Express Card Systems LLC v. Apple Inc.

Filing 1

COMPLAINT against Apple Inc. ( Filing fee $ 350 receipt number 0540-3993972.), filed by Express Card Systems LLC. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Civil Cover Sheet)(Tadlock, Charles)

IN THE UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF TEXAS
TYLER DIVISION
EXPRESS CARD SYSTEMS LLC,
Case No. 6:13-cv-136
Plaintiff,
v.

PATENT CASE

APPLE INC.,

JURY TRIAL DEMANDED
Defendant.

COMPLAINT
Express Card Systems, LLC (“Express Card”) files this Complaint against Apple Inc.
(“Apple” or “Defendant”) for infringement of U.S. Patent No. 5,748,484 (the “’484 patent”) and
U.S. Patent No. 5,552,994 (the “’994 patent”) (collectively the “Asserted Patents”).
THE PARTIES
1.

Express Card is a Texas limited liability company with its principal place of

business at 6136 Frisco Square Blvd., Suite 385, Frisco, Texas 75034.
2.

Apple is a California corporation with its principal place of business located at 1

Infinite Loop, Cupertino, California.
JURISDICTION AND VENUE
3.

This is an action for patent infringement under Title 35 of the United States Code.

4.

Jurisdiction is proper in this Court pursuant to 28 U.S.C. §§ 1331 (Federal

Question) and 1338(a) (Patents) because this is a civil action for patent infringement arising
under the United States’ patent statutes, 35 U.S.C. § 101 et seq.
5.

Venue is proper under 28 U.S.C. §§ 1391(c) and 1400(b) because Apple has

committed acts of infringement in this district and/or is deemed to reside in this district.

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6.

This Court has personal jurisdiction over Apple and venue is proper in this district

because Apple has committed, and continues to commit, acts of infringement in the State of
Texas, including in this district and/or has engaged in continuous and systematic activities in the
State of Texas, including in this district.
COUNT I
(INFRINGEMENT OF U.S. PATENT NO. 5,748,484)
7.

Express Card incorporates paragraphs 1 through 6 herein by reference.

8.

This cause of action arises under the patent laws of the United States, and in

particular, 35 U.S.C. §§ 271, et seq.
9.

The ‘484 patent is entitled “System for Printing Social Expression Cards in

Response to Electronically Transmitted Orders.” Express Card has an exclusive license to the
‘484 patent with rights to enforce the ‘484 patent and sue infringers. A true and correct copy of
the ‘484 patent is attached as Exhibit 1.
10.

The ‘484 patent is valid, enforceable and was duly issued in full compliance with

Title 35 of the United States Code.
11.

Express Card has been damaged as a result of Apple’s infringing conduct

described in this Count. Apple is, thus, liable to Express Card in an amount that adequately
compensates it for Apple’s infringement, which by law, cannot be less than a reasonable royalty,
together with interest and costs as fixed by this Court under 35 U.S.C. § 284.
(Direct Infringement)
12.

On information and belief, Apple has and continues to directly infringe one or

more claims of the ‘484 patent in this judicial district and/or elsewhere in Texas and the United
States, including at least claim 1 by, among other things, making, using, offering for sale, selling
and/or importing systems that infringe the ‘484 patent including, but not limited to the
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technology associated with Apple’s “Cards” app. Apple is thereby liable for infringement of the
‘484 patent pursuant to 35 U.S.C. § 271.
(Indirect Infringement – Inducement)
13.

Based on the information presently available to Express Card, absent discovery,

and in the alternative to direct infringement, Express Card contends that Apple has and continues
to indirectly infringe one or more claims of the ‘484 patent, including at least claim 1 by
inducing others (e.g., end users of “Cards”) to use the patented systems in violation of one or
more claims of the ’484 patent.
14.

Apple has been on notice of the ‘484 patent since at least service of this action. In

accordance with Fed. R. Civ. P. 11(b)(3), Express Card will likely have additional evidentiary
support after a reasonable opportunity for further investigation or discovery on this issue.
15.

On information and belief, since Apple has been on notice of the ’484 patent,

Apple has knowingly induced infringement of the ‘484 patent, including at least claim 1 of the
‘484 patent, and possessed specific intent to encourage others’ infringement.
16.

On information and belief, since Apple has been on notice of the ‘484 patent,

Apple knew or should have known that its actions would induce actual infringement of the ‘484
patent, including at least claim 1 of the ‘484 patent.
17.

Apple provides support to users of its “Cards” app.

18.

Apple has not produced any evidence as to any investigation, design around or

that any remedial action was taken with respect to the ‘484 patent. In accordance with Fed .R.
Civ. P. 11(b)(3), Express Card will likely have additional evidentiary support after a reasonable
opportunity for discovery on this issue.
(Indirect Infringement – Contributory)
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19.

