Groupon, Inc.v.Blue Calypso, Llc.

Patent Trial and Appeal Board

Dec 17, 2014

12925218 (P.T.A.B. Dec. 17, 2014)

Trials@uspto.gov Paper 47
571-272-7822 Entered: December 17 , 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

GROUPON, INC.,
Petitioner,

v.

BLUE CALYPSO, LLC,
Patent Owner.
____________

Case CBM2013-00044
Patent 8,452,646 B2
____________

Before JONI Y. CHANG, MICHAEL W. KIM, and
BARBARA A. BENOIT, Administrative Patent Judges.

BENOIT, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
CBM2013-00044
Patent 8,452,646 B2
2
I. INTRODUCTION
Groupon, Inc. (“Petitioner”) filed a Petition requesting a covered
business method patent review of claims 1-13 of U.S. Patent
No. 8,452,646 B2 (Ex. 1001; “the ’646 patent”) pursuant to section 18(a) of
the Leahy-Smith America Invents Act (“AIA”).1,2 Paper 1 (“Pet.”). Patent
Owner, Blue Calypso, LLC, filed a Preliminary Response. Paper 8 (“Prelim.
Resp.”). Taking into account Patent Owner’s Preliminary Response, the
Board determined that it was more likely than not that the challenged claims
are unpatentable. Paper 9 (“Inst. Dec.”). The Board instituted trial as to
claims 1-13.
Subsequent to institution, Patent Owner filed a Patent Owner
Response (Paper 17; “PO Resp.”), and Petitioner filed a Reply (Paper 26;
“Reply”). Patent Owner also filed a Motion to Amend (Paper 18; “Mot. to
Amend”) requesting cancellation of claims 1-3 and 10-13. Patent Owner
further filed a Motion to Exclude certain evidence (Paper 34; “Mot. to
Exclude”), to which Petitioner filed an Opposition (Paper 39; “Pet. Opp.”),
and, in turn, Patent Owner filed a Reply (Paper 41; “PO Reply”). Pursuant
to 35 U.S.C. § 324(a), the Board instituted this trial on January 17, 2014, as

1 Pub. L. No. 112-29, 125 Stat. 284, 329 (2011).
2 Paragraph (b) of 35 U.S.C. § 102 was replaced with newly designated
§ 102(a)(1) when § 3(b)(1) of the AIA took effect on September 16, 2012.
Because the application that issued as the ’646 patent was filed before that
date, we will refer to the pre-AIA version of § 102.
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Patent 8,452,646 B2
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to claims 1-13 of the ’646 patent. An oral hearing was held on September 5,
2014.3
The Board has jurisdiction under 35 U.S.C. § 6(c). This decision is a
final written decision under 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73. For
the reasons that follow, we determine that Petitioner has not demonstrated
by a preponderance of the evidence that claims 4-9 of the ’646 patent are
unpatentable; we grant Patent Owner’s Motion to Amend requesting
cancellation of claims 1-3 and 10-13; and we dismiss as moot Patent
Owner’s Motion to Exclude.
A. Instituted Grounds
The Board instituted this trial as to claims 1-13 of the ’646 patent on
the following grounds of unpatentability.

3 This proceeding, as well as CBM2013-00033, CBM2013-00034,
CBM2013-00035, and CBM2013-00046, involve the same parties and
similar issues. The oral arguments for all five reviews were merged and
conducted at the same time. A transcript of the oral hearing is included in
the record as Paper 46 (“Transcript”).
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Patent 8,452,646 B2
4
Reference(s) Basis Claims
Ratsimor4 § 102(b) 1 and 2
Paul5 § 102(b) 1 and 2
Ratismor and Paul § 103(a) 1-5, 10, and 11
Ratsimor, Paul, and Kitaura6 § 103(a) 6-8
Ratsimor, Paul, and Atazky7 § 103(a) 9
Ratsimor, Paul, Hall,8 and MacEachren9 § 103(a) 12 and 13
Inst. Dec. 41.
B. Related Matters
In compliance with 37 C.F.R. § 42.302(a), Petitioner certifies that it
has been sued for infringement of the ’646 patent. Pet. 9. The identified
related court cases are before the United States District Court for the Eastern
District of Texas. Pet. 9; Paper 5, 2.
Petitioner also requested review of the following patents related to the
’646 patent—U.S. Patent No. 8,155,679 B2 (“the ’679 patent”)
(Case CBM2013-00033), U.S. Patent No. 8,457,670 B2 (“the ’670 patent”)

