`By: Jason R. Mudd, Reg. No. 57,700
`Eric A. Buresh, Reg. No. 50,394
`jason.mudd@eriseip.com
`eric.buresh@eriseip.com
`ERISE IP, P.A.
`6201 College Blvd., Suite 300
`Overland Park, Kansas 66211
`Telephone: (913) 777-5600
`
`Roshan Mansinghani, Reg. No. 62,429
`roshan@unifiedpatents.com
`Unified Patents Inc.
`13355 Noel Road, Suite 1100
`Dallas, TX, 75240
`Telephone: (214) 945-02A00
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`
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`
`
`Motion to Correct, IPR2018-00067
`U.S. Patent 8,577,813
`
`
`
`
`Jonathan Stroud, Reg. No. 72,518
`jonathan@unifiedpatents.com
`Unified Patents Inc.
`1875 Connecticut Ave. NW, Floor 10
`Washington, D.C. 20009
`Telephone: (202) 805-8931
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
` ____________
`
`UNIFIED PATENTS INC.
`Petitioner
`
`v.
`
`UNIVERSAL SECURE REGISTRY LLC
`Patent Owner
`____________
`
`IPR2018-00067
`Patent 8,577,813
` ____________
`
` PETITIONER’S MOTION TO CORRECT A
`CLERICAL MISTAKE UNDER 37 C.F.R. § 42.104(c)
`
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`
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`Motion to Correct, IPR2018-00067
`U.S. Patent 8,577,813
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`Petitioner Unified Patents Inc. (“Petitioner”) files this motion respectfully
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`
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`requesting correction of a clerical mistake in the Petition filed in this proceeding.
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`I.
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`FACTS RELEVANT TO THIS MOTION
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`On October 16, 2017, Petitioner filed its Petition for Inter Partes Review
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`1.
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`of U.S. Patent No. 8,577,813 (the “’813 Patent”). Paper 2, Petition.
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`2.
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`Ground 1 of
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`the Petition challenges certain claims,
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`including
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`independent Claim 1, as obvious over the combination of U.S. Patent 6,016,476 by
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`Maes et al. (“Maes”), U.S. Patent 5,870,723 by Pare et al. (“Pare”), and U.S. Patent
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`Publication 2004/0107170 Al by Labrou et al. (“Labrou”). Petition, at 4, 7.
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`3.
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`Ground 2 of the Petition refers to the combination of Maes, Pare, and
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`Labrou cited in Ground 1 and cites an additional reference, WO 2001/024123 by
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`Burger et al. (“Burger”). Id. at 5, 45. Petitioner cites Burger in Ground 2 for its
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`teachings of the limitations of Claims 6 and 18. Id. at 45-47. Claim 6 depends from
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`Claim 1. EX1001, Claims 1 & 6.
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`4.
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`Claims 7-10 depend from Claim 6, either directly or indirectly. Id. at
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`claims 6-10. Claims 7-9 contain limitations that Petitioner contends are taught by the
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`primary reference, Maes, which was introduced in Ground 1 of the Petition and which
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`is also relied upon as the primary reference in the combination proposed for Ground 2.
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`Petition, at 30-33 (Sec. IV.A.v-Sec. IV.A.vii); id., at 45-47. Claim 10 contains
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`Motion to Correct, IPR2018-00067
`U.S. Patent 8,577,813
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`limitations that Petitioner contends are taught or rendered obvious by Labrou and that
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`Petitioner contends would have been obvious to incorporate into the system of Maes,
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`both of which are introduced in Ground 1 of the Petition. Id. at 33-34 (Sec. IV.A.viii).
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`The combination proposed in Ground 2 also relies on Maes and Labrou, but relies
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`exclusively on Burger for the limitations added by dependent Claim 6. Id. at 45-47.
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`5.
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`Between September 2017 and October 2, 2017, in the process of copying
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`and pasting into a draft petition, associate Michelle Callaghan mistakenly transcribed
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`prior art mappings and arguments for Maes related to Claims 7-9 and for Labrou
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`related to Claim 10 into Ground 1 of the draft petition, instead of including these
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`mappings and arguments in Ground 2 of the draft petition where they were intended
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`to be inserted. See Callaghan Decl. (EX1020) at ¶¶2-5. Ms. Callaghan transmitted the
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`draft petition with the mistake to Jason Mudd for review on October 2, 2017. See id.
