IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent of: David Wyatt
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`U.S. Patent No.: 11,328,286 Attorney Docket No.: 39843-0147PS1/PS2
`Issue Date:
`May 10, 2022
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`Appl. Serial No.: 16/854,829
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`Filing Date:
`April 21, 2020
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`Title:
`MULTI-FUNCTION ELECTRONIC PAYMENT CARD AND
`DEVICE SYSTEM
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`
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`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`PETITIONER’S NOTICE RANKING AND EXPLAINING MATERIAL
`DIFFERENCES BETWEEN PETITIONS FOR POST-GRANT REVIEW OF
`U.S. PATENT NO. 11,328,286
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`In re Patent of: David Wyatt
`
`U.S. Patent No.: 11,328,286 Attorney Docket No.: 39843-0147PS1/PS2
`Issue Date:
`May 10, 2022
`
`Appl. Serial No.: 16/854,829
`
`Filing Date:
`April 21, 2020
`
`Title:
`MULTI-FUNCTION ELECTRONIC PAYMENT CARD AND
`DEVICE SYSTEM
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`PETITIONER’S NOTICE RANKING AND EXPLAINING MATERIAL
`DIFFERENCES BETWEEN PETITIONS FOR POST-GRANT REVIEW OF
`U.S. PATENT NO. 11,328,286
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`PGR of U.S. Patent No. 11,328,286
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`Petitioner is filing two petitions (PGR2023-00012 and PGR2023-00013)
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`challenging U.S. Patent No. 11,328,286 (the “’286 Patent”).
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`I.
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`Ranking of Petitions
`Both petitions are meritorious and justified, particularly in view of their
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`complementary nature, with one presenting prior art based grounds under § 103
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`and the other challenging claims under §§ 101 & 112. Petitioner has filed two PGR
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`petitions due to the strict estoppel provisions of 35 U.S.C. § 325(e)(2), which bars
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`Petitioner from challenging any of the Challenged Claims in another proceeding
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`based “on any ground that the petitioner raised or reasonably could have raised
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`during that post-grant review.” Although Petitioner believes that both Petitions are
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`meritorious and justified, Petitioner requests that the Board consider the Petitions
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`in the following order:
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`Rank
`1
`2
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`Petition
`PGR2023-00012
`PGR2023-00013
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`Asserted Grounds
`§ 103
`§§ 101 & 112
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`II. Material Differences that Compel Permitting Multiple Petitions
`The Board has recognized “that there may be circumstances in which more
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`than one petition may be necessary.” TPG, 59. One of the examples provided by
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`the Board for justifying the institution of multiple petitions is “when the patent
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`owner has asserted a large number of claims in litigation.” Id. In these
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`proceedings, not only has the Patent Owner asserted all 27 claims of the ’286
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`1
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`PGR of U.S. Patent No. 11,328,286
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`Patent, but the claims are long, with multiple wordy limitations, and generally
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`include distinct limitations that are required to be addressed individually with
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`respect to the cited prior art references. SAMSUNG-1105, 4; SAMSUNG-1001,
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`claims 1-27.
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`Furthermore, as addressed in both Petitions, the ’286 Patent is an AIA patent
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`that issued less than nine months prior to the filing dates of the Petitions.
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`Therefore, Inter Partes Review (IPR) is unavailable with respect to the ’286 Patent
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`and Post Grant Review (PGR) is the only available avenue for challenging the
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`claims of the ’286 Patent before the PTAB. Unlike IPR, which allows claims to be
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`challenged based only on printed publication prior art, PGR allows claims to be
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`challenged under §§ 101 and 112 in addition to prior art based challenges under §§
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`102 and 103. 35 U.S.C. §§ 321(b), 282(b). As mentioned above, 35 U.S.C. §
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`325(e)(2) bars Petitioner from challenging any of the Challenged Claims in another
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`proceeding based “on any ground that the petitioner raised or reasonably could
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`have raised during that post-grant review” if one of the PGR Petitions reaches a
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`Final Written Decision. Therefore, Petitioner is compelled to pursue all available
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`arguments under §§ 101, 102, 103, and 112 before the PTAB due to the estoppel
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`that would prevent pursuing such grounds in another forum should at least one of
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`the current PGR Petitions reach Final Written Decision. If Petitioner did not file
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`the two present Petitions to advance challenges to the asserted claims under §§
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`2
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`PGR of U.S. Patent No. 11,328,286
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`101, 103, and 112 at this time, Petitioner would be foreclosed from making the
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`additional arguments that would not fit into a single petition (due to the number
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`and length of asserted claims) in any forum should the PTAB reach a Final Written
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`Decision on just one Petition of the Petitions. Petitioner should have the right to
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`justly and efficiently pursue all available defenses against CardWare’s assertion of
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`the ’286 patent.
