Case CBM2014-00178
`Patent 6,105,013
`Attorney Docket No. 140828-002USCBM
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JP MORGAN CHASE & CO.
`AND JP MORGAN CHASE BANK, N.A.
`Petitioner
`
`v.
`
`MAXIM INTEGRATED PRODUCTS, INC.
`Patent Owner
`____________
`
`Case CBM2014-00178
`Patent 6,105,013
`____________
`
`PATENT OWNER MAXIM INTEGRATED PRODUCTS, INC.’S
`PRELIMINARY RESPONSE TO PETITION FOR COVERED BUSINESS
`METHOD PATENT REVIEW OF UNITED STATES PATENT NO.
`6,105,013 PURSUANT TO 35 U.S.C. § 321, 37 C.F.R. § 42.304
`
`
`
`
`
`

`

`Case CBM2014-00178
`Patent 6,105,013
`Attorney Docket No. 140828-002USCBM
`
`
`
`TABLE OF CONTENTS
`
`I.  
`II.  
`
`C.  
`
`INTRODUCTION ........................................................................................ 1  
`THIS RE-FILED PETITION SHOULD BE DENIED BECAUSE IT IS
`A RE-FILING OF A PETITION BARRED BY 35 U.S.C. § 325(A)(1). . 6  
`A.  
`The Board Held That § 325(a)(1) Bars Initiation. .................................................. 9  
`B.  
`The Board’s § 325(a)(1) Bar Determination Also Applies To The Re-Filed
`Petition. ................................................................................................................. 12  
`The Changed Participation Level Of Barred Petitioner Co-Constituent PNC Does
`Not Change Its Real Party-In-Interest Status. ....................................................... 14  
`1.  
`PNC Exerted Control Over The First And Re-Filed Petitions. ................ 15  
`2.  
`PNC Contributed To Both The First And Refiled Petitions. ..................... 16  
`3.  
`Exempting The Second Petition From § 325(a)(1) Would Open The Door
`To Easy Evasion Of The Statutory Bar. .................................................... 21  
`Even If The Bar Did Not Still Apply, The Board Should Exercise Its Discretion
`To Deny This Re-Filed Petition Under § 325(d). ................................................. 26  
`Even If Initiation Were Appropriate, Petitioner’s Bolstering Of This Re-Filed
`Petition With Waived Arguments Is Not Permitted. ............................................ 27  
`III.   REVIEW IS BARRED BECAUSE PETITIONER FAILED TO SHOW
`THE PATENT IS A “COVERED BUSINESS METHOD” PATENT. . 28  
`Petitioner Has Taken Advantage Of The Rejection Of The First Petition To
`A.  
`Unfairly Try To Bolster Its Standing Arguments. ................................................ 28  
`Petitioner Fails To Show That The Patent Is Not A “Patent[] For [A]
`Technological Invention[].” .................................................................................. 30  
`The Claimed Subject Matter Of The Patent As A Whole Recites Novel And
`1.  
`Unobvious Technological Features. ......................................................... 34  
`Counsel Has Told The Court, On Petitioner’s Behalf, That The
`a.  
`Patent Claimed “New” Hardware. ................................................ 34  
`
`D.  
`
`E.  
`
`B.  
`
`b.  
`
`Petitioner Ignores The Claims As A Whole. ................................ 37  
`
`
`
`i
`
`

