`571.272.7822
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`Paper No. 47
`Filed: August 26, 2016
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`
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`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 B1
`____________
`
`Before MEREDITH C. PETRAVICK, RICHARD E. RICE, and
`STACEY G. WHITE, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`Covered Business Method Patent Review
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`1 CBM2015-00097 has been consolidated with this proceeding.
`
`
`
`CBM2015-00082
`Patent 6,871,325 B1
`
`
`I. INTRODUCTION
`A number of entities including Apple, Inc. (“collectively, Petitioner”)
`filed a Petition (Paper 1, “Pet.”) requesting review under the transitional
`program for covered business method patents of claims 11–15 (“the
`challenged claims”) of U.S. Patent No. 6,871,325 B1 (Ex. 1003, “the ’325
`patent”). On September 1, 2015, pursuant to 35 U.S.C. § 324, we instituted
`this trial as to claims 11, 13, and 151 on one ground of unpatentability —
`claims 11, 13, and 15 being unpatentable under 35 U.S.C. § 103 over
`DeLorme2. Paper 13, 30 (“Dec. to Inst.”). We did not institute as to any of
`the other grounds proposed in the Petition. Id.
`Ameranth, Inc. (“Patent Owner”) filed a Corrected Patent Owner’s
`Response (Paper 22, “PO Resp.”) and Petitioner filed a Reply (Paper 26,
`“Pet. Reply”). Patent Owner filed a Sur-Reply. Paper 32, (“PO Sur-
`Reply”).
`
`An oral hearing in this proceeding was held on May 10, 2016. A
`transcript of the hearing is included in the record. Paper 43 (“Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
`Decision is issued pursuant to 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73.
`
`For the reasons that follow, we determine that Petitioner has shown by
`a preponderance of the evidence that claims 11, 13, and 15 of the ’325 patent
`are unpatentable.
`
`
`
`
`
`
`1 The Institution Decision mistakenly included claim 12 in the instituted
`ground. See Paper 25, 3. Claim 12 was not challenged in the ground based
`upon DeLorme.
`2 U.S. Patent No. 5,948,040 (issued Sept. 7, 1999) (Ex. 1024).
`2
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`CBM2015-00082
`Patent 6,871,325 B1
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`
`A. The ’325 Patent
`The ’325 patent is titled “Information Management and Synchronous
`Communications System with Menu Generation” and issued on March 22,
`2005, based on Application No. 10/015,729, filed, on November 1, 2001.
`Ex. 1003, (54), (45), (21), (22). Application No. 10/015,729 claims priority
`to Application No. 09/400,413, which matured into U.S. Patent No.
`6,384,850. There are two aspects to the system: menu generation and
`synchronous communication. See, e.g., id. at col. 3, ll. 20–28. The first
`aspect includes a “desktop software application that enables the rapid
`creation and building of a menu.” Id. at col. 3, ll. 20–22. Claims 1–10,
`which are not challenged in this proceeding, are directed to this first aspect.
`
`Claims 11–15, some of which are challenged in this proceeding, are
`directed to the second aspect of the system, synchronous communication.
`See id. at col. 2, ll. 61–67, col. 3, ll. 1–5, col. 11, ll. 3–8. The ’325 patent
`discloses a synchronous communication system, which includes a computer
`workstation, a central database, multiple wireless handheld devices, a web
`server, and a web page. Id. at col. 3, l. 64–col. 4, l. 1, col. 6, l. 24. A
`communications control module provides a single point of entry for all
`hospitality applications, on the central database, wireless handheld devices,
`web server and web pages, to communicate with one another. Id. at col. 9,
`ll. 35–41, col. 11, ll. 37–43.
`This communications module is a layer that sits on top of
`any communication protocol and acts as an interface between
`hospitality applications and the communication protocol. . . . The
`single point of entry works to keep all wireless handheld devices
`and linked [w]eb 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.
