`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 37
`Entered: March 20, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC., DOMINO’S PIZZA, INC., DOMINO’S PIZZA, LLC,
`FANDANGO, LLC, AND OPENTABLE, INC.,
`Petitioner,
`
`v.
`
`AMERANTH, INC.,
`Patent Owner.
`____________
`
`Case CBM2014-00013
`Patent No. 6,982,733 B1
`____________
`
`Before JAMESON LEE, MEREDITH C. PETRAVICK, and
`NEIL T. POWELL, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`Covered Business Method Patent Review
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`CBM2014-00013
`Patent 6,982,733 B1
`
`
`I. INTRODUCTION
`
`Apple Inc., Fandango, LLC, OpenTable, Inc., Domino’s Pizza, Inc.,
`
`and Domino’s Pizza, LLC (collectively, “Petitioner”) filed a Petition (Paper
`
`10, “Pet.”) requesting review under the transitional program for covered
`
`business method patents of claims 1–16 of U.S. Patent No. 6,982,733 B1
`
`(Ex. 1033, “the ’733 patent”). On March 26, 2014, pursuant to 35 U.S.C.
`
`§ 324, we instituted this trial as to claims 1–16 on the proposed ground of
`
`unpatentability under 35 U.S.C. § 101. Paper 23 (“Dec. to Inst.”).
`
`Ameranth, Inc. (“Patent Owner”) filed a Patent Owner Response (Paper 29,
`
`“PO Resp.”) and Petitioner filed a Reply (Paper 30, “Reply”).
`
`
`
`An oral hearing in this proceeding was held on October 24, 2014. A
`
`transcript of the hearing is included in the record (Paper 34, “Tr.”). The oral
`
`hearing was consolidated with the oral hearing for related CBM2014-00015
`
`and CBM2014-00016.
`
`
`
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
`
`Decision is issued pursuant to 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73.
`
`
`
`For the reasons that follow, we determine that Petitioner has shown by
`
`a preponderance of the evidence that claims 1, 2, 4, 5, 10, and 12 of the ’733
`
`patent are unpatentable.
`
`A. The ’733 Patent
`
`The ’733 patent relates to an information management and
`
`synchronous communication system and method for generating and
`
`transmitting computerized menus for restaurants. Ex. 1033, Abstract.
`
`Figure 1 of the ’733 patent is reproduced below:
`
`
`
`
`2
`
`
`
`CBM2014-00013
`Patent 6,982,733 B1
`
`
`
`
`Figure 1 is a schematic representation of the menu display/user interface of
`the preferred embodiment of the ’733 patent.
`
`As shown in Figure 1, Graphical User Interface (“GUI”) 1 includes
`
`menu tree 7, modifiers window 8, and sub-modifiers window 9. Id. at col. 7,
`
`ll. 44–48. GUI 1 is used to build a menu on a desktop or other computer.
`
`Id. at col. 7, ll. 28–29. Menu items are categorized and displayed in a
`
`hierarchical manner in menu tree 7. Modifiers (e.g., salad dressing) are
`
`shown in modifiers window 8, and sub-modifiers (e.g., Italian dressing,
`
`French dressing, Ranch dressing, etc.) are shown in sub-modifiers window
`
`9. Id. at col. 7, ll. 30–36. Once the menu is built using GUI 1, the menu
`
`may be downloaded to a handheld device or web page. Ex. 1033, col. 10,
`
`ll. 1–9, col. 11, ll. 12–18.
`
`
`
`
`3
`
`
`
`CBM2014-00013
`Patent 6,982,733 B1
`
`
`Figure 7 is reproduced below:
`
`
`Figure 7 depicts the interface on a typical wireless device used in conformity
`with the invention of the ’733 patent.
`
`As shown in Figure 7, “the page menu is displayed in a catalogue-like point-
`
`and-click format . . . [thereby allowing] a person with little expertise [to]
`
`‘page through’ to complete a transaction with the POS [point of sale]
`
`interface and avoid having to review the entire menu of Fig. 1 to place an
`
`order.” Ex. 1033, col. 11, ll. 34–39. This interface could be shown on a
`
`PDA or web page. Id. at col. 11, l. 40.
