UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC., EVENTBRITE INC., STARWOOD HOTELS & RESORTS
`WORLDWIDE, INC., EXPEDIA, INC., FANDANGO, LLC,
`HOTELS.COM, L.P., HOTEL TONIGHT, INC., HOTWIRE, INC.,
`KAYAK SOFTWARE CORP., OPENTABLE, INC., ORBITZ, LLC, PAPA
`JOHN’S USA, INC., STUBHUB, INC., TICKETMASTER, LLC, LIVE
`NATION ENTERTAINMENT, INC., TRAVELOCITY.COM LP,
`WANDERSPOT LLC, AGILYSYS, INC., DOMINO’S PIZZA, INC.,
`DOMINO’S PIZZA, LLC, HILTON RESORTS CORPORATION,
`HILTON WORLDWIDE, INC., HILTON INTERNATIONAL CO., MOBO
`SYSTEMS, INC., PIZZA HUT OF AMERICA, INC., PIZZA HUT, INC.,
`and USABLENET, INC.,
`Petitioner
`
`v.
`
`AMERANTH, INC.
`Patent Owner
`
`____________
`
`Case CBM2015-000801
`Patent No. 6,384,850
`____________
`
`Submitted Electronically via the Patent Review Processing System
`
`PATENT OWNER’S RESPONSE
`
`1 CBM2015-00096 has been consolidated with this proceeding.
`
`

`
`TABLE OF CONTENTS
`
`CBM2015-00080
`
`Page
`
`I. STATEMENT OF PRECISE RELIEF REQUESTED ............................................ 1
`II. INTRODUCTION.................................................................................................... 1
`III. CLAIM CONSTRUCTION.................................................................................. 8
`A. Claim Construction Proposals............................................................................... 8
`1. “wireless handheld computing device”.............................................................. 9
`2. “central database” .............................................................................................. 9
`3. “web page”......................................................................................................... 9
`4. “web server”....................................................................................................... 9
`5. “communications control module” .................................................................. 10
`6. “synchronized”................................................................................................. 11
`7. “hospitality applications”................................................................................. 11
`8. “application program interface”....................................................................... 11
`9. “outside applications” ...................................................................................... 11
`10.
`“integration”.................................................................................................. 11
`11.
`“single point of entry for all hospitality applications”.................................. 12
`12.
`“automatic” ................................................................................................... 13
`13.
`“Wherein the communications control module is an interface between the
`hospitality applications and any other communications protocol”......................... 13
`IV. THERE HAS BEEN NO SHOWING THAT ANY OF CLAIMS 12-16
`ARE OBVIOUS.......................................................................................................... 16
`A. Overview......................................................................................................... 16
`B. DeLorme Does Not Render The Claims Obvious...................................... 17
`1. DeLorme Does Not Disclose “Wherein Applications And Data [which]
`Are Synchronized Between The Central Database, At Least One Wireless
`Handheld Computing Device, At Least One Web Server And At Least One
`Web Page” ............................................................................................................ 17
`
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`CBM2015-00080
`
`2. DeLorme Does Not Disclose A “Wireless Handheld Computing Device
`On Which Hospitality Applications And Data Are Stored” ........................... 29
`3. DeLorme Does Not Disclose The Claimed “Application Program
`Interface” That Enables Integration of Outside Applications with the
`Hospitality Applications’.................................................................................... 39
`4. DeLorme Does Not Disclose The Claimed “Communications
`Control Module” Nor ‘Wherein The Communications Control Module Is
`An Interface Between The Hospitality Applications And Any Other
`Communications Protocol” .................................................................................... 41
`5. Claim As A Whole......................................................................................... 44
`C. Dependent Claims ............................................................................................... 45
`D. Objective Evidence Of Non-Obviousness........................................................... 48
`1. There is a very strong nexus between the evidence of "secondary
`considerations" and the challenged claims............................................................. 52
`2. The Ameranth patents in this family, including the challenged claims, have
`been successfully and extensively licensed............................................................ 63
`3. Ameranth's products enjoyed substantial, widespread commercial success.... 66
`4. Ameranth's 21st Century Restaurant received numerous technology awards and
`industry acclaim after its introduction.................................................................... 68
`5. Ameranth received overwhelming industry praise for the 21st Century
`Restaurant technology............................................................................................ 70
`6. Starbucks and numerous other companies copied the Ameranth technology
`reflected in the challenged claims. ......................................................................... 73
`7. Other companies in the industry tried and failed to develop the integrated,
`synchronized innovation of the Ameranth technology and patent claims.............. 78
`8. Objective Evidence Conclusion....................................................................... 80
`V.
