Case 6:22-cv-00288-ADA Document 1 Filed 03/17/22 Page 1 of 24
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`Civil Action No.: 6:22-cv-00288
`
`JURY TRIAL DEMANDED
`
`§§§§§§§§§
`
`FINTIV, INC.,
`
`v.
`
`Plaintiff,
`
`PAYPAL HOLDINGS, INC.
`
`Defendant.
`
`ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT
`
`Plaintiff Fintiv, Inc. (“Fintiv”), by and through its attorneys, for its Original Complaint for
`
`Patent Infringement against Defendant PayPal Holdings, Inc. (“PayPal”), hereby alleges the
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`following:
`
`I.
`
`NATURE OF THE ACTION
`
`1.
`
`PayPal, a $112 billion company, for years has been unlawfully using property
`
`owned by Fintiv — mobile wallet patents invented by Fintiv, a small technology company — and
`
`making enormous profits from its use of those extremely valuable patents. PayPal has not only
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`been knowingly and unlawfully using Fintiv’s patents without Fintiv’s permission, but it has flatly
`
`refused to pay Fintiv for its use of those patents. Accordingly, Fintiv brings this patent
`
`infringement action to put an end to PayPal’s unauthorized and infringing use of Fintiv’s patented
`
`inventions and to recover the damages Fintiv has suffered as a result of PayPal’s egregious
`
`misconduct.
`
`2.
`
`Fintiv is the owner of all rights, titles, and interests in and to United States Patent
`
`Nos. 8,538,845 (“the ’845 Patent”), 9,892,386 (the “’386 Patent”), and 11,120,413 (“the ’413
`
`Patent”), 9,208,488 (the “’488 Patent”), and the 10,438,196 (the “’196 Patent”) (collectively the
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`

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`Case 6:22-cv-00288-ADA Document 1 Filed 03/17/22 Page 2 of 24
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`“Patents-in-Suit”). The ’845 Patent, ’386 Patent, and ’413 Patent are titled “Monetary Transaction
`
`System.” The ’488 Patent and ’196 Patent are titled “Using a Mobile Warrant Infrastructure to
`
`Support Multiple Mobile Wallet Providers.” True and correct copies of the Patents-in-Suit are
`
`attached hereto as Exhibits.
`
`3.
`
`PayPal makes, provides, sells, offers for sale, uses, and/or distributes products and
`
`services which directly infringe the Patents-in-Suit. Further, PayPal indirectly infringes the
`
`Patents-in-Suit by inducing and/or contributing to infringement by others, including PayPal users.
`
`4.
`
`Fintiv seeks monetary damages, injunctive relief, and pre- and post–judgment
`
`interest for PayPal’s past and continuing infringement of the Patents-in-Suit.
`
`II.
`
`PARTIES
`
`5.
`
`Plaintiff Fintiv, Inc. is a Delaware corporation having a principal place of
`
`business at 801 Barton Springs, Austin, Texas 78704.
`
`6.
`
`Fintiv is a financial technology company that provides mobile commerce, payment
`
`solutions, and digital currency globally.
`
`7.
`
`Fintiv’s cloud-based technology delivers payments, mobile loyalty solutions, and
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`digital currency to companies in retail, financial services, consumer packaged goods, and telecom
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`that serve both banked and unbanked consumers worldwide via the mobile phone. Fintiv also
`
`offers mobile wallet solutions that are capable of a variety of transactions, including mobile
`
`payments, digital currency, money transfer, remittance, bill payment, point-of-sale integration,
`
`loyalty rewards, and cloud payments.
`
`8.
`
`Fintiv, through its wholly-owned operating subsidiary, Cloud Payments LLC
`
`(“Cloud Payments”), processes merchant and consumer payments and loyalty. Cloud Payments
`
`uses sophisticated and proprietary technologies and techniques to optimize online, point of sale,
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`Case 6:22-cv-00288-ADA Document 1 Filed 03/17/22 Page 3 of 24
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`and mobile payments. Cloud Payments’ optimized payment processing service delivers a lower
`
`cost and higher value, offers a suite of digital engagement tools enabling marketing automation
`
`using payment data, and employs data monetization to generate net-new revenue for customers. It
`
`is available through app store through the app titled “Fundz.”
