Tuesday, March 01, 2016

Judge SCHALL dissents in Blue Calpyso v GroupOn; raises points about inherent anticipation

Judge SCHALL dissenting in Blue Calypso:

I respectfully dissent from Part II. For
the reasons set forth below, I believe the Board erred in
finding claims 2–15, 20–23, and 29 of U.S. Patent No.
7,664,516 (the ’516 patent); claims 7–16 and 23–27 of U.S.
Patent No. 8,155,679; claims 1–5 of U.S. Patent No.
8,457,670; and claims 1, 4–6, 10, and 14 of U.S. Patent
No. 8,438,055 anticipated by U.S. Patent Application
Publication No. 2002/0169835 A1 by Paul, JR. et al.

Of anticipation issues:

In affirming the Board’s finding of anticipation, the
majority views Paul, in particular paragraph 29, as
“explicitly contemplat[ing] the combination of the disclosed
functionalities” of the direct-email and refer-afriend
tools. Maj. Op. 17–19. The majority also reads the
Board’s decision as having “found that [Paul] . . . disclose[
s] a limited number of tools” and also as having
“found that . . . a skilled artisan would ‘at once envisage’
the combination of . . . the refer-a-friend and [direct-email
tools] to arrive at the system claimed” by Blue Calypso.
Maj. Op. 20 (emphasis added). Based on these apparent
findings by the Board, the majority concludes that the
facts of this case are akin to those in Kennametal, Inc. v.
Ingersoll Cutting Tool Co., 780 F.3d 1376 (Fed. Cir. 2015),
where we found that a prior art reference anticipated
certain claims even without disclosing all the claimed

Of legal matters:

Prior art can,
however, anticipate a claim even if it “d[oes] not expressly
spell out” all the limitations arranged or combined as in
the claim, if a person of skill in the art, reading the reference,
would “at once envisage” the claimed arrangement
or combination, In re Petering, 49 CCPA 993, 301 F.2d
676, 681 (1962), or if the “missing descriptive matter is
necessarily present,” or inherent, in the reference, Continental
Can Co. v. Monsanto Co., 948 F.2d 1264, 1268
(Fed. Cir. 1991). “Under the principles of inherency, if the
prior art necessarily functions in accordance with, or
includes, the claims limitations, it anticipates.” Perricone
v. Medicis Pharm. Corp., 432 F.3d 1368, 1376 (Fed. Cir.
2005) (quoting MEHL/Biophile Int'l Corp. v. Milgraum,
192 F.3d 1362, 1365 (Fed. Cir. 1999)).

Footnote 2 of the dissent:

We have stated that filling in the gaps in a reference
by using the understanding of one skilled in the art
to find anticipation indicates reliance on a theory of
inherency. See Finnigan Corp. v. Int'l Trade Comm'n,
180 F.3d 1354, 1365 (Fed. Cir. 1999) (concluding that the
Administrative Law Judge relied on inherency in finding
the claims anticipated because he “was able to close th[e]
gap between the [prior art reference] and the claim” by
relying on the understanding of one skilled in the art);
Cont'l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268
(Fed. Cir. 1991) (explaining that “when [a] reference is
silent about [an] asserted inherent characteristic, such
gap in the reference may be filled with recourse to extrinsic
evidence . . . [which] must make clear that the missing
descriptive matter is necessarily present in the thing
described in the reference . . . .”). Although I do not read
the majority opinion as adopting the view that the Board
relied on inherency in this case, to the extent the Board’s
decision may be read that way, I believe the record evidence
is insufficient to establish inherent anticipation.
Groupon failed to show that the combination of the direct
e-mail and refer-a-friend tool options is “necessarily
present” in Paul. Groupon’s expert, Dr. Joshi, in fact,
acknowledged that using Paul’s system does not require
either the direct-email or refer-a-friend tools to be used at
all, let alone in conjunction. Moreover, the Board’s finding
that the tools are “different tool options of the cam-
paign manager” reveals that they do not necessarily have
to be used together because “options” are, by their very
nature, not necessary. As for Dr. Joshi’s conclusion that
the tools “can be used with one another,” it seems to me
that, if he is correct, this testimony suggests only a possible
use, not an inherent use.


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