`CBM2015-00099
`
`Filed on behalf of Patent Owner Ameranth, Inc.
`
`By:
`
`John W. Osborne
`Osborne Law LLC
`33 Habitat Lane
`Cortlandt Manor, NY 10567
`josborne@osborneipl.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`STARBUCKS CORP.
`Petitioner
`
`v.
`
`AMERANTH, INC.
`Patent Owner
`
`____________
`
`Cases CBM2015-00091, CBM2015-00099
`Patent Nos. 6,384,850, 6871,325
`____________
`
`Declaration of Alfred C. Weaver, Ph.D.
`
`PATENT OWNER EXHIBIT 2041
`
`
`
`CBM2015-00091
`CBM2015-00099
`
`I.
`
`Introduction
`1.
`Starbucks Inc. seeks to invalidate the claims of U.S. Patent Numbers
`
`6,384,850 (the “‘850 Patent”) and 6,871,325 (the “‘325 Patent”) (collectively, the
`
`“Patents Under Review”). Starbucks filed a Petition for Covered Business Method
`
`(“CBM”) Patent Review, and an accompanying declaration from Dr. Abelsalam Helal
`
`in support, for each of these patents. This declaration represents my opinions with
`
`respect to the substance of the CBM filings and Dr. Helal’s declarations.
`
`II. Qualifications
`2.
`My educational background, professional achievements, and
`
`qualifications as a Computer Scientist and as an expert in Electronic Commerce are
`
`detailed in my curriculum vitae, which is attached hereto as Appendix A.
`
`3.
`
`I earned a Ph.D. in Computer Science at the University of Illinois at
`
`Urbana-Champaign in 1976. I also earned a Master of Science degree from that same
`
`institution in 1973. I earned a Bachelor of Science in Engineering Science from the
`
`University of Tennessee in 1971.
`
`4.
`
`I am currently a Professor of Computer Science and Associate Chair of
`
`the Department of Computer Science at the University of Virginia (“UVa”). I have
`
`been employed at UVa continuously since 1977.
`
`5.
`
`Over the period of my employment at UVa I have taught more than 25
`
`different courses, including electronic commerce, operating systems, computer
`
`networks, and various programming courses.
`
`6.
`
`In addition to my teaching duties, I am also the Founding Director of
`
`UVa’s Applied Research Institute, a group of faculty engaged in research areas related
`
`PATENT OWNER EXHIBIT 2041
`
`
`
`CBM2015-00091
`CBM2015-00099
`to national security and funded by both government and industry. To date, I have
`
`published 16 books and book chapters, 30 refereed journal articles, 139 refereed
`
`conference publications, and over 80 technical reports. I currently serve on the
`
`Advisory Council of the Editorial Board of IEEE Computer magazine.
`
`7.
`
`As a researcher, I have served as Principal Investigator or co-Principal
`
`Investigator of 130+ research projects funded by the federal government and private
`
`industry. Recent research projects include 3D printing, automated analysis of
`
`published scientific literature, secure mobile computing, crowdsourcing, data integrity,
`
`and trustworthy computing.
`
`8.
`
`I have been the graduate advisor for 69 Ph.D. and master’s students, all in
`
`Computer Science.
`
`9.
`
`I have founded five companies. One of these, Network Xpress, Inc., was a
`
`spin-off from research work in computer networks funded by the U. S. Navy at UVa.
`
`At its peak, another company (Reliacast, Inc.) employed 90 people and developed
`
`software for secure streaming of multimedia. Reliacast was ultimately sold to Comcast.
`
`10.
`
`I have served as an expert witness in 20+ patent infringement cases since
`
`1988. Six of those cases have gone to trial. In the past four years I have testified in
`
`court in two cases:
`VT Technologies v. Twitter, U.S. District Court, Eastern Virginia
`(Norfolk). I testified on behalf of defendant Twitter.
`
`ePlus, Inc. v. Lawson Software, U.S. District Court, Eastern Virginia
`(Richmond). I testified on behalf of plaintiff ePlus.