`
`
`
`
`4
`
`
`
`CBM2014-00013
`Patent 6,982,733 B1
`
`
`Figure 8 is reproduced below:
`
`
`Figure 8 depicts the handwritten screen according to one embodiment of the
`’733 patent.
`
`In one embodiment, a server may take a drink order by selecting “Iced
`
`Tea” from the menu on the handheld device. Ex. 1033, col. 4, ll. 6-7. As
`
`shown in Fig. 8, the server then may manually modify the order by writing
`
`“w/ lemon” on the screen on the device. Id. at col. 4, ll. 7–9, Fig. 8. The
`
`manually modified drink order is then presented to the individual preparing
`
`the drinks. Id. at col. 4, ll. 9–11.
`
`
`
`B. Illustrative Claims
`
`Claims 1 and 12 of the ’733 patent are illustrative of the claims at
`
`issue and read as follows:
`
`1. An information management and synchronous
`communications system for generating and transmitting menus
`comprising:
`
`a. a central processing unit,
`
`b. a data storage device connected to said central
`processing unit,
`
`
`
`
`5
`
`
`
`CBM2014-00013
`Patent 6,982,733 B1
`
`
`c. an operating system including a graphical user
`interface,
`
`d. a first menu consisting of menu categories, said menu
`categories consisting of menu items, said first menu
`stored on said data storage device and displayable in a
`window of said graphical user interface in a hierarchical
`tree format,
`
`e. a modifier menu stored on said data storage device and
`displayable in a window of said graphical user interface,
`
`f. a sub-modifier menu stored on said data storage device
`and displayable in a window of said graphical user
`interface, and
`
`g. application software for generating a second menu
`from said first menu and transmitting said second menu
`to a wireless handheld computing device or Web page,
`
`wherein the application software facilitates the
`generation of the second menu by allowing selection of
`categories and items from the first menu, addition of
`menu categories to the second menu, addition of menu
`items to the second menu and assignment of parameters
`to items in the second menu using the graphical user
`interface of said operating system, said parameters being
`selected from the modifier and sub-modifier menus,
`wherein said second menu is manually modified after
`generation.
`
`
`
`12. In a computer system having an input device, a storage
`device, a video display, an operating system including a
`graphical user interface and application software, an
`information management and synchronous communications
`method comprising the steps of:
`
`a. outputting at least one window on the video display;
`
`b. outputting a fist menu in a window on the video
`display;
`
`c. displaying a cursor on the video display;
`
`
`
`
`6
`
`
`
`CBM2014-00013
`Patent 6,982,733 B1
`
`
`d. selecting items from the first menu with the input
`device or the graphical user interface;
`
`e. inserting the items selected from the first menu into a
`second menu, the second menu being output in a
`window;
`
`f. optionally adding additional items not included in the
`first menu to the second menu using the input device or
`the graphical user interface;
`
`g. storing the second menu on the storage device; and
`
`synchronizing the data comprising the second menu
`between the storage device and at least one other data
`storage medium, wherein the other data storage medium
`is connected to or is part of a different computing device,
`and wherein said second menu is manually modified after
`generation.
`
`
`
`C. Related Proceedings
`
`Both parties identify numerous related ongoing district court
`
`proceedings. Pet. 10–11; Paper 3, 4–5.
`
`In addition, Petitioner requested covered business method patent
`
`review of the following related patents: U.S. Patent No. 6,348,850
`
`(CBM2014-00015; “the ’850 patent”) and U.S. Patent No. 8,871,325
`
`(CBM2014-00016). We instituted covered business method patent review in
`
`CBM2014-00015 and CBM2014-00016, and final written decisions in those
`
`proceedings are entered concurrently with this decision.
`
`Petitioner also requested covered business method patent review of
`
`related U.S. Patent No. 8,146,077 (CBM2014-00014). We did not institute
`
`covered business method patent review in CBM2014-00014.
