`571-272-7822
`
`
`
`
`
` Paper 23
`Entered: March 26, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`APPLE, INC., ET AL
`Petitioner,
`
`v.
`
`AMERANTH, INC.
`Patent Owner.
`____________
`
`Case CBM2014-00013
`Patent 6,982,733 B1
`____________
`
`
`
`Before JAMESON LEE, RICHARD E. RICE, and STACEY G. WHITE,
`Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
` 1
`
`Petitioners' Exhibit 1020, Page
`
`
`
`CBM2014-00013
`Patent 6,982,733 B1
`
`I.
`
`INTRODUCTION
`
`Apple Inc., Fandango, LLC, OpenTable, Inc., Domino’s Pizza, Inc.,
`and Domino’s Pizza, LLC. (“Petitioner”) filed an amended petition (Paper
`10, “Pet.”) requesting a review under the transitional program for covered
`business method patents of claims 1-16 of U.S. Patent No. 6,982,733 B1
`(Ex. 1033, “the ’733 Patent”). Ameranth, Inc. (“Patent Owner”) filed a
`preliminary response (Paper 13, “Prelim. Resp.”). The Board has
`jurisdiction under 35 U.S.C. § 324.1
`The standard for instituting a covered business method patent review
`is set forth in 35 U.S.C. § 324(a), which provides as follows:
`THRESHOLD—The Director may not authorize a post-grant
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 321, if
`such information is not rebutted, would demonstrate that it is
`more likely than not that at least 1 of the claims challenged in
`the petition is unpatentable.
`
`Petitioner challenges the patentability of claims 1-16 of the ’733
`Patent under 35 U.S.C. §§ 101 and 112. Taking into account Petitioner’s
`evidence and arguments and Patent Owner’s preliminary response, we
`determine that the ’733 patent is a covered business method patent and that
`Petitioner has demonstrated that it is more likely than not that claims 1-16
`are directed to non-statutory subject matter and, thus, unpatentable under 35
`U.S.C. § 101. Therefore, we institute a covered business method patent
`
`
`1 See Section 18(a) of the Leahy-Smith America Invents Act, Pub. L.
`No. 112-29, 125 Stat. 284, 329 (2011) (“AIA”).
`2
`
` 2
`
`Petitioners' Exhibit 1020, Page
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`
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`
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`CBM2014-00013
`
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`Patent 6,982,733 B1
`
`ms 1-16 o
`f the ’733 PPatent baseed upon P
`
`review for clai
`
`
`the claims
`that
`
`
`are unpateentable undder § 101.
`
`
`etitioner’s
`
`challenge
`
`
`
`A. The ’7333 Patent (
`Ex. 1033)
`The ’73
`
`
`3 Patent reelates to ann informati
`on manag
`ement and
`
`
`
`chronous communicaations systeem and m
`ethod for g
`
`enerating aand
`syn
`
`
`
`
`transmitting computerizeed menus fofor restaur
`ants. Ex. 1
`
`033, Abstrract.
`
`
`
`
`Figure 1 of the ’733 Pateent is set foorth below
`:
`
`
`
`
`
`Figure 1 is a scchematic reepresentatiion of the
`menu disp
`
`lay/user innterface of
` Id. at 5:4
`
`
`
`the preferred embodimennt of the ’7
`33 Patent.
`1-45, 7:25
`-27. As
`Interface
`
`
`includes mmenu tree 77,
`
`
`
`shown in Figure 1, Graphhical User
`(“GUI”) 1
`ow 9. Id.
`
`
`
`
`modifiers window 8, andd sub-modifiers wind
`at 7:44-48
`
`. GUI 1 iss
`
`
`
`3
`
` 3
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`Petitioners' Exhibit 1020, Page
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`CBM2014-00013
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`Patent 6,982,733 B1
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`Id. at 7:28-
`
`
`
`
`used to build a menu on aa desktop oor other c
`omputer.
`29. Menu
`
`
`
`
`items are categorized andd displayedd in a hier
`archical m
`
`anner in mmenu tree 7.
