UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`STARBUCKS CORPORATION
`Petitioner
`
`v.
`
`AMERANTH, INC.
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`CASE: To Be Assigned
`Patent No. 6,871,325 B1
`
`
`
`
`
`
`
`
`
`
`
`PETITION FOR COVERED BUSINESS METHOD PATENT REVIEW
`OF
`U.S. PATENT NO. 6,871,325 B1
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`
`Page
`
`
`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 ’325 Patent is a Covered Business Method Patent ............. 5
`3.
`IDENTIFICATION OF CHALLENGE ............................................. 12
`1.
`Claims Challenged ................................................................... 12
`2.
`The Prior Art ............................................................................ 12
`3.
`Statutory Grounds of Challenge and Legal Principles ............ 14
`4.
`Supporting Evidence Relied Upon For The Challenge ........... 15
`5.
`Claim Construction .................................................................. 15
`6.
`How Claims Are Unpatentable Under Statutory Grounds ...... 16
`IV. OVERVIEW OF THE ’325 PATENT ......................................................... 16
`A.
`SUMMARY OF THE ’325 PATENT ................................................ 16
`B.
`SUMMARY OF PROSECUTION FILE HISTORY......................... 20
`C.
`SUMMARY OF CBM2014-00016 PROCEEDING ......................... 22
`D.
`PATENT OWNER’S INTERPRETATION OF
`CHALLENGED CLAIMS IN LITIGATION .................................... 22
`
`B.
`
`
`
`
`-i-
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`
`
`V.
`
`b.
`
`c.
`
`PROPOSED CLAIM CONSTRUCTION .......................................... 23
`E.
`STATE OF THE ART PRIOR TO THE ’325 PATENT ................... 24
`F.
`LEVEL OF ORDINARY SKILL IN THE ART ............................... 25
`G.
`IT IS MORE LIKELY THAN NOT THAT THAT AT LEAST ONE
`CLAIM OF THE ’325 PATENT IS UNPATENTABLE ............................ 26
`A.
`INVALIDITY OF THE CHALLENGED CLAIMS UNDER 35
`U.S.C. § 112 ....................................................................................... 26
`1.
`The “Hospitality Applications and Data” Limitations
`(Grounds 1-3) ........................................................................... 26
`a.
`Ground 1: The Challenged Claims are Invalid for
`Lack of Enablement Because of the “Hospitality
`Applications and Data” Limitations .............................. 27
`Ground 2: The Challenged Claims are Invalid for
`Being Indefinite Because of the “Hospitality
`Applications and Data” Limitations .............................. 29
`Ground 3: The Challenged Claims are Invalid for
`Lack of Written Description Because of the
`“Hospitality Applications and Data” Limitations ......... 32
`The “Communications Control Module” Limitations ............. 33
`a.
`Ground 4: The Challenged Claims are Invalid for
`Lack of Enablement Because of the
`“Communication Control Module” Limitations ............ 34
`Ground 5: The Challenged Claims are Invalid for
`Being Indefinite Because of the “Communication
`Control Module” Limitations ........................................ 38
`Ground 6: The Challenged Claims are Invalid for
`Lack of Written Description Because of the
`“Communication Control Module” Limitations ............ 39
`
`2.
`
`b.
`
`c.
`
`
`
`
`-ii-
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`
`
`3.
`
`4.
`
`B.
`
`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 ......................................... 40
`Ground 8: Each of the Challenged Claims, as a Whole, is
`not Enabled .............................................................................. 41
`INVALIDITY OF THE CHALLENGED CLAIMS FOR
`OBVIOUSNESS UNDER 35 U.S.C. § 103 ....................................... 43
`1.
`Grounds 9 & 10: The Challenged Claims Are Obvious
`Over Brandt In View Of Nethopper, Carter, & Rossmann...... 43
`Ground 11 & 12: The Challenged Claims Are Obvious
`Over Brandt In View Of Demers, Alonso, Carter, &
`Rossmann ................................................................................. 64
`C. GROUND 13: INVALIDITY OF THE CHALLENGED
`CLAIMS UNDER § 101 .................................................................... 70
`1.
`The Challenged Claims Are Directed to Abstract Ideas .......... 71
`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
`
`2.
`
`3.
`
`
`
`
`-iii-
`
`

