SAN FRANCISCO-Intuit, Inc., and several credit union defendants have asked a federal court here to dismiss a patent infringement suit brought by MShift over its mobile banking technology, saying the company's patent is outmoded and not pertinent to their technology.
The suit, which originally named Intuit's Digital Insight as the sole defendant, has been expanded to include several banks and credit unions, including Meritrust CU, Professional FCU, Fort Worth Community CU, USE CU, as well as Mobile Money Ventures LLC, a joint venture between Citicorp and Korea's SK Telecom, which provides mobile banking technology for Intuit's credit union and bank customers.
"The suit is about an outmoded and inapposite patent being used by MShift to threaten customers who have chosen a different solution offered by MMV/DI," said the defendants in a motion for summary judgment filed with the U.S. District Court for the Northern District of California. "The patent at issue...solves a problem that no longer exists."
Powerhouse Firms On Both Sides
The legal action threatens to break out into a major conflict, with two powerhouse Silicon Valley law firms weighing in on opposite sides: Wilson Sonsini Goodrich and Rosati LLP on behalf of MShift, and DLA Piper LLP on behalf of Intuit, credit unions and banks.
The so-called 881 Patent, entitled a "System for Converting Wireless Communications for a Mobile Device," was awarded to MShift by the U.S. Patent Office in 2005. It allows smart phones and other mobile devices to access network sites by means of an adapt ion or conversion engine, which translates between the language of the network site (for example HTML) and the language of the mobile device (HTML, HDML or WAP).
MShift was one of the first technology providers out of the box with mobile banking and first contracted with Digital Insight for a referral deal, then as reseller. But that relationship ended in late 2009 when Digital Insight, now known as Intuit Financial Services, signed with MMV to provide its credit union and bank customers with mobile banking technology.
The MShift technology has been popular among early credit union providers of mobile banking, with Patelco CU and The Golden 1 CU among the first customers, and Alliance CU, Visions FCU, Bank-Fund Staff FCU, Digital FCU and Xceed FCU, contracting later through MShift's relationship with Digital Insight, which later was acquired by Intuit.
The defendants argue that when MShift applied for the patent in 2000, cell phone browsers did not "speak" the same language (HTML) that was used to display Web pages on most desktop browsers. MShift's "conversion engine" translated the contents of a Web page from one language (HTML) into another language that could be understood and displayed on mobile devices.
"None of this technology is necessary today, nor does the accused MMV/DI system in this case use it," assert the defendants. Mobile phone today, they say, now easily display pages on HTML. "There is no need to convert the contents of Web pages into a different language and no need to restructure particular elements so they can be displayed."
"The remarkable changes in mobile phone technology since 2000 have left the '881 patent behind," the defendants assert.
Named with Intuit and the credit unions as defendants are: Community Trust Bank, Sanford Institution for Savings, Gate City Bank, Busey Bank, Dension State Bank, Fidelity Bank, Internet Bank of Indiana and Vision Bank.
Lawyers representing the credit unions in the case did not return phone calls seeking comment.
Preparing For A Fight
Intuit Financial indicated its intent to fight the suit. "We are confident that no Intuit or MMV technologies we supply financial institutions infringe on MShift's patent, and we firmly believe that MShift's lawsuit lacks merit," the company said in a statement. "As a result, we are vigorously defending ourselves and our customers against the lawsuit.
"Our legal actions against MShift are part of that effort and demonstrate our intent to protect both our clients and our business. We cannot comment any further on this matter or our relationship with MShift."
