Automated Transactions v. Heritage Family Credit Union

7/28/2019 Automated Transactions v. Heritage Family Credit Union

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U.S.01STF:;DISTRICT i)C'. ..-!t :.:'..UNITED STATES DISTRICT COURT FOR THEDISTRICT OF VERMONT 20120EC -3 PH 2: 32

-------------------------------------------------------------------------- }C CLERK...-:yc..BY_.,__ ~ ~ ~ ~ ~ - - - - -DEPUT'( CLERKAUTOMATED TRANSACTIONS LLC, Civil Action No. 2":/Z-c,, il7

Plaintiff,- v.

JURY TRIAL DEMANDEDHERITAGE FAMILY CREDIT In'JIONDefendant.

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COMPLAINTPlaintiff Automated Transactions LLC ("Automated Transactions") alleges as follows:

PARTIES1. Automated Transactions is a limited liability company organized and e}Cisting

under the laws of the state of Delaware, having a principal place of business at 2711 CentervilRoad, Suite 400, Wilmington, DE 19808.

2. Upon information and belief, Heritage Family Credit Union ("Heritage") is acommunity credit union with a principal place of business at 30 Allen St., Rutland, VT 05701.

NATURE OF ACTION3. This is an action for patent infringement pursuant to 35 U.S.c. 101, et. seq.

JURISDICTION AND VENUE

4. This Court has jurisdiction over the subject matter of this action pursuant to 28U.S.C. 1331 and 1338.

970470

LAW OFFICESI; EIS, URSO, EWALDi;. ANDERSON, PLLC,! NORTH MAIN STREET

p. O. BOXS90i unAND, VERMONT

05702-oS90


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5. Venue is proper in this judicial district under 28 U.S.C. 1391 and 1400(b).FIRST CLAIM FOR RELIEF

6. On August 18,2009, U.S. Patent No. 7,575,158 (the ''' 158 patent") was dulyand legally issued to David M. Barcelou. A true and correct copy of the '158 patent is attachedhereto as Exhibit A.

7. By license, Automated Transactions is the exclusive licensee of the '158 patentwith the right to sue for past and future infringement and collect damages therefore in its ownname.

8. The '158 patent discloses and claims, among other things, integrated bankingand transaction machines. Claims 1-3, 11-13 and 15 state as follows:

1. An integrated banking and transaction machine for use by aconsumer to purchase access to retail A TM services, comprising:an automated teller machine;a user interface to the automated teller machine;means for identifYing the user to the automated teller machine,further comprising a smart card/magnetic stripe reader/encoderand a sensor;an Internet interface to an Internet connection to the automatedteller machine that uses encryption services and security servicesto provide the user access to the user interface and retail ATMservice; andaccess to the automated teller machine user interface whereuponthe consumer may selectively dispense currency using theintegrated banking and transaction machine providing the retailATM service;wherein the consumer can purchase access to the retail ATMservice through use of the user interface and Internet servicesconnections.

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05702-0890

2. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating the purchasewith cash.3. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating the purchasewith bills.11. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating the purchasewith a credit card.12. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating the purchasewith a debit card.13. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating the purchasewith a stored value card.15. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating the purchasewith an identification card

9. Heritage is using ATMs within this judicial district which incorporate everyelement of the above claims or substantial equivalents thereof. Therefore, Heritage is directly oindirectly infringing at least the above claims of the '158 patent, either literally or under thedoctrine of equivalents, and is liable for infringement ofthe '158 patent pursuant to 35 U.S.C.271.

10. Heritage was made aware of the '158 patent and Heritage's infringement thereoby a letter sent to the Bank on about June 20, 2012 and through a subsequent letter on October15,2012 to Mr. Ron Hance, President.

11. Heritage also provides the above ATMs for use by customers and others withinthis judicial district, and provides those customers and others with detailed explanations,instructions and information as to arrangements, applications and uses of these ATMs that

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LAW OFFICES :EIS, URSO, EWALD :, ANDERSON, PLLC

.: NORl1-l MAIN STREET p. O. BO X 890

I tUTLAND, VERMONT 057020890

promote and demonstrate how to use these A TMs in an infringing manner. These acts constituinducement to infringe the above claims of the '158 patent, either literally or under the doctrinof equivalents, whenever a customer uses one ofthe above ATMs to purchase access to retailATM services through the use of the user interface and Internet service connections. Heritage therefore liable for inducing infringement of the '158 patent pursuant to 35 V.S.c. 271

12. Heritage's actions in infringing the '158 patent have been, and continue to be,willful, deliberate and/or in conscious disregard to the rights of Automated Transactions,making this an exceptional case within the meaning of 35 V.S.C. 285.

