UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`JPMORGAN CHASE BANK, N.A.
`Petitioner
`v.
`DYNAPASS IP HOLDINGS LLC,
`Patent Owner
`
`
`
`
`Case No. – Not Yet Assigned
`U.S. Patent No. 6,993,658
`
`
`PETITIONER’S MOTION FOR JOINDER UNDER
`37 C.F.R. §§ 42.22 AND 42.122(b)
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`JPMORGAN CHASE BANK, N.A.
`Petitioner
`v.
`DYNAPASS IP HOLDINGS LLC,
`Patent Owner
`
`
`
`
`Case No. – Not Yet Assigned
`U.S. Patent No. 6,993,658
`
`
`PETITIONER’S MOTION FOR JOINDER UNDER
`37 C.F.R. §§ 42.22 AND 42.122(b)
`
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`I.
`II.
`III.
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`TABLE OF CONTENTS
`STATEMENT OF RELIEF REQUESTED ................................................... 1
`STATEMENT OF MATERIAL FACTS ....................................................... 2
`STATEMENT OF REASONS FOR REQUESTED RELIEF ....................... 5
`A.
`LEGAL STANDARDS ............................................................................... 5
`B.
`JPMORGAN’S MOTION IS TIMELY ......................................................... 6
`C.
`JOINDER IS APPROPRIATE ...................................................................... 6
`1.
`No New Grounds of Unpatentability in the Petition ................. 7
`2.
`No Impact on the Schedule for the Existing IPR
`Proceeding .................................................................................. 7
`Briefing and Discovery Will be Simplified ............................... 8
`3.
`No Prejudice to Patent Owner.................................................... 9
`4.
`IV. CONCLUSION ............................................................................................. 10
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`i
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`I.
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`STATEMENT OF RELIEF REQUESTED
`JPMorgan Chase Bank, N.A. (“JPMorgan” or “Petitioner”) respectfully
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`requests that the Board grant JPMorgan’s concurrently filed petition (the “Petition”)
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`for inter partes review of U.S. Patent No. 6,993,658 (“the ’658 Patent”) and join,
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`pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), the instituted proceeding
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`with Unified Patents, LLC v. Dynapass IP Holdings LLC, IPR2023-00425 (the
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`“Unified Patents IPR”), which the Board instituted on July 18, 2023.
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`This is JPMorgan’s first time challenging the patentability of the ’658 Patent
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`before the Board. JPMorgan’s Petition is substantively identical to the petition in
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`the Unified Patents IPR—challenging the same claims of the ’658 Patent on the same
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`grounds while relying on the same prior art, arguments, and evidence. See Ex. 1017
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`(redline comparison). This Motion for Joinder and accompanying Petition are
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`timely, being filed within the one-month time limit set forth in 37 C.F.R. § 42.122(b).
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`Joinder is appropriate here because (i) JPMorgan’s Petition is substantively
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`identical to the petition in the Unified Patents IPR with respect to the asserted
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`grounds, are based on the same prior art combinations and supporting evidence, and
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`asserted against the same claims, and (ii) JPMorgan agrees to an “understudy role”
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`and will not assume an active role unless Unified Patents ceases to actively prosecute
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`the Unified Patents IPR. Joinder will not unduly complicate the Unified Patents IPR
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`nor adversely impact its schedule, and instead will promote judicial efficiency in
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`determining the patentability of the ’658 Patent.
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`Accordingly, JPMorgan respectfully requests that the Board grant this Motion
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`for Joinder.
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`II.
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`STATEMENT OF MATERIAL FACTS
`Dynapass IP Holdings LLC (“Dynapass” or “Patent Owner”) filed a
`1.
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`Complaint for patent infringement of the ’658 Patent on June 17, 2022, against
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`JPMorgan, JPMorgan Chase & Co, and Chase Bank USA, N.A. (now known as
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`JPMorgan Chase Bank N.A.) in the Eastern District of Texas. That case is styled
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`Dynapass IP Holdings LLC v. JPMorgan Chase & Co., JPMorgan Chase Bank,
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`National Association, and Chase Bank USA National Association, Case No. 2:22-
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`cv-00212 (E.D. Tex.). JPMorgan was served with the Complaint on June 22, 2022.
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`2.
