UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION : BMO HARRIS BANK NATIONAL : ASSOCIATION, : : Plaintiff,

: : v. : : MAXIM INTEGRATED PRODUCTS, INC. : : Defendant. :

Case No. 12 CV 7912

JURY TRIAL DEMANDED

COMPLAINT FOR DECLARATORY JUDGMENT OF NON-INFRINGEMENT AND INVALIDITY Plaintiff, BMO Harris Bank National Association (BMO), complains and avers against Defendant, Maxim Integrated Products, Inc. (Maxim), as follows: NATURE OF THE ACTION 1. This action seeks declaratory judgment that: (i) BMO has not infringed,

directly or indirectly, any valid and enforceable claims of U.S. Patent No. 5,940,510 (the 510 patent), U.S. Patent No. 5,949,880 (the 880 patent), U.S. Patent No. 6,105,013 (the 013 patent), and U.S. Patent No. 6,237,095 (the 095 patent) (collectively patents-at-issue); and (ii) each of the claims of the patents-at-issue is invalid. 2. The relief sought by BMO is necessary because Maxim has asserted and

continues to assert that BMO has infringed at least the patents-at-issue and demanded that BMO pay licensing fees for the alleged infringement. Because Maxim previously accused many other entities of infringing the patents-at-issue and has instigated patent infringement

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lawsuits against certain of those entities, BMO is of the firm belief that Maxim will institute litigation imminently against it if BMO does not enter into a fee-bearing, license agreement and capitulate to Maxims demands. THE PARTIES 3. Plaintiff BMO Harris Bank National Association is a chartered U.S.

National Bank and maintains a principal place of business at 111 West Monroe Street, Chicago, Illinois 60603. 4. Financial Corp. 5. On information and belief, Defendant Maxim is a corporation organized BMO Harris Bank National Association is a subsidiary of the BMO

and existing under the laws of Delaware, having its principal place of business at 120 San Gabriel Drive, Sunnyvale, California. JURISDICTION AND VENUE 6. BMO brings this action under Title 35 of the United States Code, 1 et

seq., with a specific remedy sought under the Federal Declaratory Judgments Act, 28 U.S.C. 2201 and 2202, to obtain a declaration of non-infringement and invalidity with respect to the patents-at-issue. 7. Because this action arises under the Patent Laws of the United States,

this Court has subject matter jurisdiction under 28 U.S.C. 1331 and 1338(a). 8. This Court has personal jurisdiction over Maxim because Maxim has

maintained continuous and systematic contacts with the state of Illinois, and Maxim has purposefully availed itself of the benefits and protection of the laws of the state of Illinois.

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9.

Maxim, directly and/or through its distribution networks, designs, offers

for sale, sells, and/or distributes products within the state of Illinois. 10. Upon information and belief, Maxim maintains a sales and design office

within the state of Illinois. See Exhibit A, a printout from Maxim's website at http://www.maxim-ic.com/sales/offices/worldwide.mvp, showing Maxim's worldwide sales offices, including Illinois. 11. Upon information and belief, Maxim engages franchised distributors

within the state of Illinois. See Exhibit B, a printout from Maxim's website at http://www.maximintegrated.com/sales/offices/distributor/franchise.mvp#, showing at least three franchised distributors in Illinois. 12. In addition, Maxim operates an interactive website at www.maxim-

ic.com through which, on information and belief, persons in the state of Illinois can and do order products from Maxim, which are shipped to Illinois. See http://www.maximic.com/sales/. 13. Venue is proper in this District pursuant to 28 U.S.C. 1391(b) and (c). THE PATENTS 14. The 510 Patent, entitled Transfer of Valuable Information Between a

Secure Module and Another Module, purportedly issued from an original application filed on January 31, 1996. A copy of the 510 patent is attached as Exhibit C. 15. On information and belief, Maxim is, and purports to be, the assignee of

all legal rights, title and interest in and to the 510 Patent. A true and correct copy of the assignment of the 510 Patent to Maxim is attached as Exhibit D.

