pete oeeAy?
`
`USING. GOV
`7S
`571-272-7822
`
`Paper8
`Entered: November 10, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LIGHTSPEED COMMERCEINC.,
`Petitioner,
`
`V.
`
`CLOUDOFCHANGE,LLC,
`Patent Owner.
`
`IPR2022-01143
`Patent 11,226,793 B2
`
`
`Before HUBERT C. LORIN, JEREMY M. PLENZLER,and
`CARL M. DEFRANCO,Administrative Patent Judges.
`
`PLENZLER, Administrative Patent Judge.
`
`DECISION
`Granting Institution of /nter Partes Review
`35 US.C. $314
`
`I.
`
`INTRODUCTION
`
`A. Background and Summary
`
`Lightspeed CommerceInc. (‘“Petitioner’’) filed a Petition requesting
`
`inter partes review of claims 1—4, 7-28, and 31-44 of U.S. Patent
`
`No. 11,226,793 B2 (Ex. 1001, “the ’793 patent”). Paper 1 (“Pet.”).
`
`
`
`USING. GOV
`7S
`571-272-7822
`
`Paper8
`Entered: November 10, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LIGHTSPEED COMMERCEINC.,
`Petitioner,
`
`V.
`
`CLOUDOFCHANGE,LLC,
`Patent Owner.
`
`IPR2022-01143
`Patent 11,226,793 B2
`
`
`Before HUBERT C. LORIN, JEREMY M. PLENZLER,and
`CARL M. DEFRANCO,Administrative Patent Judges.
`
`PLENZLER, Administrative Patent Judge.
`
`DECISION
`Granting Institution of /nter Partes Review
`35 US.C. $314
`
`I.
`
`INTRODUCTION
`
`A. Background and Summary
`
`Lightspeed CommerceInc. (‘“Petitioner’’) filed a Petition requesting
`
`inter partes review of claims 1—4, 7-28, and 31-44 of U.S. Patent
`
`No. 11,226,793 B2 (Ex. 1001, “the ’793 patent”). Paper 1 (“Pet.”).
`
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`IPR2022-01143
`Patent 11,226,793 B2
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`CloudofChange, LLC (“Patent Owner’) file a Preliminary Response.
`
`Paper 6 (“Prelim. Resp.”).
`
`Under 35 U.S.C. § 314(a), an inter partes review may notbeinstituted
`
`unless the information presented in the petition “showsthat there is a
`
`reasonablelikelihood that the petitioner would prevail with respectto at least
`
`1 of the claims challengedin the petition.” For the reasons stated below, we
`
`determinethat Petitioner has established a reasonable likelihood that it
`
`would prevail with respect to at least one of the challenged claims. We
`
`hereby institute an inter partes review in this proceeding.
`
`B. Related Matters
`
`The 793 patent is a continuation filing of U.S. Patent No. 10,083,012
`
`B2 (Ex. 2016, “the ’012 patent”), which is continuation of U.S. Patent No.
`
`9,400,640 B2 (Ex. 2015, “the °640 patent”).
`
`Theparties indicate that the ’793 patent is involved in
`
`CloudofChange, LLC vy. Lightspeed POS Inc., 6:21-cv-01102 (W.D. Tex.
`
`Oct. 22, 2021) (“the Lightspeed Litigation”). Pet. 1 (P[atent] O[wner]’s
`
`May2, 2022 amended complaint in the Lightspeed Litigation alleged
`
`infringement of... the ’793 patent.); Paper 5, 1.
`
`The 640 and ’012 patents are also involved in the Lightspeed
`
`Litigation, and were both previously involved in a lawsuit CloudofChange,
`
`LLC vy. NCR Corporation, 6-19-cv-00513 (W.D. Tex. Aug. 30, 2019) (“the
`
`NCRLitigation”), which resulted in a jury verdict for Patent Owner, but is
`
`still pending final judgment. See Paper 5 (referencing the NCR Litigation).
`
`The *640 patent is challenged in IPR2022-00779 and the ’012 patent
`
`is challenged in IPR2022-00997. Trial has been instituted for both
`
`proceedingsandis currently pending.
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`IPR2022-01143
`Patent 11,226,793 B2
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`C. The ’793 Patent
`
`The *793 patent relates to “a system and a method for online, web-
`
`based point of sale (POS) building and configuration.” Ex. 1001, Abstract.