`

`Petition for Covered Business Method Patent Review of U.S. Patent 6,871,325 B1
`
`
`
`EXHIBIT LIST
`
`
`
`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
`
`Ex. 1005
`
`Japanese Unexamined Application No. H10-247183 to Brandt et al
`(“Brandt”)
`
`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)
`
`Ex. 1008
`
`Jeff Walsh, Apple Releases MesssagePad 2100 Handheld PCs,
`InfoWorld, Oct. 27, 1997, at 50
`
`Ex. 1009 Alan Demers et al., The Bayou Architecture: Support for Data Sharing
`Among Mobile Users (“Demers”)
`
`Ex. 1010
`
`IEEE Abstract for Demers
`
`Ex. 1011
`
`Library of Congress catalog entry for book containing Demers
`
`Ex. 1012 Gustavo Alonso et al., Exotica/FMDC: A Workflow Management
`System for Mobile and Disconnected Clients (“Alonso”)
`
`Ex. 1013
`
`Springer Abstract for Alonso
`
`Ex. 1014
`
`Library of Congress catalog entry for book containing Alonso
`
`Ex. 1015
`
`’850 Patent Prosecution History, Nov. 29, 2000 Office Action
`
`Ex. 1016
`
`’850 Patent Prosecution History, Feb. 26, 2001 Amendment
`
`’850 Patent Prosecution History, May 22, 2001 Office Action
`-iv-
`
`Ex. 1017
`
`
`
`
`
`
`

`

`Petition for Covered Business Method Patent Review of U.S. Patent 6,871,325 B1
`
`
`Ex. 1018
`
`’850 Patent Prosecution History, July 19, 2001 Amendment
`
`Ex. 1019
`
`Excerpts from John December and Mark Ginsburg, HTML & CGI
`Unleashed (1995)
`
`Ex. 1020
`
`Excerpts from Brian Francis et al., Active Server Pages 2.0 (1998)
`
`Ex. 1021
`
`Excerpts from John Rodley, Writing Java Applets (1996)
`
`Ex. 1022
`
`Ex. 1023
`
`Excerpts from Mark C. Reynolds and Andrew Woolridge, Using
`JavaScript (1996)
`
`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)
`
`Ex. 1025 Newton Solutions Guide, Issue 2 (1996)
`
`Ex. 1026 Newton Connection Utilities User’s Manual for the Macintosh
`Operating System (1997)
`
`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)
`
`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)
`
`Excerpts from Gary Inkpen, Information Technology for Travel and
`Tourism (1998)
`
`-v-
`
`
`
`Ex. 1030
`
`Ex. 1031
`
`Ex. 1032
`
`Ex. 1033
`
`Ex. 1034
`
`
`
`
`
`
`
`

`

`Petition for Covered Business Method Patent Review of U.S. Patent 6,871,325 B1
`
`
`Ex. 1035
`
`Ex. 1036
`
`Ex. 1037
`
`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
`
`Ex. 1042
`
`Ex. 1043
`
`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
`
`Ex. 1044
`
`Ameranth, Inc. v. Par Technology Corp., Claim Construction Order
`
`Ex. 1045 Ameranth Complaint against Starbucks
`
`Ex. 1046
`
`List of Patent Infringement Lawsuits filed by Ameranth
`
`Ex. 1047 CBM2014-00015, Paper 11 (Jan. 13, 2014) – Patent Owner
`Preliminary Response
`
`Ex. 1048 CBM2014-00015, Paper 20 (Mar. 26, 2014) – Institution Decision
`
`
`
`
`
`
`
`-vi-
`
`
`
`

