Maxim Integrated Products, Inc. v. Starbucks Corporation

Filing 1

COMPLAINT for Patent Infringement against Starbucks Corporation ( Filing fee $ 350 receipt number 0540-3389392.), filed by Maxim Integrated Products, Inc.. (Attachments: # 1 Exhibit A - U.S. Patent No. 5,940,510, # 2 Exhibit B - U.S. Patent No. 5,949,880, # 3 Exhibit C - U.S. Patent No. 6,105,013, # 4 Exhibit D - U.S. Patent No. 6,237,095, # 5 Civil Cover Sheet)(Spangler, Andrew)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TEXAS
SHERMAN DIVISION
MAXIM INTEGRATED PRODUCTS,
INC.,
Plaintiff,
v.
STARBUCKS CORPORATION,
Defendant.

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CASE NO.:
JURY
COMPLAINT FOR PATENT
INFRINGEMENT
DEMAND FOR JURY TRIAL

Maxim Integrated Products, Inc. (“Maxim”) hereby alleges for its Complaint
against defendant Starbucks Corporation (“Starbucks”) 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 a place of business at

120 San Gabriel Drive, Sunnyvale, California 94086.
2.

Defendant Starbucks Corporation (“Starbucks”) is a Washington

Corporation with its principal place of business at 2401 Utah Avenue South, Suite 800,
S-LA1, Seattle, Washington 98134.
JURISDICTION AND VENUE
3.

This action arises under the patent laws of the United States, Title 35 of

the United States Code.
4.
and 1338(a).

COMPLAINT

This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331

5.

This Court has personal jurisdiction over Starbucks because Starbucks

has transacted business in this District. Specifically, Starbucks has offered for sale,
sold, and/or advertised its products and services in this District. Starbucks maintains
numerous retail locations throughout this District. Thus, Starbucks has committed and
continues to commit acts of patent infringement in this District.
6.

Venue is proper in this District under 28 U.S.C. §§ 1391(b) and (c), and

1400(b).
THE ASSERTED PATENTS
7.

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.
8.

On September 7, 1999, the United States Patent and Trademark Office

duly and legally issued U.S. Patent No. 5,949,880 (“the ’880 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 ’880 Patent is
attached to the Complaint as Exhibit B.
9.

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 C.

COMPLAINT

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10.

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 D.
11.

Maxim is the owner of the ’510, ’880, ’013, and ’095 Patents

(collectively, the “Asserted Patents”).
COUNT I
(Infringement of the ’510 Patent)
12.

Maxim incorporates and realleges paragraphs 1-11.

13.

Starbucks directly infringes one or more claims of the ’510 Patent

(literally or under the doctrine of equivalents) by making, using, offering to sell, and/or
selling products, devices, systems, and/or components of systems which embody the
patented invention, including the “Starbucks Card Mobile,” “Starbucks for iPhone,” and
“Starbucks for Android” applications.

Infringement arises from the use of such

applications to communicate with systems operated by or on behalf of Starbucks.
14.

Starbucks induces its customers and other third parties to infringe one or

more claims of the ’510 Patent (literally or under the doctrine of equivalents) at least by
providing the “Starbucks Card Mobile,” “Starbucks for iPhone,” and “Starbucks for
Android” applications and instructions to use these applications. Customers and other
third parties infringe by using such applications to communicate with systems operated
by or on behalf of Starbucks. Starbucks knew and/or was willfully blind that the acts it
induced constituted patent infringement.

COMPLAINT

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15.

Starbucks contributes to the infringement of the ’510 patent by selling,

offering to sell, importing, and/or supplying components of the claimed subject matter
of the ’510 patent, including providing the “Starbucks Card Mobile,” “Starbucks for
iPhone,” and “Starbucks for Android” applications to customers. These applications are
especially made and/or especially adapted for use in infringing the ’510 patent and are
not a staple article or commodity of commerce suitable for substantial noninfringing
use.
16.

Starbucks had notice of the ’510 Patent by no later than on or about

August 3, 2011.
17.

Starbucks has willfully infringed the ’510 Patent.

18.

Starbucks has committed these acts of infringement within the United

19.

Starbucks has committed these acts of infringement without license or

States.

authorization.
20.

Maxim has suffered damages as a result of Starbucks’ infringement of

the ’510 Patent. In addition, Maxim will continue to suffer severe and irreparable harm
unless this Court issues a permanent injunction prohibiting Starbucks, its agents,
servants, employees, representatives, and all others acting in active concert therewith
from infringing the ’510 Patent.
COUNT II
(Infringement of the ’880 Patent)
21.

Maxim incorporates and realleges paragraphs 1-20.

22.

Starbucks directly infringes one or more claims of the ’880 Patent

(literally or under the doctrine of equivalents) by using applications which embody the

COMPLAINT

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patented invention, including the “Starbucks Card Mobile,” “Starbucks for iPhone,” and
“Starbucks for Android” applications.

Infringement arises from the use of such

applications to communicate with systems operated by or on behalf of Starbucks.
Infringement is either by Starbucks alone and/or in concert with customers or other
third parties according to a common scheme or under the direction or control of
Starbucks.
23.

Starbucks induces its customers and other third parties to infringe one or

more claims of the ’880 Patent (literally or under the doctrine of equivalents) at least by
providing the “Starbucks Card Mobile,” “Starbucks for iPhone,” and “Starbucks for
Android” applications and instructions to use these applications. Customers and other
third parties infringe by using such applications to communicate with systems operated
by or on behalf of Starbucks. Starbucks knew and/or was willfully blind that the acts it
induced constituted patent infringement.
24.

Starbucks contributes to the infringement of the ’880 patent by selling,

offering to sell, importing, and/or supplying components of the claimed subject matter
of the ’880 patent, including providing the “Starbucks Card Mobile,” “Starbucks for
iPhone,” and “Starbucks for Android” applications to customers. These applications are
especially made and/or especially adapted for use in infringing the ’880 patent and are
not a staple article or commodity of commerce suitable for substantial noninfringing
use.
25.

Starbucks had notice of the ’880 Patent by no later than on or about

August 3, 2011.
26.

COMPLAINT

Starbucks has willfully infringed the ’880 Patent.

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27.

Starbucks has committed these acts of infringement within the United

28.

Starbucks has committed these acts of infringement without license or

States.

authorization.
29.

Maxim has suffered damages as a result of Starbucks’ infringement of

the ’880 Patent. In addition, Maxim will continue to suffer severe and irreparable harm
unless this Court issues a permanent injunction prohibiting Starbucks, its agents,
servants, employees, representatives, and all others acting in active concert therewith
from infringing the ’880 Patent.
COUNT III
(Infringement of the ’013 Patent)
30.

Maxim incorporates and realleges paragraphs 1- 29.

31.

Starbucks directly infringes one or more claims of the ’013 Patent

(literally or under the doctrine of equivalents) by making, using, offering to sell, and/or
selling products, devices, systems, and/or components of systems which embody the
patented invention, including the “Starbucks Card Mobile,” “Starbucks for iPhone,” and
“Starbucks for Android” applications. Infringement arises when such applications are
combined with a mobile device and/or from the use of such applications to
communicate with systems operated by or on behalf of Starbucks.
32.

Starbucks induces its customers and other third parties to infringe one or

more claims of the ’013 Patent (literally or under the doctrine of equivalents) at least by
providing the “Starbucks Card Mobile,” “Starbucks for iPhone,” and “Starbucks for
Android” applications and instructions to use these applications. Customers and other
third parties infringe by combining such applications with a mobile device and/or using

COMPLAINT

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such applications to communicate with systems operated by or on behalf of Starbucks.
Starbucks knew and/or was willfully blind that the acts it induced constituted patent
infringement.
33.

Starbucks contributes to the infringement of the ’013 patent by selling,

offering to sell, importing, and/or supplying components of the claimed subject matter
of the ’013 patent, including providing the “Starbucks Card Mobile,” “Starbucks for
iPhone,” and “Starbucks for Android” applications to customers. These applications are
especially made and/or especially adapted for use in infringing the ’013 patent and are
not a staple article or commodity of commerce suitable for substantial noninfringing
use.
34.

