Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
`Paper No. 13
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`UNIFIED PATENTS INC.
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY LLC
`Patent Owner
`________________
`
`Case IPR2018-00067
`U.S. Patent No. 8,577,813
`________________
`
`
`PATENT OWNER’S SUPPLEMENTAL PRELIMINARY RESPONSE
`
`
`
`
`
`U.S. Patent No. 8,577,813
`Paper No. 13
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`UNIFIED PATENTS INC.
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY LLC
`Patent Owner
`________________
`
`Case IPR2018-00067
`U.S. Patent No. 8,577,813
`________________
`
`
`PATENT OWNER’S SUPPLEMENTAL PRELIMINARY RESPONSE
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
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`BACKGROUND ............................................................................................. 1
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`III. THE PETITION FAILS TO ADDRESS EACH AND EVERY
`LIMITATION OF CLAIM 10 ......................................................................... 1
`
`IV. THE PETITION LACKS MOTIVATION TO COMBINE LABROU
`AND MAES IN CLAIM 10 ............................................................................. 2
`
`V.
`
`CONCLUSION ................................................................................................ 6
`
`
`
`i
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`Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
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`
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`TABLE OF AUTHORITIES
`
`Cases
`
`Apple Inc., v. Contentguard Holdings, Inc.,
`IPR2015-00450, Paper No. 9 (P.T.A.B. June 29, 2015) ....................................... 6
`
`Cisco Sys., Inc. v. C-Cation Techs., LLC,
`IPR2014-00454, Paper No. 12 (P.T.A.B. Aug. 29, 2014) ..................................... 5
`
`Innogenetics, N.V. v. Abbott Labs.,
`512 F.3d 1363 (Fed. Cir. 2008) ............................................................................. 4
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) .........................................................................4, 5
`
`Kinetic Techs., Inc. v. Skyworks Sols., Inc.,
`No. IPR2014-00529, Paper No. 8 (P.T.A.B. Sept. 23, 2014) ................................ 4
`
`KSR Int’l. Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ............................................................................................... 3
`
`Rohm and Haas Co. v. Brotech Corp.,
`127 F.3d 1089 (Fed. Cir. 1997) ............................................................................. 5
`
`Statutory Authorities
`
`
`
`35 U.S.C. § 103 ......................................................................................................1, 6
`
`
`Rules and Regulations
`
`37 C.F.R. § 42.6(a)(3) ................................................................................................ 5
`
`
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`
`
`
`
`
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`ii
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`
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`Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
`
`I.
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`INTRODUCTION
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`The corrected Petition should be denied because the Petition (1) fails to
`
`identify in the references the function required by the memory of claim 10 and (2)
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`further fails to provide anything more than a bare conclusion as to why a POSITA
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`would have combined the references the Petitioner uses as its basis to assert
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`unpatentability of claim 10. Specifically, claim 10 requires “a memory” that
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`“store[s] an electronic serial number of an electronic ID device,” yet the Petition is
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`devoid of any mention of where or how the prior art discloses this required function.
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`Likewise, the Petition and declaration fail to explain how or why the cited references
`
`should be combined, and thus lack adequate motivation to support obviousness of
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`claim 10 as required by 35 U.S.C. § 103.
`
`II. BACKGROUND
`
`The Order entered March 14, 2018 (Paper 11) directed Patent Owner to file a
`
`Supplemental Preliminary Response addressing claims 7-10. Claims 7-10 should
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`not be instituted for the reasons set forth in Patent Owner’s original Preliminary
`
`Response (Paper 6). This Response is limited to only dependent claim 10.
`
`III. THE PETITION FAILS TO ADDRESS EACH AND EVERY
`LIMITATION OF CLAIM 10
`
`Institution on claim 10 should be denied because the Petition fails to identify
`
`where the prior art discloses the “memory” that “store[s] a electronic serial number
`
`of the electronic ID device,” as recited in claim 10.
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`
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`1
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`Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
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`Dependent claim 10 requires a “memory” that is “coupled to the processor,”
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`and which further performs a very specific function: it must “store an electronic
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`serial number of the electronic ID device” that is further used by the processor to
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`generate a seed. Ex. 1001 at 52:40-65.
