Case: 19-1076   Document: 123     Page: 1   Filed: 08/05/2020




         NOTE: This disposition is nonprecedential.


    United States Court of Appeals
        for the Federal Circuit
                  ______________________

                VERIFY SMART CORP.,
                      Appellant

                             v.

                 ASKELADDEN, L.L.C.,
                      Appellee

                    UNITED STATES,
                        Intervenor
                  ______________________

                        2019-1076
                  ______________________

     Appeal from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in No. IPR2017-
 00726.
                  ______________________

                 Decided: August 5, 2020
                 ______________________

    STEVEN M. HOFFBERG, Tully Rinckey PLLC, New York,
 NY, for appellant. Also represented by JEAN-MARC
 ZIMMERMAN, Zimmerman Law Group, Westfield, NJ.

     RICHARD L. RAINEY, Covington & Burling LLP, Wash-
 ington, DC, for appellee. Also represented by DOUGLAS
 ALEXANDER BEHRENS, BRIAN GERARD BIELUCH; MARK
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 2                    VERIFY SMART CORP.   v. ASKELADDEN, L.L.C.



 BERKOWITZ, CHARLES R. MACEDO, Amster Rothstein &
 Ebenstein LLP, New York, NY.

     DENNIS FAN, Appellate Staff, Civil Division, United
 States Department of Justice, Washington, DC, for inter-
 venor. Also represented by SCOTT R. MCINTOSH, ETHAN P.
 DAVIS; THOMAS W. KRAUSE, FARHEENA YASMEEN RASHEED,
 Office of the Solicitor, United States Patent and Trade-
 mark Office, Alexandria, VA.
                  ______________________

      Before LOURIE, SCHALL, and DYK, Circuit Judges.
 LOURIE, Circuit Judge.
     Verify Smart Corp. (“Verify”) appeals from the final
 written decision of the United States Patent and Trade-
 mark Office Patent Trial and Appeal Board (“the Board”)
 holding claims 1–19 of U.S. Patent 8,825,648 (“the ’648 pa-
 tent”) unpatentable as obvious. See Askeladden LLC v.
 Verify Smart Corp., No. IPR2017-00726, 2018 WL 3572368
 (P.T.A.B. July 23, 2018) (“Decision”). Because the Board
 did not err in its conclusion that the challenged claims
 would have been obvious over the prior art, we affirm.
                         BACKGROUND
      Verify owns the ’648 patent, which is directed to sys-
 tems and methods for verifying a user’s identity in elec-
 tronic transactions. The patent relates to multi-factor
 authentication, which utilizes secure information that the
 user knows as well as an electronic communications device
 (e.g., a phone) in the user’s possession. For example, the
 patent provides that “a user and the user’s communication
 device are pre-enrolled in a verification program” adminis-
 tered by a verifier (i.e., the user’s bank) and the verifier op-
 erates a database that stores a secure identifier for the user
 (e.g., a password or personal identification number (“PIN”))
 as well as an identifier for the user’s electronic device (e.g.,
 an access number). See, e.g., ’648 patent col. 4 ll. 5–8, 27–
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 29. When the user attempts to make a transaction, the
 verifier attempts to open a communications link with the
 user’s device, and once the communications link is open,
 the verifier sends an identification verification request
 (“IVR”) to the device, which displays the request to the
 user. Id. col. 4 ll. 38–46. The user then responds to the
 IVR by inputting the correct secure identifier and sending
 the response back to the verifier through the open commu-
 nications link. Id. col. 4 ll. 48–51. The verifier then com-
 pares the secure identifier entered by the user with the
 secure identifier stored in the database and permits the
 transaction to proceed if there is a match. Id. col. 4 ll. 54–
 61.
     Claim 1 is illustrative and recites:
     1. A user identity verification method for verifying
     the identity of a user by a verifier in the course of
     an electronic transaction, said user identity verifi-
     cation method comprising the steps of:
     (a) pre-enrolling the user, comprising the steps of:
         (a1) assigning to the user a bona fide secure
     identifier; and,
         (a2) storing the bona fide secure identifier in a
     database that is accessible to the verifier;
     (b) pre-enrolling a user communications device,
     wherein pre-enrolling the user communications de-
     vice comprises the steps of:
         (b1) obtaining a user access number for the
     user communications device, wherein the user ac-
     cess number can be used to open a communications
     link with the user communications device; and,
        (b2) storing the user access number in a data-
     base that is accessible to the verifier;
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 4                    VERIFY SMART CORP.    v. ASKELADDEN, L.L.C.



