Patent Office Validates a DataTreasury Image Exchange Patent

The U.S Patent and Trademark Office has upheld substantially all of the claims contained in a key patent held by DataTreasury Corp. that covers processes related to check image exchange. The USPTO decision, reached in May but not made public until recently, follows a formal process in which Plano, Texas-based DataTreasury defended two key patents that had been struck down in a preliminary office action issued by the patent office in November (Digital Transactions News, Dec. 3, 2006). The status of the other patent, which also bears on image exchange, is still under consideration at the USPTO. The preliminary office action had followed a re-examination of the two patents requested by First Data Corp., a defendant in litigation DataTreasury has brought alleging infringement of the two patents. This latest patent-office decision, known as a final office action, is a major victory for the small software company, which has over the past several years filed suit against a number of major hardware and software vendors, processors, and banks to defend its patents, and reached settlements with many of them involving licensing agreements. It also comes at a time when some industry observers had thought the USPTO's preliminary office action meant DataTreasury's claims were now largely moot, though legal experts warned at the time that DataTreasury's arguments could reverse the results of the preliminary finding. The patents in question are Nos. 5910988 and 6032137, granted in June 1999 and February 2000, respectively. The latest decision, by examiner Peter C. English, upholds all but two of DataTreasury's 123 claims in the first patent, known as the “988” patent. The two rejected claims are among a group of 73 new claims the company asserted during the re-exam process. All of the 50 original claims contained in the 988 patent were upheld. DataTreasury may resubmit the two disallowed claims, which don't touch on check imaging, with amended language. The company won't comment on whether it intends to do so. “We are pleased with the results of the 988 re-examination but because the USPTO is still hard at work on the re-exam of the 137 patent, we don't feel we can comment further,” says a spokesman for DataTreasury. The two patents concern a system or method for the imaging, centralized processing, and electronic storage of documents, a key element of the image-exchange systems that have come into being since the Check Clearing Act for the 21st Century (Check 21) became law in October 2004. A 9-year-old company, DataTreasury has sued major companies and organizations involved in check imaging and exchange, including Bank of America Corp., Citigroup Inc., SVPCO, and Viewpointe Archive Services LLC. Many defendants and industry observers have argued that the DataTreasury patents were anticipated by so-called prior art, or substantially similar processes established before the patents were granted. First Data requested the re-examination in 2006, an action that led to the decision late last year by a USPTO examiner to disallow all of the claims in both patents.