UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AGILYSYS, INC., ET AL.
`Petitioner
`
`v.
`
`AMERANTH, INC.
`Patent Owner
`
`____________
`
`Case CBM2014-00015
`Patent No. 6,384,850
`____________
`
`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
`
`Submitted Electronically via the Patent Review Processing System
`
`PATENT OWNER AMERANTH’S RESPONSE
`
`

`

`TABLE OF CONTENTS
`
`CBM2014-00015
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION............................................................................................ 1
`
`BACKGROUND............................................................................................ 12
`
`A. Claims 1-11 Of The ‘850 Patent Are Directed To A New And
`Useful Solution To A Previously Unrecognized Problem......................... 13
`
`1. The Practical And Technological Nature Of The ‘850 Patent.............. 13
`
`2. Many In The Relevant Industry Have Found Ameranth’s Claimed
`Inventions To Be Novel and Innovative............................................... 18
`
`3. The Petition Fails To Provide Any Credible Basis For Its
`Contention That The Claims Are Not Novel And Unobvious
`Over The Prior Art ............................................................................... 21
`
`III. CLAIM CONSTRUCTION ........................................................................... 28
`
`A. The Petition Mischaracterized The Actual Claims And The Board
`Erroneously Adopted Petitioner’s Characterizations................................. 29
`
`B. Proposed Constructions............................................................................. 32
`
`IV. CLAIMS 1-11 ARE CLEARLY PATENT ELIGIBLE UNDER
`35 U.S.C. §101 ............................................................................................... 44
`
`A. Controlling Authority Of The Supreme Court Confers Patent
`Eligibility On Computer Applications Directed To New And
`Useful Results............................................................................................ 44
`
`B. Neither Petitioner Nor The Board Has Established That Claims
`1-11 Of The ‘850 Patent Are Ineligible Under 35 U.S.C. §101 ................ 45
`
`1. The Petition Mischaracterized, And The Board Misunderstood,
`The Actual Claimed Subject Matter And Failed To Consider
`The Claims As A Whole ...................................................................... 50
`
`2. The Petition And The Board’s Decision Failed To Consider
`The Novelty And Usefulness Of The Claimed Invention As
`Required By Alice v. CLS..................................................................... 56
`
`ii
`
`

`

`CBM2014-00015
`
`3. The Board’s “Computer Languages” And “Common
`Programming” Based Conclusions Were Incorrect.............................. 59
`
`4. The ‘850 Patent Claims Fall Squarely Within The Bounds
`Of Patent Eligible Subject Matter......................................................... 67
`
`V.
`
`CONCLUSION .............................................................................................. 80
`
`iii
`
`

`

`TABLE OF AUTHORITIES
`
`Cases
`
`CBM2014-00015
`
`Page
`
`ACTV, Inc. v. Walt Disney Co.
`346 F.3d 1082 (Fed. Cir. 2003) ...................................................................... 43
`
`Alice Corp. v. CLS Bank Int’l
`No. 13-298, Slip op. (U.S. June 19, 2014) .....................................Passim
`
`Ameranth v. Menusoft et al.
`No. 2:07-cv-271 (E.D. Texas) ......................................................................6, 34
`
`Apple v. SightSound
`CBM2013-00019, Paper No. 17 ........................................................... 29, 69-70
`
`Bilski v. Kappos
`130 S. Ct. 3218 (2010)..........................................................................44, 79, 80
`
`Catalina Mktg., Int’l v. Coolsavings.com
`289 F.3d 801 (Fed. Cir. 2002) ......................................................................8, 35
`
`CLS Bank Intl v. Alice Corp. Pty. Ltd.
`717 F.3d 1269 (Fed. Cir. 2013) ...................................................................... 44
`
`Continental Can Co. USA, Inc. v. Monsanto Co.
`948 F.2d 1264 (Fed. Cir. 1991) ....................................................................3, 18
`
`Diamond v. Diehr
`450 U.S. 175 (1981) .................................................................52, 61, 62, 63, 72
`
`Fonar Corp. v. General Elec. Co.
`107 F.3d 1543 (Fed. Cir. 1997) ...................................................................... 52
`
`Gottschalk v. Benson
`409 U.S. 63 (1972) .....................................................................................58, 79
`
`Heidelberger Druckmaschinen AG v. Hantscho Prods.
`21 F.3d 1068 (Fed. Cir. 1994).......................................................................... 4
`
`iv
`
`

