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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`VISA INC., and VISA U.S.A. INC.,
`Petitioners,
`v.
`UNIVERSAL SECURE REGISTRY, LLC,
`Patent Owner.
`_________________________________________
`Case IPR2018-008091
`U.S. Patent No. 9,530,137
`________________________________________
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`PETITIONER APPLE INC.’S REQUEST FOR ORAL ARGUMENT
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`1 Visa Inc. and Visa U.S.A. Inc., which filed a petition in IPR2019-00174, have
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`been joined as a party to this proceeding.
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`IPR2018-00809
`U.S. Patent No. 9,530,137
`Apple’s Request for Oral Argument
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`Pursuant to the Board’s November 8, 2018 Scheduling Order (Paper No.
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`10), Petitioner Apple Inc. (“Apple”) respectfully requests oral argument currently
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`scheduled on July 16, 2019. Petitioner requests the ability to use a computer,
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`projector, and screen to display possible demonstratives and exhibits. Petitioner
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`requests 60 minutes per side.
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`Pursuant to 37 C.F.R. § 42.70, Apple specifies the following issues to be
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`argued:
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`I. Whether challenged claims 1, 2, 6, 7, 9, and 12 are unpatentable under
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`35 U.S.C. § 103(a) as obvious over the ’585 reference (Ex. 1113) and
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`Maritzen (Ex. 1114).
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`II. Whether challenged claim 5 is unpatentable under 35 U.S.C. § 103(a)
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`as obvious over the ’585 reference (Ex. 1113), Maritzen (Ex. 1114),
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`and Niwa (Ex. 1117).
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`III. Respond to any arguments raised in Patent Owner’s Preliminary
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`Response (Paper No. 8), Patent Owner’s Response (Paper No. 18) and
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`Patent Owner’s Sur-Reply (Paper No. 30).
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`IV. Whether substitute claims 13-14, 18-19, and 21 are unpatentable
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`under 35 U.S.C. § 103(a) as obvious over the ’585 reference (Ex.
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`1113), Maritzen (Ex. 1114), and Schutzer (Ex. 1115).
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`1
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`IPR2018-00809
`U.S. Patent No. 9,530,137
`Apple’s Request for Oral Argument
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`V. Whether substitute claims 13-21 are unpatentable as drawn to
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`ineligible subject matter under 35 U.S.C. § 101.
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`VI. Whether substitute claims 13, 17, and 21 satisfy 35 U.S.C § 112.
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`VII. Whether Patent Owner’s Conditional Motion to Amend (Paper No.
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`19) should be denied for proposing an unreasonable number of claims
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`under 37 C.F.R. § 42.121(a)(3).
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`VIII. Whether Patent Owner’s Conditional Motion to Amend (Paper No.
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`19) should be denied for failing to comply with 35 U.S.C. § 316(d)(1)
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`by substituting claims 15 and 16 for unchallenged claims 3 and 4.
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`IX. Whether Patent Owner has complied with its duty of candor under 37
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`C.F.R. § 42.11.
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`X. Whether Patent Owner is estopped from reintroducing the subject
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`matter of disclaimed claims 8 and 11 into its substitute claims.
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`XI. Whether Patent Owner waived its right to respond to Ground 3 in the
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`Petition (Paper No. 3).
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`XII. Respond to any arguments raised in Patent Owner’s Reply (Paper No.
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`31) to Petitioner’s Conditional Motion to Amend Opposition.
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`XIII. Whether portions of Patent Owner’s Reply (Paper No. 31) to
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`Petitioners Conditional Motion to Amend Opposition and of Patent
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`2
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`IPR2018-00809
`U.S. Patent No. 9,530,137
`Apple’s Request for Oral Argument
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`Owner’s Exhibit 2021 should be stricken for failing to comply with 37
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`C.F.R. § 42.23(b) by introducing new arguments for written
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`description support of substitute claims 13 and 21 not presented in
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`Patent Owner’s Conditional Motion to Amend (Paper No. 19).
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`XIV. Respond to Patent Owner’s Motion to Strike (Paper No. 36) and any
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`arguments raised in Patent Owner’s Sur-Reply to Petitioner’s
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`Opposition to the Motion to Strike (to be filed).
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`XV. Respond to Patent Owner’s Motion to Exclude, if one is submitted.
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`XVI. Respond to any issues specified by Patent Owner in its request for oral
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`argument.
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`XVII. Respond to Patent Owner’s presentation on all matters.
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`XVIII. Any arguments raised by the Parties in their respective papers,
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`motions, oppositions, responses, replies, and sur-replies.
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`XIX.
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`Issues related to the Board’s Decision on Institution and the grounds
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`instituted in the Decision.
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`XX. Any issues raised in the briefing pursuant to the schedule.
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`XXI. Any other outstanding motions and pleadings, and other issues that
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`the Board deems necessary for issuing a Final Written Decision.
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`3
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`IPR2018-00809
`U.S. Patent No. 9,530,137
`Apple’s Request for Oral Argument
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`Respectfully Submitted,
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`
`/Monica Grewal/
`
`Monica Grewal
`Registration No. 40,056
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`4
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`Date: June 10, 2019
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`IPR2018-00809
`U.S. Patent No. 9,530,137
`Apple’s Request for Oral Argument
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`CERTIFICATE OF SERVICE
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`
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`I hereby certify that on June 10, 2019, I caused a true and correct copy of
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`Apple Inc.’s Request for Oral Argument to be served via electronic mail on the
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`following correspondents of record as listed in Patent Owners’ Mandatory
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`Notices and in Paper Number 7 in IPR2019-00174 (Decision Granting Motion for
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`Joinder):
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`For PATENT OWNER:
`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)
`QUINN, EMANUEL, URQUHART & SULLIVAN, LLP
`For PETITIONER:
`(IPR2019-00174):
`Matthew Argenti (margenti@wsgr.com)
`Michael Rosato (mrosato@wsgr.com)
`WILSON SONSINI GOODRICH & ROSATI
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`Respectfully Submitted,
`
`
`/Monica Grewal/
`Monica Grewal
`Registration No. 40,056
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`Date: June 10, 2019
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`5
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