Trials@uspto.

gov Paper 22
571-272-7822 Entered: October 7, 2022

UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

EARLY WARNING SERVICES, LLC,

Petitioner,
v.
WEPAY GLOBAL PAYMENTS LLC,
Patent Owner.
_____________

PGR2022-00031
Patent D930,702 S
____________

Before GRACE KARAFFA OBERMANN, SCOTT A. DANIELS,

and MITCHELL G. WEATHERLY, Administrative Patent Judges.

Per curiam.

DECISION
Granting Institution of Post-Grant Review
35 U.S.C. § 324
PGR2022-00031
Patent D930,702 S

I. INTRODUCTION
Early Warning Services, LLC (“Petitioner”) filed a Petition (Paper 1,
“Pet.”) requesting post-grant review of the design claim of U.S. Patent
No. D930,702 S (Ex. 1001, “the ’702 patent”). WePay Global Payments
LLC (“Patent Owner”) filed a Preliminary Response (Paper 12, “Prelim.
Resp.”), Petitioner filed a Reply (Paper 16, “Reply”), and Patent Owner filed
a Sur-Reply (Paper 17, “Sur-Reply”).
We have authority to determine whether to institute a post-grant
review under 35 U.S.C. § 324(a) (2020), which provides that review may not
be instituted unless “the information presented in the petition,” if “not
rebutted, would demonstrate that it is more likely than not that at least [one]
of the claims challenged in the petition is unpatentable.” Applying that
standard, for reasons explained below, we grant the Petition and institute a
post-grant review of the challenged claim.

A. Real Parties-in-Interest
Petitioner identifies Early Warning Services, LLC as “the only real
party in interest.” Pet. 7. Petitioner further identifies, as customers of
Petitioner, “Bank of America, N.A., JPMorgan Chase Bank, N.A., and PNC
Bank, N.A.” Id.
Patent Owner identifies WePay Global Payments LLC as “the real
party in interest” and sole owner of the ’702 patent. Paper 11, 1 (Patent
Owner’s Mandatory Notices).
B. Related Matters
The parties identify ten (10) district court cases as related to this
proceeding and involving the ’702 patent (Pet. 8–9; Paper 11, 1–2):

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(1) WePay Global Payments LLC v. Amazon.com, Inc., No. 1:2022-

cv-01061 (N.D. Ill.); (2) WePay Global Payments LLC v. Apple Inc., No.
6:2022-cv-00223 (W.D. Tex.) (dismissed);
(3) WePay Global Payments LLC v. Bank of America, N.A., 1:2022-
cv-00105 (N.D. Ill.);
(4) WePay Global Payments LLC v. JPMorgan Chase Bank, N.A.,
1:2022-cv- 00103 (N.D. Ill.);
(5) WePay Global Payments LLC v. McDonald’s Corporation,
1:2022-cv-01064 (N.D. Ill.);
(6) WePay Global Payments LLC v. PayPal, Inc., 6:2021-cv-01094
(W.D. Tex.);
(7) WePay Global Payments LLC v. PNC Bank, N.A., 1:2021-cv-
05052 (N.D. Ill.);
(8) WePay Global Payments LLC v. Samsung Electronics Co., Ltd. et
al., 6:2021-cv-01095 (W.D. Tex.);
(9) WePay Global Payments LLC v. Tesla, Inc., 6:2022-cv-00224
(W.D. Tex.); and
(10) WePay Global Payments LLC v. Wal-Mart Stores, Inc., 1:2022-
cv-01062 (N.D. Ill.) (dismissed).

II. BACKGROUND
A. The ’702 Patent (Ex. 1001)
The ’702 patent is titled “Display Screen Portion with Animated
Graphical User Interface.” Ex. 1001, code (54). The design claim of
the ’702 patent is directed to “[t]he ornamental design for a display screen
portion with animated graphical user interface, as shown and described” in
five figures set forth in the specification. Id. at code (57); Figs. 1–5.

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B. The Challenged Design Claim

Petitioner challenges the design claim of the ’702 patent, which is
described by five figures set forth in the specification. Pet. 10; Ex. 1001,
code (57), Figs. 1–5. We reproduce below Petitioner’s composite
illustration, which shows the five figures of the ’702 patent.

