Trials@uspto.gov Paper 7
`571-272-7822
` Entered: May 30, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VISA INC. and VISA U.S.A. INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY, LLC,
`Patent Owner.
`____________
`
`Case IPR2019-00175
`Patent 9,100,826 B2
`____________
`
`
`Before PATRICK R. SCANLON, GEORGIANNA W. BRADEN, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`SCANLON, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Motion for Joinder
`35 U.S.C §§ 314, 315(c); 37 C.F.R. § 42.122(b)
`
`
`571-272-7822
` Entered: May 30, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VISA INC. and VISA U.S.A. INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY, LLC,
`Patent Owner.
`____________
`
`Case IPR2019-00175
`Patent 9,100,826 B2
`____________
`
`
`Before PATRICK R. SCANLON, GEORGIANNA W. BRADEN, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`SCANLON, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Motion for Joinder
`35 U.S.C §§ 314, 315(c); 37 C.F.R. § 42.122(b)
`
`
`
`IPR2019-00175
`Patent 9,100,826 B2
`
`
`
`I. INTRODUCTION
`Visa Inc. and Visa U.S.A. Inc. (“Petitioner”) filed a Petition (Paper 2,
`“Pet.”) requesting an inter partes review of claims 1, 2, 7, 8, 10, 11, 14, 15,
`21, 22, 24, 26, 27, 30, 31, and 34 of U.S. Patent No. 9,100,826 B2 (Ex.
`1001, “the ’826 patent”). Petitioner also filed a Motion for Joinder with
`Apple Inc. v. Universal Secure Registry, LLC, Case IPR2018-00810.
`Paper 3 (“Mot.”). Universal Secure Registry, LLC (“Patent Owner”) did not
`file a Preliminary Response; nor did Patent Owner file an opposition to the
`Motion for Joinder. We have authority under 35 U.S.C. § 314(a), which
`provides that an inter partes review may not be instituted “unless . . . there is
`a reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.”
`
`II. BACKGROUND
`A. Related Matters
`As required by 37 C.F.R. § 42.8(b)(2), each party identifies various
`judicial or administrative matters that would affect or be affected by a
`decision in this proceeding. Pet. 3–4; Paper 6, 2 (Patent Owner’s Mandatory
`Notices).
`
`B. IPR2018-00810
`In IPR2018-00810, Apple, Inc., challenged claims 1, 2, 7, 8, 10, 11,
`14, 15, 21, 22, 24, 26, 27, 30, 31, and 34 of the ’826 patent, and the Board
`instituted an inter partes review of the challenged claims as unpatentable
`
`
`
`
`2
`
`
`
`IPR2019-00175
`Patent 9,100,826 B2
`
`
`under 35 U.S.C. § 103 over Maritzen,1 Jakobsson,2 and Niwa.3 Apple, Inc.
`v. Universal Secure Registry LLC, Case IPR2018-00810, slip op. at 5, 20
`(PTAB Oct. 9, 2018) (Paper 8) (“Apple Inst.”).
`
`III. INTER PARTES REVIEW
`The Petition in this proceeding asserts the same single ground of
`unpatentability as the one on which we instituted review in IPR2018-00810.
`Compare Pet. 19–77, with Apple Inst. 5, 20. Indeed, Petitioner states “the
`Petition is limited to the same grounds proposed in the IPR2018-00810
`petition,” and it “relies on the same prior art analysis and identical expert
`testimony to that submitted by Apple.” Mot. 4. Petitioner also states the
`“Petition does not raise any new ground that is not raised in the IPR2018-
`00810 petition.” Id. Thus, for the same reasons stated in our Decision on
`Institution in IPR2018-00810, we determine institution is warranted here.
`See generally Apple Inst.
`
`IV. MOTION FOR JOINDER
`Having determined that institution is warranted, we consider
`Petitioner’s Motion for Joinder. Section 315(c) provides, in relevant part,
`that “[i]f the Director institutes an inter partes review, the Director, in his or
`her discretion, may join as a party to that inter partes review any person who
`properly files a petition under section 311.” When determining whether to
`grant a motion for joinder we consider factors such as timing and impact of
`
`1 U.S. Patent Application Publication No. 2004/0236632 A1, published
`November 25, 2004 (Ex. 1004).
`2 International Patent Application Publication No. WO 2004/051585 A2,
`published June 17, 2004 (Ex. 1005).
`3 U.S. Patent No. 6,453,301 B1, issued September 17, 2002 (Ex. 1007).
`
`3
`
`
`
`
`IPR2019-00175
`Patent 9,100,826 B2
`
`
`joinder on the trial schedule, cost, discovery, and potential simplification of
`briefing. Kyocera Corp. v. SoftView, LLC, Case IPR2013-00004, slip op.
