`
`
`
`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, HILKTON 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 CBM CBM2015-00080, CBM2015-000821
`Patent Nos. 6,384,850, 6,871,325
`
`
`
`Supplemental Declaration of Don Turnbull, Ph.D.
`
`
`
`
`
`
`1 CBM2015-00096 and CBM2015-00097 have been consolidated with CBM2015-
`00080 and CBM2015-00082, respectively.
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`WEST\268707834.2
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`Apple, Inc., Exhibit 1070, Page 1
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`
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`TABLE OF CONTENTS
`(continued)
`
`Page
`
`B.
`C.
`
`D.
`
`Analysis of Patent Owner’s Responses Regarding Patentability of the
`’850 and ’325 Patents .................................................................................... 4
`A. DeLorme discloses “wherein the applications and data are
`synchronized between the central database, at least one wireless
`handheld computing device, at least one web server and at least
`one web page” ..................................................................................... 4
`DeLorme’s WCU Is a Handheld Device ............................................. 9
`DeLorme’s WCU Has Hospitality Applications and Data Stored
`Thereon .............................................................................................. 11
`Transmission of an Application to the Wireless Handheld
`Device Is Not Required by the Claims .............................................. 16
`DeLorme Discloses Use of the WCU with Desktop Internet
`Embodiments ..................................................................................... 17
`DeLorme Discloses an “application program interface” that
`“enables integration of outside applications” .................................... 20
`G. DeLorme Discloses a “communications control module”
`(“CCM”) ............................................................................................ 23
`H. DeLorme Renders Dependent Claims 13-15 of the ’850 Patent
`Obvious ............................................................................................. 27
`DeLorme Discloses “wherein the synchronized data relates to
`orders” in Claim 11 of the ’325 Patent .............................................. 33
`Patent Owner’s Secondary Considerations Evidence Fails to
`Demonstrate Non-obviousness .......................................................... 34
`
`E.
`
`F.
`
`I.
`
`J.
`
`
`I.
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`
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`Apple, Inc., Exhibit 1070, Page 2
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`
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`U.S. Patent Nos. 6,384,850; 6,871,325
`Supplemental Declaration of Don Turnbull, Ph.D.
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`
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`I, Don Turnbull, do hereby declare:
`
`1.
`
`I am making this declaration at the request of the Petitioners in
`
`Covered Business Method Reviews of U.S. Patent Nos. 6,384,850 (the “’850
`
`patent”) and 6,871,325 (the “’325 patent”) (collectively, the “Ameranth Patents”),
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`CBM2015-00080, CBM2015-00082, CBM2015-00096 and CBM2015-00097.
`
`2.
`
`My compensation, qualifications, and professional experience are set
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`forth in the declaration I submitted along with the petitions in these proceedings
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`(my “Original Declaration”), along with an overview of the background of the
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`background of the ’850 and ’325 patents, my understanding of the applicable legal
`
`principles and a description of the state of the art at the filing date of the patents.
`
`My Original Declaration also sets forth my analysis and opinions regarding the
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`invalidity of claims 12-15 of the ’850 patent and claims 11, 13 and 15 of the ’325
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`patent (“Challenged Claims”), including my opinions and the bases for my
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`opinions that the Challenged Claims are obvious in view of U.S. Patent No.
`
`5,984,040 to DeLorme, et. al. (“DeLorme”), as well as the materials I reviewed in
`
`forming these opinions.
`
`3.
`
`I have additionally reviewed Patent Owner’s Responses in CBM2015-
`
`00080 (“’850 POR”) and in CBM2015-00082 (“’325 POR”), the declaration and
`
`deposition transcript of Patent Owner’s expert, Dr. Alfred Weaver, and the Board’s
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`Apple, Inc., Exhibit 1070, Page 3
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`
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`U.S. Patent Nos. 6,384,850; 6,871,325
`Supplemental Declaration of Don Turnbull, Ph.D.
`
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`institution decisions. I have been asked by counsel for Petitioner to respond to
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`certain arguments raised by Patent Owner and Dr. Weaver.
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`4.
`
`Based upon my review of the Patent Owner’s responses, Dr. Weaver’s
`
`opinions, and the Board’s institution decisions, it remains my opinion that the
`
`Challenged Claims are invalid as obvious in view of U.S. Patent No. 5,948,040 to
`
`DeLorme et al. (“DeLorme”).
