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`MIDDLE DISTRICT OF FLORIDA g g
`ORLANDO DIVISION
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`ProxicoM WIRELESS, LLC, . ,
`R CASE NoO.: 6:18-C\'-&4 \C’QL ‘3 7 o= \c] SZ"
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`Plaintiff,
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`V. COMPLAINT AND DEMAND FOR JURY TRIAL
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`MACY’S, INC. and
`MACY'S FLORIDA STORES, LLC,
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`Defendants.
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`Plaintiff Proxicom Wireless, LLC (“Proxicom”), by and through undersigned counsel,
`sues Defendants Macy's, Inc. and Macy's Florida Stores, LLC (collectively. “Defendants” or
`“Macy’s™) and, pursuant to Rule 8, Federal Rules of Civil Procedure, alleges as follows:
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`NATURE OF ACTION
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`l. This is an action for patent infringement under 35 U.S.C. § 271 et seq. arising
`out of Macy's infringement of U.S. Patent Nos. 8,090.359, 8.116.749 and 8,374,592
`(collectively, the “patents-in-suit”). The following allegations of patent infringement arise
`from the direct actions of Defendant Macy’s, Inc. and/or actions of Defendant Macy’s
`Florida Stores. LLC under the direction and control of its parent company, Defendant
`Macy’s, Inc.
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`PARTIES, JURISDICTION & VENUE
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`2. Plaintiff Proxicom is a limited liability company duly organized and existing
`under the laws of the State of Florida and having its principal place of business at 1680 N.
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`Riverside Dr.. Indialantic, Florida 32903. Proxicom has only two members: the inventors of
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`SCT Exhibit 2023
`[PR2025-01183
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`the patents-in-suit, James Arthur Proctor, Jr. and James Arthur Proctor, 111, individuals who
`are citizens of the State of Florida.
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`3. Defendant Macy’s, Inc. is a corporation duly organized and existing under the
`laws of the State of Delaware and having its principal place of business at 7 West 7th Street,
`Cincinnati, Ohio 45202. For purposes of diversity, Macy’s, Inc. is a citizen of the States of
`Delaware and Ohio.
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`4. Defendant Macy’s Florida Stores, LLC is a limited liability company duly
`organized and existing under the laws of the State of Ohio and having its principal place of
`business at 7 West 7th Street, Cincinnati, Ohio 45202. The sole member of Macy’s Florida
`Stores, LLC is non-party Macy's Retail Holdings, Inc., a New York corporation having its
`principal place of business at 7 West 7th Street, Cincinnati, Ohio 45202. For purposes of
`diversity, Macy’s Florida Stores, LLC is a citizen of the States of New York and Ohio.
`Plaintiff Proxicom is informed and believes that Defendant Macy’s Florida Stores, LLC
`owns and/or operates all Macy’s retail stores within the State of Florida.
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`5. Because this is an action arising under the patent laws of the United States,
`this Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a).
`Additionally, because there is complete diversity of citizenship between the parties and the
`amount in controversy exceeds $75,000 (exclusive of attorneys’ fees, interest and costs), this
`Court also has subject matter jurisdiction pursuant to 28 U.S.C. § 1332(a)(1).
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`6. This Court has personal jurisdiction over Defendants because, infer alia,
`Defendants maintain or have maintained continuous and systematic contacts with, and
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`regularly transact business in, the State of Florida and this judicial district, and because
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`SCT Exhibit 2023
`[PR2025-01183
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`Proxicom’s claims arise out of Defendants’ operating, conducting, engaging in, or carrying
`on a business venture in the State of Florida and this judicial district and committing tortious
`acts in the State of Florida and this judicial district.
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`7. Venue is proper in the Middle District of Florida under 28 U.S.C. §§ 1391 and
`1400(b) because Defendants are subject to personal jurisdiction and, therefore, deemed to
`reside in this judicial district, and because Defendants maintain established places of business
`in this judicial district and have committed and continue to commit acts of infringement in
`violation of 35 U.S.C. § 271 at their places of business in this judicial district. Defendants’
`regular and established places of business in this judicial district include at least three stores
`in Orlando, three stores in Tampa, two stores in Sarasota, and one store in Naples.
