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Patents at Center of Audatex Lawsuit Against Mitchell Ruled Invalid

—March 08, 2016
Patents at Center of Audatex Lawsuit Against Mitchell Ruled Invalid

From Collision Week. Published February 29, 2016.

U.S. Patent and Trademark Office Board rules business processes covering total loss valuations that were at the heart of 2012 patent infringement lawsuit are not patentable.

In a ruling filed February 19, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) issued its Final Written Decision in favor of Mitchell International’s petition to have patents owned by Audatex North America ruled invalid.

In 2012, Solera Holdings announced that its Audatex North America, Inc. subsidiary filed a Complaint for Patent Infringement against Mitchell International, Inc. in the United States District Court in Delaware, for infringement of its U.S. Patent No. 7,912,740, (740 patent) entitled "System and Method for Processing Work Products for Vehicles Via the World Wide Web."

The patent, originally filed in November 2004 by ADP’s Claims Services Group detailed a business process for using the internet to process insurance claims including total loss valuations. Solera acquired ADP’s Claims Services Group in 2006. The patent was issued in March 2011.

In August 2014, Mitchell filed petitions with the PTAB asking for review of the patent. Mitchell challenged the patentability of the claims contained in the patent in its belief that they lacked any form of an inventive concept, and merely employ conventional and generic components, such as a computer, web page, and web server.

The Patent Board, in its decision, agreed with Mitchell that the 29 claims contained in the 740 Patent application, and subsequent revisions proposed by Audatex, are generic computer system implementations and are not patentable.

Mitchell International is pleased with the Boards decision. In a statement to CollisionWeek, the company explained:

Mitchell International, Inc. is extremely pleased with the Patent Trial and Appeal Board’s (PTAB) decision invalidating all the claims in Audatex North America Inc.’s three patents that were asserted against Mitchell in the district court lawsuit pending in the Southern District of California.

The PTAB’s decision found each of Audatex’s patent claims unpatentable because they were directed to the abstract idea of valuing a damaged vehicle based on information about that vehicle, which is prohibited by the U.S. Supreme Court’s decision in Alice Corp. v. CLS Bank International. The PTAB decision also found each of Audatex’s patent claims invalid because its purported invention is not novel and was described in prior patents and patent applications.

The PTAB’s decision also denied Audatex’s attempts to amend its patent claims, so all three patents were completely eliminated.

Unless successfully appealed by Audatex, the PTAB’s decision stands to completely resolve the district court litigation in Mitchell’s favor and eliminate Audatex’s claims for infringement or damages based on these patents.

(Note: the below paragraph is an update from Mitchell to the original article published on February 29, 2016.)

In April 2016, Audatex filed notices of appeal to the Federal Circuit on two of the three patents-in-suit. On May 11, 2016, the Court stayed the district court action pending the outcome of the appeals.


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