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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`
`
`EBAY ENTERPRISE, INC. AND EBAY, INC.
`Petitioners
`
`v.
`
`LAWRENCE B. LOCKWOOD
`Patent Owner
`__________________
`
`Case CBM2014-00025
`U.S. Patent No. 7,010,508
`____________________
`
`
`Lockwood’s Patent Owner Response
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`

`

`CBM2014-00025
`
`TABLE OF CONTENTS
`I.
`Introduction ...................................................................................................... 1
`Legal Framework ............................................................................................. 3
`II.
`III. The ’508 patent describes computer-implementable algorithms and/or actual
`structure corresponding to the claimed functions. ........................................... 8
`A.
`The specification describes a specific algorithm and actual structure to
`implement “means for selectively and interactively presenting,”
`satisfying the definiteness requirement of 35 U.S.C. § 112, ¶ 2. .......... 9
`1.
`The Claimed Function. ..............................................................10
`a)
`“interrelated textual and graphical data describing a
`plurality of transaction options” ....................................11
`b)
`“selectively and interactively presenting” .....................15
`The ’508 patent describes an algorithm that converts a general-
`purpose computer into a special-purpose computer
`corresponding to the selectively and interactively presenting
`function. ....................................................................................17
`The ’508 patent describes actual structure corresponding to the
`selectively and interactively presenting function......................23
`The ’508 patent provides a nexus between the claimed
`“selectively and interactively presenting” function and the
`description of the algorithm and structure that implements that
`function. ....................................................................................27
`The specification describes a specific algorithm and actual structure to
`implement "means for processing interrelated textual and graphical
`data," satisfying the definiteness requirement of 35 U.S.C. § 112, ¶ 2.
` .............................................................................................................30
`1.
`The Claimed Function ...............................................................33
`2.
`The ’508 patent describes an algorithm that converts a general-
`purpose computer into a special-purpose computer
`corresponding to the "processing interrelated textual and
`graphical data" function. ..........................................................34
`The ’508 patent describes actual structure corresponding to the
`"processing interrelated textual and graphical data" function..
` ...................................................................................................40
`The ’508 patent provides a nexus between the claimed
`"processing interrelated textual and graphical data" function
`and the description of the algorithm and structure that
`implements that function. ..........................................................47
`The specification describes a specific algorithm and actual structure to
`implement “backward-chaining and forward-chaining sequences”
`- i -
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`C.
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`2.
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`3.
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`4.
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`B.
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`3.
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`4.
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`CBM2014-00025
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`function, satisfying the definiteness requirement of 35 U.S.C. § 112, ¶
`2. ..........................................................................................................50
`1.
`The Claimed Function ...............................................................53
`2.
`The ’508 patent describes an algorithm that converts a general-
`purpose computer into a special-purpose computer
`corresponding to the “backward-chaining and forward-
`chaining sequences” function. ..................................................55
`The ’508 patent provides a nexus between the claimed
`“backward-chaining and forward-chaining sequences” function
`and the description of the algorithm that implements that
`function. ....................................................................................69
`IV. The Board should enter a final decision that the ’508 patent’s claims are not
`indefinite because eBay has not submitted the required expert-witness
`testimony that the ’508 patent failed to describe sufficient corresponding
`structure for its claimed “indicating” and “interrelating” functions. ............72
`
`3.
