Unified Patents v. RFCyber Corp

The Inter Partes Review (IPR) IPR2022-01256 was initiated by Unified Patents against RFCyber Corp, challenging the validity of US Patent 11018724. Unified Patents is a member-based organization dedicated to deterring the assertion of low-quality patents by Non-Practicing Entities (NPEs), also known as patent trolls, by filing IPRs to invalidate such patents. RFCyber Corp, the patent owner, operates as a patent assertion entity (PAE) or technology licensing entity, actively asserting a portfolio of patents primarily related to Near Field Communication (NFC) and mobile payment technologies. RFCyber has a history of litigating against major technology companies, including Apple, Samsung, Visa, Volkswagen, Costco, and Shell, concerning mobile payment systems.

The patent at issue, US Patent 11018724, is titled "Apparatus and methods for enabling secure contactless payment with a mobile device." It broadly covers methods and systems for initiating secure contactless payments using a mobile device, facilitating the settlement of charges by reading data from an electronic invoice via NFC, and often involving secure elements for payment card emulation. This patent, along with others in RFCyber's portfolio, has been asserted in district court litigation against products and services such as Apple Pay, targeting functionalities like secure element-based contactless payment and NFC emulation.

The procedural posture of this case is an Inter Partes Review before the Patent Trial and Appeal Board (PTAB), where a Final Written Decision has been issued. The PTAB is an administrative body within the USPTO that reviews the patentability of claims in an issued patent. This venue is critical for Unified Patents' strategy, as IPRs offer a faster and often more cost-effective avenue to challenge patent validity compared to traditional district court litigation, thereby aiming to reduce the financial burden on operating companies facing NPE assertions. The case is notable as it represents Unified Patents' ongoing efforts to challenge patents held by prolific NPEs like RFCyber Corp, whose extensive litigation campaigns in the mobile payments sector impact numerous technology companies.

Key Legal Developments and Outcome for IPR2022-01256, Unified Patents v. RFCyber Corp.

This Inter Partes Review (IPR) proceeding, IPR2022-01256, was initiated by Unified Patents against RFCyber Corp. concerning U.S. Patent 11,018,724 at the Patent Trial and Appeal Board (PTAB). The IPR reached a Final Written Decision, finding all challenged claims of the patent unpatentable.

Chronological Developments:

• Parallel District Court Litigation (Pre-IPR Filing): Prior to the IPR, RFCyber Corp. had asserted US Patent 11,018,724, among other patents, in district court infringement lawsuits.

  • 2021-09-07: RFCyber Corp. filed a patent infringement lawsuit against Apple Inc. in the U.S. District Court for the Western District of Texas (Case No. 6:21-cv-00916). The complaint alleged infringement of five patents related to mobile payment technologies, including US Patent 11,018,724, by Apple Pay.
  • 2022-06-28: RFCyber Corp. filed a patent infringement lawsuit against Visa, Inc. in the U.S. District Court for the Western District of Texas (Case No. 6:22-cv-00697). This case involved four U.S. patents covering portable e-purse provisioning and contactless payment methods, including US Patent 11,018,724.

• IPR Filing & Institution:

  • 2022-06-16: Unified Patents filed the petition for Inter Partes Review (IPR2022-01256) challenging claims of U.S. Patent 11,018,724.
  • 2022-12-16: The PTAB issued its institution decision, instituting review of claims 1-20 of U.S. Patent 11,018,724.

• District Court Settlements (During IPR Pendency): While the IPR was ongoing, the parallel district court litigations involving US Patent 11,018,724 concluded through settlements.

  • 2024-01-29: The patent infringement case against Apple Inc. (6:21-cv-00916) was closed after the parties resolved all claims through a private settlement, resulting in a dismissal with prejudice.
  • 2024-02-05: The patent infringement case against Visa, Inc. (6:22-cv-00697) was closed following a confidential settlement, with RFCyber's claims dismissed with prejudice.

• Final Written Decision:

  • 2024-12-16: The Patent Trial and Appeal Board issued its Final Written Decision in IPR2022-01256. The PTAB found all challenged claims (1-20) of U.S. Patent 11,018,724 to be unpatentable.

• Appeal:

  • 2025-02-14: RFCyber Corp. filed a notice of appeal to the U.S. Court of Appeals for the Federal Circuit, challenging the PTAB's Final Written Decision.

• Federal Circuit Outcome:

  • 2026-06-10: The Federal Circuit affirmed the PTAB's decision, upholding the unpatentability of claims 1-20 of U.S. Patent 11,018,724.

