Paper 38
`Entered: September 13, 2016
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`STARBUCKS CORPORATION, APPLE, INC., EVENTBRITE INC., and
`STARWOOD HOTELS &
`RESORTS WORLDWIDE, INC.,
`Petitioner,
`
`v.
`
`AMERANTH, INC.,
`Patent Owner.
`_______________
`
`Case CBM2015-000911
`Patent 6,384,850 B1
`_______________
`
`
`
`Before MEREDITH C. PETRAVICK, RICHARD E. RICE, and
`STACEY G. WHITE, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`Covered Business Method Patent Review
`35 U.S.C. § 328 and 37 C.F.R. § 42.73
`
`
`
`
`
`1 Case CBM2016-00007 has been joined with this proceeding.
`
`

`
`CBM2015-00091
`Patent 6,384,850 B1
`
`
`I. INTRODUCTION
`
`A. Background
`Starbucks Corporation filed a Petition (Paper 1, “Pet.”) requesting covered
`business method patent review of claims 12–16 (“challenged claims”) of U.S.
`Patent No. 6,384,850 B1 (Ex. 1001, “the ’850 patent”) pursuant to § 18 of the
`Leahy-Smith America Invents Act (“AIA”). Ameranth, Inc. (“Patent Owner”)
`filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).
`Pursuant to 35 U.S.C. ¶ 324, we instituted this trial on the following grounds
`(Paper 9, “Dec.”):
`References
`
`Claims Challenged
`
`Basis
`
`Brandt2 and NetHopper3
`
`§ 103
`
`Brandt, Demers,4 and Alonso5 § 103
`
`12–16
`
`12–16
`
`
`Apple Inc., EventBrite, Inc. and Starwood Hotels & Resorts Worldwide, Inc.6
`subsequently requested covered business method patent review of the same claims
`based on the grounds instituted in this proceeding and sought joinder with this
`
`
`2 Japanese Unexamined App. No. H10-247183 (published Sept. 14, 1998) (Ex.
`1004) (certified translation, Ex. 1005, “Brandt”).
`3 NetHopper Version 3.2 User’s Manual, 1–24 (1997) (Ex. 1006, “NetHopper”).
`4 Alan Demers, et al., The Bayou Architecture: Support for Data Sharing Among
`Mobile Users, Mobile Computing Systems & Applications, 1995. Proceedings,
`Workshop on. IEEE, 1–7, 1995. (Ex. 1009, “Demers”).
`5 Gustavo Alonso et al., Exotica/FMDC: A Workflow Management System for
`Mobile and Disconnected Clients, Databases & Mobile Computing, 28–45, 1996
`(Ex. 1012, “Alonso”).
`6 The term Petitioner as used in this Decision collectively refers to Starbucks,
`Apple Inc., EventBrite, Inc. and Starwood Hotels & Resorts, Worldwide, Inc.
`
`
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`2
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`CBM2015-00091
`Patent 6,384,850 B1
`
`proceeding. CBM2016-00007, Paper 1, 2. We instituted reviewed on that petition
`and joined it with this proceeding. Paper 28.
`Patent Owner filed a Corrected Patent Owner’s Response. Paper 17 (“PO
`Resp.”). Petitioner filed a Reply to Patent Owner’s Response. Paper 19 (“Reply”).
`Patent Owner filed a Sur-Reply to Petitioner’s Reply. Paper 24 (Sur-Reply); see
`also Paper 22 (Order authorizing Patent Owner’s Sur-Reply). In addition, the
`parties filed cross motions seeking to exclude documents. See Paper 26 (“Pet.
`Mot. Excl.”), Paper 25 (“PO Mot. Excl.”).
`An oral hearing was held on May 10, 2016. A transcript of the hearing is
`included in the record. Paper 37 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written Decision is
`issued pursuant to 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73.
`For the reasons that follow, we determine that Petitioner has shown by a
`preponderance of the evidence that claims 12–16 of the ’850 patent are
`unpatentable.
`B. Related Proceedings
`The parties indicate that the ’850 patent is the subject of the following
`district court case: Ameranth, Inc. v. Starbucks Corp., No. 3-13-cv-01072 (S.D.
