UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`APPLE INC., EVENTBRITE, INC., and STARWOOD HOTELS & RESORTS
`WORLDWIDE, INC.,
`
`Petitioner
`v.
`
`AMERANTH, INC.,
`
`Patent Owner
`
`
`
`CASE CBM Unassigned
`
`Patent No. 6,871,325
`
`
`
`PETITION FOR
`COVERED BUSINESS METHOD REVIEW OF
`U.S. PATENT NO. 6,871,325
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial & Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`i
`
`

`
`TABLE OF CONTENTS
`
`
`Page
`
`
`I.
`II.
`
`INTRODUCTION .......................................................................................... 1
`COMPLIANCE WITH FORMAL REQUIREMENTS ................................. 2
`A. Mandatory Notices Under 37 C.F.R. §§ 42.8(b)(1)-(4) ....................... 2
`1.
`Real Parties-In-Interest .............................................................. 2
`2.
`Related Matters .......................................................................... 3
`3.
`Lead and Back-up Counsel ........................................................ 6
`4.
`Power of Attorney and Service Information .............................. 6
`Proof of Service on the Patent Owner .................................................. 7
`B.
`Fee ........................................................................................................ 7
`C.
`III. REQUIREMENTS FOR COVERED BUSINESS METHOD
`PATENT REVIEW ........................................................................................ 7
`A. GROUNDS FOR STANDING ............................................................ 7
`1.
`Eligibility Based on Infringement Suit ...................................... 8
`2.
`Eligibility Based on Lack of Estoppel by Other AIA
`Trials .......................................................................................... 8
`The ’325 Patent is a Covered Business Method Patent ............. 9
`3.
`IDENTIFICATION OF CHALLENGE ............................................. 16
`1.
`Claims Challenged ................................................................... 16
`2.
`The Prior Art ............................................................................ 16
`3.
`Statutory Grounds of Challenge and Legal Principles ............ 18
`4.
`Supporting Evidence Relied Upon For The Challenge ........... 19
`5.
`Claim Construction .................................................................. 19
`6.
`How Claims Are Unpatentable Under Statutory Grounds ...... 19
`IV. Overview of the ’325 Patent ......................................................................... 20
`A.
`SUMMARY OF THE ’325 PATENT ................................................ 20
`B.
`SUMMARY OF THE PROSECUTION FILE HISTORY ................ 24
`C.
`SUMMARY OF CBM2014-00016 PROCEEDING ......................... 26
`
`B.
`
`
`
`-i-
`
`

`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`
`
`V.
`
`D.
`
`E.
`
`B.
`
`PATENT OWNER’S INTERPRETATION OF
`CHALLENGED CLAIMS IN LITIGATION .................................... 26
`PROPOSED CLAIM CONSTRUCTION .......................................... 27
`1.
`“Web page” .............................................................................. 28
`2.
`“hospitality applications” ......................................................... 28
`STATE OF THE ART PRIOR TO THE ’325 PATENT ................... 29
`F.
`LEVEL OF ORDINARY SKILL IN THE ART ............................... 30
`G.
`IT IS MORE LIKELY THAN NOT THAT AT LEAST ONE CLAIM
`OF THE ’325 PATENT IS UNPATENTABLE .......................................... 31
`A.
`INVALIDITY OF THE CHALLENGED CLAIMS UNDER 35
`U.S.C. § 112 [NOT INCLUDED IN THIS PETITION] .................. 31
`INVALIDITY OF THE CHALLENGED CLAIMS FOR
`OBVIOUSNESS UNDER 35 U.S.C. § 103 ....................................... 31
`1.
`Grounds 9 & 10: The Challenged Claims Are Obvious
`Over Brandt In View Of Nethopper, Carter, & Rossmann...... 31
`Grounds 11 & 12: The Challenged Claims Are Obvious
`Over Brandt in view of Demers, Alonso, Carter &
`Rossmann ................................................................................. 54
`C. GROUND 13: INVALIDITY OF THE CHALLENGED
`CLAIMS UNDER § 101 [NOT INCLUDED IN THIS
`PETITION] ......................................................................................... 60
`VI. THE GROUNDS OF INVALIDITY ARE NOT REDUNDANT ............... 60
`VII. CONCLUSION ............................................................................................. 61
`
`
`
`2.
`
`
`
`-ii-
`
`

