`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________________
`
`APPLE INC.,
`Petitioner
`
`v.
`
`BILLJCO LLC,
`Patent Owner
`
`
`CASE: IPR2022-00131
`U.S. PATENT NO. 8,639,267
`
`_______________________
`
`
`PATENT OWNER'S NOTICE OF REQUEST TO FILE MOTION TO
`STRIKE, OR ALTERNATIVELY TO SUBMIT ADDITIONAL EVIDENCE,
`PURSUANT TO 37 C.F.R. §§ 42.20 AND 42.21
`
`
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`I.
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`
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`INTRODUCTION
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`Apple, Inc. ("Petitioner") filed its Petition requesting inter partes review of
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`claims 1, 5, 13, 20, 21, 29, 30, 34, 42, and 49 ("the Challenged Claims") of U.S.
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`Patent 8,639,267 ("'267 Patent"). In support of its Petition, Petitioner submitted the
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`declaration of Dr. Thomas La Porta. (EX1002, "Original Declaration"). BillJCo,
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`LLC ("Patent Owner") deposed La Porta regarding his Original Declaration.
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`EX2009. Patent Owner filed its Patent Owner Response, and Petitioner filed its
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`Reply thereto relying heavily on a Supplemental Declaration by La Porta. (EX1012,
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`"Supplemental Declaration").
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`The Reply and Supplemental Declaration raise arguments, opinions, and
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`evidence not previously identified in the Petition or Original Declaration. Although
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`Petitioner hopes to disguise them mere rebuttal to the Patent Owner Response, the
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`new arguments and evidence in the Supplemental Declaration and Reply are not that.
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`Instead, they pertain to issues that should have been part of Petitioner's Petition, and
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`therefore their late disclosure is improper and should be stricken.
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`
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`Pursuant to 37 C.F.R. § 42.21(a), for the reasons discussed herein, Patent
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`Owner hereby requests authorization to file a motion to strike La Porta's
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`Supplemental Declaration. Patent Owner further requests authorization to file a
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`motion to strike all arguments in Petitioner's Reply based on La Porta's Supplemental
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`Declaration. In the alternative to the relief sought in the aforementioned motions,
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`40796358.2
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`1
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`Patent Owner further requests authorization to submit additional evidence with its
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`sur-reply in response to the Petitioner's reply.
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`II. Relevant Law
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`
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`It is well established that the petition for institution of an IPR must include all
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`necessary arguments and evidence to support the challenge. "It is of the utmost
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`importance that . . . the initial petition identify 'with particularity' the 'evidence that
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`supports the grounds for the challenge to each claim.'" Intelligent Bio-Sys., Inc. v.
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`Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C.
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`§ 312(a)(3)). The petition must also identify "the relevance of the evidence to the
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`challenge raised, including identifying specific portions of the evidence that support
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`the challenge." 37 C.F.R. § 42.104(b)(4)-(5). This duty to present all arguments and
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`evidence in the initial petition is because, "[u]nlike district court litigation—where
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`parties have greater freedom to revise and develop their arguments over time and in
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`response to newly discovered material—the expedited nature of IPRs bring with it
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`an obligation for petitioners to make their case in their petition to institute."
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`Intelligent Bio-Sys., 821 F.3d at 1369.
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`
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`The Federal Circuit has repeatedly affirmed the Board's rejection of matter
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`raised for the first time in a reply. For example, in Wasica Fin. GmbH v. Cont'l Auto.
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`Sys., Inc., 853 F.3d 1272 (Fed. Cir. 2017), the Federal Circuit affirmed the Board's
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`ruling
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`that an obviousness challenge was "insufficiently precise and
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`40796358.2
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`2
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`underdeveloped" because the petition "offered only a conclusory and sweeping
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`allegation," while the reply argued that POSITA would have looked to a different
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`passage and would have modified the prior art. Id. at 1285-1287. Similarly, in Ariosa
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`Diagnostics v. Verinata Health, Inc., 805 F.3d 1359 (Fed. Cir. 2015) the Federal
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`Circuit affirmed the Board's rejection of a reply that relied on portions of a prior art
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`reference not previously identified in the petition or accompanying declarations. Id.
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`at 1364, 1367–68
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`Once the Board identifies new issues presented for the first time in a reply,
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`neither the Board (nor the Federal Circuit, on appeal) need parse the reply brief to
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`determine which, if any, parts of that brief are responsive and which are improper.
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`See Office Patent Trial Practice Guide, 77 Fed.Reg. 48,756, 48,767, at p. 74 (Aug.
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`14, 2012) (Board noting "it will not attempt to sort proper from improper portions
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`of the reply"). As such, the presentation of new issues in a reply, even if other parts
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`of the reply are not improper, warrant striking of the entire reply.
