pps data v. diebold eras et. al
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Angelina Tsu (9958)Zions BancorporationOne South Main
Suite 1100Salt Lake City, UT 84133-1109Telephone: (801) 844-7689Facsimile: (888) 309-9375
Anthony H. Son (Pro Hac Vice)WILEY REIN LLP1776 K Street, N.W.Washington, D.C. 20006Telephone: (202) 719-7000Facsimile: (202) 719-7049
Attorneys for Plaintiff PPS DATA, LLC,
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF UTAH
PPS DATA, LLC,
Plaintiff,
v.
DIEBOLD, ERAS INC. and DIEBOLD, INC.
Defendants.
COMPLAINT FOR PATENT
INFRINGEMENT
Case No.
JURY TRIAL DEMANDED
PPS DATA, LLC (PPS Data) files this Complaint against Diebold Eras, Inc. and
Diebold, Inc. (collectively Diebold) and alleges as follows:
I. THE PARTIES1. PPS Data LLC is a Nevada limited liability company having its principal place of
business at 3949 South 700 East, Salt Lake City, Utah 84107.
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2. Diebold Eras, Inc. is an Ohio corporation with its listed principal place ofbusiness located at 818 Mulberry Road, Canton, Ohio 44707. Its operations relating to the
subject matter of this lawsuit appear to be in Miami, Florida.
3. Diebold, Inc. is an Ohio corporation with its principal place of business located at5995 Mayfair Road, North Canton, Ohio 44720.
II. JURISDICTION AND VENUE
4. This is an action for patent infringement arising under the patent laws of the
United States, Title 35 of the United States Code. Accordingly, this Court has subject matter
jurisdiction over this cause of action pursuant to 28 U.S.C. 1331 and 1338(a).
5. Personal jurisdiction over Defendants Diebold, Eras, Inc. and Diebold, Inc. is
proper in this judicial district pursuant to 28 U.S.C. 1391 because Diebold, Eras, Inc. and
Diebold, Inc. has sufficient minimum contacts with the forum by conducting business within the
State of Utah and as a result of placing goods into the stream of commerce for distribution
throughout the United States, including the State of Utah. Diebold has provided the products and
services that are the subject matter of this lawsuit to customers in Utah.
6. Venue is proper in this Court and judicial district, pursuant to 28 U.S.C.
1391(c) and 1400(b).
III. BACKGROUND
7. NetDeposit, LLC was a software provider for banks, third party processors and
commercial businesses to enable check imaging, truncation, optimized clearing and full
settlement reporting, including the design and sale of remote deposit capture products and
services. NetDeposit LLC obtained numerous patents for its check imaging, processing and
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clearing technology. On or about October 19, 2010, Netdeposit, LLC changed its name to Pps
Data, LLC. As a result of a name change, Plaintiff PPS Data is now the owner of those patents.
8. In November 2002, Zions Bancorporation, the parent corporation to NetDeposit
LLC, and Diebold, Inc. entered into a Nondisclosure Agreement to enable to parties to share
information related to check imaging technology for ATMs. This Nondisclosure Agreement was
assigned to NetDeposit on May 4, 2004.
9. On July 15, 2005, NetDeposit and Diebold, Inc. entered into a second
Nondisclosure Agreement to enable the parties to share information related to check imaging
technology for ATMs.
10. Pursuant to the nondisclosure agreements, Zions Bancorporation and NetDeposit
disclosed to Diebold confidential information related to NetDeposits patent pending check
imaging, processing and clearing technology. In addition, Zions Bancorporation and NetDeposit
on the one hand and Diebold, Inc. on the other hand exchanged numerous correspondences, held
numerous to discussions concerningNetDeposits technology and solutions and to negotiate a
possible business relationship. Throughout this entire time, Diebold, Inc. was provided with
detailed information concerning NetDeposits patent pending technology. Ultimately, the
discussions between NetDeposit and Diebold, Inc. ended without an agreement for a business
relationship.
11. Shortly after the discussions between NetDeposit and Diebold, Inc. terminated,
NetDeposit began obtaining issuance of its patent pending technology.
12. On February 20,2007, United States Letters Patent No. 7,181,430, entitled
Method and System for Processing Financial Instrument Deposits Physically Remote From a
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Financial Institution (hereinafter the 430 Patent), was duly and legally issued to NetDeposit,
Inc. A true and correct copy of the 430 Patent is attached hereto as Exhibit A.
13. Since its issuance, the 430 Patent has been in full force and effect, and PPS Data,
the successor of NetDeposit, Inc., is the owner of the entire right, title, and interest in and to the
430 Patent, including the right to sue for past and present infringements thereof.
14. On May 8,2007, United States Letters Patent No. 7,216,106, entitled Method and
System for Processing Financial Instrument Deposits Physically Remote From a Financial
Institution (hereinafter the 106 Patent), was duly and legally issued to NetDeposit, Inc. A
true and correct copy of the 106 Patent is attached hereto as Exhibit B.
15. Since its issuance, the 106 Patent has been in full force and effect, and PPS Data,
the successor of NetDeposit, Inc., is the owner of the entire right, title, and interest in and to the
106 Patent, including the right to sue for past and present infringements thereof.
16. On June 10,2008, United States Letters Patent No. 7,386,511, entitled Methods
and Systems for Processing Financial Instrument Deposits (hereinafter the 511 Patent), was
duly and legally issued to NetDeposit, Inc. A true and correct copy of the 511 Patent is attached
hereto as Exhibit C.
17. Since its issuance, the 511 Patent has been in full force and effect, and PPS Data,
the successor of NetDeposit, Inc., is the owner of the entire right, title, and interest in and to the
511 Patent, including the right to sue for past and present infringements thereof.
18. On October 21, 2008, United States Letters Patent No. 7,440,924, entitled
Method and System for Processing Financial Instrument Deposits Physically Remote From a
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Financial Institution (hereinafter the 924 Patent), was duly and legally issued to NetDeposit,
Inc. A true and correct copy of the 924 Patent is attached hereto as Exhibit D.
19. Since its issuance, the 924 Patent has been in full force and effect, and PPS Data,
the successor of NetDeposit, Inc., is the owner of the entire right, title, and interest in and to the
924 Patent, including the right to sue for past and present infringements thereof.
20. On November 24, 2009, United States Letters Patent No. 7,624,071, entitled
Method and System for Processing Financial Instrument Deposits Physically Remote From a
Financial Institution (hereinafter the 071 Patent), was duly and legally issued to NetDeposit,
LLC. A true and correct copy of the 071 Patent is attached hereto as Exhibit E.
21. Since its issuance, the 071 Patent has been in full force and effect, and PPS Data,
the successor of NetDeposit, LLC., is the owner of the entire right, title, and interest in and to the
071 Patent, including the right to sue for past and present infringements thereof.
22. Defendant Diebold designs, manufactures, and markets software, products and
services to facilitate remote deposit capture, deposit processing and remote deposit solutions
(collectively Diebold remote deposit solutions). The Diebold ImageWay offerings are among
these instrumentalities.
23. Defendants Diebold and its customers and distribution partners advertise, market,
support, maintain, distribute, provide and/or disseminate instructions for the use of Diebold
remote deposit solutions.
IV. FIRST CAUSE OF ACTION INFRINGEMENT OF U.S. PATENT NO. 7,181,430
24. PPS Data repeats and re-alleges the allegations of paragraphs 1 through 23 of the
Amended Complaint as if fully set forth herein.
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25. Diebold has been and now is directly infringing the 430 Patent in this judicial
district, and elsewhere in the United States. Infringements by Diebold include, without
limitation, making, using, offering for sale, and/or selling within the United States, and/or
importing into the United States, a method and system for processing financial instrument
deposits physically remote from a financial institution, including at least Diebold remote deposit
solutions incorporating the patented invention that is described and claimed in the 430 Patent.
Diebolds remote deposit solutions, including without Diebold ImageWay products and services
(e.g.,, ImageWay ATM, ImageWay Branch, ImageWay Remote Deposit Capture, ImageWay
Consumer Capture) enables Diebolds customers to process financial instrument deposits
physically remote from a financial institution. By making, using, importing, offering for sale,
and/or selling Diebolds remote deposit solutions, including without limitation the ImageWay
products and services (e.g.,, ImageWay ATM, ImageWay Branch, ImageWay Remote Deposit
Capture, ImageWay Consumer Capture), and all like systems and methods that are covered by
one or more claims of the 430 Patent, Diebold is thus liable for infringement of the 430 Patent
pursuant to 35 U.S.C. 271(a).
26. Diebold is actively and knowingly inducing infringement of the 430 Patent in
this judicial district, and elsewhere in the United States, by causing third parties, such as
customers of Diebolds remote deposit solutions, including without limitation the ImageWay
products and services (e.g.,, ImageWay ATM, ImageWay Branch, ImageWay Remote Deposit
Capture, ImageWay Consumer Capture), to practice the invention claimed in the 430 Patent in
connection with Diebold's advertising, marketing, sales, distribution, and information
dissemination concerning the Diebold remote deposit solutions, including without limitation the
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ImageWay products and services. Diebold has had actual knowledge of the 430 Patent no later
than February 2010. Accordingly, Diebold is liable for infringement of the 430 Patent pursuant
to 35 U.S.C. 271(b).
27. Diebold is contributing to the infringement by others of the 430 Patent in this
judicial district, and elsewhere in the United States by making, using, offering for sale, and
selling the Diebold remote deposit solutions, including without limitation the ImageWay
products and services (e.g.,, ImageWay ATM, ImageWay Branch, ImageWay Remote Deposit
Capture, ImageWay Consumer Capture), which are a material part of practicing the invention
claimed in the 430 Patent. Diebold knows that the Diebold remote deposit solutions are
specially made or adapted for processing financial instrument deposits physically remote from a
financial institution and are not a staple article or commodity of commerce suitable for
substantial noninfringing use. Diebold advertises, markets, sells, distributes, and/or disseminates
information about Diebolds remote deposit solution, including without limitation the ImageWay
products and services (e.g.,, ImageWay ATM, ImageWay Branch, ImageWay Remote Deposit
Capture, ImageWay Consumer Capture) through its www.diebold.com website. Diebold has had
actual knowledge of the 430 Patent no later than February 2010. Accordingly, Diebold is liable
for infringement of the 430 Patent pursuant to 35 U.S.C. 271(c).
28. Third parties, such as customers of Diebolds remote deposit solutions, including
without limitation the ImageWay products and services (e.g.,, ImageWay ATM, ImageWay
Branch, ImageWay Remote Deposit Capture, ImageWay Consumer Capture), directly infringe
the 430 Patent by using the Diebold remote deposit solutions, including without limitation the
ImageWay products and services (e.g.,, ImageWay ATM, ImageWay Branch, ImageWay
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Remote Deposit Capture, ImageWay Consumer Capture), which are manufactured, marketed,
and/or sold by Diebold to practice the invention claimed in the 430 Patent.
29. Diebold is aware that such third parties thereby directly infringe the 430 Patent.
30. The activities of Diebold have been without express or implied license from PPS
Data.
31. Diebolds infringement of PPS Datas exclusive rights under the 430 Patent will
continue to damage PPS Datas business, causing irreparable harm for which there is no
adequate remedy at law. Accordingly, PPS Data is entitled to injunctive relief against such
infringement.
32. As a result of Diebolds infringement of the 430 Patent, PPS is entitled to recover
from Diebold the damages sustained by PPS Data as a result of Diebolds wrongful acts in an
amount subject to proof at trial.
33. Diebold's continued infringement subsequent to notice of the 430 Patent is
willful and deliberate, entitling PPS Data to enhanced damages and reasonable attorneys fees and
costs. Diebold has had actual knowledge of the 430 Patent no laterthan February 2010.
V. SECOND CAUSE OF ACTIONINFRINGEMENT OF U.S. PATENT NO.
7,216,106
34. PPS Data repeats and re-alleges the allegations of paragraphs 1 through 33 of the
Amended Complaint as if fully set forth herein.
35. Diebold has been and now is directly infringing the 106 Patent in this judicial
district, and elsewhere in the United States. Infringements by Diebold include, without
limitation, making, using, offering for sale, and/or selling within the United States, and/or
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importing into the United States, a method and system for processing financial instrument
deposits physically remote from a financial institution, including at least Diebold remote deposit
solutions incorporating the patented invention that is described and claimed in the 106 Patent.
Diebolds remote deposit solutions, including without limitation the ImageWay products and
services (e.g., ImageWay ATM, ImageWay Branch, ImageWay Remote Deposit Capture,
ImageWay Consumer Capture), enables Diebolds customers to process financial instrument
deposits physically remote from a financial institution. By making, using, importing, offering
for sale, and/or selling Diebolds remote deposit solutions, including without limitation the
ImageWay products and services (e.g., ImageWay ATM, ImageWay Branch, ImageWay Remote
Deposit Capture, ImageWay Consumer Capture), and all like systems and methods that are
covered by one or more claims of the 106 Patent, Diebold is thus liable for infringement of the
106 Patent pursuant to 35 U.S.C. 271(a).
36. Diebold is actively and knowingly inducing infringement of the 106 Patent in
this judicial district, and elsewhere in the United States, by causing third parties, such as
customers of Diebolds remote deposit solutions, including without limitation the ImageWay
products and services (e.g., ImageWay ATM, ImageWay Branch, ImageWay Remote Deposit
Capture, ImageWay Consumer Capture), to practice the invention claimed in the 106 Patent in
connection with Diebold's advertising, marketing, sales, distribution, and information
dissemination concerning the Diebold remote deposit solutions, including without limitation the
ImageWay products and services. Diebold has had actual knowledge of the 106 Patent no later
than February 2010. Accordingly, Diebold is liable for infringement of the 106 Patent pursuant
to 35 U.S.C. 271(b).
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37. Diebold is contributing to the infringement by others of the 106 Patent in this
judicial district, and elsewhere in the United States by making, using, offering for sale, and
selling the Diebold remote deposit solutions, including without limitation the ImageWay
products and services (e.g., ImageWay ATM, ImageWay Branch, ImageWay Remote Deposit
Capture, ImageWay Consumer Capture), which are a material part of practicing the invention
claimed in the 106 Patent. Diebold knows that the Diebold remote deposit solutions are
specially made or adapted for processing financial instrument deposits physically remote from a
financial institution and are not a staple article or commodity of commerce suitable for
substantial noninfringing use. Diebold advertises, markets, sells, distributes, and/or disseminates
information about Diebolds remote deposit solution, including without limitation the ImageWay
products and services through its www.diebold.com website. Diebold has had actual knowledge
of the 106 Patent no later than February 2010. Accordingly, Diebold is liable for infringement
of the 106 Patent pursuant to 35 U.S.C. 271(c)
38. Third parties, such as customers of Diebolds remote deposit solutions, including
without limitation the ImageWay products and services (e.g., ImageWay ATM, ImageWay
Branch, ImageWay Remote Deposit Capture, ImageWay Consumer Capture), directly infringe
the 106 Patent by using the Diebold remote deposit solutions, including without limitation the
ImageWay products and services (e.g., ImageWay ATM, ImageWay Branch, ImageWay Remote
Deposit Capture, ImageWay Consumer Capture), which are manufactured, marketed, and/or sold
by Diebold to practice the invention claimed in the 106 Patent.
39. Diebold is aware that such third parties thereby directly infringe the 106 Patent.
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40. The activities of Diebold have been without express or implied license from PPS
Data.
41. Diebolds infringement of PPS Datas exclusive rights under the 106 Patent will
continue to damage PPS Datas business, causing irreparable harm for which there is no
adequate remedy at law. Accordingly, PPS Data is entitled to injunctive relief against such
infringement.
42. As a result of Diebolds infringement of the 106 Patent, PPS is entitled to recover
from Diebold the damages sustained by PPS Data as a result of Diebolds wrongful acts in an
amount subject to proof at trial.
43. Diebold's continued infringement subsequent to notice of the 106 Patent is
willful and deliberate, entitling PPS Data to enhanced damages and reasonable attorneys fees and
costs. Diebold has had actual knowledge of the 106 Patent no later than February 2010.
VI. THIRD CAUSE OF ACTIONINFRINGEMENT OF U.S. PATENT NO.
7,386,511
44. PPS Data repeats and re-alleges the allegations of paragraphs 1 through 43 of the
Amended Complaint as if fully set forth herein.
45. Diebold has been and now is directly infringing the 511 Patent in this judicial
district, and elsewhere in the United States. Infringements by Diebold include, without
limitation, making, using, offering for sale, and/or selling within the United States, and/or
importing into the United States, a method and system for processing financial instrument
deposits physically remote from a financial institution, including at least Diebold remote deposit
solutions incorporating the patented invention that is described and claimed in the 511 Patent.
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Diebolds remote deposit solutions, including without limitation the ImageWay products and
services (e.g., ImageWay ATM, ImageWay Branch, ImageWay Remote Deposit Capture,
ImageWay Consumer Capture), enables Diebolds customers to process financial instrument
deposits physically remote from a financial institution. By making, using, importing, offering
for sale, and/or selling Diebolds remote deposit solutions, including without limitation the
ImageWay products and services (e.g., ImageWay ATM, ImageWay Branch, ImageWay Remote
Deposit Capture, ImageWay Consumer Capture), and all like systems and methods that are
covered by one or more claims of the 511 Patent, Diebold is thus liable for infringement of the
511 Patent pursuant to 35 U.S.C. 271(a).
46. Diebold is actively and knowingly inducing infringement of the 511 Patent in
this judicial district, and elsewhere in the United States, by causing third parties, such as
customers of Diebolds remote deposit solutions, including without limitation the ImageWay
products and services (e.g., ImageWay ATM, ImageWay Branch, ImageWay Remote Deposit
Capture, ImageWay Consumer Capture), to practice the invention claimed in the 511 Patent in
connection with Diebold's advertising, marketing, sales, distribution, and information
dissemination concerning the Diebold remote deposit solutions, including without limitation the
ImageWay products and services. Diebold has had actual knowledge of the 511 Patent no later
than February 2010. Accordingly, Diebold is liable for infringement of the 511 Patent pursuant
to 35 U.S.C. 271(b).
47. Diebold is contributing to the infringement by others of the 511 Patent in this
judicial district, and elsewhere in the United States by making, using, offering for sale, and
selling the Diebold remote deposit solutions, including without limitation the ImageWay
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products and services (e.g., ImageWay ATM, ImageWay Branch, ImageWay Remote Deposit
Capture, ImageWay Consumer Capture), which are a material part of practicing the invention
claimed in the 511 Patent. Diebold knows that the Diebold remote deposit solutions are
specially made or adapted for processing financial instrument deposits physically remote from a
financial institution and are not a staple article or commodity of commerce suitable for
substantial noninfringing use. Diebold advertises, markets, sells, distributes, and/or disseminates
information about Diebolds remote deposit solution, including without limitation the ImageWay
products and services through its www.diebold.com website. Diebold has had actual knowledge
of the 511 Patent no later than February 2010. Accordingly, Diebold is liable for infringement
of the 511 Patent pursuant to 35 U.S.C. 271(c)
48. Third parties, such as customers of Diebolds remote deposit solutions, including
without limitation the ImageWay products and services (e.g., ImageWay ATM, ImageWay
Branch, ImageWay Remote Deposit Capture, ImageWay Consumer Capture), directly infringe
the 511 Patent by using the Diebold remote deposit solutions, including without limitation the
ImageWay products and services (e.g., ImageWay ATM, ImageWay Branch, ImageWay Remote
Deposit Capture, ImageWay Consumer Capture), which are manufactured, marketed, and/or sold
by Diebold to practice the invention claimed in the 511 Patent.
49. Diebold is aware that such third parties thereby directly infringe the 511 Patent.
50. The activities of Diebold have been without express or implied license from PPS
Data.
51. Diebolds infringement of PPS Datas exclusive rights under the 511 Patent will
continue to damage PPS Datas business, causing irreparable harm for which there is no
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adequate remedy at law. Accordingly, PPS Data is entitled to injunctive relief against such
infringement.
52. As a result of Diebolds infringement of the 511 Patent, PPS is entitled to recover
from Diebold the damages sustained by PPS Data as a result of Diebolds wrongful acts in an
amount subject to proof at trial.
53. Diebold's continued infringement subsequent to notice of the 511 Patent is
willful and deliberate, entitling PPS Data to enhanced damages and reasonable attorneys fees and
costs. Diebold has had actual knowledge of the 511 Patent no later than February 2010.
VII. FOURTH CAUSE OF ACTIONINFRINGEMENT OF U.S. PATENT NO.
7440,924
54. PPS Data repeats and re-alleges the allegations of paragraphs 1 through 53 of the
Amended Complaint as if fully set forth herein.
55. Diebold has been and now is directly infringing the 924 Patent in this judicial
district, and elsewhere in the United States. Infringements by Diebold include, without
limitation, making, using, offering for sale, and/or selling within the United States, and/or
importing into the United States, a method and system for processing financial instrument
deposits physically remote from a financial institution, including at least Diebold remote deposit
solutions incorporating the patented invention that is described and claimed in the 924 Patent.
Diebolds remote deposit solutions, including without limitation the ImageWay products and
services (e.g., ImageWay ATM, ImageWay Branch, ImageWay Remote Deposit Capture,
ImageWay Consumer Capture), enables Diebolds customers to process financial instrument
deposits physically remote from a financial institution. By making, using, importing, offering
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for sale, and/or selling Diebolds remote deposit solutions, including without limitation the
ImageWay products and services (e.g., ImageWay ATM, ImageWay Branch, ImageWay Remote
Deposit Capture, ImageWay Consumer Capture), and all like systems and methods that are
covered by one or more claims of the 924 Patent, Diebold is thus liable for infringement of the
924 Patent pursuant to 35 U.S.C. 271(a).
56. Diebold is actively and knowingly inducing infringement of the 924 Patent in
this judicial district, and elsewhere in the United States, by causing third parties, such as
customers of Diebolds remote deposit solutions, including without limitation the ImageWay
products and services (e.g., ImageWay ATM, ImageWay Branch, ImageWay Remote Deposit
Capture, ImageWay Consumer Capture), to practice the invention claimed in the 924 Patent in
connection with Diebold's advertising, marketing, sales, distribution, and information
dissemination concerning the Diebold remote deposit solutions, including without limitation the
ImageWay products and services. Diebold has had actual knowledge of the 924 Patent no later
than February 2010. Accordingly, Diebold is liable for infringement of the 924 Patent pursuant
to 35 U.S.C. 271(b).
57. Diebold is contributing to the infringement by others of the 924 Patent in this
judicial district, and elsewhere in the United States by making, using, offering for sale, and
selling the Diebold remote deposit solutions, including without limitation the ImageWay
products and services (e.g., ImageWay ATM, ImageWay Branch, ImageWay Remote Deposit
Capture, ImageWay Consumer Capture), which are a material part of practicing the invention
claimed in the 924 Patent. Diebold knows that the Diebold remote deposit solutions are
specially made or adapted for processing financial instrument deposits physically remote from a
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financial institution and are not a staple article or commodity of commerce suitable for
substantial noninfringing use. Diebold advertises, markets, sells, distributes, and/or disseminates
information about Diebolds remote deposit solution, including without limitation the ImageWay
products and services through its www.diebold.com website. Diebold has had actual knowledge
of the 924 Patent no later than February 2010. Accordingly, Diebold is liable for infringement
of the 924 Patent pursuant to 35 U.S.C. 271(c)
58. Third parties, such as customers of Diebolds remote deposit solutions, including
without limitation the ImageWay products and services (e.g., ImageWay ATM, ImageWay
Branch, ImageWay Remote Deposit Capture, ImageWay Consumer Capture), directly infringe
the 924 Patent by using the Diebold remote deposit solutions, including without limitation the
ImageWay products and services (e.g., ImageWay ATM, ImageWay Branch, ImageWay Remote
Deposit Capture, ImageWay Consumer Capture), which are manufactured, marketed, and/or sold
by Diebold to practice the invention claimed in the 924 Patent.
59. Diebold is aware that such third parties thereby directly infringe the 924 Patent.
60. The activities of Diebold have been without express or implied license from PPS
Data.
61. Diebolds infringement of PPS Datas exclusive rights under the 924 Patent will
continue to damage PPS Datas business, causing irreparable harm for which there is no
adequate remedy at law. Accordingly, PPS Data is entitled to injunctive relief against such
infringement.
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62. As a result of Diebolds infringement of the 924 Patent, PPS is entitled to recover
from Diebold the damages sustained by PPS Data as a result of Diebolds wrongful acts in an
amount subject to proof at trial.
63. Diebold's continued infringement subsequent to notice of the 924 Patent is
willful and deliberate, entitling PPS Data to enhanced damages and reasonable attorneys fees and
costs. Diebold has had actual knowledge of the 924 Patent no later than February 2010.
VIII. FIFTH CAUSE OF ACTION INFRINGEMENT OF U.S. PATENT NO. 7,624,071
64. PPS Data repeats and re-alleges the allegations of paragraphs 1 through 63 of the
Amended Complaint as if fully set forth herein.
65. Diebold has been and now is directly infringing the 071 Patent in this judicial
district, and elsewhere in the United States. Infringements by Diebold include, without
limitation, making, using, offering for sale, and/or selling within the United States, and/or
importing into the United States, a method and system for processing financial instrument
deposits physically remote from a financial institution, including at least Diebold remote deposit
solutions incorporating the patented invention that is described and claimed in the 071 Patent.
Diebolds remote deposit solutions, including without limitation the ImageWay products and
services (e.g., ImageWay ATM, ImageWay Branch, ImageWay Remote Deposit Capture,
ImageWay Consumer Capture), enables Diebolds customers to process financial instrument
deposits physically remote from a financial institution. By making, using, importing, offering
for sale, and/or selling Diebolds remote deposit solutions, including without limitation the
ImageWay products and services (e.g., ImageWay ATM, ImageWay Branch, ImageWay Remote
Deposit Capture, ImageWay Consumer Capture), and all like systems and methods that are
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covered by one or more claims of the 071 Patent, Diebold is thus liable for infringement of the
071 Patent pursuant to 35 U.S.C. 271(a).
66. Diebold is actively and knowingly inducing infringement of the 071 Patent in
this judicial district, and elsewhere in the United States, by causing third parties, such as
customers of Diebolds remote deposit solutions, including without limitation the ImageWay
products and services (e.g., ImageWay ATM, ImageWay Branch, ImageWay Remote Deposit
Capture, ImageWay Consumer Capture), to practice the invention claimed in the 071 Patent in
connection with Diebold's advertising, marketing, sales, distribution, and information
dissemination concerning the Diebold remote deposit solutions, including without limitation the
ImageWay products and services. Diebold has had actual knowledge of the 071 Patent no later
than August 2011. Accordingly, Diebold is liable for infringement of the 071 Patent pursuant to
35 U.S.C. 271(b).
67. Diebold is contributing to the infringement by others of the 071 Patent in this
judicial district, and elsewhere in the United States by making, using, offering for sale, and
selling the Diebold remote deposit solutions, including without limitation the ImageWay
products and services (e.g., ImageWay ATM, ImageWay Branch, ImageWay Remote Deposit
Capture, ImageWay Consumer Capture), which are a material part of practicing the invention
claimed in the 071 Patent. Diebold knows that the Diebold remote deposit solutions are
specially made or adapted for processing financial instrument deposits physically remote from a
financial institution and are not a staple article or commodity of commerce suitable for
substantial noninfringing use. Diebold advertises, markets, sells, distributes, and/or disseminates
information about Diebolds remote deposit solution, including without limitation the ImageWay
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products and services through its www.diebold.com website. Diebold has had actual knowledge
of the 071 Patent no laterAugust 2011. Accordingly, Diebold is liable for infringement of the
071 Patent pursuant to 35 U.S.C. 271(c)
68. Third parties, such as customers of Diebolds remote deposit solutions, including
without limitation the ImageWay products and services (e.g., ImageWay ATM, ImageWay
Branch, ImageWay Remote Deposit Capture, ImageWay Consumer Capture), directly infringe
the 071 Patent by using the Diebold remote deposit solutions, including without limitation the
ImageWay products and services (e.g., ImageWay ATM, ImageWay Branch, ImageWay Remote
Deposit Capture, ImageWay Consumer Capture), which are manufactured, marketed, and/or sold
by Diebold to practice the invention claimed in the 071 Patent.
69. Diebold is aware that such third parties thereby directly infringe the 071 Patent.
70. The activities of Diebold have been without express or implied license from PPS
Data.
71. Diebolds infringement of PPS Datas exclusive rights under the 071 Patent will
continue to damage PPS Datas business, causing irreparable harm for which there is no
adequate remedy at law. Accordingly, PPS Data is entitled to injunctive relief against such
infringement.
72. As a result of Diebolds infringement of the 071 Patent, PPS is entitled to recover
from Diebold the damages sustained by PPS Data as a result of Diebolds wrongful acts in an
amount subject to proof at trial.
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73. Diebold's continued infringement subsequent to notice of the 071 Patent is
willful and deliberate, entitling PPS Data to enhanced damages and reasonable attorneys fees and
costs. Diebold has had actual knowledge of the 071 Patent no later than August 2011.
IX. PRAYER FOR RELIEF
WHEREFORE, PPS Data respectfully requests that this court enter:
a. A judgment in favor of Plaintiff PPS Data that Diebold has infringed the asserted
patents;
b. A temporary, preliminary, and permanent injunction enjoining Diebold and their
officers, directors, agents, servants, affiliates, employees, divisions, branches, subsidiaries,
parents and all others acting in concert therewith from infringement, including directly or
indirectly infringing, or inducing or contributing to the infringement by others of the asserted
patents;
c. A judgment and order requiring Diebold to pay PPS Data its damages, costs,
expenses and prejudgment and post-judgment interest for Diebolds infringement of the asserted
patents as provided under 35 U.S.C. 284;
d. A judgment and order finding that the damages awarded to PPS Data be increased
up to three times in view of Diebolds willful infringement of the asserted patents as provided
under 35 U.S.C. 284;
e. A judgment and order declaring that this is an exceptional case within the
meaning of 35 U.S.C. 285 and awarding to PPS Data its reasonable attorneys fees and other
expenses incurred in connection with this action;
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f. Any and all other relief as this Court may deem just and proper be awarded to
Plaintiff PPS Data.
X. DEMAND FOR JURY TRIAL
Pursuant to Federal Rules of Civil Procedure 38(b), PPS Data hereby demands a trial by
jury of any issues so triable by right.
Respectfully submitted,
DATED: January 5, 2012 By: /s/
Angelina TsuZions BancorporationOne South MainSuite 1100Salt Lake City, UT 84133-1109Telephone: (801) 844-7689Facsimile: (888) 309-9375
Anthony H. Son (Pro Hac Vice)WILEY REIN LLP1776 K Street, N.W.Washington, D.C. 20006Telephone: (202) 719-7000
Facsimile: (202) 719-7049
Attorneys for Plaintiff PPS DATA, LLC,
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