13. Heritage's infringement of the '158 patent has caused and continues to causeirreparable harm to Automated Transactions in an amount to be proven at trial. Theinfringement of the '158 patent by Heritage will continue unless enjoined by this Court.

SECOND CLAIM FOR RELIEF

14. On October 6, 2009, U.S. Patent No. 7,597,248 (the '''248 patent") was dulyand legally issued to David M. Barcelou. A true and correct copy of the '248 patent is attachedhereto as Exhibit B.


16. The '248 patent discloses and claims, among other things, integrated bankingand transaction machines. Claims 1-3,5, 11-13 and 15 state as follows:

1. An integrated banking and transaction machine for use by aconsumer to purchase access to retail ATM services, comprising:an automated teller machine;

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LAW OFFICES ::EIS. URSO. EWALD :, ANDERSON. PLLC

" NORTH MAIN STREET P, O. BOX 890

ItUTL.AND. VERMONT 05702-0890

a user interface to the automated teller machine;means for identifying the user to the automated teller machine,further comprising a smart card/magnetic stripe reader/encoderand a sensor;network services to financial network connections to theautomated teller machine that uses encryption services andsecurity services to provide the user access to the user interfaceand retail ATM service; andaccess to the automated teller machine user interface whereuponthe consumer may selectively dispense cash using the integratedbanking and transaction machine providing the retail A TMservice;wherein the consumer can purchase access to the retail ATMservice through use of the user interface and financial networkconnections.2. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating the purchasewith cash.3. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating the purchasewith bills.5. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating the purchasewith currency.11. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating the purchasewith a credit card.12. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating the purchasewith a debit card.13. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating the purchasewith a stored value card.

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15. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating the purchasewith an identification card.

17. Heritage is using ATMs within this judicial district which incorporate everyelement of the above claims or substantial equivalents thereof. Therefore, Heritage is directly oindirectly infringing at least the above claims of the '248 patent, either literally or under thedoctrine of equivalents, and is liable for infringement of the '248 patent pursuant to 35 U.S.C.271.

18. Heritage was made aware of the '248 patent and Heritage's infringement thereoby a letter sent to the Bank on about June 20,2012 and through a subsequent letter on October15,2012 to Mr. Ron Hance, President.

19. Heritage also provides the above ATMs for use by customers and others withinthis judicial district, and provides those customers and others with detailed explanations,instructions and information as to arrangements, applications and uses of these ATMs thatpromote and demonstrate how to use these A TMs in an infringing manner. These acts constituinducement to infringe the above claims of the '248 patent, either literally or under the doctrinof equivalents, whenever a customer uses one of the above A TMs to purchase access to retailATM services through the use of the user interface and financial network connections. Heritagis therefore liable for inducing infringement of the '248 patent pursuant to 35 U.S.C. 271

20. Heritage 's actions in infringing the '248 patent have been, and continue to be,willful, deliberate and/or in conscious disregard to the rights ofAutomated Transactions,making this an exceptional case within the meaning of35 U.S.C. 285.

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21. Heritage's infringement of the '248 patent has caused and continues to causeirreparable harm to Automated Transactions in an amount to be proven at triaL Theinfringement of the '248 patent by Heritage will continue unless enjoined by this Court.

THIRD CLAIM FOR RELIEF

22. On October 13, 2009, U.S. Patent No. 7,600,677 (the ' ' '677 patent!1) was dulyand legally issued to David M. Barcelou. A true and correct copy of the '677 patent is attachedhereto as Exhibit C.


24. The '677 patent discloses and claims, among other things, integrated bankingand transaction machines. Claims 1-3,5, 11-13 and 15 state as follows:

1. An integrated banking and transaction machine for use by aconsumer to purchase access to retail A TM services, comprising:an automated teller machine;a user interface to the automated teller machine;means for identifying the user to the automated teller machine,further comprising a smart card/magnetic stripe reader/encoderand a sensor;an Internet interface to the World Wide Web to the automatedteller machine that uses encryption services and security servicesto provide the user access to the user interface and retail ATMservice; andaccess to the automated teller machine user interface whereuponthe consumer may selectively dispense currency using theintegrated banking and transaction machine providing the retailATM service;

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wherein the consumer can purchase access to the retail ATMservice through use of the user interface and World Wide Webconnections.2. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating the purchasewith cash.3. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating the purchasewith bills.5. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating the purchasewith currency.11. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating the purchasewith a credit card.12. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating the purchasewith a debit card.13. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating the purchasewith a stored value card.15. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating the purchasewith an identification card.

25, Heritage is using ATMs within this judicial district which incorporate everyelement of the above claims or substantial equivalents thereof. Therefore, Heritage is directly oindirectly infringing at least the above claims of the '677 patent, either literally or under thedoctrine of equivalents, and is liable for infringement of the '677 patent pursuant to 35 U.S.C.271.

