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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 IPR2018-00813
`U.S. Patent No. 9,100,8261
`________________________________________
`
`PETITIONER APPLE INC.’S OPPOSITION TO PATENT OWNER’S
`MOTION TO STRIKE
`
`
`
`
`
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`1 Visa Inc. and Visa U.S.A. Inc., which filed a petition in IPR2019-00176, have
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`been joined as a party to this proceeding.
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`
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`
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`
`
`IPR2018-00813
`U.S. Patent No. 9,100,826
`
`INTRODUCTION......................................................................................... 1
`I.
`ARGUMENT ................................................................................................ 2
`II.
`A. Dr. Juels’ Declaration Is Permissible Because It Directly Responds to
`Arguments Made by Dr. Jakobsson. ............................................................. 2
`Petitioner Is Not Required to Anticipate All Possible Arguments in Its
`Petition. ......................................................................................................... 6
`Patent Owner Would Not Suffer Any Prejudice. .......................................... 7
`CONCLUSION ............................................................................................. 9
`
`B.
`
`C.
`III.
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`
`
`
`
`ii
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`
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`I.
`
`INTRODUCTION
`Patent Owner’s motion to strike should be denied because the Juels
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`IPR2018-00813
`U.S. Patent No. 9,100,826
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`Declaration (Ex. 1120) directly responds to the Jakobsson Declaration (Ex. 2101)
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`regarding a prior art patent on which Dr. Juels and Dr. Jakobsson are co-inventors.2
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`Petitioner Apple had no reason to submit the Juels Declaration with its petition
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`because it could not have anticipated that Dr. Jakobsson would submit a
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`declaration that interprets the prior art WO 2004/051585 publication (“’585
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`reference”) (Ex. 1104) in a manner inconsistent with its disclosure. It is
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`permissible rebuttal evidence.
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`Indeed, the Federal Circuit and the Board have consistently found that
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`rebuttal evidence like the Juels Declaration is appropriate on reply, especially
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`where, as here, the Patent Owner has taken Dr. Juels’ deposition, relied on such
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`testimony in its sur-reply, and still has a full opportunity to respond at the oral
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`hearing.
`
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`2 This motion is one of four virtually-identical motions filed in CBM2018-00025
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`(Paper No. 30), CBM2018-00024 (Paper No. 35), and IPR2018-00809 (Paper No.
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`36).
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`1
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`IPR2018-00813
`U.S. Patent No. 9,100,826
`
`II. ARGUMENT
`A. Dr. Juels’ Declaration Is Permissible Because It Directly
`Responds to Arguments Made by Dr. Jakobsson.
`It is well settled that expert declarations are permitted on reply where, as
`
`here, the declarations respond to arguments made by the patent owner or its expert.
`
`“[T]he petitioner in an inter partes review proceeding 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 . . . .” Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372, 1380-81
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`(Fed. Cir. 2018); see also Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1078 (Fed.
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`Cir. 2015) (holding that a reply declaration that fairly responds to arguments made
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`by patent owner’s expert was permissible on reply); Square, Inc. v. Unwired
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`Planet, LLC, Case No. CBM2014-00156, Paper No. 40, 2015 Pat. App. LEXIS
`
`12583, at *54 (PTAB Dec. 22, 2015) (same); Hughes Network Systems, LLC v.
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`California Institute of Technology, Case No. IPR2015-00059, Paper No. 42, 2016
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`Pat. App. LEXIS 1867, at *51 (PTAB Apr. 21, 2016) (allowing Petitioner’s reply
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`because “[t]he submission of rebuttal evidence with Petitioner’s reply is both
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`permitted and customary”).
`
`The Federal Circuit’s opinion in Belden Inc. v. Berk-Tek LLC is instructive.
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`In Belden, the petitioner submitted an expert declaration with its reply to rebut
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`arguments made by the patent owner’s expert. The patent owner moved to exclude
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`that declaration, arguing that it was not permissible on reply, and that there was no
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`2
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`IPR2018-00813
`U.S. Patent No. 9,100,826
`fair opportunity to respond. 805 F.3d at 1077-1078. The Board denied the motion,
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`and the Federal Circuit affirmed. Id. at 1078. In affirming, the Federal Circuit
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`explained that “[e]ach of the points that Mr. Baxter made in his declaration
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`responds to a statement made in Mr. Clark’s declaration,” and concluded that “Mr.
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`Baxter’s declaration fairly responds only to arguments made in Mr. Clark’s
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`declaration and Belden’s response.” Id. The Federal Circuit also rejected the
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`patent owner’s contention that it had no opportunity to respond, noting that there
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`are “multiple ways” to respond, including by cross-examining the expert,
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`submitting a sur-reply, or by disputing the substance of the declaration at oral
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`hearing. Id. at 1081.3
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`Here, the Juels Declaration responds directly to the Jakobsson Declaration.
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`Dr. Juels begins his declaration by explaining: “I submit this Declaration to
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`respond to the statements and opinions provided by Markus Jakobsson, my co-
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`inventor on the ’585 reference and Patent Owner’s expert witness.” Ex. 1120 ¶ 2.
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`Each of the points Dr. Juels made in his declaration thereafter responds to a
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`3 The August 2018 Trial Practice Guide—which Patent Owner cites
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`repeatedly in its motion—specifically references Belden when instructing that “a
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`petitioner may submit directly responsive rebuttal evidence in support of its reply.”
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`See August 2018 Practice Guide at 14.
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`
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`3
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`
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`IPR2018-00813
`U.S. Patent No. 9,100,826
`specific statement in the Jakobsson Declaration or Dr. Jakobsson’s deposition
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`testimony. For example, as shown in the following excerpt, Dr. Juels summarizes
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`and cites the paragraph from the Jakobsson Declaration before responding to it:
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`
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`Id. ¶ 48.
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`The following table maps each of Dr. Juels’ rebuttal opinions to the Jakobsson
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`Declaration or Dr. Jakobsson’s deposition testimony to which they respond.
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`Juels Declaration (Ex. 1120)
`
`¶¶ 37-38
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`¶¶ 39-43; 29-34
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`¶¶ 44-50
`¶¶ 51-53
`
`
`
`Jakobsson Declaration (Ex. 2101 /
`Deposition Testimony (Ex. 1117)
`¶ 75
`Dep. Tr. at 103:3-112:14
`¶ 92
`Dep. Tr. at 125:18-23; 134:19-135:7;
`134:4-10; 135:14-136:22
`¶ 54, 56-58
`¶¶ 63-64
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`4
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`
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`Juels Declaration (Ex. 1120)
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`¶¶ 54-56
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`IPR2018-00813
`U.S. Patent No. 9,100,826
`Jakobsson Declaration (Ex. 2101 /
`Deposition Testimony (Ex. 1117)
`Dep. Tr. at 152:17-20; 157:7-17
`¶ 69
`Dep. Tr. at 181:3-7
`
`The Juels Declaration thus follows the same approach as the reply
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`declaration found permissible in Belden. See Belden, 805 F.3d at 1078 (“Each of
`
`the points that Mr. Baxter made in his declaration responds to a statement made in
`
`Mr. Clark’s declaration. . . . After quoting Mr. Clark’s argument that JP ’910 does
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`not teach a method of making communication cables, the Baxter declaration
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`responds with reference to JP ’910 and a supporting exhibit.”).
`
`Dexom, Inc. v. Waveform Techs., Inc., cited by Patent Owner, is
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`distinguishable. There, the motion to exclude was based on the petitioner
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`attempting to fill in a gap in its prima facie case of unpatentability by introducing
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`new prior art references to satisfy a limitation. See Dexcom, Case No. IPR2016-
`
`01680, Paper No. 46 at 30 (PTAB Feb. 28, 2018). Here, however, Dr. Juels has
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`neither advanced any new theory or evidence to fill in a gap in Petitioner’s prima
`
`facie case of unpatentability, nor has Patent Owner made any such arguments in its
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`motion. See Hughes Network Systems, 2016 Pat. App. LEXIS 1867, at *51
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`(“Notably, Patent Owner does not allege that the Jezek Declaration raises any new
`
`issue. For example, there is no allegation that the Jezek Declaration was necessary
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`to establish a prima facie case of unpatentability.”).
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`5
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`IPR2018-00813
`U.S. Patent No. 9,100,826
`Tellingly, Patent Owner does not even attempt to identify any specific
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`statements by Dr. Juels as not responsive to Dr. Jakobsson or otherwise improper,
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`and Patent Owner cannot expect the Board to read through the entire record for
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`relevant evidence that might support its arguments. See SK Hynix Inc. v. Netlist,
`
`Inc., Case No. IPR2017-00562, Paper No. 36, 2018 Pat. App. LEXIS 7306, at *57
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`(PTAB July 5, 2018). For these reasons, the Board should deny Patent Owner’s
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`motion.
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`B.
`
`Petitioner Is Not Required to Anticipate All Possible Arguments
`in Its Petition.
`Patent Owner’s contention that “[t]here is no reason Apple could not have
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`presented such evidence in its petition” is entirely incorrect. Paper No. 34 at 2.
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`Petitioners are not expected or required to be omniscient and preempt all possible
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`arguments that a patent owner (or its expert) may raise. See Idemitsu Kosan Co. v.
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`SFC Co., 870 F.3d 1376, 1381 (Fed. Cir. 2017) (“To the extent Idemitsu suggests
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`that the Board could not reach a counterargument because it was not preemptively
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`addressed by the petition or institution decision, Idemitsu is plainly mistaken.”).
