DCT
1:18-cv-03696
Grecia v. JPMorgan Chase & Co
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: William Grecia (Pennsylvania)
- Defendant: JPMorgan Chase Bank, N.A. (New York)
- Plaintiff’s Counsel: WAWRZYN & JARVIS LLC
- Case Identification: 1:18-cv-03696, S.D.N.Y., 09/14/2018
- Venue Allegations: Venue is alleged to be proper in the Southern District of New York because Defendant JPMorgan Chase Bank, N.A. maintains corporate offices and conducts continuous and systematic business within the district.
- Core Dispute: Plaintiff alleges that Defendant’s Chase QuickPay service, which utilizes the Zelle network, infringes two patents related to processes for authorizing and monitoring access to digital content.
- Technical Context: The technology at issue falls within the domain of digital rights management (DRM) and secure, identity-based access control for digital assets.
- Key Procedural History: The complaint notes that on September 8, 2018, in a prior case involving the same patents (Grecia v. Mastercard Int'l Inc.), the S.D.N.Y. issued an order construing several key claim terms. These constructions are binding precedent in the same district and will significantly influence this case. Furthermore, an ex parte reexamination of the ’555 Patent, concluded after the filing of this complaint, resulted in the cancellation of all asserted claims (1, 2, and 8), a development that poses a fundamental challenge to the infringement allegations against that patent.
Case Timeline
| Date | Event |
|---|---|
| 2010-03-21 | Earliest Priority Date for ’308 and ’555 Patents |
| 2013-03-19 | U.S. Patent No. 8,402,555 Issued |
| 2014-11-11 | U.S. Patent No. 8,887,308 Issued |
| 2018-09-08 | Claim Construction Order in Grecia v. Mastercard Issued |
| 2018-09-14 | Complaint Filing Date |
| 2023-11-17 | Reexamination Certificate (C1) for ’555 Patent Issued |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 8,887,308 - "Digital Cloud Access (PDMAS Part III)"
- Patent Identification: U.S. Patent No. 8,887,308, "Digital Cloud Access (PDMAS Part III)," issued November 11, 2014.
- The Invention Explained:
- Problem Addressed: The patent's background describes the limitations of traditional Digital Rights Management (DRM) systems, which often lock content to specific devices, rely on centralized provider servers that may cease to operate, and restrict users' "fair use" rights to share media with family. (’308 Patent, col. 2:46-67).
- The Patented Solution: The invention proposes a process for creating a "computer readable authorization object" to manage access to "cloud digital content." This is achieved by authenticating a user via a "verification token" (e.g., an email address), establishing a connection with a "verified web service" through an API, requesting and receiving a unique user identifier from that service, and then combining the user's verification data and the web service identifier into a new authorization object that controls subsequent access. (’308 Patent, Abstract; col. 13:35-14:16).
- Technical Importance: The described method sought to shift access control from being device-centric to identity-centric, tying content rights to a user's persistent web service identity rather than to a piece of hardware. (’308 Patent, col. 2:50-54).
- Key Claims at a Glance:
- The complaint asserts independent claim 1. (Compl. ¶11).
- The essential elements of independent claim 1 include:
- (a) receiving an access request for cloud digital content, the request comprising verification data recognized as a verification token;
- (b) authenticating the verification token using a verification token database;
- (c) establishing an API communication with a database apparatus related to a verified web service;
- (d) requesting query data (a verified web service identifier) via the API communication;
- (e) receiving the requested query data; and
- (f) creating a computer readable authorization object by writing the verification data and the query data to a data store, where this object represents user access rights.
U.S. Patent No. 8,402,555 - "Personalized Digital Media Access System (PDMAS)"
- Patent Identification: U.S. Patent No. 8,402,555, "Personalized Digital Media Access System (PDMAS)," issued March 19, 2013.
- The Invention Explained:
- Problem Addressed: The patent identifies the same problems as the ’308 Patent: conventional DRM systems lack interoperability across devices and are overly restrictive. (’555 Patent, col. 1:12-2:2).
- The Patented Solution: The patented method monitors access to "encrypted digital media" by linking the media to a user's identity from a "verified web service." The process involves receiving a request containing a "membership verification token," authenticating it, connecting to a "communications console" (e.g., a web service's GUI/API), requesting and receiving an "electronic identification reference" (e.g., a user account ID), and finally "branding" the media's metadata by writing the token and the identification reference into it. (’555 Patent, Abstract; Fig. 6).
