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Case 1:13-cv-00738-GMS Document 1 Filed 04/26/13 Page 1 of 29 PageID #: 1
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`JOHN D’AGOSTINO,
`
`
`Plaintiff,
`
`v.
`
`MASTERCARD INC.; MASTERCARD
`INTERNATIONAL INCORPORATED
`(d/b/a MASTERCARD WORLDWIDE);
`ORBISCOM LTD.; ORBISCOM INC.;
`CITIGROUP INC.; DISCOVER
`FINANCIAL SERVICES; and XERXES
`ENGINEERING LLC,
`
`
`Defendants.
`
`
`
`Case No.
`
`
`
`
`
`JURY TRIAL DEMANDED
`
`COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiff John D’Agostino complains of Defendants MasterCard Inc.; MasterCard
`
`International Incorporated (d/b/a MasterCard Worldwide); Orbiscom Limited; Orbiscom Inc.;
`
`Citigroup Inc.; Discover Financial Services; and Xerxes Engineering LLC as follows:
`
`NATURE OF LAWSUIT
`
`1.
`
`This is a claim for patent infringement arising under the patent laws of the United
`
`States, Title 35 of the United States Code.
`
`THE PARTIES
`
`2.
`
`Mr. John D’Agostino (hereinafter referred to as “D’Agostino”) currently resides
`
`at 5168 Northridge Road, #309, Sarasota, Florida 34238.
`
`3.
`
`D’Agostino is the sole inventor of and owner of all legal rights, title and interest
`
`in and to United States Patent No. 8,036,988 entitled “System and Method for Performing Secure
`
`Credit Card Transactions,” which issued on October 11, 2011 (“the ‘988 Patent”) (a true and
`
`correct copy is attached as Exhibit A) and United States Patent No. 7,840,486 entitled “System
`
`
`
`MasterCard, Exh. 1007, p. 1
`
`

`

`Case 1:13-cv-00738-GMS Document 1 Filed 04/26/13 Page 2 of 29 PageID #: 2
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`
`
`and Method for Performing Secure Credit Card Purchases,” which issued on November 23, 2010
`
`(the “‘486 Patent”) (a true and correct copy is attached as Exhibit B).
`
`4.
`
`D’Agostino has standing to sue for infringement of the ‘988 and ‘486 Patents
`
`(collectively, the “Patents-in-Suit”) because he owns all right, title and interest thereto, including
`
`the right to collect for past damages. D’Agostino has suffered, and will continue to suffer, injury
`
`as a result of Defendants’ infringement of the Patents-in-Suit.
`
`5.
`
`Defendant MasterCard Inc. is corporation organized under the laws of the State of
`
`Delaware and maintains The Corporation Trust Company as its registered agent located at
`
`Corporation Trust Center, 1209 Orange Street, Wilmington, Delaware 19801. MasterCard Inc.
`
`resides in this judicial district and transacts business throughout the State of Delaware, including
`
`in this judicial district. Furthermore, by incorporating in the State of Delaware, MasterCard Inc.
`
`has availed itself of Delaware law.
`
`6.
`
`Defendant MasterCard International Incorporated is a corporation organized
`
`under the laws of the State of Delaware and maintains The Corporation Trust Company as its
`
`registered agent located at Corporation Trust Center, 1209 Orange Street, Wilmington, Delaware
`
`19801. MasterCard International Incorporated resides in this judicial district and transacts
`
`business throughout the State of Delaware, including in this judicial district. Furthermore, by
`
`incorporating in the State of Delaware, MasterCard International Incorporated has availed itself
`
`of Delaware law.
`
`7.
`
`MasterCard International Incorporated is a global payment solutions company
`
`that provides a variety of services in support of the payment programs of its customers.
`
`MasterCard International Incorporated is a wholly owned operating subsidiary of MasterCard
`
`Inc. and is doing business as “MasterCard Worldwide.”
`
`- 2 -
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`MasterCard, Exh. 1007, p. 2
`
`

