Unified Patents v. CardWare Inc. et al.

Unified Patents initiated an inter partes review (IPR) against CardWare Inc. and Virtual Electric Inc. concerning U.S. Patent No. 11176538. Unified Patents is a member-based organization focused on deterring unsubstantiated or invalid patent assertions, primarily by Non-Practicing Entities (NPEs) or patent assertion entities (PAEs), through various strategies, including filing IPRs. CardWare Inc., along with Virtual Electric Inc., appears to operate as a patent assertion entity, actively asserting a portfolio of patents related to electronic payment and Near Field Communication (NFC) technologies against major tech companies. David Wyatt is listed as an inventor for patents assigned to both CardWare Inc. and Virtual Electric Inc., indicating a shared origin or relationship in their patent portfolios.

The patent at issue, U.S. Patent No. 11176538, broadly describes a multi-function electronic device capable of emulating a standard credit card by generating a programmed magnetic field of alternating polarity based on swipe speed, and methods for user control in authorizing or managing various credit, debit, cash, and cryptocurrency transactions. This patent, among others, is being asserted by CardWare Inc. in separate district court litigations against companies like Apple and Google, where the accused products and services include NFC payment functionalities found in smartphones, smartwatches, and payment systems like Apple Pay and Google Pay.

This IPR was filed with the Patent Trial and Appeal Board (PTAB), an administrative body within the U.S. Patent and Trademark Office. The PTAB serves as a critical venue for challenging the validity of patents outside of federal district court litigation, often offering a faster and more cost-effective pathway. The case is notable due to Unified Patents' role in scrutinizing patents held by entities actively engaged in patent assertion in the electronic payment sector. The eventual settlement of this IPR indicates that the parties reached an agreement resolving the challenge to the patent's validity before a final decision by the PTAB.

The inter partes review (IPR) proceeding IPR2023-00196, "Unified Patents v. CardWare Inc. et al.", concerning US Patent 11176538, was filed by Unified Patents against CardWare Inc. and Virtual Electric Inc. and ultimately reached a settlement. While specific detailed docket entries for this particular IPR are not readily available in public search results, the general procedural framework and typical outcomes for Unified Patents' IPR challenges can provide context.

It's important to note that IPR proceedings at the Patent Trial and Appeal Board (PTAB) follow a different procedural path than district court patent infringement litigation. Therefore, categories such as "complaint, answer, counterclaims," "discovery milestones," "trial events, verdict," and "post-trial motions" are not directly applicable in the same way they would be for a district court case. Instead, the IPR process involves a petition, a patent owner preliminary response, an institution decision, discovery (more limited than in district court), and potentially a final written decision.

Based on available information, the key legal developments and outcome are as follows:

• Filing of Petition: Unified Patents, a patent-challenge membership organization, initiated IPR2023-00196 against US Patent 11176538. The specific filing date for IPR2023-00196 is not explicitly detailed in the provided search results. Unified Patents frequently files IPR petitions to challenge patents it considers a threat to its members' industries.

• Patent Owner Preliminary Response: In IPR proceedings, the patent owner (CardWare Inc. and Virtual Electric Inc. in this case) would have had an opportunity to file a preliminary response arguing against the institution of the IPR. These responses often address the merits of the patentability challenge and may also raise discretionary denial arguments, such as those under Fintiv (e.g., regarding parallel district court litigation).

• Institution Decision: The PTAB would have reviewed the petition and the patent owner's preliminary response to decide whether to institute an IPR. Institution requires a showing that there is a reasonable likelihood that the petitioner would prevail with respect to at least one challenged claim. If a parallel district court case existed, the PTAB could deny institution based on Fintiv factors, which consider the proximity of the trial date, investment in the parallel proceeding, and overlap of issues, among other circumstances. Without specific details for IPR2023-00196, the outcome of the institution decision (whether it was instituted or denied) is not confirmed.

• Settlement: The case metadata indicates the status as "Settled". Unified Patents frequently resolves IPRs through settlement, often resulting in a "procedural termination" status on the PTAB docket if a final written decision is avoided. The precise date of settlement for IPR2023-00196 is not detailed in the provided search results. Settlements in IPRs can occur at various stages, including before an institution decision or before a final written decision.

