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`IPR2016-01159
`
`U.S. Pat. No. 8,694,657
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`
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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
`
`
`
`U.S. Pat. No. 8,694,657
`Issue Date: April 8, 2014
`Title: REAL TIME COMMUNICATIONS SYSTEM
`__________________________________________________________________
`
`PATENT OWNER’S PROPOSED PROCEDURE ON REMAND
`
`Case No. IPR2016-01159
`__________________________________________________________________
`
`
`
`
`
`

`

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`IPR2016-01159
`
`U.S. Pat. No. 8,694,657
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`
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`On November 13, 2020, the Board authorized the parties to file short papers
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`
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`providing input regarding the proposed procedure on remand. Patent Owner
`
`Windy City Innovations LLC and Petitioner Facebook Inc. have conferred
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`regarding this issue and do not agree on any proposed procedure. As the Board
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`states in its November 13, 2020 notice to the parties, the Federal Circuit noted that
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`the petitions filed in IPR2016-01156 and IPR2016-01159 are time-barred under 35
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`U.S.C. § 315(b). See Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d
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`1321, 1325 (Fed. Cir. 2020). Because the petitions are statutorily time-barred, the
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`Board is not authorized under the current statutory framework to review U.S.
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`Patent Nos. 8,458,245 and 8,694,657 on any grounds petitioned in IPR2016-01156
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`and IPR2016-01159. Accordingly, there are no issues requiring supplemental
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`briefing,1 and the Board should issue an order terminating the actions so that the
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`Board and the parties do not continue to unnecessarily expend resources.
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`Dated: November 20, 2020
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`Respectfully submitted,
`
`/Vincent J. Rubino, III /
`
`Vincent J. Rubino, III (Reg. No. 68,594)
`Lead Counsel for Patent Owner
`Fabricant LLP
`230 Park Avenue, 3rd Floor W.
`New York, NY 10169
`Telephone: (212) 257-5797
`
`
`1 To the extent the Board requests or authorizes supplemental briefing on any issue, Patent
`Owner requests a responsive brief of equal pages due within a reasonable time period after the
`filing of Petitioner’s brief.
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`
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`1
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`

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`IPR2016-01159
`
`U.S. Pat. No. 8,694,657
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`
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`Facsimile: (212) 257-5796
`Email: vrubino@fabricantllp.com
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`
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`2
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`

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`CERTIFICATE OF SERVICE
`
`IPR2016-01159
`
`U.S. Pat. No. 8,694,657
`
`
`
`A copy of PATENT OWNER’S PROPOSED PROCEDURE ON REMAND
`
`has been served on Petitioner at the correspondence of the Petitioner as follows:
`
`By Email:
`
`Phillip E. Morton (Reg. No. 57,835)
`pmorton@cooley.com
`zpatdcdocketing@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington D.C. 20004
`
`By Email:
`
`Daniel J. Knauss (Reg. No. 56,393)
`dknauss@cooley.com
`zpatdcdocketing@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`
`By Email:
`
`Heidi L. Keefe (Reg. No. 40,673)
`hkeefe@cooley.com
`zpatdcdocketing@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`
`By Email:
`
`Andrew C. Mace (Reg. No. 63,342)
`amace@cooley.com
`zpatdcdocketing@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`
`
`November 20, 2020
`
`
`
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`
`
`
`
`
`
`
`/Vincent J. Rubino, III/
`
`Vincent J. Rubino, III (Reg. No. 68,594)
`Lead Counsel for Patent Owner
`Fabricant LLP
`230 Park Avenue, 3rd Floor W.
`New York, NY 10169
`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
`
`
`
`
`
`
`
`

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