Trials@uspto.gov
`571.272.7822
`
`Paper No. 9
`Filed: September 14, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`STARBUCKS CORPORATION,
`Petitioner
`v.
`AMERANTH, INC.,
`Patent Owner.
`
`Case CBM2015-00099
`Patent 6,871,325 B1
`
`
`
`
`
`
`
`
`
`Before MEREDITH C. PETRAVICK, 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 Inc, Exhibit 1079
`
`
`571.272.7822
`
`Paper No. 9
`Filed: September 14, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`STARBUCKS CORPORATION,
`Petitioner
`v.
`AMERANTH, INC.,
`Patent Owner.
`
`Case CBM2015-00099
`Patent 6,871,325 B1
`
`
`
`
`
`
`
`
`
`Before MEREDITH C. PETRAVICK, 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 Inc, Exhibit 1079
`
`
`
`CBM2015-00099
`Patent 6,871,325 B1
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`I. INTRODUCTION
`
`A. Background
`Starbucks Corporation (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`requesting covered business method patent review of claims 11–13 and 15
`(“challenged claims”) of U.S. Patent No. 6,871,325 B1 (Ex. 1002, “the ’325
`patent”) pursuant to § 18 of the Leahy-Smith America Invents Act (“AIA”).
`Ameranth, Inc. (“Patent Owner”) filed a Preliminary Response. Paper 7
`(“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 324, which
`provides that a covered business method patent review may not be instituted
`“unless . . . it is more likely than not that at least 1 of the claims challenged
`in the petition is unpatentable.”
`Petitioner contends, with the support of its Declarant, Dr. Abdelsalam
`Helal (Ex. 1003), that the challenged claims are unpatentable under
`35 U.S.C. §§ 101, 112, and 103 on the following grounds (Pet. 26–79):
`References
`Basis
`Claim(s) Challenged
`N/A
`§ 101
`11–13 and 15
` § 1121
`N/A
`11–13 and 15
`Brandt,2 NetHopper,3 and Carter4
`§ 103
`11–13
`
`
`1 Petitioner asserts eight grounds based upon § 112. Grounds 1–3 focus on
`issues of enablement, indefiniteness, and lack of written description
`concerning the claim term “hospitality applications and data.” Grounds 4–6
`focus on issues of enablement, indefiniteness, and lack of written description
`concerning the claim term “communications control module.” Ground 7
`asserts lack of enablement of “software libraries.” Ground 8 focuses
`enablement of the claims as a whole. Pet. 26–43.
`2 Japanese Unexamined App. No. H10-247183 (published Sept. 14, 1998)
`(Ex. 1004) (certified translation, Ex. 1005, “Brandt”).
`3 NetHopper Version 3.2 User’s Manual, 1–24 (1997) (Ex. 1006,
`“NetHopper”).
`
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`§ 103
`§ 103
`
`Basis
`§ 103
`
`Claim(s) Challenged
`References
`Brandt, NetHopper, Carter, and
`15
`Rossmann5
`Brandt, Demers,6 Alonso7, and Carter
`11–13
`Brandt, Demers, Alonso, Carter, and
`15
`Rossmann
`Our factual findings and conclusions at this stage of the proceeding
`are based on the evidentiary record developed thus far (prior to Patent
`Owner’s Response). This is not a final decision as to the patentability of any
`of the claims for which a covered business method patent review is
`instituted. Our final decision will be based on the record as fully developed
`during trial. Upon consideration of the Petition and Preliminary Response,
`we determine that Petitioner has demonstrated that it is more likely than not
`that the challenged claims are unpatentable on the grounds discussed below.
`Accordingly, we institute a covered business method patent review of claims
`11–13 and 15 of the ’325 patent.
`
`B. Related Matters
`The parties indicate that the ’325 patent is the subject of the following
`district court case: Ameranth, Inc. v. Starbucks Corp., No. 3-13-cv-01072
`(S.D. Cal.) filed May 6, 2013. Pet. 2 (citing Ex. 1045). Petitioner notes that
`
`
`4 European Unexamined App. No. EP 0845748A2, published June 3, 1998
`(Ex. 1052, “Carter”).
