`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`VISA INC., and VISA U.S.A. INC.,1
`Petitioners,
`v.
`UNIVERSAL SECURE REGISTRY, LLC,
`Patent Owner.
`_________________________________________
`Case IPR2018-00809
`U.S. Patent No. 9,530,137
`________________________________________
`
`PETITIONER APPLE INC.’S SUR-REPLY TO PATENT OWNER’S
`REPLY TO THE OPPOSITION TO THE CONDITIONAL MOTION TO
`AMEND
`
`
`
`
`
`
`
`1 Visa Inc. and Visa U.S.A. Inc., which filed a petition in IPR2019-00174, have
`
`been joined as a party to this proceeding
`
`
`
`
`

`

`US Patent No. 9,530,137
`Petitioner’s Sur-Reply To PO’s Reply To The Opposition To The CMTA
`
`
`Contents
`I. 
`INTRODUCTION ............................................................................................... 1 
`II.  ARGUMENT ...................................................................................................... 1 
`A.  The Prior Art Discloses A “Second Device” That Maps The ID Code To A
`Card Or Account Number, Thereby Rendering Obvious Substitute Claims 13
`and 21. ..................................................................................................................... 1 
`B.  The ’585 Reference Discloses A Combination Function That Produces An
`Authentication Code With Separable Fields, As Substitute Claim 13 Would
`Cover. ...................................................................................................................... 3 
`Schutzer Renders Obvious The Added Limitation Of A Digital Signature
`C. 
`In Substitute Claim 18. ........................................................................................... 4 
`D.  PO Fails To Overcome Petitioner’s Showing That The Claims Do Not
`Satisfy § 112. .......................................................................................................... 6 
`PO’s New Interpretations Of The ’660 Application Do Not Remedy Its
`1. 
`Lack Of Written Description Support for Substitute Limitations 13[e] And
`21[f]. .................................................................................................................... 6 
`2. 
`Substitute Limitation 17[a] Does Not Satisfy § 112. ................................. 8 
`E. 
`PO Fails To Overcome Petitioner’s Showing That The Substitute Claims
`Are Patent Ineligible Under § 101. ....................................................................... 10 
`F.  Patent Owner Has Not Satisfied Its Duty Of Candor. .................................... 11 
`G.  PO Fails To Rebut Petitioner’s Showing Of Estoppel. ............................... 11 
`III.  CONCLUSION .............................................................................................. 12 
`CERTIFICATE OF SERVICE ............................................................................ 17 
`
`
`
`
`
`
`ii
`
`

`

`US Patent No. 9,530,137
`Petitioner’s Sur-Reply To PO’s Reply To The Opposition To The CMTA
`
`INTRODUCTION
`In opposing the CMTA, Petitioner demonstrated that the substitute claims
`
`I.
`
`lack support in the ’660 application, are obvious over the prior art made of record
`
`by Petitioner, and are not drawn to patent eligible subject matter. Patent Owner’s
`
`(“PO”) Reply does not overcome these showings, and instead mischaracterizes the
`
`prior art, the testimony of Petitioner’s expert, the disclosure of the ’660
`
`application, and the impact of PO’s disclaimer of claims 8 and 11 in the present
`
`proceeding. Accordingly, the Board should deny PO’s CMTA.
`
`II. ARGUMENT
`A. The Prior Art Discloses A “Second Device” That Maps The ID
`Code To A Card Or Account Number, Thereby Rendering
`Obvious Substitute Claims 13 and 21.
`The Petition and CMTA Opposition demonstrated substitute claims 13 and
`
`21 are obvious over the ’585 reference in view of Maritzen and Schutzer. In
`
`particular, Schutzer discloses authenticating a user with an “alternate card number”
`
`[multidigit ID code for a credit/debit card account] that substitutes for the card
`
`holder’s actual card number and is mapped to the card holder’s account by a card
`
`issuer – exactly what claims 13 and 21 seek to cover. Pet. at 63-72; see also
`
`CMTA Opp. at 17-20. PO attempts to distinguish its substitute claims by arguing
`
`that they require a networked validation-information entity (“NVIE”) to perform
`
`the mapping of a multidigit ID code to a card number, whereas original claim 8
`
`
`
`1
`
`

