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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`STARBUCKS CORPORATION
`Petitioner
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`v.
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`AMERANTH, INC.
`Patent Owner
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`CASE: To Be Assigned
`Patent No. 6,384,850 B1
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`
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`PETITION FOR COVERED BUSINESS METHOD PATENT REVIEW
`OF
`U.S. PATENT NO. 6,384,850 B1
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`Starbucks Corp. Exhibit 1056
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`TABLE OF CONTENTS
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`Page
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`EXHIBIT LIST ........................................................................................................ iv
`I.
`INTRODUCTION .......................................................................................... 1
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(b) ............................. 2
`A.
`REAL PARTY IN INTEREST ............................................................ 2
`B.
`RELATED MATTERS ........................................................................ 2
`C.
`LEAD AND BACK-UP COUNSEL ................................................... 3
`D.
`SERVICE INFORMATION ................................................................ 4
`III. REQUIREMENTS FOR COVERED BUSINESS METHOD
`PATENT REVIEW ........................................................................................ 4
`A. GROUNDS FOR STANDING ............................................................ 4
`1.
`Eligibility Based on Infringement Suit ...................................... 5
`2.
`Eligibility Based on Lack of Estoppel by Other AIA
`Trials .......................................................................................... 5
`The ’850 Patent is a Covered Business Method Patent ............. 5
`3.
`IDENTIFICATION OF CHALLENGE ............................................. 13
`1.
`Claims Challenged ................................................................... 13
`2.
`The Prior Art ............................................................................ 13
`3.
`Statutory Grounds of Challenge and Legal Principles ............ 14
`4.
`Supporting Evidence Relied Upon For The Challenge ........... 16
`5.
`Claim Construction .................................................................. 16
`6.
`How Claims Are Unpatentable Under Statutory Grounds ...... 16
`IV. OVERVIEW OF THE ’850 PATENT ......................................................... 17
`A.
`SUMMARY OF THE ’850 PATENT ................................................ 17
`B.
`SUMMARY OF PROSECUTION FILE HISTORY......................... 21
`C.
`SUMMARY OF CBM2014-00015 PROCEEDING ......................... 22
`D.
`PATENT OWNER’S INTERPRETATION OF
`CHALLENGED CLAIMS IN LITIGATION .................................... 23
`
`B.
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`-i-
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`Starbucks Corp. Exhibit 1056
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`PROPOSED CLAIM CONSTRUCTION .......................................... 24
`STATE OF THE ART PRIOR TO THE ’850 PATENT ................... 24
`1.
`The Internet and Web-Based Applications .............................. 25
`2.
`Handheld Computing Devices ................................................. 26
`3.
`Computers in the Hospitality Industry ..................................... 27
`LEVEL OF ORDINARY SKILL IN THE ART ............................... 27
`G.
`IT IS MORE LIKELY THAN NOT THAT THAT AT LEAST ONE
`CLAIM OF THE ’850 PATENT IS UNPATENTABLE ............................ 28
`A.
`INVALIDITY OF THE CHALLENGED CLAIMS UNDER 35
`U.S.C. § 112 ....................................................................................... 28
`1.
`The “Hospitality Applications and Data” Limitations
`(Grounds 1-3) ........................................................................... 28
`a.
`Ground 1: The Challenged Claims are Invalid for
`Lack of Enablement Because of the “Hospitality
`Applications and Data” Limitations .............................. 29
`Ground 2: The Challenged Claims are Invalid for
`Being Indefinite Because of the “Hospitality
`Applications and Data” Limitations .............................. 31
`Ground 3: The Challenged Claims are Invalid for
`Lack of Written Description Because of the
`“Hospitality Applications and Data” Limitations ......... 34
`The “Communications Control Module” Limitations ............. 35
`a.
`Ground 4: The Challenged Claims are Invalid for
`Lack of Enablement Because of the
`“Communication Control Module” Limitations ............ 36
`Ground 5: The Challenged Claims are Invalid for
`Being Indefinite Because of the “Communication
`Control Module” Limitations ........................................ 40
`
`b.
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`c.
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`2.
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`b.
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`TABLE OF CONTENTS
`(continued)
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`Page
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`-ii-
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`E.
`F.
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`V.
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`Starbucks Corp. Exhibit 1056
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`TABLE OF CONTENTS
`(continued)
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`Page
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`
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`c.
