`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`EXPEDIA, INC., FANDANGO, LLC, HOTELS.COM, L.P.,
`HOTEL TONIGHT, INC., HOTWIRE, INC.,
`KAYAK SOFTWARE CORP., OPENTABLE, INC., ORBITZ, LLC,
`PAPA JOHN’S USA, INC., STUBHUB, INC., TICKETMASTER, LLC, LIVE
`NATION ENTERTAINMENT, INC., TRAVELOCITY.COM LP,
`WANDERSPOT LLC, AGILYSYS, INC., DOMINO’S PIZZA, INC.,
`DOMINO’S PIZZA, LLC, HILTON RESORTS CORPORATION,
`HILTON WORLDWIDE, INC., HILTON INTERNATIONAL CO.,
`MOBO SYSTEMS, INC., PIZZA HUT OF AMERICA, INC.,
`PIZZA HUT, INC., and USABLENET, INC.,
`Petitioner
`
`v.
`
`AMERANTH, INC.,
`Patent Owner
`
`
`
`Case CBM2015-00096
`Patent No. 6,384,850
`
`
`
`CORRECTED PETITION FOR
`COVERED BUSINESS METHOD REVIEW OF
`U.S. PATENT NO. 6,384,850 UNDER 35 U.S.C. § 321 AND § 18 OF THE
`LEAHY-SMITH AMERICA INVENTS ACT
`
`
`
`
`
`
`
`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 .............................. 4
`Proof of Service on the PO ................................................................... 5
`B.
`Fee ........................................................................................................ 5
`C.
`III. GROUNDS FOR STANDING ....................................................................... 5
`A.
`The ’850 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 ’850 PATENT ............................................................ 9
`A.
`Patent Specification and Claims ......................................................... 10
`B. Overview of the Prosecution History ................................................. 13
`C.
`Failure to Establish Conception and/or Reduction to Practice .......... 15
`1.
`Statement of the Law ............................................................... 15
`2.
`PO’s Declarations Do Not Establish Conception .................... 17
`3.
`PO’s Declarations Do Not Establish Actual Reduction to
`Practice ..................................................................................... 17
`PO’s Declarations Do Not Establish Diligence ....................... 18
`4.
`VIII. CLAIM CONSTRUCTION ......................................................................... 20
`A.
`Legal Standard .................................................................................... 20
`B.
`Construction of the Terms Used in the Claims .................................. 20
`
`
`
`i
`
`
`
`1.
`2.
`3.
`4.
`5.
`6.
`
`“Web page” .............................................................................. 21
`“applications” (claim 12) ......................................................... 22
`“application program interface” (claim 12) ............................. 22
`“communications control module” (claim 12)......................... 22
`“database” (claim 12) ............................................................... 22
`“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” (claim 12) .......... 23
`The Preamble Is Not Limiting ................................................. 23
`7.
`IX. STATE OF THE ART PRIOR TO THE ’850 PATENT ............................. 24
`THERE IS A REASONABLE LIKELIHOOD THAT PETITIONER
`X.
`WILL PREVAIL WITH RESPECT TO AT LEAST ONE CLAIM OF
`THE ’850 PATENT ...................................................................................... 26
`XI. DETAILED EXPLANATION OF THE GROUNDS FOR
`REJECTION ................................................................................................. 26
`Challenge to Claims 12-16 Based on Inkpen, Nokia and
`A.
`Digestor .............................................................................................. 27
`1.
`Summary of Inkpen .................................................................. 27
`2.
`Summary of Digestor ............................................................... 29
`3.
`Summary of Nokia ................................................................... 30
`4.
`Patentability Challenge Based on Inkpen, Nokia, and
`Digestor .................................................................................... 31
`Challenge to Claims 12-16 Based on DeLorme ................................. 50
`1.
`Summary of DeLorme ............................................................. 50
`2.
`Patentability Challenge Based on DeLorme ............................ 52
`Challenge to Claims 12-16 Based on Blinn and Inkpen .................... 63
`1.
`Summary of Blinn .................................................................... 63
`2.
`Patentability Challenge Based on Blinn and Inkpen ............... 65
`XII. NONE OF THE CHALLENGES ARE REDUNDANT .............................. 79
`XIII. CONCLUSION ............................................................................................. 80
`
`B.
`
`C.
`
`
`
`ii
`
`
`
`
`
`TABLE OF EXHIBITS
`
`EXHIBIT DESCRIPTION
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`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)
`
`1007
`
`U.S. Patent Application Number 10/015,729 (the “’729 application”)
`
`(’325 Application)
`
`1008
`
`U.S. Patent Application Number 11/112,990 (the “’990 application”)
`
`(’077 Application)
`
`1009
`
`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
`
`iii
`
`1010
`
`1011
`
`1012
`
`1013
`
`
`
`
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`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
`
`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)
`
`1022
`
`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)
`
`iv
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`
`
`
`
`1029
`
`Jesitus, “Wireless Technology Keeps Customers In Order,”
`
`Hospitality Technology (January 1977)
`
`1030
`
`PO’s complaints against: (A) Expedia, Inc., (B) Fandango, LLC, (C)
`
`Hotels.com, L.P., (D) Hotel Tonight, Inc., (E) Hotwire, Inc., (F)
`
`Kayak Software Corp., (G) OpenTable, Inc., (H) Orbitz, LLC, (I)
`
`Papa John’s USA, Inc., (J) StubHub, Inc., (K) Ticketmaster, LLC and
`
`Live Nation Entertainment, Inc., (L) Travelocity.com LP, and (M)
`
`Wanderspot LLC
`
`1031
`
`PO’s complaints against: (A) Agilysys, Inc., (B) Domino’s Pizza, Inc.
`
`and Domino’s Pizza, LLC, (C) Hilton Resorts Corporation, Hilton
`
`Worldwide, Inc., and Hilton International Co., (D) Mobo Systems,
`
`Inc., (E) Pizza Hut of America, Inc. and Pizza Hut, Inc., and (F)
`
`Usablenet, Inc.
`
`1032
`
`Ameranth, Inc. v. Menusoft Sys. Corp., et al., No. 2:07-CV-271, ECF
`
`No. 106 (E.D. Tex. Apr. 21,2010)
`
`1033
`
`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)
`
`v
`
`1034
`
`1035
`
`
`
`
`
`1036
`
`American Heritage Dictionary (3d ed. 1992) (for the definition of
`
`“cascade”)
`
`1037
`
`http://catalogue.pearsoned.co.uk/educator/product/Information-
`
`Technology-for-Travel-and-Tourism/9780582310025.page
`
`1038
`
`1039
`
`1040
`
`1041
`
`1042
`
`1043
`
`1044
`
`1045
`
`1046
`
`1047
`
`1048
`
`1049
`
`1050
`
`1051
`
`
`
`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”
`
`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.
`
`vi
`
`
`
`1052
`
`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.
`
`1053
`
`Micros Hand-Held Touchscreen Pre-Release Information (Sept. 8,
`
`1054
`
`1055
`
`1056
`
`1057
`
`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
`
`1058
`
`Ameranth v. Menusoft Systems Corp., 07-cv-271-RSP, Dkt. 281 (E.D.
`
`Tex. 2010) Opposition JMOL Brief
`
`1059
`
`Ameranth v. Menusoft Systems Corp., 07-cv-271-RSP, Dkt. 281 (E.D.
`
`Tex. 2010) Order Denying Ameranth’s Motion for JMOL
`
`1060
`
`Excerpts from PO’s Infringement Contentions to: (A) StubHub, Inc.,
`
`(B) Hotels.com, L.P., and (C) Ticketmaster, LLC
`
`U.S. Patent No. 8,738,449 File History
`
`Sep. 13, 2010 Trial Testimony. Ameranth v. MenuSoft, 07-cv-271-
`
`RSP.
`
`vii
`
`1061
`
`1062
`
`
`
`
`
`1063
`
`Sep. 14, 2010 Trial Testimony. Ameranth v. MenuSoft, 07-cv-271-
`
`RSP.
`
`1064
`
`Sep. 15, 2010 Trial Testimony. Ameranth v. MenuSoft, 07-cv-271-
`
`RSP.
`
`1065
`
`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)
`
`CBM2015-00080 – CBM petition for U.S. Patent No. 6,384,850
`
`CBM2015-00082 – CBM petition for U.S. Patent No. 6,871,325
`
`CBM2015-00081 – CBM petition for U.S. Patent No. 8,146,077
`
`1066
`
`1067
`
`1068
`
`1069
`
`1070
`
`
`
`viii
`
`
`
`Patent No. 6,384,850
`Corrected Petition for Covered Business Method Review
`
`I.
