Trials@uspto.gov
`571-272-7822
`
`
`
` Paper 9
`
`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 CBM2013-00044
`Patent 8,452,646
`____________
`
`
`
`Before JONI Y. CHANG, MICHAEL W. KIM, and
`BARBARA A. BENOIT, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`Petitioner Exhibit 1008 p.1
`
`
`571-272-7822
`
`
`
` Paper 9
`
`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 CBM2013-00044
`Patent 8,452,646
`____________
`
`
`
`Before JONI Y. CHANG, MICHAEL W. KIM, and
`BARBARA A. BENOIT, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`Petitioner Exhibit 1008 p.1
`
`
`
`CBM2013-00044
`Patent 8,452,646
`
`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. 8,452,646 (Ex. 1001, “the ’646 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 1-13 of the ’646
`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 1-13 of
`the ’646 patent.
`
`
`1 See Section 18(a) of the Leahy-Smith America Invents Act, Pub. L.
`No. 112-29, 125 Stat. 284, 329 (2011) (“AIA”).
`2
`
`Petitioner Exhibit 1008 p.2
`
`
`
`
`
`CBMM2013-000044
`
`
`Patennt 8,452,6446
`
`
`
`A. Thee ’646 Pattent
`
`
`
`
`
`
`The ’6466 patent relates to a ssystem andd method fofor distributtion of
`
`
`
`
`adveertisementss and electrronic offerrs between
`
`communiccation dev
`ices.
`
`
`
`
`
`
`
`Ex. 11001, Absttract. Figuure 1 of thee ’646 pateent is set foorth below::
`
`
`
`
`
`
`
`Figure 1 is a diagramm for proviiding adveertising
`
`
`
`bettween commmunicationn devices.
`
`
`
`
`
`
`As shown in Figure 1, suubscriber 1 possesses
`
`device 2 (such
`
`
`
`as a compputer or celll phone) anand subscri
`bes to an
`
`iary 9. Id.
`
`
`
`
`y intermedimanaged byprogram mincentive padveertisement
`
`
`
`
`
`
`
`
`4:25-29. An inntermediarry may incllude one orr more commputer servvers
`
`
`stem. Id. aat 3:34-36.
`
`
`
`sement syssing endoran advertisimpllementing
`
`
`
`
`
`
`Advertisementts are distriibuted fromm advertiseer 10 to de
`stination
`
`
`
`
`a computer (such as an device 7 commmunication
`
`
`3
`
`ch is in or cell phoone), whic
`
`source commmunicatiion
`
`at 3:41-433,
`
`Petitioner Exhibit 1008 p.3
`
`
`
`CBM2013-00044
`Patent 8,452,646
`
`possession of recipient 8. Id. at 3:15-17, 4:29-31. Intermediary 9 compares
`demographic and interest criteria of advertiser 10 to demographic and
`interest criteria of subscriber 1 and, based on the interest criteria, sends
`endorsement opportunities from various advertisers to subscriber 1. Id. at
`5:15-20. If subscriber 1 elects to endorse an advertisement, advertiser, or
`advertising campaign, an endorsement tag is transmitted from source
`communication device 2 of subscriber 1 to destination communication
`device 7 of recipient 8. Id. at 5:21-31. The endorsement tag includes a URL
`link that, when activated by destination communication device 7, causes an
`advertisement associated with the endorsement tag to be downloaded to
`destination communication device 7 from intermediary 9. Id. at 5:31-38.
`
`B. Related Matters
`Petitioner and Patent Owner identify the following ongoing district
`court proceedings involving the ’646 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); Blue Calypso, 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. 4-5; Paper 5 at 2.
`Petitioner also requested review of the following patents related to the
`’646 patent—U.S. Patent No. 8,155,679 (Case No. CBM2013-00033), U.S.
`Patent No. 8,457,670 (Case No. CBM2013-00034), U.S. Patent
`
`4
`
`Petitioner Exhibit 1008 p.4
`
`
`
`CBM2013-00044
`Patent 8,452,646
`
`No. 7,664,516 (Case No. CBM2013-00035), and U.S. Patent No. 8,438,055
`(Case No. CBM2013-00046).
`
`C. Illustrative Claim
`Petitioner challenges all thirteen claims of the ’646 patent. Claim 1 is
`the sole independent claim. Claims 1 and 2 are illustrative of the claims at
`issue and read 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 an electronic offer to a first recipient associated
`with the first destination communication device and for
`incentivizing a subscriber associated with the source
`communication device comprising:
`receiving, at the intermediary, a first profile including a
`set of identification requirements related to at least one
`advertiser of a group of advertisers;
`receiving, at the intermediary, a second profile including
`a set of identification data related to the subscriber;
`deriving, by the intermediary, a match condition between
`the first profile and the second profile;
`determining, by the intermediary, if the subscriber is a
`first qualified subscriber based on the match condition;
`transmitting, from the intermediary to the source
`communication device, a first endorsement tag related to the at
`least one advertiser of the group of advertisers and linked with
`advertising content;
`transmitting a first content communication between the
`first source communication device and the first destination
`communication device;
`
`5
`
`Petitioner Exhibit 1008 p.5
`
`
`
`CBM2013-00044
`Patent 8,452,646
`
`transmitting the first endorsement tag to the first
`destination communication device; and,
`receiving a first signal, at the intermediary from the first
`destination communication device, through execution of the
`first endorsement tag, to transmit the electronic offer.
`
`2.
`
`The method of claim 1 further comprising the steps
`
`of:
`
`transmitting an incentive program from the intermediary
`to the source communication device for participation of the first
`qualified subscriber; and,
`incentivizing the first qualified subscriber at the source
`communication device 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 1-13 of the ’646 patent under
`35 U.S.C. §§ 102 and 103 based on the following specific grounds (Pet. 9-
`10, 15-49):
`
`6
`
`Petitioner Exhibit 1008 p.6
`
`
`
`CBM2013-00044
`Patent 8,452,646
`
`Reference(s)
`
`Basis
`
`Challenged Claims
`
`Ratsimor2
`Paul3
`Ratsimor and Paul
`Ratsimor, Paul, and
`Kitaura4
`Ratsimor, Paul, and
`Atazky5
`Ratsimor, Paul,
`Hall,6 and
`MacEachren7
`
`§ 102(b)
`§ 102(b)
`§ 103
`
`1 and 2
`1 and 2
`1-5, 10, and 11
`
`§ 103
`
`6-8
`
`§ 103
`
`9
`
`§ 103
`
`12 and 13
`
`II. ANALYSIS
`
`We turn 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).
`
`
`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 A1 (Ex. 1007) (“Paul”).
`4 U.S. Patent Application Publication 2002/0091569 A1 (Ex. 1009)
`(“Kitaura”).
`5 U.S. Patent Application Publication 2007/0121843 A1 (Ex. 1010)
`(“Atazky”).
`6 U.S. Patent Application Publication 2008/0256233 A1 (Ex. 1011) (“Hall”).
`7 Alan M. MacEachren, et al., Geographic Visualization: Designing
`Manipulable Maps for Exploring Temporally Varying Georeferenced
`Statistics, 1998 PROC. IEEE INFO. VISUALIZATION SYMP. 1 (Ex. 1012)
`(“MacEachren”).
`
`7
`
`Petitioner Exhibit 1008 p.7
`
`
`
`CBM2013-00044
`Patent 8,452,646
`
`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, claims 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
`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.
`
`1. “incentive program,” “incentive,” and “incentivizing”
`Sole independent claim 1 is directed to a system “for incentivizing a
`subscriber,” and claim 2, which depends from claim 1, recites “incentivizing
`the first qualified subscriber at the source communication device according
`to the incentive program.”
`Although Petitioner does not propose an explicit construction for
`“incentive program,” “incentive,” or “incentivizing,” Petitioner contends
`that the express definitions of “incentive” and “incentive program” set forth
`8
`
`Petitioner Exhibit 1008 p.8
`
`
`
`CBM2013-00044
`Patent 8,452,646
`
`in the “Definitions” section of the ’646 patent (2:61-3:55) are the proper
`constructions of those terms. Patent Owner acknowledges that the ’646
`patent expressly defines “incentive” and “incentive program.” Prelim.
`Resp. 19, 24. Patent Owner contends that neither “incentivizing” nor
`“incentive program” suggests or requires a financial product or service. For
`support, Patent Owner relies on a dictionary definition of “incentive” as
`“something that incites or has a tendency to incite to determination or
`action,” as well as the express definitions of “incentive” and “incentive
`program” in the ’646 patent. Id. at 18-19.
`We agree with Petitioner and Patent Owner that the ’646 patent sets
`forth express definitions of those terms. Therefore, we construe “incentive”
`as “a reward provided to a subscriber based on an endorsement” (Ex. 1001,
`3:28-29) and “incentive program” as “a set of rules governing an incentive
`distribution” (Id. at 3:30-31). Based on the express definition of “incentive”
`and the ordinary meaning of “incentivize,”8 we construe “incentivize” as “to
`offer a reward provided to a subscriber based on an endorsement.”