`Cal.) filed May 6, 2013. Pet. 2 (citing Ex. 1045). Petitioner notes that Patent
`Owner has asserted the ’850 patent against thirty-five other defendants in a number
`of civil actions that have been consolidated into Ameranth, Inc. v. Pizza Hut, No.
`3-11-cv-01810 (S.D. Cal.). Id. at 3.
`In a previous proceeding before the Board, claims 1–11 of the ’850 patent
`were held to be unpatentable. Agilysys, Inc. v. Ameranth, Inc., Case CBM2014-
`00015 (PTAB Mar. 20, 2015) (Paper 36). Petitioner also filed a petition for
`covered business method patent review of a related patent, U.S. Patent No.
`
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`
`3
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`CBM2015-00091
`Patent 6,384,850 B1
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`6,871,325 B1. Starbucks Corp. v. Ameranth, Inc., Case CBM2015-00099. Patent
`Owner identifies numerous covered business method patent reviews (both pending
`and completed) that it states are related to this Petition. Paper 5 (Notice of Related
`Matters). The previous and pending related petitions are summarized in the table
`below.
`
`U.S. Patent No.
`6,384,850 B1
`
`6,871,325 B1
`
`6,982,733 B1
`8,146,077 B1
`
`CBM2015-00099
`
`
`
`
`Previous CBM Reviews Pending CBM Reviews
`CBM2014-00015
`
`CBM2015-00080
`CBM2015-00096
`CBM2014-00016
`CBM2015-00082
`CBM2015-00097
`CBM2014-00013
`CBM2014-00014
`CBM2015-00081
`CBM2015-00095
`
`
`CBM2016-00053
`
`9,009,060 B2
`
`C. The ’850 Patent
`The ’850 patent, titled “Information Management and Synchronous
`Communications System with Menu Generation” issued May 7, 2002 based on
`Application No. 09/400,413 filed September 21, 1999. Ex. 1001, at [21], [22],
`[45], [54]. The challenged claims are directed to an information management and
`synchronous communications system. Id. at 16:1–47. This system “results in a
`dramatic reduction in the amount of time, and hence cost, to generate and maintain
`computerized menus for, e.g., restaurants and other related applications that utilize
`non-PC-standard graphical formats, display sizes or applications.” Id. at 3:26–30.
`The system includes a central database, multiple handheld devices, and a
`web server. Id. at 3:59–63. It also includes an application programming interface
`
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`(“API”) that enables third parties, such as point-of-sale companies, affinity
`program companies, and internet content providers, to integrate fully with the
`computerized hospitality applications. Id. at 2:11–16; 3:64–67; 11:15–19. The
`system has a communications control module to “provide[] 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.” Id. at
`4:5–8. This communications control module is a layer that sits on top of any
`communication protocol and acts as an interface between hospitality applications
`and the communication protocol. Id. at 4:8–11; 11:24–30.
`Claim 12 of the ’850 patent is illustrative of the claims at issue and read as
`follows:
`
`12. 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 Web server on which hospitality applications and
`data are stored,
`d. at least one Web page on which hospitality applications and
`data are stored,
`e. an application program interface, and
`f. a communications control module,
`wherein applications and data are synchronized between the
`central data base, at least one wireless handheld computing device, at
`least one Web server and at least one Web page; wherein the
`application program interface enables inte[]gration of outside
`applications with the hospitality applications and wherein the
`
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`
`communications control module is an interface between the
`hospitality applications and any other communication protocol..
`Ex. 1001, 16:1–22.
`D. Standing for Covered Business Method Patent Review
`As stated in our Decision on Institution, Petitioner provided sufficient
`evidence and arguments to show that claim 12 of the ’850 patent is sufficient to
`subject this patent to covered business method patent review. Dec. 6–9. We
`discern no reason to modify or further discuss in this Final Written Decision our
`determination regarding standing.
`We do note, however, Patent Owner’s improper attempt to incorporate by
`reference arguments made in its Preliminary Response (Paper 7) into the Patent
`Owner’s Response. PO Resp. 1 n. 1 (“Patent Owner incorporates herein its
`Preliminary Response arguments regarding standing and preserves its right to
`appeal the Board’s determination thereof.”). Our Rules prohibit incorporating
`arguments by reference. 37 C.F.R. § 42.6(a)(3) states: “[a]rguments must not be
`incorporated by reference from one document into another document.”