• Lack of Claim Construction, Discovery Milestones, Trial Events: As an IPR proceeding that settled, it is highly unlikely that formal claim construction (Markman) hearings, extensive discovery, or trial events in the manner of a district court case took place. Claim construction in an IPR is typically done under the broadest reasonable interpretation (BRI) standard in light of the patent specification, unless the patent will expire during the IPR.

• No Appeal: Given the settlement, there would not have been a final written decision from the PTAB, and consequently, no appeal to the Federal Circuit for this IPR. Appeals to the Federal Circuit typically follow a final written decision from the PTAB.

Parallel PTAB IPR/PGR Proceedings on the Asserted Patents and their Effect on the Litigation:

There is no information in the provided search results indicating any parallel PTAB IPR or PGR proceedings specifically for US Patent 11176538, other than the IPR2023-00196 itself. However, it is common for patent owners like CardWare Inc. to be involved in multiple IPRs. For instance, CardWare Inc. has been a patent owner in other IPR proceedings filed by different petitioners, such as Apple Inc. in IPR2025-01150 and IPR2025-01344, which suggests a broader enforcement strategy for its patent portfolio. If parallel district court litigation involving the '538 patent existed, the IPR could have been influenced by discretionary denial factors (e.g., Fintiv), but no such parallel litigation is specified for this particular IPR.

Here is the counsel of record representing Unified Patents in IPR2023-00196:

• Jonathan Stroud

  • Role: General Counsel, In-house
  • Firm: Unified Patents, LLC
  • Office Location: While a specific office location for Jonathan Stroud isn't provided for this particular case, Unified Patents has an office in Chevy Chase, MD.
  • Experience: Jonathan Stroud frequently speaks on patent policy and PTAB trends, and has provided comments to the USPTO on initiatives to ensure patent reliability.

• Michelle Aspen

  • Role: Senior Patent Counsel, In-house
  • Firm: Unified Patents, LLC
  • Office Location: 4445 Willard Avenue, Suite 600, Chevy Chase, MD 20815
  • Experience: Michelle Aspen is an experienced in-house counsel at Unified Patents, contributing to their comments on USPTO initiatives and participating in webinars on PTAB proceedings.

• Ellyar Barazesh

  • Role: Senior Patent Counsel, In-house
  • Firm: Unified Patents, LLC
  • Office Location: 4445 Willard Avenue, Suite 600, Chevy Chase, MD 20815
  • Experience: Ellyar Barazesh has participated in webinars on strategies for filing ex parte reexaminations, indicating experience in post-grant proceedings.

• Roshan Mansinghani

  • Role: Counsel, In-house
  • Firm: Unified Patents, LLC
  • Office Location: 4445 Willard Avenue, Suite 600, Chevy Chase, MD 20815
  • Experience: Roshan Mansinghani is identified as counsel of record for Unified Patents in PTAB proceedings.

• Jordan Rossen

  • Role: Senior Patent Counsel, In-house
  • Firm: Unified Patents, LLC
  • Office Location: While a specific office location for Jordan Rossen isn't provided, Unified Patents has an office in Chevy Chase, MD.
  • Experience: Jordan Rossen has spoken on the interaction between PTAB and district courts, specifically Judge Albright's court.

• Jessica Marks

  • Role: Senior Patent Counsel, In-house
  • Firm: Unified Patents, LLC
  • Office Location: While a specific office location for Jessica Marks isn't provided, Unified Patents has an office in Chevy Chase, MD.
  • Experience: Jessica Marks has been a speaker on amplifying underrepresented voices at the PTAB.

Here is the identified counsel of record representing CardWare Inc. in IPR2023-00196, based on their representation in a related district court case (CardWare, Inc. v. Apple Inc., 7:24-cv-00279) involving the same patent, U.S. Patent No. 11,176,538. While direct counsel appearances for IPR2023-00196 were not explicitly found, these attorneys and firms are highly likely to have been involved given their expertise and the directly related litigation. Information for Virtual Electric Inc. could not be definitively identified.