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`Ground 6: The Challenged Claims are Invalid for
`Lack of Written Description Because of the
`“Communication Control Module” Limitations ............ 41
`Ground 7: The Challenged Claims Are Invalid for Lack
`of Enablement Because the Specification Fails to
`Disclose the “Software Libraries” that Supposedly
`Enable the Claimed Subject Matter ......................................... 42
`Ground 8: Each of the Challenged Claims, as a Whole, is
`not Enabled .............................................................................. 43
`INVALIDITY OF THE CHALLENGED CLAIMS FOR
`OBVIOUSNESS UNDER 35 U.S.C. § 103 ....................................... 44
`1.
`Ground 9: The Challenged Claims Are Obvious Over
`Brandt In View Of Nethopper .................................................. 44
`Ground 10: The Challenged Claims Are Obvious Over
`Brandt In View Of Demers And Alonso ................................. 64
`C. GROUND 11: INVALIDITY OF THE CHALLENGED
`CLAIMS UNDER § 101 .................................................................... 68
`1.
`The Challenged Claims Are Directed to Abstract Ideas .......... 69
`2.
`The Challenged Claims Do Not Include An “Inventive
`Concept” That Is “Significantly More” Than the Abstract
`Idea ........................................................................................... 72
`The Challenged Claims Fail the “Machine-or-
`Transformation” Test ............................................................... 78
`VI. THE GROUNDS OF INVALIDITY ARE NOT REDUNDANT ............... 79
`VII. CONCLUSION ............................................................................................. 80
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`B.
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`3.
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`4.
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`2.
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`3.
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`-iii-
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`Starbucks Corp. Exhibit 1056
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`
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`Petition for Covered Business Method Patent Review of U.S. Patent 6,384,850 B1
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`
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`EXHIBIT LIST
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`
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`Ex. 1001 U.S. Patent No. 6,384,850 B1 to McNally et al. (the “’850 Patent”)
`
`Ex. 1002 U.S. Patent No. 6,871,325 B1 to McNally, et al. (the “’325 patent”)
`
`Ex. 1003 Declaration of Abdelsalam Helal, Ph.D. including
`Appendix A (Curriculum Vitae)
`
`Ex. 1004
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`Ex. 1005
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`Japanese Unexamined Application No. H10-247183 to Brandt et al
`(“Brandt”)
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`English translation of Brandt (Ex. 1004) and executed affidavit
`attesting to the accuracy of the English translation
`
`Ex. 1006 NetHopper Version 3.2 User’s Manual (“NetHopper”)
`
`Ex. 1007 Declaration of Wayne Yurtin with respect to NetHopper (Ex. 1006)
`Jeff Walsh, Apple Releases MesssagePad 2100 Handheld PCs,
`InfoWorld, Oct. 27, 1997, at 50
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`Ex. 1008
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`Ex. 1009 Alan Demers et al., The Bayou Architecture: Support for Data Sharing
`Among Mobile Users (“Demers”)
`
`Ex. 1010
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`IEEE Abstract for Demers
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`Ex. 1011
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`Library of Congress catalog entry for book containing Demers
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`Ex. 1012 Gustavo Alonso et al., Exotica/FMDC: A Workflow Management
`System for Mobile and Disconnected Clients (“Alonso”)
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`Ex. 1013
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`Springer Abstract for Alonso
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`Ex. 1014
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`Library of Congress catalog entry for book containing Alonso
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`Ex. 1015
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`’850 Patent Prosecution History, Nov. 29, 2000 Office Action
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`Ex. 1016
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`’850 Patent Prosecution History, Feb. 26, 2001 Amendment
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`’850 Patent Prosecution History, May 22, 2001 Office Action
`-iv-
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`Ex. 1017
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`Starbucks Corp. Exhibit 1056
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`Petition for Covered Business Method Patent Review of U.S. Patent 6,384,850 B1
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`Ex. 1018
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`’850 Patent Prosecution History, July 19, 2001 Amendment
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`Ex. 1019
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`Excerpts from John December and Mark Ginsburg, HTML & CGI
`Unleashed (1995)
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`Ex. 1020
