`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`APPLE INC., EVENTBRITE, INC. and STARWOOD HOTELS & RESORTS
`WORLDWIDE, INC.
`
`Petitioner
`
`v.
`
`AMERANTH, INC.
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`CASE: To Be Assigned
`Patent No. 6,871,325 B1
`
`
`
`
`
`
`
`
`
`
`
`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF PETITION FOR
`COVERED BUSINESS METHOD PATENT
`REVIEW OF U.S. PATENT NO. 6,871,325 B1
`
`
`
`
`
`
`Apple Inc. Exhibit 1003
`
`
`
`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,871,325 B1
`
`
`TABLE OF CONTENTS
`
`
`Introduction ..................................................................................................... 1
`I.
`Summary of Opinions ..................................................................................... 3
`II.
`III. Qualifications and Experience ........................................................................ 5
`A.
`Education and Experience .................................................................... 5
`B.
`Compensation ..................................................................................... 12
`C. Documents and Other Materials Relied Upon ................................... 12
`IV. Statement of Legal Principles ....................................................................... 13
`A.
`Claim Construction ............................................................................ 13
`B. Anticipation ........................................................................................ 13
`C. Obviousness ........................................................................................ 14
`D.
`The Written Description Requirement ............................................... 15
`E.
`The Enablement Requirement ............................................................ 15
`F.
`The Definiteness Requirement ........................................................... 16
`G.
`Patent-Eligible Subject Matter ........................................................... 16
`V. Overview of the ’325 Patent ......................................................................... 17
`A.
`Summary of the ’325 Patent ............................................................... 17
`B.
`State of the Art Prior to the ’325 Patent ............................................. 22
`1.
`The Internet and Web-Based Applications .............................. 22
`2.
`Handheld Computing Devices ................................................. 24
`3.
`Computer Technology in the Hospitality Industry .................. 32
`The Level of Ordinary Skill in the Art ............................................... 35
`C.
`Identification of the Prior Art and Summary of Opinions............................ 37
`VI.
`VII. Claim Construction ....................................................................................... 38
`VIII. Unpatentability of the Challenged Claims of the ’325 Patent ...................... 40
`A. Grounds 1 – 8: Invalidity under § 112 ............................................... 40
`1.
`The “Hospitality Applications and Data” Limitations ............. 40
`2.
`The “Communications Control Module” Limitations ............. 49
`i
`
`
`
`
`
`
`Apple Inc. Exhibit 1003
`
`
`
`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,871,325 B1
`
`
`3.
`
`Ground 7: The Claims Are Invalid for Lack of
`Enablement Because the Specification Fails to Disclose
`the “Software Libraries” that Supposedly Enable the
`Claimed Subject Matter ........................................................... 58
`Ground 8: The Challenged Claims are Invalid for Lack of
`Enablement Because Each of the Challenged Claims, as a
`Whole, is not Enabled .............................................................. 59
`B. Grounds 9 - 12: Invalidity under pre-AIA § 103(a) ........................... 60
`1.
`Grounds 9 & 10: The Challenged Claims are Obvious
`Over Brandt in View of NetHopper, Carter, and
`Rossmann ................................................................................. 60
`Grounds 11 & 12: The Challenged Claims are Obvious
`Over Brandt in View of Demers, Alonso, Carter, and
`Rossmann ............................................................................... 123
`C. Ground 13: The Challenged Claims are Patent-Ineligible under
`§ 101 ................................................................................................. 130
`IX. Conclusion .................................................................................................. 137
`
`4.
`
`2.
`
`
`
`
`
`ii
`
`
`
`Apple Inc. Exhibit 1003
`
`
`
`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,871,325 B1
`
`
`I.
`
`INTRODUCTION
`
`1. My name is Abdelsalam Helal. I am a Professor in the Computer and
`
`Information Science and Engineering Department at the University of Florida
`
`(1998 – present), and a Finland Distinguished Professor at Aalto University,
`
`Finland (2011-2013).
`
`2.
`
`I have been engaged by counsel for Apple Inc., EventBrite, Inc. and
`
`Starwood Hotels & Resorts Worldwide, Inc. (collectively, “Petitioner”) as a
`
`consultant in connection with Petitioner’s Petition for Covered Business Method
`
`Review (“Apple CBM Petition”) of U.S. Patent No. 6,871,325 B1 (the “’325
`
`patent” ). I previously submitted a declaration in connection with a petition for
`
`Covered Business Method Review of the ’325 patent submitted by Starbucks
`
`Corporation (“Starbucks”) in Case No. CBM2015-00099 (“Starbucks CBM
`
`Petition”).
