UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC., EVENTBRITE, INC. and STARWOOD HOTELS & RESORTS
`WORLDWIDE, INC.
`Petitioner
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`v.
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`AMERANTH, INC.
`Patent Owner
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`CASE: To Be Assigned
`Patent No. 6,384,850 B1
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`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF PETITION FOR
`COVERED BUSINESS METHOD PATENT
`REVIEW OF U.S. PATENT NO. 6,384,850 B1
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`
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`
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`Apple Inc. Exhibit 1003
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`

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`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,384,850 B1
`
`TABLE OF CONTENTS
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`
`Introduction ..................................................................................................... 1
`I.
`Summary of Opinions ..................................................................................... 3
`II.
`III. Qualifications and Experience ........................................................................ 5
`A.
`Education and Experience .................................................................... 5
`B.
`Compensation ..................................................................................... 12
`C. Documents and Other Materials Relied Upon ................................... 12
`IV. Statement of Legal Principles ....................................................................... 13
`A.
`Claim Construction ............................................................................ 13
`B. Anticipation ........................................................................................ 13
`C. Obviousness ........................................................................................ 14
`D.
`The Written Description Requirement ............................................... 14
`E.
`The Enablement Requirement ............................................................ 15
`F.
`The Definiteness Requirement ........................................................... 16
`G.
`Patent-Eligible Subject Matter ........................................................... 16
`V. Overview of the ’850 Patent ......................................................................... 16
`A.
`Summary of the ’850 Patent ............................................................... 16
`B.
`State of the Art Prior to the ’850 Patent ............................................. 22
`1.
`The Internet and Web-Based Applications .............................. 22
`2.
`Handheld Computing Devices ................................................. 24
`3.
`Computer Technology in the Hospitality Industry .................. 31
`The Level of Ordinary Skill in the Art ............................................... 35
`C.
`Identification of the Prior Art and Summary of Opinions............................ 37
`VI.
`VII. Claim Construction ....................................................................................... 38
`VIII. Unpatentability of the Challenged Claims of the ’850 Patent ...................... 39
`A. Grounds 1 – 8: Invalidity under § 112 ............................................... 39
`1.
`The “Hospitality Applications and Data” Limitations ............. 40
`2.
`The “Communications Control Module” Limitations ............. 48
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`- i -
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`Apple Inc. Exhibit 1003
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`

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`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,384,850 B1
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`3.
`
`4.
`
`Ground 7: The Claims Are Invalid for Lack of
`Enablement Because the Specification Fails to Disclose
`the “Software Libraries” that Supposedly Enable the
`Claimed Subject Matter ........................................................... 58
`Ground 8: The Challenged Claims are Invalid for Lack of
`Enablement Because Each of the Challenged Claims, as a
`Whole, is not Enabled .............................................................. 59
`B. Grounds 9 & 10: Invalidity under pre-AIA § 103(a) ......................... 60
`1.
`Ground 9: The Challenged Claims are Obvious Over
`Brandt in View of NetHopper .................................................. 60
`Ground 10: The Challenged Claims are Obvious Over
`Brandt in View of Demers and Alonso .................................. 117
`C. Ground 11: The Challenged Claims are Patent-Ineligible under
`§ 101 ................................................................................................. 122
`IX. Conclusion .................................................................................................. 130
`
`
`2.
`
`- ii -
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`Apple Inc. Exhibit 1003
`
`

