Blue Calypso, LLC. v. Groupon, Inc. , 815 F.3d 1331 ( 2016 )

United States Court of Appeals
for the Federal Circuit
______________________
BLUE CALYPSO, LLC,
Appellant
v.
GROUPON, INC.,
Cross-Appellant
______________________
2015-1391, 2015-1393, 2015-1394
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
CBM2013-00033, CBM2013-00034.
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GROUPON, INC.,
Appellant
v.
BLUE CALYPSO, LLC,
Appellee
______________________
2015-1396
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. CBM2013-
00044.
2 BLUE CALYPSO, LLC v. GROUPON, INC.
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BLUE CALYPSO, LLC,
Appellant
v.
GROUPON, INC.,
Cross-Appellant
______________________
2015-1397, 2015-1398
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in No.
CBM2013-00046.
---------------------------------------------------------------------------
BLUE CALYPSO, LLC,
Appellant
v.
GROUPON, INC.,
Cross-Appellant
______________________
2015-1399, 2015-1401
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in No.
CBM2013-00035.
______________________
Decided: March 1, 2016
______________________
BLUE CALYPSO, LLC v. GROUPON, INC. 3
DAVID BRANDON CONRAD, Fish & Richardson P.C.,
Dallas, TX, argued for appellant. Also represented by
CARL EDWARD BRUCE; JOHN C. PHILLIPS, San Diego, CA;
JOHN A. DRAGSETH, Minneapolis, MN.
JEANNE MARIE GILLS, Foley & Lardner LLP, Chicago,
IL, argued for appellee and cross-appellant. Also repre-
sented by JASON JON KEENER, AARON JACOB WEINZIERL.
KAKOLI CAPRIHAN, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA,
argued for intervenor Michelle K. Lee. Also represented
by THOMAS W. KRAUSE, SCOTT WEIDENFELLER, BENJAMIN
T. HICKMAN.
______________________
Before REYNA, SCHALL, and CHEN, Circuit Judges.
Opinion for the court filed by Circuit Judge CHEN.
Opinion dissenting-in-part filed by Circuit Judge SCHALL.
CHEN, Circuit Judge.
These related appeals arise from five Covered Busi-
ness Method (CBM) reviews of five patents owned by Blue
Calypso, LLC (Blue Calypso): U.S. Patent No. 7,664,516
(the ’516 patent), U.S. Patent No. 8,155,679 (the ’679
patent), U.S. Patent No. 8,457,670 (the ’670 patent), U.S.
Patent No. 8,438,055 (the ’055 patent), and U.S. Patent
No. 8,452,646 (the ’646 patent) (collectively, the Blue
Calypso Patents). The United States Patent and Trade-
mark Office, Patent Trial and Appeal Board (Board)
granted the petitions, filed by Groupon, Inc. (Groupon),
for review under the transitional program for covered
business method patents. In its final written decisions,
the Board found various claims of the Blue Calypso Pa-
tents unpatentable under 35 U.S.C. § 102. The Board
further found certain claims of the ’516 patent unpatent-
4 BLUE CALYPSO, LLC v. GROUPON, INC.
able under § 112. In addition, the Board rejected
Groupon’s remaining argument that additional claims
were unpatentable under 35 U.S.C. § 103.
Blue Calypso now appeals the Board’s decisions to re-
view its patents, asserting that they are not “covered
business method” patents. Blue Calypso also appeals the
Board’s unpatentability determinations. In its cross-
appeal, Groupon contends that the Board erred in reject-
ing its obviousness arguments. For the reasons stated in
this opinion, we affirm-in-part and reverse-in-part.
BACKGROUND
I
The Blue Calypso Patents are all related and general-
ly describe a peer-to-peer advertising system that uses
mobile communication devices. The ’516 patent 1 explains
how advertising can be made to be more effective, com-
pared to traditional broadcast advertising, when an
advertiser enlists one of its customers to electronically
forward advertisements to his like-minded peers. See ’516
patent, 1:31–35. The ’516 patent further discloses the use
of a “subsidy program” to induce customers (“subscribers”)
to increase exposure of an advertisement. Id., Abstract.
An advertiser using this system may customize its subsi-
1 The ’516 patent was the first filed. The ’679 patent
issued as a continuation-in-part of the application that
issued as the ’516 patent. The remaining three patents
claim priority to the application that issued as the ’679
patent: the ’670 patent (continuation), the ’055 patent
(continuation-in-part); and the ’646 patent (continuation-
in-part). Unless stated otherwise, all citations to the
record and the parties’ briefs refer to the documents filed
in Blue Calypso’s appeal, and Groupon’s cross-appeal, of
the Board’s decision relating to the ’516 patent, Case Nos.
2015-1399 and 2015-1401.
BLUE CALYPSO, LLC v. GROUPON, INC. 5
dy program by specifying the nature of the subsidy or
incentive—e.g., product discounts or rewards points—and
by identifying necessary demographic criteria that a user
must meet before being eligible for the advertiser’s subsi-
dy program. Id. at 3:21–27; see also id. at 3:15–20. A
user of a mobile communication device can then subscribe
to that program by creating a profile that contains demo-
graphic information. Id. at 4:11–16. After the subscrib-
ers create their profiles, the advertiser can then
determine which subscribers satisfy the advertiser’s
criteria and are therefore eligible for the subsidy program.
Id. at 4:33–35. Each subscriber may then select from the
subsidy programs for which it qualified. Id. at 4:40–46.
Only after this mutual (“bidirectional”) selection does an
advertiser transmit advertisements to that subscriber.
Id. at 4:49–5:16. The advertisement includes a link,
which, when executed, connects the subscriber to the
advertiser’s website for additional information, offers, or
coupons. Id. at 5:16–22. The subscriber, using a “source
communication device” may then forward this advertise-
ment to his peer’s “destination communication device.”
Id. at 2:30–37.
Neither party argues the challenged claims separate-
ly. We therefore use claim 2 of the ’516 patent as repre-
sentative:
2. A method for providing access to an advertise-
ment from an advertiser to a source communica-
tion 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 sub-
scriber, the method comprising the steps of:
6 BLUE CALYPSO, LLC v. GROUPON, INC.
comparing a desired demographic profile to a sub-
scriber 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; 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 destina-
tion 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.
Id. at 7:45–8:3 (claim 2) (emphases added).
II
Groupon petitioned the Board for CBM review of the
Blue Calypso Patents under § 18(a) of the Leahy-Smith
America Invents Act (AIA). Groupon asserted that the
claims were unpatentable under either 35 U.S.C. § 102 or
§ 103. In addition, Groupon asserted that a number of
claims of the ’516 patent were unpatentable for failing to
satisfy the written description requirement of 35 U.S.C.
§ 112. After examining the claims, the Board concluded
that they met the statutory definition of a “covered busi-
ness method patent,” granted the petition, and instituted
review.
BLUE CALYPSO, LLC v. GROUPON, INC. 7
In its final written decisions, the Board found that
claims 2–15, 20–23, and 29 of the ’516 patent; claims 7–16
and 23–27 of the ’679 patent; claims 1–5 of the ’670 pa-
tent; and claims 1, 4–6, 10, and 14 of the ’055 patent were
all anticipated by United States Patent Application
Publication No. 2002/0169835 (Paul). In addition, the
Board found that claims 1–19, 23–25, and 29 of the ’516
patent were unpatentable under 35 U.S.C. § 112 as lack-
ing adequate written description. The Board then reject-
ed Groupon’s assertions that claims 4–9 of the ’646
patent, as well as additional claims from the remaining
four patents, were unpatentable as anticipated or obvious
in light of a report published on a webpage by a graduate
student at the University of Maryland Baltimore County
Department of Computer Science and Electrical Engineer-
ing (Ratsimor). The Board found that Groupon failed to
prove that Ratsimor was sufficiently publicly available to
qualify as prior art.
Blue Calypso filed a timely appeal from the Board’s
decision, Groupon filed a cross-appeal, and the Director
intervened for the limited purpose of defending the
Board’s determination that the challenged patent claims
are “covered business methods.” We have jurisdiction
under 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
We review the Board’s conclusions of law de novo and
its findings of fact for substantial evidence. 5 U.S.C.
§ 706(2)(E); In re Sullivan, 498 F.3d 1345, 1350 (Fed. Cir.