`
`
`
`
`
`
`7
`
`
`
`CBM2014-00013
`Patent 6,982,733 B1
`
`
`D. Alleged Ground of Unpatentability
`
`
`
`Petitioner alleges that claims 1–16 are unpatentable under 35 U.S.C.
`
`§ 101.
`
`
`
`
`
`II. ANALYSIS
`
`A. Arguments Incorporated By Reference
`
`In footnote 10 on pages 12–13 of the Patent Owner Response, Patent
`
`Owner attempts to incorporate certain arguments made in its Preliminary
`
`Response (Paper 13) into the Patent Owner Response. Our rules prohibit
`
`incorporating arguments by reference. 37 C.F.R. § 42.6(a)(3) states:
`
`“[a]rguments must not be incorporated by reference from one document into
`
`another document.” Incorporation by reference circumvents our rule
`
`limiting the pages in the Patent Owner response to 80 pages. See 37 C.F.R.
`
`§ 42.24(b)(2). Arguments that are not developed and presented in the Patent
`
`Owner Response, itself, are not entitled to consideration. See Paper 24, 2–3.
`
`(cautioning Patent Owner “that any arguments for patentability not raised
`
`and fully briefed in the response will be deemed waived”).
`
`
`
`
`
`B. Claim Construction
`
`The Board interprets claims of unexpired patents using the broadest
`
`reasonable construction in light of the specification of the patent in which
`
`they appear. 37 C.F.R. § 42.300(b). Under the broadest reasonable
`
`construction standard, claim terms are given their ordinary and customary
`
`meaning, as would be understood by one of ordinary skill in the art in the
`
`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`
`1257 (Fed. Cir. 2007). Any special definition for a claim term must be set
`
`
`
`
`8
`
`
`
`CBM2014-00013
`Patent 6,982,733 B1
`
`forth with reasonable clarity, deliberateness, and precision. In re Paulsen,
`
`30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition,
`
`limitations are not to be read from the specification into the claims. In re
`
`Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`
`Prior to construing the relevant claim limitations, we turn to some
`
`initial matters raised by Patent Owner. First, Patent Owner argues that we
`
`must construe “the entirety of the challenged claims” (PO Resp. 31), and
`
`proposes constructions for some, but not all, limitations of the challenged
`
`claims (see id. at 34–36). Claim construction, however, “is not an inviolable
`
`prerequisite to a validity determination under § 101.” Bancorp Servs. L.L.C.
`
`v. Sun Life Assur. Co. of Canada (U.S.), L.L.C., 687 F.3d 1266, 1273 (Fed.
`
`Cir. 2012). See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d
`
`795, 803 (Fed. Cir. 1999) (only those terms that are in controversy need to
`
`be construed, and only to the extent necessary to resolve the controversy).
`
`Below, we construe the limitations that are relevant to the issues of patent-
`
`eligibility discussed below. We determine that all other claim limitations
`
`need no explicit construction.
`
`
`
`Second, Patent Owner urges us to adopt all previous judicial
`
`constructions and, in particular, the constructions of United States District
`
`Court for the Eastern District of Texas Marshall Division (see Ex. 2014–
`
`2016). PO Resp. 30. Petitioner also relies upon previous judicial
`
`constructions (see Ex. 2017) to support its arguments. See Reply 4.
`
`However, the standard for claim construction in a district court infringement
`
`action is different than the standard applied by the Board. See In re Morris,
`
`127 F.3d 1048, 1053–54 (Fed. Cir. 1997). In covered business method
`
`patent review proceedings, the Board applies the broadest reasonable
`
`
`
`
`9
`
`
`
`CBM2014-00013
`Patent 6,982,733 B1
`
`construction consistent with the specification. 37 C.F.R. § 42.300(b); see
`
`also SAP Am., Inc. v. Versata Dev. Grp., Inc., Case CBM2012-00001, slip
`
`op. at 7–18 (PTAB June 11, 2013) (Paper 70) (discussing adoption of the
`
`broadest reasonable interpretation standard).