`

`US Patent No. 9,530,137
`Petitioner’s Sur-Reply To PO’s Reply To The Opposition To The CMTA
`
`requires that a credit card issuer perform the same function. CMTA Reply at 2-6,
`
`14-16. But this is a meaningless distinction because, as PO and its expert admit, a
`
`NVIE can be a credit card company, see CMTA Reply at 22, n. 7; Ex-2021, ¶46, n.
`
`5, and therefore Schutzer’s credit card issuer performing the recited function in the
`
`substitute claims is no different from an NVIE performing that function. See Pet.
`
`at 63-72; CMTA Opp. at 17-20 (citing the same).
`
`Furthermore, contrary to PO’s assertions (CMTA Reply at 14-16), Schutzer
`
`explicitly teaches that the card issuer [NVIE] can map the alternate card number
`
`[multi-digit ID code] to the actual card number. Schutzer explains that after
`
`receiving from the user via the merchant/merchant’s bank the alternate card
`
`number “linked to the user’s actual card number,” the alternate card number
`
`generator “sends the cardholder’s actual card number to the card issuer’s
`
`authorization processor,” thereby mapping from the alternate card number to the
`
`linked actual card number.2 See, e.g., Ex-1115 Schutzer, ¶¶ 26, 32; see also Ex-
`
`1102, Shoup-Decl., ¶¶170-73. And like original claim 8, neither substitute claims
`
`13 nor 21 explicitly recites the NVIE mapping a code to a card number—they
`
`merely require “allowing” the NVIE “to map the multi-digit ID code to a credit
`
`and/or debit card number,” which PO does not dispute is possible in Schutzer’s
`
`system. Accordingly, substitute claims 13 and 21 are obvious.
`
`
`2 Emphasis added unless otherwise noted.
`2
`
`
`
`

`

`B.
`
`US Patent No. 9,530,137
`Petitioner’s Sur-Reply To PO’s Reply To The Opposition To The CMTA
`
`The ’585 Reference Discloses A Combination Function That
`Produces An Authentication Code With Separable Fields, As
`Substitute Claim 13 Would Cover.
`The ’585 reference discloses combination functions that would result in a
`
`signal having separable fields (e.g., prepending/appending constituent codes and
`
`values) as substitute claim 13 would cover. CMTA Opp. at 18-20; Reply at 3-6, 9.
`
`PO is mistaken that the system of the ’585 reference always uses an irreversible
`
`“one-way function.” See CMTA Reply at 16-18. As PO’s expert recognizes, one-
`
`way functions are practically irreversible, Ex-2010, Jakobsson-Decl., ¶58, but the
`
`’585 reference expressly discloses embodiments in which “[t]he verifier 105
`
`reverses the [allegedly one-way] combination operation.” Ex-1113, ’585
`
`Reference, ¶58. Were the combination function in the ’585 reference always one-
`
`way as PO suggests, the verifier could never reverse it.
`
`Indeed, the ’585 reference contains multiple examples of reversible
`
`combination functions that would result in an authentication code with separable
`
`fields. Ex-1130, Juels-Decl., ¶¶39-43. PO overlooks these examples, and instead
`
`mischaracterizes Dr. Juels’ testimony by suggesting he admitted prepending or
`
`appending values, instead of using an irreversible one-way function, are
`
`“inadequate way[s] to generate or protect the authentication code.” CMTA Reply
`
`at 18. To the contrary, Dr. Juels explained that an eavesdropper can recover inputs
`
`only under particular situations where the eavesdropper has enhanced knowledge
`
`
`
`3
`
`