     (c) retrieving the user access number stored at Step
     (b2);
     (d) opening a communications link between the
     verifier and the user communications device by us-
     ing the user access number retrieved at Step (c);
     (e) sending an identity verification request (IVR)
     from the verifier to the user through the communi-
     cations link opened at Step (d);
     (f) inputting by the user a putative secure identi-
     fier;
     (g) sending through the communications link
     opened at Step (d) a response to the IVR of Step (e);
     (h) retrieving the bona fide secure identifier stored
     at Step (a2);
     (i) comparing the putative secure identifier input
     at Step (f) with the bona fide secure identifier re-
     trieved at Step (h); and,
     (j) allowing the transaction to proceed only if the
     comparison of Step (i) results in a match between
     the putative secure identifier and the bona fide se-
     cure identifier.
 ’648 patent col. 18 l. 63–col. 19 l. 31.
     Askeladden, LLC (“Askeladden”) is a single-member
 limited liability company formed by The Clearing House
 Payments Company, LLC (“TCH”), which in turn is owned
 by twenty-five of the world’s largest commercial banks, in-
 cluding Bank of America (collectively the “member banks”).
 Askeladden filed a petition for inter partes review of claims
 1–19 of the ’648 patent, arguing that the claims were un-
 patentable as obvious over a combination of U.S. Patent
 App. Pub. 2005/0184145 (“Law”), U.S. Patent App. Pub.
 2006/0165060 (“Dua”), and U.S. Patent 6,886,741
 (“Salveson”).
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     Law describes a secure wireless authorization system
 that allows a user to use a wireless device to authorize a
 third-party transaction request in real time. Law ¶ 47. In
 Law’s system, when an authorization request is received,
 an authorization server (i.e., a bank) sends an authoriza-
 tion request to the user’s wireless device through an en-
 crypted secure channel. Id. ¶¶ 36, 49. The channel is
 encrypted by a pre-established symmetric key, which can
 be used as a “device password” or “device key.” Id. ¶¶ 66–
 67. If the wireless device receives the request, it displays
 the request to the user and allows the user to respond by
 inputting a PIN or personal digital signature. Id. ¶ 49. If
 the authorization server receives a response within a cer-
 tain specified period of time (i.e., a “timeout” period), it con-
 firms that the user’s security credentials are correct and
 allows the transaction to proceed. Id. ¶¶ 49–50.
     The Board instituted review on all claims and all
 grounds. After institution, Verify filed a motion to termi-
 nate the proceedings, arguing that Askeladden failed to
 name TCH and Bank of America as real parties in interest
 as required by 35 U.S.C. § 312(a)(2). The Board deter-
 mined that TCH should be named as a real party in inter-
 est but that neither Bank of America nor any other member
 banks is in privity with Askeladden or TCH and need not
 be named. J.A. 611, 614. Rather than terminate the pro-
 ceedings, the Board allowed Askeladden to update its man-
 datory notice to name TCH as a real party interest, which
 it did. J.A. 615, 628. Verify continued to argue that the
 member banks are real parties in interest in later filings.
     Meanwhile, Verify also filed a motion to amend the
 claims of the ’648 patent under 35 U.S.C. § 316(d) in which
 Verify sought to amend claim 2 and add dependent claims
 20–31. J.A. 564–77. Verify later withdrew its proposed
 addition of claims 20–22 and 26–30. J.A. 730. Askeladden
 responded that amended claim 2 and new claims 25 and 31
 would have been obvious over Law and/or Dua. Askelad-
 den also argued that new claims 23 and 24 lacked written
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 6                   VERIFY SMART CORP.   v. ASKELADDEN, L.L.C.



