Paper 36
` Entered: March 20, 2015
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AGILYSYS, INC. ET AL.,
`Petitioner
`
`v.
`
`AMERANTH, INC.,
`Patent Owner
`____________
`
`Case CBM2014-00015
`Patent No. 6,384,850 B1
`____________
`
`Before JAMESON LEE, MEREDITH C. PETRAVICK, and
`NEIL T. POWELL, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`Covered Business Method Patent Review
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`Apple Inc. Exhibit 1053
`
`
` Entered: March 20, 2015
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AGILYSYS, INC. ET AL.,
`Petitioner
`
`v.
`
`AMERANTH, INC.,
`Patent Owner
`____________
`
`Case CBM2014-00015
`Patent No. 6,384,850 B1
`____________
`
`Before JAMESON LEE, MEREDITH C. PETRAVICK, and
`NEIL T. POWELL, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`
`
`
`
`FINAL WRITTEN DECISION
`Covered Business Method Patent Review
`35 U.S.C. § 328(a) and 37 C.F.R. § 42.73
`
`Apple Inc. Exhibit 1053
`
`
`
`CBM2014-00015
`Patent 6,384,850 B1
`
`
`I. INTRODUCTION
`
`Agilysys, Inc. and other entities1 (collectively, “Petitioner”) filed a
`
`Petition (Paper 9, “Pet.”) requesting review under the transitional program
`
`for covered business method patents of claims 1–16 of U.S. Patent No.
`
`6,384,850 B1 (Ex. 1031, “the ’850 patent”, issued May 7, 2002). On March
`
`26, 2014, pursuant to 35 U.S.C. § 324, we instituted this trial as to claims 1–
`
`11 on only one proposed ground of unpatentability, 35 U.S.C. § 101 (Paper
`
`20, “Dec. to Inst.”). We did not institute as to claims 12–16 on any of the
`
`grounds proposed in the Petition. Ameranth, Inc. (“Patent Owner”) filed a
`
`Patent Owner Response (Paper 27, “PO Resp.”) and Petitioner filed a Reply
`
`(Paper 28, “Reply”).
`
`
`
`An oral hearing in this proceeding was held on October 24, 2014. A
`
`transcript of the hearing is included in the record (Paper 34, “Tr.”). The oral
`
`hearing was consolidated with the oral hearing for related CBM2014-00016
`
`and CBM2014-00013.
`
`
`
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
`
`Decision is issued pursuant to 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73.
`
`
`1 Expedia, Inc.; Fandango, LLC; Hotel Tonight, Inc.; Hotwire, Inc.;
`Hotels.com, L.P.; Kayak Software Corp.; Live Nation Entertainment, Inc.;
`Oracle Corp.; Orbitz, LLC; Opentable, Inc.; Papa John’s USA, Inc.;
`Stubhub, Inc.; Ticketmaster, LLC.; Travelocity.com LLP; Wanderspot LLC;
`Pizza Hut, Inc.; Pizza Hut of America, Inc.; Domino’s Pizza, Inc.; Domino’s
`Pizza, LLC; Grubhub Holdings, Inc.; Order.in, Inc.; Mobo Systems, Inc.;
`Starbucks Corporation; 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
`
`
`
`Apple Inc. Exhibit 1053
`
`
`
`CBM2014-00015
`Patent 6,384,850 B1
`
`
`
`For the reasons that follow, we determine that Petitioner has shown by
`
`a preponderance of the evidence that claims 1–11 of the ’850 patent are
`
`unpatentable.
`
`A. The ’850 Patent
`
`The ’850 patent, titled “Information Management and Synchronous
`
`Communications System with Menu Generation,” issued on May 7, 2002,
`
`based on Application No. 09/400,413, filed on September 21, 1999.
`
`Ex. 1031, 1.
`
`The ’850 patent discloses a “desktop software application that enables
`
`the rapid creation and building of a menu.” Id. at col. 3, ll. 15–17. Figure 1
`
`of the ’850 patent is reproduced below.
`
`Figure 1 depicts a graphical user interface (“GUI”)
`that is used to generate a menu.
