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4361423 Canada Inc. v. Square, Inc.

Docket 5:19-cv-04311, California Northern District Court (July 26, 2019)
Judge Jeffrey S. White, presiding
Patent
DivisionSan Jose
FlagsADRMOP, AO279, CLOSED, STAYED
Cause15:1126 Patent Infringement
Case Type830 Patent
Tags830 Patent, 830 Patent
Patent
8281998; 8286875; 8584946; 9016566; 9269084; 9311637; 9443239; 9613351; 9818107; 9824350
828199882868758584946
9016566
926908493116379443239961335198181079824350
Plaintiff 4361423 Canada Inc.
Defendant Square, Inc.
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Square, Inc. v. 4361423 CANADA INC.

Docket IPR2019-01649, Patent Trial and Appeal Board (Sept. 30, 2019)
Jameson Lee, Kevin Trock, Robert Weinschenk, presiding
Case TypeInter Partes Review
Patent
9016566
Patent Owner 4361423 CANADA INC.
Petitioner Square, Inc.
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43 Termination Decision Document: Termination Decision Document

Document IPR2019-01649, No. 43 Termination Decision Document - Termination Decision Document (P.T.A.B. Apr. 22, 2021)
Patent 9,016,566 B2 would have been obvious to a person of ordinary skill in the art to combine the cited teachings of Eisner, Vrotsos, and Proctor so that Eisner’s PRCTT is a portable smart card reader device.
Alternatively, Vrotsos teaches a card reader with a means of power that could be supplied in a mobile setting, and it would have been obvious to a person of ordinary skill in the art to combine Eisner and Proctor so that Eisner’s PRCTT is portable.
Patent 9,016,566 B2 a person of ordinary skill in the art to combine the cited teachings of Eisner and Proctor so that Eisner’s PRCTT connects to the hands-free jack on Proctor’s mobile phone, which transmits the converted signal to the central verification facility.
As discussed above, Petitioner explains how a person of ordinary skill in the art would have combined Eisner, Vrotsos and Proctor, namely, so that Eisner’s PRCTT is a portable smart card reader device and connects to the hands-free jack on Proctor’s mobile phone.
Specifically, Patent Owner argues that Petitioner does not explain why a person of ordinary skill in the art would “combine Proctor with Vrotsos and still convert to an analog-audio signal and transmit to the hands-free jack of a mobile communication device.” Id. at 55.
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42 Hearing Transcript: Hearing Transcript

Document IPR2019-01649, No. 42 Hearing Transcript - Hearing Transcript (P.T.A.B. Mar. 2, 2021)
As always, our main concern is to make sure that everyone has a fair opportunity to be heard, so if at any time during the hearing you have any technical difficulties, whether audio or video, that you think are impairing your ability to represent your client, please let us know immediately.
So that illustrates how well known this feature was, and so this is not a -- I don't think this is an inventive aspect of the claim because encryption of data originally, as read from the smart card, was well known, such as shown by Colnot, and also as recognized by persons of ordinary skill.
And I want to refer you -- JUDGE WEINSCHENK: I'm specifically looking at Figure 2 of Eisner, and I think you rely on box 38, the D-to-A DTMF generator, to satisfy both the producing and converting limitations.
MR. JACKSON: If I understand your question, Judge Lee, the way I read this is that if you supply a modem tone to the jack on a cell phone, that that signal will become corrupted by the voice encoder, the vo coders.
The problem is, the way the signal is encoded, if it's put into an audio analogue input jack on a cell phone, information will be lost as part of the ordinary processing when that is prepared for transmission.
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37 Order: ORDERSetting Oral Argument

Document IPR2019-01649, No. 37 Order - ORDERSetting Oral Argument (P.T.A.B. Jan. 12, 2021)
In accordance with the Consolidated Trial Practice Guide3 (“CTPG”), issued in November 2019, Patent Owner may request to reserve time for a brief sur- rebuttal.
Finally, the parties are reminded that each presenter should identify clearly and specifically each paper (e.g., by slide or screen number for a demonstrative) referenced during the hearing to ensure the clarity and accuracy of the court reporter’s transcript and for the benefit of all participants appearing electronically.
During the hearing, the parties are reminded to identify clearly and specifically each paper referenced (e.g., by slide or screen number for a demonstrative) to ensure the clarity and accuracy of the court reporter’s transcript and for the
The Board will grant up to fifteen (15) minutes of additional argument time to that party, depending on the length of the proceeding and the PTAB’s hearing schedule.
Accordingly, it is ORDERED that a consolidated oral hearing for the above-listed cases shall commence at 3:00 PM Eastern Time on January 28, 2021, by video, and proceed in the manner set forth herein.
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28 Order: ORDERGranting Petitioner¿¿¿s Motion for Pro Hac Vice Admission37 CFR ¿¿ 4210

