Case 2:07-cv-00271-RSP Document 281 Filed 10/19/10 Page 1 of 19 PageID #: 16468
`
`
`
`
`
`Plaintiff,
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`AMERANTH, INC.,
`
`
`
`
`v.
`
`
`MENUSOFT SYSTEMS CORPORATION
`and CASH REGISTER SALES & SERVICE
`OF HOUSTON, INC. (dba CRS TEXAS)
`
`Defendants.
`
`
`
`Civil Action No. 2:07-CV-271-TJW-CE
`
`
`
`
`
`
`
`
`
` AMERANTH’S MOTION FOR JUDGMENT AS A MATTER OF LAW PURSUANT TO
`FEDERAL RULE OF CIVIL PROCEDURE 50(B) OF NONOBVIOUSNESS
`
`
`
`Apple, Exhibit 1057, Page 1
`
`

`

`Case 2:07-cv-00271-RSP Document 281 Filed 10/19/10 Page 2 of 19 PageID #: 16469
`
`
`
`TABLE OF CONTENTS
`
`
`I.
`II.
`
`B.
`C.
`D.
`E.
`
`APPLICABLE LEGAL STANDARDS ...........................................................................1
`DEFENDANTS DID NOT PRESENT SUBSTANTIAL EVIDENCE OF
`OBVIOUSNESS .................................................................................................................1
`A.
`Dr. Acampora’s Conclusory Trial Testimony And Expert Report Did Not
`Present Substantial Evidence Of Obviousness To Support The Jury Verdict.1
`The Claims Are Not Obvious In View Of Prior Versions Of Digital Dining....4
`The Claims Are Not Obvious In View of Camaisa .............................................5
`The Claims Are Not Obvious In View of Squirrel ..............................................6
`The Claims Are Not Obvious In View of Micros 8700 And Kanevsky.............7
`1.
`The Micros Manual Is Not Prior Art Under 35 U.S.C. 102 ...................7
`2.
`Even If It Were Available As Prior Art, Micros 8700 Would Not
`Render The Asserted Claims Obvious .....................................................8
`The Claims Are Not Obvious In View of Transpad..........................................11
`Ameranth Was The First To Recognize A Problem And Find A Solution
`Which All Of Defendants’ References Taught Away From.............................12
`No Alleged Prior Art Combination Meets The “Both” Requirement Of The
`Claims As Construed By The Court...................................................................13
`Dr. Acampora’s Failure To Provide Testimony Regarding Secondary Indicia
`Of Nonobviousness Rendered His Testimony Incapable Of Supporting The
`Verdict...................................................................................................................14
`A Number Of Asserted Claims Are Independently Nonobvious.....................15
`J.
`III. CONCLUSION ................................................................................................................15
`
`
`
`F.
`G.
`
`H.
`
`I.
`
`i
`
`Apple, Exhibit 1057, Page 2
`
`