`
`
`
`GUI 1 includes menu tree window 7, modifiers window 8, and sub-modifiers
`
`window 9. Id. at col. 6, ll. 26–32. Menu tree window 7 includes
`
`hierarchical tree structure 2 that shows the relationships between menu
`
`3
`
`
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`Apple Inc. Exhibit 1053
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`
`
`CBM2014-00015
`Patent 6,384,850 B1
`
`categories, such as salads or desserts; menu items, such as caesar salad or
`
`green salad; menu modifiers, such as dressing; and menu sub-modifiers,
`
`such as ranch or bleu cheese. Id. at col. 6, ll. 13–21. A user generates a
`
`menu using GUI 1 to add or delete menu categories, menu items, modifiers,
`
`and sub-modifiers, and to link modifiers and sub-modifiers to menu items in
`
`hierarchical tree structure 2. Id. at col. 6, l. 35–col. 8, l. 20. After the new
`
`menu is generated, it can be previewed and downloaded to wireless
`
`handheld devices and Web pages. See id. at col. 3, ll. 59–64; col. 6, ll. 22–
`
`25; col. 7, ll. 12; col. 8, ll. 45–51; col. 9, l. 66–col. 10, l. 1.
`
`
`
`B. Illustrative Claim
`
`Of the challenged claims, claim 1 is independent and is illustrative of
`
`the claims at issue. Claim 1 is reproduced below:
`
`1. An information management and synchronous
`communications system for generating and
`transmitting menus comprising:
`
`a. a central processing unit,
`
`b. a data storage device connected to said
`central processing unit,
`
`c. an operating system including a graphical
`user interface,
`
`d. a first menu consisting of menu categories,
`said menu categories consisting of menu items,
`said first menu stored on said data storage
`device and displayable in a window of said
`graphical user interface in a hierarchical tree
`format,
`
`e. a modifier menu stored on said data storage
`device and displayable in a window of said
`graphical user interface,
`
`4
`
`
`
`Apple Inc. Exhibit 1053
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`
`
`CBM2014-00015
`Patent 6,384,850 B1
`
`
`f. a sub-modifier menu stored on said data
`storage device and displayable in a window of
`said graphical user interface, and
`
`g. application software for generating a second
`menu from said first menu and transmitting said
`second menu to a wireless handheld computing
`device or Web page,
`
`wherein the application software facilitates the
`generation of the second menu by allowing
`selection of cat[e]gories and items from the first
`menu, addition of menu categories to the second
`menu, addition of menu items to the second menu
`and assignment of parameters to items in the
`second menu using the graphical user interface of
`said operating system, said parameters being
`selected from the modifier and sub-modifier
`menus.
`
`
`
`C. Related Proceedings
`
`Both parties identify numerous related ongoing district court
`
`proceedings. Pet. 12–16; Paper 8, 4–5; Paper 26, 1.
`
`In addition, Petitioner requested covered business method patent
`
`review of the following related patents: U.S. Patent No. 6,871,325
`
`(CBM2014-00016) and U.S. Patent No. 6,982,733 (CBM2014-00013). We
`
`instituted covered business method patent review in CBM2014-00016 and
`
`CBM2014-00013, and final written decisions in those proceedings are
`
`entered concurrently with this decision.
`
`Petitioner also requested covered business method patent review of
`
`related U.S. Patent No. 8,146,077 (CBM2014-00014). We did not institute
`
`covered business method patent review in CBM2014-00014.
`
`5
`
`
`
`
`
`Apple Inc. Exhibit 1053
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`
`
`CBM2014-00015
`Patent 6,384,850 B1
`
`
`D. Alleged Ground of Unpatentability
`
`
`
`Petitioner alleges that claims 1–11 are unpatentable under 35 U.S.C.
`
`§ 101.
`
`
`
`
`
`II. ANALYSIS
`
`A. Arguments Incorporated By Reference
`
`In footnote 11 on pages 11–12 of the Patent Owner Response, Patent
`
`Owner attempts to incorporate certain arguments made in its Preliminary
`
`Response (Paper 11) into the Patent Owner Response. Our rules prohibit
`
`incorporating arguments by reference. Section 42.6(a)(3) of our rules states:
`
`“[a]rguments must not be incorporated by reference from one document into
`
`another document.” Incorporation by reference circumvents our rule
`
`limiting the pages in the Patent Owner response to 80 pages. See 37 C.F.R.
`
`§ 42.24(b)(2). Arguments that are not developed and presented in the Patent
`
`Owner Response, itself, are not entitled to consideration. See Paper 21, 3
`
`(cautioning Patent Owner “that any arguments for patentability not raised
`
`and fully briefed in the response will be deemed waived.”).
`
`
`
`
`
`B. Claim Construction
`
`The Board interprets claims of unexpired patents using the broadest
`
`reasonable construction in light of the specification of the patent in which
`
`they appear. 37 C.F.R. § 42.300(b). Under the broadest reasonable
`
`construction standard, claim terms are given their ordinary and customary
`
`meaning, as would be understood by one of ordinary skill in the art in the
`
`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`
`1257 (Fed. Cir. 2007). Any special definition for a claim term must be set
`
`6
`
`
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`Apple Inc. Exhibit 1053
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`
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`CBM2014-00015
`Patent 6,384,850 B1
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`forth with reasonable clarity, deliberateness, and precision. In re Paulsen,
`
`30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition,
`
`limitations are not to be read from the specification into the claims. In re
`
`Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
`
`Prior to construing the relevant claim limitations, we turn to some
`
`initial matters raised by Patent Owner. First, Patent Owner argues that we
`
`must construe “the entirety of the challenged claims” (PO Resp. 29), and
`
`proposes constructions for some, but not all, limitations of the challenged
`
`claims (see id. at 33–35). Claim construction, however, “is not an inviolable
`
`prerequisite to a validity determination under § 101.” Bancorp Servs. L.L.C.
`
`v. Sun Life Assur. Co. of Canada (U.S.), L.L.C., 687 F.3d 1266, 1273 (Fed.
`
`Cir. 2012); see, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d
`
`795, 803 (Fed. Cir. 1999) (only those terms that are in controversy need to
`
`be construed, and only to the extent necessary to resolve the controversy).
`
`Below, we construe the limitations that are relevant to the issues of patent-
`
`eligibility discussed below. We determine that all other claim limitations
`
`need no explicit construction.
`
`
`
`Second, Patent Owner urges us to adopt all previous judicial
`
`constructions and, in particular, the constructions of United States District
`
`Court for the Eastern District of Texas Marshall Division (see Ex. 2014–
`
`2016). PO Resp. 28. Petitioner also relies upon previous judicial
`
`constructions (see Ex. 2017) to support its arguments. See Reply 4. The
`
`standard for claim construction in a district court infringement action,
`
`however, is different than the standard applied by the Board. See In re
`
`Morris, 127 F.3d 1048, 1053–54 (Fed. Cir. 1997). In covered business
`
`method patent review proceedings, the Board applies the broadest
`
`7
`
`
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`Apple Inc. Exhibit 1053
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`
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`CBM2014-00015
`Patent 6,384,850 B1
`
`reasonable construction consistent with the specification. 37 C.F.R. §
`
`42.300(b); see also SAP Am., Inc. v. Versata Dev. Grp, Inc., Case
`
`CBM2012-00001, slip op. at 7–18 (PTAB June 11, 2013) (Paper 70)
`
`(discussing adoption of the broadest reasonable interpretation standard).
`
`i. Preamble
`
`
`
`The preamble of claim 1 recites “[a]n information management and
`
`synchronous communications system for generating and transmitting
`
`menus.” Petitioner and Patent Owner dispute whether the preamble limits
`
`the claim. Reply 1–8; PO Resp. 34–35.
`
`Patent Owner argues that the preamble is limiting because “[t]erms
`
`are recited in the preamble which do not appear in the remainder of the
`
`claims and ‘synchronous communications system’ is necessary to define the
`
`synchronization functionality of the first menus and the second menus on the
`
`back[-]office server (central database) and the handheld device/Web pages.”
`
`PO Resp. 35. According to Patent Owner, the preamble should be construed
`
`as “a computerized system having multiple devices in which a change to
`
`data made on a central server is updated on client devices and vice versa.”
