Samsung v. Wepay - Petition For PGR

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
SAMSUNG ELECTRONICS CO., LTD.

Petitioner
v.
WEPAY GLOBAL PAYMENTS LLC

Patent Owner
Patent No. D. 930,702 S

Issue Date: Sep. 14, 2021
Title: DISPLAY SCREEN PORTION WITH
ANIMATED GRAPHICAL USER INTERFACE
Case No.: PGR2022-00045
PETITION FOR POST GRANT REVIEW

UNDER 35 U.S.C. §§ 321-322
TABLE OF CONTENTS
Page
I. INTRODUCTION ...........................................................................................1
II. STANDING AND PROCEDURAL STATEMENTS ....................................4
III. THE BOARD SHOULD INSTITUTE REVIEW ...........................................4
A. Petitioner Timely Filed This Petition ....................................................4
B. § 325(d) Should Not Bar This Petition. ................................................9
IV. MANDATORY NOTICES .............................................................................9
A. Real Party-in-Interest (37 C.F.R. § 42.8(b)(1)).....................................9
B. Related Matters (37 C.F.R. § 42.8(b)(2)) ............................................10
C. Lead and Back‐Up Counsel (37 C.F.R. § 42.8(b)(3)) .........................11
D. Service Information (37 C.F.R. § 42.8(b)(4)) .....................................12
V. STATEMENT OF PRECISE RELIEF REQUESTED .................................12
VI. OVERVIEW OF THE ’702 PATENT AND THE PRIOR ART ..................13
A. The ’702 Patent ...................................................................................13
B. Prior Art Overview ..............................................................................16
1. Reddy (Ex. 1004) ......................................................................19
2. SGQR (Ex. 1005, 1072) ............................................................23
3. GrabPay (Ex. 1006, 1073) ........................................................31
4. Digital Debit Video (Ex. 1007, 1074).......................................36
5. Digital Debit Patent (Ex. 1008) ................................................44
VII. CLAIM CONSTRUCTION ..........................................................................45
A. Legal Standard for Claim Construction ..............................................45
B. Claim Construction of the ’702 Patent ................................................47
1. The broken lines form no part of the claimed design. ..............47
2. The two embodiments are basically the same and patentably
indistinct from one another. ......................................................49
3. The positions and sizes of the Three Square Arrangement and
the $0.00 relative to the display screen are not part of the
claimed design...........................................................................51
i
VIII. SECTIONS 102, 103 – LEGAL STANDARDS FOR INVALIDITY..........57
A. Section 102 Anticipation .....................................................................57
B. The Ordinary Observer........................................................................58
C. Section 103 Obviousness ....................................................................58
D. The Designer of Ordinary Skill ...........................................................61
IX. SECTIONS 102, 103 – DETAILED EXPLANATION OF GROUNDS FOR
UNPATENTABILITY ..................................................................................61
A. Ground 1: The ’702 Patent claim is anticipated by Reddy. ................61
B. Ground 2: The ’702 Patent claim is obvious over Reddy by itself or
Reddy in view of SGQR......................................................................68
1. The ’702 Patent claim is obvious over Reddy. .........................68
2. The ’702 Patent claim is obvious over Reddy in view of SGQR.
...................................................................................................71
C. Ground 3: The ’702 Patent claim is anticipated by GrabPay..............76
D. Ground 4: The ’702 Patent claim is obvious over the Digital Debit
Video in view of the Digital Debit Patent. ..........................................80
X. CONCLUSION..............................................................................................86
ii
TABLE OF AUTHORITIES
Page(s)
CASES
Apple, Inc. v. Aylus Networks, Inc.,

2015 WL 1870710 (PTAB Apr. 22, 2015) ......................................................... 52
Apple, Inc. v. Samsung Elecs. Co., Ltd.,

678 F.3d 1314 (Fed. Cir. 2012) .......................................................................... 58
Campbell Soup v. Gamon Plus,

10 F.4th 1268 (Fed. Cir. 2021) ........................................................................... 48
Dish Network L.L.C. v. Broadband iTV, Inc.,

IPR2020-01359, Paper 15 (PTAB Feb. 12, 2021) ............................................ 6, 7
Dobson v. Dornan,
118 U.S. 10 (1886) .............................................................................................. 46
Door-Master Corp. v. Yorktowne,

256 F.3d 1308 (Fed. Cir. 2001) .......................................................................... 57
Dynamic Drinkware, LLC v. National Graphics, Inc.,

800 F.3d 1375 (Fed. Cir. 2015) ..............................................................30, 35, 43
Egyptian Goddess, Inc. v. Swisa, Inc.,

543 F.3d 665 (Fed. Cir. 2008) (en banc) ............................................................ 46
Ex parte Appeal No. 315-40,

152 USPQ 71 (Bd. App. 1965) .........................................................51, 65, 76, 85
General Elec. Co. v. United Techs. Corp.,

IPR2017-00425, Paper 39 (PTAB July 2, 2018) ................................................ 42
Google Inc. v. Intellectual Ventures II LLC,

IPR2014-00787, Paper 91 (PTAB July 24, 2020) ........................................52, 56
Google LLC v. Makor Issues & Rights Ltd.,

IPR2016-01535, Paper 32 (PTAB Feb. 12, 2018) .............................................. 22
iii
Gorham Mfg. Co. v. White,
81 U.S. 511 (1871) .............................................................................................. 57
Halliburton Energy Servs., Inc. v. U.S. Well Servs., LLC,

No. IPR2021-01032, Paper 12 (PTAB Jan. 11, 2022) .................................6, 7, 8
High Point Design LLC v. Buyers Direct, Inc.,

730 F.3d 1301 (Fed. Cir. 2013) ..............................................................58, 59, 60
In re Aslanian,
590 F.2d 911 (CCPA 1979) ................................................................................ 20
In re Borden,
90 F.3d 1570 (Fed. Cir. 1996) ...................................................................... 73, 83
In re Glavas,
230 F.2d 447, 109 USPQ 50 (CCPA 1956) ........................................................ 60
In re LAMB,
286 F.2d 610 (C.C.P.A. 1961) ................................................................60, 69, 70
In re Nalbandian,
661 F.2d 1214 (C.C.P.A. 1981) .................................................................... 59, 69
In re Rosen,
673 F.2d 388 (C.C.P.A. 1982) ............................................................................ 58
In re Rubinfield,
270 F.2d 391, 123 USPQ 210 (CCPA 1959) ................................................15, 51
In re Terrorist Attacks on Sept. 11, 2001,

No. 03-MD-1570 (GBD)(SN), 2021 WL 5414948
(S.D.N.Y. Nov. 19, 2021) .......................................................................28, 33, 40
In re Zahn,
617 F.2d 261 (C.C.P.A. 1980) ............................................................................ 47
Int’l Seaway Trading Corp. v. Walgreens Corp.,

589 F.3d 1233 (Fed. Cir. 2009) ..............................................................57, 67, 79
Jazz Pharm., Inc. v. Amneal Pharm., LLC,

895 F.3d 1347 (Fed. Cir. 2018) .......................................................................... 35
iv
London Luxury LLC v. E&E Co., Ltd.,
PGR2021-00083, Ex. 1013 (PTAB May 12, 2021) ...............................28, 34, 40
Lowe’s Home Centers, LLC v. Reddy,

IPR2015-00306, Paper 21 (PTAB Mar. 30, 2016) ............................................. 69
MerchSource LLC v. Dodocase VR, Inc.,

IPR2018-00494, Paper 43 (PTAB Jan. 29, 2019) .............................................. 30
MRC Innovations, Inc. v. Hunter Mfg., LLP,

747 F.3d 1326 (Fed. Cir. 2014) ..................................... 58, 59, 60, 68, 73, 80, 83
NHK Spring Co. v. Intri-Plex Techs., Inc.,

No. IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018)...................................... 4, 7
Sand Revolution II LLC v. Continental Intermodal Group-Trucking LLC,

IPR2019-01393, Paper 24 (PTAB. June 16, 2020) .............................................. 8
Telewizja Polska USA, Inc. v. Echostar Satellite Corp.,

No. 02 C 3293, 2004 WL 2367740 (N.D. Ill. Oct. 15, 2004)............................. 26
Trucook, LLC v. Bond/Helman, Inc.,

2001 WL 826864 (N.D. Il. 2008) ....................................................................... 51
Unified Patents, Inc. v. Berman,

IPR2016-01571, Paper 10 (PTAB Dec. 14, 2016) ............................................... 9
Veeam Software Corp. v. Hybir Inc.,

IPR2020-01037, Paper 39 (PTAB Dec. 2, 2021) ............................................... 22
Wepay Global Payments LLC v. Amazon.com, Inc.,

No. 1:2022-cv-01061 (N.D. Ill.) ...................................................................10, 53
Wepay Global Payments LLC v. Apple Inc.,

No. 6:2022-cv-00223 (W.D. Tex.) ............................................................7, 9, 10
Wepay Global Payments LLC v. Bank of America, N.A.,

1:2022-cv-00105 (N.D. Ill.) ..........................................................................10, 55
Wepay Global Payments LLC v. JPMorgan Chase Bank, N.A.,

1:2022-cv-00103 (N.D. Ill.) ................................................................................ 10
v
Wepay Global Payments LLC v. McDonald’s Corporation,
1:2022-cv-01064 (N.D. Ill.) ................................................................................ 10
Wepay Global Payments LLC v. PayPal, Inc.,

6:2021-cv-01094 (W.D. Tex.) ................................................................10, 54, 79
Wepay Global Payments LLC v. PNC Bank, N.A.,

1:2021-cv-05052 (N.D. Ill.) ..........................................................................10, 54
Wepay Global Payments LLC v. Samsung Electronics Co., Ltd. et al.,

6:2021-cv-01095 (W.D. Tex.) ........................................... 5, 6, 7, 8, 9, 10, 52, 54
Wepay Global Payments LLC v. Tesla, Inc.,

6:2022-cv-00224 (W.D. Tex.) ............................................................................ 10
Wepay Global Payments LLC v. Wal-Mart Stores, Inc.,

1:2022-cv-01062 (N.D. Ill.) ............................................................................... 11
Wepay Global Payments LLC v. Wells Fargo Bank NA,

