Case 1:20-cv-24342-RNS Document 68 Entered on FLSD Docket 10/29/2021 Page 1 of 4
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
`MIAMI DIVISION
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`Case No. 1:20-cv-24342-RNS
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`PAYRANGE, INC.
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`Plaintiff,
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`v.
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`KIOSOFT TECHNOLOGIES, LLC and
`TECHTREX, INC.,
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` Defendants.
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`DEFENDANTS’ SUPPLEMENTAL NOTICE OF PENDING, REFILED, RELATED, OR
`SIMILAR ACTIONS AND AMENDED FINTIV STIPULATION
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`Pursuant to Local Rule 3.8, Defendants (“KioSoft” or “Defendants”) hereby supplement their
`
`prior Notice (ECF No. 36) to advise the Court that the Patent Trial and Appeal Board (“PTAB”)
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`instituted for trial the Petition for Post-Grant Review (“Petition”) against Plaintiff PayRange, Inc.’s
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`alleged U.S. Patent Number 10,719,833. ECF No. 36 reporting PTAB Petition No. PGR2021-00071.
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`After reviewing KioSoft’s Petition, Plaintiff’s Preliminary Response, and the evidence submitted to
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`the PTAB, the PTAB, yesterday, “determine[d] that [KioSoft] has demonstrated that, if unrebutted,
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`it is more likely than not that at least one of the claims challenged in the Petition is unpatentable” and,
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`accordingly, the PTAB “institute[d] a post-grant review of all challenged claims based upon all
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`grounds raised in the Petition.” Exhibit 1, KioSoft Technologies, LLC and TechTrex, Inc. v.
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`PayRange, Inc., PGR2021-00077, Paper 8, Decision Granting Institution of Post-Grant Review
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`(P.T.A.B. Oct. 28, 2021).
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`KioSoft confirms that KioSoft’s petitions for post-grant review of Plaintiff’s alleged U.S.
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`Patent Number 10,891,608 (the “’608 Patent”) (Petition No. PGR2021-00084 filed May 27, 2021)
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`Petitioner Kiosoft Exhibit 1024
`Page 1
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`
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF FLORIDA
`MIAMI DIVISION
`
`Case No. 1:20-cv-24342-RNS
`
`
`
`
`
`
`
`PAYRANGE, INC.
`
`
`
`
`
`
`Plaintiff,
`
`v.
`
`KIOSOFT TECHNOLOGIES, LLC and
`TECHTREX, INC.,
`
` Defendants.
`
`
`
`
`
`
`
`
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`
` )
`)
`)
`
`
`
`DEFENDANTS’ SUPPLEMENTAL NOTICE OF PENDING, REFILED, RELATED, OR
`SIMILAR ACTIONS AND AMENDED FINTIV STIPULATION
`
`Pursuant to Local Rule 3.8, Defendants (“KioSoft” or “Defendants”) hereby supplement their
`
`prior Notice (ECF No. 36) to advise the Court that the Patent Trial and Appeal Board (“PTAB”)
`
`instituted for trial the Petition for Post-Grant Review (“Petition”) against Plaintiff PayRange, Inc.’s
`
`alleged U.S. Patent Number 10,719,833. ECF No. 36 reporting PTAB Petition No. PGR2021-00071.
`
`After reviewing KioSoft’s Petition, Plaintiff’s Preliminary Response, and the evidence submitted to
`
`the PTAB, the PTAB, yesterday, “determine[d] that [KioSoft] has demonstrated that, if unrebutted,
`
`it is more likely than not that at least one of the claims challenged in the Petition is unpatentable” and,
`
`accordingly, the PTAB “institute[d] a post-grant review of all challenged claims based upon all
`
`grounds raised in the Petition.” Exhibit 1, KioSoft Technologies, LLC and TechTrex, Inc. v.
`
`PayRange, Inc., PGR2021-00077, Paper 8, Decision Granting Institution of Post-Grant Review
`
`(P.T.A.B. Oct. 28, 2021).
`
`KioSoft confirms that KioSoft’s petitions for post-grant review of Plaintiff’s alleged U.S.
`
`Patent Number 10,891,608 (the “’608 Patent”) (Petition No. PGR2021-00084 filed May 27, 2021)
`
`Petitioner Kiosoft Exhibit 1024
`Page 1
`
`
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`Case 1:20-cv-24342-RNS Document 68 Entered on FLSD Docket 10/29/2021 Page 2 of 4
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`and U.S. Patent Number 10,891,614 (the “’614 Patent”) (Petition No. PGR2021-00093 filed June 10,
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`2021) remain pending. It is expected that the PTAB’s decisions on both Petitions will be issued on
`
`or before December 21, 2021.
