`571.272.7822
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`
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` Paper No. 13
`Filed: September 1, 2015
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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.,
`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
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`
`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
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`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
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`(“Patent Owner”) filed a Preliminary Response on June 4, 2015. Paper 9
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`(“Prelim. Resp.”).
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`We have jurisdiction under 35 U.S.C. § 324, which provides that a
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`post-grant review may not be instituted “unless . . . it is more likely than not
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`that at least 1 of the claims challenged in the petition is unpatentable.”
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`35 U.S.C. § 324(a). 1
`
`Petitioner challenges the patentability of claims 11–13 and 15 of the
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`’325 patent under 35 U.S.C. § 103. Our factual findings and conclusions at
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`this stage of the proceeding are based on the evidentiary record developed
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`thus far (prior to Patent Owner’s Response). This is not a final decision as
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`to the patentability of any of the claims for which a covered business method
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`patent review is instituted. Our final decision will be based on the record as
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`fully developed during trial. For the reasons given below, we conclude that
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`the information presented in the Petition establishes that at least one of the
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`challenged claims is more likely than not unpatentable. Thus, we institute a
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`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).
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`2
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`CBM2015-00082
`Patent 6,871,325 B1
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`B. Related Matters
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`
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`Both Petitioner and Patent Owner identify numerous related ongoing
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`district court proceedings in the Petition. Pet. 2–4; Paper 7, 5–6. The ’325
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`patent is related to U.S. Patent No. 6,384,850 B1, U.S. Patent No. 6,982,733
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`B1, and U.S. Patent No. 8,146,077 B2. These patents were or are the subject
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`of the following covered business method patent reviews:
`
`
`
`U.S. Patent No.
`6,384,850 B1
`
`Previous CBM Reviews
`CBM2014-00015
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`6,871,325 B1
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`CBM2014-00016
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`6,982,733 B1
`8,146,077 B2
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`CBM2014-00013
`CBM2014-00014
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`Pending CBM Reviews
`CBM2015-00091
`CBM2015-00096
`CBM2015-00082
`CBM2015-00097
`CBM2015-00099
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`CBM2015-00081
`CBM2015-00095
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`In case CBM2014-00016, a Final Written Decision, determining
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`claims 1–10 to be unpatentable, was issued on March 20, 2015 and is
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`currently on appeal.
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`C. The ’325 Patent
`
`The ’325 patent is titled “Information Management and Synchronous
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`Communications System with Menu Generation” and issued on March 22,
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`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
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`to Application No. 09/400,413, which matured into U.S. Patent No.
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`6,384,850. There are two aspects to the system: menu generation and
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`synchronous communication. See, e.g., id. at col. 3, ll. 20–28. The first
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`aspect includes a “desktop software application that enables the rapid
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`3
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`CBM2015-00082
`Patent 6,871,325 B1
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`creation and building of a menu.” Id. at col. 3, ll. 20–22. Claims 1–10,
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`which are not challenged in this proceeding, are directed to this first aspect.
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`
`
`Claims 11–15, some of which are challenged in this proceeding, are
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`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
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`discloses a synchronous communication system, which includes a computer
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`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
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`communications control module provides a single point of entry for all
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`hospitality applications, on the central database, wireless handheld devices,
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`web server and web pages, to communicate with one another. Id. at col. 9,
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`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.
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`Third parties, such as point-of-sale companies, affinity program
`
`companies, and internet content providers, can integrate fully with the
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`4
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`CBM2015-00082
`Patent 6,871,325 B1
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`system through an application program interface. Id. at col. 2, ll. 16–20; col.
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`11, ll. 28–32.
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`
`
`D. Illustrative Claim
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`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,
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`e. an application program interface, and
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`f. a communications control module,
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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.
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`5
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`CBM2015-00082
`Patent 6,871,325 B1
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`E. Alleged Grounds of Unpatentablity
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`
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`Petitioner sets forth alleged grounds of unpatentability as follows:
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`Ground
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`Prior Art
`
`Challenged Claims
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`Inkpen2, Nokia3, and Digestor4
`
`11, 13, and 15
`
`Inkpen, Nokia, Digestor, and Flake5 12
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`DeLorme6
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`Blinn7 and Inkpen
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`11–13 and 15
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`11–13 and 15
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`Petitioner also proffers the Declaration of Dr. Don Turnbull to support
`
`its Petition. Ex. 1002.
