Paper No. ____
`Filed: November 2, 2018
`Filed on behalf of: Visa Inc. and Visa U.S.A. Inc.
`By: Matthew A. Argenti (margenti@wsgr.com)
`Michael T. Rosato (mrosato@wsgr.com)
`WILSON SONSINI GOODRICH & ROSATI
`
`650 Page Mill Road
`Palo Alto, CA 94304
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`VISA INC. and VISA U.S.A. INC.,
`Petitioners,
` v.
`UNIVERSAL SECURE REGISTRY, LLC,
`Patent Owner.
`
`_____________________________
`
`Case IPR2019-00174
`Patent No. 9,530,137 B2
`_____________________________
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c)
`AND 37 C.F.R. §§42.22 AND 42.122(b)
`
`
`
`
`
`Filed: November 2, 2018
`Filed on behalf of: Visa Inc. and Visa U.S.A. Inc.
`By: Matthew A. Argenti (margenti@wsgr.com)
`Michael T. Rosato (mrosato@wsgr.com)
`WILSON SONSINI GOODRICH & ROSATI
`
`650 Page Mill Road
`Palo Alto, CA 94304
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`VISA INC. and VISA U.S.A. INC.,
`Petitioners,
` v.
`UNIVERSAL SECURE REGISTRY, LLC,
`Patent Owner.
`
`_____________________________
`
`Case IPR2019-00174
`Patent No. 9,530,137 B2
`_____________________________
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c)
`AND 37 C.F.R. §§42.22 AND 42.122(b)
`
`
`
`
`
`
`
`I.
`Statement of the Precise Relief Requested
`Visa Inc. and Visa U.S.A. Inc. (together, “Visa” or “Petitioners”) submit,
`concurrently with this motion, a petition for inter partes review (“Petition”) of
`claims 1, 2, 5, 6, 7, 9 and 12 of U.S. Patent No. 9,530,137 (“the ’137 patent”),
`which is assigned to Universal Secure Registry, LLC (“Patent Owner”). Visa
`respectfully requests joinder pursuant to 35 U.S.C. § 315(c) and 37 C.F.R.
`§ 42.122(b) of the concurrently filed Petition with a pending inter partes review
`initiated by Apple Inc. (“Apple”), IPR2018-00809.
`Joinder will promote efficiency and consistent resolution of substantively
`identical challenges to the same patent. This motion for joinder is timely because it
`is filed within one month of the institution decision in IPR2018-00809. Joinder
`should create no unfair burden for the Board, Patent Owner, or Apple because
`these grounds are substantive copies of the instituted grounds from the original
`petition filed in IPR2018-00809. The present Petition contains only minor
`modifications from the petition in IPR2018-00809, such as changes to address the
`identity of the petitioner, the request for joinder with IPR2018-00809, and
`omission of claims which were disclaimed by Patent Owner subsequent to the
`filing of the petition in IPR2018-00809 (i.e., claims 8, 10, and 11). The Petition
`relies upon the expert declaration of Dr. Victor Shoup (Ex. 1003), which was
`-1-
`
`
`
` submitted in IPR2018-00809. Petitioner has updated the exhibit labeling to match
`the case information for this case.
`Absent termination of Apple as a party to the proceeding, Visa anticipates
`participating in a joined proceeding in an understudy role. Moreover, joinder will
`have no impact on the trial schedule of IPR2018-00809 because that IPR is still in
`its early trial stages, and Visa, in its limited role, is agreeable to the same schedule.
`Visa has conferred with counsel for Apple regarding the subject of this
`motion, and counsel for Apple indicated that Apple does not oppose joinder.
`II. Background
`On April 4, 2018, Apple filed a petition for inter partes review challenging
`claims 1-2 and 5-12 of the ’137 patent, Case No. IPR2018-00809. On July 6, 2018,
`Patent Owner disclaimed claims 8, 10, and 11. Ex. 2003, 1. On October 9, 2018,
`the Board instituted review on claims 1, 2, 5, 6, 7, 9, and 12. This Petition is a
`practical copy of the IPR2018-00809 petition, including the same prior art analysis
`and identical expert testimony. See Pet.
