UNITED STATES PATENT AND TRADEMARK OFFICE … Trials/3.19... · BLUE CALYPSO, LLC Patent Owner. _____ Case CBM2013-00046 Patent ... Before JONI Y. CHANG, MICHAEL W. KIM, and BARBARA

[email protected] Paper 9 571-272-7822 Entered: January 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 CBM2013-00046

Patent 8,438,055 ____________

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

KIM, Administrative Patent Judge.

DECISION Institution of Covered Business Method Patent Review

37 C.F.R. § 42.208

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I. INTRODUCTION

Groupon, Inc. (“Petitioner”) filed a petition (“Pet.”) requesting a

review under the transitional program for covered business method patents

of U.S. Patent No. 8,438,055 (Ex. 1001, “the ’055 patent”). Paper 1. Blue

Calypso, LLC (“Patent Owner”), filed a preliminary response (“Prelim.

Resp.”). Paper 8. The Board has jurisdiction under 35 U.S.C. § 324.1

The standard for instituting a covered business method patent review

is set forth in 35 U.S.C. § 324(a), which provides as follows:

THRESHOLD—The Director may not authorize a post-grant review to be instituted unless the Director determines that the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.

Petitioner challenges the patentability of claims 1-14 of the ’055

patent under 35 U.S.C. §§ 102 and 103. Taking into account Patent Owner’s

preliminary response, we determine that the information presented in the

petition demonstrates that it is more likely than not that the challenged

claims are unpatentable. Pursuant to 35 U.S.C. § 324, we authorize a

covered business method patent review to be instituted as to claims 1, 4-11,

and 14 of the ’055 patent.

1 See section 18(a) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284, 329 (2011) (“AIA”).

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the intermediary functions, among other things, to identify which

advertisement to send by virtue of decoding a serialized URL link and

associating that link with a stored advertisement. Ex. 1001, 1:62-65.

The ’055 patent discloses a “bi-directional” selection process between

a subscriber and an advertiser. Ex. 1001, 1:66-67. The bi-directional

selection process allows subscribers to choose or “endorse” certain

advertisers with which they wish to associate. Ex. 1001, 1:67-2:3. The

bi-directional selection process also allows advertisers to choose which

subscribers to use by virtue of a review of related demographic information

of each subscriber and pre-qualification of acceptable candidates. Ex. 1001,

2:3-6. Pre-qualification of one subscriber allows the advertiser to target

advertisements to a related group of potential customers because a qualified

subscriber’s contacts presumably share some or all of the same demographic

features. Ex. 1001, 2:9-13.

The ’055 patent discloses enabling advertisers to reach targeted

audiences by contact with mobile communications devices. Ex. 1001,

2:21-22. Specifically, qualified subscribers are encouraged to send

communications to their contacts, and the contacts who receive the

communication are encouraged to accept the communication and related

advertisements, because the communication is identified as being initiated

by a known contact. Ex. 1001, 2:23-25. Subscribers and recipients are

provided incentives to participate, such as cash incentives provided on debit

cards or cash distributions. Ex. 1001, 2:27-29.

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B. Related Matters

Petitioner and Patent Owner identify the following related district

court proceedings involving the ’055 Patent: Blue Calypso, Inc. v. Groupon,

Inc., Case No. 6:12-cv-486 (E.D. Tex); Blue Calypso, Inc. v. IZEA, Inc.,

Case No. 6:12-cv-786 (E.D. Tex); Blue Calypso, Inc. v. Yelp, Inc., Case

No. 6:12-cv-788 (E.D. Tex); Blue Calypso, Inc. v. FourSquare Labs, Inc.,

Case No. 6:12-cv-837 (E.D. Tex); BlueCalypso, Inc. v. MyLikes Inc., Case

No. 6:12-cv-838 (E.D. Tex); and Blue Calypso, Inc. v. Livingsocial, Inc.,

Case No. 2:12-cv-518 (E.D. Tex). Pet. 4; Paper 6 at 2.

Petitioner also has requested review of the following patents related to

the ’055 patent—namely, U.S. Patent 8,155,679 (“the ’679 patent”)

(Case No. CBM2013-00033), U.S. Patent 8,457,670 (“the ’670 patent”)

(Case No. CBM2013-00034), U.S. Patent 7,664,516 (the ’516 patent)

(Case No. CBM2013-00035), and U.S. Patent 8,453,646 (the ’646 patent)

(Case No. CBM2013-00044). Pet. 4.

