Paper No. 27
`Filed September 18, 2014
`
`
`
`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 6,871,325 B1
`_____________
`
`Before JAMESON LEE, MEREDITH C. PETRAVICK, and
`STACEY G. WHITE, Administrative Patent Judges.
`
`
`
`
`PETITIONER’S REPLY BRIEF
`
`
`Filed September 18, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`AGILYSYS, INC., ET AL.
`Petitioner
`
`v.
`
`AMERANTH, INC.
`Patent Owner
`_____________
`
`Case CBM2014-00016
`Patent 6,871,325 B1
`_____________
`
`Before JAMESON LEE, MEREDITH C. PETRAVICK, and
`STACEY G. WHITE, Administrative Patent Judges.
`
`
`
`
`PETITIONER’S REPLY BRIEF
`
`
`
`TABLE OF CONTENTS
`
`
`
`I.
`II.
`
`2.
`
`3.
`
`INTRODUCTION .......................................................................................... 1
`CLAIM CONSTRUCTION ........................................................................... 1
`A.
`PO’s Construction of the Preamble Should Be Rejected ..................... 2
`PO’s own arguments require that the preamble is non-
`1.
`limiting. ...................................................................................... 3
`The BRI of the preamble cannot include limitations
`found only in other claims. ........................................................ 6
`PO’s preamble construction is contrary to the intrinsic
`record.......................................................................................... 7
`PO’s Construction of “Central Processing Unit” Is Incorrect ............. 7
`B.
`III. CLAIMS 1-10 ARE NOT PATENTABLE UNDER SECTION 101 ............ 8
`Alice Did Not Merge Section 101 with Sections 102 and 103 ............ 9
`A.
`B.
`The Claims Do Not Include an Inventive Concept ............................ 10
`C.
`The Dependent Claims Do Not Add Any Meaningful
`Limitations .......................................................................................... 14
`IV. CONCLUSION ............................................................................................. 15
`
`
`
`
`
`
`
`
`-i-
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`
`
`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Accenture Global Servs., GmbH v. Guidewire Software, Inc.,
`728 F.3d 1336 (Fed. Cir. 2013) .......................................................................... 10
`
`Alice Corp. Pty. LTD v. CLS Bank Int’l,
`134 S. Ct. 2347 (2014) .......................................................................... 1, 9, 11, 14
`
`Allen Eng’g Corp. v. Bartell Indus.,
`299 F.3d 1336 (Fed. Cir. 2002) ................................................................ 4, 12, 15
`
`In re Am. Acad. of Sci. Tech. Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) ........................................................................ 2, 8
`
`Bancorp Servs. L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), L.L.C.,
`687 F.3d 1266 (Fed. Cir. 2012) ...................................................................... 2, 15
`
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) ............................................................................ 4
`
`Catalina Mktg Int’l, Inc. v. Coolsavings.com, Inc.,
`289 F.3d 801 (Fed. Cir. 2002) .......................................................................... 4, 5
`
`Cybersource Corp. v. Retail Decisions, Inc.,
`654 F.3d 1366 (Fed. Cir. 2011) .................................................................... 13, 15
`
`DietGoal Innovations LLC v. Bravo Media LLC,
`No. 13-cv-8391, 2014 U.S. Dist. LEXIS 92484 (S.D.N.Y. July 8,
`2014) ............................................................................................................. 12, 13
`
`Elekta Instrument S.A. v. O.U.R. Scientific Int’l, Inc.,
`214 F.3d 1302 (Fed. Cir. 2000) ............................................................................ 7
`
`Gottschalk v. Benson,
`409 U.S. 63 (1972) ................................................................................................ 9
`
`K-2 Corp. v. Salomon S.A.,
`191 F.3d 1356 (Fed. Cir. 1999) ............................................................................ 2
`
`
`
`
`
`
`
`-ii-
`
`
`
`
`
`
`
`Kara Tech. Inc. v. Stamps.com, Inc.,
`582 F.3d 1341 (Fed. Cir. 2009) ............................................................................ 6
`
`Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
`132 S. Ct. 1289 (2012) .......................................................................................... 9
`
`Parker v. Flook,
`437 U.S. 584 (1978) ........................................................................................ 3, 15
`
`STATUTES
`35 U.S.C. § 101 .................................................................................................passim
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.300(b) ................................................................................................ 2
`
`MPEP § 2111.02 .................................................................................................... 5, 6
`
`
`
`
`
`
`
`
`
`
`
`
`
`-iii-
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`
`
`
`LIST OF NEWLY FILED EXHIBITS
`
`DESCRIPTION (BOLDED IF USED)
`EXHIBIT NO.