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p. o. BO X 890 Ii LJTLAND, VERMONT

05702-0890

26. Heritage was made aware of the '677 patent and Heritage's infringement thereoby a letter sent to the Bank on about June 20, 2012 and through a subsequent letter on October,15,2012 to Mr. Ron Hance, President.

27. Heritage also provides the above ATMs for use by customers and others withinthis judicial district, and provides those customers and others with detailed explanations,instructions and information as to arrangements, applications and uses of these ATMs thatpromote and demonstrate how to use these ATMs in an infringing manner. These acts constitutinducement to infringe the above claims ofthe '677 patent, either literally or under the doctrineof equivalents, whenever a customer uses one of the above ATMs to purchase access to retailATM services through the use of the user interface and World Wide Web connections. Heritagis therefore liable for inducing infringement ofthe '677 patent pursuant to 35 U.S.C. 271

28. Heritage's actions in infringing the '677 patent have been, and continue to be,willful, deliberate and/or in conscious disregard to the rights of Automated Transactions,making this an exceptional case within the meaning of35 U.S.C. 285.

29. Heritage's infringement ofthe '677 patent has caused and continues to causeirreparable harm to Automated Transactions in an amount to be proven at trial. Theinfringement of the '677 patent by Heritage will continue unless enjoined by this Court.

FOURTH CLAIM FOR RELIEF

30. On April 20, 2010, U.S. Patent No. 7,699,220 (the "'220 patent") was duly andlegally issued to David M. Barcelou. A true and correct copy of the '220 patent is attachedhereto as Exhibit D.

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3 L By license, Automated Transactions is the exclusive licensee of the '220 patentwith the right to sue for past and future infringement and collect damages therefore in its ownname.

32. The '220 patent discloses and claims, among other things, integrated bankingand transaction machines. Claims 1-3,41-43,48,50 and 88 state as follows:

1. An automated retail terminal for use by a consumer to purchasefrom a banking or commercial ATM provider, cash access services,comprising:an automated teller machine;an Internet interface to the automated teller machine for providingthe user with services for immediately realizing access todispensable currency;a user interface to the automated teller machine;means for identifYing the user to the automated teller machine;network services to the automated teller machine that includeencryption services, security services and at least one ATMnetwork connection;and means for selectively dispensing at least one form ofdispensable currency using the automated teller machine videocommand or control touchscreen;where the consumer may purchase cash access services throughthe use of the user interface and the ATM network connection, incombination with Intranet services, Internet services or the WorldWide Web on the Internet.

2. The automated retail terminal according to claim 1, furthercomprising means for accepting cash, checks or removable mediadeposits.3. The automated retail terminal according to claim 1, furthercomprising means for check cashing by use of coins, cash orencoding devices.

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41. The automated retail terminal for use by a consumer to purchasefrom a banking or commercial ATM provider cash access servicesaccording to claim I, where, the consumer may consummate thepurchase by means of the use of a credit card.

42. The automated retail terminal for use by a consumer to purchasefrom a banking or commercial ATM provider cash access servicesaccording to claim I, where, the consumer may consummate thepurchase by means of the use of a debit card.43. The automated retail terminal for use by a consumer to purchasefrom a banking or commercial ATM provider cash access servicesaccording to claim I, where, the consumer may consummate thepurchase by means of the use of a stored value card.48. The automated retail terminal for use by a consumer topurchase from a banking or commercial ATM provider cash accessservices according to claim 1, where, the consumer mayconsummate the purchase by means of the use of an identificationcard.50. The automated retail terminal for use by a consumer topurchase from a banking or commercial ATM provider cash accessservices according to claim 1, where, the consumer mayconsummate the purchase by means of the use of a check cashingservice.88. Integrated banking and transaction apparatus for use by aconsumer, comprising:an automated teller machine; andmeans for providing a retail transaction to the consumer throughan Internet interface and an Intranet service to the automatedteller machine.


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34. Heritage was made aware of the '220 patent and Heritage's infringement thereoby a letter sent to the Bank on about June 20,2012 and through a subsequent letter on October,15,2012 to Mr. Ron Hance, President.

35. Heritage also provides the above ATMs for use by customers and others withinthis judicial district, and provides those customers and others with detailed explanations,instructions and information as to arrangements, applications and uses of these ATMs thatpromote and demonstrate how to use these ATMs in an infringing manner. These acts constitutinducement to infringe the above claims of the '220 patent, either literally or under the doctrineof equivalents, whenever a customer uses one of the above ATMs to purchase access to retailATM services through the use of the user interface and Internet service connections. Heritage itherefore liable for inducing infringement of the '220 patent pursuant to 35 U.S.c. 271

36. Heritage's actions in infringing the '220 patent have been, and continue to be,willful, deliberate and/or in conscious disregard to the rights of Automated Transactions,making this an exceptional case within the meaning of 35 U.S.C. 285.


FIFTH CLAIM FOR RELIEF

38. On August 11,2009, U.S. Patent No. 7,571,850 (the "'850 patenttl) was dulyand legally issued to David M. Barcelou. A true and correct copy ofthe '850 patent is attachedhereto as Exhibit E.

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1. An integrated banking and transaction machine for use by aconsumer to purchase access to retail A TM services, comprising:an automated teller machine;a user interface to the automated teller machine; means foridentifying the user to the automated teller machine, furthercomprising a smart card/magnetic stripe reader/encoder and asensor;an Internet interface to an Intranet connection to the automatedteller machine that uses encryption services and security servicesto provide the user access to the user interface and retail A TMserVIce;and access to the automated teller machine user interfacewhereupon the consumer may selectively dispense encodablecredit using the integrated banking and transaction machineproviding the retail ATM service;wherein the consumer can purchase access to the retail A TMservice through use of the user interface, Intranet and Internetconnections.2. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with cash.3. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with bills.11. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with a credit card.

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12. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with a debit card.13. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with a stored value card.15. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with an identification card.



43. Heritage also provides the above ATMs for use by customers and others withinthis judicial district, and provides those customers and others with detailed explanations,instructions and information as to arrangements, applications and uses of these ATMs thatpromote and demonstrate how to use these ATMs in an infringing manner. These acts constituinducement to infringe the above claims of the '850 patent, either literally or under the doctrinof equivalents, whenever a customer uses one of the above ATMs to purchase access to retailATM services through the use of the user interface, Intranet and Internet service connections.Heritage is therefore liable for inducing infringement of the '850 patent pursuant to 35 U.S.C.271

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SIXTH CLAIM FOR RELIEF

46. On September 22,2009, U.S. Patent No. 7,591,420 (the '''420 patent") was duland legally issued to David M. Barcelou. A true and correct copy of the '420 patent is attachedhereto as Exhibit F.



1. An integrated banking and transaction machine for use by aconsumer to purchase access to retail ATM services, comprising:an automated teller machine;a user interface to the automated teller machine;means for identifying the user to the automated teller machine,further comprising a smart card/magnetic stripe reader/encoderand a sensor;an Internet interface to an Intranet connection to the automatedteller machine that uses encryption services and security servicesto provide the user access to the user interface and retail A TMserVIce;

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and access to the automated teller machine user interfacewhereupon the consumer may selectively dispense encodablecurrency using the integrated banking and transaction machineproviding the retail A TM service;wherein the consumer can purchase access to the retail ATMservice through use ofthe user interface, Intranet and Internetconnections.2. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with cash.3. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with bills.11. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with a credit card.12. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with a debit card.13. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with a stored value card.15. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with an identification card.

49. Heritage is using ATMs within this judicial district which incorporate everyelement of the above claims-or substantial equivalents thereof. Therefore, Heritage is directly oindirectly infringing at least the above claims of the '420 patent, either literally or under thedoctrine of equivalents, and is liable for infringement of the '420 patent pursuant to 35 U.S.C.

LAW OFFICES15, URSO, EWALD 271,

:, ANDERSON, PUC; NORTH MAIN STREET

p. O. BOX 890! IUTLAND, VERMONT

057020890

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50. Heritage was made aware ofthe '420 patent and Heritage's infringement thereoby a letter sent to the Bank on about June 20, 2012 and through a subsequent letter on October15,2012 to Mr. Ron Hance, President.

51. Heritage also provides the above ATMs for use by customers and others withinthis judicial district, and provides those customers and others with detailed explanations,instructions and information as to arrangements, applications and uses of these ATMs thatpromote and demonstrate how to use these ATMs in an infringing manner, These acts constituinducement to infringe the above claims of the '420 patent, either literally or under the doctrinof equivalents, whenever a customer uses one of the above ATMs to purchase access to retailATM services through the use of the user interface, Intranet and Internet service connections.Heritage is therefore liable for inducing infringement of the '420 patent pursuant to 35 U.S.C.271

52. Heritage's actions in infringing the '420 patent have been, and continue to be,willful, deliberate and/or in conscious disregard to the rights of Automated Transactions,making this an exceptional case within the meaning of35 U,S.C. 285.