`
`3.
`
`I have been informed by counsel for Petitioner that the Apple CBM
`
`Petition seeks CBM review on Grounds identical to those instituted by the Board in
`
`CBM2015-00099. Counsel for Petitioner further informed me that Petitioner is
`
`concurrently submitting a motion for joinder to join the Apple CBM Petition with
`
`CBM2015-00099. I am further informed that in order to facilitate joinder and
`
`simplify issues before the Board, the Apple CBM Petition intentionally includes
`
`virtually identical invalidity analyses as the Starbucks CBM Petition.
`
`- 1 -
`
`Apple Inc. Exhibit 1003
`
`
`
`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,871,325 B1
`
`
`4.
`
`I have been asked to review my prior declaration submitted with the
`
`Starbucks CBM Petition to determine whether any of opinions and analyses
`
`relating to the validity of the ’325 patent have changed. Because my analyses and
`
`opinions have not changed in material respects, I have reproduced below
`
`substantially the same declaration I submitted in connection with the Starbucks
`
`CBM Petition.
`
`5.
`
`I understand that the ’325 patent has been assigned to Ameranth, Inc.
`
`(“Ameranth”). Ameranth is also referred to as the “Patent Owner” in this
`
`declaration.
`
`6.
`
`This declaration is based on the information currently available to me.
`
`To the extent that additional information becomes available, I reserve the right to
`
`continue my investigation and study, which may include a review of documents
`
`and information that may be produced, as well as testimony from depositions that
`
`not yet been taken.
`
`7.
`
`In forming my opinions, I have relied on information and evidence
`
`identified in this declaration, including the ’325 patent, the prosecution history of
`
`the ’325 patent, and prior art references including Japanese Published Appl. No.
`
`H10-247183 (“Brandt”), NetHopper Version 3.2 User’s Manual (“NetHopper”),
`
`Alan Demers et al., The Bayou Architecture: Support for Data Sharing Among
`
`Mobile Users (1995) (“Demers”), Gustavo Alonso et al, Exotica/FMDC: A
`
`- 2 -
`
`Apple Inc. Exhibit 1003
`
`
`
`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,871,325 B1
`
`Workflow Management System for Mobile and Disconnected Clients (1996)
`
`(“Alonso”), EP 0845748A2 (“Carter”), U.S. Patent No. 5,809,415 to Rossmann
`
`(“Rossmann”), listed as exhibits to the Apple CBM Petition on the ’325 patent. I
`
`have also relied on my own experience and expertise in the relevant technologies
`
`and systems that were already in use prior to, and within the timeframe of the
`
`earliest priority date of the claimed subject matter in the ’325 patent—September
`
`21, 1999.
`
`II.
`
`SUMMARY OF OPINIONS
`
`8.
`
`The ’325 patent relates to “an information management and
`
`synchronous communications system and method [that] facilitates database
`
`equilibrium and synchronization with wired, wireless, and Web-based systems” for
`
`computerizing hospitality-related activities such as ordering food and making
`
`reservations. Ex. 1002 at Abstract, 1:64-2:37 and 3:64-4:28. The ’325 patent
`
`purports to describe an inventive system that enables synchronization of hospitality
`
`applications and data between a central database, a web page, and a handheld
`
`wireless device. Ex. 1002 at 3:64-4:28, 11:20-55 and 17:4-18:38. The ’325 patent
`
`also purports to describe an information management and synchronous
`
`communications system for generating and transmitting menus. Ex. 1002 at 3:13-
`
`63, 5:22-9:34, 12:14-17:3).
`
`9.
`
`Claims 11-13 and 15 of the ’325 patent are challenged by the Apple
`
`- 3 -
`
`Apple Inc. Exhibit 1003
`
`
`
`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,871,325 B1
`
`CBM Petition and each recite “[a]n information management and synchronous
`
`communications system for use with wireless handheld computing devices and the
`
`internet.” Each claimed system includes a central database, a wireless handheld
`
`device, a web server, a web page, and application program interface, and a
`
`communication control module. The claims further recite certain features
`
`associated with these system components.