`III. Argument
`A. Legal Standard
`The Board has authority to join as a party to an instituted inter partes review
`any person who properly files a petition for inter partes review. 35 U.S.C. §315(c).
`A motion for joinder must be filed within one month of institution of any inter
`-2-
`
`
`
` partes review for which joinder is requested. 37 C.F.R. § 42.122(b). In deciding
`whether to grant a motion for joinder, the Board considers several factors
`including: (1) the reasons why joinder is appropriate; (2) whether the party to be
`joined has presented any new grounds of unpatentability; (3) what impact, if any,
`joinder would have on the trial schedule for the existing review; and (4) how
`briefing and discovery may be simplified. See, e.g., Hyundai Motor Co. v. Am.
`Vehicular Sciences LLC, IPR2014-01543, Paper No. 11 at 3 (Oct. 24, 2014);
`Macronix Int’l Co. v. Spansion, IPR2014-00898, Paper 15 at 4 (Aug. 13, 2014)
`(quoting Kyocera Corporation v. Softview LLC, IPR2013-00004, Paper 15 at 4
`(April 24, 2013)).
`B. Visa’s Motion for Joinder Is Timely
`Joinder may be requested no later than one month after the institution date of
`an inter partes review for which joinder is requested. 37 C.F.R. § 42.122. Here,
`because the Board issued its institution decision in IPR2018-00809 on October 9,
`2018, this Motion for Joinder and the accompanying Petition are timely.
`C. The Relevant Factors Weigh in Favor of Joinder
`Each of the four factors considered by the Board weighs in favor of joinder.
`As discussed below, granting joinder will not enlarge the scope of the IPR2018-
`00809 beyond that proposed in the original petition and will not negatively impact
`the IPR2018-00809 schedule.
`-3-
`
`
`
`1.
`Joinder is Appropriate
`Joinder with IPR2018-00809 is appropriate because the Petition is limited to
`the same grounds proposed in the IPR2018-00809 petition. It also relies on the
`same prior art analysis and identical expert testimony to that submitted by Apple.
`Indeed, the Petition is nearly identical with respect to the grounds raised in the
`IPR2018-00809 petition, and does not include any grounds not raised in that
`petition.
`Joinder is also appropriate because it will promote the just, speedy, and
`inexpensive resolution of patentability issues, including the determination of
`patentability of the challenged claims of the ’137 patent.
`Moreover, granting joinder will not prejudice Patent Owner or Apple. As
`mentioned above, the accompanying Petition does not raise any new ground that is
`not raised in the IPR2018-00809 petition. Therefore, joinder should not
`significantly affect the timing in IPR2018-00809. Also, there should be little to no
`additional cost to Patent Owner or Apple given the absence of new grounds. On the
`other hand, Visa and the public may be potentially prejudiced if joinder is denied.
`For example, absent joinder, Patent Owner and Apple might settle and request
`termination of the proceedings, leaving facially intact a patent that the Board has
`already found is likely unpatentable.
`-4-
`
`
`
`
`2.
`No New Grounds Are Presented
`The Petition does not present any new ground of unpatentability. As
`mentioned above, the Petition presents for review identical grounds as those
`instituted in IPR2018-00809. The present Petition is based on the same prior art
`analysis and expert testimony that was submitted by Apple. The Board has granted
`joinder where doing so does not introduce any additional arguments. See, e.g.,
`Hyundai, IPR2014-01543, Paper No. 11 at 2-4; Sony Corp. of Am. v. Network-1
`Sec. Solutions, Inc., IPR2013-00495, Paper No. 13 at 5-9 (Sep. 16, 2013); Dell Inc.
`v. Network-1 Solutions, Inc., IPR2013-00385, Paper No. 17, at 6-10 (Jul. 29,
`2013); Motorola Mobility LLC v. Softview LLC, IPR2013-00256, Paper 10 at 4-10
`(June 20, 2013). 3.
