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`INGENICO INC.,
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`Plaintiff,
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`v.
`IOENGINE, LLC,
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`Defendant.
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`IOENGINE, LLC,
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`Counterclaim Plaintiff,
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`v.
`INGENICO INC.,
`INGENICO CORP., and
`INGENICO GROUP S.A.,
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`Counterclaim Defendants.
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`C.A. No. 18-826-WCB
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`JURY TRIAL DEMANDED
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`INGENICO’S FIRST AMENDED INITIAL INVALIDITY CONTENTIONS
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`Plaintiff and Counterclaim Defendants Ingenico Inc., Ingenico Corp., and Ingenico Group
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`S.A. (collectively, “Ingenico”) hereby provide the following invalidity contentions regarding the
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`asserted claims of U.S. Patent Nos. 8,539,047 (the “’047 Patent”), 9,059,969 (the “’969 Patent”),
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`and 9,774,703 (the “’703 Patent”) (collectively, the “Patents-in-Suit”) pursuant to this Court’s
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`Scheduling Order (D.I. 57). In its March 1, 2019 Initial Claim Charts, IOENGINE asserted
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`claims 1-2, 4, 12, and 25 of the ’047 Patent, claims 2-4 and 7 of the ’969 Patent, and claims 55-
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`57, 61, 100, 104-106, 110-11, and 123 of the ’703 Patent (collectively, “the asserted claims”).
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`RLF1 21107684v.1
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`1
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`Ingenico Inc. v. IOENGINE, LLC
`IPR2019-00879 (US 9,059,969)
`Exhibit 2036
`Page 1 of 7
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`These invalidity contentions reflect Ingenico’s knowledge, thinking, and contentions as
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`of the date of service. Ingenico reserves the right (consistent with its obligations under the
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`Federal Rules of Civil Procedure, the Local Rules of this District, and the Court's scheduling
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`order) to modify, amend, retract, and/or supplement the disclosures found in these contentions as
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`additional evidence and information becomes available or as otherwise. For example, Ingenico
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`reserves the right to further supplement these initial disclosures after subsequent case events,
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`further amended or supplemental infringement contentions, arguments made and positions taken
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`by IOENGINE during fact and expert discovery, and any forthcoming document productions by
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`IOENGINE. Ingenico reserves the right to further supplement these initial disclosures if it
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`becomes aware of additional prior art, becomes aware of additional features of the prior art
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`references cited below, or becomes aware of any other relevant information obtained through
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`discovery or otherwise. Ingenico also reserves the right to modify or further supplement its
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`contentions based on the Court’s construction of the claims.
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`To the extent that IOENGINE in its infringement contentions construe the claim
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`limitations, the same claim scope is relied upon in these invalidity contentions for the purposes
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`of invalidity. Nothing in Ingenico’s disclosures should be regarded as necessarily reflecting the
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`proper interpretation of the claims or an interpretation of the claims Ingenico agrees with or
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`proposes. Ingenico disputes IOENGINE’s apparent claim interpretations and will propose
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`alternative constructions to those proposed by IOENGINE in its initial claim charts at the
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`appropriate time. By providing these contentions, Ingenico is not waiving or limiting its right to
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`make arguments in the future about the proper scope of the claims.
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`RLF1 21107684v.1
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`2
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`Ingenico Inc. v. IOENGINE, LLC
`IPR2019-00879 (US 9,059,969)
`Exhibit 2036
`Page 2 of 7
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`I.
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`IDENTIFICATION OF PRIOR ART: ANTICIPATORY AND OBVIOUSNESS
`REFERENCES (35 U.S.C. §§ 102 AND 103)
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`Based on Ingenico’s investigation to date, Ingenico identifies the following prior art
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`references that either anticipate or render obvious, individually or collectively, the asserted
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`claims.
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`Although Ingenico’s investigation continues, information available to date indicates that
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`each prior art reference disclosed below was at least (1) known or used in this country before the
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`alleged invention of the claimed subject matter of the patents-in-suit, (2) in public use, on sale, or
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`offered for sale in this country more than one year before the effective filing date for the patents-
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`in-suit, or (3) invented and not abandoned, suppressed, or concealed prior to the alleged
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`invention of the patents-in-suit.
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`Much of the art identified in these contentions reflects common knowledge and the state
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`of the art prior to at least one of the respective filing or asserted priority dates of the patents-in
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`suit. As such, the obviousness combinations in these contentions (such as the exemplary
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`contentions in Exhibits A – C) are not intended to be exhaustive, as there are many possible
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`combinations of the disclosed prior art, and the inclusion of certain exemplary combinations does
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`not exclude other combinations. In many instances, where a particular contention calls for
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`combining references, any one of a number of references can be combined.