`
`PATENT OWNER EXHIBIT 2041
`
`
`
`CBM2015-00091
`CBM2015-00099
`
`III. Report Preparation
`11.
`In developing the opinions discussed in this report, I studied the ‘850
`
`Patent and the ‘325 Patent, the prosecution file histories for each of these patents, the
`
`references cited by Starbucks in the CBM reviews, Starbucks’ Petitions, Dr. Helal’s
`
`declaration, and the Board’s Decisions Instituting CBM review.
`
`12. A list of the materials on which I have relied while producing this
`
`Declaration is attached in Appendix B.
`
`13. My opinions are based on the materials I have reviewed. If Petitioner
`
`introduces new evidence or supporting material, I reserve the right to supplement this
`
`report if necessary based on the new information.
`
`IV. Applicable Legal Principles
`14.
`I am not an attorney. For the purposes of this report, I have been informed
`
`about certain aspects of the law that are relevant to my analysis and opinion. In
`
`formulating my opinions, I have taken into account the following principles of law
`
`regarding patent invalidity, which I understand to be accurate statements of the law.
`
`15.
`
`I understand that if the claimed invention is not anticipated by the prior
`
`art, the claim could still be invalid under 35 U.S.C. § 103(a) because the difference
`
`between the claimed subject matter and the prior art are such that the subject matter as
`
`a whole would have been obvious at the time the invention was made to one of
`
`ordinary skill in the relevant art. I understand that one of ordinary skill is presumed to
`
`have familiarity with analogous prior art in the relevant field of invention.
`
`16. Regarding my obviousness analysis, my instructions were to consider the
`
`following: (a) the scope and content of the prior art; (b) the differences between the
`
`PATENT OWNER EXHIBIT 2041
`
`
`
`CBM2015-00091
`CBM2015-00099
`prior art and the subject matter of the claimed invention; and (c) the level of ordinary
`
`skill in the art at the time of the claimed invention. I understand that the objective
`
`indicia of non-obviousness (or secondary considerations of non-obviousness) should
`
`also be considered before any determination of obviousness is made.
`
`17.
`
`I have also been informed that a claimed invention composed of several
`
`elements is not proved obvious merely be demonstrating that each of its elements was,
`
`independently, known in the prior art. I understand that when determining invalidity
`
`for obviousness there must be some rational underpinning to support the legal
`
`conclusion of obviousness, including an explicit reason or motivation to combine
`
`references to arrive at the claimed invention. I also understand that a finding of
`
`obviousness can be grounded in common sense, but that even then, the finding must
`
`contain explicit and clear reasoning providing some rational underpinning of why
`
`common sense compels a finding of obviousness. I understand that I should consider
`
`whether there is an “apparent reason” to combine the prior art references or elements
`
`in the way the patent claims. To determine the existence of such an “apparent reason”
`
`to combine the prior art references or elements in the way a patent claims, it will often
`
`be necessary to look to the interrelated teaching of multiple patents, to the effects of
`
`demands known to the design community or present in the marketplace, and to the
`
`background knowledge possessed by a person having ordinary skill in the art.
`
`18.
`
`I understand that evidence of secondary considerations supporting non-
`
`obviousness can be used to rebut a finding of obviousness. I also understand that a
`
`combination of references that does not result in each and every limitation of the
`
`claimed invention, references that teach away from one another (and hence, contravene
`
`PATENT OWNER EXHIBIT 2041
`
`
`
`CBM2015-00091
`CBM2015-00099
`the reasoning for the combination thereof), and reliance on impermissible hindsight in
`
`constructing a combination of references can each be determinative of a finding of
`
`non-obviousness.
`
`19.
`
`In addition, for objective indicia of non-obviousness to be accorded
`
`substantial weight, its proponent must establish a nexus between the evidence and the
`
`merits of the claimed invention. Where the offered objective indicia actually results
`
`from something other than what is both claimed and novel in the claim, there is no
`
`nexus to the merits of the claimed invention.
