Blue Calypso, LLC. v. Groupon, Inc.

815 F.3d 1331, 118 U.S.P.Q. 2d (BNA) 1035, 2016 U.S. App. LEXIS 3728, 2016 WL 791107
CourtCourt of Appeals for the Federal Circuit
DecidedMarch 1, 2016
Docket2015-1391, 2015-1393, 2015-1394, 2015-1396, 2015-1397, 2015-1398, 2015-1399, 2015-1401
StatusPublished
Cited by81 cases

This text of 815 F.3d 1331 (Blue Calypso, LLC. v. Groupon, Inc.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

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Blue Calypso, LLC. v. Groupon, Inc., 815 F.3d 1331, 118 U.S.P.Q. 2d (BNA) 1035, 2016 U.S. App. LEXIS 3728, 2016 WL 791107 (Fed. Cir. 2016).

Opinions

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 Business 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 Trademark 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 Patents unpatentable under 35 U.S.C. § 102. The Board further found certain claims of the '516 patent unpatentable under § 112. In addition, the Board rejected Groupon’s remaining argument that additional claims were un-patentable under 35 U.S.C. § 103.

Blue Calypso now appeals the Board’s decisions to review 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 rejecting its obviousness arguments. For the reasons [1336]*1336stated in this opinion, we affirm-in-part and reverse-in-part.

Background

I

The Blue Calypso Patents are all related and generally describe a peer-to-peer advertising system that uses mobile communication devices. The '516 patent1 explains how advertising can be made to be more effective, compared 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 subsidy 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 subsidy 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 demographic information. Id. at 4:11-16. After the subscribers 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 advertisement to his peer’s “destination communication device.” Id. at 2:30-37.

Neither party argues the challenged claims separately. We therefore use claim 2 of the '516 patent as representative:

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; initi[1337]*1337ating 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.

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 business method patent,” granted the petition, and instituted review.

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 patent; 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 lacking adequate written description. The Board then rejected 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 Engineering (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

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815 F.3d 1331, 118 U.S.P.Q. 2d (BNA) 1035, 2016 U.S. App. LEXIS 3728, 2016 WL 791107, Counsel Stack Legal Research, https://law.counselstack.com/opinion/blue-calypso-llc-v-groupon-inc-cafc-2016.