`

`Case 2:07-cv-00271-RSP Document 281 Filed 10/19/10 Page 3 of 19 PageID #: 16470
`
`
`
`
`Pursuant to Federal Rule of Civil Procedure 50(b), following the jury’s verdict, Plaintiff
`
`Ameranth. Inc. (“Ameranth”) respectfully moves the Court to enter judgment as a matter of law
`
`(“JMOL”) in its favor on the issue of obviousness.1 The issue to be decided is whether Defendants
`
`presented substantial evidence of obviousness at trial (applying the clear and convincing standard)
`
`sufficient to support the jury’s verdict. The grounds for this motion are as follows.
`
`I.
`
`APPLICABLE LEGAL STANDARDS
`The standards for grant of a motion for JMOL are detailed in Ameranth’s Motion for JMOL of
`
`No Anticipation filed contemporaneously herewith, and are incorporated herein by reference.
`
`Proof of obviousness requires clear and convincing evidence that the claimed invention would
`
`have been obvious to a person of ordinary skill in the art at the time the invention was made.
`
`Obviousness is a conclusion of law based on underlying factual findings. In re Kubin, 561 F.3d 1351,
`
`1355 (Fed. Cir. 2009).2 Where, as here, there were no explicit factual findings regarding obviousness,
`
`the Court must determine whether the implicit findings necessary to support the verdict are supported
`
`by substantial evidence. Upjohn Co. v. Mova Pharma. Corp., 225 F.3d 1306, 1310 (Fed. Cir. 2000).
`
`II.
`
`DEFENDANTS DID NOT PRESENT SUBSTANTIAL EVIDENCE OF OBVIOUSNESS
`Defendants purported to put on evidence at trial regarding obviousness of the asserted claims
`
`based on each of (a) “prior versions” of Digital Dining, (b) Camaisa (U.S. Pat. 5,845,263), (c) Squirrel,
`
`(d) Micros 8700 User Manual combined with Kanevsky (U.S. Pat. 6,300,947) and (e) Transpad. (Trial
`
`Tr. 9/16/10 afternoon, pp. 36-38).3 The jury found the asserted claims obvious. However, the record
`
`evidence clearly does not amount to substantial evidence of obviousness to legally support the verdict.
`
`A.
`
`Dr. Acampora’s Conclusory Trial Testimony And Expert Report Did Not Present
`Substantial Evidence Of Obviousness To Support The Jury Verdict
`Dr. Acampora’s conclusory trial testimony on invalidity lasted only a few short minutes.
`
`
`1 Ameranth moved for JMOL of nonobviousness under Rule 50(a) at the close of Defendants’ case.
`2 The factfinder must consider: (1) scope and content of prior art; (2) level of skill in the art; (3)
`differences between claims and prior art and (4) secondary indicia of nonobviousness. KSR Int’l Co.
`v. Teleflex Inc., 550 U.S. 398, 406 (2007); Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
`3 These are the only bases for obviousness in the trial testimony. To the extent Defendants may argue
`that references not discussed at trial could have been considered by the jury to render the claims
`obvious, such argument would fail for lack of supporting expert testimony as discussed below.
`1
`
`Apple, Exhibit 1057, Page 3
`
`

`

`Case 2:07-cv-00271-RSP Document 281 Filed 10/19/10 Page 4 of 19 PageID #: 16471
`
`
`Amazingly, he referred the jury to his expert report containing “approximately 500 pages of single-
`
`spaced charts.” The report referred conclusorily to combinations,4 but the narrative and charts merely
`
`extracted verbatim quotes from the references, nowhere analyzing how the quoted material taught or
`
`suggested any claim element, nor offering a non-conclusory reason to combine references, nor offering
`
`support for his conclusion of “predictable results.”5 There was also no analysis of the differences
`
`between the claims and the prior art, and no testimony that those differences would have been obvious.
`
`As recently held in Soverain v. Newegg, expert testimony is required to prove invalidity where
`
`“the subject matter [] is sufficiently complex to fall beyond the grasp of an ordinary layperson.”6 Dr.
`
`Acampora admitted that even his “Ph.d level students” would have difficulty understanding the subject
`
`matter in this case.7 He was thus required to explain to the jury, via testimony, how the claims are
`
`rendered obvious–including how each element is found in the prior art and reasons to combine
`
`references to make the invention. As per Soverain, “the Federal Circuit ha[s] made clear that ‘[t]here
`
`must be some articulated reasoning with some rational underpinning to support the legal conclusion
`
`of obviousness.’”8 Dr. Acampora’s testimony and report did not articulate any reasons for concluding
`
`obviousness–they merely cast the jury adrift to come to its own conclusions without expert testimony.
`
`In Innogenetics v. Abbott, on facts remarkably similar to the present case, the Federal Circuit
`
`
`4 Purportedly based on the alleged nature of the problem being solved, alleged teachings of the prior
`art, alleged knowledge of a person of ordinary skill in the art (“POSA”), the alleged fact that prior art
`was generally directed to combining devices, and alleged predictable results. (PTX-28, pp. 50-51).
`5 The entirety of Dr. Acampora’s testimony and report were conclusory as to obviousness. Dr.
`Acampora even went so far as to say on the stand that the claims are invalid over individual
`references in combination with “other references” without telling the jury what other references he
`had in mind. (Trial Tr. 9/16/10 afternoon, pp. 36, 46 (Camaisa), 37 (Micros), 37-38 (Digital
`Dining)). His report was equally vague, merely referring to laundry lists of possible combinations
`but with no expert testimony to assist the jury in actually making any of the alleged combinations.
`(PTX-28, at 49-56). The generic verdict form, which Ameranth objected to, also allowed Defendants
`to confuse the jury into finding obviousness based on a non-specific amalgam of references.
`6 Soverain v. Newegg, 2010 U.S. Dist. LEXIS 89268, *41 (E.D. Tex. Aug. 11, 2010) (citing Proveris
`Scientific Corp. v. Innovasystems, Inc., 536 F.3d 1256, 1267-68 (Fed. Cir. 2008)).
`7Trial Tr. 9/16/10 afternoon, p. 18:12-13. He also said that a POSA would be a college graduate in
`electrical engineering or computer science with two years experience (PTX-28, p. 2), a level of skill
`far beyond that of an ordinary layperson.
`8 Soverain, 2010 U.S. Dist. LEXIS 89268 at *40 (citing Innogenetics, N.V. v. Abbott Labs., 512 F.3d
`1363, 1373 (Fed. Cir. 2008)). Emphasis added unless otherwise indicated.
`2
`
`Apple, Exhibit 1057, Page 4
`
`