`
`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,384,850 B1
`
`I.
`
`INTRODUCTION
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`1. My name is Abdelsalam Helal. I am a Professor in the Computer and
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`Information Science and Engineering Department at the University of Florida
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`(1998 – present), and a Finland Distinguished Professor at Aalto University,
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`Finland (2011-2013).
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`2.
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`I have been engaged by counsel for Apple Inc., EventBrite, Inc. and
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`Starwood Hotels & Resorts Worldwide, Inc. (collectively, “Petitioner”) as a
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`consultant in connection with Petitioner’s Petition for Covered Business Method
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`Review (“Apple CBM Petition”) of U.S. Patent No. 6,384,850 B1 (the “’850
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`patent” ). I previously submitted a declaration in connection with a petition for
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`Covered Business Method Review of the ’850 patent submitted by Starbucks
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`Corporation (“Starbucks”) in Case No. CBM2015-00091 (“Starbucks CBM
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`Petition”).
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`3.
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`I have been informed by counsel for Petitioner that the Apple CBM
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`Petition seeks CBM review on Grounds identical to those instituted by the Board in
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`CBM2015-00091. Counsel for Petitioner further informed me that Petitioner is
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`concurrently submitting a motion for joinder to join the Apple CBM Petition with
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`CBM2015-00091. I am further informed that in order to facilitate joinder and
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`simplify issues before the Board, the Apple CBM Petition intentionally includes
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`virtually identical invalidity analyses as the Starbucks CBM Petition.
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`- 1 -
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`Apple Inc. Exhibit 1003
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`

`
`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,384,850 B1
`
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`4.
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`I have been asked to review my prior declaration submitted with the
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`Starbucks CBM Petition to determine whether any of opinions and analyses
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`relating to the validity of the ’850 patent have changed. Because my analyses and
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`opinions have not changed in material respects, I have reproduced below
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`substantially the same declaration I submitted in connection with the Starbucks
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`CBM Petition.
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`5.
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`I understand that the ’850 patent has been assigned to Ameranth, Inc.
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`(“Ameranth”). Ameranth is also referred to as the “Patent Owner” in this
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`declaration.
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`6.
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`This declaration is based on the information currently available to me.
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`To the extent that additional information becomes available, I reserve the right to
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`continue my investigation and study, which may include a review of documents
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`and information that may be produced, as well as testimony from depositions that
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`not yet been taken.
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`7.
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`In forming my opinions, I have relied on information and evidence
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`identified in this declaration, including the ’850 patent, the prosecution history of
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`the ’850 patent, and prior art references including Japanese Published Appl. No.
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`H10-247183 (“Brandt”), NetHopper Version 3.2 User’s Manual (“NetHopper”),
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`Alan Demers et al., The Bayou Architecture: Support for Data Sharing Among
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`Mobile Users (1995) (“Demers”), Gustavo Alonso et al, Exotica/FMDC: A
`
`- 2 -
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`Apple Inc. Exhibit 1003
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`

`
`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,384,850 B1
`
`Workflow Management System for Mobile and Disconnected Clients (1996)
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`(“Alonso”), listed as exhibits to the Apple CBM Petition on the ’850 patent. I have
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`also relied on my own experience and expertise in the relevant technologies and
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`systems that were already in use prior to, and within the timeframe of the earliest
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`priority date of the claimed subject matter in the ’850 patent—September 21, 1999.
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`II.
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`SUMMARY OF OPINIONS
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`8.
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`The ’850 patent relates to “an information management and
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`synchronous communications system and method [that] facilitates database
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`equilibrium and synchronization with wired, wireless, and Web-based systems” for
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`computerizing hospitality-related activities such as ordering food and making
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`reservations. Ex. 1001 at Abstract, 1:59-2:32 and 3:59-4:23. The ’850 patent
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`purports to describe an inventive system that enables synchronization of hospitality
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`applications and data between a central database, a web page, and a handheld
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`wireless device. Ex. 1001 at 3:59-4:23, 11:7-42 and 16:1-47. The ’850 patent also
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`purports to describe an information management and synchronous communications
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`system for generating and transmitting menus. Ex. 1001 at 3:8-58, 5:17-9:20,
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`12:1-15:49).
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`9.
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`Claims 12-16 of the ’850 patent are challenged by the Apple CBM
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`Petition and each recite “[a]n information management and synchronous
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`communications system for use with wireless handheld computing devices and the
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`- 3 -
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`Apple Inc. Exhibit 1003
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`

