DATATREASURY CORP. SETTLES WITH JP MORGAN: DataTreasury Corporation, a Long Island-based holding company previously covered in this blog, announced that they settled their patent-infringement lawsuit against banking giant JPMorgan Chase.
The lawsuit was one of several related suits filed by DataTreasury in federal court in Texas. The settlement also applies to former defendants Bank One (now part of JPMorgan Chase & Co.) and in various forms to Viewpointe Archive Services (a check-image archive co-founded by JPMorgan Chase).
DataTreasury had accused JPMorgan Chase of infringing U.S. Patent Nos. 5,910,988 and 6,032,137, which were issued in 1999 and 2000 for image capture, centralized processing and electronic storage of document and check information. These patents describe a technology process capable of implementing the federally enacted Check Clearing for the 21st Century Act, popularly known as "Check 21." Terms of the licensing agreement are confidential, but they include "safe harbor" and "most favored licensee" protection for JPMorgan Chase.
The settlement comes on the heels of the Markman hearing held in March in the E.D. Texas (which, incidentally, rarely ever contrues claims against the patentee). While I haven't seen the Markman order, people can obtain copies by e-mailing Jacala@shipleyassociates.net.
And the fun doesn't stop there for DataTreasury - both patents have various continuations that branched off the '988 patent. Interestingly enough, both patents issued after the first office actions, and there was no non-patent literature cited in the search. Even more interesting is that, to date, there have been no reexaminations requested on the patents. As the Patent Office was ill-equipped at the time the application was filed (1997) to do an effective prior art search, it would seem to me that there would be something in the non-patent literature that would scale back the scope of these patents . . .
Wednesday, July 06, 2005
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Nor does the fun stop there -- suits were just filed against Citibank, Wachovia, BoA, Wells Fargo, according to Crain's New York Business website:
http://www.newyorkbusiness.com/news.cms?id=11079
From what I read it looks like these guys have the Banking industry good!! Thank god someone finally is putting it to these big corporate theifs!!
How would a shareholder estimate the value of this and future rulings? I purchased shares of Datatreasury back in 2000 and I'm trying to determine what this means.
Peter, As far as the reexamine request of DT's patents you mentioned (that there was no request, implying DT's scale of scope might've be reduced), wouldn't JP, after 3 yrs of litigation, an army of patent lawyers working on this, and tens of millions of $$ spent, have requested, what appears to be, such a "simple" procedure? Just curious..thanks.
Well, not being involved in the case, I can only speculate on the motivation behind any of the actions taken in this case. However, it is not uncommon for patent counsel to forego reexamination when litigation has gotten underway. There are certainly drawbacks to reexamination (loss of control over the interpretation of prior art, limited introduction of evidence for invalidity, etc.), and many defendants won't risk reexamination when they know the court will likely consider a good portion of any extrinsic evidence.
Also, contrary to any impressions I may have given, reexaminations aren't "simple." However, what I hinted at in the post was that any potential defendant who is feeling the heat from DataTreasury actions would be well-served to dispatch some searchers to find prior art on the DataTreasure patents. And, if there are any "killer apps" uncovered, it may be worthwhile pursuing reexamination in an effort to head-off future litigation.
There is significant prior art with a working public protype demonstrated in early 1992 five years before the patent was even filed. Information that was clearly in the public domain. The same examiner awarded a similar patent to another company two years earlier. This demonstrates how flawed the examination process is. The patent office is out of control with these process patents and they should conduct an internal review of some of these patents on their own. The legal system for patents is a sham. A plaintiff from NY takes a case to Texas to a court that is plaintiff friendly. A lawsuit can be filed even if there is no infringement and the plaintiff need not know if there is infringement but can just file a suit and hope that there will be a settlement to eliminate the inordinate expense to defend.
Peter,
As far as prior art goes, are the 1980 Teknetron patents that TRW acquired (and then used as a basis for suing Unisys back in the Spring of 1990) not useful?
This reminds me of the software industry during the early eighties
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