`

`Petition for Covered Business Method Patent Review of U.S. Patent 6,871,325 B1
`
`
`Ex. 1049 CBM2014-00014, Paper 19 (Mar. 26, 2014) – Order Denying
`Institution
`
`Ex. 1050
`
`Ex. 1051
`
`Excerpt from Microsoft Computing Dictionary (4th ed. 1999)
`(definition of “synchronous communications”)
`
`Tristan Richardson et al., Virtual Network Computing (Jan. / Feb.
`1998)
`
`Ex. 1052
`
`European Patent Application No. EP 0845748 A2 (“Carter”)
`
`Ex. 1053 U.S. Patent No. 5,809,415 to Rossmann (“Rossmann”)
`
`Ex. 1054 CBM2014-00016, Paper 10 (Jan. 13, 2014) – Patent Owner
`Preliminary Response
`
`Ex. 1055 CBM2014-00016, Paper 19 (Mar. 26, 2014) – Institution Decision
`
`Ex. 1056 CBM2014-00091, Paper 1 (Mar. 2, 2015) – Petition
`
`Ex. 1057
`
`Ex. 1058
`
`’325 Patent Prosecution History, Nov. 1, 2001 Patent Application
`Specification
`
`’325 Patent Prosecution History, Nov. 1, 2001 Preliminary
`Amendment
`
`Ex. 1059
`
`’325 Patent Prosecution History, Nov. 16, 2004 Terminal Disclaimer
`
`Ex. 1060
`
`’325 Patent Prosecution History, Dec. 7, 2004 Notice of Allowance
`
`Ex. 1061
`
`Excerpt from Encarta World English Dictionary (1999) (definition of
`“order”)
`
`
`
`
`
`
`
`-vii-
`
`
`
`

`

`Petition for Covered Business Method Patent Review of U.S. Pat. No. 6,871,325 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
`
`Corporation (“Petitioner”) petitions for covered business method patent (“CBM”)
`
`5
`
`review of Claims 11-13 and 15 of U.S. Patent No. 6,871,325 B1 (the “’325 patent,”
`
`Ex. 1002), assigned to Ameranth, Inc.
`
`This Petition shows that the ’325 patent is a covered business method patent
`
`pursuant to § 18(a)(1)(E) of the AIA, and that it is more likely than not that at least
`
`one of Claims 11-13 and 15 of the ’325 patent is not patentable (“Challenged
`
`10
`
`Claims”) under pre-AIA 35 U.S.C. §§ 112, 103, and/or 101.
`
`
`
`The ’325 patent relates generally to “an information management and
`
`synchronous communications system and method [that] facilitates database
`
`equilibrium and synchronization with wired, wireless, and Web-based systems”
`
`(Ex. 1002 at Abstract) for computerizing hospitality-related activities such as
`
`15
`
`ordering food and making reservations. The ’325 patent specification lacks
`
`meaningful and sufficient description and disclosure supporting the Challenged
`
`Claims. As shown by the evidence and analyses in this Petition, the Challenged
`
`Claims are invalid under pre-AIA 35 U.S.C. § 112 for lack of enablement, for
`
`being indefinite, and for lack of written description.
`
`
`
`
`
`
`-1-
`
`
`
`

