Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 19
`Entered: March 26, 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 No. 6,871,325 B1
`
`
`Before JAMESON LEE, MEREDITH C. PETRAVICK, and
`STACEY G. WHITE, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`Apple, Exhibit 1018, Page 1
`
`

`

`Case CBM2014-00015
`Patent 6,871,325 B1
`
`
`I. INTRODUCTION
`A. Background
`On October 15, 2013, Agilysys, Inc. and 34 other entities1,
`(collectively, “Petitioner”) filed a Petition2 requesting a review under the
`transitional program for covered business method patents of U.S. Patent No.
`6,871,325 B1 (Ex. 1032, “the ’325 patent”). Paper 1. Ameranth, Inc.
`(“Patent Owner”) filed a Preliminary Response (“Prelim. Resp.”) on January
`13, 2014. Paper 10. We have jurisdiction under 35 U.S.C. § 324.
`The standard for instituting a covered business method patent review
`is set forth in 35 U.S.C. § 324(a), which provides as follows:
`THRESHOLD – The Director may not authorize a post-grant
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 321, if
`such information is not rebutted, would demonstrate that it is
`more likely than not that at least 1 of the claims challenged in
`the petition is unpatentable.
`Petitioner challenges the patentability of claims 1-15 of the ’325
`
`patent under 35 U.S.C. § 112, first paragraph; § 112, second paragraph;3 and
`
`
`1 Expedia, Inc., Fandango, LLC, Hotel Tonight, Inc., Hotwire, Inc.,
`Hotels.com, L.P., Kayak Software Crop., Live Nation Entertainment, Inc.,
`Micros Systems, Inc., Orbitz, LLC, Opentable, Inc., Papa John’s USA, Inc.,
`Stubhub, Inc., Ticketmaster, LLC., Travelocity.com LP, Wanderspot LLC,
`Pizza Hut, Inc., Pizza Hut of America, Inc., Domino’s Pizza, Inc., Domino’s
`Pizza, LLC, Grubhub, Inc., Seamless North America, LLC, Order.in, Inc.,
`Mobo Systems, Inc., Starbucks Corporaton, Eventbrite, Inc., Best Western
`International, Inc., Hilton Resorts Corp., Hilton Worldwide, Inc., Hilton
`International Co., Hyatt Corporation, Marriott International, Inc., Starwood
`Hotels & Resorts Worldwide, Inc., Usablenet, Inc., and Apple, Inc.
`2 Petitioner filed an Amended Petition on November 8, 2013. Paper 8. We
`will refer to the Amended Petition (“Pet.”) in our decision.
`3 Section 4(c) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
`
`2
`
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`Apple, Exhibit 1018, Page 2
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`Case CBM2014-00016
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`§ 101. Taking into account Patent Owner’s Preliminary Response, we
`determine that the Petition demonstrates that it is more likely than not that
`challenged claims 1-10 are unpatentable, but fails to demonstrate that it is
`more likely than not that challenged claims 11-15 are unpatentable.
`Pursuant to 35 U.S.C. § 324, we institute a covered business method patent
`review of claims 1-10 of the ’325 patent.
`
`
`
`B. Related Matters
`Petitioner identifies numerous related ongoing district court
`
`proceedings in the Petition. Pet. 12-16. In addition, Petitioner has requested
`covered business method patent review of the following related patents:
`U.S. Patent No. 6,384,850 (CBM2014-00015); U.S. Patent No. 6,982,733
`(CBM2014-00013); and U.S. Patent No. 8,146,077 (CBM2014-00014).
`
`
`C. The ’325 Patent (Ex. 1032)
`The ’325 patent, titled “Information Management and Synchronous
`Communications System with Menu Generation,” issued on March 22,
`2005, based on Application No. 10/015,729, filed on November 1, 2001.
`There are two aspects to the claimed system: menu generation and
`synchronous communication. See, e.g., Ex. 1032, 3:21-28.
