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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`STARBUCKS CORPORATION
`Petitioner
`
`v.
`
`Ameranth, Inc.
`Patent Owner
`
`__________________
`
`
`
`Case CBM2015-00099
`Patent No. 6,871,325 B1
`
`__________________
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`Paper No. 19
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`CBM2015-00099, Petitioner’s Reply to Patent Owner’s Response, Paper No. 19
`
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`Claim Construction ......................................................................................... 1
`Responses to Patent Owner’s Arguments ....................................................... 4
`A. Hospitality Applications ....................................................................... 5
`B.
`Central Database Containing Hospitality Application and Data ......... 6
`C. Web Pages Storing Hospitality Applications and Data ....................... 7
`D. Handheld Devices Storing Hospitality Applications and Data ............ 8
`E.
`Synchronization of the Hospitality Applications and Data .................. 9
`F.
`API that Enables Integration .............................................................. 12
`G.
`Communications Control Module (“CCM”) ...................................... 12
`H.
`Synchronized Data Relates to “Orders” (Claim 11), “Waitlists”
`(Claim 12), “Reservations (Claim 13) ............................................... 16
`Dependent Claim 15 – Sending Data to Wireless Pager .................... 17
`I.
`Secondary Considerations ............................................................................ 17
`III.
`IV. Conclusion .................................................................................................... 24
`
`
`
`
`i
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`
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`CBM2015-00099, Petitioner’s Reply to Patent Owner’s Response, Paper No. 19
`
`
`UPDATED 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
`
`Ex. 1017
`
`’850 Patent Prosecution History, May 22, 2001 Office Action
`
`
`
`i
`
`
`
`Ex. 1018
`
`Ex. 1019
`
`CBM2015-00099, Petitioner’s Reply to Patent Owner’s Response, Paper No. 19
`
`
`’850 Patent Prosecution History, July 19, 2001 Amendment
`
`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)
`
`Ex. 1030
`
`Ex. 1031
`
`Ex. 1032
`
`Ex. 1033
`
`Ex. 1034
`
`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)
`
`ii
`
`
`
`Ex. 1035
`
`Ex. 1036
`
`Ex. 1037
`
`CBM2015-00099, Petitioner’s Reply to Patent Owner’s Response, Paper No. 19
`
`
`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 Ameranth, Inc. v. Par Tech. Corp., Ameranth’s Opening Claim
`Construction Brief
`
`Ex. 1043 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
`
`Ex. 1049 CBM2014-00014, Paper 19 (Mar. 26, 2014) – Order Denying
`Institution
`
`iii
`
`
`
`Ex. 1050
`
`Ex. 1051
`
`CBM2015-00099, Petitioner’s Reply to Patent Owner’s Response, Paper No. 19
`
`
`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
`
`’325 Patent Prosecution History, Nov. 1, 2001 Patent Application
`Specification
`
`Ex. 1058
`
`’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”)
`
`Ex. 1062 Declaration of Matthew C. Bernstein in Support of Starbucks
`Corporation’s Motion for Pro Hac Vice
`
`Ex. 1063 Rebuttal Declaration of Abdelsalam Helal, Ph.D., March 23, 2016
`
`Ex. 1064 Rebuttal Declaration of Dr. Mahmood A. Khan , Ph.D., March 23,
`2016
`
`Ex. 1065
`
`Selected Portions in Text Book of Introduction to Hospitality, John R.
