Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 34
`Entered: December 31, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FANDANGO, LLC, OPENTABLE, INC.,
`APPLE INC., DOMINO’S PIZZA, INC.,
`AND DOMINO’S PIZZA, LLC,
`Petitioner
`
`v.
`
`AMERANTH, INC.,
`Patent Owner.
`____________
`
`Case CBM2014-00013
`Patent 6,982,733 B1
`____________
`
`and
`
`AGILYSYS, INC., ET AL.,
`Petitioner,
`v.
`AMERANTH, INC.,
`Patent Owner.
`____________
`
`Case CBM2014-00015
`Patent 6,384,850 B1
`Case CBM2014-00016
`Patent 6,871,325 B1
`____________
`
`Held: October 24, 2014
`____________
`
`
`
`

`

`Cases CBM2014-00013, CBM2014-00015, CBM2014-00016
`Patents 6,982,733 B1, 6,384,850 B1, 6,871,325 B1
`
`
`
`Before JAMESON LEE, MEREDITH C. PETRAVICK, and NEIL T.
`POWELL, Administrative Patent Judges.
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`
`RICHARD Z. ZEMBEK, ESQUIRE
`
`
`
`BERT GREENE, ESQUIRE
`
`
`
`Fulbright & Jaworkski
`
`
`
`98 San Jacinto Boulevard, Suite 1100
`
`
`
`Austin, Texas 87801-4255
`
`
`
`
`
`
`
`
`
`and
`
`MICHAEL D. FABIANO, ESQUIRE
`Fabiano Law Firm, P.C.
`12526 High Bluff Drive, Suite 300
`San Diego, California 92130
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`JOHN W. OSBORNE, ESQUIRE
`
`
`Osborne Law Firm, LLC
`
`
`33 Habitat Lane
`
`
`Courtlandt Manor, New York 10567
`
`
`
`
`
`
`
`
`
`The above-entitled matter came on for hearing on Friday, October 24,
`2014, commencing at 1:35 p.m., at the U.S. Patent and Trademark Office,
`600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`
`
`
`
`
`
`
`P R O C E E D I N G S
`
`
`
`
`
`- - - - -
`
` 2
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`27
`28
`29
`30
`
`31
`
`

`

`Cases CBM2014-00013, CBM2014-00015, CBM2014-00016
`Patents 6,982,733 B1, 6,384,850 B1, 6,871,325 B1
`
`
`JUDGE LEE: Please have a seat. Good afternoon. Welcome to
`
`the Board. Today we have a consolidated oral argument for three
`
`proceedings: CBM2014-00013, CBM2014-00015, and CBM2014-00016.
`
`We sent out a trial hearing order. Are there any questions as to
`
`which party goes first and how much time each party has? If you have any
`
`questions, please ask now.
`
`MR. ZEMBEK: No questions for Petitioner, Your Honor.
`
`JUDGE LEE: Thank you.
`
`MR. OSBORNE: No questions, Your Honor.
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`JUDGE LEE: Thank you. Because this is a consolidated hearing,
`
`11
`
`to the extent anything you say is applicable in any of the three underlying
`
`12
`
`cases, they will be usable by the Board in whichever case the issue appears.
`
`13
`
`I just wanted the parties to understand that as well.
`
`14
`
`With that, any time you're ready. Can I have lead counsel
`
`15
`
`introduce your party or your colleague, please, for both sides?
`
`16
`
`MR. ZEMBEK: Yes, Your Honor. My name is Richard Zembek
`
`17
`
`with Fulbright and Jaworski, and my partner, Bert Greene is here with me.
`
`18
`
`He's the designated back up counsel, and I'm the designated lead counsel for
`
`19
`
`Petitioner.
`
`20
`
`21
`
`JUDGE LEE: Thank you. For Patent Owner?
`
`MR. OSBORNE: John Osborne with Michael Fabiano. I'm lead
`
`22
`
`counsel. He is back up. We also have Keith McMally, who is a lead
`
`23
`
`inventor and president of my client, Ameranth.
`
`24
`
`25
`
`
`
`
`
`JUDGE LEE: All right. Thank you very much.
`
`MR. FABIANO: Good afternoon, Your Honor.
`
` 3
`
`