`
`
`125 Stat. 284, 329 (2011) (“AIA”) re-designated 35 U.S.C. § 112, first
`paragraph, as 35 U.S.C. § 112 (a) and 35 U.S.C. § 112, second paragraph, as
`35 U.S.C. § 112 (b). Because the ’325 patent has an effective filing date
`before September 16, 2012, we refer to the pre-AIA version of 35 U.S.C.
`§ 112.
`
`
`
`3
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`Apple, Exhibit 1018, Page 3
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`Case CBM2014-00016
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`
`The first aspect is a “desktop software application that enables the
`rapid creation and building of a menu.” Id. at 3:21-23. Figure 1 of the ’325
`patent is reproduced below.
`
`
`Figure 1 depicts a graphical user interface (GUI) that is used to generate a
`menu. Id. at 6:22-25. GUI 1 includes menu tree window 7, modifiers
`window 8, and sub-modifiers window 9. Id. at 6:38-44. Menu tree window
`7 displays hierarchical tree structure 2 that shows the relationships between
`menu categories, such as salads or deserts; menu items, such as caesar salad
`or green salad; menu modifiers, such as dressing; and menu sub-modifiers,
`such as ranch or bleu cheese. Id. at 6:20-32. A user generates a menu by
`using the GUI to add or delete menu categories, menu items, modifiers, and
`sub-modifiers, and link modifiers and sub-modifiers to menu items in
`hierarchical tree structure 2. Id. at 6:47-8:43.
`The second aspect is synchronous communication. See id. at 2:61-67;
`
`3:6-10; 11:3-8. The system includes a computer workstation, a central
`
`
`
`
`4
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`Apple, Exhibit 1018, Page 4
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`database, multiple handheld devices, a web server, and a web page. Id. at
`3:64-4:1; 6:24. After the new menu is generated and previewed at the
`computer workstation, the new menu is downloaded to the wireless handheld
`devices, web servers, and web pages, so that the menu is synchronized on all
`of these devices. See id. at 3:64-4:1; 6:33-36; 7:26; 8:59-65; 10:13-15. Data
`entered on hospitality applications (e.g., restaurant ordering, wait-list, or
`reservation applications (Ex. 1032, 1:26-27, 4:10-13)) on the wireless
`handheld device, web servers, and web pages is synchronized on all of these
`devices. See id. at 2:64-67; 11:13-36. Further, third parties can integrate
`fully with the hospitality applications through a synchronous
`communications control module. Id. at 11:25-43.
`Claims 1 and 11 of the ’325 patent are illustrative of the claims at
`issue and read as follows:
`1. An information management and synchronous
`communications system for generating and
`transmitting menus comprising:
`a. a central processing unit,
`b. a data storage device connected to said
`central processing unit,
`c. an operating system including a graphical
`user interface,
`d. a first menu consisting of menu categories,
`said menu categories consisting of menu items,
`said first menu stored on said data storage
`device and displayable in a window of said
`graphical user interface in a hierarchical tree
`format,
`e. a modifier menu stored on said data storage
`device and displayable in a window of said
`graphical user interface,
`
`
`
`
`5
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`Apple, Exhibit 1018, Page 5
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`Case CBM2014-00016
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`
`f. a sub-modifier menu stored on said data
`storage device and displayable in a window of
`said graphical user interface, and
`g. application software for generating a second
`menu from said first menu and transmitting said
`second menu to a wireless handheld computing
`device or Web page,
`wherein the application software facilitates the
`generation of the second menu by allowing
`selection of categories and items from the first
`menu, addition of menu categories to the second
`menu, addition of menu items to the second menu
`and assignment of parameters to items in the
`second menu using the graphical user interface of
`said operating system, said parameters being
`selected from the modifier and sub-modifier
`menus, wherein said second menu to applicable to
`a predetermined type of ordering.
`
`11. An information management and synchronous
`communications system for use with wireless
`handheld computing devices and the internet
`comprising:
`a. a central database containing hospitality
`applications and data,
`b. at least one wireless handheld computing
`device on which hospitality applications and
`data are stored,
`c. at least one Web server on which hospitality
`applications and data are stored,
`d. at least one Web page on which hospitality
`application and data are stored,
`e. an application program interface, and
`f. a communications control module,
`
`
`
`
`6
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`Apple, Exhibit 1018, Page 6
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`Case CBM2014-00016
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`
`wherein application 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, wherein the
`application program interface enables integration
`of outside applications with the hospitality
`applications and wherein the communications
`control module is an interface between the
`hospitality applications and any other
`communications protocol, wherein the
`synchronized data relates to orders.