`Additionally, Proxicom has suffered harm in this judicial district due to Defendants’
`infringement of the patents-in-suit.
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`8. All conditions precedent to the maintenance of this suit and Proxicom’s
`claims have occurred, been performed or otherwise waived.
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`FACTUAL BACKGROUND
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`9. Proxicom was founded by Messrs. James Arthur Proctor, Il and James
`Arthur Proctor, Jr. (father and son). Proxicom was founded to research and develop wireless
`technology using proximity wircless signals. Messrs. Proctor and Proctor are coinventors on
`the patents-in-suit.
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`10. Macy's purports to have over 800 stores in the United States operating under
`the Macy’s brand name and other brand names. At least by 2013, Macy’s began
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`implementing the beacon technology developed by Proxicom in Macy’s retail stores.
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`3-
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`SCT Exhibit 2023
`[PR2025-01183
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`Proxicom’s patented technology is being used in many if not all of Macy’s stores, including
`in the Middle District of Florida.
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`1. Proxicom is the assignee and owner of all rights to enforce U.S. Patent
`No. 8,090,359 (“°359 Patent”), entitled “Exchanging Identifiers Between Wireless
`Communication to Determine Further Information to Be Exchanged or Further Services to
`Be Provided,” and has full rights to sue and recover damages from all past, present and future
`infringements of the *359 Patent. The *359 Patent was duly and legally issued by the United
`States Patent and Trademark Office on January 3, 2012. The inventors of the *359 Patent are
`James Arthur Proctor, Jr. of Melbourne Beach, Florida and James Arthur Proctor, III of
`Indialantic, Florida.
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`12. A true and correct copy of the *359 Patent is attached as Exhibit 1.
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`13. Proxicom is the assignee and owner of all rights to enforce U.S. Patent
`No. 8,116,749 (**749 Patent”), entitled “Protocol for Anonymous Wireless Communication,”
`and has full rights to sue and recover damages from all past, present and future infringements
`of the '749 Patent. The *749 Patent was duly and legally issued by the United States Patent
`and Trademark Office on February 14, 2012. The inventors of the 749 Patent are James
`Arthur Proctor, Jr. of Melbourne Beach, Florida and James Arthur Proctor, 111 of Indialantic,
`Florida.
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`14. A true and correct copy of the 749 Patent is attached as Exhibit 2.
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`15. Proxicom is the assignee and owner of all rights to enforce U.S. Patent
`No. 8,374,592 (*’592 Patent”), entitled “Exchanging Identifiers Between Wireless
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`Communication to Determine Further Information to Be Exchanged or Further Services to
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`SCT Exhibit 2023
`[PR2025-01183
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`Be Provided,” and has full rights to sue and recover damages from all past, present and future
`infringements of the 592 Patent. The 592 Patent was duly and legally issued by the United
`States Patent and Trademark Office on February 12, 2013. The inventors of the '592 Patent
`are James Arthur Proctor, Jr. of Melbourne Beach, Florida and James Arthur Proctor, IiI of
`Indialantic, Florida.
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`16. A true and correct copy of the *592 Patent is attached as Exhibit 3.
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`COUNT I
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`(Infringement of the *359 Patent)
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`17. Proxicom re-alleges and incorporates the allegations set forth above in
`Paragraphs 2 through 12 as though fully set forth herein.
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`18. Macy’s makes, uses, and/or imports beacon technology at its retail stores—
`including stores within the Middle District of Florida—that infringe at least claim 1 of the
`*359 Patent.
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`19. To the extent the preamble of claim 1 of the *359 Patent is limiting, Macy’s
`employs a central server to exchange information between one or more wireless devices to
`perform the steps claimed in claim 1. Macy’s instructs its customers to install on their
`mobile devices either the Macy’s application or a third-party application to communicate
`with a central server.
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`20. The central server receives a second device identifier information from a first
`wireless device. Macy’s customers, through the Macy’s application or third-party
`application installed on the customers’ mobile devices, send second identifier information to
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`the central server under Macy’s control.