`

`US Patent No. 9,530,137
`Petitioner’s Sur-Reply To PO’s Reply To The Opposition To The CMTA
`
`and/or access. Ex-2019, Juels-Dep., 30:3-21, 34:12-36:12, 40:14-41:6. Such a
`
`scenario, though less secure in some situations, is not “inadequate” as PO
`
`suggests. Thus, a POSITA would have been motivated to use a reversible
`
`combination function. Ex-1119, Shoup-Decl., ¶¶39-41.
`
`Furthermore, even assuming the ’585 reference requires a one-way function,
`
`which it does not, the ’585 reference discloses that the authentication code 292
`
`[one or more signals] could be formed using other constituent authentication
`
`codes (e.g., authentication code 291 [first authentication information]) that could
`
`themselves be formed by a one-way function. See Pet. at 29-34; CMTA Opp. at
`
`17-20 (incorporating the same); see also Ex-1113, ’585 Reference, ¶71. PO admits
`
`that the ’585 reference discloses a one-way function “in conjunction with other
`
`functions.” CMTA Reply at 17. Thus, where the authentication code 291 is
`
`formed using a one-way function and is then prepended or appended to other
`
`values to form authentication code 292, PO’s assertion that the ’585 reference
`
`requires a one-way function and the claimed separable fields would be satisfied.
`
`C.
`
`Schutzer Renders Obvious The Added Limitation Of A Digital
`Signature In Substitute Claim 18.
`The CMTA Opposition demonstrated that the ’585 reference, Maritzen, and
`
`Schutzer render obvious the digital signature of substitute claim 18. In particular,
`
`the CMTA Opposition demonstrated that Schutzer discloses a digital signature, and
`
`that it would have been obvious in view of the teachings of both Schutzer and the
`4
`
`
`
`

`

`US Patent No. 9,530,137
`Petitioner’s Sur-Reply To PO’s Reply To The Opposition To The CMTA
`
`’585 reference to prepend or append a digital signature to the authentication code
`
`of the ’585 reference. See CMTA Opp. at 21-23.
`
`PO does not dispute the obviousness of this combination, and instead argues
`
`that Schutzer’s digital signature is different from the claimed digital signature.
`
`CMTA Reply at 19-21. But that argument overlooks the detailed testimony of Dr.
`
`Shoup, who explained, citing Schutzer and the ’585 reference, that it would be
`
`obvious to include a digital signature in the authentication code of the ’585
`
`reference that securely authenticates the user of the authentication device and
`
`satisfies the language of claim 18. Ex-1129, Shoup-Decl., ¶¶44-51.
`
`More specifically, Dr. Shoup explained that a POSITA would have
`
`recognized that forming digital signatures, like those in Schutzer, could include
`
`generating a digital signature using a private key associated with the first device
`
`(e.g., decrypting data with a user’s private key similar to the combination function
`
`on the first device of the ’585 reference), and that the second device could verify
`
`the digital signature (e.g., the verifier reverses this process by encrypting the digital
`
`signature with a public key to authenticate the user’s device that created the digital
`
`signature). Id. at ¶¶50-51. PO offers no evidence to rebut Dr. Shoup, or to show
`
`that such a modification would be beyond a POSITA’s skill. Nor can it—PO’s
`
`own expert admitted that a POSITA would understand one use of digital signatures
`
`is “to authenticate the entity that generated the digital signature.” Ex-1127,
`
`
`
`5
`
`

`

`US Patent No. 9,530,137
`Petitioner’s Sur-Reply To PO’s Reply To The Opposition To The CMTA
`
`Jakobsson Dep., 77:1-19. Accordingly, PO fails to rebut Petitioner’s showing that
`
`claim 18 would have been obvious.
`
`D.
`
`PO Fails To Overcome Petitioner’s Showing That The Claims Do
`Not Satisfy § 112.
`Petitioner’s CMTA Opposition demonstrated that substitute limitations
`
`13[e], 21[f], and 17[a] lack written description support, and that limitation 17[a] is
`
`indefinite. PO’s new theory of support for limitations 13[e] and 21[f] and
`
`unsupported construction of the term “intentional deletion” in limitation 17[a] do
`
`not remedy these deficiencies.
`
`1.
`
`PO’s New Interpretations Of The ’660 Application Do Not
`Remedy Its Lack Of Written Description Support for
`Substitute Limitations 13[e] And 21[f].
`PO has incorrectly asserted that limitations 13[e] and 21[f], which require
`
`the claimed NVIE to be the claimed second device, are supported by embodiments
`
`that require the NVIE, or credit card company (“CCC”), to be separate from the
`
`second device, or “USR.” CMTA Opp. at 23-24. In particular, the CMTA cited to
`
`page 23, line 34 through page 24, line 2 of the ’660 application (Ex-2006), which
`
`describes that the CCC performs the function of the NVIE: mapping the multi-digit
`
`ID code to a card number. Thus, substitute limitations 13[e] and 21[f] are not
`
`supported because the ’660 application makes clear the credit card company is
`
`separate from the USR. CMTA Opp. at 23-24.
`
`PO’s Reply does not dispute that the NVIE cannot be both the USR and
`
`
`
`6
`
`

