Case 5:14-cv-01027-XR Document 1 Filed 11/19/14 Page 1 of 7
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`SAN ANTONIO DIVISION
`
` CASE NO.: 5:14-cv-1027
`
`
`COMPLAINT FOR PATENT
`INFRINGEMENT
`
`
`DEMAND FOR JURY TRIAL
`
`Plaintiff,
`
`Defendant.
`
`MAXIM INTEGRATED PRODUCTS, INC.,
`
`
`
`v.
`
`THE AMERICAN EXPRESS COMPANY,
`
`
`
`
`
`Maxim Integrated Products, Inc. (“Maxim”) hereby alleges for its Complaint for patent
`
`infringement against defendant The American Express Company (“American Express”) on
`
`personal knowledge as to its own actions and on information and belief as to the actions of others,
`
`as follows:
`
`THE PARTIES
`
`1.
`
`Plaintiff Maxim is a Delaware corporation with places of business at 120 San
`
`Gabriel Drive, Sunnyvale, California 94086, and 9651 Westover Hills, San Antonio, TX 78251.
`
`2.
`
`On information and belief, defendant American Express is a corporation existing
`
`and organized under the laws of New York. American Express is doing business in the Western
`
`District of Texas, and has its principal place of business in New York, NY.
`
`JURISDICTION AND VENUE
`
`3.
`
`This action for patent infringement arises under the patent laws of the United
`
`States, Title 35 of the United States Code.
`
`4.
`
`This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and
`
`1338(a).
`
`5.
`
`Maxim maintains a substantial presence in Texas and this District, and does
`
`1
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`AMEX 1013 - Page 1 of 7
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`
`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`SAN ANTONIO DIVISION
`
` CASE NO.: 5:14-cv-1027
`
`
`COMPLAINT FOR PATENT
`INFRINGEMENT
`
`
`DEMAND FOR JURY TRIAL
`
`Plaintiff,
`
`Defendant.
`
`MAXIM INTEGRATED PRODUCTS, INC.,
`
`
`
`v.
`
`THE AMERICAN EXPRESS COMPANY,
`
`
`
`
`
`Maxim Integrated Products, Inc. (“Maxim”) hereby alleges for its Complaint for patent
`
`infringement against defendant The American Express Company (“American Express”) on
`
`personal knowledge as to its own actions and on information and belief as to the actions of others,
`
`as follows:
`
`THE PARTIES
`
`1.
`
`Plaintiff Maxim is a Delaware corporation with places of business at 120 San
`
`Gabriel Drive, Sunnyvale, California 94086, and 9651 Westover Hills, San Antonio, TX 78251.
`
`2.
`
`On information and belief, defendant American Express is a corporation existing
`
`and organized under the laws of New York. American Express is doing business in the Western
`
`District of Texas, and has its principal place of business in New York, NY.
`
`JURISDICTION AND VENUE
`
`3.
`
`This action for patent infringement arises under the patent laws of the United
`
`States, Title 35 of the United States Code.
`
`4.
`
`This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and
`
`1338(a).
`
`5.
`
`Maxim maintains a substantial presence in Texas and this District, and does
`
`1
`
`AMEX 1013 - Page 1 of 7
`
`
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`Case 5:14-cv-01027-XR Document 1 Filed 11/19/14 Page 2 of 7
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`business in Texas and this district, including operation of a semiconductor fabrication facility in
`
`San Antonio, Texas, employing more than 500 people.
`
`6.
`
`This Court has general and specific personal jurisdiction over American Express.
`
`American Express has substantial contacts with the forum as a consequence of conducting
`
`substantial business in the State of Texas and within this district. On information and belief,
`
`American Express has transacted business in Texas and/or in this district, including that it offers
`
`for sale, sells, and advertises its products and services utilizing the claimed systems and methods
`
`with and for customers residing in Texas, including within this district; and provides products
`
`and services directly to consumers in Texas, including within this district. American Express has
`
`committed and continues to commit acts of patent infringement in Texas and this district.
`
`7.
`
`Venue is proper in this District under 28 U.S.C. §§ 1391(b) and (c), and 1400(b)
`
`because a substantial part of the events giving rise to the claims against American Express
`
`occurred and are occurring in this district, and/or because American Express has regular and
`
`established practice of business in this district and has committed acts of infringement in this
`
`district.
`
`THE ASSERTED PATENTS
`
`8.