4 Ratsimor, Olga, et al., Technical Report TR-CS-03-27 “Intelligent Ad Hoc
Marketing Within Hotspot Networks,” published November 2003 (Ex. 1006)
(“Ratsimor” or “the Ratsimor paper”).
5 U.S. Patent Application Publication No. 2002/0169835 A1 (Ex. 1007)
(“Paul”).
4 U.S. Patent Application Publication 2002/0091569 A1 (Ex. 1009)
(“Kitaura”).
7 U.S. Patent Application Publication 2007/0121843 A1 (Ex. 1010)
(“Atazky”).
8 U.S. Patent Application Publication 2008/0256233 A1 (Ex. 1011) (“Hall”).
9 MacEachren, Alan M., et al., Geographic Visualization: Designing
Manipulable Maps for Exploring Temporally Varying Georeferenced
Statistics, 1998 PROC. IEEE INFO. VISUALIZATION SYMP. 1 (Ex. 1012)
(“MacEachren”).
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Patent 8,452,646 B2
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As shown in Figure 1, subscriber 1 possesses source communication
device 2 (such as a computer or cell phone) and subscribes to an
advertisement incentive program managed by intermediary 9. Id. at col. 3,
ll. 41-43, col. 4, ll. 25-29. An intermediary may include one or more
computer servers implementing an advertising endorsement system. Id. at
col. 3, ll. 34-36. Advertisements are distributed from advertiser 10 to
destination communication device 7 (such as a computer or cell phone),
which is in possession of recipient 8. Id. at col. 3, ll. 15-17, col. 4, ll. 29-31.
Intermediary 9 compares demographic and interest criteria of advertiser 10
to demographic and interest criteria of subscriber 1 and, based on the interest
criteria, sends endorsement opportunities from various advertisers to
subscriber 1. Id. at col. 5, ll. 15-20.
If subscriber 1 elects to endorse an advertisement, advertiser, or
advertising campaign, an endorsement tag is transmitted from source
communication device 2 of subscriber 1 to destination communication
device 7 of recipient 8. Id. at col. 5, ll. 21-31. The endorsement tag includes
a URL link that, when activated by destination communication device 7,
causes an advertisement associated with the endorsement tag to be
downloaded to destination communication device 7 from intermediary 9. Id.
at col. 5, ll. 31-38.
D. Illustrative Claims
Claims 1-4 are illustrative of the claimed subject matter and read as
follows:
1. In a system comprising a network, a source
communication device, a first destination communication
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device and an intermediary connected to the network, a method
for providing an electronic offer to a first recipient associated
with the first destination communication device and for
incentivizing a subscriber associated with the source
communication device comprising:
receiving, at the intermediary, a first profile including a
set of identification requirements related to at least one
advertiser of a group of advertisers;
receiving, at the intermediary, a second profile including
a set of identification data related to the subscriber;
deriving, by the intermediary, a match condition between
the first profile and the second profile;
determining, by the intermediary, if the subscriber is a
first qualified subscriber based on the match condition;
transmitting, from the intermediary to the source
communication device, a first endorsement tag related to the at
least one advertiser of the group of advertisers and linked with
advertising content;
transmitting a first content communication between the
first source communication device and the first destination
communication device;
transmitting the first endorsement tag to the first
destination communication device; and,
receiving a first signal, at the intermediary from the first
destination communication device, through execution of the
first endorsement tag, to transmit the electronic offer.
2. The method of claim 1 further comprising the steps
of:
transmitting an incentive program from the intermediary
to the source communication device for participation of the first
qualified subscriber; and,
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incentivizing the first qualified subscriber at the source
communication device according to the incentive program.
3. The method of claim 2 further comprising the step of:
verifying, by the intermediary, a validity state of the electronic
offer.
4. The method of claim 3 wherein the step of verifying,
by the intermediary, a validity state of the electronic offer
