The Jewelry Channel, Inc. USA d/b/a Liquidation Channelv.America's Collectibles Network, Inc.

Patent Trial and Appeal Board

Oct 16, 2015

11465841 (P.T.A.B. Oct. 16, 2015)

Trials@uspto.gov
571-272-7822
Paper 40
Date Entered: October 16, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

THE JEWELRY CHANNEL, INC. USA d/b/a Liquidation Channel,
Petitioner,

v.

AMERICA’S COLLECTIBLES NETWORK, INC.,
Patent Owner.
____________

Case CBM2014-00119
Patent 8,370,211 B2
____________

Before LINDA M. GAUDETTE, BRIAN J. McNAMARA, and
DAVID C. McKONE, Administrative Patent Judges.

McNAMARA, Administrative Patent Judge.

FINAL WRITTEN DECISION

35 U.S.C. § 328(a) and
37 C.F.R. § 42.73

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BACKGROUND
On October 20, 2014, we entered a Decision to Institute a covered
business method patent review of U.S. Patent 8,370,211 B2 (“the ’211
Patent”) on the grounds that claims 1–39 of the ’211 Patent do not recite
patentable subject matter under 35 U.S.C. § 101. Paper 10 (“Dec. to Inst.”).
Patent Owner has also filed a contingent Motion to Amend. Paper 22
(“Mot. to Amend”). In this final written decision, we conclude that claims
1–39 are unpatentable under 35 U.S.C. § 101. We also conclude that the
claims proposed in the Motion to Amend are unpatentable under 35 U.S.C.
§ 101 and deny the Motion to Amend.
THE ’211 PATENT (EXHIBIT 1001)
Although entitled “Computer System,” the ’211 Patent is drawn to a
method of conducting a telephone- or Internet-based (“Web”) reverse
auction, where the reverse auction is transmitted to users on a medium.
1
Ex.
1001, Abstract. The ’211 Patent states that the objective of the invention is
to mitigate problems with existing reverse auction systems, including the
length of time it takes a party to complete the registration procedure,
limitations resulting from using dedicated telephone numbers to distinguish
between offered products, potential overselling and underselling of products,
and the associated need to monitor each call throughout its duration to avoid
targeting a purchasing customer with offers for unsold products. Ex. 1001,
col. 1, l. 51–col. 2, l. 21.
The ’211 Patent discloses a computer-based system using a call center
or a website, with a processor and databases, e.g., a call database, a customer

1
Claims 1–34 and 36–39 recite a method; claim 35 recites a corresponding
apparatus, i.e., a computer system for conducting a reverse auction of units.
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database, an order database, and a game database, as well as a telephone
lookup system, a broadcast graphics computer, and a delivery system. Id. at
col. 6, ll. 16–40. The game database maintains historical records. Id. at
col. 8, ll. 54–56. The reverse auction, or game, is conducted by a TV
producer, which may be a person or may be an automated computer. Id. at
col. 8, ll. 15–27, 39–41. After accessing a product database, the producer
enters a quantity of units for a selected product and begins the reverse
auction. Id. at col. 8, ll. 51–56.
A monitoring process provides the human or automated TV producer
“preliminary indicators” concerning the likelihood of a sale of a unit and
eventual finalized allocation to a user. Id. col. 10, ll. 10–16. The ’211
Patent identifies the following preliminary indicators: the number of calls
received, the number of callers indicating they wish to place an order (e.g.,
indicated by pressing ‘1’ on the telephone), the number of calls that have
been answered, and the calls that have completed the purchase confirmation
process. Id. at col. 10, ll. 10–15. Using the preliminary indicators, the
human or automated producer can determine whether to reduce the unit
price, e.g., when the number of units sold is fewer than desired, or reduce the
quantity of available units. Id. at col. 10, ll. 16–45. Using the preliminary
indicators and historical information about the product or caller, the
producer need not wait for sales confirmation to take action, thereby
reducing the number of callers in the queue with little chance of winning a
unit purchase and improving the efficiency of the auction by reducing the
amount of time spent on a product for which no more units are available.
Id. at col. 10, ll. 46–57. The producer can apply any or all of these
preliminary indicators based on personal experience, personal instinct,
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stored records, or using automatic algorithms based on past games in the
games database. Id. at col. 10, l. 58–col. 11, l. 18. In the case of a Web
auction, the producer makes use of a site’s “shopping cart” feature as a
preliminary indicator and the check-out process. Id. at col. 11, l. 54–col. 12,
l. 11.
ILLUSTRATIVE CLAIM
1. A method of conducting a telephone based reverse
auction for selling units where the reverse auction is
transmitted to users on a medium by a system, the
method comprising the steps of:
providing a number of units for sale and storing a
preliminary available quantity in an allocation
database initially indicative of the number provided for
sale;
providing a telephone number to which calls from callers
can be placed to enter the reverse auction;
recording the time at which one or more calls were
received on the telephone number in a call record in a
call database;
placing each caller into a queue and assigning them to a
call operator or the system in order to sell a unit;
conducting a reverse auction in which the system reduces
the indicated price of a unit over time and reduces the
preliminary available quantity, wherein the
preliminary available quantity is reduced based at least
partly on one or more preliminary indicators
associated with the caller, and wherein the reducing of
the preliminary available quantity occurs before a sale
of a unit is completed;
concluding the reverse auction at a time the preliminary
available quantity is reduced to a pre-determined
number; and
storing in an auction database the price at the conclusion
of the auction.
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CLAIM CONSTRUCTION
Petitioner contends that, under the broadest reasonable interpretation
standard, the claim terms should be given their ordinary meaning and that no
terms need be construed. Pet. 23–25. Patent Owner agrees that for purposes
of this proceeding, there are no terms in the claims of the ’211 Patent that
require construction. Thus, we apply the ordinary meaning to the terms used
in the claims.
§ 101 SUBJECT MATTER ELIGIBILITY
The only issue before us in this proceeding is Petitioner’s assertion
that the claims of the ’211 Patent recite subject matter that is not patentable
under 35 U.S.C. § 101. Patent Owner argues that the statute does not permit
patentable subject matter challenges in covered business method patent
review. PO Resp. 62–69. The Federal Circuit resolved this issue in Versata
Development Group, Inc. v. SAP America, Inc., 793 F. 3d 1306,1330 (Fed.
Cir. 2015), stating “[w]e agree with the USPTO and . . . we so hold that,
looking at the entirety of the statutory framework and considering the basic
purpose of CBM reviews, the PTAB acted within the scope of its authority
delineated by Congress in permitting a § 101 challenge under AIA § 18.”
To determine whether a patent claims ineligible subject matter, we
engage in a two-step process: first, we determine whether the claims at issue
are directed to a patent ineligible concept, i.e., laws of nature, natural
phenomena, or abstract ideas; at step two, we examine the elements of the
claim to determine whether it contains an inventive concept sufficient to
transform the claimed abstract idea into a patent-eligible application. Alice
Corp. v. CLS Bank Int’l., 134 S. Ct. 2347, 2355–56 (2014).
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Petitioner contends that the patent ineligible abstract idea claimed in
the ’211 Patent is “reducing a price and reducing a quantity in a reverse
auction, based on preliminary indicators.” Pet. 28. Patent Owner argues
that “[t]he underlying idea of the ’211 Patent is that of a reverse auction,”
PO Resp. 21, 38–40, and that the “primary inventive concept of the ’211
Patent is the use of preliminary indicators to reduce a preliminary available
quantity of products before a sale of a unit is completed,” id. at 23. Thus,
Patent Owner argues that the use of preliminary indicators to reduce the
quantity of product available before a sale of a unit is completed is not part
of the abstract idea, but instead represents an inventive concept that adds
significantly more to the underlying abstract idea of a reverse auction,
thereby transforming the claimed abstract idea into a patent eligible
application. Id. at 44–51.
In support of its argument, Patent Owner cites the testimony of
Dr. David C. Wyld (Ex. 2012 “Wyld Decl. 2”) stating that the additional
features disclosed and claimed in the ’211 Patent, such as the identification
and use of preliminary indicators in any manner, and particularly to reduce
an available quantity before the sale of an item is completed, are not part of
the underlying idea. Id. at 40–41, 45–46 (citing Wyld Decl. 2 ¶¶ 43–47).
Patent Owner also cites the deposition testimony of Petitioner’s witness,
Andrew Glasspool, arguing that nowhere does Mr. Glasspool add the
additional element of “using preliminary indicators” to define the abstract
idea of the ’211 Patent. Id. at 42–45.
Petitioner responds that the claimed inventive use of preliminary
indicators is itself an abstract idea. Pet. Reply 12. Although not conceding
that the claimed use of preliminary indicators is inventive, Petitioner argues
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that even the addition of novel or non-routine components to the claimed
idea does not necessarily turn an abstraction into something concrete.
Pet. Reply 12 (citing Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715
(Fed. Cir. 2014); Dell Inc. v. Disposition Servs. LLC, Case No. CBM2013-
00040, slip op. at 12 (PTAB Jan. 9, 2015) (Paper 15) (“Even assuming that
the methods and systems are not taught in the prior art, that is not dispositive
because even a novel and nonobvious claim directed to a purely abstract idea
is patent ineligible.”)). At the trial hearing, Petitioner argued that whether
the claims are considered to constitute a single abstract idea, or a
combination of two abstract ideas, i.e., a reverse auction and the use of
preliminary indicators to reduce available quantity, they do not recite patent
eligible subject matter. Tr. 54–55, 62.
Independent method claim 1 is drawn to a telephone-based reverse
auction. Independent system claim 35 is drawn to a computer system for
conducting a reverse auction. Independent method claim 36 is drawn to
selling units on television by a system using a reverse auction. Independent
method claim 39 is drawn to an Internet-based reverse auction. The auction
is conducted by a producer. Ex. 1001, col. 8, ll. 23–26. The producer can be
a person, who makes adjustments based on the producer’s recollection of the
caller’s history, or automatic algorithms may be employed. Id. at col. 8, ll.
24–26, col. 11, ll. 4–18. All of the independent claims recite the use of
preliminary indicators, but are not limited to specific preliminary indicators.
The preliminary indicators identified in the specification include the number
of calls received by the auction, indications of the willingness of a customer
calling in to the auction to place an order, e.g. by pressing “1,” and the
presence of a customer’s information, e.g., credit card information, in a
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database of corresponding telephone numbers. Id. at col. 9, ll. 13–col. 10, l.
22. In practice, pressing “1” is the most commonly used preliminary
indicator that the customer is willing to pay the price being offered at that
point in the auction, causing the producer to reduce the available quantity by
the number of units the customer is willing to purchase at that price. Id. at
col. 10, ll. 65–67.
The transaction with the customer is not completed at that point,
however, because the producer may lower the price further based on the
preliminary indicators, e.g., an insufficient number of calls or products sold,
to encourage other customers to make a purchase. Id. at col. 10, ll. 15–26,
38–40, 65–67; Tr. 45–48. Thus, completion of the transaction is deferred
until a predetermined number of remaining units is reached, e.g., there are
no units left, or the producer is unwilling to reduce the price further to entice
more buyers to purchase the remaining units. Id. at col. 11, ll. 32–43. When
a final price is reached and stored, the customer transactions are completed.
Id. at col. 11, ll. 38–42; Tr. 47–48. The producer is prevented from
reducing the quantity below the start quantity less total calls received less
orders in the game on the website. Ex. 1001, col. 11, ll. 24–28. Thus,
during the reverse auction, the producer, whether a human or a machine,
tests customer response to various price offers and adjusts the price
accordingly, in order to sell the available units of product.
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In OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir.
2015)
2
, claims drawn to testing a plurality of prices, gathering statistics
generated about how customers reacted to the offers testing the price, using
the data to map the demand curve for a given product, and automatically
selecting and offering new prices based on the estimated outcome, were
found to recite ineligible subject matter. Id. The court noted that the
concept of “offer based pricing” is similar to other fundamental economic
concepts found to be abstract ideas by the Supreme Court. OIP Techs., 788
F.3d at 1362. Patent Owner argues that in OIP the Federal Circuit found the
claims unpatentable, because the claim limitations did not provide a
meaningful limitation on the abstract idea. Paper 39 (“PO Suppl. Brief”) 1–
2. Patent Owner argues that in the ’211 Patent, the limitations of: 1) using
preliminary indicators; 2) reducing the preliminary available quantity based
at least partly on one or more preliminary indicators; and 3) reducing the
preliminary available quantity before a sale of a unit is completed are all
meaningful limitations that add “significantly more” to the abstract idea of a
reverse auction. Id. We disagree.
In the ’211 Patent, the producer tests a plurality of prices throughout
the auction. Preliminary indicators, e.g., the number of customers who press
“1” to place an order at a particular price, provide statistics about how
customers reacted to the offers at various test prices. In the ’211 Patent, the
producer adjusts the demand curve by reducing the quantity available based

2
OIP was decided on June 15, 2015, shortly after Patent Owner filed its
Reply to Petitioner’s Opposition to the Motion to Amend (Paper 28, “Opp.
to Mot. to Amend”), and a month before the oral hearing in this proceeding.
At our request, the parties filed post-hearing briefs on October 1, 2015, to
address the implications of OIP. Paper 37 (“Petitioner’s Suppl. Brief”) and
Paper 39 (“PO Suppl. Brief”).
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on customers’ reactions to the various price offers, and selects new prices
based on the estimated outcome, i.e., expectations that additional customers
will purchase units as the price is lowered. The ’211 Patent claims recite
that these steps occur before the actual sale of an item being auctioned.
Further evidence that the ’211 Patent adjusts the demand curve is
provided by Patent Owner’s witness Dr. Wyld, who states that in an MSIRA
system, such as that in the ’211 Patent, the critical task of managing
aggregate demand involves determining the true interest of potential buyers
completing purchases at the clearing price and allowing enough items to
remain for sale to all winning bidders. PO Resp. 13–14 (citing Wyld Decl. 2
¶¶ 34, 40, 41). Thus, a preliminary indicator, such a customer pressing “1,”
provides statistics that inform the auction producer about how to adjust the
offering price presented to potential customers. In OIP the court discussed
“the claims’ recitation of ‘present[ing] [offers] to potential customers’ and
‘gathering . . . statistics generated during said testing about how the potential
customers responded to the offers,’” concluding that “[t]hese processes are
well-understood, routine, conventional data-gathering activities that do not
make the claims patent eligible. . . . [T]he addition of steps to test prices and
collect data based on customer reactions does not add any meaningful
limitations to the abstract idea.” OIP Techs., 788 F.3d at 1363–64 (citations
omitted). The claims of the ’211 Patent recite a patent ineligible abstract
idea, similar to the offer-based pricing claims the Federal Circuit found
ineligible in OIP.
In OIP, the court further noted that, beyond the abstract idea of offer-
based pricing, the claims merely recited well-understood, routine,
conventional activities either by requiring computer activities or routine data
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gathering steps, stating “[a]t best, the claims describe the automation of the
fundamental economic concept of offer-based price optimization through the
use of generic-computer functions.” Id. Thus, considered individually or as
an ordered combination, the claim elements in OIP did not transform the
claimed abstract idea into a patent eligible process. Id. Similarly, in the
’211 Patent, the remaining claim elements involve a conventional system
interface, e.g., providing a website or a call-in telephone number and placing
callers into a queue, routine data gathering, e.g., recording the time an
inquiry enters the queue and storing the preliminary quantity of units in a
database, and routine calculations, e.g., subtracting from the stored
preliminary quantity of available units based on the number of customers
who indicate they are prepared to make a purchase.
“To impart patent-eligibility to an otherwise unpatentable process
under the theory that the process is linked to a machine, the use of the
machine ‘must impose meaningful limits on the claim’s scope.’”
Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed Cir.
2011) (quoting in re Bilski, 545 F.3d 943, 961 (Fed. Cir. 2008)). As
discussed above, the remaining limitations of the independent claims of the
’211 Patent recite data gathering or other elements that do not impose such
meaningful limits on the claims’ scope.
OIP also demonstrates that the claimed “inventive concept” argued by
Patent Owner is simply the application of the well-known offer-based
pricing principles. Thus, even applying Patent Owner’s separate concept
analysis, the claims do not recite an inventive concept that would transform
a reverse auction into patent eligible subject matter. Therefore, applying
either Petitioner’s or Patent Owner’s approach to identifying the claimed
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abstract concept and inventive subject matter, we reach the same conclusion,
i.e., that the claimed subject matter is ineligible under 35 U.S.C. § 101.
Petitioner also argues that the claims recite ineligible subject matter
because the ’211 Patent Specification states that the producer conducting the
auction can carry out the purported inventive concept mentally and notes
that Patent Owner’s witness, Dr. Wyld, in his deposition testimony
acknowledges the inventive concept can be carried in a person’s mind.
Pet. 13–17, 23–31; Pet. Reply 6–11 (citing Ex. 1001, col. 8, ll. 24–36, 39–
41; col. 10, 16–20, ll. 38–45; col. 11, ll. 10–17; Ex. 1008, 149, 151–53, 198,
200–01, 244–47). In response to questioning by Patent Owner’s counsel,
Dr. Wyld testified that all of the claims of the ’211 Patent require a system,
as opposed to a human, to carry out at least some of the steps, and that the
steps of claim 1 cannot be performed entirely within the human mind or
using pen and paper. Ex. 1008, 198, 245–46. However, the ’211 Patent
Specification makes clear that “[t]he TV producer 24 can either
automatically [make] use of these preliminary indicators of sale (or in the
case of a confirmed purchase confirmed indicator of sale), or a human TV
producer 24 can do so manually.” Ex. 1001, col. 10, ll. 16–20. See
Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d at 1370, 1373 (“In
finding that the process in Benson was not patent-eligible the Supreme Court
appeared to endorse the view that methods which can be performed
mentally, or which are the equivalent of human mental work, are
unpatentable abstract ideas – the basic tools of scientific and technological
work that are open to all.”) (holding that “a method for verifying the validity
of a credit card transaction over the Internet” was directed to an abstract idea
or unpatentable mental process).
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Petitioner cites Cyberfone Systems LLC v. CNN Interactive Group,
Inc., 2014 WL 718153 at *2 (Fed. Cir. Feb. 26, 2014) (nonprecedential) for
the proposition that human mental work and well-established fundamental
ideas have been found to abstract concepts, not eligible for patent protection.
Pet. 26, 37 Patent Owner, in response, notes that all Cyberfone says is that if
a method can be performed by the human mind alone, the method is not
patentable. PO Resp. 56 (citing Cyberfone, 2014 U.S. App. LEXIS 3599, at
*7). Patent Owner contends that none of the 39 claims in the ’211 Patent
can be performed by the human mind alone. Id. In context, Cyberfone
reads:
Although methods that can be performed in the human mind
alone are not eligible for patent protection, Cybersource, 654
F.3d at 1373, the category of patent-ineligible abstract ideas is
not limited to methods that can be performed in the human
mind. See Bilski, 130 S. Ct. at 3230 (“[T]he prohibition against
patenting abstract ideas ‘cannot be circumvented by attempting
to limit the use of the formula to a particular technological
environment’ . . . .” (quoting Diamond v. Diehr, 450 U.S. 175,
191–92 (1981))).

Cyberfone at *8. Thus, Cyberfone makes clear that methods that cannot be
performed in the human mind alone nevertheless may be ineligible for patent
protection. In Cyberfone the court found that, like the telephone in the
claims of the ’211 Patent, “the ‘telephone’ recited in claim 1 is not a specific
machine, and adds nothing of significance to the claimed abstract idea.”
Cyberfone at *9. Patent Owner’s position is that the inventive concept in the
’211 Patent is the use of preliminary indicators to reduce the quantity of
products available before completing a sale. PO Resp. 23. As discussed
above, the ’211 Patent discloses that a human producer can perform this
process mentally and the remaining claim elements do not provide
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meaningful limitations on the scope of the claim. Thus, regardless of
whether a human producer can carry out the method in his mind alone or
requires ancillary equipment to carry out the method, claims 1–39 of the
’211 Patent do not recite patent-eligible subject matter.
Patent Owner argues that if the patent claim does not preempt in all
fields where the underlying idea would be used, the claims should be patent
eligible. PO. Resp. 35 (citing Alice, 134 S. Ct. at 2354 (quoting Bilski v.
Kappos, 561 U.S. 593, 561 (2010))). Patent Owner contends that the claims
do not preempt all methods and systems for conducting a reverse auction,
but relate only to a “single practical application,” i.e., the MSIRA type of
auction, “conducted using very specific things in a very specific way,
namely preliminary indicators used to reduce a preliminary available
quantity and reducing that quantity before a sale of a unit is completed.” PO
Resp. 61. The claims of the ’211 Patent preempt an MSIRA auctioneer from
removing a product from the available product pool when a prospective
buyer meets criteria that give the producer confidence the customer will
complete a purchase. Patent Owner argues that this approach is an
improvement over conventional MSIRA auctions in which the seller waits to
complete the sale of each item before offering another item for sale. Id. at
14–15.
As discussed above, in OIP the Federal Circuit determined that claims
drawn to automated, offer-based pricing do not recite patentable subject
matter. In Bilski, the Court found unpatentable subject matter in claims that
“attempt to patent the abstract idea of hedging risk in the energy market and
then instruct the use of well-known random analysis to help establish some
of the inputs into the equation.” Bilski, 561 U.S. at 612. In the context of
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an automated reverse auction of more than one unit of a product, claims
drawn to removing a unit from those available for purchase after the seller
becomes confident the customer will buy that unit at the offered price, or a
more favorable price, are drawn to an abstract idea that preempts setting
aside product units for customers as the auction progresses. In addition, as
Petitioner notes, in the case of an abstract idea, the absence of preemption
does not necessitate a finding of patentable subject matter. Pet. 14 (citing
Bank of Am., N.A. v. Intellectual Ventures I LLC, Case No. CBM2014-
00028, slip op. at 20 (PTAB May 18, 2015) (Paper 52).
Petitioner argues claims 2–34, which depend directly or indirectly
from claim 1 and claims 37 and 38, which depend from claim 36, do not
recite meaningful limitations that would provide patent-eligible subject
matter under 35 U.S.C. § 101. Pet. 37–41, 43–44. Patent Owner does not
direct its arguments to the dependent claims. We conclude that Petitioner
has demonstrated that dependent claims 2–34, 37, and 38 also do not recite
patent-eligible subject matter for the reasons discussed above.
In consideration of the above, we conclude that Petitioner has
demonstrated by a preponderance of the evidence that claims 1–39 of the
’211 Patent do not recite subject matter that is patent eligible under
35 U.S.C. § 101.

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MOTION TO AMEND
In its Motion to Amend, Patent Owner proposes claims 40–42, which
“require the use of a system/computer system, an allocation database, a call
database, an auction database, a call receiver, call monitoring component, an
electronic call record, and an automated message.” Mot. to Amend 12–13.
According to Patent Owner, a human cannot perform method steps like
those of proposed claims 40–42 that require the use of such components. Id.
at 13. Patent Owner repeats its arguments from the Patent Owner Response,
that the underlying idea of the ’211 Patent is a reverse auction and that, even
if this underlying idea is considered to be an abstract idea under Alice, the
inventive concept, i.e., the use of preliminary indicators to reduce the
preliminary available quantity based before the sale of a unit is completed,
transforms the idea into a patent-eligible invention. Id. Patent Owner cites
the testimony of Dr. Wyld in support of this position and notes that the ’211
Patent covers only a single practical application of a reverse auction. Id.
In opposing the Motion to Amend, Petitioner notes that Patent Owner
already has asserted that original claims 36–38 require the use of a system.
Opp. to Mot. to Amend 11. Petitioner also contends that Patent Owner has
not argued that the newly added elements provide “significantly more” to the
abstract idea of the ’211 Patent, but only that they are required in carrying
out the claimed method. Id. Thus, according to Petitioner, Patent Owner’s
proposed amendments do not address the § 101 problem of the original
claims. Id.
We addressed Patent Owner’s contentions concerning the abstract
ideas and purported inventive subject matter in our discussion of claims 1–
39. Additional elements such as a computer and ancillary conventional
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apparatus such as various databases storing information accessed by the
computer, a call monitoring component that places a call into a queue and
assigns the call to operator, an electronic call record that records the time the
call was made, and an automated message, do not impose meaningful limits
on the abstract idea of reducing the available quantity and the price during
the auction based on the indicators that provide the auction producer
confidence the customer will complete a purchase at that price (or a more
favorable price) at the close of the auction. “In order for the addition of a
machine to impose a meaningful limit on the scope of a claim, it must play a
significant part in permitting the claimed method to be performed, rather
than function solely as an obvious mechanism for permitting a solution to be
achieved more quickly, i.e., through the utilization of a computer for
performing calculations.” SiRF Techs., Inc. v. Int’l Trade Comm., 601 F.3d
1319, 1333 (Fed. Cir. 2010) (determining that a GPS receiver was a
meaningful limit on the scope of the claims because, without the recited GPS
receiver, it would be impossible to generate pseudo ranges that estimate the
distance from a GPS receiver to a plurality of GPS satellites). In contrast,
the limitations in the proposed amended claims recite elements of a general
purpose computer that facilitate conducting a reverse auction more
efficiently. Even limited to the context of an MSIRA, these added features
do not limit the scope of the claim in a meaningful way because the
reservation of units does not require a specific machine.
Patent Owner repeats its arguments that the inventive concept test is
met by the novel use of well-known customer characteristics and/or actions,
employed in this narrow setting, as preliminary indicators of purchase
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intention. Mot. to Amend 14. We also addressed this argument in our
discussion of Federal Circuit precedent in OIP in the context of claims 1–39.
Finally, Patent Owner contends that no monopoly over the use of a
reverse auction is granted by the ’211 Patent, because there are a multitude
of activities and ways of conducting a reverse auction that remain free for all
to use. Id. at 15. However, as discussed above, the claims proposed in the
Motion to Amend recite additional elements that do not change the abstract
nature of the claimed subject matter, i.e., setting aside units from a pool of
available units when the auction producer expects the buyer will complete a
sale transaction.
In consideration of the above, we conclude that the proposed claims
40–42 do not recite patent-eligible subject matter and the motion to amend is
denied.
SUMMARY
In consideration of the above, we conclude that claims 1–39 recite
subject matter that is not patent eligible under 35 U.S.C. § 101. We also
conclude that the claims proposed in Patent Owner’s Motion to Amend
recite subject matter that is not patent eligible under 35 U.S.C. § 101 and,
therefore, we deny the Motion to Amend.
ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1–39 are unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Amend is
DENIED; and
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FURTHER ORDERED that, because this is a Final Written Decision,
parties to this proceeding seeking judicial review of it must comply with the
notice and service requirements of 37 C.F.R. § 90.2.

PETITIONER
Jeffrey S. Ginsberg
Lead Counsel for Petitioner
Kenyon & Kenyon LLP
One Broadway
New York, NY 10004
Email: jginsberg@kenyon.com
Email: ptab@kenyon.com

Michael S. Turner
Backup Counsel for Petitioner
Email: mturner@kenyon.com

PATENT OWNER
Correspondence Address of Record for U.S. Patent No. 8,370,211 Barnes
& Thornburg LLP
P.O. Box 2786
Chicago, Illinois 60690-2786

Attorneys for Patent Owner America’s Collectibles Network, Inc.
Neil C. Jones
Nelson Mullins Riley & Scarborough, LLP
104 South Main Street, Suite 900
Greenville, South Carolina 29601

CBM2014-0119
Patent 8,370,211 B2

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