Groupon, Inc.v.Blue Calypso, Llc.

Patent Trial and Appeal Board

Dec 17, 2014

12592019 (P.T.A.B. Dec. 17, 2014)

Trials@uspto.gov Paper 51
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 CBM2013-00033
Patent 8,155,679 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
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I. INTRODUCTION
Groupon, Inc. (“Petitioner”) filed a Petition requesting a covered
business method patent review of claims 1-27 of U.S. Patent
No. 8,155,679 B2 (Ex. 1001; “the ’679 patent”) pursuant to section 18(a) of
the Leahy-Smith America Invents Act (“AIA”).1 Paper 1 (“Pet.”). Patent
Owner, Blue Calypso, LLC, filed a Preliminary Response. Paper 7 (“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 10 (“Inst. Dec.”). Pursuant to 35 U.S.C. § 324(a),
the Board instituted this trial on December 19, 2013, as to claims 1-27 of the
’679 patent on the following grounds of unpatentability.
Reference(s) Basis Claims Challenged
Ratsimor2 § 102(b) 1-16 and 23-27
Paul3 § 102(b) 7-16 and 23-27
Ratismor and Paul § 103(a) 1-27
Inst. Dec. 40.
Subsequent to institution, Patent Owner filed a Patent Owner
Response (Paper 23; “PO Resp.”), and Petitioner filed a Reply (Paper 30;
“Reply”). Patent Owner also filed a Motion to Exclude certain evidence.

1 Pub. L. No. 112-29, 125 Stat. 284, 329 (2011).
2 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”).
3 U.S. Patent Application Publication No. 2002/0169835 A1 (Ex. 1007)
(“Paul”).
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Paper 39 (“Mot.”). Petitioner filed an Opposition (Paper 44; “Pet. Opp.”),
and Patent Owner filed a Reply (Paper 46; “PO Reply”).
An oral hearing was held on September 5, 2014.4
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 shown by a
preponderance of the evidence that claims 7-16 and 23-27 of the ’679 patent
are unpatentable, and we dismiss as moot Patent Owner’s Motion to
Exclude. Also, for the reasons that also follow, we determine that Petitioner
has not demonstrated by a preponderance of the evidence that claims 1-6 and
17-22 of the ’679 patent are unpatentable.
A. Related Matters
In compliance with 37 C.F.R. § 42.302(a), Petitioner certifies that it
has been sued for infringement of the ’679 patent. Pet. 8. The identified
related court cases are before the United States District Court for the Eastern
District of Texas. Pet. 4; Paper 6, 2.
Petitioner also requested review of the following patents related to the
’679 patent— U.S. Patent No. 7,664,516 B2 (“the ’516 patent”)
(Case CBM2013-00035), U.S. Patent No. 8,457,670 B2 (“the ’670 patent”)
(Case CBM2013-00034), U.S. Patent No. 8,438,055 B2 (“the ’055 patent”)

4 This proceeding, as well as CBM2013-00034, CBM2013-00035,
CBM2013-00044, 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 50 (“Transcript”).
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(Case CBM2013-00046), and U.S. Patent No. 8,452,646 B2 (“the ’646
patent”) (Case CBM2013-00044). The ’679 patent issued from a
continuation-in-part of an application that issued as the ’516 patent. The
specification of the ’679 patent includes additional disclosures not part of the
parent application. See, e.g., Ex. 1001, col. 6, l. 58 – col. 12, l. 16; Figs. 6-9.
Additionally, three patents claim priority to the application that issued as the
’679 patent: the ’670 patent, the ’055 patent, and the ’646 patent.
B. The ’679 Patent
The ’679 patent relates to a system and method for peer-to-peer
advertising between mobile communication devices. Ex. 1001, Abstract,
col. 2, ll. 22-31. The ’679 patent describes how advertisements may be
transmitted before, or after, transmissions between peer-to-peer devices,
such as cellular phones. Id. at col. 2, ll. 22-31, 42-49. To encourage
transmissions of advertisements, advertisers provide subsidies and
incentives, such as reduced communication fees or product discounts, to
qualified subscribers. Id. at col. 3, ll. 39-45. An advertiser may manage its
own subsidy program or may participate in a subsidy program managed by
an intermediary. Id. at col. 3, ll. 21-24. An intermediary may be funded by,
for example, advertisers, Internet service providers, telecommunications
providers, or other entities independent from the advertisers. Id. at col. 2,
ll. 31-38.
To set up a subsidy program, an advertiser identifies subscriber
characteristics that must be met for a subscriber to participate in the subsidy
program, and identifies the subsidies to be received by subscribers when
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various performance criteria are met. Id. at col. 3, ll. 39-65. Examples of
performance criteria relate to number and length of communication
transmissions. Id. at col. 3, ll. 54-56. The subsidy program enables
advertisers to identify subscribers to subsidize communication fees, offer
product discounts, generate and accumulate “reward points,” and mitigate or
defer other types of subscriber expenses. Id. at col. 3, ll. 39-45.
C. Illustrative Claim
Claims 1, 7, and 23 are independent claims. Claim 7 is illustrative of
the claimed subject matter and reads as follows:
7. A method for providing access to an advertisement
from an advertiser to a source communication device possessed
by a subscriber and distributing the access to the advertisement
from the source communication device to a destination
communication device possessed by a recipient, wherein the
destination communication device is compatible with the source
communication device, and the recipient having a relationship
to the subscriber, the method being executed by a processor,
and comprising the steps of:
comparing a desired demographic profile to a subscriber
demographic profile to derive a match;
establishing a bi-lateral endorsement between the
subscriber and the advertiser;
providing a subsidy program to the subscriber based on
the match;
sending a token related to the advertisement to an
endorsement manager activated on the source communication
device;
sending, to the source communication device,
information that can be used to initiate a communication
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session between the source communication device and the
destination communication device and to transmit a message,
including the token, from the source communication device to
the destination communication device contemporaneously with
the communication session; and
recognizing a subsidy, according to the subsidy program,
for the subscriber after a termination of the communication
session.
Ex. 1001, col. 13, l. 61 – col. 14, l. 23.
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
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 below in accordance with these principles.
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1. “subsidy”
Each of independent claims 7 and 23 recites “subsidy.” For example,
independent claim 7 recites “recognizing a subsidy, according to the subsidy
program, for the subscriber,” and independent claim 23 recites “the system
providing a subsidy to a qualified subscriber associated with the first
communication device”; “determine an amount of the subsidy according to
the evaluation”; and “relate the subsidy to the qualified subscriber.”
The ’679 patent does not set forth a special definition for “subsidy.”
Accordingly, we look to the ordinary meaning of the term “subsidy”—
financial assistance given by one to another.5 The ’679 patent’s use of
“subsidy” is consistent with its ordinary meaning. Specifically, the ’679
patent describes an advertiser setting up a subsidy program to subsidize
communication fees, offer product discounts, generate and accumulate
“reward points” for subscribers, or mitigate or defer other expenses of the
subscriber. Ex. 1001, col. 3, ll. 39-45 (referring to Fig. 2). These examples
are financial in nature. Product discounts reduce the monetary cost of a
financial transaction, reward points are a form of currency, and mitigating or
deferring expenses reduces the monetary cost of a financial transaction or
postpones the monetary cost of a financial transaction, respectively. Also,
the ’679 describes, as part of a subscriber setup process, an intermediary
presenting, to a subscriber for selection, “subsidy programs available,

