Trials@uspto.gov
`571.272.7822
`
`
`
`
` Paper No. 13
`Filed: September 1, 2015
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., EVENTBRITE INC.,
`STARWOOD HOTELS & RESORTS
`WORLDWIDE, INC.,
`Petitioner,
`
`v.
`
`AMERANTH, INC.,
`Patent Owner.
`____________
`
`Case CBM2015-00080
`Patent 6,384,850 B1
`____________
`
`
`Before MEREDITH C. PETRAVICK, RICHARD E. RICE, and
`STACEY G. WHITE, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`Apple Inc. Exhibit 1054
`
`
`571.272.7822
`
`
`
`
` Paper No. 13
`Filed: September 1, 2015
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., EVENTBRITE INC.,
`STARWOOD HOTELS & RESORTS
`WORLDWIDE, INC.,
`Petitioner,
`
`v.
`
`AMERANTH, INC.,
`Patent Owner.
`____________
`
`Case CBM2015-00080
`Patent 6,384,850 B1
`____________
`
`
`Before MEREDITH C. PETRAVICK, RICHARD E. RICE, and
`STACEY G. WHITE, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`
`Apple Inc. Exhibit 1054
`
`
`
`CBM2015-00080
`Patent 6,384,850 B1
`
`
`I. INTRODUCTION
`
`A. Background
`
`On February 19, 2015, Apple Inc., Eventbrite Inc., and Starwood
`
`Hotels & Resorts Worldwide, Inc. (“collectively, Petitioner”) filed a Petition
`
`requesting a review under the transitional program for covered business
`
`method patents of U.S. Patent No. 6,384,850 B1 (Ex. 1001, “the ’850
`
`patent”). Paper 1 (“Pet.”). Ameranth, Inc. (“Patent Owner”) filed a
`
`Preliminary Response on June 4, 2015. Paper 19 (“Prelim. Resp.”).
`
`We have jurisdiction under 35 U.S.C. § 324, which provides that a
`
`post-grant review may not be instituted “unless . . . it is more likely than not
`
`that at least 1 of the claims challenged in the petition is unpatentable.”
`
`35 U.S.C. § 324(a). 1
`
`Petitioner challenges the patentability of claims 12–16 of the ’850
`
`patent under 35 U.S.C. § 103. Our factual findings and conclusions at this
`
`stage of the proceeding are based on the evidentiary record developed thus
`
`far (prior to Patent Owner’s Response). This is not a final decision as to the
`
`patentability of any of the claims for which a covered business method
`
`patent review is instituted. Our final decision will be based on the record as
`
`fully developed during trial. For the reasons given below, we conclude that
`
`the information presented in the Petition establishes that at least one of the
`
`challenged claims is more likely than not unpatentable. Thus, we institute a
`
`covered business method patent review of claims 12–16 of the ’850 patent.
`
`
`
`
`
`
`1 See § 18(a) of the Leahy-Smith America Invents Act (“AIA”), Pub. L. No.
`112-29, 125 Stat. 284, 329 (2011).
`
`2
`
`
`
`Apple Inc. Exhibit 1054
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`
`
`CBM2015-00080
`Patent 6,384,850 B1
`
`
`B. Related Matters
`
`
`
`Both Petitioner and Patent Owner identify numerous related ongoing
`
`district court proceedings in the Petition. Pet. 2–4; Paper 7, 5–6. The ’850
`
`patent is related to U.S. Patent No. 6,871,325 B1, U.S. Patent No. 6,982,733
`
`B1, and U.S. Patent No. 8,146,077 B2. These patents were or are the subject
`
`of the following covered business method patent reviews:
`
`
`
`U.S. Patent No.
`6,384,850 B1
`
`Previous CBM Reviews
`CBM2014-00015
`
`6,871,325 B1
`
`CBM2014-00016
`
`6,982,733 B1
`8,146,077 B2
`
`CBM2014-00013
`CBM2014-00014
`
`Pending CBM Reviews
`CBM2015-00091
`CBM2015-00096
`CBM2015-00082
`CBM2015-00097
`CBM2015-00099
`
`CBM2015-00081
`CBM2015-00095
`
`
`
`In case CBM2014-00015, a Final Written Decision, determining
`
`claims 1–11 to be unpatentable, was issued on March 20, 2015 and is
`
`currently on appeal.
