Paper No. 30
`Filed September 18, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`APPLE, INC., ET AL.
`Petitioner
`
`v.
`
`AMERANTH, INC.
`Patent Owner
`_____________
`
`Case CBM2014-00013
`Patent 6,982,733 B1
`_____________
`
`Before JAMESON LEE, RICHARD E. RICE, and STACEY G. WHITE,
`Administrative Patent Judges.
`
`
`
`
`
`PETITIONER’S REPLY BRIEF
`
`
`Filed September 18, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`APPLE, INC., ET AL.
`Petitioner
`
`v.
`
`AMERANTH, INC.
`Patent Owner
`_____________
`
`Case CBM2014-00013
`Patent 6,982,733 B1
`_____________
`
`Before JAMESON LEE, RICHARD E. RICE, and STACEY G. WHITE,
`Administrative Patent Judges.
`
`
`
`
`
`PETITIONER’S REPLY BRIEF
`
`
`
`TABLE OF CONTENTS
`
`
`
`2.
`
`I.
`II.
`
`INTRODUCTION .......................................................................................... 1
`CLAIM CONSTRUCTION ........................................................................... 1
`A.
`PO’s Construction of the Preamble Should Be Rejected ..................... 3
`PO’s own arguments require that the preamble is non-
`1.
`limiting. ...................................................................................... 3
`PO’s preamble construction is contrary to the intrinsic
`record.......................................................................................... 6
`PO’s Construction of “Central Processing Unit” Is Incorrect ............. 7
`B.
`III. CLAIMS 1-16 ARE NOT PATENTABLE UNDER SECTION 101 ............ 8
`A. Alice Did Not Merge Section 101 with Sections 102 and 103 ............ 8
`B.
`The Claims Do Not Include an Inventive Concept .............................. 9
`C.
`The Dependent Claims Do Not Add Any Meaningful
`Limitations .......................................................................................... 15
`IV. CONCLUSION ............................................................................................. 15
`
`
`
`
`
`
`
`
`-i-
`
`
`
`
`
`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Accenture Global Servs., GmbH v. Guidewire Software, Inc.,
`728 F.3d 1336 (Fed. Cir. 2013) .......................................................................... 10
`
`Alice Corp. Pty. LTD v. CLS Bank Int’l,
`134 S. Ct. 2347 (2014) ................................................................ 1, 8, 9, 10, 12, 14
`
`Allen Eng’g Corp. v. Bartell Indus.,
`299 F.3d 1336 (Fed. Cir. 2002) ............................................................................ 4
`
`In re Am. Acad. of Sci. Tech. Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) ........................................................................ 2, 7
`
`Bancorp Servs. L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), L.L.C.,
`687 F.3d 1266 (Fed. Cir. 2012) ................................................................ 2, 11, 15
`
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) ............................................................................ 4
`
`Catalina Mktg Int’l, Inc. v. Coolsavings.com, Inc.,
`289 F.3d 801 (Fed. Cir. 2002) .............................................................................. 5
`
`Cybersource Corp. v. Retail Decisions, Inc.,
`654 F.3d 1366 (Fed. Cir. 2011) .......................................................................... 12
`
`DietGoal Innovations LLC v. Bravo Media LLC,
`No. 13-cv-8391, 2014 U.S. Dist. LEXIS 92484 (S.D.N.Y. July 8,
`2014) ................................................................................................................... 12
`
`Gottschalk v. Benson,
`409 U.S. 63 (1972) ................................................................................................ 8
`
`K-2 Corp. v. Salomon S.A.,
`191 F.3d 1356 (Fed. Cir. 1999) ............................................................................ 2
`
`Mayo v. Prometheus Labs., Inc.,
`132 S. Ct. 1289 (2012) .................................................................................... 8, 13
`
`
`
`
`
`
`
`-ii-
`
`
`
`
`
`
`
`Parker v. Flook,
`437 U.S. 584 (1978) ...................................................................................... 12, 15
`
`RULES AND STATUTES
`
`35 U.S.C. § 101 .................................................................................................passim
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.300(b) ................................................................................................ 2
`
`MPEP § 2111.02 .................................................................................................... 5, 6
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`-iii-
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`
`
`
`
`
`
`LIST OF NEWLY FILED EXHIBITS
`
`FANDANGO 1066
`
`EXHIBIT NO.
