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. 6,384,850
`
`
`
`PETITION FOR
`COVERED BUSINESS METHOD REVIEW OF
`U.S. PATENT NO. 6,384,850
`
`
`
`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 ’850 Patent is a Covered Business Method Patent ............. 9
`3.
`IDENTIFICATION OF CHALLENGE ............................................. 17
`1.
`Claims Challenged ................................................................... 17
`2.
`The Prior Art ............................................................................ 17
`3.
`Statutory Grounds of Challenges 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 ...... 20
`IV. Overview of the ’850 patent ......................................................................... 20
`A.
`SUMMARY OF THE ’850 PATENT ................................................ 20
`B.
`SUMMARY OF PROSECUTION HISTORY .................................. 24
`C.
`SUMMARY OF CBM2014-00015 PROCEEDING ......................... 26
`
`B.
`
`
`
`-i-
`
`

`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`
`
`D.
`
`E.
`
`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 ’850 PATENT ................... 29
`1.
`The Internet and Web-Based Applications .............................. 29
`2.
`Handheld Computing Devices ................................................. 30
`3.
`Computers in the Hospitality Industry ..................................... 31
`LEVEL OF ORDINARY SKILL IN THE ART ............................... 32
`G.
`IT IS MORE LIKELY THAN NOT THAT THAT AT LEAST ONE
`CLAIM OF THE ’850 PATENT IS UNPATENTABLE ............................ 32
`A.
`INVALIDITY OF THE CHALLENGED CLAIMS UNDER 35
`U.S.C. § 112 [NOT INCLUDED IN THIS PETITION] .................. 32
`INVALIDITY OF THE CHALLENGED CLAIMS FOR
`OBVIOUSNESS UNDER 35 U.S.C. § 103 ....................................... 33
`1.
`Ground 9: The Challenged Claims Are Obvious Over
`Brandt In View of Nethopper .................................................. 33
`Ground 10: The Challenged Claims Are Obvious Over
`Brandt In View Of Demers And Alonso ................................. 53
`C. GROUND 11: INVALIDITY OF THE CHALLENGED
`CLAIMS UNDER 35 U.S.C. § 101 [NOT INCLUDED IN
`THIS PETITION] ............................................................................... 58
`VI. THE GROUNDS OF INVALIDITY ARE NOT REDUNDANT ............... 58
`VII. CONCLUSION ............................................................................................. 59
`
`F.
`
`B.
`
`V.
`
`2.
`
`
`
`-ii-
`
`

`
`
`
`TABLE OF EXHIBITS
`
`EXHIBIT
`
`DESCRIPTION
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`
`
`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”)
`Springer Abstract for Alonso
`
`Library of Congress catalog entry for book containing Alonso
`
`i
`
`

`
`U.S. Patent No. 6,384,850
`Petition For Covered Business Method Review
`
`’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)
`
`Newton MessagePad 2100 User’s Manual (1997)
`
`Nokia 9000i Communicator Owner’s Manual (1997)
`
`Excerpts from Douglas Boling, Programming Microsoft Windows
`CE (1998)
`
`ii
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`
`
`

`
`U.S. Patent No. 6,384,850
`Petition For Covered Business Method Review
`
`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
`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
`
`iii
`
`1031
`
`1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`1037
`
`1038
`
`1039
`
`1040
`
`1041
`
`1042
`
`
`
`

`
`U.S. Patent No. 6,384,850
`Petition For Covered Business Method Review
`
`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)
`CBM2015-00091, Paper 9 (Sept. 14, 2015) – Institution Decision
`
`CBM2014-00015, Paper 36 (March 20, 2015) – Final Written
`Decision
`CBM2015-00080, Paper 13 (Sept. 1, 2015) – Institution Decision
`
`CBM2015-00080, Paper 14 (September 1, 2015) – Scheduling
`Order
`CBM2015-00091, Paper 10 (September 14, 2015) – Scheduling
`
`iv
`
`1043
`
`1044
`
`1045
`
`1046
`
`1047
`
`1048
`
`1049
`
`1050
`
`1051
`
`1052
`
`1053
`
`1054
`
`1055
`
`1056
`
`
`
`

`
`U.S. Patent No. 6,384,850
`Petition For Covered Business Method Review
`
`Order
`
`
`
`v
`
`

