The CFI declined to accept jurisdiction in the patent case, which relates to a European patent (0455750B1) owned by Document Security Systems (DSS), the company revealed on September 11.
DSS sued the European Central Bank in August 2005 at the CFI, alleging that the Euro banknotes produced by the ECB infringe its patent relating to anti-counterfeiting technology.
The Bank subsequently argued that the proper venue for the case was not the CFI and filed a series of lawsuits in national courts in the Netherlands, Germany, Austria, Italy, Spain, Belgium, the UK, Luxembourg and France seeking to cancel DSS’s patent.
On March 26 this year, the English High Court ruled that the patent was invalid, just a day before the German Federal Patent Court upheld its validity.
Now that the CFI has declined to hear the dispute, DSS must pursue its legal action through each of the national courts in the jurisdictions where the patent was granted.
Larry Cohen of McDermott Will & Emery, which is advising the patent owner, said that the company had not ruled out appealing the CFI’s decision to Europe’s highest court, the European Court of Justice, but was expected to “take every step to advance infringement proceedings in Germany”.
In November 2006, DSS disclosed that McDermott Will & Emery would accept up to $1.2 million of the company’s common stock as payment for outstanding and future fees. Any legal services provided over the 1.2 million cap will not be charged.
It is unusual for firms in Europe to accept equity in lieu of fees for legal work.
The European Central Bank is one of an increasing number of banks and financial institutions that have found themselves on the end of patent litigation lawsuits, particularly from so-called patent trolls.
But now many banks are starting to fight back. In August, the Royal Bank of Canada, Toronto-Dominion Bank, and Bank of Montreal are reported to have asked the Canadian courts to declare invalid a patent owned by DataTreasury relating to technology used in clearing cheques. DataTreasury has already licensed the patent to a number of financial services companies including JP Morgan Chase and Merrill Lynch.
The latest issue of Managing IP looks at the IP risks that banks and financial services companies face, as well as the opportunities for growth that intellectual property offers them.