`at 4 (PTAB Apr. 24, 2013) (Paper 15).
`The Board instituted an inter partes review in IPR2018-00810 on
`October 9, 2018. Petitioner’s Motion for Joinder was filed November 2,
`2018. Paper 3. Thus, Petitioner’s Motion for Joinder is timely because
`joinder was requested no later than one month after the date of institution in
`IPR2018-00810. See 37 C.F.R. § 42.122(b).
`The Petition in this case asserts the same unpatentability ground on
`which we instituted review in IPR2018-00810. See Mot. 4. Petitioner
`further explains that it relies on the same prior art analysis and expert
`testimony submitted in IPR2018-00810. Id. Thus, the Petition does not
`present any ground or matter not already at issue in IPR2018-00810, and it
`will have minimal impact on that proceeding.
`If joinder is granted, Petitioner anticipates participating in the
`proceeding in a limited capacity absent termination of Apple as a party to the
`proceeding, and it is agreeable to the schedule set forth for IPR2018-00810.
`Id. at 2. Petitioner agrees that it “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.” Id. at 6. Because
`Petitioner relies on the same expert declaration as Apple, no additional
`depositions will be required. Id. at 6–7.
`Under these circumstances, we agree with Petitioner that joinder is
`appropriate and will not unduly impact the ongoing trial in IPR2018-00810.
`
`
`
`
`4
`
`
`
`IPR2019-00175
`Patent 9,100,826 B2
`
`
`We limit Petitioner’s participation in the joined proceeding, such that
`(1) Apple alone is responsible for all petitioner filings in the joined
`proceeding until such time that it is no longer an entity in the joined
`proceeding, and (2) Petitioner is bound by all filings by Apple in the joined
`proceeding, except for (a) filings regarding termination or settlement and
`(b) filings where Petitioner receives permission to file an independent paper.
`Petitioner must obtain prior Board authorization to file any paper or to take
`any action on its own in the joined proceeding, so long as Apple remains as
`a non-terminated petitioner in the joined proceeding. This arrangement
`promotes the just and efficient administration of the ongoing trial in
`IPR2018-00810 and protects the interests of Apple, as original petitioner in
`IPR2018-00810, and of Patent Owner.
`For the foregoing reasons, and with the limitations discussed above,
`Petitioner’s Motion for Joinder is granted.
`
`V. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that inter partes review of claims 1, 2, 7, 8, 10, 11, 14, 15,
`21, 22, 24, 26, 27, 30, 31, and 34 of the ’826 patent is warranted on the sole
`asserted ground of unpatentability;
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2018-00810 is granted, and Visa Inc. and Visa U.S.A. Inc. are joined as
`petitioners in that proceeding pursuant to 37 C.F.R. § 42.122, subject to the
`conditions discussed above;
`FURTHER ORDERED that the Petition is dismissed, pursuant to
`37 C.F.R. § 42.71(a);
`
`
`
`
`5
`
`
`
`IPR2019-00175
`Patent 9,100,826 B2
`
`
`
`FURTHER ORDERED that, subsequent to joinder, the Scheduling
`Order in place for IPR2018-00810 (Paper 9) remains unchanged and shall
`govern the joined proceeding;
`FURTHER ORDERED that all future filings in the joined proceeding
`shall be made only in IPR2018-00810;
`FURTHER ORDERED that the case caption in IPR2018-00810 for all
`further submissions shall be changed to add Visa Inc. and Visa U.S.A. Inc.
`as named Petitioner after Apple and to indicate by footnote the joinder of
`IPR2019-00175 to that proceeding, as indicated in the attached sample case
`caption; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2018-00810.
`
`
`
`
`
`
`6
`
`
`
`IPR2019-00175
`Patent 9,100,826 B2
`
`
`
`For PETITIONER:
`
`Matthew Argenti
`Michael Rosato
`WILSON SONSINI GOODRICH & ROSATI
`margenti@wsgr.com
`mrosato@wsgr.com
`
`
`For PATENT OWNER:
`
`James Glass
`Tigran Guledjian
`Christopher Mathews
`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
`
`
`
`
`
`
`7
`
`
`
`IPR2019-00175
`Patent 9,100,826 B2
`
`
`
`Sample Case Caption
`
`
`
`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.
`____________
`
`Case IPR2018-008104
`Patent 9,100,826 B2
`____________
`
`
`
`
`
`4 Visa Inc. and Visa U.S.A. Inc., which filed a petition in IPR2019-00175,
`have been joined as a party to this proceeding.
`
`8
`
`
`
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