`
`I.
`
`Analysis of Patent Owner’s Responses Regarding Patentability of the
`’850 and ’325 Patents
`A. DeLorme discloses “wherein the applications and data are
`synchronized between the central database, at least one wireless
`handheld computing device, at least one web server and at least
`one web page”
`
`5.
`
`Patent Owner appears to contend that DeLorme fails to disclose this
`
`limitation because applications cannot be synchronized by synchronizing the data
`
`used by those applications. For example, Patent Owner’s Responses state “one of
`
`the fundamental aspects of the claims, i.e., that both the ‘application’ and the
`
`‘data’ are synchronized, not merely the ‘data.’” ’850 POR at 14 n.9; ’325 POR at
`
`17 n.13. I disagree for the following reasons.
`
`6.
`
`In my opinion, a person of ordinary skill in the art (“POSITA”) would
`
`understand that one way in which hospitality applications can be synchronized is
`
`by synchronizing the data used by those applications. This understanding is
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`Apple, Exhibit 1070, Page 4
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`U.S. Patent Nos. 6,384,850; 6,871,325
`Supplemental Declaration of Don Turnbull, Ph.D.
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`consistent with the use of the phrase in both the Challenged Claims and in the
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`patent specification.
`
`7.
`
`First, the language of the Challenged Claims indicates that one way to
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`synchronize applications is by synchronizing the data used by those applications.
`
`For example, claim 16 of the ’850 patent depends from claim 12 and recites:
`
`16. The information management and synchronous communications
`system of claim 12 wherein the applications and data are
`synchronized by digital data transmission between the central
`database, at least one wireless handheld computing device, at least one
`Web Server and at least one Web page.
`
`8.
`
`The additional limitation of claim 16 modifies the claim 12 limitation
`
`“wherein the applications and data are synchronized…,” and recites a particular
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`means for performing the synchronization of applications and data. Specifically,
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`claim 16 recites that the applications and data are synchronized by digital data
`
`transmission between the four recited components. Thus, a POSITA would
`
`understand that one way to synchronize applications (as well as data) would be
`
`through the transmission of data.
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`9.
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`Second, the description of synchronization in the patent specification
`
`confirms that hospitality applications in the central database, wireless handheld
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`Apple, Exhibit 1070, Page 5
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`U.S. Patent Nos. 6,384,850; 6,871,325
`Supplemental Declaration of Don Turnbull, Ph.D.
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`device, web server and web page may be synchronized by synchronizing the data
`
`used by those applications. For example, the patent specifications teach:
`
`The synchronous communications control module . . . provides a
`single point of entry for all hospitality applications to communicate
`with one another wirelessly or over the Web . . . 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
`the 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. 1001 at 11:24-42; Ex. 1003 at 11:37-55.
`
`10. As evident from this passage, applications on each of the four claimed
`
`components (database, wireless device, web server and web page) are kept “in
`
`synch” (i.e. synchronized) by communicating data between the claimed
`
`components. As one example, a reservation (which a POSITA would understand
`
`to be data as opposed to, e.g., software application code) made online (i.e. via a
`
`webpage) is automatically communicated to the server (which includes the central
`
`database), which then synchronizes this data with wireless handheld devices.
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`Likewise, changes made on a wireless device (which a POSITA would understand
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`Apple, Exhibit 1070, Page 6
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`U.S. Patent Nos. 6,384,850; 6,871,325
`Supplemental Declaration of Don Turnbull, Ph.D.
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`to be changes to data as opposed to, e.g., software application code) are
`
`communicated to the backoffice server and to other devices in the system. Nothing
`
`in this passage discusses the transmission of anything other than data to keep the
`
`applications in the central database in synch with those on wireless devices, web
`
`pages or the web server.
`
`11.
`
`Patent Owner’s Responses do not clearly articulate what Patent
`
`Owner contends is required to synchronize an application, instead stating:
`
`Data is communicated from both sides (client and server), but
`software/ applications are not synchronized between the server and
`WCU client. Thus, for example, the updating of a restaurant menu to
`achieve “consistency” between the wireless handheld device of claim
`element “b” and the central database so that the updated menu is
`synchronized with the central database and then “stored” as part of
`the hospitality application on the handheld to facilitate future
`ordering, was not taught by DeLorme, nor possible with the DeLorme
`WCU. There is no mention in DeLorme of synchronizing application
`software between server side and client side. ’850 POR at 18; ’325
`POR at 21-22.
