UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`APPLE INC.,
`VISA INC., and VISA U.S.A. INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY LLC
`Patent Owner
`________________
`
`Case IPR2018-008131
`U.S. Patent No. 9,100,826
`________________
`
`PATENT OWNER’S MOTION TO STRIKE
`IMPROPER REPLY EVIDENCE
`
`1 Visa Inc. and Visa U.S.A. Inc., which filed a petition in IPR2019-00176,
`
`have been joined as a party to this proceeding.
`
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`APPLE INC.,
`VISA INC., and VISA U.S.A. INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY LLC
`Patent Owner
`________________
`
`Case IPR2018-008131
`U.S. Patent No. 9,100,826
`________________
`
`PATENT OWNER’S MOTION TO STRIKE
`IMPROPER REPLY EVIDENCE
`
`1 Visa Inc. and Visa U.S.A. Inc., which filed a petition in IPR2019-00176,
`
`have been joined as a party to this proceeding.
`
`
`
`Case No. IPR2018-00813
`U.S. Patent No. 9,100,826
`
`As authorized by the Board on May 6, 2019, Patent Owner Universal Secure
`
`Registry, L.L.C. (“Patent Owner”) moves to strike belatedly proffered evidence
`
`that Apple Inc. (“Petitioner”) waited to file with its Reply (Paper 24, “Reply”). In
`
`particular, Patent Owner moves to strike the declaration of a newly proffered
`
`expert, Dr. Ari Juels (Ex. 1120), and all references to Dr. Juels’ declaration in the
`
`Reply. Both governing law and PTAB practice prohibit Petitioner from submitting
`
`evidence in reply that it could have presented earlier, and failure to strike this new
`
`evidence would prejudice Patent Owner because Patent Owner cannot submit
`
`additional expert testimony or any other evidence to rebut this improper new
`
`evidence.
`
`I.
`
`THE BOARD SHOULD STRIKE APPLE’S BELATED
`DECLARATION AND ALL REFERENCES IN THE REPLY
`The governing statute requires a petition to identify “with particularity…the
`
`evidence
`
`that supports
`
`the grounds
`
`for
`
`the challenge
`
`to each claim,
`
`including…affidavits or declarations of supporting evidence and opinions, if the
`
`petitioner relies on expert opinions.” 35 U.S.C. § 312(a)(3)(B) (emphasis added).
`
`The Trial Practice Guide (Aug. 2018 Update) is in accord, stating that a
`
`“Petitioner may not submit new evidence or argument in reply that it could have
`
`presented earlier, e.g. to make out a prima facie case of unpatentability.” Id. at 14.
`
`In fact, “a reply…that raises a new issue or belatedly presents evidence may not be
`
`1
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`
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`Case No. IPR2018-00813
`U.S. Patent No. 9,100,826
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`considered.” Id. at 15 (emphasis added). Indeed, the Guide expressly provides
`
`that, “[i]t is also improper to present in reply new evidence (including new expert
`
`testimony) that could have been presented in a prior filing….” Id. See also SAS
`
`Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“the petitioner’s petition, not the
`
`Director’s discretion, is supposed to guide the life of the litigation.”) (emphasis
`
`added); cf. Dexcom, Inc. v. Waveform Techs., Inc., IPR2016-01680 (Paper 46) at
`
`30 (PTAB Feb. 28, 2018) (excluding evidence raised for first time in a reply brief),
`
`aff’d Dexcom, Inc. v. Waveform Technologies, Inc., 760 Fed. Appx. 1023 (Fed.
`
`Cir. Apr. 3, 2019) (per curiam).
`
`Apple started this proceeding on April 3, 2018, relying solely upon a
`
`declaration from Dr. Victor Shoup (Ex. 1102). Now, over a year later (April 9,
`
`2019), and on the eve of trial, Petitioner introduces a brand new expert, Dr. Ari
`
`Juels in its Reply. There is no reason Apple could not have presented such
`
`evidence in its petition. The rules are clear; this tardy evidence should be stricken
`
`from the proceeding. Indeed, the trial practice guide states that striking is the
`
`appropriate course here. See Trial Practice Guide (Aug. 2018 Update) at 18.
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`Further, striking this new evidence is especially important here, as Patent
`
`Owner cannot rebut this improper new evidence with a responsive declaration from
`
`2
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`
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`Case No. IPR2018-00813
`U.S. Patent No. 9,100,826
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`Patent Owner’s expert.2 Hence, failure to strike in this case would be highly
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`prejudicial to Patent Owner. Cf. Realtime Data, LLC v. Iancu, 912 F.3d 1368,
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`1373 (Fed. Cir. 2019) (“[T]he Board may not rely on a basis for a decision unless
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`the party adversely affected by such reliance had notice of the basis and an
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`adequate opportunity to address it.”); Dexcom, Inc., IPR2016-01680 at 30 (“Under
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`the circumstances of this case, it would violate the Administrative Procedures Act
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`(‘APA’)’s requirement for notice and opportunity to respond, if we were to rely
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`upon [evidence first submitted in reply].”). Moreover, absent the requested relief,
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`this prejudice will be compounded by the fact that Petitioner will be permitted to
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`raise this new evidence at the hearing while Patent Owner will be left without any
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`rebuttal. Accordingly, Patent Owner requests that the Board grant this motion.
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`2 The Guide prohibits Patent Owner from submitting additional evidence with its
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`sur-reply. Trial Practice Guide (Aug. 2018 Update) at 14 (“The sur-reply may not
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`be accompanied by new evidence other than deposition transcripts of the cross-
`
`examination of any reply witness.”). On May 6, Patent Owner attempted to
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`mitigate the prejudice here by requesting permission to file rebuttal evidence to
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`Petitioner’s newly submitted declaration. That request was denied. See May 6,
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`2019 Email from Board.
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`3
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`Case No. IPR2018-00813
`U.S. Patent No. 9,100,826
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`II.
`
`CONCLUSION
`
`The Guide expressly states that “a reply…that…belatedly presents evidence
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`may not be considered.” Trial Practice Guide (Aug. 2018 Update) at 15. There
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`can be no dispute that Dr. Juels’ declaration is new evidence. The Board should
`
`therefore strike Petitioner’s impermissible expert declaration of Dr. Ari Juels
`
`(Ex. 1120) and those portions of the Reply relying upon Dr. Juels’ declaration for
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`support (on pages 6-8, 10-11, 16, and 21).
`
`Date: May 31, 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
`Tel: (212) 849-7000
`Fax: (212) 849-7100
`Email: jimglass@quinnemanuel.com
`
`Lead Attorney for Patent Owner –
`Universal Secure Registry LLC
`
`4
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`
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`Case No. IPR2018-00813
`U.S. Patent No. 9,100,826
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that
`
`PATENT OWNER’S MOTION TO STRIKE IMPROPER REPLY EVIDENCE,
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`was served on May 31, 2019 by filing these documents through the Patent Review
`
`Processing System, as well as 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
`
`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
`
`5
`
`
`
`Date: May 31, 2019
`
`Case No. IPR2018-00813
`U.S. Patent No. 9,100,826
`
` 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
`
`6
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