Groupon, Inc.v.Blue Calypso, Llc.

Patent Trial and Appeal Board

Dec 17, 2014

12803635 (P.T.A.B. Dec. 17, 2014)

Trials@uspto.gov Paper 46
571-272-7822 Entered: December 17, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

GROUPON, INC.,
Petitioner,

v.

BLUE CALYPSO, LLC,
Patent Owner.
____________________

Case CBM2013-00046
Patent 8,438,055 B2
___________________

Before JONI Y. CHANG, MICHAEL W. KIM, and
BARBARA A. BENOIT, Administrative Patent Judges.

KIM, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
I. INTRODUCTION
Groupon, Inc. (“Petitioner”) filed a Petition on August 16, 2013,
requesting a covered business method patent review of U.S. Patent
No. 8,438,055 B2 (“the ’055 patent”) pursuant to § 18(a) of the Leahy-Smith
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Patent 8,438,055 B2

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America Invents Act (“AIA”).1 Paper 1 (“Pet.”). Blue Calypso, LLC
(“Patent Owner”) filed a Preliminary Response. Paper 8 (“Prelim. Resp.”).
Taking into account Patent Owner’s Preliminary Response and on the record
at the time, the Board determined that it was more likely than not that the
challenged claims are unpatentable. Pursuant to 35 U.S.C. § 324, the Board
instituted this trial on January 17, 2014, as to claims 1, 4–11, and 14 of the
’055 patent on the following grounds of unpatentability.
Reference(s) Basis Claims Challenged
The Ratsimor paper2 § 102(b) 1, 4–7, and 14
Paul3 § 102(b) 1, 4–6, 10, and 14
The Ratsimor paper and Paul § 103(a) 1, 4–7, 10, and 14
The Ratsimor paper, Paul,
and Atazky4
§ 103(a) 8 and 11
The Ratsimor paper,
McLean5, and Atazky
§ 103(a) 1, 4–9, 11, and 14
Paper 9 (“Dec.”).
Subsequent to institution, Patent Owner filed a Patent Owner
Response (Paper 18; “PO Resp.”), and Petitioner filed a Reply (Paper 24;

1 Pub. L. No. 112-29, 125 Stat. 284, 329 (2011).
2 Ratsimor, Olga, et al., Technical Report TR-CS-03-27 “Intelligent Ad Hoc
Marketing Within Hotspot Networks,” published Nov. 2003 (Ex. 1006) (“the
Ratsimor paper”).
3 U.S. Patent Application Publication 2002/0169835 A1 (Ex. 1007) (“Paul”).
4 U.S. Patent Application Publication 2007/0121843 A1 (Ex. 1010)
(“Atazky”).
5 U.S. Patent Application Publication 2007/0207780 A1 (Ex. 1009)
(“McLean”).
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Patent 8,438,055 B2

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“Reply”). Patent Owner also filed a Motion to Exclude (Paper 33; “Mot.”),
to which Petitioner filed an Opposition (Paper 38; “Pet. Opp.”), and Patent
Owner filed a Reply (Paper 40; “PO Reply”).
An oral hearing was held on September 5, 2014.6
The Board has jurisdiction under 35 U.S.C. § 6(c). This decision is a
final written decision under 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73.
Petitioner has proven, by a preponderance of the evidence, that claims
1, 4–6, 10, and 14 of the ’055 patent are unpatentable.
Petitioner has not proven, by a preponderance of the evidence, that
claims 7–9 and 11 of the ’055 patent are unpatentable.
Patent Owner’s Motion to Exclude is dismissed.
A. Related Matters
In compliance with 37 C.F.R. § 42.302(a), Petitioner certifies that it
has been sued for infringement of the ’055 patent. Pet. 8. The identified
related court cases are before the U.S. District Court for the Eastern District
of Texas. Pet. 8; Paper 26, 2.
Petitioner also has requested review of the following patents related to
the ’055 patent—U.S. Patent 8,155,679 B2 (“the ’679 patent”)
(Case CBM2013-00033), U.S. Patent 8,457,670 B2 (“the ’670 patent”)
(Case CBM2013-00034), U.S. Patent 7,664,516 B2 (“the ’516 patent”)
(Case CBM2013-00035), and U.S. Patent 8,452,646 B2 (“the ’646 patent”)
(Case CBM2013-00044). The ’055 patent, ’679 patent, ’670 patent, and

6 A transcript of the oral hearing is included in the record as Paper 46
(“Transcript”). This proceeding, as well as CBM2013-00033, CBM2013-
00034, CBM2013-00035, and CBM2013-00044, involve the same parties
and similar issues. The oral arguments for the five reviews were merged and
conducted at the same time.
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Patent 8,438,055 B2

