Paper No. 41
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`APPLE INC.,
`VISA INC., and VISA U.S.A. INC.,
`
`Petitioners,
`
`v.
`
`UNIVERSAL SECURE REGISTRY LLC,
`
`Patent Owner
`
`________________
`
`Case IPR2018-008091
`
`U.S. Patent No. 9,530,137
`
`________________
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION TO
`STRIKE PORTIONS OF PAPER 31 AND EXHIBIT 2021
`
`1 Visa Inc. and Visa U.S.A. Inc., which filed a petition in IPR2019-0174, have been
`
`joined as a party to this proceeding.
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`APPLE INC.,
`VISA INC., and VISA U.S.A. INC.,
`
`Petitioners,
`
`v.
`
`UNIVERSAL SECURE REGISTRY LLC,
`
`Patent Owner
`
`________________
`
`Case IPR2018-008091
`
`U.S. Patent No. 9,530,137
`
`________________
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION TO
`STRIKE PORTIONS OF PAPER 31 AND EXHIBIT 2021
`
`1 Visa Inc. and Visa U.S.A. Inc., which filed a petition in IPR2019-0174, have been
`
`joined as a party to this proceeding.
`
`
`
`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`II.
`
`INTRODUCTION ........................................................................................... 1
`PETITIONER’S ARGUMENTS FOR STRIKING PATENT
`OWNER’S WRITTEN DESCRIPTION SUPPORT ARE
`MERITLESS .................................................................................................... 1
`1.
`Petitioner Misapprehends Patent Owner’s Arguments In
`Its CMTA .................................................................................... 2
`The Allegedly Offending Written Description Support
`Was Cited in the CMTA for the Preamble Elements of
`Both Claims ................................................................................. 5
`Patent Owner’s Reply and Supporting Declaration
`Properly Respond to Petitioner’s Arguments Made in
`Opposition ................................................................................... 7
`III. CONCLUSION ................................................................................................ 8
`
`2.
`
`3.
`
`i
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`
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`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
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`Universal Secure Registry LLC (“Patent Owner”) submits this Opposition to
`
`Petitioner’s Motion to Strike Portions of Patent Owner’s Paper 31 and Exhibit 2021,
`
`Paper 35 (“MTS”).
`
`I.
`
`INTRODUCTION
`
`The mainstay of Petitioner’s arguments—that Patent Owner presents new
`
`written description support in its Reply in Support of its Conditional Motion to
`
`Amend (Paper 31, “Reply”)—is false. Petitioner takes an improperly narrow view
`
`of the ample written description support contained in Patent Owner’s Conditional
`
`Motion to Amend and misapprehends Patent Owner’s written description arguments
`
`in connection with claims 13 and 21. Because Patent Owner’s Reply and
`
`accompanying Exhibit 2021 are both fully supported by Patent Owner’s Conditional
`
`Motion to Amend (Paper 19, “CMTA”), Petitioner’s MTS should be denied.
`
`II.
`
`PETITIONER’S ARGUMENTS FOR STRIKING PATENT
`OWNER’S WRITTEN DESCRIPTION SUPPORT ARE MERITLESS
`
`Petitioner incorrectly argues that Patent Owner has added new written
`
`description support for claim limitations 13[c], 13[e], 21[d], and 21[f]. According
`
`to Petitioner, Patent Owner cites to “new portions” of the specification in Reply “in
`
`an attempt to cure what Petitioner argued in its Opposition was a lack of support.”
`
`MTS at 2-3. In particular, Petitioner argues that Patent Owner’s references to page
`
`23, lines 23-30 of the ’660 application in its briefing or in Dr. Jakobsson’s supporting
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`1
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`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
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`declaration (as well as associated discussion of this citation) should be struck.
`
`Petitioner’s arguments are unavailing for several reasons.
`
`1.
`
`Petitioner Misapprehends Patent Owner’s Arguments
`In Its CMTA
`
`As conceded by Petitioner (MTS at 2-3), Patent Owner’s CMTA cited to page
`
`23, line 34 through page 24, line 2 of the ’660 application as written description
`
`support for the disputed claim limitations. Petitioner fails to mention, however, that
`
`Patent Owner explained in connection with that citation that use of the public ID
`
`code by a credit card company was only “one non-limiting, non-exclusive example
`
`of a ‘network validation-information entity’ [] to map the ID code to the correct card
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`number.”2 CMTA at 4. Nowhere did Patent Owner argue (or even imply) that the
`
`claimed “network validation-information entity” must be a credit card company or
`
`even a financial institution.
