Patent Exam Saves Cities From Suits, Group Says

(CN) - A digital rights group said it has curbed a patent holder from going after cities and transit agencies that use vehicle-tracking systems by having the patent's legitimacy re-examined.

The United States Patent and Trademark Office (USPTO) made changes to the patent, owned by ArrivalStar, after the Electronic Frontier Foundation (EFF) filed a formal request for re-examination of the patent.

ArrivalStar's patent, which covers vehicle tracking, allegedly relied on an invention from 1999, but the EFF said it and the Samuelson Clinic were able to show that the same type of system had already been described in technical reports as far back as 1992.

The Luxembourg-based ArrivalStar and its affiliate, Melvino Technologies, a British Virgin Islands company, have filed multiple lawsuits throughout the years against public transit systems alleging that they infringe on its patent.

In its re-examination, the USPTO found that only two of the patent's claims were allowable, and canceled the other 12 claims.

"This is an important victory for municipalities across the country that were faced with a tough choice: fighting an expensive lawsuit, paying ArrivalStar's settlement demands, or abandoning a public service," EFF Staff Attorney Julie Samuels said in a statement. "We're gratified the patent office recognized that you can't patent something as obvious, broad, and vague as 'tracking something and notifying customers about it.'"

Samuels also holds the Mark Cuban Chair to Eliminate Stupid Patents

The American Public Transportation Association said it is also fighting back by filing a lawsuit in federal court seeking to "halt frivolous infringement claims against public transit systems throughout the country by two foreign companies."

In addition to arguing that ArrivalStar's patent is invalid, the June 25 lawsuit also argues that the 11th Amendment protects state and regional entities from facing such suits.

The association claims that ArrivalStar's goal in filing lawsuits against public transit systems "was not to seek a remedy for a legitimate claim but rather to settle for an amount below the cost to each defendant to defend itself in court."

"At least 11 transit systems have been subject to these harassment claims and decided to settle them rather than undertake expensive and time-consuming litigation, which would cost tens of millions of dollars," it added.

It is unclear if and how the USPTO's recent action on ArrivalStar's patent will affect the lawsuit.

Subscribe to Closing Arguments

Sign up for new weekly newsletter Closing Arguments to get the latest about ongoing trials, major litigation and hot cases and rulings in courthouses around the U.S. and the world.

Email *

Submit