`
`
`
`TABLE OF CONTENTS
`(continued)
`
`TABLE OF EXHIBITS
`
`Page
`
`EXHIBIT
`
`DESCRIPTION
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`
`
`U.S. Patent No. 6,384,850 to McNally, et al.
`
`U.S. Patent No. 6,871,325 B1 to McNally, et al.
`
`Declaration of Abdelsalam Helal, Ph.D. including Appendix A
`(Curriculum Vitae)
`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
`NetHopper Version 3.2 User’s Manual (“NetHopper”)
`
`Declaration of Wayne Yurtin with respect to NetHopper (Ex.
`1006)
`Jeff Walsh, Apple Releases MesssagePad 2100 Handheld PCs,
`InfoWorld, Oct. 27, 1997, at 50
`Alan Demers et al., The Bayou Architecture: Support for Data
`Sharing Among Mobile Users (“Demers”)
`IEEE Abstract for Demers
`
`Library of Congress catalog entry for book containing Demers
`
`Gustavo Alonso et al., Exotica/FMDC: A Workflow Management
`System for Mobile and Disconnected Clients (“Alonso”)
`
`-iii-
`
`

`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`Springer Abstract for Alonso
`
`Library of Congress catalog entry for book containing Alonso
`
`’850 Patent Prosecution History, Nov. 29, 2000 Office Action
`
`’850 Patent Prosecution History, Feb. 26, 2001 Amendment
`
`’850 Patent Prosecution History, May 22, 2001 Office Action
`
`’850 Patent Prosecution History, July 19, 2001 Amendment
`
`Excerpts from John December and Mark Ginsburg, HTML & CGI
`Unleashed (1995)
`Excerpts from Brian Francis et al., Active Server Pages 2.0 (1998)
`
`Excerpts from John Rodley, Writing Java Applets (1996)
`
`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)
`Newton Solutions Guide, Issue 1 (1995)
`
`Newton Solutions Guide, Issue 2 (1996)
`
`Newton Connection Utilities User’s Manual for the Macintosh
`Operating System (1997)
`Newton Connection Utilities User’s Manual for Windows (1997)
`
`-iv-
`
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`
`
`

`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`Newton MessagePad 2100 User’s Manual (1997)
`
`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)
`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)
`Bob Stegmaier, Image and Workflow Library: FlowMark V2.3
`Design Guidelines (Feb. 1998)
`U.S. Patent No. 5,970,479 to Shepherd (Alice Corp. patent)
`
`Ameranth Press Release (April 1, 2014) – Ameranth Signs a New
`
`-v-
`
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`1037
`
`1038
`
`1039
`
`1040
`
`
`
`

`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`Patent License with Taco Bell Corp. for Ameranth’s Patented 21st
`Century CommunicationsTM Data Synchronization Inventions
`Ameranth Press Release (July 30, 2014) – Ameranth’s 21st
`Century CommunicationsTM, ‘Data Synchronization’ Patent
`Licensing Program Expands, and Accelerates
`Ameranth, Inc. v. Par Tech. Corp., Ameranth’s Opening Claim
`Construction Brief
`Ameranth, Inc. v. Par Technology Corp., Transcript of Claim
`Construction Hearing held May 30, 2012
`Ameranth, Inc. v. Par Technology Corp., Claim Construction
`Order
`Ameranth Complaints against Apple Inc., EventBrite, Inc. and
`Starwood Hotels & Resorts Worldwide, Inc.
`List of Patent Infringement Lawsuits filed by Ameranth
`
`CBM2014-00015, Paper 11 (Jan. 13, 2014) – Patent Owner
`Preliminary Response
`CBM2014-00015, Paper 20 (Mar. 26, 2014) – Institution Decision
`
`CBM2014-00014, Paper 19 (Mar. 26, 2014) – Order Denying
`Institution
`Excerpt from Microsoft Computing Dictionary (4th ed. 1999)
`(definition of “synchronous communications”)
`Tristan Richardson et al., Virtual Network Computing (Jan. / Feb.
`1998)
`
`-vi-
`
`
`
`1041
`
`1042
`
`1043
`
`1044
`
`1045
`
`1046
`
`1047
`
`1048
`
`1049
`
`1050
`
`1051
`
`
`
`