comprises the further steps of:
receiving, at the intermediary, a set of offer attributes;
receiving, at the intermediary, a verification request from
the first destination communication device;
comparing, by the intermediary, at least one offer
attribute of the set of offer attributes to the verification request
to arrive at a set of results;
generating, by the intermediary, a verification signal
based on the set of results; and,
transmitting the verification signal from the intermediary
to the first destination communication device.
Ex. 1001, col. 15, l. 48 – col. 16, l. 33.
II. ANALYSIS
A. Claim Construction
As a step in our analysis for determining the patentability of the
challenged claims, we determine the meaning of the claims. In a covered
business method patent review, a claim in an unexpired patent shall be given
its broadest reasonable construction, in light of the specification of the patent
in which it appears. 37 C.F.R. § 42.300(b). Under the broadest reasonable
construction standard, claim terms generally are given their ordinary and
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Patent 8,452,646 B2
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customary meaning, as would be understood by one of ordinary skill in the
art in the context of the entire disclosure. In re Translogic Tech., Inc., 504
F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term
must be set forth in the specification with reasonable clarity, deliberateness,
and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We must
be careful not to read a particular embodiment appearing in the written
description into the claim if the claim language is broader than the
embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). We
construe the terms “incentive program,” “incentive,” and “incentivizing” in
accordance with these principles.
Sole independent claim 1 is directed to a system “for incentivizing a
subscriber,” and claim 2, which depends from claim 1, recites “incentivizing
the first qualified subscriber at the source communication device according
to the incentive program.” Claims 3 depends directly from claim 2, and
claim 4, in turn, depends directly from claim 3.
As recognized by both Petitioner and Patent Owner, the ’646 patent
sets forth express definitions of the terms “incentive” and “incentive
program” under the heading “DEFINITIONS.” See Ex. 1001, col. 3, ll. 28-
31; Pet. 10-11; Prelim. Resp. 19, 24; see generally PO Resp. 10-11;
Reply 1-2. Based on the express definitions, the Board, in the Decision to
Institute, construed “incentive” as “a reward provided to a subscriber based
on an endorsement” (Ex. 1001, col. 3, ll. 28-29) and “incentive program” as
“a set of rules governing an incentive distribution” (Id. at col. 3, ll. 30-31).
Inst. Dec. 8-9. Further, based on the express definition of “incentive” and
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the ordinary meaning of “incentivize,”10 the Board construed “incentivize”
as “to offer a reward provided to a subscriber based on an endorsement.” Id.
Neither party challenges these constructions. See generally PO
Resp. 10-11; Reply 1-2. Having considered whether the constructions set
forth in the Decision to Institute should be changed in light of evidence
introduction during trial, we are not persuaded any modification is
necessary. Therefore, we maintain the construction of “incentive” as “a
reward provided to a subscriber based on an endorsement”; “incentive
program” as “a set of rules governing an incentive distribution”; and
“incentivize” as “to offer a reward provided to a subscriber based on an
endorsement.”
Further, we find “incentivizing” and “incentive program,” when read
in light of the specification, each suggests a financial product or service.
The ’646 patent repeatedly discloses “incentive,” “incentive program,” and
“incentivizing” in a financial context. For example, the ’646 patent
discloses cash incentives are provided on debit cards or cash distributions.
Ex. 1001, col. 2, ll. 25-26, col. 6, ll. 51-53. In another example, incentives
are disclosed as “payments,” “payouts,” “cash,” and “cash-like.” Id. at
col. 2, l. 48, col. 6, ll. 41-61, col. 7, ll. 51-54. The ’646 patent further
indicates an “incentive program may pay cash incentives, incentivize
communication fees, offer product discounts, generate ‘reward points,’ or
provide product or service credit.” Id. at col. 6, ll. 48-51. These examples