`
`INTRODUCTION
`
`Covered business method (“CBM”) review of claims 12-16 (the “Challenged
`
`Claims”) of U.S. Patent No. 6,384,850 (Ex. 1001) (hereinafter “the ’850 patent”) is
`
`hereby requested. The ’850 patent has been asserted against Petitioner and several
`
`other entities in pending lawsuits. See Exs. 1030, 1031.
`
`The ’850 patent relates generally to the field of menu generation and
`
`synchronous communication. See Ex. 1017 at 3-7. Importantly, although much of
`
`the ’850 patent specification is dedicated to menu generation, Claims 12-16 do not
`
`include any menu generation limitations, but instead claim an information
`
`management and synchronous communications system for use with wireless
`
`handheld computing devices and the internet. Exhibit 1001 at Claims 12-16. As
`
`explained below, each of the synchronous communication techniques recited in
`
`Claims 12-16 had been developed and were well known in the communication
`
`field long before the application for the ’850 patent was filed. Indeed, many of
`
`these techniques were already used in the market. See Exs. 1021-25. Claims 12-
`
`16 of the ’850 patent are therefore unpatentable over the prior art identified below.
`
`
`
`1
`
`
`
`Patent No. 6,384,850
`Corrected Petition for Covered Business Method Review
`
`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 Expedia, Inc., StubHub, Inc., Fandango, LLC
`
`(formerly known as Fandango, Inc.), Hotels.com, L.P., Hotel Tonight, Inc.,
`
`Hotwire, Inc., Kayak Software Corp., OpenTable, Inc., Orbitz, LLC, Papa John’s
`
`USA, Inc., Ticketmaster, LLC, Live Nation Entertainment, Inc., Travelocity.com
`
`LP, Wanderspot LLC, Agilysys, Inc., Domino’s Pizza, Inc., Domino’s Pizza, LLC,
`
`Hilton Resorts Corporation, Hilton Worldwide, Inc., Hilton International Co.,
`
`Mobo Systems, Inc., Pizza Hut of America, Inc., Pizza Hut, Inc., and Usablenet,
`
`Inc. (collectively, “Petitioner”).
`
`Related Matters
`
`2.
`Petitioner, along with a number of other parties, previously filed a petition
`
`for CBM review of the ’850 patent (CBM2014-00015) under 35 U.S.C. §§ 101 and
`
`112. The Board, however, only granted review of claims 1-11 of the ’850 patent
`
`under the § 101 grounds. Ex. 1017 at 27. Further, on February 19, 2015, parties
`
`other than Petitioner filed a petition for CBM review of the ’850 patent
`
`(CBM2015-00080) concerning the same challenges to the same claims that are at
`
`issue in the present petition. Ex. 1068. The Board has not issued a decision
`
`regarding institution in CBM2015-00080.
`
`
`
`2
`
`
`
`Patent No. 6,384,850
`Corrected Petition for Covered Business Method Review
`
`
`Ameranth, Inc. (“PO”) has asserted the ’850 patent in the following patent
`
`infringement lawsuits, including the suits 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; Starbucks Corp., Case No. 3-13-cv-01072;
`
`TicketBiscuit, LLC, Case No. 3-13-cv-00352; Ticketfly, Inc., Case No. 3-13-cv-
`
`00353; Eventbrite Inc., Case No. 3-13-cv-00350; Hilton Resorts Corp. et al, Case
`
`No. 3-12-cv-01636; Kayak Software Corp., Case No. 3-12-cv-01640; Usablenet,
`
`Inc., Case No. 3-12-cv-01650; Starwood Hotels & Resorts Worldwide, Inc., Case
`
`No. 3-12-cv-01629; Hotels.com, LP, Case No. 3-12-cv-01634; Orbitz, LLC, Case
`
`No. 3-12-cv-01644; ATX Innovation, Inc., Case No. 3-12-cv-01656; Best Western
`
`International, Inc., Case No. 3-12-cv-01630; NAAMA Networks, Inc. et al, Case
`
`No. 3-12-cv-01643; Hotel Tonight, Inc., Case No. 3-12-cv-01633; Travelocity.com,
`
`LP, Case No. 3-12-cv-01649; Expedia, Inc., Case No. 3-12-cv-01654; Hyatt
`
`Corporation, Case No. 3-12-cv-01627; Hotwire, Inc., Case No. 3-12-cv-01653;
`
`Wanderspot LLC, Case No. 3-12-cv-01652; Micros Systems, Inc., Case No. 3-12-
`
`cv-01655; Marriott International, Inc. et al, Case No. 3-12-cv-01631; Mobo
`
`Systems, Inc., Case No. 3-12-cv-01642; Fandango, Inc., Case No. 3-12-cv-01651;
`
`StubHub, Inc., Case No. 3-12-cv-01646; TicketMaster, LLC et al, Case No. 3-12-
`
`cv-01648; Agilysys, Inc., Case No. 3-12-cv-00858; Domino’s Pizza, LLC et al,
`
`
`
`3
`
`
`
`Patent No. 6,384,850
`Corrected Petition for Covered Business Method Review
`
`Case No. 3-12-cv-00733; Pizza Hut, Inc. et al, Case No. 3-12-cv-00742; Papa
`
`John’s USA, Inc. 12-cv-0729; OpenTable, Inc., Case Nos. 3-12-cv-00731 and 3-
`
`13-cv-01840; O-Web Technologies Ltd., Case No. 3-12-cv-00732; Seamless North
`
`America, LLC, Case No. 3-12-cv-00737; and GrubHub, Inc., Case No. 3-12-cv-
`
`00739, each in the Southern District of California.