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`at ¶5. Mr. Mudd provided comments for Ms. Callaghan to incorporate into the draft
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`petition but failed to notice the mistake. Id. at ¶6.
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`6.
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`On multiple dates between October 2, 2017, and the filing date of
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`October 16, 2017, various individuals reviewed the petition without noticing Ms.
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`Callaghan’s error. See id.
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`7.
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`On February 7, 2018, Ms. Callaghan first identified the mistake upon
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`reading the Preliminary Response filed by Patent Owner Universal Secure Registry
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`LLC (“PO”), which contended that Ground 2 contained the grounds for obviousness
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`Motion to Correct, IPR2018-00067
`U.S. Patent 8,577,813
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`of Claim 6 (the limitations for which Burger was cited), while Ground 1 had
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`incorrectly included Claims 7-10, which depend directly or indirectly from Claim 6.
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`See id. at ¶7; see also Paper 6, Preliminary Response at 23-24.
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`8.
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`Petitioner contacted PO via e-mail on February 16, 2018 to indicate that
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`Petitioner intended to seek authorization to file a motion to correct the mistake, and
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`PO requested to schedule a telephonic meet and confer with Petitioner, which was
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`held on February 21, 2018. PO informed Petitioner on February 22, 2018 that PO
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`intended to oppose the motion. On February 23, 2018, the parties agreed upon the
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`content of a joint e-mail that was sent to the Board in which Petitioner requested
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`authorization to file this motion. The Board held a conference call on February 27,
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`2018, and the Board granted Petitioner authorization to file this motion (Paper 8).
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`II. RELIEF REQUESTED
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`
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`Claims 7-10 were mistakenly entered under Ground 1 instead of Ground 2 in
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`the Petition. Parts v-viii of Section V.A (Ground 1) of the Petition were intended to
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`be written under Section V.B (Ground 2) of the Petition, after the grounds for
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`Claim 6, from which each of Claims 7-10 depend, either directly or indirectly.
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`Petitioner respectfully requests that it be allowed to correct its Petition by shifting
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`the discussion for Claims 7-10 from Ground 1 into Ground 2, which contains the
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`discussion for Claim 6. No text containing the discussion for Claims 7-10 is being
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`altered except for adjusting the heading numbering. Per the Board’s request, a
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`Motion to Correct, IPR2018-00067
`U.S. Patent 8,577,813
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`redlined proposed Corrected Petition tracking the proposed corrections has been
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`filed as EX1021. The proposed edits minimize the changes necessary to correct
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`the mistake and include the following:
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`i)
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`correcting the chart on pages 3-4 to remove Claims 7-10 from Ground 1 and
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`include them in Ground 2;
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`ii) correcting the headings on pages 7 and 45 of the Petition to move Claims 7-10
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`from Ground 1 to Ground 2;
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`iii) moving Parts v, vi, vii, and viii (Claims 7-10) of Section V.A (Ground 1) to
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`Section V.B (Ground 2) under the new numbered headings of Parts ii, iii, iv,
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`and v, respectively, and re-numbering the heading for claim 18 as Part vi; and
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`iv) updating the Table of Contents, as well as some internal cross-references to
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`update section heading numbers.
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`III. ARGUMENT IN SUPPORT OF RELIEF REQUESTED
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`
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`The proposed changes should be applied because they relate to a non-
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`substantive, clerical transcription error made by a subordinate attorney that was not
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`identified prior to filing, and Petitioner promptly sought to correct its mistake after
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`discovering it from review of the Preliminary Response. See 37 C.F.R. § 42.104(c)
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`(“A motion may be filed that seeks to correct a clerical or typographical mistake in
`
`the petition.”). The proposed changes rely on the exact same text applying Maes to
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`dependent Claims 7-9 and applying Labrou to dependent Claim 10. That is,
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`Motion to Correct, IPR2018-00067
`U.S. Patent 8,577,813
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`Petitioner’s requested correction seeks to merely shift the exact same text for the
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`sections regarding Claim 7-10 from Ground 1 into Ground 2, which had already
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`included Maes and Labrou. Petitioner is not requesting to alter any of the text in
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`these sections (other than updating heading numbering), and, thus, Petitioner is not
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`requesting to make any substantive changes to arguments or citations to the applied
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`prior art—the grounds for claims 7-10 will rise or fall based on what was already
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`in the Petition, other than correcting the error in their placement in the Petition.
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`See, e.g., Amkor Technology, Inc. v. Tessera Inc., IPR2013-00242, Paper 32, at 5-6
`
`(PTAB Aug. 29, 2013) (allowing correction of copying and pasting error by
`
`subordinate attorney where no new analysis was added by correction); see also id.,
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`Paper 12, at 1.
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`
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`Additionally, Ground 2 of the Petition relies on Burger exclusively for
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`teaching the limitations added by dependent Claim 6 and combines Burger with
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`the same combination of references already relied upon in Ground 1 (Maes, Pare,
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`and Labrou). Petition, 45-46. And the Petition already argues in Ground 2 that it
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`would have been obvious to combine Burger with this same art. Id. Petitioner’s
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`proposed correction does not seek to alter its motivation to combine argument.
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`Petitioner’s proposed correction,
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`therefore, merely seeks
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`to correct an
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`organizational clerical error by moving the same arguments and citations to prior
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`art for claims 7-10 from Ground 1 into Ground 2 where they were intended to be,
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`Motion to Correct, IPR2018-00067
`U.S. Patent 8,577,813
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`with no substantive changes. See also, e.g., Merck Sharp & Dohme Corp v. Ono
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`Pharmaceutical Co., Ltd. et al., Case IPR2016-01217, Paper 10, at 3-4 (PTAB Oct.
`
`3, 2016) (allowing correction of petition to move inadvertent listings of challenged
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`claims from one ground to another); see also id., Paper 8, at 2-3.
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`
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`Correction of this mistake will not prejudice Patent Owner or sacrifice the
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`notice function of the Petition. Patent Owner recognized that Burger was the only
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`reference cited for the limitations of Claim 6 and that Claims 7-10 depended from
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`Claim 6. See Preliminary Response at 23-24. In addressing Ground 2, PO already had
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`an opportunity to address whether Burger teaches the limitations of Claim 6 and
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`Patent owner already provided responses to Petitioner’s substantive arguments
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`regarding the motivation to combine Burger. Petition, at 24-26. PO also already had
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`an opportunity to address Petitioner’s same substantive arguments regarding the art
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`specifically applied to Claims 7-10—which are unaffected by this correction.
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`
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`Petitioner understands from the call with the Board that PO contends it
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`strategically chose to rely exclusively on the mistake in the Petition for PO’s response
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`regarding Claims 7-10, rather than present further argument regarding Claims 7-10
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`even though it had sufficient additional word count available to do so. If the Board
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`deems it necessary and appropriate, Petitioner would not oppose a reasonable
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`supplemental Preliminary Response to address any prejudice alleged by PO. Per the
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`Board’s request, Petitioner proposes that any supplement: i) be limited in scope to
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`Motion to Correct, IPR2018-00067
`U.S. Patent 8,577,813
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`addressing only Claims 7-10 because the correction only affects these claims, and ii)
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`be filed within one month and be limited to no more than ten pages given the limited
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`scope of the correction (i.e. about four full pages of text limited to Claims 7-10).
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`Further, as discussed on the call, Petitioner has not been served with any
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`complaint and this correction, therefore, does not implicate any 1-year time bar.
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`Forcing Petitioner to re-file a new petition to make this correction would not only
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`needlessly tax Board resources, it would be contrary to the just, speedy, and
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`inexpensive resolution of this dispute. See 37 C.F.R. § 42.1(b); NetApp, Inc. v.
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`Intellectual Ventures II LLC, IPR2017-00276, Paper 12, at 3 (PTAB May 5, 2017).
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`
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`Given the clerical nature of the mistake, lack of prejudice to PO, and
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`Petitioner’s prompt efforts to correct the issue upon its discovery, the proposed
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`corrections are appropriate under Rule 104(c). See, e.g., ABB Inc. v. ROY-G-BIV
`
`Corp., IPR2013-00063, Paper 21, at 7 (PTAB Jan. 16, 2013) (Rule 104(c) is
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`“remedial in nature” and should be “liberally applied”) (citing Tcherepnin v. Knight,
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`389 U.S. 332, 336 (1967)).
