Trials@uspto.gov
`571-272-7822
`
`
`
`
`
` Paper 23
`Entered: March 26, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`APPLE, INC., ET AL
`Petitioner,
`
`v.
`
`AMERANTH, INC.
`Patent Owner.
`____________
`
`Case CBM2014-00013
`Patent 6,982,733 B1
`____________
`
`
`
`Before JAMESON LEE, RICHARD E. RICE, and STACEY G. WHITE,
`Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`Apple, Exhibit 1020, Page 1
`
`
`571-272-7822
`
`
`
`
`
` Paper 23
`Entered: March 26, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`APPLE, INC., ET AL
`Petitioner,
`
`v.
`
`AMERANTH, INC.
`Patent Owner.
`____________
`
`Case CBM2014-00013
`Patent 6,982,733 B1
`____________
`
`
`
`Before JAMESON LEE, RICHARD E. RICE, and STACEY G. WHITE,
`Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`Apple, Exhibit 1020, Page 1
`
`
`
`CBM2014-00013
`Patent 6,982,733 B1
`
`I.
`
`INTRODUCTION
`
`Apple Inc., Fandango, LLC, OpenTable, Inc., Domino’s Pizza, Inc.,
`and Domino’s Pizza, LLC. (“Petitioner”) filed an amended petition (Paper
`10, “Pet.”) requesting a review under the transitional program for covered
`business method patents of claims 1-16 of U.S. Patent No. 6,982,733 B1
`(Ex. 1033, “the ’733 Patent”). Ameranth, Inc. (“Patent Owner”) filed a
`preliminary response (Paper 13, “Prelim. Resp.”). The Board has
`jurisdiction under 35 U.S.C. § 324.1
`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 1-16 of the ’733
`Patent under 35 U.S.C. §§ 101 and 112. Taking into account Petitioner’s
`evidence and arguments and Patent Owner’s preliminary response, we
`determine that the ’733 patent is a covered business method patent and that
`Petitioner has demonstrated that it is more likely than not that claims 1-16
`are directed to non-statutory subject matter and, thus, unpatentable under 35
`U.S.C. § 101. Therefore, we institute a covered business method patent
`
`
`1 See Section 18(a) of the Leahy-Smith America Invents Act, Pub. L.
`No. 112-29, 125 Stat. 284, 329 (2011) (“AIA”).
`2
`
`Apple, Exhibit 1020, Page 2
`
`
`
`
`
`CBMM2014-000013
`
`
`Patennt 6,982,7333 B1
`
`revieew for claims 1-16 off the ’733 PPatent baseed upon Peetitioner’s
`
`
`
`
`
`
`
`the claims
`that
`
`
`are unpateentable undder § 101.
`
`
`challenge
`
`
`
`
`A. The ’7333 Patent (EEx. 1033)
`
`
`
`
`
`The ’7333 Patent reelates to ann informatioon manageement and
`
`
`
`
`
`
`
`and enerating aethod for geem and meations systeommunicasyncchronous co
`
`
`
`
`
`transsmitting coomputerizeed menus fofor restauraants. Ex. 1
`
`033, Abstrract.
`
`
`
`
`
`Figuure 1 of thee ’733 Pateent is set foorth below::
`
`
`
`
`
`
`
`
`Figuure 1 is a scchematic reepresentatiion of the mmenu displlay/user innterface of
` Id. at 5:4
`-27. As
`
`
`
`the ppreferred embodimennt of the ’7
`33 Patent.
`1-45, 7:25
`
`
`showwn in Figurre 1, Graphhical User Interface ((“GUI”) 1
`
`
`includes mmenu tree 77,
`
`
`
`
`
`moddifiers winddow 8, andd sub-modifiers windoow 9. Id. aat 7:44-48
`
`
`
`
`
`. GUI 1 iss
`
`
`
`3
`
`Apple, Exhibit 1020, Page 3
`
`
`
`
`
`CBMM2014-000013
`
`
`Patennt 6,982,7333 B1
`
`
`
`usedd to build aa menu on aa desktop oor other coomputer. IdId. at 7:28-
`
`
`
`
`29. Menu
`
`
`
`
`
`
`
`itemms are categgorized andd displayedd in a hieraarchical maanner in mmenu tree 7.
