Trials@uspto.gov
`571.272.7822
`
`
`
` Paper No. 39
`
` Entered: June 17, 2019
`
`
`
`
`
`
`
`
`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.
`____________
`
`IPR2018-00809 (Patent 9,530,137 B2)1
`IPR2018-00810 (Patent 9,100,826 B2)
`IPR2018-00813 (Patent 9,100,826 B2)
`____________
`
`
`
`Before PATRICK R. SCANLON, GEORGIANNA W. BRADEN, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MELVIN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`1 Visa Inc. and Visa U.S.A. Inc., which filed petitions in IPR2019-00174,
`IPR2019-00175, and IPR2019-00176, have been joined as a party to each of
`these proceedings.
`
`
`
`
`571.272.7822
`
`
`
` Paper No. 39
`
` Entered: June 17, 2019
`
`
`
`
`
`
`
`
`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.
`____________
`
`IPR2018-00809 (Patent 9,530,137 B2)1
`IPR2018-00810 (Patent 9,100,826 B2)
`IPR2018-00813 (Patent 9,100,826 B2)
`____________
`
`
`
`Before PATRICK R. SCANLON, GEORGIANNA W. BRADEN, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MELVIN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`1 Visa Inc. and Visa U.S.A. Inc., which filed petitions in IPR2019-00174,
`IPR2019-00175, and IPR2019-00176, have been joined as a party to each of
`these proceedings.
`
`
`
`
`
`IPR2018-00809 (Patent 9,530,137 B2)
`IPR2018-00810 (Patent 9,100,826 B2)
`IPR2018-00813 (Patent 9,100,826 B2)
`
`
`Patent Owner, Universal Secure Registry, LLC, and Petitioner Apple
`Inc., requested oral argument. Papers 38, 40.2 The requests are granted.
`Patent Owner requests 45 minutes per side for the combined hearing,
`while Petitioner appears to request 60 minutes per side for each proceeding
`included in the combined hearing. Id. We determine that, due to the overlap
`among the three proceedings, 60 minutes per side will allow sufficient time.
`Oral argument will commence at 1:00 PM ET on JULY 16, 2019.
`The hearing will be conducted at the Midwest Regional USPTO Office,
`300 River Place South, Suite 2900, Detroit, Michigan.3 Each side will
`receive 60 minutes of presentation time (including any rebuttal).
`The hearing will be open to the public for in-person attendance, which
`will be accommodated on a first-come, first-served basis. The Board will
`provide a court reporter for the hearing, and the reporter’s transcript will
`constitute the official record of the hearing. For planning purposes, it is not
`required, but it would be greatly appreciated, if the parties could indicate to
`the Board by email to Trials@uspto.gov, at least two (2) business days prior
`to the hearing, approximately how many people they expect to be present at
`the hearing for each side.
`The hearing will proceed as follows. Petitioner will open the hearing
`by presenting its case. Patent Owner then will respond to Petitioner’s
`presentation. Petitioner may reserve rebuttal time (of no more than half its
`total argument time) to reply to Patent Owner’s arguments. Patent Owner
`
`
`2 The cited papers were filed in IPR2018-00809. Corresponding papers
`were filed in the other captioned cases.
`3 See https://www.uspto.gov/about-us/uspto-locations/detroit-michigan for
`additional information.
`
`
`
`2
`
`
`
`IPR2018-00809 (Patent 9,530,137 B2)
`IPR2018-00810 (Patent 9,100,826 B2)
`IPR2018-00813 (Patent 9,100,826 B2)
`
`
`may reserve sur-rebuttal time (of no more than half its total argument time)
`to respond to Petitioner’s rebuttal. See Trial Practice Guide Update, 20.
`No live testimony from any witness will be taken at the oral argument.
`A pre-hearing conference call will be held at either party’s request.
`The request must be made no later than June 28, 2019. Prior to making
`such a request, the parties shall meet and confer and, when possible, send a
`joint request to the Board with an agreed upon set of limited issues for
`discussion. A request for a pre-hearing conference may be made by email to
`Trials@uspto.gov, and shall include a list of issues to be discussed during
`the call and proposed times for the call, which should be no later than three
`business days prior to the oral hearing.
`At least one member of the panel will be attending the hearing
`electronically from a remote location and will not be able to view the
`projection screen in the hearing room. Thus, if a demonstrative exhibit is
`not made available in advance or visible to the judge(s) presiding over the
`hearing remotely, that demonstrative exhibit will not be helpful. Each
`presenter must identify clearly and specifically each demonstrative exhibit
`(e.g., by slide or screen number) referenced during the hearing to ensure the
`clarity and accuracy of the reporter’s transcript and for the benefit of the
`judge(s) presiding over the hearing remotely. A hard copy of the
`demonstratives, if filed, should be provided to the court reporter at the
`hearing. Also, the parties are reminded that, at the oral argument, they “may
`rely upon evidence that has been previously submitted in the proceeding and
`may only present arguments relied upon in the papers previously submitted.”
