Sprogis v. Google Inc.

Filing 1

COMPLAINT FOR PATENT INFRINGEMENT filed with Jury Demand against Google Inc. - Magistrate Consent Notice to Pltf. ( Filing fee $ 350, receipt number 311-1161149.) - filed by Peter Sprogis. (Attachments: # 1 Exhibit A, # 2 Civil Cover Sheet)(dmp, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
PETER SPROGIS, an individual,
Plaintiff,

Civil Action No. ______________

v.
DEMAND FOR JURY TRIAL
GOOGLE INC., a Delaware corporation,
Defendant.
COMPLAINT FOR PATENT INFRINGEMENT
Plaintiff Peter Sprogis (“Plaintiff” or “Sprogis”), files this complaint against Google Inc.
(“Defendant” or “Google”), alleging as follows:
THE PARTIES
1.

Plaintiff Peter Sprogis, an individual, is a citizen of Canada. Plaintiff resides at

4673 Woodburn Road, West Vancouver, British Columbia, V7S 2W7, Canada.
2.

Defendant Google, on information and belief, is a corporation organized under the

laws of the State of Delaware, and has a principal place of business at 1600 Amphitheatre
Parkway, Mountain View, CA. Defendant may be served with process by serving registered
agent, The Corporation Trust Company, 1209 Orange Street, Wilmington, DE 19801.
JURISDICTION & VENUE
3.

This is an action for infringement of a United States patent. Accordingly, this

action arises under the patent laws of the United States of America, 35 U.S.C. § 1 et seq., and
jurisdiction is properly based on 35 U.S.C. § 271 and 28 U.S.C. § 1338(a).
4.

Venue is proper in this district under 28 U.S.C. §§ 1391(b-c) and 1400(b).

Google is a Delaware limited liability company, and thus resides in this district.

Upon

information and belief, Google has provided and continues to provide the accused system and/or

service for use by individuals and businesses in the State of Delaware.
PATENT INFRINGEMENT COUNT
5.

On November 20, 2007, United States Patent No. 7,298,271 B2 (“the ‘271 patent”)

entitled “Method and Apparatus for Providing Awards Using Transponders” was duly and
legally issued. Plaintiff Peter Sprogis is the inventor and holds the right to sue for past, present
and future damages. A copy of the ‘271 patent is attached as Exhibit A.

The ‘271 patent is

directed to a method and system for providing awards to participants utilizing electronic data
storage elements, such as radio frequency identification (“RFID”) tags.
6.

Pursuant to 35 U.S.C. § 282, the ‘271 patent is presumed valid.

7.

The Defendant’s Google Wallet system enables smartphone users to make

payments and redeem customer loyalty rewards by transmitting information from a near field
communications (NFC) chip in a smartphone to an NFC reader at a merchant’s register. To use
Google Wallet, a user must first associate a payment card with a Google Wallet account. The
payment card is a credit or debit card, usually one which rewards credit or debit card transactions
with airline miles, cash back, rewards points, and the like. In some cases, the user is issued a
virtual payment card which is compatible with Google Wallet NFC readers. In all cases, the
credentials of a compatible credit, debit, or other payment card is encrypted and transmitted to a
smartphone that runs the Google Wallet smartphone app. The encrypted information is stored in
the “Secure Element” section of the smartphone. During a transaction, the smartphone user
initiates the Google Wallet app and allows a nearby NFC reader to read the encrypted payment
information stored in the smartphone. After the NFC reader transmits the payment information
to the payment server and a transaction is completed, the smartphone user receives an
appropriate reward, such as airline miles, cash back, rewards points, and the like.

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8.

The Defendant’s Google Wallet system enables smartphone users to redeem

discounts and offers by transmitting information from Google Offers from a near field
communications (NFC) chip in a smartphone to an NFC reader at a merchant’s register. To
redeem discounts and offers, a Google Wallet user must first associate his/her account with a
Google Offers account. Google Offers then sends discounts and other offers to the user’s Google
smartphone, which runs the Google Wallet smartphone app. The discounts and offers are stored
in the Android smartphone on an NFC-readable microchip. In order to redeem a discount or
offer, the smartphone user initiates the Google Wallet app and allows an in-store NFC reader to
read the discount or offer information stored in the smartphone.
9.

Google, utilizes a method and system for providing awards to participants that

infringes at least claims 18, 19, 20, 21, 22, 42, 43, 44, and 45 of the ‘271 patent by utilizing the
features described in Paragraphs 7 and 8 on at least its Google Wallet smartphone app and/or
service. By making, operating, using and/or selling such an app and/or service, Google has
infringed and continues to infringe, contribute to the infringement of, or induce the infringement
of at least claims 18, 19, 20, 21, 22, 42, 43, 44, and 45 of the ‘271 patent, either literally or under
the doctrine of equivalents.
10.

Accordingly, Google’s acts of infringement of the ‘271 patent, as alleged above,

have injured Plaintiff and, thus, Plaintiff is entitled to recover damages adequate to compensate it
for Google’s acts of infringement, which in no event can be less than a reasonable royalty.
DEMAND FOR JURY TRIAL
11.

Plaintiff hereby demands a jury trial on all claims and issues.

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PRAYER FOR RELIEF
Wherefore, Plaintiff prays for entry of judgment:
A.

that Google has infringed one or more claims, specifically claims 18, 19, 20, 21,

22, 42, 43, 44, and 45, of the ‘271 patent;
B.

that Google accounts for and pays to Plaintiff all damages caused by the

infringement of the ‘271 patent, which by statute can be no less than a reasonable royalty;
C.

that Plaintiff be granted pre-judgment and post-judgment interest on the damages

caused to them by reason of Google’s infringement of the ‘271 patent; and
D.

that Plaintiff be granted such other and further relief as the Court may deem just

and proper under the current circumstances.

DATED: October 23, 2012
/s/ Kenneth L. Dorsney
Richard K. Herrmann (I.D. No. 405)
Kenneth L. Dorsney (I.D. No. 3726)
MORRIS JAMES LLP
500 Delaware Avenue, Suite 1500
Wilmington, DE 19801
[phone]

Attorneys for Plaintiff
Of Counsel:
Edward W. Goldstein
Texas Bar No. 08099500
GOLDSTEIN LAW, PLLC
1177 West Loop South, Suite 400
Houston, Texas 77027
Telephone: [phone]
Facsimile: [phone]
E-Mail: [e-mail]

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