`
`Id. at 32; see id. at 34–35. Patent Owner also argues that the preamble is
`
`limiting because the Specification describes that a synchronous
`
`communications system is important (id. (citing Ex. 1031, Title, Abstract,
`
`col. 3, ll. 9–15, 59–67)), and because the Examiner relied upon the preamble
`
`during prosecution to distinguish over the prior art (id.).
`
`Petitioner argues that the preamble is non-limiting because the
`
`preamble does not recite any structural components not captured in the body
`
`of the claim and “merely sets forth the purpose (‘information management
`
`and synchronous communication’) and intended use (‘for generating and
`
`8
`
`
`
`Apple Inc. Exhibit 1053
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`
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`CBM2014-00015
`Patent 6,384,850 B1
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`transmitting menus’) of the claimed invention.” Reply 3–5. Petitioner
`
`argues that Patent Owner’s proposed construction improperly reads in a
`
`distributed system that includes a central server and client devices and
`
`improperly excludes a preferred desktop PC embodiment from the claims.
`
`Reply 6–7. Petitioner further argues that, contrary to Patent Owner’s
`
`assertion, the Examiner did not rely upon the preamble to distinguish over
`
`the prior art. Id. at 5.
`
`“In general, a preamble limits the invention if it recites essential
`
`structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to
`
`the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d
`
`801, 808 (Fed. Cir. 2002) (citing Pitney Bowes Inc. v. Hewlett-Packard Co.,
`
`182 F.3d 1298, 1305 (Fed. Cir. 1999)). A preamble, however, is not limiting
`
`where the claim body defines a structurally complete invention and the
`
`preamble only states a purpose or intended use for the invention. Id.
`
`The body of claim 1 recites a system that includes a central processing
`
`unit (“CPU”), a data storage device, an operating system with a GUI, a first
`
`menu, a modifier menu, a sub-modifier menu, and application software.
`
`Ex. 1031, col. 14, l. 48–col. 15, l. 11. The application software is recited as
`
`“for generating a second menu from said first menu” and the wherein clause
`
`further defines how the second menu is generated from the first menu. Id. at
`
`col. 15, ll. 1–11. The application software is recited, further, as “for . . .
`
`transmitting said second menu to a wireless handheld computing device or
`
`Web page.” Id. at col. 15, l. 1–2.
`
`As can be seen from the above, the body of claim 1 recites a
`
`structurally complete invention; one that corresponds to the embodiment that
`
`has a desktop PC and a menu configuration application described in the
`
`9
`
`
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`Apple Inc. Exhibit 1053
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`
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`CBM2014-00015
`Patent 6,384,850 B1
`
`Specification at column 6, line 9 thru column 8, line 62 and depicted in
`
`Figure 1. See also Ex. 1031, col. 3, ll. 35–41 (describing the present
`
`invention as a software tool for building a menu, modifying a menu, and
`
`downloading it to a handheld device or Web Page). As described in the
`
`Specification, a menu is updated using the GUI of the menu configuration
`
`application and, then, the updated menu is downloaded to a connected
`
`handheld device by clicking on a “Download Database” item or icon in GUI
`
`1. Ex. 1031, col. 8, ll. 45–62; see also id. at col. 3, ll. 35–37; col. 6, ll. 22–
`
`25; col. 7, ll. 12. Thus, the updated menu is the same on the desktop PC and
`
`the handheld device. At the oral hearing, Patent Owner indicated that
`
`downloading is synchronizing, as “[i]t’s making something the same with
`
`something else.” See Tr. 28.
`
`For these reasons, we agree with Petitioner that the preamble is non-
`
`limiting because it does not recite any structural components not already
`
`captured in the body of the claim and merely sets forth the purpose and
`
`intended use of the claimed invention. Also, the body of the claim already
`
`possesses life, meaning and vitality, without importing anything from the
`
`preamble.
