Trials@uspto.gov
`571.272.7822
`
`
`
`
` Paper No. 13
`Filed: September 1, 2015
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., EVENTBRITE INC.,
`STARWOOD HOTELS & RESORTS
`WORLDWIDE, INC.,
`Petitioner,
`
`v.
`
`AMERANTH, INC.,
`Patent Owner.
`____________
`
`Case CBM2015-00082
`Patent 6,871,325 B1
`____________
`
`
`Before MEREDITH C. PETRAVICK, RICHARD E. RICE, and
`STACEY G. WHITE, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`571.272.7822
`
`
`
`
` Paper No. 13
`Filed: September 1, 2015
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., EVENTBRITE INC.,
`STARWOOD HOTELS & RESORTS
`WORLDWIDE, INC.,
`Petitioner,
`
`v.
`
`AMERANTH, INC.,
`Patent Owner.
`____________
`
`Case CBM2015-00082
`Patent 6,871,325 B1
`____________
`
`
`Before MEREDITH C. PETRAVICK, RICHARD E. RICE, and
`STACEY G. WHITE, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`CBM2015-00082
`Patent 6,871,325 B1
`
`
`I. INTRODUCTION
`
`A. Background
`
`On February 19, 2015, Apple Incorporated, Eventbrite Incorporated,
`
`and Starwood Hotels & Resorts Worldwide, Incorporated (“collectively,
`
`Petitioner”) filed a Petition requesting a review under the transitional
`
`program for covered business method patents of U.S. Patent No. 6,871,325
`
`B1 (Ex. 1003, “the ’325 patent”). Paper 1 (“Pet.”). Ameranth, Incorporated
`
`(“Patent Owner”) filed a Preliminary Response on June 4, 2015. Paper 9
`
`(“Prelim. Resp.”).
`
`We have jurisdiction under 35 U.S.C. § 324, which provides that a
`
`post-grant review may not be instituted “unless . . . it is more likely than not
`
`that at least 1 of the claims challenged in the petition is unpatentable.”
`
`35 U.S.C. § 324(a). 1
`
`Petitioner challenges the patentability of claims 11–13 and 15 of the
`
`’325 patent under 35 U.S.C. § 103. Our factual findings and conclusions at
`
`this stage of the proceeding are based on the evidentiary record developed
`
`thus far (prior to Patent Owner’s Response). This is not a final decision as
`
`to the patentability of any of the claims for which a covered business method
`
`patent review is instituted. Our final decision will be based on the record as
`
`fully developed during trial. For the reasons given below, we conclude that
`
`the information presented in the Petition establishes that at least one of the
`
`challenged claims is more likely than not unpatentable. Thus, we institute a
`
`covered business method patent review of claims 11–13 and 15 of the ’325
`
`patent.
`
`
`1 See § 18(a) of the Leahy-Smith America Invents Act (“AIA”), Pub. L. No.
`112-29, 125 Stat. 284, 329 (2011).
`
`2
`
`
`
`
`
`CBM2015-00082
`Patent 6,871,325 B1
`
`
`
`
`
`B. Related Matters
`
`
`
`Both Petitioner and Patent Owner identify numerous related ongoing
`
`district court proceedings in the Petition. Pet. 2–4; Paper 7, 5–6. The ’325
`
`patent is related to U.S. Patent No. 6,384,850 B1, 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.
`6,384,850 B1
`
`Previous CBM Reviews
`CBM2014-00015
`
`6,871,325 B1
`
`CBM2014-00016
`
`6,982,733 B1
`8,146,077 B2
`
`CBM2014-00013
`CBM2014-00014
`
`Pending CBM Reviews
`CBM2015-00091
`CBM2015-00096
`CBM2015-00082
`CBM2015-00097
`CBM2015-00099
`
`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
`
`currently on appeal.
`
`C. 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
`
`3
`
`
`
`
`
`CBM2015-00082
`Patent 6,871,325 B1
`
`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.
`
`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
`
`4
`
`
`
`
`
`CBM2015-00082
`Patent 6,871,325 B1
`
`system through an application program interface. Id. at col. 2, ll. 16–20; col.
`
`11, ll. 28–32.
