UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC., EVENTBRITE INC., STARWOOD HOTELS & RESORTS
`WORLDWIDE, INC., EXPEDIA, INC., FANDANGO, LLC,
`HOTELS.COM, L.P., HOTEL TONIGHT, INC., HOTWIRE, INC.,
`KAYAK SOFTWARE CORP., OPENTABLE, INC., ORBITZ, LLC, PAPA
`JOHN’S USA, INC., STUBHUB, INC., TICKETMASTER, LLC, LIVE
`NATION ENTERTAINMENT, INC., TRAVELOCITY.COM LP,
`WANDERSPOT LLC, AGILYSYS, INC., DOMINO’S PIZZA, INC.,
`DOMINO’S PIZZA, LLC, HILTON RESORTS CORPORATION,
`HILTON WORLDWIDE, INC., HILTON INTERNATIONAL CO., MOBO
`SYSTEMS, INC., PIZZA HUT OF AMERICA, INC., PIZZA HUT, INC.,
`and USABLENET, INC.,
`Petitioner
`
`v.
`
`AMERANTH, INC.
`Patent Owner
`
`____________
`
`Case CBM2015-000821
`Patent No. 6,871,325
`____________
`
`Submitted Electronically via the Patent Review Processing System
`
`CORRECTED PATENT OWNER’S RESPONSE
`
`1 CBM2015-00097 has been consolidated with this proceeding.
`
`

`
`TABLE OF CONTENTS
`
`CBM2015-00082
`
`Page
`
`Contents
`I. STATEMENT OF PRECISE RELIEF REQUESTED ...................................... 1
`II. INTRODUCTION.............................................................................................. 1
`III. CLAIM CONSTRUCTION ............................................................................... 3
`1. “wireless handheld computing device” ....................................................... 4
`2. “central database” ...................................................................................... 2
`3. “web page”.................................................................................................. 5
`4. “web server”................................................................................................ 5
`5. “communications control module”.............................................................. 6
`6. “synchronized”............................................................................................ 6
`7. “hospitality applications” ........................................................................... 7
`8. “application program interface”................................................................. 7
`9. “outside applications”................................................................................. 7
`10. “integration” ............................................................................................... 7
`11. “Wherein the communications control module is an interface
`between the hospitality applications and any other communications
`protocol”............................................................................................................ 8
`12. “wherein the synchronized data relates to ‘orders,’ ‘waitlists’ and
`‘reservations’” respectively as to claims 11, 12 and 13.................................. 11
`IV. THERE HAS BEEN NO SHOWING Of OBVIOUSNESS....................... 14
`A. DeLorme Does Not Disclose Claims 11-13 First Wherein Clause .............. 16
`B. DeLorme Does Not Disclose Claims 11-13 Element “b”...................... 30
`C. DeLorme Does Not Disclose The Claimed “Application Program Interface”
`That “Enables Integration of Outside Applications with the Hospitality
`Applications”...................................................................................................... 43
`D. DeLorme Does Not Disclose The Claimed “Communications Control
`
`-i-
`
`

`
`CBM2015-00082
`
`Module” Nor ‘Wherein The Communications Control Module Is An Interface
`Between The Hospitality Applications And Any Other Communications
`Protocol”……..................................................................................................... 45
`E. Claims As A Whole …… ............................................................................. 48
`F. DeLorme Does Not Disclose The Fourth Wherein Clause Of ‘325
`Claims 11-13 ….. ............................................................................................... 49
`G. Objective Evidence Of Non-Obviousness.…… ........................................... 51
`1. There is a very strong nexus between the evidence of “secondary
`considerations” and the challenged claims ………………….……………54
`2. The Ameranth patents in this family, including the challenged claims, have
`been successfully and extensively licensed…………………………………….64
`3. Ameranth's products enjoyed substantial, widespread
`commercial success. ........................................................................................... 66
`4. Ameranth's 21st Century Restaurant received numerous technology awards
`and industry acclaim after its introduction. ........................................................ 68
`5. Ameranth received overwhelming industry praise for the 21st Century
`Restaurant technology. ....................................................................................... 70
`6. Starbucks and numerous other companies copied the Ameranth technology
`reflected in the challenged claims. ..................................................................... 72
`7. Other companies tried and failed to develop the integrated, synchronized
`Ameranth technology. ........................................................................................ 78
`8. Objective Evidence Conclusion................................................................... 80
`V. CONCLUSION................................................................................................ 80
`
`-ii-
`
`