`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`European Patent Application No. EP 0845748 A2 (“Carter”)
`
`U.S. Patent No. 5,809,415 to Rossmann (“Rossmann”)
`
`CBM2014-00016, Paper 10 (Jan. 13, 2014) – Patent Owner
`Preliminary Response
`CBM2014-00016, Paper 19 (Mar. 26, 2014) – Institution Decision
`
`CBM2015-00091, Paper 1 (Mar. 2, 2015) – Petition
`
`’325 Patent Prosecution History, Nov. 1, 2001 Patent Application
`Specification
`’325 Patent Prosecution History, Nov. 1, 2001 Preliminary
`Amendment
`’325 Patent Prosecution History, Nov. 16, 2004 Terminal
`Disclaimer
`’325 Patent Prosecution History, Dec. 7, 2004 Notice of
`Allowance
`Excerpt from Encarta World English Dictionary (1999)
`(definition of “order”)
`CBM2015-00099, Paper 9 (Sept. 14, 2015) – Institution Decision
`
`CBM2014-00016, Paper 35 (March 20, 2015) – Final Written
`Decision
`CBM2015-00082, Paper 13 (Sept. 1, 2015) – Institution Decision
`
`CBM2015-00082, Paper 14 (September 1, 2015) – Scheduling
`Order
`
`-vii-
`
`
`1052
`
`1053
`
`1054
`
`1055
`
`1056
`
`1057
`
`1058
`
`1059
`
`1060
`
`1061
`
`1062
`
`1063
`
`1064
`
`1065
`
`
`
`

`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`
`1066
`
`CBM2015-00099, Paper 10 (September 14, 2015) – Scheduling
`Order
`
`
`
`-viii-
`
`

`
`U.S. Patent No. 6,871,325
`Petition For Covered Business Method Review
`
`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., Apple Inc.
`
`(“Apple”), EventBrite, Inc. (“EventBrite”) and Starwood Hotels & Resorts
`
`Worldwide, Inc. (“Starwood”) (collectively, “Petitioner”) petitions for covered
`
`business method patent (“CBM”) 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.
`
`Concurrently with the filing of this Petition, Petitioner submits a Motion for
`
`Joinder with the recently-instituted CBM2015-00099, which was initiated by
`
`Starbuck Corporation and which involves the same patent and patent owner (the
`
`“Starbucks CBM”). In order to facilitate joinder with the Starbucks CBM, this
`
`Petition intentionally presents duplicates of only those grounds in the Starbucks
`
`CBM petition for which trial was instituted. Exhibit 1062 at 46. This petition
`
`provides no additional or different grounds for review. Petitioner respectfully
`
`requests that CBM review be instituted and that the CBM proceedings be joined
`
`with Starbucks CBM for the reasons set forth in this Petition and in the
`
`concurrently filed Motion for Joinder.
`
`Specifically, 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
`
`
`
`1
`
`

`
`U.S. Patent No. 6,871,325
`Petition For Covered Business Method Review
`
`not that at least one of Claims 11-13 and 15 of the ’325 patent is not patentable
`
`(“Challenged Claims”) under pre-AIA 35 U.S.C. § 103.
`
`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
`
`ordering food and making reservations.
`
`The Challenged Claims are 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.
`
`The IBM prior art discloses hospitality applications, e.g., a car rental application.
`
`II. COMPLIANCE WITH FORMAL REQUIREMENTS
`A. Mandatory Notices Under 37 C.F.R. §§ 42.8(b)(1)-(4)
`1.
`Real Parties-In-Interest
`Apple, EventBrite, and Starwood are the real parties in interest under 35
`
`U.S.C. § 322(a)(2) and 37 C.F.R. § 42.8(b)(1).
`
`
`
`
`
`2
`
`