`
`10.
`
`It is my opinion that each of Claims 11-13 and 15 of the ’325 patent is
`
`invalid for lack of enablement under the patentability standard of pre-AIA 35
`
`U.S.C. § 112, ¶ 1 explained to me by Starbucks’ counsel as stated below.
`
`11.
`
`It is my opinion that each of Claims 11-13 and 15 of the ’325 patent is
`
`invalid for being indefinite under the patentability standard of pre-AIA 35 U.S.C. §
`
`112, ¶ 2 explained to me by Starbucks’ counsel as stated below.
`
`12.
`
`It is my opinion that each of Claims 11-13 and 15 of the ’325 patent is
`
`invalid for lack of written description under the patentability standard of pre-AIA
`
`35 U.S.C. § 112, ¶ 1 explained to me by Starbucks’ counsel as stated below.
`
`13. The components of the systems recited in Claims 11-13 and 15 of the
`
`’325 patent are generic computer components based on technologies that were well
`
`known before the earliest priority date of the ’325 patent. Further, the recited
`
`functions associated with the claimed components were also well known before the
`
`earliest priority date of the ’325 patent. None of the features described in Claims
`
`- 4 -
`
`Apple Inc. Exhibit 1003
`
`
`
`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,871,325 B1
`
`11-13 and 15 of the ’325 patent was novel as of the earliest priority date, nor does
`
`the ’325 patent teach a novel and non-obvious way of combining the known
`
`features.
`
`14.
`
`It is my opinion that each of Claims 11-13 and 15 of the ’325 patent is
`
`invalid for being obvious under the patentability standards of 35 U.S.C. §§ 102 and
`
`103 explained to me by Starbucks counsel as stated below.
`
`15.
`
`It is my opinion that each of Claims 11-13 and 15 of the ’325 patent
`
`recites only generic computer implementation for computerizing hospitality
`
`activities.
`
`16. The subsequent sections of this declaration will first provide my
`
`qualifications and experience and then describe the details of my analysis and
`
`observations.
`
`III. QUALIFICATIONS AND EXPERIENCE
`
`A. Education and Experience
`
`17.
`
`I obtained my Ph.D. degree in Computer Sciences from Purdue
`
`University, West Lafayette, Indiana, in 1991. During my studies at Purdue I was
`
`supported by two competitive and prestigious fellowships: a Purdue University
`
`Foundation Fellowship and a David Ross Graduate Fellowship.
`
`18. My doctoral dissertation research focused on Replication
`
`Management in Distributed Systems. Synchronizing replicas of the same data
`
`- 5 -
`
`Apple Inc. Exhibit 1003
`
`
`
`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,871,325 B1
`
`(keeping replicas in sync) despite computer system or networking failures was part
`
`of the research contribution of my dissertation.
`
`19.
`
`I have a strong background in computer systems, especially in
`
`distributed systems with or without replicated data. I also have a strong
`
`background in mobile computing and extended distributed systems which employ
`
`both fixed and wireless networks as well as fixed and mobile computers.
`
`20.
`
`I authored or co-authored over 260 refereed and non-refereed
`
`publications including Books, Book Chapters, Journal articles, and Conference and
`
`Workshop papers. A list of my publications can be found in the detailed
`
`curriculum vitae attached to this declaration as Appendix A.
`
`21.
`
`In 1996, I authored and published: A. Helal, A. Heddaya, and B.
`
`Bhargava, "Replication Techniques in Distributed Systems," Kluwer Academic
`
`Publishers (now Springer). ISBN 0-7923-9800-9. The book presents a
`
`comprehensive body of knowledge of then available and known techniques,
`
`methods and protocols to achieve consistency and synchronization of replicated
`
`data, objects and processes. This book was the first to be published on this topic.
`
`To date, it remains as an authoritative reference on the subject of replication
`
`management in distributed systems. The book was endorsed with a special
`
`Foreword by the late Dr. Jim Gray. Dr. Gray is a world-famous American
`
`computer scientist who received the A.M. Turing Award in 1998 “for seminal
`
`- 6 -
`
`Apple Inc. Exhibit 1003
`
`
`
`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,871,325 B1
`
`contributions to database and transaction processing research and technical
`
`leadership in system implementation.” There are only 31 people in the world who
`
`ever received the honor of the A.M Turning Award.
`
`22.
`
`I have also authored and published several other books, including: A.
`
`Helal, B. Haskell, J. Carter, R. Brice, D. Woelk, and M. Rusinkiewicz, "Any Time
`
`Anywhere Computing: Mobile Computing Concepts and Technology," Kluwer
`
`Academic Publishers. ISBN 0-7923-8610-8, Published October 1999, and A.
`
`Cichocki, A. Helal, M. Rusinkiewicz, and D. Woelk, "Workflow and Process
`
`Automation: Concepts and Technology," Kluwer Academic Publishers. ISBN 0-
`
`7923-8099-1, Published November 1997.
`
`23.
`
`I am the sole or joint inventor on 9 issued U.S. patents which are
`
`included in my curriculum vitae attached to this declaration. See Appendix A.
`
`24.
`
`I am well recognized as a scholar and leader in my research
`
`community for my novel research contributions in distributed, mobile and
`
`pervasive computing. As a recognized leader, I was asked and trusted to organize
`
`26 conferences or workshops, mostly IEEE and ACM (Association for Computing
`
`Machinery), in the capacity of Program Chair or Co-Chair, or General Chair or Co-
`
`Chair. I organized and chaired both the ACM Ubicomp conference (in 2009) and
`
`the ACM MobiCom conference (in 2013). Ubicomp and MobiCom are the premier
`
`International conferences on Ubiquitous Computing
`
`- 7 -
`
`Apple Inc. Exhibit 1003
`
`
`
`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,871,325 B1
`
`(http://www.ubicomp.org/ubicomp2009/) and Mobile Computing
`
`(http://www.sigmobile.org/mobicom/2013/), respectively. The keynote speakers
`
`whom I invited to the MobiCom conference, in 2013 included the CTO of Nokia,
`
`and Cisco’s VP for Research, leaders in wireless communications and networks.
`
`25.
`
`I am the Editor-in-Chief of IEEE Computer – the flagship publication
`
`of the IEEE Computer Society. The IEEE and IEEE Computer Society are among
`
`a few most prestigious engineering and computer science professional societies
`
`world-wide. I have also been an Associate Editor-in-Chief for Computer since
`
`2009. I also was one of the 25 initial co-founders and editorial board members of
`
`IEEE Pervasive Computing. I lately served as Associate Editor-in-Chief of
`
`Pervasive Computing. I also served or serving on other editorial boards of
`
`numerous journals and IEEE transactions.
`
`26.
`
`I am a Fellow of the IEEE. I have been recognized for my
`
`contributions to the advancement of Mobile and Pervasive Computing Systems.
`
`The IEEE Grade of Fellow is conferred by the IEEE Board of Directors upon a
`
`person with an outstanding record of accomplishments in any of the IEEE fields of
`
`interest. The total number selected in any one year cannot exceed one-tenth of
`
`one- percent of the total voting membership (400,000 members in 160 countries).
`
`IEEE Fellow is the highest grade of membership and is recognized by the technical
`
`community as a prestigious honor and an important career achievement. The IEEE
`
`- 8 -
`
`Apple Inc. Exhibit 1003
`
`
`
`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,871,325 B1
`
`is the world’s leading professional association for advancing technology for
`
`humanity. Dedicated to the advancement of technology, the IEEE publishes 30
`
`percent of the world’s literature in the electrical and electronics engineering and
`
`computer science fields, and has developed more than 900 active industry
`
`standards. The association also sponsors or co-sponsors nearly 400 international
`
`technical conferences each year.
`
`27.
`
`I have advised and graduated 19 Ph.D. students and 57 Masters
`
`students (all with thesis option). One of the Masters students whom I advised in
`
`2000-2001 at the University of Florida, Mr. Rajanikanth Kanyaboina, worked on
`
`research and development of a computerized restaurant system. Mr. Kanyaboina
`
`defended his thesis titled “e-Staurant: A Software Infrastructure for restaurant
`
`management,” in the Summer term of 2001.
`
`28. My research on Mobile and Pervasive Computing and its emerging
`
`applications received substantial local, national and international media coverage.