`
`
`
`D. Illustrative Claim
`
`Claim 11 of the ’325 patent is illustrative of the claims at issue.
`
`Claim 11 reads as follows:
`
`11. An information management and synchronous
`communications system for use with wireless
`handheld computing devices and the internet
`comprising:
`
`a. a central database containing hospitality
`applications and data,
`
`b. at least one wireless handheld computing
`device on which hospitality applications and
`data are stored,
`
`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,
`
`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.
`
`5
`
`
`
`
`
`
`
`CBM2015-00082
`Patent 6,871,325 B1
`
`
`E. Alleged Grounds of Unpatentablity
`
`
`
`Petitioner sets forth alleged grounds of unpatentability as follows:
`
`Ground
`
`Prior Art
`
`Challenged Claims
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`Inkpen2, Nokia3, and Digestor4
`
`11, 13, and 15
`
`Inkpen, Nokia, Digestor, and Flake5 12
`
`DeLorme6
`
`Blinn7 and Inkpen
`
`11–13 and 15
`
`11–13 and 15
`
`Petitioner also proffers the Declaration of Dr. Don Turnbull to support
`
`its Petition. Ex. 1002.
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In a covered business method patent review, a claim in an unexpired
`
`patent shall be given its broadest reasonable construction in light of the
`
`specification of the patent in which it appears. 37 C.F.R. § 42.300(b); see
`
`also In re Cuozzo Speed Techs., LLC, No. 2014-1301, 2015 WL 4097949, at
`
`
`2 Gary Inkpen, INFORMATION TECHNOLOGY FOR TRAVEL AND TOURISM, 1–195
`(2d ed. 1998) (Ex. 1021) (“Inkpen”).
`3 Nokia 9000i Communicator Owner’s Manual, 1–131 (1997) (Ex. 1023)
`(“Nokia”).
`4 Timothy W. Bickmore & Bill N. Schilit, Digestor: device independent
`access to the World Wide Web, Computer Networks and ISDN Systems 29,
`1075–82 (1997) (Ex. 1022) (“Digestor”).
`5 Flake et al., Word Intellectual Property Org. Patent Pub. No. WO 97/27556
`(published Jul. 31, 1997) (Ex. 1049) (“Flake”).
`6 DeLorme et al., U.S. Patent No. 5,948,040 (issued Sept. 7, 1999) (Ex.
`1024) (“DeLorme”).
`7 Blinn et al., U.S. Patent No. 6,058,373 (issued May 2, 2000) (Ex. 1025)
`(“Blinn”).
`
`6
`
`
`
`
`
`CBM2015-00082
`Patent 6,871,325 B1
`
`*7–8 (Fed. Cir. July 8, 2015) (reh’g en banc denied) (“We conclude that
`
`Congress implicitly approved the broadest reasonable interpretation standard
`
`in enacting the AIA” and “the standard was properly adopted by PTO
`
`regulation.”). Under the broadest reasonable interpretation standard, and
`
`absent any special definitions, 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).
`
`Further, “the specification and prosecution history only compel
`
`departure from the plain meaning in two instances: lexicography and
`
`disavowal.” GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309
`
`(Fed. Cir. 2014) (citing Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d
`
`1362, 1365 (Fed. Cir. 2012)). The standards for lexicography and disavowal
`
`are exacting, and require clear intent to define or narrow a term. Thorner,
`
`669 F.3d at 1365–66. 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).
`
`i. Web Page
`
`
`
`Claims 11–13 each recite “at least one [w]eb page on which
`
`hospitality applications and data are stored.”
`
`In related case CBM2014-00016, we determined that the broadest
`
`reasonable construction consistent with the Specification of “web page” is a
`
`document, with associated files for graphics, scripts, and other resources,
`
`accessible over the internet and viewable in a web browser. Ex. 1018, 8.
`
`Petitioner and Patent Owner agree that this is the proper interpretation. Pet.
`
`22; Prelim. Resp. 30. In addition, Petitioner argues that “[a] ‘document’ is
`
`7
`
`
`
`
`
`CBM2015-00082
`Patent 6,871,325 B1
`
`‘any self-contained piece of work created with an application program and,
`
`if saved on a disk, given a unique filename by which is can be retrieved.’”