10 AMERICAN HERITAGE DICTIONARY 912 (3d ed. 1992) (defining
“incentivize” as “[t]o offer incentives or an incentive to; motivate”).
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of incentive programs are financial—cash incentives and communication
fees are monetary; product discounts, product credit, and service credit
reduce the monetary cost of a financial transaction; and reward points are a
form of currency. Accordingly, we determine “incentive,” “incentive
program,” and “incentivize” are financial in nature.
B. Standing
Section 18 of the AIA provides for the creation of a transitional
program for reviewing covered business method patents. Section 18 limits
reviews to persons or their privies who have been sued or charged with
infringement of a “covered business method patent,” which does not include
patents for “technological inventions.” AIA §§ 18(a)(1)(B), 18(d)(1); see 37
C.F.R. § 42.302.
1. Financial Product or Service
Petitioner contends that the ’646 patent is a covered business method
patent because claim 2 recites “incentivizing the first qualified subscriber at
the source communication device according to the incentive program” and,
accordingly, is directed to activities that are financial in nature. Pet. 7. Our
inquiry is controlled by whether the patent “claims a method or
corresponding apparatus for performing data processing or other operations
used in the practice, administration, or management of a financial product or
service.” 37 C.F.R. § 42.301(a) (definition of a covered business method
patent). As set forth above, we determine “incentivizing” and “incentive
program,” which are recited in claim 2, are financial in nature.
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Accordingly, the subject matter of claim 2 performs data processing
or other operations used in the practice, administration, or management of a
financial product or service. See 37 C.F.R. § 42.304(a).
2. Exclusion for Technological Inventions
The definition of “covered business method patent” in section 18 of
the AIA expressly excludes patents for “technological inventions.” AIA
§ 18(d)(1). To determine whether a patent is for a technological invention,
we consider “whether the claimed subject matter as a whole recites a
technological feature that is novel and unobvious over the prior art; and
solves a technical problem using a technical solution.” 37 C.F.R.
§ 42.301(b). The following claim drafting techniques, for example, typically
do not render a patent a “technological invention”:
(a) Mere recitation of known technologies, such as
computer hardware, communication or computer networks,
software, memory, computer-readable storage medium,
scanners, display devices or databases, or specialized machines,
such as an ATM or point of sale device.
(b) Reciting the use of known prior art technology to
accomplish a process or method, even if that process or method
is novel and non-obvious.
(c) Combining prior art structures to achieve the normal,
expected, or predictable result of that combination.
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,764 (Aug. 14,
2012).
Petitioner indicates that the ’646 patent is not directed to a
technological invention because claim 2 recites known components and is
directed toward a business problem, not a technical solution. Pet. 7-8. We
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agree. For example, claim 2 requires transmitting to a source
communication device. Thus, claim 2 recites the use of a communication
device, which is a known technology, to perform a method, which does not
render claim 2 a technological invention. See 77 Fed. Reg. at 48,764,
item (b).
Accordingly, we determine that claim 2 is not directed toward a
technological invention. We, therefore, conclude that the ’646 patent is a
covered business method patent.
C. Patent Owner’s Motion to Amend
Patent Owner’s Motion to Amend (Paper 18) is before us for
consideration. In the motion, Patent Owner requests cancellation of
claims 1-3 and 10-13 of the ’646 patent. The cancellation of these claims is
not based on any contingency. There is no indication, for example, that
claims 1-3 and 10-13 should be cancelled only if the claims are determined
unpatentable. Rather, the Motion to Amend leaves no doubt that Patent
Owner unequivocally requests cancellation of claims 1-3 and 10-13.
For these reasons, we grant Patent Owner’s request to cancel claims
1-3 and 10-13 of the ’646 patent. Because Patent Owner requested
cancellation of claims 1-3 and 10-13, not based on any contingency, Patent
Owner has waived any issues with respect to claims 1-3 and 10-13, and,
therefore, we need not address the patentability of those claims.
Accordingly, we need consider only the following grounds of