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`3
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`CBM2015-00082
`Patent 6,871,325 B1
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`Id. at col. 11, ll. 40–49.
`For example, a reservation made online would be
`automatically communicated to the backoffice server and then
`synchronized with all the wireless handheld devices wirelessly.
`Similarly, changes made on any of the wireless handheld devices
`would be reflected instantaneously on the backoffice server,
`[w]eb pages and the other handheld devices.
`Id. at col. 2, ll. 31–37.
`Third parties, such as point-of-sale companies, affinity program
`companies, and internet content providers, can integrate fully with the
`system through an application program interface. Id. at col. 2, ll. 16–20; col.
`11, ll. 28–32.
`
`
`B. Illustrative Claim
`Claims 11 and 13 are independent. Claim 15 depends from claims 11,
`12, and 13. Claim 11 of the ’325 patent is illustrative of the claims at issue.
`Claim 11 reads as follows:
`11.
`synchronous
`and
` An
`information management
`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,
`c. at least one [w]eb server on which hospitality
`applications and data are stored,
`d. at least one [w]eb page on which hospitality application
`and data are stored,
`e. an application program interface, and
`f. a communications control module,
`
`4
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`CBM2015-00082
`Patent 6,871,325 B1
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`wherein application and data are synchronized between the
`central [database], at least one wireless handheld computing
`device, at least one [w]eb server and at least one [w]eb 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
`communications protocol, wherein the synchronized data relates
`to orders.
`Independent claim 13 is substantially the same as claim 11, except
`that the last limitation “wherein the synchronized data relates to
`reservations.”
`
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`6,871,325 B1
`
`CBM2014-00016
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`C. Related Proceedings
`Both Petitioner and Patent Owner identify numerous related ongoing
`district court proceedings. Pet. 2–4; Paper 7, 5–6. The ’325 patent is related
`to U.S. Patent No. 6,384,850 B1 (“the ’850 patent”), U.S. Patent No.
`6,982,733 B1, and U.S. Patent No. 8,146,077 B2. These patents were or are
`the subject of the following covered business method patent reviews:
`U.S. Patent No.
`Previous CBM Reviews
`Pending CBM Reviews
`6,384,850 B1
`CBM2014-00015
`CBM2015-00080
`CBM2015-00091
`CBM2015-00096
`CBM2015-00097
`CBM2015-00099
`
`
`
`6,982,733 B1
`8,146,077 B2
`
`CBM2014-00013
`CBM2014-00014
`CBM2015-00081
`CBM2015-00095
`In case CBM2014-00016, a Final Written Decision, determining
`claims 1–10 to be unpatentable, was issued on March 20, 2015 and is on
`appeal to the U.S. Court of Appeals for the Federal Circuit.
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`Patent 6,871,325 B1
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`D. Patent Owner’s Incorporated by Reference of Standing Arguments
`Patent Owner attempts to incorporate certain arguments made in its
`Preliminary Response (Paper 9) into the Patent Owner’s Response. PO
`Resp. 1 n.4 (“Patent Owner incorporates herein its Preliminary Response
`arguments regarding standing and preserves its right to appeal the Board’s
`determination thereof”). Our Rules prohibit incorporating arguments by
`reference. 37 C.F.R. § 42.6(a)(3) states: “[a]rguments must not be
`incorporated by reference from one document into another document.”
`Incorporation by reference circumvents our Rule limiting the pages in the
`Patent Owner response to 80 pages. See 37 C.F.R. § 42.24(b)(2).3
`Further, the Patent Owner’s Response does not provide citations or
`otherwise clearly indicate what argument in the Preliminary Response Patent
`Owner is attempting to incorporate by reference. See PO Resp. 1 n.4. The
`Preliminary Response includes no arguments under a heading concerning
`“standing” or labeled otherwise. The only mention of standing is in footnote
`1 of the Preliminary Response, which states: “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.” As explained in our Institution Decision, we determined that the
`Petition sufficiently established that the ’325 patent was eligible for covered
`business method patent review and that Patent Owner’s arguments in
`
`
`3 Rule 42.24(b)(2) was amended, effective May 2, 2016. The Corrected
`Patent Owner’s Response, however, was filed February 1, 2016, prior to that
`date and, thus, we refer to the prior version of 37 C.F.R. § 42.24(b)(2).
