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29 Order: ORDERGranting Petitioner¿¿¿s Motion for Pro Hac Vice Admission37 CFR ¿¿ 4210

Document IPR2019-01649, No. 29 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 Mr. Bijal Vakil 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 Mr. Vakil (Ex. 1019), good cause exists to admit Mr. Vakil pro hac vice in this proceeding.
ORDERED that the Motion is granted, and Mr. Bijal Vakil 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 Mr. Vakil 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. §§ 11.101 et
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15 Order Conduct of Proceeding: Order Conduct of the Proceeding

Document IPR2019-01649, No. 15 Order Conduct of Proceeding - Order Conduct of the Proceeding (P.T.A.B. Jun. 10, 2020)
Introduction On June 8, 2020, the parties filed a joint request by email (Exhibit 3002) to change Due Dates 1–8 in IPR2019-01625, IPR2019-01627, and IPR2019-01629.
The parties jointly represent that Patent Owner will not be filing any motion to amend claims.
Discussion Based on the representation that Patent Owner will not be filing any motion to amend, we authorize the requested changes for Due Dates 1–8 in each of IPR2019-01625, IPR2019-01627, and IPR2019-01629, as summarized in the table in Exhibit 3003.
The requested changes do not delay ultimate disposition of the cases.
Nor do they impose a burden on the Board, given that Patent Owner will not be filing any motion to amend claims.
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15 Order Conduct of Proceeding: Order Conduct of the Proceeding

Document IPR2019-01649, No. 15 Order Conduct of Proceeding - Order Conduct of the Proceeding (P.T.A.B. Jun. 10, 2020)
Introduction On June 8, 2020, the parties filed a joint request by email (Exhibit 3002) to change Due Dates 1–8 in IPR2019-01625, IPR2019-01627, and IPR2019-01629.
The parties jointly represent that Patent Owner will not be filing any motion to amend claims.
Discussion Based on the representation that Patent Owner will not be filing any motion to amend, we authorize the requested changes for Due Dates 1–8 in each of IPR2019-01625, IPR2019-01627, and IPR2019-01629, as summarized in the table in Exhibit 3003.
The requested changes do not delay ultimate disposition of the cases.
Nor do they impose a burden on the Board, given that Patent Owner will not be filing any motion to amend claims.
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14 Order Conduct of Proceeding: Order Conduct of Proceeding

Document IPR2019-01649, No. 14 Order Conduct of Proceeding - Order Conduct of Proceeding (P.T.A.B. Jun. 2, 2020)
1 The parties are not authorized to use the combined caption above for filing papers.
The participants were Judges Lee, Weinschenk, and Trock, and respective counsel for the parties.
The subject matter of discussion was consolidation of oral hearings for IPR2019-01649 and IPR2019-01650.
Because there is substantial overlap in the claimed subject matter and the applied prior art, and because each party has common representation in the two proceedings, we grant the proposal to consolidate the oral hearings for IPR2019-01649 and IPR2019-01650.
Order It is ORDERED that parties’ joint request to consolidate the oral hearings for IPR2019-01649 and IPR2019-01650 is granted; and FURTHER ORDERED that oral hearings for IPR2019-01649 and IPR2019-01650 will be consolidated, and will take place on January 27, 2021.
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12 Order: SCHEDULING ORDER

Document IPR2019-01649, No. 12 Order - SCHEDULING ORDER (P.T.A.B. Apr. 27, 2020)
For example, reasonable expenses and attorneys’ fees incurred by any party may be levied on a person who impedes, delays, or frustrates the fair examination of a witness.
To satisfy this requirement, Patent Owner should request a conference call with the Board no later than two weeks prior to DUE DATE 1.
Unless the Board notifies the parties otherwise, oral argument, if requested, will be held at the USPTO headquarters in Alexandria.
The parties may request that the oral argument instead be held at the San Jose, California, USPTO Regional Office.
Alternatively, the parties may jointly file a paper stating their preference for the hearing location within one month of this Order.
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11 Decision Granting Institution: DECISIONGranting Institution of Inter Partes Review

Document IPR2019-01649, No. 11 Decision Granting Institution - DECISIONGranting Institution of Inter Partes Review (P.T.A.B. Apr. 27, 2020)
After considering the evidence and arguments presented in the Petition and Preliminary Response, we determine that Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims of the ’566 patent is unpatentable.
As discussed in more detail below, Petitioner asserts that a person of ordinary skill in the art “would have found it obvious to incorporate Vrotsos’s teaching into Proctor in order to make its smart card reader device portable.” Id. at 22.
Petitioner presents evidence that Proctor’s sensor includes a modem that converts the recorded information read from the smart card to a modulated tonal pattern suitable for transmission to a connector on a mobile phone.
According to Patent Owner, “[t]he disclosure of the secure microprocessor in connection with achieving the appropriate (encrypted or non-encrypted) analog-audio- formatted signal for transmission to the disclosed jack of a mobile communication device more than ‘reasonably shows’ that the inventors possessed” the claimed invention.
Patent Owner responds that a person of ordinary skill in the art “would have understood from the [Tang] Provisional’s disclosure of a reader sending an analog signal to the jack of a cell phone with the intent of further transmission to a server, and the discussion of data over voice communications, to indicate that further processing would be done in the phone.”2 Prelim. Resp. 30 (citing Ex. 2004 ¶¶ 23–24).
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No. 1 COMPLAINT for patent infringement against Square, Inc

