Takeaway: The Board may decline to modify a Final Written Decision that was reviewed by the Federal Circuit even where the Final Written Decision includes an error cancelling claims that should not have been included in the ground of unpatentability.

In its Order, the Board denied Patent Owner’s request that the Office not publish a certificate to cancel claims 8-12, 14, and 23 of the ‘516 patent.  Patent Owner alleged that the Final Written Decision entered on December 17, 2014 includes an error—“namely, claims 8-12, 14, and 23, which depend from claim 1 and not claim 2, should not have been included in the anticipation ground of unpatentability.”

After reviewing the extensive record, the Board concluded that “Patent Owner had numerous opportunities, from the time of the Decision on Institution was entered, to raise the issue of whether claims 8-12, 14, and 23 are unpatentable in view of Paul.”  Indeed, Patent Owner “did not raise the issue regarding the alleged error in the Board’s Final Written Decision before the Federal Circuit” where “Patent Owner requested a rehearing from the Federal Circuit Decision, but was denied.”  Thus, the issue was being raised for the first time, but Patent Owner “cited no authority for such a correction of a Board’s final decision after our reviewing court has decided an appeal from the Board’s final decision.”  The Board thus declined to make any modification to the Final Written Decision:  “Pursuant to 35 U.S.C. § 328, the Office will issue and publish a certificate canceling claims 2–15, 20–23, and 29 of the ’516 patent, which was finally determined to be unpatentable under § 102(b) as anticipated by Paul, in accordance with the Final Written Decision and the Federal Circuit Blue Calypso Decision.”

Groupon, Inc. v. Blue Calypso, LLC, CBM2013-00035
Paper 49:  Order on Conduct of the Proceeding
Dated:  May 26, 2016
Patent:  7,664,516 B2
Before:  Joni Y. Chang, Michael W. Kim, and Barbara A. Benoit
Written by:  Chang