Case 2:07-cv-00271-RSP Document 294 Filed 11/10/10 Page 1 of 21 PageID #: 16995
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`
`Civil Action No. 2:07-CV-271-TJW-CE
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`§§§§§§§§§§§§
`
`
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`Plaintiff,
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`AMERANTH, INC.,
`
`
`
`v.
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`MENUSOFT SYSTEMS CORPORATION
`and CASH REGISTER SALES & SERVICE
`OF HOUSTON, INC.
`(dba CRS TEXAS),
`
`
`
`Defendants.
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`
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`DEFENDANTS’ RESPONSE TO AMERANTH'S MOTION FOR JUDGMENT
`AS A MATTER OF LAW OF NONOBVIOUSNESS (DKT. 281)
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`
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`70887596.4
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`Apple, Exhibit 1058, Page 1
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`Case 2:07-cv-00271-RSP Document 294 Filed 11/10/10 Page 2 of 21 PageID #: 16996
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`TABLE OF CONTENTS
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`2.
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`3.
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`Page(s)
`INTRODUCTION ................................................................................................................... 1
`FACTUAL BACKGROUND ..................................................................................................... 1
`LEGAL STANDARDS ............................................................................................................ 3
`ARGUMENTS ....................................................................................................................... 4
`There is Substantial Evidence of Obviousness In View of Digital Dining
`A.
`7.0........................................................................................................................... 5
`There is Substantial Evidence of Obviousness In View of Camaisa. .................... 6
`There is Substantial Evidence of Obviousness in view of Micros 8700 and
`Kanevsky................................................................................................................ 7
`Micros 8700 Was On Sale and In Public Use Prior to the Critical
`1.
`Date. ........................................................................................................... 8
`Dr. Acampora’s Testimony Shows How the Components of
`Micros 8700 and Kanevsky Embody the Asserted Claims. ....................... 8
`The PTO’s Rejections in View of the Micros 8700 and Kanevsky
`Are a Legally Sufficient Evidentiary Basis to Support the Jury’s
`Verdict...................................................................................................... 10
`There is Substantial Evidence on TransPad to Sustain the Jury’s Finding
`of Obviousness. .................................................................................................... 11
`1.
`TransPad in Combination with Kanevsky ............................................... 11
`2.
`TransPad in Combination with Micros 3700 ........................................... 13
`There is Substantial Evidence in the Squirrel Reference to Sustain the
`Jury’s Finding of Obviousness............................................................................. 13
`There is Substantial Evidence to Support the Jury’s Rejection of
`Ameranth’s Alleged Secondary Considerations. ................................................. 14
`CONCLUSION ..................................................................................................................... 15
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`I.
`II.
`III.
`IV.
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`V.
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`B.
`C.
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`D.
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`E.
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`F.
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`TABLE OF AUTHORITIES
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`Page(s)
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`CASES
`
`Asyst Techs., Inc. v. Emtrak, Inc.,
`544 F.3d 1310 (Fed. Cir. 2008)............................................................................................4
`
`CA Inc. v. Simple.com, Inc.,
`No. 02-CV-2748, 2009 U.S. Dist. LEXIS 25242 (E.D.N.Y. Mar. 5, 2009) ........................5
`
`Connell v. Sears, Roebuck, & Co.,
`722 F.2d 1542 (Fed. Cir. 1983)............................................................................................6
`
`Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc.,
`424 F.3d 1293 (Fed. Cir. 2005)..........................................................................................12
`
`In re Fulton,
`391 F.3d 1195, 73 USPQ2d 1141 (Fed. Cir. 2004) ...........................................................10
`
`Geo M. Martin v. Alliance Mach. Sys. Int’l,
`No. 2009-1132, 2010 U.S. App. LEXIS 17377 (Fed. Cir. Aug. 20, 2010) .......................15
`
`In re Icon Health & Fitness,
`496 F.3d 1374 (Fed. Cir. 2007)............................................................................................7
`
`Innogenetics, N.V. v. Abbott Labs.,
`512 F.3d 1363 (Fed. Cir. 2008)............................................................................................4
`
`Iron Grip Barbell Co., Inc., v. USA Sports, Inc.,
