Case 6:21-cv-01005-ADA Document 9 Filed 11/29/21 Page 1 of 19

IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS
WACO DIVISION

ETLA, LLC,

Plaintiff,

v. Civil Action No. 6:21-cv-1005

PAYPAL, INC.,

Defendant.

DEFENDANT PAYPAL’S RULE 12(b)(6)

MOTION TO DISMISS FOR LACK OF ORNAMENTATION AND
LACK OF ORIGINALITY
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TABLE OF CONTENTS

INTRODUCTION ...........................................................................................................................1

LEGAL STANDARD ................................................................................................................................... 4

ARGUMENT ................................................................................................................................................ 6

I. The Asserted Patent is Invalid Because the Claimed Design is not orignal and solely
Functional ........................................................................................................................... 6

A. Barcodes and Dollar Signs Are Not Original ........................................................ 6

B. The Design Claimed in the Asserted Patent Serves Utilitarian Purposes and Is
Thus Functional ..................................................................................................... 9

C. The Asserted Patent is Functional Because No Alternative Designs Exist That

Provide the Same Functional Capabilities ........................................................... 11

II. Plaintiff’s Complaint Cannot Be Cured by the Allegation of Other Facts and Should be
Dismissed with Prejudice.................................................................................................. 14

CONCLUSION ........................................................................................................................................... 14

i
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TABLE OF AUTHORITIES

Cases Page(s)

Amini Innovation Corp. v. Anthony Cal., Inc.,

439 F.3d 1365 (Fed. Cir. 2006) .............................................................................................................. 6

Ashcroft v. Iqbal,
556 U.S. 662 (2009) ........................................................................................................................... 4, 5

Bell Atlantic Corp. v. Twombly,

550 U.S. 544 (2007) ............................................................................................................................... 4

Berry Sterling Corp. v. Pescor Plastics, Inc.,

122 F.3d 1452 (Fed. Cir. 1997) .................................................................................................... 6, 9, 11

Best Lock Corp. v. Ilco Unican Corp.,

94 F.3d 1563 (Fed. Cir. 1996) .............................................................................................................. 11

In re Borden,
90 F.3d 1570 (Fed. Cir. 1996) ................................................................................................................ 5

Cardiac Pacemakers, Inc. v. Coratomic, Inc.,

535 F. Supp. 280 (D. Minn. 1982), aff’d, 702 F.2d 671 (8th Cir. 1983) ................................................ 9

Ethicon Endo-Surgery, Inc. v. Covidien, Inc.,

796 F.3d 1312 (Fed. Cir. 2015) ..................................................................................................... passim

Hupp v. Siroflex of Am., Inc.,

122 F.3d 1456 (Fed. Cir. 1997) ............................................................................................................ 12

International Seaway Trading Corp. v. Walgreens Corp.,

589 F.3d 1233 (Fed. Cir. 2009) .............................................................................................................. 5

Jones v. Robinson Prop. Grp., L.P.,

427 F.3d 987 (5th Cir. 2005) ................................................................................................................ 14

L.A. Gear, Inc. v. Thom McAn Shoe Co.,

988 F.2d 1117 (Fed. Cir. 1993) ........................................................................................................ 6, 11

OddzOn Prods. v. Just Toys,

122 F.3d 1396 (Fed. Cir. 1997) ...................................................................................................... 12, 13

Performance Designed Prods. LLC v. Mad Catz, Inc.,

No. 16-cv-629-GPC (RBB), 2016 WL 3552063 (S.D. Cal. Jun. 29, 2016) ......................................... 14

PHG Techs., LLC v. St. John Cos., Inc.,

469 F.3d 1361 (Fed. Cir. 2006) ............................................................................................................ 12

Richardson v. Stanley Works, Inc.,

597 F.3d 1288 (Fed. Cir. 2010) .................................................................................................... 5, 9, 10

ii
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Cases Page(s)

Sport Dimension, Inc. v. Coleman Co.,

No. CV 14-00438 BRO, 2015 WL 13309300 (C.D. Cal. Feb. 9, 2015), rev’d on other
grounds, 820 F.3d 1316 (Fed. Cir. 2016) ............................................................................................. 12

