`Tel: 571-272-7822
`
`Paper 57
`Entered: November 13, 2020
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC.,
`Petitioner,
`
`v.
`
`WINDY CITY INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`IPR2017-00709, IPR2016-01156; Patent 8,458,245 B1
`IPR2017-00659, IPR2016-01159; Patent 8,694,657 B1
`____________
`
`
`
`Before KARL D. EASTHOM, DAVID C. MCKONE, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`PROCEDURES FOLLOWING REMAND
`37 C.F.R. § 42.5(a)
`
`
`
`IPR2017-00709, IPR2016-01156; Patent 8,458,245 B1
`IPR2017-00659, IPR2016-01159; Patent 8,694,657 B1
`
`On July 31, 2017, we instituted a trial in IPR2017-00659 and joined it
`to IPR2016-01159. IPR2016-01159, Paper 34. On August 1, 2017, we
`instituted a trial in IPR2017-00709 and joined it to IPR2016-01156.
`IPR2016-01156, Paper 34. The later-filed petitions challenged additional
`claims of the ’245 and ’657 patents not challenged in the earlier-filed
`petitions. We issued Final Written Decisions in IPR2016-01156 and
`IPR2016-01159 on December 6, 2017, ruling on the claims challenged in
`both the earlier-filed petitions and the later-filed petitions. See, e.g.,
`IPR2016-01156, Paper 52. Petitioner appealed these decisions. See, e.g.,
`IPR2016-01156, Paper 53.
`Patent Owner cross-appealed and, in particular, challenged our joinder
`decisions. See Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d
`1321, 1329–30 (Fed. Cir. 2020). The Federal Circuit determined that 35
`U.S.C. § 315(c) does not authorize same-party joinder and does not
`authorize the joinder of new issues, and thus determined that the joinder of
`later-filed claims to the earlier-filed inter partes reviews was improper and
`vacated our Final Written Decisions as to those claims. Id. at 1330–44. As
`the Federal Circuit noted, by the time the later-filed petitions were filed, the
`time bar of 35 U.S.C. § 315(b) had passed. Id. at 1325. However, the
`Federal Circuit determined that it “lack[ed] authority to review the Board’s
`institution of the two late-filed petitions,” and “remand[ed] to the Board to
`consider whether the termination of those proceedings finally resolves
`them.” Id. at 1326.
`The parties are invited to file short papers providing input regarding
`the proposed procedure on remand. See Patent Trial and Appeal Board
`
`2
`
`
`
`IPR2017-00709, IPR2016-01156; Patent 8,458,245 B1
`IPR2017-00659, IPR2016-01159; Patent 8,694,657 B1
`Standard Operating Procedure 9 (SOP 9), Appendix 2.1 To that end, if the
`parties have not already done so, the parties are directed to meet and confer
`to discuss the proper course of action to implement the Federal Circuit’s
`remand instructions. If the parties agree on the procedure, the parties are
`directed file a joint paper indicating their agreement. If the parties do not
`agree with each other, each party is authorized to file a paper, of not more
`than three pages in length, providing its proposal on remand procedures,
`such as whether additional briefing is necessary and, if so, the subject matter
`and length of briefing. See SOP 9. The parties’ papers are due no later than
`November 20, 2020.
`
`
`
`
`
`
`1 Available at
`https://www.uspto.gov/sites/default/files/documents/sop_9_%20procedure_f
`or_decisions_remanded_from_the_federal_circuit.pdf.
`
`3
`
`
`
`IPR2017-00709, IPR2016-01156; Patent 8,458,245 B1
`IPR2017-00659, IPR2016-01159; Patent 8,694,657 B1
`PETITIONER:
`
`Heidi L. Keefe
`Phillip E. Morton
`Andrew C. Mace
`COOLEY LLP
`hkeefe@cooley.com
`pmorton@cooley.com
`amace@cooley.com
`
`PATENT OWNER:
`
`Vincent J. Rubino, III
`Peter Lambrianakos
`Enrique W. Iturralde
`FABRICANT LLP
`vrubino@fabricantllp.com
`plambrianakos@fabricantllp.com
`eiturrald@fabricantllp.com
`
`
`4
`
`
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