`
`9.
`
`Defendant PayPal Holdings, Inc. is a corporation organized and existing under the
`
`laws of Delaware and has a regular and established place of business at 7700 W Palmer Lane,
`
`Building D, Austin, Texas 78729 (the “Austin Office”). Upon information and belief, Defendant
`
`has over 150 employees at this location, including engineers, developers, and business analysts.
`
`PayPal consistently advertises jobs for its Austin Office, and hosts meetings at the Austin Office.
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`For example, PayPal currently is advertising numerous technical and business roles involving the
`
`technology disclosed in the asserted Patents, including specifically positions related to mobile
`
`wallets, mobile payments including engineering, software development, marketing, sales, and
`
`related positions.
`
`• https://jobsearch.paypal-corp.com/en-US/job/branded-experiences-quality-
`
`engineer/J3Q3006WVSS8T769XVH
`
`• https://jobsearch.paypal-corp.com/en-US/job/branded-experiences-backend-
`
`engineer/J3M69M66890YLKYXGX5
`
`• https://jobsearch.paypal-corp.com/en-US/job/branded-experiences-ios-
`
`engineer/J3V4TJ6S2WF7LFMYC7K
`
`• https://jobsearch.paypal-corp.com/en-US/job/staff-software-
`
`engineer/J3T1Q16N10753B123TQ
`
`• https://jobsearch.paypal-corp.com/en-US/job/director-payment-optimization-
`
`bd/J3V6DN5WBDG4TZG898Z
`
`
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`3
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`• https://jobsearch.paypal-corp.com/en-US/job/str-product-insights-market-
`
`research/J3R8F366SP695212H44
`
`• https://jobsearch.paypal-corp.com/en-US/job/mobile-software-engineer-
`
`android/J3W2M8757N3NRY06Z67
`
`• https://jobsearch.paypal-corp.com/en-US/job/sr-sales-
`
`engineer/J3P8635X03KDV1WFH32
`
`10.
`
`PayPal is a financial technology company that operates an online payments system,
`
`serves as an electronic alternative to traditional paper methods such as checks and money orders,
`
`and processes payments.
`
`III.
`
`JURISDICTION AND VENUE
`
`11.
`
`This is an action for patent infringement, which arises under the Patent Laws of the
`
`United States, in particular, 35 U.S.C. §§ 271, 281, 282, 284, and 285. The Court has jurisdiction
`
`over the subject matter of this action under 28 U.S.C. §§ 1331 and 1338(a).
`
`12.
`
`This Court has personal jurisdiction over Defendant because it has committed acts
`
`giving rise to this action within Texas and within this judicial district. Defendant also regularly
`
`does business or solicits business in this District and in Texas, engages in other persistent courses
`
`of conduct and derives substantial revenue from products and/or services provided in this District
`
`and in Texas, and has purposefully established substantial, systematic, and continuous contacts
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`within this District and should reasonably expect to be sued in a court in this District. For example,
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`Defendant has offices and employees in this District, including the Austin Office, and has a Texas
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`registered agent for service. Given these contacts, the Court’s exercise of jurisdiction over
`
`Defendant will not offend traditional notions of fair play and substantial justice.
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`13.
`
`Venue in the Western District of Texas is proper pursuant to 28 U.S.C. §§ 1391(b),
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`(c) and 1400(b) because Defendant has an established place of business in this District at 7700 W
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`Palmer Lane, Building D, Austin, Texas 78729, has committed acts within this judicial district
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`giving rise to this action, and continues to conduct business in this judicial district, including one or
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`more acts of making, selling, using, importing and/or offering for sale infringing products and
`
`services to Defendant’s customers in this District.
`
`IV.
`
`THE PATENTS-IN-SUIT
`
`The ’845 Patent
`
`14.
