UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
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`IPR2023-00425
`Patent 6,993,658
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
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`UNIFIED PATENTS, LLC, and JPMORGAN CHASE BANK, N.A.,
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`Petitioner,
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`v.
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`DYNAPASS IP HOLDINGS, LLC
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`Patent Owner.
`__________________
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`Inter Partes Review No. IPR2023-004251
`Patent No. 6,993,658
`PATENT OWNER’S RESPONSE TO PETITIONER’S SUPPLEMENTAL
`BRIEFING PURSUANT TO PAPER 27
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`Filed on behalf of Patent Owner by:
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`John Wittenzellner (Reg. No. 61,662)
`1735 Market Street, Suite 125, #453
`Philadelphia, PA 19103
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`Mark McCarthy (Reg. No. 69,575)
`601 Congress Ave., Suite 600
`Austin, TX 78701
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`WILLIAMS SIMONS & LANDIS PLLC
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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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`
`
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`________________
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`IPR2023-00425
`Patent 6,993,658
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`UNIFIED PATENTS, LLC, and JPMORGAN CHASE BANK, N.A.,
`
`Petitioner,
`
`v.
`
`DYNAPASS IP HOLDINGS, LLC
`
`Patent Owner.
`__________________
`
`Inter Partes Review No. IPR2023-004251
`Patent No. 6,993,658
`PATENT OWNER’S RESPONSE TO PETITIONER’S SUPPLEMENTAL
`BRIEFING PURSUANT TO PAPER 27
`
`Filed on behalf of Patent Owner by:
`
`John Wittenzellner (Reg. No. 61,662)
`1735 Market Street, Suite 125, #453
`Philadelphia, PA 19103
`
`Mark McCarthy (Reg. No. 69,575)
`601 Congress Ave., Suite 600
`Austin, TX 78701
`
`WILLIAMS SIMONS & LANDIS PLLC
`
`
`1 JPMorgan Chase Bank N.A. was joined as a party to this proceeding via Motion
`for Joinder in IPR2023-01331.
`
`
`
`
`
`IPR2023-00425
`Patent 6,993,658
`
`Dynapass IP Holdings, LLC (“Patent Owner”) respectfully submits this
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`Response to Petitioner’s Supplemental Briefing Pursuant to Paper 27. There is no
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`dispute that Petitioner introduced new evidence and argument during the oral
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`argument in this proceeding; consideration thereof would require the Board to
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`exercise its waiver authority under 37 C.F.R. § 42.5(b). See Dell Inc. v. Acceleron,
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`LLC, 884 F.3d 1364, 1369 (Fed. Cir. 2018).
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`I.
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`The Record Facts Belie Petitioner’s Request That The Board Exercise Its
`Waiver Authority.
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`The answer to the Board’s first question is “yes:” it is too late for Petitioner
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`to file a copy of the infringement contentions. Conspicuously absent from
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`Petitioner’s brief are the circumstances of when and how Petitioner first became
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`aware of the infringement contentions. The fact is that the infringement contentions
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`have been publicly available since December 8, 2023, on the EDTX docket in the
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`JPMorgan Chase consolidated case (exhibits to Dkt. 153), more than four months
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`before oral argument. And that proceeding was identified as a related matter in
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`Patent Owner’s Mandatory Notices. See Paper 3. In fact, the district court motion
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`related to the infringement contentions was signed by H. Albert Liou, lead counsel
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`in the joined proceeding (IPR2023-01331).
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`Petitioner could have addressed the infringement contentions in its reply,
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`more than a month after the contentions were publicly available. Petitioner could
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`IPR2023-00425
`Patent 6,993,658
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`have raised the issue in its request for oral argument, nearly three months after the
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`infringement contentions were publicly available. And Petitioner could have raised
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`the issue in its demonstratives, four months after the infringement contentions were
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`publicly available and five days before oral argument.
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`On one hand, the record facts show that Petitioner knew or should have known
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`about the infringement contentions well before oral argument. On the other hand, it
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`is highly unlikely that Petitioner first became aware of the infringement contentions
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`in the five-day window between when Petitioner filed its demonstratives and the oral
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`argument, especially given Petitioner’s choice to withhold information about when
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`and how it first became aware of the infringement contentions. Accordingly, the
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`record facts do not support Petitioner’s request that the Board exercise its waiver
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`authority, so it is too late for Petitioner to file a copy of the infringement contentions.
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`II.
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`Petitioner’s Attempt To Deflect Its Failings Is Baseless.
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`Unable to provide facts to support its request that the Board exercise its waiver
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`authority, Petitioner baselessly argues that Patent Owner failed to comply with
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`mandatory discovery and the duty of candor. Rule 42.51(b)(1)(iii) applies only to
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`“relevant information that is inconsistent with a position advanced by the party
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`during the proceeding. . . .” The rule does not apply here because, as explained
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`below, the infringement contentions do not contain an inconsistent position.
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`Petitioner’s allegation of a breach of candor is baseless for the same reason.
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`III. The Infringement Contentions Should Be Afforded No Weight.
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`IPR2023-00425
`Patent 6,993,658
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`The answer to the Board’s second question is that the infringement
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`contentions should be afforded no weight because they do not contain an inconsistent
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`position. Patent Owner argued here that Kew’s “user identification code” is “like a
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`username” because it “is used to identify the user.” Paper 13, p. 45. But Kew’s “user
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`identification code” (aka Kew’s username) cannot be the claimed “passcode”
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`because it “is never combined with Kew’s ‘Code A’ (Petitioner-identified ‘token’)
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`to generate Kew’s ‘Code B’ (Petitioner-identified ‘password’),” as the independent
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`claims require. Paper 19, p. 17. Conversely, in Ex. 1026, Patent Owner mapped
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`BOA’s “username” to the claimed “passcode” because, upon information and belief,
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`it is combined with BOA’s “authorization code” or “sign in code” (the claimed
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`“token”) as the “password” received from the user, as required by the claims. See
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`Ex. 1026, p. 23.
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`Patent Owner has never argued that the claimed “passcode” could not be a
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`username. Instead, Patent Owner argued that the claimed “passcode” could not be
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`Kew’s “user identification code.” Kew’s “user identification code” and BOA’s
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`“username” are processed differently by their respective systems. As a result, the
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`fact that BOA’s “username” meets the requirements of the claimed “passcode,” is
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`not inconsistent with the fact that Kew’s “user identification code” does not. Thus,
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`Exhibit 1026, if admitted, should be given no weight in this proceeding.
`-3-
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`DATED: May 1, 2024
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`IPR2023-00425
`Patent 6,993,658
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`Respectfully submitted,
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`By: /John Wittenzellner/
`John Wittenzellner
`Registration No. 61,662
`Counsel for Patent Owner
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`CERTIFICATE OF SERVICE
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`IPR2023-00425
`Patent 6,993,658
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`
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`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on May 1, 2024,
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`the foregoing document was served on counsel of record for Petitioner by filing this
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`document through the End-to-End System, as well as via electronic mail to counsel
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`of record for Petitioner (and joined Petitioner) at the following addresses:
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`Timothy J. Murphy (tj@unifiedpatents.com)
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`Jordan M. Rossen (jordan@unifiedpatents.com)
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`How-Ying Liou (aliou@jonesday.com)
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`Vishal Khatri (vkhatri@jonesday.com)
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`Matthew Johnson (mwjohnson@jonesday.com)
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`Evan Tassis (etassis@jonesday.com)
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`Respectfully submitted,
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`By: /John Wittenzellner/
`John Wittenzellner
`Registration No. 61,662
`Counsel for Patent Owner
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