`

`
`Petition for Covered Business Method Patent Review of U.S. Pat. No. 6,871,325 B1
`
`The Challenged Claims are also invalid under pre-AIA 35 U.S.C. § 103 as
`
`being obvious over the prior art. The primary prior art reference relied upon is a
`
`published IBM patent application and describes technologies for making
`
`applications accessible over the Internet including to wireless handheld devices.
`
`5
`
`The IBM prior art discloses hospitality applications, e.g., a car rental application.
`
`
`
`Furthermore, the Challenged Claims are also patent-ineligible under § 101
`
`because they are directed to abstract ideas such as ordering and reservations, and
`
`because they recite only generic computer implementation of the abstract ideas.
`
`10
`
`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 and is identified as
`
`“all real parties in interest” under 35 U.S.C. §322(a)(2) and 37 C.F.R. §42.8(b)(1).
`
`B. RELATED MATTERS
`The ’325 patent has been asserted against Petitioner along with U.S. Patent
`
`15
`
`Nos. 6,384,850 B1 (the “’850 patent”, Ex. 1001) and 8,146,077 B2 (the “’077
`
`patent”) in a patent infringement lawsuit brought by Patent Owner, Ameranth, Inc.
`
`v. Starbucks Corp., Case No. 3-13-cv-01072, filed in the Southern District of
`
`California on May 6, 2013. Ex. 1045. To the best of Petitioner’s knowledge,
`
`Patent Owner has also sued more than thirty-five other defendants in different civil
`
`20
`
`actions filed between September 2012 and August 2013, including Apple Inc.,
`
`Hilton Resorts Corp., Best Western International, Inc., Expedia, Inc.,
`
`
`
`-2-
`
`

`

`
`Petition for Covered Business Method Patent Review of U.S. Pat. No. 6,871,325 B1
`
`TicketMaster, LLC , Pizza Hut, Inc. and OpenTable, Inc. Ex. 1046. These cases
`
`have been consolidated with Ameranth, Inc. v. Pizza Hut, Inc., No. 3-11-cv-01810,
`
`filed in the Southern District of California on Aug. 15, 2011.
`
`Claims 1-10 of the ’325 patent are subject to CBM review under § 101 in
`
`5
`
`instituted Case No. CBM2014-00016 filed by thirty-five parties including
`
`Petitioner Starbucks. Ex. 1055. Those claims are not challenged in this Petition.
`
`A petition for CBM review of Claims 11-13 and 15 of the ’325 patent under
`
`CBM2015-00082 was filed on Feb. 19, 2015 by Apple, Inc. et al. Petitioner
`
`Starbucks did not file that petition and is not a real party-in-interest in the
`
`10
`
`CBM2015-00082 proceeding. None of the invalidity grounds raised herein are
`
`raised in the CBM2015-00082 proceeding.
`
`In addition, Petitioner has filed CBM petitions under CBM2015-00091 and
`
`CBM2014-00015 challenging the ’850 patent, a parent of the ’325 patent.
`
`C. LEAD AND BACK-UP COUNSEL
`Pursuant to 37 C.F.R. §§ 42.8(b)(3) and 42.10(a), Petitioner appoints Bing
`
`15
`
`Ai (Reg. No. 43,312) as its lead counsel, and Patrick J. McKeever (Reg. No.
`
`66,019) and Yun L. Lu (Reg. No. 72,766) as its back-up counsel. Petitioner also
`
`requests authorization to file a motion for Matthew Bernstein to appear pro hac
`
`vice, as Mr. Bernstein is an experienced patent litigation attorney, is lead counsel
`
`20
`
`for Petitioner in the district court litigation, and has an established familiarity with
`
`
`
`-3-
`
`

`

`
`Petition for Covered Business Method Patent Review of U.S. Pat. No. 6,871,325 B1
`
`the subject matter at issue in this proceeding. Petitioner intends to file such a
`
`motion once authorization is granted. Pursuant to 37 C.F.R. § 42.10(b), an
`
`executed Power of Attorney is concurrently filed.
`
`D.
`
`SERVICE INFORMATION
`
`5
`
`Petitioner identifies the following service information for its counsel and
`
`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-
`
`720-5700 (Phone), 858-720-5799 (Fax), and PerkinsServiceStarbucks-CBM
`
`@perkinscoie.com (E-mail).
`
`10
`
`III. REQUIREMENTS FOR COVERED BUSINESS METHOD PATENT
`REVIEW
`
`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
`
`of filing of this Petition because requirements under 37 C.F.R. §§ 42.304, 42.205
`
`15
`
`and 42.15 are satisfied pursuant to 37 C.F.R. § 42.206. The Director is authorized
`
`to charge all applicable fees under 37 C.F.R. § 42.15(b) and any additional fees to
`
`Perkins Coie Deposit Account No. 50-5252.
`
`A. GROUNDS FOR STANDING
`Pursuant to 37 C.F.R. § 42.304(a), Petitioner hereby certifies that the ’325
`
`20
`
`patent is a covered business method patent under AIA §§ 18(a)(1)(B) and 18(d)(1)
`
`as further explained in this Petition, that Petitioner meets the eligibility
`
`
`
`-4-
`
`

