UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC., EVENTBRITE INC., and STARWOOD HOTELS & RESORTS
`WORLDWIDE, INC.,
`
`Petitioner
`v.
`
`AMERANTH, INC.,
`
`Patent Owner
`
`CASE CBM Unassigned
`
`Patent No. 6,871,325
`
`PETITION FOR
`COVERED BUSINESS METHOD REVIEW OF
`U.S. PATENT NO. 6,871,325
`
`Mail Stop “PATENT BOARD”
`Patent Trial & Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`i
`
`Petitioners' Exhibit 1069, Page 1
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`I.
`II.
`
`INTRODUCTION .......................................................................................... 1
`COMPLIANCE WITH FORMAL REQUIREMENTS ................................. 1
`A. Mandatory Notices Under 37 C.F.R. §§ 42.8(b)(1)-(4) ....................... 1
`1.
`Real Parties-In-Interest .............................................................. 1
`2.
`Related Matters .......................................................................... 2
`3.
`Lead and Back-up Counsel ........................................................ 4
`4.
`Power of Attorney and Service Information .............................. 4
`Proof of Service on the Patent Owner .................................................. 5
`B.
`Fee ........................................................................................................ 5
`C.
`III. GROUNDS FOR STANDING ....................................................................... 5
`A.
`The ’325 Patent Is a Covered Business Method Patent ....................... 6
`IV. STATEMENT OF PRECISE RELIEF REQUESTED .................................. 8
`V.
`IDENTIFICATION OF PATENTABILITY CHALLENGES ...................... 8
`VI. LEVEL OF ORDINARY SKILL IN THE ART ............................................ 9
`VII. SUMMARY OF THE ’325 PATENT .......................................................... 10
`A.
`Patent Specification and Claims ......................................................... 10
`B. Overview of the Prosecution History ................................................. 14
`C.
`Failure to Establish Conception and/or Reduction to Practice .......... 15
`1.
`Statement of the Law ............................................................... 16
`2.
`Patent Owner’s Declarations Do Not Establish
`Conception. .............................................................................. 17
`Patent Owner’s Declarations Do Not Establish Actual
`Reduction To Practice. ............................................................. 18
`Patent Owner’s Declarations do not establish diligence.......... 19
`4.
`VIII. CLAIM CONSTRUCTION ......................................................................... 21
`A.
`Legal Standard .................................................................................... 21
`B.
`Construction of the Terms Used in the Claims .................................. 21
`
`3.
`
`i
`
`Petitioners' Exhibit 1069, Page 2
`
`

`

`1.
`2.
`3.
`4.
`5.
`6.
`
` “web page” .............................................................................. 22
`“applications” (claims 11-13) .................................................. 22
`“application program interface” (claims 11-13) ...................... 22
`“communications control module” (claims 11-13) .................. 23
`“database” (claims 11-13) ........................................................ 23
`“data are synchronized between the central database, the
`at least one wireless handheld computing device, at least
`one Web server and at least one Web page” (claims 11-
`13) ............................................................................................ 23
`The Preamble is Not Limiting.................................................. 24
`7.
`IX. STATE OF THE ART PRIOR TO THE ’325 PATENT ............................. 24
`X.
`THERE IS A REASONABLE LIKELIHOOD THAT PETITIONER
`WILL PREVAIL WITH RESPECT TO AT LEAST ONE CLAIM OF
`THE ’325 PATENT. ..................................................................................... 27
`XI. DETAILED EXPLANATION OF THE GROUNDS FOR
`REJECTION ................................................................................................. 27
`A.
`Challenge to Claims 11, 13 and 15 Based on Inkpen, Nokia and
`Digestor. ............................................................................................. 28
`1.
`Summary of Inkpen .................................................................. 28
`2.
`Summary of Digestor ............................................................... 30
`3.
`Summary of Nokia ................................................................... 31
`4.
`Patentability Challenge Based on Inkpen, Nokia, and
`Digestor. ................................................................................... 32
`Challenge to Claim 12 Based on Inkpen, Nokia, Digestor and
`Flake ................................................................................................... 49
`Challenge to The Challenged Claims Based on DeLorme. ............... 51
`1.
`Summary of DeLorme ............................................................. 51
`2.
`Patentability Challenge Based on DeLorme. ........................... 52
`Challenge to The Challenged Claims Based on Blinn and
`Inkpen. ................................................................................................ 63
`1.
`Summary of Blinn .................................................................... 63
`2.
`Patentability Challenge Based on Blinn and Inkpen ............... 65
`
`B.
`
`C.
`
`D.
`
`ii
`
`Petitioners' Exhibit 1069, Page 3
`
`