`
`U.S. Patent No. 6,871,325
`Petition For Covered Business Method Review
`
`Related Matters
`
`2.
`Petitioner, along with a number of other parties, previously sought Covered
`
`Business Method (“CBM”) review of the ’325 patent in CBM2014-00016 under 35
`
`U.S.C. §§ 101 and 112. The Board invalidated claims 1-10 of the ’325 patent
`
`under the § 101 grounds. Ex. 1063 at 36.
`
`Petitioner also previously sought CBM review of claims 11-13 and 15 of the
`
`’325 patent under 35 U.S.C. § 103 in CBM2015-00082 on the basis of prior art that
`
`is distinct from the prior art relied on in this Petition. Trial was instituted in
`
`CBM2015-00082 on September 1, 2015 and is ongoing. Ex. 1064 at 30. In a
`
`separately filed petition in CBM2015-00097, the following parties sought CBM
`
`review of claims 11-13 and 15 of the ’325 patent on the same grounds in
`
`CBM2015-00097: Expedia, Inc., Fandango, LLC, Hotels.com, L.P., Hotel
`
`Tonight, Inc., Hotwire, Inc., Kayak Software Corp., OpenTable, Inc., Orbitz, LLC,
`
`Papa John’s USA, Inc., StubHub, Inc., Ticketmaster, LLC, Live Nation
`
`Entertainment, Inc., Travelocity.com, LP, Wanderspot, LLC, Agilysys, Inc.,
`
`Domino’s Pizza, Inc., Domino’s Pizza, LLC, Hilton Resorts Corp., Hilton
`
`Worldwide, Inc., Hilton International Co., Mobo Systems, Inc., Pizza Hut of
`
`America, Inc., Pizza Hut, Inc. and Usablenet, Inc. Trial was also instituted in
`
`CBM 2015-00097 and was joined with CBM2015-00082. Id.
`
`
`
`3
`
`

`
`U.S. Patent No. 6,871,325
`Petition For Covered Business Method Review
`
`On September 14, 2015, the Board instituted CBM review of claims 11-13
`
`and 15 of the ’325 patent in Case No. CBM2015-00099, based upon a petition filed
`
`by Starbucks. Ex. 1062 at 46. This petition intentionally presents identical
`
`grounds to those instituted in CBM2015-00099. Id. This petition excludes the
`
`grounds that were not instituted in CBM2015-00099, and presents no new or
`
`additional grounds of unpatentability. Id. In addition, Petitioner seeks joinder with
`
`CBM2015-00099 for the reasons expressed in the concurrently filed Motion for
`
`Joinder under 35 U.S.C. § 325(c), 37 C.F.R. §§ 42.22 and 42.222(b).
`
`Ameranth, Inc. (“Patent Owner”) has asserted the ’325 patent against
`
`Petitioner, and numerous other defendants, in patent infringement lawsuits filed in
`
`the Southern District of California. Ex. 1045. To the best of Petitioner’s
`
`knowledge, the following is a list of the defendants and the civil action numbers
`
`for the pending matters (Ameranth, Inc. is the lone plaintiff in each case): Apple
`
`Inc., Case No. 3-12-cv-02350 (S.D. Cal., filed Sept. 26, 2012); Starbucks Corp.,
`
`Case No. 3-13-cv-01072 (S.D. Cal., filed May 6, 2013); TicketBiscuit, LLC, Case
`
`No. 3-13-cv-00352 (S.D. Cal., filed Feb. 13, 2013); Ticketfly, Inc., Case No. 3-13-
`
`cv-00353 (S.D. Cal., filed Feb. 13, 2013); Eventbrite, Inc., Case No. 3-13-cv-
`
`00350 (S.D. Cal., filed Feb. 13, 2013); Hilton Resorts Corp. et al, Case No. 3-12-
`
`cv-01636 (S.D. Cal., filed July 2, 2012); Kayak Software Corp., Case No. 3-12-cv-
`
`01640 (S.D. Cal., filed June 29, 2012); Usablenet, Inc., Case No. 3-12-cv-01650
`
`
`
`4
`
`

