trials@uspto.gov
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
`CBM2015-00080, Paper No. 43
`CBM2015-00082, Paper No. 46
`CBM2015-00096, Paper No. 15
`CBM2015- 00097, Paper No. 13
`CBM2015-00091, Paper No. 37
`CBM2015-00099, Paper No. 37
`CBM2016-00006, Paper No. 11
`CBM2016-00007, Paper No. 11
`June 23, 2016
`
`RECORD OF ORAL HEARING
`UNITED STATES PATENT AND TRADEMARK OFFICE
`- - - - - -
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - -
`APPLE, INC., ET AL.,
`Petitioner,
`vs.
`AMERANTH, INC.,
`Patent Owner.
`- - - - - -
`Case CBM2015-00080, 00082, 00096, 00097
`Patent Nos. 6,384,850 and 6,871,325
`Technology Center 2100
`- - - - - -
`STARBUCKS CORPORATION, ET AL.,
`vs.
`AMERANTH, INC.,
`Patent Owner.
`- - - - - -
`Case CBM2015-00091 and CBM2015-00099
`Case CBM2016-00006 and CBM2016-00007
`Patent Nos. 6,384,850 and 6,871,325
`Technology Center 2100
`
`Before: MEREDITH C. PETRAVICK; RICHARD E. RICE;
`and STACEY G. WHITE (via video link), Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
`CBM2015-00080, Paper No. 43
`CBM2015-00082, Paper No. 46
`CBM2015-00096, Paper No. 15
`CBM2015- 00097, Paper No. 13
`CBM2015-00091, Paper No. 37
`CBM2015-00099, Paper No. 37
`CBM2016-00006, Paper No. 11
`CBM2016-00007, Paper No. 11
`June 23, 2016
`
`RECORD OF ORAL HEARING
`UNITED STATES PATENT AND TRADEMARK OFFICE
`- - - - - -
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - -
`APPLE, INC., ET AL.,
`Petitioner,
`vs.
`AMERANTH, INC.,
`Patent Owner.
`- - - - - -
`Case CBM2015-00080, 00082, 00096, 00097
`Patent Nos. 6,384,850 and 6,871,325
`Technology Center 2100
`- - - - - -
`STARBUCKS CORPORATION, ET AL.,
`vs.
`AMERANTH, INC.,
`Patent Owner.
`- - - - - -
`Case CBM2015-00091 and CBM2015-00099
`Case CBM2016-00006 and CBM2016-00007
`Patent Nos. 6,384,850 and 6,871,325
`Technology Center 2100
`
`Before: MEREDITH C. PETRAVICK; RICHARD E. RICE;
`and STACEY G. WHITE (via video link), Administrative Patent Judges.
`
`
`
`The above-entitled matter came on for hearing on Tuesday,
`May 10, 2016, at 9:00 a.m., Hearing Room A, taken at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`REPORTED BY: RAYMOND G. BRYNTESON, RMR,
`
`CRR, RDR
`
`
`
`2
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE APPLE PETITIONERS:
`
`
`
`
`
`ON BEHALF OF THE STARBUCKS PETITIONERS
`
`:
`
`
`
`
`
`
`
`
`
`
`BING AI, ESQ.
`MATTHEW C. BERNSTEIN, ESQ.
`PATRICK J. McKEEVER, ESQ.
`Perkins Coie LLP
`11988 El Camino Real
`Suite 350
`San Diego, California 92130-2594
`858-720-5700
`
`
`
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`
`
`
`
`
`JAMES HEINTZ, ESQ.
`DLA Piper LLP (US)
`One Fountain Square
`11911 Freedom Drive
`Suite 300
`Reston, Virginia 20190-5602
`
`
`
`
`
`
`ROBERT C. WILLIAMS, ESQ.
`DLA Piper LLP (US)
`401 B Street, Suite 1700
`San Diego, California 92101-4297
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`JOHN W. OSBORNE, ESQ.
`Osborne Law LLC
`914-714-5936
`
`MICHAEL D. FABIANO, ESQ.
