CBM2015-00091
`CBM2015-00099
`
`Filed on behalf of Patent Owner Ameranth, Inc.
`
`By:
`
`John W. Osborne
`Osborne Law LLC
`33 Habitat Lane
`Cortlandt Manor, NY 10567
`josborne@osborneipl.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`STARBUCKS CORP.
`Petitioner
`
`v.
`
`AMERANTH, INC.
`Patent Owner
`
`____________
`
`Cases CBM2015-00091, CBM2015-00099
`Patent Nos. 6,384,850, 6871,325
`____________
`
`Declaration of Alfred C. Weaver, Ph.D.
`
`PATENT OWNER EXHIBIT 2041
`
`
`CBM2015-00099
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`Filed on behalf of Patent Owner Ameranth, Inc.
`
`By:
`
`John W. Osborne
`Osborne Law LLC
`33 Habitat Lane
`Cortlandt Manor, NY 10567
`josborne@osborneipl.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`STARBUCKS CORP.
`Petitioner
`
`v.
`
`AMERANTH, INC.
`Patent Owner
`
`____________
`
`Cases CBM2015-00091, CBM2015-00099
`Patent Nos. 6,384,850, 6871,325
`____________
`
`Declaration of Alfred C. Weaver, Ph.D.
`
`PATENT OWNER EXHIBIT 2041
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`
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`CBM2015-00091
`CBM2015-00099
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`I.
`
`Introduction
`1.
`Starbucks Inc. seeks to invalidate the claims of U.S. Patent Numbers
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`6,384,850 (the “‘850 Patent”) and 6,871,325 (the “‘325 Patent”) (collectively, the
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`“Patents Under Review”). Starbucks filed a Petition for Covered Business Method
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`(“CBM”) Patent Review, and an accompanying declaration from Dr. Abelsalam Helal
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`in support, for each of these patents. This declaration represents my opinions with
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`respect to the substance of the CBM filings and Dr. Helal’s declarations.
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`II. Qualifications
`2.
`My educational background, professional achievements, and
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`qualifications as a Computer Scientist and as an expert in Electronic Commerce are
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`detailed in my curriculum vitae, which is attached hereto as Appendix A.
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`3.
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`I earned a Ph.D. in Computer Science at the University of Illinois at
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`Urbana-Champaign in 1976. I also earned a Master of Science degree from that same
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`institution in 1973. I earned a Bachelor of Science in Engineering Science from the
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`University of Tennessee in 1971.
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`4.
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`I am currently a Professor of Computer Science and Associate Chair of
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`the Department of Computer Science at the University of Virginia (“UVa”). I have
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`been employed at UVa continuously since 1977.
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`5.
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`Over the period of my employment at UVa I have taught more than 25
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`different courses, including electronic commerce, operating systems, computer
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`networks, and various programming courses.
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`6.
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`In addition to my teaching duties, I am also the Founding Director of
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`UVa’s Applied Research Institute, a group of faculty engaged in research areas related
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`PATENT OWNER EXHIBIT 2041
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`to national security and funded by both government and industry. To date, I have
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`published 16 books and book chapters, 30 refereed journal articles, 139 refereed
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`conference publications, and over 80 technical reports. I currently serve on the
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`Advisory Council of the Editorial Board of IEEE Computer magazine.
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`7.
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`As a researcher, I have served as Principal Investigator or co-Principal
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`Investigator of 130+ research projects funded by the federal government and private
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`industry. Recent research projects include 3D printing, automated analysis of
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`published scientific literature, secure mobile computing, crowdsourcing, data integrity,
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`and trustworthy computing.
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`8.
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`I have been the graduate advisor for 69 Ph.D. and master’s students, all in
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`Computer Science.
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`9.
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`I have founded five companies. One of these, Network Xpress, Inc., was a
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`spin-off from research work in computer networks funded by the U. S. Navy at UVa.
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`At its peak, another company (Reliacast, Inc.) employed 90 people and developed
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`software for secure streaming of multimedia. Reliacast was ultimately sold to Comcast.
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`10.
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`I have served as an expert witness in 20+ patent infringement cases since
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`1988. Six of those cases have gone to trial. In the past four years I have testified in
`
`court in two cases:
`VT Technologies v. Twitter, U.S. District Court, Eastern Virginia
`(Norfolk). I testified on behalf of defendant Twitter.
`
`ePlus, Inc. v. Lawson Software, U.S. District Court, Eastern Virginia
`(Richmond). I testified on behalf of plaintiff ePlus.
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`CBM2015-00099
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`III. Report Preparation
`11.
`In developing the opinions discussed in this report, I studied the ‘850
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`Patent and the ‘325 Patent, the prosecution file histories for each of these patents, the
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`references cited by Starbucks in the CBM reviews, Starbucks’ Petitions, Dr. Helal’s
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`declaration, and the Board’s Decisions Instituting CBM review.
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`12. A list of the materials on which I have relied while producing this
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`Declaration is attached in Appendix B.
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`13. My opinions are based on the materials I have reviewed. If Petitioner
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`introduces new evidence or supporting material, I reserve the right to supplement this
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`report if necessary based on the new information.
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`IV. Applicable Legal Principles
`14.
`I am not an attorney. For the purposes of this report, I have been informed
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`about certain aspects of the law that are relevant to my analysis and opinion. In
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`formulating my opinions, I have taken into account the following principles of law
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`regarding patent invalidity, which I understand to be accurate statements of the law.
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`15.
`
`I understand that if the claimed invention is not anticipated by the prior
`
`art, the claim could still be invalid under 35 U.S.C. § 103(a) because the difference
`
`between the claimed subject matter 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 one of
`
`ordinary skill in the relevant art. I understand that one of ordinary skill is presumed to
`
`have familiarity with analogous prior art in the relevant field of invention.
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`16. Regarding my obviousness analysis, my instructions were to consider the
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`following: (a) the scope and content of the prior art; (b) the differences between the
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`prior art and the subject matter of the claimed invention; and (c) the level of ordinary
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`skill in the art at the time of the claimed invention. I understand that the objective
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`indicia of non-obviousness (or secondary considerations of non-obviousness) should
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`also be considered before any determination of obviousness is made.
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`17.
`
`I have also been informed that a claimed invention composed of several
`
`elements is not proved obvious merely be demonstrating that each of its elements was,
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`independently, known in the prior art. I understand that when determining invalidity
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`for obviousness there must be some rational underpinning to support the legal
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`conclusion of obviousness, including an explicit reason or motivation to combine
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`references to arrive at the claimed invention. I also understand that a finding of
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`obviousness can be grounded in common sense, but that even then, the finding must
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`contain explicit and clear reasoning providing some rational underpinning of why
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`common sense compels a finding of obviousness. I understand that I should consider
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`whether there is an “apparent reason” to combine the prior art references or elements
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`in the way the patent claims. To determine the existence of such an “apparent reason”
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`to combine the prior art references or elements in the way a patent claims, it will often
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`be necessary to look to the interrelated teaching of multiple patents, to the effects of
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`demands known to the design community or present in the marketplace, and to the
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`background knowledge possessed by a person having ordinary skill in the art.
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`18.
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`I understand that evidence of secondary considerations supporting non-
`
`obviousness can be used to rebut a finding of obviousness. I also understand that a
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`combination of references that does not result in each and every limitation of the
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`claimed invention, references that teach away from one another (and hence, contravene
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`the reasoning for the combination thereof), and reliance on impermissible hindsight in
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`constructing a combination of references can each be determinative of a finding of
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`non-obviousness.
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`19.
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`In addition, for objective indicia of non-obviousness to be accorded
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`substantial weight, its proponent must establish a nexus between the evidence and the
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`merits of the claimed invention. Where the offered objective indicia actually results
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`from something other than what is both claimed and novel in the claim, there is no
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`nexus to the merits of the claimed invention.
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`20.
`
`I also understand that if an independent claim is not obvious, then its
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`dependent claims are also not obvious.
`
`V.
`
`Person of Ordinary Skill in the Art
`21. My opinions have been made from the standpoint of a person of ordinary
`
`skill in the art (“POSA”). A POSA at the time the patents under review were filed
`
`would have had a Bachelor of Science degree in either electrical engineering or
`
`computer science and at least three years of experience in the hospitality market in the
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`fields of developing software for wireless networks and devices, developing Internet-
`
`based systems or applications, with knowledge of or equivalent experience in software
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`development in the hospitality market for at least three years.
`
`VI. The Patents Under Review
`22.
`The ‘850 and ‘325 Patents are related. The ‘325 Patent claims priority as
`
`a continuation from the application from which the ‘850 Patent issued, which original
`
`application was filed on September 21, 1999. The ‘850 and ‘325 Patents have an
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`identical specification. Even though my summary below references the ‘850 Patent, it
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`is equally applicable to the ‘325 Patent. Also, as the independent claims of the ‘325
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`Patent include all elements recited in ‘850 independent claim 12, all of my references
`
`to ‘850 claim 12 apply equally to ‘325 claims 11-13. Further, I provide citations to
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`Petitions and Institution Decisions in both the ‘850 and ‘325 proceedings, and such
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`citations to discussions relevant to ‘850 claim 12 apply equally to ‘325 claims 11-13.
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`23. According to the Abstract of the ‘850 Patent, the invention provides that
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`“[a]n information management and synchronous communications system and method
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`facilitates database equilibrium and synchronization with wired, wireless and Web-
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`based systems, user-friendly and efficient generation of computerized menus and
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`reservations for restaurants and other applications that utilize equipment with
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`nonstandard graphical formats, display sizes and/or applications for use in remote data
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`entry, information management and communication with a host computer, digital input
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`device or remote pager via standard hardwired connection, the internet, a wireless link
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`or the like.”
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`24.
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`The ‘850 patent describes and claims various forms of an information
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`management and synchronous communications system primarily contemplated for use
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`in the hospitality industry. I am advised that the inventions described in the patents are
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`software systems that have been licensed by 44 independent companies. These claimed
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`inventions necessarily synchronize the operations of computers, databases,
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`Webservers, and wireless handheld computing devices (such as smartphones).
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`25.
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`The invention encompassed by the challenged claims provides a system
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`solution in which a central database maintains “database equilibrium” and contains a
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`“single truth” with respect to hospitality applications and data‒for example, an up-to-
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`CBM2015-00091
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`date restaurant menu with current items and pricing‒and through the software modules
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`described in the patents (e.g., synchronous communication functionality as recited in
`‘850 claims 12-16) causes that same substantive menu data to be correctly formatted,
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`sequenced, displayed and updated across a variety of connected devices‒including but
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`not limited to different types of wireless handheld computing devices, such as
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`smartphones. See ‘850 patent, passim. At the time of the inventions of the ’850 patent,
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`it is my opinion that the above-described computer software functionality, and the
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`specifically recited arrangement of computer and software components, were unknown
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`to a person of skill in the art, and the claimed inventions were not achievable using
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`existing components either with or without the knowledge of a person of skill in the
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`art.
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`VII. Claim Construction
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`26. With regard to the obviousness analysis contained herein, I have been
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`asked by counsel to apply the broadest reasonable interpretation (“BRI”) based on the
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`intrinsic evidence, to consider district court claim constructions, and to apply the
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`PTAB’s constructions unless stated otherwise herein.
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`27.
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`It is my opinion that the BRI of “wireless handheld computing device” is
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`“a wireless computing device that is sized to be held in one’s hand.” See Everingham
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`Order (Exh. 2033 at 24).
`
`28.
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`It is my opinion that “central database” is “a database file structure
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`connected to the system in association with a central server, comprised of records, each
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`containing fields, together with a set of operations for searching, sorting, recombining
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`and other functions.” Microsoft Comp. Dict. (4th ed.1999) (Exh. 2015, p. 123);
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`PATENT OWNER EXHIBIT 2041
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`Exh.1001 at 2:24, 11-34-35 (“backoffice server (central database)”); id. at 2:8-10,
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`11:13-15 (“synchronization between a central database and multiple handheld
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`devices”).
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`29.
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`I follow the PTAB’s prior construction of “web page” to mean “a
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`document, with associated files for graphics, scripts, and other resources, accessible
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`over the internet and viewable in a web browser.” ‘850 Inst. Dec. 11; see also
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`CBM2014-00015 (Exh. 1017 thereto at 8)).
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`30.
`
`I interpret “web server” as follows. The Microsoft Computer Dictionary
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`states in regard to “Web Server:” “See HTTP Server.”(Exh. 2042 (Page 479)). The
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`Dictionary then states in regard to “HTTP Server:” “Server software that uses HTTP to
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`serve up HTML documents and any associated files and scripts when requested by a
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`client such as a web browser.” (Exh. 2042 (Page 224)). I believe that this definition is
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`correct.
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`31.
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`I interpret “communications control module” (“CCM”) as a software
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`layer, as Judge Payne concluded in prior district court litigation stating that “the
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`specification itself provides the best construction for the term at issue.” (Exh. 2043 at
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`13). Based on the District Court constructions and intrinsic evidence, it is my opinion
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`that the CCM is “a layer that sits on top of any communication protocol and acts as an
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`interface between hospitality applications and the communication protocol.” See Exh.
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`1001 4:9-13. Further, it is my opinion that it is the software-based CCM that provides
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`the claimed “automatic” communications “routing” functionality as shown by the
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`specification, e.g.,“[a] communication control program monitors and routes all
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`communications to the appropriate devices” which “must be running for proper
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`communications to exist between all devices on the network.” (Exh. 1001 9: 21-22,
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`38-39 (emphasis added)). It is also the CCM that deals concurrently with both HTTP
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`and non-HTTP communications messaging protocols of the system as claimed, and
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`which also supports the integration of the separately recited API (which then also deals
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`with software application-to-application direct integration and with third party
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`systems/devices such as point-of-sale (POS) systems, as discussed further below).
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`32.
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`I follow the PTAB’s prior construction of “synchronized” in another
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`proceeding on the same patent, where the Board construed this term to mean “made, or
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`configured to make, consistent.” CBM2015-00080, Inst. Dec. 9.
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`33.
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`It is my opinion that the Board correctly construed “hospitality
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`applications” to mean “applications used to perform services or tasks in the hospitality
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`industry.” However, it is my opinion that this was incomplete because it failed to
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`establish the actual boundaries of the “hospitality industry.” The specification states
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`“hospitality applications, e.g., reservations, frequent customer[,] ticketing, wait lists,
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`etc.” Exh. 1001 4:6–7; CBM2015-00091 (‘850 proceeding), Inst. Dec. 12. Further, in
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`distinguishing prior art in the ‘325 application, Patent Owner stated: “ As known in the
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`art, a hospitality software application is, for example, a piece of software used to
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`provide operational solutions in hospitality industries such as restaurants and hotels,
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`concerning, for example, food ordering, menus, wait-lists, and reservations.” Exh.
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`2039 at 7 (emphasis added).
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`34. Despite the teachings of the intrinsic evidence as to the scope of the
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`hospitality industry, the Board relied on1 Petitioner’s excerpts from the Dittmer book
`(Exh. 1035) to conclude that “hospitality” referred to the broader “travel and
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`transportation” industry (of which “hospitality” is only a subset). The Board stated:
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`“[o]ur construction of hospitality includes businesses, such as car rental agencies, that
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`provide services to travelers.” ‘850 Inst. Dec. 12. The Board mistakenly viewed Patent
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`Owner’s proposed construction as a “narrowing” of Petitioner’s proposal for the
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`broader and unclaimed “travel and transportation” industry and in so doing relied on a
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`reference outside the correct construction. Further, the correct definition of the
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`skills/knowledge of a POSA includes actual experience in the hospitality market, and
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`such an experienced POSA would have understood the difference between the actual
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`“hospitality” market and the broader “travel and tourism” market. The ‘325 patent does
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`not include any mention of the terms “travel” and “tourism.” Thus a POSA would have
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`understood the scope of the claims to exclude “car rentals,” a subset of the broader
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`“travel and tourism” market and not within the “hospitality” subset. Thus, the Board’s
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`own decision, in viewing hospitality as including the “traditional” restaurant processes
`(as confirmed by Dittmer)2 was correct in part. However, the Board viewed the
`definition too broadly due to the fact that it did not have access to the complete Dittmer
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`reference at the time. The full Dittmer reference, and in particular its Glossary, compels
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`1 “On this record, we are persuaded that the ordinary and customary meaning of
`hospitality is broad enough to encompass car rental activities.” Inst. Dec. 12 (emphasis
`added).
