Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-145
`
`10914895
`
`[PUBLIC VERSION]
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`MITEK SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`UNITED SERVICES AUTOMOBILE ASSOCIATION (“USAA”),
`Patent Owner.
`
`___________________
`
`Case No. IPR2020-01742
`Patent No. 10,013,605
`___________________
`
`PATENT OWNER’S SUR-REPLY IN SUPPORT OF PRELIMINARY
`RESPONSE TO PETITION FOR INTER PARTES REVIEW
`
`
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-145
`
`10914895
`
`[PUBLIC VERSION]
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`MITEK SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`UNITED SERVICES AUTOMOBILE ASSOCIATION (“USAA”),
`Patent Owner.
`
`___________________
`
`Case No. IPR2020-01742
`Patent No. 10,013,605
`___________________
`
`PATENT OWNER’S SUR-REPLY IN SUPPORT OF PRELIMINARY
`RESPONSE TO PETITION FOR INTER PARTES REVIEW
`
`
`
`Case No. IPR2020-01742
`Patent No. 10,013,605
`
`I. WELLS FARGO IS AN UNNAMED REAL PARTY-IN-INTEREST
`Mitek admits that “Patent Owner has never asserted the challenged patent
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`against Mitek (or even threatened Mitek) based on this patent.” Reply at 5. This
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`admission, coupled with Mitek’s entry into an agreement to assist Wells Fargo
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`(“WF”) in the defense of the lawsuit involving this patent, confirms that Mitek filed
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`this petition to assist WF, one “its largest customers.” Ex. 2002, ¶ 9.
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`Mitek’s argument that it was not involved in the USAA-WF trial on the ’605
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`patent simply ignores the relevant, undisputed facts:
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`
`
`
`
`
`
` Indeed, WF’s witness list for trial included
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`Grigori Nepomniachtchi, chief scientist at Mitek who was deposed extensively on
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`prior art and prepared by WF counsel for his deposition. Id.; Ex. 2008.
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`The rest of Mitek’s Reply is filled with non-sequiturs: a lawsuit against PNC
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`and a settlement agreement between WF and USAA. Mitek cites no authority for
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`the proposition that a subsequent settlement agreement eliminates RPI status that
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`existed at the time of filing the IPR petition. Nor does Mitek contend that the
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`settlement agreement eliminated all potential future liability on the part of WF.
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`USAA’s lawsuit against PNC also does not aid Mitek’s argument. The
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`lawsuit against PNC does not even involve the ’605 patent. Further, whether or not
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`Case No. IPR2020-01742
`Patent No. 10,013,605
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`Mitek is interested in assisting “customers besides WF” does not change WF’s status
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`as an RPI. Reply at 2. This is exactly the same as the Ventex decision. There, the
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`petitioner filed its petition in part because it believed multiple other “customers”
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`were in “jeopardy.” Id. at 8. Mitek’s position appears to be that, if unnamed others
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`might also benefit from its petition, WF cannot be an RPI. That is not the law.
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`Mitek next argues that it did not receive “support” from WF in filing its
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`petition. Reply at 1. Even if true, this would not undermine WF’s status as an RPI.
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`AIT, 897 F.3d 1336, 1351, 1354 (Fed. Cir. 2018) (focusing on funding is an
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`“impermissibly shallow” approach; “a nonparty to an IPR can be [an RPI] even
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`without entering into an express or implied agreement with the petitioner to file an
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`IPR petition.”). Moreover, the self-serving and conclusory declaration from Mitek’s
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`in-house counsel has no proper place in this proceeding. First, the declaration is
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`“uncorroborated testimony evidence” and therefore inadmissible. Radware, Inc. v.
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`F5 Networks, Inc., IPR2017-01185, Paper No. 9 at 17-19 (PTAB Oct. 11, 2017).
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`Second, Mitek vigorously resisted providing a privilege log of its communications
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`with WF, and the Board previously declined to require Mitek to provide a log. Paper
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`13, IPR2020-00882. If there were no communications between the parties, there
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`would have been no need to resist a log. Third, Mitek’s senior software developer
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`and its chief scientist assisted WF in the case involving the ’605 patent as discussed
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`Case No. IPR2020-01742
`Patent No. 10,013,605
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`above. Fourth, art relied in in this IPR (in particular Singfield, Peterson, and Byrne)
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`has its source in WF’s invalidity contentions, a fact Mitek does not dispute.
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`Finally, Mitek’s citation to NOF Corp. v. Nektar Therapeutics, IPR2019-
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`01394, Paper No. 22 (PTAB Feb. 5, 2020) only further confirms that WF is an RPI.