`

`Case CBM2014-00178
`Patent 6,105,013
`Attorney Docket No. 140828-002USCBM
`
`
`
`c.  
`
`The Intrinsic Evidence Confirms That The Patent Claims Novel
`And Unobvious Features. .............................................................. 39  
`
`IV.  
`
`C.  
`
`2.  
`
`3.  
`
`The Claimed Subject Matter Solves A Technical Problem Using A
`Technical Solution. ................................................................................... 44  
`The Office’s Own Official Guidance Shows That The Patent Is For
`Technological Inventions. ......................................................................... 47  
`The Board Should Not Consider Petitioner’s Belated, Improperly Augmented
`Standing Arguments. ............................................................................................. 49  
`IF INSTITUTION OF REVIEW WERE NOT BARRED UNDER 35
`U.S.C. § 325 AND AIA § 18, THE PETITION WOULD STILL FAIL
`TO SATISFY THE 35 U.S.C. § 324 THRESHOLD ................................ 51  
`The Petition Fails To Show That Review Of Patent-Eligibility Under § 101
`A.  
`Should Be Granted. ............................................................................................... 52  
`1.  
`The Petition Makes No Showing Of Ineligible Subject Matter. ................ 53  
`a.  
`The Claims Are Not Drawn To Abstract Ideas. ............................ 54  
`
`b.  
`
`Even If The Claims Were Drawn To An Abstract Idea, The Claim
`Elements Transform The Nature Of The Claim Into A Patent-
`Eligible Application. ..................................................................... 58  
`
`2.  
`
`The Board Lacks Authority To Review The Patent-In-Suit Under Section
`101 In This Proceeding. ............................................................................ 61  
`Petitioner Fails To Set Forth A Prima Facie Case Of Obviousness. .................... 65  
`B.  
`V.   CONCLUSION ........................................................................................... 66  
`
`
`
`
`
`ii
`
`

`

`Case CBM2014-00178
`Patent 6,105,013
`Attorney Docket No. 140828-002USCBM
`
`
`
`TABLE OF AUTHORITIES
`
`
`
`COURT DECISIONS
`
`Page(s)
`
`Alice Corp. Pty. Ltd. v. CLS Bank International,
`573 U.S. ___, 134 S. Ct. 2347 (2014) ........................... 53, 54, 57, 58, 59, 60, 61
`
`Bilski v. Kappos,
`561 U.S. 593 (2010) .................................................................................... 54, 57
`
`Diamond v. Chakrabarty,
`447 U.S. 303 (1980) .......................................................................................... 54
`
`Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
`132 S. Ct. 1289 (2012) ........................................................................... 53, 55, 60
`
`MySpace, Inc. v. GraphOn Corp.,
`672 F.3d 1250 (Fed. Cir. 2012) ................................................................... 63, 64
`
`
`
`ADMINISTRATIVE DECISIONS
`
`Bloomberg Inc., et al. v. Markets-Alert PTY LTD.,
`Case No. CBM2013-00005 Paper No. 18 (P.T.A.B. Mar. 29, 2013) (per
`Medley, APJ) .............................................................................................. 42, 43
`
`Conopco, Inc. v. Procter & Gamble Co.,
`Case No. IPR2014-00507, Paper No. 17 (P.T.A.B. Jul, 7, 2014) (per Obermann,
`ALJ) ................................................................................................. 25, 26, 27, 50
`
`Customplay, LLC v. Clearplay, Inc.,
`Case No. IPR2014-00783, Paper No. 9 (P.T.A.B. Nov. 7, 2014) (per Grossman,
`ALJ) ....................................................................................................... 25, 26, 50
`
`
`
`
`
`iii
`
`

`

`Case CBM2014-00178
`Patent 6,105,013
`Attorney Docket No. 140828-002USCBM
`
`
`E*Trade Fin. Corp. v. Droplets, Inc.,
`Case No. CBM2014-00123, Paper No. 15 (P.T.A.B. Oct. 30, 2014) (per
`Gaudette, APJ) ................................................................................. 34, 38, 41, 43
`
`First Data Corp. v. Cardsoft, LLC,
`Case No. IPR2014-00715, Paper No. 9 (P.T.A.B. Oct. 17, 2014)
`(per curiam) ........................................................................................... 18, 19, 20
`
`Google Inc. v. Unwired Planet, LLC,
`Case No. CBM2014-00005, Paper No. 10 (P.T.A.B. Apr. 8, 2014) ................. 50
`
`Groupon, Inc. v. Blue Calypso, LLC,
`Case No. CBM2013-00033 Paper No. 10 (P.T.A.B. Dec. 19, 2013) (per Benoit,
`APJ) ................................................................................................................... 42
`
`Interthinx, Inc. v. Corelogic Solutions, LLC,
`Case No. CBM2012-00007 Paper No. 15 (P.T.A.B. Jan. 31, 2013) (per
`McNamara, APJ) ............................................................................................... 42
`
`Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co.,
`Case No. CBM2012-00003 Paper No. 15 (P.T.A.B. Feb. 12, 2013)
`(per Lee, APJ.) ................................................................................................... 41
`
`Medtronic, Inc. v. Nuvasive, Inc.,
`Case No. IPR2014-00487, Paper No. 8 (P.T.A.B. Sep. 11, 2014)
`(per Green, APJ) ................................................................................................ 50
`
`Motorola Mobility LLC v. Intellectual Ventures I LLC,
`Case No. CBM2014-00083, Paper No. 17 (P.T.A.B. Aug. 6, 2014) (per
`Kokoski, APJ) ........................................................................................ 31, 38, 42
`
`PNC Bank, N.A., JP Morgan Chase & Co. and JP Morgan Chase Bank, N.A. v.
`Maxim Integrated Prods., Inc., Case No. CBM2014-00038, Paper No. 19
`(P.T.A.B. Jun. 3, 2014) (per Weatherly, APJ) ............................................ passim
`
`
`
`
`
`iv
`
`

