USAA wins patent contract with Discover, swears to keep pursuing banks

Think what you will about USAA’s decade-long patent war on the remainder of the monetary market, you can’t reject the business has determination.

This week, Discover Financial Services signed a licensing contract with USAA that lets the card network utilize more than 130 USAA patents for remote deposit capture innovation. Terms of the contract were not divulged. Discover decreased an ask for an interview or remark.

USAA signified that it’s going to keep pursuing banks that enable consumers to deposit checks by taking photos of them with their phones. It has actually currently submitted suits versus Wells Fargo, PNC Financial Services Group and Truist Financial.

“We look forward to working with more banks to create reasonable licensing agreements that benefit their customers,” Nathan McKinley, USAA vice president and head of business advancement, stated in a declaration. 

Some banks are most likely to keep combating right back.

“The United States Patent and Trademark Office has already found that several of USAA’s patents — including patents asserted against PNC — are invalid, confirming our position that USAA did not invent mobile remote check deposit,” a PNC spokesperson stated. “PNC plans to continue our appeals and has asked the [U.S. Court of Appeals for the Federal Circuit] to find USAA’s entire set of asserted patents related to this technology invalid.”

A conflict with a long history

USAA has actually been pursuing more than a years to get all big U.S. banks that use mobile deposit capture (the capability to transfer a check by taking a picture of it in a banking app) to pay licensing costs for the innovation, which USAA declares it developed.

The disagreement has its roots in the late 2000s, when USAA and the image-processing innovation business Mitek were service partners. USAA utilized Mitek’s software application to digitize checks gotten by mail. The business interacted to establish mobile deposit capture innovation. 

They had a falling out. Some stated it was over the costs Mitek was charging for its innovation services. 

In an interview at the time, Mitek CEO Jim DeBello explained a company relationship gone awry.

“We have had an existing contract, a license agreement that lets them use our recognition platform, which is not optimally designed for mobile deposit, since 2006,” he stated. “They contacted us and alerted us that they had exceeded the limitations in that contract, which caused us to have a negotiation that’s been going on for several months to provide them a renewed license with our mobile deposit platform.”

In February 2008, Mitek started using remote deposit capture innovation to bank customers. By 2013 it had actually registered 708 banks and cooperative credit union. Over time, practically every U.S. bank purchased this innovation from Mitek. In August 2009, USAA started using its own variation of the innovation to its consumers. 

In March 2012, USAA took legal action against Mitek in the U.S. District Court in San Antonio. In its grievance, USAA stated it developed remote deposit capture innovation “to meet the needs of our highly mobile military membership, enabling them to deposit checks with a scanner or smartphone wherever they may be stationed.” The business stated “Mitek misappropriated USAA’s proprietary and confidential information while working under contract for USAA, and then took numerous steps to claim it as its own.”

A month later on, Mitek submitted a countersuit in the U.S. District Court in Wilmington, Delaware, that declared that “USAA infringes on five Mitek patents relating to image capture on mobile devices, that USAA breached the parties’ license agreement by using Mitek products beyond the scope of the agreed-upon license terms and that USAA breached the parties’ license agreement by disclosing confidential pricing and other confidential information for a Mitek legacy product installation in a lawsuit filed in Texas.”

In 2014, the business settled out of court. The regards to those contracts were never ever revealed. The disagreement seemed settled.

Then 3 years later on, USAA corresponded to 100 banks informing them they remained in infraction of USAA’s mobile deposit patents. 

In 2018, USAA started suing its big-bank competitors over their usage of mobile deposit capture, beginning with Wells Fargo, then continuing with PNC and Truist. USAA submitted all these matches in the little Marshall, Texas, department of the U.S. District Court for the Eastern District of Texas, which has a track record as partial to patent giants

In USAA’s 2 suits versus Wells Fargo, juries at the Marshall, Texas, court discovered Wells Fargo responsible to pay an overall of $300 million. The business reached a settlement; the terms were not divulged.

USAA likewise dominated versus PNC. A Marshall jury discovered PNC responsible for $218 million for breaking USAA’s patent rights.

However, PNC asked for an evaluation of the patents at concern in the trial. In February of this year, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board ruled that 3 of USAA’s patents on mobile check deposit innovation are void.  

The choice might be utilized to reverse the decision on the earlier USAA v. PNC case. The U.S. Court of Appeals for the Federal Circuit will now need to choose whether to maintain the Marshall court’s decision or the Patent Trial and Appeal Board’s choice. (In the current advancement in the USAA v. Truist case, Truist attempted to have the trial relocated to the Western District of North Carolina, however in April a judge in Marshall, Texas, rejected the movement.)

Going forward

The reality that the Patent Trial and Appeal Board revoked a few of USAA’s patents makes it rather unexpected that Discover caved in to USAA’s needs to purchase licenses to its patents.

For a business like Discover, this ends up being a company choice, according to Eugene Mar, partner at Farella, Braun and Martel.

“You’re looking at the cost-benefit analysis of doing a pretty engaged litigation campaign,” Mar stated. “If you defend and if you look at what, for example, PNC and Wells Fargo have gone through, you can just tell by the volume of that litigation it’s expensive and it’s still ongoing. Then you balance that versus what is most likely a fairly expensive license, but you would then be done with that cost.”

USAA and Discover decreased to respond to concerns about the nature and expense of the licensing contract. 

Mar marvels which business USAA will pursue next. It can keep bringing these cases prior to the patent-friendly East Texas court as long as the offenders are nationwide business with workplaces in Texas, he kept in mind. 

If it attempts to pursue a smaller sized local bank that does not have an existence in Texas, that bank might have the ability to move the trial to a court in its market, where a jury might be less considerate to USAA’s problems.


A news media journalist always on the go, I've been published in major publications including VICE, The Atlantic, and TIME.

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