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` 1
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________
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`FACEBOOK, INC.
`Petitioner,
`
`v.
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`WINDY CITY INNOVATIONS, LLC
`Patent Owner.
`
`______________
`
`
`Case IPR2016-011591
`Patent 8,694,657 B1
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`______________
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`PROPOSED REMAND PROCEDURE
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` Case IPR2017-00659 has been joined with this proceeding.
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`Petitioner submits this statement in response to the Board’s February 11, 2021
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`email directing each party to propose the remand procedures that it desires to follow
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`in view of the Federal Circuit’s remand of this matter.
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`
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`The challenged claims of the ’657 patent remanded to the Board (claims 203,
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`209, 215, 221, 477, 482, 487, 492) involve IPR2017-00659, which the Federal
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`Circuit found had been improperly joined to the earlier-filed IPR2016-01159
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`proceeding. Facebook, Inc. v. Windy City Innovations, LLC, 973 F. 3d 1321, 1338-
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`39, 1347 (Fed. Cir. 2020). The Board’s Final Written Decision in IPR2016-01159
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`was otherwise affirmed. Id. Petitioner has not filed a writ of certiorari to the
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`Supreme Court, and the deadline for doing so has passed.
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`Therefore, because the Board already terminated IPR2017-00659 in
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`connection with joining that proceeding to IPR2016-01159 (see IPR2017-00659,
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`Paper 11 at 15), and the Federal Circuit vacated the Final Written Decision in
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`IPR2016-01159 only as it pertains to the joined claims, nothing remains for the
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`Board on the merits regarding either of those proceedings. Petitioner requests that
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`the Board terminate the proceedings as to the remanded claims of the ’657 patent
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`(claims 203, 209, 215, 221, 477, 482, 487, 492).
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`Dated: February 19, 2021
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`Respectfully submitted,
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`/Heidi L. Keefe/
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`Heidi L. Keefe
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`Reg. No. 40,673
`Counsel for Petitioner Facebook, Inc.
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`1
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`CERTIFICATE OF SERVICE
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`I hereby certify, pursuant to 37 C.F.R. section 42.6, that a complete copy
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`of the attached PROPOSED REMAND PROCEDURE is being served on
`the 19th day of February 2021 upon the patent owner’s attorneys of record via
`email:
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`Vincent Rubino
`vrubino@fabricantllp.com
`
`Peter Lambrianakos
`plambrianakos@fabricantllp.com
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`Enrique Iturralde
`eiturralde@fabricantllp.com
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`
`
`Cooley LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
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`
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`2
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