`
`U.S. Patent No. 6,871,325
`Petition For Covered Business Method Review
`
`(S.D. Cal., filed June 29, 2012); Starwood Hotels & Resorts Worldwide, Inc., Case
`
`No. 3-12-cv-01629 (S.D. Cal., filed June 29, 2012); Hotels.com, LP, Case No. 3-
`
`12-cv-01634 (S.D. Cal., filed June 29, 2012); Orbitz, LLC, Case No. 3-12-cv-
`
`01644 (S.D. Cal., filed June 29, 2012); ATX Innovation, Inc., Case No. 3-12-cv-
`
`01656 (S.D. Cal., filed June 29, 2012); Best Western International, Inc., Case No.
`
`3-12-cv-01630 (S.D. Cal., filed June 29, 2012); NAAMA Networks, Inc. et al, Case
`
`No. 3-12-cv-01643 (S.D. Cal., filed June 29, 2012); Hotel Tonight, Inc., Case No.
`
`3-12-cv-01633 (S.D. Cal., filed June 29, 2012); Travelocity.com, LP, Case No. 3-
`
`12-cv-01649 (S.D. Cal., filed June 29, 2012); Expedia, Inc., Case No. 3-12-cv-
`
`01654 (S.D. Cal., filed June 29, 2012); Hyatt Corporation, Case No. 3-12-cv-
`
`01627 (S.D. Cal., filed June 29, 2012); Hotwire, Inc., Case No. 3-12-cv-01653
`
`(S.D. Cal., filed June 29, 2012); Wanderspot LLC, Case No. 3-12-cv-01652 (S.D.
`
`Cal., filed June 29, 2012); Micros Systems, Inc., Case No. 3-12-cv-01655 (S.D.
`
`Cal., filed June 29, 2012); Marriott International, Inc. et al, Case No. 3-12-cv-
`
`01631 (S.D. Cal., filed June 29, 2012); Mobo Systems, Inc., Case No. 3-12-cv-
`
`01642 (S.D. Cal., filed June 29, 2012); Fandango, Inc., Case No. 3-12-cv-01651
`
`(S.D. Cal., filed June 29, 2012); StubHub, Inc., Case No. 3-12-cv-01646 (S.D. Cal.,
`
`filed June 29, 2012); TicketMaster, LLC et al, Case No. 3-12-cv-01648 (S.D. Cal.,
`
`filed June 29, 2012); Agilysys, Inc., Case No. 3-12-cv-00858 (S.D. Cal., filed April
`
`6, 2012); Domino’s Pizza, LLC et al, Case No. 3-12-cv-00733 (S.D. Cal., filed
`
`
`
`5
`
`

`
`U.S. Patent No. 6,871,325
`Petition For Covered Business Method Review
`
`March 27, 2012); Pizza Hut, Inc. et al, Case No. 3-12-cv-00742 (S.D. Cal., filed
`
`March 27, 2012); and OpenTable, Inc., Case Nos. 3-12-cv-00731 and 3-13-cv-
`
`01840 (S.D. Cal., filed March 27, 2012 and Aug. 8, 2013, respectively).
`
`Lead and Back-up Counsel
`
`3.
`Lead Counsel for Petitioner is James M. Heintz, DLA Piper LLP (US), Reg.
`
`No. 41,828, who can be reached by email at: jim.heintz@dlapiper.com, by phone
`
`at 703-773-4148, by fax at 703-773-5200, and by mail and hand delivery at: DLA
`
`Piper LLP (US) 11911 Freedom Drive, Suite 300, Reston, VA 20190. Backup
`
`counsel for Petitioner is Robert C. Williams; who can be reached by email at:
`
`robert.williams@dlapiper.com; by mail and hand delivery at: DLA Piper LLP
`
`(US) 401 B Street, Suite 1700, San Diego, California, 92101-4297; by phone at
`
`619-699-2820, and by fax at 619-699-2701.
`
`Petitioner hereby requests authorization to file a motion for Robert C.
`
`Williams to appear pro hac vice. Mr. Williams is an experienced litigating
`
`attorney, is counsel for Petitioner in the above litigation and in CBM2015-00082,
`
`and as such has an established familiarity with the subject matter at issue in this
`
`proceeding.
`
`4.
`
`Power of Attorney and Service Information
`
`
`
`Powers of attorney are being filed with the designation of counsel in
`
`accordance with 37 C.F.R. § 42.10(b). Service information for lead and back-up
`
`
`
`6
`
`

`
`U.S. Patent No. 6,871,325
`Petition For Covered Business Method Review
`
`counsel is provided in the designation of lead and back-up counsel above. Service
`
`of any documents via hand delivery may be made at the postal mailing address of
`
`the respective lead and back-up counsel designated above. Petitioner hereby
`
`consents to electronic service.
`
`Proof of Service on the Patent Owner
`
`B.
`As identified in the attached Certificate of Service, a copy of this Petition in
`
`
`
`its entirety is being served via electronic email to the Patent Owner’s attorneys of
`
`record, who have agreed to accept service electronically pursuant to 37 C.F.R. §
`
`42.6.
`
`Fee
`
`C.
`The undersigned authorizes the Director to charge the fee specified by 37
`
`
`
`C.F.R. § 42.15(b) and any additional fees that might be due in connection with this
`
`Petition to Deposit Account No. 50-1442.
`
`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
`
`and 42.15 are satisfied pursuant to 37 C.F.R. § 42.206.
`
`A. GROUNDS FOR STANDING
`Pursuant to 37 C.F.R. § 42.304(a), Petitioner hereby certifies that the ’325
`
`
`
`7
`
`

