IPR2019-00727
`
`Filed on behalf of Apple Inc.
`By: Monica Grewal, Reg. No. 40,056 (Lead Counsel)
`Ben Fernandez Reg. No. 55,172 (Backup Counsel)
`Kelvin Chan, Reg. No. 71,433 (Backup Counsel)
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, MA 02109
`Phone: (617) 526-6223
`Email: Monica.Grewal@wilmerhale.com
`
` Ben.Fernandez@wilmerhale.com
`
` Kelvin.Chan@wilmerhale.com
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________________________
`
`APPLE INC.
`Petitioner
`v.
`UNIVERSAL SECURE REGISTRY LLC
`Patent Owner of
`U.S. Patent No. 8,856,539 to Weiss
`____________________________________________
`
`IPR Trial No. IPR2019-00727
`MOTION FOR JOINDER
`
`
`
`Filed on behalf of Apple Inc.
`By: Monica Grewal, Reg. No. 40,056 (Lead Counsel)
`Ben Fernandez Reg. No. 55,172 (Backup Counsel)
`Kelvin Chan, Reg. No. 71,433 (Backup Counsel)
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, MA 02109
`Phone: (617) 526-6223
`Email: Monica.Grewal@wilmerhale.com
`
` Ben.Fernandez@wilmerhale.com
`
` Kelvin.Chan@wilmerhale.com
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________________________
`
`APPLE INC.
`Petitioner
`v.
`UNIVERSAL SECURE REGISTRY LLC
`Patent Owner of
`U.S. Patent No. 8,856,539 to Weiss
`____________________________________________
`
`IPR Trial No. IPR2019-00727
`MOTION FOR JOINDER
`
`
`
`
`
`I.
`
`INTRODUCTION
`Petitioner Apple Inc. (“Apple” or “Petitioner”) submits, concurrently with
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`this motion, a petition for inter partes review (the “Petition”) of claims 1-9, 16-31,
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`37, and 38 of U.S. Patent No. 8,856,539 (“the ’539 patent”). Apple respectfully
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`requests that this proceeding be joined with a pending inter partes review initiated
`
`by Visa Inc. and Visa USA Inc. (collectively “Visa”), the petitioners in
`
`IPR2018-01350 (“Visa IPR”).
`
`Apple’s request for joinder is timely under 37 C.F.R. §§ 42.22 and 42.122(b)
`
`because the Board issued an institution decision in the Visa IPR on February 11,
`
`2019, which is within one month of the filing of this motion. The Petition is also
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`narrowly tailored to raise only the grounds of unpatentability that are the subject of
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`the Visa IPR, and is essentially a copy of the Visa IPR petition, including the same
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`analysis of the same prior art and same expert testimony. In addition, joinder is
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`appropriate because it will efficiently resolve the validity of the challenged claims of
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`the ’539 patent without prejudicing the parties in the Visa IPR.
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`Absent termination of Visa as party to the proceeding, Apple has agreed to
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`participate in the proceeding in a very limited capacity. It will not separately
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`examine any witness during deposition nor submit any separate filings in the
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`proceeding. Apple also will not request any adjustments to the schedule. By doing
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`so, Apple’s limited participation will not impact the timeline of the Visa IPR trial.
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`1
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`Apple has conferred with counsel for Visa. Counsel for Visa confirms that
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`their client consents to this joinder.
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`II. BACKGROUND
`Patent Owner has asserted the ’539 patent against a number of defendants,
`
`including Apple. Petitioner was served with a complaint asserting infringement of
`
`the ’539 patent more than one year before filing the Petition. See Universal Secure
`
`Registry LLC v. Apple Inc. et al., Civ. No. 1:17-cv-00585 (D. Del.) (filed May 21,
`
`2017).
`
`On July 3, 2018, Visa filed a petition for inter partes review challenging
`
`claims 1-9, 16-31, 37, and 38 of the ’539 patent, which was assigned case number
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`IPR2018-01350. The Board instituted inter partes review on February 11, 2019.