`

`Cases CBM2014-00013, CBM2014-00015, CBM2014-00016
`Patents 6,982,733 B1, 6,384,850 B1, 6,871,325 B1
`
`
`JUDGE LEE: Any time you're ready, Mr. Zembek, proceed.
`
`MR. ZEMBEK: May I approach, Your Honor?
`
`JUDGE LEE: Yes.
`
`MR. ZEMBEK: Your Honor, Mr. Greene and I will be dividing
`
`the argument. He will be beginning, and we would like to reserve 30
`
`minutes for rebuttal.
`
`JUDGE LEE: All right. That's fine.
`
`MR. ZEMBEK: Thank you.
`
`MR. GREENE: I would like to thank the Board for your time and
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`consideration today and throughout the pendency of these cases. I want to
`
`11
`
`begin today with a brief recap of how we got to this point and what brings us
`
`12
`
`here today, and that's what we see on slide 2 here. Last year, Petitioner filed
`
`13
`
`four CBM petitions for the '733 patent. That would be the '013 case. The
`
`14
`
`petition challenged Claims 1 through 16 under 35 USC Sections 101 and
`
`15
`
`112. As we see here, trial was instituted on Claims 1 through 16 under the
`
`16
`
`Section 101 grounds.
`
`17
`
`For the '854 patent, that would be the '015 case, the petition
`
`18
`
`challenged Claims 1 through 16 again under Sections 101 and 112. Trial
`
`19
`
`was instituted on Claims 1 through 11, which the Board described as the
`
`20
`
`claims directed to generating menus, and that was under Section 101.
`
`21
`
`Trial was not instituted on Claims 12 through 16, which the
`
`22
`
`institution decision described as the claims directed to application and data
`
`23
`
`synchronization.
`
`24
`
`For the '325 patent, that is the '016 case, the petition challenged
`
`25
`
`Claims 1 through 15 under 35 USC, again Sections 101 and 112. Trial was
`
`
`
`
`
` 4
`
`

`

`Cases CBM2014-00013, CBM2014-00015, CBM2014-00016
`Patents 6,982,733 B1, 6,384,850 B1, 6,871,325 B1
`
`instituted on Claims 1 through 10, again directed to generating menus under
`
`Section 101. Trial was not instituted on Claims 11 through 15 directed to
`
`application and data synchronization.
`
`There was a fourth petition filed against a fourth patent in this
`
`family, the '077 patent, and trial was not instituted as to any claims in that
`
`patent on any grounds, and the challenged grounds were again Sections 101
`
`and 112.
`
`As the Board knows, these patents are generally directed to the
`
`concept of generating menus. There are many different features and
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`embodiments and elements disclosed in the specifications of these patents,
`
`11
`
`which are effectively common specifications. They're almost identical,
`
`12
`
`although the '733 specification adds some additional material, but of course
`
`13
`
`not every feature described in the specification shows up in the claims of the
`
`14
`
`patents, which of course is not uncommon in the patent world, especially
`
`15
`
`when we have, as we do here, multiple patents that are -- come from the
`
`16
`
`same specification, and even within those patents, we have multiple different
`
`17
`
`groupings of claims.
`
`18
`
`Now, to save the instituted claims. Under Section 101, what the
`
`19
`
`Patent Owner invites the Board to do in its response is to read certain
`
`20
`
`features disclosed in the specification into the claims of course ignoring long
`
`21
`
`standing case law saying that is impermissible, so what we would like to do
`
`22
`
`at the outset here is focus the Board's attention on the actual claim language
`
`23
`
`of the instituted claims which will hopefully keep top of mind what actually
`
`24
`
`is in these claims when we are inevitably shown passages from the
`
`
`
`
`
` 5
`
`

