Pinpoint Incorporated v. Groupon, Inc. et al

Filing 1

COMPLAINT for Patent Infringement filed by Pinpoint Incorporated; Jury Demand. Filing fee $ 350, receipt number 0752-6287265.(Vickrey, Paul)

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
PINPOINT INCORPORATED,
Plaintiff,

Case No.

v.
GROUPON, INC., HOTWIRE, INC.,
L.L. BEAN, INC. and ORBITZ, LLC,

JURY TRIAL DEMANDED

Defendants.
COMPLAINT FOR PATENT INFRINGEMENT
Plaintiff Pinpoint Incorporated complains of Defendants Groupon, Inc., Hotwire, Inc.,
L.L. Bean, Inc. and Orbitz, LLC as follows:
NATURE OF CASE
1.

This is a claim for patent infringement that arises under the patent laws of the

United States, Title 35 of the United States Code. This Court has original jurisdiction over the
subject matter of this claim under 28 U.S.C. §§ 1331 and 1338(a).
PARTIES
2.

Pinpoint Incorporated (“Pinpoint”) is a Texas corporation with headquarters at

203 North Wabash Avenue, Suite 1610, Chicago, Illinois 60601.

Pinpoint moved its

headquarters to Chicago on January 1, 2011.
3.

Pinpoint owns and has standing to sue for infringement of United States Patent

No. 5,754,938 (“the ‘938 patent”), entitled “Pseudonymous Server for System for Customized
Electronic Identification of Desireable Objects,” which issued on May 19, 1998.
4.

Pinpoint owns and has standing to sue for infringement of United States Patent

No. 7,853,600 B2 (“the ‘600 patent”), entitled “System and Method for Providing Access to
Video Programs and Other Data Using Customer Profiles,” which issued on December 14, 2010.

5.

Pinpoint, originally known as Herz Technologies, is the owner of all right, title

and interest in the patent portfolio of the inventor Frederick Herz and his company iReactor.
Fred Herz is a named inventor on nearly fifty U.S. and foreign patents and patent applications,
including the ‘938 and ‘600 patents. Mr. Herz is a pioneer in the field of content personalization
and assembled a team of world-renowned computer scientists from the University of
Pennsylvania to develop prototype software for his company iReactor. The technology covered
by Mr. Herz’ inventions anticipated personalization via the Internet, mobile content delivery,
electronic billboards and retail kiosks.
6.

Groupon, Inc. (“Groupon”) is a Delaware corporation with headquarters at 600

West Chicago Avenue, Chicago, Illinois, 60654. Groupon is registered to do business in the
State of Illinois as Groupon, Inc.
7.

Hotwire, Inc. (“Hotwire”) is a Delaware corporation with headquarters at 333

Market Street, Suite 100, San Francisco, California, 94105. Hotwire is registered to do business
in the State of Illinois as Hotwire, Inc. or the assumed name Hotwire Illinois, Inc.
8.

L.L. Bean, Inc. (“L.L. Bean”) is a Maine corporation with headquarters at 15

Casco Street, Freeport, Maine, 04033. L.L. Bean is registered to do business in the State of
Illinois as L.L. Bean, Inc. or the assumed name L.L. Bean.
9.

Orbitz, LLC (“Orbitz”) is a Delaware corporation with headquarters at 500 West

Madison Street, Suite 1000, Chicago, Illinois, 60606. Orbitz is registered to business in the State
of Illinois as Orbitz, LLC.
JURISDICTION AND VENUE
10.

Groupon owns, operates and/or and conducts business through the website

www.groupon.com. Groupon is doing business in this judicial district, has purposefully availed
itself of the privilege of conducting business with residents of this judicial district, has
established sufficient minimum contacts with the State of Illinois such that it should reasonably
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and fairly anticipate being haled into court in Illinois, and has purposefully reached out to
residents of Illinois.
11.

Hotwire owns, operates and/or and conducts business through the website

www.hotwire.com. Hotwire is doing business in this judicial district, has purposefully availed
itself of the privilege of conducting business with residents of this judicial district, has
established sufficient minimum contacts with the State of Illinois such that it should reasonably
and fairly anticipate being haled into court in Illinois, and has purposefully reached out to
residents of Illinois.
12.

L.L. Bean owns, operates and/or and conducts business through the website

www.llbean.com and through retail stores in this judicial district. L.L. Bean is doing business in
this judicial district, has purposefully availed itself of the privilege of conducting business with
residents of this judicial district, has established sufficient minimum contacts with the State of
Illinois such that it should reasonably and fairly anticipate being haled into court in Illinois, and
has purposefully reached out to residents of Illinois.
13.