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`Patent Owner has also asserted the ’658 Patent in the following cases:
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`a. Dynapass IP Holdings LLC v. Bank of America Corporation et
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`al., Case No. 2:22-cv-00210 (E.D. Tex.) (filed June 17, 2022);
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`b. Dynapass IP Holdings LLC v. BOKF, National Association,
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`Case No. 2:22-cv-00211 (E.D. Tex.) (filed June 17, 2022);
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`c. Dynapass IP Holdings LLC v. PlainsCapital Bank et al., Case
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`No. 2:22-cv-00213 (E.D. Tex.) (filed June 17, 2022);
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`d. Dynapass IP Holdings LLC v. PNC Financial Services Group,
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`Inc. et al., Case No. 2:22-cv-00214 (E.D. Tex.) (filed June 17,
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`2022);
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`e. Dynapass IP Holdings LLC v. Regions Financial Corporation et
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`al., Case No. 2:22-cv-00215 (E.D. Tex.) (filed June 17, 2022);
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`f. Dynapass IP Holdings LLC v. Truist Financial Corporation,
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`Case No. 2:22-cv-00216 (E.D. Tex.) (filed June 17, 2022);
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`g. Dynapass IP Holdings LLC v. Wells Fargo & Company et al.,
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`Case No. 2:22-cv-00217 (E.D. Tex.) (filed June 17, 2022);
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`h. Dynapass IP Holdings LLC v. Woodforest National Bank et al.,
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`Case No. 2:22-cv-00218 (E.D. Tex.) (filed June 17, 2022);
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`i. Dynapass IP Holdings LLC v. Amazon.com, Inc., Case No. 2:23-
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`cv-00063 (E.D. Tex.) (filed Feb. 20, 2023);
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`j. Dynapass IP Holdings LLC v. The Charles Schwab Corporation
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`et al., Case No. 2:23-cv-00064 (E.D. Tex.) (filed Feb. 20, 2023);
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`k. Dynapass IP Holdings LLC v. East West Bancorp, Inc. et al.,
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`Case No. 2:23-cv-00065 (E.D. Tex.) (filed Feb. 20, 2023);
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`l. Dynapass IP Holdings LLC v. Experian Information Services,
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`Inc., Case No. 2:23-cv-00066 (E.D. Tex.) (filed Feb. 20, 2023);
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`m. Dynapass IP Holdings LLC v. First Citizens Bancshares, Inc. et
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`al., Case No. 2:23-cv-00067 (E.D. Tex.) (filed Feb. 20, 2023);
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`n. Dynapass IP Holdings LLC v. Simmons First National
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`Corporation et al., Case No. 2:23-cv-00068 (E.D. Tex.) (filed
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`Feb. 20, 2023).
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`3.
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`4.
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`Cases (c), (e), (h), (k), and (m) have been voluntarily dismissed.
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`On April 5, 2023, Jack Henry & Associates, Inc. filed an action for
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`Declaratory Judgment of Non-infringement and Invalidity of the ’658 Patent against
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`Dynapass in the District of Delaware, in a case styled Jack Henry & Associates, Inc.
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`v. Dynapass IP Holdings LLC¸ Case No. 1:23-cv-00388 (D. Del.).
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`5.
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` On January 3, 2023, Bank of America, N.A., Truist Bank, BOKF,
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`N.A., Wells Fargo Bank, N.A., and PNC Bank, N.A. filed a Petition for inter partes
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`review challenging claims 1-3 and 5-7 of the ’658 Patent (“Bank of America
`
`Petition”). On July 18, 2023, the Board instituted a Decision Denying Institution of
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`the Bank of America Petition. Bank of America, N.A. et al. v. Dynapass IP Holdings,
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`IPR2023-00367, Paper 13 (PTAB July 18, 2023). Neither JPMorgan, JPMorgan
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`Chase & Co, nor Chase Bank USA, N.A. was a party to the Bank of America
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`Petition.
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`6.
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`On January 6, 2023, Unified Patents, LLC, filed a Petition for inter
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`partes review challenging claims 1 and 3-6 of the ’658 Patent (“Unified Patents
`
`Petition”). On July 18, 2023, the Board issued a Decision Granting Institution of the
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`Unified Patents Petition and instituted the Unified Patents IPR. Unified Patents,
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`LLC v. Dynapass IP Holdings LLC, IPR2023-00425, Paper 9 (PTAB July 18, 2022).
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`7.
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`This petition asserts the same grounds of unpatentability against the
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`same claims, and relies on the same expert declaration and evidence as asserted and
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`relied upon on in the Unified Patents IPR.