`392 F.3d 1317 (Fed. Cir. 2004)............................................................................................4
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398, 127 S. Ct. 1727, 167 L. Ed. 2d 705 (2007) .............................................3, 12
`
`In re Kubin,
`561 F.3d 1351 (Fed. Cir. 2009)............................................................................................3
`
`Med. Instrumentation & Diagnostics Corp. v. Elekta AB,
`344 F.3d 1205 (Fed. Cir. 2003)............................................................................................5
`
`Ormco Corp. v. Align Tech., Inc.,
`463 F.3d 1299 (Fed. Cir. 2006)............................................................................................4
`
`Richdel, Inc. v. Sunspool Corp.,
`714 F.2d 1573 (Fed. Cir. 1983)..........................................................................................14
`
`Rose Acre Farms v. United States,
`559 F.3d 1260 (Fed. Cir. 2009)............................................................................................5
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`Case 2:07-cv-00271-RSP Document 294 Filed 11/10/10 Page 4 of 21 PageID #: 16998
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`TABLE OF AUTHORITIES
`(continued)
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`Page
`
`
`Streber v. Hunter,
`221 F.3d 701 (5th Cir. 2000) .............................................................................................11
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`TorPharm, Inc. v. Ranbaxy Pharms., Inc.,
`336 F.3d 1322 (Fed. Cir. 2003)............................................................................................6
`
`Travelers v. Young,
`542 F.3d 475 (5th Cir. 2008) ...............................................................................................5
`
`United States v. Gresham,
`585 F.2d 103 (5th Cir. 1978) ...............................................................................................5
`
`Wyers v. Master Lock Co.,
`No. 2009-1412, 2010 U.S. App. LEXIS 15271 (Fed. Cir. July 22, 2010).......................3, 4
`
`
`
`RULES AND STATUTES
`
`35 U.S.C. § 103(a) ...........................................................................................................................3
`
`FEDERAL RULES OF CIVIL PROCEDURE:
`
`Rule 50 ...............................................................................................................................14
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`Rule 59 .................................................................................................................................5
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`Case 2:07-cv-00271-RSP Document 294 Filed 11/10/10 Page 5 of 21 PageID #: 16999
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`I.
`
`INTRODUCTION
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`Ameranth asks the Court to impermissibly reweigh and reduce the evidence of record to
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`merely Dr. Acampora’s testimony on the prior art and disregard (1) Dr. Shamos’ testimony, (2)
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`Dr. Acampora’s invalidity report, (3) Ameranth’s prior art admissions in its interrogatory
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`answers, (4) Keith McNally’s admissions regarding the prior art, (5) Ameranth’s former director
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`of marketing Kathie Sanders’s admissions regarding the prior art, (6) the PTO’s rejections of the
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`claims in Ameranth’s continuation application based on the same prior art considered by the
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`jury, (7) the PTO’s rejection of McNally’s declaration on alleged secondary considerations in
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`examining the continuation application, and (8) the PTO’s rejection of Ameranth’s teaching
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`away arguments on Micros and Kanevsky in the continuation application.
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`Based on the evidence of record – and not merely what Ameranth asks the Court to
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`consider – the jury had more than sufficient evidence to reach a supportable verdict of
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`obviousness. Rather than stick to the trial record, Ameranth wants the Court (1) to rely on
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`evidence outside the record, (2) to usurp the jury’s role by arguing Dr. Acampora was not
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`forthright about his familiarity with TransPad, the content of his expert report, his understanding
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`of Micros 8700, and his consideration of Ameranth’s asserted secondary considerations, and (3)
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`find the asserted claims valid based on limitations not found in the asserted claims and based on
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`arguments that even the PTO has rejected. The trial record supports the jury finding that the
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`asserted claims are invalid based on multiple independent combinations, and Ameranth’s motion
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`should be denied.