`
`We further are not persuaded by Patent Owner’s argument that the
`
`preamble is limiting because the argument is based upon a proposed
`
`construction that is overly narrow. Patent Owner’s proposed construction
`
`implies that a synchronous communication system requires a central back-
`
`office server that communicates data updates to and from multiple client
`
`devices, similar to those recited in non-instituted claim 12. Although the
`
`Specification describes communication between a central back-office server
`
`and client devices (e.g., see Ex. 1031, col. 11, ll. 12–42), we see nothing in
`
`10
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`Apple Inc. Exhibit 1053
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`CBM2014-00015
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`the Specification, and Patent Owner points to nothing, that suggests that a
`
`synchronous communication system is required to include these elements.
`
`Patent Owner’s proposed construction attempts to import these extraneous
`
`elements from the Specification into the claim. If a feature is not necessary
`
`to give meaning to what the inventor means by a claim term, it would be
`
`“extraneous,” and should not be read into the claim. Renishaw PLC v.
`
`Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); E.I. du
`
`Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433
`
`(Fed. Cir. 1988).
`
`Further, we are not persuaded by Patent Owner’s argument that the
`
`preamble is limiting because the Examiner relied upon the preamble during
`
`prosecution to distinguish over the prior art, as evidenced by the Examiner’s
`
`reasons for allowance (PO Resp. 35). Clear reliance on the preamble during
`
`prosecution to distinguish the claimed invention from the prior art may
`
`transform the preamble into a claim limitation. Catalina, 289 F.3d at 808.
`
`However, in this case, the Examiner’s reasons for allowance do not show
`
`that the preamble was relied upon clearly during the prosecution. Contrary
`
`to the Patent Owner’s argument, the Examiner’s reasons for allowance
`
`indicate that the claimed sub-modifier menu and the claimed application
`
`software are the uniquely distinct features, and not the synchronous
`
`communication system of preamble. Ex. 1035, 7.
`
`
`
`For the reasons discussed above, we are persuaded by Petitioner that
`
`the preamble is non-limiting.
`
`ii. “central processing unit”
`
`
`
`Claim 1 recites a “central processing unit.” Patent Owner proposes
`
`that CPU be construed as a “central server.” PO Resp. 32, 35–36.
`
`11
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`Apple Inc. Exhibit 1053
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`CBM2014-00015
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`According to Patent Owner, its construction takes into account “the
`
`centralized nature of the control over the recited menu generation and
`
`synchronous transmission functionally of the central processing unit”
`
`described in the Specification. Id. at 35.
`
`Petitioner argues that there is nothing in the “intrinsic evidence [that]
`
`offers any alternative definition of this common technical term” and argues
`
`that Patent Owner’s proposed construction is contrary to the Specification,
`
`which equates the CPU to a microprocessor. Reply 7–8 (citing Ex. 1031,
`
`col. 5, ll. 37–39, 48–49). Petitioner proposes that CPU should be construed
`
`according to its ordinary and customary meaning, which is “the
`
`computational and control unit of a computer.” Pet. 40–41 (citing
`
`MICROSOFT COMPUTER DICTIONARY, 115 (4th ed. 1999)).
`
`
`
`We are persuaded by Petitioner that the broadest reasonable
`
`construction in light of the Specification of the term CPU is the
`
`computational and control unit of a computer. Petitioner’s construction is
`
`consistent with the Specification, which describes that the system of the ’850
`
`patent uses typical hardware elements in the form of a computer workstation
`
`and that “a typical workstation platform includes hardware such as a central
`
`processing unit (‘CPU’), e.g., a Pentium® microprocessor.” Ex. 1031,
`
`col. 5, ll. 34–40; see also id. at col. 5, ll. 48–49 (“a CPU, e.g., Pentium ®
`
`microprocessor”). Further, as discussed above, the Specification discloses
`
`using a desktop PC to generate and downloads menus to a connected
`
`handheld device (see id. at col. 6, l. 22–col. 8, l. 62), as well as, discloses the
`
`use of a central back-office server (e.g., see id. at col. 2, ll. 29–33). Patent
`
`Owner’s proposed construction improperly reads into the claims the central
`
`12
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`Apple Inc. Exhibit 1053
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`back-office server. See Renishaw, 158 F.3d at 1249 (explaining that
`
`extraneous features should not be read into the claims).