`

`Case CBM2014-00178
`Patent 6,105,013
`Attorney Docket No. 140828-002USCBM
`
`
`PNC Bank Nat’l Assoc. v. Secure Axcess, LLC,
`Case No. CBM2014-00100 Paper No. 10 (P.T.A.B. Sep. 9, 2014)
`(per Benoit, APJ) ................................................................................... 53, 56, 57
`
`Reloaded Games, Inc. v. Parallel Networks LLC,
`Case No. IPR2014-00950, Paper No. 12 (P.T.A.B. Oct. 22, 2014)
`(per Jung, APJ) ............................................................................................ 25, 28
`
`RPX Corp. v. Virnetx Inc.,
`Case No. IPR2014-00171, Paper No. 49 (P.T.A.B. Jun. 5, 2014)
`(per Easthom, J.) ................................................................................................ 24
`
`Salesforce.com, Inc. v. VirtualAgility, Inc.,
`Case No. CBM2013-00024 Paper No. 16 (P.T.A.B. Nov. 19, 2013) (per
`Braden, APJ) ...................................................................................................... 42
`
`
`
`STATUTES AND RULES
`
`Leahy-Smith America Invents Act,
`Pub. L. No. 112-29, 125 Stat. 284 (2011), § 18 .............................. 30, 31, 62, 64
`
`35 U.S.C. § 101 ....................................................................................... 5, 54, 61, 63
`
`35 U.S.C. § 102 ................................................................................................. 62, 63
`
`35 U.S.C. § 103 ................................................................................................. 62, 63
`
`35 U.S.C. § 112 ....................................................................................................... 62
`
`35 U.S.C. § 251 ....................................................................................................... 62
`
`35 U.S.C. § 282 ....................................................................................................... 62
`
`35 U.S.C. § 312 ..................................................................................................... 4, 9
`
`35 U.S.C. § 321 ....................................................................................................... 62
`
`
`
`v
`
`

`

`Case CBM2014-00178
`Patent 6,105,013
`Attorney Docket No. 140828-002USCBM
`
`
`35 U.S.C. § 323 ................................................................................................... 1, 52
`
`35 U.S.C. § 324 ................................................................................................. 51, 53
`
`35 U.S.C. § 325 ................................................................................................ passim
`
`35 U.S.C. § 326 ....................................................................................................... 53
`
`
`
`REGULATIONS
`
`Changes to Implement Inter Partes Review Proceedings, Post-Grant Review
`Proceedings, and Transitional Program for Covered Business Method Patents;
`Final Rule, 77 Fed. Reg. 48,680 (Aug. 14, 2012) (codified at C.F.R. tit. 37, ch.
`1) ....................................................................................................................... 31, 52
`
`Transitional Program for Covered Business Method Patents—Definitions of
`Covered Business Method Patent and Technological Invention; Final Rule, 77 Fed.
`Reg. 48,734 (Aug. 14, 2012) (codified at C.F.R. tit. 37, ch. 1) .................. 30, 32, 45
`
`Office Patent Trial Practice Guide; Rule, 77 Fed. Reg. 48,756 (Aug. 14, 2012) (to
`be codified at C.F.R. pt. 42) ........................................................................ 31, 48, 52
`
`37 C.F.R. § 42.207 .............................................................................................. 1, 52
`
`37 C.F.R. § 42.208 .................................................................................................... 1
`
`37 C.F.R. § 42.301 ................................................................................ 31, 32, 34, 42
`
`37 C.F.R. § 42.304 ............................................................................................ 31, 40
`
`
`
`LEGISLATIVE HISTORY
`
`Leahy-Smith America Invents Act,
`157 Cong. Rec. S5428 (daily ed. Sept. 8, 2011) ................................................ 24
`
`
`
`
`
`vi
`
`