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`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,384,850 B1
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`internet.” Each claimed system includes a central database, a wireless handheld
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`device, a web server, a web page, and application program interface, and a
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`communication control module. The claims further recite certain features
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`associated with these system components.
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`10.
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`It is my opinion that each of Claims 12-16 of the ’850 patent is invalid
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`for lack of enablement under the patentability standard of pre-AIA 35 U.S.C. §
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`112, ¶ 1 explained to me by Starbucks’ counsel as stated below.
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`11.
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`It is my opinion that each of Claims 12-16 of the ’850 patent is invalid
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`for being indefinite under the patentability standard of pre-AIA 35 U.S.C. § 112,
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`¶ 2 explained to me by Starbucks’ counsel as stated below.
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`12.
`
`It is my opinion that each of Claims 12-16 of the ’850 patent is invalid
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`for lack of written description under the patentability standard of pre-AIA 35
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`U.S.C. § 112, ¶ 1 explained to me by Starbucks’ counsel as stated below.
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`13. The components of the systems recited in Claims 12-16 of the ’850
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`patent are generic computer components based on technologies that were well
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`known before the earliest priority date of the ’850 patent. Further, the recited
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`functions associated with the claimed components were also well known before the
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`earliest priority date of the ’850 patent. None of the features described in Claims
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`12-16 of the ’850 patent was novel as of the earliest priority date, nor does the ’850
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`patent teach a novel and non-obvious way of combining the known features.
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`- 4 -
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`Apple Inc. Exhibit 1003
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`

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`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,384,850 B1
`
`
`14.
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`It is my opinion that each of Claims 12-16 of the ’850 patent is invalid
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`for being obvious under the patentability standards of 35 U.S.C. §§ 102 and 103
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`explained to me by Starbucks counsel as stated below.
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`15.
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`It is my opinion that each of Claims 12-16 of the ’850 patent recites
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`only generic computer implementation for computerizing hospitality activities such
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`as ordering and making reservations.
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`16. The subsequent sections of this declaration will first provide my
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`qualifications and experience and then describe the details of my analysis and
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`observations.
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`III. QUALIFICATIONS AND EXPERIENCE
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`A. Education and Experience
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`17.
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`I obtained my Ph.D. degree in Computer Sciences from Purdue
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`University, West Lafayette, Indiana, in 1991. During my studies at Purdue I was
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`supported by two competitive and prestigious fellowships: a Purdue University
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`Foundation Fellowship and a David Ross Graduate Fellowship.
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`18. My doctoral dissertation research focused on Replication
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`Management in Distributed Systems. Synchronizing replicas of the same data
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`(keeping replicas in sync) despite computer system or networking failures was part
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`of the research contribution of my dissertation.
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`19.
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`I have a strong background in computer systems, especially in
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`- 5 -
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`Apple Inc. Exhibit 1003
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`

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`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,384,850 B1
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`distributed systems with or without replicated data. I also have a strong
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`background in mobile computing and extended distributed systems which employ
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`both fixed and wireless networks as well as fixed and mobile computers.
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`20.
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`I authored or co-authored over 260 refereed and non-refereed
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`publications including Books, Book Chapters, Journal articles, and Conference and
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`Workshop papers. A list of my publications can be found in the detailed
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`curriculum vitae attached to this declaration as Appendix A.
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`21.
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`In 1996, I authored and published: A. Helal, A. Heddaya, and B.
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`Bhargava, "Replication Techniques in Distributed Systems," Kluwer Academic
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`Publishers (now Springer). ISBN 0-7923-9800-9. The book presents a
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`comprehensive body of knowledge of then available and known techniques,
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`methods and protocols to achieve consistency and synchronization of replicated
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`data, objects and processes. This book was the first to be published on this topic.
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`To date, it remains as an authoritative reference on the subject of replication
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`management in distributed systems. The book was endorsed with a special
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`Foreword by the late Dr. Jim Gray. Dr. Gray is a world-famous American
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`computer scientist who received the A.M. Turing Award in 1998 “for seminal
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`contributions to database and transaction processing research and technical
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`leadership in system implementation.” There are only 31 people in the world who
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`ever received the honor of the A.M Turning Award.
`
`- 6 -
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`Apple Inc. Exhibit 1003
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`