`2 “Here, the authors of the text discuss a ‘traditional view’ of hospitality that ‘refers to
`the act of providing food, beverages, or lodging to travelers.’” (Inst. Dec. at 11)
`(emphasis added); see also Dittmer Glossary of Terms (Exh. 2040).
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`my conclusion that “hospitality” excludes both “car rentals” and the broader and
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`unclaimed “travel and tourism” industry.
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`35. Confirming that the hospitality market definition was defined by the
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`Dittmer authors to be “food/beverages and lodging” for guests and that hospitality is
`merely a subset of the larger superset “Travel and Tourism” (a different and unclaimed
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`term), Dittmer stated:
`In this chapter and the two that follow, we will turn our attention from the
`specifics of food, beverage and lodging operations to the larger industry,
`of which hospitality operations are a part; travel and tourism.
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`Exh. 2040, Dittmer at p. 396 (emphasis added).
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`36.
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`Thus the “hospitality industry” is not only different from the “travel and
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`tourism” industry, it is only a “part,” i.e., a subset of the larger “travel and tourism”
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`industry superset. This is contrary to Petitioner’s argument that “ [t]he car rental
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`applications described in Brandt are hospitality applications. Car rental companies fall
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`within the “Travel and Tourism” sector of the hospitality industry. Ex. 1035 at 11-14
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`and 403-404." (‘325 Pet. at 48-49 (emphasis added)). It is my opinion that Petitioner’s
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`characterization was backwards, that in fact Dittmer confirms that “hospitality” is a
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`sector of the broader “Travel and Tourism” industry.
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`37.
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`The Dittmer Glossary (pp. 530-560 of Exhibit 2040, the complete Dittmer
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`reference), i.e., the Dittmer authors' “dictionary of terms,” includes the actual
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`definitions below, which in my opinion demonstrates that the PTAB misapprehended
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`the portions of Petitioner’s Dittmer exhibit (Exh. 1035):
`Hospitality: “Hospitality is a term derived from the Latin word
`“hospitare”, meaning “to receive as a guest.” “To receive as a guest” is a
`phrase that implies a host prepared to meet a guest's basic requirements
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`while that guest is away from home – food, beverages and lodging.
`(Dittmer, p. 543; Exh. 2040; emphasis added)
`Hospitality Industry: “The hospitality industry consists of businesses
`that provide food, beverages, or lodging to travelers. (Id., p. 543;
`emphasis added)
`Travel and Tourism: The terms travel and tourism are commonly linked
`together to create this special term used to refer to those businesses
`providing primary service to travelers. These include the traditional
`hospitality businesses and a number of others closely linked to them in
`such fields as entertainment, recreation, and transportation, plus travel
`agencies and tour operators.” (Id., p. 561; emphasis added)
`As confirmed by these Dittmer definitions, a “car rental” is not a “hospitality
`application,” nor a hospitality “reservation,” as those terms are understood in the
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`hospitality market. Rather than supporting the argument that Brandt teaches
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`“hospitality applications, ” Dittmer itself shows that it is erroneous to read Brandt, a
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`car-rental reference, to meet the “hospitality applications” limitation or apply Brandt to
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`the critical “central database” limitation of the ‘850 and ‘325 claims.
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`38.
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`The Board recognized examples of hospitality applications as, “e.g.,
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`reservations, frequent customer ticketing, waitlists, etc.” (‘850 Inst. Dec. at 12). The
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`Board’s established construction for “hospitality applications” is “applications used to
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`perform services or tasks in the hospitality industry” (‘850 Inst. Dec. at 13; emphasis
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`added.) Thus, Dittmer confirms that “auto rentals” are not in the “hospitality
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`industry,”–they are in fact outside of it–in the unclaimed and broader “travel and
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`tourism industry.”
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`39.
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`It is my opinion that the recited “application program interface” is not a
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`generic API divorced from the definition of its function within ‘850 claim 12. See also
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`the discussion of the “integration” term below.
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`40.
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`In another case on a related patent, the Board construed “outside
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`applications” to mean “third party applications, such as point of sale companies,
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`affinity program companies, and internet content providers.” CBM2015-00080, Inst.
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`Dec. 10. I follow this construction.
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`41.
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`In another case on a related patent, the Board construed “integration” to
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`mean “combining of different activities, programs, or hardware components into a
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`functional unit.” CBM2015-00080, Inst. Dec. 11. I follow the Board’s construction. In
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`my opinion, this term and construction also must be considered in relation to the
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`“CCM” and “outside applications” terms as well.
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`42.
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`It is my opinion that the proper construction for “single point of entry for
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`all hospitality applications” is one that leverages Judge Payne’s focused construction
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`of “single point of entry” itself, but the complete element needs to be considered as a
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`whole to be consistent with the entirety of claim 13 (as well as the specification
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`description directly related to this element). Judge Payne construed “a single point of
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`entry” as “a center of communication.” (Exh. 2043 at 18). It is my opinion that this is
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`the proper BRI construction but that the full term in which it appears, as the core
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`aspect of claim 13, should be construed as “a center of communication for all
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`hospitality applications.”
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`43.
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`In my opinion, “automatic” functionality is a key inventive concept of the
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`patents and, as explained above relative to the CCM and the specification at col. 9, it is
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`the CCM which must be running that provides the recited “automatic” (i.e., routing)
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`functionality. Further, the specification states that “[n]o user action is needed during
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`operation of the software once the application is launched.” (Exh. 1001 9: 27-29
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`(emphasis added)). “Automatic” is “without user action” and thus means “done or
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`produced as if by machine.” The phrase “[n]o user action” is used in the specification
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`at 9:27 and is consistent with the ordinary and customary definition of “automatic”
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`established by the BPAI/PTAB. See BPAI Appeal No. 2010-000055 at 5 (Exh. 2012)
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`(relying on Merriam Webster Collegiate Dictionary (http://www.merriam-
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`webster.com/dictionary/automatic). I agree with the BPAI/PTAB’s established
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`definition.
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`44.
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`In addition to correctly construing the CCM as a functionally independent
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`layer as discussed above, it is my opinion that “wherein the communications control
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`module is an interface between the hospitality applications and any other
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`communications protocol” must be separately considered and construed as part of this
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`broader claim element itself as well as in the context of “integration” and “outside
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`applications,” and the claim as a whole.
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`45.
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`The Board’s initial determination in the ‘325 case, CBM2015-00099, that
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`neither the claims nor the specification “require more than [] web based
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`communications protocols” (CBM2015-00099, Inst. Dec. 35) and that “the only
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`specific protocol discussed in the specification is HTTP” (Id. at 32) ignored that the
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`system as claimed “integrates” with, e.g., point-of-sale (POS) systems, and
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`accommodates and adapts to new protocols without the necessity to change the
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`underlying/core hospitality applications, a concept not taught by any of the asserted
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`references as discussed below. For example, the claims and specification refer to
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`“integration” with “outside applications.” i.e., third party systems such as POS system
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`PATENT OWNER EXHIBIT 2041
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`devices (which a POSA reading the specification would understand to operate with
`different protocols).3 The specification states:
`A simple point to point wireless capability is contemplated which permits
`simple digital messages to be sent from the wireless handheld devices ...
`to a receiver in a beeper and/or valet parking base-station. …A simple
`protocol is used to acknowledge receipt of the message and thus
`simultaneous communication is not necessary, which reduces the cost of
`the wireless link.
`Exh. 1001 11:49-57 (emphasis added). It is apparent that this passage refers to an
`
`exemplary simple digital messaging (i.e., non-HTTP) “wireless” protocol for, e.g.,
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`interfacing with pagers and beepers, just as a communication with a third-party POS
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`system might involve a different protocol. The claimed CCM as described by the
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`specification accommodates and routes messages to such systems/devices when
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`appropriate, which a system relying only on web browser-based protocols could not
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`do.
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`46. My aforesaid conclusion that the CCM functionality as described in the
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`specification provides routing to different systems/devices and is not limited to web
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`browser-based protocols is consistent with the specification requirement that the CCM
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`must be capable of concurrent communications via both HTTP and non-HTTP
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`protocols while monitoring and routing messages operating under different protocols
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`3Exh.1001 9:21-27 (“A communications control program monitors and routes all
`communications to the appropriate devices. It continuously monitors the wireless
`network access point and all other devices connected to the network such as pagers,
`remote devices, internet Web links and POS software. Any message received is
`decoded by the software, and then routed to the appropriate device.”).
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`PATENT OWNER EXHIBIT 2041
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`to the appropriate devices/components as recited in the claims.4
`47.
`It is thus my opinion that “wherein the communications control module is
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`an interface between the hospitality applications and any other communications
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`protocol” should be construed, pursuant to the claim language itself and the
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`specification, as “a server-side software layer that provides an interface between the
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`hospitality applications and communication protocols and which monitors and routes
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`communications between different devices while concurrently using different
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`protocols.” This construction is compelled by the specification, which clearly
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`discloses at least two different protocols:
`The communication module also provides a single point of entry for all
`hospitality applications, e.g., reservations, frequent customer[,]ticketing,
`wait lists, etc. to communicate with one another wirelessly and over the
`Web. This communication module is a layer that sits on top of any
`communication protocol and acts as an interface between hospitality
`applications and the communication protocol.
`Exh. 1001 4:5-11.
`A communications control program monitors and routes all
`communications to the appropriate devices. It continuously monitors the
`wireless network access point and all other devices connected to the
`network such as pagers, remote devices, internet Web links and POS
`software. Any message received is decoded by the software, and then
`routed to the appropriate device.
`Exh. 1001 9:21-27 (emphasis added). The CCM as part of the claimed system as a
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`whole thus provides an interface for and between the hospitality applications on
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`4 Similarly, dependent claim 15 of the ‘325 patent (Exh. 1002) recites a “wireless
`paging device,” which operates under a non-HTTP protocol, further reinforcing that
`the CCM must have functionality to interface to multiple protocols.
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`PATENT OWNER EXHIBIT 2041
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`different devices/clients and using different protocols including non-HTTP protocols.
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`48.
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`It is my opinion that the Board erred by concluding in the Institution
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`Decision that ‘325 claims 11-13 were not three different core functions of hospitality
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`applications simply because the specification itself has broader scope. The Board
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`ignored the explicit claim recitations directed to specific types of hospitality
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`applications (‘325 Inst. Dec. 37):
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`Thus, on this record, we are not persuaded that the claims are to be
`interpreted as narrowly focusing on food ordering or restaurant
`reservations and waitlists.
`First, these claim elements as part of the fourth wherein clause must be construed from
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`the perspective of a POSA inclusive of experience in the hospitality market at the time
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`of the invention, and based on two tenets of claim construction, i.e., that the claim
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`must be construed as a whole and that claim differentiation mandates a different
`meaning for each of the “orders,” “waitlists” and “reservations” terms.5 Additionally
`the specification itself informs the POSA that each of these are different from one
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`another and that they are independent hospitality applications (not once but three times
`in the first column of the specification).6 Pursuant to the canons of claim construction
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`5 "In the absence of any evidence to the contrary, we must presume that the use [of]
`different terms in the claims connotes different meanings." CAE Screenplates Inc. v.
`Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000).
`6 “[T]he hospitality industry, e.g., for restaurant ordering, reservations and wait-
`list management” (Exh. 1001 1:21-23), “for the time criticality of ordering,
`reservation and wait-list management” (Id. 1:54-55) and “there is still no integrated
`solution to the ordering/waitlist/reservation problem. (Id. 1:60-61) (emphasis
`added).
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`PATENT OWNER EXHIBIT 2041
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`the same element/functionality in the prior art cannot meet the differing limitations
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`between these three independent claims. The inventors followed the `850 patent
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`specification in ‘850 claim 12 with broader “hospitality” limitations. But these three
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`independent claims of the ‘325 patent each are directed to different limitations as to the
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`“type” of hospitality. The inventors also used the different terms in the prosecution
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`history of the `325 patent to distinguish prior art (Exh. 2039 at 11). Thus a different
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`meaning/function is compelled for each of them. The fourth wherein clause of these
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`claims reflects the data that is a type of “hospitality applications and data” as recited in
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`these claims and thus each of the terms must be constructed as a particular species of
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`the hospitality industry genus which cannot be conflated with nor be equated to other
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`species.
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`49. Claim 11 of the '325 Patent recites hospitality applications that are
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`restricted to ordering "wherein … the synchronized data relates to orders." The
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`following definitions from the Dittmer glossary (Exh
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