`

`Case CBM2014-00178
`Patent 6,105,013
`Attorney Docket No. 140828-002USCBM
`
`
`Leahy-Smith America Invents Act,
`157 Cong. Rec. 1363, 1364 (daily ed. Mar. 8, 2011) ........................................ 42
`
`
`
`
`
`
`
`vii
`
`

`

`Case CBM2014-00178
`Patent 6,105,013
`Attorney Docket No. 140828-002USCBM
`
`
`
`
`EXHIBIT LIST
`
`Exhibit 2001
`
`Hearing Transcript, In re Maxim Integrated Products,
`Inc., Misc. No. 12-244 (MDL No. 2354) (W.D. Pa.
`Mar. 20, 2013) (excerpt)
`
`Exhibit 2002
`
`2010-12-30 Notice of Allowance and Fees Due
`Application No. 10/415,022
`
`
`
`
`
`
`
`
`viii
`
`

`

`Case CBM2014-00178
`Patent 6,105,013
`Attorney Docket No. 140828-002USCBM
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`Pursuant to 35 U.S.C. § 323, America Invents Act of 2011 (“AIA”)
`
`§ 18(a)(1), and 37 C.F.R. §§ 42.207-208, the undersigned, on behalf of and acting
`
`in a representative capacity for patent owner, Maxim Integrated Products, Inc.
`
`(“Patent Owner” or “Maxim”), submits the following Preliminary Response to the
`
`Petition (“Second Petition”) for covered business method (“CBM”) patent review
`
`filed in the above-captioned proceeding by JP Morgan Chase & Co. and JP
`
`Morgan Chase Bank, N.A. (collectively, “Chase” or “Petitioner”) against United
`
`States Patent No. 6,105,013 (“the ’013 patent” or “the Patent”).
`
`I.
`
`INTRODUCTION
`
`When the first version of this petition was filed, PNC Bank, N.A. (“PNC”)
`
`and Chase prepared and filed it acting as one. PNC Bank, N.A., JP Morgan Chase
`
`& Co. and JP Morgan Chase Bank, N.A. v. Maxim Integrated Prods., Inc., No.
`
`CBM2014-00040, Paper 3, at i, 1. The Board ruled that, because PNC had
`
`previously filed a civil action challenging the validity of the Patent, initiation was
`
`barred under 35 U.S.C. § 325(a)(1). Id., Paper 19, slip op. at 3 (P.T.A.B. Jun. 3,
`
`2014) (per Weatherly, APJ).
`
`
`
`1
`
`

`

`Case CBM2014-00178
`Patent 6,105,013
`Attorney Docket No. 140828-002USCBM
`
`
`
`Chase now re-files the petition, claiming it is acting alone and that PNC is
`
`no longer a real party-in-interest because PNC did not overtly participate in the re-
`
`filing. Chase asserts that this change erases the § 325(a)(1) statutory bar. Chase
`
`also took advantage of the earlier denial under that statutory bar to rearrange,
`
`bolster and rewrite the petition, in an attempt to fix flaws that were pointed out last
`
`time by Patent Owner and the Board.
`
`Chase’s re-filed petition should be denied for four independent reasons.
`
`First, the § 325(a)(1) bar and the Board’s prior order continue to govern.
`
`The language of § 325(a)(1) is clear: once a petitioner or real party in interest files
`
`a civil action challenging the validity of the patent, a covered business method
`
`patent review may not be instituted. The Board already held that the bar is in
`
`effect because PNC, Chase’s co-real party-in-interest, filed a prior action
`
`challenging the Patent’s validity. PNC Bank, CBM2014-00041, Paper 19 at 3. As
`
`a result, a petition challenging the Patent may not be instituted because PNC
`
`remains a real party-in-interest—regardless whether Petitioner included PNC as a
`
`constituent, and regardless whether PNC ceased participating in the petition. Id. at
`
`3-4. Under § 325(a)(1)’s plain language and the Board’s earlier determination
`
`denying the petition, a change in PNC’s participation level, or a re-filing claiming
`
`
`
`2
`
`