Walker v. Beaumont Indep. Sch. Dist.,

938 F.3d 724 (5th Cir. 2019) .................................................................................................................. 5

Z Produx, Inc. v. Make-Up Art Cosmetics, Inc.,

No. CV 13-00734 DDP RZX, 2013 WL 5941049 (C.D. Cal. Nov. 5, 2013), aff’d, 568
F. App’x 897 (Fed. Cir. 2014) ........................................................................................................ 12, 13

In re Zahn,
617 F.2d 261 (C.C.P.A. 1980) ................................................................................................................ 4

Statutes

35 U.S.C. §§ 102 and 103 ............................................................................................................................. 5

35 U.S.C. § 171 ............................................................................................................................................. 5

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INTRODUCTION

The single design patent in this case should never have issued. The purported design—

which was filed in 2020—is just a portion of a standard barcode plus the numbers “$0.00” in a

standard font. Remarkably, this statement is not an exaggeration. When the non-limiting dashed

lines are removed, the only remain limiting elements are:

A barcode is a standardized way of making data machine readable. It is a translation—not

an ornamental design. Barcodes were invented in the early 1950s and have seen prevalent use

throughout society for decades. The U.S. dollar was created by an act of Congress in 1792 with

Archibald Binny inventing the dollar sign at approximately the same time. Perhaps no symbol is

more universally recognized to denote a functional amount of money.

If this case were to proceed, the evidence would show that Mr. Grecia (the named inventor

who also controls the Plaintiff) filed for this patent after seeing barcodes and dollar signs on many,

many apps and programs. However, it is not even necessary to get to the evidence because design

patents must be ornamental (non-functional) and original. There is no world in which a standard

bar code or “$0.00” in a standard font can be non-functional or original in 2020. Given this,

Plaintiff’s complaint fails to present a claim on which any relief can be granted and should be

dismissed.

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BACKGROUND

While the facts set forth in the introduction alone are sufficient to grant this motion, in the

interest of a complete record, PayPal provides the following background and additional legal

argument. Plaintiff ETLA is an entity controlled by William Grecia. As set forth in PayPal’s

contemporaneously filed motion to have Mr. Grecia designated as a vexatious litigant, Mr. Grecia

has a long history of baseless litigation. In less than 10 years, Mr. Grecia has filed at least 68

lawsuits against at least 60 defendants, ranging from Starbucks to Sears to Microsoft to banking

institutions. None of these litigations appears to have been filed in good faith. Earlier this year,

Mr. Grecia turned his sights on PayPal—filing four separate lawsuits this year alone, either

personally or through one of three different shell companies. See generally Dkt. No. 11. While

most (if not all) of the previous cases asserted by Mr. Grecia appear to lack merit, the design patent

in this case (as well as the one in the subsequently filed case using his WePay entity) are uniquely

flawed.

Defendant PayPal, on the other hand, has built a leading technology platform that enables

digital and mobile payments on behalf of customers and merchants worldwide. Among PayPal’s

core values is empowering people everywhere by democratizing the management and movement

of money. To that end, PayPal has directed significant resources and efforts toward its mobile

platform. Dollar signs and barcodes are common functional elements that have been used

generally in society for decades (at least) and in the online payments industry specifically for many

years prior to 2020.

On September 28, 2021, ETLA filed its Complaint alleging that PayPal infringes U.S.

Design Patent No. D931,899—filed in 2020 and issued in 2021—entitled “Display Screen Portion

with Animated Graphical User Interface.” Dkt. No. 1 (“Compl.”). The Asserted Patent

purportedly covers the ornamental design of a graphical user interface. ETLA alleges in its sole

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count that PayPal infringes the second embodiment of the Asserted Patent by “making, using,

offering to sell and/or selling in the United states and exporting from the United States the PayPal

‘Super App’ animated graphical user interface products, which embodies the design covered by

the ’899 patent.” Compl. ¶¶ 10–12. The ’899 patent asserts that Figs. 1 & 2 and Figs. 3–5 each

constitute an animated user interface.1 ETLA alleges infringement of the second embodiment,

which is represented by Figs. 3–5 of the Asserted Patent.2 Shown below is ETLA’s side-by-side

claim chart with allegations mapping Figs. 3–5 to PayPal’s Super App graphical user interface.