`

`CBM2014-00015
`
`In re Alappat
`33 F.3d 1526 (Fed. Cir. 1994)...............................................................10
`
`In re Bilski
`545 F.3d 943 (Fed. Cir. 2008) ........................................................................ 79
`
`In re Skvorecz
`580 F.3d 1262 (Fed. Cir. 2009) ...................................................................... 29
`
`Inter-connect Planning Corp. v. Feil
`774 F.2d 1132 (Fed. Cir. 1985) ........................................................................ 3
`
`Mayo Coll. Svcs. v. Prometheus Labs., Inc.
`132 S. Ct. 1289 (2012)................................................................3, 30, 45, 46, 49
`
`Medical Inst. & Diag. Corp. v. Elekta AB
`344 F.3d 1205 (Fed. Cir. 2003) ...................................................................... 52
`
`Phillips v. AWH Corp.
`415 F.3d 130 (Fed. Cir. 2005) ........................................................................ 42
`
`Pitney Bowes, Inc. v. Hewlett-Packard Co.
`182 F.3d 1298 (Fed. Cir. 1999) ...................................................................... 35
`
`Poly-America, LP v. GSE Lining Tech., Inc.
`383 F.3d 1303 (Fed. Cir. 2004) ........................................................................ 8
`
`Research Corp. Tech., Inc. v. Microsoft Corp.
`627 F.3d 859 (Fed. Cir. 2010) ........................................................................ 51
`
`Rotatable Technologies LLC v. Motorola Mobility LLC et al.
`No. 2014-1042 (Fed. Cir. June 27, 2014) .....................................................8, 35
`
`S3 Inc. v. nVIDIA Corp.
`259 F.3d 1364 (Fed. Cir. 2001) ..........................................................53
`
`SAP, Inc. v. Pi-Net Intl. Inc.
`CBM2013-00013, Paper No. 15 .........................................................78
`
`SiRF Tech., Inc. v. ITC
`601 F.3d 1319 (Fed. Cir. 2010) ..................................................... 72, 73
`
`v
`
`

`

`State St. Bank & Trust Co. v. Signature Fin. Group
`149 F.3d 1368 (Fed. Cir. 1998) ....................................................................6, 50
`
`Ultramercial, LLC v. Hulu, LLC
`722 F.3d 1335 (Fed. Cir. 2013) .............................. 10, 70, 71, 73, 77, 79
`
`CBM2014-00015
`
`Other
`
`37 C.F.R. §42.220(a) .................................................................................................. 1
`
`35 U.S.C. §101...................................................................................................Passim
`
`35 U.S.C. §112.......................................................................................................... 53
`
`Harvard Bus. Sch. Press (2005) ................................................................................ 13
`
`MPEP 2106(II)(B)(1)(b)........................................................................................... 79
`
`PTO §101 Examination Guidelines (June 25, 2014) ............................................47, 49
`
`vi
`
`

`

`PATENT OWNER’S LIST OF EXHIBITS
`
`CBM2014-00015
`
`Exhibit No.
`
`Description
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`Memorandum of Points and Authorities in Support of
`Plaintiff Ameranth, Inc.’s Motion to Disqualify Counsel
`(Fulbright Jaworski)
`
`Memorandum of Points and Authorities in Support of
`Plaintiff Ameranth, Inc.’s Motion to Disqualify Counsel
`(Akin Gump)
`“Domino's Pizza First in Industry to Offer Mobile
`Ordering” (September 27, 2007)
`
`http://www.dailymotion.com/video/xr7y4b_tim-cook-
`calls-patent-wars-pain-in-the-ass_tech
`
`157 Cong. Rec. S1053 (Mar. 1, 2011)
`
`157 Cong. Rec. S5441 (Sept. 8, 2011)
`
`“Software Patent Reform Just Died in the House,”
`Washington Post, Nov. 20, 2013
`
`Nov. 18, 2013 Letter from Victoria A. Espinel, President
`and CEO of the Business Software Alliance
`
`http://www.bsa.org/advocacy/intellectual-property-and-
`innovation
`
`http://www.bsa.org/~/media/Files/Policy/Patents/JointCB
`MLetter091913
`
`“Ameranth Signs Major New Patent License with PAR
`Technology Corporation for its Patented 21st Century
`Communications Web/Wireless Synchronization
`Inventions” (Jan. 28, 2013)
`
`vii
`
`