`

`Case 2:07-cv-00271-RSP Document 281 Filed 10/19/10 Page 5 of 19 PageID #: 16472
`
`
`affirmed the exclusion of vague and conclusory expert testimony that was not helpful to the lay jury:
`
`Nowhere does Dr. Patterson state how or why a person ordinarily skilled in the art would have
`found the claims [] obvious in light of some combination of those particular references. As the
`district court found: “It is not credible to think that a lay jury could examine the [prior art
`references] that defendant cited as prior art or any of the other references and determine on its
`own whether there were differences among them and the [patent-in-suit].” Such vague testimony
`would not have been helpful to a lay jury in avoiding the pitfalls of hindsight that belie a
`determination of obviousness.9
`Fed. R. Evid. 702 allows an expert to “testify” to “assist the trier of fact to understand the
`
`evidence or to determine a fact in issue.” However, a voluminous report merely quoting from other
`
`documents cannot take the place of actual expert testimony.10 Moreover, a conclusory expert report or
`
`testimony cannot provide clear and convincing evidence of invalidity:
`
`The reports of Plaintiffs’ experts are conclusory. They state the experts’ ultimate opinions
`regarding . . . obviousness and, generally, the authorities and evidence upon which they rely, but
`without any elaboration or reasoning. It is not sufficient simply to list the resources they
`utilized and then state an ultimate opinion without some discussion of their thought process.11
`Dr. Reed’s direct testimony was conclusory and failed to analyze and explain the claim
`language and which components of the prior art embodied each element of the asserted claims.”
`We agree with the district court that “[s]uch conclusory evidence is hardly enough to meet RIM’s
`high burden of clear and convincing evidence with respect to anticipation and obviousness.”12
`General and conclusory testimony [] does not suffice as substantial evidence of invalidity. This is
`so even when the reference has been submitted into evidence before the jury. Because Koito failed
`to articulate how the JP ’082 reference anticipates or makes obvious the ’268 patent, it has not
`presented sufficient evidence for the jury with respect to the JP ’082 reference.13
`
`
`9 Innogenetics, 512 F.3d at 1373 (Fed. Cir. 2008) (following KSR and Graham) (internal citation
`omitted); see also STS Software Sys., Ltd. v. Witness Sys., Inc., 2008 U.S. Dist. LEXIS 17667, *7
`(N.D. Ga. Mar. 6, 2008) (“The opinions expressed on obviousness consist of a summary of prior art
`references, claim charts containing quotes excerpted from these references, and a conclusion that
`a combination of references renders the patent claims obvious. . . . No reason or basis is offered []
`for the conclusion of obviousness, and no opinions are expressed as to why it would be obvious for a
`person of ordinary skill in the art to combine the prior art in the way that is claimed.”).
`10Engebretsen v. Fairchild Corp., 21 F.3d 721, 728 (6th Cir. 1994) (“Rule 702 permits the admission
`of expert opinion testimony not opinions contained in documents prepared out of court.”) (emphasis
`in original).
`11Elder v. Tanner Corp., 205 F.R.D. 190, 204 (E.D. Tex. 2001).
`12NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1325 (Fed. Cir. 2005) (citation omitted).
`13Koito Mfg. Co., v. Turn-Key Tech., 381 F.3d 1142, 1152 (Fed. Cir. 2004) (internal citation omitted);
`see also Newriver, Inc. v. Newkirk Products, Inc., 674 F.Supp.2d 320, 333-34 (D. Mass. 2009)
`(“Koito . . . make[s] clear that, on the issues of anticipation, obviousness, and doctrine of equivalents,
`the unsupported opinion even of a qualified expert is simply not ‘substantial evidence’ adequate to
`support a jury verdict on those issues…Federal Circuit case law renders legally inadequate the
`opinions of qualified experts on the ultimate issues of anticipation, obviousness, and doctrine of
`equivalents unless the bases therefor are spelled out on the record.”).
`3
`
`Apple, Exhibit 1057, Page 5
`
`