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`Citations to particular excerpts from the prior art are likewise exemplary and not
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`exhaustive of the evidentiary support for the invalidity of the patents-in-suit contained in and/or
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`concerning a particular piece of prior art. Ingenico may rely on uncited portions of the prior art
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`references, other documents or operational systems, and fact and expert testimony to provide
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`context to aid in understanding the cited portions of the references and/or the prior art reference.
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`RLF1 21107684v.1
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`3
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`Ingenico Inc. v. IOENGINE, LLC
`IPR2019-00879 (US 9,059,969)
`Exhibit 2036
`Page 3 of 7
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`A.
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`’047 Patent
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`Prior Art
`Fuji FinePix6800 Zoom, or FinePix6800Z (the “camera”) as depicted in photos produced at
`INGEN-0073381 and available for inspection at the offices of counsel for Ingenico, and believed
`to be described in at least the following:
`• FujiFilm Software Quick Start Guide (“Software Installation Manual”), published at least as
`early as June 2001 [INGEN-0073383];
`• FujiFilm Digital Camera FinePix 6800Zoom 4800Zoom Brochure (“Camera Brochure”)
`[INGEN-0073715];
`• FujiFilm Digital Camera FinePix6800Zoom Owner’s Manual (“camera manual”) [INGEN-
`0073723];
`• Grotta, Sally Wiener, “4 to 6 Megapixels”, PC Magazine, November 27, 2001 [INGEN-
`0078258];
`• “Editor’s Choice,” American Photo, May/June 2001 [INGEN-0078268];
`• Fujifilm Software Quick Start Guide [INGEN-0078270].
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`Software accompanying the Fuji FinePix6800 Zoom to be loaded onto a PC or Mac (“the
`software”) [INGEN-0073699]
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`US2003/0020813 (Iida), published January 30, 2003 [INGEN-0074076]
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`Apple iPod (“iPod”) as depicted in photos produced at INGEN-0082235, available for inspection
`at the offices of counsel for Ingenico, and believed to be described in at least the following:
`•
`iPod User’s Guide (“User’s Guide) [INGEN-0082236]
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`B.
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`’969 Patent
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`Prior Art
`Fuji FinePix6800 Zoom, or FinePix6800Z (the “camera”) as depicted in photos produced at
`INGEN-0073381 and available for inspection at the offices of counsel for Ingenico, and believed
`to be described in at least the following:
`• FujiFilm Software Quick Start Guide (“Software Installation Manual”), published at least as
`early as June 2001 [INGEN-0073383];
`• FujiFilm Digital Camera FinePix 6800Zoom 4800Zoom Brochure (“Camera Brochure”)
`[INGEN-0073715];
`• FujiFilm Digital Camera FinePix6800Zoom Owner’s Manual (“camera manual”) [INGEN-
`0073723];
`• Grotta, Sally Wiener, “4 to 6 Megapixels”, PC Magazine, November 27, 2001 [INGEN-
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`RLF1 21107684v.1
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`4
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`Ingenico Inc. v. IOENGINE, LLC
`IPR2019-00879 (US 9,059,969)
`Exhibit 2036
`Page 4 of 7
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`Prior Art
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`0078258];
`• “Editor’s Choice,” American Photo, May/June 2001 [INGEN-0078268];
`• Fujifilm Software Quick Start Guide [INGEN-0078270].
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`Software accompanying the Fuji FinePix6800 Zoom to be loaded onto a PC or Mac (“the
`software”) [INGEN-0073699]
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`US2003/0020813 (Iida), published January 30, 2003 [INGEN-0074076]
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`U.S. Patent No. 5,784,461 (Shaffer), issued July 21, 1998 [INGEN-0078076]
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`Ford, Warwick et al., Secure Electronic Commerce, Prentice-Hall, Inc., 1997 [INGEN-0078084,
`INGEN-0078177]
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`Apple iPod (“iPod”) as depicted in photos produced at INGEN-0082235, available for inspection
`at the offices of counsel for Ingenico, and believed to be described in at least the following:
`•
`iPod User’s Guide (“User’s Guide) [INGEN-0082236]
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`C.
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`’703 Patent
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`Prior Art
`Fuji FinePix6800 Zoom, or FinePix6800Z (the “camera”) as depicted in photos produced at
`INGEN-0073381 and available for inspection at the offices of counsel for Ingenico, and believed
`to be described in at least the following:
`• FujiFilm Software Quick Start Guide (“Software Installation Manual”), published at least as
`early as June 2001 [INGEN-0073383];
`• FujiFilm Digital Camera FinePix 6800Zoom 4800Zoom Brochure (“Camera Brochure”)
`[INGEN-0073715];
`• FujiFilm Digital Camera FinePix6800Zoom Owner’s Manual (“camera manual”) [INGEN-
`0073723];
`• Grotta, Sally Wiener, “4 to 6 Megapixels”, PC Magazine, November 27, 2001 [INGEN-
`0078258];
`• “Editor’s Choice,” American Photo, May/June 2001 [INGEN-0078268];
`• Fujifilm Software Quick Start Guide [INGEN-0078270].