`

`US Patent No. 9,530,137
`Petitioner’s Sur-Reply To PO’s Reply To The Opposition To The CMTA
`
`CCC at the same time, and instead cites to new portions of the ’660 application in
`
`support of two new theories for support.3 These new theories also fail.
`
`First, the claimed “multi-digit ID code” is not supported by the code sent
`
`from the user’s device and received by the USR (Ex-2006, ’660 Application,
`
`23:20-30) that PO cited in the CMTA Reply. The ’660 application never equates
`
`(1) the code sent from the user’s device to the USR with (2) the “multidigit public
`
`ID code” sent from the USR to the CCC. Rather, the code from the user’s device,
`
`is meant to be a private one-time code, for use only by the merchant and USR. Ex-
`
`2006, ’660 Application, 23:23-26.
`
`Second, the function of “map[ping] the multi-digit ID code to a … card
`
`number” resides with the CCC, not with the claimed second device—the USR. PO
`
`does not dispute that the CCC and USR are two different entities, and instead
`
`introduces a new theory that the claimed mapping finds support in the functionality
`
`of the USR (see Ex-2006, ’660 application, 23:30-32 (newly cited)) rather than the
`
`CCC (id. at 24:1-2 (previously cited)). This is not supported by the ’660
`
`application, which merely states “USR software 18 determines if the code is valid
`
`… and if valid accesses the user’s credit card information,” and nowhere describes
`
`mapping a code from the user’s device to a credit card number. Id. at 23:30-31.
`
`Indeed, Schutzer’s disclosure of an alternate card number linked to an actual card
`
`
`3 Petitioner has moved to strike these new citations and theories. See Paper 35.
`7
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`
`
`

`

`US Patent No. 9,530,137
`Petitioner’s Sur-Reply To PO’s Reply To The Opposition To The CMTA
`
`number is clearer than the cited portions of the ’660 application (see, supra,
`
`Section II.A), yet PO nonetheless argues that Schutzer fails to describe the claimed
`
`mapping. PO cannot argue that Schutzer’s more detailed disclosure does not
`
`disclose the claimed mapping while arguing that less precise language in the ’660
`
`application does.
`
`PO’s other citations to support in the ’660 application, for which PO offers
`
`no explanation, are similarly deficient. For example, the ’660 application does not
`
`state that public ID field in Figure 23 is the same as the “multidigit ID code”
`
`described on pages 23-24, and says nothing about mapping the public ID field of
`
`Figure 23 to a card number. PO is silent as to why the remaining portions of the
`
`’660 application cited in its CMTA Reply (6:26-33, 38:11-14, 43:27-29, 44:3-12,
`
`45:7-46:2) describe the claimed “multi-digit ID code” or the claimed mapping by
`
`an NVIE. And Dr. Jakobsson admitted that none of these portions alone describes
`
`the claimed “multi-digit ID code” or the claimed mapping by an NVIE. Ex-1139,
`
`Jakobsson-Dep., 562-76. Accordingly, PO has failed to satisfy its burden to
`
`document written description support for limitations 13[e] and 21[f].
`
`2.
`Substitute Limitation 17[a] Does Not Satisfy § 112.
`The CMTA Opposition also demonstrated that the ’660 application lacks
`
`written description support for limitation 17[a] because it is silent as to “intentional
`
`deletion” of data, much less the claimed prevention of the same. CMTA Opp. at
`
`
`
`8
`
`