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`Apple’s Petition presents challenges which are substantively identical to those
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`on which trial is requested in the Visa IPR. The Petition raises no new ground of
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`unpatentability from those in the Visa IPR because the Petition in the instant case is
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`a copy of the Visa IPR petition with respect to the proposed grounds, including the
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`same prior art analysis and expert testimony.
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`III. ARGUMENT
`A. Legal Standard
`
`The Board has authority to join as a party any person who properly files a
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`petition for inter partes review to an instituted inter partes review. 35 U.S.C. §
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`2
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`
`
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`315(c). A request for joinder must be filed “no later than one month after the
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`institution date of any inter partes review for which joinder is requested.” 37 C.F.R.
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`§ 42.122(b) (“Joinder may be requested by a patent owner or petitioner. Any request
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`for joinder must be filed, as a motion under § 42.22, no later than one month after the
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`institution date of any inter partes review for which joinder is requested.”).
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`The one-year time bar of 35 U.S.C. § 315(b) does not apply to a request for
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`joinder. 35 U.S.C. § 315(b) (final sentence) (“[t]he time limitation set forth in the
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`preceding sentence shall not apply to a request for joinder under subsection (c)”); 37
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`C.F.R. § 42.122(b).
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`Joinder is appropriate when it results in the just, speedy, and inexpensive
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`resolution of proceedings. 37 C.F.R. § 42.1(b). Joinder is particularly appropriate
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`when a later petitioner presents the identical grounds of unpatentability as an earlier
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`petitioner. See 157 CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of Sen.
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`Kyl) (“The Office anticipates that joinder will be allowed as of right - if an inter
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`partes review is instituted on the basis of a petition, for example, a party that files an
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`identical petition will be joined to that proceeding, and thus allowed to file its own
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`briefs and make its own arguments.”) (emphasis added). 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,
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`3
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`
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`2014) (quoting Kyocera Corporation v. Softview LLC, IPR2013-00004, Paper 15 at
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`*4 (April 24, 2013)).
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`In deciding whether to grant a motion for joinder, the Board considers several
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`factors including: (1) the rationale for why joinder is appropriate; (2) any new
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`grounds of unpatentability asserted in the new petition; (3) the impact (if any)
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`joinder would have on the trial schedule for the existing proceeding; and (4) how
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`briefing and discovery may be simplified in the joined proceeding. See Dell, Inc. v.
`
`Network-1 Security Solutions, Inc., IPR2013-00385, Paper No. 17 at *4 (PTAB July
`
`29, 2013).
`
`B. Apple’s Motion is Timely
`
`The Visa IPR petition was filed on July 3, 2018 and was instituted on
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`February 11, 2019. Because it is filed no later than one month after the institution
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`date, Apple’s Motion is timely under 37 C.F.R. § 42.122(b), which allows joinder to
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`be requested up to one month after the institution date of the inter partes review for
`
`which joinder is requested. 37 C.F.R. § 42.122(b). The Board has previously
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`concluded that joinder requests filed within one month of institution, like Apple’s,
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`are timely under § 42.112(b). See, e.g., Jaiwei Technology (HK) LTD. et al. v.
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`Lighting Science Group Corp., IPR2018-00263, Paper 7 at *6 (finding timely a
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`motion for joinder filed on November 30, 2017 of an inter partes review proceeding
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`instituted on November 1, 2017).
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`4
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`C. The Relevant Factors Weigh in Favor of Joinder
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`Each of the four factors considered by the Board weighs in favor of joinder.
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`As discussed below, granting joinder will not enlarge the scope of the Visa IPR and
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`will not negatively impact the Visa IPR schedule, but a decision denying joinder
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`could severely prejudice Apple. Thus, joinder is appropriate and warranted.