`CONCLUSION…………………………………………………………. 80
`
`-ii-
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`

`
`TABLE OF AUTHORITIES
`
`CBM2015-00080
`
`Page
`
`Cases
`
`Allen Archery, Inc. v. Browning Mfg. Co.,
`819 F.2d 1087 (Fed. Cir. 1987) ................................................................................. 70
`
`Ameranth v. Pizza Hut et al.,
`Case No. 3-11-cv-01810 (S.D. Cal. 2013), Dkt. No. 27 at p. 3................................. 55
`
`Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
`776 F.2d 281 (Fed. Cir. 1985) ................................................................................... 53
`
`Berk-Tek LLC. v. Belden Techs., Inc.,
`IPR2013-00059, FWD 34 (PTAB April 28, 2014 (citing Brand v. Miller, 487 F.3d
`862 (Fed. Cir. 2007))................................................................................................. 25
`
`Gambro Lundia AB v. Baxter Healthcare Corp.,
`110 F.3d 1573 (Fed. Cir. 1997) .............................................................................. 52, 70
`
`CFMT, Inc. v. Yieldup Int’l. Corp.,
`349 F.3d 1333 (Fed. Cir. 2003) (citing In re Royka, 490 F.2d 981, 985 (CCPA
`1974) ......................................................................................................................... 20
`
`Crocs, Inc. v. ITC,
`598 F.3d 1294 (Fed. Cir. 2010) ................................................................................. 73
`
`Dynamic Drinkware, LLC v. National Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) ................................................................................. 25
`
`Eli Lilly & Co. v. Zenith Goldline Pharmaceuticals, Inc.,
`471 F.3d 1369 (Fed. Cir. 2006) ................................................................................. 68
`
`-iii-
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`
`CBM2015-00080
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`Free Motion Fitness, Inc. v. Cybex Int’l, Inc.,
`423 F.3d 1343 (Fed. Cir. 2005))................................................................................ 46
`
`Graham v. John Deere Co.,
`383 U.S. 1, 17 (1966) ................................................................................................ 48
`
`Grain Processing Corp. v. Am. Maize-Products Co.,
`840 F.2d 902 (Fed. Cir. 1988) ................................................................................... 34
`
`Heidelberger v. Hantscho Prods.,
`21 F.3d 1068 (Fed. Cir. 1994) ................................................................................... 73
`
`HIMPP v. Hear-Wear Techs., LLC,
`751 F.3d 1362 (Fed. Cir. 2014) ................................................................................. 25
`
`In re GPAC Inc.,
`57 F.3d 1573 (Fed. Cir. 1995) ............................................................................. 52, 65
`
`In re Roufett,
`149 F.3d 1350 (Fed. Cir. 1998) ................................................................................. 64
`
`In re Warner,
`379 F.2d 1011 (CCPA 1967)..................................................................................... 20
`
`In re Wesslau, 147 USPQ 391,393 (CCPA 1965)…………………………………...28
`
`Kurtz v. Belle Hat Lining Co., Inc.,
`280 F. 277, 281 (2nd Cir. 1922) ................................................................................. 73
`
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292, 1298 (Fed. Cir. 2015) ............................................................................ 8
`
`Mintz v. Dietz & Watson, Inc.,
`679 F.3d 1372, 1378 (Fed. Cir. 2013) .......................................................................... 48
`
`-iv-
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`

`
`CBM2015-00080
`
`Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc.,
`711 F.3d 1348, 1368 (Fed. Cir. 2013) .......................................................................... 56
`