`
`20.
`
`I also understand that if an independent claim is not obvious, then its
`
`dependent claims are also not obvious.
`
`V.
`
`Person of Ordinary Skill in the Art
`21. My opinions have been made from the standpoint of a person of ordinary
`
`skill in the art (“POSA”). A POSA at the time the patents under review were filed
`
`would have had a Bachelor of Science degree in either electrical engineering or
`
`computer science and at least three years of experience in the hospitality market in the
`
`fields of developing software for wireless networks and devices, developing Internet-
`
`based systems or applications, with knowledge of or equivalent experience in software
`
`development in the hospitality market for at least three years.
`
`VI. The Patents Under Review
`22.
`The ‘850 and ‘325 Patents are related. The ‘325 Patent claims priority as
`
`a continuation from the application from which the ‘850 Patent issued, which original
`
`application was filed on September 21, 1999. The ‘850 and ‘325 Patents have an
`
`identical specification. Even though my summary below references the ‘850 Patent, it
`
`PATENT OWNER EXHIBIT 2041
`
`
`
`CBM2015-00091
`CBM2015-00099
`is equally applicable to the ‘325 Patent. Also, as the independent claims of the ‘325
`
`Patent include all elements recited in ‘850 independent claim 12, all of my references
`
`to ‘850 claim 12 apply equally to ‘325 claims 11-13. Further, I provide citations to
`
`Petitions and Institution Decisions in both the ‘850 and ‘325 proceedings, and such
`
`citations to discussions relevant to ‘850 claim 12 apply equally to ‘325 claims 11-13.
`
`23. According to the Abstract of the ‘850 Patent, the invention provides that
`
`“[a]n information management and synchronous communications system and method
`
`facilitates database equilibrium and synchronization with wired, wireless and Web-
`
`based systems, user-friendly and efficient generation of computerized menus and
`
`reservations for restaurants and other applications that utilize equipment with
`
`nonstandard graphical formats, display sizes and/or applications for use in remote data
`
`entry, information management and communication with a host computer, digital input
`
`device or remote pager via standard hardwired connection, the internet, a wireless link
`
`or the like.”
`
`24.
`
`The ‘850 patent describes and claims various forms of an information
`
`management and synchronous communications system primarily contemplated for use
`
`in the hospitality industry. I am advised that the inventions described in the patents are
`
`software systems that have been licensed by 44 independent companies. These claimed
`
`inventions necessarily synchronize the operations of computers, databases,
`
`Webservers, and wireless handheld computing devices (such as smartphones).
`
`25.
`
`The invention encompassed by the challenged claims provides a system
`
`solution in which a central database maintains “database equilibrium” and contains a
`
`“single truth” with respect to hospitality applications and data‒for example, an up-to-
`
`PATENT OWNER EXHIBIT 2041
`
`
`
`CBM2015-00091
`CBM2015-00099
`date restaurant menu with current items and pricing‒and through the software modules
`
`described in the patents (e.g., synchronous communication functionality as recited in
`‘850 claims 12-16) causes that same substantive menu data to be correctly formatted,
`
`sequenced, displayed and updated across a variety of connected devices‒including but
`
`not limited to different types of wireless handheld computing devices, such as
`
`smartphones. See ‘850 patent, passim. At the time of the inventions of the ’850 patent,
`
`it is my opinion that the above-described computer software functionality, and the
`
`specifically recited arrangement of computer and software components, were unknown
`
`to a person of skill in the art, and the claimed inventions were not achievable using
`
`existing components either with or without the knowledge of a person of skill in the
`
`art.
`
`VII. Claim Construction
`
`26. With regard to the obviousness analysis contained herein, I have been
`
`asked by counsel to apply the broadest reasonable interpretation (“BRI”) based on the
`
`intrinsic evidence, to consider district court claim constructions, and to apply the
`
`PTAB’s constructions unless stated otherwise herein.
