GroupON, Inc.v.Blue Calypso, Llc.

Patent Trial and Appeal Board

Dec 17, 2014

11318144 (P.T.A.B. Dec. 17, 2014)

Trials@uspto.gov Paper 45
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 CBM2013-00035
Patent 7,664,516 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 June 25, 2013,
requesting a covered business method patent review of U.S. Patent No.
7,664,516 B2 (“the ’516 patent”) pursuant to § 18(a) of the Leahy-Smith
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Patent 7,664,516 B2

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America Invents Act (“AIA”).1 Paper 2 (“Pet.”). Blue Calypso, LLC
(“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).
Taking into account Patent Owner’s Preliminary Response, 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
December 19, 2013, as to claims 1–27 and 29 of the ’516 patent on the
following grounds of unpatentability.
Reference(s) Basis Claims Challenged
The Ratsimor paper2 § 102(b) 1–15, 20–23, and 29
Paul3 § 102(b) 2–15, 20–23, and 29
The Ratsimor paper and Paul § 103(a) 1–27 and 29
§ 112 ¶ 1 1–19, 23–25 and 29
Paper 11 (“Dec.”).
Subsequent to institution, Patent Owner filed a Patent Owner
Response (Paper 18; “PO Resp.”), and Petitioner filed a Reply (Paper 25;
“Reply”). Patent Owner also filed a Motion to Exclude (Paper 32; “Mot.”),
to which Petitioner filed an Opposition (Paper 37; “Pet. Opp.”), and Patent
Owner filed a Reply (Paper 39; “PO Reply”).
An oral hearing was held on September 5, 2014.4

1 Pub. L. No. 112-29, 125 Stat. 284, 329 (2011).
2 Olga Ratsimor, 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 A transcript of the oral hearing is included in the record as Paper 44
(“Transcript”). This proceeding, as well as CBM2013-00033, CBM2013-
00034. CBM2013-00044, and CBM2013-00046, involve the same parties

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Patent 7,664,516 B2

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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
1–25 and 29 of the ’516 patent are unpatentable.
Petitioner has not proven, by a preponderance of the evidence, that
claims 26 and 27 of the ’516 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 ’516 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 ’516 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 8,438,055 B2 (“the ’055 patent”)
(Case CBM2013-00046), and U.S. Patent 8,452,646 B2 (“the ’646 patent”)
(Case CBM2013-00044). Paper 26, 2. All four patents claim priority to the
application that issued as the ’516 patent, and Patent Owner has indicated
that it is the real-party-in-interest in all four reviews.
B. The ’516 Patent
The ’516 patent discloses systems and methods for peer-to-peer
advertising between mobile communication devices. Ex. 1001, Abstract.

and similar issues. The oral arguments for the five reviews were merged and
conducted at the same time
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CBM2013-00035
Patent 7,664,516 B2

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analyzes profile data of subscriber 1 and identifies advertisers 10 whose
criteria for subsidy match subscriber 1. Ex. 1001, 4:19–22. Intermediary 9
then presents all acceptable advertisers 10 and subsidy programs available to
the subscriber 1. Ex. 1001, 4:40–43. Subscriber 1 then may select one or
more advertisers 10 and/or subsidy programs containing multiple advertisers
or advertisements for endorsement. Ex. 1001, 4:43–46. The advertisements
then are downloaded to subscriber 1. Ex. 1001, 4:51–53.
C. Illustrative Claim
Petitioner challenges claims 1–27 and 29 of the ’516 patent. Claims
1, 2, and 20 are independent claims. Claim 2 is illustrative of the claims at
issue and reads as follows:
2. A method for providing access to an advertisement
from an advertiser to a source communication device possessed
by a subscriber and distributing the access to the advertisement
from the source communication device to a destination
communication device possessed by a recipient, wherein the
destination communication device is compatible with the source
communication device, and the recipient having a relationship
to the subscriber, the method comprising the steps of:
comparing a desired demographic profile to a subscriber
demographic profile to derive a match;
establishing a bi-lateral endorsement between the
subscriber and the advertiser;
providing a subsidy program to the subscriber based on
the match;
sending a token related to the advertisement to the source
communication device;
activating an endorsement manager in the source
communication device;
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initiating a communication session between the source
communication device and the destination communication
device;
transmitting a message, including the token, from the
source communication device to the destination communication
device contemporaneously with the communication session;
and
recognizing a subsidy, according to the subsidy program,
for the subscriber after a termination of the communication
session.
