Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 20
`Entered: August 2, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`NETSIRV and LOCAL MOTION MN,
`Petitioner,
`
`v.
`
`BOXBEE, INC.,
`Patent Owner.
`____________
`
`PGR2015-00009
`Patent 8,756,166 B2
`____________
`
`
`
`Before WILLIAM V. SAINDON, JUSTIN T. ARBES, and
`CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges.
`
`
`
`SAINDON, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 328(a)
`
`
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`

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`PGR2015-00009
`Patent 8,756,166 B2
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`I. INTRODUCTION
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`We have jurisdiction under 35 U.S.C. § 6(b)(4). This Final Written
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`Decision is entered pursuant to 35 U.S.C. § 328.
`
`Netsirv and Local Motion MN (“Petitioner”) filed a corrected Petition
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`(Paper 6, “Pet.”) requesting a post-grant review of all claims (1–21) of
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`U.S. Patent No. 8,756,166 B2 (Ex. 1001, “the ’166 patent”) under 35 U.S.C.
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`§§ 101, 102(a), and 103(a). Pet. 12–13. Boxbee, Inc. (“Patent Owner”)
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`waived its preliminary response. Paper 8. We instituted a post-grant review
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`of the ’166 patent on the § 101 ground only. Paper 10, 18 (“Dec. on Inst.”).
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`Patent Owner then filed its Response (Paper 17, “PO Resp.”) to which
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`Petitioner filed its Reply (Paper 18, “Pet. Reply”). No oral argument was
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`held. Paper 19.
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`For the reasons discussed below, we determine that Petitioner has
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`shown by a preponderance of the evidence that all claims of the ’166 patent
`
`are unpatentable.
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`A. Related Matters
`
`The parties assert that there are no related matters. Pet. 10; Paper 9.
`
`B. The ’166 Patent
`
`
`
`The ’166 patent, entitled “SYSTEM AND METHOD FOR
`
`STORAGE CONTAINER TRACKING AND DELIVERY,” was filed on
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`August 26, 2013 and issued on June 17, 2014. Ex. 1001, (54), (22), (45).
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`The ’166 patent characterizes itself as relating to “storage container tracking
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`and delivery in the physical storage field.” Id. at 1:6–9. In conventional
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`storage systems, according to the ’166 patent, a user rents a single large
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`container (e.g., using the PODS® storage system) and stores various personal
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`Patent 8,756,166 B2
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`property items therein. Id. at 1:13–33. The ’166 patent explains that a
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`single large container is inefficient in that a user may not always need that
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`much storage space or a user may not remember all that was in that storage
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`space, or because large storage containers require specialized equipment to
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`move, such as lifts and trucks. Id. at 1:34–40. The ’166 patent purportedly
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`improves on conventional storage systems by allowing a user to identify
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`individual items stored in one or more relatively small storage containers.
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`Id. at 2:36–51.
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`The ’166 patent also describes a computerized method of coordinating
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`such a system. See id. at 3:11–13. A benefit to this system is that empty
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`containers retrieved from a customer can be immediately put back to use and
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`given to another customer. See id. at 2:57–3:3. The ’166 patent
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`characterizes this feature as “dynamic adjustment” or “dynamic
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`disassociat[ion].” See id. at 2:64, 3:5.
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`C. Challenged Claims
`
`Claim 1 is the sole independent claim and is reproduced below, with
`
`step identifiers (a)–(m) added for reference purposes.
