Case 1:19-cv-03703-SEB-MPB Document 1 Filed 08/29/19 Page 1 of 9 PageID #: 1
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`UNITED STATES DISTRICT COURT
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`SOUTHERN DISTRICT OF INDIANA
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`INDIANAPOLIS DIVISION
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`Plaintiff,
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`TRANSACTION SECURE, LLC, a foreign
`limited liability company,
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`FORMSTACK, LLC, a domestic limited
`liability company,
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`vs.
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`Defendant.
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`Case No.: 1:19-cv-3703
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`COMPLAINT FOR PATENT
`INFRINGEMENT
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`INJUNCTIVE RELIEF DEMANDED
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`JURY TRIAL DEMANDED
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`Plaintiff, TRANSACTION SECURE, LLC, sues Defendant, FORMSTACK, LLC, and
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`alleges:
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`NATURE OF THE ACTION
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`1.
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`This is an action for infringement of United States Patent No. 8,738,921 under the
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`Patent Act, 35 U.S.C. § 271, et seq., based on Defendant’s unauthorized commercial
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`manufacture, use, importation, offer for sale, and sale of infringing products and services in the
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`United States.
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`PARTIES
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`2.
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`3.
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`Plaintiff, TRANSACTION SECURE, LLC, is a foreign limited liability company.
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`Defendant, FORMSTACK, LLC, is a domestic limited liability company,
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`organized under the laws of the State of Indiana, with its headquarters in Indianapolis and/or
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`Fishers, Indiana. Defendant uses, sells, and/or offers to sell products and/or services in interstate
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`commerce that infringe the ‘921 Patent.
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`SUBJECT MATTER JURISDICTION
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`4.
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`This court has original jurisdiction over the subject matter of this action, pursuant
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`to 28 U.S.C. §§ 1331 and 1338(a), because this action involves a federal question relating to
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`patents.
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`COMPLAINT FOR PATENT INFRINGEMENT-1
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`PERSONAL JURISDICTION
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`5.
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`The court has general in personam jurisdiction over Defendant because Defendant
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`resides and is found in the State of Indiana.
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`VENUE
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`6.
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`Venue is proper in this court, pursuant to 28 U.S.C. § 1400(b), because Defendant
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`has a regular and established place of business in this district and resides in this district.
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`COUNT I
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`PATENT INFRINGEMENT
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`7.
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`Plaintiff repeats and re-alleges paragraphs 2 through 6 by reference, as if fully set
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`forth herein.
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`8.
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` On May 27, 2014, the United States Patent & Trademark Office (USPTO) duly
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`and legally issued the ‘921 Patent, entitled “System and Method for Authenticating a Person’s
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`Identity Using a Trusted Entity.” A true and authentic copy of the ‘921 Patent is attached hereto
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`as Exhibit “A” and incorporated herein by reference.
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`9.
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`The ‘921 Patent teaches both a system and method for protecting sensitive
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`information from identity theft and claims an advancement over two-factor authentication, which
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`is now the predominate form of digital authentication of sensitive information.
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`State of the Art
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`10.
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`The identity theft problem exists largely because a person’s name, SSN, and
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`birthday are frequently used and given to others to verify the person’s identity. Individuals use
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`this information to get employment, apply for a credit card, obtain a mortgage, buy a mobile
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`phone, get healthcare, and perform numerous other transactions. A person’s SSN and birthday
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`are usually stored by businesses electronically in databases or on physical paper documents
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`which can be viewed by many individuals within a business.
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`11.
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`Once a person supplies his/her SSN and birthday, they lose control of how that
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`information will be used and who will view that information.
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`12.
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`At times, business computer systems and databases get hacked into allowing the
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`hacker access to the person’s personal identity information. At other times, the SSN and
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`COMPLAINT FOR PATENT INFRINGEMENT-2
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`birthday are transmitted to businesses and others electronically via the Internet.
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`13.
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`The Internet is an unsecured network, so information not properly encrypted can
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`be viewed by others on the Internet. There are various ways an impersonator or identity thief can
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`obtain a person's SSN or birthday. The thief can obtain this information by looking at business
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`records, viewing unencrypted messages with this information, or other types of fraud.
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`14.
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`Once a thief has someone’s SSN and birthday, the thief can use that information
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`anytime during the lifetime of the person because of the permanence of SSN and birthday and its
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`association with the person. The SSN and birthday have been reliable indicators of a person’s
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`existence but their widespread use by both the person and identity theft impersonators has made
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`them of little use in authenticating the identity of person using the information.