`
`This includes the New York Times (2002), the Robb Report (2004), the Orlando
`
`Sentinel (2004), the Chicago Tribune (2004), the MIT Technology Review (2006),
`
`the Discovery Channel Beyond Tomorrow show (2006), the Washington Post
`
`(2007), IBM Press room (2007), the Florida Trend magazine (cover story) 2010,
`
`Der Standard, Austria (2011) and Die Presse, Austria (2011). Details of media
`
`coverage for my research can be found in my curriculum vitae attached to this
`
`- 9 -
`
`Apple Inc. Exhibit 1003
`
`
`
`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,871,325 B1
`
`declaration. See Appendix A.
`
`29. From 1991-1994, I was a tenure track assistant professor at the
`
`University of Texas at Arlington (UTA), Arlington, Texas. While at UTA, I taught
`
`computer science classes including distributed database systems and operating
`
`systems. I also worked on research addressing database performance and
`
`availability.
`
`30. From 1994-1995, I was a visiting assistant professor at Purdue
`
`University, West Lafayette, IN, teaching operating systems and programming
`
`languages, and conducting research on mobile databases.
`
`31. From 1996-1998, I worked as a senior member of the technical staff at
`
`Microelectronics and Computer Corporation of America (MCC), Austin, Texas. I
`
`spearheaded research in mobile computing and networking benchmarking. I was
`
`also involved in research on agent based information integration using semantic
`
`web technology.
`
`32. From 1998-present, I had been an associate professor, then since
`
`2004, a full professor at the University of Florida (UF), Gainesville, Florida. I
`
`have also been a director of the mobile and pervasive computing research lab since
`
`2000. At UF, I taught operating systems, distributed databases, mobile platform
`
`developments, mobile computing and pervasive computing. I have worked on
`
`research in mobile transactions, mobile databases, mobile ad-hoc collaboration, in
`
`- 10 -
`
`Apple Inc. Exhibit 1003
`
`
`
`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,871,325 B1
`
`addition to several other research areas.
`
`33.
`
`In 2002, I founded Phoneomena, Inc., then a Florida C corporation in
`
`Gainesville, Florida. I served as the company’s CEO and Chairman of the Board.
`
`Phoneomena specialized in mobile middleware and applications on platforms such
`
`as Windows CE, BREW and J2ME. The major middleware product was
`
`xPhoneApp – a product that syncs between an enterprise network server and a
`
`plurality of mobile devices, each with the xPhoneApp client installed.
`
`34.
`
`In 2006, I founded Pervasa, Inc., then a Florida C corporation in
`
`Gainesville, Florida. I served as the company’s President. Pervasa specialized in
`
`device integration middleware based on technology licensed from the University of
`
`Florida. The UF technology was invented by myself and several of my students.
`
`The main product of Pervasa was the Atlas sensor platform and middleware.
`
`Pervasa won the Silver Best of SensorExpo award in the SensorExpo trade show
`
`that was held outside Chicago, IL in June 2007 (largest trade show on sensor
`
`technology).
`
`35. From 2011-2014, I have been awarded a Finland Distinguished
`
`Professorship (known as FiDiPro) from Tekes, the Finnish research agency. Only
`
`a handful of international scholars from all fields of science and engineering are
`
`awarded FiDiPro annually. While a FiDiPro professor (concurrent with my
`
`appointment as a UF professor), I worked with a large team of researchers from
`
`- 11 -
`
`Apple Inc. Exhibit 1003
`
`
`
`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,871,325 B1
`
`Aalto University and University of Helsinki to develop the concept of smart
`
`spaces. A culmination of our research is the smart space architecture and open
`
`source software maintained at www.spaceify.org
`
`B. Compensation
`
`36.
`
`I am being compensated by Petitioner for my work in connection with
`
`this declaration. The compensation is not contingent upon my performance, the
`
`outcome of the covered business method reviews or any other proceeding, or any
`
`issues involved in or related to the covered business method reviews.
`
`C. Documents and Other Materials Relied Upon
`
`37. The documents on which I rely for the opinions expressed in this
`
`declaration are documents and materials identified in this declaration, including the
`
`’325 patent and its prosecution history, the prior art references and background
`
`materials discussed in this declaration, and any other references specifically
`
`identified in this declaration, in their entirety, even if only portions of these
`
`documents are discussed here in an exemplary fashion.