`
`Lead and Back-up Counsel
`
`3.
`Lead Counsel for Petitioner is Richard S. Zembek, Norton Rose Fulbright
`
`US LLP, Reg. No. 43,306, who
`
`can be
`
`reached by
`
`
`at
`
`richard.zembek@nortonrosefulbright.com, by mail and hand delivery at Norton
`
`Rose Fulbright US LLP, 1301 McKinney, Suite 5100, Houston, Texas 77010, by
`
`phone at 713-651-5151, and by fax at 713-651-5246. Backup counsel for
`
`Petitioner is Gilbert A. Greene, Reg. No. 48,366, who can be reached by email at
`
`bert.greene@nortonrosefulbright.com, by mail and hand delivery at Norton Rose
`
`Fulbright US LLP, 98 San Jacinto Boulevard, Suite 1100, Austin, Texas 78701, by
`
`phone at 512-474-5201, and by fax at 512-536-4598.
`
`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 address of
`
`
`
`4
`
`
`
`Patent No. 6,384,850
`Corrected Petition for Covered Business Method Review
`
`the respective lead and back-up counsel designated above. Petitioner hereby
`
`consents to electronic service.
`
`Proof of Service on the PO
`
`B.
`As identified 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.
`
`Fee
`
`C.
`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. 06-2380.
`
`III. GROUNDS FOR STANDING
`
`In accordance with 37 C.F.R. § 42.304(a), Petitioner certifies that the ’850
`
`patent is available for CBM review because, as explained further below, the ’850
`
`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 ’850 patent on the grounds identified in this Petition. Petitioner is eligible to
`
`file this petition because Ameranth has sued Petitioner for alleged infringement of
`
`the ’850 patent. See Exs. 1030, 1031. Additionally, Petitioner is not estopped
`
`
`
`5
`
`
`
`Patent No. 6,384,850
`Corrected Petition for Covered Business Method Review
`
`from pursuing this petition under 37 C.F.R. § 42.73(d)(1) because the Board has
`
`not issued a final written decision on the Challenged Claims.
`
`A. The ’850 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 ’850 patent
`
`qualifies as a covered business method as has previously been determined by the
`
`Board in CBM2014-00015. See Ex. 1017 at 9-14. Claim 1 is directed toward a
`
`“system for generating and transmitting menus” and recites as its last phrase that a
`
`
`
`6
`
`
`
`Patent No. 6,384,850
`Corrected Petition for Covered Business Method Review
`
`generated second menu is “applicable to a predetermined type of ordering.” Ex.
`
`1001 at 14:48-49 and 15:9-11. The “ordering” in this phrase relates to the ordering
`
`of a meal at a restaurant (Ex. 1001 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. 1017 at 11.
`
`Claim 1 does not fit within the 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
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`feature that (1) is novel and unobvious over the prior art (the “first prong”), and (2)
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`solves a technical problem using a technical solution (the “second prong”). Id. at
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`11. Both prongs must be met for the exception to apply. Id. The Board has
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`previously found that neither prong applies to claim 1 of the ’850 patent. See Ex.