`
`According to the ’793 patent, “[c]urrent practice in the field of assembling
`
`point of sale systems includes manually coding front-of-screen information,”
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`which “contains menu selections, page selections, and general answers to
`
`business questions.” /d. at 1:33-37.
`
`The *793 patent explains that “in the prior art, a specialized
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`programmerhad to design the layout and data for these POS touch keys,”
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`but “[w]ith this invention, the store operator will be able to build his POS
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`screens online over the Internet.” Ex. 1001, 3:5—7, 13-14.
`
`The *793 patent explains that its “POS builder system can be provided
`
`as a Service or deployed within a corporation,” and notesthat “[f]or
`
`example, Software as a Service (SMS)is a software distribution model in
`
`which applications are hosted by a vendoror service provider and made
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`available to customers over a network, typically the Internet.” Ex. 1001,
`
`6:11-16.
`
`D.
`
`Illustrative Claim
`
`1.
`comprising:
`
`A web-based point of sale (POS) builder system
`
`at least one server configuredto:
`
`communicate with one or more POS terminals over
`a network comprising the Internet, wherein the one or
`more POS terminals are configured to display one or more
`POS screens;
`
`receive, over the network from a POS builder
`interface, information used for creating or modifying the
`one or more POS screens including creating or modifying
`one or more display interfaces for display on the one or
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`Patent 11,226,793 B2
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`more POS screens, the one or more display interfaces
`being associated with one or more items;
`
`receive, from at least one of the one or more POS
`terminals over the network, further information regarding
`one or more POS transactions corresponding to the one or
`more items;
`
`configure the one or more POS terminals with the
`information over the network to create or modify based on
`the further information regarding one or more POS
`transactions the one or more POS screensdisplayed on the
`one or more POS terminals; and
`
`wherein the further information regarding the one or
`more POS transactions, the information used for creating
`or modifying the one or more POS screens, or a
`combination thereof comprises one or more of employee
`clock information, customer add/update information, item
`add/update information, promotion information, loyalty
`point
`information,
`discount
`information,
`taxation
`information,
`item cost
`information,
`or
`inventory
`information;
`
`wherein said further information regarding the one
`or more POS transactions
`relate to one or more
`transactions by corresponding customers respectively
`associated with at least one of said one or more POS
`terminals.
`
`Ex. 1001, 6:29-64.
`
`
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`Patent 11,226,793 B2
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`i. Evidence and Asserted Grounds
`
`Petitioner asserts that claims 1-4, 7-28, and 31-44 would have been
`
`unpatentable on the following grounds:
`
`~4, 7-28, 31-44 ~4, 7-28, 31-4
`
`Petitioner submits a declaration from Stephen Gray (Ex. 1002).
`
`Patent Owner submits a declaration from Alex Chang. (Ex. 2012).
`
`II. ANALYSIS
`
`A. Legal Standards
`
`Petitioner bears the burden of persuasion to prove unpatentability, by
`
`a preponderance of the evidence, of the claims challenged in the
`
`Petition. 35 U.S.C. § 316(e). This burden never shifts to Patent
`
`Owner. Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375,
`
`1378 (Fed. Cir. 2015). The Board may authorize an inter partes review if
`
`we determine that the information presented in the Petition and Patent
`
`Owner’s Preliminary Response showsthat there is a reasonable likelihood
`
`that Petitioner will prevail with respect to at least one of the claims
`
`challenged in the Petition. 35 U.S.C. § 314(a). “Wheninstituting inter
`
`partes review, the Board will authorize the review to proceed onall of the
`
`challenged claims and on all grounds of unpatentability asserted for each
`
`claim.” 37 C.F.R. § 42.108(a) (2021).
`
`! US Patent Pub. No. US 2007/0265935 A1, published Nov. 15, 2007
`(Ex. 1004).
`2 US Patent Pub. No. US 2005/0049921 A1, published Mar. 3, 2005
`(Ex. 1005).
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`B. Level of Ordinary Skill in the Art
`
`Petitioner contendsthat “[a] ‘person of ordinary skill in the art’
`
`(POSITA)on the ’793 patent’s effective filing date would have had a
`
`working knowledgeof designing, developing, and deploying web-based
`
`systems” and “would have a Bachelor of Science in computer science or a
`
`related field, and approximately two years of professional experience or
`
`equivalent study in the design and development of web-based systems,
`
`including web-based POS systems.” Pet. 7; see also Ex. 1002 4 29-30
`
`(repeating the same). Petitioner contendsthat “[a]dditional graduate
`
`education could substitute for professional experience, or significant
`
`experiencein the field could substitute for formal education.” Pet. 7; see
`
`also Ex. 1002 {| 29-30 (repeating the same). Patent Owner does not contest
`
`Petitioner’s articulation of the level of skill in the art. See Prelim. Resp. 14.
`
`For purposesof this decision, we analyze the asserted prior art with
`
`respect to the level of skill set forth by Petitioner.
`
`C. Claim Construction
`
`In an inter partes review, we construe a patent claim “using the same
`
`claim construction standard that would be used to construe the claim in a
`
`civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (2021).
`
`Underthis standard, the words of a claim generally are given their “ordinary
`
`and customary meaning,” which is the meaning the term would haveto a
`
`person of ordinary skill at the time of the invention, in the context of the
`
`entire patent including the specification. Phillips v. AWH Corp., 415 F.3d
`
`1303, 1312-13 (Fed. Cir. 2005) (en banc).
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`“wherein the further information regarding the one or more POS
`1.
`transactions, the information usedfor creating or modifying the one or
`more POS screens, or a combination thereof comprises one or more of”
`(all claims)
`
`Petitioner contendsthat “[t]his term recites twolists of alternatives
`
`and is met if any of ‘the information,’ “the further information,’ or ‘a
`
`combination thereof’ includes at least one of the enumerated information
`
`types.” Pet. 8 (citation omitted). Petitioner contendsthat “[a] POSITA
`
`would understand that ‘a combination’ of ‘the information’ and ‘the further
`
`information’ includes a combination ofall or some of each category of
`
`information (e.g., if information from each category is used to create/modify
`
`a POS screen).” /d. (citing Ex. 1002 { 49).
`
`Patent Ownerdisputes Petitioner’s reading of the claim language
`
`noted above, but simply alleges, without further explanation, that
`
`“Tc]Jonsistent with Judge Albright’s construction in the Lightspeedlitigation,
`
`the term ‘wherein the further information regarding the one or more POS
`
`transactions, the information used for creating or modifying the one or more
`
`POS screens, or a combination thereof comprises one or more of .. .’ should
`
`haveits plain and ordinary meaning.” Prelim. Resp. 22.
`
`Petitioner’s construction is not proposing a specific meaning for any
`
`particular term in the claim. Rather, it simply proposesa reading of the
`
`claim that uses the word “or” in the language noted aboveto read as an
`
`alternate, as one ordinarily would understand the use of the word “or.” We
`
`fail to see how the “plain and ordinary meaning” alleged by Patent Owner
`
`differs from Petitioner’s understanding of the claim.
`
`Moreover, we note that in addressing the challenges presented by
`
`Petitioner, Patent Ownerdoes not identify any particular deficiency based on
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`the difference between the “plain and ordinary meaning” and the
`
`understanding of the claim language presented by Petitioner.
`
`2.
`
`“display interfaces”(all claims)
`
`Petitioner proposes a construction of“display interfaces,” which
`
`Patent Ownercontendsis narrower than required by the claim. Pet. 8;
`
`Prelim. Resp. 23-24. Thereis no dispute at this time, however, that this
`
`natrowerinterpretation would at least meet the broader scope of the claim
`
`alleged by Patent Owner.
`
`3.
`
`“the input interface element” (claim 23)
`
`Petitioner proposes a construction of “the input interface element,”
`
`which Patent Owner does not dispute. Pet. 8—9; Prelim. Resp. 24.
`
`4.
`
`“the web server’/“the at least one web server” (claim 38)
`
`Petitioner proposes a construction of “the web server’’/“the at least
`
`one webserver,” which Patent Owner does not dispute. Pet. 9; Prelim.
`
`Resp. 24.
`
`5.
`
`“creating or modifyingfunctionality ofthe one or POS terminals”
`(claim 44)
`
`Petitioner proposes a construction of “creating or modifying
`
`functionality of the one or POS terminals,” which Patent Owner contendsis
`
`narrowerthan required by the claim. Pet. 9-10; Prelim. Resp. 24—26. There
`
`is no dispute at this time, however, that this narrower interpretation would at
`
`least meet the broader scope of the claim alleged by Patent Owner.
`
`Wedonotneed to construe any terms expressly to reach our decision.
`
`See Realtime Data LLC y. lancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019)
`
`(“The Board is required to construe ‘only those terms .. . that are in
`
`controversy, and only to the extent necessary to resolve the controversy.”
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`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`
`(Fed. Cir. 1999))).
`
`D. Discretion on Whetherto Institute Trial
`
`1.
`
`35 USC. $ 325(d)
`
`Patent Ownerasks that we exercise our discretion and deny institution
`
`under 35 U.S.C. § 325(d). Prelim. Resp. 29-36.
`
`35 U.S.C. § 325(d) states, in relevant part: “In determining whether to
`
`institute or order a proceeding under this chapter, chapter 30, or chapter 31,
`
`the Director may take into account whether, and reject the petition or request
`
`because, the same or substantially the same prior art or arguments previously
`
`were presented to the Office.” The Board uses a two-part frameworkfor
`
`evaluating arguments under § 325(d):
`
`the same or substantially the same art
`(1) whether
`previously was presented to the Office or whether the same or
`substantially the same arguments previously were presented to
`the Office; and
`
`(2) if either condition of first part of the framework is
`satisfied, whether the petitioner has demonstrated that the Office
`erred in a manner material to the patentability of challenged
`claims.
`
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Gerdte GmbH,
`
`IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential).
`
`“{T]he Becton, Dickinson factors provide useful insight into how to apply
`
`the framework under 35 U.S.C. § 325(d).” /d. at 9 (footnote omitted). The
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`non-exclusive Becton, Dickinson factorsare:
`
`(a) the similarities and material differences between the
`asserted art and the prior art involved during examination;
`
`(b) the cumulative nature of the asserted art and the prior
`art evaluated during examination;
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`Patent 11,226,793 B2
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`(c) the extent to which the asserted art was evaluated
`during examination, including whetherthe prior art wasthe basis
`for rejection;
`
`(d) the extent of the overlap between the arguments made
`during examination and the mannerin which Petitionerrelies on
`the prior art or Patent Ownerdistinguishes the priorart;
`
`(e) whether Petitioner has pointed out sufficiently how the
`Examinererred in its evaluation of the asserted prior art; and
`
`to which additional evidence and facts
`(f) the extent
`presented in the Petition warrant reconsideration of the prior art
`or arguments.
`
`Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper
`
`8 at 17-18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first
`
`paragraph). Becton, Dickinson factors(a), (b), and (d) relate to the first part
`
`of the Advanced Bionics framework (whether the same or substantially the
`
`sameart or arguments previously were presented to the Office), and Becton,
`
`Dickinson factors(c), (e), and (f) relate to the second part of that framework
`
`(previous Office error). Advanced Bionics, IPR2019-01469, Paper6 at
`
`9-11. Below, we use this framework to evaluate which,if any, of
`
`Petitioner’s grounds of unpatentability implicate § 325(d).
`
`As explained below, both Woycik and Tengler were before the Office,
`
`but Woycik was not applied by the Examiner and Tengler wasnot applied in
`
`the same mannerasset forth in the Petition during the prosecution of the
`
`application that resulted in the ’793 patent. Accordingly, we look to the
`
`second part of the Advanced Bionics framework and consider Becton,
`
`Dickinson factors (c), (e), and (f).
`
`Patent Ownercontendsthat “[b]ecause Petitioner fails to identify any
`
`error that the Examiner madein finding the limitations of the ’793 Patent
`
`patentable over Woycik and Tengler, references that the Examiner expressly
`
`10
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`searched, Petitioner cannotsatisfy its burden of showing that the Office
`
`committed ‘material error’ in allowing the ’793 Patent.” Prelim. Resp. 35.
`
`Patent Ownerfurther contendsthat “Petitioner ignored the fact that the
`
`Examiner expressly searched both references.” /d. at 36. Other than
`
`providing the general allegations that the Examiner considered Woycik and
`
`Tengler, Patent Owner provides no explanation regarding the extent of
`
`consideration given the references or even where in the prosecution history
`
`(Ex. 1003) those references were applied by the Examiner.
`
`Woycik and Tengler are both listed on the face of the ’793 patent.
`
`Ex. 1001 (56) (“References Cited”). Based on our review of the prosecution
`
`history, Woycik wasneverapplied in a rejection during the prosecution that
`
`resulted in the ’793 patent. Nor does Patent Ownerallege that Woycik was
`
`applied in any rejection. Tengler was applied by the Examinerin an
`
`obviousness rejection of dependent claims. See Ex. 1003, 101-102.
`
`Specifically, the Examiner foundthat
`
`Tengler teaches the feature wherein the at least one web serveris
`further configured to receive from the one or more POS terminals
`one or more videos captured by one or more cameras, wherein
`the one or more videos are correlated with the one or more POS
`transactions and wherein the one or more videos andthe oneor
`more POS transactions are indexed using a same clock
`(paragraphs [0018] and [0103]).
`
`Id. at 102. Patent Owner does not identify, nor can we find, anywherein the
`
`prosecution history where a teaching from Tengler asserted by the Examiner
`
`was disputed by Patent Owner. In fact, after the Examiner provided the
`
`reasons for allowance, Patent Ownerexpressly stated that “Applicant takes
`
`no position regarding any reasonsfor allowance presented by the Examiner
`
`(in the Notice of Allowance and/or elsewhere in the application’s file
`
`history)” and “any reasons for allowance presented by the Examiner should
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`11
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`not be attributed to Applicant as an indication of the basis for Applicant's
`
`belief that the claims are patentable.” /d. at 14.
`
`Based on the record before us, we find Petitioner’s mapping of the
`
`claims to Woycik and Tengler sufficient to identify material error. As noted
`
`above, Woycik wasnot specifically applied to any claim in a rejection. As
`
`Petitioner points out, although Tengler was applied in a rejection, it was
`
`used in a very limited fashion. And, as noted above, the teachings from
`
`Tengler asserted by the Examiner during prosecution were not disputed by
`
`Patent Owner.
`
`In this Petition, Woycik is the sole reference in one of Petitioner’s two
`
`challenges, and Tengleris the sole reference applied in the other challenge.
`
`Although the sameart was previously before the Office, the application of
`
`that art was virtually non-existent during prosecution. Based on the limited
`
`record before us, which includes effectively no specific argument from
`
`Patent Owner, Petitioner’s mapping of essentially every element of every
`
`challenged claim to each of Woycik and Tengleris sufficient to identify
`
`material error. As explained below, for example, with respect to claim 1,
`
`Petitioner has a established a reasonable likelihood of success on eachofits
`
`challenges.
`
`Accordingly, we decline Patent Owner’s invitation for us to apply our
`
`discretion under 35 U.S.C. § 325(d) to deny the petition.
`
`2.
`
`35 USC. § 314(a)
`
`Patent Ownerasksthat we denyinstitution under 35 U.S.C. § 314(a)
`
`in view of the Lightspeed Litigation. Prelim. Resp. 36-48. Patent Owner
`
`acknowledgesthe recent guidance from the Director of the United States
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`12
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`Patent and Trademark Office regarding discretionary denials.? /d. at 43.
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`Patent Owner, however, fails to appreciate that the Guidance Memorequires
`
`that “the PTAB will not discretionarily deny institution in view ofparallel
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`district court litigation wherea petitioner presents a stipulation not to pursue
`
`in a parallel proceeding the same grounds or any grounds that could have
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`reasonably been raised before the PTAB.” Guidance Memo3.
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`In this proceeding, Petitioner stipulates that “if this IPR is instituted
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`and Fintiv'“| remains precedential at the timeofinstitution, Petitioner
`
`stipulates not to pursue in the district court any groundraised or that could
`
`have reasonably been raised in IPR (1.e., under §$102 or 103 based on prior
`
`art patents or printed publications alone).” Pet. 11.
`
`Accordingly, we decline Patent Owner’s invitation for us to apply our
`
`discretion under 35 U.S.C. § 314(a) to deny the petition.