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communication device. Ex. 1001, 1:58–62. According to the ’055 patent,
the intermediary functions, among other things, to identify which
advertisement to send by virtue of decoding a serialized URL link and
associating that link with a stored advertisement. Ex. 1001, 1:62–65.
The ’055 patent discloses a “bi-directional” process between a
subscriber and an advertiser. Ex. 1001, 1:66–67. The bi-directional process
allows subscribers to choose or “endorse” certain advertisers with which
they wish to associate. Ex. 1001, 1:67–2:3. The bi-directional process also
allows advertisers to choose which subscribers to use by virtue of a review
of related demographic information of each subscriber and pre-qualification
of acceptable candidates. Ex. 1001, 2:3–6. Pre-qualification of one
subscriber allows the advertiser to target advertisements to a related group of
potential customers because a qualified subscriber’s contacts presumably
share some or all of the same demographic features. Ex. 1001, 2:9–13.
The ’055 patent discloses enabling advertisers to reach targeted
audiences by contact with mobile communications devices. Ex. 1001, 2:21–
22. Specifically, qualified subscribers are encouraged to send
communications to their contacts, and the contacts who receive the
communication are encouraged to accept the communication and related
advertisements, because the communication is identified as being initiated
by a known contact. Ex. 1001, 2:23–25. Subscribers and recipients are
provided incentives to participate, such as cash incentives provided on debit
cards or cash distributions. Ex. 1001, 2:27–29.
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C. Illustrative Claim
Petitioner challenges claims 1, 4–11, and 14 of the ’055 patent. Claim
1, the only independent claim, is illustrative of the claims at issue and reads
as follows:
1. In a system comprising a network, a source
communication device, a first destination communication
device and an intermediary connected to the network, a method
for providing advertising content to a first recipient associated
with the first destination communication device and for
incentivizing a subscriber associated with the source
communication device comprising:
receiving a first profile, at the intermediary, including a
set of demographic requirements related to at least one
advertiser of a group of advertisers;
receiving a second profile, at the intermediary, including
a set of demographic data related to the subscriber;
deriving a match condition, by the intermediary, between
the first profile and the second profile;
determining, at the intermediary, if the subscriber is a
first qualified subscriber based on the match condition;
conditioning, at the intermediary, a set of endorsement
opportunities on the match condition;
transmitting a[n] incentive program to the first qualified
subscriber, at the source communication device, for each
endorsement opportunity of the set of endorsement
opportunities;
communicating the set of endorsement opportunities to
the qualified subscriber at the source communication device;
receiving, at the intermediary, a selection of at least one
endorsement opportunity from the set of endorsement
opportunities from the qualified subscriber;
transmitting, from the intermediary, a first endorsement
tag related to the at least one advertiser of the group of
advertisers and linked with the advertising content;
transmitting a first content communication between the
first source communication device and the first destination
communication device;
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transmitting the first endorsement tag from the source
communication device to the destination communication
device;
receiving, at the intermediary, a signal from the
destination communication device, through execution of the
first endorsement tag, to transmit the advertising content;
transmitting the advertising content to the destination
communication device; and,
incentivizing the first qualified subscriber according to
the incentive program.
II. ANALYSIS
We turn now to Petitioner’s asserted grounds of unpatentability and
Patent Owner’s arguments in its Response and supporting evidence to
determine the patentability of the challenged claims.
A. Claim Construction
As a step in our analysis for determining whether to institute a review,
we determine the meaning of the claims for purposes of this decision. In a
covered business method patent review, a claim in an unexpired patent shall
be given its broadest reasonable construction in light of the specification of
the patent in which it appears. 37 C.F.R. § 42.300(b). Under the broadest
reasonable construction standard, claim terms are given their ordinary and
customary meaning, as would be understood by one of ordinary skill in the
art in the context of the entire disclosure. In re Translogic Tech., Inc., 504
F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term
must be set forth in the specification with reasonable clarity, deliberateness,
and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We must
be careful not to read a particular embodiment appearing in the written
description into the claim if the claim language is broader than the
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embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). We
construe the terms below in accordance with these principles.
“incentive” and “incentive program”
Independent claim 1 recites “incentivizing the first qualified
subscriber according to the incentive program.” Petitioner contends that the
express definitions of terms set forth in the “Definitions” section of the ’055
patent are the proper constructions of those terms. Pet. 10. We agree.
Accordingly, we accept those definitions as proper constructions of
“incentive” and “incentive program.”
Furthermore, through their assertions concerning standing, Petitioner
asserts that “incentive” and “incentive program” are financial in nature. We
agree. Pet. 6–7. The ’055 patent repeatedly, and almost exclusively,
discloses “incentive” and “incentive program” in a financial context. For
example, the ’055 patent discloses that cash incentives are provided on debit
cards or as cash distributions. Ex. 1001, 2:28–29. In another example,
incentives are disclosed as “payments,” “payouts,” and “distributions.” Ex.
1001, 2:51, 6:34–45, 7:31–34, 8:3–6. In a further example, incentive
programs are disclosed as having financial budgets and accounts that are
debited until depletion. Ex. 1001, 6:41–45, 7:18–20, 8:50–56. Accordingly,
we construe “incentive” and “incentive program” as being financial in
nature.
B. Standing
Section 18 of the AIA provides for the creation of a transitional
program for reviewing covered business method patents. Section 18 limits
reviews to persons or their privies that have been sued or charged with
infringement of a “covered business method patent,” which does not include
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patents for “technological inventions.” AIA §§ 18(a)(1)(B), 18(d)(1); see
37 C.F.R. § 42.302. The parties disagree as to whether Petitioner has
standing to file a petition for a covered business method patent review of the
’055 patent.
1. Financial Product or Service
Petitioner contends that the ’055 patent is a covered business method
patent, because the claimed subject matter is directed to providing
incentives, which are financial in nature. Pet. 6–7. Our inquiry is controlled
by whether the patent “claims a method or corresponding apparatus for
performing data processing or other operations used in the practice,
administration, or management of a financial product or service.” 37 C.F.R.
§ 42.301(a) (definition of a covered business method patent). To that end,
independent claim 1 recites “incentivizing the first qualified subscriber
according to the incentive program.” As set forth above, we construe
“incentive” and “incentive program” as being financial in nature.
Accordingly, we agree with Petitioner that the subject matter of independent
claim 1 is financial in nature.
2. Exclusion for Technological Inventions
The definition of “covered business method patent” in section 18 of
the AIA expressly excludes patents for “technological inventions.” AIA
§ 18(d)(1). To determine whether a patent is for a technological invention,
we consider “whether the claimed subject matter as a whole recites a
technological feature that is novel and unobvious over the prior art; and
solves a technical problem using a technical solution.” 37 C.F.R.
§ 42.301(b). The following claim drafting techniques, for example, typically
do not render a patent a “technological invention”:
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(a) Mere recitation of known technologies, such as
computer hardware, communication or computer networks,
software, memory, computer-readable storage medium,
scanners, display devices or databases, or specialized machines,
such as an ATM or point of sale device.
(b) Reciting the use of known prior art technology to
accomplish a process or method, even if that process or method
is novel and non-obvious.
(c) Combining prior art structures to achieve the normal,
expected, or predictable result of that combination.
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763–64
(Aug. 14, 2012).
Petitioner contends that the ’055 patent is not directed to a
technological invention, because independent claim 1 recites known
components and is directed toward a business problem, not a technical
solution. Pet. 7–8. We agree. Accordingly, we determine that independent
claim 1 is not directed toward a technological invention.
C. Whether the Ratsimor Paper is a Printed
Publication under 35 U.S.C. § 102(b)
Petitioner asserts that claims 1, 4–7, and 14 are unpatentable under 35
U.S.C. § 102(b) as anticipated by the Ratsimor paper; claims 1, 4–7, 10, and
14 are unpatentable under 35 U.S.C. § 103(a) as obvious over the Ratsimor
paper and Paul; claims 8 and 11 are unpatentable under 35 U.S.C. § 103(a)
as obvious over the Ratsimor paper, Paul, and Atazky; and claims 1, 4–9, 11,
and 14 are unpatentable under 35 U.S.C. § 103(a) as obvious over the
Ratsimor paper, McLean, and Atazky. Pet. 15–27, 40–74. In its Petition,
Petitioner asserts the Ratsimor paper is prior art because it is a technical
report published by the Department of Computer Science and Electrical
Engineering (“the Department”) of the University of Maryland, Baltimore
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County in November 2003, more than one year prior to the earliest priority
date claimed by the ’055 patent. Pet. 2, 15; Ex. 1008 ¶¶ 2, 11; see also
Ex. 1001, 1:8–10 (claiming priority to a provisional application filed
December 27, 2004).
To substantiate its position that the Ratsimor paper is a printed
publication, Petitioner relies on a “publications” list of papers authored by
Dr. Olga Ratsimor (pages i–ii) included in Exhibit 1006, along with the
Ratsimor paper itself (pages 1–14), and a page that appears to be a cover
page identifying the Ratsimor paper as “Technical Report TR-CS-03-27”
(page iii). Ex. 1006.
Petitioner also relies on the testimony of its Declarant, Anupam Joshi,
Ph.D. (one of the authors of the Ratsimor paper), that the Ratsimor paper
was a technical report of the Department that was “published and publicly
available around November 2003,” and also was “publicly available for
viewing and downloading” from the Department’s website. Ex. 1008 ¶ 2.
Petitioner also explains the “TR-CS-03-27” designation of the technical
report on the cover page “means that this Report was the 27th report issued
in 2003 by” the Department. Ex. 1008 ¶¶ 2, 11.
Patent Owner counters that Petitioner has failed to prove the Ratsimor
paper is a printed publication under 35 U.S.C. § 102(b) and, therefore,
Petitioner has not established that Ratsimor is prior art to the ’055 patent.
PO Resp. 6–7, 14–23. Patent Owner contends the Ratsimor paper is an
unindexed, internal departmental technical report that was not accessible to
those of ordinary skill in the art more than one year prior to the date of the
application for patent. PO Resp. 17–18.
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Having reviewed the parties’ arguments and supporting evidence, we
do not find sufficient evidence that the Ratsimor paper was accessible
publicly and, therefore, we conclude that Petitioner has failed to show that
the Ratsimor paper is a printed publication under 35 U.S.C. § 102(b).
Section 102 states: “A person shall be entitled to a patent unless . . . (b) the
invention was . . . described in a printed publication . . . more than one year
prior to the date of the application for patent . . . .” 35 U.S.C. § 102(b)
(2011). “The statutory phrase ‘printed publication’ has been interpreted to
give effect to ongoing advances in the technologies of data storage, retrieval,
and dissemination.” In re Hall, 781 F.2d 897, 898 (Fed. Cir. 1986). As
such, a printed publication under 35 U.S.C. § 102(b) may be an electronic
publication, such as the Ratsimor paper is purported to be. See In re Wyer,
655 F.2d 221, 226 (CCPA 1981) (holding that an electronic publication is
considered to be a “printed publication” “upon a satisfactory showing that
such document has been disseminated or otherwise made available to the
extent that persons interested and ordinarily skilled in the subject matter or
art, exercising reasonable diligence, can locate it and recognize and
comprehend therefrom the essentials of the claimed invention without need
of further research or experimentation”).
The determination of whether a particular reference qualifies as a
prior art printed publication “involves a case-by-case inquiry into the facts
and circumstances surrounding the reference’s disclosure to members of the
public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key
inquiry is whether the reference was made “sufficiently accessible to the
public interested in the art” before the critical date. In re Cronyn, 890 F.2d
1158, 1160 (Fed. Cir. 1989). “A given reference is ‘publicly accessible’
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upon a satisfactory showing that such document has been disseminated or
otherwise made available to the extent that persons interested and ordinarily
skilled in the subject matter or art exercising reasonable diligence, can locate
it . . . .” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed.
Cir. 2006). Indexing is not “a necessary condition for a reference to be
publicly accessible,” but is among many factors that may bear on public
accessibility. In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009).
1. Whether the Ratsimor Paper Was Publicly
Accessible in November 2003
Although Petitioner does provide some evidence to support its
position, after considering all of the evidence regarding the facts and the
circumstances surrounding the public accessibility of the Ratsimor paper, in
view of the relevant case law, we determine that Petitioner has not met its
burden of showing that the Ratsimor paper was publicly accessible in
November 2003.
We begin our analysis with Petitioner’s supporting evidence, and
specifically with Dr. Joshi’s testimony, which supports Petitioner’s
contention that the Ratsimor paper was a technical report of the Department
posted on the Department’s webserver and was accessible to the public for
viewing and downloading in November 2003. As corroborating evidence,
Petitioner presents additionally the publications list of Dr. Ratsimor, which
includes the Ratsimor paper designated as a “Technical Report” and
identifies a November 2003 date with it. Ex. 1006, i. The publications list
also includes a uniform resource locator
(http://www.csee.umbc.edu/~oratsi2/publications). Ex. 1006, i. Petitioner
contends that Dr. Ratsimor’s publications list “includes a link to download”
the Ratsimor paper. Reply 4.
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According to Petitioner, the inclusion of the Ratsimor paper in
Dr. Ratsimor’s publications list supports Petitioner’s contention that
Dr. Ratsimor viewed the Ratsimor paper as a publication and associated a
November 2003 date with the paper. Because, as Dr. Joshi testifies, the
paper was “publicly available for viewing and downloading” from the
Department’s website, Petitioner asserts that the inclusion of the Ratsimor
paper in Dr. Ratsimor’s list of publications on the Department’s website
evinces an intent to make the Ratsimor paper public and further is an attempt
by Dr. Ratsimor to disseminate the reference. Cf. In re Wyer, 655 F.2d at
227 (factors supporting public accessibility include an intent to publicize and
disseminating activities). We agree that Dr. Ratsimor’s subjective view of
the Ratsimor paper, her intent to publicize the Ratsimor paper, and her
dissemination activities weigh in favor of finding the Ratsimor paper was
publicly accessible. These findings, however, are not dispositive, and,
indeed, are insufficient to support a legal determination that the Ratsimor
paper is a printed publication.
As an initial matter, we note that there are gaps in Petitioner’s
proffered evidence—foremost is Dr. Joshi’s lack of indication that the
Ratsimor paper was downloaded or otherwise disseminated, or how persons
interested and ordinarily skilled in the subject matter or art, exercising
reasonable diligence, could locate the Ratsimor paper on the Departmental
website or otherwise locate an issued Technical Report in November 2003.
Turning to the reference itself, the Ratsimor paper is a fourteen page paper,
which does not provide a date or indicia of dissemination, such as the name
of a journal. Ex. 1006, 1 (page 1 of the Ratsimor paper shows the title of the
paper, author names and internet addresses, the Department’s address, an
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abstract, keywords, and the first section of text). Nor does the cover page
provide a date or indicia of dissemination of the Ratsimor paper, other than
it being a technical report. Ex. 1006, iii (showing “Technical Report
TR-CS-03-27,” the title of the paper, author names and internet addresses,
and the Department’s address).
The aforementioned gaps in evidence are important, because even
when we assume that the Ratsimor paper was available on the Department’s
website and was included in a list of publications identified by the author’s
name, the facts are similar to those involving the theses placed in university