`
`TABLE OF AUTHORITIES
`
`CBM2015-00082
`
`Page
`
`Cases
`
`Allen Archery, Inc. v. Browning Mfg. Co.,
`819 F.2d 1087 (Fed. Cir. 1987)........................................................................... 70
`
`Ameranth v. Pizza Hut et al.,
`Case No. 3-11-cv-01810 (S.D. Cal. 2013) .......................................................... 56
`
`Apple Inc. v. International Trade Commission,
`725 F.3d 1356 (Fed. Cir. 2013)........................................................................... 52
`
`Berk-Tek LLC. v. Belden Techs., Inc.,
`IPR2013-00059, FWD 34 (PTAB April 28, 2014) ............................................. 25
`
`CFMT, Inc. v. Yieldup Int’l. Corp.,
`349 F.3d 1333 (Fed. Cir. 2003)....................................................................... 19
`
`Crocs, Inc. v. ITC,
`598 F.3d 1294 (Fed. Cir. 2010)........................................................................... 72
`
`Dynamic Drinkware, LLC v. National Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015)........................................................................... 25
`
`Eli Lilly & Co. v. Zenith Goldline Pharmaceuticals, Inc.,
`471 F.3d 1369 (Fed. Cir. 2006)........................................................................... 68
`
`Gambro Lunda AB v. Baxter Healthcare Corp.,
`110 F.3d 1573 (Fed. Cir. 1997)...................................................................... 55,70
`
`Grain Processing Corp. v. Am. Maize-Products Co.,
`840 F.2d 902 (Fed. Cir. 1988)............................................................................. 36
`
`-iii-
`
`

`
`CBM2015-00082
`
`Heidelberger v. Hantscho Prods.,
`21 F.3d 1068 (Fed. Cir. 1994)............................................................................. 73
`
`HIMPP v. Hear-Wear Techs., LLC,
`751 F.3d 1362 (Fed. Cir. 2014)........................................................................... 26
`
`In re GPAC Inc.,
`57 F.3d 1573, 1580 (Fed. Cir. 1995)………………
`
`…………………..66
`
`In re Roufett, 149 F.3d 1350 (Fed. Cir. 1998)........................................................ 65
`
`In re Warner,
`379 F.2d 1011 (CCPA 1967)............................................................................... 19
`
`In re Zurko,
`258 F.3d 1379 (Fed. Cir. 2001)........................................................................... 25
`
`In re Wesslau,
`147 USPQ 391,393 (CCPA 1965) …………………………………… ………29
`
`Kurtz v. Belle Hat Lining Co., Inc.,
`280 F. 277 (2nd Cir. 1922) ................................................................................... 73
`
`Lantech, Inc. v. Keip Machine Co.,
`32 F.3d 542 (Fed. Cir. 1994)............................................................................... 51
`
`Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc.,
`711 F.3d 1348 (Fed. Cir. 2013)........................................................................... 57
`
`Power-One v. Artesyn Techs, Inc.,
`599 F.3d 1343 (Fed. Cir. 2010).......................................................................... 70
`
`Rambus Inc. v. Rea,
`731 F.3d 1248 (Fed. Cir. 2013)........................................................................... 70
`
`-iv-
`
`

`
`CBM2015-00082
`
`Teva Pharm., Inc. v. Sandoz, Inc.,
`723 F.3d 1363 (Fed. Cir. 2013)........................................................................... 55
`
`Unique Concepts, Inc. v. Brown,
`939 F.2d 1558 (Fed. Cir. 1991)........................................................................... 29
`
`Vandenberg v. Dairy Equip. Co.,
`740 F.2d 1560, 1567 (Fed. Cir.1984)…………………………………………..77
`
`Statutes
`
`35 U.S.C. § 103............................................................................................... 50, 80
`35 U.S.C. § 316 ...................................................................................................... 37
`Rules
`
`37 C.F.R. §42.207................................................................................................... 1
`37 C.F.R. § 42.104.................................................................................................. 49
`37 C.F.R. § 42.22.................................................................................................... 49
`
`-v-
`
`

