UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY, LLC,
`
`Patent Owner.
`
`_________________________________________
`
`Case IPR2018-00809
`
`U.S. Patent No. 9,530,137
`
`_________________________________________
`
`PETITIONER’S MOTION TO STRIKE
`
`PORTIONS OF PATENT OWNER’S PAPER 31 AND EXHIBIT 2021
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY, LLC,
`
`Patent Owner.
`
`_________________________________________
`
`Case IPR2018-00809
`
`U.S. Patent No. 9,530,137
`
`_________________________________________
`
`PETITIONER’S MOTION TO STRIKE
`
`PORTIONS OF PATENT OWNER’S PAPER 31 AND EXHIBIT 2021
`
`
`
`
`
`
`
`
`
`Table of Contents
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`IPR2018-00809
`US Pat. No. 9,530,137
`Petitioner’s Motion to Strike
`
`
`Page
`
`I.
`
`II.
`
`PATENT OWNER’S CMTA REPLY AND ITS EXPERT’S
`DECLARATION PRESENT NEW PURPORTED WRITTEN
`DESCRIPTION SUPPORT. ............................................................................ 1
`
`THE BOARD’S REGULATIONS FORECLOSE PATENT OWNER’S
`NEW ARGUMENTS AND SUPPORT. ......................................................... 5
`
`A. USR May Not Present New Theories In Its CMTA Reply. .................. 5
`
`B.
`
`The Board Should Strike Patent Owner’s New Theories For Written
`Description Support. .............................................................................. 6
`
`III. CONCLUSION ................................................................................................ 8
`
`
`
`i
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`
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`In its Reply in further support of its Conditional Motion to Amend
`
`IPR2018-00809
`US Pat. No. 9,530,137
`Petitioner’s Motion to Strike
`
`
`(“CMTA”) (Paper 31) and in the accompanying expert declaration (Exhibit 2021),
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`the Patent Owner cites to new portions of the ’660 application as part of a new
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`theory for written description support for claims 13 and 21 that its CMTA did not
`
`include (Paper 19). Pursuant to Paper 34, Petitioner moves to strike this argument
`
`and evidence.
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`Exhibits 1136 and 1137, submitted herewith, are versions of Paper 31 and
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`Exhibit 2021 that highlight the new argument and evidence that Petitioner seeks to
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`strike.
`
`I.
`PATENT OWNER’S CMTA REPLY AND ITS EXPERT’S
`DECLARATION PRESENT NEW PURPORTED WRITTEN
`DESCRIPTION SUPPORT.
`
`In its CMTA, Patent Owner proposed amending claims 13 and 21 to recite,
`
`inter alia, the following limitations:
`
` 13[c]: “ . . . the first authentication information including a multi-digit
`
`identification (ID) code allowing a networked validation-information
`
`entity to map the multi-digit ID code to a credit and/or debit card
`
`number . . .”
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`
`
`
`
`
`
`1
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`
`
` 13[e]: “ . . . the second device being the networked validation-
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`IPR2018-00809
`US Pat. No. 9,530,137
`Petitioner’s Motion to Strike
`
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`information entity configured to enable the credit and/or debit card
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`transaction based on authentication of the user . . .”
`
` 21[d]: “. . . the first authentication information including a multi-digit
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`identification (ID) code allowing a networked validation-information
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`entity to map the multi-digit ID code to a financial account
`
`number . . .”
`
` 21[f]: “the second device being the networked validation-information
`
`entity configured to enable the financial transaction based on
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`authentication of the user”
`
`CMTA at B1, B4.
`
`As explained below, while Patent Owner’s CMTA contended that these
`
`limitations are supported by an embodiment where a USR sends a multi-digit
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`public code to a credit card company, which then performs the claimed mapping,
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`Patent Owner now argues that these limitations are supported by a different
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`embodiment in which a user’s electronic ID device sends a code to a USR, which
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`then allegedly performs the claimed mapping.
`
`The CMTA contended that the limitations listed above are supported at least
`
`in part at page 23, line 34 through page 24, line 2 of the ’660 application (Exhibit
`
`2
`
`
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`2006). CMTA at 7-8. The ’660 application states there that a universal secure
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`IPR2018-00809
`US Pat. No. 9,530,137
`Petitioner’s Motion to Strike
`
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`registry (“USR”) may “instead transmit[], on approval, a multidigit public ID code
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`for the credit card holder which the credit card company can map to the correct
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`credit card number.” Exhibit 2006, 23:34-24:2. Thus, Patent Owner’s originally-
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`cited support related only to replacing transmittal of a credit card number to a
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`credit card company with a multidigit public ID code to be mapped to a credit card
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`number—not to any communications between a user’s electronic ID device and the
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`USR.
