`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`Ingenico Inc.,
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`Petitioner
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`v.
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`IOENGINE, LLC,
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`Patent Owner
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`____________
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`U.S. Patent No. 9,774,703
`Issue Date: September 26, 2017
`Title: APPARATUS, METHOD AND SYSTEM FOR A
`TUNNELING CLIENT ACCESS POINT
`
`Inter Partes Review No. IPR2019-00584
`____________
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`PETITIONER’S UPDATED MANDATORY NOTICES PURSUANT TO
`37 C.F.R. §§ 42.8(a)(3) and (b)(2)
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`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00906 (US 9,059,969)
`Exhibit 2088
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`Pursuant to 37 C.F.R. §§ 42.8(a)(3) and (b)(2), Petitioner, Ingenico Inc.,
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`hereby submits the following updated mandatory notices in connection with these
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`proceedings.
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`I.
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`Notice of Related Matters Under 37 C.F.R. §42.8(b)(2)
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`Petitioner identifies the following related matters. On June 1, 2018,
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`Petitioner, Ingenico Inc., sued IOENGINE, LLC (“IOENGINE” or “Patent
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`Owner”) in the U.S. District Court for the District of Delaware seeking a
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`declaratory judgment for non-infringement (but not invalidity) of U.S. Patent No.
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`9,774,703 (“the ’703 patent”), among others, with respect to all of Ingenico’s card
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`reader products. Ex. 1026. IOENGINE counterclaimed for infringement against
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`Ingenico and its parent company, Ingenico Corp., and Ingenico Corp.’s parent
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`company, Ingenico Group S.A. See Ingenico Inc. v. IOENGINE, LLC, No. 1:18-
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`cv-00826-UNA (D. Del.).
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`Earlier, on March 23, 2018, IOENGINE sued PayPal Holdings, Inc.
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`(“PayPal”), alleging infringement of several patents, including the ’047 patent. See
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`IOENGINE, LLC v. PayPal Holdings, Inc., No. 1:18-cv-00452-UNA (D. Del.).
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`Petitioner supplies certain card readers to PayPal, which are accused products.
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`Despite Petitioner’s indemnification agreement with PayPal, PayPal is defending
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`itself in the litigation without Petitioner’s involvement. The present petition has
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`1
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`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00906 (US 9,059,969)
`Exhibit 2088
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`been filed under the complete direction and control of Ingenico without
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`contribution from PayPal.
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`U.S. Application Nos. 15/712,714 and 15/712,780 are pending continuation
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`applications that claim the priority benefit of the ’703 patent.
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`An inter partes review filed by Petitioner is pending against the remaining
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`claims (claims 55-129) of the ’703 patent, designated IPR2019-00929 and
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`captioned Ingenico Inc. v. IOENGINE, LLC. Inter partes reviews filed by PayPal,
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`Inc. are pending against the ’703 patent, designated IPR2019-00930 and IPR2019-
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`00931 and captioned PAYPAL, INC. v. IOENGINE, LLC.
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`An inter partes review filed by Petitioner is pending against parent patent
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`U.S. 8,539,047, designated IPR2019-00416 and captioned Ingenico Inc. v.
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`IOENGINE, LLC. Inter partes reviews filed by PayPal, Inc. are pending against
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`parent patent U.S. 8,539,047, designated IPR2019-00884, IPR2019-00885,
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`IPR2019-00886, and IPR2019-00887 and captioned PAYPAL, INC. v. IOENGINE,
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`LLC.
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`An inter partes review filed by Petitioner is pending against parent patent
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`U.S. 9,059,969, designated IPR2019-00879 and captioned Ingenico Inc. v.
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`IOENGINE, LLC. Inter partes reviews filed by PayPal, Inc. are pending against
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`parent patent U.S. 9,059,969, designated IPR2019-00906 and IPR2019-00907 and
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`captioned PAYPAL, INC. v. IOENGINE, LLC.
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`2
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`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00906 (US 9,059,969)
`Exhibit 2088
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`Dated: April 24, 2019
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`Respectfully submitted,
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`
`
`/Robert M. Asher, #30,445/
`Robert M. Asher
`Reg. No. 30,445
`Sunstein Kann Murphy & Timbers LLP
`125 Summer Street, 11th Floor
`Boston, MA 02110-1618
`(617) 443-9292
`Counsel for Petitioner, Ingenico Inc.
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`3
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`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00906 (US 9,059,969)
`Exhibit 2088
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`
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`CERTIFICATE OF SERVICE
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`
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`The undersigned certifies service on the Patent Owner of a copy of the
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`Petitioner’s Updated Mandatory Notices Pursuant to 37 C.F.R. §§ 42.8(a)(3) and
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`(b)(2) in its entirety to counsel for IOENGINE, LLC by electronic mail at:
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`Allioengine-ipr@dechert.com
`Derek J. Brader, derek.brader@dechert.com
`Robert W. Ashbrook, Jr., robert.ashbrook@dechert.com
`Noah Leibowitz, noah.leibowitz@dechert.com
`Greg Chuebon, greg.chuebon@dechert.coom
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`
`
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`/Robert M. Asher, #30,445/
`Robert M. Asher
`Reg. No. 30,445
`Counsel for Petitioner
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`
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`Dated: April 24, 2019
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`4
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`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00906 (US 9,059,969)
`Exhibit 2088
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