`

`XII. NONE OF THE CHALLENGES ARE REDUNDANT .............................. 78
`XIII. CONCLUSION .............................................................................................79
`
`iii
`
`Petitioners' Exhibit 1069, Page 4
`
`

`

`TABLE OF EXHIBITS
`
`EXHIBIT
`
`DESCRIPTION
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`U.S. Patent No. 6,384,850 to McNally, et al.
`
`Turnbull Expert Declaration
`
`U.S. Patent No. 6,871,325 to McNally, et al.
`
`U.S. Patent No. 8,146,077 to McNally, et al.
`
`U.S. Patent No. 6,982,733 to McNally, et al.
`
`U.S. Patent Application Number 09/400,413 (the “’413
`application”) (’850 Application)
`U.S. Patent Application Number 10/015,729 (the “’729
`application”) (’325 Application)
`U.S. Patent Application Number 11/112,990 (the “’990
`application”) (’077 Application)
`U.S. Patent Application Number 10/016,517 (the “’517
`application”) (’733 Application)
`U.S. Patent No. 6,384,850 to McNally, et al. File History
`
`U.S. Patent No. 6,871,325 to McNally, et al. File History
`
`U.S. Patent No. 8,146,077 to McNally, et al. File History Excerpts
`
`CBM2014-00015 – CBM petition for U.S. Patent No. 6,384,850
`
`CBM2014-00016 – CBM petition for U.S. Patent No. 6,871,325
`
`CBM2014-00014 – CBM petition for U.S. Patent No. 8,146,077
`
`CBM2014-00013 – CBM petition for U.S. Patent No. 6,982,733
`
`iv
`
`Petitioners' Exhibit 1069, Page 5
`
`

`

`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`CBM2014-00015 – Paper 20 – ’850 Institution Decision
`
`CBM2014-00016 – Paper 19 – ’325 Institution Decision
`
`CBM2014-00014 – Paper 19 – ’077 Institution Decision
`
`CBM2014-00013 – Paper 23 – ’733 Institution Decision
`
`Inkpen, Gary, INFORMATION TECHNOLOGY FOR TRAVEL AND
`TOURISM (2d ed. 1998)
`Timothy Bickmore, Digestor Device Independent Access to the
`World Wide Web, Computer Networks and ISDN Systems 29,
`1075-1082 (1997)
`Nokia 9000i Communicator Owner’s Manual (1997)
`
`U.S. Pat. No. 5,948,040 to DeLorme et al.
`
`U.S. Pat. No. 6,058,373 to Blinn et al.
`
`McFadden et al., MODERN DATABASE MANAGEMENT (5th ed.
`May, 1999), Chapter 11
`Micros 8700 HMS Version 2.10 User’s Manual
`
`Aronson, Larry, HTML Manual of Style (1994)
`
`Jesitus, “Wireless Technology Keeps Customers In Order,”
`Hospitality Technology (January 1977)
`Ameranth Inc. v. Apple Inc., Case No. 3-12-cv-02350 (S.D. Cal.,
`filed Sept. 26, 2012) (ECF No. 7) and Ameranth Inc. v. Starwood
`Hotels & Resorts Worldwide, Inc., Case No. 12-cv-1629 (S.D.
`Cal. Filed June 29, 2012) (ECF No. 1)
`Complaints filed by Ameranth related to Ameranth Inc. v. Apple
`
`v
`
`Petitioners' Exhibit 1069, Page 6
`
`

`

`1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`1037
`
`1038
`
`1039
`
`1040
`
`1041
`
`1042
`
`1043
`
`1044
`
`1045
`
`1046
`
`1047
`
`Inc.
`Ameranth, Inc. v. Menusoft Sys. Corp., et al., No. 2:07-
`CV-271, ECF No. 106 (E.D. Tex. Apr. 21,2010)
`Ameranth, Inc. v. Par Technology Corp., et al., 2:10-CV-294-
`JRG-RSP (E.D. Tex.) ECF No. 169 (Claim Construction)
`Definitions from Microsoft Computer Dictionary (4th ed. 1999)
`
`Transcript of Oral Arguments in CBM2014-00013 (Paper No. 34)
`
`American Heritage Dictionary (3d ed. 1992) (for the definition of
`“cascade”)
`http://catalogue.pearsoned.co.uk/educator/product/Information-
`Technology-for-Travel-and-Tourism/9780582310025.page
`U.S. Patent No. 5,897,622 to Blinn et al.
`
`U.S. Patent No. 5,991,739 to Cupps et al.
`
`U.S. Patent No. 6,107,944 to Behr
`
`U.S. Patent No. 5,912,743 to Kinebuchi et al.
`
`U.S. Patent No. 5,724,069 to Chen et al.
`
`U.S. Patent No. 6,920,431 to Showghi et al.
`
`U.S. Patent No. 6,301,564 to Halverson et al.
`
`Complaint for priority in the IPDEV suit – 14-cv-1303
`
`U.S. Patent No. 5,937, 041 to Cardillo
`
`Micros Systems Inc. “POS Configuration User’s Guide: 3700
`POS”
`
`vi
`
`Petitioners' Exhibit 1069, Page 7
`
`

