatively connected to each of a plurality of
`participator computers responsive to communication of a respective login
`name and a password corresponding to a respective user identity.”
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`According to Windy City, Facebook fails to show how the computer system
`in Major BBS teaches these limitations. See id.
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`Specifically, Windy City faults Facebook for failing to “explain how
`the alleged authentication [in Major BBS] . . . results in adapting the
`controller computer system for communication.” Id. at 12–13. We disagree
`based on the present record. The Petition identifies teachings in Major BBS
`that describe an IBM compatible computer system that hosts the Major BBS
`software, which enables the system to communicate with user computers
`that connect to the system to provide services and content to the users.
`See Pet. 22. This showing is sufficient for purposes of institution to
`demonstrate that the system in Major BBS is “adapted to communicate” with
`the user computers, as recited in the challenged claims.
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`Further, as the Petition explains, Major BBS describes an
`authentication procedure whereby users must supply a User-ID and
`password to access services on the system. See id. at 23. Based on the cited
`evidence, the Petition shows sufficiently that the system is, thus, adapted to
`communicate with user computers “responsive to” authenticated user
`identities (i.e., users with identities verified through the system’s
`authentication procedure). To the extent Windy City is arguing that the
`Major BBS authentication procedure must result in the installation of the
`Major BBS software—i.e., that “adapted to” requires software installation,
`as opposed to its operation on the computer system—this argument is not
`persuasive because no evidence is presented to support such an
`interpretation of the claims, and it misconstrues the positions presented in
`the Petition as being limited to software installation.
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`Windy City also argues the Petition fails to explain adequately how
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`Major BBS teaches that an authenticated user identity corresponds to “each
`of a plurality of participator computers.” Prelim. Resp. 13–14. In essence,
`Windy City’s position appears to be that the claim requires that a single
`authenticated user identity must correspond to multiple participator
`computers, as opposed to “a single user.” See id. Windy City presents no
`evidence or arguments to support such an interpretation of the claims.
`Facebook contends that Major BBS teaches a plurality of user computers
`(i.e., participator computers) communicating via the Major BBS system once
`those computers are each authenticated, i.e., their users are each
`authenticated by verifying their User-IDs and passwords. See Pet. 23.
`Based on the presently available evidence, Facebook’s contentions are
`persuasive and sufficient for purposes of institution.
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`Finally, Windy City argues that the Petition fails to adequately set
`forth a motivation to combine Major BBS and Higley, or to demonstrate that
`a person of ordinary skill would have had a reasonable expectation of
`success in doing so. Prelim. Resp. 14–18. On this record, we disagree.
`Windy City’s arguments focus primarily on the unavailability of certain
`features for the product described in Major BBS, which is largely inapposite,
`and Windy City ignores other evidence presented in the Petition, such as the
`testimony of Facebook’s declarant, Christopher M. Schmandt. See id. As
`explained in our Decision on Institution in the 1141 IPR, which addressed
`the same arguments and evidence now advanced by Facebook (Pet. 19–21),
`Mr. Schmandt’s testimony and the teachings of Higley sufficiently support
`the asserted motivation to combine the references and demonstrate that a
`person of ordinary skill would have reasonably expected the combination to
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`successfully enable the system taught in Major BBS to communicate over
`the Internet. See 1141 Inst. Dec. 15–18.4
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`For the above reasons, in particular the fact that the present Petition
`advances materially the same arguments based on the same evidence as the
`petition in the 1141 IPR, we determine Facebook has demonstrated
`sufficiently under 35 U.S.C. § 314 that an inter partes review should be
`instituted in this proceeding on the same grounds of unpatentability as the
`grounds on which we instituted inter partes review in the 1141 IPR with
`respect to claims 1–15, 17, and 18 of the ’245 patent.
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`MOTION FOR JOINDER
`An inter partes review may be joined with another inter partes
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`review, subject to certain statutory provisions:
`(c) JOINDER.—If the Director institutes an inter partes review,
`the Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition
`under section 311
`that
`the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter parties review under section 314.
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`35 U.S.C. § 315(c); see also 37 C.F.R. § 42.122. As the moving party,
`Facebook bears the burden of proving that it is entitled to the requested
`relief. 37 C.F.R. § 42.20(c).
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`4 For the same reasons as explained in the 1141 IPR Decision on Institution,
`we decline to institute any ground of unpatentability based on Exhibits 1013
`or 1014. See 1141 Inst. Dec. 16–17. Thus, Windy City’s arguments
`regarding the combination of Major BBS (and Higley) with those references
`are moot. See Prelim. Resp. 15–18.