`

`
`Petition for Covered Business Method Patent Review of U.S. Pat. No. 6,871,325 B1
`
`requirements of 37 C.F.R. § 42.302, and that Petitioner is not barred or estopped
`
`from requesting CBM review challenging Challenged Claims of the ’325 patent on
`
`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),
`
`5
`
`325(e)(1) and 315(e)(1); and 35 C.F.R. §§42.72(d)(1), 42.302 and 42.303.
`
`1.
`
`Eligibility Based on Infringement Suit
`
`Patent Owner Ameranth has sued Petitioner Starbucks alleging that
`
`Starbucks’ mobile payment technology and its online store infringes the ’325
`
`patent in Case No. 3-13-cv-01072. Ex. 1045. Pursuant to AIA § 18(a)(1)(B) and
`
`10
`
`37 C.F.R. § 42.302(a), Petitioner is eligible to file this Petition.
`
`2.
`
`Eligibility Based on Lack of Estoppel by Other AIA Trials
`
`Petitioner is not barred or estopped from requesting CBM review of the
`
`Challenged Claims of the ’325 patent on the grounds identified in this Petition.
`
`Nor is Petitioner estopped from pursuing this petition under 35 U.S.C. §§ 325(e)(1)
`
`15
`
`and 315(e)(1) and 37 C.F.R. §§ 42.73(d)(1) and 42.302(b). Case No. CBM2014-
`
`00016 by this Petitioner was instituted for trial only as to Claims 1-10 of the ’325
`
`patent (Ex. 1055), whereas this Petition challenges Claims 11-13 and 15.
`
`Accordingly, there can be no final written decision from an AIA trial involving this
`
`Petitioner on the Challenged Claims requested in this Petition.
`
`20
`
`3.
`
`The ’325 Patent is a Covered Business Method Patent
`
`The ’325 patent is eligible for CBM review because it constitutes a covered
`
`
`
`-5-
`
`

`

`
`Petition for Covered Business Method Patent Review of U.S. Pat. No. 6,871,325 B1
`
`business method patent as defined under AIA § 18(d)(1) and 37 C.F.R. § 42.301.
`
`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,
`
`5
`
`except that the term does not include patents for technological inventions.” AIA §
`
`18(d)(1). This definition encompasses patents “claiming activities that are
`
`financial in nature, incidental to a financial activity or complementary to a
`
`financial activity.” Final Rule, 77 Fed. Reg. 48,734, 48,735 (Aug. 14, 2012). A
`
`single claim directed toward a covered business method makes every claim of the
`
`10
`
`patent eligible for CBM review. Id. at 48,736.
`
`As explained below, because at least Claims 1 and 11 establish that the ’325
`
`patent satisfies the covered business method patent definition under Section
`
`18(d)(1) of the AIA, all claims of the ’325 patent, including Claims 11-13 and 15
`
`that are challenged in this Petition, are eligible for CBM review.
`
`15
`
`a.
`(i)
`
`Claim 1 Establishes that the ’325 Patent is a CBM Patent
`
`Claim 1 Relates to a Financial Product or Service
`
`As the Board previously found in CBM2014-00016, Claim 1 of the ’325
`
`patent is directed to an apparatus that corresponds to an activity that is at least
`
`incidental or complementary to an activity financial in nature and the claim
`
`20
`
`therefore meets the “financial product or service” components under the definition
`
`
`
`-6-
`
`