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`Excerpts from Brian Francis et al., Active Server Pages 2.0 (1998)
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`Ex. 1021
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`Excerpts from John Rodley, Writing Java Applets (1996)
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`Ex. 1022
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`Ex. 1023
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`Excerpts from Mark C. Reynolds and Andrew Woolridge, Using
`JavaScript (1996)
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`Excerpts from Abdelsalam (Sumi) Helal et al, Any Time, Anywhere
`Computing, Mobile Computing Concepts and Technology (1999)
`
`Ex. 1024 Newton Solutions Guide, Issue 1 (1995)
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`Ex. 1025 Newton Solutions Guide, Issue 2 (1996)
`
`Ex. 1026 Newton Connection Utilities User’s Manual for the Macintosh
`Operating System (1997)
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`Ex. 1027 Newton Connection Utilities User’s Manual for Windows (1997)
`
`Ex. 1028 Newton MessagePad 2100 User’s Manual (1997)
`
`Ex. 1029 Nokia 9000i Communicator Owner’s Manual (1997)
`
`Excerpts from Douglas Boling, Programming Microsoft Windows CE
`(1998)
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`Excerpts from Terence A. Goggin, Windows CE Developer’s
`Handbook (1999)
`
`Excerpts from Evaggelia Pitoura and George Samaras, Data
`Management for Mobile Computing (1998)
`
`Excerpts from Michael L. Kasavana and John J. Cahill, Managing
`Computers in the Hospitality Industry (1997)
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`Excerpts from Gary Inkpen, Information Technology for Travel and
`Tourism (1998)
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`-v-
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`Ex. 1030
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`Ex. 1031
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`Ex. 1032
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`Ex. 1033
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`Ex. 1034
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`Starbucks Corp. Exhibit 1056
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`Petition for Covered Business Method Patent Review of U.S. Patent 6,384,850 B1
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`Ex. 1035
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`Ex. 1036
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`Ex. 1037
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`Excerpts from Paul R. Dittmer and Gerald G. Griffin, Dimensions of
`the Hospitality Industry: An Introduction (2d ed. 1997)
`
`Excerpts from Frank Buschmann et al., Pattern-Oriented Software
`Architecture: A System of Patterns (1996)
`
`F. Leymann and W. Altenhuber, Managing Business Processes as an
`Information Resource, IBM Systems Journal, Vol. 33, No. 2, 326-348
`(1994)
`
`Ex. 1038 Bob Stegmaier, Image and Workflow Library: FlowMark V2.3
`Design Guidelines (Feb. 1998)
`
`Ex. 1039 U.S. Patent No. 5,970,479 to Shepherd (Alice Corp. patent)
`
`Ex. 1040 Ameranth Press Release (April 1, 2014) – Ameranth Signs a New
`Patent License with Taco Bell Corp. for Ameranth’s Patented 21st
`Century CommunicationsTM Data Synchronization Inventions
`Ex. 1041 Ameranth Press Release (July 30, 2014) – Ameranth’s 21st Century
`CommunicationsTM, ‘Data Synchronization’ Patent Licensing
`Program Expands, and Accelerates
`Ameranth, Inc. v. Par Tech. Corp., Ameranth’s Opening Claim
`Construction Brief
`Ameranth, Inc. v. Par Technology Corp., Transcript of Claim
`Construction Hearing held May 30, 2012
`Ameranth, Inc. v. Par Technology Corp., Claim Construction Order
`
`Ex. 1042
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`Ex. 1043
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`Ex. 1044
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`Ex. 1045 Ameranth Complaint against Starbucks
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`Ex. 1046
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`List of Patent Infringement Lawsuits filed by Ameranth
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`Ex. 1047 CBM2014-00015, Paper 11 (Jan. 13, 2014) – Patent Owner
`Preliminary Response
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`Ex. 1048 CBM2014-00015, Paper 20 (Mar. 26, 2014) – Institution Decision
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`-vi-
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`Starbucks Corp. Exhibit 1056
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`Petition for Covered Business Method Patent Review of U.S. Patent 6,384,850 B1
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`Ex. 1049 CBM2014-00014, Paper 19 (Mar. 26, 2014) – Order Denying
`Institution
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`Ex. 1050
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`Ex. 1051
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`Excerpt from Microsoft Computing Dictionary (4th ed. 1999)
`(definition of “synchronous communications”)
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`Tristan Richardson et al., Virtual Network Computing (Jan. / Feb.
`1998)
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`-vii-
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`Starbucks Corp. Exhibit 1056
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`
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`Petition for Covered Business Method Patent Review of U.S. Pat. No. 6,384,850 B1
`
`I.
