throbber
Case 6:21-cv-01095-ADA Document 19 Filed 04/07/22 Page 1 of 47
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`WEPAY GLOBAL PAYMENTS LLC,
`
`Case No.: 6:21-cv-01095
`
`Plaintiff,
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD.,
`and SAMSUNG ELECTRONICS
`AMERICA INC.,
`
`Defendant.
`
`JURY TRIAL DEMANDED
`
`
`DEFENDANTS’ ANSWER AND COUNTERCLAIMS
`
`Defendants Samsung Electronics Co., Ltd. (“SEC”) and Samsung Electronics America Inc.
`
`(“SEA”) (collectively, “Defendants” or “Samsung Electronics”) hereby file their Answer and
`
`Counterclaims to the Complaint for Patent Infringement (D.I. 1, “Complaint”) filed by Plaintiff
`
`Wepay Global Payments LLC (“Plaintiff” or “Wepay”).
`
`DEFENDANTS’ ANSWER TO PLAINTIFF’S COMPLAINT
`
`Parties
`
`1.
`
`Defendants lack knowledge or information sufficient to form a belief about the truth
`
`of the allegations set forth in Paragraph 1 of the Complaint and on that basis, deny the allegations.
`
`2.
`
`Defendants admit that SEC is a corporation of the Republic of Korea and that it has
`
`a place of business at 129, Samsung-ro, Yeongtong-gu, Suwon-si, Gyeonggi-do, 16677, Republic
`
`of Korea. Defendants deny any remaining allegations in Paragraph 2.
`
`3.
`
`4.
`
`Admitted.
`
`Defendants admit that SEA may be served with process at CT Corp. at 1999 Bryan
`
`St., Ste. 900, Dallas, TX 75201. Defendants deny any remaining allegations of Paragraph 4.
`
`Samsung, Exh. 1075, p. 1
`
`

`

`Case 6:21-cv-01095-ADA Document 19 Filed 04/07/22 Page 2 of 47
`
`
`
`Jurisdiction and Venue
`
`5.
`
`Defendants admit that the Court has subject-matter jurisdiction over Wepay’s
`
`claims of alleged patent infringement and deny any remaining allegations in Paragraph 5 of the
`
`Complaint.
`
`6.
`
`Defendants do not challenge the Court’s personal jurisdiction over SEC or SEA for
`
`purposes of this action. Defendants specifically deny that they have engaged in any infringing
`
`activities with respect to the ’702 Patent in this or any judicial district. Defendants deny the
`
`remaining allegations in Paragraph 6 of the Complaint.
`
`7.
`
`The Complaint is mislabeled in that there are two separate paragraphs, each labeled
`
`Paragraph 7. Regarding the first Paragraph 7, Defendants admit that for purposes of this action
`
`only, venue in this Court as to Defendants is proper, but deny that this is a convenient forum under,
`
`among others, the doctrine of forum non conveniens. SEC and SEA each deny that they have any
`
`regular and established place of business in the Western District of Texas. Defendants deny any
`
`remaining allegations in first Paragraph 7 of the Complaint.
`
`The Patent-In-Suit
`
`7.
`
`The Complaint is mislabeled in that there are two separate paragraphs, each labeled
`
`Paragraph 7. Regarding the second Paragraph 7, Defendants admit that United States Patent No.
`
`D930,702 (the “702 patent”) is entitled, “Display screen portion with animated graphical user
`
`interface” and was issued by the U.S. Patent and Trademark Office on September 14, 2021.
`
`Defendants deny the remaining allegations in second Paragraph 7 of the Complaint.
`
`8.
`
`9.
`
`Defendants deny the allegations in Paragraph 8.
`
`Defendants deny the allegations in Paragraph 9.
`
`
`
`2
`
`
`
`Samsung, Exh. 1075, p. 2
`
`

`

`Case 6:21-cv-01095-ADA Document 19 Filed 04/07/22 Page 3 of 47
`
`
`
`10.
`
`Defendants admit that certain Samsung Galaxy products have been imported into
`
`the United States and have been sold and offered for sale in the United States. Defendants deny
`
`the remaining allegations in Paragraph 10.
`
`Count I - Infringement of U.S. Patent No. D857,702 Second Embodiment Claim
`
`11.
`
`Defendants incorporate by reference the preceding paragraphs of this Answer as set
`
`forth fully herein.
`
`12.
`
`Defendants deny the allegations in Paragraph 12.
`
`Damages
`
`13.
`
`14.
`
`Defendants deny the allegations in Paragraph 13.
`
`Defendants deny the allegations in Paragraph 14.
`
`Prayer for Relief
`
`Though the Prayer for Relief in the Complaint is directed at PayPal and not Defendants,
`
`Defendants deny that Plaintiff is entitled to any relief from Defendants.
`
`Demand for Jury Trial
`
`Defendants also demand a trial by jury on all matters and issues triable by a jury.
`
`AFFIRMATIVE DEFENSES AND OTHER DEFENSES
`
`Defendants allege and assert the following defenses in response to the allegations set forth
`
`in the Complaint, undertaking the burden of proof only as to those defenses deemed affirmative
`
`defenses by law, regardless of how such defenses are denominated below. Defendants specifically
`
`reserve all rights to allege additional defenses and counterclaims that become known through its
`
`investigation into Plaintiffs’ allegations during the course of discovery.
`
`Defendants incorporate by reference their responses to the allegations in Paragraphs 1–14
`
`of the Complaint as set forth above as if those responses have been fully set forth here.
`
`
`
`3
`
`
`
`Samsung, Exh. 1075, p. 3
`
`