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`There, “neither Petitioner nor Bayer was time barred under 35 U.S.C. § 315(b) when
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`the Petition was filed. This is an important factor, as there was no need for Petitioner
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`to file the Petition at the behest of Bayer.” Id. at 11. Here, WF is time-barred from
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`bringing this challenge itself.
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`II. THE BOARD SHOULD EXERCISE ITS DISCRETION UNDER 35
`U.S.C. § 314(A) TO DECLINE TO INSTITUTE TRIAL
`Mitek has failed to show that institution of this IPR would be equitable. To
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`the contrary, the facts of this case closely track Valve, and all General Plastic factors
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`strongly weigh in favor of denying institution.1
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`Factor One. Mitek’s assertion that no party has filed an IPR petition on this
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`patent is irrelevant. WF filed a prior CBM petition, and Mitek refuses to address the
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`authority cited in the POPR that a CBM proceeding is considered a prior petition for
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`the purpose of the General Plastic analysis. Paper 11 at 8, n. 4.
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`1 Mitek does not contend that the subsequent PNC lawsuit or WF settlement have
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`any bearing on the discretionary denial analysis, and they do not.
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`Case No. IPR2020-01742
`Patent No. 10,013,605
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`Mitek next argues that there is no overlap in the prior art cited in the petitions.
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`This too is irrelevant to the first General Plastic factor. Under Mitek’s logic, serial
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`petitions featuring new references could be lodged against a patent. That is not the
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`law. Further, as explained in the POPR, Mitek’s petition brings the same arguments
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`as WF’s petition, but with different placeholder art. Mitek does not dispute this.
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`Mitek responds only that WF argued in Ground 1 that the ’605 patent was not entitled
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`to its priority date. But this ignores that the Board analyzed and held that “Petitioner
`
`has not demonstrated sufficiently that the claimed subject matter, as a whole, does
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`not recite a technological feature that is novel and unobvious over the prior art,”
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`based on the same arguments (with just different place holder art) Mitek makes in
`
`its IPR here. Ex. 1003 at 19.
`
`Mitek next asserts that it was “not involved with” WF’s prior petition. Lack
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`of coordination “does not contradict the existence of a significant and meaningful
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`relationship between the parties.” PayPal, Inc. v. Ioengine, LLC, IPR2019-00885,
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`Paper 21 at 11 (PTAB Oct. 3, 2019) (denying institution). In Valve, there was no
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`evidence the petitioner coordinated with respect to the prior petition.
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`Mitek acknowledges that the Board recently denied institution on three2 of
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`Mitek’s other follow-on IPRs. Mitek boldly claims that the Board got the law wrong
`
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`2 The Board has denied four. See IPR2020-01101, Paper 29 (Jan. 26, 2021).
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`Case No. IPR2020-01742
`Patent No. 10,013,605
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`in each of those decisions and, in so doing, “expanded” the holding in Valve. Not
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`so. In denying institution in Valve, the Board held that a significant relationship with
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`respect to the assertion of the challenged patent exists where (1) there is overlap in
`
`the challenged claims and (2) there is a significant relationship between the two
`
`petitioners. Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, Paper 11
`
`(PTAB Apr. 2, 2019) (“The complete overlap in the challenged claims and the
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`significant relationship between Valve and HTC favor denying institution.”). That
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`is exactly the facts presented here.
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`(1) Mitek is challenging same claims that were challenged by WF’s petition.
`
`(2) As the Board has now repeatedly found, there is a significant relationship
`
`between Mitek and WF. IPR2020-00882; IPR2020-00975; IPR2020-00976;
`
`IPR2020-01101.
`
`
`
`
`
`
`
`
`
`
`
`
`
` and the undisputed evidence that Mitek
`
`did support WF in its litigation, POPR at 12-15, including by making a senior
`
`software designer and its chief scientist available for preparation by WF’s attorneys
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`Patent No. 10,013,605
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`and to aid WF’s expert in presentation of trial opinions. This confirms what
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`“actually happened” between Mitek and WF and their extensive, meaningful, and
`
`pre-existing relationship.
`
`Factor Two. Mitek’s only argument, that it did not begin its prior art search
`
`until April 2020, is irrelevant under Valve. In Valve, the Board noted that Valve’s
`
`“ability to quickly locate” the references after it began preparing its petitions favored
`
`denying institution. Valve, at 11. Mitek admits that it quickly located the references.
`
`Ex. 1043 at ¶ 5. Because the references could have been found with reasonable
`
`diligence, this factor favors denying institution.