`
`12. However, a POSITA would understand that an updated menu is
`
`simply data, as opposed to, e.g., application code. Furthermore, there is no
`
`disclosure in the Ameranth patent specifications of storing updated menu data as
`
`part of a hospitality application. Indeed, the patent specifications do not disclose
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`Apple, Exhibit 1070, Page 7
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`U.S. Patent Nos. 6,384,850; 6,871,325
`Supplemental Declaration of Don Turnbull, Ph.D.
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`any way of synchronizing applications other than by transmitting updated data
`
`amongst the claimed components.
`
`13.
`
`Even if Patent Owner was correct that the specifications described
`
`transmitting an updated menu and then storing it as part of a hospitality application
`
`(which I disagree with for the reasons stated above), Patent Owner appears to
`
`recognize that this would be simply one example of how applications could be
`
`synchronized. Nothing in the patent specifications precludes other ways of
`
`synchronizing applications, such as by synchronizing the data used by those
`
`applications.
`
`14.
`
`I note that Patent Owner’s expert Dr. Weaver admitted at his
`
`deposition that applications can be synchronized by sending updated data to a
`
`wireless device. Ex. 1076 at 149:12-16. And, that DeLorme discloses sending
`
`updated data to wireless devices and client devices accessing the TRIPS system via
`
`web pages. Id. at 150:10-21. This testimony is consistent with my opinion that
`
`DeLorme discloses the limitation “wherein the applications and data are
`
`synchronized between the central database, at least one wireless handheld
`
`computing device, at least one web server and at least one web page.”
`
`15. Dr. Weaver further testified that in his opinion synchronizing
`
`applications required checking whether the software on each of the claimed
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`Apple, Exhibit 1070, Page 8
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`U.S. Patent Nos. 6,384,850; 6,871,325
`Supplemental Declaration of Don Turnbull, Ph.D.
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`devices was the same version, and if not, transmitting updated software code. Id.
`
`at 153:3-19. I disagree.
`
`16. None of the Challenged Claims include a requirement for checking
`
`software versions. Nor is there any support for such a requirement in the
`
`Ameranth patents. The patent specifications do not describe any embodiments in
`
`which the version of any hospitality applications are checked, much less any
`
`description of synchronizing applications by checking software versions. Nor is
`
`there any support for a version-checking requirement in the prosecution history.
`
`Dr. Weaver admitted as much at his deposition. Id. at 154:9-155:4.
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`17.
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`Likewise, none of the Challenged Claims recite any requirement for
`
`the transmission of software code. Nor is there any description in the specification
`
`or prosecution history of transmitting updated software code, much less any
`
`description of synchronizing applications by transmitting updated software code to
`
`a wireless device, web server, database or web page. Again, Dr. Weaver agreed
`
`with me on this point at his deposition. Id.
`
`B. DeLorme’s WCU Is a Handheld Device
`18.
`Patent Owner’s Responses argue that DeLorme’s WCU is not a
`
`“wireless handheld device,” because DeLorme’s WCU needs to be held with both
`
`hands. ’850 POR at 27-28 and n.9; ’325 POR at 30-31 and n.17. I disagree for the
`
`following reasons.
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`Apple, Exhibit 1070, Page 9
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`U.S. Patent Nos. 6,384,850; 6,871,325
`Supplemental Declaration of Don Turnbull, Ph.D.
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`19.
`
`First, in my opinion, the broadest reasonable interpretation of
`
`“wireless handheld device” should not be limited to devices that are held in a
`
`single hand. A POSITA would understand that the plain meaning of “handheld” is
`
`not limited to devices held in a single hand. For example, the American Heritage
`
`Dictionary defines “handheld” to mean “compact enough to be used or operated
`
`while being held in the hand or hands”. Ex. 1069.
`
`20.
`
`The Ameranth patents describe “PDAs” and “PDA type devices,”
`
`such as those manufactured by Palm as examples of wireless handheld computing
`
`devices. See, e.g. Ex. 1001 at 1:32-65, 13:50. In the late 1990s, PDAs typically
`
`were operated using two hands. Thus, a POSITA would conclude that “wireless
`
`handheld devices” encompass PDA devices operated using two hands.