`Walker (2d ed.1999)
`
`iv
`
`
`
`CBM2015-00099, Petitioner’s Reply to Patent Owner’s Response, Paper No. 19
`
`
`Ex. 1066 Ameranth Press Release (Jul. 14, 1999) – Food.com and Ameranth
`Technology Announce Partnership to Develop Link from Food.com
`site with Ameranth's 21st Century Restaurant™ System
`
`Ex. 1067
`
`Excerpts of Gamble, Paul R. Reservation Systems, VNR’S
`Encyclopedia of Hospitality and Tourism (Ed. by Khan, Mahmood;
`Olsen, Michael; and Var, Turgut, 1993)
`
`Ex. 1068 Go, Frank M., The role of computerized reservation systems in the
`hospitality industry, Tourism Management (Mar. 1992)
`
`Ex. 1069 Wikipedia, the Free Encyclopedia, Travelocity, at
`http://en.wikipedia.org/wiki/Travelocity (last visited Mar.19, 2016)
`
`Ex. 1070 Wikipedia, the Free Encyclopedia, Expedia (website), at
`http://en.wikipedia.org/wiki/Expedia_(website) (last visited Mar.19,
`2016)
`
`Ex. 1071
`
`Ex. 1072
`
`Excerpts of Alastair M. Morrison, Hospitality and Travel Marketing
`(2d ed. 1996)
`
`Excerpts of Robert C. Lewis, Richard E. Chambers, & Harsha E.
`Chacko, Marketing Leadership in Hospitality: Foundations and
`Practices 682 (2d ed. 1995)
`
`Ex. 1073
`
`Excerpts of Harold E Lane & Denise Dupre, Hospitality World: An
`Introduction (1996)
`
`Ex. 1074 History of the Online Travel Industry Pioneer, Expedia, Inc. at
`http://www.expediainc.com/about/history/ (last visited Mar. 23, 2016)
`
`Ex. 1075
`
`JavaScript Guide, Covers JavaScript 1.2 for Netscape Communicator
`(1997)
`
`Ex. 1076 Ameranth First Amended Complaint against Ticketmaster LLC, Case
`No. 3:12-cv-01648-DMS-WVG, Dkt. 39 (S.D. Cal. Sep. 30, 2013)
`
`Ex. 1077 Ameranth Second Amended Complaint against Fandango, Case No.
`3:12-cv-01651-DMS-WVG, Dkt. 39 (S.D. Cal. Sep. 20, 2013)
`
`Ex. 1078 Ameranth First Amended Complaint against Apple, Inc., Case No.
`3:12-cv-02350-H-BGS, Dkt. 7 (S.D. Cal. Jan. 23, 2013)
`v
`
`
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`CBM2015-00099, Petitioner’s Reply to Patent Owner’s Response, Paper No. 19
`
`
`Ex. 1079 Ameranth First Amended Complaint against Expedia, Inc., Case No.
`3:12-cv-01654-DMS-WVG, Dkt. 28 (S.D. Cal. Jul. 25, 2013)
`
`Ex. 1080 Ameranth First Amended Complaint against Kayak Software
`Corporation, Case No. 3:12-cv-01640-DMS-WVG, Dkt. 28 (Jul. 26,
`2013)
`
`Ex. 1081
`
`Excerpts of Microsoft Inside SQL Server 6.5, The Developer’s Guide
`to Design, Architecture, and Implementation from a Leading
`Microsoft Expert, Ron Soukup (1997)
`
`Ex. 1082 W. Keith Edwards et al., Designing and Implementing Asynchronous
`Collaborative Applications with Bayou, UIST, Alberta, Canada
`(1997)
`
`Ex. 1083 Douglas B. Terry et al., The Case for Non-transparent Replication:
`Examples from Bayou, Bulletin of the Technical Committee on Data
`Engineering, IEEE Computer Society, Vol. 21, No.4, (Dec. 1998)
`
`Ex. 1084
`
`Excerpt from Microsoft Computing Dictionary (4th ed. 1999)
`(definitions of “communication protocol” and “middleware”)
`
`Ex. 1085 RFC1866, Hypertext Markup Language - 2.0 (Nov. 1995)
`
`Ex. 1086 Ameranth Press Release (Mar. 6, 2011) – Ameranth Technology
`Systems Changes Name to Ameranth Wireless
`Ex. 1087 Ameranth 21st Century Restaurant Overview Brochure (2011)
`Ameranth, Inc. v. MenuSoft Systems Corp., et al., No. 2:07-cv-271-
`RSP, Joint Stipulated Motion for Vacatur of Invalidity Verdicts and
`Judgment, Dkt. 348 (E.D. Tex. Jan. 20, 2012)
`
`Ex. 1088
`
`Ex. 1089
`
`
`
`Ex. 1090
`
`Ameranth, Inc. v. Par Technology Corp., et al., No. 2:10-cv-294-JRG-
`RSP, Joint Motion for Dismissal With Prejudice, Dkt. 212 (E.D. Tex.