2007). “Substantial evidence is more than a mere scintil-
la. It means such relevant evidence as a reasonable mind
might accept as adequate to support a conclusion.” Con-
sol. Edison Co. of N.Y. v. NLRB, 305 U.S. 197, 217 (1938).
In this appeal, Blue Calypso raises three primary ar-
guments. First, Blue Calypso argues that the Board
should not have conducted CBM review of the patents at
issue because, in Blue Calypso’s view, they do not claim
8 BLUE CALYPSO, LLC v. GROUPON, INC.
“covered business methods.” Second, Blue Calypso as-
serts that the Board incorrectly found that Paul antici-
pated many of Blue Calypso’s patent claims. Finally,
Blue Calypso objects to the Board’s finding that the
contested claims of the ’055 were unpatentable for lacking
written description support. In its cross-appeal, Groupon
contends that the Board erred in concluding that Ratsi-
mor was not prior art.
I. Eligibility for CBM Review
Blue Calypso begins by arguing that the PTO and the
Board exceeded their statutory authority by interpreting
the statutory CBM definition in an overly broad way that
improperly sweeps in Blue Calypso’s patents. In Blue
Calypso’s view, the Board never should have instituted
the CBM review of its patents. Although the Board’s
decision to institute a CBM review is, per the AIA, “final
and nonappealable,” see AIA § 18(a)(1); 35 U.S.C. § 324(e),
we have held that the question of whether a challenged
patent claim is a CBM relates to the Board’s authority to
issue a final decision in a CBM review. Versata Dev. Grp.,
Inc. v. SAP Am., Inc. (Versata II), 793 F.3d 1306, 1318-23
(Fed. Cir. 2015). Thus, because we have jurisdiction to
review the Board’s final decisions in CBM reviews, see
AIA § 18(a)(1); 35 U.S.C. § 329, the AIA does not preclude
us from reviewing the Board’s conclusion that the chal-
lenged patent claims are “covered business methods” that
lack any “technological invention,” Versata II, 793 F.3d at
1323.
A
CBM review is limited to patents “that claim[] a
method or corresponding apparatus for performing data
processing or other operations used in the practice, ad-
ministration, or management of a financial product or
service, except that the term does not include patents for
technological inventions.” AIA § 18(d)(1). Blue Calypso
asserts that its patents are not CBM patents because they
BLUE CALYPSO, LLC v. GROUPON, INC. 9
relate to a method for managing and distributing adver-
tising content, which is not “a financial product or service”
that traditionally originated in the financial sector, e.g.,
banks, brokerages, holding companies and insurance
firms. These arguments are foreclosed by our recent
decisions in Versata II and in SightSound Techs., LLC v.
Apple Inc., 809 F.3d 1307 (Fed. Cir. 2015).
In Versata II, we examined the statutory definition of
CBM patents, the relevant legislative history, and the
PTO’s statements in its Notice of Final Rulemaking and
concluded that the statute “on its face covers a wide range
of finance-related activities” and “[t]he statutory defini-
tion makes no reference to financial institutions as such,
and does not limit itself only to those institutions.” 793
F.3d at 1325. In reaching this conclusion we referred to
the PTO’s Notice of Final Rulemaking, which observed
that “the legislative history supported the proposition
that the definition [of CBM] be broadly interpreted to
‘encompass patents claiming activities that are financial
in nature, incidental to a financial activity or complemen-
tary to a financial activity.’” Id. at 1324 (quoting Transi-
tional Program for Covered Business Method Patents—
Definitions of Covered Business Method Patent and
Technological Invention, 77 Fed. Reg. 48734, 48735 (Aug.
14, 2012)). More recently, in SightSound, we agreed with
the Board that “a ‘financial activity’ not directed to money
management or banking can constitute a ‘financial prod-
uct or service’ within the meaning of the statute.” 809
F.3d at 1315. Here, the Board declined to limit the appli-
cation of CBM review to patent claims tied to the finan-
cial sector. This determination is consistent with our
recent case law.
Blue Calypso alternatively contends that the chal-
lenged claims fall within the technological invention
exception for CBM review because the claims are comput-
er-based and contemplate hardware, software, a network,
and communication devices. Versata II also addressed the
10 BLUE CALYPSO, LLC v. GROUPON, INC.
technological inventions exception. Congress created the
technological inventions exception in § 18(d)(1), but
expressly delegated authority to the PTO to provide a
definition of “technological inventions” that would be
excluded from CBM review. AIA § 18(d)(2) (“[T]he Direc-
tor shall issue regulations for determining whether a
patent is for a technological invention.”). In Versata II,
we examined the resulting regulation, 37 C.F.R.
§ 42.301(b), which explains that a patent claims a techno-
logical invention if “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.” 793 F.3d at 1326 (quoting 37 C.F.R.
§ 42.301(b)). We also turned to the PTO’s Office Patent
Trial Practice Guide, which lists certain claim drafting
techniques that are insufficient to render a patent a
technological invention: “(1) mere ‘recitation of known
technologies’; (2) ‘reciting the use of known prior art
technology’; and (3) ‘combining prior art structures to
achieve the normal, expected, or predictable results of
that combination.’” Id. (quoting 77 Fed. Reg. 48756,
48764 (Aug. 14, 2012)). Ultimately, we rejected the
argument that merely reciting the use of a computer
would satisfy the technological invention exception,
noting that “the presence of a general purpose computer
to facilitate operations through uninventive steps does not
change the fundamental character of an invention.” Id. at
1327 (citing Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.
Ct. 2347 (2014)); see also SightSound, 809 F.3d at 1315
(holding that Versata II supports the conclusion that “a
combination of known technologies does not amount to a
‘technological invention’ within the meaning of the stat-
ute”). Accordingly, the Board correctly rejected Blue
Calypso’s proposed interpretation of “technological inven-
tion.”
BLUE CALYPSO, LLC v. GROUPON, INC. 11
B
This leaves the question of whether the Board correct-
ly applied the definitions of “covered business method”
and “technological invention” to the Blue Calypso Patents.
We review the Board’s reasoning under the arbitrary and
capricious standard and its factual determinations under
the substantial evidence standard. SightSound, 809 F.3d
at 1315.
1
In determining that the Blue Calypso Patents are
CBM patents, the Board reviewed the claims, noting, for
example, claim 1’s recitation of “subsidizing the qualified
subscriber according to the chosen subsidy program,” see
’516 patent, 7:39–40 (claim 1). The Board construed the
claim term “subsidy” as “financial assistance given by one
to another.” Groupon, Inc. v. Blue Calypso, LLC, No.
CBM2013-00035, 2013 WL 8538881, at *5 (PTAB Dec. 19,
2013) (Institution Decision). 2 The Board further observed
2 The “subsidy” claim term is present in all chal-
lenged claims of the patents except the ’055 patent and
the ’646 patent. Those claims instead refer to an incen-
tive program. See ’055 patent, 15:9–10 (claim 1) (“incen-
tivizing the first qualified subscriber according to the
incentive program”); see also ’646 patent, 16:9–16
(“transmitting an incentive program . . . for participation
of the first qualified subscriber; and, incentivizing the
first qualified subscriber . . . according to the incentive
program”). Similar to “subsidy,” the Board construed
“incentive” as “a reward provided to a subscriber based on
an endorsement.” See Groupon, Inc. v. Blue Calypso,
LLC, CBM 2013-00046, 2014 WL 7273565, at *5 (PTAB
Dec. 17, 2014) (adopting the definition explicitly provided
in the ’055 patent); see ’055 patent, 3:20–21 (“‘Incentive’: a
reward provided to a subscriber based on an endorse-
12 BLUE CALYPSO, LLC v. GROUPON, INC.
that the subsidy concept was “central to the claims”
because “without the subsidy or subsidy program, there is
no incentive for a subscriber to perform the other steps in
the claims.” Id. at *7. Based on this understanding, the
Board concluded that the challenged claims were financial
in nature and therefore subject to CBM review under
§ 18(d)(1). The Board reiterated this reasoning in its final
written decision.
We agree. Significantly, Blue Calypso has not chal-
lenged the Board’s interpretation of subsidy as “financial
assistance given by one to another.” Thus, under this
unchallenged interpretation, the claims of the Blue Ca-
lypso Patents are directed to methods in which advertis-
ers financially induce “subscribers” to assist their
advertising efforts.