`

`
`Petition for Covered Business Method Patent Review of U.S. Pat. No. 6,871,325 B1
`
`in Section 18(d)(1) of the AIA. See Ex. 1055 at 10-14. Specifically, Claim 1 is
`
`directed to a “system for generating and transmitting menus.” Ex. 1002 at 14:60-
`
`61. Further, Claim 1 specifies that the generated second menu is “applicable to a
`
`predetermined type of ordering.” Id. at 15:22-23. Claims 2-6 recite that the type
`
`5
`
`of ordering is “customer ordering” and “table-based,” “drive-through,” “via
`
`Internet,” “via telephone,” and “via wireless device,” respectively. Id. at 15:24-33.
`
`The ’325 patent specification illustrates that the claimed menus and ordering are
`
`used for purchasing of food and merchandise, as well as paying. Id. at 3:44-63,
`
`14:25-29; 14:35-38. The specification describes the use of the claimed invention
`
`10
`
`to facilitate ordering and purchasing merchandise over the Internet: “The user may
`
`select multiple items in this manner and then enter a credit card number to pay for
`
`the purchases. The retailer processes the transaction and ships the order to the
`
`customer. As can be appreciated, ordering merchandise can also be done from
`
`menus. The generation of menus of items or merchandise for sale over the internet
`
`15
`
`is readily accomplished by the menu generation approach of the present
`
`invention.” Id. at 13:1-11. Menus are generated and downloaded to point-of-sale
`
`(POS) terminals. Id. at 6:33-36, 10:27-46. The ’325 patent further describes the
`
`generation of menus for “remote ordering” and purchasing. Id. at 14:25-41.
`
`In view of the above, the system for generating and transmitting menus
`
`20
`
`recited in Claim 1 is for facilitating ordering and purchasing of food and
`
`
`
`-7-
`
`

`

`
`Petition for Covered Business Method Patent Review of U.S. Pat. No. 6,871,325 B1
`
`merchandise using menus. The ordering and purchasing generates revenue. Ex.
`
`1055 at 11 (“The ‘ordering’ pertains to the sale of a product, which generates
`
`revenue.”). Such revenue generation is clearly “financial in nature, incidental to a
`
`financial activity or complementary to a financial activity.” Id. at 10-11.
`
`5
`
`Therefore, Claim 1 satisfies the first requirement of AIA § 18(d)(1). Id. at 11.
`
`(ii) Claim 1 Does Not Recite a “Technological Invention”
`Claim 1 of the ’325 patent does not fit within the exception to a covered
`
`business method patent review because the claimed subject matter as a whole is not
`
`directed to a technological invention. To qualify as a technological invention, the
`
`10
`
`claimed subject matter as a whole must (1) recite a technological feature that is
`
`novel and unobvious over the prior art, and (2) solve a technical problem using a
`
`technical solution. 37 C.F.R. § 42.301(b). In the CBM2014-00016 proceeding, the
`
`Board correctly found that neither prong applies to Claim 1. Ex. 1055 at 14.
`
`Claim 1 fails under the first prong because it does not recite a novel or
`
`15
`
`unobvious technological feature. Id. at 13. The claim recites known technologies to
`
`achieve normal, expected, and predictable results. Id. at 12-13. Claim 1 recites a
`
`CPU, a data storage device, an operating system including a graphical user
`
`interface (“GUI”), and application software. Ex. 1002 at 14:60-15:23. The recited
`
`software enables a user to generate a menu using the GUI and then transmit it. Id.at
`
`20
`
`15:12-23; Ex. 1055 at 12. The specification admits that GUI-based applications for
`
`
`
`-8-
`
`