`
`On August 17, 1999, the United States Patent and Trademark Office duly and
`
`legally issued U.S. Patent No. 5,940,510 (“the ’510 Patent”), entitled “Transfer of Valuable
`
`Information Between a Secure Module and Another Module,” to Stephen M. Curry, Donald W.
`
`Loomis, and Michael L. Bolan. A copy of the ’510 Patent is attached to the Complaint as
`
`Exhibit A.
`
`9.
`
`The ’510 Patent is directed to a system for communicating data securely, such as
`
`for secure mobile financial transactions, including a coprocessor for processing encryption
`
`2
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`AMEX 1013 - Page 2 of 7
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`
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`Case 5:14-cv-01027-XR Document 1 Filed 11/19/14 Page 3 of 7
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`calculations and a real time clock circuit for time stamping data transactions.
`
`10.
`
`On August 15, 2000, the United States Patent and Trademark Office duly and
`
`legally issued U.S. Patent No. 6,105,013 (“the ’013 Patent”), entitled “Method, Apparatus,
`
`System, and Firmware for Secure Transactions,” to Stephen M. Curry, Donald W. Loomis, and
`
`Christopher W. Fox. A copy of the ’013 Patent is attached to the Complaint as Exhibit B.
`
`11.
`
`The ’013 Patent is directed to a secure transaction integrated circuit including a
`
`microcontroller core; a modular exponentiation accelerator circuit or a math coprocessor for
`
`performing or handling encryption and decryption calculations; an input/output circuit for
`
`exchanging data information with an electronic device; and real-time clock or a clock circuit for
`
`providing a time measurement.
`
`12.
`
`On May 22, 2001, the United States Patent and Trademark Office duly and legally
`
`issued U.S. Patent No. 6,237,095 (“the ’095 Patent”), entitled “Apparatus for Transfer of Secure
`
`Information Between a Data Carrying Module and an Electronic Device,” to Stephen M. Curry,
`
`Donald W. Loomis, and Christopher W. Fox. A copy of the ’095 Patent is attached to the
`
`Complaint as Exhibit C.
`
`13.
`
`The ’095 Patent is directed to an apparatus for receiving and transmitting
`
`encrypted data, such as for secure transfers of financial information.
`
`14. Maxim is the owner by assignment of all rights, title, and interest to and in
`
`the ’510,’013, and ’095 Patents (collectively, the “Asserted Patents”).
`
`COUNT I: Infringement of the ’510 Patent
`
`15. Maxim incorporates and realleges paragraphs 1 – 14 above as if fully set forth
`
`herein.
`
`16.
`
`On information and belief, American Express has and continues to infringe one or
`
`3
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`AMEX 1013 - Page 3 of 7
`
`
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`Case 5:14-cv-01027-XR Document 1 Filed 11/19/14 Page 4 of 7
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`more claims of the ’510 Patent pursuant to 35 U.S.C. § 271(a), literally or under the doctrine of
`
`equivalents, by making, using, selling, and/or offering to sell in the United States and without
`
`authority products, devices, systems, and/or components of systems that embody the patented
`
`invention, including for example products, devices, systems and/or components of systems that
`
`include or make use of the “Amex Mobile” smartphone applications. When, for example, these
`
`applications are installed on a portable computing device, such as Android or iOS™ devices, and
`
`combined with components of American Express’s banking infrastructure for performing secure
`
`financial transactions, the resulting systems are made and/or used, thereby infringing, literally or
`
`under the doctrine of equivalents, one or more claims of the ’510 Patent.
`
`17. Maxim has suffered damages as a result of American Express’s infringement of
`
`the ’510 Patent. In addition, Maxim will continue to suffer severe and irreparable harm unless
`
`this Court issues a permanent injunction prohibiting American Express, its agents, servants,
`
`the ’510 Patent.
`
`employees, representatives, and all others acting in active concert therewith from infringing
`
`COUNT II: Infringement of the ’013 Patent
`
`18. Maxim incorporates and realleges paragraphs 1 – 14 above as if fully set forth
`
`herein.
`
`19.
