This past February saw the end of mobile check deposit litigation between patentholder United States Automobile Association (USAA) and defendant Wells Fargo, in the wake of two Eastern District of Texas jury verdicts awarding the plaintiff a combined award in excess of $300M. The campaign, however, continues, with a two-venue dispute between USAA and PNC Financial Services expanding from four patents-in-suit, all held by USAA, to ten, two of the additional assets asserted in a new complaint filed against PNC and the four others asserted through PNC counterclaims pleaded along with an answer that the defendant filed in Texas.

USAA sued PNC last September in the Eastern District of Texas over two homegrown mobile check deposit patents (10,482,43210,621,559). The case followed two jury verdicts-the first in November 2019, finding that Wells Fargo infringed claims 1-6, 9, and 12-13 of the 8,977,571 patent and claims 1-4, 7, and 10 of the 9,818,090 patent; and the second in January 2020, finding that Wells Fargo willfully infringed at least one claim from a second pair of patents (claims 1, 3, 11-14, and 22 of the 10,013,605 patent and claims 12-14, 20, 22, and 30 of the 10,013,681 patent)-resulting in respective $200M and $102M in damages awarded.

On December 4, 2020, PNC responded by filing a complaint asking the Western District of Pennsylvania for declaratory judgments of noninfringement of two USAA patents (the ‘571 and 8,699,779 patents). That same day, USAA filed an amended complaint in its Eastern District of Texas case to add claims of infringement of those same two patents. Competing motions were filed in each venue: USAA seeking dismissal or transfer of the second case, under the first-to-file rule, among other grounds; and PNC asking District Judge Rodney Gilstrap to transfer the Texas case to Pennsylvania instead. Briefing has completed in both places, with Judge Gilstrap silent on the request to transfer and District Judge Joy Flowers Conti to address the Pennsylvania motion at an upcoming status conference.

Meanwhile, in February of this year, PNC filed an answer in Texas, further asserting counterclaims of infringement by USAA of four of its homegrown patents (7,949,7888,380,6238,682,7548,868,786) through provision of its financial services. USAA has responded to those allegations with two motions, one seeking to sever the infringement claims related to PNC’s patents into a separate case and another challenging the claims of the ‘623 patent (as patent-ineligibly directed to the abstract idea of “displaying information entered by the user about funds transfers”) and the claims of the ‘754 patent (as patent-ineligibly drawn to the abstract idea of “collecting and displaying income and spending data”) under Alice. Briefing, some of it sealed, continues, while briefing on PNC’s motion for an order “focusing patent claims and prior art” has just completed (through sur-reply).

Now, this past week, USAA has filed yet another complaint against PNC, accusing the defendant of infringing claims of the ‘605 and ‘681 patents (the two patents that Wells Fargo was found to have willfully infringed by the second jury) (2:21-cv-00110).

A November 2019 declaratory judgment action filed by Mitek Systems in the Northern District of California was later transferred to East Texas, while the Wells Fargo litigation remained active. After transfer, USAA has continued to contest subject matter jurisdiction, arguing that Wells Fargo at the time of Mitek’s complaint, and, to the extent relevant, PNC now, was responsible for its own mobile check deposit platform and that Mitek’s claims related to indemnity, with either bank or with NCR (from which PNC has apparently sought indemnity and which has apparently sought indemnity from Mitek) are insufficient to ground jurisdiction. That briefing-through supplemental papers-also seems to have completed, with Judge Gilstrap yet to rule.

Mitek’s six petitions for inter partes review (IPR) of USAA patents have ended without the institution of a single trial, joining the 15 unsuccessful IPR petitions that Wells Fargo filed. 3/31, Eastern District of Texas.