Trials@uspto.gov Paper No. 10 Paper 17
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`571-272-7822
`Date Entered: January 6, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`THE JEWELRY CHANNEL, INC. USA d/b/a Liquidation Channel,
`Petitioner,
`
`v.
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`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.
`
`
`
`
`DECISION DENYING REQUEST FOR REHEARING
`37C.F.R. § 42.71(d)
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`
`

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`CBM2014-00199
`Patent 8,370,211 B2
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`On October 20, 2014, we entered a decision to institute a trial in this covered
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`business method patent review of U.S. Patent No. 8,370,211 B2 (“the ’211
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`Patent”), notwithstanding an underlying dispute concerning the ownership of the
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`’211 Patent. Paper 10 (“Dec. to Inst.”). In reaching our Decision to Institute, we
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`observed that American Collectibles Network, Inc. (“Patent Owner ACN”) is the
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`patent owner of record in a nunc pro tunc assignment dated June 27, 2012,
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`Ex. 2001, and recorded in the Office at Reel/Frame No. 030588/0867 on June 11,
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`2013. We also observed that the petition before us was brought against the ’211
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`Patent claims by The Jewelry Channel, Inc. USA d/b/a Liquidation Channel
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`(“Petitioner”), who was sued for patent infringement by the recorded patent owner,
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`ACN, in America’s Collectibles Network, Inc. v. The Jewelry Channel, Inc. USA
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`d/b/a Liquidation Channel, No. 3:13cv334 (E.D. Tenn.) (“TJC litigation”). Dec. to
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`Inst. 4.
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`The underlying ownership dispute emerged when Patent Owner ACN sued
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`Genuine Gemstone Co. Ltd. (“Gemstone”) in America’s Collectibles Network, Inc.
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`v. The Genuine Gemstone Co. Ltd., No. 3:13cv335 (E.D. Tenn.) (“GG litigation”).
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`Gemstone, who is not a party to this proceeding, moved for summary judgment in
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`the GG litigation on the basis that Gemstone, not Patent Owner ACN, is the actual
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`owner of the ’211 Patent. At the time we entered our Decision to Institute, Patent
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`Owner ACN had opposed efforts by Petitioner and Gemstone to stay the district
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`court proceedings concerning infringement and validity pending the court’s
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`resolution of the ownership of the ’211 Patent. Dec. to Inst. 3–4.
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`Patent Owner ACN requests rehearing of our Decision to Institute. Paper 12
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`(“Req. Reh’g.). Patent Owner ACN’s Request for Rehearing argues the
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`circumstances that led to our Decision to Institute no longer exist because the GG
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`litigation is stayed pending resolution of the ownership dispute by the district
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`2
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`CBM2014-00199
`Patent 8,370,211 B2
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`court. Req. Reh’ 3–4. During a telephone conference on Nov. 20, 2014, we
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`authorized Petitioner to file an opposition to the Request for Rehearing. We also
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`discussed the fact that the district court had stayed the TJC litigation while this
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`covered business method patent review was pending, but had not stayed the TJC
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`case until resolution of the ownership of the ’211 patent. Thus, a reversal of our
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`decision to institute could result in the resumption of proceedings by Patent Owner
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`ACN against Petitioner in the district court.
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`On November 24, 2014, Patent Owner ACN filed a First Supplement Notice,
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`Paper 13, advising us that it had moved to enlarge the stay in the TJC litigation to
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`include resolution of the ownership question. On December 1, 2014, Patent Owner
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`filed a Second Supplemental Notice stating that the district court had granted the
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`motion to enlarge the stay in the TJC litigation. As a result, termination of this
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`covered business method patent review would not cause resumption of the TJC
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`litigation unless the district court determined that ACN is the actual owner of the
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`’211 Patent.
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`Also on November 24, 2014, Petitioner filed its Opposition to the Request
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`for Rehearing. Paper 14 (“Opp. to Req. Reh’g.”). Petitioner argues it would be
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`prejudiced by terminating the present covered business method review because
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`resolution of the ownership dispute and related appeals could take years, during
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`which time the lawsuit would continue to hang over Petitioner. Opp. to Req.
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`Reh’g. 4. Petitioner agues further prejudice would occur because it would be
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`required to pay another filing fee to institute another covered business method
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`patent review after the ownership of the ’211 Patent is resolved, and because the
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`patent owner in that proceeding would be afforded an opportunity to file another
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`preliminary response. Id. Petitioner also argues that Gemstone’s interests are
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`protected by an agreement under which Petitioner will move to terminate this
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`3
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`CBM2014-00199
`Patent 8,370,211 B2
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`proceeding in return for a license or covenant not to sue, should the district court
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`determine that Gemstone is the actual owner. Id. at 2–3, Ex. 1006. The agreement
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`between Petitioner and Gemstone does not bind the Board, however, who may
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`proceed to a final written decision, even if no Petitioner remains. See 35 U.S.C.