`

`1048
`
`1049
`
`1050
`
`1051
`
`1052
`
`1053
`
`1054
`
`1055
`
`1056
`
`1057
`
`1058
`
`1059
`
`1060
`
`1061
`
`1062
`
`U.S. PG Pub 2002/0059405 to Angwin
`
`WIPO Patent Publication No. WO 97/27556 to Flake et al.
`
`U.S. Patent No. 5,023,438 to Wakatsuki et al.
`
`U.S. Patent No. 6,300,947 to Kanevsky et al.
`
`Ameranth, Inc. v. Menusoft Systems Corp., Ameranth Opp. to
`non-party Seamless North America, LLC’s motion for leave to
`file amicus curiae brief, E.D. Tex. Dkt. No. 2:07-cv-00271 at ECF
`No. 336.
`Micros Hand-Held Touchscreen Pre-Release Information (Sept. 8,
`1992)
`Thesaurus.com Synonyms for “Ticket”
`
`U.S. Patent No. 8,738,449 to Cupps, et al.
`
`U.S. Patent No. 5,974,238 to Chase Jr.
`
`Ameranth v. Menusoft Systems Corp., 07-cv-271-RSP, Dkt. 281
`(E.D. Tex. 2010) – Opening post-trial JMOL Brief
`Ameranth v. Menusoft Systems Corp., 07-cv-271-RSP, Dkt. 281
`(E.D. Tex. 2010) Opposition JMOL Brief
`Ameranth v. Menusoft Systems Corp., 07-cv-271-RSP, Dkt. 281
`(E.D. Tex. 2010) Order Denying Ameranth’s Motion for JMOL
`Ameranth July 22, 2013 Infringement Contentions against Apple
`Inc.
`U.S. Patent No. 8,738,449 File History
`
`Sep. 13, 2010 Trial Testimony. Ameranth v. MenuSoft, 07-cv-
`
`vii
`
`Petitioners' Exhibit 1069, Page 8
`
`

`

`1063
`
`1064
`
`1065
`
`1066
`
`1067
`
`271-RSP.
`Sep. 14, 2010 Trial Testimony. Ameranth v. MenuSoft, 07-cv-
`271-RSP.
`Sep. 15, 2010 Trial Testimony. Ameranth v. MenuSoft, 07-cv-
`271-RSP.
`Bruce Brown, “First Looks: Windows CE 2.0 Cornucopia,” PC
`Magazine (June 30, 1998)
`Graf, “Modern Dictionary of Electronics” (7th ed. 1999).
`
`Matthews & Poulsen, “FrontPage 98: The Complete Reference”
`(January 1998)
`
`viii
`
`Petitioners' Exhibit 1069, Page 9
`
`

`

`I.
`
`
`
`INTRODUCTION
`
`Covered business method review of claims 11-13 and 15 of U.S. Patent No.
`
`6,871,325 (Exhibit 1003) (hereinafter “the ’325 patent”) is hereby requested. The
`
`’325 patent has been asserted against Apple Inc. (“Apple”), Eventbrite Inc.
`
`(“Eventbrite”) and Starwood Hotels & Resorts Worldwide, Inc. (“Starwood”)
`
`(collectively, the “Petitioner”) and at least 29 other different pending lawsuits.
`
`Exs. 1030, 1031.
`
`
`
`The ’325 patent, which claims priority to an application filed in 1999 after
`
`the Internet had become widely known and used, relates generally to the field of
`
`menu generation and synchronous communication. See Ex. 1018 at 3. Claims 11-
`
`13 and 15 of the ’325 patent (the “Challenged Claims”) relate to an information
`
`management and synchronous communications system for use with wireless
`
`handheld computing devices. Ex. 1003 at 17:4-18:38. As explained below, each
`
`of the particular techniques recited in the claims had been developed and was well
`
`known in the menu generation and synchronous communication field long before
`
`the application for the ’325 patent was filed. Indeed, many of these techniques
`
`were already used in the market. See Exs. 1021-25. The Challenged Claims of the
`
`’325 patent are therefore unpatentable over the prior art identified below.
`
`II.
`
`COMPLIANCE WITH FORMAL REQUIREMENTS
`
`A. Mandatory Notices Under 37 C.F.R. §§ 42.8(b)(1)-(4)
`
`1.
`
`Real Parties-In-Interest
`
`1
`
`Petitioners' Exhibit 1069, Page 10
`
`

