`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`TRUIST BANK
`Petitioner,
`
`v.
`
`UNITED SERVICES AUTOMOBILE ASSOCIATION,
`
`Patent Owner.
`
`U.S. Patent No. 10,482,432
`Filing Date: March 18, 2018
`Issue Date: November 19, 2019
`
`____________________
`
`Case No. IPR2023-00144
`
`
`
`PETITIONER’S SUPPLEMENTAL PAPER AND NOTICE RANKING
`PETITIONS1
`
`
`
`
`1 Petitioner is filing a substantively identical document in IPR2023-00143
`
`
`
`
`
`
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`The Board should grant each of the petitions filed against U.S. Patent
`
`IPR2023-00144
`U.S. Patent 10,482,432
`
`
`No. 10,482,432. These petitions present different grounds based on different
`
`possible priority dates for the ’432 patent, a scenario expressly recognized in the
`
`Trial Practice Guide as meriting multiple petitions. And the petitions operate to
`
`protect the integrity of the system, by holding Patent Owner to the claim
`
`interpretations it championed during prior litigation.
`
`I. More Than 11 Years Passed Between the ’432 Patent’s Claimed Priority
`Date and Its Filing Date
`The ’432 patent is one of sixteen applications claiming priority to U.S.
`
`Patent No. 7,873,200. Filed October 31, 2006, before the introduction of the first
`
`iPhone, the ’200 patent describes “Systems and methods for remote deposit of
`
`checks,” relying on desktop and laptop computers, scanners, and digital cameras,
`
`without ever referring to mobile phones or smartphones.
`
`Over a decade later, on July 28, 2017, Patent Owner filed the immediate
`
`parent application of the ’432 patent. For the first time in that application, Patent
`
`Owner introduced claims requiring a “mobile device.” Building on its parent
`
`application, every claim of the ’432 patent requires a “mobile device.”
`
`II. The Two Petitions Present Different Grounds Based on Different
`Priority Dates
`During litigation, Patent Owner proposed, and the court adopted, a
`
`construction of “mobile device” that requires a “handheld device” and excludes
`
`
`
`
`
`
`laptops. Applying that construction, the ’432 patent is entitled to, at earliest, a
`
`IPR2023-00144
`U.S. Patent 10,482,432
`
`
`
`
`July 28, 2017 priority date. IPR2023-00144 presents challenges to claims 1-8 and
`
`10-23 based on this correct priority date. But because Patent Owner is expected to
`
`assert an earlier date, IPR2023-00143 presents challenges to every claim of the
`
`’432 patent based on art that predates the earliest possible date (October 31, 2006)
`
`that Patent Owner could assert.
`
`The petitions rely on entirely different art. They are materially different, and
`
`two petitions were needed to comply with word limits.
`
`III. The Board Should Grant Each Petition Because It Has Recognized That
`Two Petitions Are Necessary Where Priority Is Disputed
`More than one petition is necessary where, as here, “there is a dispute about
`
`priority date requiring arguments under multiple prior art references.” See Trial
`
`Practice Guide, 59. Where a party has presented petitions based on different
`
`possible priority dates, the Board has considered and instituted both petitions. In
`
`Medtronic, Inc. v. Teleflex Innovations S.A.R.L., for example, the Board instituted
`
`a second petition that addressed a potential priority challenge. IPR2020-00136,
`
`Paper 20 at 39 (PTAB June 26, 2020). The Board explained that, “[g]iven the
`
`possibility that we may determine that [intervening art] does not qualify as prior art
`
`after fully considering Patent Owner’s priority date arguments, we determine that
`
`Petitioner provides a sufficient explanation as to why it was necessary to rely upon
`
`
`
`
`2
`
`
`
`
`
`
`the obviousness challenges presented here as an alternative basis for
`
`
`
`
`IPR2023-00144
`U.S. Patent 10,482,432
`
`unpatentability. Indeed, this is precisely one of the circumstances recognized in our
`
`Trial Practice Guide ‘in which more than one petition may be necessary.’” Id.; see
`
`also 10X Genomics, Inc. v. Bio-Rad Labs., Inc., IPR2020-00088, Paper 8 at 47
`
`(PTAB Apr. 27, 2020) (noting that more than one petition challenging a patent
`
`may be necessary where there is a priority date dispute).
`
`The General Plastics factors also favor institution of both petitions. The first
`
`five General Plastics factors favor institution, because Petitioner filed both
`
`petitions for the first time and on the same day. See Intex Recreation Corp. v. Team
`
`Worldwide Corp., IPR2018-00873, Paper 14 at 8-12 (PTAB Oct. 29, 2018).
