Digital Check Corporation
Software Patent Information and Status
June 23, 2018
In 2014 Digital Check Corporation filed two software patents on basic check/document imaging technology with Rian Maloney and Scott Weber listed as "inventors". In 2016, Rian Maloney and Scott Weber filed two additional patent applications. The following page contains links to PDF copies of the patents, and an annotated timeline with links to the over 50 pieces of prior art already provided to Digital Check Corp.
UniSoft Imaging believes Rian Maloney and Scott Weber patented obvious standard check/document imaging processing technology and significant known prior art was not cited to the United States Patent Office as required by patent law. UniSoft Imaging and other companies have provided Digital Check Corporation with over 50 pieces of prior art. Much of the provided prior art comes from Digital Check Corporation's own website (cited in "RED") from articles written up to 14 years ago. Rian Maloney is employed by Digital Check Corp. as the Vice President of Software. Scott Weber works for Rian as a senior applications software engineer. Both Rian Maloney and Scott Weber worked previously for Argo, Metavante, and VECTORsgi and have significant prior knowledge about the check processing industry and common banking processes.
UniSoft Imaging believes the patents conflict with processes that have been used by UniSoft Imaging for over 20 years and by the check processing industry for over 25 years. UniSoft Imaging has requested release from these patents and Digital Check Corp. has refused our request multiple times.
UniSoft Imaging has provided Digital Check Corporation with lists of companies that create products similar to "CLEAR" that predate "CLEAR" by over ten years and used many of the patented processes. Please refer to prior art from Banctec, Kofax, Recogiform Technologies, AllMyPapers, TMS, Inlite Technologies, Argo, and Metavante. Even CAR/LAR tools from Orbograph, Parascript, and A2iA used re-thresholding based on zonal thresholding to improve CAR/LAR results.
UniSoft Imaging plans on continuing to find and release prior art to Digital Check Corporation. If anyone has significant published prior art, please contact us at email@example.com. UniSoft Imaging invites everyone to also send copies to Digital Check Corp.'s lawyer Engel, Jason A. Engel. His email is firstname.lastname@example.org.
The patents are all 21 pages or less including diagrams. Three of the patents have the same name "ADJUSTING DIFFERENT AREAS OF A PAYMENT INSTRUMENT IMAGE INDEPENDENTLY" and basically the same diagrams. Part of the reason the patent office rejected patent application US 2017/0249603 A9 was the duplication of claims with previous patents.
2004: Digital Check Corp. joins the Financial Services Technology Consortium on FSTC Image Quality and Usability Project and UniSoft Imaging develops software to meet standards. UniSoft Imaging uses FSTC IQA standards to develop Adaptive thresholding process to improve CAR/LAR results at BankOne.
2005: The DCCScan function is added to the Digital Check Corp. Scanner API, DCCAPI, by UniSoft Imaging. This function does automatic adaptive thresholding based on FSTC IQA standards to return the best MICR and Image from a single check scanner function call. Options can also be enabled to clean up corners, remove excessive speckles, re-threshold if image is too light or too dark, and perform other FSTC image quality tests.
2008: Special Document Handling is added to the DCCAPI which allows zonal thresholding using two different contrasts. Routing and optional customer account numbers from the MICR are used to override adaptive thresholding of money orders and other especially difficult checks.
2013: Rian Maloney and Scott Weber join Digital Check Corp. after previously working for VECTORsgi, Metavante, and Argo. At all these previous companies, Rian and Scott used the Digital Check Corp. Scanner API, referred to as the DCCAPI.
April 18, 2014:
Rian Maloney and Scott Weber file for patents US 9384392 and US 9396461. Rian and Scott based their claims off the "CLEAR" application written in the previous months. The following is the Digital Check Corp. description of "CLEAR" from the www.digitalcheck.com website:
"Clear by Digital Check Corp. is a revolutionary new image enhancement system that ensures even the worst quality checks are successfully processed the way they're supposed to be - as readable images capable of clearing. This saves banks and credit unions an incredible amount of time and money they would otherwise spend on handling exception items and Non-Conforming Image (NCI) rejections.
Clear uses click-and-drag "zone enhancement" to clean up multiple problem areas of poor images. Once a check has been enhanced, the software will use the MICR line information to apply the same enhancements to items of the same document type. Best of all, Clear can work with images scanned anywhere within your organization, and fits nicely with your regular banking workflow - capturing MICR data, allowing corrections, and delivering X9.37 files for output to your image exchange system."
March 2, 2015:
Digital Check Corp. purchases UniSoft Imaging's Digital Check Corp. Scanner API assets, i.e. the DCCAPI that UniSoft Imaging had written and supported for 18 years. Digital Check Corp. did not purchase rights to UniSoft Imaging's General Document Imaging libraries, Photostat Recovery Libraries and applications, or Fuji Check Scanner API. Digital Check Corp. Patents infringe on all these UniSoft Imaging assets since all support zonal thresholding, image analysis, image cleanup, and adaptive thresholding processes.
October 22, 2015:
United States Patent Application 20150302244 and 2015032245 are published. Digital Check Corporation (original assignee), Rian Maloney (inventor), and Scott Weber (inventor) have requirement to file known prior art as they become aware. Known significant prior art has not been reported to the United States Patent Office. Scott Weber reviewed software asset, DCCAPI, transferred on March 2, 2015, and does not report prior art (processes) used by Digital Check Corporation's customers for many years. These patent applications become patent US 9,396,461 and patent US 9,384,392.
January 11, 2016:
Rian Maloney and Scott Weber filed Patent application US 2017-0200059. Rian and Scott did not use the document imaging term "Adaptive thresholding", which should have been obvious, since Digital Check Corp. had previously published several articles about how they were using adaptive thresholding.
July 5, 2016: Patent 9,384,392 is issued by United States Patent Office.
July 18, 2016: Rian Maloney and Scott Weber filed Patent application US 2017/0249603.
July 19, 2016: Patent 9,396,461 is issued by United States Patent Office.
August 30, 2016: Digital Check Corp. announces two patents on "unique" zoned thresholding technology. It should be noted that the Rian Maloney and Scott Weber did not use the terms "zone" or "zonal" in either patent US 9,384,392 or US 9,396,461 and did in the first article discussing them. Copied from http://www.digitalcheck.com/check-image-enhancement-patents/
April 06, 2017: Patent application US 2017/0249603 first published as patent application US 2017-0098201 (after publishing many claims were removed and patent was republished as US 2017/0249603)
July 13, 2017: Published Patent application US 2017-0200059
August 31, 2017: Published Patent application US 2017/0249603 (Second time published after United States Patent Office forced Digital Check Corp. to limit their patent claims and remove 20 duplicate claims.)
September 13, 2017:
UniSoft Imaging discovers the software patents and then notifies Digital Check Corp. of serious patent defects for all software patents filed by Rian Maloney and Scott Weber. Initially, Jeff Hempker and Tom Anderson are provided with a 2004 PowerPoint presentation which proves Digital Check Corp. knew it was using the patented processes in their own DCCAPI in 2004. The presentation is protected by confidentiality so it is not provided on this webpage.
September 15, 2017:
UniSoft Imaging notifies Digital Check Corp. that prior art exists on their own website and that the United State Patent Office considers it fraud to not provide known prior art when applying for patents. UniSoft Imaging notifies and cites the following Digital Check Corp. website pages to Digital Check as published before April 18, 2014 and conflicting with claims of one or all patents and patent applications.
Sept 22, 2017:
Jeff Hempker e-mailed UniSoft Imaging that Digital Check Corp. is not interested in discussing the matter anymore and cuts off communication with UniSoft Imaging.
Nov 6, 2017:
UniSoft Imaging waits 45 days for Digital Check Corp. to file any of the prior art disclosed to them in September. Finally UniSoft Imaging takes action and files third party submissions against the patent applications. UniSoft Imaging's submissions for patent application US 2017/0249603 are rejected because patent application was first published over six months previously.