5 AMERICAN HERITAGE DICTIONARY 896 (3d ed. 1992) (defining “subsidy”
as “1. Monetary assistance granted by a government to a person or group in
support of an enterprise regarded as being in the public interest.
2. Financial assistance given by one person or government to another.”).
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including the criteria for continued subsidy and levels of subsidy.”
Ex. 1001, col. 4, ll. 59-65 (referring to Fig. 3); see id. at col. 4, ll. 16-17. In
an example of a bi-directional endorsement process, the ’679 patent further
describes an advertiser calculating the amount to subsidize the subscriber for
endorsement, noting that some subscribers may receive a larger subsidy than
other subscribers. Ex. 1001, col. 8, ll. 47-53 (referring to Fig. 7a); see id. at
col. 7, l. 56.
For these reasons, in the Decision to Institute, the Board construed
“subsidy” as “financial assistance given by one to another.” Inst. Dec. 9-11.
Neither party challenges this construction. Having considered whether the
construction set forth in the Decision to Institute should be changed in light
of evidence introduced during trial, we are not persuaded any modification is
necessary. Therefore, we maintain the construction of “subsidy” as
“financial assistance given by one to another.”
2. “subsidy program”
Independent claim 7 recites “providing a subsidy program to the
subscriber,” and independent claim 23 recites “supporting a set of subsidy
programs” and “at least one subsidy program, of the set of subsidy
programs, being associated with at least one advertiser of the set of
advertisers.”
The ’679 patent does not set forth a special definition for “subsidy
program.” The ’679 patent’s use of “subsidy program” is consistent with the
construction of “subsidy” to mean “financial assistance given by one to
another” and the ordinary meaning of “program”—a system of services,
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opportunities, or projects, usually designed to meet a social need.6 For
example, in relation to an advertiser setting up a subsidy program, the
’679 patent describes a subsidy program as enabling advertisers “to select or
endorse desirable subscribers” and enabling advertisers to identify “what
level of discounts, credits, points, or offerings” a subscriber would receive as
a subsidy. Ex. 1001, col. 3, ll. 39-45, 51-54. The ’679 patent also describes
an intermediary presenting, to a subscriber for selection, “subsidy programs
available, including the criteria for continued subsidy and levels of subsidy.”
Ex. 1001, col. 4, ll. 59-65.
For these reasons, in the Decision to Institute, the Board construed
“subsidy program” as “a system of opportunities designed to give financial
assistance to another.” Inst. Dec. 11-13.
Patent Owner contends that “subsidy program” should be construed as
“a set of rules governing a subsidy distribution.” PO Resp. 13-14. Patent
Owner indicates the subsidy program enables advertisers to identify levels of
subsidy subscribers receive, in accordance with performance criteria (such
as the number of communication transmissions and the length of the
transmission). PO Resp. 13 (citing Ex. 1001, col. 3, ll. 39-65). Petitioner
disagrees with Patent Owner’s proposed construction and contends that
“subsidy program” is “a program for distributing financial assistance given
by one to another.” Reply 1.