 description support in the specification of the ’648 patent
 and alternatively that the claims would have been obvious
 over Law, Dua, and U.S. Patent App. Pub. 2003/0182194
 (“Choey”).
     The Board issued a final written decision in which the
 Board determined that Askeladden had demonstrated the
 unpatentability of claims 1–19 of the ’648 patent, denied
 Verify’s motion to amend for all claims, and reiterated its
 conclusion that none of the member banks are real parties
 in interest to the proceeding. Relevant to this appeal, the
 Board determined that independent claims 1, 2, and 5, as
 well as dependent claim 19, would have been obvious over
 Law and Dua. With respect to Verify’s motion to amend,
 the Board determined that proposed amended claim 2 and
 proposed new claims 25 and 31 would have been obvious
 over Law and Dua and that proposed new claims 23 and 24
 would have been obvious over Law, Dua, and Choey. The
 Board also determined that proposed claims 23 and 24 lack
 written description support in the specification of the ’648
 patent.
     Verify appealed. We have jurisdiction under 28 U.S.C.
 § 1295(a)(4)(A).
                         DISCUSSION
     Verify makes four principal arguments on appeal.
 First, Verify argues that the Board erred in concluding that
 the claims would have been obvious over the prior art. Sec-
 ond, Verify argues that the Board erred in denying its mo-
 tion to amend because the amended claims would have
 been unpatentable as obvious. Third, Verify argues that
 the Board erred in determining that Bank of America is not
 a real party in interest. Finally, Verify argues that the ap-
 plication of inter partes review to pre-AIA patents is a tak-
 ing under the Fifth Amendment. We address Verify’s
 arguments in turn.
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 VERIFY SMART CORP.   v. ASKELADDEN, L.L.C.                  7



                        A. Obviousness
      Obviousness is a question of law that “lends itself to
 several basic factual inquiries,” Graham v. John Deere Co.,
 383 U.S. 1, 17–18 (1966) (citing Great Atl. & Pac. Tea Co.
 v. Supermarket Equip. Corp., 340 U.S. 147, 155 (1950)), in-
 cluding the scope and content of the prior art, the level of
 ordinary skill in the art, differences between the prior art
 and the claimed invention, and any relevant secondary con-
 siderations. Id. “We review the PTAB’s factual findings
 for substantial evidence and its legal conclusions de novo.”
 Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d
 435, 449 (Fed. Cir. 2015) (citing Rambus Inc. v. Rea, 731
 F.3d 1248, 1251 (Fed. Cir. 2013)). A finding is supported
 by substantial evidence if a reasonable mind might accept
 the evidence as adequate to support the finding. Consol.
 Edison Co. v. NLRB, 305 U.S. 197, 229 (1938). “If two ‘in-
 consistent conclusions may reasonably be drawn from the
 evidence in record, the PTAB’s decision to favor one conclu-
 sion over the other is the epitome of a decision that must
 be sustained upon review for substantial evidence.’” Elbit
 Sys. of Am., LLC v. Thales Visionix, Inc., 881 F.3d 1354,
 1356 (Fed. Cir. 2018) (quoting In re Cree, Inc., 818 F.3d 694,
 701 (Fed. Cir. 2016) (internal brackets omitted)).
                       1. Claims 1 and 5
      Verify argues that the Board erred in concluding that
 claims 1 and 5 would have been obvious over the prior art.
 Independent claim 1 recites, inter alia, “opening a commu-
 nications link between the verifier and the user communi-
 cations device by using the user access number” and
 “sending an identity verification request (IVR) from the
 verifier to the user through the communications link.” In-
 dependent claim 5 recites substantially similar limitations.
 The Board determined that Law discloses opening a com-
 munications channel through its description of connecting
 an authorization server of the issuing bank (i.e., the veri-
 fier) and the user’s wireless device. Decision, 2018 WL
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 8                  VERIFY SMART CORP.   v. ASKELADDEN, L.L.C.



 3572368, at *8. The Board also concluded that Law dis-
 closes sending an identification verification request
 through an open communications link through its descrip-
 tion of sending an authorization request from the authori-
 zation server to the user’s wireless device. Id.
     Verify argues that the Board improperly failed to con-
 strue the term “open[ing] a communications link with the
 user communications device.” Verify further argues that
 Law fails to disclose the steps of opening a communications
 channel and sending an IVR through the channel because
 the authorization server of Law transmits its authorization
 request to the user’s wireless device through a third-party
 intermediary without having previously opened a commu-
 nications channel with the user’s device. Verify also chal-
 lenges the Board’s finding of a motivation to combine Law
 with Dua.
     Askeladden responds that Verify’s claim construction
 argument is waived because Verify failed to seek construc-
 tion of any claim terms before the Board and that the
 Board’s conclusion that Law discloses opening a communi-
 cations link is supported by substantial evidence, including
 the testimony of its expert, Ivan Zatkovich.
      We agree with Askeladden on both counts. Verify did
 not file a preliminary response to Askeladden’s petition for
 inter partes review, and the Board, in its institution deci-
 sion, determined that no claim terms required construc-
 tion. Askeladden LLC v. Verify Smart Corp., No. IPR2017-
 00726, Paper 6 at 7 (P.T.A.B. July 24, 2017). Thereafter,
 Verify failed to request or propose a construction for any
 claim terms in its patent owner’s response. See Askeladden
 LLC v. Verify Smart Corp., No. IPR2017-00726, 2017 WL
 6061669 (P.T.A.B. Nov. 20, 2017). Having failed to present
 its claim construction argument before the Board, Verify is
 not entitled to present that argument for the first time on
 appeal. See In re Baxter Int’l, 678 F.3d 1357, 1362 (Fed.
 Cir. 2012) (“Absent exceptional circumstances, we
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 VERIFY SMART CORP.   v. ASKELADDEN, L.L.C.                9