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`II.
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`FACTUAL BACKGROUND
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`The jury heard about prior art from start to finish, and Dr. Acampora’s report, which
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`contained detailed claim charts on the prior art, even went back to the jury room. Ex. 9, 9/13/10
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`PM Tr. 115:22-116:9; 9/14/10 AM Tr. 11:17-22; Ex. 10, 9/13/10 PM Tr. 16:4-15; 19:8-22:3.
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`In Plaintiff’s case, the jury heard from Ms. Sanders about the Micros 8700 and pre-
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`critical date offers of sale and publications of the Ameranth’s 21st Century Restaurant System
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`and its TransPad device, including its wireless ordering and Internet functionality. Ex. 10,
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`9/13/10 PM Tr. 16-22; 23-26. The jury also heard McNally begrudgingly admit that the PTO
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`had three times rejected Ameranth’s continuation claims based on the Micros prior art. Ex. 9,
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`9/14/10 AM Tr. 11:17-22. And, the jury even heard Dr. Shamos admit that (1) Dr. Acampora
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`had in fact shown that the prior art Digital Dining 7.0 taught the preamble and limitations (a)-(f)
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`of the asserted claims, (2) Microsoft Terminal Services satisfies both requirements of element (g)
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`and provides the capability to transmit to a web page and a handheld device, and (3) Microsoft
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`Terminal Services came long before the patents-in-suit. Ex. 6, 9/14/10 PM Tr. 81:9 – 82:11,
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`9/15/10 AM Tr. 21:22 – 24:1, 9/17/10 AM Tr. 41:19 – 43:9.
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`In Defendants’ case, the jury heard Dr. Acampora testify “how” components of the prior
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`art embodied the disputed elements of the asserted claims. His testimony and report together
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`identify various reasons “why” a person of ordinary skill in the art (“POSA”) would be
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`motivated to combine the prior art to achieve the alleged invention. Ex. 2, PTX 28 at 31-61; Ex.
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`1, 9/16/10 PM Tr. 35; 50. Dr. Acampora also explained that he considered but found
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`unpersuasive Ameranth’s secondary considerations. Ex. 1, 9/16/10 PM Tr. 76:15-20.
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`In rebuttal, Dr. Shamos disagreed with some of Dr. Acampora’s opinions. More
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`significantly, Dr. Shamos again admitted that the Micros 3700 and Digital Dining 7.0 disclosed
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`disputed claim limitations. Ex. 6, 9/17/10 AM Tr. 22-26. The jury also heard Dr. Shamos
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`concede that he did not review the PTO’s rejection of the secondary considerations – the very
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`same evidence that Ameranth relied upon at trial. See Ex. 6, 9/17/10 AM Tr. 34:13-36:6. Thus,
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`in addition to expert and lay testimony, the jury learned that the PTO rejected Ameranth’s
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`arguments regarding lack of motivation to combine, teaching away, and secondary criteria.
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`At the close of evidence, the court instructed the jury that Defendants contend the
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`asserted patent claims are “obvious over certain combinations of prior art references as discussed
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`in the evidence.” Ex. 11, 9/17/10 Tr. 117. In response to a jury note, the Court reread its
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`instruction on the standard for obviousness. Ex. 12, Jury Notes & Verdict Tr. 8:24–10:7.
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`Subsequently, the jury found Ameranth’s evidence of nonobviousness was insufficient and
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`returned a general verdict that the asserted claims were invalid for obviousness. Dkt. 263.
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`III. LEGAL STANDARDS
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`Except for the standards governing motions for judgments as a matter of law (“JMOL”),
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`the underlying patent law standards applicable to Ameranth’s motion are described below. The
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`JMOL standards are detailed in Defendants’ Response to Ameranth’s Motion for JMOL of No
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`Invalidity Based on Expert Testimony Inconsistent with the Court’s Claim Construction,
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`contemporaneously filed and incorporated by reference.
