PTAB

CBM2013-00055

GSI Commerce Solutions Inc v. Clear With Computers LLC

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Petition
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1. Case Identification

2. Patent Overview

  • Title: Inventory Sales System and Method
  • Brief Description: The ’015 patent relates to a computer-implemented method for selling customizable products by only presenting configuration options that correspond to items currently available in a seller's inventory. The system deactivates or removes unavailable options to prevent a customer from ordering a product configuration that cannot be fulfilled from existing stock.

3. Grounds for Unpatentability

Ground 1: Patent Ineligibility under §101 - Claims 1-16 are unpatentable under 35 U.S.C. §101

  • Core Argument for this Ground: Petitioner asserted that all challenged claims were directed to the patent-ineligible abstract idea of managing a sales process based on available inventory. Petitioner argued this is a fundamental, age-old economic practice that could be performed manually with pen and paper by a salesperson checking a catalog against physical stock. The claims merely added conventional computer components, such as a generic "configuration engine" and user interface, without reciting a novel technological feature or solving a technical problem. Petitioner contended that implementing the abstract idea on a general-purpose computer was insufficient to confer patentability and that the claims, lacking any meaningful limitations beyond the abstract idea itself, improperly preempted all practical applications of the concept. The petition further argued the claims failed the machine-or-transformation, abstract idea, mental process, and point-of-novelty tests for patentable subject matter.

Ground 2: Obviousness over Geller - Claims 1-16 are obvious over Geller

  • Prior Art Relied Upon: Geller (Patent 5,844,554).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Geller disclosed all elements of the challenged claims. Geller taught a product configurator system with a "configuration software" module (a configuration engine) that runs on a salesperson's computer. This system uses data from external tables, which can store inventory, pricing, and engineering data, to apply rules and constraints during product configuration. Petitioner asserted that Geller explicitly described constraining the options presented to a user based on this external data, including disabling user interface controls for unavailable or incompatible selections. This directly mapped to the ’015 patent’s core concept of presenting only inventory-based options.
    • Motivation to Combine (for §103 grounds): As a single-reference ground, the argument was that Geller itself provided the blueprint. A person of ordinary skill in the art (POSITA), upon reviewing Geller’s system for creating a product configurator that uses external data tables for constraints, would have found it obvious to use inventory data in those tables to constrain the available product options, as this was one of the explicit data types Geller suggested using.
    • Expectation of Success: A POSITA would have a high expectation of success, as Geller’s system was expressly designed to use various business data types, including inventory, to dynamically modify the user interface and enforce configuration rules.

Ground 3: Obviousness over Danish in view of Joseph - Claims 1-16 are obvious over Danish in view of Joseph

  • Prior Art Relied Upon: Danish (Patent 5,715,444) and Joseph (Patent 5,878,401).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Danish disclosed a guided parametric search system for an electronic catalog. Danish’s system allowed a user to select product features, and the system would dynamically revise the available options on-screen, disabling or hiding alternatives that were no longer compatible based on the user's selections. However, Danish's system was based on a static product catalog. Joseph was cited to supply the missing link to real-time inventory, as it taught a retail computer system that accesses a database to determine whether a specific item (e.g., a sneaker in a selected style and size) is currently in the store's inventory.
    • Motivation to Combine: A POSITA would combine Danish’s guided configuration interface with Joseph's real-time inventory check to create a more commercially effective system. The motivation was to solve a known problem: avoiding the customer frustration that occurs when a user configures a desired product using an electronic catalog (per Danish) only to discover later that it is out of stock. Joseph provided the known solution of querying an inventory database.
    • Expectation of Success: The combination would have been straightforward and predictable. Both references involved computerized sales systems and database lookups, making the integration of an inventory check into an electronic product configurator a simple and well-understood design choice.

4. Key Claim Construction Positions

  • "Configuration engine": Petitioner proposed this term be construed as "any combination of hardware or software for presenting selectable product options." This broad construction, allegedly supported by the specification's vague and high-level descriptions, was critical to Petitioner's argument that the term merely recited a conventional software function present in the prior art.
  • "Engineering Relationship": Petitioner proposed construing this term as "a compatibility or incompatibility relationship between two or more product options." This interpretation allowed Petitioner to argue that prior art systems that handled basic product incompatibilities (e.g., a specific engine requires a specific transmission) met this claim limitation.

5. Relief Requested

  • Petitioner requested institution of post-grant review and cancellation of claims 1-16 of the ’015 patent as unpatentable under 35 U.S.C. §§ 101 and 103.