`
`U.S. Patent No. 6,384,850
`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 12-16 of U.S. Patent No.
`
`6,384,850 B1 (the “’850 patent,” Ex. 1001), assigned to Ameranth, Inc.
`
`Concurrently with the filing of this Petition, Petitioner submits a Motion for
`
`Joinder with the recently-instituted CBM2015-00091, 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 1052 at 42. 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 ’850 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. 6,384,850
`Petition For Covered Business Method Review
`
`not that at least one of Claims 12-16 of the ’850 patent is not patentable
`
`(“Challenged Claims”) under pre-AIA 35 U.S.C. § 103.
`
`The ’850 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.1001 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 patent application filed by IBM and describes IBM and other
`
`technologies for making applications accessible over the Internet including to
`
`wireless handheld devices. The IBM prior art covers hospitality applications – 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. 6,384,850
`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 ’850 patent in CBM2014-00015 under 35
`
`U.S.C. §§ 101 and 112. The Board invalidated claims 1-11 of the ’850 patent
`
`under the § 101 grounds. Ex. 1053 at 29.
`
`Petitioner also previously sought CBM review of claims 12-16 of the ’850
`
`patent under 35 U.S.C. § 103 in CBM2015-00080 on the basis of prior art that is
`
`distinct from the prior art relied on in this Petition. Trial was instituted in
`
`CBM2015-00080 on September 1, 2015 and is ongoing. Ex.l 1054. In a
`
`separately filed petition in CBM 2015-00096, the following parties sought CBM
`
`review of claims 12-16 of the ’850 patent on the same grounds raised in
`
`CBM2015-00080: 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 2015-00096 and was joined with CBM2015-00081. Id.
`
`
`
`3
`
`

`
`U.S. Patent No. 6,384,850
`Petition For Covered Business Method Review
`
`On September 14, 2015, the Board instituted CBM review of claims 12-16
`
`of the ’850 patent in Case No. CBM2015-00091, based upon a petition filed by
`
`Starbucks. Ex. 1052 at 42. This petition intentionally presents identical grounds to
`
`those instituted in CBM2015-00091. Id. This petition excludes the grounds that
`
`were not instituted in CBM2015-00091, and presents no new or additional grounds
`
`of unpatentability. Id. In addition, Petitioner seeks joinder with CBM2015-00091
`
`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 ’850 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. 6,384,850
`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. 6,384,850
`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 CBM2015-00080,
`
`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. 6,384,850
`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 to the Patent Owner’s attorney of record at the address
`
`listed in the USPTO’s records by overnight courier 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 ’850
`
`patent is a covered business method patent under AIA §§ 18(a)(1)(B) and 18(d)(1)
`
`
`
`7
`
`

`
`U.S. Patent No. 6,384,850
`Petition For Covered Business Method Review
`
`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 ’850 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 ’850
`
`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 ’850 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-
`
`00015 by this Petitioner was instituted for trial only as to Claims 1-11 of the ’850
`
`patent (Ex. 1048), whereas this Petition challenges Claims 12-16. Accordingly,
`
`CBM2014-00015 did not result in a final written decision on the Challenged
`
`Claims in this Petition.
`
`
`
`8
`
`

