`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`PAYPAL, INC.
`Petitioner
`v.
`IOENGINE, LLC
`Patent Owner
`____________
`Case No.: IPR2019-00886
`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
`IPR2019-00907 (US 9,059,969)
`Exhibit 2092
`Page 1 of 4
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,539,047
`
`I.
`
`INTRODUCTION
`
`Petitioner PayPal, Inc. (“PayPal”) requests IPR of claims 1-4, 6-9, 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
`IPR2019-00907 (US 9,059,969)
`Exhibit 2092
`Page 2 of 4
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,539,047
`
`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. 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 1-4, 6-9, 12-16, and 18-31 in this petition.
`
`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. 6,385,729
`(“DiGiorgio”)
`
`U.S. Pub. No. 2002/0099665
`(“Burger”)
`
`U.S. Pub. 2002/0147912
`(“Shmueli”)
`
`May 26, 1998
`
`May 7, 2002
`
`1010
`
`Oct. 1, 2001
`
`Jul. 25, 2002
`
`1011
`
`Mar. 9, 2001
`
`Oct. 10, 2002
`
`1009
`
`9
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00907 (US 9,059,969)
`Exhibit 2092
`Page 3 of 4
`
`
`
`Petition for Inter Partes Review of U.S. Patent No. 8,539,047
`
`Patent/Publication
`
`Filing Date
`
`Issue/Pub. Date
`
`Ex. No.
`
`U.S. Pat. 6,487,657
`(“Brockmann”)
`
`Feb. 18, 1999
`
`Nov. 26, 2002
`
`1039
`
`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. DiGiorgio, Burger, Shmueli, and
`
`Brockmann are all prior art under §102(b).
`
`Ground 1: Claims 1-4, 6-9, 13-16, 18-19, 21, 23-25, and 27-29 are obvious
`
`under §103 in view of DiGiorgio in combination with Burger.
`
`Ground 2: Claims 12 and 20 are obvious under §103 in view of DiGiorgio in
`
`combination with Burger and/or in further combination with Brockmann.
`
`Ground 3: Claims 22, 26, and 30-31 are obvious under §103 in view of
`
`DiGiorgio in combination with Burger and Shmueli.
`
`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,”
`
`10
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00907 (US 9,059,969)
`Exhibit 2092
`Page 4 of 4
`
`
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
