Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 7
`Entered: May 16, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VISA INC. and VISA U.S.A. INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY, LLC,
`Patent Owner.
`____________
`
`Case IPR2019-00174
`Patent 9,530,137 B2
`____________
`
`
`Before PATRICK R. SCANLON, GEORGIANNA W. BRADEN, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MELVIN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Motion for Joinder
`35 U.S.C § 314; 35 U.S.C § 315(c); 37 C.F.R. § 42.122(b)
`
`
`
`
`
`571-272-7822
`
`
`Paper No. 7
`Entered: May 16, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VISA INC. and VISA U.S.A. INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY, LLC,
`Patent Owner.
`____________
`
`Case IPR2019-00174
`Patent 9,530,137 B2
`____________
`
`
`Before PATRICK R. SCANLON, GEORGIANNA W. BRADEN, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MELVIN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Motion for Joinder
`35 U.S.C § 314; 35 U.S.C § 315(c); 37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`Case IPR2019-00174
`Patent 9,530,137 B2
`
`
`I.
`
`INTRODUCTION
`
`Petitioner, Visa Inc. and Visa U.S.A. Inc., filed a Petition (Paper 2,
`
`“Pet.”) requesting inter partes review of claims 1, 2, 5–7, 9, and 12 of U.S.
`
`Patent No. 9,530,137 B2 (Ex. 1101, “the ’137 patent”). Patent Owner,
`
`Universal Secure Registry, LLC, did not file a Preliminary Response.
`
`Petitioner also filed a Motion for Joinder to join as a petitioner in
`
`IPR2018-00809. Paper 3 (“Mot.”). Petitioner filed the Petition and Motion
`
`for Joinder on November 2, 2018, within one month after we instituted trial
`
`in IPR2018-00809.
`
`As explained further below, we determine institution is warranted on
`
`the same grounds as instituted in IPR2018-00809 and grant Petitioner’s
`
`Motion for Joinder.
`
`A. RELATED MATTERS
`
`As required by 37 C.F.R. § 42.8(b)(2), Petitioner identifies various
`
`judicial or administrative matters that would affect or be affected by a
`
`decision in this proceeding. Pet. 3–4.
`
`B.
`
`IPR2018-00809
`
`In IPR2018-00809, Apple, Inc., challenged claims 1, 2, and 5–12 of
`
`the ’137 patent. Patent Owner disclaimed claims 8, 10, and 11, and, after
`
`considering the Petition and Patent Owner’s Preliminary Response, we
`
`instituted review of the non-disclaimed claims challenged in that case.
`
`Apple, Inc. v. Universal Secure Registry LLC, Case IPR2018-00809 (PTAB
`
`Oct. 9, 2018) (Paper 9, “Apple Inst.”). Thus, the instituted review in
`
`IPR2018-00809 involves the following grounds of unpatentability:
`
`2
`
`
`
`Case IPR2019-00174
`Patent 9,530,137 B2
`
`
`Basis
`
`Reference(s)
`
`Claim(s)
`
`§ 103(a) Jakobsson1 and Maritzen2
`
`1, 2, 6, 7, 9, and 12
`
`§ 103(a) Jakobsson, Maritzen, and Niwa3
`
`5
`
`Apple Inst. 5–7. Apple also relied on the Declaration of Dr. Victor Shoup
`
`(IPR2018-00809, Ex. 1102). See id. 5.
`
`II. DISCUSSION
`
`Petitioner’s Motion for Joinder states “the Petition is limited to the
`
`same grounds proposed in the IPR2018-00809 petition,” “relies on the same
`
`prior art analysis and identical expert testimony to that submitted by Apple.”
`
`Mot. 4; accord id. (“Indeed, the Petition is nearly identical with respect to
`
`the grounds raised in the IPR2018-00809 petition, and does not include any
`
`grounds not raised in that petition.”). Thus, for the same reasons stated in
`
`our Decision on Institution in IPR2018-00809, we determine institution is
`
`warranted here. See generally Apple Inst.
`
`Having determined that institution is warranted, we consider
`
`Petitioner’s Motion for Joinder. Section 315(c) provides, in relevant part,
`
`that “[i]f the Director institutes an inter partes review, the Director, in his or
`
`her discretion, may join as a party to that inter partes review any person who
`
`properly files a petition under section 311.” When determining whether to
`
`grant a motion for joinder we consider factors such as timing and impact of
`
`joinder on the trial schedule, cost, discovery, and potential simplification of
`
`
`1 International Patent Application Publication No. WO 2004/051585,
`published June 17, 2004 (Ex. 1113).
`2 U.S. Patent Application Publication No. 2004/0236632, published
`November 25, 2004 (Ex. 1114).
`3 U.S. Patent No. 6,453,301, issued September 17, 2002 (Ex. 1117).
