Federal Circuit Finds Written Description Support from Claim Terms Absent in the Specification

The Federal Circuit affirmed most of the Patent Trial and Appeal Board’s (PTAB’s) findings from Covered Business Method (CBM) reviews of Blue Calypso’s patents. Blue Calypso, LLC v. Groupon, Inc., Nos. 2015-1391, 2015-1393, 2015-1394, 2015-1396, 2015-1397, 2015-1398, 2015-1399, 2015-1401 (Fed. Cir. March 1, 2016).

Initially, the Federal Circuit held that PTAB did not exceed its authority, as the mere recitation of a computer does not make a patent ineligible for CBM review.

The PTAB found claim terms “endorsement tag” and “token” lacked written description support because the terms were absent from the specification of the patent. The Federal Circuit disagreed because: (i) the exact terms appearing in the claim need not be used verbatim in the specification; (ii) the totality of the patent’s disclosure including the figures, the specification, and the claim languages provided support; and (iii) the terms were intended to refer to the same concept as “link” in the claim, despite Groupon’s failed attempt to distinguish them under claim differentiation doctrine. Thus, the PTAB “placed undue weight on the absence of the terms in the specification” in determining the sufficiency of written description, the Federal Circuit concluded.

From Groupon’s cross-appeal, the Federal Circuit affirmed the PTAB’s finding that a Ratsimor reference—a report identified by a hyperlink to a personal webpage maintained by a graduate student at the University of Maryland Baltimore County (UMBC)—was not sufficiently public, and thus did not qualify as prior art. Specifically, there was no evidence on record that Ratisimor was viewed or downloaded, that the ordinary skilled person would be aware of the personal webpage or its web address, or that the personal webpage was indexed as to be locatable by a search engine. Nor did a published article on the same research or a UMBC Department website constitute “research aid” that would have provided skilled artisans exercising reasonable diligence a definite roadmap leading to the Ratimor reference, because both lacked any direct or indirect citation to it.

The Federal Circuit also affirmed invalidity of numerous claims based anticipation , because a skilled person reading the reference, even if it did not expressly spell out the actual combination, would have been able to “at once envisage” the claimed arrangement. Judge Shall dissented, noting that such combination invokes the question of obviousness and assumes properties that Paul “neither disclose[s] nor render[s] inherent.”