Pet. 13. Petitioner’s composite illustration shows, in the top portion,

Figures 1 and 2 from the ’702 patent, which together represent a “first
embodiment” of the claimed design. Ex. 1001, code (57) (Description),
Figs. 1–2. The composite illustration also shows, in the bottom portion,
Figures 3, 4, and 5 from the ’702 patent, which represent a “second
embodiment.” Id. at code (57), Figs. 3–5. Figure 1 is “a front view of a first
image of” the “first embodiment” whereas Figure 2 is “a front view of a

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second image” of that same embodiment. Id. at code (57) (Description).

Figure 3 is “a front view of a first image of” the “second embodiment,”
Figure 4 is “a front view of a second image thereof,” and Figure 5 is “a front
view of a third image thereof.” Id. The ’702 patent indicates:
In the first embodiment, the appearance of the transitional image
sequentially transitions between the images shown in FIGS. 1
through 2. In the second embodiment, the appearance of the
transitional image sequentially transitions between the images
shown in FIGS. 3 through 5. The process or period in which one
image transitions to another image forms no part of the claimed
design.
The broken line showing 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.
Id.

C. Asserted Grounds of Unpatentability

We reproduce the asserted grounds in the following chart.

Claims Challenged 35 U.S.C. § 1 References

1 102 Reddy2

1 103 Reddy

1
The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284 (2011), amended 35 U.S.C. §§ 102 and 103, effective March 16,
2013. Given that the application from which the ’702 patent issued was
filed after this date, the current versions of §§ 102 and 103 apply.
2
U.S. Patent Pub. No. 2018/0260806, issued Sept. 13, 2018 (Ex. 1004).

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Claims Challenged 35 U.S.C. § 1 References

1 103 Reddy, SGQR 3

1 102 GrabPay 4

Digital Debit Video,5

1 103
Digital Debit Patent6

Pet. 11. 7

III. ANALYSIS
A. The Ordinary Designer and the Ordinary Observer
“In addressing a claim of obviousness in a design patent, the ultimate
inquiry is whether the claimed design would have been obvious to a designer
of ordinary skill who designs articles of the type involved.” Apple, Inc. v.
Samsung Elec. Co., 678 F.3d 1314, 1329 (Fed. Cir. 2012) (internal quotation
and citations omitted). By contrast, in addressing a claim of anticipation, the
Board considers whether the claimed and prior art “designs are substantially

3
Screenshots of YouTube video, “SGQR––Singapore Quick Response
Code,” https://www.youtube.com/watch?v=1VmJm9imBp4 (Ex. 1005).
Petitioner asserts a publication date of September 16, 2018. Pet. 25.
4
Screenshots of YouTube video, “GrabPay Standalone,”
https://www.youtube.com/watch?v=bc84snlxTRc (Ex. 1006). Petitioner
asserts a publication date of March 20, 2020. Pet. 32.
5
Screenshots of YouTube video, “Digital Debit App Preview,”
https://www.youtube.com/watch?v=tDqvQFJB8GA (Ex. 1007). Petitioner
asserts a publication date of November 20, 2017. Pet. 39.
6
U.S. Patent No. D857,054 S, issued August 20, 2019 (Ex. 1008).
7
Although the Petition sets forth four numbered grounds, two distinct
grounds are embedded within Petitioner’s second-numbered ground. See
Pet. 11 (asserting, in the second-numbered ground, obviousness over Reddy
“alone or in view of” SGQR).

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the same,” which requires an assessment of whether “their resemblance is

deceptive to the extent that it would induce an ordinary observer, giving
such attention as a purchaser usually gives, to purchase an article having one
design supposing it to be the other.” Door-Master Corp. v. Yorktowne, Inc.,
256 F.3d 1308, 1312–13 (Fed. Cir. 2001) (citing Gorham Mfg. Co. v. White,
81 U.S. 511, 528 (1871)).
Petitioner argues that the ordinary designer “would be someone with a
background in designing animated GUI’s, such as animated GUI’s that use
QR codes to facilitate financial transactions. 8 Pet. 62 (citing Ex. 1002 ¶ 84).
Petitioner further argues that the ordinary observer “is a purchaser or other
user of a mobile device or other device having a display screen for
displaying an animated GUI.” Id. at 59 (citing Ex. 1002 ¶ 80). Petitioner
argues that, for 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.” Id.
At this stage of the proceeding, Patent Owner does not oppose
Petitioner’s definitions or proposed any alternative definitions. See
generally, Prelim. Resp. We adopt Petitioner’s definitions for purposes of
this Decision because they are consistent with the disclosures of the asserted
prior art references and the ’702 patent, supported by witness testimony, and
unopposed by Patent Owner at this juncture.
The Petition is supported by the Declaration of Dr. Gonzalo R. Arce.
Ex. 1002. Based on his statement of qualifications and curriculum vitae, for
purposes of this Decision, we determine that Dr. Arce is qualified to provide

