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. 8,146,077
`
`PETITION FOR
`COVERED BUSINESS METHOD REVIEW OF
`U.S. PATENT NO. 8,146,077
`
`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 1070, Page 1
`
`

`
`TABLE OF CONTENTS
`
`Page
`
`I.
`II.
`
`INTRODUCTION .......................................................................................... 1
`COMPLIANCE WITH FORMAL REQUIREMENTS ................................. 2
`A. Mandatory Notices Under 37 C.F.R. §§ 42.8(b)(1)-(4) ....................... 2
`1.
`Real Parties-In-Interest .............................................................. 2
`2.
`Related Matters .......................................................................... 2
`3.
`Lead and Back-up Counsel ........................................................ 4
`4.
`Power of Attorney and Service Information .............................. 5
`Proof of Service on the Patent Owner .................................................. 5
`B.
`Fee ........................................................................................................ 6
`C.
`III. GROUNDS FOR STANDING ....................................................................... 6
`A.
`The ’077 Patent Is a Covered Business Method Patent ....................... 6
`IV. STATEMENT OF PRECISE RELIEF REQUESTED .................................. 9
`V.
`IDENTIFICATION OF PATENTABILITY CHALLENGES ...................... 9
`VI. LEVEL OF ORDINARY SKILL IN THE ART .......................................... 10
`VII. SUMMARY OF THE ’077 PATENT .......................................................... 10
`A.
`Patent Specification and Claims ......................................................... 10
`B. Overview of the Prosecution History ................................................. 12
`VIII. CLAIM CONSTRUCTION ......................................................................... 15
`A.
`Legal Standard .................................................................................... 15
`B.
`Construction of the Terms Used In the Challenged Claims............... 15
`1.
`“hospitality application information” (claim 13) ..................... 16
`2.
`“synchronized” (claims 1, 9 and 13) ........................................ 16
`3.
`“cascaded sets” ......................................................................... 16
`4.
`“graphical user interface screens” (Claims 1, 9, and 13) ......... 16
`5.
`“unique to the wireless handheld computing device”
`(Claims 1, 9, and 13) ................................................................ 17
`
`i
`
`Petitioners' Exhibit 1070, Page 2
`
`

`
`B.
`
`“web page” (Claim 13) ............................................................ 17
`6.
`“database” (claims 2, 3, 10, 12-15) .......................................... 17
`7.
`“real time” (claims 1, 9 and 13) ............................................... 17
`8.
`The Preambles are Not Limiting. ............................................. 18
`9.
`IX. STATE OF THE ART PRIOR TO THE ’077 PATENT ............................. 18
`X.
`THERE IS A REASONABLE LIKELIHOOD THAT PETITIONER
`WILL PREVAIL ON AT LEAST ONE CLAIM OF THE ’077
`PATENT ....................................................................................................... 21
`XI. DETAILED EXPLANATION OF THE CHALLENGES ........................... 21
`A.
`Challenge to Claims 1-18 As Indefinite Due to Lack of
`Antecedent Basis For “the same connected system” Limitations ...... 21
`Challenge to All Claims Based on the Micros 8700 Pub and
`Digestor .............................................................................................. 22
`1.
`Summary of Micros 8700 Pub ................................................. 22
`2.
`Summary of Digestor ............................................................... 24
`3.
`Challenge Based on the Micros 8700 Pub and Digestor. ........ 25
`Challenge to Claims 13-18 Based on Blinn and Digestor. ................ 57
`1.
`Patent Owner’s Declarations Do Not Antedate Blinn ............. 58
`a.
`Statement of the Relevant Law ...................................... 58
`b.
`PO’s Declarations Do Not Establish Conception. ......... 59
`c.
`PO’s Declarations Do Not Establish Actual
`Reduction To Practice. .................................................. 60
`Patent Owner’s Declarations Do Not Establish
`Diligence ........................................................................ 61
`Summary of Blinn. ................................................................... 62
`2.
`Patentability Challenge Based on Blinn and Digestor ............. 63
`3.
`XII. THE CHALLENGES ARE NOT REDUNDANT ....................................... 79
`XIII. CONCLUSION .............................................................................................80
`
`C.
`
`d.
`
`ii
`
`Petitioners' Exhibit 1070, Page 3
`
`