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`A patent is invalid for obviousness “if the differences between the subject matter sought
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`to be patented and the prior art are such that the subject matter as a whole would have been
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`obvious at the time the invention was made to a person having ordinary skill in the art to which
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`said subject matter pertains.” 35 U.S.C. § 103(a).1 “[T]he reason, suggestion, or motivation to
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`combine [two or more references] may be found explicitly or implicitly: 1) in the prior art
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`references themselves; 2) in the knowledge of those of ordinary skill in the art that certain
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`references, or disclosures in those references, are of special interest or importance in the field; or
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`3) from the nature of the problem to be solved.” Wyers v. Master Lock Co., No. 2009-1412,
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`1 “Obviousness is a question of law based on underlying findings of fact.” In re Kubin, 561 F.3d 1351,
`1355 (Fed. Cir. 2009). The underlying factual inquiries are: (1) the scope and content of the prior art, (2)
`the differences between the prior art and the claims at issue, (3) the level of ordinary skill in the pertinent
`art, and (4) secondary considerations of nonobviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`406, 127 S. Ct. 1727, 167 L. Ed. 2d 705 (2007).
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`2010 U.S. App. LEXIS 15271, *15 (Fed. Cir. July 22, 2010).
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`“[T]here must be some articulated reasoning with some rational underpinning to support
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`the legal conclusion of obviousness.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373
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`(Fed. Cir. 2008). “The legal determination of obviousness may include recourse to logic,
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`judgment, and common sense, in lieu of expert testimony.” Wyers, 2010 U.S. App. LEXIS
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`15271, at *19. Thus, expert testimony is “not the only source for evidence that it would be
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`obvious for one skilled in the art to combine references.” Innogenetics, 512 F.3d at 1374.
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`To rebut a prima facie case of obviousness, a patentee is required to establish a nexus
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`between secondary evidence of non-obviousness and the merits of the claimed inventions.2
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`Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311-12 (Fed. Cir. 2006). Nevertheless, as the
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`Federal Circuit has “often held, evidence of secondary considerations does not always overcome
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`a strong prima facie showing of obviousness.” Asyst Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310,
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`1316 (Fed. Cir. 2008) (affirming judgment as a matter of law of obviousness).
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`IV. ARGUMENTS
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`The record contains substantial evidence of obviousness with respect to the combinations
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`addressed in Dr. Acampora’s report. See Ex. 2, PTX 28 at 3-5, 32-63, Ex. 1, 3, 8-11. Among
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`others, these combination include:
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`(1) Digital Dining 7.0 and the knowledge of a POSA;
`(2) Camaisa (U.S. Pat. 5,845,263, DTX 498) and Micros 3700 (DTX 48);
`(3) Micros 8700 (DTX 98) and Kanevsky (U.S. Pat. 6,300,947, DTX 181);
`(4) TransPad and Micros 3700; and
`(5) Squirrel and Micros 3700.3
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`2 Affirmative evidence of a nexus is required. See Iron Grip Barbell Co., Inc., v. USA Sports, Inc., 392
`F.3d 1317, 1324 (Fed. Cir. 2004).
`3 Even though Dr. Acampora’s report is in the record and supports the jury’s verdict, Ameranth ignores
`the report’s detailed discussion of these and additional combinations.
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`To the extent that Ameranth belatedly argues that its admission of and the jury’s request
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`for and reliance on the Acampora Report was improper, these arguments are meritless.4 See
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`Defendants’ Opposition to Ameranth’s Rule 59 Motion for a New Trial (contemporaneously
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`filed). Once the parties stipulated to the Report’s admission and Ameranth failed to request any
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`restrictions, the Report had the same value as any other exhibit entered into evidence. United
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`States v. Gresham, 585 F.2d 103, 106 (5th Cir. 1978) (“hearsay evidence that is admitted without
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`objection ‘is to be considered and given its natural probative effect as if it were in law
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`admissible’”) (citations omitted). Thus, in addition to Dr. Acampora’s and Dr. Shamos’
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`testimony, the Report also properly supports the jury’s verdict. See Travelers v. Young, 542 F.3d
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`475, 484 n.4 (5th Cir. 2008) (relying on expert report where expert did not even testify at trial).