`

`
`Petition for Covered Business Method Patent Review of U.S. Pat. No. 6,871,325 B1
`
`manipulating data items are conventional. Ex. 1002 at 4:64-5:38, 5:62-6:3. The
`
`specification suggests the use of off-the-shelf software such as a Windows
`
`operating system on the workstations and server (id. at 5:50-61), Windows CE on
`
`the handheld devices (id. at 11:9-16), and Microsoft’s ActiveX Data Objects API
`
`5
`
`for database access (id. at 10:47-52). The ’325 patent specification states that any
`
`other necessary software is generic: “The software applications for performing the
`
`functions falling within the described invention can be written in any commonly
`
`used computer language. The discrete programming steps are commonly known
`
`and thus programming details are not necessary to a full description of the
`
`10
`
`invention.” Id. at 11:56-61 (emphasis added). Therefore, Claim 1 recites a known
`
`combination of known prior art components and features and does not recite a
`
`technological feature that is novel and unobvious over the prior art.
`
`Claim 1 also fails under the second prong of the “technological invention”
`
`test because the claimed subject matter as a whole does not solve a technical
`
`15
`
`problem using a technical solution. Claim 1 is directed to a system for generating
`
`and transmitting menus to solve a business problem. The claimed system
`
`purportedly “solv[es] the problem of converting paper-based menus or Windows®
`
`PC-based menu screens to small PDA-sized displays and Web pages” (id. at 3:36-
`
`40) and thus “provides a way to turn a complicated, time-consuming task into a
`
`20
`
`simple process” (id. at 3:57-63). As discussed above, to the extent Claim 1 recites
`
`
`
`-9-
`
`

`

`
`Petition for Covered Business Method Patent Review of U.S. Pat. No. 6,871,325 B1
`
`any technological limitations, they were all well-known in the prior art. Therefore,
`
`Claim 1 does not provide a technical solution to solve a technical problem.
`
`In view of the above, Claim 1 fails both requirements for a “technological
`
`invention” and is a covered business method patent claim under AIA § 18(d)(1).
`
`5
`
`b.
`(i)
`
`Claim 11 Establishes that the ’325 Patent is a CBM Patent
`
`Claim 11 Relates to a Financial Product or Service
`
`Claim 11 of the ’325 patent meets the “financial product or service” aspect
`
`of the CBM definition. Claim 11 is directed to “an information management and
`
`synchronous communications system for use with wireless handheld computing
`
`10
`
`devices and the internet … wherein the synchronized data relates to orders.” Ex.
`
`1002 at 17:4-26.
`
`The “orders” recited in Claim 11 are part of the purchasing process which
`
`generates revenue. Id. at 3:48-51 (wireless handhelds enable “shorter order taking
`
`and check paying times”); 10:43-45 (“[T]he POS interface provides for billing,
`
`15
`
`status and payment with respect to orders”). See also Ex. 1055 at 11 (“[O]rdering
`
`pertains to the sale of a product, which generates revenue.”). Such revenue
`
`generation is clearly “financial in nature, incidental to a financial activity or
`
`complementary to a financial activity.”
`
`In addition, Patent Owner has accused Petitioner’s “mobile payment
`
`20
`
`processing” application of infringement. Ex. 1045 at ¶¶ 35, 38. In prior litigation,
`
`
`
`-10-
`
`

`

`
`Petition for Covered Business Method Patent Review of U.S. Pat. No. 6,871,325 B1
`
`Patent Owner argued that “hospitality applications” should be construed to include
`
`payment processing, and the court agreed. Ex. 1042 at 13, 15; Ex. 1044 at 6-7.
`
`Payment processing is financial in nature. Ex. 1049 at 11 (payment processing
`
`claim satisfies the “financial product or service” aspect of CBM definition).
`
`5
`
`Thus, Claim 11 satisfies the first requirement of the CBM definition.
`
`(ii) Claim 11 Does Not Recite a “Technological Invention”
`The technological invention exception does not apply to Claim 11. The
`
`claim does not recite a novel and unobvious technological feature, but instead
`
`recites well-known computer technologies such as a central database, a wireless
`
`10
`
`handheld computing device, a web server, a web page, an application program
`
`interface (API) and a communications control module. Those recited features of
`
`Claim 11 are disclosed by the cited prior art references in this Petition and the
`
`claimed subject matter of Claim 11 as a whole is obvious and invalid as discussed
`
`in detail in § V(B) of this Petition. As noted above, the specification confirms that
`
`15
`
`any software necessary to practice the purported invention can be implemented
`
`using “commonly known” programming steps. Ex. 1002 at 11:56-61. The
`
`components recited in Claim 11 achieve nothing more than “the normal, expected,
`
`or predictable result of [their] combination.” 77 Fed. Reg. at 48,763-64.
`
`Claim 11 also fails the second prong of the technological invention
`
`20
`
`exception because it does not solve a technical problem using a technical solution.
`
`
`
`-11-
`
`