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 the patentability of the
challenged claims, we determine the meaning of the claims. 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 generally 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) (quoting
Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc)).
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
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particular embodiment appearing in the written description into the claim if
the claim language is broader than the embodiment. In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993). We construe the terms below in
accordance with these principles.
1. “subsidy”
Each of independent claims 1, 2, and 20 recites the term “subsidy.”
For example, independent claim 2 recites “recognizing a subsidy, according
to the subsidy program, for the subscriber after a termination of the
communication session.”
The ’516 patent does not set forth a special definition for “subsidy.”
Accordingly, we look to the ordinary meaning of the term “subsidy”—
financial assistance given by one to another.5 The ’516 patent’s use of
“subsidy” is consistent with its ordinary meaning. Specifically, the ’516
patent describes an advertiser setting up a subsidy program to subsidize
communication fees, offer product discounts, generate and accumulate
“reward points” for subscribers, or mitigate or defer other expenses of the
subscriber. Ex. 1001, 3:21–27 (referring to Fig. 2). These examples are
financial in nature. Product discounts reduce the monetary cost of a
financial transaction, reward points are a form of currency, and mitigating or
deferring expenses reduces the monetary cost of a financial transaction or
postpones the monetary cost of a financial transaction, respectively. Also,
the ’516 patent describes, as part of a subscriber setup process, an
intermediary presenting, to a subscriber for selection, “subsidy programs

5 AMERICAN HERITAGE DICTIONARY 896 (3d ed. 1992) (defining “subsidy”
as “1. Monetary assistance granted by a government to a person or group in
support of an enterprise regarded as being in the public interest. 2.
Financial assistance given by one person or government to another.”).
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available, including the criteria for continued subsidy and levels of subsidy.”
Ex. 1001, 4:41–43 (referring to Fig. 3).
For these reasons, in the Decision to Institute, the Board construed
“subsidy” as “financial assistance given by one to another.” Dec. 7–9.
Neither party challenges this construction. Having considered whether the
construction set forth in the Decision to Institute should be changed in light
of evidence introduced during trial, we are not persuaded any modification is
necessary. Therefore, we maintain the construction of “subsidy” as
“financial assistance given by one to another.”
2. “bi-lateral endorsement”
Both of independent claims 2 and 20 each recite “bi-lateral
endorsement.” For example, independent claim 2 recites “establishing a bi-
lateral endorsement between the subscriber and the advertiser.” The parties
disagree on the construction of “bi-lateral endorsement.” Pet. 10–11; PO
Resp. 9–12.
The ’516 patent does not set forth a special definition for “bi-lateral
endorsement.” In proffering constructions, neither party provides sufficient
evidence of the ordinary meaning of “bi-lateral” or “endorsement.” “Bi-
lateral endorsement” is not recited in the original written disclosure. The
term was added by amendment during prosecution of U.S. Application No.
11/318,144 (“the ’144 application”), which issued as the ’516 patent. The
amendment was accompanied by the following assertion concerning “bi-
lateral endorsement”: “[b]i-lateral endorsement requires approval of both
the subscriber and the advertiser to the identity of the other.” Ex. 1003, 27.
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This comports with the ordinary meaning of the terms “bi-,”6 “lateral,”7 and
“endorsement,”8 which collectively mean “both sides giving approval.” The
use of “bi-lateral endorsement” in independent claims 2 and 20 indicate that
an endorsement occurs between two parties, a subscriber and an advertiser,
which is consistent with its ordinary meaning of “both sides giving
approval.”
The language in the original written disclosure corresponding to the
aforementioned claim limitations also indicates an endorsement occurring
between a subscriber and an advertiser. For instance, while the ’516 patent
does not recite expressly “bi-lateral endorsement,” it does disclose
endorsement by an advertiser of a subscriber, endorsement by a subscriber
of one or more advertisers, and an endorsement of an advertiser by a
subscriber facilitated through an intermediary. Ex. 1001, 3:21–27, 3:44–47,
4:43–46. Indeed, the ’516 patent discloses a subscriber being endorsed
through a categorical grouping, whereby different advertisers endorse entire
categories of subscribers for each communication event based on a target
subsidy or target destination. Ex. 1001, 3:44–47.