`We disagree, however, with Patent Owner that neither “incentivizing”
`nor “incentive program,” when read in light of the specification, suggests a
`financial product or service. To the contrary, the ’646 patent repeatedly
`discloses “incentive,” “incentive program,” and “incentivizing” in a
`financial context. For example, the ’646 patent discloses cash incentives are
`provided on debit cards or cash distributions. Ex. 1001, 2:25-26, 6:51-53.
`
`8 AMERICAN HERITAGE DICTIONARY 912 (3d ed. 1992) (defining
`“incentivize” as “[t]o offer incentives or an incentive to; motivate”).
`9
`
`Petitioner Exhibit 1008 p.9
`
`
`
`CBM2013-00044
`Patent 8,452,646
`
`In another example, incentives are disclosed as “payments,” “payouts,”
`“cash,” and “cash-like.” Id. at 2:48, 6:41-61, 7:51-54. The ’646 patent
`further indicates an “incentive program may pay cash incentives, incentivize
`communication fees, offer product discounts, generate ‘reward points,’ or
`provide product or service credit.” Id. at 6:48-51. These examples of
`incentive programs are financial—cash incentives and communication fees
`are monetary; product discounts, product credit, and service credit reduce
`the monetary cost of a financial transaction; and reward points are a form of
`currency. Accordingly, we construe “incentive,” “incentive program,” and
`“incentivize” as being financial in nature.
`
`2. “transmit the electronic offer”
`Independent claim 1 is directed to a method for providing an
`electronic offer, and recites “receiving a first signal, at the intermediary from
`the first destination communication device, through execution of the first
`endorsement tag, to transmit the electronic offer.”
`The parties agree that the broadest reasonable construction of
`“electronic offer” is the express definition set forth in the ’646 patent: “an
`actionable display on a subscriber communication device or a destination
`communication device that when validated provides a benefit.” Prelim.
`Resp. 48. As will be made clear in its contentions below, Patent Owner
`further contends that “transmitting an electronic offer” requires “sharing of
`electronic offers by qualified subscribers.” Id.
`As recognized by both parties, the ’646 patent expressly defines
`“offer” as “an actionable display on a subscriber communication device or a
`10
`
`Petitioner Exhibit 1008 p.10
`
`
`
`CBM2013-00044
`Patent 8,452,646
`
`destination communication device that when validated provides a benefit.”
`Ex. 1001, 3:12-14. Accordingly, based on the ordinary meaning of
`transmit,9 we construe “transmit the electronic offer” as “send, to a
`subscriber communication device or a destination communication device, an
`actionable display that when validated provides a benefit.” The ’646
`patent’s description of transmitting an electronic offer is consistent with this
`construction. Specifically, the express definition of “offer” refers to two
`devices (“subscriber communication device” and “destination
`communication device”), which, in turn, are defined as electronic10
`devices—a computer, cell phone, smart phone, or other device that are
`capable of sending or receiving a communication message. See id. at 3:15-
`17 (defining “destination communication device”), 3:41-43 (defining
`“source communication device”). Referring to Figure 1, the ’646 patent
`states:
`
`In order to transmit an electronic “offer[,]” data regarding
`the attributes of the electronic offer is first stored in memory 15
`by server 12. A verification link to the offer is transmitted from
`the
`source communication device
`to
`the destination
`
`
`9 AMERICAN HERITAGE DICTIONARY 1902 (3d ed. 1992) (defining
`“transmit” as “[t]o send from one person, thing, or place to another”).
`10 MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS 625
`(4th ed. 1989) (defining “electronic” as “[p]ertaining to electron devices or
`to circuits or systems utilizing electron devices, including electron tubes,
`magnetic amplifiers, transistors, and other devices that do the work of
`electron tubes”); see also MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND
`TECHNICAL TERMS 701 (6th ed. 2003) (defining “electronic” in the same
`way).
`
`11
`
`Petitioner Exhibit 1008 p.11
`
`
`
`CBM2013-00044
`Patent 8,452,646
`
`communication device through the network. Upon activation of
`the link by the destination communication device, an offer
`graphic is sent from the intermediary to the destination
`communication device.
`Ex. 1001, 5:42-49.
`We disagree with Patent Owner that transmitting an electronic offer
`requires “sharing of electronic offers by qualified subscribers” (Prelim.