`

`
`
`
`
`The real parties-in-interest are Apple, Eventbrite, and Starwood.
`
`2.
`
`Related Matters
`
`Petitioner, along with a number of other parties, previously sought Covered
`
`Business Method (“CBM”) Review of the ’325 patent in CBM2014-00016 under
`
`35 U.S.C. §§ 101 and 112. The Board, however, only granted review of claims 1-
`
`10 of the ’325 patent under § 101 grounds. Ex. 1018 at 27.
`
`Ameranth, Inc. (“Patent Owner”) has asserted the ’325 patent in the
`
`following 32 patent infringement lawsuits, including the suit filed against
`
`Petitioner. To the best of Petitioner’s knowledge, the following is a list of the
`
`defendants and the civil action numbers for the pending matters (Ameranth, Inc. is
`
`the lone plaintiff in each case): Apple Inc., Case No. 3-12-cv-02350 (S.D. Cal.,
`
`filed Sept. 26, 2012); Starbucks Corp., Case No. 3-13-cv-01072 (S.D. Cal., filed
`
`May 6, 2013); TicketBiscuit, LLC, Case No. 3-13-cv-00352 (S.D. Cal., filed Feb.
`
`13, 2013); Ticketfly, Inc., Case No. 3-13-cv-00353(S.D. Cal., filed Feb. 13, 2013);
`
`Eventbrite, Inc., Case No. 3-13-cv-00350(S.D. Cal., filed Feb. 13, 2013); Hilton
`
`Resorts Corp. et al, Case No. 3-12-cv-01636 (S.D. Cal., filed July 2, 2012); Kayak
`
`Software Corp., Case No. 3-12-cv-01640 (S.D. Cal., filed June 29, 2012);
`
`Usablenet, Inc., Case No. 3-12-cv-01650(S.D. Cal., filed June 29, 2012); Starwood
`
`Hotels & Resorts Worldwide, Inc., Case No. 3-12-cv-01629 (S.D. Cal., filed June
`
`29, 2012); Hotels.com, LP, Case No. 3-12-cv-01634 (S.D. Cal., filed June 29,
`
`2
`
`Petitioners' Exhibit 1069, Page 11
`
`

`

`2012); Orbitz, LLC, Case No. 3-12-cv-01644(S.D. Cal., filed June 29, 2012); ATX
`
`Innovation, Inc., Case No. 3-12-cv-01656 (S.D. Cal., filed June 29, 2012); Best
`
`Western International, Inc., Case No. 3-12-cv-01630 (S.D. Cal., filed June 29,
`
`2012); NAAMA Networks, Inc. et al, Case No. 3-12-cv-01643 (S.D. Cal., filed
`
`June 29, 2012); Hotel Tonight, Inc., Case No. 3-12-cv-01633 (S.D. Cal., filed June
`
`29, 2012); Travelocity.com, LP, Case No. 3-12-cv-01649 (S.D. Cal., filed June 29,
`
`2012); Expedia, Inc., Case No. 3-12-cv-01654 (S.D. Cal., filed June 29, 2012);
`
`Hyatt Corporation, Case No. 3-12-cv-01627 (S.D. Cal., filed June 29, 2012);
`
`Hotwire, Inc., Case No. 3-12-cv-01653 (S.D. Cal., filed June 29, 2012);
`
`Wanderspot LLC, Case No. 3-12-cv-01652 (S.D. Cal., filed June 29, 2012);
`
`Micros Systems, Inc., Case No. 3-12-cv-01655 (S.D. Cal., filed June 29, 2012);
`
`Marriott International, Inc. et al, Case No. 3-12-cv-01631 (S.D. Cal., filed June
`
`29, 2012); Mobo Systems, Inc., Case No. 3-12-cv-01642 (S.D. Cal., filed June 29,
`
`2012); Fandango, Inc., Case No. 3-12-cv-01651 (S.D. Cal., filed June 29, 2012);
`
`StubHub, Inc., Case No. 3-12-cv-01646(S.D. Cal., filed June 29, 2012);
`
`TicketMaster, LLC et al, Case No. 3-12-cv-01648 (S.D. Cal., filed June 29, 2012);
`
`Agilysys, Inc., Case No. 3-12-cv-00858 (S.D. Cal., filed April 6, 2012); Domino’s
`
`Pizza, LLC et al, Case No. 3-12-cv-00733 (S.D. Cal., filed March 27, 2012); Pizza
`
`Hut, Inc. et al, Case No. 3-12-cv-00742 (S.D. Cal., filed March 27, 2012); Papa
`
`John’s USA, Inc. 12-cv-0729 (S.D. Cal. Filed March 27, 2012); and OpenTable,
`
`3
`
`Petitioners' Exhibit 1069, Page 12
`
`

`

`Inc., Case Nos. 3-12-cv-00731 and 3-13-cv-01840 (S.D. Cal., filed March 27, 2012
`
`and Aug. 8, 2013, respectively).
`
`3.
`
`Lead and Back-up Counsel
`
`Lead Counsel for Petitioner is James M. Heintz, DLA Piper LLP (US), Reg.
`
`No. 41,828, who can be reached by email at: jim.heintz@dlapiper.com, by phone
`
`at 703-773-4148, by fax at 703-773-5200, and by mail and hand delivery at: DLA
`
`Piper LLP (US) 11911 Freedom Drive, Suite 300, Reston, VA 20190. Backup
`
`counsel for Petitioner are Robert C. Williams; who can be reached by email at:
`
`robert.williams@dlapiper.com; by mail and hand delivery at: DLA Piper LLP (US)
`
`401 B Street, Suite 1700, San Diego, California, 92101-4297; by phone at 619-
`
`699-2820, and by fax at 619-699-2701; and Ryan W. Cobb, Reg. No. 65,498; who
`
`can be reached by email at: ryan.cobb@dlapiper.com; by mail and hand delivery
`
`at: DLA Piper LLP (US) 2000 University Avenue, East Palo Alto, California,
`
`94303-2214; by phone at 650-833-2235, and by fax at 650-833-2001.
`
`Petitioner hereby requests authorization to file a motion for Robert C.
`
`Williams to appear pro hac vice, as Mr. Williams is an experienced litigating
`
`attorney, is counsel for Petitioner in the above litigation, and as such has an
`
`established familiarity with the subject matter at issue in this proceeding.
`
`4.
`
`Power of Attorney and Service Information
`
`
`
`Powers of attorney are being filed with the designation of counsels in
`
`4
`
`Petitioners' Exhibit 1069, Page 13
`
`

`

`accordance with 37 C.F.R. § 42.10(b). Service information for lead and back-up
`
`counsels is provided in the designation of lead and back-up counsel above. Service
`
`of any documents via hand delivery may be made at the postal mailing address of
`
`the respective lead and back-up counsels designated above. Petitioner hereby
`
`consents to electronic service.
`
`B.
`
`Proof of Service on the Patent Owner
`
`
`
`As identified in the attached Certificate of Service, a copy of this Petition in
`
`its entirety is being served to the Patent Owner’s attorney of record at the address
`
`listed in the USPTO’s records by overnight courier pursuant to 37 C.F.R. § 42.6.
`
`C.
`
`Fee
`
`
`
`The undersigned authorizes the Director to charge the fee specified by 37
`
`C.F.R. § 42.15(b) and any additional fees that might be due in connection with this
`
`Petition to Deposit Account No. 50-1442.
`
`III. GROUNDS FOR STANDING
`
`
`
`In accordance with 37 C.F.R. § 42.304(a), the Petitioner certifies that the
`
`’325 patent is available for CBM review because, as explained further below, the
`
`’325 patent constitutes a covered business method patent as defined by Section 18
`
`of the America Invents Act (see AIA § 18(d)(1)), and further certifies that the
`
`Petitioner is not barred or estopped from requesting CBM review of the
`
`Challenged Claims of the ’325 patent on the grounds identified in this Petition.
`
`Petitioner is eligible to file this petition because Ameranth has sued Petitioner for
`
`5
`
`Petitioners' Exhibit 1069, Page 14
`
`