libraries in In re Bayer, 568 F.2d 1357, 1361–62 (CCPA 1978) and In re
Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989). The Court held that an
unshelved and uncatalogued graduate thesis placed in a university library
and known only to three faculty members was not sufficient to support a
finding that it was publicly accessible. Bayer, 568 F.2d at 1361–62. In
Bayer, as the Court explains, the student thesis was not a printed publication
under 35 U.S.C. § 102(b), because the “thesis could have been located in the
university library only by one having been informed of its existence by the
faculty [members], . . . the probability of public knowledge of the contents
of the [thesis] . . . was virtually nil.” Bayer, 568 F.2d at 1361 (citation
omitted).
Perhaps even closer to our current fact pattern is Cronyn, in which
three student theses were determined by the Court not to be accessible to the
public because “they had not been either cataloged or indexed” in
relationship to the subject matter of the theses. Cronyn, 890 F.2d at 1161.
Specifically, even if we were to determine that the current fact pattern
supported a finding of indexing by author, the Federal Circuit held in
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Cronyn that indexing based on author’s name was not sufficient to make the
theses publicly accessible, even when the title of the theses was listed along
with the author’s name. Id.
The Ratsimor paper also is similar to the paper that was placed “on an
open FTP server and might have been available to anyone with FTP know-
how and knowledge of [a particular] subdirectory,” containing information
about a particular project in SRI Int’l, Inc. v. Internet Security Sys., Inc., 511
F.3d 1186, 1194–97 (Fed. Cir. 2008). In SRI, the Court disagreed that an
interested person of ordinary skill in the art would know, based on
distribution of the existence of the FTP server to interested persons, that the
“FTP server contained information on the [particular] project and therefore
would navigate through the folders to find” the paper at issue. SRI, 511 F.3d
at 1195. Although the paper on the FTP server was available to anyone who
managed to find it, the “paper was not publicized or placed in front of an
interested public.” SRI, 511 F.3d at 1197. Thus, the Court concluded the
paper on the FTP server was “analogous to placing posters at an
unpublicized conference with no attendees” and, therefore, was not publicly
accessible. Id.
In the instant case, like the paper placed on an FTP server that was
accessible to knowledgeable persons, the Ratsimor paper was only
“available for viewing and downloading” (Ex. 1008 ¶ 2) to members of the
public who happened to know that the Ratsimor paper was there. Thus,
comparing the totality of the current facts to the above cases, we determine
that Petitioner has not met its burden of showing that the Ratsimor paper was
publicly accessible.
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In response, Petitioner contends that an interested and ordinarily
skilled artisan aware of an October 2003 article by Dr. Ratsimor, which the
parties do not dispute was publicly available, would expect additional
written materials to be generated and available from the Department’s
website. Reply 3–4 (citing Ex. 1038). According to the Petitioner, an
interested and ordinarily skilled artisan, having such knowledge of the
October 2003 article, then would be led to Dr. Ratsimor’s publications list
(Ex. 1006, i), which identifies the Ratsimor paper and “includes a link to
download Ratsimor.” Reply 4. Thus, according to Petitioner, an interested
and ordinarily skilled artisan would be able to follow the October 2003
article as a roadmap to the Ratsimor paper, in the same way that an article in
Cornell University v. Hewlett-Packard Co., No. 01-cv-1974, 2008 U.S. Dist.
LEXIS 39343, at *24-25 (N.D.N.Y. May 14, 2008), pointed the way to an
unpublished thesis that was not indexed by subject or title. In that district
court case, the article used as a roadmap was published in a seminal
publication in the field of electrical engineering and included an express
reference to the unpublished thesis, which was deemed by the Court to be a
printed publication under 35 U.S.C. § 102(b). Id. at *11 (“After weighing
all the circumstances of accessibility, this court views as vitally important
the citation of [the unpublished thesis] in the article [published in a seminal
publication].”). The article served to guide those skilled in the art to the
thesis because “the article cites [to] the . . . thesis in such a way as to make it
accessible to any reader interested in [the] subject matter.” Id. at *12.
Unlike the roadmap article in Cornell, however, the October 2003
article by Dr. Ratsimor does not include an explicit reference to the
November 2003 Ratsimor paper asserted in this proceeding. Moreover,
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although the October 2003 article may have pointed an interested researcher
to the Departmental webserver, the October 2003 article does not point an
interested researcher expressly to the Ratsimor paper on the Departmental
webserver. And as noted previously, insufficient evidence has been
presented to establish the Department’s webserver contained an index or
catalog, or any other tools for finding the Ratsimor paper based on the
subject matter of the paper.
Thus, after considering the totality of the indicia of public
accessibility, the evidence on this record places the Ratsimor paper on the
non-accessible side of public accessibility. Therefore, we conclude the
Ratsimor paper is not a printed publication under 35 U.S.C. § 102(b) that
can be used to challenge the patentability of the claims in the ’055 patent.
Because we have determined that Petitioner has not shown that the
Ratsimor paper was publicly accessible in November 2003, we need not
consider Petitioner’s evidence purporting to corroborate the date of the
Ratsimor paper. Reply 5.
2. Whether the Ratsimor Paper Was
Publicly Accessible in November 2005
Petitioner first argues in its Reply that the Ratsimor paper was
“publicly available on the Internet no later than November 2005” and so is
prior art for claims 1, 4–11, and 14 of the ’055 patent because claims 1, 4–
11, and 14 of the ’055 patent have a priority date after November 2005.
Reply 5. For this assertion, Petitioner relies on the indication that
Dr. Ratsimor’s publication list was last updated as of November 2005. As
explained previously, however, we do not need to reach the date of when the
Ratsimor paper was available on the Department’s webserver because
insufficient evidence has been presented to establish the Department’s
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webserver contained an index or catalog, or any other tools for finding the
Ratsimor paper based on the subject matter of the paper. Therefore, the
Ratsimor paper was not publicly accessible on the Department’s webserver
in a manner sufficient to qualify as a printed publication.
3. The Ratsimor Paper Is Not Prior Art
For the foregoing reasons, we determine that Petitioner has not
demonstrated, by a preponderance of the evidence, that the Ratsimor paper is
a printed publication within the meaning of 35 U.S.C. § 102(b) and,
therefore, the Ratsimor paper is not prior art to the claims of the ’055 patent.
Therefore, Petitioner may not rely upon the Ratsimor paper for its asserted
grounds of patentability under 35 U.S.C. § 102(b) and § 103(a).
Accordingly, we conclude that Petitioner has not demonstrated that claims 1,
4–7, and 14 are unpatentable under 35 U.S.C. § 102(b) as anticipated by the
Ratsimor paper; claims 1, 4–7, 10, and 14 are unpatentable under 35 U.S.C.
§ 103(a) as obvious over the Ratsimor paper and Paul; claims 8 and 11 are
unpatentable under 35 U.S.C. § 103(a) as obvious over the Ratsimor paper,
Paul, and Atazky; or that claims 1, 4–9, 11, and 14 are unpatentable under
35 U.S.C. § 103(a) as obvious over the Ratsimor paper, McLean, and
Atazky.
D. Asserted Ground of Anticipation by Paul
Petitioner asserts that claims 1, 4–6, 10, and 14 of the ’055 patent are
unpatentable under 35 U.S.C. § 102(b) as anticipated by Paul. Pet. 28–40;
Reply 8–10.
1. Principles of Law
To establish anticipation, each and every element in a claim, arranged
as recited in the claim, must be found in a single prior art reference. Net
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MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008);
Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
2001). To anticipate, a prior art reference must disclose more than
“multiple, distinct teachings that the artisan might somehow combine to
achieve the claimed invention.” Net MoneyIN, 545 F.3d at 1371. Although
the elements must be arranged or combined in the same way as in the claim,
“the reference need not satisfy an ipsissimis verbis test,” i.e., identity of
terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir.
2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Moreover, the prior
art reference is read from the perspective of one with ordinary skill in the art.
In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (“A reference anticipates
a claim if it discloses the claimed invention such that a skilled artisan could
take its teachings in combination with his own knowledge of the particular
art and be in possession of the invention.”); In re Preda, 401 F.2d 825, 826
(CCPA 1968) (“[I]t is proper to take into account not only specific teachings
of the reference but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom.”).
2. Overview of Paul
Paul discloses an Internet-based e–mail communications system that
broadcasts communications to members, some of whom have cellular
telephones. Ex. 1007, Abstract. The Internet-based e–mail communications
system includes a campaign manager to provide a number of tool options to
users. Ex. 1007 ¶¶ 34, 51, 100. For example, one of the tool options allows
the users to develop and manage an e–mail direct marketing campaign that
sends personalized e–mail messages to members whose member records
match parameters identified for the campaign. Ex. 1007 ¶ 51. The
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personalized e–mail message includes an advertisement for a particular
business, and a hyperlink to a web site of a business that, when activated,
transfers the member to the web site. Ex. 1007 ¶ 95. Another tool option in
the campaign manager provides a “refer a friend” advertising campaign that
provides a coupon to a member who is successful in referring a friend to the
web site of the business. Ex. 1007 ¶¶ 101–102. Specifically, the member
sends the e–mail message (with the embedded hyperlink and an associated
referral communication data packet, which identifies the business sponsoring
the advertising campaign) to one or more friends. Ex. 1007 ¶ 102. The
“refer a friend” advertising campaign can increase member activity “by
offering an economic incentive.” Ex. 1007 ¶ 102.
3. Analysis
Petitioner asserts that claims 1, 4–6, 10, and 14 are unpatentable under
35 U.S.C. § 102(b) as anticipated by Paul. Pet. 28–40; Reply 8–10. In
support of this asserted ground of unpatentability, Petitioner provides
detailed explanations as to how each claim limitation is met by Paul and
relies on testimony by Dr. Joshi. Pet. 28–40 (citing Ex. 1008). Patent
Owner disagrees with Petitioner’s assertions and relies on testimony by
Vernon Thomas Rhyne, Ph.D. PO Resp. 41–46 (citing Ex. 2039).
We find Paul discloses each limitation of independent claim 1 as
arranged in the claims. For example, independent claim 1 recites a method
for providing an advertisement from an advertiser to a first recipient
associated with a first destination communication device, and also
incentivizing the first recipient. Paul discloses an Internet-based e–mail
communications system that sends personalized e–mail messages to
members. Ex. 1007 ¶ 51. The personalized e–mail message includes an
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advertisement for a particular business, and a hyperlink to a web site of a
business. Ex. 1007 ¶ 95. The member then sends the received e–mail
message (with the embedded hyperlink and referral data packets) to one or
more friends, as a part of a “refer a friend” advertising campaign. Ex. 1007