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`footnote 1 of the Preliminary Response were unpersuasive. See Paper 13,
`11–16.
`
`Inasmuch as Patent Owner may be attempting to incorporate material
`from other portions of the Preliminary Response, such as the Introduction
`section, Patent Owner should not expect the Board to search the record and
`piece together the arguments and evidence necessary to support a standing
`argument not made in the Patent Owner’s Response. Cf. DeSilva v.
`DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (“A brief must make all
`arguments accessible to the judges, rather than ask them to play archeologist
`with the record”); Ernst Haas Studio, Inc. v. Palm Press, Inc., 164 F.3d 110,
`111–12 (2d Cir. 1999) (“Appellant's Brief is at best an invitation to the court
`to scour the record, research any legal theory that comes to mind, and serve
`generally as an advocate for appellant. We decline the invitation”).
`
`Arguments that are not developed and presented in the Patent Owner
`Response, itself, are not entitled to consideration. See Paper 14, 3.
`(cautioning Patent Owner “that any arguments for patentability not raised in
`the response will be deemed waived”).
`
`
`
`II. ANALYSIS
`A. Claim Construction
`The Board interprets claims of unexpired patents using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. 37 C.F.R. § 42.300(b); Cuozzo Speed Techs., LLC v. Lee, 136
`S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest reasonable
`interpretation approach).
`
`7
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`Under the broadest reasonable construction standard, claim terms are
`given their ordinary and customary meaning, as would be understood by one
`of ordinary skill in the art in the context of the entire disclosure. In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special
`definition for a claim term must be set forth with reasonable clarity,
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994). In the absence of such a definition, limitations are not to be read
`from the specification into the claims. In re Van Geuns, 988 F.2d 1181,
`1184 (Fed. Cir. 1993).
`
`
`i. “wireless handheld computing device”
`
`The challenged claims require “at least one wireless handheld
`computing device.” Ex. 1003, claims 11, 13. Patent Owner proposes that
`the term be construed as “a wireless computing device that is sized to be
`held in one’s hand.” PO Resp. 4 (citing Ex. 1032, 24 (district court order
`construing the term); Ex. 2019 ¶ 27 (Declaration of Dr. Alfred Weaver)).
`Patent Owner also argues “sized to be held in one’s hand” requires that the
`wireless handheld computing device is sized to be held in a single hand and
`precludes “wireless computing devices that are held in two hands. See PO
`Resp. 30–31 (“the [wireless communication unit] in DeLorme is a ‘two
`hand’ portable device and is not sized as a wireless handheld device as
`properly construed”), id. at 31 n.17 (arguing that a device that needed a GPS
`at the time could not be held in a single hand).
`
`Petitioner does not provide an explicit construction of the term
`“wireless handheld computing device,” but argues that the term does not
`
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`require the device to be held in a single hand or preclude the device from
`being held in both hands. Pet. Reply 6.
`
`To resolve the issues of patentability of the claims over DeLorme, it is
`not necessary for us to determine whether the broadest reasonable
`construction of “wireless handheld computing device” requires that the
`device be held in a single hand or allows for the device to be held in two
`hands. See Vivid Techs., Inc. v. Am. Sci.& Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999) (stating that “only those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy”).
`Regardless, DeLorme explicitly discloses that its wireless communication
`unit (“WCU”) 907 is handheld. Ex. 1024, col. 72, l. 1 (“WCU 907, typically
`hand-held 906”), col. 72, l. 31 (“handheld devices equipped with GPS 908”);
`see also id. at col. 7, l. 34, col. 16, ll. 40–49 (further describing a wireless
`“handheld” device). Further, DeLorme discloses that WCU 907 could be a
`personal digital assistant (“PDA”) and describes PDAs as “handheld”
`wireless devices. Id. at col. 71, l. 61–col. 72, l. 2, col. 75, ll. 33–45; see Ex.