`
`i. Preamble
`
`
`
`The preamble of independent claim 1 recites “[a]n information
`
`management and synchronous communications system for generating and
`
`transmitting menus.” The preamble of independent claims 4 and 5 each
`
`recites “[a]n information management and synchronous communication
`
`system for generating menus.” The preamble of independent claim 12
`
`recites “an information management and synchronous communications
`
`method.” Petitioner and Patent Owner dispute whether the preambles limit
`
`these claims. Reply 3–7; PO Resp. 34, 35–36.
`
`Patent Owner argues that the preambles are limiting because “[t]erms
`
`are recited in the preamble which do not appear in the remainder of the
`
`claims and ‘synchronous communications system’ is necessary to define the
`
`synchronization functionality of the first menus and the second menus on the
`
`back[-]office server (central database) and the handheld device/Web pages.”
`
`PO Resp. 36. According to Patent Owner, the preamble should be construed
`
`as “a computerized system having multiple devices in which a change to
`
`data made on a central server is updated on client devices and vice versa.”
`
`Id. at 34; see id. at 36–37. Patent Owner also argues that the preamble is
`
`limiting because the Specification describes that a synchronous
`
`communications system is important (id. (citing Ex. 1033, Title, Abstract,
`
`col. 3, ll. 9–15, 59–67)), and because the Examiner of the related ’850 patent
`
`
`
`
`10
`
`
`
`CBM2014-00013
`Patent 6,982,733 B1
`
`relied upon the preamble during prosecution to distinguish over the prior art
`
`(id.).
`
`Petitioner argues that the preambles are non-limiting because the
`
`preamble does not recite any structural components not captured in the body
`
`of the claims and “merely sets forth the purpose (‘information management
`
`and synchronous communication’) and intended use (‘for generating and
`
`transmitting menus’) of the claimed invention.” Reply 3–6. Petitioner
`
`argues that Patent Owner’s proposed construction improperly reads in a
`
`distributed system that includes a central server and client devices and
`
`improperly excludes a preferred desktop PC embodiment from the claims.
`
`Reply 6–7. Petitioner further argues that, contrary to Patent Owner’s
`
`assertion, the Examiner did not rely upon the preamble to distinguish over
`
`the prior art. Id. at 5–6.
`
`“In general, a preamble limits the invention if it recites essential
`
`structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to
`
`the claim.” Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d
`
`801, 808 (Fed. Cir. 2002) (citing Pitney Bowes Inc. v. Hewlett-Packard Co.,
`
`182 F.3d 1298, 1305 (Fed. Cir. 1999)). A preamble, however, is not limiting
`
`where the claim body defines a structurally complete invention and the
`
`preamble only states a purpose or intended use for the invention. Id.
`
`The bodies of the independent claims 1, 4, and 5 recite a system that
`
`includes a central processing unit (“CPU”) or microprocessor; a data storage
`
`device, a display device; a data input device; an operating system with a
`
`GUI, a first (i.e., master) menu, a modifier menu, a sub-modifier menu, and
`
`application software. The application software is capable of generating a
`
`second (i.e., modified) menu from said first menu. The application software
`
`
`
`
`11
`
`
`
`CBM2014-00013
`Patent 6,982,733 B1
`
`is capable of transmitting or synchronizing the second menu to another
`
`computing device. Claim 1 recites that the other computing device is such a
`
`wireless handheld computing device or Web page.
`
`As can be seen from the above, the bodies of the independent claims
`
`1, 4, and 5 recite a structurally complete invention; one that corresponds to
`
`the embodiment that has a desktop PC and a menu configuration application
`
`described in the Specification at column 7, line 24 thru column 10, line 15
`
`and depicted in Figure 1. As described in the Specification, a menu is
`
`updated using the GUI of the menu configuration application and, then, the
`
`updated menu is downloaded to a connected handheld device by clicking on
`
`a “Download Database” item or icon in GUI 1. Ex. 1033, col. 10, ll. 1–9;
`
`see id. at col. 3, ll. 24–28, col. 7, ll. 38–41, col. 8, l. 29. Thus, the updated
`
`menu is the same on the desktop PC and the handheld device. At the oral
`
`hearing, Patent Owner indicated that downloading is synchronizing, as
`
`“[i]t’s making something the same with something else.” See Tr. 28.