`
`
`
`
`Moddifiers (e.g.., salad dreessing) are
`
`
`shown in mmodifiers wwindow 8
`and sub-
` etc.) are
`
`
`
`
`moddifiers (e.g., Italian drressing, Freench dress
`
`ing, Ranchh dressing,
`menu is
`
`
`showwn in sub-mmodifiers wwindow 9. Ex. 1033,, 7:30-36.
`Once the
`
`
`
`
`
`
`
`
`
`
`builtt using GUUI 1, the meenu may bee downloaaded to a haandheld deevice or
`
`
`
`Webb page. Id. at 10:1-9, 11:12-18.
`
`
`
`
`Figure 77 is reproduuced beloww:
`
` .
`
`
`
`
`
`
`
`
`
`Figuure 7 depictts the interrface on a ttypical wirreless devicce used in
`
`
`
`withh the inventtion of the ’733 Patennt. Id. at 113:2-4. Ass shown in
`
`
`
`Figure 7,
`
`
`
`
`
`
`
`“the page menuu is displayyed in a caatalogue-likke point-annd-click foormat . . .
`
`
`
`
`
`
`
`[therreby allowing] a persson with litttle expertiise [to] ‘paage throughh’ to
`
`
`
`
`
`
`
`compplete a trannsaction wwith the POS [point off sale] inteerface and aavoid
`
`conformityy
`
`4
`
`Apple, Exhibit 1020, Page 4
`
`
`
`
`
`CBMM2014-000013
`
`
`Patennt 6,982,7333 B1
`
`
`place an oorder.” Id.
`f Fig. 1 to havinng to revieew the entire menu of
`
`
`
`
`at 11:34-
`
`or Web paage. Id. at
`on a PDA
`11:40.
`
`
`
`39. This interfface could be shown
`
`
`
`Figure 88 is reproduuced beloww:
`
`Figuure 8 depictts the handdwritten screen accorrding to onne embodimment of thee
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`’7333 Patent. Inn that emboodiment, aa server maay take a drrink order
`by
`1033, 4:6-
`
`
`
`
`
`
`seleccting “Icedd Tea” fromm the menuu on the haandheld devvice. Ex.
`
`
`7. AAs shown inn Fig. 8, thhe server thhen manuaally modifiees the ordeer by
`
`
`
`
`
`
`
`writiing “w/ lemmon” on thhe screen oon the devicce. Id. at 44:7-9, Fig.
`8. The
`
`
`
`
`preparing
`
`
`
`
`
`
`manuually modiified drinkk order is thhen presentted to the iindividual
`
`
`the ddrinks. Id. at 4:9-11.
`
`
`
`B. Rellated Matteters
`eedings in
`
`
`
`wing proces the folloPetitioneer identifie
`
`n the U.S. DDistrict
`
`
`
`
`
`
`
`Courrt for the SSouthern DDistrict of CCalifornia iinvolving tthe ’733 paatent:
`
`
`
`
`
`
`
`Ameeranth, Inc.. v. Apple IInc., No. 3-12-cv-023350; Amerranth, Inc. vv.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`et all, No. 3-12-cv-00733; Ameranthh, Inc. v. OOpenTable,, Inc., No.
`3-12-cv-
`
`
`
`
`
`
`
`007331; Amerannth, Inc. v. OpenTablle, Inc., Noo. 3-13-cv--01840; Ammeranth,
`5
`
`Fanddango, Incc., No. 3-122-cv-016511; Amerantth, Inc. v. DDomino’s PPizza, LLCC
`
`Apple, Exhibit 1020, Page 5
`
`
`
`CBM2014-00013
`Patent 6,982,733 B1
`
`Inc. v. Fandango, Inc., No. 3-13-cv-01525; and Ameranth, Inc. v. Domino’s
`Pizza, LLC et al, No. 3-13-cv-01520. Pet. 10-11.
`Petitioner also requested review of the following patents related to the
`’733 Patent — U.S. Patent No. 6,384,850 B1 (CBM2014-00015), U.S.
`Patent No. 8,146,077 B2 (CBM2014-00014), and U.S. Patent No.
`6,871,325 B1 (CBM2014-00016).
