IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`IOENGINE, LLC,
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`Plaintiff,
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`v.
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`PAYPAL HOLDINGS, INC.,
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`Defendant.
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`C.A. No. 18-452 CFC
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`JURY TRIAL DEMANDED
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`CONFIDENTIAL
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`PLAINTIFF IOENGINE, LLC’S INITIAL CLAIM CHARTS
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`Pursuant to Paragraph 4(c) and note 3 of the District of Delaware’s Default Standard for
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`Discovery, Including Discovery of Electronically Stored Information (the “Default Standard for
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`Discovery”), Plaintiff IOENGINE, LLC (“IOENGINE” or “Plaintiff’) hereby provides its Initial
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`Claim Charts relating to each accused PayPal Holdings, Inc. (“PayPal” or “Defendant”) product
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`or service (the “Accused Products”) and the asserted claims of U.S. Patent Nos. 8,539,047 (the
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`“‘047 Patent”), 9,059,969 (the “‘969 Patent”), and 9,774,703 (the “‘703 Patent”) (collectively the
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`“Patents-in-Suit”).
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`PRELIMINARY STATEMENT
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`IOENGINE has made a reasonable and good faith effort to identify infringing aspects of
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`PayPal’s Accused Products. Discovery in this matter, however, has not been completed, and
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`IOENGINE’s Claim Charts are based upon present knowledge and belief. Furthermore, should
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`discovery uncover information relevant to the Accused Products, such that different versions or
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`features of the Accused Products necessitate different or additional analysis, including
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`infringement analysis under the doctrine of equivalents and direct and indirect infringement
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`PayPal Ex. 1038, p. 1
`PayPal v. IOENGINE
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`

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`CONFIDENTIAL
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`theories, IOENGINE reserves the right to amend, supplement, modify, and/or to provide further
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`contentions and claims charts. See, e.g., Default Standard for Discovery, ¶ 4 n.3.
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`Accordingly, these Claim Charts, attached hereto as Exhibits A-L, reflect IOENGINE’s
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`current infringement analysis based on the limited information that has been produced by PayPal
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`by the date for PayPal’s disclosures pursuant to Paragraph 4(b) of the Default Standard for
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`Discovery, (which production was deficient at least for the reasons described in IOENGINE’s
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`letters to Travis Jenson, counsel for PayPal, on September 27, 2018 and October 5, 2018 and as
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`discussed in the parties’ September 11, 2018 and October 10, 2018 teleconferences), and the
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`limited public information that is available upon a reasonable search.1 These Claim Charts are
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`not intended to be exhaustive of all citations and/or evidence that IOENGINE may rely upon to
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`show infringement at trial. These Claim Charts, and the citations included herein, are intended to
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`provide evidence sufficient to relate each of the Accused Products to the asserted claims of the
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`Patents-in-Suit. IOENGINE notes that, to the extent that the Accused Products are provided or
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`used on or through multiple platforms and/or in different environments, the attached charts are
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`intended to be representative of the corresponding functionality across all such multiple
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`platforms/environments. Any examples provided herein are intended as examples, and do not
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`limit or comprise the entirety of IOENGINE’s allegations of infringement. IOENGINE reserves
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`the right to amend, supplement, modify, and/or provide further claim charts pursuant to Default
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`Standard for Discovery, ¶ 4 n.3 or in accordance with any scheduling order that may be entered
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`1 PayPal produced additional documents on October 18, 2018, nearly four weeks later than its
`documents were due under Paragraph 4(b) of the Default Standard for Discovery. IOENGINE
`will supplement these contentions, as necessary, following an appropriate review time for those
`documents.
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`2
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`PayPal Ex. 1038, p. 2
`PayPal v. IOENGINE
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`CONFIDENTIAL
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`by the Court, including based on any further discovery provided by PayPal, any expert discovery
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`or report, or any other permissible reason.
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`PayPal directly infringes the device and system claims at least by making, using, selling
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`and offering for sale, devices and services with the identified functionalities in these Claim
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`Charts. PayPal also infringes under the Doctrine of Equivalents, as any differences between the
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`claimed inventions and the Accused Products are not substantial and the Accused Products
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`perform substantially the same identified functionalities, in substantially the same way, to obtain
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`or achieve the same result as the claimed limitations. With respect to the method claims, at least
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`the use by PayPal of the identified functionalities in these Claim Charts constitutes direct
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`infringement by PayPal. In addition, to the extent PayPal contends that PayPal itself is not
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`performing one or more of the method steps—including when claimed program code is running
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`on an end-user’s terminal or when claimed program code utilizes the end-user’s terminal to
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`perform claimed functionality—the performance of method steps and use of claimed systems by
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`end users is attributable to PayPal such that PayPal is liable as a direct infringer. PayPal is also
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`liable for contributory infringement and/or inducement of infringement due to, for example,
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`providing/selling the devices, program code, services and instructions that cause, induce, and/or
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`contribute to direct infringement by PayPal’s Point of Sale “Partners,” and by users of these
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`Partners’ and PayPal’s mobile payment apps.2 PayPal also jointly infringes the Patents-in-Suit
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`2 PayPal has refused to produce documentation related to any POS Partner Apps (e.g., the Lavu
`Point of Sale App, TouchBistro App, Vend Register App, ERPLY cloud-based POS software,
`Brightpearl POS system, and TouchPoint POS system). See, e.g., PayPal’s Responses and
`Objections to IOENGINE’s First Set of Requests for Production of Documents, at 5-6. On
`September 11, 2018 the parties met and conferred on PayPal’s refusal to produce such
`documents, during which PayPal represented that the POS Partner Apps operate, from PayPal’s
`perspective, in the same way as the PayPal Here App. As such, references and citations to the
`PayPal Here App in these Claim Charts also apply to the POS Partner Apps, and any differences
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`3
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`PayPal Ex. 1038, p. 3
`PayPal v. IOENGINE
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`CONFIDENTIAL
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`by, for example, directing and controlling the infringing use of the Accused Products by PayPal’s
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`Point of Sale “Partners” and users of these Partners’ and PayPal’s mobile payment apps.
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`Additionally, the Accused Products constitute a material part of the invention and are not staple
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`articles or commodities of commerce suitable for substantial non-infringing use. PayPal had
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`actual knowledge of the Patents-in-Suit and notice of infringement at least as of the filing of the
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`Complaint (and the date that IOENGINE sent a letter attaching a copy of the Complaint and the
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`Patents-in-Suit to Louise Pentland, Esq. and Wanji Walcott, Esq., Executive Vice President,
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`Chief Business Affairs and Legal Officer at PayPal, and Senior Vice President, General Counsel
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`at PayPal, respectively by email and Federal Express. See D.I. 17, Declaration of Noah M.
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`Leibowitz, at Ex. A), which included detailed descriptions of direct infringement of each of the
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`Patents-in-Suit by each of the Accused Products.
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`For each of IOENGINE’s Claim Charts below, the Accused Products listed share the
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`same or substantially similar functionality, and any differences are immaterial to an analysis of
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`whether or not those products infringe the Patents-in-Suit. Therefore, these charts also apply to
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`any such products that similarly infringe the Patents-in-Suit.
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`CLAIM CHARTS
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`As used herein, “Infringed” means and includes infringement of a Patent-in-Suit both
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`directly (alone or jointly) and indirectly (by way of inducement and contributory infringement),
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`literally and/or under the Doctrine of Equivalents.
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`As presently advised, IOENGINE relates the following claims of the Patents-in-Suit to
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`PayPal’s Accused Products as follows:
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`are immaterial to an analysis of whether or not POS Partner Apps participate in infringement of
`the Patents-in-Suit, jointly or otherwise.
