`
`Paper No. 8
`Filed: October 28, 2021
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________
`
`KIOSOFT TECHNOLOGIES, LLC and TECHTREX, INC.
`Petitioners
`
`v.
`
`PAYRANGE, INC.
`Patent Owner
`
`
`
`U.S. Patent No. 10,891,608
`Issued: January 12, 2021
`Filed: January 23, 2018
`Inventor: Paresh K. Patel
`Title: Method and System for Offline-Payment Operated Machine to Accept
`Electronic Payments
`______________________
`
`Post-Grant Review No. PGR2021-00084
`______________________
`
`
`PETITIONERS’ REPLY
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`Petitioners’ Reply
`PGR2021-00084
`
`In its Preliminary Response (“POPR”), Patent Owner includes several
`
`misrepresentations of fact that vitiate its arguments regarding discretionary denial
`
`and judicial efficiency. In accordance with the Board’s authorization of October
`
`21, 2021, Petitioners submit this Reply to address those misrepresentations.
`
`I.
`
`Patent Owner misrepresents the existence of a Fintiv Stipulation in the
`corresponding district court proceeding
`In the POPR, Patent Owner misrepresents Petitioners’ statements that
`
`Petitioners would not rely on any ground (including prior art) raised in this PGR in
`
`the corresponding district court proceeding, and that Petitioners “have not filed (or
`
`even represented that they will file) a stipulation in the district court abandoning
`
`those grounds even if institution is granted.” POPR at 15. Contrary to Patent
`
`Owner’s statements, Petitioners in fact filed a Fintiv Stipulation in the district court
`
`on September 7, 2021. See Ex. 2005. As Patent Owner now acknowledges, the
`
`Fintiv Stipulation was filed in the district court fourteen days before Patent Owner
`
`represented otherwise in the POPR.
`
`Without apparently having reviewed the Fintiv Stipulation of record in the
`
`district court proceeding, Patent Owner nonetheless represents that it would be “too
`
`narrow to meaningfully sway the Fintiv analysis in Petitioners’ favor.” POPR at 15.
`
`However, the Fintiv Stipulation unambiguously reiterates that “In the event of
`
`institution of the Post-Grant Review proceeding concerning the ‘608 Patent by the
`
`PTAB, Defendants will not rely on any ground (including prior art) raised in the
`
`
`
`
`
`
`1
`
`
`
`Petitioners’ Reply
`PGR2021-00084
`
`
`’608 Patent Petition for Post-Grant Review in the present litigation relating to the
`
`validity of the ’608 Patent.” Ex. 2005. Since the Petitioners have already stipulated
`
`against pursuing these grounds in the parallel proceeding in the event of institution
`
`of the PGR, the fourth Fintiv factor weighs against the Board exercising discretion
`
`to deny institution. Facebook, Inc. v. USC IP Partnership, L.P., IPR2021-00033,
`
`Paper 13 at 14 (P.T.A.B. April 30, 2021).
`
`II. Patent Owner misrepresents the timing for requesting and availability
`of a stay in the district court proceeding
`In the POPR, Patent Owner misstates that “institution should be denied
`
`because there is no evidence that a stay is likely in the co-pending district court case”
`
`and that “[t]he petition does not even assert that Petitioners will seek a stay.” POPR
`
`at 11. On the contrary, Petitioners intend to seek a stay in the district court case,
`
`and, given that the Court granted a stay in every case of which Petitioners are aware
`
`when the PTAB instituted review and petitioner requested stay, stay is likely to be
`
`granted. 1 As Patent Owner was aware, the deadline for filing a Motion to Stay in
`
`
`1 See, e.g., Signature Sys. v. American Exp. Co., No. 1-15-cv-20063, ECF No. 29,
`Order Granting Stay (SDFL Jul. 17, 2015); GateArm Techs. v. Access Masters, No.
`0-14-cv-62697, ECF No. 19, Order Granting Stay (SDFL Jul. 10, 2015); Targus Int’l
`v. Group III Int’l, No. 1-20-cv-21435, ECF No. 71, Order Granting Stay (SDFL Jan.
`08, 2021); Rothschild Digital Media Innovations v. Gameloft SA, No. 1-15-cv-
`23302, ECF No. 19, Order Granting Stay (SDFL Feb. 09, 2016); Rothchild Storage
`Retrieval Innov. v. Motorola Mobility, No. 1-14-cv-22659, ECF No. 108, Order
`Granting Stay (SDFL May. 11, 2015); Signature Sys. v. American Exp. Co., No. 1-
`15-cv-20063, ECF No. 62, Order Granting Stay (SDFL May. 09, 2018); Signature
`Sys. v. American Exp. Co., No. 1-15-cv-20063, ECF No. 29, Order Granting Stay
`(SDFL Jul. 17, 2015).
`
`
`
`2
`
`
`
`
`
`Petitioners’ Reply
`PGR2021-00084
`
`
`the district court proceeding had not passed at the time of filing the POPR, and a
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`Stay is available for Petitioners to pursue. In fact, Petitioners moved in the district
`
`court to extend the deadline to file motions to stay litigation pending the Board’s
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`deliberation over whether to institute this petition, and the Court, in one order, stated
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`that the “Court agree[d] with the Defendants that the deadlines in this case should
`
`be extended in light of the Patent Trial and Appeal Board's reexamination of the
`
`patents at issue.” PayRange, Inc. v. KioSoft Technologies, LLC, et al., No. 1:20-cv-
`
`24342-RNS, Paperless Order (ECF No. 63) (S.D. Fla. Oct. 13, 2021).
`
`The district court modified the litigation schedule on October 25, 2021,
`
`modifying the deadline for parties to move to stay the litigation pending
`
`reexamination in the U.S. Patent Office to February 7, 2022 and the trial start date
`
`to September 12, 2022. PayRange, Inc. v. KioSoft Technologies, LLC, et al., No.
`
`1:20-cv-24342-RNS, Amended Scheduling Order (ECF No. 67). Petitioners intend
`
`to pursue a stay in the co-pending district court case and believe a stay is likely to
`
`be granted in view of the early stage of the proceeding as well as the Court’s
`
`disposition in previous cases where a stay has been sought. Accordingly, the first
`
`Fintiv factor also weighs against the Board exercising discretion to deny institution.
`
`Date: October 28, 2021
`
`
`
`
`
`By:___/Safet Metjahic/________________
`Safet Metjahic (Reg. No. 58,677)
`Holiday W. Banta (Reg. No. 40,311)
`Attorneys for Petitioners
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`
`
`Petitioners’ Reply
`PGR2021-00084
`
`CERTIFICATE OF SERVICE OF PETITIONER’S REPLY
`The undersigned certifies service pursuant to 37 C.F.R. §§ 42.6(e) and
`
`42.105(b) on the Patent Owner on the signature date below via email a copy of this
`
`Petitioner’s Reply at the email addresses below.
`
`
`
`Michael T. Rosato
`Email: mrosato@wsgr.com
`
`
`
`Date: October 28, 2021
`
`
`
`
`
`Matthew A. Argenti
`Email: margenti@wsgr.com
`Jad A. Mills
`Email: jmills@wsgr.com
`
`By:___/Safet Metjahic/________________
`Safet Metjahic (Reg. No. 58,677)
`Holiday W. Banta (Reg. No. 40,311)
`Attorneys for Petitioners
`
`
`
`
`
`
`
`
`4
`
`
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