`
`Factor Three. Mitek argues that there is no unfair advantage here because
`
`WF’s petition focused on CBM-eligibility. Reply at 6. Factor three is intended to
`
`prevent successive petitioners from “strategically stag[ing] their prior art and
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`arguments in multiple petitions, using our decisions as a roadmap[.]” General
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`Plastic, at 17. Use of different references in a delayed, follow-on petition is precisely
`
`the behavior that General Plastic protects against.
`
`Factors Four and Five. These factors address the length of time that elapsed
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`“between the time the petitioner learned of the prior art” and filing the second
`
`petition. Mitek does not even attempt to address this inquiry or identify when it first
`
`learned of the references in its Petition. Mitek instead only states
`
`
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` Ex. 1047 at 2-3, and that “[t]here
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`Patent No. 10,013,605
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`is nothing unreasonable about the time it took Mitek to conduct its prior art search
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`and file its petitions.” Reply at 7. But the uncontroverted evidence shows that (1)
`
`Mitek relied on three of its references in its petition against the ’090 Patent, filed
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`five months prior to this Petition; (2) three other references were included in WF’s
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`invalidity contentions in the district court litigation,
`
`
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`; and (3) the last reference (Davis) is a cited
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`reference on the ’605 patent. POPR at 23-25.
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`Mitek’s claim that it “had no reason to search for prior art” until April 2020
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`strains credulity. Reply at 7. A year and a half earlier,
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`
`
`. In May 2019, Mitek
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`publicly addressed the WF litigation, stating that “given the potential impact such
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`litigation could have on the use of our products by Wells Fargo, […] we are closely
`
`monitoring these lawsuits.” Ex. 2010 at 38. Further, Mitek was an active participant
`
`in the WF litigation. POPR at 12-15. Thus, these factors also favor denial.
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`Factors Six and Seven. Mitek asserts that this is Mitek’s first petition against
`
`the ’605 patent. But WF, who has a significant relationship with Mitek, indisputably
`
`filed a prior petition on the same claims of the same patent, which implicates
`
`precisely the efficiency concerns underpinning General Plastic. Valve at 15.
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`
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`Dated: February 24, 2021
`
`Respectfully submitted,
`
`Case No. IPR2020-01742
`Patent No. 10,013,605
`
`Anthony Q. Rowles
`Anthony Q. Rowles (Reg. No. 68,673)
`Michael R. Fleming (Reg. No. 67,933)
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067
`Tel: (310) 277-1010
`Fax: (310) 203-7199
`Email: TRowles@irell.com
`Email: MFleming@irell.com
`
`- 8 -
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`Case No. IPR2020-01742
`Patent No. 10,013,605
`
`CERTIFICATE OF SERVICE
`
`I hereby certify, pursuant to 37 C.F.R. section 42.6, that on February 24, 2021,
`
`a complete copy of the foregoing document PATENT OWNER’S SUR-REPLY
`
`IN SUPPORT OF PRELIMINARY RESPONSE TO PETITION FOR INTER
`
`PARTES REVIEW was served by electronic mail, as agreed to by the parties, upon
`
`the following:
`
`QUINN EMANUEL URQUHART & SULLIVAN
`
`Brian Mack, Reg. No. 57,189
`brianmack@quinnemanuel.com
`
`Jonathan Tse, Reg. No. 70,738
`jonathantse@quinnemanuel.com
`
`Claude M. Stern
`claudestern@quinnemanuel.com
`
`David Eiseman
`davideiseman@quinnemanuel.com
`
`QE-Mitek-USAA@quinnemanuel.com
`
`/Susan M. Langworthy/
` Susan M. Langworthy
`
`
`
`Case IPR2020-01742
`Patent No. 10,013,605
`
`
`
`CERTIFICATE OF SERVICE
`I hereby certify, pursuant to 37 C.F.R. section 42.6, that on March 15,
`
`2021, a complete copy of the public version of PATENT OWNER’S SUR-
`
`REPLY, originally filed on February 24, 2021, was served by electronic mail,
`
`as agreed to by the parties, upon the following:
`
`QUINN EMANUEL URQUHART & SULLIVAN
`
`Brian Mack, Reg. No. 57,189
`brianmack@quinnemanuel.com
`
`Jonathan Tse, Reg. No. 70,738
`jonathantse@quinnemanuel.com
`
`Claude M. Stern
`claudestern@quinnemanuel.com
`
`David Eiseman
`davideiseman@quinnemauel.com
`
`
`QE-Mitek-USAA@quinnemanuel.com
`
`
`/Susan M. Langworthy/
`
`
`
`
`
`
`
` Susan M. Langworthy
`
`
`
`
`
`
`
`
`
`
`
`
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