`Feb. 21, 2013)
`
`Ameranth, Inc. v. ChowNow, LLC, No. 3:12-cv-1201-JLS-NLS,
`Notice of Voluntary Dismissal With Prejudice of Entire Action, Dkt. 8
`(S.D. Cal. Jun. 26, 2012)
`
`vi
`
`
`
`Ex. 1091
`
`Ex. 1092
`
`Ex. 1093
`
`Ex. 1094
`
`CBM2015-00099, Petitioner’s Reply to Patent Owner’s Response, Paper No. 19
`
`
`Ameranth, Inc. v. EMN8, Inc., No. 3:12-cv-1659-DMS-WVG, Joint
`Motion for Voluntary Dismissal of Complaint and Counterclaims
`With Prejudice, Dkt. 18 (S.D. Cal. Jul. 12, 2013)
`
`Ameranth, Inc. v. Monkeymedia Software, Inc., No. 3:13-cv-836-
`DMS-WVG, Notice of Voluntary Dismissal With Prejudice of Entire
`Action, Dkt. 7 (S.D. Cal. Jun. 6, 2013)
`
`Ameranth, Inc. v. Subtledata, Inc., No. 3:12-cv-1647-JLS-NLS,
`Notice of Voluntary Dismissal With Prejudice of Entire Action, Dkt. 7
`(S.D. Cal. Aug. 7, 2012)
`
`Ameranth, Inc. v. TicketMob, LLC, No. 3:12-cv-738-JLS-NLS, Notice
`of Voluntary Dismissal With Prejudice of Entire Action, Dkt. 10 (S.D.
`Cal. May 23, 2013)
`
`Ex. 1095 Mobile Insights Press Release (Sep. 13, 2000) – Mobile Insights
`Announces Winners of the Second Annual Moby Awards at the Go
`Mobile Conference
`
`Ex. 1096 River Run Press Release (Sep. 13, 2000) – Solutions Developed by
`River Run Software Group Win a Unprecedented Three Moby
`Awards at Go Mobile 2000
`The Computerworld Honors Program – 21st Century Achievement
`Award Recipients
`
`Ex. 1097
`
`Ex. 1098 Computerworld Honors Program Recognizes Outstanding Heroic
`Achievements in Information Technology, Computerworld (Apr. 10,
`2001)
`
`Ex. 1099
`
`The Computerworld Honors Program Nominee Guide (Jun. 5, 2006)
`
`Ex. 1100 Ameranth HostAlert Brochure (2003)
`
`Ex. 1101 UK Patent Application No. 2 196 766 A to Pitayanukul et al.
`(“Pitayanukul”)
`
`Ex. 1102 US Patent No. 5,991,739 to Cupps et al. (“Cupps”)
`
`Ex. 1103
`
`Screenshot of Starbucks Mobile Order & Pay Hompage (last visited
`Mar. 13, 2016)
`
`vii
`
`
`
`Ex. 1104
`Ex. 1104
`
`Ex. 1105
`Ex. 1105
`
`CBM2015-00099, Petitioner’s Reply to Patent Owner’s Response, Paper No. 19
`CBM2015-00099, Petitioner’s Reply to Patent Owner’s Response, Paper No. 19
`
`Screenshot of Starbucks Mobile Order & Pay Customer Service page,
`Screenshot of Starbucks Mobile Order & Pay Customer Service page,
`What is Mobile Order & Pay?, (last visited Mar. 13, 2016)
`What is Mobile Order & Pay?, (last visited Mar. 13, 2016)
`
`Screenshot of Starbucks Mobile Order & Pay Customer Service page,
`Screenshot of Starbucks Mobile Order & Pay Customer Service page,
`How do I access Mobile Order & Pay?, (last visited Mar. 13, 2016)
`How do I access Mobile Order & Pay?, (last visited Mar. 13, 2016)
`
`Ex. 1106 HTML Specification 4.0 (Dec. 1997)
`Ex. 1106
`HTML Specification 4.0 (Dec. 1997)
`
`viii
`
`viii
`
`
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`CBM2015-00099, Petitioner’s Reply to Patent Owner’s Response, Paper No. 19
`
`
`This timely Reply responds to and rebuts Patent Owner’s Corrected
`
`Response (Pap. 17) and Weaver Declaration (Ex. 2043).
