Case 1:19-cv-11586-IT Document 51-1 Filed 03/23/20 Page 1 of 32
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`Exhibit A
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`Case 2:15-cv-07562-DOC-GJS Document 1 Filed 09/25/15 Page 1 of 31 Page ID #:1Case 1:19-cv-11586-IT Document 51-1 Filed 03/23/20 Page 2 of 32
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`William J. O’Brien (Bar No. 99526)
`wobrien@onellp.com
`ONE LLP
`9301 Wilshire Boulevard
`Beverly Hills, California 90401
`Telephone: (310) 866-5158
`Facsimile:
`(310) 943- 2085
`
`Joseph K. Liu (Bar No. 216227)
`<jliu@onellp.com>
`ONE LLP
`4000 MacArthur Boulevard
`East Tower, Suite 500
`Newport Beach, California 92660
`Telephone: (949) 502-2870
`Facsimile: (949) 258-5081
`
`Attorneys for Plaintiff,
`Secured Mail Solutions, LLC
`
`
`UNITED STATES DISTRICT COURT
`
`CENTRAL DISTRICT OF CALIFORNIA
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`SECURED MAIL SOLUTIONS, LLC,
`
`Plaintiff,
`
`v.
`
`UNIVERSAL WILDE, INC.,
`
`Defendant.
`
`
`
`
`
`
`
`
`Case No.
`
`COMPLAINT FOR PATENT
`INFRINGEMENT, INJUNCTION, AND
`DAMAGES
`
`DEMAND FOR JURY TRIAL
`
`
`Plaintiff, Secured Mail Solutions, LLC (“SMS”), alleges:
`JURISDICTION AND VENUE
`This Court has subject matter jurisdiction of this case under 28 U.S.C. §§
`1.
`1338(a), because this case arises under the patent laws of the United States, 35 U.S.C.
`§§ 1 et seq. Venue is proper in this district under 28 U.S.C. §§ 1391(b)-(c) and 1400(b)
`in that a substantial part of the events giving rise to the claims occurred in this district.
`
`
`
`COMPLAINT FOR PATENT INFRINGEMENT, INJUNCTION, AND DAMAGES
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`