unpatentability: whether claims 4 and 5 would have been obvious over the
Ratsimor paper and Paul; whether claims 6-8 would have been obvious over
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the Ratsimor paper, Paul, and Kitaura; and whether claim 9 would have been
obvious over the Ratsimor paper, Paul, Hall, and MacEachren.
D. Whether the Ratsimor Paper is a Printed
Publication under 35 U.S.C. § 102(b)
Because each of the remaining grounds of unpatentability relies on the
Ratsimor paper, the dispositive issue for determining whether Petitioner has
shown claims 4-9 are unpatentable is whether the Ratsimor paper is prior art
to those claims. In its Petition, Petitioner asserts the Ratsimor paper is prior
art because it is a technical report published by the Department of Computer
Science and Electrical Engineering (“the Department”) of the University of
Maryland, Baltimore County, in November 2003, more than one year prior
to the earliest priority date claimed by the ’646 patent. See Pet. 15; Ex. 1008
¶¶ 2, 16; see also Ex. 1001, col. 1, ll. 8-15 (claiming priority to a provisional
application filed December 27, 2004).
To substantiate its position that the Ratsimor paper is a printed
publication, Petitioner relies on a “publications” list of papers authored by
Dr. Olga Ratsimor (pages i-ii) included in Exhibit 1006, along with the
Ratsimor paper itself (pages 1-14), and a page that appears to be a cover
page identifying the Ratsimor paper as “Technical Report TR-CS-03-27”
(page iii). See Ex. 1006.
Petitioner also relies on the testimony of its Declarant,
Anupam Joshi, Ph.D. (one of the authors of the Ratsimor paper), that the
Ratsimor paper was a technical report of the Department that was “published
and publicly available around November 2003,” and also was “publicly
available for viewing and downloading” from the Department’s website.
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Pet. 15; Ex. 1008 ¶ 2. He also explains the “TR-CS-03-27” designation of
the technical report on the cover page “means that this Report was the 27th
report issued in 2003 by” the Department. Ex. 1008 ¶ 2.
Patent Owner counters that Petitioner has failed to prove the Ratsimor
paper is a printed publication under 35 U.S.C. § 102(b) and, therefore,
Petitioner has not established that Ratsimor is prior art to the claims of the
’646 patent. PO Resp. 6-7, 17-25. Patent Owner contends the Ratsimor
paper is an unindexed, internal departmental technical report that was not
accessible to those of ordinary skill in the art more than one year prior to the
date of the application for patent. PO Resp. 19-20.
Having reviewed the parties’ arguments and supporting evidence, we
do not find sufficient evidence that the Ratsimor paper was accessible
publicly and, therefore, we conclude the Ratsimor paper is not a printed
publication under 35 U.S.C. § 102(b). Section 102 states: “A person shall
be entitled to a patent unless . . . (b) the invention was . . . described in a
printed publication . . . more than one year prior to the date of the
application for patent . . . .” 35 U.S.C. § 102(b) (2011). “The statutory
phrase ‘printed publication’ has been interpreted to give effect to ongoing
advances in the technologies of data storage, retrieval, and dissemination.”
In re Hall, 781 F.2d 897, 898 (Fed. Cir. 1986). As such, a printed
publication under 35 U.S.C. § 102(b) may be an electronic publication, such
as the Ratsimor paper is purported to be. See In re Wyer, 655 F.2d 221, 226
(CCPA 1981) (holding that an electronic publication is considered to be a
“printed publication” “upon a satisfactory showing that such document has
been disseminated or otherwise made available to the extent that persons
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interested and ordinarily skilled in the subject matter or art, exercising
reasonable diligence, can locate it and recognize and comprehend therefrom
the essentials of the claimed invention without need of further research or
experimentation”).
The determination of whether a particular reference qualifies as a
prior art printed publication “involves a case-by-case inquiry into the facts
and circumstances surrounding the reference’s disclosure to members of the
public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). The key
inquiry is whether the reference was made “sufficiently accessible to the
public interested in the art” before the critical date. In re Cronyn, 890 F.2d
1158, 1160 (Fed. Cir. 1989). “A given reference is ‘publicly accessible’
upon a satisfactory showing that such 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 . . . .” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed.
Cir. 2006). Indexing is not “a necessary condition for a reference to be
publicly accessible,” but is among many factors that may bear on public