`5 U.S. Patent No. 5,809,415, issued Sept. 5, 1998 (Ex. 1053, “Rossmann”).
`6 Alan Demers, et al., The Bayou Architecture: Support for Data Sharing
`Among Mobile Users, Mobile Computing Systems & Applications, 1995.
`Proceedings., Workshop on. IEEE, 1995. (Ex. 1009, “Demers”).
`7 Gustavo Alonso et al., Exotica/FMDC: A Workflow Management System
`for Mobile and Disconnected Clients, Databases & Mobile Computing, 28–
`45,1996 (Ex. 1012, “Alonso”).
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`Patent Owner has asserted the ’325 patent against thirty-five other
`defendants in a number of civil actions that have been consolidated into
`Ameranth, Inc. v. Pizza Hut, No. 3-11-cv-01810 (S.D. Cal.).
`In a previous proceeding before the Board, claims 1–10 of the ’325
`patent were held to be unpatentable. Agilysys, Inc. v. Ameranth, Inc.,
`Case CBM2014-00016 (PTAB Mar. 20, 2015) (Paper 35). Petitioner also
`filed a petition for covered business method patent review of a related
`patent, U.S. No. Patent 6,384,850 B1. Starbucks, Corp., v. Ameranth, Inc.,
`Case CBM2015-00091. Patent Owner identifies eleven covered business
`method patent reviews (both pending and completed) that it states are related
`to this Petition. Paper 4 (Notice of Related Matters). The previous and
`pending related petitions are summarized in the table below.
`
`U.S. Patent No.
`6,384,850 B1
`
`6,871,325 B1
`
`6,982,733 B1
`8,146,077 B1
`
`Previous CBM Reviews Pending CBM Reviews
`CBM2014-00015
`CBM2015-00080
`CBM2015-00091
`CBM2015-00096
`CBM2015-00082
`CBM2015-00097
`
`CBM2015-00081
`CBM2015-00095
`
`CBM2014-00016
`
`CBM2014-00013
`CBM2014-00014
`
`
`C. The ’325 Patent
`The ’325 patent, titled “Information Management and Synchronous
`Communications System with Menu Generation” issued March 22, 2005
`based on Application No. 10/015,729 filed November 1, 2001. The
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`challenged claims are directed to an information management and
`synchronous communications system. Ex. 1002, 17:4–18:31, 18:35–37.
`This system “results in a dramatic reduction in the amount of time, and
`hence cost, to generate and maintain computerized menus for, e.g.,
`restaurants and other related applications that utilize non-PC-standard
`graphical formats, display sizes or applications.” Id. at 3:31–35.
`The system includes a central database, multiple handheld devices,
`and a web server. Id. at 3:64–4:1. It also includes an application
`programming interface (“API”) that enables third parties, such as point-of-
`sale companies, affinity program companies, and internet content providers,
`to integrate fully with the computerized hospitality applications. Id. at 2:16–
`21; 3:67–4:5; 11:29–33. The system has a communications control module
`to “provide[] a single point of entry for all hospitality applications, e.g.,
`reservations, frequent customer ticketing, wait lists, etc. to communicate
`with one another wirelessly and over the Web.” Id. at 4:10–13. This
`communications control module is a layer that sits on top of any
`communication protocol and acts as an interface between hospitality
`applications and the communication protocol. Id. at 4:14–16; 11:38–44.
`Claim 11 of the ’325 patent is illustrative of the claims at issue and
`read as follows:
`11. An information management and synchronous
`communications system for use with wireless handheld
`computing devices and the internet comprising:
`a. a central database containing hospitality applications and
`data,
`b. at least one wireless handheld computing device on which
`hospitality applications and data are stored,
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`c. at least one Web server on which hospitality applications and
`data are stored,
`d. at least one Web page on which hospitality applications and
`data are stored,
`e. an application program interface, and
`f. a communications control module,
`wherein applications and data are synchronized between the
`central data base, at least one wireless handheld computing
`device, at least one Web server and at least one Web page;
`wherein the application program interface enables integration of
`outside applications with the hospitality applications and
`wherein the communications control module is an interface
`between the hospitality applications and any other
`communication protocol, wherein the synchronized data relates
`to orders.