`

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`Case 2:15-cv-07562-DOC-GJS Document 1 Filed 09/25/15 Page 2 of 31 Page ID #:2Case 1:19-cv-11586-IT Document 51-1 Filed 03/23/20 Page 3 of 32
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`SMS is informed and believes, and on that basis alleges, that Defendant, Universal
`Wilde, Inc. (“UW”), has a regular and established practice of business in this district
`and has committed acts of infringement in this district.
`THE PARTIES
`SMS is a limited liability company duly organized under the laws of the
`2.
`state of Nevada. SMS also does business in this judicial district.
`3.
`SMS was founded by Todd Fitzsimmons to pursue the using and licensing
`of his inventions in the field of mail and mail information services and technology.
`Mr. Fitzsimmons’s inventions resulted in each of the seven United States patents that
`are asserted in this case.
`3.
`SMS is informed and believes, and on that basis alleges, that Defendant
`UW is a corporation duly organized and existing under the laws of the state of
`Massachusetts, with its principal place of business at 26 Dartmouth Street, Westwood,
`MA 02090.
`UW describes its business as “provid[ing] technology-enabled, data-
`4.
`driven marketing communication solutions from thought to distribution.” UW says on
`its website that its “full-service capabilities include offset and digital print – variable
`print and print-on-demand; direct mail services; automated fulfillment and distribution
`programs; and agency services.” UW further says that it “service[s] a wide range of
`industries including Financial Services, Healthcare, Pharmaceutical, Insurance,
`Education, Large Commercial and Retail.”
`5.
`SMS alleges below that Defendant UW infringes numerous claims of
`SMS’s seven patents in suit.
`SMS’S PATENTS AND UW’S INFRINGEMENT
`Overview
`Todd Fitzsimmons is an electrical engineer and a patent attorney who
`6.
`previously worked in the shipping and courier industry. After the September 11
`terrorist attacks, and the anthrax attacks via U.S. mail thereafter, Mr. Fitzsimmons
`
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`COMPLAINT FOR PATENT INFRINGEMENT, INJUNCTION, AND DAMAGES
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`Case 2:15-cv-07562-DOC-GJS Document 1 Filed 09/25/15 Page 3 of 31 Page ID #:3Case 1:19-cv-11586-IT Document 51-1 Filed 03/23/20 Page 4 of 32
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`began developing new technologies to identify, track, and provide information on mail
`objects, such as letters and packages.
`7.
`On October 16, 2001, Mr. Fitzsimmons filed a provisional patent
`application, followed by a non-provisional patent application on October 15, 2002, and
`an ongoing series of continuation applications thereafter. After years of examination
`by the United States Patent and Trademark Office, Mr. Fitzsimmons has received the
`following seven patents, all of which he has assigned to SMS:
`Patent
`Title
`Issued
`Number
`
`Copy
`Attached to
`Complaint as
`Exhibit A
`
`7,814,032
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`7,818,268
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`8,073,787
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`8,260,629
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`8,429,093
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`8,910,860
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`9,105,002
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`SYSTEM AND METHOD FOR
`MAIL VERIFICATION
`SYSTEM AND METHOD FOR
`MAIL VERIFICATION
`SYSTEM AND METHOD FOR
`MAIL VERIFICATION
`SYSTEM AND METHOD FOR
`PROVIDING AN
`ADVERTISEMENT TO A
`RECIPIENT OF A PHYSICAL
`MAIL OBJECT
`SYSTEM AND METHOD FOR
`PROVIDING INFORMATION TO A
`RECIPIENT OF A PHYSICAL
`MAIL OBJECT
`SYSTEMS AND METHOD FOR
`PROVIDING INFORMATION TO A
`RECIPIENT OF A PHYSICAL
`MAIL OBJECT
`SYSTEM AND METHOD FOR
`PROVIDING INFORMATION TO A
`RECIPIENT OF A PHYSICAL
`MAIL OBJECT
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`Oct. 12, 2010
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`Oct. 19, 2010
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`Exhibit B
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`Dec. 6, 2011
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`Exhibit C
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`Sept. 4, 2012
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`Exhibit D
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`Apr. 23, 2013
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`Exhibit E
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`Dec. 16, 2014
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`Exhibit F
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`Aug. 11, 2015
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`Exhibit G
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`3
`COMPLAINT FOR PATENT INFRINGEMENT, INJUNCTION, AND DAMAGES
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`Case 2:15-cv-07562-DOC-GJS Document 1 Filed 09/25/15 Page 4 of 31 Page ID #:4Case 1:19-cv-11586-IT Document 51-1 Filed 03/23/20 Page 5 of 32
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`These seven patents in suit disclose and claim various systems and
`8.
`methods for processing, verifying, or authenticating mail data. In some embodiments
`of the claimed inventions, mail data is affixed to a mail object and includes (or is
`linked to) information related to the mail object (for example, information on the
`sender of the mail object or the contents of the mail object). This information can then
`be used by various individuals or entities (for example, a mailing service, a mail
`carrier, or a recipient) to ensure that the mail object is secure and can safely be
`processed, routed and opened. In fact, the Patent Office granted special examination
`status to the application for U.S. Patent No. 7,818,268, because it related to “counter
`terrorism” technology that “reduces the risk of [a] terrorist attack.” In addition to
`ensuring safety and security of mail, mail data claimed in the patents in suit can be
`used by mailing services to more effectively process and route mail objects and can
`also be used by recipients to obtain additional information related to mail objects.
`Intelligent Mail Barcodes
`SMS’s patents in suit contain claims that cover technology used by UW in
`9.
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`connection with what the United States Postal Service calls “Intelligent Mail
`Barcodes” (IMb’s). The Postal Service adopted IMb’s in 2009, long after Mr.
`Fitzsimmons invented the subject matters of the patents in suit and long after he filed
`his initial patent application in 2001. SMS’s patents containing claims related to IMb
`technology include U.S. Patents Nos. 7,814,032, 7,818,268, and 8,073,787
`(collectively, the “IMb-Related Patents”).
`10. One example of the IMb-Related Patents’ claims, and UW’s infringement
`of those patents, is provided by Claim 1 of U.S. Patent No. 7,818,268. That claim
`reads as follows (with bracketed letters added for reference):
`1. A method of verifying mail identification data, comprising:
`[a]
`affixing mail identification data to at least one mail object, said mail
`identification data comprising a single set of encoded data that includes at least a
`unique identifier, sender data, recipient data and shipping method data, wherein
`
`
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`COMPLAINT FOR PATENT INFRINGEMENT, INJUNCTION, AND DAMAGES
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`

