throbber
Trials@uspto.gov
`571.272.7822
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`Paper No. 8
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`
` Entered: May 31, 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 IPR2017-00624
`Patent 8,407,356 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)
`
`
`
`
`
`
`
`
`
`

`

`
`
`Case IPR2017-00624
`Patent 8,407,356 B1
`
`
`
`INTRODUCTION
`On January 7, 2017, Facebook, Inc. (“Facebook”) filed a Petition
`
`(Paper 2, “Pet.”) requesting inter partes review of claims 1–9, 12, 14–28, 31,
`and 33–37 (“the challenged claims”) of U.S. Patent No. 8,407,356 B1
`(Ex. 1001, “the ’356 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
`IPR2016-01067 (“1067 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 1067 IPR (“Microsoft”) have settled and, on April 24, 2017,
`moved to terminate the 1067 IPR. 1067 IPR, Paper 30. 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. 1067 IPR, slip op. at 3–4 (PTAB May 10, 2017) (Paper 32).
`For the reasons discussed below, we institute an inter partes review of
`
`all challenged claims and grant Facebook’s Motion for Joinder.
`
`
`INSTITUTION OF INTER PARTES REVIEW
`In the 1067 IPR, we instituted an inter partes review of claims 1–37
`
`of the ’356 patent as allegedly unpatentable based on the following asserted
`grounds under 35 U.S.C. § 103(a):
`
`2
`
`

`

`
`
`Case IPR2017-00624
`Patent 8,407,356 B1
`
`Asserted Prior Art
`Galacticomm References1
`Galacticomm References and Sociable Web2
`Galacticomm References and Choquier3
`Galacticomm References, Choquier, and Sociable Web
`
`
`Claims
`1–37
`6, 7, 17, 26, 36
`1–37
`6, 7, 17, 26, 36
`
`1067 IPR, slip op. at 32–33 (PTAB Dec. 8, 2016) (Paper 10) (“1067 Inst.
`Dec.”). Facebook represents that the Petition in this proceeding challenges
`claims 1–9, 12, 14–28, 31, and 33–37 on the same grounds of
`unpatentability, relying on the same evidence and arguments, as presented in
`the 1067 IPR. Mot. 1. According to Facebook, the only substantive
`difference between its Petition and the petition in the 1067 IPR is that
`Facebook does not challenge claims 10, 11, 13, 29, 30, and 32. See Mot. 1.
`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
`
`
`1 Facebook refers to the combination of three references as the
`“Galacticomm References”: (1) GALACTICOMM, INC., THE MAJOR BBS
`VERSION 6.2 SYSTEM OPERATIONS MANUAL (1994) (Ex. 1012, “Major
`BBS”); (2) Bob Stein, Galacticomm Announces Internet Connectivity Option
`for the Major BBS, BOARDWATCH MAG., Sept. 1994, at 38–39 (Ex. 1014,
`“Galacticomm ICO”); (3) Jim Thompson, Technology Front: Galacticomm
`Unveils Worldgroup: AOL on a PC, BOARDWATCH MAG., Mar. 1995, at 56–
`60 (Ex. 1015, “Worldgroup”). For consistency in the record, we adopt this
`terminology for this Decision.
`2 Judith S. Donath & Niel Robertson, The Sociable Web, 2ND INT’L WWW
`CONF., Oct. 1994 (Ex. 1019, “Sociable Web”).
`3 U.S. Patent No. 5,774,668, filed June 7, 1995, issued June 30, 1998
`(Ex. 1010, “Choquier”).
`
`3
`
`

`

`
`
`Case IPR2017-00624
`Patent 8,407,356 B1
`
`
`does not apply when the petition is accompanied by a request for joinder.
`Pet. 4; see 35 U.S.C. § 315(b); 37 C.F.R. § 42.122(b).
`
`Windy City does not dispute that the present Petition is substantively
`the same as the petition in the 1067 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. 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
`claims challenged in the petition”). Specifically, Windy City advances three
`arguments against the Petition: (1) the asserted prior art fails to teach or
`suggest the multiplexing/demultiplexing limitations of the challenged
`claims; (2) the Petition fails to articulate a sufficient motivation to combine
`the three Galacticomm References; 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.
`
`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 1067 IPR. See 1067 Inst. Dec. 18–32. In reaching this
`determination, we consider the information presented in Windy City’s
`Preliminary Response, which includes arguments it did not present in the
`
`4
`
`

`

`
`
`Case IPR2017-00624
`Patent 8,407,356 B1
`
`
`1067 IPR prior to institution in that case, but Windy City’s positions are not
`persuasive on this record, as explained below.
`
`As noted above, Windy City first argues the asserted prior art fails to
`teach or suggest the multiplexing/demultiplexing limitations of the
`challenged claims. Prelim. Resp. 12–16. According to Windy City, none of
`the Galacticomm References “recite the processes of ‘multiplexing’ or
`‘demultiplexing’” and, moreover, Major BBS lacks a “discussion about how
`data is processed and/or sent over communication lines.” Id. at 12–14.
`Windy City also faults the Petition for insufficiently supporting the
`contention that Major BBS teaches multiplexing/demultiplexing by the
`controller computer and a “virtual connection” created by the API, as recited
`in the challenged claims. Id. at 14–15.
`
`Although Windy City dismisses the testimony of Facebook’s
`declarant, Christopher M. Schmandt, as “unsupported and conclusory” (id. at
`15), we disagree at this stage of the case and determine that the evidence
`provides sufficient support on the present record. In his Declaration,
`Mr. Schmandt testifies that multiplexing and demultiplexing were well-
`known operations on client/server systems, and explains that the
`Galacticomm References teach multiplexing/demultiplexing of API
`messages by a BBS server (i.e., the controller computer) “by necessity”
`because all of the BBS commands had to be communicated over a single
`connection. Ex. 1023 ¶¶ 174–178. Further, Mr. Schmandt testifies that the
`Galacticomm References teach forums, “whisper” messages, and multimedia
`files (i.e., the recited “channels, private messages and multimedia objects”)
`exchanged between BBS users and the BBS system, and explains that these
`must be communicated via a “virtual connection” because the Galacticomm
`
`5
`
`

`

`
`
`Case IPR2017-00624
`Patent 8,407,356 B1
`
`
`References teach such communications over single “TCP/IP” connections
`using “Telnet” programs, similar to the “Tellnet [sic]” embodiment
`disclosed in the specification of the ’356 patent. Id. ¶¶ 179–181.
`
`With respect to the asserted grounds based in part on Choquier,
`Windy City also contends Choquier does not teach multiplexing by the
`controller computer and refers only to multiplexing by the remote user
`computer. Prelim. Resp. 15–16. This argument, however, is belied by the
`record. Facebook and Mr. Schmandt identify specific teachings in Choquier
`describing multiplexing data both by Microsoft Connection Protocol (MCP)
`208a at the client computer (see Ex. 1010, Fig. 2, 8:45–53) and by the MCP
`layer at gateway 126, which multiplexes data from connected servers to send
`to the client computer (see id. at Fig. 12, 19:42–20:12). Pet. 65–66;
`Ex. 1023 ¶¶ 256–258.
`
`Windy City’s arguments questioning the motivation to combine the
`Galacticomm References, and whether a person of ordinary skill would have
`had a reasonable expectation of success, are essentially the same arguments
`it advanced on those issues in the 1067 IPR. See Prelim. Resp. 16–18; 1067
`IPR Paper 7, 12–14. In addition, Windy City argues Facebook’s contentions
`are “conclusory” and insufficiently explained. See Prelim. Resp. 16–18. We
`disagree and conclude the Petition sufficiently addresses these issues for
`purposes of institution for the same reasons explained in our Decision on
`Institution in the 1067 IPR. See 1067 Inst. Dec. 24–25. Further, the
`assertion that Facebook relies on an improper and conclusory “common-
`sense” rationale is inaccurate. Rather, Facebook relies on specific
`disclosures from the Galacticomm References as well as testimony regarding
`the facts underlying those disclosures (see Ex. 1011 ¶¶ 20–21) and the
`
`6
`
`

`

`
`
`Case IPR2017-00624
`Patent 8,407,356 B1
`
`
`understanding of a person of ordinary skill in the art (see Ex. 1023 ¶ 109).
`Pet. 12, 24–25. Windy City’s position also relies on factual allegations for
`which no evidence is cited in support. See Prelim. Resp. 17–18 (alleging,
`for example, that “the Internet Connectivity Option [for Major BBS] never
`worked” without citing supporting evidence).
`
`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 1067 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 1067 IPR with
`respect to claims 1–9, 12, 14–28, 31, and 33–37 of the ’356 patent.
`
`
`MOTION FOR JOINDER
`An inter partes review may be joined with another inter partes
`
`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.
`
`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).
`
`As an initial matter, the Motion for Joinder meets the requirements of
`37 C.F.R. § 42.122(b) because the Motion was filed on January 7, 2017,
`
`7
`
`

`

`
`
`Case IPR2017-00624
`Patent 8,407,356 B1
`
`
`which is not later than one month after the 1067 IPR was instituted on
`December 8, 2016.
`
`Additionally, the present Petition challenges the same patent as is
`under inter partes review in the 1067 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
`1067 IPR. Moreover, the Petition does not assert any other grounds of
`unpatentability, or present any new evidence not already of record in the
`1067 IPR.
`
`Facebook further asserts that granting joinder would not require any
`material delay or modifications to the existing schedule in the 1067 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 1067 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
`1067 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.
`
`Based on the facts and circumstances discussed above, we determine
`Facebook has established good cause for joining this proceeding with the
`1067 IPR. We determine that granting the Motion for Joinder under these
`circumstances would help “secure the just, speedy, and inexpensive
`
`8
`
`

`

`Case IPR2017-00624
`Patent 8,407,356 B1
`
`
`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.
`
`To guide the parties in conducting discovery and presenting
`arguments, we make clear that the parties should pursue only claims 1–9, 12,
`14–28, 31, and 33–37 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.
`
`Although Microsoft challenged several claims in addition to the
`claims specified above, the 1067 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 ’356 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 1–9, 12, 14–28, 31, and 33–37. For the avoidance of doubt, we
`dismiss from the joined proceeding and, for purposes of § 318(a), will not
`consider the patentability of claims 10, 11, 13, 29, 30, and 32.
`
`9
`
`
`
`
`
`

`

`Case IPR2017-00624
`Patent 8,407,356 B1
`
`
`
`
`
`ORDER
`
`It is
`
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review in
`
`IPR2017-00624 is hereby instituted for claims 1–9, 12, 14–28, 31, and 33–
`37 of the ’356 patent on the grounds of unpatentability set forth above, and
`no other grounds are authorized;
`
`FURTHER ORDERED that Facebook’s Motion for Joinder is
`granted;
`
`FURTHER ORDERED that IPR2017-00624 is hereby joined with
`IPR2016-01067;
`
`FURTHER ORDERED that the Scheduling Order entered in
`IPR2016-01067 (Paper 11), as modified by joint stipulation (Papers 19 and
`24), is unchanged and shall govern the schedule of the joined proceeding;
`
`FURTHER ORDERED that IPR2017-00624 is terminated under
`37 C.F.R. § 42.72, and all further filings in the joined proceeding are to be
`made in IPR2016-01067;
`
`FURTHER ORDERED that challenges to claims 10, 11, 13, 29, 30,
`and 32 of the ’356 patent are dismissed from the joined proceeding;
`
`FURTHER ORDERED that a copy of this Decision will be entered
`into the record of IPR2016-01067; and
`
`FURTHER ORDERED that the case caption in IPR2016-01067 shall
`be modified to reflect joinder with this proceeding in accordance with the
`attached example.
`
`
`
`
`
`10
`
`

`

`11
`
`Case IPR2017-00624
`Patent 8,407,356 B1
`
`
`PETITIONER:
`
`Heidi L. Keefe
`Phillip E. Morton
`Andrew C. Mace
`COOLEY LLP
`hkeefe@cooley.com
`pmorton@cooley.com
`amace@cooley.com
`
`
`
`
`
`
`
`PATENT OWNER:
`
`Peter Lambrianakos
`Vincent J. Rubino, III
`Alfred R. Fabricant
`BROWN RUDNICK LLP
`plambrianakos@brownrudnick.com
`vrubino@brownrudnick.com
`afabricant@brownrudnick.com
`
`
`
`

`

`Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
`
`Example Case Caption for Joined Proceeding
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC.,
`Petitioner,
`
`v.
`
`WINDY CITY INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-010671
`Patent 8,407,356 B1
`____________
`
`
`
`
`
`1 Case IPR2017-00624 has been joined with this proceeding.
`
`
`
`

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