`
`21.
`
`Second, DeLorme’s WCU is a handheld device even under Patent
`
`Owner’s construction. DeLorme expressly discloses that its WCUs “are typically
`
`handheld.” Ex. 1024 at 71:67-72:2. DeLorme further discloses that the WCU
`
`functions can be performed, among other things, by a PDA or a “smart” phone. Id.
`
`at 75:38-45. Both PDAs and smartphones are devices that can be held and
`
`operated with a single hand. Finally, DeLorme’s Fig. 9 depicts a user holding
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`WCU 907 with only one hand and using his other hand only to operate the device.
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`Apple, Exhibit 1070, Page 10
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`U.S. Patent Nos. 6,384,850; 6,871,325
`Supplemental Declaration of Don Turnbull, Ph.D.
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`C. DeLorme’s WCU Has Hospitality Applications and Data Stored
`Thereon
`
`22.
`
`Patent Owner’s Responses argue that “DeLorme clearly provides no
`
`disclosure of a locally-stored software application and associated data for the
`
`claimed wireless device.” ’850 POR at 29; ’325 POR at 32. I disagree for the
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`following reasons.
`
`23.
`
`First, I note that elsewhere in Patent Owner’s Responses, Patent
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`Owner admits that DeLorme’s WCUs include software stored on the WCU for
`
`communicating with the TRIPS server:
`
`DeLorme discloses that the WCU is “programmed” to transmit data to
`the server side and to receive data back from the server side. (Exh.
`1024 75:59 et seq.). “Programmed” means that software is stored on
`the WCU. ’325 POR at 18; ’325 POR at 21.
`
`24.
`
`I agree that the WCU includes software stored on the device for
`
`transmitting data to, and receiving data from, the TRIPS server. For example,
`
`DeLorme expressly teaches that “TRIPS WCUs 907 facilitate two way
`
`communications at 903 of standard TRIPS data packets 939 with at least one
`
`TRIPS travel information and service provider 904.” Ex. 1024 at 72:12-15.
`
`I understand that Dr. Weaver agrees as well. Ex. 1076 at 162:4-12. I also note that
`
`one of ordinary skill in the art would understand that a WCU, particularly those
`
`embodiments that employ PDAs and smart phones (Ex. 1024 at 75:38-41) would
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`Apple, Exhibit 1070, Page 11
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`U.S. Patent Nos. 6,384,850; 6,871,325
`Supplemental Declaration of Don Turnbull, Ph.D.
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`include an operating system and additional application software to perform the
`
`WCU functions disclosed in DeLorme and discussed below.
`
`25.
`
`In order for DeLorme’s WCUs to transmit data to and receive data
`
`from the TRIPS server, the WCU must necessarily store the data at least
`
`temporarily. If data is sent from the WCU, it must necessarily be stored on the
`
`WCU prior to transmission. And, if data is received by the WCU, it must be stored
`
`at least temporarily on the device. Thus, the WCU inherently stores TRIPS data.
`
`26.
`
`Furthermore, the software on the WCU is an application. DeLorme
`
`discloses that software on the WCU performs a number of tasks in addition to
`
`transmitting data to and receiving data from the TRIPS server. For example,
`
`DeLorme discloses that software on the WCU can perform voice recognition (Ex.
`
`1024 at 76:46-59), convert output to audio form (id.) and process data from a GPS
`
`receiver (id. at 75:46-59), among other things.
`
`27. More specifically, the WCU application is a hospitality application,
`
`because the data exchanged with the TRIPS server and presented to the user is
`
`hospitality data, and because this hospitality data is exchanged using a format
`
`specific to DeLorme’s TRIPS hospitality system (Ex. 1024 at 73:30-41). The
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`exchanged data relates to travel, e.g., selections of “hotel, restaurant or menu,”
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`travel position information, “transportation or performance tickets and diverse
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`WEST\268707834.2
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`Apple, Exhibit 1070, Page 12
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`U.S. Patent Nos. 6,384,850; 6,871,325
`Supplemental Declaration of Don Turnbull, Ph.D.
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`accommodation reservations,” etc. Ex. 1024 at 76:29-67; 74:2-29; 1:32-47. This
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`data is thus hospitality data and the WCU application is thus a hospitality
`
`application, i.e. “applications used to perform services or tasks in the hospitality
`
`industry.” Ex. 1019 at 16-17.
`
`28.
`
`I understand that Dr. Weaver contends that the WCU application is
`
`not a hospitality application, because TRIPS data relates to the “travel and
`
`tourism” industry as opposed to the “hospitality industry.” Ex. 1076 at 178:5-
`
`179:4. However, in my opinion, Dr. Weaver applies an overly narrow construction
`
`of “hospitality application” in his analysis for the following reasons.
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`29.
`
`First, I note that in the related CBM proceedings, CBM2015-00091
`
`and CBM2015-00099, the Board construed “hospitality applications” as
`
`“applications used to perform services or tasks in the hospitality industry,” and
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`further concluded that its “construction of hospitality includes businesses, such as
`
`car rental agencies, that provide services to travelers.” Ex. 1078 (CBM2015-00091
`
`Institution Decision) at 12; Ex. 1079 (CBM2015-00099 Institution Decision) at 12.
`
`Under this construction, DeLorme’s TRIPS system clearly is directed to the
`
`hospitality industry, as it provides car rental and other services to travelers. Ex.
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`1024 at 14:27-32; 21:38-48.
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`Apple, Exhibit 1070, Page 13
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`U.S. Patent Nos. 6,384,850; 6,871,325
`Supplemental Declaration of Don Turnbull, Ph.D.
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`30.
`
`Second, while the Ameranth patent specifications provide examples of
`
`“hospitality applications,” the specifications do not provide an express definition of
`
`the term. Nor is there any express definition of “hospitality” in the prosecution
`
`history. I note that Dr. Weaver agrees with me on these points. Ex. 1076 at
`
`179:20-180:22. Thus, in my opinion, the broadest reasonable interpretation of
`
`“hospitality” should encompass the common meaning of the term.
`
`31. Numerous industry publications include “travel and tourism” within
`
`the “hospitality” industry. See, e.g. Ex. 1071 at 2 (“The hospitality industry also
`
`includes tourism support commercial activities like cabin staff and travel agents.
`
`Travel technology like applied information technology (IT) and its workers in
`
`hospitality, travel and tourism are included in the hospitality industry.”); Ex. 1072
`
`at 1 (“hotels are only one section of the [hospitality] industry. Many forms of
`
`transportation that cater to tourists are also part of this business world. For
`
`example, this niche includes airlines, cruise ships and even fancier trains.
`
`Restaurants, general tourism and even planning also belong to this niche.”); Ex.
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`1073 (“At Microsoft, we consider Hospitality to be Lodging, Gaming,
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`Foodservice, Entertainment and Travel”).
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`Apple, Exhibit 1070, Page 14
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`U.S. Patent Nos. 6,384,850; 6,871,325
`Supplemental Declaration of Don Turnbull, Ph.D.
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`32.
`
`Because the WCU applications disclosed in DeLorme enable users to
`
`access travel related information, the WCU applications are “hospitality
`
`applications” under the broadest reasonable interpretation of the term.
`
`33.
`
`I note that DeLorme expressly discloses reservations, including both
`
`hotel and restaurant reservations. Ex. 1024 at 74:20-24; 8:44-48. Thus, the WCU
`
`applications are “hospitality applications” even under PO’s construction.
`
`34.
`
`Patent Owner also argues that the use of Java applets on DeLorme’s
`
`WCU would be “directly contrary” to claim 12’s requirements for an application to
`
`be stored on the wireless device and for that application to be synchronized. ’850
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`POR at 37-38; ’325 POR at 36. I disagree.
`
`35. Once a Java applet is downloaded to the WCU, “smart cell phone” or
`
`other wireless device, it is stored on the device. The claims do not include a
`
`requirement that the application be stored on non-volatile or permanent storage.
`
`36.
`
`I note that downloading a Java applet to the wireless device
`
`constitutes synchronizing of the application on the wireless device even under
`
`PO’s construction of synchronized applications. In any event, the ability of a Java
`
`applet on the WCU to synchronize data with the rest of the TRIPS system is
`
`sufficient to satisfy the synchronized applications limitation, for the reasons
`
`discussed above. Patent Owner also argues that DeLorme fails to teach use of Java
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`Apple, Exhibit 1070, Page 15
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`U.S. Patent Nos. 6,384,850; 6,871,325
`Supplemental Declaration of Don Turnbull, Ph.D.