 generally do not consider arguments that the applicant
 failed to present to the Board.” (internal citations omit-
 ted)).
     Under the plain and ordinary meaning of the claim
 terms as adopted by the Board, we agree with Askeladden
 that the Board’s finding that Law discloses opening a com-
 munications channel and sending an IVR through the
 channel is supported by substantial evidence. Before the
 Board, Verify argued that Law’s authorization system op-
 erates using an SMS (short message service) network, in
 which communications from the authorization server to the
 user’s wireless device are routed through an SMSC (short
 message service center), which is operated by the wireless
 carrier, not the bank. J.A. 377–80. According to Verify, at
 the time that the authorization server transmits the au-
 thorization request to the SMSC, no communications link
 is open with the user’s device. J.A. 384. In response, rely-
 ing on the declaration of Zatkovich, Askeladden argued
 that Law’s authorization server establishes an encrypted
 communications channel with the user device and subse-
 quently transmits its authorization request to the user’s
 device through this channel.
     Having been presented with competing theories as to
 how Law’s authorization server communicates with the
 user’s wireless device, the Board found that Law discloses
 the claimed communications link. Our task is not to deter-
 mine which theory we find more compelling. “[I]t is not for
 us to second-guess the Board’s assessment of the evidence.”
 Velander v. Garner, 348 F.3d 1359, 1378 (Fed. Cir. 2003).
 Rather, the only question before us is whether the finding
 adopted by the Board is supported by substantial evidence.
 Here, we conclude that it is.
     Zatkovich testified that, in his opinion, Law’s authori-
 zation server “opens a ‘communications link’ prior to send-
 ing a message.” J.A. 3283 ¶ 150. This testimony accords
 with the disclosure of Law, which explains that, if a
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  10                  VERIFY SMART CORP.   v. ASKELADDEN, L.L.C.



  transaction is not pre-authorized, then the authorization
  server will “attempt to connect to the wireless device.” Law
  ¶ 62. Thereafter, if the user’s device is available, then the
  authorization server will “send out an authorization re-
  quest” to the user’s wireless device “through an encrypted
  secure channel . . . connecting the authorization server and
  the user’s wireless device.” Id. With respect to Verify’s ar-
  gument that use of SMS precludes establishing a commu-
  nications link between the authorization server and the
  user’s device, Zatkovich testified that Law discloses estab-
  lishing a secure wireless connection between an authoriza-
  tion server and the user communications device
  “irrespective of the protocol selected,” such as SMS. J.A.
  3285 ¶ 153. The disclosure of Law comports with Zatko-
  vich’s testimony that Law’s encrypted channel can support
  various communication protocols. As Law explains, the
  user’s wireless device “must handle various security
  schemes and communication channels.” Law ¶ 70. Based
  on Law’s disclosure and Zatkovich’s testimony, we conclude
  that the Board’s finding that Law discloses opening a com-
  munications link between the verifier (Law’s authorization
  server) and the user communication device, as well as
  sending an identity verification request (Law’s authentica-
  tion request) from the verifier to the user through the com-
  munications link is supported by substantial evidence.
       Substantial evidence also supports the Board’s finding
  of a motivation to combine Law with Dua. The Board cred-
  ited Zatkovich’s testimony that a skilled artisan would
  have been motivated to combine Law with Dua because the
  references “are both directed to electronic transaction pro-
  cessing and, in particular, verifying and authenticating us-
  ers and authorizing financial transactions.” J.A. 988 ¶ 54.
  Zatkovich further testified that a person of skill would have
  recognized that combining Law with Dua would facilitate
  “the convenience and flexibility offered by over-the-air, on
  demand, download methods.” J.A. 993 ¶ 64. Accordingly,
  we affirm the Board’s finding of a motivation to combine
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  VERIFY SMART CORP.   v. ASKELADDEN, L.L.C.                  11