- Technical Importance: This invention provided a mechanism to associate digital content with a user's online identity, aiming to enable that content to be accessed on any compatible device where the user could authenticate. (’555 Patent, col. 2:46-54).
- Key Claims at a Glance:
- The complaint asserts independent claim 1 and dependent claims 2 and 8. (Compl. ¶¶20, 27).
- The essential elements of independent claim 1 include:
- receiving an encrypted digital media access branding request containing a membership verification token;
- authenticating the membership verification token;
- establishing a connection with a communications console (GUI/API) related to a verified web service;
- requesting at least one electronic identification reference from the console;
- receiving the electronic identification reference; and
- branding the media's metadata by writing the token and the reference into the metadata.
III. The Accused Instrumentality
- Product Identification: The accused instrumentality is Defendant's "Chase QuickPay" service, which is alleged to operate using the Zelle payment network. (Compl. ¶¶11-12).
- Functionality and Market Context:
- The complaint alleges that the QuickPay service allows a user to send and receive money by first registering an email address and/or mobile telephone number, which serves as the alleged "verification token." (Compl. ¶12).
- This token is allegedly authenticated against a Chase database. (Compl. ¶13). Following authentication, the service establishes an API connection with the "Zelle service database" to create a Zelle "token" or "computer readable authorization object." (Compl. ¶¶12, 14).
- This object, allegedly created by writing the user's verification data and Zelle query data into storage, is then used to process subsequent payment requests, which the complaint frames as requests for access to "cloud digital content" or "encrypted digital media" (i.e., the user's money). (Compl. ¶¶16, 20).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
’308 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a) receiving an access request for cloud digital content through an apparatus ... the access request being a write request to a data store ... wherein the access request further comprises verification data provided by at least one user, wherein the verification data is recognized by the apparatus as a verification token ... | A Chase customer registering an email address and mobile telephone number with the QuickPay service constitutes a write request to create a Zelle "token." The email and phone number are alleged to be the "verification token." | ¶12 | col. 13:37-46 |
| b) authenticating the verification token of (a) using a database recognized by the apparatus of (a) as a verification token database ... | Chase QuickPay uses a database to authenticate the user's registered email address and mobile telephone number. | ¶13 | col. 13:47-49 |
| c) establishing an API communication between the apparatus of (a) and a database apparatus ... wherein the API is related to a verified web service, wherein the verified web service is a part of the database apparatus ... wherein establishing the API communication requires a credential assigned to the apparatus of (a) ... | QuickPay establishes a connection to the Zelle service database via the Zelle services API. This connection is allegedly established with a credential (e.g., Participant ID, Partner ID) assigned to Chase's QuickPay service. | ¶14 | col. 13:50-64 |
| d) requesting the query data, from the apparatus of (a) ... wherein the query data request is a request for the at least one verified web service identifier; then e) receiving the query data requested in (d) ... | The complaint alleges infringement occurs when QuickPay requests and the Zelle service database returns "CXCTokens." This is allegedly done via a RESTful API call. | ¶15 | col. 13:65-col. 14:3 |
| f) creating a computer readable authorization object by writing into the data store of (a) at least one of: the received verification data of (a); and the received query data of (e); wherein the created computer readable authorization object is recognized by the apparatus of (a) as user access rights associated to the cloud digital content ... | QuickPay allegedly creates an authorization object by writing the user's "enrolled" verification data (email/phone) and the "enrolled" Zelle query data into "QuickPayZelle data storage." This object is allegedly used for subsequent access to "send money." | ¶16 | col. 14:4-16 |
’555 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| receiving an encrypted digital media access branding request from at least one communications console ... the branding request being a read or write request of metadata of the encrypted digital media, the request comprising a membership verification token ... | A user registering their email and mobile number with QuickPay is alleged to be a write request for access to Zelle cloud financial account data. The email and mobile number are the "membership verification token." The "communications console" is alleged to be the GUI and API used for registration. | ¶21 | col. 14:38-46 |
| authenticating the membership verification token, the authentication being performed in connection with a token database ... | Chase QuickPay is alleged to have a database that it uses to authenticate a user's email address and mobile telephone number. | ¶22 | col. 14:47-49 |
| establishing connection with the at least one communications console wherein the communications console is a combination of a graphic user interface (GUI) and an Applications Programmable Interface (API) protocol, wherein the API is related to a verified web service ... | QuickPay establishes a connection to the Zelle service database, which is related to the Zelle services API. This connection is allegedly established with an assigned credential (e.g., Participant ID). | ¶23 | col. 14:50-58 |
| requesting at least one electronic identification reference from the at least one communications console ... receiving the at least one electronic identification reference from the at least one communications console ... | The complaint alleges QuickPay performs these steps when the Zelle service database is queried and returns the requested "CXCTokens." | ¶24 | col. 14:59-64 |
| branding metadata of the encrypted digital media by writing the membership verification token and the electronic identification reference into the metadata. | QuickPay allegedly infringes by creating an authorization object, which involves writing the "enrolled" user email/phone number and the "enrolled" Zelle identification reference into "QuickPayZelle data storage." | ¶25 | col. 14:65-67 |
- Identified Points of Contention:
- Scope Questions: A central dispute may arise over whether the terms "cloud digital content" (’308) and "encrypted digital media" (’555) can be interpreted to cover the financial data and payment authorization tokens at issue in the QuickPay/Zelle system. While the prior court construction of "encrypted digital media" as "data capable of being processed by a computer" is broad (Compl. ¶7), the patents' specifications repeatedly reference entertainment media like music, video, and games, which may support an argument for a narrower scope. (’555 Patent, col. 5:50-55).
- Technical Questions: The infringement theories depend on a specific sequence of technical operations. Questions may arise as to whether the accused system's tokenization process factually aligns with the claims. For instance, what evidence demonstrates that the Zelle authorization object is created by writing both the user's verification data and the Zelle query data into a single object, as required by claim 1(f) of the ’308 patent?
- Validity Questions: The post-filing cancellation of asserted claims 1, 2, and 8 of the ’555 Patent during reexamination presents a significant, and potentially dispositive, challenge to the allegations regarding that patent.
V. Key Claim Terms for Construction
- The Term: "cloud digital content" (’308 Patent) / "encrypted digital media" (’555 Patent)
- Context and Importance: The applicability of the patents to the accused financial service hinges on the scope of these terms. If construed narrowly to cover only entertainment or media files, the infringement case may fail. If construed broadly, as the prior court's construction of "encrypted digital media" as "data capable of being processed by a computer" suggests, it may encompass the financial data processed by QuickPay. Practitioners may focus on this term because it is the gateway to infringement for the entire accused system.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint cites a prior judicial construction of "Encrypted digital media" as "data capable of being processed by a computer." (Compl. ¶7). The ’555 patent specification also lists "document" and "other computer based apparatus in which processed data is facilitated" as examples of digital media. (’555 Patent, col. 5:52-55).
- Evidence for a Narrower Interpretation: The "Background of the Invention" section in both patents is framed almost exclusively around consumer entertainment industries, discussing "music and video files," "CD and DVD," "computer games," and "e-books." (’308 Patent, col. 1:55-2:20). This context may be used to argue that the invention, despite some broad language, was intended to solve problems specific to that field.
VI. Other Allegations
The complaint does not contain allegations supporting indirect or willful infringement.
VII. Analyst’s Conclusion: Key Questions for the Case
- Definitional Scope: A core issue will be one of definitional scope: can the terms "cloud digital content" and "encrypted digital media," which are described in the patents' specifications primarily in the context of entertainment media, be construed to cover the financial account data and payment authorization tokens utilized by the accused Chase QuickPay service?
- Claim Viability: How will the court address the infringement allegations against the ’555 Patent, given that the asserted claims (1, 2, and 8) were cancelled in a subsequent ex parte reexamination proceeding? This procedural development raises a fundamental question about whether a viable cause of action exists for this patent.
- Factual Equivalence: A key evidentiary question will be one of technical operation: does the accused QuickPay/Zelle system's architecture and data flow—specifically its method of creating and using payment tokens—perform the exact multi-step sequence of receiving, authenticating, communicating via API, and creating a new data object as recited in the asserted claims, or is there a material difference in the technical process?