`
`
`
`C. The ’850 Patent
`
`The ’850 patent is titled “Information Management and Synchronous
`
`Communications System with Menu Generation” and issued on May 7,
`
`2002, based on Application No. 09/400,413, filed on September 21, 1999.
`
`Ex. 1001, [54], [45], [21], [22]. There are two aspects to the system: menu
`
`generation and synchronous communication. See, e.g., id. at col. 3, ll. 15–
`
`23. The first aspect includes a “desktop software application that enables the
`
`rapid creation and building of a menu.” Id. at col. 3, ll. 15–17. Claims 1–
`
`3
`
`
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`Apple Inc. Exhibit 1054
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`
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`CBM2015-00080
`Patent 6,384,850 B1
`
`11, which are not challenged in this proceeding, are directed to this first
`
`aspect.
`
`
`
`Claims 12–16, which are challenged in this proceeding, are directed to
`
`the second aspect of the system, synchronous communication. See id. at col.
`
`2, ll. 56–62; col. 3, ll. 1–5; col. 10, ll. 57–59. The ’850 patent discloses a
`
`synchronous communication system, which includes a computer
`
`workstation, a central database, multiple wireless handheld devices, a web
`
`server, and a web page. Id. at col. 3, ll. 59–63; col. 6, l. 14. A
`
`communications control module provides a single point of entry for all
`
`hospitality applications, on the central database, wireless handheld devices,
`
`web server and web pages, to communicate with one another. Id. at col. 9,
`
`ll. 21–27; col. 11, ll. 24–30.
`
`This communications module is a layer that sits on top of any
`communication protocol and acts as an interface between
`hospitality applications and the communication protocol. . . .
`The single point of entry works to keep all wireless handheld
`devices and linked [w]eb sites in synch with the backoffice
`server (central database) so that the different components are in
`equilibrium at any given time and an overall consistency is
`achieved.
`
`Id. at col. 11, ll. 27–36.
`
`For example, a reservation made online would be automatically
`communicated to the backoffice server and then synchronized
`with all the wireless handheld devices wirelessly. Similarly,
`changes made on any of the wireless handheld devices would
`be reflected instantaneously on the backoffice server, [w]eb
`pages and the other handheld devices.
`
`Id. at col. 2, ll. 26–32.
`
`Third parties, such as point-of-sale companies, affinity program
`
`companies, and internet content providers, can integrate fully with the
`
`4
`
`
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`Apple Inc. Exhibit 1054
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`
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`CBM2015-00080
`Patent 6,384,850 B1
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`system through an application program interface. Id. at col. 2, ll. 12–15; col.
`
`11, ll. 15–19.
`
`
`
`D. Illustrative Claim
`
`Claim 12 of the ’850 patent is the only challenged independent claim
`
`and is illustrative of the claims at issue. Claim 12 reads as follows:
`
`12. An information management and synchronous
`communications system for use with wireless
`handheld computing devices and the internet
`comprising:
`
`a. a central database containing hospitality
`applications and data,
`
`b. at least one wireless handheld computing
`device on which hospitality applications and
`data are stored,
`
`c. at least one [w]eb server on which hospitality
`applications and data are stored,
`
`d. at least one [w]eb page on which hospitality
`applications and data are stored,
`
`e. an application program interface, and
`
`f. a communications control module,
`
`wherein applications and data are synchronized
`between
`the central [database], at
`least one
`wireless handheld computing device, at least one
`[w]eb server and at least one [w]eb page; wherein
`the
`application program
`interface
`enables
`inte[]gration of outside applications with the
`hospitality
`applications
`and wherein
`the
`communications control module is an interface
`between the hospitality applications and any other
`communications protocol.
