Plaintiff,
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`v.
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`
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`C.A. No. 18-452 (WCB)
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`)
`)
`)
`)
`)
`)
`)
`)
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`IOENGINE, LLC,
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`PAYPAL HOLDINGS, INC.,
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`Defendant.
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`DEFENDANT PAYPAL HOLDINGS, INC.’S INITIAL INVALIDITY CONTENTIONS
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`Pursuant to Paragraph 4(d) of the District of Delaware Default Standard for Discovery,
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`including Discovery of Electronically Stored Information (“ESI”) (“Default Standard”) and in
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`accordance with the Scheduling Order of January 28, 2019 (“Scheduling Order”), Defendant
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`PayPal Holdings, Inc. (“Defendant” or “PayPal”) provides the following initial invalidity
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`contentions for the claims that Plaintiff IOENGINE, LLC (“Plaintiff” or “IOENGINE”) asserted
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`in its Default Standard Paragraph 4(c) amended infringement contentions, served on March 1,
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`2019 (collectively, the “asserted claims”).
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`I.
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`Introductory Statement
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`
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`Pursuant to the Default Standard and the Scheduling Order, these initial invalidity
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`contentions are preliminary and PayPal reserves all rights to supplement and/or amend its
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`contentions. Further, PayPal’s initial invalidity contentions apply only to the asserted claims
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`identified in IOENGINE’s March 1, 2019 amended infringement contentions. In particular,
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`IOENGINE identified, and PayPal provides initial invalidity contentions for, the following
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`asserted claims:
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`
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`
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`U.S. Patent No. 8,539,047 (“the ’047 patent”) claims 1, 4, 12, 24, and 25;
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`U.S. Patent No. 9,059,969 (“the ’969 patent”) claims 2, 3, 4, and 7; and
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`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00886 (US 8,539,047)
`Exhibit 2082
`Page 1 of 5
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`

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`occurred “as early as” certain dates) and support the alleged conception dates and reduction to
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`practice dates associated with the asserted claims, and by failing to describe the facts and
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`circumstances surrounding disclosures of the claimed subject matter before March 23, 2004.
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`Discovery still to be taken includes but is not limited to: document and deposition discovery of
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`IOENGINE, the named inventor of the asserted patents, and/or other persons believed to possess
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`relevant information, including without limitation authors of prior art references or inventors of
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`prior art products or services believed to have knowledge, documentation, and/or corroborating
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`evidence concerning the prior art identified in these initial invalidity contentions and/or
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`additional prior art.
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`
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`PayPal is also not able to know the extent to which IOENGINE may contend that
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`limitations of the asserted claims are not disclosed in the prior art identified by PayPal in these
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`initial invalidity contentions. Likewise, PayPal is incapable of knowing the extent to which
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`IOENGINE may argue that one or more prior art references identified in these initial invalidity
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`contentions are not prior art to one or more asserted claims based on, for example, its vaguely
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`alleged pre-filing conception and reduction to practice dates, or otherwise. To the extent that
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`IOENGINE makes such contentions, other prior art references that would disclose, practice,
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`anticipate and/or render obvious the allegedly missing limitations may become relevant, and
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`PayPal reserves the right to demonstrate that any prior art identified in these initial invalidity
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`contentions or otherwise constitutes prior art and discloses, practices, or renders obvious the
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`asserted claims.
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`PayPal also reserves the right to rely on any documents produced, prior art identified, and
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`invalidity contentions or challenges made, by PayPal or other parties in prior litigations or
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`proceedings, or in any pending or future litigations or proceedings, involving any of the asserted
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`3
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`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00886 (US 8,539,047)
`Exhibit 2082
`Page 2 of 5
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`patents (or related patents or applications), including any reexamination, inter partes review, or
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`other challenge to the patentability of the subject matter of the asserted patents at any patent
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`office. Such litigations or proceedings include, but are not limited to: IOENGINE LLC v.
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`Interactive Media Corp., Case No. 14-1571 (D. Del.); IOENGINE LLC v. GlassBridge
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`Enterprises, Inc., Case No. 14-1572 (D. Del.); Ingenico Inc. v. IOENGINE LLC, Case No. 18-
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`452 (D. Del.); IPR2019-00416; IPR2019-00584; IPR2019-00879; IPR2019-00884; IPR2019-
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`00885; IPR2019-00886; IPR2019-00887; IPR2019-00906; IPR2019-00907; IPR2019-00930;
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`and IPR2019-00931.
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`
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`These initial invalidity contentions are based on PayPal’s current understanding of the
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`asserted claims and IOENGINE’s apparent construction of those claims in its infringement
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`contentions. Thus, these initial invalidity contentions, including the attached charts, may reflect
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`alternative positions as to claim construction and scope. PayPal’s inclusion of prior art that
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`would anticipate or render obvious the asserted claims based on IOENGINE’s apparent
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`constructions or on any other construction is not an adoption or endorsement of such
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`constructions by PayPal. Nothing in these initial invalidity contentions should be construed as
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`an admission that PayPal agrees with IOENGINE’s apparent claim constructions. Similarly,
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`nothing in these initial invalidity contentions shall be construed as an admission regarding the
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`application of the asserted claims to any of PayPal’s accused products. In the absence of a claim
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`construction ruling, PayPal’s initial invalidity contentions may be made in the alternative, and
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`are not necessarily intended to be consistent with one another, and should be viewed accordingly.