SEVENTH CLAIM FOR RELIEF

54, On October 6,2009, U.S. Patent No. 7,597,251 (the "'251 patent") was dulyand legally issued to David M. Barcelou. A true and correct copy of the '251 patent is attachedhereto as Exhibit G,

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1. An integrated banking and transaction machine for use by aconsumer to purchase access to retail A TM services, comprising:an automated teller machine;a user interface to the automated teller machine;means for identifying the user to the automated teller machine,further comprising a smart card/magnetic stripe reader/encoderand a sensor;network services to wireless network connections to theautomated teller machine that use encryption services andsecurity services to provide the user access to the user interfaceand retail A TM service;and access to the automated teller machine user interfacewhereupon the consumer may selectively dispense cash using theintegrated banking and transaction machine providing the retailA TM service;wherein the consumer can purchase access to the retail ATMservice through use of the user interface and wireless networkconnections.2. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with cash.3. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with bills.11. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with a credit card.

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57. Heritage is using ATMs within this judicial district which incorporate everyelement of the above claims or substantial equivalents thereof. Therefore, Heritage is directly oindirectly infringing at least the above claims of the' 251 patent, either literally or under thedoctrine of equivalents, and is liable for infringement of the '251 patent pursuant to 35 U.S.C.271.


59. Heritage also provides the above ATMs for use by customers and others withinthis judicial district, and provides those customers and others with detailed explanations,instructions and information as to arrangements, applications and uses of these ATMs thatpromote and demonstrate how to use these ATMs in an infringing manner. These acts constitu

inducement to infringe the above claims of the '251 patent, either literally or under the doctrinof equivalents, whenever a customer uses one of the above A TMs to purchase access to retailATM services through the use of the user interface and wireless network connections. Heritageis therefore liable for inducing infringement of the '251 patent pursuant to 35 U.S.C. 271

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EIGHTH CLAIM FOR RELIEF

62. On November 17,2009, U.S. Patent No. 7,617,973 (the "'973 patent") was dulyand legally issued to David M. Barcelou. A true and correct copy of the '973 patent is attachedhereto as Exhibit H.



1. An integrated banking and transaction machine for use by aconsumer to purchase access to retail ATM services, comprising:an automated teller machine;a user interface to the automated teller machine;means for identifying the user to the automated teller machine,further comprising a smart card/magnetic stripe reader/encoderand a sensor;network services to Intranet services connections to theautomated teller machine that use encryption services andsecurity services to provide the user access to the user interfaceand retail ATM service;

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and access to the automated teller machine user interfacewhereupon the consumer may selectively dispense currency usingthe integrated banking and transaction machine providing theretail ATM service;wherein the consumer can purchase access to the retail ATMservice through use of the user interface and Intranet servicesconnections.2. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with cash.3. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with bills.11. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with a credit card.12. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with a debit card.13. The integrated banking' and transaction machine according toclaim 1, further comprising means for consummating thepurchase with a stored value card.15. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with an identification card.

65. Heritage is using ATMs within this judicial district which incorporate everyelement of the above claims or substantial equivalents thereof. Therefore, Heritage is directly or

indirectly infringing at least the above claims of the '973 patent, either literally or under thedoctrine of equivalents, and is liable for infringement of the '973 patent pursuant to 35 U.S.C.271.

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66. Heritage was made aware of the '973 patent and Heritage's infringement thereofby a letter sent to the Bank on about June 20, 2012 and through a subsequent letter on October,15,2012 to Mr. Ron Hance, President.

67. Heritage also provides the above ATMs for use by customers and others withinthis judicial district, and provides those customers and others with detailed explanations,instructions and information as to arrangements, applications and uses of these ATMs thatpromote and demonstrate how to use these ATMs in an infringing manner. These acts constituteinducement to infringe the above claims of the '973 patent, either literally or under the doctrineof equivalents, whenever a customer uses one of the above ATMs to purchase access to retailATM services through the use of network services. Heritage is therefore liable for inducinginfringement of the '973 patent pursuant to 35 U.S.C. 271

68. Heritage's actions in infringing the '973 patent have been, and continue to be,willful, deliberate and/or in conscious disregard to the rights of Automated Transactions,making this an exceptional case within the meaning of 35 U.S,C. 285.

69. Heritage's infringement of the '973 patent has caused and continues to causeirreparable harm to Automated Transactions in an amount to be proven at trial. Theinfringement of the' 973 patent by Heritage will continue unless enjoined by this Court.

NINTH CLAIM FOR RELIEF

70. On November 24,2009, u.s. Patent No. 7,621,444 (the '''444 patent") was dulyand legally issued to David M. Barcelou. A true and correct copy of the'444 patent is attachedhereto as Exhibit I.

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72. The'444 patent discloses and claims, among other things, integrated bankingand transaction machines. Claims 1-3, 11-13 and 15 state as follows:

1. An integrated banking and transaction machine for use by aconsumer to purchase access to retail ATM services, comprising:an automated teller machine;a user interface to the automated teller machine;and means for identifying the user to the automated tellermachine, further comprising a smart card/magnetic stripereader/encoder and a sensor;network services to banking network connections to theautomated teller machine that use encryption services andsecurity services to provide the user access to the user interfaceand retail ATM service;and access to the automated teller machine user interfacewhereupon the consumer may selectively dispense cash using theintegrated banking and transaction machine providing the retailATM service;wherein the consumer can purchase access to the retail ATMservice through use of the user interface and banking networkconnections.2. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with cash.3. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with bills.11. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with a credit card.

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73. Heritage is using ATMs within this judicial district which incorporate everyelement of the above claims or substantial equivalents thereof. Therefore, Heritage is directly orindirectly infringing at least the above claims of the '444 patent, either literally or under thedoctrine of equivalents, and is liable for infringement of the '444 patent pursuant to 35 U.S.C.271.


75. Heritage also provides the above ATMs for use by customers and others withinthis judicial district, and provides those customers and others with detailed explanations,instructions and information as to arrangements, applications and uses of these ATMs thatpromote and demonstrate how to use these ATMs in an infringing manner. These acts constituteinducement to infringe the above claims of the'444 patent, either literally or under the doctrineof equivalents, whenever a customer uses one of the above ATMs to purchase access to retailATM services through the use of network services. Heritage is therefore liable for inducinginfringement of the '444 patent pursuant to 35 U.S.C. 271

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76. Heritage's actions in infringing the '444 patent have been, and continue to be,willful, deliberate and/or in conscious disregard to the rights ofAutomated Transactions,making this an exceptional case within the meaning of 35 U.S.C. 285.


TENTH CLAIM FOR RELIEF

78. On September 14,2010, U.S. Patent No. 7,793,830 (the '''830 patentII) was dulyand legally issued to David M. Barcelou. A true and correct copy of the '830 patent is attachedhereto as Exhibit J.


80. The '830 patent discloses and claims, among other things, integrated bankingand transaction machines. Claims 1-3, 11-l3 and 15 state as follows:

1. An integrated banking and transaction machine for use by aconsumer to purchase access to retail A TM services, comprising:an automated teller machine;a user interface to the automated teller machine;means for identifYing the user to the automated teller machine,further comprising a smart card/magnetic stripe reader/encoderand a sensor;an Internet interface to the automated teller machine that usesencryption services and security services to provide the useraccess to the user interface and retail ATM service;

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and access to the automated teller machine user interfacewhereupon the consumer may selectively dispense currency usingthe integrated banking and transaction machine providing theretail ATM service;wherein the consumer can purchase access to the retail ATMservice through use of the user interface and the Internetinterface.2. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with cash.3. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with bills.11. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with a credit card.12. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with a debit card.13. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase wi th a stored value card.15. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with an identification card.

81. Heritage is using ATMs within this judicial district which incorporate everyelement of the above claims or substantial equivalents thereof. Therefore, Heritage is directly or

indirectly infringing at least the above claims of the '830 patent, either literally or under thedoctrine of equivalents, and is liable for infringement of the '830 patent pursuant to 35 U.S.C.

LAW OFFICES 271.; S. URSO, EWALD'INOERSON, PLLCI. ORTH MAIN STREET

RO. BOX 89 0I: TLAND, VERMONT

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83. Heritage also provides the above ATMs for use by customers and others withinthis judicial district, and provides those customers and others with detailed explanations,instructions and information as to arrangements, applications and uses of these ATMs thatpromote and demonstrate how to use these ATMs in an infringing manner. These acts constituteinducement to infringe the above claims of the '830 patent, either literally or under the doctrineof equivalents, whenever a customer uses one of the above ATMs to purchase access to retailA TM services through the use of the user interface and Internet service connections. Heritage istherefore liable for inducing infringement of the '830 patent pursuant to 35 U.S.C. 271



ELEVENTH CLAIM FOR RELIEF

86. On September 28,2010, U.S. Patent No. 7,802,718 (the "'718 patent") was dulyand legally issued to David M. Barcelou. A true and correct copy of the '718 patent is attachedhereto as Exhibit K.

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1. An integrated banking and transaction machine for use by aconsumer to purchase access to retail automated teller machineservices, comprising: an automated teller machine;a user interface to the automated teller machine;an identification device for identifying the user to the automatedteller machine, further comprising a smart card/magnetic stripereader/encoder and a sensor;an Internet interface to an Intranet connection to the automatedteller machine that uses encryption services and security servicesto provide the user access to the user interface and retailautomated teller machine service;and access to the automated teller machine user interfacewhereupon the consumer may selectively dispense bills and/orcoins using the integrated banking and transaction machineproviding the retail automated teller machine service;wherein the consumer can purchase access to the retail automatedteller machine service through use of the user interface, Intranetand Internet connections,2. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with cash.3. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with bills.

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11. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with a credit card.12. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with a debit card.13. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with a stored value card.15. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with an identification card.

89. Heritage is using A TMs within this judicial district which incorporate everyelement of the above claims or substantial equivalents thereof. Therefore, Heritage is directly orindirectly infringing at least the above claims of the '718 patent, either literally or under thedoctrine of equivalents, and is liable for infringement ofthe '718 patent pursuant to 35 U.S.C.271.

90. Heritage was made aware of the '718 patent and Heritage's infringement thereofby a letter sent to the Bank on about June 20,2012 and through a subsequent letter on October,15,2012 to Mr. Ron Hance, President.

91. Heritage also provides the above A TMs for use by customers and others withinthis judicial district, and provides those customers and others with detailed explanations,instructions and information as to arrangements, applications and uses of these ATMs thatpromote and demonstrate how to use these ATMs in an infringing manner. These acts constituteinducement to infringe the above claims of the '718 patent, either literally or under the doctrineof equivalents, whenever a customer uses one of the above A TMs to purchase access to retailA TM services through the use of the user interface, Intranet and Internet service connections.

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Heritage is therefore liable for inducing infringement of the '718 patent pursuant to 35 U,S.C.271



TWELTH CLAIM FOR RELIEF94. On November 23,2010, U.S. Patent No. 7,837,101 (the "'101 patent") was duly

and legally issued to David M. Barcelou. A true and correct copy of the' 101 patent is attachedhereto as Exhibit L.


96. The' 101 patent discloses and claims, among other things, integrated bankingand transaction machines. Claims 1-3, 11-13 and 15 state as follows:

1. An integrated banking and transaction machine for use by aconsumer to purchase access to retail automated teller machineservices, comprising: an automated teller machine;a user interface to the automated teller machine;means for identifying the user to the automated teller machine,further comprising a smart card/magnetic stripe reader/encoderand a sensor;network services to satellite network connections to theautomated teller machine that use encryption services and

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security services to provide the user access to the user interfaceand retail A TM service;and access to the automated teller machine user interfacewhereupon the consumer may selectively dispense cash using theintegrated banking and transaction machine providing the retailATM service;wherein the consumer can purchase access to the retail automatedteller machine service through use of the user interface andsatellite network connections.2. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with cash.3. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with bills.11. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with a credit card.12. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with a debit card.13. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with a stored value card.15. The integrated banking and transaction machine according toclaim 1, further comprising means for consummating thepurchase with an identification card.

97. Heritage is using ATMs within this judicial district which incorporate everyelement of the above claims or substantial equivalents thereof. Therefore, Heritage is directly orindirectly infringing at least the above claims of the "101 patent, either literally or under thedoctrine of equivalents, and is liable for infringement of the '101 patent pursuant to 35 U.S.C.271.

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98. Heritage was made aware of the '101 patent and Heritage's infringement thereofby a letter sent to the Bank on about June 20, 2012 and through a subsequent letter on October,15,2012 to Mr. Ron Hance, President .

99. Heritage also provides the above ATMs for use by customers and others withinthis judicial district, and provides those customers and others with detailed explanations,instructions and information as to arrangements, applications and uses of these ATMs thatpromote and demonstrate how to use these ATMs in an infringing manner. These acts constituteinducement to infringe the above claims of the '101 patent, either literally or under the doctrineof equivalents, whenever a customer uses one of the above ATMs to purchase access to retailATM services through the use of network services. Heritage is therefore liable for inducinginfringement of the '101 patent pursuant to 35 U.S.C. 271


101. Heritage's infringement of the '101 patent has caused and continues to causeirreparable harm to Automated Transactions in an amount to be proven at trial. Theinfringement of the' 101 patent by Heritage will continue unless enjoined by this Court.

PRAYER FOR RELIEFWHEREFORE, Automated Transactions prays for judgment against Heritage asfollows:

1) Declaring Heritage has infringed United States Patent No. 7,575,158;

2) Permanently enjoining Heritage, its officers, directors, agents, subsidiaries andemployees, and those in privity or in active concert with tern, from further

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activities that constitute infringement, contributory infringement and/or inducinginfringement of United States Patent No. 7,575,158;

3) Awarding lost profits or a reasonable royalty and other damages arising fromHeritage's infringement of United States Patent No. 7,575,158 including trebledamages, to Automated Transactions, together with prejudgment and post-judgment interest, in an amount according to proof;

4) This case be declared an "exceptional case" within the meaning of 35 U.S.C. 285and awarding treble damages and reasonable attorneys' fees to AutomatedTransactions;

5) Declaring Heritage has infringed United States Patent No. 7,597,248;6) Permanently enjoining Heritage, its officers, directors, agents, subsidiaries and

employees, and those in privity or in active concert with them, from furtheractivities that constitute infringement, contributory infringement and/or inducinginfringement of United States Patent No. 7,597,248.


8) This case be declared an "exceptional case" within the meaning of 35 U.S.C. 285and awarding treble damages and reasonable attorneys' fees to AutomatedTransactions;

9) Declaring Heritage has infringed United States Patent No. 7,600,677;

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10) Permanently enjoining Heritage, its officers, directors, agents, subsidiaries andemployees, and those in privity or in active concert with them, from furtheractivities that constitute infringement, contributory infringement and/or inducinginfringement of United States Patent No. 7,600,677.


12) This case be declared an "exceptional case" within the meaning of35 U.S.C. 285and awarding treble damages and reasonable attorneys' fees to AutomatedTransactions;

13)Declaring Heritage has infringed United States Patent No. 7,699,220;14) Permanently enjoining Heritage, its officers, directors, agents, subsidiaries and



16) This case be declared an "exceptional case" within the meaning of 35 U.S.C. 285and awarding treble damages and reasonable attorneys' fees to Automated

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Transactions.




20) This case be declared an "exceptional case" within the meaning of 35 U.S.C. 285and awarding treble damages and reasonable attorneys' fees to AutomatedTransactions.




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25)Declaring Heritage has infringed United States Patent No.7 ,597 ,251;26) Permanently enjoining Heritage, its officers, directors, agents, subsidiaries and

employees, and those in privity or in active concert with them, from furtheractivities that constitute infringement, contributory infringement and/or inducinginfringement of United States Patent No, 7,597,251.

27) Awarding lost profits or a reasonable royalty and other damages arising fromHeritage's infringement of United States Patent No.7 ,597 ,251 including trebledamages, to Automated Transactions, together with prejudgment and post-judgment interest, in an amount according to proof;


29)Declaring Heritage has infringed United States Patent No.7 ,617 ,973;30) Permanently enjoining Heritage, its officers, directors, agents, subsidiaries and


31) Awarding lost profits or a reasonable royalty and other damages arising fromHeritage's infringement of United States Patent No. 7,617,973 including treble

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damages, to Automated Transactions, together with prejudgment and post-judgment interest, in an amount according to proof;






37)Dec1aring Heritage has infringed United States Patent No. 7,793,830;38) Permanently enjoining Heritage, its officers, directors, agents, subsidiaries and


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43) Awarding lost profits or a reasonable royalty and other damages arising fromHeritage's infringement of United States Patent No.7 ,802, 718 including trebledamages, to Automated Transactions, together with prejudgment and post-judgment interest, in an amount according to proof;

44) This case be declared an "exceptional case" within the meaning of 35 U.S.C. 285and awarding treble damages and reasonable attorneys' fees to Automated

Transactions.45)Declaring Heritage has infringed United States Patent No. 7,837,101;46) Permanently enjoining Heritage, its officers, directors, agents, subsidiaries and

employees, and those in privity or in active concert with them, from further

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activities that constitute infringement, contributory infringement and/or inducinginfringement of United States Patent No.7 ,837, I 0 I.

47) Awarding lost profits or a reasonable royalty and other damages arising fromHeritage's infringement of United States Patent No.7 ,837,10 I includingtreble damages, to Automated Transactions, together with prejudgment andpost-judgment interest, in an amount according to proof;

48) This case be declared an "exceptional case" within the meaning of 35 U.S.C.285 and awarding treble damages and reasonable attorneys' fees toAutomated Transactions.

49) Awarding Automated Transactions such other and further relief as the Courtdeems just and proper.

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LAW OFFICES :: S, URSO, EWALD ,:NDERSON, PLLC

DEMAND FOR JURY TRIALPlaintiff requests a trial by jury of all issues.

Respectfully submitted,AUTOMATED TRANSACTIONS LLCBy its attorneys,

Dated: December 3, 2012hew . Anderson, Esquire (VT Bar

#3877)Reis Urso Ewald & Anderson, PC

North Main StreetRutland, VT 05702-0890(802) 775-2361mdand [email protected]:

Jamie N. HageHage Hodes, P.A., Attorneys-at-Law1855 Elm StreetManchester, New Hampshire 03104(603) [email protected] L. Jacobs, Jr.Gerard F. DiebnerJohn MurrayTannenbaum Helpern Syracuse & Hirschtritt LLP900 Third AvenueNew York, New York 10022(212) 508-6700

Automated Transactions v. Heritage Family Credit Union

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Transcript of Automated Transactions v. Heritage Family Credit Union