`

`US Patent No. 9,530,137
`Petitioner’s Sur-Reply To PO’s Reply To The Opposition To The CMTA
`
`25. PO does not dispute that the ’660 application says nothing about intentional
`
`data deletion. Instead, PO attempts to find support by defining “intentional” as
`
`“automatic”—an argument not presented in the CMTA—and pointing to the use of
`
`the word “automatic” in the ’660 application. CMTA Reply at 25. The ’660
`
`application does not use these terms as synonyms. It only briefly mentions
`
`automatically deleting data upon incorrect PIN entry (Ex-2006, ’660 Application,
`
`40:14-18), but says nothing about whether this feature was included intentionally,
`
`and if so, by whom. Contrary to PO’s assertions, “intentional” is often considered
`
`an antonym of “automatic.” See, e.g., Ex-1139, New Oxford Thesaurus of English
`
`(listing “intentional” as an antonym of “automatic”). Thus, when looking to the
`
`specification for guidance, a POSITA would not understand the claimed
`
`“intentional” deletion of data to be the same as the “automatic” deletion of data
`
`described in the ’660 application. PO had the opportunity to claim “automatic
`
`deletion,” but chose not to. And if PO thought “intentional” needed to be
`
`construed as “automatic” to find written description support, its CMTA should
`
`have presented this argument.
`
`Furthermore, even if the ’660 application supports limitation 17[a], which it
`
`does not, PO does not contest that “intentional deletion” is indefinite for failing to
`
`convey to a POSITA what would satisfy intentional, as opposed to unintentional,
`
`deletions of data. CMTA Opp. at 25; CMTA Reply at 25. Though PO argues that
`
`
`
`9
`
`

`

`US Patent No. 9,530,137
`Petitioner’s Sur-Reply To PO’s Reply To The Opposition To The CMTA
`
`the deletion of data in the ’660 application and the claims must be “on purpose,”
`
`PO does not identify whose “purpose” or “intention” would satisfy the claims.
`
`Even if PO were correct that “it makes no sense to put a[n] … unauthorized user
`
`… in charge of a deletion command” (CMTA Reply at 25), the specification does
`
`not say that, and neither the claims nor the specification provides guidance
`
`regarding whose intent, other than the unauthorized user, must be identified in
`
`order to render deletion intentional. Accordingly, limitation 17[a] is indefinite.
`
`E.
`
`PO Fails To Overcome Petitioner’s Showing That The Substitute
`Claims Are Patent Ineligible Under § 101.
`The substitute claims are ineligible under § 101 because they are directed to
`
`the abstract idea of verifying an account holder’s identity based on codes and/or
`
`the account holder’s information before enabling a transaction without adding an
`
`inventive concept. CMTA Opp. at 8-17; Ex-1129, Shoup-Decl., ¶¶29-35.
`
`PO’s asserted “technological improvements,” such as “local and remote
`
`authentication,” “secret information,” “biometric information,” “signal[s],” “first
`
`authentication information,” “an indicator of biometric authentication,” “a time
`
`varying value,” “second authentication information,” and “an enablement signal,”
`
`are all abstract concepts that one could implement using a pen and paper or
`
`perform in their mind. CMTA Reply, 10-11. That the claims implement these
`
`abstract concepts with a generic “first device,” “second device,” and “biometric
`
`sensor,” or in a particular order, does not render them any less abstract. See, e.g.,
`10
`
`
`
`

`

`US Patent No. 9,530,137
`Petitioner’s Sur-Reply To PO’s Reply To The Opposition To The CMTA
`
`CMTA Opp. at 12-16. PO’s CMTA Reply fails to identify a single Supreme Court
`
`or Federal Circuit case in which analogous claims were found patent eligible.
`
`Accordingly, PO fails to rebut the CMTA’s showing that the substitute claims are
`
`patent ineligible.
`
`F.
`Patent Owner Has Not Satisfied Its Duty Of Candor.
`As discussed, supra, Section II.A, PO’s argument that the additions to
`
`claims 13 and 21 are substantively distinct from disclaimed claims 8 and 11 is
`
`incorrect because the NVIE in substitute claims 13 and 21 is the same as the credit
`
`card issuer in claim 8. Therefore, PO’s presentation of amendments in claims 13
`
`and 21 that mirror the original claims 8 and 11 it disclaimed is a violation of its
`
`duty of candor. See CMTA Opp. at 6. Furthermore, PO’s argument that §
`
`42.51(b)(1)(iii) does not apply runs contrary to the Board’s precedential decision in
`
`Lectrosonics, which cites the same regulation to support a PO’s duties regarding
`
`inconsistent positions. PO violated its duty of candor, first, when it argued the
`
`validity of claims 8 and 11 was moot in the POPR without informing the Board
`
`that it planned to later undo its disclaimer and, second, by reintroducing the same
`
`disclaimed requirements into its substitute claims without informing the Board of
`
`its inconsistent positions.
`
`G.
`PO Fails To Rebut Petitioner’s Showing Of Estoppel.
`PO is estopped from submitting substitute claims 13 and 21 in view of its
`
`
`
`11
`
`