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`The Patent-In-Suit
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`15.
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`Plaintiff is the assignee of the entire right, title, and interest in the ‘921 Patent at
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`the USPTO, including the right to assert causes of action arising under the ‘921 Patent.
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`16.
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`The system and method of the ‘921 Patent increase the efficiency of components
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`that use software because of the benefits claimed by the ‘921 Patent, namely flexibility and a
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`higher degree of certainty as to authenticating that a person is who he/she claims to be. The prior
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`art is described as uncertain because under the prior art, a user’s assurance of authentication is
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`limited to just confirming that certain devices are what they claim to be, not that certain persons
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`are who they claim to be.
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`17.
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`Through Claim 1, the ‘921 Patent claims:
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` A
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` method for authenticating a person’s identity to a transactional entity using a
`trusted entity with a secure repository of a person’s personal identity information,
`comprising: receiving personal identity information at a trusted entity computer
`system, the personal identity information being confidentially stored by the
`trusted entity computer system; in the secure repository, storing a user identifier
`and a password that are associated with, but do not contain, the personal identity
`information; at the trusted entity computer system, receiving a request from the
`person for a unique code, the request including the user identifier and the
`password, the person’s identity having been previously authenticated by the
`trusted entity computer system; providing the unique code to the person, the
`unique code comprising a person identifier and a key, wherein the unique code is
`thereafter transmitted to a transactional entity to identify the person without
`providing the personal identity information to the transactional entity; and the
`trusted entity computer system confirming the unique code to the transactional
`entity to verify the person’s identity.
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`COMPLAINT FOR PATENT INFRINGEMENT-3
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`18.
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`Through Claim 24, the ‘921 Patent claims:
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`A system for authenticating a person’s identity to a transactional entity using a
`trusted entity, comprising: a trusted entity which receives personal identity
`information from a person, the personal identity information being confidentially
`stored by the trusted entity; a user identifier associated with but not containing
`any of the personal identity information; a password associated with but not
`containing any of the personal identity information; a client module with a person
`input device for a person to enter the user identifier and the password, a person
`processing unit connected to the person input device to prompt the person for the
`user identifier and the password, and a person display unit connected to the person
`processing unit to display a the key associated with a person identifier to form a
`unique code to the person, the person’s identity having been previously
`authenticated by the trusted entity; a transactional processing module with an
`transactional input device for the transactional entity to enter the key, a
`transactional processing unit connected to the transactional input device to prompt
`the transactional entity for the key, and a transactional display unit connected to
`the transactional processing unit to display a message to the transactional entity
`authenticating the person's identity and to display a photograph of the person,
`whereby the photograph is a secondary verification to the unique code; and a
`trusted entity server with a trusted entity processing unit to process requests from
`the client module and the transactional processing module using a network, and a
`database accessible to the trusted entity processing unit to store the user identifier,
`the password, the unique code, and the person's personal identity information,
`including the photograph.
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`19.
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`Overall, the claims of the ‘921 Patent do not merely gather, analyze, and output
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`data. Indeed, the ‘921 Patent does not merely add an algorithm to old data and generate new
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`data. Instead, the ‘921 Patent teaches a system and method that is not concerned with
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`manipulation of data, but rather, an improvement in the state of the art no matter what the
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`underlying data describes.
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`20.
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`Defendant infringes at least Claim 1 of the ‘921 Patent through an authentication
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`method it uses, along with a system for authenticating a person’s identity, which such method is
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`disclosed at: https://medium.com/@darutk/diagrams-of-all-the-openid-connect-flows-
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`6968e3990660.
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`21.
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`22.
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`Defendant’s website operates as the Accused Product.
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`The Accused Product is a trusted entity, as claimed by Plaintiff, to authenticate
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`account holders when such holders want to access a service from a resource server (i.e., a
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`transactional entity), by using non-personal information for securing personal data:
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`COMPLAINT FOR PATENT INFRINGEMENT-4
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`Case 1:19-cv-03703-SEB-MPB Document 1 Filed 08/29/19 Page 5 of 9 PageID #: 5
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`23.
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`The Accused Product receives personal information from users at a trusted entity
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`computer system, such as their name, age, birthdate, email address, phone number etc. when
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`users create an account. Defendant then confidentially stores this data for promoting safety and
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`security, throgh a process explained at https://www.formstack.com/privacy.
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`24.
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`Defendant, in a secure repository, provides users with authorization login details
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`(i.e., user identifier and password) that they are associated with, but the login details do not
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`contain the personal details:
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`COMPLAINT FOR PATENT INFRINGEMENT-5
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`25.
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`The user then requests Defendant for resource access. The request includes the
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`user identifier and the password. Defendant provides an authorization code to obtain the access
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`token and ID token for accessing the services:
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`COMPLAINT FOR PATENT INFRINGEMENT-6
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`Case 1:19-cv-03703-SEB-MPB Document 1 Filed 08/29/19 Page 7 of 9 PageID #: 7
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`26.
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`Defendant provides a unique authorization code to the user in response of the
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`request of the user, which includes a user identified and access key, wherein the unique code is
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`thereafter transmitted to a transactional entity to authenticate the user’s identity without giving
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`personal information to the transactional entity.
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`27.
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`The unique authorization code is required to obtain an access token. This access
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`token then used by the user for accessing the services.
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`28.
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`In the Accused Product, the user identity is verified by the resource server by
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`using the authorization code to allow the user to access the code.
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`29.
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`Upon information and belief, Defendant has known of the existence of the ‘921
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`Patent, and its acts of infringement have been willful and in disregard for the ‘921 Patent,
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`without any reasonable basis for believing that it had a right to engage in the infringing conduct.
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`30.
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`Defendant’s acts of infringement of the ‘921 Patent have caused and will continue
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`to cause Plaintiff damages for which Plaintiff is entitled to compensation pursuant to 35 U.S.C. §
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`284.
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`31.
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`Defendant’s acts of infringement of the ‘921 Patent have caused and will continue
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`to cause Plaintiff immediate and irreparable harm unless such infringing activities are also
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`enjoined by this court pursuant to 35 U.S.C. § 283. Plaintiff has no adequate remedy at law.
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`32.
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`Upon information and belief, the ‘921 Patent, at all times material, was and is in
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`COMPLAINT FOR PATENT INFRINGEMENT-7
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`compliance with 35 U.S.C. § 287.
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`WHEREFORE, Plaintiff, TRANSACTION SECURE, LLC, demands judgment against
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`Defendant, FORMSTACK, LLC, and respectfully seeks the entry of an order (i) adjudging that
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`Defendant has infringed the ‘921 Patent, in violation of 35 U.S.C. § 271; (ii) granting an
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`injunction enjoining Defendant, its employees, agents, officers, directors, attorneys, successors,
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`affiliates, subsidiaries and assigns, and all of those in active concert and participation with any of
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`the foregoing persons or entities from infringing the ‘921 Patent; (iii) ordering Defendant to
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`account and pay damages adequate to compensate Plaintiff for Defendant’s infringement of the
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`‘921 Patent, with pre-judgment and post-judgment interest and costs, pursuant to 35 U.S.C. §
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`284; (iv) ordering that the damages award be increased up to three times the actual amount
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`assessed, pursuant to 35 U.S.C. § 284; (v) declaring this case exceptional and awarding Plaintiff
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`its reasonable attorneys’ fees, pursuant to 35 U.S.C. § 285; and, (vi) awarding such other and
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`further relief as this court deems just and proper.
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`Transaction Secure, LLC, by counsel, respectfully requests that this cause of action be set
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`JURY DEMAND
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`for trial by jury.
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`DATED on August 29, 2019
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`Respectfully submitted,
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`/s/ John M. Bradshaw
`John M. Bradshaw, Esq.
`Indiana Bar No. 21556-49
`Bradshaw Law LLC
`23 East 39th Street
`Indianapolis, IN 46205
`Email: john@jbradshawlaw.com
`Telephone: (317) 490-4852
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`COMPLAINT FOR PATENT INFRINGEMENT-8
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`Case 1:19-cv-03703-SEB-MPB Document 1 Filed 08/29/19 Page 9 of 9 PageID #: 9
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`(pending pro hac vice admission)
`Coleman W. Watson, Esq.
`Florida Bar. No. 0087288
`California Bar No. 266015
`Georgia Bar No. 317133
`New York Bar No. 4850004
`Email: coleman@watsonllp.com
` docketing@watsonllp.com
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`WATSON LLP
`189 S. Orange Avenue
`Suite 810
`Orlando, FL 32801
`Telephone: 407.377.6634
`Facsimile: 407.377.6688
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`Attorneys for Plaintiff,
`Transaction Secure, LLC
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`COMPLAINT FOR PATENT INFRINGEMENT-9
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