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`PayPal reserves all rights to further modify and/or supplement the positions and information in
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`these initial invalidity contentions after the Court has construed the asserted claims or as
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`otherwise appropriate or permitted by the Court.
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`4
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`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00886 (US 8,539,047)
`Exhibit 2082
`Page 3 of 5
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`PayPal provides pinpoint citations to exemplary portions of the prior art for the purpose
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`of fairly disclosing the manner in which the prior art references meet the claim limitations. Such
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`citations should not be construed to mean that other portions of the prior art references are not
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`relevant to the invalidity of the claims. PayPal specifically reserves the right to rely on the
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`entirety of any or all of the prior art references—whether charted or not charted—as a basis for
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`asserting invalidity of the asserted claims and/or as necessary to supplement its invalidity
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`contentions with additional citations and evidence.
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`A.
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`Anticipation by Patents and Printed Publications
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`
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`Based on PayPal’s understanding of IOENGINE’s infringement contentions, at least one
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`or more asserted claims are invalid as anticipated under 35 U.S.C. § 102 in view of the patent
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`and printed publication prior art references listed below as indicated and discussed in Exhibit A,
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`as well as any methods or systems which embody the concepts disclosed in those references.
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`Exhibit A is a series of charts, numbered A-1 through A-8, that identify specific examples of
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`where each claim limitation is found in a particular reference.
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`Table 1: List of Anticipatory References
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`Chart
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`Reference
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`Asserted Patent(s)
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`A-1 U.S. Patent No. 7,272,723 to Abbott (“Abbott”). Abbott
`was filed on November 24, 1999 and issued on September
`18, 2007.
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`’047, ’969, and ’703
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`A-2 U.S. Patent Publication No. 2002/0099665 A1 to Burger
`(“Burger”). Burger was filed on October 1, 2001 and
`published on July 25, 2002.
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`’047, ’969, and ’703
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`A-3 U.S. Patent No. 6,385,729 to DiGiorgio (“DiGiorgio”).
`DiGiorgio was filed on May 26, 1998 and issued on May
`7, 2002.
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`’047, ’969, and ’703
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`9
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`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00886 (US 8,539,047)
`Exhibit 2082
`Page 4 of 5
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`Chart
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`Reference
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`Asserted Patent(s)
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`A-4 U.S. Patent Publication No. 2004/0039932 A1 to Elazar et
`al. (“Elazar”). Elazar was filed on August 23, 2002 and
`published on February 26, 2004.1
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`’047, ’969, and ’703
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`A-5 U.S. Patent Publication No. 2002/0065872 A1 to Genske
`(“Genske”). Genske was published on May 30, 2002.
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`’047, ’969, and ’703
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`A-6 U.S. Patent Publication No. 2003/0020813 to Iida (“Iida”).
`Iida was filed on July 25, 2002 and issued on January 30,
`2003.
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`’047, ’969, and ’703
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`A-7
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`European Patent Publication No. EP 1001329 A2 to
`Margalit et al. (“Margalit”). Margalit was published on
`May 17, 2000.2
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`’047, ’969, and ’703
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`A-8 U.S. Patent Publication No. 2002/0147912 to Shmueli
`(“Shmueli”). Shmueli was filed on March 9, 2001 and
`published on October 10, 2002.
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`’047, ’969, and ’703
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`PayPal specifically asserts the references in the table above as anticipatory references
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`under 35 U.S.C. §§ 102 (a), (b), and/or (e), but also assert that invention of such systems and/or
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`methods prior to the invention date of the asserted claims may also constitute prior art under 35
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`U.S.C. § 102(g), which will be confirmed as discovery progresses.
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`1 Additionally, U.S. Patent No. 7,979,700, which was filed on February 25, 2005 and issued on
`July 12, 2011, and U.S. Patent No. 8,595,488, which was filed on July 11, 2011 and issued on
`November 26, 2013, share common inventors and a similar disclosure with Elazar, and so
`collectively are the “Elazar references.” Each of the Elazar references invalidate the asserted
`patents for substantially the same reasons as Elazar.
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` 2
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` Additionally, U.S. Patent No. 6,748,541, which was filed on October 5, 1999 and issued on
`June 8, 2004, and U.S. Patent No. 6,763,399, which was filed on April 22, 2002 and issued on
`July 13, 2004, share common inventors and a similar disclosure with Margalit, and so
`collectively are the “Margalit references.” Each of the Margalit references invalidate the
`asserted patents for substantially the same reasons as Margalit.
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`
`10
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`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00886 (US 8,539,047)
`Exhibit 2082
`Page 5 of 5
`
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