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`Paper No. ___
`Filed: November 1, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`—————————————————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`VISA INC., VISA U.S.A. INC., and
`APPLE INC.,
`Petitioners,
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`v.
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`UNIVERSAL SECURE REGISTRY LLC,
`Patent Owner.
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`—————————————————
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`Case IPR2018-013501
`Patent No. 8,856,539
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`—————————————————
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`PETITIONERS’ OPPOSITION TO
`PATENT OWNER’S MOTION TO STRIKE
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`1 Apple Inc., which filed a petition in IPR2019-00727, has been joined as a
`party to this proceeding.
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`Case IPR2018-01350
`Patent 8,856,539
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`Patent Owner’s (“PO”) motion to strike (“MTS”, Paper 28) relies on
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`mischaracterizations of Petitioner’s arguments and invites legal error by the Board.
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`What’s more, PO improperly treats its motion as an opportunity to augment its
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`earlier briefing. Because the identified portions of Petitioner’s Surreply to PO’s
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`Conditional Motion to Amend (“CMTA Surreply”) do not present any improper
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`new arguments, PO’s MTS should be denied.
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`I.
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`DESAI’S DISCLOSURE OF LIMITATIONS 39[E] AND 47[B]
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`PO seeks to strike Petitioner’s CMTA Surreply at 9:5-14 as new argument.
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`MTS 3-4. However, Petitioner’s CMTA Surreply is entirely consistent with the
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`CMTA Opposition and directly responds to misguided arguments first raised in
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`PO’s CMTA Reply.
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`As an initial matter, PO’s motion to strike is, itself, a vehicle for improper
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`new argument. Petitioner’s CMTA Opposition identified portions of Desai
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`demonstrating that (1) registered users of the Desai system, including merchants,
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`have their own user profiles in the database, and (2) each user is validated using
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`cookies or other electronic data transfer protocols. CMTA Opp. 10. In response,
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`PO argued that the cited portion of Desai failed to explain “how cookies are used
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`to verify users of the ZKEY system” and further argued that verifying merchants
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`was unnecessary in order to grant them key-based information access. CMTA
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`Reply, 17-18 (emphasis added). That is, PO did not dispute that merchants are
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`-1-
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`Case IPR2018-01350
`Patent 8,856,539
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`validated, but rather argued the mechanics of that verification are undisclosed and
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`the purpose of the verification was not for permitting information access. See, e.g.,
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`CMTA Surreply, 8 (explaining that merchant validation was undisputed). Now,
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`PO argues for the first time that “Desai’s ‘cookies’ and the AUTH_USER field do
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`not validate merchant identities.” MTS, 4. This is entirely different than its Reply
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`argument that Desai does not explain how the validation is performed. PO’s
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`motion to strike is a thinly-veiled attempt to supplement its substantive briefing
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`and backtrack from concessions PO now regrets.
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`Beyond that, PO’s assertions that Petitioner’s Surreply “abandons” the
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`analysis in the Opposition and presents improper new argument are completely
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`false. The Opposition identifies disclosure in Desai demonstrating merchants are
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`validated. The Surreply responds directly to PO’s misguided argument that the
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`validation disclosed in Desai and identified in the Opposition is unrelated to
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`providing merchants information access.
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`PO’s CMTA Reply argued that “[n]owhere in this [information access]
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`process does Desai describe the merchant having to validate itself to the
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`information exchange database.” CMTA Reply, 17 (citing Desai 18:1-31:23 and
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`FIGS. 16-51). Petitioner’s CMTA Surreply at 9:5-14 directly addresses PO’s
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`mischaracterization of Desai by pointing to specific passages within PO’s own
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`citations that show Desai treats validated merchants differently than those who are
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`-2-
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`Case IPR2018-01350
`Patent 8,856,539
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`unregistered in the system when considering a request to access information.
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`CMTA Surreply, 9 (“Nevertheless, PO is wrong that Desai’s merchant validation is
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`unrelated to its data access restrictions.”). Rather than “abandon[ing] the
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`Opposition’s original argument” as alleged by PO (MTS, 4), Petitioner simply
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`responded to PO’s mischaracterization of Desai and explained why the merchant
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`validation identified in the Opposition is not disconnected from information access
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`as PO alleged. See CMTA Opp., 10; CMTA Surreply, 9. Petitioner could not have
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`anticipated that PO would raise an argument directly inconsistent with disclosure
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`PO cited in support of that argument, and was entitled to respond when it occurred.
