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 REPLY IN SUPPORT OF ITS
`
`MOTION TO STRIKE PORTIONS OF
`
`PATENT OWNER’S PAPER 31 AND EXHIBIT 2021
`
`
`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
`
`
`
`
`
`
`
`
`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 REPLY IN SUPPORT OF ITS
`
`MOTION TO STRIKE PORTIONS OF
`
`PATENT OWNER’S PAPER 31 AND EXHIBIT 2021
`
`
`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
`
`
`
`
`
`
`Table of Contents
`
`IPR2018-00809
`US Pat. No. 9,530,137
`
`Page
`
`I.
`
`II.
`
`PO HAS NOT SHOWN WHERE THE CHALLENGED CITATIONS CAN
`BE FOUND IN THE CMTA IN THE CONTEXT OF THE SUBSTITUTE
`LIMITATIONS ................................................................................................ 1
`THE CMTA’S ALLEGED SUPPORT FOR THE PREAMBLES OF
`CLAIMS 13 AND 21 DOES NOT SUPPORT PO’S NEW THEORY FOR
`WRITTEN DESCRIPTION SUPPORT FOR THE SUBSTITUTE
`LIMITATIONS ................................................................................................ 3
`PO’S NEW THEORY OF WRITTEN DESCRIPTION SUPPORT IS NOT
`A PERMISSIBLE RESPONSE ....................................................................... 5
`IV. CONCLUSION ................................................................................................ 5
`
`
`III.
`
`
`
`i
`
`
`
`IPR2018-00809
`US Pat. No. 9,530,137
`It is not surprising that PO’s Opposition fails to demonstrate where the
`
`CMTA discloses its argument that page 23, lines 20-32 of the ’660 application
`
`provides written description support for substitute limitations 13[c], 13[e], 21[d],
`
`and 21[f] (“the substitute limitations”). That part of the ’660 application is found
`
`nowhere in the CMTA’s discussion of the substitute limitations. Effectively
`
`conceding the CMTA has no support for its new theory, PO’s Opposition now cites
`
`additional new portions of the ’660 application as purported written description
`
`support that do not appear in either the CMTA or PO’s Reply to Petitioner’s
`
`Opposition to the CMTA. The Board should therefore strike the highlighted
`
`portions of Paper 31 and Exhibit 2021 shown in Exhibits 1136 and 1137.
`
`I.
`PO HAS NOT SHOWN WHERE THE CHALLENGED CITATIONS
`CAN BE FOUND IN THE CMTA IN THE CONTEXT OF THE
`SUBSTITUTE LIMITATIONS
`
`Petitioner’s Motion to Strike showed that the only example the CMTA cites
`
`in the ’660 application (Ex-2006) of the claimed “map[ing] the multi-digit ID code
`
`to a credit and/or debit card number” by a “networked validation-information
`
`entity” is one involving a credit card company.2 Petitioner’s Motion to Strike at 1-
`
`
`2 PO never argues in any of its papers that the claims have written description
`
`support if the claimed “networked information-validation entity” is interpreted as
`
`the credit card company discussed in this passage.
`
`
`
`1
`
`
`
`IPR2018-00809
`US Pat. No. 9,530,137
`5. The CMTA never suggested PO’s new (incorrect) theory that this function
`
`instead resides in the description of the Universal Secure Registry (“USR”) found
`
`at page 23, lines 23-30 of the ’660 application (Ex-2006). The CMTA did not even
`
`cite this passage for the substitute limitations. Id. at 6-8.
`
`PO responds by arguing that Petitioner “misapprehended” the CMTA,
`
`because the CMTA listed the credit card company as “one non-limiting, non-
`
`exclusive example of a ‘network validation-information entity.’” PO’s Opposition
`
`at 2-3. But this vague language provided no notice of what, if any, other portions
`
`of the ’660 application PO purported to rely on for written description support, and
`
`does not excuse the CMTA’s failure to cite to the sole example (a USR) on which
`
`PO now relies.
`
`To argue that the USR’s handling of a code received from a user’s device
`
`satisfies the claimed mapping to a “credit and/or debit card number” by the
`
`“networked validation-information entity,” PO must cite to page 23 lines 20-32 of
`
`the ’660 application, which the CMTA indisputably did not do. Because PO does
`
`not suggest that other disclosure in the ’660 application (Ex-2006) cited by the
`
`CMTA supports this functionality in the USR, the CMTA cannot be read to
`
`support a theory that the disclosed USR supports the claimed “networked
`
`validation-information entity.” Therefore, the CMTA failed to show “the second
`
`device being the networked validation-information entity” as recited in substitute
`
`
`
`2
`
`
`
`IPR2018-00809
`US Pat. No. 9,530,137
`
`limitations 13[e] and 21[f].