`

`Case 6:21-cv-01095-ADA Document 19 Filed 04/07/22 Page 4 of 47
`
`
`
`First Defense: Failure to State a Claim
`
`Wepay’s Complaint fails to state a claim upon which relief may be granted.
`
`Second Defense: Non-Infringement
`
`Defendants do not infringe and have not infringed directly or indirectly, either literally or
`
`under the doctrine of equivalents, willfully or in any other manner, and are not liable for
`
`infringement of any valid and enforceable claim of the ’702 Patent.
`
`Third Defense: Invalidity
`
`The claim of the ’702 Patent is invalid for failure to comply with the requirements of Title
`
`35 of the United States Code, including, without limitation, 35 U.S.C. §§ 102, 103, 112, and/or
`
`171.
`
`Fourth Defense: Estoppel and Waiver
`
`Defendants’ claims for relief are barred in whole or in part by prosecution history estoppel
`
`and/or prosecution history disclaimer based on amendments, statements, admissions, omissions,
`
`representations, disclaimers, and/or disavowals made by the applicants during the prosecution of
`
`the patent application resulting in the ’702 Patent and related applications.
`
`Fifth Defense: Limitation on Damages
`
`Defendants’ claims for alleged damages or costs, if any, against Defendants for alleged
`
`infringement of the ’702 Patent are limited by U.S.C. §§ 286, 287, and/or 288.
`
`Under Section 287, Plaintiffs are prohibited from recovering damages for activities alleged
`
`to have occurred before Plaintiffs provided actual notice of activities alleged to infringe with
`
`respect to Defendants’ products or services. Defendants cannot be held liable for the acts alleged
`
`to have been performed before they received actual notice of Plaintiff’s allegations of infringement
`
`of the ’702 Patent.
`
`
`
`4
`
`
`
`Samsung, Exh. 1075, p. 4
`
`

`

`Case 6:21-cv-01095-ADA Document 19 Filed 04/07/22 Page 5 of 47
`
`
`
`Sixth Defense: Unenforceability
`
`The ’702 Patent is unenforceable because of inequitable conduct. Further details
`
`supporting this allegation are pled in the counterclaims, which are incorporated by reference.
`
`Reservation of Additional Defenses
`
`Samsung reserves the right to amend, supplement, and/or assert additional affirmative
`
`defenses which may be developed through discovery in this action.
`
`
`
`
`COUNTERCLAIMS
`
`1.
`
`Pursuant to Rule 13 of the Federal Rules of Civil Procedure, Samsung Electronics
`
`Co., Ltd. (“SEC”) and Samsung Electronics America Inc. (“SEA”) (collectively, “Samsung
`
`Electronics”) assert the following Counterclaims against Wepay Global Payments LLC
`
`(“Wepay”).
`
`Parties
`
`2.
`
`Defendant and Counter-Claimant SEC is a corporation of the Republic of Korea
`
`and that it has a place of business at 129, Samsung-ro, Yeongtong-gu, Suwon-si, Gyeonggi-do,
`
`16677, Republic of Korea.
`
`3.
`
`Defendant and Counter-Claimant SEA is a corporation organized under the laws of
`
`the State of New York, with its principal place of business at 85 Challenger Road, Ridgefield Park,
`
`New Jersey 07660.
`
`4.
`
`Wepay asserts that it is a Delaware limited liability company with its principal
`
`address at 221 N. Broad Street, Suite 3A, Middletown, DE, 19709.
`
`5.
`
`The address at 221 North Broad Street, Suite 3A in Middletown, Delaware 19709
`
`belongs to United States Corporation Agents.
`
`
`
`5
`
`
`
`Samsung, Exh. 1075, p. 5
`
`

`

`Case 6:21-cv-01095-ADA Document 19 Filed 04/07/22 Page 6 of 47
`
`
`
`6.
`
`No employees of Wepay work at 221 North Broad Street, Suite 3A in Middletown,
`
`Delaware 19709.
`
`7.
`
`8.
`
`9.
`
`Wepay does not have any employees.
`
`Wepay has never had any employees.
`
`Wepay is controlled by William Grecia.
`
`10.
`
`On information and belief, William Grecia is the 100% owner of Wepay.
`
`Jurisdiction and Venue
`
`11.
`
`This Court has subject-matter jurisdiction over this action under 28 U.S.C. §§ 1331,
`
`1338(a), 2201, and 2202.
`
`12. Wepay is subject to personal jurisdiction in this judicial district at least because
`
`Wepay has submitted itself to the jurisdiction of this Court by filing the Complaint in this judicial
`
`district.
`
`13.
`
`Venue is proper here as to these Counterclaims under 28 U.S.C. §§ 1391 and 1400
`
`at least because Wepay filed the Complaint in this judicial district.
`
`14.
`
`In its Complaint for patent infringement, Wepay alleges that Samsung Electronics
`
`infringes U.S. Patent No. D930,702 (“the ’702 Patent” or “Asserted Patent”).
`
`15.
`
`The Asserted Patent is not infringed and has not been infringed by Samsung
`
`Electronics, either directly or indirectly.
`
`16.
`
`17.
`
`The Asserted Patent is invalid and unenforceable.
`
`An actual case or controversy exists between Wepay and Samsung Electronics over
`
`the non-infringement, invalidity, and unenforceability of the Asserted Patent.
`
`
`
`6
`
`
`
`Samsung, Exh. 1075, p. 6
`
`

`

`Case 6:21-cv-01095-ADA Document 19 Filed 04/07/22 Page 7 of 47
`
`
`
`I.
`
`FIRST COUNTERCLAIM: DECLARATORY JUDGMENT OF NON-
`INFRINGEMENT OF THE ’702 PATENT
`
`18.
`
`Samsung Electronics incorporates by reference the allegations in paragraphs 1-17
`
`in these Counterclaims as though fully set forth herein.
`
`19.
`
`The pending litigation between Wepay and Samsung Electronics establishes an
`
`actual case or controversy regarding whether Samsung Electronics infringes the claim of the ’702
`
`Patent.
`
`Patent.
`
`20.
`
`Samsung Electronics does not infringe and has not infringed the claim of the ’702
`
`21.
`
`Pursuant to 28 U.S.C. § 2201, Samsung Electronics is entitled to declaratory
`
`judgment that it does not infringe and has not infringed the claim of the ’702 Patent. Exemplary
`
`reasons for non-infringement are set forth below.
`
`22.
`
`The ’702 Patent purports to claim two embodiments. Figures 1 and 2 purport to
`
`claim a “first embodiment,” and Figures 3-5 purport to claim a “second embodiment.”
`
`23.
`
`In the Complaint, Wepay accused Samsung Electronics of infringing the second
`
`embodiment of the ’702 Patent.
`
`24. Wepay has asserted that its claimed second embodiment of the ’702 Patent
`
`“progresses through the sequence of an icon array within the environment of the Figure 3 GUI …,
`
`followed by the functional or non-functional environment of the Figure 4 GUI … and ending with
`
`the ornamental display of a zero-dollar value within the environment of the Figure 5 GUI.”1
`
`25.
`
`Figures 3-5 of the ’702 Patent are shown below:
`
`
`1 Plaintiff Wepay Global Payments LLC’s Opposition to Defendant Samsung’s Motion to
`Dismiss (“Opp. Br.”), D.I. 17, ECF Page No. 11.
`
`
`
`7
`
`
`
`Samsung, Exh. 1075, p. 7
`
`

`

`Case 6:21-cv-01095-ADA Document 19 Filed 04/07/22 Page 8 of 47
`
`
`
`
`
`
`
`26.
`
`Regarding the ’702 Patent, Wepay has stated that “Figure 3 is a simulated QR code,
`
`an executable QR code’s encoded data is not claimed.”2
`
`27.
`
`Regarding the ’702 Patent, Wepay has stated that “Image 4 is a non-claimed
`
`environmental structure.” 3
`
`28.
`
`Regarding the ’702 Patent, Wepay has stated that “Figure 5 includes as part of the
`
`GUI design the symbol $0.00. . . .. Figure 5 includes a design element that is purely ornamental,
`
`communicating to the ordinary observer a symbol of zero value. $0.00 has no function associated
`
`with the symbol” 4
`
`
`2 Opp. Br., D.I. 17, ECF Page No. 14.
`
`3 Opp. Br., D.I. 17, ECF Page No. 14.
`
`4 Opp. Br., D.I. 17, ECF Page No. 14.
`
`
`
`8
`
`
`
`Samsung, Exh. 1075, p. 8
`
`

