PATENT OWNER
`
`PATENT OWNER
`EXHIBIT 2019
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`EXHIBIT 201 9
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`

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`Docket No. 3125-4003US1
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Serial No.:
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`11/112,990 (cid:9)
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`Confirmation No.: (cid:9)
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`7098
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`Applicant(s): McNally, et al. (cid:9)
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`Group Art Unit: (cid:9)
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`2191
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`Filed: (cid:9)
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`April 22, 2005 (cid:9)
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`Examiner: (cid:9)
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`Brophy, Matthew
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`Customer No.: (cid:9)
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`27123
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`For:
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`INFORMATION MANAGEMENT AND SYNCHRONOUS COMMUNICATIONS
`SYSTEM WITH MENU GENERATION, AND HANDWRITING AND VOICE
`MODIFICATION OF ORDERS
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`DECLARATION UNDER 37 C.F.R. § 1.131
`
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Sir:
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`I, the undersigned, Keith R. McNally, declare and state that:
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`1. I am an inventor of the subject matter claimed in the above-identified
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`patent application. I have first hand knowledge as to all of the facts, all of the referenced
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`exhibits and all of the information contained herein.
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`2. I make this Declaration to establish conception of the invention claimed
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`in this application in the United States at least as early as August 1998, well prior to June 17,
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`1999, the filing date of U.S. Patent Publication No. 20020059405 to Angwin et al.
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`("Angwin publication") and June 29, 1999, the apparent priority date of U.S. Patent No.
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`6,973,437 to Olewicz et al. ("Olewicz patent") – both of which were cited by the Examiner
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`against the pending claims of the present application—coupled with actual reduction to
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`(cid:9)
`(cid:9)
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`practice of the claimed invention from September 1998 and subsequent constructive
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`reduction to practice of the claimed invention as a filed U.S. patent application on
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`September 21, 1999.
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`3. Prior to June 17, 1999, my co-inventors and I conceived of the subject
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`matter of the invention claimed in this application. In short, the November 1998 21st
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`Century Restaurant System Diagram and brochures, the offers for sale, the actual product
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`demonstrations at the November 1998 FSTEC show and the numerous additional
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`contemporaneous references discussed and detailed below, as well as our continual efforts to
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`commercialize a product encompassed by the present claims illustrated the invention in
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`sufficiently clear terms to demonstrate conception in the United States prior to June 17,
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`1999.
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`4. The invention claimed in the above-identified patent application was
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`actually reduced to practice in or about November 1998 as detailed below. To the extent the
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`November 1998 activities could possibly be deemed insufficient to establish reduction to
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`practice of the claimed invention (notwithstanding the clear evidence demonstrating that the
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`invention was actually reduced to practice in November 1998), additional evidence
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`submitted herein regarding our activities subsequent to November 1998 shows clearly that
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`the claimed invention was actually reduced to practice prior to June 17, 1999. The invention
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`was thereafter constructively reduced to practice on September 21, 1999.
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`5. From a period from September 1998 to September 1999, my con-
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`inventors and I were diligent in working to reduce the invention to practice, both actually
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`and constructively. During this period, both the actual and constructive reduction to practice
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`of the claimed invention was active and reasonably continuous.
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`6. After conceiving the core inventive ideas encompassed in the pending
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`claims of the present application in late summer 1998 (as part of preparations for a new
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`generation of products to be introduced at the upcoming November 1998 FSTEC show), my
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`co-inventors and I initiated and then continued the development effort and worked diligently
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`at designing and developing an initial prototype of the claimed invention during the period
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`from September 1998 to November 1998. We then introduced the invention and showed
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`this first prototype and offered the product for sale to the public and to customers and
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`partners at the Food Service Technology Show (FSTEC) in Atlanta, Georgia from
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`November 14-16, 1998. Thereafter, we continued to make further refinements of a
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`commercial embodiment of the claimed invention throughout the remainder of 1998 and
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`well into 1999. Copies of actual photographs of us introducing, demonstrating, and offering
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`for sale this invention and product, the "wizard" (our company's only software product at
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`the time), in our large booth at the November 1998 show and numerous additional
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`confirming documents substantiating our continual inventive activities based upon the
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`"wizard" - up to an including our constructive reduction to practice are attached as exhibits.