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`SCT Exhibit 2023
`[PR2025-01183
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`21. The second device identifier information is collected by the first wireless
`device from a second device and the second device provides the second device identifier
`information o the first wircless device using short range communication without the use of
`wires from the second device to the first wireless device. Macy’s customers use either the
`Macy's application or third-party application installed on their mobile devices to collect the
`second device identifier information from beacons deployed at Macy’s stores. The beacons
`transmit the second device identifier information using Bluetooth Low Energy (BLE)
`technology. The customers’ mobile devices receive the second device identifier information
`via BLE transmission and transmit the second device identifier to the central server.
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`22, The central server uses the second device identifier information to determine
`information concerning an entity or object located in proximity to the second device. The
`central server maintained by Macy’s uses the second device identifier information to
`determine information about the store and/or products in proximity to the beacon that
`provided the second device identifier information.
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`23. After receiving the second device identifier information from the first wireless
`device, the central server takes action to deliver information to the first wireless device based
`at least in part upon the second device identifier information. For example, Macy’s at times
`will instruct the central server to send a message to its customers in response to the
`information received from the customers’ mobilc devices.
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`24. The information delivered by the central server will at times be information
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`representing a reward for an entity associated with the first wireless device’s participation in
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`SCT Exhibit 2023
`[PR2025-01183
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`a loyalty program. Macy’s provides its customers with promotional discounts for using the
`Macy’s application and points through the third-party application.
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`25. By making, using, testing, offering for sale, selling, and/or importing beacon
`technology, including but not limited to the beacon technology used in Macy’s stores located
`in the Middle District of Florida, Macy’s has injured Proxicom and is liable to Proxicom for
`directly infringing one or more claims of the *359 Patent, including at least claim 1, pursuant
`to 35 U.S.C. § 271(a).
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`26. Macy’s also indirectly infringes the 359 Patent by actively inducing and
`contributing to infringement under 35 U.S.C. § 271(b), (c) and (g).
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`27. Macy’s has had knowledge of the *359 Patent and of its infringement of the
`*359 Patent since at least the date of service of this Complaint.
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`28. Macy’s intended to induce patent infringement by its customers and internet
`hosts and providers and had knowledge that the inducing acts would cause infringement or
`was willfully blind to the possibility that its inducing acts would cause infringement. Macy’s
`installed beacons within its stores, engaged internet providers and hosts to service its beacon
`network, and provided its own application and third-party applications to customers that
`actually induced infringement of the *359 Patent.
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`29, As a result of Macy’s infringement of the '359 Patent, Proxicom has suffered
`monetary damages, and secks recovery in an amount adequate to compensate Proxicom for
`Macy's infringement, but in no event less than a reasonable royalty for the use made of the
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`invention by Macy’s together with interest and costs as fixed by the Court.
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`SCT Exhibit 2023
`[PR2025-01183
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`COUNT II
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`(Infringement of the *749 Patent)
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`30. Proxicom re-alleges and incorporates the allegations set forth above in
`Paragraphs 2 through 10 and 13 through 14 as though fully set forth herein.
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`31. Macy’s makes, uses, and/or imports beacon technology at its retail stores—
`including stores within the Middle District of Florida—that infringe at least claim 1 of the
`*749 Patent.
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`32. To the extent the preamble of claim 1 of the *749 Patent is limiting, Macy’s
`employs a method for exchanging information between one or more applications executed on
`at least a first wireless device and a second wireless device. Through the Macy’s application
`or a third-party application installed on customers’ mobile devices, information is exchanged
`between customers’ mobile devices and Macy’s beacons.
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`33. A first wireless device provides initial identification information to a central
`server. The Macy’s application or third-party application installed on customers’ mobile
`devices provides the initial identification information to a central server under Macy’s
`control.
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`34. The initial identification information is collected by the first wireless device
`from a second wireless device via a first, direct, short range local wireless link between the
`second and first wireless device. The initial identification information is collected by the
`Macy’s application or third-party application installed on customers’ mobile devices from a
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`Macy’s beacon using BLE technology.
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`SCT Exhibit 2023
`[PR2025-01183
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`35. The initial identification information is associated at the central server with
`the identity of a user or entity associated with the second wireless device. The central server
`controlled by Macy’s associates the initial identification information with a particular Macy’s
`store or a particular beacon within a Macy’s store.