`
`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 app)
`U.S. Patent Application Number 10/015,729 (the “’729
`application”) (325 app)
`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
`
`iii
`
`Petitioners' Exhibit 1070, Page 4
`
`

`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`CBM2014-00015 – Paper 20 – ’850 Institution Grant
`
`CBM2014-00016 – Paper 19 – ’325 Institution Grant
`
`CBM2014-00014 – Paper 19 – ’077 Institution Denial
`
`CBM2014-00013 – Paper 23 – ’733 Institution Grant
`
`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
`
`iv
`
`Petitioners' Exhibit 1070, Page 5
`
`

`
`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, 2010 WL 4952758, at 1-2 (E.D. Tex. Sept. 20,
`2010)
`2:10-CV-294-JRG-RSP (E.D. Tex.) 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
`“other” and “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”
`
`v
`
`Petitioners' Exhibit 1070, Page 6
`
`

`
`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
`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 JMOL
`Ameranth Infringement Contentions
`
`U.S. Patent No. 8,738,449 File History
`
`Sep. 13, 2010 Trial Testimony. Ameranth v. MenuSoft, 07-cv-
`271-RSP
`
`vi
`
`Petitioners' Exhibit 1070, Page 7
`
`

`
`1063
`
`1064
`
`1065
`
`1066
`
`1067
`
`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)
`
`vii
`
`Petitioners' Exhibit 1070, Page 8
`
`

`
`I.
`
`
`
`INTRODUCTION
`
`It is hereby requested that the United States Patent and Trademark Office
`
`proceed with a covered business method (“CBM”) review of claims 1-18 of U.S.
`
`Patent No. 8,146,077 (Ex. 1004,“the ’077 patent”). The ’077 patent has been
`
`asserted against Apple Inc. (“Apple”), Eventbrite Inc. (“Eventbrite”) and Starwood
`
`Hotels & Resorts Worldwide, Inc. (“Starwood”) (collectively, the “Petitioner”) and
`
`others in at least 34 different pending lawsuits. Exs. 1030, 1031.
`
`
`
`The ’077 patent, which claims priority to an application filed in 1999 after
`
`the Internet had become widely known and used, describes a real time synchronous
`
`communications system for configuring and transmitting “hospitality” menus (e.g.,
`
`restaurant menus) to client devices such as PCs and wireless handheld devices
`
`(e.g., smartphones and personal digital assistants) over the Internet. See Ex. 1019,
`
`CBM2014-00014, Paper 19 at 10-11. The general ideas claimed in the ’077 patent
`
`are that the menus displayed at the client and wireless handheld devices are
`
`synchronized to a master menu, and the menus are configured to be displayed as
`
`cascaded sets of linked graphical user interface screens so as to be suitable for
`
`display on the small screens of such wireless handheld devices.
`
`
`
`As explained below, these general ideas and each of the particular
`
`techniques recited in the claims of the ’077 patent had been developed and were
`
`well known long before the application for the ’077 patent was filed. In particular,
`
`1
`
`Petitioners' Exhibit 1070, Page 9
`
`

`
`synchronization of databases of any kind, include menu databases, had long been
`
`known in the art, as had the use of client PCs and wireless handheld computing
`
`devices for displaying menus that were synchronized to a master menu. The re-
`
`formatting of web documents, including re-formatting into cascaded sets of linked
`
`graphical user interface screens, for the small screen sizes of wireless handheld
`
`devices such as smart phones and PDAs was also well-known. See generally Exs.
`
`1022, 1025, 1027-28. All of the claims of the ’077 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
`
`The real parties-in-interest are Apple, Eventbrite, and Starwood.
`
`2.
`
`Related Matters
`
`Petitioner, along with other parties, previously filed a petition for CBM
`
`review of the ’077 patent in CBM2014-00014 under 35 U.S.C. §§ 101 and 112.
`
`See Ex. 1019. The Board denied that petition. Ex. 1019 at 41.
`
`Ameranth, Inc. (“PO”) has asserted the ’077 patent in the following 37
`
`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., 9/26/12); Starbucks Corp.,
`
`2
`
`Petitioners' Exhibit 1070, Page 10
`
`

`
`Case No. 3-13-cv-01072 (S.D. Cal., filed 5/6/13); TicketBiscuit, LLC, Case No. 3-
`
`13-cv-00352 (S.D. Cal., filed 213/13); Ticketfly, Inc., Case No. 3-13-cv-
`
`00353(S.D. Cal., filed 2/13/13); Eventbrite, Inc., Case No. 3-13-cv-00350(S.D.
`
`Cal., filed 2/13/13); Hilton Resorts Corp. et al., Case No. 3-12-cv-01636 (S.D.
`
`Cal., filed 7/2/12); Kayak Software Corp., Case No. 3-12-cv-01640 (S.D. Cal.,
`
`filed 6/29/12); Usablenet, Inc., Case No. 3-12-cv-01650 (S.D. Cal., filed 6/29/12);
`
`Starwood Hotels & Resorts Worldwide, Inc., Case No. 3-12-cv-01629 (S.D. Cal.,
`
`filed 6/29/12); Hotels.com, LP, Case No. 3-12-cv-01634 (S.D. Cal., filed 6/29/12);
`
`Orbitz, LLC, Case No. 3-12-cv-01644(S.D. Cal., filed 6/29/12); EMN8, Inc., Case
`
`No. 3-12-cv-01659 (S.D. Cal., filed 6/29/12); Best Western International, Inc.,
`
`Case No. 3-12-cv-01630 (S.D. Cal., filed 6/29/12); NAAMA Networks, Inc. et al.,
`
`Case No. 3-12-cv-01643 (S.D. Cal., filed 6/29/12); Hotel Tonight, Inc., Case No.
`
`3-12-cv-01633 (S.D. Cal., filed 6/29/12); Travelocity.com, LP, Case No. 3-12-cv-
`
`01649 (S.D. Cal., filed 6/29/12); Expedia, Inc., Case No. 3-12-cv-01654 (S.D. Cal.,
`
`filed 6/29/12); Hyatt Hotels Corporation et al., Case No. 3-12-cv-01627 (S.D.
`
`Cal., filed 6/29/12); Hotwire, Inc., Case No. 3-12-cv-01653 (S.D. Cal., filed
`
`6/29/12); Wanderspot LLC, Case No. 3-12-cv-01652 (S.D. Cal., filed 6/29/12);
`
`Micros Systems, Inc., Case No. 3-12-cv-01655 (S.D. Cal., filed 6/29/12); Marriott
`
`International, Inc. et al., Case No. 3-12-cv-01631 (S.D. Cal., filed 6/29/12); Mobo
`
`Systems, Inc., Case No. 3-12-cv-01642 (S.D. Cal., filed 6/29/12); ATX Innovation,
`
`3
`
`Petitioners' Exhibit 1070, Page 11
`
`

`
`Inc., Case No. 3-12-cv-01656 (S.D. Cal., filed 6/29/12); Fandango, Inc., Case No.
`
`3-12-cv-01651 (S.D. Cal., filed 6/29/12); StubHub, Inc., Case No. 3-12-cv-
`
`01646(S.D. Cal., filed 6/29/12); TicketMaster, LLC et al., Case No. 3-12-cv-01648
`
`(S.D. Cal., filed 6/29/12); Agilysys, Inc., Case No. 3-12-cv-00858 (S.D. Cal., filed
`
`4/6/12); TicketMob, LLC, Case No. 3-12-cv-00738 (S.D. Cal., filed 3/27/12); Papa
`
`John’s USA, Inc., Case No. 3-12-cv-00729 (S.D. Cal., filed 3/27/12); O-Web
`
`Technologies Ltd., Case No. 3-12-cv-00732 (S.D. Cal., filed 3/27/12); Domino’s
`
`Pizza, LLC et al, Case No. 3-12-cv-00733 (S.D. Cal., filed 3/27/12); Seamless
`
`North America, LLC, Case No. 3-12-cv-00737 (S.D. Cal., filed 3/27/12);
`
`GrubHub, Inc., Case No. 3-12-cv-00739 (S.D. Cal., filed 3/27/12); Pizza Hut, Inc.
`
`et al., Case No. 3-12-cv-00742 (S.D. Cal., filed 3/27/12); Papa John’s USA, Inc.
`
`12-cv-0729 (S.D. Cal. Filed March 27, 2012); and OpenTable, Inc., Case No. 3-12-
`
`cv-00731 ) (S.D. Cal., filed 3/27/12).
`
`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: DLA Piper LLP (US)
`
`4
`
`Petitioners' Exhibit 1070, Page 12
`
`