accessibility. In re Lister, 583 F.3d 1307, 1312 (Fed. Cir. 2009).
1. Whether the Ratsimor Paper Was
Publicly Accessible in November 2003
Although Petitioner does provide some evidence to support its
position, after considering all of the evidence regarding the facts and the
circumstances surrounding the public accessibility of the Ratsimor paper, in
view of the relevant case law, we determine that Petitioner has not met its
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burden of showing that the Ratsimor paper was publicly accessible in
November 2003.
We begin our analysis with Petitioner’s supporting evidence, and
specifically with Dr. Joshi’s testimony, which supports Petitioner’s
contention that the Ratsimor paper was a technical report of the Department
posted on the Department’s webserver and was accessible to the public for
viewing and downloading in November 2003. As corroborating evidence,
Petitioner presents additionally the publications list of Dr. Ratsimor, which
includes the Ratsimor paper designated as a “Technical Report” and
identifies a November 2003 date with it. Ex. 1006 at i. The publications list
also includes a uniform resource locator
(http://www.csee.umbc.edu/~oratsi2/publications). Id. Petitioner contends
that Dr. Ratsimor’s publications list “includes a link to download” the
Ratsimor paper. Reply 4.
According to Petitioner, the inclusion of the Ratsimor paper in
Dr. Ratsimor’s publications list supports Petitioner’s contention that
Dr. Ratsimor viewed the Ratsimor paper as a publication and associated a
November 2003 date with the paper. Because, as Dr. Joshi testifies, the
paper was viewable and downloadable from the Department’s website,
Petitioner asserts that the inclusion of the Ratsimor paper in Dr. Ratsimor’s
list of publications on the Department’s website evinces an intent to make
the Ratsimor paper public and further is an attempt by Dr. Ratsimor to
disseminate the reference. Cf. Wyer, 655 F.2d at 227 (factors supporting
public accessibility include an intent to publicize and disseminating
activities). We agree that Dr. Ratsimor’s subjective view of the Ratsimor
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paper, her intent to publicize the Ratsimor paper, and her dissemination
activities weigh in favor of finding the Ratsimor paper was publicly
accessible. These findings, however, are not dispositive, and, indeed, are
insufficient to support a legal determination that the Ratsimor paper is a
printed publication.
As an initial matter, we note that there are gaps in Petitioner’s
proffered evidence—foremost is Dr. Joshi’s lack of indication that the
Ratsimor paper was downloaded or otherwise disseminated, or 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.
Turning to the reference itself, the Ratsimor paper is a fourteen page paper,
which does not provide a date or indicia of dissemination, such as the name
of a journal. See, e.g., Ex. 1006 at 1 (page 1 of the Ratsimor paper shows
the title of the paper, author names and internet addresses, the Department’s
address, an abstract, keywords, and the first section of text). Nor does the
cover page provide a date or indicia of dissemination of the Ratsimor paper,
other than it being a technical report. See Ex. 1006 at iii (showing
“Technical Report TR-CS-03-27,” the title of the paper, author names and
internet addresses, and the Department’s address).
The aforementioned gaps in evidence are important because, even
when we assume that the Ratsimor paper was available on the Department’s
website and was included in a list of publications identified by the author’s
name, the facts are similar to those involving the theses placed in university
libraries in In re Bayer, 568 F.2d 1357, 1361-62 (CCPA 1978) and In re
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Cronyn, 890 F.2d 1158, 1161 (Fed. Cir. 1989). The Court held that an
unshelved and uncatalogued graduate thesis placed in a university library
and known only to three faculty members was not sufficient to support a
finding that it was publicly accessible. Bayer, 568 F.2d at 1361-62. In
Bayer, as the Court explains, the student thesis was not a printed publication
under 35 U.S.C. § 102(b), because the “thesis could have been located in the
university library only by one having been informed of its existence by the
faculty [members], . . . the probability of public knowledge of the contents
of the [thesis] . . . was virtually nil.” Bayer, 568 F.2d at 1361 (citation
omitted).
Perhaps even closer to our current fact pattern is Cronyn, in which
three student theses were determined by the Court not to be accessible to the
public because “they had not been either cataloged or indexed” in