`
`
`
`
`Moddifiers (e.g., salad dreessing) are
`shown in
`modifiers
`window 8
`and sub-
` etc.) are
`
`
`
`
`modifiers (e.g., Italian drressing, Freench dress
`ing, Ranc
`h dressing,
`
`
`
`
`
`, 7:30-36. shown in sub-mmodifiers wwindow 9. Ex. 1033,
`menu is
`Once the
`
`
`
`
`built using GUI 1, the meenu may bee downlo
`aded to a h
`
`andheld deevice or
`
`
`
`Webb page. Id. at 10:1-9, 11:12-18.
`
`Figure
`
`
`7 is reproduuced beloww:
`
` .
`
`
`
`Figure 7 depicts the interrface on a ttypical wirreless devi
`
`
`
`
`
`ce used in
`
`with the invention of the ’733 Patennt. Id. at
`
`
`
`
`13:2-4. Ass shown in
`Figure 7,
`
`
`
`
`
`“the page menu is displayed in a caatalogue-likke point-a
`
`nd-click foormat . . .
`[the
`
`
`
`
`reby allowing] a persson with litttle expertiise [to] ‘p
`
`age throughh’ to
`
`
`
`
`
`complete a transaction wwith the POS [point off sale] int
`
`erface and aavoid
`
`conformityy
`
`4
`
` 4
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`Petitioners' Exhibit 1020, Page
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`CBM2014-00013
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`Patent 6,982,733 B1
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`order.” Id.
`
`
`having to review the entire menu off Fig. 1 to
`
`
`place an
`at 11:34-
`age. Id. at
`on a PDA
`or Web p
`11:40.
`
`
`
`39. This interfface could be shown
`
`
`
`Figure 8 is reproduuced beloww:
`
`ne embodimment of thee
`
`
`
`
`ure 8 depicts the handdwritten screen accorrding to o
`Fig
`
`
`
`
`
`
`
`
`
`’733 Patent. In that emboodiment, aa server maay take a d
`rink order
`by
`1033, 4:6-
`
`
`
`
`
`selecting “Icedd Tea” fromm the menuu on the haandheld de
`vice. Ex.
`
`
`
`
`
`7. AAs shown in Fig. 8, thhe server thhen manuaally modifi
`es the ordeer by
`
`ce. Id. at
`8. The
`
`
`
`
`writing “w/ lemon” on thhe screen oon the devi
`4:7-9, Fig.
`
`
`
`
`
`
`manually modified drinkk order is thhen presentted to the iindividual
`preparing
`
`
`the drinks. Id. at 4:9-11.
`
`
`B. Rellated Mat
`ters
`Petition
`
`
`er identifiees the following proc
`
`n the U.S. DDistrict
`eedings i
`
`
`
`
`Court for the Southern DDistrict of CCalifornia
`involving
`
`the ’733 paatent:
`
`
`
`
`Ameranth, Inc. v. Apple IInc., No. 3-12-cv-02
`
`
`350; Amerranth, Inc. vv.
`
`
`
`
`Fandango, Inc., No. 3-122-cv-016511; Ameran
`th, Inc. v.
`
`
`
`
`
`
`
`et al, No. 3-12-cv-00733; Ameranthh, Inc. v. OOpenTable
`, Inc., No.
`3-12-cv-
`
`
`
`
`00731; Ameranth, Inc. v. OpenTablle, Inc., N
`
`-01840; Ammeranth,
`o. 3-13-cv
`5
`
`Domino’s PPizza, LLCC
`
` 5
`
`Petitioners' Exhibit 1020, Page
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`CBM2014-00013
`Patent 6,982,733 B1
`
`Inc. v. Fandango, Inc., No. 3-13-cv-01525; and Ameranth, Inc. v. Domino’s
`Pizza, LLC et al, No. 3-13-cv-01520. Pet. 10-11.
`Petitioner also requested review of the following patents related to the
`’733 Patent — U.S. Patent No. 6,384,850 B1 (CBM2014-00015), U.S.
`Patent No. 8,146,077 B2 (CBM2014-00014), and U.S. Patent No.
`6,871,325 B1 (CBM2014-00016).
`
`C. Illustrative Claims
`Petitioner challenges all sixteen claims of the ’733 patent. Claims 1
`and 12 are illustrative of the claims at issue and read as follows:
`1.