`
`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: ryan.cobb@dlapiper.com; by mail and hand delivery:
`
`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 counsel in
`
`accordance with 37 C.F.R. § 42.10(b). Service information for lead and back-up
`
`counsel 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 addresses
`
`designated above. Petitioner hereby consents to electronic service.
`
`B.
`
`Proof of Service on the Patent Owner
`
`As reflected in the attached Certificate of Service, a copy of this Petition in
`
`its entirety is being served to the PO’s attorney of record at the address listed in the
`
`USPTO’s records by overnight courier pursuant to 37 C.F.R. § 42.6.
`
`5
`
`Petitioners' Exhibit 1070, Page 13
`
`

`
`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
`
`’077 patent is available for CBM review because, as explained further below, the
`
`’077 patent constitutes a covered business method patent as defined by Section 18
`
`of the America Invents Act (see AIA § 18(a)(1)(A)), and further certifies that the
`
`Petitioner is not barred or estopped from requesting a CBM review challenging the
`
`patent claims on the grounds identified in this Petition. Petitioner is eligible to file
`
`the petition because Ameranth has sued Petitioner for alleged infringement of the
`
`’077 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 or issued a final written decision on any claim of the ’077 patent.
`
`A.
`
`The ’077 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
`
`6
`
`Petitioners' Exhibit 1070, Page 14
`
`

`
`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 relying on recitation of “retail bank” in claim 1 to
`
`fulfill the requirement that the patent be directed to a financial activity).
`
`At least claim 7 of the ’077 patent qualifies as a covered business method as
`
`has previously been determined by the Board in CBM2014-00014. See Ex. 1019 at
`
`10-15. Claim 7 recites “the information management and real time synchronous
`
`communications system in accordance with claim 1, further enabled to facilitate
`
`and complete payment processing.” Ex. 1004 at 17:19-21. Claim 7 is therefore at
`
`least “incidental to financial activity” and/or “complementary to financial activity”
`
`and thus satisfies the first requirement of AIA § 18(d)(1). Ex. 1019 at 11.
`
`Claim 7 also does not qualify as an exception to a covered business method
`
`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
`
`7
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`Petitioners' Exhibit 1070, Page 15
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`

`
`11. Both prongs must be met for the exception to apply. Id. As discussed in the
`
`Board’s Decision in CBM2014-00014, at least the first prong is not satisfied
`
`because the subject matter of the ’077 patent claims are not novel and unobvious
`
`but rather “are the predicted and expected result of known programming steps.”
`
`Id. at 14. Additionally, 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 ’077 patent includes numerous statements
`
`indicating that the technology utilized therein was known in the art:
`
`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.
`1004 at 6:55-58.
`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 7:1-
`2.
`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
`
`8
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`Petitioners' Exhibit 1070, Page 16
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`

`
`thus programming details are not necessary to a full description of the
`invention. Id. at 12:57-61.
`Accordingly, the claims of the ’077 patent do not satisfy the technological
`
`invention exception and are 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 claims 1-18 of the ’077 patent be canceled 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
`
`of claims 1-18 of the ’077 patent is requested in view of the following grounds:
`
`A.
`
`Claims 1-18 are unpatentable under 35 U.S.C. § 112 (pre-AIA) due to
`
`lack of an antecedent basis for the “the same connected system” limitations.
`
`B.
`
`Claims 1-18 are unpatentable under 35 U.S.C. § 103 (pre-AIA) as
`
`obvious over the Micros 8700 HMS Version 2.10 User’s Manual (Ex. 1027,
`
`“Micros 8700 UM”) including the Micros 8700 HMS Version 2.10 Appendix
`
`published in June 1997 (collectively, the “Micros 8700 Pub”) in view of Bill N.
`
`Schilit, Digestor: Device-Independent Access to the World Wide Web, Computer
`
`Networks and ISDN Systems (1997) (Ex. 1022, “Digestor”).
`
`C.
`
`Claims 13-18 are unpatentable under 35 U.S.C. § 103 (pre-AIA) as
`
`obvious over U.S. Pat. No. 6,058,373 to Blinn et al. (Ex. 1025, “Blinn”) in view of
`
`Digestor.
`
`9
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`Petitioners' Exhibit 1070, Page 17
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`