Initially, Patent Owner contended that “bi-lateral endorsement” should
be limited to “mutual selection arrangement in which the advertiser and the
subscriber each affirmatively selects or otherwise indicates approval of the
other’s identity.” Prelim. Resp. 38–39 (quoting Ex. 1003, 27). In the

6 AMERICAN HERITAGE DICTIONARY 181 (3d ed. 1992) (defining “bi-” as “1.
a. Two . . . b. Both . . . c. Both sides, parts, or directions”).
7 AMERICAN HERITAGE DICTIONARY 1017 (3d ed. 1992) (defining “lateral”
as “1. Of, relating to, or situated at or on the side”).
8 AMERICAN HERITAGE DICTIONARY 608 (3d ed. 1992) (defining “endorse”
as “4. To give approval of or support to, especially by public statement”);
id. (defining “endorsement” as “1. The act of endorsing”).
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Decision to Institute, the Board disagreed that certain terms, such as “mutual
selection arrangement” and “affirmatively selects,” are limiting, because
Patent Owner had not shown where these terms are set forth in the ’516
patent in a manner sufficient to supersede the ordinary meaning of the term
“bi-lateral endorsement” as used in the ’516 patent. Dec. 12. Based on its
use in the ’516 patent, however, the Board agreed with the Patent Owner that
“bi-lateral endorsement” requires each party to approve the other’s identity.
Dec. 12. For these reasons, in the Decision to Institute, the Board construed
“bi-lateral endorsement” as “approval of two parties to the identity of the
other,” consistent with the term’s ordinary meaning in light of the
Specification. Dec. 13–15. Petitioner does not challenge this construction.
Reply 1.
After Institution, Patent Owner contends that “bi-lateral endorsement”
means “a selection of one or more potential subscribers by the advertiser,
and a selection of the same advertiser by the subscriber,” or, more simply,
“selections by two parties of each other.” PO Resp. 9. Patent Owner also
contends that bi-lateral endorsement “requires affirmative acts of selection
by each party of the other.” PO Resp. 10. In proffering its construction,
Patent Owner appears to be asserting that its construction is narrower than
that of the Board, as the Board’s construction could plausibly be met by two
parties approving of each of other without explicit affirmative acts of
selection by each party of the other. For support, Patent Owner relies on
various passages in the ’516 patent describing the selection of subscribers
and advertisers. PO Resp. 10–11 (citing Ex. 1001, 3:21–33; 4:43–46; Fig. 3,
step 46).
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Relying on a statement made during examination of the ’144
application, Patent Owner contends that “bi-lateral endorsement is a
‘selection process’ involving acts of selection or endorsement.” PO Resp.
11. Patent Owner specifically relies on the following statements:
The subscriber’s selection process of claim 2 is different.
Initially, [a] subscriber must be selected by a match condition
based on his profile. The subscriber is then provided a
corresponding subsidy plan based on the match condition. The
subscriber is not limited to the highest bidding advertiser but
rather has a choice of which advertiser(s) to endorse.
PO Resp. 10–12 (quoting Ex. 1003, 28) (emphasis added and citations
omitted).
Applicant’s statements distinguished the limitations “comparing a
desired demographic profile to a subscriber demographic profile to derive a
match” and “providing a subsidy program to the subscriber based on the
match” of claim 2 from prior art references describing “comparing an
advertisement characterization to each consumer profile.” Ex. 1003, 27–28.
Because the Applicant’s statements were not directed to the limitation
“establishing a bi-lateral endorsement between the subscriber and the
advertiser,” the statements have limited probative value concerning the
construction of “bi-lateral endorsement.” We are not persuaded that
Applicant’s statements are sufficient to supersede the ordinary meaning of
the term “bi-lateral endorsement” as “both sides giving approval,” as used in
the ’516 patent.
We turn to Patent Owner’s contention that the process of establishing
bi-lateral endorsement “requires affirmative acts of selection by each party
of the other.” PO Resp. 10. For the reasons previously indicated, we
recognize the ’516 patent discloses various examples of selecting an
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advertiser or subscriber. Some claims of the ’516 patent, however, expressly
require selection of an advertiser. Specifically, independent claim 1 recites
“receiving a first selection of the at least one advertiser of the group of
advertisers from the qualified subscriber,” and dependent claim 21 recites
“select a subset of advertisers from the set of advertisers and at least one
subsidy program of the set of subsidy programs.” Independent claims 2 and
20, which recite establishing or determining bi-lateral endorsement between
an advertiser and a subscriber, do not recite limitations regarding selecting
an advertiser or subscriber. We do not import a limitation requiring an
affirmative selection by each party of the other into the claims, especially
where, under the doctrine of claim differentiation, the “bi-lateral
endorsement” recited in independent claim 20 is presumed to be broader
than the “selecting” recited in dependent claim 21. Thus, we conclude that
the process of establishing bi-lateral endorsement does not require
affirmative acts of selection by each party of the other.
Also, Patent Owner, after Institution, proffers a construction of “bi
lateral endorsement” that does not include “identity of the other.” PO Resp.
9. Previously, in its Preliminary Response, Patent Owner had contended,
relying on a statement made during examination of the ’144 application, that
a bi-lateral endorsement should be limited to “a mutual selection
arrangement in which the advertiser and the subscriber each affirmatively
selects or otherwise indicates approval of the other’s identity.” Prelim.
Resp. 37–39 (quoting Ex. 1003, 27) (emphasis added). We already have
addressed this issue above, and thus our analysis need not be repeated here.
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Accordingly, in view of the evidence and arguments submitted during
this proceeding, we maintain the construction of “bi-lateral endorsement” as
“approval of two parties to the identity of the other.”
3. Whether the Preambles Are Limiting
After Institution, Patent Owner contends that the preambles of certain
challenged claims are limiting. PO Resp. 15–17. specifically Patent Owner
contends that the preambles provide antecedent basis for limitations in the
body of claims 1, 2, 8, and 20. PO Resp. 16–17. As such, Patent Owner
contends that “the preambles provide explicit structure to the relationship of
certain components of the invention that give life, meaning and vitality to
the claimed invention.” PO Resp. 16.
We agree. In general, a preamble is construed as a limitation “if it
recites essential structure or steps, or if it is ‘necessary to give life, meaning,
and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com,
Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v.
Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). When the
limitations in the body of the claim “rely upon and derive antecedent basis
from the preamble, then the preamble may act as a necessary component of
the claimed invention.” Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332,
1339 (Fed. Cir. 2003) (citations omitted).
For example, the preamble of independent claim 2 recites “an
advertiser,” “a source communication device possessed by a subscriber” and
“a destination communication device possessed by a recipient.” The body of
independent claim 2 recites “the advertiser,” “the source communication
device,” “the subscriber,” and “the destination communication device,” all
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of which rely on and derive antecedent basis from the preamble of
independent claim 2.
Similarly, the preamble of independent claim 20 recites “a first
communication device,” “a second communication device,” and “a
communication session.” The body of independent claim 20 recites “the
first communication device,” “the second communication device,” and “the
communication session.” The same is true for “subscriber” and “advertising
content” in independent claim 1, and “advertising content” and
“intermediary” in dependent claim 8.
Accordingly, we conclude that the preambles of independent claims 1,
2, 8, and 20 are entitled to patentable weight.
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
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 ’516
patent.
1. Financial Product or Service
Petitioner contends that the ’516 patent is a covered business method
patent, because the claimed subject matter is directed to providing a subsidy,
which is financial in nature. Pet. 5–7. 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
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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 2 recites “providing a subsidy program to the subscriber.” As set forth
above, we construe “subsidy” as “financial assistance given by one to
another.” Accordingly, we agree with Petitioner that the subject matter of
independent claim 2 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”:
(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 ’516 patent is not directed to a
technological invention, because independent claim 2 recites known
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components and is directed toward a business problem, not a technical
solution. Pet. 7. We agree. Accordingly, we determine that independent
claim 2 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 1–15, 20–23, and 29 are unpatentable
under 35 U.S.C. § 102(b) as anticipated by the Ratsimor paper, and claims
1–27 and 29 are unpatentable under 35 U.S.C. § 103(a) as obvious over the
Ratsimor paper and Paul. Pet. 11–32, 55–57. 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
County in November 2003, more than one year prior to the earliest priority
date claimed by the ’516 patent. Pet. 2, 11; Ex. 1008 ¶¶ 2, 14; see also Ex.