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`III. STATEMENT OF REASONS FOR REQUESTED RELIEF
`A. Legal Standards
`The Leahy-Smith America Invents Act (AIA) permits joinder of inter partes
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`review (IPR) proceedings. Joinder is governed by 35 U.S.C. § 315(c), which states:
`
`(c) JOINDER. – If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that inter
`partes review any person who properly files a petition under section
`311 that the Director, after receiving a preliminary response under
`section 313 or the expiration of the time for filing such a response,
`determines warrants the institution of an inter partes review under
`section 314.
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`A motion for joinder should “(1) set forth the reasons why joinder is appropriate; (2)
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`identify any new grounds of unpatentability asserted in the petition; (3) explain what
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`impact (if any) joinder would have on the trial schedule for the existing review; and
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`(4) address specifically how briefing and discovery may be simplified.” Kyocera
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`Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013).
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`JPMorgan’s Motion is Timely
`B.
`A Motion for Joinder is timely if the moving party files within one month of
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`institution of the inter partes review for which joinder is requested. 37 C.F.R.
`
`§ 42.122(b). The Unified Patents IPR was instituted on July 18, 2023. Because
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`JPMorgan files this motion within one month of the institution of the Unified Patents
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`IPR, this motion is timely.
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`Joinder is Appropriate
`C.
`Joinder is appropriate because the JPMorgan Petition “does not include any
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`new issues beyond those raised in” the Unified Patents IPR, and joinder “will have
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`minimal impact on the proceeding. See STMicroelectronics, Inc. v. Monterey
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`Research, LLC, IPR2021-01230, Paper 7, at 5 (PTAB Nov. 18, 2021). The
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`JPMorgan Petition is substantially identical to the Unified Patents Petition,
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`challenging the same claims of the ’658 Patent on the same grounds and relying on
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`the same expert declaration. The only differences between JPMorgan’s Petition and
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`the Unified Patents Petition are the sections on Real Party-In-Interest, Related
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`Matters, Counsel, Service Information, and Discretionary Institution, which have
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`been appropriately updated. See Ex. 1017. JPMorgan has also re-filed the same
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`declaration of Bruce McNair. Joinder would therefore have little, if any, impact on
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`the Unified Patents IPR because no new grounds would be added, the schedule
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`would not be affected, no additional briefing or discovery would be required, and no
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`additional burdens would be placed on the Patent Owner, as detailed below.
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`Accordingly, joinder is appropriate because it eliminates the possibility of
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`duplicate efforts and ensures a just, speedy, and inexpensive resolution of these
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`proceedings.
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`1. No New Grounds of Unpatentability in the Petition
`The JPMorgan Petition does not assert any new grounds of unpatentability. It
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`challenges the same claims (1 and 3-6) of the ’658 Patent based on the same
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`arguments, evidence, and grounds of unpatentability as the Unified Patents Petition.
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`2. No Impact on the Schedule for the Existing IPR Proceeding
`Joinder should not impact the trial schedule for the Unified Patents IPR
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`because the JPMorgan Petition presents no new issues or grounds of unpatentability.
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`There are no new issues for the Board to address, and Patent Owner will not be
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`required to present any additional responses or arguments upon joinder.
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`JPMorgan will adhere to all existing deadlines set in the Scheduling Order for
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`the Unified Patents IPR (IPR2023-00425, Paper 10). Additionally, no additional
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`expert discovery will be needed because the JPMorgan Petition relies upon the same
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`declaration testimony from the same expert as relied upon by the Unified Patents
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`Petition. If joined, JPMorgan will not file additional briefs outside of the
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`consolidated filings, will not request any additional deposition time, and will not
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`request any additional oral hearing time. In the event that the Unified Patents IPR
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`is terminated with respect to the petitioner, JPMorgan intends to “step into the shoes”
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`of the dismissed petitioner and materially participate in the joined proceedings.
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`Accordingly, for the reasons stated above, joinder of JPMorgan to the Unified
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`Patents IPR will not affect the Board’s ability to complete its review and final
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`decision within the statutory time limits under 35 U.S.C. § 316(a)(11) and 37 C.F.R.
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`§ 42.100(c).