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The 880 Patent, entitled Transfer of Valuable Information Between a

Secure Module and Another Module, purportedly issued from an original application filed on November 26, 1997. A copy of the 880 patent is attached as Exhibit E. 17. On information and belief, Maxim is, and purports to be, the assignee of

all legal rights, title and interest in and to the 880 Patent. A true and correct copy of the assignment of the 880 Patent to Maxim is attached as Exhibit F. 18. The 013 patent, entitled Method, Apparatus, System and Firmware for

Secure Transactions, purportedly issued from an original application filed on March 10, 1998. A copy of the 013 patent is attached as Exhibit G. 19. On information and belief, Maxim is, and purports to be, the assignee of

all legal rights, title and interest in and to the 013 Patent. A true and correct copy of the assignment of the 013 Patent to Maxim is attached as Exhibit H. 20. The 095 Patent, entitled Apparatus for Transfer of Secure Information

Between a Data Carrying Module and an Electronic Device, purportedly issued from an original application filed on January 6, 1998. A copy of the 095 patent is attached as Exhibit I. 21. On information and belief, Maxim is, and purports to be, the assignee of

all legal rights, title and interest in and to the 095 Patent. A true and correct copy of the assignment of the 095 Patent to Maxim is attached as Exhibit J. DEFENDANTS DEMAND COMMUNICATIONS TO BMO 22. Although BMO cannot confirm its contemporaneous receipt, on or about

December 2, 2011, Maxim allegedly sent a demand letter to Bank of Montreals General

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Counsel in Toronto, Ontario Canada alleging that BMOs iPhone mobile banking application infringed the 510 Patent, the 880 Patent, the 013 Patent, and the 095 Patent. 23. Specifically, the December 2 letter stated: It is our belief that BMO is

infringing a number of the patents within the Maxim Mobile Transaction Patent Portfolio. In particular, we believe that the BMO mobile platforms infringe certain claims within the portfolio via direct infringement, joint infringement, contributory infringement and/or inducement. 24. Maxims December 2, 2011 letter enclosed two attachments, one entitled

Representative Claim Charts For BMO Bank Mobile Transactions that purports to show infringement by BMO of four of Maxims patents, and the other entitled Analysis of BMO Mobile Banking Software Application: Code Decompilation and Analysis, Packet Sniffing and Network Traffic Analysis that purports to analyze the operation of BMOs mobile banking application. 25. The December 2, 2011 letter further demanded payments from BMO.

Specifically, the letter stated: Maxim is offering licensing terms at a substantial discount relative to the value of these patents in order to avoid a litigious or drawn-out resolution. If I do not hear from BMO within the one month period, Maxim will assume that BMO does not want to obtain a license in a non-litigious manner and will act accordingly. Once this deadline has passed, BMO should also expect the offered royalty payments to dramatically increase. 26. Maxims December 2, 2011 letter and attached documentation, which

set forth a one month deadline to respond, was a clear and unmistakable threat of litigation against BMO.

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On or about May 11, 2012, Maxim sent a second demand letter to BMO.

Specifically, that letter stated: Bank of Montreal has failed to acknowledge Maxim's letter and documentation. Please contact me so that I can provide you additional information about Maxim's licensing program and discounted, non-litigious royalty structure. 28. Maxims May 11, 2012 letter is a further clear and unmistakable threat

of litigation against BMO. 29. On or about May 17, 2012, counsel for BMO wrote to counsel for

Maxim, acknowledged receipt of Maxims May 11, 2012 letter, and indicated that BMO had no prior knowledge of the alleged Maxim letter of December 2, 2011. In further correspondence on or about June 6, 2012, BMO counsel requested a copy of the December 2, 2011 letter and its attachments. 30. In correspondence, dated September 11, 2012, Maxim took the position

that BMO had sufficient time to review the matter and the substantial allegations of infringement, and requested an in-person meeting between representatives of BMO and Maxims litigation counsel and Chief IP Counsel to discuss the patents described in Maxims letters and provide specific details on Maxims licensing program. 31. Maxims September 11, 2012 email correspondence is yet even further

evidence of a clear and unmistakable threat of litigation against BMO. 32. Maxim has systematically threatened and/or initiated lawsuits against

multiple, different entities alleging infringement of the claims of the 510, 880, 013, and 095 patents, including allegations of infringement against banking entities based on mobile banking applications. Currently, Maxim is involved in at least sixteen (16) separate lawsuits filed since January 6, 2012 alleging patent infringement, including allegations of infringement of the

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patents-at-issue. Since January 6, 2012, Maxim has filed ten such lawsuits in the United States District Court for the Eastern District of Texas alone. 33. On February 23, 2012, Maxim filed a motion with the U.S. Judicial

