From:
`To:
`Cc:
`Subject:
`Date:
`
`Carter, Jon R.
`Trials
`Stephen Underwood; Friedman, Todd M.; Nguyen, Bao; Lawrence Hadley; Jason Linger
`RE: IPR2021-01569, IPR2021-01570, and IPR2021-01571 -- Request pursuant to 37 CFR § 42.108(c)
`Thursday, February 10, 2022 5:27:22 PM
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
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`
`Dear PTAB Trials,
`
`Petitioner and Patent Owner remain available for a call with the Board between 1 and 5 PM Eastern,
`next Tuesday through Friday (February 15-18) to discuss the requests set forth in our email of
`February 2nd. Please let us know if that would be helpful.
`
`Regards,
`Jon Carter
`Counsel for Petitioner
`
`
`Jon R. Carter
`-----------------------------------------------------
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue, New York, NY 10022
`T +1 212 446 4850 F +1 212 446 4900
`-----------------------------------------------------
`jon.carter@kirkland.com
`
`From: Carter, Jon R. <carterj@kirkland.com>
`Sent: Wednesday, February 2, 2022 4:04 PM
`To: trials@uspto.gov
`Cc: Stephen Underwood <sunderwood@glaserweil.com>; Friedman, Todd M.
`<tfriedman@kirkland.com>; Nguyen, Bao <bnguyen@kirkland.com>; Lawrence Hadley
`<lhadley@glaserweil.com>; Jason Linger <jlinger@glaserweil.com>
`Subject: IPR2021-01569, IPR2021-01570, and IPR2021-01571 -- Request pursuant to 37 CFR §
`42.108(c)
`
`Dear PTAB Trials,
`
`Petitioner respectfully requests authorization pursuant to 37 CFR § 42.108(c) to file reply briefs to
`Patent Owner’s Preliminary Responses in IPR2021-01569, IPR2021-01570, and IPR2021-01571. The
`parties have conferred, and Patent Owner opposes Petitioner’s requests. However, should the
`Board grant any of Petitioner’s requests, Patent Owner respectfully requests authorization to submit
`sur-replies of equal length.
`
`
`Petitioner’s Position
`
`

`

`Petitioner believes that good cause exists for additional briefing, as briefly described below.
`
`IPR2021-01569: Petitioner seeks authorization to file reply brief of no more than 10 pages
`on three issues. First, Patent Owner proposes a construction of the term “identification
`code” as excluding payment credentials such as a credit card number, expiration date, CVV
`code, and other payment information. Patent Owner’s apparent construction was
`unforeseeable as the claims do not recite any such limitation, nor does the specification of
`the challenged patent recite any such limitation for this term. Patent Owner’s interpretation
`is also unsupported by the file history. Because Patent Owner’s apparent construction is
`contrary to the plain meaning of the claims, Petitioner could not have anticipated this
`apparent construction when it filed the Petition. Second, Patent Owner argues that the
`Board should deny Grounds 1 and 2 pursuant to § 325(d). Patent Owner’s arguments were
`unforeseeable as they misstate Petitioner’s positions and incorrectly contend that Petitioner
`did not address material errors by the examiner during prosecution. Patent Owner also
`argues that case law cited by Petitioner was overruled, but Petitioner believes that the cited
`case law remains applicable. Third, Patent Owner argues that one of Petitioner’s references
`(Ex. 1006 (Sklovsky)) is not valid prior art. Patent Owner’s argument, however, is based on
`the submission of an affidavit by Michelle Fisher that purports to show constructive
`reduction to practice of the challenged patent in an earlier application to which the
`challenged patent does not claim priority. Because this affidavit did not exist until after the
`Petition was filed, Petitioner could not have previously anticipated or addressed it.
`
`IPR2021-01570: Petitioner seeks authorization to file a reply brief of no more than 7 pages
`on two issues. First, Patent Owner argues that the Board should deny Ground 1 pursuant to
`§ 325(d). Patent Owner’s arguments are based on a misstatement of Petitioner’s positions
`and incorrectly contend that Petitioner did not address material errors by the examiner
`during prosecution. Patent Owner also argues that case law cited by Petitioner was
`overruled, but Petitioner believes that case law cited in the Petition remains applicable.
`Second, as with IPR2021-01569 and IPR2021-01571, Patent Owner produced a new affidavit
`with its Preliminary Response that purports to show constructive reduction to practice prior
`to one of the references Petitioner relied on in the Petition. Again, because this affidavit did
`not exist until after the Petition was filed, Petitioner could not have previously addressed it.
`
`IPR2021-01571: This Petition challenges the parent application to the patent that is
`challenged in IPR2021-01569. Petitioner seeks authorization to file a reply brief of no more
`than 10 pages on the same three issues and for the same reasons. Related to the second
`issue, Petitioner also seeks to reply to Patent Owner’s additional argument that the Board
`should deny Ground 1 under § 325(d) based on prosecution history for a different patent
`application that occurred after Petitioner filed the instant Petition.
`
`Patent Owner’s Position
`Patent Owner disagrees that Petitioner has shown “good cause” under 37 C.F.R. § 42.108(c)
`to file replies to Patent Owner’s Preliminary Responses on any of the three issues identified
`by Petitioner.
`
`
`
`
`

`

`Regarding the claim term “identification code,” Petitioner incorrectly contends that “Patent
`Owner proposes a construction” for this term. The POPRs offered no construction of this
`term. Rather, the POPRs argued that the “identification code” must be distinct from the
`separately-recited “payment method.” This interpretation is supported by the claim
`language, specification, and prosecution history, as explained in the POPRs. Therefore, this
`argument was foreseeable, and Petitioner should not be given a second chance to address it.
`
`Regarding § 325(d), this issue was also foreseeable to Petitioner. Indeed, each of the three
`Petitions already addressed § 325(d). Petitioner chose not to discuss General Plastic or
`Advanced Bionics, two of the Board’s precedential decisions on § 325(d), in its Petitions.
`Petitioner should be held to that choice. Patent Owner did not misstate any of Petitioner’s
`positions. As explained in the POPRs, Petition’s primary reference Huomo was discussed or
`applied by the Examiner during prosecution. Petitioner did not address that fact either, but
`it would or should have been apparent to Petitioner upon a reasonable investigation of the
`prosecution history.
`
`Regarding Sklovsky’s prior art status, the Board is capable of assessing whether the Fisher
`Affidavit meets the requirements to swear-behind Sklovsky. Further briefing is not
`necessary on this issue.
`
`The Consolidated Trial Practice Guide states “the Board does not expect that such a reply
`will be granted in many cases due to the short time period the Board has to reach a decision
`on institution.” CTPG, 52. The POPR in IPR2021-01569 was filed over a month ago on
`December 23, 2021, and Petitioner should have acted sooner in requesting a reply for that
`IPR. This is further reason to deny Petitioner’s request.
`
`
`Should the Board believe a call is necessary to discuss Petitioner’s request, the parties have
`conferred and are available on February 3rd or 4th at 1-5 PM Eastern. The parties can also be
`available next week if that would be more convenient for the Board.
`
`Regards,
`Jon Carter
`Counsel for Petitioner
`
`
`Jon R. Carter
`-----------------------------------------------------
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue, New York, NY 10022
`T +1 212 446 4850 F +1 212 446 4900
`-----------------------------------------------------
`jon.carter@kirkland.com
`
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