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`IV. CONCLUSION
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`For the forgoing reasons, Petitioner respectfully requests that the Board
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`apply the above-proposed corrections to Petitioner’s Petition for Inter Partes
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`Review. Further, Petitioner certifies the suggested correction will not cause the
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`Petition to exceed the word count limit of 37 C.F.R. §42.24.
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`Dated: March 2, 2018
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`Motion to Correct, IPR2018-00067
`U.S. Patent 8,577,813
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`Respectfully submitted,
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`
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`BY: /s/ Jason R. Mudd
`
`
`Jason R. Mudd, Reg. No. 57,700
`Roshan Mansinghani, Reg. No. 62,429
`Eric A. Buresh, Reg. No. 50,394
`Jonathan Stroud, Reg. No. 72,518
`
`ATTORNEYS FOR PETITIONER
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`Motion to Correct, IPR2018-00067
`U.S. Patent 8,577,813
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`UPDATED EXHIBIT LIST
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`
`Previously Filed by Petitioner:
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`Exhibit 1001 U.S. Patent 8,577,813 (“’813 Patent”)
`Exhibit 1002 File History for U.S. Patent 8,577,813 (“File History”)
`Exhibit 1003 U.S. Patent 6,016,476 to Maes et al. (“Maes”)
`Exhibit 1004 U.S. Patent 5,870,723 to Pare et al. (“Pare”)
`Exhibit 1005 U.S. Pub. US 2004/0107170 Al to Labrou et al. (“Labrou”)
`Exhibit 1006 WO 2001/024123 to Burger et al. (“Burger”)
`Exhibit 1007 U.S. Patent 7,865,448 to Pizarro (“Pizarro”)
`Exhibit 1008 U.S. Patent Application Publication 2002/0178364 (“Weiss I”)
`Exhibit 1009 Declaration of Dr. Eric Cole (“Cole Decl.”)
`Exhibit 1010 Curriculum Vitae of Dr. Eric Cole (“Cole CV”)
`Exhibit 1011 U.S. Patent 5,615,277 to Hoffman (1994)
`
`Exhibit 1012
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`Jin et al., Biohashing: two factor authentication featuring
`fingerprint data and
`tokenized
`random number, Pattern
`Recognition 37 (11), pp. 2245-2255 (2004) (“Jin”)
`Exhibit 1013 U.S. Patent 8,751,801 to Harris et al. (2005) (“Harris”)
`Exhibit 1014 U.S. Publication No. 2003/0219121 to van Someren (2002) (“van
`Someren”)
`Exhibit 1015 Bruce Schneier, Applied Cryptography, 2d Ed (1996) (“Schneier”)
`Exhibit 1016 American Bankers Association, Financial
`Institution Key
`Management (Wholesale), ANSI X9.17 (1995) (“ANSI X9.17”)
`Exhibit 1017 WO Publication No. 2001/06699 to Duane et al. (2001) (“Duane”)
`Exhibit 1018 U.S. Patent 6,950,939 to Tobin (2001) (“Tobin”)
`Exhibit 1019 U.S. Patent 4,998,279 to Weiss (1989)
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`Currently Filed by Petitioner:
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`Exhibit 1020 Declaration of Michelle Callaghan (“Callaghan Decl.”)
`Exhibit 1021 Redline Proposed Corrected Petition (“Corrected Petition”)
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`Motion to Correct, IPR2018-00067
`U.S. Patent 8,577,813
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that on March 2, 2018, a complete and entire copy
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`of the foregoing Motion to Correct and accompanying exhibits were served on
`Patent Owner by sending via electronic mail, as consented to by Patent Owner, to
`the following counsel of record for Patent Owner:
`
`James M. Glass
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Telephone: (212) 849-7000
`Email: jimglass@quinnemanuel.com
`
`Tigran Guledjian
`Christopher A. Mathews
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`865 South Figueroa Street, 10th Floor
`Los Angeles, CA 90017
`Telephone: (213) 443-3000
`Email: tigranguledjian@quinnemanuel.com
`Email: chrismathews@quinnemanuel.com
`
`
`
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`BY: /s/ Jason R. Mudd
`Jason R. Mudd, Reg. No. 57,700
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