`
`I.
`
`CLAIM CONSTRUCTION
`
`“Hospitality Applications”: The Board construed this term as “applications
`
`5
`
`used to perform services or tasks in the hospitality industry” and stated that “the
`
`ordinary and customary meaning of hospitality is broad enough to encompass car
`
`rental activities.” Pap. 9 at 11-12. The Board’s construction is consistent with the
`
`BRI standard and is supported by the patent specification and the record evidence
`
`(e.g., Ex. 1035 at 11-14 and 403-404 and Ex. 1003, ¶¶75-77, 160).
`
`10
`
`Patent Owner argues the Board’s interpretation of “hospitality” was
`
`“erroneously overbroad” and should have been limited to businesses that provide
`
`food, beverages, or lodging to travelers (Pap. 17 at 6-11). Patent Owner’s attempt
`
`to narrow the claims to avoid the cited prior art should also be rejected. As the
`
`Board recognized, the “traditional view” of hospitality evolved, and, by 1999 when
`
`15
`
`the ’325 patent was filed, the hospitality industry was seen more broadly to include
`
`all businesses catering to travelers. Pap. 9 at 11-12 (citing Ex. 1035; ’325 patent
`
`specification; Ex. 1003, ¶¶75-76). Indeed, Dittmer’s book is titled “Dimensions of
`
`the Hospitality Industry” and devotes three of its fourteen chapters to the Travel
`
`and Tourism part of the hospitality industry. Ex. 2040 at vi (table of contents).
`
`1
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`
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`CBM2015-00099, Petitioner’s Reply to Patent Owner’s Response, Paper No. 19
`
`
`In response to Patent Owner’s arguments (e.g., Pap. 17 at 5-11, 24-25; Ex.
`
`2041. ¶¶33-38, 67-68), Petitioner presents rebuttal evidence that supports the
`
`Board’s construction. For example, a 1999 textbook by John R. Walker,
`
`Introduction to Hospitality, defines “hospitality” in its glossary as:
`
`5
`
`1. The cordial and generous reception of guests. 2. Wide
`range of businesses, each of which is dedicated to the
`service of people away from home.
`
`Ex. 1065 at 483. See also id. at xv (“Introduction to Hospitality is a comprehensive
`
`tour through the fascinating and challenging related fields in the hospitality
`
`10
`
`industry: travel and tourism, lodging, food service, meetings, conventions and
`
`expositions, leisure and recreation.”).
`
`Dr. Khan, a professor in the Hospitality & Tourism Management program at
`
`Virginia Tech with over 40 years of experience in the hospitality industry, explains
`
`that the “hospitality industry” in 1999 included a wide variety of businesses that
`
`15
`
`cater to travelers or people away from home. Ex. 1064, ¶¶ 3-4 & 16-17; Ex. 1071
`
`at 555. Transportation services (e.g., air travel, rental cars), like lodging and food,
`
`are essential services that enable people to travel and be away from home. Ex.
`
`1064, ¶ 16; Ex. 1035 at 13. Rental car companies were part of the hospitality
`
`industry in 1999. Ex. 1064, ¶¶ 18-22; see also Ex. 1065 at xv; Ex. 1035 at 403-04,
`
`20
`
`6 & 13.
`
`2
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`
`
`CBM2015-00099, Petitioner’s Reply to Patent Owner’s Response, Paper No. 19
`
`Patent Owner’s attempt to narrow “hospitality” based on Dittmer’s glossary
`
`definition is improper. See Phillips v. AWH Corp., 415 F.3d 1303, 1322 (Fed. Cir.