1:2022-cv-00363 (WDTX) ................................................................................. 11
STATUTES
35 U.S.C. § 24 .......................................................................................................... 30
35 U.S.C. § 102 ....................... 1, 3, 12, 13, 31, 18, 19, 24, 25, 31, 36, 43, 44, 57, 61
35 U.S.C. § 103 ................................... 1, 3, 13, 57, 58, 60, 61, 68, 69, 71, 76, 80, 86
35 U.S.C. §324(a) .................................................................................................. 4, 9
35 U.S.C. §325(d) ...................................................................................................... 9
OTHER AUTHORITIES
37 C.F.R. § 42.10(b) .................................................................................................. 4
37 C.F.R. § 42.22(a)................................................................................................. 12
37 C.F.R. § 42.204(a)................................................................................................. 4
37 C.F.R. § 42.206(a)................................................................................................. 4
37 C.F.R. § 42.208 ..................................................................................................... 3
vi
37 C.F.R. § 42.222(b) ................................................................................................ 1
37 CFR § 42.6(a) ...................................................................................................... 88
37 CFR § 42.105 ...................................................................................................... 87
37 CFR § 42.200 (b) ................................................................................................ 46
Fed. R. Evid. 901(4) .................................................................. 26, 29, 33, 34, 39, 41
Fed. R. Evid. 902(3) ................................................................................................. 27
MPEP § 1504.03 ................................................................................................59, 60
MPEP § 1504.05 ....................................................................................51, 65, 76, 85
MPEP § 2128 .........................................................................................28, 29, 34, 41
vii
EXHIBITS
Exhibit
Description
No.
1001 U.S. Patent No. D930,702 S (the “’702 Patent”)
1002 Expert Declaration of Dr. Gonzalo Arce
1003 File History of U.S. Patent No. D930,702 S
1004 US Patent Pub. No. 2018/0260806 (“Reddy”)
1005 Screenshots of YouTube video entitled “SGQR – Singapore Quick
Response Code,” uploaded by the Monetary Authority of Singapore
(“SGQR”). Retrieved from the Internet at
https://www.youtube.com/watch?v=1VmJm9imBp4
1006 Screen shots of YouTube video entitled “GrabPay Standalone,”
uploaded by DCS Synthesis (“GrabPay”). Retrieved from the Internet
at https://www.youtube.com/watch?v=bc84sn1xTRc
1007 Screenshots of YouTube video entitled “Digital Debit App Preview,”
uploaded by Digital Debit (“Digital Debit Video”). Retrieved from the
Internet at https://www.youtube.com/watch?v=tDqvQFJB8GA
1008 U.S. Patent No. D857,054 S to Grecia (“Digital Debit Patent”)
1009 Singapore Quick Response Code (SGQR), Monetary Authority of
Singapore, Internet Archive (Mar. 31, 2020), available at
https://web.archive.org/web/20200331192535/https:/www.mas.gov.sg/
development/e-payments/sgqr
1010 Vivian Shiao, “Singapore launches unified payment QR code, said to
be world’s first,” Baking & Finance (Sept. 17, 2018), available at
https://www.businesstimes.com.sg/banking-finance/singapore-
launches-unified-payment-qr-code-said-to-be-worlds-first
1011 Monetary Authority of Singapore, “Who We Are,” Internet Archive
(March 31, 2020), available at
https://web.archive.org/web/20200331173357/https://www.mas.gov.sg
/ who-we-are
1012 YouTube Help, “Verification badges on channels,” available at
https://support.google.com/youtube/answer/3046484?hl=en
1013 “Singapore Introduces World’s First United Payment QR Code –
SGQR,” Media Releases (Sept. 17, 2018), available at
viii
Exhibit
Description
No.
https://www.mas.gov.sg/news/media-releases/2018/singapore-
introduces-worlds-first-unified-payment-qr-code
1014 YouTube Help, “Schedule video public time,” available at
https://support.google.com/youtube/answer/1270709?hl=en
1015 YouTube Help, “Upload video,” available at
https://support.google.com/youtube/answer/57407?
hl=en&ref_topic=9257439
1016 Comments on the YouTube video entitled “SGQR – Singapore Quick
Response Code,” uploaded by the Monetary Authority of Singapore
(“SGQR”). Retrieved from the Internet at
1017 YouTube, “YouTube Search,” available
athttps://www.youtube.com/howyoutubeworks/product-
features/search/
1018 First Inventor to File (FITF) Comprehensive Training: Prior Art Under
the AIA
1019 Jon Russell, “Grab, the Uber rival in Southeast Asia, is now officially
also a digital payments company,” TechCrunch (Nov. 1, 2017),
available at https://techcrunch.com/2017/11/01/grab-takes-a-big-step-
into-digital-payments/.
1020 DCS Synthesis, “About Us,” available at
https://www.synthesis.bz/about-us/
1021 National Counsel of Social Service, “MyRetailer Android POS,”
available at https://www.ncss.gov.sg/our-initiatives/tech-and-go/it-
solutions/detailpage/MyRetailerAndroidPOS
1022 DCS Synthesis, “Corporate Video,” available at
https://www.synthesis.bz/our-video
1023 YouTube, DCS Synthesis, Videos, available at
https://www.youtube.com/channel/UC8ySHeYnyaNu6VgFIIzbB2A/vi
deos
1024 Jon Russell, “Grab, the Uber rival in Southeast Asia, is now officially
also a digital payments company,” TechCrunch (Nov. 1, 2017, 1:12
ix
Exhibit
Description
No.
a.m. PDT), available at https://techcrunch.com/2017/11/01/grab-takes-
a-big-step-into-digital-payments/
1025 Grab, “What is Grabpay,” available at
https://www.grab.com/sg/pay/guide/what-is-grabpay/
1026 Raymond Zhong, “Uber to Sell Its Southeast Asia Business to Grab, a
Regional Rival,” New York Times (March 25, 2018), available at
https://www.nytimes.com/2018/03/25/technology/uber-grab-southeast-
asia.html?searchResultPosition=1
1027 Digital Debit, November 15, 2017, 10:33 PM,
https://twitter.com/digitaldebit/status/931047488148201472?cxt=HHw
WgIC_gb6w3-sZAAAA
1028 Digital Debit®, https://twitter.com/digitaldebit
1029 Digital Debit,
https://www.youtube.com/channel/UCInQ0ewd4eMcRmsDqU8LMC
w
1030 Reserved.
1031 Qondado, “About Us” (Mar. 25, 2017), available at
https://qondado.com/about-us/
1032 Reserved.
1033 Declaration of Kathleen R. Geyer
1034 Curriculum Vitae of Gonzalo Arce
1035 U.S. Patent No. 5,726,435
1036 QR code.com – “Answers to your questions about the QR Code,”
available at https://www.qrcode.com/en/
1037 QR code.com – “History of QR Code,” available at
https://www.qrcode.com/en/history/
1038 QRStuff.com – “qr-code-versions,” available at
https://blog.qrstuff.com/2011/01/18/what-size-should-a-qr-code-be/qr-
code-versions
1039 Thonky – “QR Code Tutorial; Introduction,” available at
https://www.thonky.com/qr-code-tutorial/introduction
x
Exhibit
Description
No.
1040 BarCode Graphics – “QR Code Overview Tutorial,” available at
https://www.barcode.graphics/qr-code-overview-tutorial/
1041 S. Tiwari, “An Introduction to QR Code Technology,” 2016
International Conference on Information Technology, December 2016
1042 ISO/IEC 18004. “Information Technology-Automatic identification
and data capture techniques- Bar Code symbology- QR Code,” Third
Edition, 2015.
1043 QR code statistics 2022: Latest numbers and use-cases on global usage
https://www.qrcode-tiger.com/qr-code-statistics
1044 QR Code Statistics 2022: Up-To-Date Numbers on Global QR Code
Usage, https://scanova.io/blog/qr-code-statistics/
1045 US Patent Pub. No. 2015/0220905 to Dessert
1046 The History of U.S. Currency, https://www.uscurrency.gov/history
1047 US Patent Pub. No. 2019/0066089 to Miryala et al.
1048 Screenshots of YouTube video Entitled, “QR Payments with Visa,”
uploaded by Visabrand AP. Retrieved from the Internet at
https://www.youtube.com/watch?v=djNDc7m9YoI
1049 Assignment of Design Patent Application 29/534,109
1050 Wepay Global Payments LLC v. Amazon.com, Inc., No. 1:22-cv-01061
(N.D. Ill.), Complaint.
1051 Wepay Global Payments LLC v. Amazon.com, Inc., No. 1:22-cv-01061
(N.D. Ill.), Complaint, Exhibit 2.
1052 Wepay Global Payments LLC v. Apple Inc., No. 6:22-cv-00223 (W.D.
Tex.), Complaint.
1053 Wepay Global Payments LLC v. Apple Inc., No. 6:22-cv-00223 (W.D.
Tex.), Complaint, Exhibit 3.
1054 Wepay Global Payments LLC v. Bank of America, N.A., 1:2022-cv-
00105 (N.D. Ill.), Complaint.
1055 Wepay Global Payments LLC v. Bank of America, N.A., 1:2022-cv-
00105 (N.D. Ill.), Complaint, Exhibit 2.
xi
Exhibit
Description
No.
1056 Wepay Global Payments LLC v. JPMorgan Chase Bank, N.A., 1:22-
cv-00103 (N.D. Ill.), Complaint.
1057 Wepay Global Payments LLC v. JPMorgan Chase Bank, N.A., 1:22-
cv-00103 (N.D. Ill.), Complaint, Exhibit 2.
1058 Wepay Global Payments LLC v. McDonald’s Corporation, 1:22-cv-
1059 Wepay Global Payments LLC v. McDonald’s Corporation, 1:22-cv-
1060 Wepay Global Payments LLC v. PayPal, Inc., 6:21-cv-01094 (W.D.
Tex.), Complaint.
1061 Wepay Global Payments LLC v. PayPal, Inc., 6:21-cv-01094 (W.D.
1062 Wepay Global Payments LLC v. PNC Bank, N.A., 1:21-cv-05052
(N.D. Ill.), Complaint.
1063 Wepay Global Payments LLC v. PNC Bank, N.A., 1:21-cv-05052
(N.D. Ill.), Complaint, Exhibit 2.
1064 Wepay Global Payments LLC v. Samsung Electronics Co., Ltd. et al.,
6:21-cv-01095 (W.D. Tex.), Complaint.
6:21-cv-01095 (W.D. Tex.), Complaint, Exhibit 3.
1066 Wepay Global Payments LLC v. Tesla, Inc., 6:22-cv-00224 (W.D.
Tex.), Complaint.
1067 Wepay Global Payments LLC v. Tesla, Inc., 6:22-cv-00224 (W.D.
1068 Wepay Global Payments LLC v. Wal-Mart Stores, Inc., 1:2022-cv-
1069 Wepay Global Payments LLC v. Wal-Mart Stores, Inc., 1:2022-cv-
1070 Assignment of Design Patent Applications 29/746,346,
29/749,134,29/749, 507, 29/749,131, 29/749,735, and 29/750,318.
1071 U.S. Appl. No. 29/614,488.
xii
Exhibit
Description
No.
1072 YouTube video entitled “SGQR – Singapore Quick Response Code,”
uploaded by the Monetary Authority of Singapore (“SGQR”).
Retrieved from the Internet at
1073 YouTube video entitled “GrabPay Standalone,” uploaded by DCS
Synthesis (“GrabPay”). Retrieved from the Internet at
https://www.youtube.com/watch?v=bc84sn1xTRc
1074 YouTube video entitled “Digital Debit App Preview,” uploaded by
Digital Debit (“Digital Debit Video”). Retrieved from the Internet at
https://www.youtube.com/watch?v=tDqvQFJB8GA
6:21-cv-01095 (W.D. Tex.), Samsung Answer.
6:21-cv-01095 (W.D. Tex.), Wepay Answer.
1077 Wepay Global Payments LLC v. Wells Fargo Bank NA, 6:2022-cv-
00363 (WDTX), Complaint
1078 Wepay Global Payments LLC v. Wells Fargo Bank NA, 6:2022-cv-
00363 (WDTX), Complaint, Exhibit 3
xiii
I. INTRODUCTION
Samsung Electronics Co., Ltd. (“Petitioner”) requests post-grant review of
U.S. Patent No. D930,702 S (Ex. 1001, the “’702 Patent”) and cancellation of its
sole claim as invalid under 35 U.S.C. §§ 102 and 103.
This petition presents the same art, and relies on the same declarant, as co-
pending PGR2022-00031 (filed April 5, 2022) filed by Early Warning Services,
LLC. Petitioner expects an institution decision by October 14, 2022. If PGR2022-
00031 is instituted, Petitioner will file a motion under 37 C.F.R. § 42.222(b) to join
PGR2022-00031. If the petition in PGR2022-00031 is withdrawn prior to the
Board’s institution decision (e.g., due to settling the dispute with the Patent Owner
or for any other reason), Petitioner intends to rely on the instant petition as grounds
for seeking post-grant review of the ’702 Patent. However, because the instant
petition presents the same grounds and relies on the same declarant as the PGR2022-
00031 petition, this petition does not present any additional complexity or require
any additional effort by the Patent Owner or the Board.
The ’702 Patent purports to claim an “ornamental design for a display screen
portion with animated graphical user interface, as shown and described.” Ex. 1001,
Claim. The ’702 Patent includes five figures, showing two embodiments of the
claimed graphical user interface (GUI) design. Ex. 1002, ¶15.
1
As shown above, almost everything in the figures is shown in broken lines,
which the ’702 Patent describes as “forming no part of the claimed design.” Ex.
1001, Description (emphasis added). The only thing shown in solid lines and
claimed in the figures is an arrangement of three solid squares, one in the upper left
corner, one in the upper right corner, and one in the lower left corner (referred to in
this Petition as the “Three Square Arrangement”) followed by the numerical value
“$0.00.” As demonstrated in this Petition, the Three Square Arrangement is a
standard component in conventional QR codes, and the $0.00 is the ubiquitous way
of displaying a value of no dollars and no cents in U.S. currency. Ex. 1002, ¶16.
2
This Petition demonstrates that it is more likely than not that the ’702 Patent
claim is unpatentable. 37 C.F.R. § 42.208. There is nothing inventive about the
alleged design claimed in the ’702 Patent. It is unpatentable under 35 U.S.C. § 102
and § 103. As just one example, U.S. Patent Application Publication No.
2018/0260806 to Reddy et al. (Ex. 1004, “Reddy”), which published more than a
year before the ’702 Patent’s filing date, discloses an animated GUI that has
substantially the same overall appearance as the ’702 Patent including a Three
Square Arrangement followed by $0.00.1 Ex. 1002, ¶17.
1
Yellow highlighting and red lines have been added for emphasis to some figures
contained herein.
3
II. STANDING AND PROCEDURAL STATEMENTS
Petitioner certifies pursuant to 37 C.F.R. § 42.204(a) that the ’702 Patent is
available for post-grant review and that Petitioner is not barred or estopped from
requesting post-grant review of the ’702 Patent. This Petition is also filed within
nine months of the September 14, 2021 issue date of the ’702 Patent.
Petitioner files this petition in accordance with 37 C.F.R. § 42.206(a) and
concurrently files a Power of Attorney pursuant to 37 C.F.R. § 42.10(b). The
required fee is paid via online Deposit Account payment.
III. THE BOARD SHOULD INSTITUTE REVIEW
A. Petitioner Timely Filed This Petition
The Board should not deny institution under 35 U.S.C. §324(a) and NHK
Spring Co. v. Intri-Plex Techs., Inc., No. IPR2018-00752, Paper 8 (PTAB Sept. 12,
2018) (precedential). For the following reasons, the factors set forth in Apple Inc. v.
Fintiv, Inc. favor institution. See No. IPR2020-00019, Paper 11 (PTAB Mar. 20,
2020) (precedential). The Fintiv factors include:
1. whether the court granted a stay or evidence exists that one may be
granted if a proceeding is instituted;
2. proximity of the court’s trial date to the Board’s projected statutory

deadline for a final written decision;
3. investment in the parallel proceeding by the court and the parties;
4. overlap between issues raised in the petition and in the parallel

proceeding;
4
5. whether the petitioner and the defendant in the parallel proceeding are
the same party; and
6. other circumstances that impact the Board’s exercise of discretion,