`FANDANGO 1009
`
`DESCRIPTION (BOLDED IF USED)
`’077 Notice of Allowability Examiner’s Amendment
`U.S. Bancorp v. Retirement Capital Access Mgmt Co.,
`CBM2013-00014, Paper No. 33 (P.T.A.B. August 22,
`2014)
`FANDANGO 1067* Ameranth, Inc. v. Par Technology Corp., No. 2:10-CV-
`294, Dkt. No. 70 (E.D. Tex. Dec. 23, 2010)
`FANDANGO 1068 Ameranth, Inc. v. Fandango, Inc., No. 3:12-CV-1651,
`Dkt. No. 23 (S.D. Cal. Nov. 8, 2012)
`FANDANGO 1069* Roof, Professional Visual Basic Windows CE
`Programming (Wrox Press Ltd. 1998) (excerpts)
`FANDANGO 1070* Shepherd and Wingo, “Visual Programmer,” Microsoft
`Sys. J., Vol. 13, No. 5, at 97 (Feb. 1998)
`
`FANDANGO 1071 U.S. Patent No. 4,972,496
`
`FANDANGO 1072
`
`“Microsoft Introduces Palm PC, PC Companion
`Powered by Windows CE 2.0” (Jan. 8, 1998), located
`at http://www.microsoft.com/en-us/news/press/1998/
`jan98/palmpcpr.aspx (last visited Sept. 16, 2014)
`
`FANDANGO 1073 European Patent Publication No. EP 0917077A2
`
`FANDANGO 1074 U.S. Patent No. 5,974,238
`* Denotes exhibits not cited in and not filed with this petition.
`
`
`
`
`
`
`
`
`
`-iv-
`
`
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`The Board instituted this CBM Review because it determined “that
`
`Petitioner has demonstrated on this record that it is more likely than not that claims
`
`1-16 are directed to patent-ineligible subject matter under 35 U.S.C. § 101.” Paper
`
`23 at 28 [Institution Decision] (“ID”). Nothing in Patent Owner’s Response
`
`(“POR”) changes the reasoned and correct conclusions in the ID that claims 1-16
`
`are directed to the abstract idea of “generating and transmitting menus” and are not
`
`meaningfully limited to a particular practical application. ID at 23-24.
`
`The Supreme Court’s recent Alice v. CLS Bank decision confirmed that
`
`where a claim is directed to a patent-ineligible abstract idea (as the Board has
`
`already found here), the proper inquiry under § 101 is whether the additional
`
`elements of the claims—individually and as an ordered combination—provide an
`
`inventive concept sufficient to “transform” the claimed abstract idea into a patent-
`
`eligible application. 134 S. Ct. 2347, 2355 (2014). As the Board correctly found,
`
`the specification itself describes each of the “additional elements” of claims 1-16
`
`as “typical” or “conventional” hardware and software elements, which Alice
`
`confirmed cannot confer patent eligibility. See Alice, 134 S. Ct. at 2358. The
`
`Board should therefore issue a Final Written Decision canceling claims 1-16.
`
`II. CLAIM CONSTRUCTION
`PO attempts to render its claims patent-eligible by importing limitations via
`
`1
`
`
`
`
`
`claim construction that the Board previously determined are not in the claims. See
`
`ID at 15-16. Such attempts to improperly rewrite its claims should be rejected.
`
`See K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1364 (Fed. Cir. 1999).
`
`The Board determined that, with the exception of the term “web page,” “[a]ll
`
`other terms in the challenged claims . . . need no express construction at this time.”
`
`ID at 9. Nonetheless, PO proposed constructions for 15 different claim terms,
`
`without explaining their relevance to this proceeding. POR (Paper 29) at 34-36.
`
`Contrary to PO’s assertion that “the Board must construe the entirety of the
`
`challenged claims” (POR at 31), claim construction “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).
`
`Thus, while Petitioner disagrees with many of PO’s constructions, most of them
`
`are not relevant to the § 101 issues. Therefore, only two are discussed below.
`
`In a CBM Review, a claim in an unexpired patent is “given its broadest
`
`reasonable construction in light of the specification of the patent in which it
`
`appears.” 37 C.F.R. § 42.300(b). This standard differs from that in district court
`
`(contra POR at 30-31), and Petitioner reserves the right to advocate different
`
`constructions in another forum in accordance with the applicable standard. See In
`
`re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004).
