Trials@uspto.gov
`571.272.7822
`
`
`
` Paper No. 17
`
` Entered: January 8, 2019
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY, LLC,
`Patent Owner.
`____________
`
`IPR2018-00809 (Patent 9,530,137 B2)
`IPR2018-00810 (Patent 9,100,826 B2)
` IPR2018-00813 (Patent 9,100,826 B2)1
`____________
`
`
`
`Before PATRICK R. SCANLON, GEORGIANNA W. BRADEN, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MELVIN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 This Decision addresses issues pertaining to multiple proceedings. The
`Parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`
`571.272.7822
`
`
`
` Paper No. 17
`
` Entered: January 8, 2019
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY, LLC,
`Patent Owner.
`____________
`
`IPR2018-00809 (Patent 9,530,137 B2)
`IPR2018-00810 (Patent 9,100,826 B2)
` IPR2018-00813 (Patent 9,100,826 B2)1
`____________
`
`
`
`Before PATRICK R. SCANLON, GEORGIANNA W. BRADEN, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MELVIN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 This Decision addresses issues pertaining to multiple proceedings. The
`Parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`
`
`IPR2018-00809 (Patent 9,530,137 B2)
`IPR2018-00810 (Patent 9,100,826 B2)
`IPR2018-00813 (Patent 9,100,826 B2)
`
`
`Patent Owner, Universal Secure Registry, LLC, requested a
`conference to discuss a request for modified briefing page limits for Patent
`Owner’s expected motion to amend. The panel conducted a conference with
`counsel for the parties on January 7, 2019.
`Patent Owner proposes swapping the page limits for its opening brief
`and reply brief, such that Patent Owner would file a 12-page opening brief
`and then file a 25-page reply brief following Petitioner’s 25-page opposition
`brief. Patent Owner argues that Aqua Products, Inc. v. Matal, 872 F.3d 1290
`(Fed. Cir. 2017) (en banc) held that patent owners do not bear a burden to
`show patentability, beyond the requirements of 35 U.S.C. § 316(d), therefore
`providing a reason to depart from our prior practice as defined by 37 C.F.R.
`§ 42.24. Patent Owner argues further that our scheduling order in this case
`provides for a surreply by Petitioner, indicating that we are willing to depart
`from the default rules.
`Petitioner, Apple Inc., opposes Patent Owner’s request on the basis
`that Patent Owner insufficiently justifies a departure from the page limits set
`in 37 C.F.R. § 42.24. Petitioner submits that reducing the length of Patent
`Owner’s opening brief will increase the likelihood that Patent Owner will
`fall short of the requirements for a motion to amend and then improperly
`seek to recover any shortcoming in Patent Owner’s reply brief.
`With its proposed page limits, Patent Owner assumes the risk that it
`will not have sufficient space to make the preliminary showing required in a
`motion to amend. Cf. 35 U.S.C. § 316(d)(3); 37 C.F.R. §§ 42.121(a)(2), (b).
`In light of Patent Owner’s willingness to assume that risk and the total page
`limit remaining unchanged under Patent Owner’s proposal, we conclude that
`
`
`
`2
`
`
`
`IPR2018-00809 (Patent 9,530,137 B2)
`IPR2018-00810 (Patent 9,100,826 B2)
`IPR2018-00813 (Patent 9,100,826 B2)
`
`
`the proposal is a reasonable approach to the burden allocation prescribed by
`Aqua Products. Accordingly, we grant Patent Owner’s request.
`Counsel for each party indicated familiarity with motions to amend.
`Additional guidance may be found in the Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,756, 48,766–48,767 (Aug. 14, 2012), the Office Patent Trial
`Practice Guide, August 2018 Update (available at
`https://go.usa.gov/xPCKP), our guidance memorandum on motions to
`amend, titled “Guidance on Motions to Amend in view of Aqua Products,”
`dated Nov. 21, 2017 (available at https://go.usa.gov/xET3C), and the
`guidance on motions to amend as set forth in Western Digital Corp. v. SPEX
`Techs., Inc., Case IPR2018-00082, -00084 (PTAB Apr. 25, 2018) (Paper 13)
`(available at https://go.usa.gov/xET32).
`
`A motion to amend claims may cancel claims and/or propose a
`reasonable number of substitute claims. 35 U.S.C. § 316(d)(1); 37 C.F.R.