`
`Factors 6 and 7 also favor institution. The petitions present their grounds
`
`efficiently. See 10X Genomics, IPR2020-00088, Paper 8 at 11 (explaining that
`
`similarities across grounds “will allow the Board to efficiently evaluate” multiple
`
`petitions). IPR2023-00143, for example, presents six grounds, but each is based on
`
`a core combination of Acharya, King, and Dance—the remaining references add
`
`features found in dependent claims. And similarly, each of IPR2023-00144’s
`
`grounds relies on Oakes, which shares an identical specification with the ’432
`
`patent. The majority of the ’432 patent’s limitations are clearly disclosed in Oakes,
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`and the parties’ dispute as to IPR2023-00144 is likely to focus on the priority issue,
`
`
`
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`3
`
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`
`
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`rather than technical details of the references, which will lower the burden
`
`IPR2023-00144
`U.S. Patent 10,482,432
`
`
`
`
`associated with consideration of the second petition.
`
`IV. The Board Should Grant Each Petition to Protect the Integrity of the
`Patent System
`It is the Board’s mission to restore confidence in the patent system. See
`
`Code200 v. Bright Data Ltd., IPR2022-00861, Paper 18 at 6 (PTAB Aug. 23,
`
`2022). Here, the Board’s intervention is needed to guard against gamesmanship by
`
`Patent Owner.
`
`Patent Owner’s claim constructions and Patent Owner’s statements in prior
`
`litigation defeat the ’432 patent’s 2006 priority claim—Patent Owner expressly
`
`advanced a construction of “mobile devices” that excludes laptops in order to
`
`capture mobile-phone-based innovations unavailable in 2006. Relying on this
`
`interpretation, Patent Owner has secured millions in damages for alleged
`
`infringement.
`
`But it is axiomatic that claims cannot be read outside the bounds of their
`
`accompanying written description—“claims may be no broader than the supporting
`
`disclosure.” Cooper Cameron Corp. v. Kvaerner Oilfield Prods., Inc., 291 F.3d
`
`1317, 1323 (Fed. Cir. 2002). And having obtained claim scope during litigation to
`
`bolster its infringement claims, Patent Owner should not now be permitted to avoid
`
`the consequences to validity. A “patent may not, like a nose of wax, be twisted one
`
`
`
`
`4
`
`
`
`
`
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`way to avoid [invalidity] and another to find infringement.” See CommScope
`
`IPR2023-00144
`U.S. Patent 10,482,432
`
`
`
`
`Techs. LLC v. Dali Wireless Inc., 10 F.4th 1289, 1299 (Fed. Cir. 2021) (citation
`
`omitted).
`
`Congress has expressly amended the pre-AIA reexamination statute to
`
`ensure the Board could consider litigation statements like those made by Patent
`
`Owner during its earlier district court proceedings. See, e.g., One World Techs.,
`
`Inc. v. Chamberlain Grp., Inc., No. IPR2017-00126, 2019 WL 1504032, at *8
`
`(P.T.A.B. Apr. 4, 2019) (the amendment “allow[ed] the use of patent owner
`
`statements made in District Court claim construction proceedings). It did so to
`
`ensure Patent Owners could not twist their claims without consequence. In the
`
`same way here, the Board should look critically at both what Patent Owner
`
`actually possessed in 2006 and what it now claims ownership of, and it should hold
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`Patent Owner to its prior statements.
`
`V. Ranking of Petitions
`If the Board decides to institute only a single petition against the ’432 patent,
`
`Petitioner requests it institute IPR2024-00144.
`
`Date: November 7, 2022
`
`
`
`
`
`
`Respectfully Submitted,
`
`
`
`/Lionel M. Lavenue/
`Lionel M. Lavenue, Lead Counsel
`Reg. No. 46,859
`
`
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`5
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`
`
`IPR2023-00144
`U.S. Patent 10,482,432
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. §§ 42.6(e) the undersigned certifies that on November
`
`7, 2022, a copy of the foregoing Petitioner’s Supplemental Paper and Notice
`
`Ranking Petitions was served by Priority Mail Express on the correspondence
`
`address of record indicated in the Patent Office’s Patent Center system for U.S.
`
`Patent No. 10,482,432.
`
`Kent Genin
`Crowell & Moring LLP
`P.O. Box 10395
`Chicago, IL 60610
`
` courtesy copy has been served on litigation counsel at:
`
`Jason G. Sheasby
`Irell & Manella LLP - Los Angeles
`1800 Avenue of the Stars
`Suite 900
`Los Angeles, CA 90067-4276
`
`By: /Lisa C. Hines/
`Lisa C. Hines
`Senior Litigation Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`
`
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`
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`6
`
` A
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`Date: November 7, 2022
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