`

`Case 6:21-cv-01095-ADA Document 19 Filed 04/07/22 Page 9 of 47
`
`
`
`29. Wepay has further stated that “Figure 5 includes a design element that is purely
`
`ornamental, communicating to the ordinary observer a symbol of zero value …. Figure 5 informs
`
`an observer of zero value, and the ’702 Patent claims how to communicate with the ordinary
`
`observer within an animated GUI.”5
`
`30.
`
`Regarding the figures of the ’702 Patent, Wepay has stated: “Figure 3 expressly
`
`disclaims a complete, functional QR code as a part of the claim 1 design. … Again, Wepay accuses
`
`Samsung’s simulated QR code, not a QR code that could be scanned. … Figure 4 could be non-
`
`functional or functional. … Figure 5 claims an ornamental display of a zero value that, by
`
`definition, cannot be acted upon.” 6
`
`31.
`
`Plaintiff’s infringement contentions are constrained against the scope of the prior
`
`art (including that discussed in the Second Counterclaim and Third Counterclaim) and limited to
`
`non-functional elements. See, e.g., Lanard Toys Ltd. v. Goldencorp. LLC, 958 F.3d 1337, 1344
`
`(Fed. Cir. 2020).
`
`32.
`
`Below is an excerpt from Exhibit B to the Complaint, showing a screenshot of the
`
`Samsung Pay app with red annotations added by Plaintiff to identify the allegedly infringing
`
`features regarding Figure 3 of the ’702 Patent:
`
`
`5 Opp. Br., D.I. 17, ECF Page No. 14-15.
`
`6 Opp. Br., D.I. 17, ECF Page No. 15.
`
`
`
`
`
`9
`
`
`
`Samsung, Exh. 1075, p. 9
`
`

`

`Case 6:21-cv-01095-ADA Document 19 Filed 04/07/22 Page 10 of 47
`
`
`
`33.
`
`The “simulated QR code” in Figure 3 of the ’702 Patent depicts three solid squares.
`
`The Samsung Pay QR code identified in Plaintiff’s complaint has three white squares, each within
`
`a rounded solid square.
`
`34.
`
`The “simulated QR code” in Figure 3 of the ’702 Patent is located in the bottom
`
`half of the screen. The Samsung Pay QR code identified in Plaintiff’s complaint is in located in
`
`the top half of the screen.
`
`35.
`
`Below is an excerpt from Exhibit B to the Complaint, showing a screenshot of the
`
`Samsung Pay app with red annotations added by Plaintiff to identify the allegedly infringing
`
`features regarding Figure 5:
`
`36.
`
`The “$0.00” in Figure 5 of the ’702 Patent is relatively large and centered at the top
`
`of the screen. The “$0.00” in the Infringement Contentions is relatively small and positioned in
`
`the middle left portion of the screen.
`
`
`
`
`
`10
`
`
`
`Samsung, Exh. 1075, p. 10
`
`

`

`Case 6:21-cv-01095-ADA Document 19 Filed 04/07/22 Page 11 of 47
`
`
`
`37.
`
`The “$0.00” in Figure 5 of the ’702 Patent stands as isolated text, whereas the
`
`“$0.00” in the Infringement Contentions is embedded within other text, and the display includes
`
`several additional boxes containing information.
`
`II.
`
`SECOND COUNTERCLAIM: DECLARATORY JUDGMENT OF INVALIDITY
`OF THE ’702 PATENT
`
`38.
`
`Samsung Electronics incorporates by reference the allegations in paragraphs 1-37
`
`in these Counterclaims as though fully set forth herein.
`
`39.
`
`The pending litigation between Wepay and Samsung Electronics establishes an
`
`actual case or controversy between them regarding whether the ’702 Patent is invalid.
`
`40.
`
`The asserted claim of the ’702 Patent is invalid at least under 35 U.S.C. §§ 102,
`
`103, 112, and 171.
`
`41.
`
`Pursuant to 28 U.S.C. § 2201, Samsung Electronics is entitled to declaratory
`
`judgment that the ’702 Patent claim is invalid.
`
`A.
`
`42.
`
`Invalidity for Lack of Ornamentality and Lack of Originality
`
`The design patent statute requires that patented designs be “new, original, and
`
`ornamental.” 35 U.S.C. § 171.
`
`43. William Grecia did not invent QR codes.
`
`44. William Grecia did not invent the use of QR codes on mobile devices.
`
`45.
`
`A QR code was and is a standardized, well-known, and universally adopted design
`
`for representing and/or displaying encoded data in a visual, machine-readable form.
`
`
`
`11
`
`
`
`Samsung, Exh. 1075, p. 11
`
`