including the merits.
Id. at 6.
Patent Owner sued Petitioner alleging infringement of the ’702 Patent. Wepay
Global Payments LLC v. Samsung Electronics Co., Ltd. et al., 6:2021-cv-01095
(W.D. Tex.) (the “Samsung Litigation”) (Exs. 1064-1065).
First, this Petition is filed less than eight months after the Complaint was filed
in the Samsung Litigation. A stay motion has not yet been filed in the Samsung
Litigation, but Petitioner intends to file one in the event of PGR institution. Ten
additional suits, identified below, have been filed by Patent Owner alleging
infringement of the ’702 Patent. (See Exs. 1050-1063; 1066-69). Two of those cases
have been dismissed with prejudice. One of the eight additional pending suits was
filed about a month prior to the Samsung Litigation; one was filed the same day and
the others were filed thereafter. None of the suits filed by Patent Owner has
progressed much, if at all, beyond the pleading stage or has a trial date set; only two
have a scheduling order in place, but only through a claim construction hearing, one
set for March 2023 and one set for May 2023. Although the granting of stays in these
cases is uncertain at this early stage of the lawsuits, it is very possible that stays will
be granted in some, if not all of the pending lawsuits. Thus, Fintiv Factor 1 is neutral
5
or favors institution. See Dish Network L.L.C. v. Broadband iTV, Inc., IPR2020-
01359, Paper 15 at 11 (PTAB Feb. 12, 2021) (“It would be improper to speculate, at
this stage, what the [] court might do regarding a motion to stay, given the particular
circumstances of this case. Accordingly, this factor is neutral to the exercise of our
discretion.”); see also Halliburton Energy Servs., Inc. v. U.S. Well Servs., LLC, No.
IPR2021-01032, Paper 12 at 8 (PTAB Jan. 11, 2022) (“declin[ing] to speculate
regarding whether the district court [in the Western District of Texas] will grant a
stay if this proceeding is instituted” and finding the first Fintiv “factor is neutral”).
Second, none of the Samsung Litigation or other pending cases has a trial date
set or has otherwise begun in earnest. In the Samsung Litigation, Rule 12 pleadings
have closed, but no scheduling order has issued, no contentions have been
exchanged, and no discovery has occurred. A motion to dismiss was filed, but has
not been ruled upon. The other pending cases also remain at a very preliminary
stage, with only two scheduling orders having issued (only through the claim
construction hearing) and only one having closed its Rule 12 pleadings. A final
written decision, on the other hand, would issue around October 2023, at or before
any expected trial date in the Samsung Litigation or any of the other suits. The
challenged patent only recently issued in September 2021. Petitioner has thus acted
with exceptional diligence in filing this Petition. Accordingly, the efficiency
6
concerns of Fintiv Factor 2 and NHK Spring (i.e., a trial date set before the FWD)
do not exist here, thus favoring institution. See NHK Spring, Paper 8, at 19-20.
Third, because the Samsung Litigation and other district court cases are at
their nascent stages, the parties and court have not invested significant time and
resources. As discussed above, only two partial scheduling orders have issued
among all of the pending cases; aside from the Samsung Litigation, Rule 12
pleadings have closed in only one case; very little, if any, discovery has occurred;
and no trial dates have been set. See Apple, Paper 11, at 9-10. The Board has found
that cases with significantly more activity have still favored institution. See, e.g.,
Dish Network, IPR2020-01359, Paper 15 at 11 (finding factor strongly weighed in
favor of institution even though preliminary contentions had been exchanged and
the court had ruled on claim construction); Hallilburton, IPR2021-01032, Paper 12
at 9-10 (finding the factor neutral when the “time period from the district court’s
default trial date to our projected statutory deadline for a final written decision is
approximately one month”). Thus, Fintiv Factor 3 favors institution.
Fourth, very few substantive activities have occurred in the Samsung
Litigation or any of the other cases. The overlapping issues are minimal because
Petitioner has not served invalidity contentions (nor does it appear that any other
defendant in the pending cases has done so), and in Petitioner’s Answer and
Counterclaims, Petitioner identified seven prior art references, only two of which
7
are relied upon in this Petition. (Ex. 1075). Discovery has not commenced in the
Samsung Litigation, and the parties do not even have a schedule yet. Thus, Fintiv
Factor 4 favors institution.
Fifth, Petitioner and Patent Owner are the same parties as in district court.
However, “it is unclear on this record when the trial in the district court proceeding
will occur and whether the trial will take place prior to a final written decision being
issued in this proceeding. Thus, it is unclear on this record whether any estoppel
will be implicated.” Hallilburton, IPR2021-01032, Paper 12 at 13-14 (finding fifth
Fintiv factor neutral). Moreover, it is “far from an unusual circumstance that a
petitioner . . . and a defendant in a parallel district court proceeding are the same,”
so panels routinely grant institution when the parties are the same as in a district
court proceeding. See Sand Revolution II LLC v. Continental Intermodal Group-
Trucking LLC, IPR2019-01393, Paper 24 at 12–13 (PTAB. June 16, 2020)
(designated informative). Petitioner is not a party in any of the other cases. Thus,
Fintiv Factor 5 is neutral.
Finally, the merits of this Petition strongly warrant institution. As explained
herein, the grounds strongly demonstrate the unpatentability of the only claim of the
’702 Patent. (infra Section IX). Institution would “serve the interest of overall
system efficiency and integrity because it [would] allow[] the proceeding to continue
in the event that the parallel proceeding settles or fails to resolve the patentability
8
question presented.” Apple, Paper 11, at 15. Thus, Fintiv Factor 6 also favors
institution.
Because all of the Fintiv factors are either neutral or favor institution, the
Board should not deny institution under 35 U.S.C. §324(a).
B. § 325(d) Should Not Bar This Petition.
The Board also should not exercise its discretion to deny review under 35
U.S.C. §325(d) because the Office has not considered the prior art grounds forming
the basis of this Petition. None of Petitioner’s primary references (Reddy, SGQR,
GrabPay, and the Digital Debit Video) were cited by the Applicant in any
information disclosures statements or considered during prosecution. Unified
Patents, Inc. v. Berman, IPR2016-01571, Paper 10, at 12-13 (PTAB Dec. 14, 2016)
(informative) (instituting grounds relying on art not cited previously). Indeed, the
challenged patent received only a cursory examination, receiving a first action
allowance. Ex. 1003 at 61. No basis exists for denying institution under 35 U.S.C.
§ 325(d).
IV. MANDATORY NOTICES
A. Real Party-in-Interest (37 C.F.R. § 42.8(b)(1))
Samsung Electronics Co., Ltd. is the petitioner and a real party-in-interest.
Samsung Electronics America Inc. is a wholly owned subsidiary of Samsung
Electronics Co., Ltd., is a named defendant in the Samsung Litigation, and is a real
party-in-interest.
9
B. Related Matters (37 C.F.R. § 42.8(b)(2))
In addition to the Samsung Litigation, Patent Owner has sued multiple third
parties alleging infringement of the ’702 Patent. Petitioner is aware of the following
pending cases against third parties for alleged infringement of the ’702 Patent:
 Wepay Global Payments LLC v. Amazon.com, Inc., No. 1:2022-cv-01061
(N.D. Ill.) (the “Amazon Litigation”) (Exs. 1050-1051);
 Wepay Global Payments LLC v. Apple Inc., No. 6:2022-cv-00223 (W.D.
Tex.) (dismissed) (the “Apple Litigation”) (Exs. 1052-1053);
 Wepay Global Payments LLC v. Bank of America, N.A., 1:2022-cv-00105
(N.D. Ill.) (the “Bank of America Litigation”) (Exs. 1054-1055);
 Wepay Global Payments LLC v. JPMorgan Chase Bank, N.A., 1:2022-cv-
00103 (N.D. Ill.) (the “JPMC Litigation”) (Exs. 1056-1057);
 Wepay Global Payments LLC v. McDonald’s Corporation, 1:2022-cv-01064
(N.D. Ill.) (the “McDonald’s Litigation”) (Exs. 1058-1059);
 Wepay Global Payments LLC v. PayPal, Inc., 6:2021-cv-01094 (W.D. Tex.)
(the “PayPal Litigation”) (Exs. 1060-1061);
 Wepay Global Payments LLC v. PNC Bank, N.A., 1:2021-cv-05052 (N.D.
Ill.) (the “PNC Litigation”) (Exs. 1062-1063);
 Wepay Global Payments LLC v. Tesla, Inc., 6:2022-cv-00224 (W.D. Tex.)
(the “Tesla Litigation”) (Exs. 1066-1067); and
10
 Wepay Global Payments LLC v. Wal-Mart Stores, Inc., 1:2022-cv-01062
(N.D. Ill.) (dismissed) (the “Wal-Mart Litigation”) (Exs. 1068-1069).
 Wepay Global Payments LLC v. Wells Fargo Bank NA, 1:2022-cv-00363
(WDTX) (the “Wells-Fargo Litigation”) (Exs. 1077-1078)
C. Lead and Back‐Up Counsel (37 C.F.R. § 42.8(b)(3))
Petitioner identifies the following lead and back-up counsel:
Lead Counsel Back-up Counsel

Eliot D. Williams (Reg. No. 50,822) Neil P. Sirota (Reg. No. 38,306)
eliot.williams@bakerbotts.com neil.sirota@bakerbotts.com
BAKER BOTTS L.L.P. BAKER BOTTS L.L.P.
1001 Page Mill Road 30 Rockefeller Plaza
Bldg. One, Suite 200 New York, NY 10112-4498
Palo Alto, CA 94304 Phone: (212) 408-2500
Phone: (650) 739-7511 Fax: (212) 408-2501
Fax: (650) 739-7699
David Tobin (Reg. No. 60,776)
david.tobin@bakerbotts.com
BAKER BOTTS L.L.P.
2001 Ross Ave., Suite 900
Dallas, TX 75201-2980
Phone: (214) 953-6500
Fax: (214) 953-6503
Ryan Clark (Reg. No. 67,009)

ryan.clark@bakerbotts.com
BAKER BOTTS L.L.P.
98 San Jacinto Boulevard
Suite 1500
Austin, TX 78701-4078
Phone: (512) 322-2500
Fax: (512) 322-2501
Boyang Zhang (Reg. No. 77,498)

boyang.zhang@bakerbotts.com
11
BAKER BOTTS L.L.P.
98 San Jacinto Boulevard
Suite 1500
Austin, TX 78701-4078
Phone: (512) 322-2500
Fax: (512) 322-2501
D. Service Information (37 C.F.R. § 42.8(b)(4))
Please address all correspondence to the lead and back-up counsel at the
addresses provided above.
V. STATEMENT OF PRECISE RELIEF REQUESTED
Pursuant to 37 C.F.R. § 42.22(a), Petitioner respectfully requests the
cancellation of the claim of the ’702 Patent, which is unpatentable under 35 U.S.C.
§§ 102 and/or 103 based on the prior art. Petitioner’s full statement of the reasons
for the relief requested is set forth in detail in Section IX below and is supported by
the Declaration of Dr. Gonzalo Arce (Ex. 1002). The specific prior art and statutory
grounds for invalidity of the design claim are outlined in the following tables.
Publication
Exhibit Prior Art
Date
1004 US Patent Application Publication No. 2018/0260806 Sept. 13,
(“Reddy”). 2018
1005 YouTube video entitled “SGQR – Singapore Quick Sept. 17,
1072 Response Code,” uploaded by the Monetary Authority of 2018
Singapore (“SGQR”). Retrieved from the Internet at
https://www.youtube.com/watch?v=1VmJm9imBp4; Ex.
1033, ¶ 7.
1006 YouTube video entitled “GrabPay Standalone,” uploaded Mar. 20,
1073 by DCS Synthesis (“GrabPay”). Retrieved from the 2020
Internet at
12
https://www.youtube.com/watch?v=bc84sn1xTRc; Ex.
1033, ¶ 8.
1007 YouTube video entitled “Digital Debit App Preview,” Nov. 20,
1074 uploaded by Digital Debit (“Digital Debit Video”). 2017
Retrieved from the Internet at
https://www.youtube.com/watch?v=tDqvQFJB8GA; Ex.
1033, ¶ 9.
1008 U.S. Patent No. D857,054 to Grecia (“Digital Debit Aug. 20,
Patent”) 2019
Statutory
Ground Prior Art
Basis
1 § 102 Reddy
2 § 103 Reddy alone or in view of SGQR
3 § 102 GrabPay
4 § 103 Digital Debit Video in view of the Digital Debit Patent
VI. OVERVIEW OF THE ’702 PATENT AND THE PRIOR ART
A. The ’702 Patent
The ’702 Patent was filed on September 3, 2020 as application number
29/749,131 (the “’131 Application”) and issued September 14, 2021. Ex. 1001 at 1.
The ’702 Patent has a single claim for the “ornamental design for a display screen
portion with animated graphical user interface, as shown and described.” Id. The
’702 Patent includes five figures, with FIGS. 1-2 describing a “First Embodiment”
and FIGS. 3-5 describing a “Second Embodiment.” Id. The ’702 Patent states that
in the First Embodiment, “the appearance of the transitional image sequentially
13
transitions between the image shown in FIGS. 1 through 2,” and that in the Second
Embodiment, “the appearance of the transitional image sequentially transitions
between the images shown in FIGS. 3 through 5.” Id. The ’702 Patent further states
that “[t]he process or period in which one image transitions to another image forms
no part of the claimed design.” Id.; Ex. 1002, ¶18.
Both embodiments simply show an animated GUI displaying an image
including a Three Square Arrangement followed by an image including a $0.00 (Ex.
1002, ¶19):
Everything else in FIGS. 1-5 is shown in broken lines, including the display
screen, the text, and other portions of the GUI. The display screen and the entirety
14
of the GUI shown in FIG. 4 is shown in broken lines. Consistent with conventional
design patent practice, the ’702 Patent states that the items shown in broken lines,
including the display screen, the text, and the other portions of the GUI, form “no
part of the claimed design”:
The broken line showing of a portion of a display screen