`
`C. Illustrative Claims
`Petitioner challenges all sixteen claims of the ’733 patent. Claims 1
`and 12 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,
`f. a sub-modifier menu stored on said data storage device
`and displayable in a window of said graphical user interface,
`and
`
`6
`
`Apple, Exhibit 1020, Page 6
`
`
`
`CBM2014-00013
`Patent 6,982,733 B1
`
`g. application software for generating a second menu
`from said first menu and transmitting said second menu to a
`wireless handheld computing device or Web page,
`wherein the application software facilitates the
`generation of the second menu by allowing selection of
`categories and items from the first menu, addition of menu
`categories to the second menu, addition of menu items to the
`second menu and assignment of parameters to items in the
`second menu using the graphical user interface of said
`operating system, said parameters being selected from the
`modifier and sub-modifier menus, wherein said second menu is
`manually modified after generation.
`
`In a computer system having an input device, a
`12.
`storage device, a video display, an operating system including a
`graphical user interface and application software, an
`information management and synchronous communications
`method comprising the steps of:
`a. outputting at least one window on the video display;
`b. outputting a first menu in a window on the video
`display;
`c. displaying a cursor on the video display;
`d. selecting items from the first menu with the input
`device or the graphical user interface;
`e. inserting the items selected from the first menu into a
`second menu, the second menu being output in a window;
`f. optionally adding additional items not included in the
`first menu to the second menu using the input device or the
`graphical user interface;
`g. storing the second menu on the storage device; and
`synchronizing the data comprising the second menu
`between the storage device and at least one other data storage
`7
`
`Apple, Exhibit 1020, Page 7
`
`
`
`CBM2014-00013
`Patent 6,982,733 B1
`
`medium, wherein the other data storage medium is connected to
`or is part of a different computing device, and wherein said
`second menu is manually modified after generation.
`
`D. The Alleged Grounds of Unpatentability
`
`Petitioner challenges claims 1-16 of the ’733 Patent on the grounds
`that the claims do not recite patent-eligible subject matter under 35 U.S.C.
`§ 101, and under 35 U.S.C. § 112 for improperly claiming method and
`apparatus elements in a single claim and for providing insufficient written
`description to support the claims.
`
`II. ANALYSIS
`
`We turn to Petitioner’s asserted grounds of unpatentability and Patent
`Owner’s arguments in its preliminary response to determine whether
`Petitioner has met the threshold of 35 U.S.C. § 324(a).
`
`A. Claim Construction
`As an initial step in our analysis, we determine the meaning of the
`claims for purposes of this decision. In a covered business method patent
`review, a claim in an unexpired patent shall be given its broadest reasonable
`construction in light of the specification of the patent in which it appears.
`37 C.F.R. § 42.300(b). Under the broadest reasonable construction standard,
`claim terms are given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). Petitioner asserts that all claim terms should be given their ordinary
`
`8
`
`Apple, Exhibit 1020, Page 8
`
`
`
`CBM2014-00013
`Patent 6,982,733 B1
`
`and customary meaning. Pet. 29. Petitioner provides a chart listing several
`terms that it maintains should receive their ordinary and customary meaning,
`and listing ordinary and customary definitions for the following term: (1)
`Web page, (2) central processing unit (CPU), and (3) operating system. Id.
`at 31-32. Patent Owner proposes that the Board adopt all of the previous
`judicial constructions from four district court claim construction orders.
`Prelim. Resp. 36 (citing Exs. 2014, 2015, 2016, and 2017). We note that
`many of the terms construed in the district court claim construction orders
`refer to claim language found in various patents related to the ’733 Patent,
`but not found in the claims of the ’733 Patent itself. In light of the parties’
`substantive disputes regarding patentability of the ’733 Patent claims, we
`have determined that construction is necessary for the term “Web page.” All
`other terms in the challenged claims are given their ordinary and customary
`meaning and need no further construction at this time.
`
`“Web Page”
`The term “Web page” is found in claim 1 of the ’733 Patent.