`FANDANGO 1001 U.S. Patent No. 8,146,077
`
`FANDANGO 1009
`
`FANDANGO 1066
`
`’077 Notice of Allowability Examiner’s Amendment
`U.S. Bancorp v. Retirement Capital Access Mgmt Co.,
`CBM2013-00014, Paper No. 33 (P.T.A.B. August 22,
`2014)
`FANDANGO 1067 Ameranth, Inc. v. Par Technology Corp., No. 2:10-CV-
`294, Dkt. No. 70 (E.D. Tex. Dec. 23, 2010)
`FANDANGO 1068 Ameranth, Inc. v. Fandango, Inc., No. 3:12-CV-1651,
`Dkt. No. 23 (S.D. Cal. Nov. 8, 2012)
`FANDANGO 1069* Roof, Professional Visual Basic Windows CE
`Programming (Wrox Press Ltd. 1998) (excerpts)
`FANDANGO 1070* Shepherd and Wingo, “Visual Programmer,” Microsoft
`Sys. J., Vol. 13, No. 5, at 97 (Feb. 1998)
`
`FANDANGO 1071 U.S. Patent No. 4,972,496
`
`FANDANGO 1072 “Microsoft Introduces Palm PC, PC Companion
`Powered by Windows CE 2.0” (Jan. 8, 1998), located
`at http://www.microsoft.com/en-us/news/press/1998/
`jan98/palmpcpr.aspx (last visited Sept. 16, 2014)
`
`FANDANGO 1073 European Patent Publication No. EP 0917077A2
`
`FANDANGO 1074 U.S. Patent No. 5,974,238
`* Denotes exhibits not cited in and not filed with this petition.
`
`
`
`
`
`
`
`
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`-iv-
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`
`
`I.
`
`INTRODUCTION
`
`The Board instituted this CBM Review because it determined “that
`
`Petitioner has established that claims 1-10 are more likely than not unpatentable
`
`under 35 U.S.C. § 101.” Paper 19 at 20 [Institution Decision] (“ID”). Nothing in
`
`Patent Owner’s Response (“POR”) changes the reasoned and correct conclusions
`
`in the ID that claims 1-10 are directed to the abstract idea of “generating menus”
`
`and are not meaningfully limited to a particular practical application. ID at 23-24.
`
`The Supreme Court’s recent Alice v. CLS Bank decision confirmed that
`
`where a claim is directed to a patent-ineligible abstract idea (as the Board has
`
`already found here), the proper inquiry under § 101 is whether the additional
`
`elements of the claims—individually and as an ordered combination—provide an
`
`inventive concept sufficient to “transform” the claimed abstract idea into a patent-
`
`eligible application. 134 S. Ct. 2347, 2355 (2014). As the Board correctly found,
`
`the specification itself describes each of the “additional elements” of claims 1-10
`
`as “typical” or “conventional” hardware and software elements, which Alice
`
`confirmed cannot confer patent eligibility. See Alice, 134 S. Ct. at 2358. The
`
`Board should therefore issue a Final Written Decision canceling claims 1-10.
`
`II. CLAIM CONSTRUCTION
`PO attempts to render its claims patent-eligible by importing limitations via
`
`claim construction that the Board previously determined are not in the claims. See
`
`1
`
`
`
`
`
`ID at 13. Such attempts to improperly rewrite its claims should be rejected. See
`
`K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1364 (Fed. Cir. 1999).
