throbber
Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 9
`Date: December 20, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CoO. LTD.,
`Petitioner,
`V.
`
`WEPAY GLOBAL PAYMENTS LLC,
`Patent Owner.
`
`PGR2022-00045
`Patent D930,702 S
`
`Before GRACE KARAFFA OBERMANN,SCOTT A. DANIELS,and
`MITCHELL G. WEATHERLY,Administrative Patent Judges.
`
`Per curiam.
`
`DECISION
`Granting Institution of Post-Grant Review
`35 USC. § 324
`
`Granting Motion for Joinder
`35 U.S.C. § 325(c); 37 C.F.R. § 42.222
`
`

`

`PGR2022-00045
`Patent No. D930,702 S
`
`I.
`
`INTRODUCTION
`
`A.
`
`BACKGROUND
`
`Samsung Electronics Co., Ltd. (“Petitioner”) filed a Petition requesting post-
`
`grant review of the sole claim of U.S. Patent No. D930,702 S (Ex. 1001, “the ’702
`
`patent’). Paper | (“Pet.”). The ’702 patentalso is the subject of PGR2022-00031
`
`filed by Early Warning Services, LLC. See Early Warning Services, LLC v. WePay
`
`Global Payments LLC, PGR2022-00031, Paper 1 (PTAB Apr. 5, 2022) (“PGR
`
`031’). On October 7, 2022, the Board entered a decision to institute review in PGR
`
`031. PGR 031, Paper 22. Petitioner timely filed a Motion for Joinder within one-
`
`month ofthe institution decision in PGR 031. See Paper 8 (“Mot.”’). WePay Global
`
`Payments LLC (“Patent Owner’), in this case, did notfile a preliminary response
`
`or an opposition to Petitioner’s Motion for Joinder.!
`
`For reasons discussed below, weinstitute a post-grant review of the
`
`challenged claims and grant Petitioner’s Motion for Joinder.
`
`B.|RELATED PROCEEDINGS
`
`In addition to PGR 031, Petitioner identifies twelve (12) district court cases
`
`as related to this proceeding and involving the ’702 patent (Mot. 3-4): (1) WePay
`
`Global Payments LLC v. Samsung Electronics Co., Ltd. et al., 6:2021-cv-01095
`
`(W.D. Tex.); (2) WePay Global Payments LLC v. Amazon.com, Inc., No. 1:2022-
`
`cv-01061 (N.D. Ill.); (38) WePay Global Payments LLC v. Bank ofAmerica, N.A.,
`
`1:2022-cv-00105 (N.D. IIL.); (4) WePay Global Payments LLC v. JPMorgan Chase
`
`Bank, N.A., 1:2022-cv- 00103 (N.D. IIL); (5) WePay Global Payments LLC vy.
`
`McDonald's Corporation, 1:2022-cv-01064 (N.D. Ill); (6) WePay Global
`
`' Patent Ownerfiled a preliminary response and sur-reply in PGR 031. See
`PGR 031, Papers 12, 17.
`
`2
`
`