`

`alleged infringement of the ’325 patent. See Ex. 1030. Additionally, Petitioner is
`
`not estopped from pursuing this petition under 37 C.F.R. § 42.73(d)(1) because the
`
`Board has not instituted a trial and thus has not issued a final written decision on
`
`the Challenged Claims.
`
`A.
`
`The ’325 Patent Is a Covered Business Method Patent
`
`A “covered business method patent” is a patent that “claims a method or
`
`corresponding apparatus for performing data processing or other operations used in
`
`the practice, administration or management of a financial product or service,
`
`except that the terms does not include patents for technological inventions.” AIA
`
`§ 18(d)(1). This definition was drafted to encompass patents “claiming activities
`
`that are financial in nature, incidental to a financial activity or complementary to a
`
`financial activity.” Final Rule, 77 Fed. Reg. 48,734, 48735 (Aug. 14, 2012). A
`
`single claim directed toward a covered business method makes every claim of the
`
`patent eligible for CBM review, even if a Petition does not seek review of that
`
`claim. See CRS Advanced Technologies, Inc. v Frontline Technologies, Inc.,
`
`CBM2012-0005, Paper 17 at 6-9 (granting CBM review of claims 3, 6, 7, 16, 24
`
`and 33 while relying in part on recitation of “retail bank” in claim 1 to fulfill the
`
`requirement that the patent be directed to a financial activity).
`
`As the Board has previously determined, at least claim 1 of the ’325 patent
`
`qualifies as a covered business method. See Ex. 1018 at 11. Claim 1 is directed
`
`6
`
`Petitioners' Exhibit 1069, Page 15
`
`

`

`toward a “system for generating and transmitting menus” and recites a second
`
`menu “applicable to a predetermined type of ordering.” Ex. 1003 at 14:60-61 and
`
`15:22-23. The “ordering” in this phrase relates to the ordering of a meal at a
`
`restaurant (Ex. 1003 at Abstract), and therefore is at least incidental to and
`
`complementary to the sale of the meal. Thus, the subject matter of at least claim 1
`
`is directed toward a system that performs a covered business method and therefore
`
`satisfies the first requirement of AIA § 18(d)(1). Ex. 1018 at 11.
`
`Claim 1 does not fit within the exception to a covered business method as
`
`defined by AIA § 18(d)(1) because it is not directed toward a technological
`
`invention. To qualify as a technological invention, the subject matter as a whole
`
`must recite a technological feature that (1) is novel and unobvious over the prior
`
`art (the “first prong”), and (2) solves a technical problem using a technical solution
`
`(the “second prong”). Id. at 11. Both prongs must be met for the exception to
`
`apply. Id. The Board has previously found that neither prong applies to claim 1 of
`
`the ’325 patent. See id. Furthermore, the Office Patent Trial Practice Guide states
`
`that “reciting the use of known prior art technology to accomplish a process or
`
`method, even if that process or method is novel and non-obvious” does not
`
`typically render a patent a technological invention. Patent Trial Practice Guide, 77
`
`Fed. Reg. 48,756, 48,763-64 (Aug. 14, 2012). The ’325 patent makes abundantly
`
`clear that the system of claim 1 utilizes nothing but known prior art technology:
`
`7
`
`Petitioners' Exhibit 1069, Page 16
`
`

`

`The preferred embodiment of the present invention uses typical
`hardware elements in the form of a computer workstation, operating
`system and application software elements which configure the hardware
`elements for operation in accordance with the present invention. Ex.
`1003 at 5:39-43.
`The preferred embodiment also encompasses a typical file server
`platform including hardware such as a CPU, “e.g., a Pentium®
`microprocessor, RAM, ROM, hard drive, modem, and optional
`removable storage devices, e.g., floppy or CD ROM drive.” Id. at 5:43-
`50.
`The software applications for performing the functions falling within
`the described invention can be written in any commonly used computer
`language. The discrete programming steps are commonly known and
`thus programming details are not necessary to a full description of the
`invention. Id. at 11:56-61.
`
`Accordingly, at least claim 1 of the ’325 patent does not satisfy the technological
`
`invention exception, and the ’325 patent is therefore eligible for covered business
`
`method review.
`
`IV.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`
`
`In accordance with 37 C.F.R. § 42.22, the Petitioner respectfully requests
`
`that the Challenged Claims of the ’325 patent be invalidated for the reasons set
`
`forth below.
`
`V.
`
`
`
`IDENTIFICATION OF PATENTABILITY CHALLENGES
`
`In accordance with 35 U.S.C. § 321 and 37 C.F.R. § 42.304(b), CBM review
`
`8
`
`Petitioners' Exhibit 1069, Page 17
`
`

