Masabi LTD. prevails against Bytemark Inc’s attempt to assert patents, and succeeds in getting these patents invalidated

Masabi launched the first mobile ticketing app for UK Rail in 2007 for Chiltern Railways and helped to define and publish the national inter-operable mobile ticket standards in 2008, before deploying mobile ticketing for more than half of the UK Rail industry. Masabi also successfully deployed mobile ticketing for the first public transit agency in the USA, Boston’s MBTA.

 

Built on the passionate belief that public transit should be easy to choose and use, without the need to wait in line for tickets, or fumbling for cash; Masabi has deployed services in 11 countries and for some of the largest cities in the world.

 

We are pleased to share that Masabi Ltd. has been granted two favourable rulings against Bytemark, Inc.

 

Bytemark, founded more recently in 2011, initiated patent infringement proceedings against Masabi in May 2016 in the District Court for the Eastern District of Texas. On February 7th, 2019, the Court found that the patents which Bytemark alleged to have been infringed by Masabi were in fact invalid, and thus granted Masasbi’s Motion for Summary Judgement of Invalidity of U.S. Patent Nos. 8,494,967 (filed 2012) and 9,239,993 (filed 2013), and dismissed Bytemark’s action with prejudice.

 

Separately to this action, Masabi initiated an Inter Partes Review (IPR) with the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office, on the grounds of existing prior art. On December 3, 2018, the PTAB issued its IPR ruling, agreeing with Masabi’s position and invalidating the relevant claims of Bytemark’s Patent No. 8,494,967.

 

We are also pleased to share that both the Texas and PTAB rulings were upheld after Bytemark’s appeal to the United States Court of Appeals for the Federal Circuit. More information can be found below.

 

 

 

Court Judgments:

• • United States District Court for the Eastern District of Texas in No. 2:16-cv-00543-JRG-RSP, Report and Recommendation by Judge Roy S. Payne: https://www.b2ipreport.com/wp-content/uploads/2018/12/Bytemark-Inc.-v.-Masabi-Ltd_-002.pdf
  • United States District Court for the Eastern District of Texas in No. 2:16-cv-00543-JRG-RSP, Judgement (Affirming Judge Payne’s Report and Recommendation) by Judge Rodney Gilstrap: https://info.masabi.com/hubfs/DN%20150%20Judgment%20(R1643723x7A4C4).pdf
  • Inter Partes Review (IPR) – United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2017-01449: https://info.masabi.com/hubfs/IPR2017-01449%20Final%20Written%20Decision%20(R1626772x7A4C4).pdf
  • Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2017-01449: https://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1442.Rule_36_Judgment.2-10-2020.1_1529641.pdf
  • Appeal from the United States District Court for the Eastern District of Texas in No. 2:16-cv-00543-JRG-RSP: https://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1628.Rule_36_Judgment.2-10-2020.1_1529653.pdf

 

News Articles:

• • B2 IP Report: Eastern District of Texas Federal Court invalidation of Bytemark’s patents under § 101 Alice test: https://www.b2ipreport.com/swip-report/e-d-tex-invalidates-e-ticket-patents-%C2%A7-101/
  • Law 360 article following the successful US Court of Appeals hearings (requires subscription): https://www.law360.com/appellate/articles/1242489/fed-circ-affirms-that-2-ticket-reading-patents-are-invalid