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`In addition to striking the Supplemental Declaration because it includes
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`numerous arguments and identifies new evidence, several of the opinions in the
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`Supplemental Declaration should also be stricken because La Porta contradicts his
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`testimony in the Original Declaration and his deposition testimony. It is well-
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`established in district court litigation that "[w]hen a party has given clear answers to
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`unambiguous questions which negate the existence of any genuine issue of material
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`40796358.2
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`3
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`fact, that party cannot thereafter create such an issue with an affidavit that merely
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`contradicts, without explanation, previously given clear testimony" and a court may
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`simply disregard the affidavit. Delaware Valley Floral Group, Inc. v. Shaw Rose
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`Nets, LLC, 597 F.3d 1374 (Fed. Cir. 2010). Applying the same logic, the Board has
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`similarly found it proper to disregard a declaration that contradicts the declarant's
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`earlier testimony. See SPTS Techs. Ltd. v. Plasma-Therm LLC, No. IPR2018-00618,
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`2019 WL 4020200, at *6 (PTAB Aug. 26, 2019) (citing Quest Integrity USA, LLC
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`v. Cokebusters USA Inc., 924 F.3d 1220, 1232 (Fed. Cir. 2019)).
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`III. The Supplemental Declaration And Reply
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`
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`The Supplemental Declaration and Reply purport to merely be in response to
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`the Patent Owner Response. They are not, however. Instead, La Porta offers
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`numerous new opinions, such as claim construction and motivations to modify the
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`prior art, that are improper at this juncture. La Porta further, in hopes of filling in
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`several gaps in his obviousness opinions, identifies previously uncited portions of
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`the prior art to support his claims of obviousness. So too, La Porta offers arguments
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`as to how the cited prior art supposedly discloses several claim limitations under
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`Patent Owner's fully supported common and ordinary meaning of the words, which
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`he disregarded in his Original Declaration. La Porta further offers several opinions
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`that, without justification, merely contradict his previous testimony that, as
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`understood in the computer science arts, the meaning for "privilege" as recited in the
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`40796358.2
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`4
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`Challenged Claims is different from the term "preferences," which is recited by the
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`prior art. The contradictory Supplemental Declaration is improper, and should be
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`stricken. SPTS Techs. Ltd., 2019 WL 4020200, at *6.
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`
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`Due to the relatively short time for submitting this notice, Patent Owner's
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`assessment of the Supplemental Declaration and Petitioner's reliance thereon is
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`ongoing. As such, the following may not be exhaustive. A complete account would
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`be provided in the motion to strike if so authorized.
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`In the Petition and Original Declaration, it was argued that the common
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`ordinary meaning of the claim terms and phrases should control. Petition at 7,
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`EX1002, ¶¶ 46-47. Neither Petitioner nor La Porta gave any explanation as to what
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`those common ordinary meanings are. Id. With respect to claim terms related to a
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`"privilege," the Petition and La Porta merely equated it with a "preference." Petition
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`at 14, EX1002, ¶ 70. During his deposition, La Porta admitted, however, that a
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`"preference" as is understood in the computer science arts has a different meaning
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`than a "privilege." EX2009, 46:5-47:14. La Porta further admitted that none of the
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`prior art relied upon discloses a "privilege." Id., 70:19-22. Faced with this admission,
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`Petitioner and La Porta now attempt to argue that the "preference" disclosed in the
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`prior art is either a "privilege" or is the equivalent of a "privilege" according to
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`unrebutted common ordinary meaning of the term. EX1012, ¶¶ 27-69, 45-57. In
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`addition to being incorrect, neither Petitioner or La Porta made such an argument or
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`40796358.2
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`5
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`presented evidence to support such an argument in the Petition or Original
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`Declaration.
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`Moreover, La Porta's discussion of "privileges" in the Supplemental
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`Declaration contradicts his testimony. La Porta's admitted that the understood
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`meaning for "preference" was different than the understood meaning for "privilege"
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`in the computer science arts. EX2009, 46:5-47:14. La Porta now attempts to explain
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`how the disclosure of "preferences" in the prior art satisfies the claimed "privileges"
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`according to the common ordinary meaning of the term identified by Patent Owner
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`through his Supplemental Declaration. EX1012, ¶¶ 27-69, 45-57. La Porta, however,
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`previously asserted that "privilege" should be afforded its common ordinary
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`meaning, and admitted that "preference" and "privilege" had different understood
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`meanings in the relevant field of technology. La Porta cannot now provide
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`explanations as to how the prior art's disclosure of "preferences" constitutes a
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`disclosure of a "privilege" when he understood the difference between the terms all
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`along.
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`
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`With respect to the claim term "destination identity," Petitioner and La Porta
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`gave no explanation as to what common ordinary meaning they attributed to the term
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`in the Petition or Original Declaration. Petition at 7, EX1002, ¶¶ 46-47. Now,
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`Petitioner and La Porta argue a broad claim construction based on La Porta's review
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`of the '267 Patent and his study of the prosecution history. EX1012, ¶¶ 22-24. La
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`40796358.2
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`6
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`Porta, however, fails to cite to any evidence in paragraph 22 to support his
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`conclusion, and cites to previously uncited portions of the prosecution history in
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`paragraph 23. Id.
