Litigation

Untitled case

Settlement

IPR2023-00196

Patents at issue (1)

108105792 discretionary denials

Defendants (2)

Summary

This PTAB case, IPR2023-00196, was filed against the patent owner CardWare Inc. and Virtual Electric Inc., and reached a settlement.

Case overview & background

Plain-language overview of the case: parties, accused product, patents at issue, and why the suit matters.

This PTAB case, IPR2023-00196, involves U.S. Patent No. 10,810,579, owned by CardWare Inc. and previously by Virtual Electric Inc. CardWare Inc. is described as an unfunded company providing security solutions for payment cards and has been actively asserting its NFC-related intellectual property in a litigation campaign against major tech companies like Samsung, Google, and Apple. Virtual Electric Inc. was the original assignee of the patent and appears to have focused on electronic payment solutions and smart card technology. While the specific petitioner for IPR2023-00196 is not detailed in the available information, inter partes reviews are typically initiated by parties accused of infringement. Given CardWare's active district court litigation, it is highly probable that the petitioner is one of the companies CardWare has accused of infringement.

The patent at issue, US 10810579, titled "Smart tokenizing payment card and device and transaction processing thereof, system and method," broadly covers a credit card device capable of generating a programmed magnetic field to emulate a standard credit card. It also details methods for user control to authorize various transactions (credit, debit, cash, cryptocurrency, card-to-card) and features a key security component involving the generation of limited-duration, limited-use credit card numbers. The technology also incorporates near-field communication (NFC) for card-to-card transactions and user-activated wireless communication for enhanced security. The accused products and services, as indicated by CardWare's related district court actions, likely include features within popular mobile payment ecosystems such as Apple Pay and Apple Wallet (used on iPhones, Apple Watch, Apple Card, etc.) and Google Pay and Google Wallet (on smartphones and smartwatches), all leveraging NFC payment technology.

This case was heard at the Patent Trial and Appeal Board (PTAB), a forum within the U.S. Patent and Trademark Office designed to provide a less-expensive alternative to district court litigation for challenging patentability. The status of the IPR as "Settlement" means the parties resolved their dispute without the PTAB issuing a final written decision on the patentability of the challenged claims. This case is notable due to CardWare Inc.'s assertion patterns, which target core NFC payment functionalities of leading technology companies, reflecting an ongoing effort to enforce patents covering widely adopted mobile payment solutions. The IPR settlement, in the context of broader litigation against major players like Apple and Google, highlights the strategic role of PTAB proceedings in resolving complex patent disputes within the critical financial technology sector.

Key legal developments & outcome

Major rulings, motions, claim construction, settlements, and the present posture or final disposition.

Key Legal Developments and Outcome for Patent Litigation Involving U.S. Patent 10,810,579

This summary details the legal developments surrounding U.S. Patent No. 10,810,579, focusing on related patent infringement litigation and parallel PTAB proceedings. While the prompt identifies IPR2023-00196 as having reached a settlement, specific details regarding its petitioner, exact filing date, and settlement date could not be located through public searches.

Patent Ownership and Asserting Party:
U.S. Patent No. 10,810,579, titled "Smart tokenizing payment card and device and transaction processing thereof, system and method," was granted on October 20, 2020, and is assigned to Virtual Electric Inc.. CardWare Inc. also claims this patent as part of its intellectual property, suggesting a licensing or ownership arrangement that allows CardWare Inc. to assert the patent.

Parallel Patent Infringement Litigation (Plaintiff CardWare Inc.):

CardWare Inc. initiated a patent infringement campaign asserting U.S. Patent No. 10,810,579, among others, against major technology companies.

  • Filing & Initial Pleadings:

    • November 4, 2024: CardWare Inc. filed separate patent infringement lawsuits in the Western District of Texas. One suit was against Apple Inc. (Case No. 7:24-cv-00279), and another against Google LLC (Case No. 7:24-cv-00278). In both cases, CardWare Inc. asserted U.S. Patent No. 10,810,579, along with other patents related to Near-Field Communication (NFC) payment technology.

