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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`VISA INC., and VISA U.S.A. INC.,
`Petitioners,
`v.
`UNIVERSAL SECURE REGISTRY, LLC,
`Patent Owner.
`_________________________________________
`Case CBM2018-00024
`U.S. Patent No. 8,577,8131
`________________________________________
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`PETITIONER APPLE INC.’S OPPOSITION TO PATENT OWNER’S
`MOTION TO STRIKE
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`1 Visa Inc. and Visa U.S.A. Inc., which filed a petition in CBM2019-00025, have
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`been joined as a party to this proceeding.
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`CBM2018-00024
`U.S. Patent No. 8,577,813
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`INTRODUCTION......................................................................................... 1
`I.
`ARGUMENT ................................................................................................ 2
`II.
`A. Dr. Juels’ Declaration Is Permissible Because It Directly Responds to
`Arguments Made by Dr. Jakobsson. ............................................................. 2
`Petitioner Is Not Required to Anticipate All Possible Arguments in Its
`Petition. ......................................................................................................... 5
`Patent Owner Would Not Suffer Any Prejudice. .......................................... 6
`CONCLUSION ............................................................................................. 8
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`B.
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`C.
`III.
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`ii
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`I.
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`INTRODUCTION
`Patent Owner’s motion to strike should be denied because the Juels
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`CBM2018-00024
`U.S. Patent No. 8,577,813
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`Declaration (Ex. 1226) directly responds to the Jakobsson Declaration (Ex. 2011)
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`regarding a prior art patent on which Dr. Juels and Dr. Jakobsson are co-inventors.
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`Petitioner Apple had no reason to submit the Juels Declaration with its petition
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`because it could not have anticipated that Dr. Jakobsson would submit a
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`declaration that interprets the prior art WO 2004/051585 publication (“’585
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`reference”) in a manner inconsistent with its disclosure. It is permissible rebuttal
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`evidence.2
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`Indeed, the Federal Circuit and the Board have consistently found that
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`rebuttal evidence like the Juels Declaration is appropriate on reply, especially
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`where, as here, the Patent Owner was offered the opportunity to take a deposition
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`concerning the declaration it now seeks to strike and where the Patent Owner still
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`has a full opportunity to respond.
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`2 This motion is one of four virtually-identical motions filed in CBM2018-00025
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`(Paper No. 30), IPR2018-00809 (Paper No. 36), and IPR2018-00813 (Paper No.
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`34).
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`1
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`CBM2018-00024
`U.S. Patent No. 8,577,813
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`II. ARGUMENT
`A. Dr. Juels’ Declaration Is Permissible Because It Directly
`Responds to Arguments Made by Dr. Jakobsson.
`It is well settled that expert declarations are permitted on reply where, as
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`here, the declarations respond to arguments made by the patent owner or its expert.
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`“[T]he petitioner in an inter partes review proceeding may introduce new evidence
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`after the petition stage if the evidence is a legitimate reply to evidence introduced
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`by the patent owner . . . .” Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372, 1380-81
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`(Fed. Cir. 2018); see also Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1078 (Fed.
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`Cir. 2015) (holding that a reply declaration that fairly responds to arguments made
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`by patent owner’s expert was permissible on reply); Square, Inc. v. Unwired
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`Planet, LLC, Case No. CBM2014-00156, Paper No. 40, 2015 Pat. App. LEXIS
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`12583, at *54 (PTAB Dec. 22, 2015) (same); Hughes Network Systems, LLC v.
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`California Institute of Technology, Case No. IPR2015-00059, Paper No. 42, 2016
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`Pat. App. LEXIS 1867, at *51 (PTAB Apr. 21, 2016) (allowing Petitioner’s reply
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`because “[t]he submission of rebuttal evidence with Petitioner’s reply is both
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`permitted and customary”).
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`The Federal Circuit’s opinion in Belden Inc. v. Berk-Tek LLC is instructive.
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`In Belden, the petitioner submitted an expert declaration with its reply to rebut
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`arguments made by the patent owner’s expert. The patent owner moved to exclude
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`that declaration, arguing that it was not permissible on reply, and that there was no
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`2
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`CBM2018-00024
`U.S. Patent No. 8,577,813
`fair opportunity respond. 805 F.3d at 1077-1078. The Board denied the motion,
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`and the Federal Circuit affirmed. Id. at 1078. In affirming, the Federal Circuit
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`explained that “[e]ach of the points that Mr. Baxter made in his declaration
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`responds to a statement made in Mr. Clark’s declaration,” and concluded that “Mr.
