Early Warning Services LLC v. FINTech Innovation Associates LLC

1. Case Identification

• Case #: PGR2022-00046
• Patent #: D. 945,453
• Filed: June 13, 2022
• Petitioner(s): Early Warning Services, LLC
• Patent Owner(s): Fintech Innovation Associates LLC
• Challenged Claims: The sole claim

2. Patent Overview

• Title: Display Screen Portion with Animated Graphical User Interface
• Brief Description: The ’453 patent claims the ornamental design for an animated graphical user interface (GUI) that sequentially transitions through a series of four images: a first image showing four corner brackets, a second image showing a square, a third image showing a rectangle, and a fourth image showing the word "Amount."

3. Grounds for Unpatentability

Ground 1: Anticipation and Obviousness over PayPal - The sole claim is anticipated under 35 U.S.C. §102 or, alternatively, obvious under 35 U.S.C. §103 over PayPal.

• Prior Art Relied Upon: PayPal (a YouTube video titled “How to use PayPal’s QR codes to GET PAID and to PAY,” published Apr. 8, 2021).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the PayPal reference discloses an animated GUI with an overall appearance substantially the same as the claimed design, sufficient to deceive an ordinary observer. The video shows a user interface for a mobile payment application that transitions through a sequence of images including four corner brackets for scanning, a square scanning area, a rectangular button, and a screen that includes the word “Amount” for tipping options. Petitioner contended that, based on the broad claim scope asserted by the Patent Owner in parallel litigation, any minor differences in element sizing, positioning, or the presence of additional transitional images in PayPal are immaterial.
  • Motivation to Combine (for §103 grounds): As an alternative to anticipation, Petitioner argued that PayPal qualifies as a primary reference for an obviousness analysis because its design characteristics are "basically the same" as the claimed design. A designer of ordinary skill would have found it obvious to make minor adjustments to the relative sizes and positions of the elements in the PayPal GUI to arrive at the claimed design, as such modifications would be insignificant.
  • Expectation of Success (for §103 grounds): A designer would have had a high expectation of success in making such minor aesthetic modifications, which involve routine design choices.

Ground 2: Anticipation over Alipay - The sole claim is anticipated under §102 over Alipay.

• Prior Art Relied Upon: Alipay (a YouTube video titled “How does Alipay work in-store via static QR code?,” published Jul. 17, 2018).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that the Alipay reference discloses an animated GUI that is substantially the same as the claimed design under the ordinary observer test. The Alipay video demonstrates a mobile payment application that sequentially displays four corner brackets to frame a QR code, a square camera view for scanning the code, a rectangular payment confirmation button, and a final screen including the word "Amount." Petitioner argued that minor differences, such as the slight skew of the images due to the viewing angle in the video, are irrelevant to the design comparison.

Ground 3: Anticipation over Digital Debit - The sole claim is anticipated under §102 over Digital Debit.

• Prior Art Relied Upon: Digital Debit (a YouTube video titled “Digital Debit App Preview,” published Nov. 20, 2017).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that the Digital Debit video anticipates the sole claim by disclosing an animated payment GUI that transitions through images substantially the same as those claimed. The video shows an animation sequence that includes: four corner brackets for facial recognition, a square QR code, a rectangular confirmation dialog box, and the word “Amount” on a transaction summary screen. Petitioner presented two alternative grounds based on different image sequences from the video, both of which allegedly meet the claimed design sequence.
  • Key Aspects: Petitioner highlighted that the inventor of the ’453 patent is also the founder of Digital Debit, the entity that posted the prior art video, yet this reference was not disclosed to the USPTO during prosecution.

• Additional Grounds: Petitioner asserted an additional anticipation challenge against the sole claim based on ShopeePay (a June 2021 article), which also allegedly discloses an animated GUI with the same four-stage visual sequence as the claimed design.

4. Key Claim Construction Positions

• Petitioner argued that the scope of the design claim should be interpreted broadly, consistent with the positions taken by the Patent Owner in several parallel district court litigations.
• In those cases, the Patent Owner accused GUIs of infringement that displayed significant variations from the patent’s figures, including:
  • Displaying a different number of images in the sequence (e.g., five images instead of four).
  • Skipping over images that correspond to one of the patent’s figures.
  • Featuring elements (corner brackets, square, rectangle, "Amount" text) with substantially different relative sizes and positions.
• Petitioner contended that because the Patent Owner has asserted that these variations fall within the claim scope for infringement purposes, the claim must be construed broadly enough to also encompass the prior art references, which exhibit similar or lesser degrees of variation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under Fintiv would be inappropriate. The petition was filed less than three months after the parallel lawsuits, which were all in their nascent stages with no scheduling orders issued, no significant investments made by the parties or the courts, and a low chance of overlap, as Petitioner is not a party in any of the co-pending cases.
• Petitioner also argued against denial under §325(d), asserting that none of the prior art references relied upon in the petition (PayPal, Alipay, Digital Debit, ShopeePay) were considered by the examiner during the original prosecution, which consisted of a first action allowance.

6. Relief Requested

• Petitioner requests the institution of a Post Grant Review and the cancellation of the sole claim of the ’453 patent as unpatentable under 35 U.S.C. §§ 102 and 103.