`
`2
`
`
`
`
`
`PO’s Construction of the Preamble Should Be Rejected
`
`A.
`The Board correctly determined that “[c]laim 12’s computer system
`
`synchronizes data with a data storage medium, but the claim does not recite
`
`displaying the menu on a display associated with this storage medium,” and “claim
`
`12 . . . is directed to a method for displaying and generating a menu on a computer
`
`system.” ID at 16. Rather than properly seeking to amend its claims to recite
`
`detailed synchronization requirements or sequencing of cascaded menus (as found
`
`in claims from the related patents), PO argues those elements are already present
`
`by construing the preamble of claim 1 (and claims 4-5 and 12, which contain the
`
`same preamble) in a manner contrary to the intrinsic evidence and cited authorities.
`
`1.
`
`PO’s own arguments require that the preamble is non-limiting.
`
`PO asserts that it has “adopt[ed] and accept[ed] all of the previous judicial
`
`constructions... and urges the Board to adopt them for this proceeding as well . . . .”
`
`POR at 30 (emphasis in original) (citing claim construction orders from Judge
`
`Everingham in Ameranth v. Menusoft and Judge Payne in Ameranth v. Par). PO
`
`also asserts
`
`that
`
`the
`
`term “information management and synchronous
`
`communications system,” which is found in the preambles of claims 1, 4-5, and 12,
`
`is limiting and cites Judge Everingham’s preamble construction in support. POR at
`
`34. However, Judges Everingham and Payne adopted inconsistent constructions of
`
`the preamble language. Judge Everingham did not address whether the preamble
`
`3
`
`
`
`
`
`of claim 1 should be considered a limitation (Exhibit 2014 at 6-8) because, as PO
`
`admits, the parties in that case (none of which comprise Petitioner here) stipulated
`
`that the preamble should be considered a limitation. POR at 36. By contrast,
`
`Judge Payne determined that the preamble of claims 11-13 of the related ’325
`
`Patent (which is similar to claims 1, 4-5, and 12 in that it recites “an information
`
`management and synchronous communications system”) was not limiting because:
`
`“Neither party has identified a single aspect of the preamble that is necessary to
`
`define the scope of the claims, or is not already captured as a limitation in the body
`
`of the claims.” Exhibit 2017 at 4-5. Should the Board accept PO’s adoption of all
`
`prior judicial constructions, the proper way to resolve this inconsistency under the
`
`BRI is to adopt the broader construction, namely, that the preamble is non-limiting.
`
`In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“Absent claim language
`
`carrying a narrow meaning, the PTO should only limit the claim based on the
`
`specification or prosecution history when those sources expressly disclaim the
`
`broader definition.”).
`
`Judge Payne’s determination is also consistent with the rule that,
`
`“[g]enerally, the preamble does not limit the claims.” Allen Eng’g Corp. v. Bartell
`
`Indus., 299 F.3d 1336, 1346 (Fed. Cir. 2002). For example, “a preamble is not
`
`limiting where a patentee defines a structurally complete invention in the claim
`
`body and uses the preamble only to state a purpose or intended use for the
`
`4
`
`
`
`
`
`invention.” Catalina Mktg Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808
`
`(Fed. Cir. 2002) (internal quotations omitted). As Judge Payne determined with
`
`respect to claims 11-13 of the ’325 Patent, the bodies of claims 1, 4-5, and 12
`
`define a structurally complete invention. The preamble does not recite any
`
`structural components, and PO does not suggest otherwise. POR at 36-37. Nor
`
`does the preamble serve as the antecedent basis for any terms recited in the body of
`
`the claim. See Catalina, 289 F.3d at 808. Instead, the preamble merely sets forth
`
`the purpose (“information management and synchronous communication”) and
`
`intended use (“for generating and transmitting menus”) of the claimed invention.
`
`See Exhibit 1066, U.S. Bancorp v. Retirement Capital Access Mgmt Co.,
`
`CBM2013-00014, Paper 33, at 14-15 (P.T.A.B. August 22, 2014) (finding
`
`“computerized method” in preamble to be a statement of intended use and thus not
`
`a meaningful claim limitation for Section 101 analysis).
`
`Moreover, when (as here) a patent applicant does not rely on preamble
`
`language to distinguish over the prior art, the preamble is generally not limiting.
