In its third-ever post-grant review decision, the Patent Trial and Appeal Board ruled Tuesday that a patent for tracking container storage and shipping is invalid under the U.S. Supreme Court’s Alice decision because it describes a long-standing industry practice.
The PTAB found in favor of Netsirv LLC, a company that had challenged Boxbee Inc.’s U.S. Patent Number 8,756,166 for a “bailment scheme using storage containers,” or a method of keeping track of where certain containers or items are stored, on the grounds that it describes an abstract idea and is therefore invalid under the Alice decision.
“Reviewing the full record from this trial, we find that bailment schemes were a long-prevalent economic practice, and constitute an abstract idea,” PTAB wrote in its ruling.
PTAB in June issued its first two post-grant review decisions, putting a spotlight on the powerful America Invents Act proceedings that had been little used.
Mark E. Nikolsky, a patent attorney at McCarter & English LLP, told Law360 on Wednesday that the board’s decision was interesting in that it addressed unpatentability only under Section 101, Alice and decision that stemmed from Alice. The post-grant review process also allows for challenges under Sections 102, novelty, and 103, obviousness, so it’s unique that the decision addresses only abstractness and no other grounds, he said.
“The board’s decision speaks to the continued power of the Alice decision, and challenges to patentability that may be available to accused infringers under Section 101 of the patent statute,” Nikolsky said.