`An information management and synchronous
`communications system for generating and transmitting menus
`comprising:
`a. a central processing unit,
`b. a data storage device connected to said central
`processing unit,
`c. an operating system including a graphical user
`interface,
`d. a first menu consisting of menu categories, said menu
`categories consisting of menu items, said first menu stored on
`said data storage device and displayable in a window of said
`graphical user interface in a hierarchical tree format,
`e. a modifier menu stored on said data storage device and
`displayable in a window of said graphical user interface,
`f. a sub-modifier menu stored on said data storage device
`and displayable in a window of said graphical user interface,
`and
`
`6
`
` 6
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`Petitioners' Exhibit 1020, Page
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`CBM2014-00013
`Patent 6,982,733 B1
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`g. application software for generating a second menu
`from said first menu and transmitting said second menu to a
`wireless handheld computing device or Web page,
`wherein the application software facilitates the
`generation of the second menu by allowing selection of
`categories and items from the first menu, addition of menu
`categories to the second menu, addition of menu items to the
`second menu and assignment of parameters to items in the
`second menu using the graphical user interface of said
`operating system, said parameters being selected from the
`modifier and sub-modifier menus, wherein said second menu is
`manually modified after generation.
`
`In a computer system having an input device, a
`12.
`storage device, a video display, an operating system including a
`graphical user interface and application software, an
`information management and synchronous communications
`method comprising the steps of:
`a. outputting at least one window on the video display;
`b. outputting a first menu in a window on the video
`display;
`c. displaying a cursor on the video display;
`d. selecting items from the first menu with the input
`device or the graphical user interface;
`e. inserting the items selected from the first menu into a
`second menu, the second menu being output in a window;
`f. optionally adding additional items not included in the
`first menu to the second menu using the input device or the
`graphical user interface;
`g. storing the second menu on the storage device; and
`synchronizing the data comprising the second menu
`between the storage device and at least one other data storage
`7
`
` 7
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`Petitioners' Exhibit 1020, Page
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`CBM2014-00013
`Patent 6,982,733 B1
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`medium, wherein the other data storage medium is connected to
`or is part of a different computing device, and wherein said
`second menu is manually modified after generation.
`
`D. The Alleged Grounds of Unpatentability
`
`Petitioner challenges claims 1-16 of the ’733 Patent on the grounds
`that the claims do not recite patent-eligible subject matter under 35 U.S.C.
`§ 101, and under 35 U.S.C. § 112 for improperly claiming method and
`apparatus elements in a single claim and for providing insufficient written
`description to support the claims.
`
`II. ANALYSIS
`
`We turn to Petitioner’s asserted grounds of unpatentability and Patent
`Owner’s arguments in its preliminary response to determine whether
`Petitioner has met the threshold of 35 U.S.C. § 324(a).
`
`A. Claim Construction
`As an initial step in our analysis, we determine the meaning of the
`claims for purposes of this decision. In a covered business method patent
`review, a claim in an unexpired patent shall be given its broadest reasonable
`construction in light of the specification of the patent in which it appears.
`37 C.F.R. § 42.300(b). Under the broadest reasonable construction standard,
`claim terms are given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). Petitioner asserts that all claim terms should be given their ordinary
`
`8
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` 8
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`Petitioners' Exhibit 1020, Page
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`Patent 6,982,733 B1
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`and customary meaning. Pet. 29. Petitioner provides a chart listing several
`terms that it maintains should receive their ordinary and customary meaning,
`and listing ordinary and customary definitions for the following term: (1)
`Web page, (2) central processing unit (CPU), and (3) operating system. Id.
`at 31-32. Patent Owner proposes that the Board adopt all of the previous
`judicial constructions from four district court claim construction orders.
`Prelim. Resp. 36 (citing Exs. 2014, 2015, 2016, and 2017). We note that
`many of the terms construed in the district court claim construction orders
`refer to claim language found in various patents related to the ’733 Patent,
`but not found in the claims of the ’733 Patent itself. In light of the parties’
`substantive disputes regarding patentability of the ’733 Patent claims, we
`have determined that construction is necessary for the term “Web page.” All
`other terms in the challenged claims are given their ordinary and customary
`meaning and need no further construction at this time.
`
`“Web Page”
`The term “Web page” is found in claim 1 of the ’733 Patent.
`According to Petitioner, the ordinary and customary meaning of “Web page”
`is “[a] document on the World Wide Web.” Pet. 31. Dr. Ray R. Larson
`supports Petitioner’s construction by citing a definition from the Microsoft
`Computer Dictionary. Ex. 1042 ¶ 13 (citing Ex. 1042, Ex. B, Microsoft
`Press Computer Dictionary 479 (4th ed. 1999)). We note, however, that the
`full definition found in the Microsoft Dictionary supports Patent Owner’s
`construction, discussed below. The definition is as follows:
`
`9
`
` 9
`
`Petitioners' Exhibit 1020, Page
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`CBM2014-00013
`Patent 6,982,733 B1
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`Web page n. A document on the World Wide Web. A Web
`page consists of an HTML file, with associated files for
`graphics and scripts, in a particular directory on a particular
`machine (and thus identifiable by a URL). Usually a Web page
`contains links to other Web pages. See also URL.
`
`Ex. 1042, Ex. B. Patent Owner responds that “Web page” has been
`construed in other cases involving related patents and that that construction
`should be adopted in this case. Prelim. Resp. 38-39. The previous
`construction of “Web page” is “a document, with associated files for
`graphics, scripts, and other resources, accessible over the internet and
`viewable in a web browser.” Id. at 39. We are persuaded that the ordinary
`and customary meaning of “Web page” is consistent with Patent Owner’s
`proposed construction. Accordingly, we construe “Web page” as “a
`document, with associated files for graphics, scripts, and other resources,
`accessible over the internet and viewable in a web browser.”
`
`B. Standing
`Section 18 of the AIA provides for the creation of a transitional
`program for reviewing covered business method patents. 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 term does not include patents for technological inventions.”
`AIA § 18(d)(1); see 37 C.F.R. § 42.301(a). A patent need have only one
`claim directed to a covered business method to be eligible for review. See
`Transitional Program for Covered Business Method Patents—Definitions of
`10
`
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`Petitioners' Exhibit 1020, Page
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`Patent 6,982,733 B1
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`Covered Business Method Patent and Technological Invention; Final Rule,
`77 Fed. Reg. 48,734, 48,736 (Comment 8) (Aug. 14, 2012). Section 18
`limits reviews to persons or their privies that have been sued or charged with
`infringement of a “covered business method patent.” AIA §§ 18(a)(1)(B),
`18(d)(1); see also 37 C.F.R. § 42.302.
`It is undisputed that Petitioner has been sued for infringement of the
`’733 Patent. The only dispute is whether the ’733 Patent is a “covered
`business method patent,” as defined in the AIA and 37 C.F.R. § 42.301. See
`Pet. 14-27; Prelim. Resp. 8-34. For the reasons explained below, we
`conclude that the ’733 Patent is a “covered business method patent.”
`
`1. Financial Product or Service
`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 term does not include patents for
`technological inventions.” AIA § 18(d)(1); see 37 C.F.R. § 42.301(a). In
`order to determine whether a patent is eligible for a covered business method
`patent review, we must focus on the claims. See 77 Fed. Reg. 48,734,
`48,736 (Aug. 14, 2012). A patent need have only one claim directed to a
`covered business method to be eligible for review. Id.
`In promulgating rules for covered business method reviews, the Office
`considered the legislative intent and history behind the AIA’s definition of
`“covered business method patent.” Id. at 48,735-36. The “legislative
`history explains that the definition of covered business method patent was
`11
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`Petitioners' Exhibit 1020, Page
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`drafted to encompass patents ‘claiming activities that are financial in nature,
`incidental to a financial activity or complementary to a financial activity.’”
`Id. (citing 157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011) (statement of Sen.
`Schumer)). The legislative history indicates that “financial product or
`service” should be interpreted broadly. Id.
`The invention of the ’733 Patent relates to “a software tool for
`building a menu . . . and making manual or automatic modifications to the
`menu after initial creation.” Ex. 1033, 3:43-47. The manual modification
`described in the ’733 Patent “solves a long-standing, operational issue in
`restaurant/hotel/casino food/drink ordering when customers want something
`unusual and not anticipated and available through normal computerized
`selections.” Id. at 10:54-57. Petitioner argues that the claimed systems and
`methods all relate to financial transaction/service in the hospitality industry
`such as ordering food and drinks. Pet. 17. Patent Owner responds by
`asserting that the claims are not directed to “ordering” or other financial
`transactions, but the claims are instead “directed to specialized computer
`software system functionality which may be used in those contexts.” Prelim.
`Resp. 9.
`Claim 12 of the ’733 Patent recites a method of using a computer
`system to create and communicate a menu. In addition, Figure 7, which
`depicts a menu pursuant to the claims of the ’733 Patent, includes an “order”
`screen for ordering food and drinks and a “pay” tab for paying for the
`ordered items. Ex. 1033, Fig. 7; see also id. at 11:44-51 (stating that the
`handheld device “supports pricing in the database or querying prices” and
`
`12
`
` 12
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`Petitioners' Exhibit 1020, Page
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`that it “provides for billing, status and payment with respect to orders.”).
`We agree with Petitioner; and, on this record, we have determined that the
`’733 Patent’s menus relate to a commercial transaction. We determine that
`such activity falls within a financial product or service as it is incidental or
`complementary to a financial activity, namely sales of food or drinks. Thus,
`we are persuaded that at least one claim of the ’733 Patent covers data
`processing or corresponding apparatuses for performing data processing
`used in the practice, administration, or management of a financial product
`(e.g., a menu used to order food or drinks).
`Patent Owner argues that the claims are directed to “‘technologies
`common in business environments across sectors’ with ‘no particular
`relation to the financial services sector’ and thus[, are] excluded from CBM
`review.” Prelim. Resp. 10 (citing Ex. 2006). The legislative history of the
`AIA, however, indicates that the phrase “financial product or service” is not
`limited to the products or services of the “financial services industry” and is
`to be interpreted broadly. 77 Fed. Reg. at 48,735–36 (“[t]he plain meaning
`of ‘financial product or service’ demonstrates that section 18 is not limited
`to the financial services industry”) (statement of Sen. Schumer). On this
`record, we are persuaded that claim 12 recites a method for performing data
`processing or other operations used in the practice, administration, or
`management of a financial product or service, as required by Section
`18(d)(1) of the AIA.
`
`13
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`Petitioners' Exhibit 1020, Page
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`CBM2014-00013
`Patent 6,982,733 B1
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`2. Not a Technological Invention
`In view of the “technological inventions” exception of AIA
`§ 18(d)(1), the legislative history of § 18(d)(1), and the definition of
`“technological invention” under 37 C.F.R. § 42.301(b), the Office Patent
`Trial Practice Guide provides the following guidance with respect to claim
`content that typically would not render a patent a technological invention:
`(a) Mere recitation of known technologies, such as computer
`hardware, communication or computer networks, software,
`memory, computer-readable storage medium, scanners, display
`devices, or databases, or specialized machines, such as an ATM
`or point of sale device.
`(b) Reciting the use of known prior art technology to
`accomplish a process or method, even if the process or method
`is novel and non-obvious.
`(c) Combining prior art structures to achieve the normal,
`expected, or predictable result of that combination.
`77 Fed. Reg. at 48,763–64 (Aug. 14, 2012).
`There are two requirements for a technological invention; namely,
`(1) the claimed subject matter as a whole must recite a technological feature
`that is novel and unobvious over the prior art; and (2) it must solve a
`technical problem using a technical solution. 37 C.F.R. § 42.301(b). If a
`claim fails to satisfy either of those requirements, then it is not a
`technological invention for the purposes of determining whether a patent is a
`covered business method patent under AIA § 18(d)(1).
`Petitioner asserts that the ’733 Patent claims are not directed to a
`technological invention. Pet. 22. According to Petitioner, to the extent that
`
`14
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`Petitioners' Exhibit 1020, Page
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`the claims contain any technological features, they are neither new nor
`nonobvious. Id. Petitioner notes that the specification states that “[t]he
`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 23 (quoting Ex. 1033, 12:61-65); see also Ex. 1033, 15:31-42 (“The
`inventive concept encompasses the generation of a menu in any context
`known to those skilled in the art where an objective is to facilitate display of
`the menu so as to enable selection of items from that menu . . . . Any display
`and transmission means known to those skilled in the art is equally usable
`with respect to menus generated in accordance with the claimed invention.”)
`Patent Owner responds that the inventive software system includes a
`central database that maintains “database equilibrium,” has a “single truth”
`for the hospitality data contained in the database, and causes substantive
`menu data to be formatted, sequenced, displayed, and updated correctly
`across a variety of devices. Prelim. Resp. 16. In addition, the system
`enables “manual modification” of the second menu through handwriting or
`voice capture. Id.
`On this record, we agree with Petitioner. The specification states that
`database access is programmed using Microsoft’s APIs for ActiveX Data
`Objects, and the programming steps were “commonly known.” Ex. 1033,
`11:54-56, 12:61-65. In addition, the claims are not directed to, nor does the
`specification disclose, an inventive device for manually modifying menus.
`
`15
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`Petitioners' Exhibit 1020, Page
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`Patent 6,982,733 B1
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`Id. at 6:47-52 (describing hardware used in the inventive system as
`“typical”). Thus, we are persuaded that the claims of the ’733 Patent do not
`recite a technological feature that is novel and unobvious over the prior art.
`In addition, we are not persuaded by Patent Owner’s arguments that
`the claimed subject matter as a whole solves a technical problem using a
`technical solution. The ’733 Patent was intended to “solve[] a long-
`standing, operational issue in restaurant/hotel/casino food/drink ordering
`when customers want something unusual and not anticipated and available
`through normal computerized selections.” Ex. 1033, 10:54-57. Claim 12 is
`directed to a method that purportedly solves this problem by allowing for
`manual modification of the menu. This “long-standing operational issue”,
`however, is more of a business problem than a technical problem. Patent
`Owner maintains that the ’733 Patent addresses the problem of displaying
`menus on a variety of devices with different sizes and characteristics.
`Prelim. Resp. 15. This, however, is not addressed by claim 12, which is
`directed to a method for displaying and generating a menu on a computer
`system. Claim 12’s computer system synchronizes data with a data storage
`medium, but the claim does not recite displaying the menu on a display
`associated with this storage medium. Thus, claim 12 does not address
`displaying menus on a variety of devices. Therefore, on this record we are
`persuaded that claim 12 is not directed to a technical problem.
`In view of the foregoing, we conclude that the presence of claim 12
`means that the ’733 patent is a covered business method patent under AIA
`§ 18(d)(1).
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`C. Asserted Ground Based on 35 U.S.C. § 112
`1. Improperly Mixing Method and Apparatus Elements
`Petitioner argues that apparatus claims 1-11 are unpatentable under 35
`U.S.C. § 112, second paragraph2 because they impermissibly require
`performance of at least one method step. Pet. 32. Independent claim 1 is
`directed to an “information management and synchronous communications
`system.” It recites, in relevant part:
`wherein the application software facilitates the generation of the
`second menu by allowing selection of categories and items
`from the first menu, addition of menu categories to the second
`menu, addition of menu items to the second menu and
`assignment of parameters to items in the second menu using the
`graphical user interface of said operating system, said
`parameters being selected from the modifier and sub-modifier
`menus, wherein said second menu is manually modified after
`generation.
`
`Ex. 1033, 16:16-25 (emphasis added). Independent claims 4 and 5 also are
`directed to information management and synchronous communications
`systems and recite similar wherein clauses that include language directed to
`manual modification of the second menu. Id. at 16:32-17:13. Claims 2-3,
`and 6-11 depend from independent claims 1, 4, and/or 5.
`Petitioner argues that it is unclear if independent claim 1 of the ’733
`Patent is infringed when the claimed system is supplied, or only when the
`
`2 Section 4(c) of the AIA re-designated 35 U.S.C. § 112, second paragraph,
`as 35 U.S.C. § 112(b). Because the ’733 patent has an effective filing date
`before September 16, 2012, we refer to the pre-AIA version of 35 U.S.C.
`§ 112.
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`“second menu is manually modified . . . after generation.” Pet. 34.
`Petitioner asserts that claim 4’s manual modification by “handwriting or
`voice recording” “are actions performed by a user, and are not simply
`capabilities of a computer system; indeed computer systems cannot
`handwrite.” Pet. 35 (citing Ex. 1033, 16:51-53). Patent Owner argues that
`“the manually modified menu is produced by software functionality in
`response to an input.” Prelim. Resp. 50. As such, the manual modification
`language is “a recitation of functional capability, not user action.” Id.