1001, 1:5–8 (claiming priority to provisional Application No. 60/639,267
filed Dec. 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
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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, 14.
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 ’516 patent.
PO Resp. 4–5, 23–32. 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. 25–27.
Having reviewed the parties’ arguments and supporting evidence, we
do not find sufficient evidence that the Ratsimor paper was publicly
accessible 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).
“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
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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’
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.
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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.
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, whose intent to publicize the Ratsimor paper and
dissemination activities weigh in favor of finding the Ratsimor paper was
publicly accessible. These findings, however, are not dispositive, and,
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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
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
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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 (internal
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 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 [File Transfer Protocol (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
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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.
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 4 (citing Ex. 1039). 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
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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,
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 ’516 patent.
Because we have determined that Petitioner has not shown that the
Ratsimor paper was publicly accessible in November 2003, we need not
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consider Petitioner’s evidence purporting to corroborate the date of the
Ratsimor paper. Reply 5.
2. 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 ’516 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
1–15, 20–23, and 29 are anticipated by the Ratsimor paper or that claims 1–
27 and 29 would have been obvious over the combination of the Ratsimor
paper and Paul.
D. Asserted Ground of Anticipation by Paul
Petitioner asserts that claims 2–15, 20–23, and 29 of the ’516 patent
are unpatentable under 35 U.S.C. § 102(b) as anticipated by Paul. Pet. 32–
55; Reply 11–12.
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
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,
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“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
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
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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 2–15, 20–23, and 29 are unpatentable
under 35 U.S.C. § 102(b) as anticipated by Paul. Pet. 32–55; Reply 11–12.
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. 32–55 (citing Ex. 1008). Patent
Owner disagrees with Petitioner’s assertions and relies on testimony by
Vernon Thomas Rhyne, Ph.D. PO Resp. 61–67 (citing Ex. 2039).
We find Paul discloses each limitation of independent claim 2 as
arranged in the claims. For example, independent claim 2 recites a method
for providing an advertisement from an advertiser to a subscriber, and then
distributing the advertisement from the subscriber to a 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 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) to one or more friends, as a part of a “refer a
friend” advertising campaign. Ex. 1007 ¶ 102. Independent claim 2 further
recites providing a subsidy program to the subscriber, and recognizing a
subsidy, according to the subsidy program, for the subscriber after the
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subscriber distributes the advertisement to the recipient. Paul discloses the
“refer a friend” advertising campaign can increase member activity “by
offering an economic incentive.” Ex. 1007 ¶ 102.
Petitioner sets forth a similar analysis for claims 3–15, 20–23, and 29.
We have reviewed the evidence presented by Petitioner regarding Paul’s
disclosure of the further limitations recited in dependent claims 3–15,
independent claim 20, and dependent claims 21–23 and 29. We find that
Paul discloses each limitation of claims 3–15, 20–23, and 29 as arranged in
the claims.
i. Patent Owner’s Contentions Regarding
Independent Claim 2
Patent Owner asserts that Petitioner cannot show anticipation of
independent claim 2 by a preponderance of the evidence, because in order to
meet “establishing a bi-lateral endorsement between the subscriber and the
advertiser” and “providing a subsidy program to the subscriber based on the
match,” as recited in independent claim 2, disparate methods of Paul’s e–
mail communication system must be combined, and so, Paul does not
disclose all elements as arranged in the claim. PO Resp. 59–65.
Specifically, Patent Owner asserts, with support from Dr. Rhyne’s
testimony (Ex. 2039 ¶¶ 161–166), 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.
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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,
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
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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
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
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program reference to disclose how to use those functions together to create
and save a document.9 Cf. Transcript 67:9 – 68:11.
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 ¶ 93. 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 ¶ 93 (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.

9 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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2039 ¶¶ 161, 168. 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 ¶¶ 145–168 (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.
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
unrelated to each other by the teachings. Rather, we find the campaigns are
tool options to be used together, “without any need for picking, choosing,
and combining various disclosures not directly related to each other by the
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teachings of the cited reference,” to anticipate the challenged claims of the
’516 patent. In re Arkley, 455 F.2d 586, 587 (CCPA 1972); see Net
MoneyIN, 545 F.3d at 1371.