`
`Catalina, 289 F.3d at 808-09; MPEP § 2111.02. And, contrary to PO’s contention
`
`(POR at 37), the Examiner for the related ’850 Patent did not rely on the preamble
`
`to distinguish prior art. Instead, the Examiner stated:
`
`Each independent claims 20 and 40 are identified [sic] the uniquely
`distinct features “a sub-modifier menu stored on data storage device
`and displayable in a window of graphical user interface, and
`5
`
`
`
`
`
`application software for generating a second menu from first menu
`and transmitting second menu to a wireless handheld computing
`device or Web page.” [Exhibit 1035 at 7 (emphasis in original)].
`
`Because (1) the claim body defines a structurally complete invention, (2) the
`
`preamble merely recites the purpose and intended use of the invention, (3) there
`
`was no reliance on the preamble to distinguish prior art, and (4) the BRI requires
`
`adoption of the broader non-limiting construction adopted by PO, PO’s arguments
`
`compel the conclusion that the preamble is not a limitation. See MPEP § 2111.02;
`
`see also Exhibit 1066 at 14-15.
`
`2.
`
`PO’s preamble construction is contrary to the intrinsic record.
`
`Even if the preamble were limiting, PO’s proposed construction is not
`
`supported by the intrinsic evidence. The “for generating and transmitting menus”
`
`language in the preamble clearly sets forth an intended use for the claimed
`
`“information management and synchronous communications system.”
`
` PO
`
`proposes a construction that requires a distributed system including both a “central
`
`server” and “client devices.” POR at 34. Yet, nothing in the specification
`
`indicates that a “central server” or “client devices” are used to generate or transmit
`
`menus. PO’s construction would improperly exclude the preferred embodiment in
`
`which a “desktop PC” both generates menus and transmits them to handheld
`
`devices. Exhibit 1033 at 7:38-41 (“desktop PC” used to generate and transmit
`
`menus “in conformance with the preferred embodiment”) and 9:62-10:9 (user
`
`6
`
`
`
`
`
`selects “File>Download Database” on desktop PC to transmit menu to handheld
`
`device).
`
` PO’s Construction of “Central Processing Unit” Is Incorrect
`
`B.
`The claim term “central processing unit” in claims 1 and 4 should be
`
`afforded its plain and ordinary meaning, i.e., a “microprocessor.”
`
` The
`
`specification consistently uses the term in accordance with its plain meaning. See,
`
`e.g., Exhibit 1033 at 6:52-54 (“central processing unit (‘CPU’), e.g. a Pentium
`
`microprocessor”); 6:63-65. No intrinsic evidence offers any alternative definition
`
`of this common technical term. Accordingly, the BRI of “central processing unit”
`
`is a “microprocessor.” In re Am. Acad., 367 F.3d at 1364.
`
`PO’s construction (“central server”) is inconsistent with the plain meaning
`
`and contrary to the specification. While PO contends that the term “cannot be
`
`construed as a broadly generic CPU” because this “would conflict with usage in
`
`the specification” (POR at 37), PO cites no intrinsic evidence showing an intent to
`
`redefine the term. Nor can it, as the specification consistently uses the term in
`
`accordance with its plain meaning by repeatedly equating it with a microprocessor.
`
`Exhibit 1033 at 6:52-54, 63-65. PO’s citation to Judge Everingham provides no
`
`support, as PO cites construction of a different claim term. POR at 37 (citing
`
`Exhibit 2014 at 8) (discussing “information management and synchronous
`
`communications system”). PO’s construction should, therefore, be rejected.
`
`7
`
`
`
`
`
`III. CLAIMS 1-16 ARE NOT PATENTABLE UNDER SECTION 101
`The Board correctly determined that claims 1-16 are drawn to the patent-
`
`ineligible abstract idea of generating and transmitting menus. Thus, the question
`
`remaining under the Mayo/Alice test is whether the claims contain an “inventive
`
`concept” sufficient to “transform” the abstract idea into a patent-eligible
`
`application of that concept. They do not, as explained below.
