`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`Ingenico Inc.,
`
`Petitioner
`
`v.
`
`IOENGINE, LLC,
`
`Patent Owner
`
`____________
`
`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
`____________
`
`PETITIONER’S UPDATED MANDATORY NOTICES PURSUANT TO
`37 C.F.R. §§ 42.8(a)(3) and (b)(2)
`
`
`
`
`
`
`
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00907 (US 9,059,969)
`Exhibit 2088
`
`
`
`Pursuant to 37 C.F.R. §§ 42.8(a)(3) and (b)(2), Petitioner, Ingenico Inc.,
`
`hereby submits the following updated mandatory notices in connection with these
`
`proceedings.
`
`I.
`
`Notice of Related Matters Under 37 C.F.R. §42.8(b)(2)
`
`Petitioner identifies the following related matters. On June 1, 2018,
`
`Petitioner, Ingenico Inc., sued IOENGINE, LLC (“IOENGINE” or “Patent
`
`Owner”) in the U.S. District Court for the District of Delaware seeking a
`
`declaratory judgment for non-infringement (but not invalidity) of U.S. Patent No.
`
`9,774,703 (“the ’703 patent”), among others, with respect to all of Ingenico’s card
`
`reader products. Ex. 1026. IOENGINE counterclaimed for infringement against
`
`Ingenico and its parent company, Ingenico Corp., and Ingenico Corp.’s parent
`
`company, Ingenico Group S.A. See Ingenico Inc. v. IOENGINE, LLC, No. 1:18-
`
`cv-00826-UNA (D. Del.).
`
`Earlier, on March 23, 2018, IOENGINE sued PayPal Holdings, Inc.
`
`(“PayPal”), alleging infringement of several patents, including the ’047 patent. See
`
`IOENGINE, LLC v. PayPal Holdings, Inc., No. 1:18-cv-00452-UNA (D. Del.).
`
`Petitioner supplies certain card readers to PayPal, which are accused products.
`
`Despite Petitioner’s indemnification agreement with PayPal, PayPal is defending
`
`itself in the litigation without Petitioner’s involvement. The present petition has
`
`
`
`1
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00907 (US 9,059,969)
`Exhibit 2088
`
`
`
`been filed under the complete direction and control of Ingenico without
`
`contribution from PayPal.
`
`U.S. Application Nos. 15/712,714 and 15/712,780 are pending continuation
`
`applications that claim the priority benefit of the ’703 patent.
`
`An inter partes review filed by Petitioner is pending against the remaining
`
`claims (claims 55-129) of the ’703 patent, designated IPR2019-00929 and
`
`captioned Ingenico Inc. v. IOENGINE, LLC. Inter partes reviews filed by PayPal,
`
`Inc. are pending against the ’703 patent, designated IPR2019-00930 and IPR2019-
`
`00931 and captioned PAYPAL, INC. v. IOENGINE, LLC.
`
`An inter partes review filed by Petitioner is pending against parent patent
`
`U.S. 8,539,047, designated IPR2019-00416 and captioned Ingenico Inc. v.
`
`IOENGINE, LLC. Inter partes reviews filed by PayPal, Inc. are pending against
`
`parent patent U.S. 8,539,047, designated IPR2019-00884, IPR2019-00885,
`
`IPR2019-00886, and IPR2019-00887 and captioned PAYPAL, INC. v. IOENGINE,
`
`LLC.
`
`An inter partes review filed by Petitioner is pending against parent patent
`
`U.S. 9,059,969, designated IPR2019-00879 and captioned Ingenico Inc. v.
`
`IOENGINE, LLC. Inter partes reviews filed by PayPal, Inc. are pending against
`
`parent patent U.S. 9,059,969, designated IPR2019-00906 and IPR2019-00907 and
`
`captioned PAYPAL, INC. v. IOENGINE, LLC.
`
`
`
`2
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00907 (US 9,059,969)
`Exhibit 2088
`
`
`
`Dated: April 24, 2019
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/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.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`3
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00907 (US 9,059,969)
`Exhibit 2088
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned certifies service on the Patent Owner of a copy of the
`
`Petitioner’s Updated Mandatory Notices Pursuant to 37 C.F.R. §§ 42.8(a)(3) and
`
`(b)(2) in its entirety to counsel for IOENGINE, LLC by electronic mail at:
`
`
`
`
`
`
`
`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
`
`
`
`
`/Robert M. Asher, #30,445/
`Robert M. Asher
`Reg. No. 30,445
`Counsel for Petitioner
`
`
`
`Dated: April 24, 2019
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00907 (US 9,059,969)
`Exhibit 2088
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
