UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
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`Petitioner,
`v.
`UNIVERSAL SECURE REGISTRY, LLC,
`Patent Owner.
`_________________________________________
`Case IPR2018-00812
`U.S. Patent No. 8,856,539
`________________________________________
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`PETITIONER APPLE INC.’S OPPOSITION TO PATENT OWNER’S
`MOTION TO STRIKE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
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`Petitioner,
`v.
`UNIVERSAL SECURE REGISTRY, LLC,
`Patent Owner.
`_________________________________________
`Case IPR2018-00812
`U.S. Patent No. 8,856,539
`________________________________________
`
`PETITIONER APPLE INC.’S OPPOSITION TO PATENT OWNER’S
`MOTION TO STRIKE
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`IPR2018-00812
`U.S. Patent No. 8,856,539
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`Contents
`I.
`INTRODUCTION .......................................................................................... 1
`II.
`ARGUMENT ................................................................................................. 1
`A. Apple’s Arguments Regarding Motivation To Combine Are Not New
`And Should Not Be Stricken. ......................................................................... 1
`B. Apple’s Arguments Regarding Merchant Validation And Access
`Restrictions Are Not New And Should Not Be Stricken. .............................. 4
`CONCLUSION .............................................................................................. 5
`
`III.
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`
`ii
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`I.
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`INTRODUCTION
`Patent Owner Universal Secure Registry’s (“USR”) motion to strike
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`IPR2018-00812
`U.S. Patent No. 8,856,539
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`(“MTS”) is yet another attempt to avoid having the patentability of the proposed
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`substitute claims resolved on their merits. All of Apple’s supposed “new”
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`arguments in its CMTA Surreply were disclosed before, and are supported by pin-
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`cites to prior briefs and declarations discussing the same points. Furthermore,
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`these arguments are proper for the additional reason that they are directly
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`responsive to USR’s CMTA Reply. Because USR has already had a full and fair
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`opportunity to respond to Apple’s arguments, USR has suffered no prejudice, and
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`its MTS should be denied.
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`II. ARGUMENT
`A. Apple’s Arguments Regarding Motivation To Combine Are Not
`New And Should Not Be Stricken.
`USR’s arguments with respect to limitations 39[b] and 39[c] should be
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`rejected because (1) Apple previously explained why a POSITA would have been
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`motivated to combine Reber and Franklin to satisfy these limitations, (2) USR
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`already had an opportunity to respond to Apple’s arguments, and (3) Apple’s
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`arguments are directly responsive to new arguments made in USR’s Reply.
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`With respect to limitation 39[b], which requires the claimed “transaction
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`request” be received “from the provider,” USR is incorrect to suggest that Apple
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`waited until its CMTA Surreply to argue that Franklin’s teaching of merchant
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`1
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`IPR2018-00812
`U.S. Patent No. 8,856,539
`validation would have provided a motivation to modify Reber. MTS at 2. To the
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`contrary, Apple’s Surreply cites to Dr. Shoup’s prior declaration where he
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`explained that “[i]n view of Franklin’s disclosure that a merchant must be
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`validated prior to conducting a transaction, a POSITA would have been motivated
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`to modify the preferred transaction methods disclosed in Reber.” CMTA Surreply
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`at 3 (citing Ex-1135, Shoup-Decl., ¶47). Although the cited declaration from Dr.
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`Shoup was directed to the original (not the substitute) claims, it is relevant because
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`USR has offered a construction of “the provider requesting the transaction” that
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`would give the original claim substantially the same scope as the proposed
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`substitute claim. See POR at 56 (“the transaction request be sent from the provider
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`to the secure registry”). Moreover, because USR had an opportunity to (and
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`actually did) respond to Dr. Shoup’s motivation to combine argument in its POR
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`Surreply, USR has no basis to claim prejudice. POR Surreply at 26-27 (“A
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`POSITA would not look to Franklin to make such a modification to Reber.”); see
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`Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1081 (Fed. Cir. 2015) (patent owners
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`can respond to evidence submitted on reply, including by submitting a surreply).
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`Furthermore, Apple’s explanation of the motivation to combine Franklin and
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`Reber in its CMTA Surreply is directly responsive to USR’s argument, made in its
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`CMTA Reply, that Apple’s motivation to combine was insufficient. CMTA Reply
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`at 4-6. Such responsive arguments are permitted. Anacor Pharm., Inc. v. Iancu,
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`2
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`IPR2018-00812
`U.S. Patent No. 8,856,539
`889 F.3d 1372, 1380-81 (Fed. Cir. 2018) (petitioner “may introduce new evidence
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`after the petition stage if the evidence is a legitimate reply to evidence introduced
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`by the patent owner . . . .”); Idemitsu Kosan Co. v. SFC Co., 870 F.3d 1376, 1381
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`(Fed. Cir. 2017) (petitioner need not “preemptively” address arguments).
