On May 26, 2016, the Patent Trial and Appeal Board (PTAB) denied Patent Owner Blue Calypso, LLC’s request that the Patent and Trademark Office not publish a certificate cancelling dependent claims 8-12, 14, and 23 of U.S. Patent 7,664,516 (“’516 Patent”) covering a method for peer-to-peer advertising between mobile communication devices. Blue Calypso alleged that the Final Written Decision erred in canceling the aforementioned dependent claims as anticipated when the independent claim from which they depend was not found to be anticipated.
The case started on June 25, 2013 when Petitioner Groupon filed a petition for covered business method (CBM) review of claims 1-27 and 29 of the ’516 Patent. The PTAB instituted review of all challenged claims, but with respect to claims 2-15, 20-23 and 29, it instituted review solely based on anticipation. Notably, claims 8-12, 14, and 23 depend from claim 1, and the PTAB did not institute review of claim 1 based on anticipation.
On December 17, 2014, the PTAB entered a Final Written Decision holding, among other things, that Groupon had demonstrated by a preponderance of the evidence that claims 2-15, 20-23 and 29 were unpatentable under 35 U.S.C. §102(b). Blue Calypso appealed to the Federal Circuit, but did not claim an error in the Final Written Decision with respect to claims 2-15, 20-23 and 29 being found anticipated, despite claim 1, from which they depend, not found to be anticipated. The Federal Circuit affirmed the PTAB’s decision. Subsequently, however, Blue Calypso alleged during a conference call with the PTAB that the Final Written Decision had been issued in error because there was no finding of anticipation with respect to claim 1.
After reviewing the extensive record, the PTAB concluded that Blue Calypso “had numerous opportunities, from the time of the Decision on Institution was entered, to raise the issue of whether claims 8-12, 14, and 23 are unpatentable.” Ultimately, the PTAB found persuasive in ruling for Groupon that Blue Calypso raised this issue for the first time after Federal Circuit review and “cited no authority for such a correction of a PTAB’s final decision after [the] reviewing court has decided an appeal from the PTAB’s final decision.” The PTAB, therefore, declined to make any modification to the Final Written Decision.
Groupon, Inc. v. Blue Calypso, LLC, CBM2013-00035, Paper 49 (PTAB May 26, 2016).