1
The figures do not show anything approaching an animation. There are no common elements between the
figures. Two random unrelated images do not make an animation. However, for the purposes of this motion,
PayPal ignores this defect and the fact that the elements of PayPal’s Super App relied upon by ETLA do not
look the same as the Asserted Patent’s claimed design, at least because the font is clearly different and the
barcode portion has a different thickness than what is shown in the patent.
2
The only difference between Figs. 1 & 2 and Figs. 3–5 is Fig. 4, which is composed entirely of non-limiting
dashed lines. To the extent Figs. 3–5 lack originality and ornamentation, Figs. 1 & 2 necessarily do as well.

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Compl., Ex. B at 2–4.

The Asserted Patent only theoretically covers the design shown in the figures. Further,

“[t]he broken line showing of a portion of a display screen and a computer device . . . forms no

part of the claimed design. The broken line showing of text and portion of the graphical user

interface . . . represents environmental subject matter and forms no part of the claimed design.”

Compl., Ex. A (Asserted Patent) at 1 (Description); see also In re Zahn, 617 F.2d 261, 263

(C.C.P.A. 1980) (ruling that any parts of the figures that are within broken lines are unclaimed

subject matter and not part of the design). Excluding the unclaimed subject matter within broken

lines, all that remains of ETLA’s patent are (1) a portion of a standardized, well-known barcode

and (2) a standardized, well-known display of U.S. currency in dollars and cents using a dollar

sign ($) and a decimal (.) followed by two numerical digits (e.g., $0.00), printed in a generic sans-

serif font (as shown on page 1 above).

LEGAL STANDARD

The Court is well-aware of the legal standard set forth in Twombly and Iqbal, and

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Defendant will not restate it for the Court.3 See Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)

(quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007)). In the design patent space,

35 U.S.C. § 171 requires that patented designs be “new, original, and ornamental.” The first prong

“new” is a reference to 35 U.S.C. §§ 102 and 103. In re Borden, 90 F.3d 1570, 1574 (Fed. Cir.

1996) (“[d]esign patents are subject to the same conditions on patentability as utility patents”).

While the Asserted Patent is clearly not “new,” that is not the focus of this motion.

The second requirement for “originality” bars a design derived from any source or person

other than the individuals named as inventors. International Seaway Trading Corp. v. Walgreens

Corp., 589 F.3d 1233, 1238, 93 USPQ2d 1001 (Fed. Cir. 2009) (“Section 171 excludes the word

‘useful’ (to distinguish design patents from utility patents) and adds the word ‘original.’ The

originality requirement in § 171 dates back to 1842 when Congress enacted the first design patent

law. The purpose of incorporating an originality requirement is unclear; it likely was designed to

incorporate the copyright concept of originality-requiring that the work be original with the author

. . . .”). As Mr. Grecia clearly took the dollar sign and the barcode from elsewhere in the public

space, the lack of originality is a subject of this motion.

The third prong “ornamental” means that “[i]f the patented design is primarily functional

rather than ornamental, the patent is invalid.” Richardson v. Stanley Works, Inc., 597 F.3d 1288,

1293–94 (Fed. Cir. 2010). “[W]hen the claimed design is dictated by the use or purpose of the

article,” the design patent is “primarily functional rather than ornamental.” Ethicon Endo-Surgery,

Inc. v. Covidien, Inc., 796 F.3d 1312, 1328 (Fed. Cir. 2015). “[T]he determination of whether the

3
Defendant notes that in addition to the complaint, the Court may consider matters of public record, which
Defendant asserts covers the fact that Mr. Grecia did not design the dollar sign or the barcode in 2020. See
Walker v. Beaumont Indep. Sch. Dist., 938 F.3d 724, 735 (5th Cir. 2019). However, to the extent that the Court
were to convert this motion into a summary judgment motion, there can also be no question that Mr. Grecia did
not design the dollar sign and barcode in 2020.