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`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,384,850 B1
`
`
`22.
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`I have also authored and published several other books, including: A.
`
`Helal, B. Haskell, J. Carter, R. Brice, D. Woelk, and M. Rusinkiewicz, "Any Time
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`Anywhere Computing: Mobile Computing Concepts and Technology," Kluwer
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`Academic Publishers. ISBN 0-7923-8610-8, Published October 1999, and A.
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`Cichocki, A. Helal, M. Rusinkiewicz, and D. Woelk, "Workflow and Process
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`Automation: Concepts and Technology," Kluwer Academic Publishers. ISBN 0-
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`7923-8099-1, Published November 1997.
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`23.
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`I am the sole or joint inventor on 9 issued U.S. patents which are
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`included in my curriculum vitae attached to this declaration. See Appendix A.
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`24.
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`I am well recognized as a scholar and leader in my research
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`community for my novel research contributions in distributed, mobile and
`
`pervasive computing. As a recognized leader, I was asked and trusted to organize
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`26 conferences or workshops, mostly IEEE and ACM (Association for Computing
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`Machinery), in the capacity of Program Chair or Co-Chair, or General Chair or Co-
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`Chair. I organized and chaired both the ACM Ubicomp conference (in 2009) and
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`the ACM MobiCom conference (in 2013). Ubicomp and MobiCom are the
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`premier International conferences on Ubiquitous Computing
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`(http://www.ubicomp.org/ubicomp2009/) and Mobile Computing
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`(http://www.sigmobile.org/mobicom/2013/), respectively. The keynote speakers
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`whom I invited to the MobiCom conference, in 2013 included the CTO of Nokia,
`
`- 7 -
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`Apple Inc. Exhibit 1003
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`

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`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,384,850 B1
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`and Cisco’s VP for Research, leaders in wireless communications and networks.
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`25.
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`I am the Editor-in-Chief of IEEE Computer – the flagship publication
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`of the IEEE Computer Society. The IEEE and IEEE Computer Society are among
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`a few most prestigious engineering and computer science professional societies
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`world-wide. I have also been an Associate Editor-in-Chief for Computer since
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`2009. I also was one of the 25 initial co-founders and editorial board members of
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`IEEE Pervasive Computing. I lately served as Associate Editor-in-Chief of
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`Pervasive Computing. I also served or serving on other editorial boards of
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`numerous journals and IEEE transactions.
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`26.
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`I am a Fellow of the IEEE. I have been recognized for my
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`contributions to the advancement of Mobile and Pervasive Computing Systems.
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`The IEEE Grade of Fellow is conferred by the IEEE Board of Directors upon a
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`person with an outstanding record of accomplishments in any of the IEEE fields of
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`interest. The total number selected in any one year cannot exceed one-tenth of
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`one- percent of the total voting membership (400,000 members in 160 countries).
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`IEEE Fellow is the highest grade of membership and is recognized by the technical
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`community as a prestigious honor and an important career achievement. The IEEE
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`is the world’s leading professional association for advancing technology for
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`humanity. Dedicated to the advancement of technology, the IEEE publishes 30
`
`percent of the world’s literature in the electrical and electronics engineering and
`
`- 8 -
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`Apple Inc. Exhibit 1003
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`

`
`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,384,850 B1
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`computer science fields, and has developed more than 900 active industry
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`standards. The association also sponsors or co-sponsors nearly 400 international
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`technical conferences each year.
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`27.
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`I have advised and graduated 19 Ph.D. students and 57 Masters
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`students (all with thesis option). One of the Masters students whom I advised in
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`2000-2001 at the University of Florida, Mr. Rajanikanth Kanyaboina, worked on
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`research and development of a computerized restaurant system. Mr. Kanyaboina
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`defended his thesis titled “e-Staurant: A Software Infrastructure for restaurant
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`management,” in the Summer term of 2001.
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`28. My research on Mobile and Pervasive Computing and its emerging
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`applications received substantial local, national and international media coverage.
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`This includes the New York Times (2002), the Robb Report (2004), the Orlando
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`Sentinel (2004), the Chicago Tribune (2004), the MIT Technology Review (2006),
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`the Discovery Channel Beyond Tomorrow show (2006), the Washington Post
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`(2007), IBM Press room (2007), the Florida Trend magazine (cover story) 2010,
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`Der Standard, Austria (2011) and Die Presse, Austria (2011). Details of media
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`coverage for my research can be found in my curriculum vitae attached to this
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`declaration. See Appendix A.
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`29. From 1991-1994, I was a tenure track assistant professor at the
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`University of Texas at Arlington (UTA), Arlington, Texas. While at UTA, I taught
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`- 9 -
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`Apple Inc. Exhibit 1003
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`

