Trials@uspto.gov
`571-272-7822
`
`
`
`
`
` Paper 19
`Entered: March 26, 2014
`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`AGILYSYS, INC., ET AL.
`Petitioner,
`
`v.
`
`AMERANTH, INC.
`Patent Owner.
`
`
`
`Case CBM2014-00014
`Patent 8,146,077 B2
`
`
`
`Before JAMESON LEE, RICHARD E. RICE, and STACEY G. WHITE,
`Administrative Patent Judges.
`
`RICE, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`
`
`
`
`Apple Inc. Exhibit 1049
`
`

`
`Case CBM2014-00014
`U.S. Patent No. 8,146,077 B2
`
`INTRODUCTION
`Agilysys, Inc. and 34 other entities1 (collectively, “Petitioner”), filed
`an amended petition (“Pet.”) requesting a review under the transitional
`program for covered business method patents of U.S. Patent No. 8,146,077
`B2 (Ex. 1001, “the ’077 patent”). Paper 8. Ameranth, Inc. (“Patent
`Owner”) filed a preliminary response (“Prelim. Resp.”). Paper 10. We have
`jurisdiction under 35 U.S.C. § 324.2
`The standard for instituting a covered business method patent review
`is set forth in 35 U.S.C. § 324(a), which provides:
`THRESHOLD—The Director may not authorize a post-grant
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 321, if
`
`
`
`
`1 Expedia, Inc., Fandango, LLC, Hotel Tonight, Inc., Hotwire, Inc.,
`Hotels.com, L.P., Kayak Software Crop., Live Nation Entertainment, Inc.,
`Micros Systems, Inc., Orbitz, LLC, Opentable, Inc., Papa John’s USA, Inc.,
`Stubhub, Inc., Ticketmaster, LLC., Travelocity.com LP, Wanderspot LLC,
`Pizza Hut, Inc., Pizza Hut of America, Inc., Domino’s Pizza, Inc., Domino’s
`Pizza, LLC, Grubhub, Inc., Seamless North America, LLC, Order.in, Inc.,
`Mobo Systems, Inc., Starbucks Corporaton, Eventbrite, Inc., Best Western
`International, Inc., Hilton Resorts Corp., Hilton Worldwide, Inc., Hilton
`International Co., Hyatt Corporation, Marriott International, Inc., Starwood
`Hotels & Resorts Worldwide, Inc., Usablenet, Inc., and Apple, Inc.
`2 See § 18(a) of the Leahy-Smith America Invents Act, Pub. L. No. 112-29,
`125 Stat. 284, 329 (2011) (“AIA”) (providing that the transitional program
`for covered business method patents will be regarded as a post-grant review
`under chapter 32 of title 35, United States Code, and will employ the
`standards and procedures of a post-grant review, subject to certain
`exceptions).
`
`2
`
`Apple Inc. Exhibit 1049
`
`

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`Case CBM2014-00014
`U.S. Patent No. 8,146,077 B2
`
`such information is not rebutted, would demonstrate that it is
`more likely than not that at least 1 of the claims challenged in
`the petition is unpatentable.
`
`Petitioner challenges the patentability of claims 1-18 of the
`’077 patent under 35 U.S.C. §§ 101, 112 ¶ 1, and 112 ¶ 2. Taking into
`account Patent Owner’s preliminary response, we determine that the
`information presented in the petition does not establish that at least one of
`the challenged claims is more likely than not unpatentable. Accordingly, we
`do not institute a covered business method patent review as to any claim of
`the ’077 patent. The petition is denied.
`
`
`A. Petitioner’s Standing
`Section 18 of the AIA governs the transitional program for covered
`
`business method patent reviews. Section 18(a)(1)(B) of the AIA limits the
`filing of a petition for such reviews to persons or their privies who have been
`sued or charged with infringement of a covered business method patent.
`Each of the entities listed as Petitioner asserts that it has been sued for
`infringement of the ’077 patent. Pet. 25-26 (identifying 30 separate district
`court litigations).
