The Federal Circuit affirmed the Patent Trial and Appeal Board’s inter partes review decision declaring various claims of patent owner Thales’ U.S. Patent No. 6,474,159 (“the ‘159 patent”) nonobvious. In doing so, the Federal Circuit clarified what constitutes the substantial evidence required to sustain the Board’s factual findings on appeal.
Lily Zhang is an Associate in the firm’s San Diego office. Her practice is dedicated to intellectual property and patent prosecution matters. Lily has experience in a broad range of technology areas, most recently including 3G and 4G wireless technologies, RFID, electronic payment systems, data security and authentication, NQR/NMR, and social media.
The United States Patent and Trademark Office (“USPTO”) introduced the Ombudsman Program on April 6, 2010 with the ostensible goal of advancing patent applications that have stalled during the examination process. Since its inaugural year, which saw a mere 268 inquiries, the Ombudsman Program has experienced a surge in popularity, fielding 2,692 inquiries in the first half of 2016 alone. These numbers reflect the Ombudsman Program’s attractiveness as a free resource for applicants who are at an impasse with an examiner.
On August 3, 2016, the Patent Trial and Appeal Board issued a post-grant review decision that bears one striking similarity to its previous post-grant review decisions, namely invalidation of claims under Alice Corp. Pty. v. CLS Bank Int’l, further bolstering the salience of patent ineligibility challenges in post-grant proceedings.
In Netserv et al. v. Boxbee, Inc. (Case No. PGR2015-00009), the Board found the subject matter claimed in claims 1-21 of Boxbee Inc.’s U.S. Patent Number 8,756,166 (“the ‘166 patent”) to be ineligible for patent protection under 35 U.S.C. § 101. The Board first determined under Alice whether the claims of the ‘166 patent were drawn to an abstract idea. The Board found the ‘166 patent to describe “a bailment scheme using storage containers” or a method of keeping track of the storage locations of certain containers or items. Referring to cases on shipment tracking methods from federal district courts in New Jersey and California, as well as decisions from the Federal Circuit, the Board ruled that “bailment schemes [are] a long-prevalent economic practice, and constitute an abstract idea.”
There have been some interesting recent developments, both at the Federal Circuit and the USPTO, regarding subject matter eligibility for patenting as it relates to computer-implemented inventions, software, and other technologies that have been heavily impacted over the past two years by the U.S. Supreme Court’s decision in Alice v. CLS Bank.
For our client alert on May 2016 guidance on patent eligibility for claims that are allegedly directed to abstract ideas, please click here, and to read more about how these subject matter eligibility instructions affect the patents and patent applications that relate to the life sciences, please click here.
For our May 17 blog post on the latest post-Alice guidance from the Federal Circuit, please click here.