`
`
`D. The Alleged Grounds of Unpatentability
`
`Petitioner sets forth grounds of unpatentability of claims 1-15 as
`follows:
`
`Ground
`§ 112 ¶ 2
`§ 112 ¶ 1
`§ 101
`
`Challenged Claims
`1-15
`1-15
`1-15
`
`
`
`E. Claim Construction
`Consistent with the statute and legislative history of the AIA, the
`Board interprets claims using the broadest reasonable construction in light of
`the specification of the patent in which they appear. 37 C.F.R. § 42.300(b);
`see also Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766
`(Aug. 14, 2012).
`For the purposes of resolving the issues of this Decision, we must
`construe claims 1’s limitation “application software for . . . transmitting said
`second menu to a . . . Web page.” The same limitation is recited in
`independent claims 7, 8, and 9. In particular, we must determine the proper
`
`7
`
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`Apple, Exhibit 1018, Page 7
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`Case CBM2014-00016
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`construction of the term “web page.” All other terms in the challenged
`claims need no express construction at this time.
`The specification of the ’325 patent does not contain a lexicographic
`definition of “web page,” and, therefore, this term is given its ordinary and
`customary meaning. The ordinary and customary meaning of “web page” is
`disputed by the parties. Petitioner and its expert, Dr. Larson, allege that the
`ordinary and customary meaning of “web page” is defined by MICROSOFTTM
`PRESS COMPUTER DICTIONARY 479 (4th ed. 1999) as “a document on the
`World Wide Web.” Pet. 40, Ex. 1042 at 4. Patent Owner alleges that the
`ordinary and customary meaning is “a document, with associated files for
`graphics, scripts, and other resources, accessible over the internet and
`viewable in a web browser.” Prelim. Resp. 38. The ordinary and customary
`meaning according to the Patent Owner is based upon a definition of web
`page by the World Wide Web Consortium in 1999 (Ex. 2030). The World
`Wide Web Consortium defines web page as: “[a] collection of information,
`consisting of one or more Web resources, intended to be rendered
`simultaneously, and identified by a single URI.” Ex. 2030 at 6.
`We find that the ordinary and customary meaning of “web page” is a
`document, with associated files for graphics, scripts, and other resources,
`accessible over the internet and viewable in a web browser, because this
`meaning is consistent with the World Wide Web Consortium’s definition
`and with the specification. The specification describes Hypertext Mark-up
`Language (HTML) or Extensible Mark-Up Language (XML) documents,
`which include references to other documents or resources and which are
`stored on web servers. Ex. 1032, 12:24-42. Further, this definition is
`consistent with MicrosoftTM Press Computer Dictionary’s definition, when
`
`
`
`
`8
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`Apple, Exhibit 1018, Page 8
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`Case CBM2014-00016
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`viewed in its entirety. The entirety of the definition is:
`Web page n. A document on the World Wide Web. A Web
`page consists of an HTML file, with associated files for
`graphics and scripts, in a particular directory on a particular
`machine (and thus identifiable by a URL). Usually a Web page
`contains links to other Web pages. See also URL.
`Ex. 1042.
` Consequently, applying the broadest reasonable interpretation
`standard, we construe “application software for . . . transmitting said second
`menu to a . . . Web page” to require application software that is capable of
`transmitting the second menu to a document with associated files for
`graphics, scripts, and other resources, accessible over the internet and
`viewable in a web browser.
`
`II. ANALYSIS
`A. Standing
`The parties disagree as to whether Petitioner has standing to file a
`Petition for a covered business method patent review of the ’325 patent. See
`Pet. 23-30; Prelim. Resp. 7-32. Under 37 C.F.R. § 42.304(a), a petition must
`set forth grounds for standing, which includes a requirement that the patent
`for which review is sought is a covered business method patent. The parties
`disagree as to whether the ’325 patent is a covered business method patent.
