DataTreasury Corp., a small transaction processor pursuing patent infringement suits against dozens of major banking companies and financial technology vendors, now has more weapons in its arsenal.
The Plano, Tex., firm has asserted that two of its patents cover critical concepts in image exchange. Though the Patent and Trademark Office rejected its claims in November, its examiner has now reversed course, reinstating the claims regarding one of those patents and accepting many new claims. Related Links
"I think you'll see some institutions take a hard look at whether they want to continue the fight. It's very expensive," James R. Burdett, a partner in the Washington office said Venable LLP, said in an interview Wednesday. "I think you'll see some of the institutions peel off."
Eric Wetzel, DataTreasury spokesman, noted in an interview Tuesday that the decision covered only one of the two patents that had been challenged.
"We're pleased with the results of the '988 re-examination," he said, referring to the last three digits of one of the patent's serial numbers, "but we don't wish to comment any further, given that the USPTO is still busy re-examining the '137 patent."
In a June 29 filing, the patent examiner, Peter C. English, withdrew his November rejections of DataTreasury's claims. First Data Corp. had originally requested that the office re-examine the patents, arguing that they are invalid, because they rely on prior art and industry standards.
Attorneys for First Data did not return multiple phone calls Wednesday. The company is one of more than 50 that DataTreasury has accused of infringing upon its technology.
A decision on the second patent, which is being considered by a different examiner, is expected within a few weeks.
Patents are divided into numerous, very specific claims describing each element of the technology. DataTreasury's '988 patent originally contained 50 claims, but during the re-examination process the company asserted 73 new ones, two of which were rejected. The '137 patent contains 43 claims.
Scott D. Paul, a partner in the Washington office of Carey, Rodriguez, Greenber & Paul LLP, said patent holders often make additional claims during the re-examination process.
"By opening the re-examination, you give the patentee an additional bite at the apple," said Mr. Paul, who represents companies seeking patents. "This is probably a good example of why many litigators don't like to go this re-examination route."
Though the whiplash reversal may seem an unusual turn of events, Mr. Paul said it is standard procedure for challenged patent claims. "It's typical that they always reject" the claims during the initial review. "Then the patentee has an opportunity to respond to the examiner's rejections."
Mr. Burdett said that even though First Data has no avenue to protest the reversal, other companies could ask the office to re-examine the patents if they can show additional examples of prior art.
"All is not flowers and candy for DataTreasury quite yet," said Mr. Burdett, who represents financial companies in patent matters but is not involved in the DataTreasury cases. "When you have as many defendants as you have in this case, you often have multiple third-party requests for re-examination."
He speculated that other challenges would be filed once the Patent Office files its decision on the second patent in the First Data re-examination.
"The strategy is to keep the patentee on its heels," he said. "You don't necessarily want to use the best prior art the first time around."
DataTreasury has filed numerous lawsuits since 2002, and the list of defendants includes such banking heavyweights as Bank of America Corp., Wachovia Corp., Wells Fargo & Co., Citigroup Inc., and Viewpointe Archive Services LLC.
JPMorgan Chase & Co. and Zions Bancorp.'s NetDeposit Inc. agreed to license DataTreasury's technology in 2005.
One odd aspect of the reversal involved an industry imaging standard known as ANSI X9.46-1995. First Data had argued that DataTreasury's 1999 patent should be invalidated, because it built on that standard, which was completed four years earlier.
However, Cynthia Fuller, the executive director of Accredited Standards Committee X9, said the standard was withdrawn several years ago, because it had been supplanted by a later one. As a result, her group no longer has documentation related to the 1995 one, including a copy of it.
"We do not retain all that data," she said, though other archives, such as the Library of Congress, might have a copy of the standard.
With those files unavailable, DataTreasury disputed First Data's argument, and Mr. English agreed.
"Patent owner argues that there is no evidence that ANSI X9.46-1995 is in fact a printed publication and therefore no evidence that it has a publication date preceding the filing date of Patent No. 5,910,988," he wrote. "These arguments are persuasive."