Based on the information presently available to Express Card, absent discovery,

and in the alternative to direct infringement, Express Card contends that Apple has and continues
to indirectly infringe one or more claims of the ‘484 patent, including at least claim 1 by
contributing to the direct infringement of others, including entities such as end users of Apple’s
“Cards” app, to make, use, offer for sale, sell and/or import systems that infringe one or more
claims of the ‘484 patent, including at least claim 1.
20.

Apple has and continues to contribute to the direct infringement of others, such as

end users of Apple’s “Cards” app, by offering to sell, selling and/or importing into the United
States a component of a patented apparatus that constitutes a material part of the invention,
knowing the same to be especially made or especially adapted for use in infringement of the ‘484
patent and not a staple article or commodity of commerce suitable for substantial noninfringing
use. An example of such a material component offered for sale, sold and/or imported by Apple
is Apple’s “Cards” app and the technology associated therewith.
21.

On information and belief, Apple has been on notice of the ‘484 patent since at

least service of this action, or before, but has continued since that time to cause others to directly
infringe the ‘484 patent as alleged herein. In accordance with Fed. R. Civ. P. 11(b)(3), Express
Card will likely have additional evidentiary support after a reasonable opportunity for further
investigation or discovery on this issue.
22.

Since Apple has been on notice of the ‘484 patent, Apple knew or should have

known that Apple’s “Cards” app and the technology associated therewith constituted material
components of the inventions claimed in the ‘484 patent, are especially made or especially
adapted for use in infringement of the ‘484 patent, and are not a staple article or commodity of
commerce suitable for substantial noninfringing use.
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23.

By virtue of at least this Complaint, Apple has been provided with written notice

of Express Card’s allegation that Apple has and continues to contributorily infringe the ‘484
patent and written identification of exemplar products that infringe one or more claims of the
‘484 patent (e.g., systems used by end users of Apple’s “Cards” app) and written notice of an
exemplar material part of these devices (e.g., Apple’s “Card” app and the technology associated
therewith) that are especially made or especially adapted for use in infringing the '484 patent and
are not staple articles or commodities of commerce suitable for substantial noninfringing use.
COUNT II
(INFRINGEMENT OF U.S. PATENT NO. 5,552,994)
24.

Express Card incorporates paragraphs 1 through 23 herein by reference.

25.

This cause of action arises under the patent laws of the United States, and in

particular, 35 U.S.C. §§ 271, et seq.
26.

The ‘994 patent is entitled “System for Printing Social Expression Cards in

Response to Electronically Transmitted Orders.” Express Card has an exclusive license to the
‘994 patent with rights to enforce the ‘994 patent and sue infringers. A true and correct copy of
the ‘994 patent is attached as Exhibit 2.
27.

The ‘994 patent is valid, enforceable and was duly issued in full compliance with

Title 35 of the United States Code.
28.

Express Card has been damaged as a result of Apple’s infringing conduct

described in this Count. Apple is, thus, liable to Express Card in an amount that adequately
compensates it for Apple’s infringement, which by law, cannot be less than a reasonable royalty,
together with interest and costs as fixed by this Court under 35 U.S.C. § 284.
(Direct Infringement)

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29.

On information and belief, Apple has and continues to directly infringe one or

more claims of the ‘994 patent in this judicial district and/or elsewhere in Texas and the United
States, including at least claim 14 by, among other things, making, using, offering for sale,
selling and/or importing systems that infringe the ‘994 patent including, but not limited to the
technology associated with Apple’s “Cards” app. Apple is thereby liable for infringement of the
‘994 patent pursuant to 35 U.S.C. § 271.
(Indirect Infringement – Inducement)
30.

Based on the information presently available to Express Card, absent discovery,

and in the alternative to direct infringement, Express Card contends that Apple has and continues
to indirectly infringe one or more claims of the ‘994 patent, including at least claim 14 by
inducing others (e.g., end users of “Cards”) to use the patented systems in violation of one or
more claims of the ’994 patent.
31.

Apple has been on notice of the ‘994 patent since at least service of this action. In

accordance with Fed. R. Civ. P. 11(b)(3), Express Card will likely have additional evidentiary
support after a reasonable opportunity for further investigation or discovery on this issue.
32.

On information and belief, since Apple has been on notice of the ’994 patent,

Apple has knowingly induced infringement of the ‘994 patent, including at least claim 14 of the
‘994 patent, and possessed specific intent to encourage others’ infringement.
33.

On information and belief, since Apple has been on notice of the ‘994 patent,

Apple knew or should have known that its actions would induce actual infringement of the ‘994
patent, including at least claim 14 of the ‘994 patent.
34.

Apple provides support to users of its “Cards” app.

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35.

Apple has not produced any evidence as to any investigation, design around or

that any remedial action was taken with respect to the ‘994 patent. In accordance with Fed .R.
Civ. P. 11(b)(3), Express Card will likely have additional evidentiary support after a reasonable
opportunity for discovery on this issue.
(Indirect Infringement – Contributory)
36.