`
`U.S. Patent No. 6,384,850
`Petition For Covered Business Method Review
`
`In addition, while Case No. CBM2015-00080 by this Petitioner was
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`instituted for trial on the Challenged Claims, it has not resulted in a final written
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`decision. Rather, CBM2015-00080 is set for oral hearing on the same date as
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`CBM2015-00091. Ex. 1055 at 6 (setting oral argument for May 10, 2016; Ex. 1056
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`at 6 (same). Should this Petition be granted, Petitioner will request that any final
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`written decision in CBM2015-00080 be coordinated with these proceedings to
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`avoid any possibility of estoppel.
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`Furthermore, Petitioner filed this Petition and accompanying Motion for
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`Joinder with CBM2015-00091 “no later than one month after the institution date of
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`any post-grant review for which joinder is requested..” See 37 C.F.R. § 42.222(b).
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`The ’850 Patent is a Covered Business Method Patent
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`3.
`The ’850 patent is eligible for CBM review because it constitutes a covered
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`business method patent as defined under AIA § 18(d)(1) and 37 C.F.R. § 42.301.
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`A “covered business method patent” is a patent that “claims a method or
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`corresponding apparatus for performing data processing or other operations used in
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`the practice, administration or management of a financial product or service,
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`except that the terms does not include patents for technological inventions.” AIA §
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`18(d)(1). This definition encompasses patents “claiming activities that are
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`financial in nature, incidental to a financial activity or complementary to a
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`financial activity.” Final Rule, 77 Fed. Reg. 48,734, 48,735 (Aug. 14, 2012). A
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`9
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`U.S. Patent No. 6,384,850
`Petition For Covered Business Method Review
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`single claim directed toward a covered business method makes every claim of the
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`patent eligible for CBM review. Id. at 48,736.
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`As explained below, because at least Claim 1 (not challenged in this
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`Petition) and challenged Claim 12 establish that the ’850 patent satisfies the
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`Covered Business Method Patent definition under Section 18(d)(1) of the AIA, all
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`claims of the ’850 patent, including Claims 12-16 that are challenged in this
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`Petition, are eligible for CBM review.
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`Business Method
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`Service
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`a.
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`Claim 1 Establishes that the ’850 Patent is a Covered
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`(1) Claim 1 Relates to a Financial Product or
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`As the Board previously found in CBM2014-00015, Claim 1 of the ’850
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`patent is directed to an apparatus that corresponds to an activity that is at least
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`incidental or complementary to an activity financial in nature and the claim
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`therefore meets the “financial product or service” components under the definition
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`in Section 18(d)(1) of the AIA. See Ex. 1048 at 9-14. Specifically, Claim 1 is
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`directed to a “system for generating and transmitting menus.” Ex. 1001 at 14:48-
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`49. Claim 2 recites that the menu is a “restaurant menu,” which is for ordering and
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`purchasing food offered by a restaurant. Id. at 15:12-14. The ’850 patent
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`specification states that the claimed menus are used for ordering and purchasing of
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`food and merchandise. Id. at 3:43-52; 14:13-17; 14:23-26. The specification
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`10
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`U.S. Patent No. 6,384,850
`Petition For Covered Business Method Review
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`describes the use of the claimed invention to facilitate ordering and purchasing
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`merchandise over the Internet: “The user may select multiple items in this manner
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`and then enter a credit card number to pay for the purchases. The retailer
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`processes the transaction and ships the order to the customer. As can be
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`appreciated, ordering merchandise can also be done from menus. The generation
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`of menus of items or merchandise for sale over the internet is readily accomplished
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`by the menu generation approach of the present invention.” Id. at 12:58-65.
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`Menus are generated and downloaded to point-of-sale (POS) terminals. Id. at
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`6:22-25, 10:14-33. The ’850 patent further describes the generation of menus for
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`“remote ordering” and purchasing. Id. at 14:13-29.
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`In view of the above, the system for generating and transmitting menus
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`recited in Claim 1 is for facilitating ordering and purchasing at restaurants and other
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`hospitality establishments, and ordering and purchasing of other merchandise using
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`menus. The ordering and purchasing of food and other merchandise generates
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`revenue. Ex. 1048 at 11 (“Menus are used in ordering, which pertains to the sale
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`of a product, which generates revenue.”). Such revenue generation is clearly
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`“financial in nature, incidental to a financial activity or complementary to a
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`financial activity.” Id.at 10-11. Therefore, the subject matter of Claim 1 satisfies
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`the first requirement of AIA § 18(d)(1). Id. at 11.
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`11
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`

