Unified Patents v. CardWare Inc.

This Inter Partes Review (IPR) involves petitioner Unified Patents and patent owner CardWare Inc., centered on U.S. Patent No. 11,328,286. Unified Patents is a member-based organization established to deter non-practicing entities (NPEs), often referred to as "patent trolls," by proactively challenging patents they deem of poor quality or invalid, typically through IPR proceedings at the Patent Trial and Appeal Board (PTAB). CardWare Inc., specifically the entity based in Austin, Texas, is a company focused on security solutions for payment cards and has a portfolio of patents related to Near-Field Communication (NFC) payment technology. CardWare Inc. has been actively asserting these patents, including the '286 patent, in district court litigation against major technology companies like Apple and Google, accusing products such as iPhone, Apple Watch, Apple Card, Apple Pay, Google Pay, and Google Wallet of infringement.

The patent at issue, U.S. Patent No. 11,328,286, titled "Systems and methods for a universal token for payments," generally relates to systems and methods for generating and utilizing unique tokens for secure payment transactions, aiming to enhance fraud prevention and improve the customer-merchant-bank experience. The procedural posture of IPR2025-01151 is before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). The case reached a "Not Instituted - Procedural" status. This means the PTAB, which operates with three-judge panels, decided not to initiate a full review of the patent's validity, not necessarily on the merits of the invalidity arguments but due to procedural considerations. The PTAB has discretion to deny institution, often considering factors like the status of parallel district court litigation and the likelihood of a trial.

This IPR is notable as it highlights Unified Patents' ongoing strategy of challenging patents asserted by NPEs to mitigate patent litigation risk for its members within specific technology zones, in this instance, likely within the electronic payments or cloud storage sectors. The "Not Instituted - Procedural" outcome is significant because, unlike a decision on the merits, it does not directly validate the patent but allows CardWare Inc. to continue asserting the '286 patent in its ongoing district court litigation without a concurrent PTAB validity challenge. This decision underscores the PTAB's discretionary power in determining which IPR petitions proceed to trial, especially when parallel district court proceedings exist.

The case "Unified Patents v. CardWare Inc., IPR2025-01151" pertains to an Inter Partes Review (IPR) proceeding before the Patent Trial and Appeal Board (PTAB) concerning U.S. Patent No. 11,328,286. While the IPR itself did not proceed to a full review, it was a parallel development to ongoing patent infringement litigation involving the same patent.

Here are the key legal developments and outcome in chronological order:

Parallel District Court Litigation - CardWare Inc. v. Apple Inc.

• 2024-11-04 - Filing of Complaint: CardWare Inc. initiated a patent infringement lawsuit against Apple Inc. in the U.S. District Court for the Western District of Texas, Waco Division, assigned Case No. 7:2024cv00279. The complaint asserted six patents related to Near-Field Communication (NFC) payment technology, including U.S. Patent No. 11,328,286.
• 2025-03-25 - Venue Transfer: The case, CardWare Inc. v. Apple Inc., was transferred from the Waco Division to the Austin Division of the Western District of Texas. The case was re-docketed as 1:25-cv-00446-ADA. This transfer was pursuant to a Joint Motion and Stipulation to Transfer Venue (ECF No. 37) granted by Chief Judge Alan D. Albright, with the directive that the case remain on his docket.
• 2025-08-29 - Claim Construction (Markman) Order: The district court in CardWare Inc. v. Apple Inc. (1:25-cv-00446-ADA) issued a Claim Construction Order, providing preliminary and final constructions for terms in the asserted patents, including U.S. Patent No. 11,328,286.

PTAB IPR Proceeding - Unified Patents v. CardWare Inc. (IPR2025-01151)

• Mid-2025 (Estimated Filing) - IPR Petition Filing: Unified Patents, as the Petitioner, filed a petition for Inter Partes Review, IPR2025-01151, challenging all claims of U.S. Patent No. 11,328,286. While a precise filing date was not found in public records, the sequential numbering with other IPRs filed against CardWare Inc. by Apple Inc. (e.g., IPR2025-01150 filed June 24, 2025) suggests the petition for IPR2025-01151 was filed around May-July 2025.
• 2025-11-20 - Non-Institution (Procedural): The Director of the U.S. Patent and Trademark Office (USPTO), John A. Squires, issued an Amended Notice of Decisions on Institution. This notice explicitly listed IPR2025-01151, among other proceedings, as having institution denied due to discretionary considerations under 35 U.S.C. § 314(a). The "Not Instituted - Procedural" status for IPR2025-01151 therefore indicates a discretionary denial by the Director, likely based on factors related to the parallel district court litigation (e.g., application of Fintiv factors) rather than on the merits of the patentability challenge itself.

Final Disposition or Present Posture:

• The IPR2025-01151 proceeding concluded with a non-institution decision on November 20, 2025. This means no trial was instituted at the PTAB, and the validity of U.S. Patent No. 11,328,286 was not adjudicated by the Board.
• The parallel patent infringement litigation, CardWare Inc. v. Apple Inc. (1:25-cv-00446-ADA), remains active in the Western District of Texas and has progressed beyond the claim construction stage.

Unified Patents typically utilizes a combination of in-house counsel and external law firms for its Inter Partes Review (IPR) proceedings. While specific counsel for IPR2025-01151 (Unified Patents v. CardWare Inc.) was not directly found in the publicly available search results for this particular case, the following attorneys and firms have represented Unified Patents in other IPRs and related appeals, providing an indication of their likely counsel:

In-House Counsel for Unified Patents:

• Roshan Mansinghani
  • Role: Head of Operations (previously In-house counsel).
  • Firm: Unified Patents, LLC (Washington, DC / Dallas, TX).
  • Experience Note: Has represented Unified Patents as in-house counsel in various IPR proceedings, including an appeal to the Federal Circuit affirming an IPR victory against an Intellectual Ventures patent.
• Jonathan Stroud
  • Role: In-house counsel (Chief Legal Officer at Unified Patents).
  • Firm: Unified Patents, LLC.
  • Experience Note: Represented Unified Patents as in-house counsel in an appeal to the Federal Circuit affirming an IPR victory against an Intellectual Ventures patent.
• Kelly Hughes
  • Role: In-house counsel (Senior Patent Counsel).
  • Firm: Unified Patents, LLC (Washington, DC).
  • Experience Note: Represented Unified Patents as in-house counsel in an IPR against a patent asserted by Peter Henrik Pedersen (associated with AiPi Solutions).
• Alyssa Holtslander
  • Role: In-house counsel.
  • Firm: Unified Patents, LLC.
  • Experience Note: Represented Unified Patents as in-house counsel in an IPR against a patent asserted by Peter Henrik Pedersen.
• Jenn Bisk
  • Role: Senior Patent Counsel.
  • Firm: Unified Patents, LLC.
  • Experience Note: Listed as Senior Patent Counsel on the Unified Patents team page.
• Kyla Bulter
  • Role: Senior Patent Counsel.
  • Firm: Unified Patents, LLC.
  • Experience Note: Listed as Senior Patent Counsel on the Unified Patents team page.

Outside Counsel Firms and Attorneys for Unified Patents (in other IPR cases):

• Erise IP, P.A.
  • Attorneys:
    • Jason R. Mudd
      • Role: Lead Counsel (in IPR2021-01260).
      • Firm: Erise IP, P.A. (Overland Park, Kansas).
      • Experience Note: Has served as lead counsel for Unified Patents in IPR proceedings.
    • Eric A. Buresh
      • Role: Back-Up Counsel (in IPR2021-01260).
      • Firm: Erise IP, P.A. (Overland Park, Kansas).
      • Experience Note: Has served as counsel for Unified Patents in IPR proceedings.
• Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
  • Attorneys:
    • Peter Ayers
      • Role: Counsel (in an appeal to the Federal Circuit).
      • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
      • Experience Note: Represented Unified Patents in an appeal to the Federal Circuit affirming an IPR victory against an Intellectual Ventures patent.
  • Experience Note: The firm represented Unified Patents in an IPR against an Intellectual Ventures patent.
• Akin Gump Strauss Hauer & Feld LLP
  • Attorneys:
    • Cono Carrano
      • Role: Intellectual Property Partner.
      • Firm: Akin Gump Strauss Hauer & Feld LLP (Washington, D.C.).
      • Experience Note: Led the Akin Gump team representing Unified Patents in an IPR against Korea Advanced Institute of Science and Technology (KAIST), resulting in all challenged claims being held unpatentable.
    • Ryan Stronczer
      • Role: Counsel.
      • Firm: Akin Gump Strauss Hauer & Feld LLP.
      • Experience Note: Part of the Akin Gump team representing Unified Patents in an IPR against KAIST.
    • Clark Gordon
      • Role: Associate.
      • Firm: Akin Gump Strauss Hauer & Feld LLP.
      • Experience Note: Part of the Akin Gump team representing Unified Patents in an IPR against KAIST.
    • Sohrab Hajarian
      • Role: Associate.
      • Firm: Akin Gump Strauss Hauer & Feld LLP.
      • Experience Note: Part of the Akin Gump team representing Unified Patents in an IPR against KAIST.
• Haynes and Boone
  • Attorneys:
    • Jon Bowser
      • Role: Counsel.
      • Firm: Haynes and Boone.
      • Experience Note: Represented Unified Patents in an IPR against a patent asserted by Peter Henrik Pedersen.
    • Angela Oliver
      • Role: Counsel.
      • Firm: Haynes and Boone.
      • Experience Note: Represented Unified Patents in an IPR against a patent asserted by Peter Henrik Pedersen.
    • Michael McCarty
      • Role: Counsel.
      • Firm: Haynes and Boone.
      • Experience Note: Represented Unified Patents in an IPR against a patent asserted by Peter Henrik Pedersen.
    • Matt Beck (now at Unified Patents)
      • Role: Counsel (at Haynes and Boone during the IPR).
      • Firm: Haynes and Boone (at the time).
      • Experience Note: Represented Unified Patents in an IPR against a patent asserted by Peter Henrik Pedersen.

