throbber
Trials@uspto.gov
`571-272-7822
`
`Paper No. 11
`Entered: July 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 IPR2017-00659
`Patent 8,694,657 B1
`____________
`
`Before KARL D. EASTHOM, DAVID C. MCKONE, and J. JOHN LEE,
`Administrative Patent Judges.
`
`Opinion Concurring filed by Administrative Patent Judge MCKONE, in
`which Administrative Patent Judge Lee joins.
`
`PER CURIAM
`
`
`
`
`Institution of Inter Partes Review and
`Order Granting Petitioner’s Motion
`for Joinder of IPR2017-00659 With IPR2016-01159
`37 C.F.R. § 42.108
`37C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`

`

`IPR2017-00659
`Patent 8,694,657 B1
`
`
`I. BACKGROUND
`
`On January 12, 2017, Facebook, Inc. (“Petitioner”) filed a Petition
`
`(Paper 2, “Pet.”) for inter partes review of claims 203, 209, 215, 221, 477,
`
`482, 487, and 492 of U.S. Patent No. 8,694,657 B1 (Ex. 1001, “the ’657
`
`patent”). With its Petition, Petitioner filed a Motion for Joinder (Paper 3,
`
`“Mot.”) with Facebook, Inc. v. Windy City Innovations, LLC, Case
`
`IPR2016-01159 (“the -01159 IPR”). In the -01159 IPR, Petitioner
`
`challenges claims 189, 334, 342, 348, 465, 580, 584, and 592 of the ’657
`
`patent. Windy City Innovations, LLC (“Patent Owner”) filed an Opposition
`
`to Petitioner’s Motion for Joinder (Paper 8, “Opp.”). Petitioner filed a Reply
`
`to Opposition to Motion for Joinder (Paper 9, “Reply”).
`
`The Petition here was filed after the one-year statutory time period set
`
`forth in 35 U.S.C. § 315(b) and 37 C.F.R. § 42.101(b). “An inter partes
`
`review may not be instituted if the petition requesting the proceeding is filed
`
`more than 1 year after the date on which the petitioner, real party in interest,
`
`or privy of the petitioner is served with a complaint alleging infringement of
`
`the patent.” 35 U.S.C. § 315(b). On June 2, 2015, more than one year prior
`
`to the filing of the Petition, Patent Owner filed a complaint (Ex. 1016,
`
`“Complaint”) alleging infringement by Petitioner of the ’657 patent. Patent
`
`Owner contends that Petitioner was served with the Complaint on June 2,
`
`2015 (Opp. 1), a point that Petitioner does not dispute.
`
`Nevertheless, as Petitioner notes (Mot. 4), the § 315(b) time bar does
`
`not apply if a petition is accompanied by a request for joinder and joinder is
`
`granted. See 35 U.S.C. § 315(b) (“The time limitation set forth in the
`
`preceding sentence shall not apply to a request for joinder under subsection
`
`(c).”); 37 C.F.R. § 42.122(b) (“The time period set forth in § 42.101(b) shall
`
`2
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`IPR2017-00659
`Patent 8,694,657 B1
`
`
`not apply when the petition is accompanied by a request for joinder.”).
`
`Petitioner argues that the Petition is timely, as it was accompanied by its
`
`Motion for Joinder. Mot. 5.
`
`The timing of Petitioner’s earlier challenge of claims 189, 334, 342,
`
`348, 465, 580, 584, and 592 (on which we instituted in the -1159 IPR) and
`
`new challenge of claims 203, 209, 215, 221, 477, 482, 487, and 492 stems
`
`from the history of the parties’ underlying district court litigation in Windy
`
`City Innovations, LLC v. Facebook, Inc., Case No. 4:16-cv-01730-YGR
`
`(N.D. Cal.) (“the District Court litigation”).1 Patent Owner originally filed
`
`an infringement complaint in the United States District Court for the
`
`Western District of North Carolina on June 2, 2015, alleging infringement of
`
`various patents, including the ’657 patent. Ex. 1016. Patent Owner alleged,
`
`with little specificity, that various of Petitioner’s products “infringed and
`
`continues to infringe the patents-in-suit” and “meet claims of the patents-in-
`
`suit.” Id. ¶¶ 22–23. The ’657 patent alone has 671 claims, none of which
`
`were identified with particularity in the Complaint.
`
`In the District Court litigation, Petitioner moved to dismiss the
`
`Complaint, inter alia, because “[t]he four asserted patents collectively span
`
`hundreds of pages and include 830 claims” and “without identifying a single
`
`specific claim, the Complaint alleges that the entirety of ‘Facebook.com’ as
`
`well as ‘Facebook apps’ somehow infringe the patents.” Ex. 3001
`
`(Defendant Facebook, Inc.’s Memorandum in Support of Motion to Dismiss
`
`
`1 Patent Owner initially brought suit in the United States District Court for
`the Western District of North Carolina, Civil Action No. 15-cv-102. The
`case later was transferred to the United States District Court for the Northern
`District of California, Civil Action No. 4:16-cv-01730-YGR.
`
`3
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`