`

`US Patent No. 9,530,137
`Petitioner’s Sur-Reply To PO’s Reply To The Opposition To The CMTA
`
`disclaimer, on which the Board and Petitioner relied, of the subject matter of
`
`original claims 8 and 11. CMTA Opp. at 5. In its response, PO argues that it was
`
`always consistent in asserting the patentability of original claims 8 and 11. CMTA
`
`Reply at 6-7. But PO cannot reconcile that it first argued that Ground III was
`
`“moot” (POPR at 12, 32) but now argues it is not moot.
`
`Moreover, PO’s argument that Petitioner was not prejudiced overlooks two
`
`key facts. First, the CMTA Reply ignores the dismissal of the -022 CBM, which
`
`was found to be CBM-ineligible due to PO’s disclaimer, thereby prejudicing
`
`Petitioner by preventing institution of its CBM. Second, Petitioner’s opportunity
`
`to “raise … arguments … in its Opposition” is not a “full, fair, and timely
`
`consideration of Ground 3.” CMTA Reply at 7. Instead, Petitioner has deprived
`
`the Board from considering Ground 3 at institution and allowed PO to delay taking
`
`a position on Ground 3 until after two rounds of briefing by Petitioner, leaving
`
`Petitioner with only this Sur-reply for response. PO should therefore be estopped
`
`from pursuing claims it previously abandoned, to the detriment of Petitioner.
`
`III. CONCLUSION
`Based on the foregoing, PO fails to rebut Petitioner’s showing that the
`
`substitute claims are unpatentable. Accordingly, Petitioner requests that the Board
`
`deny PO’s CMTA.
`
`
`
`Respectfully Submitted,
`
`12
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`

`

`US Patent No. 9,530,137
`Petitioner’s Sur-Reply To PO’s Reply To The Opposition To The CMTA
`
`June 10th, 2019
`
`
`
`/Monica Grewal/
`
`Monica Grewal
`Registration No. 40,056
`
`
`
`13
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`

`

`US Patent No. 9,530,137
`Petitioner’s Sur-Reply To PO’s Reply To The Opposition To The CMTA
`
`TABLE OF EXHIBITS
`
`Exhibit Number
`
`Description
`
`1101
`
`1102
`
`1103
`
`1104
`
`1105
`
`1106
`
`1107
`
`1108
`
`1109
`
`1110
`
`1111
`
`1112
`
`1113
`
`U.S. Patent No. 9,530,137
`
`Declaration of Dr. Victor Shoup (“Shoup-Decl.”)
`
`Complaint, Universal Secure Registry LLC v. Apple Inc.,
`Visa Inc., and Visa U.S.A., Inc., No. 17-585-VAC-MPT
`(D. Del.)
`
`U.S. Patent Publication No. 20160155121
`
`’137 Patent File History, Track One Request
`
`’137 Patent File History, Track One Request Granted
`
`’137 Patent File History, 4/15/2016 Non-Final Rejection
`
`’137 Patent File History, 7/15/2016 Terminal
`Disclaimer-Filed
`
`’137 Patent File History, 7/15/2016 Response to Non-
`Final Rejection
`
`’137 Patent File History, 8/10/2016 Notice of Allowance
`and Fees Due
`
`’137 Patent File History, 11/10/2016 Amendment After
`Notice of Allowance
`
`’137 Patent File History, 11/18/2016 Response to
`Amendment under Rule 312
`
`International Patent Application Publication No. WO
`2004/051585 (“Jakobsson”)
`
`1114
`
`U.S. Patent Application Publication No. 2004/0236632
`
`
`
`14
`
`