`
`Claim 12’s preamble recites “an information management and
`
`synchronous communications method.” The body of claim 12 recites
`
`multiple steps that require outputting of a first menu, selecting items from
`
`the first menu, inserting the selected items into a second menu, adding items
`
`to the second menu, storing the second menu, and a step of synchronizing
`
`the second menu between a storage device and another data storage medium.
`
`Given this, we determine that the preamble does not recite any essential
`
`steps not already recited in the body of claim 12.
`
`For these reasons, we agree with Petitioner that the preambles of
`
`claims 1, 4, and 5 are non-limiting because they do not recite any structural
`
`components not already captured in the body of the claim and merely set
`
`
`
`
`12
`
`
`
`CBM2014-00013
`Patent 6,982,733 B1
`
`forth the purpose and intended use of the claimed invention. Also, the
`
`bodies of the claims already possess life, meaning, and vitality, without
`
`importing anything from the preamble. Further, claim 12’s recitation of
`
`“information management and synchronous communications method” is
`
`non-limiting because the body of claim 12 already possesses life, meaning,
`
`and vitality, without importing anything from the preamble.
`
`We further are not persuaded by Patent Owner’s argument that the
`
`preamble is limiting, because the argument is based upon a proposed
`
`construction that is overly narrow. Patent Owner’s proposed construction
`
`implies that a synchronous communication system requires a central back-
`
`office server that communicates data updates to and from multiple client
`
`devices. Although the Specification describes communication between a
`
`central back-office server and client devices (e.g., see Ex. 1033, col. 1, ll.
`
`41–59), we see nothing in the Specification, and Patent Owner points to
`
`nothing, that suggests that a synchronous communication system is required
`
`to include these elements. Patent Owner’s proposed construction attempts to
`
`import these extraneous elements from the Specification into the claim. If a
`
`feature is not necessary to give meaning to what the inventor means by a
`
`claim term, it would be “extraneous,” and should not be read into the claim.
`
`Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed.
`
`Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849
`
`F.2d 1430, 1433 (Fed. Cir. 1988).
`
`Further, we are not persuaded by Patent Owner’s argument that the
`
`preamble is limiting because the Examiner of the related ’850 patent relied
`
`upon the preamble during prosecution to distinguish over the prior art, as
`
`evidenced by the Examiner’s reasons for allowance (PO Resp. 36). Clear
`
`
`
`
`13
`
`
`
`CBM2014-00013
`Patent 6,982,733 B1
`
`reliance on the preamble during prosecution to distinguish the claimed
`
`invention from the prior art may transform the preamble into a claim
`
`limitation. Catalina, 289 F.3d at 808 (citation omitted). The Examiner’s
`
`reasons for allowance for the related ’850 patent do not show that the
`
`preamble clearly was relied upon during the prosecution of the ’733 patent.
`
`Further, contrary to the Patent Owner’s argument, the Examiner’s reasons
`
`for allowance in the ’850 patent indicate that the claimed sub-modifier menu
`
`and the claimed application software are the uniquely distinct features, and
`
`not the synchronous communication system of the preamble. Ex. 1035, 7.
`
`
`
`For the reasons discussed above, we are persuaded by Petitioner that
`
`the preambles are non-limiting.
`
`ii. “central processing unit”
`
`
`
`Independent claims 1 and 4 recite a “central processing unit.” Patent
`
`Owner proposes that CPU be construed as a “central server.” PO Resp. 34,
`
`37. According to Patent Owner, its construction takes into account “the
`
`centralized nature of the control over the recited menu generation and
`
`synchronous transmission functionally of the central processing unit”
`
`described in the Specification. Id. at 37.
`
`Petitioner argues that there is nothing in the “intrinsic evidence [that]
`
`offers any alternative definition of this common technical term” and argues
`
`that Patent Owner’s proposed construction is contrary to the Specification,
`
`which equates the CPU to a microprocessor. Reply 7 (citing Ex. 1033,
`
`col. 6, ll. 52–54, 63–65). Petitioner proposes that CPU should be construed
`
`according to its ordinary and customary meaning, which is “the
`
`computational and control unit of a computer.” Pet. 41 (citing MICROSOFT
`
`COMPUTER DICTIONARY, 115 (4th ed. 1999)).