`
`In Petitioner’s CMTA Opposition, Petitioner demonstrated that the ’660
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`application does not provide written description support for the proposed, amended
`
`claimed functions of the “networked validation-information entity” and the
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`“second device” being co-located. CMTA Opposition, Paper 24, 23-24. Indeed, in
`
`the ’660 application, the claimed “second device” is the disclosed USR, while the
`
`claimed “networked validation-information entity” is the disclosed credit card
`
`company. However, the ’660 application does not disclose that the second device
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`is the same entity as the networked validation-information entity proposed
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`limitations 13[e] and 21[f] require. See id.
`
`In its CMTA Reply, however, Patent Owner cites to new portions of the
`
`’660 application in an attempt to cure what Petitioner argued in its Opposition was
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`3
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`
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`a lack of support. In particular, Patent Owner expands its citation on pages 23 and
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`IPR2018-00809
`US Pat. No. 9,530,137
`Petitioner’s Motion to Strike
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`24 to include discussion of communication directed from a user’s electronic device
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`to a USR:
`
`The specification discloses that a code, which has multiple digits and
`serves to identify the user, is first transmitted from the user’s
`electronic ID device to the merchant, and is ultimately sent to the
`USR (e.g., networked validation-information entity). Id. at FIG. 7,
`23:23-30 (“[The user] presents the electronic ID device with the code
`to the merchant…The merchant transmits to the credit card company
`(1) the code from the electronic ID device…The credit card company
`takes this information and passes the code from the electronic ID
`device to the USR.”).
`
`
`
`CMTA Reply at 23-24.
`
`Neither Patent Owner’s CMTA nor Dr. Jakobsson’s supporting declaration
`
`referenced page 23, lines 23-30 of the ’660 application as support for any of
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`limitations 13[c], 13[e], 21[d], or 21[f]. Thus, Patent Owner’s CMTA Reply
`
`introduces a new theory that the claimed “multi-digit public ID code” is supported
`
`by the code sent from the user’s electronic device and received by the USR
`
`(Exhibit 2006, ’660 Application, 23:20-30), rather than the “multidigit public ID
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`code” sent from the USR to the credit card company (id., 23:34-24:2). Regardless
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`of the merits of such an argument, USR cannot now present new theories for
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`written description support.
`
`4
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`
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`Similarly, although it did not cite it in the CMTA for any of limitations
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`IPR2018-00809
`US Pat. No. 9,530,137
`Petitioner’s Motion to Strike
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`13[c], 13[e], 21[d], or 21[f], Patent Owner now cites to additional functionality of
`
`the USR in its CMTA Reply as alleged support for the claimed mapping:
`
`The USR (e.g., networked validation-information entity) then
`maps/accesses the user’s real credit card number using the code. See
`id. at FIG. 7, 23:30-32 (“The USR software 18 determines if the code
`is valid, or was valid at the time offered, and if valid accesses the
`user’s credit card information and transmits the appropriate credit card
`number to the credit card company (708).”).
`
`
`
`CMTA Reply at 24 (emphasis altered).
`
`Thus, USR’s CMTA Reply also introduces a new theory that the limitation
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`“map the multi-digit ID code to a credit and/or debit card number” finds written
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`description support in the functionality of the USR (Exhibit 2006, ’660 application,
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`23:30-32) rather than the credit card company (id., 24:1-2). The Board should
`
`strike these new theories from Patent Owner’s CMTA Reply and Exhibit 2021.
`
`II. THE BOARD’S REGULATIONS FORECLOSE PATENT OWNER’S
`NEW ARGUMENTS AND SUPPORT.
`A. USR May Not Present New Theories In Its CMTA Reply.