`

`PGR2022-00045
`Patent No. D930,702 S
`
`Payments LLC vy. PayPal, Inc., 6:2021-cv-01094 (W.D. Tex.); (7) WePay Global
`
`Payments LLC v. PNC Bank, N.A., 2:22-cv-00592 (W.D. Pa.); (8) WePay Global
`
`Payments LLC v. PNC Bank, N.A., 1:2021-cv-05052 (N.D. IIL.); (9) WePay Global
`
`Payments LLC vy. Apple Inc., No. 6:2022-cv-00223 (W.D. Tex.) (dismissed); (10)
`
`WePay Global Payments LLC v. Tesla, Inc., 6:2022-cv-00224 (W.D. Tex.); (11)
`
`WePay Global Payments LLC vy. Wal-Mart Stores, Inc., 1:2022-cv-01062 (N.D.
`
`Ill.) (dismissed); and (12) WePay Global Payments LLC vy. Wells Fargo Bank,
`
`N.A., 6:22-cv-00363 (W.D. Tex.).
`
`C.—REAL PARTIES-IN-INTEREST
`
`Petitioner identifies Samsung Electronics Co., Ltd. and Samsung Electronics
`
`AmericaInc. as real parties-in-interest. Pet. 9.
`
`Early Warning Services, LLC identifies itself as a real party-in-interest in its
`
`petition. PGR 031, Paper 1 at 7. Early Warning Services further identifies “Bank of
`
`America, N.A., JPMorgan Chase Bank, N.A., and PNC Bank, N.A.” as customers
`
`of Early Warning Services. /d.
`
`Patent Owneridentifies WePay Global Payments LLC as“the real party in
`
`interest” and ownerof the ’702 patent. Paper 4, 1 (Patent Owner’s Mandatory
`
`Notices).
`
`D.
`
`OVERVIEW OF THE ’702 PATENT AND ASSERTED GROUNDS OF
`UNPATENTABILITY
`
`The °702 patent claims “[t]he ornamental design for a display screen portion
`
`with animated graphical user interface, as shown and described.” Ex 1001, code
`
`(57). We reproduce below Figures 1 and 2 of the *702 patent, which make up the
`
`first claimed embodiment./d. at Figs. 1, 2.
`
`

`

`PGR2022-00045
`Patent No. D930,702 S
`
`|
`
`”FIGURE 1 -
`
`FIGURE2
`
`Ex. 1001, Figs. 1, 2. Figure 1 displaysa first broken line square within the lower
`
`half of a large broken line rectangle; within the top two and bottom left corners of
`
`the square are smaller broken line squares, and inside the smaller squaresare solid
`
`black squares. /d. at Fig. 1. Immediately above the first square is broken line text
`
`“$0.00,” and below the first square is broken line text that reads, from left to right,
`
`“Send,” “Request,” and “Split.” /d. Figure 2 includes the samefirst square and
`
`rectangle, but the first square is empty and the broken line text below it reads
`
`“Cancel.” /d. at Fig. 2. The “$0.00”text of Figure 2 is in the upperhalf of the
`
`rectangle andin solid lines, instead of “$0.00” being located immediately above
`
`the square and in brokenlines. /d. Reproduced below are Figures 3-5 of the ’702
`
`patent, which make up the second claimed embodiment. /d. at Figs. 3-5.
`
`oe $0.00
`
`FIGURE 3
`
`FIGURE 4
`
`FIGURE 5
`
`

`

`PGR2022-00045
`Patent No. D930,702 S
`
`Ex. 1001, Figs. 3, 4, 5. Figures 3 and 5 are identical to Figures 1 and 2,
`
`respectively. /d. at Figs. 3, 5. Figure 4 displays the same rectangle but includes a
`
`broken line across the top ofit. /d. at Fig. 4. In the upper half of the rectangle but
`
`underthe broken line, there are two rowsof broken line circles. /d. Within the
`
`lower half of the rectangle, there 1s a column offour circles on the left side. /d.
`
`The broken lines represent unclaimed matter, and “[t]he process or period in
`
`which one imagetransitions to another image forms nopart of the claimed design.”
`
`Id. at Description.
`
`Wereproducethe asserted groundsin the following chart.
`
`
`
`Reddy, SGOR*
`
`103
`
`103
`
`Reddy
`
`? The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat.
`284 (2011), amended 35 U.S.C. §§ 102 and 103, effective March 16, 2013. Given
`that the application from which the *702 patent issued wasfiled after this date,
`the current versions of §§ 102 and 103 apply. Neither party directs us to
`information indicating that the result would change based on whichversion of the
`provisions is applied in this proceeding. Noris there any dispute, on this record,
`that the ’702 patentis eligible for post-grant review.
`3U.S. Patent Application Pub. No. 2018/0260806 A1, published Sept. 13, 2018
`(Ex. 1004).
`* Screenshots of YouTube video, “SGQR—Singapore Quick Response Code,”
`https://www.youtube.com/watch?v=1 VmJm9imBp4 (Ex. 1005). Petitioner asserts
`a publication date of September 16, 2018. Pet. 25.
`> Screenshots of YouTubevideo, “GrabPay Standalone,”
`https://www.youtube.com/watch?v=bc84snlxTRce(Ex. 1006). Petitioner asserts a
`publication date of March 20, 2020. Pet. 32.
`5
`
`