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`Our company's "wizard" products were the only software products under development at
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`Ameranth from September 1998 thru at least September 21, 1999, and thus all of our
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`software development activities, de facto, involved development of a commercial
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`embodiment of the claimed invention. A detailed chronology of our invention activities as
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`evidenced by contemporaneous documentation is provided in the following paragraphs.
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`7. Exhibit 1 is a copy of a photograph taken during November 1998 which
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`shows the assignee of the present application (Ameranth, Inc.) actually demonstrating and
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`offering for the first time to the public an embodiment of the claimed menu generation
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`and wireless/web data synchronization inventions. This embodying product was part of
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`Ameranth's 21st Century RestaurantTM system. (cid:9)
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`This product introduction and
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`demonstration occurred in Atlanta, Georgia at the Food Service Technology (FSTEC)
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`Show during November 14-16, 1998. Exhibit 1 is copy of a photograph of Ameranth's
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`20X20 foot booth within the show. All three inventors attended the show, however co-
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`inventor William Roof left and returned to San Diego - after assisting with the set up of
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`the system in Ameranth's booth. In the photograph (taken by co-inventor Richard
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`Bergfeld), seated at the front table with his back to the camera is Dave Miller, founder of
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`JTECH, Ameranth's paging system partner. Clockwise after Mr. Miller is Jeff Graham,
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`CEO of JTECH, Keith McNally of Ameranth (co-inventor), Dan Drummond of
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`Ameranth and then Jeff Tobin, the President of JTECH at the time. Looking toward the
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`camera from one of Ameranth's system demonstration stations is Kathie Sanders, then
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`Ameranth's Director of Marketing. In front of Ms. Sanders is a customer. Standing
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`immediately to the right of Ameranth's booth, with his arms folded, is Ed Lyznick (now
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`deceased) who was then Ameranth's Sales Director. Immediately to the right of Ms.
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`Sanders and just above her head is the Systems Diagram of Exhibit 3 (which can be seen
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`more clearly in Exhibit 2). Exhibit 3 was shown to and discussed with potential
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`customers and partners at this show and Ameranth provided demonstrations of the initial
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`prototype which embodied the claimed invention. The prototype demonstrated at the
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`show was a working device which included aspects recited by the claims of the present
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`application and, in concert with, inter alia, the Systems Diagram, included all aspects of
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`the present claims. Ameranth demonstrated the capabilities of the invention at the show
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`by live demonstrations of the prototype along with passing out copies of the system
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`diagrams and product brochures. The product brochures were handed out by Ms. Sanders
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`at the demonstration stations and also were available for customers/partners to obtain
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`through the brochure brackets along each of the four legs of the booth (most visible on
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`the right booth leg). The computer screen to the left of Ms. Sanders' head is one of the
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`stations where the product demonstrations were shown. Directly overhead are screen
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`shots of the then planned Ameranth mobile ordering hardware device, which Ameranth
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`intended at the time to source from Japan. While the photograph of Exhibit 1 is not
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`marked with a date, it was unarguably taken at the FSTEC show of November 1998,
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`since Jeff Tobin was no longer part of JTECH shortly after this show and regretfully, Ed
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`Lyznick died of a sudden heart attack within days of this show.
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`8. Exhibit 2 is a copy of an additional photograph taken at Ameranth's
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`1998 FSTEC show product introductions. In this photograph, Ameranth's system
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`diagram (Exhibit 3), including the core inventive elements of the claims of the present
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`application, is clearly visible in the upper right of the center block within Ameranth's
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`booth. This photograph clearly shows that the Ameranth "wizard" product was
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`introduced and shown to the public at the FSTEC hospitality technology show in
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`November 1998.
