`Filed: December 20, 2018
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`Filed on behalf of: Visa Inc. and Visa U.S.A. Inc.
`By: Matthew A. Argenti (margenti@wsgr.com)
`Michael T. Rosato (mrosato@wsgr.com)
`WILSON SONSINI GOODRICH & ROSATI
`650 Page Mill Road
`Palo Alto, CA 94304
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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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`_____________________________
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`VISA INC. and VISA U.S.A. INC.,
`Petitioners,
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`v.
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`UNIVERSAL SECURE REGISTRY, LLC,
`Patent Owner.
`
`_____________________________
`
`Case CBM2019-00025
`Patent No. 8,577,813
`_____________________________
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`MOTION FOR JOINDER UNDER 35 U.S.C. § 325(c)
`AND 37 C.F.R. §§42.22 AND 42.222(b)
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`I.
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`Statement of the Precise Relief Requested
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`Visa Inc. and Visa U.S.A. Inc. (together, “Visa” or “Petitioners”) submit,
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`concurrently with this motion, a petition for covered business method review
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`(“Petition”) of claims 1, 2, 4-11, 13-20, and 22-26 of U.S. Patent No. 8,577,813
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`(“the ’813 patent”), which is assigned to Universal Secure Registry, LLC (“Patent
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`Owner”). Visa respectfully requests joinder pursuant to 35 U.S.C. § 325(c) and 37
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`C.F.R. § 42.222(b) of the concurrently filed Petition with a pending covered
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`business method review initiated by Apple Inc. (“Apple”), CBM2018-00024.
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`Joinder will promote efficiency and consistent resolution of substantively
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`identical challenges to the same patent. This motion for joinder is timely because it
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`is filed within one month of the institution decision in CBM2018-00024. Joinder
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`should create no unfair burden for the Board, Patent Owner, or Apple because
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`these grounds are substantive copies of the instituted grounds from the original
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`petition filed in CBM2018-00024. The present Petition contains only minor
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`modifications from the petition in CBM2018-00024, such as changes to address
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`the identity of the petitioner and the request for joinder with CBM2018-00024. The
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`Petition relies upon the expert declaration of Dr. Victor Shoup (Ex. 1202), which
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`was submitted in CBM2018-00024. Petitioner has updated the exhibit labeling to
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`match the case information for this case.
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`-1-
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`Absent termination of Apple as a party to the proceeding, Visa anticipates
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`participating in a joined proceeding in an understudy role. Moreover, joinder will
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`have no impact on the trial schedule of CBM2018-00024 because that CBM is still
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`in its early trial stages, and Visa, in its limited role, is agreeable to the same
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`schedule.
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`Visa has conferred with counsel for Apple regarding the subject of this
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`motion, and counsel for Apple indicated that Apple does not oppose joinder.
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`II. Background
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`On May 3, 2018, Apple filed a petition for covered business method review
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`challenging claims 1, 2, 4-11, 13-20, and 22-26 of the ’813 patent, Case No.
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`CBM2018-00024. On November 20, 2018, the Board instituted review on claims
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`1, 2, 4-11, 13-20, and 22-26. This Petition is a practical copy of the CBM2018-
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`00024 petition, including the same prior art analysis and identical expert testimony.
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`See Pet.
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`III. Argument
`A. Legal Standard
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`If more than one petition for a covered business method review is properly
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`filed against the same patent and the Director determines that more than one of
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`these petitions warrants the institution of a covered business method review under
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`Section 324, the Director may consolidate such reviews into a single covered
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`-2-
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`business method review. 35 U.S.C. §325(c). In deciding whether to grant a motion
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`for joinder, the Board considers several factors including: (1) the reasons why
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`joinder is appropriate; (2) whether the party to be joined has presented any new
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`grounds of unpatentability; (3) what impact, if any, joinder would have on the trial
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`schedule for the existing review; and (4) how briefing and discovery may be
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`simplified. See, e.g., Hyundai Motor Co. v. Am. Vehicular Sciences LLC, IPR2014-
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`01543, Paper No. 11 at 3 (Oct. 24, 2014); Macronix Int’l Co. v. Spansion,
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`IPR2014-00898, Paper 15 at 4 (Aug. 13, 2014) (quoting Kyocera Corporation v.