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`Baxter’s declaration fairly responds only to arguments made in Mr. Clark’s
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`declaration and Belden’s response.” Id. at 1078. The Federal Circuit also rejected
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`the patent owner’s contention that it had no opportunity to respond, noting that
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`there are “multiple ways” to respond, including by cross-examining the expert,
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`submitting a surreply, or by disputing the substance of the declaration at oral
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`hearing. Id. at 1081.3
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`Here, the Juels Declaration responds directly to the Jakobsson Declaration.
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`Dr. Juels begins his declaration by explaining: “I submit this Declaration to
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`respond to the statements and opinions provided by Markus Jakobsson, my co-
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`inventor on the ’585 reference and Patent Owner’s expert witness.” Ex. 1226 ¶ 2.
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`Each of the points Dr. Juels made in his declaration thereafter responds to a
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`3 The August 2018 Trial Practice Guide—which Patent Owner cites
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`repeatedly in its motion—specifically references Belden when instructing that “a
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`petitioner may submit directly responsive rebuttal evidence in support of its reply.”
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`See August 2018 Practice Guide at 14.
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`3
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`CBM2018-00024
`U.S. Patent No. 8,577,813
`specific statement in the Jakobsson Declaration. For example, as shown in the
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`following excerpt, Dr. Juels summarizes and cites the paragraph from the
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`Jakobsson Declaration before responding to it:
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`Ex. 1226 ¶ 37. The Juels Declaration thus follows the same approach as the reply
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`declaration found permissible in Belden. See Belden, 805 F.3d at 1078 (“Each of
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`the points that Mr. Baxter made in his declaration responds to a statement made in
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`Mr. Clark’s declaration. . . . After quoting Mr. Clark’s argument that JP ’910 does
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`not teach a method of making communication cables, the Baxter declaration
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`responds with reference to JP ’910 and a supporting exhibit.”).
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`Dexom, Inc. v. Waveform Techs., Inc., cited by Patent Owner, is
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`distinguishable. There, the motion to exclude was based on the petitioner
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`attempting to fill in a gap in its prima facie case of unpatentability by introducing
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`new prior art references to satisfy a limitation. See Dexcom, Case No. IPR2016-
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`4
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`CBM2018-00024
`U.S. Patent No. 8,577,813
`01680, Paper No. 46 at 30 (PTAB Feb. 28, 2018). Here, however, Dr. Juels has
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`neither advanced any new theory or evidence to fill in a gap in Petitioner’s prima
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`facie case of unpatentability, nor has Patent Owner made any such arguments in its
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`motion. See Hughes Network Systems, 2016 Pat. App. LEXIS 1867, at *51
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`(“Notably, Patent Owner does not allege that the Jezek Declaration raises any new
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`issue. For example, there is no allegation that the Jezek Declaration was necessary
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`to establish a prima facie case of unpatentability.”).
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`Tellingly, Patent Owner does not even attempt to identify any specific
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`statements by Dr. Juels as not responsive to Dr. Jakobsson or otherwise improper,
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`and Patent Owner cannot expect the Board to read through the entire record for
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`relevant evidence that might support its arguments. See SK Hynix Inc. v. Netlist,
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`Inc., Case No. IPR2017-00562, Paper No. 36, 2018 Pat. App. LEXIS 7306, at *57
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`(PTAB July 5, 2018). For these reasons, the Board should deny Patent Owner’s
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`motion.
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`B.
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`Petitioner Is Not Required to Anticipate All Possible Arguments
`in Its Petition.
`Patent Owner’s contention that “[t]here is no reason Apple could not have
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`presented such evidence in its petition” is entirely incorrect. Paper No. 35 at 2.
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`Petitioners are not expected or required to be omniscient and preempt all possible
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`arguments that a patent owner (or its expert) may raise. See Idemitsu Kosan Co. v.
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`SFC Co., 870 F.3d 1376, 1381 (Fed. Cir. 2017) (“To the extent Idemitsu suggests
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`5
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`CBM2018-00024
`U.S. Patent No. 8,577,813
`that the Board could not reach a counterargument because it was not preemptively
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`addressed by the petition or institution decision, Idemitsu is plainly mistaken.”).
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`Here, Petitioner could not have reasonably anticipated that Patent Owner
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`would rely upon opinions by an author of the ’585 reference that are so
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`fundamentally at odds with the plain text of the ’585 reference. For example, Dr.
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`Jakobsson opined that “there is no decryption” disclosed in the ’585 reference. Ex.
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`2011 ¶ 82. But the ’585 reference explicitly discloses that encryption and
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`decryption: “the verifier 105 decrypts a value encrypted by the user authentication
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`device 120 using symmetric key encryption or asymmetric encryption techniques,
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`such as public key encryption.” Ex. 1214 ¶ [0058] (emphasis added). Thus,
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`Petitioner should be allowed to respond to such unexpected arguments from one
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`’585 reference author with rebuttal evidence from another ’585 reference author.
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`C.