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`Case 1:13-cv-00738-GMS Document 1 Filed 04/26/13 Page 3 of 29 PageID #: 3
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`
`
`8.
`
`Defendant Orbiscom Ltd. is a foreign entity organized under the laws of the
`
`country of Ireland with its principal place of business at Mountainview, Central Park,
`
`Leopardstown, Dublin, 18 Ireland.
`
`9.
`
`Orbiscom Ltd. is a wholly owned subsidiary of MasterCard Inc. and indirect
`
`subsidiary of MasterCard International Incorporated. Upon information and belief, Orbiscom
`
`Ltd. transacts business in the State of Delaware including this judicial district.
`
`10.
`
`Defendant Orbiscom Inc. is a corporation organized under the laws of the State of
`
`Delaware and maintains The Corporation Trust Company as its registered agent located at
`
`Corporation Trust Center, 1209 Orange Street, Wilmington, Delaware 19801. Defendant
`
`Orbiscom Inc. resides in this judicial district and transacts business throughout the State of
`
`Delaware, including this judicial district. Furthermore, by incorporating in the State of Delaware,
`
`Orbiscom Inc. has availed itself of Delaware law.
`
`11.
`
`Orbiscom Inc. is a leading payments solution software provider for payment
`
`industry participants in the United States. Upon information and belief, Orbiscom Inc. is the
`
`United States operating subsidiary of Orbiscom Ltd. and an indirect, wholly owned, subsidiary of
`
`MasterCard International Incorporated.
`
`12.
`
`Defendants MasterCard, Inc., MasterCard International Incorporated, Orbiscom
`
`Ltd. and Orbiscom Inc. are hereinafter collectively referred to as “MasterCard.”
`
`13. MasterCard provides the relevant functionality behind each of Citigroup’s and
`
`Discover’s accused services.
`
`14.
`
`Defendant Citigroup Inc. (“Citigroup”) is a corporation organized under the laws
`
`of the State of Delaware and maintains The Corporation Trust Company as its registered agent
`
`located at Corporation Trust Center, 1209 Orange Street, Wilmington, Delaware 19801.
`
`- 3 -
`
`MasterCard, Exh. 1007, p. 3
`
`

`

`Case 1:13-cv-00738-GMS Document 1 Filed 04/26/13 Page 4 of 29 PageID #: 4
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`
`
`Citigroup resides in this judicial district and transacts business throughout the State of Delaware,
`
`including this judicial district. Furthermore, by incorporating in the State of Delaware, Citigroup
`
`has availed itself of Delaware law. Citigroup has previously admitted that it is subject to personal
`
`jurisdiction in this judicial district.
`
`15.
`
`Defendant Discover Financial Services (“Discover”) is a corporation organized
`
`under the laws of the State of Delaware. Discover maintains The Corporation Trust Company as
`
`its registered agent at Corporation Trust Center, 1209 Orange Street, Wilmington, Delaware
`
`19801. Discover resides in this judicial district and transacts business throughout the State of
`
`Delaware, including this judicial district. Furthermore, by incorporating in the State of Delaware,
`
`Discover has availed itself of Delaware law. Discover has previously admitted that this Court has
`
`personal jurisdiction over Discover.
`
`16.
`
`Defendant Xerxes Engineering LLC is a limited liability company organized
`
`under the laws of the State of Minnesota with a registered office at 7735 Xerxes Avenue S.,
`
`Minneapolis, Minnesota 55423. Upon information and belief, Xerxes transacts business
`
`throughout the United States including the State of Delaware and this judicial district through at
`
`least its offering of mobile phone and tablet applications.
`
`JURISDICTION AND VENUE
`
`17.
`
`This Court has exclusive jurisdiction over the subject matter of the Complaint
`
`under 28 U.S.C. §§ 1331 and 1338(a).
`
`18.
`
`Personal jurisdiction over Defendants is proper in this Court. Venue in this
`
`judicial district is proper under 28 U.S.C. §§ 1391(b), (c) and/or 1400(b).
`
`
`
`
`
`- 4 -
`
`MasterCard, Exh. 1007, p. 4
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`