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`See also Rose Acre Farms v. United States, 559 F.3d 1260, 1271 (Fed. Cir. 2009) (relying at
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`least in part on expert report admitted into evidence).
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`A.
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`There is Substantial Evidence of Obviousness In View of Digital Dining 7.0.
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`Dr. Shamos provides a sufficient evidentiary basis for the jury to determine that the
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`asserted claims are both anticipated by and obvious in view of Digital Dining 7.0. The jury
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`could reasonably have relied on Dr. Shamos’ testimony that (1) Digital Dining 7.0 disclosed the
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`preamble and elements (a), (b), (c), (d), (e) and (f) of the asserted claims, (2) Microsoft Terminal
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`Services provides the capabilities of element (g) and existed long before the patents-in-suit, and
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`4 Ameranth argues Dr. Acampora’s report containing “approximately 500 pages of single-spaced charts”
`is conclusory. However, courts, including the Federal Circuit, have found that invalidity charts listing the
`claim elements and citing to specific pages in prior art references are proper and not conclusory. See
`Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1220-21 (Fed. Cir. 2003)
`(reversing summary judgment of non-invalidity because the expert report “quoted the particular portions
`of the references that were relevant for each of the claim limitations” rather than simply making a
`“conclusory statement...that the claims were invalid”); CA Inc. v. Simple.com, Inc., No. 02-CV-2748,
`2009 U.S. Dist. LEXIS 25242, *25-27 (E.D.N.Y. Mar. 5, 2009) (finding expert report raised material
`issue of fact on validity because it “cited to specific pages, sections, and portions of prior art references
`and linked them to the asserted claim elements”).
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`(3) Digital Dining’s ability to operate on any version of the Windows operating system. See
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`Defs.’ Resp. to Pl.’s JMOL Motion of No Anticipation at 3-9, Ex. 2, PTX 29, Ex. 8 at 1-5. In
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`other words, contrary to its arguments, Ameranth’s own expert unequivocally offered testimony
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`that the prior art met the “both” requirement of the claims as construed by the Court. See Motion
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`at 13 (arguing no combination taught the “both” requirement).
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`Because “[a]nticipation is the epitome of obviousness,” Digital Dining 7.0 also renders
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`the asserted claims invalid for obviousness. See TorPharm, Inc. v. Ranbaxy Pharms., Inc., 336
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`F.3d 1322, 1326 (Fed. Cir. 2003) (quoting Connell v. Sears, Roebuck, & Co., 722 F.2d 1542,
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`1548 (Fed. Cir. 1983)). Moreover, to the extent that Ameranth belatedly contends that Digital
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`Dining 7.0 does not disclose any claim element, Dr. Acampora’s report provides evidence of
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`combinations with Digital Dining 7.0 that renders the asserted claims obvious. See Ex. 2, PTX
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`28 at 4, 32-33, 54-62; PTX 29, Ex. 8 at 1-5. These combinations include Digital Dining 7.0 with
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`the knowledge of a POSA and Digital Dining 7.0 with Micros 3700. In addition to Dr.
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`Acampora’s views, the jury heard about the PTO’s determinations that (1) it would be obvious to
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`a POSA to combine restaurant management systems with handhelds and/or web based
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`functionality and (2) Ameranth’s secondary criteria arguments failed. See Ex. 6, 9/17/10 AM Tr.
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`34:13-36:3; Ex. 4, DTX 7 at 831-871. Indeed, the jury heard that a panel of three examiners
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`agreed on these points. Ex. 9, 9/14/10 AM Tr. 11:17-22.
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`B.
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`There is Substantial Evidence of Obviousness In View of Camaisa.
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`Dr. Acampora testified and prepared a detailed report demonstrating how Camaisa
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`anticipates the asserted claims. Because “[a]nticipation is the epitome of obviousness,” Camaisa
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`also renders the asserted claims invalid for obviousness. TorPharm, Inc., 336 F.3d at 1326.
