`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`PAYPAL, INC.
`Petitioner
`v.
`IOENGINE, LLC
`Patent Owner
`____________
`Case No.: IPR2019-00907
`U.S. Patent No. 9,059,969
`Issue Date: June 16, 2015
`Title: Apparatus, Method and System for a Tunneling Client Access Point
`____________
`Petition for Inter Partes Review of U.S. Patent No. 9,059,969
`____________
`
`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 2096
`Page 1 of 4
`
`
`
`I.
`
`INTRODUCTION
`
`Petitioner PayPal, Inc. (“PayPal”) requests IPR of claims 1-22 and 24-29 of
`
`U.S. Patent No. 9,059,969 (the “’969 patent,” Ex. 1002).
`
`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 ’969 patent. In addition to the ’969 patent, IOENGINE is
`
`asserting infringement of two additional patents related to the ’969 patent (i.e., U.S.
`
`Patent Nos. 8,539,047 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 ’969 patent.
`
`1
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00906 (US 9,059,969)
`Exhibit 2096
`Page 2 of 4
`
`
`
`IPRs are starkly different than the IPR filed by Ingenico, the Board is justified in
`
`expending its resources to consider PayPal’s IPRs, and there is no known reason the
`
`Board cannot issue final determinations within one year of institution. Accordingly,
`
`proceedings such as Valve Corp. v. Electronic Scripting Products, Inc., IPR2019-
`
`00062, Paper 13 (PTAB Apr. 2, 2019), are not applicable here. Unlike in Valve,
`
`PayPal’s petitions are being filed within two weeks of Ingenico’s petition—and thus
`
`PayPal has not been “lying in wait” to obtain a tactical advantage from a prior
`
`institution decision or patent owner’s preliminary response—and do not
`
`significantly overlap with Ingenico’s petition, which relies on entirely different prior
`
`art and challenges different claims. 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 ’969 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 1-22 and 24-29.
`
`8
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00906 (US 9,059,969)
`Exhibit 2096
`Page 3 of 4
`
`
`
`2. Prior Art and Statutory Grounds
`
`The prior art references are:
`
`Patent/Publication
`
`Filing Date
`
`Pub. Date
`
`Ex. No.
`
`U.S. Pat. 6,385,729
`(“DiGiorgio”)
`
`U.S. Pub. 2002/0099665
`(“Burger”)
`
`U.S. Pub. 2002/0147912
`(“Shmueli”)
`
`U.S. Pat. 6,917,962
`(“Cannata”)
`
`May 26, 1998
`
`May 7, 2002
`
`1010
`
`Oct. 1, 2001
`
`Jul. 25, 2002
`
`1011
`
`Mar. 9, 2001
`
`Oct. 10, 2002
`
`1009
`
`June 9, 2000
`
`N/A
`
`1052
`
`The pre-AIA §102(b) date for the ’969 patent is March 23, 2003, based on the
`
`earliest effective filing date of March 23, 2004. DiGiorgio, Burger, and Shmueli are
`
`§102(b) art. Cannata is 102(e) art.
`
`Ground 1: Claims 1-10, 13-16, 19-21, and 24-29 are obvious under §103 in
`
`view of DiGiorgio in combination with Burger.
`
`Ground 2: Claims 17-18 and 22 of the ’969 patent are obvious under §103
`
`in view of DiGiorgio in combination with Burger and in further combination with
`
`Shmueli.
`
`Ground 3: Claims 11-12 are obvious under §103 in view of DiGiorgio in
`
`combination with Burger and in further combination with Cannata.
`
`9
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00906 (US 9,059,969)
`Exhibit 2096
`Page 4 of 4
`
`
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