Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 8
`Entered: September 5, 2019
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY LLC,
`Patent Owner.
`_______________
`
`Case IPR2019-00727
`Patent 8,856,539 B2
`_______________
`
`Before PATRICK R. SCANLON, GEORGIANNA W. BRADEN, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`BRADEN, 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. 8
`Entered: September 5, 2019
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY LLC,
`Patent Owner.
`_______________
`
`Case IPR2019-00727
`Patent 8,856,539 B2
`_______________
`
`Before PATRICK R. SCANLON, GEORGIANNA W. BRADEN, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`BRADEN, 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)
`
`
`
`
`
`
`
`
`IPR2019-00727
`Patent 8,856,539 B2
`
`
`INTRODUCTION
`I.
`Petitioner, Apple Inc., filed a Petition (Paper 3, “Pet.”) requesting
`inter partes review of claims 1–9, 16–31, 37, and 38 of U.S. Patent No.
`8,856,539 B2 (Ex. 1001, “the ’539 patent”). Universal Secure Registry
`LLC, did not file a Preliminary Response.
`Petitioner also filed a Motion for Joinder to join as a petitioner in
`IPR2018-01350. Paper 4 (“Mot.”). Petitioner filed the Petition and Motion
`for Joinder on March 11, 2019, within one month after we instituted trial in
`IPR2018-01350.
`As explained further below, we determine institution is warranted on
`the same claims and the ground as instituted in IPR2018-01350 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. 13–14.
`
`IPR2018-01350
`B.
`In IPR2018-01350, Petitioner Visa, Inc., challenged claims 1–9, 16–
`31, 37, and 38 of the ’539 patent and Patent Owner, Universal Secure
`Registry, LLC, disclaimed claims 5–8, 17–20, and 26–30. After considering
`the Petition and Patent Owner’s Preliminary Response and Disclaimer, we
`instituted review of claims 1–4, 9, 16, 21–25, 31, 37, and 38 in that case.
`Visa, Inc. and Visa U.S.A., Inc. v. Universal Secure Registry LLC,
`Case IPR2018-01350 (PTAB Feb. 11, 2019) (Paper 7, “Visa Inst.”). The
`instituted review in IPR2018-01350 involved a challenged to patentability
`
`2
`
`
`
`IPR2019-00727
`Patent 8,856,539 B2
`
`under 35 U.S.C. § 103 as obvious over a combination of Brener,1 Weiss,2
`and Desai.3 Visa Inst. 5. Visa also relied on the Declaration of Douglas
`Tygar, Ph.D. (“Dr. Tygar”) (IPR2018-01350, Ex. 1002). See id.
`
`II. DISCUSSION
`
`Petitioner’s Motion for Joinder states “the Petition presents only the
`grounds raised in the Visa IPR, and is based on the same prior art analysis
`and expert testimony submitted by Visa.” Mot. 6; accord id. at 1 (“The
`Petition is also narrowly tailored to raise only the grounds of unpatentability
`that are the subject of the Visa IPR, and is essentially a copy of the Visa IPR
`petition, including the same analysis of the same prior art and same expert
`testimony.”). Thus, for the same reasons stated in our Decision on
`Institution in IPR2018-01350, we determine institution is warranted here.
`See generally Visa Inst.
`Having determined that institution is warranted, we consider the
`merits of Petitioner’s Motion for Joinder. Section 315(c) provides, in
`relevant part, that “[i]f more than 1 petition for a post-grant review under
`this chapter is properly filed against the same patent and the Director
`determines that more than 1 of these petitions warrants the institution of a
`post-grant review under section 324, the Director may consolidate such
`reviews into a single post-grant review.” 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 PCT Pub. App. WO 00/14648 (pub. Mar. 16, 2000) (Ex. 1005).
`2 U.S. Pat. No. 4,885,778 (iss. Dec. 5, 1989) (Ex. 1006).
`3 U.S. Pat. No. 6,820,204 B1 (iss. Nov. 16, 2004) (Ex. 1007).
`
`3
`
`
`
`IPR2019-00727
`Patent 8,856,539 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 has agreed to not materially participate in the
`joined proceedings unless and until the parties to the Visa IPR are dismissed
`from the joined proceedings or elect to transfer control to Petitioner, as may
`occur in the event of settlement or advanced settlement negotiations.”
`Mot. 7–8. According to Petitioner Apple Inc., if “either of the foregoing
`events occur[s], Petitioner intends to ‘step into the shoes’ of Visa and
`continue to prosecute the joined proceedings.” Id. at 8. Because Petitioner
`relies on the same declaration as does Visa, no additional depositions will be
`required. See id. at 6.
`Under these circumstances, we agree with Petitioner that joinder is
`appropriate and will not unduly impact the ongoing trial in IPR2018-01350.
`We limit Petitioner Apple Inc.’s participation in the joined proceeding, such
`that (1) Visa 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) Apple Inc. is bound by all filings by Visa in the joined
`proceeding, except for (a) filings regarding termination or settlement and (b)
`filings where Apple Inc. receives permission to file an independent paper.
`Apple Inc. must obtain prior Board authorization to file any paper or to take
`any action on its own in the joined proceeding, so long as Visa remains as a
`non-terminated petitioner in the joined proceeding. This arrangement
`promotes the just and efficient administration of the ongoing trial in Case
`
`4
`
`
`
`IPR2019-00727
`Patent 8,856,539 B2
`
`IPR2018-01350 and protects the interests of Visa as original petitioner in
`Case IPR2018-01350, and of Patent Owner.
`For the foregoing reasons, and with the limitations discussed above,
`Petitioner’s Motion for Joinder is granted.
`
`III. ORDER
`
`Accordingly, it is:
`ORDERED that a inter partes review is hereby warranted as to claims
`1–4, 9, 16, 21–25, 31, 37, and 38 of the ’539 patent under 35 U.S.C. § 103 as
`unpatentable over a combination of Brener, Weiss, and Desai;
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2018-01350 is granted, and Apple Inc. is joined as a petitioner 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
`IPR2018-01350 (Paper 8) shall govern the joined proceeding;
`FURTHER ORDERED that all future filings in the joined proceeding
`shall be made only in IPR2018-01350;
`FURTHER ORDERED that the case caption in IPR2018-01350 for all
`further submissions shall be changed to add Apple Inc. Inc. as a named
`Petitioner after Visa and to indicate by footnote the joinder of IPR2018-
`01350 to that proceeding, as indicated in the attached sample case caption;
`and
`
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2018-01350.
`
`5
`
`
`
`IPR2019-00727
`Patent 8,856,539 B2
`
`FOR PETITIONER:
`
`Monica Grewal
`Benjamin Fernandez
`Kelvin Chan
`WILMER CUTLER PICKERING HALE AND DORR LLP
`monica.grewal@wilmerhale.com
`ben.fernandez@wilmerhale.com
`kelvin.chan@wilmerhale.com
`
`
`FOR PATENT OWNER:
`
`LANDO & ANASTASI, LLP
`One Main Street, Suite 1100
`Cambridge, MA 02142
`
`
`
`
`
`6
`
`
`
`IPR2019-00727
`Patent 8,856,539 B2
`
`
`Sample Case Caption
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VISA INC., VISA U.S.A. INC., and
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY LLC,
`Patent Owner.
`____________
`
`Case IPR2018-013504
`Patent 9,769,539 B2
`____________
`
`
`
`
`
`4 Apple Inc., which filed a petition in IPR2019-00727, has been joined as a
`party to this proceeding
`
`7
`
`
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