`
`2005) (en banc) (“A claim should not rise or fall based upon the preferences of a
`
`particular dictionary editor, or the court’s independent decision, uninformed by the
`
`5
`
`specification, to rely on one dictionary rather than another.”). As the Board noted,
`
`nothing in the ’325 patent limits “hospitality” to food, beverages, and lodging. Pap.
`
`9 at 12-13. The ’325 patent never mentions “lodging” or “hotels,” and identifies
`
`example “hospitality applications (i.e., “ticketing” and “frequent customer”) that
`
`are not related to food, beverages, or lodging. Ex. 1002 at 4:10-13.
`
`10
`
`Patent Owner’s exclusion of car rentals and other transportation services
`
`from the “hospitality industry” is arbitrary. Patent Owner argues that travel and
`
`tourism services should be excluded because they are not mentioned in the
`
`specification, but Patent Owner includes lodging which is not mentioned in the
`
`specification. Ex. 1065, ¶¶ 28-29. The Board should reject Patent Owner’s
`
`15
`
`arbitrary exclusion of car rentals and other transportation services from the
`
`hospitality industry.
`
`Patent Owner’s overly narrow interpretation of “hospitality” also contradicts
`
`positions it has taken in litigation. In its complaint against Starbucks, Patent Owner
`
`identified “cruise ships” and “entertainment and sports venues” as within the
`
`20
`
`hospitality industry. Ex. 1045, ¶ 8. Patent Owner has asserted the ’325 patent
`
`3
`
`
`
`CBM2015-00099, Petitioner’s Reply to Patent Owner’s Response, Paper No. 19
`
`
`against event and movie ticketing companies (e.g., TicketMaster, Fandango) that
`
`do not provide food, beverages, or lodging. Exs. 1076, 1077. In its complaint
`
`against Apple, Patent Owner emphasized that the accused software could be used
`
`to manage airline boarding passes. Ex. 1078, ¶¶17, 24, 32. Patent Owner has also
`
`5
`
`sued “travel aggregators” such as Expedia and Kayak and alleged that their
`
`reservations systems—systems that provide car rentals—have no non-infringing
`
`uses. I.e., their rental car systems are accused of infringement. See Ex. 1079, ¶27;
`
`Ex. 1080, ¶27.
`
`The Board need not construe the 10 additional terms Patent Owner proposes.
`
`10
`
`Pap. 17 at 3-17. In light of the ’325 patent specification, none of these terms should
`
`deviate from their ordinary meaning and construction is not necessary to resolve
`
`this case. See Ex. 1063, ¶¶ 31-44.
`
`II. RESPONSES TO PATENT OWNER’S ARGUMENTS
`Patent Owner’s arguments fail to distinguish the Challenged Claims from
`
`15
`
`the instituted prior art grounds. It is bedrock patent law that limitations from the
`
`specification are not to be read into the claims. Phillips, 415 F.3d at 1323. Patent
`
`Owner goes further awry and tries to read in limitations that are not even in the
`
`specification, but are simply made up to distinguish the prior art. Many of the
`
`arguments try to exploit the lack of clarity and detail in the specification. In some
`
`20
`
`instances, Patent Owner declares that some limitation is missing in the prior art,
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`4
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`
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`CBM2015-00099, Petitioner’s Reply to Patent Owner’s Response, Paper No. 19
`
`but fails to explain its interpretation of the limitation or why it is missing. In many
`
`instances, Patent Owner’s arguments contradict its own proposed constructions.
`
`A. Hospitality Applications
`Patent Owner argues that the prior art fails to disclose “hospitality
`
`5
`
`applications” under Patent Owner’s proposed construction (e.g., Pap. 17 at 24-25;
`
`Ex. 2041, ¶¶67-68). Brandt discloses “hospitality applications.” Pap. 1 at 48-49;
`
`Ex. 1003, ¶ 160. The ’325 patent lists “reservations” as a hospitality application.
`
`Ex. 1002 at 4:11. Brandt discloses a reservations application for rental cars. Ex.
`
`1005, ¶¶ 89-122. Brandt’s car rental application meets the BRI construction,
`
`10
`
`because it is an application which provides services to travelers. Ex. 1063, ¶ 46.
