{"id":66986,"date":"2016-03-11T06:00:15","date_gmt":"2016-03-11T11:00:15","guid":{"rendered":"https:\/\/ipwatchdog.com\/?p=66986"},"modified":"2018-02-08T10:49:37","modified_gmt":"2018-02-08T15:49:37","slug":"anticipate-inherently-teaches-claimed-combination-elements","status":"publish","type":"post","link":"https:\/\/ipwatchdog.com\/2016\/03\/11\/anticipate-inherently-teaches-claimed-combination-elements\/id=66986\/","title":{"rendered":"CAFC: Reference May Anticipate if it Inherently Teaches Claimed Combination of Elements"},"content":{"rendered":"

Each week, we succinctly summarize the preceding week of Federal Circuit precedential patent opinions. We provide the pertinent facts, issues, and holdings. Our Review allows you to keep abreast of the Federal Circuit\u2019s activities \u2013 important for everyone concerned with intellectual property. We welcome any feedback you may provide.<\/strong><\/span><\/p>\n

\u2013 Joe Robinson, Bob Schaffer, Lindsay Henner, Parker Hancock, and Puja Dave<\/strong><\/span><\/p><\/blockquote>\n

\"troutman-sanders-long\"<\/a><\/p>\n

 <\/p>\n

85-1. Reference May Anticipate if it Inherently Teaches Claimed Combination of Elements <\/em><\/strong><\/p>\n

Blue Calypso, LLC v. Groupon, Inc. <\/em>(Fed. Cir. Mar. 1, 2016) (Before Reyna, Schall, and Chen, J.) (Opinion for the court, Chen, J.). Click Here<\/a> for a copy of the opinion.<\/p>\n

Groupon petitioned the USPTO for Covered Business Method (CBM) reviews of five patents owned by Blue Calypso. The patents concern a mobile device implementation of a peer-to-peer advertising system. Specifically, a user can create a profile and subscribe to subsidy programs, such as product discounts or reward points. Advertisers determine which subscribers are eligible for their programs, based on the profile information. The Board found various claims unpatentable as anticipated under 35 U.S.C. \u00a7 102 or as lacking support under 35 U.S.C. \u00a7 112. Groupon\u2019s assertions of obviousness were rejected because the cited references did not qualify as prior art. Blue Calypso appealed and Groupon cross appealed.<\/p>\n

First, Blue Calypso argued that its patents do not claim a financial product or service and are not \u201ccovered business methods.\u201d The Court disagreed, in light of two recent decisions, Versata Dev. Grp., Inc. v. SAP Am., Inc., <\/em>793 F.3d 1306, 1318-23 (Fed. Cir. 2015) and SightSound Techs., LLC v. Apple Inc.<\/em>, 809 F.3d 1307 (Fed. Cir. 2015). These cases held that a \u201cfinancial activity,\u201d although not directed to money management, may still be \u201ca financial product or service\u201d under the statute. The claims at issue had a financial component, in the form of a subsidy, or financial inducement, that encouraged customers to participate in distributed advertising. This met the statutory definition of a CBM patent. The Board also correctly rejected Blue Calypso\u2019s computer implementation defense, because Versata<\/em> held that merely reciting the use of a computer did not satisfy the \u201ctechnological invention exception\u201d to CBM review.<\/p>\n

\"cafc-federal-circuit-windows\"<\/a>Regarding anticipation under \u00a7 102, Blue Calypso relied on case law requiring that an anticipatory reference must disclose the claimed elements \u201carranged as in the claim.\u201d However, the Court has held that \u201ca reference can anticipate a claim even if it \u2018d[oes] not expressly spell out\u2019 all of the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would \u2018at once envisage\u2019 the claimed arrangement or combination.\u201d Kennametal, Inc. v. Ingersoll Cutting Tool Co., <\/em>780 F.3d 1376, (Fed. Cir. 2015). Here, the Court affirmed the Board\u2019s finding that one Figure and certain passages in the description of the reference disclosed a limited number of elements and suggested combining them in a manner that anticipated the system claimed by Blue Calypso. Thus, \u201ca reference may still anticipate if that reference teaches that the disclosed components or functionalities may be combined and one of skill in the art would be able to implement the combination.\u201d This was an anticipation, without resort to obviousness, because the reference sufficiently disclosed making the combination, though not expressed a single embodiment or example.<\/p>\n

The Court agreed with Blue Calypso that the Board erred by rejecting two of the claims under \u00a7 112 because they used language (\u201ctag\u201d and \u201ctoken\u201d) not found in the specification. This was an unfortunate use of different words, in the specification and claims, to express similar concepts. Such poor drafting was unfortunate, but not a sufficient basis for invalidity. The Court reversed the Board\u2019s finding that these claims are unpatentable.<\/p>\n

Groupon appealed the Board\u2019s decision that a report, published on a web page by a graduate student, was not demonstrably a \u201cprinted publication\u201d and therefore could not be relied on as prior art to prove obviousness. The report was available on the student\u2019s personal webpage. The Court agreed with the Board that there was insufficient evidence to show that the report had ever been reviewed or downloaded. Moreover, posting on a personal web page was not to disseminate the report or make it accessible to the interested public as a \u201cprinted publication.\u201d<\/p>\n

Accordingly, the Court affirmed-in-part and reversed-in-part.<\/p>\n

Judge Schall wrote in dissent that, at most, the reference revealed a system with multiple tools that were capable of functioning together, but this was insufficient for a finding of anticipation. Thus, he opined that the Board\u2019s analysis was astray because it assumed what the prior art neither disclosed nor rendered inherent.<\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

The Court affirmed the Board\u2019s finding that one Figure and certain passages in the description of the reference disclosed a limited number of elements and suggested combining them in a manner that anticipated the system claimed by Blue Calypso. Thus, \u201ca reference may still anticipate if that reference teaches that the disclosed components or functionalities may be combined and one of skill in the art would be able to implement the combination.\u201d This was an anticipation, without resort to obviousness, because the reference sufficiently disclosed making the combination, though not expressed a single embodiment or example.<\/p>\n","protected":false},"author":109094,"featured_media":67002,"comment_status":"open","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"_acf_changed":false,"content-type":"","footnotes":"","_links_to":"","_links_to_target":""},"categories":[7202,82,6998,228,3],"tags":[5017,3519,4854,2703,3815,2014,9967,33,4106,34,4313,8727],"yst_prominent_words":[],"acf":[],"_links":{"self":[{"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/posts\/66986"}],"collection":[{"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/users\/109094"}],"replies":[{"embeddable":true,"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/comments?post=66986"}],"version-history":[{"count":0,"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/posts\/66986\/revisions"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/media\/67002"}],"wp:attachment":[{"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/media?parent=66986"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/categories?post=66986"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/tags?post=66986"},{"taxonomy":"yst_prominent_words","embeddable":true,"href":"https:\/\/ipwatchdog.com\/wp-json\/wp\/v2\/yst_prominent_words?post=66986"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}