Panel on Multidistrict Litigation (the MDL Panel) seeking transfer and consolidation of all pending actions involving the patents-at-issue to the Eastern District of Texas. See Mot. Transfer (D.I. 1), In Re: Maxim Integrated Products. Inc. Patent Litigation, No. 2354 (MDL Feb. 23, 2012). 34. On June 11, 2012, the MDL Panel issued a Corrected Transfer Order

(D.I. 101) that directed centralization of fourteen (14) Maxim lawsuits, across five judicial districts, in the Western District of Pennsylvania for consolidated pretrial proceedings before Judge Nora Barry Fischer. That same day, the MDL Panel issued a Conditional Transfer Order (D.I. 99) that directed that three additional lawsuits involving Maxim's allegations of patent infringement also be centralized in the Western District of Pennsylvania. 35. Maxims clear and unmistakable threats against BMO, as well as

numerous threats and lawsuits alleging infringement of the patents-at-issue against other entities, including banking entities having mobile banking applications, demonstrate that Maxim intends to pursue litigation against BMO. 36. BMO has not infringed, directly or indirectly, any valid and enforceable

claims of the patents-at-issue, and cannot therefore be liable for infringement of any such claims. 37. An Article III case or controversy therefore exists inasmuch as

Defendants have asserted rights under patents purportedly based on a certain identified

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ongoing activity by BMO, and BMO has asserted that it has the right to engage in the accused activity without a license. 38. adjudication. COUNT I (Declaratory Judgment of Non-Infringement of the 510 Patent) 39. BMO realleges and incorporates by reference the allegations contained The instant dispute is therefore clearly defined and is ripe for

in paragraphs 1-38 of this Complaint as though set forth in full herein. 40. BMO does not infringe, has not infringed, and does not and has not

induced infringement or contributed to infringement of any valid and enforceable claim of the 510 Patent, either literally or under the doctrine of equivalents. 41. Accordingly, there exists an actual and justiciable controversy between

BMO and Defendants with respect to infringement of the 510 patent. 42. BMO hereby seeks entry of a declaratory judgment that it has not

infringed and is not infringing, directly or indirectly, any valid or enforceable claim of the 510 Patent. . COUNT II (Declaratory Judgment of Non-Infringement of the 880 Patent) 43. BMO realleges and incorporates by reference the allegations contained

in paragraphs 1-42 of this Complaint as though set forth in full herein.

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44.

BMO does not infringe, has not infringed, and does not and has not

induced infringement or contributed to infringement of any valid and enforceable claim of the 880 Patent, either literally or under the doctrine of equivalents. 45. Accordingly, there exists an actual and justiciable controversy between

BMO and Defendants with respect to infringement of the 880 patent. 46. BMO hereby seeks entry of a declaratory judgment that it has not

infringed and is not infringing, directly or indirectly, any valid or enforceable claim of the 880 Patent. COUNT III (Declaratory Judgment of Non-Infringement of the 013 Patent) 47. BMO realleges and incorporates by reference the allegations contained

in paragraphs 1-46 of this Complaint as though set forth in full herein. 48. BMO does not infringe, has not infringed, and does not and has not

induced infringement or contributed to infringement of any valid and enforceable claim of the 013 Patent, either literally or under the doctrine of equivalents. 49. Accordingly, there exists an actual and justiciable controversy between

BMO and Defendants with respect to infringement of the 013 patent. 50. BMO hereby seeks entry of a declaratory judgment that it has not

infringed and is not infringing, directly or indirectly, any valid or enforceable claim of the 013 Patent.

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COUNT IV (Declaratory Judgment of Non-Infringement of the 095 Patent) 51. BMO realleges and incorporates by reference the allegations contained

in paragraphs 1-50 of this Complaint as though set forth in full herein. 52. BMO does not infringe, has not infringed, and does not and has not

induced infringement or contributed to infringement of any valid and enforceable claim of the 095 patent, either literally or under the doctrine of equivalents. 53. Accordingly, there exists an actual and justiciable controversy between