`
`Pet. 22 (citing Document, MICROSOFT COMPUTER DICTIONARY (4th ed. 1999)
`
`(Ex. 1034, 9)). We adopt Petitioner’s interpretation for purposes of our
`
`Decision in this case.
`
`ii. Synchronized
`
`
`
`Claims 11–13 each recite “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.”
`
`
`
`In related case CBM2014-00014, we determined that the broadest
`
`reasonable construction consistent with the Specification of “synchronized”
`
`is “made to happen, exist, or arise at the same time.” Ex. 1019, 18
`
`(emphasis added). Patent Owner disagrees with this construction and, in
`
`particular the timing aspect, and argues that this construction was not
`
`determined in the context of the ’325 patent. Prelim. Resp. 31. Patent
`
`Owner proposes to construe “synchronized” as “simply means ‘made or
`
`configured to make consistent’ pursuant to the specification.” Id. (quoting
`
`Ex. 1003, col. 11, ll. 47–49 (“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”)).
`
`
`
`Petitioner does not provide a construction of the term “synchronized”
`
`by itself, but does construe the limitation “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” to mean “the same data is
`
`present in each of the central [database], the at least one wireless handheld
`
`computing device, at least one [w]eb server and at least one [w]eb page at
`
`8
`
`
`
`
`
`CBM2015-00082
`Patent 6,871,325 B1
`
`one time.” Pet. 23–24 (emphasis added). Petitioner’s construction includes
`
`a timing aspect. Petitioner, however, also argues that synchronization
`
`encompasses “downloading a menu from one device to another device” and
`
`appears to disregard a timing aspect. See id. at 23.
`
`
`
`For purposes of this Decision, we are persuaded that the broadest
`
`reasonable construction consistent with the Specification of “synchronized”
`
`is made, or configured to make, consistent.
`
`iii. Hospitality Applications
`
`
`
`Claims 11–13 each require a central database, wireless handheld
`
`computing devices, web servers, and web pages to have stored thereon
`
`“hospitality applications.”
`
`
`
`Patent Owner argues that “hospitality applications” means
`
`“applications used to perform services or tasks in the hospitality industry.”
`
`Prelim. Resp. 37 (citing the Board’s construction of a similar term
`
`“hospitality application information” in related case CBM2014-00014).
`
`Petitioner does not propose an explicit construction for this term.
`
`
`
`We are persuaded by Patent Owner that the broadest reasonable
`
`construction consistent with the Specification of “hospitality applications” is
`
`applications used to perform services or tasks in the hospitality industry.
`
`This construction is consistent with the Specification which states
`
`“hospitality applications, e.g., reservations, frequent customer ticketing, wait
`
`lists, etc.” Ex. 1003, col. 4, ll. 10–12.
`
`iv. Outside Applications
`
`
`
`Claims 11–13 each recite “wherein the application program interface
`
`enables inte[]gration of outside applications with the hospitality
`
`9
`
`applications.”
`
`
`
`
`
`CBM2015-00082
`Patent 6,871,325 B1
`
`
`
`Patent Owner argues that the broadest reasonable construction of
`
`“outside applications” is “non-hospitality applications.” Prelim. Resp. 38
`
`(emphasis omitted). Petitioner does not propose an explicit construction for
`
`this term.
`
`
`
`We are not persuaded by Patent Owner that “outside applications”
`
`should be construed to mean “non-hospitality applications.” Patent Owner’s
`
`construction is overly narrow. The Specification describes that the
`
`application program interface “enables third parties such as point[-]of[-]sale
`
`(‘POS’) companies, affinity program companies, and internet content
`
`providers to fully integrate with computerized hospitality applications.” Ex.
`
`1003, col. 2, ll. 16–20; col. 4, ll. 1–6; col. 11, ll. 28–32. Nothing in the
`
`Specification describes these third parties as non-hospitality companies or
`
`their applications as non-hospitality applications, and nothing in the claim
`
`language itself requires the outside application to be non-hospitality
`
`applications.
`
`
`
`For purposes of this Decision, we are persuaded that the broadest
`
`reasonable construction consistent with the Specification of “outside
`
`applications” is third party applications, such as point of sale companies,
`
`affinity program companies and internet content providers.