`
`27.
`
`It is my opinion that the BRI of “wireless handheld computing device” is
`
`“a wireless computing device that is sized to be held in one’s hand.” See Everingham
`
`Order (Exh. 2033 at 24).
`
`28.
`
`It is my opinion that “central database” is “a database file structure
`
`connected to the system in association with a central server, comprised of records, each
`
`containing fields, together with a set of operations for searching, sorting, recombining
`
`and other functions.” Microsoft Comp. Dict. (4th ed.1999) (Exh. 2015, p. 123);
`
`PATENT OWNER EXHIBIT 2041
`
`
`
`CBM2015-00091
`CBM2015-00099
`Exh.1001 at 2:24, 11-34-35 (“backoffice server (central database)”); id. at 2:8-10,
`
`11:13-15 (“synchronization between a central database and multiple handheld
`
`devices”).
`
`29.
`
`I follow the PTAB’s prior construction of “web page” to mean “a
`
`document, with associated files for graphics, scripts, and other resources, accessible
`
`over the internet and viewable in a web browser.” ‘850 Inst. Dec. 11; see also
`
`CBM2014-00015 (Exh. 1017 thereto at 8)).
`
`30.
`
`I interpret “web server” as follows. The Microsoft Computer Dictionary
`
`states in regard to “Web Server:” “See HTTP Server.”(Exh. 2042 (Page 479)). The
`
`Dictionary then states in regard to “HTTP Server:” “Server software that uses HTTP to
`
`serve up HTML documents and any associated files and scripts when requested by a
`
`client such as a web browser.” (Exh. 2042 (Page 224)). I believe that this definition is
`
`correct.
`
`31.
`
`I interpret “communications control module” (“CCM”) as a software
`
`layer, as Judge Payne concluded in prior district court litigation stating that “the
`
`specification itself provides the best construction for the term at issue.” (Exh. 2043 at
`
`13). Based on the District Court constructions and intrinsic evidence, it is my opinion
`
`that the CCM is “a layer that sits on top of any communication protocol and acts as an
`
`interface between hospitality applications and the communication protocol.” See Exh.
`
`1001 4:9-13. Further, it is my opinion that it is the software-based CCM that provides
`
`the claimed “automatic” communications “routing” functionality as shown by the
`
`specification, e.g.,“[a] communication control program monitors and routes all
`
`communications to the appropriate devices” which “must be running for proper
`
`PATENT OWNER EXHIBIT 2041
`
`
`
`CBM2015-00091
`CBM2015-00099
`communications to exist between all devices on the network.” (Exh. 1001 9: 21-22,
`
`38-39 (emphasis added)). It is also the CCM that deals concurrently with both HTTP
`
`and non-HTTP communications messaging protocols of the system as claimed, and
`
`which also supports the integration of the separately recited API (which then also deals
`
`with software application-to-application direct integration and with third party
`
`systems/devices such as point-of-sale (POS) systems, as discussed further below).
`
`32.
`
`I follow the PTAB’s prior construction of “synchronized” in another
`
`proceeding on the same patent, where the Board construed this term to mean “made, or
`
`configured to make, consistent.” CBM2015-00080, Inst. Dec. 9.
`
`33.
`
`It is my opinion that the Board correctly construed “hospitality
`
`applications” to mean “applications used to perform services or tasks in the hospitality
`
`industry.” However, it is my opinion that this was incomplete because it failed to
`
`establish the actual boundaries of the “hospitality industry.” The specification states
`
`“hospitality applications, e.g., reservations, frequent customer[,] ticketing, wait lists,
`
`etc.” Exh. 1001 4:6–7; CBM2015-00091 (‘850 proceeding), Inst. Dec. 12. Further, in
`
`distinguishing prior art in the ‘325 application, Patent Owner stated: “ As known in the
`
`art, a hospitality software application is, for example, a piece of software used to
`
`provide operational solutions in hospitality industries such as restaurants and hotels,
`
`concerning, for example, food ordering, menus, wait-lists, and reservations.” Exh.