`
`Tellingly, PO’s Opposition to the Motion to Strike relies on additional
`
`disclosure not cited in the CMTA. In particular, PO’s new argument that Figures
`
`7, 21, and 23 provide support for the substitute limitations is contingent upon still
`
`further “corresponding text” from the specification that was not cited in the
`
`CMTA. See, e.g., PO’s Opposition at 2-4 (citing the ’660 Application at 41:16-
`
`42:23 and 43:19-44:2, which were not cited in the CMTA’s support for the
`
`substitute limitations, and Figure 7, which the CMTA did not cite as support for
`
`limitations 13[e] and 21[f]). The cited figures alone do not support PO’s
`
`(incorrect) theory that the USR performs both the claimed mapping and the
`
`claimed enablement of a financial transaction—a fact that PO recognizes by
`
`presenting no such argument in its Opposition to the Motion to Strike or its Reply
`
`to the CMTA Opposition. Accordingly, PO fails to show the CMTA supports its
`
`new theories for written description support.
`
`II. THE CMTA’S ALLEGED SUPPORT FOR THE PREAMBLES OF
`CLAIMS 13 AND 21 DOES NOT SUPPORT PO’S NEW THEORY FOR
`WRITTEN DESCRIPTION SUPPORT FOR THE SUBSTITUTE
`LIMITATIONS
`
`PO’s argument that its new theory for written description support for the
`
`substitute limitations is grounded in the CMTA’s alleged written description
`
`support for the preambles mischaracterizes the CMTA. The CMTA set forth its
`
`written description arguments on a limitation-by-limitation, rather than claim-by-
`3
`
`
`
`
`
`IPR2018-00809
`US Pat. No. 9,530,137
`claim basis. PO never suggested that its cited support for individual limitations
`
`was somehow relevant to all substitute limitations, and the CMTA gives no reason
`
`to make an inference now. PO cannot now rewrite its CMTA by arguing the
`
`CMTA was more specific than it had to be. See PO’s Opposition at 5-7. That
`
`“Petitioner has cited no case law … requiring written description support cited in a
`
`CMTA to be expressly incorporated into every limitation” (PO’s Opposition at 6)
`
`does not mean the PO should not be held to what the CMTA actually says.
`
`Nowhere does the CMTA suggest, much less actually say, that the passage on page
`
`23, lines 20-32 of the ’660 application is relevant to the substitute limitations.
`
`Furthermore, even if PO’s cite support for the preambles of substitute claims
`
`13 and 21 is also deemed support for the substitute limitations, which it is not,
`
`PO’s argument still fails. These preambles say nothing about the claimed “second
`
`device” or “networked information-validation entity,” much less that the two are
`
`the same entity that performs both the claimed mapping and the claimed
`
`enablement of a credit and/or debit card transaction. These citations provide no
`
`basis for PO to argue that the CMTA included PO’s new theory that the claimed
`
`“networked information-validation entity” is the USR of the embodiment of Figure
`
`7. PO’s suggestion that a reader would understand PO’s citation to page 23 lines
`
`20-32 for the preambles of claims 13 and 21 to mean that the claimed “networked
`
`information-validation entity” finds written description support in the USR of
`
`
`
`4
`
`
`
`IPR2018-00809
`US Pat. No. 9,530,137
`
`Figure 7 is a bridge too far.
`
`III. PO’S NEW THEORY OF WRITTEN DESCRIPTION SUPPORT IS
`NOT A PERMISSIBLE RESPONSE
`
`PO’s new written description theory is not an appropriate response to
`
`Petitioner’s Opposition to the CMTA. Petitioner showed in the Opposition to the
`
`CMTA that the CMTA did not cite to any evidence in the ’660 application of “a
`
`single element performing the claimed functions of both the ‘networked validation-
`
`informationw entity’ and the ‘second device.’” CMTA Opposition at 23-24. This
`
`is because the only mapping in the ’660 application (Ex-2006) identified by the
`
`CMTA is performed by a credit card company—not a USR. Id. In response, PO
`
`cited to new portions of the ’660 application in support of a new theory that the
`
`USR supports the claimed “networked validation-information entity” and the
`
`“second device.” See, supra, Section I; see also Petitioner’s Motion to Strike at 1-
`
`5. PO’s belatedly presented evidence and newly raised issues do not respond to the
`
`issues raised in Petitioner’s Opposition to the CMTA and are therefore
`
`impermissible in a Reply. PTAB Trial Practice Guide August 2018 Update, 17; 37
`
`C.F.R. § 42.23(b).
`
`IV. CONCLUSION
`
`The Board should strike the highlighted portions of Paper 31 and Exhibit
`
`2021 shown in Exhibits 1136 and 1137.
`
`
`
`
`
`5
`
`
`
`IPR2018-00809
`US Pat. No. 9,530,137
`
`Respectfully Submitted,
`
`By: /Monica Grewal/
`Monica Grewal
`Registration No. 40,056
`
`
`
`6
`
`
`
`June 21, 2019
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`IPR2018-00809
`US Pat. No. 9,530,137
`
`I hereby certify that on June 21, 2019, I caused a true and correct copy of
`
`Petitioner’s Reply In Support of its Motion to Strike to be served via electronic
`
`mail on the following correspondents of record as listed in Patent Owners’
`
`Mandatory Notices and in Paper 7 in IPR2019-00174 (Decision for Granting
`
`Motion for Joinder):
`
`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
`
`
`Date: June 21, 2019
`
`
`
`
`
`Respectfully Submitted,
`
`/Monica Grewal/
`Monica Grewal
`Registration No. 40,056
`
`7
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
