Groupon Inc v. Blue Calypso LLC

1. Case Identification

• Case #: CBM2013-00033
• Patent #: 8,155,679
• Filed: June 25, 2013
• Petitioner(s): Groupon, Inc.
• Patent Owner(s): Blue Calypso, Inc.
• Challenged Claims: 1-27

2. Patent Overview

• Title: System and method for peer-to-peer advertising between mobile communication devices
• Brief Description: The ’679 patent discloses methods and systems for incentivizing users to refer targeted advertisements to other individuals. The system uses advertiser and subscriber demographic profiles to derive a match for advertising content and provides subsidies to users for successful referrals made to others.

3. Grounds for Unpatentability

Ground 1: Anticipation over Ratsimor - Claims 1-16 and 23-27 are anticipated by Ratsimor under 35 U.S.C. §102(b).

• Prior Art Relied Upon: Ratsimor (Technical Report TR-CS-03-27, Nov. 2003).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ratsimor, which details an "eNcentive" framework for peer-to-peer marketing within mobile hotspot networks, discloses every element of the challenged claims. Ratsimor allegedly teaches a system where users and advertisers create profiles with demographic data, which are used to match targeted promotions. The framework incentivizes users to propagate promotions to other users in an ad hoc network by offering rewards and additional discounts as subsidies. Petitioner contended that Ratsimor's use of unique "platform IDs" within each promotion to track the chain of distribution performs the function of the claimed "endorsement tag." Furthermore, an "eNcentive Ad Manager Agent" residing on the mobile device was argued to meet the limitations of the claimed "endorsement manager" by collecting, organizing, and transmitting promotions.

Ground 2: Anticipation over Paul - Claims 1-16 and 23-27 are anticipated by Paul under 35 U.S.C. §102(b).

• Prior Art Relied Upon: Paul (Application # 2002/0169835).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Paul, which describes an internet-based email marketing system, independently discloses all claimed features. Paul's system uses a sponsoring intermediary to conduct "refer a friend" campaigns, where members (subscribers) are matched with advertisements based on demographic profiles. Paul allegedly discloses providing subsidies, such as coupons or entry into random drawings, to members who successfully refer others. The referral mechanism uses an email containing a hyperlink and an associated "referral communications data packet" that identifies the original member and campaign. Petitioner argued this combination of a link and data packet for tracking and reward purposes meets the limitations of the claimed "endorsement tag" and "token." The system's computer-based functions for managing campaigns were argued to meet other system limitations.

Ground 3: Obviousness over Ratsimor and Paul - Claims 1-27 are obvious over Ratsimor in view of Paul under 35 U.S.C. §103.

• Prior Art Relied Upon: Ratsimor (Technical Report TR-CS-03-27, Nov. 2003) and Paul (Application # 2002/0169835).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that to the extent Ratsimor's mobile peer-to-peer advertising system is found not to disclose a specific claim limitation, that feature is taught by Paul's analogous email-based advertising system. For example, if Ratsimor’s user interface was not considered a website hosted by an intermediary for creating profiles, Paul explicitly teaches this feature.
  • Motivation to Combine: A POSITA would combine the teachings of these two analogous systems to extend and improve upon the methods disclosed in Ratsimor. Both references address the same problem of incentivized, targeted advertising and disclose well-known techniques. Combining Paul's established internet-based features, like a web portal for profile creation or more varied subsidy models, with Ratsimor's mobile-focused framework would have been a common-sense design choice.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining these systems, as it would involve applying a known technique (from Paul) to a similar system (Ratsimor) to yield predictable results.
• Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 1-22 based on Ratsimor in view of McLean (Application # 2007/0207780), which relied on similar design modification theories.

4. Key Claim Construction Positions

• "endorsement tag" / "token": Petitioner proposed construing these terms as an "executable link, such as a hyperlink." This broad construction was critical to their argument that the hyperlinks and unique identifiers used for tracking referrals in the prior art (Ratsimor and Paul) meet these claim limitations.
• "endorsement manager": Petitioner proposed this term encompasses general-purpose software like "web pages, cookies, scripts, etc." that facilitate receiving messages. This construction allowed Petitioner to map the limitation onto the "Ad Manager Agent" in Ratsimor and standard email programs or web browsers implied by Paul.

5. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: Petitioner argued that claims 1-22 are not entitled to priority from earlier-filed applications. It was asserted that key terms—specifically "endorsement tag," "match condition," and "token"—lacked written description support in the parent specifications and were first introduced in claim amendments during prosecution. Petitioner contended the proper priority date for these claims is the filing date of the application leading to the ’679 patent (November 18, 2009). This argument was critical because establishing this later priority date would make the McLean reference available as prior art against the claims.

6. Relief Requested

• Petitioner requests institution of post-grant review and cancellation of claims 1-27 of the ’679 patent as unpatentable.