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`Software accompanying the Fuji FinePix6800 Zoom to be loaded onto a PC or Mac (“the
`software”) [INGEN-0073699]
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`US2003/0020813 (Iida), published January 30, 2003 [INGEN-0074076]
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`RLF1 21107684v.1
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`5
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`Ingenico Inc. v. IOENGINE, LLC
`IPR2019-00879 (US 9,059,969)
`Exhibit 2036
`Page 5 of 7
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`Prior Art
`U.S. Patent No. 5,784,461 (Shaffer), issued July 21, 1998 [INGEN-0078076]
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`Ford, Warwick et al., Secure Electronic Commerce, Prentice-Hall, Inc., 1997 [INGEN-0078084,
`INGEN-0078177]
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`U.S. Patent No. 6,088,805 (Davis), issued July 11, 2000 [INGEN-0081822]
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`Apple iPod (“iPod”) as depicted in photos produced at INGEN-0082235, available for inspection
`at the offices of counsel for Ingenico, and believed to be described in at least the following:
`•
`iPod User’s Guide (“User’s Guide) [INGEN-0082236]
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`II. ANTICIPATION AND OBVIOUSNESS
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`As set forth in Exhibits A - C, Ingenico contends that each item of the prior art listed
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`above anticipates, or at least, renders the asserted claims of the corresponding patents obvious,
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`individually or collectively, since the differences between the asserted claims and the references
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`would have been obvious to a person of ordinary skill in the art at the time of the filing of the
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`corresponding applications.
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`Ingenico attached the following claim charts and discussion as exhibits:
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`• Exhibit A: Claim chart and discussion for the asserted claims 1-2, 4, 12, and 25 of
`the ’047 Patent;
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`• Exhibit B: Claim chart and discussion for the asserted claims 2-4 and 7 of the
`’969 Patent; and
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`• Exhibit C: Claim chart and discussion for the asserted claims 55-57, 61, 100, 104-
`106, 110-11, and 123 of the ’703 Patent.
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`III.
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`INCORPORATION BY REFERENCE
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`Ingenico incorporates by reference all materials regarding the invalidity of the Patents-in-
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`Suit that have been asserted in the following proceedings:
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`•
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`Ingenico’s Petition for Inter Partes Review of Patent No. 8,539,047, IPR2019-00416,
`filed December 17, 2018;
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`RLF1 21107684v.1
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`Ingenico Inc. v. IOENGINE, LLC
`IPR2019-00879 (US 9,059,969)
`Exhibit 2036
`Page 6 of 7
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`•
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`•
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`•
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`Ingenico’s Petition for Inter Partes Review of Patent No. 9,774,703, IPR2019-00584,
`filed January 22, 2019;
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`Ingenico’s Petition for Inter Partes Review of Patent No. 9,059,969, IPR2019-00879,
`filed March 25, 2019;
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`Ingenico’s Petition for Inter Partes Review of Patent No. 9,774,703, IPR2019-00929
`filed April 5, 2019;
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`• PayPal’s Petition for Inter Partes Review of Patent No. 8,539,047, IPR2019-00884, filed
`March 29, 2019;
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`• PayPal’s Petition for Inter Partes Review of Patent No. 8,539,047, IPR2019-00885, filed
`March 29, 2019;
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`• PayPal’s Petition for Inter Partes Review of Patent No. 8,539,047, IPR2019-00886, filed
`March 29, 2019; and
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`• PayPal’s Petition for Inter Partes Review of Patent No. 9,059,969, IPR2019-00906, filed
`April 4, 2019; and
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`• PayPal’s Petition for Inter Partes Review of Patent No. 9,059,969, IPR2019-00907, filed
`April 4, 2019;
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`• PayPal’s Petition for Inter Partes Review of Patent No. 9,774,703, IPR2019-00930 filed
`April 8, 2019;
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`• PayPal’s Petition for Inter Partes Review of Patent No. 9,774,703, IPR2019-00931 filed
`April 8, 2019;
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`Ingenico expressly reserves its right to rely on any disclosures made by PayPal in its
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`invalidity contentions filed in IOENGINE LLC v. PayPal Holdings, Inc., 1:18-cv-00452-WCB
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`(D. Del), which Ingencio understands were served on IOENGINE on April 5, 2019, or any
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`further IPRs filed in connection with the asserted patents.
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`IV.
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`INVALIDITY UNDER 35 U.S.C. § 112
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`The asserted claims of the Patents-in-Suit are invalid pursuant to 35 U.S.C. § 112 for the
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`following reasons. Ingenico contends that, at least under IOENGINE’s actual and/or apparent
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`application of the claims, the claims are invalid based on inadequate written description and/or a
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`RLF1 21107684v.1
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`7
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`Ingenico Inc. v. IOENGINE, LLC
`IPR2019-00879 (US 9,059,969)
`Exhibit 2036
`Page 7 of 7
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