`
`v. Integration
`
`
`
`Patent Owner argues that the broadest reasonable construction of
`
`“integration” is “the combining of different activities, programs, or hardware
`
`components into a functional unit.” Prelim. Resp. 38 (citing Integration,
`
`MICROSOFT COMPUTER DICTIONARY (4th ed. 1999) (Ex. 2015, 239)).
`
`Petitioner does not propose an explicit construction for this term.
`
`10
`
`
`
`
`
`CBM2015-00082
`Patent 6,871,325 B1
`
`
`
`For purposes of this Decision, we are persuaded that the broadest
`
`reasonable construction consistent with the Specification of “integration” is
`
`the combining of different activities, programs, or hardware components into
`
`a functional unit.
`
`vi. Other Terms
`
`
`
`Petitioner and Patent Owner propose constructions for various other
`
`claim terms. See Pet. 21–24; Prelim. Resp. 25–41. These terms, however,
`
`need no explicit construction at this time. 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”).
`
`
`
`B. Standing
`
`Section 18 of the AIA provides for the creation of a transitional
`
`program for reviewing covered business method patents. Section 18 limits
`
`review to persons or their privies that have been sued or charged with
`
`infringement of a “covered business method patent,” which does not include
`
`patents for “technological inventions.” AIA §§ 18(a)(1)(B), 18(d)(1); see
`
`37 C.F.R. § 42.302. It is undisputed that each of the entities jointly filing the
`
`Petition has been sued for infringement of the ’325 patent. See Pet. 5–6; see
`
`Ex. 1030.
`
`For the reasons explained below, we determine that the ’325 patent is
`
`a covered business method patent and is eligible for covered business
`
`method patent review.
`
`11
`
`
`
`
`
`CBM2015-00082
`Patent 6,871,325 B1
`
`
`i. Financial Product or Service
`
`A “covered business method patent” is a patent that “claims a method
`
`or corresponding apparatus for performing data processing or other
`
`operations used in the practice, administration, or management of a financial
`
`product or service, except that the term does not include patents for
`
`technological inventions.” AIA § 18(d)(1); see 37 C.F.R. § 42.301(a). For
`
`purposes of determining whether a patent is eligible for a covered business
`
`method patent review, the focus is on the claims. See Transitional Program
`
`for Covered Business Method Patents – Definitions of Covered Business
`
`Method Patent and Technological Invention, 77 Fed. Reg. 48,734, 48,736
`
`(Aug. 14, 2012)(Final Rule). A patent need have only one claim directed to
`
`a covered business method to be eligible for review, even if the claim is not
`
`challenged by the Petitioner. Id.; see CRS Advanced Techs., Inc. v.
`
`Frontline Techs., Inc., Case CBM2012-00005, slip op. at 6–9 (PTAB Ja. 23,
`
`2013) (Paper 17).
`
`In promulgating rules for covered business method patent reviews, the
`
`Office considered the legislative intent and history behind the AIA’s
`
`definition of “covered business method patent.” 77 Fed. Reg. at 48,735–36.
`
`The “legislative history explains that the definition of covered business
`
`method patent was drafted to encompass patents ‘claiming activities that are
`
`financial in nature, incidental to a financial activity or complementary to a
`
`financial activity.’” Id. at 48,735 (citing 157 Cong. Rec. S5432 (daily ed.
`
`Sept. 8, 2011) (statement of Sen. Schumer)). The legislative history
`
`indicates that a “financial product or service” should be interpreted broadly.
`
`12
`
`Id.
`
`
`
`
`
`CBM2015-00082
`Patent 6,871,325 B1
`
`
`Petitioner contents that claim 1 is directed to a system that is at least
`
`incidental or complementary to a financial activity, as determined by the
`
`Board in CBM2014-00016. Pet. 6–7. Petitioner argues that claim 1 recites a
`
`system for generating and transmitting menus, in which a generated second
`
`menu is “applicable to a predetermined type of ordering.” Id. According to
`
`Petitioner, the claimed ordering relates to ordering a restaurant meal, which
`
`is at least incidental or complementary to the sale of the meal. Id. at 7
`
`(citing Ex. 1003, Abstract). Patent Owner argues that Petitioner’s standing
`
`argument merely references CBM2014-00016 and is insufficient. Prelim.