`
`
`
`For these reasons, we determine that the broadest reasonable
`
`construction, in light of the Specification, of CPU is the computational and
`
`control unit of a computer.
`
`iii. “Web page”
`
`
`
`Neither Petitioner nor Patent Owner contests the construction of the
`
`term “Web page” in the Decision to Institute. See PO Resp. 33, 37. We
`
`construed Web page to mean “a document with associated files for graphics,
`
`scripts, and other resources, accessible over the internet and viewable in a
`
`web browser.” Dec. on Inst. 8–9.
`
`iv. “menu”
`
`
`
`Patent Owner proposes that menu should be construed as “computer
`
`data representing collections of linked levels of choices or options intended
`
`for display in a graphical user interface.” PO Resp. 33, 38–39 (citing a
`
`construction by a district court; see Ex. 2014, 11–12). Patent Owner,
`
`however, provides no analysis as to why the district court’s construction is
`
`the broadest reasonable construction in light of the Specification. PO Resp.
`
`33, 38–39. Petitioner does not propose an alternate construction of menu,
`
`but argues that the claim terms should be given their ordinary and customary
`
`meaning. Pet. 39–40.
`
`We are not persuaded by Patent Owner that its proposed construction
`
`is the broadest reasonable construction in light of the Specification. We see
`
`nothing in the Specification, and Patent Owner does not point to anything in
`
`the Specification, that provides support for Patent Owner’s proposed
`
`construction, in particular that the menus have a “linked levels” feature.
`
`13
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`Although the Specification discloses some menus that are linked to
`
`additional menus, this “linked levels” feature is extraneous and should not
`
`be read from the Specification into the claim. See Ex. 1031, col. 5, ll. 23–33
`
`(“File options can have additional subordinate or child options associated
`
`with them. If a file option having a subordinate option is selected . . .”
`
`(emphases added)).
`
`We give “menu” its ordinary and customary meaning. RANDOM
`
`HOUSE WEBSTER’S COLLEGE DICTIONARY defines menu as “a list of options
`
`available to a user, as displayed on a computer or TV screen.” RANDOM
`
`HOUSE WEBSTER’S COLLEGE DICTIONARY, 520 (2nd ed. 1997). This
`
`definition is consistent with the Specification, which describes menus as
`
`providing choices or options in a GUI. See Ex. 1031, col. 5, ll. 17–20; see
`
`Fig. 1 (depicting a menu, a modifier menu, and a sub modifier menu).
`
`
`
`For these reasons, we determine that the broadest reasonable
`
`construction, in light of the Specification, of “menu” is a list of options
`
`available to a user displayable on a computer.
`
`v. “the second menu is capable of being displayed on the display screen of a
`wireless computing device”
`
`
`
`Claim 3 depends from claim 1 and recites “wherein the second menu
`
`is capable of being displayed on the display screen of a wireless computing
`
`device.” Patent Owner argues that this limitation should be construed as
`
`“capability to display the second menu on the display screen of a wireless
`
`handheld computing device.” PO Resp. 34 (emphasis added). According to
`
`Patent Owner, the recitation of “a wireless computing device” is a reference
`
`to the “wireless handheld computing device” that is recited in claim 1, and,
`
`therefore, should not be construed to encompass a wireless laptop or desktop
`
`PC. Id. at 40–41. Petitioner argues that claim 3 should not be rewritten to
`
`14
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`
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`Apple Inc. Exhibit 1053
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`
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`CBM2014-00015
`Patent 6,384,850 B1
`
`include the term handheld and that “if the wireless device of claim 3 were a
`
`reference to the wireless handheld device of claim 1, claim 3 would have
`
`used the definite article ‘the’ rather than reciting ‘a wireless computing
`
`device.’” Reply 14 (emphasis original).
`
`
`
`We are persuaded by Petitioner that the recitation of “a wireless
`
`computing device” in claim 3 does not require that the wireless computing
`
`device be handheld or preclude a wireless laptop or desktop PC. Patent
`
`Owner’s proposed construction again attempts to read extraneous features
`
`into the claim. For these reasons, we determine that the broadest reasonable
`
`construction in light of the Specification of the recitation of “a wireless
`
`computing device” does not require that the wireless computing device be
`
`handheld.