`Id. at 17:4–25.
`
`II. ANALYSIS
`A. Grounds for Standing
`Section 18 of the America Invents Act created a transitional program,
`limited to persons or their privies that have been sued or charged with
`infringement of a “covered business method patent,” which does not include
`patents for “technological inventions.” AIA §§ 18(a)(1)(B), 18(d)(1), Pub.
`L. No. 112-29, 125 Stat. 284, 329–331 (2011); see 37 C.F.R. § 42.302.
`Regarding the first requirement, Petitioner contends that it has been
`sued for infringement of the ’325 patent in Ameranth, Inc. v. Starbucks
`Corp., No. 3-13-cv-01072 (S.D. Cal.). Pet. 2, 5. Petitioner also asserts that
`it is not barred or estopped from seeking covered business method patent
`review of the ’325 patent. Id. at 5.
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` Covered Business Method
`1.
`We must determine whether the ’325 patent claims a covered business
`method, which is “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.” 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 Covered Business
`Method Patent and Technological Invention; Final Rule, 77 Fed. Reg.
`48,734, 48,736 (Aug. 14, 2012) (“CBM Rules”) (Comment 8). The
`“legislative history explains that the definition of covered business method
`patent was drafted to encompass patents ‘claiming activities that are
`financial in nature, incidental to a financial activity or complementary to a
`financial activity.’” See id. at 48,734, 48,735 (quoting 157 Cong. Rec.
`S5432 (daily ed. Sept. 8, 2011) (statement of Sen. Schumer)). Patents
`directed to technological inventions, however, are excluded from covered
`business method patent review. AIA § 18(d)(1); see 37 C.F.R. § 42.301(a).
`
` Financial Product or Service
`2.
`Petitioner contends that claim 11 establishes that the ’325 patent is
`eligible for covered business method patent review. Pet. 10. According to
`Petitioner, “[c]laim 11 is directed to ‘an information management and
`synchronous communications system . . .’ wherein the synchronized data
`relates to orders.” Id. at 10 (citing Ex. 1002, 17:4–26). The specification
`describes using the system in the context of online or mobile ordering and
`paying in restaurant and other hospitality contexts. See Ex. 1002, 4:10–13
`(listing hospitality applications such as “reservations, frequent customer
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`ticketing, wait list, etc.”), 1:25–29, 1:66, 3:48–57, 10:43–45, Fig. 7.
`Petitioner argues and we agree that the claimed “orders” are part of the
`purchasing process and thus, a financial activity. Pet. 10. Thus, on this
`record, we are persuaded that at least claim 11 of the ’325 patent meets the
`financial-in-nature requirement of § 18(d)(1) of the AIA.
`
` Technological Invention
`3.
`Petitioner also must show that the ’325 patent is not directed to a
`“technological invention.” To determine whether a patent is for a
`technological invention, we consider “whether the claimed subject matter as
`a whole recites a technological feature that is novel and unobvious over the
`prior art; and solves a technical problem using a technical solution.”
`37 C.F.R. § 42.301(b). The following claim drafting techniques, for
`example, typically do not render a patent a “technological invention”:
`(a) Mere recitation of known technologies, such as
`computer hardware, communication or computer networks,
`software, memory, computer-readable storage medium,
`scanners, display devices or databases, or specialized machines,
`such as an ATM or point of sale device.
`
`
`(b) Reciting the use of known prior art technology to
`accomplish a process or method, even if that process or method
`is novel and non-obvious.
`
`
`(c) Combining prior art structures to achieve the normal,
`expected, or predictable result of that combination.
`
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763–64 (Aug.
`14, 2012).
`Petitioner argues that claim 11 recites a list of well-known computer
`technologies such as a central database, wireless handheld devices, a web
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`server, a web page, an API, and a communications control module and does
`not include a novel or unobvious technological feature. Pet. 11. The
`specification describes the recited hardware as “typical” and indicates that
`all of the recited devices were known. See Ex. 1002, 5:39–53. As to the
`software elements of claim 11, the specification states that “[t]he software
`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.” Ex. 1002, 11:56–61.
