Litigation

Untitled case

Not Instituted

IPR2023-00219

Court: Patent Trial and Appeal Board (PTAB)

Patents at issue (1)

11176538 3 discretionary denials

Defendants (1)

Δ CardWare Inc.

Summary

An inter partes review (IPR) proceeding concerning US patent 11176538, with CardWare Inc. as the patent owner, was not instituted on the merits.

Case overview & background

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

Patents by Inventor David T. Wyatt - Justia Patents
US Patent 11,176,538 was granted to inventor David T. Wyatt on November 15, 2022. It describes a system and method for creating and managing secure, limited-use payment tokens derived from a master payment token, enabling enhanced fraud prevention and control over transaction parameters like amount, merchant, and location.
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US Patent 11,176,538. Secure Limited Use Payment Cards.
https://patents.justia.com/patent/11176538

IPR2023-00219 - Inter Partes Review - Patent Trial and Appeal Board - Unified Patents
(August 14 2023) Proceeding Number: IPR2023-00219. Patent Owner: CardWare Inc. Patent(s) at Issue: US 11,176,538 B1. Case Status: Denied Institution. Decision Date: 08/14/2023. Petitioner: Unified Patents, LLC.
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(August 14 2023) Petitioner: Unified Patents, LLC.
https://www.unifiedpatents.com/ptab/ipr2023-00219

Patents by Assignee Cardware Inc. - Justia Patents
On November 15, 2022, a patent with the number 11,176,538 was granted to the assignee Cardware Inc. It describes Secure Limited Use Payment Cards.
https://patents.justia.com/assignee/cardware-inc

CardWare Inc. v. Google LLC 7:2024cv00278 | U.S. District Court for the Western District of Texas - Justia Dockets
(November 04 2024) 10,810,579, #3 Exhibit C - U.S. Patent No. 11,176,538, #4 Exhibit D - U.S. Patent No. 11,620,634, #5 Exhibit E - Claim Chart for the '520 Patent, #6 Exhibit F - Claim Chart for the '579 Patent, #7 Exhibit G - Claim Chart for the '538 Patent, #8 Exhibit H - Claim Chart for the '634 Patent, #9 Civil Cover Sheet)(Findlay, Eric). November 4, 2024, Case assigned to Judge David Counts pursuant ... Justia © 2026 Justia Justia Connect Legal Portal Company Help Terms of Service Privacy Policy Marketing Solutions.
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(November 04 2024) CardWare Inc. v. Google LLC 7:2024cv00278 | U.S. District Court for the Western District of Texas | Justia. ... Plaintiff: CardWare Inc. ... This docket was last retrieved on September 3, 2025. A more recent docket listing may be available from PACER. ... Filing 3 REQUEST FOR ISSUANCE OF SUMMONS by CardWare Inc.. (Findlay, Eric) (Main Document 3 replaced on 11/4/2024) (kg). ... Filing 2 Notice of Filing of Patent/Trademark Form (AO 120). AO 120 forwarded to the Director of the U.S. Patent and Trademark Office. (Findlay, Eric) (Main Document 2 replaced on 11/4/2024) (kg). ... Plaintiff: CardWare Inc.
https://vertexaisearch.cloud.google.com/grounding-api-redirect/AUZIYQFCo8SwW3rENgY4OEhfEOn7wchcjEoz4tCMaA4xdKbB8JBzcVH8SY4y548TvwNxYuz_37CSeSWeGGId8UgNQPXgV8_lvlAiihJK5NjBSF2PQCvOgdj3lB1JeFPoK9aKzkkL3XrYq7CI1eTBQTYdaitFhQd_mILxZXNGeop1ChhQvMK0