`
`
`
`C. 35 U.S.C. § 101
`
`Petitioner challenges claims 1–11 of the ’850 patent as claiming
`
`patent-ineligible subject matter under 35 U.S.C. § 101. Pet. 56–77.
`
`According to Petitioner, the claims are directed to the abstract idea of
`
`generating a menu and do not contain additional limitations that
`
`meaningfully limit the abstract idea to a practical application. Id.
`
`Patent Owner disagrees and contends that the claims are patent-
`
`eligible because they recite a machine and not an abstract idea and because
`
`they recite specialized software that synchronously generates and wirelessly
`
`transmits non-PC standard handheld menus comprised of multi-tiered levels
`
`of components. PO Resp. 44–80.
`
`15
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`
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`Apple Inc. Exhibit 1053
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`CBM2014-00015
`Patent 6,384,850 B1
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`
`a. Section 101 Subject Matter Eligibility
`
`
`
`For claimed subject matter to be patentable-eligible, it must fall into
`
`one of four statutory classes set forth in 35 U.S.C. § 101: a process, a
`
`machine, a manufacture, or a composition of matter. The Supreme Court
`
`recognizes three categories of subject matter that are ineligible for patent
`
`protection: “laws of nature, physical phenomena, and abstract ideas.” Bilski
`
`v. Kappos, 130 S. Ct. 3218, 3225 (2010) (internal quotations and citation
`
`omitted). A law of nature or an abstract idea by itself is not patentable;
`
`however, a practical application of the law of nature or abstract idea may be
`
`deserving of patent protection. Mayo Collaborative Servs. v. Prometheus
`
`Labs., Inc., 132 S. Ct. 1289, 1293–94 (2012). To be patentable, however, a
`
`claim must do more than simply state the law of nature or abstract idea and
`
`add the words “apply it.” Id.
`
`
`
`In Alice Corp. Pty, Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the
`
`Supreme Court recently clarified the process for analyzing claims to
`
`determine whether claims are directed to patent-ineligible subject matter. In
`
`Alice, the Supreme Court applied the framework set forth previously in
`
`Mayo, “for distinguishing patents that claim laws of nature, natural
`
`phenomena, and abstract ideas from those that claim patent-eligible
`
`applications of those concepts.” Alice, 134 S. Ct. at 2355. The first step in
`
`the analysis is to “determine whether the claims at issue are directed to one
`
`of those patent-ineligible concepts.” Id. If they are directed to a patent-
`
`ineligible concept, the second step in the analysis is to consider the elements
`
`of the claims “individually and ‘as an ordered combination’” to determine
`
`whether there are additional elements that “‘transform the nature of the
`
`claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at
`
`16
`
`
`
`Apple Inc. Exhibit 1053
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`
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`CBM2014-00015
`Patent 6,384,850 B1
`
`1291, 1297). In other words, the second step is to “search for an ‘inventive
`
`concept’—i.e., an element or combination of elements that is ‘sufficient to
`
`ensure that the patent in practice amounts to significantly more than a patent
`
`upon the [ineligible concept] itself.’” Id. (alteration in original) (quoting
`
`Mayo, 132 S. Ct. at 1294). Further, the “prohibition against patenting
`
`abstract ideas ‘cannot be circumvented by attempting to limit the use of the
`
`formula to a particular technological environment’ or adding ‘insignificant
`
`postsolution activity.’” Bilski, 130 S. Ct. at 3230 (quoting Diamond v.
`
`Diehr, 450 U.S. 175, 191–92 (1981)).
`
`
`
`The patents at issue in Alice claimed a “method of exchanging
`
`financial obligations between two parties using a third-party intermediary to
`
`mitigate settlement risk.” Alice, 134 S. Ct. at 2356. Like the method of
`
`hedging risk in Bilski v. Kappos, 130 S. Ct. at 3240 — which the Court
`
`deemed “a method of organizing human activity” — Alice’s “concept of
`
`intermediate settlement” was held to be “a fundamental economic practice
`
`long prevalent in our system of commerce.” Alice, 134 S. Ct. at 2356.