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patented design is dictated by the function of the article of manufacture must ultimately rest on an

analysis of its overall appearance.” Berry Sterling Corp. v. Pescor Plastics, Inc., 122 F.3d 1452,

1455 (Fed. Cir. 1997); Ethicon, 796 F.3d at 1329. “If the particular design is essential to the use

of the article, it cannot be the subject of a design patent.” L.A. Gear, Inc. v. Thom McAn Shoe Co.,

988 F.2d 1117, 1123 (Fed. Cir. 1993). “Under Federal Circuit law, an aspect of a design patent

‘is functional if it is essential to the use or purpose of the article or if it affects the cost or quality

of the article.’” Amini Innovation Corp. v. Anthony Cal., Inc., 439 F.3d 1365, 1371 (Fed. Cir.

2006).

ARGUMENT

I. THE ASSERTED PATENT IS INVALID BECAUSE THE CLAIMED DESIGN IS

NOT ORIGNAL AND SOLELY FUNCTIONAL

The design of the Asserted Patent is neither original nor ornamental. As set forth below,

the barcode and dollar sign were “invented” by others decades or centuries ago. Even if one were

to give Plaintiff the extreme benefit of the doubt and assume incorrectly that displaying a barcode

or a dollar sign on a screen for the first time could be original, there is no rational argument that

Mr. Grecia—in 2020—originated displaying a barcode or dollar sign on a screen. Beyond this,

barcodes and dollar amounts (in a basic non-ornamental font) are functional representations of

data or currency, and on this additional basis, the patent is invalid and the case cannot proceed.

A. Barcodes and Dollar Signs Are Not Original

A barcode is a standardized, well-known, and universally adopted design for representing

and/or displaying encoded data in a visual, machine-readable form. The barcode was invented

over 50 years ago as a way to express Morse code visually. Since its invention, the “black-and-

white rectangle we all know today” has been used to identify patients in hospitals, validate

prescriptions, automate manufacturing processes, exchange contact information, and pay for goods

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or services, among many use cases.4 Barcodes are even printed in the top right-hand corner of

each issued patent. The practice dates back at least 25 years. See, e.g., U.S. Patent No. 5,078,767,

which issued on January 7, 1992. That year alone, the USPTO granted at least 100,000 patents

with a printed barcode.5 Over six million patents have issued since then.6 PayPal’s very own U.S.

Patent No. 10,176,474 (from 2019) demonstrates this feature:

Moreover, the ’474 patent, which predates the priority date of the Asserted Patent, is itself

directed to a technique for generating barcodes, as shown in Fig. 3 below:

4
See, e.g., “6 Lessons on Innovation From the History of the Barcode,” Inc.com, available at
https://www.inc.com/the-build-network/6-lessons-on-innovation-from-the-history-of-the-barcode.html.
Notably, the authors of this article referred to barcodes as “Morse code expressed visually” – an apt description.
5
See, e.g., “United States Patent Statistics Chart, Calendar Years 1963-2020,” USPTO.gov, available at
https://www.uspto.gov/web/offices/ac/ido/oeip/taf/us_stat.htm.
6
Id.

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Although the ’474 patent is a utility patent, not a design patent, it further exemplifies the

universally adopted black-and-white rectangular barcode purportedly claimed by Plaintiff’s patent.

The U.S. dollar traces back to the days of the Founding Fathers. Congress’s Coinage Act

of 1792 established the dollar as the country’s standard unit of money. The dollar sign was

officially adopted even before this in 1785. Perhaps no symbol is more universally recognized to

denote a functional amount of money.7

Even if one assumes for the purposes of this motion that the barcode portion followed by

a “$0.00” is a legally proper animated design (which it is not), there is no conceivable originality

in displaying a bar code and “$0.00” on a screen. Even PayPal’s very own U.S. Patent No.