UniSoft Imaging mails notice to Harris Bank (current assignee of the two patents and one of the patent applications) that we plan on filing submissions against the patents as required by patent law. UniSoft Imaging includes a copy of the prior art submissions to Harris Bank so they can understand the seriousness of the issue. Prior art listed included:
November 27, 2017:
Harris Bank informs Digital Check Corp. that they have a legal requirement to accept and file known prior art and tells Digital Check Corp. to "cure" all patents. Discussion between Digital Check Corp. and UniSoft Imaging restarts after two months.
UniSoft Imaging informs DCC that the significant patent defects cannot be "cured" short of abandonment.
November 29, 2017:
Digital Check Corp. files some prior art against patent applications US 2017/0249603 and US 2017-0200059.
Dec 11, 2017:
Patent application US 2017/0249603 is issued a non-final rejection by the United States Patent office as the claims were the same as previous patents and other claims were in conflict with other prior art. All claims are rejected.
December 20, 2017:
UniSoft Imaging provided Digital Check Corp. with the following prior art for them to consider:
January 2, 2018:
With only two week left before the publishing window on US 2017-0200059 is closed by the United States Patent Office, UniSoft Imaging files third party submissions to the patent office. These submissions included some of the prior art provided to Digital Check Corp. on December 20, 2017.
January 10, 2018:
UniSoft Imaging provides Digital Check Corp. with the following prior art for them to consider:
January 12, 2018: Digital Check Corp. files prior art provided from Panini and Recogiform Technologies against their patent applications. Most of the prior art provided by UniSoft Imaging since December 20, 2017 has still not been filed against the patent applications.
January 19, 2018: Third Party Pre-issuance submissions are accepted by United States Patent Office and attached to patent US 2017/0200059 A1.
January 22, 2018:
UniSoft Imaging provides Digital Check Corp. with the following prior art for them to consider:
February 9, 2018:
UniSoft Imaging provides Digital Check Corp. with the following prior art for them to consider:
UniSoft Imaging provides Digital Check Corp. with the following prior patents for them to consider:
February 22, 2018:
Patent application US 2017/0200059 is issued a non-final rejection with all claims rejected. The United States Patent office stated "abstract idea of mental activity" is not patentable and therefore all claims are rejected. Digital Check Corp. has six months to file an extension or overcome the rejections.
March 5, 2018:
Over the previous six months, UniSoft Imaging has asked Harris Bank (current assignee of Patent US 9,396,461 and Patent US 9,384,392 and Patent application US 2017/0249603 A9) to file over forty pieces of unfiled prior art. Section 37 CFR 1.56 of the patent code states current assignee has responsibility to file prior art along with the inventors, Rian Maloney and Scott Weber, their attorney of record, Fish & Richardson P.C., and anyone else involved in the preparation or prosecution of the application. As of this date over 35 pieces of prior art supplied by UniSoft Imaging have not been filed by Harris Bank, Rian Maloney, Scott Weber, Fish & Richardson P.C. or Digital Check Corporation as required.
April 17, 2018:
UniSoft Imaging sends an early copy of this page to Digital Check Corporation and asks them to review and check for any misunderstandings. Jeff Hempker acknowledges receipt but UniSoft Imaging does not receive any additional comments or corrections.
April 25, 2018:
UniSoft Imaging releases this timeline and prior art listing.
May 8, 2018:
UniSoft Imaging releases the following prior art to Digital Check.
US Patent number: 7366339
Filed: Sep 11, 2006
Date of Patent: Apr 29, 2008
Assignee: Electronic Imaging Systems Corporation (Ontario)
This patent discusses using zones on the check to enhance recognition. It also discusses using a Digital Check BUIC 1500 for capture and the UniSoft Imaging Library for image processing. Shows UniSoft Imaging tools were doing zonal image processing in 2006 and Digital Check customers were applying for patents including this process. This patent predates Patent US 9,396,461 and patent application US 2017/0249603 by at least six years. Since Digital Check Corp. was cited in the patent, it should have been found during a prior art search.
May 15, 2018:
Jason A. Engel, lawyer for Digital Check Corp. wrote the following:
"Please be informed that Digital Check has decided to abandon U.S. Patent Appl. Nos. 14/992,271 and 15/213,088. As you should be aware, Digital Check therefore has no obligation to review or submit any prior art."
Digital Check Corp. is required to review and submit prior art until Digital Check Corp. notifies the United States Patent Office and USPTO acknowledges the abandonment. This does not explain Digital Check and Harris Bank's refusal to file provided prior art for nine months, as required by patent regulations. Currently the USPTO shows both patent applications in non-final denial.
June 7, 2018:
Digital Check Corporation files note of patent application abandonment against Patent application US 2017/0249603 and Patent application US 2017/0200059. The United States Patent office still shows the patents in non-final denial mode instead of abandoned.
UniSoft Imaging wishes Digital Check Corporation would abandon Patent US 9,384,392 and Patent US 9,396,461, since much of the provided prior art applies to them also.
June 11, 2018:
United States Patent Offices changes status of Patent Application 15/213,088 (US 2017/0249603 A9) from non-final denial to "Abandoned -- Failure to Respond to an Office Action".
Novelty And Non-Obviousness, Conditions For Obtaining A Patent
In order for an invention to be patentable it must be new as defined in the patent law, which provides that an invention cannot be patented if:
"(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention" or
"(2) the claimed invention was described in a patent issued [by the U.S.] or in an application for patent published or deemed published [by the U.S.], in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention."
There are certain limited patent law exceptions to patent prohibitions (1) and (2) above. Notably, an exception may apply to a "disclosure made 1 year or less before the effective filing date of the claimed invention," but only if "the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed. from the inventor or a joint inventor."
In patent prohibition (1), the term "otherwise available to the public" refers to other types of disclosures of the claimed invention such as, for example, an oral presentation at a scientific meeting, a demonstration at a trade show, a lecture or speech, a statement made on a radio talk show, a YouTubeT video, or a website or other on-line material.
Effective filing date of the claimed invention: This term appears in patent prohibitions (1) and (2). For a U.S. nonprovisional patent application that is the first application containing the claimed subject matter, the term "effective filing date of the claimed invention" means the actual filing date of the U.S. nonprovisional patent application. For a U.S. nonprovisional application that claims the benefit of a corresponding prior-filed U.S. provisional application, "effective filing date of the claimed invention" can be the filing date of the prior-filed provisional application provided the provisional application sufficiently describes the claimed invention. Similarly, for a U.S. nonprovisional application that is a continuation or division of a prior-filed U.S. nonprovisional application, "effective filing date of the claimed invention" can be the filing date of the prior filed nonprovisional application that sufficiently describes the claimed invention. Finally, "effective filing date of the claimed invention" may be the filing date of a prior-filed foreign patent application to which foreign priority is claimed provided the foreign patent application sufficiently describes the claimed invention.
Even if the subject matter sought to be patented is not exactly shown by the prior art, and involves one or more differences over the most nearly similar thing already known, a patent may still be refused if the differences would be obvious. The subject matter sought to be patented must be sufficiently different from what has been used or described before that it may be said to be non-obvious to a person having ordinary skill in the area of technology related to the invention. For example, the substitution of one color for another, or changes in size, are ordinarily not patentable.
2016 Fraud, Inequitable Conduct, or Violation of Duty of Disclosure Affects All Claims [R-08.2017]
A finding of "fraud," "inequitable conduct," or violation of duty of disclosure with respect to any claim in an application or patent, renders all the claims thereof unpatentable or invalid.
2001.01 Who Has Duty To Disclose [R-08.2017]
37 CFR 1.56 Duty to disclose information material to patentability.
(c) Individuals associated with the filing or prosecution of a patent application within the meaning of this section are:
(1) Each inventor named in the application;
(2) Each attorney or agent who prepares or prosecutes the application; and
(3) Every other person who is substantively involved in the preparation or prosecution of the application and who is associated with the inventor, the applicant, an assignee, or anyone to whom there is an obligation to assign the application.