`
`Similarly, the Court found that “[t]he use of a third-party intermediary . . . is
`
`also a building block of the modern economy.” Id. “Thus,” the Court held,
`
`“intermediate settlement . . . is an ‘abstract idea’ beyond the scope of § 101.”
`
`Id.
`
`
`
`Accordingly, utilizing this framework, we analyze claims 1–11 of the
`
`’850 patent to determine whether these claims are directed to patent-
`
`ineligible subject matter.
`
`b. Ineligible Concept
`
`Petitioner argues that the claims are directed to the abstract idea of
`
`generating menus. Pet. 59–61. Patent Owner argues that the claims “are not
`
`17
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`
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`Apple Inc. Exhibit 1053
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`
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`CBM2014-00015
`Patent 6,384,850 B1
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`directed to an ‘idea’ at all; they are directed to a new machine.” PO Resp.
`
`46 (emphasis omitted).
`
`Nominally, the claimed subject matter is a machine, which is one of
`
`the four categories of statutory subject matter. Statutory class, however, is
`
`not by itself determinative of whether a claim is directed to patent eligible
`
`subject matter. “Regardless of what statutory category (‘process, machine,
`
`manufacture, or composition of matter,’ 35 U.S.C. § 101) a claim’s language
`
`is crafted to literally invoke, we look to the underlying invention for patent-
`
`eligibility purposes.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
`
`1366, 1374 (Fed. Cir. 2011); see Alice, 134 S. Ct. 2358–2359; Bancorp
`
`Servs. v. Sun Life Assurance Co., 687 F.3d 1266, 1275 (Fed. Circ. 2012).
`
`The claims recite a system that generates a second menu from a first
`
`menu by selecting menu categories and items from the first menu, adding
`
`menu categories and items to the second menu, and selecting parameters
`
`from modifier and sub-modifier menus to assign to items in the second
`
`menu. The claims also recite that the system transmits the second menu to a
`
`wireless handheld computing device or Web page.
`
`
`
`As discussed in section I(A) above, the Specification discloses a user
`
`generating a menu by adding or deleting menu categories, such as salads or
`
`desserts; menu items, such as caesar salad or green salad; menu modifiers,
`
`such as dressing; and menu sub-modifiers, such as ranch or blue cheese to
`
`create the second menu. Ex. 1031, col. 6, l. 35–col. 8, l. 20. The
`
`Specification states:
`
`[w]hile the preferred embodiment of the invention includes the
`selection of items from a master menu wherein the master menu
`is displayed using a graphical user interface, it is to be
`appreciated that any means for displaying the master menu to
`the user and generating another menu in response to and
`
`18
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`
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`Apple Inc. Exhibit 1053
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`CBM2014-00015
`Patent 6,384,850 B1
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`
`comprised of the selections made is encompassed by the
`contemplated invention.
`
`(id. at col. 13, ll. 52–58) and
`
`[t]he inventive concept encompasses the generation of a menu
`in any context known to those skilled in the art where an object
`is to facilitate display of the menu so as to enable selection of
`items from that menu.
`. . . Likewise, displaying menus
`generated in accordance with the invention on PDAs and Web
`pages to facilitate remote ordering are but a few examples of
`ways in which such menu might be used in practice. Any
`display and transmission means known to those skilled in the
`art is equally usable with respect to menus generated in
`accordance with the claimed invention.
`
`(id. at col. 14, ll. 18–21).
`
`Given the above, we determine that claim 1 is directed to the abstract
`
`idea of generating a second menu from a first menu and sending the second
`
`menu to another location.
`
`c. Inventive Concept
`
`Next, we look for additional elements that can “transform the nature
`
`of the claim” into a patent-eligible application of an abstract idea. That is,
`
`we determine whether the claims include an “inventive concept,” i.e., an
`
`element or combination of elements sufficient to ensure that the patent in
`
`practice amounts to significantly more than a patent on the abstract idea
`
`itself. Alice, 134 S. Ct. at 2357. The Supreme Court in Alice cautioned that
`
`merely limiting the use of abstract idea “to a particular technological
`
`environment” or implementing the abstract i
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