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`1017 at 11. Furthermore, the Office Patent Trial Practice Guide states that
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`“reciting the use of known prior art technology to accomplish a process or method,
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`even if that process or method is novel and non-obvious” does not typically render
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`a patent a technological invention.” The ’850 patent makes abundantly clear that
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`the system of claim 1 utilizes nothing but known prior art technology:
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`The preferred embodiment of the present invention uses typical
`hardware elements in the form of a computer workstation, operating
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`system and application software elements which configure the
`hardware elements for operation in accordance with the present
`invention. Ex. 1001 at 5:33-37.
`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
`5:37-44.
`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 11:43-48.
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`Accordingly, at least claim 1 of the ’850 patent does not satisfy the technological
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`invention exception, and the ’850 patent is therefore eligible for covered business
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`method review.
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`IV. STATEMENT OF PRECISE RELIEF REQUESTED
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`In accordance with 37 C.F.R. § 42.22, Petitioner respectfully requests that
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`claims 12-16 of the ’850 patent be found unpatentable for the reasons below.
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`V.
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`IDENTIFICATION OF PATENTABILITY CHALLENGES
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`In accordance with 35 U.S.C. § 321 and 37 C.F.R. § 42.304(b), CBM review
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`of claims 12-16 of the ’850 patent is requested in view of the following grounds:
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`A.
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`The Challenged Claims are unpatentable under 35 U.S.C. § 103 (pre-
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`AIA) as being obvious over Inkpen, Gary, Information Technology for Travel and
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`Tourism (2d ed. 1998) (“Inkpen”) (Ex. 1021, “Inkpen”), in view of Timothy
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`Bickmore, Digestor: Device Independent Access to the World Wide Web,
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`Computer Networks and ISDN Systems 29, 1075-1082 (1997) (Ex. 1022,
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`“Digestor”) and the Nokia 9000i Communicator Owner’s Manual (1997) (Ex.
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`1023, “Nokia”).
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`
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`B.
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`The Challenged Claims are unpatentable under 35 U.S.C. § 103 (pre-
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`AIA) as being obvious over U.S. Pat. No. 5,948,040 (Ex. 1024, “DeLorme”).
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`
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`C.
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`The Challenged Claims are unpatentable under 35 U.S.C. § 103 (pre-
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`AIA) as being obvious over U.S. Pat. No. 6,058,373 to Blinn, et al. (Ex. 1025,
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`“Blinn”) in view of Inkpen.
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`VI. LEVEL OF ORDINARY SKILL IN THE ART
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`A person of ordinary skill in the art at the time of the alleged invention of
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`the ’850 patent (a “POSITA”) had a Bachelor’s degree in either electrical
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`engineering or computer science and two years of experience in the fields of
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`developing software for wireless networks and devices, developing Internet-based
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`systems or applications, or an equivalent experience in software development of up
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`to 5 years. Ex. 1002 ¶¶ 71-72.
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`VII. SUMMARY OF THE ’850 PATENT
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`Patent Specification and Claims
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`A.
`The application for the ’850 patent was filed on September 21, 1999. The
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`
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`’850 patent does not claim priority to any other application. Accordingly,
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`September 21, 1999 is the effective filing date.
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`A primary theme of the ’850 patent, and the “principal object” of the alleged
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`invention described therein, is to provide a system that “facilitates user-friendly
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`and efficient generation of computerized menus for restaurants and other
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`applications that utilize equipment with non-PC-standard graphical formats,
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`display sizes and/or applications.” Ex. 1001 at 2:56-62. The generation of menus
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`is the subject of claims 1-11, for which a prior CBM trial (CBM2014-00015) was
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`instituted, and a large majority of the specification is devoted to describing such
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`menus and how they are generated. Ex. 1002 ¶¶ 46-47.
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`
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`Claims 12-16 at issue here, however, do not even recite the term “menu” or
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`any other limitations relating to menu generation. These claims are instead
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`directed toward an “information management and synchronous communications
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`system for use with wireless handheld computing devices and the internet.” Ex.
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`1001 at 16:1-3. The system of claims 12-16 includes “a central database,” “at least
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`one handheld wireless computing device,” “at least one web server,” “at least one
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`web page,” and “a communications control module.” Ex. 1001 at 16:4-14.
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`“Hospitality applications and data” are stored on the wireless handheld computing
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`device, the web server and the web page; and the central database contains
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`“hospitality applications and data.” Id. The hospitality applications and data are
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`“synchronized” between the central database, the web server, the web page and the
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`wireless handheld computing device. Id. at 15-17; Ex. 1002 ¶ 48.
