UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`
`FINTIV, INC.,
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`
`Plaintiff,
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`
`v.
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`PAYPAL HOLDINGS, INC.,
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`Defendant.
`
`
`Civil Action No. 6:22-cv-00288-ADA
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`JURY TRIAL DEMANDED
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`PLAINTIFF FINTIV, INC.’S INITIAL DISCLOSURE OF ASSERTED CLAIMS,
`ACCUSED INSTRUMENTALITIES, AND INFRINGEMENT CONTENTIONS
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`IPR2022-00976
`Fintiv Ex. 2003 | Page 1 of 8
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`Pursuant to the Order Governing Proceedings – Patent Case, Plaintiff Fintiv, Inc.
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`(“Plaintiff” or “Fintiv”) hereby serves its Initial Disclosure of Asserted Claims, Accused
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`Instrumentalities, and Infringement Contentions on Defendant PayPal Holdings, Inc. (“Defendant”
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`or “PayPal”).
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`INITIAL INFRINGEMENT CONTENTIONS
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`A.
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`Identification of Asserted Claims
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`Plaintiff asserts that the Defendant infringes the claims of United States Patent Nos.
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`8,538,845 (the “’845 Patent”), 9,892,386 (the “’386 Patent”), and 11,120,413 (the “’413 Patent”),
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`9,208,488 (the “’488 Patent”), and 10,438,196 (the “’196 Patent”) (collectively the “Patents-in-
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`Suit” or “Asserted Patents”) as set forth in its claim charts.
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`The foregoing is based upon Plaintiff’s investigation to date, without the benefit of any
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`discovery from the Defendant and without the benefit of the Court’s claim construction. Plaintiff
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`reserves the right to add, delete, substitute or otherwise amend the Asserted Claims based on
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`discovery, the Court’s claim construction, or other circumstances, in a manner consistent with the
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`Federal Rules of Civil Procedures and the Local Rules of the Western District of Texas.
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`B.
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`Identification of Accused Instrumentalities
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`For each Asserted Claim, Plaintiff identifies the Accused Instrumentalities of which it is
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`aware in its claim charts. For each Accused Instrumentality identified in the charts, Plaintiff’s
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`contentions apply to the Accused Instrumentality and any other similar past, present, or future
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`products, as well as systems incorporating the Accused Instrumentalities or other products with
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`the same or substantially similar features.
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`This identification of Accused Instrumentalities is based on Plaintiff’s investigation to date,
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`without the benefit of any discovery from the Defendant and without the benefit of the Court’s
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`2
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`IPR2022-00976
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`claim construction. Plaintiff believes that due to the nature of the technology, review of technical
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`documents and/or source code will be needed to Plaintiff reserves the right to add, delete, substitute
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`or otherwise amend this list of Accused Instrumentalities based on discovery, the Court’s claim
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`construction, or other circumstances, in a manner consistent with the Federal Rules of Civil
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`Procedure and the Court’s rule, including the Local Rules of the Western District of Texas.
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`C.
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`Claim Charts
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`Exhibit A, attached hereto and incorporated by reference, is a claim chart identifying
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`specifically where each element of each Asserted Claim is found within each Accused
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`Instrumentality.
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`Plaintiff asserts that Defendant has directly infringed and continues to directly infringe the
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`Asserted Claims through Defendant PayPal’s Mobile Payment system and back end servers used
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`with PayPal’s mobile applications including but not limited to the PayPal and Venmo mobile
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`applications
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`and
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`PayPal
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`and
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`Venmo
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`Business.
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`
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`See
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`e.g.
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`https://www.paypal.com/us/business/accept-payments; https://venmo.com/business/start/, which
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`puts into and derives beneficial use from a community of more than 83 million people. Id.
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`Plaintiff asserts that direct infringement is performed by PayPal through making, selling, offering
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`to sell and using the PayPal System. Plaintiff asserts that PayPal also makes and uses the system,
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`for example, through also testing the accused products including with mobile devices within the
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`United States.
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`Plaintiff further asserts that Defendant has indirectly infringed and continues to indirectly
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`infringe by contributing to and actively inducing infringement of one or more of the claims of the
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`Asserted Patents through the infringement of third-parties who access and utilize the PayPal
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`System. Plaintiff asserts that these third-parties directly infringe at least one or more of the claims
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`3
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`IPR2022-00976
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`of the Asserted Patents through its use of, implementation of, and/or integration with the PayPal
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`System. Defendant has notice of the Asserted Patents at least as of the filing of the complaint in
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`this matter. However, PayPal also has notice of the Asserted Patents as described in the Complaint.
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`The PayPal System is known by Defendant to be especially made or especially adapted for use to
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`infringe the Asserted Patents, and is not a staple article or commodity of commerce suitable for
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`substantial non-infringing uses. Defendant contributes to the infringement of the Asserted Patents
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`by selling, offering to sell, making, and otherwise making the PayPal system available to third
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`parties and PayPal partners, who purchase and use the PayPal system in a way that infringes and/or
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`practices one or more claims of the Asserted Patents. Defendant actively induce infringement by
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`encouraging the use of the infringing devices in ways that infringe one or more claims of the
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`Asserted Patents. For example, instructions on how to use mobile Payment Applications in a way
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`that infringe the PayPal system are disclosed on PayPal websites, including www.Paypal.com and
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`www.venmo.com. Defendant knew or should have known that such encouragement would induce
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`infringement. Such induced and/or contributory infringement has occurred at least since
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`Defendant became aware of the Asserted Patents.
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`As indicated in claim charts attached to Plaintiff’s contentions, Plaintiff asserts that some
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`claim elements are hardware and/or software limitations. Plaintiff reserves the right to supplement
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`its contentions for those limitations after it receives production of hardware specifications,
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`technical documents, and/or source code from Defendant.