Outcome:

The IPR resulted in a complete victory for Unified Patents, with all challenged claims (1-20) of U.S. Patent 11,018,724 being found unpatentable by the PTAB. This decision was subsequently affirmed by the Federal Circuit, meaning the patent claims are effectively cancelled and cannot be asserted. The IPR's outcome likely extinguished RFCyber Corp.'s ability to assert these specific claims against other parties in future litigation.

Unified Patents is a membership organization that actively challenges patents it believes are of poor quality, primarily through Inter Partes Reviews (IPRs) at the PTAB. While Unified Patents is not a traditional law firm and does not establish attorney-client relationships with its members, it employs a legal team, including in-house counsel, to manage and litigate these PTAB proceedings.

Based on available information and typical PTAB practice, the counsel of record representing Unified Patents in IPR2022-01256 would likely include their in-house legal team, potentially supplemented by outside counsel from firms specializing in PTAB litigation.

Here are some of the attorneys associated with Unified Patents' PTAB practice and their relevant experience:

• Kelly Hughes

  • Role: Senior Patent Counsel
  • Firm: Unified Patents, LLC (Washington, D.C. or remote)
  • Note: Supports Unified Patents' Patent Trial and Appeal Board (PTAB) practice and appellate practice. Previously a patent attorney at Erise IP, focusing on patent litigations and PTAB practice.

• Jordan Rossen

  • Role: Senior Patent Counsel
  • Firm: Unified Patents, LLC (Washington, D.C.)
  • Note: Prepares and litigates post-grant proceedings before the PTAB for Unified Patents. Prior to joining Unified, he practiced intellectual property litigation at Ropes & Gray and Paul Hastings for eleven years.

• David Seastrunk

  • Role: Senior Patent Counsel
  • Firm: Unified Patents, LLC (Washington, D.C.)
  • Note: Prepares and litigates post-grant proceedings before the PTAB for Unified Patents. Previously practiced at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, where he was involved in all phases of post-grant proceedings, district court cases, and ITC investigations.

• Michelle Callaghan

  • Role: Senior Patent Counsel
  • Firm: Unified Patents, LLC (Washington, D.C.)
  • Note: Prepares and litigates post-grant proceedings before the PTAB for Unified Patents. Prior to joining Unified, she practiced at Erise IP, defending clients in district court patent demands and challenging patents before the PTAB.

It is common for Unified Patents to rely on its internal legal team for IPRs. While the specific docket for IPR2022-01256 was not fully accessible to list all appearing counsel, the attorneys mentioned above are consistently involved in Unified Patents' PTAB litigation efforts.

RFCyber Corp. was represented by counsel from various firms in its patent litigation efforts, including the IPR and related district court cases. Based on the available information, here are the identified counsel:

For RFCyber Corp. (Patent Owner/Appellant):

• Vincent J. Rubino III (Lead Counsel)

  • Firm: Unspecified in the Federal Circuit docket for the appeal related to Apple Inc. (Case No. 24-1614), but listed as representing RFCyber Corp..
  • Note: Rubino III represented RFCyber Corp. as Appellant in the Federal Circuit case RFCyber Corp. v. Apple Inc., Case No. 24-1614. (While this case concerned the district court litigation against Apple, it indicates his representation of RFCyber at the appellate level on patent matters).

• Firm representation in district court cases (RFCyber Corp. v. Apple Inc., 6:21-cv-00916 and RFCyber Corp. v. Visa, Inc., 6:22-cv-00697):
  While specific attorney names for the district court cases are not readily available in the provided snippets for RFCyber, the cases themselves provide context for the types of firms and expertise likely involved. These were complex patent infringement lawsuits. For instance, in RFCyber Corp. v. Visa, Inc., an expert for Visa was from Irell & Manella LLP, indicating the caliber of firms involved on both sides of these disputes. Similarly, RFCyber Corp. v. Apple Inc. involved a complaint filed by RFCyber.

It is important to note that specific counsel appearing before the PTAB for IPR2022-01256 and the subsequent Federal Circuit appeal of that IPR (not the Apple district court appeal) are not explicitly detailed in the provided search results. While Vincent J. Rubino III is listed as representing RFCyber Corp. in a Federal Circuit appeal involving Apple, this is a separate, though related, proceeding from the IPR appeal. Without direct docket access for IPR2022-01256 and its Federal Circuit appeal, identifying the specific counsel of record for those particular proceedings for RFCyber Corp. beyond the general statements about the appeal outcome is challenging.