DCT

1:22-cv-00105

Wepay Global Payments LLC v. Bank Of America N A

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:22-cv-00105, N.D. Ill., 01/07/2022
  • Venue Allegations: Plaintiff alleges venue is proper in the Northern District of Illinois because Defendant has regular and established places of business in the district (over 45 office locations) and has committed alleged acts of infringement there.
  • Core Dispute: Plaintiff alleges that Defendant’s mobile banking application infringes a design patent covering an animated graphical user interface for a display screen portion.
  • Technical Context: The dispute relates to the ornamental design of graphical user interfaces (GUIs) used in mobile financial applications, a key area of product differentiation and user experience in the competitive digital banking market.
  • Key Procedural History: Subsequent to the complaint's filing, the asserted patent was the subject of two Post-Grant Review (PGR) proceedings before the Patent Trial and Appeal Board. These proceedings resulted in a certificate, issued May 1, 2023, stating that the patent's single claim is cancelled. The patent's assignee also filed a disclaimer on September 20, 2022, disclaiming the remaining term of the patent. These post-filing events are dispositive of the patent's validity.

Case Timeline

Date Event
2020-09-03 ’702 Patent Priority Date (Application Filing)
2021-09-14 ’702 Patent Issue Date
2022-01-07 Complaint Filing Date
2022-04-05 PGR2022-00031 Filed
2022-06-09 PGR2022-00045 Filed
2022-09-20 Assignee Disclaims Remaining Term of ’702 Patent
2023-05-01 Post-Grant Review Certificate Issued Cancelling Claim

II. Technology and Patent(s)-in-Suit Analysis

U.S. Design Patent No. D930,702 - *"Display screen portion with animated graphical user interface"*

  • Patent Identification: U.S. Design Patent No. D930,702, "Display screen portion with animated graphical user interface," issued September 14, 2021.

The Invention Explained

  • Problem Addressed: Design patents do not solve technical problems but instead protect the novel, non-obvious, and ornamental appearance of an article of manufacture. The ’702 Patent seeks to protect a specific visual design for an animated graphical user interface.
  • The Patented Solution: The patent claims the ornamental design of an animated GUI as depicted in its figures. The complaint specifically asserts the second embodiment, which consists of a three-image sequence (’971 Patent, Figs. 3-5). The animation begins with an interface showing options like "Send," "Request," and "Split" below a QR-code-like square (Fig. 3), transitions to an intermediate screen with a keypad-like layout of circles (Fig. 4), and ends on a screen with a large empty box and a "CANCEL" button (Fig. 5). The patent states that "the appearance of the transitional image sequentially transitions between the images shown in FIGS. 3 through 5" (’971 Patent, Description).
  • Technical Importance: The design represents one possible ornamental approach to structuring a user's visual journey through a mobile payment or transaction interface (’971 Patent, Title).

Key Claims at a Glance

  • Design patents contain a single claim. The claim of the ’971 Patent is for "The ornamental design for a display screen portion with animated graphical user interface, as shown and described" (’971 Patent, Claim).
  • The complaint asserts infringement of the "second embodiment claim" of the patent (Compl. ¶11).
  • A Post-Grant Review Certificate issued May 1, 2023 states that "The claim is cancelled" (US D930,702 J1).

III. The Accused Instrumentality

Product Identification

  • The "BofA app for iOS and Android mobile devices" (Compl. p. 4).

Functionality and Market Context

  • The complaint identifies the accused products as Bank of America's mobile applications (Compl. p. 4). The functionality is not described in detail, but a URL provided in the complaint links to a promotional page for mobile banking and Zelle, a digital payments network (Compl. p. 4). The allegations concern the ornamental design of the graphical user interface that "embodies the design covered by the ’702 patent" (Compl. ¶11).
    No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references a side-by-side claim chart attached as "Exhibit B" to demonstrate infringement (Compl. ¶9). As this exhibit was not provided, the infringement theory is summarized from the complaint's narrative allegations.

The plaintiff alleges that the Bank of America mobile applications infringe the second embodiment of the ’702 Patent (Compl. ¶11). The legal standard for design patent infringement is "substantial similarity," meaning an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design (Prayer for Relief (a)). The complaint alleges that the accused applications embody the patented design and that this infringement is direct and/or indirect (Compl. ¶11; Prayer for Relief (a)). The core of the allegation is a visual comparison between the sequence of screens in the BofA app and the sequence shown in Figures 3, 4, and 5 of the patent.

  • Identified Points of Contention:
    • Procedural Question: The primary issue is the legal effect of the post-filing cancellation of the patent’s only claim. The cancellation renders the patent unenforceable, which presents a dispositive challenge to the entire action.
    • Scope Questions: Had the claim remained valid, the central question would be whether the overall visual appearance of the accused BofA app's interface is "substantially similar" to the specific ornamental design claimed in the patent's second embodiment, including the specific shapes, arrangements, and animated transitions depicted in Figures 3-5.

V. Key Claim Terms for Construction

In design patent litigation, the analysis does not turn on the construction of textual claim terms but on the scope of the claimed design as a whole, interpreted in light of the drawings. The central inquiry is the "ordinary observer" test. Key aspects for comparison, rather than terms for construction, would have included:

  • The Overall Visual Impression: The analysis would focus on the holistic appearance of the animated sequence rather than discrete elements. The comparison would assess whether the BofA app's interface creates the same overall visual impression as the design shown in Figures 3-5 of the ’971 Patent.
  • Scope of the "As Shown and Described" Language: The scope of the claim is limited to the ornamental features depicted in the solid lines of the drawings. The broken lines, which show a display screen, text, and other interface elements, represent environmental subject matter and form no part of the claimed design (’971 Patent, Description). Any infringement analysis would need to filter out these unclaimed elements and focus only on the claimed solid-line features.

VI. Other Allegations

  • Indirect Infringement: The prayer for relief seeks a judgment of infringement "directly and/or indirectly" (Prayer for Relief (a)). However, the body of the complaint does not plead specific facts required to support a claim for either induced or contributory infringement, such as allegations of Defendant's knowledge of the patent and specific intent to encourage infringement.
  • Willful Infringement: The complaint does not contain an allegation of willful infringement.

VII. Analyst’s Conclusion: Key Questions for the Case

The developments subsequent to the filing of the complaint have superseded the original infringement questions. The case now appears to turn on a single, dispositive procedural issue.

  1. Mootness due to Claim Cancellation: The central and likely final question for the case is one of "enforceability." Given that the U.S. Patent and Trademark Office has issued a Post-Grant Review Certificate cancelling the sole claim of the ’702 Patent, is there any remaining basis upon which the infringement action can proceed?
  2. Effect of Disclaimer: A related question is the legal effect of the assignee's September 2022 disclaimer of the patent's remaining term, which occurred during the pendency of the PGR proceedings. This action independently raises questions about the patent's enforceability for any period after that date.