Unified Patents LLC v. CardWare Inc

Unified Patents LLC, a member-based organization dedicated to deterring abusive patent assertions by Non-Practicing Entities (NPEs) and improving patent quality, filed an inter partes review (IPR) against CardWare Inc.. CardWare Inc., identified as a provider of security solutions for payment cards, including features like one-time-use card numbers and phishing protection through "SmartTokenization™ technology," appears to operate as a Patent Assertion Entity (PAE). CardWare Inc. has notably asserted its patents against major technology companies, including Apple, Inc., specifically targeting products like the iPhone, Apple Watch, Apple Card, and Apple Pay, which utilize Near-Field Communication (NFC) payment technology.

The IPR, designated IPR2025-01152, was filed with the Patent Trial and Appeal Board (PTAB) and involved U.S. Patent No. 11,620,634 (the '634 patent). This patent broadly relates to NFC payment technology, likely encompassing secure transaction methods and tokenization for fraud prevention. While the IPR does not directly involve an "accused product" in the same way a district court case does, its purpose is to challenge the patentability of the claims within the '634 patent, which CardWare Inc. has asserted in broader infringement litigation.

The procedural posture of this case is significant, as the PTAB ultimately decided not to institute the IPR, citing a "Procedural" reason. This outcome often reflects the PTAB's discretionary denial policies, which have recently emphasized factors such as petitioners presenting inconsistent claim construction positions in parallel district court litigation or challenging older patents where "settled expectations" of validity might apply. This IPR is notable for its linkage to a parallel district court patent infringement lawsuit, CardWare, Inc. v. Apple, Inc. (Case No. 1:25-cv-00446-ADA), initially filed in the Western District of Texas, Waco Division, before being transferred to the Austin Division, with Chief Judge Alan D. Albright retaining jurisdiction. The non-institution by the PTAB in such a context highlights the Board's evolving approach to managing IPRs alongside ongoing infringement cases.

This case, IPR2025-01152, is an Inter Partes Review (IPR) proceeding before the Patent Trial and Appeal Board (PTAB), not a patent infringement litigation in a district court. As such, many of the typical milestones of district court litigation (e.g., filing a complaint, answer, Markman hearing, discovery, trial, verdict, post-trial motions) do not directly apply.

Here are the key legal developments and outcome for this IPR proceeding, along with a search for any parallel district court litigation involving the asserted patent.

I. Inter Partes Review (IPR2025-01152)

Parties:

• Petitioner: Unified Patents LLC
• Patent Owner: CardWare Inc
• Patent at Issue: U.S. Patent No. 11,620,634

Chronology and Outcome:

• 2025-08-01: Unified Patents LLC filed a petition for inter partes review (IPR2025-01152) challenging the patentability of claims of U.S. Patent No. 11,620,634.
• 2026-03-05: The Patent Trial and Appeal Board (PTAB) issued a Decision Not Instituting Inter Partes Review. The IPR petition was not instituted on procedural grounds. While the specific procedural reason is not detailed in the available public docket summaries, a common procedural non-institution could relate to issues like statutory bars (e.g., Fintiv,NHK-Fintiv Factors), prior litigation, or an incomplete petition.

The IPR proceeding is now closed with a non-institution decision.

II. Parallel District Court Litigation

As of May 23, 2026, a search for patent infringement litigation involving U.S. Patent No. 11,620,634 and CardWare Inc as a plaintiff did not yield any active or recently concluded district court cases. This means that at the time the IPR was filed, or subsequently, there wasn't readily available public information indicating an ongoing patent infringement lawsuit that IPR2025-01152 was directly challenging. It is possible that the IPR was filed pre-emptively or in response to demand letters rather than an existing lawsuit.The provided case, IPR2025-01152, is an Inter Partes Review (IPR) proceeding before the Patent Trial and Appeal Board (PTAB), not a patent infringement litigation in a district court. As such, many of the typical milestones of district court litigation (e.g., filing a complaint, answer, Markman hearing, discovery, trial, verdict, post-trial motions) do not directly apply to this IPR.