`

`Case 2:07-cv-00271-RSP Document 281 Filed 10/19/10 Page 6 of 19 PageID #: 16473
`
`
`
`[T]o accept confusing or generalized testimony as evidence of invalidity is improper. The risk is
`great that the confusion or generality is the result, not of an inarticulate witness or complex subject
`matter, but of a witness who is unable to provide the essential testimony.14
`Dr. Acampora provided only conclusory testimony at trial because he was unable to provide essential
`
`testimony as to how or why each of the claim elements were disclosed in the alleged prior art
`
`references.15 Likewise in his report, Dr. Acampora provided only “a bare recitation of excerpts” from
`
`the alleged prior art references.16 Dr. Acampora’s reliance on a voluminous report17 in lieu of actual
`
`trial testimony was improper. It was in fact the opposite of helpful to the jury; it misled the jury.
`
`B.
`The Claims Are Not Obvious In View Of Prior Versions Of Digital Dining
`Defendants fared no better in their attempt to make an obviousness argument based on Digital
`
`Dining than they did for anticipation.18 In fact, Dr. Acampora admitted in his report that “Digital
`
`Dining for Windows does not teach the required first menu, modifier menu, or sub-modifier menu.”
`
`(PTX-28 at 54) (referring to 1997 DD Version 7.0). He offered only verbatim quotes from other
`
`references to try to fill the gaps, but did not attempt to explain how or why a POSA would make any
`
`combination. He also admitted that 1997 Digital Dining did not have the capability for transmitting to
`
`a handheld device or Web page. Id. Again, however, he stated conclusorily that a POSA would
`
`combine other references with the 1997 version, but did not explain how or why a POSA would do so.
`
`Also, only verbal testimony regarding alleged handheld functionality in the DOS version was
`
`presented. However, this testimony was uncorroborated by any documentary evidence and Mr. Blunt
`
`admitted that the DOS version did not transmit menus from a central server as required by the claims.19
`
`Dr. Acampora’s opinion regarding “prior versions” of Digital Dining is emblematic of all of his
`
`
`14Schumer v. Lab. Computer Sys., 308 F.3d 1304, 1316 (Fed. Cir. 2002).
`15Dr. Acampora admitted that he did not show the jury any claim-by-claim analysis nor any claim that
`was met by the asserted references. (Trial Tr. 9/16 afternoon, p. 76:2-10).
`16See CIF Licensing, LLC v. Agere Sys., Inc., 2010 WL 3001775, *20 (D. Del. July 30, 2010) (“bare
`recitation of excerpts” from prior art cannot provide substantial evidence to sustain jury verdict).
`17Moreover, the report was not substantive evidence as discussed in Ameranth’s Motion for a New
`Trial filed contemporaneously herewith.
`18As detailed in Ameranth’s JMOL of No Anticipation filed contemporaneously herewith, no version
`of Digital Dining before version 7.2 in 2002 included all elements of any asserted claim. Version 7.2
`was the first version to use a version of Terminal Services that was Windows CE/Web compatible.
`19 Trial Tr. 9/16/10 morning, pp. 150:22-151:4.
`
`4
`
`Apple, Exhibit 1057, Page 6
`
`