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`As an initial matter, the Motion for Joinder meets the requirements of
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`37 C.F.R. § 42.122(b) because the Motion was filed on January 12, 2017,
`which is not later than one month after the 1141 IPR was instituted on
`December 12, 2016.
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`Additionally, the present Petition challenges the same patent as is
`under inter partes review in the 1141 IPR, and asserts the same grounds of
`unpatentability based on the same prior art and the same evidence, including
`the same declaration testimony. Mot. 5–6. The Petition challenges only
`claims that are already the subject of the inter partes review instituted in the
`1141 IPR. Moreover, the Petition does not assert any other grounds of
`unpatentability, or present any new evidence not already of record in the
`1141 IPR.
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`Facebook further asserts that granting joinder would not require any
`material delay or modifications to the existing schedule in the 1141 IPR
`because joinder would not introduce any new issues or arguments. Id. at 7.
`We agree. For similar reasons, the scope of briefing and discovery in the
`joined proceeding would not be significantly different than the anticipated
`scope of the 1141 IPR prior to the termination of Microsoft—in fact, the
`burden on the parties and the Board may be reduced because the present
`Petition raises only a subset of the challenges raised in the petition in the
`1141 IPR. As noted above, Windy City did not file an opposition to the
`Motion for Joinder and has not identified any undue prejudice or harm it
`might suffer should joinder be granted.
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`Based on the facts and circumstances discussed above, we determine
`Facebook has established good cause for joining this proceeding with the
`1141 IPR. We determine that granting the Motion for Joinder under these
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`circumstances would help “secure the just, speedy, and inexpensive
`resolution” of these proceedings. See 37 C.F.R. § 42.1(b). For the above
`reasons, we conclude that the Motion for Joinder should be granted.
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`To guide the parties in conducting discovery and presenting
`arguments, we make clear that the parties should pursue only claims 1–15,
`17, and 18 in the joined proceeding. “If 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 a final written decision regarding the patentability of “any patent
`claim challenged by the petitioner.” Id.
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`Although Microsoft challenged a number of claims in addition to the
`claims specified above, the 1141 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, Microsoft no longer challenges any claims of
`the ’245 patent in the joined proceeding. 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 1–15, 17, and 18. For the avoidance of doubt, we dismiss from the
`joined proceeding and, for purposes of § 318(a), will not consider the
`patentability of claims 16 and 19–40.
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`ORDER
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`It is
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`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review in
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`IPR2017-00655 is hereby instituted for claims 1–15, 17, and 18 of the ’245
`patent on the grounds of unpatentability set forth above, and no other
`grounds are authorized;
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`FURTHER ORDERED that Facebook’s Motion for Joinder is
`granted;
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`FURTHER ORDERED that IPR2017-00655 is hereby joined with
`IPR2016-01141;
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`FURTHER ORDERED that the Scheduling Order entered in
`IPR2016-01141 (Paper 9), as modified by joint stipulation (Papers 20 and
`21), is unchanged and shall govern the schedule of the joined proceeding;
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`FURTHER ORDERED that IPR2017-00655 is terminated under
`37 C.F.R. § 42.72, and all further filings in the joined proceeding are to be
`made in IPR2016-01141;
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`FURTHER ORDERED that challenges to claims 16 and 19–40 of the
`’245 patent are dismissed from the joined proceeding;
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`FURTHER ORDERED that a copy of this Decision will be entered
`into the record of IPR2016-01141; and
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`FURTHER ORDERED that the case caption in IPR2016-01141 shall
`be modified to reflect joinder with this proceeding in accordance with the
`attached example.
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`Case IPR2017-00655
`Patent 8,458,245 B1
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`PETITIONER:
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`Joseph Micallef
`SIDLEY AUSTIN LLP
`jmicallef@sidley.com
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`Todd Siegel
`KLARQUIST SPARKMAN, LLP
`Todd.siegel@klarquist.com
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`PATENT OWNER:
`
`Peter Lambrianakos
`Vincent J. Rubino
`BROWN RUDNICK LLP
`plambrianakos@brownrudnick.com
`vrubino@brownrudnick.com
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`Trials@uspto.gov
`571.272.7822
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`Example Case Caption for Joined Proceeding
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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.
`
`WINDY CITY INNOVATIONS, LLC,
`Patent Owner.
`____________
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`Case IPR2016-011411
`Patent 8,458,245 B1
`____________
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`1 Case IPR2017-00655 has been joined with this proceeding.
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