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`Moreover, to the extent that Ameranth belatedly contends that Camaisa does not disclose any
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`claim element, Dr. Acampora’s report provides evidence of combinations with Camaisa that
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`renders the asserted claims obvious. See Ex. 2, PTX 28 at 3-4, 32-33, 52-62, PTX 28 Ex. 2 at 1-
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`22. 24 – 25, 70-81, 83. These combinations include Camaisa and the knowledge of a POSA,
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`Micros 8700, Micros 3700, TransPad, and Kanevsky.
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`By way of example, on cross Dr. Shamos admitted that Micros 3700 disclosed the
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`claimed preamble. Ex. 6, 9/17/10 AM Tr. 40:17-41:12. The PTO reached a similar conclusion
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`in rejecting the claims in Ameranth’s continuation application as obvious based on Micros 3700.
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`See, e.g., Ex. 5, PTX 7 at 348 (“Mircos [sic] teaches: An information management and
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`synchronous communication system for generating and transmitting hospitality menus …”). The
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`PTO’s reason for combining Micros 3700 with other prior art was to improve customer service
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`by “adding portability as well as accessibility.” Id. at 350. The jury was free to rely on that
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`same reason for combining Micros 3700 and Camaisa.5
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`C.
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`There is Substantial Evidence of Obviousness in view of Micros 8700 and
`Kanevsky.
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`This evidence regarding the combination of Micros 8700 and Kanevsky consists of, at
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`least, the following:
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`(1) The January 1997 Hospitality Tech. magazine article on Micros 8700
`and Sanders and McNally testimony on the same establishing Micros 8700
`was on sale and in public use before the critical date. Ex. 7, PTX 489b;
`Ex. 10, 9/13/10 PM Tr. 23-26, 28; Ex. 9, 9/14/10 AM Tr. 7-11.
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`(2) Ameranth’s admissions interrogatory answers. Ex. 1, 9/16/10 PM Tr.
`39-40.
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`in
`testimony explaining how Micros 8700
`(3) Dr. Acampora’s
`combination with Kanevsky renders all the asserted claims obvious. Ex.
`1, 9/16/10 PM Tr. 36-37, 39-46, 77-78.
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`(3) The PTO’s rejections of the claims in Ameranth’s continuation
`application based on Micros 8700 in combination with Kanevsky. Ex. 4,
`DTX 7 at 831-871.
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`5 Ameranth fails to consider the “modifications that one skilled in the art would make to a device
`borrowed from the prior art.” See In re Icon Health & Fitness, 496 F.3d 1374, 1382 (Fed. Cir. 2007).
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`(4) The PTO’s rejection of Ameranth’s teaching away arguments on
`Micros and Kanevsky in the continuation application. Id. at 544, 562-64,
`569, 571, 573, 580, 603, 868, 898, 911-12, 923.
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`(5) The PTO’s rejection of Ameranth’s secondary criteria arguments. Ex.
`15 at 541, 892, 894.
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`1. Micros 8700 Was On Sale and In Public Use Prior to the Critical
`Date.
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`Based on Sanders and McNally’s testimony, the jury could reasonably conclude that the
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`Micros 8700 was on sale and in public use before the critical date, September 19, 1998. Ex. 10,
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`9/13/10 PM Tr. 23:25-24:15; 25:11-26:11; 28:2-11; Ex. 9, 9/14/10 AM Tr. 7:5-8:3; 8:10-11:1.
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`Sanders acknowledged that Ameranth received a January 1997 Hospitality Technology magazine
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`discussing the availability and use of the Micros 8700. Ex. 10, 9/13/10 PM Tr. 23:25-24:15; Ex.
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`7, PTX 489b. Likewise, McNally did not dispute that the magazine came from Ameranth’s files.