`
`U.S. Patent No. 6,871,325
`Petition For Covered Business Method Review
`
`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
`
`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),
`
`325(e)(1) and 315(e)(1); and 35 C.F.R. §§42.72(d)(1), 42.302 and 42.303.
`
`Eligibility Based on Infringement Suit
`
`1.
`Patent Owner Ameranth has sued Apple, EventBrite and Starwood
`
`(collectively, “Petitioner”) in separate lawsuits alleging infringement of the ’325
`
`patent. Ex. 1045. Pursuant to AIA § 18(a)(1)(B) and 37 C.F.R. § 42.302(a),
`
`Petitioner is eligible to file this Petition.
`
`Eligibility Based on Lack of Estoppel by Other AIA Trials
`
`2.
`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)
`
`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. 1063), whereas this Petition challenges Claims 11-13 and 15.
`
`Accordingly, CBM2014-00016 did not result in a final written decision on the
`
`
`
`8
`
`

`
`U.S. Patent No. 6,871,325
`Petition For Covered Business Method Review
`
`Challenged Claims in this Petition.
`
`In addition, while Case No. CBM2015-00082 by this Petitioner was
`
`instituted for trial on the Challenged Claims, it has not resulted in a final written
`
`decision. Rather, CBM2015-00082 is set for oral hearing on the same date as
`
`CBM2015-00099. Ex. 1065 at 6 (setting oral argument for May 10, 2016), Ex.
`
`1066 at 6 (same). Should this Petition be granted, Petitioner will request that any
`
`final written decision in CBM2015-00082 be coordinated with these proceedings to
`
`avoid any possibility of estoppel.
`
`Furthermore, Petitioner filed this Petition and accompanying Motion for
`
`Joinder with CBM2015-00099 “no later than one month after the institution date of
`
`any post-grant review for which joinder is requested..” See 37 C.F.R. § 42.222(b).
`
`The ’325 Patent is a Covered Business Method Patent
`
`3.
`The ’325 patent is eligible for CBM review because it constitutes a covered
`
`business method patent as defined under AIA § 18(d)(1) and 37 C.F.R. § 42.301.
`
`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,
`
`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
`
`
`
`9
`
`

`
`U.S. Patent No. 6,871,325
`Petition For Covered Business Method Review
`
`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
`
`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.
`
`Patent
`
`Service
`
`a.
`
`Claim 1 Establishes that the ’325 Patent is a CBM
`
`(1) Claim 1 Relates to a Financial Product or
`
`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
`
`therefore meets the “financial product or service” components under the
`
`definition 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 of ordering is “customer ordering” and “table-based,” “drive-
`
`through,” “via Internet,” “via telephone,” and “via wireless device,” respectively.
`
`
`
`10
`
`

`
`U.S. Patent No. 6,871,325
`Petition For Covered Business Method Review
`
`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 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 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
`
`recited in Claim 1 is for facilitating ordering and purchasing of food and
`
`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.
`
`Therefore, Claim 1 satisfies the first requirement of AIA § 18(d)(1). Id. at 11.
`
`
`
`11
`
`

`
`U.S. Patent No. 6,871,325
`Petition For Covered Business Method Review
`
`(2) 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
`
`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
`
`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 15:12-
`
`23; Ex. 1055 at 12. The specification admits that GUI-based applications for
`
`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
`
`
`
`12
`
`

`
`U.S. Patent No. 6,871,325
`Petition For Covered Business Method Review
`
`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
`
`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
`
`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
`
`simple process” (id. at 3:57-63). As discussed above, to the extent Claim 1
`
`recites 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.
`
`
`
`13
`
`

`
`U.S. Patent No. 6,871,325
`Petition For Covered Business Method Review
`
`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).
`
`Patent
`
`b.
`
`Claim 11 Establishes that the ’325 Patent is a CBM
`
`(1) Claim 11 Recites 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
`
`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,
`
`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.”
`
`Thus, Claim 11 satisfies the first requirement of the CBM definition.
`
`
`
`14
`
`

`
`U.S. Patent No. 6,871,325
`Petition For Covered Business Method Review
`
`(1) 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
`
`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
`
`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