`Patent Owner argues that Petitioner overlooks the claim’s “synchronization
`functionality, application and data storage on a handheld device[, and]
`‘integration’ with ‘outside applications.’” Prelim. Resp. 13. Patent Owner
`asserts that without a full analysis from Petitioner of these elements
`Petitioner failed to meet its burden to analyze the claim as a whole. Id.
`We find Petitioner’s argument to be persuasive. As described in the
`specification, the software used to perform the synchronization, storage, and
`integration features discussed by the Patent Owner may be written in any
`software language and is composed of steps that are “commonly known”
`such that no discussion of the details of the software was necessary to
`describe the invention. Ex. 1002, 11:56–61. On this record, we are
`persuaded that the claimed subject matter does not recite a technological
`invention, but instead, the recited elements constitute “[m]ere recitation of
`known technologies” that, as noted in our Trial Practice Guide, do not give
`rise to a technological invention. 77 Fed. Reg. at 48,756.
`For these reasons, we conclude that claim 11 does not “recite[] a
`technological feature that is novel and unobvious over the prior art,” and
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`therefore is not directed to a “technological invention.” In view of the
`foregoing, we conclude that the ’325 patent is a covered business method
`patent under AIA § 18(d)(1) and is eligible for review using the transitional
`covered business method patent review program.
`
`B. Claim Construction
`As a step in our analysis for determining whether to institute a trial,
`we construe the claims. Consistent with the statute and the legislative
`history of the AIA, we analyze patentability using the broadest reasonable
`construction of the claims in light of the specification. 37 C.F.R.
`§ 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278, 1279
`(Fed. Cir. 2015) (In considering the broadest reasonable interpretation
`standard for post-grant review proceedings, the Federal Circuit determined
`that “Congress implicitly approved the broadest reasonable interpretation
`standard in enacting the AIA” and “the standard was properly adopted by
`PTO regulation.”).
`Petitioner proposes no specific constructions. Pet. 15. Patent Owner
`discusses ten terms in its Preliminary Response. Prelim. Resp. 28–35. For
`purposes of this decision, we determine that only the claim terms discussed
`below require express construction. See Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be
`construed that are in controversy, and only to the extent necessary to resolve
`the controversy.”).
`
` Web Page
`1.
`Patent Owner notes that in a previous case involving a related patent
`we determined the broadest reasonable construction of this term to be “a
`document, with associated files for graphics, scripts, and other resources,
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`accessible over the internet and viewable in a web browser.” Prelim. Resp.
`29 (citing Agilysys, Inc. v. Ameranth, Inc., Case CBM2014-00015, slip op. at
`8 (PTAB Mar. 26, 2014) (Paper 20)). As in the cited case, here we also are
`persuaded that the ordinary and customary meaning of “web page” is
`consistent with Patent Owner’s proposed construction. Accordingly, on this
`record, 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.”
`
` Hospitality Applications
`2.
`Patent Owner argues that a previous Board decision, regarding a
`related patent, implicitly construed this term to mean “applications used to
`perform services or tasks in the hospitality industry.” Prelim. Resp. 32–33
`(citing Agilysys, Inc. v. Ameranth, Inc., Case CBM2014-00014, slip op. at
`16–17 (PTAB Mar. 26, 2014) (Paper 19)). Patent Owner argues that one of
`ordinary skill in the art would have understood “hospitality” to exclude
`travel and transportation activities and in particular a car rental application
`would not be within the scope of the claimed “hospitality applications.”
`Prelim. Resp. 33.
`Petitioner implicitly deals with this issue as part of its discussion of
`Brandt. Pet. 48–49. Petitioner asserts that “[t]he car rental applications
`described in Brandt are hospitality applications.” Id. at 48. In support of its
`position it cites a hospitality textbook. Paul R. Dittmer, Dimensions of the
`Hospitality Industry, Ex. 1035. This 1997 textbook includes a section titled
`“A Definition of Hospitality.” Id. at 5–6. Here, the authors of the text
`discuss a “traditional view” of hospitality that “refers to the act of providing
`food, beverages, or lodging to travelers.” Id. The authors then discuss a
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`broader view of hospitality that includes “services primarily to travelers in a
`broad sense of the term. By contrast, other service businesses ordinarily
`deal with customers who are local residents rather than travelers.” Id. at 6.