In its Reply Brief, Blue Calypso asserts that we
should reverse because the claims of the Blue Calypso
Patents are not as “blatantly money-related” as the pa-
tent at issue in Versata II. To support this argument,
Blue Calypso points to the titles of the Blue Calypso
Patents and the title of the patent in Versata II. This
argument fails, however, because § 18(d)(1) directs us to
examine the claims when deciding whether a patent is a
CBM patent. Blue Calypso also argues that, based on the
Blue Calypso Patents’ specifications, the “subsidy” recited
in the claims need not be financial in nature. This argu-
ment is also unsuccessful. To the extent that Blue Calyp-
so is objecting to the Board’s interpretation of the
“subsidy” claim term, Blue Calypso has waived that
argument by failing to challenge the Board’s claim con-
ment.”). This does not alter our conclusion that the Board
correctly concluded that the challenged claims are eligible
for CBM review. As the Board acknowledged, “the ’055
patent repeatedly, and almost exclusively discloses ‘incen-
tive’ and ‘incentive program’ in a financial context.” Id.
BLUE CALYPSO, LLC v. GROUPON, INC. 13
struction in its opening brief. 3 See Becton Dickinson &
Co. v. C.R. Bard, Inc., 922 F.2d 792, 800 (Fed. Cir. 1990)
(“[A]n issue not raised by an appellant in its opening brief
. . . is waived.”).
We are also unpersuaded by Blue Calypso’s argument
that the Board has acted in an arbitrary or capricious
manner through an “unpredictable application” of the
CBM definition. Appellant Reply Br. 3. For this argu-
ment, Blue Calypso relies on a handful of Board decisions
declining to institute CBM review on patents unrelated to
the Blue Calypso Patents. See FedEx Corp. v. Katz Tech.
Licensing, L.P., CBM2015-00053 (PTAB June 29, 2015);
Sega of Am., Inc. v. Uniloc USA, Inc., CBM2014-00183,
2015 WL 1090176 (PTAB Mar. 10, 2015); Salesforce.com,
Inc. v. Applications in Internet Time LLC, CBM2014-
00168 (PTAB Feb. 2, 2015); J.P. Morgan Chase & Co. v.
Intellectual Ventures II LLC, CBM 2014-00160 (Jan. 29,
2015). Contrary to Blue Calypso’s argument, each of
these cases properly focuses on the claim language at
issue and, finding nothing explicitly or inherently finan-
cial in the construed claim language, declines to institute
CBM review. In contrast, the claims at issue in the
instant case have an express financial component in the
form of a subsidy, or financial inducement, that encour-
ages consumers to participate in the distribution of adver-
tisements. As the Board noted, the subsidy is central to
the operation of the claimed invention.
3 Blue Calypso essentially argues that the specifica-
tion recites “coupons” and “reward codes” as the potential
subsidy in the subsidy program and that these types of
subsidies are not financial. Even to the extent that we
could consider Blue Calypso’s claim construction argu-
ment, we find no error in the Board’s conclusion that
these also qualify as “financial assistance given by one to
another.”
14 BLUE CALYPSO, LLC v. GROUPON, INC.
Accordingly, none of Blue Calypso’s arguments per-
suades us that the Board’s reasoning is arbitrary or
capricious or that its findings are not supported by sub-
stantial evidence. We therefore affirm the Board’s conclu-
sion that the challenged claims of the Blue Calypso
Patents meet the statutory definition of CBM patent.
2
Blue Calypso next contends that the claims represent
technological inventions because they are directed to a
solution that remedies technological limitations of tradi-
tional broadcast advertising. We disagree. Claim 1 of the
’516 patent, for example, recites “a system comprising a
network, a source communication device, a destination
communication device and an intermediary connected to
the network.” ’516 patent, 7:8–10. These elements are
nothing more than general computer system components
used to carry out the claimed process of incentivizing
consumers to forward advertisement campaigns to their
peers’ “destination communication device[s].” Blue Ca-
lypso has not pointed to any technological aspect in the
claims that rises above the general and conventional.
Thus, just as in Versata II, conventional computer compo-
nents cannot change the fundamental character of Blue
Calypso’s claims.
*****
Because the Board’s decisions that the patents are
CBM patents that do not claim a technological invention
are not arbitrary or capricious and are supported by
substantial evidence, we conclude that the Board acted
within its authority in conducting CBM review of the
challenged claims of the Blue Calypso Patents.
II. Anticipation
Blue Calypso next argues that the Board erred in
finding that Paul anticipates many of Blue Calypso’s
claims. Anticipation is a question of fact that we review
BLUE CALYPSO, LLC v. GROUPON, INC. 15
for substantial evidence. Kennametal, Inc. v. Ingersoll
Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015).
Under 35 U.S.C. § 102(b), 4 a prior art reference will
anticipate if it “disclose[s] each and every element of the
claimed invention . . . arranged or combined in the same
way as in the claim.” In re Gleave, 560 F.3d 1331, 1334
(Fed. Cir. 2009) (citations and internal quotation marks
omitted). “However, a reference can anticipate a claim
even if it ‘d[oes] not expressly spell out’ all the limitations
arranged or combined as in the claim, if a person of skill
in the art, reading the reference, would ‘at once envisage’
the claimed arrangement or combination.” Kennametal,
780 F.3d at 1381 (quoting In re Petering, 301 F.2d 676,
681 (C.C.P.A. 1962)).
In finding that Paul anticipates several of Blue Ca-
lypso’s patent claims, the Board made numerous factual
determinations. First, the Board found that Paul disclos-
es “an Internet-based e-mail communications system that
broadcasts communications to members.” Groupon, Inc.
v. Blue Calypso, LLC, CBM 2013-00035, 2014 WL
7273563, at *16 (PTAB Dec. 17, 2014) (Final Written
Decision). The Board further explained that this commu-
nications system consisted of numerous “tools,” including
one that “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,” and
another tool that “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.” Id. Both of these tools incorporated the use of
4 Because the claims at issue in this case have ef-
fective filing dates prior to March 16, 2013, we apply the
pre-AIA § 102(b).
16 BLUE CALYPSO, LLC v. GROUPON, INC.
a hyperlink for viewers to click to access the advertising
website.
Blue Calypso does not dispute that Paul discloses
both of these tools or that Paul teaches the other elements
in the claims of the Blue Calypso Patents. 5 Instead, Blue
Calypso argues only that these two tools—the targeted-
marketing “campaigns” tool and the refer-a-friend tool—
are separate and distinct and that the Board’s anticipa-
tion finding erroneously combined these distinct tools
when such a combination is not explicitly found in Paul.
Blue Calypso points to Figure 5 of Paul, which illustrates
that the “campaigns” tool 108, used to create targeted
marketing campaigns, is a separate, independent tool
from the “refer a friend campaign” tool 126. Blue Calypso
contends that this separation precludes combination of
the two tools to arrive at the claimed invention.
5 Blue Calypso also does not argue any distinction
between the numerous claims that the Board found
unpatentable in view of Paul.
BLUE CALYPSO, LLC v. GROUPON, INC. 17
Paul Reference, Figure 5 (annotations added).
The Board read Paul differently. The Board first dis-
agreed with Blue Calypso’s characterization of Paul as
disclosing multiple, separately isolated methods. The
Board noted Paul’s disclosure that a user “is enabled to
conduct direct marketing campaigns using a computer
program generally identified as a ‘campaign manager’
herein.” Paul, ¶ 51. In addition, the Board pointed to
Paul’s explanation that its system empowers users to
“have the ability to create numerous types of e-mail
campaigns, such as ‘refer a friend’ campaign, through the
campaign manager program.” Id. ¶ 50. Based on these
disclosures, the Board concluded that “the campaign
manager computer program is a single computer program
that provides tools options for the user to develop the
campaigns.” Final Written Decision, at *17.
The Board then recognized that although Paul did not
explicitly disclose an example of a particular campaign
that uses the “campaigns” and “refer a friend campaign”
tools together, it did contemplate combining the disclosed
18 BLUE CALYPSO, LLC v. GROUPON, INC.
functionalities. In particular, the Board relied on Paul’s
disclosure that the various disclosed features of Paul’s
invention “may be produced in a single computer system
having . . . elements or means combining the performance
of any of the functions or steps disclosed or claimed . . . .”
Paul, ¶ 29 (emphasis added). Thus, the Board concluded
that
as different tool options of the campaign manager
in the e-mail communications system, one of ordi-
nary skill in the art would understand that the di-
rect e-mail campaign tool option was to be used in
conjunction with the “refer-a-friend” campaign
tool option to send “refer-a-friend” email message
incentives to a subset of the members based on
member demographic characteristics. To deter-
mine 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” email to all
members. We do not find that one of ordinary skill
in the art would have understood Paul to be so re-
strictive.
Final Written Decision, at *18. The Board also observed
that the declaration of Groupon’s expert, Dr. Joshi, also
supported this conclusion. See Joint Appendix (J.A.)
1643, ¶ 93 (opining that these disclosures in Paul estab-
lished “that one of ordinary skill in the art would under-
stand this to mean that a [user] can use the campaign
manager . . . in order to send targeted referral emails”).
On appeal, Blue Calypso asserts that the Board’s
analysis runs contrary to our case law requiring that the
purportedly anticipatory reference must not only disclose
all elements of the claim, but must also disclose those
elements “arranged as in the claim.” See, e.g., Net Mon-
eyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir.
2008) (reversing a district court’s summary judgment of
BLUE CALYPSO, LLC v. GROUPON, INC. 19
invalidity for anticipation because the defendant did not
present any argument or evidence demonstrating that the
reference contained any disclosure of the limitations
arranged as in the claim). This case is distinguishable
from Net MoneyIN because, in contrast to the reference in
that case, Paul explicitly contemplates the combination of
the disclosed functionalities. In addition, the Board
reviewed expert testimony that supported its factual
determination that one of skill in the art would read the
reference as disclosing the ability to combine the tools to
arrive at the invention recited in the Blue Calypso Pa-
tents. Both of these key factors were absent from Net
MoneyIN.
These distinctions demonstrate that the present case
is more akin to our decision in Kennametal, where we
recognized that “a reference can anticipate a claim even if
it ‘d[oes] not expressly spell out’ all the limitations ar-
ranged or combined as in the claim, if a person of skill in
the art, reading the reference, would ‘at once envisage’ the
claimed arrangement or combination.” 780 F.3d at 1381
(quoting In re Petering, 301 F.2d at 681). The prior art
reference in Kennametal disclosed a cutting tool assem-
bled by combining different classes of materials with
multiple options for each class. Id. at 1379–80. The
disputed claims were directed to a specific combination of
these materials disclosed in the reference. Id. at 1379.
The specific combination recited in the claims of the
disputed patent was not explicitly disclosed in the prior
art reference. Id. The party challenging the claim’s
patentability argued, and the Board accepted, that the
reference anticipated each of the numerous possibilities
that resulted from the permutations of the options dis-
closed in the reference. Id. at 1379–80. In affirming the
Board’s anticipation finding, we noted that a reference
need not always include an express discussion of the
actual combination to anticipate. Id. at 1383. Instead, a
20 BLUE CALYPSO, LLC v. GROUPON, INC.
reference may still anticipate if that reference teaches
that the disclosed components or functionalities may be
combined and one of skill in the art would be able to
implement the combination. Id.; see also Bristol-Myers
Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1379
(Fed. Cir. 2001). Thus, in Kennametal, we found substan-
tial evidence support for the Board’s finding that the
reference anticipated the claims even without a particular
disclosure of the specific combination recited in the dis-
puted claims. Id.
Here, the Board found that Figure 5 of Paul, and the
corresponding passages of the written description, dis-
close a limited number of tools. In addition, the Board
found that, given Paul’s discussion of combining features
disclosed therein, a skilled artisan would “at once envis-
age” the combination of two of the disclosed tools—refer-a-
friend and campaigns—to arrive at the system claimed in
the Blue Calypso Patents. We agree. Just as in Ken-
nametal, there is no suggestion here that one of skill in
the art would not have the ability to use the direct e-mail
campaign tool option in conjunction with the refer-a-
friend campaign tool to send refer-a-friend e-mail message
incentives to a subset of the members based on member
demographic characteristics.
For these reasons, we conclude that the Board’s find-
ings are supported by substantial evidence. Accordingly,
we affirm the Board’s determination that the disputed
claims are anticipated by Paul.
III. Written Description
Blue Calypso also argues that the Board erred in find-
ing claims 1–19, 23–25, and 29 of the ’516 patent un-
patentable for failing to satisfy the written description
BLUE CALYPSO, LLC v. GROUPON, INC. 21
requirement of 35 U.S.C. § 112. 6 To adequately support
the claims, the written description “must clearly allow
persons of ordinary skill in the art to recognize that the
inventor invented what is claimed.” Ariad Pharm., Inc. v.
Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc) (internal quotation marks and brackets omitted).
The written description requirement “plays a vital role in
curtailing claims . . . that have not been invented, and
thus cannot be described.” Id. at 1352. The Board’s
determination that a patent claim is unpatentable for
insufficient written description support is a question of
fact that we review for substantial evidence. See id. at
1355; In re Morsa, 713 F.3d 104, 109 (Fed. Cir. 2013)
(factual determinations by the Board are reviewed for
substantial evidence).
Groupon argued that the term “endorsement tag” in
independent claim 1 and the term “token” in independent
claim 2 lack written description support. For example,
claim 1 recites in relevant part
providing an endorsement tag related to the at
least one advertiser of the group of advertisers
and linked with the advertising content; . . .
receiving a signal from the recipient through exe-
cution of the endorsement tag to transmit the ad-
vertising content; and,
transmitting the advertising content to the recipi-
ent.
’516 patent, 7:33–44 (emphases added). Similarly, claim 2
recites in relevant part
6 Because the claims at issue in this case have ef-
fective filing dates prior to March 16, 2013, we apply the
pre-AIA § 112.
22 BLUE CALYPSO, LLC v. GROUPON, INC.
sending a token related to the advertisement to
the source communication device; . . .
transmitting a message, including the token, from
the source communication device to the destina-
tion communication device contemporaneously
with the communication session . . . .
Id. at 7:58–67 (emphases added). As noted by the Board,
the parties agreed both terms should be construed as
“executable link, such as a hyperlink.” 7
Before the Board, Groupon argued that these claim
terms—“endorsement tag” and “token”—lacked written
description support because the terms are absent from the
written description of the ’516 patent. Blue Calypso, on
the other hand, asserted that a skilled artisan would
understand that these claim terms refer to an executable
link and the written description specifically describes
usage of an executable link in the same way that the
claims recite using an “endorsement tag” or “token.” The
7 Although the Board should have construed the
terms at issue, see Koninklijke Philips Elecs. N.V. v.
Cardiac Sci. Operating Co., 590 F.3d 1326, 1336 (Fed. Cir.
2010) (explaining that a fact finder “must base its analy-
sis of written description under § 112, ¶ 1 on proper claim
construction” and remanding where the district court did
not construe the terms at issue); In re Katz Interactive
Call Processing Patent Litig., 639 F.3d 1303, 1319 (Fed.
Cir. 2011) (“claim construction is inherent in any written
description analysis”), we need not determine if this was
reversible error given that our resolution of this issue
does not turn on construction. Moreover, the Board
effectively acknowledged that the written description
requirement would be met if the parties’ agreed-upon
construction is accepted, and we do not readily discern
any error in that construction.
BLUE CALYPSO, LLC v. GROUPON, INC. 23
Board responded to these arguments by first acknowledg-
ing that the specification need not explicitly “use the
term[s] or otherwise describe exactly the subject matter
claimed.” Final Written Description, at *21. Neverthe-
less, the Board ultimately rejected Blue Calypso’s argu-
ment and stated that
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[, the application that
issued as the ’516 patent,] does not recite “en-
dorsement tag” [or “token”].
Id. at *23 (emphasis added).
Blue Calypso now argues that the Board impermissi-
bly elevated the fact that these terms are absent from the
’516 patent’s written description. We agree.
The written description requirement is an important
component of maintaining the integrity of our patent
system. To accomplish this goal, § 112 mandates that the
specification must contain a description of the claimed
subject matter. Even so, when examining the written
description for support for the claimed invention, we have
held that the exact terms appearing in the claim “need
not be used in haec verba.” Lockwood v. Am. Airlines,
Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). We are there-
fore troubled by the fact that the Board did not cite any
evidence other than the fact that the terms were not
present in the specification to support its finding. In fact,
the only evidence that Groupon placed in the record to
support unpatentability was Dr. Joshi’s declaration that
“[o]ne of ordinary skill in the art would not define the
terms ‘endorsement tag,’ ‘token,’ and ‘link’ to necessarily
have the same meaning” and that these terms have other
24 BLUE CALYPSO, LLC v. GROUPON, INC.
meanings in the art. J.A. 1658, ¶¶ 129–30. The Board
did not cite this evidence in its final written decision.