`
`FE. Ground 1—Woycik
`
`Petitioner asserts that claims 1-4, 7-28, and 31—44 are unpatentable
`
`under 35 U.S.C. § 103 as obvious over Woycik in view of the knowledge of
`
`a person of ordinary skill in the art. Pet. 21-72.
`
`1. Woycik
`
`Woycik “relates generally to computer-based systems used for
`
`ordering goods and services and, more particularly, to self-service terminals
`
`3 USPTO, Memorandum on Interim Procedure for Discretionary Denials in
`AIA Post-grant Proceedings with Parallel District Court Litigation
`(June 21, 2022), available at
`uspto.gov/sites/default/files/documents/interim_procdiscretionarydenials_
`aiaparalleldistrictcourtlitigationmemo20220621 pdf (“Guidance
`Memo”).
`+ Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar.20, 2020)
`(designated precedential May 5, 2020).
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`and software tools for administering self-service terminals.” Ex. 1004 § 4.
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`Woycik explains that “Point of Sale (POS) systems provide a means by
`
`which ordering and purchasing transactions can be carried out electronically
`
`at the store or other venue where the goodsor services are supplied.” /d.
`
`416. According to Woycik, “[s]elf-service POS systemstypically have a
`
`central computer acting as a server and one or more terminals whichare the
`
`individual client units that are used by customers to input their orders.” /d.
`
`q 7.
`
`Woycik describes an “administration tool application [that] includes a
`
`menu editor that enables the administrator to create and edit the interactive
`
`menu screens providedbythe self-order application at the self-service client
`
`terminals.” Ex. 1004 4 16. “The menu editor enables the administrator to,
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`during creation/editing of an interactive menu screen, select a template for
`
`the interactive menu screen and associate functions with the buttons
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`included on the selected template.” Jd. 4 19.
`
`Woycik explains that “there are many possible arrangements and the
`
`administrative tool application may be located at a variety of locations,
`
`including .
`
`.
`
`. an offsite location provided that the administrative tool
`
`application is able to communicate with the server.” Ex. 1004 4 17. One
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`“approachis to have the administrative tool loaded on the central server 22
`
`and then provide the chain operator 20 with web accessto the central server
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`22.” Id. 475.
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`With Woycik’s administration tool, “the store owner or chain operator
`
`can carry out administration of the system using a simplified user interface
`
`that requireslittle if any training or experience with computers.” Ex. 1004,
`
`480. “Furthermore, the web services platform provided by .NET can be
`
`used to provide remote administration by the chain operator from any
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`14
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`Internet-connected computer (such as a home office computer) so that
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`various store locations can be configured from a single computer.” /d.
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`According to Woycik,“[t]he programming needed to implementthis
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`software architecture strategy is known to those skilled in the art.” /d.
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`2. Petitioner’s Challenge Based on Woycik
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`The only dispute with respect to Petitioner’s challenge based on
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`Woycik at this stage of the proceeding is whether Woycik teaches“at least
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`one server configured to: communicate with one or more POS terminals
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`over a network comprising the Internet” and “receive, over the network from
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`a POS builder interface, information used for creating or modifying the one
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`or more POS screens.” Prelim. Resp. 49-54. We have reviewed Petitioner’s
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`contentions regarding the other limitations recited in claim 1, which Patent
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`Ownerdoesnot dispute at this time, and determinethat Petitioner has
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`established sufficiently that Woycik teaches those limitations. Our
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`discussion below is directed to the disputed limitations.
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`a) atleast one server configured to ... communicate with one or more POS
`terminals over a network comprising the Internet
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`Petitioner contends that Woycik’s central server 22 correspondsto the
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`“at least one server’ recited in claim | and “is configured to communicate
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`with kiosks 16, 30, and/or 36 over a network comprising ‘Internet 18.’” See
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`Pet. 22 (citing Ex. 1004 § 71, Fig. 1). Petitioner provides an annotated
`
`version of Woycik’s Figure 1, reproduced below,to illustrate its contentions.
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`15
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`IPR2022-01143
`Patent 11,226,793 B2
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`PP LMM
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`The figure reproduced aboveis Figure 1 from Woycik, which is an
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`“illustrat[ion of] an exemplary self-service ordering system” (Ex. 1004
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`431), along with Petitioner’s annotations labeling the portionsat issue with
`
`respect to claim 1.