`
`5
`
`
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`Apple Inc. Exhibit 1054
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`
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`CBM2015-00080
`Patent 6,384,850 B1
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`
`
`E. Alleged Grounds of Unpatentablity
`
`Petitioner sets forth alleged grounds of unpatentability as follows:
`
`Ground
`
`Prior Art
`
`Challenged Claims
`
`§ 103
`
`§ 103
`
`§ 103
`
`Inkpen2, Nokia3, and Digestor4
`
`DeLorme5
`
`Blinn6 and Inkpen
`
`12–16
`
`12–16
`
`12–16
`
`Petitioner also proffers the Declaration of Dr. Don Turnbull to support
`
`
`
`
`
`its Petition. Ex. 1002.
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`
`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); see
`
`also In re Cuozzo Speed Techs., LLC, No. 2014-1301, 2015 WL 4097949, at
`
`
`2 Gary Inkpen, INFORMATION TECHNOLOGY FOR TRAVEL AND TOURISM, 1–195
`(2d ed. 1998) (Ex. 1021) (“Inkpen”).
`3 Nokia 9000i Communicator Owner’s Manual, 1–131 (1997) (Ex. 1023)
`(“Nokia”).
`4 Timothy W. Bickmore & Bill N. Schilit, Digestor: device independent
`access to the World Wide Web, Computer Networks and ISDN Systems 29,
`1075–82 (1997) (Ex. 1022) (“Digestor”).
`5 DeLorme et al., U.S. Patent No. 5,948,040 (issued Sept. 7, 1999) (Ex.
`1024) (“DeLorme”).
`6 Blinn et al., U.S. Patent No. 6,058,373 (issued May 2, 2000) (Ex. 1025)
`(“Blinn”).
`
`6
`
`
`
`Apple Inc. Exhibit 1054
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`
`
`CBM2015-00080
`Patent 6,384,850 B1
`
`*7–8 (Fed. Cir. July 8, 2015) (reh’g en banc denied) (“We conclude that
`
`Congress implicitly approved the broadest reasonable interpretation standard
`
`in enacting the AIA” and “the standard was properly adopted by PTO
`
`regulation.”). Under the broadest reasonable interpretation standard, and
`
`absent any special definitions, 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).
`
`Further, “the specification and prosecution history only compel
`
`departure from the plain meaning in two instances: lexicography and
`
`disavowal.” GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309
`
`(Fed. Cir. 2014) (citing Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d
`
`1362, 1365 (Fed. Cir. 2012)). The standards for lexicography and disavowal
`
`are exacting, and require clear intent to define or narrow a term. Thorner,
`
`669 F.3d at 1365–66. Any special definition for a claim term must be set
`
`forth with reasonable clarity, deliberateness, and precision. In re Paulsen,
`
`30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`i. Web Page
`
`
`
`Claim 12 recites “at least one [w]eb page on which hospitality
`
`applications and data are stored.”
`
`In related case CBM2014-00015, we determined that the broadest
`
`reasonable construction consistent with the Specification of “web page” is a
`
`document, with associated files for graphics, scripts, and other resources,
`
`accessible over the internet and viewable in a web browser. Ex. 1017, 8.
`
`Petitioner and Patent Owner agree that this is the proper interpretation.
`
`Pet. 21; Prelim. Resp. 28. In addition, Petitioner argues that “[a] ‘document’
`
`7
`
`
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`Apple Inc. Exhibit 1054
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`
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`CBM2015-00080
`Patent 6,384,850 B1
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`is ‘any self-contained piece of work created with an application program
`
`and, if saved on a disk, given a unique filename by which is can be
`
`retrieved.’” Pet. 21–22 (citing Document, MICROSOFT COMPUTER
`
`DICTIONARY (4th ed. 1999) (Ex. 1034, 9)). We adopt Petitioner’s
`
`interpretation for purposes of our decision in this case.
`
`ii. Synchronized
`
`
`
`Claim 12 recites “wherein applications and data are synchronized
`
`between the central [database], at least one wireless handheld computing
`
`device, at least one [w]eb server and at least one [w]eb page.”