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`Here, Petitioner could not have reasonably anticipated that Patent Owner
`
`would rely upon opinions by an author of the ’585 reference that are so
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`fundamentally at odds with the plain text of the ’585 reference. For example, Dr.
`
`Jakobsson opined that a “one-way function” is required by all examples of the ’585
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`reference. See, e.g., Ex. 1117 (Jakobsson Dep. Tr.) at 134:4-10; Ex. 2101 ¶ 92.
`
`
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`6
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`
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`IPR2018-00813
`U.S. Patent No. 9,100,826
`But the ’585 reference explicitly discloses that a “one-way function” is just one of
`
`several alternative operations that may be applied: “The PIN (P) can be combined
`
`with A (K, T, E) by prepending or appending the PIN (P) to A (K, T, E), by
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`arithmetically adding the PIN (P) to A (K, T, E), or using a block cipher or other
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`one-way function, or other algorithm, or a combination of these and other
`
`techniques that combine two or more input values together.” Ex. 1104 ¶ [0073]
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`(emphasis added). Thus, Petitioner should be allowed to respond to such
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`unexpected arguments from one ’585 reference author with rebuttal evidence from
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`another ’585 reference author.
`
`C.
`Patent Owner Would Not Suffer Any Prejudice.
`Finally, Patent Owner’s claims of prejudice are based on the
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`misunderstanding that it would be “left without any rebuttal” at the hearing. Paper
`
`No. 34 at 3. However, in Belden, the Federal Circuit rejected this same argument,
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`finding that patent owners have “multiple ways” to respond to expert declarations
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`submitted on reply, including by filing a sur-reply, cross-examining the expert, and
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`by disputing the substance of the declaration at the oral hearing. Belden, 805 F.3d
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`at 1081.
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`All these options are available here. Patent Owner has already deposed Dr.
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`Juels in this and other proceedings, and relied on such testimony in its sur-replies.
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`See Patent Owner’s Sur-Reply, Paper No. 30 (IPR2018-00809); Patent Owner’s
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`
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`7
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`
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`IPR2018-00813
`U.S. Patent No. 9,100,826
`Sur-Reply, Paper No. 30 (IPR2018-00813). Indeed, Patent Owner has relied on
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`Dr. Juels’ testimony from this proceeding in another proceeding in which
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`Petitioner did not even submit a declaration from Dr. Juels in the first place. See
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`Patent Owner’s Reply In Support of Its Motion to Amend, Paper No. 30 (IPR2018-
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`00810). Moreover, Patent Owner may address Dr. Juels’ statements at the oral
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`hearing.
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`Patent Owner’s reliance on Realtime Data, LLC v. Iancu and Dexcom to
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`show prejudice is misplaced. Realtime did not even involve a reply declaration
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`submitted to rebut an expert’s declaration submitted with the patent owner’s
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`response, as is the case here. Rather, the issue in Realtime was whether it would
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`violate the notice requirements if the Board could rely on a prior art reference by
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`itself to invalidate a claim, when the petition relied upon that reference in
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`combination with another prior art reference. See Realtime Data, LLC v. Iancu,
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`912 F.3d 1368, 1373 (Fed. Cir. 2019). Moreover, the Federal Circuit ultimately
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`found that the patent owner would not be prejudiced. Id.
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`Dexcom similarly does not support a finding of prejudice. As explained
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`above, the circumstances in Dexcom are very different because the issue in
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`Dexcom was whether the petitioner could rely on a new prior art reference to fill in
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`a gap its prima facie case of unpatentability. Dexcom, Case No. IPR2016-01680,
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`Paper No. 46 at 30. As explained above, the Juels Declaration is directly
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`
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`8
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`
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`IPR2018-00813
`U.S. Patent No. 9,100,826
`responsive to arguments in the Jakobsson Declaration, and does not introduce any
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`new evidence to fill in a gap in Petitioner’s prima facie case of unpatentability.
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`III. CONCLUSION
`Based on the foregoing, Patent Owner’s motion to strike should be denied.
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`June 28th, 2019
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`Respectfully Submitted,
`
`
`
` /Monica Grewal/
`
`Monica Grewal
`Registration No. 40,056
`
`
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`
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`9
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`
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`IPR2018-00813
`U.S. Patent No. 9,100,826
`CERTIFICATE OF SERVICE
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`I hereby certify that on June 28, 2019, I caused a true and correct copy of
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`the foregoing materials:
`
` Petitioner’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 and in Paper 33 (Decision Granting Motion for
`
`Joinder with IPR2019-00176):
`
`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:
`
`(IPR2019-00176):
`Matthew A. Argenti (margenti@wsgr.com)
`Michael T. Rosato (mrosato@wsgr.com)
`WILSON SONSINI GOODRICH & ROSATI
`
`
`Respectfully Submitted,
`
`
`/Monica Grewal/
`Monica Grewal
`Registration No. 40,056
`
`Date: June 28, 2019
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`10
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