`
`
`B. The ’077 patent
`The ’077 patent alleges that an inherent problem of personal digital
`assistant (“PDA”) devices is that the small size of their displays limits the
`amount of information that may be displayed at any one time. Ex. 1001,
`1:54-62. PDAs have not been “quickly assimilated into the restaurant and
`
`3
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`

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`Case CBM2014-00014
`U.S. Patent No. 8,146,077 B2
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`hospitality industries,” according to the patent, because “their small display
`sizes are not readily amenable to display of menus as they are commonly
`printed on paper or displayed on, e.g., large, color desktop computer
`screens.” Id. at 2:12-17. A principal object of the ’077 patent “is to provide
`an improved information management and synchronous communications
`system and method which facilitates . . . generation of computerized menus
`for restaurants and other applications that utilize equipment with non-PC-
`standard graphical formats, display sizes and/or applications.” Id.
`at 2:61-67.
`
`The specification of the ’077 patent describes a procedure for
`configuring a menu on a desktop computer and then downloading the menu
`configuration onto a point of sale (“POS”) interface on a handheld device.
`Id. at 7:44-47. The procedure comprises the following steps:
`1. Add Modifiers;
`2. Add Sub-Modifiers and link them to the Modifiers;
`3. Create Menu categories;
`4. Add menu items to the categories;
`5. Assign Modifiers to the menu items;
`6. Preview the menu on the POS emulator on the desktop PC;
`7. Download the menu database to the handheld device.
`Id. at 8:28-36. “[M]enu items are stored using a tree metaphor similar to
`how files are stored on a PC with folders and subfolders.” Id. at 8:4-6.
`In the preferred embodiment, a “synchronous communications control
`module . . . . provides a single point of entry for all hospitality applications
`to communicate with one another wirelessly or over the Web.” Id. at 12:39-
`42. “The single point of entry works to keep all wireless handheld devices
`
`4
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`Apple Inc. Exhibit 1049
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`

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`
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`Casee CBM2014-00014
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`
`
`U.S. Patent Noo. 8,146,0777 B2
`
`ffice serveer (central ddatabase),””
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`the backo
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`
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`and llinked Webb sites in ssynch with
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`
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`
`
`
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`
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`suchh that, for eexample, “aa reservatioon made oonline is auutomaticallly
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`
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`
`
`
`
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`wireeless handhheld devicees wirelesslly.” Id. at
`
`
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`12:47-54.
`
`
`
`
`
`Figure 99 of the ’0777 patent iss reproduceed below:
`
`commmunicatedd to the bacckoffice serrver whichh then syncchronizes wwith all thee
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`single
`
`
`
`
`
`
`Figuure 9 is an eexemplaryy system diagram thatt illustratess how “[a]
`
`
`
`
`
`
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`nked web ces and lindheld devicreless handpoinnt of entry wworks to keep all wir
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`
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`sitess in synch wwith the baackoffice s
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`
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`erver appliications soo that the ddifferent
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`5
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`Apple Inc. Exhibit 1049
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`

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`Case CBM2014-00014
`U.S. Patent No. 8,146,077 B2
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`components are in equilibrium at any given time and an overall consistency
`is achieved.” Id. at 5:29-33.
`
`
`C. Illustrative Claims
`Claims 1, 9, and 13 are independent. Claims 2-8 depend from
`claim 1, claims 10-12 depend from claim 9, and claims 14-18 depend from
`claim 13. Claims 1, 7, and 13 are illustrative of the ’077 patent, and are
`reproduced below:
`time
`real
`information management and
`1. An
`
`synchronous communications system for configuring and
`transmitting hospitality menus comprising:
`
`a. a central processing unit,
`
`b. a data storage device connected to said central
`processing unit,
`
`c. an operating system including a first graphical user
`interface,
`
`d. a master menu including at least menu categories,
`menu items and modifiers, wherein said master menu is capable
`of being stored on said data storage device pursuant to a master
`menu file structure and said master menu is capable of being
`configured for display to facilitate user operations in at least
`one window of said first graphical user interface as cascaded
`sets of linked graphical user interface screens, and
`
`e. menu configuration software enabled to generate a
`programmed handheld menu configuration from said master
`menu for wireless transmission to and programmed for display
`on a wireless handheld computing device, said programmed
`handheld menu configuration comprising at
`least menu
`categories, menu items and modifiers and wherein the menu
`configuration software is enabled to generate said programmed
`handheld menu configuration by utilizing parameters from the
`master menu file structure defining at least the menu categories,
`menu items and modifiers of the master menu such that at least
`6
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`Apple Inc. Exhibit 1049
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`

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`Case CBM2014-00014
`U.S. Patent No. 8,146,077 B2
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`the menu categories, menu items and modifiers comprising the
`programmed handheld menu configuration are synchronized in
`real time with analogous information comprising the master
`menu,
`
`wherein the menu configuration software is further
`enabled
`to generate
`the programmed handheld menu
`configuration in conformity with a customized display layout
`unique to the wireless handheld computing device to facilitate
`user operations with and display of the programmed handheld
`menu configuration on the display screen of a handheld
`graphical user interface integral with the wireless handheld
`computing device, wherein said customized display layout is
`compatible with the displayable size of the handheld graphical
`user
`interface wherein
`the programmed handheld menu
`configuration is configured by the menu configuration software
`for display as programmed cascaded sets of linked graphical
`user interface screens appropriate for the customized display
`layout of the wireless handheld computing device, wherein said
`programmed cascaded sets of linked graphical user interface
`screens for display of the handheld menu configuration are
`configured differently from the cascaded sets of linked
`graphical user interface screens for display of the master menu
`on said first graphical user interface, and
`
`wherein the system is enabled for real time synchronous
`communications to and from the wireless handheld computing
`device utilizing the programmed handheld menu configuration
`including the capability of real time synchronous transmission
`of the programmed handheld menu configuration to the
`wireless handheld computing device and real time synchronous
`transmissions of selections made from the handheld menu
`configuration on the wireless handheld computing device, and
`
`wherein the system is further enabled to automatically
`format the programmed handheld menu configuration for
`display as cascaded sets of linked graphical user interface
`screens appropriate for a customized display layout of at least
`
`7
`
`Apple Inc. Exhibit 1049
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`

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`Case CBM2014-00014
`U.S. Patent No. 8,146,077 B2
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`two different wireless handheld computing device display sizes
`in the same connected system, and
`
`wherein a cascaded set of linked graphical user interface
`screens for a wireless handheld computing device in the system
`includes a different number of user interface screens from at
`least one other wireless handheld computing device in the
`system.
`
`
`
`
`
`time
`real
`information management and
`7. The
`synchronous communications system in accordance with claim
`1, further enabled to facilitate and complete payment processing
`directly
`from
`the wireless handheld computing device
`including: a) Billing; b) Status and c) Payment Information.
`
`time
`real
`information management and
`13. An
`synchronous communications system for use with wireless
`handheld computing devices and the internet comprising:
`
`a. a master database connected in said system and
`configured to store hospitality application information pursuant
`to a master database file structure;
`
`b. at least one wireless handheld computing device
`connected in said system and configured to display said
`hospitality application information;
`
`c. at least one web server connected in said system;
`
`d. at least one web page connected in said system and
`configured to display said hospitality application information;
`and
` e. real time communications control software enabled to
`
`link and synchronize hospitality application
`information
`simultaneously between the master database, wireless handheld
`computing device, web server and web page,
`
`wherein the communications control software is enabled
`to utilize parameters from the master database file structure to
`synchronize the hospitality application information in real time
`8
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`Apple Inc. Exhibit 1049
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`

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`Case CBM2014-00014
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`between the master database, at least one wireless handheld
`computing device, at least one web server and at least one web
`page such that substantially the same information comprising
`the hospitality application information is capable of being
`displayed on the wireless handheld computing device, at least
`one web page and other display screens of the synchronized
`system, such that the hospitality application information is
`synchronized between any connected users,
`
`wherein the communications control software is enabled
`to act as a real time interface between the elements of the
`system and any applicable communications protocol,
`
`wherein the communications control software is enabled
`to automatically and simultaneously configure the hospitality
`application information for display on both the wireless
`handheld computing device and the web page in conformity
`with a customized display layout unique to the wireless
`handheld computing device or the web page, wherein said
`customized display layout is compatible with the displayable
`size of the handheld computing device display screen or the
`web page, and
`
`wherein the communications control software is further
`enabled to automatically format a programmed handheld
`configuration for display as cascaded sets of linked graphical
`user interface screens appropriate for a customized display
`layout of at least two different wireless handheld computing
`device display sizes in the same connected system, and
`
`wherein a cascaded set of linked graphical user interface
`screens for a wireless handheld computing device in the system
`includes a different number of user interface screens from at
`least one other wireless handheld computing device in the
`system, and
`
`wherein the system is enabled for real time synchronous
`transmission of
`the configured hospitality application
`information to the wireless handheld computing device, the web
`server and
`the web page and real
`time synchronous
`transmissions of inputs responding to the configured hospitality
`9
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`

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`Case CBM2014-00014
`U.S. Patent No. 8,146,077 B2
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`application information from the wireless handheld computing
`device, or the web server or the web page.
