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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.
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Text is available at http://pub.bna.com/ptcj/CBM2012-00007final.pdf.
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