`

`2012
`
`2013
`
`2014
`
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`2020
`
`2021
`
`2022
`
`2023
`
`2024
`
`CBM2014-00015
`
`“Ameranth Signs Major New Patent License with
`Snapfinger, Inc. for its Patented 21st Century
`Communications Web/Wireless Synchronization
`Inventions” (Jan. 24, 2012)
`
`Secondary Factors Evidence and Nexus Charts Submitted
`in App. Ser. No. 11/112,990 (U.S. Pat. No. 8,146,077)
`
`April 21, 2010 Claim Construction Order (Judge
`Everingham)
`
`September 9, 2010 Claim Construction Order (Judge
`Everingham)
`
`September 13, 2010 Claim Construction Order (Judge
`Everingham)
`August 10, 2012 Claim Construction Order (Judge Payne)
`
`July 5, 2013 Order re: Motions to Dismiss (Judge
`Sammartino)
`
`157 Cong. Rec. S1379 (Mar. 8, 2011) (Statement of
`Senator Kyl)
`
`157 Cong. Rec. S5431 (Sept. 8, 2011) (Statement of
`Senator Kyl)
`
`“Ameranth Wireless Awarded Computerworld Honors 21st
`Century Achievement Laureate Medal” (April 16, 2001)
`
`Letter from Computerworld Honors Program (July 5,
`2001)
`
`“Wireless Finds a Welcome in Hospitality,” Business
`Week (Feb. 9, 2004)
`
`Steve Glen (VP of Marriott) Letter to K. McNally (Feb. 3,
`2000)
`
`viii
`
`

`

`2025
`
`2026
`
`2027
`
`2028
`
`2029
`
`2030
`
`2031
`
`2032
`
`2033
`
`CBM2014-00015
`
`Computerworld Honors Archive
`
`Ameranth Receives Moby Award For Wireless Mobile
`Computer Application (Sept. 13, 2000)
`
`“Food.com and Ameranth Technology Announce
`Partnership to Develop Link From Food.com site With
`Ameranth's 21st Century Restaurant System” (July 15,
`1999)
`
`Internal Food.com Memo between its Executive Team
`(Sept. 13, 1999)
`
`Examiner Interview Summary in App. Ser. No.
`11/112,990, October 14, 2011
`
`Web Characterization Terminology & Definitions at §2.3,
`May 24, 1999, http://www.w3.org/1999/05/WCA-terms
`
`SFA v. 1-800-Flowers.com, Case No. 6:09-cv-340-LED
`(E.D. Tex. April 11, 2013)
`
`https://developer.apple.com/library/ios/documentation/IDE
`s/Conceptual/iOS_Simulator_Guide/iOS_Simulator_Guide
`.pdf
`
`Kilopass Tech v. Sidense Corp., No. 2013-1193 (Fed. Cir.
`Dec. 26, 2013)
`
`2034
`
`Not Used
`
`ix
`
`

`

`2035
`
`2036
`
`2037
`
`2038
`
`CBM2014-00015
`
`Ameranth Technology Systems Inc. Announces
`Investment by Microsoft, Business Wire, June 19, 2000
`
`Complaint for Determination of Priority of Invention
`Among Interfering Patents Under 35 U.S.C. §291 (Pre-
`AIA), Case No. 3:14-cv-01303-DMS-WVG (S.D. Cal.)
`
`Answer of Ameranth, Inc. to Complaint for Determination
`of Priority; Counterclaims, Case No. 3:14-cv-01303-DMS-
`WVG (S.D. Cal.)
`
`IPDEV Reply to Counterclaims of Ameranth, Case No.
`3:14-cv-01303-DMS-WVG (S.D. Cal.)
`
`x
`
`

