Case 5:14-cv-01028-XR Document 20 Filed 02/16/15 Page 1 of 13
`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`SAN ANTONIO DIVISION
`
` CASE NO.: 5:14-cv-1028-XR
`
`
`AMENDED COMPLAINT FOR
`PATENT INFRINGEMENT
`
`
`DEMAND FOR JURY TRIAL
`
`Plaintiff,
`
`Defendant.
`
`MAXIM INTEGRATED PRODUCTS, INC.,
`
`
`
`v.
`
`COMPASS BANK, d/b/a BBVA COMPASS,
`
`
`
`
`
`MAXIM INTEGRATED PRODUCTS, INC.’S FIRST AMENDED COMPLAINT
`
`Maxim Integrated Products, Inc. (“Maxim”) hereby alleges for its Complaint for patent
`
`infringement against defendant Compass Bank, N.A., a/k/a BBVA Compass (“BBVA
`
`Compass”) 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 BBVA Compass is a bank National
`
`Association that is a wholly-owned subsidiary of BBVA Compass Bancshares, Inc., a financial
`
`holding company with its principal place of business in Birmingham, Alabama. BBVA Compass
`
`is doing business in the Western District of Texas, and has its principal place of business in
`
`Birmingham, Alabama.
`
`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.
`
`COMPASS EXH. 1020 - Page 1 of 13
`
`

`

`Case 5:14-cv-01028-XR Document 20 Filed 02/16/15 Page 2 of 13
`
`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
`
`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 BBVA Compass.
`
`BBVA Compass 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,
`
`BBVA Compass maintains branches within Texas and this District; has transacted business in
`
`Texas and/or in this district, including through the branches that it maintains within Texas and
`
`this district; 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.
`
`BBVA Compass 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 BBVA Compass
`
`occurred and are occurring in this district, and/or because BBVA Compass 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
`
`COMPASS EXH. 1020 - Page 2 of 13
`
`

`

`Case 5:14-cv-01028-XR Document 20 Filed 02/16/15 Page 3 of 13
`
`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
`
`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
`
`COMPASS EXH. 1020 - Page 3 of 13
`
`

`

`Case 5:14-cv-01028-XR Document 20 Filed 02/16/15 Page 4 of 13
`
`the ’510,’013, and ’095 Patents (collectively, the “Asserted Patents”).
`
`15.
`
`BBVA Compass was served with Maxim’s original Complaint, attached as
`
`Exhibit D, on December 8, 2014. A copy of the executed summons for BBVA Compass is
`
`attached as Exhibit E.
`
`16.
`
`At least by no later than the date of service of Maxim’s original Complaint,
`
`BBVA Compass had actual notice of each of the Asserted Patents and actual notice that its
`
`actions constituted and continue to constitute infringement of at least one claim of each of the
`
`Asserted Patents.
`
`COUNT I: Infringement of the ’510 Patent
`
`17. Maxim incorporates and realleges paragraphs 1 – 16 above as if fully set forth
`
`herein.
`
`18.
`
`On information and belief, BBVA Compass has and continues to infringe one or
`
`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 “BBVA Compass Mobile Banking” 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 BBVA Compass’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.
`
`19.
`
`On information and belief, BBVA Compass has induced and continues to induce
`
`infringement of the ’510 Patent pursuant to 35 U.S.C. § 271(b) by encouraging its customers and
`
`COMPASS EXH. 1020 - Page 4 of 13
`
`

`

`Case 5:14-cv-01028-XR Document 20 Filed 02/16/15 Page 5 of 13
`
`other third parties to make and/or use the claimed system for communicating data securely,
`
`including a coprocessor for processing encryption calculations and a real time clock circuit for
`
`time stamping data transactions. Such making and/or using of the claimed system for
`
`communicating data securely constitutes infringement, literally or under the doctrine of
`
`equivalents, of one or more claims of the ’510 Patent by such customers or third parties. BBVA
`
`Compass’s acts of encouragement include: providing and intending its customers to use the
`
`“BBVA Compass Mobile Banking” smartphone applications; providing other components of the
`
`system that make use of these applications, including, e.g., servers and data storage; advertising
`
`these applications through its own and third-party websites; and providing instructions to use
`
`these applications.
`
`20.
`
`BBVA Compass has proceeded in this manner despite its actual knowledge of
`
`the ’510 Patent and that the specific actions it actively induced on the part of its customers and
`
`other third parties constitute infringement of the ’510 Patent, at least as of the date of service of
`
`Maxim’s original Complaint. At the very least, because BBVA Compass has been and remains
`
`on notice of the ’510 Patent and the accused infringement, it has been and remains willfully blind
`
`regarding the infringement it has induced and continues to induce.
`
`21.
`
`On information and belief, BBVA Compass has contributed and continues to
`
`contribute to the infringement of the ’510 Patent pursuant to 35 U.S.C. § 271(c) by, without
`
`authority, selling and/or offering to sell within the United States, importing, and/or supplying
`
`components of the claimed system for communicating data securely, such as the “BBVA
`
`Compass Mobile Banking” smartphone applications. When, for example, these applications are
`
`installed on a portable device and connected to components of BBVA Compass’s banking
`
`infrastructure, the claimed systems are made and/or used, thereby infringing, literally or under
`
`COMPASS EXH. 1020 - Page 5 of 13
`
`

`

`Case 5:14-cv-01028-XR Document 20 Filed 02/16/15 Page 6 of 13
`
`the doctrine of equivalents, one or more claims of the ’510 Patent. These components supplied
`
`by BBVA Compass, including, e.g., these applications, constitute material parts of the claimed
`
`inventions of the ’510 Patent.
`
`22.
`
`On information and belief, at least as of the date of service of Maxim’s original
`
`Complaint, BBVA Compass knows, for the reasons described in detail above, that these
`
`components are especially made and/or especially adapted for use in infringing the ’510 Patent.
`
`Moreover, these components are not staple articles of commerce suitable for substantial
`
`noninfringing use at least because the components have no use apart from infringing the Asserted
`
`Patents, including the ’510 Patent. For example, at least the “BBVA Compass Mobile Banking”
`
`smartphone applications are used only in conjunction with or as part of the claimed systems for
`
`securely communicating data.
`
`23. Maxim has suffered damages as a result of BBVA Compass’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 BBVA Compass, its agents, servants,
`
`employees, representatives, and all others acting in active concert therewith from infringing
`
`the ’510 Patent.  
`
`COUNT II: Infringement of the ’013 Patent
`
`24. Maxim incorporates and realleges paragraphs 1 – 16 above as if fully set forth
`
`herein.
`
`25.
`
`On information and belief, BBVA Compass 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
`
`COMPASS EXH. 1020 - Page 6 of 13
`
`

`

`Case 5:14-cv-01028-XR Document 20 Filed 02/16/15 Page 7 of 13
`
`invention, including for example products, devices, systems and/or components of systems that
`
`include or make use of the “BBVA Compass Mobile Banking” 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 ’013 Patent.
`
`26.
`
`On information and belief, BBVA Compass has induced and continues to induce
`
`infringement of the ’013 Patent pursuant to 35 U.S.C. § 271(b) by encouraging its customers and
`
`other third parties to make and/or use the claimed secure transaction integrated circuit. Such
`
`making and/or using of the claimed apparatus constitutes infringement, literally or under the
`
`doctrine of equivalents, of one or more claims of the ’013 Patent by such customers or third
`
`parties. BBVA Compass’s acts of encouragement include: providing and intending its customers
`
`to use the “BBVA Compass Mobile Banking” smartphone applications; providing other
`
`components of the system that make use of these applications, including, e.g., servers and data
`
`storage; advertising these applications through its own and third-party websites; and providing
`
`instructions to use these applications.
`
`27.
`
`BBVA Compass has proceeded in this manner despite its actual knowledge of
`
`the ’013 Patent and that the specific actions it actively induced on the part of its customers and
`
`other third parties constitute infringement of the ’013 Patent, at least as of the date of service of
`
`Maxim’s original Complaint. At the very least, because BBVA Compass has been and remains
`
`on notice of the ’013 Patent and the accused infringement, it has been and remains willfully blind
`
`regarding the infringement it has induced and continues to induce.
`
`28.
`
`On information and belief, BBVA Compass has contributed and continues to
`
`contribute to the infringement of the ’013 Patent pursuant to 35 U.S.C. § 271(c) by, without
`
`COMPASS EXH. 1020 - Page 7 of 13
`
`