C. Illustrative Claim

Claim 1, the only independent claim, is illustrative of the claims at

issue and reads as follows:

1. In a system comprising a network, a source communication device, a first destination communication device and an intermediary connected to the network, a method for providing advertising content to a first recipient associated with the first destination communication device and for incentivizing a subscriber associated with the source communication device comprising:

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receiving a first profile, at the intermediary, including a set of demographic requirements related to at least one advertiser of a group of advertisers;

receiving a second profile, at the intermediary, including a set of demographic data related to the subscriber;

deriving a match condition, by the intermediary, between the first profile and the second profile;

determining, at the intermediary, if the subscriber is a first qualified subscriber based on the match condition;

conditioning, at the intermediary, a set of endorsement opportunities on the match condition;

transmitting a[n] incentive program to the first qualified subscriber, at the source communication device, for each endorsement opportunity of the set of endorsement opportunities;

communicating the set of endorsement opportunities to the qualified subscriber at the source communication device;

receiving, at the intermediary, a selection of at least one endorsement opportunity from the set of endorsement opportunities from the qualified subscriber;

transmitting, from the intermediary, a first endorsement tag related to the at least one advertiser of the group of advertisers and linked with the advertising content;

transmitting a first content communication between the first source communication device and the first destination communication device;

transmitting the first endorsement tag from the source communication device to the destination communication device;

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receiving, at the intermediary, a signal from the destination communication device, through execution of the first endorsement tag, to transmit the advertising content;

transmitting the advertising content to the destination communication device; and,

incentivizing the first qualified subscriber according to the incentive program.

D. The Alleged Grounds of Unpatentability

The information presented in the Petition sets forth Petitioner’s

contentions of unpatentability of claims 1-14 of the ’055 patent under 35

U.S.C. §§ 102 and 103 based on the following specific grounds (Pet. 15-74):

Reference(s) Basis Challenged Claims

Ratsimor2 § 102(b) 1, 4-7, and 14

Paul3 § 102(b) 1, 4-6, 10, and 14

Ratsimor and Paul § 103 1, 4-7, 10, and 14

Ratsimor, Paul, and Atazky4

§ 103 2, 3, 8, and 11-13

2 Olga Ratsimor, et al., TECHNICAL REPORT TR-CS-03-27, INTELLIGENT AD

HOC MARKETING WITHIN HOTSPOT NETWORKS (Ex. 1006) (“Ratsimor”). 3 U.S. Patent Application Publication 2002/0169835, published Nov. 14, 2002 (Ex. 1007) (“Paul”). 4 U.S. Patent Application Publication 2007/0121843, published May 31, 2007 (Ex. 1010) (“Atazky”).

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Reference(s) Basis Challenged Claims

Ratsimor, McLean,5 and Atazky

§ 103 1-9, and 11-14

II. ANALYSIS

We turn now to Petitioner’s asserted grounds of unpatentability and

Patent Owner’s arguments in its preliminary response to determine whether

Petitioner has met the threshold of 35 U.S.C. § 324(a).

A. Claim Construction

As a step in our analysis for determining whether to institute a review,

we determine the meaning of the claims for purposes of this decision. 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 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

5 U.S. Patent Application Publication 2007/0207780, published Sep. 6, 2007 (Ex. 1009) (“McLean”).

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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.

“incentive” and “incentive program”

Independent claim 1 recites “incentivizing the first qualified

subscriber according to the incentive program.” Petitioner contends that the

express definitions of terms set forth in the “Definitions” section of the ’055

patent are the proper constructions of those terms. As made clear by Patent

Owner’s analysis, Patent Owner contends the ’055 patent expressly defines

“incentive” as “a reward provided to a subscriber based on an endorsement,”

and “incentive program” as “a set of rules governing an incentive

distribution.” Patent Owner further contends that neither term suggests or

requires a financial product or service. We agree with both Petitioner and

Patent Owner that the ’055 patent sets forth express definitions of

“incentive” and “incentive program.” Accordingly, we accept those

definitions as proper constructions of “incentive” and “incentive program.”

We disagree with Patent Owner, however, that neither “incentive” nor

“incentive program,” when read in light of the specification, suggests a

financial product or service. To the contrary, the ’055 patent repeatedly and

almost exclusively discloses “incentive” and “incentive program” in a

financial context. For example, the ’055 patent discloses that cash

incentives are provided on debit cards or cash distributions. Ex. 1001, 2:28-

29. In another example, incentives are disclosed as “payments,” “payouts,”

and “distributions.” Ex. 1001, 2:51, 6:34-45, 7:31-34, 8:3-6. In a further

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example, incentive programs are disclosed as having financial budgets and

accounts that are debited until depletion. Ex. 1001, 6:41-45, 7:18-20, 8:50-

56. Accordingly, we construe “incentive” and “incentive program” as being

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

also 37 C.F.R. § 42.302. The parties disagree as to whether the ’055 patent

is a covered business method patent under section 18(d)(1) of the AIA and

37 C.F.R. § 42.301.

1. Financial Product or Service

Petitioner contends that the ’055 patent is a covered business method

patent, because the claimed subject matter is directed to “incentivizing the

first qualified subscriber according to the incentive program,” which is

financial in nature. Pet.7. In response, Patent Owner contends that

Petitioner has not met the burden of demonstrating that the ’055 patent is a

covered business method patent because Petitioner’s analysis of the

aforementioned “incentivizing” step is cursory. Prelim. Resp. 15-27. We

agree with Petitioner.