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`IPR2017-00659
`Patent 8,694,657 B1
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`Pursuant to FRCP 12(b)(6)). The North Carolina court did not rule on the
`
`Motion to Dismiss, and instead transferred the case (pursuant to Petitioner’s
`
`motion) to the Northern District of California on March 16, 2016. Mot. 2–3;
`
`Ex. 3002, 2 (Order granting Motion to Change Venue).
`
`The parties then corresponded regarding Patent Owner focusing its
`
`dispute on a limited number of claims but failed to reach agreement.
`
`Ex. 1012. Petitioner filed an administrative motion with the California
`
`court, asking the court to require Patent Owner to “identify no more than
`
`forty asserted claims across the four asserted patents no later than May 16,
`
`2016.” Ex. 1013, 1–2. In a May 17, 2016, Order, the California court
`
`denied the administrative motion, but stated that it “will require a
`
`preliminary election of asserted claims and prior art and employ a form of
`
`order modeled by the Federal Circuit,” and that “[t]he parties shall address
`
`the topic in their Joint Case Management Conference Statement.” Ex. 1014.
`
`The case management conference was not held until July 25, 2016.
`
`Ex. 3003.
`
`According to Petitioner, “without the benefit of knowing which claims
`
`Windy City asserted, Facebook filed a petition for inter partes review (‘the
`
`Original [1159] Petition’) requesting cancellation of claims 189, 334, 342,
`
`348, 465, 580, 584, and 592 of the ’657 Patent.” Mot. 3; -1159 IPR, Paper 1
`
`(“-1159 Pet.”). On October 19, 2016, after the § 315(b) time bar for filing
`
`such a petition, Patent Owner formally identified claims 189, 203, 209, 215,
`
`221, 465, 477, 482, 487, and 492 of the ’657 patent in the District Court
`
`litigation. Mot. 4; Ex. 1015.
`
`4
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`