`According to Petitioner, the ordinary and customary meaning of “Web page”
`is “[a] document on the World Wide Web.” Pet. 31. Dr. Ray R. Larson
`supports Petitioner’s construction by citing a definition from the Microsoft
`Computer Dictionary. Ex. 1042 ¶ 13 (citing Ex. 1042, Ex. B, Microsoft
`Press Computer Dictionary 479 (4th ed. 1999)). We note, however, that the
`full definition found in the Microsoft Dictionary supports Patent Owner’s
`construction, discussed below. The definition is as follows:
`
`9
`
`Apple, Exhibit 1020, Page 9
`
`
`
`CBM2014-00013
`Patent 6,982,733 B1
`
`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, Ex. B. Patent Owner responds that “Web page” has been
`construed in other cases involving related patents and that that construction
`should be adopted in this case. Prelim. Resp. 38-39. The previous
`construction 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.” Id. at 39. We are persuaded that the ordinary
`and customary meaning of “Web page” is consistent with Patent Owner’s
`proposed construction. Accordingly, we construe “Web page” as “a
`document, with associated files for graphics, scripts, and other resources,
`accessible over the internet and viewable in a web browser.”
`
`B. Standing
`Section 18 of the AIA provides for the creation of a transitional
`program for reviewing covered business method patents. 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). A patent need have only one
`claim directed to a covered business method to be eligible for review. See
`Transitional Program for Covered Business Method Patents—Definitions of
`10
`
`Apple, Exhibit 1020, Page 10
`
`
`
`CBM2014-00013
`Patent 6,982,733 B1
`
`Covered Business Method Patent and Technological Invention; Final Rule,
`77 Fed. Reg. 48,734, 48,736 (Comment 8) (Aug. 14, 2012). Section 18
`limits reviews to persons or their privies that have been sued or charged with
`infringement of a “covered business method patent.” AIA §§ 18(a)(1)(B),
`18(d)(1); see also 37 C.F.R. § 42.302.
`It is undisputed that Petitioner has been sued for infringement of the
`’733 Patent. The only dispute is whether the ’733 Patent is a “covered
`business method patent,” as defined in the AIA and 37 C.F.R. § 42.301. See
`Pet. 14-27; Prelim. Resp. 8-34. For the reasons explained below, we
`conclude that the ’733 Patent is a “covered business method patent.”
`
`1. 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). In
`order to determine whether a patent is eligible for a covered business method
`patent review, we must focus on the claims. See 77 Fed. Reg. 48,734,
`48,736 (Aug. 14, 2012). 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 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
`11
`
`Apple, Exhibit 1020, Page 11
`
`
`
`CBM2014-00013
`Patent 6,982,733 B1
`
`drafted to encompass patents ‘claiming activities that are financial in nature,
`incidental to a financial activity or complementary to a financial activity.’”
`Id. (citing 157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011) (statement of Sen.
`Schumer)). The legislative history indicates that “financial product or
`service” should be interpreted broadly. Id.
`The invention of the ’733 Patent relates to “a software tool for
`building a menu . . . and making manual or automatic modifications to the
`menu after initial creation.” Ex. 1033, 3:43-47. The manual modification
`described in the ’733 Patent “solves a long-standing, operational issue in
`restaurant/hotel/casino food/drink ordering when customers want something
`unusual and not anticipated and available through normal computerized
`selections.” Id. at 10:54-57. Petitioner argues that the claimed systems and
`methods all relate to financial transaction/service in the hospitality industry
`such as ordering food and drinks. Pet. 17. Patent Owner responds by
`asserting that the claims are not directed to “ordering” or other financial
`transactions, but the claims are instead “directed to specialized computer
`software system functionality which may be used in those contexts.” Prelim.
`Resp. 9.
`Claim 12 of the ’733 Patent recites a method of using a computer
`system to create and communicate a menu. In addition, Figure 7, which
`depicts a menu pursuant to the claims of the ’733 Patent, includes an “order”
`screen for ordering food and drinks and a “pay” tab for paying for the
`ordered items. Ex. 1033, Fig. 7; see also id. at 11:44-51 (stating that the
`handheld device “supports pricing in the database or querying prices” and
`
`12
`
`Apple, Exhibit 1020, Page 12
`
`
`
`CBM2014-00013
`Patent 6,982,733 B1
`
`that it “provides for billing, status and payment with respect to orders.”).
`We agree with Petitioner; and, on this record, we have determined that the
`’733 Patent’s menus relate to a commercial transaction. We determine that
`such activity falls within a financial product or service as it is incidental or
`complementary to a financial activity, namely sales of food or drinks. Thus,
`we are persuaded that at least one claim of the ’733 Patent covers data
`processing or corresponding apparatuses for performing data processing
`used in the practice, administration, or management of a financial product
`(e.g., a menu used to order food or drinks).
`Patent Owner argues that the claims are directed to “‘technologies
`common in business environments across sectors’ with ‘no particular
`relation to the financial services sector’ and thus[, are] excluded from CBM
`review.” Prelim. Resp. 10 (citing Ex. 2006). The legislative history of the
`AIA, however, indicates that the phrase “financial product or service” is not
`limited to the products or services of the “financial services industry” and is
`to be interpreted broadly. 77 Fed. Reg. at 48,735–36 (“[t]he plain meaning
`of ‘financial product or service’ demonstrates that section 18 is not limited
`to the financial services industry”) (statement of Sen. Schumer). On this
`record, we are persuaded that claim 12 recites a method for performing data
`processing or other operations used in the practice, administration, or
`management of a financial product or service, as required by Section
`18(d)(1) of the AIA.
`
`13
`
`Apple, Exhibit 1020, Page 13
`
`
`
`CBM2014-00013
`Patent 6,982,733 B1
`
`2. Not a Technological Invention
`In view of the “technological inventions” exception of AIA
`§ 18(d)(1), the legislative history of § 18(d)(1), and the definition of
`“technological invention” under 37 C.F.R. § 42.301(b), the Office Patent
`Trial Practice Guide provides the following guidance with respect to claim
`content that typically would 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 the process or method
`is novel and non-obvious.
`(c) Combining prior art structures to achieve the normal,
`expected, or predictable result of that combination.
`77 Fed. Reg. at 48,763–64 (Aug. 14, 2012).
`There are two requirements for a technological invention; namely,
`(1) the claimed subject matter as a whole must recite a technological feature
`that is novel and unobvious over the prior art; and (2) it must solve a
`technical problem using a technical solution. 37 C.F.R. § 42.301(b). If a
`claim fails to satisfy either of those requirements, then it is not a
`technological invention for the purposes of determining whether a patent is a
`covered business method patent under AIA § 18(d)(1).
`Petitioner asserts that the ’733 Patent claims are not directed to a
`technological invention. Pet. 22. According to Petitioner, to the extent that
`
`14
`
`Apple, Exhibit 1020, Page 14
`
`
`
`CBM2014-00013
`Patent 6,982,733 B1
`
`the claims contain any technological features, they are neither new nor
`nonobvious. Id. Petitioner notes that the specification states that “[t]he
`software applications for performing the functions falling within the
`described invention can be written in any commonly used computer
`language. The discrete programming steps are commonly known and thus[,]
`programming details are not necessary to a full description of the invention.”
`Id. at 23 (quoting Ex. 1033, 12:61-65); see also Ex. 1033, 15:31-42 (“The
`inventive concept encompasses the generation of a menu in any context
`known to those skilled in the art where an objective is to facilitate display of
`the menu so as to enable selection of items from that menu . . . . Any display
`and transmission means known to those skilled in the art is equally usable
`with respect to menus generated in accordance with the claimed invention.”)
`Patent Owner responds that the inventive software system includes a
`central database that maintains “database equilibrium,” has a “single truth”
`for the hospitality data contained in the database, and causes substantive
`menu data to be formatted, sequenced, displayed, and updated correctly
`across a variety of devices. Prelim. Resp. 16. In addition, the system
`enables “manual modification” of the second menu through handwriting or
`voice capture. Id.
`On this record, we agree with Petitioner. The specification states that
`database access is programmed using Microsoft’s APIs for ActiveX Data
`Objects, and the programming steps were “commonly known.” Ex. 1033,
`11:54-56, 12:61-65. In addition, the claims are not directed to, nor does the
`specification disclose, an inventive device for manually modifying menus.
`
`15
`
`Apple, Exhibit 1020, Page 15
`
`
`
`CBM2014-00013
`Patent 6,982,733 B1
`
`Id. at 6:47-52 (describing hardware used in the inventive system as
`“typical”). Thus, we are persuaded that the claims of the ’733 Patent do not
`recite a technological feature that is novel and unobvious over the prior art.
`In addition, we are not persuaded by Patent Owner’s arguments that
`the claimed subject matter as a whole solves a technical problem using a
`technical solution. The ’733 Patent was intended to “solve[] a long-
`standing, operational issue in restaurant/hotel/casino food/drink ordering
`when customers want something unusual and not anticipated and available
`through normal computerized selections.” Ex. 1033, 10:54-57. Claim 12 is
`directed to a method that purportedly solves this problem by allowing for
`manual modification of the menu. This “long-standing operational issue”,
`however, is more of a business problem than a technical problem. Patent
`Owner maintains that the ’733 Patent addresses the problem of displaying
`menus on a variety of devices with different sizes and characteristics.
`Prelim. Resp. 15. This, however, is not addressed by claim 12, which is
`directed to a method for displaying and generating a menu on a computer
`system. Claim 12’s computer system synchronizes data with a data storage
`medium, but the claim does not recite displaying the menu on a display
`associated with this storage medium. Thus, claim 12 does not address
`displaying menus on a variety of devices. Therefore, on this record we are
`persuaded that claim 12 is not directed to a technical problem.
`In view of the foregoing, we conclude that the presence of claim 12
`means that the ’733 patent is a covered business method patent under AIA
`§ 18(d)(1).
`
`16
`
`Apple, Exhibit 1020, Page 16
`
`
`
`CBM2014-00013
`Patent 6,982,733 B1
`
`C. Asserted Ground Based on 35 U.S.C. § 112
`1. Improperly Mixing Method and Apparatus Elements
`Petitioner argues that apparatus claims 1-11 are unpatentable under 35
`U.S.C. § 112, second paragraph2 because they impermissibly require
`performance of at least one method step. Pet. 32. Independent claim 1 is
`directed to an “information management and synchronous communications
`system.” It recites, in relevant part:
`wherein the application software facilitates the generation of the
`second menu by allowing selection of categories and items
`from the first menu, addition of menu categories to the second
`menu, addition of menu items to the second menu and
`assignment of parameters to items in the second menu using the
`graphical user interface of said operating system, said
`parameters being selected from the modifier and sub-modifier
`menus, wherein said second menu is manually modified after
`generation.
`
`Ex. 1033, 16:16-25 (emphasis added). Independent claims 4 and 5 also are
`directed to information management and synchronous communications
`systems and recite similar wherein clauses that include language directed to
`manual modification of the second menu. Id. at 16:32-17:13. Claims 2-3,
`and 6-11 depend from independent claims 1, 4, and/or 5.
`Petitioner argues that it is unclear if independent claim 1 of the ’733
`Patent is infringed when the claimed system is supplied, or only when the
`
`2 Section 4(c) of the AIA re-designated 35 U.S.C. § 112, second paragraph,
`as 35 U.S.C. § 112(b). Because the ’733 patent has an effective filing date
`before September 16, 2012, we refer to the pre-AIA version of 35 U.S.C.
`§ 112.
`
`17
`
`Apple, Exhibit 1020, Page 17
`
`
`
`CBM2014-00013
`Patent 6,982,733 B1
`
`“second menu is manually modified . . . after generation.” Pet. 34.
`Petitioner asserts that claim 4’s manual modification by “handwriting or
`voice recording” “are actions performed by a user, and are not simply
`capabilities of a computer system; indeed computer systems cannot
`handwrite.” Pet. 35 (citing Ex. 1033, 16:51-53). Patent Owner argues that
`“the manually modified menu is produced by software functionality in
`response to an input.” Prelim. Resp. 50. As such, the manual modification
`language is “a recitation of functional capability, not user action.” Id.
`On this record, we are not persuaded that the challenged claims are
`ambiguous as to whether they are satisfied by an information management
`and synchronous communications system alone or whether they require the
`step of performing a modification to the claimed menu. For example, claim
`1’s wherein clause is directed to “application software” with the ability to
`facilitate “generation of the second menu” by “selection of categories,”
`addition of menu categories and items to the second menu, and assignment
`of parameters. We are persuaded that the manual modification clause is a
`further limitation regarding the application software’s ability to facilitate
`generation of the second menu. We are not persuaded that the claims
`require the user to act upon the system; instead, we are persuaded that the
`claims are directed to capabilities of the system, as limitations on the
`“application software” that is a structural element of the claims. For the
`foregoing reasons, we are not persuaded that Petitioner has demonstrated
`that claims 1-11 are unpatentable under 35 U.S.C. § 112, second paragraph,
`for impermissibly mixing system and method elements.