`

`Case CBM2014-00178
`Patent 6,105,013
`Attorney Docket No. 140828-002USCBM
`
`
`that Chase is now the lone Petitioner constituent and lone real party-in-interest,
`
`cannot change the bar already in effect.
`
`Second, even if changes to these facts could change the already-adjudicated
`
`application of the § 325(a)(1) bar, on the facts here the bar would still apply. The
`
`plan for Chase to “re-file” PNC’s and Chase’s joint Petition was hatched (and
`
`detailed in a joint PNC/Chase motion) even before the petition was first denied—
`
`when PNC and Chase were still formally acting together as Petitioner, and still
`
`jointly urging the Board to reconstitute the Petitioner and change the named real
`
`parties-in-interest in an attempt to get around the bar. PNC Bank, CBM2014-
`
`00040, Paper 11 (joint PNC/Chase Motion for Adverse Judgment Against PNC) at
`
`5; id., Paper 19, at 4 (order denying joint motion as moot). Even though Chase
`
`“re-filed” the petition a few weeks after it was ruled to be barred—consistent with
`
`what both PNC and Chase said was the plan all along—PNC’s prior control and
`
`contributions remain throughout the petition. Arguments and prior art included in
`
`the original petition co-funded and co-prepared by PNC remain in the Second
`
`Petition. The expert declarant is still the same. All Chase has done is re-edit the
`
`petition and expert declaration in an unfair attempt to bolster it and fix the other
`
`flaws identified last time—without, however, substantially changing the overall
`
`petition already presented. Furthermore, to allow this re-edited Petition to escape
`
`
`
`3
`
`

`

`Case CBM2014-00178
`Patent 6,105,013
`Attorney Docket No. 140828-002USCBM
`
`
`the statutory bar would open the door wide to evasion of § 325(a)(1), for it would
`
`allow barred persons to use simple strategies to contribute to petitions, filed with
`
`the aid of nominally non-barred helpers—and even to gain an advantage from
`
`having their petitions barred, because they could then be bolstered, re-edited and
`
`re-filed after the patent owner was obliged to reveal its rebuttal arguments. For all
`
`these reasons, PNC remains a real party-in-interest, and the § 325(a)(1) bar applies.
`
`(Indeed, because the petition fails to identify a real party-in-interest, initiation of
`
`review is also barred under 35 U.S.C. § 312(a)(2).)
`
`Third, even if PNC’s contributions and control were not enough to bar the
`
`re-filed petition, the Board should still exercise its broad discretion to “reject the
`
`petition because[] the same or substantially the same prior art arguments
`
`previously were presented to the Office,” and to prevent evasion of the statutory
`
`bar and unjust burden on patent owners and the Board as described above. 35
`
`U.S.C. § 325(d). Chase’s re-edit does not substantially change the overall petition,
`
`and to the extent it changes “prior art arguments,” they remain substantially similar
`
`to arguments that were either already in the petition or were presented in at least
`
`one of the four inter-related petitions against related patents, including this Patent,
`
`that the Board rejected the first time under § 325(a)(1). PNC Bank, CBM2014-
`
`00038, -00039, -00040, -00041. The Board should further apply its discretion
`
`
`
`4
`
`