`
`3
`
`
`
`Case IPR2019-00174
`Patent 9,530,137 B2
`
`briefing. See Kyocera Corp. v. SoftView, LLC, Case IPR2013-00004, slip op.
`
`at 4 (PTAB Apr. 24, 2013) (Paper 15).
`
`Under the circumstances of this case, we determine that joinder is
`
`appropriate. Because the present Petition does not include any issues beyond
`
`those in the already instituted case, it will have minimal impact on the
`
`existing case. Petitioner agrees it “will not submit any separate filings unless
`
`it disagrees with Apple’s position, and in the event of such disagreement, it
`
`will request authorization from the Board to submit a short separate filing
`
`directed only to points of disagreement with Apple.” Mot. 6. Because
`
`Petitioner relies on the declaration as does Apple, no additional depositions
`
`will be required. See Mot. 6–7.
`
`Under these circumstances, we agree with Petitioner that joinder is
`
`appropriate and will not unduly impact the ongoing trial in IPR2018-00809.
`
`We limit Petitioner Visa’s participation in the joined proceeding, such that
`
`(1) Apple alone is responsible for all petitioner filings in the joined
`
`proceeding until such time that it is no longer an entity in the joined
`
`proceeding, and (2) Visa is bound by all filings by Apple in the joined
`
`proceeding, except for (a) filings regarding termination or settlement and (b)
`
`filings where Visa receives permission to file an independent paper. Visa
`
`must obtain prior Board authorization to file any paper or to take any action
`
`on its own in the joined proceeding, so long as Apple remains as a non-
`
`terminated petitioner in the joined proceeding. This arrangement promotes
`
`the just and efficient administration of the ongoing trial in Case IPR2018-
`
`00809 and protects the interests of Apple as original petitioner in Case
`
`IPR2018-00809, and of Patent Owner.
`
`4
`
`
`
`Case IPR2019-00174
`Patent 9,530,137 B2
`
`
`For the foregoing reasons, and with the limitations discussed above,
`
`Petitioner’s Motion for Joinder is granted.
`
`Accordingly, it is:
`
`III. ORDER
`
`ORDERED that inter partes review of claims 1, 2, 5–7, 9, and 12 of
`
`the ’137 patent is warranted on the following grounds:
`
`A. claims 1, 2, 6, 7, 9, and 12 as unpatentable under 35 U.S.C. § 103
`
`as obvious over Jakobsson and Maritzen;
`
`B. claim 5 as unpatentable under 35 U.S.C. § 103 as obvious over
`
`Jakobsson, Maritzen, and Niwa;
`
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`
`IPR2018-00809 is granted, and Visa Inc. and Visa U.S.A. Inc. are joined as
`
`petitioners in that case pursuant to 37 C.F.R. § 42.122, based on the
`
`conditions discussed above;
`
`FURTHER ORDERED that the Petition is dismissed, pursuant to
`
`37 C.F.R. § 42.71(a);
`
`FURTHER ORDERED that the Scheduling Order in place for
`
`IPR2018-00809 (Paper 10) shall govern the joined proceeding;
`
`FURTHER ORDERED that all future filings in the joined proceeding
`
`shall be made only in IPR2018-00809;
`
`FURTHER ORDERED that the case caption in IPR2018-00809 for all
`
`further submissions shall be changed to add Visa Inc. and Visa U.S.A. Inc.
`
`as named Petitioner after Apple and to indicate by footnote the joinder of
`
`IPR2019-00174 to that proceeding, as indicated in the attached sample case
`
`caption; and
`
`5
`
`
`
`Case IPR2019-00174
`Patent 9,530,137 B2
`
`
`FURTHER ORDERED that a copy of this Decision shall be entered
`
`into the record of IPR2018-00809.
`
`
`
`
`
`6
`
`
`
`Case IPR2019-00174
`Patent 9,530,137 B2
`
`PETITIONER Visa:
`
`Matthew A. Argenti
`Michael T. Rosato
`WILSON SONSINI GOODRICH & ROSATI
`margenti@wsgr.com
`mrosato@wsgr.com
`
`
`PATENT OWNER:
`
`James M. Glass
`Tigran Guledjian
`Christopher 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
`qe-usr-ipr@quinnemanuel.com
`
`
`PETITIONER in IPR2018-00809, Apple:
`
`Monica Grewal
`Benjamin Fernandez
`WILMER CUTLER PICKERING HALE AND DORR LLP
`monica.grewal@wilmerhale.com
`ben.fernandez@wilmerhale.com
`
`
`
`7
`
`
`
`Case IPR2019-00174
`Patent 9,530,137 B2
`
`
`Sample Case Caption
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`VISA INC., and VISA U.S.A. INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-008094
`Patent 9,530,137 B2
`____________
`
`
`
`4 Visa Inc. and Visa U.S.A. Inc., which filed a petition in IPR2019-00174,
`have been joined as a party to this proceeding
`
`8
`
`
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