August 21, 2017

August 21, 2017

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Petitioner Allowed to Submit Supplemental Information After Institution of Covered Business Method Patent Trial and Appeal Board Trial

In Interthinx, Inc. v. Corelogic Solutions, LLC (CBM2012-000007), the Petitioner (Interthinx) was allowed to submit supplemental information under 37 C.F.R. § 42.223 after trial was instituted in this covered business method patent review (CBM).  Trial was instituted by the PTAB on January 31, 2013.  On February 27, 2013, Interthinx filed a Request for Authorization to File Motion to Submit Supplemental Information Pursuant to 37 C.F.R. § 42.223.  Corelogic sought to oppose the Petitioner’s request and motion.  Corelogic requested authorization to oppose Petitioner’s motion to supplement the record.  The PTAB denied Corelogic’s request and granted Petitioner’s request.

The supplemental information included testimony by the inventor (Dr. Jost) in an action styled Corelogic Information Solutions, Inc. v. Fiserv, Inc. et al. (1:10-CV-132-RSP)(E.D. Texas).  The PTAB reasoned that the Corelogic v. Fiserv trial occurred after the petition in the instant action was filed, and therefore the information from Dr. Jost was not available at the time the petition was filed.   The Petitioner also sought to submit testimony of another inventor (Krishna Gopinathan) taken in a depostion before the trial.  The inventors’ testimony relates to what the inventors invented, which the PTAB found to be directly related to an issue for which the trial was instituted.

The PTAB concluded the order by granting the Petitioner’s motion to submit supplemental information.  The order was entered April 16, 2013 as paper number 28.

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About this Author

Timothy Bianchi, Schwegman, Patent Attorney

Timothy Bianchi is a patent attorney who practices in inter partes reviews, covered business method patent reviews, post-grant reviews, and patent prosecution.  He also assists with concurrent patent litigation.  Mr. Bianchi has experience in electronics, software, medical devices, telecommunications, e-commerce, digital signal processing, computer security, embedded processor designs, wireless devices, semiconductors, and plasmas. He also has engineering experience from his former employment at IBM and Honeywell.