`
`1. A method for stored item distribution to a user, the
`user associated with a user identifier, the method
`comprising:
`by a computing system:
`(a) receiving a delivery request associated with the user
`identifier comprising a requested time, a requested
`location, and a requested number of containers;
`(b) facilitating delivery of a set of containers to the
`requested location at the requested time, the set of
`containers comprising at least the requested number of
`containers, each container of the set associated with a
`unique storage identifier;
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`PGR2015-00009
`Patent 8,756,166 B2
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`(c) receiving a set of storage identifiers from a delivery
`device remote from the computing system, each
`storage identifier of the set of storage identifiers
`associated with one of the set of containers;
`(d) associating the set of storage identifiers comprising a
`first storage identifier with the user identifier in
`response to receipt of the set of storage identifiers from
`the delivery device;
`(e) receiving a media description in association with the
`first storage identifier from a user device associated
`with the user identifier, the user device remote from the
`computing system;
`(f) storing the media description as a storage description
`for the first storage identifier;
`(g) setting a fill status of the first storage identifier to
`packed;
`(h) receiving a removal request comprising storage
`identifiers associated with empty fill statuses from a
`pickup device remote from the computing system;
`(i) removing the storage identifiers having an empty fill
`status from the set of storage identifiers associated with
`the user identifier;
`(j) receiving a summary request associated with the user
`identifier;
`(k) in response to receipt of the summary request, sending
`the storage description of the first storage identifier;
`(l) receiving a retrieval request associated with the user
`identifier comprising a selection associated with the
`storage description, a retrieval location, and a retrieval
`time; and
`(m) facilitating delivery of a first container identified by
`the first storage identifier to the retrieval location at the
`retrieval time.
`
`
`
`D. Instituted Ground
`
`We instituted on the ground of whether claims 1–21 of the ’166 patent
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`are unpatentable as directed to patent-ineligible subject matter under 35
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`Patent 8,756,166 B2
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`U.S.C. § 101. Dec. on Inst. 18; see also id. at 7–12 (setting forth our
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`analysis of Petitioner’s ground); Pet. 18–34 (setting forth Petitioner’s § 101
`
`ground).
`
`II. ANALYSIS
`
`A. Eligibility for Post-Grant Review
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`In our Institution Decision, we determined that the ’166 patent was
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`eligible for post-grant review because, inter alia, it has an effective filing
`
`date after March 16, 2013 and the Petition was filed within 9 months from
`
`the ’166 patent’s issuance. Dec. on Inst. 5–6. No arguments challenging the
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`eligibility of the ’166 patent for post-grant review have been raised by Patent
`
`Owner.
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`B. Claim Construction
`
`We interpret the claims of an unexpired patent using the broadest
`
`reasonable interpretation in light of the specification of the patent. 37 C.F.R.
`
`§ 42.200(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
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`2144–46 (2016) (upholding the use of the broadest reasonable interpretation
`
`standard in inter partes reviews). Under that standard, a claim term
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`generally is given its ordinary and customary meaning, as would be
`
`understood by one of ordinary skill in the art in the context of the entire
`
`disclosure. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`
`2007). Although our claim interpretation “‘cannot be divorced from the
`
`specification,’” see Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298
`
`(Fed. Cir. 2015) (citing In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir.
`
`2011)), we must be careful not to import limitations from the specification
`
`that are not part of the claim language, see SuperGuide Corp. v. DirecTV
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`Patent 8,756,166 B2
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`Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Any special definition
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`for a claim term must be set forth in the specification with reasonable clarity,
`
`deliberateness, and precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed.
`
`Cir. 1994).
`
`In our Institution Decision, we adopted several of Petitioner’s
`
`constructions, with our own slight modification to Petitioner’s construction
`
`of “in response to.” Dec. on Inst. 6–7. The constructions we used in the
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`Institution Decision were:
`
`Term
`
`Construction
`
`“facilitating”
`“time”
`
`Communicating or updating for coordination of.
`Any reference to time, generally, including date,
`alone, or date/time, or a range of the same.
`“summary request” A general request about the contents in storage and
`no requirements about what that request looks like
`or includes. The request can be for all of the
`contents or some aspect of the contents.
`Directly or indirectly in response to.
`A portable electronic that is associated, in some
`way, with a delivery person or delivery vehicle and
`has the capability of remote communication.
`Similar to “delivery device,” except that it is
`associated, in some way, with a pickup, removal, or
`field person that is performing the role of collecting
`or returning packed containers to a warehouse or
`otherwise removing them from a site. Can be the
`same device as the delivery device.
`“signature pattern” A suitable unique identifier.
`
`
`“in response to”
`“delivery device”
`
`“pickup device”
`
`Neither party has proposed modifications to these constructions, nor
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`do we find a reason to modify them. We use them once again for this
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`Decision.
