CAFC: Reference May Anticipate if it Inherently Teaches Claimed Combination of Elements

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85-1. Reference May Anticipate if it Inherently Teaches Claimed Combination of Elements

Blue Calypso, LLC v. Groupon, Inc. (Fed. Cir. Mar. 1, 2016) (Before Reyna, Schall, and Chen, J.) (Opinion for the court, Chen, J.). Click Here for a copy of the opinion.

Groupon petitioned the USPTO for Covered Business Method (CBM) reviews of five patents owned by Blue Calypso. The patents concern a mobile device implementation of a peer-to-peer advertising system. Specifically, a user can create a profile and subscribe to subsidy programs, such as product discounts or reward points. Advertisers determine which subscribers are eligible for their programs, based on the profile information. The Board found various claims unpatentable as anticipated under 35 U.S.C. § 102 or as lacking support under 35 U.S.C. § 112. Groupon’s assertions of obviousness were rejected because the cited references did not qualify as prior art. Blue Calypso appealed and Groupon cross appealed.

First, Blue Calypso argued that its patents do not claim a financial product or service and are not “covered business methods.” The Court disagreed, in light of two recent decisions, Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1318-23 (Fed. Cir. 2015) and SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307 (Fed. Cir. 2015). These cases held that a “financial activity,” although not directed to money management, may still be “a financial product or service” under the statute. The claims at issue had a financial component, in the form of a subsidy, or financial inducement, that encouraged customers to participate in distributed advertising. This met the statutory definition of a CBM patent. The Board also correctly rejected Blue Calypso’s computer implementation defense, because Versata held that merely reciting the use of a computer did not satisfy the “technological invention exception” to CBM review.

cafc-federal-circuit-windowsRegarding anticipation under § 102, Blue Calypso relied on case law requiring that an anticipatory reference must disclose the claimed elements “arranged as in the claim.” However, the Court has held that “a reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all of 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, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, (Fed. Cir. 2015). Here, the Court affirmed the Board’s finding that one Figure and certain passages in the description of the reference disclosed a limited number of elements and suggested combining them in a manner that anticipated the system claimed by Blue Calypso. Thus, “a 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.” This was an anticipation, without resort to obviousness, because the reference sufficiently disclosed making the combination, though not expressed a single embodiment or example.

The Court agreed with Blue Calypso that the Board erred by rejecting two of the claims under § 112 because they used language (“tag” and “token”) not found in the specification. This was an unfortunate use of different words, in the specification and claims, to express similar concepts. Such poor drafting was unfortunate, but not a sufficient basis for invalidity. The Court reversed the Board’s finding that these claims are unpatentable.

Groupon appealed the Board’s decision that a report, published on a web page by a graduate student, was not demonstrably a “printed publication” and therefore could not be relied on as prior art to prove obviousness. The report was available on the student’s personal webpage. The Court agreed with the Board that there was insufficient evidence to show that the report had ever been reviewed or downloaded. Moreover, posting on a personal web page was not to disseminate the report or make it accessible to the interested public as a “printed publication.”

Accordingly, the Court affirmed-in-part and reversed-in-part.

Judge Schall wrote in dissent that, at most, the reference revealed a system with multiple tools that were capable of functioning together, but this was insufficient for a finding of anticipation. Thus, he opined that the Board’s analysis was astray because it assumed what the prior art neither disclosed nor rendered inherent.

 

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