`
`CBM2015-00082
`
`PATENT OWNER’S LIST OF EXHIBITS
`
`Exhibit No.
`
`Description
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`Food.com Internal Memorandum, “Ameranth Licensing
`Contract,” Sept. 13, 1999
`
`iOS Simulator User Guide, March 9, 2015
`
`Ameranth/Par Technology Corp. License
`Announcement, Jan. 28, 2013
`
`http://blogs.wsj.com/digits/2014/04/02/apples-jobs-
`declared-holy-war-on-google-over-android/, discussing
`Apple 2010 emails made public in Apple v. Samsung
`Litigation
`
`The House that Tech Builds,
`http://hospitalitytechnology.edgl.com/news/the-house-
`thattech-builds99460?referaltype=newsletter, Hyatt CTO
`Interview, April 8. 2015
`
`Domino’s Press Release,
`http://www.prnewswire.com/news-releases/dominos-
`pizza-first-in-industry-to-offer-mobile-
`ordering58317297.
`html, Sept. 27, 2007
`
`“Domino's app let's you voice-order pizza,”
`http://www.usatoday.com/story/money/business/2014/06
`/16/dominos-voice-ordering-app-nuancefast-
`food-restaurants/10626419/, June 16, 2014
`
`-vi-
`
`

`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`2014
`
`2015
`
`2016
`
`2017
`
`2018
`
`CBM2015-00082
`
`“Starbucks to roll out innovations in mobile platform--
`Company says new mobile features could be ‘holy grail’
`of throughput,” http://nrn.com/quick-service/starbucks-
`roll-out-innovations-mobile-platform, March 13, 2014
`
`“Starbucks’ mobile order and pay sees hot start, aided by
`Integration,” www.mobilecommercedaily.com, April 27,
`2015
`
`“Agilysys Introduces InfoGenesis Roam Mobile
`Software,” June 21, 2011
`
`Ex parte McNally, Appeal No. 2012-001503 (PTAB
`Nov. 4, 2014)
`
`Decision in Appeal No. 2010-000055 (BPAI March 3,
`2011)
`
`Decision in Appeal No. 2009-011707 (BPAI Feb. 14,
`2011)
`
`Decision in Appeal No. 2009-008033 (BPAI Jan. 28,
`2011)
`
`Excerpts from Microsoft Computer Dictionary (4th ed.
`1999)
`
`“The Computerworld Honors Program--Case Study,”
`Award to Marriott International, Inc. (2006)
`
`Decision in BPAI Appeal No. 2011-004999 (PTAB Oct.
`17, 2013 )
`
`Transcript of FS/TEC Awards Presentation (Feb. 2009)
`
`-vii-
`
`

`
`2019
`
`2020
`
`2021
`
`2022
`
`2023
`
`2024
`
`2025
`
`2026
`
`2038
`
`2039
`
`2040
`
`2041
`
`2042
`
`2043
`
`2044
`
`2045
`
`CBM2015-00082
`
`Declaration of Dr. Alfred Weaver
`
`Microsoft Computer Dictionary (4th ed.) excerpts
`
`May 1999 announcement from National Restaurant
`Association (NRA) show in Chicago, IL.
`
`Excerpts from transcript of Deposition of John Harker,
`May 3, 2010
`
`May 14, 2012 press release re Skywire
`
`Ameranth 21st Century System Product Brochure (two-
`sided), distributed September 1999
`Press releases and announcements of various Ameranth
`patent licenses and alliances
`
`Hospitality Technology, "POS Scoreboard", 2004 and
`2006
`Micros mycentral/Simphony press release
`
`Mark Nance PowerPoint presentation, 2009 FS/TEC
`meeting
`NCR/Radiant press release, July 2011
`
`PAR Technology acquires PixelPoint, article, August
`2005
`
`Dominos AnyWare announcement, August 2015
`
`Agilysys/InfoGenesis Mobile brochure
`
`"Wireless finds a welcome in hospitality," Bloomberg,
`Feb. 2004
`Mobile Commerce Daily article re Agilysys InfoGenesis,
`May 2015
`
`-viii-
`
`