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`Despite this express requirement for the memory of claim 10, the Petition is
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`completely silent as to how or even if Labrou includes a memory that performs this
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`function. Indeed, the Petition merely states, without any explanation, that “Labrou
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`teaches that the device includes a processor and memory, and that the processor of
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`the device is used for carrying out the transaction security protocols outlined in the
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`specification.” Pet. at 46.1 Furthermore, the cited paragraph of Labrou states, in its
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`entirety, “Processor and RAM memory,” and cited claim 6 does not even mention a
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`memory. Ex. 1005 (Labrou) at ¶ 104, claim 6; see Pet. at 46.
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`Claim 10, however, does not simply require a memory; it requires a memory
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`that stores “an electronic serial number of the electronic ID device.” Simply pointing
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`to a “memory” thus fails to provide any proof of this limitation, and on this basis,
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`institution on claim 10 should be denied.
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`IV. THE PETITION LACKS MOTIVATION TO COMBINE LABROU
`AND MAES IN CLAIM 10
`
`In addition to failing to identify a memory that stores an “electronic serial
`
`
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`1 Citations are to the Amended Petition (Paper 12).
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`2
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`Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
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`number of the electronic ID device,” the Petition fails to provide any explanation as
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`to why a POSITA would have combined the specific memory of Labrou with the
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`memory of Maes. The Petition is devoid of any explanation, for example, as to why
`
`a POSITA would have modified Maes’ memory to further store electronic serial
`
`numbers or to add additional memory to perform the function of claim 10. This
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`should, of course, come as no surprise, since the Petition fails to mention even in
`
`passing that the prior art disclosed the memory required by claim 10.
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`Instead, the Petition relies on broad, conclusory statements to attempt to
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`establish that a POSITA would have been led to combine Labrou with Maes to teach
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`the limitations of claim 10. The entirety of the Petition’s motivation to combine
`
`argument is relegated to these six lines:
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`A PHOSITA would have found it obvious to incorporate the teachings
`of Labrou into the system of Maes as a known way to generate a non-
`predictable value, such as a random number, from a seed because the
`use of seeds to generate random numbers for encrypting information
`was well known in the art, as evidenced by the ANSI X9.17 standard.
`Cole Decl. (EX1009) at ¶58 (citing E1016, ANSI X9.17, 1995)).
`
`Pet. at 46. The Petition’s conclusion that elements are “well known in the art” is
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`insufficient to support obviousness and is exactly the type of conclusory motivation
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`condemned by the Federal Circuit and PTAB. Pet. at 46; KSR Int’l. Co. v. Teleflex,
`
`Inc., 550 U.S. 398, 418 (2007) (“a patent composed of several elements is not proved
`
`obvious merely by demonstrating that each of its elements was, independently,
`
`
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`3
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`Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
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`known in the prior art”); see Kinetic Techs., Inc. v. Skyworks Sols., Inc., No.
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`IPR2014-00529, Paper No. 8 at 13-15 (P.T.A.B. Sept. 23, 2014) (finding the
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`rationale that the proposed combination “involves no more than a combination of
`
`known elements” insufficient motivation to combine).
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`In particular, the Petition’s stated motivation to combine fails to explain how
`
`or why the cited references should be combined to render the claimed invention
`
`obvious. Pet. at 46; see Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d
`
`1342, 1368 (Fed. Cir. 2012) (noting that “[the Court] must still be careful not to
`
`allow hindsight reconstruction of references to reach the claimed invention without
`
`any explanation as to how or why the references would be combined to produce the
`
`claimed invention.”) (quoting Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363,
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`1374 n.3). The PTAB has routinely rejected such conclusory argument as an
`
`inadequate substitute for “a fact-based analysis of the proposed combination of
`
`references necessary to support those conclusions.” See, e.g., Kinetic Techs., Inc.
`
`v. Skyworks Sols., Inc., No. IPR2014-00529, Paper No. 8 at 15 (P.T.A.B. Sept. 23,
`
`2014).