  • Pre-trial Motions of Substance:

    • March 25, 2025: The case CardWare Inc. v. Apple Inc. (7:24-cv-00279) was procedurally transferred from the Waco Division to the Austin Division of the Western District of Texas, pursuant to a Joint Motion and Stipulation to Transfer Venue. The case remains on Judge Albright's docket. This was a procedural transfer, not a merits-based termination.

Parallel PTAB IPR/PGR Proceedings:

The asserted U.S. Patent No. 10,810,579 has been the subject of several post-grant challenges at the USPTO's Patent Trial and Appeal Board (PTAB).

  • IPR2023-00196: The prompt indicates this IPR reached a settlement. However, despite targeted searches, specific details such as the petitioner, the exact filing date, and the date of settlement for IPR2023-00196 could not be publicly retrieved. CardWare Inc. and Virtual Electric Inc. are the patent owners (respondents) in this IPR.

  • IPR2025-01344 (Google LLC v. CardWare Inc.):

    • July 23, 2025: Google LLC filed IPR2025-01344, challenging U.S. Patent No. 10,810,579, with CardWare Inc. as the respondent.
    • November 30, 2025: The PTAB issued a discretionary denial for this IPR petition.

  • Ex Parte Reexaminations (Apple Inc. v. CardWare Inc.):

    • January 30, 2026, and February 2, 2026: Apple Inc. filed two ex parte reexamination requests (Application Nos. 90015922 and 90015931) against U.S. Patent No. 10,810,579, with CardWare Inc. identified as the patent owner. These reexaminations are currently pending, with a status of "Reexam Ordered."

Outcome:

The patent infringement litigation involving U.S. Patent No. 10,810,579 against Apple Inc. is ongoing, having been transferred within the Western District of Texas. The parallel litigation against Google LLC is also active. In the PTAB, an IPR filed by Google (IPR2025-01344) against the patent was discretionarily denied, while ex parte reexaminations filed by Apple are pending. The details of IPR2023-00196's settlement remain unconfirmed. The overall posture indicates active enforcement and validity challenges concerning U.S. Patent No. 10,810,579.

Plaintiff representatives

Counsel of record for the plaintiff(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

This case, IPR2023-00196, is an inter partes review (IPR) proceeding before the Patent Trial and Appeal Board (PTAB), not a patent infringement case in a district court. In an IPR, the party challenging the patent is the Petitioner, and the patent owner is the Respondent.

As the case has reached settlement, the publicly available information on the PTAB Open Data Portal or other general search platforms does not immediately identify the specific Petitioner or their counsel for IPR2023-00196. To obtain this detailed information, accessing the official PTAB End-to-End (E2E) system for the complete docket sheet would typically be required. Given the settlement, the public record may not explicitly list the attorneys in an easily searchable format without direct docket access.

Therefore, without access to the full, unsealed docket of IPR2023-00196, the counsel of record representing the Petitioner(s) cannot be definitively identified.

Defendant representatives

Counsel of record for the defendant(s): attorneys, firms, and roles (lead counsel, of counsel, local counsel).

To identify the counsel of record representing CardWare Inc. and Virtual Electric Inc. in IPR2023-00196, a direct search of the Patent Trial and Appeal Board (PTAB) public docket for this specific case number is required. Unfortunately, direct web search queries did not yield the specific docket entries for IPR2023-00196 that would list the attorneys.

Publicly accessible PTAB databases, such as the USPTO's Patent Trial and Appeal Board Decisions and Unified Patents Portal, allow for searching of trial proceedings. However, without direct access to the specific IPR2023-00196 docket, the counsel of record for the defendants (CardWare Inc. and Virtual Electric Inc.) cannot be definitively identified at this time. Filings for PTAB cases, including mandatory notices that name lead and back-up counsel, are typically part of the public record once a petition is filed.

While Matthew G. Berkowitz and others from Reichman Jorgensen Lehman & Feldberg LLP have been identified as representing CardWare Inc. in other related PTAB proceedings (e.g., IPR2025-01344 and IPR2023-00219) and a district court case, this does not confirm their representation in IPR2023-00196. Virtual Electric Inc. has also been associated with patents in other contexts, but no counsel was identified for this specific IPR.

Therefore, without the specific docket for IPR2023-00196, the counsel of record for CardWare Inc. and Virtual Electric Inc. in this particular case cannot be identified. The filings remain effectively inaccessible through general web search to ascertain this information.