`

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`Case 2:15-cv-07562-DOC-GJS Document 1 Filed 09/25/15 Page 5 of 31 Page ID #:5Case 1:19-cv-11586-IT Document 51-1 Filed 03/23/20 Page 6 of 32
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`said unique identifier consists of a numeric value assigned by a sender of said at
`least one mail object;
`[b]
`storing at least a verifying portion of said mail identification data;
`[c]
`receiving by a computer at least an authenticating portion of said mail
`identification data from at least one reception device via a network, wherein said
`authenticating portion of said mail identification data comprises at least said
`sender data and said shipping method data; and
`[d] providing by said computer mail verification data via said network when
`said authenticating portion of said mail identification data corresponds with said
`verifying portion of said mail identification data.
`
`11. UW’s own public documents and publications of the U.S. Postal Service
`show that UW is making, using, selling, and offering for sale a system and method for
`generating, storing, and processing mail identification data that infringes multiple
`claims of the IMb-Related Patents. For example, UW uses software and hardware
`(“IMb-Related Products”) to generate various barcodes, including the Intelligent Mail
`barcode. The IMb-Related Products are then used to affix IMb’s on mail objects and
`to store at least portions of the IMb’s (together with related information) in a storage
`device. The IMb-Related Products are then used to interrogate the stored information,
`resulting in the communication of data (including verification data) over a network.
`12. Comparing the operation of UW’s IMb-Related Products to Claim 1 of the
`’268 Patent, SMS is informed and believes, and on that basis alleges, that these
`products are used to perform all the steps of the patented method, including:
`[a]
`affixing mail identification data (an IMb) to at least one mail object,
`where the IMb is a single set of encoded data that includes at least a unique
`identifier (a serial number), sender data (a mailer identifier), recipient data (a
`delivery point ZIP code), and shipping method data (a service type identifier),
`wherein the unique identifier (serial number) consists of a numeric value
`assigned by a sender of the mail object;
`
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`5
`COMPLAINT FOR PATENT INFRINGEMENT, INJUNCTION, AND DAMAGES
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`

`

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`Case 2:15-cv-07562-DOC-GJS Document 1 Filed 09/25/15 Page 6 of 31 Page ID #:6Case 1:19-cv-11586-IT Document 51-1 Filed 03/23/20 Page 7 of 32
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`[b]
`storing a verifying portion of the IMb;
`[c]
`receiving an authenticating portion of the IMb from a reception device
`(for example, from a device operated by the USPS), wherein the second portion
`of the IMb includes at least sender data (the mailer identifier) and shipping
`method data (the service type identifier); and
`[d] providing information on the mail object (such as mail verification data)
`when the authenticating portion of the IMb (the portion received from USPS)
`corresponds with the verifying portion of the IMb (the portion stored by UW).
`13. SMS is informed and believes, and on that basis alleges, that UW directly
`uses the IMb-Related Products as described above, and UW is therefore directly
`infringing the IMb-Related Patents. SMS is also informed and believes, and on that
`basis alleges, that UW induces others to infringe the IMb-Related Patents and
`contributes to such infringement by others—for example, mail recipients, customers, or
`partners.
`14. Evidence of such direct and indirect infringement can be found on UW’s
`website, which says that UW offers “two levels of Intelligent Mail barcode service,
`Basic and Full,” and that, “[w]ith Full Service, mail delivery status is tracked.” UW
`says that its “[c]ustomer service teams can use real-time delivery knowledge to
`respond to customer calls, to update anxious customers on when outbound mail will
`arrive, or to see if the inbound check really is ‘in the mail.’” UW says that it has “the
`software and the expertise to help,” to generate “Standard and Customized Reporting”
`and to provide “Advanced Mail Tracking.” Corresponding U.S. Postal Service
`specifications and user guides confirm that these services provided by UW entail the
`use of methods and products covered by SMS’s IMb-Related Patents.
`15. UW has been aware of the IMb-Related Patents and of SMS’s contention
`that UW is directly and indirectly infringing them since at least August 18, 2015, but
`UW continues to use the IMb-Related Products to infringe the Asserted Patents.
`
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`6
`COMPLAINT FOR PATENT INFRINGEMENT, INJUNCTION, AND DAMAGES
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`

