Early Warning Services LLC v. Wepay Global Payments LLC

1. Case Identification

• Case #: PGR2022-00031
• Patent #: D930,702
• Filed: April 5, 2022
• Petitioner(s): Early Warning Services, LLC
• Patent Owner(s): Wepay Global Payments LLC
• Challenged Claims: The sole claim

2. Patent Overview

• Title: Display Screen Portion with Animated Graphical User Interface
• Brief Description: The ’702 patent claims an ornamental design for an animated graphical user interface (GUI). The claimed design consists of a first image showing an arrangement of three solid squares (the "Three Square Arrangement"), which transitions to a second image showing the numerical value "$0.00". All other elements depicted, including the display screen and other GUI components, are shown in broken lines and are not part of the claimed design.

3. Grounds for Unpatentability

Ground 1: The sole claim is anticipated by Reddy under 35 U.S.C. §102.

• Prior Art Relied Upon: Reddy (Application # 2018/0260806).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Reddy, which discloses a system for QR code-based payments, anticipates the ’702 patent’s design. Reddy’s Figure 9 shows a GUI displaying a QR code with a Three Square Arrangement that is substantially the same as the claimed design. Reddy’s Figure 12 subsequently shows a payment screen displaying "$0.00" in a nearly identical style and font. Petitioner asserted that the sequential display of these two images in Reddy’s payment process creates the same overall visual impression as the patent’s first embodiment. Reddy also teaches that an intermediate step of displaying QR details is optional, which anticipates the patent's second, patentably indistinct embodiment.
  • Key Aspects: Petitioner contended that any minor differences in the spacing of the squares between Reddy and the ’702 patent are immaterial, as the overall visual effect is substantially the same to an ordinary observer.

Ground 2: The sole claim is anticipated by GrabPay under 35 U.S.C. §102.

• Prior Art Relied Upon: GrabPay (a YouTube video demonstrating the GrabPay payment application).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that the GrabPay video shows an animated GUI on a point-of-sale device that anticipates the claimed design. The video depicts a sequence beginning with an image of a QR code that includes the Three Square Arrangement, followed by an intermediate "Success" screen, and concluding with an image displaying "$0.00". Petitioner argued this sequence of images is substantially the same as the second embodiment of the ’702 patent. Because the patent’s two embodiments were deemed patentably indistinct during prosecution, anticipation of one embodiment invalidates the entire claim.

Ground 3: The sole claim is obvious over the Digital Debit Video in view of the Digital Debit Patent under 35 U.S.C. §103.

• Prior Art Relied Upon: Digital Debit Video (a YouTube video) and the Digital Debit Patent (Patent D857,054).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner identified the Digital Debit Video as a primary reference that discloses design characteristics "basically the same" as the claimed design. The video shows an animated GUI for a QR code payment system that displays a QR code with the Three Square Arrangement, followed by a screen displaying "USD 0.00". The only material difference from the claimed design is the use of the text "USD" instead of the "$" symbol.
  • Motivation to Combine: The secondary reference, the Digital Debit Patent, was issued to the same inventor as the ’702 patent and relates to the same "Digital Debit" application. It explicitly shows the "$0.00" design element with the dollar symbol. Petitioner argued that the two references are so closely related that the appearance of the "$0.00" feature in the Digital Debit Patent would suggest its application to the Digital Debit Video. A designer of ordinary skill would have been motivated to substitute the common "$" symbol for "USD" as they are interchangeable representations of U.S. currency.
  • Expectation of Success: This simple, one-for-one substitution would have been entirely predictable and obvious to a designer of ordinary skill.

• Additional Grounds: Petitioner asserted that the sole claim is obvious over Reddy by itself, or alternatively, over Reddy in view of SGQR (a YouTube video demonstrating Singapore's unified QR code payment system). The arguments relied on modifying Reddy's QR code to match the slightly different proportions shown in SGQR to increase data capacity.

4. Key Claim Construction Positions

• Broken Lines Are Unclaimed: Petitioner argued that the claim should be construed as including only the elements shown in solid lines: the Three Square Arrangement and the "$0.00" value. All elements in broken lines—including the display screen, text, and other GUI portions—form no part of the claimed design.
• Embodiments Are Indistinct: The patent’s two embodiments are patentably indistinct. The only difference is an intermediate image (Fig. 4) in the second embodiment that is depicted entirely in broken lines and is therefore unclaimed. Consequently, any prior art that invalidates one embodiment necessarily invalidates the other.
• Relative Position and Size Are Unclaimed: Because the display screen is shown in broken lines, the specific position, size, and spacing of the claimed elements relative to the screen are not part of the design. Petitioner supported this construction by citing Patent Owner's broad infringement contentions in parallel district court litigation, where GUIs with widely varying placements and sizes of the claimed elements have been accused of infringement.

5. Arguments Regarding Discretionary Denial

• §324(a) / Fintiv Factors: Petitioner argued that discretionary denial under Fintiv would be inappropriate. It noted that the related district court litigations were in their nascent stages with minimal investment from the parties or courts. Furthermore, Petitioner asserted it is not a party to any of the parallel proceedings, and therefore the Fintiv factors strongly favor institution.
• §325(d) Factors: Petitioner contended that denial under §325(d) is unwarranted because the primary prior art references asserted in the petition (Reddy, SGQR, GrabPay, and the Digital Debit Video) were not presented to or considered by the examiner during the original prosecution. Petitioner also noted that the patent received only a cursory examination, resulting in a first-action allowance.

6. Relief Requested

• Petitioner requests institution of post-grant review and cancellation of the sole claim of the ’702 patent as unpatentable under 35 U.S.C. §§ 102 and 103.