Our inquiry is controlled by whether the patent “claims a method or

corresponding apparatus for performing data processing or other operations

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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 1 recites “incentivizing the first

qualified subscriber according to the incentive program.” As set forth

above, we construe “incentive” and “incentive program” as being financial

in nature. Accordingly, we agree with Petitioner that the subject matter of

independent claim 1 is financial in nature.

Patent Owner contends a determination that the ’055 patent concerns a

financial product or service because it merely claims one “incentivizing”

step in a multi-step process would be improper. According to Patent Owner,

such a determination would indicate that any patent that even touches on

commerce or business would be a covered business method patent. As

examples, Patent Owner contends that other patents for which the Board has

instituted covered business method patent reviews have stronger ties to

commerce and business. Patent Owner’s argument is misplaced. The

independent claims do more than merely “touch on commerce or business.”

The “incentivizing” step is central to the claims. Indeed, without the

“incentivizing” step, there is no reason for a subscriber to perform the other

steps in the claims.

With respect to the parties’ assertions concerning classification, a

determination of whether a patent is a covered business method patent

eligible for review is bound by 35 U.S.C. § 324(a) and 37 C.F.R. § 42.301,

not by the classification of the patent.

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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, 48,763-64 (Aug.

14, 2012).

Petitioner contends that the ’055 patent is not directed to a

technological invention, because independent claims 1, 2, and 20 recite

known components and are directed toward a business problem, not a

technical solution. Pet. 7-8. We agree.

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Patent Owner contends that the novel and nonobvious technological

nature of the claimed subject matter is shown by the following reasons for

allowance:

[The applied prior art reference] does not teach a second party (subscriber party) which forwards advertisement obtained from advertisers through an intermediary to a recipient.” Id. at 3.

Prelim. Resp. 28. We disagree. The Examiner may have identified an

allegedly novel and nonobvious process: forwarding an advertisement in a

particular manner. However, these reasons for allowance include

advertisers, intermediaries, and advertisements, which are features that are

not technological, and the balance of the reasons, forwarding

advertisements, are directed to using known technologies.

C. Claims 1, 4-7, and 14 – Anticipated By Ratsimor

Petitioner contends that claims 1, 4-7, and 14 of the ’055 patent are

unpatentable under 35 U.S.C. § 102(b) as anticipated by Ratsimor.

Pet. 15-27. In support, Petitioner provides detailed explanations as to how

each claim limitation is disclosed by Ratsimor.

1. Whether Ratsimor is Prior Art

Patent Owner contends that Petitioner has failed to establish that

Ratsimor is prior art, because Petitioner has not set forth sufficient evidence

to indicate that (1) Ratsimor is a printed publication and (2) Ratsimor was

published in November 2003. Prelim. Resp. 35-40. We are not persuaded.

Petitioner presents the Declaration of Dr. Anupam Joshi to

corroborate that Ratsimor is prior art. In the Declaration, Dr. Joshi indicates

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that he co-authored Ratsimor, that Ratsimor was presented in September of

2003 and publicly available around November 2003, and that Ratsimor was

available from a web site of the Department of Computer Science and

Electrical Engineering (CSEE) at the University of Maryland, Baltimore

County (UMBC). Ex. 1008 ¶ 16. Petitioner also presents a copy of a web

page from UMBC’s web site, which lists the publication date of Ratsimor as

November 2003. Ex. 1006 at i.6 Based on this evidence, we are persuaded

that Petitioner has shown that Ratsimor is a printed publication that was

published in November 2003.

Patent Owner contends that Dr. Joshi’s Declaration is inadequate to

establish Ratsimor as prior art because, as a co-author of the reference and

an expert testifying for Petitioner, Dr. Joshi is an interested witness whose

testimony requires corroboration. We disagree. The fact that Dr. Joshi is a

co-author of Ratsimor and Petitioner’s expert witness is not, by itself,

sufficient to discredit Dr. Joshi’s testimony, especially when Patent Owner

has not presented sufficient arguments to cast doubt on any of Dr. Joshi’s

statements in the Declaration. In any case, this contention is premature.