`
`On information and belief, American Express has and continues to infringe one or
`
`more claims of the ’013 Patent pursuant to 35 U.S.C. § 271(a), literally or under the doctrine of
`
`equivalents, by making, using, selling, and/or offering to sell in the United States and without
`
`authority products, devices, systems, and/or components of systems that embody the patented
`
`invention, including for example products, devices, systems and/or components of systems that
`
`include or make use of the “Amex Mobile” smartphone applications. When, for example, these
`
`4
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`AMEX 1013 - Page 4 of 7
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`
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`Case 5:14-cv-01027-XR Document 1 Filed 11/19/14 Page 5 of 7
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`applications are installed on a portable computing device, such as Android or iOS™ devices, the
`
`resulting systems are made and/or used, thereby infringing, literally or under the doctrine of
`
`equivalents, one or more claims of the ’013 Patent.
`
`20. Maxim has suffered damages as a result of American Express’s infringement of
`
`the ’013 Patent. In addition, Maxim will continue to suffer severe and irreparable harm unless
`
`this Court issues a permanent injunction prohibiting American Express, its agents, servants,
`
`the ’013 Patent.
`
`employees, representatives, and all others acting in active concert therewith from infringing
`
`COUNT III: Infringement of the ’095 Patent
`
`21. Maxim incorporates and realleges paragraphs 1 – 14 above as if fully set forth
`
`herein.
`
`22.
`
`On information and belief, American Express has and continues to infringe one or
`
`more claims of the ’095 Patent pursuant to 35 U.S.C. § 271(a), literally or under the doctrine of
`
`equivalents, by making, using, selling, and/or offering to sell in the United States and without
`
`authority products, devices, systems, and/or components of systems that embody the patented
`
`invention, including for example products, devices, systems and/or components of systems that
`
`include or make use of the “Amex Mobile” smartphone applications. When, for example, these
`
`applications are installed on a portable computing device, such as Android or iOS™ devices, the
`
`resulting systems are made and/or used, thereby infringing, literally or under the doctrine of
`
`equivalents, one or more claims of the ’095 Patent.
`
`23. Maxim has suffered damages as a result of American Express’s infringement of
`
`the ’095 Patent. In addition, Maxim will continue to suffer severe and irreparable harm unless
`
`this Court issues a permanent injunction prohibiting American Express, its agents, servants,
`
`5
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`AMEX 1013 - Page 5 of 7
`
`
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`Case 5:14-cv-01027-XR Document 1 Filed 11/19/14 Page 6 of 7
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`employees, representatives, and all others acting in active concert therewith from infringing
`
`the ’095 Patent.
`
`PRAYER FOR RELIEF
`
`For the above reasons, Maxim respectfully requests that this Court grant the following
`
`relief in favor of Maxim and against American Express:
`
`(a)
`
`A judgment in favor of Maxim that American Express has infringed (either
`
`literally or under the doctrine of equivalents) one or more claims of the Asserted
`
`Patents;
`
`(b)
`
`A permanent injunction enjoining American Express and its officers, directors,
`
`agents, servants, affiliates, employees, divisions, branches, subsidiaries, parents,
`
`and all others acting in active concert or participation with American Express,
`
`from infringing the Asserted Patents;
`
`(c)
`
`A judgment and order requiring American Express to pay Maxim its damages,
`
`costs, expenses, and pre-judgment and post-judgment interest for American
`
`Express’s infringement of the Asserted Patents;
`
`(d)
`
`A judgment and order finding that this is an exceptional case within the meaning
`
`of 35 U.S.C. § 285 and awarding Maxim its reasonable attorney fees; and
`
`(e)
`
`Any and all such other relief as the Court deems just and proper.
`
`DEMAND FOR JURY TRIAL
`
`Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, Plaintiff Maxim demands
`
`a trial by jury of this action.
`
`
`
`
`
`
`
`6
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`AMEX 1013 - Page 6 of 7
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`
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`Case 5:14-cv-01027-XR Document 1 Filed 11/19/14 Page 7 of 7
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`Dated: November 19, 2014
`
`
`
`
`
`By, /s/ Matthew D. Powers
`Matthew D. Powers
`CA Bar No. 104795 (Admitted W.D. Tex.)
`Steven S. Cherensky
`CA Bar No. 168275 (Admitted W.D. Tex.)
`TENSEGRITY LAW GROUP LLP
`555 Twin Dolphin Drive, Suite 360
`Redwood Shores, CA 94065
`Phone: (650) 802-6000
`Fax: (650) 802-6001
`Email:
`matthew.powers@tensegritylawgroup.com
`steven.cherensky@tensegritylawgroup.com
`
`Attorneys for Plaintiff,
`Maxim Integrated Products, Inc.
`
`7
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`AMEX 1013 - Page 7 of 7
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`
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