`

`Case 1:13-cv-00738-GMS Document 1 Filed 04/26/13 Page 5 of 29 PageID #: 5
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`
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`DEFENDANTS’ ACCUSED SERVICES
`
`19. MasterCard markets and sells a payment solution known as the MasterCard
`
`inControl technology. One aspect of inControl involves limited use account numbers.
`
`20.
`
`The inControl technology is offered for sale to and/or employed by various
`
`financial institutions in the United States and elsewhere.
`
`21. MasterCard also offers a technology known as the Controlled Payment Numbers
`
`service (“CPN Technology”). The CPN Technology is one of the features currently marketed and
`
`sold by MasterCard under the name “inControl.” MasterCard has marketed and sold its CPN
`
`Technology to financial institutions in the United States.
`
`22.
`
`One feature of the CPN Technology involves limited use, or virtual card numbers
`
`for making payments.
`
`23.
`
`24.
`
`Citigroup offers a service known as the Virtual Account Numbers service.
`
`Citigroup’s Virtual Account Numbers service is based on and makes use of
`
`MasterCard’s CPN Technology.
`
`25.
`
`In fact, Citigroup’s Virtual Account Numbers service was solely provided by
`
`MasterCard and uses the CPN Technology.
`
`26.
`
`27.
`
`Discover offers a service known as the Secure Online Account Numbers service.
`
`Discover’s Secure Online Account Numbers service is based on and makes use of
`
`MasterCard’s CPN Technology.
`
`28.
`
`In fact, Discover’s Secure Online Account Numbers service was solely provided
`
`by MasterCard and uses the CPN Technology.
`
`29. MasterCard is obligated to indemnify Citigroup and Discover against allegations
`
`of patent infringement based on their use of the CPN Technology.
`
`- 5 -
`
`MasterCard, Exh. 1007, p. 5
`
`

`

`Case 1:13-cv-00738-GMS Document 1 Filed 04/26/13 Page 6 of 29 PageID #: 6
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`
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`30.
`
`In other patent infringement actions relating to the CPN Technology, MasterCard
`
`received indemnification demands from Citigroup and Discover and reaffirmed that it would
`
`indemnify each.
`
`31.
`
`Xerxes offers a mobile application known as the Virtual Card App for the iPadTM,
`
`iPhone® and iPod Touch®.
`
`32.
`
`Xerxes’ Virtual Card App communicates with Citigroup to allow a user to access
`
`Citigroup’s Virtual Account Numbers service via a mobile device.
`
`33.
`
`Xerxes’ Virtual Card App communicates with Discover to allow a user to access
`
`Discover’s Secure Online Account Numbers service via a mobile device.
`
`NOTICE, KNOWLEDGE AND WILLFULNESS
`
`MASTERCARD
`
`34.
`
`On or about March 10, 2011, a representative for D’Agostino sent an email to
`
`MasterCard offering to license D’Agostino’s patent rights (the “Acquisition Email”).
`
`35. MasterCard representatives – Colm Dobbyn, Garry Lyons and Ed McLaughlin –
`
`received the Acquisition Email.
`
`36.
`
`Colm Dobbyn is and/or was the Group Executive, Associate General Counsel and
`
`Head of Intellectual Property at MasterCard International Incorporated.
`
`37.
`
`Garry Lyons is and/or was the Chief Innovation Officer at MasterCard
`
`International Incorporated.
`
`38.
`
`Ed McLaughlin is and/or was the Chief Emerging Payments Officer at
`
`MasterCard International Incorporated.
`
`39.
`
`The Acquisition Email identified the ‘486 Patent as well as patent application
`
`Serial No. 12/902,399, which ultimately issued as the ‘988 Patent (“the ‘988 Application”).
`
`- 6 -
`
`MasterCard, Exh. 1007, p. 6
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`

`

`Case 1:13-cv-00738-GMS Document 1 Filed 04/26/13 Page 7 of 29 PageID #: 7
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`
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`40.
`
`Accordingly, MasterCard had notice of the ‘486 Patent at least as early as March
`
`10, 2011, the date the Acquisition Email was received.
`
`41.
`
`42.
`
`The ‘988 Application was published on March 24, 2011 as US 2011/0071945.
`
`The invention as claimed in the ‘988 Patent is substantially identical to the
`
`invention as claimed in the published ‘988 Application.
`
`43.
`
`Accordingly, MasterCard has had notice of the ‘988 Patent and its infringement
`
`thereof since prior to March 24, 2011, the date it was published by the Patent Office.
`
`44.
`
`Accordingly, MasterCard knew or reasonably should have known that its service
`
`offerings likely infringed the claims of the ‘988 Application and, ultimately, the ‘988 Patent.
`
`45. MasterCard also knew or reasonably should have known that its service offerings
`
`likely infringed the claims of the ‘486 Patent.
`
`46.
`
`Upon information and belief, MasterCard had notice of the ‘486 Patent and its
`
`infringement thereof since at least as early as November 23, 2010, the date it was issued by the
`
`Patent Office.
`
`47.
`
`Additionally, MasterCard (at least through its affiliates) has been aware of
`
`D’Agostino and his patent rights for over one decade.
`
`48.
`
`On October 25, 2002, attorneys for Orbiscom sent a letter to D’Agostino
`
`regarding United States Patent No. 6,324,526 (from which the ‘486 Patent and ‘988 Patent claim
`
`priority) (“the ‘526 Patent”).
`
`49.
`
`Additionally, Orbis Patents Ltd., an affiliate of MasterCard, has identified
`
`multiple D’Agostino patents during prosecution of its own patent rights relating to similar
`
`technologies. In fact, Orbis Patents Ltd. has identified at least three D’Agostino patents – the
`
`‘526 Patent; Publication No. US 2002/0120587; and Publication No. US 2006/0031161, the
`
`- 7 -
`
`MasterCard, Exh. 1007, p. 7
`
`