`

`PGR2022-00045
`Patent No. D930,702 S
`
` 1
`
`Digital Debit Video,°
`Digital Debit Patent’
`
`Pet. 13.8
`
`II.
`
`ANALYSIS
`
`Before deciding joinder questions, the Board first determines whether the
`
`petition “warrants the institution of a post-grant review under section 324.”
`
`See 35 U.S.C. §§ 325(c), 324(a) (stating that the petition “would demonstrate that
`
`it is more likely than notthat at least 1 of the claims challengedin the petition is
`
`unpatentable”); see also Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d
`
`1321, 1332 (Fed. Cir. 2020) (interpreting joinder requirements in inter partes
`
`review under 35 U.S.C. §§ 314(a), 315(c)). When a secondpetition is a “me-too”
`
`or “copycat”petition, the institution analysis may include a General Plastic
`
`analysis. See Apple, Inc. v. Uniloc 2017 LLC, IPR2020-00854, Paper 9 (PTAB Oct.
`
`28, 2020) (designated as precedential on December 4, 2020) (“Uniloc’’); General
`
`Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, 1PR2016-01357, Paper 19,
`
`at 16 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.1).
`
`° Screenshots of YouTubevideo, “Digital Debit App Preview,”
`https://www.youtube.com/watch?v=tDqvQFJB8GA (Ex. 1007). Petitioner asserts
`a publication date of November 20, 2017. Pet. 39.
`TUS. Patent No. D857,054 S, issued August 20, 2019 (Ex. 1008).
`8 Although the Petition sets forth four numbered grounds, two distinct groundsare
`embedded within Petitioner’s second-numbered ground. See Pet. 13 (asserting, in
`the second-numbered ground, obviousness over Reddy “aloneor in view of”
`SGQR).
`
`6
`
`

`

`PGR2022-00045
`Patent No. D930,702 S
`
`A.—DECISION TO INSTITUTE POST-GRANT REVIEW
`
`Petitioner contendsthat the “Petition is materially the same as the petition
`
`filed in the 031 proceeding.” Mot. 1. Petitioner also asserts that the Petition
`
`“challenge[s] the same claim, on the same grounds, andrel[ies] on the same prior
`
`art and evidence, including an identical declaration from the same expert.” /d. Our
`
`review of the petitions and the evidence that supports both petitions confirms
`
`Petitioner’s representations. Compare Pet. 12-86, with PGR 031, Paper 1 at 10-88.
`
`For the samereasonsdiscussed in our Decision on Institution in PGR 031, we find
`
`Petitioner has demonstrated that it is more likely than not that the challenged claim
`
`of the ’702 patent is unpatentable. See PGR 031, Paper 22. Accordingly, we
`
`determine that the Petition warrants institution of post-grant review under 35
`
`US.C. § 324.
`
`B.|GENERAL PLASTIC ANALYSIS
`
`The Board’s decision in General Plastic articulates seven non-exhaustive
`
`factors to consider when deciding whether to discretionarily deny a petition, which
`
`challenges a patent previously challenged before the Board. These factors include:
`
`1. whether the same petitioner previously filed a petition directed to
`the same claimsof the same patent;
`2. whetherat the time offiling of the first petition the petitioner knew
`of the prior art asserted in the secondpetition or should have known
`ofit;
`3. whetherat the time of filing of the second petition the petitioner
`already received the patent owner’s preliminary responseto thefirst
`petition or received the Board’s decision on whetherto institute
`review in thefirst petition;
`4. the length of time that elapsed between the time the petitioner
`learned of the prior art asserted in the second petition andthe filing of
`the secondpetition;
`
`