`
`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 ’077 patent (a “POSITA”) patent had a Bachelor’s degree in either electrical
`
`engineering or computer science and two years of experience in the fields 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 ’077 PATENT
`
`A.
`
`Patent Specification and Claims
`
`The ’077 patent, entitled “Information Management and Synchronous
`
`Communications System With Menu Generation, and Handwriting and Voice
`
`Modification of Orders,” was filed on April 22, 2005 and issued on March 27,
`
`2012. Ex. 1004 at 1. The ’077 patent claims priority to, and is a continuation of,
`
`application No. 10/016,517, filed on Nov. 1, 2001, now U.S. Pat. No. 6,982,733,
`
`which is a continuation-in-part of application No. 09/400,413, filed on Sep. 21,
`
`1999 (Ex. 1006), now U.S. Pat. No. 6,384,850. Exs. 1005 (’733 patent) and 1001
`
`(’850 patent). The ’077 patent was assigned upon issuance to, and upon
`
`information and belief is still owned by, Patent Owner Ameranth, Inc.
`
`As the Board previously found, a “principal object” of the ’077 patent “‘is to
`
`provide an improved information management and synchronous communications
`
`system and method which facilitates . . . generation of computerized menus for
`
`10
`
`Petitioners' Exhibit 1070, Page 18
`
`

`
`restaurants and other applications that utilize equipment with non-PC-standard
`
`graphical formats, display sizes and/or applications.’” Ex. 1019 at 3 (quoting Ex.
`
`1004, ’077 patent at 2:61-67). According to the ’077 patent, handheld wireless
`
`computing devices such as PDAs had not previously been “quickly assimilated into
`
`the restaurant and hospitality industries” due to their small display sizes. Ex. 1004
`
`at 2:12-17; Ex. 1019 at 2-3. The ’077 patent addresses this problem by
`
`reformatting menus to display on wireless handheld computing devices as
`
`“cascaded sets of linked graphical user interface screens.” Ex. 1004 at 16:3-4.
`
`In addition to reformatting menus for the small screen sizes of wireless
`
`handheld devices, the ’077 patent is also directed toward keeping the menus
`
`displayed on such wireless handheld computing devices and on other user devices
`
`synchronized with a master menu stored in a master database. The ’077 patent
`
`describes its preferred embodiment as a “synchronous communications control
`
`module . . . [that] provides a single point of entry for all hospitality applications to
`
`communicate with one another wirelessly or over the Web.” Ex. 1004 at 12:39-42.
`
`“The single point of entry works to keep all wireless handheld devices and linked
`
`Web sites in synch with the backoffice server (central database).” Ex. 1004 at
`
`12:47-49. This allows for “a reservation made online [to be] automatically
`
`communicated to the backoffice server which then synchronizes with all the
`
`wireless handheld devices wirelessly.” Ex. 1004 at 12:51-54.
`
`11
`
`Petitioners' Exhibit 1070, Page 19
`
`

`
`Figure 9 from the ’077 patent (reproduced below) is “an exemplary system
`
`diagram that illustrates how ‘[a] single point of entry works to keep all wireless
`
`handheld devices and linked web sites in synch with the backoffice server
`
`applications so that the different components are in equilibrium at any given time
`
`and an overall consistency is achieved.’” Ex. 1019 at 5-6, quoting Ex. 1004 at
`
`5:29-33.
`
`B.
`
`Overview of the Prosecution History
`
`The Challenged claims were issued only after an extensive prosecution
`
`involving numerous interviews with the Examiner, numerous claim amendments,
`
`and five separate rejections rejecting the pending claims. The application for the
`
`’077 patent was filed on April 22, 2005 along with a preliminary amendment
`
`intended to overcome rejections from previous examination of the priority
`
`application. Ex. 1012 (4/22/05 amendment) at 88-94. A second preliminary
`
`12
`
`Petitioners' Exhibit 1070, Page 20
`
`

