`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
` Paper 35
` Entered: March 20, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AGILYSYS, INC. ET AL.,
`Petitioner,
`
`v.
`
`AMERANTH, INC.,
`Patent Owner.
`____________
`
`Case CBM2014-00016
`Patent No. 6,871,325 B1
`____________
`
`Before JAMESON LEE, MEREDITH C. PETRAVICK, and
`NEIL T. POWELL, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`Covered Business Method Patent Review
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`
`
`CBM2014-00016
`Patent 6,871,325 B1
`
`
`I. INTRODUCTION
`
`Agilysys, Inc. and other entities1 (collectively, “Petitioner”) filed a
`
`Petition (Paper 8, “Pet.”) requesting review under the transitional program
`
`for covered business method patent of claims 1–15 of U.S. Patent No.
`
`6,871,325 B1 (Ex. 1032, “the ’325 patent”). On March 26, 2014, pursuant
`
`to 35 U.S.C. § 324, we instituted this trial as to claims 1–10 of the ’325
`
`patent on only one proposed ground of unpatentability, 35 U.S.C. § 101.
`
`Paper 19 (“Dec. to Inst.”). We did not institute as to claims 11–16 on any of
`
`the grounds proposed in the Petition. Ameranth, Inc. (“Patent Owner”) filed
`
`a Patent Owner Response (Paper 26, “PO Resp.”) and Petitioner filed a
`
`Reply (Paper 27, “Reply”).
`
`
`
`An oral hearing in this proceeding was held on October 24, 2014. A
`
`transcript of the hearing is included in the record (Paper 33, “Tr.”). The oral
`
`hearing was consolidated with the oral hearing for related CBM2014-00015
`
`and CBM2014-00013.
`
`
`
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
`
`Decision is issued pursuant to 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73.
`
`
`1 Expedia, Inc.; Fandango, LLC; Hotel Tonight, Inc.; Hotwire, Inc.;
`Hotels.com, L.P.; Kayak Software Corp.; Live Nation Entertainment, Inc.;
`Oracle Corp.; Orbitz, LLC; Opentable, Inc.; Papa John’s USA, Inc.;
`Stubhub, Inc.; Ticketmaster, LLC.; Travelocity.com LLP; Wanderspot LLC;
`Pizza Hut, Inc.; Pizza Hut of America, Inc.; Domino’s Pizza, Inc.; Domino’s
`Pizza, LLC; Grubhub Holdings, Inc.; Order.in, Inc.; Mobo Systems, Inc.;
`Starbucks Corporation; Eventbrite, Inc.; Best Western International, Inc.;
`Hilton Resorts Corp.; Hilton Worldwide, Inc.; Hilton International Co.;
`Hyatt Corporation; Marriott International, Inc.; Starwood Hotels & Resorts
`Worldwide, Inc.; Usablenet, Inc.; and Apple, Inc.
`
`
`
`
`2
`
`
`
`CBM2014-00016
`Patent 6,871,325 B1
`
`
`
`For the reasons that follow, we determine that Petitioner has shown by
`
`a preponderance of the evidence that claims 1–10 of the ’325 patent are
`
`unpatentable.
`
`A. The ’325 Patent
`
`The ’325 patent, titled “Information Management and Synchronous
`
`Communications System with Menu Generation,” issued on March 22,
`
`2005, based on Application No. 10/015,729, filed on November 1, 2001.
`
`Ex. 1032, 1.
`
`The ’325 patent discloses a “desktop software application that enables
`
`the rapid creation and building of a menu.” Id. at col. 3, ll. 22–24. Figure 1
`
`of the ’325 patent is reproduced below.
`
`Figure 1 depicts a graphical user interface (“GUI”)
`that is used to generate a menu
`
`
`
`GUI 1 includes menu tree window 7, modifiers window 8, and sub-modifiers
`
`window 9. Id. at col. 6, ll. 38–44. Menu tree window 7 displays hierarchical
`
`
`
`
`3
`
`
`
`CBM2014-00016
`Patent 6,871,325 B1
`
`tree structure 2 that shows the relationships between menu categories, such
`
`as salads or desserts; menu items, such as caesar salad or green salad; menu
`
`modifiers, such as dressing; and menu sub-modifiers, such as ranch or bleu
`
`cheese. Id. at col. 6, ll. 20–32. A user generates a menu by using the GUI to
`
`add or delete menu categories, menu items, modifiers, and sub-modifiers,
`
`and to link modifiers and sub-modifiers to menu items in hierarchical tree
`
`structure 2. Id. at col. 6, l. 47–col. 8, l. 43. After the new menu is generated
`
`and previewed at the computer workstation, the new menu is downloaded to
`
`wireless handheld devices and Web pages. See id. at col. 3, l. 64–col. 4, l. 1;
`
`col. 6, ll. 33–36; col. 7, l. 26; col. 8, ll. 59–65; col. 10, ll. 13–15.
`
`
`
`In addition to manually generating the menu, menus can be generated
`
`manually or automatically in response to predetermined criteria. Id. at
`
`col. 14, ll. 8–9, 19–22. For example, a menu can be generated to have
`
`dinner items or low-cholesterol items. Id. at col. 14, ll. 10–14. Further, the
`
`’325 patent states that “[t]he menu generation aspect of the invention is
`
`equally applicable to table-based, drive-thru, internet, telephone, wireless or
`
`other modes of customer order entry.” Id. at col. 14, ll. 25–29.
`
`
`
`B. Illustrative Claims
`
`Claims 1, 7, and 9 of the ’325 patent are illustrative of the claims at
`
`issue and read as follows:
`
`1. An information management and synchronous
`communications system for generating and
`transmitting menus comprising:
`
`a. a central processing unit,
`
`b. a data storage device connected to said
`central processing unit,
`
`
`
`
`4
`
`
`
`CBM2014-00016
`Patent 6,871,325 B1
`
`
`c. an operating system including a graphical
`user interface,
`
`d. a first menu consisting of menu categories,
`said menu categories consisting of menu items,
`said first menu stored on said data storage
`device and displayable in a window of said
`graphical user interface in a hierarchical tree
`format,
`
`e. a modifier menu stored on said data storage
`device and displayable in a window of said
`graphical user interface,
`
`f. a sub-modifier menu stored on said data
`storage device and displayable in a window of
`said graphical user interface, and
`
`g. application software for generating a second
`menu from said first menu and transmitting said
`second menu to a wireless handheld computing
`device or Web page,
`
`wherein the application software facilitates the
`generation of the second menu by allowing
`selection of categories and items from the first
`menu, addition of menu categories to the second
`menu, addition of menu items to the second menu
`and assignment of parameters to items in the
`second menu using the graphical user interface of
`said operating system, said parameters being
`selected from the modifier and sub-modifier
`menus, wherein said second menu [is] applicable to
`a predetermined type of ordering.
`
`7. An information management and synchronous
`communications system for generating and
`transmitting menus comprising:
`
`a. a central processing unit,
`
`b. a data storage device connected to said
`central processing unit,
`
`
`
`
`5
`
`
`
`CBM2014-00016
`Patent 6,871,325 B1
`
`
`c. an operating system including a graphical
`user interface,
`
`d. a first menu consisting of menu categories,
`said menu categories consisting of menu items,
`said first menu stored on said data storage
`device and displayable in a window of said
`graphical user interface in a hierarchical tree
`format,
`
`e. a modifier menu stored on said data storage
`device and displayable in a window of said
`graphical user interface,
`
`f. a sub-modifier menu stored on said data
`storage device and displayable in a window of
`said graphical user interface, and
`
`g. application software for generating a second
`menu from said first menu and transmitting said
`second menu to a wireless handheld computing
`device or Web page,
`
`wherein the application software facilitates the
`generation of the second menu by allowing
`selection of categories and items from the first
`menu, addition of menu categories to the second
`menu, addition of menu items to the second menu
`and assignment of parameters to items in the
`second menu using the graphical user interface of
`said operating system, said parameters being
`selected from the modifier and sub-modifier
`menus, wherein said application software acts to
`facilitate generation of the second menu such that
`the second menu is appropriate for a specified time
`of day.
`
`9. An information management and synchronous
`communications system for generating and
`transmitting menus comprising:
`
`a. a central processing unit,
`
`
`
`
`6
`
`
`
`CBM2014-00016
`Patent 6,871,325 B1
`
`
`b. a data storage device connected to said
`central processing unit,
`
`c. an operating system including a graphical
`user interface,
`
`d. a first menu consisting of menu categories,
`said menu categories consisting of menu items,
`said first menu stored on said data storage
`device and displayable in a window of said
`graphical user interface in a hierarchical tree
`format,
`
`e. a modifier menu stored on said data storage
`device and displayable in a window of said
`graphical user interface,
`
`f. a sub-modifier menu stored on said data
`storage device and displayable in a window of
`said graphical user interface, and
`
`g. application software for generating a second
`menu from said first menu and transmitting said
`second menu to a wireless handheld computing
`device or Web page,
`
`wherein the application software facilitates the
`generation of the second menu by allowing
`selection of categories and items from the first
`menu, addition of menu categories to the second
`menu, addition of menu items to the second menu
`and assignment of parameters to items in the
`second menu using the graphical user interface of
`said operating system, said parameters being
`selected from the modifier and sub-modifier
`menus, wherein the facilitation of second menu
`generation includes items that satisfy the specified
`parameters.
`
`
`
`
`
`
`7
`
`
`
`CBM2014-00016
`Patent 6,871,325 B1
`
`
`C. Related Proceedings
`
`Both parties identify numerous related ongoing district court
`
`proceedings. Pet. 13–16; Paper 7, 4–5; Paper 25, 1.
`
`In addition, Petitioner requested covered business method patent
`
`review of the following related patents: U.S. Patent No. 6,348,850
`
`(CBM2014-00015; “the ’850 patent”) and U.S. Patent No. 6,982,733
`
`(CBM2014-00013). We instituted covered business method patent review in
`
`CBM2014-00015 and CBM2014-00013, and final written decisions in those
`
`proceedings are entered concurrently with this decision.
`
`Petitioner also requested covered business method patent review of
`
`related U.S. Patent No. 8,146,077 (CBM2014-00014). We did not institute
`
`covered business method patent review in CBM2014-00014.
`
`
`
`D. Alleged Ground of Unpatentability
`
`
`
`Petitioner alleges that claims 1–10 are unpatentable under 35 U.S.C.
`
`§ 101.
`
`
`
`
`
`II. ANALYSIS
`
`A. Arguments Incorporated By Reference
`
`In footnote 11 on page 12 of the Patent Owner Response, Patent
`
`Owner attempts to incorporate certain arguments made in its Preliminary
`
`Response (Paper 11) into the Patent Owner Response. Our rules prohibit
`
`incorporating arguments by reference. 37 C.F.R. § 42.6(a)(3) states:
`
`“[a]rguments must not be incorporated by reference from one document into
`
`another document.” Incorporation by reference circumvents our rule
`
`limiting the pages in the Patent Owner response to 80 pages. See 37 C.F.R.
`
`
`
`
`8
`
`
`
`CBM2014-00016
`Patent 6,871,325 B1
`
`§ 42.24(b)(2). Arguments that are not developed and presented in the Patent
`
`Owner Response, itself, are not entitled to consideration. See Paper 20, 3
`
`(cautioning Patent Owner “that any arguments for patentability not raised
`
`and fully briefed in the response will be deemed waived.”).
`
`
`
`B. Claim Construction
`
`The Board interprets claims of unexpired patents using the broadest
`
`reasonable construction in light of the specification of the patent in which
`
`they appear. 37 C.F.R. § 42.300(b). Under the broadest reasonable
`
`construction standard, claim terms are given their ordinary and customary
`
`meaning, as would be understood by one of ordinary skill in the art in the
`
`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`
`1257 (Fed. Cir. 2007). Any special definition for a claim term must be set
`
`forth with “reasonable clarity, deliberateness, and precision.” In re Paulsen,
`
`30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition,
`
`limitations are not to be read from the specification into the claims. In re
`
`Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`
`Prior to construing the relevant claim limitations, we turn to some
`
`initial matters raised by Patent Owner. First, Patent Owner argues that we
`
`must construe “the entirety of the challenged claims” (PO Resp. 30), and
`
`proposes constructions for some, but not all, limitations of the challenged
`
`claims (see id. at 33–35). Claim construction, however, “is not an inviolable
`
`prerequisite to a validity determination under § 101.” Bancorp Servs. L.L.C.
`
`v. Sun Life Assur. Co. of Canada (U.S.), L.L.C., 687 F.3d 1266, 1273 (Fed.
`
`Cir. 2012). See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d
`
`795, 803 (Fed. Cir. 1999) (only those terms that are in controversy need to
`
`
`
`
`9
`
`
`
`CBM2014-00016
`Patent 6,871,325 B1
`
`be construed, and only to the extent necessary to resolve the controversy).
`
`We construe, below, the limitations that are relevant to the issues of patent-
`
`eligibility discussed below. We determine that all other claim limitations
`
`need no explicit construction.
`
`
`
`Second, Patent Owner urges us to adopt all previous judicial
`
`constructions and, in particular, the constructions of United States District
`
`Court for the Eastern District of Texas Marshall Division (see Exs. 2014–
`
`2016). PO Resp. 29. Petitioner also relies upon previous judicial
`
`constructions (see Ex. 2017) to support its arguments. See Reply 4.
`
`However, the standard for claim construction in a district court infringement
`
`action is different than the standard applied by the Board. See In re Morris,
`
`127 F.3d 1048, 1053–54 (Fed. Cir. 1997). In covered business method
`
`patent review proceedings, the Board applies the broadest reasonable
`
`construction consistent with the specification. 37 C.F.R. § 42.300(b); see
`
`also SAP America, Inc. v. Versata Development Group, Inc., CBM2012-
`
`00001, slip op. at 7–18 (PTAB June 11, 2013) (Paper 70) (discussing
`
`adoption of the broadest reasonable interpretation standard).
`
`i. Preamble
`
`
`
`The preambles of independent claims 1, 7, 8, and 9 recite “[a]n
`
`information management and synchronous communications system for
`
`generating and transmitting menus.” Petitioner and Patent Owner dispute
`
`whether the preamble limits these claims. Reply 2–7; PO Resp. 35–36.
`
`Patent Owner argues that the preamble is limiting because “[t]erms
`
`are recited in the preamble which do not appear in the remainder of the
`
`claims and ‘synchronous communications system’ is necessary to define the
`
`synchronization functionality of the first menus and the second menus on the
`
`
`
`
`10
`
`
`
`CBM2014-00016
`Patent 6,871,325 B1
`
`back[-]office server (central database) and the handheld device/Web pages.”
`
`PO Resp. 36. According to Patent Owner, the preamble should be construed
`
`as “a computerized system having multiple devices in which a change to
`
`data made on a central server is updated on client devices and vice versa.”
`
`Id. at 33; see id. at 35–36. Patent Owner also argues that the preamble is
`
`limiting because the Specification describes that a synchronous
`
`communications system is important (id. at 36 (citing Ex. 1032, Title,
`
`Abstract, col. 3, ll. 9–15, 59–67)), and because the Examiner of the related
`
`’850 patent relied upon the preamble during prosecution to distinguish over
`
`the prior art (id.).
`
`Petitioner argues that the preamble is non-limiting because the
`
`preamble does not recite any structural components not captured in the body
`
`of the claims and “merely sets forth the purpose (‘information management
`
`and synchronous communication’) and intended use (‘for generating and
`
`transmitting menus’) of the claimed invention.” Reply 2–6 (citations
`
`omitted). Petitioner argues that Patent Owner’s proposed construction
`
`improperly reads in a distributed system that includes a central server and
`
`client devices and improperly excludes a preferred desktop PC embodiment
`
`from the claims. Id. at 6–7. Petitioner further argues that, contrary to Patent
`
`Owner’s assertion, the Examiner did not rely upon the preamble to
`
`distinguish over the prior art. Id. at 5.
`
`“In general, a preamble limits the invention if it recites essential
`
`structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to
`
`the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d
`
`801, 808 (Fed. Cir. 2002) (citing Pitney Bowes, Inc. v. Hewlett-Packard Co.,
`
`182 F.3d 1298, 1305 (Fed. Cir. 1999)). A preamble, however, is not limiting
`
`
`
`
`11
`
`
`
`CBM2014-00016
`Patent 6,871,325 B1
`
`where the claim body defines a structurally complete invention and the
`
`preamble only states a purpose or intended use for the invention. Id.
`
`The bodies of the independent claims recite a system that includes a
`
`central processing unit (“CPU”), a data storage device, an operating system
`
`with a GUI, a first menu, a modifier menu, a sub-modifier menu, and
`
`application software. The application software is recited as “for generating a
`
`second menu from said first menu,” and the wherein clauses further define
`
`how the second menu is generated from the first menu. The application
`
`software is recited, further, as “for . . . transmitting said second menu to a
`
`wireless handheld computing device or Web page.”
`
`As can be seen from the above, the bodies of the independent claims
`
`recite a structurally complete invention, one that corresponds to the
`
`embodiment that has a desktop PC and a menu configuration application
`
`described in the Specification at column 6, line 9 thru column 8, line 62 and
`
`depicted in Figure 1. See also Ex. 1032, col. 3, ll. 40–44 (describing the
`
`present invention as a software tool for building a menu, modifying a menu,
`
`and downloading it to a handheld device or Web Page). As described in the
`
`Specification, a menu is updated using the GUI of the menu configuration
`
`application and, then, the updated menu is downloaded to a connected
`
`handheld device by clicking on a “Download Database” item or icon in
`
`GUI 1. Ex. 1032, col. 8, l. 59–col. 9, l. 3; see id. at col. 3, ll. 42–43; col. 6,
`
`ll. 33–36; col. 7, l. 26. Thus, the updated menu is the same on the desktop
`
`PC and the handheld device. At the oral hearing, Patent Owner indicated
`
`that downloading is synchronizing, as “[i]t’s making something the same
`
`with something else.” See Tr. 28, ll. 3–4.
`
`
`
`
`12
`
`
`
`CBM2014-00016
`Patent 6,871,325 B1
`
`
`For these reasons, we agree with Petitioner that the preamble is non-
`
`limiting because it does not recite any structural components not already
`
`captured in the body of the claim and merely sets forth the purpose and
`
`intended use of the claimed invention. Also, the bodies of the claims already
`
`possess life, meaning, and vitality, without importing anything from the
`
`preamble.
`
`We further are not persuaded by Patent Owner’s argument that the
`
`preamble is limiting, because the argument is based upon a proposed
`
`construction that is overly narrow. Patent Owner’s proposed construction
`
`implies that a synchronous communication system requires a central back-
`
`office server that communicates data updates to and from multiple client
`
`devices, similar to those recited in non-instituted claim 11. Although the
`
`Specification describes communication between a central back-office server
`
`and client devices (e.g., see Ex. 1032, col. 11, ll. 25–36), we see nothing in
`
`the Specification, and Patent Owner points to nothing, that suggests that a
`
`synchronous communication system is required to include these elements.
`
`Patent Owner’s proposed construction attempts to import these extraneous
`
`elements from the Specification into the claim. If a feature is not necessary
`
`to give meaning to what the inventor means by a claim term, it would be
`
`“extraneous,” and should not be read into the claim. Renishaw PLC v.
`
`Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du
`
`Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433
`
`(Fed. Cir. 1988).
`
`Further, we are not persuaded by Patent Owner’s argument that the
`
`preamble is limiting because the Examiner, of not the ’325 patent but of the
`
`related ’850 patent, relied upon the preamble during prosecution to
`
`
`
`
`13
`
`
`
`CBM2014-00016
`Patent 6,871,325 B1
`
`distinguish over the prior art, as evidence by the Examiner’s reasons for
`
`allowance (PO Resp. 36). Clear reliance on the preamble during prosecution
`
`to distinguish the claimed invention from the prior art may transform the
`
`preamble into a claim limitation. Catalina, 289 F.3d at 808. The
`
`Examiner’s reasons for allowance for the related ’850 patent do not show
`
`that the preamble was clearly relied upon during the prosecution of the ’325
`
`patent. Further, contrary to the Patent Owner’s argument, the Examiner’s
`
`reasons for allowance in the ’850 patent indicate that the claimed sub-
`
`modifier menu and the claimed application software are the uniquely distinct
`
`features, and not the synchronous communication system of the preamble.
`
`Ex. 1035, 7.
`
`
`
`For the reasons discussed above, we are persuaded by Petitioner that
`
`the preamble is non-limiting.
`
`ii. “central processing unit”
`
`
`
`Independent claims 1, 7, 8, and 9 recite a “central processing unit.”
`
`Patent Owner proposes that CPU be construed as a “central server.” PO
`
`Resp. 33, 36–37. According to Patent Owner, its construction takes into
`
`account “the centralized nature of the control over the recited menu
`
`generation and synchronous transmission functionally of the central
`
`processing unit” described in the Specification. Id. at 36.
`
`Petitioner argues that there is nothing in the “intrinsic evidence [that]
`
`offers any alternative definition of this common technical term” and argues
`
`that Patent Owner’s proposed construction is contrary to the Specification,
`
`which equates the CPU to a microprocessor. Reply 7–8 (citing Ex. 1032,
`
`col. 5, ll. 43–45, 54–56). Petitioner proposes that CPU should be construed
`
`according to its ordinary and customary meaning, which is “the
`
`
`
`
`14
`
`
`
`CBM2014-00016
`Patent 6,871,325 B1
`
`computational and control unit of a computer.” Pet. 41 (citing MICROSOFT
`
`COMPUTER DICTIONARY, 115 (4th ed. 1999)).
`
`
`
`We are persuaded by Petitioner that the broadest reasonable
`
`construction in light of the Specification of the term CPU is the
`
`computational and control unit of a computer. Petitioner’s construction is
`
`consistent with the Specification, which describes that the system of the ’325
`
`patent uses typical hardware elements in the form of a computer workstation
`
`and that “[a] typical workstation platform includes hardware such as a
`
`central processing unit (‘CPU’), e.g., a Pentium® microprocessor.” Ex.
`
`1032, col. 5, ll. 43–45; see also id. at col. 5, ll. 54–56 (“a CPU, e.g.,
`
`Pentium® microprocessor”). Further the Specification discloses using a
`
`desktop PC to generate and download menus to a connected handheld device
`
`(see id. at col. 6, l. 33–col. 9, l. 3), as well as, discloses the use of a central
`
`back-office server (e.g., see id. at col. 2, ll. 31–37). Patent Owner’s
`
`proposed construction improperly reads into the claims the central back-
`
`office server. See Renishaw, 158 F.3d at 1249 (explaining that extraneous
`
`features should not be read into the claims).
`
`
`
`For these reasons, we determine that the broadest reasonable
`
`construction, in light of the Specification, of CPU is the computational and
`
`control unit of a computer.
`
`iii. “Web page”
`
`
`
`Neither Petitioner nor Patent Owner contests the construction of the
`
`term “Web page” in the Decision to Institute. See PO Resp. 34–35, 38. We
`
`construed Web page to mean “a document with associated files for graphics,
`
`scripts, and other resources, accessible over the Internet and viewable in a
`
`web browser.” Dec. on Inst. 7–9.
`
`
`
`
`15
`
`
`
`CBM2014-00016
`Patent 6,871,325 B1
`
`
`iv. “menu”
`
`
`
`Petitioner does not propose explicitly a construction of menu, but
`
`argues that the claim terms should be given their ordinary and customary
`
`meaning. Pet. 40–41. Patent Owner proposes that “menu” should be
`
`construed as “computer data representing collections of linked levels of
`
`choices or options intended for display in a graphical user interface.” PO
`
`Resp. 34, 39–41 (citing a construction by a district court); see Ex. 2014, 11–
`
`12. Patent Owner, however, provides no analysis as to why the district
`
`court’s construction is the broadest reasonable construction in light of the
`
`Specification. PO Resp. 34, 39–41.
`
`We are not persuaded by Patent Owner that its proposed construction
`
`is the broadest reasonable construction in light of the Specification. We see
`
`nothing in the Specification, and Patent Owner does not point to anything in
`
`the Specification, that provides support for Patent Owner’s proposed
`
`construction, in particular that the menus have a “linked levels” feature.
`
`Although the Specification discloses some menus that are linked to
`
`additional menus, this “linked levels” feature is extraneous and should not
`
`be read from the Specification into the claim. See Ex. 1032, col. 5, ll. 28–37
`
`(“File options can have additional subordinate or child options associated
`
`with them. If a file option having a subordinate option is selected . . .”
`
`(emphases added)).
`
`We give “menu” its ordinary and customary meaning. RANDOM
`
`HOUSE WEBSTER’S COLLEGE DICTIONARY defines menu as “a list of options
`
`available to a user as displayed on a computer or TV screen.” RANDOM
`
`HOUSE WEBSTER’S COLLEGE DICTIONARY, 520 (2nd ed. 1997). This
`
`definition is consistent with the Specification, which describes menus as
`
`
`
`
`16
`
`
`
`CBM2014-00016
`Patent 6,871,325 B1
`
`providing choices or options in a GUI. See Ex. 1032, col. 5, ll. 23–25; see
`
`Figure 1 (depicting a menu, a modifier menu, and a sub modifier menu).
`
`
`
`For these reasons, we determine that the broadest reasonable
`
`construction, in light of the Specification, of “menu” is a list of options
`
`available to a user displayable on a computer.
`
`v. “said second menu is applicable to a predetermined type of ordering,”
`“the type of ordering is table-based customer ordering,” “the type of
`ordering is drive-thru customer ordering,” “the type of ordering is customer
`ordering via telephone,” and “the type of ordering is customer ordering via
`wireless device”
`
`Independent claim 1 recites “said second menu is applicable to a
`
`predetermined type of ordering.” Claims 2, 3, 5, and 6 each depend from
`
`claim 1. Claim 2 recites “wherein the type of ordering is table-based
`
`customer ordering”; claim 3 recites “wherein the ordering [is] drive-thru
`
`customer ordering”; claim 5 recites “wherein the type of ordering is
`
`customer ordering via telephone”; and claim 6 recites “wherein the type of
`
`ordering is customer ordering via wireless device.”
`
`Petitioner does not propose explicitly a construction of any these
`
`limitations, but argues that claim terms should be given their ordinary and
`
`customary meaning. Pet. 40–41.
`
`Patent Owner proposes that claim 1’s limitation should be construed
`
`as “the generated second menu includes preprogrammed functionality based
`
`on restaurant menu style, preparation methods, pricing and how the food is
`
`to be served to the customer.” PO Resp. 34. According to Patent Owner, its
`
`construction reflects that the ordering type is preprogrammed and functional
`
`and not a reference to a user choice. Id. at 42. Patent Owner, further,
`
`proposes that dependent claims that further specify the type of ordering
`
`should be construed as stated in the chart below.
`
`
`
`
`17
`
`
`
`CBM2014-00016
`Patent 6,871,325 B1
`
`Claim
`
`2
`
`3
`
`5
`
`6
`
`Claim Limitation
`
`the type of ordering is
`table-based customer
`ordering
`
`the type of ordering is
`drive-thru customer
`ordering
`
`the type of ordering is
`customer ordering via
`telephone
`
`the type of ordering is
`customer ordering via
`wireless device
`
`Patent Owner’s
`Proposed Construction
`the generated second
`menu allows the order
`to be placed in courses
`for a customer at a table
`in a restaurant
`the generated second
`menu allows the entire
`order to be placed at
`one time for pick up by
`a customer in an
`automobile
`the generated second
`menu allows the entire
`order to be placed at
`one time via a
`telephone
`the generated second
`menu allows the entire
`order to be placed via
`the display screen on a
`wireless handheld
`computing device
`
`Id. at 34–35. According to Patent Owner, these constructions are “necessary
`
`in view of the unique functionality that is compelled by the knowledge of a
`
`POSA—based on well-known terminology.31” Id. at 43. In footnote 31,
`
`Patent Owner references two URLs that seem to point to articles at
`
`www.wikipedia.org. PO Resp. 43 n.31. Patent Owner, however, failed to
`
`file a copy of these articles in these proceedings and, therefore, we cannot
`
`consider them. See 37 C.F.R. § 42.63(a) (“All evidence must be filed in the
`
`form of an exhibit.”).
`
`We are not persuaded by Patent Owner that its proposed constructions
`
`are the broadest reasonable construction of each term in light of the
`
`
`
`
`18
`
`
`
`CBM2014-00016
`Patent 6,871,325 B1
`
`Specification. Each of Patent Owner’s proposed constructions is overly
`
`narrow because it incorporates features that are extraneous to the claims. If
`
`a feature is not necessary to give meaning to what the inventor means by a
`
`claim term, it would be “extraneous,” and should not be read into the claim.
`
`Renishaw, 158 F.3d at 1249; E.I. du Pont, 849 F.2d at 1433. These features
`
`include the menu having preprogrammed functionality based on restaurant
`
`style, preparation methods, pricing and how the food is to be served to the
`
`customer; the menu having functionality that allows for coursing; and the
`
`menu having functionality that allows for the order to be placed all at one
`
`time. We see nothing in the limitations, themselves, that require such
`
`features. We see nothing in the Specification, and Patent Owner points to
`
`nothing in the Specification (see PO Resp. 42–44), that requires these
`
`limitations to include such features or that even discloses such features.
`
`Further, we are not persuaded by Patent Owner’s argument that the
`
`knowledge of a person of ordinary skill in the art “compels” such a
`
`construction (id. at 43) because Patent Owner presents only attorney
`
`argument, unsupported by evidence. In re Geisler, 116 F.3d 1465, 1470
`
`(Fed. Cir. 1997) (Attorney arguments and conclusory statements that are
`
`unsupported by factual evidence are entitled to little probative value.).
`
`As to specifically claim 6, Patent Owner argues that, the recitation of
`
`“a wireless computing device” is a reference to the “wireless handheld
`
`computing device” that is recited in claim 1, and, therefore, should not be
`
`construed to encompass a wireless laptop or desktop PC. PO Resp. 74–75.
`
`Petitioner argues that claim 6 should not be rewritten to include the term
`
`handheld and that “if the wireless computing device of claim 6 were a
`
`reference to the wireless handheld computing device of claim 1, claim 6
`
`
`
`
`19
`
`
`
`CBM2014-00016
`Patent 6,871,325 B1
`
`would have used the definite article ‘the’ rather than generically reciting ‘via
`
`wireless device.’” Reply 14–15. We are persuaded by Petitioner that the
`
`recitation of “a wireless computing device” in claim 6 does not require that
`
`the wireless computing device be handheld or preclude a wireless laptop or
`
`desktop PC. Patent Owner’s proposed construction again attempts to read
`
`extraneous features into the claim.
`
`We give these limitations their broadest reasonable construction in
`
`light of the Specification. We give the claim terms their ordinary and
`
`customary meaning. Each of claims 1, 2, 3, 5, and 6 recites that the second
`
`menu is applicable to a recited type of ordering. A definition of “applicable”
`
`is “capable of or suitable for being applied.” MERRIAM-WEBSTER’S
`
`COLLEGIATE DICTIONARY, 56 (10th ed. 1998). This definition is consistent
`
`with the Specification, which discloses that the modified menu can be
`
`generated so that it includes items that satisfy c
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