`
`
`
`In related case CBM2014-00014, we determined that the broadest
`
`reasonable construction consistent with the Specification of “synchronized”
`
`is “made to happen, exist, or arise at the same time.” Ex. 1019, 18
`
`(emphasis added). Patent Owner disagrees with this construction and, in
`
`particular the timing aspect, and argues that this construction was not
`
`determined in the context of the ’850 patent. Prelim. Resp. 30. Patent
`
`Owner proposes to construe “synchronized” as “simply means ‘made or
`
`configured to make consistent’ pursuant to the specification.” Id. (citing Ex.
`
`1001, col. 2, ll. 23–26, col. 4, ll. 15–18, col. 11, ll. 34–36 (“in synch with the
`
`backoffice server (central database) so that the different components are in
`
`equilibrium at any given time and an overall consistency is achieved”)).
`
`
`
`Petitioner does not provide a construction of the term “synchronized”
`
`by itself, but does construe claim 12’s limitation “data are synchronized
`
`between the central [database], the at least one wireless handheld computing
`
`device, at least one [w]eb server and at least one [w]eb page” to mean “the
`
`same data is present in each of the central database, the at least one wireless
`
`handheld computing device, at least one [w]eb server and at least one [w]eb
`
`8
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`
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`Apple Inc. Exhibit 1054
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`CBM2015-00080
`Patent 6,384,850 B1
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`page at one time.” Pet. 23 (emphasis added). Petitioner’s construction
`
`includes a timing aspect. Petitioner, however, also argues that
`
`synchronization encompasses “downloading a menu from one device to
`
`another device” and appears to disregard a timing aspect. See id.
`
`
`
`For purposes of this Decision, we are persuaded that the broadest
`
`reasonable construction consistent with the Specification of “synchronized”
`
`is made, or configured to make, consistent.
`
`iii. Hospitality Applications
`
`
`
`Claim 12 requires a central database, wireless handheld computing
`
`devices, web servers, and web pages to have stored thereon “hospitality
`
`applications.”
`
`
`
`Patent Owner argues that “hospitality applications” means
`
`“applications used to perform services or tasks in the hospitality industry.”
`
`Prelim. Resp. 36 (citing the Board’s construction of similar term “hospitality
`
`application information” in related case CBM2014-00014). Petitioner does
`
`not propose an explicit construction for this term.
`
`
`
`We are persuaded by Patent Owner that the broadest reasonable
`
`construction consistent with the Specification of “hospitality applications” is
`
`applications used to perform services or tasks in the hospitality industry.
`
`This construction is consistent with the Specification which states
`
`“hospitality applications, e.g., reservations, frequent customer ticketing, wait
`
`lists, etc.” Ex. 1001, col. 4, ll. 6–7.
`
`iv. Outside Applications
`
`
`
`Claim 12 recites “wherein the application program interface enables
`
`inte[]gration of outside applications with the hospitality applications.”
`
`9
`
`
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`Apple Inc. Exhibit 1054
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`
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`CBM2015-00080
`Patent 6,384,850 B1
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`
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`Patent Owner argues that the broadest reasonable construction of
`
`“outside applications” is “non-hospitality applications.” Prelim. Resp. 36
`
`(emphasis omitted). Petitioner does not propose an explicit construction for
`
`this term.
`
`
`
`We are not persuaded by Patent Owner that “outside applications”
`
`should be construed to mean “non-hospitality applications.” Patent Owner’s
`
`construction is overly narrow. The Specification describes that the
`
`application program interface “enables third parties such as point[-]of[-]sale
`
`(“POS”) companies, affinity program companies and internet content
`
`providers to fully integrate with computerized hospitality applications.” Ex.
`
`1001, col. 2, ll. 11–16; col. 3, ll. 63–67; col. 11, ll. 15–19. Nothing in the
`
`Specification describes these third parties as non-hospitality companies or
`
`their applications as non-hospitality applications, and nothing in the claim
`
`language itself requires the outside application to be non-hospitality
`
`applications.
