Access practice tools, as well as industry leading news, customizable alerts, dockets, and primary content, including a comprehensive collection of case law, dockets, and regulations. Leverage...
By Tony Dutra
Feb. 3 --A district court's judgments on patent eligibility and validity do not bar decisions on either by the Patent Trial and Appeal Board, according to a Jan. 30 final written decision of the board (Interthinx, Inc. v. CoreLogic Solutions, LLC, P.T.A.B., No. CBM2012-00007, 1/30/14).
CoreLogic Solutions LLC owns a patent (U.S. Patent No. 5,361,201) granted in 1994 and titled, “Real estate appraisal using predictive modeling.” In 2010, CoreLogic asserted the patent against a number of alleged infringers, including Interthinx Inc., in the U.S. District Court for the Eastern District of Texas. CoreLogic Information Solutions Inc. v. Fiserv Inc., No. 1:10-CV-132-RSP (E.D. Tex.). The patent expired during litigation.
Interthinx filed the “covered business method” challenge here on Sept. 19, 2012, three days after the America Invents Act-based post-grant opposition option was available. The PTAB instituted trial on Jan. 31, 2013.
After a jury trial, the district court in September 2013 denied post-trial motions and the parties settled. However, the patent is still at issue in a later filed case, CoreLogic Solutions, LLC, v. Redfin Corp., No. 2:12-CV- 305 (E.D. Tex).
The board granted the parties' joint motion to terminate Interthinx's involvement in the case. But, the board said, “the Board is not a party to the settlement and may independently determine any question of patentability. 37 C.F.R. §42.74(a). In view of the advanced stage of the proceeding, rather than terminate the proceeding, the Board will proceed to a final written decision. 35 U.S.C. §327(a).
Administrative Patent Judge Brian J. McNamara wrote the board's final written decision, addressing CoreLogic's collateral estoppel and issue preclusion arguments first.
As to the former, the board ruled that res judicata and collateral estoppel do not bar a patent eligibility challenge under 35 U.S.C. §101.
The board said that its standard of review would be a preponderance of the evidence while the district court applied a clear-and-convincing standard of review. It rejected CoreLogic's argument that a Section 101 challenge is purely a question of law, citing the U.S. Court of Appeals for the Federal Circuit's recent ruling that Section 101 analysis, “while ultimately a legal determination, is rife with underlying factual issues,” in Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1339, 2013 BL 164761, 107 U.S.P.Q.2d 1193 (Fed. Cir. 2013).
The validity judgments of the district court further did not bar board review under a theory of issue preclusion, the board said. Again, the standard of review differed, and the board rejected CoreLogic's contention that there should be an exception for expired patents.
Additionally, the board noted, it was Interthinx that contested the issue in district court. A different party, the Patent and Trademark Office, is questioning anticipation and obviousness now, the board said, and the office did not have “a full and fair opportunity to litigate the patentability issues in the prior court proceeding.”
The board then found four claims of the patents ineligible for patenting because they “recite abstract concepts and do not transform these ideas into patent eligible applications of these abstractions.” It further ruled the same claims anticipated by or obvious over an article published in the Property Tax Journal in 1987.
The board thus canceled the four claims.
Judges Joni Y. Chang and Michael P. Tierney joined the decision.
W. Karl Renner of Fish & Richardson P.C., Washington, D.C., represented CoreLogic.
To contact the reporter on this story: Tony Dutra in Washington at email@example.com
To contact the editor responsible for this story: Naresh Sritharan at firstname.lastname@example.org
Text is available at http://pub.bna.com/ptcj/CBM2012-00007final.pdf.
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to email@example.com.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to firstname.lastname@example.org.
Put me on standing order
Notify me when new releases are available (no standing order will be created)