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`9. Exhibit 3 is a copy of Ameranth's 21st Century RestaurantTM System
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`Diagram. This diagram was first exhibited at the November 1998 FSTEC show as
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`confirmed by the photographs of Exhibits 1 and 2. The description contained within the
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`diagram of Exhibit 3 encompassed the core inventive elements of Ameranth's later issued
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`patents and the claims of the present application as embodied in Ameranth's "wizard"
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`prototype and disclosure. Already, at this time, Ameranth had a working capability of the
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`invention and continued to diligently advance and refine the commercial embodiment of
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`the invention subsequent to its introduction at the 1998 FSTEC show. Ameranth's
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`invention uniquely recognized, for the first time, the need for an integrated and
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`synchronized wireless/web hospitality system and that a breakthrough innovation
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`(embodied in Ameranth's "IntraSet wizard" - shown on the screen of the center PC
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`within the wireless communication center in the photograph of Exhibits 1 and 2) was
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`needed to act as the central and master controller for the entire synchronized system. My
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`co-inventors and I were the first to recognize that the system would need to integrate with
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`POS systems, leverage and manage the database (including menu items, prices, orders,
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`frequent customers etc), and seamlessly and automatically "generate and transmit" menus
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`to touchscreen handhelds and the internet, as well as to place orders, conduct payment
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`processing and integrate with other hospitality functions such as table management,
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`reservations, waitlists, paging, valet, etc. All of these aspects which are recited in the
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`pending claims of the present application are shown in the Systems Diagram of Exhibit 3.
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`10. Exhibit 4 is a copy of a letter dated December 30, 1998 to me from
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`John Harker of Symbol, who met me at the November 1998 FSTEC show in Atlanta and
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`observed Ameranth's software "wizard" products for the first time at the show. Symbol
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`was very interested in Ameranth's "wizard" technology as an application for its wireless
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`handheld devices and to meet the then unsolved need for a solution to "generating and
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`transmitting" menus from fixed POS systems to mobile devices and then maintaining
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`synchronization. The letter specifically refers to Symbol's interest in Ameranth's 21st
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`Century Restaurant System. Follow up actions and meetings subsequent to this letter led
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`to the signing of a strategic alliance agreement between Ameranth and Symbol, which
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`included the "wizard" invention as an essential aspect. The strategic alliance agreement,
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`executed on February 3, 1999, is attached as Exhibit 7.
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`11. Exhibit 5 is a copy of a system diagram in my handwriting, (which
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`conveyed the core elements of our invention, but from a slightly different perspective,
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`primarily the "communications flows") and which was and is consistent with the original
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`November 1998 system diagram. I made this drawing on or about January 1, 1999.
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`12. Exhibit 6 is the system diagram shown in Exhibit 5 after its
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`conversion to a PowerPoint chart. As can be seen, this system diagram shows that my
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`co-inventors and I were in possession of the subject matter of the pending claims of the
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`present application. For example, the diagram of Exhibit 6 shows hospitality menu
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`generation and transmission from a master/central database to wireless handheld devices
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`("wireless POS" in this figure) as encompassed by, e.g., present claim 103 and
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`synchronization of hospitality information between a master/central database, wireless
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`devices and the web as encompassed by, e.g., present claim 122.