`
`CBM2015-00082
`
`Agilysys/InfoGenesis press release, June 2012
`
`Agilysys Announces Availability of InfoGenesis™
`Mobile v2.0, Sept. 2013
`Xpient acquires Progressive, press release, August 2004
`
`Radiant Systems acquires Aloha Technologies, press
`release, Dec. 2003
`Case Study, Ameranth/Improv Comedy Clubs, Spring
`2000 (annotated)
`
`Computerworld Award summary, 2001 (annotated)
`
`Photograph from 1999 NRA meeting in Chicago, IL,
`including Keith McNally and Graham Granger
`Dunkin’ Donuts Selects CARDFREE as its Mobile
`Platform, Business Wire, Dec. 2015.
`
`Transcript of remarks from 2009 FSTEC meeting,
`Technology Executives Panel
`PowerPoint slides and screen shots from Ameranth
`presentation to Starbucks, December 1, 2006
`"Starbucks Claims 90 Percent Mobile Payments Market
`Share", PYMTS, Oct. 31, 2014.
`
`2046
`
`2047
`
`2048
`
`2049
`
`2050
`
`2051
`
`2052
`
`2053
`
`2054
`
`2055
`
`2056
`
`-ix-
`
`

`
`CBM2015-00082
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`In accordance with 37 C.F.R. §42.207(a), Patent Owner, Ameranth,
`
`Inc., (“PO”) submits this Response to the CBM review Petition (“Pet.”)
`
`against U.S. Patent No. 6,871,325 ("the '325 patent")2. For the reasons below,
`
`the Petition3 should be denied.4
`
`II.
`
`INTRODUCTION
`
`The only issue remaining for the Board to resolve is whether Petitioner met
`
`2 The ‘325 Patent shares a common specification with U.S. 6,384,850 (the “’850
`
`Patent”). Citations to the ‘850 Patent thus apply to the ‘325 Patent. Similarly, the
`
`‘325 independent claims contain all of the elements of ‘850 claim 12.
`
`3 Patent Owner filed a Request for Rehearing on Sept 15, 2015, highlighting that
`
`‘325 claim 12 was not challenged in the Petition, and presenting other issues
`
`regarding obviousness of other claims. The Board has not acted on that Request.
`
`4 Petitioner’s standing argument merely references CBM2014-00016, and is thus
`
`insufficient. PO submits that Petitioner was required to provide, in the Petition, the
`
`basis for standing. Further, if the Federal Circuit rules that the `325 patent in CBM
`
`2014-00016 is not a CBM patent and that institution was improper, having relied
`
`on that institution for this CBM dooms the current petition as well. Patent Owner
`
`incorporates herein its Preliminary Response arguments regarding standing and
`
`preserves its right to appeal the Board’s determination thereof.
`
`-1-
`
`

`
`CBM2015-00082
`
`its burden to prove that a POSA at the time of the invention would have found the
`
`challenged ‘325 claims to be obvious based only on the DeLorme reference. How-
`
`ever, three facts are indisputable. First, Petitioner did not even challenge claim 12
`
`based on Delorme. Second, the DeLorme inventors did not conceive or possess
`
`Ameranth’s inventions. Petitioner does not dispute this reality, otherwise it would
`
`have argued anticipation based on DeLorme and, as confirmed by the Board,
`
`Petitioner admitted that DeLorme did not disclose the claimed communications
`
`control module (“CCM”).5 Third, due to the challenge being based on this single
`
`reference, it is indisputable that the DeLorme inventors, who were clearly POSA
`
`and who clearly had access to their own patent, did not find Ameranth’s inventions
`
`to be obvious, otherwise they would have themselves “conceived” it and included
`
`it in their specification to solve their stated problem. But they did not.
`
`The “system of systems” concept of the ‘850/’325 patents, as reflected in the
`
`“synchronous communication system” claims, was designed for smooth growth/
`
`changes for multiple and ever-varying communications. Delorme’s limited
`
`concept was not. Delorme admitted that his “preferred embodiment” relied on
`
`5 “Petitioner argues that DeLorme discloses the claimed system except that
`
`DeLorme does not disclose explicitly that the communication control module is
`
`configured as an interface between the hospitality applications and any other
`
`communications protocol.” CBM2015-00080, Inst. Dec. 20 (emphasis added).
`
`-2-
`
`

`
`CBM2015-00082
`
`“tangible media,” e.g. CDs, which were clearly distributed by hand, not a network:
`
`Thus, the preferred TRIPS embodiment, shown in use in FIG.
`lA, comes partly on tangible media, for example, as a North
`American Atlas on CD-ROM with a TRIPS "starter" kit.
`Exh. 1024 14:19-21 (emphasis added). DeLorme also only described various
`
`independent “alternative” embodiments:
`
`Alternatively, all TRIPS function, data and service can be provided
`entirely online (i.e. without significant standalone software
`components)—for example, from a central TRIPS service bureau, or
`by means of a TRIPS Internet World Wide Web Site.
`FIG. 9 also depicts alternative TRIPS embodiments and remote
`usage scenarios which facilitate "on the spot" simplified travel
`planning and transactions, via WCU 907 from remote locations
`Exh. 1024 43-47, 72:37-43 (emphasis added); see also Exh. 1002 ¶¶ 210-12.
`
`Further, in addition to the technical infirmities of the DeLorme disclosure
`
`vis-à-vis the claimed subject matter, a large quantity of objective evidence
`
`demonstrates nonobviousness.
`
`III. CLAIM CONSTRUCTION
`
`A BRI construction cannot read elements out of the claims and cannot be
`
`inconsistent with the intrinsic evidence. Microsoft Corp.v. Proxyconn, Inc., 789
`
`F.3d 1292, 1298 (Fed. Cir. 2015).
`
`Patent Owner presents the following proposals, all of which are supported
`
`by the intrinsic evidence. The Declaration of Dr. Alfred Weaver (Exh. 2019) in
`
`-3-
`
`

`
`CBM2015-00082
`
`support of Ameranth’s positions on nonobviousness is critical in the claim
`
`construction analysis because it provides the perspective of a POSA in viewing the
`
`claims in light of his own knowledge and the specification disclosure. Per Dr.
`
`Weaver, a POSA would have had a Bachelor’s degree in either electrical
`
`engineering or computer science and at least three years of experience in the
`
`hospitality market in the fields of developing software for wireless networks and
`
`devices, developing Internet-based systems or applications, with knowledge of or
`
`equivalent experience in software development in the hospitality market for at least
`
`three years. (Exh. 2019 ¶21).
`
`1.
`
`“wireless handheld computing device”
`
`Patent Owner proposes “a wireless computing device that is sized to be held
`
`in one’s hand.” See Everingham Order (Exh. 1032 at 24); Exh. 2019 ¶27.
`
`2.
`
`“central database”
`
`Patent Owner proposes “a database file structure connected to the system in
`
`association with a central server, comprised of records, each containing fields,
`
`together with a set of operations for searching, sorting, recombining and other
`
`functions.” Microsoft Comp. Dict. (4th ed.1999) (Exh. 1034 at 8); Exh. 1001 at
`
`2:24, 11-34-35 (“backoffice server (central database)”); id. at 2:8-10, 11:13-15
`
`(“synchronization between a central database and multiple handheld devices”).
`
`(Exh. 2019 ¶28).
`
`-4-
`
`