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`CBM2014-00025
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`Table of Authorities
`
`Cases
`Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co.,
`598 F.3d 1336 (Fed. Cir. 2010) .....................................................................70
`
`Aristocrat Techs. Australia Pty. Ltd. v. Int'l Game,
`Tech., 521 F.3d 1328 (Fed. Cir. 2008) ............................................................ 5
`
`Atmel Corp. v. Information Storage Devices, Inc.,
`198 F.3d 1374 (Fed. Cir. 1999) ...................................................................5, 6
`
`Augme Technologies v. Yahoo, Inc.,
`2014 WL 2782019 (Fed. Cir. 2014) ................................................................ 4
`
`Chicago Bd. Options Exchange, Inc. v. International Securities
`Exchange, LLC,
`748 F.3d 1134 (Fed. Cir. 2014) .....................................................................72
`
`Creo Products, Inc. v. Presstek, Inc.,
`305 F. 3d 1337 (Fed. Cir. 2002) ...................................................................... 6
`
`Elcommerce.com v. SAP AG,
`745 F.3d 490 (Fed. Cir. 2014) ............................................................... passim
`
`Finisar Corp. v. DirecTV,
`523 F.3d 1323 (Fed. Cir. 2008) ....................................................................... 6
`
`In re Aoyama,
`656 F.3d 1293, 1297 (Fed. Cir. 2011) ............................................................. 7
`
`Intel Corp. v. VIA Technologies, Inc.,
`319 F.3d 1357 (Fed. Cir. 2003) .....................................................................72
`
`Levine v. Samsung Telecommunications Am., LLC,
`2012 WL 383647 (E.D. Tex. 2012) ................................................................. 7
`
`Nautilus, Inc. v. Biosig Instruments, Inc.,
`134 S.Ct. 2120 (2014) ..................................................................................3, 4
`
`Noah Systems, Inc. v. Intuit Inc.,
`675 F.3d 1302 (Fed. Cir. 2012) .................................................................4, 73
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`CBM2014-00025
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`SIPCO, LLC v. ABB, Inc.,
`2012 WL 3112302 (E.D.Tex. 2012) ............................................................2, 6
`
`Stanacard, LLC v. Rebtel Networks, AB,
`680 F.Supp.2d 483 (S.D.N.Y. 2010) ............................................................... 7
`
`Triton Tech of Texas, LLC v. Nintendo of America,
`2014 WL 2619546 (Fed. Cir. 2014) ................................................................ 4
`
`Typhoon Touch Technologies, Inc. v. Dell, Inc.,
`659 F. 3d 1376 (Fed. Cir. 2011) ........................................................... 3, 4, 73
`
`W.L. Gore & Assocs., Inc. v. Garlock, Inc.,
`721 F.2d 1540 (Fed. Cir. 1983) ....................................................................... 3
`
`WMS Gaming Inc. v. International Game Technology,
`184 F.3d 1339 (Fed. Cir. 1999) ...................................................................5, 7
`
`Statutes
`
`35 U.S.C § 112 ................................................................................................. passim
`
`Regulations
`
`37 C.F.R. § 42.20(c) .................................................................................................72
`
`37 C.F.R. § 42.23 .....................................................................................................23
`
`77 Fed. Reg. 157 (Aug. 14, 2012)..................................................................... 24, 74
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`I.
`
`Introduction
`
`CBM2014-00025
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`The Board instituted this covered-business-method patent review on the
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`single question whether all claims of the ’508 patent are indefinite. The Board’s
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`decision is premised on its finding that three mean-plus-function terms of the ’508
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`patent, more likely than not, lack a description of sufficient corresponding
`
`structure—particularly adequate corresponding algorithms programmed to be
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`performed by a general purpose computer. The three relevant means-plus-function
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`terms are:
`
`1. “means for selectively and interactively presenting to said operator
`interrelated textual and graphical data describing a plurality of
`transaction options”
`2. “means for processing interrelated textual and graphical data
`describing a plurality of transaction options”
`3. “means for processing said operator-entered information,
`inquiries, and orders according to backward-chaining and
`forward-chaining sequences”
` Lockwood shows three independent reasons why the Board should enter a
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`final written decision confirming the patentability of the ’508 patent’s claims as
`
`not indefinite.
`
`First, the patent describes specific algorithms programmed to be performed
`
`by a general-purpose computer. Significantly, Lockwood provides actual extrinsic
`
`evidence demonstrating that a POSA would have understood the specification to
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`CBM2014-00025
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`describe these algorithms, lacking in the petition - expert-witness testimony of Dr.
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`Earl Sacerdoti. (Ex. 2022)
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`Second, eBay incorrectly focused only on whether there was a
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`corresponding algorithm while ignoring whether there was actual corresponding
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`structure—another independent basis to find Lockwood’s claims are not indefinite.
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`But the ’508 describes actual corresponding structure—not merely a general-
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`purpose computer—that performs two of the claimed functions. Specifically, the
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`’508 patent describes specific components, e.g., video screen 118, the videodisc
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`114, the RAM memory 117, the touch pad 119 or keyboard, and the data processor
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`113 that performs the “selectively and interactively presenting” and “processing
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`interrelated textual and graphical data” functions. See, e.g., SIPCO, 2012 WL
`
`3112302 at *29 (finding that a “site controller” “made up of general purpose
`
`computer components” was not a general-purpose computer but instead “defined
`
`adequate physical structure such that a [POSA] could determine the metes and
`
`bounds of the claim term.”) Actual structures have uniformly been held to satisfy
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`the definiteness requirement for a means-plus-function term. Id.
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`Third, eBay’s petition omits any extrinsic evidence of how a skilled artisan
`
`would have understood the claims or how a skilled artisan would have understood
`
`the intrinsic evidence, including the specification. This omission is decisive here
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`because evidence as to the perspective of a skilled artisan is necessary to find that a
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`CBM2014-00025
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`means-plus-function term is indefinite for lacking sufficient corresponding
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`algorithms or structure. See Elcommerce.com v. SAP AG, 745 F.3d 490, 506 (Fed.
`
`Cir. 2014); Typhoon Touch Technologies v. Dell Inc., 659 F. 3d 1376, 1385 (Fed.
`
`Cir. 2011). Without this basic evidence, the record of this covered-business-
`
`method patent proceeding cannot, as a matter of law, support any finding of
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`indefiniteness.
`
`II. Legal Framework
`For 35 U.S.C § 112 ¶ 2, the perspective of a person of ordinary skill in the
`
`art at the time of the patent application governs the definiteness analysis. W.L.
`
`Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1556–57 (Fed. Cir. 1983).
`
`“[A] means-plus-function clause is indefinite if a person of ordinary skill in the art
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`would be unable to recognize the structure in the specification and associate it with
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`the corresponding function in the claim.” Elcommerce.com, 745 F.3d at 501.1 The
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`1 The Supreme Court’s recent decision in Nautilus v. Biosig should not affect
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`the analysis of whether a means-plus-function limitation is supported by sufficient
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`corresponding structure. Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120
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`(2014). The Nautilus decision altered the prior insolubly-ambiguous standard for
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`indefiniteness, substituting a new reasonably-certain test. The issue here concerns
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`the proper test for means-plus-function claims. The Federal Circuit addressed the
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`proper test for means-plus-function in two recent post-Nautilus cases, neither of
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`CBM2014-00025
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`patent need only disclose sufficient structure for a person of skill in the art to
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`provide an operative software program for the specified function. Id. Therefore, the
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`detail that must be provided “depends on the subject matter that is described and its
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`role in the invention as a whole, in view of the existing knowledge in the field of
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`the invention.” Id.
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`And a finding that a means-plus-function term is indefinite must generally
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`be supported with evidence that a skilled artisan reading the patent at the time of
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`the invention would have understood it lacked structure corresponding to the
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`claimed functions.2 See Typhoon Touch, 659 F. 3d at 1385 (“The defendants have
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`directed us to no evidence that a programmer of ordinary skill in the field would
`
`not understand how to implement this function.”); Elcommerce.com, 745 F.3d at
`
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`which cite Nautilus on this issue. Augme Technologies v. Yahoo, Inc., 2014 WL
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`2782019 (Fed. Cir. 2014); Triton Tech of Texas, LLC v. Nintendo of America, 2014
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`WL 2619546 (Fed. Cir. 2014)
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`2 The Federal Circuit has recognized only one circumstance where expert-
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`witness testimony on the issue of adequate structure is not required: where the
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`patent is completely devoid of any structure. See Noah Sys., Inc. v. Intuit Inc., 675
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`F.3d 1302, 1313 (Fed. Cir. 2012). Lockwood shows below that this exceptional
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`circumstance is not present here.
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`CBM2014-00025
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`506 (“Without evidence, ordinarily neither the district court nor this court can
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`decide whether, for a specific function, the description in the specification is
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`adequate from the viewpoint of a person of ordinary skill in the field of the
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`invention.”)
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`A patent may satisfy the requirement to describe corresponding structure in
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`two ways that are relevant here. First, for a function performed on a general-
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`purpose computer, a means-plus-function limitation is not indefinite if the patent
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`describes and links an algorithm to the claimed function. WMS Gaming Inc. v. Int’l
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`Game Tech., 184 F.3d 1339, 1348 (Fed. Cir. 1999). Second, the patent may
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`describe actual structure, such as an ASIC. See, e.g., Atmel Corp. v. Information
`
`Storage Devices, Inc., 198 F.3d 1374 (Fed. Cir. 1999) (holding that the disclosure
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`of circuit in the title “On-Chip High Voltage Generation in NMOS Integrated
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`Circuits” was enough of a disclosure for the “high voltage generating means” for
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`the claim not to be indefinite).
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`Algorithm has a broad meaning in this context. The patentee is “not required
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`to produce a listing of source code or a highly detailed description of the algorithm
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`to be used to achieve the claimed functions in order to satisfy” the definiteness
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`requirement. Aristocrat Techs. Austl. Pty. Ltd. v. Int’l Game Tech., 521 F.3d 1328,
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`1338 (Fed. Cir. 2008); “this court permits a patentee to express that algorithm in
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`any understandable terms including as a mathematical formula, in prose…, or as a
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`CBM2014-00025
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`flow chart, or in any other manner that provides sufficient structure.” Finisar v.
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`DirecTV, 523 F.3d 1323, 1340 (Fed. Cir. 2008). And, the disclosure of structure
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`can be “implicit” and rely on the knowledge of a skilled artisan to “flesh out a
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`particular structural reference in the specification for the purpose of satisfying the
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`statutory requirement of definiteness.” Creo Products, Inc. v. Presstek, Inc., 305 F.
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`3d 1337, 1347 (Fed. Cir. 2002). For computer-implemented inventions, it is
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`standard to describe algorithms in “prose, diagrams, and flow charts.”
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`Elcommerce.com, 745 F.3d at 503. And, a patent may omit information and
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`knowledge possessed by persons of ordinary skill in the field of the invention. Id.
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`“When the structure or acts that perform the function “would be ‘well within the
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`skill of persons of ordinary skill in the art,’ such functional-type block diagrams
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`may be acceptable and, in fact, preferable if they serve in conjunction with the rest
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`of the specification to enable a person skilled in the art to make such a selection
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`and practice the claimed invention with only a reasonable degree of routine
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`experimentation.”” Id. at 504.
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`Where the corresponding structure is not a general purpose computer, and
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`the patentee discloses actual physical structure, as in Atmel, the patentee need not
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`also supply an algorithm because the definiteness requirement has already been
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`met. Numerous courts have found the disclosure of adequate physical structure
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`satisfies the definiteness requirement of means-plus-function claims. See, e.g.,
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`SIPCO, LLC v. Abb, Inc., 2012 WL 3112302, at *28-31 (E.D. Tex. 2012) (holding
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`that inclusion of a “site controller” “made of general purpose computer
`
`components” as physical structure rendered means-plus-function claim sufficiently
`
`definite without triggering the algorithm requirement of WMS Gaming); Levine v.
`
`Samsung Telecommunications Am., LLC, 2012 WL 383647, at *19 (E.D. Tex.
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`2012) (holding means-plus-function claim definite and finding no algorithm
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`necessary where patentee disclosed “special purpose hardware” such as “video
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`image signal transmitter”); Stanacard, LLC v. Rebtel Networks, AB, 680 F.Supp.2d
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`483, 501 (S.D.N.Y. 2010) (holding claim definite because the specification “does
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`not point to some undefined software implemented on a general purpose computer
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`as the corresponding structure for its functional claim limitations…[but] [r]ather
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`[to]…a special purpose hardware device or software component, readily
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`identifiable to a person of skill in the art...which can serve as the corresponding
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`structure for a means plus function limitation.”).
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`Finally, the structure must do more than perform the identified function - the
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`specification or prosecution history must provide a nexus, i.e. it must link or
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`associate the structure with the function. In re Aoyama, 656 F.3d 1293, 1297 (Fed.
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`Cir. 2011).
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`Here, the ’508 patent meets the definiteness requirement in all respects: it
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`discloses algorithms for performing the claimed functions, it discloses actual
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`CBM2014-00025
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`physical structure that a person of ordinary skill on the art would readily recognize
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`as more than a general purpose computer, and it provides a nexus between these
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`and the claimed functions.
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`III. The ’508 patent describes computer-implementable algorithms and/or
`actual structure corresponding to the claimed functions.
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`Lockwood presents substantial evidence showing that a POSA would have
`
`been able to recognize the structure in the specification and its nexus with the
`
`corresponding function in the claim.3 Elcommerce.com, 745 F.3d at 501; (Ex. 2022
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`)(“Sacerdoti Decl.”). Lockwood’s expert, Dr. Sacerdoti, has “studied and practiced
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`in the field of computer science for over 40 years.” (Ex. 2022, Sacerdoti Decl., ¶
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`8.) After reviewing the specification and the prosecution history of the ’508 Patent,
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`Dr. Sacerdoti explained that a POSA would have known and understood the
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`algorithm and structure and their nexus to the claimed function for each of the
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`challenged claim terms, satisfying the definiteness requirement.
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`3 Lockwood provides only some representative, non-exhaustive examples of
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`the support found throughout the specification and figures of the ’508 patent
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`demonstrating the challenged claim terms are not indefinite.
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`A. The specification describes a specific algorithm and actual
`structure to implement “means for selectively and interactively
`presenting,” satisfying the definiteness requirement of 35 U.S.C. §
`112, ¶ 2.
`The following TABLE I from the Sacerdoti Declaration summarizes claim
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`construction and demonstrates that it satisfies the definiteness requirement:
`
`Corresponding
`Structure
`
`the
`combination of:
`video screen
`118, videodisc
`114, RAM
`memory 117,
`touch pad 119
`or keyboard,
`and data
`processor 113.
`
`Claim Element Claimed
`Function
`
`Algorithm
`
`means for
`selectively and
`interactively
`presenting to
`said operator
`interrelated
`textual and
`graphical data
`describing a
`plurality of
`transaction
`options
`
`displaying
`mutually-related
`textual and
`graphical data
`that describe
`more than one
`transaction
`option to a user
`so that the user
`can make a
`selection based
`on the display
`
`Read graphical data from
`1.
`memory and display it on a video
`screen (e.g., read fictitious loan
`officer from the videodisc and
`display it to the video screen)
`Read textual data from
`2.
`memory (e.g., read loan
`information from RAM memory)
`Display textual data along
`3.
`with mutually-related graphical
`data as more than one transaction
`option (e.g., fictitious loan
`officer presents menu of loans
`available)
`Accept user selection
`4.
`based on the displayed textual
`and graphical data (e.g., user
`selects a type of loan)
`
`
`
`
`TABLE I of the Sacerdoti Declaration
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`The Claimed Function.
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`1.
`eBay mischaracterized the claimed function as an “interrelating function,”
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`which the Board did not adopt. (Paper 1, Pet., p. 27; Paper 24, Decision to
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`Institute, p. 18.) eBay also asserted that the ’508 Patent does not disclose “what is
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`meant by ‘interrelated textual and graphical data.’” (Paper 1, Pet., p. 27.) eBay’s
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`allegations lacked any evidence, therefore, attorney argument lacking evidentiary
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`support and have no merit.
`
`First, looking at the express language of this claim element, the term
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`“interrelated” is an adjective that modifies “textual and graphical data”; it is not a
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`verb describing the claimed function. Second, eBay’s assertion that the ’508 Patent
`
`does not disclose “what is meant by ‘interrelated textual and graphical data’” is
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`inconsistent with other statements made in the Petition and the Newton
`
`Declaration. (Paper 1, Pet., p.23 (recognizing that the fictitious loan officer and the
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`loan information that is periodically sent to the terminals, both disclosed in the
`
`specification, are examples of graphical and textual data, respectively); Ex. 1008,
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`Newton Decl., ¶ 33-34 (quoting portions of the specification that describe the
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`fictitious loan officer and loan information).) So in addition to failing to provide
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`evidence to prove its case, eBay asserted a grammatically incorrect definition of
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`the claimed function and took inconsistent positions regarding the term
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`“interrelated textual and graphical data.”
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`Dr. Sacerdoti explained that a POSA would have understood the claimed
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`function to be: displaying mutually-related textual and graphical data that describe
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`more than one transaction option to a user so that the user can make a selection
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`based on the display. (Ex. 2022, Sacerdoti Decl., ¶ 36.) Since this claim element is
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`somewhat lengthy, parsing it into terms and analyzing those terms would have
`
`enabled a POSA to easily arrive at the proper construction.
`
`a)
`
`“interrelated textual and graphical data describing a
`plurality of transaction options”
`The language of this claim element requires the “interrelated textual and
`
`graphical data” to describe a “plurality” of transaction options. The ordinary and
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`customary meaning of “plurality” is more than one. Thus, Dr. Sacerdoti explained
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`that a POSA would have understood the “interrelated textual and graphical data” to
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`describe more than one transaction option. (Ex. 2022, Sacerdoti Decl., ¶ 37.) The
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`specification provides examples that support this construction, such as a user of the
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`terminal being presented with a selectable menu of loans (e.g., transaction options)
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`for which the user may apply. (’508 Patent, 4:40-44; see also Ex, 2022, Sacerdoti
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`Decl., ¶ 39.)
`
`The term “interrelated” is not a term of art, and should be accorded its
`
`ordinary and customary meaning: mutually related. (Ex. 2022, Sacerdoti Decl., ¶
`
`38.) Dr. Sacerdoti confirmed that “mutually related” was the ordinary and
`
`customary meaning of this term by consulting a standard dictionary that was
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`CBM2014-00025
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`published around the time of the ’508 Patent. Id. (referencing the Webster’s New
`
`World Dictionary (Ex. 2019), 737). So in the context of claim 1, a POSA would
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`have understood the recited “textual and graphical data” to be mutually related.
`
`Again, the specification supports this construction, providing examples of
`
`mutually-related textual and graphical data that describe more than one transaction
`
`option. Id.
`
`As one example, the specification explains that “the financial institution 101
`
`periodically sends to the terminals 105 at the various remote sites 102 loan rate
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`information and other data pertinent to the loans available from that institution.”
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`(’508 Patent, 3:11-14.) At the terminal, a “video screen 118 displays a picture of a
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`fictitious loan officer who informs the applicant about the various types of loans
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`available.” Id., at 3:55-57. The loan rate information may be displayed as “a menu
`
`allowing [the applicant] to choose between” the various loans that are available,
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`such as “a real estate loan 138, a vehicle loan 139, a personal [secured] loan 140 …
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`or a personal unsecured loan 141. Id., at 4:41-44.
`
`Dr. Sacerdoti explained that a POSA would have understood the fictitious
`
`loan officer – which is a recording stored on a videodisc, i.e., sound and image
`
`files, ’508 Patent, 4:7-10 – to be an example of graphical data. (Ex. 2022, Sacerdoti
`
`Decl., ¶ 40.) He further explained that the loan rate information that is presented to
`
`the user as menu options would have been understood by a POSA to be an example
`
`
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`of textual data. Id. And, he explained that a POSA would have understood the
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`graphical data and textual data to be mutually related: the fictitious loan officer
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`presents the loan rate information to the user as menu options, ’508 Patent, 3:56-57
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`(“a fictitious loan officer who informs the applicant about the various types of
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`loans available”), and selection of a menu option causes the fictitious loan officer
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`to respond in an appropriate manner, ’508 Patent, 4:45-48 (“Once a type of loan
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`has been selected, a real estate loan for example, the fictitious loan officer asks a
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`series of inquiries corresponding to questions that would be found on a standard
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`loan application form.”). (Ex. 2022, Sacerdoti Decl., ¶ 40.)
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`Dr. Sacerdoti’s explanation of how a POSA would have understood this
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`term, in light of the disclosure, is consistent with statements made by the inventor
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`during the original prosecution of the ’508 Patent. Id., at ¶¶ 41-43. During original
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`prosecution, the inventor referred to the fictitious loan officer as an example of
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`graphical data:
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`Each station comprises a videodisc 114 and a RAM memory 117 into
`which data can be stored. These data include graphical information in
`the form of the “fictitious officer” and textual data such as those that
`are “periodically sent to the terminals” p.7, l.3-4: These data are
`“interrelated” since the graphical path (fictitious officer) is used to
`dispense the textual data (loan information) and textual paths lead to
`graphical data.
`(Ex. 2007, Office Action Response, p. 7-8 (emphasis added).)
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`And, the inventor referred to the “loan rate information and other data
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`pertinent to the loans available from the institution which are extracted from the
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`loan rate file 109” as an example of textual data:
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`(Ex. 2018, Original Specification at p. 7; ’508 Patent, 3:10-15.) Dr. Sacerdoti noted
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`that the loan-rate information from the loan-rate file 109 is not the only example in
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`the ’508 Patent of data that a POSA would have understood to be textual data. (Ex.
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`2022, Sacerdoti Decl., ¶ 43.) For example, the prior-loan quotations that are stored
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`in quotation files at the financial institution and are retrieved by the terminal via
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`the terminal’s modem 115 and DMA unit 116 during an exchange between the
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`fictitious loan officer and a user are another example. (’508 Patent, 4:17-36; Ex.
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`2022, Sacerdoti Decl., ¶ 43.)
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`In light of the express words of the claim, the specification, and the
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`inventor’s examples during the original prosecution, a POSA would have
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`understood the term “interrelated textual and graphical data describing a plurality
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`of transaction options” to mean: mutually-related textual and graphical data that
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`describe more than one transaction option. (Ex. 2022, Sacerdoti Decl., ¶ 40.)
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`“selectively and interactively presenting”
`b)
`Independent claim 1 also recites the term “selectively and interactively
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`presenting” to a user of the terminal the mutually-related textual and graphical data
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`that describe more than one transaction option. ’508 Patent, 6:59-61. Dr. Sacerdoti
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`explained that a POSA would have understood this part of the term to mean
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`displaying data to a user so that the user can make a selection based on the display.
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`Sacerdoti Decl., ¶ 45. Dr. Sacerdoti’s opinion (Id., at ¶ 46.) was informed by the
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`“numerous disclosures throughout the specification that describe example
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`exchanges between the user and the terminal.”
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`The simulated loan officer is used to acquire loan request data from
`the applicant by guiding him through an interactive sequence of
`inquiries and answers.
`(’508 Patent, Abstract (emphasis added).)
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`Each remote terminal displays a live image of a fictitious loan officer
`who helps the applicant through an interactive series of questions and
`answers designed to solicit from the applicant all the information
`necessary to process his loan application.
`(’508 Patent, 1:67-2:4 (emphasis added).)
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`To the right of the processor there is shown a videodisc 114 on which
`are stored all the permanent data necessary for the operation of the
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`terminal including the data necessary to effectuate the interactive and
`automatic request of information by the terminal from the applicant.
`(’508 Patent, 3:38-43 (emphasis added).)
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`The fictitious loan officer takes the applicant through a language
`selection routine 126-129. In this case, the applicant is asked in both
`English and Spanish in what language the loan transaction is to be
`conducted. In this phase of the operation as well as all interactive
`communications between the loan officer and the applicant, the loan
`officer explains to the applicant how to enter his answer by means of
`the touch pad 119.
`(’508 Patent, 4:10-17 (emphasis added).)
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`In light of these teachings, Dr. Sacerdoti explained that a “POSA would
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`have understood the terminal of the ’508 Patent to provide an interactive
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`experience for its users by displaying pertinent information as selectable menu
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`options via an automated terminal, accepting user selections, and responding based
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`on the user selections.” (Ex. 2022, Sacerdoti Decl., ¶ 47.) He further states that “a
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`POSA would have understood that the content of the displayed menus could be
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`selected based on prior responses of the user (e.g., the language of displayed
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`menus would depend on the user’s selection of English or Spanish).” Id.
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`In sum, a POSA would have understood the claimed function of “means for
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`selectively and interactively presenting to said operator interrelated textual and
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`graphical data describing a plurality of transaction options” to be: displaying
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`mutually-related textual and graphical data that describe more than one transaction
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`option to a user so that the user can make a selection based on the display. Id., at
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`¶ 48. Having identified the claimed funct