`
`2039 at 7 (emphasis added).
`
`34. Despite the teachings of the intrinsic evidence as to the scope of the
`
`PATENT OWNER EXHIBIT 2041
`
`
`
`CBM2015-00091
`CBM2015-00099
`hospitality industry, the Board relied on1 Petitioner’s excerpts from the Dittmer book
`(Exh. 1035) to conclude that “hospitality” referred to the broader “travel and
`
`transportation” industry (of which “hospitality” is only a subset). The Board stated:
`
`“[o]ur construction of hospitality includes businesses, such as car rental agencies, that
`
`provide services to travelers.” ‘850 Inst. Dec. 12. The Board mistakenly viewed Patent
`
`Owner’s proposed construction as a “narrowing” of Petitioner’s proposal for the
`
`broader and unclaimed “travel and transportation” industry and in so doing relied on a
`
`reference outside the correct construction. Further, the correct definition of the
`
`skills/knowledge of a POSA includes actual experience in the hospitality market, and
`
`such an experienced POSA would have understood the difference between the actual
`
`“hospitality” market and the broader “travel and tourism” market. The ‘325 patent does
`
`not include any mention of the terms “travel” and “tourism.” Thus a POSA would have
`
`understood the scope of the claims to exclude “car rentals,” a subset of the broader
`
`“travel and tourism” market and not within the “hospitality” subset. Thus, the Board’s
`
`own decision, in viewing hospitality as including the “traditional” restaurant processes
`(as confirmed by Dittmer)2 was correct in part. However, the Board viewed the
`definition too broadly due to the fact that it did not have access to the complete Dittmer
`
`reference at the time. The full Dittmer reference, and in particular its Glossary, compels
`
`1 “On this record, we are persuaded that the ordinary and customary meaning of
`hospitality is broad enough to encompass car rental activities.” Inst. Dec. 12 (emphasis
`added).
`2 “Here, the authors of the text discuss a ‘traditional view’ of hospitality that ‘refers to
`the act of providing food, beverages, or lodging to travelers.’” (Inst. Dec. at 11)
`(emphasis added); see also Dittmer Glossary of Terms (Exh. 2040).
`
`PATENT OWNER EXHIBIT 2041
`
`
`
`CBM2015-00091
`CBM2015-00099
`my conclusion that “hospitality” excludes both “car rentals” and the broader and
`
`unclaimed “travel and tourism” industry.
`
`35. Confirming that the hospitality market definition was defined by the
`
`Dittmer authors to be “food/beverages and lodging” for guests and that hospitality is
`merely a subset of the larger superset “Travel and Tourism” (a different and unclaimed
`
`term), Dittmer stated:
`In this chapter and the two that follow, we will turn our attention from the
`specifics of food, beverage and lodging operations to the larger industry,
`of which hospitality operations are a part; travel and tourism.
`
`Exh. 2040, Dittmer at p. 396 (emphasis added).
`
`36.
`
`Thus the “hospitality industry” is not only different from the “travel and
`
`tourism” industry, it is only a “part,” i.e., a subset of the larger “travel and tourism”
`
`industry superset. This is contrary to Petitioner’s argument that “ [t]he car rental
`
`applications described in Brandt are hospitality applications. Car rental companies fall
`
`within the “Travel and Tourism” sector of the hospitality industry. Ex. 1035 at 11-14
`
`and 403-404." (‘325 Pet. at 48-49 (emphasis added)). It is my opinion that Petitioner’s
`
`characterization was backwards, that in fact Dittmer confirms that “hospitality” is a
`
`sector of the broader “Travel and Tourism” industry.
`
`37.