Moreover, even if the Board had relied on Dr. Joshi’s
declaration, it would not provide substantial evidence
support for the Board’s finding; Dr. Joshi’s opinion is
abstract and untethered from the context provided by the
’516 patent. Accordingly, we conclude that the Board
placed undue weight on the absence of the terms in the
specification.
Our conclusion that Groupon failed to carry its bur-
den of demonstrating unpatentability under § 112 is
further supported by the figures of the patent, the specifi-
cation, and the claim language. 8 See Lockwood, 107 F.3d
at 1572 (explaining that the necessary support may be
provided through the “words, structures, figures, dia-
grams, formulas, etc., that fully set forth the claimed
invention”). Figure 4 of the ’516 patent illustrates the
process of formatting and transmitting an advertisement
to a recipient.
8 Neither the Board nor the parties provided any
basis on which the outcome would be different for “en-
dorsement tag” than for “token.” We therefore address
the two terms together.
BLUE CALYPSO, LLC v. GROUPON, INC. 25
’516 patent, Figure 4 (annotation added). Specifically,
Figure 4, with its corresponding disclosure, explains that
in step 66, “the recipient may click on the advertisement
to link, via the Internet, to the advertiser’s or another
designated website for additional information or further
action.” Id. at 5:17–44. This disclosure corresponds to the
steps in claim 1 where the system “provide[s] an en-
dorsement tag related to the at least one advertiser . . .
and linked with the advertising content” and then permits
the “transmi[ssion of] the advertising content” after the
recipient “execut[es] . . . the endorsement tag.” Id. at
7:33–44.
Despite this explanation in the written description, as
well as the context provided in the claim itself (“links”
“execut[es]”), Groupon argues that we can nevertheless
affirm the Board’s finding. First, Groupon points to the
term “link” in different claims (claims 25 and 27) and
26 BLUE CALYPSO, LLC v. GROUPON, INC.
contends that the doctrine of claim differentiation re-
quires that “token” and “tag” must have a different defini-
tion. Claim 25 recites “[t]he method of claim 24 where the
step of sending a text message to the destination commu-
nication device includes the additional step of sending an
advertising link in the text message.” Id. at 10:47–50
(emphasis added). Claim 27 recites “[t]he system of claim
26 where the text message includes an active link.” Id. at
10:53–54 (emphasis added). We recognize that, under our
decision, the use of “link” in these claims would express
the same concept as the use of “tag” and “token” in the
challenged claims. But, as discussed above, the context in
which “tag” and “token” are used demonstrates that the
inventor intended these terms to refer to the same concept
as “link” in claims 25 and 27: an executable link. As in
Innova/Pure Water, Inc. v. Safari Water Filtration Sys-
tems, Inc., “this is simply a case where the patentee used
different words to express similar concepts even though it
may be confusing drafting practice.” 381 F.3d 1111, 1120
(Fed. Cir. 2004).
Next, Groupon relies on the prosecution history of the
’516 patent and notes that the terms “endorsement tag”
and “token” were added after the examiner rejected the
claims. The amendments to which Groupon points,
however, consisted of much more than inserting the words
“endorsement tag” and “token”; these words were inserted
as part of an extensive re-write of all the claims in the
application. As such, this observation has little bearing
on our analysis. Finally, Groupon notes that shortly after
these terms were added to the claims, the inventor filed a
continuation-in-part application that included additional
explanations related to tags and tokens. This too has
little significance because it provides no insight into the
relevant inquiry of whether the four corners of the ’516
patent provide written description support for the claim
terms at issue. We recognize that these arguments could
be relevant if they were argued in the context of a claim
BLUE CALYPSO, LLC v. GROUPON, INC. 27
construction dispute. However, Groupon agreed to a
construction of these terms, and the Board effectively
acknowledged that the written description is met under
that construction. Groupon cannot now dispute a claim
construction to which it previously agreed. See Abbott
Labs. v. Syntron Bioresearch, Inc., 334 F.3d 1343, 1352
(Fed. Cir. 2003). When considered solely in the context of
whether the claim terms are adequately supported by the
written description, these arguments fail.
For these reasons, we conclude that the Board erred
by giving improper weight to the mere fact that “tag” and
“token” are absent from the text of the written descrip-
tion. In addition, none of Groupon’s arguments persuades
us that the Board’s conclusion that the challenged claims
are unpatentable under § 112 is nevertheless supported
by substantial evidence. We therefore reverse the Board’s
conclusion that these claims are unpatentable as lacking
adequate written description support.
IV. Public Availability of Ratsimor
In its cross-appeal, Groupon requests that we reverse
the Board’s decision that Ratsimor was not a printed
publication and could not therefore be relied on to prove
unpatentability. Ratsimor is a report co-authored by Dr.
Olga Ratsimor who, at that time, was a graduate student
in the Department of Computer Science and Engineering
(Department) at the University of Maryland Baltimore
County (UMBC). Dr. Ratsimor coauthored the report
with other professors and students at UMBC, including
Dr. Joshi, Groupon’s expert. In Ratsimor, the authors
describe a program involving a software framework
entitled “eNcentive,” which can be used to transmit
advertising materials to users and allow those users to
forward those advertisements to other users. The users
who forward the advertisements are then rewarded with
additional promotions and other compensation. Dr.
Ratsimor made her report available via a hyperlink on the
28 BLUE CALYPSO, LLC v. GROUPON, INC.
personal webpage that she maintained while she was a
student at UMBC.
Before the Board, Groupon argued that additional
claims of the Blue Calypso Patents were unpatentable as
anticipated or obvious in light of Ratsimor. Groupon
asserted that Ratsimor was available via a hyperlink
located on a personal webpage created by a graduate
student before the critical date of the Blue Calypso Pa-
tents. According to Groupon, this reference was therefore
a printed publication under § 102(b). The Board disa-
greed, concluding that even if Ratsimor was available on
the internet, the evidence Groupon presented was insuffi-
cient to find that the report was publicly accessible.
Therefore the Board concluded that Ratsimor was not a
printed publication and could not be used to prove un-
patentability under either § 102 or § 103.
A
Section 102 provides that “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 . . . .” This rule is
“grounded on the principle that once an invention is in the
public domain, it is no longer patentable by anyone.” In
re Hall, 781 F.2d 897, 898 (Fed. Cir. 1986) (citing In re
Bayer, 568 F.2d 1357, 1361 (C.C.P.A. 1978)). To qualify
as a printed publication, a reference “must have been
sufficiently accessible to the public interested in the art.”
In re Cronyn, 890 F.2d 1158, 1160 (Fed. Cir. 1989).
“Because there are many ways in which a reference may
be disseminated to the interested public, ‘public accessi-
bility’ has been called the touchstone in determining
whether a reference constitutes a ‘printed publication’ bar
under 35 U.S.C. § 102(b).” In re Hall, 781 F.2d 897, 898–
99 (Fed. Cir. 1986). A reference will be considered public-
ly accessible if it was “disseminated or otherwise made
available to the extent that persons interested and ordi-
BLUE CALYPSO, LLC v. GROUPON, INC. 29
narily skilled in the subject matter or art exercising
reasonable diligence, can locate it.” Kyocera Wireless
Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed.
Cir. 2008). Whether a reference qualifies as a printed
publication is a legal conclusion based on underlying
factual determinations. In re Lister, 583 F.3d 1307, 1311
(Fed. Cir. 2009).