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`4
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`PayPal Ex. 1038, p. 4
`PayPal v. IOENGINE
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`CONFIDENTIAL
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`a) at least claims 1, 3-4, 6-10, 12-21, 23-25, and 27-28 of the ‘047 Patent are Infringed by
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`the PayPal Chip Card Reader, as illustrated by the exemplary Claim Chart attached hereto
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`as Exhibit A;
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`b) at least claims 1, 6-10, 12-21, 23-25, and 27-28 of the ‘047 Patent are Infringed by the
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`PayPal Mobile Card Reader, as illustrated by the exemplary Claim Chart attached hereto
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`as Exhibit B;
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`c) at least claims 1, 3-4, 6-10, 12-21, 23-25, and 27-28 of the ‘047 Patent are Infringed by
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`the PayPal Chip and Swipe Reader, as illustrated by the exemplary Claim Chart attached
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`hereto as Exhibit C;
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`d) at least claims 1, 3-4, 6-10, 12-21, 23-25, and 27-28 of the ‘047 Patent are Infringed by
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`the PayPal Chip and Tap Reader, as illustrated by the exemplary Claim Chart attached
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`hereto as Exhibit D;
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`e) at least claims 1-8, 10, 13-16, 19-21, 24-25, and 27-28 of the ‘969 Patent are Infringed by
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`the PayPal Chip Card Reader, as illustrated by the exemplary Claim Chart attached hereto
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`as Exhibit E;
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`f) at least claims 1-6, 8, 10, 13-16, 19-21, 24-25, and 28 of the ‘969 Patent are Infringed by
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`the PayPal Mobile Card Reader, as illustrated by the exemplary Claim Chart attached
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`hereto as Exhibit F;
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`g) at least claims 1-8, 10, 13-16, 19-21, 24-25, and 27-28 of the ‘969 Patent are Infringed by
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`the PayPal Chip and Swipe Reader, as illustrated by the exemplary Claim Chart attached
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`hereto as Exhibit G;
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`5
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`PayPal Ex. 1038, p. 5
`PayPal v. IOENGINE
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`CONFIDENTIAL
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`h) at least claims 1-8, 10, 13-16, 19-21, 24-25, and 27-28 of the ‘969 Patent are Infringed by
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`the PayPal Chip and Tap Reader, as illustrated by the exemplary Claim Chart attached
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`hereto as Exhibit H;
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`i) at least claims 55-63, 65, 67-68, 70-72, 74-75, 77-78, 81-87, 89-90, 92-98, 100-101, 103-
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`112, 114, 116-117, 119-121, 123-124, and 129 of the ‘703 Patent are Infringed by the
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`PayPal Chip Card Reader and/or by the PayPal Here Mobile Payment System Utilizing
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`the PayPal Chip Card Reader, as illustrated by the exemplary Claim Chart attached hereto
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`as Exhibit I;
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`j) at least claims 55-59, 63, 65, 67-68, 70-72, 74-75, 77-78, 81-87, 89-90, 92-98, 100-101,
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`103-108, 112, 114, 116-117, 119-121, 123-124, and 129 of the ‘703 Patent are Infringed
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`by the PayPal Chip Card Reader and/or by the PayPal Here Mobile Payment System
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`Utilizing the PayPal Mobile Card Reader, as illustrated by the exemplary Claim Chart
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`attached hereto as Exhibit J;
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`k) at least claims 55-63, 65, 67-68, 70-72, 74-75, 77-78, 81-87, 89-90, 92-98, 100-101, 103-
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`112, 114, 116-117, 119-121, 123-124, and 129 of the ‘703 Patent are Infringed by the
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`PayPal Chip Card Reader and/or by the PayPal Here Mobile Payment System Utilizing
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`the PayPal Chip and Swipe Reader, as illustrated by the exemplary Claim Chart attached
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`hereto as Exhibit K; and
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`l) at least claims 55-63, 65, 67-68, 70-72, 74-75, 77-78, 81-87, 89-90, 92-98, 100-101, 103-
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`112, 114, 116-117, 119-121, 123-124, and 129 of the ‘703 Patent are Infringed by the
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`PayPal Chip Card Reader and/or by the PayPal Here Mobile Payment System Utilizing
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`the PayPal Chip and Tap Reader, as illustrated by the exemplary Claim Chart attached
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`hereto as Exhibit L.
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`6
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`PayPal Ex. 1038, p. 6
`PayPal v. IOENGINE
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`

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`CONFIDENTIAL
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`
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`SMITH, KATZENSTEIN & JENKINS,
`LLP
`
`
`/s/ Eve H. Ormerod
`Neal C. Belgam (No. 2721)
`Eve H. Ormerod (No. 5369)
`1000 West Street, Suite 1501
`Wilmington, DE 19801
`(302) 652-8400
`nbelgam@skjlaw.com
`eormerod@skjlaw.com
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`Counsel for Plaintiff IOENGINE, LLC
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`DATED: October 29, 2018
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`OF COUNSEL:
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`Noah M. Leibowitz
`Gregory T. Chuebon
`Dechert LLP
`1095 Avenue of the Americas
`New York, NY 10036
`(212) 698-3500
`noah.leibowitz@dechert.com
`greg.chuebon@dechert.com
`
`Derek J. Brader
`Dechert LLP
`Cira Centre
`2929 Arch Street
`Philadelphia, PA 19104-2808
`(215) 994-2437
`derek.brader@dechert.com
`\
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`7
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`PayPal Ex. 1038, p. 7
`PayPal v. IOENGINE
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