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`Petitioner’s two petitions are materially different because they assert
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`different sets of grounds under different statutory provisions (Petition 1 asserting
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`§103 grounds; Petition 2 asserting §§ 101 and 112 grounds). As mentioned above,
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`Patent Owner has asserted all 27 claims of the ’286 Patent. SAMSUNG-1105, 4.
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`The large number of asserted claims along with the estoppel provisions of PGR
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`require the filing of two Petitions to allow Petitioner to raise all available invalidity
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`arguments. The current Petitions are far from the “abuse” or “repeated attacks”
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`feared in the General Plastic Co., Ltd. v. Canon Kabushiki Kaisha decision.
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`IPR2016-01357, Paper 19 at 16–17 (PTAB Sept. 6, 2017) (precedential). Rather
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`than presenting duplicative or redundant arguments, the two petitions pursue
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`separate grounds under distinct statutory provisions. The two Petitions here are
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`thus highly similar to those filed in Samsung Elec. Co. LTD. v. Nucurrent, Inc. in
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`which the Board instituted both petitions in a situation in which a large number of
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`claims were asserted and one petition challenged the claims on prior art grounds
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`3
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`PGR of U.S. Patent No. 11,328,286
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`under § 103 while the other petition presented challenges under § 112. PGR2019-
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`00049, Paper 7 (PTAB Dec. 4, 2019); PGR2019-00050, Paper 8 (PTAB Dec. 4,
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`2019). Indeed, just as in Samsung v. Nucurrent, here the PGR2023-00012 Petition
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`relies on a single primary reference (Smith, SAMSUNG-1004) for all of the
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`presented § 103 obviousness grounds. The present situation is therefore
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`substantially dissimilar to situations in which a Petitioner attempts to take multiple
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`bites at the apple by presenting duplicative prior art based grounds relying on
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`myriad different primary references.
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`Additionally, the strong merits justify institution of both PGR Petitions. The
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`prior art combination presented in Petition 1 are strong, and notably, as outlined in
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`Petition 2, the § 101 ground aligns closely with Federal Circuit cases that
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`addressed substantially similar technology and found that technology unpatentable
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`under § 101. Efficiencies and public policy concerns warrant PTAB consideration
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`of both Petitions.
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`To ensure Petitioner gets a fair and complete opportunity to challenge the
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`’286 Patent’s validity under all available statutory grounds (§§ 101, 103, and 112),
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`Petitioner requests institution of both PGR petitions. Institution of both PGR
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`petitions would prevent the unjust result of otherwise strong invalidity grounds
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`being dismissed for procedural reasons. In addition, Petitioner requests
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`4
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`PGR of U.S. Patent No. 11,328,286
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`consolidation of the two proceedings, as permitted by 35 U.S.C. §§ 315(d) and
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`325(d) to simplify the complexity of the proceedings.
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`This is not a situation where Petitioner has filed many IPR petitions against
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`one patent or is asserting dozens of independent grounds. Rather, Petitioner has
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`filed only two petitions, each under different statutory provisions, and has
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`advanced prior art grounds based on a single primary reference. Given the number
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`of claims asserted in litigation by Patent Owner, instituting two petitions is
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`reasonable.
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`For at least these reasons, Petitioner requests that the Board institute trial on
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`both Petitions.
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`Dated: January 20, 2023
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`Respectfully submitted,
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` /Patrick J. Bisenius/
`W. Karl Renner, Reg. No. 41,265
`Jeremy J. Monaldo, Reg. No. 58,680
`Nicholas Stephens, Reg. No. 74,320
`Patrick J. Bisenius, Reg. No. 63,893
`Daniel D. Smith, Reg. No. 71,278
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
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`Attorneys for Petitioner
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`5
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`PGR of U.S. Patent No. 11,328,286
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
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`certifies that on January 20, 2023, a complete and entire copy of this Notice
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`Ranking Petitions was provided by Federal Express, to the Patent Owner by
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`serving the correspondence address of record as follows:
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`David Wyatt
`c/o Murabito, Hao & Barnes
`111 North Market Street, Suite 700
`San Jose, CA 95113
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`/Diana Bradley/
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`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 57602
`(858) 678-5667
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`6
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