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`Patent 8,756,166 B2
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`Patent Owner proposes an additional term to construe, “remote,” as in
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`“a delivery device remote from the computing system,” found in claim 1.
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`See PO Resp. 9. Patent Owner proposes that “remote” refers to something
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`“far removed in space,” based on the language in the ’166 patent discussing
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`a “networked portable device remotely connected to the server.” Id. (citing
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`Ex. 1001, 5:31–33, 6:14–15. We do not adopt Patent Owner’s proposed
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`construction. It is clear from the ’166 patent at the cited passages that
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`“remote,” as in claim 1, means “remotely connected.” See id. The physical
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`distance separating the device from the computing system does not matter
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`here; the specification is distinguishing the type of connection. Based on
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`these portions of the ’166 patent, we understand “remote,” as recited in the
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`claims, to mean “remotely connected.”
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`C. Section 101 – Patent Subject Matter Eligibility
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`Petitioner asserts that claims 1–21 are directed to patent-ineligible
`
`subject matter. Pet. 18–34. Using the framework set forth in Alice Corp.
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`Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), Petitioner alleges that
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`claims 1–21 are: 1) directed to a process (id. at 20); 2) directed to the
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`abstract idea of “facilitating containerized storage” (id. at 20–23); and 3) do
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`not add elements that amount to significantly more than the abstract idea (id.
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`at 24–34).
`
`In Alice, the Supreme Court applied the framework set forth
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`previously in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.
`
`Ct. 1289 (2012), “for distinguishing patents that claim laws of nature,
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`natural phenomena, and abstract ideas from those that claim patent-eligible
`
`applications of those concepts.” Alice, 134 S. Ct. at 2355. The first step in
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`the analysis is to “determine whether the claims at issue are directed to one
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`of those patent-ineligible concepts.” Id. If they are directed to a patent-
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`ineligible concept, the second step in the analysis is to consider the elements
`
`of the claims “individually and ‘as an ordered combination’” to determine
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`whether there are additional elements that “‘transform the nature of the
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`claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at
`
`1297). In other words, the second step is to “search for an ‘inventive
`
`concept’—i.e., an element or combination of elements that is ‘sufficient to
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`ensure that the patent in practice amounts to significantly more than a patent
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`upon the [ineligible concept] itself.’” Id. (alteration in original) (quoting
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`Mayo, 132 S. Ct. at 1294). Further, the “prohibition against patenting
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`abstract ideas ‘cannot be circumvented by attempting to limit the use of [a]
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`formula to a particular technological environment’ or adding ‘insignificant
`
`postsolution activity.’” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010)
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`(quoting Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)).
`
`a. Alice Step 1 — Abstract Idea
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`
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`The ’166 patent generally relates to a bailment scheme using storage
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`containers, or, as Petitioner describes it, “containerized storage.” See Pet.
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`20–23. Petitioner describes containerized storage as a process that
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`necessarily includes facilitating delivery and association of identifiable
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`containers, receiving and storing an inventory of contents, keeping track of
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`used versus unused containers, and facilitating retrieval of contents from
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`storage. Id. at 20. Petitioner adds that claim 1, for example, is “preemptive
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`of the entire containerized storage business that has been around for
`
`decades.” Id. at 20–21. Petitioner also asserts that none of the dependent
`
`claims add limitations that save the claims from ineligibility. Id. at 33–34.
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`Patent Owner first argues that “this method does not recite a ‘business
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`practice known from the pre-Internet world.’” PO Resp. 11. Patent Owner
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`argues that the claims instead recite “a process previously unknown,” as
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`“evidenced by the lack of anticipatory prior art.” Id. at 12. As to Patent
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`Owner’s first argument, Petitioner replies that the method is more precisely
`
`characterized as “pre-computer practices being performed by a computer.”
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`Pet. Reply 2. Insofar as Patent Owner’s claims are directed to a bailment
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`scheme, we agree with Petitioner’s characterization. Patent Owner’s second
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`argument implicitly would make the § 101 analysis a subset of the § 102
`
`analysis. We are not persuaded that the absence of an anticipatory reference
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`renders a claim directed to patent-eligible subject matter, and Patent Owner
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`offers no binding authority in support of that position. Cf. Diehr, 450 U.S.
