`Case 1:13-cv-OO417-HSO-RHW Document 1 Filed 11/01/13 Page 1 of 12
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE SOUTHERN DISTRICT OF MISSISSIP.
`SOUTHERN DIVISION
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`'
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`) )
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`SECUREBUY, LLC
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`Plaintiff,
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`v.
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`CARDINALCOMMERCE
`CORPORATION
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`)
`.
`l
`)Civil Action No. i .i.$(:vLi irl ”80’an
`)
`)
`)
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`JURY TRIAL DEMANDED
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`) )
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`) )
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`Defendant.
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`SECUREBUY, LLC’S COMPLAINT FOR DECLARATORY JUDGMENT
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`Plaintiff, SecureBuy, LLC (“SecureBuy”), by and through its undersigned counsel, files
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`this Complaint for a declaratory judgment against Defendant, CardinalCommerce Corporation
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`(“CardinalComrnerce”), and alleges as follows:
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`NATURE OF ACTION
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`1.
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`This is an action for a declaratory judgment that SecureBuy does not infringe any
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`valid claim of United States Patent Nos. 8,140,429 (“the ‘429 Patent”), 7,051,002 (“the “002
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`Patent”), and 7,693,783 (“the ‘783 Patent”) (collectively “the 3-D Secure Patents”), and for a
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`declaratory judgment that the claims of the 3-D Secure Patents are invalid.
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`2.
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`3.
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`4.
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`A true and correct copy of the ‘429 Patent is attached hereto as Exhibit A.
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`A true and correct copy of the ‘002 Patth is attached hereto as Exhibit B.
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`A true and correct copy of the “783 Patent is attached hereto as Exhibit C.
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`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
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`THE PARTIES
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`5.
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`Plaintiff, SecureBuy, is a limited liability corporation organized and existing
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`under the laws of the state of Mississippi, with its principal place of business located at 605
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`Crescent Blvd, Suite 200, Ridgeland, MS 39157. SecureBuy is a wholly owned subsidiary of
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`SignatureLink, Inc.
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`6.
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`On information and belief, CardinalCommerce, is a Delaware corporation, with
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`its principal place of business located at 61 19 Heisley Rd., Mentor, OH 44060.
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`7.
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`On information and belief, the ‘429 Patent was assigned to CardinalCommerce
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`from Chandra Balasubramanian, Francis Sherwin, and Michael A. Keresman, III on March 10,
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`2010.
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`8.
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`On information and belief, the “002 Patent was assigned to CardinalCommerce
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`from Chandra Balasubramanian, Francis Sherwin, and Michael A. Keresman, III on June 12,
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`2003.
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`9.
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`On information and belief, the ‘783 Patent was assigned to CardinalCommerce
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`from Chandra Balasubramanian, Francis Sherwin, and Michael A. Keresman, III on August 4,
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`2006.
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`10.
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`On information and belief, CardinalCommerce advertises its e-commerce
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`payment authentication platforms and services on its website to merchants in this District at
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`http://www.cardinalcommerce.com/about/. These services include payment authentication for,
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`inter alia, e-commerce transactions.
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`1 1.
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`On information and belief, CardinalCommerce provides a “Contact Us” form on
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`its website where it solicits merchants 1 including those in this District — to request more
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`information about CardinalCommerce’s platforms and services.
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`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
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`12.
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`On information and belief, CardinalCommerce provides services to merchants
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`who are located in and/or conduct substantial business in this District. These merchants include,
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`inter alia, Travelocity, Dell, Sharper Image, Yahoo! Travel, United, Xerox, Western Union,
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`SkyMall, Hotwire, Ritz Interactive, TigerDirect, NewEgg, Symantec, Pulse EFT, Chase
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`Paymentech, First Data, FNBO, PayPal, and Google Wallet, which provide e-commerce and/or
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`financial services to individuals in this District.
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`13.
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`On information and belief, each of CardinalCommerce’s merchants pass their
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`online transactions initiated in this District to CardinalCommerce’s platform and servers for
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`authentication services. Accordingly, CardinalCommerce provides authentication services to
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`customers located in this District who engage in online transactions with CardinalCommerce’s
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`merchants.
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`JURISDICTION AND VENUE
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`14.
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`This action arises under the patent laws of the United States, Title 35 of the
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`United States Code (35 U.S.C. § 1, et. seq), and under the Federal Declaratory Judgment Act {28
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`U.S.C. §§ 2201 and 2202).
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`15.
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`This Court has subject matter jurisdiction over this action pursuant to 28 U.S.C.
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`§§ 1331 (federal question) and 1338(a) (action arising under an Act of Congress relating to
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`patents).
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`16.
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`This Court has personal jurisdiction over CardinalCommerce because it conducts
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`and solicits substantial and continuous business within this District so as to make personal
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`jurisdiction proper in this Court.
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`17.
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`Venue is proper in this District pursuant to 28 U.S.C. §§ 1391(b), (c), and
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`1400(b).
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`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
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`THE PRESENCE OF AN ACTUAL CONTROVERSY
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`18.
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`In or about September and October 2013, Michael A. Keresman, Chief Executive
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`Officer of CardinalCommerce, notified Greg Wooten, Chief Executive Officer of SecureBuy,
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`that CardinalCommerce believes that one or more of SecureBuy’s products, including SecureBuy
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`2.0, infringe CardinalCommerce’s 3-D Secure Patents. Mr. Keresman further provided Mr.
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`Wooten with a straw man licensing proposal between Cardinal Commerce and SecureBuy for the
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`3-D Secure Patents that expires at the end of October 2013.
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`19.
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`By virtue of CardinalCommerce’s actions and licensing proposal that expires at
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`the end of October 2013, SecureBuy faces an imminent threat of possible infringement liability
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`that may potentially cripple its business at least with respect to sales of its SecureBuy 2.0
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`platform and services. Accordingly, there is a substantial controversy of sufficient immediacy
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`and reality between SecureBuy and CardinalCommerce to warrant issuance of a declaratory
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`judgment.
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`20.
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`SecureBuy denies that it infringes any valid claim of the 3-D Secure Patents.
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`SecureBuy now seeks a declaratory judgment that it does not infringe any valid claim of the 3-D
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`Secure Patents.
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`21.
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`SecureBuy also seeks a declaratory judgment that one or more of the claims of the
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`3-D Secure Patents are invalid for at least the reason that the claims of the 3-D Secure Patents are
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`anticipated by prior art.
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`1.0M
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`DECLARATORY JUDGMENT OF NON-INFRINGEMENT on THE ‘429 PATENT
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`22.
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`The allegations of paragraphs 1-21 are incorporated by reference as if fully set
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`forth herein.
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`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
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`23.
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`SecureBuy’s products and systems, including its SecureBuy 2.0 platform, do not
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`infringe any valid claim of the ‘429 Patent, including but not limited to claim 1 identified by
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`CardinalCommerce in its presentation of October 10, 2013.
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`24.
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`SecureBuy has not contributed to and is not contributing to infringement of any
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`claims of the ‘429 Patent, including but not limited to claim I, by others.
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`25.
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`SecureBuy has not induced and is not inducing infringement of any claims of the
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`‘429 Patent, including but not limited to claim 1.
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`26.
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`An actual controversy exists between SecureBuy and CardinalCommerce as to
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`whether or not SecureBuy has infringed, or is infringing, the ‘429 Patent, has contributed to
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`infringement or is contributing to infringement of the “429 Patent, and has induced infringement
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`or is inducing infringement of the ‘429 Patent.
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`27.
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`The controversy is such that, pursuant to Federal Rule of Civil Procedure 57 and
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`28 U.S.C. § 2201 et seq., SecureBuy is entitled to a declaration, in the form of a judgment, that
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`by its activities SecureBuy has not infringed and is not infringing any valid and enforceable
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`claim of the ‘429 Patent, has not contributed to infringement and is not contributing to
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`infringement of the “429 Patent, andfor has not induced infringement and is not inducing
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`infringement of the “429 Patent. Such a determination and declaration is necessary and
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`appropriate at this time.
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`we
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`DECLARATORY JUDGMENT 0F INVALIDITY OF THE ‘429 PATENT
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`28.
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`The allegations of paragraphs 1—27 are incorporated by reference as if fully set
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`forth herein.
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`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
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`29.
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`Based on the above-stated conduct, SecureBuy is informed and believes that
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`CardinalCommerce contends that SecureBuy infringes one or more claims of the ‘429 Patent.
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`30.
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`SecureBuy denies that it infringes any valid and enforceable claim of the ‘429
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`Patent, and avers that the assertions of infringement cannot be maintained consistently with
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`statutory conditions of patentability and the statutory requirements for disclosure and claiming
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`that must be satisfied for patent validity under at least one of 35 U.S.C. §§ 101 , 102, 103, and
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`112.
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`31.
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`The claims of the “429 patent, including at least claim 1, are invalid under 35
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`U.S.C. § 102 based on the prior art as of the applicable priority date.
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`32.
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`The claims of the ‘429 patent, including at least claim 1, is invalid under 35
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`U.S.C. § 103 based on the prior art as of the applicable priority date.
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`33.
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`The claims of the ‘429 patent, including at least claim 1, are invalid under 35
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`U.S.C. § 101 for lack of patentable subject matter based on the abstract nature of the claimed
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`invention.
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`34.
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`The claims of the ‘429 patent, including at least claim 1, are invalid under 35
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`U.S.C. § 1 12 for failure to meet the requirements for patent specifications, including but not
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`limited to the failure to contain an adequate written description of the invention and for a failure
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`to particularly point out and distinctly claim the subject matter which the applicant regards as his
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`invention.
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`35.
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`Accordingly, an actual controversy exists between SecureBuy and
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`CardinalCommerce as to the validity of the “429 Patent. The controversy is such that, pursuant
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`to Federal Rules of Civil Procedure 57 and 28 U.S.C. § 2201 et seq, SecureBuy is entitled to a
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`
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`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
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`declaration, in the form of a judgment, that the ‘429 Patent is invalid. Such a determination and
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`declaration is necessary and appropriate at this time.
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`COUNT III
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`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ‘002 PATENT
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`36.
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`The allegations of paragraphs 1-35 are incorporated by reference as if fully set
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`forth herein.
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`37'.
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`SecureBuy’s products and systems, including its SecureBuy 2.0 platform, do not
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`infringe any valid claim of the ‘002 Patent.
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`38.
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`SecureBuy has not contributed to and is not contributing to infringement of any
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`claims of the ‘002 Patent by others.
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`39.
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`SecureBuy has not induced and is not inducing infringement of any claims of the
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`‘002 Patent.
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`40.
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`An actual controversy exists between SecureBuy and CardinalCommerce as to
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`whether or not SecureBuy has infringed, or is infringing, the ‘002 Patent, has contributed to
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`infringement or is contributing to infringement of the ‘002 Patent, and has induced infringement
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`or is inducing infringement of the “002 Patent.
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`41.
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`The controversy is such that, pursuant to Federal Rule of Civil Procedure 57 and
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`28 U.S.C. § 2201 et seq., SecureBuy is entitled to a declaration, in the form of a judgment, that
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`by its activities SecureBuy has not infringed and is not infringing any valid and enforceable
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`claim of the ‘002 Patent, has not contributed to infringement and is not contributing to
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`infringement of the ‘002 Patent, and/or has not induced infringement and is not inducing
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`infringement of the ‘002 Patent. Such a determination and declaration is necessary and
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`appropriate at this time.
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`
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`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
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`COUNT IV
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`DECLARATORY JUDGMENT 0F INVALIDITY OF THE ‘002 PATENT
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`42.
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`The allegations of paragraphs 1-41 are incorporated by reference as if fully set
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`forth herein.
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`43.
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`Based on the above-stated conduct, SecureBuy is informed and believes that
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`CardinalCommerce contends that SecureBuy infringes one or more claims of the ‘002 Patent.
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`44.
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`SecureBuy denies that it infringes any valid and enforceable claim of the ‘002
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`Patent, and avers that the assertions of infringement cannot be maintained consistently with
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`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
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`1 12.
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`45.
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`The claims of the ‘002 patent, including at least claim 1, are invalid under 35
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`U.S.C. § 102 based on the prior art as of the applicable priority date.
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`46.
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`The claims of the ‘002 patent, including at least claim 1, is invalid under 35
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`U.S.C. § 103 based on the prior art as of the applicable priority date.
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`47.
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`The claims of the ‘002 patent, including at least claim 1, are invalid under 35
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`U.S.C. § 101 for lack of patentable subject matter based on the abstract nature of the claimed
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`invenfion.
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`48.
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`The claims of the ‘002 patent, including at least claim 1, are invalid under 35
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`U.S.C. § 112 for failure to meet the requirements for patent specifications, including but not
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`limited to the failure to contain an adequate written description of the invention and for a failure
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`to particularly point out and distinctly claim the subject matter which the applicant regards as his
`
`invention.
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`
`
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`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
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`49.
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`Accordingly, an actual controversy exists between SecureBuy and
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`CardinalCommerce as to the validity of the ‘002 Patent. The controversy is such that, pursuant
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`to Federal Rules of Civil Procedure 57 and 28 U.S.C. § 2201 et seq., SecureBuy is entitled to a
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`declaration, in the form of a judgment, that the “002 Patth is invalid. Such a determination and
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`declaration is necessary and appropriate at this time.
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`COUNT V
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`DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ‘783 PATENT
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`50.
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`The allegations of paragraphs 1—49 are incorporated by reference as if fully set
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`forth herein.
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`51.
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`SecureBuy’s products and systems, including its SecureBuy 2.0 platform, do not
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`infringe any valid claim of the ‘783 Patent.
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`52.
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`SecureBuy has not contributed to and is not contributing to infringement of any
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`claims of the ‘783 Patent by others.
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`53.
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`SecureBuy has not induced and is not inducing infringement of any claims of the
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`“783 Patent.
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`54.
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`An actual controversy exists between SecureBuy and CardinalCommerce as to
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`whether or not SecureBuy has infringed, or is infringing, the ‘783 Patent, has contributed to
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`infringement or is contributing to infringement of the “783 Patent, and has induced infringement
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`or is inducing infringement of the “7833 Patent.
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`55.
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`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
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`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
`
`
`
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`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
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`infringement of the ‘783 Patent. Such a determination and declaration is necessary and
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`appropriate at this time.
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`COUNT VI
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`DECLARATORY JUDGMENT OF INVALIDITY OF THE ‘783 PATENT
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`56.
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`The allegations of paragraphs 1—55 are incorporated by reference as if fully set
`
`forth herein.
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`57.
`
`Based on the above-stated conduct, SecureBuy is informed and believes that
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`CardinalCommerce contends that SecureBuy infringes one or more claims of the “783 Patent.
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`58.
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`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.
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`59.
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`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.
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`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.
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`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
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`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
`
`
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`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
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`to particularly point out and distinctly claim the subject matter which the applicant regards as his
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`invention.
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`63.
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`Accordingly, an actual controversy exists between SecureBuy and
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`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
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`declaration, in the form of a judgment, that the ‘783 Patent is invalid. Such a determination and
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`declaration is necessary and appropriate at this time.
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`PRAYER FOR RELIEF
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`WHEREFORE, plaintiff prays that:
`
`A.
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`The Court declare that SecureBuy’s systems and products do not infringe any
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`valid claim of the ‘429 Patent;
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`B.
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`The Court declare that the claims of the ‘429 Patent are invalid under one or more
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`0f35 U.S.C.§§ 101,102,103, and 112;
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`C.
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`The Court declare that SecureBuy’s systems and products do not infringe any
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`valid claim of the “002 Patent;
`
`1).
`
`The Court declare that the claims of the ‘002 Patent are invalid under one or more
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`cf35 U.S.C.§§101,102,103, and 112;
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`E.
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`The Court declare that SecureBuy’s systems and products do not infringe any
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`valid claim of the ‘783 Patent;
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`F.
`
`The Court declare that the claims of the ‘783 Patent are invalid under one or more
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`of35 U.S.C.§§101,102,103, and 112;
`
`G.
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`SecureBuy be awarded its costs in this action; and
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`11
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`
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`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
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`H.
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`SecureBuy be awarded such other and further relieve as this Court deems is just
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`and proper.
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`DEMAND FOR A JURY TRIAL
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`In accordance with Federal Rules of Civil Procedure 38, SecureBuy hereby respectfully
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`demands atrial by jury of all issues and claims so triable.
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`Dated: October 31, 2013
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`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]
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`12
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