Starbucks had notice of the ’013 Patent by no later than on or about

August 3, 2011.
35.

Starbucks has willfully infringed the ’013 Patent.

36.

Starbucks has committed these acts of infringement within the United

37.

Starbucks has committed these acts of infringement without license or

States.

authorization.
38.

Maxim has suffered damages as a result of Starbucks’ infringement of

the ’013 Patent. In addition, Maxim will continue to suffer severe and irreparable harm
unless this Court issues a permanent injunction prohibiting Starbucks, its agents,
servants, employees, representatives, and all others acting in active concert therewith
from infringing the ’013 Patent.

COMPLAINT

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COUNT IV
(Infringement of the ’095 Patent)
39.

Maxim incorporates and realleges paragraphs 1-38.

40.

Starbucks directly infringes one or more claims of the ’095 Patent

(literally or under the doctrine of equivalents) by making, using, offering to sell, and/or
selling products, devices, systems, and/or components of systems which embody the
patented invention, including the “Starbucks Card Mobile,” “Starbucks for iPhone,” and
“Starbucks for Android” applications. Infringement arises when such applications are
combined with a mobile device and/or from the use of such applications to
communicate with systems operated by or on behalf of Starbucks.
41.

Starbucks induces its customers and other third parties to infringe one or

more claims of the ’095 Patent (literally or under the doctrine of equivalents) at least by
providing the “Starbucks Card Mobile,” “Starbucks for iPhone,” and “Starbucks for
Android” applications and instructions to use these applications. Customers and other
third parties infringe by combining such applications with a mobile device and/or using
such applications to communicate with systems operated by or on behalf of Starbucks.
Starbucks knew and/or was willfully blind that the acts it induced constituted patent
infringement.
42.

Starbucks contributes to the infringement of the ’095 patent by selling,

offering to sell, importing, and/or supplying components of the claimed subject matter
of the ’095 patent, including providing the “Starbucks Card Mobile,” “Starbucks for
iPhone,” and “Starbucks for Android” applications to customers. These applications are
especially made and/or especially adapted for use in infringing the ’095 patent and are

COMPLAINT

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not a staple article or commodity of commerce suitable for substantial noninfringing
use.
Starbucks had notice of the ’095 Patent by no later than on or about

43.

August 3, 2011.
44.

Starbucks has willfully infringed the ’095 Patent.

45.

Starbucks has committed these acts of infringement within the United

46.

Starbucks has committed these acts of infringement without license or

States.

authorization.
Maxim has suffered damages as a result of Starbucks’ infringement of

47.

the ’095 Patent. In addition, Maxim will continue to suffer severe and irreparable harm
unless this Court issues a permanent injunction prohibiting Starbucks, its agents,
servants, 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 Starbucks:
(a) A judgment in favor of Maxim that Starbucks has directly infringed (either
literally or under the doctrine of equivalents) one or more claims of the
Asserted Patents;
(b) A permanent injunction enjoining Starbucks and its officers, directors, agents,
servants, affiliates, employees, divisions, branches, subsidiaries, parents, and
all others acting in active concert or participation with Starbucks, from

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infringing the Asserted Patents;
(c) A judgment and order requiring Starbucks to pay Maxim its damages, costs,
expenses, and pre-judgment and post-judgment interest for Starbucks’
infringement of the Asserted Patents;
(d) An award of treble damages for Starbucks’ willful infringement of the
Asserted Patents;
(e) 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
(f) 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.

COMPLAINT

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Dated: January 6, 2012

SPANGLER LAW P.C.

By: /s/ Andrew W. Spangler
Andrew W. Spangler
State Bar No. 24041960
Spangler Law PC
208 N. Green Street, Suite 300
Longview, Texas 75601
903-753-9300
Fax: [phone]
Email: [e-mail]
Attorneys for Plaintiff
Maxim Integrated Products, Inc.
Of Counsel:
James C. Otteson
Philip Marsh
Michael Nguyen
AGILITY IP LAW, LLP
149 Commonwealth Drive
Menlo Park, CA 94025
Michael North
NORTH WEBER & BAUGH LLP
2479 E. Bayshore Road, Suite 707
Palo Alto, CA 94303

COMPLAINT

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