Orbitz owns, operates and/or and conducts business through the website

www.orbitz.com. Orbitz is doing business in this judicial district, has purposefully availed itself
of the privilege of conducting business with residents of this judicial district, has established
sufficient minimum contacts with the State of Illinois such that it should reasonably and fairly
anticipate being haled into court in Illinois, and has purposefully reached out to residents of
Illinois.
14.

Venue is proper in this district under 28 U.S.C. §§ 1391(b)-(d) and 1400(b).
CLAIMS FOR PATENT INFRINGEMENT
COUNT I – INFRINGEMENT OF U.S. PATENT NO. 5,754,938
Groupon

15.

Groupon owns and operates the website www.groupon.com and related URLs.
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16.

Groupon uses at least one proxy server in connection with its www.groupon.com

website.
17.

Groupon provides accounts for its customers using their email and password.

18.

Groupon creates profiles for its customers including, among other things, what

Groupon calls “My Background” and “My Favorite Deals.”
19.

Groupon uses information it collects on individual customers to provide deals that

suit those individual customers.
20.

Groupon sends emails to its customers including deals Groupon selects for those

specific customers.
21.

Groupon has infringed and continues to infringe at least claim 1 of the ‘938 patent

within the meaning of 35 U.S.C. § 271(a) through the foregoing activities including, without
limitation, by operating the website www.groupon.com which includes features for creating
customer profiles and emailing Groupon-selected deals to specific customers.
Hotwire
22.

Hotwire owns and operates the website www.hotwire.com and related URLs.

23.

Hotwire uses at least one proxy server in connection with its www.hotwire.com

website.
24.

Hotwire provides accounts for its customers using their email and password.

25.

Hotwire creates profiles for its customers including, among other things,

customers’ travel searches and whether customers have affirmatively clicked on a link sent to
them in an email by Hotwire.
26.

Hotwire uses information it collects on individual customers to provide offers that

suit those individual customers.
27.

Hotwire sends emails to its customers including offers Hotwire selects for those

specific customers.
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28.

Hotwire has infringed and continues to infringe at least claim 1 of the ‘938 patent

within the meaning of 35 U.S.C. § 271(a) through the foregoing activities including, without
limitation, by operating the website www.hotwire.com which includes features for creating
customer profiles and emailing Hotwire-selected offers to specific customers.
L.L. Bean
29.

L.L. Bean owns and operates the website www.llbean.com and related URLs.

30.

L.L. Bean uses at least one proxy server in connection with its www.llbean.com

website.
31.

L.L. Bean provides accounts for its customers using a Login ID (such as a User

Name or Email Address) and password.
32.

L.L. Bean creates profiles for its customers including, among other things, what

L.L. Bean calls “Email Preferences” including “Additional Information” such as “Areas of
Interest” and “Preferred Store Locations.”
33.

L.L. Bean uses information it collects on individual customers to notify customers

of products, special offers, services or events that suit those individual customers.
34.

L.L. Bean sends emails to its customers notifying them of products, special offers,

services or events L.L. Bean selects for those specific customers.
35.

L.L. Bean has infringed and continues to infringe at least claim 1 of the ‘938

patent within the meaning of 35 U.S.C. § 271(a) through the foregoing activities including,
without limitation, by operating the website www.llbean.com which includes features for
creating customer profiles and emailing L.L. Bean-selected notifications for products, special
offers, services or events to specific customers.
Orbitz
36.

Orbitz owns and operates the website www.orbitz.com and related URLs.

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37.

Orbitz uses at least one proxy server in connection with its www.orbitz.com

website.
38.

Orbitz provides accounts for its customers using their email and password.

39.

Orbitz creates profiles for its customers including, among other things, what

Orbitz calls “My interests,” which includes “Activities & Lifestyles” such as “Beach” and
“Casinos/Gaming”, and which further includes “Destinations” such as “Asia” or “Caribbean.”
40.

Orbitz uses information it collects on individual customers to provide e-

newsletters and personalized offers that suit those individual customers.
41.

Orbitz sends emails to its customers including e-newsletters and personalized

offers Orbitz selects for those specific customers.
42.

Orbitz has infringed and continues to infringe at least claim 1 of the ‘938 patent

within the meaning of 35 U.S.C. § 271(a) through the foregoing activities including, without
limitation, by operating the website www.orbitz.com which includes features for creating
customer profiles and emailing Orbitz-selected e-newsletters and personalized offers to specific
customers.
All Defendants
43.

To the extent required by law, Pinpoint has complied with the provisions of 35

U.S.C. § 287 with respect to the ‘938 patent.
44.

The acts of direct infringement of the ‘938 patent by all Defendants by

manufacturing, using, operating and/or conducting business through their respective websites has
injured Pinpoint, and Pinpoint is entitled to recover damages adequate to compensate it for such
infringement from Defendants, but in no event less than a reasonable royalty.

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COUNT II – INFRINGEMENT OF U.S. PATENT NO. 7,853,600 B2
Groupon
45.

Pinpoint repeats and realleges paragraphs 15 - 21 of this Complaint, inclusive, as

though fully set forth herein and incorporates them by reference.
46.

Groupon has infringed and continues to infringe at least claim 29 of the ‘600

patent within the meaning of 35 U.S.C. § 271(a) through the foregoing activities including,
without limitation, by operating the website www.groupon.com which includes features for
creating customer profiles and emailing Groupon-selected deals to specific customers.
Hotwire
47.

Pinpoint repeats and realleges paragraphs 22 - 28 of this Complaint, inclusive, as

though fully set forth herein and incorporates them by reference.
48.

Hotwire has infringed and continues to infringe at least claim 29 of the ‘600

patent within the meaning of 35 U.S.C. § 271(a) through the foregoing activities including,
without limitation, by operating the website www.hotwire.com which includes features for
creating customer profiles and emailing Hotwire-selected offers to specific customers.
L.L. Bean
49.

Pinpoint repeats and realleges paragraphs 29 - 35 of this Complaint, inclusive, as

though fully set forth herein and incorporates them by reference.
50.

L.L. Bean has infringed and continues to infringe at least claim 29 of the ‘600

patent within the meaning of 35 U.S.C. § 271(a) through the foregoing activities including,
without limitation, by operating the website www.llbean.com which includes features for
creating customer profiles and emailing L.L. Bean-selected notifications for products, special
offers, services or events to specific customers.

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Orbitz
51.

Pinpoint repeats and realleges paragraphs 36 - 42 of this Complaint, inclusive, as

though fully set forth herein and incorporates them by reference.
52.

Orbitz has infringed and continues to infringe at least claim 29 of the ‘600 patent

within the meaning of 35 U.S.C. § 271(a) through the foregoing activities including, without
limitation, by operating the website www.orbitz.com which includes features for creating
customer profiles and emailing Orbitz-selected e-newsletters and personalized offers to specific
customers.
All Defendants
53.

To the extent required by law, Pinpoint has complied with the provisions

of 35 U.S.C. § 287 with respect to the ‘600 patent.
54.

The acts of direct infringement of the ‘600 patent by all Defendants by

manufacturing, using, operating and/or conducting business through their respective websites has
injured Pinpoint, and Pinpoint is entitled to recover damages adequate to compensate it for such
infringement from Defendants, but in no event less than a reasonable royalty.
PRAYER FOR RELIEF
WHEREFORE, Plaintiff Pinpoint respectfully asks this Court to enter judgment against
Defendants Groupon, Inc., Hotwire, Inc., L.L. Bean, Inc. and Orbitz, LLC, and against each of
their respective subsidiaries, successors, parents, affiliates, officers, directors, agents, servants,
employees, and all persons in active concert or participation with them, granting the following
relief:
a.

The entry of judgment in favor of Pinpoint and against Defendants;

b.

An award of damages as to all Defendants adequate to compensate

Pinpoint for the infringement that has occurred, but in no event less than a reasonable

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royalty as permitted by 35 U.S.C. § 284, together with prejudgment interest from the date
the infringement began;
c.

A finding that this case is exceptional and an award to Pinpoint of its

reasonable attorneys’ fees and costs as provided by 35 U.S.C. § 285; and
d.

Such other relief that Pinpoint is entitled to under law, and any other and

further relief that this Court or a jury may deem just and proper.
JURY DEMAND
Pinpoint demands a trial by jury on all issues presented in this Complaint.

Date: August 16, 2011

Respectfully submitted,
/s/ Paul K. Vickrey
Raymond P. Niro
Paul K. Vickrey
Patrick F. Solon
Paul C. Gibbons
David J. Mahalek
Brian E. Haan
Oliver D. Yang
NIRO, HALLER & NIRO
181 W. Madison, Suite 4600
Chicago, IL 60602
[phone]
Fax: [phone]
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Attorneys for Pinpoint Incorporated

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