`1076, 53:12–25 (testimony of Dr. Weaver indicating that a PDA or
`smartphone is a wireless hand-held computing device). The ’325 patent
`describes PDAs as an example of a wireless handheld device. Ex. 1003, col.
`13, l. 63. Given this, we determine that it is not necessary for us to
`determine whether the broadest reasonable construction of “wireless
`handheld computing device” requires that the device be held in a single hand
`or allows for the device to be held in two hands.
`
`
`9
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`ii. “hospitality applications”
`
`The challenged claims require “hospitality applications,” which are
`contained in the central database, and are stored on the wireless handheld
`computing device, web server, and webpage. Ex. 1003, claims 11, 13. In
`the Institution Decision, we construed this term to mean “applications used
`to perform services or tasks in the hospitality industry.” Dec. to Inst. 9.
`Patent Owner agrees with this construction. PO Resp. 7. Patent Owner also
`states “[t]o 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.” Id. at 7 (internal citation omitted).
`
`Petitioner does not contest this construction in its Reply.
`
`Petitioner proposes that “applications” be construed to mean
`“sequences of instructions that can be executed on a computer that are
`designed to help people perform a specific task.” Pet. 22. To support its
`proposed construction, Petitioner cites to the Microsoft Computer Dictionary
`(4th ed.), which defines “application” as “[a] program designed to assist in
`the performance of a specific task” and “program” as “[a] sequence of
`instructions that can be executed by a computer.” Ex. 1034, 4, 10.
`
`Patent Owner does not propose an explicit construction of
`“applications” but does state that “[i]t is clear from the specification,
`consistent with the ordinary meaning as would be understood by a POSA,
`that an application is a software program, not data.” PO Resp. 35 n.18. This
`is consistent with Petitioner’s proposed construction, which is based in-part
`on the definition of application, as a program.
`
`10
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`Given the above, we determine that the broadest reasonable
`
`interpretation, in light of the specification of the ’325 patent, of “hospitality
`applications” is a sequence of instructions that can be executed on a
`computer (i.e., a program) and that is designed to assist in the performance
`of a specific task in the hospitality industry.
`
`We are not persuaded by Patent Owner that the hospitality industry
`excludes travel, tourism, and transportation. However, to resolve the issues
`of patentability of the claims over DeLorme, it is not necessary for us to
`construe hospitality industry. See Vivid Techs, 200 F.3d at 803 (stating that
`“only those terms need be construed that are in controversy, and only to the
`extent necessary to resolve the controversy”). Regardless, DeLorme
`discloses that TRIPS can be used for buying event tickets and making
`restaurant or hotel reservations. E.g., see Ex. 1024, col. 21, ll. 8–17, col. 31,
`ll. 42–51, col. 77, ll. 60–67, Fig. 1B-3. The ’325 patent describes frequent
`customer ticketing and restaurant reservations as tasks in the hospitality
`application. Ex. 1003, col. 5, ll. 17–20, claim 5. Patent Owner’s also argues
`reservations, with regards to claim 13, include hotel reservations. See PO
`Resp. 14 (“within the hospitality industry e.g. restaurants/hotels and event
`ticketing”).
`
`Given this, we determine that it is not necessary for us to determine
`whether the broadest reasonable construction of “hospitality applications”
`excludes tasks performed in the travel, tourism, and transportation
`industries.
`
`11
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`iii. “synchronized”
`The challenged claims require that “application and data are
`
`synchronized between the central [database], at least one wireless handheld
`computing device, at least one [w]eb server and at least one [w]eb page.”
`Ex. 1003, claims 11, 13. In the Institution Decision, we construed
`synchronized to mean “made, or configured to make, consistent.” Dec. to
`Inst. 8–9. Patent Owner agrees with this construction. PO Resp. 6–7.