`

`PGR2022-00045
`Patent No. D930,702 S
`
`5. whether the petitioner provides adequate explanation for the time
`elapsed between the filings of multiple petitions directed to the same
`claims of the same patent;
`6. the finite resources of the Board; and
`7. the requirement under 35 U.S.C. § 316(a)(11) to issueafinal
`determination not later than 1 year after the date on which the Director
`notices institution of review.
`
`General Plastic, Paper 19 at 9-10 (footnotes omitted).
`
`Despite Petitioner’s arguments otherwise, the Board finds it necessary to
`
`analyze the General Plastic factors under Uniloc. Mot. 9-10; Uniloc, Paper 9 at 5
`
`(PTAB Oct. 28, 2020).
`
`Factor 1: whether the same petitioner previouslyfiled a petition
`directed to the same claims of the same patent
`
`Petitioner has not previously challenged the ’702 patent. Mot. 10-11. On
`
`this record, moreover, no evidence has been presented that Petitioner has a
`
`significant relationship with the petitioner in PGR 031. See Valve Corp. v. Elec.
`
`Scripting Prods., Inc., 1PR2019-00062, Paper 11 at 9-10 (PTAB Apr.2, 2019)
`
`(precedential). Thus, the Board finds that the samepetitioner has not previously
`
`filed a petition related to the *702 patent, which weighsagainst discretionary
`
`denial.
`
`Factor 2: whetheratthe time offiling ofthe first petition the
`petitioner knew of the prior art asserted in the secondpetition or
`should have known ofit
`
`Becausethe petitioners are not the same, this factor is not applicable or, at
`
`minimum, weighs against discretionary denial. To the extent the factor is
`
`applicable, the asserted art in both petitions is the same. Compare Pet. 12-86, with
`
`PGR 031, Paper 1 at 10-88. The instant Petition “is a ‘copy’ of” the petition filed
`
`in PGR 031. Mot. 11. Thus, these facts do not raise concerns of a second petitioner
`
`8
`
`

`

`PGR2022-00045
`Patent No. D930,702 S
`
`using a first petition as a roadmap. This factor is neutral or weighsslightly against
`
`discretionary denial.
`
`Factor 3: whetheratthe time offiling of the secondpetition the
`petitioner already received the patent owner’s preliminary response
`to the first petition or received the Board's decision on whetherto
`institute review in the first petition
`
`Unlike Section 315(c), which applies to inter partes review, Section 325(c),
`
`applicable to this post-grant review proceeding, does not discuss preliminary
`
`responses in the context ofjoinder. Even so, the instant Petition wasfiled on
`
`June 9, 2022, approximately one month before Patent Ownerfiled a preliminary
`
`response in PGR 031. Pet. 88; PGR 031, Paper 12 (filed July 14, 2022). The
`
`Petitions are substantively identical; therefore, this is not an instance where
`
`Petitioner could have benefited from arguments madein a preliminary response or
`
`an institution decision. This factor weighs against discretionary denial.
`
`Factors 4 & 5: the length of time that elapsed between the time the
`petitioner learned ofthe prior art asserted in the secondpetition and
`the filing ofthe secondpetition, and the explanation ofthe time
`elapsed
`
`Petitioner argues that these factors are inapplicable because Petitioner would
`
`take an “understudy role” in PGR 031. Mot. 12. The Board disagrees. These
`
`factors relate to the timing of Petitioner’s discovery of the asserted prior art and
`
`filing of the Petition, not the level of involvement Petitioner will haveif the
`
`proceedings are joined. Petitioner does not otherwise address these factors. /d.
`
`Although the decision in Uniloc informsthat a petitioner’s failure to
`
`adequately address these factors may weigh in favor of discretionary denial, this
`
`case is distinguishable because Petitioner has not previously filed a petition
`
`challenging the validity of the *702 patent claim. See, e.g., Uniloc, Paper 9 at 11.
`
`

`

`PGR2022-00045
`Patent No. D930,702 S
`
`ThePetition is substantively the same as the petition in PGR 031 and includes
`
`notice of Petitioner’s intention to file the joinder motion. See Pet. 1; Mot. 1-2. This
`
`factor is neutral given Petitioner’s willingness “to proceed solely on the grounds,
`
`evidence, and arguments advanced, or that will be advanced, in’ PGR 031. Mot. 1—
`
`2.
`
`Factor 6: the finite resources of the Board
`
`The Board finds this factor to weigh against discretionary denial because the
`
`petitions are identical and deciding them together would be a moreeffective use of
`
`the Board’s resources.
`
`Factor 7: the requirement under 35 U.S.C. § 316(a)(1 1) to issue a
`final determination not later than I year after the date on which the
`Director notices institution ofreview.
`
`The Board sees no reason whyinstitution in this case would affect the
`
`Board’s ability to issue a decision within one yearof the institution date of
`
`PGR 031. Petitioner has not sought to introduce a declaration of an expert different
`
`from the declaration submitted in support of the petition in PGR 031, and avers,
`
`moreover, that it “will not seek additional depositions or deposition time” should
`
`this proceeding be joined with PGR 031. Mot. 2; see Ex. 1002 (Declaration of
`
`Gonzalo R. Arce, Ph.D., as filed in PGR 031). Accordingly, at this juncture, we
`
`agree with Petitioner that “the proposed joinder will neither unduly complicate”
`
`PGR 031 “nor delay its schedule.” Mot. 2.
`
`In any event, the one-year statutory deadline for a final written decision
`
`provided under Section 326(a)(11) may be adjusted in the case ofjoinder under
`
`Section 325(c). 35 U.S.C. § 326(a)(11). The Board may also adjust the time period
`
`in which Patent Owner’s Responseis due. See 37 C.F.R. § 42.220. Accordingly,
`
`this factor weighs against discretionary denial.
`
`10
`
`

`

`PGR2022-00045
`Patent No. D930,702 S
`
`Conclusion on the General Plastic Factors
`
`Basedon the particular facts of this proceeding, we concludethat the
`
`General Plastic factors do not weigh in favor of exercising discretion to deny
`
`institution.
`
`C.|MOTION FOR JOINDER
`
`Joinder in post-grant review is governed by 35 U.S.C. § 325(c), which
`
`provides:
`
`(c) JOINDER.—If more than | petition for a post-grant review under
`this chapter is properly filed against the same patent and the Director
`determines that more than 1 of these petitions warrants the institution
`of a post-grant review under section 324, the Director may consolidate
`such reviewsinto a single post-grant review.
`
`A motion for joinder must be filed “no later than one month after the institution
`
`date of any post-grant review for which joinderis requested.” 37 C.F.R.
`
`§ 42.222(b). Petitioner timely filed the Motion for Joinder on October 28, 2022,
`
`within one month of the Decision of Institution in PGR 031. See Mot. 14;
`
`PGR 031, Paper 22. The Petition indicates Petitioner’s intent to file the Motion for
`
`Joinder. See Pet. 1. The Petition is substantively identical to the petition in
`
`PGR 031 and, accordingly, presents no new grounds. Mot. 6-8. Because Petitioner
`
`seeks only to join the first proceeding as a party, and makes no arguments inits
`
`Petition that differ from those already being addressed in PGR 031, wegrant the
`
`Motion for Joinder. In so doing, we take account of Petitioner’s assertions that
`
`joinder will not impact the trial schedule because there are no new groundsand,
`
`furthermore, Petitioner “consents to any trial schedule adopted in” PGR 031.
`
`Mot. 7-8. The Board agrees that joinder should not impact the trial schedule.
`
`Petitioner also asserts that joinder will not add to the complexity of briefing
`
`or discovery. While accepting an “‘understudy’ role,” Petitioner agrees that, unless
`
`11
`
`