`
`
`
`
`14
`
`
`
`CBM2014-00013
`Patent 6,982,733 B1
`
`
`
`We are persuaded by Petitioner that the broadest reasonable
`
`construction in light of the Specification of the term CPU is the
`
`computational and control unit of a computer. Petitioner’s construction is
`
`consistent with the Specification, which describes that the system of the ’733
`
`patent uses typical hardware elements in the form of a computer workstation
`
`and that “a typical workstation platform includes hardware such as a central
`
`processing unit (‘CPU’), e.g., a Pentium® microprocessor.” Ex. 1033,
`
`col. 6, ll. 52–54; see also id. at col. 6, l. 65 (“a CPU, e.g., Pentium®
`
`microprocessor”). Further, Petitioner’s construction is consistent with the
`
`Specification, which as discussed above, discloses using a desktop PC to
`
`generate and download menus to a connected handheld device (see id. at
`
`col. 7, l. 38–col. 10, l. 15), as well as, discloses the use of a central back-
`
`office server (e.g., see id. at col. 2, ll. 37–40). Patent Owner’s proposed
`
`construction improperly reads into the claims the central back-office server.
`
`See Renishaw, 158 F.3d at 1249 (explaining that extraneous features should
`
`not be read into the claims).
`
`
`
`For these reasons, we determine that the broadest reasonable
`
`construction, in light of the Specification, of CPU is the computational and
`
`control unit of a computer.
`
`iii. “Web page”
`
`
`
`Neither Petitioner nor Patent Owner contests the construction of the
`
`term “Web page” in the Decision to Institute. See PO Resp. 39; Reply 2.
`
`We construed Web page to mean “a document with associated files for
`
`graphics, scripts, and other resources, accessible over the internet and
`
`viewable in a web browser.” Dec. on Inst. 9–10.
`
`
`
`
`15
`
`
`
`CBM2014-00013
`Patent 6,982,733 B1
`
`
`iv. “menu”
`
`
`
`Petitioner does not propose explicitly a construction of menu, but
`
`argues that the claim terms should be given their ordinary and customary
`
`meaning. Pet. 30–31. Patent Owner proposes that menu should be
`
`construed as “computer data representing collections of linked levels of
`
`choices or options intended for display in a graphical user interface.” PO
`
`Resp. 35, 40–41 ((referring to a construction by a district court); see Ex.
`
`2014, 11–12). Patent Owner, however, provides no analysis as to why the
`
`district court’s construction is the broadest reasonable construction in light
`
`of the Specification. PO Resp. 35, 40–41.
`
`We are not persuaded by Patent Owner that its proposed construction
`
`is the broadest reasonable construction in light of the Specification. We see
`
`nothing in the Specification, and Patent Owner does not point to anything in
`
`the Specification, that provides support for Patent Owner’s proposed
`
`construction, in particular that the menus have a “linked levels” feature.
`
`Although the Specification discloses some menus that are linked to
`
`additional menus, this “linked levels” feature is extraneous and should not
`
`be read from the Specification into the claim. See Ex. 1033, col. 6, ll. 37–46
`
`(“File options can have additional subordinate or child options associated
`
`with them. If a file option having a subordinate option is selected . . .”
`
`(emphases added)).
`
`We give “menu” its ordinary and customary meaning. RANDOM
`
`HOUSE WEBSTER’S COLLEGE DICTIONARY defines menu as “a list of options
`
`available to a user as displayed on a computer or TV screen.” RANDOM
`
`HOUSE WEBSTER’S COLLEGE DICTIONARY, 520 (2nd ed. 1997). This
`
`definition is consistent with the Specification, which describes menus as
`
`
`
`
`16
`
`
`
`CBM2014-00013
`Patent 6,982,733 B1
`
`providing choices or options in a GUI. See Ex. 1033, col. 5, ll. 32–34; see
`
`Figure 1 (depicting a menu, a modifier menu, and a sub modifier menu).