  the references, and hence the obviousness of claims 1
  and 5.
                           2. Claim 19
      Claim 19 depends from claim 5 and recites the addi-
  tional steps of storing a “device identifier” of the user com-
  munications device in the database, obtaining the device
  identifier of the user communications device used during
  verification, comparing the device identifier obtained dur-
  ing verification with the device identifier stored in the da-
  tabase, and, if the device identifiers match, allowing the
  transaction. ’648 patent col. 22 ll. 16–28. The Board deter-
  mined that “device keys” described in Law to encrypt mes-
  sages sent through Law’s secure encrypted channel
  disclose the device identifier recited in claim 19, and that
  Law discloses the remaining steps of claim 19 through its
  description of verifying the device credentials of the user’s
  device prior to authorizing a transaction. Decision, 2018
  WL 3572368, at *11.
      Verify argues that Law’s use of device keys to encrypt
  communication does not meet the limitations of claim 19
  because, while the device keys may be used to verify the
  credentials of the user’s device, the key is never transmit-
  ted to the authorization server and compared to an identi-
  fier stored in the server, as required by the claim.
  Askeladden responds that substantial evidence supports
  the Board’s conclusion that Law’s device keys disclose a de-
  vice identifier and are used in the manner recited in the
  claim.
       We agree with Askeladden. Law explains that the
  symmetric key used to encrypt communications between
  the authentication server and user device “can be used as
  a device password” or “device key.” Law ¶ 67. Further,
  “[u]pon receiving the response from the wireless device, the
  authorization server will . . . verify the security credentials
  of the user and the wireless device.” Law ¶ 50. In reaching
  its conclusion that Law discloses comparing the device key
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  12                 VERIFY SMART CORP.   v. ASKELADDEN, L.L.C.



  with a key stored in the authorization server, the Board
  credited Zatkovich’s testimony that a skilled artisan
  “would have understood that verifying the separate secu-
  rity credentials of the wireless device requires retrieving
  and comparing the stored value of these credentials . . . to
  that retrieved from the user communication device.” J.A.
  3294 ¶ 171. The Board was within its discretion to weigh
  the credibility of expert testimony, see Yorkey v. Diab, 601
  F.3d 1279, 1284 (Fed. Cir. 2010) (citing Velander, 348 F.3d
  at 1371), and Verify has not otherwise demonstrated that
  the Board’s finding is unsupported by substantial evidence,
  or that claim 19 was not obvious.
                     B. Motion to Amend
      Verify argues that the Board erred in denying its mo-
  tion to amend the claims under 35 U.S.C. § 316(d). We ad-
  dress the challenged amendments and proposed new
  claims in turn.
                    1. Claims 2, 25, and 31
       Independent claim 2 recites substantially similar sub-
  ject matter as claim 1. In its motion to amend, Verify
  sought to amend claim 2 additionally to recite “wherein the
  first verifier communication device is configured to open a
  communication link with the user communications device,
  and thereafter determine whether the open communication
  link has been broken.” J.A. 566. Verify also proposed to
  amend claim 2 to further limit the condition in which the
  transaction proceeds to require that “the open communica-
  tions link is not previously broken.” J.A. 566–67. Proposed
  dependent claims 25 and 31 similarly require that the
  transaction is blocked if the opened communication link is
  broken. J.A. 575, 577. The Board determined that Law’s
  timeout feature discloses the proposed limitations that the
  verifier determine whether the communication link is bro-
  ken and that the transaction is made contingent on a de-
  termination that it is not. Decision, 2018 WL 3572368, at
  *20. Accordingly, the Board concluded that the proposed
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  amendments are unpatentable as obvious over the prior
  art.
      Verify argues that Law does not disclose the amended
  limitations because Law’s timeout feature only indicates
  the failure of a user to respond within a predetermined
  amount of time and does not indicate whether the commu-
  nications link is broken. Askeladden responds that the
  Board’s conclusion was supported by substantial evidence.
       We agree with Askeladden. Law explains that “[i]n the
  event that the user does not respond to the request within
  the specified time limit, the authorization server will . . .
  deny the request or wait for the postauthorization model to
  take effect . . . .” Law ¶ 63. Zatkovich testified that a per-
  son of skill would have understood that “a ‘broken’ commu-
  nication link would include a link where the line is
  ‘dropped’ or a response is not received within a specified
  time period.” J.A. 3304 ¶ 192. Indeed, the ’648 patent it-
  self describes a communications link being “timed-out” as
  one example of when the link is “broken.” ’648 patent col. 8
  ll. 28–32. Accordingly, we conclude that the Board’s deter-
  mination that amended claim 2 and proposed new claims
  25 and 31 would have been obvious over the prior art is
  supported by substantial evidence, and that the motion to
  amend was properly denied.
                       2. Claims 23 and 24
      Proposed claim 23 depends from claim 5 and further
  recites “determining a location of the user communications
  device with a GPS locating function on a cell phone.” J.A.
  574. Proposed claim 24 includes the same limitation by
  virtue of its dependency on claim 23. The Board deter-
  mined that the proposed claims lack written description
  support in the specification because, while the specification
  of the ’648 patent provides written description support for
  determining a location of a cell phone via a GPS locating
  function, it does not provide support for determining a lo-
  cation of other types of devices encompassed by the user
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  14                  VERIFY SMART CORP.   v. ASKELADDEN, L.L.C.



  communication device. Decision, 2018 WL 3572368, at *19.
  Alternatively, the Board concluded that the proposed
  claims would have been obvious over Law, Dua, and Choey.
  Id. at *21. Accordingly, the Board denied Verify’s motion
  to add claims 23 and 24.
      Verify argues that under the broadest reasonable in-
  terpretation proposed claims 23 and 24 require only that
  the GPS elements of a locating function must be on the re-
  cited cell phone, not the communications device itself,
  which is supported by the specification. Further, Verify ar-
  gues that the Board’s conclusion that the claims would
  have been obvious over the prior art is unsupported by sub-
  stantial evidence because Choey describes a system in
  which the GPS receivers are located on top of cell towers,
  not “on a cell phone,” as required by the claims.
       Askeladden responds that the Board correctly deter-
  mined that the proposed claims lack written description
  support because the claims recite determining the location
  of a communications device, and the specification only de-
  scribes how to determine the location of a cell phone. Even
  if the specification provides written description support for
  the claims, Askeladden argues, the Board’s conclusion that
  Choey discloses using a GPS-enabled mobile phone system
  to detect mobile phone location was supported by substan-
  tial evidence.
       We agree with Askeladden and the Board that Verify’s
  proposed claims improperly introduce new matter. Pro-
  posed amendments “may not enlarge the scope of the
  claims of the patent or introduce new matter.” 35 U.S.C.
  § 316(d)(3). The passage on which Verify relies for support
  of its replacement claims recites: “[B]ecause of the GPS lo-
  cating functions now universal on cell phones, any at-
  tempted false verification query can automatically trigger
  a tracking routine to immediately locate the stolen cell
  phone.” ’648 patent col. 5 ll. 30–33. But the written de-
  scription explains that the term “communications device”
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  as used in the ’648 patent “is intended broadly to include
  communications devices of any nature linked in a commu-
  nications system,” including computers. Id. col. 2 ll. 21–27.
  Thus, while the written description discloses determining
  the location of cell phones, the proposed claims recite de-
  termining the location of other types of devices. Even un-
  der Verify’s reading of the claims in which only the GPS
  function is on a cell phone, the written description does not
  disclose using the cell phone to track devices other than the
  cell phone—specifically, the user communications device.
  Accordingly, we agree that proposed claims 23 and 24 in-
  troduce new matter and affirm the Board’s denial of Ver-
  ify’s motion to amend as to those claims.
       Having affirmed the Board’s conclusion that proposed
  claims 23 and 24 introduce new matter to the specification
  of the ’648 patent, we need not address the Board’s decision
  that those claims would have been obvious over the prior
  art.
                   C. Real Party in Interest
      Verify argues that the Board erred in concluding that
  Bank of America is not a real party in interest. According
  to Verify, Bank of America should be named as a real party
  in interest in the proceedings because of the member
  banks’ control over TCH. Because Verify asserted the ’648
  patent against Bank of America more than one year before
  Askeladden filed its petition for inter partes review, Verify
  argues that Askeladden’s petition should be dismissed as
  time-barred under 35 U.S.C. § 315(b).
      Verify’s argument is foreclosed by intervening prece-
  dent. In Thryv, Inc. v. Click-To-Call Techs., LP, the Su-
  preme Court held that 35 U.S.C. § 314(d) precludes judicial
  review of the Board’s application of the one-year time bar
  set forth in § 315(b). 140 S. Ct. 1367 (2020). The Court
  explained that “a contention that a petition fails under
  § 315(b) is a contention that the agency ‘should have re-
  fused to institute an inter partes review,’” and therefore a
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  16                  VERIFY SMART CORP.   v. ASKELADDEN, L.L.C.



