ADOTAS (via Globe Newswire) – Blue Calypso announced today that it has filed a joint motion with defendants Groupon, Yelp, IZEA and Foursquare requesting a stay of their patent litigation until the U.S. Patent Trial and Appeal Board (PTAB) completes a Covered Business Method Review (CBMR) of the case.
In the summer and fall of 2012, Blue Calypso filed patent infringement lawsuits against Groupon, LivingSocial, Yelp, IZEA, Foursquare and MyLikes, claiming that those companies infringed on Blue Calypso’s patents covering the system it created and developed for peer-to-peer advertising. The technology is used in what Blue Calypso describes as its state-of-the-art digital marketing platform.
MyLikes settled with Blue Calypso in July 2013, and Living Simple did the same a month later.
In the most recent development in the case, Groupon filed a petition for CBMR in June 2013 for three of Blue Calypso’s issued patents and then filed a subsequent CBMR petition in August 2013 for the remaining two issued Blue Calypso patents. The PTAB has agreed to hear cases on the first three patents and is still considering the remaining two cases.
The PTAB was established in part to respond to the perceived problem of non-practicing entities (NPEs). Its CBMR process, similar to a “re-exam,” is a relatively new process that became effective in September 2012 as a part of the America Invents Act. During a CBMR, the patent owner has the opportunity to respond twice: an initial response as to whether or not grounds exist to review the patent and a second substantive response including evidence in support of upholding the patent as valid.
In the announcement issued today, Blue Calypso CEO Bill Ogle said the company and its litigation and prosecution counsel unanimously concluded that joining the defendants’ request for stay on a scheduled Markman hearing, or Claim Construction Hearing, was in the best interest of our shareholders and company. A Markman hearing is a pretrial hearing in a U.S. District Court during which a judge examines evidence from all parties on the appropriate meanings of relevant key words used in a patent claim, when patent infringement is alleged by a plaintiff.
“By negotiating with the defendants, our team has secured key terms that cemented our decision to join the stay,” said Ogle. “We believe this will avoid the possibility of conflicting verdicts, minimize appeals and shorten the resolution potentially by over a year. We are extremely confident in our case and the validity of our patents. We remain focused on our goal of increasing value to our shareholders through sales of our products and services and the protection of our patented technology.”
“While post-grant challenges have become a common tool for accused infringers, the CBMR procedure provides a unique opportunity for patent owners like Blue Calypso to further strengthen their patents in a shorter timeframe,” added Attorney Thomas M. Melsheimer of Fish & Richardson, Blue Calypso’s patent litigation counsel. “We are confident the CBMRs instituted with regard to the Blue Calypso patents provide a unique opportunity for the company to more fully realize the total potential of its patent portfolio. For instance, we can now address various invalidity arguments by the defendants, which in turn increase our belief that the company will ultimately prevail in the underlying litigation.”
Blue Calypso cited the following key reasons for joining the defendants’ request for the stay:
- Defendants will be estopped from raising key invalidity arguments at trial.
- Defendants will face an expedited schedule with fewer defenses after the CBMR.
- Patents that have survived a post-grant review procedure are considered battle tested, making them more resilient against any future claims of invalidity.