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`applets on a mobile device because a web browser would be required. ‘850 POR
`
`at 32. For example, despite the disclosure of a PDA and smartphone by DeLorme,
`
`PO argues that DeLorme fails to disclose a browser-equipped wireless handheld
`
`device. I disagree. A POSITA would appreciate that in the late 1990s a browser
`
`feature indeed existed for wireless handheld devices.
`
`D. Transmission of an Application to the Wireless Handheld Device
`Is Not Required by the Claims
`
`37.
`
`Patent Owner’s Responses argue that DeLorme fails to disclose
`
`element b) of claim 12 of the ’850 patent and claims 11 and 13 of the ’325 patent,
`
`because DeLorme does not disclose transmitting any applet or software code to the
`
`WCU. ’850 POR at 34; ’325 POR at 37. I disagree for the following reasons.
`
`38.
`
`First, the Challenged Claims do not include a requirement that
`
`software be transmitted to the wireless handheld computing device. Element b)
`
`recites: “at least one wireless handheld computing device on which hospitality
`
`applications and data are stored.” Ex. 1001 at claim 12; Ex. 1003 at claims 11, 13.
`
`39.
`
`The plain and ordinary meaning of “store” is “to retain information in
`
`a device from which the information can later be withdrawn.” See Ex. 1074 at
`
`739. In my opinion, the broadest reasonable of element b) should encompass the
`
`plain meaning of the word. DeLorme discloses an application stored on the WCU,
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`Apple, Exhibit 1070, Page 16
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`U.S. Patent Nos. 6,384,850; 6,871,325
`Supplemental Declaration of Don Turnbull, Ph.D.
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`as discussed above. Thus, DeLorme discloses element b) under the broadest
`
`reasonable interpretation.
`
`40.
`
`Even under Patent Owner’s interpretation of this limitation, DeLorme
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`still discloses element b). DeLorme discloses an application on the WCU, which
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`must necessarily have been stored on the device. A POSITA would appreciate that
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`the application could not be resident on the device if it was not stored on the device
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`at some point. Because an application must inherently have been stored on the
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`device in order to operate, DeLorme’s disclosure of an application on the WCU
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`inherently discloses at least one storage operation performed on the WCU. And,
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`DeLorme therefore discloses this limitation even under Patent Owner’s
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`construction.
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`E. DeLorme Discloses Use of the WCU with Desktop Internet
`Embodiments
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`41.
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`Patent Owner’s Responses argue that DeLorme precludes the
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`combination of its desktop online via a World Wide Web site embodiment with the
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`WCU embodiment. ’850 POR at 39-40; ’325 POR at 42-43. I disagree.
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`42. DeLorme discloses an “entirely online” embodiment of the TRIPS
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`system, which is described as an alternative to a version of the TRIPS system that
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`comes partially on a CD-ROM. Ex. 1024 at 14:1-52. Both of these embodiments
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`are described as running on a desktop PC. Id. And, both embodiments involve
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`Web-based communications, including map data updates, special discount offers,
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`and other travel information. Id. at 14:19-42.
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`43.
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`I note that in the CD-ROM based embodiments, the CD-ROM serves
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`two purposes: it facilitates an internet connection via a modem, and provides an
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`atlas. Id. at 14:19-23. One of ordinary skill in the art would understand that this
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`was a means for compensating for what were relatively slow internet connections
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`at the time of DeLorme.
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`44. DeLorme further makes clear that the WCU (discussed in connection
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`with Fig. 9) can be used in systems that include such PC-based embodiments
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`which communicate with the TRIPS server using web based protocols. For
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`example, DeLorme discloses:
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`“Fig. 9 illustrates an important alternative or additional embodiment
`of TRIPS – that permits mobile users 901, at remote locations . . .
`two-way access by wireless communications 903 to engage the novel
`travel reservation information planning system of one or more TRIPS
`904 communications facilities or service bureaus.” Ex. 1024 at 71:61-
`66.
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`45.
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`The description of Fig. 9 with its WCU 907 as an alternative or
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`additional embodiment is an indication that the WCU can be used as an addition to
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`the “entirely online” or partially CD-ROM based desktop systems I discussed
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`above. DeLorme further confirms that the WCU embodiments can operate with
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`Supplemental Declaration of Don Turnbull, Ph.D.