`
`
`
`For these reasons, we determine that the broadest reasonable
`
`construction, in light of the Specification, of “menu” is a list of options
`
`available to a user displayable on a computer.
`
`v. “manually modified”
`
`
`
`Petitioner does not propose explicitly a construction of “manually
`
`modified” but argues that the claim terms should be given their ordinary and
`
`customary meaning. Pet. 40–41. Patent Owner proposes that “manually
`
`modified” should be construed as “effecting a change as a result of a user’s
`
`input or request.” PO Resp. 35–36, 42–43.
`
`Patent Owner’s proposed construction is consistent with the ordinary
`
`and customary meaning of the claim terms (see Ex. 3002 (providing a
`
`dictionary definition of “manual” and “modify”)) and is consistent with the
`
`Specification, which describes embodiments that make manual
`
`modifications by handwritten screen captures or voice recorded messages,
`
`coupled to the standard menus (Ex. 1033, col. 3, l. 48–col. 4, l. 56). On this
`
`record, we determine that Patent Owner’s proposed construction is the
`
`broadest reasonable construction, in light of the Specification.
`
`Claims 1 and 5 each recite “wherein said second menu is manually
`
`modified after generation.” Claim 4 recites “wherein said second menu is
`
`manually modified by handwriting or voice recording after generation.” As
`
`discussed in our Decision to Institute, theses clauses are “a further limitation
`
`regarding the application software’s ability to facilitate the generation of the
`
`second menu.” Dec. to Inst. 18. Given our construction of “manually
`
`modified” above, we determine that claims 1 and 5 require application
`
`
`
`
`17
`
`
`
`CBM2014-00013
`Patent 6,982,733 B1
`
`software that is capable of facilitating the generation of a second menu that
`
`is capable of being manually modified after generation. Claim 4 requires
`
`application software that is capable of facilitating the generation of a second
`
`menu that is capable of being manually modified by handwriting or voice
`
`recording after generation.
`
`
`
`C. 35 U.S.C. § 101
`
`Petitioner challenges claims 1–16 of the ’733 patent as claiming
`
`patent-ineligible subject matter under 35 U.S.C. § 101. Pet.49–60; Reply 8–
`
`15. According to Petitioner, the claims are directed to the abstract idea of
`
`generating a menu and do not contain additional limitations that
`
`meaningfully limit the abstract idea to a practical application. Id.
`
`Patent Owner disagrees and contends that the claims are patent-
`
`eligible because they recite a machine and not an abstract idea and because
`
`they recite specialized software that synchronously generates and wirelessly
`
`transmits non-PC standard handheld menus comprised of multi-tiered levels
`
`of components. PO Resp. 44–80.
`
`a. Section 101 Subject Matter Eligibility
`
`
`
`For claimed subject matter to be patentable eligible, it must fall into
`
`one of four statutory classes set forth in 35 U.S.C. § 101: a process, a
`
`machine, a manufacture, or a composition of matter. The Supreme Court
`
`recognizes three categories of subject matter that are ineligible for patent
`
`protection: “laws of nature, physical phenomena, and abstract ideas.” Bilski
`
`v. Kappos, 130 S. Ct. 3218, 3225 (2010) (internal quotations and citation
`
`omitted). A law of nature or an abstract idea by itself is not patentable;
`
`however, a practical application of the law of nature or abstract idea may be
`
`
`
`
`18
`
`
`
`CBM2014-00013
`Patent 6,982,733 B1
`
`deserving of patent protection. Mayo Collaborative Servs. v. Prometheus
`
`Labs., Inc., 132 S. Ct. 1289, 1293–94 (2012). To be patentable, however, a
`
`claim must do more than simply state the law of nature or abstract idea and
`
`add the words “apply it.” Id.