`
`at 190 (“The question therefore of whether a particular invention is novel is
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`wholly apart from whether the invention falls into a category of statutory
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`subject matter.” (internal quotation omitted)).
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`Reviewing the full record from this trial, we find that bailment
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`schemes were a long-prevalent economic practice, and constitute an abstract
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`idea as recited in claim 1.1 See Alice, 134 S. Ct. 2356; see also PO Resp. 1
`
`
`1 Courts have determined similar claims to be directed to abstract ideas. See,
`e.g., Wireless Media Innovations, LLC v. Maher Terminals, LLC, 100
`F. Supp. 3d 405, 408–09, 413–15 (D.N.J. 2015) (claims directed to the
`abstract idea of “monitoring locations, movement, and load status of
`shipping containers within a container-receiving yard, and storing, reporting
`and communicating this information in various forms through generic
`computer functions”), aff’d, 636 F. App’x 1014 (Fed. Cir. 2016)
`(nonprecedential); GT Nexus, Inc. v. Inttra, Inc., No. 11-02145-SBA, 2015
`WL 6747142, at *4–6 (N.D. Cal. Nov. 5, 2015) (claims directed to the
`abstract idea of “intermediated booking and tracing of shipping containers”).
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`(conceding that “[a]t the time of the invention, storage container delivery
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`methods were known in the art”); Dec. on Inst. 9 (characterizing
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`“containerized storage” as “a bailment scheme”). The added notion of
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`storage in a particular container does not render the idea any less abstract—it
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`is a particular operating environment within the abstract idea of bailment
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`schemes. See Bilski, 561 U.S. at 610–11.
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`Our reviewing court recently instructed that the “‘directed to’ inquiry
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`applies a stage-one filter to claims, considered in light of the specification,
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`based on whether ‘their character as a whole is directed to excluded subject
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`matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (quoting
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`Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed.
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`Cir. 2015)); see also Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369,
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`1375–76 (Fed. Cir. 2016) (inquiring into “the focus of the claimed advance
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`over the prior art”). The Enfish case confirmed that not all claims directed to
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`improvements in computer-related technology are abstract. Enfish, 822 F.3d
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`at 1335. A claim “for which computers are invoked merely as a tool,”
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`however, “requir[es] that the analysis proceed to the second step of the Alice
`
`inquiry.” Id. at 1335–36.
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`The claims of the ’166 patent fall into the computer-as-a-tool
`
`category. See also id. at 1336 (contrasting claims directed to “an
`
`improvement to computer functionality itself” from claims directed to
`
`“economic or other tasks for which a computer is used in its ordinary
`
`capacity”). In particular, the steps of the ’166 patent use computers as a tool
`
`to facilitate the receipt, storage, and transmission of information ancillary to
`
`operating a bailment scheme—an economic task, or method of conducting
`
`business. The computer acts as a device to move and hold data, but the
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`computer is used merely in its ordinary capacity. See Ex. 1001, 1:14–43
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`(describing the invention in terms of its practical business application, not in
`
`terms of an improvement to computer functionality itself); id. at 3:11–20
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`(describing the system performing the method in generic computer terms).
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`Accordingly, we find that claim 1 is directed to the abstract idea of a
`
`bailment scheme using storage containers.
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`We also have reviewed dependent claims 2–21, and likewise find that
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`they are directed to abstract ideas as well. For example, claim 7 recites that
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`“facilitating delivery of a first container to the requested location at the
`
`requested time comprises sending a delivery request to the delivery device,
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`the delivery request comprising the requested location and requested time.”
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`This merely specifies that the facilitating delivery step of claim 1 (step (m))
`
`involves sending data (i.e., a delivery request) to the delivery device, as part
`
`of the overall bailment scheme, the ultimate result of which is to facilitate
`
`delivery of the container. Similarly, claim 8 recites “selecting the delivery
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`device from a plurality of delivery devices provided by a third party vehicle
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`service.” This merely adds a step of selecting the particular delivery device
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`for delivering the container, again as part of the overall bailment scheme.
