USINO. GOV
`7S
`571-272-7822.
`
`Paper 26
`Date: November 3, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LIGHTSPEED COMMERCEINC. and
`CLOVER NETWORK, LLC,
`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.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`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.”).
`
`
`7S
`571-272-7822.
`
`Paper 26
`Date: November 3, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LIGHTSPEED COMMERCEINC. and
`CLOVER NETWORK, LLC,
`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.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`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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`Patent 11,226,793 B2
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`CloudofChange, LLC (“Patent Owner’) file a Preliminary Response.
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`Paper 6 (“Prelim. Resp.”). We instituted an inter partes review of claims 1—
`
`4, 7-28, and 31-44 of the ’793 patent on all grounds of unpatentability
`
`alleged in the Petition. Paper 8 (“Institution Decision”or “Inst. Dec.”).
`
`Clover Network, LLC wasjoined to this proceeding on June 8, 2023. Paper
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`18. This decision refers to Lightspeed Commerce Inc. and Clover Network,
`
`LLC,collectively, as “Petitioner.”
`
`After institution of trial, Patent Ownerfiled a Response (Paper 12,
`
`“PO Resp.’’), Petitioner filed a Reply (Paper 16, “Pet. Reply”), and Patent
`
`Ownerfiled a Sur-Reply (Paper 21, “PO Sur-Reply”).
`
`An oral hearing was held on August 2, 2023, and the record includes a
`
`transcript of the hearing. Paper 25 “Transcript” or “Tr.”).
`
`Wehavejurisdiction under 35 U.S.C. § 6. This Final Written
`
`Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasonsthat
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`follow, we determine that Petitioner has shown bya preponderance ofthe
`
`evidence that claims 1-4, 7-28, and 31-44 of the ’793 patent are
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`unpatentable.
`
`B. Related Matters
`
`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 complaintin the Lightspeed Litigation alleged
`
`infringement of... ‘the ’793 patent’’’); Paper 5, 1.
`
`The ’793 patent is a continuation filing of U.S. Patent No. 10,083,012
`
`B2 (“the ’012 patent”), which is continuation of U.S. Patent No. 9,400,640
`
`B2 (“the ’640 patent’).
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`IPR2022-01143
`Patent 11,226,793 B2
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`The 640 and ’012 patents are also involved in the Lightspeed
`
`Litigation. The ’640 and ’012 patents were both previously involved in a
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`lawsuit CloudofChange, LLC vy. NCR Corporation, 6:19-cv-00513 (W.D.
`
`Tex. Aug. 30, 2019) (“the NCR Litigation”), which resulted in a jury verdict
`
`for Patent Owner, butis 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
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`proceedingsandfinal written decisions have been entered.
`
`C. The ’793 Patent
`
`The *793 patent relates to “a system and a method for online, web-
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`based point of sale (POS) building and configuration.” Ex. 1001, Abstract.
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`According to the ’793 patent, “[c]urrent practice in the field of assembling
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`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
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`business questions.” /d. at 1:33-37. The ’793 patent explainsthat “in the
`
`prior art, a specialized programmerhad to design the layout and data for
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`these POS touch keys,” but “[w]ith this invention, the store operator will be
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`able to build his POS screens online over the Internet.” /d. at 3:5—7, 13-14.
`
`“In this invention, this product data and the touch key structure is
`
`stored in relational databases in the back office which is stored on the web
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`servers 36 shown in FIG. 3.” Ex. 1001, 2:67—3:3. Figure 3 from ’793 patent
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`is reproduced below.
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`
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`IPR2022-01143
`Patent 11,226,793 B2
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`af Relation DB
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` Relational DB
`
`POS f
` POS
`
`
`
`Store N
`
`Web Brawser
`
`agnn--- ee] os
`Saa
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`“Fligure] 3 1s a system diagram for web-based back office which supports
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`point of sale terminals” (id. at 2:41—42) and “showsa high level diagram of
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`this invention”(id. at 3:57).
`
`The discussion of Figure 3 spanslittle more than one column ofthe
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`°793 patent. See Ex. 1001, 3:57-4:62. And that discussion lacks any
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`specificity that would indicate that the web-based back office architecture,
`
`itself, 1s anything other than well-known. The Specification explains, for
`
`example:
`
`POS 31 is in Store 1 and POS 2 (32) is in Store 2. Each POS
`includes personal computer hardware and software. Additional
`POS terminals beyond those shown,as well as additional stores
`beyond the two shown,are within the scope of the invention.
`Each POS normally operates with a hardware/software
`connection 35 to the Internet or Web.
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`
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`IPR2022-01143
`Patent 11,226,793 B2
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`Id. at 3:59-65. “[I]f the web goes down,the POS terminal continuesto
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`operate” because “[t]here is a ‘loose coupling’ of the POS to the back office
`
`(BO): the POS to BO connection is not required for the basic business
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`functions of the POS”and “[a]ll transaction data is stored in a relational
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`database on the hard drive in the POS.” /d. at 3:65—4:3.
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`“The POS terminals communicate via HTTP protocol (hypertext
`
`transfer protocol) 35 with Back-office BO software, which is implemented
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`on web servers 36, which can be located anywhere in the world.” Ex. 1001,
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`4:36-40. The ’793 patent explains that its “POS builder system can be
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`providedas a service or deployed within a corporation,” and notesthat “[flor
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`example, Software as a Service (SAAS)is a software distribution model in
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`which applications are hosted by a vendoror service provider and made
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`available to customers over a network, typically the Internet.” /d. at 6:11—
`
`16.
`
`D.
`
`Illustrative Claim
`
`1.
`comprising:
`
`A web-based point of sale (POS) builder system
`
`at least one server configuredto:
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`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 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;
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`
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`Patent 11,226,793 B2
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`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 screens displayed 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.
`
`i. Evidence and Asserted Grounds
`
`Petitioner asserts that claims 1—4, 7-28, and 31-44 would have been
`
`unpatentable on the following grounds:
`
`
`
`
`' The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284 (2011), amended 35 U.S.C. § 103, effective March 16, 2013.
`Because the application from which the ’640 patent issued wasfiled before
`this date, the pre-AIA version of § 103 applies.
`7 US Patent Pub. No. US 2007/0265935 A1, published Nov. 15, 2007
`(Ex. 1004).
`3 US Patent Pub. No. US 2005/0049921 A1, published Mar. 3, 2005
`(Ex. 1005).
`
`
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`Petitioner submits a declaration from Stephen Gray. Ex. 1002. Patent
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`Ownersubmits a declaration from Alex Cheng. Ex. 2015%.
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`II. ANALYSIS
`
`A. Legal Standards
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`Petitioner bears the burden of persuasion to prove unpatentability, by
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`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,
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`1378 (Fed. Cir. 2015).
`
`As seen above, Petitioner’s challenges are based on obviousness. A
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`claim is unpatentable under 35 U.S.C. § 103 if the differences between the
`
`claimed invention and the prior art are such that the claimed invention as a
`
`whole would have been obvious at the time of the claimed invention to a
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`person having ordinary skill in the art to which the claimed invention
`
`pertains. KSR Int’ Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The
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`question of obviousnessis resolved based on underlying factual
`
`determinations including:
`
`(1) the scope and content of the prior art; (2) any
`
`differences between the claimed subject matter and the priorart; (3) the level
`
`of ordinary skill in the art; and (4) whenin the record, objective evidence of
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`non-obviousness. Graham vy. John Deere Co. ofKan. City, 383 U.S. 1, 17-
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`18 (1966).
`
`B. Level of Ordinary Skill in the Art
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`The level of ordinary skill in the art is “a prism or lens” through which
`
`weviewthe prior art and the claimed invention. Okajima v. Bourdeau, 261
`
`+ Patent Ownerincludes two Exhibit 2015’s in the record. Whenthis
`decision references Exhibit 2015, those references are to Mr. Cheng’s
`Declaration.
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`
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`Patent 11,226,793 B2
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`F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a
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`hypothetical person presumed to have knownthe relevantart at the time of
`
`the invention. [n re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In
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`determining the level of ordinary skill in the art, we may considercertain
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`factors, including the “type of problems encounteredin the art; prior art
`
`solutions to those problems; rapidity with which innovations are made;
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`sophistication of the technology; and educational level of active workers in
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`the field.” /d.
`
`1. Petitioner
`
`Petitioner contendsthat “[a] ‘person of ordinary skill in theart’
`
`(POSITA)on the ’793 patent’s effective filing date would have had a
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`working knowledgeof designing, developing, and deploying web-based
`
`systems” and “would have a Bachelor of Science in computer science or a
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`related field, and approximately two years of professional experience or
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`equivalent study in the design and development of web-based systems,
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`including web-based POS systems.” Pet. 7; see also Ex. 1002 4 29-30
`
`(repeating the same). Petitioner contends that “[a]dditional graduate
`
`education could substitute for professional experience, or significant
`
`experiencein the field could substitute for formal education.” Pet. 7; see
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`also Ex. 1002 4] 29-30 (repeating the same).
`
`2. Patent Owner
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`Patent Ownerdisputes Petitioner’s characterization of a person of
`
`ordinary skill in the art. PO Resp. 13-15. Patent Owner contendsthat
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`“Petitioner’s proposed definition of a POSITA doesnot require any
`
`experience with retail POS systems—let alone building POS screens—that
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`Patent 11,226,793 B2
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`are the field of the ’[793]° patent” and “makes experiencein retail POS
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`systems optional.” /d. at 13-14 (citing Ex. 2015 § 30).
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`Patent Owner contendsthat its “proposed definition of a POSITA
`
`remedies this deficiency by including experience or equivalent study in the
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`field of the °793 Patent, retail point of sale (‘POS’) systems, including
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`experience with building POS screens.” PO Resp. 14. According to Patent
`
`Owner“a proper definition of a POSITA .
`
`.
`
`. includes experience or
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`additional study in the field of web-based POS builder software and
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`systems.” /d. at 15. Patent Owner contendsthat “Stephen Gray is not a
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`POSITA with reference to the °793 Patent” and “[t]estimony of an expert
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`that fails to meet the definition a POSITA should be excluded.”° Jd.
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`3. Analysis
`
`The level of skill in the art is a reference point for gauging what
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`would have been obvious based on the reference disclosures. See Okajma,
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`261 F.3d at 1355. In other words, the lens of the level of ordinary skill in
`
`the art does not changea prior art’s disclosure, though it may change one’s
`
`understanding of what is disclosed. Patent Owner does not explain how its
`
`definition provides a reference point that would alter the Petition’s assertion
`
`of obviousness.
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`Indeed, as noted by Petitioner, “P[atent ]O[wner]’s expert does not
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`know how P[atent ]O[wner]’s proposed definition would impact any
`
`opinions in his supporting declaration.’” /d. (citing Ex. 1029, 10:20—11:11);
`
`see also Ex. 1034, 10-14. Patent Ownerprovides no rebuttal to this position
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`in its Sur-Reply, other than alleging that “[a]lthough experienced in “point-
`
`> Patent Ownerreferences the 640 patent.
`° There has been no motion filed by Patent Ownerto exclude the testimony
`of Mr. Gray.
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`of-transaction techniques,’ Petitioner’s expert is not a POSITA with respect
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`to the °793 Patent undereither standard.” PO Sur-Reply 32 (citing PO Resp.
`
`13-15).
`
`Petitioner’s position has support in the record, not only based on the
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`statements from Patent Owner’s expert noted above, but also with respect to
`
`the issues presented in the Patent Owner Response. With respect to the
`
`challenges based on Woycik, for example, the disputed issuesrelate to
`
`server considerations. There is no dispute that Woycik teaches POS builder
`
`software. Indeed, at oral hearing Patent Owner expressly acknowledged that
`
`is taught in Woycik. See Tr. 42:3—7 (When asked: “[D]oes Woycik teach
`
`point-of-sale builder software?” counsel for Patent Owner answered: “I
`
`don’t think we’ve disputed that that the administrative tool is building
`
`things. Where we disagree is that Woycik’s administrative tool doesn’tfit
`
`within the claimed architecture of any of the three Patents. But, I mean,
`
`Woycik talks about building menus and someother screens.’’). The disputes
`
`regarding the purportedly “claimed architecture” concern whether Woycik
`
`requires an in-store server (PO Resp. 28-32), whether Woycik teaches
`
`receiving further information from POS terminals over the Internet (id. at
`
`32-33), and whether Woycik teaches configuring POS terminals with the
`
`information over the Internet (id. at 33-35).
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`As explained below, we do not reach the challenge based on Tengler.
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`Accordingly, we discern no reason that Mr. Gray’s qualifications are
`
`insufficient to testify on the disputed issues.
`
`Nevertheless, we also agree with Petitioner that a person of ordinary
`
`skill in the art is not limited to someone experienced building POS screens.
`
`Although, as noted above, the ’793 patent characterizes the novelty as
`
`eliminating the need for a specialized programmer to build POS screens, we
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`10
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`knowthat is not novel, as Patent Owner,itself, now acknowledgesas
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`explained above. Andthat is not even recited in the claimsof the ’793
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`patent. Rather, what is now alleged by Patent Ownerto be the novel aspect
`
`of the invention relates to the web-based back office system.
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`Andeven if we accept that experience with POS systems is necessary,
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`as Petitioner notes, and Patent Owner doesnotdispute, “Mr. Gray explains
`
`his work experience ‘had to do with point of sale and point of transaction.’”
`
`See Pet. Reply 3-4 (citing Ex. 1030, 53:3—54:2). Patent Owner makes much
`
`of purported differences between point of sale and point of transaction, but
`
`never provides any meaningful articulation of what those actual differences
`
`are or how they affect Mr. Gray’s qualificationsto testify in this proceeding.
`
`See Pet. Reply 4; PO Sur-Reply 32 (stating without further discussion:
`
`“Although experienced in “point-of-transaction techniques,’ Petitioner’s
`
`expert is not a POSITA with respect to the 793 Patent undereither standard.
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`POR, 13-15.”).
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`For purposes of this decision, we analyze the asserted prior art with
`
`respect to the level of skill set forth by Petitioner, but we see no meaningful
`
`difference in the outcomeof this decision if we were to apply the level of
`
`skill in the art set forth by Patent Owner.
`
`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
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`11
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`entire patent including the specification. Phillips v. AWH Corp., 415 F.3d
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`1303, 1312-13 (Fed. Cir. 2005) (en banc).
`
`ThePetition offers constructions for several limitations. Pet. 8—9. In
`
`Petitioner’s reply, however, Petitioner notes that “[t]he Petition included
`
`clarifications for several claim terms,” but because “P[atent ]O[wner] does
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`not dispute Petitioner’s clarifications .
`
`.
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`. construction of these terms is
`
`unnecessary.” Pet. Reply 4. Petitioner notes that “Prior Markman orders
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`[from the NCR Litigation] do not impactthe Petition’s grounds.” Pet. 7 n.2
`
`(citing Exs. 1024, 1025).
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`Patent Ownerdisputes Petitioner’s contention regarding the prior
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`Markman orders. PO Resp. 15—17. Patent Owner“proposes that the PTAB
`
`adopt Judge Albright’s constructions in the Lightspeed Litigation andfinal
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`constructions in the NCR Litigation that are applicable to this case.” /d. at
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`17. According to Patent Owner,“[s|pecifically, the Board should adopt the
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`Court’s construction for “POS screens’ and “web-based point of sale (POS)
`
`builder system.’” /d.
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`Patent Owner addressesonly the preamble of claims 1, 27, and 42-44
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`(reciting “a web-based point of sale (POS) builder system’). PO Resp. 17-
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`18. Referencing the claim construction orders from the NCR Litigation,
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`Patent Owner contendsthat the preambles of claims 1, 27, and 42—44 should
`
`be construed as a point of sale (POS) builder system that requires the
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`internet.
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`/d. (citing Ex. 1024, 1).
`
`In its Reply, Petitioner notes that Patent Owner’s contentions
`
`regarding the preamble are contrary to the positions taken by Patent Owner
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`in the Lightspeed Litigation. Pet. Reply 4-5. According to Petitioner,
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`however, “even considering the preamble is limiting—it does not
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`‘preclude[| a system that allows both access locally and accessvia the
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`12
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`Internet.’” /d. at 5 (citing Inst. