Takeaway: A petitioner must establish that a 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.”

In its Final Written Decision, the Board found that Petitioner had shown by a preponderance of the evidence that claims 7-16 and 23-27 of the ‘679 patent are unpatentable but failed to demonstrate that claims 1-6 and 17-22 are unpatentable.  The ‘679 patent “relates to a system and method for peer-to-peer advertising between mobile communication devices.” 

The Board began its analysis with claim construction, stating that claims in an unexpired patent are given their broadest reasonable construction in light of the specification.  The Board first addressed the construction of the term “subsidy,” maintaining the construction set forth in the Decision on Institution with which the parties did not disagree.  With respect to the term “subsidy program,” the Board maintained the construction set forth in the Decision on Institution, finding the parties’ arguments to modify the construction unpersuasive.  The Board then construed “bi-lateral endorsement,” addressing Patent Owner’s arguments at length, but deciding to maintain the construction set forth in the Institution Decision.  The Board then agreed with Patent Owner’s arguments that the preambles are limiting and should be given patentable weight.

The Board then addressed the standing requirements, finding that claim 7 of the ’679 patent is financial in nature, and is “directed toward a business problem, not a technical solution.”

The Board then turned to the grounds of unpatentability.  First, the Board addressed Patent Owner’s arguments that the Ratsimor reference does not qualify as a printed publication.  The Ratsimor paper is a technical report that Petitioner alleged was published prior to the ’679 patent’s filing date, relying upon a publications list including Ratsimor as well as testimony regarding when the reference was available for download.  The Board found that Petitioner’s evidence was insufficient, comparing the paper to a doctoral thesis and finding that Petitioner did not establish “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.”  Therefore, the Board found that Petitioner did not establish the unpatentability of claims 1-16 and 23-27 as anticipated by Ratsimor.

Regarding the ground of anticipation of claims 7-16 and 23-27 by Paul, the Board found that Petitioner established the claims’ unpatentability by a preponderance of the evidence.  Patent Owner argued that Paul does not disclose the features of claim 7 as they are arranged in the claim.  The Board was not persuaded and disagreed with Patent Owner’s characterization of the disclosure of Paul, finding that one of ordinary skill in the art would not interpret Paul so narrowly.  Patent Owner’s arguments with respect to claim 23 were rejected for reasons similar to those with respect to claim 7.  Therefore, the Board found claims 7-16 and 23-27 unpatentable as anticipated by Paul.

The Board next addressed Patent Owner’s Motion to Exclude Evidence.  The Motion related to Petitioner’s evidence regarding the Ratsimor reference, which the Board found insufficient.  Therefore, the Motion was dismissed as moot.

Groupon, Inc. v. Blue Calypso, LLC, CBM2013-67933
Paper 51: Final Written Decision
Dated: December 17, 2014
Patent: 8,155,679 B2
Before: Joni Y. Chang, Michael W. Kim, and Barbara A. Benoit
Written by: Benoit
Related Proceedings: CBM2013-67935; CBM2013-67934; CBM2013-67944; CBM2013-67946