6 Ex. 1006 includes Ratsimor’s Intelligent Ad Hoc Marketing Within Hotspot Networks reference (id. at 1-14) as well as a two-page list of publications (id. at i-ii) and a cover page for the reference (id. at iii). Ex. 1006 also uses two numbering schemes. We cite to the page numbers that number consecutively each page of the reference beginning with page i and that appear at the center of the last line on each page of the exhibit. We do not cite the page numbers that include the Exhibit number and the total number of pages—that is, for example, “Ex. 1006 1/17.”

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Patent Owner will have the opportunity to depose Dr. Joshi and present

evidence to establish facts that will support Patent Owner’s positions.

2. Overview of Ratsimor (Ex. 1006)

Ratsimor describes a framework for a peer-to-peer marketing system

that disseminates promotional information using wireless mobile computing

networks. Ex. 1006, 1. Ratsimor’s framework enables mobile device users

to collect sales promotions available from local merchants, and to propagate

sales promotions to other mobile device users in close proximity.

Ex. 1006, 1.

In general, a local merchant wirelessly broadcasts promotions, and as

a mobile device user passes by or visits the merchant, the mobile device

collects the promotions, which can be redeemed later with the local

merchant. Ex. 1006, 3. The mobile device user then can distribute the

received promotion to other mobile device users. Ex. 1006, 3-4. Every

promotion contains a list of mobile device users that ever distributed it.

Ex. 1006, 3. When the mobile device user decides to redeem the promotion

and presents it to the local merchant, the local merchant, after honoring the

coupon, stores the list of the mobile device users for future reference.

Ex. 1006, 3. Every participating local merchant then can choose to reward

the mobile device users who are its most effective distributors with

additional discounts or other rewards. Ex. 1006, 3.

3. Analysis

We are persuaded by Petitioner’s contentions and supporting evidence

that claims 1, 4-7, and 14 of the ’055 patent are, more likely than not,

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unpatentable under 35 U.S.C. § 102(b) as anticipated by Ratsimor. Pet. 15-

27. For example, independent claim 1 recites a method for providing an

advertisement from an advertiser to a first recipient associated with a first

destination communication device, and also incentivizing the first recipient.

Ratsimor discloses local merchants broadcasting promotions to mobile users,

who then distribute the promotions to other mobile users. Ex. 1006, 3.

Ratismor further discloses that participating local merchants can choose to

reward the mobile users who are its most effective distributors with

additional discounts or other rewards. Ex. 1006 at 3.

Patent Owner contends that Ratsimor does not disclose “receiving, at

an intermediary, a selection of at least one endorsement opportunity from the

set of endorsement opportunities from the qualified subscriber,” as recited in

independent claim 1. In particular, Patent Owner contends the following:

Ratsimor does not disclose that a user can “choose a variety of subsidy programs” such as by “choos[ing] to forward a promotion or advertisement to others.” Rather, Ratsimor describes “actively advertising promotions” by automatically relaying all information through the user devices without any mention of an intermediary receiving an affirmative selection by the user of the advertisement or advertiser.

Prelim. Resp. 43-44. We disagree. By distributing received promotions to

other mobile device users, each mobile device user in Ratsimor is making an

“affirmative selection” of that particular promotion from that particular local

merchant. Ex. 1006 at 3. And when the mobile device user in Ratsimor

decides to redeem the promotion and presents it to the local merchant, the

local merchant, after honoring the coupon, stores the list of the mobile

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device users for future reference. Ex. 1006 at 3. Thus, the peer-to-peer

marketing system of Ratsimor (intermediary) receives the list of the mobile

device users who “affirmatively selected” the particular promotion from the

particular local merchant.

Patent Owner further contends that in Ratsimor’s “actively

advertising” system, a mobile device user does not select anything, because

the user’s mobile device automatically distributes the promotions without

action or input from the mobile device user. Patent Owner’s contention is

misplaced. The aforementioned “receiving” step does not distinguish

between active input and passive input. Thus, by agreeing to participate in

the peer-to-peer marketing system of Ratismor, the mobile device user is

making an affirmative selection of all local merchants that participate in the

peer-to-peer marketing system. Moreover, Ratsimor discloses that “it is in

Bob’s interests to distribute targeted promotions rather than generic

promotions since targeted promotions promise a more generous reward for

the distribution.” Ex. 1006, 7. Accordingly, by providing a choice to the

mobile device users to distribute promotions from local merchants that

utilize targeted promotions as opposed to generic promotions, Ratsimor

discloses “receiving, at an intermediary, a selection of at least one

endorsement opportunity from the set of endorsement opportunities from the

qualified subscriber,” as recited in independent claim 1.