`

`PGR2022-00045
`Patent No. D930,702 S
`
`Early Warning Servicesis no longer a party in PGR 031, Petitioner will 1) join
`
`Early Warning Services’ filings unlessit solely concerns Petitioner; 2) not raise
`
`any new grounds or arguments; 3) be bound by any discovery agreements; and 4)
`
`not seek additional discovery beyondthat permitted in 37 C.F.R. § 42.53.? Mot. 8—
`
`9. In view of those concessions, we find that joinder would not add to the
`
`complexity of briefing or discovery.
`
`Patent Ownerhasfiled two mandatory notices and a powerof attorney in
`
`this proceeding. See Papers 4, 5, 6. The optional preliminary response wasdue in
`
`this proceeding on September 22, 2022, three-monthsafter the Petition’s accorded
`
`filing date. See 35 U.S.C. § 323,37 C.F.R. § 42.207. Although Patent Owner has
`
`not substantively respondedto the instant Petition or Motion for Joinder, Patent
`
`Ownerdid, however,file a preliminary response and sur-reply in PGR 031. See
`
`PGR 031, Papers 12, 17. We take note that Patent Owner’s lead counsel in PGR
`
`031, which is the same lead counsel identified in the instant proceeding, has sought
`
`to withdraw from representation in PGR 031. See PGR 031, Paper 27 (pending
`
`motion to withdraw); Ex. 1089 (transcript of teleconference explaining the reasons
`
`for counsel’s motion to withdraw). On this record, we are directed to no reason
`
`why the pendency of lead counsel’s motion to withdraw in PGR 031 tips the scales
`
`against a grant of the request for joinder.
`
`The Boardfinds that consolidation of these proceedings should simplify the
`
`post-grant review process for the Board and the parties, including Patent Owner.
`
`Instead of responding in multiple proceedings that involve essentially the same
`
`petitions, joinder would allow both Petitioners and Patent Owner to focus on one
`
`proceeding.
`
`” In the joined proceeding, Petitioner similarly shall be bound by the provisions of
`37 C.F.R. § 42.224.
`
`12
`
`

`

`PGR2022-00045
`Patent No. D930,702 S
`
`Thus, wefind that joinder is warranted under 35 U.S.C. § 325(c). In
`
`reaching that decision, the Board recognizes that Patent Owner’s lack of
`
`meaningful communication with its counsel may explain why Patent Ownerdid
`
`not file a response to Petitioner’s Motion for Joinder or the instant Petition. See
`
`PGR 031, Ex. 1089, 6:7—-14. However, even if Patent Owner had responded to
`
`those papers in the instant proceeding, joinder would be warranted for the reasons
`
`discussed above.
`
`Accordingly, we grant Petitioner’s Motion for Joinder.
`
`IN. ORDER
`
`It is
`
`ORDEREDthat, pursuant to 35 U.S.C. § 324, we institute a post-grant
`
`review of the 702 patent claim based on the groundsraised in the Petition;
`
`FURTHER ORDEREDthat the Motion for Joinder with PGR2022-00031 is
`
`granted, and Petitioner is joined as a petitioner to PGR2022-00031;
`
`FURTHER ORDEREDthat Petitioner’s role shall be limited as stated by
`
`Petitioner in the Motion for Joinder;
`
`FURTHER ORDEREDthat the case caption in PGR2022-00031 shall be
`
`changedto reflect joinder of Samsung, Electronics Co., Ltd. as a petitioner in
`
`accordance with the attached example;
`
`FURTHER ORDEREDthat a copy of this Decision shall be entered into the
`
`record of PGR2022-00031.
`
`13
`
`

`

`PGR2022-00045
`Patent No. D930,702 S
`
`FOR PETITIONER:
`
`Eliot D. Williams
`Neil Sirota
`David Tobin
`Boyang Zhang
`BAKER BOTTS L.L.P
`eliot.williams@bakerbotts.com
`neil.sirota@bakerbotts.com
`david.tobin@bakerbotts.com
`boyang.zhang@bakerbotts.com
`
`Justin Krieger
`Darin Gibby
`Michael Bertelson
`KILPATRICK TOWNSEND & STOCKTON LLP
`jkrieger@kilpatricktownsend.com
`dgibby@kilpatricktownsend.com
`mbertelson@kilpatricktownsend.com
`
`FOR PATENT OWNER:
`
`Henry Ohanian
`OHANIANIP
`artoush@ohanian-iplaw.com
`
`John Biggers
`BIGGERS LAW
`john@biggerslaw.com
`
`14
`
`

`

`PGR2022-00045
`Patent No. D930,702 S
`
`[Example Case Caption]
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`EARLY WARNING SERVICES, LLC, and SAMSUNG
`ELECTRONICS Co., LTD.,
`Petitioner,
`V.
`
`WEPAY GLOBAL PAYMENTS LLC,
`Patent Owner.
`
`PGR2022-0003 1
`PGR2022-00045
`Patent D930,702 S
`
`15
`
`

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