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`IPR2017-00659
`Patent 8,694,657 B1
`
`
`We instituted a trial in the -1159 IPR on December 12, 2016.
`
`Petitioner filed the instant Petition on January 12, 2017, within one month of
`
`the Institution Decision, consistent with 37 C.F.R. § 42.122(b).
`
`
`
`II. ANALYSIS
`
`A. Petitioner Has Shown that Joinder Is Appropriate
`
`Other panels of this Board have counseled that a motion for joinder
`
`should (1) set forth reasons why joinder is appropriate; (2) identify any new
`
`grounds of unpatentability asserted in the petition; (3) explain what impact
`
`(if any) joinder would have on the trial schedule for the existing review; and
`
`(4) address specifically how briefing and discovery may be simplified.
`
`See, e.g., Kyocera Corp. v. Softview LLC, Case IPR2013-00004, slip op. at 4
`
`(PTAB Apr. 24, 2013) (Paper 15).
`
`
`
`1. The Substance of the Petition Is Similar to that Already
`Addressed in the -1159 IPR
`
`As Petitioner argues (Mot. 6), we “routinely grant[] motions for
`
`joinder where the party seeking joinder introduces identical arguments and
`
`the same grounds raised in the existing proceeding.” Samsung Electronics
`
`Co., Ltd. v. Raytheon Co., Case IPR2016-00962, slip op. at 9 (PTAB
`
`Aug. 24, 2016) (Paper 12) (emphases in original). The parties disagree
`
`whether the Petition advances substance similar to that advanced in the
`
`-1159 IPR.
`
`Claims 203, 209, 215, 221, 477, 482, 487 and 492 (challenged in this
`
`case) depend indirectly from claims 189 and 465, which have been instituted
`
`in the -1159 IPR. As Petitioner argues,
`
`5
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`IPR2017-00659
`Patent 8,694,657 B1
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`the newly challenged claims add only two types of limitation,
`neither of which substantially expands this proceeding. First,
`independent claims 189 and 465 each recite “censoring” one or
`more of certain types of data (e.g., video, audio, graphic and
`multimedia), and the newly-challenged dependent claims recite
`particular ones of those types of data. . . .
`
`Second, the newly challenged claims recite that access is
`provided through two client software alternatives.
`
`Mot. 9–10. Both of these categories of limitations were addressed fully in
`
`the -1159 Petition, albeit not in the precise combinations recited in the
`
`claims challenged in the instant Petition.
`
`The newly challenged claims depend from independent claims 189
`
`and 465 via intermediate claims. Specifically, claim 203 depends from
`
`claim 202, claim 209 depends from claim 208, claim 215 depends from
`
`claim 214, and claim 221 depends from claim 220. Each of claims 202, 208,
`
`214, and 220 depends from claim 189, which Petitioner addressed in
`
`the -1159 Petition, at 14–47. Claim 477 depends from claim 476, claim 482
`
`depends from claim 481, claim 487 depends from claim 486, and claim 492
`
`depends from claim 491. Each of claims 476, 481, 486, and 491 depends
`
`from claim 465, which Petitioner also addressed in the -1159 Petition, at 53–
`
`56. In this proceeding, Petitioner essentially copies the analysis from the
`
`-1159 Petition for the underlying limitations of independent claims 189 and
`
`465. Pet. 17–51, 62–65.
`
`As to the first category of limitations added by the newly challenged
`
`claims, underlying independent claim 189 recites, inter alia, “determining
`
`whether the first user identity is individually censored from sending data in
`
`the communications, the data presenting at least one of a pointer, video,
`
`audio, a graphic, and multimedia.” Intermediate dependent claims 202, 208,
`
`6
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`IPR2017-00659
`Patent 8,694,657 B1
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`214, and 220, reproduced below (emphases added), each narrow this
`
`limitation to one of the forms of data:
`
`202. The method of claim 189, wherein the determining whether
`the first user identity is censored includes determining that
`the first user identity is censored from the sending of the
`data presenting the video.
`
`208. The method of claim 189, wherein the determining whether
`the first user identity is censored includes determining that
`the first user identity is censored from the sending of the
`data presenting the audio.
`
`214. The method of claim 189, wherein the determining whether
`the first user identity is censored includes determining that
`the first user identity is censored from the sending of the
`data presenting the graphic.
`
`220. The method of claim 189, wherein the determining whether
`the first user identity is censored includes determining that
`the first user identity is censored from the sending of the
`data presenting the multimedia.
`
`Similarly, independent claim 465 recites, inter alia, “determines whether the
`
`first user identity, is individually censored from sending data in the
`
`communications, the data presenting at least one of a pointer, video, audio, a
`
`graphic, and multimedia.” Intermediate claims 476, 481, 486, and 491,