`

`Case CBM2014-00178
`Patent 6,105,013
`Attorney Docket No. 140828-002USCBM
`
`
`under § 325(d) to not consider the “improvements” that Chase improperly adds
`
`throughout the re-filed petition (using Patent Owner’s and the Board’s rebuttals to
`
`the first petition as a “how-to guide”) in an attempt to bolster its arguments since
`
`the first time the petition was denied.
`
`Fourth, the petition must also be denied because the patent cannot be shown
`
`to be a “covered business method” patent eligible for Transitional Program review.
`
`Chase does not show that the patent is drawn to financial products or services but
`
`is not a patent for technological inventions.
`
`Finally, even if the petition were not ineligible for institution of review,
`
`Chase fails to show a likelihood that any challenged claims are ineligible for
`
`patenting under 35 U.S.C. § 101.
`
`For all these reasons, the Board should deny institution of review, as it did
`
`the first time.1
`
`
`1 As detailed below, this Petition was re-filed along with three other Petitions
`
`challenging three related patents, in case Nos. CBM2014-00177, -00179 and -
`
`00180. Although the Board will naturally address the four cases in whatever way
`
`it finds best, if it wishes to address them together for any reason, it is respectfully
`
`
`
`5
`
`

`

`Case CBM2014-00178
`Patent 6,105,013
`Attorney Docket No. 140828-002USCBM
`
`
`II. THIS RE-FILED PETITION SHOULD BE DENIED BECAUSE IT IS
`A RE-FILING OF A PETITION BARRED BY 35 U.S.C. § 325(A)(1).
`
`This petition (the “Second Petition”) is the second that Petitioner Chase has
`
`filed as petitioner or co-petitioner for review of this Patent. Previously, Chase and
`
`PNC, acting together as Petitioner and co-real parties-in-interest, jointly filed a first
`
`petition (the “First Petition”) against this Patent. Similarly, they also filed first
`
`petitions against three other patents sharing the same or related specifications and
`
`asserted with the Patent against Chase in pending litigation.2 The Board denied the
`
`first petitions against all four patents (including the First Petition against this
`
`
`
`suggested that the Board may find it easiest to begin its review with the filings in
`
`case No. CBM2014-00179, which has the longest Preliminary Response.
`
`2 The four patents are U.S. Pat. Nos. 5,940,510, 5,949,880, 6,105,013 (the
`
`“Patent”), and 6,237,095. Except for the ’880 patent, these patents all continue to
`
`be asserted in the litigation against Chase.
`
`
`
`6
`
`

`

`Case CBM2014-00178
`Patent 6,105,013
`Attorney Docket No. 140828-002USCBM
`
`
`Patent) because PNC previously filed a civil action challenging the validity of the
`
`claims of the Patent, and 35 U.S.C. § 325(a)(1) precluded institution of review.3
`
`Petitioner does not seriously dispute that the second petitions (including this
`
`one) are merely re-edited versions of the first petitions that raise the same or
`
`substantially similar arguments. For example, the Second Petition is supported by
`
`the same expert declarant as the First Petition, challenges all the claims that were
`
`challenged in the First Petition, raises §§ 101 and 103 grounds like the First
`
`Petition, and relies exclusively on prior art references that were raised in the First
`
`Petition (primary reference Hawkes, and secondary references Lancaster (or
`
`“Hardware Hacker”) and Blandford).
`
`Petitioner, hoping to avoid the § 325(a)(1) statutory bar this time, no longer
`
`names PNC as a petitioner constituent or real party-in-interest. Nevertheless,
`
`§ 325(a)(1) still bars initiation. The Board already held that § 325(a)(1)’s bar
`
`applied when PNC and Chase co-filed the First Petition. That is all that is needed
`
`
`3 PNC Bank N.A., JP Morgan Chase & Co. and JP Morgan Chase Bank, N.A. v.
`
`Maxim Integrated Prods., Inc., No. CBM2014-00038, -00039, -00040 (against the
`
`Patent) & -00041, Paper No. 19 (P.T.A.B. Jun. 3, 2014) (per Weatherly, APJ).
`
`
`
`7
`
`