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`We are persuaded by Petitioner’s assertions that dependent claims 2–21 are
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`directed to abstract ideas, and Patent Owner does not address the dependent
`
`claims specifically in its Response. See Pet. 33–34; PO Resp. 11–12.
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`b. Alice Step 2 — Meaningful Limitations
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`Petitioner asserts that the steps of the claims, as a whole, are
`
`“insufficient to amount to significantly more than the judicial exception.”
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`Pet. 24 (emphasis removed); id. at 33. In particular, Petitioner explains how
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`each limitation of the claims is either:
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`Mere instructions to implement the idea on a
`computer (i.e., apply it);
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`Simply appending well-understood, routine and
`conventional activities . . . specified at a high level
`of generality, to the judicial exception;
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`Insignificant extra-solution activity[; and]
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`Generally linking the use of the judicial exception
`to a particular technological environment or field of
`use.
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`Id. at 24 (citing 2014 Interim Guidance on Subject Matter Eligibility, CBT
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`Slides, slide 22 (Feb. 2015));2 id. at 24–34 (stepping through each limitation
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`for each claim). Petitioner argues that the steps of the claims generally
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`recite bookkeeping items that do not add meaningful limitations beyond the
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`abstract idea because they are simply those conventional, routine things a
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`bailment business would track to run the business properly. See id. at 24–
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`34. In particular, Petitioner argues that “the steps are all common steps that
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`naturally flow from a containerized storage business. They reflect
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`fundamental steps that a storage provider would perform merely by being
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`involved in the business.” Id. at 31. Petitioner also provides evidence of
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`record indicating what practices were known in the containerized storage
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`field. See Ex. 1002 (patent directed to a system for remote access to a
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`computerized inventory); Ex. 1003 (computer system for managing and
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`2 Available at http://www.uspto.gov/patent/laws-and-regulations/
`examination-policy/2014-interim-guidance-subject-matter-eligibility-0 (last
`visited July 22, 2015). The substance of this slide is also available at 79
`Fed. Reg. 74,618, 74,624 (Dec. 16, 2014).
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`operating a storage business); see also Pet. 49–80 (explaining where the
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`claim limitations can be found in Exhibits 1002 and 1003).3
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`Our reviewing court has recently provided further guidance as to the
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`appropriate considerations for step two of the Alice analysis. See BASCOM
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`Global Internet Services, Inc. v. AT&T Mobility LLC, No. 2015-1763, 2016
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`WL 3514158 (Fed. Cir. June 27, 2016). “An inventive concept that
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`transforms the abstract idea into a patent-eligible invention must be
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`significantly more than the abstract idea itself, and cannot simply be an
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`instruction to implement or apply the abstract idea on a computer.” Id. at *6.
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`The inquiry involves determining whether the claims are a “technology-
`
`based solution” and not “an abstract-idea-based solution implemented with
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`generic technical components in a conventional way.” Id. at *7.
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`As we identified above, the abstract idea here is a bailment scheme. It
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`is a business practice long in use. See Ex. 1001, 1:14–17 (discussing the
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`existing “PODS storage system”); PO Resp. 1 (“storage container delivery
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`methods were known in the art”); id. at 1–2 (distinguishing the ’166 patent
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`method from “PodsTM” and cardboard boxes); Ex. 1002, 2:1–3 (describing a
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`prior art bailment business using “vaults”); Ex. 1003 ¶ 4 (discussing how a
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`“number of companies provide mobile or portable self-storage services”);
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`see also Lionberger v. United States, 371 F.2d 831, 840 (Ct. Cl. 1967) (“A
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`bailment relationship is said to arise where an owner, while retaining title,
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`delivers personalty to another for some particular purpose upon an express
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`or implied contract. The relationship includes a return of the goods to the
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`3 Although we did not institute on Petitioner’s anticipation or obviousness
`grounds due to a deficiency in a declaration (see Dec. on Inst. 17, 18), these
`references nonetheless are of record and are indicative of the state of the art.
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`owner or a subsequent disposition in accordance with his instructions.”). To
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`determine whether the ’166 patent claims significantly more than the
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`abstract idea, we must identify what the claims recite beyond the abstract
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`idea and evaluate whether that additional subject matter, individually or in
`
`combination, renders the claims significantly more than the abstract idea.
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`Mayo, 132 S. Ct. at 1294. We find three concepts beyond the bailment
`
`scheme that are recited in the claims of the ’166 patent. We investigate each
`
`of these concepts in turn, to determine whether they are an inventive
`
`concept.
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`The first concept is that each of the steps is performed “by a
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`computing system” and that several steps involve communication of data
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`between that computing system and a remote device. See PO Resp. 13–16
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`(arguing that the claimed invention is more than an abstract concept because
`
`of the use of computers). The involvement of these computing devices,
`
`however, is limited to the ordinary transfer and storage of data. For
`
`example, the computing system “receiv[es] a delivery request” (claim 1) that
`
`includes information such as a user identifier, time, location, and number of
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`containers, or “send[s] a delivery request to the delivery device” (claim 7)
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`that includes the time and location. On its face, this is the computerization
`
`of routine bookkeeping functions; the transfer and storage of data. As
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`another example, the computer system “receiv[es] a set of storage identifiers
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`from a delivery device” (claim 1). This is the ordinary transfer of data
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`between two computing devices and does not accomplish more than any
`
`other transfer of information from one device to another remotely-connected
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`device, e.g., by phone, fax, or voice. As a final example, the step of
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`“extracting a signature pattern from each image” (claim 11) simply involves
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`reading a bar code. See Ex. 1001, 3:65–66 (“a signature pattern on the
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`storage unit (e.g., barcode, QR code, etc.)”). For each of the steps in the
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`challenged claims, the computing system and the device are used in a routine
`
`and conventional manner—sending, storing, or retrieving data. These basic
`
`data operations are not used to any particular new technical effect. The
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`claims, therefore, provide a “solution implemented with generic technical
`
`components in a conventional way.” BASCOM, 2016 WL 3514158, at *7;
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`see also id. at *6 (“An inventive concept . . . cannot simply be an instruction
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`to implement or apply the abstract idea on a computer.”). The use of the
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`computing system and remote devices recited in the claims, therefore, is not
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`an inventive concept. See TLI Comm’cns. LLC Patent Litig., 823 F.3d 607,
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`612 (Fed. Cir. 2016) (determining claims to be ineligible because they were
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`“directed to the use of conventional or generic technology in a nascent but
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`well-known environment, without any claim that the invention reflects an
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`inventive solution to any problem presented by combining the two”).
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`Second, we look to the nature of the data passed between the above
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`computers to determine if the data provide an inventive concept. See PO
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`Resp. 16–18 (arguing the claimed variables, i.e., the data, render the claims
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`more than an abstract idea). The first category of data contains those data
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`items attendant to the bailment scheme: pickup and delivery instructions
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`(time, location, count)4 and internal bookkeeping (associations between
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`
`4 Dependent claims 2, 6–8, 10, and 21 also recite steps involving pickup and
`delivery instructions. Claim 2 specifies that the containers have “empty fill
`status.” Claims 6–8 and 10 involve additional delivery information such as
`location and time received by a delivery device. Claim 21 (discussed in
`detail below) involves delivering more than the requested number of
`containers.
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`
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`15
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`containers and customers).5 Ex. 1001, claim 1. This first category of data
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`represents nothing more than the practice and bookkeeping of the bailment
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`scheme and, as such, does not serve to provide a meaningful limitation
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`beyond the abstract idea itself. The second category of data contains other
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`data items supplementary to the bailment scheme, such as a “media
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`description” (claims 1, 18), “digital photograph[]” (claims 12, 19), and “list
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`of contents” (claim 13). This second category of data involves routine and
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`conventional practices in the practice of prior art bailment schemes. See Pet.
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`74–77 (citing Ex. 1003 ¶ 53 (“enter a bar-coded identifier number on the
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`subject portable storage”); id. ¶ 71 (“capturing and storing images of the
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`mobile storage container [and] the customer’s property”); Ex. 1002, 2:48–52
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`(“a photographic image of each item is created”); id. at 3:6–9 (“a computer
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`record for each stored item may further include . . . a name of the item”)).
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`Further, notwithstanding the conventional nature of these additional data
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`items, we are not persuaded that collecting and storing this data in and of
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`itself transforms an abstract idea into a patent-eligible invention. A
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`description, a photograph, a list, and the like, are simply data that are stored.
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`The claims do not recite any particular use or technological innovation tied
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`to their storage. See BASCOM, 2016 WL 3514158, at *7 (holding that “an
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`abstract-idea-based solution implemented with generic technical components
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`in a conventional way” does not render a claim patent-eligible); see also
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`Parker v. Flook, 437 U.S. 584, 590 (1978) (“post-solution activity . . .
`
`
`5 Dependent claims 3–5, 9, 11, 14–17, and 20 also recite steps involving
`bookkeeping. Claims 3, 4, 15, and 16 involve setting fill status of containers
`in response to information received. Claims 5, 9, 11, 14, 17, and 20 involve
`associations of users and containers.
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`
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`16
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`can[not] transform an unpatentable principle into a patentable process”).
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`Thus, the recited data do not provide an inventive concept.
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`The third candidate concept is the step of facilitating delivery of more
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`boxes than requested, as recited in dependent claim 21. See PO Resp. 2–3
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`(arguing that delivering more boxes than requested is a problem addressed
`
`by the claims). As explained in the ’166 patent, this may occur, for
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`example, if a user initially requests four containers and then decides that five
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`containers are necessary. Ex. 1001, 2:65–3:3. Providing more boxes than
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`initially requested is an idea unto itself. Even if the extra containers are
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`provided without prompt from the customer, given the existence of popular
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`phrases such as “baker’s dozen,” it is not an uncommon business practice to
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`provide more than asked. There is no particular technical feature in claim 21
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`for the claim to be directed to any more than the idea of providing more
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`boxes. Cf. BASCOM, 2016 WL 3514158, at *7 (holding that “an abstract-
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`idea-based solution implemented with generic technical components in a
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`conventional way” does not render a claim patent-eligible).
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`Having reviewed the claims of the ’166 patent, we do not find claim
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`language that recites significantly more than the abstract idea. The claims
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`are directed closely to the abstract idea, and recite no more than the steps
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`required to perform the abstract idea using boxes, in conjunction with
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`routine computer application and the associated data. That is, considering
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`the limitations as a whole, and especially the three above-noted concepts, we
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`find little more than the computerized application of a bailment scheme
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`
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`17
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`using storage containers. In this regard, the claims of the ’166 patent do not
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`transform the abstract idea into patent-eligible subject matter.6
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`The claims of the ’166 patent are similar to the ineligible claims at
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`issue in Ultramercial v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014). In
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`Ultramercial, the claims were directed to a long series of steps performed
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`“for distribution of products over the Internet.” Id. at 712. Even though
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`some of the steps “were not previously employed in this art,” that fact was
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`not enough to confer patent eligibility because the steps themselves were
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`“conventional steps, specified at a high level of generality,” “data-gathering
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`steps,” or otherwise “add[ed] nothing of practical significance to the
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`underlying abstract idea.” Id. at 716 (quoting CyberSource Corp. v. Retail
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`Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011)). We find the same
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`here with the ’166 patent claims, which are all high-level steps that do not
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`add anything of practical significance beyond the abstract idea and are
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`generally directed to data storage and retrieval used in the generic
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`implementation of the abstract idea.
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`For the reasons set forth above, we are persuaded by Petitioner’s
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`analysis that claims 1–21 do not set forth significantly more than an abstract
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`idea. We now turn to Patent Owner’s rebuttal arguments. Patent Owner
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`responds that the claims amount to significantly more than an abstract idea.
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`PO Resp. 12–22. For example, Patent Owner argues that “a human cannot
`
`
`6 We further note that the ’166 patent’s background discussion suggests the
`primary inventive concept therein is providing smaller boxes than is typical
`in similar bailment schemes. See Ex. 1001, 1:14–43 (explaining how prior
`art containers “are typically too large” and setting forth examples of why).
`The notion of smaller boxes is not claimed, however, and we need not
`discuss this aspect of the ’166 paten