LITIGATION:TransCore vs Mark IV

Mark IV says that under TransCore’s control some of its ET systems have been adapted, and their operational features changed by TransCore and that this could only have been achieved with the use of trade secrets taken by Gravelle to TransCore, and improperly used by them without Mark IV’s permission. The complaint alleges a string of civil law offenses.

Gravelle left Mark IV for TransCore, then owned by SAIC, in the summer of 1997, and moved from Toronto to San Diego.

The Mark IV lawsuit was quietly lodged in court in San Diego in 1999. TransCore countersued with a claim that Mark IV was infringing patents owned by it from its purchase of AT/Comm. The cases were separated and only came to our notice when TransCore put out a press release in January announcing it had managed to get the court in San Diego to dismiss Mark IV’s complaint against its use of proprietory information via Gravelle. Actually the case never went to trial because the judge ruled his court did not have jurisdiction over the case because of Gravelle’s lack of permanent US residency. A Canadian citizen, he lives in San Diego and works for TransCore there but on a temporary work visa, not a green card. It was a dispute between Mark IV IVHS, a Canadian located company and Gravelle, a Canadian, the judge said, implying it was a case that should be decided in a Canadian court.

The countersuit by TransCore challenges Mark IV’s right to have its transponders used for traffic management purposes (estimating traffic speeds) on the grounds that the AT/Comm system that TransCore bought some years ago patented this use.

AT/Comm was so active suing competitors and customers during the mid-1990s it was said: “If you haven’t been sued by AT/Comm you don’t amount to row of beans. You aren’t a full fledged member of the US toll industry until you’ve been sued by AT/Comm.”

AT/Comm sold toll systems to the Maine Turnpike and the Illinois tollway system in the US and to a handful of toll agencies overseas. It was one of the first to develop a transponder with segmented memory and able to process multiple applications, and it used quite different frequencies for uplink and downlink. There was little practical use for the multiple capabilities in tolling however and the low frequency link created troublesome interference issues in the field. Baby minders and other lowtech RF devices nearby could screw up an AT/Comm toll plaza, so toll system people regularly had to scour the neighborhood searching out radio gadgetry and paying people to trash it.

The company’s fate was sealed when its biggest customer, the Illinois tollway, abandoned it to switch to Mark IV (TRnl#20 Oct 97 p15). The abandonment of AT/Comm equipment was announced in the summer of 1997 and implemented mid-Jan 1998. TransCore had bid the ET upgrade in Illinois with (1) completion of the AT/Comm system that was in place (2) scrappage of the AT/Comm system and its replacement with a complete Mark IV system. The latter was cheaper, and also had the advantage of providing more mainstream equipment and the possibility of interoperability with other major toll systems, its proponents said. But questions were raised about the deal in the state legislature and the media. And AT/Comm sued yet again. And lost again. Nothing improper came out.

There was some irony in TransCore driving the final nails into AT/Comm’s coffin, then buying the corpse.

A strange aspect of TransCore’s patent complaint against use of Mark IV tags for traffic speed estimation is that Amtech tags have long been used for measuring traffic speed in Houston and San Antonio TX. They too would have infringed any supposed AT/Comm patent just as surely as Mark IV equipment.

The Transcom cooperative of state and local road agencies in the greater New York area has used Mark IV tags deployed by the E-ZPass interagency group as probes to measure the typical speed of traffic for about five years. The program has been well publicized from the beginning, being featured in ITS conference papers and articles in ITS journals. Transcom bought Mark IV readers similar to the ET readers to identify ET tag equipped vehicles at different points on the roadway system to measure time elapsed and speed. This forms the basis for much traffic management and traveller information data. Systems using Amtech equipment go back several years too in Houston and San Antonio.

The TransCore suit does look like a technical countersuit lodged for bargaining and PR purposes.

Mark IV says the TransCore patent claim is “frivolous” and is moving to have it dismissed, while looking for another venue to adjudicate its claim of misuse of its intellectual property by Kelly Gravelle and TransCore. Prince Edward Island or Newfoundland in the Maritime provinces are said to be very pleasant in summer. [Follow-up: Mark IV dismissed case: 99-CV0902-L(NLS) TransCore counter-suit patent infringement case: 00CV01243-L(NLS)]