`
`
`
`In Alice Corp. Pty, Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the
`
`Supreme Court recently clarified the process for analyzing claims to
`
`determine whether claims are directed to patent-ineligible subject matter. In
`
`Alice, the Supreme Court applied the framework set forth previously in
`
`Mayo, “for distinguishing patents that claim laws of nature, natural
`
`phenomena, and abstract ideas from those that claim patent-eligible
`
`applications of these concepts.” Alice, 134 S. Ct. at 2355. The first step in
`
`the analysis is to “determine whether the claims at issue are directed to one
`
`of those patent-ineligible concepts.” Id. If they are directed to a patent-
`
`ineligible concept, the second step in the analysis is to consider the elements
`
`of the claims “individually and ‘as an ordered combination’” to determine
`
`whether there are additional elements that “‘transform the nature of the
`
`claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at
`
`1291, 1297). In other words, the second step is to “search for an ‘inventive
`
`concept’—i.e., an element or combination of elements that is ‘sufficient to
`
`ensure that the patent in practice amounts to significantly more than a patent
`
`upon the [ineligible concept] itself.’” Id. (alteration in original) (quoting
`
`Mayo, 132 S. Ct. at 1294). Further, the “prohibition against patenting
`
`abstract ideas ‘cannot be circumvented by attempting to limit the use of the
`
`formula to a particular technological environment’ or adding ‘insignificant
`
`postsolution activity.’” Bilski, 130 S. Ct. at 3230 (quoting Diamond v.
`
`Diehr, 450 U.S.175, 191–92 (1981)).
`
`
`
`
`19
`
`
`
`CBM2014-00013
`Patent 6,982,733 B1
`
`
`
`The patents at issue in Alice claimed a “method of exchanging
`
`financial obligations between two parties using a third-party intermediary to
`
`mitigate settlement risk.” Alice, 134 S. Ct. at 2356. Like the method of
`
`hedging risk in Bilski, 130 S. Ct. at 3240 — which the Court deemed “a
`
`method of organizing human activity” — Alice’s “concept of intermediate
`
`settlement” was held to be “‘a fundamental economic practice long prevalent
`
`in our system of commerce.’” Alice, 134 S. Ct. at 2356. Similarly, the Court
`
`found that “[t]he use of a third-party intermediary . . . is also a building
`
`block of the modern economy.” Id. “Thus,” the Court held, “intermediate
`
`settlement . . . is an ‘abstract idea’ beyond the scope of § 101.” Id.
`
`
`
`Accordingly, utilizing this framework, we analyze claims 1–16 of the
`
`’733 patent to determine whether these claims are directed to patent-
`
`ineligible subject matter.
`
`b. Ineligible Concept
`
`Petitioner argues that the claims are directed to the abstract idea of
`
`generating menus. Pet. 62–68; Reply 9–10. Patent Owner argues that the
`
`claims “are not directed to an ‘idea’ at all; they are directed to a new
`
`machine.” PO Resp. 46 (emphasis omitted).
`
`Nominally, the claimed subject matter of claims 1, 4, and 5 is a
`
`machine and the claimed subject matter of claim 12 is a process. A machine
`
`or process is one of the four categories of statutory subject matter. Statutory
`
`class, however, is not by itself determinative of whether a claim is directed
`
`to patent eligible subject matter. “Regardless of what statutory category
`
`(‘process, machine, manufacture, or composition of matter,’ 35 U.S.C.
`
`§ 101) a claim’s language is crafted to literally invoke, we look to the
`
`underlying invention for patent-eligibility purposes.” CyberSource Corp. v.
`
`
`
`
`20
`
`
`
`CBM2014-00013
`Patent 6,982,733 B1
`
`Retail Decisions, Inc., 654 F.3d 1366, 1374 (Fed. Cir. 2011). See Alice, 134
`
`S. Ct. 2358–2359; Bancorp Servs. v. Sun Life Assurance Co., 687 F.3d 1266,
`
`1275 (Fed. Circ. 2012).
`
`The independent claims recite a system or process that generates a
`
`second menu, which is capable of being manually modified after generation,
`
`from a first menu. As discussed in section I(A) above, the Specification
`
`discloses a user generating a menu by adding or deleting menu cate
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