`
`18
`
`Apple, Exhibit 1020, Page 18
`
`
`
`CBM2014-00013
`Patent 6,982,733 B1
`
`2. Lack of Written Description for “Synchronous Communications”
`Claim Elements
`Petitioner challenges claims 1-16 of the ’733 patent as lacking
`adequate written description support in regards to the “synchronous
`communications” element found in all of the challenged claims. Pet. 39-45.
`Petitioner admits that the specification describes synchronous
`communication between a database on a handheld device and a master
`database. Id. at 40-41 (citing Ex. 1033, 10:1-9, 11:16-18, and 11:25-29).
`Petitioner, however, disputes whether the specification provides support for
`synchronous communication wherein the handheld device does not have a
`local database. Id. at 42-43. Petitioner’s expert, Dr. Larson, does not opine
`on this issue. See Ex. 1042.
`Patent Owner argues that the ’733 Patent claims are original claims
`and as such are entitled to a “strong presumption” of compliance with the
`requirements of Section 112. Prelim. Resp. 51. The Federal Circuit,
`however, has held that “[n]either the statute nor legal precedent . . .
`distinguishes between original and amended claims.” Ariad Pharm. v. Eli
`Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Thus, while
`“many original claims will satisfy the written description requirement,
`certain claims may not.” Id. at 1349; see also id. (noting that an original
`claim directed to a genus may be insufficient to demonstrate that the
`applicant invented species sufficient to support a claim to the genus).
`Determining whether the requirements of Section 112 have been met
`“requires an objective inquiry into the four corners of the specification from
`
`19
`
`Apple, Exhibit 1020, Page 19
`
`
`
`CBM2014-00013
`Patent 6,982,733 B1
`
`the perspective of a person of ordinary skill in the art. Based on that inquiry,
`the specification must describe an invention understandable to that skilled
`artisan and show that the inventor actually invented the invention claimed.”
`Id. Therefore, we must examine the specification’s disclosure in order to
`ascertain whether it contains sufficient support for the disputed claim
`language.
`Patent Owner asserts that “there is nothing in any of the claims
`requiring synchronization with a handheld device ‘database’” and that the
`term “local database” is not used in the ’733 Patent. Id. at 54. In addition,
`Patent Owner maintains that the “synchronous communications” limitation
`is supported fully by the specification. The ’733 Patent specification
`describes
`fast synchronization between a central database and multiple
`handheld devices, synchronization and communication between
`a Web server and multiple handheld devices, a well-defined
`API that enables third parties such as POS companies, affinity
`program companies and internet content providers to fully
`integrate with computerized hospitality applications, real-time
`communication over the internet with direct connections or
`regular modem dialup connections and support for batch
`processing that can be done periodically throughout the day to
`keep multiple sites in synch with the central database.
`
`Ex. 1033, 4:66-5:11. This portion of the specification describes
`synchronization between handheld devices and a central database. It does
`not describe the devices as having databases resident on the devices. This is
`in contrast to portions of the specification cited by Petitioner that recite
`“multiple databases.” Pet. 40 (citing Ex. 1033, 11:25-29). In addition, we
`20
`
`Apple, Exhibit 1020, Page 20
`
`
`
`CBM2014-00013
`Patent 6,982,733 B1
`
`note that a portion of the specification cited by Petitioner describes the
`process for downloading a database to a device and states that “If there is an
`existing menu database on the handheld device, the system will ask if the
`existing database should be replaced.” Id. at 40-41 (quoting Ex. 1033, 10:1-
`9) (emphasis added). On this record, we are persuaded that the specification
`provides support for synchronous communications between a central
`database and handheld device both with and without a database resident on
`the handheld device. Thus, for the foregoing reasons, we are not persuaded
`that claims 1-16 are more likely than not unpatentable for lacking an
`adequate written description under 35 U.S.C. § 112, first paragraph.
`
`3. Indefiniteness of and Lack of Written Description for “Transmitting
`Said Second Menu to a . . . Web Page”
`Petitioner asserts that claims 1-3 of the ’733 Patent are unpatentable
`because the term “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,” as recited in cl
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