Patent Owner further contends that Dr. Joshi’s Declaration is

defective because for the aforementioned claim limitation of independent

claim 1, Dr. Joshi cites three full pages of Ratsimor, which do not disclose

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the underlying claim limitation. Patent Owner’s contentions are misplaced,

as the proper focus is on the petition. Even if Dr. Joshi’s Declaration does

not provide precise pinpoint cites to Ratsimor in certain instances, we are

persuaded that the petition and Dr. Joshi’s testimony as a whole have

adequately shown that Ratsimor discloses the aforementioned claim

limitation for the reasons set forth above.

4. Conclusion

Petitioner has shown that it is more likely than not that claims 1, 4-7,

and 14 are anticipated by Ratsimor.

D. Claims 1, 4-6, 10, and 14 – Anticipated by Paul

Petitioner contends that claims 1, 4-6, 10, and 14 of the ’055 patent

are unpatentable under 35 U.S.C. § 102(b) as anticipated by Paul. Pet.

28-40. In support, Petitioner provides detailed explanations as to how each

claim limitation is disclosed by Paul.

1. Overview of Paul (Ex. 1007)

Paul discloses an Internet-based method of communicating via e-mail

and a multi-modal method of communicating via e-mail and other

communications devices. Ex. 1007 ¶ 1. The Internet-based e-mail

communications system is used 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.

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 that,

when activated, transfers the member to the web site. Ex. 1007 ¶ 95. Paul

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also discloses a “refer a friend” advertising campaign that provides a coupon

to a member who is successful in referring a friend to the web site. Ex. 1007

¶¶ 101-102. Specifically, the member sends the e-mail message (with the

embedded hyperlink and referral data) to one or more friends. Ex. 1007

¶ 102. The “refer a friend” advertising campaign can increase member

activity “by offering an economic incentive.” Ex. 1007 ¶ 102.

2. Analysis

We are persuaded by Petitioner’s contentions and supporting evidence

that claims 1, 4-6, 10, and 14 of the ’055 patent are, more likely than not,

unpatentable under 35 U.S.C. § 102(b) as anticipated by Paul. Pet. 28-40.

For example, independent claim 1 recites a method for providing an

advertisement from an advertiser to a first recipient associated with a first

destination communication device, and also incentivizing the first recipient.

Paul discloses an Internet-based e-mail communications system that sends

personalized e-mail messages to members. 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 packets) to one or more friends, as a part of a “refer a friend”

advertising campaign. Ex. 1007 ¶ 102. The “refer a friend” campaign

provides a coupon to the member if the member is successful in generating

or referring a friend to the sponsor. Ex. 1007 ¶ 101. Paul discloses the

“refer a friend” advertising campaign can increase member activity “by

offering an economic incentive.” Ex. 1007 ¶ 102. Such coupons and

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incentives are tracked using referral data packets, which not only identify

which member is actively recruiting friends or new members, but also

identifies the e-mail campaign for “refer a friend.” Ex. 1007 ¶ 102.

Patent Owner contends that Paul does not disclose “receiving, at an

intermediary, a selection of at least one endorsement opportunity from the

set of endorsement opportunities from the qualified subscriber,” as recited in

independent claim 1. Specifically, Patent Owner contends the following:

Merely sending an email to a friend, without more, is not receiving an affirmative selection at the intermediary from the qualified subscriber of an endorsement opportunity from the set of endorsement opportunities. This is so for at least two reasons. First, the process described in Paul is not limited in any way to qualified subscribers—rather the refer a friend email is sent to “[a]ll the members.” And, second, Paul discloses only sending an e-mail directly to a friend, without any participation by the intermediary in receiving a selection of an endorsement opportunity.

Prelim. Resp. 47. We disagree. Paul discloses that the Internet-based e-mail

communications system is used 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.

Ex. 1007 ¶ 51. Thus, the “refer a friend” e-mail is not sent to “all members,”

as asserted by Patent Owner. Moreover, the Internet-based e-mail

communications system (intermediary) tracks which members are actively

recruiting friends or new members by using referral data packets. Ex. 1007

¶ 102.

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3. Conclusion

Petitioner has shown that it is more likely than not that claims 1, 4-6,

10, and 14 are anticipated by Paul.

E. Claims 1, 4-7, 10, and 14 – Obvious over Ratsimor and Paul

Petitioner contends that claims 1, 4-7, 10, and 14 of the ’055 patent

are unpatentable under 35 U.S.C. § 103 as obvious based on Ratsimor and

Paul. Pet. 40-47. Petitioner presents claim charts and supporting evidence

by Dr. Joshi to explain how the combination of Ratsimor and Paul renders

obvious claims 1, 4-7, 10, and 14. For example, Petitioner presents a claim

chart identifying what specific portions of one or more of Ratsimor and Paul

discloses or suggests every element in independent claim 1. Petitioner

provides the following rationale to combine Ratsimor and Paul:

Both Ratsimor and Paul are directed to advertising methods and systems wherein advertisers are able to be matched with potential consumers based on certain demographics or preferences and wherein incentives are offered for the potential customer to refer the advertising to other potential customers. Thus, the methods of systems of both Ratsimor and Paul are comparable to one another as being directed to peer-to-peer advertising systems. One of ordinary skill in the art would have combined the features of Paul with the features of Ratsimor to extend and improve the methods and systems disclosed in Ratsimor.