`
`38. The prior art references I have reviewed include the following:
`
`Japanese Published Appl. No. H10-247183 (“Brandt”) (Ex. 1004) including a
`
`certified English translation of Brandt (Ex. 1005), NetHopper Version 3.2 User’s
`
`Guide (“NetHopper”) (Ex. 1006), Alan Demers et al., The Bayou Architecture:
`
`Support for Data Sharing Among Mobile Users (1995) (“Demers”) (Ex. 1009),
`
`- 12 -
`
`Apple Inc. Exhibit 1003
`
`
`
`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,871,325 B1
`
`Gustavo Alonso et al., Exotica/FMDC: A Workflow Management System for
`
`Mobile and Disconnected Clients (1996) (“Alonso”) (Ex. 1012), EP 0845748A2
`
`(“Carter”) (Ex. 1052), and U.S. Patent No. 5,809,415 to Rossmann (“Rossmann”)
`
`(Ex. 1053).
`
`39.
`
`I have also relied on my own experience and expertise in the relevant
`
`technologies that were in use prior to and at the time of the ’325 patent’s effective
`
`filing date—September 1999.
`
`40. All Exhibit numbers used in this declaration refer to Exhibits to the
`
`Apple CBM Petition.
`
`IV. STATEMENT OF LEGAL PRINCIPLES
`
`A. Claim Construction
`
`41. Starbucks’ counsel has advised that, when construing claim terms in
`
`an unexpired patent, a claim subject to covered business method patent review
`
`receives the “broadest reasonable construction in light of the specification of the
`
`patent in which it appears.” Starbucks’ counsel has further informed me that the
`
`broadest reasonable construction is the broadest reasonable interpretation (BRI) of
`
`the claim language, and that any term that lacks a definition in the specification is
`
`also given a broad interpretation.
`
`B. Anticipation
`
`- 13 -
`
`Apple Inc. Exhibit 1003
`
`
`
`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,871,325 B1
`
`
`42. Starbucks’ counsel has advised that in order for a patent claim to be
`
`valid, the claimed invention must be novel. Starbucks’ counsel has further advised
`
`that if each and every element of a claim is disclosed in a single prior art reference,
`
`then the claimed invention is anticipated, and the invention is not patentable
`
`according to pre-AIA 35 U.S.C. § 102 effective before March 16, 2013. In order
`
`for the invention to be anticipated, all of the elements and limitations of the claim
`
`must be shown in a single prior art reference, arranged as in the claim. A claim is
`
`anticipated only if each and every element as set forth in the claim is found, either
`
`expressly or inherently described, in a single prior art reference. In order for a
`
`reference to inherently disclose a limitation, that claim limitation must necessarily
`
`be present in the reference.
`
`C. Obviousness
`
`43. Starbucks’ counsel has also advised me that obviousness under pre-
`
`AIA 35 U.S.C. § 103 effective before March 16, 2013 is a basis for invalidity. I
`
`understand that where a prior art reference does not disclose all of the limitations
`
`of a given patent claim, that patent claim is invalid if the differences between the
`
`claimed subject matter and the prior art reference are such that the claimed subject
`
`matter as a whole would have been obvious at the time the invention was made to a
`
`person having ordinary skill in the art. Obviousness can be based on a single prior
`
`- 14 -
`
`Apple Inc. Exhibit 1003
`
`
`
`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,871,325 B1
`
`art reference or a combination of references that either expressly or inherently
`
`disclose all limitations of the claimed invention.
`
`D. The Written Description Requirement
`
`44. Starbucks’ counsel has advised that there is a written description
`
`requirement under pre-AIA 35 U.S.C. § 112, ¶ 1 effective before March 16, 2013.
`
`A patent specification “shall contain a written description of the invention, and of
`
`the manner and process of making and using it, in such full, clear, concise, and
`
`exact terms as to enable any person skilled in the art to which it pertains, or with
`
`which it is most nearly connected, to make and use the same.” Starbucks’ counsel
`
`has further advised that the test for sufficiency of the written description is whether
`
`the disclosure in the specification reasonably conveys to those skilled in the art that
`
`the inventors had “possession” of the claimed subject matter as of the filing date. I
`
`understand that “possession” must be demonstrated by the material within the four
`
`corners of the specification. In other words, the specification must describe an
`
`invention understandable to a person of ordinary skill in the art and show that the
`
`inventor actually invented what is claimed.