`

`
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`Case 2:15-cv-07562-DOC-GJS Document 1 Filed 09/25/15 Page 7 of 31 Page ID #:7Case 1:19-cv-11586-IT Document 51-1 Filed 03/23/20 Page 8 of 32
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`16. On August 17, 2015, counsel for SMS sent a letter to UW identifying the
`patents in suit and the infringing activities of UW. A true and correct copy of this
`letter, which was delivered to UW on August 18, 2015, is Exhibit H to this Complaint.
`This letter notified UW that it was “making, using, selling, and offering for sale a
`system and method for generating, storing, and processing mail identification data that
`infringes multiple claims of the IMb-Related Patents under 35 U.S.C. Section 271. For
`example, Universal Wilde uses software and hardware (‘IMB-Related Products’) to
`generate various barcodes, including the Intelligent Mail barcode (‘IMb’). The IMb-
`Related Products are then used to affix IMbs on mail objects and to store at least
`portions of the IMbs (together with related information) in a storage device. The IMb-
`Related Products are then used to interrogate the stored information, resulting in the
`communication of data (including verification data) over a network.”
`Personalized Quick Response Codes
`17. SMS’s patents in suit contain claims that cover technology used by UW in
`connection with personalized quick response (QR) codes. The mail industry’s use of
`QR codes began in 2007, long after Todd Fitzsimmons invented the subject matters of
`the patents in suit and long after he filed his initial patent application in 2001. SMS’s
`patents containing claims related to QR code technology include U.S. Patents Nos.
`8,260,629 and 8,429,093 (collectively, the “QR-Related Patents”).
`18. One example of the QR-Related Patents’ claims, and UW’s infringement
`of those patents, is provided by Claim 1 of U.S. Patent No. 8,429,093. That claim
`reads as follows (with bracketed letters added for reference):
`1. A method for providing electronic data to a recipient of a mail object,
`comprising:
`[a] Generating, by a processor, a barcode for a mail object, said barcode
`including at least a first set of mail data, said first set of mail data including data
`corresponding to said recipient of said mail object;
`[b] affixing said barcode to said mail object;
`
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`7
`COMPLAINT FOR PATENT INFRINGEMENT, INJUNCTION, AND DAMAGES
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`

`

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`Case 2:15-cv-07562-DOC-GJS Document 1 Filed 09/25/15 Page 8 of 31 Page ID #:8Case 1:19-cv-11586-IT Document 51-1 Filed 03/23/20 Page 9 of 32
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`[c]
`submitting said mail object to a mail carrier for delivery to said recipient
`of said mail object;
`[d]
`receiving said first set of mail data, including data corresponding to said
`recipient of said mail object, from a reception device of said recipient via a
`network;
`[e] providing said electronic data to said reception device via said network in
`response to receiving said first set of mail data, said electronic data including a
`content of said mail object;
`[f]
` wherein said reception device displays said electronic data to a recipient
`of said mail object by displaying said electronic data on a screen of said
`reception device.
`19. UW’s own public documents show that UW is making, using, selling, and
`offering for sale a system and method for generating, affixing, and processing mail
`data that infringes multiple claims of SMS’s QR-Related Patents. For example, UW
`uses hardware and software (“QR-Related Products”) to generate personalized (or
`variable) QR codes. The QR-Related Products are then used to affix each personalized
`QR code onto a mail object and store related electronic data in a storage device. Then,
`the QR-Related Products are used to provide the related electronic data to a reception
`device (such as a smart phone or tablet) in response to the reception device scanning
`the personalized QR code on the mail object.
`20. Comparing the operation of UW’s QR-Related Products to Claim 1 of the
`’093 Patent, SMS is informed and believes, and on that basis alleges, that these
`products are used to perform all the steps of the patented method, including:
`[a] generating a barcode that includes data corresponding to a recipient of a
`mail object (the QR code, with a personalized network location corresponding to
`a recipient of a mail object),
`[b] affixing the QR code on the mail object (such as a letter or package),
`[c]
`submitting the mail object to a mail carrier (the USPS) for delivery to the
`
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`8
`COMPLAINT FOR PATENT INFRINGEMENT, INJUNCTION, AND DAMAGES
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`

