Merchant & Gould Secures Three IPR Wins at PTAB for Client Askeladden

Effectively Invalidating Two Patents on E-payment Technology
February 20, 2018

Merchant & Gould is pleased to announce that New York-based client Askeladden won three inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB) last week.

A patent quality advocacy group, Askeladden challenged a pair of Purple Leaf LLC patents which cover a process for conducting electronic transactions and payment transfers via wireless device signals. In early 2017, the PTAB agreed to institute IPR proceedings after Askeladden petitioned on the grounds that the claims in the patents were obvious and anticipated in light of numerous prior art references.

With a mission to improve the understanding, use, and reliability of patents in financial services and elsewhere, Askeladden and its Patent Quality Initiative strives to improve patents by diminishing the number of those that should not have been issued and by addressing questionable patent holder behaviors. This is significant because enforcing overly-broad, invalid financial services-related patents could compromise the speed, safety, and security of banking and financial transactions, drive up costs, and threaten consumers’ data and financial security.

In three final written decisions issued on February 13, 2018, the PTAB found that all claims in U.S. Patent No. 8,527,407 and U.S. Patent No. 8,744,963 are invalid as obvious or anticipated. Determining the claims to be unpatentable, the PTAB decisions effectively invalidate the two patents.

Purple Leaf previously accused eBay and PayPal of infringing its ’407 and ’963 patents, and sued Amazon, Google, and several other companies asserting infringement of another patent related to the ’407 and ’963 patents.

“With these decisions from the PTAB, the invalidated patents may no longer be used as the basis for meritless and wasteful assertions,” said Sean Reilly, General Counsel of Askeladden, in a statement. “Decisions like these further our goal of promoting and protecting innovation in the financial services industry.”

Frank DeLucia, a partner in the New York office of Merchant & Gould, led the Merchant & Gould team representing Askeladden, accompanied by partners Jonathan Berschadsky of New York and Andrew Lagatta of Minneapolis.

“IPR and other post grant review proceedings play a critical role in improving patent quality,” said DeLucia. “We are very pleased with the outcome of these IPRs for our client, as the decisions support good intellectual property practice and may prevent more companies from being exposed to frivolous and expensive lawsuits.”

The case is Askeladden LLC v. Purple Leaf LLC, case numbers IPR2016-01720, IPR2016-01721, and IPR2016-01722.

About Askeladden
Askeladden is an education, information and advocacy organization with the goal of improving the understanding, use and reliability of patents in financial services and other industries. As part of its Patent Quality Initiative, Askeladden strives to promote better patents and patent holder behaviors by regularly filing amicus briefs, Inter Partes Reviews (IPRs) and engaging in educational activities. www.patentqualityinitiative.com

View the Patent Quality Initiative press release

View a Law360 article about these IPR wins: Patent Group Gets 2 Purple Leaf E-Payment Patents Nixed