`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
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`APPLE INC.,
`VISA INC., and VISA U.S.A. INC.,
`Petitioners,
`
`v.
`
`UNIVERSAL SECURE REGISTRY LLC,
`Patent Owner.
`
`___________________
`
`Case IPR2018-008091
`U.S. Patent 9,530,137
`
`___________________
`
`PATENT OWNER’S REQUEST FOR ORAL HEARING
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`1 Visa Inc. and Visa U.S.A. Inc., which filed a petition in IPR2019-00174,
`have been joined as a party to this proceeding.
`
`06943-00002/10898136.3
`
`
`
`Patent Owner’s Request for Oral Hearing
`
`Case IPR2018-00809
`U.S. Patent 9,530,137
`
`Pursuant to 37 C.F.R. § 42.70(a) and the Scheduling Order (Paper No. 10),
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`Patent Owner Universal Secure Registry LLC (“Patent Owner”) hereby respectfully
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`requests that the Board grant oral argument, currently scheduled for July 16, 2019.
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`Id. at 8.
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`I.
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`TIME REQUESTED AND ISSUES TO BE ARGUED
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`Given the overlap of issues between IPR2018-00809, IPR2018-00810, and
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`IPR2018-00813 (“the Proceedings”), Patent Owner requests that the Board authorize
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`the parties to present their arguments for the Proceedings in a single hearing, and
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`that each side be allotted forty-five (45) minutes total for oral argument for all three
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`consolidated Proceedings.2
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`The principal issues to be argued for IPR2018-00809 include:
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`1. Any issues properly raised by Petitioner, including in the Petition and
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`Reply, such as whether any of the challenged claims of U.S. Patent No.
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`9,530,137 are patentable under 35 U.S.C. §§ 102, 103;
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`2 Patent Owner communicated this proposal to Petitioner on June 5, 2019,
`and Petitioner responded two days later that it desired 60 minutes per side per
`proceeding instead. Believing a six-hour long hearing across the three Proceedings
`would pose an undue burden on the Board and the parties, on June 7, 2019 Patent
`Owner attempted to compromise by proposing that the parties each have 60 minutes
`per side for all three Proceedings. This proposal went unanswered by Petitioner.
`
`1
`
`
`
`Patent Owner’s Request for Oral Hearing
`
`Case IPR2018-00809
`U.S. Patent 9,530,137
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`2. Any issues raised by Patent Owner, including in Patent Owner’s
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`Response and Sur-reply;
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`3. Any issues concerning the patentability of the proposed substitute
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`claims in Patent Owner’s Conditional Motion to Amend;
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`4. Any procedural or evidentiary issues raised, e.g., Motions to Strike and
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`related briefing;
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`5. Any additional issues raised in any motion or paper filed before oral
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`argument, or any other additional issues on which the Board seeks
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`clarification.
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`Patent Owner respectfully reserves the right to supplement and/or amend the
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`foregoing statement of issues to the extent permitted by the Rules and the Board.
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`II.
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`LOGISTICS
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`Subject to the Board’s approval, Patent Owner intends to use demonstrative
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`exhibits during the oral argument. Such demonstrative exhibits will be served in due
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`course according to 37 C.F.R. § 42.70(b). Patent Owner also intends to request the
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`use of audio-visual equipment during its presentation, including a computer,
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`projector, and screen on which to display demonstrative exhibits.
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`2
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`
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`Patent Owner’s Request for Oral Hearing
`
`Case IPR2018-00809
`U.S. Patent 9,530,137
`
`DATED: June 10, 2019
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`Respectfully submitted,
`
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`
`By
`/s/ James M. Glass
`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
`
`3
`
`
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`Patent Owner’s Request for Oral Hearing
`
`Case IPR2018-00809
`U.S. Patent 9,530,137
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that the
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`PATENT OWNER’S REQUEST FOR ORAL HEARING was served on June 10,
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`2019 by e-mailing copies to:
`
`Monica Grewal (Reg. No. 40,056)
`monica.grewal@wilmerhale.com
`Ben Fernandez (Reg. No. 55,172)
`ben.fernandez@wilmerhale.com
`WH-Apple Distribution List
`wh-apple-usr-ipr@wilmerhale.com
`WILMER CUTLER PICKERING HALE AND DORR LLP
`60 State Street
`Boston, MA 02109
`
`Mark Selwyn (Pro Hac Vice granted)
`mark.selwyn@wilmerhale.com
`WILMER CUTLER PICKERING HALE AND DORR LLP
`950 Page Mill Road
`Palo Alto, CA 94304-1050
`
`Matthew A. Argenti (Reg. No. 61,836)
`margenti@wsgr.com
`Michael T. Rosato (Reg. No. 52,182)
`mrosato@wsgr.com
`WILSON SONSINI GOODRICH & ROSATI
`650 Page Mill Road
`Palo Alto, CA 94304-1050
`
`4
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`
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`Patent Owner’s Request for Oral Hearing
`
`Case IPR2018-00809
`U.S. Patent 9,530,137
`
`DATED: June 10, 2019
`
`Respectfully submitted,
`
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`
`By
`/s/ Razmig Messerian
`Razmig Messerian (Reg. No. 56,983)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`985 S. Figueroa St., 10th Floor
`Los Angeles, CA 90017
`razmesserian@quinnemanuel.com
`
`2
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`