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`Softview LLC, IPR2013-00004, Paper 15 at 4 (April 24, 2013)). Under this
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`framework, joinder with CBM2018-00024 is appropriate.
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`B. Visa’s Motion for Joinder Is Timely
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`Joinder may be requested no later than one month after the institution date of
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`any post-grant review for which joinder is requested. 37 C.F.R. § 42.222(b). Here,
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`because the Board issued its institution decision in CBM2018-00024 on November
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`20, 2018, this Motion for Joinder and the accompanying Petition are timely.
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`C. The Relevant Factors Weigh in Favor of Joinder
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`Each of the four factors considered by the Board weighs in favor of joinder.
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`As discussed below, granting joinder will not enlarge the scope of the CBM2018-
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`00024 beyond that proposed in the original petition and will not negatively impact
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`the CBM2018-00024 schedule.
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`1.
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`Joinder is Appropriate
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`Joinder with CBM2018-00024 is appropriate because the Petition is limited
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`to the same grounds proposed in the CBM2018-00024 petition. It also relies on the
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`same prior art analysis and identical expert testimony to that submitted by Apple.
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`Indeed, the Petition is nearly identical with respect to the grounds raised in the
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`CBM2018-00024 petition, and does not include any grounds not raised in that
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`petition.1
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`Joinder is also appropriate because it will promote the just, speedy, and
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`inexpensive resolution of patentability issues, including the determination of
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`patentability of the challenged claims of the ’813 patent.
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`1 As one example, Visa’s petition presents identical claim construction analysis
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`as found in the CBM2018-00024 petition, including application of the broadest
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`reasonable interpretation standard. See Pet. 22-27. While Visa acknowledges that
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`petitions filed after November 13, 2018 are subject to the same claim construction
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`standard applied in district court proceedings, Visa applies the broadest reasonable
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`interpretation standard to maintain consistency with CBM2018-00024. Should the
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`Board have any concerns about the appropriate claim construction standard Visa
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`would welcome the opportunity to address the issue in further briefing.
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`Moreover, granting joinder will not prejudice Patent Owner or Apple. As
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`mentioned above, the accompanying Petition does not raise any new ground that is
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`not raised in the CBM2018-00024 petition. Therefore, joinder should not
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`significantly affect the timing in CBM2018-00024. Also, there should be little to
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`no additional cost to Patent Owner or Apple given the absence of new grounds. On
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`the other hand, Visa and the public may be potentially prejudiced if joinder is
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`denied. For example, absent joinder, Patent Owner and Apple might settle and
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`request termination of the proceedings, leaving facially intact a patent that the
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`Board has already found is likely unpatentable.
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`2.
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`No New Grounds Are Presented
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`The Petition does not present any new ground of unpatentability. As
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`mentioned above, the Petition presents for review identical grounds as those
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`instituted in CBM2018-00024. The present Petition is based on the same prior art
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`analysis and expert testimony that was submitted by Apple. The Board has granted
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`joinder where doing so does not introduce any additional arguments. See, e.g.,
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`Hyundai, IPR2014-01543, Paper No. 11 at 2-4; Sony Corp. of Am. v. Network-1
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`Sec. Solutions, Inc., IPR2013-00495, Paper No. 13 at 5-9 (Sep. 16, 2013); Dell Inc.
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`v. Network-1 Solutions, Inc., IPR2013-00385, Paper No. 17, at 6-10 (Jul. 29,
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`2013); Motorola Mobility LLC v. Softview LLC, IPR2013-00256, Paper 10 at 4-10
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`(June 20, 2013).
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`3.