`
`INTRODUCTION
`
`Pursuant to 35 U.S.C. § 321 and § 18 of the Leahy-Smith America Invents
`
`Act (“AIA”), 37 C.F.R. § 42.200 et seq. and 37 C.F.R. § 42.300 et seq., Starbucks
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`Corporation (“Petitioner”) petitions for covered business method patent (“CBM”)
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`5
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`review of Claims 12-16 of U.S. Patent No. 6,384,850 B1 (the “’850 patent,” Ex.
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`1001), assigned to Ameranth, Inc.
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`This Petition shows that the ’850 patent is a covered business method patent
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`pursuant to § 18(a)(1)(E) of the AIA, and that it is more likely than not that at least
`
`one of Claims 12-16 of the ’850 patent is not patentable (“Challenged Claims”)
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`10
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`under pre-AIA 35 U.S.C. §§ 112, 103, and/or 101.
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`
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`The ’850 patent relates generally to “an information management and
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`synchronous communications system and method [that] facilitates database
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`equilibrium and synchronization with wired, wireless, and Web-based
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`systems”(Ex.1001 at Abstract) for computerizing hospitality-related activities such
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`15
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`as ordering food and making reservations. The ’850 patent specification lacks
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`meaningful and sufficient description and disclosure supporting the Challenged
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`Claims. As shown by the evidence and analyses in this Petition, the Challenged
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`Claims are invalid under pre-AIA 35 U.S.C. § 112 for lack of enablement, for
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`being indefinite, and for lack of written description.
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`20
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`The Challenged Claims are also invalid under pre-AIA 35 U.S.C. § 103 as
`
`
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`-1-
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`Starbucks Corp. Exhibit 1056
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`Petition for Covered Business Method Patent Review of U.S. Pat. No. 6,384,850 B1
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`being obvious over the prior art. The primary prior art reference relied upon is a
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`published patent application filed by IBM and describes IBM and other
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`technologies for making applications accessible over the Internet including to
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`wireless handheld devices. The IBM prior art covers hospitality applications – a
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`5
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`car rental application.
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`
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`Furthermore, the Challenged Claims are also patent-ineligible and invalid
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`under pre-AIA 35 U.S.C. § 101 because they are directed to abstract ideas such as
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`ordering food and other merchandise and because they recite only generic
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`computer implementation of the abstract ideas.
`
`10
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`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(b)
`A. REAL PARTY IN INTEREST
`
`Starbucks Corporation is the sole real party in interest under 35 U.S.C.
`
`§322(a)(2) and 37 C.F.R. §42.8(b)(1).
`
`B. RELATED MATTERS
`
`15
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`The ’850 patent has been asserted against Petitioner along with U.S. Patent
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`Nos. 6,871,325 B1 (the “’325 patent”) and 8,146,077 B2 (the “’077 patent”) in a
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`patent infringement lawsuit brought by Patent Owner, Ameranth, Inc. v. Starbucks
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`Corp., Case No. 3-13-cv-01072, filed in the Southern District of California on May
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`6, 2013. Ex. 1045. To the best of Petitioner’s knowledge, Patent Owner has also
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`20
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`sued more than thirty-five other defendants in different civil actions filed between
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`September 2012 and August 2013, including Apple Inc., Hilton Resorts Corp.,
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`-2-
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`Starbucks Corp. Exhibit 1056
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`
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`Petition for Covered Business Method Patent Review of U.S. Pat. No. 6,384,850 B1
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`Best Western International, Inc., Expedia, Inc., TicketMaster, LLC , Pizza Hut,
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`Inc. and OpenTable, Inc. Ex. 1046. These cases have been consolidated with
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`Ameranth, Inc. v. Pizza Hut, Inc., No. 3-11-cv-01810, filed in the Southern District
`
`of California on Aug. 15, 2011.
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`5
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`Claims 1-11 of the ’850 patent are currently subject to CBM review under §
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`101 in instituted PTAB Case No. CBM2014-00015 filed by thirty-five parties
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`including Petitioner Starbucks. Ex. 1048.
`
`A petition for CBM review of Claims 12-16 of the ’850 patent under
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`CBM2015-00080 was filed on Feb. 19, 2015 by Apple, Inc. et al. Petitioner
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`10
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`Starbucks did not file that petition and is not a real party-in-interest in the
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`CBM2015-00080 proceeding. None of the invalidity grounds raised herein are
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`raised in the CBM2015-00080 proceeding.