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`13. Exhibit 7 is a copy of the strategic alliance agreement signed on
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`February 3, 1999 between Symbol Technologies and Ameranth (with attached Exhibit A
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`thereto). As discussed above, this agreement was a direct result of Ameranth's
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`introduction of its inventions at the November 1998 FSTEC show. At that show, John
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`Harker, then Symbol's Hospitality Market Director, was seeking the optimal systems
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`integration partner for Symbol's new mobile handhelds. Ameranth demonstrated its
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`"wizard" prototype and provided, inter alia, copies of the system diagram of Exhibit 3 to
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`Mr. Harker at the FSTEC show. This document (which essentially represents a sale of
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`our products) further confums that my co-inventors and I had possession of the claimed
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`invention and were diligent in developing it for commercialization and/or continually
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`working to reduce it to practice as evidenced by the selection of Ameranth's technology
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`embodying the claimed invention by the world's largest rugged mobile device
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`manufacturer within just six weeks of the FSTEC show. Notably, Paragraph 2(D) of the
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`attachment of Exhibit 7 refers to Ameranth's provision of a "totally integrated system
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`solution" to customers. Additionally, Paragraph 2(E) of the attachment of Exhibit 7
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`clearly reflects Symbol's recognition of the importance of Ameranth's "software wizard"
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`invention and its relevance to both their planned Windows CE and Palm device
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`introductions:
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`Ameranth will modify its Software Wizard development
`environment to enable POS suppliers and/or the customers
`themselves to quickly develop hand-held POS applications
`for the CE screen of the 2700. . . . Ameranth will also
`provide a tailored version for the smaller screen of the 1700
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`This Paragraph also reflected the recognition of the need for our invention to customize
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`the "generated" handheld menus uniquely for the smaller sized screens of these
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`handhelds as recited by, e.g., pending claim 103 of the present application. With the
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`signing of this February 1999 agreement with Symbol, Ameranth then moved away from
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`the previously targeted hardware device from Japan shown at the November 1998 FSTEC
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`show and focused on integrating its products encompassed by the claimed invention with
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`the new Symbol mobile devices. As made clear in the strategic agreement, Ameranth
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`would continue development of its "Software Wizard" product for launch with Symbol's
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`handheld devices at the upcoming May 1999 National Restaurant Association (NRA)
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`show in Chicago. Note that the "pen and ink" handwritten changes/insertions in the
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`document attached as Exhibit 7 were made at the time of its signing.
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`14. Exhibit 8 is a copy of a press release announcing the introduction of
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`Ameranth's updated 21st Century RestaurantTM System to include the Symbol Windows
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`CE Device at the National Restaurant Association (NRA) show in Chicago, Illinois on
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`May 22, 1999. The references in this press release to, e.g., "seamless integration" and
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`"fully integrated software and hardware solutions" were with respect to Ameranth's
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`provision of a solution involving the leveraging of central/master database information
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`for generation of, e.g., menus for display on handheld devices and/or web pages and/or
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`provision of a synchronized solution for hospitality applications between a central/master
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`database, handheld devices and the internet as recited in various of the presently-pending
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`claims. Also noteworthy in this press release was the inclusion of IBM and Microsoft as
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`partners (in addition to Symbol) as well as our first/charter POS System partner,
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`Hospitality Solutions International (HSI) — which had already placed a large order for our
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`devices and for our "software wizard" development kit in March 1999, (thus further
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`confirming that a commercially acceptable embodiment of the invention existed at that
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`time) and further establishing reduction to practice of the claimed invention prior to June
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`17, 1999.
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`15. Exhibit 9 is a copy of a May 22, 1999 press release announcing the
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`signing of Ameranth's first hospitality POS partner, Hospitality Solutions International
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`("HSI"), which adopted Ameranth's "wizard" technology and became a strategic partner
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`of Ameranth as discussed above. The following passage from Exhibit 9, inter alia,
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`reflects and further confirms that Ameranth's solution as of this date involved the
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`leveraging of central/master database information for generation of, e.g., menus for
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`display on handheld devices and/or web pages and/or provision of a synchronized
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`solution for hospitality applications between a central/master database, handheld devices
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`and the internet as recited in various of the presently-pending claims:
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`The 21st Century Restaurant System allows for wireless
`automation and integration of all restaurant processes
`including order taking, payment processing, inventory
`control, process control, wait-list management, table
`management, short and long range communications, and a
`host of other applications. Palm-in-hand control increases
`productivity, reduces costs and can dramatically improve
`customer service.
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`16. Exhibit 10 is a copy of a full page color advertisement in the May
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`1999 issue of the leading hospitality publication, Nations Restaurant News, in which
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`Ameranth was advertising its new system to the public. While undated, the inclusion of
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`Ameranth's actual booth number in the advertisement (which is only known shortly
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`before the show) and the invitation for the public to visit Ameranth at that booth number
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`at the NRA show demonstrates that the date of the advertisement was prior to the May
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`22, 1999 NRA show. The following passages from Exhibit 10, inter alia, reflect and
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`further confinn that Ameranth's solution as of this date involved the leveraging of
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`central/master database information for generation of, e.g., menus for display on
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`handheld devices and/or web pages and/or provision of a synchronized solution for
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`hospitality applications between a central/master database, handheld devices and the
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`internet as recited in various of the presently-pending claims:
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`[Y]ou can rely on Ameranth Technology Systems to be the
`Hospitality Industry's one source for advanced wireless and
`e-commerce integration.
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`• Wireless handheld solutions operating on
`Microsoft's Pocket PC Platform
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`• Wireless Local and Wide Area Networks
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`• Customized B2B and consumer e-commerce
`Internet applications
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`• Integration of Legacy Systems and databases
`(including Point of Sale and Back Office Software.)
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`• Wireless technology such as handhelds, phones,
`and pagers.
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`Whether you're a single venue relying on a POS provider
`or a large chain with your own MIS team, Ameranth's
`approach ensures that you will benefit from the latest
`technological innovations without having to worry about
`compatibility or fragmented support.
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`17. Exhibit 11 is a copy of a drawing showing the layout of Ameranth's
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`booth at the May 1999 NRA show. Note that Ameranth maintained the same basic booth
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`configuration as at the FSTEC show of November 1998. However, the artwork was
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`updated to reflect Ameranth's new advertising campaign including the model hired to
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`assist with the advertising campaign referenced in Exhibit 10. The model was actually in
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`Ameranth's booth at the May 1999 show and she operated and assisted with the
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`demonstration of Ameranth's handheld computers to show how easy the solution was
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`when Ameranth's "wizard" invention was included.
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`18. Exhibit 12 is a copy of the updated Ameranth 21st Century
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`RestaurantTM system diagram introduced at the NRA Show in Chicago on May 22, 1999.
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`This diagram was shown within Ameranth's booth and copies were widely distributed.
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`This diagram maintains all of the core elements of the original system diagram (shown at
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`the November 1998 FSTEC show), but depicts them somewhat differently and reflects
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`the use of the new Symbol, Windows CE mobile devices in lieu of the previous
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`generation of mobile hardware devices. The diagram of Exhibit 12 reflects and further
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`confirms that Ameranth's solution as of this date involved the leveraging of
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`central/master database information for generation of, e.g., menus for display on
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`handheld devices and/or web pages and/or provision of a synchronized solution for
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`hospitality applications between a central/master database, handheld devices and the
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`internet as recited in various of the presently-pending claims.
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`19. Exhibit 13 is a copy of an Ameranth wireless handheld product
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`brochure. The product referred to in the brochure was a key element of Ameranth's
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`overall 21st Century Restaurant System and was intended for the newly introduced
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`Symbol Windows CE mobile device. This brochure was first made available at the NRA
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`show on May 22, 1999. Note that while Ameranth had become a software company at
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`this time in 1999 (based on the strategic alliance with Symbol signed in February 1999),
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`Ameranth was responsible for assisting Symbol in making its mobile hardware device the
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`dominant choice in the hospitality market. The following passage from Exhibit 13
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`reflects and further confirms that Ameranth's solution as of this date involved the
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`leveraging of central/master database information for generation ( see "projected" in the
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`quote below) of, e.g., menus for display on handheld devices:
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`For the first time, there is a mobile, handheld computer that
`has the same kind of broad applicability as a PC, allowing
`end-users to use the same device for virtually any
`application. And with Ameranth's Advanced Systems
`Integration, legacy and current generation applications can
`be projected easily from existing DOS, Windows, and NT
`environments into the mobile, wireless, CE environment,
`making it unnecessary to replace existing systems or to
`change systems providers.
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`20. Exhibit 14 is a copy of a publication called "Restaurant Show Daily"
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`from the Chicago, Illinois NRA show in May 1999. In this issue, Ameranth's wireless
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`handhelds were mentioned as one of the most interesting things seen at the show by an
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`actual restaurant customer, and this recognition was made with respect to thousands of
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`different products in a wide range of areas of the hospitality industry. This is another
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`confirmation of the breakthrough aspects of Ameranth's "wizard" inventions.