`
`Even under Patent Owner’s improperly narrow definition, Brandt would still
`
`render “hospitality applications” obvious. Id., ¶¶ 47-56. Patent Owner concedes
`
`that car rentals are at least closely related to the hospitality industry. Pap. 17 at 8-9
`
`(“‘[H]ospitality is a sector of the broader ‘Travel and Tourism’ industry.”).
`
`15
`
`Moreover, Brandt is clear that the car rental application is provided merely as an
`
`example to illustrate how the system components work and interoperate. Ex. 1005,
`
`¶¶ 75-76. A POSITA would understand that a similar application could be
`
`provided for reserving hotel rooms, for example. Ex. 1063, ¶ 54. Indeed, by 1998,
`
`web sites like Expedia and Travelocity enabled users to reserve both hotels and
`
`20
`
`rental cars. Ex. 1034 at 196-211; see also Ex. 1036 at 103-107.
`
`5
`
`
`
`CBM2015-00099, Petitioner’s Reply to Patent Owner’s Response, Paper No. 19
`
`A POSITA would also recognize that Brandt’s teachings could be applied to
`
`a wide variety of applications, including other hospitality applications. Ex. 1063,
`
`¶¶ 55-56. Brandt discloses the building blocks of business applications: collecting
`
`information from users; processing and storing that information; and providing
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`5
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`information back to users. Id. Nothing in Brandt limits its teachings to car rental
`
`reservations applications. Id.
`
`B. Central Database Containing Hospitality Application and Data
`Patent Owner argues that the cited prior art fails to disclose the claimed
`
`central database. Pap. 17 at 28-29; Ex. 2041, ¶¶69-71. As previously explained,
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`10
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`Brandt’s FlowMark database 438 is a central database containing hospitality
`
`applications and data. Pap. 1 at 48-49, 66; Ex. 1003, ¶¶156-162. In the car rental
`
`example, the FlowMark database contains car rental application data (“which cars
`
`are available, etc.”). Id. The FlowMark database also facilitates the execution of
`
`the application. Id. Brandt thus discloses the central database. Ex. 1063, ¶¶ 58-65.
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`15
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`The Brandt-Demers-Alonso-Carter combination also discloses a central
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`database containing hospitality applications and data. Pap. 1 at 64-66; Ex. 1003,
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`¶¶271-274. Like Brandt, Alonso discloses a central FlowMark database. Ex. 1012
`
`at 32 (ObjectStore database server); Fig. 2. Demers discloses a “primary” database
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`responsible for committing writes propagated by mobile computers. Ex. 1009 at 4-
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`20
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`5. A POSITA would understand that Brandt’s / Alonso’s central FlowMark
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`6
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`
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`CBM2015-00099, Petitioner’s Reply to Patent Owner’s Response, Paper No. 19
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`database could act as the “primary” database and synchronize with “secondary”
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`databases stored on portable computers as discussed in both Demers and Alonso.
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`Id. at 3-5; Ex. 1012 at 34-38. See also Ex. 1063, ¶¶ 66-71.
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`Patent Owner improperly cites a different Bayou-related paper (“Edwards,”
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`5
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`Ex. 2034) to undercut the disclosure in Demers. See Pap. 9 at 43. Edwards does not
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`even support Patent Owner’s argument because it discloses a “synchronous mode”
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`that includes a central database. Ex. 1082 at 122, 127; Ex. 1063, ¶¶ 72-78.
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`Patent Owner also conceded in this proceeding that storing applications in a
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`database was “well known in the art.” Pap. 7 at 39.
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`10
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`C. Web Pages Storing Hospitality Applications and Data
`Patent Owner argues that Brandt fails to disclose a web page that stores
`
`hospitality applications and data. Pap. 17 at 44-45; Ex. 2041, ¶¶ 98. Brandt
`
`discloses hospitality applications and data stored on web pages. Pap. 1 at 52; Ex.
