Insurers Pay to Play the Telecom Game

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Evansville, Ind. — Old National Bancorp, Evansville, Ind., the largest financial holding company headquartered in Indiana, is the latest financial services firm to succumb to patent litigation being discharged by Ronald A. Katz Technology Licensing LP, (RAKTL), Los Angeles, the patent holding company set up by telecom inventor Ronald Katz.

Old National announced the settlement of patent litigation between the parties. As part of the settlement, Old National Bancorp has agreed to pay an undisclosed sum for a nonexclusive license under a comprehensive portfolio of patents that Katz owns relating to interactive voice applications.

The nonexclusive license covers services offered by Old National Bancorp in the "Financial Services Call Processing" Field of Use, including customer service delivered through automated systems and live agents.

Katz inventions also involve technologies that facilitate automated attendants, automated call distribution, voice-response units, computer telephone integration and even speech recognition. He also formed Telecredit Inc., the nation's first online, real-time credit and check cashing authorization system, and was awarded a patent as co-inventor of that technology. And, although these technologies are used across all vertical markets, the insurance industry has been forced to pay particular attention to it.

Last month, New York Life Insurance Co., New York, agreed to pay an undisclosed sum for a nonexclusive license under a comprehensive portfolio of patents that Katz owns relating to interactive voice applications. In November 2007, Seattle-based Safeco Corp. also settled with Katz, and within the past two years, Allstate, Massachusetts Mutual Life Insurance Co., ING North America Insurance Corp., Principal Financial Group Inc., Prudential Financial WellPoint (an independent licensee of the Blue Cross and Blue Shield Assoc.) and Wachovia also reached agreements with Katz to use his technology.

Katz has been known—and challenged—for his aggressive tactics. Since 2004, Katz’s patent holding company filed more than 100 lawsuits against a variety defendants. One report said that RAKTL initiated more than 3,000 claims for patent violations during the last 15 years.

Both Forbes and Insurance Networking News’ sister publication, American Banker, reported in 2004 that several financial services companies formed a lobbying coalition to get the U.S. Patent & Trademark Office to reexamine Katz's portfolio. Inexplicably, in 2004 Jon Dudas, the director of the United States Patent and Trademark Office, ordered four of the Katz patents to be reexamined, stating that that there was a question as to the validity of the patents. At least six others are the subjects of reexamination requests.

Many of those reexaminations are ongoing. And so are the swelling revenues being collected by Katz. Since the 1990s, Katz earned an estimated $1 billion in licensing revenue. That would put him on an even keel with the man long known as one of the century’s most prolific inventors—and one of the most aggressive patent enforcers—Jerome Lemelson. The holder of more than 550 patents, Lemelson earned more than $1 billion in fees before his death in 1997. But before many of Katz's patents expire in 2009, he could conceivably collect up to $1 billion more, some of which will come from insurers’ coffers.

Ronald Katz predicted that he would someday become the wealthiest patent holder ever. Based on the fact that this single inventor has been able to successfully wrangle with several of America’s Tier 1 insurers, by many estimates, he may be well on his way—if only until 2009.

Sources: Reuters, Allbusiness.com, Forbes, IPFrontline.com, INN archives, Business Wire

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