relationship to the subject matter of the theses. Cronyn, 890 F.2d at 1161.
Specifically, even if we were to determine that the current fact pattern
supported a finding of indexing by author, the Federal Circuit held in
Cronyn that indexing based on author’s name was not sufficient to make the
theses publicly accessible, even when the title of the theses was listed along
with the author’s name. Id.
The Ratsimor paper also is similar to the paper that was placed “on an
open FTP server and might have been available to anyone with FTP know-
how and knowledge of [a particular] subdirectory,” containing information
about a particular project in SRI Int’l, Inc. v. Internet Security Sys., Inc., 511
F.3d 1186, 1194-97 (Fed. Cir. 2008). In SRI, the Court disagreed that an
interested person of ordinary skill in the art would know, based on
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distribution of the existence of the FTP server to interested persons, that the
“FTP server contained information on the [particular] project and therefore
would navigate through the folders to find” the paper at issue. SRI, 511 F.3d
at 1195. Although the paper on the FTP server was available to anyone who
managed to find it, the “paper was not publicized or placed in front of an
interested public.” SRI, 511 F.3d at 1197. Thus, the Court concluded the
paper on the FTP server was “analogous to placing posters at an
unpublicized conference with no attendees” and, therefore, was not publicly
accessible. Id.
In the instant case, like the paper placed on an FTP server that was
accessible to knowledgeable persons, the Ratsimor paper was only available
for “viewing and downloading” (Ex. 1008 ¶ 2) to members of the public
who happened to know that the Ratsimor paper was there. Thus, comparing
the totality of the current facts to the above cases, we determine that
Petitioner has not met its burden of showing that the Ratsimor paper was
publicly accessible.
In response, Petitioner contends that an interested and ordinarily
skilled artisan aware of an October 2003 article by Dr. Ratsimor, which the
parties do not dispute was publicly available, would expect additional
written materials to be generated and available from the Department’s
website. Reply 4 (citing Ex. 1042). According to the Petitioner, an
interested and ordinarily skilled artisan, having such knowledge of the
October 2003 article, then would be led to Dr. Ratsimor’s publications list
(Ex. 1006 at i), which identifies the Ratsimor paper and “includes a link to
download Ratsimor.” Reply 4. Thus, according to Petitioner, an interested
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and ordinarily skilled artisan would be able to follow the October 2003
article as a roadmap to the Ratsimor paper, in the same way that an article in
Cornell University v. Hewlett-Packard Co., No. 01-cv-1974, 2008 U.S. Dist.
LEXIS 39343, at *24-25 (N.D.N.Y. May 14, 2008), pointed the way to an
unpublished thesis that was not indexed by subject or title. In that district
court case, the article used as a roadmap was published in a seminal
publication in the field of electrical engineering and included an express
reference to the unpublished thesis, which was deemed by the Court to be a
printed publication under 35 U.S.C. § 102(b). Id., slip op. at 11 (“After
weighing all the circumstances of accessibility, this court views as vitally
important the citation of [the unpublished thesis] in the article [published in
a seminal publication].”). The article served to guide those skilled in the art
to the thesis because “the article cites to the . . . thesis in such a way as to
make it accessible to any reader interested in the subject matter.” Id., slip
op. at 12.
Unlike the roadmap article in Cornell, however, the October 2003
article by Dr. Ratsimor does not include an explicit reference to the
November 2003 Ratsimor paper asserted in this proceeding. Moreover,
although the October 2003 article may have pointed an interested researcher
to the Departmental webserver, the October 2003 article does not point an
interested researcher expressly to the Ratsimor paper on the Departmental
webserver. And as noted previously, insufficient evidence has been
presented to establish the Department’s webserver contained an index or
catalog, or any other tools for finding the Ratsimor paper based on the
subject matter of the paper.
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Thus, after considering the totality of the indicia of public
accessibility, the evidence on this record places the Ratsimor paper on the
non-accessible side of public accessibility. Therefore, we conclude the
Ratsimor paper is not a printed publication under 35 U.S.C. § 102(b) that
can be used to challenge the patentability of the claims in the ’646 patent.