9,547,854, which is entitled “User-Friendly Transaction Interface” and predates the priority date

of the Asserted Patent, demonstrates display of “$0.00” in a graphical interface, as shown in at

least Fig. 4 below:

Barcodes and money go back almost as far as the invention of the barcode. Barcodes were

7
See, e.g., “The History of U.S. Currency,” U.S. Currency Education Program, available at
https://www.uscurrency.gov/history.

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developed to capture product data at supermarkets. At least by the eighties, most consumer items

(groceries, home goods, etc.) were tagged with barcodes for pricing. It is essentially inconceivable

that displaying a barcode followed by displaying an amount of money on a screen could be original

in 2020 when the Asserted Patent was filed.

B. The Design Claimed in the Asserted Patent Serves Utilitarian Purposes and Is
Thus Functional

The Asserted Patent is also invalid because the claimed design dictated by the use or

purpose of the article is “primarily functional rather than ornamental.” See Ethicon, 796 F.3d at

1328. The overall appearance of ETLA’s design demonstrates that it is dictated by its function.

See Berry Sterling, 122 F.3d at 1455; Ethicon, 796 F.3d at 1329.

Courts have found designs that serve a utilitarian purpose to be dictated by their function.

See Richardson, 597 F.3d at 1294. In Richardson, for example, the Federal Circuit held that

several elements of the claimed design for a multi-functional carpentry tool, including the handle,

crowbar, and hammer head “were purely functional elements” and “were thus outside the scope of

the design claim.” Id. at 1294. The Federal Circuit explained that the handle was designed as “the

longest arm of the tool to allow for maximum leverage,” and the hammer head was “flat on its end

to effectively deliver force to the object being struck.” Id.

Likewise, in Cardiac Pacemakers, Inc. v. Coratomic, Inc., 535 F. Supp. 280 (D. Minn.

1982), aff’d, 702 F.2d 671 (8th Cir. 1983), the court found that the oval shape of an accused

pacemaker “was chosen because it was thought this was a more biocompatible design in that the

problems of skin necrosis, migration, and unsightly bulge would be minimized.” Cardiac

Pacemakers, 535 F. Supp. at 285. Because the oval shape was therefore “primarily functional,”

the court found the design patent invalid. Id. at 286.

As in Richardson and Cardiac Pacemakers, the features of the claimed design—the

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barcode and the standardized display of currency—are “purely functional elements” and “thus

outside the scope of the design claim.” Richardson, 597 F.3d at 1294. The shape of the barcode,

with parallel vertical lines, spaced at varying length, is a well-known, universally adopted design

for representing and/or displaying encoded data in a visual, machine-readable form. As explained

above, this particular design was invented over 50 years ago as a way to express Morse code

visually.8 The barcode is a translation of data, not an ornamental design. The data is encoded in

a particular way that barcode readers are designed to read. Certainly, a barcode is purely functional

because changing, for example, its shape or its composition by adding additional vertical lines

and/or changing the spacing of the lines, would fundamentally alter the represented data. A

barcode of a different shape would therefore lose its only function of encoding specific data. Put

another way, one cannot alter the thickness of the lines in a barcode for aesthetic reasons because

such a modification would change the data represented, which would render the barcode useless.

PayPal’s ’474 patent further exemplifies the functional, context-specific use for each

barcode. See ’474 patent at Abstract (The invention “generates a transaction-specific barcode on

the display, where the barcode contains a plurality of funding sources for the transaction and/or

merchant loyalty, reward, or membership numbers. The barcode can be scanned to make

purchases at a point of sale (POS).”) (emphases added).

Similarly, displaying a dollar sign ($) and a decimal (.) followed by two numerical digits

(e.g., $0.00) is a functional representation of a specific amount of a specific currency. It is the

only way to accurately and precisely quantify an amount of money in U.S. dollars and cents. There

is no other universally adopted shorthand. Changing the digits and/or the location of the decimal

8
See, e.g., “6 Lessons on Innovation From the History of the Barcode,” Inc.com, available at
https://www.inc.com/the-build-network/6-lessons-on-innovation-from-the-history-of-the-barcode.html.