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`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,384,850 B1
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`computer science classes including distributed database systems and operating
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`systems. I also worked on research addressing database performance and
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`availability.
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`30. From 1994-1995, I was a visiting assistant professor at Purdue
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`University, West Lafayette, IN, teaching operating systems and programming
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`languages, and conducting research on mobile databases.
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`31. From 1996-1998, I worked as a senior member of the technical staff at
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`Microelectronics and Computer Corporation of America (MCC), Austin, Texas. I
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`spearheaded research in mobile computing and networking benchmarking. I was
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`also involved in research on agent based information integration using semantic
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`web technology.
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`32. From 1998-present, I had been an associate professor, then since
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`2004, a full professor at the University of Florida (UF), Gainesville, Florida. I
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`have also been a director of the mobile and pervasive computing research lab since
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`2000. At UF, I taught operating systems, distributed databases, mobile platform
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`developments, mobile computing and pervasive computing. I have worked on
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`research in mobile transactions, mobile databases, mobile ad-hoc collaboration, in
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`addition to several other research areas.
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`33.
`
`In 2002, I founded Phoneomena, Inc., then a Florida C corporation in
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`Gainesville, Florida. I served as the company’s CEO and Chairman of the Board.
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`- 10 -
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`Apple Inc. Exhibit 1003
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`

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`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,384,850 B1
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`Phoneomena specialized in mobile middleware and applications on platforms such
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`as Windows CE, BREW and J2ME. The major middleware product was
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`xPhoneApp – a product that syncs between an enterprise network server and a
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`plurality of mobile devices, each with the xPhoneApp client installed.
`
`34.
`
`In 2006, I founded Pervasa, Inc., then a Florida C corporation in
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`Gainesville, Florida. I served as the company’s President. Pervasa specialized in
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`device integration middleware based on technology licensed from the University of
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`Florida. The UF technology was invented by myself and several of my students.
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`The main product of Pervasa was the Atlas sensor platform and middleware.
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`Pervasa won the Silver Best of SensorExpo award in the SensorExpo trade show
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`that was held outside Chicago, IL in June 2007 (largest trade show on sensor
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`technology).
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`35. From 2011-2014, I have been awarded a Finland Distinguished
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`Professorship (known as FiDiPro) from Tekes, the Finnish research agency. Only
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`a handful of international scholars from all fields of science and engineering are
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`awarded FiDiPro annually. While a FiDiPro professor (concurrent with my
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`appointment as a UF professor), I worked with a large team of researchers from
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`Aalto University and University of Helsinki to develop the concept of smart
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`spaces. A culmination of our research is the smart space architecture and open
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`source software maintained at www.spaceify.org
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`- 11 -
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`Apple Inc. Exhibit 1003
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`

`
`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,384,850 B1
`
`
`B. Compensation
`
`36.
`
`I am being compensated by Petitioner for my work in connection with
`
`this declaration. The compensation is not contingent upon my performance, the
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`outcome of the covered business method reviews or any other proceeding, or any
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`issues involved in or related to the covered business method reviews.
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`C. Documents and Other Materials Relied Upon
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`37. The documents on which I rely for the opinions expressed in this
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`declaration are documents and materials identified in this declaration, including the
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`’850 patent and its prosecution history, the prior art references and background
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`materials discussed in this declaration, and any other references specifically
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`identified in this declaration, in their entirety, even if only portions of these
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`documents are discussed here in an exemplary fashion.
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`38. The prior art references I have reviewed include the following:
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`Japanese Published Appl. No. H10-247183 (“Brandt”) (Ex. 1004) including a
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`certified English translation of the Brandt (Ex. 1005), NetHopper Version 3.2
`
`User’s Guide (“NetHopper”) (Ex. 1006), Alan Demers et al., The Bayou
`
`Architecture: Support for Data Sharing Among Mobile Users (1995) (“Demers”)
`
`(Ex. 1009), Gustavo Alonso et al., Exotica/FMDC: A Workflow Management
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`System for Mobile and Disconnected Clients (1996) (“Alonso”) (Ex. 1012).
`
`- 12 -
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`Apple Inc. Exhibit 1003
`
`