`
`Patent Owner respondsthat “Woycik expressly discloses
`
`communications with the POS over a LAN.” Prelim. Resp. 50 (citing
`
`Ex. 1004 4 74). Patent Owner contendsthat “Woycik further states, the
`
`local server [16] ‘stores updated configuration information’ to then
`
`communicate with the local kiosks.” /d. (citing Ex. 1004 4§ 71, 74-75,
`
`Fig. 1 (item 16), Fig. 3 (item 82); Ex. 2012 74 59-60). Patent Owner’s
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`16
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`
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`IPR2022-01143
`Patent 11,226,793 B2
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`contentions appear to be based solely on its assessment of local server 16 as
`
`the recited “at least one server.” See id. at 50-51 (“Thus, Woycik does not
`
`teach that the ‘local server’ communicates with the local kiosks over a
`
`network connection comprising the Internet.’’).
`
`Patent Owner neveraddress Petitioner’s contention that Woycik’s
`
`central server 22 correspondsto the “at least one server” recited in claim 1.
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`Patent Owner’s citation to Mr. Cheng’s testimony to support its position
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`does not help, and instead, appears to undercut the credibility of
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`Mr. Cheng’s testimony because that testimony,too, fails to address the
`
`teachings of Woycik relied on by Petitioner. See Prelim. Resp. 50
`
`(citing Ex. 2012 {| 59-60, whichreiterates Patent Owner’s allegation).
`
`Paragraph 71 of Woycik, cited by Petitioner, explains that “the local
`
`(on-site) server 16 1s connected to the Internet 18 which allows remote
`
`access by the restaurant chain operator 20 and enables the local server 16 to
`
`access a central server 22 for software and media updates.” And this is
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`clearly depicted in the figure reproduced above. At this stage of the
`
`proceeding, Petitioner’s contentions regarding Woycik’s central server 22
`
`“communicat[ing| with one or more POS terminals over a network
`
`comprising the Internet” as recited in claim | is effectively unrebutted.
`
`b) atleast one server configured to .. . receive, over the networkfrom a
`POSbuilderinterface, information usedfor creating or modifying the
`one or more POS screens
`
`Petitioner contends that “Woycik discloses ‘[u]sing a standard web
`
`browser’ and Internet 18, chain operator 20 has webaccessto an
`
`‘administrative tool loaded on the central server’ 22/84.” Pet. 24 (citing Ex.
`
`1004 4} 17, 71, 75, 80-81, 121-122, Figs. 1, 3). Petitioner explains that
`
`“It]he ‘administrative tool’ includes a ‘user interface application’ ‘accessed
`
`17
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`Patent 11,226,793 B2
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`by the administrator to perform various administrative functions such as
`
`configuring kiosks, creating and editing menusandavailable food items, and
`
`specifying tax and paymentfeatures of the system.” /d. at 24—25 (citing
`
`Ex. 1004 99 73, 79).
`
`Patent Owner contendsthat “Petitioner misrepresents Woycik”
`
`because “Woycik expressly states the menu editor of the administration tool
`
`[is accessed from the] local server.” Prelim. Resp. 52-53. Again, Patent
`
`Ownerfails to address the express teachings from Woycik cited by
`
`Petitioner and noted above.
`
`Patent Owner doesnot dispute that Woycik’s administration tool
`
`includes a “POS builder interface” as recited in claim 1. As explained
`
`above,and by Petitioner (Pet. 24), Woycik expressly states that one
`
`“approachis to have the administrative tool loaded on the central server 22
`
`and then provide the chain operator 20 with web accessto the central server
`
`22” (Ex. 1004 9 75). Woycik explains that “the web services platform
`
`provided . .. can be used to provide remote administration by the chain
`
`operator from any Internet-connected computer.” Ex. 1004 § 80; see also id.
`
`{95 (‘remote administration using the administrative tool 98 can be carried
`
`out in any of the various waysdiscussed further above.”).
`
`Based onthe record before us, Petitioner has established a reasonable
`
`likelihood of success on at least its challenge to claim 1 based on Woycik.
`
`F. Ground 2—Tengler
`
`Petitioner asserts that claims 1-4, 7-28, and 31-44 are unpatentable
`
`under 35 U.S.C. § 103 as obvious over Tengler in view of the knowledge of
`
`a person of ordinary skill in the art. Pet. 72-126.