`
`A. Alice Did Not Merge Section 101 with Sections 102 and 103
`PO’s argument that the “inventive concept” prong of the Mayo/Alice test is
`
`about determining “novelty and nonobviousness” finds no basis in Alice. The sole
`
`alleged basis for PO’s argument is the following: “‘[A]pplication[s]’ of such
`
`concepts ‘to a new and useful end,’ we have said, remain eligible for patent
`
`protection.” Alice, 134 S. Ct. at 2354 (quoting Gottschalk v. Benson, 409 U.S. 63,
`
`67 (1972)). The use of the phrase “new and useful” in Alice and Benson is nothing
`
`remarkable: that phrase comes straight out of § 101 itself. Thus, PO’s repeated
`
`attempts to equate this phrase with “novelty and nonobviousness”—thereby
`
`merging § 101 with §§ 102 and 103—are misplaced. See, e.g., POR at 2-3, 22, 27,
`
`42-43, 55. Indeed, Mayo explicitly states that § 101 cannot be merged with §§
`
`102 and 103. Mayo v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1303-04 (2012)
`
`(“declin[ing] the Government’s invitation to substitute §§ 102, 103, and 112
`
`inquiries for the better established inquiry under § 101”).
`
`8
`
`
`
`
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`Instead, the “inventive concept” prong asks whether the “additional
`
`elements” of the claim, beyond the abstract idea, provide an inventive concept.
`
`Alice, 134 S. Ct. at 2355. “[M]erely requiring generic computer implementation
`
`fails to transform [an] abstract idea into a patent-eligible invention.” Id. at 2352.
`
`Even if Alice did—and it does not—endorse a § 103 obviousness analysis as
`
`part of the § 101 analysis, the claims are not novel and nonobvious, as determined
`
`by the jury for claims 1 and 3 in the Menusoft action. Exhibit 1006 at 2. In
`
`addition, the Patent Office required amendment of claims in related applications to
`
`include additional requirements not found in claims 1-16. See Exhibit 1009, ’077
`
`Patent Notice of Allowability at 5, 11, 14, 17. Finally, to the extent secondary
`
`considerations are even relevant to patent eligibility under § 101 (POR at 19-22),
`
`PO failed to establish the required nexus between those secondary considerations
`
`and the limitations of claims 1-16, particularly in view of PO’s erroneous claim
`
`constructions and the Patent Office’s prior determinations.
`
`The Claims Do Not Include an Inventive Concept
`
`B.
`Claims 1-16 lack an “inventive concept” because they merely broadly recite
`
`the abstract idea of menu generation and nothing more. PO incorrectly contends
`
`that the claims include meaningful limitations that the Board overlooked, but PO
`
`relies primarily on limitations that are irrelevant to patent eligibility because they
`
`are not in the claims at all. See, e.g., Accenture Global Servs., GmbH v. Guidewire
`
`9
`
`
`
`
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`Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013). For instance, PO repeatedly
`
`contends that the claims are directed to a “continuously synchronous” system that
`
`“maintains synchronization” and “maintains equilibrium” between the claimed
`
`devices, but there are no such limitations in the claims or even in PO’s proposed
`
`constructions, including the preamble. POR at 9, 11, 17, 26, 27, 55, 62. Moreover,
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`even assuming the preamble is limiting, it does not recite any meaningful
`
`limitation that would provide the necessary “inventive concept.” The preamble
`
`phrase “information management and synchronous communication system” is not
`
`linked to any of the other claim limitations and fails to refer to any specific
`
`computer system, and thus it is, at best, merely a generic reference to conventional
`
`computer technology. As stated in Alice, “the mere recitation of a generic
`
`computer cannot transform a patent-ineligible abstract idea into a patent-eligible
`
`invention.” 134 S. Ct. at 2358.
`
`Likewise, PO contends that the claims are limited to customized display
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`layouts for various sized handheld devices, pointing to disclosures in the
`
`specification. POR at 15-17, 27, 49. However, unlike the claims of the ’077
`
`patent, claims 1-16 do not require customized layouts. One limitation that PO
`
`relies on that actually appears in any of the claims is “wireless handheld computing
`
`device.” POR at 10, 54, 62, 73. But as PO argued, such a device need not be
`
`present to practice the claims:
`
`10
`
`
`
`
`
`Judge Everingham’s construction of claim 1 [of the ’850 Patent]
`indisputably does not require a wireless handheld computing device
`or any third-party action: “The court construes this term . . . to mean
`‘application software, which is capable of transmitting to both
`wireless handheld computing devices and Web pages . . . .’” [Exhibit
`1068 at 4, Ameranth, Inc. v. Fandango, Inc., No. 3:12-CV-1651, Dkt.