`
`A motion to strike is appropriate where “a party believes that a brief filed by
`
`the opposing party raises new issues, is accompanied by belatedly presented
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`evidence, or otherwise exceeds the proper scope of reply . . . it may request
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`authorization to file a motion to strike.” PTAB Trial Practice Guide August 2018
`
`5
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`
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`Update, 17. A reply is limited to “respond[ing] to arguments raised in the
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`IPR2018-00809
`US Pat. No. 9,530,137
`Petitioner’s Motion to Strike
`
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`corresponding opposition.” 37 C.F.R. § 42.23(b). Therefore, because USR bears
`
`the burden of “sett[ing] forth written description support in the originally-filed
`
`disclosure . . . for each proposed substitute claim as a whole,” the Board should
`
`strike any new theories for written description support in Patent Owner’s Reply to
`
`the CMTA Opposition. See 35 U.S.C. § 316(d)(3); 37 C.F.R. §§ 42.121(a)(2)(ii),
`
`42.121(b).
`
`B.
`The Board Should Strike Patent Owner’s New Theories For
`Written Description Support.
`
`The Board should strike Patent Owner’s new theories for written description
`
`support of limitations 13[e] and 21[f]. Patent Owner’s CMTA Reply admits that
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`the ’660 application discloses two embodiments of the claimed “networked
`
`validation-information entity”: one in which the networked validation-information
`
`entity is “a financial institution, such as a credit card company (CCC)” and another
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`in which “the networked validation-information entity is not a credit card company
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`and instead acts as a secure registry that serves to enable or deny credit/debit
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`transactions by authenticating a user.1” CMTA Reply at 22-24. Patent Owner
`
`
`1 Petitioner contests the validity of both Patent Owner’s first and second theories
`
`for written description support for proposed limitations 13[e] and 21[f]. Thus,
`
`6
`
`
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`relied exclusively on the first theory in its CMTA. See CMTA at 7-8, 10 (citing
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`IPR2018-00809
`US Pat. No. 9,530,137
`Petitioner’s Motion to Strike
`
`
`only to page 23, line 34 through page 24, line 2 of the ’660 application for support
`
`for limitations 13[c], 13[e], 21[d], and 21[f]). Patent Owner’s second theory of
`
`written description support, on which its CMTA Reply exclusively relies (CMTA
`
`Reply, 22-23), was completely absent from Patent Owner’s CMTA.2 Patent Owner
`
`cannot now present a new theory simply because Petitioner showed the first theory
`
`to be insufficient.
`
`
`Petitioner presents Patent Owner’s theories only to show that the second theory
`
`was absent from Patent Owner’s initial showing in its CMTA.
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`2 Patent Owner’s citation to limitations 13[pre] and 21[pre] (see CMTA Reply, 23-
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`24 (citing CMTA at 7-8, B1)), which did reference the ’660 application at page 23,
`
`lines 20-33 and page 24, lines 3-10, does not provide written description support
`
`for proposed limitations 13[e] and 21[f]. Limitations 13[pre] and 21[pre] relate
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`generally to the claimed systems, and do not provide antecedent basis for either the
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`claimed “second device” or the claimed “validation-information entity.”
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`Furthermore, Patent Owner’s CMTA nowhere indicates that the alleged support for
`
`limitations 13[e] and 21[f] incorporates alleged support for limitations 13[pre] and
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`21[pre], respectively.
`
`7
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`
`
`Patent Owner and its expert, Dr. Jakobsson, had ample time to consider all
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`IPR2018-00809
`US Pat. No. 9,530,137
`Petitioner’s Motion to Strike
`
`
`appropriate support for Patent Owner’s proffered amendments before submitting
`
`its CMTA. Furthermore, Patent Owner was well informed of its burden to show
`
`written description support upon filing a CMTA. After Patent Owner proposed
`
`swapping the page limits for its opening brief and reply brief, the Board reminded
`
`Patent Owner of its burden and that it “assumes the risk that it will not have
`
`sufficient space to make the preliminary showing required in a motion to amend.”
`
`Paper 17, Order, 2. Accordingly, the Board should strike Patent Owner’s new
`
`theories.
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`III. CONCLUSION
`
`The Board should strike the highlighted portions of Paper 31 and Exhibit
`
`2021 shown in Exhibits 1136 and 1137 submitted herewith.