`
`The ’845 Patent is titled “Monetary Transaction System.” The provisional
`
`applications of the ’845 Patent were filed on June 3, 2011 and August 10, 2011. The non-
`
`provisional application of the ’845 Patent was filed on May 30, 2012. The ’845 Patent issued on
`
`September 17, 2013. A true and correct copy of the ’845 Patent is attached hereto as Exhibit A
`
`and incorporated herein by reference.
`
`15.
`
`The ’845 Patent is fully described and explained in the attached Exemplary ’845
`
`Patent Infringement Chart. A true and correct copy of the Exemplary ’845 Patent Infringement
`
`Chart is attached hereto as Exhibit B.
`
`16.
`
`Fintiv owns all substantial and material rights to and interests in the ’845 Patent,
`
`including the right to recover damages for all past and future infringement thereof.
`
`17.
`
`The ’845 Patent is valid and enforceable.
`
`The ’386 Patent
`
`18.
`
`The ’386 Patent is titled “Monetary Transaction System.” The non-provisional
`
`application of the ’386 Patent was filed on July 1, 2016, which is a continuation of provisional
`
`applications filed on June 3, 2011 and August 10, 2011, and claims priority to the same. The ’386
`
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`Patent issued on February 13, 2018. A true and correct copy of the ’386 Patent is attached hereto
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`as Exhibit C and incorporated herein by reference.
`
`19.
`
`The ’386 Patent is fully described and explained in the attached Exemplary ’386
`
`Patent Infringement Chart. A true and correct copy of the Exemplary ’386 Patent Infringement
`
`Chart is attached hereto as Exhibit D.
`
`20.
`
`Fintiv owns all substantial and material rights to and interests in the ’386 Patent,
`
`including the right to recover damages for all past and future infringement thereof.
`
`21. The ’386 Patent is valid and enforceable.
`
`The ’413 Patent
`
`22.
`
`The ’413 Patent is titled “Monetary Transaction System.” The non-provisional
`
`application of the ’413 Patent was filed on September 12, 2019, which is a continuation of
`
`provisional applications filed on June 3, 2011 and August 10, 2011, and claims priority to the
`
`same. The ’413 Patent issued on September 14, 2021. A true and correct copy of the ’413 Patent
`
`is attached hereto as Exhibit E and incorporated herein by reference.
`
`23.
`
`The ’413 Patent is fully described and explained in the attached Exemplary ’413
`
`Patent Infringement Chart. A true and correct copy of the Exemplary ’413 Patent Infringement
`
`Chart is attached hereto as Exhibit F.
`
`24.
`
`Fintiv owns all substantial and material rights to and interests in the ’413 Patent,
`
`including the right to recover damages for all past and future infringement thereof.
`
`25.
`
`The ’413 Patent is valid and enforceable.
`
`The ’488 Patent
`
`26.
`
`The ’488 Patent is titled “Using a Mobile Wallet Infrastructure to Support Multiple
`
`Mobile Wallet Providers.” The non-provisional application of the ’488 Patent was filed on
`
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`November 19, 2012, which is a continuation of provisional applications filed on November 21,
`
`2011 and claims priority to the same. The ’488 Patent was issued on December 8, 2015. A true
`
`and correct copy of the ’488 Patent is attached hereto as Exhibit G and incorporated herein by
`
`reference.
`
`27.
`
`The ’488 Patent is fully described and explained in the attached Exemplary ’488
`
`Patent Infringement Chart. A true and correct copy of the Exemplary ’488 Patent Infringement
`
`Chart is attached hereto as Exhibit H.
`
`28.
`
`Fintiv owns all substantial and material rights to and interests in the ’488 Patent,
`
`including the right to recover damages for all past and future infringement thereof.
`
`29.
`
`The ’488 Patent is valid and enforceable.
`
`The ‘196 Patent
`
`30.
`
`The ’196 Patent is titled “Using a Mobile Wallet Infrastructure to Support Multiple
`
`Mobile Wallet Providers.” The non-provisional application of the ’196 Patent was filed on
`
`October 30, 2015, which is a continuation of provisional applications filed on November 21, 2011
`
`and claims priority to the same. The ’196 Patent was issued on October 8, 2019. A true and correct
`
`copy of the ’196 Patent is attached hereto as Exhibit I and incorporated herein by reference.