`Incorporation by reference circumvents our Rule limiting the pages in the Patent
`Owner response to 80 pages. See 37 C.F.R. § 42.24(b)(2).7 Arguments that are
`not developed and presented in the Patent Owner Response, itself, are not entitled
`to consideration. See Paper 10, 3 (cautioning Patent Owner “that any arguments
`for patentability not raised [and fully briefed] in the response will be deemed
`waived.”).
`
`
`7 Rule 42.24(b)(2) was amended, effective May 2, 2106. The Corrected Patent
`Owner’s Response, however, was filed February 1, 2016, prior to that date and,
`thus, we refer to the prior version of 37 C.F.R. § 42.24(b)(2).
`
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`
`The only other argument raised in regards to standing is Patent Owner’s
`statement that “Petitioner’s standing argument merely references CBM2014-
`00015, and is thus insufficient.” PO Resp. 1 n. 1. As explained in our Decision,
`we determined that the Petition established that claim 12 of the ’850 patent was
`eligible for covered business method patent review. See Dec. 6–9. The standing
`analysis in CBM2014-00015 was directed to claim 1 of the ’850 patent. Agilysys,
`Inc. v. Ameranth, Inc., CBM2014-00015, slip. op. at 9–14 (PTAB Mar. 26, 2014)
`(Paper 20). Thus, Patent Owner’s contentions regarding CBM2014-00015 are not
`applicable to this case.
`
`II. ANALYSIS
`
`A. Claim Construction
`The Board interprets claims of unexpired patents using the broadest
`reasonable construction in light of the specification of the patent in which they
`appear. 37 C.F.R. § 42.300(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`2144–46 (2016) (upholding the use of the broadest reasonable interpretation
`approach). Under the broadest reasonable construction standard, claim terms are
`given their ordinary and customary meaning, as would be understood by one of
`ordinary skill in the art in the context of the entire disclosure. In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for a
`claim term must be set forth with reasonable clarity, deliberateness, and precision.
`In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a
`definition, limitations are not to be read from the specification into the claims.
`In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`1. “hospitality applications”
`Independent claim 12 recites “hospitality applications.” Ex. 1001, 16:7–22.
`In our Institution Decision, we analyzed this term and determined that the
`
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`construction implied in a previous case “applications used to perform services or
`tasks in the hospitality industry” should also apply in this case. Dec. 11 (citing
`Agilysys, Inc. v. Ameranth, Inc., Case CBM2014-00014, slip op. at 16–17 (PTAB
`Mar. 26, 2014) (Paper 19)). We also stated that the broadest reasonable
`interpretation of hospitality includes businesses such as car rental agencies, which
`provide services to travelers. Id. at 12. Patent Owner and Petitioner agree with
`this construction, but Patent Owner seeks clarification as to its scope. PO Resp. 5;
`Reply 1–4. Specifically, Patent Owner seeks to exclude car rental agencies from
`the construction. PO Resp. 5.
`According to Patent Owner, the invention of the’850 is directed to “the
`traditional restaurant processes” and as such, the construction of hospitality
`excludes both car rentals and the broader travel/tourism industry. Id. at 7 (quoting
`Ex. 2044, 1). Patent Owner contends that the specification shows that the recited
`term “hospitality” excluded travel and tourism. Id. at 6–7. In addition, Patent
`Owner argues that portions of the Dittmer reference (Ex. 1035) submitted with the
`Petition omitted key portions of the textbook that would have shown travel and
`tourism to be distinct from hospitality. PO Resp. 7–8. Patent Owner has placed
`the entire Dittmer textbook in evidence. See Ex. 2040.
`First, we start with the text of the ’850 patent. See Microsoft Corp. v.
`Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). The specification
`discusses the use of “PDA type devices in the restaurant and hospitality fields.”
