Blue Calypso, LLC. v. Groupon, Inc.
815 F.3d 1331
| Fed. Cir. | 2016Background
- Blue Calypso owns five related patents claiming a peer-to-peer mobile advertising system that uses subscriber profiles and a subsidy/incentive program to induce forwarding of ads (representative: claim 2 of the '516 patent).
- Groupon petitioned for Covered Business Method (CBM) review under the AIA, asserting anticipation (§ 102) and obviousness (§ 103) and written-description (§ 112) defects; the PTAB instituted review and issued final decisions finding many claims unpatentable (Paul anticipatory reference) and some '516 claims lacking written description; the PTAB rejected Groupon’s reliance on a web report (Ratsimor) as not publicly accessible.
- Blue Calypso appealed the PTAB’s CBM-eligibility and invalidity findings; Groupon cross-appealed the PTAB’s rejection of Ratsimor as prior art; the Director intervened limited to defending CBM eligibility.
- The Federal Circuit reviewed legal conclusions de novo and factual findings for substantial evidence; it affirmed in part and reversed in part.
- Key holdings: (1) the challenged claims are CBM patents (subsidy construed as financial assistance), (2) the patents are not technological inventions for CBM-exception purposes, (3) Paul anticipates many claims (affirmed), (4) the Board erred in finding certain '516 claims lack written description for "endorsement tag" and "token" (reversed), and (5) Ratsimor was not shown to be a printed publication (affirmed).
Issues
| Issue | Blue Calypso's Argument | Groupon's Argument | Held |
|---|---|---|---|
| CBM eligibility: whether the patents are “covered business method” patents | Patents concern advertising distribution, not a financial product/service; therefore not CBM | Claims recite a central “subsidy” (financial inducement) making them financial in nature | Affirmed: claims fall within CBM definition because subsidy construed as financial assistance and is central to claims |
| Technological-invention exception (CBM) | Claims recite computer/network/hardware and solve technological problems of broadcast advertising | Mere use of conventional computer components doesn’t make a technological invention | Affirmed: claims use conventional computer elements and do not meet PTO’s definition of technological invention |
| Anticipation by Paul: whether Paul discloses all claim limitations arranged as claimed | Paul’s tools are distinct; PTAB improperly combined separate tools (direct‑email and refer‑a‑friend) to find anticipation | Paul discloses a campaign manager with tools and contemplates combining features; skilled artisan would envisage combining tools to yield claimed arrangement | Affirmed (majority): substantial evidence supports PTAB that Paul, read as a whole, discloses/permits the claimed combination; (dissent disagrees, would reverse) |
| Written‑description (§ 112) for “endorsement tag” and “token” in '516 | Specification uses executable links and figures showing clickable ads; claim terms need not appear verbatim — specification supports terms as executable links | Terms absent verbatim from spec; PTAB relied on absence to find inadequate written description | Reversed: PTAB gave undue weight to absence of the literal terms; the specification and figures provide adequate written‑description support under agreed construction |
| Public availability of Ratsimor (printed publication) | N/A (this is Groupon’s contention) | Ratsimor was posted on author’s personal UMBC webpage prior to critical date and thus is a printed publication | Affirmed (PTAB): Groupon failed to show public accessibility (no evidence of indexing, dissemination, or that skilled artisans would locate the link); Ratsimor is not a printed publication |
Key Cases Cited
- Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir.) (statutory CBM definition interpreted broadly; PTO regulation guides technological‑invention exception)
- SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307 (Fed. Cir.) (financial activity can be a financial product/service within CBM definition)
- Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (U.S.) (use of general‑purpose computer does not change fundamental character of abstract business inventions)
- Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376 (Fed. Cir.) (a reference can anticipate when skilled artisan would at once envisage the specific combination taught by the reference)
- Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir.) (prior art cannot be pieced together from distinct protocols to find anticipation)
- Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir.) (written‑description requirement: specification must show inventor possessed claimed invention)
- Voter Verified, Inc. v. Premier Election Sols., Inc., 698 F.3d 1374 (Fed. Cir.) (public accessibility of online references depends on indexing, prominence, or other evidence that skilled artisans would locate the material)
- Perricone v. Medicis Pharm. Corp., 432 F.3d 1368 (Fed. Cir.) (inherency: missing descriptive matter must necessarily be present in the prior art to support anticipation)