`The textbook notes that the definition of hospitality “is really quite broad.”
`Id. at 7; see also id. at 404 (listing car rental agencies as a business providing
`service to travelers). On this record, we are persuaded that the ordinary and
`customary meaning of hospitality is broad enough to encompass car rental
`activities.
`Further, we are persuaded that the specification and prosecution
`history do not manifest a clear intention on behalf of the patentee to narrow
`the meaning of this term. The specification provides several generic
`examples of hospitality applications. Ex. 1002, 4:11–12 (“hospitality
`applications, e.g., reservations, frequent customer ticketing, wait lists, etc.”).
`These generic applications could be of use in a wide variety of hospitality
`businesses, including travel and tourist related businesses. See Ex. 1003
`¶¶ 75–76 (discussing computing technology in the hospitality industry
`including reservation applications used by travel businesses). As noted by
`the Patent Owner, the prosecution history contains the following discussion
`of hospitality:
`As known in the art, a hospitality software application is, for
`example, a piece of software used to provide operational
`solutions in hospitality industries such as restaurants and hotels
`concerning, for example, food ordering, menus, wait-lists and
`reservations.
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`Prelim. Resp. 32 (quoting Ex. 20398 (Nov. 1, 2001 Claim Amendment, 6)
`(emphases added)). We are not persuaded that this language limits the term
`in a manner that would exclude travel and tourism applications such as a car
`rental application. The quoted language merely provides examples of
`hospitality software and exemplary uses of such software. On this record,
`we are persuaded that the broadest reasonable construction of “hospitality
`applications” is “applications used to perform services or tasks in the
`hospitality industry.” Our construction of hospitality includes businesses,
`such as car rental agencies, that provide services to travelers.
`
`C. Asserted Ground Based on 35 U.S.C. § 101
`Petitioner argues that claims 11–13 and 15 are unpatentable under 35
`U.S.C. § 101, because “(1) they are directed to abstract ideas such as
`ordering, reservations, and waitlists, and (2) they merely require generic
`computer implementation.” Pet. 71. Patent Owner contends that this
`argument has already been presented and rejected in Agilysys, Inc. v.
`Ameranth, Inc., Case CBM2014-00015 (PTAB Mar. 26, 2014) (Paper 20)
`and should be rejected here for the same reasons. Prelim. Resp. 76–77.
`Upon review of Petitioner’s analysis and supporting evidence, we have
`determined that on this record Petitioner has not demonstrated that it is more
`likely than not that claims 11–13 and 15 are directed to patent-ineligible
`subject matter.
`Patent eligible subject matter is defined in § 101 of the Patent Act,
`which recites:
`
`
`8 The parties are reminded that our rules require that each page of an exhibit
`“must be uniquely numbered in sequence.” 37 C.F.R. § 42.63(d)(2)(i).
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`Whoever invents or discovers any new and useful process,
`machine, manufacture, or composition of matter, or any new
`and useful improvement thereof, may obtain a patent therefor,
`subject to the conditions and requirements of this title.
`
`There are, however, three limited, judicially created exceptions to the broad
`categories of patent-eligible subject matter in § 101: laws of nature; natural
`phenomena; and abstract ideas. Mayo Collaborative Servs. v. Prometheus
`Labs., Inc., 132 S. Ct. 1289, 1293 (2012).
`While an abstract idea by itself is not patentable, a practical
`application of an abstract idea may be deserving of patent protection. Id. at
`1293–94; Bilski v. Kappos, 130 S. Ct. 3218, 3230 (2010); Diamond v. Diehr,
`450 U.S. 175, 187 (1981). To be patent-eligible, a claim cannot state simply
`the abstract idea and add the words “apply it.” Mayo, 132 S. Ct. at 1294.
`The claim must incorporate enough meaningful limitations to ensure that it
`claims more than just an abstract idea and is not merely a “drafting effort
`designed to monopolize the [abstract idea] itself.” See id. at 1297.