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`Joinder Will Not Negatively Impact the CBM2018-00024
`Trial Schedule
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`Because the Petition copies grounds raised in the CBM2018-00024 petition,
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`including the prior art analysis and expert testimony substantively identical to that
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`provided by Apple, joinder will have no substantial effect on the parties, or prevent
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`the Board from issuing a final written decision in a timely manner. The timing and
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`content of Visa’s petition and motion for joinder minimize any impact to the
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`CBM2018-00024 trial schedule. Moreover, as discussed above, Visa anticipates
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`participating in the proceeding in a limited capacity as an understudy, absent
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`termination of Apple as a party. For example, if the proceedings are joined it is
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`anticipated that no expert witnesses beyond those presented by Apple and Patent
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`Owner will present testimony. Accordingly, Visa does not believe that any
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`extension of the schedule will be required by virtue of joinder of Visa as a
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`petitioner to this proceeding.
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`4.
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`Discovery and Briefing Can Be Simplified
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`Given the Petition is identical to the CBM2018-00024 petition with respect
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`to grounds of unpatentability raised, the Board may adopt procedures similar to
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`those used in other cases to simplify briefing and discovery during trial. See, e.g.,
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`Hyundai, IPR2014-01543, Paper No. 11 at 5; Dell, IPR2013-00385, Paper No. 17
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`at 8-10; Motorola, IPR2013-00256, Paper 10 at 8-10. Specifically, as long as
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`Apple remains a party, the Board may order petitioners to consolidate filings and
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`to limit Visa to no additional filings in its understudy role. As long as Apple
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`remains a party, Visa will not submit any separate filings unless it disagrees with
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`Apple’s position, and in the event of such disagreement, it will request
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`authorization from the Board to submit a short separate filing directed only to
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`points of disagreement with Apple. The Board may allow the Patent Owner a
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`corresponding number of pages to respond to any separate filings. See Dell Inc.,
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`supra, at 8-9.
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`Further, no additional depositions will be needed, and depositions will be
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`completed within ordinary time limits. Because Visa’s petition relies on the same
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`expert and the same declaration as Apple’s petition, only a single deposition is
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`needed for the proposed joined proceeding.
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`Moreover, to the extent that Visa is permitted to participate in the
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`proceedings, Visa will endeavor to coordinate with Apple to consolidate authorized
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`filings, manage questioning at depositions, ensure that briefing and discovery
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`occur within the time normally allotted, and avoid redundancies. Visa will
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`maintain a secondary role in the joined proceeding. As noted above, Visa is willing
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`to take a backseat role, in which it would not file any separate papers without
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`consultation with Apple and prior authorization from the Board. These procedures
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`should simplify briefing and discovery and remove any “complication or delay”
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`that might allegedly be caused by joinder, while providing the parties an
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`opportunity to address all issues that may arise, and avoiding any undue burden on
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`Patent Owner, Apple, and the Board.
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`IV. Conclusion
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`For the foregoing reasons, Visa respectfully requests that this motion be
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`granted and an inter partes review of the challenged claims 1, 2, 4-11, 13-20, and
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`22-26 of the ’813 patent be instituted based on the grounds set forth in the Petition,
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`and that this proceeding be joined with CBM2018-00024.
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`Respectfully submitted,
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`/ Matthew A. Argenti /
`Matthew A. Argenti, Lead Counsel
`Reg. No. 61,836
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`-8-
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`Dated: December 20, 2018
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), this is to certify that I
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`caused to be served a true and correct copy of the foregoing Motion for Joinder by
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`overnight courier (Federal Express or UPS), on this 20th day of December, 2018,
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`on the Patent Owner at the correspondence address of the Patent Owner as follows:
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`LANDO & ANASTASI, LLP
`One Main Street, Suite 1100
`Cambridge, MA 02142
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`UNIVERSAL SECURE REGISTRY, LLC
`59 Sargent Street
`Newton, MA 02458
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`And additional copies have been delivered to counsel for Patent Owner in
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`CBM2018-00024, as follows:
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`QUINN EMANUEL URQUHART & SULLIVAN LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
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`And to counsel for Petitioner Apple Inc. in CBM2018-00024, as follows:
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`WILMER CUTLER PICKERING HALE AND DORR LLP
`60 State Street
`Boston, MA 02109
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`Dated: December 20, 2018
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`Respectfully submitted,
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`/ Matthew A. Argenti /
`Matthew A. Argenti, Lead Counsel
`Reg. No. 61,836
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`-9-
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