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ARTICLE · 30 MARCH 2016

Federal Circuit Finds Written Description Support From Claim Terms Absent In The Specification

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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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.

United StatesIntellectual Property
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
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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

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