`
`CBM2015-00082
`
`3.
`
`“web page”
`
`The PTAB construed consistent with its prior rulings to mean “a document,
`
`with associated files for graphics, scripts, and other resources, accessible over the
`
`internet and viewable in a web browser.” Inst. Dec. 7; see also CBM2014-00015
`
`(Exh. 1017 thereto at 8)). (Exh. 2019 ¶29).
`
`The PTAB construed the non-recited term “document” in accordance with
`
`Petitioner’s request. Patent Owner objects because it is not a term in the claims.
`
`Further, not only is Petitioner’s proposal not a BRI construction for this term, the
`
`proposed construction is inconsistent with the web context and the specification
`
`(Exh. 1001 12:20-24) and thus inconsistent with how a POSA would view “web
`
`based” documents served via the claimed “web server.” (Exh. 2019 ¶29).
`
`4.
`
`“web server”
`
`The Microsoft Computer Dictionary states: “Web Server:” “See HTTP
`
`Server.” (Exh. 2020 (Page 479)). The Dictionary then states in regard to “HTTP
`
`Server:” “Server software that uses HTTP to serve up HTML documents and any
`
`associated files and scripts when requested by a client such as a web browser.”
`
`(Exh. 2020 (Page 224)). Patent Owner proposes that this definition be adopted.
`
`Web Server is a recited element, its critical functionality in the claims has not been
`
`appreciated by the Petitioner or the Board, and DeLorme suffers critical infirmities
`
`in meeting this limitation as properly construed and relative to the CCM and the
`
`-5-
`
`

`
`CBM2015-00082
`
`third wherein clause of claim 12, as discussed below. (Exh. 2019 ¶30).
`
`5.
`
`“communications control module”
`
`This is a software layer, as Judge Payne concluded in prior district court
`
`litigation stating that “the specification itself provides the best construction for the
`
`term at issue.” (Exh. 1033 at 13). Based on the District Court constructions and
`
`intrinsic evidence, Patent Owner proposes the following construction for the CCM:
`
`a layer that sits on top of any communication protocol and acts as an
`interface between hospitality applications and the communication
`protocol.
`See Exh. 1001 4:9-13. Further it is clear that the software-based CCM provides the
`
`“automatic” communications “routing” functionality as shown by the specification,
`
`e.g., “[a]communication control program monitors and routes all communications
`
`to the appropriate devices,” which “must be running for proper communications
`
`to exist between all devices on the network.” (Exh. 1001 9: 21-22, 38-39
`
`(emphasis added)). It is also the CCM that deals concurrently with both HTTP and
`
`non-HTTP communications messaging protocols of the system and also supports
`
`the integration of the separately recited API (which then also deals with software
`
`application-to-application direct integration and with third party systems/devices
`
`such as POS systems, as discussed further below). (Exh. 2019 ¶31).
`
`6.
`
`“synchronized”
`
`The Board correctly construed this term to mean “made, or configured to
`
`-6-
`
`

`
`CBM2015-00082
`
`make, consistent.” Inst. Dec. 9; Exh. 2019 ¶32.
`
`7.
`
`“hospitality applications”
`
`The Board correctly construed this term to mean “applications used to
`
`perform services or tasks in the hospitality industry.” This is consistent with the
`
`specification which states “hospitality applications, e.g., reservations, frequent
`
`customer ticketing, wait lists, etc.” Exh. 1001 4:6–7; Inst. Dec. 9. To properly
`
`establish the boundaries of the hospitality market, however, as would be understood
`
`by a POSA, the “travel, tourism and transportation” industries are broader than and
`
`outside the “hospitality industry” itself. Exh. 2019 ¶33.
`
`8.
`
`“application program interface”
`
`The recited API is not a generic API divorced from the definition of its
`
`function within ‘850 claim 12. (Exh. 2019 ¶34). See also the discussion of the
`
`proposed construction of “integration” below.
`
`9.
`
`“outside applications”
`
`The Board construed “outside applications” to mean “third party
`
`applications, such as point of sale companies, affinity program companies, and
`
`internet content providers.” Inst. Dec. 10; Exh. 2019 ¶35.
`
`10.
`
`“integration”
`
`The Board construed “integration” to mean “combining of different
`
`activities, programs, or hardware components into a functional unit.” Inst. Dec. 11.
`
`-7-
`
`