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`Turning to limitation 39[c], USR incorrectly contends that Apple offered
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`new motivations to combine Reber and Franklin to “extract” a “time value” from
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`the received transaction request. MTS at 3. Here again, Apple’s CMTA
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`Opposition and Dr. Shoup’s supporting declaration disclosed the same motivation
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`to combine discussed in the CMTA Surreply, which is based on the similarity
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`between Reber’s validation of the second data element and Franklin’s validation of
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`a received MAC by comparison with a received MAC. See Ex-1136, Shoup Decl.
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`¶25 (explaining that “[a] POSITA would have looked to Franklin” in part because
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`of its disclosure of a test MAC for which a time value is needed). USR cannot
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`claim that it lacked an opportunity to address these arguments. Anacor Pharm.,
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`889 F.3d at 1380-81. Moreover, Apple’s Surreply was permissible because it
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`directly responded to and explained the relevance of USR’s admission in its
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`CMTA Reply that Franklin’s transaction request includes “the transaction date and
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`time as part of transaction-specific data.” CMTA Surreply at 5 (citing CMTA
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`Reply at 9).
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`3
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`IPR2018-00812
`U.S. Patent No. 8,856,539
`B. Apple’s Arguments Regarding Merchant Validation And Access
`Restrictions Are Not New And Should Not Be Stricken.
`The CMTA Surreply’s arguments concerning the validation/access
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`restriction limitations of substitute claim limitations 39[e]-[f] should not be
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`stricken for the same reasons. USR contends that Apple “took a new direction”
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`when it argued that Franklin’s disclosure of validation using a “test MAC”
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`supports its position that performing the steps of validating merchant identity and
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`subsequently determining “compliance with any access restrictions” was obvious.
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`MTS at 4. But the CMTA Surreply merely restated the position from Apple’s
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`CMTA Opposition that Reber and Franklin together teach that Reber’s transaction
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`data could be used to perform merchant validation and compliance with access
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`restrictions. CMTA Opp. at 9 (“[T]he Board found that merchant validation
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`followed by subsequent access to data was sufficient to meet this claim limitation.
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`DI, 14-16. That is precisely what Reber and Franklin disclose.”). Apple made the
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`same argument in its POR Reply, where USR has once again proposed a narrow
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`claim construction that would give the original claim and substitute claims a
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`similar scope. Specifically, Apple argued that “a POSITA would have understood
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`that [merchant] validation could take place based on the received card number
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`(which includes a MAC…).” POR Reply at 12. As such, the CMTA Surreply
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`does not advance any new argument. Nor can USR claim any prejudice, since its
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`POR Surreply expressly addresses Franklin’s “test MAC” disclosure in this
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`4
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`IPR2018-00812
`U.S. Patent No. 8,856,539
`context. POR Surreply at 14 (“In Franklin, the acquiring bank does not validate
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`the proxy credit card number (i.e., transaction number); that task is explicitly
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`carried out by the issuing bank through a complex process requiring “test MAC”
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`generation and comparison.”).
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`USR’s second argument regarding Apple’s comparison of the prior art to
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`Figures 7-10 of the ’539 patent is equally flawed. Apple’s Surreply was merely
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`responding to USR’s contention (CMTA Reply at 13-14) that the substitute claims
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`“draw an explicit distinction between provider validation and access restriction
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`compliance” by citing to the patent’s repeated disclosure of financial transactions
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`without any such distinction. Apple and Dr. Shoup previously made a related
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`argument in the POR Reply, citing those same embodiments when discussing
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`USR’s erroneous construction of “access restrictions.” Ex-1135, Shoup-Decl. ¶29
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`(“[T]he embodiments described in Figures 7-10 each contemplate authorizing a
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`transaction based on the validation of a single time-varying code…”). USR
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`responded to these arguments in its POR Surreply, arguing that they were
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`“irrelevant.” POR Surreply at 7. Because USR had prior opportunities to address
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`Apple’s arguments, USR has no basis to claim prejudice.
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`III. CONCLUSION
`Based on the foregoing, Patent Owner’s motion to strike should be denied.
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`Respectfully Submitted,
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`5
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`IPR2018-00812
`U.S. Patent No. 8,856,539
`
`August 9, 2019
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`
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`
`
`/Monica Grewal/
`
`Monica Grewal
`Registration No. 40,056
`
`
`
`
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`6
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`IPR2018-00812
`U.S. Patent No. 8,856,539
`CERTIFICATE OF SERVICE
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`I hereby certify that on August 9, 2019, I caused a true and correct copy of
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`the foregoing materials:
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`• Petitioner Apple Inc.’s Opposition To Patent Owner’s Motion To Strike
`to be served via e-mail on the following correspondents of record as listed in
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`Patent Owners’ Mandatory Notices:
`
`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 PO IPR (qe-usr-ipr@quinnemanuel.com)
`QUINN, EMANUEL, URQUHART & SULLIVAN, LLP
`
`
`Date: August 9, 2019
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`Respectfully Submitted,
`
`
`/Monica Grewal/
`Monica Grewal
`Registration No. 40,056
`
`7
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