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`36. The initial identification information is provided to the central server by the
`first wireless device over a second wireless link. The customers’ mobile devices transmit the
`initial identification information to the central server controlled by Macy’s using a Wi-Fi
`network or cellular wireless network.
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`37. A seccond wireless device, upon an occurrence of a predetermined event
`coordinated with the central server, within a specific application on the second wireless
`device, provides modified identification information over the first, direct, short range local
`wireless link in place of the initial identification information, such that the modified
`identification information is associated at the central server with the identity of a user or
`entity associated with the second device. From time to time the identifier information
`transmitted by Macy’s beacons is changed in synchrony with the central server so that the
`central server continues to associate the changed identifier information with the Macy’s
`beacon.
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`38. The modified identification information is collected at the first wireless
`device. After the identification information is changed, the changed identification
`information is collected by the first wireless device through the Macy’s application or third-
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`party application installed on customer’s mobile devices.
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`SCT Exhibit 2023
`[PR2025-01183
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`39. By making, using, testing, offering for sale, selling, and/or importing beacon
`technology, including but not limited to the beacon technology used in Macy’s stores located
`in the Middle District of Florida, Macy’s has injured Proxicom and is liable to Proxicom for
`directly infringing one or more claims of the *749 Patent, including at least claim 1, pursuant
`to 35 U.S.C. § 271(a).
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`40. Macy’s also indirectly infringes the >749 Patent by actively inducing and
`contributing to infringement under 35 U.S.C. § 271(b), (c) and (g).
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`41. Macy’s has had knowledge of the 749 Patent and of its infringement of the
`*749 Patent since at least the date of service of this Complaint.
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`42. Macy’s intended to induce patent infringement by its customers and internet
`hosts and providers and had knowledge that the inducing acts would cause infringement or
`was willfully blind to the possibility that its inducing acts would cause infringement. Macy’s
`installed beacons within its stores, engaged internet providers and hosts to service its beacon
`network, and provided its own application and third-party applications to customers that
`actually induced infringement of the *749 Patent.
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`43. As a result of Macy’s infringement of the *749 Patent, Proxicom has suffered
`monetary damages, and secks recovery in an amount adequate to compensate Proxicom for
`Macy’s infringement, but in no event less than a reasonable royalty for the use made of the
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`invention by Macy’s together with interest and costs as fixed by the Court.
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`-10-
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`SCT Exhibit 2023
`[PR2025-01183
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`COUNT III
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`(Infringement of the '592 Patent)
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`44. Proxicom re-alleges and incorporates the allegations set forth above in
`Paragraphs 2 through 10 and 15 through 16 as though fully set forth herein.
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`45. Macy’s makes, uses, and/or imports beacon technology at its retail stores—
`including stores within the Middle District of Florida—that infringe at least claim 19 of the
`’592 Patent.
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`46. To the extent the preamble of claim 19 of the "592 Patent is limiting, Macy’s
`employs a method for a server to exchange information with one or more wireless devices.
`Through the server maintained by Macy's, Macy’s performs a method of communicating
`information from its beacons to customers’ mobile devices.
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`47. The server receives identifier information from a first wircless device using a
`wide area wireless network, the identifier information having been provided to the first
`wireless device from a sccond wireless device using short range wireless communication.
`The server maintained by Macy’s receives identifier information from Macy’s customers’
`mobile devices over a Wi-Fi network or a wireless cellular network, the identifier
`information having been provided to the customers’ mobile devices from a Macy’s beacon
`using BLE technology. Receipt of the identifier information and communication to the
`Macy’s server is mediated by the Macy’s application or a third-party application installed on
`customers’ mabile devices.
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`48. The server uses the identifier information to determine information
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`concerning an entity or object located in proximity to the second wireless device. The
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`-11-
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`SCT Exhibit 2023
`[PR2025-01183
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`Macy’s server uses the identifier information to identify the beacon as within a particular
`Macy’s store or location within a Macy’s store.
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`49. The server delivers information to the first wireless device based at least in
`part upon the identifier information and information representing a reward for an entity
`associated with the first wireless device’s participation in a loyalty program. Based at least
`in part upon the identifier information and a promotional loyalty reward, Macy’s server
`delivers information to customers’ mobile devices representing a reward for participating in a
`loyalty program.