`

`Case 5:14-cv-01028-XR Document 20 Filed 02/16/15 Page 8 of 13
`
`authority, selling and/or offering to sell within the United States, importing, and/or supplying
`
`components of a system, including the “BBVA Compass Mobile Banking” smartphone
`
`applications, which system as a result includes the claimed secure transaction integrated circuit.
`
`When, for example, these applications are installed on a portable device, the resulting systems
`
`are made and/or used, thereby infringing, literally or under the doctrine of equivalents, of one or
`
`more claims of the ’013 Patent. These components supplied by BBVA Compass, including, e.g.,
`
`these applications, constitute material parts of the claimed inventions of the ’013 Patent.
`
`29.
`
`On information and belief, at least as of the date of service of Maxim’s original
`
`Complaint, BBVA Compass knows, for the reasons described in detail above, that these
`
`components are especially made and/or especially adapted for use in infringing the ’013 Patent.
`
`Moreover, these components are not staple articles of commerce suitable for substantial
`
`noninfringing use at least because the components have no use apart from infringing the Asserted
`
`Patents, including the ’013 Patent. For example, at least the “BBVA Compass Mobile Banking”
`
`smartphone applications are used only in conjunction with or as part of the claimed secure
`
`transaction integrated circuit.
`
`30. Maxim has suffered damages as a result of BBVA Compass’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 BBVA Compass, its agents, servants,
`
`employees, representatives, and all others acting in active concert therewith from infringing
`
`the ’013 Patent.  
`
`COUNT III: Infringement of the ’095 Patent
`
`31. Maxim incorporates and realleges paragraphs 1 – 16 above as if fully set forth
`
`herein.
`
`COMPASS EXH. 1020 - Page 8 of 13
`
`

`

`Case 5:14-cv-01028-XR Document 20 Filed 02/16/15 Page 9 of 13
`
`32.
`
`On information and belief, BBVA Compass 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 “BBVA Compass Mobile Banking” 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.
`
`33.
`
`On information and belief, BBVA Compass has induced and continues to induce
`
`infringement of the ’095 Patent pursuant to 35 U.S.C. § 271(b) by encouraging its customers and
`
`other third parties to make and/or use the claimed apparatus for receiving and transmitting
`
`encrypted data. Such making and/or using of the claimed apparatus constitutes infringement,
`
`literally or under the doctrine of equivalents, of one or more claims of the ’095 Patent by such
`
`customers or third parties. BBVA Compass’s acts of encouragement include: providing and
`
`intending its customers to use the “BBVA Compass Mobile Banking” smartphone applications;
`
`providing other components of the system that make use of these applications, including, e.g.,
`
`servers and data storage; advertising these applications through its own and third-party websites;
`
`and providing instructions to use these applications.
`
`34.
`
`BBVA Compass has proceeded in this manner despite its actual knowledge of
`
`the ’095 Patent and that the specific actions it actively induced on the part of its customers and
`
`other third parties constitute infringement of the ’095 Patent, at least as of the date of service of
`
`Maxim’s original Complaint. At the very least, because BBVA Compass has been and remains
`
`COMPASS EXH. 1020 - Page 9 of 13
`
`