`
`The Dittmer Glossary (pp. 530-560 of Exhibit 2040, the complete Dittmer
`
`reference), i.e., the Dittmer authors' “dictionary of terms,” includes the actual
`
`definitions below, which in my opinion demonstrates that the PTAB misapprehended
`
`the portions of Petitioner’s Dittmer exhibit (Exh. 1035):
`Hospitality: “Hospitality is a term derived from the Latin word
`“hospitare”, meaning “to receive as a guest.” “To receive as a guest” is a
`phrase that implies a host prepared to meet a guest's basic requirements
`
`PATENT OWNER EXHIBIT 2041
`
`
`
`CBM2015-00091
`CBM2015-00099
`while that guest is away from home – food, beverages and lodging.
`(Dittmer, p. 543; Exh. 2040; emphasis added)
`Hospitality Industry: “The hospitality industry consists of businesses
`that provide food, beverages, or lodging to travelers. (Id., p. 543;
`emphasis added)
`Travel and Tourism: The terms travel and tourism are commonly linked
`together to create this special term used to refer to those businesses
`providing primary service to travelers. These include the traditional
`hospitality businesses and a number of others closely linked to them in
`such fields as entertainment, recreation, and transportation, plus travel
`agencies and tour operators.” (Id., p. 561; emphasis added)
`As confirmed by these Dittmer definitions, a “car rental” is not a “hospitality
`application,” nor a hospitality “reservation,” as those terms are understood in the
`
`hospitality market. Rather than supporting the argument that Brandt teaches
`
`“hospitality applications, ” Dittmer itself shows that it is erroneous to read Brandt, a
`
`car-rental reference, to meet the “hospitality applications” limitation or apply Brandt to
`
`the critical “central database” limitation of the ‘850 and ‘325 claims.
`
`38.
`
`The Board recognized examples of hospitality applications as, “e.g.,
`
`reservations, frequent customer ticketing, waitlists, etc.” (‘850 Inst. Dec. at 12). The
`
`Board’s established construction for “hospitality applications” is “applications used to
`
`perform services or tasks in the hospitality industry” (‘850 Inst. Dec. at 13; emphasis
`
`added.) Thus, Dittmer confirms that “auto rentals” are not in the “hospitality
`
`industry,”–they are in fact outside of it–in the unclaimed and broader “travel and
`
`tourism industry.”
`
`39.
`
`It is my opinion that the recited “application program interface” is not a
`
`generic API divorced from the definition of its function within ‘850 claim 12. See also
`
`PATENT OWNER EXHIBIT 2041
`
`
`
`CBM2015-00091
`CBM2015-00099
`
`the discussion of the “integration” term below.
`
`40.
`
`In another case on a related patent, the Board construed “outside
`
`applications” to mean “third party applications, such as point of sale companies,
`
`affinity program companies, and internet content providers.” CBM2015-00080, Inst.
`
`Dec. 10. I follow this construction.
`
`41.
`
`In another case on a related patent, the Board construed “integration” to
`
`mean “combining of different activities, programs, or hardware components into a
`
`functional unit.” CBM2015-00080, Inst. Dec. 11. I follow the Board’s construction. In
`
`my opinion, this term and construction also must be considered in relation to the
`
`“CCM” and “outside applications” terms as well.
`
`42.
`
`It is my opinion that the proper construction for “single point of entry for
`
`all hospitality applications” is one that leverages Judge Payne’s focused construction
`
`of “single point of entry” itself, but the complete element needs to be considered as a
`
`whole to be consistent with the entirety of claim 13 (as well as the specification
`
`description directly related to this element). Judge Payne construed “a single point of
`
`entry” as “a center of communication.” (Exh. 2043 at 18). It is my opinion that this is
`
`the proper BRI construction but that the full term in which it appears, as the core
`
`aspect of claim 13, should be construed as “a center of communication for all
`
`hospitality applications.”
`
`43.