6 AMERICAN HERITAGE DICTIONARY 1447 (3d ed. 1992) (defining “program”
as “4. A system of services, opportunities, or projects, usually designed to
meet a social need”).
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We agree with Patent Owner that the’679 patent discloses
performance criteria identifying levels of subsidies provided by a subsidy
program, which is an example of a set of rules governing a subsidy
distribution. See PO Resp. 13 (citing Ex. 1001, col. 3, ll. 39-65). Patent
Owner’s arguments, however, focus on a particular embodiment of an
advertiser setup process described in the ’679 patent. See Ex. 1001, col. 3,
ll. 20-21 (“FIG. 2 is a flowchart of an embodiment of an advertiser setup
process.”). We must be careful not to incorporate a particular embodiment
appearing in the Specification into the claim if the claim language is broader
than the embodiment. Van Geuns, 988 F.2d at 1184; see also Phillips v.
AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (warning “against
confining the claims to those embodiments”).
The ’679 patent also discloses that a subsidy program may include
aspects, such as random or targeted advertisements (Ex. 1001, col. 4, ll. 65-
66), other than performance criteria or a set of rules governing subsidy
distribution. Thus, although we agree with Patent Owner that a “subsidy
program” encompasses a set of rules governing a subsidy distribution, we
conclude a “subsidy program” encompasses more than such a set of rules.
Petitioner’s proffered construction of “a program for distributing financial
assistance given by one to another” includes the construction of subsidy.
Petitioner’s proffered construction, repeats, rather than construes, the other
word (“program”) of the claim term “subsidy program” within its proffered
construction.
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Thus, we are not persuaded any modification to the construction is
necessary. Therefore, we maintain the construction of “subsidy program” as
“a system of opportunities designed to give financial assistance to another.”
3. “bi-lateral endorsement”
Both of independent claims 7 and 23 recite “bi-lateral endorsement.”
Independent claim 7 recites “establishing a bi-lateral endorsement between
the subscriber and the advertiser,” whereas independent claim 23 recites that
a processor of the intermediary is configured to “determine a bi-lateral
endorsement of the qualified subscriber and the at least one advertiser.” The
parties disagree on the construction of “bi-lateral endorsement.” Pet. 10-11;
PO Response 9-12.
The ’679 patent does not set forth a special definition for “bi-lateral
endorsement.” In proffering constructions, neither party provides sufficient
evidence of the ordinary meaning of “bi-lateral” or “endorsement.” We
determine the ordinary meaning of the terms “bi-,”7 “lateral,”8 and
“endorsement”9 collectively mean “both sides giving approval.” The use of
“bi-lateral endorsement” in independent claims 7 and 23 indicate that an
endorsement occurs between two parties, a subscriber and an advertiser,
which is consistent with its ordinary meaning of “both sides giving

7 AMERICAN HERITAGE DICTIONARY 181 (3d ed. 1992) (defining “bi-” as
“1. a. Two . . . b. Both . . . c. Both sides, parts, or directions”).
8 AMERICAN HERITAGE DICTIONARY 1017 (3d ed. 1992) (defining “lateral”
as “1. Of, relating to, or situated at or on the side”).
9 AMERICAN HERITAGE DICTIONARY 608 (3d ed. 1992) (defining “endorse”
as “4. To give approval of or support to, especially by public statement”);
id. (defining “endorsement” as “1. The act of endorsing”).
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approval.” The ’679 patent provides an example of a bi-lateral endorsement
in Figure 7a, which describes a bi-directional endorsement process between
the subscriber and the advertiser, via an intermediary, during the enrollment
process. Ex. 1001, col. 7, ll. 56-58. As part of an enrollment process, the
advertiser decides whether to endorse a particular subscriber. Id. at col. 8,
ll. 47-48. The bi-lateral endorsement is completed after the subscriber
chooses at least one plan and one advertiser for endorsement. Id. at col. 8,
l. 66 – col. 9, l. 3. The ’679 patent also describes examples of endorsement
by an advertiser of a subscriber and endorsement by a subscriber of one or
more advertisers. See id. at col. 3, ll. 39-65, col. 4, ll. 59-65. The use of bi-
lateral endorsement in the ’679 patent is consistent with its ordinary meaning
of “both sides giving approval.”
Initially, Patent Owner contended a bi-lateral endorsement should be
limited to “a mutual selection arrangement in which the advertiser and the
subscriber each affirmatively selects or otherwise indicates approval of the
other’s identity.” Prelim. Resp. 37 (quoting Ex. 1003, 27). In the Decision
to Institute, the Board disagreed that certain terms, such as “mutual selection
arrangement” and “affirmatively selects,” are limiting, because Patent
Owner had not shown where these terms are set forth in the ’679 patent in a
manner sufficient to supersede the ordinary meaning of the term “bi-lateral
endorsement” as used in the ’679 patent. Inst. Dec. 15. Based on its use in
the ’679 patent, however, the Board agreed with the Patent Owner that “bi-
lateral endorsement” required each party to approve the other’s identity. Id.
For these reasons, in the Decision to Institute, the Board construed “bi-
lateral endorsement” as “approval of two parties to the identity of the other,”
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consistent with the term’s ordinary meaning in light of the Specification. Id.
at 13-15. Petitioner does not challenge this construction. See Reply 1.
After Institution, Patent Owner contends that “bi-lateral endorsement”
means “a selection of one or more potential subscribers by the advertiser,
and a selection of the same advertiser by the subscriber,” or, more simply,
“selections by two parties of each other.” PO Resp. 9. Patent Owner also
contends that bi-lateral endorsement “requires affirmative acts of selection
by each party of the other.” PO Resp. 10 (emphasis in original). In
proffering its construction, Patent Owner appears to be asserting that its
construction is narrower than that of the Board, as the Board’s construction
could be met plausibly by two parties approving of each of other without
explicit affirmative acts of selection by each party of the other. For support,
Patent Owner relies on various passages in the ’679 patent describing the
selection of subscribers and advertisers. PO Resp. 10-11 (citing Ex. 1001,
col. 3, ll. 39-50, col. 8, ll. 62-64, col. 8, l. 66 – col. 9, l. 3, Fig. 3, step 46,
col. 4, ll. 61-65).
We agree with Patent Owner that the ’679 patent discloses the
selection of subscribers and the selection of advertisers. We, however, are
not persuaded that “bi-lateral endorsement” means “selections by two parties
of each other,” as Patent Owner contends. PO Resp. 9. Patent Owner
quotes “subsidy program 13 enables advertisers 10 to select or endorse
desirable subscribers.” PO Resp. 10 (quoting Ex. 1001, col. 3, ll. 39-41)
(emphasis in original). Presumably, Patent Owner is asserting that “select”
is a synonym for “endorse.” Another plausible reading is that “select” and
“endorse” are alternative actions that may be taken by advertisers. As such,
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we do not find the phrase “to select or endorse” provides sufficient clarity,
deliberateness, and precision to change the meaning of “endorsement” from
its ordinary meaning of “act of giving approval.”10 See Paulsen, 30 F.3d at
1480.
According to the ’679 patent, Figure 7a “describes the bi-directional
endorsement process between the subscriber and the advertiser via the
intermediary during the enrollment process.” Ex. 1001, col. 7, ll. 56-58.
Patent Owner also relies on two steps in that process to support its
construction of “bi-lateral endorsement” as “selections by two parties of
each other.” PO Resp. 10. Specifically, Patent Owner also relies on
steps 710 and 716. Id. “At step 710, the advertiser notifies intermediary 640
of the endorsement and subsidy opportunities for which the subscriber has
been qualified.” PO Resp. 10 (quoting Ex. 1001, col. 8, ll. 62-64). “At
step 716, subscriber 600 chooses at least one plan and advertiser for
endorsement . . . . At this point, bi-lateral endorsement is complete.” Id.
(quoting Ex. 1001, col. 8, l. 66 – col. 9, l. 3).
We are not persuaded from these passages that “bi-lateral
endorsement” refers to an act of selecting (rather than referring to an act of
giving approval). Patent Owner is correct that step 716 discloses a
subscriber choosing an advertiser for endorsement. Ex. 1001, col. 8, l. 66 –
col. 9, l. 3. Step 716, however, also discloses a subscriber choosing a
subsidy plan (id.), which is not required of a bi-lateral endorsement by two