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`21. Exhibit 15 comprises a copy of a set of photographs from the May
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`1999 NRA show further verifying Ameranth's participation in the show. In the
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`photographs numbered 201 and 202 Dan Drummond of Ameranth is shown along with
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`John Harker of Symbol and an executive from COMTEC. In photograph 226, Kathie
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`Sanders of Ameranth (far left), Keith McNally of Ameranth (third from the right) and
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`four other customers/partners are shown.
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`22. Exhibit 16 is an article from Hospitality Technology magazine dated
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`July/August 1999. Hospitality Technology was a leading publication at the time. The
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`article described the debut of Ameranth's new products and partnerships at the NRA
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`show of May 1999. The photograph at the top, which was taken at the NRA show,
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`includes Keith McNally of Ameranth, Manny Negreiro, President of Ibertech (who had
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`become Ameranth's second POS partner) and Bill Schwartz, President of Foodtrak,
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`another Ameranth partner at the NRA show, as well as Larry Hausman, Publisher of
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`Hospitality Technology magazine. The conclusion of this article referred to the "buzz"
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`that Ameranth received from its exhibits on the floor at the NRA show. This was yet
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`another confirmation of the breakthrough aspects of Ameranth's inventions.
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`23. Exhibit 17 is a copy of a July 15, 1999 press release announcing a
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`strategic partnership between Food.com and Ameranth. This is relevant to the story
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`behind the development of the present invention for several reasons. First, just as
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`Symbol saw Ameranth's "software wizard" technology at the November 1998 FSTEC
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`show and then very rapidly chose to partner with Ameranth, the same thing occurred with
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`Food.com after Food.com representatives saw Ameranth's product demonstrations and
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`displays at the May 1999 NRA show in Chicago. Food.com's selection of Ameranth as
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`its POS integration partner is especially significant because Food.com, previously known
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`as "Cybermeals, Inc.," owned Cupps U.S. Patent No. 5,991,739 (which Ameranth's
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`issued U.S. Patent Nos. 6,384,850; 6,871,325 and 6,982,733 were allowed over).
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`Additionally, this time period was in the middle of the "dot corn" period and companies
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`such as Food.com had unprecedented access to capital. In fact, by this time Food.com
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`had attracted nearly $100 million in investment capital. As such, for such a well-funded
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`company, which was the number one "on line" ordering company in the world at that
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`time, to have determined that it too needed Ameranth's "wizard" technology was yet
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`another confirmation of the breakthrough aspects of the claimed invention.
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`24. Exhibit 18 is a copy of a July 26, 1999 press release announcing the
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`Ibertech/Ameranth strategic partnership. Ibertech was the world's largest supplier of
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`Windows based POS systems at the time, had seen Ameranth's 'wizard' products at the
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`May 1999 NRA show, and thus Ibertech's selection of Ameranth as its wireless partner
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`was yet another confirmation of the breakthrough aspects of the claimed invention.
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`25. Exhibit 19 is a copy of a memorandum which I sent to Ed Rothenberg
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`on August 31, 1999. Mr. Rothenberg was the senior engineering executive for POS
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`systems for Micros Systems, Inc. at the time. He and Micros had also expressed serious
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`interest in partnering with Ameranth after the May 1999 NRA show - as had many other
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`companies as discussed herein. This memo clearly characterized the core inventive
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`aspects of Ameranth's "wizard" technology and what its advantages would be for Micros:
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`[O]ur "Menu Wizard" . . . enables the rapid creation of
`operator screens for the Windows CE Ultrapad.
`Essentially, we have a standard CE POS GUI we make
`available to POS partners, we assist them with importing
` and then
`their existing POS databases into this tool (cid:9)
` a wireless POS application can be
`very quickly (cid:9)
`developed- . . .
`
`We also will provide you our "communications wizard"
`that resides under Windows in the back office . . . that
`accepts incoming wireless messages, and/or internet orders
` and translates and exchanges them
`(i.e. Food.com) (cid:9)
`with the host POS system i.e., Micros . . . even better . . .
`the "Menu Wizard" . . . will create both the Windows CE
`
`and HTML code from the same database inputs (cid:9)
`so that when the "master POS" e.g., you guys changes a
`price and/or POS code and/or product availability status . . .