`Petitioner does not contest this construction in its Reply.
`
`Absent from this construction is any temporal limitation that requires
`the devices to be consistent at all times. The absence of a temporal
`limitation is consistent with the specification of the ’325 patent which
`describes the use of “batch processing that can be done periodically
`throughout the day to keep multiple sites in synch with the central database.”
`Ex. 1003, col. 2, ll. 22–23; see also Tr. 53:17–23.
`
`
`iv. “application program interface” that “enables integration of outside
`applications with the hospitality applications”
`
`The challenged claims require an “application program interface” that
`“enables integration of outside applications with the hospitality
`applications.” Petitioner proposes that application program interface
`(“API”) should be construed to be “a set of routines used by an application
`program to direct the performance of procedures by the computer’s
`operating system or to communicate with another application program.”
`Pet. 22 (citing Ex. 1034, 5 (Microsoft Computer Dictionary (4th ed.),
`definition of application program interface)).
`
`Patent Owner proposes that the API is not a generic interface but an
`API that enable integration of outside applications with the hospitality
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`applications. PO Resp. 8. Patent Owner proposes that “integration” should
`be construed to mean “combining of different activities, programs, or
`hardware components into a functional unit.” Id. at 7–8 (citing Dec. to Inst.
`11). Patent Owner also argues that integrating requires “integrating the
`different applications from within the applications themselves.” PO Resp.
`43–44.
`
`Given the above, we determine that the broadest reasonable
`interpretation, in light of the specification of the ’325 patent, of an API that
`enables integration of outside applications with the hospitality applications is
`a set of routines used by an application program that enables the combining
`of the outside applications with the hospitality applications into a functional
`unit by allowing them to communicate with each other. We are not
`persuaded that integrating requires integrating the different applications
`from within the applications themselves. Such a limitation is not consistent
`with the ’325 patent, which does not disclose integrating different
`applications from within the applications themselves.
`
`
`v. “communications control module” that “is an interface between the
`hospitality applications and any other communications protocol”
`The challenged claims require “a communications control module . . .
`
`wherein the communications control module is an interface between the
`hospitality applications and any other communications protocol.” Ex. 1003,
`claims 11, 13.
`
`Petitioner proposes that “communications control module” be
`construed as “a device used as an intermediary in transferring
`communications to and from the host computer to which it is connected.”
`
`13
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`Pet. 23 (citing Ex. 1034, 7 (Microsoft Computer Dictionary (4th ed.),
`definition of communications controller), Ex. 1002 ¶¶ 76–78).
`
`Patent Owner proposes that “communications control module” should
`be construed as “a layer that sits on top of any communication protocol and
`acts as an interface between hospitality applications and the communication
`protocol.” PO Resp. 6 (quoting Ex. 1001, col. 4, ll. 9–13). Patent Owner
`argues that this is the correct construction because it is how the
`communications control module is described in the related ’850 patent and
`how a district court construed the limitation in a related proceeding. PO
`Resp. 5–6 (citing Ex. 1033, 13).
`
`Patent Owner also argues that “communication control module”
`should be construed in conjunction with the wherein clause “wherein the
`communications control module is an interface between the hospitality
`applications and any other communications protocol” to require “a server-
`side software layer that provides an interface between the hospitality
`applications and communication protocols and which monitors and routes
`communications between different devices while concurrently using
`different protocols.” PO Resp. 10. Patent Owner again argues that this is
`the correct construction because it is how the communications control
`module is described in the ’325 patent. PO Resp. 8–11.
`
`Petitioner responds that Patent Owner’s construction is not required
`by the language of the claims and improperly imports elements from the
`specification of the ’325 patent into the claims. Pet. Reply 18.