`In Alice Corp. v. CLS Bank International, 134 S. Ct. 2347, 2355
`(2014), the Supreme Court referred to the Mayo framework, “for
`distinguishing patents that claim laws of nature, natural phenomena, and
`abstract ideas from those that claim patent-eligible applications of those
`concepts.” First, “we determine whether the claims at issue are directed to
`one of those patent-ineligible concepts.” Id. “If so, we then ask, ‘[w]hat
`else is there in the claims before us?’” Id. (quoting Mayo, 132 S. Ct. at
`1297). Second, we consider the elements of each claim both individually
`and as an ordered combination to determine whether the additional elements
`transform the nature of the claim into a patent-eligible application. Id. Step
`two of the analysis may be described as a search for an “inventive
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`concept”—i.e., an element or combination of elements that is sufficient to
`ensure that the patent in practice amounts to significantly more than a patent
`upon the ineligible concept itself. Id. (citing Mayo, 132 S. Ct. at 1294).
`Petitioner contends that the claims “are directed to fundamental and
`abstract activities in the hospitality industry such as ordering, reservations,
`and waitlists.” Pet. 71. The challenged claims are system claims, however,
`that in itself is not determinative of whether a claim is directed to patentable
`subject matter. The Federal Circuit has indicated that “a machine, system,
`medium, or the like may in some cases be equivalent to an abstract mental
`process for [the] purposes of patent ineligibility.” Bancorp Servs. L.L.C. v.
`Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1277 (Fed. Cir. 2012).
`Independent claims 11–13 share the same fundamental structure. The
`only difference between these claims is found in the last portion of the final
`wherein clause. In claim 11, that wherein clause states “wherein the
`synchronized data relates to orders.” Ex. 1002, 17:25–26. This wherein
`clause is modified slightly in claim 12 (“synchronized data relates to
`waitlists”) and claim 13 (“synchronized data relates to reservations”). Id. at
`18:8–9, 18:30–31. Other than those differences, claims 11–13 are identical.
`As to the remaining language of claims 11–13, those claims state, in
`relevant part, a system comprising a central database, at least one wireless
`handheld computing device, at least one web server, at least one web page,
`an API, and a communications control module. Id. at 17:7–17. The claim
`also includes limitations regarding the interaction between these elements.
`Id. at 17:4–26. For example, hospitality applications and data are
`synchronized between the above recited claim elements and in addition, the
`claimed API enables integration of outside applications with hospitality
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`applications. Id. Claim 15 depend from claims 11, 12, or 13 and further
`recites that “the data is sent to a wireless paging device.” Id. at 18:37–38.
`We are not persuaded by Petitioner’s argument. The claims include
`a hospitality application and a reference to a specific type of data
`synchronized by the system, but the claims as a whole are directed to an
`information management and synchronous computing system which is
`composed of concrete, tangible elements arranged to achieve data
`synchronization in line with the stated objects of the claimed invention.
`We do not view these claims as reciting merely the abstract ideas of
`“ordering, reservations, and waitlists,” but rather as a particular practical
`application of the idea of application and data synchronization. Thus, we
`conclude that Petitioner has not demonstrated that it is more likely than
`not that claims 11–13 and 15 are unpatentable under 35 U.S.C. § 101 as
`directed to non-statutory subject matter.
`
`D. Asserted Grounds Based on “hospitality applications and data.”
`Petitioner argues that claims 11–13 and 15 are unpatentable under 35
`U.S.C. § 112 due to lack of enablement, indefiniteness, and lack of written
`description support for “hospitality applications and data.” Pet. 26–42.
`
` Asserted Lack of Enablement
`1.
`In order for a claim to be enabled the specification must disclose
`adequately to one of ordinary skill in the art how to make the claimed
`invention without undue experimentation. Genentech, Inc. v. Novo Nordisk,
`A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997). Petitioner argues that the
`challenged claims are not enabled because no system is described in which
`hospitality applications and data are stored in the four recited locations, (1) a
`central database, (2) at least one wireless handheld computing device, (3) at
`
`16
`
`Apple Inc, Exhibit 1079
`
`
`
`CBM2015-00099
`Patent 6,871,325 B1
`
`least one web server, and (4) at least one web page. Pet. 27. Petitioner also
`asserts that the specification is vague and abstract as to what it means for
`applications and data to be synchronized between these locations. Id. at 28.