`
`
`
`D. Covered Business Method Patent
`1. Financial Product or Service
`Under § 18(a)(1)(E) of the AIA, the Board may institute a transitional
`proceeding only for a patent that is a “covered business method patent.” A
`“covered business method patent” is a patent that “claims a method or
`corresponding apparatus for performing data processing or other operations
`used in the practice, administration, or management of a financial product or
`service, except that the term does not include patents for technological
`inventions.” AIA § 18(d)(1); see 37 C.F.R. § 42.301(a). For purposes of
`determining whether a patent is eligible for a covered business method
`patent review, the focus is on the claims. See Transitional Program for
`Covered Business Method Patents—Definitions of Covered Business
`Method Patent and Technological Invention; Final Rule, 77 Fed. Reg.
`48,734, 48,736 (Aug. 14, 2012). A patent need have only one claim directed
`to a covered business method to be eligible for review. Id. The legislative
`history of the AIA “explains that the definition of covered business method
`patent was drafted to encompass patents ‘claiming activities that are
`financial in nature, incidental to a financial activity or complementary to a
`financial activity.’” 77 Fed. Reg. at 48,735 (Aug. 14, 2012) (quoting 157
`Cong. Rec. S5432 (daily ed. Sept. 8, 2011)).
`Patent Owner does not dispute Petitioner’s contention (see Pet. 29)
`
`that the scope of the claims, including claim 7 in particular, encompasses
`10
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`Case CBM2014-00014
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`“payment processing.” Rather, Patent Owner argues that the claimed
`invention is not directed to “‘payment processing’ . . . per se,” but rather to
`“specialized computer software system functionality” that may be used in
`that context. Prelim. Resp. 9. Patent Owner further argues that “use of the
`inventions in a business to make money does not transform [them] into
`‘financial services.’” Id.
`
`Claim 7 of the ’077 patent is directed expressly to “payment
`processing,” and therefore, is at least “incidental to a financial activity”
`and/or “complementary to a financial activity.” See 77 Fed. Reg. at 48,735.
`Accordingly, we agree with Petitioner that claim 7 satisfies the “financial
`product or service” component of the definition set forth in § 18(d)(1) of
`the AIA.
`
`2. Technological Invention Exception
`The definition of a “covered business method patent” in § 18(d)(1) of
`the AIA does not include patents for “technological inventions.” To
`determine whether a patent is for a technological invention, we consider
`“whether the claimed subject matter as a whole recites a technological
`feature that [1] is novel and unobvious over the prior art [‘first prong’]; and
`[2] solves a technical problem using a technical solution [‘second prong’].”
`37 C.F.R. § 42.301(b). Both the first prong and the second prong must be
`met for the exception to apply.
`The following claim drafting techniques typically do not render a
`patent a “technological invention”:
`
`11
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`Case CBM2014-00014
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`(a) Mere recitation of known technologies, such as
`computer hardware, communication or computer networks,
`software, memory, computer-readable
`storage medium,
`scanners, display devices or databases, or specialized machines,
`such as an ATM or point of sale device.
`(b) Reciting the use of known prior art technology to
`accomplish a process or method, even if that process or method
`is novel and non-obvious.
`(c) Combining prior art structures to achieve the normal,
`expected, or predictable result of that combination.
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,764 (Aug.
`14, 2012).
`With respect to the first prong, Petitioner argues that, as described in
`the ’077 patent, the claimed subject matter does not recite a technological
`feature that is novel and unobvious over the prior art, because the claims
`recite merely computer-implemented functions or methods using known
`techniques. Pet. 35-36. Petitioner points to the statements in the
`specification that “‘[t]he software applications for performing the functions
`falling within the described invention can be written in any commonly used
`computer language’” and “‘[t]he discrete programming steps are commonly
`known . . . .’” Id. at 35 (quoting Ex. 1001, 12:57-61). Petitioner also directs
`us to statements in the specification that “‘[t]he inventive concept
`encompasses the generation of a menu in any context known to those skilled
`in the art where an objective is to facilitate display of the menu so as to
`enable selection of items from that menu’” and “‘[a]ny display and
`transmission means known to those skilled in the art is equally usable with
`
`12
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`respect to menus generated in accordance with the claimed invention.’” Id.
`(quoting Ex. 1001, 15:26-37).
`Patent Owner responds that a technological feature of every claim of
`the ’077 patent is the functionality of specialized software to synchronize
`handheld computing device displays. Prelim. Resp. at 25-26 (pointing out
`claims directed to “synchronization of computerized menus . . . between a
`central/master menu/database and a wireless handheld computing device”).
`Patent Owner also responds that:
`core inventive concepts described in the ’077 patent and
`reflected in the claims include software functionality for
`automatically
`transforming,
`reconfiguring, and correctly
`relinking the cascading tier structures of hospitality menu
`information for display and operation on different types and
`sizes of computerized devices
`(desktop PCs,
`laptops,
`smartphones, etc.), and synchronizing such hospitality data, and
`changes thereto, across the computerized system without the
`necessity of individualized updates/revisions to each device.
`Id. at 26. Patent Owner additionally argues that “[w]hether certain aspects
`of the entire claimed system might have been known in the prior art is
`irrelevant” and that [t]he combination of all of the claimed features
`(including the novel features discussed above), considered as a whole,
`comprises a technological feature that was novel and unobvious over the
`prior art at the time of the invention.” Id.
`Upon consideration of the respective positions of the parties, we are
`persuaded that the ’077 patent does not qualify under the first prong of the
`technological invention exception. The issue is not whether the combination
`of features recited in any particular claim is patentable, but whether a
`13
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`technological feature of the subject matter of the claims as a whole is novel
`and unobvious. See 37 C.F.R. § 42.301(b).
`We are persuaded that the recited software functionality, on which
`Patent Owner relies, is not novel and unobvious, but rather the predictable
`and expected result of known programming steps. As Petitioner argues, the
`patent specification itself describes the “discrete programming steps” for
`creating the recited software functionality as “commonly known.” See
`Pet. 35 (citing Ex. 1001, 12:57-61). In addition, the specification discloses
`that, at the time of the invention, organizations had not made “the efforts or
`investments to establish automated interfaces to handheld and Web site
`menus and ordering options” due to “the unavailability of any simple
`technique for creating restaurant menus and the like for use in a limited
`display area wireless handheld device or that is compatible with ordering
`over the internet” (Ex. 1001, 2:52-60). The specification also discloses that
`use of menus was “conventional in GUIs [graphical user interfaces] for
`software applications,” including “cascading sets of menus which are
`displayable in context to show the parent/child relationships between options
`. . . .” Id. at 6:37-51. The specification states, moreover, that “[a] menu
`system of this type is incorporated into the preferred embodiment of the
`invention.” Id. at 6:51-53. On this record, we determine that the claimed
`subject matter of the ’077 patent, as a whole, does not recite a technological
`feature that is novel and unobvious over the prior art.3
`
`
`3 We do not need to decide whether the claims of the ’077 patent are directed
`14
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`We conclude that the ’077 patent is a “covered business method
`patent” eligible for a covered business method patent review.