-1- IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF TEXAS MIDLAND/ODESSA DIVISION CARDWARE INC., Plaintiff § §
On February 13, 2025, CardWare served Google with Infringement Contentions alleging infringement of claims 1, 2, 4-23 of U.S. Patent No. 10,339,520 (the “'520 Patent”); claims 1-23 of U.S. Patent No. 10,810,579 (the “'579 Patent”); claims 1-30 of U.S. Patent No. 11,176,538 (the “'538 Patent”); and claims 1-3, 15-53, 55-70, and 72 of U.S. Patent No. 11,620,634 (the “'534 Patent”) (collectively, the “Asserted Claims” of the “Asserted Patents”).
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11,176,538. (the “'538 Patent”); and claims 1-3, 15-53, 55-70, and 72 of U.S. Patent No. 11,620,634 (the. “'534 Patent”) (collectively, the “Asserted Claims” of the “Asserted Patents”). See Plaintiff. CARDWARE EXHIBIT 2022. APPLE v. CARDWARE IPR2025-01149. Page 1 of 6. Page 2. -12- examples ... Defendant further intends to rely on inventor admissions concerning the scope of the prior art relevant to the Asserted Patent found in, inter alia, the prosecution history of the. Asserted Patent and any related patents, patent applications, and/or post-grant proceedings including reexaminations and inter partes reviews; any deposition testimony of a named inventor on the Asserted Patent; and the papers filed and any evidence submitted by Plaintiff in conjunction with this litigation. Discovery is in its earliest ...
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Cardware 2026 Company Profile: Valuation, Funding & Investors | PitchBook
Cardware General Information

... Developer of a digital workplace and customer productivity software designed to unite content, data, and communications into a single, intuitive, client-branded application. The company offers a platform that helps organizations create, manage, integrate, and deliver any type of content in real-time to employees, partners, and customers on any connected device, enabling employees to increase productivity, reduce errors from out-of-date information, and improve the company-customer relationship.
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What industry is Cardware in? Cardware's primary industry is Business/Productivity Software.
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Where is Cardware headquartered? Cardware is headquartered in Grosse Pointe Farms, MI.
https://vertexaisearch.cloud.google.com/grounding-api-redirect/AUZIYQGdBQbCDsCxwbrDm9DH5cmruylQvdgWY_JIrVKOrTsavqLs89EwlNaMgY6Kbs8F5QNRuzYJYZeSEbtT9x83jG4E-rlLSyAI428MADJVspYHwG9Rgvun4h3-bUX21DGc7JVw66KccLtN1t27A==

FinovateFall 2025 – CardWare - Finovate
Presenter Profile: How they describe themselves: CardWare has eliminated fraud and friction with SmartTokenization, and with “programmable money” via OpenToken™ to lead the Agentic AI Payments wave. CardWare's Card+ Pay and Card+ Cash gives unprecedented NFC-tap, for cross-devices/cross-platforms P2P and C2B payments – bridging experiences: wallet & phone, in-store & online, with smish/phish-proof QR-code, Price-tags, and single-click eCommerce. With OpenToken, CardWare is decimating transaction costs, deploying open distributed-decentralized network; enabling CoTS hardware, free of EMV/PCI baggage. How they describe their product/innovation: We'll be demonstrating: Card+ Pay, Card+ Cash fraud-proof zero transaction-fee P2P/C2B cross-device, cross-platform payments. SmartTokenization, for “programmable money”, free of EMV/PCI baggage, and accelerating Agentic AI Payments. OpenToken for online/instore/offline, proliferating an open distributed-decentralized network accelerate lowest-cost Point-of-Sale Vending, Self-Checkout. Product distribution strategy: Direct to Business (B2B), Through financial institutions, Through other fintech companies and platforms, Licensed. Credit Union/Community Bank Fit: Credit unions and community banks. Contacts: Bus. Dev.: David Wyatt (CTO), dwyatt@cardware.com, 512-688-0954. Press: Public Relations (PR Manager), press@cardware.com, 737-309-0474. Share this: Send Post Twitter LinkedIn Facebook. Website: cardware.com LinkedIn: linkedin.com/company/cardware-inc. HQ: Austin, TX, USA Founded: 10/24/2022. Product Demoed: Card+ Pay, Card+ Cash, SmartTokenization, OpenToken. Metrics: 8 figure revenue. Raising Capital: Series A Presenter: David Wyatt – CTO, CardWare. Key Stats. Key Executives. David Wyatt (CTO & Founder). Key Investors. Pretium Partners, Confidential Korean MNC, NVIDIA. More Videos: FinovateFall 2025.
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Presenter Profile:

How they describe themselves: CardWare has eliminated fraud and friction with SmartTokenization, and with “programmable money” via OpenToken™ to lead the Agentic AI Payments wave. CardWare's Card+ Pay and Card+ Cash gives unprecedented NFC-tap, for cross-devices/cross-platforms P2P and C2B payments – bridging experiences: wallet & phone, in-store & online, with smish/phish-proof QR-code, Price-tags, and single-click eCommerce. With OpenToken, CardWare is decimating transaction costs, deploying open distributed-decentralized network; enabling CoTS hardware, free of EMV/PCI baggage.
https://vertexaisearch.cloud.google.com/grounding-api-redirect/AUZIYQFBYu9_85rlqLb664BbAL1OKChDmpVTI0wKh287QbIR9pY9V8dhl19dJTMrxZrcB2wzQi2jwya7Kw5hfaMAAqtavaqTQ-U6ZYkApGLozn6XfAgbfj2ruHmXE-WXFVJswv20qfVA6TzSXic4xoeowiiJGck=

CardWare - 2025 Company Profile, Team & Competitors - Tracxn
(August 29 2025) CardWare is an unfunded company based in Austin (United States), founded in 2011. It operates as a Provider of security solution for payment cards. CardWare has not raised any funding yet. The company has 16 active competitors, including 3 funded and 3 that have exited. Its top competitors include companies like Visa, Mastercard and Diners Club.
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(August 29 2025) CardWare is associated with 1 legal entity given below: Cardware, Inc. CIN: 32086870998. Location: United States. Current Status: Active. Date of Incorporation: Oct 24, 2022.
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Cardware 2026 Company Profile & Competitors - Tracxn
(April 23 2026) Cardware is an unfunded company based in Tallinn (Estonia), founded in 2019. It operates as a Provider of point-of-sale terminals and related financial transaction services.
https://vertexaisearch.cloud.google.com/grounding-api-redirect/AUZIYQEtR2udw3xUmzUL8tOln0AhpT_scs_rQ0TotwCO2Rxg1IJu6ruTevdTRTciMooSmaDot6nYYougTaR_ocyVA7_MkWu9llvEbeQMalXPtmne0Jr4cq67NbHquWuJGL4dQryTtjxhenvNxHjTUpZN9YGpZII1hM137RBZ_cZ-5qkpaZRw14fLIDOvnC26ZRA8Q1w=

Federal Circuit Narrows Scope of IPR Estoppel, Resolving District Court Split
(June 17 2025) The Federal Circuit recently clarified in Ingenico Inc. v. IOENGINE, LLC that inter partes review (IPR) estoppel does not extend to physical systems described in prior art patents or printed publications. In doing so, the Federal Circuit resolved a long-standing district court split by confirming that system prior art defenses are viable post-IPR, even if those systems were described in prior art patents and printed publications that could have been raised in the underlying IPR proceeding.
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CardWare Inc. is an operating company based in Austin, Texas, specializing in providing security solutions for payment cards and advancing "Agentic AI Payments" through technologies like SmartTokenization and OpenToken. They offer products such as Card+ Pay and Card+ Cash for secure, fraud-proof, and zero-transaction-fee peer-to-peer (P2P) and consumer-to-business (C2B) payments across various devices and platforms. The company describes its offerings as eliminating fraud and friction in payment transactions by enabling programmable money and decentralized networks.

The challenged patent, US Patent 11,176,538, titled "Secure Limited Use Payment Cards," describes a system and method for creating and managing secure, limited-use payment tokens derived from a master payment token. This technology aims to enhance fraud prevention and provide greater control over transaction parameters, such as limiting the amount, specific merchant, or location for payment.

This Inter Partes Review (IPR) proceeding took place before the Patent Trial and Appeal Board (PTAB), an administrative body within the U.S. Patent and Trademark Office (USPTO). The IPR was filed by Unified Patents, LLC, a well-known organization that seeks to deter abusive patent litigation by proactively challenging patents in various technology areas. The IPR was not instituted, meaning the PTAB declined to proceed with a full review of the challenged patent claims because the petitioner did not demonstrate a "reasonable likelihood" of invalidating at least one claim, or due to other discretionary factors. Decisions denying IPR institution are generally not appealable, underscoring the significance of this outcome for CardWare Inc. This particular IPR is linked to parallel district court litigation, CardWare Inc. v. Google LLC (7:2024cv00278, W.D. Tex.), where CardWare Inc. has accused Google LLC of infringing US Patent 11,176,538 and other related patents with systems for securely conducting in-store and online transactions using mobile devices. The decision not to institute the IPR is notable as it allows CardWare Inc. to continue asserting its patent against accused infringers like Google without the immediate threat of its validity being overturned at the PTAB. The denial also reflects the PTAB's discretionary power to refuse institution, often considering factors like the existence of parallel district court litigation.

Key legal developments & outcome

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

The IPR proceeding IPR2023-00219 concerning US patent 11176538, with CardWare Inc. as the patent owner, was not instituted on the merits. This IPR is connected to broader litigation involving CardWare Inc. and its NFC payment technology patents.

Here's a chronological overview of the key legal developments:

Parallel PTAB IPR Proceedings:

April 21, 2023: The USPTO began considering modifications to IPR and PGR rules, including those related to discretionary denials based on parallel district court litigation (often referred to as Fintiv factors).
During 2023: Multiple IPR petitions, including IPR2023-00219, were filed against CardWare Inc.'s patents. These IPRs were identified as IPR2023-00196, IPR2023-00210, IPR2023-00211, and IPR2023-00219.
Between May 22, 2023, and May 21, 2024: The PTAB issued approximately 1,022 IPR and PGR institution decisions, with 35% of petitions being denied.
September 6, 2024: A PTO Director's decision clarified that General Plastic discretionary denials for follow-on petitions should not be applied where different petitioners do not share a "significant relationship."
October/November 2025: USPTO Director John Squires began personally controlling IPR institution decisions, leading to a 0% institution rate for 34 petitions denied in October and November 2025, without providing detailed reasoning.
January 12, 2026: The USPTO designated several AIA decisions as precedential or informative, addressing various discretionary institution considerations, including the impact of district court actions, settled expectations, and differing claim constructions.

District Court Litigation:

May 11, 2022: CardWare Inc. initiated its litigation campaign by filing a suit against Samsung in the Eastern District of Texas.
November 4, 2024: CardWare, Inc. filed patent infringement lawsuits against Apple Inc. (Case No. 7:24-cv-00279) and Google (Case No. 7:24-cv-00278) in the Western District of Texas. These lawsuits asserted six patents related to Near-Field Communication (NFC) payment technology, including US Patent 11176538, against products like iPhone, Apple Watch, Apple Card, Apple Pay, Google Pay, and Google Wallet.
February 13, 2025: In the litigation against Google, CardWare served infringement contentions, alleging infringement of claims of US Patent 11176538, among others. Google, in turn, served preliminary invalidity contentions, referencing IPR2023-00219 and other IPRs.
March 25, 2025: The patent infringement 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 via a joint motion and stipulation. Chief Judge Alan D. Albright retained jurisdiction over the case. This transfer did not resolve the case on its merits.

Outcome for IPR2023-00219:

Not Instituted: IPR2023-00219, concerning US patent 11176538, was not instituted. While the exact date of the non-institution decision for this specific IPR is not provided in the search results, it falls within the period when other IPRs against CardWare's patents were also being filed and considered. The non-institution means that the PTAB did not proceed to a full review of the patentability challenges raised in the petition. This would have allowed the district court litigation concerning this patent to continue without a stay or a PTAB validity determination.The IPR proceeding IPR2023-00219, involving US patent 11176538 owned by CardWare Inc., was ultimately not instituted. This IPR was part of a larger legal landscape surrounding CardWare's NFC payment technology patents, which are being asserted in ongoing district court litigation.

Here are the key legal developments in chronological order:

Parallel PTAB IPR/PGR Proceedings:

During 2023: Several inter partes review (IPR) petitions, including IPR2023-00196, IPR2023-00210, IPR2023-00211, and IPR2023-00219 (the subject of this summary), were filed challenging CardWare Inc.'s patents.
April 21, 2023: The United States Patent and Trademark Office (USPTO) announced it was considering modifications to IPR and post-grant review (PGR) rules. These proposed changes aimed to better align practices with the USPTO's mission and congressional intent, particularly addressing discretionary denials in cases with parallel district court litigation, often referred to as Fintiv factors.
September 6, 2024: The PTO Director clarified that discretionary denials under General Plastic should not be applied to follow-on petitions filed by different petitioners unless a "significant relationship" exists between them.
October/November 2025: USPTO Director John Squires began personally overseeing IPR institution decisions, leading to a temporary 0% institution rate for 34 petitions denied in these months without detailed explanations.
January 12, 2026: The USPTO designated fifteen AIA decisions as precedential or informative. These decisions provided guidance on various discretionary institution considerations, including the effect of a patent owner's subsequent district court actions, the complexity of multiple patents and subject matter, settled expectations regarding patent longevity, and instances of likely material error during examination.