`

`Case 5:14-cv-01028-XR Document 20 Filed 02/16/15 Page 10 of 13
`
`on notice of the ’095 Patent and the accused infringement, it has been and remains willfully blind
`
`regarding the infringement it has induced and continues to induce.
`
`35.
`
`On information and belief, BBVA Compass has contributed and continues to
`
`contribute to the infringement of the ’095 Patent pursuant to 35 U.S.C. § 271(c) by, without
`
`authority, selling and/or offering to sell within the United States, importing, and/or supplying
`
`components of a system, including the “BBVA Compass Mobile Banking” smartphone
`
`applications, which system as a result embodies the claimed apparatus. When, for example,
`
`these applications are installed on a portable device, 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. These components supplied by BBVA Compass, including, e.g., these applications,
`
`constitute material parts of the claimed inventions of the ’095 Patent.
`
`36.
`
`On information and belief, at least as of the date of service of Maxim’s original
`
`Complaint, BBVA Compass knows, for the reasons described in detail above, that these
`
`components are especially made and/or especially adapted for use in infringing the ’095 Patent.
`
`Moreover, these components are not staple articles of commerce suitable for substantial
`
`noninfringing use at least because the components have no use apart from infringing the Asserted
`
`Patents, including the ’095 Patent. For example, at least the “BBVA Compass Mobile Banking”
`
`smartphone applications are used only in conjunction with or as part of the claimed apparatus.
`
`37. Maxim has suffered damages as a result of BBVA Compass’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 BBVA Compass, its agents, servants,
`
`employees, representatives, and all others acting in active concert therewith from infringing
`
`the ’095 Patent.  
`
`COMPASS EXH. 1020 - Page 10 of 13
`
`

`

`Case 5:14-cv-01028-XR Document 20 Filed 02/16/15 Page 11 of 13
`
`PRAYER FOR RELIEF
`
`For the above reasons, Maxim respectfully requests that this Court grant the following
`
`relief in favor of Maxim and against BBVA Compass:
`
`(a)
`
`A judgment in favor of Maxim that BBVA Compass has infringed (either literally
`
`or under the doctrine of equivalents) one or more claims of the Asserted Patents;
`
`(b)
`
`A permanent injunction enjoining BBVA Compass and its officers, directors,
`
`agents, servants, affiliates, employees, divisions, branches, subsidiaries, parents,
`
`and all others acting in active concert or participation with BBVA Compass, from
`
`infringing the Asserted Patents;
`
`(c)
`
`A judgment and order requiring BBVA Compass to pay Maxim its damages,
`
`costs, expenses, and pre-judgment and post-judgment interest for BBVA
`
`Compass’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.
`
`
`
`Dated: February 16, 2015
`
`
`
`By, /s/ Matthew D. Powers
`
`Henry B. Gonzalez III
`State Bar No. 00794952
`hbg@gcaklaw.com
`GONZALEZ, CHISCANO, ANGULO &
`KASSON, PC
`613 NW Loop 410, Suite 800
`
`COMPASS EXH. 1020 - Page 11 of 13
`
`

`

`Case 5:14-cv-01028-XR Document 20 Filed 02/16/15 Page 12 of 13
`
`San Antonio, Texas 78216
`
`Of Counsel:
`Matthew D. Powers
`CA Bar No. 104795
`Steven S. Cherensky
`CA Bar No. 168275
`TENSEGRITY LAW GROUP LLP
`555 Twin Dolphin Drive, Suite 650
`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.
`
`
`
`
`
`COMPASS EXH. 1020 - Page 12 of 13
`
`

`

`Case 5:14-cv-01028-XR Document 20 Filed 02/16/15 Page 13 of 13
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that on February 16, 2015, the foregoing document was
`
`electronically filed with the Clerk of the Court using the CM/ECF system, which will issue an
`
`electronic notification of filing to all counsel of record.
`
`
`
`
`/s/ Matthew D. Powers
`Matthew D. Powers
`
`
`
`
`
`COMPASS EXH. 1020 - Page 13 of 13
`
`