Patent Holders Beware in America Invents Act Review Proceedings

The impact of the new post-grant review provisions of the America Invents Act (“AIA”) are beginning to be felt. The U.S. Patent and Trademark Office (“USPTO”) recently issued an opinion invalidating key claims of a patent in an AIA proceeding, despite entry of a settlement between the parties in which the accused infringer withdrew its claims of invalidity. The USPTO Board refused to terminate the proceeding due to its “advanced stage.” Patent owners should beware that the new post-grant review proceedings appear to be heavily favoring petitioners and should consider settlement early should one of their patents be accepted for review by the board.

CoreLogic, Inc. had sued Interthinx Inc. in district court, alleging infringement of a patent on a computerized method of appraising real estate, and Interthinx initiated an AIA business method patent review challenging the validity of the patent. The matter had been fully briefed and was awaiting a hearing before the board. At that late stage, both sides had made their arguments, giving the board sufficient information to analyze the merits of the challenge. Once the parties reached a settlement, they asked to have the review terminated. However, instead of terminating the proceeding the board dismissed the accused infringer from the proceeding, continued its review of the asserted patent and reached its decision to invalidate several key claims of the patent.

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