`
`
`E. Alleged Grounds of Unpatentability
`Petitioner challenges claims 1-18 of the ’077 patent based on the
`alleged grounds of unpatentability set forth in the table below:
`
`
`Basis
`§ 112 ¶ 2
`§ 112 ¶ 1
`§ 101
`
`Challenged Claims
`1-18
`1-18
`1-18
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`As a first step in our analysis for determining whether to institute a
`
`covered business method patent review, we determine the meaning of the
`claims. In a covered business method patent review, a claim in an unexpired
`patent shall be given its broadest reasonable construction in light of the
`specification of the patent in which it appears. 37 C.F.R. § 42.300(b).
`
`Patent Owner brings to our attention four district court claim
`construction decisions: three in Case No. 2:07-cv-00271-TJW-CE (E.D.
`Tex.), involving U.S. Patent Nos. 6,384,850 (the ’850 patent), 6,871,325
`
`
`to solving a technical problem using a technical solution. See Pet. 34-36;
`Prelim. Resp. 28-29.
`
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`(“the ’325 patent”), and 6,982,733 (“the ’733 patent”) (Exs. 2014, 2015,
`2016), and one in Case No. 2:10-CV-294-JRG-RSP (E.D. Tex.), involving
`the ’850 patent and the ’325 patent (Ex. 2017). Prelim. Resp. 31. Patent
`Owner requests that we adopt “all of the previous judicial constructions
`(Exhs. 2014-2017).” Id. We understand that the ’850 patent, the ’325
`patent, and the ’733 patent are in the same patent family as the ’077 patent.
`However, even assuming that common terms in this family of patents should
`be construed consistently, and that the district court constructions are
`consistent with the broadest reasonable construction standard, we are not
`persuaded that construction of all the terms that have been construed are
`necessary to our decision in this case. Therefore, we deny Patent Owner’s
`request.
`Petitioner proposes that each claim term or phrase be given its
`ordinary and customary meaning, but nevertheless, provides explicit
`constructions for seven claim terms. We will address only two of them, as
`construction of the others is not necessary to our decision. We will also
`discuss three additional terms that require construction.
`1. “hospitality application information” (claim 13)
`Neither party proposes a construction of “hospitality application
`
`information.” The meaning of this term, however, is material to Petitioner’s
`patentability challenge to claims 13-18 under § 101 for nonstatutory subject
`matter, discussed below.
`
`We give the claim term “hospitality application information” its
`broadest reasonable construction, consistent with the specification, as
`
`16
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`“information used to perform services or tasks in the hospitality industry.”
`See, e.g., Ex. 1001, 5:17-18 (“hospitality applications, e.g., reservations,
`frequent customer ticketing, wait lists, etc.”); 12:33-34 (referring to
`“computerized hospitality applications”).
`2. “the hospitality application information is synchronized
`between any connected users” (claim 13)
`Petitioner does not propose an explicit construction for the phrase “the
`
`hospitality application information is synchronized between any connected
`users,” recited in claim 13, but rather contends that the phrase should be
`given its plain and ordinary meaning under the broadest reasonable
`construction standard. Pet. 40. Patent Owner contends that the claim term
`“synchronized,” included in that phrase, should be construed as “made to be
`the same.” See Prelim. Resp. 35.
`
`The plain meaning of “synchronized” is “[made] synchronous in
`operation,” and the plain meaning of “synchronous” is “happening, existing
`or arising at precisely the same time.” See MERRIAM WEBSTER’S
`COLLEGIATE DICTIONARY 1196 (10th ed. 1993). The usage of
`“synchronized” in the specification is consistent with its plain meaning. See,
`e.g., Ex. 1001, 2:38-41 (“a reservation made online would be automatically
`communicated to the backoffice server and then synchronized with all the
`wireless handheld devices wirelessly”); see also id. at 12:47-54 (“a
`reservation made online is automatically communicated to the backoffice
`server which then synchronizes with all the wireless handheld devices
`wirelessly”). On the present record, we do not agree with Patent Owner’s
`
`17
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`Apple Inc. Exhibit 1049
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`U.S. Patent No. 8,146,077 B2
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`proposed claim construction, because it does not reflect the “same time”
`aspect of the plain meaning of “synchronized.” We give the claim term
`“synchronized” its broadest reasonable construction, consistent with the
`specification, as “made to happen, exist, or arise at the same time.”
