Tax-Right LLC, West Berlin, NJ, has agreed to pay SICPA Product Security, LLC a confidential amount in court costs and fees, as a result of Tax-Right dismissing its own frivolous lawsuit against SICPA in September 2012 for an alleged patent infringement (The United States District Court for the Eastern District of Virginia (Tax-Right v. SICPA, Civ. No. 3:12-CV-657)).
According to SICPA, the settlement also includes Tax-Right’s obligation to retract false allegations that it had made to the industry, including a withdrawal letter to be sent to all concerned parties and issuance of a press release clearing SICPA of any wrongdoing. Tax-Right now admits that SICPA does not infringe its patent, and further admits that its patent has no bearing on Master Settlement Agreement (MSA) information capture and verification.
The agreement is a victory for SICPA and its customers and puts an end to Tax-Right’s efforts to claim that its patent covers MSA information capture and verification and prevents another empty patent infringement lawsuit from occurring.
The Court ultimately found that the Tax-Right patent did not cover or relate to MSA information capture and verification. As trial by jury approached, Tax-Right admitted that its infringement claims against SICPA had no merit and sought to drop the infringement claims and walk away. SICPA, however, insisted that Tax-Right reimburse SICPA for its court costs and fees based on the lack of legal merit of Tax-Right’s lawsuit.