¶ 102. The “refer a friend” campaign provides a coupon to the member if
the member is successful in generating or referring a friend to the sponsor.
Ex. 1007 ¶ 101. Paul discloses the “refer a friend” advertising campaign can
increase member activity “by offering an economic incentive.” Ex. 1007
¶ 102. Such coupons and incentives are tracked using referral data packets,
which not only identify which member is actively recruiting friends or new
members, but also identifies the e–mail campaign for “refer a friend.”
Ex. 1007 ¶ 102.
Petitioner sets forth a similar analysis for claims 4–6, 10, and 14. We
have reviewed the evidence presented by Petitioner regarding Paul’s
disclosure of the further limitations recited in dependent claims 4–6, 10, and
14. We find that Paul discloses each limitation of claims 4–6, 10, and 14 as
arranged in the claims.
i. Patent Owner’s Contentions
Patent Owner asserts that Petitioner cannot show anticipation of
independent claim 1 by a preponderance of the evidence, because, in order
to meet the following limitations of independent claim 1, disparate methods
of Paul’s e–mail communication system must be combined:
conditioning, at the intermediary, a set of endorsement
opportunities on the match condition;
transmitting a[n] incentive program to the first qualified
subscriber, at the source communication device, for each
endorsement opportunity of the set of endorsement
opportunities;
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communicating the set of endorsement opportunities to
the qualified subscriber at the source communication device;
receiving, at the intermediary, a selection of at least one
endorsement opportunity from the set of endorsement
opportunities from the qualified subscriber.
Thus, according to Patent Owner, Paul does not disclose all elements as
arranged in the claim. PO Resp. 42–46.
Specifically, Patent Owner asserts, with support from Dr. Rhyne’s
testimony (Ex. 2039 ¶¶ 95–101), that Paul describes “two separate and
distinct methods” of using the e–mail communication system—a direct e–
mail campaign to send targeted advertisements based on demographics of
members (as disclosed in paragraph 51 and surrounding paragraphs of Paul)
and a “refer-a-friend” campaign involving incentive-based referrals (as
disclosed in paragraphs 95–102). Patent Owner asserts that it is improper to
combine a direct e–mail campaign with a “refer-a-friend” campaign because
the campaigns are unrelated.
We disagree with Patent Owner’s characterization of Paul’s campaign
manager computer program as having multiple separate and distinct
methods, rather than a single comprehensive program that provides users
with multiple tool options to design their marketing campaign. Paul
discloses a campaign manager computer program of the e–mail
communications system that “enables [a user] to develop and implement
direct marketing email campaigns.” Ex. 1007 ¶¶ 34, 51 (A user “is enabled
to conduct direct marketing campaigns using a computer program generally
identified as a ‘campaign manager’ herein.”). “With the campaign manager
program, the [user] defines the parameters of the campaign by conducting a
search through the member records based upon criteria encompassed in the
member records.” Ex. 1007 ¶ 51. Dr. Rhyne, Patent Owner’s Declarant,
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does not dispute that a direct e–mail campaign is developed using the
campaign manager program of Paul’s e–mail communications system.
Ex. 1030, 175–77.
Paul also discloses that, under the tools option in the campaign
manager, the user may select the “refer-a-friend” routine. Ex. 1007 ¶¶ 50,
100 (indicating the “refer-a-friend” campaign of the e–mail communications
system may be selected “using the tools option in the campaign manager”).
Thus, the campaign manager computer program is a single computer
program that provides tools options for the user to develop the campaigns.
We acknowledge that Paul does not disclose expressly an example in
which a direct e–mail campaign to send targeted advertisements based on
demographics of members is used with a “refer-a-friend” campaign
involving incentive-based referrals. We also acknowledge that Paul does not
indicate expressly that any of the computer routines in the campaign
manager computer program can be used with any other one of the campaign
manager computer routines, a fact also acknowledged by Dr. Joshi (Ex.
2045, 189:4–24). Paul, however, does disclose expressly that the preferred
embodiment of the invention “may be produced in a single computer system
having . . . elements or means combining the performance of any of the
functions or steps disclosed.” Ex. 1007 ¶ 29.
Based on the above disclosures of Paul, we find that the direct e–mail
campaign and a “refer-a-friend” campaign are not different methods, but are
different tool options provided by the campaign manager computer program
in the e–mail communications system disclosed by Paul. Accordingly, as
different tool options of the campaign manager in the e–mail
communications system, one of ordinary skill in the art would understand
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that the direct e–mail campaign tool option was to be used in conjunction
with the “refer-a-friend” campaign tool option to send “refer-a-friend” e–
mail message incentives to a subset of the members based on member
demographic characteristics. To determine otherwise would require a
finding that one of ordinary skill in the art, when reading Paul, would come
to the conclusion that the only option would be to send a “refer-a-friend” e–
mail to all members. We do not find that one of ordinary skill in the art
would have understood Paul to be so restrictive. Rather, Paul’s disclosure of
the campaign manager computer program having multiple tool options to
develop marketing campaigns is analogous to a reference disclosing two
functions of a word processing program—creating a document and saving a
document. One skilled in the art would understand the word processing
program reference to disclose how to use those functions together to create
and save a document.7 Cf. Transcript 67:9 – 68:11.