`
`C. LEAD AND BACK-UP COUNSEL
`Pursuant to 37 C.F.R. §§ 42.8(b)(3) and 42.10(a), Petitioner appoints Bing
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`15
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`Ai (Reg. No. 43,312) as its lead counsel, and Patrick J. McKeever (Reg. No.
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`66,019) and Yun L. Lu (Reg. No. 72,766) as its back-up counsel. Petitioner also
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`requests authorization to file a motion for Matthew Bernstein to appear pro hac
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`vice, as Mr. Bernstein is an experienced patent litigation attorney, is lead counsel
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`for Petitioner in the district court litigation, and has an established familiarity with
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`20
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`the subject matter at issue in this proceeding. Petitioner intends to file such a
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`-3-
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`Starbucks Corp. Exhibit 1056
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`
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`Petition for Covered Business Method Patent Review of U.S. Pat. No. 6,384,850 B1
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`motion once authorization is granted. Pursuant to 37 C.F.R. § 42.10(b), an
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`executed Power of Attorney is concurrently filed.
`
`D.
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`SERVICE INFORMATION
`
`Petitioner identifies the following service information for its counsel and
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`5
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`hereby consents to electronic service under 37 C.F.R. §§ 42.8(b)(4) and 42.6(e):
`
`Perkins Coie LLP, 11988 El Camino Real, Suite 350, San Diego, CA 92130, 858-
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`720-5700 (Phone), 858-720-5799 (Fax) and PerkinsServiceStarbucks-CBM
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`@perkinscoie.com (E-mail).
`
`III. REQUIREMENTS FOR COVERED BUSINESS METHOD PATENT
`REVIEW
`
`10
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`This Petition complies with all requirements for CBM under relevant
`
`sections of 37 C.F.R. § 42, et seq. and should be accorded a filing date as the date
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`of filing of this Petition because requirements under 37 C.F.R. §§ 42.304, 42.205
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`and 42.15 are satisfied pursuant to 37 C.F.R. § 42.206. The Director is authorized
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`15
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`to charge all applicable fees under 37 C.F.R. § 42.15(b) and any additional fees to
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`Perkins Coie Deposit Account No. 50-5252.
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`A. GROUNDS FOR STANDING
`
`Pursuant to 37 C.F.R. § 42.304(a), Petitioner hereby certifies that the ’850
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`patent is a covered business method patent under AIA §§ 18(a)(1)(B) and 18(d)(1)
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`20
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`as further explained in this Petition, that Petitioner meets the eligibility
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`requirements of 37 C.F.R. § 42.302, and that Petitioner is not barred or estopped
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`-4-
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`Starbucks Corp. Exhibit 1056
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`
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`Petition for Covered Business Method Patent Review of U.S. Pat. No. 6,384,850 B1
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`from requesting CBM review challenging Challenged Claims of the ’850 patent on
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`the grounds identified herein. Specifically, Petitioner has the standing, and meets
`
`all requirements, to file this Petition under 35 U.S.C. §§ 325(a)(1), 325(b),
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`325(e)(1) and 315(e)(1); and 35 C.F.R. §§42.72(d)(1), 42.302 and 42.303.
`
`5
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`1.
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`Eligibility Based on Infringement Suit
`
`Patent Owner Ameranth has sued Petitioner Starbucks alleging that
`
`Starbucks’ mobile payment technology and its online store infringes the ’850
`
`patent in Case No. 3-13-cv-01072. Ex. 1045. Pursuant to AIA § 18(a)(1)(B) and
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`37 C.F.R. § 42.302(a), Petitioner is eligible to file this Petition.
`
`10
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`2.
`
`Eligibility Based on Lack of Estoppel by Other AIA Trials
`
`Petitioner is not barred or estopped from requesting CBM review of the
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`Challenged Claims of the ’850 patent on the grounds identified in this Petition.
`
`Nor is Petitioner estopped from pursuing this petition under 35 U.S.C. §§ 325(e)(1)
`
`and 315(e)(1) and 37 C.F.R. §§ 42.73(d)(1) and 42.302(b). Case No. CBM2014-
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`15
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`00015 by this Petitioner was instituted for trial only as to Claims 1-11 of the ’850
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`patent (Ex. 1048), whereas this Petition challenges Claims 12-16. Accordingly,
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`there can be no final written decision from an AIA trial involving this Petitioner on
`
`the Challenged Claims requested in this Petition.