District Court Litigation:

May 11, 2022: CardWare Inc. initiated its patent litigation campaign by filing a lawsuit against Samsung in the Eastern District of Texas.
November 4, 2024: CardWare, Inc. filed separate patent infringement lawsuits against Apple Inc. (Case No. 7:24-cv-00279) and Alphabet (Google) (Case No. 7:24-cv-00278) in the Western District of Texas. These suits asserted six patents, including US Patent 11176538, related to Near-Field Communication (NFC) payment technology, against products such as Apple Pay, Apple Wallet, Google Pay, and Google Wallet.
February 13, 2025: In the litigation against Google, CardWare served infringement contentions, specifically alleging infringement of claims from US Patent 11176538, among other patents. In response, Google served preliminary invalidity contentions, citing IPR2023-00219 and other related IPR proceedings as potential defenses.
March 25, 2025: The case of CardWare, Inc. v. Apple, Inc. (7:24-cv-00279) was transferred from the Waco Division to the Austin Division of the Western District of Texas through a joint motion and stipulation. Chief Judge Alan D. Albright retained jurisdiction. This was a procedural transfer and did not constitute a merits-based termination of the case.

Outcome:

IPR2023-00219 (Not Instituted): The inter partes review proceeding concerning US patent 11176538 was not instituted. While the exact date of this decision is not specified in the available information, the non-institution means that the Patent Trial and Appeal Board (PTAB) declined to proceed with a full review of the patentability challenges presented in the petition. This outcome would allow the underlying district court litigation involving US patent 11176538 to continue without a PTAB validity determination affecting the patent.

Plaintiff representatives

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

In-house counsel
- W. Karl Renner · counsel

The case IPR2023-00219 involves Samsung Electronics Co., Ltd. et al. as the Petitioner and CardWare Inc. as the Patent Owner. Since the request is to identify counsel for the "plaintiff(s)" in a "patent infringement case," and given that this is an IPR, the "plaintiff(s)" would correspond to the Petitioner, Samsung Electronics Co., Ltd. et al.

According to the available information, the Petitioner Counsel is listed as "Renner, W. Karlet al." To provide a more complete answer, I will search for "W. Karl Renner" and "Samsung Electronics PTAB counsel IPR2023-00219" to find his firm, office, and relevant experience.In the inter partes review (IPR) proceeding IPR2023-00219, Samsung Electronics Co., Ltd. et al. is the Petitioner, which in the context of a patent infringement dispute corresponds to the plaintiff. The counsel of record representing the Petitioner is:

W. Karl Renner

Role: Petitioner Counsel
Firm: (Firm information not explicitly provided in the initial search results, further research needed for firm and office location)
Relevant Patent Litigation Experience: (Specific experience for this attorney not provided in the initial search results, further research needed)

While the search results confirm W. Karl Renner as counsel for the petitioner, specific details regarding his firm, office location, and a one-line note on relevant patent litigation experience or notable past cases are not immediately available from the provided snippets.

Defendant representatives

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

In-house counsel
- Matt Berkowitz · Respondent Counsel

In the IPR2023-00219 proceeding, CardWare Inc. is the Patent Owner, and thus, in the context of a patent infringement dispute, corresponds to the defendant.

The counsel of record representing CardWare Inc. is:

Matt Berkowitz et al.

Role: Respondent Counsel
Firm: While a specific firm is not explicitly provided for "Matt Berkowitz et al." in the immediate search results for IPR2023-00219, Matt Berkowitz is listed as "Respondent Counsel" in another IPR (IPR2025-01344) where Google LLC is the Petitioner and CardWare Inc. is the Respondent. Further investigation would be needed to definitively link "Matt Berkowitz" to a specific firm and office location for this case.
Relevant Patent Litigation Experience: Without a specific firm or more detailed attorney profile, it is challenging to provide a one-line note on relevant patent litigation experience. However, his repeated appearance as counsel for CardWare Inc. in PTAB proceedings indicates experience in post-grant patent matters.

Record id: 11176538-ipr2023-00219 · edit in Admin