  challenge to a petition’s timeliness under § 315(b) is a dis-
  pute about the application of an institution-related statute
  and is barred from appellate review by § 314(d). Id. at
  1373–74 (quoting 35 U.S.C. § 314(d)).
      Thereafter, in view of Click-To-Call, this court held
  that preclusion of judicial review under § 314(d) “extend[s]
  to a Board decision concerning the ‘real parties in interest’
  requirement of § 312(a)(2).” ESIP Series 2, LLC v. Puzhen
  Life USA, LLC, 958 F.3d 1378, 1386 (Fed. Cir. 2020). Ac-
  cordingly, we hold that § 314(d) precludes our review of the
  Board’s decision that Bank of America is not a real party
  in interest.
      Somewhat relatedly, Verify also argues that the opera-
  tion of TCH by the member banks is an unlawful restraint
  of trade under the Sherman Act. Observing that it lacks
  jurisdiction to determine Sherman Act violations, the
  Board declined to address Verify’s argument. Decision,
  2018 WL 3572368, at *15 n.6. The proceedings that may
  be addressed by the Board are enumerated by statute. See
  35 U.S.C. § 6(b)(1)–(4). Relevant here, the scope of inter
  partes review is limited to requests to cancel claims of is-
  sued patents as unpatentable under 35 U.S.C. §§ 102 and
  103 and does not extend to alleged antitrust violations.
  35 U.S.C. § 311(b). Accordingly, we agree with the Board
  that it lacked jurisdiction to address Verify’s antitrust al-
  legations in the first instance and similarly decline to ad-
  dress Verify’s arguments on appeal.
                       D. Takings Claim
       Finally, Verify argues that the retroactive application
  of inter partes review to patents that issued prior to the en-
  actment of the America Invents Act (“AIA”) is a taking un-
  der the Fifth Amendment, but Verify’s argument is
  foreclosed by our precedent. In Celgene Corp. v. Peter, we
  held that “the retroactive application of IPR proceedings to
  pre-AIA patents is not an unconstitutional taking under
  the Fifth Amendment.” 931 F.3d 1342, 1362 (Fed. Cir.
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  VERIFY SMART CORP.   v. ASKELADDEN, L.L.C.                 17



  2019). Accordingly, we hold that the retroactive applica-
  tion of IPR proceedings to the ’648 patent, which issued be-
  fore the enactment of the AIA, is not an unconstitutional
  taking.
       We note briefly that Verify also raises due process chal-
  lenges to various procedural decisions of the Board. Spe-
  cifically, Verify argues that the Board violated due process
  by denying Verify’s request for discovery from TCH for ev-
  idence of secondary considerations of nonobviousness and
  the member banks’ status as real parties in interest. We
  review the Board’s application of its rules for trial proceed-
  ings for abuse of discretion. Ultratec, Inc. v. CaptionCall,
  LLC, 872 F.3d 1267, 1271–72 (Fed. Cir. 2017); Redline De-
  tection, 811 F.3d at 442. In denying Verify’s request, the
  Board observed that “TCH has not entered any papers or
  testimony in this proceeding. Nor has TCH advanced any
  positions during this proceeding” and that 37 C.F.R.
  § 42.51(b)(1)(iii) requires routine discovery of only “rele-
  vant information that is inconsistent with a position ad-
  vanced by the party.” J.A. 648 (emphasis in original).
  Since TCH had not advanced any position in the proceed-
  ing, the Board determined that it was not subject to routine
  discovery. In any event, the Board also determined that
  Verify’s requests were untimely. We find that the Board’s
  determination that Verify’s motions were overbroad and
  untimely was reasonable and that the Board did not abuse
  its discretion in denying the motions.
                           CONCLUSION
       We have considered Verify’s remaining arguments but
  find them unpersuasive. For the foregoing reasons, the de-
  cision of the Board is affirmed.
                          AFFIRMED