`
`As an initial matter, we are not persuaded by Patent Owner that we
`should wholesale adopt the construction of “communications control
`module” from a previous district court infringement action. The standard for
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`claim construction in a district court infringement action is different than the
`standard applied by the Board. See In re Morris, 127 F.3d 1048, 1053–54
`(Fed. Cir. 1997). In covered business method patent review proceedings, the
`Board applies the broadest reasonable construction consistent with the
`specification. 37 C.F.R. § 42.300(b).
`
`We determine that the broadest reasonable construction, in light of the
`specification of the ’325 patent, of “a communications control module . . .
`wherein the communications control module is an interface between the
`hospitality applications and any other communications protocol” is a device
`used as an intermediary in transferring communications to and from the host
`computer to which it is connected, wherein the device is an interface
`between the hospitality applications and any other communications protocol.
`This construction is consistent with the plain language of claims 11 and 13,
`which requires the communication control module to be an interface
`between the hospitality applications and any other communications protocol.
`This construction is also consistent with the description of the
`communication control module in the specification of the ’325 patent as “a
`communications control program [that] monitors and routes all
`communications to the appropriate devices” and as “a single point of entry
`for all hospitality applications to communicate with one another wirelessly
`or over the [w]eb.” Ex. 1003, col. 9, ll. 35–36, col. 11, ll. 38–40.
`
`This construction, unlike Patent Owner’s proposed construction, does
`not import extraneous features from the specification of the ’325 patent into
`the claims. The specification of the ’325 patent describes additional
`features of the communication control module, such as it is “a layer that sits
`on top of any communication protocol.” Ex. 1003, col. 11, ll. 40–43. The
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`plain language of claims 11 and 13, however, do not require the claimed
`communication control module to have such features. If a feature is not
`necessary to give meaning to what the inventor means by a claim term, it
`would be “extraneous,” and should not be read into the claim. Renishaw
`PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998);
`E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430,
`1433 (Fed. Cir. 1988).
`
`
`We, thus, determine that the broadest reasonable construction, in light
`of the specification of the ’325 patent, of “a communications control module
`. . . wherein the communications control module is an interface between the
`hospitality applications and any other communications protocol” is a device
`used as an intermediary in transferring communications to and from the host
`computer to which it is connected, wherein the device is an interface
`between the hospitality applications and any other communications protocol.
`
`vi. “relates to orders”
`Claim 11 recites “wherein the synchronized data relates to orders.”
`
`Patent Owner argues that this claim element must be construed to mean
`relating to ordering a restaurant meal, as we allegedly construed this term in
`the Institution Decision. PO Resp. 12–13 (citing Dec. to Inst. 13, 24).
`
`Petitioner disagrees and argues that “relates to orders” is broader than
`restaurant meal orders. Pet. Reply. 19. According to Petitioner, the ’325
`patent describes ordering in a wider variety of contexts, including the
`ordering of merchandise. Id. (citing Ex. 1003, col. 12, l. 57–col. 13, l. 9,
`col. 12, ll. 30–35).
`
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` We determine that the broadest reasonable construction, in light of
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`the specification of the ’325 patent, of “relates to orders” is not limited to
`ordering a restaurant meal or precludes other types of orders. Nothing in the
`plain language of claim 11 limits the claimed ordering to restaurant meal
`ordering. Further, the ’325 patent describes ordering in a wider variety of
`contexts, including the ordering of merchandise or tickets. Ex. 1003, col.
`12, l. 57–col. 13, l. 9, col. 12, ll. 30–35.
`
`Contrary to Patent Owner’s argument, ordering was not construed in
`the Institution Decision. See Dec. to Inst. 6–11. The statements Patent
`Owner relies upon points out, in different context, that the ’325 patent
`describes restaurant meal ordering but do not construe the claimed ordering
`to be only restaurant meal ordering. See id. at 13, 24.
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`vii. other terms
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`Petitioner and Patent Owner propose constructions for various other
`claim terms. See Pet. 21–24, PO Resp. 4–8. These claim terms, however,
`need no explicit construction. See Vivid Techs., Inc., 200 F.3d at 803.