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would functionally change the amount of money represented; modifying the dollar sign would

functionally change the unit of currency (e.g., from U.S. dollars to euros). Nor does the $0.00 in

the Asserted Patent use any ornamental fonts or markings. As shown and explained above, the

dollar amounts are displayed in a standard sans-serif font. Because the shape of the claimed

designs is “essential to the use” of the barcodes and currency display, the claimed designs “cannot

be the subject of a design patent.” Ethicon, 796 F.3d at 1328.

The lack of any ornamental design features on the remainder of the display screen and/or

claimed graphical user interface, such as a particular typeface, icon, or unique shape, further

demonstrates that the claimed designs are dictated by utilitarian purposes―that is, implementing

a standardized barcode and displaying United States currency in a standardized format using

dollars and cents. See Berry Sterling Corp. v. Prescor Plastics, Inc., 122 F.3d 1452, 1456 (Fed.

Cir. 1997) (noting that “whether there are any elements in the design or an overall appearance

clearly not dictated by function” is an appropriate consideration for assessing invalidity).

C. The Asserted Patent is Functional Because No Alternative Designs Exist That

Provide the Same Functional Capabilities

There are also no alternatives to the functional elements claimed in the Asserted Patent’s

design. “[T]he availability of alternative designs [i]s an important―if not dispositive―factor in

evaluating the legal functionality of a claimed design.” Ethicon, 796 F.3d at 1329–30. “When there

are several ways to achieve the function of an article of manufacture, the design of the article is

more likely to serve a primarily ornamental purpose.” L.A. Gear, 988 F.2d at 1123. For example,

the Federal Circuit invalidated a key blade design as primarily functional where the blade had to

“be designed as shown in order to perform its intended function—to fit into its corresponding

lock’s keyway” and there were thus no alternative designs available. Best Lock Corp. v. Ilco

Unican Corp., 94 F.3d 1563, 1566 (Fed. Cir. 1996). Conversely, a concrete mold made to produce

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a simulated stone pathway was held to be ornamental where the pattern in the mold was dictated

by aesthetics rather than function, and could have been designed in any number of ways. Hupp v.

Siroflex of Am., Inc., 122 F.3d 1456, 1461 (Fed. Cir. 1997); see also Ethicon, 796 F.3d at 1328–

29 (explaining that in Hupp, the design was ornamental because “there was no utilitarian reason

the mold had to impress the particular claimed rock walkway pattern into the concrete”).

However, “to be considered an alternative, the alternative design must simply provide the

same or similar functional capabilities.” Ethicon, 796 F.3d at 1331. Alternative designs “are not

truly alternatives” where the “alleged alternative designs would adversely affect the utility of the

specified article.” PHG Techs., LLC v. St. John Cos., Inc., 469 F.3d 1361, 1367 (Fed. Cir. 2006);

see also Sport Dimension, Inc. v. Coleman Co., No. CV 14-00438 BRO (MRWx), 2015 WL

13309300, at *9 (C.D. Cal. Feb. 9, 2015), rev’d on other grounds, 820 F.3d 1316 (Fed. Cir. 2016)

(finding armbands in claimed design for a personal floatation device were functional where “any

design without armbands would adversely affect the utility of the design”).

Here, there are no “true” alternative designs available, because those designs would

“adversely affect the utility of the specified article.” PHG Techs., 469 F.3d at 1367; see also Z

Produx, Inc. v. Make-Up Art Cosmetics, Inc., No. CV 13-00734 DDP RZX, 2013 WL 5941049, at

*5 (C.D. Cal. Nov. 5, 2013), aff’d, 568 F. App’x 897 (Fed. Cir. 2014). In Ethicon, the Federal

Circuit held the patented design for a surgical instrument was not primarily functional where there

were alternative designs that could provide “the same or similar functionality” as the patented

design. Ethicon, 796 F.3d at 1330. Conversely, in OddzOn, within a design patent for a football,

an arrow-like tail with fins was functional because the tail and fins added stability to the football’s

flight. OddzOn Prods. v. Just Toys, 122 F.3d 1396, 1406 (Fed. Cir. 1997). Even though alternative

designs did not include the tail and fins, the Federal Circuit explained that these features were “no

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less functional simply because ‘tossing balls’ can be designed without them.” Id. The tail and fins

still contributed to the goal of the design to allow the football to “travel farther than a traditional

foam football.” Id.