`
`
`
`For purposes of this Decision, we are persuaded that the broadest
`
`reasonable construction consistent with the Specification of “outside
`
`applications” is third party applications, such as point of sale companies,
`
`affinity program companies, and internet content providers.
`
`v. Integration
`
`
`
`Patent Owner argues that the broadest reasonable construction of
`
`“integration” is “the combining of different activities, programs, or hardware
`
`components into a functional unit.” Prelim. Resp. 37 (citing Integration,
`
`MICROSOFT COMPUTER DICTIONARY (4th ed. 1999) (Ex. 2015, 239)).
`
`Petitioner does not propose an explicit construction for this term.
`
`10
`
`
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`Apple Inc. Exhibit 1054
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`CBM2015-00080
`Patent 6,384,850 B1
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`
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`For purposes of this Decision, we are persuaded that the broadest
`
`reasonable construction consistent with the Specification of “integration” is
`
`the combining of different activities, programs, or hardware components into
`
`a functional unit.
`
`vi. Other Terms
`
`
`
`Petitioner and Patent Owner propose constructions for various other
`
`claim terms. See Pet. 21–24; Prelim. Resp. 24–41. These terms, however,
`
`need no explicit construction at this time. See Vivid Techs., Inc. v. Am. Sci.
`
`& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (stating that “only those
`
`terms need be construed that are in controversy, and only to the extent
`
`necessary to resolve the controversy”).
`
`
`
`B. Standing
`
`Section 18 of the AIA provides for the creation of a transitional
`
`program for reviewing covered business method patents. Section 18 limits
`
`review to persons or their privies that have been sued or charged with
`
`infringement of a “covered business method patent,” which does not include
`
`patents for “technological inventions.” AIA §§ 18(a)(1)(B), 18(d)(1); see
`
`37 C.F.R. § 42.302. It is undisputed that each of the entities jointly filing the
`
`Petition has been sued for infringement of the ’850 patent. See Pet. 5–6; see
`
`Ex. 1030.
`
`For the reasons explained below, we determine that the ’850 patent is
`
`a covered business method patent and is eligible for covered business
`
`method patent review.
`
`11
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`Apple Inc. Exhibit 1054
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`CBM2015-00080
`Patent 6,384,850 B1
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`i. Financial Product or Service
`
`
`
`Petitioner contends that claim 1 is directed to a system that is at least
`
`incidental or complementary to a financial activity, as determined by the
`
`Board in CBM2014-00016. Pet. 6–7. Petitioner argues that claim 1 recites a
`
`system for generating and transmitting menus, in which a generated second
`
`menu is “applicable to a predetermined type of ordering.” Id. According to
`
`Petitioner, the claimed ordering relates to ordering a restaurant meal, which
`
`is at least incidental or complementary to the sale of the meal. Id. at 7
`
`(citing Ex. 1001, Abstract).
`
`
`
`Patent Owner argues that Petitioner’s standing argument merely
`
`references CBM2014-00016 and is insufficient. Prelim. Resp. 1, n.1.
`
`Further, Patent Owner argues that “the cited prior proceeding involved a
`
`different patent and different claims, and relies on a claim recitation,
`
`“applicable to a predetermined type of ordering,” which does not appear in
`
`any ‘850 claim. Petitioner’s entire basis for standing is that “‘ordering’ in
`
`this phrase relates to the ordering of a meal at a restaurant.” Id.
`
`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; 77 Fed. Reg. 48,734, 48,736
`
`(Aug. 14, 2012) (Final Rule). A patent need have only one claim directed to
`
`12
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`Apple Inc. Exhibit 1054
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`CBM2015-00080
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`a covered business method to be eligible for review, even if the claim is not
`
`challenged by the Petitioner. Id.; see CRS Advanced Techs., Inc. v.
`
`Frontline Techs., Inc., Case CBM2012-00005, slip op. at 6–9 (PTAB Jan.
`
`23, 2013) (Paper 17).