`
`CBM2015-00082
`
`This term and construction also must be considered in relation to the “CCM” and
`
`“outside applications” terms as well. (Exh. 2019 ¶36).
`
`11.
`
`“Wherein the communications control module is an
`interface between the hospitality applications and any
`other communications protocol”
`
`In addition to correctly construing CCM standing alone as discussed above,
`
`this wherein clause must be separately considered and construed as part of this
`
`broader claim element itself as well as in the context of “integration” and “outside
`
`applications,” and the claim as a whole. (Exh. 2019 ¶39).
`
`The Board’s initial determination in CBM2015-00099 that neither the claims
`
`nor the specification “require more than [] web based communications protocols”
`
`(CBM2015-00099, Inst. Dec. 35) and that “the only specific protocol discussed in
`
`the specification is HTTP” (Id. at 32) was erroneous and ignores that the system as
`
`claimed “integrates” with, e.g., POS system devices and accommodates and adapts
`
`to new protocols without the necessity to change the underlying/core hospitality
`
`applications, a concept not taught by Delorme as discussed below. For example,
`
`the claims and specification refer to “integration” with “outside applications,” i.e.,
`
`third party systems such as POS system devices (clearly which operate with
`
`different protocols). (Exh. 2019 ¶40). The specification states:
`
`A simple point to point wireless capability is contemplated which
`permits simple digital messages to be sent from the wireless
`handheld devices ... to a receiver in a beeper and/or valet parking
`
`-8-
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`
`CBM2015-00082
`
`base-station. … A simple protocol is used to acknowledge receipt of
`the message and thus simultaneous communication is not necessary,
`which reduces the cost of the wireless link
`Exh. 1001 11:49-57 (emphasis added). It is readily apparent that this passage
`
`refers to an exemplary simple digital messaging “wireless” (i.e., non-HTTP)
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`protocol for, e.g., interfacing with pagers, just as a communication with a third
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`party POS system might involve a different protocol. The claimed CCM as
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`described by the specification accommodates and routes messages to such
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`systems/devices when appropriate, which a system relying only on web/browser-
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`based protocols could not do. (Exh. 2019 ¶40).
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`This is consistent with the specification requirement that the CCM must be
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`capable of concurrent communications via both HTTP and non-HTTP protocols
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`while monitoring and routing messages operating under different protocols to the
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`appropriate devices/components as recited in the claims.9 (Exh. 2019 ¶41).
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`The Board declined to construe CCM or this wherein clause and failed to
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`appreciate the claimed functionality as required by the specification disclosure and
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`the explicit claim structure, as exemplified by the Board’s incorrect conclusion in
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`9 Similarly, dependent claim 15 of the `325 patent recites a “wireless paging
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`device,” which operates under a non-HTTP protocol, further reinforcing that the
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`CCM must have functionality to interface to multiple protocols.
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`-9-
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`

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`CBM2015-00082
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`CBM2015-00099 that only “HTTP” protocols are disclosed by the specification .
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`Patent Owner proposes that this wherein clause be construed as “a server-
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`side software layer that provides an interface between the hospitality applications
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`and communication protocols and which monitors and routes communications
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`between different devices while concurrently using different protocols.” (Exh.
`
`2019 ¶42). This construction is compelled by the specification, which clearly
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`discloses at least two different protocols:
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`The communication module also provides 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.
`Exh. 1001 4:5-11.
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`A communications control program monitors and routes all
`communications to the appropriate devices. It continuously monitors
`the wireless network access point and all other devices connected to
`the network such as pagers, remote devices, internet Web links and
`POS software. Any message received is decoded by the software, and
`then routed to the appropriate device.
`Exh. 1001 9:21-27. The CCM as part of the claimed system as a whole thus
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`provides a functionally independent layer interface for and between the hospitality
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`applications on different devices/clients while concurrently using different
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`protocols including non-HTTP protocols. (Exh. 2019 ¶42).
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`Moreover, Petitioner should not be heard to object to Patent Owner’s
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`-10-
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`