`
`3.
`
`The ’850 Patent is a Covered Business Method Patent
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`20
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`The ’850 patent is eligible for CBM review because it constitutes a covered
`
`business method patent as defined under AIA § 18(d)(1) and 37 C.F.R. § 42.301.
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`-5-
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`Starbucks Corp. Exhibit 1056
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`
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`Petition for Covered Business Method Patent Review of U.S. Pat. No. 6,384,850 B1
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`A “covered business method patent” is a patent that “claims a method or
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`corresponding apparatus for performing data processing or other operations used in
`
`the practice, administration or management of a financial product or service,
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`except that the terms does not include patents for technological inventions.” AIA §
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`5
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`18(d)(1). This definition encompasses patents “claiming activities that are
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`financial in nature, incidental to a financial activity or complementary to a
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`financial activity.” Final Rule, 77 Fed. Reg. 48,734, 48,735 (Aug. 14, 2012). A
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`single claim directed toward a covered business method makes every claim of the
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`patent eligible for CBM review. Id. at 48,736.
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`10
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`As explained below, because at least Claim 1 (not challenged in this
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`Petition) and challenged Claim 12 establish that the ’850 patent satisfies the
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`Covered Business Method Patent definition under Section 18(d)(1) of the AIA, all
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`claims of the ’850 patent, including Claims 12-16 that are challenged in this
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`Petition, are eligible for CBM review.
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`15
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`a.
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`(i)
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`Claim 1 Establishes that the ’850 Patent is a Covered Business Method
`Patent
`Claim 1 Relates to a Financial Product or Service
`As the Board previously found in CBM2014-00015, Claim 1 of the ’850
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`patent is directed to an apparatus that corresponds to an activity that is at least
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`20
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`incidental or complementary to an activity financial in nature and the claim
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`therefore meets the “financial product or service” components under the definition
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`-6-
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`Starbucks Corp. Exhibit 1056
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`
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`Petition for Covered Business Method Patent Review of U.S. Pat. No. 6,384,850 B1
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`in Section 18(d)(1) of the AIA. See Ex. 1048 at 9-14. Specifically, Claim 1 is
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`directed to a “system for generating and transmitting menus.” Ex. 1001 at 14:48-
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`49. Claim 2 recites that the menu is a “restaurant menu,” which is for ordering and
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`purchasing food offered by a restaurant. Id. at 15:12-14. The ’850 patent
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`5
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`specification states that the claimed menus are used for ordering and purchasing of
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`food and merchandise. Id. at 3:43-52; 14:13-17; 14:23-26. The specification
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`describes the use of the claimed invention to facilitate ordering and purchasing
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`merchandise over the Internet: “The user may select multiple items in this manner
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`and then enter a credit card number to pay for the purchases. The retailer
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`10
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`processes the transaction and ships the order to the customer. As can be
`
`appreciated, ordering merchandise can also be done from menus. The generation
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`of menus of items or merchandise for sale over the internet is readily accomplished
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`by the menu generation approach of the present invention.” Id. at 12:58-65. Menus
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`are generated and downloaded to point-of-sale (POS) terminals. Id. at 6:22-25,
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`15
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`10:14-33. The ’850 patent further describes the generation of menus for “remote
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`ordering” and purchasing. Id. at 14:13-29.
`
`In view of the above, the system for generating and transmitting menus
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`recited in Claim 1 is for facilitating ordering and purchasing at restaurants and
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`other hospitality establishments, and ordering and purchasing of other merchandise
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`20
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`using menus. The ordering and purchasing of food and other merchandise
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`-7-
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`Starbucks Corp. Exhibit 1056
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`Petition for Covered Business Method Patent Review of U.S. Pat. No. 6,384,850 B1
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`generates revenue. Ex. 1048 at 11 (“Menus are used in ordering, which pertains to
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`the sale of a product, which generates revenue.”). Such revenue generation is
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`clearly “financial in nature, incidental to a financial activity or complementary to a
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`financial activity.” Id.at 10-11. Therefore, the subject matter of Claim 1 satisfies
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`the first requirement of AIA § 18(d)(1). Id. at 11.