`
`31.
`
`The ’196 Patent is fully described and explained in the attached Exemplary ’196
`
`Patent Infringement Chart. A true and correct copy of the Exemplary ’196 Patent Infringement
`
`Chart is attached hereto as Exhibit J.
`
`32.
`
`Fintiv owns all substantial and material rights to and interests in the ’196 Patent,
`
`including the right to recover damages for all past and future infringement thereof.
`
`33.
`
`The ’196 Patent is valid and enforceable.
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`V.
`
`PAYPAL’S PRE-SUIT KNOWLEDGE OF FINTIV
`AND THE PATENTS-IN-SUIT
`
`34.
`
`Prior to filing this complaint, Fintiv informed Defendant that it was using the
`
`
`
`Patents-in-Suit, offered to license its patents, including the Patents-in-Suit, to Defendant, and shared
`
`detailed information about its patents, including the Patents-in-Suit, with Defendant. Accordingly,
`
`Defendant had knowledge of Fintiv and the Patents-in-Suit prior to the filing of this complaint.
`
`35.
`
`On or about March 15, 2016, the Global Strategic Partner of Business Development
`
`for PayPal at the time (“PayPal’s Agent”) emailed Fintiv requesting contact info or a teleconference
`
`with one of the founders of Fintiv (the “Fintiv’s Founder”). PayPal’s Agent held numerous roles at
`
`PayPal from August 2011 to November 2020, when he left to serve as Head of North America New
`
`Channel Sales at PayPal for Hyperwallet (where he remains today).
`
`36.
`
`On or about March 16, 2016, Fintiv’s Founder and PayPal’s Agent had a phone call
`
`that lasted over an hour to discuss Fintiv’s patented technology, a strategic partnership between the
`
`two companies, and PayPal’s interest in acquiring Fintiv. On this call Fintiv, discussed the ’845
`
`and ’488 Patents extensively.
`
`37.
`
`In addition, during the call, PayPal asked about acquiring Fintiv. PayPal’s Agent
`
`asked Fintiv’s Founder if he and the management team would be available for a meeting with
`
`PayPal’s Senior Vice President, Head of Corporate Development (M&A) (“PayPal’s SVP”) at the
`
`time. PayPal’s Agent said that the meeting could be held within ten days at Fintiv headquarters in
`
`Austin. PayPal’s Agent informed Fintiv’s Founder that PayPal’s SVP traveled regularly to PayPal’s
`
`Austin offices. The meeting in Austin did not end up taking place.
`
`38.
`
`On or about June 13, 2019, the Chairman of Advection Growth Capital LLC
`
`(“Advection”), acting on behalf of Fintiv, sent an email to PayPal’s Director of Global Corporate
`
`Development (“PayPal’s Director”) specifically identifying the ’845, ’386, and ’488 Patents and
`
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`explaining how these patents could be of benefit to Defendant under a section titled “PayPal
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`Engagement Notes.” PayPal’s Director has been employed at PayPal since May 2015, and currently
`
`serves as PayPal’s Senior Director of Global Corporate Development. This email also attached a
`
`15-page PowerPoint presentation created by Fintiv that specifically discussed the ’845, ’386, and
`
`’488 Patents and the technology claimed by them to further illustrate the benefits of those patents
`
`to Defendant, and described Fintiv’s lines of business, including Cloud Payments’ payment
`
`processing and interchange optimization.
`
`39.
`
`On or about August 1, 2019, Fintiv’s President, one of Fintiv’s directors (“Fintiv’s
`
`Director”), and Advection, had a call with PayPal’s Director, to further explore Defendant’s
`
`licensing of the Patents-in-Suit due to their continued infringement of the patents.
`
`40.
`
`On or about August 8, 2019, Fintiv’s President, Fintiv’s Director, and Advection
`
`met with Defendant at PayPal’s headquarters in San Jose. PayPal’s Director and its Investor of
`
`PayPal Ventures (“PayPal’s Investor”), attended this one-hour meeting, during which Fintiv shared
`
`further details regarding the Patents-in-Suit for the purpose of entering into a license deal with
`
`Defendant. Fintiv further told PayPal’s representatives of about the applications, amendments, and
`
`portfolio of an additional 80 pending patents it had and noted that PayPal would be infringing on
`
`said patents in addition to the issued patents they were already infringing upon. The Parties also
`
`talked about PayPal’s continued interested in acquiring Fintiv.
`
`41.
`
` After delaying over the course of a year, Defendant decided not to license the
`
`Patents-in-Suit or acquire Fintiv.
`
`42.
`
`However, Defendant has continued to make, provide, sell, offer for sale, use, and/or
`
`distribute products and services which directly infringe the Patents-in-Suit. Further, Defendant has
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`continued to indirectly infringe the Patents-in-Suit by inducing and/or contributing to the
`
`infringement by others, including PayPal users and partners.
`
`
`
`COUNT I: DIRECT INFRINGEMENT OF THE ’845 PATENT
`
`Fintiv incorporates paragraphs 1 through 42 herein by reference.
`
`Defendant, without authorization or license from Fintiv, has been and is presently
`
`43.
`
`44.
`
`directly infringing, literally or under the doctrine of equivalents, at least claim 5 of the ’845 Patent
`
`(“Exemplary ’845 Patent Claims”), as infringement is defined by 35 U.S.C. § 271(a), including
`
`through making, using (including for testing purposes), selling, offering for sale, and/or distributing
`
`infringing products. Exemplary infringing products include at least PayPal’s servers and Backend
`
`System that interacts with mobile devices (collectively, “Exemplary PayPal Products”).
`
`45.
`
`Exhibit B attached hereto includes charts comparing the Exemplary ’845 Patent
`
`Claims to the Exemplary PayPal Products. As set forth in these charts, the Exemplary PayPal
`
`Products practice the technology claimed by the ’845 Patent. Accordingly, the Exemplary PayPal
`
`Products incorporated in these charts satisfy all elements of the Exemplary ’845 Patent Claims
`
`literally or under the doctrine of equivalents.
`
`46.
`
`Defendant’s acts of infringement have caused damage to Fintiv. Fintiv is entitled to
`
`recover damages in an amount to be determined at trial. Further, Defendant’s infringement of Fintiv’s
`
`rights under the ’845 Patent will continue to damage Fintiv’s business, causing irreparable harm for
`
`which there is no adequate remedy at law, unless enjoined by the Court.
`
`47.
`
`Defendant is and has been aware of the ’845 Patent since at least March 2016, well
`
`before this Complaint. Consequently, Defendant’s infringement of the ’845 Patent is willful and
`
`deliberate, entitling Fintiv to enhanced damages pursuant to 35 U.S.C. § 284.
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`
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`48.
`
`49.
`
`COUNT II:
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`INDIRECT INFRINGEMENT OF THE ’845 PATENT
`
`Fintiv incorporates paragraphs 1 through 47 herein by reference.
`
`As described above, Defendant is and has been aware of the ’845 Patent since at
`
`least August 2016. And since that time, despite actual knowledge of the ’845 Patent, Defendant
`
`has been and continues to indirectly infringe the ’845 Patent.
`
`50.
`
`Defendant has been indirectly infringing, and continues to indirectly infringe, at
`
`least claim 5 of the ’845 Patent through its partners’, merchants’, customers’, and end-users’ direct
`
`infringement of at least claim 5 of the ’845 Patent, through at least the use of the Exemplary PayPal
`
`Products without authorization of license from Fintiv.
`
`51.
`
`Defendant is contributing to the infringement by others and/or inducing
`
`infringement by others by, among other things, providing instructions to its partners, merchants,
`
`customers, and end-users on how to download and use the PayPal application, including through
`
`its website www.PayPal.com and through instructions on third-party application providers, in a
`
`manner that infringes the Exemplary ’845 Patent Claims.
`
`52.
`
`Defendant has also contributed and/or induced, and continues to contribute and/or
`
`induce the infringement of at least claim 5 of the ’845 Patent by contributing to and/or inducing
`
`its partners, merchants, customers, and end-users to use its products, such as Exemplary PayPal
`
`Products, in an infringing manner as described above, including encouraging and instructing its
`
`partners, merchants, customers, and end-users through software and documentation provided by
`
`Defendant.
`
`53.
`
`For example, Defendant’s website www.PayPal.com and its mobile application
`
`specifically instruct users how to use the PayPal front and backend systems in a manner that
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`infringes the patents. Moreover, third party application stores such as the Google Play store and
`
`the Apple App store provides instructions and information for end-users. On information and
`
`belief, this information is supplied by PayPal. In addition, PayPal provides instructions on its the
`
`PayPal mobile application that instructs users to interact with the PayPal front and backend
`
`systems in a manner that infringes the Patents.
`
`54.
`
`Defendant has known that its infringing products, such as the Exemplary PayPal
`
`Products, cannot be used without infringing the technology claimed in the ’845 Patent, as described
`
`in Exhibit B, and are not staple articles of commerce suitable for substantial non-infringing uses.
`
`55.
`
`Fintiv has been damaged by Defendant’s infringement of the ’845 Patent and will
`
`continue to be damaged by such infringement. Fintiv is entitled to recover damages from
`
`Defendant to compensate it for Defendant’s infringement, as alleged above, in an amount
`
`measured by no less than a reasonable royalty under 35 U.S.C. § 284, as well as enhanced damages
`
`pursuant to 35 U.S.C. § 284.
`
`COUNT III: DIRECT INFRINGEMENT OF THE ’386 PATENT
`
`Fintiv incorporates paragraphs 1 through 55 herein by reference.
`
`Defendant, without authorization or license from Fintiv, has been and is presently
`
`56.
`
`57.
`
`directly infringing, literally or under the doctrine of equivalents, at least claim 1 of the ’386 Patent
`
`(“Exemplary ’386 Patent Claims”), as infringement is defined by 35 U.S.C. § 271(a), including
`
`through making, using (including for testing purposes), selling, offering for sale, and/or distributing
`
`infringing products. Exemplary infringing products include at least PayPal’s servers and Backend
`
`System that interacts with mobile devices (collectively, “Exemplary PayPal Products”).
`
`58.
`
`Exhibit D attached hereto includes charts comparing the Exemplary ’386 Patent
`
`Claims to the Exemplary PayPal Products. As set forth in these charts, the Exemplary PayPal
`
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`Products practice the technology claimed by the ’386 Patent. Accordingly, the Exemplary PayPal
`
`Products incorporated in these charts satisfy all elements of the Exemplary ’386 Patent Claims
`
`literally or by the doctrine of equivalents.
`
`59.
`
`Defendant’s acts of infringement have caused damage to Fintiv. Fintiv is entitled to
`
`recover damages in an amount to be determined at trial. Further, Defendant’s infringement of Fintiv’s
`
`rights under the ’386 Patent will continue to damage Fintiv’s business, causing irreparable harm for
`
`which there is no adequate remedy at law, unless enjoined by the Court.
`
`60.
`
`Defendant is and has been aware of the ’386 Patent since at least August 2019, well
`
`before this Complaint. Consequently, Defendant’s infringement of the ’386 Patent is willful and
`
`deliberate, entitling Fintiv to enhanced damages pursuant to 35 U.S.C. § 284.
`
`COUNT IV: INDIRECT INFRINGEMENT OF THE ’386 PATENT
`
`Fintiv incorporates paragraphs 1 through 60 herein by reference.
`
`As described above, Defendant is and has been aware of the ’386 Patent since at
`
`61.
`
`62.
`
`least August 2019. And since that time, despite actual knowledge of the ’386 Patent, has been and
`
`continues to indirectly infringe the ’386 Patent.
`
`63.
`
`Defendant has been indirectly infringing, and continues to indirectly infringe, at
`
`least claim 1 of the ’386 Patent through its partners’, merchants’, customers’, and end-users’ direct
`
`infringement of at least claim 1 of the ’386 Patent, through at least the use of the Exemplary PayPal
`
`Products without authorization of license from Fintiv.
`
`64.
`
`Defendant is contributing to the infringement by others and/or inducing
`
`infringement by others by, among other things, providing instructions to its partners, merchants,
`
`customers, and end-users on how to download and use the PayPal application, including through
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`its website www.PayPal.com and through instructions on third-party application providers, in a
`
`manner that infringes Exemplary ’386 Patent Claims.
`
`65.
`
`Defendant has also contributed and/or induced, and continues to contribute and/or
`
`induce the infringement of at least claim 1 of the ’386 Patent by contributing to and/or inducing
`
`its partners, merchants, customers, and end-users to use its products, such as Exemplary PayPal
`
`Products, in an infringing manner as described above, including encouraging and instructing its
`
`partners, merchants, customers, and end-users through software and documentation provided by
`
`Defendant.
`
`66.
`
`For example, Defendant’s website www.PayPal.com and its mobile application
`
`specifically instruct users how to use the PayPal front and backend systems in a manner that
`
`infringes the patents. Moreover, third party application stores such as the Google Play store and
`
`the Apple App store provides instructions and information for end-users. On information and
`
`belief, this information is supplied by PayPal. In addition, PayPal provides instructions on its the
`
`PayPal mobile application that instructs users to interact with the PayPal front and backend
`
`systems in a manner that infringes the Patents. Defendant has known that its infringing products,
`
`such as the Exemplary PayPal Products, cannot be used without infringing the technology claimed
`
`in the ’386 Patent, as described in Exhibit D, and are not staple articles of commerce suitable for
`
`substantial non-infringing uses.
`
`67.
`
`Fintiv has been damaged by Defendant’s infringement of the ’386 Patent and will
`
`continue to be damaged by such infringement. Fintiv is entitled to recover damages from
`
`Defendant to compensate it for Defendant’s infringement, as alleged above, in an amount
`
`measured by no less than a reasonable royalty under 35 U.S.C. § 284, as well as enhanced damages
`
`pursuant to 35 U.S.C. § 284.
`
`
`
`14
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`Case 6:22-cv-00288-ADA Document 1 Filed 03/17/22 Page 15 of 24
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`COUNT V: DIRECT INFRINGEMENT OF THE ’413 PATENT
`
`Fintiv incorporates paragraphs 1 through 67 herein by reference.
`
`Defendant, without authorization or license from Fintiv, has been and is presently
`
`68.
`
`69.
`
`directly infringing, literally or under the doctrine of equivalents, at least claim 1 of the ’413 Patent
`
`(“Exemplary ’413 Patent Claims”), as infringement is defined by 35 U.S.C. § 271(a), including
`
`through making, using (including for testing purposes), selling, offering for sale, and/or distributing
`
`infringing products. Exemplary infringing products include at least PayPal’s servers and Backend
`
`System that interacts with mobile devices (collectively, “Exemplary PayPal Products”).
`
`70.
`
`Exhibit F attached hereto includes charts comparing the Exemplary ’413 Patent
`
`Claims to the Exemplary PayPal Products. As set forth in these charts, the Exemplary PayPal
`
`Products practice the technology claimed by the ’413 Patent. Accordingly, the Exemplary PayPal
`
`Products incorporated in these charts satisfy all elements of the Exemplary ’413 Patent Claims
`
`literally or by the doctrine of equivalents.
`
`71.
`
`Defendant’s acts of infringement have caused damage to Fintiv. Fintiv is entitled to
`
`recover damages in an amount to be determined at trial. Further, Defendant’s infringement of Fintiv’s
`
`rights under the ’413 Patent will continue to damage Fintiv’s business, causing irreparable harm for
`
`which there is no adequate remedy at law, unless enjoined by the Court.
`
`72.
`
`Defendant is and has been aware of the non-provisional application that lead to the
`
`issuance of ’413 Patent since at least August 2019, well before this Complaint. Consequently,
`
`Defendant’s infringement of the ’413 Patent is willful and deliberate, entitling Fintiv to enhanced
`
`damages pursuant to 35 U.S.C. § 284.
`
`COUNT VI: INDIRECT INFRINGEMENT OF THE ’413 PATENT
`
`73.
`
`Fintiv incorporates paragraphs 1 through 72 herein by reference.
`
`
`
`15
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`Case 6:22-cv-00288-ADA Document 1 Filed 03/17/22 Page 16 of 24
`
`74.
`
`As described above, Defendant is and has been aware of the non-provisional
`
`application that led to the issuance of the ’413 Patent since at least August 2019. And since that
`
`time, despite actual knowledge of the ’413 Patent, has been and continues to indirectly infringe
`
`the ’413 Patent.
`
`75.
`
`Defendant has been indirectly infringing, and continues to indirectly infringe, at
`
`least claim 1 of the ’413 Patent through its partners’, merchants’, customers’, and end-users’ direct
`
`infringement of at least claim 1 of the ’413 Patent, through at least the use of the Exemplary PayPal
`
`Products without authorization of license from Fintiv.
`
`76.
`
`Defendant is contributing to the infringement by others and/or inducing
`
`infringement by others by, among other things, providing instructions to its partners, merchants,
`
`customers, and end-users on how to download and use the PayPal application, including through
`
`its website www.PayPal.com and through instructions on third-party application providers, in a
`
`manner that infringes the Exemplary ’413 Patent Claims.
`
`77.
`
`Defendant has also contributed and/or induced, and continues to contribute and/or
`
`induce the infringement of at least claim 1 of the ’413 Patent by contributing to and/or inducing
`
`its partners, merchants, customers, and end-users to use its products, such as Exemplary PayPal
`
`Products, in an infringing manner as described above, including encouraging and instructing its
`
`partners, merchants, customers, and end-users through software and documentation provided by
`
`Defendant.
`
`78.
`
`For example, Defendant’s website www.PayPal.com and its mobile application
`
`specifically instruct users how to use the PayPal Payment System including backend systems in a
`
`manner that infringes the patents. Moreover, third party application stores such as the Google Play
`
`store and the Apple App store provides instructions and information for end-users. On information
`
`
`
`16
`
`

`

`Case 6:22-cv-00288-ADA Document 1 Filed 03/17/22 Page 17 of 24
`
`and belief, this information is supplied by PayPal. In addition, PayPal provides instructions on its
`
`the PayPal mobile application that instructs users to interact with the PayPal front and backend
`
`systems in a manner that infringes the Patents.
`
`79.
`
`Defendant has known that its infringing products, such as the Exemplary PayPal
`
`Products, cannot be used without infringing the technology claimed in the ’413 Patent, as described
`
`in Exhibit F, and are not staple articles of commerce suitable for substantial non-infringing uses.
`
`80.
`
`Fintiv has been damaged by Defendant’s infringement of the ’413 Patent and will
`
`continue to be damaged by such infringement. Fintiv is entitled to recover damages from
`
`Defendant to compensate it for Defendant’s infringement, as alleged above, in an amount
`
`measured by no less than a reasonable royalty under 35 U.S.C. § 284, as well as enhanced damages
`
`pursuant to 35 U.S.C. § 284.
`
`COUNT VII: DIRECT INFRINGEMENT OF THE ’488 PATENT
`
`Fintiv incorporates paragraphs 1 through 80 herein by reference.
`
`Defendant, without authorization or license from Fintiv, has been and is presently
`
`81.
`
`82.
`
`directly infringing, literally or under the doctrine of equivalents, at least claim 1 of the ’488 Patent
`
`(“Exemplary ’488 Patent Claims”), as infringement is defined by 35 U.S.C. § 271(a), including
`
`through making, using (including for testing purposes), selling, offering for sale, and/or distributing
`
`infringing products. Exemplary infringing products include at least PayPal’s mobile payment system
`
`that facilitate the use of the PayPal Application and Backend System (collectively, “Exemplary
`
`PayPal Products”).
`
`83.
`
`Exhibit H attached hereto includes charts comparing the Exemplary ’488 Patent