`
`18
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`IPR2022-01143
`Patent 11,226,793 B2
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`1. Tengler
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`Tengler relates to “an apparatus that includes stations in a quick-serve
`
`commercial establishment .
`
`.
`
`. enabling users to enter orders, check the status
`
`of orders, and assemble orders for delivery” and “a network interconnecting
`
`the stations.” Ex. 1005 911. “[T]he invention features a method that
`
`includes enabling a manager to access a managementdatabase of a quick-
`
`serve restaurant location remotely through a webinterface.” Jd. ¥ 22.
`
`“[M]anagers can view information about the multiple restaurants 2 using
`
`interfaces 192 and 196 over the Internet” and “can also modify menus and
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`changeprices using interfaces 192 and 196.” /d. 473. “A user interface
`
`designer 614 allows managementto edit the user interface of the register and
`
`self-service applications and also saves the specifications in the database
`
`602.” Id. § 103. “A store resident web server 620 enables external
`
`managers to view restaurant status information in the database 602 using the
`
`interface 190.” /d. “The store resident web server 620 also allows managers
`
`to edit the user interface of the register and self-service applications and also
`
`saves the specifications in the database 602.” /d.
`
`2. Petitioner’s Challenge Based on Tengler
`
`The only dispute with respect to Petitioner’s challenge based on
`
`Tengler at this stage of the proceeding is whether Tengler teaches “a web-
`
`based point of sale (POS) builder system” and “at least one server
`
`configured to: communicate with one or more POS terminals over a
`
`network comprising the Internet.” Prelim. Resp. 54-57. We have reviewed
`
`Petitioner’s contentions regarding the other limitations recited in claim 1,
`
`which Patent Owner doesnot dispute at this time, and determine that
`
`Petitioner has established sufficiently that Tengler teaches those limitations.
`
`Our discussion below is directed to the disputed limitations.
`
`19
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`IPR2022-01143
`Patent 11,226,793 B2
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`a) aweb-basedpoint ofsale (POS) builder system
`
`The phrase “web-based point of sale (POS) builder system”appears
`
`only in the preamble of the claims. Petitioner contendsthat “[a]s explained
`
`for 1[c], Tengler discloses a POS builder system becauseit includes ‘user
`
`interface designer 614 [that] allows managementto edit the user interface of
`
`the register and self-service applications and also saves the specifications in
`
`the database 602.’” Pet. 73-74 (citing Ex. 1005 4 103, 107, 121). The
`
`explanation for 1[c] referenced by Petitioner further notes that “7engler
`
`discloses a POS builder as ‘user interface designer 614’ remotely accessible
`
`via web server 620” and that “[m]anagers access the POS builder through
`
`manager graphical user interfaces such as 190, 192, and 196 (POS builder
`
`interface), accessible via Internet communication with server 464 (over the
`
`network including the Internet).”” Pet. 80 (footnote omitted) (citing Ex. 1005
`
`44 73, 103, 107, 109, 121, Figs. 7, 7A—7B).
`
`Patent Owner does not dispute that Tengler teaches “a point of sale
`
`(POS) builder system”and that it can be accessed via the internet, but
`
`contendsthat it is not Tengler’s system is not “a web-basedpoint of sale
`
`(POS) builder system,” because it does not require the Internet. See Prelim.
`
`Resp. 56 (“[A] web-based point of sale (POS) builder system”is “a point of
`
`sale (POS) builder system that requires the internet.” (quoting Ex. 2012
`
`4] 76)), Id. at 57 (“While Tengler discloses a ‘Multi-Unit-Management-
`
`Interface’ that can be used by an ‘off-site person,’ to access the store-
`
`resident web server 620 over the internet, it is not required.”(citing Ex.
`
`1005 4] 108-111; Ex. 2012 4 78)).
`
`Initially, we note that, as explained above, the phrase “web-based
`
`point of sale (POS) builder system”appears only in the preamble of the
`
`claims. Wedo notsee that this phrase adds anything beyond that which is
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`20
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`IPR2022-01143
`Patent 11,226,793 B2
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`recited in the body of the claims. “In general, a preamble limits the
`
`invention if it recites essential structure or steps, or if it is ‘necessary to give
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`life, meaning, and vitality’ to the claim.” Catal
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