`

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`Case 2:15-cv-07562-DOC-GJS Document 1 Filed 09/25/15 Page 9 of 31 Page ID #:9Case 1:19-cv-11586-IT Document 51-1 Filed 03/23/20 Page 10 of 32
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`recipient,
`[d]
`receiving the data corresponding to a recipient of a mail object (the QR
`code) via a network (for example, the Internet) from a reception device (such as
`a smart phone or tablet) operated by the recipient, and
`[e] providing electronic data to the reception device via the network in
`response to receiving the QR code, said electronic data including a content of the
`mail object (for example, references to the recipient and subject matter of the
`mail),
`[f] wherein said reception device displays the data to a recipient by
`displaying it on a screen of the reception device (such as the screen of a smart
`phone or tablet).
`21. SMS is informed and believes, and on that basis alleges, that UW directly
`uses the QR-Related Products as described above, and UW is therefore directly
`infringing the QR-Related Patents. SMS is also informed and believes, and on that
`basis alleges, that UW induces others to infringe the QR-Related Patents and
`contributes to such infringement by others—for example, mail recipients, customers, or
`partners. UW does this, for example, by inducing customers and mail recipients to
`participate in a personalized QR code program (for example, inducing customers to
`store the electronic data in a storage device and provide the electronic data to the
`reception device, and inducing recipients to scan the personalized QR codes).
`22. Evidence of such direct and indirect infringement can be found on UW’s
`website, which says that UW’s “[v]ariable 2D codes [are] interactive codes [that] can
`contain links that automatically send users to a specific website” and can be used to
`provide “[p]roduct traceability when combined with variable data.” UW’s website
`further says that “Universal Wilde can produce QR codes for inclusion on personalized
`print” and “can produce QR codes for unique or general URLs.” The website says that
`“[a]dding QR codes to printed materials means one more avenue Universal Wilde can
`use to provide value. It’s another way we help you achieve a better return on
`
`
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`9
`COMPLAINT FOR PATENT INFRINGEMENT, INJUNCTION, AND DAMAGES
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`

`

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`Case 2:15-cv-07562-DOC-GJS Document 1 Filed 09/25/15 Page 10 of 31 Page ID #:10Case 1:19-cv-11586-IT Document 51-1 Filed 03/23/20 Page 11 of 32
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`investment for your marketing dollars.”
`23. UW has been aware of the QR-Related Patents and of SMS’s contention
`that UW is directly and indirectly infringing them since at least August 18, 2015, but
`UW continues to use the QR-Related Products to infringe the Asserted Patents.
`24. On August 17, 2015, counsel for SMS sent a letter to UW (Exhibit H to
`this Complaint) identifying the patents in suit and the infringing activities of UW. This
`letter notified UW that it was “making, using, selling, and offering for sale a system
`and method for generating, affixing, and processing mail data that infringes multiple
`claims of SMS’s QR-Related Patents. For example, Universal Wilde uses software
`and hardware (‘QR-Related Products’) to generate personalized (or variable) quick
`response (‘QR’) codes. The QR-Related Products are then used to affix each
`personalized QR code onto a mail object and store related electronic data in a storage
`device. The QR-Related Products are then used to provide the related electronic data
`to a reception device (such as a smart phone or tablet) in response to the reception
`device scanning the personalized QR code on the mail object.”
`Personalized Universal Resource Locators
` SMS’s patents in suit contain claims that cover technology used by UW
`25.
`in connection with personalized uniform resource locators (pURLs). The mail
`industry’s use of pURLs began long after Todd Fitzsimmons invented the subject
`matters of the patents in suit and long after he filed his initial patent application in
`2001. SMS’s patents containing claims related to pURL technology include U.S.
`Patents Nos. 8,910,860 and 9,105,002 (collectively, the “pURL-Related Patents”).
`26. One example of the pURL-Related Patents’ claims, and UW’s
`infringement of those patents, is provided by Claim 1 of U.S. Patent No. 9,105,002.
`That claim reads as follows (with bracketed letters added for reference):
`1. A method for providing electronic data to a recipient of a mail object,
`comprising:
`[a] using an output device to affix a single set of mail ID data to said mail
`
`
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`10
`COMPLAINT FOR PATENT INFRINGEMENT, INJUNCTION, AND DAMAGES
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`