`§ 42.121(a)(3). A request to cancel claims will not be treated as contingent,
`but a request to substitute claims will be treated as contingent, which means
`a proposed substitute claim will only be considered if the original patent
`claim it is meant to replace is deemed unpatentable. Proposed substitute
`claim amendments that result in no more than one substituted claim for each
`challenged claim are a presumptively reasonable number of substitute
`claims. 37 C.F.R. § 42.121(a)(3) (“A reasonable number of substitute
`claims. A motion to amend may cancel a challenged claim or propose a
`reasonable number of claims. The presumption is that only one substitute
`claim would be needed to replace each challenged claim, and it may be
`rebutted by a demonstration of need.”).
`
`
`
`3
`
`
`
`IPR2018-00809 (Patent 9,530,137 B2)
`IPR2018-00810 (Patent 9,100,826 B2)
`IPR2018-00813 (Patent 9,100,826 B2)
`
`
`We reminded Patent Owner that any proposed amendments may not
`enlarge the scope of the claims of the patent or introduce new matter. See 35
`U.S.C. § 316(d)(3), 37 C.F.R. § 42.121(a)(2)(ii). Patent Owner must show
`written-description support in the original specification for each proposed
`substitute claim. See 37 C.F.R. § 42.121(b); see MLB Advanced Media, L.P.
`v. Front Row Techs., LLC, Case IPR2017-01127, slip op. at 2–4 (PTAB Jan.
`16, 2018) (Paper 24). Citations should be made to the original disclosure of
`the as-filed application, rather than to the patent as issued. Patent Owner
`must show written-description support for the entire proposed substitute
`claim and not just the features added by amendment. This applies equally to
`independent and dependent claims, even if the only amendment to the
`dependent claims is in the identification of the claim from which it depends.
`Our rules require a claim listing that reproduces each proposed
`substitute claim. See 37 C.F.R. § 42.121(b). Any claim with a changed scope
`subsequent to the amendment should be included in the claim listing as a
`proposed substitute claim and should have a new claim number. This
`includes any dependent claim Patent Owner intends as dependent from a
`proposed substitute independent claim. For each proposed substitute claim,
`the motion must clearly show the changes of the proposed substitute claim
`with respect to the original patent claim that it is intended to replace. No
`particular form is required, but use of brackets to indicate deleted text and
`underlining to indicate inserted text is suggested. The required claim list
`may be contained in an appendix, which does not count toward the page
`limit for the motion. See 37 C.F.R. §§ 42.24(a)(1).
`We further reminded the parties that “a motion to amend may be
`denied where . . . [t]he amendment does not respond to a ground of
`4
`
`
`
`
`
`IPR2018-00809 (Patent 9,530,137 B2)
`IPR2018-00810 (Patent 9,100,826 B2)
`IPR2018-00813 (Patent 9,100,826 B2)
`
`
`unpatentability involved in the trial.” 37 C.F.R. § 42.121(a)(2)(i). In
`considering the motion, we will consider the entirety of the record to
`determine whether Patent Owner’s amendments respond to the grounds of
`unpatentability involved in this trial.
`ORDER
`In consideration of the foregoing, it is:
`ORDERED that the following page limits apply: Patent Owner’s
`Motion to Amend, 12 pages; Petitioner’s Opposition to Patent Owner’s
`Motion to Amend, 25 pages; Patent Owner’s Reply to Petitioner’s
`Opposition, 25 pages; Petitioner’s Surreply to Patent Owner’s Reply, 12
`pages.
`FURTHER ORDERED that Patent Owner has satisfied the
`requirement of conferring with us prior to filing a motion to amend under 37
`C.F.R. § 42.121(a).
`
`
`
`
`
`
`
`
`
`5
`
`
`
`IPR2018-00809 (Patent 9,530,137 B2)
`IPR2018-00810 (Patent 9,100,826 B2)
`IPR2018-00813 (Patent 9,100,826 B2)
`
`
`PETITIONER:
`
`Monica Grewal
`Ben Fernandez
`Kelvin Chan
`WILMER CUTLER PICKERING
` HALE AND DORR LLP
`monica.grewal@wilmerhale.com
`ben.fernandez@wilmerhale.com
`kelvin.chan@wilmerhale.com
`
`PATENT OWNER:
`
`James M. Glass
`Tigran Guledjian
`Christopher A. Mathews
`Nima Hefazi
`Richard Lowry
`QUINN EMANUEL URQUHART
` & SULLIVAN LLP
`jimglass@quinnemanuel.com
`tigranguledjian@quinnemanuel.com
`chrismathews@quinnemanuel.com
`nimahefazi@quinnemanuel.com
`richardlowry@quinnemanuel.com
`
`
`
`
`6
`
`
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