and a computer device in FIGS. 1 through 5 forms no part
of the claimed design. The broken line showing of text
and portions of the graphical user interface in FIGS. 1
through 5 represents environmental subject matter and
forms no part of the claimed design.
Ex. 1001 at 1; see also Ex. 1002, ¶20.
The only difference between the First and Second Embodiments is that the
Second Embodiment includes an additional image (FIG. 4) between the image
including the Three Square Arrangement (FIG. 3) and the image including the $0.00
(FIG. 5). This difference is immaterial to the scope of the ’702 Patent, however,
because the entirety of FIG. 4 is shown in unclaimed broken lines. Because
everything in FIG. 4 is shown in broken lines and is unclaimed, no additional design
elements are added by FIG. 4, and the claimed designs of the two embodiments are
basically the same, i.e., obvious variants of one another. Ex. 1002, ¶21.
During prosecution of the ’131 Application, the examiner reached the same
conclusion. In an August 13, 2021 notice of allowability, the examiner stated that
multiple embodiments may be included in a design patent “only if they are
patentably indistinct,” citing In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA
15
1959). Ex. 1003 at 66. The examiner found that FIGS. 1-2 and FIGS. 3-5 of the
’131 Application presented “overall appearances that are basically the same,” and
that the differences between the embodiments were “minor and patentably indistinct,
or are shown to be obvious in view of analogous prior art cited.” Id. Accordingly,
the examiner allowed the two embodiments to remain together in the ’131
Application. Id. The applicant did not submit any objection or other comments on
the examiner’s findings in the notice of allowability. Ex. 1002, ¶21.
In summary, the First Embodiment shows that the display of the Three Square
Arrangement may be immediately followed by the display of the $0.00. The Second
Embodiment shows that an additional intermediate image may be displayed between
the Three Square Arrangement and the $0.00, but the visual appearance of the
intermediate image is irrelevant since FIG. 4 is shown entirely in broken lines. The
only features shown in solid lines and claimed as part of the ’702 Patent’s alleged
design is an animated GUI that displays an image including the Three Square
Arrangement and subsequently an image including a $0.00. Ex. 1002, ¶22.
B. Prior Art Overview
Everything claimed in the ’702 Patent’s design was known in the prior art
before the effective filing date of the ’702 Patent. The ’702 Patent simply claims a
standard component of a QR code (the Three Square Arrangement) followed by
$0.00. As discussed below, QR codes have been in widespread use for over a
16
decade, and their use on prior art GUI devices is common. The dollar sign ($) and
the amount $0.00 have been used for centuries, and their use is also widespread in
prior art GUI devices. Ex. 1022, ¶23.
Three Square Arrangement
The Three Square Arrangement shown in both embodiments of the ’702
Patent is the same three square arrangement that has been used for years in
conventional prior art Quick Response barcodes, more commonly known as “QR
codes.” As discussed by Dr. Arce, QR codes were developed in 1994 by Toyota as
a way for encoding data in a two-dimensional square format. Ex. 1002, ¶¶24-29.
QR codes come in different versions, depending on how much data they can store.
Some QR codes (those of lower version number) store less data than others (those
of higher version number), as shown below. Conventional QR codes typically
include the Three Square Arrangement, although the squares may be spaced closer
together (and appear larger) or farther apart (and appear smaller) depending on the
version number and the amount of data contained therein. Id.
17
The Three Square Arrangement of the ’702 Patent has squares that are spaced
and sized relative to one another in the same manner as version 6 of a standard QR
code. Ex. 1002, ¶¶30-34.
$0.00
The $0.00 shown in both embodiments of the ’702 Patent was known
worldwide in the prior art as the standard shorthand for indicating zero dollars and
zero cents in US currency. See, e.g., Ex. 1002, ¶¶35-36; Exs. 1004, 1006, 1008,
1046, 1047, 1048.
As an example, U.S. Patent No. D857,054 to Grecia (the “Digital Debit
Patent,” Ex. 1008) names the same inventor (William Grecia) as the ’702 Patent. As
shown below, the Digital Debit Patent shows a GUI for a “Digital Debit” application
including substantially the same (if not exactly the same) $0.00 as the ’702 Patent.
The Digital Debit Patent issued on August 29, 2019, more than a year before the
filing date of the ’702 Patent, and is prior art to the ’702 Patent under 35 U.S.C. §
102(a)(1).
18
Thus, the $0.00 claimed in the ’702 Patent was also well known in the prior
art. Ex. 1002, ¶37.
Three Square Arrangement Followed By $0.00
As noted above, the figures of the ’702 Patent show an animated GUI
displaying an image including the Three Square Arrangement followed by an image
including a $0.00. This alleged design was already in the prior art before the ’131
Application was filed. Several examples are discussed below. Ex. 1002, ¶¶38-39.
1. Reddy (Ex. 1004)
US Patent Publication No. 2018/0260806 to Reddy et al. is for a “System and
Method for Implementing Payment via Quick Response (QR) Code.” Reddy
published on September 13, 2018 and is prior art to the ’702 Patent under 35 U.S.C.
§ 102(a)(1) as of that date. Reddy is also prior art to the ’702 Patent under 35 U.S.C.
§ 102(a)(2) at least as of its March 9, 2018 filing date. Reddy was not prior art of
record and was not considered during prosecution of the ’702 Patent. Ex. 1002, ¶40.
19
As shown in Section IX.A. infra, Reddy’s figures show a design for an
animated GUI that anticipates the claimed design of the ’702 Patent. Ex. 1002, ¶40.
Although Reddy is a utility patent application, it is still relevant prior art to the
validity of the ’702 Patent. See In re Aslanian, 590 F.2d 911, 913 (CCPA 1979)
(citations omitted) (“[T]he teachings in utility patents are within the prior art to be
considered when determining the patentability of designs even though the
patentability of a design may not be predicated on utilitarian or functional
considerations.”).
Reddy discloses systems for QR code-based payments using mobile phones
with animated GUI’s. In one example shown in FIG. 1 and discussed beginning at
paragraph [0034], Reddy discloses a payer using a mobile phone to scan a QR code
(at ref. 124 in FIG. 1) and, after scanning the QR code, entering a payment amount
(at ref. 130 in FIG. 1):
The Payer 112 may scan the QR Code, at 124. The payer
may send a request to retrieve QR details from Payment
Intermediary 114, as shown by 126. Also, the payer may
then view QR details at 128 and confirm QR details and/or
enter specifics at 130.
Reddy at ¶ [0036] (emphasis added). FIG. 1 of Reddy shows the Payer first scanning
a QR code at 124 and then entering an amount at 130. Ex. 1002, ¶41.
20
For scanning a QR code 124, Reddy shows in FIG. 9 a mobile device GUI
displaying a scanned QR code. Id. at ¶ [0052] (“A mobile device may include a
camera feature that takes an image of a QR code 910.”). For entering an amount
130, Reddy shows in FIG. 12 the mobile device GUI subsequently displaying a
payment amount screen. Id. at ¶ [0056] (“...The paying entity, such as a customer,
may provide an amount within the range or other monetary conditions, at 1212.”).
As can be seen below, FIG. 9 of Reddy shows a QR code with substantially the same
Three Square Arrangement as the ’702 Patent, and FIG. 12 of Reddy shows
substantially the same $0.00 as the ’702 Patent. Ex. 1002, ¶42.
21
As for the sequence between these two images, FIG. 1 and paragraph [0036]
of Reddy show that the mobile device GUI first displays the image shown in FIG. 9
and then displays the image shown in FIG. 12—exactly as claimed in the First
Embodiment of the ’702 Patent. Ex. 1002, ¶43.
Additionally, as highlighted below, Reddy shows at reference 128 in FIG. 1
that a mobile phone “may”2 display an intermediate image, i.e., QR details, between
2
The use of the term “may” in this context indicates that this step is optional. See,
e.g., Veeam Software Corp. v. Hybir Inc., IPR2020-01037, Paper 39 at 38-39 (PTAB
Dec. 2, 2021) (interpreting “‘may’ in accordance with its ordinary, permissive
meaning”); Google LLC v. Makor Issues & Rights Ltd., IPR2016-01535, Paper 32
at 43 (PTAB Feb. 12, 2018) (“The language ‘may [] influence’ and ‘may [] require’
22
what it displays in FIG. 9 and what it displays in FIG. 12. See id. at ¶ [0036] (“Also,
the payer may then view QR details at 128...”); Ex. 1002, ¶44.
This is substantially the same as the Second Embodiment of the ’702 Patent,
which shows in FIG. 4 that an intermediate image may be displayed between the
image including the Three Square Arrangement and the image including the $0.00.
Ex. 1002, ¶45.
2. SGQR (Ex. 1005, 1072)
SGQR is a video posted by the Monetary Authority of Singapore to
YouTube.com on September 17, 2018 at:
https://www.youtube.com/watch?v=1VmJm9imBp4, entitled “SGQR – Singapore
are optional limitations because they use the permissive word ‘may,’ and thus could
be omitted.” (alterations in original)).
23
Quick Response Code.” SGQR is thus prior art to the ’702 Patent under 35 U.S.C.§
102(a)(1) as of that date. SGQR was not art of record to the ’702 Patent and was not
considered during prosecution of the ’702 patent. Ex. 1002, ¶46.
SGQR discloses a QR code-based payment system using a mobile phone. Ex.
1002, ¶47.
During payment, the mobile phone displays an animated GUI including an
image of a QR code followed by an image for entering a payment amount in US
dollars, beginning with the dollar symbol “$.” Ex. 1002, ¶48.
24
As can be seen above, the QR code displayed in SGQR has substantially the
same Three Square Arrangement shown in the ’702 Patent, followed by substantially
the same $ shown in the ’702 Patent. Ex. 1002, ¶49.
SGQR qualifies as prior art to the ’702 Patent under 35 U.S.C. § 102 (a)(1) as
both a “printed publication” and as “otherwise available to the public.”
SGQR is “Printed Publication” Prior Art
SGQR is a YouTube.com video posted September 16, 2018 at
https://www.youtube.com/watch?v=1VmJm9imBp4. SGQR is authentic and was
25
publicly accessible as of that date.3 Ex. 1002, ¶49.
Regarding authenticity, there is significant and reliable evidence that SGQR
is what it purports to be. Fed. R. Evid. 901(4). The Singapore Quick Response Code
is the “world’s first common QR code specifications for e-payment.” Ex. 1009 at 1.
The e-payment system has been described as follows:
Known as the Singapore Quick Response Code (SGQR),

it combines multiple payment QR codes into a single label
and aims to make QR code-based mobile payments
simpler for both consumers and merchants. SGQR will be
adopted by 27 payment schemes including PayNow, Nets,
GrabPay, Liquid Pay and Singtel Dash, and will be
deployed progressively over the next six months.
Ex. 1010 at 1. The Singapore Quick Response Code was jointly developed by the
Monetary Authority of Singapore and the Infocomm Media Development Authority.
Id. The Monetary Authority of Singapore maintains websites relating to the
3
SGQR, along with GrabPay and Digital Debit, are admissible because they are not
hearsay. See, e.g., Telewizja Polska USA, Inc. v. Echostar Satellite Corp., No. 02 C
3293, 2004 WL 2367740, at *5 (N.D. Ill. Oct. 15, 2004) (“To the extent these images
and text are being introduced to show the images and text found on the websites,
they are not statements at all—and thus fall outside the ambit of the hearsay rule.”
(citation omitted)).
26
Singapore Quick Response Code to provide information to consumers and business,
including publishing the SGQR YouTube video. Id.
SGQR was published by the Monetary Authority of Singapore – MAS,
Singapore’s central bank and integrated financial regulator. Ex. 1011. YouTube
includes a verification badge on this account, confirming that it is the official channel
of the Monetary Authority of Singapore. See Ex. 1012 (“If a channel is verified, it’s
the official channel of a creator, artist, company, or public figure.”). The description
of the video confirms that “SGQR was developed by an industry task force co-led
by the Monetary Authority of Singapore and the Infocomm Media Development
Authority.” See Fed. R. Evid. 902(3). A news release by the Monetary Authority
of Singapore confirms that SGQR was officially launched on September 17, 2018.
See Ex. 1013 (“Singapore, 17 September 2018...The Singapore Quick Response
Code (SGQR) was officially launched...today.”); see also Ex. 1010. An archived
version of the Monetary Authority of Singapore page “Singapore Quick Response
Code (SGQR)” dated March 31, 2020 (almost 6 months before the priority date of
the ’702 Patent) is accessible through the Wayback Machine® and links to the same
YouTube video when you select the option to watch the video on YouTube:
https://www.youtube.com/watch?v=1VmJm9imBp4. See Ex. 1009; Ex. 1033, ¶ 11
https://web.archive.org/web/20200331192535/https://www.mas.gov.sg/developme
nt/e-payments/sgqr. The MPEP recognizes that “Prior art obtained via the Wayback
27
Machine sets forth a prima facie case that the art was publicly accessible at the date
and time provided in the time stamp.” See MPEP § 2128(II)(E).
Moreover, SGQR remains posted on YouTube, and contains the same screen
shots included above and as in Ex. 1005 and Ex. 1072. Ex. 1002, ¶50. Courts have
found such screen shots of websites to be more than likely authentic when it remains
accessible on that public website. See, e.g., In re Terrorist Attacks on Sept. 11, 2001,
No. 03-MD-1570 (GBD)(SN), 2021 WL 5414948, at *4 (S.D.N.Y. Nov. 19, 2021).
Furthermore, in numerous cases, Google Custodians of Record have given
sworn testimony that “[a]s explained on YouTube’s support website, the date listed
under a video is the date it was published and, if the video was posted publicly, that
is the date on which it became available to anyone for viewing.” See, e.g., London
Luxury LLC v. E&E Co., Ltd., PGR2021-00083, Ex. 1013 (PTAB May 12, 2021);
see also Ex. 1014 at 1 (“When you make a video public on YouTube, the date on the
watch page is based on Pacific Standard Time (PST). If you want a certain date to
show beneath your video, upload your video on that date.”); Ex. 1015. Because
SGQR indicates that it was posted publicly on September 16, 2018, it became
available to anyone for viewing on that date. Ex. 1005 at 1; Ex. 1072. Further, the
fact that it has received over 28,000 views since it was published confirms that it
was widely publicly accessible. Id. One comment on SGQR dates to two years ago,
further confirming public availability prior to the critical date. Ex. 1016 at 1.
28
Taken together with all the circumstances, the “appearance, contents,
substance, internal patterns, or other distinctive characteristics” of SGQR is
sufficient to show that it is what it purports to be. Fed. R. Evid. 901(4).
Regarding public accessibility, MPEP § 2128 states that YouTube videos “can
be sources of prior art, provided the public accessibility requirements…are met.”
Further, MPEP § 2128(II)(B) confirms that “[p]rior art disclosures on the Internet
. . . are considered to be publicly available as of the date the item was publicly
posted.” As described above, the date shown under the video indicates when a video
was made public on YouTube. See Ex. 1014 at 1. SGQR was publicly available on
YouTube on September 16, 2018. Ex. 1002, ¶51. Further, SGQR was publicly
posted on the Monetary Authority of Singapore’s website as of at least March 31,
2020. See Ex. 1009. Finally, SGQR has received over 28,000 views, strongly
suggesting it was available to the public and actually viewed by the public. Ex. 1005
at 1.
Moreover, persons interested and ordinarily skilled in the subject matter or art
exercising reasonably diligence could locate SGQR. Persons interested and
possessing ordinary skill in cashless payment applications could locate the SGQR
video by searching “Quick Response Code” or “SGQR.” As YouTube explains,
search queries are compared to video titles, tags, description, and video content. See
Ex. 1017 at 1 (“To estimate relevance we look into many factors, such as how well
29
the title, tags, description, and video content match your search query. Engagement
signals are a valuable way to determine relevance.”)
https://www.youtube.com/howyoutubeworks/product-features/search/. A YouTube
search for “quick response code,” for example, yields the SGQR prior art video cited
herein as the fifth result. Ex. 1002, ¶52.
Having made the requisite showing that SGQR is more likely than not a
printed publication, the burden of production is on the Patent Owner to show that
SGQR is not prior art. See Dynamic Drinkware, LLC v. National Graphics, Inc.,
800 F.3d 1375, 1379-80 (Fed. Cir. 2015).4
4
Counsel for Early Warning Services, LLC, the petitioner in PGR2022-00031,
reached out via email to the Monetary Authority of Singapore and to Google (parent
of YouTube) to request a declaration regarding authenticity and public availability.
Ex. 1033, ¶¶ 5-6. No response was received from the Monetary Authority of
Singapore, and Google responded that a subpoena would be required for its
assistance. Id. To the extent necessary, Petitioner reserves the right to seek leave to
pursue third party discovery after institution to obtain a Certificate of Authenticity
for each YouTube.com video referenced in this Petition. See, e.g., MerchSource LLC
v. Dodocase VR, Inc., IPR2018-00494, Paper 43 (PTAB Jan. 29, 2019) (authorizing
Petitioner for a subpoena YouTube LLC pursuant to 35 U.S.C. § 24).
30
SGQR is “Otherwise Available to the Public” Prior Art
SGQR also qualifies as prior art to the ’702 Patent under Section 102 as being
“otherwise available to the public.” Indeed, the US Patent & Trademark Office’s
training materials specifically list YouTube videos as prior art that should be
considered “otherwise available to the public” under 35 U.S.C. § 102(a)(1). Ex.
1018 at 15. And the evidence described above confirms that SGQR was otherwise
available to the public as of its publication date of September 16, 2018. Thus,
although the PTAB has held that YouTube videos are printed publications, even if
the Board was to find that SGQR is not a printed publication, it also qualifies as prior
art under the “otherwise available to the public” prong of the 35 U.S.C. § 102(a)(1)
prior to the filing date of the ’702 Patent.
3. GrabPay (Ex. 1006, 1073)
GrabPay is a video posted by DCS Synthesis to YouTube.com on March 20,
2020 at https://www.youtube.com/watch?v=bc84sn1xTRc, entitled “GrabPay
Standalone.” GrabPay is prior art to the ’702 Patent under 35 U.S.C. § 102(a)(1) as
of that date. GrabPay was not art of record to the ’702 Patent and was not considered
during prosecution of the ’702 Patent. Ex. 1002, ¶53.
GrabPay shows a payment transaction between two devices, each of which
includes a display screen with an animated GUI. GrabPay shows, starting at
approximately 9 seconds into the video, (i) a display screen on one of the devices
31
with an animated GUI that includes an image with a QR code including substantially
the same Three Square Arrangement of the ’702 Patent (Ex. 1006 at 11), followed
by (ii) an image at approximately 27 seconds into the video including substantially
the same “$0.00” shown in the ’702 Patent (Ex. 1006 at 29). As shown at
approximately 24 seconds into the video, the display screen also includes an
intermediate image with a checkmark and the word “Success” between the QR code
image and the $0.00 image. Ex. 1006 at 26; Ex. 1002, ¶54.
GrabPay is “Printed Publication” Prior Art
GrabPay is a YouTube video posted as of March 20, 2020 at the website
https://www.youtube.com/watch?v=bc84sn1xTRc. GrabPay is authentic and is
publicly accessible.
32
Regarding authenticity, there is significant and reliable evidence that the
GrabPay video is what it purports to be. Fed. R. Evid. 901(4). GrabPay is an
application that allows “users [to] scan the merchant’s QR code, key in the amount
and hit pay.” Ex. 1019 at 2; Ex. 1002, ¶55. DCS Synthesis, the publisher of the
GrabPay video, provides technology services to the retail industry, including point
of sale (“POS”) systems. See Ex. 1020 at 1-2. DCS Synthesis offers MyRetailer
Android POS solution “with built in payment modes like Alipay, Wechat Pay,
GrabPay, Credit Card payments, Global Blue and others.” Ex. 1021 at 1.
GrabPay was posted by YouTube user “DCS Synthesis.” YouTube videos
posted by YouTube user “DCS Synthesis” are included on DCS Synthesis corporate
webpage, confirming that YouTube user “DCS Synthesis” and the Singapore-based
company DCS Synthesis Pte Ltd. are the same. Compare Ex. 1022 (“DCS Synthesis
Corporate Video,” “DCS Synthesis Company Trip 2017,” and “DCS SYNTHESIS
CNY DINNER 2017”) https://www.synthesis.bz/our-video/ with Ex. 1023 (same).
Moreover, GrabPay remains posted on YouTube and contains the same screen
shots as those included above and in Ex. 1006 and Ex. 1073. Ex. 1002, ¶56. Courts
have found such screen shots of websites are more than likely be authentic when it
remains accessible on that public website. See, e.g., In re Terrorist Attacks on Sept.
11, 2001, 2021 WL 5414948, at *4.
33
Further evidence authenticates this video. Contemporaneous news articles
confirm that GrabPay had QR scanning functionality deployed in Singapore prior to
the date of the video. See, e.g., Ex. 1024. Moreover, in numerous cases, Google
Custodians of Record have given sworn testimony that “[a]s explained on
YouTube’s support website, the date listed under a video is the date it was published
and, if the video was posted publicly, that is the date on which it became available
to anyone for viewing.” See, e.g., London Luxury, PGR2021-00083, Ex. 1013; see
also Ex. 1014 at 1; Ex. 1015. Because GrabPay indicates that it was posted publicly
on March 20, 2020, it became available to anyone for viewing on that date. Ex.
1002, ¶56.
substance, internal patterns, or other distinctive characteristics” of GrabPay is
sufficient to show that the GrabPay video is what it purports to be. Fed. R. Evid.
901(4).
be sources of prior art, provided the public accessibility requirements . . . are met.”
34
was posted and thus made public on YouTube. See Ex. 1014 at 1. GrabPay was
publicly available on YouTube on March 20, 2020.
Moreover, persons interested and ordinarily skilled in the subject matter or art
exercising reasonably diligence could locate GrabPay. “GrabPay” is a cashless
payment system that has been in use since at least 2018. See Ex. 1025; Ex. 1026.
Persons interested and of ordinary skill in cashless payment applications could locate
the GrabPay video by searching YouTube for “GrabPay.” As YouTube explains,
search queries are compared to video titles, tags, description, and video content. See
Ex. 1017 at 1. Because GrabPay includes “GrabPay” in the title of the video, a
search query for “GrabPay” would include GrabPay in the search results. See Jazz
Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1360 (Fed. Cir. 2018) (“The
Board did not need to find that specific persons actually received or examined the
materials.”); see also Ex. 1002, ¶57.
Having made the requisite showing that GrabPay is more likely than not a
printed publication, the burden of production is on the Patent Owner to show that
GrabPay is not prior art. See Dynamic Drinkware, 800 F.3d at 1379-80.5
5
Counsel for EWS reached out via email to numerous contacts at DCS Synthesis
and Google to request a declaration regarding authenticity and public availability.
Ex. 1033, ¶¶ 2-4, 6. As noted above, Petitioner reserves the right to seek additional
35
GrabPay is “Otherwise Available to the Public” Prior Art
GrabPay also qualifies as prior art to the ’702 Patent under Section 102 as
being “otherwise available to the public.” As discussed above, the US Patent &
Trademark Office’s training materials specifically list YouTube videos as prior art
that should be considered “otherwise available to the public” under 35 U.S.C. § 102
(a)(1). Ex. 1018 at 15. And the evidence described above confirms that GrabPay
was otherwise available to the public as of its publication date on March 20, 2020.
Thus, although the PTAB has held that YouTube videos are printed publications,
even if the Board was to find that GrabPay was not a printed publication, it also
qualifies as prior art under the “otherwise available to the public” prong of the 35
U.S.C. § 102(a)(1).
4. Digital Debit Video (Ex. 1007, 1074)
The Digital Debit Video is a video posted by Digital Debit to YouTube.com
on November 20, 2017 at https://www.youtube.com/watch?v=tDqvQFJB8GA,
entitled “Digital Debit App Preview.” The Digital Debit Video is thus prior art to
the ’702 Patent under 35 U.S.C.§ 102(a)(1) as of that date. Ex. 1002, ¶58.
discovery to obtain a Certificate of Authenticity for each YouTube.com video
referenced in this Petition.
36
The named inventor on the ’702 Patent is William Grecia, the owner of Wepay
Global Payments LLC (Patent Owner in this PGR). Ex. 1070 at 2. Mr. Grecia also
appears to be the founder and co-owner of Digital Debit® Group, which posted the
Digital Debit Video years before the ’702 Patent was filed.6 Ex. 1054 at 1; Ex. 1056
at 1. Notwithstanding Mr. Grecia’s apparent knowledge of the Digital Debit Video,
the video was not disclosed to the USPTO and was not art of record or considered
during prosecution of the ’702 Patent. See generally Ex. 1003.
The Digital Debit Video shows a QR code-based payment system with the
same GUI header as the Digital Debit Patent, of which Mr. Grecia is also a named
inventor. Ex. 1002, ¶59.
6
Digital Debit is part of Qondado, LLC, of which William Grecia is an owner. See
Ex. 1031 at 2 (Qondada LLC website confirming that William Grecia was Executive
Chairman of Qondada LLC in March 2017 and that “Digital Debit initiative is a
division of Qondado, LLC.”); Ex. 1049 (assignment document listing Mr. Grecia as
50% owner of Qondado LLC).
37
During payment, the animated GUI in the Digital Debit Video displays an
image with a QR code followed by a different image for entering a payment amount,
with the amount initially set to “USD 0.00.” Ex. 1007; Ex. 1074; Ex. 1002, ¶60.
As shown, the QR code displayed in the Digital Debit Video has substantially
the same Three Square Arrangement shown in the ’702 Patent, followed by a second
screen featuring a numeric keypad and “0.00” similar to that shown in the ’702
Patent, although it indicates U.S. Dollars with the abbreviation “USD” instead of
using the dollar symbol “$.” Ex. 1002, ¶61.
38
The Digital Debit Video is “Printed Publication” Prior Art
The Digital Debit Video is a YouTube.com video posted on November 20,
2017 at https://www.youtube.com/watch?v=tDqvQFJB8GA. The Digital Debit
Video is authentic and is publicly accessible. Wepay admitted in a responsive
pleading that the Digital Debit Video was posted on Youtube on November 20, 2017,
that the Digital Debit Video qualifies as prior art, and that Mr. Grecia controlled the
entity that posted the Digital Debit Video. Ex. 1076, ¶¶146-149.
Regarding authenticity, there is significant and reliable evidence that the
Digital Debit Video is what it purports to be. Fed. R. Evid. 901(4). The same video
was also posted on Digital Debit’s Twitter account at 10:33 PM November 15, 2017
using Twitter for iPhone with the caption “Introducing... Digital Debit (Bishiki)
@coinbase @brian_armstrong @jimmyong <--here you go :) #fintech submitted
App Store preview vid for iPhone X.” See Ex. 1027. That tweet received 3
Retweets, 4 Likes, and 90 views. Id. Both the YouTube and Twitter versions of this
video were posted by users with the name Digital Debit® and both the YouTube and
Twitter profile include links to digitaldebit.com. Compare Ex. 1028 with Ex. 1029.
Further, the Digital Debit Video points to the @digitaldebit Twitter account.
39
Moreover, the Digital Debit Video remains posted on YouTube and contains
the same screen shots above. Ex. 1002, ¶62. Courts have found such screen shots
to more than likely be authentic when it remains accessible on that public website.
See, e.g., In re Terrorist Attacks, 2021 WL 5414948, at *4.
Further, in numerous cases, Google Custodians of Record have given sworn
testimony that “[a]s explained on YouTube’s support website, the date listed under
a video is the date it was published and, if the video was posted publicly, that is the
date on which it became available to anyone for viewing” See, e.g., London Luxury,
PGR2021-00083, Ex. 1013; see also Ex. 1014 at 1 (“When you make a video public
on YouTube, the date on the watch page is based on Pacific Standard Time (PST).
40
If you want a certain date to show beneath your video, upload your video on that
date.”); Ex. 1015. Because the Digital Debit Video indicates that it was posted
publicly on November 20, 2017, it became available to anyone for viewing as of that
date. Ex. 1007 at 1; Ex. 1002, ¶62.
substance, internal patterns, or other distinctive characteristics” of the Digital Debit
Video is sufficient to show that it is what it purports to be. Fed. R. Evid. 901(4).
be sources of prior art, provided the public accessibility requirements . . . are met.”
was made public on YouTube. See Ex. 1014 at 1. The Digital Debit video was
publicly available on YouTube on November 20, 2017 and has received 300 views.
See Ex. 1007 at 1.
The opening frame of the Digital Debit Video contains “© 2017 Digital
Debit® Group”:
41
A 2017 copyright notice combined with being published on the internet is
evidence of public availability. See, e.g., General Elec. Co. v. United Techs. Corp.,
IPR2017-00425, Paper 39 at 40-41 (PTAB July 2, 2018).
Moreover, persons interested and having ordinary skill in cashless payment
applications could locate the Digital Debit Video exercising reasonably diligence.
For instance, persons interested and having ordinary skill could locate the Digital
Debit Video by searching for videos concerning digital debiting for payments. Ex.
1002, ¶63. As YouTube explains, search queries are compared to video titles, tags,
description, and video content. See Ex. 1017 at 1 (“To estimate relevance we look
into many factors, such as how well the title, tags, description, and video content
42
match your search query. Engagement signals are a valuable way to determine
relevance.”) https://www.youtube.com/howyoutubeworks/product-features/search/.
Having made the requisite showing that the Digital Debit Video is more likely
than not a printed publication, the burden of production is on the Patent Owner to
show that the Digital Debit Video is not prior art. See Dynamic Drinkware, LLC,
800 F.3d at 1379-80.7 However, here, Patent Owner is unable to do so because it has
already admitted that the Digital Debit Video is prior art. Ex. 1076, ¶149.
The Digital Debit Video is “Otherwise Available to the Public” Prior Art
The Digital Debit Video also qualifies as prior art to the ’702 Patent under
Section 102 as being “otherwise available to the public.” As noted earlier, the US
Patent & Trademark Office’s training materials specifically list YouTube videos as
prior art that should be considered “otherwise available to the public” under 35
U.S.C. § 102 (a)(1). Ex. 1018 at 15. And the evidence described above, including
the Patent Owner’s admission that the Digital Debit Video is prior art that was
published to Youtube, confirms that the Digital Debit Video was otherwise available
to the public as of its publication date of November 20, 2017. Thus, although the
PTAB has held that YouTube videos are printed publications, even if the Board was
7
As noted, Petitioner reserves the right to seek additional discovery to obtain a
Certificate of Authenticity for each YouTube.com video referenced in this Petition.
43
to find that the Digital Debit Video was not a printed publication, it also qualifies as
prior art under the “otherwise available to the public” prong of 35 U.S.C. § 102(a)(1).
5. Digital Debit Patent (Ex. 1008)
U.S. Patent No. D857,054 S to Grecia is for a “Display Screen or Portion
Thereof with a Graphical User Interface.” Ex. 1008 at 1. The Digital Debit Patent
issued on August 20, 2019, which is more than one year before the filing date of the
’702 Patent and is prior art to the ’702 Patent under 35 U.S.C. § 102(a)(1) as of that
date. Although the Digital Debit Patent was prior art of record during prosecution
of the ’702 Patent, it was not considered as a secondary reference to the Digital Debit
Video, which was not of record during prosecution of the ’702 Patent. Ex. 1002,
¶64.
The Digital Debit Patent appears to claim an alternative design for the Digital
Debit application featured in the Digital Debit Video (Ex. 1007, Ex. 1074).8 Like the
’702 Patent, the Digital Debit Patent shows a GUI that includes both the Three
Square Arrangement and the $0.00, as shown below. Ex. 1008 at 3; Ex. 1002, ¶65.
8
The originally filed application that ultimately issued as the Digital Debit Patent
included 33 separate figures, many of which appear to be substantially similar to
screenshots from the Digital Debit Video. See, e.g., Ex. 1071.
44
Notably, the U.S. dollar sign symbol “$” in the Digital Debit Patent is in the
same font, size, and location as the $ in the ’702 Patent. Ex. 1002, ¶66. As shown
in Section IX.D., infra, the Digital Debit Patent is relied upon herein in Ground IV
as a secondary reference to support that it would be obvious to substitute the U.S.
dollar sign symbol “$” in the Digital Debit Patent for the “USD” abbreviation in the
Digital Debit Video (Ex. 1007, Ex. 1074).
VII. CLAIM CONSTRUCTION
A. Legal Standard for Claim Construction
In a post-grant review proceeding, a patent claim is construed “using the same
claim construction standard that would be used to construe the claim in a civil
action” including “construing the claim in accordance with the ordinary and
customary meaning of such claim as understood by one of ordinary skill in the art
45
and the prosecution history pertaining to the patent.” 37 CFR § 42.200 (b). “Any
prior claim construction determination concerning a term of the claim in a civil
action, or a proceeding before the International Trade Commission, that is timely
made of record in the post-grant review proceeding will be considered.” Id. To date,
to the best of petitioner’s knowledge, no such claim construction determinations
have occurred for the ’702 Patent.
Unlike utility patents, claim construction for design patents does not require
a detailed verbal description of the claimed design. For design patents, it is well
settled that a claimed design is represented better by an illustration than a
description. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir.
2008) (en banc) (citing Dobson v. Dornan, 118 U.S. 10, 14 (1886)). Although a
detailed verbal description of a claimed design is not necessary, it may be helpful to
address other issues that can bear on claim scope, such as the role of broken lines in
the figures and how the features of the claimed design relate to the prior art.
Egyptian Goddess, 543 F.3d at 679–80.
46
B. Claim Construction of the ’702 Patent
1. The broken lines form no part of the claimed design.
Because it is well settled that a claimed design is represented better by an
illustration than a description, Petitioner proposes that the ’702 Patent claim should
be construed as a display screen portion with an animated graphical user interface
having a sequence of images including solely the elements shown in non-broken
lines in the two embodiments shown in FIGS. 1-5. The broken lines in the figures,
including the portion of a display screen and computer device, the text, and other
portions of the graphical user interface shown in broken lines in the figures form no
part of the claimed design. Ex. 1001 at 1; Ex. 1002, ¶67.
The only features shown in solid lines in the two embodiments of the ’702
Patent are the Three Square Arrangement and the $0.00. Everything else in FIGS.
1, 2, 3, and 5 is shown in broken lines. Moreover, the entirety of FIG. 4 is depicted
in broken lines. This, coupled with the statement in the ’702 Patent that the broken
lines form no part of the claimed design,9 means that the claimed design is simply
an animated GUI displaying an image including the Three Square Arrangement
followed by an image including the $0.00. The animated GUI may display the image
9
This statement is consistent with the conventional non-limiting meaning of broken
lines in design patent practice. In re Zahn, 617 F.2d 261, 267 (C.C.P.A. 1980).
47
with the $0.00 immediately after displaying the image with the Three Square
Arrangement as in the First Embodiment, or it may display another image between
them as in the Second Embodiment. Ex. 1002, ¶68.
Campbell Soup v. Gamon Plus, 10 F.4th 1268 (Fed. Cir. 2021) involved a
design patent that similarly made extensive use of broken lines. There, the claimed
design was to a gravity feed dispenser display for soup cans with the figure using
broken lines extensively, such that only certain isolated parts of the dispenser were
claimed. The court in Campbell held that only the portions of the design shown in
solid lines constituted the claimed design, as shown below:
Id. at 1271.
A similar construction should be applied here. Removing the broken line
elements from the figures, the claimed design can be illustrated as a display screen
48
having an animated GUI displaying an image including the Three Square
arrangement:
followed by an image including the amount:
Everything else is shown in broken lines in the ’702 Patent, and thus nothing
else is part of the ’702 Patent’s claimed design. Ex. 1002, ¶69.
2. The two embodiments are basically the same and patentably