Counsel for CardWare Inc.:

From Reichman Jorgensen Lehman & Feldberg LLP:

• Matthew G. Berkowitz

  • Role: Lead Counsel (inferred from general practice and representative matters)
  • Firm & Office: Reichman Jorgensen Lehman & Feldberg LLP, Silicon Valley office (Redwood Shores, CA)
  • Experience: Chambers-ranked patent litigator with experience as lead counsel in over 20 district court and post-grant proceedings (including IPRs) and successful arguments before the U.S. Court of Appeals for the Federal Circuit. He represents clients in high-stakes patent disputes across various technologies, including consumer electronics, memory systems, and networking. He has served as lead counsel for CardWare, Inc. in ongoing patent litigation and related post-grant proceedings.

• Patrick R. Colsher

  • Role: Lead Counsel (inferred from general practice and representative matters)
  • Firm & Office: Reichman Jorgensen Lehman & Feldberg LLP, New York and Silicon Valley offices
  • Experience: Focuses on intellectual property and complex commercial litigation. A registered patent attorney with electrical and biomedical engineering background, he has significant trial experience in federal courts, Section 337 investigations before the ITC, and has handled nearly 100 post-grant and inter partes review trials before the USPTO. In 2025, he achieved a perfect record for both patent owners and petitioners in over 20 PTAB proceedings.

• Khue V. Hoang

  • Role: Counsel (Partner)
  • Firm & Office: Reichman Jorgensen Lehman & Feldberg LLP, New York office (Managing Partner of the New York office)
  • Experience: Over 20 years of experience in high-stakes patent infringement and licensing disputes. She is recognized as a national IP Litigation Star by Benchmark Litigation and has a technical background as a semiconductor engineer. Her experience spans telecommunications, data storage, consumer electronics, and medical devices.

• Yue (Joy) Wang

  • Role: Associate Counsel (inferred from firm role)
  • Firm & Office: Reichman Jorgensen Lehman & Feldberg LLP, Silicon Valley office (Redwood Shores, CA)
  • Experience: Nearly a decade of experience in intellectual property litigation, focusing on patent matters in district courts and before the International Trade Commission. Her technical background as an engineer enables her to advise clients across various products and technologies. She has also prosecuted patents before the USPTO.

• Navid Cyrus Bayar

  • Role: Special Counsel (at current firm, assumed similar role for CardWare)
  • Firm & Office: Reichman Jorgensen Lehman & Feldberg LLP (listed in the district court filing, but currently Special Counsel at Jenner & Block's San Francisco office)
  • Experience: A Silicon Valley trial lawyer with extensive experience in intellectual property and patent litigation, handling all aspects of complex commercial disputes for technology companies from case work-up through trial or settlement.

• Caroline M. Walters

  • Role: Partner (inferred from firm role)
  • Firm & Office: Reichman Jorgensen Lehman & Feldberg LLP, New York office
  • Experience: Broad experience in multi-million-dollar commercial disputes, including contract, trade secret, securities fraud, and business torts. While her profile emphasizes commercial and general IP litigation, she is listed on the district court filing for CardWare.

From Findlay Craft, P.C.:

• Eric H. Findlay
  • Role: Local Counsel / Lead Counsel (his firm frequently acts in both capacities)
  • Firm & Office: Findlay Craft, P.C., Tyler, Texas
  • Experience: A seasoned trial lawyer based in Tyler, Texas, with nearly 30 years of experience. Patent cases currently make up the majority of his practice. He has tried dozens of patent cases and appeared in over 1000 patent cases throughout Texas, with extensive experience in the Eastern, Western, and Northern Districts of Texas.

Note on Virtual Electric Inc.:
Counsel for Virtual Electric Inc. specifically in IPR2023-00196 could not be definitively identified through public records accessible via web search. It is possible they were represented by the same counsel as CardWare Inc., or their representation was not prominently disclosed in the public records available for this IPR given its settled status.

Source of Information: The primary source for the attorneys representing CardWare Inc. in relation to Patent No. 11,176,538 is a court filing from the district court case CardWare, Inc. v. Apple Inc., Case No. 7:24-cv-00279 in the Western District of Texas. Individual attorney and firm profiles were used to detail their experience and roles.