8
We refer to a graphical user interface as a GUI. We refer to a Quick
Response code as a QR code.

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opinions about the perspectives of the ordinary observer and ordinary

designer in the art at the time of the invention. Ex. 1002 ¶¶ 6–14; Ex. 1034
(curriculum vitae).
The Preliminary Response is supported by the Declaration of Patent
Owner, as provided by Mr. William Grecia, who is identified as “the
manager of” Patent Owner and inventor of the ’702 patent. Ex. 2001; see
Ex. 1001, code (72). Mr. Grecia does not provide opinions from the
perspective of an ordinary observer or ordinary designer; therefore, no
determination about his qualifications is necessary at this stage of the
proceeding. See Ex. 2001 ¶¶ 1–4 (limited to assertions of fact).

B. Claim Construction
The ’702 patent is directed to an “ornamental design for a display
screen portion with animated” GUI. Ex. 1001, code (57) (claim). Petitioner
“sets forth a claim-construction analysis with which Patent Owner largely
agrees.” Prelim. Resp. 4; see Pet. 45–57. For purposes of this Decision, we
agree with Petitioner that Figures 1–5 of the ’702 patent describe the
claimed design “better” than “a detailed verbal description.” Pet. 46. On this
record, moreover, we agree with Petitioner that the broken lines in the
figures form no part of the claimed design. Id. at 47–49.
Petitioner shows sufficiently that Figures 1 and 2, taken together,
describe a first embodiment of the claimed design that is “basically the
same” as, and “patentably indistinct” from, a second embodiment shown in
Figures 3–5. Id. at 50–51 (quoting Ex. 1003, 66). Petitioner argues, and
Patent Owner does not dispute at this stage of the proceeding, that “the
claimed design can be illustrated as a display screen having an animated

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GUI displaying an image including” a Three Square Arrangement, 9 as

shown:

followed by this image:

Pet. 48–49. The illustrations above show a first image of three solid squares
having substantially the same size, wherein a pair of squares are horizontally
aligned and a third square is vertically aligned beneath the left-most square
of the pair, with substantially the same degree of separation between each
one of the pair of squares and between the left-most square of the pair and
the third square, followed by a second image of a dollar sign, a zero, a
decimal point, and two additional zeros in horizontal sequence. See id. at 64
(Petitioner’s textual description).
No further express construction is required for purposes of this
Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
(Fed. Cir. 1999) (“[O]nly those terms need be construed that are in
controversy, and only to the extent necessary to resolve the controversy”);
see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal,
868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of

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We adopt Petitioner’s convention and refer to the first image of the claimed
design as the Three Square Arrangement.

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an administrative review by the Board). To the extent that the features of the
claimed design require further discussion, however, we provide it in our
assessment of the challenges, which we turn to next.
C. Alleged Invalidity Based on Anticipation by Reddy
Petitioner asserts that Figure 9 of Reddy “shows a mobile device
display screen with a GUI displaying a design including substantially the
same Three Square Arrangement as the” challenged claim. Pet. 63.
Petitioner further asserts that Figure 12 of Reddy “shows the mobile device
display screen with a GUI displaying a design including substantially the
same $0.00 value as” the challenged claim. Id.
In addition, Petitioner submits, “Sequentially, Reddy states that its
FIG. 12 GUI image is displayed after the FIG. 9 GUI image.” Id. In a
nutshell, according to Petitioner, “[t]he overall appearance of Reddy is
substantially the same as the overall appearance of the” claimed design, as
shown in Petitioner’s comparison illustration reproduced below:

Pet. 63. The illustration above compares the claimed design in the upper half
to Reddy’s design in the lower half. According to Petitioner, both designs