`

`of the Challenged Claims is requested in view of the following grounds:
`
`
`
`A.
`
`Claims 11, 13 and 15 are unpatentable under 35 U.S.C. § 103 (pre-
`
`AIA) as being obvious over Inkpen, Gary, INFORMATION TECHNOLOGY FOR
`
`TRAVEL AND TOURISM (2d ed. 1998) (“Inkpen”) (Ex. 1021, “Inkpen”), in view of
`
`Timothy Bickmore, “Digestor: Device Independent Access to the World Wide
`
`Web,” Computer Networks and ISDN Systems 29, 1075-82 (1997) (Ex. 1022,
`
`“Digestor”) and the Nokia 9000i Communicator Owner’s Manual (1997) (Ex.
`
`1023, “Nokia”).
`
`B.
`
`Claim 12 is unpatentable under 35 U.S.C. § 103 (pre-AIA) as being
`
`obvious over Inkpen, Digestor, Nokia and WIPO Patent Publication No. WO
`
`97/27556 to Flake et al. (Ex. 1049, “Flake”).
`
`
`
`C.
`
`Claims 11, 13 and 15 are unpatentable under 35 U.S.C. § 103 (pre-
`
`AIA) as being obvious in view of U.S. Pat. No. 5,948,040 (Ex. 1024, “DeLorme”).
`
`
`
`D.
`
`The Challenged Claims are unpatentable under 35 U.S.C. § 103 (pre-
`
`AIA) as being obvious over U.S. Pat. No. 6,058,373 to Blinn et al. (Ex. 1025,
`
`“Blinn”) in view of Inkpen.
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`
`
`
`A person of ordinary skill in the art at the time of the alleged invention of
`
`the ’325 patent (hereinafter a “POSITA”) patent had a Bachelor’s degree in either
`
`electrical engineering or computer science and two years of experience in the fields
`
`9
`
`Petitioners' Exhibit 1069, Page 18
`
`

`

`of developing software for wireless networks and devices, developing Internet-
`
`based systems or applications, or an equivalent experience
`
`in software
`
`development of up to 5 years. Ex. 1002 ¶¶ 71-72.
`
`VII. SUMMARY OF THE ’325 PATENT
`
`A.
`
`Patent Specification and Claims
`
`
`
`The ’325 patent, entitled “Information Management and Synchronous
`
`Communications System With Menu Generation,” issued on March 22, 2005, and
`
`arises from a patent application, No. 10/015,729 (the “’729 application”), which
`
`was filed on Nov. 1, 2001. Ex. 1003 at 1. The patent was assigned upon issuance
`
`to Ameranth, Inc. Upon information and belief, this patent is currently assigned to
`
`Patent Owner.
`
`
`
`The ’325 patent claims priority to, and is a continuation of, patent
`
`application No. 09/400,413, filed on Sept. 21, 1999, now U.S. Pat. No. 6,384,850
`
`(Ex. 1001, the “’850 patent”). No other priority is claimed. Thus, Sept. 21, 1999
`
`is the earliest possible effective filing date of the ’325 application.
`
`
`
`A primary theme of the ’325 patent, and the “principal object” of the alleged
`
`invention therein, is to provide a system that “facilitates user-friendly and efficient
`
`generation of computerized menus for restaurants and other applications that
`
`utilize equipment with non-PC-standard graphical formats, display sizes and/or
`
`applications.” Ex. 1003 at 2:56-62. Menu generation is the subject matter of
`
`10
`
`Petitioners' Exhibit 1069, Page 19
`
`

`

`claims 1-10, which are the subject matter of a prior CBM proceeding (CBM2014-
`
`00016), and a large majority of the specification is devoted to describing such
`
`menus and how they are generated. Ex. 1002 ¶¶ 57-65.
`
`The Challenged Claims of the ’325 patent at issue here, however, do not
`
`recite “menu” or any other limitations relating to menu generation. See, Ex. 1003
`
`at Claims 11-13 and 15. The claims are instead directed toward an “information
`
`management and synchronous communications system.” Id. The system of the
`
`Challenged Claims includes “a central database,” “at least one handheld wireless
`
`computing device,” “at least one web server,” “at least one web page,” and “a
`
`communications control module.” See e.g., Ex. 1003 at 17:7-17. “Hospitality
`
`applications and data” are stored on the handheld wireless computing device, the
`
`web server and the web page, and the central database. Id. The hospitality
`
`applications and data are “synchronized” between the central database, the web
`
`server, the web page and the wireless handheld computing device. Id. at 17:18-20;
`
`see also Ex. 1018 at 4-5. Ex. 1002 ¶ 59.
`
`The ’325 patent does not provide any diagram of the system formed by these
`
`components, and independent claims 11-13 do not specify any relationship
`
`between these components. Thus, it is not clear to one of ordinary skill in the art
`
`how these various components are connected to each other and/or interact with
`
`each other. Ex. 1002 ¶ 60.
`
`11
`
`Petitioners' Exhibit 1069, Page 20
`
`