10 AMERICAN HERITAGE DICTIONARY 608 (3d ed. 1992) (defining “endorse”
as “4. To give approval of or support to, especially by public statement”);
id. (defining “endorsement” as “1. The act of endorsing”).
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parties of each other. Id. This undermines Patent Owner’s position that
bi-lateral endorsement means selection, rather than approval, because
step 716 includes both selecting a plan and an advertiser. Bilateral
endorsement only involves parties and not plans, which also are included in
the selection step 716 and, thus, step 716 supports a view that “selection” is
different than “endorsement/approval.” Moreover, although step 710
describes an advertiser notifying another about the endorsement, “the
advertiser decides whether to endorse a particular subscriber” earlier in
step 708. Ex. 1001, col. 8, ll. 47-48. Thus, we are not persuaded that
endorsement means “selecting,” rather than “giving approval,” which is in
accordance with the ordinary meaning of endorsement.
Relying on a statement made during examination of a prior-filed but
related application,11 Patent Owner contends that “bi-lateral endorsement is a
‘selection process’ involving acts of selection or endorsement.” PO
Resp. 11. Patent Owner specifically relies on the following statements:
The subscriber’s selection process of claim 2 is different.
Initially, [a] subscriber must be selected by a match condition
based on his profile. The subscriber is then provided a
corresponding subsidy plan based on the match condition. The
subscriber is not limited to the highest bidding advertiser but
rather has a choice of which advertiser(s) to endorse.

11 During examination of the application that issued as U.S. Patent
No. 7,664,516 B2, to which the ’679 patent claims priority, Applicants
stated that “[b]i-lateral endorsement requires approval of both the subscriber
and the advertiser to the identity of the other.” Ex. 1003 at 27. Applicants
made this statement when an amendment added the claim limitation
“establishing a bi-lateral endorsement between the subscriber and the
advertiser” to a pending claim. See id. at 4 (claim 2 amendment).
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PO Resp. 11 (quoting Ex. 1003 at 28) (emphasis added and citations
omitted).
Applicants’ statements distinguished the limitations “comparing a
desired demographic profile to a subscriber demographic profile to derive a
match” and “providing a subsidy program to the subscriber based on the
match” of claim 2 from prior art references describing “comparing an
advertisement characterization to each consumer profile.” Ex. 1003, 27-28;
see also id. at 4 (claim 2 amendment). Because the Applicants’ statements
were not directed to the limitation “establishing a bi-lateral endorsement
between the subscriber and the advertiser,” the statements have limited
probative value concerning the construction of “bi-lateral endorsement.”
We are not persuaded that Applicants’ statements are sufficient to supersede
the ordinary meaning of the term “bi-lateral endorsement” as “both sides
giving approval,” as used in the ’679 patent.
We turn to Patent Owner’s contention that the process of establishing
bi-lateral endorsement “requires affirmative acts of selection by each party
of the other.” PO Resp. 10 (emphasis in original). For the reasons
previously indicated, we recognize the ’679 patent discloses various
examples of selecting an advertiser or subscriber. Some claims of the ’679
patent, however, expressly require selection of an advertiser. Specifically,
independent claim 1 recites “receiving one or more selections of the at least
one advertiser of the group of advertisers and of the chosen subsidy program
from the set of subsidy programs,” and claim 24 recites “select a subset of
advertisers from the set of advertisers and at least one subsidy program of
the set of subsidy programs.” Independent claims 7 and 23, which recite
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establishing or determining bi-lateral endorsement between an advertiser and
a subscriber, do not recite limitations regarding selecting an advertiser or
subscriber. We will not import a limitation requiring an affirmative
selection by each party of the other into the claims, especially where, under
the doctrine of claim differentiation, the “bi-lateral endorsement” recited in
independent claim 23 is presumed to be broader than the “select” recited in
dependent claim 24. Thus, we conclude that the process of establishing bi-
lateral endorsement does not require affirmative acts of selection by each
party of the other.
Also, Patent Owner, after Institution, proffers a construction of
“bi-lateral endorsement” that does not include “identity of the other.” PO
Resp. 11. Previously, in its Preliminary Response, Patent Owner had
contended, relying on a statement made during examination of a prior-filed
but related application,12 that a bi-lateral endorsement should be limited to “a
mutual selection arrangement in which the advertiser and the subscriber each
affirmatively selects or otherwise indicates approval of the other’s identity.”
Prelim. Resp. 37 (quoting Ex. 1003 at 27) (emphasis added). We already
have addressed this issue above, and thus our analysis need not be repeated
here.

