BOOM! PAYMENTS, INC.

Patent Trials and Appeals Board

Mar 4, 2021

CBM2020-00003 (P.T.A.B. Mar. 4, 2021)

Trials@uspto.gov Paper 44
Tel: 571-272-7822 Entered: March 4, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

STRIPE, INC., SHOPIFY INC., AND SHOPIFY (USA) INC.,
Petitioner,
v.
BOOM! PAYMENTS, INC.,
Patent Owner.

CBM2020-00002 (Patent 8,429,084 B1)
CBM2020-00003 (Patent 9,235,857 B2)
CBM2020-00004 (Patent 10,346,840 B2)

Before JONI Y. CHANG, MEREDITH C. PETRAVICK, and KEVIN W.
CHERRY Administrative Patent Judges.
PETRAVICK, Administrative Patent Judge.
ORDER
Dismissal of Petition and Termination of Trial after Institution
37 C.F.R §§ 42.71(a) and 42.72

On January 13, 2021, in Boom! Payments, Inc. v. Stripe, Inc., et al.,
Case No. 2020-1274, the United States Court of Appeals for the Federal
Circuit affirmed a district court’s determination that claim 7 of U.S. Patent
8,429,084 (“the ’084 patent”), claim 7 of U.S. Patent 9,235,857 (“the ’857
CBM2020-00002 (Patent 8,429,084 B1)
CBM2020-00003 (Patent 9,235,857 B2)
CBM2020-00004 (Patent 10,346,840 B2)

2
patent”), and claim 1 of U.S. Patent 10,346,840 (“the ’840 patent”) were
patent ineligible. Exs. 2029, 3001.1 The Federal Circuit also clarified that
the remaining claims of the ’084, ’857, and ’840 patents were likewise
patent ineligible. See Ex. 2029, 10–11. The Federal Circuit, thus, has
determined that all of the claims challenged in these covered business
method (“CBM”) patent reviews are unpatentable under 35 U.S.C. § 101.
After issuance of the Federal Circuit’s decision, we postponed oral
argument, which was to be held on January 19, 2021, and held a conference
call with the parties on January 21, 2021 to discuss how these CBM patent
review trials should proceed. After the conference call, Patent Owner
requested and we authorized the filing of the motion to terminate these CBM
patent reviews. Patent Owner filed the Motion to Terminate on February 12,
2021. Paper 46. In conjunction with filing the Motion to Terminate, Patent
Owner filed, at the Federal Circuit, an unopposed motion requesting
issuance of its mandate (Ex. 2028), and the Federal Circuit subsequently
granted that motion and issued the mandate (Exs. 2031–2032).
Accompanying the Motion to Terminate is a Declaration of Erik T. Bogaard,
the founder and Chief Executive Officer of Boom, confirming that Patent
Owner will not further appeal or challenge the Federal Circuit’s decision.
Ex. 2027.
Patent Owner’s Motion to Terminate requests that we vacate our
Institution Decisions, dismiss the Petitions, and terminate the proceedings
without rendering final written decisions. Paper 46, 6. Patent Owner argues
that these proceedings are moot “because the Federal Circuit’s decision

1 All citations are to CBM2020-00002.
CBM2020-00002 (Patent 8,429,084 B1)
CBM2020-00003 (Patent 9,235,857 B2)
CBM2020-00004 (Patent 10,346,840 B2)

3
affirming the District Court’s decision invalidating the patents-at-issue is
final, and no petition for writ of certiorari will be filed” (id. at 1) and that
these proceedings “should be terminated in order to promote efficiency and
conserve costs” (id. at 6). Patent Owner cites to decisions of the Board and
the Federal Circuit in support of its request and, in particular, the Patent
Owner cites to the Federal Circuit’s decision in Apple Inc. v. Voip-Pal.com,
Inc., 976 F.3d 1316 (Fed. Cir. 2020). Paper 46, 4–6. Patent Owner argues
were the Board to issue a final written decision, an appeal of such
decision would result in the Federal circuit vacating the final
written decision and directing the Board to dismiss the petition.
For instance, in Apple Inc. v. Voip-Pal.com, Inc., 976 F.3d 1316,
1320–21 (Fed. Cir. 2020), the Federal Circuit vacated the
Board’s final written decision and directed the Board to dismiss
the petitions with regard to patent claims that the Federal Circuit
had found to be patent ineligible in a parallel appeal. Id. The
Federal Circuit found that its ineligibility decision rendered the
appeal of the Board’s final written decisions moot. Id.
Paper 46, 4.
Petitioner requests that we deny the Motion to Terminate and enter
adverse judgment under 37 C.F.R. § 42.73(b). Paper 47, 1. Petitioner
responds that mooting these proceedings would be improper because it
would allow Patent Owner to avoid estoppel under 37 C.F.R. § 42.73(d).
Rule 42.73(d)(3)(i) provides that “[a] patent applicant or owner is precluded
from taking action inconsistent with the adverse judgment, including
obtaining in any patent: (i) A claim that is not patentably distinct from a
finally refused or canceled claim.” Petitioner accuses Patent Owner of
attempting to “resurrect[] its concededly unpatentable claims in a pending or
future patent application,” pointing to pending Patent Application No.
CBM2020-00002 (Patent 8,429,084 B1)
CBM2020-00003 (Patent 9,235,857 B2)
CBM2020-00004 (Patent 10,346,840 B2)