Here are the key legal developments and outcome for this IPR proceeding. Additionally, a search for parallel district court litigation involving the asserted patent has revealed relevant information.

I. Inter Partes Review (IPR2025-01152)

Parties:

• Petitioner: Unified Patents LLC
• Patent Owner: CardWare Inc
• Patent at Issue: U.S. Patent No. 11,620,634 ("the '634 Patent")

Chronology and Outcome:

• 2025-08-01: Unified Patents LLC filed a petition for inter partes review (IPR2025-01152) challenging the patentability of claims of U.S. Patent No. 11,620,634.
• 2026-03-05: The Patent Trial and Appeal Board (PTAB) issued a Decision Not Instituting Inter Partes Review for IPR2025-01152. The IPR petition was not instituted on procedural grounds.

The IPR proceeding is now closed with a non-institution decision. While the specific procedural reason for the non-institution in this particular case is not fully detailed in public summaries, the PTAB has increasingly denied institution on procedural grounds, often related to the presence of parallel district court litigation and the application of factors like those from Fintiv or director review guidelines. Director John Squires, who took office in September 2025, has assumed personal responsibility for institution decisions and often issues concise summary notices for non-institution.

II. Parallel District Court Litigation

During the research for IPR2025-01152, a parallel patent infringement litigation involving U.S. Patent No. 11,620,634 and CardWare Inc as a plaintiff was identified:

• Case Name: CardWare Inc. v. Apple Inc.
• Court: United States District Court for the Western District of Texas, Austin Division
• Case Number: 1:25-cv-00446-ADA
• Plaintiff: CardWare Inc.
• Defendant: Apple Inc.
• Patents Asserted: U.S. Patent No. 11,620,634, among others (including U.S. Patent Nos. 10,339,520; 10,810,579; 11,176,538; 10,628,820; and 11,328,286).
• Filing & Initial Pleadings: CardWare sued Apple for patent infringement, with the lawsuit brought on November 4, 2024.
• Discovery Milestones: On February 13, 2025, CardWare served Google (a likely co-defendant or related entity in other suits) with Infringement Contentions, alleging infringement of claims of the '634 patent and others.
• Claim Construction (Markman) Outcomes: The court provided preliminary claim constructions on August 27, 2025, and held a claim construction hearing on August 28, 2025, for terms in the '634 Patent and other asserted patents. Final constructions were entered by the court on August 29, 2025.
• Effect of IPR on Litigation: Although Unified Patents filed an IPR against the '634 Patent (IPR2025-01152), the PTAB procedurally declined to institute review. Apple Inc. also filed its own IPRs against CardWare Inc. patents, including IPR2025-01150 (filed June 24, 2025) and IPR2025-01149 (also involving CardWare). The district court case continued through claim construction despite the pending IPRs. The decision not to institute IPR2025-01152 likely meant the patent's validity was left to be decided in the ongoing district court litigation with Apple. The fact that the '634 Patent issued on April 4, 2023, and CardWare's lawsuit against Apple was brought on November 4, 2024, played a role in arguments regarding settled expectations in related IPR proceedings.

It's important to note that Unified Patents often files IPRs against patents asserted by Non-Practicing Entities (NPEs) to benefit its members who may be facing infringement allegations. While IPR2025-01152 itself was not instituted, the existence of parallel litigation against Apple by CardWare indicates the broader context in which this IPR was filed.

In IPR2025-01152, Unified Patents LLC likely relied on its internal legal team for the petition, as is typical for the organization in its inter partes review (IPR) filings. While specific counsel appearances for this procedurally non-instituted case are not detailed in public search results, the following attorneys are prominent in Unified Patents LLC's PTAB proceedings and would typically represent the plaintiff in such matters:

• Jonathan Stroud

  • Role: Chief Operating Officer (COO) & Chief Legal Officer (CLO), and General Counsel.
  • Firm: Unified Patents LLC, Chevy Chase, MD.
  • Experience: Oversees Unified Patents' legal and corporate operations, including patent reviews, appeals, and risk management. He has extensive experience in PTAB proceedings, district court, and appellate litigation, and previously worked as a patent attorney at Finnegan, Henderson, Farabow, Garrett & Dunner LLP, and as a patent examiner at the USPTO.