12 As mentioned previously, during examination of the application that
issued as U.S. Patent No. 7,664,516 B2, to which the ’679 patent claims
priority, Applicant stated that “[b]i-lateral endorsement requires approval of
both the subscriber and the advertiser to the identity of the other.” Ex. 1003
at 27. Applicant made this statement when an amendment added the claim
limitation “establishing a bi-lateral endorsement between the subscriber and
the advertiser” to a claim. See id. at 4 (claim 2 amendment).
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Accordingly, we maintain the construction of “bi-lateral endorsement”
as “approval of two parties to the identity of the other.”
4. Whether the Preambles Are Limiting
After Institution, Patent Owner contends that the preambles of the
challenged claims are limiting. PO Resp. 15-17. Patent Owner contends
that the preambles provide antecedent basis for limitations in the body of
independent claims 7 and 23. Id. at 16-17. As such, Patent Owner contends
that “the preambles provide explicit structure to the relationship of certain
components of the invention that give life, meaning and vitality to the
claimed invention.” Id. at 16.
We agree. In general, a preamble is construed as a limitation “if it
recites essential structure or steps, or if it is ‘necessary to give life, meaning,
and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com,
Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v.
Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). When the
limitations in the body of the claim “rely upon and derive antecedent basis
from the preamble, then the preamble may act as a necessary component of
the claimed invention.” Eaton Corp. v. Rockwell Int'l Corp., 323 F.3d 1332,
1339 (Fed. Cir. 2003).
Notably, the preamble of independent claim 7 requires “a source
communication device possessed by a subscriber,” “a destination
communication device possessed by a recipient,” and “an advertisement.”
The body of claim 7 recites “the source communication device,” “the
subscriber,” “the destination communication device,” and “the
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advertisement,” all of which rely on and derive antecedent basis from the
preamble of claim 7.
Similarly, the preamble of independent claim 23 recites “a first
communication device,” “a second communication device,” and “a set of
advertisers.” The body of claim 23 recites “the first communication device,”
“the second communication device,” and “the set of advertisers.”
Accordingly, we conclude that the preambles of independent claims 7
and 23 are entitled to patentable weight.
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 ’679 patent is a covered business method
patent because the claimed subject matter is directed to providing a subsidy,
which is financial in nature. Pet. 5-6. 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). To that end, independent
claim 7 recites “recognizing a subsidy, according to the subsidy program, for
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the subscriber.” Also, as set forth above, we construe “subsidy” as
“financial assistance given by one to another” and “subsidy program” as “a
system of opportunities designed to give financial assistance to another.”
Accordingly, we agree with Petitioner that the subject matter of independent
claim 7 is financial in nature.
Accordingly, the subject matter of independent claim 7 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.
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Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,764 (Aug. 14,
2012).
Petitioner contends that the ’679 patent is not directed to a
technological invention because the independent claims recite known
components and are directed toward a business problem, not a technical
solution. Pet. 7-8. We agree. Claim 7 recites the use of communication
devices, which are known technologies, to perform a method, which does
not render claim 7 a technological invention. See 77 Fed. Reg. at 48764,
item (b).
Accordingly, we determine that independent claim 7 is not directed
toward a technological invention. We, therefore, conclude that the ’679
patent is a covered business method patent.
C. Whether the Ratsimor Paper is a Printed
Publication under 35 U.S.C. § 102(b)
Petitioner asserts that claims 1-16 and 23-27 are unpatentable under
35 U.S.C. § 102(b)13 as anticipated by the Ratsimor paper, and claims 1-27
are unpatentable under 35 U.S.C. § 103(a) as obvious over the Ratsimor
paper and Paul. Pet. 9, 19-38, 58-68. 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

13 Paragraph (b) of 35 U.S.C. § 102 was replaced with newly designated
§ 102(a)(1) when § 3(b)(1) of AIA took effect on September 16, 2012.
Because the application that issued as the ’679 patent was filed before that
date, we will refer to the pre-AIA version of § 102.
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November 2003, more than one year prior to the earliest priority date
claimed by the ’679 patent. See Pet. 2, 19; Ex. 1008 ¶¶ 2, 16; see also
Ex. 1001, col. 1, ll. 8-12 (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.
Pet. 19; 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; see id. ¶ 16.
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 ’679 patent.
PO Resp. 5, 17-26. 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. 20-21.
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Having reviewed the parties’ arguments and supporting evidence, we
do not find sufficient evidence that the Ratsimor paper was publicly
accessible 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). “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
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
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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
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
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(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
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.
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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
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).
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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 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
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.
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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 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. 1041). 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
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
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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.
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 ’679 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.
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the 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 1-22 of the ’679 patent “because claims 1-22 of the ’679
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 publicly accessible on the Department’s webserver in a
manner sufficient to qualify as a printed publication.
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 ’679 patent.
Therefore, Petitioner may not rely upon the Ratsimor paper for its asserted
grounds of patentability under 35 U.S.C. § 102(b) and § 103(a).
Accordingly, we conclude that Petitioner has not demonstrated that claims 1-
16 and 23-27 are anticipated by the Ratsimor paper or that claims 1-27
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would have been obvious over the combination of the Ratsimor paper and
Paul.
D. Asserted Ground of Anticipation by Paul
Petitioner asserts that claims 7-16 and 23-27 of the ’679 patent are
unpatentable under 35 U.S.C. § 102(b) as anticipated by Paul. Pet. 38, 47-
58; Reply 12-13.
1. Principles of Law
To establish anticipation, each and every element in a claim, arranged
as recited in the claim, must be found in a single prior art reference.
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008);
Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
2001). To anticipate, a prior art reference must disclose more than
“multiple, distinct teachings that the artisan might somehow combine to
achieve the claimed invention.” Net MoneyIN, 545 F.3d at 1371; see also In
re Arkley, 455 F.2d 586, 587 (CCPA 1972) (“The [prior art] reference must
clearly and unequivocally disclose the claimed [invention] or direct those
skilled in the art to the [invention] without any need for picking, choosing,
and combining various disclosures not directly related to each other by the
teachings of the cited reference.”). Although the elements must be arranged
or combined in the same way as in the claim, “the reference need not satisfy
an ipsissimis verbis test,” i.e., identity of terminology is not required. In re
Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831,
832 (Fed. Cir. 1990). Moreover, the prior art reference is read from the
perspective of one with ordinary skill in the art. In re Graves, 69 F.3d 1147,
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1152 (Fed. Cir. 1995) (“A reference anticipates a claim if it discloses the
claimed invention such that a skilled artisan could take its teachings in
combination with his own knowledge of the particular art and be in
possession of the invention.”); In re Preda, 401 F.2d 825, 826 (CCPA 1968)
(“[I]t is proper to take into account not only specific teachings of the
reference but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom.”).
2. Overview of Paul
Paul discloses an Internet-based e-mail communications system that
broadcasts communications to members, some of whom have cellular
telephones. Ex. 1007, Abstract. The Internet-based e-mail communications
system includes a campaign manager to provide a number of tool options to
users. Id. ¶¶ 34, 51, 100. For example, one of the tool options allows the
users to develop and manage an e-mail direct marketing campaign that sends
personalized e-mail messages to members whose member records match
parameters identified for the campaign. Id. ¶ 51. The personalized e-mail
message includes an advertisement for a particular business, and a hyperlink
to a web site of a business that, when activated, transfers the member to the
web site. Id. ¶ 95. Another tool option in the campaign manager provides a
“refer a friend” advertising campaign that provides a coupon to a member
who is successful in referring a friend to the web site of the business.
Id. ¶¶ 101-102. Specifically, the member sends the e-mail message (with the
embedded hyperlink and an associated referral communication data packet,
which identifies the business sponsoring the advertising campaign) to one or
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more friends. Id. ¶ 102. The “refer a friend” advertising campaign can
increase member activity “by offering an economic incentive.” Id. ¶ 102.
3. Analysis
Petitioner asserts that claims 7-16 and 23-27 are unpatentable under
35 U.S.C. § 102(b) as anticipated by Paul. Pet. 38, 47-58; Reply 12-13. In
support of this asserted ground of unpatentability, Petitioner provides
detailed explanations as to how each claim limitation is met by Paul and
relies on testimony by Dr. Joshi. Pet. 47-58 (citing Ex. 1008). Patent Owner
disagrees with Petitioner’s assertions and relies on testimony by
Vernon Thomas Rhyne, Ph.D. PO Resp. 54-63 (citing Ex. 2039).
We find Paul discloses each limitation of independent claim 7 as
arranged in the claim. For example, independent claim 7 recites a method
for providing access to an advertisement from an advertiser to a subscriber,
and then distributing the access to the advertisement from the subscriber to a
recipient. Paul discloses an Internet-based e-mail communications system
that sends personalized e-mail messages to members whose member records
match parameters identified for the campaign. Ex. 1007 ¶ 51. The
personalized e-mail message includes an advertisement for a particular
business, and a hyperlink to a web site of a business. Ex. 1007 ¶ 95. The
member then sends the received e-mail message (with the embedded
hyperlink and referral data) to one or more friends, as a part of a “refer a
friend” advertising campaign. Ex. 1007 ¶ 102. Petitioner has shown that
Paul discloses members (corresponding to the recited “subscribers”), and
Paul’s description of sending personalized e-mail messages to members
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whose member records match parameters identified for the campaign
discloses “comparing a desired demographic profile to a subscriber
demographic profile to derive a match,” as recited in claim 7.
Independent claim 7 further recites “providing a subsidy program to
the subscriber” and “recognizing a subsidy, according to the subsidy
program, for the subscriber after a termination of the communication
session.” Paul discloses the “refer a friend” advertising campaign can
increase member activity “by offering an economic incentive.” Ex. 1007
¶ 102. Petitioner also has shown that Paul’s “refer a friend” advertising
campaign discloses the recited “subsidy program.”
Independent claim 7 also recites “establishing a bi-lateral endorsement
between the subscriber and the advertiser.” Paul’s description of sending a
personalized e-mail message to a member discloses an advertiser approving
a member, as required by claim 7. Paul’s description of a member
forwarding a received e-mail message to a friend discloses a subscriber
approving an advertiser, as required by claim 7. As such, Paul discloses
approval of the advertiser to the identity of the subscriber and approval of
the subscriber to the identity of the advertiser. Thus, Petitioner has shown
that Paul discloses approval of two parties to the identity of the other—
bi-lateral endorsement.
Petitioner sets forth a similar analysis for claims 8-16 and 23-27. We
have reviewed the evidence presented by Petitioner regarding Paul’s
disclosure of the further limitations recited in dependent claims 8-16,
independent claim 23, and dependent claims 24-27. We find that Paul
discloses each limitation of claims 8-16 and 23-27 as arranged in the claims.
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Patent Owner’s Contentions Regarding Independent Claim 7
Patent Owner asserts that Petitioner cannot show anticipation of
independent claim 7 by a preponderance of the evidence, because in order to
meet “establishing a bi-lateral endorsement between the subscriber and the
advertiser” and “providing a subsidy program to the subscriber based on the
match,” as recited in independent claim 7, disparate methods of Paul’s
e-mail communication system must be combined, and so, Paul does not
disclose all elements as arranged in the claim. PO Resp. 57-61.
Specifically, Patent Owner asserts, with support from Dr. Rhyne’s
testimony (Ex. 2039 ¶ 150), that Paul describes “two separate and distinct
methods” of using the e-mail communication system—a direct e-mail
campaign to send targeted advertisements based on demographics of
members (as disclosed in paragraph 51 and surrounding paragraphs of Paul)
and a “refer-a-friend” campaign involving incentive-based referrals (as
disclosed in paragraphs 95-102). PO Resp. 55 (citing Ex. 2039 ¶ 150).
Patent Owner asserts that it is improper to combine a direct e-mail campaign
with a “refer-a-friend” campaign because the campaigns are unrelated. PO
Resp. 59.
We disagree with Patent Owner’s characterization of Paul’s campaign
manager computer program as having multiple separate and distinct
methods, rather than a single comprehensive program that provides users
with multiple tool options to design their marketing campaign. Paul
discloses a campaign manager computer program of the e-mail
communications system that “enables [a user] to develop and implement
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direct marketing email campaigns.” Ex. 1007 ¶ 34; see also id. ¶ 51 (A user
“is enabled to conduct direct marketing campaigns using a computer
program generally identified as a ‘campaign manager’ herein.”). “With the
campaign manager program, the [user] defines the parameters of the
campaign by conducting a search through the member records based upon
criteria encompassed in the member records.” Id. ¶ 51. Dr. Rhyne, Patent
Owner’s Declarant, does not dispute that a direct e-mail campaign is
developed using the campaign manager program of Paul’s e-mail
communications system. Ex. 1030 at 175-77.
Paul also discloses that, under the tools option in the campaign
manager, the user may select the “refer-a-friend” routine. Ex. 1007 ¶ 50; see
also id. ¶ 100 (indicating the “refer-a-friend” campaign of the e-mail
communications system may be selected “[u]nder the tools option in the
campaign manager”). Thus, the campaign manager computer program is a
single computer program that provides tools options for the user to develop
the campaigns.
We acknowledge that Paul does not disclose expressly an example in
which a direct e-mail campaign to send targeted advertisements based on
demographics of members is used with a “refer-a-friend” campaign
involving incentive-based referrals. We also acknowledge that Paul does not
indicate expressly that any of the computer routines in the campaign
manager computer program can be used with any other one of the campaign
manager computer routines, a fact also acknowledged by Dr. Joshi
(Ex. 2045, 189:4-24). Paul does, however, disclose expressly that the
preferred embodiment of the invention “may be produced in a single
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computer system having . . . elements or means combining the performance
of any of the functions or steps disclosed.” Ex. 1007 ¶ 29.
Based on the above disclosures of Paul, we find that the direct e-mail
campaign and a “refer-a-friend” campaign are not different methods, but are
different tool options provided by the campaign manager computer program
in the e-mail communications system disclosed by Paul. Accordingly, as
different tool options of the campaign manager in the e-mail
communications system, one of ordinary skill in the art would understand
that the direct e-mail campaign tool option was to be used in conjunction
with the “refer-a-friend” campaign tool option to send “refer-a-friend”
e-mail message incentives to a subset of the members based on member
demographic characteristics. To determine otherwise would require a
finding that one of ordinary skill in the art, when reading Paul, would come
to the conclusion that the only option would be to send a “refer-a-friend”
e-mail to all members. We do not find that one of ordinary skill in the art
would have understood Paul to be so restrictive. Rather, Paul’s disclosure of
the campaign manager computer program having multiple tool options to
develop marketing campaigns is analogous to a reference disclosing two
functions of a word processing program—creating a document and saving a
document. One skilled in the art would understand the word processing
program reference to disclose how to use those functions together to create
and save a document.14 Cf. Transcript 67:9 – 68:11.