Pet. 40-41. We are persuaded that Petitioner has put forth sufficient

evidence to support the aforementioned rationale to combine Ratsimor and

Paul. For example, both references teach advertising systems that provide

incentives for passing along advertisements to other potential customers, and

Case CBM2013-00046 Patent 8,438,055

22

do so using similar systems and methods. See Ex. 1006 at 1; Ex. 1007

¶¶ 101-102; see also Ex. 1008 ¶¶ 131-132. In another example, both

references use electronic forms of messaging, track referrals, and have time

limits. It would have been obvious to mix and match the teachings of

systems as similar as Ratsimor and Paul to arrive at the claimed invention,

because the claims predictably use known elements according to their

establishment functions. See KSR v. Teleflex Inc., 550 U.S. 938, 416 (2006)

(stating “[t]he combination of familiar elements according to known

methods is likely to be obvious when it does no more than yield predictable

results”).

Patent Owner contends that the combination of Ratsimor and Paul

fails to disclose or suggest “receiving, at an intermediary, a selection of at

least one endorsement opportunity from the set of endorsement opportunities

from the qualified subscriber,” as recited in independent claim 1. Prelim.

Resp. 48-49. We already have addressed this contention above.

Petitioner has demonstrated that it is more likely than not that claims

1, 4-7, 10, and 14 would have been obvious over the combination Ratsimor

and Paul.

F. Claims 2, 3, 8, and 11-13 – Obvious over Ratsimor, Paul, and Atazky

Petitioner contends that claims 2, 3, 8, and 11-13 of the ’055 patent

are unpatentable under 35 U.S.C. § 103 as obvious based on Ratsimor, Paul,

and Atazky. Pet. 48-54. Claims 2, 3, 8, and 11-13 all ultimately depend

from independent claim 1. Petitioner presents claim charts and supporting

Case CBM2013-00046 Patent 8,438,055

23

evidence by Dr. Joshi to explain how the combination of Ratsimor, Paul, and

Atazky renders obvious claims 2, 3, 8, and 11-13.

The ’055 patent issued from U.S. Patent Application 12/803,635 (“the

’635 application”), which was filed on July 1, 2010. The ’635 application

claims priority to U.S. Patent Application No. 11/318,144 (“the ’144

application”) (filed December 23, 2005) and U.S. Provisional No.

60/639,267 (“the ’267 provisional application”) (filed December 27, 2004).

1. Whether Atazky and McLean are Prior Art7

Independent claim 1 recites “endorsement tag.” Petitioner contends

that the ’144 application does not provide sufficient written description

support for “endorsement tag.” Accordingly, Petitioner contends that claims

1-14 are not entitled to the benefit of the ’144 application’s filing date.

Without such benefit, neither Atazky nor McLean is prior art to claims 1-14.

Patent Owner disagrees that the ’144 application does not provide adequate

written description support for “endorsement tag.”

In a covered business method patent review, the burden is on

Petitioner to show it is more likely than not that at least one challenged

claim is unpatentable. With respect to entitlement to earlier effective filing

dates, the Patent Owner is not presumed to be entitled to the earlier filing

dates of ancestral applications that do not share the same disclosure. But,

the issue first has to be raised by Petitioner in its petition, by identifying,

7 McLean is cited by Petitioner in another asserted ground of unpatentability. See Section II.G.

Case CBM2013-00046 Patent 8,438,055

24

specifically, the features, claims, and ancestral applications allegedly lacking

written description and enabling disclosure support under § 112, first

paragraph, for the claims based on the identified features. Then, the Patent

Owner has to make a sufficient showing of entitlement to earlier an filing

date or dates, in a manner that is commensurate in scope with the specific

points and contentions raised by Petitioner.

Based on the record before us, as explained below, we find Patent

Owner has not made a sufficient showing to support a finding that

“endorsement tag” is entitled to the filing date of the ’144 application.

Petitioner contends that the ’055 patent defines “endorsement tag” as

“an active link including a unique identifier to allow viewing of

advertisements and track an advertisement, source communication device

and event identification,” and that “endorsement tag” must be related to an

advertiser linked with advertising content, transmitted from a qualified

subscriber to a recipient, and be capable of being executed to produce a

signal, as required by independent claim 1. Petitioner contends that the ’144

application does not disclose any such feature with all the aforementioned

functionalities. Pet. 12-13. Patent Owner disputes Petitioner’s construction,

and disagrees that the ’144 application does not provide adequate written

description support for “endorsement tag.” Prelim. Resp. 32-35. However,

Patent Owner does not cite any specific portions of the ’144 application as

providing written description support for “endorsement tag.”