`Ex. 1001, 1:57–58; see also id at 1:65–67 (noting that “substantial use of such
`devices in the restaurant and hospitality context has not occurred to date”); and
`2:1–2 (“PDAs have not been quickly assimilated into the restaurant and hospitality
`industries”). Thus, we determine that the specification’s repeated discussions of
`“restaurants and hospitality” indicate that the Patentee viewed restaurants and
`
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`hospitality as two distinct fields or industries. See id. There is a single mention of
`a “restaurant and hospitality industry.” Id. at 3:40–43. This indicates that the
`Patentee viewed these distinct fields or industries as related and that one could
`broadly view restaurants and hospitality as part of the same industry. Thus, we
`find that the specification supports a construction of hospitality that includes but is
`not limited to the restaurant industry.
`During the prosecution of a related patent, the Patentee stated that to one of
`ordinary skill in the art, “a hospitality software application is, for example, a piece
`of software used to provide operational solutions in hospitality industries such as
`restaurants and hotels concerning, for example, food ordering, menus, wait-lists
`and reservations.” Ex. 2039, 7 (emphases added). Hotels are not discussed in the
`’850 patent, but according to the Patent Owner they are an example of a type of
`business that is included within the hospitality industry. See PO Resp. 6. We look
`to the specification to see if the Patentee provided insight as to what other
`businesses properly may be included within the construction of this term. The
`specification provides several generic examples of hospitality applications. Ex.
`1001, 4:6–7 (“hospitality applications, e.g., reservations, frequent customer
`ticketing, wait lists, etc.”). These applications, however, have utility in a broad
`range of fields (e.g., table reservation, rental car reservation, room reservation,
`etc.) and thus, we do not find this language to be limiting as to the proper
`construction of hospitality.
`We then look to evidence outside of the patent and its prosecution history to
`gain additional insight into how one of ordinary skill in the art would have
`understood this term. In the Institution Decision, we cited a section of the Dittmer
`reference titled “A Definition of Hospitality.” Dec. 11 (citing Ex. 1035, 5–6). We
`noted that Dittmer provided both a “traditional view” of hospitality and a broader
`
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`view. Id. The traditional view “refers to the act of providing food, beverages, or
`lodging to travelers.” Id. Patent Owner urges that we adopt that view of the scope
`of the term. PO Resp. 7. In our Decision, we also noted the broader view that
`includes “services primarily to travelers in a broad sense of the term. By contrast,
`other service businesses ordinarily deal with customers who are local residents
`rather than travelers.” Dec. 11–12 (quoting Ex. 1035, 6). We also cited Dittmer’s
`statement that the definition of hospitality “is really quite broad” (id. at 12 (citing
`Ex. 1035, 7)) and Dittmer’s listing car rental agencies as a business providing
`service to travelers (id. (citing Ex. 1035, 404)).
`Patent Owner contends that Dittmer also includes statements that
`differentiate food, beverages, and lodging from travel and tourism. Specifically,
`Patent Owner relies upon the following statement found in Dittmer: “In this
`chapter and the two that follow, we will turn [] from the specifics of food, beverage
`and lodging operations to the larger industry, of which hospitality operations are
`a part; travel and tourism.” PO Resp. 8 (quoting Ex. 2040, 396) (emphasis in
`original). According to Patent Owner, this shows that travel and tourism is a broad
`industry and hospitality is a subset of that industry. Id. Petitioner points out that
`Dittmer is a book titled “Dimensions of the Hospitality Industry” and it includes
`three chapters on travel and tourism, which it argues indicates that travel and
`tourism are a part of hospitality. Reply. 1.
`Petitioner also provides declaration evidence from Dr. Mahmood A. Khan.
`See Ex. 1064. Dr. Khan is a professor in the Hospitality and Tourism Department
`at Virginia Polytechnic Institute and State University. Id. ¶ 1. He has over forty
`years of experience in the hospitality industry. Id. ¶ 1, App’x A. Dr. Khan
`testified that “the hospitality industry encompassed and included ‘travel and
`tourism’ (including car rentals).” Id. ¶ 15. According to Dr. Khan,
`
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`
`Among the wide ranging services in the hospitability industry,
`transportation services, lodging services and services of food and
`beverages in connection with the needs of people away from home are
`fundamentally intertwined and practically inseparable for travelers. It
`is difficult for people in the hospitability industry to image how one of
`those three types of services be separated from one another.
`
`Id. ¶ 16. He explained that car rental applications were integrated into centralized
`systems for airline and hotel room reservations and provided examples of such
`centralized systems that were available in 1999. Id. ¶ 19.
`Patent Owner challenges Dr. Khan’s testimony by asserting that he is not a
`computer scientist and not qualified to testify as to applications. Tr. 94:13–95:20.8
`This argument is misplaced. Dr. Khan testimony goes to scope of the hospitality
`industry as it would have been understood at the time of the invention of the ’850
`patent. We find Dr. Khan to be qualified to opine as to the boundaries of the
`hospitality industry and as to the types of applications that would be used within
`that industry at the relevant time.
`We find that the evidence supports the view that one of ordinary skill in the
`art would have understood hospitality to be a broad term that includes travel and
`tourism as well as hotels and restaurants. As discussed above, we find that the
`specification treats restaurants and hospitality as separate but related industries.
`Patent Owner includes hotels and restaurants in its view of hospitality, however,
`hotels and restaurants are part of travel and tourism. See, e.g., Ex. 2040, 403–04
`(noting that “travel service providers” includes car rental companies, hotels, and
`restaurants). The specification focuses on hospitality industry problems involving
`the use of paper based systems for “ordering, reservations and wait-list
`
`
`8 Petitioner submitted Dr. Khan’s declaration along with its Reply. Thus, Patent
`Owner could not have addressed this declaration in its Patent Owner Response.
`
`
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`management.” Ex. 1001, 1:21–24. Brandt describes ordering (specifying the type
`of car to be rented) (Ex. 1005 ¶ 90) and reservations (id. ¶¶ 89, 91) in the rental car
`context. Dittmer intertwines food, beverage, lodging, travel, and tourism because
`these industries are related and interdependent. Thus, we determine that the
`broadest reasonable interpretation of hospitality would include travel and tourism
`related businesses such as car rental businesses.
`2. “web page”
`We construed the term “web page” to mean “a document, with associated
`files for graphics, scripts, and other resources, accessible over the internet and
`viewable in a web browser” in our Decision on Institution. Dec. 10–11. Based on
`our review of the full record of this proceeding we see no reason to modify that
`construction. See PO Resp. 4–5; Reply 4.
`3. other terms
`Patent Owner proposes constructions for various other claim terms. See PO
`Resp. 3–15. We find, however, that these terms need no explicit construction. See
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`Proposed Grounds of Obviousness over Brandt and NetHopper
`B.
`Petitioner argues that claims 12–16 would have been obvious over the
`teachings of Brandt and NetHopper. Pet. 45–64. Patent Owner disputes
`Petitioner’s contentions, arguing that these asserted grounds do not render obvious
`the challenged claims. PO Resp. 24–51. We have reviewed the Petition, the
`Patent Owner’s Response, Petitioner’s Reply, as well as the relevant evidence
`discussed in those papers and other record papers. As described in further detail
`below, we determine the record supports Petitioner’s contentions and adopt
`Petitioner’s contentions discussed below as our own. For reasons that follow, we
`
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`determine that Petitioner has shown by a preponderance of the evidence that claims
`12–16 are unpatentable as obvious over the teachings of Brandt and NetHopper.
`1. Overview of Brandt
`Brandt is a Japanese patent publication directed to “provid[ing] the
`capability to easily access many different application programs over the [world
`wide web (“WWW”)] via a common user interface.” Ex. 1005, Abstract. Figure 3
`of Brandt is reproduced below.
`
`
`Figure 3, reproduced above, is a block diagram of Brandt’s system that allows
`access to a software application over the WWW. Id. at Fig. 3. Client workstation
`210 “may be any computer that is capable of providing access to the WWW by
`using web browser 212 [including] handheld, portable or laptop computers,
`standard desktop computer systems, [and] Personal Digital Assistants (PDAs).” Id.
`¶ 14. Data such as HTML code, graphics, audio, and Java applets may be
`transmitted to and displayed on the client workstation 210. Id. ¶ 16.
`Web server computer system 220 typically outputs pages of HTML
`data to WEB browser 212 in response to requests by web browser 212
`that reflect action taken by the user at client workstation 210. In
`addition, as explained above, web server computer system 220 may
`output other types of data to web browser 212 as well.