`

`US Patent No. 9,530,137
`Petitioner’s Sur-Reply To PO’s Reply To The Opposition To The CMTA
`
`(“Maritzen”)
`
`1115
`
`1116
`
`1117
`
`1118
`
`1119
`
`1120
`
`1121
`
`1122
`
`1123
`
`1124
`
`1125
`
`1126
`
`1127
`
`1128
`
`1129
`
`European Patent Application Publication No. EP
`1028401 (“Schutzer”)
`
`U.S. Patent Application Publication No. 09510811
`(“Niwa”)
`
`U.S. Patent No. 6,453,301 (“Niwa”)
`
`Plaintiff’s Answer Brief in Opposition to Defendants’
`Motion to Dismiss
`
`Webster’s New World Dictionary of Computer Terms
`Eighth Edition Copyright 2000 (Date Stamped by
`Library of Congress March 28, 2000).
`
`Microsoft Computer Dictionary Fourth Edition
`Copyright 1999
`
`U.S. Provisional Application No. 60/775,046
`
`U.S. Provisional Application No. 60/812,279
`
`U.S. Provisional Application No. 60/859,235
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`Declaration of Mark D. Selwyn in Support of Motion for
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`Admission Pro Hac Vice
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`Deposition of Victor Shoup Errata
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`[Reserved]
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`Dr. Jakobsson Deposition Transcript
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`Declaration of Dr. Shoup in Support of Petitioner’s
`Reply to Patent Owner’s Response
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`Declaration of Dr. Shoup in Support of Petitioner’s
`Opposition to Patent Owner’s Conditional Motion to
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`US Patent No. 9,530,137
`Petitioner’s Sur-Reply To PO’s Reply To The Opposition To The CMTA
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`Amend
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`1130
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`1131
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`1132
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`1133
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`1134
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`1135
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`1136
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`1137
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`1138
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`1139
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`Declaration of Dr. Ari Juels
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`[Reserved]
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`[Reserved]
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`[Reserved]
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`[Reserved]
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`Menezes et. al – Handbook of Applied Cryptography
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`CMTA Reply (Highlighted)
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`Ex-2021 (Highlighted)
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`Dr. Jakobsson Deposition Transcript
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`New Oxford Thesaurus
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`US Patent No. 9,530,137
`Petitioner’s Sur-Reply To PO’s Reply To The Opposition To The CMTA
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`CERTIFICATE OF SERVICE
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`I hereby certify that on June 10, 2019, I caused a true and correct copy of
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`the foregoing materials:
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` Petitioner’s Sur-Reply to Patent Owner’s Reply to the CMTA Opposition
` Table of Exhibits
` Exhibits 1138-1139
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`to be served via electronic mail on the following correspondents of record as listed
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`in Patent Owners’ Mandatory Notices and in Paper Number 7 in IPR2019-00174
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`(Decision for Granting Motion for Joinder):
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`For PATENT OWNER:
`James M. Glass (jimglass@quinnemanuel.com)
`Tigran Guledjian (tigranguledjian@quinnemanuel.com)
`Christopher A. Mathews (chrismathews@quinnemanuel.com)
`Nima Hefazi (nimahefazi@quinnemanuel.com)
`Richard Lowry (richardlowry@quinnemanuel.com)
`Razmig Messerian (razmesserian@quinnemanuel.com)
`Jordan B. Kaericher (jordankaericher@quinnemanuel.com)
`Harold A. Barza (halbarza@quinnemanuel.com)
`Quinn Emanuel USR IPR (qe-usr-ipr@quinnemanuel.com)
`QUINN, EMANUEL, URQUHART & SULLIVAN, LLP
`For PETITIONER:
`(IPR2019-00174):
`Matthew Argenti (margenti@wsgr.com)
`Michael Rosato (mrosato@wsgr.com)
`WILSON SONSINI GOODRICH & ROSATI
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`Date: June 10, 2019
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`Respectfully Submitted,
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`/Monica Grewal/
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`US Patent No. 9,530,137
`Petitioner’s Sur-Reply To PO’s Reply To The Opposition To The CMTA
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`Monica Grewal
`Registration No. 40,056
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