Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 34
`Entered: June 11, 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 CBM2019-00025
`Patent 8,577,813
`_______________
`
`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 § 324; 35 U.S.C § 325(c); 37 C.F.R. § 42.222(b)
`
`
`
`
`
`
`
`571.272.7822
`
`
`Paper No. 34
`Entered: June 11, 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 CBM2019-00025
`Patent 8,577,813
`_______________
`
`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 § 324; 35 U.S.C § 325(c); 37 C.F.R. § 42.222(b)
`
`
`
`
`
`
`
`
`CBM2019-00025
`Patent 8,577,813
`
`
`INTRODUCTION
`I.
`Petitioner, Visa Inc. and Visa U.S.A. Inc., filed a Petition (Paper 2,
`“Pet.”) requesting covered business method review of claims 1, 2, 4–11, 13–
`20, and 22–26 of U.S. Patent No. 8,577,813 B2 (Ex. 1201, “the ’813
`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
`CBM2018-00024. Paper 3 (“Mot.”). Petitioner filed the Petition and
`Motion for Joinder on December 20, 2018, within one month after we
`instituted trial in CBM2018-00024.
`As explained further below, we determine institution is warranted on
`the same grounds as instituted in CBM2018-00024 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. 3–5.
`
`IPR2018-00809
`B.
`In CBM2018-00024, Apple, Inc., challenged claims 1, 2, 4–11, 13–
`20, and 22–26 of the ’813 patent. After considering the Petition and Patent
`Owner’s Preliminary Response, we instituted review of the claims
`challenged in that case. Apple, Inc. v. Universal Secure Registry LLC,
`Case CBM2018-00024 (PTAB Nov. 20, 2018) (Paper 10, “Apple Inst.”).
`Thus, the instituted review in CBM2018-00024 involves the following
`grounds of unpatentability:
`
`2
`
`
`
`CBM2019-00025
`Patent 8,577,813
`
`
`References
`Maes1 and Jakobsson2
`Maes, Jakobsson, and
`Maritzen4
`Maes, Jakobsson, and
`Labrou5
`
`Basis
`§ 103(a)3
`§ 103(a)
`
`Claims Challenged
`1, 2, 4, 5, 11, 13, 16–20, and 24
`6–10
`
`§ 103(a)
`
`14, 15, 22, 23, 25, and 26
`
`Apple Inst. 8. Apple also relied on the Declaration of Dr. Victor
`Shoup (CBM2018-00024, Ex. 1202). See id.
`
`II. DISCUSSION
`Petitioner’s Motion for Joinder states “the Petition is limited to the
`same grounds proposed in the CBM2018-00024 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 CBM2018-00024 petition, and does not
`include any grounds not raised in that petition.”). Thus, for the same reasons
`
`
`1 U.S. Patent No. 6,016,476, issued Jan. 18, 2000 (“Maes,” CBM2018-
`00024, Ex. 1213).
`2 WO Patent Publication No. WO 2004/051585 A2, published June 17, 2004
`(“Jakobsson,” CBM2018-00024, Ex. 1214).
`3 The America Invents Act included revisions to, inter alia, 35 U.S.C. § 103
`effective on March 16, 2013. Because the ’813 patent issued from an
`application filed before March 16, 2013, the pre-AIA version of 35 U.S.C. §
`103 applies.
`4 U.S. Patent Publication No. US 2004/0236632 A1, published Nov. 25,
`2004 (“Maritzen,” CBM2018-00024, Ex. 1215).
`5 U.S. Patent Publication No. US 2004/0107170 A1, published Jun. 3, 2004
`(“Labrou,” CBM2018-00024, Ex. 1216).
`3
`
`
`
`CBM2019-00025
`Patent 8,577,813
`
`stated in our Decision on Institution in CBM2018-00024, we determine
`institution is warranted here. See generally Apple Inst.
`Having determined that institution is warranted, we consider
`Petitioner’s Motion for Joinder. Section 325(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 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–
`7. Because Petitioner relies on the declaration as does Apple, no additional
`depositions will be required. See id. at 7.
`Under these circumstances, we agree with Petitioner that joinder is
`appropriate and will not unduly impact the ongoing trial in CBM2018-
`00024. We limit Petitioner Visa’s participation in the joined proceeding,
`such that (1) Apple alone is responsible for all petitioner filings in the joined
`
`4
`
`
`
`CBM2019-00025
`Patent 8,577,813
`
`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 CBM2018-
`00024 and protects the interests of Apple as original petitioner in Case
`CBM2018-00024, 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 covered business method review is hereby
`instituted as to claims 1, 2, 4–11, 13–20, and 22–26 of the ’813 patent on the
`following asserted grounds:
`(1) Claims 1, 2, 4, 5, 11, 13, 16–20, and 24 under 35 U.S.C. § 103
`as unpatentable over Maes and Jakobsson;
`(2) Claims 6–10 under 35 U.S.C. § 103 as unpatentable over Maes,
`Jakobsson, and Maritzen;
`(3) Claims 14, 15, 22, 23, 25, and 26 under 35 U.S.C. § 103 as
`unpatentable over Maes, Jakobsson, and Labrou;
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`CBM2018-00024 is granted, and Visa Inc. and Visa U.S.A. Inc. are joined
`as petitioners in that case pursuant to 37 C.F.R. § 42.222, based on the
`conditions discussed above;
`
`5
`
`
`
`CBM2019-00025
`Patent 8,577,813
`
`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
`CBM2018-00024 (Paper 11) shall govern the joined proceeding;
`FURTHER ORDERED that all future filings in the joined proceeding
`shall be made only in CBM2018-00024;
`FURTHER ORDERED that the case caption in CBM2018-00024 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 CBM2018-00024 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 CBM2018-00024.
`
`
`
`6
`
`
`
`CBM2019-00025
`Patent 8,577,813
`
`For PETITIONER (Visa):
`Matthew Argenti
`Michael Rosato
`WILSON SONSINI GOODRICH & ROSATI
`margenti@wsgr.com
`mrosato@wsgr.com
`
`
`For PATENT OWNER:
`James Glass
`Tigran Guledjian
`Christopher Mathews
`Nima Hefazi
`Richard Lowry
`Razmig Messerian
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`jimglass@quinnemanuel.com
`tigranguledjian@quinnemanuel.com
`chrismathews@quinnemanuel.com
`nimahefazi@quinnemanuel.com
`richardlowry@quinnemanuel.com
`razmesserian@quinnemanuel.com
`
`
`For PETITIONER in CBM2018-00024 (Apple):
`Monica Grewal
`Benjamin Fernandez
`Mark Selwyn
`WILMER CUTLER PICKERING HALE AND DORR LLP
`monica.grewal@wilmerhale.com
`ben.fernandez@wilmerhale.com
`mark.selwyn@wilmerhale.com
`
`
`
`
`
`
`7
`
`
`
`CBM2019-00025
`Patent 8,577,813
`
`
`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 CBM2018-000246
`Patent 8,577,813
`____________
`
`
`
`
`
`6 Visa Inc. and Visa U.S.A. Inc., which filed a petition in CBM2019-00025,
`have been joined as a party to this proceeding
`
`8
`
`
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