Editors: John Sganga, Joe Cianfrani, Boris Zelkind
Patent Judgments & Awards
In another win in a string of victories for Solutran, Inc. in its long-running patent dispute with U.S. Bancorp, a jury in the U.S. District Court in Minnesota found that Solutran was entitled to both lost profits and a reasonable royalty for U.S. Bancorp’s infringement of a patent on Solutran’s SPIN™ technology for paper check processing. Solutran claims that this technology produces cost savings for its users on the order of 50-75%.
The lawsuit, which has been pending since September 2013, marked a number of victories for Solutran on the way to the recent damages award. Solutran first survived U.S. Bancorp’s challenge to the validity of its patent before the U.S. Patent Trial and Appeal Board (PTAB) and then prevailed on appeal to the Federal Circuit. The trial judge then ruled that U.S. Bancorp infringed Solutran’s patent.
In March 2018, the Minnesota jury, after listening to evidence that the defendants sold infringing systems to such companies as Target, Barnes & Noble, U-Haul, and Pilot Travel Center, awarded Solutran both lost profits and reasonable-royalty damages totaling about $3.3 million. The jury’s damages calculations were based on 130 million transactions performed with the infringing system.
Solutran has announced that it intends to seek a permanent injunction from the district court barring U.S. Bancorp and Elavon from marketing its widely used Electronic Check Service (ECS) check processing system.
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