`No. 23 (S.D. Cal. Nov. 8, 2012) (emphasis in original)].
`
`PO’s arguments regarding the “manual modification” limitations are also
`
`misguided. POR at 69. “Manual modification” of a menu is a classic example of a
`
`manual task that can be performed with a pen and paper, which cannot be rendered
`
`patent-eligible merely by performing it with a computer. See Bancorp, 687 F.3d at
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`1279 (finding claims patent-ineligible where recited computer “simply performs
`
`more efficiently what could otherwise be accomplished manually”). These
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`“manual modification” limitations are directed to the abstract idea of editing, and
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`there are no limitations in any claim of the ’733 patent directed toward any specific
`
`hardware or software for accomplishing “manual modification”/editing that would
`
`transform this abstract idea into patent-eligible subject matter. See Alice, 134 S.
`
`Ct. at 2357 (“‘Simply appending conventional steps, specified at a high level of
`
`generality,’ was not ‘enough’ to ‘supply an inventive concept.’”) (emphasis in
`
`original and internal citations omitted). Nor was “manual modification” a novel
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`idea. Technology for “manually modifying”/editing on a handheld computer was
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`old and well-known in the art at the time of the ’733 patent. See, e.g., Exhibit
`11
`
`
`
`
`
`1071, U.S. Patent No. 4,972,496 (issued nearly 20 years prior to the ’733 patent)
`
`at Figs. 1-1, 11A-E, and 12A-G and accompanying text.
`
`A recent post-Alice case is instructive here. In DietGoal Innovations LLC v.
`
`Bravo Media LLC, the claims were directed to computerized meal planning, and
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`recited, for example, “a User Interface,” “a Database of food objects organizable
`
`into meals,” and “Picture Menus.” No. 13-cv-8391, 2014 U.S. Dist. LEXIS 92484,
`
`at *4-5 (S.D.N.Y. July 8, 2014). Applying Alice and Bilski, the court found the
`
`claims were directed to the “abstract concept of selecting meals for the day,
`
`according to one’s particular dietary goals and food preferences” (id. at *30-31),
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`which is very similar to the abstract idea at the heart of PO’s claims—generating
`
`menus. The court found that the claimed concept of meal-planning is at least as
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`“long prevalent” “as the economic practices of risk-hedging (invalidated in Bilski)
`
`and intermediated settlement (invalidated in Alice).” Id. at *31. This same
`
`reasoning applies to generating menus. The ’733 Patent “merely ‘provides a new
`
`and presumably better method’” for generating menus. Id. at *34 (quoting Parker
`
`v. Flook, 437 U.S. 584, 594 (1978)). “This is not the kind of ‘discover[y]’ that §
`
`101 was designed to protect.” Id. (citing Flook, 437 U.S. at 593; Cybersource
`
`Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011)). Indeed, the
`
`specification confirms the lack of an inventive concept. As the Board recognized:
`
`12
`
`
`
`
`
`The specification describes the hardware used in the preferred
`embodiment as “typical” and the software as something that could be
`written in any commonly used computer language” with programming
`steps that are “commonly known.” Ex. 1033, 6:47-7:3, 12:61-65. On
`this record, we are persuaded that the computer-related limitations are
`routine and conventional uses of a computer. See Mayo, 132 S. Ct. at
`1298. Thus, the use of a computer in the challenged claims is not a
`meaningful limitation that could salvage these claims and make them
`patent eligible. [ID at 28 (emphasis added)].
`
`Furthermore, PO’s argument that “such programming is not trivial” (POR at
`
`10) is belied by the specification, which expressly states: “[t]he software
`
`applications for performing the functions falling within the described invention can
`
`be written in any commonly used computer language. The discrete programming
`
`steps are commonly known and thus programming details are not necessary . . . .”
`
`Exhibit 1033 at 12:60-65 (emphases added). The specification does not disclose
`
`any algorithm, flowchart, or diagram identifying special programming steps. Even
`
`the function of synchronizing data on a wireless handheld device relied on by PO
`
`as an allegedly inventive feature (see, e.g., POR at 54) is described as a “built-in”
`
`feature of the Windows CE operating system. Exhibit 1033 at 12:15-20. PO’s
`
`argument that Windows CE is unrelated to synchronization between a handheld
`
`device and a PC (POR at 67-68) is belied by Exhibit 1072, “Microsoft Introduces
`
`Palm PC, PC Companion Powered by Windows CE 2.0” at 1. Additionally, PO’s
`
`13
`
`
`
`
`
`argument that wireless synchronization between a handheld wireless device and a
`
`desktop computer was not known in the art (POR at 63) is wrong. See Exhibit
`
`1073, Euro. Pat. Pub. No. EP 0917077A2 at Abstract (discussing use of wireless
`
`communication paths such as cellular networks for synchronizing data files
`
`between a PC and a PDA); Exhibit 1074, U.S. Patent No. 5,974,238 at 3:26-52
`
`(discussing wireless synchronization between handheld and host computers).
`
`Regardless, none of the claims of the ’733 patent recite wireless synchronization.
`
`Thus, each of PO’s claims “does no more than require a generic computer to
`
`perform generic computer functions.” Alice, 134 S. Ct. at 2359; see also Exhibit
`
`1066 at 18 (canceling claims under Section 101 because “the use of a computer in
`
`a generalized fashion to increase efficiency does not meaningfully limit an
`
`otherwise abstract claim”). Additionally, when viewed as a whole, the computer
`
`components of PO’s claims do not add anything patentable that is not already
`
`present when the elements are considered separately. Claim 1 does not, for
`
`example, purport to improve the functioning of the computer itself or effect an
`
`improvement in any other technology or technical field. See, e.g., Alice, 134 S. Ct.
`
`at 2359. Indeed, the Board has already stated that it is not persuaded “that the
`
`claimed subject matter as a whole solves a technical problem using a technical
`
`solution.” ID at 16.
`
`14
`
`
`
`
`
`C. The Dependent Claims Do Not Add Any Meaningful Limitations
`PO contends the dependent claims add further meaningful limitations. For
`
`instance, PO tries to rely upon elements such as “selecting a printer from the GUI
`
`on a mobile device” (which PO alleges is found in claims 2 and 10), “linking a
`
`particular order to a particular customer at a table” (which PO alleges is found in
`
`claims 3 and 11), and “particular kinds of manual modification” (which PO alleges
`
`is found in claims 6-9 and 13-16) to establish patent eligibility. POR at 75.
`
`However, such elements are, at most, insignificant extra-solution activity that
`
`cannot save subject matter from patent ineligibility. Flook, 437 U.S. at 590.
`
`Moreover, “linking a particular order to a particular customer at a table” and
`
`“manual modification” are classic examples of manual tasks that cannot be
`
`rendered patent-eligible merely by performing them with a computer. See
`
`Bancorp, 687 F.3d at 1279.
`
`IV. CONCLUSION
`For the reasons set forth above and in the Petition, claims 1-16 of the ’733
`
`Patent are unpatentable under 35 U.S.C. § 101 and should be cancelled.
`
`
`
`
`
`15
`
`
`
`
`
`Dated: September 18, 2014
`
`Respectfully submitted,
`
`/s/ Richard S. Zembek
`Richard S. Zembek
`Reg. No. 43,306
`FULBRIGHT & JAWORSKI L.L.P.
`1301 McKinney, Suite 5100
`Houston, Texas 77010
`Tel: 713-651-5151
`Fax: 713-651-5246
`richard.zembek@nortonrosefulbright.com
`
`Gilbert A. Greene
`Reg. No. 48,366
`FULBRIGHT & JAWORSKI LLP
`98 San Jacinto Boulevard, Suite 1100
`Austin, TX 78701
`Tel: 512.474.5201
`Fax: 512.536.4598
`bert.greene@nortonrosefulbright.com
`
`Attorneys for Petitioner
`
`
`
`
`16
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that on September 18, 2014, the foregoing Petitioner’s
`
`Reply Brief was served was served by electronic mail upon the following lead and
`
`backup counsel of record for Patent Owner Ameranth, Inc.:
`
`John W. Osborne
`
`josborne@osborneipl.com
`
`Michael D. Fabiano
`
`mdfabiano@fabianolawfirm.com
`
`
`
`
`
`
`
`/s/ Richard S. Zembek
`Richard S. Zembek
`Reg. No. 43,306
`
`17
`
`
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