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`B. Unpatentability Over DeLorme
`Under 35 U.S.C. § 103, a claim is unpatentable if:
`the differences between the subject matter sought to be patented
`and the prior art are such that the subject matter as a whole would
`have been obvious at the time the invention was made to a person
`having ordinary skill in the art. . . .
`The ultimate determination of obviousness under § 103 is a question
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`of law based on underlying factual findings. In re Baxter Int’l, Inc., 678
`F.3d 1357, 1362 (Fed. Cir. 2012) (citing Graham v. John Deere Co., 383
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`U.S. 1, 17–18 (1966)). These underlying factual considerations consist of:
`(1) the “level of ordinary skill in the pertinent art,” (2) the “scope and
`content of the prior art,” (3) the “differences between the prior art and the
`claims at issue,” and (4) “secondary considerations” of non-obviousness
`such as “commercial success, long-felt but unsolved needs, failure of others,
`etc.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting
`Graham, 338 U.S. at 17–18).
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`Petitioner contends that claims 11, 13, and 15 are unpatentable under
`35 U.S.C. § 103 over DeLorme. Pet. 51–63. To support its contention,
`Petitioner provides explanations as to how the prior art meets each claim
`element. Id. Petitioner also cites the Declaration of Dr. Don Turnbull for
`support. See Ex. 1002 ¶¶ 419–473. Taking into account Patent Owner’s
`argument and evidence (PO Resp. 1–3, 14–80, PO Sur-Reply 1–5), for the
`reasons discussed below, we determine that Petitioner has shown by a
`preponderance of the evidence that claims 11, 13, and 15 are unpatentable
`under 35 U.S.C. § 103 over DeLorme.
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`i. Overview of DeLorme
`DeLorme is titled “Travel Reservation Information and Planning
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`System,” and issued on September 7, 1999, from an application filed on
`February 6, 1997. Ex. 1024, [54], [45], [22].
`DeLorme discloses a computerized travel reservation information and
`planning system (“TRIPS”) which generates travel plan information in the
`form of a “map ticket,” in response to inquiries from consumers. Id. at
`Abstract. Figure 2 of DeLorme is reproduced below.
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`Figure 2, reproduced above, is a block diagram of TRIPS. Id. at col.
`12, ll. 62–65. The Interface and Interaction Bus at block 209 processes
`consumer inquiries for planning travel. Id. at col. 3, ll. 15–41. The system
`receives inquiries from consumers, as illustrated by block 205, for travel
`related data (id. at col. 30, l. 66–col. 31, l. 14) and outputs, as illustrated by
`block 227, digital displays, such as the preferred “map ticket,” or electronic
`communications containing such data, such as reservations and/or tickets for
`accommodations or events (id. at col. 31, ll. 42–58, Fig. 1B). TRIPS
`includes subsystems (e.g., topical subsystem 213) that have geographical,
`topical, temporal, and accounting data, organized in a relational database,
`which is managed by software. Id. at col. 17, ll. 7–13, col. 32, ll. 1–7, col.
`30, ll. 58–65. TRIPS also includes provider input/output 231 for third-party
`providers of travel information and services. Id. at col. 31, ll. 42–51.
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`DeLorme discloses multiple embodiments of TRIPS. In one
`embodiment, a user makes travel plans using TRIPS software on a desktop
`PC, which is connected to the Internet to provide access to updated TRIPS
`information and functions and communication with third-party providers.
`Id. at col. 13, ll. 48–52. Once installed, the TRIPS software interacts with
`online TRIPS services, and TRIPS map data, functions, and topical travel
`information can be updated and online reservations and ticket buys can be
`made. Id. at col. 14, ll. 9–42; see also col. 10, ll. 10–18, col. 10, ll. 22–32.
`Alternatively, all TRIPS functions, data and services 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
`[w]eb Site). Such purely online TRIPS embodiments can be
`implemented utilizing
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