DCT
1:22-cv-01212
Fintech Innovations Associates LLC v. PayPal Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Fintech Innovation Associates LLC (Pennsylvania)
- Defendant: PayPal, Inc. (Delaware)
- Plaintiff’s Counsel: WAWRZYN LLC
- Case Identification: 1:22-cv-01212, N.D. Ill., 03/08/2022
- Venue Allegations: Venue is alleged to be proper in the Northern District of Illinois because PayPal maintains a regular and established place of business within the district.
- Core Dispute: Plaintiff alleges that the animated graphical user interfaces in Defendant’s PayPal 'Super App' and on paypal.com infringe a design patent covering an animated graphical user interface.
- Technical Context: The technology concerns the ornamental design of user interfaces for mobile and web-based financial transaction applications.
- Key Procedural History: The complaint was filed on March 8, 2022, the same day the patent-in-suit issued. Subsequently, a Post-Grant Review (PGR) proceeding was initiated against the patent. The patent owner then filed a formal disclaimer, dedicating the patent’s sole claim to the public. The U.S. Patent and Trademark Office later issued a PGR Certificate confirming that the claim is disclaimed, a fact that raises a threshold question about the viability of the lawsuit.
Case Timeline
| Date | Event |
|---|---|
| 2021-09-16 | U.S. Patent No. D945,453 Application Filing Date (Priority Date) |
| 2022-03-08 | U.S. Patent No. D945,453 Issue Date |
| 2022-03-08 | Complaint Filing Date |
| 2022-06-13 | Post-Grant Review (PGR2022-00046) Filed against '453 Patent |
| 2022-10-10 | Disclaimer of '453 Patent Filed, Dedicating Claim to the Public |
| 2023-05-18 | Post-Grant Review Certificate Issued, Confirming Claim is Disclaimed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Design Patent No. D945,453, "Display screen portion with animated graphical user interface," issued March 8, 2022.
The Invention Explained
- Problem Addressed: Design patents protect ornamental appearance rather than solving a technical problem. The patent addresses the challenge of creating a new, original, and ornamental visual appearance for an animated graphical user interface (GUI) within a financial application.
- The Patented Solution: The patent claims the ornamental design for an animated GUI, which is depicted in a sequence of four figures. The animation begins with four corner elements (FIG. 1), which expand to form a central rectangle (FIG. 2), which then narrows horizontally (FIG. 3), and finally resolves into a rectangular field for entering a monetary amount (FIG. 4). (’453 Patent, FIGS. 1-4). The patent’s description clarifies that the process of transitioning between images is not part of the claimed design. (’453 Patent, Description).
- Technical Importance: The design provides a specific visual sequence for initiating a digital payment, a critical user interaction in the competitive mobile and online finance market. (’453 Patent, Title).
Key Claims at a Glance
- The complaint asserts the patent’s single claim: "The ornamental design for a display screen portion with animated graphical user interface, as shown and described." (’453 Patent, Claim). This claim is asserted in fifty-five separate counts within the complaint (Compl. ¶¶ 9-118).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are the "PayPal 'Super App' mobile product for iOS and Android and paypal.com" (Compl. ¶8).
Functionality and Market Context
- The complaint alleges that these products feature an "animated graphical user interface" that infringes the '453 Patent. (Compl. ¶10). The allegations target the user interface associated with payment functions, such as the "pay with qr-code" feature. (Compl. ¶8, fn. 4). The complaint states that "evidentiary facts" supporting infringement are contained in a side-by-side claim chart, attached as Exhibit B, which was not included with the complaint filing available for analysis. (Compl. ¶8). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint references claim charts in an external "Exhibit B" to support its infringement allegations; this exhibit was not provided for analysis. (Compl. ¶¶ 8, 9). The narrative infringement theory alleges that the accused PayPal products embody the ornamental design of the '453 Patent. (Compl. ¶10). Infringement of a design patent is determined by the "ordinary observer" test, which asks whether an ordinary observer, familiar with the prior art, would be deceived into believing the accused design is the same as the patented design.
- Identified Points of Contention:
- Procedural Question: A threshold issue is the legal effect of the patent owner's post-filing disclaimer and the subsequent PGR certificate confirming the cancellation of the patent's sole claim. This raises the question of whether any basis for recovering damages for past infringement remains.
- Scope Questions: Assuming the claim were still active, a central dispute would concern the scope of the claimed design. The patent explicitly disclaims the surrounding "display screen," the "computer device," and any text or numerical content (e.g., "Enter Amount," "$0") by rendering them in broken lines. (’453 Patent, Description). The infringement analysis would therefore be confined to the solid-line animated shapes shown in the figures.
- Technical Questions: The key factual question for a finder of fact would be whether the overall ornamental appearance of the accused PayPal GUI is substantially the same as the specific solid-line animation depicted in Figures 1-4 of the '453 patent.
V. Key Claim Terms for Construction
In a design patent case, claim construction consists of describing the claimed ornamental features in words, with a focus on what is and is not protected.
- The Term: The ornamental features shown in solid lines in FIGS. 1-4.
- Context and Importance: The distinction between the claimed solid-line features and the unclaimed broken-line environment is dispositive in defining the scope of the patent. Practitioners may focus on this distinction because it dictates the boundaries of the design for the "ordinary observer" infringement test.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A patentee might argue for a construction that captures the overall visual impression of the animation as a whole—a dynamic sequence where corner elements expand and resolve into a central input field.
- Evidence for a Narrower Interpretation: A defendant would rely on the patent's explicit disclaimers: "The broken line showing of a portion of a display screen and a computer device in FIGS. 1 through 4 forms no part of the claimed design" and "The broken and dot line showing of text and portions of the graphical user interface in FIGS. 1 through 4 represents environmental subject matter and forms no part of the claimed design." (’453 Patent, Description). This evidence supports a narrow construction limited to the specific shapes, proportions, and movements of the solid-line rectangular elements only.
VI. Other Allegations
- Indirect Infringement: The complaint makes a conclusory prayer for relief for indirect infringement but does not plead specific facts to support the requisite elements of knowledge and intent for either induced or contributory infringement. (Compl. Prayer for Relief ¶(a)).
- Willful Infringement: The complaint does not contain an explicit allegation of willful infringement. It was filed on the same day the '453 patent issued, which would preclude allegations of pre-suit knowledge of the patent. (Compl. p. 1; ’453 Patent, front page). While the prayer for relief requests enhanced damages under 35 U.S.C. § 284, the complaint lacks the factual predicates to support a finding of willfulness based on pre-suit conduct. (Compl. Prayer for Relief ¶(b)).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of mootness and legal standing: Given that the plaintiff has dedicated the sole asserted patent claim to the public through a post-filing disclaimer, which was subsequently confirmed in a PGR proceeding, does a viable claim for damages that allegedly accrued prior to the disclaimer still exist?
- A secondary, and likely moot, question is one of ornamental scope and similarity: Assuming the claim were still enforceable, would an ordinary observer find the overall visual appearance of the accused PayPal GUI to be substantially the same as the patented design, when that design is properly construed as being limited to the specific solid-line animations and expressly excludes all surrounding environmental subject matter?