B
The issue of public accessibility has frequently arisen
in the context of references stored in libraries. In these
cases, we generally inquire whether the reference was
sufficiently indexed or cataloged. See, e.g., Hall, 781 F.2d
at 899–90. For example, in Hall, we found that a disser-
tation was publicly accessible because it was shelved and
indexed in a card catalog at a German university. Id. In
contrast, in Cronyn, we found that the references were not
publicly accessible, despite the use of indexing, because
the references were indexed only by title and author’s
name, rather than by subject. 890 F.2d at 1161. Indexing
only by title and author’s name did not amount to the
references being “either cataloged or indexed in a mean-
ingful way.” Id. Indexing by subject offers meaningful
assurance that an ordinarily skilled artisan, exercising
reasonable diligence, will be able to locate a particular
reference among the many volumes stored in a library. 9
9 Indexing is, of course, not the only manner of
proving public accessibility. See Lister, 583 F.3d at 1312
(“While cataloging and indexing have played a significant
role in our cases involving library references, we have
explained that neither cataloging nor indexing is a neces-
sary condition for a reference to be publicly accessible[;]
. . . a variety of factors may be useful . . . .”). But, in the
absence of other evidence, such as evidence that the
reference was actively distributed to the public or actually
30 BLUE CALYPSO, LLC v. GROUPON, INC.
Only more recently have we addressed the question of
how to determine public accessibility of a reference
housed on a webpage in one corner of the vast world wide
web. “[I]ndexing is no more or less important in evaluat-
ing the public accessibility of online references than for
those fixed in more traditional, tangible media.” Voter
Verified, Inc. v. Premier Election Sols., Inc., 698 F.3d
1374, 1380 (Fed. Cir. 2012). In Voter Verified, we found
that a particular article that was available only through
an on-line publication was publicly accessible. Id. We
reached that conclusion based on “unrebutted testimony”
in the record indicating that the particular on-line publi-
cation was well known to the community interested in the
subject matter of the reference. Id. In addition, we noted
that numerous related articles were also located within
the same on-line publication. Id. These factors overcame
the absence of evidence demonstrating that the website at
which the article was located was indexed and thereby
findable by an internet search engine. Id. at 1381. Thus,
we concluded that “[w]hether or not the website itself had
been indexed . . . (through search engines or otherwise),
the uncontested evidence indicates that a person of ordi-
nary skill interested in electronic voting would have been
independently aware of the [the on-line publication] as a
prominent forum for discussing such technologies.” Id.
Just as indexing plays a significant role in evaluating
whether a reference in a library is publicly accessible,
Voter Verified underscores that indexing, “[w]hether . . .
through search engines or otherwise,” id., is also an
retrieved by members of the public, indexing is a useful
inquiry to evaluate public accessibility. See, e.g., In re
Omeprazole Patent Litigation, 536 F.3d 1361, 1381 (Fed.
Cir. 2008) (concluding that two company brochures were
not printed publications because there was no evidence
“about the circulation and availability of the brochures”).
BLUE CALYPSO, LLC v. GROUPON, INC. 31
important question for determining if a reference stored
on a given webpage in cyberspace is publicly accessible.
In the present case, the Board found that Groupon
had failed to carry its burden of establishing that an
interested party exercising reasonable diligence would
have located Ratsimor. We agree. Groupon has provided
no evidence that Ratsimor was disseminated to the inter-
ested public before the critical date other than testimony
from Dr. Joshi that it was “publicly available around
November 2003.” Even if we assume that Ratsimor was
available online on Dr. Ratsimor’s personal page before
the critical date, Groupon does not point to any evidence
indicating that Ratsimor was viewed or downloaded.
Further, in contrast to Voter Verified, the present case
lacks any testimonial evidence that a person interested in
e-commerce and peer-to-peer marketing would be inde-
pendently aware of the web address for Dr. Ratsimor’s
personal page. In other words, there was no evidence that
the ordinarily skilled artisan would know of Dr. Ratsi-
mor’s personal webpage or its web address. Instead,
Groupon argues that an internet search engine would
have been able to locate the report. But that argument
does not allow us to automatically infer that Dr. Ratsi-
mor’s webpage was “indexed . . . (through search engines
or otherwise)” and thus locatable by a search engine. See
Voter Verified, 698 F.3d at 1381. The record is devoid of
any evidence that a query of a search engine before the
critical date, using any combination of search words,
would have led to Ratsimor appearing in the search
results.
C
Alternatively, Groupon points to an article that Dr.
Ratsimor and several of the same co-authors published
and argues that it would have directed interested re-
searchers to Ratsimor. We have previously recognized
that the presence of a “research aid” can also establish
32 BLUE CALYPSO, LLC v. GROUPON, INC.
public accessibility. See Bruckelmyer v. Ground Heaters,
Inc., 445 F.3d 1374, 1379 (Fed. Cir. 2006). For example,
in Bruckelmyer, we concluded that the presence of an
issued foreign patent put an interested researcher on
notice of that patent’s application. Id. (“[I]t does not
matter whether the ’119 application was catalogued or
indexed in a meaningful way because the ’119 patent was
indexed and could serve as a research aid.”). The Board
acknowledged that the published article was publicly
accessible and that it related to the same research pre-
sented in Ratsimor. The Board nevertheless found the
article insufficient because it did not include any citation
to Ratsimor. Moreover, even if the published article
would have led a reader to the UMBC Department web-
site, there is no evidence that it would have led a reader
to Dr. Ratsimor’s personal website, which arguably
housed the link to Ratsimor. For example, there is no
evidence that UMBC Department’s website provided a
link to Dr. Ratsimor’s webpage.
We agree with the Board. The published article does
not provide a skilled artisan with a sufficiently definite
roadmap leading to Ratsimor. An adequate roadmap
need not give turn-by-turn directions, but should at least
provide enough details from which we can determine that
an interested party is reasonably certain to arrive at the
destination: the potentially invalidating reference. The
issued foreign patent in Bruckelmyer is such a roadmap;
the existence of a patent assumes the existence of a
corresponding patent application. Additionally, a pub-
lished article with an express citation to the potentially
invalidating reference would similarly provide the neces-
sary guidance. See Cornell Univ. v. Hewlett-Packard Co.,
No. 01-cv-1974, 2008 U.S. Dist. LEXIS 39343, at *20–21
(N.D.N.Y. May 14, 2008) (finding that an article in a
“seminal publication in the field of electrical engineering”
with an explicit citation to the allegedly invalidating
BLUE CALYPSO, LLC v. GROUPON, INC. 33
reference was a research aid that made the sought-after
reference publicly accessible).
In this case, Groupon at no point asserts that the pub-
lished article cited or mentioned Dr. Ratsimor’s personal
page. Instead, Groupon asserts that the common subject
matter would lead an interested party to do additional
research on the UMBC Department’s website. However,
even to the extent that is true, there is no evidence that
an interested party could navigate from that website to
Dr. Ratsimor’s personal page, whether through a direct
link or a chain of links, to access the Ratsimor Reference.
*****
For these reasons, we agree with the Board that
Groupon failed to carry its burden of proving public
accessibility of the Ratsimor Reference. 10 We therefore
affirm the Board’s rejection of Groupon’s § 102 and § 103
arguments that rely on the Ratsimor Reference.
CONCLUSION
For the foregoing reasons, we affirm the Board’s con-
clusions that Paul anticipates the challenged claims of the
Blue Calypso Patents and that the Ratsimor Reference is
not a printed publication within the meaning of 35 U.S.C.
§ 102(b). However, for the reasons discussed in the opin-
ion, we reverse the Board’s conclusion that the claim
10 Because we agree with the Board that the Ratsi-
mor Reference is not a printed publication within the
meaning of § 102(b), we also agree with the Board that
Groupon cannot rely on this reference to establish the
unpatentability of additional claims under § 102 or § 103.
We therefore need not reach Groupon’s argument that the
Ratsimor Reference anticipates or renders these claims
obvious.
34 BLUE CALYPSO, LLC v. GROUPON, INC.
terms “endorsement tag” and “token,” as used in the ’516
patent lack written description support.
AFFIRMED-IN-PART, REVERSED-IN-PART
COSTS
No costs.
United States Court of Appeals
for the Federal Circuit
______________________
BLUE CALYPSO, LLC,
Appellant
v.
GROUPON, INC.,
Cross-Appellant
______________________
2015-1391, 2015-1393, 2015-1394
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Nos.
CBM2013-00033, CBM2013-00034.
---------------------------------------------------------------------------
GROUPON, INC.,
Appellant
v.
BLUE CALYPSO, LLC,
Appellee
______________________
2015-1396
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. CBM2013-
00044.
2 BLUE CALYPSO, LLC v. GROUPON, INC.
---------------------------------------------------------------------------
BLUE CALYPSO, LLC,
Appellant
v.
GROUPON, INC.,
Cross-Appellant
______________________
2015-1397, 2015-1398
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in No.
CBM2013-00046.