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`web-based embodiments, by stating that the WCU embodiments “can function
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`either with or without (elation [sic, relation] to desktop TRIPS user setups as
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`described heretofore with reference to Fig. 1A” Id. at 72:20-23. Thus, DeLorme
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`discloses that WCUs can be used in the same system as desktop PCs, and both PC
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`embodiments (the “web only” and CD-ROM embodiments) involve web-based
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`communications.
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`46. DeLorme’s discussion of Fig. 4 further confirms that the WCU can be
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`used with the web-based desktop PC embodiments. DeLorme states that the flow
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`chart of Fig. 4 includes features that are preferable for the internet-only desktop
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`embodiment. Ex. 1024 at 36:31-36. DeLorme further discloses:
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`Moreover, the Main Menu 413 and Interaction Bus 414 in FIG. 4
`correspond to, and coordinate the response to, alternative input means
`embedded in specialized TRIPS field or in-vehicle embodiments that
`typically include the wireless communication of GPS position sensor
`data along with simplified, "push-button" travel information inquiries
`sent by users actually en route or at remote locations. Such automated,
`standardized operational TRIPS sequences are further described
`hereinafter--particularly referring to FIG. 9. Id. at 37:58-67.
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`47.
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`The “specialized TRIPs field or in-vehicle embodiments” referenced
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`in this passage are clearly the WCUs of Fig. 9. Id. at 71:67-72:2 (describing WCU
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`mounted in a vehicle), 73:13 (WCU used in the field), 73:26-30 (WCU configured
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`U.S. Patent Nos. 6,384,850; 6,871,325
`Supplemental Declaration of Don Turnbull, Ph.D.
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`for push button inquires). Thus, the discussion of the WCU and the internet-only
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`desktop embodiment in connection with Fig. 4 further indicates that both can be
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`used in the same system.
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`48.
`
`I note that Dr. Weaver appears to agree with me that DeLorme
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`discloses the use of both Web-based and WCU embodiments in the same system.
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`Dr. Weaver testified that the “same” TRIPS server could be accessed by users
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`using web browsers or WCUs. Ex. 1076 at 169:3-15.
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`F. DeLorme Discloses an “application program interface” that
`“enables integration of outside applications”
`
`49.
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`Patent Owner argues that DeLorme does not disclose the claimed
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`“application program interface,” because DeLorme does not disclose outside
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`applications that are integrated with the TRIPS system “from within the
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`applications themselves.” ’850 POR at 40; ’325 POR at 43-44. Patent Owner’s
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`argument is not entirely clear. Nonetheless, I disagree with Patent Owner’s
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`argument that DeLorme fails to disclose an “application program interface” that
`
`enables integration with outside applications.
`
`50. DeLorme discloses that the TRIPS server communicates with third
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`party applications “optimally in real time” via Provider Input/Output 231:
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`“Preferably, TRIPS 203 further offers/brokers Provider Input/Output
`231 to and from third-party providers of travel information and
`services – optimally in real time online. Such third party participation
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`Supplemental Declaration of Don Turnbull, Ph.D.
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`online enables enrolled TRIPS users to enjoy more immediate
`offerings, such as updated information on accommodations
`availability i.e. vacancies, special offers for price discounts or extra
`services, reservations and/or tickets for diverse accommodations or
`events and so forth – as described in more detail hereinafter,
`particularly referring to FIG. 8.” Ex. 1024 at 31:42-51.
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`51.
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`These third party applications provide various additional functionality
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`to TRIPS users through the TRIPS system, such as the ability to make reservations,
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`purchase tickets, etc. Id.
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`52. A POSITA would understand that the functionality of the TRIPS
`
`server is implemented in software. A POSITA would further understand that the
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`third party applications disclosed by DeLorme also are implemented in software.
`
`A POSITA would further understand that in order to provide “real time online”
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`access to the third party applications via the TRIPS system, the TRIPS server must
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`communicate programmatically with the third party applications. And, the
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`mechanism by which the third party applications communicate with the TRIPS
`
`server is Provider Input/Output 231. A POSITA would further understand that in
`
`order for the TRIPS server software to communicate with the third party
`
`application software, there must necessarily be a programmatic interface by wh