`
`1003, ¶¶ 182-192. Brandt discloses application web pages which include web
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`15
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`forms, JavaScript, and/or Java applets. Ex. 1005, ¶¶ 16, 90, 107. The web pages
`
`also include application data. For example, Brandt describes dynamic generation of
`
`web pages using HTML templates. Id., ¶¶ 59, 62, 96. In the car rental example,
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`information about particular reservation requests and available cars is included in
`
`dynamically generated web pages. Id., ¶¶ 116, 119, 120. As the Board explained, a
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`7
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`CBM2015-00099, Petitioner’s Reply to Patent Owner’s Response, Paper No. 19
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`POSITA would have recognized that Brandt’s dynamically generated web pages
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`store applications and data. Pap. 9 at 35. See also Pap. 7 at 39.
`
`D. Handheld Devices Storing Hospitality Applications and Data
`Patent Owner argues that the prior art fails to disclose handheld devices with
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`5
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`locally stored applications and data. Pap. 17 at 37-44; Ex. 2041, ¶¶ 87-97. The
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`Brandt-NetHopper-Carter combination discloses this limitation. Pap. 1 at 49-50;
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`Ex. 1003, ¶¶ 163-170. Brandt discloses application web pages which include
`
`application data, web forms, JavaScript, and/or Java applets. Ex. 1005, ¶¶ 16, 90,
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`107. NetHopper discloses that web pages can be cached by a PDA and used while
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`the PDA is offline. Ex. 1006 at 14-18. NetHopper discloses that web forms can
`
`even be filled out by the user while offline. Id.
`
`In the Brandt-NetHopper-Carter combination, the PDA locally stores both
`
`hospitality applications and data, including while the PDA may be disconnected
`
`from the network. Ex. 1063, ¶¶ 83-90. The cached web pages include dynamic
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`application data obtained from the central database and NetHopper also stores the
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`form data entered by the PDA user pending submission of the forms. Id. The PDA
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`also stores applications by virtue of caching the dynamically generated application
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`web pages which include web forms, JavaScript, and/or Java applets. Id.
`
`The Brandt-Demers-Alonso-Carter combination also discloses storage of
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`20
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`applications and data on a handheld device. Pap. 1 at 64-67; Ex. 1003, ¶¶ 271-276,
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`8
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`
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`CBM2015-00099, Petitioner’s Reply to Patent Owner’s Response, Paper No. 19
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`281-282. Alonso discloses that users with mobile computers “work locally on …
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`applications and data” which are synchronized with the server prior to
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`disconnection from the network. Ex.1012 at 28, 34-37. Demers describes PDAs
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`that run applications using a local copy of a database. Ex. 1009 at 5-6. A POSITA
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`5
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`would recognize that applications and data (e.g., the car rental application and its
`
`data) could be synchronized to, and stored on, a handheld computer to enable
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`usage while the device may be disconnected from the network. Ex. 1003, ¶ 282.
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`Synchronization of the Hospitality Applications and Data
`
`E.
`Patent Owner argues that the prior art fails to disclose that the hospitality
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`10
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`applications and data are “synchronized” as claimed. Pap. 17 at 30-37. The Brandt-
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`NetHopper-Carter combination discloses the required synchronization. Pap. 1 at
`
`56-58; Ex. 1003, ¶¶ 205-227. Patent Owner argues that the prior art discloses only
`
`synchronization of data, not synchronization of applications. Pap. 17 at 32-34. This
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`argument contradicts Patent Owner’s position that “synchronized” simply means
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`15
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`“made, or configured to make, consistent.” Pap. 17 at 6; Ex. 2041 at ¶ 32. Using
`
`that proposed construction, the “synchronized” limitation requires only that the
`
`applications and data in the different locations are made consistent.
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`As the Board noted in its institution decision (Pap. 9 at 17), the ’325 patent
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`provides the following example of the claimed synchronization and storage:
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`9
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`
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`CBM2015-00099, Petitioner’s Reply to Patent Owner’s Response, Paper No. 19
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`The single point of entry works to keep all wireless
`handheld devices and linked Web sites in synch with the
`backoffice server (central database) so that the different
`components are in equilibrium at any given time and an
`overall consistency
`is achieved. For example, a
`reservation made online is automatically communicated
`to the backoffice server which then synchronizes with all
`the wireless handheld devices wirelessly. Similarly,
`changes made on any of the wireless handheld devices
`will be reflected instantaneously on the backoffice server
`and the other handheld devices.