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`These preliminary infringement contentions are based upon publicly-available information
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`without discovery from Defendant, and Plaintiff’s investigation to date, without the benefit of any
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`substantial discovery from Defendant and without the benefit of the Court’s claim construction.
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`The Accused Instrumentalities involve confidential, proprietary designs that are not publicly
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`4
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`available, and Defendant has not yet provided discovery in this case regarding the structure or
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`operation of any of the Accused Instrumentalities. Discovery is ongoing, and Plaintiff anticipates
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`that the subject matter of these infringement contentions will be the subject of further extensive
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`expert discovery. Plaintiff anticipates that discovery may provide additional evidence of
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`Defendant’s infringement, may lead to the discovery of additional instances of infringement, and
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`may also enable identification of additional claims that are infringed by Defendant. Plaintiff
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`reserves the right to add, delete, substitute, or otherwise amend these contentions based on
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`discovery, the Court’s claim construction, or other circumstances, in a manner consistent with the
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`Federal Rules of Civil Procedure and the Court’s rules, including the Local Rules of the Western
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`District of Texas. Plaintiff reserves the right to further modify and/or supplement these contentions
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`with additional or different theories and/or additional or different evidence.
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`D.
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`Literal Infringement or Infringement Under the Doctrine of Equivalents
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`Plaintiff alleges that each element of the Asserted Claim are found literally in the Accused
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`Instrumentalities. To the extent that Defendant alleges that one or more elements of the Asserted
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`Claims are not literally in the Accused Instrumentalities and/or to the extent the Court’s claim
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`construction alters our infringement analysis, Plaintiff alleges that the Accused Instrumentalities
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`infringe under the doctrine of equivalents and reserves the right to amend and/or supplement the
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`information and contentions in the accompanying claim charts accordingly.
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`These assertions are based upon Plaintiff’s investigation to date, without the benefit of any
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`discovery from the Defendant and without the benefit of the Court’s claim construction. Plaintiff
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`reserves the right to add, delete, substitute or otherwise amend this list of Asserted Claims based
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`on discovery, the Court’s claim construction, or other circumstances, in a manner consistent with
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`the Federal Rules of Civil Procedures and the Local Rules of the Western District of Texas.
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`5
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`E.
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`Priority Dates
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`Each of the Asserted Claims of the ’845 Patent is entitled to a priority date of no later than
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`June 3, 2011. Each of the Asserted Claims of the ’386 Patent is entitled to a priority date of no
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`later than June 3, 2011. Each of the Asserted Claims of the ’413 Patent is entitled to a priority date
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`of no later than June 3, 2011. Each of the Asserted Claims of the ’488 Patent is entitled to a priority
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`date of no later than November 21, 2011. Each of the Asserted Claims of the ’196 Patent is entitled
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`to a priority date of no later than November 21, 2011. The subject matter described by the Asserted
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`Claims, however, may have been conceived and reduced to practice prior to this priority date.
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`Plaintiff’s investigation is ongoing and Plaintiff reserves the right to assert that the claims are
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`entitled to an invention date that is earlier than the above date.
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`PRODUCTION OF DOCUMENTS
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`Plaintiff’s investigation is ongoing and Plaintiff will supplement its document production
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`in the event additional responsive documents are located.
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`Plaintiff reserves the right to amend or supplement these Initial Infringement Contentions
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`and any exhibits attached hereto should further discovery, the Court’s claim construction, or other
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`circumstances so require.
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`6
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`Dated:
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`
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`June 23, 2022
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`Respectfully submitted,
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`
`By: /s/ Jonathan K. Waldrop
`Jonathan K. Waldrop (CA Bar No. 297903)
`(Admitted in this District)
`jwaldrop@kasowitz.com
`Darcy L. Jones (CA Bar No. 309474)
`(Admitted in this District)
`djones@kasowitz.com
`Marcus A. Barber (CA Bar No. 307361)
`(Admitted in this District)
`mbarber@kasowitz.com
`John W. Downing (CA Bar No. 252850)
`(Admitted in this District)
`jdowning@kasowitz.com
`Heather S. Kim (CA Bar No. 277686)
`(Admitted in this District)
`hkim@kasowitz.com
`ThucMinh Nguyen (CA Bar No. 304382)
`(Admitted in this District)
`tnguyen@kasowitz.com
`KASOWITZ BENSON TORRES LLP
`333 Twin Dolphin Drive, Suite 200
`Redwood Shores, California 94065
`Telephone: (650) 453-5170
`Facsimile: (650) 453-5171
`
`Paul G. Williams (GA Bar No. 764925)
`(Admitted in this District)
`pwilliams@kasowitz.com
`KASOWITZ BENSON TORRES LLP
`1230 Peachtree Street N.E., Suite 2445
`Atlanta, Georgia 30309
`Telephone: (404) 260-6080
`Facsimile: (404) 260-6081
`
`Raymond W Mort, III
`(TX Bar No. 00791308)
`raymort@austinlaw.com
`THE MORT LAW FIRM, PLLC
`100 Congress Ave, Suite 2000
`Austin, TX 78701
`Telephone: (512) 865-7950
`Facsimile: (512) 865-7950
`
`Attorneys for Plaintiff
`FINTIV, INC.
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`7
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing instrument was served or
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`delivered electronically to all counsel of record, on this 23rd day of June, 2022, via the Court’s
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`CM/ECF System.
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`/s/ Jonathan K. Waldrop
`Jonathan K. Waldrop
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`8
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`IPR2022-00976
`Fintiv Ex. 2003 | Page 8 of 8
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