Document 43614223 Canada Inc d/b/a AnywhereCommerce v. Square, Inc., 5:19-cv-04311, No. 1 (N.D.Cal. Jul. 26, 2019)
Complaint
Additionally, Square has provided Point of Sale software and transaction servers in the United States for facilitating infringement, instructed its users to connect its products to a mobile communication device such as a cell phone or tablet, and directed use of the Square Point of Sale app on a mobile communication device – all in furtherance of Square’s infringement of the Asserted Patents and, upon information and belief, all within or directed from this district.
With its deep industry knowledge, AnywhereCommerce has built a platform of products and services that enables clients and partners to quickly extend payment acceptance for large and small businesses everywhere.
Square has knowingly and actively aided and abetted the direct infringement of 107. the ‘566 Patent by instructing and encouraging its customers, purchasers, and users to use the ‘566 Accused Products.
Square has knowingly and actively aided and abetted the direct infringement of 127. the ‘084 Patent by instructing and encouraging its customers, purchasers, and users to use the ‘084 Accused Products.
The communication device then transmits the encrypted signal via software from the Square Point of Sale app to Square’s transaction servers, which are located at remote, secured facilities.
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5 Notice of Filing Date Accorded to Petition: Notice of Accord Filing Date

Document IPR2019-01649, No. 5 Notice of Filing Date Accorded to Petition - Notice of Accord Filing Date (P.T.A.B. Nov. 13, 2019)
Patent Owner is advised of the requirement to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.
The parties are advised that under 37 C.F.R. § 42.10(c), recognition of counsel pro hac vice requires a showing of good cause.
Such motions shall be filed in accordance with the “Order -- Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-00639, Paper 7, a copy of which is available on the Board Web site under “Representative Orders, Decisions, and Notices.” The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in Patent Trial and Appeal Board End to End (PTAB E2E), accessible from the Board Web site at http://www.uspto.gov/PTAB.
Many non-profit organizations, both inside and outside the intellectual property field, offer alternative dispute resolution services.
If the parties actually engage in alternative dispute resolution, the Case IPR2019-01649 Patent 9,016,566 B2 PTAB would be interested to learn what mechanism (e.g., arbitration, mediation, etc.) was used and the general result.
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39 Reply: Petitioners Reply Motion to Exclude Evidence

Document IPR2019-01649, No. 39 Reply - Petitioners Reply Motion to Exclude Evidence (P.T.A.B. Jan. 20, 2021)
Patent Owner’s response (Paper 38) highlights the exact reasons that allowing Exhibits 2001 and 2002 into the record would unduly prejudice Petitioner.
Patent Owner relies on these exhibits solely to allege Petitioner’s statements in the instant proceeding are somehow inconsistent with those made in the unrelated Morley IPR seven years ago.
Undeterred, Patent Owner persists in asking this Board to include these prejudicial exhibits in hopes of propping up its meritless argument.
The Board should reject Patent Owner’s attempts to obscure the matters properly at issue in this proceeding and exclude Exhibits 2001 and 2002 as unduly prejudicial to Petitioner.
However, the Board did not require a finding that any claim in the prior art patent had written description support in its provisional application.
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36 Motion: Petitioners Motion to Exclude Evidence

Document IPR2019-01649, No. 36 Motion - Petitioners Motion to Exclude Evidence (P.T.A.B. Jan. 6, 2021)
The Board may “exclude the … evidence in their entirety, or alternatively, decline to consider the … related evidence.” CBS Interactive Inc. v. Helferich Patent Licensing, LLC, IPR2013-00033, Paper 79, at 3 (PTAB Aug. 9, 2013).
Exhibit 2001 is the Corrected Petition for Inter Partes Review in IPR2014-00312, Square, Inc. v. REM Holdings 3, LLC (“Morley IPR”), and is dated January 23, 2014.
The Patent Owner Response (Paper 23) cites Exhibit 2001 for the unfounded proposition that Petitioner had previously argued in the Morley IPR proceeding that the ’459 Provisional (Exhibit 1005) provides written description support under 35 U.S.C. § 112 to entitle the ’566 patent claims the benefit of an early priority date.
3 In 2015, the Federal Circuit clarified when a granted patent is effective as prior art based on the filing date of its provisional application in Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015) (a challenger must additionally identify written description support of at least some of the issued claims in the prior art patent by its provisional application, in accordance with 35
Respectfully submitted, /David M. Tennant/ David M. Tennant (Reg. No. 48,362) WHITE & CASE LLP 701 Thirteenth Street, NW Washington, DC 20005 Counsel for Petitioner
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33 Reply: Patent Owner Sur Reply