`Joinder Will Not Negatively Impact the IPR2018-00809
`Trial Schedule
`Because the Petition copies grounds raised in the IPR2018-00809 petition,
`including the prior art analysis and expert testimony substantively identical to that
`provided by Apple, joinder will have no substantial effect on the parties, or prevent
`the Board from issuing a final written decision in a timely manner. The timing and
`content of Visa’s petition and motion for joinder minimize any impact to the
`IPR2018-00809 trial schedule. Moreover, as discussed above, Visa anticipates
`participating in the proceeding in a limited capacity as an understudy, absent
`termination of Apple as a party. For example, if the proceedings are joined it is
`-5-
`
`
`
`
` anticipated that no expert witnesses beyond those presented by Apple and Patent
`Owner will present testimony. Accordingly, Visa does not believe that any
`extension of the schedule will be required by virtue of joinder of Visa as a
`petitioner to this proceeding.
`Discovery and Briefing Can Be Simplified
`4.
`Given the Petition is identical to the IPR2018-00809 petition with respect to
`grounds of unpatentability raised, the Board may adopt procedures similar to those
`used in other cases to simplify briefing and discovery during trial. See e.g.,
`Hyundai, IPR2014-01543, Paper No. 11 at 5; Dell, IPR2013-00385, Paper No. 17
`at 8-10; Motorola, IPR2013-00256, Paper 10 at 8-10. Specifically, as long as
`Apple remains a party, the Board may order petitioners to consolidate filings, and
`to limit Visa to no additional filings in its understudy role. As long as Apple
`remains a party, Visa will not submit any separate filings unless it disagrees with
`Apple’s position, and in the event of such disagreement, it will request
`authorization from the Board to submit a short separate filing directed only to
`points of disagreement with Apple. The Board may allow the Patent Owner a
`corresponding number of pages to respond to any separate filings. See Dell Inc.,
`supra, at 8-9.
`Further, no additional depositions will be needed and depositions will be
`completed within ordinary time limits. Because Visa’s petition relies on the same
`-6-
`
`
`
` expert and the same declaration as Apple’s petition, only a single deposition is
`needed for the proposed joined proceeding.
`Moreover, to the extent that Visa is permitted to participate in the
`proceedings, Visa will endeavor to coordinate with Apple to consolidate authorized
`filings, manage questioning at depositions, ensure that briefing and discovery
`occur within the time normally allotted, and avoid redundancies. Visa will
`maintain a secondary role in the joined proceeding. As noted above, Visa is
`willing to take a backseat role, in which it would not file any separate papers
`without consultation with Apple and prior authorization from the Board. These
`procedures should simplify briefing and discovery and remove any “complication
`or delay” that might allegedly be caused by joinder, while providing the parties an
`opportunity to address all issues that may arise, and avoiding any undue burden on
`Patent Owner, Apple, and the Board.
`IV. Conclusion
`For the foregoing reasons, Visa respectfully requests that this motion be
`granted and an inter partes review of the challenged claims 1, 2, 5, 6, 7, 9, and 12
`of the ’137 patent be instituted based on the grounds set forth in the Petition, and
`that this proceeding be joined with IPR2018-00809.
`
`-7-
`
`
`
`Dated: November 2, 2018
`
`
`
`
`
`
`Respectfully submitted,
`
`/ Matthew A. Argenti /
`Matthew A. Argenti, Lead Counsel
`Reg. No. 61,836
`-8-
`
`
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), this is to certify that I
`caused to be served a true and correct copy of the foregoing Motion for Joinder by
`
`overnight courier (Federal Express or UPS), on this 2nd day of November, 2018,
`on the Patent Owner at the correspondence address of the Patent Owner as follows:
`LANDO & ANASTASI, LLP
`One Main Street, Suite 1100
`Cambridge, MA 02142
` UNIVERSAL SECURE REGISTRY, LLC
`59 Sargent Street
`Newton, MA 02458
` And additional copies have been delivered to counsel for Patent Owner in
`IPR2018-00809, as follows:
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`
`51 Madison Avenue, 22nd Floor
`
`New York, NY 10010
`
`And to counsel for Petitioner Apple Inc. in IPR2018-00809, as follows:
`WILMER CUTLER PICKERING HALE AND DORR LLP
`
`60 State Street
`Boston, MA 02109
`
` Respectfully submitted,
`
`/ Matthew A. Argenti /
`Dated: November 2, 2018
`
`Matthew A. Argenti, Lead Counsel
`Reg. No. 61,836
`
`-9-
`
`
`
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