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Groupon petitioned the PTO for a Covered Business Method Review (CBM) on Blue Calypso’s patents.  The PTO held that the patents were “covered business method patents,” that some of the claims were invalid as being anticipated, other claims were invalid for violating the written description requirement, and others were not invalid, because the asserted alleged prior art reference was not a “printed publication.”

On appeal, the Federal Circuit affirmed the PTO’s decision that the patents were “covered business method patents.”  First, it held that a financial activity that is not directed to a “financial product or service” can nevertheless meet the requirements for a “covered business method patent.”  Here, the claims are directed to providing subsidies, which the court held is a financial inducement and therefore the claims are directed to a “financial product or service.”  Second, the court held that the claims do not represent a significant enough “technical invention” to take them out of the meaning of a CBM, because the claimed network and communication devices are nothing more than general computer system components used to carry out the claimed process.

On the issue of anticipation, Blue Calypso contended that its claims were not anticipated by the Paul reference, because the Paul reference fails to disclose that the disclosed elements should be combined in the claimed manner.  The court held that the claims were anticipated, because, under Kennametal, a reference can anticipate a claim even if it does not expressly spell out all the limitations as arranged in the claim if a person skilled in the art would “at once envisage” the claimed arrangement or combination, which is the case here. 

On the issue of written description, the PTO found that the written description was violated by certain claims, because two of the claim terms were not recited in the specification.  The court reiterated the rule that the written description requirement can be met even if the claim terms are not used in the specification.  The court reversed, finding that, although the terms themselves were not used in the specification, the claims nevertheless met the written description requirement, as the disclosure was adequate. 

On Groupon’s appeal, it contended that the PTO erred by finding that the alleged prior art disclosure by Ratismor was not sufficiently publicly accessible to be a “printed publication.”  Ratismor was a report written by a graduate student that was only accessible via a link on the student’s personal webpage.  To be sufficiently accessible, the report needs to have been sufficiently indexed or catalogued to be located by a person of ordinary skill in the art exercising reasonable diligence.  There was no evidence that the Ratismor report had ever been viewed or downloaded and no evidence that a person of ordinary skill in the art would have known of Ratismor’s webpage. 

In his dissent-in-part, Judge Schall argues that the claims should not have been held anticipated by Paul, because one skilled in the art would not have “at once envisaged” the invention, as claimed. 

Blue Calypso, LLC v. Groupon, Inc. Case Nos. 2015-1391, -1393, and -1394 (March 1, 2016); Opinion by: Chen, joined by Reyna and Schall; Schall, dissenting-in-part; Appealed From: United States Patent and Trademark Office, Patent Trial and Appeal Board. Read the full opinion here.

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