`Patent Owner Would Not Suffer Any Prejudice.
`Finally, Patent Owner’s claims of prejudice are based on the
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`misunderstanding that it would be “left without any rebuttal” at the hearing. Paper
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`No. 35 at 3. However, in Belden, the Federal Circuit rejected this same argument,
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`finding that patent owners have “multiple ways” to respond to expert declarations
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`submitted on reply, including by filing a surreply, cross-examining the expert, and
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`by disputing the substance of the declaration at the oral hearing. Belden, 805 F.3d
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`at 1081.
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`6
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`CBM2018-00024
`U.S. Patent No. 8,577,813
`All these options are available here. In fact, Patent Owner chose not to
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`depose Dr. Juels in this proceeding despite having the opportunity to do so. This
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`belies Patent Owner’s claim of prejudice. Moreover, Patent Owner may file a
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`surreply and also may address Dr. Juels’ statements at the oral hearing. Indeed, in
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`related proceedings, Patent Owner has already deposed Dr. Juels and relied upon
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`his deposition testimony in multiple papers. See Patent Owner’s Sur-Reply, Paper
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`No. 30 (IPR2018-00809); Patent Owner’s Sur-Reply, Paper No. 30 (IPR2018-
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`00813); Patent Owner’s Reply In Support of Its Motion to Amend, Paper No. 304
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`(IPR2018-00810).
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`Patent Owner’s reliance on Realtime Data, LLC v. Iancu and Dexcom to
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`show prejudice is misplaced. Realtime did not even involve a reply declaration
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`submitted to rebut an expert’s declaration submitted with the patent owner’s
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`response, as is the case here. Rather, the issue in Realtime was whether it would
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`violate the notice requirements if the Board could rely on a prior art reference by
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`itself to invalidate a claim, when the petition relied upon that reference in
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`combination with another prior art reference. See Realtime Data, LLC v. Iancu,
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`912 F.3d 1368, 1373 (Fed. Cir. 2019). Moreover, the Federal Circuit ultimately
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`found that the patent owner would not be prejudiced. Id.
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`4 Moreover, in IPR2018-00810, Petitioner did not even file a declaration by Dr.
`Juels in the first place, yet Patent Owner still relies on Dr. Juels’ testimony from
`another proceeding.
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`7
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`CBM2018-00024
`U.S. Patent No. 8,577,813
`Dexcom similarly does not support a finding of prejudice. As explained
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`above, the circumstances in Dexcom are very different because the issue in
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`Dexcom was whether the petitioner could rely on a new prior art reference to fill in
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`a gap its prima facie case of unpatentability. Dexcom, Case No. IPR2016-01680,
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`Paper No. 46 at 30. As explained above, the Juels Declaration is directly
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`responsive to arguments in the Jakobsson Declaration, and does not introduce any
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`new evidence to fill in a gap in Petitioner’s prima facie case of unpatentability.
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`III. CONCLUSION
`Based on the foregoing, Patent Owner’s motion to strike should be denied.
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`Respectfully Submitted,
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`/Monica Grewal/
`
`Monica Grewal
`Registration No. 40,056
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`CBM2018-00024
`U.S. Patent No. 8,577,813
`CERTIFICATE OF SERVICE
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`I hereby certify that on June 19, 2019, I caused a true and correct copy of
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`the foregoing materials:
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`• Petitioner’s Opposition to Patent Owner’s Motion to Strike
`to be served via e-mail on the following correspondents of record as listed in
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`Patent Owners’ Mandatory Notices and in Paper 34 (Decision to Institute
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`CBM2019-00025 Granting Motion for Joinder):
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`For PATENT OWNER:
`James M. Glass (jimglass@quinnemanuel.com)
`Tigran Guledjian (tigranguledjian@quinnemanuel.com)
`Christopher A. Mathews (chrismathews@quinnemanuel.com)
`Nima Hefazi (nimahefazi@quinnemanuel.com)
`Richard Lowry (richardlowry@quinnemanuel.com)
`Razmig Messerian (razmesserian@quinnemanuel.com)
`Jordan B. Kaericher (jordankaericher@quinnemanuel.com)
`Harold A. Barza (halbarza@quinnemanuel.com)
`Quinn Emanuel USR IPR (qe-usr-ipr@quinnemanuel.com)
`QUINN, EMANUEL, URQUHART & SULLIVAN, LLP
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`For PETITIONER:
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`(CBM2019-00025):
`Matthew A. Argenti (margenti@wsgr.com)
`Michael T. Rosato (mrosato@wsgr.com)
`WILSON SONSINI GOODRICH & ROSATI
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`Respectfully Submitted,
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`/Monica Grewal/
`Monica Grewal
`Registration No. 40,056
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`Date: June 19, 2019
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