`Fabiano Law Firm, P.C.
`12526 High Bluff Drive
`Suite 300
`San Diego, California 92130
`619-742-9631
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`Case Nos. CBM2015-00080, 00082, 00096, 00097
`Case Nos. CBM2015-00091 ,00099; CBM2016-00006, 00007
`
`
`P R O C E E D I N G S
`
`(9:00 a.m.)
`JUDGE PETRAVICK: Good morning. Please be
`seated. We are here today for CBM2015-00080,
`CBM2015-00082. CBM2015- 00096 and 97 have been joined
`with those two proceedings. And we also have
`CBM2015-00091 and 2015- 00099 and CBM2016- 00006 and
`2016- 00007 have been joined with those proceedings.
`So we're going to have 90 minutes of argument on
`both sides. Also, on the Panel today we have Judge Rice, who
`is sitting to my right, and we have Judge White joining us
`from Dallas today. So it is important that you stay behind the
`podium and speak into the microphone in order for Judge
`White to be able to see you.
`Also, Judge White cannot see the screen over
`there. And so when you refer to a slide you need to refer to
`the slide number.
`Before we start the proceedings today, I would like
`to remind everybody that the oral argument is not a chance to
`bring up new argument or new evidence, and any new
`arguments or new evidence that are brought up during the
`proceeding will not be considered.
`So I would like to note who is here from
`Petitioner?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`5
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case Nos. CBM2015-00080, 00082, 00096, 00097
`Case Nos. CBM2015-00091 ,00099; CBM2016-00006, 00007
`
`
`MR. HEINTZ: Thank you, Your Honor. My name
`is Jim Heintz. And presenting for today on behalf of the
`Apple Petitioners is Mr. Robert Williams.
`JUDGE PETRAVICK: And for the Starbucks
`Petitioners?
`MR. AI: Good morning, Your Honor. Bing Ai,
`lead counsel for Starbucks. Also with me, my co- counsel Matt
`Bernstein and Patrick McKeever.
`JUDGE PETRAVICK: All right. Have the
`Petitioners come to an agreement on how they are going to
`divide their 90 minutes?
`MR. HEINTZ: We have, Your Honor. We will
`each do it half. So the Petitioners for Apple will have 45
`minutes and the same for the Petitioners for Starbucks.
`JUDGE PETRAVICK: All right. And would you
`like me to keep track of that 45 minutes for you?
`MR. HEINTZ: We would, Your Honor. We would
`like to reserve 15 minutes for rebuttal. So for the Apple
`Petitioners we will speak for 30 minutes.
`JUDGE PETRAVICK: Okay, with 15 minutes for
`
`rebuttal.
`
`rebuttal?
`
`And, Starbucks, do you want to reserve time for
`
`MR. AI: Yes. We would like to reserve rebuttal
`after we present our case- in- chief.
`
`
`
`6
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case Nos. CBM2015-00080, 00082, 00096, 00097
`Case Nos. CBM2015-00091 ,00099; CBM2016-00006, 00007
`
`
`JUDGE PETRAVICK: Do you know how much
`
`time?
`
`minutes.
`
`MR. AI: Approximately, probably 12 to 15
`
`JUDGE PETRAVICK: Okay. I will set your clock
`for 30 minutes also and then you can decide whether to stop.
`MR. AI: Thank you, Your Honor.
`MR. HEINTZ: Your Honor, if I may, I have a
`procedural question.
`JUDGE PETRAVICK: Okay.
`MR. HEINTZ: You mentioned earlier the new
`arguments issue. If we were to detect something like that,
`would we be permitted to stand to make an objection or are
`they to be reserved until the end?
`JUDGE PETRAVICK: You can stand and present
`an objection.
`MR. HEINTZ: Thank you, Your Honor.
`JUDGE PETRAVICK: For the Patent Owner?
`MR. OSBORNE: John Osborne and Michael
`
`Fabiano.
`
`JUDGE PETRAVICK: Thank you. All right. Let
`me just start the clock then and, Mr. Heintz, as soon as that is
`done you can start when you are ready.
`MR. HEINTZ: Would Your Honor care to have a
`hard copy of our presentation today?
`
`
`
`7
`
`
`
`Case Nos. CBM2015-00080, 00082, 00096, 00097
`Case Nos. CBM2015-00091 ,00099; CBM2016-00006, 00007
`
`
`JUDGE PETRAVICK: I do not wish for one. I
`have your electronic copy.
`JUDGE RICE: Same here. Thank you.
`JUDGE PETRAVICK: You may begin when ready.
`MR. WILLIAMS: Thank you, Your Honor. Good
`morning, Your Honors. My name is Rob Williams with DLA
`Piper, and I will be speaking on behalf of all Petitioners in the
`Apple CBMs. Counsel for Starbucks will be speaking on
`behalf of all Petitioners in the Starbucks CBMs.
`Turning to slide 2, there are two patents at issue in
`the Apple CBMs. The first is Ameranth's '850 patent.
`Turning to slide 3, the second patent at issue is the
`Ameranth '325 patent. The '325 patent is a continuation of the
`'850 patent and it has substantially identical claims.
`And, as you will recall, Your Honors, both of these
`patents have two sets of claims. One set of claims is directed
`at menu generation, and those claims are not at issue in these
`CBM proceedings. Those claims were at issue in the first
`round of CBM proceedings and invalidated on Section 101
`grounds.
`
`Turning to slide 4, the focus of these CBMs is the
`second set of claims. And an example is shown on slide 4.
`Specifically the challenged claims of the '850 patent include
`independent claim 12 and dependent claims 13 through 16.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`8
`
`
`
`Case Nos. CBM2015-00080, 00082, 00096, 00097
`Case Nos. CBM2015-00091 ,00099; CBM2016-00006, 00007
`
`
`Claim 12 shown on slide 4 is generally directed at
`a system with a central database, a wireless hand- held
`computing device, a web server and a web page on which
`hospitality applications are stored and synchronized.
`Turning to slide 5, here I have shown claim 11
`from the '325 patent. The challenged claims of the '325 patent
`include independent claims 11 and 13 as well as dependent
`claims 14 and 15. And as you can see, the independent claims
`of the '325 patent are virtually identical to the independent
`claims of the '850 patent.
`Claim 11 is identical in all respects to claim 12 of
`the '850 patent with the exception of the highlighted limitation
`at the end on slide 5.
`On slide 6, I have listed the claim constructions
`that the Board has adopted in its Institution Decisions in these
`proceedings. As Your Honors may recall, some of these
`constructions -- some of these terms were construed in the
`first round of CBM proceedings including the term
`synchronized, and here the Board has, again, adopted the same
`construction of synchronized and some of these other terms as
`in the first proceedings.
`I will just note that neither Petitioner nor Patent
`Owner has challenged or disputes any of the constructions
`listed on this slide.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`9
`
`
`
`Case Nos. CBM2015-00080, 00082, 00096, 00097
`Case Nos. CBM2015-00091 ,00099; CBM2016-00006, 00007
`
`
`Turning to slide 7, there is one ground at issue in
`the Apple CBMs, and that is that all of the challenged claims
`are obvious in view of DeLorme.
`Turn to slide 8. DeLorme describes a system
`called TRIPS, or Travel Reservation and Information Planning
`Systems. And the general idea behind the TRIPS system is a
`tool for users to plan a trip, for example, a road trip, and to be
`able to identify and make reservations for places to stay,
`places to eat, things to do along the way.
`The TRIPS system is designed to allow a user to
`plan their itinerary, make reservations and access their travel
`itinerary on the go, for example, using a wireless device or a
`GPS-enabled system in their car.
`Turning to slide 9, DeLorme teaches a number of
`ways that a user can access the TRIPS system. One of these
`ways is depicted in figure 1A. It is a desktop embodiment
`where certain data, such as a map atlas can be accessed on
`CD-ROM and other data can be accessed online over the
`Internet.
`
`Turning to slide 10, DeLorme also discloses that
`another way that a user can access the TRIPS system is
`"entirely online" over the Web.
`JUDGE PETRAVICK: On that section that you
`show on slide 9, of DeLorme 14:43, column 14, lines 43
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`10
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case Nos. CBM2015-00080, 00082, 00096, 00097
`Case Nos. CBM2015-00091 ,00099; CBM2016-00006, 00007
`
`through 52, is that talking about accessing TRIPS functions or
`is it talking about acquiring the TRIPS software?
`So in that column, column 14, DeLorme seems to
`put out three ways you can acquire the software: Off of a
`CD-ROM, off of a CD-ROM starter and then getting online
`updates from that, and then there comes this next section
`almost following that paragraph and says: "Alternatively, all
`TRIPS functions, data and services can be provided entirely
`online."
`
`Does that refer to the use of the TRIPS software or
`the fact that you are acquiring TRIPS software onto your
`computer, you know, by a download?
`MR. WILLIAMS: Your Honor, I believe what
`DeLorme is saying here is that all TRIPS functionality, in
`other words, being able to access, query, the various TRIPS
`subsystems is available online over the Web.
`So, for example, a user would use a web browser to
`access all of the TRIPS functionality.
`JUDGE PETRAVICK: But what about the first
`time you acquire the TRIPS software?
`MR. WILLIAMS: Well, I believe there is kind of
`two ways that DeLorme teaches that you can access the TRIPS
`software. One is using a CD-ROM, and you would get -- a
`user would get the CD-ROM with certain data on it and you
`could access additional updated data via the website, or, as
`
`
`
`11
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case Nos. CBM2015-00080, 00082, 00096, 00097
`Case Nos. CBM2015-00091 ,00099; CBM2016-00006, 00007
`
`shown on slide 10, DeLorme describes an alternative method
`in which all TRIPS functions, data and services, in other
`words, all of the access to the TRIPS server completely online,
`or entirely online, as it is stated in DeLorme.
`JUDGE PETRAVICK: So would that include
`downloading the software the first time or downloading new
`versions of the software?
`MR. WILLIAMS: I don't believe so, Your Honor.
`What DeLorme states is that all TRIPS functions, data and
`services can be provided entirely online by means of a TRIPS
`Internet World Wide Web site, which suggests that a user can
`use the web browser to access all of the functionality of
`TRIPS entirely online through a browser.
`JUDGE PETRAVICK: So how does the software
`get onto the wireless hand- held device the first time?
`MR. WILLIAMS: So here we are talking about
`desktop embodiments as opposed to the wireless embodiments,
`which I will get to in a second, but there is no need to
`download software in order to access the TRIPS system.
`JUDGE PETRAVICK: How does the wireless
`device work with the TRIPS software?
`MR. WILLIAMS: So if you can turn to slide 11,
`the wireless device is described as an alternative embodiment.
`So there is the desktop systems and there is also a way to
`access the TRIPS server using a wireless device.
`
`
`
`12
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case Nos. CBM2015-00080, 00082, 00096, 00097
`Case Nos. CBM2015-00091 ,00099; CBM2016-00006, 00007
`
`
`And DeLorme discloses that the wireless device in
`this case, what they call a Wireless Communication Unit, or
`WCU, has software on it that enables the WCU to
`communicate with the TRIPS server.
`JUDGE PETRAVICK: Now, how does the software
`get onto WCU? How do update software get on WCU?
`MR. WILLIAMS: Well, the WCU is described as
`having this functionality, so inherently the software is on the
`WCU. There is no, I think to your point --
`JUDGE PETRAVICK: So it stays there and it is
`static and it never changes?
`MR. WILLIAMS: That's correct, Your Honor.
`And it is our position that there is no requirement that there is
`any update of software required to be sent to a wireless
`device.
`
`JUDGE PETRAVICK: So DeLorme tells us that
`WCU can alternately be a smart phone and PDA. How does
`the software get onto those sort of generic devices?
`MR. WILLIAMS: Well, that's a great question,
`Your Honor. DeLorme doesn't specifically address how the
`software would get on a smart phone or PDA. But I believe
`one skilled in the art would understand that software can be
`installed onto a smart phone or PDA in a variety of ways.
`JUDGE PETRAVICK: Does it update as time goes
`on and there are new versions of TRIPS?
`
`
`
`13
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case Nos. CBM2015-00080, 00082, 00096, 00097
`Case Nos. CBM2015-00091 ,00099; CBM2016-00006, 00007
`
`
`MR. WILLIAMS: There is no specific disclosure
`of updating software on the WCU. However, again, as I
`pointed out, it is our position that there is no requirement in
`the claims of updating software. And, in fact, that's consistent
`with the claim language itself.
`JUDGE PETRAVICK: So how does the application
`get data transmitted to it? The claim requires wherein data
`and applications are transmitted to these devices.
`MR. WILLIAMS: Yes, Your Honor. And if we
`could jump ahead to slide 12 -- excuse me, slide 13, DeLorme
`discloses that users can access updated or real -time data using
`either the online embodiments or the WCU embodiments.
`Updated data is sent to desktop embodiments over
`the web, for instance, using the standard HTTP protocols.
`Both experts agree on that. Updated data is sent to the WCU
`devices using a specialized proprietary packet format or
`communications protocol, again, as both experts agree, in
`order to get updated data to the WCU devices.
`JUDGE PETRAVICK: Okay. So just updating the
`data on the WCU device is updating the application?
`MR. WILLIAMS: Yes, Your Honor. And if you
`could jump ahead to slide 14.
`JUDGE PETRAVICK: Is there a distinction
`between the data that is sent to the WCU device so, for
`example, if I make a restaurant reservation, that's one, seems
`
`
`
`14
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case Nos. CBM2015-00080, 00082, 00096, 00097
`Case Nos. CBM2015-00091 ,00099; CBM2016-00006, 00007
`
`to be one kind of data going through. Is there like a new map
`system or what data would be the application update?
`MR. WILLIAMS: So both applications and data
`are synchronized in the DeLorme system by sending updated
`data, for example, reservation data.
`JUDGE PETRAVICK: So the same reservation
`data is also updating the device center reservation code to the
`WCU, that's updating both the data and the application?
`MR. WILLIAMS: Yes, Your Honor. And that
`interpretation of the claims is consistent with the claims
`themselves.
`JUDGE PETRAVICK: So in the '850 patent there
`are disclosures of, you know, updating a menu and sending a
`new menu database to the wireless hand- held device.
`Would that be application data or is that data-data
`as opposed to using the invention, you know, to make a
`reservation or place an order, sending just the order data as
`opposed to the whole menu data? How is that consistent with
`how you are reading DeLorme?
`MR. WILLIAMS: In several ways, Your Honor.
`First of all, I will point out that the patent does disclose
`downloading a menu to a wireless device, but the way the
`patent describes the menu is a collection of data. A menu
`comprises many categories, many items, modifiers,
`sub- modifiers. This is just data.
`
`
`
`15
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case Nos. CBM2015-00080, 00082, 00096, 00097
`Case Nos. CBM2015-00091 ,00099; CBM2016-00006, 00007
`
`
`There is no disclosure anywhere in the patent of
`sending updated software code to a wireless device or any
`other device for that matter. And when I took Ameranth's
`expert's deposition he admitted to that point. And I can show
`you that on slide 44, please.
`Ameranth has offered a declaration from an expert,
`Dr. Weaver, in this case. I had the opportunity to take his
`deposition a few months back.
`And I specifically asked him whether the patents
`teach transmitting updated software code to a wireless device?
`And he emphatically, unequivocally stated there is no
`description of sending software code to a wireless device in
`the specification, correct, yes.
`JUDGE PETRAVICK: So should we distinguish
`between application data and like the order data? I mean, you
`are saying they are data but they seem to be doing different
`functions.
`When you provide a new menu to the system, in the
`system, it is like changing the way that something displays on
`a display as opposed to sending like an order? I wonder why.
`MR. WILLIAMS: Well, Your Honor, I believe
`what the patent is describing is you can send an updated menu
`but then the software on the wireless device will display it in
`however the way that the software on the device is configured
`to display it.
`
`
`
`16
`
`
`
`Case Nos. CBM2015-00080, 00082, 00096, 00097
`Case Nos. CBM2015-00091 ,00099; CBM2016-00006, 00007
`
`
`If you change the data, the menu that it is supposed
`to display, then the wireless device software will display it
`differently. But there is no disclosure of sending, for
`example, updated software to a wireless device.
`And I will note also that the claims don't require
`sending any updated data to any device. The claims simply
`require -- and if we could jump to slide 14 -- it simply
`requires that the applications and data be synchronized.
`In other words, be consistent, made consistent.
`And the mere fact that all of the devices in the system are able
`to talk to each other confirms that the applications are
`consistent.
`JUDGE PETRAVICK: So you are saying that there
`only has to be one instance?
`MR. WILLIAMS: That's right, Your Honor,
`according to the Board's construction here. Does that address
`your questions?
`JUDGE PETRAVICK: Yes. Thank you.
`MR. WILLIAMS: Okay. If we could jump ahead
`to slide 15, please. I will just note that this interpretation,
`Petitioner's interpretation, the correct interpretation in our
`view of this limitation is that both applications and
`synchronized are -- and data, can be synchronized by
`synchronizing the data used by those applications.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`17
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case Nos. CBM2015-00080, 00082, 00096, 00097
`Case Nos. CBM2015-00091 ,00099; CBM2016-00006, 00007
`
`
`And that's consistent with the claims themselves,
`disclosures in the specification, and, again, Dr. Weaver's
`admissions at deposition. And here on slide 15 I have shown
`dependent claim 16 which depends from claim 12, and further
`states that the applications and data are synchronized by data
`transmission.
`Turning to slide 16, the specification also teaches
`that sharing data is how applications are synchronized. For
`example, at column 11, lines 24 to 42, the specification
`describes a single point of entry for all hospitality
`applications which work to keep the various devices on which
`these hospitality applications are stored in sync.
`And how does it describe doing that? It describes
`doing that with an example of sending a reservation, again,
`data. A reservation made online automatically communicates
`to the central database and then synchronized with all of the
`claims devices.
`JUDGE WHITE: Counselor?
`MR. WILLIAMS: Yes, Your Honor.
`JUDGE WHITE: Do you have a construction that
`you are using for the term "application" because I think that I
`need some clarity as to application data and data -data.
`Construe application as you are understanding it.
`MR. WILLIAMS: Yes, Your Honor. I believe we
`offered a construction in our petition at page 22. Certain
`
`
`
`18
`
`
`
`Case Nos. CBM2015-00080, 00082, 00096, 00097
`Case Nos. CBM2015-00091 ,00099; CBM2016-00006, 00007
`
`applications should be construed to mean sequences of
`instructions that can be executed on a computer that are
`designed to help people perform a specific task.
`In other words, it is software that allows a user to
`do something useful. In this case, in the case of DeLorme, the
`application would be an application on the WCU device, for
`example, that enables the user to make reservations or
`otherwise access the TRIPS server.
`JUDGE PETRAVICK: If the same data can be use
`what's synchronized between them, why does the claim use the
`word application and then separately use the word data?
`MR. WILLIAMS: Well, Your Honor, it is not our
`position that the only way that applications and data can be
`synchronized is by synchronizing the data used by those
`applications. We're just saying that is one way that
`applications and data can be synchronized.
`And, again, that's consistent with the claims
`themselves. It is consistent with the specification. And
`moreover, if we turn to slide 17, Patent Owner's expert, again,
`both experts agree on this point, that applications can be
`synchronized by sharing data.
`I asked him at his deposition, can the
`synchronization of applications limitation, the limitation at
`issue here, can that limitation be satisfied by sending to the
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`19
`
`
`
`Case Nos. CBM2015-00080, 00082, 00096, 00097
`Case Nos. CBM2015-00091 ,00099; CBM2016-00006, 00007
`
`wireless computing device updated hospitality data? And,
`again, he answered unequivocally yes.
`That's one way in which applications and data can
`be synchronized. It is a way that's taught in the patent. In
`fact, it is the only way that's taught in the patent. And it is
`consistent with the claims themselves.
`JUDGE PETRAVICK: I understand, and maybe
`you can clarify and help me wrap my head around this a little
`bit, I understand that all updates and software are coming
`through data transmission. I mean, how else are you going to
`update software but, you know, sending new software through
`a data packet or data transmission?
`So I'm having a hard time understanding how, if
`your position is that the data, you know, sending an order, is
`also the data that updates the application, how that same data
`can do both things? And that's what you are saying DeLorme
`does, right?
`MR. WILLIAMS: Yes. So, first of all, I would
`again point out that the claims don't require any updating of
`software code as we saw in --
`JUDGE PETRAVICK: I'm sorry, synchronizing.
`MR. WILLIAMS: Right.
`JUDGE PETRAVICK: How does the same data
`synchronize the two different things?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`20
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case Nos. CBM2015-00080, 00082, 00096, 00097
`Case Nos. CBM2015-00091 ,00099; CBM2016-00006, 00007
`
`
`MR. WILLIAMS: Well, if you think about how the
`Board has construed synchronized, made or configured to
`make consistent, two applications on two different devices are
`synchronized if they are viewing the same data.
`And to address your point, I think your point was
`directed at claim 16, where it states the applications and data
`are synchronized by digital data transmission, I admit, Your
`Honor, that the claim uses the word "data" twice here.
`And as is typical in claim construction, the same
`word in a claim typically means the same thing. And what the
`claim is saying is that applications and data, or data here is
`distinguished from applications, are synchronized by digital
`data transmission.
`In other words, the claim is stating both what is
`synchronized and how that data, those things, are being
`synchronized. And the way that it is describing those things
`being synchronized is by data transmission.
`JUDGE PETRAVICK: By the same data
`transmission?
`MR. WILLIAMS: Well, yes, Your Honor. It
`doesn't state that here but it does state that both the
`applications and the data are synchronized by data
`transmission.
`Now, if the claim had simply said the applications
`and data are synchronized by digital transmission without
`
`
`
`21
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case Nos. CBM2015-00080, 00082, 00096, 00097
`Case Nos. CBM2015-00091 ,00099; CBM2016-00006, 00007
`
`saying data transmission, that might be another story, but here
`the claim is specifically saying that applications and data are
`synchronized by digital data transmission.
`And, again, our point is not that that's the only way
`the applications can be synchronized. It is simply one way,
`one way the applications can be synchronized consistent with
`the claims, consistent with the spec, consistent with both
`expert's testimony, is by synchronizing the data used by those
`applications.
`Does that address your question?
`JUDGE PETRAVICK: Please proceed.
`MR. WILLIAMS: So if we could jump ahead to
`slide 18. Now, the Patent Owner has challenged that there --
`or has argued that DeLorme fails to disclose four limitations.
`Well, one obviously is the one we've been discussing for the
`last few minutes, the synchronization clause. The next one is
`the wireless hand- held device limitation shown on slide 18.
`I have got a number of slides on this. There are a
`number of problems with Patent Owner's arguments. I will
`just, in the interest of time, briefly touch on a couple of those.
`If we could skip to slide 20. Yes, Your Honor?
`JUDGE PETRAVICK: No, I don't have anything.
`MR. WILLIAMS: Okay. So one of Patent Owner's
`arguments is that DeLorme fails to disclose applications stored
`on the WCU. But elsewhere in its own Patent Owner response
`
`
`
`22
`
`
`
`Case Nos. CBM2015-00080, 00082, 00096, 00097
`Case Nos. CBM2015-00091 ,00099; CBM2016-00006, 00007
`
`Patent Owner admits programmed means that software is
`stored on a WCU.
`And what the software does is it communicates
`with the TRIPS server, provides various user interface
`functionalities, such as voice recognition. As established in
`our petition and is supported by Petitioner's expert
`declaration, that software is an application.
`If we could skip to slide 21. Again, Dr. Weaver,
`Patent Owner's expert, admitted that one of the things the
`software does is it enables you to make reservations. And as
`the Board has recognized, the specification itself defines
`hospitality applications as including, for example,
`reservations.
`Skipping ahead to slide 22, Patent Owner also
`makes the argument that DeLorme is all about travel and travel
`information and it is not about the hospitality industry. They
`argue that the hospitality industry excludes travel and tourism.
`But as established in our reply and supported by a
`number of publications from the hospitality industry, the
`hospitality industry, as has been defined by many others in the
`industry, as including travel and tourism.
`Skipping ahead to slide 23, finally Patent Owner
`argues that DeLorme's WCU can't be the wireless hand- held
`device of the claims because it is described as an alternative
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`23
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case Nos. CBM2015-00080, 00082, 00096, 00097
`Case Nos. CBM2015-00091 ,00099; CBM2016-00006, 00007
`
`embodiment to the online embodiment, and those two
`embodiments wouldn't work together.
`But as established in our papers, Patent Owner
`ignores a lot of other disclosures in DeLorme which
`specifically describe the WCU embodiment depicted in figure
`9 as an alternative or additional embodiment which can
`function either with or without relation to the online
`embodiments.
`JUDGE PETRAVICK: Does the WCU have to be
`used through a specially-made proprietary system?
`MR. WILLIAMS: The preferred embodiment
`described in DeLorme is a specially custom-designed WCU
`but, as we pointed out, Your Honor, DeLorme also discloses
`that the WCU could be a smart phone or a PDA, for example.
`Turning to slide 24, the third limitation Ameranth
`disputes in DeLorme is the API limitation. But as shown on
`slide 25, DeLorme inherently discloses an API. It discloses a
`provider input/output 231 which enables integration of
`third- party applications.
`JUDGE PETRAVICK: Do you think there is
`anything in the claim that prevents -- that would preclude
`DeLorme's proprietary WCU from interacting with the system?
`I mean, is there something special about the
`proprietary WCU that prevents it from working with an API
`with a control module?
`
`
`
`24
`
`
`
`Case Nos. CBM2015-00080, 00082, 00096, 00097
`Case Nos. CBM2015-00091 ,00099; CBM2016-00006, 00007
`
`
`MR. WILLIAMS: No, Your Honor, I don't believe
`there is anything in the claims that prevent a standard smart
`phone or PDA from being used.
`JUDGE PETRAVICK: Even with the simplified
`
`buttons?
`
`MR. WILLIAMS: So DeLorme does describe a
`WCU that has simplified buttons for interacting with the
`TRIPS server but there is nothing about the simplified buttons
`that would preclude it from meeting each and every limitation
`in the claims.
`In particular, with respect to the API, I will just
`note that, again, Dr. Weaver's admissions at his deposition
`confirmed that DeLorme discloses an API.
`On slide 26, you can see he admitted that DeLorme
`discloses outside applications. He admitted that the way these
`outside applications interface with the TRIPS server is through
`provider input/output 231, and he admitted that all such
`software, distinct software applications that communicate with
`each other, would have an API. Both experts agree on that
`point.
`
`Turning to slide 27, I will briefly address the last
`limitation that Patent Owner challenges. That's the
`communications control module limitation.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`
`
`25
`
`
`
`Case Nos. CBM2015-00080, 00082, 00096, 00097
`Case Nos. CBM2015-00091 ,00099; CBM2016-00006, 00007
`
`
`If we turn to slide 28 we can see a figure, figure 2,
`that shows the TRIPS architecture. And De
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