`
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`Id. ¶ 17. This data output to the client workstations may include dynamic web
`pages. Id. When a user submits a request over the WWW, the web server
`application receives data from web browser 212. Id. ¶¶ 31, 79. If the user request
`requires access to an application, the web server application will pass data to CGI
`420. Id. ¶ 80. CGI 420 is a “Common Gateway Interface (CGI) module[]. CGI
`modules may be used as an interface between web server application 222 and other
`software applications.” Id. ¶ 19. “CGIs allow web servers to distribute dynamic
`data from other software applications.” Id. CGI 420 is a component of Gateway
`332. Id. ¶¶ 77–78. Gateway 332 utilizes conversation identifiers “to control the
`flow of data between the various users and software application 342.” Id. ¶ 64.
`Brandt’s system also includes an API that is “used by program developers to
`provide access to certain features of a given software application. Each application
`program will have APIs that allow third parties to access certain features, to
`interface the application program with other programs, and to provide access for
`end-users.” Id. ¶ 22.
`The application of Brandt’s system is explained through the description of
`an exemplary application, FlowMark. Id. ¶ 75. FlowMark is a work flow
`application that may be used in many contexts, but an example provided describes
`using FlowMark to implement and improve on the existing car rental process. Id.
`¶¶ 6, 78, 89–122. In this example, the user submits data via a reservation form on
`the rental car agency’s web site. Id. ¶ 90. The reservation form is generated from
`an HTML template sent from web server 222 to the browser on the client’s device.
`Id. ¶ 91. The user uses the form generated from the HTML template to submit data
`that is transmitted to the web server. Id. The HTML template also may contain
`variables including variables to substitute or replicate Java script variables or
`templates. Id. ¶¶ 95, 108. The variables could be used to start the FlowMark
`
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`application or “retrieve information from different software applications.” Id. An
`application may be invoked to perform a task such as querying FlowMark database
`438 to determine if the person renting the car is an existing customer of the car
`rental agency, updating the database to indicate that a car has been reserved, or
`determining that a rental request should be routed to a human operator for further
`processing. Id. ¶¶ 101–102.
`2. Overview of NetHopper
`NetHopper is a user’s manual that discusses NetHopper version 3.2. Ex.
`1006. The NetHopper application is a web browser for the Newton® PDA. Id. at
`1. Petitioner provides a Declaration from Wayne Yurtin, an author of NetHopper,
`in which he testifies regarding the public accessibility of the NetHopper manual.
`Ex. 1007 ¶¶ 18–21. NetHopper discloses a mobile browser that is capable of
`viewing most HTML web pages, storing pages for later viewing, storing
`bookmarks, submitting forms via an HTML page, and retrieving email. Ex. 1006,
`1. NetHopper discusses using and creating HTML templates. Id. at 15, 17, 18.
`3. Analysis of Asserted Ground of Obviousness over Brandt and
`NetHopper
`(1) Independent Claim 12
`Petitioner has established that one of ordinary skill in the art would have
`learned all of the limitations of claim 12 of the ’850 patent from the teachings of
`Brandt and NetHopper. As discussed above, Brandt teaches a system that includes
`a central database, a wireless handheld device, a web server, and a web page. Pet.
`49–52. Brandt also teaches the existence of hospitality applications and data on
`these elements. Id; Reply 5–6. Specifically, Petitioner points to the web based car
`rental application and database as teaching hospitality applications and data. Pet.
`49–52; Ex. 1003 ¶¶ 172–173. Petitioner also directs us to Brandt’s discussion of
`dynamic web pages as teaching the claimed hospitality applications and data. Ex.
