Well, we are starting to see the work product of the Patent Trial and Appeal Board, whose goal for many of the new AIA proceedings is to dispose of them within a year. Here’s the decision in CRS Advanced Technologies, Inc. v. Frontline Technologies, Inc. (Case CBM2012-00005), instituted January 23, 2013 and decided just under a year later on January 21, 2014.
CRS wanted to invalidate some of the claims of US Patent 6,675,151. Doing so in court would likely have cost half a million dollars or more. CRS picked the Covered Business Method approach and (I’d guess) probably spent well under a quarter million dollars. And prevailed.
What I would have hoped is that the decision might help to clarify what practitioners need to do to draft patent applications that will survive post-grant review (whether before the PTAB or before the courts). I don’t think I got my wish. Here’s why I feel this way. The decision says:
According to CRS, the process claims encompass the preexisting process of substitute fulfillment simply made more efficient with the use of generic computer hardware and software, and, therefore, constitute unpatentable abstract ideas under § 101. …
We conclude that claims 3, 16, 24, and 33 are directed to abstract, and, therefore, unpatentable, methods for substitute fulfillment. The claims are directed to concepts for taking the preexisting process of substitute fulfillment and implementing it in a networked computing environment. …
We hold Frontline’s claims 3, 6, 7, 16, 24, and 33 to be unpatentable under 35 U.S.C. § 101. Specifically, the claims recite unpatentable abstract ideas, and the claims do not provide enough significant meaningful limitations to transform these abstract ideas into patent-eligible applications of these abstractions.
To my eye this is not a § 101 result at all. It is a § 103 result. The way it looks to me the PTAB’s reason for invalidating the claims, when translated into clear and plain language, is something like this:
It was in the prior art to do “substitute fulfillment” by means of mental steps and people posting things on bulletin boards and talking to each other. Merely moving some or all of this prior-art activity onto a computer-based platform, even if novel, does not confer unobviousness upon the activity. It was obvious to take what people used to do without a computer and move it to a computer.
I count this case as making it less clear, rather than more clear, how to write a patent application in a software/internet/business-method area that will survive post-grant review.