`
`In my opinion, “automatic” functionality is a key inventive concept of the
`
`patents and, as explained above relative to the CCM and the specification at col. 9, it is
`
`the CCM which must be running that provides the recited “automatic” (i.e., routing)
`
`functionality. Further, the specification states that “[n]o user action is needed during
`
`PATENT OWNER EXHIBIT 2041
`
`
`
`CBM2015-00091
`CBM2015-00099
`operation of the software once the application is launched.” (Exh. 1001 9: 27-29
`
`(emphasis added)). “Automatic” is “without user action” and thus means “done or
`
`produced as if by machine.” The phrase “[n]o user action” is used in the specification
`
`at 9:27 and is consistent with the ordinary and customary definition of “automatic”
`
`established by the BPAI/PTAB. See BPAI Appeal No. 2010-000055 at 5 (Exh. 2012)
`
`(relying on Merriam Webster Collegiate Dictionary (http://www.merriam-
`
`webster.com/dictionary/automatic). I agree with the BPAI/PTAB’s established
`
`definition.
`
`44.
`
`In addition to correctly construing the CCM as a functionally independent
`
`layer as discussed above, it is my opinion that “wherein the communications control
`
`module is an interface between the hospitality applications and any other
`
`communications protocol” must be separately considered and construed as part of this
`
`broader claim element itself as well as in the context of “integration” and “outside
`
`applications,” and the claim as a whole.
`
`45.
`
`The Board’s initial determination in the ‘325 case, CBM2015-00099, that
`
`neither the claims nor the specification “require more than [] web based
`
`communications protocols” (CBM2015-00099, Inst. Dec. 35) and that “the only
`
`specific protocol discussed in the specification is HTTP” (Id. at 32) ignored that the
`
`system as claimed “integrates” with, e.g., point-of-sale (POS) systems, and
`
`accommodates and adapts to new protocols without the necessity to change the
`
`underlying/core hospitality applications, a concept not taught by any of the asserted
`
`references as discussed below. For example, the claims and specification refer to
`
`“integration” with “outside applications.” i.e., third party systems such as POS system
`
`PATENT OWNER EXHIBIT 2041
`
`
`
`CBM2015-00091
`CBM2015-00099
`devices (which a POSA reading the specification would understand to operate with
`different protocols).3 The specification states:
`A simple point to point wireless capability is contemplated which permits
`simple digital messages to be sent from the wireless handheld devices ...
`to a receiver in a beeper and/or valet parking base-station. …A simple
`protocol is used to acknowledge receipt of the message and thus
`simultaneous communication is not necessary, which reduces the cost of
`the wireless link.
`Exh. 1001 11:49-57 (emphasis added). It is apparent that this passage refers to an
`
`exemplary simple digital messaging (i.e., non-HTTP) “wireless” protocol for, e.g.,
`
`interfacing with pagers and beepers, just as a communication with a third-party POS
`
`system might involve a different protocol. The claimed CCM as described by the
`
`specification accommodates and routes messages to such systems/devices when
`
`appropriate, which a system relying only on web browser-based protocols could not
`
`do.
`
`46. My aforesaid conclusion that the CCM functionality as described in the
`
`specification provides routing to different systems/devices and is not limited to web
`
`browser-based protocols is consistent with the specification requirement that the CCM
`
`must be capable of concurrent communications via both HTTP and non-HTTP
`
`protocols while monitoring and routing messages operating under different protocols
`
`3Exh.1001 9:21-27 (“A communications control program monitors and routes all
`communications to the appropriate devices. It continuously monitors the wireless
`network access point and all other devices connected to the network such as pagers,
`remote devices, internet Web links and POS software. Any message received is
`decoded by the software, and then routed to the appropriate device.”).
`
`PATENT OWNER EXHIBIT 2041
`
`
`
`CBM2015-00091
`CBM2015-00099
`
`to the appropriate devices/components as recited in the claims.4
`47.