`

`Cases CBM2014-00013, CBM2014-00015, CBM2014-00016
`Patents 6,982,733 B1, 6,384,850 B1, 6,871,325 B1
`
`specification today describing features that actually aren't described in the
`
`claims.
`
`So with that, as we see on slide 3 here, this is Claim 1 of the '733
`
`patent. It has seven elements, if you will, enumerated or demarcated A
`
`through G. These are recitations of generic computer structure, a central
`
`processing unit, a data storage device, an operating system, a first menu, a
`
`modifier menu, a sub-modifier menu and application software. It concludes
`
`with two wherein clauses, the second wherein clause at the very end there
`
`reciting manual modification of a menu.
`
`So moving to slide 4, this is Claim 1 of the '850.
`
`JUDGE LEE: I'm sorry, before you move on, can we go back to
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`slide 3, please?
`
`13
`
`14
`
`MR. GREENE: Sure.
`
`JUDGE LEE: Of all the elements that you colored red, what, if
`
`15
`
`anything, there reasonably can be -- can be deemed as having something to
`
`16
`
`do with synchronous communication?
`
`17
`
`MR. GREENE: Your Honor, it's the Petitioner's position that
`
`18
`
`none of them, that there is nothing in these instituted claims that you see in
`
`19
`
`Claim 1 here certainly that relates to synchronous communication.
`
`20
`
`JUDGE LEE: So are you saying whether it's the colored red
`
`21
`
`elements or anything else in the body of the claims, there's nothing there that
`
`22
`
`one could reasonably regard as having something to do with synchronous
`
`23
`
`communication?
`
`24
`
`MR. GREENE: Well, I guess it depends on how you define
`
`25
`
`synchronous communication, Your Honor. The way the Board construed
`
`
`
`
`
` 6
`
`

`

`Cases CBM2014-00013, CBM2014-00015, CBM2014-00016
`Patents 6,982,733 B1, 6,384,850 B1, 6,871,325 B1
`
`the term synchronized in the '077 institution decision is that synchronized
`
`was to I believe make, arise or exist at the same time, and so certainly I
`
`guess you could interpret that to say that if the same document exists in two
`
`places at the same time, then that document has been synchronized between
`
`those two places. It's a pretty basic I would say interpretation of what it
`
`means to be synchronized.
`
`JUDGE LEE: Well, if it just coexists by happenstance, that
`
`wouldn't be synchronization. You would have to make an effort to make
`
`sure that they actually correspond to each other. Then that would be
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`synchronized.
`
`11
`
`MR. GREENE: I think that's right. I think under the Board's, as I
`
`12
`
`said, construction under the BRI in the '077 decision, it says to marks to
`
`13
`
`exist at the same time, so I think that implies some sort of affirmative act.
`
`14
`
`JUDGE LEE: So hypothetically, if we adopt that, what, if
`
`15
`
`anything, in here would be encompassed by that?
`
`16
`
`MR. GREENE: I think applying that definition, one could say
`
`17
`
`that the idea of transmitting a second menu to a separate forum, meaning the
`
`18
`
`wireless handheld computing device, that under that very broad definition of
`
`19
`
`synchronized, I could certainly see how it would be argued that that fits
`
`20
`
`under that definition.
`
`21
`
`JUDGE LEE: I see. So but mere transmitting it to the other side
`
`22
`
`would constitute synchronization because you have a copy here, and I'm
`
`23
`
`sending it to another location, so the mere sending and the consequent
`
`24
`
`receiving thereof would constitute synchronization.
`
`
`
`
`
` 7
`
`

`

`Cases CBM2014-00013, CBM2014-00015, CBM2014-00016
`Patents 6,982,733 B1, 6,384,850 B1, 6,871,325 B1
`
`
`MR. GREENE: I think under that broad definition of
`
`synchronization, Your Honor, I think that would be correct. I think the
`
`relevance here though is that these patents describe different types of
`
`synchronization, some that are certainly much more complicated than that
`
`very basic concept of transmitting something from one place to another.
`
`JUDGE LEE: Well, that kind of makes sense because you have in
`
`the preamble, an information management and synchronous communication
`
`system. I'm just wondering where in the claim would we have anything
`
`relating to that, but by what you just said, it doesn't seem like anything is off
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`because transmitting and receiving is encompassed by the broad scope of
`
`11
`
`synchronous communication.
`
`12
`
`MR. GREENE: I think under that definition, under that very basic
`
`13
`
`long standing principle of sending something from one place to another, if
`
`14
`
`that's synchronization, then I think the claim certainly describes that,
`
`15
`
`although I would highlight that what element G isn't about is the actual
`
`16
`
`transmission.
`
`17
`
`What it recites is application software for generating and
`
`18
`
`transmitting, so this is a system claim that as described certainly isn't about
`
`19
`
`the actual act of transmission.
`
`20
`
`JUDGE LEE: Now, what if the term is not that broad, what if
`
`21
`
`synchronous communication is something narrower than sending and
`
`22
`
`receiving, then what do we have here? You have in the preamble that says
`
`23
`
`information management and synchronous communication system, and yet
`
`24
`
`none of the elements thereinafter has anything to do with that, so where does
`
`25
`
`that leave us?
`
`
`
`
`
` 8
`
`

`

`Cases CBM2014-00013, CBM2014-00015, CBM2014-00016
`Patents 6,982,733 B1, 6,384,850 B1, 6,871,325 B1
`
`
`MR. GREENE: Well, it doesn't leave us anywhere. It's a
`
`common situation for the preamble to be a nonlimiting element of the
`
`claims, and so if synchronous is giving a much more sophisticated meaning
`
`in other claims, frankly that is not in this claim, and so at that point the
`
`preamble really doesn't relate to the rest of the claim. It doesn't give life and
`
`meaning to the claim.
`
`JUDGE LEE: So you would just have us disregard it?
`
`MR. GREENE: Certainly, yes.
`
`JUDGE LEE: All right. Thank you.
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`MR. GREENE: Moving on to Claim 1 of the '850 patent, it's
`
`11
`
`identical to Claims 1 of the '733 patent that we just looked at, except that
`
`12
`
`that second wherein clause relating to manual modification is not present at
`
`13
`
`the end of this claim, but in all other respects, it's identical to Claim 1 of the
`
`14
`
`'733 patent.
`
`15
`
`This is Claim 1 of the '325 patent, again identical to Claim 1 of the
`
`16
`
`'733, and the '850 except as regards to that second wherein clause. The
`
`17
`
`second wherein clause of the '733 Claim 1 has been replaced by a new
`
`18
`
`second wherein clause that relates to the -- a predetermined type of ordering,
`
`19
`
`which certainly it would be our position that that would just be a field of use
`
`20
`
`type limitation drafted on to the end of these claims.
`
`21
`
`JUDGE LEE: Do these patents share essentially the same
`
`22
`
`specification?
`
`23
`
`MR. GREENE: They do. The '733 adds a little bit of extra
`
`24
`
`disclosure, but for the most part they're identical.
`
`
`
`
`
` 9
`
`

`

`Cases CBM2014-00013, CBM2014-00015, CBM2014-00016
`Patents 6,982,733 B1, 6,384,850 B1, 6,871,325 B1
`
`
`JUDGE LEE: Are you able to point us to anywhere in these
`
`disclosures something that would support a broadly construing synchronous
`
`communication so that it would be met by sending a copy of something and
`
`have that received at another location, and therefore the two places have the
`
`same document?
`
`MR. GREENE: I can't recite the specification disclosure as I
`
`stand here, Your Honor. The Board's rationale in the institution decision for
`
`the '077 was that the plain and ordinary meaning of synchronized, I think the
`
`Board even cited Webster's, it's where that definition came from, so to the
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`extent that definition or that term has that broad definition, that concept of
`
`11
`
`sending and receiving certainly is throughout the specification.
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`broad.
`
`18
`
`19
`
`20
`
`JUDGE LEE: So you don't disagree with that?
`
`MR. GREENE: With that construction?
`
`JUDGE LEE: Yes.
`
`MR. GREENE: I do not, Your Honor. Petitioner does not.
`
`JUDGE LEE: But there's no specific embodiment which is that
`
`MR. GREENE: Described in the specification?
`
`JUDGE LEE: Yes.
`
`MR. GREENE: Well, the specification certainly describes what's
`
`21
`
`happening in Claim 1 of these patents, which is just generating a menu that
`
`22
`
`can then be transmitted to a wireless handheld or a web page, so to the
`
`23
`
`extent these claims have support in the specification, and I think they do in
`
`24
`
`that regard, that broad regard, if they're taken at face value like that, then
`
`25
`
`that's in the specification.
`
`
`
`
`
` 10
`
`

`

`Cases CBM2014-00013, CBM2014-00015, CBM2014-00016
`Patents 6,982,733 B1, 6,384,850 B1, 6,871,325 B1
`
`
`JUDGE LEE: Thank you.
`
`MR. GREENE: So it's Petitioner's position that the terms in these
`
`claims are relatively straightforward and don't require construction. In fact,
`
`in the petitions, Petitioner took the position that these terms in these claims
`
`are entitled to their plain and ordinary meaning under the broadest
`
`reasonable interpretation standard that applies to this proceeding.
`
`The Patent Owner obviously disagrees and in their response seeks
`
`to have the Board construe numerous terms from these claims without really
`
`any explanation of how construing those terms is relevant to the Section 101
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`analysis that is before us today.
`
`11
`
`It's Petitioner's position that two of those terms for which the
`
`12
`
`Patent Owner seeks construction are arguably relevant to the 101 analysis,
`
`13
`
`and so because of that, we'll briefly address the construction of those terms
`
`14
`
`here today.
`
`15
`
`The first of those is the preamble, which Judge Lee has already hit
`
`16
`
`upon. It is Patent Owner's position that the preamble should be construed as
`
`17
`
`a limitation, and in reading the arguments put forth by Patent Owner, I think
`
`18
`
`it's quite clear that that is because Patent Owner seeks to use the preamble as
`
`19
`
`a vehicle to import limitations into these claims that simply are not there,
`
`20
`
`and so that's where the relevance of the preamble as a limitation comes up.
`
`21
`
`Petitioner submits that if the preamble is a limitation, it actually
`
`22
`
`doesn't change the analysis if it's properly read as Judge Lee and I were
`
`23
`
`discussing, but if it's interpreted and viewed with these elements that are not
`
`24
`
`found anywhere in the body of the claim, then that is really what Patent
`
`25
`
`Owner's entire argument hinges upon, and so that is why we certainly would
`
`
`
`
`
` 11
`
`

`

`Cases CBM2014-00013, CBM2014-00015, CBM2014-00016
`Patents 6,982,733 B1, 6,384,850 B1, 6,871,325 B1
`
`dispute that it should be a limitation in that sense certainly when you apply
`
`the rationale that Patent Owner is applying to get to arguing that the
`
`preamble is a limitation in these claims, and that rationale is the following:
`
`The Patent Owner says that the preamble should be a limitation because the
`
`Board should adopt the prior constructions of the earlier District Courts that
`
`construed these claims.
`
`Well, if we're going to apply that rationale, then let's look at what
`
`those courts said, and so we'll move to slide 6 here, and this is from Judge
`
`Everingham construction in the Ameranth v. Menusoft litigation, and as you
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`can see from Patent Owner's own brief, they note that Judge Everingham
`
`11
`
`found that the parties in that case, which are not the Petitioners here,
`
`12
`
`separate parties, agreed that the preamble was a limitation, so it certainly
`
`13
`
`wasn't as the Judge affirmatively construed the preamble to be a limitation.
`
`14
`
`It was that the parties agreed to it.
`
`15
`
`16
`
`17
`
`18
`
`19
`
`JUDGE LEE: Were you a party in that case?
`
`MR. GREENE: We were not, Your Honor. None of the --
`
`JUDGE LEE: None of the 35 companies?
`
`MR. GREENE: What's that?
`
`JUDGE LEE: None of the 35 companies that make up Petitioner
`
`20
`
`in this proceeding were a party to that case.
`
`21
`
`MR. ZEMBEK: Judge Lee, just for purposes of clarification, I did
`
`22
`
`represent one of the defendants in the underlying case, but that defendant,
`
`23
`
`after winning at trial, settled with Ameranth and is not a Petitioner in this
`
`24
`
`case.
`
`
`
`
`
` 12
`
`

`

`Cases CBM2014-00013, CBM2014-00015, CBM2014-00016
`Patents 6,982,733 B1, 6,384,850 B1, 6,871,325 B1
`
`
`MR. GREENE: So moving to slide 7, this is another District
`
`Court construction relating to the preamble, and as we see here, the Court in
`
`that case rejected the parties' attempts to stipulate to the preamble being
`
`limiting, and so kind of putting all this together, if we look at Patent Owner's
`
`logic that the Board should adopt all of the District Court constructions here,
`
`applying that logic then, the broadest reasonable interpretation is that the
`
`preamble is not limiting, and so that's what the previous District Courts
`
`essentially tell us through their constructions.
`
`Moving to slide 8 here, this is Claim 12 of the '850 patent. Claim
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`12 is not instituted here, but it's instructive on this issue because the
`
`11
`
`beginning of the preamble of Claim 12 does recite that same language, "an
`
`12
`
`information management and synchronous communications system," but if
`
`13
`
`we look down in the body of the claim, we have the language as highlighted
`
`14
`
`here, "wherein applications and data are synchronized between," it actually
`
`15
`
`lists four things: A central database, a wireless handheld computing device,
`
`16
`
`one web server and at least one web page, and then there's other limitations
`
`17
`
`also buried in there, "wherein the application program interface enables
`
`18
`
`integration of outside applications with the hospitality applications and
`
`19
`
`wherein the communications control module is an interface between the
`
`20
`
`hospitality applications and any other communications protocol."
`
`21
`
`None of that disclosure there or elements of that claim are found
`
`22
`
`in the instituted claims, certainly Claim 1 of the '850 patent, and so of
`
`23
`
`course, what Patent Owner is attempting to do, respectfully, is import
`
`24
`
`several of those limitations into the instituted claims such as Claim 1 via this
`
`25
`
`construction of the preamble, and in viewing this term "synchronous
`
`
`
`
`
` 13
`
`

`

`Cases CBM2014-00013, CBM2014-00015, CBM2014-00016
`Patents 6,982,733 B1, 6,384,850 B1, 6,871,325 B1
`
`communications" with several elements that are found in this claim and not
`
`found in that claim, and the point of this slide is to say that when the Patent
`
`Owner wanted to imbue the claims with those elements, it certainly knew
`
`how to add those elements to the claim, so Patent Owner cannot now
`
`through claim construction add elements, these elements to the claims that
`
`frankly just aren't there.
`
`JUDGE LEE: I'm just curious, on what basis then did the
`
`Petitioner argue that Claim 12 was patent ineligible under 101? I know we
`
`didn't institute, but since you're noting it as an example of where the Board
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`did not institute perhaps based upon all of those specifically recited
`
`11
`
`elements, I'm just curious then why did you file a petition alleging that that
`
`12
`
`was patent ineligible?
`
`13
`
`MR. GREENE: Certainly, Your Honor, it's Petitioner's position --
`
`14
`
`and respectfully we disagree with the Board's decision not to institute on
`
`15
`
`those claims. Petitioner's position is that all of that disclosure in that claim
`
`16
`
`is still generic and it's still -- it's still generic computer disclosure with
`
`17
`
`computers and computer elements operating in a generic traditional way
`
`18
`
`wrapped around an abstract idea.
`
`19
`
`So that was Petitioner's position. We understand the Board
`
`20
`
`disagreed with that position, but that is the position Petitioner's took, and
`
`21
`
`that is Petitioner's position today.
`
`22
`
`JUDGE LEE: Can you expound on that because from what I hear,
`
`23
`
`you seem to think that as long as all of the hardware components used is
`
`24
`
`known and used for their specifically designed purpose, then you can say it's
`
`25
`
`a generic component, they add nothing to the invention?
`
`
`
`
`
` 14
`
`

`

`Cases CBM2014-00013, CBM2014-00015, CBM2014-00016
`Patents 6,982,733 B1, 6,384,850 B1, 6,871,325 B1
`
`
`MR. GREENE: I think that might be a slight oversimplification
`
`of what the Alice case says, but I think that's largely what the Alice case
`
`says. When we have a situation where we have an abstract idea that the
`
`claim is directed to, and then we have generic computer elements
`
`performing in their traditional generic way, in their conventional way, and
`
`those elements aren't integrated into the system in a way that improves the
`
`functioning of a machine or that improves technology, that that claim does
`
`fail Section 101 under the Alice case, Your Honor.
`
`JUDGE LEE: I see. So is it fair to say that even under your view,
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`you still leave plenty of room for technical innovation such as if you have a
`
`11
`
`cache memory system that's much faster, and you say, okay, you store
`
`12
`
`frequently accessed information in the cache rather than in the slower
`
`13
`
`memory, and then on the one hand you can say, well, it's a memory used for
`
`14
`
`it's intended purpose, but it's generic.
`
`15
`
`You're not saying that, right, because you have a faster memory,
`
`16
`
`you store most recently accessed information, that would be a technical
`
`17
`
`innovation even though it's a memory used for storing information? You
`
`18
`
`wouldn't say that that's not patent eligible.
`
`19
`
`MR. GREENE: Correct. If it's improving the functioning of a
`
`20
`
`machine, improving the technology, even though it's using traditional
`
`21
`
`components to do that, that is what the Supreme Court and the Federal
`
`22
`
`Circuit's case law tells us is patent eligible. The classic example would be
`
`23
`
`the Diamond v. Deer case in the Supreme Court where the abstract idea that
`
`24
`
`was identified was the Arrhenius equation, and that abstract idea was
`
`25
`
`utilized to improve the function of a rubber molding machine, which was a
`
`
`
`
`
` 15
`
`

`

`Cases CBM2014-00013, CBM2014-00015, CBM2014-00016
`Patents 6,982,733 B1, 6,384,850 B1, 6,871,325 B1
`
`machine that was known, certainly traditional elements, but in that case the
`
`abstract idea was used to improve the function of the machine, and so the
`
`Supreme Court said that passes muster under Section 101.
`
`What we see here on slide 9 is an excerpt from Patent Owner's
`
`briefing in one of the earlier cases. This is from the Ameranth v. Par case,
`
`and I want to set some context for you of what happened here. Claim 1 of
`
`the '850 patent had been invalidated by a jury for being anticipated, and so
`
`Claim 12 was in an issue in a subsequent case, and Ameranth faced -- Patent
`
`Owner faced a motion to dismiss.
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`To deal with that motion to dismiss, this is what they said: “The
`
`11
`
`differences between those claims are striking and would have been easily
`
`12
`
`discernable even under the most rudimentary inspection.”
`
`13
`
`So we point that out again to highlight that elements that are in
`
`14
`
`Claim 12 are not in Claim 1, and it's improper for Patent Owner to try to
`
`15
`
`read these elements in through this construction of the preamble, especially
`
`16
`
`in light of statements that the Patent Owner has said in public forums.
`
`17
`
`JUDGE LEE: I would like to ask you: You didn't file any prior
`
`18
`
`art grounds against these claims, so does that mean as far as you're
`
`19
`
`concerned there's something inventive in these claims?
`
`20
`
`MR. GREENE: Certainly not, Your Honor. There's obviously
`
`21
`
`litigation going on in another forum, and the Petitioner group obviously
`
`22
`
`made the decision that this was the forum to bring these 101 and 112
`
`23
`
`grounds for strategic purposes, and then the prior art grounds were perhaps
`
`24
`
`better handled in a different forum.
`
`
`
`
`
` 16
`
`

`

`Cases CBM2014-00013, CBM2014-00015, CBM2014-00016
`Patents 6,982,733 B1, 6,384,850 B1, 6,871,325 B1
`
`
`That's not to say that the group may decide on another case that
`
`this would be a forum to bring prior art challenge, but at this point in time
`
`when these petitions were brought, the decision was made to focus on the
`
`101 and 112 grounds.
`
`JUDGE LEE: So if I were to ask you what are the -- what is the
`
`inventive concept for say Claim 1 of the '733 patent, what would your
`
`answer be?
`
`MR. GREENE: Well, we will certainly get into this, but it's
`
`Petitioner's position that there is no inventive concept, and that's exactly why
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`that claim fails under the Alice case.
`
`11
`
`12
`
`JUDGE PETRAVICK: What's the abstract idea?
`
`MR. GREENE: The abstract idea of these claims as found by the
`
`13
`
`Board is generating menus. I believe the Board said for the '733 patent it
`
`14
`
`was slightly different. It was generating and transmitting menus. Petitioner
`
`15
`
`agrees with that analysis, and I'm happy to jump ahead to those slides.
`
`16
`
`There's disclosure in the specification I think that really supports that. This
`
`17
`
`is slide 13. This is where the Board found that the abstract idea is generating
`
`18
`
`a menu.
`
`19
`
`JUDGE PETRAVICK: What specific disclosures of the
`
`20
`
`specifications support that?
`
`21
`
`MR. GREENE: So we move ahead here, this is slide 15. This is
`
`22
`
`the background section that talks about the menu generation approach of the
`
`23
`
`present invention. Note that there is no discussion there of other elements of
`
`24
`
`synchronization, of things you are going to hear the Patent Owner talk about
`
`25
`
`today.
`
`
`
`
`
` 17
`
`

`

`Cases CBM2014-00013, CBM2014-00015, CBM2014-00016
`Patents 6,982,733 B1, 6,384,850 B1, 6,871,325 B1
`
`
`They talk about the menu generation approach, and they even say
`
`here that what that approach solves is the problem of converting paper based
`
`menus. I think if this is compared to the other Supreme Court and Federal
`
`Circuit cases where Section 101 was at issue, this lines up quite clearly with
`
`what those Courts found to be an abstract idea.
`
`There are other disclosure I could point to you, Judge Petravick.
`
`On slide 16, this is more disclosure from the specification that says: "The
`
`preferred embodiment of the invention is for the generation of restaurant
`
`menus. The inventive concept encompasses the generation of a menu.
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`Menus can be generated in accordance with the present invention."
`
`11
`
`JUDGE PETRAVICK: The claims aren't as broad as just
`
`12
`
`generating -- typing a menu into a computer generates a menu that way. It
`
`13
`
`has a little more, right? Like, for example, Claim 1 of the '850, you're
`
`14
`
`creating the menu from another menu; a first menu you're editing to create a
`
`15
`
`second menu.
`
`16
`
`17
`
`MR. GREENE: Agree completely.
`
`JUDGE PETRAVICK: So it is an idea of -- an abstract idea of
`
`18
`
`generating a menu from another menu. Is that still an abstract idea?
`
`19
`
`MR. GREENE: Absolutely, Your Honor. It would be Petitioner's
`
`20
`
`position that generating -- whether it's a second menu, a third men, a 20th
`
`21
`
`menu, if you're just generating menus, it's all still the abstract idea.
`
`22
`
`JUDGE PETRAVICK: What about if you're generating two
`
`23
`
`menus and then transmitting it, is that still --
`
`24
`
`25
`
`
`
`
`
`MR. GREENE: It's the same thing.
`
`JUDGE PETRAVICK: -- still abstract?
`
` 18
`
`

`

`Cases CBM2014-00013, CBM2014-00015, CBM2014-00016
`Patents 6,982,733 B1, 6,384,850 B1, 6,871,325 B1
`
`
`MR. GREENE: Sorry to interrupt, Judge Petravick. Yes,
`
`Petitioner would say again generating menus and then tacking on the very
`
`routine basic conventional step of sending that onto someone else does not
`
`get the claim over the 101 hurdle and that lines up with what the Supreme
`
`Court said in Mayo, again that adding conventional routine activity to a
`
`claim doesn't allow the claim to pass muster under Section 101.
`
`JUDGE PETRAVICK: But you still define the abstract idea as
`
`not talking about the inventive concept but as generating -- a claim of
`
`generating the menu.
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`MR. GREENE: I think that it's clear that's what it is. We distill
`
`11
`
`the claims down to the core to get to this abstract idea, and frankly we listen
`
`12
`
`to what the Patent Owner says in their own specification, and they say the
`
`13
`
`inventive concept is generating menus, and so from their own mouth in the
`
`14
`
`specification, I think that supports a finding that generating menus is the
`
`15
`
`abstract idea of these claims.
`
`16
`
`JUDGE PETRAVICK: So the specification talks about that the
`
`17
`
`use of paper and pencil to create a menu, but it doesn't tell you how -- when
`
`18
`
`to use the pencil and paper to create a menu, and the claim says you're going
`
`19
`
`to pick, make a second menu from these other menus. That's not quite the
`
`20
`
`same as taking the paper and pen and writing out a menu that's described in
`
`21
`
`the background.
`
`