`

`Case 6:21-cv-01095-ADA Document 19 Filed 04/07/22 Page 12 of 47
`
`
`
`46.
`
`The QR code was invented at least as early as 1994 by a Toyota subsidiary named
`
`Denso Wave to improve upon preexisting designs used to represent encoded data visually (e.g.,
`
`barcodes). See D.I. 8, Ex. 1.7
`
`47.
`
`The function of including three squares in a QR code is to allow QR codes to be
`
`read at high speeds regardless of the of the scanning angle.
`
`48.
`
`For example, Denso Wave describes the feature of three squares in a QR code as
`
`follows:
`
`QR Codes® can be read at high speed regardless of the scanning
`angle. The secret lies in three position detection patterns, which are
`located in each code, enabling stable high-speed reading without
`being affected by the background patterns.
`
`D.I. 8, Ex. 1 at 1.
`
`49. William Grecia did not invent the “$0.00” to convey a zero-dollar value.
`
`50. William Grecia did not invent the “$0.00” to convey a zero-dollar value on mobile
`
`devices.
`
`51.
`
`The use of dollar signs to denote monetary amounts dates back hundreds of years,
`
`as seen in the below photo of a bond signed by George Washington in 1792, the same year the
`
`Coinage Act was passed creating the U.S. dollar. See D.I. 8, Ex. 3 (Museum of American Finance
`
`Website).8
`
`
`7 https://www.densowave.com/en/adcd/fundamental/2dcode/qrc/index.html
`
`8 https://www.moaf.org/exhibits/checks_balances/george-
`washington/washtington_bond#:~:text=This%20bond%2C%20dated%20January%2017
`
`
`
`12
`
`
`
`Samsung, Exh. 1075, p. 12
`
`

`

`Case 6:21-cv-01095-ADA Document 19 Filed 04/07/22 Page 13 of 47
`
`
`
`52.
`
`Displaying zero dollars using a dollar sign ($) and a decimal (.) followed by two
`
`numerical digits (“$0.00”) is a functional representation of a specific amount (i.e., zero) of a
`
`
`
`specific currency (dollars).
`
`53.
`
`Figures 2 and 5 of the ’702 Patent display the “$0.00” in Arial font.
`
`54. William Grecia did not invent the Arial font.
`
`55. William Grecia did not invent the font by which the “$0.00” is displayed in Figures
`
`2 and 5 of the ’702 Patent.
`
`56. William Grecia did not invent displaying a “$0.00” in Arial font.
`
`57. William Grecia did not invent displaying a “$0.00” in Arial font on mobile devices.
`
`58.
`
`The ’702 Patent is invalid because the claimed design, when construed as a whole,
`
`is dictated by the use or purpose of the article and is therefore, not only “primarily functional rather
`
`than ornamental,” it is solely functional. See Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796
`
`F.3d 1312, 1328 (Fed. Cir. 2015).
`
`59.
`
`The ’702 Patent is invalid for not being “original” and not being “ornamental”
`
`under 35 U.S.C. § 171.
`
`
`
`13
`
`
`
`Samsung, Exh. 1075, p. 13
`
`

`

`Case 6:21-cv-01095-ADA Document 19 Filed 04/07/22 Page 14 of 47
`
`
`
`B.
`
`60.
`
`Invalidity for Anticipation and Obviousness Over U.S. Patent No. 11,107,061
`
`Attached as Exhibit 1 is a true and correct copy of U.S. Patent No. 11,107,061. U.S.
`
`Patent No. 11,107,061 was filed March 9, 2018.
`
`61.
`
`U.S. Patent No. 11,107,061 qualifies as prior art to the ’702 Patent under 35 U.S.C.
`
`§ 102(a)(2).
`
`62.
`
`Figures 9 and 10 of U.S. Patent No. 11,107,061 are shown below:
`
`
`
`63.
`
`Figure 9 of U.S. Patent No. 11,107,061 depicts a simulated QR code, including
`
`three squares. The patent further explains at column 8, lines 35-39: “FIG. 9 is an exemplary
`
`screenshot of mobile device scanning a QR Code, according to an embodiment of the present
`
`invention. A mobile device may include a camera feature that takes an image of a QR code 910.”
`
`64.
`
`Figure 9 of U.S. Patent No. 11,107,061 discloses Figure 3 of the ’702 Patent, at
`
`least under Plaintiff’s infringement theories, because it discloses a simulated QR code.
`
`
`
`14
`
`
`
`Samsung, Exh. 1075, p. 14
`
`

