Identitii Fights JPMorgan’s Challenge to Blockchain Patent

News | June 6, 2024 By:

On Tuesday, May 28, 2024, Identitii Limited filed a response with the United States Patent and Trademark Office (USPTO) to dispute a request for inter partes review of its U.S. Patent No. 10,984,413.

Identitii is an Australian technology company that developed a new method for financial institutions to securely process transactions using blockchain and tokenization. Its ‘413 patent, issued on April 20, 2021, covers a system that generates an “enriched data record” from documents related to a financial transaction and adds it to a blockchain. A token is also generated and stored in the blockchain, providing a link to the enriched data record. This allows intermediaries like banks to access additional transaction details in real-time through the blockchain.

JPMorgan Chase Bank, after being interested in Identitii’s technology, decided to develop its own competing system instead of licensing the ‘413 patent. JPMorgan then filed a request seeking to invalidate Identitii’s patent through an inter partes review at the USPTO. In its response filed on May 28, Identitii argued that JPMorgan failed to prove the ‘413 patent claims would have been obvious in view of the prior art references cited.

Identitii argued the primary reference, a system by Kennedy aimed at faster cryptocurrency transaction processing, did not address the same problems as the ‘413 patent and was not combinable with the secondary reference, a system by Kurani involving the transfer of digital asset titles via bitcoin escrow. Kurani’s requirement of creating unique digital titles for each asset would be prohibitively expensive for fungible goods and greatly slow down transactions, counter to Kennedy’s goal. Additionally, neither reference taught or suggested several elements of the ‘413 claims, such as generating an enriched data record and token from documents at an intermediary server.

If the USPTO agrees with Identitii’s arguments and declines to institute the inter partes review, JPMorgan’s challenge of the ‘413 patent would be unsuccessful. This could allow Identitii to continue enforcing its patent against competitors developing similar blockchain-based financial transaction technologies. A final decision by the USPTO on whether to institute the review is expected in the coming months.

Please contact BlockTribune for access to a copy of this filing.