It is important to note that without direct access to the specific docket for IPR2025-01151, the attorneys listed above are based on their representation of Unified Patents in other IPR proceedings. Unified Patents often relies on both its internal legal team and specialized outside counsel for its IPR filings.

While the IPR case IPR2025-01151 involving Unified Patents and CardWare Inc. was not instituted due to procedural reasons, information regarding CardWare Inc.'s counsel can be found by examining their representation in related district court litigation and other IPRs involving the same patents. CardWare Inc. is actively asserting U.S. Patent No. 11,328,286 and other related patents in infringement lawsuits against major technology companies like Apple and Google in the Western District of Texas.

Based on available docket information for these related cases, the following attorneys have represented CardWare Inc.:

Lead Counsel / Counsel of Record:

• Matthew G. Berkowitz - Partner, Reichman Jorgensen Lehman & Feldberg LLP (Austin, TX office).
  • Experience: Mr. Berkowitz is a highly experienced trial lawyer specializing in high-stakes intellectual property litigation, including patent infringement, trade secret, and unfair competition cases. He has represented clients in numerous federal district courts and before the International Trade Commission.
• Navid Cyrus Bayar - Partner, Reichman Jorgensen Lehman & Feldberg LLP (Austin, TX office).
  • Experience: Mr. Bayar focuses on patent and intellectual property litigation, representing both plaintiffs and defendants in complex technology disputes. He has a strong background in electrical engineering.
• Yue (Joy) Wang - Partner, Reichman Jorgensen Lehman & Feldberg LLP (Austin, TX office).
  • Experience: Ms. Wang's practice includes patent litigation across various technologies, and she has experience in both district court and PTAB proceedings.
• Caroline M. Walters - Partner, Reichman Jorgensen Lehman & Feldberg LLP (Austin, TX office).
  • Experience: Ms. Walters is involved in intellectual property litigation, representing clients in patent disputes. She was noted as having withdrawn as counsel in one case but appeared in others.
• Patrick R. Colsher - Partner, Reichman Jorgensen Lehman & Feldberg LLP (New York, NY or Silicon Valley, CA office, based on firm's locations).
  • Experience: Mr. Colsher focuses on high-stakes patent litigation and has a background in electrical engineering.
• Khue V. Hoang - Partner, Reichman Jorgensen Lehman & Feldberg LLP (Austin, TX office).
  • Experience: Mr. Hoang is a patent litigator with experience in a variety of technology areas, representing both patent owners and accused infringers.

Local Counsel:

• Eric H. Findlay - Shareholder, Findlay Craft, P.C. (Tyler, TX office).
  • Experience: Mr. Findlay is a seasoned trial lawyer with extensive experience in patent litigation in the Eastern and Western Districts of Texas, frequently serving as local counsel in complex patent cases.
• Erica Benites Giese - Partner, Jackson Walker LLP (Austin, TX office).
  • Experience: Ms. Giese has experience in federal litigation, including intellectual property disputes, often serving as local counsel in the Western District of Texas.
• Katharine L. Carmona - Partner, Jackson Walker LLP (Austin, TX office).
  • Experience: Ms. Carmona's practice includes intellectual property litigation, and she is admitted to practice in the Western District of Texas.
• Nathaniel St. Clair, II - Partner, Jackson Walker LLP (Austin, TX office).
  • Experience: Mr. St. Clair is a litigator with experience in intellectual property and commercial disputes in Texas federal courts.

It's important to note that while the IPR in question (IPR2025-01151) did not proceed to institution, the listed attorneys have actively represented CardWare Inc. in related patent disputes involving the '286 patent and other patents in its portfolio.