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`CBM2015-00082
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`proposed construction for this wherein clause because its expert (Exh. 1002 ¶51)
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`has already substantively agreed that the specification compels PO’s proposal.
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`12.
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`“wherein the synchronized data relates to ‘orders,’ ‘waitlists’
`and ‘reservations’” respectively as to claims 11, 12 and 13
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`First, these claim elements as part of the fourth wherein clause must be
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`construed from the perspective of a POSA inclusive of experience in the
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`hospitality market at the time of the invention, and based on two tenets of claim
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`construction, i.e., that the claim must be construed as a whole and that claim
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`differentiation mandates a different meaning for each of the “orders,” “waitlists”
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`and “reservations” terms. Additionally the specification itself informs the POSA
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`that each of these are different from one another and that they are stand-alone
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`hospitality applications (not once but three times in the first column of the
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`specification).11 Clearly, under the canons of claim construction the same
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`element/functionality in the prior art cannot meet the differing limitations between
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`these three independent claims. The inventors followed the `850 patent
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`11 “[T]he hospitality industry, e.g., for restaurant ordering, reservations and
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`wait-list management “ (Exh. 1001 1:21-23), “for the time criticality of ordering,
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`reservation and wait-list management” (Id. 1:54-55) and “there is still no
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`integrated solution to the ordering/waitlist/reservation problem. (Id. 1:60-61)
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`(emphasis added).
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`-11-
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`

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`CBM2015-00082
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`specification in ‘850 claim 12 with broader “hospitality” limitations. But these
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`three independent claims of the ‘325 patent each are directed to different
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`limitations as to the “type” of hospitality. The inventors also used the different
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`terms in the prosecution history of the `325 patent to distinguish prior art (Exh.
`
`1011 at 11). Thus a different meaning/function is compelled for each of them. The
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`fourth wherein clause of these claims reflects the data that is indisputably a type of
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`“hospitality applications and data” as recited in these claims and thus each of the
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`terms must be construed as a particular species of the hospitality industry genus
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`which cannot be conflated with nor be equated to other species. (Exh. 2019 ¶43).
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`“Relates to orders”
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`Claim 11 recites hospitality applications that are restricted to ordering
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`"wherein … the synchronized data relates to orders." As Petitioner admitted,12 and
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`the Board held (Inst. Dec. 13), the "relates to orders" restriction means "that
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`ordering relates to ordering a restaurant meal. Id. (emphasis added). Ameranth
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`agrees with this construction, considering the claim as a whole and through the
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`lens of the correct experience level of a POSA at the time of the invention. The
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`12 Further, this position was taken not merely by a single petitioner (Apple,
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`Starwood and Eventbrite), and then joined by 24 additional petitioners representing
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`the breadth and knowledge of the hospitality market, broadly confirming that
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`"restaurant/food" ordering is the understanding that a POSA would have.
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`-12-
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`

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`CBM2015-00082
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`correct meaning of “orders” is thus “orders for a restaurant meal.” A POSA at
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`the time of the invention with experience in the hospitality market, and considering
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`the different terms in claims 12 and 13 and the claim as a whole would construe
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`“orders” in this manner. (Exh. 2019 ¶44).
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`Further confirming that the claims of the ‘325 patent describe “applications
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`… in the hospitality industry” and that "ordering" in the `325 patent is "restaurant/
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`food ordering", the Board reiterated the proper construction of this term: “[W]e
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`construed ‘hospitality applications’ as applications used to perform services or
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`tasks in the hospitality industry. The ’325 patent describes restaurant ordering,
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`reservations, wait-list management, and frequent customer ticketing as examples of
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`hospitality applications.” Inst. Dec. at 24 (emphasis added). (Exh. 2019 ¶45).
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`The Board thus correctly differentiated the hospitality application "restaurant
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`ordering" from the different, separately-claimed, hospitality applications of "wait-
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`list management" and "reservations" in claims 12 and 13, just as the inventors did
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`in the '325 specification and prosecution history. The Board accordingly reinforced
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`the fact that these are entirely different hospitality industry functions as claimed in
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`the `325 patent, and once again confirming that the Board's claim 11 construction
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`for "relates to orders" is "related to ordering a restaurant meal." (Exh. 2019 ¶46).
`