throbber
Case 1:13-cv-00417-HSO-RHW Document 1 Filed 11/01/13 Page 1 of 12
`Case 1:13-cv-OO417-HSO-RHW Document 1 Filed 11/01/13 Page 1 of 12
`
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE SOUTHERN DISTRICT OF MISSISSIP.
`SOUTHERN DIVISION
`
`
`
`'
`
`) )
`
`SECUREBUY, LLC
`
`Plaintiff,
`
`v.
`
`CARDINALCOMMERCE
`CORPORATION
`
`)
`.
`l
`)Civil Action No. i .i.$(:vLi irl ”80’an
`)
`)
`)
`
`JURY TRIAL DEMANDED
`
`) )
`
`) )
`
`Defendant.
`
`SECUREBUY, LLC’S COMPLAINT FOR DECLARATORY JUDGMENT
`
`Plaintiff, SecureBuy, LLC (“SecureBuy”), by and through its undersigned counsel, files
`
`this Complaint for a declaratory judgment against Defendant, CardinalCommerce Corporation
`
`(“CardinalComrnerce”), and alleges as follows:
`
`NATURE OF ACTION
`
`1.
`
`This is an action for a declaratory judgment that SecureBuy does not infringe any
`
`valid claim of United States Patent Nos. 8,140,429 (“the ‘429 Patent”), 7,051,002 (“the “002
`
`Patent”), and 7,693,783 (“the ‘783 Patent”) (collectively “the 3-D Secure Patents”), and for a
`
`declaratory judgment that the claims of the 3-D Secure Patents are invalid.
`
`2.
`
`3.
`
`4.
`
`A true and correct copy of the ‘429 Patent is attached hereto as Exhibit A.
`
`A true and correct copy of the ‘002 Patth is attached hereto as Exhibit B.
`
`A true and correct copy of the “783 Patent is attached hereto as Exhibit C.
`
`

`

`
`Case 1:13-cv-00417-HSO-RHW Document 1 Filed 11/01/13 Page 2 of 12
`Case 1:13-cv-OO417-HSO-RHW Document 1 Filed 11/01/13 Page 2 of 12
`
`THE PARTIES
`
`5.
`
`Plaintiff, SecureBuy, is a limited liability corporation organized and existing
`
`under the laws of the state of Mississippi, with its principal place of business located at 605
`
`Crescent Blvd, Suite 200, Ridgeland, MS 39157. SecureBuy is a wholly owned subsidiary of
`
`SignatureLink, Inc.
`
`6.
`
`On information and belief, CardinalCommerce, is a Delaware corporation, with
`
`its principal place of business located at 61 19 Heisley Rd., Mentor, OH 44060.
`
`7.
`
`On information and belief, the ‘429 Patent was assigned to CardinalCommerce
`
`from Chandra Balasubramanian, Francis Sherwin, and Michael A. Keresman, III on March 10,
`
`2010.
`
`8.
`
`On information and belief, the “002 Patent was assigned to CardinalCommerce
`
`from Chandra Balasubramanian, Francis Sherwin, and Michael A. Keresman, III on June 12,
`
`2003.
`
`9.
`
`On information and belief, the ‘783 Patent was assigned to CardinalCommerce
`
`from Chandra Balasubramanian, Francis Sherwin, and Michael A. Keresman, III on August 4,
`
`2006.
`
`10.
`
`On information and belief, CardinalCommerce advertises its e-commerce
`
`payment authentication platforms and services on its website to merchants in this District at
`
`http://www.cardinalcommerce.com/about/. These services include payment authentication for,
`
`inter alia, e-commerce transactions.
`
`1 1.
`
`On information and belief, CardinalCommerce provides a “Contact Us” form on
`
`its website where it solicits merchants 1 including those in this District — to request more
`
`information about CardinalCommerce’s platforms and services.
`
`

`

`Case 1:13-cv-00417-HSO-RHW Document 1 Filed 11/01/13 Page 3 of 12
`Case 1:13-cv-OO417-HSO-RHW Document 1 Filed 11/01/13 Page 3 of 12
`
`12.
`
`On information and belief, CardinalCommerce provides services to merchants
`
`who are located in and/or conduct substantial business in this District. These merchants include,
`
`inter alia, Travelocity, Dell, Sharper Image, Yahoo! Travel, United, Xerox, Western Union,
`
`SkyMall, Hotwire, Ritz Interactive, TigerDirect, NewEgg, Symantec, Pulse EFT, Chase
`
`Paymentech, First Data, FNBO, PayPal, and Google Wallet, which provide e-commerce and/or
`
`financial services to individuals in this District.
`
`13.
`
`On information and belief, each of CardinalCommerce’s merchants pass their
`
`online transactions initiated in this District to CardinalCommerce’s platform and servers for
`
`authentication services. Accordingly, CardinalCommerce provides authentication services to
`
`customers located in this District who engage in online transactions with CardinalCommerce’s
`
`merchants.
`
`JURISDICTION AND VENUE
`
`14.
`
`This action arises under the patent laws of the United States, Title 35 of the
`
`United States Code (35 U.S.C. § 1, et. seq), and under the Federal Declaratory Judgment Act {28
`
`U.S.C. §§ 2201 and 2202).
`
`15.
`
`This Court has subject matter jurisdiction over this action pursuant to 28 U.S.C.
`
`§§ 1331 (federal question) and 1338(a) (action arising under an Act of Congress relating to
`
`patents).
`
`16.
`
`This Court has personal jurisdiction over CardinalCommerce because it conducts
`
`and solicits substantial and continuous business within this District so as to make personal
`
`jurisdiction proper in this Court.
`
`17.
`
`Venue is proper in this District pursuant to 28 U.S.C. §§ 1391(b), (c), and
`
`1400(b).
`
`

`

`Case 1:13-cv-00417-HSO-RHW Document 1 Filed 11/01/13 Page 4 of 12
`Case 1:13-cv-OO417-HSO-RHW Document 1 Filed 11/01/13 Page 4 of 12
`
`THE PRESENCE OF AN ACTUAL CONTROVERSY
`
`18.
`
`In or about September and October 2013, Michael A. Keresman, Chief Executive
`
`Officer of CardinalCommerce, notified Greg Wooten, Chief Executive Officer of SecureBuy,
`
`that CardinalCommerce believes that one or more of SecureBuy’s products, including SecureBuy
`
`2.0, infringe CardinalCommerce’s 3-D Secure Patents. Mr. Keresman further provided Mr.
`
`Wooten with a straw man licensing proposal between Cardinal Commerce and SecureBuy for the
`
`3-D Secure Patents that expires at the end of October 2013.
`
`19.
`
`By virtue of CardinalCommerce’s actions and licensing proposal that expires at
`
`the end of October 2013, SecureBuy faces an imminent threat of possible infringement liability
`
`that may potentially cripple its business at least with respect to sales of its SecureBuy 2.0
`
`platform and services. Accordingly, there is a substantial controversy of sufficient immediacy
`
`and reality between SecureBuy and CardinalCommerce to warrant issuance of a declaratory
`
`judgment.
`
`20.
`
`SecureBuy denies that it infringes any valid claim of the 3-D Secure Patents.
`
`SecureBuy now seeks a declaratory judgment that it does not infringe any valid claim of the 3-D
`
`Secure Patents.
`
`21.
`
`SecureBuy also seeks a declaratory judgment that one or more of the claims of the
`
`3-D Secure Patents are invalid for at least the reason that the claims of the 3-D Secure Patents are
`
`anticipated by prior art.
`
`1.0M
`
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT on THE ‘429 PATENT
`
`22.
`
`The allegations of paragraphs 1-21 are incorporated by reference as if fully set
`
`forth herein.
`
`

`

`Case 1:13-cv-00417-HSO-RHW Document 1 Filed 11/01/13 Page 5 of 12
`Case 1:13-cv-OO417-HSO-RHW Document 1 Filed 11/01/13 Page 5 of 12
`
`23.
`
`SecureBuy’s products and systems, including its SecureBuy 2.0 platform, do not
`
`infringe any valid claim of the ‘429 Patent, including but not limited to claim 1 identified by
`
`CardinalCommerce in its presentation of October 10, 2013.
`
`24.
`
`SecureBuy has not contributed to and is not contributing to infringement of any
`
`claims of the ‘429 Patent, including but not limited to claim I, by others.
`
`25.
`
`SecureBuy has not induced and is not inducing infringement of any claims of the
`
`‘429 Patent, including but not limited to claim 1.
`
`26.
`
`An actual controversy exists between SecureBuy and CardinalCommerce as to
`
`whether or not SecureBuy has infringed, or is infringing, the ‘429 Patent, has contributed to
`
`infringement or is contributing to infringement of the “429 Patent, and has induced infringement
`
`or is inducing infringement of the ‘429 Patent.
`
`27.
`
`The controversy is such that, pursuant to Federal Rule of Civil Procedure 57 and
`
`28 U.S.C. § 2201 et seq., SecureBuy is entitled to a declaration, in the form of a judgment, that
`
`by its activities SecureBuy has not infringed and is not infringing any valid and enforceable
`
`claim of the ‘429 Patent, has not contributed to infringement and is not contributing to
`
`infringement of the “429 Patent, andfor has not induced infringement and is not inducing
`
`infringement of the “429 Patent. Such a determination and declaration is necessary and
`
`appropriate at this time.
`
`we
`
`DECLARATORY JUDGMENT 0F INVALIDITY OF THE ‘429 PATENT
`
`28.
`
`The allegations of paragraphs 1—27 are incorporated by reference as if fully set
`
`forth herein.
`
`

`

`
`Case 1:13-cv-00417-HSO-RHW Document 1 Filed 11/01/13 Page 6 of 12
`Case 1:13-cv-OO417-HSO-RHW Document 1 Filed 11/01/13 Page 6 of 12
`
`29.
`
`Based on the above-stated conduct, SecureBuy is informed and believes that
`
`CardinalCommerce contends that SecureBuy infringes one or more claims of the ‘429 Patent.
`
`30.
`
`SecureBuy denies that it infringes any valid and enforceable claim of the ‘429
`
`Patent, and avers that the assertions of infringement cannot be maintained consistently with
`
`statutory conditions of patentability and the statutory requirements for disclosure and claiming
`
`that must be satisfied for patent validity under at least one of 35 U.S.C. §§ 101 , 102, 103, and
`
`112.
`
`31.
`
`The claims of the “429 patent, including at least claim 1, are invalid under 35
`
`U.S.C. § 102 based on the prior art as of the applicable priority date.
`
`32.
`
`The claims of the ‘429 patent, including at least claim 1, is invalid under 35
`
`U.S.C. § 103 based on the prior art as of the applicable priority date.
`
`33.
`
`The claims of the ‘429 patent, including at least claim 1, are invalid under 35
`
`U.S.C. § 101 for lack of patentable subject matter based on the abstract nature of the claimed
`
`invention.
`
`34.
`
`The claims of the ‘429 patent, including at least claim 1, are invalid under 35
`
`U.S.C. § 1 12 for failure to meet the requirements for patent specifications, including but not
`
`limited to the failure to contain an adequate written description of the invention and for a failure
`
`to particularly point out and distinctly claim the subject matter which the applicant regards as his
`
`invention.
`
`35.
`
`Accordingly, an actual controversy exists between SecureBuy and
`
`CardinalCommerce as to the validity of the “429 Patent. The controversy is such that, pursuant
`
`to Federal Rules of Civil Procedure 57 and 28 U.S.C. § 2201 et seq, SecureBuy is entitled to a
`
`

`

`Case 1:13-cv-00417-HSO-RHW Document 1 Filed 11/01/13 Page 7 of 12
`Case 1:13-cv-OO417-HSO-RHW Document 1 Filed 11/01/13 Page 7 of 12
`
`declaration, in the form of a judgment, that the ‘429 Patent is invalid. Such a determination and
`
`declaration is necessary and appropriate at this time.
`
`COUNT III
`
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ‘002 PATENT
`
`36.
`
`The allegations of paragraphs 1-35 are incorporated by reference as if fully set
`
`forth herein.
`
`37'.
`
`SecureBuy’s products and systems, including its SecureBuy 2.0 platform, do not
`
`infringe any valid claim of the ‘002 Patent.
`
`38.
`
`SecureBuy has not contributed to and is not contributing to infringement of any
`
`claims of the ‘002 Patent by others.
`
`39.
`
`SecureBuy has not induced and is not inducing infringement of any claims of the
`
`‘002 Patent.
`
`40.
`
`An actual controversy exists between SecureBuy and CardinalCommerce as to
`
`whether or not SecureBuy has infringed, or is infringing, the ‘002 Patent, has contributed to
`
`infringement or is contributing to infringement of the ‘002 Patent, and has induced infringement
`
`or is inducing infringement of the “002 Patent.
`
`41.
`
`The controversy is such that, pursuant to Federal Rule of Civil Procedure 57 and
`
`28 U.S.C. § 2201 et seq., SecureBuy is entitled to a declaration, in the form of a judgment, that
`
`by its activities SecureBuy has not infringed and is not infringing any valid and enforceable
`
`claim of the ‘002 Patent, has not contributed to infringement and is not contributing to
`
`infringement of the ‘002 Patent, and/or has not induced infringement and is not inducing
`
`infringement of the ‘002 Patent. Such a determination and declaration is necessary and
`
`appropriate at this time.
`
`

`

`Case 1:13-cv-00417-HSO-RHW Document 1 Filed 11/01/13 Page 8 of 12
`Case 1:13-cv-OO417-HSO-RHW Document 1 Filed 11/01/13 Page 8 of 12
`
`COUNT IV
`
`DECLARATORY JUDGMENT 0F INVALIDITY OF THE ‘002 PATENT
`
`42.
`
`The allegations of paragraphs 1-41 are incorporated by reference as if fully set
`
`forth herein.
`
`43.
`
`Based on the above-stated conduct, SecureBuy is informed and believes that
`
`CardinalCommerce contends that SecureBuy infringes one or more claims of the ‘002 Patent.
`
`44.
`
`SecureBuy denies that it infringes any valid and enforceable claim of the ‘002
`
`Patent, and avers that the assertions of infringement cannot be maintained consistently with
`
`statutory conditions of patentability and the statutory requirements for disclosure and claiming
`
`that must be satisfied for patent validity under at least one of 35 U.S.C. §§ 101, 102, 103, and
`
`1 12.
`
`45.
`
`The claims of the ‘002 patent, including at least claim 1, are invalid under 35
`
`U.S.C. § 102 based on the prior art as of the applicable priority date.
`
`46.
`
`The claims of the ‘002 patent, including at least claim 1, is invalid under 35
`
`U.S.C. § 103 based on the prior art as of the applicable priority date.
`
`47.
`
`The claims of the ‘002 patent, including at least claim 1, are invalid under 35
`
`U.S.C. § 101 for lack of patentable subject matter based on the abstract nature of the claimed
`
`invenfion.
`
`48.
`
`The claims of the ‘002 patent, including at least claim 1, are invalid under 35
`
`U.S.C. § 112 for failure to meet the requirements for patent specifications, including but not
`
`limited to the failure to contain an adequate written description of the invention and for a failure
`
`to particularly point out and distinctly claim the subject matter which the applicant regards as his
`
`invention.
`
`

`

`
`Case 1:13-cv-00417-HSO-RHW Document 1 Filed 11/01/13 Page 9 of 12
`Case 1:13-cv-OO417-HSO-RHW Document 1 Filed 11/01/13 Page 9 of 12
`
`49.
`
`Accordingly, an actual controversy exists between SecureBuy and
`
`CardinalCommerce as to the validity of the ‘002 Patent. The controversy is such that, pursuant
`
`to Federal Rules of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., SecureBuy is entitled to a
`
`declaration, in the form of a judgment, that the “002 Patth is invalid. Such a determination and
`
`declaration is necessary and appropriate at this time.
`
`COUNT V
`
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ‘783 PATENT
`
`50.
`
`The allegations of paragraphs 1—49 are incorporated by reference as if fully set
`
`forth herein.
`
`51.
`
`SecureBuy’s products and systems, including its SecureBuy 2.0 platform, do not
`
`infringe any valid claim of the ‘783 Patent.
`
`52.
`
`SecureBuy has not contributed to and is not contributing to infringement of any
`
`claims of the ‘783 Patent by others.
`
`53.
`
`SecureBuy has not induced and is not inducing infringement of any claims of the
`
`“783 Patent.
`
`54.
`
`An actual controversy exists between SecureBuy and CardinalCommerce as to
`
`whether or not SecureBuy has infringed, or is infringing, the ‘783 Patent, has contributed to
`
`infringement or is contributing to infringement of the “783 Patent, and has induced infringement
`
`or is inducing infringement of the “7833 Patent.
`
`55.
`
`The controversy is such that, pursuant to Federal Rule of Civil Procedure 57 and
`
`28 U.S.C. § 2201 et seq., SecureBuy is entitled to a declaration, in the form of a judgment, that
`
`by its activities SecureBuy has not infringed and is not infringing any valid and enforceable
`
`claim of the ‘783 Patent, has not contributed to infringement and is not contributing to
`
`infringement of the ‘783 Patent, and/or has not induced infringement and is not inducing
`
`9
`
`

`

`
`Case 1:13-cv-00417-HSO-RHW Document 1 Filed 11/01/13 Page 10 of 12
`Case 1:13-cv-OO417—HSO-RHW Document 1 Filed 11/01/13 Page 10 of 12
`
`infringement of the ‘783 Patent. Such a determination and declaration is necessary and
`
`appropriate at this time.
`
`COUNT VI
`
`DECLARATORY JUDGMENT OF INVALIDITY OF THE ‘783 PATENT
`
`56.
`
`The allegations of paragraphs 1—55 are incorporated by reference as if fully set
`
`forth herein.
`
`57.
`
`Based on the above-stated conduct, SecureBuy is informed and believes that
`
`CardinalCommerce contends that SecureBuy infringes one or more claims of the “783 Patent.
`
`58.
`
`SecureBuy denies that it infringes any valid and enforceable claim of the ‘783
`
`Patent, and avers that the assertions of infringement cannot be maintained consistently with
`
`statutory conditions of patentability and the statutory requirements for disclosure and claiming
`
`that must be satisfied for patent validity under at least one of 35 U.S.C. §§ 101, 102, 103, and
`
`112.
`
`59.
`
`The claims of the ‘783 patent, including at least claim 1, are invalid under 35
`
`U.S.C. § 102 based on the prior art as of the applicable priority date.
`
`60.
`
`The claims of the ‘783 patent, including at least claim 1, is invalid under 35
`
`U.S.C. § 103 based on the prior art as of the applicable priority date.
`
`61.
`
`The claims of the ‘783 patent, including at least claim 1, are invalid under 35
`
`U.S.C. § 101 for lack of patentable subject matter based on the abstract nature of the claimed
`
`invention.
`
`62.
`
`The claims of the “783 patent, including at least claim 1, are invalid under 35
`
`U.S.C. § 112 for failure to meet the requirements for patent specifications, including but not
`
`limited to the failure to contain an adequate written description of the invention and for a failure
`
`10
`
`

`

`Case 1:13-cv-00417-HSO-RHW Document 1 Filed 11/01/13 Page 11 of 12
`Case 1:13-cv-OO417—HSO-RHW Document 1 Filed 11/01/13 Page 11 of 12
`
`to particularly point out and distinctly claim the subject matter which the applicant regards as his
`
`invention.
`
`63.
`
`Accordingly, an actual controversy exists between SecureBuy and
`
`CardinalCommerce as to the validity of the ‘783 Patent. The controversy is such that, pursuant
`
`to Federal Rules of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., SecureBuy is entitled to a
`
`declaration, in the form of a judgment, that the ‘783 Patent is invalid. Such a determination and
`
`declaration is necessary and appropriate at this time.
`
`PRAYER FOR RELIEF
`
`WHEREFORE, plaintiff prays that:
`
`A.
`
`The Court declare that SecureBuy’s systems and products do not infringe any
`
`valid claim of the ‘429 Patent;
`
`B.
`
`The Court declare that the claims of the ‘429 Patent are invalid under one or more
`
`0f35 U.S.C.§§ 101,102,103, and 112;
`
`C.
`
`The Court declare that SecureBuy’s systems and products do not infringe any
`
`valid claim of the “002 Patent;
`
`1).
`
`The Court declare that the claims of the ‘002 Patent are invalid under one or more
`
`cf35 U.S.C.§§101,102,103, and 112;
`
`E.
`
`The Court declare that SecureBuy’s systems and products do not infringe any
`
`valid claim of the ‘783 Patent;
`
`F.
`
`The Court declare that the claims of the ‘783 Patent are invalid under one or more
`
`of35 U.S.C.§§101,102,103, and 112;
`
`G.
`
`SecureBuy be awarded its costs in this action; and
`
`11
`
`

`

`
`Case 1:13-cv-00417-HSO-RHW Document 1 Filed 11/01/13 Page 12 of 12
`Case 1:13-cv-OO417—HSO-RHW Document 1 Filed 11/01/13 Page 12 of 12
`
`H.
`
`SecureBuy be awarded such other and further relieve as this Court deems is just
`
`and proper.
`
`DEMAND FOR A JURY TRIAL
`
`In accordance with Federal Rules of Civil Procedure 38, SecureBuy hereby respectfully
`
`demands atrial by jury of all issues and claims so triable.
`
`Dated: October 31, 2013
`
`Respectfully Submitted,
`
`
`
`Patrick T. Bergin (MSB# 9842)
`BUTLER, SNOW, O’MARA, STEVENS &
`CANNADA, PLLC
`1300 Twenty-Fifth Avenue, Suite 204 (39501)
`PO. Drawer 4248
`
`Gulfport, MS 39502
`Phone: 228-864—1170
`
`Fax:
`
`228-868-1531
`
`patrick.bergin@butlersnow.com
`
`ATTORNEY FOR PLAINTIFF
`
`ButlerSnow 1820I385v]
`
`12
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket