Paper No. 28
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`VISA INC., and VISA U.S.A. INC.,
`APPLE, INC.,
`Petitioners,
`
`v.
`
`UNIVERSAL SECURE REGISTRY LLC
`Patent Owner
`________________
`Case No. IPR2018-013501
`U.S. Patent No. 8,856,539
`________________
`
`PATENT OWNER’S MOTION TO STRIKE
`IMPROPER NEW EVIDENCE AND ARGUMENT
`
`
`
`
`
`
`1 Apple Inc., which filed a petition in IPR2019-00727, has been joined as a
`party to this proceeding
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`VISA INC., and VISA U.S.A. INC.,
`APPLE, INC.,
`Petitioners,
`
`v.
`
`UNIVERSAL SECURE REGISTRY LLC
`Patent Owner
`________________
`Case No. IPR2018-013501
`U.S. Patent No. 8,856,539
`________________
`
`PATENT OWNER’S MOTION TO STRIKE
`IMPROPER NEW EVIDENCE AND ARGUMENT
`
`
`
`
`
`
`1 Apple Inc., which filed a petition in IPR2019-00727, has been joined as a
`party to this proceeding
`
`
`
`
`
`Case No. IPR2018-01350
`U.S. Patent No. 8,856,539
`
`
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`Patent Owner Universal Secure Registry, L.L.C. (“PO”) moves to strike
`
`belatedly proffered argument and evidence that VISA INC. and VISA U.S.A. INC.
`
`(collectively, “Petitioner” or “VISA”) waited to include in Petitioner’s conditional
`
`motion to amend sur-reply (Paper 24) (“MTA Sur-Reply”). Exhibit 2013 highlights
`
`the new argument and evidence PO seeks to strike.
`
`Both governing law and PTAB practice prohibit Petitioner from submitting
`
`argument in reply that it could have presented earlier. Failure to strike these
`
`belated arguments is prejudicial as PO cannot respond to the new arguments.
`
`I.
`
`THE BOARD SHOULD STRIKE VISA’S BELATED ARGUMENT
`The governing statute and practice guide require a petition to identify “with
`
`particularity…the evidence that supports the grounds for the challenge to each
`
`claim. . . .” 35 U.S.C. § 312(a)(3)(B) (emphasis added); The Trial Practice Guide
`
`(Aug. 2018 Update) at 14; see also SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1356
`
`(2018) (“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).
`
`Here, Petitioner waited until its MTA Sur-Reply to introduce new purported
`
`
`
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`1
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`Case No. IPR2018-01350
`U.S. Patent No. 8,856,539
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`motivations to combine for claim limitations 39[e] and 47[b] and new reasons why
`
`Desai allegedly teaches those limitations. There is no reason Petitioner could not
`
`have presented these arguments in its Opposition (Paper 17). See Apple Inc., VISA
`
`Inc., and VISA U.S.A., Inc. v. Universal Secure Registry, LLC, IPR2018-00810 at
`
`17-18 (Paper 42) (PTAB Oct. 7, 2019) (“it would be a proper exercise of our
`
`discretion not to consider these [new] arguments.”). The rules are clear; tardy
`
`evidence should be stricken. See TPG at 18. As PO does not have an opportunity to
`
`rebut these new arguments, failure to strike is highly prejudicial. Cf. Realtime
`
`Data, LLC v. Iancu, 912 F.3d 1368, 1373 (Fed. Cir. 2019).
`
`A. New Motivations To Combine
`Petitioner’s Opposition argues “Pare also discloses merchant validation….”
`
`MTA Opp. at 10. However, it fails to proffer a motivation to combine Pare with
`
`the other references for Pare’s alleged disclosure of merchant validation through a
`
`Valid Apparatus Database. See id. at 10, 17-21. Nowhere does the Opposition state
`
`that the same reasons to combine Desai with the other references also apply to
`
`Pare’s alleged teaching. PO’s Reply notes such failure. MTA Reply at 18-19, n.4.
`
`Petitioner’s MTA Sur-Reply responds, “Petitioner cited Pare to show it is
`
`consistent with Desai, and Petitioner provided a reason to incorporate validation
`
`into the combination. Opp. 10, 17 (explaining merchant validation was optimal
`
`
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`2
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`Case No. IPR2018-01350
`U.S. Patent No. 8,856,539
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`way of incorporating granular access controls).” Ex. 2013 at 9. To the extent
`
`Petitioner is arguing that motivations to combine Desai with the other references
`
`also apply to its combination using Pare (e.g., “merchant validation was optimal
`
`way of incorporating granular access controls”), such arguments are new and
`
`should be struck. Petitioner’s failure to provide any reasons in its Opposition why a
`
`POSITA would combine Pare with the other references for an alleged disclosure of
`
`merchant validation through the Valid Apparatus Database does not warrant
`
`introducing new, unrelated motivations to combine in its MTA Sur-reply.
