- On August 3, 2016, the Patent Trial and Appeal Board (PTAB) issued a post-grant review (PGR) decision invalidating patent claims based on patent ineligibility.
- The decision relied on the precedent set in Alice Corp. Pty. v. CLS Bank International, reinforcing the importance of subject-matter eligibility challenges in post-grant proceedings.
Case Details
- The case was Netserv et al. v. Boxbee, Inc. (Case No. PGR2015-00009).
- The PTAB reviewed U.S. Patent No. 8,756,166, owned by Boxbee Inc..
- Claims 1–21 of the patent were found ineligible for patent protection under 35 U.S.C. § 101.
PTAB’s Analysis Under Alice
- The Board applied the two-step Alice test to determine patent eligibility.
- First, it asked whether the claims were directed to an abstract idea.
- The Board determined the patent described a bailment scheme using storage containers, essentially a method of tracking storage locations of items.
- It concluded that bailment schemes are long-standing economic practices, making them abstract ideas.
Additional Elements Analysis
- The Board then examined whether the claims contained additional elements that amounted to significantly more than the abstract idea.
- It found the patent only used routine computer applications and associated data to perform the method.
- Because these elements were conventional and not inventive, the claims failed the Alice test and were invalid.
Post-Grant Review vs. Inter Partes Review
- Both post-grant review (PGR) and inter partes review (IPR) were introduced by the America Invents Act in September 2012.
- These proceedings allow third parties to challenge the validity of issued patents before the PTAB.
- IPR can only challenge patents on novelty or obviousness grounds.
- PGR allows additional invalidity arguments, including subject-matter ineligibility.
Limitations of Post-Grant Review
- Not all patents qualify for PGR.
- It cannot be used for non-covered business method patents filed before March 15, 2013.
- A PGR petition must be filed within nine months of the patent’s issuance or reissuance.
Practical Implication
- Patent owners whose patents qualify for PGR should review their claims carefully in light of the Alice decision, as subject-matter eligibility challenges can invalidate claims.
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