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`50. The information delivered to the first wireless device includes a name
`associated with the entity or object located in proximity to the second wireless device or a
`name associated with the loyalty program as determined by the server utilizing the identifier
`information. The information Macy’s sends to customers’ mobile devices includes, at a
`minimum, either the corporate Macy’s name or a third-party loyalty program.
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`51. By making, using, testing, offering for sale, selling, and/or importing beacon
`technology, including but not limited to the beacon technology used in Macy’s stores located
`in the Middle District of Florida, Macy's has injured Proxicom and is liable to Proxicom for
`directly infringing one or more claims of the "592 Patent, including at least claim 1, pursuant
`to 35 U.S.C. § 271(a).
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`52. Macy's also indirectly infringes the 592 Patent by actively inducing and
`contributing to infringement under 35 U.S.C. § 271(b), (¢) and (g).
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`53. Macy’s has had knowledge of the '592 Patent and of its infringement of the
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`*592 Patent since at least the date of service of this Complaint.
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`-12-
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`SCT Exhibit 2023
`[PR2025-01183
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`54. Macy’s intended to induce patent infringement by its customers and internet
`hosts and providers and had knowledge that the inducing acts would cause infringement or
`was willfully blind to the possibility that its inducing acts would cause infringement. Macy’s
`installed beacons within its stores, engaged internet providers and hosts to service its beacon
`network, and provided its own application and third-party applications to customers that
`actually induced infringement of the 592 Patent.
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`55. As a result of Macy’s infringement of the *592 Patent, Proxicom has suffered
`monetary damages, and secks recovery in an amount adequate to compensate Proxicom for
`Macy’s infringement, but in no event less than a reasonable royalty for the use made of the
`invention by Macy’s together with interest and costs as fixed by the Court.
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`PRAYER FOR RELIEF
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`WHEREFORE, Plaintiff Proxicom Wireless, LLC respectfully demands the
`following relief against Defendants Macy’s, Inc. and Macy’s Florida Stores, LLC:
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`(a) A declaration or final judgment finding that the patents-in-suit have been
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`and/or continue to be infringed by Defendants;
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`(b) An accounting of all damages sustained by Proxicom as the result of
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`Defendants’ infringement;
`(<) Enhanced damages pursuant to 35 U.S.C. § 284;
`(d) A mandatory future royalty payable going forward for Defendants’ use of
`Proxicom’s technology and infringement of one or more of the patents-in-suit;
`(e) An award of attorneys’ fees pursuant to 35 US.C. § 285 or as otherwise
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`permitted by law;
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`13-
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`SCT Exhibit 2023
`[PR2025-01183
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`(H Costs of suit and interest; and
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`(g) Such other and further relief as the Court may deem just and proper.
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`DEMAND FOR JURY TRIAL
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`Pursuant to Rule 38(b), Federal Rules of Civil Procedure, Plaintiff
`Proxicom Wireless, LLC respectfully demands a trial by jury as to all matters so triable.
`Dated: January 12,2018
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`Respectfully submitted,
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`/s/ Taylor F. Ford
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`Taylor F. Ford
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`Florida Bar No.: 0041008
`Robyn M. Kramer
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`Florida Bar No.: 0118300
`KING, BLACKWELL, ZEHNDER & WERMUTH, P.A.
`25 E. Pine St.
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`P.O. Box 1631
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`Orlando, FL 32802-1631
`Telephone: (407) 422-2472
`Facsimile: (407) 648-0161
`Email: tford@kbzwlaw.com
`Email: rkramer@kbzwlaw.com
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`Denise M. De Mory’
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`John Beynon”
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`Bunsow DEMORY LLP
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`701 El Camino Real
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`Redwood City, CA 94063
`Telephone: (650) 351-7248
`Facsimile: (650) 351-7253
`Email: ddemory@bdiplaw.com
`Email: jbeynon@bdiplaw.com
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`*(Motions to appear pro hac vice forthcoming)
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`Counsel for Plaintiff Proxicom Wireless, LLC
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`-14-
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`SCT Exhibit 2023
`[PR2025-01183
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