`
`Resp. 1, n.1. We are persuaded by Petitioner that ordering relates to
`
`ordering a restaurant meal, which is at least incidental or complementary to
`
`the sale of the meal. See Ex. 1018, 10–11.
`
`
`
`In addition, we determine that claim 11 of the ’325 patent also claims
`
`a system that is at least incidental to financial activity or complementary to a
`
`financial activity. Claim 11 claims an information management and
`
`synchronous communications system that synchronizes data between a
`
`central database, wireless handheld computing devices, web servers, and
`
`web pages, and claims that “the synchronized data relates to orders.” Like
`
`for claim 1 of the ’325 patent, the subject matter of claim 11 is incidental or
`
`complementary to financial activity.
`
`ii. Technological Invention
`
`The definition of “covered business method patent” in § 18(d)(1) of
`
`the AIA does not include patents for “technological inventions.” To
`
`determine whether a patent is for a technological invention, we consider
`
`“whether the claimed subject matter as a whole recites a technological
`
`feature that is novel and unobvious over the prior art; and solves a technical
`
`13
`
`
`
`
`
`CBM2015-00082
`Patent 6,871,325 B1
`
`problem using a technical solution.” 37 C.F.R. § 42.301(b). Both prongs
`
`must be satisfied in order for the patent to be excluded from review as a
`
`technological invention. The following claim drafting techniques, for
`
`example, typically do not render a patent a “technological invention[]”:
`
`(a) Mere recitation of known
`technologies, such as computer
`hardware, communication or computer networks, software,
`memory, computer-readable storage medium, scanners, display
`devices or databases, or specialized machines, such as an ATM or
`point of sale device.
`
`(b) Reciting the use of known prior art technology to accomplish a
`process or method, even if that process or method is novel and
`non-obvious.
`
`(c) Combining prior art structures to achieve the normal, expected, or
`predictable result of that combination.
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763–64 (Aug.
`
`14, 2012).
`
`Petitioner contends that claim 1 is not directed toward a technological
`
`invention because it does not (1) recite a technological feature that is novel
`
`or unobvious over the prior art and (2) solve a technical problem using a
`
`technical solution, as determined by the Board in CBM2014-00016. Pet. 6–
`
`8. Petitioner argues that the system of claim 1 uses nothing but known prior
`
`art technology. Id.
`
`In addition to arguing that Petitioner’s standing argument merely
`
`references CBM2014-00016 and is, therefore, insufficient, Patent Owner
`
`argues that “the PTAB has recently held that claims having structural
`
`similarities to the [’]325 claims were directed to a technological invention.”
`
`Prelim. Resp. 1, n.1 (citing Bloomberg L.P. and Charles Schwab & Co., Inc.
`
`v. Quest Licensing Corp., Case CBM2014-00205 (PTAB Apr. 7, 2015)
`
`(Paper 16); Apple, Inc. v. ContentGuard Holdings, Inc., Case CBM2015-
`
`14
`
`
`
`
`
`CBM2015-00082
`Patent 6,871,325 B1
`
`00046 (PTAB June 3, 2015) (Paper 12). In Bloomberg L.P. v. Quest Corp.,
`
`the petitioner failed to meet its burden. Case CBM2014-00205, slip op. at 9.
`
`Further, the Board found convincing Patent Owner’s affirmative showing
`
`that the patent solved a technical problem using a technical solution. Id. In
`
`Apple, the panel similarly determined that the petitioner failed to meet its
`
`burden. CBM2015-00046, slip op. at 10–11. The panel did not agree with
`
`Petitioner, for example, that the limitations in the claims “are simply generic
`
`functions that are capable of being performed by a general purpose
`
`computer.” Id. at 11.
`
`In contrast to the Bloomberg and Apple proceedings, claim 1 of the
`
`’325 patent recites use of only known technologies, as discussed in the
`
`decision to institute in CBM2014-00016. See Ex. 1018, 11–14. Claim 1,
`
`thus, is not a technological invention.