Patent Owner asserts that Paul does not disclose a member “electing”
to receive a particular e–mail campaign from an advertiser, let alone
approving a particular advertiser as required by independent claim 2. We
are not persuaded by Patent Owner’s assertion, because Paul discloses a
member forwarding an e–mail received from a business. Ex. 1007 ¶¶ 101–
102. By forwarding the e–mail, the member is expressing approval of that
business.
Patent Owner asserts further that Paul does not disclose whether it is
the same business sending (i) an e–mail message to a member in the e–mail
match embodiment, and (ii) an e–mail message to a member for forwarding
in the refer-a-friend embodiment. Patent Owner asserts that, unless it is the
same business, there can be no bi-lateral endorsement, as required by
independent claim 2. Patent Owner’s assertion is unavailing, because (i) we
have explained above why one of ordinary skill would have understood the
two tool options as being used together, and (ii) even without the direct e–
mail campaign, in the refer-a-friend campaign, the business is approving the
member by sending to the e–mail to the member, and the member is
approving the business by forwarding the same e–mail to a friend.
Patent Owner asserts additionally that Paul does not disclose
“providing a subsidy program to the subscriber based on the match,” as
required in independent claim 2. According to Patent Owner, the two
campaign methods cannot be read together, because Paul discloses explicitly
that the “refer-a-friend” message is sent to each and every member, which is
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contrary to the direct e–mail campaign in which e–mails are only sent to a
subset of members.
We do not agree with Patent Owner’s assertions because, as explained
previously, one of ordinary skill would have understood the two tool options
as being used together, such that the refer-a-friend e–mail would only be
sent to a subset of members.
ii. Patent Owner’s Contentions Regarding
Independent Claim 20
Patent Owner asserts that Paul does not disclose “the intermediary
having a processor configured to . . . determine a bi-lateral endorsement by
the qualified subscriber and the at least one advertiser,” as recited in
independent claim 20. PO Resp. 66–67. Patent Owner contends that
Petitioner, in asserting Paul discloses this limitation, improperly combines
the unrelated direct e–mail campaign and “refer-a-friend” campaign. Patent
Owner also contends that Paul does not disclose a member “electing” to
receive a particular e–mail campaign from an advertiser. Further, Patent
Owner contends that that Paul does not disclose whether it is the same
business sending (i) an e–mail message to a member in the direct e–mail
campaign and (ii) an e–mail message to a member for forwarding in the
“refer-a-friend” campaign. Patent Owner asserts that unless it is the same
business, there can be no bi-lateral endorsement, as required by independent
claim 20.
Patent Owner’s contentions substantially are similar to Patent
Owner’s contentions regarding independent claim 2. For the reasons
discussed with respect to independent claim 2, we do not agree with Patent
Owner.
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4. Conclusion
For the foregoing reasons, we find that Petitioner has proven, by a
preponderance of the evidence, that claims 2–15, 20–23, and 29 are
unpatentable under 35 U.S.C. § 102(b) as anticipated by Paul.
E. Claims 1–19, 23–25, and 29 – Failing to Comply with
Written Description Requirement
Petitioner contends that claims 1–19, 23–25, and 29 of the ’516 patent
are unpatentable under 35 U.S.C. § 112, first paragraph, for failing to
comply with the written description requirement. Pet. 73–80; Reply 13–15.
Specifically, Petitioner contends the claim terms “endorsement tag” and
“token.” do not have adequate written description support. Patent Owner
disagrees with Petitioner’s assertions and relies on the Declaration of Dr.
Rhyne. PO Resp. 17–22 (citing Ex. 2039).
1. Principles of Law
“[T]he purpose of the written description requirement is to ‘ensure
that the scope of the right to exclude, as set forth in the claims, does not
overreach the scope of the inventor's contribution to the field of art as
described in the patent specification.’ ” Ariad Pharms., Inc. v. Eli Lilly and
Co., 598 F.3d 1336,1353–54 (Fed. Cir 2010) (en banc) (quoting Univ. of
Rochester v. G.D. Searle & Co., 358 F.3d 916, 920 (Fed.Cir.2004)). To
satisfy the written description requirement, the focus is not just on whether
the claims are supported by the specification, but whether one of ordinary
skill in the art reasonably would conclude from the original disclosure that
the inventor had possession of the claimed invention. See, e.g., Ariad
Pharms., 598 F.3d at 1351. The written description requirement is met if the
specification shows that the inventor has invented what is claimed—that is,
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the inventor had possession of it. Vas–Cath Inc. v. Mahurkar, 935 F.2d
1555, 1563–64 (Fed.Cir.1991).
