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ARTICLE · 12 OCTOBER 2015

Petitioner Wins Uncontested Alice Fight

McDermott Will & Emery
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In a decision to institute post-grant review, the Patent Trial and Appeal Board (PTAB or Board) clarified the importance of corroboration to establish the credibility of testimony relating to prior public use in a post grant review (PGR) proceeding. Netsirv v. Boxbee, Inc., Case PGR2015-00009 (PTAB, Aug. 4, 2015) (Saindon, APJ).

United StatesIntellectual Property
Ryan Vachon
Ryan Vachon
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Netsirv v. Boxbee, Inc.

In a decision to institute post-grant review, the Patent Trial and Appeal Board (PTAB or Board) clarified the importance of corroboration to establish the credibility of testimony relating to prior public use in a post grant review (PGR) proceeding. Netsirv v. Boxbee, Inc., Case PGR2015-00009 (PTAB, Aug. 4, 2015) (Saindon, APJ).

At issue was a patent that related generally to the tracking and delivery of storage containers. Unlike conventional storage systems, the challenged patent allowed users to identify individual items stored in one or more relatively small storage containers, and described a computerized method for coordinating the system.

In rendering its decision to institute, the Board first determined that the challenged patent was eligible for PGR. Under 37 C.F.R. § 42.201, a petitioner seeking PGR must not be the patent owner; have filed, or a real party-in-interest of the petitioner have filed, a civil action challenging the

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