BMO and Defendants with respect to infringement of the 095 patent. 54. BMO hereby seeks entry of a declaratory judgment that it has not

infringed and is not infringing, directly or indirectly, any valid or enforceable claim of the 095 Patent. COUNT V (Declaratory Judgment of Invalidity of the 510 Patent) 55. BMO realleges and incorporates by reference the allegations contained

in paragraphs 1-54 of this Complaint as though set forth in full herein. 56. The claims of the 510 patent are invalid for failure to meet the

requirements of Title 35, United States Code, including, but not limited to Section 101, 102, 103, and 112 and the rules, regulations and laws pertaining thereto. 57. Accordingly, there exists an actual and justiciable controversy between

BMO and Defendants with respect to the validity of the 510 patent. 58. BMO hereby seeks entry of a declaratory judgment that the claims of the

510 Patent are invalid.

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COUNT VI (Declaratory Judgment of Invalidity of the 880 Patent) 59. BMO realleges and incorporates by reference the allegations contained

in paragraphs 1-58 of this Complaint as though set forth in full herein. 60. The claims of the 880 patent are invalid for failure to meet the

requirements of Title 35, United States Code, including, but not limited to Section 101, 102, 103, and 112 and the rules, regulations and laws pertaining thereto. 61. Accordingly, there exists an actual and justiciable controversy between

BMO and Defendants with respect to the validity of the 880 patent. 62. BMO hereby seeks entry of a declaratory judgment that the claims of the

880 Patent are invalid. COUNT VII (Declaratory Judgment of Invalidity of the 013 Patent) 63. BMO realleges and incorporates by reference the allegations contained

in paragraphs 1-62 of this Complaint as though set forth in full herein. 64. The claims of the 013 patent are invalid for failure to meet the

requirements of Title 35, United States Code, including, but not limited to Section 101, 102, 103, and 112 and the rules, regulations and laws pertaining thereto. 65. Accordingly, there exists an actual and justiciable controversy between

BMO and Defendants with respect to the validity of the 013 patent. 66. BMO hereby seeks entry of a declaratory judgment that the claims of the

013 Patent are invalid.

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COUNT VIII (Declaratory Judgment of Invalidity of the 095 Patent) 67. BMO realleges and incorporates by reference the allegations contained

in paragraphs 1-66 of this Complaint as though set forth in full herein. 68. The claims of the 095 patent are invalid for failure to meet the

requirements of Title 35, United States Code, including, but not limited to Section 101, 102, 103, and 112 and the rules, regulations and laws pertaining thereto. 69. Accordingly, there exists an actual and justiciable controversy between

BMO and Defendants with respect to the validity of the 095 patent. 70. BMO hereby seeks entry of a declaratory judgment that the claims of the

095 Patent are invalid. PRAYER FOR RELIEF WHEREFORE, BMO respectfully requests that this Court: (a) declare that BMO has not infringed and does not infringe any valid and

enforceable claim of the 510 patent either directly or indirectly; (b) declare that BMO has not infringed and does not infringe any valid and

enforceable claim of the 880 patent either directly or indirectly; (c) declare that BMO has not infringed and does not infringe any valid and

enforceable claim of the 013 patent either directly or indirectly; (d) declare that BMO has not infringed and does not infringe any valid and

enforceable claim of the 095 patent either directly or indirectly; (e) (f) declare that the claims of the 510 patent are invalid; declare that the claims of the 880 patent are invalid;

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(g) (h) (i)

declare that the claims of the 013 patent are invalid; declare that the claims of the 095 patent are invalid; find that this is an exceptional case under 35 U.S.C. 285 and award

BMO its reasonable attorneys fees and costs of suit incurred herein; and (j) such other and further relief as this Court deems just and proper.

Dated: October 2 , 2012

/s/ Emily Newhouse Dillingham Emily Newhouse Dillingham (IL #6290333) PAUL HASTINGS LLP 191 North Wacker Drive Thirtieth Floor Chicago, Illinois 60606 Telephone: (312) 499-6292 Facsimile: (312) 499-6192 emilydillingham@paulhastings.com Robert M. Masters (pro hac vice to be filed) Timothy P. Cremen (pro hac vice to be filed) PAUL HASTINGS LLP 875 15th Street, N.W. Washington, DC 20005 Telephone: (202) 551-1700 Facsimile: (312) 551-1705 robmasters@paulhastings.com timothycremen@paulhastings.com

ATTORNEYS FOR BMO HARRIS BANK NATIONAL ASSOCIATION

LEGAL_US_E # 100389775.3

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