Document IPR2019-01649, No. 28 Order - ORDERGranting Petitioner¿¿¿s Motion for Pro Hac Vice Admission37 CFR ¿¿ 4210 (P.T.A.B. Aug. 14, 2020)
Granting Petitioner’s Motion for Pro Hac Vice Admission
Petitioner filed a motion for pro hac vice admission of Ms. Hallie Kiernan in this proceeding.
Counsel may be admitted pro hac vice upon a showing of good cause, subject to the condition that lead counsel is a registered practitioner.
Specifically, if lead counsel is a registered practitioner, back-up counsel may be permitted to appear pro hac vice “upon showing that counsel is an experienced litigating attorney and has an established familiarity with the subject matter at issue in the proceeding.” Id. For the reasons set forth in the Motion and the accompanying declaration of Ms. Kiernan (Ex. 1020), good cause exists to admit Ms. Kiernan pro hac vice in this proceeding.
ORDERED that the Motion is granted, and Ms. Hallie Kiernan is authorized to represent Petitioner as back-up counsel in the above-listed proceeding; FURTHER ORDERED that a registered practitioner will continue to represent Petitioner as lead counsel in the above-listed proceeding; and FURTHER ORDERED that Ms. Kiernan is to comply with the Board’s Rules of Practice for Trials set forth in Part 42 of Title 37, Code of Federal Regulations, and the Office Patent Trial Practice Guide, and is subject to the USPTO’s Rules of Professional Conduct set forth in 37 C.F.R.
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28 Order: ORDERGranting Petitioner¿¿¿s Motion for Pro Hac Vice Admission37 CFR ¿¿ 4210

Document IPR2019-01649, No. 28 Order - ORDERGranting Petitioner¿¿¿s Motion for Pro Hac Vice Admission37 CFR ¿¿ 4210 (P.T.A.B. Aug. 14, 2020)
Granting Petitioner’s Motion for Pro Hac Vice Admission
Petitioner filed a motion for pro hac vice admission of Ms. Hallie Kiernan in this proceeding.
Counsel may be admitted pro hac vice upon a showing of good cause, subject to the condition that lead counsel is a registered practitioner.
Specifically, if lead counsel is a registered practitioner, back-up counsel may be permitted to appear pro hac vice “upon showing that counsel is an experienced litigating attorney and has an established familiarity with the subject matter at issue in the proceeding.” Id. For the reasons set forth in the Motion and the accompanying declaration of Ms. Kiernan (Ex. 1020), good cause exists to admit Ms. Kiernan pro hac vice in this proceeding.
ORDERED that the Motion is granted, and Ms. Hallie Kiernan is authorized to represent Petitioner as back-up counsel in the above-listed proceeding; FURTHER ORDERED that a registered practitioner will continue to represent Petitioner as lead counsel in the above-listed proceeding; and FURTHER ORDERED that Ms. Kiernan is to comply with the Board’s Rules of Practice for Trials set forth in Part 42 of Title 37, Code of Federal Regulations, and the Office Patent Trial Practice Guide, and is subject to the USPTO’s Rules of Professional Conduct set forth in 37 C.F.R.
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30 Order: ORDERConduct of the Proceeding37 CFR ¿¿ 425

Document IPR2019-01649, No. 30 Order - ORDERConduct of the Proceeding37 CFR ¿¿ 425 (P.T.A.B. Aug. 14, 2020)
Patent Owner requested that its Response and accompanying exhibits be deemed timely, and that it be permitted to file a corrected Certificate of Service.
In its email to the Board on July 24, 2020, Patent Owner also explained that it noticed some incorrect citations in the Zatkovitch Declaration (Ex. 2005) that accompanies its Response.
In an email to the Board on August 13, 2020, the parties indicated that they do not object to expungement of the original Zatkovitch Declaration filed on July 23, 2020.
ORDERED that Patent Owner’s request that its Response and accompanying exhibits be deemed timely is granted;
FURTHER ORDERED that Patent Owner’s request to file a corrected Certificate of Service for its Response and accompanying exhibits is granted;
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