`

`Case 2:07-cv-00271-RSP Document 281 Filed 10/19/10 Page 7 of 19 PageID #: 16474
`
`
`conclusory opinions. He relied on the incorrect view that a POSA’s alleged knowledge of “how to
`
`connect a wireless handheld with Digital Dining” (PTX-28 at 54) rendered the claims obvious.
`
`However, the asserted claims do not recite “connecting”20 a wireless handheld with anything, and thus
`
`Dr. Acampora’s opinion was an improper basis on which to rest the jury verdict.21
`
`C.
`The Claims Are Not Obvious In View of Camaisa
`Camaisa fails to describe numerous claim elements as detailed in Ameranth’s Motion for
`
`JMOL of No Anticipation filed contemporaneously herewith. Regarding obviousness, Dr. Acampora
`
`offered only verbatim quotes extracted from Camaisa and Kinebuchi (PTX-28 at 51), but offered no
`
`explanation of why or how Kinebuchi or any other reference could be combined with Camaisa.
`
`As was his practice for all of the alleged prior art references and combinations, Dr. Acampora
`
`provided no opinion that Camaisa taught or suggested the capability to transmit a menu to a handheld
`
`or Web page client, and certainly not “both” as required by each of the asserted claims. Rather, he
`
`stated conclusorily that “it’s possible for remote computers to access data stored in a central location”
`
`and “a person at home using a PC could gain access to this database over, among other media, an
`
`internet link.”22 However, the asserted claims are not directed to generic “gaining access to a
`
`database.” As discussed in Ameranth’s Motion for JMOL based on Expert Testimony Outside the
`
`Court’s Claim Construction (filed on even date herewith), Dr. Acampora’s “access to a database”
`
`argument entirely read element (g) out of the asserted claims. This was particularly egregious in view
`
`of the examiner’s reliance on the presence of element (g) as a distinction over the prior art of record.
`
`(PTX-213 at 232). Dr. Acampora was careful to not even use the claim term “menu” when discussing
`
`
`20Dr. Acampora also stated that “connecting” a handheld with Digital Dining was described by
`Camaisa. This is false as discussed below. Camaisa says nothing about handhelds.
`21As discussed in Ameranth’s Motion for JMOL based on Expert Testimony Outside the Court’s Claim
`Construction filed contemporaneously herewith, Dr. Acampora’s “connection” argument read
`element (g) out of the asserted claims, which was particularly egregious in view of the examiner’s
`reliance on the presence of element (g) as a distinction over the prior art of record. (PTX-213 at 232).
`22Trial Tr. 9/16/10 afternoon, pp. 48:23-24, 50:8-10. Moreover, Camaisa does not disclose anything
`about the World Wide Web, Web servers, Web browsers, HTTP, HTML, XML or any other aspect of
`the claimed Web page capability as construed by the Court. Nor does Kinebuchi provide any such
`teaching that would remedy the shortcomings of Camaisa.
`5
`
`Apple, Exhibit 1057, Page 7
`
`