`We are not persuaded by that the specification fails to enable the
`disputed limitation. For example, the specification provides an example of
`synchronization and storage between these locations.
`The single point of entry works to keep all wireless handheld
`devices and linked Web sites in synch with the backoffice
`server (central database) so that different components are in
`equilibrium at any given time and an overall consistency is
`achieved. For example, a reservation made online is
`automatically communicated to the backoffice server which
`then synchronizes with all the wireless handheld devices
`wirelessly. Similarly, changes made on any of the wireless
`handheld devices will be reflected instantaneously on the
`backoffice server and the other handheld devices.
`
`Ex. 1002, 11:45–55; see also id. at 2:34–37 (“Similarly, changes made on
`any of the wireless handheld devices would be reflected instantaneously on
`the backoffice server, Web pages and the other handheld devices.”).
`Petitioner also argues that the claims are not enabled because the
`“specification fails to teach how hospitality applications can be stored in a
`database.” Pet. 28. Patent Owner responds by stating that it is well-known
`in the art to be able to store software code and not just raw data in a
`database. Prelim. Resp. 39. We are not persuaded that one of skill in the art
`would have to undergo undue experimentation in order to save an executable
`file in a database. Petitioner has not explained sufficiently why it would be
`beyond the knowledge of one of ordinary skill in the art at the relevant time
`to store an application file in a database as opposed to storing raw data.
`Petitioner’s Declarant testified that “it is not typical to store applications
`
`17
`
`Apple Inc, Exhibit 1079
`
`
`
`CBM2015-00099
`Patent 6,871,325 B1
`
`themselves in a database.” Ex. 1003 ¶ 94. Describing an activity as atypical
`is not evidence that an activity is something that one of skill in the art would
`not have understood how to do. Thus, we are not persuaded by Petitioner’s
`arguments on this point.
`Finally, Petitioner asserts that “[t]he notion of storing applications on
`a web page is also ambiguous. Web pages can be part of an application but
`web pages do not typically store applications on them.” Pet. 28 (emphasis
`added). Here again, arguing that something is atypical is not evidence that
`the activity would require undue experimentation. Patent Owner argues that
`storing an application on a web page was well-known by one of ordinary
`skill in the art. “Similarly, it is well-known that software code (again,
`applications) and data are temporarily stored in dynamic web pages when
`the page is generated; there is no requirement in the art (or in the patent
`specification) that a web page continue to exist permanently after it is
`generated.” Prelim. Resp. 39. We find Patent Owner’s argument to be
`persuasive. Petitioner has not shown sufficiently that one of ordinary skill in
`the art would have to undergo undue experimentation in order to store an
`application on a web page. Thus, we are not persuaded that the challenged
`claims should be held unpatentable due to lack of enablement of the term
`“hospitality applications and data.”
`
` Asserted Indefiniteness
`2.
`Petitioner asserts that the term “hospitality applications and data”
`renders the challenged claims indefinite because the term, as used in the
`claims, does not specify the relationship between the hospitality applications
`and data in the four locations recited in the claim and the term also lacks
`sufficient antecedent basis. Pet. 30. The Federal Circuit stated “that a claim
`
`18
`
`Apple Inc, Exhibit 1079
`
`
`
`CBM2015-00099
`Patent 6,871,325 B1
`
`could be indefinite if a term does not have proper antecedent basis where
`such basis is not otherwise present by implication or the meaning is not
`reasonably ascertainable.” Halliburton Energy Servs., Inc. v. M-I LLC, 514
`F.3d 1244, 1249 (Fed. Cir. 2008) (citing Energizer Holdings, Inc. v. Int'l
`Trade Comm’n, 435 F.3d 1366, 1370–71 (Fed. Cir. 2006)). Petitioner,
`however, has not shown sufficiently that one of ordinary skill in the art
`would not have been able to ascertain the meaning of this term.
`Claims 11–13 recite “a central database containing hospitality
`applications and data.” Ex. 1002, 17:7–8. The claims include a wireless
`handheld computing device, web server, and web page and for each of these
`elements the claim recites “on which hospitality applications and data are
`stored.” Id. at 17:9–15. The claims recite that the “application a
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