`
`The parties disagree on whether the phrase “the hospitality application
`information is synchronized between any connected users” should be
`construed as a method step. See Pet. 40; Prelim. Resp. 34-35. We discuss
`this issue below in connection with Petitioner’s § 112 ¶ 2, unpatentability
`ground relating to the disputed phrase.
`3. “at least the menu categories, menu items and modifiers
`comprising the programmed handheld menu configuration
`are synchronized in real time with analogous information”
`(claims 1 and 9)
`Petitioner contends that the phrase “at least the menu categories, menu
`
`items and modifiers comprising the programmed handheld menu
`configuration are synchronized in real time with analogous information,”
`recited in each of claims 1 and 9, should be construed as a method step.
`Pet. 40-41. We discuss this issue below in connection with Petitioner’s
`§ 112 ¶ 2, unpatentability ground relating to that phrase.
`4. “graphical user interface screens”
`Neither party proposes a construction of “graphical user interface
`
`screens.” The meaning of this term, however, is material to Petitioner’s
`patentability challenge under § 112 ¶ 1, for lack of written description, with
`respect to “cascaded sets of linked graphical user interface screens,”
`discussed below.
`
`18
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`Apple Inc. Exhibit 1049
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`U.S. Patent No. 8,146,077 B2
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`In its written description challenge, Petitioner argues that “[a]lthough
`
`the ’077 Patent describes the use of ‘cascading sets of menus’ on a single
`graphical user interface, the ’077 Patent fails to describe the use of
`‘cascading sets of linked graphical user interface screens’ as recited by the
`Challenged Claims.” Pet. 44 (emphasis added); see also id. at 43
`(referencing Ex. 1001, 14:37-63). We are not persuaded by Petitioner’s
`argument.
`
`The specification describes a graphical user interface comprising a
`plurality of screen displays. E.g., Ex. 1001, 6:37-51:
`
`The use of menus is conventional in GUIs for software
`applications.
`.
`.
`. [I]n a typical desktop or interactive
`application, selection of a “file” from a menu bar may cause
`display of a context menu which provides “file” options. File
`options can have additional subordinate or child options
`associated with them. If a file option having subordinate
`options is selected, the child options are displayed in context in
`a child menu or submenu proximate to the selected parent
`option. One or more of the child options provided in the child
`menu may have further subordinate options. Thus, such a menu
`system comprises cascading sets of menus which are
`displayable in context to show the parent/child relationships
`between options of the context menu.
`The “cascading sets of menus,” described in the portion of the specification
`quoted above, are cascading sets of screen displays.
`We give the claim term “graphical user interface screens” its broadest
`reasonable construction, consistent with the specification, as “a plurality of
`screen displays that provide an interface for user operations, such as menu
`selections.”
`
`19
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`Apple Inc. Exhibit 1049
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`U.S. Patent No. 8,146,077 B2
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`5. “unique to the wireless handheld computing device”
`Neither party proposes a construction of “unique to the wireless
`
`handheld computing device.” The meaning of this term, however, is
`material to Petitioner’s patentability challenge under § 112 ¶ 1, for lack of
`written description, with respect to “customized display layout unique to the
`wireless handheld computing device,” discussed below.
`
`We determine that the broadest reasonable construction of “unique,”
`consistent with the specification, is “distinctly characteristic.” See MERRIAM
`WEBSTER’S COLLEGIATE DICTIONARY 1292 (10th ed. 1993). Therefore, we
`construe “unique to the wireless handheld computing device” to mean
`distinctly characteristic of the wireless handheld computing device.
`6. Remaining Claim Terms or Phrases
`All remaining claim terms or phrases recited in claims 1-18 are given
`
`their ordinary and customary meaning, as would be understood by one with
`ordinary skill in the art, and need not be construed explicitly at this time.
`
`
`B. 35 U.S.C. § 112 ¶ 2 Ground of Unpatentability
`As mentioned above, the parties dispute whether the claim term “the
`
`hospitality application in