Petitioner properly raised the issue initially as to whether

“endorsement tag” lacks written description support in the ’144 application.

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Case CBM2013-00046 Patent 8,438,055

26

A target user who created the user review is free to advertise their

opinion wherever they wish, for example, in e-mails, forums and personal

blogs, and social network user pages. Ex. 1007 ¶ 242. Anyone interested in

the advertising message can click on an attached coupon hyperlink and print

a coupon. Ex. 1007 ¶ 242. The coupons may be linked to promotional

online resources (e.g., video clips, articles). Ex. 1007 ¶ 243.

Based on the target user’s weighted “importance,” as perceived by all

other target user participants, incentives are distributed to the target user.

Ex. 1007 ¶ 217.

3. Claims 8 and 11

We are persuaded by Petitioner’s contentions and supporting evidence

that claims 8 and 11 of the ’055 patent are, more likely than not,

unpatentable under 35 U.S.C. § 103(a) as obvious over Ratsimor, Paul, and

Atazky. Pet. 51-52. Specifically, claim 8 recites “dividing a payment, by

the intermediary, between the first qualified subscriber and the second

qualified subscriber.” Claim 11 recites a similar limitation. Paul discloses

tracking referral data and providing an economic incentive to more active

members. Ex. 1007 ¶ 102. Atazky discloses distributing incentives to users

based on each user’s weighted “importance.” Ex. 1010 ¶ 217. Petitioner

sets forth the following rationale for combining Paul and Atazky:

One skilled in the art, therefore, would find the combination of Paul, Ratsimor, and Atazky obvious to re-enforce advertising messages of Paul and Ratsimor based upon user testimonials. In addition, this is a predictable result under KSR Int’l v. Teleflex, Inc., 550 U.S. 398 (2007) from the combination of Paul, Rastimor and Atazky. That is, one of skill in the art

Case CBM2013-00046 Patent 8,438,055

27

would recognize as obvious the result of basing . . . [an incentive] on the influence the recipient has on other individuals. In addition, additional features of Atazky also extend and improve the methods of Paul and Rastimor and lead to predictable results that would be recognized by one of skill in the art. Hence, a person of ordinary skill in the art prior to the filing date of the ’055 Patent would have been aware of these references and there would have been a motivation to combine them as further shown in Chart 3. (Ex. 1008 ¶¶ 130, 132, 140).

Pet. 48-49. We are persuaded by Petitioner’s rationale.

4. Claims 2, 3, 12, and 13

We are not persuaded by Petitioner’s contentions and supporting

evidence that claims 2, 3, 12, and 13 of the ’055 patent are unpatentable

under 35 U.S.C. § 103(a) as obvious over Ratsimor, Paul, and Atazky. Pet.

48-54. Specifically, claim 2 recites “transmitting the first testimonial tag to

the first destination communication device” and “receiving, at the

intermediary, a request from the first destination communication device,

through execution of the first testimonial tag, to transmit the first

testimonial.” Claim 12 recites similar limitations, and claims 3 and 13

depend respectively from claims 2 and 12.

Petitioner contends that a combination of Atazky and Paul suggests

the aforementioned limitations. We are not persuaded. Petitioner cites

various portions of Atazky as disclosing an advertiser sending an advertising

message to a user (¶ 62), the user adding a user review (first testimonial) to

the advertising message (¶ 62), and distributing new user reviews (¶ 111).

Petitioner further cites Figure 7 of Atazky for disclosing a user review.

Case CBM2013-00046 Patent 8,438,055

28

None of these cited portions disclose an executable first testimonial tag, as

required by the aforementioned limitations. Petitioner additionally cites

paragraph 95 of Paul and paragraphs 242 to 243 of Atazky as disclosing

hyperlinks to referral data and promotional materials, respectively.

Assuming that Petitioner is contending that these hyperlinks correspond to

the recited first testimonial tag, Petitioner has not explained how referral

data and promotional materials are related to the user reviews of Atazky,

which Petitioner cites as corresponding to the recited “first testimonial.”

Petitioner also cites Figure 4 of Atazky as disclosing links (first testimonial

tag) to user reviews (first testimonial). However, Petitioner has not provided

any analysis as to whether these links to user reviews are transmitted, as

required by the aforementioned limitations.

5. Conclusion

Petitioner has shown that it is more likely than not that claims 8 and

11 would have been obvious over the combination Ratsimor, Paul, and

Atazky.