`Resp. 48), i.e., between two subscriber communication devices. See id. at
`3:44-46 (defining “[s]ubscriber” as “a person in possession of a source
`communication device, who has created a profile on the intermediary
`system”). The express definition of “offer” requires one of two types of
`electronic devices—either a subscriber communication device or a
`destination communication device and, as such, does not require necessarily
`a subscriber communication device. Furthermore, the express language of
`the claim does not indicate that an electronic offer is required to be shared
`by two subscriber communication devices, and the previously mentioned
`portion of the ’646 patent describes transmitting an electronic offer between
`a subscriber communication device and a destination communication device.
`See id. at 5:42-46.
`We construe “transmit the electronic offer” as “send, to a subscriber
`communication device or a destination communication device, an actionable
`display that, when validated, provides a benefit.”
`
`B. Standing
`Section 18 of the AIA provides for the creation of a transitional
`program for reviewing covered business method patents. A “covered
`12
`
`Petitioner Exhibit 1008 p.12
`
`
`
`CBM2013-00044
`Patent 8,452,646
`
`business method patent” is a patent that “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,
`except that the term does not include patents for technological inventions.”
`AIA § 18(d)(1); see 37 C.F.R. § 42.301(a). A patent need have only one
`claim directed to a covered business method to be eligible for review. See
`Transitional Program for Covered Business Method Patents—Definitions of
`Covered Business Method Patent and Technological Invention; Final Rule,
`77 Fed. Reg. 48,734, 48,736 (Aug. 14, 2012) (Comment 8). Section 18
`limits reviews to persons or their privies who have been sued or charged
`with infringement of a “covered business method patent.” AIA
`§§ 18(a)(1)(B), 18(d)(1); see also 37 C.F.R. § 42.302.
`The parties disagree as to whether Petitioner has standing to file a
`petition for a covered business method review of the ’646 patent. See Pet. 6-
`9; Prelim. Resp. 2-4, 15-30. The only dispute is whether the ’646 patent is a
`“covered business method patent,” as defined in the AIA and 37 C.F.R.
`§ 42.301. For the reasons explained below, we conclude that the ’646 patent
`is a “covered business method patent.”
`
`1. Financial Product or Service
`The implementing rules and legislative history indicate that “financial
`product or service” should be interpreted broadly. See 77 Fed. Reg. 48,734,
`48,735 (Aug. 14, 2012) (citing 157 Cong. Rec. S5432 (daily ed. Sept. 8,
`2011) (statement of Sen. Schumer)).
`
`13
`
`Petitioner Exhibit 1008 p.13
`
`
`
`CBM2013-00044
`Patent 8,452,646
`
`Petitioner contends that the ’646 patent is a covered business method
`patent because claim 2 recites “incentivizing the first qualified subscriber at
`the source communication device according to the incentive program” and,
`accordingly, is directed to activities that are financial in nature.
`In response, Patent Owner contends that the ’646 patent is not a
`covered business method patent because it is “directed to a technological
`innovation unrelated to a financial product or service—providing electronic
`offers between communication devices.” Prelim. Resp. 5. Specifically,
`Patent Owner contends that information in the petition is insufficient to
`establish that the ’646 patent is a covered business method patent because
`“‘incentivizing’ and ‘incentive program’ in no way connote or require a
`financial product or service” based on (1) the ordinary meaning of
`“incentive” and (2) the express definitions of “incentive” and “incentive
`program” in the ’646 patent. Id. at 18. Patent Owner also contends that the
`’646 patent is not related to financial activity, which requires the
`management of money, banking, investments, and credit, because the ’646
`patent is directed to distributing electronic offers between mobile
`communication devices. Id. at 23 (citing a definition of “finance”). Patent
`Owner also contends a determination that the ’646 patent concerns a
`financial product or service, solely because it claims “incentivizing” a
`subscriber in one step of a multi-step process, would be improper, because
`then any patent that touches on commerce or business would be a covered
`business method patent. Id. at 21-22.
