The Patent Trial and Appeal Board (PTAB) has invalidated all the claims of a patent owned by storage software company Boxbee in a post-grant review (PGR) proceeding brought by Netsirv and Local Motion. This is the third final written decision in a PGR, all of which have resulted in patents being invalidated.
The ’166 patent, entitled “system and method for storage container tracking and delivery,” was filed on August 2013 and issued on June 2014. The PGR was filed in March 2015. This meets the criteria for a PGR of the patent having an effective filing date after March 16 2013 with the petition filed within nine months from the patent’s issuance.
The Board instituted the PGR in August 2015 on Section 101 grounds but not Section 102 and 103 grounds.
The ’166 patent generally relates to a bailment scheme using storage containers. The Board found that bailment schemes were a long-prevalent economic practice.
The claims of the ’166 patent fall into the computer-as-a-tool category
In its final written decision, the Board said: “Having reviewed the claims of the ’166 patent, we do not find claim language that recites significantly more than the abstract idea. The claims are directed closely to the abstract idea, and recite no more than the steps required to perform the abstract idea using boxes, in conjunction with routine computer application and the associated data. That is, considering the limitations as a whole … we find little more than the computerised application of a bailment scheme using storage containers. In this regard, the claims of the ’166 patent do not transform the abstract idea into patent-eligible subject matter.”
The Board added the claims of the ’166 patent are similar to the ineligible claims at issue in the Federal Circuit’s 2014 Ultramercial v. Hulu ruling. In Ultramercial, the claims were directed to a long series of steps performed “for distribution of products over the Internet.”
PGRs cover patents issuing from applications subject to the first-inventor-to-file provisions of the America Invents Act (AIA). These provisions became effective on March 16 2013. As such, there are relatively fewer patents to be challenged under this type of petition and they are newer.
In June, the Board invalidated two livestock valuation patents in the first PGR final written decisions issued by the Board. The two patents were directed to computer programmes that determine the market value of livestock.
As of the end of July, 30 PGR petitions had been filed.