`It is thus my opinion that “wherein the communications control module is
`
`an interface between the hospitality applications and any other communications
`
`protocol” should be construed, pursuant to the claim language itself and the
`
`specification, as “a server-side software layer that provides an interface between the
`
`hospitality applications and communication protocols and which monitors and routes
`
`communications between different devices while concurrently using different
`
`protocols.” This construction is compelled by the specification, which clearly
`
`discloses at least two different protocols:
`The communication module also provides a single point of entry for all
`hospitality applications, e.g., reservations, frequent customer[,]ticketing,
`wait lists, etc. to communicate with one another wirelessly and over the
`Web. This communication module is a layer that sits on top of any
`communication protocol and acts as an interface between hospitality
`applications and the communication protocol.
`Exh. 1001 4:5-11.
`A communications control program monitors and routes all
`communications to the appropriate devices. It continuously monitors the
`wireless network access point and all other devices connected to the
`network such as pagers, remote devices, internet Web links and POS
`software. Any message received is decoded by the software, and then
`routed to the appropriate device.
`Exh. 1001 9:21-27 (emphasis added). The CCM as part of the claimed system as a
`
`whole thus provides an interface for and between the hospitality applications on
`
`4 Similarly, dependent claim 15 of the ‘325 patent (Exh. 1002) recites a “wireless
`paging device,” which operates under a non-HTTP protocol, further reinforcing that
`the CCM must have functionality to interface to multiple protocols.
`
`PATENT OWNER EXHIBIT 2041
`
`
`
`CBM2015-00091
`CBM2015-00099
`different devices/clients and using different protocols including non-HTTP protocols.
`
`48.
`
`It is my opinion that the Board erred by concluding in the Institution
`
`Decision that ‘325 claims 11-13 were not three different core functions of hospitality
`
`applications simply because the specification itself has broader scope. The Board
`
`ignored the explicit claim recitations directed to specific types of hospitality
`
`applications (‘325 Inst. Dec. 37):
`
`Thus, on this record, we are not persuaded that the claims are to be
`interpreted as narrowly focusing on food ordering or restaurant
`reservations and waitlists.
`First, these claim elements as part of the fourth wherein clause must be construed from
`
`the perspective of a POSA inclusive of experience in the hospitality market at the time
`
`of the invention, and based on two tenets of claim construction, i.e., that the claim
`
`must be construed as a whole and that claim differentiation mandates a different
`meaning for each of the “orders,” “waitlists” and “reservations” terms.5 Additionally
`the specification itself informs the POSA that each of these are different from one
`
`another and that they are independent hospitality applications (not once but three times
`in the first column of the specification).6 Pursuant to the canons of claim construction
`
`5 "In the absence of any evidence to the contrary, we must presume that the use [of]
`different terms in the claims connotes different meanings." CAE Screenplates Inc. v.
`Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000).
`6 “[T]he hospitality industry, e.g., for restaurant ordering, reservations and wait-
`list management” (Exh. 1001 1:21-23), “for the time criticality of ordering,
`reservation and wait-list management” (Id. 1:54-55) and “there is still no integrated
`solution to the ordering/waitlist/reservation problem. (Id. 1:60-61) (emphasis
`added).
`
`PATENT OWNER EXHIBIT 2041
`
`
`
`CBM2015-00091
`CBM2015-00099
`the same element/functionality in the prior art cannot meet the differing limitations
`
`between these three independent claims. The inventors followed the `850 patent
`
`specification in ‘850 claim 12 with broader “hospitality” limitations. But these three
`
`independent claims of the ‘325 patent each are directed to different limitations as to the
`
`“type” of hospitality. The inventors also used the different terms in the prosecution
`
`history of the `325 patent to distinguish prior art (Exh. 2039 at 11). Thus a different
`
`meaning/function is compelled for each of them. The fourth wherein clause of these
`
`claims reflects the data that is a type of “hospitality applications and data” as recited in
`
`these claims and thus each of the terms must be constructed as a particular species of
`
`the hospitality industry genus which cannot be conflated with nor be equated to other
`
`species.
`
`49. Claim 11 of the '325 Patent recites hospitality applications that are
`
`restricted to ordering "wherein … the synchronized data relates to orders." The
`
`following definitions from the Dittmer glossary (Exh