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`II. MOTIVATION TO INCORPORATE MERCHANT VALIDATION
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`PO argues Petitioner failed to provide any reason why a POSITA would
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`combine Pare with the other cited prior art until its Surreply. MTS, 2-3
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`(addressing CMTA Surreply at 9:17-19). However, PO cannot possibly
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`demonstrate that this portion of the Surreply is new argument—it explicitly restates
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`arguments made in the Opposition. The Surreply states “Petitioner cited Pare to
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`show it is consistent with Desai,” citing the Opposition at 10 which explains “Pare
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`also discloses merchant validation” following discussion of Desai. CMTA
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`Surreply, 9. The Surreply also states “Petitioner provided a reason to incorporate
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`validation into the combination” and paraphrases that explanation (“merchant
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`validation was an optimal way of incorporating granular access controls”). Id.; c.f.,
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`-3-
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`Case IPR2018-01350
`Patent 8,856,539
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`CMTA Opposition, 17 (“[I]t would have been readily apparent that when
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`incorporating Desai’s granular access control, merchant validation was an optimal
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`way of doing this.”). Nothing PO objects to was first presented in the Surreply.
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`PO does not dispute that the Opposition presents a motivation to incorporate
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`merchant validation into the proposed combination. Rather, PO argues the
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`Opposition identifies “reasons to combine Desai with the other references” but
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`“fails to proffer a motivation to combine Pare with the other references.” MTS, 2.
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`Yet the Supreme Court has made clear that an obviousness challenge only requires
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`an articulated rationale to combine known elements. KSR Int’l Co. v. Teleflex Inc.,
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`550 U.S. 398, 405(2007) (“To determine whether there was an apparent reason to
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`combine the known elements … , it will often be necessary to look to interrelated
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`teachings of multiple patents; to the effects of demands known to the design
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`community or present in the marketplace; and to the background knowledge
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`possessed by a [POSITA].”). PO’s demand for a reason to combine Pare with
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`other references is thus misplaced; what matters is whether a POSITA would have
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`combined merchant validation, as taught by both Desai and Pare, with other
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`aspects of the prior art. Petitioner addressed that in its CMTA Opposition. See,
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`e.g., CMTA Opp., 17 (“[M]erchant validation was an optimal way of
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`[incorporating granular access control].”). Accordingly, Petitioner’s CMTA
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`Surreply at 9:17-19 presents no new arguments and does not warrant striking.
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`-4-
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`Case IPR2018-01350
`Patent 8,856,539
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`Date: November 1, 2019
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`Respectfully submitted,
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`/ Matthew A. Argenti /
`Matthew A. Argenti, Lead Counsel
`Reg. No. 61,836
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`-5-
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`Case IPR2018-01350
`Patent 8,856,539
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`CERTIFICATE OF SERVICE
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`I certify that the foregoing Petitioners’ Opposition to Patent Owner’s Motion
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`to Strike was served on this 1st day of November, 2019, on the Patent Owner at the
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`correspondence address of the Patent Owner as follows:
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`James M. Glass
`Tigran Guledjian
`Christopher A. Matthews
`Nima Hefazi
`Richard Lowry
`Razmig Messerian
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`jimglass@quinnemanuel.com
`tigranguledjian@quinnemanuel.com
`chrismathews@quinnemanuel.com
`nimahefazi@quinnemanuel.com
`richardlowry@quinnemanuel.com
`razmesserian@quinnemanuel.com
`qe-usr-ipr@quinnemanueal.com
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`And on the remaining petitioners as follows:
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`Monica Grewal
`Benjamin Fernandez
`Mark Selwyn
`WILMER CUTLER PICKERING HALE AND DOOR LLP
`monica.grewal@wilmerhale.com
`ben.fernandez@wilmerhale.com
`mark.selwyn@wilmerhale.com
`wh-apple-usr-ipr@wilmerhale.com
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`
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`Date: November 1, 2019
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`Respectfully submitted,
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`
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`/ Matthew A. Argenti /
`Matthew A. Argenti, Lead Counsel
`Reg. No. 61,836
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`-6-
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