`

`
`Petition for Covered Business Method Patent Review of U.S. Pat. No. 6,871,325 B1
`
`Claim 11 is directed to a system for computerizing paper-based hospitality
`
`activities such as ordering, waitlists, and reservation management to improve
`
`efficiency. Ex. 1002 at 3:48-51 (“With the proper wireless handheld system in
`
`place, restaurants can experience increased table turns from improved server [i.e.,
`
`5
`
`waiter] productivity and shorter order taking and check paying times.”). As noted
`
`above, Claim 11 uses typical hardware elements and software programmed using
`
`commonly known programming steps. Therefore, Claim 11 does not solve a
`
`technical problem using a technical solution. Claim 11 thus fails both
`
`requirements for a “technological invention” under AIA § 18(d)(1).
`
`10
`
`In view of the above, at least Claims 1 and 11 of the ’325 patent are CBM-
`
`eligible claims and do not fall within the technological invention exception.
`
`Therefore, all the Challenged Claims (11-13 and 15) are eligible for CBM review.
`
`B.
`
`IDENTIFICATION OF CHALLENGE
`
`Pursuant to 37 C.F.R. §§ 42.304(b) and 42.22, the precise relief requested by
`
`15
`
`Petitioner is that the Board institute a CBM trial on, and cancel Claims 11-13 and
`
`15 because they are invalid on the grounds and evidence presented in this Petition.
`
`1.
`
`Claims Challenged
`
`The Challenged Claims are Claims 11-13 and 15 of the ’325 patent.
`
`2.
`
`The Prior Art
`
`20
`
`The prior art references relied upon are briefly described below.
`
`
`
`-12-
`
`

`

`
`Petition for Covered Business Method Patent Review of U.S. Pat. No. 6,871,325 B1
`
`Brandt (Ex. 1004). Japanese Published Appl. No. H10-247183 (“Brandt”)
`
`is a publication of a patent application filed in Japan by IBM on December 16,
`
`1997. Exhibit 1005 is a certified English translation of Brandt. Brandt claims
`
`priority to U.S. Patent Application No. 08/780,015, which was earlier filed on Dec.
`
`5
`
`23, 1996 (and which later issued as U.S. Patent No. 5,892,905). Brandt was
`
`published in Japan on Sept. 14, 1998 and is prior art under 35 U.S.C. § 102(b).
`
`NetHopper (Ex. 1006). NetHopper Version 3.2 User’s Manual
`
`(“NetHopper”) is a user manual for the NetHopper web browser which was
`
`included on Apple Newton PDA devices. NetHopper was publicly available in
`
`10
`
`1997 and is prior art under 35 U.S.C. § 102(b). See Ex. 1007 and Ex. 1008.
`
`Demers (Ex. 1009). Alan Demers et al., The Bayou Architecture: Support
`
`for Data Sharing Among Mobile Users (“Demers”) is a 1994 conference paper that
`
`was published by IEEE in 1995 and is prior art under 35 U.S.C. § 102(b). See Ex.
`
`1010 (IEEE abstract); Ex. 1011 (Library of Congress record).
`
`15
`
`Alo