`

`Case 2:07-cv-00271-RSP Document 281 Filed 10/19/10 Page 8 of 19 PageID #: 16475
`
`
`“generating and transmitting to a wireless handheld computing device or Web page,” which was a tacit
`
`admission that the references do not teach or suggest the claimed subject matter. Moreover, neither
`
`Camaisa nor Kinebuchi mention a wireless handheld computing device or transmission of anything to
`
`such a device. Dr. Acampora stated only “[t]hat’s there as well” without pointing to anything.23
`
`Entirely ignoring claim requirements cannot provide clear and convincing evidence of obviousness.
`
`D.
`The Claims Are Not Obvious In View of Squirrel
`Dr. Acampora offered nothing at trial beyond agreement with Defendants’ counsel that his
`
`report concluded “invalidity based on the Squirrel and some other combinations.”24 However, the
`
`report offered nothing but verbatim quotes devoid of any analysis of a reason to combine with anything
`
`else or even a teaching or suggestion of any claim elements. Specifically, there was no evidence
`
`presented at trial that any Squirrel product included at least the capability for centralized menu
`
`generation and transmission to handheld devices as required by each of the asserted claims.25 In fact,
`
`numerous witnesses testified that Squirrel did not even have a handheld product in 1998-99, and
`
`Squirrel entered into an alliance with Ameranth to get Ameranth’s inventive solution precisely because
`
`it did not have its own.26
`
`
`23Trial Tr. 9/16/10 afternoon, p.50:25. Camaisa also does not teach or suggest either a first, modifier
`or sub-modifier menu as recited in the independent claims nor did Defendants point to any other
`reference teaching these elements and a reason to combine with Camaisa.
`24Trial Tr. 9/16/10 afternoon, p. 36:7-10. Dr. Acampora’s report alleged that “Squirrel” combined with
`“Cybermeals” rendered the claims obvious, but he did not mention this at trial. This was likely
`because he knew that Cybermeals (Food.com) sought and licensed Ameranth’s technology in 1999
`because it did not have the capability for centralized menu generation and transmission to Web pages.
`See Trial Tr. 9/13/10 afternoon, p. 80:12-23; PTX-394; see also Food.com changes its Recipe,
`CNET News, Mar. 22, 1999 (Exh. 1) (“Food.com charges restaurants $400 set-up fee to put menu
`online with $50 month maintenance fee for updating and local marketing”). There would be no need
`for manual updating if Food.com actually had had the capability for centralized menu generation and
`transmission at the time. This corroborates Mr. McNally’s testimony regarding the limitations of
`prior systems and illustrates Dr. Acampora’s selective omission of relevant facts. None of
`Defendants’ evidence teaches or suggests the elimination of the need for manual updating of
`handheld and Web menus as provided by the invention recited in the asserted claims.
`25As Dr. Shamos testified, nothing in any Squirrel document said anything about menus being
`transmitted from a central server to a handheld or Web page. (Trial Tr. 9/17/10 morning, p. 7).
`26Trial Tr. 9/13/10 morning, p. 121:1-12, afternoon 13:3-9; 85:10-21; 9/14/10 morning, 106:13-24.
`Moreover, the early-1990s Squirrel handheld was only a “forms-based data collection application”
`6
`
`Apple, Exhibit 1057, Page 8
`
`

