UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNIFIED PATENTS, LLC, and JPMORGAN CHASE BANK, N.A.
`Petitioner,
`v.
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`DYNAPASS IP HOLDINGS LLC,
`Patent Owner.
`IPR2023-004251
`Patent 6,993,658
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`_____________________________________
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`PETITIONER’S SUPPLEMENTAL BRIEFING PURSUANT TO PAPER 27
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`1 JPMorgan Chase Bank N.A. was joined as a party to this proceeding via Motion
`for Joinder in IPR2023-01331.
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNIFIED PATENTS, LLC, and JPMORGAN CHASE BANK, N.A.
`Petitioner,
`v.
`
`DYNAPASS IP HOLDINGS LLC,
`Patent Owner.
`IPR2023-004251
`Patent 6,993,658
`
`
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`_____________________________________
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`PETITIONER’S SUPPLEMENTAL BRIEFING PURSUANT TO PAPER 27
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`1 JPMorgan Chase Bank N.A. was joined as a party to this proceeding via Motion
`for Joinder in IPR2023-01331.
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`Pursuant to the Board’s Order (Paper 27) for additional briefing, Unified submits
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`(1) the Board may consider a party’s inconsistent positions from a different venue at
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`the oral argument state of this proceeding; and (2) PO’s contradictory statements
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`should be given significant weight.
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`1. It is not too late for the Board to consider PO’s contradictory position
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`The Board has broad discretion as to the conduct of the proceeding, including
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`for issues not specifically addressed by the rules, and may waive or suspend a
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`requirement and place conditions on the waiver or suspension. 37 C.F.R. §§ 42.5(a)
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`and (b). Here, PO’s noncompliance with mandatory discovery (Rule 42.51(b)(1)(iii))
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`and duty of candor to the PTAB led to Unified identifying PO’s inconsistent position
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`during the oral hearing. Thus, the Board should exercise its discretion and/or waive
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`the prohibition of new evidence in order to serve the interests of justice.
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`Unified is not a party to the district court litigations (16 filed, Paper 11), and
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`was not immediately aware of PO’s inconsistent position. PO did not serve the
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`amended infringement contentions (Ex. 1026) containing the contradictory position
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`when it filed its sur-reply (Paper 18) or inform the Board of the inconsistency. That
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`an opposing party filed Ex. 1026 in district court did not relieve PO of its mandatory
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`disclosure and duty of candor to the PTAB. Unified’s reference to PO’s “nose of
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`wax” infringement position at the hearing was the result of PO’s failure to comply
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`with the Board’s rules, which should not be rewarded by exclusion of Ex. 1026.
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`1
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`While there is a general prohibition of the introduction of “new evidence” at
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`the hearing, it is intended to prevent prejudice to an opposing party having to
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`confront actual new evidence without a chance to respond, and not to insulate a party
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`from its own contrary positions and obligations. The Board can and should waive
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`this rule under the present circumstances. See Dell Inc. v. Acceleron, LLC, 884 F.3d
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`1364, 1369-70 (Fed. Cir. 2018) (confirming that the Board can exercise its waiver
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`authority under 37 C.F.R. § 42.5(b) for new arguments at oral hearing.) A strict time-
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`based prohibition on the consideration of inconsistent positions would invite
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`gamesmanship, and would be contrary to the interests of justice especially when PO
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`failed to serve Unified or inform the Board of the inconsistency. PO cannot claim
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`prejudice by the Board’s consideration of Ex. 1026, or feign surprise or ignorance of
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`its own positions. Further, PO has the opportunity to address its own position through
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`the additional briefing. Thus, the Board can and should consider Ex. 1026.
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`2. Exhibit 1026 should be given significant weight
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`Ex. 1026 should be afforded significant weight because it refutes PO’s
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`arguments and discredits its expert’s verbatim assertions, while supporting Kew’s
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`disclosure of the claimed “passcode” of limitation [5.3]. In this proceeding, PO
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`argues that the claimed “passcode” is (1) not a username (“The “actual name or PIN”
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`are used to identify the user’s “identity code,” like a username, not as part of a
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`password.”) PO Response at 46, Ex. 2003, ¶113; and (2) not information that
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`2
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`references or is an alias to the username (“Kew’s ‘user identification code’ is used
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`to lookup, within a database, the appropriate ‘identity code.’”) Sur-reply, at 18.
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`However, after the response and prior to the sur-reply, PO stated in the district court
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`proceeding that the “passcode” is met by “the passcode (e.g., the password that the
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`user uses for login or other information that is known to the user, such as the
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`username or information that references or is an alias to the username).”
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`Ex. 1026, 12, 18. PO also asserted that a session ID met the claimed passcode
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`because “the … session ID corresponds to the username, which is known to the
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`user, and the session ID is used for the same purpose of authenticating the user.”
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`Id., 24. When filing the sur-reply, PO had the chance to either retract the previous
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`arguments or distinguish its position in Ex. 1026. PO did neither, violating its duty
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`of candor and tarnishing its expert’s credibility.
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`Ex. 1026 supports Unified’s position that a “POSITA would have understood
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`that the “corresponding identity code” is linked with the user ID such that the user
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`ID (known to the user) is necessary to identify the identity code in instances when
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`they are not the same.” Reply, 13. That is, the user ID and identity code are “the
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`username or information that references or is an alias to the username,” and/or the
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`identity code “corresponds to the username” and “authenticat[es] the user.”
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`Given this non-disclosure and violation of duty of candor, appropriate
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`sanctions should also be considered. 87 Fed. Reg. 45,764, 45,765 (July 29, 2022).
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`3
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`Dated: April 24, 2024
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`Respectfully Submitted,
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`/Timothy J. Murphy/
`Timothy J. Murphy
`Registration No. 62,585
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`Jordan M. Rossen
`Registration No. 74,064
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`4
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`IPR2023-00425
`U.S. Patent 6,993,658 B2
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`CERTIFICATION OF SERVICE
`Pursuant to 37 C.F.R. §§42.6(e) and 42.8(b)(4), the undersigned certifies that
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`on the 24th of April 2024, a complete and entire copy of PETITIONER'S
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`SUPPLEMENTAL BRIEIFNG PURSUANT TO PAPER 27 was filed on
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`P-TACTS and served electronically via email to lead and backup counsel of
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`record as follows:
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`For Patent Owner:
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`johnw@wsltrial.com
`tlandis@wsltrial.com
`mfagan@wsltrial.com
`mmccarthy@wsltrial.com
`IPRDYNAPASSWSL@wsltrial.com
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`For Petitioner JPMORGAN CHASE BANK, N.A.:
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`Dated: April 24, 2024
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`aliou@jonesday.com
`vkhatri@jonesday.com
`mwjohnson@jonesday.com
`etassis@jonesday.com
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`
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`By: /Ashley F. Cheung/
`Ashley F. Cheung
`Paralegal
`Unified Patents, LLC
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