`
`reproduced below (emphases added), each narrow this limitation to one of
`
`the forms of data:
`
`476. The system of claim 465, wherein data presents the video.
`
`481. The system of claim 465, wherein the data presents the
`audio.
`
`486. The system of claim 465, wherein the data presents the
`graphic.
`
`491. The system of claim 465, wherein the data presents the
`multimedia.
`
`7
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`IPR2017-00659
`Patent 8,694,657 B1
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`As Petitioner points out, the -1159 Petition introduced evidence that
`
`censoring each of these types of data was taught in the prior art and that we
`
`made preliminary findings that at least one of these data types is shown.
`
`Mot. 9–10; -1159 Pet. 38–43, 55–56; -1159 IPR, Paper 7, 31–32. Petitioner
`
`essentially copies its arguments from the -1159 Petition into the instant
`
`Petition as to these aspects. Pet. 42–46, 65–67. Petitioner expands on this
`
`only to include specific references to its analysis of claim 189 applicable to
`
`each individual claim 202, 208, 214, 220, 476, 481,486, and 491. Pet. 51–
`
`52, 57–61, 65.
`
`As to the second category of limitations added by the challenged
`
`claims, each of claims 203, 209, 215, 221, 477, 482, 487, and 492 add the
`
`same limitation, namely, “wherein the computer system provides access via
`
`any of two client software alternatives, wherein both of the client software
`
`alternatives allow respective user identities to be recognized and allow at
`
`least some of the participator computers to form at least one group in which
`
`members can send communications and receive communications.” Claims
`
`334 and 580, challenged in the -1159 IPR, depend from claims 189 and 465,
`
`respectively, and add the same limitation. The -1159 Petition addressed this
`
`limitation in the context of claims 334 and 580. -1159 Pet. 47–51, 56.
`
`Petitioner essentially copies this analysis for the corresponding limitations of
`
`claims 203, 209, 215, 221, 477, 482, 487, and 492. Pet. 52–56, 61–62.
`
`Patent Owner contends that the instant Petition adds significant
`
`substance, including “up to 17 pages worth of new positions in the argument
`
`section [of the Petition] alone” and “a new expert report supporting the
`
`newly-challenged claims and its intermediate-dependent claims, adding 20
`
`pages worth of new analyses and arguments.” Opp. 4. We disagree. As
`
`8
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`IPR2017-00659
`Patent 8,694,657 B1
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`explained above, the -1159 Petition addressed each of the limitations of the
`
`newly challenged claims. The new arguments in the Petition simply re-align
`
`those existing arguments and evidence to the newly challenged claims.
`
`Thus, although the newly challenged claims are not identical to those
`
`challenged in the -1159 Petition, the substance is very similar such that the
`
`addition of claims 203, 209, 215, 221, 477, 482, 487, and 492 is not likely to
`
`affect the scope of the trial significantly.
`
`We further note that the substance of Petitioner’s claim construction
`
`arguments and summaries of the prior art references is essentially the same
`
`in the instant Petition as in the -1159 Petition. Compare Pet. 7–8, 10–16
`
`with -1159 Pet. 4–5, 7–13.
`
`
`
`2. Impact of Joinder on the Existing Schedule, Briefing, and
`Discovery
`
`As explained above, the substantive issues concerning claims 203,
`
`209, 215, 221, 477, 482, 487, and 492 are essentially the same as the issues
`
`currently being tried in the -1159 IPR. Thus, we agree with Petitioner that
`
`the addition of these claims “will not substantially expand the issues and
`
`subject matter of [the -1159 IPR].” Mot. 2.
`
`Petitioner contends that “joinder of the two proceedings would require
`
`only reasonable minor adjustments to the schedule that need not unduly
`
`delay the final hearing or final decision in Case IPR2016-01159,” and
`
`represents that it “is willing to agree to any reasonable and appropriate
`
`revisions to the schedule to maximize efficiency and ensure a speedy
`
`resolution for the joined proceedings, for example so as to obtain a final
`
`9
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`IPR2017-00659
`Patent 8,694,657 B1
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`written decision within one year of institution of trial in Case IPR2016-
`
`01159.” Mot. 11.
`
`Patent Owner responds that
`
`[a]dding newly challenged claims to its own Original Petition––
`and arguments for the newly-challenged claims and its
`intermediate dependent claims—now would result in undue
`delay and prejudice to Patent Owner. New analyses, additional
`briefing, and scheduling adjustments would undoubtedly result
`from granting joinder. In addition to legal fees, Patent Owner
`will incur additional costs in expediting new expert analyses for
`sixteen claims with accompanying arguments to address these
`otherwise statutorily-barred challenges.
`
`Opp. 5. Given the similarity of the issues regarding the newly challenged
`
`claims, however, we are not persuaded that the incremental costs and
`
`burdens of addressing those claims will be substantial or undue. Moreover,
`
`the oral argument in the -1159 IPR, if requested, already has been
`
`rescheduled, with agreement of the parties, from September 6, 2017, to
`
`October 19, 2017. -1159 IPR, Paper 29. This will provide additional
`
`freedom for the “reasonable and appropriate” adjustments to the schedule
`
`Petitioner represents that it will agree to. Mot. 11.
`
`We are not persuaded that joinder will impact the trial schedule of the
`
`-1159 IPR significantly or that briefing and discovery will be unduly
`
`affected.
`
`
`
`3. Petitioner did not Unduly Delay in Bringing its Petition
`
`Petitioner contends that joinder is appropriate because it seeks to add
`
`claims asserted in the District Court litigation for the first time after the
`
`-1159 Petition was filed. Mot. 7. Petitioner argues that it did not challenge
`
`claims 203, 209, 215, 221, 477, 482, 487, and 492 in the -1159 Petition
`
`10
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`IPR2017-00659
`Patent 8,694,657 B1
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`because to challenge all 671 claims of the ’657 patent would have been
`
`unreasonable. Id. Rather, Petitioner argues that it made a good faith effort
`
`to ascertain from Patent Owner the claims it actually sought to pursue and,
`
`when that effort failed, challenged the subset that appeared in the -1159
`
`Petition. Id. at 7–8.
`
`Patent Owner contends that Petitioner should have challenged claims
`
`203, 209, 215, 221, 477, 482, 487, and 492 in the -1159 Petition and that not
`
`doing so constituted a delay and lack of diligence. Opp. 2–4. According to
`
`Patent Owner, “Petitioner was on notice of these very claims long before the
`
`one-year bar and Petitioner could have included argument in its Original
`
`Petition.” Id. at 2. Specifically, Patent Owner argues that it had asserted all
`
`claims of the ’657 patent in the District Court Litigation as reflected in the
`
`original Complaint and that Petitioner understood the scope of these
`
`allegations. Id. at 2–3.
`
`In Reply, Petitioner disputes whether Patent Owner asserted “all
`
`claims” of the ’657 patent in the District Court Litigation, arguing instead
`
`that Patent Owner alleged infringement of unspecified “claims.” Reply 1.
`
`We agree with Petitioner. Patent Owner’s Complaint merely alleged that
`
`Petitioner “has infringed and continues to infringe the patents-in-suit” and
`
`that its products “meet claims of the patents-in-suit.” Ex. 1016 ¶¶ 22–23.
`
`For the purposes of joinder under 37 C.F.R. § 42.122(b), these statements on
`
`this record cannot reasonably be considered an allegation that Petitioner
`
`infringes all 830 claims of the several patents asserted in the District Court
`
`Litigation or an allegation that that it infringes the newly challenged claims.
`
`Moreover, Petitioner took active steps to ascertain Patent Owner’s
`
`true allegations, giving Patent Owner multiple opportunities to identify the
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`11
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`Patent 8,694,657 B1
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`subset of the claims it alleged were infringed. Specifically, Petitioner filed a
`
`Motion to Dismiss the Complaint for lack of specificity (Ex. 3001) and an
`
`Administrative Motion seeking to force Patent Owner to take a position on
`
`the claims it asserted (Ex. 1013). Petitioner also corresponded with Patent
`
`Owner in an attempt to focus Patent Owner’s allegations. Ex. 1012. Patent
`
`Owner refused.
`
`In sum, we are not persuaded that Petitioner reasonably could have
`
`determined that claims 203, 209, 215, 221, 477, 482, 487, and 492 would be
`
`asserted by Patent Owner prior to filing the -1159 Petition. Thus, this case is
`
`similar to that in Sony Corporation v. Yissum Research Development
`
`Company of the Hebrew University of Jerusalem, Case IPR2013-00326, slip
`
`op. at 6 (PTAB Sept. 24, 2013) (Paper 15), in which a panel of this Board
`
`reasoned:
`
`[A]ccording to Petitioner, no specific claim 4, 5, and 34
`infringement assertions were made originally in the District
`Court litigation. As noted, within two months of the new specific
`claim 4, 5, and 34 assertions appearing in Patent Owner’s
`Answering Brief in District Court, Petitioner filed the instant
`Petition.
` Therefore, notwithstanding Patent Owner’s
`characterizations and explanation that more than 100 claims are
`potentially at issue before the District Court, Petitioner’s
`challenge of additional claims 4, 5, and 34 here, appear on this
`record, to be a reasonable and timely response to Patent Owner’s
`litigation posture, as opposed to a dilatory, unilateral action.
`
`See also Amneal Pharm., LLC. v. Endo Pharm. Inc., Case IPR2014-01365,
`
`slip op. at 14 (PTAB Feb. 4, 2015) (Paper 13) (“Petitioner provides a
`
`justification as to why it challenges claims 44 and 47 in the current Petition,
`
`and not in the Petition in IPR2014-00360. Because Patent Owner asserted
`
`infringement of claims 44 and 47 in a district court case for the first time
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`12
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`IPR2017-00659
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`after Petitioner filed its first Petition and after the § 315(b) bar date passed,
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`we are persuaded that Petitioner provides an adequate justification for
`
`considering its contentions in the current Petition in relation to those
`
`claims.”).
`
`On this record, we conclude that Petitioner did not delay in
`
`challenging claims 203, 209, 215, 221, 477, 482, 487, and 492 and that not
`
`including those claims in the -1159 Petition was justified.
`
`
`
`4. Joinder is Appropriate
`
`As explained above, the issues in the instant proceeding are
`
`substantially very similar to that of the existing -1159 IPR, we are not
`
`persuaded that joinder will impact the existing schedule, briefing, and
`
`discovery significantly, and we are persuaded that Petitioner’s addition of
`
`the newly challenged claims after the filing of the -1159 Petition is justified.
`
`Accordingly, on this record, joinder of IPR2017-00659 to the -1159 IPR is
`
`appropriate.
`
`
`
`B. Petitioner Has Established a Reasonable Likelihood that It Would
`Prevail as to Claims 203, 209, 215, 221, 477, 482, 487, and 492
`
`As explained above, when their intermediate dependent claims are
`
`taken into account, claims 203, 209, 215, and 221 are essentially the same in
`
`scope as claim 334 (challenged and instituted in the -1159 IPR), except that
`
`each of these claims limits the censoring of sending of data to one of the five
`
`types of data recited in independent claim 189. Similarly, claims 477, 482,
`
`487, and 492 are essentially the same in scope as claim 580, except that each
`
`of these claims limits censoring of presenting data to one of the five types of
`
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`data recited in independent claim 465. In the -1159 IPR, we preliminarily
`
`determined that the evidence supports findings that each of the limitations of
`
`claims 334 and 580 (including those of independent claims 189 and 465) are
`
`taught in the prior art. -1159 IPR, Paper 7, 14–51, 53–56. For the same
`
`reasons, we are persuaded that the evidence supports findings that the
`
`limitations of claims 203, 209, 215, 221, 477, 482, 487, and 492 are taught
`
`by the asserted prior art references, which are the same references asserted in
`
`the -1159 IPR.
`
`In the context of claims 189 and 465, Petitioner presents argument and
`
`evidence to show that censoring each type of data is taught by the prior art.
`
`Pet. 42–46. In the -1159 IPR, we preliminarily determined that the evidence
`
`supports a finding that the prior art teaches censoring at least one of these
`
`data types. -1159 IPR, Paper 7, 31–32. As to the individual data types
`
`recited in underlying dependent claims 202, 208, 214, 220, 476, 481, 486,
`
`and 491, Petitioner points to where in its analysis of claim 189 each of these
`
`types is shown. Pet. 51–52, 57–61. Based on the arguments and evidence
`
`available at this stage, including the aspects of Petitioner’s positions from
`
`the -1159 IPR that are incorporated here (e.g., concerning the elements of
`
`the independent claims), the evidence sufficiently supports Petitioner’s
`
`contentions that the limitations of claims 202, 208, 214, 220, 476, 481, 486,
`
`and 491 are taught by Roseman (Ex. 1003, US 6,608, 636 B1), Rissanen
`
`(Ex. 1004, EP 0 621 532 A1), Vetter (Ex. 1005, Ronald J. Vetter,
`
`Videoconferencing on the Internet, IEEE COMPUTER SOCIETY 77–79
`
`(Jan. 1995)), Pike (Ex. 1006, Mary Ann Pike et al., USING MOSAIC (1994)),
`
`and Lichty (Ex. 1007, Tom Lichty, THE OFFICIAL AMERICA ONLINE FOR
`
`MACINTOSH MEMBERSHIP KIT & TOUR GUIDE (2nd ed. 1994)).
`
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`Accordingly, on this record, Petitioner has established a reasonable
`
`likelihood that it would prevail with respect to claims 203, 209, 215, 221,
`
`477, 482, 487, and 492 as obvious over Roseman, Rissanen, Vetter, Pike,
`
`and Lichty.
`
`
`
`For the reasons given, it is:
`
`ORDER
`
`ORDERED that inter partes review is instituted in IPR2017-00659 as
`
`to claims 203, 209, 215, 221, 477, 482, 487 and 492 of U.S. Patent No.
`
`8,694,657 B1 on the ground of obviousness, under 35 U.S.C. § 103(a), over
`
`Roseman, Rissanen, Vetter, Pike, and Lichty, and no other grounds are
`
`authorized;
`
`FURTHER ORDERED that Petitioner’s Motion for Joinder is
`
`granted;
`
`FURTHER ORDERED that IPR2017-00659 is joined to IPR2016-
`
`01159;
`
`FURTHER ORDERED that IPR2017-00659 is terminated under
`
`37 C.F.R. § 42.72, and all further filings in the joined proceeding are to be
`
`made in IPR2016-01159; and
`
`FURTHER ORDERED that the caption in IPR2016-01159 shall be
`
`changed to reflect joinder with IPR2017-00659 as shown on the attached
`
`example.
`
`15
`
`

`

`IPR2017-00659
`Patent 8,694,657 B1
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC.,
`Petitioner,
`
`v.
`
`WINDY CITY INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00659
`Patent 8,694,657 B1
`____________
`
`
`
`Before KARL D. EASTHOM, DAVID C. MCKONE, and J. JOHN LEE,
`Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge, with whom LEE, Administrative
`Patent Judge, joins, concurring.
`
`Although I agree with the reasoning in the majority opinion, I have
`
`concerns with permitting a party to, essentially, join to itself. The discretion
`
`to grant joinder is vested by statute in the Director. See 35 U.S.C. § 315(c).
`
`The Director has delegated that discretion to the Board. See 37 C.F.R.
`
`§ 42.122(b). The delegation, however, does not address the issue whether a
`
`party can join, as a party, to a proceeding in which it already is a party.
`
`Rather, the rule simply states that “[j]oinder may be requested by a patent
`
`owner or petitioner.” Id. Although an expanded panel of this Board has
`
`ruled, over a dissent, that such same-party joinder is permissible under
`
`1
`
`

`

`IPR2017-00659
`Patent 8,694,657 B1
`
`
`§ 315(c), see Target Corp. v. Destination Maternity, Corp., Case IPR2014–
`
`00508, slip op. (Feb. 12, 2015) (Paper 28), that decision is not precedential
`
`and, thus, not binding on this panel.
`
`Nevertheless, the Director repeatedly has taken the position, in
`
`briefing before the United States Court of Appeals for the Federal Circuit,
`
`that such same-party joinder is permitted by § 315(c). See, e.g., Nidec
`
`Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd, 2016-2321
`
`(Fed. Cir.), Brief for Intervenor – Director of the United States Patent and
`
`Trademark Office, 32–39. My view is that § 315(c), when properly
`
`interpreted, does not authorize same-party joinder because a party cannot be
`
`joined to a proceeding “as a party” if it already is a party to that proceeding.
`
`In this respect, I agree with the reasoning set forth in SkyHawke
`
`Technologies, LLC v. L&H Concepts, LLC, Case IPR2014-01485, slip op.
`
`3–4 (Mar. 20, 2015) (Paper 13). See also Target (Paper 28, Fitzpatrick,
`
`Administrative Patent Judge, dissenting). Despite my disagreement with the
`
`Director’s interpretation, I respect the position the Director has taken and
`
`follow it in this proceeding.
`
`2
`
`

`

`IPR2017-00659
`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
`BROWN RUDNICK LLP
`vrubino@brownrudnick.com
`plambrianakos@brownrudnick.com
`
`
`3
`
`

`

`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper __
`Entered: __
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC.,
`Petitioner,
`
`v.
`
`WINDY CITY INNOVATIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-011591
`Patent 8,694,657 B1
`____________
`
`
`
`
`
`
`
`
`
`
`
`1 Case IPR2017-00659 has been joined with this proceeding.
`
`

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