7 At Oral Argument, the Board and Patent Owner’s counsel had the
following exchange:
JUDGE KIM: So using your logic, then, in Microsoft Word, if I
create a document and I save it later, but there are two different
routines, I would not know to create a document and save it?
MR. CONRAD: Well, it depends on what you’re looking at as the
reference. So what are you looking at to say it anticipates --
JUDGE KIM: Well, let’s say it’s similar to this, you know, like on
one part of the reference you have a save function and one part you
have a create document function.
MR. CONRAD: Right. Well, it depends. Are you looking at
anticipation or obvious? If it’s anticipation
JUDGE KIM: Anticipation.
MR. CONRAD: The references says [sic] you’ve got a routine to
save the program. Then what’s the other routine you’re interested in?
JUDGE KIM: Creating a document.
Transcript 67:9–22.
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Dr. Joshi confirms this understanding and explains:
While Paul does disclose the possibility of sending the referral
email to all members of the system [Ex. 1007 ¶ 102], Paul
further explicitly states that the referral email can alternatively
be created through use of the Campaign Manager.
Ex. 1029 ¶ 71. Dr. Joshi further cites Paul’s disclosure that “[s]ponsors . . .
have the ability to create numerous types of e–mail campaigns, such as ‘refer
a friend’ campaign, through the campaign manager program discussed
later.” Ex. 1029 ¶ 71 (quoting Ex. 1007 ¶ 50).
Dr. Rhyne recognizes, as do we, that Paul does not disclose expressly
“having a member forward a[n] advertising e–mail received from a sponsor
during an e–mail-based advertising campaign to another member or
someone who is not a member” through the “refer-a-friend” campaign. Ex.
2039 ¶¶ 95, 101. Dr. Rhyne, however, does not address persuasively Paul’s
disclosure that both the direct e–mail campaign and a “refer-a-friend”
campaign use the campaign manager computer program, or how one of
ordinary skill in the art would understand how the direct e–mail campaign
and a “refer-a-friend” campaign are related through the campaign manager.
See generally Ex. 2039 ¶¶ 103–125 (discussing Paul’s disclosure of the
direct e–mail campaign and the “refer-a-friend” campaign).
We recognize that, at first glance, this case appears to be similar to the
facts in Net MoneyIN, Inc., 545 F.3d at 1368–71. In that case, a prior art
reference was held not to anticipate a claim reciting five links in an Internet
payment system, because neither of the two separate protocols for
processing Internet credit card transactions disclosed all five links. Id. The
Court concluded that the prior art reference did not show the claimed
invention arranged or combined in the same way as recited in the claim. Id.
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Two additional facts in the instant case distinguish Net MoneyIN: (i) Paul
discloses an e–mail communications system in which a particular computer
program—campaign manager—has tool options to create both a direct e–
mail campaign based on demographics and a “refer-a-friend” campaign
involving incentive-based referrals; and (ii) Dr. Joshi’s testimony that the
disclosure would be understood by one of ordinary skill in the art to mean
the campaigns can be used together through the campaign manager.
Thus, we find that a direct e–mail campaign and a “refer-a-friend”
campaign are not multiple, distinct teachings of the prior art reference that
are unrelated to each other. Rather, we find the campaigns are tool options
to be used together, “without any need for picking, choosing, and
combination various disclosures not directly related to each other by the
teachings of the cited reference,” to anticipate the challenged claims of the
’055 patent. In re Arkley, 455 F.2d 586, 587 (CCPA 1972); see Net
MoneyIN, 545 F.3d 1371.
Patent Owner asserts that Paul does not disclose (1) a “qualified
subscriber” that (2) sends the intermediary a selection of an endorsement
opportunity as required by independent claim 1. We are not persuaded by
Patent Owner’s assertions. Paul discloses an Internet-based e–mail
communications system that sends personalized e–mail messages to certain
members based on demographics. Ex. 1007 ¶ 51. These members
correspond properly to the recited “qualified subscriber” determined based
on a match condition. The personalized e–mail message includes an
advertisement for a particular business, and a hyperlink to a web site of a
business. Ex. 1007 ¶ 95. The embedded hyperlink corresponds to the
recited endorsement opportunity. The member then sends the received e–
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mail message (with the embedded hyperlink and referral data packets) to one
or more friends, as a part of a “refer a friend” advertising campaign.
Ex. 1007 ¶ 102. The “refer a friend” campaign provides a coupon to the
member if the member is successful in generating or referring a friend to the
sponsor. Ex. 1007 ¶ 101. Such coupons and incentives are tracked using
referral data packets, which not only identify which member is actively
recruiting friends or new members, but also identifies the e–mail campaign
for “refer a friend.” Ex. 1007 ¶ 102. The entity at the campaign that tracks
the referral data packets sent with the endorsement opportunity corresponds
to the recited intermediary.
4. Conclusion
For the foregoing reasons, we find that Petitioner has proven, by a
preponderance of the evidence, that claims 1, 4–6, 10, and 14 are
unpatentable under 35 U.S.C. § 102(b) as anticipated by Paul.
E. Patent Owner’s Motion to Exclude
Patent Owner seeks to exclude: (i) Dr. Ratsimor’s resume (Ex. 1032),
her research summary (Ex. 1033), and a Departmental webpage for a
research project (Ex. 1034), all of which cite the Ratsimor paper with a
November 2003 publication date; (ii) three patents—U.S. Patent Nos.
8,620,736 B2 (Ex. 1025), 8,671,012 B2 (Ex. 1026), and 8,626,608
B2 (Ex. 1035), which cite the Ratsimor paper with a November 2003 date;
and (iii) results from a search engine (i.e., Google Scholar) (Ex. 1036),
which list the Ratsimor paper with a November 2003 date.
We need not assess the merits of Patent Owner’s Motion to Exclude.
Petitioner uses the challenged exhibits to support its contention that the
Ratsimor paper was published in November 2003. Reply 5. As discussed
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above, even without Petitioner’s supporting evidence regarding the date of
the Ratsimor paper, we have determined that the Ratsimor paper is not a
printed publication under 35 U.S.C. § 102(b), because the Ratsimor paper
was not publicly accessible as of November 2003. Notably, the evidence
that Patent Owner seeks to exclude is dated between 2007 and 2014 (see
Exs. 1025–1026, 1032–1036) and, as such, provides little probative value
regarding how an interested and ordinarily skilled artisan would have been
able to locate the Ratsimor paper in November 2003. Thus, the evidence
that Patent Owner seeks to exclude does not tip the scales in favor of public
accessibility of the Ratsimor paper.
Accordingly, Patent Owner’s Motion to Exclude certain evidence is
dismissed as moot.
III. CONCLUSION
Petitioner has proven, by a preponderance of the evidence, that claims
1, 4–6, 10, and 14 of the ’055 patent are unpatentable under 35 U.S.C.
§ 102(b) as anticipated by Paul.
Petitioner, however, has not proven, by a preponderance of the
evidence, that claims 1, 4–7, and 14 of the ’055 patent are unpatentable
under 35 U.S.C. § 102(b) as anticipated by the Ratsimor paper.
Petitioner has not proven, by a preponderance of the evidence, that
claims 1, 4–7, 10, and 14 of the ’055 patent are unpatentable under
35 U.S.C. § 103(a) as obvious over the Ratsimor paper and Paul.
Petitioner has not proven, by a preponderance of the evidence, that
claims 8 and 11 of the ’055 patent are unpatentable under 35 U.S.C. § 103(a)
as obvious over the Ratsimor paper, Paul, and Atazky.
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Petitioner has not proven, by a preponderance of the evidence, that
claims 1, 4–9, 11, and 14 of the ’055 patent are unpatentable under
35 U.S.C. § 103(a) as obvious over the Ratsimor paper, McLean, and
Atazky.
Patent Owner’s Motion to Exclude is dismissed.
IV. ORDER
It is
ORDERED that Petitioner has demonstrated by a preponderance of
the evidence that claims 1, 4–6, 10, and 14 of U.S. Patent No. 8,438,055 B2
are unpatentable;
FURTHER ORDERED that Petitioner has not demonstrated by a
preponderance of the evidence that claims 7–9 and 11 of U.S. Patent
No. 8,438,055 B2 are unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
dismissed; and
FURTHER ORDERED that, because this is a final written decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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PETITIONER:

Jeanne M. Gills
CBM_Groupon@foley.com

Troy D. Smith
tdsmith@foley.com

PATENT OWNER:

John C. Phillips
phillips@fr.com

Carl E. Bruce
bruce@fr.com

David B. Conrad
conrad@fr.com

Thomas H. Reger II
CBM2013-00046@fr.com