`

`CBM2014-00015
`
`Pursuant to the Board’s Order–Conduct of the Proceeding (Paper No. 24),
`
`entered April 16, 2014, and 37 C.F.R. §42.220(a) and the Stipulation to Amend
`
`Trial Schedule, filed April 28, 2014 (Paper No. 25), Patent Owner, Ameranth,
`
`Inc. (“Ameranth”), submits this Response in opposition to the Petition for
`
`Covered Business Method (“CBM”) Review (“Petition,” “Pet.” or “Am.
`
`(‘Amended’) Petition”) of U.S. Patent No. 6,384,850 (“’850 patent”) and the
`
`Board’s Decision–Institution of Covered Business Method Review (Paper No.
`
`20) (“Inst. Dec.”) with regard to the single aspect of the Petition (i.e., 35 U.S.C.
`
`§101 eligibility of claims 1-11) which was adverse to Patent Owner.
`
`I.
`
`INTRODUCTION
`In its Institution Decision regarding the ‘850 patent, the Board denied all of the
`
`Petitioner's invalidity/ineligibility grounds as to claims 12-16, and all grounds as to
`
`claims 1-11 except §101 eligibility. Thus the sole remaining issue in this Proceeding
`
`is §101 eligibility of claims 1-11. The Petition’s allegation of §101 ineligibility,
`
`however, is simply incorrect and cannot stand up to full scrutiny–when the `850
`
`claims are fully and properly construed and then considered as a person of skill in the
`art would have understood the claims at the time of the invention.1
`That Ameranth's inventors (via their patent specification/drawings and claims)
`
`defined and claimed numerous patentable inventions has been broadly confirmed by
`
`the Board, including 5 additional claims in the `325 patent (CBM2014-00016) and all
`
`18 claims in the `077 patent (CBM2014-00014). Importantly, `850 claims 12-16 were
`
`1 Petitioner conclusorily alleged that “[c]laims 1-11 cover nothing more than the
`abstract idea of generating menus” (Am. Pet. at 61) which was adopted by the Board
`without full claim construction and scrutiny of the actual claimed subject matter.
`1
`
`

`

`CBM2014-00015
`
`confirmed by the Board against all of the alleged grounds for unpatentability,
`
`including §101. Even more importantly, independent claims 1 and 9 of the `077
`
`patent (which are structurally similar to independent menu claim 1 of the `850 patent)
`
`were also confirmed to be patentable by the Board:
`We similarly are persuaded that the invention of claims 1 and 9 ties
`the alleged abstract idea of those claims, i.e., generating menus, to a
`specific computer-implemented system programmed by software to
`perform specialized functions. For example, the system is enabled to
`synchronize, in real time, information between a programmed
`handheld menu configuration and a master menu file structure
`stored on a central processing unit.
`(CBM2014-00014, Paper No. 19 at 39) (emphasis added to show features which are,
`
`in fact, also present in `850 claims 1-11, as demonstrated below). Consequently, the
`
`issue remaining to be decided in this proceeding is whether the variant of the
`
`disclosed “menu synchronization” invention as embodied in claims 1-11 of the ‘850
`
`patent includes limitations similar or equal to limitations of the `077 menu claims (1,
`
`9) and/or to allowed ‘850 claims (12-16) so as to also afford §101 patent eligibility
`
`status just as the Board correctly concluded that `077 claims 1 and 9 are patent
`
`eligible. With a full and correct construction of independent claim 1, it is clear that
`
``850 claims 1-11 are patentable eligible as well.
`
`In light of the Supreme Court’s new Alice v. CLS ruling, novelty and non-
`
`obviousness of the invention are key inquiries as to the patent eligibility of
`
`computerized claims. This is logical because a fundamental question is whether the
`inventors really invented something new and unconventional.2 Alice v. CLS requires
`
`2 “[A]n invention is not rendered ineligible for patent simply because it involves
`an abstract concept. ‘[A]pplication[s]’ of such concepts “’to a new and useful
`2
`
`

`

`CBM2014-00015
`
`that this determination must be made from the vantage point of a POSA at the time of
`
`the invention and that secondary, contemporaneous factors and evidence in the record
`
`as to how the marketplace viewed and reacted to the invention at the time of the
`invention must be considered.3 As recognized repeatedly by the Federal Circuit,
`hindsight is inherently difficult and prone to distortion, due to the passage of time,
`
`especially when dealing with patents such as the ‘850, conceived and invented more
`
`than 15 years ago. It is difficult to remember and appreciate, in 2014, that the very
`
`concept of smart phones being ubiquitous and equipped with today's almost
`
`unimaginable power, connectivity and functionality was almost inconceivable to all
`
`but the true visionaries of the late 1990's including Ameranth's inventors.
`
`Consideration of actual contemporaneous evidence showing what was known at the
`time of the invention, not a latter-day view of what exists now, is crucial.4
`
`end,’” . . . remain eligible for patent protection.” Alice Corp. v. CLS Bank Int’l,
`No. 13-298, Slip op. at 6, 11 (U.S. June 19, 2014) (“we must examine the
`elements of the claim to determine whether it contains an ‘inventive concept’
`sufficient to ‘transform’ the claimed abstract idea into a patent-eligible
`application); see also Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132
`S. Ct. 1289, 1293-94 (2012).
`3 Alice v. CLS, Slip op. at 11, 15 (relying on Mayo’s holding of ineligibility because
`the “methods for determining metabolite levels were already ‘well known in the art’”
`and “previously known to the industry”).
`4 See, e.g., Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1273
`(Fed. Cir. 1991) ("The significance of a new structure is often better measured in the
`marketplace than in the courtroom.") (emphasis added); Inter-connect Planning
`Corp. v. Feil, 774 F.2d 1132, 1143 (Fed. Cir. 1985) ("Recognizing the difficulty of
`casting one's mind back to the state of technology at the time the invention was made,
`courts have long recognized the usefulness of evidence of the contemporaneous
`attitude toward the asserted invention. A retrospective view of the invention is best
`3
`
`

`

`CBM2014-00015
`
`As for the Petitioner companies’ allegations that Ameranth invented nothing
`
`and that `850 claims 1-11 are merely for “generating menus,” such posturing from
`
`this large group of infringers is not credible in view of the fact, as shown below, that
`
`they have all adopted Ameranth's inventions (See, e.g., the Apple IOS Simulator
`
`screen shot from Exhibit 2032 (at p. 5), which, when synchronously combined with
`
`the other Petitioner companies' infringing systems, is actually an implementation of
``850 claim 10, see below5), many have praised those inventions, and many of the
`Petitioner companies either licensed or sought to license the patents, or sought to buy
`Ameranth to secure exclusive rights to the very same inventions they now criticize.6
`
`gleaned from those who were there at the time.") (emphasis added).
`5 This Apple IOS Simulator figure from Exhibit 2032 conclusively eviscerates all of
`the Petitioner’s allegations that Ameranth “invented nothing” and/or the claims are
`merely an “abstract idea.” This so-called “abstract idea” generated all of the “second
`menus” operating on/with the synchronized iPhones of the Petitioner companies'
`synchronous systems right now. Here, in Apple’s copied manifestation of `850 claim
`10, is Apple's own 2010 “menu generation” solution, with the “first menu” display
`(shown in the lower left) and the “second menu” display (shown clearly at the right
`side of the figure), and both being “displayed in the same window” at the same time,
`as was conceived and developed by Ameranth's visionary inventors and claimed in
`claim 10, more than a decade before the Petitioner companies later copied it by using
`it as part of their overall synchronous systems.
`6 Heidelberger Druckmaschinen AG v. Hantscho Prods., 21 F.3d 1068, 1072 (Fed.
`Cir. 1994) ("[T]he litigation argument that an innovation is really quite ordinary
`carries diminished weight when offered by those who had tried and failed to solve
`the same problem, and then promptly adopted the solution that they are now
`denigrating.") (emphasis added).
`
`4
`
`

`

`CBM2014-00015
`
`About iOS Simulator
`The iOS Simulator allows you to rapidly prototype and test builds of your app
`during the development process. Installed as part of the Xcode tools along with the
`iOS SDK, iOS Simulator runs on your Mac and behaves like a standard Mac app
`while simulating an iPhone or iPad environment. Think of the simulator as a
`preliminary testing tool to use before testing your app on an actual device.
`iOS Simulator enables you to simulate several iOS devices and several versions
`of the iOS operating system. Each simulated software version is considered its
`own simulation environment, independent of the others, with its own settings
`and files. These settings and files exist on every device you test within a
`simulation environment.
`
`Patent Owner submits that the Board did not reach a patent eligible conclusion
`
`for claims 1-11 at the preliminary stage of this proceeding due to a single, but critical,
`
`factor—incomplete claim construction due to the Petition’s mischaracterization of the
`
`claimed subject matter. At the preliminary stage, the Board construed only one term–
`
`Web page–by adopting Patent Owner’s proposal (taken from Judge Everingham’s
`construction)7 and rejecting Petitioner's expert's proposed construction. The Board
`
`7 In Ameranth v. Menusoft et al., No. 2:07-cv-271 (E.D. Texas).
`5
`
`

`

`CBM2014-00015
`
`stated: “All other terms in the challenged claims need no express construction at
`
`this time.” (Inst. Dec. at 8) (emphasis added). Patent Owner submits that now is “the
`
`time” for the entirety of claims 1-11 to be fully construed, since well-established case
`
`law requires claim construction prior to any proper §101 analysis. “[W]hether the ...
`
`patent is invalid for failure to claim statutory subject matter under § 101[ ] is a matter
`of both claim construction and statutory construction.”8 When claims 1-11 are fully
`and properly construed and considered as a whole, as they now must be, Patent
`
`Owner asserts that the only correct result must be that these claims are also patent
`
`eligible, just as the Board concluded that claims 12-16 are.
`
`The need for a full claim construction is especially imperative with regard to
`
`these claims because, among many other reasons, the preamble clearly is a limitation
`
`and its inclusion in the proper construction dispositively compels a finding of patent
`
`eligibility. Yet the preamble was not construed or even considered by the Board in its
`
`Institution Ruling even though Patent Owner specifically requested that the district
`
`court Markman Rulings be adopted and applied in their entirety. Further, the
`
`dependent claims recite additional patent eligible application functionality which
`
`must be construed and considered including, inter alia the inventive “preview”
`
`functionality of `850 dependent claim 10 (which supports display size/view
`
`customization, which the Board found rendered the ‘077 claims patent eligible).
`
`The ‘850 invention is not an abstract idea about simply “generating menus” as
`
`the Petitioner wrongly alleges. First and foremost, it is a “synchronization” based
`
`8 State St. Bank & Trust Co. v. Signature Fin. Group, 149 F.3d 1368, 1370 (Fed. Cir.
`1998). Patent Office personnel must first determine the scope of a claim by
`thoroughly analyzing the language of the claim before determining if the claim
`complies with each statutory requirement for patentability. MPEP 2106 (II)(C).
`6
`
`

`

`CBM2014-00015
`
`systemic invention, with only some embodiments including “menu generation” and
`
`even then, only as a product of the overall synchronization invention. Claims 1-11
`
`include specific, meaningful, and substantive limitations, e.g., “using the GUI
`
`of said OS,” such GUI being used with the inventive application
`
`software/hardware and the claimed OS (stored on and accessed from the
`
`“central computing unit”), thus clearly implemented on specifically
`
`programmed computers–a synchronous system for generating and wirelessly
`
`transmitting menus for and with wireless handheld computing devices and Web
`
`pages–and do not merely cover the abstract idea of generating menus, as alleged
`
`in the Petition and incorrectly concluded by the Board. Patent Owner submits
`
`that the Board did not perform an analysis of all the pertinent elements of ‘850
`
`independent claim 1 individually under a proper, and reasonable, construction
`
`and did not perform an analysis of the claim as a whole, thus violating an
`
`express requirement of Alice v. CLS. See Slip op. at n.3 (“Because the approach
`
`we made explicit in Mayo considers all claim elements, both individually and in
`
`combination, it is consistent with the general rule that patent claims ‘must be
`considered as a whole.’”) (emphasis added).
`
`The ‘850 inventors carefully chose the title of their patent as “Information
`management and synchronous communications system with menu generation.”
`
`(emphasis added). Thus “menu generation” is secondary, even in those claims
`
`containing such functionality, yet the Petitioner parsed out only this secondary aspect,
`
`while entirely ignoring the critical “synchronous” aspects of the claims. Every
`
`Ameranth claim, in all of its issued patents, contains the inventive “synchronization”
`
`element. Yet Petitioner, and seemingly, at the preliminary stage at least, the Board
`
`7
`
`

`

`CBM2014-00015
`
`itself, completely read out this critical claim term, in reaching a conclusion that`850
`
`claims 1-11 were directed only to “generating menus.” This critical
`
`“synchronization” claim element is pervasively used throughout the specification, and
`
`in all claims and throughout the entire prosecution history; in fact, all of the issued
`
`patents’ Notices of Allowance depend in large part on the synchronization aspects.
`
`Under Federal Circuit authority, these facts and this reality mandates that the `850
`
`claim 1 preamble must be construed and is a limitation:
`The specification is replete with references to “selectively rotating,”
`underscoring the importance of the feature to the claimed invention. For
`example, the ’978 patent’s title, abstract, background of the invention,
`summary of the invention, description of the drawings, detailed description,
`and all independent claims recite “selectively rotating.”. . . Moreover, clear
`reliance on the preamble during prosecution to distinguish the claimed
`invention from the prior art transforms the preamble into a claim limitation.
`Rotatable Techs. v. Motorola Mobility LLC et al., No. 2014-1042 (Fed. Cir. June 27,
`2014) (citations omitted).9 Patent Owner submits that the aforementioned case law
`mandates that the `850 claim 1 preamble is a limitation (just as Judge Everingham
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`concluded in his Markman ruling and Petitioner’s lead counsel in this proceeding
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`agreed in that Markman proceeding), thus it must be construed, along with numerous
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`other key elements and terms which were ignored by the Board as discussed below.
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`9 See also Poly-America, LP v. GSE Lining Tech., Inc., 383 F.3d 1303, 1310 (Fed.
`Cir. 2004) (construing preamble as limiting where it disclosed a “fundamental
`characteristic of the claimed invention”); Catalina Mktg., Int’l v. Coolsavings.com,
`289 F.3d 801, 807-08 (Fed. Cir. 2002) (“[C]lear reliance on the preamble during
`prosecution to distinguish the claimed invention from the prior art transforms the
`preamble into a claim limitation because such reliance indicates use of the preamble
`to define, in part, the claimed invention.”).
`
`8
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`

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`CBM2014-00015
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`When the preamble is properly construed, as it must be, the entire perspective
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`regarding claim 1 is transformed from Petitioner’s misleading “menu generation” to
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`the correct view of the claim as “an information management and synchronous
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`communications system for generating and transmitting menus.” (emphasis added).
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`In addition to ignoring the “synchronous” aspect, Petitioner also entirely ignored the
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`“transmitting” functionality of the claim. Further, Ameranth's visionary inventors
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`recognized the underlying problem preventing synchronization, i.e., that in order to
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`have a “synchronous” system, there had to be a “single truth” in the form of a
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`central/master database or “first menu” and a way to establish and then maintain
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`synchronization and “equilibrium” between all the connected elements and between
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`“first” and “second” menus. This is very clear from the `850 abstract itself, and
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`throughout the specification and is perhaps best illustrated by the following
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`disclosure in the `850 specification:
`These challenges include building a menu using their existing database
`and transferring the menu onto handheld devices or Web pages that will
`interface with servers wirelessly or to restaurants/customers over the
`internet.
`‘850 col. 3:49-52 (emphasis added). “A menu” and “the menu” are the recited
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`“second menu” of `850 claim 1 and the “existing database” is or contains the “first
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`menu” and, in this disclosed restaurant example, is represented by the “existing POS
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`system/database” of the restaurant:
`The menu generation approach of the present invention is the first
`coherent solution available to accomplish these objectives easily and
`allows one development effort to produce both the handheld and Web
`page formats, link them with the existing POS systems, and thus
`provides a way to turn a complicated, time-consuming task into a simple
`process.
`
`9
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`

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`CBM2014-00015
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`Id. at 3:52-58. Thus, the `850 menu claims have nothing to do with “converting paper
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`menus” from or to anything. Rather, they synchronously convert the computerized
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`“first menu,” stored on a “standard PC” or other central server/database, to “second
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`menus” for display on “non PC standard” devices/displays, e.g., “wireless handheld
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`computing devices,” thus ensuring the data is consistent.
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`While the baseline components of all computerized menu generation
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`systems may begin with basic hardware (e.g., servers and network
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`communication components), only a specialized software system for
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`synchronously generating and wirelessly transmitting menus suitable for the
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`special constraints of a small handheld device and Web page implements the
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`complex functions recited by claims 1-11 of the ‘850 patent when specifically
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`programmed to do so, thereby generating new, useful, concrete, and tangible
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`results. See In re Alappat, 33 F.3d 1526, 1544 (Fed. Cir. 1994) (en banc). Such
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`programming is not trivial, and the unique functions and capabilities of the
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`hardware and application software combination necessary to perform the
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`specialized menu generation and transmission functions are significantly
`different from a “general purpose computer.”10 The claims are directed to a
`unique, novel, unconventional and specific synchronous menu generation and
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`transmission system that was not even remotely suggested by any prior art, and,
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`by definition, could not have been done previously without computers because
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`the claimed invention is itself the synchronous configuration of multi-tiered
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`10 “[A] programmed computer contains circuitry unique to that computer. That
`‘new machine’ could be claimed in terms of a complex array of hardware
`circuits, or more efficiently, in terms of the programming that facilities a unique
`function.” Ultramercial, 722 F.3d at 1352.
`10
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`CBM2014-00015
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`second menus for specialized display devices, i.e., handheld devices and Web
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`pages from multi-tiered first menus in the back office/central computer unit,
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`while wirelessly transmitting and maintaining systemic synchronization.
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`Just as the Board correctly concluded that `077 menu claims 1 and 9 were
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`patent eligible for reciting inventive concepts, the `850 menu claims (1-11) embody
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`the same concepts. However, a full and proper construction of the `850 menu claims
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`including the preamble of independent claim 1 is required to appreciate the inventive
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`concept embodied in these claims as a person of skill in the art would understand
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`them (e.g., as Food.com did at the time of the invention in 1999), and in fact as many
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`others have understood them, over more than a decade now, with more than 31 patent
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`licensees determining that their businesses required a license to this inventive
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`technology.
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`Patent Owner requests that the Board carefully review the Background
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`section below because it illuminates the events leading up to the conception of
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`Ameranth's invention, and then details how the marketplace reacted to the
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`introduction of its five award-winning products which embodied the claims.
`This inquiry is required by Alice v. CLS.
`
`For the reasons set forth below, the Board should terminate the review of
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`claims 1-11 of the '850 patent and render judgment that these claims are not
`directed to patent ineligible subject matter under 35 U.S.C. §101.11
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`11 Patent Owner does not waive, and incorporates herein, its arguments from its
`Preliminary Response for absence of standing by Petitioner including that claims 1-
`11 of the ‘850 patent are not directed to a financial product or service and that claims
`1-11 are directed to a technological invention which is novel and non-obvious over
`11
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`

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`CBM2014-00015
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`II.
`
`BACKGROUND
`This overview provides key information detailing the circumstances of the
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`recognition of the technical problems Ameranth’s inventors first identified and their
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`