`

`Case 1:13-cv-00738-GMS Document 1 Filed 04/26/13 Page 8 of 29 PageID #: 8
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`
`
`publication that ultimately issued as the ‘486 Patent (from which the ‘988 Patent claims priority)
`
`– during prosecution of at least the following patents to which it claims rights: United States
`
`Patent Nos. 7,136,835; 7,433,845; 7,567,934; 7,571,142; 7,593,896; and 7,895,122.
`
`50. Moreover, on or about April 11, 2012, MasterCard (through Charles F. Wieland
`
`of Buchanan Ingersoll & Rooney PC) contacted a representative of D’Agostino via telephone
`
`and stated that, unless D’Agostino was willing to grant a license at a value of “five figures” (with
`
`a potential for reaching six figures), MasterCard intended to pursue reexamination of
`
`D’Agostino’s patent rights.
`
`51.
`
`On or about September 12, 2012, MasterCard (through Wieland) filed an 83-page
`
`Request for Ex Parte Reexamination of the ‘988 Patent.
`
`52.
`
`In the Request for Ex Parte Reexamination of the ‘988 Patent, MasterCard
`
`(through Wieland) contended: “Mr. D’Agostino did not explain the relevance of any of the
`
`documents cited [in an Information Disclosure Statement], point to any as particularly relevant,
`
`did not identify those previously relied upon, nor did he point out that the claims of the ‘526
`
`patent were cancelled in light of prior art during reexamination over, among other patents, the
`
`Cohen patent relied upon therein.”
`
`53.
`
`To the contrary, in the file wrapper of the ‘486 Patent (to which the ‘988 Patent
`
`claims priority as a continuation thereof), D’Agostino specifically stated: “As examiner
`
`requested, applicant points out the following with regard to the previously filed information
`
`disclosure statements. In view of the now completed Ex parte reexamination of U.S. patent
`
`6,324,526 which is the grandparent of this application, applicant cites the following references[:]
`
`U.S. Patent No. 6,422,462 to Cohen; U.S. Patent No. 5,826,243 to Musmanno; [and] U.S. Patent
`
`No. 6,298,335 to Burnstein.”
`
`- 8 -
`
`MasterCard, Exh. 1007, p. 8
`
`

`

`Case 1:13-cv-00738-GMS Document 1 Filed 04/26/13 Page 9 of 29 PageID #: 9
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`
`
`Patent.
`
`54.
`
`Notably, the examiner of the ‘486 Patent also examined the continuation ‘988
`
`55.
`
`On or about December 6, 2012, the Patent Office entered an Order Denying
`
`Request for Ex Parte Reexamination stating: “No substantial question of patentability affecting
`
`claims 1-38 of US Patent 8,036,988 is raised by the present request for ex parte reexamination
`
`and the prior art cited therein.”
`
`56.
`
`Undeterred, on or about January 7, 2013, MasterCard (through Wieland) filed a
`
`Petition for Review of the Order Denying Request for Ex Parte Reexamination.
`
`57.
`
`Accordingly, MasterCard’s infringement has been and continues to be willful and
`
`with complete disregard for the rights of D’Agostino.
`
`CITIGROUP
`
`58.
`
`On or about March 10, 2011, a representative for D’Agostino sent the Acquisition
`
`Email to Citigroup.
`
`59.
`
`Accordingly, Citigroup had notice of the ‘486 Patent at least as early as March 10,
`
`2011, the date the Acquisition Email was received.
`
`60.
`
`Likewise, Citigroup had notice of the ‘988 Patent and its infringement thereof
`
`since prior to March 24, 2011, the date it was published by the Patent Office.
`
`61.
`
`Citigroup knew or reasonably should have known that its service offerings likely
`
`infringed the claims of the ‘988 Application and, ultimately, the ‘988 Patent.
`
`62.
`
`Citigroup also knew or reasonably should have known that its service offerings
`
`likely infringed the claims of the ‘486 Patent.
`
`63.
`
`Citigroup’s infringement has been and continues to be willful and with complete
`
`disregard for the rights of D’Agostino.
`
`- 9 -
`
`MasterCard, Exh. 1007, p. 9
`
`