`
`
`
`May 31, 2019
`
`
`
`
`
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`
`
`Respectfully Submitted,
`
`By: /Monica Grewal/
`Monica Grewal
`Registration No. 40,056
`
`8
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`IPR2018-00809
`US Pat. No. 9,530,137
`Petitioner’s Motion to Strike
`
`
`TABLE OF EXHIBITS
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`Exhibit Number
`
`Description
`
`1101
`
`1102
`
`1103
`
`1104
`
`1105
`
`1106
`
`1107
`
`1108
`
`1109
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`1110
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`1111
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`1112
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`1113
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`
`
`U.S. Patent No. 9,530,137
`
`Declaration of Dr. Victor Shoup (“Shoup-Decl.”)
`
`Complaint, Universal Secure Registry LLC v. Apple Inc.,
`Visa Inc., and Visa U.S.A., Inc., No. 17-585-VAC-MPT
`(D. Del.)
`
`U.S. Patent Publication No. 20160155121
`
`’137 Patent File History, Track One Request
`
`’137 Patent File History, Track One Request Granted
`
`’137 Patent File History, 4/15/2016 Non-Final Rejection
`
`’137 Patent File History, 7/15/2016 Terminal
`Disclaimer-Filed
`
`’137 Patent File History, 7/15/2016 Response to Non-
`Final Rejection
`
`’137 Patent File History, 8/10/2016 Notice of Allowance
`and Fees Due
`
`’137 Patent File History, 11/10/2016 Amendment After
`Notice of Allowance
`
`’137 Patent File History, 11/18/2016 Response to
`Amendment under Rule 312
`
`International Patent Application Publication No. WO
`2004/051585 (“Jakobsson”)
`
`9
`
`
`
`1114
`
`1115
`
`1116
`
`1117
`
`1118
`
`1119
`
`1120
`
`1121
`
`1122
`
`1123
`
`1124
`
`1125
`
`1126
`
`1127
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`1128
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`
`
`
`
`
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`IPR2018-00809
`US Pat. No. 9,530,137
`Petitioner’s Motion to Strike
`
`
`U.S. Patent Application Publication No. 2004/0236632
`(“Maritzen”)
`
`European Patent Application Publication No. EP
`1028401 (“Schutzer”)
`
`U.S. Patent Application Publication No. 09510811
`(“Niwa”)
`
`U.S. Patent No. 6,453,301 (“Niwa”)
`
`Plaintiff’s Answer Brief in Opposition to Defendants’
`Motion to Dismiss
`
`Webster’s New World Dictionary of Computer Terms
`Eighth Edition Copyright 2000 (Date Stamped by
`Library of Congress March 28, 2000).
`
`Microsoft Computer Dictionary Fourth Edition
`Copyright 1999
`
`U.S. Provisional Application No. 60/775,046
`
`U.S. Provisional Application No. 60/812,279
`
`U.S. Provisional Application No. 60/859,235
`
`Declaration of Mark D. Selwyn in Support of Motion for
`
`Admission Pro Hac Vice
`
`Deposition of Victor Shoup Errata
`
`[Reserved]
`
`Dr. Jakobsson Deposition Transcript
`
`Declaration of Dr. Shoup in Support of Petitioner’s
`Reply to Patent Owner’s Response
`
`10
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`
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`IPR2018-00809
`US Pat. No. 9,530,137
`Petitioner’s Motion to Strike
`
`
`Declaration of Dr. Shoup in Support of Petitioner’s
`Opposition to Patent Owner’s Conditional Motion to
`Amend
`
`Declaration of Dr. Ari Juels
`
`[Reserved]
`
`[Reserved]
`
`[Reserved]
`
`[Reserved]
`
`Menezes et. al – Handbook of Applied Cryptography
`
`CMTA Reply (Highlighted)
`
`Ex-2021 (Highlighted)
`
`1129
`
`1130
`
`1131
`
`1132
`
`1133
`
`1134
`
`1135
`
`1136
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`1137
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`11
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`IPR2018-00809
`US Pat. No. 9,530,137
`Petitioner’s Motion to Strike
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on May 31, 2019, I caused a true and correct copy of
`
`the foregoing materials:
`
` Petitioner’s Motion to Strike
`
` Petitioner’s Updated Exhibit List
`
` Exhibits 1136, 1137
`
`to be served via e-mail, as previously agreed by the parties, on the following
`
`attorneys of record:
`
`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)
`
`
`Date: May 31, 2019
`
`Respectfully Submitted,
`
`
`/Monica Grewal/
`Monica Grewal
`Registration No. 40,056
`
`12
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`
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