`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`PAYPAL, INC.
`Petitioner
`v.
`IOENGINE, LLC
`Patent Owner
`____________
`Case No.: IPR2019-00844
`U.S. Patent No. 8,539,047
`Issue Date: September 17, 2013
`Title: Apparatus, Method and System for a Tunneling Client Access Point
`____________
`Petition for Inter Partes Review of U.S. Patent No. 8,539,047
`____________
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00906 (US 9,059,969)
`Exhibit 2086
`Page 1 of 4
`
`
`
`Petition for Inter Partes Review of U.S. Patent 8,539,047
`
`I.
`
`INTRODUCTION
`
`Petitioner PayPal, Inc. (“PayPal”) requests IPR of claims 1-9, 12-16, 18-31 of
`
`U.S. Patent No. 8,539,047 (the “’047 patent,” Ex. 1001).
`
`II. MANDATORY NOTICES
`A. Real Party-In-Interest
`
`The real parties-in-interest are PayPal, Inc., a wholly-owned subsidiary of
`
`PayPal Holdings, Inc., and PayPal Holdings, Inc.
`
`B. Related Matters
`
`The following judicial or administrative matters may affect, or be affected by,
`
`a decision in this proceeding: IOENGINE, LLC v. PayPal Holdings, Inc., No. 1:18-
`
`cv-00452-WCB (D. Del. Mar. 23, 2018) (the “PayPal case”) and Ingenico Inc. v
`
`IOENGINE, LLC, 1:18-cv-00826-WCB (D. Del. June 1, 2018) (the “Ingenico
`
`case”). In both cases, patent owner IOENGINE, LLC (“IONEGINE”) asserts
`
`infringement of the ’047 patent. In addition to the ’047 patent, IOENGINE is
`
`asserting infringement of two additional patents related to the ’047 patent (i.e., U.S.
`
`Patent Nos. 9,059,969 and 9,774,703) separately against PayPal and Ingenico in
`
`those litigations. Further, U.S. Application Nos. 15/712,714 and 15/712,780 are
`
`continuation applications pending before the U.S. Patent and Trademark Office that
`
`claim priority to the ’047 patent.
`
`1
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00906 (US 9,059,969)
`Exhibit 2086
`Page 2 of 4
`
`
`
`Petition for Inter Partes Review of U.S. Patent 8,539,047
`
`Board cannot issue final determinations within one year of institution. For these
`
`reasons, the instant IPR should be instituted. See General Plastic Industrial Co.,
`
`Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-01357, Paper 19 at 15-22 (PTAB
`
`Sept. 6, 2017).
`
`V. REQUIREMENTS FOR INTER PARTES REVIEW
`A. Grounds for Standing
`
`The ’047 patent is available for IPR and Petitioner is not barred or estopped
`
`from requesting IPR of the challenged claims on the grounds identified herein.
`
`B.
`
`Identification of Challenge
`1. Challenged Claims
`
`Petitioner challenges claims 1-9, 12-16, 18-31.
`
`2. Prior Art and Statutory Grounds
`
`The prior art references relied upon herein are:
`
`Patent/Publication
`
`Filing Date
`
`Issue/Pub. Date Ex. No.
`
`U.S. Pat. 7,272,723
`(“Abbott”)
`
`U.S. Pat. Pub. 2002/0147912
`(“Shmueli”)
`
`U.S. Pat. 6,487,657
`(“Brockmann”)
`
`Nov. 24, 1999
`
`Sept. 18, 2007
`
`1008
`
`Mar. 9, 2001
`
`Oct. 10, 2002
`
`1009
`
`Feb. 18, 1999
`
`Nov. 26, 2002
`
`1039
`
`9
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00906 (US 9,059,969)
`Exhibit 2086
`Page 3 of 4
`
`
`
`Petition for Inter Partes Review of U.S. Patent 8,539,047
`
`The pre-AIA §102(b) date for the ’047 patent is March 23, 2003, based on the
`
`earliest effective filing date of March 23, 2004. Shmueli and Brockmann are prior
`
`art under §102(b) and Abbott is prior art under §102(e).
`
`Ground 1: Claims 1-9, 13-16, 18-19, 21-31 are obvious under §103 in view
`
`of Abbott in combination with Shmueli.
`
`Ground 2: Claims 12 and 20 are obvious under §103 in view of Abbott in
`
`combination with Shmueli and Brockmann.
`
`3. Claim Construction
`
`A claim subject to IPR is construed “in accordance with the ordinary and
`
`customary meaning of such claim as understood by one of ordinary skill in the art
`
`and the prosecution history pertaining to the patent.” 42 C.F.R. §42.100(b).
`
`A consolidated Markman order regarding the ’047 patent issued in the Imation
`
`and IMC cases. There, the District Court for the District of Delaware construed all
`
`disputed terms to have their plain and ordinary meaning. These terms were:
`
`“portable device”; “processor”; “memory”; and “[first/second/third] program code,”
`
`“third processing code,” “executable program code stored thereon,” and “program
`
`code stored on the portable device memory.” Markman Ruling (Ex. 1012) at 2-3.
`
`PayPal does not seek to disturb any of the prior district court constructions in
`
`this IPR. PayPal does, however, raise a new claim construction issue regarding the
`
`term “[first/second/third] program code.” The focus of the district court’s
`
`10
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00906 (US 9,059,969)
`Exhibit 2086
`Page 4 of 4
`
`
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