`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
`
`
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`CBM2014-00016
`Patent 6,871,325 B1
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`
`
`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
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`CBM2014-00016
`Patent 6,871,325 B1
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`tree structure 2 that shows the relationships between menu categories, such
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`as salads or desserts; menu items, such as caesar salad or green salad; menu
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`modifiers, such as dressing; and menu sub-modifiers, such as ranch or bleu
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`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,
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`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
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`and previewed at the computer workstation, the new menu is downloaded to
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`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,
`
`
`
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`4
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`CBM2014-00016
`Patent 6,871,325 B1
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`
`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,
`
`
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`5
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`CBM2014-00016
`Patent 6,871,325 B1
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`
`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,
`
`
`
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`6
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`CBM2014-00016
`Patent 6,871,325 B1
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`
`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.
`
`
`
`
`
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`7
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`CBM2014-00016
`Patent 6,871,325 B1
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`
`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.
`
`
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`8
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`Patent 6,871,325 B1
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`§ 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
`
`
`
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`9
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`CBM2014-00016
`Patent 6,871,325 B1
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`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,
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`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
`
`
`
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`10
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`CBM2014-00016
`Patent 6,871,325 B1
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`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
`
`
`
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`11
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`CBM2014-00016
`Patent 6,871,325 B1
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`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.
`
`
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`12
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`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
`
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`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
`
`
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`14
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`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.
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`15
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`iv. “menu”
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`
`
`Petitioner does not propose explicitly a construction of menu, but
`
`argues that the claim terms should be given their ordinary and customary
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`meaning. Pet. 40–41. Patent Owner proposes that “menu” should be
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`construed as “computer data representing collections of linked levels of
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`choices or options intended for display in a graphical user interface.” PO
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`Resp. 34, 39–41 (citing a construction by a district court); see Ex. 2014, 11–
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`12. Patent Owner, however, provides no analysis as to why the district
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`court’s construction is the broadest reasonable construction in light of the
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`Specification. PO Resp. 34, 39–41.
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`We are not persuaded by Patent Owner that its proposed construction
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`is the broadest reasonable construction in light of the Specification. We see
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`nothing in the Specification, and Patent Owner does not point to anything in
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`the Specification, that provides support for Patent Owner’s proposed
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`construction, in particular that the menus have a “linked levels” feature.
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`Although the Specification discloses some menus that are linked to
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`additional menus, this “linked levels” feature is extraneous and should not
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`be read from the Specification into the claim. See Ex. 1032, col. 5, ll. 28–37
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`(“File options can have additional subordinate or child options associated
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`with them. If a file option having a subordinate option is selected . . .”
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`(emphases added)).
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`We give “menu” its ordinary and customary meaning. RANDOM
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`HOUSE WEBSTER’S COLLEGE DICTIONARY defines menu as “a list of options
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`available to a user as displayed on a computer or TV screen.” RANDOM
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`HOUSE WEBSTER’S COLLEGE DICTIONARY, 520 (2nd ed. 1997). This
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`definition is consistent with the Specification, which describes menus as
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`Patent 6,871,325 B1
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`providing choices or options in a GUI. See Ex. 1032, col. 5, ll. 23–25; see
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`Figure 1 (depicting a menu, a modifier menu, and a sub modifier menu).
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`
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`For these reasons, we determine that the broadest reasonable
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`construction, in light of the Specification, of “menu” is a list of options
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`available to a user displayable on a computer.
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`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”
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`Independent claim 1 recites “said second menu is applicable to a
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`predetermined type of ordering.” Claims 2, 3, 5, and 6 each depend from
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`claim 1. Claim 2 recites “wherein the type of ordering is table-based
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`customer ordering”; claim 3 recites “wherein the ordering [is] drive-thru
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`customer ordering”; claim 5 recites “wherein the type of ordering is
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`customer ordering via telephone”; and claim 6 recites “wherein the type of
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`ordering is customer ordering via wireless device.”
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`Petitioner does not propose explicitly a construction of any these
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`limitations, but argues that claim terms should be given their ordinary and
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`customary meaning. Pet. 40–41.
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`Patent Owner proposes that claim 1’s limitation should be construed
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`as “the generated second menu includes preprogrammed functionality based
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`on restaurant menu style, preparation methods, pricing and how the food is
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`to be served to the customer.” PO Resp. 34. According to Patent Owner, its
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`construction reflects that the ordering type is preprogrammed and functional
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`and not a reference to a user choice. Id. at 42. Patent Owner, further,
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`proposes that dependent claims that further specify the type of ordering
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`should be construed as stated in the chart below.
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`Patent 6,871,325 B1
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`Claim
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`2
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`3
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`5
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`6
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`Claim Limitation
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`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
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`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
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`POSA—based on well-known terminology.31” Id. at 43. In footnote 31,
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`Patent Owner references two URLs that seem to point to articles at
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`www.wikipedia.org. PO Resp. 43 n.31. Patent Owner, however, failed to
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`file a copy of these articles in these proceedings and, therefore, we cannot
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`consider them. See 37 C.F.R. § 42.63(a) (“All evidence must be filed in the
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`form of an exhibit.”).
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`We are not persuaded by Patent Owner that its proposed constructions
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`are the broadest reasonable construction of each term in light of the
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`Specification. Each of Patent Owner’s proposed constructions is overly
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`narrow because it incorporates features that are extraneous to the claims. If
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`a feature is not necessary to give meaning to what the inventor means by a
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`claim term, it would be “extraneous,” and should not be read into the claim.
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`Renishaw, 158 F.3d at 1249; E.I. du Pont, 849 F.2d at 1433. These features
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`include the menu having preprogrammed functionality based on restaurant
`
`style, preparation methods, pricing and how the food is to be served to the
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`customer; the menu having functionality that allows for coursing; and the
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`menu having functionality that allows for the order to be placed all at one
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`time. We see nothing in the limitations, themselves, that require such
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`features. We see nothing in the Specification, and Patent Owner points to
`
`nothing in the Specification (see PO Resp. 42–44), that requires these
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`limitations to include such features or that even discloses such features.
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`Further, we are not persuaded by Patent Owner’s argument that the
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`knowledge of a person of ordinary skill in the art “compels” such a
`
`construction (id. at 43) because Patent Owner presents only attorney
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`argument, unsupported by evidence. In re Geisler, 116 F.3d 1465, 1470
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`(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
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`“a wireless computing device” is a reference to the “wireless handheld
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`computing device” that is recited in claim 1, and, therefore, should not be
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`construed to encompass a wireless laptop or desktop PC. PO Resp. 74–75.
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`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
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`would have used the definite article ‘the’ rather than generically reciting ‘via
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`wireless device.’” Reply 14–15. We are persuaded by Petitioner that the
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`recitation of “a wireless computing device” in claim 6 does not require that
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`the wireless computing device be handheld or preclude a wireless laptop or
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`desktop PC. Patent Owner’s proposed construction again attempts to read
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`extraneous features into the claim.
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`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
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`menu is applicable to a recited type of ordering. A definition of “applicable”
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`is “capable of or suitable for being applied.” MERRIAM-WEBSTER’S
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`COLLEGIATE DICTIONARY, 56 (10th ed. 1998). This definition is consistent
`
`with the Specification, which discloses that the modified menu can be
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`generated so that it includes items that satisfy c