`
`In addition, we determine that claim 11 of the ’325 patent also is not a
`
`technological invention because it does not recite a technological feature that
`
`is novel and unobvious over the prior art. Claim 11 requires a central
`
`database, at least one wireless handheld computing device, at least one web
`
`server, at least one web page, an application program interface, and a
`
`communications control module. The application program interface
`
`functions to integrate outside applications with hospitality applications on
`
`the central database, handheld computing devices, web server, and web
`
`page. The communications control module functions to synchronize
`
`applications and data between the central database, handheld computing
`
`devices, web servers, and web pages and to act as an interface between the
`
`hospitality applications and any other communications protocol.
`
`15
`
`
`
`
`
`CBM2015-00082
`Patent 6,871,325 B1
`
`
`The Specification of the ’325 patent indicates that these features are
`
`known technologies. The Specification states that “[t]he preferred
`
`embodiment of the present invention uses typical hardware elements in the
`
`form of a computer workstation, operating system and application software
`
`elements which configure the hardware elements for operation in accordance
`
`with the present invention.” Ex. 1003, col. 5, ll. 39–43. See also id. at col.
`
`1, ll. 34–38 (indicating that wireless handheld devices were known); col. 5,
`
`ll. 39–61 (indicating that the present invention uses typical file server
`
`platform hardware and software); col. 10, ll. 47–55 (indicating that
`
`application program interfaces were known); col. 11, ll. 11–16 (indicating
`
`systems for synchronization were known); col. 11, ll. 58–61 (indicating that
`
`the discrete programming steps are commonly known); col. 12, l. 17–col. 13,
`
`l. 6 (indicating that the world wide web, multiple communication protocols,
`
`web pages, and web servers were known). Claim 11, thus, is also not a
`
`technological invention.
`
`
`
`C. Alleged Obviousness Grounds
`
`Section 103(a) forbids issuance of a patent when “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 to which said subject
`matter pertains.”
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`
`obviousness is resolved on the basis of underlying factual determinations,
`
`including: (1) the scope and content of the prior art, (2) any differences
`
`between the claimed subject matter and the prior art, and (3) the level of skill
`
`in the art. Graham v. John Deere Co., 383 U.S. 1, 17 (1966); see KSR, 550
`
`16
`
`
`
`
`
`CBM2015-00082
`Patent 6,871,325 B1
`
`U.S. at 407 (“While the sequence of these questions might be reordered in
`
`any particular case, the [Graham] factors continue to define the inquiry that
`
`controls.”).
`
`i. Alleged Unpatentability Over Inkpen, Nokia, and Digestor
`
`
`
`Petitioner argues that claims 11, 13, and 15 would have been obvious
`
`over Inkpen, Nokia, and Digestor. Pet. 28–51. Claims 11 and 13 are
`
`independent, and claim 13’s elements b and d are the same as claim 11’s
`
`elements b and d.
`
`Inkpen discloses a travel information system developed by Marriott
`
`(Ex. 1021, ll. 229–34). Figure 5.36 of Inkpen, which illustrates the Marriott
`
`system, is reproduced below:
`
`The Marriott system, shown above, includes MARSHA III, which is a
`
`computerized reservation system that interacts with the Marriott database to
`
`handle all reservations, whether from the Travel Web or a global distribution
`
`system (“GDS”). Ex. 1021, 230–31. A THISCO switch is an interface
`
`between MARSHA III and the GDSs and also between MARSHA III and
`
`
`
`17
`
`
`
`
`
`CBM2015-00082
`Patent 6,871,325 B1
`
`the Travel Web. Id. at 218, 230. The web pages from the Travel Web
`
`server may be used by customers to make reservations. Id. at 218.
`
`
`
`Nokia is an owner’s manual for the Nokia 9000i Communicator. Ex.
`
`1023, 7. The Nokia 9000i Communicator has “a mobile phone, messaging
`
`device, Internet access terminal[,] and palmtop organizer all in one compact
`
`unit.” Id. It includes a web browser for viewing World Wide Web pages.
`
`Id. at 53.