`
`Patent Owner also cited Figures 7, 21, and 23, and in particular, wireless
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`signal 300 between first device 2110 and a second device. Id. at 3-4, 7-11. These
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`figures (as well as the corresponding text within the specification of the ’660
`
`application) all support an embodiment where the “network validation-information
`
`entity” is a USR that receives the ID code and performs the claimed mapping. For
`
`2 All emphases added unless otherwise noted.
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`2
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`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
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`example, Figure 21 of the ’660 application generically shows a “responder” and
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`“challenger.” Ex. 2006 at Fig. 21. The corresponding text within the specification
`
`explains that the “challenger” (the second device) can determine the identity of the
`
`user and directly access the secure database 2146 in order to carry out the claimed
`
`mapping. Id. at 41:16-42:23; see also id. at 43:19-44:12 (second device verifying
`
`identity of first device). Read in context with the rest of the specification (and in
`
`particular the portions thereof cited in Patent Owner’s CMTA), the cited
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`“challenger” can clearly constitute the USR that both receives the ID code from the
`
`first device (the “responder”) and performs the claimed mapping. See, e.g., id. at
`
`6:26-7:26, 9:9-29, 10:23-11:6, 23:34-24:2, 38:6-19, 41:7-15, 42:24-44:16; 45:7-
`
`46:2, 47:1-13, 48:1-10, 51:8-16, 59:3-9.
`
`3
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`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
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`Figure 7, which Patent Owner’s CMTA also cites for the disputed limitations,
`
`also provides written description support. CMTA at 4, 7-11. In fact, the disclosure
`
`Petitioner complains about (i.e., page 23, lines 23-30 of the ’660 application) is
`
`describing the embodiment of Figure 7, a figure that was expressly cited in Patent
`
`Owner’s CMTA in both the arguments and in the table listing exemplary written
`
`description support for the disputed limitations. Id.; Ex. 2006 at 23:20-30 (“As
`
`shown in FIG. 7, when a user initiates a purchase….”). There can be no dispute,
`
`therefore, that the arguments Petitioner is seeking to strike were adequately disclosed
`
`4
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`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
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`in Patent Owner’s CMTA for the contested limitations. For these reasons alone,
`
`Petitioner’s MTS should be denied.
`
`2.
`
`The Allegedly Offending Written Description Support Was
`Cited in the CMTA for the Preamble Elements of Both Claims
`
`Contrary to Petitioner’s suggestion, the precise disclosure Petitioner objects
`
`to was cited in Patent Owner’s CMTA as written description support for both claims
`
`13 and 21. See CMTA at 7 (citing 23:20-24:11 for limitation 13[pre]), 10 (citing
`
`23:20-24:11 for limitation 21[pre]). Since the preambles to claims 13 and 21 each
`
`reference the “system…for enabling a [credit and/or debit / financial] transaction,”
`
`the written description support cited for the claim preambles applies to the individual
`
`limitations making up the system, including limitations 13[c], 13[e], 21[d], and
`
`21[f].
`
`This CMTA citation is undisputed. Indeed, Petitioner acknowledges—in a
`
`footnote—that Patent Owner’s CMTA “did reference the ’660 application at page
`
`23, lines 20-33 and page 24, lines 3-10” in connection with the claim preambles.
`
`MTS at 7 n.2. Petitioner then argues, without any support whatsoever, that the
`
`preamble “does not provide written description support for proposed limitations
`
`13[e] and 21[f]” because the preambles “relate generally to the claimed systems, and
`
`do not provide antecedent basis for either the claimed ‘second device’ or the claimed
`
`‘validation-information entity’” and
`
`that Patent Owner’s CMTA did not
`
`5
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`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
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`“incorporate” support from the preambles for other limitations. Id. Petitioner has
`
`cited no case law (and Patent Owner is unaware of any) requiring written description
`
`support cited in a CMTA to be expressly incorporated into every limitation or else
`
`find express antecedent basis in the claim language in order to put Petitioner on
`
`notice of Patent’s Owner’s written description support.3 Rather, this Board’s Order
`
`on the Conduct of the Proceeding (Paper 17) and precedent only require a showing
`
`of “written-description support in the original specification for each proposed
`
`substitute claim.” Paper 17 at 4; see also 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). Moreover, as Petitioner concedes in its MTS, “USR bears
`
`the burden of “sett[ing] forth written description support in the originally-filed
`
`disclosure…for each proposed substitute claim as a whole.” MTS at 6 (citing 35
`
`U.S.C. § 316(d)(3); 37 C.F.R. §§ 42.121(a)(2)(ii), 42.121(b)). Contrary to
`
`Petitioner’s suggestion, there is no requirement in the rules or case law that written
`
`description support must be presented on a limitation-by-limitation basis. Thus,
`
`3 And, contrary to Petitioner’s assertions, the preambles of claims 13 and 21 do
`
`provide antecedent basis for limitations 13[e] and 21[f], which explicitly recite a
`
`“[credit and/or debit / financial] transaction.”