indistinct from one another.
As already discussed, the ’702 Patent includes five figures, divided into a First
Embodiment (shown in FIGS. 1-2) and a Second Embodiment (shown in FIGS. 35).
Both embodiments show an animated graphical user interface displaying an image
including a Three Square Arrangement followed by $0.00. The only difference
between the two embodiments is that the Second Embodiment includes an additional
image (FIG. 4) between the Three Square Arrangement image and the $0.00 image.
Ex. 1002, ¶70.
49
As already discussed, Figure 4 is shown entirely in broken lines, which the
’702 Patent states form no part of the claimed design. As such, the two embodiments
are basically the same. Importantly, the intermediate image in the Second
Embodiment could literally be any image (including a blank screen or dark screen)
whatsoever since the entirety of FIG. 4 is depicted in broken lines. In view of the
non-limiting nature of FIG. 4, the two embodiments are basically the same and not
patentably distinct. Ex. 1002, ¶71.
During prosecution of the ’131 Application, the examiner reached the same
conclusion. In an August 13, 2021 notice of allowability, the examiner found that
the two embodiments presented “overall appearances that are basically the same”
50
and that the differences between the embodiments were “minor and patentably
indistinct, or are shown to be obvious in view of analogous prior art cited.” Ex. 1003
at 66.
As the two embodiments are patentably indistinct, any prior art that
invalidates one of the embodiments necessarily invalidates the other embodiment as
well. Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965); Trucook, LLC v.
Bond/Helman, Inc., 2001 WL 826864 at *3 (N.D. Il. 2008) (citing In re Rubinfield,
270 F.2d 391, 123 USPQ 210 (CCPA 1959)) (“It is well established that multiple
embodiments of a single inventive concept may be included in the same design
application only if they are patentably indistinct.”); MPEP § 1504.05 (“If multiple
designs are held to be patentably indistinct and can be covered by a single claim, any
rejection of one over prior art will apply equally to all.”). In view of the foregoing,
prior art that invalidates the First Embodiment (FIGS. 1-2) of the ’702 Patent
necessarily invalidates the Second Embodiment (FIGS. 3-5), and vice versa. Ex.
1002, ¶72.
3. The positions and sizes of the Three Square Arrangement

and the $0.00 relative to the display screen are not part of the
claimed design.
The positions and sizes of the Three Square Arrangement and the $0.00
relative to the display screen should be found, for purposes of this proceeding, to
form no part of the claimed design, consistent with Patent Owner’s assertions of the
51
’702 Patent. As noted above, there are several pending infringement lawsuits for
the ’702 Patent. In those lawsuits, Patent Owner has asserted that the ’702 Patent
covers animated GUIs that locate a QR code (or an icon symbolizing a QR code)
and a $0.00 in a wide variety of places and in a wide variety of sizes relative to the
display screen. Ex. 1002, ¶75.
For example, in the Samsung Litigation, Patent Owner asserts that the ’702
Patent covers an animated GUI displaying an extremely small icon representing a
QR-code, positioned in the upper right part of a display, followed by displaying a
relatively small $0.00 positioned towards the left side of a display. Ex. 1065 at 2-4.
Additionally, it should be noted that the accused Samsung GUI has squares in its
Three Square Arrangement that are not solid-black and are relatively small and more
closely spaced than the Three Square Arrangement of the ’702 Patent, further
illustrating the broad construction Patent Owner ascribes to the ’702 Patent. Id.; see
also, e.g., Google Inc. v. Intellectual Ventures II LLC, IPR2014-00787, Paper 91 at
18 (PTAB July 24, 2020) (“[T]he Board has relied on district court infringement
contentions for claim construction purposes, implicitly acknowledging their
relevance.” (quotations omitted)) (citing Apple, Inc. v. Aylus Networks, Inc., 2015
WL 1870710 (PTAB Apr. 22, 2015)).
52
As another example, in the Amazon Litigation, Patent Owner asserts that the
’702 Patent covers an animated GUI displaying a QR Code and its Three Square
Arrangement rotated on a screen, followed by displaying an extremely small $0.00
as part of a shipping and handling charge of an order. Ex. 1051 at 2-4.
53
In the PNC Litigation, Patent Owner asserts that the ’702 Patent covers an
animated GUI displaying an extremely small icon representing a QR-code,
positioned in the upper right part of a display, followed by displaying an extremely
small $0.00 positioned towards the right side of a display. Ex. 1063 at 2-4. As in
the Samsung Litigation, the accused Three Square Arrangement of the accused PNC
GUI has squares that are not solid-black and are relatively tiny and closely spaced.
In the PayPal Litigation, Patent Owner asserts that the ’702 Patent covers an
animated GUI displaying a real QR-code (as opposed to an icon representing a QR
code as in the Samsung and PNC Litigations), with the QR-code positioned centrally
on a display, followed by displaying a $0.00 positioned at the left edge of the display.
Ex. 1061 at 2-4. Additionally, the accused PayPal GUI: (i) has a Three Square
Arrangement with squares that are larger and more closely spaced to one another
54
than in the ’702 Patent, and (ii) has a $0.00 of a different font than in the ’702 Patent.
Id.
As a final example, in the Bank of America Litigation, Patent Owner asserts
that the ’702 Patent covers an animated GUI displaying a real QR code positioned
centrally on a display, followed by displaying a relatively small $0.00 positioned
centrally on the display. Ex. 1055 at 2-4.
55
In view of the foregoing, for the purposes of its infringement allegations,
Patent Owner has construed its patent broadly, covering literally any placement and
any relative size of the Three Square Arrangement and the $0.00 value, different
configurations of the Three Square Arrangement, and different fonts of the $0.00
value. For purposes of this petition, Patent Owner should be held to its prior claim
interpretation positions. See Google Inc., IPR2014-00787, Paper 91 at 18
(indicating litigation claim construction positions are relevant to PTAB
proceedings). Thus, for purposes of this proceeding, the Board should similarly
construe the alleged ’702 Patent design to not require any particular relative
positioning or size of the Three Square Arrangement or the $0.00.
56
VIII. SECTIONS 102, 103 – LEGAL STANDARDS FOR INVALIDITY
A. Section 102 Anticipation
The test for determining anticipation of a design patent under 35 U.S.C. § 102
is the “ordinary observer test.” See Int’l Seaway Trading Corp. v. Walgreens Corp.,
589 F.3d 1233, 1240 (Fed. Cir. 2009) (applying the same ordinary observer test used
for the design patent infringement analysis in Gorham Mfg. Co. v. White, 81 U.S.
511, 528 (1871) to the design patent anticipation analysis). Under the ordinary
observer test, a design patent is invalid if, “in the eye of an ordinary observer, giving
such attention as a purchaser usually gives, two designs are substantially the same,
if the resemblance is such as to deceive such an observer, inducing him to purchase
one supposing it to be the other.” Gorham, 81 U.S. at 528; see also Int’l Seaway,
589 F.3d at 1239; Door-Master Corp. v. Yorktowne, 256 F.3d 1308, 1313 (Fed. Cir.
2001) (emphasis added).
Unlike the strict identity standard for anticipation in the utility patent context,
the test for anticipation with design patents requires only “substantial” similarity—
“minor differences cannot prevent a finding of anticipation.” Int’l Seaway, 589 F.3d
at 1243; see also Door-Master, 256 F.3d at 1312-13. Thus, anticipation can be
avoided in a design patent analysis only by a showing of more than minor
differences between the two designs.
57
B. The Ordinary Observer
The ordinary observer for purposes of the ’702 Patent is a purchaser or other
user of a mobile device or other device having a display screen for displaying an
animated GUI. As one example, an ordinary observer could be a user of an iPhone
or Android smart phone with an application that displays a QR code as part of
facilitating a financial transaction. Ex. 1002, ¶80.
C. Section 103 Obviousness
For design patents, “the ultimate inquiry under section 103 is whether the
claimed design would have been obvious to a designer of ordinary skill who designs
articles of the type involved.” MRC Innovations, Inc. v. Hunter Mfg., LLP, 747 F.3d
1326, 1331 (Fed. Cir. 2014) (internal quotation and citations omitted); see also High
Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301, 1313 (Fed. Cir. 2013);
Apple, Inc. v. Samsung Elecs. Co., Ltd., 678 F.3d 1314, 1329 (Fed. Cir. 2012). In
determining obviousness for design patents, the first step is to identify a primary
reference – “a single reference, ‘a something in existence, the design characteristics
of which are basically the same as the claimed design.’” MRC Innovations, 747 F.3d
at 1331 (quoting In re Rosen, 673 F.2d 388, 391 (C.C.P.A. 1982)) (emphasis added).
The “basically the same” test requires consideration of the “visual impression
created by the patented design as a whole.” MRC Innovations, 747 F.3d at 1331.
58
Once a primary reference is found, if the differences between the primary
reference and the patented design are de minimis, then the design will be invalid as
obvious without the need to consider any secondary reference. In re Nalbandian,
661 F.2d 1214, 1217 (C.C.P.A. 1981); MPEP § 1504.03(II) (“Examiners are advised
that differences between the claimed design and a primary reference may be held to
be minor in nature and unrelated to the overall aesthetic appearance of the design
with or without the support of secondary references.”).
Alternatively, “other references may be used to modify [the primary
reference] to create a design that has the same overall visual appearance as the
claimed design.” High Point Design, 730 F.3d at 1311 (internal quotation and
citations omitted). In order to modify a primary reference, a secondary reference
must be “so related that the appearance of certain ornamental features in one
would suggest the application of those features to the other.” MRC Innovations,
747 F.3d at 1334 (finding that mere similarity in appearance is sufficient to suggest
that one should apply certain features to the other design). When a secondary
reference is “so related” to the primary reference, the similarity in appearance among
them is enough to motivate a designer of ordinary skill to combine features from one
59
with features from the other to create a hypothetical reference. Id. at 1334-35; see
also High Point Design, 730 F.3d at 1315.10
Once a hypothetical reference has been created, the next step is to analyze the
hypothetical reference and the claimed design through the eyes of a designer of
ordinary skill to determine if a design patent is invalid for obviousness. See MRC
Innovations, 747 F.3d at 1331 (affirming district court’s finding of a design patent
invalid as obvious in light of the prior art); High Point Design, 730 F.3d at 1313.
Under 35 U.S.C. § 103, the overall claimed design is what is important; small
differences are inconsequential. See MRC Innovations, 747 F.3d at 1335 (finding
insubstantial and obvious the addition of an ornamental surge stitching on top of a
garment’s existing seam even though no prior art had the same surge stitching in the
same position as the claimed design); In re LAMB, 286 F.2d 610, 611-12 (C.C.P.A.
1961) (upholding rejection of design claim as invalid because the slight change in
some dimensions over the prior art was insignificant).
10
See also MPEP § 1504.03(II)(A) (“The long-standing test for properly combining
references has been ‘...whether they are so related that the appearance of certain
ornamental features in one would suggest the application of those features to the
other.’ In re Glavas, 230 F.2d 447, 450, 109 USPQ 50, 52 (CCPA 1956).”)
60
D. The Designer of Ordinary Skill
The designer of ordinary skill would be someone with a background in
designing animated GUIs, such as animated GUIs that use QR codes to facilitate
financial transactions. Ex. 1002, ¶84.
IX. SECTIONS 102, 103 – DETAILED EXPLANATION OF GROUNDS