`
`14
`
`Petitioner Exhibit 1008 p.14
`
`
`
`CBM2013-00044
`Patent 8,452,646
`
`Patent Owner’s contentions are misplaced. As set forth above,
`claim 2 recites “incentivizing the first qualified subscriber at the source
`communication device according to the incentive program.” As indicated by
`our broadest reasonable construction of “incentivizing” above, we determine
`that incentives are financial in nature, in light of the specification. See also
`Ex. 1001, 2:25-26 (“Cash incentives are provided on debit cards or other
`distribution methods.”); 6:49-51 (“The incentive program may pay cash
`incentives. . . .”); accord SAP America, Inc. v. Versata Development Group,
`Inc., CBM2012-00001, Decision on Institution, Paper 36 at 23 (Jan. 9, 2013)
`(concluding “[t]he term financial is an adjective that simply means relating
`to monetary matters” based on section 18 of the AIA and its legislative
`history). Furthermore, claim 2 does more than merely “touch on commerce
`or business.” Rather, incentives are central to claim 2. Indeed, incentivizing
`the subscriber according to the incentive program is central to motivating a
`subscriber to perform the other steps in claim 2, and by virtue of its
`dependency, the steps of independent claim 1. Therefore, the subject matter
`of claim 2, as a whole, is financial in nature.
`Accordingly, we determine that the subject matter of claim 2 performs
`data processing or other operations used in the practice, administration, or
`management of a financial product or service. See 37 C.F.R. § 42.301(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); see also 37 C.F.R. § 42.301(a). To determine whether a patent is
`15
`
`Petitioner Exhibit 1008 p.15
`
`
`
`CBM2013-00044
`Patent 8,452,646
`
`for a technological invention, we consider “whether the claimed subject
`matter as a whole recites a technological feature that is novel and unobvious
`over the prior art; and solves a technical problem using a technical solution.”
`37 C.F.R. § 42.301(b). The following claim drafting techniques, for
`example, typically do not render a patent a “technological invention”:
`(a) Mere recitation of known technologies, such as
`computer hardware, communication or computer networks,
`software, memory, computer-readable
`storage medium,
`scanners, display devices or databases, or specialized machines,
`such as an ATM or point of sale device.
`(b) Reciting the use of known prior art technology to
`accomplish a process or method, even if that process or method
`is novel and non-obvious.
`(c) Combining prior art structures to achieve the normal,
`expected, or predictable result of that combination.
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,764 (Aug. 14,
`2012).
`Petitioner indicates that the ’646 patent is not directed to a
`technological invention because independent claim 1, from which claim 2
`depends, recites known components and is directed toward a business
`problem, not a technical solution. Pet. 7-8.
`Patent Owner contends that the novel and nonobvious technological
`nature of the claimed subject matter is shown by the following reason for
`allowance:
`[The applied prior art reference] does not teach a second party
`(subscriber party) which forwards [an] advertisement obtained
`from advertisers through an intermediary to a recipient.
`
`16
`
`Petitioner Exhibit 1008 p.16
`
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`CBM2013-00044
`Patent 8,452,646
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`Prelim. Resp. 28; see also id. at 27-30. Patent Owner indicates “sending an
`‘advertisement obtained from advertisers through an intermediary to a
`recipient’” is “necessarily technological” because this requires establishing
`an electronic communications channel between two devices, and
`transmitting a message with a certain type of content from one device to
`another device. Id. at 28-29. Patent Owner also indicates that the ’646
`patent solves technical problems using technical solutions by providing a
`technical architecture for providing electronic offers and awards, and that
`implementing the system of the ’646 patent using known technologies is
`irrelevant. Id. at 29-30.
`We are not persuaded by the Patent Owner’s arguments. The reason
`for allowance cited by the Patent Owner does not identify a technology
`feature that is novel and unobvious over the prior art. The definition under
`37 C.F.R. § 42.301(b) provides that “whether the claimed subject matter as a
`whole recites a technological feature that is novel and unobvious over the
`prior art.” Moreover, as the Office Patent Trial Practice Guide notes,
`“[m]ere recitation of known technologies” does not render a patent a
`“technological invention.” 77 Fed. Reg. at 48,764.
`The ’646 patent discloses that the subscriber and the recipient are
`people, and not technological features. See Ex. 1001, 3:39-40, 44-46. Thus,
`the technological feature noted in these reasons for allowance—forwarding
`an advertisement between two generic electronic communication devices—
`is directed to using known technologies. For instance, the example
`communication protocols (see id. at 4:55-61) are known technologies; the
`
`17
`
`Petitioner Exhibit 1008 p.17
`
`
`
`CBM2013-00044
`Patent 8,452,646
`
`example communication devices of cellular phones, smart phones, Internet
`phones, WiFi devices, personal computers, personal digital assistants, and
`instant messaging devices (see id. at 4:41-44) are known technologies; and
`the example networks are broad categories of types of networks—“the
`Internet, a private network, a cellular phone network, or other service
`provider networks” (see id. at 4:35-37). Accordingly, the technological
`feature of forwarding advertisements between two generic electronic
`communication devices noted by the Patent Owner uses known
`technologies, and, accordingly, claim 2 does not recite a novel technological
`feature or a nonobvious technological feature over the prior art. See 77 Fed.