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`
`
`II. ANALYSIS
`
`A. Claim Construction
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`In a covered business method patent review, a claim in an unexpired
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`patent shall be given its broadest reasonable construction in light of the
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`specification of the patent in which it appears. 37 C.F.R. § 42.300(b); see
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`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”).
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`6
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`CBM2015-00082
`Patent 6,871,325 B1
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`*7–8 (Fed. Cir. July 8, 2015) (reh’g en banc denied) (“We conclude that
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`Congress implicitly approved the broadest reasonable interpretation standard
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`in enacting the AIA” and “the standard was properly adopted by PTO
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`regulation.”). Under the broadest reasonable interpretation standard, and
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`absent any special definitions, claim terms are given their ordinary and
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`customary meaning, as would be understood by one of ordinary skill in the
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`art in the context of the entire disclosure. In re Translogic Tech., Inc., 504
`
`F.3d 1249, 1257 (Fed. Cir. 2007).
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`Further, “the specification and prosecution history only compel
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`departure from the plain meaning in two instances: lexicography and
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`disavowal.” GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309
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`(Fed. Cir. 2014) (citing Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d
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`1362, 1365 (Fed. Cir. 2012)). The standards for lexicography and disavowal
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`are exacting, and require clear intent to define or narrow a term. Thorner,
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`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,
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`30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`i. Web Page
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`
`
`Claims 11–13 each recite “at least one [w]eb page on which
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`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
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`document, with associated files for graphics, scripts, and other resources,
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`accessible over the internet and viewable in a web browser. Ex. 1018, 8.
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`Petitioner and Patent Owner agree that this is the proper interpretation. Pet.
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`22; Prelim. Resp. 30. In addition, Petitioner argues that “[a] ‘document’ is
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`7
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`Patent 6,871,325 B1
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`‘any self-contained piece of work created with an application program and,
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`if saved on a disk, given a unique filename by which is can be retrieved.’”
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`Pet. 22 (citing Document, MICROSOFT COMPUTER DICTIONARY (4th ed. 1999)
`
`(Ex. 1034, 9)). We adopt Petitioner’s interpretation for purposes of our
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`Decision in this case.
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`ii. Synchronized
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`
`
`Claims 11–13 each recite “wherein application and data are
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`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
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`reasonable construction consistent with the Specification of “synchronized”
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`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
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`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”)).
`
`
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`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
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`one [w]eb server and at least one [w]eb page” to mean “the same data is
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`present in each of the central [database], the at least one wireless handheld
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`computing device, at least one [w]eb server and at least one [w]eb page at
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`8
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`CBM2015-00082
`Patent 6,871,325 B1
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`one time.” Pet. 23–24 (emphasis added). Petitioner’s construction includes
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`a timing aspect. Petitioner, however, also argues that synchronization
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`encompasses “downloading a menu from one device to another device” and
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`appears to disregard a timing aspect. See id. at 23.
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`
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`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.”
`
`
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`Patent Owner argues that “hospitality applications” means
`
`“applications used to perform services or tasks in the hospitality industry.”
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`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
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`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
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`9
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`applications.”
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`Patent 6,871,325 B1
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`
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`Patent Owner argues that the broadest reasonable construction of
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`“outside applications” is “non-hospitality applications.” Prelim. Resp. 38
`
`(emphasis omitted). Petitioner does not propose an explicit construction for
`
`this term.
`
`
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`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.
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`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,
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`MICROSOFT COMPUTER DICTIONARY (4th ed. 1999) (Ex. 2015, 239)).
`
`Petitioner does not propose an explicit construction for this term.
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`10
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`Patent 6,871,325 B1
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`For purposes of this Decision, we are persuaded that the broadest
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`reasonable construction consistent with the Specification of “integration” is
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`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
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`terms need be construed that are in controversy, and only to the extent
`
`necessary to resolve the controversy”).
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`
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`B. Standing
`
`Section 18 of the AIA provides for the creation of a transitional
`
`program for reviewing covered business method patents. Section 18 limits
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`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.
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`11
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`CBM2015-00082
`Patent 6,871,325 B1
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`i. Financial Product or Service
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`A “covered business method patent” is a patent that “claims a method
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`or corresponding apparatus for performing data processing or other
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`operations used in the practice, administration, or management of a financial
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`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
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`method patent review, the focus is on the claims. See Transitional Program
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`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
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`challenged by the Petitioner. Id.; see CRS Advanced Techs., Inc. v.
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`Frontline Techs., Inc., Case CBM2012-00005, slip op. at 6–9 (PTAB Ja. 23,
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`2013) (Paper 17).
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`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.
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`12
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`Id.
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`Petitioner contents that claim 1 is directed to a system that is at least
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`incidental or complementary to a financial activity, as determined by the
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`Board in CBM2014-00016. Pet. 6–7. Petitioner argues that claim 1 recites a
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`system for generating and transmitting menus, in which a generated second
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`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
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`(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.
`
`
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`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
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`problem using a technical solution.” 37 C.F.R. § 42.301(b). Both prongs
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`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–
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`8. Petitioner argues that the system of claim 1 uses nothing but known prior
`
`art technology. Id.
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`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-
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`14
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`CBM2015-00082
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`00046 (PTAB June 3, 2015) (Paper 12). In Bloomberg L.P. v. Quest Corp.,
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`the petitioner failed to meet its burden. Case CBM2014-00205, slip op. at 9.
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`Further, the Board found convincing Patent Owner’s affirmative showing
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`that the patent solved a technical problem using a technical solution. Id. In
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`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
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`functions that are capable of being performed by a general purpose
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`computer.” Id. at 11.
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`In contrast to the Bloomberg and Apple proceedings, claim 1 of the
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`’325 patent recites use of only known technologies, as discussed in the
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`decision to institute in CBM2014-00016. See Ex. 1018, 11–14. Claim 1,
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`thus, is not a technological invention.
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`In addition, we determine that claim 11 of the ’325 patent also is not a
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`technological invention because it does not recite a technological feature that
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`is novel and unobvious over the prior art. Claim 11 requires a central
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`database, at least one wireless handheld computing device, at least one web
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`server, at least one web page, an application program interface, and a
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`communications control module. The application program interface
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`functions to integrate outside applications with hospitality applications on
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`the central database, handheld computing devices, web server, and web
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`page. The communications control module functions to synchronize
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`applications and data between the central database, handheld computing
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`devices, web servers, and web pages and to act as an interface between the
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`hospitality applications and any other communications protocol.
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`15
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`The Specification of the ’325 patent indicates that these features are
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`known technologies. The Specification states that “[t]he preferred
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`embodiment of the present invention uses typical hardware elements in the
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`form of a computer workstation, operating system and application software
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`elements which configure the hardware elements for operation in accordance
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`with the present invention.” Ex. 1003, col. 5, ll. 39–43. See also id. at col.
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`1, ll. 34–38 (indicating that wireless handheld devices were known); col. 5,
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`ll. 39–61 (indicating that the present invention uses typical file server
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`platform hardware and software); col. 10, ll. 47–55 (indicating that
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`application program interfaces were known); col. 11, ll. 11–16 (indicating
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`systems for synchronization were known); col. 11, ll. 58–61 (indicating that
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`the discrete programming steps are commonly known); col. 12, l. 17–col. 13,
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`l. 6 (indicating that the world wide web, multiple communication protocols,
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`web pages, and web servers were known). Claim 11, thus, is also not a
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`technological invention.
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`
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`C. Alleged Obviousness Grounds
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`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.”
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`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
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`obviousness is resolved on the basis of underlying factual determinations,
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`including: (1) the scope and content of the prior art, (2) any differences
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`between the claimed subject matter and the prior art, and (3) the level of skill
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`in the art. Graham v. John Deere Co., 383 U.S. 1, 17 (1966); see KSR, 550
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`U.S. at 407 (“While the sequence of these questions might be reordered in
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`any particular case, the [Graham] factors continue to define the inquiry that
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`controls.”).
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`i. Alleged Unpatentability Over Inkpen, Nokia, and Digestor
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`
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`Petitioner argues that claims 11, 13, and 15 would have been obvious
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`over Inkpen, Nokia, and Digestor. Pet. 28–51. Claims 11 and 13 are
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`independent, and claim 13’s elements b and d are the same as claim 11’s
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`elements b and d.
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`Inkpen discloses a travel information system developed by Marriott
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`(Ex. 1021, ll. 229–34). Figure 5.36 of Inkpen, which illustrates the Marriott
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`system, is reproduced below:
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`The Marriott system, shown above, includes MARSHA III, which is a
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`computerized reservation system that interacts with the Marriott database to
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`handle all reservations, whether from the Travel Web or a global distribution
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`system (“GDS”). Ex. 1021, 230–31. A THISCO switch is an interface
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`between MARSHA III and the GDSs and also between MARSHA III and
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`the Travel Web. Id. at 218, 230. The web pages from the Travel Web
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`server may be used by customers to make reservations. Id. at 218.
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`
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`Nokia is an owner’s manual for the Nokia 9000i Communicator. Ex.
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`1023, 7. The Nokia 9000i Communicator has “a mobile phone, messaging
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`device, Internet access terminal[,] and palmtop organizer all in one compact
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`unit.” Id. It includes a web browser for viewing World Wide Web pages.
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`Id. at 53.
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`
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`Petitioner proposes various modifications to the Inkpen system (see
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`Pet. 32–35) including having a consumer use a Nokia 9000i to access the
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`web pages from the Travel Web server to make reservations. Pet. 32.
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`Petitioner argues that this combination teaches at least one wireless handheld
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`computing device on which hospitality applications and data are stored (i.e.,
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`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.
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`Pet. 38–39. In essence, Petitioner equates the combination of the HTML
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`files associated with the Travel Web pages and the browser, together, to the
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`claimed hospitality applications stored on the wireless handheld computing
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`device (i.e., claim element b).
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`Petitioner also argues that this teaches at least one web page on which
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`hospitality applications and data are stored (i.e., claim element d). Id. at 40.
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`Petitioner states: “A POSITA would have understood that Travel Web pages
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`being rendered by a browser on a handheld device are data and hospitality
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`applications within the meaning of the ’325 patent for the reasons discussed
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`above in connection with claim element [11].b. Ex. 1002, ¶ 358.” Id.
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`Petitioner, thus, also appears to equate the combination of the HTML files
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`associated with the Travel Web pages and the browser, together, to the
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`claimed hospitality applications stored on the web page.
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`
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`Above we construed web page as a document, with associated files for
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`graphics, scripts, and other resources, accessible over the internet and
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`viewable in a web browser. Given our construction, it is unclear how a web
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`page, which is a document viewable in a web browser, can have stored
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`thereon hospitality applications, which are composed of web browser and
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`HTML files, and neither Petitioner nor its declarant Dr. Turnbull provides a
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`sufficient explanation (see Pet. 40; Ex. 1002 ¶ 358). Petitioner does not rely
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`upon Digestor to cure this deficiency. See Pet. 40.
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`For this reason, we are not persuaded by Petitioner that claims 11 and
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`13, and claim 15, dependent therefrom, are more likely than not
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`unpatentable under 35 U.S.C. § 103 over Inkpen, Nokia, and Digestor.
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`ii. Alleged Unpatentability Over Inkpen, Nokia, Digestor, and Flake
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`Petitioner argues that claim 12 is obvious over Inkpen, Nokia, and
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`Digestor, and Flake. Pet. 49–51. Like claims 11 and 13, claim 12 requires
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`“at least one [w]eb page on which hospitality application and data are
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`stored.” To meet this limitation, Petitioner relies upon the same rationale
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`discussed above with regards to the obviousness of claims 11 over Inkpen,
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`Nokia, and Digestor. Pet. 50 (stating “see claim 11.”). Petitioner does not
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`rely upon Flake to cure the deficiency discussed above.
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` 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.
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`§ 103 over Inkpen, Nokia, Digestor, and Flake.
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`iii. Alleged Unpatentability Over DeLorme
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`a. Petitioner’s Arguments
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`
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`Petitioner argues that claims 11–13 are obvious over DeLorme. Pet.
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`52– 63. Petitioner argues that DeLorme discloses the claimed system except
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`that DeLorme does not disclose explicitly that the communication control
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`module is configured as an interface between the hospitality applications and
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`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).
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`Pet. 57–58 (citing