14 At Oral Argument, the Board and Patent Owner’s counsel had the
following exchange:
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Dr. Joshi confirms this understanding and explains:
While Paul does disclose the possibility of sending the referral
email to all members of the system [Ex. 1007 ¶ 102], Paul
further explicitly states that the referral email can alternatively
be created through use of the Campaign Manager.
Ex. 1029 ¶ 93. Dr. Joshi further cites Paul’s disclosure that “[s]ponsors . . .
have the ability to create numerous types of e-mail campaigns, such as ‘refer
a friend’ campaign, through the campaign manager program discussed
later.” Id. (quoting Ex. 1007 ¶ 50).
Dr. Rhyne recognizes, as do we, that Paul does not disclose expressly
“having a member forward an advertising e-mail received from a sponsor
during an e-mail-based advertising campaign to another member or someone
who is not a member” through the “refer-a-friend” campaign. Ex. 2039
¶ 163; see id. ¶ 172. Dr. Rhyne, however, does not address persuasively
Paul’s disclosure that both the direct e-mail campaign and a “refer-a-friend”

JUDGE KIM: So using your logic, then, in Microsoft Word, if I
create a document and I save it later, but there are two different
routines, I would not know to create a document and save it?
MR. CONRAD: Well, it depends on what you’re looking at as the
reference. So what are you looking at to say it anticipates --
JUDGE KIM: Well, let's say it’s similar to this, you know, like on
one part of the reference you have a save function and one part you
have a create document function.
MR. CONRAD: Right. Well, it depends. Are you looking at
anticipation or obvious? If it’s anticipation
JUDGE KIM: Anticipation.
MR. CONRAD: The reference[]s says [sic] you’ve got a routine to
save the program. Then what’s the other routine you’re interested in?
JUDGE KIM: Creating a document.
Transcript 67:9-22.
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campaign use the campaign manager computer program, or how one of
ordinary skill in the art would understand how the direct e-mail campaign
and a “refer-a-friend” campaign are related through the campaign manager.
See generally id. ¶¶ 150-172 (discussing Paul’s disclosure of the direct e-
mail campaign and the “refer-a-friend” campaign).
We recognize that, at first glance, this case appears to be similar to the
facts in Net MoneyIN, 545 F.3d at 1368-71. In that case, a prior art reference
was held not to anticipate a claim reciting five links in an Internet payment
system, because neither of the two separate protocols for processing Internet
credit card transactions disclosed all five links. Id. The Court concluded
that the prior art reference did not show the claimed invention arranged or
combined in the same way as recited in the claim. Id. Two additional facts
in the instant case distinguish Net MoneyIN: (i) Paul discloses an e-mail
communications system in which a particular computer program—campaign
manager—has tool options to create both a direct e-mail campaign based on
demographics and a “refer-a-friend” campaign involving incentive-based
referrals; and (ii) Dr. Joshi’s testimony that the disclosure would be
understood by one of ordinary skill in the art to mean the campaigns can be
used together through the campaign manager.
Thus, we find that a direct e-mail campaign and a “refer-a-friend”
campaign are not multiple, distinct teachings of the prior art reference
unrelated to each other. Rather, we find the campaigns are tool options to be
used together, “without any need for picking, choosing, and combining
various disclosures not directly related to each other by the teachings of the
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cited reference,” to anticipate the challenged claims of the ’679 patent.
Arkley, 455 F.2d at 587; see Net MoneyIN, 545 F.3d at 1371.
Patent Owner asserts that Paul does not disclose a member “electing”
to receive a particular e-mail campaign from an advertiser, let alone
approving a particular advertiser as required by independent claim 7. PO
Resp. 59-60. We are not persuaded by Patent Owner’s assertion, because
Paul discloses a member forwarding an e-mail received from a business.
Ex. 1007 ¶¶ 101-102. By forwarding the e-mail, the member is expressing
approval of that business.15
Patent Owner asserts further that Paul does not disclose whether it is
the same business sending (i) an e-mail message to a member in the e-mail
match description, and (ii) an e-mail message to a member for forwarding in
the refer-a-friend description. PO Resp. 60. Patent Owner asserts that,
unless it is the same business, there can be no bi-lateral endorsement, as
required by independent claim 7. Id. Patent Owner’s assertion is
unavailing, because (i) we have explained above why one of ordinary skill
would have understood the two tool options as being used together, and
(ii) even without the direct e-mail campaign, in the refer-a-friend campaign,

15 We also note sending or forwarding the e-mail necessarily implies the
sender makes a choice whether to send or forward the e-mail. Thus, Paul’s
description of sending the e-mail to a member also discloses selecting the
member to receive the e-mail, and Paul’s description of forwarding the
e-mail to a friend also discloses selecting the friend to receive the e-mail.
Accordingly, Paul discloses “establishing a bi-lateral endorsement between
the subscriber and the advertiser” even if “bi-lateral endorsement” was
construed as “selections by two parties of each other,” as urged by Patent
Owner.
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the business is approving the member by sending to the e-mail to the
member, and the member is approving the business by forwarding the same
e-mail to a friend.
Patent Owner asserts additionally that Paul does not disclose
“providing a subsidy program to the subscriber based on the match,” as
required in independent claim 7. PO Resp. 60-61. According to Patent
Owner, the two campaign methods cannot be read together, because Paul
discloses explicitly that the “refer-a-friend” message is sent to each and
every member, which is contrary to the direct e-mail campaign in which
e-mails are sent only to a subset of members. Id.
We do not agree with Patent Owner’s assertions because, as explained
previously, one of ordinary skill would have understood the two tool options
as being used together, such that the “refer-a-friend” e-mail would be sent
only to a subset of members.
Patent Owner’s Contentions Regarding Independent Claim 23
Patent Owner asserts that Paul does not disclose “the intermediary
having a processor configured to . . . determine a bi-lateral endorsement by
the qualified subscriber and the at least one advertiser,” as recited in
independent claim 23. Patent Owner contends that Petitioner, in asserting
Paul discloses this limitation, improperly combines the unrelated direct
e-mail campaign and “refer-a-friend” campaign. PO Resp. 61-62. Patent
Owner also contends that Paul does not disclose a member “electing” to
receive a particular e-mail campaign from an advertiser. PO Resp. 62.
Further, Patent Owner contends that that Paul does not disclose whether it is
the same business sending (i) an e-mail message to a member in the direct
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e-mail campaign and (ii) an e-mail message to a member for forwarding in
the “refer-a-friend” campaign. Patent Owner asserts that unless it is the
same business, there can be no bi-lateral endorsement, as required by
independent claim 23. Id.
Patent Owner’s contentions substantially are similar to Patent
Owner’s contentions regarding independent claim 7. For the reasons
discussed with respect to independent claim 7, we do not agree with Patent
Owner.
4. Conclusion
For the foregoing reasons, we find that Petitioner has proven, by a
preponderance of the evidence, that claims 7-16 and 23-27 are unpatentable
under 35 U.S.C. § 102(b) as anticipated by Paul.
E. Priority Date of Claims 1-22
We need not decide the priority date of claims 1-22, which Petitioner
contends is the filing date of the application that issued as the ’679 patent
(Pet. 11-19), because the publication date of Paul is more than one year
before the earliest filing date claimed by the ’679 patent.
F. 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
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(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
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 1-16 and 23-27 of ’679 patent are unpatentable under 35 U.S.C.
§ 102(b) as anticipated by Ratsimor.
Petitioner has proven, by a preponderance of the evidence, that
claims 7-16 and 23-27 of the ’679 patent are unpatentable under 35 U.S.C.
§ 102(b) as anticipated by Paul.
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Petitioner has not proven, by a preponderance of the evidence, that
claims 1-27 of the ’679 patent are unpatentable under 35 U.S.C. § 103(a) as
obvious over Ratsimor and Paul.
Patent Owner’s Motion to Exclude is dismissed as moot.
IV. ORDER
Accordingly, it is hereby:
ORDERED that Petitioner has demonstrated by a preponderance of
the evidence that claims 7-16 and 23-27 of U.S. Patent No. 8,155,679 B2 are
unpatentable;
FURTHER ORDERED that Petitioner has not demonstrated by a
preponderance of the evidence that claims 1-6 and 17-22 of U.S. Patent
No. 8,155,679 B2 are unpatentable;
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
CBM2013-00033@fr.com