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`With regard to the stipulation that KioSoft previously made according to the holding in Apple
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`v. Fintiv, IPR2020-00019, 2020 WL 2126495, at *5 (P.T.A.B. Mar. 20, 2020) with regard to KioSoft’s
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`petitions for post-grant review of Plaintiff’s alleged ’608 Patent and ’614 Patent (see Defendants’
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`Notice of Pending, Refiled, Related or Similar Actions and Fintiv Stipulation, ECF No. 57), KioSoft
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`writes to amend and supersede that stipulation. Specifically, Defendants state that, in the event of
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`institution of the Post-Grant Review proceeding concerning the ’608 Patent by the PTAB, Defendants
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`will not rely on any ground (including prior art) that was raised or that reasonably could have been
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`raised in the ’608 Patent Petition for Post-Grant Review in the present litigation relating to the validity
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`of the ’608 Patent. In the event of institution of the Post-Grant Review proceeding concerning the
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`’614 Patent by the PTAB, Defendants will not rely on any ground (including prior art) that was raised
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`or that reasonably could have been raised in the ’614 Patent Petition for Post-Grant Review in the
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`present litigation relating to the validity of the ’614 Patent.
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`Petitioner Kiosoft Exhibit 1024
`Page 2
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`
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`Case 1:20-cv-24342-RNS Document 68 Entered on FLSD Docket 10/29/2021 Page 3 of 4
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`Dated: October 29, 2021
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`
`Respectfully submitted,
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`
`
`
`Holiday W. Banta, pro hac vice
`Ice Miller LLP
`One American Square, Suite 2900
`Indianapolis, IN 46282
`Phone: 317-236-5882
`Facsimile: 317-592-4226
`H.Banta@icemiller.com
`
`Christian H. Robertson II, pro hac vice
`Ice Miller LLP
`200 Massachusetts Ave. NW, Suite 400
`Washington, DC 20001
`Phone: 202-807-4021
`Facsimile: 202-807-4022
`Christian.Robertson@icemiller.com
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`
`
`/s/ John A. Camp
`John A. Camp
`Florida Bar Number 848115
`Ice Miller LLP
`7300 Biscayne Boulevard, Suite 200
`Miami, Florida 33138
`Phone: 305-341-9055
`John.Camp@icemiller.com
`
`T. Earl LeVere, pro hac vice
`Ice Miller LLP
`250 West Street, Suite 700
`Columbus, OH 43215
`Phone: 614-462-1095
`Facsimile: 614-228-4847
`Earl.LeVere@icemiller.com
`
`Thomas A. Rammer, pro hac vice
`Ice Miller LLP
`200 W. Madison Street, Suite 3500
`Chicago, IL 60606
`Phone: 312-705-6016
`Facsimile: 312-705-6017
`Tom.Rammer@icemiller.com
`
`
`Attorneys for Defendants KioSoft Technologies, LLC and TechTrex, Inc.
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`Petitioner Kiosoft Exhibit 1024
`Page 3
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`Case 1:20-cv-24342-RNS Document 68 Entered on FLSD Docket 10/29/2021 Page 4 of 4
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`
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`CERTIFICATE OF SERVICE
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`I, John Camp, do further certify that I have caused a true and correct copy of Defendants’
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`Supplemental Notice of Pending, Refiled, Related or Similar Actions and Amended Fintiv Stipulation
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`to be filed through the Court’s ECF system, which system has sent notice to all counsel of record.
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`This, the 29th day of October, 2021.
`
`
`
`/s/ John A. Camp
`John A. Camp
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`
`
`
`
`SERVICE LIST
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`PayRange Inc. v. KioSoft Technologies, LLC and TechTrex, Inc.
`Case No.: 1:20-cv-24342-RNS
`United States District Court, Southern District of Florida
`
`
`Joseph R. Englander
`FOWLER WHITE BURNETT
`1395 Brickell Avenue, 14th Floor
`Miami, Florida 33131
`Telephone: (305) 789-9259
`Facsimile: (305) 728-7559
`Email: jenglander@fowler-white.com
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`Counsel for Plaintiff PayRange Inc.
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`VIA CM/ECF
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`
`
`James C. Yoon (PHV)
`Ryan R. Smith (PHV)
`Jamie Y. Otto (PHV)
`George Edward Powell III (PHV)
`Neil N. Desai (PHV)
`Taylor E. Pfeifer (Florida Bar No. 1028557)
`WILSON SONSINI GOODRICH & ROSATI
`Professional Corporation
`650 Page Mill Road
`Palo Alto, CA 94304-1050
`Telephone: (650) 493-9300
`Facsimile: (650) 565-5100
`Email: jyoon@wsgr.com, rsmith@wsgr.com,
`jotto@wsgr.com, epowell@wsgr.com,
`ndesai@wsgr.com, tpfeifer@wsgr.com
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`VIA CM/ECF
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`Petitioner Kiosoft Exhibit 1024
`Page 4
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`
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