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`5
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`10
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`Ex. 1002, 11:45-55; see also id. at 2:34-37. Further, dependent claim 16 of the
`
`’850 patent confirms that the applications and data can be “synchronized by digital
`
`data transmission.” Ex. 1001, claim 16 (“wherein the applications and data are
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`15
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`synchronized by digital data transmission”). This is how the applications and data
`
`are synchronized in the cited prior art. Ex. 1063, ¶¶ 96-97; See Callaway Golf Co.,
`
`v. Acushnet Co., 576 F.3d 1331, 1344 (Fed. Cir. 2009) (“A broader independent
`
`claim cannot be nonobvious where a dependent claim stemming form that
`
`independent claim is invalid for obviousness.”).
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`20
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`Brandt and NetHopper disclose how applications and data are synchronized
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`between the FlowMark database, the web server and web pages, and the handhelds.
`
`Pap. 1 at 56-58; Ex. 1003, ¶¶ 205-227. In the car rental example, data about a
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`10
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`
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`CBM2015-00099, Petitioner’s Reply to Patent Owner’s Response, Paper No. 19
`
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`particular reservation is pulled from the database, included in a dynamically
`
`generated web page, and sent to the handheld. Id. A rental agent can use the web
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`page to modify the reservation in the database. Id. NetHopper discloses that web
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`pages may be cached on the PDA and used while the device is disconnected from
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`5
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`the network. Ex. 1006 at 14-17. A POSITA would recognize that these disclosures
`
`in the prior art make the applications and data consistent. Ex. 1063, ¶¶ 94-98.
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`The Brandt-Demers-Alonso-Carter ground also discloses the claimed
`
`synchronization. Pap. 1 at 64-66, 68-69; Ex. 1003, ¶¶ 271-276, 282, 292. The
`
`synchronization between the database, web server, and web page is disclosed by
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`10
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`Brandt as discussed above. The synchronization to handheld computers is
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`disclosed by Demers and Alonso. Ex. 1009 at 3-5; Ex. 1012 at 28, 34-38. The
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`handhelds would synchronize with the same FlowMark database used by the web-
`
`based clients. Ex. 1063, ¶¶ 99-103. Changes made on the handhelds would
`
`propagate via the database to the web pages and vice versa. Id. As a result, the
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`15
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`applications and data would be made consistent. Id. The ’325 patent similarly
`
`describes synchronization via the central database. Ex. 1002 at 11:45-49.
`
`Alonso’s “locking” a work item is not “the opposite of the claimed
`
`invention” (see Pap. 17 at 32). The Challenged Claims do not prohibit locking and
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`the ’325 patent offers no different, let alone better approach. Ex. 1063, ¶¶ 104-106.
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`11
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`CBM2015-00099, Petitioner’s Reply to Patent Owner’s Response, Paper No. 19
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`F. API that Enables Integration
`Patent Owner argues that the prior art fails to disclose the claimed API. Pap.
`
`17 at 45-46; Ex. 2041, ¶¶ 99-100. Brandt discloses APIs that enable integration of
`
`outside applications. Pap. 1 at 53, 58-59; Ex. 1003, ¶¶ 193-196; 228-231. Brandt
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`5
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`discloses “APIs that allow third parties to access” and interface with the
`
`applications. Ex. 1005, ¶ 22. The use of APIs for integration was extremely
`
`common by 1998. Ex. 1003, ¶ 311. Patent Owner ignores FlowMark APIs 436
`
`which are “standard APIs provided with FlowMark.” Ex. 1005, ¶¶ 78, 82, 85; Ex.
`
`1003, ¶ 229-230. Patent Owner also ignores Brandt’s substitution variables that can
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`10
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`be used to integrate outside applications. Ex. 1005, ¶¶ 57, 95; Ex. 1003, ¶ 231.
`
`G. Communications Control Module (“CCM”)
`Patent Owner argues that the prior art fails to disclose the claimed CCM.
`
`P