`
`In promulgating rules for covered business method patent reviews, the
`
`Office considered the legislative intent and history behind the AIA’s
`
`definition of “covered business method patent.” 77 Fed. Reg. at 48,735–36.
`
`The “legislative history 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.’” Id. at 48,735 (citing 157 Cong. Rec. S5432 (daily ed.
`
`Sept. 8, 2011) (statement of Sen. Schumer)). The legislative history
`
`indicates that “financial product or service” should be interpreted broadly.
`
`Id.
`
`
`
`Patent Owner is correct that the ’850 patent was not the subject of
`
`CBM2014-00016 (see Ex. 1014) and does not include the relied upon
`
`“ordering” limitation in its claims (see Ex. 1001, col. 14, l. 48–col. 15, l. 11).
`
`The ’850 patent, however, is a parent of U.S. Patent No. 6,871,325 B1 (Ex.
`
`1003, 1, “the ’325 patent”), which was the subject of CBM2014-00016.
`
`Claim 1 of the ’325 patent is substantially the same as claim 1 of the ’850
`
`patent, except that claim 1 of the ’850 patent does not recite that the “second
`
`menu is applicable to a predetermined type of ordering.” Claim 1 of the
`
`’850 patent, however, claims generating a second menu, and the
`
`Specification of the ’850 patent discloses that the second menu is
`
`“applicable to table-based, drive-thru, internet, telephone, wireless or other
`
`13
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`Apple Inc. Exhibit 1054
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`CBM2015-00080
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`modes of customer order entry” (i.e., a predetermined type of ordering) for a
`
`restaurant meal (Ex. 1001, col. 14, ll. 13–17).
`
`We are persuaded by Petitioner that ordering relates to ordering a
`
`restaurant meal, which is at least incidental or complementary to the sale of
`
`the meal. See Pet. 7. “Menus are used in ordering, which pertains to the
`
`sale of a product, which generates revenue. Consequently, the subject
`
`matter of claim 1 [of the ’850 patent] is incidental to financial activity.” Ex.
`
`1017, 11 (Decision to Institute in CBM2014-00015).
`
`
`
`In addition, we determine that claim 12 of the ’850 patent also claims
`
`a system that is at least incidental to financial activity or complementary to a
`
`financial activity. Claim 12 claims an information management and
`
`synchronous communications system having wireless handheld computing
`
`devices, web servers, and web pages, on which hospitality applications are
`
`stored. The Specification discloses that hospitality applications, are for
`
`“reservations, frequent customer ticketing, wait lists, etc.” (Ex. 1001, col. 4,
`
`ll. 5–8), as well as restaurant ordering (see id. at col. 1, ll. 20–24, 61).
`
`Hospitality applications are used in restaurant reservations, wait lists, and
`
`orders, which pertain to the sale of a product, which generates revenue. Like
`
`for claim 1 of the ’850 patent, the subject matter of claim 12 is incidental or
`
`complementary to financial activity.
`
`ii. Technological Invention
`
`The definition of “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 is novel and unobvious over the prior art; and solves a technical
`
`14
`
`
`
`Apple Inc. Exhibit 1054
`
`
`
`CBM2015-00080
`Patent 6,384,850 B1
`
`problem using a technical solution.” 37 C.F.R. § 42.301(b). Both prongs
`
`must be satisfied in order for the patent to be excluded from review as a
`
`technological invention. The following claim drafting techniques, for
`
`example, typically do not render a patent a “technological invention[]”:
`
`(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, 48,763–64 (Aug.
`
`14, 2012).
`
`Petitioner contends that claim 1 is not directed toward a technological
`
`invention because it does not (1) recite a technological feature that is novel
`
`or unobvious over the prior art and (2) solve a technical problem using a
`
`technical solution, as determined by the Board in CBM2014-00016. Pet. 7–
`
`8. Petitioner argues that the system of claim 1 uses nothing but known prior
`
`art technology. Id.
`
`In addition to arguing that Petitioner’s standing argument merely
`
`references CBM2014-00016 and is, therefore, insufficient, Patent Owner
`
`argues that “the PTAB has recently held that claims having structural
`
`similarities to the [’]850 claims were directed to a technological invention.”