2. “endorsement tag”
Claims 1, 11, and 14 each recite “endorsement tag.” The ’144
application, which issued into the ’516 patent, does not recite expressly
“endorsement tag.” Petitioner asserts that “endorsement tag” should be
construed as an “executable link, such as a hyperlink,” and that
“endorsement tag” must be related to an advertiser linked with advertising
content, transmitted from a qualified subscriber to a recipient, and be
capable of being executed to produce a signal, as required by independent
claim 1. Petitioner asserts that the ’144 application does not disclose any
such feature with all the aforementioned functionalities. Pet. 73–75. Patent
Owner agrees with Petitioner’s proposed construction of “endorsement tag,”
and asserts that, because the ’144 application provides adequate written
description support for a hyperlink that includes all of the aforementioned
functionalities of an endorsement tag, it must also provide adequate written
description support for the claim limitation “endorsement tag.” PO Resp
19–22. Both parties’ contentions are misplaced. The question is not
whether the ’144 application provides adequate written description support
for a definition of or the features of “endorsement tag.” The question is
whether given the ’144 application, one of ordinary skill would reasonably
conclude that the inventor had possession of “endorsement tag,” because the
list of features of an “endorsement tag” disclosed in the ’144 application
would allow one of ordinary skill to recognize that the inventor had invented
the claimed “endorsement tag.” Although the Specification does not need to
use the term “endorsement tag” or otherwise describe exactly the subject
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matter claimed, “the description must clearly allow persons of ordinary skill
in the art to recognize that [the inventor] invented what is claimed”—that is,
an “endorsement tag.” Vas-Cath, 935 F.2d at 1563 (quoting In re Gosteli,
872 F.2d 1008, 1012 (Fed.Cir.1989).
There is no question that the ’144 application does not recite the
precise words “endorsement tag.” Although “endorsement tag” is a claim
limitation, it was added by amendment during prosecution and, thus, even
the original claims submitted as a part of the ’144 application do not recite
the precise words “endorsement tag.” Accordingly, the proper inquiry then
is whether, after reading the ’144 application, any other disclosure would
lead one of ordinary skill to reasonably conclude that the inventor had
possession of “endorsement tag.”
Patent Owner asserts the ’144 application’s disclosure of “an
executable link, such as a hyperlink,” associated with all of the relevant
endorsement functionalities, is just such a disclosure. Accordingly, Patent
Owner’s position appears to be that one of ordinary skill, when seeing the
disclosure of “an executable link, such as a hyperlink,” associated with all of
the relevant endorsement functionalities, would know that such a disclosure
is the equivalent of a “endorsement tag,” even though the ’144 application
does not recite the term “endorsement tag.” Perhaps even more
fundamentally, Patent Owner’s position appears to be that one of ordinary
skill, when seeing the disclosure of “an executable link, such as a
hyperlink,” would know that such a disclosure is the equivalent of a “tag,”
even though the ’144 application does not recite the term “tag.”
We are not persuaded because Patent Owner has not set forth
sufficient evidence to persuasively outweigh Petitioner’s position. There is
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no question that the ’144 application discloses “an executable link, such as a
hyperlink,” for example, at steps 58, 64, and 66 of Figure 4, and paragraphs
21, 28, and 30. Patent Owner fails to take the next step, however, and show
that one of ordinary skill, when seeing the disclosure of “an executable link,
such as a hyperlink,” would know that such a disclosure is the equivalent of
a “tag.” As the ’114 application does not make such a showing, Patent
Owner needed to provide evidence to show persuasively such equivalency
so as to outweigh Petitioner’s analysis and evidence. The only other
evidence Patent Owner provides in support of its position, however, is
certain paragraphs from the Declaration of Dr. Rhyne. We have reviewed
those paragraphs, and they only serve to underscore Patent Owner’s
assertion that the ’144 application provides adequate written description
support for “an executable link, such as a hyperlink” (Ex. 2039 ¶¶ 263–271),
which is not enough to show possession of “tag.”
At oral argument, Patent Owner asserted that because an inventor is
free to be their own lexicographer, we should decide in Patent Owner’s
favor. Patent Owner’s assertions are misplaced, because although an
inventor certainly is free to be their own lexicographer, such freedom is
usually relevant in the context of definitions, i.e., if an inventor explicitly
sets forth a definition in the Specification, such a definition controls.