`Power-One v. Artesyn Techs, Inc.,
`599 F.3d 1343, 1352 (Fed. Cir. 2010) .......................................................................... 70
`
`Rambus Inc. v. Rea,
`731 F.3d 1248, 1256 (Fed. Cir. 2013) ........................................................ 49, 50, 53, 70
`
`Teva Pharm., Inc. v. Sandoz, Inc.,
`723 F.3d 1363, 1372 (Fed. Cir. 2013) .......................................................................... 52
`
`Unique Concepts, Inc. v. Brown,
`939 F.2d 1558, 1563 (Fed. Cir. 1991) .......................................................................... 28
`
`Vandenberg v. Dairy Equip. Co., a Div. of DEC Int’l, Inc.,
`740 F.2d 1560, 1567 (Fed. Cir. 1984) .......................................................................... 77
`
`Statutes
`§101 .............................................................................................................................. 25
`35 U.S.C. § 316(e)........................................................................................................ 34
`35 U.S.C. § 312 …………………………………………………………..…………... 6
`35 U.S.C. §103 ..................................................................................................... 1,22,80
`37 C.F.R. § 42.104..................................................................................................... 6,48
`37 C.F.R. § 42.22....................................................................................................... 6,48
`37 C.F.R. § 42.6.............................................................................................................. 6
`
`Rules
`37 C.F.R. §42.207(a) ...................................................................................................... 1
`
`-v-
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`

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`CBM2015-00080
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`CBM2015-00080
`
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`_Vi_
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`PATENT OWNER’S LIST OF EXHIBITS
`
`CBM2015-00080
`
`Exhibit No.
`
`Description
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`Food.com Internal Memorandum, “Ameranth Licensing
`Contract,” Sept. 13, 1999
`
`iOS Simulator User Guide, March 9, 2015
`
`Ameranth/Par Technology Corp. License Announcement,
`Jan. 28, 2013
`
`http://blogs.wsj.com/digits/2014/04/02/apples-jobs-
`declared-holy-war-on-google-over-android/, discussing
`Apple 2010 emails made public in Apple v. Samsung
`Litigation
`
`The House that Tech Builds,
`http://hospitalitytechnology.edgl.com/news/the-house-
`thattech-builds99460?referaltype=newsletter, Hyatt CTO
`Interview, April 8. 2015
`
`Domino’s Press Release,
`http://www.prnewswire.com/news-releases/dominos-
`pizza-first-in-industry-to-offer-mobile-ordering58317297.
`html, Sept. 27, 2007
`
`“Domino's app let's you voice-order pizza,”
`http://www.usatoday.com/story/money/business/2014/06/1
`6/dominos-voice-ordering-app-nuancefast-
`food-restaurants/10626419/, June 16, 2014
`
`-vii-
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`

`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`CBM2015-00080
`
`“Starbucks to roll out innovations in mobile platform--
`Company says new mobile features could be ‘holy grail’
`of throughput,” http://nrn.com/quick-service/starbucks-
`roll-out-innovations-mobile-platform, March 13, 2014
`
`“Starbucks’ mobile order and pay sees hot start, aided by
`Integration,” www.mobilecommercedaily.com, April 27,
`2015
`
`“Agilysys Introduces InfoGenesis Roam Mobile
`Software,” June 21, 2011
`
`Ex parte McNally, Appeal No. 2012-001503 (PTAB
`Nov. 4, 2014)
`
`Decision in Appeal No. 2010-000055 (BPAI March 3,
`2011)
`
`Decision in Appeal No. 2009-011707 (BPAI Feb. 14,
`2011)
`
`Decision in Appeal No. 2009-008033 (BPAI Jan. 28,
`2011)
`
`Excerpts from Microsoft Computer Dictionary (4th ed.
`1999)
`
`“The Computerworld Honors Program--Case Study,”
`Award to Marriott International, Inc. (2006)
`
`Decision in BPAI Appeal No. 2011-004999 (PTAB Oct.
`17, 2013 )
`
`Transcript of FS/TEC Awards Presentation (Feb. 2009)
`
`Declaration of Dr. Alfred Weaver
`
`-viii-
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`

`
`2020
`
`2021
`
`2022
`
`2023
`
`2024
`
`2025
`
`2026
`
`2027
`
`2028
`
`2029
`
`2030
`
`2031
`
`2032
`
`2033
`
`2034
`
`2035
`
`2036
`
`2037
`
`CBM2015-00080
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`Microsoft Computer Dictionary (4th ed.) excerpts
`
`May 1999 announcement from National Restaurant
`Association (NRA) show in Chicago, IL.
`Excerpts from transcript of Deposition of John Harker,
`May 3, 2010
`May 14, 2012 press release re Skywire
`
`Ameranth 21st Century System Product Brochure (two-
`sided), distributed May 1999 (original and annotated)
`Press releases and announcements of various Ameranth
`patent licenses and alliances
`Hospitality Technology, "POS Scoreboard", 2004 and
`2006
`Microsoft RAD Award, 2003.
`
`Excerpts from book, "Market Busters"
`
`"Best New Products", QSR magazine, September 1999
`
`Email messages between Microsoft and Starbucks
`personnel, 2006-2007
`Scott Maw remarks, Nov. 18, 2015 Starbucks investor
`conference
`
`May 2006 Ameranth presentation to Pizza Hut
`
`Transcript of Micros remarks, 2008 FSTEC meeting
`
`Micros announcement of Simphony product
`
`Transcript of Paul Armstrong remarks, 2008 FSTEC
`meeting
`Micros HSI press releases
`
`Micros JTECH press release
`
`-ix-
`
`

`
`2038
`
`2039
`
`2040
`
`2041
`
`2042
`
`2043
`
`2044
`
`2045
`
`2046
`
`2047
`
`2048
`
`2049
`
`2050
`
`2051
`2052
`
`2053
`
`2054
`
`2055
`
`2056
`
`CBM2015-00080
`
`Micros mycentral/Simphony press release
`
`Mark Nance PowerPoint presentation, 2009 FS/TEC
`meeting
`NCR/Radiant press release, July 2011
`
`PAR Technology acquires PixelPoint, article, August 2005
`
`Dominos AnyWare announcement, August 2015
`
`Agilysys/InfoGenesis Mobile brochure
`
`"Wireless finds a welcome in hospitality," Bloomberg,
`Feb. 2004
`Mobile Commerce Daily article re Agilysys InfoGenesis,
`May 2015
`Agilysys/InfoGenesis press release, June 2012
`
`Agilysys Announces Availability of InfoGenesis™ Mobile
`v2.0, Sept. 2013
`Xpient acquires Progressive, press release, August 2004
`
`Radiant Systems acquires Aloha Technologies, press
`release, Dec. 2003
`Case Study, Ameranth/Improv Comedy Clubs, Spring
`2000 (annotated)
`Computerworld Award summary, 2001 (annotated)
`Photograph from 1999 NRA meeting in Chicago, IL,
`including Keith McNally and Graham Granger
`Dunkin’ Donuts Selects CARDFREE as its Mobile
`Platform, Business Wire, Dec. 2015.
`Transcript of remarks from 2009 FSTEC meeting,
`Technology Executives Panel
`PowerPoint slides and screen shots from Ameranth
`presentation to Starbucks, December 1, 2006
`"Starbucks Claims 90 Percent Mobile Payments Market
`Share", PYMTS, Oct. 31, 2014.
`
`-x-
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`

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`CBM2015-00080
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`In accordance with 37 C.F.R. §42.207(a), Patent Owner, Ameranth, Inc.,
`
`(“PO”) submits this Response to Petitioner’s Covered Business Method (“CBM”)
`
`review (“Petition” or “Pet.”) against U.S. Patent No. 6,384,850 ("the '850
`
`patent"). For the reasons below, the Petition for review of claims 12-16 should be
`denied because the claims are not invalid under 35 U.S.C. §103.2
`II.
`INTRODUCTION
`The only issue remaining for the Board to resolve is whether Petitioner met its
`
`burden to prove that a POSA at the time of the invention would have found the
`
`challenged ‘850 claims to be obvious based only on the DeLorme reference. However,
`
`two facts are indisputable. First, the DeLorme inventors did not conceive or possess
`
`Ameranth’s inventions. Petitioner does not dispute this reality, otherwise it would
`
`have argued anticipation based on DeLorme and, as confirmed by the Board, Petitioner
`
`admitted that DeLorme did not disclose the claimed communications control module
`(“CCM”).3 Further, due to the challenge being based on this single reference, it is
`indisputable that the DeLorme inventors, who were clearly POSA and who clearly had
`
`2 Petitioner’s standing argument merely references CBM2014-00016, and is thus
`insufficient. PO submits that Petitioner was required to provide, in the Petition, the
`basis for standing. Further, if the Federal Circuit rules that the `850 patent in CBM
`2014-00015 is not a CBM patent and that institution was improper, having relied on
`that
`institution for this CBM dooms the current petition as well. Patent Owner
`incorporates herein its Preliminary Response arguments regarding standing and
`preserves its right to appeal the Board’s determination thereof.
`3 “Petitioner argues that DeLorme discloses the claimed system except that DeLorme
`does not disclose explicitly that the communication control module is configured as an
`interface between the hospitality applications and any other communications protocol.”
`Inst. Dec. 20 (emphasis added).
`
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`CBM2015-00080
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`access to their own patent, did not find Ameranth’s inventions to be obvious, otherwise
`
`they would have themselves “conceived” it and included it in their specification to
`
`solve their stated problem. But they did not.
`
`In fact they did not even recognize the
`
`need for “synchronization” of both “applications and data,” i.e., “making or
`
`configuring the applications and data to be consistent” between disparate elements,
`
`devices and protocols, the particular aspect which the Board itself has recognized was
`
`core to the patentability of these claims. No form of the term “synchronized,” nor any
`
`concept related thereto, appears even once in DeLorme, despite its very lengthy 80
`
`page specification. Thus actual POSA having access at the time to Delorme’s’
`
`specification (the DeLorme inventors) did not find Ameranth’s invention to be
`
`obvious.
`
`Further, since it is clear that the DeLorme inventors did not recognize even the
`
`need for synchronization of both “applications and data,” clearly they did not teach
`
`how to synchronously integrate combined web/wireless/database
`
`systems/embodiments with varying communications protocols, as recited in the
`
`challenged “hospitality” application claims. As admitted, DeLorme did not invent or
`
`teach the claimed “communications control module” that, when properly construed
`
`consistent with the specification disclosure, is a software “layer and which “sits on top
`
`of a communications protocol”–so that it allows for planned updates, i.e., it “can be
`
`easily updated to work with a new communication protocol without modifying the
`
`core hospitality applications.” (Exh. 1001 4:9-13). The “system of systems” concept
`
`of the ‘850 patent, as reflected in the “synchronous communication system” claims,
`
`was designed for smooth growth/changes for multiple and ever-varying
`
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`CBM2015-00080
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`communications. Delorme’s limited concept was not. Delorme admitted that his
`
`“preferred embodiment” relied on “tangible media,” e.g. CDs, which were clearly
`
`distributed by hand, not computer system or network:
`Thus, the preferred TRIPS embodiment, shown in use in FIG. lA,
`comes partly on tangible media, for example, as a North American
`Atlas on CD-ROM with a TRIPS "starter" kit.
`Exh. 1024 14:19-21 (emphasis added). DeLorme also only described various
`
`independent “alternative” embodiments:
`Alternatively, all TRIPS function, data and service can be provided
`entirely online (i.e. without significant standalone software
`components)—for example, from a central TRIPS service bureau, or by
`means of a TRIPS Internet World Wide Web Site.
`FIG. 9 also depicts alternative TRIPS embodiments and remote usage
`scenarios which facilitate "on the spot" simplified travel planning and
`transactions, via WCU 907 from remote locations
`Exh. 1024 43-47, 72:37-43 (emphasis added); see also Exh. 1002 ¶¶ 210-12. In
`
`contrast, the ‘850 claims recite integration and synchronization of disparate
`
`embodiments using varying protocols to create a synchronized “system of systems.”
`
`Petitioner’s challenge is no more than impermissible use of hindsight and the
`
`claims themselves as a guide to cherry-pick independent and non-integrated
`
`embodiments and disclosures of DeLorme to reconstruct Ameranth’s inventions.
`
`In contrast, Ameranth was the first to integrate and synchronize multiple and
`
`disparate “alternative” embodiments together, including both hospitality
`
`applications/data and with varying communications protocols and devices. It was not
`
`obvious to so, as was widely confirmed by the marketplace after Ameranth invented
`and introduced its synchronous 21st Century Restaurant™ “system of systems” into the
`-3-
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`CBM2015-00080
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`hospitality marketplace in 1998-1999. No other company had Ameranth’s unique
`
`systemic solution, integrated and synchronized, and both Web and wireless, as was
`
`confirmed by the owner of Improv Comedy Theatres after seeing Ameranth’s 21CR
`
`system demonstrated to him in May 1999:
`Tom Castillo, Owner of the Improv Comedy Clubs, first came across
`Ameranth in Chicago at the National Restaurant Association’s annual
`tradeshow. At that point he told Ameranth that ‘The Improv needs to
`move into the 21st Century technology’ and he was ‘won over by the
`company’s demonstration’. Looking for a total solution, Castillo was
`particularly impressed with the fact that Ameranth could develop and
`install the entire web, PC and wireless system, something no other
`company could match.
`Computerworld 21CR Award Summary, 2001, page 1 (Exh. 1012 at 697) (emphasis
`
`added). Ameranth subsequently won two prestigious technology awards for this
`
`innovative and breakthrough, 21CR/Improv “system of systems.”
`
`Nor did Delorme invent or disclose how to do so or that such “system of
`
`systems” integration and synchronization should or could have been done. In fact,
`Petitioner itself did not even allege that Ameranth’s actual claimed inventive concepts
`
`were obvious to a POSA at the time of the invention. The Board already determined
`
`what that core invention was in response to Petitioner’s first petition against the
`
`challenged claims:
`We do not view these claims as reciting merely the abstract idea of
`“placing an order or reservation using a general purpose computer and
`wireless handheld device,” but rather as a particular practical
`application of the idea of application and data synchronization.
`The combination of these components interact in a specific way to
`synchronize applications and data between the components and outside
`
`-4-
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`CBM2015-00080
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`application that is integral to the claimed invention and meaningfully
`limit these claims
`CBM2014-00015, Inst. Dec. 24 (emphasis added). The Board correctly recognized
`
`that the synchronization of both the “applications and data” was a core inventive
`
`aspect of these claims and that the claimed components “interact in a specific way”
`
`that is “integral to the claimed invention” and thus “meaningfully limit these claims.”
`
`The Board also recognized that the claimed “combination,” i.e., the “system of
`
`systems” “interact in a specific way”–that specific functionality is essential to the
`
`nonobviousness of these claims. Therefore, in order to prove obviousness, Petitioner
`
`had to show that the relied-on aspects of DeLorme “interacted in the specific way”
`
`required by the claims and synchronized both “applications and data.” Such was not
`
`shown. In fact, Petitioner and its expert rewrote the claims to read out the core
`
`inventive concept of synchronizing both applications and data in an attempt to get
`
`around the absence from DeLorme of this critical functionality. Petitioner’s challenge
`
`is directed to trying to render obvious subject matter that is different from the
`
`invention conceived by Ameranth’s inventors as embodied in the challenged claims.
`
`The DeLorme reference has numerous additional shortcomings including
`
`teaching away from the claimed invention, it would require substantial changes to its
`
`disclosed principles of operation (each associated with DeLorme’s independent and
`
`alternative embodiments), and it fails to teach or suggest critical claimed features and
`
`elements (mostly ignored by the Petition while relying on incorrect constructions and
`
`failing to even consider the most important claim terms). The Petition also failed to
`
`comply with the statutory requirement to explain the differences between DeLorme
`
`and the claimed invention and thus also failed to explain how Delorme would be
`-5-
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`CBM2015-00080
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`modified and why, to account for those differences. Petitioner and its expert also
`
`entirely ignored the vast amount of objective evidence of nonobviousness on record,
`
`and which was well known to Petitioner since it directly involved/involves many of the
`
`Petitioner companies. The Petition also violates multiple case law directives, rules and
`regulations, each violation individually compelling denial.4
`Further, in addition to the technical infirmities of the DeLorme disclosure vis-à-
`
`vis the claimed subject matter, a large quantity of objective evidence demonstrates
`
`nonobviousness. The introduction of Ameranth’s breakthrough inventions into the
`hospitality market–embodied in its multiple award-winning 21st Century Restaurant™
`System (“21CR”)–achieved almost immediate success and received widespread and
`
`multi-dimensional acclaim which has continued for the last 17 years. 21CR was in
`
`actuality a unique “system of systems” which were synchronously and seamlessly
`
`integrated together. In the hospitality market, software point of sale (“POS”) systems
`
`are the “brains” and “mission-critical” aspect of an IT system, and thus Ameranth
`
`sought to partner with or license the market leaders. Most significant hospitality
`
`software POS company either partnered with, licensed, or sought to license
`
`Ameranth’s revolutionary inventions, many of which are licensees today. Those that
`
`did not license the inventions have copied them and many now tout Ameranth’s
`
`inventions as their own “breakthroughs.” More than 50,000 restaurant locations are
`
`licensed for the `850 family of patents, including renowned chains such as Taco Bell,
`
`Dunkin Donuts, Burger King, Jersey Mike’s Subs, BJ’s Pizza and Steak N Shake.
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`4 The Petition violated numerous rules/requirements promulgated under the AIA,
`including: 37 C.F.R. § 42.6(a)(3); 37 C.F.R. § 42.22(a)(2); 37 C.F.R. § 42.104(b)(4);
`37 C.F.R. § 42.104(b)(5) and 35 U.S.C. § 312(a)(3).
`-6-
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`CBM2015-00080
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`These giant companies chose to license Ameranth’s patents due to recognition and
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`respect for Ameranth’s innovations, just as Bill Gates did in 2000 when he stated:
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`“Ameranth is one of the leading pioneers of the information technology age for the
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`betterment of mankind.” (Exh. 1012 at 543, 952). Ameranth, a tiny company, had a
`single core product5 at the time (21CR), and thus this praise for 21CR was
`unquestionably linked to Ameranth’s inventions as clearly demonstrated in this
`
`Response. Such an endorsement from a renowned computing luminary such as Bill
`
`Gates is extraordinary and, standing alone (which it does not), is compelling against
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`obviousness assertions from infringers (one of which, Micros/Oracle, sought an
`
`exclusive license to Ameranth’s inventions in 2000, yet now claims them to have been
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`obvious all along). Many more restaurant chains and customers as well as reservations
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`and ticketing companies, either directly or via one of Ameranth’s licensees, have
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`licensed Ameranth’s patents, along with dozens of other chains and licensees (44
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`licenses to date, the vast majority of which occurred without litigation). These are not
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`the actions taken by industry giants in regard to “obvious” patents, especially over a 17
`
`year timeframe. This broad and extensive licensing of the `850 inventions along with
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`an extraordinary amount of other objective evidence against obviousness consisting of
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`six separate categories of secondary factors, all with a confirmed nexus to the
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`claims/invention as detailed below, strongly rebuts the infringing Petitioner’s flawed,
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`incomplete and error-filled assertions of obviousness.
`
`5 Note: Ameranth also marketed the 21CR product
`line with some additional
`hospitality applications, but those were all based on the same core 21CR product and
`technology and had the 21CR system embedded within them.
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`CBM2015-00080
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`III. CLAIM CONSTRUCTION
`A BRI construction cannot read elements out of the claims and cannot be
`
`inconsistent with the intrinsic evidence. Microsoft Corp.v. Proxyconn, Inc., 789 F.3d
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`1292, 1298 (Fed. Cir. 2015).
`A.
`Claim Construction Proposals
`Patent Owner presents the following proposals, all of which are supported by the
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`intrinsic evidence. The Declaration of Dr. Alfred Weaver (Exh. 2019) in support of
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`Ameranth’s positions on nonobviousness is critical in the claim construction analysis
`
`because it provides the perspective of a POSA in viewing the claims in light of his own
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`knowledge and the specification disclosure. Per Dr. Weaver, a POSA would have had
`
`a Bachelor’s degree in either electrical engineering or computer science and at least
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`three years of experience in the hospitality market in the fields of developing software
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`for wireless networks and devices, developing Internet-based systems or applications,
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`with knowledge of or equivalent experience in software development in the hospitality
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`market for at least three years. (Exh. 2019 ¶21).
`
`PO proposes the following constructions. An ultimate conclusion on
`
`obviousness in view of the Delorme reference cannot be made without first properly
`
`construing the following terms and elements.
`1.
`“wireless handheld computing device”
`Patent Owner proposes “a wireless computing device that is sized to be held in
`
`one’s hand.” See Everingham Order (Exh. 1032 at 24); Exh. 2019 ¶27.
`2.
`“central database”
`Patent Owner proposes “a database file structure connected to the system in
`
`association with a central server, comprised of records, each containing fields, together
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`-8-
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`CBM2015-00080
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`with a set of operations for searching, sorting, recombining and other functions.”
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`Microsoft Comp. Dict. (4th ed.1999) (Exh. 1034 at 8); Exh. 1001 at 2:24, 11-34-35
`
`(“backoffice server (central database)”); id. at 2:8-10, 11:13-15 (“synchronization
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`between a central database and multiple handheld devices”). (Exh. 2019 ¶28).
`3.
`“web page”
`The PTAB construed consistent with its prior rulings to mean “a document,
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`with associated files for graphics, scripts, and other resources, accessible over the
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`internet and viewable in a web browser.” Inst. Dec. 7; see also CBM2014-00015
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`(Exh. 1017 thereto at 8)). (Exh. 2019 ¶29).
`
`The PTAB also separately construed the non-recited term “document” in
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`accordance with the Petitioner’s request. Patent Owner objects to that construction
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`because it is not a term in the claims. Patent Owner submits that nothing in the
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`principles of BRI allows for construction of a non-claimed term, especially considering
`
`that the Board did not even construe critical terms which are actually recited in the
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`claims, and which PO proposed should be construed and thus are in controversy.
`
`Further, not only is Petitioner’s proposal not a BRI construction for this term, the
`proposed construction is inconsistent with the web context and the specification6 and is
`thus inconsistent with how a POSA would view “web based” documents served via the
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`claimed “web server.” (Exh. 2019 ¶29).
`4.
`“web server”
`The Microsoft Computer Dictionary states in regard to “Web Server:” “See
`
`6 “The HTML documents are stored on Web server computers, typically in a
`hierarchical fashion with the root document being referred to as the home page”
`(Exh. 1001 12:20-24).
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`CBM2015-00080
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`HTTP Server.” (Exh. 2020 (Page 479)). The Dictionary then states in regard to
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`“HTTP Server:” “Server software that uses HTTP to serve up HTML documents and
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`any associated files a