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768
`
`
`
`3
`
`
`
`IPR2018-00809 (Patent 9,530,137 B2)
`IPR2018-00810 (Patent 9,100,826 B2)
`IPR2018-00813 (Patent 9,100,826 B2)
`
`
`(Aug. 14, 2012). “No new evidence or arguments may be presented at the
`oral argument.” Id.
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served on
`the opposing party seven (7) business days prior to the hearing.
`Demonstrative exhibits used at the final hearing are aids to oral argument
`and not evidence, and should be clearly marked as such. For example, each
`slide of a demonstrative exhibit may be marked with the words
`“DEMONSTRATIVE EXHIBIT – NOT EVIDENCE” in the footer. Trial
`Practice Guide Update, 21.
`The Board expects that the parties will meet and confer in good faith
`to resolve any objections to demonstrative exhibits, but if such objections
`cannot be resolved, the parties may raise any dispute over the propriety of
`each party’s demonstrative exhibits during the pre-hearing conference call, if
`requested as set forth above. Any objection to demonstrative exhibits that is
`not presented timely will be considered waived. The Board asks the parties
`to confine demonstrative exhibit objections to those identifying egregious
`violations that are prejudicial to the administration of justice. The parties
`may refer to CBS Interactive Inc. v. Helferich Patent Licensing, LLC,
`IPR2013-00033 (PTAB October 23, 2013) (Paper 118), and St. Jude
`Medical, Cardiology Div., Inc. v. The Board of Regents of the University of
`Michigan, IPR2013-00041 (PTAB Jan. 27, 2014) (Paper 65) regarding the
`appropriate content of demonstrative exhibits. The parties are directed to
`file their demonstrative exhibits, marked as noted above, in the record at
`least three (3) business days prior to the hearing.
`The Board expects lead counsel for each party to be present in person
`at the oral hearing. Any counsel of record, however, may present the party’s
`4
`
`
`
`
`
`IPR2018-00809 (Patent 9,530,137 B2)
`IPR2018-00810 (Patent 9,100,826 B2)
`IPR2018-00813 (Patent 9,100,826 B2)
`
`
`argument. If either party anticipates that its lead counsel will not be
`attending the oral argument, the parties should request a joint telephone
`conference with the Board no later than two (2) business days prior to the
`oral hearing to discuss the matter.
`A party may request remote video attendance for one or more of its
`other attendees to view the hearing from any USPTO location. The
`available locations include the USPTO headquarters in Alexandria, Virginia;
`the Texas Regional Office in Dallas, Texas; the Rocky Mountain Regional
`Office in Denver, Colorado; and the Silicon Valley Office in San Jose,
`California. To request remote video viewing, a party must send an email
`message to Trials@uspto.gov ten business days prior to the hearing,
`indicating the requested location and the number planning to view the
`hearing from the remote location. The Board will notify the parties if the
`request for video viewing is granted. Note that it may not be possible to
`grant the request due to the availability of resources.
`Any special requests for audio-visual equipment should be directed to
`Trials@uspto.gov. A party may also indicate any special requests related to
`appearing at an in-person oral hearing, such as a request to accommodate
`physical needs that limit mobility or visual or hearing impairments, and
`indicate how the PTAB may accommodate the special request. Any special
`requests must be presented in a separate communication not less than five
`(5) days before the hearing.
`In consideration of the foregoing, it is:
`ORDERED that oral argument will commence at 1:00 PM ET on July
`16, 2019.
`
`
`
`
`
`
`5
`
`
`
`IPR2018-00809 (Patent 9,530,137 B2)
`IPR2018-00810 (Patent 9,100,826 B2)
`IPR2018-00813 (Patent 9,100,826 B2)
`
`
`PETITIONER:
`
`Monica Grewal
`Ben Fernandez
`Mark Selwyn
`WILMER CUTLER PICKERING
` HALE AND DORR LLP
`monica.grewal@wilmerhale.com
`ben.fernandez@wilmerhale.com
`mark.selwyn@wilmerhale.com
`
`PATENT OWNER:
`
`James M. Glass
`Tigran Guledjian
`Christopher A. Mathews
`Nima Hefazi
`Richard Lowry
`QUINN EMANUEL URQUHART
` & SULLIVAN LLP
`jimglass@quinnemanuel.com
`tigranguledjian@quinnemanuel.com
`chrismathews@quinnemanuel.com
`nimahefazi@quinnemanuel.com
`richardlowry@quinnemanuel.com
`
`
`
`
`6
`
`
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