`
`
`Joinder is Appropriate
`Joinder with the Visa IPR is appropriate because the Petition is limited to the
`
`same grounds raised in the Visa IPR petition. The Petition relies on the same prior
`
`art analysis and the same expert declaration offered in support of the Visa IPR
`
`petition. The present Petition contains only minor modifications from the Visa IPR
`
`petition, such as changes to the address and identity of the petitioner. Both petitions
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`rely upon the declaration of Dr. Justin Douglas Tygar, dated July 3, 2018. Ex. 1002
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`(in both cases). Moreover, counsel for Visa has given consent to Apple for filing
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`this motion for joinder.
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`Joinder is also appropriate because it will promote the efficient, just, and
`
`speedy determination of validity of the challenged claims of the ’539 patent. For
`
`example, a final written decision on the validity of the ’539 patent has the potential
`
`to minimize issues in the underlying litigations, and potentially resolve the
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`litigations altogether with respect to the ’539 patent. Absent joinder, if Patent
`
`Owner and Visa settle following institution, the PTAB and/or a district court may be
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`5
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`forced to re-adjudicate the same issues on which Visa has already shown it is
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`reasonably likely to prevail, which would be a waste of judicial resources. Visa and
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`the public may also be prejudiced by such termination of the proceeding because it
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`would leave facially intact a patent that the Board has already found is likely
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`unpatentable.
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`Moreover, granting joinder will not prejudice Patent Owner or Visa, while
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`Apple could be prejudiced if joinder is denied. As mentioned above, the Petition
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`does not raise any new ground that is not raised in the Visa IPR petition. In addition,
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`joinder should not significantly affect the timing of the Visa IPR. Also, there should
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`be little to no additional cost to Patent Owner or Visa given the overlap in the
`
`petitions. On the other hand, Apple would be potentially prejudiced if joinder is
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`denied. For example, absent joinder, Patent Owner may attempt to use aspects of the
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`Visa IPR against Apple in district court, even though Apple was not able to
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`participate in the Visa IPR to protect its interests.
`
`
`No New Grounds Are Presented
`The Petition does not present any new ground of unpatentability. As
`
`mentioned above, the Petition presents only the grounds raised in the Visa IPR, and
`
`is based on the same prior art analysis and expert testimony submitted by Visa. The
`
`petitions do not differ in any substantive way. See, e.g., Hyundai, IPR2014-01543,
`
`Paper No. 11 at *2-4; Sony Corp. of Am. v. Network-1 Sec. Solutions, Inc.,
`
`6
`
`
`
`
`
`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).
`
`
`Joinder Will Not Negatively Impact the Visa IPR Trial
`Schedule
`Because the Petition, which is being filed after an institution decision in the
`
`Visa IPR, copies the grounds raised in the Visa IPR petition, including the prior art
`
`analysis and expert testimony provided by Visa, joinder will not prevent the Board
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`from issuing a final written decision, in a timely manner. The timing and content of
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`Apple’s Petition and motion for joinder ensure that there will be no impact to the
`
`Visa IPR trial schedule.
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`Given the identity of the challenges and Petitioner’s agreement to not
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`materially participate in the joined proceeding absent the affirmative decision of
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`Visa to be dismissed from the proceedings or transfer control to Petitioner, the grant
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`of the instant motion for joinder should have no impact the existing trial schedule
`
`and would not create any meaningful additional burden on Patent Owner. See Sony
`
`Corp. et al. v. Network-1 Security Solutions, Inc., IPR2013-00495, Paper No. 13, at
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`*4 (Sep. 16, 2013) (finding “that joinder would not impose any additional burden or
`
`costs on the existing parties because of Petitioners’ limited ‘understudy’ role”).