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`U.S. Patent No. 6,384,850
`Petition For Covered Business Method Review
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`(2) Claim 1 Does Not Recite a “Technological
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`Invention”
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`Claim 1 of the ’850 patent does not fit within the exception to a covered
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`business method patent review because the claimed subject matter as a whole is not
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`directed toward a technological invention. To qualify as a technological invention,
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`the claimed subject matter as a whole must (1) recite a technological feature that is
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`novel and unobvious over the prior art, and (2) solve a technical problem using a
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`technical solution. 37 C.F.R. § 42.301(b). In the CBM2014-00015 proceeding, the
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`Board correctly found that neither prong applies to Claim 1 of the ’850 patent. Ex.
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`1048 at 14.
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`Claim 1 fails under the first prong because it does not recite a novel or
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`unobvious technological feature. Id. at 13. The claim merely recites known
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`technologies to achieve normal, expected, and predictable results. Id. at 12-13;
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,763-64 (Aug. 14,
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`2012). Claim 1 recites a CPU, a data storage device, an operating system including
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`a graphical user interface (“GUI”), and application software. Ex. 1001 at 14:48-
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`15:11. The recited software enables a user to generate a menu using the GUI and
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`then transmit it. Id.; Ex. 1048 at 12. The specification acknowledges that GUI-
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`based applications for manipulating data items are conventional. Ex. 1001 at 4:59-
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`5:32, 5:55-63. The specification suggests the use of off-the-shelf software such as a
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`
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`12
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`U.S. Patent No. 6,384,850
`Petition For Covered Business Method Review
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`Windows operating system on the workstations and server (id. at 5:44-54),
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`Windows CE on the handheld devices (id. at 10:63-11:3), and Microsoft’s ActiveX
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`Data Objects API for database access (id. at 10:34-39). To the extent any custom
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`software is required, the ’850 patent specification states that the software is
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`generic: “The software applications for performing the functions falling within the
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`described invention can be written in any commonly used computer language. The
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`discrete programming steps are commonly known and thus programming details
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`are not necessary to a full description of the invention.” Id. at 11:43-48 (emphasis
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`added). Therefore, Claim 1 recites a known combination of known prior art
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`components or features and does not recite a technological feature that is novel and
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`unobvious over the prior art.
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`Claim 1 also fails under the second prong of the “technological invention”
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`test because the claimed subject matter as a whole does not solve a technical
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`problem using a technical solution. Far from solving a technical problem, Claim 1
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`is directed to a system for generating and transmitting menus to solve a business
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`problem. The claimed system purportedly “solv[es] the problem of converting
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`paper-based menus or Windows® PC-based menu screens to small PDA-sized
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`displays and Web pages” (id. at 3:32-35) and thus “provides a way to turn a
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`complicated, time-consuming task into a simple process” (id. at 3:52-58). As
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`discussed above, to the extent Claim 1 recites any technological limitations, they
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`13
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`U.S. Patent No. 6,384,850
`Petition For Covered Business Method Review
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`were all well-known in the prior art. Therefore, Claim 1 does not provide a
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`technical solution to solve a technical problem.
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`In view of the above, Claim 1 fails both requirements for a “technological
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`invention” and is a covered business method patent claim under AIA § 18(d)(1).
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`Business Method
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`Service
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`b.
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`Claim 12 Establishes that the ’850 Patent is a Covered
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`(1) Claim 12 Relates to a Financial Product or
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`Claim 12 of the ’850 patent meets the “financial product or service” aspect
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`of the CBM definition. Claim 12 is directed to “an information management and
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`synchronous communications system for use with wireless handheld computing
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`devices and the internet” for computerizing hospitality activities such as ordering
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`food for purchase.1 Ex. 1001 at 1:33-37 (until now, no “information management
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`and communication capability” for use in “restaurant ordering”); 2:33-36
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`(“paper- based ordering” has “persisted in the face of widespread
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`computerization”).
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`Claim 12 recites “hospitality applications” six times. Id. at 16:1-22. The
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`1 This is also confirmed by the ’325 patent, a continuation of the ’850 patent, which
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`claims the identical system recited by Claim 12 of the ’850 patent and adds
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`“wherein the synchronized data relates to orders.” Ex. 1002 at 17:4-26 (Claim 11).
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`14
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`U.S. Patent No. 6,384,850
`Petition For Covered Business Method Review
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`primary hospitality applications in the ’850 patent are for ordering and purchasing.
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`Id. at 3:43-46 (wireless handhelds enable “shorter order taking and check paying
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`times”); 12:1-4 (“A further aspect of the invention is the use of the menus ... to
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`place orders from wireless remote handheld devices or from remote locations
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`through the internet.”); 12:41-43 (“The hyperlink methodology is contemplated for
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`use in accordance with the preferred embodiment to transmit orders via the
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`internet.”); 14:13-17 (“[T]he synchronous communication aspect of the invention”
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`is “equally applicable to table-based, drive-thru, internet, telephone, wireless or
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`other modes of customer order entry.”); id. at 3:40-58, 12:41-61.
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`Ordering is part of the purchasing process which generates revenue. Ex.
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`1048 at 11 (“[O]rdering ... pertains to the sale of a product, which generates
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`revenue.”). Such revenue generation is clearly “financial in nature, incidental to a
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`financial activity or complementary to a financial activity.”
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`Thus, Claim 12 satisfies the first requirement of the CBM definition.
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`Invention”
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`(2) Claim 12 Does Not Recite a “Technological
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`The technological invention exception does not apply to Claim 12. The
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`claim does not recite a novel and unobvious technological