`
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`1003 ¶ 165 (quoting Ex. 1005 ¶ 17 (“Web server application 222 may dynamically
`build output data (e.g., an HTML page) from parts that it retrieves from within
`memory within web server computer system 220 or from other computer systems,
`or may simply pass through an HTML page or other information that has been
`developed at an earlier time or by another computer.”)); see also id. ¶ 169 (quoting
`Ex. 1005 ¶ 55 (“Gateway 332 then outputs the HTML template to web server 222
`with the real data substituted for the substation variables (step 731). Web server
`application 222 then provides the web server output data to web browser 212 (step
`733).”). Petitioner also points out that Brandt’s web pages can include executable
`applications such as Java applets and/or JavaScript. Pet. 52 (citing Ex. 1005 ¶¶ 16,
`107).9 Petitioner relies upon NetHopper’s discussion of caching a web page to
`teach storage of applications and data on a handheld device. Id. at 49–50 (citing
`Ex. 1006, 17–18). Petitioner argues that Brandt teaches the claimed
`synchronization through its discussion of HTML templates that include input
`and/or substitution variables. Id. at 55–56. These variables are used to pass data
`between the components of the system. Id. As noted in Brandt, the data
`transmitted between the elements of the system includes HTML code, graphics,
`audio, and Java applets. Ex. 1005 ¶ 16. Brandt teaches an API to facilitate
`communication between its system and “other programs.” Id. ¶ 22. Brandt also
`teaches the claimed communications control module through its discussion of
`Application Gateway 332. Id. at 53–54. Brandt’s gateway includes CGI module
`420 and FlowMark/Internet Gateway (FMIG) 430. Id. at 54 (citing Ex. 1005 ¶¶
`
`9 Patent Owner asserts that the Board sua sponte included Java in the asserted
`grounds. PO Resp. 31. We disagree. Petitioner cited Brandt’s use of Java in the
`Petition and supporting declaration. See Pet. 52, Ex. 1003 ¶¶ 182–183. Thus,
`Petitioner brought forth this evidence in its case-in-chief and Patent Owner was on
`notice that evidence was being cited against its claims. Dec. 26.
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`77–78, 82–83, 87, Figs. 4, 10). Petitioner asserts that the gateway “enables
`communication over a network between the clients and the software applications.”
`Id. (citing Ex. 1005 ¶¶ 56, 64, 68).
`Patent Owner asserts that Brandt fails to teach a hospitality application. PO
`Resp. 28. This argument is premised on Patent Owner’s construction of
`“hospitality.” Id. As discussed above in Section II.A.1, we find that the proper
`construction of this term includes car rental and thus, we are persuaded that Brandt
`teaches a hospitality application as recited in the claim 12.
`Patent Owner argues that the challenges based on Brandt should fail because
`Petitioner’s asserted grounds would require a change in Brandt’s principles of
`operation and Brandt teaches away from the synchronization core to the challenged
`claims. PO. Resp. 18–23. This argument is premised on Brandt’s usage of a
`common user interface being inconsistent with the ’850 patent’s core purpose of
`providing synchronization and consistency across an entire system of handheld
`devices and non PC standard displays. Id. at 19. As we noted in the Decision to
`Institute, “[t]he claims at issue, however, are not directed to a user interface and
`instead focus on the back end communications between the various system
`elements.” Dec. 30. Patent Owner asserts that it was error to exclude the user
`interface from the claims because “no system comprising the elements of claims
`12–16 could be ‘used’ without a user interface.” PO Resp. 22. It goes on to
`discuss the claims’ need for a web browser, which Patent Owner describes as a
`user interface. Id. There are, however, many unclaimed elements that would be
`required for the implementation of the challenged claims. For example, the claims
`do not discuss a power source and one would unquestionably be required for such
`a device to operate. The issue here is whether the user interface is claimed as part
`of the invention described in the challenged claims. These claims make no
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`reference to any elements of a user interface. The claims are instead directed to
`“[a]n information management and synchronous communications system.” Ex.
`1001, 16:1–2. Any differences between Brandt’s user interface and a user
`interface that may be described in the ’850 patent does not preclude Brandt’s
`communication system from rendering obvious the claimed communication
`system.
`Patent Owner argues that the proposed combination does not teach a central
`database. PO Resp. 25–26. Specifically, Patent Owner asserts that Brandt lacks
`the “central” aspect of the claim language. Id. at 26. Brandt describes FlowMark
`database 438, which is used to store information relating to the rental car process.
`Ex. 1005 ¶ 78. Database 438 also includes application data such as process models
`and status information. Id. In addition, Petitioner’s expert Dr. Abdelsalam Helal
`testified that at the time of the invention of the ’850 patent that it was known to
`store business logic such as procedures, triggers, and constraints in a database. Ex.
`1003 ¶ 156 (citing Ex. 1020, 8). Dr. Helal’s testimony in conjunction with the
`disclosures of Brandt evidence that one of