Paper No. 26
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`APPLE INC.
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY LLC
`Patent Owner
`________________
`
`Case IPR2018-00810
`U.S. Patent No. 9,100,826
`________________
`
`PATENT OWNER’S OBJECTIONS TO EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64
`
`

`

`Case IPR2018-00810
`U.S. Patent No. 9,100,826
`
` Patent Owner’s Objections to Evidence
`
`Pursuant to 37 C.F.R. § 42.64(b)(1), Universal Secure Registry LLC (“Patent
`
`Owner”) submits the following objections to evidence that Petitioner Apple Inc.
`
`(“Petitioner”) served with its Petitioner’s Reply to Patent Owner's Response (Paper
`
`24) and Petitioner's Opposition to Patent Owner’s Conditional Motion to Amend
`
`(Paper 25). These objections are timely filed and served within five business days
`
`of service of the evidence.
`
`Evidence
`
`Exhibit 1018
`
`Objections
`
`Patent Owner objects to this exhibit because it improperly
`introduces new theories, arguments, and evidence for the
`first time on Reply. See, e.g., e.g., ¶¶ 21 (contending for first
`time that "biometric key" was a term of art, and discussing
`new exhibits 1025-1029), 42-46 (contending for first time
`that Maritzen discloses limitation 21[h], and that Maritzen
`with Jakobsson discloses limitation 30[e]), 47-51 (making
`arguments for first time regarding contention that Maritzen's
`PTD is a handheld device), 54-55 (contending for first time
`that Maritzen in view of Niwa discloses the additional
`limitation of claim 15). Admissibility of such declaration
`would permit Petitioner to violate the requirement that it
`must include all its theories, arguments, and evidence with
`its Petition.
`
`Patent Owner objects to this exhibit because it includes
`information that is not discussed sufficiently in Petitioner’s
`Reply to Patent Owner's Response. Admissibility of such
`declaration would permit the use of declarations to
`circumvent page limits for a Reply.
`
`FRE 602, 702, 703: Patent Owner objects to this exhibit to
`the extent it is irrelevant, the testimony is based on a lack of
`personal knowledge or speculation, includes insufficient
`
`

`

`Case IPR2018-00810
`U.S. Patent No. 9,100,826
`
` Patent Owner’s Objections to Evidence
`
`Exhibit 1019
`
`Exhibit 1022
`
`facts or data, is not based on a reliable foundation, and
`constitutes conclusory opinions without sufficient support.
`
`FRE 401, 402, and 403: Patent Owner objects to this
`exhibit because it does not rebut the arguments in Patent
`Owner's Response, it is irrelevant, and its probative value is
`substantially outweighed by a danger of unfair prejudice,
`confusing the issues, wasting time, and needlessly presenting
`cumulative evidence.
`
`FRE 602, 702, 703: Patent Owner objects to this exhibit to
`the extent it is irrelevant, the testimony is based on a lack of
`personal knowledge or speculation, includes insufficient
`facts or data, is not based on a reliable foundation, and
`constitutes conclusory opinions without sufficient support.
`
`FRE 401, 402, and 403: Patent Owner objects to this
`exhibit because it does not rebut the arguments in Patent
`Owner's Conditional Motion to Amend, it is irrelevant, and
`its probative value is substantially outweighed by a danger of
`unfair prejudice, confusing the issues, wasting time, and
`needlessly presenting cumulative evidence.
`
`Patent Owner objects to this exhibit because it includes
`information that is not discussed sufficiently in Petitioner’s
`Opposition to Patent Owner’s Conditional Motion to Amend.
`Admissibility of such declaration would permit the use of
`declarations to circumvent page limits for an Opposition to a
`Motion to Amend.
`
`FRE 602, 702, 703: Patent Owner objects to this exhibit to
`the extent it is irrelevant, the testimony is based on a lack of
`personal knowledge or speculation, includes insufficient
`facts or data, is not based on a reliable foundation, and
`constitutes conclusory opinions without sufficient support.
`
`FRE 401, 402, and 403: Patent Owner objects to this
`exhibit because it does not rebut the arguments in Patent
`Owner's Conditional Motion to Amend, it is irrelevant, and
`
`

`

`Case IPR2018-00810
`U.S. Patent No. 9,100,826
`
` Patent Owner’s Objections to Evidence
`
`Exhibits 1021,
`1024 - 1031
`
`its probative value is substantially outweighed by a danger of
`unfair prejudice, confusing the issues, wasting time, and
`needlessly presenting cumulative evidence.
`
`Patent Owner objects to exhibits 1025-1029 and 1031
`because they improperly introduce new evidence for the first
`time on Reply. For example, exhibits 1025-1029 are used
`for the new argument that "biometric key" was a known term
`of art. Admissibility of these exhibits would permit
`Petitioner to violate the requirement that it must include all
`its theories, arguments, and evidence with its Petition.
`
`Patent Owner further objects to exhibits 1021, 1024, 1026-
`1029 and 1031 to the extent that Petitioner attempts to rely
`on these exhibits as prior art or to show the alleged state of
`the art or understanding of a POSITA. Petitioner has not
`demonstrated that these exhibits are “printed publications”
`within the meaning of 35 U.S.C. §§ 102 and 311(b).
`Moreover, exhibit 1031 is dated 2019, long after the relevant
`time of invention, while other exhibits are dated well before
`the relevant time of invention.
`
`FRE 401, 402, and 403: Patent Owner objects to exhibits
`1021 and 1024-1031 because they are not relied on as
`references, they do not rebut the arguments in Patent
`Owner's Response or Conditional Motion to Amend, and/or
`Petitioner does not allege that the challenged or substitute
`claims are anticipated or obvious based on these exhibits.
`Exhibits 1024-1029 are not cited in Petitioner's Reply to
`Patent Owner's Response or Opposition to Patent Owner’s
`Conditional Motion to Amend. Moreover, exhibit 1031 is
`dated 2019, long after the relevant time of invention, while
`other exhibits are dated well before the relevant time of
`invention. Exhibits 1021 and 1024-1031 are irrelevant, and
`their probative value is substantially outweighed by a danger
`of unfair prejudice, confusing the issues, wasting time, and
`needlessly presenting cumulative evidence.
`
`

`

`Case IPR2018-00810
`U.S. Patent No. 9,100,826
`
` Patent Owner’s Objections to Evidence
`
`FRE 901: Patent owner also objects to exhibits 1021, 1024,
`1026-1029 and 1031 as unauthenticated documents that are
`not self-authenticating under FRE 902. Thus, these exhibits
`lack authentication.
`
`Date: April 16, 2019
`
`Respectfully Submitted,
`
`/s/ James Glass
`Registration 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
`
`Counsel for Patent Owner Universal Secure
`Registry LLC
`
`

`

`Case IPR2018-00810
`U.S. Patent No. 9,100,826
`
` Patent Owner’s Objections to Evidence
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certify that the
`
`PATENT OWNER’S OBJECTIONS TO EVIDENCE PURSUANT TO 37 C.F.R.
`
`§ 42.64 was served on April 16, 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
`Kelvin Chan (Reg. No. 71,433)
`kelvin.chan@wilmerhale.com
`WILMER CUTLER PICKERING HALE AND DORR LLP
`60 State Street
`Boston, MA 02109
`
`Mark Selwyn
`mark.selwyn@wilmerhale.com
`WILMER CUTLER PICKERING HALE AND DORR LLP
`950 Page Mill Road
`Palo Alto, CA 94304
`
`Date: April 16, 2019
`
` 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
`jimglass@quinnemanuel.com
`Lead Attorney for Patent Owner –
`Universal Secure Registry LLC
`
`