Based on the information presently available to Express Card, absent discovery,

and in the alternative to direct infringement, Express Card contends that Apple has and continues
to indirectly infringe one or more claims of the ‘994 patent, including at least claim 14 by
contributing to the direct infringement of others, including entities such as end users of Apple’s
“Cards” app, to make, use, offer for sale, sell and/or import systems that infringe one or more
claims of the ‘994 patent, including at least claim 14.
37.

Apple has and continues to contribute to the direct infringement of others, such as

end users of Apple’s “Cards” app, by offering to sell, selling and/or importing into the United
States a component of a patented apparatus that constitutes a material part of the invention,
knowing the same to be especially made or especially adapted for use in infringement of the ‘994
patent and not a staple article or commodity of commerce suitable for substantial noninfringing
use. An example of such a material component offered for sale, sold and/or imported by Apple
is Apple’s “Cards” app and the technology associated therewith.
38.

On information and belief, Apple has been on notice of the ‘994 patent since at

least service of this action, or before, but has continued since that time to cause others to directly
infringe the ‘994 patent as alleged herein. In accordance with Fed. R. Civ. P. 11(b)(3), Express
Card will likely have additional evidentiary support after a reasonable opportunity for further
investigation or discovery on this issue.
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39.

Since Apple has been on notice of the ‘994 patent, Apple knew or should have

known that Apple’s “Cards” app and the technology associated therewith constituted material
components of the inventions claimed in the ‘994 patent, are especially made or especially
adapted for use in infringement of the ‘994 patent, and are not a staple article or commodity of
commerce suitable for substantial noninfringing use.
40.

By virtue of at least this Complaint, Apple has been provided with written notice

of Express Card’s allegation that Apple has and continues to contributorily infringe the ‘994
patent and written identification of exemplar products that infringe one or more claims of the
‘994 patent (e.g., systems used by end users of Apple’s “Cards” app) and written notice of an
exemplar material part of these devices (e.g., Apple’s “Card” app and the technology associated
therewith) that are especially made or especially adapted for use in infringing the '994 patent and
are not staple articles or commodities of commerce suitable for substantial noninfringing use.
ADDITIONAL ALLEGATIONS
41.

Express Card has been damaged as a result of Defendant’s infringing conduct

described herein. Defendant is, thus, liable to Express Card in an amount that adequately
compensates Express Card for Defendant’s infringements, which, by law, cannot be less than a
reasonable royalty, together with interest and costs as fixed by the Court under 35 U.S.C. § 284.
42.

Defendant’s actions complained of herein will continue unless Defendant is

enjoined by this Court.
43.

This case is exceptional pursuant to the provisions of 35 U.S.C. § 285.

44.

Defendant’s actions complained of herein are causing irreparable harm and

monetary damage to Express Card and will continue to do so unless and until Defendant is
enjoined and restrained by this Court.
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JURY DEMAND
Express Card hereby requests a trial by jury pursuant to Rule 38 of the Federal Rules of
Civil Procedure.

9

PRAYER FOR RELIEF
Express Card requests that this Court find in its favor and against Defendant, and that this
Court grant Express Card the following relief:
a.

Enter judgment for Express Card on this Complaint;

b.

Enter judgment that one or more claims of the ‘484 and ‘994 patents have been
infringed, either directly or indirectly by Defendant;

c.

Enter judgment that Defendant accounts for and pays to Express Card all damages
to and costs incurred by Express Card because of Defendant’s infringing activities
and other conduct complained of herein;

d.

Award Express Card damages resulting from Defendant’s infringement in
accordance with 35 U.S.C. § 284;

e.

Enter judgment that Defendant accounts for and pays to Express Card a
reasonable royalty and an ongoing post judgment royalty because of Defendant’s
past, present and future infringing activities and other conduct complained of
herein;

f.

That Express Card be granted pre-judgment and post-judgment interest on the
damages caused by Defendant’s infringing activities and other conduct
complained of herein;

g.

Treble the damages in accordance with the provisions of 35 U.S.C. § 284;

h.

Find the case to be exceptional under the provisions of 35 U.S.C. § 285;

i.

That Express Card be granted such other and further relief as the Court may deem
just and proper under the circumstances.

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DATED: February 11, 2013

Respectfully submitted,
/s/ Craig Tadlock
Craig Tadlock
State Bar No. 00791766
Keith Smiley
State Bar No. 24067869
TADLOCK LAW FIRM PLLC
2701 Dallas Parkway, Suite 360
Plano, Texas 75093
Phone: [phone]
[e-mail]
[e-mail]
and
Timothy E. Grochocinski
Aaron W. Purser
INNOVALAW, P.C.
1900 Ravinia Place
Orland Park, Illinois 60462
Phone: [phone]
[e-mail]
[e-mail]

COUNSEL FOR PLAINTIFF
EXPRESS CARD SYSTEMS LLC

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