`

`For example, the “application program interface” (“API”) recited in claims
`
`11-13 is mentioned only three times in the specification, and all we are told about
`
`the API is that it is a feature that is missing from software for fully realizing the
`
`potential of wireless handheld computing devices and that it “enables third parties
`
`such as point of sale (“POS”) companies, affinity program companies and internet
`
`content providers to fully integrate with computerized hospitality applications.”
`
`Ex. 1003 at 2:9-19; 4:1-5, and 11:28-31. The specification of the ’325 patent does
`
`not specify whether this application program interface software runs on the
`
`wireless handheld computing device or one of the other devices recited in claims
`
`11-13 and does not explain what functions the API performs or how it enables POS
`
`companies, affinity program companies, or internet content providers to “fully
`
`integrate” with the computerized hospitality applications that claims 11-13 require
`
`be stored on the web page, the web server and the wireless handheld computing
`
`device. Accordingly, the location where the API resides in the system of claims
`
`11-13 and what the API does is unclear. Ex. 1002 ¶ 61.
`
`Similarly, the specification leaves unanswered several questions concerning
`
`the “communications control module.” This module is described in the ’325 patent
`
`specification as a program to monitor all devices in the network, receiving and
`
`decoding messages sent between the devices, and routing the messages to the
`
`appropriate device. Ex. 1003 at 9:35-63. The communications control module is
`
`12
`
`Petitioners' Exhibit 1069, Page 21
`
`

`

`also described as a “layer that sits on top of any communications protocol” that
`
`“provides a single point of entry for all hospitality applications to communicate
`
`with one another wirelessly or over the web.” Ex. 1003 at 11:37-43. The
`
`specification does not explain if the communications control module “layer” is a
`
`single piece of software that runs on a device (sometimes referred to in the art as a
`
`communications controller or front end processor) or multiple instances of
`
`software each of which runs on a respective web page, web server, wireless
`
`handheld computing device and central database. Ex. 1002 ¶ 62. The similarity of
`
`the phrase “communications control module” to the art-recognized phrase
`
`“communications controller” and the description of the communications control
`
`module as a single point of entry and as performing a routing function suggest the
`
`former, whereas the description of a “layer that sits on top of any communications
`
`protocol” suggests the latter. Ex. 1002 ¶ 62.
`
`
`
`The specification also states that the “single point of entry” that is provided
`
`by the communications control module “works to keep all wireless handheld
`
`devices and linked Web sites in synch with the [central database] so that the
`
`different components are in equilibrium at any given point in time and an overall
`
`consistency is achieved.” Ex. 1003 at 11:45-49. The specification is silent,
`
`however, as to exactly what “work” the communications control module does to
`
`keep all wireless handheld devices and linked websites in synch with the central
`
`13
`
`Petitioners' Exhibit 1069, Page 22
`
`

`

`database. Thus, it is not clear if this “work” is simply facilitating communications
`
`between these components, or is some additional functionality. Ex. 1002 ¶ 63.
`
`Claims 11-13 further requires that the communications control module “is an
`
`interface between the hospitality applications and any other communications
`
`protocol” Ex. 1003 at 17:23-25, 18:6-8, and 18:29-31. This requirement is
`
`problematic for the reasons discussed below and thus creates additional confusion
`
`as to the nature of the communications control module. Ex. 1002 ¶ 65.
`
`B.
`
`Overview of the Prosecution History
`
`In what was essentially a first action allowance, the inventors filed the ’729
`
`application on November 1, 2001 and contemporaneously requested a preliminary
`
`amendment to the claims intending to overcome rejections from the previous
`
`examination of the ’850 patent to which the ’729 application claimed priority. Ex.
`
`1011 at 6. On Nov. 16, 2004, the applicants filed a terminal disclaimer agreeing to
`
`limit the enforceability of the ’729 application to that of the ’850 patent. Ex. 1011
`
`at 404-09.
`
`Following this, the examiner issued a notice of allowance on December 7,
`
`2004. Ex. 1011 at 413-18. In the Notice of Allowance, the examiner incorrectly
`
`cited a single purportedly distinct feature for “each independen