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include an image of a Three Square Arrangement followed by an image of

“a $0.00 in practically identical style and font.” Id. at 64.
Petitioner comes forward with evidence that “the overall visual effect
of the claimed design,” when compared to “the design disclosed in Reddy[,]
would be substantially the same to an ordinary observer.” Id. (citing
Ex. 1002 ¶ 87). Petitioner shows sufficiently, moreover, for purposes of trial
institution, that “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.” Id. (citing Ex. 1002 ¶ 86 (Dr. Arce, identifying relevant disclosure in
Reddy (Ex. 1004 ¶ 36))). “Thus, Reddy discloses an animated GUI with an
overall appearance that is substantially the same” as the first embodiment of
the design claimed in the ’702 patent. Id. at 64–65.
Petitioner comes forward with additional information that Reddy
anticipates the second embodiment of the claimed design as well. Id.
at 65–67; see Ex. 1002 ¶ 89 (Dr. Arce, discussing Reddy’s alleged animated
GUI features, including steps 124, 128, and 130); Ex. 1004 ¶ 36 (Reddy’s
disclosures of steps 124, 128, and 130). On that basis, Petitioner advances
reasons why there is no material difference between Reddy and the claimed
design such that Reddy anticipates the challenged claim. Pet. 67–69.
Patent Owner, for its part, comes forward with information that
“Reddy is an icon array in the abstract, detached from the article of
manufacture.” Prelim. Resp. 7. Patent Owner’s information, in that regard,
however, does not undercut the sufficiency of Petitioner’s showing to
warrant a trial. Compare Prelim. Resp. 5–7, and Sur-Reply 1, with
Reply 2–4. In particular, even if we accept Patent Owner’s view that

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Reddy’s “display screen portion . . . could scan a QR code or take a picture

of a flower,” that circumstance does not undercut Petitioner’s evidence that
“Reddy explicitly discloses a display screen showing an image including a
Three Square Arrangement followed by an image including ‘$0.00,’ which,”
on this record, “is the same as the display screen” of the claimed design.
Reply 4; Sur-Reply 1 (emphases supplied by the Board).
Nor does In re SurgiSil, cited by Patent Owner, compel denial of
review in this case. See Prelim. Resp. 5. There, our reviewing court
observed, “A design claim is limited to the article of manufacture identified
in the claim; it does not broadly cover a design in the abstract.” Id. (quoting
In re SurgiSil, 14 F.4th 1380, 1383 (Fed. Cir. 2021); but see Reply 3–4
(Petitioner’s discussion of the In re SurgiSil case). Here, by contrast, Patent
Owner admits Reddy’s design “arguably would meet the icon array”
disclosed in the ’702 patent, without explaining adequately how or why
Reddy discloses “a ‘design concept’” as opposed to “specific design
characteristics.” Prelim. Resp. 5–7 (quoting In re Harvey, 12 F.3d 1061,
1064 (Fed. Cir. 1993)). As Petitioner points out, In re SurgiSil addressed “an
‘art tool’ in the prior art,” which the Federal Circuit found “could not
invalidate a design to a ‘lip implant’” because “they were different articles
of manufacture.” Reply 3. “In contrast, in this case, the claimed design and
the prior art designs both relate to the exact same article of manufacture––a
display screen with an animated GUI.” Id. at 3–4 (emphasis supplied by
Petitioner). In re SurgiSil, therefore, does not compel denial of review under
the particular circumstances at hand.
Nor are we persuaded that In re Glavas, also cited by Patent Owner,
supports denial of review on this record. Prelim. Resp. 7 (citing In re