• Michelle Aspen

  • Role: Senior Patent Counsel, often appearing as Lead Counsel in PTAB matters.
  • Firm: Unified Patents LLC, Chevy Chase, MD.
  • Experience: Implements strategies for clients in patent litigation and has a high success rate in post-allowance proceedings before the USPTO across various technology areas. She has also argued at the Federal Circuit and supervised appellate counsel.

• Jessica L.A. Marks

  • Role: SEP & Foreign Managing Counsel, frequently listed as Back-Up Counsel in PTAB proceedings.
  • Firm: Unified Patents LLC, Chevy Chase, MD.
  • Experience: Prepares and litigates post-grant proceedings before the PTAB for Unified Patents. Prior to joining Unified, she practiced at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, where she litigated post-grant proceedings, district court cases, and International Trade Commission proceedings.

• Roshan Mansinghani

  • Role: Head of Operations, often listed as Back-Up Counsel in PTAB proceedings.
  • Firm: Unified Patents LLC, Chevy Chase, MD.
  • Experience: Leads Unified's efforts to deter the assertion of low-quality patents by non-practicing entities, overseeing numerous USPTO invalidation proceedings annually. He has over a decade of experience in patent litigation and trials, and previously practiced in the Intellectual Property Practice at Baker Botts L.L.P.

These individuals, all in-house counsel for Unified Patents LLC (headquartered in Chevy Chase, MD), are routinely involved in preparing and prosecuting IPR petitions and other administrative challenges before the PTAB. Due to the procedural non-institution of IPR2025-01152, specific docket entries for formal appearances in this particular case were not readily available.

Here is the identified counsel of record representing CardWare Inc. in related PTAB proceedings, who would likely have represented them in IPR2025-01152 had it been instituted:

Matthew G. Berkowitz

• Role: Lead Counsel
• Firm: Reichman Jorgensen Lehman Feldberg LLP
• Office Location: San Francisco, CA (based on firm's California presence and Berkowitz's Chambers USA ranking for Intellectual Property: Patent Litigation in California)
• Experience Note: Matt Berkowitz is a Chambers-ranked patent litigator with extensive experience as lead counsel in over 20 district court and post-grant proceedings, including inter partes review (IPR) matters. He has successfully argued multiple cases before the U.S. Court of Appeals for the Federal Circuit. He is specifically noted as lead counsel for CardWare Inc. in ongoing patent litigation and related post-grant proceedings.

Patrick R. Colsher

• Role: Counsel
• Firm: Reichman Jorgensen Lehman Feldberg LLP
• Office Location: Information not readily available in provided sources.
• Experience Note: Listed as counsel of record for CardWare Inc. in related IPR proceedings (IPR2025-01148).

Khue V. Hoang

• Role: Counsel
• Firm: Reichman Jorgensen Lehman Feldberg LLP
• Office Location: Information not readily available in provided sources.
• Experience Note: Listed as counsel of record for CardWare Inc. in related IPR proceedings (IPR2025-01148).

Yue (Joy) Wang

• Role: Counsel
• Firm: Reichman Jorgensen Lehman Feldberg LLP
• Office Location: Information not readily available in provided sources.
• Experience Note: Listed as counsel of record for CardWare Inc. in related IPR proceedings (IPR2025-01148).

Timothy A. Trost

• Role: Counsel
• Firm: Reichman Jorgensen Lehman Feldberg LLP
• Office Location: Information not readily available in provided sources.
• Experience Note: Listed as counsel of record for CardWare Inc. in related IPR proceedings (IPR2025-01148).

While IPR2025-01152 was procedurally not instituted by the PTAB, the listed attorneys are consistently identified as representing CardWare Inc. in related inter partes review cases and patent litigation.