`
`6
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`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
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`having provided this support for claims 13 and 21 in Patent Owner’s CMTA—a fact
`
`that Petitioner fully acknowledges in its motion—there is no basis for Petitioner’s
`
`Motion to Strike.
`
`3.
`
`Patent Owner’s Reply and Supporting Declaration Properly
`Respond to Petitioner’s Arguments Made in Opposition
`
`As described above, Patent Owner’s written description support was all
`
`properly cited in its CMTA. Petitioner, in its opposition to Patent Owner’s CMTA,
`
`argued (incorrectly) that Patent Owner’s written description support was deficient
`
`“because the original disclosure does not show a financial institution being a
`
`networked validation-information entity” and that “[t]he credit card company is the
`
`only disclosed element that performs the claimed function of the networked
`
`validation information entity.” Paper 24 at 23-24.
`
`Patent Owner, in Reply, responded directly to Petitioner’s misunderstanding
`
`of both Patent Owner’s positon and the disclosure of the ’660 application. In Reply,
`
`Patent Owner explained that “Petitioner’s entire § 112 argument as to claims 13 and
`
`21 hinges on the mistaken assumption that the claimed networked validation-
`
`information entity must be a financial institution.” Reply at 22. While Patent Owner
`
`went on to explain why Petitioner’s assumption was mistaken, Patent Owner’s
`
`arguments were all fully supported by its CMTA, as described above. Specifically,
`
`Patent Owner’s original citations for written description support included an
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`7
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`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
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`embodiment where the claimed “networked validation-information entity” could
`
`comprise the USR (and not strictly a credit card company or financial institution)
`
`and perform the claimed mapping. Since Patent Owner’s Reply properly
`
`“respond[s] to arguments raised in the corresponding opposition,” Petitioner’s MTS
`
`should be denied. 37 C.F.R. § 42.23(b).
`
`III. CONCLUSION
`
`As shown above, Patent Owner adequately identified all written description
`
`support in its CMTA. Since Patent Owner’s Reply and accompanying Exhibit 2021
`
`are both fully supported by Patent Owner’s CMTA, there are no “new theories” as
`
`Petitioner contends. Petitioner’s MTS should be denied.
`
`DATED: June 14, 2019
`
`Respectfully submitted,
`
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`
`By
`/s/ James M. Glass
`James M. Glass (Reg. No. 46,729)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`jimglass@quinnemanuel.com
`
`Lead Attorney for Patent Owner –
`Universal Secure Registry LLC
`
`8
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`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certify that PATENT
`
`OWNER’S OPPOSITION TO PETITIONER’S MOTION TO STRIKE PORTIONS
`
`OF PAPER 31 AND EXHIBIT 2021, and all exhibits and other documents filed
`
`together with the reply, were served on June 14, 2019 by e-mailing copies to:
`
`Counsel
`Monica Grewal (Reg. No. 40,056)
`monica.grewal@wilmerhale.com
`Ben Fernandez (Reg. No. 55,172)
`ben.fernandez@wilmerhale.com
`WH-Apple Distribution List
`wh-apple-usr-ipr@wilmerhale.com
`WILMER CUTLER PICKERING HALE AND DORR LLP
`60 STATE STREET
`BOSTON, MA 02109
`
`Mark Selwyn (Pro Hac Vice granted)
`mark.selwyn@wilmerhale.com
`WILMER CUTLER PICKERING HALE AND DORR LLP
`950 PAGE MILL ROAD
`PALO ALTO, CA 94304
`
`Matthew A. Argenti (Reg. No. 61,836)
`margenti@wsgr.com
`Michael T. Rosato (Reg. No. 52,182)
`mrosato@wsgr.com
`WILSON SONSINI GOODRICH & ROSATI
`650 Page Mill Road
`Palo Alto, CA 94304-1050
`
`DATED: June 14, 2019
`
`Respectfully submitted,
`
`9
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`
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`Case No. IPR2018-00809
`U.S. Patent No. 9,530,137
`
`By
`/s/ Razmig H. Messerian
`Razmig H. Messerian (Reg. No. 56,983)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`865 S. Figueroa St., 10th Floor
`Los Angeles, CA 90017
`razmesserian@quinnemanuel.com
`
`10
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