`

`Case 1:13-cv-00738-GMS Document 1 Filed 04/26/13 Page 10 of 29 PageID #: 10
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`
`
`64.
`
`On or about March 10, 2011, a representative for D’Agostino sent the Acquisition
`
`DISCOVER
`
`Email to Discover.
`
`65.
`
`Accordingly, Discover had notice of the ‘486 Patent at least as early as March 10,
`
`2011, the date the Acquisition Email was received.
`
`66.
`
`Likewise, Discover had notice of the ‘988 Patent and its infringement thereof
`
`since prior to March 24, 2011, the date it was published by the Patent Office.
`
`67.
`
`Discover knew or reasonably should have known that its service offerings likely
`
`infringed the claims of the ‘988 Application and, ultimately, the ‘988 Patent.
`
`68.
`
`Discover also knew or reasonably should have known that its service offerings
`
`likely infringed the claims of the ‘486 Patent.
`
`69.
`
`Discover’s infringement has been and continues to be willful and with complete
`
`disregard for the rights of D’Agostino.
`
`XERXES
`
`70.
`
`Xerxes will have had notice of the ‘988 Patent and the ‘486 Patent and its
`
`infringement thereof at least as early as the filing of this Complaint.
`
`71.
`
`Accordingly, Xerxes’ continued infringement from the filing of this Complaint
`
`will be willful and with disregard for the rights of D’Agostino.
`
`72.
`
`To the extent required by law, D’Agostino has complied with the provisions of 35
`
`U.S.C. § 287.
`
`
`
`
`
`
`
`- 10 -
`
`MasterCard, Exh. 1007, p. 10
`
`

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`Case 1:13-cv-00738-GMS Document 1 Filed 04/26/13 Page 11 of 29 PageID #: 11
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`
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`COUNT I – PATENT INFRINGEMENT
`UNITED STATES PATENT NO. 8,036,988
`
`73.
`
`D’Agostino realleges and incorporates by reference paragraphs 1 through 72,
`
`inclusive, as though fully set forth herein.
`
`CITIGROUP
`
`74.
`
`Citigroup has and continues to directly infringe at least independent claim 21 of
`
`the ‘988 Patent through the manufacture, use, offer for sale and/or sale of its Virtual Account
`
`Numbers service, other services that utilize MasterCard’s CPN Technology, and/or other
`
`services that operate in the same or similar manner (the “Citigroup Accused Services”).
`
`75.
`
`Particularly, the Citigroup Accused Services provide a method for implementing a
`
`system for performing secure credit card purchases.
`
`76.
`
`In relation to its provision of the Citigroup Accused Services, Citigroup receives
`
`account information from an account holder identifying an account that is used to make credit
`
`card purchases.
`
`77.
`
`In relation to its provision of the Citigroup Accused Services, Citigroup receives a
`
`request from an account holder for a transaction code to make a purchase wherein the purchase is
`
`at least limited to a single merchant.
`
`78.
`
`In relation to its provision of the Citigroup Accused Services, Citigroup generates
`
`a transaction code to make a purchase.
`
`79.
`
`In relation to its provision of the Citigroup Accused Services, Citigroup
`
`communicates a generated transaction code to an account holder.
`
`80.
`
`In relation to its provision of the Citigroup Accused Services, Citigroup receives a
`
`request to authorize payment for a purchase using a generated transaction code.
`
`- 11 -
`
`MasterCard, Exh. 1007, p. 11
`
`

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`Case 1:13-cv-00738-GMS Document 1 Filed 04/26/13 Page 12 of 29 PageID #: 12
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`
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`81.
`
`In relation to its provision of the Citigroup Accused Services, Citigroup
`
`authorizes payment for a purchase.
`
`82.
`
`Citigroup’s direct infringement as described above has injured and will continue
`
`to injure D’Agostino as long as such infringement continues. D’Agostino is entitled to recover
`
`damages adequate to compensate it for such infringement, but in no event less than a reasonable
`
`royalty.
`
`DISCOVER
`
`83.
`
`Discover has and continues to directly infringe at least independent claim 21 of
`
`the ‘988 Patent through the manufacture, use, offer for sale and/or sale of its Secure Online
`
`Account Numbers service, other services that utilize MasterCard’s CPN Technology, and/or
`
`other services that operate in the same or similar manner (the “Discover Accused Services”).
`
`84.
`
`Particularly, the Discover Accused Services provide a method for implementing a
`
`system for performing secure credit card purchases.
`
`85.
`
`In relation to its provision of the Discover Accused Services, Discover receives
`
`account information from an account holder identifying an account that is used to make credit
`
`card purchases.
`
`86.
`
`In relation to its provision of the Discover Accused Services, Discover receives a
`
`request from an account holder for a transaction code to make a purchase wherein the purchase is
`
`at least limited to a single merchant.
`
`87.
`
`In relation to its provision of the Discover Accused Services, Discover generates a
`
`transaction code to make a purchase.
`
`88.
`
`In relation to its provision of the Discover Accused Services, Discover
`
`communicates a generated transaction code to an account holder.
`
`- 12 -
`
`MasterCard, Exh. 1007, p. 12
`
`

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`Case 1:13-cv-00738-GMS Document 1 Filed 04/26/13 Page 13 of 29 PageID #: 13
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`
`
`89.
`
`In relation to its provision of the Discover Accused Services, Discover receives a
`
`request to authorize payment for a purchase using a generated transaction code.
`
`90.
`
`In relation to its provision of the Discover Accused Services, Discover authorizes
`
`payment for a purchase.
`
`91.
`
`Discover’s direct infringement as described above has injured and will continue to
`
`injure D’Agostino as long as such infringement continues. D’Agostino is entitled to recover
`
`damages adequate to compensate it for such infringement, but in no event less than a reasonable
`
`royalty.
`
`MASTERCARD
`
`92. MasterCard has and continues to indirectly infringe at least independent claim 21
`
`of the ‘988 Patent by inducing and/or contributing to others’ direct infringement through their
`
`use of services that are based on and make use of MasterCard’s CPN Technology. The direct
`
`infringers of the ‘988 Patent include at least Citigroup and Discover.
`
`93.
`
`As described above, MasterCard has had notice of the ‘988 Patent and its
`
`infringement thereof since prior to March 24, 2011, the publication date of the ‘988 Patent.
`
`94. MasterCard provides advertising, instructions and support services with the
`
`specific intent that the Citigroup Accused Services will be used in a manner that infringes the
`
`‘988 Patent. At a minimum, MasterCard knew or should have known that its activities would
`
`lead to infringement of the ‘988 Patent.
`
`95.
`
`As described above, Citigroup does, in fact, perform the steps of claim 21 of the
`
`‘988 Patent.
`
`96. MasterCard also provides advertising, instructions and support services with the
`
`specific intent that the Discover Accused Services will be used in a manner that infringes the
`
`- 13 -
`
`MasterCard, Exh. 1007, p. 13
`
`

`

`Case 1:13-cv-00738-GMS Document 1 Filed 04/26/13 Page 14 of 29 PageID #: 14
`
`
`
`‘988 Patent. At a minimum, MasterCard knew or should have known that its activities would
`
`lead to infringement of the ‘988 Patent.
`
`97.
`
`As described above, Discover does, in fact, perform the steps of claim 21 of the
`
`‘988 Patent.
`
`98.
`
`Upon information and belief, MasterCard’s CPN Technology, as integrated with
`
`Citigroup’s Accused Services, is unsuited for any commercial non-infringing use.
`
`99. MasterCard knew or reasonably should have known that its CPN Technology, as
`
`integrated with Citigroup’s Accused Services, was especially made for use in an infringement of
`
`the ‘988 Patent.
`
`100. Upon information and belief, MasterCard’s CPN Technology, as integrated with
`
`Discover’s Accused Services, is unsuited for any commercial non-infringing use.
`
`101. MasterCard knew or reasonably should have known that its CPN Technology, as
`
`integrated with Discover’s Accused Services, was especially made for use in an infringement of
`
`the ‘988 Patent.
`
`102. MasterCard’s indirect infringement as described above has injured and will
`
`continue to injure D’Agostino as long as such infringement continues. D’Agostino is entitled to
`
`recover damages adequate to compensate it for such infringement, but in no event less than a
`
`reasonable royalty.
`
`XERXES
`
`103. Xerxes has and continues to indirectly infringe at least claim 21 of the ‘988 Patent
`
`by inducing and/or contributing to others’ direct infringement through their use of services that
`
`interact with Xerxes’ Virtual Card App. The direct infringers of the ‘988 Patent include at least
`
`Citigroup and Discover.
`
`- 14 -
`
`MasterCard, Exh. 1007, p. 14
`
`

`

`Case 1:13-cv-00738-GMS Document 1 Filed 04/26/13 Page 15 of 29 PageID #: 15
`
`
`
`104. Xerxes will have had notice of the ‘988 Patent and its infringement thereof since
`
`at least the filing of this Complaint.
`
`105. Xerxes provides advertising and instructions about the infringing uses of its
`
`Virtual Card App with the specific intent that the Citigroup Accused Services will be used in a
`
`manner that infringes the ‘988 Patent. At a minimum, as of the filing of this Complaint, Xerxes
`
`knows or should know that its activities will lead to infringement of the ‘988 Patent.
`
`106. Citigroup performs the steps of claim 21 of the ‘988 Patent when Xerxes’ Virtual
`
`Card App is used to to generate limited use credit card numbers from a Citigroup account.
`
`107. Xerxes provides advertising and instructions about the infringing uses of its
`
`Virtual Card App with the specific intent that the Discover Accused Services will be used in a
`
`manner that infringes the ‘988 Patent. At a minimum, as of the filing of this Complaint, Xerxes
`
`knows or should know that its activities will lead to infringement of the ‘988 Patent.
`
`108. Discover performs the steps of claim 21 of the ‘988 Patent when its customers use
`
`Xerxes’ Virtual Card App to generate limited use credit card numbers from a Discover account.
`
`109. Upon information and belief, Xerxes’ Virtual Card App, as integrated with
`
`Citigroup’s Accused Services, is unsuited for any commercial non-infringing use.
`
`110. Xerxes now knows or reasonably should know that its Virtual Card App, as
`
`integrated with Citigroup’s Accused Services, is especially made for use in an infringement of
`
`the ‘988 Patent.
`
`111. Upon information and belief, Xerxes’ Virtual Card App, as integrated with
`
`Discover’s Accused Services, is unsuited for any commercial non-infringing use.
`
`- 15 -
`
`MasterCard, Exh. 1007, p. 15
`
`

`

`Case 1:13-cv-00738-GMS Document 1 Filed 04/26/13 Page 16 of 29 PageID #: 16
`
`
`
`112. Xerxes now knows or should reasonably know that its Virtual Card App, as
`
`integrated with Discover’s Accused Services, is especially made for use in an infringement of the
`
`‘988 Patent.
`
`113. Xerxes’s indirect infringement as described above has injured and will continue to
`
`injure D’Agostino as long as such infringement continues. D’Agostino is entitled to recover
`
`damages adequate to compensate it for such infringement, but in no event less than a reasonable
`
`royalty.
`
`COUNT II – PATENT INFRINGEMENT
`UNITED STATES PATENT NO. 7,840,486
`
`114. D’Agostino realleges and incorporates by reference paragraphs 1 through 72,
`
`inclusive, as though fully set forth herein.
`
`CITIGROUP AND MASTERCARD
`
`115. MasterCard, Citigroup and their respective customers undertake activity that
`
`results in the infringement of at least independent claim 1 of the ‘486 Patent in connection with
`
`Citigroup’s Accused Services that integrate with MasterCard’s CPN Technology.
`
`116. Particularly, the Citigroup Accused Services provide a method of performing
`
`secure credit card purchases.
`
`117.
`
`In relation to Citigroup’s provision of the Citigroup Accused Services,
`
`Citigroup’s customers contact Citigroup to make credit card purchases.
`
`118.
`
`In relation to Citigroup’s provision of the Citigroup Accused Services,
`
`Citigroup’s customers supply Citigroup with at least account identification data of said
`
`customers’ accounts.
`
`- 16 -
`
`MasterCard, Exh. 1007, p. 16
`
`

`

`Case 1:13-cv-00738-GMS Document 1 Filed 04/26/13 Page 17 of 29 PageID #: 17
`
`
`
`119.
`
`In relation to Citigroup’s provision of the Citigroup Accused Services, Citigroup
`
`defines a payment category including at least limiting purchases to a single merchant for at least
`
`one transaction.
`
`120.
`
`In relation to Citigroup’s provision of the Citigroup Accused Services,
`
`Citigroup’s customers designate said payment category.
`
`121.
`
`In relation to Citigroup’s provision of the Citigroup Accused Services, Citigroup
`
`generates a transaction code by a processing computer.
`
`122.
`
`In relation to Citigroup’s provision of the Citigroup Accused Services,
`
`Citigroup’s customers communicate said transaction code to a merchant to consummate a
`
`purchase.
`
`123.
`
`In relation to Citigroup’s provision of the Citigroup Accused Services, Citigroup
`
`verifies that said defined purchase parameters are within said designated payment category.
`
`124.
`
`In relation to Citigroup’s provision of the Citigroup Accused Services, Citigroup
`
`provides authorization for said purchase.
`
`125. MasterCard has and continues to indirectly infringe at least independent claim 1
`
`of the ‘486 Patent by inducing others to perform the steps of the method claim through use of
`
`Citigroup’s Accused Services. The parties that jointly perform each of the steps of at least claim
`
`1 are Citigroup and Citigroup’s customers.
`
`126. As described above, MasterCard has had notice of the ‘486 Patent and its
`
`infringement thereof since at least as early as March 10, 2011, if not as of November 23, 2010.
`
`127. MasterCard provides advertising, instructions and support services with the
`
`specific intent that Citigroup’s Accused Services will be used in a manner that infringes the ‘486
`
`- 17 -
`
`MasterCard, Exh. 1007, p. 17
`
`

`

`Case 1:13-cv-00738-GMS Document 1 Filed 04/26/13 Page 18 of 29 PageID #: 18
`
`
`
`Patent. At a minimum, MasterCard knew or should have known that its activities would lead to
`
`infringement of the ‘486 Patent.
`
`128. As described above, Citigroup and its customers perform the steps of claim 1 of
`
`the ‘486 Patent.
`
`129. Upon information and belief, MasterCard’s CPN Technology, as integrated with
`
`Citigroup’s Accused Services, is unsuited for any commercial non-infringing use.
`
`130. MasterCard knew or reasonably should have known that its CPN Technology, as
`
`integrated with Citigroup’s Accused Services, was especially made for use in an infringement of
`
`the ‘486 Patent.
`
`131. MasterCard’s indirect infringement as described above has injured and will
`
`continue to injure D’Agostino as long as such infringement continues. D’Agostino is entitled to
`
`recover damages adequate to compensate it for such infringement, but in no event less than a
`
`reasonable royalty.
`
`132. Citigroup has and continues to indirectly infringe at least independent claim 1 of
`
`the ‘486 Patent by inducing others to perform those steps of the method claim that it does not
`
`perform through use of Citigroup’s Accused Services. The parties that jointly perform each of
`
`the steps of at least claim 1 are Citigroup and Citigroup’s customers.
`
`133. As described above, Citigroup has had notice of the ‘486 Patent and its
`
`infringement thereof since at least as early as March 10, 2011.
`
`134. Citigroup provides advertising, instructions and support services with the specific
`
`intent that Citigroup’s Accused Services will be used in a manner that infringes the ‘486 Patent.
`
`At a minimum, Citigroup knew or should have known that its activities would lead to
`
`infringement of the ‘486 Patent.
`
`- 18 -
`
`MasterCard, Exh. 1007, p. 18
`
`

`

`Case 1:13-cv-00738-GMS Document 1 Filed 04/26/13 Page 19 of 29 PageID #: 19
`
`
`
`135. As described above, Citigroup’s customers perform the steps of claim 1 of the
`
`‘486 Patent that Citigroup does not perform itself.
`
`136. Upon information and belief, Citigroup’s Accused Services are unsuited for any
`
`commercial non-infringing use.
`
`137. Citigroup knew or reasonably should have known that Citigroup’s Accused
`
`Services, were especially made for use in an infringement of the ‘486 Patent.
`
`138. Citigroup’s indirect infringement as described above has injured and will continue
`
`to injure D’Agostino as long as such infringement continues. D’Agostino is entitled to recover
`
`damages adequate to compensate i

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