`
`B. New Arguments: Desai Teaches Limitations 39[e] and 47[b]
`Regarding claim limitations 39[e] and 47[b] (validating an identity of the
`
`provider), Petitioner’s Opposition only argued
`
`that Desai discloses
`
`these
`
`limitations because registered users—whether they are customers that store
`
`sensitive data in Desai’s database or merchants that only access such stored data—
`
`are “validated using, for example, cookies or other electronic data transfer
`
`protocols.” Opp. at 10 (citing Desai at 18:63-64).
`
`PO’s MTA Reply explained that col. 18, lines 63-64 of Desai discuss the
`
`“AUTH_USER” field that is part of the ZKEY software system. MTA Reply at 17.
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`PO further argued that “nowhere in Desai’s discussion about the ZKEY system
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`does Desai explain how the AUTH_USER field is used or how ‘cookies’ are used
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`3
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`Case No. IPR2018-01350
`U.S. Patent No. 8,856,539
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`to verify users of the ZKEY system.” Id. (citing Desai at 18:1-31:23 and FIGS. 16-
`
`51). The MTA Reply also explained that Desai’s KMS database, which requires
`
`that merchants use their private keys to access data stored on the KMS, does not
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`validate merchants’ identities using cookies. MTA Reply at 17-18.
`
`Petitioner’s MTA Sur-reply abandons the Opposition’s original argument
`
`and fails to respond to the MTA Reply’s position that Desai’s “cookies” and the
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`AUTH_USER field do not validate merchant identities. Rather, the MTA Sur-reply
`
`introduces new arguments concerning a “sign up process” that “involves
`
`‘enter[ing] a universal identification code’” to “‘uniquely identify the new
`
`member.’” Ex. 2013 at 9 (citing Desai at FIGS. 41, 42, 21:15-18, 27:36-28:17).
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`And while PO cited to 18:1-31:23 and FIGS. 16-51 of Desai to show that nowhere
`
`in Desai is there a disclosure of how AUTH_USER and “cookies” allegedly
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`validate merchant identities, Petitioner instead relies on 27:36-28:17 and FIGS. 41-
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`42 of Desai to advance its new “sign up process” argument that does not address
`
`Desai’s discussion of “cookies” or the AUTH_USER field. Indeed, nowhere in its
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`MTA Sur-reply does Petitioner ever reference AUTH_USER or “cookies or other
`
`electronic data
`
`transfer protocols” again. See MTA Reply. Accordingly,
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`Petitioner’s new arguments concerning the “sign up process” should be struck. See
`
`Exhibit 2013.
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`
`
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`4
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`Case No. IPR2018-01350
`U.S. Patent No. 8,856,539
`
` 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
`
`
`
`5
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`
`
`Date: October 25, 2019
`
`
`
`
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`
`
`Case No. IPR2018-01350
`U.S. Patent No. 8,856,539
`
`
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that
`
`PATENT OWNER’S MOTION TO STRIKE IMPROPER NEW EVIDENCE
`
`AND ARGUMENT was served on October 25, 2019 by e-mailing copies to:
`
`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
`
`Monica Grewal (Reg. No. 40,056)
`monica.grewal@wilmerhale.com
`Ben Fernandez (Reg. No. 55,172)
`ben.fernandez@wilmerhale.com
`WH-Apple Distribution List
`wh-apple-usr-ipr@wilmerhale.com
`WILMER CUTLER PICKERING HALE AND DORR LLP
`60 State Street
`Boston, MA 02109
`
`Mark Selwyn (Pro Hac Vice granted)
`mark.selwyn@wilmerhale.com
`WILMER CUTLER PICKERING HALE AND DORR LLP
`950 Page Mill Road
`Palo Alto, CA 94304-1050
`
`Date: October 25, 2019
`
` Respectfully submitted,
`By: /s/ Razmig H. Messerian
` Razmig H. Messerian (Reg. No. 56,983)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`865 S. Figueroa St., 10th Floor
`6
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`Case No. IPR2018-01350
`U.S. Patent No. 8,856,539
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`Los Angeles, CA 90017
`razmesserian@quinnemanuel.com
`
`7
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