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`Moreover, Petitioner has agreed that Visa shall remain in control of the joined
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`proceedings. Petitioner has agreed to not materially participate in the joined
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`7
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`
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`proceedings unless and until the parties to the Visa IPR are dismissed from the
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`joined proceedings or elect to transfer control to Petitioner, as may occur in the event
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`of settlement or advanced settlement negotiations. In the event either of the
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`foregoing events occur, Petitioner intends to “step into the shoes” of Visa and
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`continue to prosecute the joined proceedings. Accordingly, Apple does not believe
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`at this time that any extension of the schedule will be required by virtue of joinder of
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`Apple as a petitioner to the Visa IPR proceeding. Even if the Board were to
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`determine that joinder would require a modest extension of the schedule, such an
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`extension is permitted by law and is not a reason for denying joinder. 35 U.S.C. §
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`316(a)(11); 37 C.F.R. § 42.100(c).
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`Moreover, Petitioner is agreeable to existing trial schedule set forth in the
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`February 12, 2019 Scheduling Order in the Visa IPR. Accordingly, the Board can
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`adopt a single schedule governing the joined proceedings, which would substantially
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`minimize any burden on the Board and the parties.
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`Discovery and Briefing Can Be Simplified
`Given the Petition is identical to the Visa IPR petition with respect to the
`
`grounds of unpatentability raised in the Visa IPR petition, the Board may adopt
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`procedures similar to those used in related cases to simplify briefing and discovery
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`during trial. As set forth above, Petitioner does not intend to file separate papers or
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`conduct separate cross examinations of any witnesses. Visa will remain in sole
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`8
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`
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`control of the review proceeding until such time as they elect to be dismissed from
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`the proceeding or pass control to Petitioner in view of pending settlement
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`negotiations with Patent Owner.
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`This arrangement substantially, if not entirely, eliminates the prospect that
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`any additional burden might be borne by Patent Owner in the joined proceeding.
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`The only meaningful difference, from Patent Owner’s perspective, would be that
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`Petitioner will attend calls with the Board, will be copied on any correspondence in
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`this proceeding, and may attend depositions and trial.
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`For avoidance of doubt, the foregoing is not intended to circumscribe any
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`right Petitioner may have to participate in any appeal from the joined proceeding.
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`The foregoing is also not intended to foreclose the possibility that Petitioner may
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`request permission to materially participate in these proceedings if the
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`circumstances change in a manner that warrants such participation. Lastly, the
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`foregoing is not intended to foreclose communication among Visa and Petitioner
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`concerning the substantive or procedural issues in the joined proceeding.
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`9
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`IV. CONCLUSION
`For the foregoing reasons, Petitioner respectfully request that the
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`above-captioned review proceeding be instituted and joined with Visa Inc. et al. v.
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`Universal Secure Registry LLC, IPR2018-01350. Any fees due in connection with
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`this motion may be charged to Deposit Account No. 08-0219.
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`Respectfully submitted,
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`Apple Inc.,
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`
`
`Dated: March 11, 2019
`Customer Number: 23483
`Tel: (617) 526-6223
`Fax: (617) 526-5000
`
`
`
`Petitioner
`
`By: /Monica Grewal/
`
`Monica Grewal
`Registration No. 40,056
`Wilmer Cutler Pickering
`Hale and Dorr, LLP
`
`
`
`
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`10
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`
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`CERTIFICATE OF SERVICE
`I hereby certify that on March 11, 2019, I caused a true and correct copy of the
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`foregoing materials:
`
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`to be served via overnight courier (Federal Express or Priority Mail Express) on the
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`Motion for Joinder
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`following attorneys of record as listed on PAIR:
`
` LANDO & ANASTASI, LLP
`One Main Street, Suite 1100
`Cambridge, MA 02142
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` courtesy copy of this Motion is also being served upon litigation counsel for
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` A
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`Patent Owner via email:
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`
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`
`
`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)
`Quinn Emanuel USR IPR (qe-usr-ipr@quinnemanuel.com)
`
`/Kelvin Chan/
`Kelvin Chan
`Registration No. 71,433
`
`
`
`- i -
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`
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