`

`Case CBM2014-00178
`Patent 6,105,013
`Attorney Docket No. 140828-002USCBM
`
`
`to establish that Chase’s re-filing of substantially the same petition, against the
`
`same patent, is also barred.
`
`Chase argues that the § 325(a)(1) bar no longer applies because PNC did not
`
`participate in or control “the filing of this [Second] Petition” and has settled Patent
`
`Owner’s claims against it, and so is no longer a “real party-in-interest.” 2nd Pet. at
`
`2. That PNC’s level of ongoing participation has changed between the first filing
`
`and re-filing of the petition makes no difference under the statute. Moreover, the
`
`Board has already held that PNC cannot change its real party-in-interest status by
`
`settling with Patent Owner or ceasing its further participation in challenging the
`
`Patent. PNC Bank, CBM2014-00038, Paper 19 at 4. Indeed, PNC and Chase
`
`jointly told the Board in a Motion related to the First Petitions that Chase alone
`
`would file Second Petitions if PNC were barred. Id, Paper 11 at 3, 5.
`
`Even if new facts could theoretically have changed PNC’s real party-in-
`
`interest status with respect to the Second Petition, they have not done so here. The
`
`First Petition is substantially similar to the re-filed Second Petition, and PNC’s
`
`barred contributions to the First Petition are also contributions to the Second
`
`Petition. The Second Petition challenges all the claims challenged in the First
`
`Petition, and Chase filed or co-filed both petitions. Perhaps more importantly,
`
`Chase and PNC were collaborating when the petition was drafted and the strategy
`
`
`
`8
`
`

`

`Case CBM2014-00178
`Patent 6,105,013
`Attorney Docket No. 140828-002USCBM
`
`
`to re-file it was decided. This is distinct from other possible situations such as, for
`
`example, where an unrelated third party simply takes the PNC/Chase petition and
`
`decides to file it. Chase cannot undo its collaboration with PNC by simply
`
`removing PNC from a list of real parties in interest, while still relying on the prior
`
`contributions and strategy.
`
`PNC remains a real party-in-interest, and
`
`initiation of review
`
`is,
`
`consequently, barred under 35 U.S.C. § 325(a)(1). Moreover, PNC is not
`
`identified as a real party-in-interest, and initiation of review is therefore also barred
`
`under 35 U.S.C. § 312(a)(2).
`
`Finally, even if initiation were not statutorily barred, the Board should
`
`exercise its discretion to deny review under § 325(d) because the same or
`
`substantially the same prior art or arguments previously were presented to the
`
`Office in the First Petition, and the Second Petition functions as nothing more than
`
`a successive pleading, unfairly taking advantage of Patent Owner’s rebuttals to add
`
`bolstering arguments that could and should have been raised in the First Petition.
`
`A. The Board Held That § 325(a)(1) Bars Initiation.
`
`It is helpful to recount some salient facts that led up to the filing of
`
`Petitioner’s second petitions against these patents.
`
`
`
`9
`
`

`

`Case CBM2014-00178
`Patent 6,105,013
`Attorney Docket No. 140828-002USCBM
`
`
`
`Chase and PNC jointly controlled, prepared and funded the first round of
`
`petitions, were represented by common counsel in preparing and asserting them,
`
`and were both members of a joint defense agreement with respect to the four
`
`patents. See, e.g., PNC Bank, CBM2014-00040, Paper 7 (patent owner
`
`preliminary response) at 31-33 (Mar. 6, 2014); 2nd Pet. at 2 (admitting that Chase
`
`and PNC’s common counsel “prepared the [First] Petition”), 3 (admitting that
`
`Chase and PNC were “co-signatories to [a] joint defense agreement with respect to
`
`the [Patent]”).
`
`After Chase and PNC filed their first petitions, Patent Owner filed
`
`Preliminary Responses to those petitions (id.) (the “First Preliminary Response” or
`
`“1st POPR”). In its First Preliminary Reponses, Patent Owner explained why
`
`§ 325(a)(1) would continue to bar institution of review even if PNC were to
`
`“forswear all further control and participation in this case.” Id. at 30-34. Also,
`
`since Patent Owner could not absolutely guarantee that the Board would agree that
`
`§ 325(a)(1) barred initiation, it was obliged to set forth further arguments, refuting
`
`the First Petition’s flawed positions on standing and the merits. Id. at 34-59.
`
`After Chase and PNC reviewed Patent Owner’s First Preliminary Response
`
`to the First Petition, they filed through their common counsel a joint Motion for
`
`Adverse Judgment against PNC. Id., Paper 11 (Apr. 1, 2014). Chase and PNC
`
`
`
`10
`
`