Accordingly, if the Specification had specifically set forth a definition that a
“tag” meant “an executable link, such as a hyperlink,” the written
description requirement would clearly have been met. That, however, is not
the case.
Tangentially, Patent Owner may have been asserting that when one of
ordinary skill in the art reads one term in the Specification, and knows that
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another term not in the Specification is the equivalent of that term, the
written description requirement is met. We agree, and yet that is the
fundamental reason we are not persuaded by Patent Owner’s position.
Patent Owner has not shown persuasively, either through argument or
evidence, that one of ordinary skill would read “an executable link, such as a
hyperlink,” and know that “tag’ was an equivalent term.
Patent Owner asserts further that the burden is on Petitioner to show
lack of written description, and because Petitioner has only provided
attorney argument, and no evidence, they cannot meet that burden. We are
not persuaded, however, because Petitioner provided the most persuasive
evidence of all; that the ’114 application does not recite “endorsement tag.”
After considering Petitioner’s and Patent Owner’s positions, as well as
their supporting evidence, we determine that, by a preponderance of the
evidence, Petitioner has shown that the ’114 application does not provide
sufficient written description support under 35 U.S.C. § 112, first paragraph,
for “endorsement tag,” as recited in claims 1, 11, and 14. Claims 8–10, 12,
and 23 depend ultimately from independent claim 1.
3. “token”
Claims 2, 3, 7, 13, 15–17, and 29 each recite “token.” The ’144
application, which issued into the ’516 patent, does not recite expressly
“token.” Petitioner asserts that “token” should be construed as an
“executable link, such as a hyperlink,” and that “token” must be related to an
advertiser linked with advertising content, transmitted from a qualified
subscriber to a recipient, and be capable of being executed to produce a
signal, as required by independent claim 2. Petitioner asserts that the ’144
application does not disclose any such feature with all the aforementioned
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functionalities. Pet. 78–80. Patent Owner agrees with Petitioner’s proposed
construction of “token,” and asserts that because the ’144 application
provides adequate written description support for a hyperlink that includes
all of the aforementioned functionalities of an endorsement tag, it must also
provide adequate written description support for the claim limitation
“token.” PO Resp. 22. In other words, Patent Owner presents the same
arguments as set forth above for “endorsement tag.” To that end, our
analysis is the same as set forth above for “endorsement tag,” and thus need
not be repeated here.
After considering Petitioner’s and Patent Owner’s positions, as well as
their supporting evidence, we determine that, by a preponderance of the
evidence, Petitioner has shown that the ’114 application does not provide
sufficient written description support under 35 U.S.C. § 112, first paragraph,
for “endorsement tag,” as recited in claims 2, 3, 7, 13, 15–17, and 29.
Claims 4–7, 18, 19, 24, and 25 depend ultimately from independent claim 2.
4. Conclusion
After considering Petitioner’s and Patent Owner’s positions, as well as
their supporting evidence, we determine that, by a preponderance of the
evidence, Petitioner has shown that claims 1–19, 23–25, and 29 are
unpatentable under 35 U.S.C. § 112, first paragraph, for failing to provide
adequate written description support for the claim terms “endorsement tag”
and “token.”
F. 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
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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
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
2–15, 20–23, and 29 of the ’516 patent are unpatentable under 35 U.S.C.
§ 102(b) as anticipated by Paul.
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Petitioner, however, has not proven, by a preponderance of the
evidence, that claims 1–15, 20–23, and 29 of the ’516 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 1–27 and 29 of the ’516 patent are unpatentable under 35 U.S.C.
§ 103(a) as obvious over the Ratsimor paper and Paul.
Petitioner has proven, by a preponderance of the evidence, that claims
1–19, 23–25, and 29 of the ’516 patent are unpatentable under 35 U.S.C.
§ 112, first paragraph, for failing to provide adequate written description
support for the claim terms “endorsement tag” and “token.”
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 1–25 and 29 of U.S. Patent No. 7,664,516 B2 are
unpatentable;
FURTHER ORDERED that Petitioner has not demonstrated by a
preponderance of the evidence that claims 26 and 27 of U.S. Patent No.
7,664,516 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
CBM2013-00035@fr.com