---------------------------------------------------------------------------
BLUE CALYPSO, LLC,
Appellant
v.
GROUPON, INC.,
Cross-Appellant
______________________
2015-1399, 2015-1401
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in No.
CBM2013-00035.
______________________
SCHALL, Circuit Judge, dissenting-in-part.
BLUE CALYPSO, LLC v. GROUPON, INC. 3
I am pleased to join Parts I, III, and IV of the court’s
opinion. However, I respectfully dissent from Part II. For
the reasons set forth below, I believe the Board erred in
finding claims 2–15, 20–23, and 29 of U.S. Patent No.
7,664,516 (the ’516 patent); claims 7–16 and 23–27 of U.S.
Patent No. 8,155,679; claims 1–5 of U.S. Patent No.
8,457,670; and claims 1, 4–6, 10, and 14 of U.S. Patent
No. 8,438,055 anticipated by U.S. Patent Application
Publication No. 2002/0169835 A1 by Paul, JR. et al.
(“Paul”).
I.
A.
Paul describes an internet-based communications sys-
tem that allows organizations (e.g., Amazon.com) to
broadcast emails to their members (e.g., individual con-
sumers with Amazon.com accounts). See Paul at ¶¶ 10,
21. The system includes an application program, or
“campaign manager,” that provides organizations with
various “routine” or “tool” options for communicating with
their members. Paul at ¶¶ 34, 51, 100. One such tool
option (the “direct-email tool”) enables organizations to
develop and manage direct marketing campaigns through
which “personalized . . . e-mails” may be sent to “selected
members” who are pulled from an organization’s member-
ship database based upon selected demographic criteria.
Paul at ¶¶ 51, 64, 66–67 (emphasis added). The personal-
ized emails may include, for example, an advertisement
for a business with a hyperlink to the business’s website.
Paul at ¶ 95. Another tool option (the “refer-a-friend
tool”) uses a referral campaign to attract new members.
See Paul at ¶¶ 101–02. In this campaign “[a]ll the mem-
bers” of an organization receive a “refer a friend e-mail”
that includes a hyperlink to the organization’s “new
member website.” Paul at ¶ 101 (emphasis added). If a
current member forwards the email to one or more friends
and a friend clicks on the link, the current member may
4 BLUE CALYPSO, LLC v. GROUPON, INC.
receive a reward. See Paul at ¶ 102. In this way, current
members are motivated to increase the organization’s
membership. Paul at ¶ 102.
Although the relevant claims vary in scope, I agree
with the majority that, for purposes of this appeal, claim 2
of the ’516 patent is representative of the claimed subject
matter. Relevant to the issue of anticipation, that claim
provides as follows:
2. A method for providing access to an advertise-
ment from an advertiser to a source communica-
tion 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 sub-
scriber, the method comprising the steps of:
(1) comparing a desired demographic profile to a
subscriber demographic profile to derive a match;
(2) establishing a bi-lateral endorsement between
the subscriber and the advertiser;
(3) providing a subsidy program to the subscriber
based on the match; . . .
(4) activating an endorsement manager in the
source communication device;
(5) initiating a communication session between
the source communication device and the destina-
tion communication device; . . . and
(6) recognizing a subsidy, according to the subsidy
program, for the subscriber after a termination of
the communication session.
’516 patent at 7:45–8:3 (numerals and emphases added).
BLUE CALYPSO, LLC v. GROUPON, INC. 5
In finding claim 2 anticipated by Paul, the Board re-
lied upon, inter alia, the direct-email and refer-a-friend
tools. For example, and as relevant here, the Board found
the first limitation met by Paul’s disclosure of the direct-
email tool. Regarding the third limitation, the Board
found that Paul discloses “providing a subsidy program to
the subscriber” through the description of the refer-a-
friend tool. The Board did not however find that the
refer-a-friend tool provides a subsidy “based on the
match,” a claim element linked to the first limitation.
Only by finding that the direct-email and refer-a-friend
tools would be used together did the Board conclude that
Paul discloses providing a subsidy “based on the match.”
The Board, in making this finding, acknowledged 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.”
Nor does Paul, the Board recognized, “indicate expressly
that any of the [tools] . . . can be used with any other one
of the . . . [tools].” The Board nevertheless found that one
of ordinary skill in the art “would understand” that the
direct-email and refer-a-friend tools are “to be used in
conjunction . . . to send ‘refer-a-friend’ e-mail message
incentives to [selected] members based on member demo-
graphic characteristics.” In other words, the Board found
that the refer-a-friend tool would be used to create a
referral email, but instead of sending the referral email to
all members using that tool (as described in Paul), one of
skill in the art would know to use the direct-email tool to
send the referral email to selected members based on a
demographic match.
From its findings and discussion of Paul, there is no
question the Board did not rely upon an express disclo-
sure of the claimed invention to support its ultimate
anticipation finding. What the Board does not answer,
however, is which alternative anticipation theory it
6 BLUE CALYPSO, LLC v. GROUPON, INC.
applied; namely, anticipation by inherency or anticipation
because a person of skill in the art, reading Paul, would
“at once envisage” the claimed arrangement.
B.
In affirming the Board’s finding of anticipation, the
majority views Paul, in particular paragraph 29, as
“explicitly contemplat[ing] the combination of the dis-
closed functionalities” of the direct-email and refer-a-
friend tools. Maj. Op. 17–19. The majority also reads the
Board’s decision as having “found that [Paul] . . . dis-
close[s] a limited number of tools” and also as having
“found that . . . a skilled artisan would ‘at once envisage’
the combination of . . . the refer-a-friend and [direct-email
tools] to arrive at the system claimed” by Blue Calypso.
Maj. Op. 20 (emphasis added). Based on these apparent
findings by the Board, the majority concludes that the
facts of this case are akin to those in Kennametal, Inc. v.
Ingersoll Cutting Tool Co., 780 F.3d 1376 (Fed. Cir. 2015),
where we found that a prior art reference anticipated
certain claims even without disclosing all the claimed
limitations.
II.
A.
An invention is unpatentable by reason of anticipation
if it “was patented or described in a printed publication in
this or a foreign country or in public use or on sale in this
country, more than one year prior to the date of applica-
tion for patent in the United States.” 35 U.S.C. § 102(b)
(2006). 1 A prior art reference cannot anticipate “unless
1 This provision has since been amended. See
Leahy–Smith America Invents Act (“AIA”), Pub. L. No.
112–29, § 3(c), 125 Stat. 284, 287 (2011). However, be-
cause the pending claims have an effective filing date
BLUE CALYPSO, LLC v. GROUPON, INC. 7
[it] discloses within the four corners of the document not
only all of the limitations claimed but also all of the
limitations arranged or combined in the same way as
recited in the claim.” Net MoneyIN, Inc. v. VeriSign, Inc.,
545 F.3d 1359, 1371 (Fed. Cir. 2008). Prior art can,
however, anticipate a claim even if it “d[oes] not expressly
spell out” all the limitations arranged or combined as in
the claim, if a person of skill in the art, reading the refer-
ence, would “at once envisage” the claimed arrangement
or combination, In re Petering, 49 CCPA 993, 301 F.2d
676, 681 (1962), or if the “missing descriptive matter is
necessarily present,” or inherent, in the reference, Conti-
nental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268
(Fed. Cir. 1991). “Under the principles of inherency, if the
prior art necessarily functions in accordance with, or
includes, the claims limitations, it anticipates.” Perricone
v. Medicis Pharm. Corp., 432 F.3d 1368, 1376 (Fed. Cir.
2005) (quoting MEHL/Biophile Int'l Corp. v. Milgraum,
192 F.3d 1362, 1365 (Fed. Cir. 1999)).
B.
I agree with the majority that the Board’s holding of
unpatentability based on anticipation necessarily hinges
on a finding distinct from an express disclosure of the
invention of claim 2 of the ’516 patent. Given the majori-
ty’s reliance on Kennametal and its view of the Board’s
purported findings, it seems to me the majority concludes
that we should affirm because one skilled in the art would
“at once envisage” the claimed invention when reading
Paul. I part company with the majority on this point, for
this case, I believe, is governed by Net MoneyIN. In my
view, the Board erred in finding that Paul discloses the
third limitation of claim 2, i.e., “providing a subsidy
before March 16, 2013, the pre-AIA § 102(b) applies. See
AIA, 125 Stat. at 293; In re Giannelli, 739 F.3d 1375, 1376
n.1 (Fed. Cir. 2014).