`
`amendment cancelled all claims and added twenty-six new claims. Id. (9/25/07
`
`Amendment) at 151-59.
`
`
`
`The Examiner next issued a non-final rejection of all claims due to certain
`
`prior art, including U.S. Patent No. 6,973,437 to Olewicz (Ex. 1049, “Olewicz”)
`
`and U.S. Pat. Pub. 20020059405 to Angwin (Ex. 1048, “Angwin”). Ex. 1012
`
`(12/15/08 Rejection) at 304-17. Applicants responded by submitting a 37 CFR
`
`1.131 declaration in an attempt to antedate the Angwin and Olewicz references.
`
`Id. (1/23/09 Remarks) at 330-32. The examiner found that the declaration failed to
`
`antedate the Angwin and Olewicz references because it did not establish an actual
`
`reduction to practice or reasonable diligence during the critical period. Id. (6/26/09
`
`Non-Final Rejection) at 427. The examiner also presented new obviousness
`
`rejections in view of the Micros 8700 UM reference and other prior references. Id.
`
`at 429-47. The applicants responded with two additional inventor declarations
`
`under 37 CFR 1.131 as well as an inventor declaration under 37 CFR 1.132
`
`addressing purported secondary considerations. Ex. 1012 (8/21/09 Remarks) at
`
`493-97; 536-39 and (McNally Declaration) at 541-724. The examiner then issued
`
`a final rejection of all claims as being obvious over the Micros 8700 UM, U.S.
`
`Patent No. 6,300,947 to Kanevsky et al. (Ex. 1051), and U.S. Patent No. 5,974,238
`
`to Chase Jr. (Ex. 1056). Ex. 1012 (1/20/10 Final Rejection) at 769-805.
`
`
`
`The applicants filed a notice of appeal and, following an interview with the
`
`13
`
`Petitioners' Exhibit 1070, Page 21
`
`

`
`examiner, a Request for Continued Examination. Id. (2/25/10 Notice of Appeal) at
`
`823; (5/24/10 Request for Continued Examination) at 831. In the Request, the
`
`applicants presented additional claim amendments and attempted to distinguish
`
`them from the prior art. Id. (5/24/10 Remarks) at 847-55. In response to an
`
`interview with the Examiner on Dec. 7, 2010, the applicants filed a supplemental
`
`response and amendment. Id. (12/16/10 Remarks and Amendments) at 923-43.
`
`No further action took place until an applicant-instigated interview on
`
`October 14, 2011 to discuss possible allowable subject matter for the application.
`
`Id. (Feb. 2, 2012 Interview Summary) at 1030-31. Following this interview, the
`
`examiner allowed the application on February 2, 2012, stating that the prior art
`
`alone did not teach the following limitations:
`
`wherein the system is further enabled to automatically format the
`programmed handheld menu configuration for display as cascaded
`sets of linked graphical user interface screens appropriate for a
`customized display layout of at least two different wireless handheld
`computing device display sizes in the same connected system, and
`
`wherein a cascaded set of linked graphical user interface screens for a
`wireless handheld computing device in the system includes a different
`number of user interface screens from at least one other wireless
`handheld computing device in the system. Id. (Notice of Allowance)
`at 1052.
`
`14
`
`Petitioners' Exhibit 1070, Page 22
`
`

`
`VIII. CLAIM CONSTRUCTION
`
`
`
`In accordance with 37 C.F.R. § 42.304(b)(3), Petitioner provides the
`
`following statement regarding construction of the ’077 patent claims.
`
`A.
`
`Legal Standard
`
`
`
`Claims in a CBM review of an unexpired patent are to be given their
`
`“broadest reasonable interpretation in light of the specification.” 37 C.F.R.
`
`§ 42.300(b). This standard is often referred to as “BRI”.
`
`B.
`
`Construction of the Terms Used In the Challenged Claims
`
`Because the claim construction standard in this proceeding differs from that
`
`used in U.S. district court litigation, Petitioner expressly reserves the right to assert
`
`different claim construction positions under the standard applicable in district court
`
`for any term of the ’077 patent in any district court litigation. Claim construction
`
`is further discussed in Ex. 1002 ¶¶ 69-90.
`
`The Board has previously construed certain claim terms in its decision at
`
`Paper 19 of CBM2014-00014, and Petitioner here