`
`The cited paragraph of Dr. Cole’s Declaration fails to salvage the Petition’s
`
`conclusory statements.2 See Pet. at 46. Indeed, the cited Declaration merely parrots
`
`
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`2 To the extent Petitioner attempts to rely on arguments presented only in the Cole
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`
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`4
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`
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`the language of the Petition and is just as conclusory:
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`Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
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`In my opinion, it would have been obvious to incorporate Labrou’s
`teachings of storing a device I.D. and using the device I.D. and a time-
`stamp to generate a random sequence number for use in encrypting the
`user’s transaction information into the system of Maes, as modified by
`either Pare or Labrou as discussed with respect to claim 1. A PHOSITA
`would have recognized that a time-value was a well-known seed for
`generating a random number. Indeed, Pare acknowledges that
`techniques for generating random numbers were known and cites the
`ANSI X9.17 standard, which, as explained above, teaches using a time-
`value to generate random numbers. Just as with the combination of
`Labrou and Maes with respect to claim 1, such a combination would
`have required only minor modifications in software in Maes, which
`already contemplates encrypting authentication information, to apply
`the more specific teachings of Labrou regarding known ways to
`generate a random number from a seed.
`
`Ex. 1009 at ¶58.
`
`Similar to the Petition, Dr. Cole’s testimony should be disregarded because it
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`fails to explain how or why a skilled artisan would make this specific change. See
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d at 1368 (Fed. Cir. 2012);
`
`see also Rohm and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997)
`
`(“Nothing in the rules or in our jurisprudence requires the fact finder to credit the
`
`unsupported assertions of an expert witness.”). Furthermore, Dr. Cole’s statement
`
`that the combination requires minor modifications merely describes the effort
`
`
`
`Declaration (e.g., Pet. at 46 (citing Ex. 1009 at ¶¶ 58)), arguments may not be
`incorporated by reference from one document into another document. 37 C.F.R.
`§ 42.6(a)(3); see Cisco Sys., Inc. v. C-Cation Techs., LLC, Case IPR2014-00454, slip
`op. at 7–10 (P.T.A.B. Aug. 29, 2014) (Paper 12).
`
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`5
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`Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
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`purportedly required to perform the change, not why a skilled artisan would make
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`this specific change. See Apple Inc., v. Contentguard Holdings, Inc., IPR2015-
`
`00450, Paper No. 9, at 17-19 (P.T.A.B. June 29, 2015) (finding insufficient the
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`rationale that the combination “would require only routine and predictable effort”).
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`V. CONCLUSION
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`Patent Owner respectfully requests the Board not institute on claim 10 because
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`the Petition fails to disclose each and every recited limitation. In addition, Patent
`
`Owner respectfully requests the Board not institute on claim 10 because the Petition
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`lacks adequate motivation to support obviousness as required by 35 U.S.C. § 103.
`
`Date: April 13, 2018
`
` Respectfully submitted,
`
`By: /s/ James M. Glass, Reg. No. 46,729
` James M. Glass (Reg. No. 46,729)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Tel: (212) 849-7000
`Fax: (212) 849-7100
`Email: jimglass@quinnemanuel.com
`
`Lead Attorney for Patent Owner –
`Universal Secure Registry LLC
`
`
`
`
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`6
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`Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certify that PATENT
`
`OWNER’S SUPPLEMENTAL PRELIMINARY RESPONSE, and all exhibits and
`
`other documents filed together with this supplemental preliminary response, were
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`served on April 13, 2018 by filing these documents through the Patent Review
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`Processing System, as well as by e-mailing copies to:
`
`
`
`Jason R. Mudd, Reg. No. 57,700
`jason.mudd@eriseip.com
`
`Eric A. Buresh, Reg. No. 50,394
`eric.buresh@eriseip.com
`
`ptab@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) 945-0200
`
`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
`
`7
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`Date: April 13, 2018
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` Respectfully submitted,
`
`Case No. IPR2018-00067
`U.S. Patent No. 8,577,813
`
`By: /s/ James M. Glass, Reg. No. 46,729
` James M. Glass (Reg. No. 46,729)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`jimglass@quinnemanuel.com
`
`
`Lead Attorney for Patent Owner –
`Universal Secure Registry LLC
`
`
`
`
`
`
`8
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