The Patent Trial and Appeal Board has issued a ruling [PDF] invalidating claims from US Patent No. 6,690,400, which had been the subject of the June 2016 entry in our Stupid Patent of the Month blog series. The patent owner, Global Equity Management (SA) Pty Ltd. (GEMSA), responded to that post by suing EFF in Australia. Eventually, a U.S. court ruled that EFF’s speech was protected by the First Amendment. Now the Patent Office has found key claims from the ’400 patent invalid.

The ’400 patent described its “invention” as “a Graphic User Interface (GUI) that enables a user to virtualize the system and to define secondary storage physical devices through the graphical depiction of cabinets.” In other words, virtual storage cabinets on a computer. E-Bay, Alibaba, and Booking.com, filed a petition for inter partes review arguing that claims from the ’400 patent were obvious in light of the Partition Magic 3.0 User Guide (1997) from PowerQuest Corporation. Three administrative patent judges from the Patent Trial and Appeal Board (PTAB) agreed.

The PTAB opinion notes that Partition Magic’s user guide teaches each part of the patent’s Claim 1, including the portrayal of a “cabinet selection button bar,” a “secondary storage partitions window,” and a “cabinet visible partition window.” This may be better understood through diagrams from the opinion. The first diagram below reproduces a figure from the patent labeled with claim elements. The second is a figure from Partition Magic, labeled with the same claim elements.

GEMSA argued that the ’400 patent was non-obvious because the first owner of the patent, a company called Flash Vos, Inc., “moved the computer industry a quantum leap forward in the late 90’s when it invented Systems Virtualization.” But the PTAB found that “Patent Owner’s argument fails because [it] has put forth no evidence that Flash Vos or GEMSA actually had any commercial success.”

The constitutionality of inter partes review is being challenged in the Supreme Court in the Oil States case. (EFF filed an amicus brief in that case in support of the process.) A decision is expected in Oil States before the end of June. The successful challenge to GEMSA’s patent shows the importance of inter partes review. GEMSA had sued dozens of companies alleging infringement of the ’400 patent. GEMSA can still appeal the PTAB’s ruling. If the ruling stands, however, it should end those suits as to this patent.