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Inter Partes Review IPR2018-00067
`U.S. Patent No. 8,577,813
`
`
`
`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 UPDATED EXHIBIT LIST
`
`
`
`
`1
`
`

`

`Inter Partes Review IPR2018-00067
`U.S. Patent No. 8,577,813
`
`
`
`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
`
`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)
`Exhibit 1020 Declaration of Michelle Callaghan (“Callaghan Decl.”)
`Exhibit 1021 Redline Proposed Corrected Petition (“Corrected Petition”)
`Exhibit 1022 Declaration of Dr. Eric Cole in Support of Petitioner’s Opposition to
`Patent Owner’s Contingent Motion to Amend (“Cole MTA Decl.”)
`Exhibit 1023 U.S. Patent 5,280,527 to Gullman et al. (“Gullman”)
`Exhibit 1024 U.S. Patent Publication 2002/0172535 to Jakobsson et. al.
`(“Jakobsson”)
`Exhibit 1025 U.S. Patent 5,479,512 to Weiss (“Weiss”)
`Exhibit 1026 U.S. Patent Application 14/071126
`Exhibit 1027
`John von Neumann, Various techniques used in connection with
`random digits, National Bureau of Standards Applied
`Mathematics Series, pp. 36–38 (1951) (“von Neumann”)
`Exhibit 1028 U.S. Patent 5,778,069 to Thomlinson et al. (“Thomlinson”)
`
`2
`
`

`

`Inter Partes Review IPR2018-00067
`U.S. Patent No. 8,577,813
`Exhibit 1029 U.S. Patent 6,199,163 to Dumas et al. (“Dumas”)
`Exhibit 1030 U.S. Patent 6,901,145 to Bohannon et al. (“Bohannon”)
`Exhibit 1031 Feng Hao, Ross Anderson, and John Daugman, Combining
`cryptography with biometrics effectively, Technical Report,
`University of Cambridge (July 2005) (“Hao”)
`Exhibit 1032 Declaration of Dr. Eric Cole in Support of Petitioner’s Reply to
`Patent Owner’s Response (“Cole Reply Decl.”)
`Exhibit 1033 Deposition Transcript of Dr. Markus Jakobsson (“Jakobsson Tr.”)
`Exhibit 1034 U.S. Pub. 2003/0093690 to Kemper (“Kemper”)
`Exhibit 1035 U.S. Pub. 2004/0111343 to Lindvall (“Lindvall”)
`Exhibit 1036 Declaration of Kevin Jakel (“Jakel Decl.”) (Filed Under Seal)
`Exhibit 1037 Deposition Transcript of Kevin Jakel (“Jakel Tr.”) (Filed Under
`Seal)
`Exhibit 1038 Universal Secure Registry LLC v. Apple Inc. et al., Case 1:17-cv-
`00585-CFC-SRF, Dkt. 1, Complaint for Patent Infringement (D.
`Del. May 21, 2017) (“Complaint”)
`Exhibit 1039 List of AIA Petitions for Universal Secure Registry, LLC
`(“Petition List”)
`Exhibit 1040 Unified E-mail Newsletter dated November 15, 2017
`Exhibit 1041 Unified E-mail Newsletter dated June 21, 2018
`Exhibit 1042 Petitioner’s Oral Hearing Demonstratives
`Exhibit 1043 Redacted version of Exhibit 1036
`Exhibit 1044 Redacted version of Exhibit 1037
`Exhibit 1045
`Joint Proposed Redacted Final Written Decision
`
`
`
`DATE: May 15, 2019
`
`
`
`
`
`Respectfully submitted,
`
`
`
`ERISE IP, P.A.
`
`
`
`BY: /s/ Jason R. Mudd
`Jason R. Mudd, Reg. No. 57,700
`Eric A. Buresh, Reg. No. 50,394
`Mark C. Lang, Reg. No. 55,356
`7015 College Blvd., Suite 700
`Overland Park, KS 66211
`P: (913) 777-5600
`F: (913) 777-5601
`jason.mudd@eriseip.com
`
`3
`
`

`

`Inter Partes Review IPR2018-00067
`U.S. Patent No. 8,577,813
`eric.buresh@eriseip.com
`mark.lang@eriseip.com
`
`ATTORNEYS FOR PATENT OWNER
`
`4
`
`

`

`Inter Partes Review IPR2018-00067
`U.S. Patent No. 8,577,813
`CERTIFICATE OF SERVICE
`
`
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on May 15,
`2019, Petitioner’s Updated Exhibit List and Exhibit 1045 was served via electronic
`service on the following counsel of record for Patent Owner:
`
`
`• jimglass@quinnemanuel.com
`• nimahefazi@quinnemanuel.com
`• tigranguledjian@quinnemanuel.com
`• chrismathews@quinnemanuel.com
`
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`BY: /s/ Jason R. Mudd
`
`Jason R. Mudd, Reg. No. 57,700
`
`ATTORNEY FOR PETITIONER
`
`i
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`

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