Document IPR2019-01649, No. 33 Reply - Patent Owner Sur Reply (P.T.A.B. Nov. 25, 2020)
The two inquiries are fact dependent, not mutually exclusive, and the Board can assess such arguments independently under their respective standards for written description and obviousness in view of prior art.
Proctor does not, as Petitioner tried to suggest, disclose that Proctor’s terminal 36 reads unique data from “a memory chip that records information beyond identifying the card, including balance and available credit.” Petition@19-20.
The full sentence from Proctor is: While effective for transmitting spoken words, the compression responds to modem tones in a way that corrupts the data carried therein, and renders the result unusable.
And, with respect to the findings in the Institution Decision regarding support for the ‘566 patent claims in the Tang Provisional – i.e., its priority over Morley – Petitioner has not provided anything persuasive to change those conclusions.
According to Petitioner, “[t]his reasoning fails to meet the required standard for written description for several reasons.” First of all, the 2 Petitioner’s declarant McNair also provided evidence regarding the Tang Provisional disclosure for the Board’s consideration at the Institution stage.
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32 Reply: Petitioners Reply to Patent Owners Response

Document IPR2019-01649, No. 32 Reply - Petitioners Reply to Patent Owners Response (P.T.A.B. Oct. 14, 2020)
PO does not rebut and thereby concedes that Eisner in combination with Vrotsos renders obvious a smart card reader device that is portable, and the Board should deem this a waiver.
Petitioner established the ’459 Provisional fails to provide adequate written description support for at least (1) the producing and converting functions of the sensor, (2) the further processing in the phone, and (3) the recorded information on an integrated circuit of the smart card.
Because the Morley IPR applies a different legal standard relying on different prior art to invalidate a different patent, it is wholly irrelevant to the issues presented in Ground 4, and PO’s arguments should be disregarded.
Left without any disclosure of any recorded information in the ’459 Provisional, PO resorts to pointing to the ’459 Provisional’s “smart card reader” and “credit card/debit card” (POR, 51-52), yet identical terms in the prior art somehow do not render obvious the same limitation (id., 14-15, 30-31, 38-39).
Moreover, PO’s general complaint about hindsight bias (POR, 54) does not contradict Petitioner’s demonstration that a POSITA would have been motivated to combine the prior art references in Grounds 1-4.
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25 Other Not for motions: Corrected Certificate of Service

Document IPR2019-01649, No. 25 Other Not for motions - Corrected Certificate of Service (P.T.A.B. Jul. 30, 2020)
CERTIFICATE OF SERVICE I hereby certify that a true and correct copy of the Patent Owner Response for IPR2019-01649 was served on July 23, 2020 via E-Mail to counsel for Petitioners at the following: David M. Tennant White & Case LLP 701 Thirteenth Street, NW Washington, DC 20005 dtennant@whitecase.
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18 Motion: Petitioners Motion for Admission Pro Hac Vice of Bijal Vakil

Document IPR2019-01649, No. 18 Motion - Petitioners Motion for Admission Pro Hac Vice of Bijal Vakil (P.T.A.B. Jul. 10, 2020)
Pursuant to 37 C.F.R. §42.10(c), Petitioner Square, Inc. (“Petitioner”) requests that the Board admit Bijal Vakil pro hac vice in this proceeding.
Mr. Vakil has read and will comply with the Office Patent Trial Guide and the Board’s Rules for Practices for Trials set forth in part 42 of title 37 of the Code of Federal Regulations, and he agrees to be subject to the USPTO Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
Mr. Vakil is an experienced litigating attorney who has familiarity with the subject matter at issue in the proceeding, including the ’566 patent, the parties’ written submissions, and the cited references.
Patent No. 9,016,566 submissions and cited references, admission of Mr. Vakil will ease the burden on Petitioner’s existing lead and backup counsels in upcoming actions.
For all of the reasons set forth above, Petitioner respectfully requests that the Board admit Bijal Vakil pro hac vice in this proceeding.
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19 Motion: Petitioners Motion for Admission Pro Hac Vice of Hallie Kiernan

Document IPR2019-01649, No. 19 Motion - Petitioners Motion for Admission Pro Hac Vice of Hallie Kiernan (P.T.A.B. Jul. 10, 2020)
Pursuant to 37 C.F.R. §42.10(c), Petitioner Square, Inc. (“Petitioner”) requests that the Board admit Hallie Kiernan pro hac vice in this proceeding.
Ms. Kiernan has read and will comply with the Office Patent Trial Guide and the Board’s Rules for Practices for Trials set forth in part 42 of title 37 of the Code of Federal Regulations, and she agrees to be subject to the USPTO Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
Ms. Kiernan is a litigating attorney who has familiarity with the subject matter at issue in the proceeding, including the ’566 patent, the parties’ written submissions, and the cited references.
In view of Ms. Kiernan’s knowledge of the ’566 patent, parties’ written submissions and cited references, admission of Ms. Kiernan will ease the burden on Petitioner’s existing
For all of the reasons set forth above, Petitioner respectfully requests that the Board admit Hallie Kiernan pro hac vice in this proceeding.
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