FOR UNPATENTABILITY
A. Ground 1: The ’702 Patent claim is anticipated by Reddy.
There is no patentable difference between the ’702 Patent’s claimed design
and Reddy. Reddy discloses a design for an animated GUI that displays an image
including substantially the same Three Square Arrangement as the ’702 Patent
followed by an image including substantially the same $0.00 value as the ’702
Patent. In the eye of an ordinary observer, giving such attention as a purchaser
usually gives, the ’702 Patent’s claimed design is substantially the same as the
corresponding design in Reddy such that the resemblance would deceive the
observer, inducing him or her to purchase one supposing it to be the other. Reddy
discloses animated GUIs with an overall appearance that is substantially the same as
both embodiments of the ’702 Patent, as explained below. Ex. 1002, ¶85.
Reddy discloses the First Embodiment.
Regarding the First Embodiment, Reddy discloses a mobile device QR code
payment system in which scanning a QR code on a mobile device is followed by
entering a payment amount on the mobile device. Ex. 1004, FIGS. 1, 9, 12, ¶ [0036].
61
Reddy FIG. 9 shows a mobile device display screen with a GUI displaying a design
including substantially the same Three Square Arrangement as the ’702 Patent.
Reddy FIG. 12 shows the mobile device display screen with a GUI displaying a
design including substantially the same $0.00 value as the ’702 Patent. Sequentially,
Reddy states that its FIG. 12 GUI image is displayed after the FIG. 9 GUI image.
The overall appearance of Reddy is substantially the same as the overall appearance
of the ’702 Patent’s claimed design. Both disclose animated GUIs that display the
following design (Ex. 1002, ¶86):
Thus, both the ’702 Patent and Reddy show a display screen portion with an
animated GUI including an image including a Three Square Arrangement followed
by an image including $0.00. Although not required for reasons discussed in the
62
claim construction section above,11 both the ’702 Patent and Reddy show three solid
squares of substantially the same or similar size, position, and alignment relative to
one another such that they would be positioned at the top left, top right, and bottom
left corners of a square, with substantially the same amounts of separation between
the three solid squares. Both show a $0.00 in practically identical style and font.
Thus, the overall visual effect of the claimed design in the ’702 Patent and the design
disclosed in Reddy would be substantially the same to an ordinary observer. Ex.
1002, ¶87.
Reddy teaches that displaying QR details at step 128 in FIG. 1 is optional, and
therefore discloses an embodiment in which FIG. 9 and FIG. 12 are displayed in
sequence, with no images displayed between them. Supra note 2. Thus, Reddy
discloses an animated GUI with an overall appearance that is substantially the same
to the claimed design in the First Embodiment of the ’702 Patent, as shown below.
Ex. 1002, ¶88.
11
As discussed in Section VII.B.3, supra, Patent Owner has asserted that its ’702
Patent covers designs with a wide variety of relative sizes and positions of the Three
Square Arrangement and the $0.00 value on a display screen.
63
Reddy discloses the Second Embodiment.
Regarding the Second Embodiment, Reddy discloses that its animated GUI
may display:
 An image including substantially the same Three Square Arrangement
as the ’702 Patent (at step 124 in FIG. 1);
 Optionally followed by an image showing details about a QR code (at
step 128 in FIG. 1);
 Followed by an image including substantially the same $0.00 as
the’702 Patent (at step 130 in FIG. 1).
64
Ex. 1004, FIGS. 1, 9, 12, ¶ [0036]. This is substantially the same as the sequence of
FIG. 3 to FIG. 4 to FIG. 5 in the Second Embodiment of the ’702 Patent, as shown
below. Ex. 1002, ¶89.
As the two embodiments are patentably indistinct, as discussed supra, any
prior art that invalidates one of the embodiments necessarily invalidates the other
embodiment as well. Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965);
MPEP § 1504.05 (“If multiple designs are held to be patentably indistinct and can
be covered by a single claim, any rejection of one over prior art will apply equally
to all.”).
65
No material differences between Reddy and the claimed design
Any alleged difference between Reddy and the figures of the ’702 Patent is
immaterial to the invalidity of the ’702 Patent’s claimed design. Ex. 1002, ¶90.
First, although FIGS. 9 and 12 of Reddy show slightly different relative
positions and sizes of the Three Square Arrangement and the $0.00 relative to the
display screen than is shown in the ’702 Patent figures, those differences are not
material to an invalidity analysis. As discussed above in Section VII.B., the ’702
Patent shows the display screen in broken lines, which means that the display screen
forms no part of the claimed design. As such, the sizes and positions of the Three
Square Arrangement and the $0.00 relative to the display screen are irrelevant to
invalidity. Ex. 1002, ¶91.
Second, although close inspection of the ’702 Patent and Reddy shows the
squares of the ’702 Patent’s Three Square Arrangement having slightly different
proportions (spaced further apart) than the squares of the Reddy Three Square
Arrangement, this difference is also irrelevant for several reasons. Ex. 1002, ¶92.
For one, the fact that the proportions between the Three Squares Pattern of the
’702 Patent and Reddy are slightly different from one another does not change that
66
the overall visual effect of the claimed design in the ’702 Patent and the design
disclosed in Reddy would be substantially the same to an ordinary observer. The
extremely minimal difference in proportions is irrelevant because the law is clear
that “minor differences cannot prevent a finding of anticipation.” Int’l Seaway, 589
F.3d at 1243. When focusing on just the claimed parts of the design, as required,
both designs have substantially the same overall appearance – an animated GUI
displaying an image of three solid squares arranged in the upper left, upper right,
and bottom left corners of a square, followed by an image of a $0.00. Such minor
spatial differences do not change the conclusion that Reddy anticipates the ’702
Patent. The overall visual effect of the claimed design in the ’702 Patent and the
design disclosed in Reddy would be substantially the same to an ordinary observer.
Ex. 1002, ¶93.
Additionally, as discussed above, Patent Owner should not be permitted to
contradict its claim interpretation positions from its pending lawsuits. Since Patent
Owner has asserted that its alleged design reads on designs having widely varying
Three Square Arrangement configurations (supra § VII.B.3), the same should be
true for how the Board construes this patent for purposes of this PGR. Thus, Patent
Owner’s litigation positions support that the ’702 Patent reads directly on Reddy and
is thus unpatentable.
67
B. Ground 2: The ’702 Patent claim is obvious over Reddy by itself or
Reddy in view of SGQR.
If the Board determines that Reddy does not anticipate the ’702 Patent, the
design claimed in the ’702 Patent would nonetheless have been obvious to a designer
of ordinary skill in the relevant field, either based on Reddy itself or over Reddy in
view of SGQR. Ex. 1002, ¶94.
1. The ’702 Patent claim is obvious over Reddy.
Reddy constitutes a primary reference for purposes of 35 U.S.C. § 103. Reddy
discloses design characteristics that are “basically the same as” the claimed design,
taking into account the visual impressions created by the ’702 Patent’s claimed
design as a whole. MRC Innovations, 747 F.3d at 1331. Reddy discloses a mobile
device QR code payment in which a GUI displays an image including a QR code
followed by an image including $0.00. FIG. 9 shows a mobile device display screen
with a GUI displaying an image including substantially the same Three Square
Arrangement as the ’702 Patent. FIG. 12 shows the mobile device display screen
with a GUI displaying an image including substantially the same $0.00 as the ’702
Patent. Reddy also discloses that the FIG. 12 image may be displayed immediately
after the FIG. 9 image (like the First Embodiment of the ’702 Patent) or that an
optional image may be displayed between the FIG. 9 and FIG. 12 images (like the
Second Embodiment of the ’702 Patent). As can be seen below, the animated GUI
display disclosed in Reddy has design characteristics that are basically the same as
68
the claimed design in the ’702 Patent, particularly when only the solid line claimed
elements shown in the ’702 Patent are compared to Reddy. Ex. 1002, ¶95.
Because the claimed design in the ’702 Patent and Reddy are so similar, no
secondary reference is necessary. See In re Nalbandian, 661 F.2d 1214, 1217-18
(C.C.P.A. 1981); Lowe’s Home Centers, LLC v. Reddy, IPR2015-00306, Paper 21
at 26 (PTAB Mar. 30, 2016). The claimed design of the ’702 Patent is invalid as
obvious under 35 U.S.C. § 103 based on Reddy by itself. The differences between
Reddy and the ’702 Patent’s claimed design, to the extent there are any, are de
minimis and not sufficient to justify a finding that the design is patentable. In re
69
Lamb, 286 F.2d at 611. For example, to the extent the Three Square Arrangement
of the ’702 Patent could be viewed as being different in appearance from the Three
Square Arrangement shown in FIG. 9 of Reddy due to the slightly different spacing
of the squares shown in those figures, this difference would be de minimis and not
sufficient to justify a finding that the design is patentable. See In re Lamb, 286 F.2d
at 611 (“When considering the patentability of a design it is the appearance as a
whole which must be considered, and the mere fact that there are differences over
the prior art structures is not alone sufficient to justify a holding that the design is
patentable. . . . The fact that some dimensions are changed in a different degree
than others is not patentably significant.” (emphasis added)); see also Ex. 1002,
¶96.12
Moreover, a designer of ordinary skill would have understood and appreciated
that the appearance of Reddy would have been easily modified by replacing the QR
code of Reddy with a higher version QR code that would inherently include
relatively smaller and further spaced apart squares in the Three Square Arrangement.
A designer of ordinary skill would have been motivated to do this, for instance, to
12
Similarly, to the extent the sizes of the $0.00 shown in Reddy and in the ’702
Patent could be viewed as being different in appearance, those differences would not
have any patentable significance either. Supra § VII.B.3.
70
increase the amount of data that the QR code contains, as discussed above. Supra §
IX.A; Ex. 1002, ¶97.
As such, it would be obvious to a designer of ordinary skill to modify the
Three Square Arrangement in FIG. 9 of Reddy to space the squares further apart
thereby providing a QR code with the same spacing of the Three Square
Arrangement shown in the ’702 Patent. Ex. 1002, ¶98.
Therefore, considering Reddy alone, a designer of ordinary skill who designs
articles of the type involved would find that the claimed ’702 Patent design as a
whole has substantially the same overall visual appearance as the Reddy design,
modified as shown above. Accordingly, the design claimed in the ’702 Patent is
obvious under 35 U.S.C. § 103 in view of Reddy alone. Ex. 1002, ¶99.
2. The ’702 Patent claim is obvious over Reddy in view of