`
`Prelim. Resp. 1, n.1 (citing Bloomberg L.P. and CharlesSchwab & Co., Inc.
`
`v. Quest Licensing Corp., Case CBM2014-00205 (PTAB Apr. 7, 2015)
`
`(Paper 16); Apple, Inc. v. ContentGuard Holdings, Inc., Case CBM2015-
`
`15
`
`
`
`Apple Inc. Exhibit 1054
`
`
`
`CBM2015-00080
`Patent 6,384,850 B1
`
`00046 (PTAB June 3, 2015) (Paper 12). In Bloomberg, the petitioner failed
`
`to meet its burden. CBM2014-00205, slip op. at 9. Further, the Board
`
`found convincing Patent Owner’s affirmative showing that the patent solved
`
`a technical problem using a technical solution. Id. In Apple, the panel
`
`similarly determined that the petitioner failed to meet its burden.
`
`CBM2015-00046, slip op. at 10–11. The panel did not agree with Petitioner,
`
`for example, that the limitations in the claims “are simply generic functions
`
`that are capable of being performed by a general purpose computer.” Id. at
`
`11.
`
`In contrast to the Bloomberg and Apple proceedings, claim 1 of the
`
`’850 patent recites use of only known technologies, as discussed in the
`
`Decision to Institute in CBM2014-00015. See Ex. 1017, 11–14. Claim 1,
`
`thus, is not a technological invention.
`
`In addition, we determine that claim 12 of the ’850 patent also is not a
`
`technological invention because it does not recite a technological feature that
`
`is novel and unobvious over the prior art. Claim 12 requires a central
`
`database, at least one wireless handheld computing device, at least one web
`
`server, at least one web page, an application program interface, and a
`
`communications control module. The application program interface
`
`functions to integrate outside applications with hospitality applications on
`
`the central database, handheld computing devices, web server, and web
`
`page. The communications control module functions to synchronize
`
`applications and data between the central database, handheld computing
`
`devices, web servers, and web pages and to act as an interface between the
`
`hospitality applications and any other communications protocol.
`
`16
`
`
`
`Apple Inc. Exhibit 1054
`
`
`
`CBM2015-00080
`Patent 6,384,850 B1
`
`
`The Specification of the ’850 patent indicates that these features are
`
`known technologies. The Specification states that “[t]he preferred
`
`embodiment of the present invention uses typical hardware elements in the
`
`form of a computer workstation, operating system and application software
`
`elements which configure the hardware elements for operation in accordance
`
`with the present invention.” Ex. 1001, col. 5, ll. 33–37. See also id. at col.
`
`1, ll. 30–41 (indicating that wireless handheld devices were known); col. 5,
`
`ll. 37–55 (indicating that the present invention uses typical file server
`
`platform hardware and software); col. 10, ll. 34–42 (indicating that
`
`application program interfaces were known); col. 10, l. 63–col. 11, l. 3
`
`(indicating systems for synchronization were known); col. 11, ll. 43–48
`
`(indicating that the discrete programming steps are commonly known); col.
`
`12, ll. 1–61 (indicating that the world wide web, multiple communication
`
`protocols, web pages, and web servers were known). Claim 12, thus, is also
`
`not a technological invention.
`
`
`
`C. Alleged Obviousness Grounds
`
`Section 103(a) forbids issuance of a patent when “the
`differences between the subject matter sought to be patented
`and the prior art are such that the subject matter as a whole
`would have been obvious at the time the invention was made to
`a person having ordinary skill in the art to which said subject
`matter pertains.”
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`
`obviousness is resolved on the basis of underlying factual determinations,
`
`including: (1) the scope and content of the prior art, (2) any differences
`
`between the claimed subject matter and the prior art, and (3) the level of skill
`
`in the art. Graham v. John Deere Co., 383 U.S. 1, 17 (1966); see KSR, 550
`
`17
`
`
`
`Apple Inc. Exhibit 1054
`
`
`
`CBM2015-00080
`Patent 6,384,850 B1
`
`U.S. at 407 (“While the sequence of these questions might be reordered in
`
`any particular case, the [Graham] factors continue to define the inquiry that
`
`controls.”).