`Section 18 of the AIA provides for the creation of a transitional
`program for reviewing covered business method patents. Section 18 limits
`review to persons or their privies that have been sued or charged with
`infringement of a “covered business method patent,” which does not include
`patents for “technological inventions.” AIA §§ 18(a)(1)(B), 18(d)(1); see
`37 C.F.R. § 42.302. It is undisputed that each of the companies jointly filing
`
`9
`
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`Apple, Exhibit 1018, Page 9
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`Petition has been sued for infringement of the ’325 patent. See Pet. 23-24.
`For the reasons explained below, we conclude that the ’325 patent is a
`“covered business method patent” and, thus, Petitioner has standing to file a
`petition for a covered business method patent review of the ’325 patent.
`a. Financial Product or Service
`A “covered business method patent” is a patent that “claims a method
`or corresponding apparatus for performing data processing or other
`operations used in the practice, administration, or management of a financial
`product or service, except that the term does not include patents for
`technological inventions.” AIA § 18(d)(1); see 37 C.F.R. § 42.301(a). For
`purposes of determining whether a patent is eligible for a covered business
`method patent review, the focus is on the claims. See Transitional Program
`for Covered Business Method Patents – Definitions of Covered Business
`Method Patent and Technological Invention; Final Rule, 77 Fed. Reg.
`48,734, 48,736 (Aug. 14, 2012) (“CBM Rules”). A patent need have only
`one claim directed to a covered business method to be eligible for review.
`Id.
`
`In promulgating rules for covered business method patent reviews, the
`Office considered the legislative intent and history behind the AIA’s
`definition of “covered business method patent.” Id. at 48,735-36. “[The]
`legislative history explains that the definition of covered business method
`patent was drafted to encompass patents ‘claiming activities that are
`financial in nature, incidental to a financial activity or complementary to a
`financial activity.’” Id. at 48735 (citing 157 Cong. Rec. S5432 (daily ed.
`Sept. 8, 2011) (statement of Sen. Schumer)).
`
`
`
`
`
`10
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`Apple, Exhibit 1018, Page 10
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`Case CBM2014-00016
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`The legislative history indicates that “financial product or service” should be
`interpreted broadly. Id.
`
`Patent Owner argues that their invention, although used in commerce,
`is not directed to a financial product or service. Prelim. Resp. 9. The
`definition of covered business method patent, however, includes activities
`that are incidental or complementary to a financial activity. Claim 1 of the
`’325 patent is directed to an apparatus that corresponds to an activity that is
`at least incidental to an activity financial in nature. Claim 1 is directed to an
`apparatus that is used in electronically generating a menu. The specification
`describes that the menu is used in the context of online or mobile ordering
`and paying in restaurant and other hospitality contexts. See Ex. 1032, 3:48-
`57. See also id. at Fig. 7. Also, the last phrase in claim 1 specifies that the
`generated second menu is “applicable to a predetermined type of ordering.”
`The “ordering” pertains to the sale of a product, which generates revenue.
`Consequently, the subject matter of claim 1 is incidental to financial activity.
`For the reasons stated above, we conclude that claim 1 of the ’325
`patent meets the “financial product or service” components of the definition
`in Section 18(d)(1) of the AIA.
`b. Technological Invention
`The definition of “covered business method patent” in Section
`18(d)(1) of the AIA does not include patents for “technological inventions.”
`To determine whether a patent is for a technological invention, we consider
`“whether the claimed subject matter as a whole recites a technological
`feature that is novel and unobvious over the prior art; and solves a technical
`problem using a technical solution.” 37 C.F.R. § 42.301(b). Both prongs
`must be satisfied in order for the patent to be excluded from review as a
`
`
`
`
`11
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`technological invention. The following claim drafting techniques, for
`example, typically do not render a patent a “technological invention[]”:
`(a) Mere recitation of known technologies, such as computer
`hardware, communication or computer networks, software,
`memory, computer-readable storage medium, scanners, display
`devices or databases, or specialized machines, such as an ATM or
`point of sale device.
`(b) Reciting the use of known prior art technology to accomplish a
`process or method, even if that process or method is novel and
`non-obvious.
`(c) Combining prior art structures to achieve the normal, expected or
`predictable result of that combination.
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763-64 (Aug.
`14, 2012).
`
`As to the first prong, Patent Owner argues that their claimed invention
`is novel and unobvious over the prior art, and therefore, is directed to a
`technical invention. See Prelim. Resp. 12-32. Patent Owner argues that the
`functionality of their invention’s software is a novel and unobvious over the
`prior art. See Prelim. Resp. 24-32. Petitioner argues the claims of the ’325
`patent do not recite any novel and unobvious technological feature. Pet. 32-
`35.
`We look to whether the claims, not the specification, recite a
`technological feature that is novel and unobvious. A patent need have only
`one claim directed to a covered business method to be eligible for review.
`Claim 1 recites a central processing unit (CPU), a data storage device, an
`operating system with a GUI, and application software that includes
`functionality for generating the menu using the GUI. Claim 1’s
`functionality includes transmission of the generated menu and selection,
`addition, and assignment of categories, items, and parameters. The
`
`12
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`specification describes the CPUs and data storage devices, as typical
`hardware elements. Ex. 1032, 5:39-5:61; 5:62-6:3. In addition, the
`specification describes that GUIs that display menus from which records can
`be created, deleted, modified, or arranged are conventional. Id. at 4:64-5:23;
`5:62-67. The specification describes that Windows CE®, which is the
`operating system used in a preferred embodiment, is described in the
`specification as providing a basic set of database and communication tools
`and database access is programmed using Microsoft’s ActiveX Data Objects
`API. Id. at 10:47-52, 11:9-18. The specification describes that software
`applications can be written in any language and that “[t]he discrete
`programming steps are commonly known.” Id. at 11:57-59. Mere recitation
`of known technologies or combinations of prior art structures to achieve the
`normal, expected, or predictable result do not render a patent a technological
`invention. Therefore, we find that claim 1 of the ’325 patent does not recite
`a technological feature that is novel and unobvious over the prior art.
`As to the second prong, Patent Owner argues that their claimed
`invention, as a whole, is directed to a technical solution to a technical
`problem and, therefore, is directed to a technical invention. See Prelim.
`Resp. 32-34. Patent Owner argues that the invention “was not simply
`creating computerized menus, it was solving the problem of how to display
`and synchronize computerized menus on non-standard devices/interfaces.”
`Prelim. Resp. 33. Petitioner argues that the claims of the ’325 patent do not
`recite a technical solution to a technical problem. Pet. 35-37.
`Contrary to the Patent Owner’s argument, claim 1 does not contain
`any recitations related to displaying and synchronizing computerized menus
`on non-standard devices/interfaces. The subject matter of claim 1 is directed
`
`
`
`
`13
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`to a system for generating a menu. As discussed above, claim 1’s system
`uses typical hardware elements and software programmed using commonly
`known programming steps. Therefore, we find that claim 1 of the ’325
`patent does not recite a technical solution to a technical problem. For the
`reasons stated above, we conclude that claim 1 of the ’325 patent is not a
`technological invention because it does not recite a technological feature that
`is novel and unobvious over the prior art or solve a technical problem using
`a technical solution.
`
`
`B. Grounds Under Section 112, Second Paragaphd
`Petitioner challenges claims 1-15 of the ’325 patent as being indefinite
`under 35 U.S.C. § 112, 2nd paragraph. Pet. 51-59. Upon review of
`Petitioner’s analysis and evidence, we determine that Petitioner has not
`demonstrated that claims 1-15 are more likely than not unpatentable for
`being indefinite.
`The scope of the claims must be sufficiently definite to inform the
`public of the bounds of the protected invention, i.e., what subject matter is
`covered by the exclusive rights of the patent. Halliburton Energy Servs. v.
`M-I, LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008). The test for whether a
`claim meets the definiteness requirement is whether a person of ordinary
`skill in the art would have understood the scope of the claim when read in
`light of the specification. Exxon Research & Eng’g Co. v. U. S., 265 F.3d
`1371, 1375 (Fed. Cir. 2001); Personalized Media Commc’ns v. Int’l Trade
`Comm’n, 161 F.3d 696, 705 (Fed. Cir. 1998).
`a. Hybrid Claims
`Petitioner alleges that claims 1-15 are indefinite because they recite
`
`
`
`
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`more than one statutory class of subject matter (i.e., are hybrid claims). Pet.
`53-57. Specifically, Petitioner alleges that independent claims 1 and 7-9 are
`directed to apparatuses, but also recite method steps of “parameters being
`selected from the modifier and sub-modifier menus,” and alleges that
`independent claims 11-13 are directed to apparatuses, but also recite a
`method step where “application and data are synchronized between the
`central database, at least one wireless handheld computing device, at least
`one Web server, and at least one Web page.” Id. at 54. Relying upon IPXL
`Holdings, LLC v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005),
`and In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303,
`1318 (Fed. Cir. 2011), Petitioner alleges that these claims do not apprise a
`person of ordinary skill in the art of their scope because it is unclear whether
`infringement occurs with the creation or use of the apparatus. Pet. 54-55.
`We are not persuaded that these claims are indefinite for reciting more
`than one statutory class of subject matter. Petitioner’s reliance on IPXL
`Holdings and In re Katz is not persuasive because the alleged method steps
`are not method steps reciting the use of the claimed apparatus, but instead
`are descriptions of the capabilities of the claimed application software and
`systems. See Microprocessor Enhancement Corp. v. Texas Instruments,
`Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008). Claim 1 and 7-9’s limitation
`“parameters being selected from the modifier and sub-modifier menus” is
`part of a larger clause that is directed to the application software’s ability to
`facilitate generation of the second menu. Likewise, claim 11-13’s limitation
`“applications and data are synchronized between the central database, at
`least one wireless handheld computing device, at least one Web server and at
`least one Web page” is a further limitation that is directed to the system’s
`
`
`
`
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`ability to synchronize applications and data.
`Given that the limitations at issue are not method steps, we are not
`persuaded that claims 1-15 are indefinite for claiming both a method and an
`apparatus.
`
`b. Transmitting to a Web page
`Petitioner alleges that claims 1-9 are indefinite because independent
`claims 1 and 7-9’s recitations of “transmitting said second menu to a . . .
`Web page” are “non-sensical.” Pet. 51-53. Likewise, Petitioner’s expert,
`Dr. Larson, opines that the limitation is “non-sensical.” Ex. 1042 at 5-6.
`Both Petitioner’s allegations and Dr. Larson’s opinion rely upon “web page”
`being construed as merely “a document.” See Pet. 51, Ex. 1042 at 5.
`Petitioner alleges that it doesn’t make sense to transmit a menu to a
`document, which is not a device. Pet. 51-53.
`We are not persuaded that claims 1 and 7-9 are indefinite because, as
`discussed above, for the purposes of this Decision, we construe “web page”
`differently to be not just a document, but a document with associated files
`for graphics, scripts, and other resources, accessible over the internet and
`viewable in a web browser. Id. Given that the Petitioner’s allegation is
`based upon a different construction of “web page,” we are not persuaded that
`claims 1-9 are indefinite. Any other protocol
`Petitioner alleges that claims 11-15 are indefinite because independent
`claims 11, 12, and 13 recite “any other communications protocol.” Pet. 57-
`59. The Petitioner alleges that one of ordinary skill in the art would be
`unable to determine the precise scope of this recitation, and none of the
`specification, the prosecution history, or the claim, itself, provides any
`guidance as to the scope of the recitation. Id. Petitioner alleges that the
`
`
`
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`specification only describes two types of communication protocols. Id.
`Patent Owner argues that the recitation is not indefinite and clearly refers to
`any communication protocol that is interfaced with hospitality applications
`via the communications control module software layer. Prelim. Resp. 61.
`Taking claim 11 as representative, claim 11 recites “wherein the
`communications control module is an interface between the hospitality
`applications and any other communications protocol.” Petitioner’s argument
`is conclusory and fails to take into account how a person of ordinary skill in
`the art would have understood the scope of the claim when read in light of
`the specification. Given that the Petitioner’s allegation is conclusory, we are
`not persuaded that claims 11-15 are more likely than not indefinite.
`
`
`C. Grounds Under Section 112, First Paragraph t
`Petitioner challenges claims 1-15 of the ’325 patent as lacking
`adequate written description support under 35 U.S.C. § 112, first paragraph.
`Pet. 41-51. Upon review of Petitioner’s analysis and evidence, we
`determine that Petitioner has not demonstrated that claims 1-15 are more
`likely than not unpatentable for lacking adequate written description support.
`The written description requirement of 35 U.S.C. § 112, first
`paragraph, requires that “the disclosure of the application relied upon
`reasonably convey[] to those skilled in the art that the inventor had.
`possession of the claimed subject matter as of the filing date.” Ariad
`Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). One
`shows “possession” by descriptive means such as words, structures, figures,
`diagrams, and formulas that set forth fully the claimed invention. Lockwood
`v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). It is
`
`
`
`
`17
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`Case CBM2014-00016
`Patent 6,871,325 B1
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`insufficient for purposes of the written description requirement that “the
`disclosure, when combined with the knowledge in the art, would lead one to
`speculate as to modifications that the inventor might have envisioned, but
`failed to disclose.” Id. “One shows that one is ‘in possession’ of the
`invention by describing the invention, with all its claimed limitations, not
`that which makes it obvious.” Id. (emphasis original). “[T]he hallmark of
`written description is disclosure. . . . [T]he test requires an objective inquiry
`into the four corners of the specification from the perspective of a person of
`ordinary skill in the art.” Ariad, 598 F.3d at 1351. Also, the claimed
`invention does not have to be described in ipsis verbis in the specification to
`satisfy the written description requirement. Union Oil Co. of Cal. v. Atlantic
`Richfield Co., 208 F.3d 989, 1000 (Fed. Cir. 2000). Compliance with the
`written description requirement is a question of fact. Ralston Purina Co. v.
`Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985).
`a. Genus, Species
`Petitioner alleges that claims 1-15 lack adequate written description
`support, in the original specification, for the full scope of the claims;
`particularly, for all species encompassed by the genus of synchronous
`communications systems. Pet. 43-49. Petitioner alleges that, although the
`specification provides adequate written description support for a first species
`of a system that synchronizes communication between a central database
`and a database on a handheld device, the specification lacks adequate written
`description support for a second species of a synchronous communication
`system where the handheld device does not have a local database. Id. at 46-
`47. Patent Owner does not dispute that synchronous communication
`systems is a genus that includes the two alleged species, but does dispute
`
`
`
`
`18
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`Apple, Exhibit 1018, Page 18
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`Case CBM2014-00016
`Patent 6,871,325 B1
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`that the specification fails to provide written description support for the
`second species. See Prelim. Resp. 51-56.
`
` We are not persuaded that the original specification, fails to provide
`adequate written description support for the second species of a synchronous
`communication system where the handheld device does not have a local
`database. The specification discloses synchronization and communication
`between a central database and multiple handheld devices, as well as,
`between a Web server and multiple handheld devices. Ex. 1032, 2:12-16;
`3:65-4:1; 11:25-28; see id. at 2:59-67; 11:45-49. The specification discloses
`that a single point of entry works to keep all handheld devices and linked
`web sites in sync with a central database so that all components are in
`equilibrium at any given time. Id. at 11:45-49. The specification discloses
`that a preferred embodiment of the invention uses Windows CE® and that
`Windows CE® provides built-in synchronization between handheld devices,
`internet and desktop infrastructure. Id. at 11:11-17. None of these portions
`of the specification describe the handheld device has a local database.
`Further, one of the passages of the ’850 patent cited by Petitioner describes
`the process for downloading a database to a device and states that “[i]f there
`is an existing menu database on the handheld device, the system will ask if
`the existing database should be replaced.” Id. at 45 (quoting Ex. 1032, 8:65-
`9:6) (emphasis added).
`Therefore, we are not persuade