United States: Is It Accessible? Internet Publications As CBM Prior Art

Last Updated: December 16 2015
Article by Joshua James and David P. Lindner

On December 7, 2015, the Federal Circuit heard arguments in Blue Calypso, LLC v. Groupon, Inc. (Appeal Nos. 15-1391, -1393, and -1394) as to whether a document posted on a university's engineering department website qualifies as prior art under the printed publication provision of 35 U.S.C. § 102(b). The case law instructs that this determination "involves a case-by-case inquiry into the facts and circumstances surrounding the reference's disclosure to members of the public," and that a reference is publicly accessible "upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it . . . ."

PTAB Ruling

On December 17, 2014, the Patent Trial and Appeal Board ("PTAB") entered a final written decision in two covered business method ("CBM") patent reviews (CBM2013-00033 and CBM2013-00034) between Petitioner Groupon, Inc. ("Groupon") and Patent Owner Blue Calypso, LLC ("Blue Calypso"). The CBM reviews challenged U.S. Patent No. 8,155,679, which relates to a system and method for peer-to-peer advertising between mobile communications devices.

In its final written decision, the PTAB found that one of the prior art references (the "Ratsimor paper") was not a printed publication under 35 U.S.C. § 102(b). The Ratsimor paper is a technical report from a university's engineering department that Groupon alleged was published more than one year prior to the '679 patent's earliest priority date, relying upon an author's publications list including the Ratsimor paper as well as testimony from a co-author regarding when the reference was available for download. The Board found that Groupon's evidence was insufficient, comparing the paper to an uncatalogued doctoral thesis or a paper placed on an open FTP server and finding that Groupon did not establish "how persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, could locate the Ratsimor paper on the Departmental website or otherwise locate [it] in November 2003."

Groupon's Federal Circuit Brief Arguments

Groupon argued that the Ratsimor paper was publicly available for viewing and downloading on the Internet from a university website. The supporting evidence for this argument included testimony regarding when the reference was available for download, the publication website of one of the paper's authors providing a link to the Ratsimor paper, metadata for the PDF of the Ratsimor paper showing that the file was created in June 2003, and metadata associated with the webserver currently hosting the Ratsimor paper showing that the file was present on the server prior to the '679 patent's filing date.

Groupon distinguished its situation from a paper placed on an open FTP server by pointing out that a search engine could easily find the Ratsimor paper. Additionally, Groupon argued that a previous Ratsimor article would provide a roadmap to persons of ordinary skill in the art to find the Ratsimor paper. The previous Ratsimor article discussed the same topic, and interested parties would know to search Ratsimor's publications (available on the university's website) for other papers on the topic (which would include the Ratsimor paper). Lastly, Groupon argued that the PTAB's requirements for Internet evidence would violate public policy:

The Board's standard would impose a requirement on Petitioners seeking to institute review of patents to, without subpoena power, proffer a declaration from a search engine to attest to fact that a document published on the Internet in 2003 and made available without restriction to the entire world, was actually crawled, indexed, and searchable by that search engines' algorithm as of a date perhaps a decade prior to the petition.

Blue Calypso's Federal Circuit Brief Arguments

Blue Calypso argued that the Ratsimor paper was made available for download through a space on a webserver controlled by a student, and not through a publicized location like the university's main website (where other papers were listed). Blue Calypso also argued that Groupon's supporting testimony did not identify any member of the public that received the Ratsimor paper, how any member of the public could locate it and download it, how it was ever "issued," how it was indexed in an online search engine, or even if it was indexed at all. Blue Calypso argued that numerous spelling and grammatical errors in the Ratsimor paper and the fact that another author of the paper did not list it as a publication suggest that the Ratsimor paper was not published.

Blue Calypso argued that the Ratsimor paper being made available for download through a space on a webserver controlled by a student was just like a paper located on an unindexed FTP server – a person of ordinary skill in the art would need to know the URL of the website to find the paper. Blue Calypso also argued that there is no evidence showing that the Ratsimor paper was not only available on the dark web. Lastly, Blue Calypso criticized Groupon's lack of evidence showing that the Ratsimor paper was part of the visible web, linked, and locatable to interested researchers, as could be shown via the Internet Archive's Wayback Machine.

Oral Argument

Oral argument took place on December 7, 2015, in front of Judges Reyna, Schall, and Chen. The Panel focused their questions on evidence of public accessibility. The Panel asked several questions about evidence that the webpage containing the Ratsimor paper was indexed or findable by persons of ordinary skill in the art more than one year prior to the '679 patent's earliest priority date. These questions suggested that there may be at least three ways to show public accessibility for documents on the Internet: (1) direct evidence that others accessed the prior art at the relevant timeframe, (2) evidence that the prior art was indexed at the relevant timeframe, and (3) evidence (potentially from an expert) of how persons of ordinary skill in the art would have known how to access the prior art at the relevant timeframe, such as the links they could have clicked to navigate to the webpage hosting the reference. The case should be monitored to see whether and how the Federal Circuit addresses the questions raised during the oral argument.

This article is intended to provide information of general interest to the public and is not intended to offer legal advice about specific situations or problems. Brinks Gilson & Lione does not intend to create an attorney-client relationship by offering this information and review of the information shall not be deemed to create such a relationship. You should consult a lawyer if you have a legal matter requiring attention. For further information, please contact a Brinks Gilson & Lione lawyer.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Joshua James
In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.