`

`Case 6:21-cv-01095-ADA Document 19 Filed 04/07/22 Page 15 of 47
`
`
`
`65.
`
`Figure 10 of U.S. Patent No. 11,107,061 depicts the display of a zero-dollar value
`
`within the environment of the Figure 10 GUI, as shown in the enlarged view of Figure 10 below.
`
`For example, Figure 10 of U.S. Patent No. 11,107,061 displays “$0.00.”
`
`66.
`
`Figure 10 of U.S. Patent No. 11,107,061 discloses Figure 5 of the ’702 Patent, at
`
`least under Plaintiff's infringement theories, because it includes as part of the GUI design the
`
`
`
`symbol $0.00.
`
`67.
`
`To the extent Figure 4 of the ’702 Patent is a claim limitation, U.S. Patent No.
`
`11,107,061 also discloses Figure 4 of the ’702 Patent, at least under Plaintiff’s infringement
`
`theories, because it discloses an intermediate screen with non-claimed environmental structure
`
`(e.g., at step 230).
`
`
`
`15
`
`
`
`
`
`Samsung, Exh. 1075, p. 15
`
`

`

`Case 6:21-cv-01095-ADA Document 19 Filed 04/07/22 Page 16 of 47
`
`
`
`68.
`
`As shown in Figure 2 and described at column 6 lines 48-63 of U.S. Patent No.
`
`11,107,061, “A customer 212, e.g., Card Holder, may scan a merchant QR code, at 224. The
`
`customer may retrieve QR details, at 226. The customer may view or otherwise access QR details
`
`and amount, at 228. The customer may review and/or enter a new amount, at 230, and then make
`
`a payment or other transaction, at 232.”
`
`69.
`
`The purported first embodiment of the ’702 Patent depicted in Figures 1 and 2 is
`
`not patentably distinct from the purported second embodiment of the ’702 Patent depicted in
`
`Figures 3-5.
`
`70.
`
`The claim of the ’702 Patent is anticipated, or at least rendered obvious, over U.S.
`
`Patent No. 11,107,061.
`
`C.
`
`71.
`
`Invalidity for Anticipation and Obviousness Over PayPal Prior Art
`
`A video entitled “How to Reduce PayPal Fees by Using QR Code Payments!” was
`
`published on Youtube at least by July 14, 2020. https://youtu.be/gLw1ZAtq9Zc (hereinafter,
`
`“PayPal QR Code App”).
`
`72.
`
`Screenshots from video of the PayPal QR Code App showing publication on July
`
`14, 2020 are provided below:
`
`
`
`16
`
`
`
`Samsung, Exh. 1075, p. 16
`
`

`

`Case 6:21-cv-01095-ADA Document 19 Filed 04/07/22 Page 17 of 47
`
`
`
`
`
`73.
`
`The PayPal QR Code App and the video demonstration of the App qualify as prior
`
`
`
`art to the ’702 Patent under 35 U.S.C. § 102(a)(1).
`
`74.
`
`The PayPal QR Code App provides a sequence of images, with time stamps
`
`indicated in the caption:
`
`
`
`17
`
`
`
`Samsung, Exh. 1075, p. 17
`
`

`

`Case 6:21-cv-01095-ADA Document 19 Filed 04/07/22 Page 18 of 47
`
`
`
`
`
`
`
`
`
`2:58/5:02
`
`3:00/5:02
`
`3:01/5:02
`
`
`
`75.
`
`As shown above in the left-most image, the PayPal QR Code App depicts a
`
`simulated QR code, including three squares.
`
`76.
`
`The PayPal QR Code App discloses Figure 3 of the ’702 Patent, at least under
`
`Plaintiff’s infringement theories, because it is a simulated QR code.
`
`77.
`
`To the extent Figure 4 of the ’702 Patent is a claim limitation, the PayPal QR Code
`
`App discloses Figure 4 of the ’702 Patent, at least under Plaintiff’s infringement theories, because
`
`it discloses an intermediate screen with non-claimed environmental structure. This can be seen
`
`above in the center image.
`
`78.
`
`As shown above in the right-most image, the PayPal QR Code App depicts the
`
`display of a zero-dollar value within the environment of the GUI, including display of “$0.00.”
`
`
`
`18
`
`
`
`Samsung, Exh. 1075, p. 18
`
`

`

`Case 6:21-cv-01095-ADA Document 19 Filed 04/07/22 Page 19 of 47
`
`
`
`79.
`
`The PayPal QR Code App discloses Figure 5 of the ’702 Patent, at least under
`
`Plaintiff’s infringement theories, because it includes as part of the GUI design the symbol $0.00.
`
`80.
`
`The purported first embodiment of the ’702 Patent depicted in Figures 1 and 2 is
`
`not patentably distinct from the purported second embodiment of the ’702 Patent depicted in
`
`Figures 3-5.
`
`81.
`
`The claim of the ’702 Patent is anticipated, or at least rendered obvious, over the
`
`PayPal QR Code App.
`
`D.
`
`82.
`
`Invalidity for Anticipation and Obviousness Over Visa Prior Art
`
`A video entitled “QR Payments with Visa” was published on Youtube at least by
`
`February 6, 2018. https://youtu.be/djNDc7m9YoI (hereinafter, “Visa QR Code App”).
`
`83.
`
`Screenshots from the Visa QR Code App showing February 6, 2018 are provided
`
`below:
`
`
`
`
`
`19
`
`
`
`Samsung, Exh. 1075, p. 19
`
`