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`§ 327(a); see also Interthinx, Inc. v. Corelogic Solutions, LLC, Case CBM2012-
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`00007 (PTAB Nov. 12, 2013) (Papers 47, 58) (terminating involvement of sole
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`petitioner, but not terminating covered business method review and proceeding to
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`final written decision). The agreement between Petitioner and Gemstone also does
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`not specify what happens if we enter a final written decision before the ownership
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`dispute ultimately is resolved.
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`A party seeking rehearing has the burden of specifically identifying all
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`matters the party believes the Board misapprehended or overlooked and the place
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`where each matter was previously addressed in a motion, opposition or reply.
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`37 C.F.R. 42.71(d). Patent Owner has not identified any matter which the Board
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`overlooked or misapprehended. Instead, Patent Owner contends that its belated
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`consent to resolving the underlying ownership dispute in the district court before
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`addressing substantive infringement and validity issues creates changed
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`circumstances under which we should reverse our Decision to Institute.
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`Req. Reh’g. 2–3. Neither Patent Owner ACN’s consent in the district court, nor
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`the agreement reached between Petitioner and Gemstone, changes the
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`circumstances of this covered business method patent review.
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`The ownership dispute is outside our jurisdiction and eventually will be
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`resolved in the district and appellate courts. However, the dispute over ownership
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`of the ’211 Patent is a collateral matter that does not affect our jurisdiction over
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`this proceeding. Our jurisdiction stems from the fact that Patent Owner ACN is the
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`record owner of the ’211 Patent and has sued Petitioner for infringement. AIA §
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`4
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`CBM2014-00199
`Patent 8,370,211 B2
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`18 (a)(1)(B). Having been sued for infringement by the record owner of the ’211
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`Patent, Petitioner has the right to challenge the patentability of the claims. Id.
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`Petitioner’s challenges to the patentability of the claims could not be answered by
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`any party other than the record owner of the ’211 Patent.
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`If ACN is determined to be the actual owner, the proceeding will continue in
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`due course. We recognize that circumstances may result in Gemstone having an
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`interest in the outcome of this proceeding. However, at this time, Gemstone’s
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`interest is speculative. Our rules do not provide for Gemstone’s intervention in
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`this proceeding, nor has Gemstone sought to intervene. However, our rules
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`provide that the Board may determine a proper course of conduct in a proceeding
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`for any situation not specifically covered by the rules and may enter any non-final
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`orders to administer the proceeding. See 37 C.F.R. § 42.5(a). Thus, if Gemstone is
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`determined to be the actual owner of the ’211 Patent while this proceeding is still
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`underway, we may consider a motion by Gemstone to substitute as Patent Owner.
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`If a final written decision has been entered in this proceeding and the time for
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`appeal has expired before a final determination that Gemstone is the actual owner,
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`our jurisdiction will have ended and Gemstone may need to pursue other
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`alternatives.
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`Our goal is to apply our rules to secure the just, speedy and inexpensive
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`resolution of every proceeding. See 37 C.F.R. §42.1(b). Petitioner has been
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`accused of infringement by the record patent owner, ACN, and has met all the
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`requirements for us to institute a covered business method patent review of the
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`’211 Patent. In the district court Patent Owner ACN asserts that it is both the
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`record owner and the actual owner of the ’211 Patent. We are not persuaded by
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`Patent Owner ACN’s effort to terminate this proceeding based on its convenient
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`speculation that Gemstone, and not Patent Owner ACN, could be the actual owner
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`5
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`CBM2014-00199
`Patent 8,370,211 B2
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`of the ’211 Patent. The prejudice to Petitioner of not proceeding at this time
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`outweighs the speculative interests of Gemstone.
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`In consideration of the above, Patent Owner ACN’s request for rehearing is
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`DENIED.
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`6
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`CBM2014-00199
`Patent 8,370,211 B2
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`PETITIONER
`
`Jeffrey Ginsberg
`Michael Turner
`KENYON & KENYON LLP
`jginsberg@kenyon.com
`mturner@kenyon.com
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`PATENT OWNER
`
`Neil C. Jones
`NELSON MULLINS RILEY & SCARBOROUGH, LLP
`neil.jones@nelsonmullins.com
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`7
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