Summary Judgment Defense Victory in Toll-Collection Technology Patent Case
Emerson, (John) Russell
, Philbin, Phillip B.
, White, William D.
Services: Intellectual Property Litigation
, Technology and Intellectual Property Cases
, Summary Judgments
Haynes and Boone established new precedent for patent exhaustion by obtaining summary judgment dismissal, with Federal Circuit affirmation, of a lawsuit alleging infringement of electronic toll collection patents in a case with broad implications for the U.S. toll collection industry. The case could have cost client Electronic Transaction Consultants Corporation (ETC) more than $60 million and had the potential to jeopardize the system that currently collects about 80 percent of all electronic tolls in the United States. The lawsuit was brought against ETC by TransCore, who alleged that ETC infringed four different TransCore patents that relate to the automatic electronic collection of tolls. TransCore sought more than $20 million in damages, which it sought to treble to $60 million. TransCore had alleged that ETC’s “use” of allegedly infringing toll-collection equipment infringed its patents. But the court held that TransCore’s earlier settlement with the equipment manufacturer had exhausted TransCore’s rights in the patents, and granted judgment to ETC.