`

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`Case 2:15-cv-07562-DOC-GJS Document 1 Filed 09/25/15 Page 11 of 31 Page ID #:11Case 1:19-cv-11586-IT Document 51-1 Filed 03/23/20 Page 12 of 32
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`object, said single set of mail ID data including at least recipient data, said
`recipient data comprising a personalized network address associated with said
`recipient of said mail object;
`[b] submitting said mail object to a mail carrier for delivery to said recipient
`of said mail object;
`[c]
`receiving said recipient data from a reception device of said recipient via a
`network; and
`[d] providing by at least one processor said electronic data to said reception
`device via said network in response to receiving said recipient data, said
`electronic data comprising a sender's web page that identifies said recipient of
`said mail object and includes data corresponding to a content of said mail object;
`[e] wherein said electronic data is configured to be displayed to said recipient
`via a web browser on a display of said reception device.
`27. UW’s own public documents show that UW is making, using, selling, and
`offering for sale a system and method for generating, affixing, and processing mail
`data that infringes multiple claims of SMS’s pURL-Related Patents. For example, UW
`uses hardware and software (“pURL-Related Products”) to generate variable data,
`including pURLs. The pURL-Related Products are then used to affix each pURL onto
`a mail object and store related electronic data in a storage device. The pURL-Related
`Products are also used to provide the related electronic data to a reception device (such
`as a smart phone, tablet, or computer) in response to entry of the pURL into the
`reception device.
`28. Comparing the operation of UW’s pURL-Related Products to Claim 1 of
`the ’002 Patent, SMS is informed and believes, and on that basis alleges, that these
`products are used to perform all the steps of the patented method, including:
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`[a] using an output device (such as a printer) to affix to a mail object (such as
`a letter or package) a single set of mail ID data (a Uniform Resource Locator, or
`“URL”) that includes recipient data including a personalized network address
`
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`11
`COMPLAINT FOR PATENT INFRINGEMENT, INJUNCTION, AND DAMAGES
`
`

`

`
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`Case 2:15-cv-07562-DOC-GJS Document 1 Filed 09/25/15 Page 12 of 31 Page ID #:12Case 1:19-cv-11586-IT Document 51-1 Filed 03/23/20 Page 13 of 32
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`(“pURL”) associated with a recipient of a mail object,
`[b]
`submitting the mail object to a mail carrier (such as the U.S. Postal
`Service) for delivery to the recipient,
`[c]
`receiving recipient data from a reception device (such as a smart phone,
`tablet, or computer) as part of a request for electronic data associated with the
`personalized network location, and
`[d] providing the electronic data, using a processor such as a computer, to the
`reception device,
`[e] wherein the electronic data (such as the contents of a web page) includes
`data on a content of the mail object (such as references to the recipient and
`subject matter of the mail) and is configured to be displayed via a web browser
`on a screen of the reception device (such as the screen of a smart phone, tablet,
`or computer).
`29. SMS is informed and believes, and on that basis alleges, that UW directly
`uses the pURL-Related Products as described above, and UW is therefore directly
`infringing the pURL-Related Patents. SMS is also informed and believes, and on that
`basis alleges, that UW induces others to infringe the pURL-Related Patents and
`contributes to such infringement by others—for example, mail recipients, customers, or
`partners. UW does this, for example, by inducing customers and recipients to
`participate in a pURL program (such as by inducing customers to store the electronic
`data in a storage device and provide the electronic data to the reception device, and
`inducing recipients to enter the pURL into a reception device).
`30. Evidence of such direct and indirect infringement can be found on UW’s
`website, which says, “Universal Wilde, through our Xccelerate system, can offer
`personalized websites to capture direct mail or email responses. As an alternative to a
`BRC, a Personalized URL (PURL), an invitation-only marketing website, allows
`immediate collection of responses from a campaign.” UW’s website further says that
`“[t[hese sites are convenient to use and can be personalized for the user with images
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`12
`COMPLAINT FOR PATENT INFRINGEMENT, INJUNCTION, AND DAMAGES
`
`

