From:
`To:
`Cc:
`Subject:
`Date:
`Attachments:
`
`Brian Mack
`Precedential_Opinion_Panel_Request
`#USAA-IPRs; Glasser, Lisa; Sheasby, Jason; Redjaian, Babak; Rowles, Tony; Mike Fleming
`Request for POP Review in IPR2020-01101
`Tuesday, February 23, 2021 7:16:15 PM
`IPR2020-01101_Rehearing_Request.pdf
`
`Dear Honorable Director,
`
`Petitioner Mitek Systems, Inc. (“Mitek”) respectfully requests Precedential Opinion Panel (POP)
`Review of the Board’s institution decision in IPR2020-01101, issued January 26, 2021. Concurrently
`with this request, Mitek is timely filing the attached Request for Rehearing under 37 C.F.R. §
`42.71(d).
`
`Based on my professional judgment, I believe the Board panel decision is contrary to the following
`decision(s) of the Supreme Court of the United States, the United States Court of Appeals for the
`Federal Circuit, or the precedent(s) of the Board: General Plastic Industrial Co. v. Canon Kabushiki
`Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential); Valve Corp. v. Electronic
`Scripting Products, Inc., IPR2019-00062, Paper 11 (PTAB Apr. 2, 2019) (precedential).
`
`Respectfully, the Board’s determination misapprehended the applicable standard under General
`Plastic and Valve, and overlooked key record evidence establishing that Mitek’s Petition is not an
`unfair follow-on petition. As such, the Decision punishes Mitek for doing nothing more than
`cooperating with the judicial process. Rather than focus on the relationship between Mitek and
`Wells Fargo with respect to the assertion of the challenged patent, as is required, the Decision
`considers any and all contact between them, even though they have a pre-existing business
`relationship separate from Patent Owner’s assertion of the challenged patent. When viewed in light
`of the proper standard, the relationship between Mitek and Wells Fargo with respect to the
`assertion of the challenged patent is not so significant (indeed, it is nonexistent) as to warrant
`denying Mitek’s Petition as an unfair follow-on petition to Wells Fargo’s.
`
`The Decision sends a clear message to all suppliers in any industry that they must not cooperate with
`or contact their any of their customers once litigation has been threatened, or else they risk losing
`the right to petition for inter partes review—an inefficient and unfair rule that is contrary to the
`purpose of the AIA. Here, the undisputed evidence (including admissions from Patent Owner in
`connection with its motion to dismiss Mitek’s declaratory judgment action for lack of subject matter
`jurisdiction) confirms that (1) Patent Owner has never accused or even threatened Mitek of
`infringement of the challenged patent; (2) Mitek did not indemnify Wells Fargo (the actual accused
`party) for any alleged acts of infringement of the challenged patent; (3) Mitek provides technology
`to Wells Fargo that allegedly performs only some (but not all) of the limitations of any claim of the
`challenged patent; (4) Mitek did not assist, fund, participate, or cooperate in any way with Wells
`Fargo in its IPR petition or proceeding; (5) Wells Fargo did not assist, fund, participate, or cooperate
`in any way with Mitek in its IPR petition or proceeding; and (6) Mitek’s involvement in the Wells
`Fargo district court case was the result of a subpoena issued by Patent Owner, meaning that Mitek
`did not voluntarily participate.
`
`Based on these undisputed facts, there is no basis to deny institution under the Board’s discretion
`
`IPR2020-01101
`Ex. 3001
`
`

`

`pursuant to 35 U.S.C. § 314(a). The Board’s denial in this case is not only contrary to Board
`precedent but also frustrates the purpose of the AIA to provide an efficient alternative to district
`court proceedings. There is no clearer case of this frustration of purpose here, where Patent Owner
`has moved the dismiss Mitek’s declaratory judgment action relating to the same patent because of a
`lack of any “case or controversy”—meaning Patent Owner itself believes there is no “significant
`relationship” between Wells Fargo and Mitek with respect to Patent Owner’s assertion of the
`challenged patent, as contemplated by Valve. By discretionarily denying the institution of a trial
`here, the Board likely deprived Mitek from any meaningful avenue of challenging the validity of this
`patent (i.e., through a district court or IPR proceeding). Moreover, the Patent Owner and Wells
`Fargo recently announced a settlement, meaning that Wells Fargo can no longer have any
`conceivable interest in the outcome of Mitek’s petition, while Patent Owner has just launched a
`new patent infringement action against another Mitek customer, PNC Bank. It is now more clear
`than ever that Mitek’s petition is not an unfair follow-on petition, but is rather the only mechanism
`available to Mitek to challenge the validity of this patent.
`
`Based on my professional judgment, I believe this case requires an answer to one or more
`precedent-setting questions of exceptional importance:
`
`1. Whether a supplier of technology has a “significant relationship” with its customer merely by (1)
`providing technology that allegedly performs some (but not all) of the limitations of a challenged
`claim and (2) participating in an underlying district court infringement case in response to a
`subpoena by Patent Owner;
`
`2. Whether a common interest agreement between a supplier of technology that allegedly performs
`some (but not all) of the limitations of a challenged claim and its customer is relevant to the
`discretionary denial inquiry; and if (1) or (2) is true:
`
`3. When and under what test should the Board deny institution pursuant to its discretion under
`§ 314(a) on the basis of such facts.
`
`Petitioner appreciates the Director’s consideration of this request.
`
`Respectfully submitted,
`
`/s/ Brian E. Mack, Esq., Attorney of Record for Petitioner Mitek Systems, Inc. (Reg. No 57,189)
`
`
`
`Brian E. Mack | Partner | Quinn Emanuel Urquhart & Sullivan, LLP | 50 California Street, 22nd
`Floor, San Francisco, CA 94111 | Office: +1.415.875.6423
`
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