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Glavas, 230 F.2d 447, 450 (C.C.P.A. 1956)). To the contrary, that decision
favors Petitioner’s view “that a design cannot be patented if it was already
known regardless of the type of surface it is displayed on, like ‘Stuart’s
portrait of Washington’ on a vase or wallpaper.” Reply 3 (quoting In re
Glavas, 230 F.3d at 450). Reddy sequentially displays an image of the Three
Square Arrangement and an image including “$0.00” on the display screen
of a mobile device, which, on this record, is “a display screen” as described
in the ’702 patent. Compare Ex. 1004, Fig. 9, Fig. 12, ¶¶ 36, 52, with
Ex. 1001, codes (54) (Title), (57) (Description).
For the above reasons, we determine that Petitioner shows sufficiently
that Reddy more likely than not anticipates the challenged claim.
D. Alleged Obviousness Based on Reddy Alone
Petitioner comes forward with information that the claimed design
and the design shown in “Reddy are so similar, no secondary reference is
necessary” to demonstrate invalidity based on obviousness. Pet. 71. For
example, Petitioner directs us to evidence that any “slightly different spacing
of the squares,” as between the claimed and prior art designs, “would be de
minimis and not sufficient to justify a finding that the design is patentable.”
Id. at 71–72 (citing Ex. 1002 ¶ 96). In addition, Petitioner directs us to
evidence that the ordinary designer would have modified Reddy’s design to
mirror the claimed design “to increase the amount of data that the QR code
contains.” Id. at 72 (citing Ex. 1002 ¶ 97). Petitioner also advances evidence
that, “considering Reddy alone,” the ordinary designer would find the
claimed “design as a whole has substantially the same overall visual
appearance as the Reddy design,” as so modified. Id. at 73 (citing Ex. 1002
¶ 99).

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At this juncture, Patent Owner does not specifically dispute

Petitioner’s evidence, pertaining to obviousness over Reddy alone, except to
assert arguments pertaining to the ground based on anticipation by Reddy.
See Prelim. Resp. Our reasoning above, addressing anticipation by Reddy,
applies with equal force to an analysis of obviousness over Reddy alone.
Accordingly, on this record, we determine that Petitioner shows sufficiently
that Reddy more likely than not renders the challenged claim unpatentable as
obvious.

E. Remaining Invalidity Challenges

Petitioner advances additional grounds of invalidity based on other
references, namely, SGQR, GrabPay, Digital Debit Video, and Digital Debit
Patent. Pet. 11 (grounds chart). Disputed issues of fact surround those
references. Compare, e.g., Prelim. Resp. 1, 3–4, 7–10, with Reply 1–2, 4–5.
The nature of those issues recommends reserving judgment on them at this
preliminary stage, and resolving them with the benefit of a full trial record,
in the event Patent Owner raises them in a timely-filed response to the
Petition, and only as necessary to any Final Written Decision.
In view of our finding that the information presented in the Petition
establishes that Petitioner more likely than not would prevail on its
assertions that the design claim of the ’702 patent is unpatentable over
Reddy, we institute a post-grant review of all challenged claims and all
grounds presented in the Petition. See PGS Geophysical AS v. Iancu, 891
F.3d 1354, 1360 (Fed. Cir. 2018) (indicating that the Board’s decision
whether to institute an administrative review “require[s] a simple yes-or-no
institution choice respecting a petition, embracing all challenges included in
the petition”).

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F. Notices
The Board shall deem waived any issue not raised in a timely-filed
response to the Petition, or as permitted in another manner during trial, even
if asserted by Patent Owner in the Preliminary Response or discussed in this
Decision. Nothing in this Decision authorizes Petitioner, in a manner not
otherwise permitted by the Board’s rules, to supplement the information
pertaining to any ground advanced in the Petition. Our findings and
conclusions herein are based on the preliminary record and provided for the
sole purpose of deciding whether to institute review. Any final findings will
be based on the full trial record.

IV. CONCLUSION
We determine that Petitioner more likely than not would prevail at
trial with respect to the design claim challenged in the Petition.
Accordingly, we institute a post-grant review of the ’702 patent claim.

V. ORDER
It is
ORDERED that, pursuant to 35 U.S.C. § 324, a post-grant review of
the ’702 patent claim is instituted with respect to all grounds set forth in the
Petition; and
FURTHER ORDERED that, pursuant to 35 U.S.C. § 324 and
37 C.F.R. § 42.4, notice is hereby given of the institution of a trial, which
will commence on the entry date of this Decision.

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FOR PETITIONER:

Justin Krieger
Darin Gibby
Michael Bertelson
KILPATRICK TOWNSEND & STOCKTON LLP
jkrieger@kilpatricktownsend.com
dgibby@kilpatricktownsend.com
mbertelson@kilpatricktownsend.com

FOR PATENT OWNER:

Henry Ohanian
OHANIANIP
artoush@ohanian-iplaw.com

John Biggers
BIGGERS LAW
john@biggerslaw.com

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