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`
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`The ’850 patent does not provide any diagram of the system formed by the
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`components of claim 12, and claim 12 does not specify any relationship between
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`these components. Thus, it is not clear to one of ordinary skill in the art how some
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`of these various components are connected to each other and/or interact with each
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`other. Ex. 1002 ¶ 49. For example, the “application program interface” (“API”)
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`recited in claim 12 is mentioned only three times in the specification, and all that is
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`disclosed about the API is that (1) it is a feature that is missing from software for
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`fully realizing the potential of wireless handheld computing devices and (2) it
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`“enables third parties such as point of sale (“POS”) companies, affinity program
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`companies and internet content providers to fully integrate with computerized
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`hospitality applications.” Ex. 1001 at 2:5-15; 3:63-67, and 11:15-18. The
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`specification of the ’850 patent does not specify whether this application program
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`interface software runs on the wireless handheld computing device or one of the
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`other devices recited in claim 12 and does not explain what functions the API
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`performs or how it enables POS companies, affinity program companies, or
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`internet content providers to “fully integrate” with the computerized hospitality
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`applications that claim 12 requires be stored on the web page, the web server and
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`the wireless handheld computing device. Accordingly, the location where the API
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`resides in the system of claim 12 and what the API does is unclear. Ex. 1002 ¶ 50.
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`
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`Similarly, the specification leaves unanswered several questions concerning
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`the “communications control module.” This module is described in the ’850 patent
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`specification as a program to monitor all devices in the network, receiving and
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`decoding messages sent between the devices, and routing the messages to the
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`appropriate device. Ex. 1001 at 9:21-48. The communications control module is
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`also described as a “layer that sits on top of any communications protocol” that
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`“provides a single point of entry for all hospitality applications to communicate
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`with one another wirelessly or over the web.” Ex. 1001 at 11:24-30. The
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`specification does not explain if the communications control module “layer” is a
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`single piece of software that runs on a device (sometimes referred to in the art as a
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`communications controller or front end processor) or multiple instances of
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`software, each of which runs on a respective web page, web server, wireless
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`handheld computing device and central database. Ex. 1002 ¶ 51. The similarity of
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`the phrase “communications control module” to the art-recognized phrase
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`“communications controller” and the description of the communications control
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`module as a single point of entry and as performing a routing function suggest the
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`former, whereas the description of a “layer that sits on top of any communications
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`protocol” suggests the latter. Id.
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`
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`The specification also states that the “single point of entry” that is provided
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`by the communications control module “works to keep all wireless handheld
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`devices and linked Web sites in synch with the [central database] so that the
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`different components are in equilibrium at any given point in time and an overall
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`consistency is achieved.” Ex. 1001 at 11:32-36. The specification is silent,
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`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
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`database. Thus, it is not clear if this “work” is simply facilitating communications
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`between these components, or is something more. Ex. 1002 ¶¶ 52-53.
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`Claim 12 further requires that the communications control module “is an
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`interface between the hospitality applications and any other communications
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`protocol.” Ex. 1001 at 16:20-22. This requirement is problematic for the reasons
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`discussed below and thus creates additional confusion as to the nature of the
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`communications control module. Ex. 1002 ¶¶ 55-56.
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`B. Overview of the Prosecution History
`The Challenged Claims were issued on what was essentially a first action
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`allowance. The application for the ’850 patent, U.S. Patent Application Number
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`09/400,413 (the “’413 application”) was filed on September 21, 1999. Ex. 1010 at
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`7. On November 27, 2000, the examiner issued a first Office Action rejecting
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`original claims 1-19 and 31-39 while allowing claims 20-30 and 40-43, which
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`ultimately issued as claims 1-11 and 12-15 of the ’850 patent. Id. at 77-82. In his
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`statement on the reasons for allowance, the examiner mistakenly stated that the
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`Challenged Claims recited the “uniquely distinct features” of “a sub-modifier
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`menu stored on data storage device and displayable in a window of a graphical
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`user interface, and application software for generating a second menu from first
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`menu and transmitting second menu to a wireless handheld computing device or
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`Web page.” Id. at 80. While these allegedly uniquely distinct features appear in
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`what issued as independent claim 1, these features are not recited in what issued as
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`claims 12-15. Nowhere in independent claim 12 do the terms “sub-modifier,”
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`“menu” or “application software” ap