`

`
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`Case 2:15-cv-07562-DOC-GJS Document 1 Filed 09/25/15 Page 13 of 31 Page ID #:13Case 1:19-cv-11586-IT Document 51-1 Filed 03/23/20 Page 14 of 32
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`and text. … With PURLs you can deliver different products and offers based on the
`individual responder, helping you target response more effectively.” According to the
`website, “The resulting PURL is hosted on-line by Xccelerate. Web links are
`generated by merging the contacts name and the customer-supplied web address. The
`name in the address (SamSmith.youraddress.com) identifies who is visiting the site,
`triggering the keywords to personalize the page.” UW tells customers that they can
`“[c]ombine Xccelerate PURL technology with your direct mail strategy to create
`effective marketing that maximizes your marketing dollars and improves your ROI.”
`31. UW has been aware of the pURL-Related Patents and of SMS’s
`contention that UW is directly and indirectly infringing them since at least August 18,
`2015, but UW continues to use the pURL-Related Products to infringe the Asserted
`Patents.
`32. On August 17, 2015, counsel for SMS sent a letter to UW (Exhibit H to
`this Complaint) identifying the patents in suit and the infringing activities of UW. This
`letter notified UW that it was “making, using, selling, and offering for sale a system
`and method for generating, affixing, and processing mail data that infringes multiple
`claims of SMS’s pURL-Related Patents. For example, Universal Wilde is using
`certain hardware and software (‘pURL-Related Products’) to generate variable data,
`including personalized Universal Resource Locators (‘pURLs’). The pURL-Related
`Products are then used to affix each pURL onto a mail object and store related
`electronic data in a storage device. The pURL-Related Products are also used to
`provide the related electronic data to a reception device (such as a smart phone, tablet,
`or computer) in response to entry of the pURL into the reception device.”
`///
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`13
`COMPLAINT FOR PATENT INFRINGEMENT, INJUNCTION, AND DAMAGES
`
`

`

`
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`Case 2:15-cv-07562-DOC-GJS Document 1 Filed 09/25/15 Page 14 of 31 Page ID #:14Case 1:19-cv-11586-IT Document 51-1 Filed 03/23/20 Page 15 of 32
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`FIRST CLAIM FOR RELIEF
`(Infringement of U.S. Patent No. 7,814,032)
`33. SMS repeats and realleges the allegations of Paragraphs 1-32 as if fully
`set forth here.
`34. On October 12, 2010, United States Patent No. 7,814,032 (“the ’032
`Patent”) was duly and legally issued, entitled “System and Method for Mail
`Verification.” SMS was assigned the ’032 Patent and continues to hold all rights, title,
`and interest in and to the ’032 Patent, including, without limitation, all causes of action
`and enforcement rights and all rights to seek and obtain any remedies of any kind for
`past, current, and future infringement of the patent, including injunctive relief and the
`right to sue for past damages. A true and correct copy of the ’032 Patent is Exhibit A
`to this Complaint.
`35. UW has directly infringed, is currently directly infringing, and, on
`information and belief will continue to directly infringe one or more claims of the ’032
`Patent by making, using, offering to sell, and selling within the United States, or
`importing into the United States, the IMb-Related Products.
`36. SMS is informed and believes, and on that basis alleges, that UW has
`actively induced and encouraged and currently is actively inducing and encouraging
`infringement of the ’032 Patent. SMS is informed and believes, and on that basis
`alleges, that the ’032 Patent has been directly infringed, is currently being directly
`infringed, and will continue to be directly infringed within the United States –
`including, on information and belief, within this district – by UW's customers using the
`IMb-Related Products. SMS is informed and believes, and on that basis alleges, that
`UW actively encourages that infringement by advertising, promoting and instructing its
`customers in the use of these products in a manner that directly infringes the ’032
`Patent. On information and belief, UW has actively induced and encouraged, or will
`continue to actively induce and encourage, its customers' use of these products in a
`manner that directly infringes the ’032 Patent with specific intent to induce and
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`14
`COMPLAINT FOR PATENT INFRINGEMENT, INJUNCTION, AND DAMAGES
`
`

`

`
`
`Case 2:15-cv-07562-DOC-GJS Document 1 Filed 09/25/15 Page 15 of 31 Page ID #:15Case 1:19-cv-11586-IT Document 51-1 Filed 03/23/20 Page 16 of 32
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`encourage such infringement, or at a minimum with willful blindness to the known risk
`of such infringement.
`37. SMS is informed and believes, and on that basis alleges, that UW has
`contributed and is currently contributing to the infringement of the ’032 Patent by
`selling, offering to sell, supplying, maintaining, and supporting IMb-Related Products
`that directly infringe the ’032 Patent when used by UW’s customers and their
`transaction partners. SMS is informed and believes, and on that basis alleges, that the
`’032 Patent has been directly infringed, is currently being directly infringed, an