Because we have determined that Petitioner has not shown that the
Ratsimor paper was publicly accessible in November 2003, we need not
consider Petitioner’s evidence purporting to corroborate the date of the
Ratsimor paper. See Reply 5.
2. Whether the Ratsimor Paper Was
Publicly Accessible in November 2005
Petitioner first argues in its Reply that the Ratsimor paper was
“publicly available on the Internet no later than November 2005” and so is
prior art for claims 4-9 of the ’646 patent “because each of the claims of the
’646 patent have a priority date after” November 2005. Reply 5-6. For this
assertion, Petitioner relies on the indication that Dr. Ratsimor’s publication
list was last updated as of November 2005. Reply 5. As explained
previously, however, we do not need to reach the date of when the Ratsimor
paper was available on the Department’s webserver because insufficient
evidence has been presented to establish the Department’s webserver
contained an index or catalog, or any other tools for finding the Ratsimor
paper based on the subject matter of the paper. Therefore, the Ratsimor
paper was not accessible publicly on the Department’s webserver in a
manner sufficient to qualify as a printed publication.
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3. The Ratsimor Paper Is Not Prior Art
For the foregoing reasons, we determine that Petitioner has not
demonstrated, by a preponderance of the evidence, that the Ratsimor paper is
a printed publication within the meaning of 35 U.S.C. § 102(b) and,
therefore, the Ratsimor paper is not prior art to the claims of the ’646 patent.
Therefore, Petitioner may not rely upon the Ratsimor paper for its asserted
grounds of patentability under 35 U.S.C. § 103(a). Accordingly, we
conclude that Petitioner has not demonstrated that (i) claims 4 and 5 would
have been obvious over the Ratsimor paper and Paul, (ii) claims 6-8 would
have been obvious over the Ratsimor paper, Paul, and Kitaura, or
(iii) claim 9 would have been obvious over the Ratsimor paper, Paul, Hall,
and MacEachren.
E. Patent Owner’s Motion to Exclude
Patent Owner seeks to exclude: (i) Dr. Ratsimor’s resume (Ex. 1032),
her research summary (Ex. 1033), and a Departmental webpage for a
research project (Ex. 1034), all of which cite the Ratsimor paper with a
November 2003 publication date; (ii) three patents—U.S. Patent
Nos. 8,636,608 B2 (Ex. 1035), 8,620,736 B2 (Ex. 1039), and 8,671,012 B2
(Ex. 1040), which cite the Ratsimor paper with a November 2003 date; and
(iii) results from a search engine (i.e., Google Scholar) (Ex. 1036), which list
the Ratsimor paper with a November 2003 date.
We need not assess the merits of Patent Owner’s Motion to Exclude.
Petitioner uses the challenged exhibits to support its contention that the
Ratsimor paper was published in November 2003. Reply 5. As discussed
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above, even without Petitioner’s supporting evidence regarding the date of
the Ratsimor paper, we have determined that the Ratsimor paper is not a
printed publication under 35 U.S.C. § 102(b), because the Ratsimor paper
was not publicly accessible as of November 2003. Notably, the evidence
that Patent Owner seeks to exclude is dated between 2007 and 2014 (see
Exs. 1032-1036, 1039, 1040) and, as such, provides little probative value
regarding how an interested and ordinarily skilled artisan would have been
able to locate the Ratsimor paper in November 2003. Thus, the evidence
that Patent Owner seeks to exclude does not tip the scales in favor of public
accessibility of the Ratsimor paper.
Accordingly, Patent Owner’s Motion to Exclude certain evidence is
dismissed as moot.
III. CONCLUSION
Petitioner has not proven, by a preponderance of the evidence, that
claims 4-9 of ’646 patent are unpatentable under 35 U.S.C. § 103(a).
Patent Owner’s Motion to Amend requesting cancellation of claims
1-3 and 10-13 is granted. Patent Owner’s Motion to Exclude is dismissed as
moot.
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IV. ORDER
Accordingly, it is hereby:
ORDERED that Petitioner has not demonstrated by a preponderance
of the evidence that claims 4-9 of U.S. Patent No. 8,452,646 B2 are
unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Amend
requesting cancellation of claims 1-3 and 10-13 is granted;
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
dismissed; and
FURTHER ORDERED that, because this is a final written decision,
the parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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PETITIONER:

Jeanne M. Gills
CBM_Groupon@foley.com

Troy D. Smith
tdsmith@foley.com

PATENT OWNER:
John C. Phillips
phillips@fr.com

Carl E. Bruce
bruce@fr.com

David B. Conrad
conrad@fr.com

Thomas H. Reger II
CBM2013-00044@fr.com