`

`Case 6:21-cv-01095-ADA Document 19 Filed 04/07/22 Page 20 of 47
`
`
`
`84.
`
`The Visa QR Code App and the video demonstration of the App qualify as prior art
`
`to the ’702 Patent at least under 35 U.S.C. § 102(a)(1).
`
`85.
`
`Additional screenshots from the PayPal QR Code App are shown below:
`
`
`
`
`
`
`
`20
`
`
`
`Samsung, Exh. 1075, p. 20
`
`

`

`Case 6:21-cv-01095-ADA Document 19 Filed 04/07/22 Page 21 of 47
`
`
`
`86.
`
`As shown above, the Visa QR Code App depicts a simulated QR code, including
`
`
`
`three squares.
`
`87.
`
`The Visa QR Code App discloses Figure 3 of the ’702 Patent, at least under
`
`Plaintiff’s infringement theories, because it is a simulated QR code.
`
`88.
`
`The Visa QR Code App depicts the display of a zero-dollar value within the
`
`environment of the GUI, including display of “$0.00.”
`
`89.
`
`The Visa QR Code App discloses Figure 5 of the ’702 Patent, at least under
`
`Plaintiff’s infringement theories, because it includes as part of the GUI design the symbol $0.00.
`
`90.
`
`To the extent Figure 4 of the ’702 Patent is a claim limitation, the Visa QR Code
`
`App discloses, or renders obvious, an intermediate screen with non-claimed environmental
`
`structure.
`
`91.
`
`The purported first embodiment of the ’702 Patent depicted in Figures 1 and 2 is
`
`not patentably distinct from the purported second embodiment of the ’702 Patent depicted in
`
`Figures 3-5.
`
`92.
`
`The claim of the ’702 Patent is anticipated, or at least rendered obvious, over the
`
`Visa QR Code App.
`
`
`
`21
`
`
`
`Samsung, Exh. 1075, p. 21
`
`

`

`Case 6:21-cv-01095-ADA Document 19 Filed 04/07/22 Page 22 of 47
`
`
`
`E.
`
`93.
`
`Invalidity for Anticipation and Obviousness Over Other Prior Art
`
`The claim of the ’702 Patent is invalid over other prior art, including prior art from
`
`named inventor and owner of Plaintiff, William Grecia. These allegations are discussed further
`
`below in the Third Counterclaim, the allegations for which are incorporated by reference.
`
`III. THIRD COUNTERCLAIM: DECLARATORY JUDGMENT OF
`UNENFORCEABILITY OF THE ’702 PATENT
`
`94.
`
`Samsung Electronics incorporates by reference the allegations in paragraphs 1-93
`
`in these Counterclaims as though fully set forth herein.
`
`95.
`
`The pending litigation between Wepay and Samsung Electronics establishes an
`
`actual case or controversy between them regarding whether the ’702 Patent is unenforceable.
`
`96.
`
`The ’702 Patent is unenforceable because of inequitable conduct committed by
`
`William Grecia during prosecution of the ’702 Patent.
`
`97.
`
`Pursuant to 28 U.S.C. § 2201, Samsung Electronics is entitled to declaratory
`
`judgment that the ’702 Patent is unenforceable.
`
`A. Mr. Grecia’s Duty of Disclosure to the United States Patent and Trademark
`Office
`
`98.
`
`The patent application that ultimately matured into the ’702 Patent was filed on
`
`September 3, 2020 with the United States Patent and Trademark Office (“USPTO”) as application
`
`no. 29/749,131 (“the ’131 Application”).
`
`99.
`
`The ’131 Application was filed by William Grecia and named William Grecia as
`
`the sole inventor. For example, a screenshot of the Electronic Patent Application Fee Transmittal
`
`for the ’131 Application is shown below:
`
`
`
`22
`
`
`
`Samsung, Exh. 1075, p. 22
`
`