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`3. Briefing and Discovery Will be Simplified
`JPMorgan agrees to an “understudy” role, which will simply briefing and
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`discovery. In particular, JPMorgan agrees that, if joined, the following conditions
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`will apply so long as Unified Patents remains an active party, as previously approved
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`by the Board in similar circumstances:
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` 8
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`(a) all filings by JPMorgan in the joined proceeding be consolidated with the
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`filings of Unified Patents, unless a filing solely concerns issues that do not involve
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`Unified Patents;
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`(b) JPMorgan shall not be permitted to raise any new grounds not instituted
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`by the Board in the Unified Patents IPR, or introduce any argument or discovery not
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`already introduced by Unified Patents;
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`(c) JPMorgan shall be bound by any agreement between the Patent Owner and
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`Unified Patents concerning discovery and/or depositions; and
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`(d) JPMorgan at deposition shall not receive any direct, cross examination or
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`redirect time beyond that permitted for Unified Patents in this proceeding alone
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`under wither 37 C.F.R. § 42.53 or any agreement between the Patent Owner and
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`Unified Patents.
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`See Mercedes-Benz USA, LLC v. Neo Wireless, LLC, IPR2023-00079, Paper 11 at
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`10, 13-14 (PTAB May 5, 2023) (finding joinder appropriate under similar
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`conditions). JPMorgan would assume a primary role only if Unified Patents ceased
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`to participate in the proceeding. Briefing and discovery will be simplified in that
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`there will be no need for redundant depositions, briefing, or hearings. JPMorgan is
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`further amenable to any other reasonable conditions the Board deems necessary.
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`4. No Prejudice to Patent Owner
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`Joinder of JPMorgan to the Unified Patents IPR will not create any additional
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`burden on the Patent Owner. The Patent Owner need not expend any additional
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`resources above and beyond those required in the current Unified Patents IPR.
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`IV. CONCLUSION
`For the foregoing reasons, JPMorgan respectfully requests that its Petition for
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`Inter Partes Review of the ’658 Patent be granted and that the proceedings be joined
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`with the Unified Patents IPR.
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`Dated: August 16, 2023
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`Respectfully submitted,
`
`/H. Albert Liou/
`H. Albert Liou (Reg. No. 71,504)
`JONES DAY
`717 Texas Ave., Suite 3300
`Houston, Texas 77002
`Telephone: (832) 239-3939
`Facsimile: (832) 239-3600
`aliou@jonesday.com
`
`Vishal V. Khatri (Reg. No. 51,873)
`JONES DAY
`51 Louisiana Ave, N.W.
`Washington, D.C. 20001
`Tel: (202) 879-3939
`Facsimile: (202) 626-1700
`vkhatri@jonesday.com
`
`Rita J. Yoon (pro hac vice forthcoming)
`JONES DAY
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`10
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`555 California Street, 26th Fl.
`San Francisco, CA 94104
`Telephone: (415) 875-5816
`Facsimile: (415) 875-5700
`ryoon@jonesday.com
`
`Matthew W. Johnson (Reg. No. 59,108)
`JONES DAY
`500 Grant Street, Suite 4500
`Pittsburgh, PA 15219-2514
`Telephone: (412) 394-9524
`mwjohnson@jonesday.com
`
`Evan P. Tassis (Reg. No. 79,412)
`JONES DAY
`51 Louisiana Ave, N.W.
`Washington, D.C. 20001
`Tel: (202) 879-3939
`Facsimile: (202) 626-1700
`etassis@jonesday.com
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`11
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`CERTIFICATE OF SERVICE
`I hereby certify that on August 16, 2023, I caused a complete copy of this
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`Petitioner’s Motion for Joinder Under 37 C.F.R. §§ 42.22 and 42.122(b) to be
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`served via USPS Priority Mail Express to the following correspondence address of
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`record for the subject patent:
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`151075 – DynaPass Inc
`PO Box 11510
`Costa Mesa, CA 92627
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`A courtesy copy is being sent via electronic mail to the following counsel:
`
`John Wittenzellner
`WILLIAMS SIMONS & LANDIS PLLC
`johnw@wsltrial.com
`iprdynapasswsl@wsltrial.com
`
`Todd E. Landis
`Michael J. Fagan, Jr.
`WILLIAMS SIMONS & LANDIS PLLC
`tlandis@wsltrial.com
`mfagan@wsltrial.com
`
`Mark McCarthy
`WILLIAMS SIMONS & LANDIS PLLC
`mmccarthy@wsltrial.com
`
`By: /H. Albert Liou/
`H. Albert Liou
`Reg. No. 71,504
`
`Counsel for Petitioner JPMorgan
`Chase Bank, N.A.
`
`Dated: August 16, 2023
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`12
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