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`(ii) Claim 1 Does Not Recite a “Technological Invention”
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`Claim 1 of the ’850 patent does not fit within the exception to a covered
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`business method patent review because the claimed subject matter as a whole is not
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`directed toward a technological invention. To qualify as a technological invention,
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`the claimed subject matter as a whole must (1) recite a technological feature that is
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`novel and unobvious over the prior art, and (2) solve a technical problem using a
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`technical solution. 37 C.F.R. § 42.301(b). In the CBM2014-00015 proceeding, the
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`Board correctly found that neither prong applies to Claim 1 of the ’850 patent. Ex.
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`1048 at 14.
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`Claim 1 fails under the first prong because it does not recite a novel or
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`unobvious technological feature. Id. at 13. The claim merely recites known
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`technologies to achieve normal, expected, and predictable results. Id. at 12-13;
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763-64 (Aug. 14,
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`2012). Claim 1 recites a CPU, a data storage device, an operating system including
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`a graphical user interface (“GUI”), and application software. Ex. 1001 at 14:48-
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`-8-
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`Starbucks Corp. Exhibit 1056
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`Petition for Covered Business Method Patent Review of U.S. Pat. No. 6,384,850 B1
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`15:11. The recited software enables a user to generate a menu using the GUI and
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`then transmit it. Id.; Ex. 1048 at 12. The specification acknowledges that GUI-
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`based applications for manipulating data items are conventional. Ex. 1001 at 4:59-
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`5:32, 5:55-63. The specification suggests the use of off-the-shelf software such as a
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`Windows operating system on the workstations and server (id. at 5:44-54),
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`Windows CE on the handheld devices (id. at 10:63-11:3), and Microsoft’s ActiveX
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`Data Objects API for database access (id. at 10:34-39). To the extent any custom
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`software is required, the ’850 patent specification states that the software is
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`generic: “The software applications for performing the functions falling within the
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`described invention can be written in any commonly used computer language. The
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`discrete programming steps are commonly known and thus programming details
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`are not necessary to a full description of the invention.” Id. at 11:43-48 (emphasis
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`added). Therefore, Claim 1 recites a known combination of known prior art
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`components or features and does not recite a technological feature that is novel and
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`unobvious over the prior art.
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`Claim 1 also fails under the second prong of the “technological invention”
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`test because the claimed subject matter as a whole does not solve a technical
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`problem using a technical solution. Far from solving a technical problem, Claim 1
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`is directed to a system for generating and transmitting menus to solve a business
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`problem. The claimed system purportedly “solv[es] the problem of converting
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`Starbucks Corp. Exhibit 1056
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`Petition for Covered Business Method Patent Review of U.S. Pat. No. 6,384,850 B1
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`paper-based menus or Windows® PC-based menu screens to small PDA-sized
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`displays and Web pages” (id. at 3:32-35) and thus “provides a way to turn a
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`complicated, time-consuming task into a simple process” (id. at 3:52-58). As
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`discussed above, to the extent Claim 1 recites any technological limitations, they
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`were all well-known in the prior art. Therefore, Claim 1 does not provide a
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`technical solution to solve a technical problem.
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`In view of the above, Claim 1 fails both requirements for a “technological
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`invention” and is a covered business method patent claim under AIA § 18(d)(1).
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`b.
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`(i)
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`Claim 12 Establishes that the ’850 Patent is a Covered Business Method
`Patent
`Claim 12 Relates to a Financial Product or Service
`Claim 12 of the ’850 patent meets the “financial product or service” aspect
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`of the CBM definition. Claim 12 is directed to “an information management and
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`synchronous communications system for use with wireless handheld computing
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`devices and the internet” for computerizing hospitality activities such as ordering
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`food for purchase.1 Ex. 1001 at 1:33-37 (until now, no “information management
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`and communication capability” for use in “restaurant ordering”); 2:33-36 (“paper-
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` 1
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` This is also confirmed by the ’325 patent, a continuation of the ’850 patent,
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`which claims the identical system recited by Claim 12 of the ’850 patent and adds
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`“wherein the synchronized data relates to orders.” Ex. 1002 at 17:4-26 (Claim 11).
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`Starbucks Corp. Exhibit 1056
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`Petition for Covered Business Method Patent Review of U.S. Pat. No. 6,384,850 B1
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`based ordering” has “persisted in the face of widespread computerization”).