`the "communications wizard" . . . will update the wireless
` and when you use
`and web status automatically (cid:9)
`our tool to develop the wireless POS equivalent of your
`system . . . . you will really be "killing tow [sic: two] birds
`with one stone" in that the web equivalent will be easy to
`do . . .
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`It is particularly noteworthy that this memorandum included, inter alia, one of the core
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`aspects of the presently pending claims, i.e., the memorandum referred to a "master POS"
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`which controlled the generation of handheld menu "screens" from "existing POS
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`databases." The above-quoted passages from Exhibit 19 reflect and further confirm that
`
`Ameranth's commercially-offered "software wizard" products during this time period
`
`and the preceding 10 months involved the leveraging of central/master database
`
`information for generation of, e.g., menus for display on handheld devices and/or web
`
`pages and/or provision of a synchronized solution for hospitality applications between a
`
`central/master database, handheld devices and the internet as recited in various of the
`
`1183437 vl
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`15
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`

`
`presently-pending claims.
`
`26. Exhibit 20 is a copy of an internal email memorandum dated
`
`September 13, 1999 (provided to Ameranth at that time by the author, Bob Nugent)
`
`reflecting Food.com's internal assessment of the uniqueness of Ameranth's "menu
`
`wizard" technology and shows why even a very large and well funded company such as
`
`Food.com chose to partner with Ameranth. While Mr. Nugent was innately a "non-
`
`technical" person (i.e., he was the marketing person at Food.com), even he came to
`
`appreciate the breakthrough aspects of Ameranth's invention when he stated:
`
`1. Menu Wizard --- this is a tool which digitally constructs
`and updates restaurant menus. This [sic: the] benefits to us
`with this tool would be the following:
`
`a) create and update menus faster with significant
`labor savings
`
`b) lower cost of maintenance (restaurant customers
`will be able to update and change specials
`themselves)
`
`c) exclusive rights to this tool (barrier to entry)
`
`2. Communications Wizard --- this tool creates a standard
`that can be used to integrate with any POS terminal and
`establishes the online ordering protocol.
`
`3. Reservations --- Food.com would have exclusive rights
`to the online reservation system. They would help us
`create a hybrid system that can connect with the POS but
`can also operate through a call center as we establish the
`POS integration.
`
`This was yet another confirmation of the uniqueness of Ameranth's "wizard" technology,
`
`which was first introduced in a working prototype to the public in November 1998 and
`
`continuously commercially refined from that date forward until the constructive reduction
`
`1183437 vl
`
`16
`
`

`
`to practice eight days after this memorandum was written in the form of the filing of
`
`Ameranth's priority patent application.
`
`27. Beginning in or about July 1999, I coordinated with our outside counsel
`
`to prepare a patent application directed to the presently claimed invention. To assist in
`
`preparing the application in a diligent manner, I spoke with outside counsel over the
`
`telephone, provided information used to prepare the application, exchanged information
`
`regarding the application with my co-inventors and worked with counsel to finalize and file
`
`the application. On September 21, 1999, our outside counsel filed the application in the
`
`U.S. Patent and Trademark Office ("USPTO"). My co-inventors and I subsequently
`
`submitted to the USPTO our declarations of inventorship and assignment of our rights in the
`
`invention to our employer. The present application is entitled to priority to the September
`
`21, 1999 application.
`
`28. I hereby declare that all statements made herein of my own knowledge
`
`are true and that all statements made on information and belief are believed to be true; and
`
`further, that these statements are made with the knowledge that willful false statements, and
`
`the like so made are punishable by fine or imprisonment, or both, under Section 1001 of
`
`Title 18 of the United States Code, and that such willful false statements may jeopardize the
`
`validity of the application or any patent issued thereon.
`
`Dated: January 22, 2009
`
`Keith R. McNally
`
`1183437 vl
`
`17
`
`

`
`Exhibit 1
`Exhibit 1
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`Exhibit 2
`
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`Exhibit 3
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`Exhibit 4
`Exhibit 4
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