`
`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,384,850 B1
`
`
`39.
`
`I have also relied on my own experience and expertise in the relevant
`
`technologies that were in use prior to and at the time the ’850 patent application
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`was filed in September 1999.
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`40. All Exhibit numbers used in this declaration refer to Exhibits to the
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`Apple CBM Petition.
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`IV. STATEMENT OF LEGAL PRINCIPLES
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`A. Claim Construction
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`41. Starbucks’ counsel has advised that, when construing claim terms in
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`an unexpired patent, a claim subject to covered business method patent review
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`receives the “broadest reasonable construction in light of the specification of the
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`patent in which it appears.” Starbucks’ counsel has further informed me that the
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`broadest reasonable construction is the broadest reasonable interpretation (BRI) of
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`the claim language, and that any term that lacks a definition in the specification is
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`also given a broad interpretation.
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`B. Anticipation
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`42. Starbucks’ counsel has advised that in order for a patent claim to be
`
`valid, the claimed invention must be novel. Starbucks’ counsel has further advised
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`that if each and every element of a claim is disclosed in a single prior art reference,
`
`then the claimed invention is anticipated, and the invention is not patentable
`
`according to pre-AIA 35 U.S.C. § 102 effective before March 16, 2013. In order
`
`- 13 -
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`Apple Inc. Exhibit 1003
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`

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`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,384,850 B1
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`for the invention to be anticipated, all of the elements and limitations of the claim
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`must be shown in a single prior art reference, arranged as in the claim. A claim is
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`anticipated only if each and every element as set forth in the claim is found, either
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`expressly or inherently described, in a single prior art reference. In order for a
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`reference to inherently disclose a limitation, that claim limitation must necessarily
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`be present in the reference.
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`C. Obviousness
`
`43. Starbucks’ counsel has also advised me that obviousness under pre-
`
`AIA 35 U.S.C. § 103 effective before March 16, 2013 is a basis for invalidity. I
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`understand that where a prior art reference does not disclose all of the limitations
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`of a given patent claim, that patent claim is invalid if the differences between the
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`claimed subject matter and the prior art reference are such that the claimed subject
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`matter as a whole would have been obvious at the time the invention was made to a
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`person having ordinary skill in the art. Obviousness can be based on a single prior
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`art reference or a combination of references that either expressly or inherently
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`disclose all limitations of the claimed invention.
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`D. The Written Description Requirement
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`44. Starbucks’ counsel has advised that there is a written description
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`requirement under pre-AIA 35 U.S.C. § 112, ¶ 1 effective before March 16, 2013.
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`A patent specification “shall contain a written description of the invention, and of
`
`- 14 -
`
`Apple Inc. Exhibit 1003
`
`

`
`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,384,850 B1
`
`the manner and process of making and using it, in such full, clear, concise, and
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`exact terms as to enable any person skilled in the art to which it pertains, or with
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`which it is most nearly connected, to make and use the same.” Starbucks’ counsel
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`has further advised that the test for sufficiency of the written description is whether
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`the disclosure in the specification reasonably conveys to those skilled in the art that
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`the inventors had “possession” of the claimed subject matter as of the filing date. I
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`understand that “possession” must be demonstrated by the material within the four
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`corners of the specification. In other words, the specification must describe an
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`invention understandable to a person of ordinary skill in the art and show that the
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`inventor actually invented what is claimed.
`
`E.
`
`The Enablement Requirement
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`45. Starbucks’ counsel has advised that there is also an enablement
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`requirement under pre-AIA 35 U.S.C. § 112, ¶ 1 effective before March 16, 2013.
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`To satisfy the enablement requirement, the specification must teach those skilled in
`
`the art how to make and use the full scope of the claimed invention without undue
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`experimentation. I understand that the specification need not disclose what is well
`
`known in the art, but that this does not excuse the applicants from providing a
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`basic disclosure of how to make and use the claimed invention.
`
`- 15 -
`
`Apple Inc. Exhibit 1003
`
`