`
`The Board determined that, with the exception of the term “web page,” “[a]ll
`
`other terms in the challenged claims need no express construction at this time.” ID
`
`at 8. Nonetheless, PO proposed constructions for 22 different claim terms, without
`
`explaining their relevance to this proceeding. POR (Paper 26) at 33-35. Contrary
`
`to PO’s assertion that “the Board must construe the entirety of the challenged
`
`claims” (POR at 30), claim construction “is not an inviolable prerequisite to a
`
`validity determination under § 101.” Bancorp Servs. L.L.C. v. Sun Life Assur. Co.
`
`of Canada (U.S.), L.L.C., 687 F.3d 1266, 1273 (Fed. Cir. 2012). Thus, while
`
`Petitioner disagrees with many of PO’s constructions, most of them are not
`
`relevant to the § 101 issues. Therefore, only two are discussed below.
`
`In a CBM Review, a claim in an unexpired patent is “given its broadest
`
`reasonable construction in light of the specification of the patent in which it
`
`appears.” 37 C.F.R. § 42.300(b). This standard differs from that in district court
`
`(contra POR at 29), and Petitioner reserves the right to advocate different
`
`constructions in another forum in accordance with the applicable standard. See In
`
`re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004).
`
`PO’s Construction of the Preamble Should Be Rejected
`
`A.
`The Board correctly determined that “claim 1 does not contain any
`
`2
`
`
`
`
`
`recitations related to displaying and synchronizing computerized menus on non-
`
`standard devices/interfaces,” and “claim 1 is directed to a system for generating a
`
`menu.” ID at 13-14. Rather than properly seeking to amend its claims to recite
`
`detailed synchronization requirements or sequencing of cascaded menus (as found
`
`in other claims), PO argues those elements are already present by construing the
`
`preamble of claim 1 (and claims 7-9, which contain the same preamble) in a
`
`manner contrary to the intrinsic evidence and cited authorities.
`
`1.
`
`PO’s own arguments require that the preamble is non-limiting.
`
`PO asserts that it has “adopt[ed] and accept[ed] all of the previous judicial
`
`constructions... and urges the Board to adopt them for this proceeding as well . . . .”
`
`POR at 29 (emphasis in original) (citing claim construction orders from Judge
`
`Everingham in Ameranth v. Menusoft and Judge Payne in Ameranth v. Par). PO
`
`also asserts
`
`that
`
`the
`
`term “information management and synchronous
`
`communications system,” which is found in the preambles of claims of claims 1
`
`and 7-9 and also claims 11-13, is limiting and cites Judge Everingham’s preamble
`
`construction in support. POR at 35. However, Judges Everingham and Payne
`
`adopted inconsistent constructions of the preamble language. Judge Everingham
`
`did not address whether the preamble of claim 1 should be considered a limitation
`
`(Exhibit 2014 at 6-8) because, as PO admits, the parties in that case (none of which
`
`comprise Petitioner here) stipulated that the preamble should be considered a
`
`3
`
`
`
`
`
`limitation. POR at 35. By contrast, Judge Payne determined that the preamble of
`
`claims 11-13 (which similarly recites “an
`
`information management and
`
`synchronous communications system”) was not limiting because: “Neither party
`
`has identified a single aspect of the preamble that is necessary to define the scope
`
`of the claims, or is not already captured as a limitation in the body of the claims.”
`
`Exhibit 2017 at 4-5. Should the Board accept PO’s adoption of all prior judicial
`
`constructions, the proper way to resolve this inconsistency under the BRI is to
`
`adopt the broader construction, namely, that the preamble is non-limiting. In re
`
`Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“Absent claim language carrying a
`
`narrow meaning, the PTO should only limit the claim based on the specification or
`
`prosecution history when
`
`those sources expressly disclaim
`
`the broader
`
`definition.”).
`
`Judge Payne’s determination is also consistent with the rule that,
`
`“[g]enerally, the preamble does not limit the claims.” Allen Eng’g Corp. v. Bartell
`
`Indus., 299 F.3d 1336, 1346 (Fed. Cir. 2002). For example, “a preamble is not
`
`limiting where a patentee defines a structurally complete invention in the claim
`
`body and uses the preamble only to state a purpose or intended use for the
`
`invention.” Catalina Mktg Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808
`
`(Fed. Cir. 2002) (internal quotations omitted). As Judge Payne determined with
`
`respect to claims 11-13, the bodies of claims 1 and 7-9 define a structurally
`
`4
`
`
`
`
`
`complete invention. The preamble does not recite any structural components, and
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`PO does not suggest otherwise. POR at 35-36. Nor does the preamble serve as the
`
`antecedent basis for any terms recited in the body of the claim. See Catalina, 289
`
`F.3d at 808. Instead, the preamble merely sets forth the purpose (“information
`
`management and synchronous communication”) and intended use (“for generating
`
`and transmitting menus”) of the claimed invention. See Exhibit 1066, U.S.
`
`Bancorp v. Retirement Capital Access Mgmt Co., CBM2013-00014, Paper 33, at
`
`14-15 (P.T.A.B. August 22, 2014) (finding “computerized method” in preamble to
`
`be a statement of intended use and thus not a meaningful claim limitation for
`
`Section 101 analysis).
`
`Moreover, when (as here) a patent applicant does not rely on preamble
`
`language to distinguish over the prior art, the preamble is generally not limiting.
`
`Catalina, 289 F.3d at 808-09; MPEP § 2111.02. And, contrary to PO’s contention
`
`(POR at 36), the Examiner for the related ’850 Patent did not rely on the preamble
`
`to distinguish prior art. Instead, the Examiner stated:
`
`Each independent claims 20 and 40 are identified [sic] the uniquely
`distinct features “a sub-modifier menu stored on data storage device
`and displayable in a window of graphical user interface, and
`application software for generating a second menu from first menu
`and transmitting second menu to a wireless handheld computing
`device or Web page.” [Exhibit 1035 at 7 (emphasis in original)].
`
`5
`
`
`
`
`
`Because (1) the claim body defines a structurally complete invention, (2) the
`
`preamble merely recites the purpose and intended use of the invention, (3) there
`
`was no reliance on the preamble to distinguish prior art, and (4) the BRI requires
`
`adoption of the broader non-limiting construction adopted by PO, PO’s arguments
`
`compel the conclusion that the preamble is not a limitation. See MPEP § 2111.02;
`
`see also Exhibit 1066 at 14-15.
`
`2.
`
`The BRI of the preamble cannot include limitations found only
`in other claims.
`
`The preamble of claims 11-13 of the ’325 patent, like the preamble of claims
`
`1 and 7-9, recites “a synchronous communications system.” However, unlike
`
`claims 1 and 7-9, claims 11-13 include an express synchronization requirement:
`
`“wherein applications and data are synchronized between the central data base, at
`
`least one wireless handheld computing device, at least one Web server and at least
`
`one Web page.” Exhibit 1032 at 17:18-20, 18:1-3, 18:24-26 (emphasis added).
`
`This is exactly the requirement that PO is attempting to import into claim 1 via its
`
`interpretation of “synchronous communications system” in the preamble. POR at
`
`33. However, because the “are synchronized” limitation is recited in claims 11-13
`
`but not in claims 1 and 7-9, claims 1 and 7-9 cannot be construed as including it.
`
`See Kara Tech. Inc. v. Stamps.com, Inc., 582 F.3d 1341, 1347 (Fed. Cir. 2009).
`
`Indeed, construing “synchronous communications system” in the preamble of
`
`claims 11-13 as requiring the “wherein” clause of claims 11-13 would improperly
`
`6
`
`
`
`
`
`render that wherein clause superfluous. See Elekta Instrument S.A. v. O.U.R.
`
`Scientific Int’l, Inc., 214 F.3d 1302, 1306-07 (Fed. Cir. 2000); see also Exhibit
`
`1067 at 5, Ameranth, Inc. v. Par Tech. Corp., No. 2:10-CV-294, Dkt. No. 70 (E.D.
`
`Tex. Dec. 23, 2010) (wherein PO argued differences between claims 12 and 1 of
`
`the related ’850 Patent are “striking” and “easily discernable”).
`
`3.
`
`PO’s preamble construction is contrary to the intrinsic record.
`
`Even if the preamble were limiting, PO’s proposed construction is not
`
`supported by the intrinsic evidence. PO proposes a construction that requires a
`
`distributed system including both a “central server” and “client devices.” POR at
`
`33. Yet, nothing in the specification indicates that a “central server” or “client
`
`devices” are used to generate or transmit menus. PO’s construction would
`
`improperly exclude the preferred embodiment in which a “desktop PC” both
`
`generates and transmits menus to handheld devices. Exhibit 1032 at 6:33-36
`
`(“desktop PC” used to generate and transmit menus “in conformance with the
`
`preferred embodiment”) and 8:59-9:6 (user selects “File>Download Database” on
`
`desktop PC to transmit menu to handheld device).
`
` PO’s Construction of “Central Processing Unit” Is Incorrect
`
`B.
`The claim term “central processing unit” in claims 1 and 7-9 should be
`
`afforded its plain and ordinary meaning, i.e., a “microprocessor.”
`
` The
`
`specification consistently uses the term in accordance with its plain meaning. See,
`
`7
`
`
`
`
`
`e.g., Exhibit 1032 at 5:43-45 (“central processing unit (‘CPU’), e.g. a Pentium
`
`microprocessor”); 5:54-56. No intrinsic evidence offers any alternative definition
`
`of this common technical term. Accordingly, the BRI of “central processing unit”
`
`is a “microprocessor.” In re Am. Acad., 367 F.3d at 1364.
`
`PO’s construction (“central server”) is inconsistent with the plain meaning
`
`and contrary to the specification. While PO contends that the term “cannot be
`
`construed as a broadly generic CPU” because this “would conflict with usage in
`
`the specification” (POR at 37), PO cites no intrinsic evidence showing an intent to
`
`redefine the term. Nor can it, as the specification consistently uses the term in
`
`accordance with its plain meaning by repeatedly equating it with a microprocessor.
`
`Exhibit 1032 at 5:43-45, 54-56. PO’s citation to Judge Everingham provides no
`
`support, as PO cites construction of a different claim term. POR at 36 (citing
`
`Exhibit 2014 at 8) (discussing “information management and synchronous
`
`communications system”). PO’s construction should, therefore, be rejected.
`
`III. CLAIMS 1-10 ARE NOT PATENTABLE UNDER SECTION 101
`The Board correctly determined that claims 1-10 are drawn to the patent-
`
`ineligible abstract idea of generating menus. Thus, the question remaining under
`
`the Mayo/Alice test is whether the claims contain an “inventive concept” sufficient
`
`to “transform” the abstract idea into a patent-eligible application of that concept.
`
`They do not, as explained below.
`
`8
`
`
`
`
`
`A. Alice Did Not Merge Section 101 with Sections 102 and 103
`PO’s argument that the “inventive concept” prong of the Mayo/Alice test is
`
`about determining “novelty and nonobviousness” finds no basis in Alice. The sole
`
`alleged basis for PO’s argument is the following: “‘[A]pplication[s]’ of such
`
`concepts ‘to a new and useful end,’ we have said, remain eligible for patent
`
`protection.” Alice, 134 S. Ct. at 2354 (quoting Gottschalk v. Benson, 409 U.S. 63,
`
`67 (1972)). The use of the phrase “new and useful” in Alice and Benson is nothing
`
`remarkable: that phrase comes straight out of § 101 itself. Thus, PO’s repeated
`
`attempts to equate this phrase with “novelty and nonobviousness”—thereby
`
`merging § 101 with §§ 102 and 103—are misplaced. See, e.g., POR at 2-3, 22, 27,
`
`42-43, 55. Indeed, Mayo explicitly states that § 101 cannot be merged with §§
`
`102 and 103. Mayo v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1303-04 (2012).
`
`Instead, the “inventive concept” prong asks whether the “additional
`
`elements” of the claim, beyond the abstract idea, provide an inventive concept.
`
`Alice, 134 S. Ct. at 2355. “[M]erely requiring generic computer implementation
`
`fails to transform [an] abstract idea into a patent-eligible invention.” Id. at 2352.
`
`Even if Alice did—and it does not—endorse a § 103 obviousness analysis as
`
`part of the § 101 analysis, the claims are not novel and nonobvious, as determined
`
`by the jury for claims 6, 9, and 10 in the Menusoft action. Exhibit 1006 at 2. In
`
`addition, the Patent Office required amendment of claims in related applications to
`
`9
`
`
`
`
`
`include additional requirements not found in claims 1-10. See Exhibit 1009, ’077
`
`Patent Notice of Allowability at 5, 11, 14, 17. Finally, to the extent secondary
`
`considerations are even relevant to patent eligibility under § 101 (POR at 18-21),
`
`PO failed to establish the required nexus between those secondary considerations
`
`and the limitations of claims 1-10, particularly in view of PO’s erroneous claim
`
`constructions and the Patent Office’s prior determinations.
`
`The Claims Do Not Include an Inventive Concept
`
`B.
`Claims 1-10 lack an “inventive concept” because they merely broadly recite
`
`the abstract idea of menu generation and nothing more. PO incorrectly contends
`
`that the claims include meaningful limitations that the Board overlooked, but PO
`
`relies primarily on limitations that are irrelevant to patent eligibility because they
`
`are not in the claims at all. See, e.g., Accenture Global Servs., GmbH v. Guidewire
`
`Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013). For instance, PO repeatedly
`
`contends that the claims are directed to a “continuously synchronous” system that
`
`“maintains synchronization” and “maintains equilibrium” between the claimed
`
`devices, but there are no such limitations in the claims or even in PO’s proposed
`
`constructions, including the preamble. POR at, e.g., 9, 11, 26, 64. Moreover, even
`
`assuming the preamble is limiting, it does not recite any meaningful limitation that
`
`would provide the necessary “inventive concept.”
`
` The preamble phrase
`
`“information management and synchronous communication system” is not linked
`
`10
`
`
`
`
`
`to any of the other claim limitations and fails to refer to any specific computer
`
`system, and thus it is, at best, merely a generic reference to conventional computer
`
`technology. “[T]he mere recitation of a generic computer cannot transform a
`
`patent-ineligible abstract idea into a patent-eligible invention.” Alice, 134 S. Ct. at
`
`2358. In any event, wirelessly synchronizing handheld computers was not novel.
`
`See Exhibit 1073, Euro. Pat. Pub. No. EP 0917077A2 at Abstract (discussing use
`
`of wireless communication paths such as cellular networks for synchronizing data
`
`files between a PC and a PDA); Exhibit 1074, U.S. Patent No. 5,974,238 at 3:26-
`
`52 (discussing wireless synchronization between handheld and host computers).
`
`Likewise, PO contends that the claims are limited by the specification to
`
`customized display layouts for various sized handheld devices. POR at 14-16, 27,
`
`49. However, unlike the claims of the ’077 patent, claims 1-10 do not require
`
`customized layouts. One limitation that PO relies on that actually appears in the
`
`claims is “wireless handheld computing device.” POR at 10, 54, 62, 74. But as
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`PO argued, such a device need not be present to practice the claims:
`
`Judge Everingham’s construction of claim 1 [of the ’850 Patent]
`indisputably does not require a wireless handheld computing device
`or any third-party action: “The court construes this term . . . to mean
`‘application software, which is capable of transmitting to both
`wireless handheld computing devices and Web pages . . . .’” [Exhibit
`1068 at 4, Ameranth, Inc. v. Fandango, Inc., No. 3:12-CV-1651, Dkt.
`No. 23 (S.D. Cal. Nov. 8, 2012) (emphasis in original)].
`11
`
`
`
`
`
`PO’s reliance on the recited “ordering” functionality in claim 1 is similarly
`
`misplaced. POR at 69. Although PO argues that this functionality avoids
`
`preempting all uses of menus on computers by limiting the claim to a particular
`
`application (i.e., the ability to display menus on a “non standard wireless handheld
`
`computing device”), PO’s own proffered claim constructions make no mention of
`
`“non standard” wireless handheld computing devices. Moreover, where PO
`
`wanted to claim displays specific to particular types of wireless devices, it did so
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`expressly (and referenced elements such as cascading sets of views) in claims of
`
`the ’077 Patent. See Exhibit 1001 at, e.g., 17:16-18. Ameranth’s failure to include
`
`such limitations in its claims precludes Ameranth from reading the limitations into
`
`the claims through claim construction. Allen Eng’g, 299 F.3d at 1349; see also
`
`Exhibit 1066 at 8 (declining to read limitations into claims via claim construction).
`
`A recent post-Alice case is instructive here. In DietGoal Innovations LLC v.
`
`Bravo Media LLC, the claims were directed to computerized meal planning, and
`
`recited, for example, “a User Interface,” “a Database of food objects organizable
`
`into meals,” and “Picture Menus.” No. 13-cv-8391, 2014 U.S. Dist. LEXIS 92484,
`
`at *4-5 (S.D.N.Y. July 8, 2014). Applying Alice and Bilski, the court found the
`
`claims were directed to the “abstract concept of selecting meals for the day,
`
`according to one’s particular dietary goals and food preferences” (id. at *30-31),
`
`which is very similar to the abstract idea at the heart of PO’s claims—generating
`
`12
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`
`
`
`
`menus. The court found that the claimed concept of meal-planning is at least as
`
`“long prevalent” “as the economic practices of risk-hedging (invalidated in Bilski)
`
`and intermediated settlement (invalidated in Alice).” Id. at *31. This same
`
`reasoning applies to generating menus. The ’325 Patent “merely ‘provides a new
`
`and presumably better method’” for generating menus. Id. at *34 (quoting Parker
`
`v. Flook, 437 U.S. 584, 594 (1978)). “This is not the kind of ‘discover[y]’ that §
`
`101 was designed to protect.” Id. (citing Flook, 437 U.S. at 593; Cybersource
`
`Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011)). Indeed, the
`
`specification confirms the lack of an inventive concept. As the Board recognized:
`
`The specification, itself, describes that CPUs, data storage devices,
`and operating systems are typical hardware elements. Ex. 1032, 5:39-
`5:61; 5:62-6:3. The specification describes that Windows CE®, which
`is utilized by a preferred embodiment of the present invention,
`provides a basic set of database and communication tools. Ex. 1032,
`11:9-18. The specification describes that GUI’s that display menus
`from which records can be . . . modified . . . are conventional. Ex.
`1032, 4:64-5:23; 5:62-67. [ID at 23 (emphasis added)].
`
`Furthermore, PO’s argument that “such programming is not trivial” (POR at
`
`10) is belied by the specification, which expressly states: “[t]he software
`
`applications for performing the functions falling within the described invention can
`
`be written in any commonly used computer language. The discrete programming
`
`steps are commonly known and thus programming details are not necessary . . . .”
`
`13
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`
`
`
`
`Exhibit 1032 at 11:56-60 (emphases added). The specification does not disclose
`
`any algorithm, flowchart, or diagram identifying special programming steps. Even
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`the function of synchronizing data on a wireless handheld device (which is not a
`
`claim limitation) relied on by PO as an allegedly inventive feature (see, e.g., POR
`
`at 54) is described as a “built-in” feature of the Windows CE operating system.
`
`Exhibit 1032 at 11:11-16; see also Exhibit 1072, “Microsoft Introduces Palm PC,
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`PC Companion Powered by Windows CE 2.0” at 1.
`
`Thus, each of PO’s claims “does no more than require a generic computer to
`
`perform generic computer functions.” Alice, 134 S. Ct. at 2359; see also Exhibit
`
`1066 at 18 (canceling claims under Section 101 because “the use of a computer in
`
`a generalized fashion to increase efficiency does not meaningfully limit an
`
`otherwise abstract claim”). Additionally, when viewed as a whole, the computer
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`components of PO’s claims do not add anything patentable that is not already
`
`present when the elements are considered separately. Claim 1 does not, for
`
`example, purport to improve the functioning of the computer itself or effect an
`
`improvement in any other technology or technical field. See, e.g., Alice, 134 S. Ct.
`
`at 2359. Indeed, the Board has already found that claim 1 “does not recite a
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`technical solution to a technical problem.” ID at 14.
`
`C. The Dependent Claims Do Not Add Any Meaningful Limitations
`PO contends the dependent claims add further meaningful limitations. For
`
`14
`
`
`
`
`
`instance, PO’s incorrectly asserts that the recitation of a “wireless device” in claim
`
`6 refers to a “wireless handheld computing device” as recited in claim 1 (POR at
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`75). Claim 6 does not recite “handheld,” and claim 6 cannot be rewritten to
`
`include this element. Allen Eng’g, 299 F.3d at 1349. Moreover, if the wireless
`
`computing device of claim 6 were a reference to the wireless handheld computing
`
`device of claim 1, claim 6 would have used the definite article “the” rather than
`
`generically reciting “via wireless device.” In addition, if PO wanted the claim to
`
`require that the menu be “customized” for display on a wireless handheld, it knew
`
`how to do so expressly. See Exhibit 1001 at, e.g., 16:22-23.
`
`PO similarly tries to rely upon elements of the other dependent claims to
`
`establish patent eligibility, namely, “table-based customer ordering,” “drive thru
`
`ordering,” and “recipe content.” Such elements are, at most, insignificant extra-
`
`solution activity that cannot save subject matter from patent ineligibility. Flook,
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`437 U.S. at 590. Moreover, there is no reason those limitations could not be
`
`performed with a pen and paper, and therefore they do not transform the claims
`
`into patent-eligible subject matter. Cybersource, 654 F.3d at 1372; Bancorp, 687
`
`F.3d at 1279.
`
`IV. CONCLUSION
`For the reasons set forth above and in the Petition, claims 1-10 of the ’325
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`Patent are unpatentable under 35 U.S.C. § 101 and should be cancelled.
`
`15
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`Dated: September 18, 2014
`
`Respectfully submitted,
`
`/s/ Richard S. Zembek
`Richard S. Zembek
`Reg. No. 43,306
`FULBRIGHT & JAWORSKI L.L.P.
`1301 McKinney, Suite 5100
`Houston, Texas 77010
`Tel: 713-651-5151
`Fax: 713-651-5246
`richard.zembek@nortonrosefulbright.com
`
`Gilbert A. Greene
`Reg. No. 48,366
`FULBRIGHT & JAWORSKI LLP
`98 San Jacinto Boulevard, Suite 1100
`Austin, TX 78701
`Tel: 512.474.5201
`Fax: 512.536.4598
`bert.greene@nortonrosefulbright.com
`
`Attorneys for Petitioner
`
`
`
`
`16
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`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that on September 18, 2014, the foregoing Petitioner’s
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`Reply Brief was served was served by electronic mail upon the following lead and
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`backup counsel of record for Patent Owner Ameranth, Inc.:
`
`John W. Osborne
`
`josborne@osborneipl.com
`
`Michael D. Fabiano
`
`mdfabiano@fabianolawfirm.com
`
`
`
`
`
`
`
`/s/ Richard S. Zembek
`Richard S. Zembek
`Reg. No. 43,306
`
`17
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`
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