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`
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`In numerous instances, La Porta in his Supplemental Declaration cites to
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`portions of the prior art that were not cited to in his Original Declaration. For
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`example, the Supplemental Declaration cites to paragraph [0035] of Haberman and
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`paragraph [0002] of VanLuijt. None of these paragraphs, however, was identified in
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`the Original Declaration. Petitioner's Reply then relies on La Porta's opinions based
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`on these previously unidentified paragraphs from the prior art.
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`IV. Authorization To File A Motion To Strike Should Be Given
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`
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`La Porta's Supplemental Declaration should be stricken because it raises new
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`arguments and evidence that are not limited to a rebuttal of Patent Owner's Response,
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`and that should have been included along with Petitioner's Petition. Moreover,
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`portions of La Porta's Supplemental Declaration should be stricken because it merely
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`contradicts La Porta's earlier testimony.
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`As discussed above, La Porta in several instances relies on portions of the
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`prior art that were not previously identified in his Original Declaration. Such newly
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`identified evidence is improper, and authorization should be given to move to strike
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`the Supplemental Declaration. Intelligent Bio-Sys., 821 F.3d at 1369.
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`40796358.2
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`7
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`As further described above, La Porta raises numerous new arguments that are
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`not in rebuttal to Patent Owner's Response, and should have been included in his
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`Original Declaration. Such newly raised arguments is improper, and authorization
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`should be given to move to strike the Supplemental Declaration. Intelligent Bio-Sys.,
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`821 F.3d at 1369.
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`
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`In addition to the impropriety of the Supplemental Declaration because of the
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`raising of new evidence and arguments, La Porta's averments that contradict his
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`previous testimony should be stricken. SPTS Techs. Ltd., 2019 WL 4020200, at *6.
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`V. Alternatively, Authorization To Submit Additional
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`Evidence Should Be Given
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`
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`As an alternative to the previously requested authorization, Patent Owner
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`requests authorization of file a motion for leave to submit new evidence other than
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`deposition transcripts of the cross-examination of La Porta. 37 C.F.R. § 42.23 states
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`that a "sur-reply may only respond to arguments raised in the corresponding reply
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`and may not be accompanied by new evidence other than deposition transcripts of
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`the cross-examination of any reply witness." While Patent Owner respectfully
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`submits that it should be authorized to motion to strike the Supplemental Declaration
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`and the portions of the Reply relying thereon, if the Board disagrees, Patent Owner
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`respectfully request authorization to submit new evidence in response to the new
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`arguments and evidence.
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`40796358.2
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`8
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`VI. Conclusion
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`
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`For the forgoing reasons, Patent Owner respectfully requests that the Board
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`authorize Patent Owner to file a motion: (1) to strike the Supplemental Declaration
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`of La Porta; (2) to strike the portions of Petitioner's Reply that rely on the
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`Supplemental Declaration of La Porta; and (3) alternatively, to submit additional
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`evidence in rebuttal to the Supplemental Declaration of La Porta.
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`Respectfully Submitted,
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`Brian R. Michalek
`Brian R. Michalek (Reg. No. 65,816)
`Joseph M. Kuo (Reg. No. 38,943)
`Saul Ewing, LLP
`161 N. Clark Street, Suite 4200
`Chicago, Illinois 60601
`Tel: (312) 876-7151
`Brian.Michalek@saul.com
`Joseph.Kuo@saul.com
`
`Brian Landry (Reg. No. 52,074)
`Saul Ewing, LLP
`131 Dartmouth Street, Suite 501
`Boston, MA 02116
`Tel: (617) 912-0969
`Brian.Landry@saul.com
`
`Counsel for Patent Owner, BillJCo, LLC
`
`
`Date: November 16, 2022
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`Mailing address for all correspondence:
`Saul Ewing, LLP
`Centre Square West
`1500 Market Street, 38th Floor
`Philadelphia, PA 19102-2186
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`40796358.2
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`9
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`Certification of Service Under 37 C.F.R. § 42.6(e)(4)
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`The undersigned hereby certifies that on November 16, 2022, I caused a true
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`and correct copy of the NOTICE OF REQUEST TO FILE MOTION TO STRIKE,
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`OR ALTERNATIVELY TO SUBMIT ADDITIONAL EVIDENCE to be served on
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`the following counsel for Petitioner by electronic mail to the following email
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`addresses:
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`Larissa S. Bifano
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`Jonathan Hicks
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`Zachary Conrad
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`larissa.bifano@dlapiper.com
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`jonathan.hicks@dlapiper.com
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`Zack.Conrad@dlapiper.com
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`Date: November 16, 2022
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`
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`
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`/Brian R. Michalek/
`(Reg. No. 65,816)
`Attorney for Patent Owner
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`40796358.2
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`10
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