`

`Case 2:07-cv-00271-RSP Document 281 Filed 10/19/10 Page 9 of 19 PageID #: 16476
`
`
`
`E.
`
`The Claims Are Not Obvious In View of Micros 8700 And Kanevsky
`1.
`The Micros Manual Is Not Prior Art Under 35 U.S.C. 102
`Defendants did not provide necessary proof of public accessibility of the Micros 8700 Manual.
`
`No witness testified that the Micros 8700 manual was accessible to members of the public interested in
`
`the art prior to the filing date of the patents. Nor was any documentary evidence of any such public
`
`accessibility proffered.27 Despite the Court’s directive at the September 8, 2010 Evidentiary Hearing
`
`that Defendants would be required to lay a foundation for offering the Micros manual as a printed
`
`publication, Defendants did not even attempt to make the required showing of public accessibility of
`
`the purported reference or sale or public use of the system disclosed in the purported reference and
`
`thus all Micros related combinations fail.28
`
`Defendants likewise offered no evidence whatsoever that the functionality described in the
`
`Micros manual was present in a system that was on sale or in public use before the critical date. Thus,
`
`Defendants have not presented clear and convincing evidence giving a reasonable jury a legally
`
`sufficient basis to consider the Micros 8700 system as prior art under any provision of Section 102(b).
`
`
`
`
`(PTX-798) and there is no evidence that it involved synchronous generation and transmission of
`“menus” as recited in the asserted claims.
`27Brian Smith testified that he was a Micros dealer prior to 1978 and that “back in those days” manuals
`were available to dealers and customers. (Trial Tr., 9/15/10 afternoon, pp. 33:24-25; 45:18-46:4). He
`also agreed with Defendants’ counsel that “back in the early ‘90’s” one could have gotten a copy of
`that manual, but he never received a copy (Id. at 49:14-50:5), and since he had not been a Micros
`Dealer since 1978 he had no basis for that statement. Moreover, Micros’s custodian admitted that
`Micros manuals were likely maintained as confidential until a product was discontinued (Tow Dep.
`Tr. 63:24-64:20 (Exh. 2)), and Defendants offered no evidence that Micros 8700 was discontinued
`prior to the filing date of the patents. Mr. Smith’s unsupported testimony was thus insufficient, as a
`matter of law, to establish public accessibility of the Micros 8700 manual. See In re Omeprazole
`Patent Litigation, 536 F.3d 1361, 1381 (Fed. Cir. 2008) (Public accessibility not shown where
`defendant did not provide “information about the circulation and availability of the brochures in the
`1960s or 1970s, the period during which the brochures were produced.”).
`28 Proof of printed publication requires clear and convincing evidence “that prior to the critical date the
`reference was sufficiently accessible, at least to the public interested in the art, so that such a one by
`examining the reference could make the claimed invention without further research or
`experimentation.” In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986). “Known or used by others” under
`35 USC 102(a) likewise requires proof of public accessibility. Minnesota Min. & Mfg. v. Chemque,
`Inc., 303 F.3d 1294, 1301 (Fed. Cir. 2002). Moreover, “public use or on sale” of Section 102(b)
`requires proof that what was described in a reference was indeed what was on sale or in public use.
`7
`
`Apple, Exhibit 1057, Page 9
`
`

`

`Case 2:07-cv-00271-RSP Document 281 Filed 10/19/10 Page 10 of 19 PageID #: 16477
`
`
`
`2.
`
`Even If It Were Available As Prior Art, Micros 8700 Would Not Render
`The Asserted Claims Obvious
`Dr. Acampora made no attempt to explain any teaching or suggestion in Micros 8700 of a
`
`client/server system as required by the preamble.29 This is not surprising since there is none.
`
`Incredibly, the Micros passages quoted by Dr. Acampora himself state that the 8700 was a “distributed
`
`database” system. (PTX-28, p. 36). In fact, the Micros type of distributed database was incompatible
`
`with a client/server system because it required generation of menus on the handheld as discussed
`
`below, and thus teaches away from the claimed centralized menu generation system30. Further, it is
`
`incompatible with thin client implementations such as the Web page capability recited in the claims.
`
`Moreover, combining Micros 8700 with a client/server system would render it unsatisfactory for its
`
`intended purpose or require a change of its principles of operation.31 Dr. Shamos also testified in
`
`rebuttal that element (g) is not taught or suggested by Micros. (Trial Tr. 9/14/10 afternoon, p. 12:4-6).
`
`Dr. Acampora pointed only to a handheld device in the Micros system. He did not provide any
`
`opinion as to the capability to transmit a menu to either a handheld device or Web page. He relied on
`
`Kanevsky for alleged Web page generation capability, but provided no opinion as to why this alleged
`
`combination would even be attempted or how it would have the capability of transmitting a second
`
`menu (including representations of linked levels, i.e., categories/items/modifiers/sub-modifiers) from a
`
`central server to a Web page (as well as to wireless handhelds) as required by the claim construction.
`
`In fact, Kanevsky discloses no more than reformatting existing Web pages into other Web pages.
`
`Kanevsky has nothing to do with synchronous generation and transmission of a menu from a central
`
`
`29 The preamble of each asserted independent claim requires an “information management and
`synchronous communication system” and “generating and transmitting menus,” which the Court
`construed to mean communication of menus between a central server and client devices, i.e., “a
`change made to data on a central server is updated on client devices and vice versa.” (Dkt. 106 at 8).
`30“[W]hen the prior art teaches away from combining certain known elements, discovery of a
`successful means of combining them is more likely to be nonobvious.” KSR, 550 U.S. at 416.
`31 See In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (no suggestion or motivation to make a
`modification that would render the prior art unsatisfactory for its intended purpose); In re Ratti, 270
`F.2d 810, 981 (CCPA 1959) (reference insufficient even to render the claims prima facie obvious if
`the proposed modification or combination would change the principle of operation of the prior art).
`8
`
`Apple, Exhibit 1057, Page 10
`
`