Similarly, in Z Produx, the court held that a cosmetic palette with a clear window and an

empty base, allowing easy “customization of the palette’s contents” without opening the palette,

was “functional rather than ornamental.” Z Produx, 2013 WL 5941049, at *5. Because “no other

way” existed “to enable the customization of the palette’s contents without leaving the

compartment empty,” the court found the clear top and empty base “‘dictated by the use or purpose

the article.’” Id. (quoting L.A. Gear, 988 F.2d at 1123).

As in OddzOn and Z Produx, alternative designs for the patented graphical user interface

here would lose the functional benefits provided by each element of the design. As discussed

supra, the claimed barcode is a well-known, unoriginal design for representing and/or displaying

encoded data in a visual, machine-readable.9 Any departure from the design would result in loss

of all functionality. For example, the data is coded in a particular way that barcode readers are

designed to read; the two are specifically designed to operate together. Similarly, there is no

alternative design—absent loss of functional benefit—for displaying United States currency in

dollars and cents without using a dollar sign ($) and a decimal (.) followed by two numerical digits

(e.g., $0.00).

Thus, any alternative designs would not be “true alternatives” because they would

adversely affect functionality present in the patented designs. Given the lack of alternative designs

and the functional purposes of the claimed graphical user interface, the Asserted Patent is invalid

9
See, e.g., “6 Lessons on Innovation From the History of the Barcode,” Inc.com, available at
https://www.inc.com/the-build-network/6-lessons-on-innovation-from-the-history-of-the-barcode.html.

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for claiming designs dictated primarily by function.

II. PLAINTIFF’S COMPLAINT CANNOT BE CURED BY THE ALLEGATION OF

OTHER FACTS AND SHOULD BE DISMISSED WITH PREJUDICE

The Complaint should be dismissed with prejudice because any amendment would be

futile. See Jones v. Robinson Prop. Grp., L.P., 427 F.3d 987, 994 (5th Cir. 2005) (leave may be

denied for many reasons including “futility of the amendment”); Performance Designed Prods.

LLC v. Mad Catz, Inc., No. 16-cv-629-GPC (RBB), 2016 WL 3552063, *7 (S.D. Cal. Jun. 29,

2016) (granting motion to dismiss design patent claim with prejudice “as leave to amend would be

futile”). As explained above, Plaintiff cannot state a claim for infringement of the Asserted Patent

because the Asserted Patent is unoriginal and purely functional. Nothing that the Plaintiff could

do would change that, so a dismissal with prejudice is warranted.

CONCLUSION

For the foregoing reasons, PayPal respectfully requests that the Court dismiss ETLA’s

Complaint with prejudice, pursuant to Rule 12(b)(6), for failure to state a claim on which relief

can be granted because the Asserted Patent is invalid for claiming an unoriginal, solely functional

design.

Dated: November 29, 2021 Respectfully Submitted,

FISH & RICHARDSON P.C.

By: /s/ David M. Hoffman

David M. Hoffman
Texas Bar No. 24046084
hoffman@fr.com
111 Congress Avenue, Suite 810
Austin, TX 78701
Tel: (512) 472-5070
Fax: (512) 320-8935

COUNSEL FOR DEFENDANT,

PAYPAL, INC.

PAYPAL’S MOTION TO DISMISS UNDER FRCP 12(b)(6) Page 14

 Case 6:21-cv-01005-ADA Document 9 Filed 11/29/21 Page 19 of 19

CERTIFICATE OF SERVICE

The undersigned hereby certifies that the foregoing document was filed electronically in

compliance with Local Rule CV-5(a) on November 29, 2021, and was served via CM/ECF on all counsel

of record.

/s/ David M. Hoffman

David M. Hoffman

PAYPAL’S MOTION TO DISMISS UNDER FRCP 12(b)(6) Page 15