`

`Case 6:21-cv-01095-ADA Document 19 Filed 04/07/22 Page 23 of 47
`
`
`
`
`
`100. William Grecia prosecuted the ’131 Application until it was issued as the ’702
`
`Patent. For example, as stated in a declaration signed by Mr. Grecia in this case, “I prosecuted the
`
`’702 Patent. I am familiar with the approximately 80 prior art references that are part of the
`
`intrinsic record and form the basis on which the examiner ultimately allowed the ’702 Patent.”9
`
`101. As an inventor named in the ’131 Application, William Grecia was an individual
`
`associated with the filing or prosecution of the ’131 Application, within the meaning of 37 C.F.R.
`
`§ 1.56(c)(1).
`
`102. As the person who filed the ’131 Application, William Grecia was an individual
`
`associated with the filing or prosecution of the ’131 Application, within the meaning of 37 C.F.R.
`
`§ 1.56(c)(3).
`
`
`9 D.I. 17-1 (Decl. of Wepay Global Payments LLC) at ¶ 3 (Feb. 28, 2022).
`
`
`
`23
`
`
`
`Samsung, Exh. 1075, p. 23
`
`

`

`Case 6:21-cv-01095-ADA Document 19 Filed 04/07/22 Page 24 of 47
`
`
`
`103. As the person who prosecuted the ’131 Application, William Grecia was an
`
`individual associated with the filing or prosecution of the ’131 Application, within the meaning of
`
`37 C.F.R. § 1.56(c)(3).
`
`104. The USPTO requires: “Each individual associated with the filing and prosecution
`
`of a patent application has a duty of candor and good faith in dealing with the Office, which
`
`includes a duty to disclose to the Office all information known to that individual to be material to
`
`patentability as defined in this section. The duty to disclose information exists with respect to each
`
`pending claim until the claim is cancelled or withdrawn from consideration, or the application
`
`becomes abandoned.” 37 C.F.R. § 1.56(a).
`
`105. William Grecia was an individual associated with the filing and prosecution of the
`
`’131 Application and had a duty to disclose to the USPTO all information known to Mr. Grecia to
`
`be material to the patentability of the ’131 Application.
`
`106. Mr. Grecia did not disclose to the USPTO all information known to him to be
`
`material to the patentability of the ’131 Application.
`
`107. Mr. Grecia intended to deceive the USPTO into issuing the ’131 Application by
`
`withholding material prior art.
`
`108. The ’702 Patent is unenforceable because of inequitable conduct committed by Mr.
`
`Grecia.
`
`B.
`
`The Digital Debit Application and Video Demonstrations of It Were Prior Art
`and Material to Patentability of the ’702 Patent.
`
`109. The ’702 Patent is unenforceable, because William Grecia was aware of prior art
`
`regarding a “Digital Debit Application” and related presentations and video demonstrations of it.
`
`This prior art is dated more than one year before the September 3, 2020 filing date of the ’131
`
`
`
`24
`
`
`
`Samsung, Exh. 1075, p. 24
`
`

`

`Case 6:21-cv-01095-ADA Document 19 Filed 04/07/22 Page 25 of 47
`
`
`
`Application (which matured into the asserted ’702 Patent) and was not disclosed to the USPTO.
`
`The Digital Debit Application and related presentations include:
`
` The Digital Debit Application that was available for download from the Apple App
`Store and Google Play Store;
`
` The Digital Debit Libra Demonstration;
`
` The Digital Debit App Preview; and
`
` The Digital Debit PayPal Video.
`
`110. William Grecia had detailed knowledge of the Digital Debit Application and
`
`continued to reference the Digital Debit Application in blog posts, but he failed to disclose the
`
`above Digital Debit Application references to the USPTO during prosecution of the ’131
`
`Application. The single, most reasonable inference is that Mr. Grecia intended to deceive the
`
`USPTO into issuing the ’131 Application as the ’702 Patent.
`
`111. William Grecia was familiar with all prior art references cited on the cover of the
`
`’702 Patent and personally decided which references to disclose or not disclose to the USPTO.
`
`For example, William Grecia declared, “I am familiar with the approximately 80 prior art
`
`references that are part of the intrinsic record and form the basis on which the examiner ultimately
`
`allowed the ’702 Patent.”10
`
`112. Despite being aware of all the prior art he chose to disclose, Mr. Grecia did not
`
`disclose any references with the level of detail found in the Digital Debit Application, the Digital
`
`Debit Libra Demonstration, the Digital Debit App Preview, and the Digital Debit PayPal Video.
`
`113. Wepay asserts that it “improved on the prior art” because its “animated GUI
`
`progresses through the sequence” of Figures 3-5. However, the references disclosed by William
`
`
`10 D.I. 17-1 (Decl. of Wepay Global Payments LLC) at ¶ 3 (Feb. 28, 2022).
`
`
`
`25
`
`
`
`Samsung, Exh. 1075, p. 25
`
`

`

`Case 6:21-cv-01095-ADA Document 19 Filed 04/07/22 Page 26 of 47
`
`
`
`Grecia to the USPTO during prosecution of the ’131 Application do not depict progressing through
`
`a sequence, starting with a “simulated QR code” and “ending with the or

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket