Case 2:12-cv-00089-JFC Document 107 Filed 01/21/14 Page 1 of 13
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`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF PENNSYLVANIA
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`Master Docket
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`Misc. No. 12-244
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`MDL No. 2354
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`CONTI, Chief District Judge
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`_____________________________________
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`IN RE: MAXIM INTEGRATED PRODUCTS,
`INC., MDL NO. 2354
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`This Document Relates to: 12-cv-89
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`_____________________________________
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`THE PNC FINANCIAL SERVICES GROUP,
`INC., and PNC BANK, NATIONAL
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`ASSOCIATION
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`Plaintiff and Counter-Defendant,
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`v.
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`MAXIM INTEGRATED PRODUCTS, INC.,
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`Defendant and Counter-Plaintiff.
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`_________________________________________ )
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`FIRST AMENDED COMPLAINT FOR DECLARATORY JUDGMENT AND
`VIOLATIONS OF 18 U.S.C. § 1030, 18 U.S.C. § 2511, AND 17 U.S.C. § 1201
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`C.A. No. 2:12-cv-89-JFC
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`Plaintiffs, The PNC Financial Services Group, Inc. and PNC Bank, National Association
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`(collectively “PNC”), through the undersigned attorneys, alleges the following for its First
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`Amended Complaint against Defendant Maxim Integrated Products, Inc. (“Maxim”):
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`NATURE OF ACTION
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`1.
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`This is an action for declaratory judgment seeking relief of non-infringement and
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`invalidity under the patent laws of the United States, Title 35, United States Code, the
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`Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202, Fed. R. Civ. P. 57, the Computer Fraud
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`and Abuse Act, 18 U.S.C. §§ 1030(a)(2)(C) and 1030(a)(4), the Federal Wiretap Act, 18 U.S.C.
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`§§ 2511(1)(a) and 2511(2)(d), and the Digital Millennium Copyright Act, 17 U.S.C.
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`§ 1201(a)(1)(A).
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`Maxim Exhibit 2008 - PNC/JPMC, CBM2014-00039 - Page 2008-001
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`Case 2:12-cv-00089-JFC Document 107 Filed 01/21/14 Page 2 of 13
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`THE PARTIES
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`2.
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`The PNC Financial Services Group, Inc., a publicly-traded corporation listed on
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`the New York Stock Exchange as “PNC,” is a Pennsylvania corporation with its principal place
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`of business in Pittsburgh, Pennsylvania.
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`3.
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`PNC Bank, National Association, a national banking association with its principal
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`place of business in Pittsburgh, Pennsylvania, is a wholly-owned, indirect subsidiary of The PNC
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`Financial Services Group, Inc.
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`4.
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`Upon information and belief, Defendant Maxim is a Delaware corporation with its
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`principal place of business at 120 San Gabriel Drive, Sunnyvale, California.
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`JURISDICTION AND VENUE
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`5.
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`This declaratory judgment claim arises under the United States Patent Laws, 35
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`U.S.C. § 100 et seq., and the Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202. Subject
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`matter jurisdiction is proper under the Computer Fraud and Abuse Act, 18 U.S.C. § 1030; the
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`Federal Wiretap Act, 18 U.S.C. § 2511; the Digital Millennium Copyright Act, 17 U.S.C. §
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`1201; and 28 U.S.C. §§ 1331 and 1338(a). This matter presents an actual case or controversy and
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`serves the purpose of resolving the legal rights of the parties.
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`6.
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`This Court has personal jurisdiction over Maxim because Maxim has maintained
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`continuous and systematic contacts with the Commonwealth of Pennsylvania, and Maxim has
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`purposefully availed itself of the benefits and protections of the laws of the Commonwealth of
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`Pennsylvania.
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`7.
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`Maxim, directly and/or through its distribution networks, offers for sale, sells,
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`and/or distributes products within the Commonwealth of Pennsylvania.
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`8.
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`Upon information and belief, Maxim maintains sales offices within the
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`Commonwealth of Pennsylvania. See Exhibit A, a printout from Maxim’s website
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`Page 2008-002
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`http://www.maxim-ic.com/sales/offices/worldwide.mvp, showing its worldwide sales offices,
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`including two for Pennsylvania. Specifically, one of the sales offices listed on Maxim’s website
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`references a Maxim sales representative in “US - Pennsylvania (Western).”
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`9.
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`Upon information and belief, Maxim engages franchised distributors within the
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`Commonwealth of Pennsylvania. See Exhibit B, a printout from Maxim’s website
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`http://www.maxim-ic.com/sales/offices/distributor/franchise.mvp, showing three franchised
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`distributors in Pennsylvania. Specifically, one of the Maxim franchised distributors, Avnet, Inc.,
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`has a branch office located in Wexford, Pennsylvania (in the Western District of Pennsylvania).
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`10.
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`In addition, Maxim operates an interactive website through which persons in
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`Pennsylvania can and do order products from Maxim, which are shipped to Pennsylvania. See
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`http://www.maxim-ic.com/sales/.
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`11.
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`On December 2, 2011, counsel for Maxim sent a demand letter to PNC’s General
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`Counsel in Pittsburgh, Pennsylvania, alleging patent infringement against PNC in Pennsylvania.
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`12.
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`Venue is proper in this judicial district under 28 U.S.C. §§ 1391.
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`FACTUAL BACKGROUND
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`13.
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`In the December 2, 2011 demand letter, counsel for Maxim accused PNC of
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`infringing Maxim’s patents. Specifically, Maxim alleged that PNC’s mobile platforms,
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`including multiple software applications for iPhone and other mobile devices, infringe the claims
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`of United States Patent Nos. 5,940,510 (‘‘’510 patent”), 5,949,880 (‘‘’880 patent”), 6,105,013
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`(‘‘’013 patent”), and 6,237,095 (‘‘’095 patent”).
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`14.
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`Upon information and belief, the ’510, ’880, ’013, and ’095 patents are assigned
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`to Maxim. True and correct copies of the four patents are attached hereto as Exhibits C, D, E,
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`and F. True and correct assignments of the four patents are attached hereto as Exhibits G, H, I,
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`and J.
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`3
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`Page 2008-003
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`Case 2:12-cv-00089-JFC Document 107 Filed 01/21/14 Page 4 of 13
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`15.
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`In the December 2, 2011 letter, Maxim alleged that “[i]t is our belief that PNC is
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`infringing a number of the patents within the Maxim Mobile Transaction Patent Portfolio.”
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`Specifically, Maxim stated that PNC mobile platforms “infringe certain claims within the
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`portfolio via direct infringement, joint infringement, contributory infringement and/or
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`inducement.” It further stated that if it did not hear from PNC within a month (i.e., by January 2,
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`2012), “Maxim will assume that PNC does not want to obtain a license in a non-litigious manner
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`and will act accordingly.”
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`16.
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`On December 20, 2011, in-house counsel for PNC responded to counsel for
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`Maxim, advising that: “PNC is in the process of reviewing the claims made in your letter. Due to
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`vacation schedules around the holidays, we will not be in a position to respond to your letter by
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`January 2, 2012.” In response, on January 3, 2012, counsel for Maxim responded, proposing
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`further communications in the form of a conference call on “January 24 or January 26.”
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`17. Maxim’s initial January 2, 2012 deadline, as later extended by counsel for Maxim
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`to January 24 or January 26, is a clear and unmistakable threat of litigation against PNC.
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`18. Maxim attached to the December 2, 2011 letter nine pages of claim charts for the
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`’510, ’880, ’013, and ’095 patents. In particular, for claims of the ’510 patent, Maxim alleged
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`“infringement under joint infringement”; for claims of the ’880 patent, Maxim alleged
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`“infringement under direct infringement”; and for claims of the ’013 and ’095 patents, Maxim
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`alleged “infringement under joint infringement, contributory infringement and inducement.”
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`19. Maxim also attached to the December 2, 2011 letter a 33-page document entitled
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`“Analysis of PNC Mobile Banking Software Application.” Maxim stated that it analyzed the
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`PNC mobile banking software application to show that “the PNC bank infringes certain claims
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`within Maxim patents.” In addition, Maxim stated that “[t]his document is referenced by the
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`Page 2008-004
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`claim charts, provided herewith, showing the PNC mobile banking application, server structures
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`and processes, and overall system architecture infringe a diverse set of claims within the Maxim
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`patent portfolio.”
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`20. Maxim’s letter, together with the detailed attachments alleging patent
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`infringement, is a further clear and unmistakable threat of litigation against PNC.
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`21.
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`As of the filing of this First Amended Complaint, Maxim has filed suit against, or
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`had a declaratory judgment action filed against it after threatening suit by, a total of 51 parties
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`("Opposing Parties"). All of these Actions, including this Action, are the subject of Multi-District
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`Litigation No. 12-mc-00244-JFC in the Western District of Pennsylvania ("MDL Proceeding").
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`Maxim has alleged infringement of the ’510, ’880, ’013 and ’095 Patents by each of the
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`Opposing Parties in the MDL Proceeding based upon each Opposing Party's mobile phone
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`applications.
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`22.
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`Attached to Maxim’s demand letter was documentation showing that Maxim had
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`obtained proprietary information belonging to PNC by attempting to access its secured server
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`and by decompiling its mobile application.
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`23.
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`PNC, in reviewing the pre-filing investigation letter and the attachments provided
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`by Maxim, realized that these materials contained information that was unavailable to the public
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`and proprietary to PNC. In response to this unauthorized access, PNC spent valuable time and
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`resources to determine the extent of the unauthorized access, including determining who
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`accessed the site, when the site was accessed, the scope of the access, and what steps needed to
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`be taken, if any, to safeguard against this again. The amount spent by PNC for purposes of this
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`investigation exceeds five thousand dollars ($5000.00).
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`24.
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`PNC alleges the following on information and belief:
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`a.
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`A third party, ProgForce, was hired by or on behalf of Maxim to access
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`PNC’s proprietary computer systems. This third party worked at the direction of Maxim’s
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`counsel. In particular, the third party individual who attempted to access PNC’s servers
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`used the fake login name of “dimatk” and has been identified by Maxim as Dmitry
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`Tkachuk.
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`b.
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`It thus appears that Maxim, without any legitimate business purpose or
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`authorization from PNC, and acting through a third party agent, used a fake password and
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`login in an attempt to gain access to PNC’s proprietary computer systems. Maxim’s letter
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`to PNC included screenshots that documented the actions of the third party agent,
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`including evidence of the software used and the agent’s presence on the PNC server.
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`PNC, upon learning this, commenced an immediate investigation as to the extent of
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`Maxim’s unauthorized access.
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`c.
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`Utilizing common network packet analyzing software, Paros and
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`Wireshark, as software described above, Maxim’s third party agent decompiled the
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`source code of PNC’s proprietary software, watched communication taking place on
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`PNC’s networks, and manipulated source code during communications to determine what
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`information was required for logging in.
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`d.
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`This third party agent obtained PNC’s proprietary information about its
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`computer systems and mobile application, none of which was available to the general
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`public. Maxim adopted this third party’s actions as its own and held its agent out as
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`possessing power to act on Maxim’s behalf. In the documents it sent to PNC, Maxim
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`stated that it had “analyzed the PNC mobile software” and that its analysis included
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`“downloading and decompiling the mobile software, analyzing packets exchanged
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`Page 2008-006
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`between the mobile handset and stores server, and de-encrypting network traffic
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`transmitted from PNC’s server[.]” Maxim has subsequently noted that ProgForce worked
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`“at the direction of Maxim’s counsel” to conduct its alleged analysis.
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`25.
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`In response to this unauthorized access, PNC spent valuable time and resources to
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`determine the extent of the unauthorized access, including determining who accessed the site,
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`when the site was accessed, the scope of the access, and what steps needed to be taken, if any, to
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`safeguard against this access again. The amount spent by PNC for purposes of this investigation
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`exceeds five thousand dollars ($5,000.00).
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`COUNT I: DECLARATORY JUDGMENT OF NON-INFRINGEMENT
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`26.
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`27.
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`PNC incorporates the preceding paragraphs as if fully set forth herein.
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`PNC has not directly infringed, and does not directly infringe, any claim of the
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`’510, ’880, ’013, and ’095 patents.
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`28.
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`PNC has not jointly infringed, and does not currently jointly infringe, any claim
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`of the ’510, ’880, ’013, and ’095 patents.
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`29.
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`PNC has not contributorily infringed, and does not currently contributorily
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`infringe, any claim of the ’510, ’880, ’013, and ’095 patents.
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`30.
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`PNC has not induced, and does not currently induce, any infringement of any
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`claim of the ’510, ’880, ’013, and ’095 patents.
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`31.
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`PNC is entitled to a declaration pursuant to 28 U.S.C. §§ 2201 and 2202 that PNC
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`does not infringe any claim of the ’510, ’880, ’013, and ’095 patents.
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`COUNT II: DECLARATORY JUDGMENT OF INVALIDITY
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`PNC incorporates the preceding paragraphs as if fully set forth herein.
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`The claims of each of the ’510, ’880, ’013, and ’095 patents are invalid under
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`32.
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`33.
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`Title 35 of the United States Code, including but not limited to §§ 101, 102, 103 and/or 112.
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`Page 2008-007
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`34.
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`PNC is entitled to a declaration pursuant to 28 U.S.C. §§ 2201 and 2202 that the
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`claims of the ’510, ’880, ’013, and ’095 patents are invalid.
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`COUNT III: VIOLATION OF THE COMPUTER FRAUD AND ABUSE ACT
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`35.
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`36.
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`PNC incorporates the preceding paragraphs as if fully set forth herein.
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`As a financial institution with an online presence, PNC uses its secured server in
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`interstate and foreign commerce. PNC’s server, therefore, is a protected computer under the
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`Computer Fraud and Abuse Act, 18 U.S.C. § 1030(e)(2).
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`37.
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`Acting through a third party agent, Maxim violated §§ 1030(a)(2)(C) and
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`1030(a)(4) of the Computer Fraud and Abuse Act when it, without authorization, or by
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`exceeding the scope of authorization, attempted to access PNC’s secured server and obtained
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`PNC’s proprietary information.
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`38. Maxim knowingly, intentionally, willfully, and for the purpose of financial gain
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`and with intent to defraud manipulated network protocol and sent and received unauthorized
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`commands to and from PNC’s server, thereby accessing PNC’s proprietary information.
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`39. Maxim also knowingly, intentionally, willfully, and for the purpose of financial
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`gain and with intent to defraud accessed PNC’s secured server by using packet sniffing software
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`and de-encryption tools to monitor secure network traffic and de-encrypt communications from
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`PNC’s server.
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`40.
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`By accessing PNC’s server without authorization or by exceeding the scope of
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`authorization, Maxim obtained valuable proprietary information belonging to PNC, including
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`information regarding PNC’s security measures and how PNC encrypts data on its secured
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`network.
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`41. Maxim was not entitled to obtain PNC’s proprietary information.
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`Page 2008-008
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`42. Maxim’s unauthorized access of PNC’s server caused PNC to suffer financial
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`losses in the form of attorneys’ fees and the time and efforts of its employees. These losses were
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`incurred as PNC worked to determine the extent of Maxim’s unauthorized access, and the kind
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`of information Maxim obtained.
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`43.
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`As a result of Maxim’s unauthorized access, PNC has suffered losses of more
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`than $5,000.00.
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`COUNT IV: VIOLATION OF THE FEDERAL WIRETAP ACT
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`PNC incorporates the preceding paragraphs as if fully set forth herein.
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`Using a “man-in-the-middle” approach and acting through a third party agent,
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`44.
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`45.
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`Maxim sent and received electronic communications to and from PNC’s secured server in order
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`to access and obtain information from PNC’s server.
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`46. Maxim sent and received these electronic communications for the purpose of acts
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`that violate the Computer Fraud and Abuse Act, 18 U.S.C. §§ 1030(a)(2)(C) and 1030(a)(4).
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`47. Maxim violated the Computer Fraud and Abuse Act by accessing PNC’s secured
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`server, sniffing secure network communication, and de-encrypting network communications
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`from PNC’s secured server.
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`48. Maxim also violated the Computer Fraud and Abuse Act by manipulating
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`network commands and sending and receiving unauthorized commands to and from PNC’s
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`secured server in order to obtain information residing on the server.
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`49.
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`By sending and receiving electronic communication to and from PNC’s secured
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`server for the purpose of acts that violate the Computer Fraud and Abuse Act, Maxim unlawfully
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`intercepted electronic communications in violation of the Federal Wiretap Act, 18 U.S.C.
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`§§ 2511(1)(a) and 2511(2)(d).
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`Page 2008-009
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`Case 2:12-cv-00089-JFC Document 107 Filed 01/21/14 Page 10 of 13
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`COUNT V:
`VIOLATION OF THE DIGITAL MILLENNIUM COPYRIGHT ACT
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`PNC incorporates the preceding paragraphs as if fully set forth herein.
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`PNC’s mobile application contains source code, which is an original work of
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`50.
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`51.
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`authorship fixed in a tangible medium of expression. The source code to PNC’s mobile
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`application is PNC’s copyrighted and proprietary material.
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`52.
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`PNC’s source code is protected by technological measures put in place by PNC to
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`prevent others from accessing or copying its source code. These technological measures include
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`the compiling of PNC’s source code into object code that renders the source code inaccessible
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`without the application of reverse engineering and decompilation technology.
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`53. Maxim, acting through a third party agent, used decompilation and reverse
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`engineering tools to circumvent the technological measures put in place by PNC. The
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`decompilation tools were designed or produced for this purpose.
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`54.
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`By decompiling and reverse engineering PNC’s mobile application and source
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`code, Maxim accessed PNC’s proprietary information, including its source code.
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`55. Maxim infringed or facilitated the infringement of PNC’s rights under the
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`Copyright Act.
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`56. Maxim’s actions violate the Digital Millennium Copyright Act, 17 U.S.C.
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`§ 1201(a)(1)(A).
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`57. Maxim is vicariously liable under the Computer Fraud and Abuse Act, 18 U.S.C.
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`§§ 1030(a)(2)(C) and 1030(a)(4); the Wiretap Act, 18 U.S.C. §§ 2511(1)(a) and 2511(2)(d); and
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`the Digital Millennium Copyright Act, 17 U.S.C. § 1201(a)(1)(A).
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`PRAYER FOR RELIEF
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`Page 2008-010
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`Case 2:12-cv-00089-JFC Document 107 Filed 01/21/14 Page 11 of 13
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`WHEREFORE, PNC respectfully requests that this Court enter judgment in its favor as
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`follows:
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`a)
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`b)
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`c)
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`d)
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`e)
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`f)
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`g)
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`h)
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`declare that PNC has not directly infringed, and does not currently directly
`infringe, any claim of the ’510, ’880, ’013, and ’095 patents;
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`declare that PNC has not jointly infringed, and does not currently jointly
`infringe, any claim of the ’510, ’880, ’013, and ’095 patents;
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`declare that PNC has not contributorily infringed, and does not currently
`contributorily infringe, any claim of the ’510, ’880, ’013, and ’095 patents;
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`declare that PNC has not induced, and does not currently induce, any
`infringement of any claim of the ’510, ’880, ’013, and ’095 patents;
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`declare that the claims of the ’510, ’880, ’013, and ’095 patents are invalid;
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`declare this to be an exceptional case and award PNC its costs, expenses,
`and disbursements in this action, including reasonable attorney fees,
`pursuant to 35 U.S.C. § 285;
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`award PNC all damages provided under the Computer Fraud and Abuse Act,
`the Digital Millennium Copyright Act, and the Wiretap Act, including actual
`damages, statutory damages, punitive damages, costs, and attorneys’ fees;
`and
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`award PNC any further and additional relief that this Court deems just and
`proper.
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`JURY DEMAND
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`PNC requests a trial by jury on all issues so triable.
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`Dated: January 21, 2014
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`Respectfully submitted,
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`The PNC Financial Services Group, Inc.
`and
`PNC Bank, National Association
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`By: /s/ Lionel M. Lavenue
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`Lionel M. Lavenue, Esq.
`James J. Boyle, Esq.
`Michael V. Young, Sr., Esq.
`Elizabeth A. Laughton, Esq.
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
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`11
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`Page 2008-011
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`Case 2:12-cv-00089-JFC Document 107 Filed 01/21/14 Page 12 of 13
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`Two Freedom Square
`11955 Freedom Drive
`Reston, Virginia 20190-5675
`Tel: (571) 203-2700
`Fax: (202) 408-4400
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`Scott R. Leah, Esq.
`Pa. I.D. 57564
`Neil J. Gregorio, Esq.
`Pa. I.D. 90859
`Tucker Arensberg, P.C.
`1500 One PPG Place
`Pittsburgh, PA 15222
`Tel: (412) 594-1212
`Fax: (412) 594-5619
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`Attorneys for Plaintiffs and Counter-
`Defendants
`The PNC Financial Services Group, Inc.
`and
`PNC Bank, National Association
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`12
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`Page 2008-012
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`Case 2:12-cv-00089-JFC Document 107 Filed 01/21/14 Page 13 of 13
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`CERTIFICATE OF SERVICE
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`I, Lionel M. Lavenue, Esquire, hereby certify that on January 21, 2014, I caused the
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`foregoing to be electronically filed with the Clerk of Court using the CM/ECF system, which
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`will send notification of such filing to all counsel of record.
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`/s/ Lionel M. Lavenue
`Lionel M. Lavenue, Esq.
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`13
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`Page 2008-013
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