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`Ex. 9, 9/14/10 AM Tr. 7:5-8:3. Sanders, who was responsible for studying Ameranth’s
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`competition, did not take issue with the article’s statement “some 3000” handheld devices were
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`at 300 sites. Ex. 10, 9/13/10 PM Tr. 25:11-26:11; 28:2-21. Because of the contemporaneous
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`copyright dates, the jury could properly conclude that the Micros manuals accurately described
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`what was publicly used, sold and offered for sale in 1997.6
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`2. Dr. Acampora’s Testimony Shows How the Components of Micros
`8700 and Kanevsky Embody the Asserted Claims.
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`Dr. Acampora explained that Micros 8700 combined with Kanevsky render the asserted
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`claims obvious. Ex. 1, 9/16/10 PM Tr. 44:5-46:8. Because of Ameranth’s admissions in its
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`interrogatory answer, he properly focused on the disputed claim elements for Micros 8700,
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`namely the preamble, element (g) and the wherein clause. Ex. 3, Pl.’s Suppl. Resps. to Defs.’
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`Interrog. Nos. 3-15 at 26-29; Ex. 1, 9/16/10 PM Tr. 39:2-40:1.
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`6 In relying upon the deposition of Tow, Ameranth goes outside the trial record. See Dkt. 28 at 7 n.27.
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`Referencing the Micros 8700 manual’s figures, Dr. Acampora described Micros 8700 as
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`a networked system allowing a computer (LCC) to communicate with base stations and wireless
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`handheld devices. Ex. 1, 9/16/10 PM Tr. 40:2-21. Dr. Acampora further identified a limited
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`item availability feature7 as the component in Micros 8700 embodying the claimed preamble
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`limitation, and he identified a condiment feature in Micros 8700 as embodying the claimed
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`wherein clause limitation. Ex. 1, 9/16/10 PM Tr. 41:5-42:3; 42:7-19. For element (g), Dr.
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`Acampora identified a wireless handheld communication feature in Micros 8700 and a website
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`access feature in Kanevsky as together embodying the claimed limitation. Ex. 1, 9/16/10 PM Tr.
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`40:2-25; 43:14-44:21; see Ex. 4, PTX 7 at 480-81.
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`Having covered all of the disputed elements of asserted claim 1 of the ‘850 patent, Dr.
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`Acampora proceeded to describe the components in Micros 8700 embodying the elements of the
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`remaining asserted claims. Ex. 1, 9/16/10 PM Tr. 43:4-16; 46:1-4 (seat association limitation);
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`9/16/10 PM Tr. 42:23-43:3 (recipe information limitation); 9/16/10 PM Tr. 45:3-7 (wireless
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`transmission limitation); 9/16/10 PM Tr. 45:8-10 (predetermined ordering limitation); 9/16/10
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`PM Tr. 45:11-14 (parameter assignment limitation). See also Ex. 2, PTX 28, Ex. 3 at 1 – 31, 37 –
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`40, 64, 81 – 110, 112 – 113; Ex. 4, PTX 7 at 484, 489, 499.
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`Dr. Acampora testified that Kanevsky allowed client machine to access a website. Ex. 1,
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`9/16/10 PM Tr. 43:20-44:21. He explained that though Kanevsky did not expressly disclose
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`such, it could in fact transmit a menu to a central server. Ex. 1, 9/16/10 PM Tr. 77:23-78:1.
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`Similarly, Dr. Shamos admitted that Kanevsky is directed to making data available on other
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`devices. Ex. 6, 9/17/10 AM Tr. 16:11-25.
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`7 This is the same limited item availability feature that the PTO relied upon in rejecting the claims in
`Ameranth’s continuation application as obvious based on Micros 8700 in combination with Kanevsky.
`Ex. 4, DTX 7 at 856.
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`3. The PTO’s Rejections in View of the Micros 8700 and Kanevsky Are a
`Legally Sufficient Evidentiary Basis to Support the Jury’s Verdict.
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`The jury learned that the PTO had three times rejected the claims in Ameranth’s
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`continuation based on the same prior art it was considering. Ex. 9, 9/14/10 AM Tr. 11:17-22.