`
`E.
`
`The Enablement Requirement
`
`45. Starbucks’ counsel has advised that there is also an enablement
`
`requirement under pre-AIA 35 U.S.C. § 112, ¶ 1 effective before March 16, 2013.
`
`To satisfy the enablement requirement, the specification must teach those skilled in
`
`- 15 -
`
`Apple Inc. Exhibit 1003
`
`
`
`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,871,325 B1
`
`the art how to make and use the full scope of the claimed invention without undue
`
`experimentation. I understand that the specification need not disclose what is well
`
`known in the art, but that this does not excuse the applicants from providing a
`
`basic disclosure of how to make and use the claimed invention.
`
`F.
`
`The Definiteness Requirement
`
`46. Starbucks’ counsel has advised that there is a definiteness requirement
`
`under pre-AIA 35 U.S.C. § 112, ¶ 2 effective before March 16, 2013. I understand
`
`that claims are required to particularly point out and distinctly claim the subject
`
`matter which the applicants regard as their invention. I understand that a claim is
`
`invalid for indefiniteness if the claim, read in light of the specification and the
`
`prosecution history, fails to inform, with reasonable certainty, those skilled in the
`
`art about the scope of the claimed invention.
`
`G.
`
`Patent-Eligible Subject Matter
`
`47. Starbucks’ counsel has advised me that “abstract ideas” are not patent-
`
`eligible subject matter under 35 U.S.C. § 101. I understand that where a claim is
`
`directed to an abstract idea, there must be some additional element or combination
`
`of elements in the claim that ensures that the claim is significantly more than a
`
`claim to the abstract idea itself or else the claim is patent-ineligible. Starbucks’
`
`counsel has further advised that merely reciting generic computer implementation
`
`of an abstract idea is insufficient to make a claim patent-eligible.
`
`- 16 -
`
`Apple Inc. Exhibit 1003
`
`
`
`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,871,325 B1
`
`V. OVERVIEW OF THE ’325 PATENT
`
`A.
`
`Summary of the ’325 Patent
`
`48. The ’325 patent is directed to computerizing hospitality-related
`
`activities using the Internet and handheld wireless devices. The Challenged
`
`Claims, Claims 11-13 and 15, each recite “[a]n information management and
`
`synchronous communications system for use with wireless handheld computing
`
`devices and the internet.” Ex. 1002 at 17:4-18:39.
`
`49. The ’325 patent, and the Challenged Claims, use the phrase
`
`“synchronous communications” to refer generally to communications in a system
`
`that synchronizes applications and data, even though the phrase has a different and
`
`well-established meaning in the art. For example, the Microsoft Computer
`
`Dictionary defines “synchronous communications” as: “Computer-to-computer
`
`communications in which transmissions are synchronized in timing between the
`
`sending and receiving machines.” Ex. 1050 at 430.
`
`50. Although the specification of the ’325 patent provides some
`
`discussion related to certain aspects of the Challenged Claims, much of the
`
`specification deals with “menu generation” subject matter that relates to Claims 1-
`
`10 of the ’325 patent which are not Challenged in the Apple CBM Petition. Six of
`
`the seven figures in the ’325 patent relate to the “menu generation” subject matter.
`
`Only Figure 6 has a connection to the Challenged Claims.
`
`- 17 -
`
`Apple Inc. Exhibit 1003
`
`
`
`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,871,325 B1
`
`
`51. The ’325 patent specification acknowledges that “[t]he use of wireless
`
`handheld devices in the restaurant and hospitality industry [was] becoming
`
`increasingly pervasive.” Ex. 1002 at 3:45-48. On the other hand, “software for
`
`fully realizing the potential for handheld wireless computing devices [had] not
`
`previously been available.” Ex.1002 at 2:3-2:12. As a result, “paper-based
`
`ordering, waitlist and reservations management [had] persisted in the face of
`
`widespread computerization in practically all areas of commerce.” Ex. 1002 at
`
`2:38-41.
`
`52. The ’325 patent purports to describe software and functions that the
`
`hospitality industry had been waiting for: “The information management and
`
`synchronous communications system of the present invention features include fast
`
`synchronization between a central database and multiple handheld devices,
`
`synchronization and communication between a Web server and multiple handheld
`
`devices, a well-defined API that enables third parties such as POS companies,
`
`affin