`
`
`
`Petitioner proposes various modifications to the Inkpen system (see
`
`Pet. 32–35) including having a consumer use a Nokia 9000i to access the
`
`web pages from the Travel Web server to make reservations. Pet. 32.
`
`Petitioner argues that this combination teaches at least one wireless handheld
`
`computing device on which hospitality applications and data are stored (i.e.,
`
`claim element b) because:
`
`A POSITA would understand that Travel [w]eb pages being
`rendered by a browser on a handheld device are data and
`hospitality applications within the meaning of the ’325 patent.
`Ex. 1002 ¶ 350. This is because the combination of the HTML
`files associated with the Travel Web pages and the browser
`together comprise [applications], in this case making [a]
`reservation[] Id. Additionally, a POSITA would understand that
`web pages such as the Travel Web pages include data. Id.
`
`Pet. 38–39. In essence, Petitioner equates the combination of the HTML
`
`files associated with the Travel Web pages and the browser, together, to the
`
`claimed hospitality applications stored on the wireless handheld computing
`
`device (i.e., claim element b).
`
`Petitioner also argues that this teaches at least one web page on which
`
`hospitality applications and data are stored (i.e., claim element d). Id. at 40.
`
`Petitioner states: “A POSITA would have understood that Travel Web pages
`
`being rendered by a browser on a handheld device are data and hospitality
`
`18
`
`
`
`
`
`CBM2015-00082
`Patent 6,871,325 B1
`
`applications within the meaning of the ’325 patent for the reasons discussed
`
`above in connection with claim element [11].b. Ex. 1002, ¶ 358.” Id.
`
`Petitioner, thus, also appears to equate the combination of the HTML files
`
`associated with the Travel Web pages and the browser, together, to the
`
`claimed hospitality applications stored on the web page.
`
`
`
`Above we construed web page as a document, with associated files for
`
`graphics, scripts, and other resources, accessible over the internet and
`
`viewable in a web browser. Given our construction, it is unclear how a web
`
`page, which is a document viewable in a web browser, can have stored
`
`thereon hospitality applications, which are composed of web browser and
`
`HTML files, and neither Petitioner nor its declarant Dr. Turnbull provides a
`
`sufficient explanation (see Pet. 40; Ex. 1002 ¶ 358). Petitioner does not rely
`
`upon Digestor to cure this deficiency. See Pet. 40.
`
`For this reason, we are not persuaded by Petitioner that claims 11 and
`
`13, and claim 15, dependent therefrom, are more likely than not
`
`unpatentable under 35 U.S.C. § 103 over Inkpen, Nokia, and Digestor.
`
`ii. Alleged Unpatentability Over Inkpen, Nokia, Digestor, and Flake
`
`Petitioner argues that claim 12 is obvious over Inkpen, Nokia, and
`
`Digestor, and Flake. Pet. 49–51. Like claims 11 and 13, claim 12 requires
`
`“at least one [w]eb page on which hospitality application and data are
`
`stored.” To meet this limitation, Petitioner relies upon the same rationale
`
`discussed above with regards to the obviousness of claims 11 over Inkpen,
`
`Nokia, and Digestor. Pet. 50 (stating “see claim 11.”). Petitioner does not
`
`rely upon Flake to cure the deficiency discussed above.
`
`19
`
`
`
`
`
`CBM2015-00082
`Patent 6,871,325 B1
`
`
` For the same reasons as discussed above, we are not persuaded by
`
`Petitioner that claim 12 is more likely than not unpatentable under 35 U.S.C.
`
`§ 103 over Inkpen, Nokia, Digestor, and Flake.
`
`iii. Alleged Unpatentability Over DeLorme
`
`a. Petitioner’s Arguments
`
`
`
`Petitioner argues that claims 11–13 are obvious over DeLorme. Pet.
`
`52– 63. 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. See id. Petitioner, however, contends:
`
` A POSITA would further understand or find obvious that the
`communication control module is configured to interface with
`retail consumer users using different types of devices using
`different communication protocols, including both Internet
`based access (Ex. 1024 at 14:66-15:13) as well as access via a
`“simplified” request protocol from wireless communication
`devices (Ex. 1024 at 73:26–45; 73:67-74:29).
`
`Pet. 57–58 (citing
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