SGQR.
Additionally, to the extent the Board determines that Reddy does not render
the ’702 Patent obvious by itself due to the slightly different spacing of the Three
71
Square Arrangement of Reddy, Reddy in view of SGQR would still render the ’702
Patent obvious. Reddy and SGQR are closely related to one another and are
analogous art. Just like Reddy, SGQR discloses a mobile device QR code payment
application. Just like Reddy, SGQR discloses a mobile device graphical user
interface that displays a QR code including a similar Three Square Arrangement to
that of Reddy followed by displaying an image for entering an amount in U.S.
dollars.13 Ex. 1002, ¶100.
13
Because Reddy has substantially the same “$0.00” as claimed in the ’702 Patent,
and SGQR is relied upon solely for showing the obviousness of substituting its
higher data QR code for the QR code in Reddy, the slightly different appearance of
the $___ in SGQR from the $0.00 in the ’702 Patent is immaterial to this obviousness
analysis. Ex. 1002, ¶100.
72
Due to these and other similarities apparent from a simple visual comparison,
as shown above, Reddy and SGQR are so related that the appearance of the QR code
and its Three Square Arrangement in SGQR would suggest to a designer of ordinary
skill the use of it instead of the slightly smaller QR code in Reddy. MRC
Innovations, 747 F.3d at 1334 (“[I]t is the mere similarity in appearance that itself
provides the suggestion that one should apply certain features to another design.”);
In re Borden, 90 F.3d 1570, 1574-75 (Fed. Cir. 1996). Accordingly, the QR code in
SGQR could be substituted for the QR code in Reddy. Moreover, as noted above, a
designer of ordinary skill would see a logical reason to do this, such as to use a larger
73
QR code that can contain more data.14 A designer of ordinary skill would understand
that a larger QR code would be an easy substitution to allow the QR code to store
more data. Ex. 1002, ¶101.
Comparing the hypothetical combination of Reddy and SGQR to the claimed
design of the ’702 Patent shows that the ’702 patent is obvious. A designer of
ordinary skill would find the hypothetical reference of Reddy combined with the QR
code of SGQR (including its particular Three Square Arrangement) to be
substantially the same as the ’702 Patent’s claimed design. This hypothetical
combination includes all of the claimed features and substantially the same overall
appearance of the claimed parts of the ’702 Patent’s design—including the particular
Three Square Arrangement of the ’702 Patent, the particular $0.00 of the ’702 Patent,
and displaying an animated graphical user interface showing the Three Square
Arrangement followed by the $0.00. Ex. 1002, ¶102.
14
Similarly, to the extent the sizes of the $0.00 shown in Reddy and in the ’702
Patent could be viewed as being different in appearance, those differences would not
have any patentable significance either.
74
75
Therefore, considering Reddy in view of SGQR, a designer of ordinary skill
who designs articles of the type involved would find that the claimed ’702 Patent
design as a whole has substantially the same overall visual appearance as the
modified Reddy design. Accordingly, the design claimed in the ’702 Patent also is
obvious under 35 U.S.C. § 103 over Reddy in view of SGQR. Ex. 1002, ¶103.
C. Ground 3: The ’702 Patent claim is anticipated by GrabPay.
There is no patentable difference between the ’702 Patent’s claimed design
and GrabPay. GrabPay shows an animated GUI displaying an image including
substantially the same Three Square Arrangement as the ’702 Patent, followed by
an intermediate image, followed by an image including substantially the same $0.00
as the ’702 Patent. Therefore, GrabPay anticipates the Second Embodiment of the
’702 Patent claim, thereby invalidating both embodiments of the ’702 Patent. Ex
parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965); MPEP § 1504.05; Ex.
1002, ¶104.
In the eye of an ordinary observer, giving such attention as a purchaser usually
gives, the design disclosed in GrabPay is substantially the same as the design
claimed in the ’702 Patent, such that the resemblance would deceive the observer,
inducing him or her to purchase one supposing it to be the other. A simple
comparison of the figures of the ’702 Patent to GrabPay shows that the two designs
76
would be substantially the same in the eye of an ordinary observer (see Ex. 1002,
¶105):
GrabPay discloses a mobile device displaying an animated graphical user
interface that includes an image of a standard QR code, followed in sequence by a
different intermediate image, followed in sequence by an image including a $0.00.
77
The QR code displayed in GrabPay includes a standard Three Square Arrangement
that is substantially the same as that shown in the ’702 Patent. The $0.00 displayed
in GrabPay is in substantially the same style, font, and appearance as the $0.00
shown in the ’702 Patent. Ex. 1002, ¶106.
Any differences between GrabPay and the figures of the ’702 Patent are de
minimis. First, although the QR code and the Three Square Arrangement is
somewhat blurry in the GrabPay video, the ordinary observer would readily
recognize the QR code from the video as a standard QR code, inherently including
the same Three Square Arrangement of conventional QR codes. Ex. 1002, ¶107.
Second, although GrabPay shows slightly different positioning of the Three
Square Arrangement and the $0.00 relative to the display screen than is shown in the
’702 Patent’s figures, the ’702 Patent shows the display screen in broken lines and
explicitly says that it forms no part of the claimed design. Thus, the relative position
and size of the alleged design features on the display screen is not part of the claimed
design. See Section VII(B)(3), supra; Ex. 1002, ¶108.
Additionally, the fact that the positioning of the Three Squares Arrangement
and the $0.00 of the ’702 Patent and GrabPay appear slightly different from one
another does not change that the overall visual effect of the claimed design in the
’702 Patent and the design disclosed in GrabPay would be substantially the same to
an ordinary observer. The minimal difference in size and/or positioning is irrelevant
78
because the law is clear that “minor differences cannot prevent a finding of
anticipation.” Int’l Seaway, 589 F.3d at 1243. Both designs have substantially the
same overall appearance—an animated GUI displaying an image of three solid
squares arranged in the upper left, upper right, and bottom left corners of a square,
followed by an intermediate image, followed by an image including a $0.00. Any
perceived differences are de minimis and do not change that GrabPay anticipates the
’702 Patent.15 The overall visual effect of the claimed design in the ’702 Patent and
the design disclosed in GrabPay would be substantially the same in the eye of an
ordinary observer. Ex. 1002, ¶109.
Additionally, as discussed in the claim construction section, the ’702 Patent
should be construed for invalidity in a manner consistent with how Patent Owner
has asserted it for infringement. Since Patent Owner has asserted that its alleged
design reads on designs having widely varying size and positioning for the Three
15
For similar reasons, the slightly different “$” in GrabPay from the ’702 Patent is
de minimis and does not change that the overall visual effect of the claimed design
and the design disclosed in GrabPay would be substantially the same in the eye of
an ordinary observer. This conclusion is supported by Patent Owner’s position in the
PayPal litigation that the PayPal App, which includes a similar $ as GrabPay, is
alleged to infringe the ’702 patent. Ex. 1061 at 4.
79
Square Arrangement and $0.00 configurations (supra § VII.B.), the same should be
true for how the Board construes this patent for purposes of this PGR. For this reason
also, the ’702 Patent reads directly on GrabPay. Ex. 1002, ¶110.
The overall visual effect of the claimed design in the ’702 Patent and the
design disclosed in GrabPay would be substantially the same to an ordinary
observer. GrabPay thus anticipates the ’702 Patent. Ex. 1002, ¶111.
D. Ground 4: The ’702 Patent claim is obvious over the Digital Debit
Video in view of the Digital Debit Patent.
The Digital Debit Video (Ex. 1007, Ex. 1074) constitutes a primary reference
for purposes of 35 U.S.C. § 103. The Digital Debit Video discloses design
characteristics that are basically the same as the claimed design taking into account
the visual impressions created by the ’702 Patent’s claimed design as a whole. MRC
Innovations, 747 F.3d at 1331. The Digital Debit Video discloses an animated GUI
for QR code payment that displays an image including a QR code with a Three
Square Arrangement followed by an image including a 0.00. As can be seen below,
the animated GUI disclosed in the Digital Debit Video has design characteristics that
are basically the same as the First Embodiment of the ’702 Patent when only the
non-broken line claim elements shown in the ’702 Patent are compared to the Digital
Debit Video as they must. Ex. 1002, ¶112.
80
The only difference between the ’702 Patent’s claimed design and the Digital
Debit Video is that the Digital Debit Video displays the abbreviation “USD” before
the 0.00 rather than a “$.” This difference is not sufficient to preserve the validity
of the ’702 Patent because it would be obvious to substitute the dollar sign symbol
“$” for the “USD” in the Digital Debit Video, as shown by the Digital Debit Patent
(Ex. 1008). Ex. 1002, ¶113.
The Digital Debit Video and the Digital Debit Patent are closely related to one
another—both relating to GUIs for financial transactions—and constitute analogous
81
art. Indeed, both references relate to GUIs for the same “Digital Debit” application
platform in “Receive Mode,” as shown below (see Ex. 1002, ¶114):
Visually, both references show a GUI including a QR code with a Three
Square Arrangement as well as an amount of 0.00 in U.S. dollars. The striking visual
similarity of the two GUIs is unsurprising given that Qondado LLC and William
Grecia, the purported assignee and inventor of the Digital Debit Patent, respectively,
own and control Digital Debit. See Section VI.B.4. supra; Ex. 1008; Ex. 1002, ¶115.
Relevant images from the Digital Debit Video and the Digital Debit Patent are
shown below:
82
Due to these and other similarities apparent from a simple visual comparison,
the Digital Debit Video and the Digital Debit Patent are so related that the
appearance of the $0.00 in the Digital Debit Patent would suggest to a designer of
ordinary skill the use of the same “$” feature from the Digital Debit Patent in the
Digital Debit Video. MRC Innovations, 747 F.3d at 1334 (“[I]t is the mere similarity
in appearance that itself provides the suggestion that one should apply certain
features to another design.”); In re Borden, 90 F.3d 1570, 1574–75 (Fed. Cir. 1996).
Accordingly, the appearance of the “$0.00” in the Digital Debit Patent would suggest
to a designer of ordinary skill to use it in place of the “USD 0.00” in the Digital
Debit Video. Ex. 1002, ¶116.
83
Moreover, a designer of ordinary skill would find reason to make this simple
substitution. Indeed, the sole purpose of the “$” symbol is to represent U.S. dollars,
i.e., “USD.” A designer of ordinary skill would immediately appreciate that the “$”
and “USD” are interchangeable and represent the same thing—U.S. dollars.
Moreover, a designer of ordinary skill would use a “$” that is of the same height as
the “0.00” as in the Grecia ‘054 Patent, even though the “USD” in Digital Debit is
smaller than the 0.00. Using a $ that is the same height as the numerical value is the
standard format for use of dollar signs in most, if not all, fonts including the Arial
font shown in the Digital Debit Video and the Digital Debit Patent. See, e.g., Exs.
1004, 1006, 1047-1048, 1073. This simple substitution would be obvious to a
designer of ordinary skill as well as to virtually anyone familiar with U.S. currency.
Ex. 1002, ¶117.
Comparing the combination of the Digital Debit Video and the Digital Debit
Patent to the claimed design of the ’702 Patent shows that the ’702 Patent is obvious.
A designer of ordinary skill would find the hypothetical of the Digital Debit Video
combined with the “$” of the Digital Debit Patent to be substantially the same as the
’702 Patent’s claimed design. This hypothetical combination includes all of the
claimed features and has substantially the same overall appearance of the claimed
parts of the First Embodiment of the ’702 Patent design—including the particular
Three Square Arrangement, the particular $0.00, and displaying on an animated
84
graphical user interface the Three Square Arrangement followed by the $0.00. Ex.
1002, ¶118.
Since the First Embodiment of the ’702 Patent is patentably indistinct from
the Second Embodiment of the ’702 Patent, by rendering obvious the First
Embodiment, the combination of the Digital Debit Video with the Digital Debit
Patent also renders obvious the Second Embodiment of the ’702 Patent, thereby
invalidating both embodiments of the ’702 Patent. See Ex parte Appeal No. 315-40,
152 USPQ 71 (Bd. App. 1965); MPEP § 1504.05; Ex. 1002, ¶119.
85
Therefore, considering the Digital Debit Video in view of the Digital Debit
Patent, a designer of ordinary skill who designs articles of the type involved would
find that the claimed ’702 Patent design as a whole is substantially the same or has
the same overall visual appearance as the modified Digital Debit Video design.
Accordingly, the design claimed in the ’702 Patent is obvious under 35 U.S.C. § 103
over the Digital Debit Video in view of the Digital Debit Patent. Ex. 1002, ¶120.
X. CONCLUSION
Petitioner respectfully requests institution and cancellation of the ’702 Patent
claim.
Respectfully submitted,
By: /s/ Eliot D. Williams

Eliot D. Williams
Dated: June 9, 2022
Reg. No.: 50,822
Lead Attorney for Petitioner
BAKER BOTTS L.L.P.

1001 Page Mill Road
Bldg. One, Suite 200
Palo Alto, CA 94304
(650) 739-7511
86
CERTIFICATE OF SERVICE
I hereby certify that a true copy of the foregoing Petition for Post Grant
Review of U.S. Patent No. D930,702, as well as the accompanying Power of
Attorney, and Exhibits 1001-1078 have been served in their entireties using Federal
Express pursuant to 37 CFR § 42.105 on June 9, 2022, on:
WePay Global Payments LLC

c/o STR3EM TEAM
2885 Sanford Ave SW #13208
Grandville, MI 49418

Dated: June 9, 2022 Eliot D. Williams
Reg. No.: 50,822
BAKER BOTTS L.L.P.

1001 Page Mill Road
Palo Alto, CA 94304
(650) 739-7511
87
CERTIFICATE OF COMPLIANCE
The undersigned certifies that this brief complies with the type-volume
limitations of 37 CFR § 42.24(a)(1)(ii), allowing 18,700 words. This brief
(including figure labels and annotations) contains 15,576 words as calculated by the
“Word Count” feature of Microsoft Word, the word processing program used to
create it, and manual counting of the annotations in the figures.
The undersigned further certifies that this brief complies with the typeface
requirements of 37 CFR § 42.6(a)(2)(ii) and typestyle requirements of 37 CFR §
42.6(a)(2)(iii). This brief has been prepared in a proportionally spaced typeface
using Microsoft Word in Times New Roman 14-point font.

Dated: June 9, 2022 Eliot D. Williams
Reg. No.: 50,822
BAKER BOTTS L.L.P.

1001 Page Mill Road
Palo Alto, CA 94304
(650) 739-7511
88

Samsung v. Wepay - Petition For PGR

Uploaded by

Document Information

Original Title

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

Samsung v. Wepay - Petition For PGR

Uploaded by

Copyright:

Available Formats

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SAMSUNG ELECTRONICS CO., LTD.

WEPAY GLOBAL PAYMENTS LLC

Patent No. D. 930,702 S

Case No.: PGR2022-00045

PETITION FOR POST GRANT REVIEW

Apple, Inc. v. Aylus Networks, Inc.,

Apple, Inc. v. Samsung Elecs. Co., Ltd.,

Campbell Soup v. Gamon Plus,

Dish Network L.L.C. v. Broadband iTV, Inc.,

Door-Master Corp. v. Yorktowne,

Dynamic Drinkware, LLC v. National Graphics, Inc.,

Egyptian Goddess, Inc. v. Swisa, Inc.,

Ex parte Appeal No. 315-40,

General Elec. Co. v. United Techs. Corp.,

Google Inc. v. Intellectual Ventures II LLC,

Google LLC v. Makor Issues & Rights Ltd.,

Halliburton Energy Servs., Inc. v. U.S. Well Servs., LLC,

High Point Design LLC v. Buyers Direct, Inc.,

In re Terrorist Attacks on Sept. 11, 2001,

Int’l Seaway Trading Corp. v. Walgreens Corp.,

Jazz Pharm., Inc. v. Amneal Pharm., LLC,

Lowe’s Home Centers, LLC v. Reddy,

MerchSource LLC v. Dodocase VR, Inc.,

MRC Innovations, Inc. v. Hunter Mfg., LLP,

NHK Spring Co. v. Intri-Plex Techs., Inc.,

Sand Revolution II LLC v. Continental Intermodal Group-Trucking LLC,

Telewizja Polska USA, Inc. v. Echostar Satellite Corp.,

Trucook, LLC v. Bond/Helman, Inc.,

Unified Patents, Inc. v. Berman,

Veeam Software Corp. v. Hybir Inc.,

Wepay Global Payments LLC v. Amazon.com, Inc.,

Wepay Global Payments LLC v. Apple Inc.,

Wepay Global Payments LLC v. Bank of America, N.A.,

Wepay Global Payments LLC v. JPMorgan Chase Bank, N.A.,

Wepay Global Payments LLC v. PayPal, Inc.,

Wepay Global Payments LLC v. PNC Bank, N.A.,

Wepay Global Payments LLC v. Samsung Electronics Co., Ltd. et al.,

Wepay Global Payments LLC v. Tesla, Inc.,

Wepay Global Payments LLC v. Wal-Mart Stores, Inc.,

Wepay Global Payments LLC v. Wells Fargo Bank NA,

35 U.S.C. §324(a) .................................................................................................. 4, 9

35 U.S.C. §325(d) ...................................................................................................... 9

37 C.F.R. § 42.10(b) .................................................................................................. 4

37 C.F.R. § 42.208 ..................................................................................................... 3

37 CFR § 42.6(a) ...................................................................................................... 88

37 CFR § 42.105 ...................................................................................................... 87

37 CFR § 42.200 (b) ................................................................................................ 46

Fed. R. Evid. 901(4) .................................................................. 26, 29, 33, 34, 39, 41

Fed. R. Evid. 902(3) ................................................................................................. 27

MPEP § 1504.03 ................................................................................................59, 60

MPEP § 1504.05 ....................................................................................51, 65, 76, 85

MPEP § 2128 .........................................................................................28, 29, 34, 41

Samsung Electronics Co., Ltd. (“Petitioner”) requests post-grant review of

sole claim as invalid under 35 U.S.C. §§ 102 and 103.

pending PGR2022-00031 (filed April 5, 2022) filed by Early Warning Services,

LLC. Petitioner expects an institution decision by October 14, 2022. If PGR2022-

PGR2022-00031. If the petition in PGR2022-00031 is withdrawn prior to the

any additional effort by the Patent Owner or the Board.

claimed graphical user interface (GUI) design. Ex. 1002, ¶15.

“$0.00.” As demonstrated in this Petition, the Three Square Arrangement is a

claim is unpatentable. 37 C.F.R. § 42.208. There is nothing inventive about the