`
`i. Alleged Unpatentability Over Inkpen, Nokia, and Digestor
`
`
`
`Petitioner argues that claims 12–16 would have been obvious over
`
`Inkpen, Nokia, and Digestor. Pet. 27–46. Inkpen discloses a travel
`
`information system developed by Marriott (Ex. 1021, ll. 229–234). Figure
`
`5.36 of Inkpen, which illustrates the Marriott system, is reproduced below:
`
`
`
`The Marriott system, shown above, includes MARSHA III, which is a
`
`computerized reservation system that interacts with the Marriott database to
`
`handle all reservations, whether from the Travel Web or a global distribution
`
`system (“GDS”). Ex. 1021, 230–231. A THISCO switch is an interface
`
`between MARSHA III and the GDSs and also between MARSHA III and
`
`the Travel Web. Id. at 218, 230. The web pages from the Travel Web
`
`server may be used by customers to make reservations. Id. at 218.
`
`18
`
`
`
`Apple Inc. Exhibit 1054
`
`
`
`CBM2015-00080
`Patent 6,384,850 B1
`
`
`
`Nokia is an owner’s manual for the Nokia 9000i Communicator. Ex.
`
`1023, 7. The Nokia 9000i Communicator has “a mobile phone, messaging
`
`device, Internet access terminal[,] and palmtop organizer all in one compact
`
`unit.” Id. It includes a web browser for viewing World Wide Web pages.
`
`Id. at 53.
`
`
`
`Petitioner proposes various modifications to the Inkpen system (see
`
`Pet. 33–35) including having a consumer use a Nokia 9000i to access the
`
`web pages from the Travel Web server to make reservations. Pet. 31.
`
`Petitioner argues that this combination teaches at least one wireless handheld
`
`computing device on which hospitality applications and data are stored (i.e.,
`
`claim element b) because:
`
`A POSITA would understand that Travel [w]eb pages being
`rendered by a browser on a handheld device are data and
`hospitality applications within the meaning of the ’850 patent.
`Ex. 1002 ¶ 130. This is because the combination of the HTML
`files associated with the Travel Web pages and the browser
`together comprise [applications], in this case making [a]
`reservation[.] Id. Additionally, a POSITA would understand
`that web pages such as the Travel Web pages include data. Id.
`
`Pet. 38. In essence, Petitioner equates the combination of the HTML files
`
`associated with the Travel Web pages and the browser, together, to the
`
`claimed hospitality applications stored on the wireless handheld computing
`
`device (i.e., claim element b).
`
`Petitioner also argues that this teaches at least one web page on which
`
`hospitality applications and data are stored (i.e., claim element d). Id. at 40.
`
`Petitioner states: “A POSITA would have understood that Travel Web pages
`
`being rendered by a browser on a handheld device are data and hospitality
`
`applications within the meaning of the ’850 patent for the reasons discussed
`
`above in connection with claim element 12.b. Ex. 1002 ¶ 138.” Id.
`
`19
`
`
`
`Apple Inc. Exhibit 1054
`
`
`
`CBM2015-00080
`Patent 6,384,850 B1
`
`Petitioner, thus, also appears to equate the combination of the HTML files
`
`associated with the Travel Web pages and the browser, together, to the
`
`hospitality applications stored on the web page.
`
`
`
`Above we construed web page as a document, with associated files for
`
`graphics, scripts, and other resources, accessible over the internet and
`
`viewable in a web browser. Given our construction, it is unclear how a web
`
`page, which is a document viewable in a web browser, can have stored
`
`thereon hospitality applications, which are composed of a web browser and
`
`HTML files, and neither Petitioner nor its declarant Dr. Turnbull provides a
`
`sufficient explanation (see Pet. 40; Ex. 1002 ¶ 138). Petitioner does not rely
`
`upon Digesto
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