`On this record, we are not persuaded that the challenged claims are
`ambiguous as to whether they are satisfied by an information management
`and synchronous communications system alone or whether they require the
`step of performing a modification to the claimed menu. For example, claim
`1’s wherein clause is directed to “application software” with the ability to
`facilitate “generation of the second menu” by “selection of categories,”
`addition of menu categories and items to the second menu, and assignment
`of parameters. We are persuaded that the manual modification clause is a
`further limitation regarding the application software’s ability to facilitate
`generation of the second menu. We are not persuaded that the claims
`require the user to act upon the system; instead, we are persuaded that the
`claims are directed to capabilities of the system, as limitations on the
`“application software” that is a structural element of the claims. For the
`foregoing reasons, we are not persuaded that Petitioner has demonstrated
`that claims 1-11 are unpatentable under 35 U.S.C. § 112, second paragraph,
`for impermissibly mixing system and method elements.
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`2. Lack of Written Description for “Synchronous Communications”
`Claim Elements
`Petitioner challenges claims 1-16 of the ’733 patent as lacking
`adequate written description support in regards to the “synchronous
`communications” element found in all of the challenged claims. Pet. 39-45.
`Petitioner admits that the specification describes synchronous
`communication between a database on a handheld device and a master
`database. Id. at 40-41 (citing Ex. 1033, 10:1-9, 11:16-18, and 11:25-29).
`Petitioner, however, disputes whether the specification provides support for
`synchronous communication wherein the handheld device does not have a
`local database. Id. at 42-43. Petitioner’s expert, Dr. Larson, does not opine
`on this issue. See Ex. 1042.
`Patent Owner argues that the ’733 Patent claims are original claims
`and as such are entitled to a “strong presumption” of compliance with the
`requirements of Section 112. Prelim. Resp. 51. The Federal Circuit,
`however, has held that “[n]either the statute nor legal precedent . . .
`distinguishes between original and amended claims.” Ariad Pharm. v. Eli
`Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Thus, while
`“many original claims will satisfy the written description requirement,
`certain claims may not.” Id. at 1349; see also id. (noting that an original
`claim directed to a genus may be insufficient to demonstrate that the
`applicant invented species sufficient to support a claim to the genus).
`Determining whether the requirements of Section 112 have been met
`“requires an objective inquiry into the four corners of the specification from
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`the perspective of a person of ordinary skill in the art. Based on that inquiry,
`the specification must describe an invention understandable to that skilled
`artisan and show that the inventor actually invented the invention claimed.”
`Id. Therefore, we must examine the specification’s disclosure in order to
`ascertain whether it contains sufficient support for the disputed claim
`language.
`Patent Owner asserts that “there is nothing in any of the claims
`requiring synchronization with a handheld device ‘database’” and that the
`term “local database” is not used in the ’733 Patent. Id. at 54. In addition,
`Patent Owner maintains that the “synchronous communications” limitation
`is supported fully by the specification. The ’733 Patent specification
`describes
`fast synchronization between a central database and multiple
`handheld devices, synchronization and communication between
`a Web server and multiple handheld devices, a well-defined
`API that enables third parties such as POS companies, affinity
`program companies and internet content providers to fully
`integrate with computerized hospitality applications, real-time
`communication over the internet with direct connections or
`regular modem dialup connections and support for batch
`processing that can be done periodically throughout the day to
`keep multiple sites in synch with the central database.
`
`Ex. 1033, 4:66-5:11. This portion of the specification describes
`synchronization between handheld devices and a central database. It does
`not describe the devices as having databases resident on the devices. This is
`in contrast to portions of the specification cited by Petitioner that recite
`“multiple databases.” Pet. 40 (citing Ex. 1033, 11:25-29). In addition, we
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`note that a portion of the specification cited by Petitioner describes the
`process for downloading a database to a device and states that “If there is an
`existing menu database on the handheld device, the system will ask if the
`existing database should be replaced.” Id. at 40-41 (quoting Ex. 1033, 10:1-
`9) (emphasis added). On this record, we are persuaded that the specification
`provides support for synchronous communications between a central
`database and handheld device both with and without a database resident on
`the handheld device. Thus, for the foregoing reasons, we are not persuaded
`that claims 1-16 are more likely than not unpatentable for lacking an
`adequate written description under 35 U.S.C. § 112, first paragraph.
`
`3. Indefiniteness of and Lack of Written Description for “Transmitting
`Said Second Menu to a . . . Web Page”
`Petitioner asserts that claims 1-3 of the ’733 Patent are unpatentable
`because the term “application software for generating a second menu from
`said first menu and transmitting said second menu to a wireless handheld
`com