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`One of the PTO’s rejections was based on a combination of Micros 8700 and Kanevsky. Ex. 4,
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`DTX 7 at 831-871.8 The PTO was obligated to identify a motivation for the combination. Ex.
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`13, M.P.E.P. § 2143.01. Because the jury was entitled to credit the PTO’s rejection over Dr.
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`Shamos’ testimony, the PTO’s combination is a legally sufficient evidentiary basis to support the
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`jury’s verdict of obviousness.
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`Ameranth argues that Micros 8700 and Kanevsky teach away from the alleged
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`invention.9 See Dkt. 281 at 9-11. But the PTO heard the same arguments from Ameranth and
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`rejected them. Ex. 4, DTX 7 at 544, 562-64, 569, 571, 573, 580, 603, 868, 898, 911-12, 923.10
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`Therefore, the PTO necessarily concluded that the combination did not render the references
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`unsatisfactory for their intended purposes. Ex. 4, DTX 7 at 831-871; see Ex. 13, M.P.E.P. §
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`2143.01. Indeed, the jury heard that the PTO received, considered, and rejected Ameranth’s
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`arguments on secondary criteria and instructions to combine.
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`8 “In addition it would have been obvious to one of ordinary skill in the art at the time of the invention to
`combine the teachings of Micros ‘97 as Micros teaches the use of Handheld terminals (see e.g. Micro ‘97
`1-15) and Kavensky preferably provides a semantic interpreter module that automatically decides how to
`fold or expand the content…depending on a size of a screen. (Kavensky Col. 2, Ln 45-47.)” Ex. 4, DTX
`7 at 843; see also id. at 483, 395, 498, 507, 510, 845.
`9 Ameranth also attempts to add to the claim language: (1) “web page” generation. See Dkt. 281 at 9
`n.33 (“Combining Micros and Kanevsky to enable “Web page” generation would require a change of the
`fundamental purpose of both references and is an improper combination.”); and (2) “client menu
`including all back office information”. See Dkt. 281 at n.34 (“The claimed system provides a client menu
`including all back office information ….”).
`10 “On Pages 19-21, applicant argues that Micros ‘97 ‘teaches away’ from the present invention.
`Examiner respectfully disagrees. ‘the prior art’s mere disclosure of more than one alternative does not
`constitute a teaching away from any of these alternative because such disclosure does not criticize,
`discredit, or otherwise discourage the solution claimed…’ In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d
`1141, 1146 (Fed. Cir. 2004).” Ex. 4, DTX 7 at 868.
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`Despite what Dr. Shamos said, the jury could properly conclude, as the PTO did, that the
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`combination of Micros 8700 and Kanevsky was well supported and secondary evidence failed to
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`support a finding of nonobviousness. While Dr. Shamos may have disagreed with Dr. Acampora
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`and the PTO, the jury was entitled to disregard Dr. Shamos’ opinions on this issue.11
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`D.
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`There is Substantial Evidence on TransPad to Sustain the Jury’s Finding of
`Obviousness.
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`With respect to TransPad, the record includes substantial evidence sufficient to support
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`the combination of TransPad and Kanevsky and the combination of TransPad and Micros 3700.
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`1. TransPad in Combination with Kanevsky
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`The jury heard testimony that prior to the critical date Ameranth marketed TransPad as
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`part of its 21st Century Restaurant System (“21CR System”). Ex. 10, 9/13/10 PM Tr. 19:8-22:3.
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`Sanders conceded that the system included a wireless handheld TransPad seamlessly integrated
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`with a point-of-sale back office database and connected to the Internet. Ex. 10, 9/13/10 PM Tr.
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`16:4-15; 19:8-22:3; Ex. 8, DTX 66. Sanders also admitted that Ameranth was trying to persuade
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`McDonald’s to run a POS application on a TransPad integrated wirelessly to the back office.12
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`Ex. 10, 9/13/10 PM Tr. 22:6-23:4; Ex. 14, DTX 148.
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`Ameranth’s brochure illustrated the 21CR System, where TransPad served as the wireless