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`Claim 12 recites “hospitality applications” six times. Id. at 16:1-22. The
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`primary hospitality applications in the ’850 patent are for ordering and purchasing.
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`Id. at 3:43-46 (wireless handhelds enable “shorter order taking and check paying
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`times”); 12:1-4 (“A further aspect of the invention is the use of the menus ... to
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`place orders from wireless remote handheld devices or from remote locations
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`through the internet.”); 12:41-43 (“The hyperlink methodology is contemplated for
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`use in accordance with the preferred embodiment to transmit orders via the
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`internet.”); 14:13-17 (“[T]he synchronous communication aspect of the invention”
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`is “equally applicable to table-based, drive-thru, internet, telephone, wireless or
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`other modes of customer order entry.”); id. at 3:40-58, 12:41-61.
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`Ordering is part of the purchasing process which generates revenue. Ex.
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`1048 at 11 (“[O]rdering … pertains to the sale of a product, which generates
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`revenue.”). Such revenue generation is clearly “financial in nature, incidental to a
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`financial activity or complementary to a financial activity.”
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`In addition, Patent Owner has accused Petitioner’s “mobile payment
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`processing” application of infringement. Ex. 1045 at ¶¶ 20, 27. In prior litigation,
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`Patent Owner argued that “hospitality applications” should be construed to include
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`payment processing, and the court agreed. Ex. 1042 at 13, 15; Ex. 1044 at 6-7.
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`Payment processing is financial in nature. Ex. 1049 at 11 (payment processing
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`Starbucks Corp. Exhibit 1056
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`Petition for Covered Business Method Patent Review of U.S. Pat. No. 6,384,850 B1
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`claim satisfies the “financial product or service” aspect of CBM definition).
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`Thus, Claim 12 satisfies the first requirement of the CBM definition.
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`(ii) Claim 12 Does Not Recite a “Technological Invention”
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`The technological invention exception does not apply to Claim 12. The
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`claim does not recite a novel and unobvious technological feature, but instead
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`recites well-known computer technologies such as a central database, a wireless
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`handheld computing device, a web server, a web page, an application program
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`interface (API) and a communications control module. Those recited features of
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`Claim 12 are disclosed by the cited prior art references in this Petition and the
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`claimed subject matter of Claim 12 as a whole is obvious and invalid as discussed
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`in detail in § V(B) of this Petition. As noted above, the specification confirms that
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`any software necessary to practice the purported invention can be implemented
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`using “commonly known” programming steps. Ex. 1001 at 11:24-48. The
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`components recited in Claim 12 achieve nothing more than “the normal, expected,
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`15
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`or predictable result of [their] combination.” 77 Fed. Reg. at 48,763-64.
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`Claim 12 also fails the second prong of the technological invention
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`exception because it does not solve a technical problem using a technical solution.
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`Claim 12 is directed to a system for computerizing paper-based hospitality
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`activities such as ordering, waitlists, and reservation management to improve
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`efficiency. Ex. 1001 at 3:43-46 (“With the proper wireless handheld system in
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`Starbucks Corp. Exhibit 1056
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`Petition for Covered Business Method Patent Review of U.S. Pat. No. 6,384,850 B1
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`place, restaurants can experience increased table turns from improved server [i.e.,
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`waiter] productivity and shorter order taking and check paying times.”). As noted
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`above, Claim 12 uses typical hardware elements and software programmed using
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`commonly known programming steps. Therefore, Claim 12 does not solve a
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`5
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`technical problem using a technical solution. Claim 12 thus fails both
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`requirements for a “technological invention” under AIA § 18(d)(1).
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`In view of the above, at least Claims 1 and 12 of the ’850 patent are CBM-
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`eligible claims and do not fall within the technological invention exception.
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`Therefore, all the Challenged Claims (12-16) are eligible for CBM review.
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`As such, the ’850 patent is eligible for CBM review.
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`B.
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`IDENTIFICATION OF CHALLENGE
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`Pursuant to 37 C.F.R. §§ 42.304(b) and 42.22, the precise relief requested by
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`Petitioner is that the Board institute a CBM trial on, and cancel Claims 12-16
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`because they are invalid on the grounds and evidence presented in this Petition.
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`15
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`1.
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`Claims Challenged
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`Claims 12-16 of the ’850 patent (the