Petitioner has not shown that it is more likely than not that claims 2, 3,

12, and 13 would have been obvious over the combination Ratsimor, Paul,

and Atazky.

G. Claims 1-9, and 11-14 – Obvious over Ratsimor, McLean, and Atazky

Petitioner contends that claims 1-9, and 11-14 of the ’055 patent are

unpatentable under 35 U.S.C. § 103 as obvious based on Ratsimor, McLean,

and Atazky. Pet. 54-74. Patent Owner contends that neither McLean nor

Case CBM2013-00046 Patent 8,438,055

29

Atazky is prior art to claims 1-14. These contentions have been addressed

above, and need not be repeated here.

1. Claims 1, 4-9, 11, and 14

We are persuaded by Petitioner’s contentions and supporting evidence

that claims 1, 4-9, 11, and 14 of the ’055 patent are, more likely than not,

unpatentable under 35 U.S.C. § 103(a) as obvious based on Ratsimor,

McLean, and Atazky. Pet. 54-60, 62-71, 73-74. For claims 1, 4-8, 11, and

14, we have addressed above already how Ratsimor and Atazky render

obvious these claims, and thus, that analysis need not be repeated here.

For claim 9, Petitioner cites a combination of McLean and Atazky.

We are persuaded by Petitioner’s contentions and supporting evidence.

Claim 9 recites “providing, at the intermediary, a base content associated

with the at least one advertiser.” Atazky discloses a site dedicated to

presenting users with advertiser’s messages and associated incentives.

Ex. 1010 ¶ 123. Claim 9 further recites “modifying the base content, at the

intermediary, by addition of a set of data related to one of the group of

weather data, geographic data, time data, date data, and history data.”

Atazky discloses that based on a geographic context of the user, the base

content is personalized. Ex. 1010 ¶ 124.

2. Claims 2, 3, 12, and 13

Petitioner cites Atazky for disclosing the limitations of claims 2, 3, 12,

and 13. Our analysis as to why Atazky does not disclose certain limitations

of claims 2 and 12 is set forth above, and need not be repeated here. Claims

3 and 13 depend respectively from claims 2 and 12.

Case CBM2013-00046 Patent 8,438,055

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3. Conclusion

Petitioner has shown that it is more likely than not that claims 1, 4-9,

11, and 14 would have been obvious over the combination Ratsimor,

McLean, and Atazky.

Petitioner has not shown that it is more likely than not that claims 2, 3,

12, and 13 would have been obvious over the combination Ratsimor,

McLean, and Atazky.

III. CONCLUSION

For the foregoing reasons, we determine that the information

presented in the petition establishes that it is more likely than not that

claims 1, 4-11, and 14 of the ’055 patent are unpatentable. The Board,

however, has not made a final determination under 35 U.S.C. § 328(a) with

respect to the patentability of the challenged claims.

IV. IV. ORDER

For the foregoing reasons, it is

ORDERED that pursuant to 35 U.S.C. § 324(a), a covered business

method patent review is hereby instituted as to claims 1, 4-11, and 14 of the

’055 patent for the following grounds:

A. Claims 1, 4-7, and 14 under 35 U.S.C. § 102(b) as being unpatentable

as anticipated by Ratsimor;

B. Claims 1, 4-6, 10, and 14 under 35 U.S.C. § 102(b) as being

unpatentable as anticipated by Paul;

Case CBM2013-00046 Patent 8,438,055

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C. Claims 1, 4-7, 10, and 14 under 35 U.S.C. § 103 as being unpatentable

over Ratsimor and Paul;

D. Claims 8 and 11 under 35 U.S.C. § 103 as being unpatentable over

Ratsimor, Paul, and Atazky; and

E. Claims 1, 4-9, 11, and 14 under 35 U.S.C. § 103 as being unpatentable

over Ratsimor, McLean, and Atazky.

FURTHER ORDERED that all other grounds raised in the petition are

denied for the reasons discussed above;

FURTHER ORDERED that pursuant to 35 U.S.C. § 324(d) and

37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial

commencing on the entry date of this Order; and

FURTHER ORDERED that an initial conference call with the Board

is scheduled for 2:00 PM Eastern Time on February 4, 2014; the parties are

directed to the Office Trial Practice Guide, 77 Fed. Reg. at 48,765-66, for

guidance in preparing for the initial conference call, and should be prepared

to discuss any proposed changes to the Scheduling Order entered herewith

and any motions the parties anticipate filing during the trial.

Case CBM2013-00046 Patent 8,438,055

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PETITIONER: Jeanne M. Gills Troy D. Smith [email protected] PATENT OWNER: John Phillips Carl Bruce David Conrad FISH & RICHARDSON P.C. [email protected] [email protected] [email protected]