`

`Case 2:07-cv-00271-RSP Document 281 Filed 10/19/10 Page 11 of 19 PageID #: 16478
`
`
`server/back office database to a Web page, which even Dr. Acampora recognized.32 Thus, in order for
`
`Micros to be properly combinable with Kanevsky, Micros would have to get a menu to a website, but
`
`there is no such teaching or suggestion in Micros.33 Moreover, Dr. Acampora also recognized that
`
`Kanevsky’s “statistical” approach to Web page conversion teaches away from the claimed menu
`
`generation and transmission invention:
`
`So it’s a very small screen with limited viewing capability. Only essential information from the
`webpage will be shown but not all the information. . . . it’s showing filtered webpages tailored to
`the viewable area of the device on which the webpage is to be shown. That’s what this patent
`[Kanevsky] is all about.34
`Dr. Acampora said nothing at trial about the requirement of element (g) for capability to
`
`generate a second menu from a first menu and transmit the second menu to a wireless handheld device
`
`or Web page. He referred only to “communication” between a base station and a wireless device.
`
`(Trial Tr. 9/16/10 afternoon, p. 40). But he made no attempt to explain how generic “communication”
`
`teaches or suggests transmission of a menu from a central server to a handheld or Web page client. Dr.
`
`Acampora’s report was no more explicit, merely listing verbatim quotes with no explanation as to how
`
`element (g) was met by Micros. This deficiency in Dr. Acampora’s analysis of Micros permeates
`
`every obviousness combination he offered. He simply led the jury to believe that “connection” or
`
`“communication” with a handheld was the same as transmission of a menu from a central server to a
`
`client device, without any explanation of how a POSA would make such a leap. 35 This deficiency not
`
`
`32Trial Tr. 9/16/10 afternoon, p. 43:24-25 (“[W]hat [Kanevsky] is all about is allowing a client
`machine to access a website”). In fact, Dr. Acampora admitted that Kanevsky does not disclose
`transmitting a menu from a central server. Id. at 77:23-78:5.
`33Combining Micros with Kanevsky to enable “Web page” generation would require a change of the
`fundamental purpose of both references and is thus an improper combination. See In re Gordon, 733
`F.2d at 901; In re Ratti, 270 F.2d at 981.
`34Trial Tr. 9/16 afternoon, p. 44:8-10; 18-21. “Statistical” conversion would not provide the precision
`necessary to provide a remote menu consistent with the back office menu. The claimed system
`provides a client menu including all back office information, not “selectively filtered versions” as
`taught by Kanevsky. (See Kanevsky, DTX-181 at 15:12-24, 19:5-64 (discussing deletion and
`statistical scoring of material))
`35As detailed in Ameranth’s Motion for JMOL based on Expert Testimony Outside the Court’s Claim
`Construction, Dr. Acampora’s “communication” argument entirely read element (g) out of the
`asserted claims. This wa