`Reg. at 48,764.
`We also have considered whether the claimed subject matter solves a
`technical problem using a technical solution, as contended by Patent Owner.
`Because we conclude that claim 2 does not recite a technological feature that
`is novel and nonobvious over the prior art, the ’646 patent is a “covered
`business method patent” that is not excluded for being a “technological
`invention” and, therefore, is eligible for a covered business method patent
`review.
`
`C. Asserted Ground of Anticipation By Ratsimor
`Petitioner asserts claims 1 and 2 of the ’646 patent are unpatentable
`under 35 U.S.C. § 102(b) as anticipated by Ratsimor. Pet. 9, 15-23. In
`support of this asserted ground of unpatentability, Petitioner provides
`explanations as to how each claim limitation is disclosed by Ratsimor.
`
`18
`
`Petitioner Exhibit 1008 p.18
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`
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`CBM2013-00044
`Patent 8,452,646
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`Petitioner relies on a Declaration of Dr. Anupam Joshi (Ex. 1008) to support
`its positions.
`Patent Owner counters that Petitioner has not established that
`Ratsimor is prior art to the ’646 patent. Prelim. Resp. 35-41. Patent Owner
`also contends that Ratsimor does not disclose “receiving a first signal, at the
`intermediary from the first destination communication device, through
`execution of the first endorsement tag, to transmit the electronic offer,” as
`recited in independent claim 1. Id. at 4, 40-45.
`
`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. We are not persuaded.
`Petitioner presents the Declaration of Dr. Joshi, a co-author of
`Ratsimor. In the Declaration, Dr. Joshi indicates that “the Ratsimor
`technical report . . . was publicly available around November 2003” and was
`available from a website 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 website, which lists the publication date of Ratsimor as
`November 2003. Ex. 1006 at i.11 Based on this evidence, we are persuaded
`
`
`11 Ex. 1006 includes Ratsimor’s Intelligent Ad Hoc Marketing Within
`Hotspot Networks reference (Ex. 1006 at 1-14) as well as a two-page list of
`19
`
`Petitioner Exhibit 1008 p.19
`
`
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`CBM2013-00044
`Patent 8,452,646
`
`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. Prelim. Resp. 38-39 (citing Finnigan
`Corp. v. Int'l Trade Comm'n, 180 F.3d 1354, 1369 (Fed. Cir. 1999)).
`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. Upon institution, Patent Owner
`will have the opportunity to depose Dr. Joshi and present evidence to
`establish facts that will support Patent Owner’s position.
`
`2. Overview of Ratsimor
`Ratsimor describes a framework for a peer-to-peer marketing system
`that disseminates promotional information using wireless mobile computing
`networks. Ex. 1006 at 1. Ratsimor’s framework enables mobile device
`users to collect sales promotions and discounts available from local
`
`publications (id. at i-ii) and a cover page for the reference (id. at iii).
`Ex. 1006 uses two numbering schemes. We cite to the page numbers that
`consecutively number 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, for example, “Ex. 1006 1/17.”
`20
`
`Petitioner Exhibit 1008 p.20
`
`
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`CBM2013-00044
`Patent 8,452,646
`
`merchants and to propagate sales promotions and discounts to other mobile
`device users in close proximity. Id. In general, a merchant wirelessly
`broadcasts promotions, and as a mobile device user passes by or visits the
`merchant, the user’s mobile device collects the promotions, which can be
`redeemed later. Id. at 3. The mobile device user can distribute the received
`promotion to other mobile device users in close proximity. Id. (stating
`“[a]lternatively, the user can employ the eNcentive platform to become a
`distributor of these coupons, promotions and advertisements. In this case,
`the platform starts to actively advertise coupons to other eNcentive peer
`platforms that the user passes by along the way”).
`Ratsimor describes two types of promotions and discounts: a generic
`promotion and a targeted promotion. Id. at 5-8. In contrast to a generic
`promotion, a targeted promotion enables merchants “to customize the
`discounts to address needs and demands of a particular group of potential
`consumers.” Id. at 3.
`Ratsimor also describes a prototype in which three simulated
`advertisers electronically broadcast coupons with discounts to three mobile
`devices, each
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