8 BLUE CALYPSO, LLC v. GROUPON, INC.
program to the subscriber based on the match.” (Empha-
sis added.) The Board relied on a combination of the
direct-email and refer-a-friend tools to meet this limita-
tion; yet, the Board recognized that Paul fails to explicitly
disclose any such combined use. As noted, the Board
made up for this shortcoming in Paul by finding that one
of ordinary skill in the art “would understand” that the
two tools are “to be used in conjunction.” 2
2 We have stated that filling in the gaps in a refer-
ence by using the understanding of one skilled in the art
to find anticipation indicates reliance on a theory of
inherency. See Finnigan Corp. v. Int'l Trade Comm'n,
180 F.3d 1354, 1365 (Fed. Cir. 1999) (concluding that the
Administrative Law Judge relied on inherency in finding
the claims anticipated because he “was able to close th[e]
gap between the [prior art reference] and the claim” by
relying on the understanding of one skilled in the art);
Cont'l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268
(Fed. Cir. 1991) (explaining that “when [a] reference is
silent about [an] asserted inherent characteristic, such
gap in the reference may be filled with recourse to extrin-
sic evidence . . . [which] must make clear that the missing
descriptive matter is necessarily present in the thing
described in the reference . . . .”). Although I do not read
the majority opinion as adopting the view that the Board
relied on inherency in this case, to the extent the Board’s
decision may be read that way, I believe the record evi-
dence is insufficient to establish inherent anticipation.
Groupon failed to show that the combination of the direct
e-mail and refer-a-friend tool options is “necessarily
present” in Paul. Groupon’s expert, Dr. Joshi, in fact,
acknowledged that using Paul’s system does not require
either the direct-email or refer-a-friend tools to be used at
all, let alone in conjunction. Moreover, the Board’s find-
ing that the tools are “different tool options of the cam-
BLUE CALYPSO, LLC v. GROUPON, INC. 9
Although anticipation typically cannot be found with-
out an express or inherent disclosure, there is a line of
cases where “the issue of anticipation turns on whether [a
disclosed] genus was of such a defined and limited class
that one of ordinary skill in the art could ‘at once envis-
age’ each member of the genus.” Wm. Wrigley Jr. Co. v.
Cadbury Adams USA LLC, 683 F.3d 1356, 1361 (Fed. Cir.
2012). For example, in Kennametal, the case upon which
the majority relies, the claimed invention was a cutting
tool having a substrate comprising “hard particles and a
binder” and a “physical vapor deposition coating on at
least a portion of the substrate.” 780 F.3d at 1379. The
prior art reference disclosed all the elements of the
claimed cutting tool within the reference, but did not
expressly disclose an example of the tool with the claimed
coating. Id. at 1382. However, because the reference
“expressly ‘contemplat[ed]’” the claimed coating as one of
three possible coatings, we found the claims anticipated
because one of skill would “immediately envisage apply-
ing [the claimed] coating.” Id. at 1383.
This case, in my view, is distinguishable from Ken-
nametal for at least three reasons. First, the Board did
not find or even suggest, nor did Groupon argue, that the
claimed process at issue here is a species of some genus
disclosed by Paul. Second, even if the “at once envisage”
line of cases is applicable here, claim 2 is not a system
claim requiring the mere presence of the right combina-
tion of tools (i.e., the direct e-mail and refer-a-friend tools)
for anticipation. Rather, anticipation of method claim 2
paign manager” reveals that they do not necessarily have
to be used together because “options” are, by their very
nature, not necessary. As for Dr. Joshi’s conclusion that
the tools “can be used with one another,” it seems to me
that, if he is correct, this testimony suggests only a possi-
ble use, not an inherent use.
10 BLUE CALYPSO, LLC v. GROUPON, INC.
requires not only that both tools be used, but also that
specific functions among the tools’ various functions be
combined. And third, Paul does not contemplate—
expressly or otherwise—combining the direct-email and
refer-a-friend tools to perform the step recited in the third
limitation. Groupon’s expert conceded this point. Even
putting these distinctions aside, Kennametal still, I think,
does not support the majority’s conclusion because—
contrary to the majority’s apparent view of the Board’s
decision—the Board did not find that one of skill in the
art would “at once” or “immediately” envisage the com-
bined use of the direct-email and refer-a-friend tools.
Absent such a finding, Paul could only anticipate the
third limitation by expressly or inherently disclosing the
combination, and, as explained above, I see no such
disclosure in Paul.
I recognize the Board cited to various portions of Paul
that, in its view, would lead one of skill to conclude that
the direct-email and refer-a-friend tools would be used
together. However, in my view, nothing in those para-
graphs supports the Board’s ultimate finding of anticipa-
tion, regardless of which anticipation theory the Board
may have applied. For example, the Board quoted from
paragraph 29 of Paul, which explains that the invention
may be produced in a single computer system having
(1) separate elements or means for performing the in-
dividual steps described or claimed or (2) one or more
elements or means combining the performance of any
of the functions or steps disclosed or claimed, or may
be arranged in a distributed computer system, inter-
connected by any suitable means . . . as would be
known to one of ordinary skill in the art.
Paul at ¶ 29 (numerals added). This boiler-plate lan-
guage merely describes the amount or type of structure
(or number of algorithms) that may be used to implement
the system. Put differently, while the quoted text envi-
BLUE CALYPSO, LLC v. GROUPON, INC. 11
sions that multiple steps may be carried out by a single
element, it contains no suggestion to combine tools in
order to perform steps not otherwise disclosed. And
because paragraph 29 fails to mention either the direct e-
mail tool or the refer-a-friend tool, or any of the tools’
specific functions, I do not view the paragraph as an
express contemplation to combine the two tools. 3 The
Board also quoted from paragraphs 50, 51, and 100 of
Paul, but those paragraphs only state that the direct-
email and refer-a-friend tools are both part of the cam-
paign manager. They do not suggest that the two tools
would be—or could be—combined in any way.
I view the facts here as being similar to those in Net
MoneyIN. There, the claimed “Internet payment system”
comprised five links, and the district court found the
invention anticipated by a reference disclosing all five
links within the four corners of the reference. Net Mon-
eyIN, 545 F.3d at 1368–69. We reversed, concluding that
the district court “wrong[ly] combine[d] parts of [two]
separate protocols,” each of which included some of the
claimed links, to find anticipation. Id. at 1371. In reach-
ing that conclusion, we explained that even though “there
may be only slight differences between the protocols
disclosed in the [prior art] reference and the [claimed]
system,” such differences “invoke the question of obvious-
3 In sharp contrast to the generic language of para-
graph 29, the portion of the prior art reference in Ken-
nametal that we viewed as an express contemplation of
the claimed coating stated that “applicants also contem-
plate that one or more layers of a coating scheme may be
applied by physical vapor deposition.” 780 F.3d at 1380
(emphases added). Based on that explicit disclosure, we
concluded that “a person of skill in the art . . . would
immediately envisage applying a [physical vapor deposi-
tion] coating.” Id. at 1383.
12 BLUE CALYPSO, LLC v. GROUPON, INC.
ness, not anticipation.” Id. Here, just as in Net Mon-
eyIN, the combination of the direct-email and refer-a-
friend tools similarly invokes the question of obviousness
because the Board combined specific functions of two
separate tools to find anticipation. Thus, I conclude that,
like the district court in Net MoneyIN, the Board erred
here because “it is not enough that [Paul] discloses part of
the claimed invention, which an ordinary artisan might
supplement to make the whole, or that it includes multi-
ple, distinct teachings that the artisan might somehow
combine to achieve the claimed invention.” Id.
In sum, I believe the record evidence does not contain
an express or inherent disclosure (or even an express
contemplation) of the combined use of the direct-email
and refer-a-friend tools. The evidence, at most, it seems to
me, reveals that Paul discloses a single system with
multiple tools that are capable of functioning together.
This is not enough for anticipation. The Board’s “analysis
[therefore] goes astray because it assumes what [Paul]
neither disclose[s] nor render[s] inherent.” Perricone, 432
F.3d at 1379.
For the foregoing reasons, I respectfully dissent from
the court’s affirmance of the Board’s finding that Paul
anticipates claim 2 of the ’516 patent, as well as its affir-
mance of the Board’s finding that Paul anticipates claims
of the other patents at issue in the case.