4
16/427,695. Paper 47, 1–2. Petitioner asserts that the Board’s decision in
Sony Corp. v. Surpass Tech Innovations, LLC, “makes clear that adverse
judgement should be entered under the circumstances here” because estoppel
under Rule 42.73(d) is an important consideration. Paper 47, 6–7 (citing
Sony Corp. v. Surpass Tech Innovations, LLC, IPR2015-00863, Paper 41, 6,
n.3).
We do not find Petitioner’s arguments concerning Sony Corp. v.
Surpass Tech Innovations to be persuasive. Sony Corp. v. Surpass Tech
Innovations, decided in 2016, is a non-precedential Board decision.
We do find, however, Patent Owner’s argument concerning Apple v.
Voip-Pal.com, persuasive. See Paper 46, 4–6. In Apple v. Voip-Pal.com,
decided in 2020, the Federal Circuit vacated the Board’s final written
decision as to claims that were determined to be unpatentable by a district
court and directed the Board to dismiss the petition as to those claims.
Apple, 976 F.3d 1316, 1321 (citing United States v. Munsingwear, Inc., 340
U.S. 36, 39–41 (1950) (“noting that ‘the established practice . . . in dealing
with a civil case fromm a court in the federal system which has become
moot while [on appeal] is to reverse or vacate the judgment below and
remand with a direction to dismiss’”)).
Petitioner attempts to distinguish the circumstances of these
proceeding from Apple v. Voip-Pal.com. Paper 47, 8–9. Petitioner argues:
The patent owner prevailed before the Board, with a finding of
non-obviousness. . . . Thus, estoppel against the patent owner
was not even possible because the IPR judgement was not
adverse to the patent owner. Shortly after the final written
decision, in a parallel district court action, the petitioner
CBM2020-00002 (Patent 8,429,084 B1)
CBM2020-00003 (Patent 9,235,857 B2)
CBM2020-00004 (Patent 10,346,840 B2)

5
successfully invalidated the challenged claims on Section 101
grounds. Id. at 1321.
On those facts, the Federal Circuit held the underlying
IPRs moot and ordered the Board to terminate them. Id. (finding
that petitioner no longer had potential for injury and mooting IPR
proceedings). This was consistent with Sony, because there could
be no Rule 42.73(d) estoppel against the prevailing patent owner.
But, the Federal Circuit’s decision in Apple v. Voip-Pal.com did not turn on
whether Rule 42.73(d) estoppel applied to Patent Owner or not. See Apple,
976 F.3d at 1321; see also Asghari-Kamrani v. United Servs. Auto. Ass’n,
737 Fed. Appx. 539 (Mem) (Fed. Cir. 2018) (non-precedential) (dismissing
the appeal of a final written decision, determining claims to be unpatentable,
in a covered business method patent review as moot because the parties
agreed “affirmance of the district court’s in-eligibility decision has the effect
of invalidating all claims” of the patent at issue). The Federal Circuit simply
stated: “Because we have determined that the overlapping claims failed the
Section 101 threshold in Twitter, Apple ‘no longer has the potential for
injury, thereby mooting the [obviousness] inquiry’ at issue in the instant
appeal[].” Apple, 976 F.3d at 1321.
Under 37 C.F.R. § 42.71, “[t]he Board may . . . dismiss any petition . .
. , and may enter any appropriate order” and 37 C.F.R. § 42.72, “[t]he Board
may terminate a trial without rendering a final written decision, where
appropriate.” The Federal Circuit, has finally determined that all of the
claims challenged in these covered business method (“CBM”) patent
reviews are unpatentable under 35 U.S.C. § 101, and Patent Owner has
submitted a declaration that it will not further appeal or challenge the
Federal Circuit’s decision (Ex. 2027). Every ground of unpatentability set
CBM2020-00002 (Patent 8,429,084 B1)
CBM2020-00003 (Patent 9,235,857 B2)
CBM2020-00004 (Patent 10,346,840 B2)

6
forth in these Petitions are now moot. Under the particular circumstances of
these proceedings, we determine that it is appropriate to terminate these
CBM patent review trials, without rendering a final written decision, and
dismiss the Petitions because it would be inefficient for the Board to allocate
further limited resources to these particular CBM patent review trials.
We do not vacate our Institution Decisions because Patent Owner
provides no sufficient reason for us to do so under the particular
circumstances of these proceedings. See Mylan Pharm. v. St. Regis Mohawk
Tribe, IPR2016-01127, Paper 159, 3 (dismissing the petition and terminating
trial without rendering a final written decision and without vacating the
institution decision).

ORDER
It is:
ORDERED that the Petitions in CBM2020-00002, CBM2020-00003,
and CBM2020-00004 are dismissed as moot; and
FURTHER ORDERED that CBM2020-00002, CBM2020-00003, and
CBM2020-00004 are terminated.

CBM2020-00002 (Patent 8,429,084 B1)
CBM2020-00003 (Patent 9,235,857 B2)
CBM2020-00004 (Patent 10,346,840 B2)

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PETITIONER:
Donald Daybell
ORRICK, HERRINGTON & SUTCLIFFE LLP
D2dptabdocket@orrick.com

Michael Renaud
Peter Snell
MINTZ, LEVIN, COHN, GLOVSKY and POPEO, P.C.
mtrenaud@mintz.com
pfsnell@mintz.com
PATENT OWNER:
Amy Hayden
Benjamin Wang
RUSS, AUGUST, & KABAT
ahayden@raklaw.com
bwang@raklaw.com