`

`Case CBM2014-00178
`Patent 6,105,013
`Attorney Docket No. 140828-002USCBM
`
`
`jointly stated that PNC had settled its litigation against Patent Owner and would
`
`“expressly abandon . . . and no longer participate” in the First Petition. Id. at 3. In
`
`addition, seeking to dissuade the Board from denying the motion or denying
`
`institution of the First Petition, they jointly explained that “if the Board . . . denies
`
`the [First Petition] because PNC was a DJ plaintiff, then [Chase] will re-file the
`
`CBM petition[].” Id. at 5. Later, Chase and PNC jointly notified the Board that
`
`PNC had settled Patent Owner’s litigation claims against it. Id., Paper 19 at 4.
`
`When the Board denied initiation of the First Petition, it denied Chase’s and
`
`PNC’s Motion for Adverse Judgment against PNC as moot. Id. The Board noted
`
`that granting the request for adverse judgment “would not obviate the control that
`
`PNC has already exerted in this proceeding by its filing of the Petition” with
`
`Chase, for, despite PNC’s settlement and agreement to have no further part, “PNC
`
`has already exerted substantial control over the case.” Id.
`
`Less than three months later, Petitioner Chase “re-file[d] the CBM petition”
`
`as the Second Petition here, and also re-filed its petitions against the other three
`
`related patents—exactly as Chase and PNC’s joint motion had said was the plan all
`
`along. Id., Paper 11 at 5. The second petitions rearrange the alleged prior art and
`
`grounds of unpatentability somewhat compared to their arrangement in the first
`
`petitions, and add and bolster arguments in response to arguments raised against
`
`
`
`11
`
`

`

`Case CBM2014-00178
`Patent 6,105,013
`Attorney Docket No. 140828-002USCBM
`
`
`the first petitions before review was denied. Nonetheless, as noted above (supra at
`
`6), the second petitions raise the same or substantially similar arguments against
`
`each patent as the first petitions.
`
`The Second Petition asserts that PNC “has settled the controversy with
`
`Patent Owner over the validity of the subject patent and the civil litigation between
`
`PNC and Patent Owner has been dismissed.” 2nd Pet. at 2. However, PNC’s and
`
`Chase’s joint motion for adverse judgment against PNC as to the First Petition had
`
`already told the Board that PNC had settled its controversy with Patent Owner, and
`
`the Board had still denied PNC’s and Chase’s joint motion as moot and denied
`
`institution of the First Petition as barred under § 325(a)(1). PNC Bank, CBM2014-
`
`00040, Paper 19 at 3-4.
`
`B.
`
`The Board’s § 325(a)(1) Bar Determination Also Applies To The
`Re-Filed Petition.
`
`Despite the fact that the Second Petition is just a re-filing of a re-edited
`
`version of the First Petition, Petitioner, hoping to avoid the § 325(a)(1) bar this
`
`time, no longer names PNC as a petitioner constituent or real party-in-interest in
`
`the second set of petitions. Nevertheless, the plain language of § 325(a)(1) still
`
`bars initiation.
`
`
`
`12
`
`

`

`Case CBM2014-00178
`Patent 6,105,013
`Attorney Docket No. 140828-002USCBM
`
`
`
`Section 325(a)(1) provides that a covered business method patent review
`
`“may not be instituted under this chapter if, before the date on which the petition
`
`for such a review is filed, the petitioner or real party in interest filed a civil action
`
`challenging the validity of a claim of the patent” (emphasis added). The statute is
`
`clear. Once a petitioner or real party in interest files a civil action challenging the
`
`validity of the patent, a covered business method patent review may not be
`
`instituted. Here, the Board has already held that the statutory bar has taken effect,
`
`because PNC, a real party-in-interest, had already filed a declaratory judgment
`
`action challenging the validity of the patent. PNC Bank, CBM2014-00040, Paper
`
`19 at 3. As a result, a petition challenging the patent filed by Chase, with PNC as a
`
`real party in interest, cannot be instituted.
`
`Contrary to the plain language of § 325(a)(1), Chase argues that the
`
`§ 325(a)(1) bar no longer applies because PNC did not participate in or control
`