`
`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,384,850 B1
`
`
`F.
`
`The Definiteness Requirement
`
`46. Starbucks’ counsel has advised that there is a definiteness requirement
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`under pre-AIA 35 U.S.C. § 112, ¶ 2 effective before March 16, 2013. I understand
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`that claims are required to particularly point out and distinctly claim the subject
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`matter which the applicants regard as their invention. I understand that a claim is
`
`invalid for indefiniteness if the claim, read in light of the specification and the
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`prosecution history, fails to inform, with reasonable certainty, those skilled in the
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`art about the scope of the claimed invention.
`
`G.
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`Patent-Eligible Subject Matter
`
`47. Starbucks’ counsel has advised me that “abstract ideas” are not patent-
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`eligible subject matter under 35 U.S.C. § 101. I understand that where a claim is
`
`directed to an abstract idea, there must be some additional element or combination
`
`of elements in the claim that ensures that the claim is significantly more than a
`
`claim to the abstract idea itself or else the claim is patent-ineligible. Starbucks’
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`counsel has further advised that merely reciting generic computer implementation
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`of an abstract idea is insufficient to make a claim patent-eligible.
`
`V. OVERVIEW OF THE ’850 PATENT
`
`A.
`
`Summary of the ’850 Patent
`
`48. The ’850 patent is directed to computerizing hospitality-related
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`activities using the Internet and handheld wireless devices. The Challenged
`
`- 16 -
`
`Apple Inc. Exhibit 1003
`
`

`
`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,384,850 B1
`
`Claims, Claims 12-16, each recite “[a]n information management and synchronous
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`communications system for use with wireless handheld computing devices and the
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`internet.” Ex. 1001 at 16:1-47.
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`49. The ’850 patent, and the Challenged Claims, use the phrase
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`“synchronous communications” to refer generally to communications in a system
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`that synchronizes applications and data, even though the phrase has a different and
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`well-established meaning in the art. For example, the Microsoft Computer
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`Dictionary defines “synchronous communications” as: “Computer-to-computer
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`communications in which transmissions are synchronized in timing between the
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`sending and receiving machines.” Ex. 1050 at 430.
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`50. Although the specification of the ’850 patent provides some
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`discussion related to certain aspects of the Challenged Claims, much of the
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`specification deals with “menu generation” subject matter that relates to Claims 1-
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`11 of the ’850 patent which are not Challenged in the Apple CBM Petition. Six of
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`the seven figures in the ’850 patent relate to the “menu generation” subject matter.
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`Only Figure 6 has a connection to the Challenged Claims.
`
`51. The ’850 patent specification acknowledges that “[t]he use of wireless
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`handheld devices in the restaurant and hospitality industry [was] becoming
`
`increasingly pervasive.” Ex. 1001 at 3:40-43. On the other hand, “software for
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`fully realizing the potential for handheld wireless computing devices [had] not
`
`- 17 -
`
`Apple Inc. Exhibit 1003
`
`

`
`DECLARATION OF ABDELSALAM HELAL, PH.D.
`IN SUPPORT OF CBM PETITION FOR REVIEW OF U.S. PATENT NO. 6,384,850 B1
`
`previously been available.” Ex.1001 at 1:65-2:7. As a result, “paper-based
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`ordering, waitlist and reservations management [had] persisted in the face of
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`widespread computerization in practically all areas of commerce.” Ex. 1001 at
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`2:33-36.
`
`52. The ’850 patent purports to describe software and functions that the
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`hospitality industry had been waiting for: “The information management and
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`synchronous communications system of the present invention features include fast
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`synchronization between a central database and multiple handheld devices,
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`synchronization and communication between a Web server and multiple handheld
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`devices, a well-defined API that enables third parties such as POS companies,
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`affinity program companies and internet content providers to fully integrate with
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`computerized hospitality applications, real-time communication over the internet
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`with direct connections or regular modem dialup connections and support for batch
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`processing that can be done periodically throughout the day to keep multiple sites
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`in synch with the central d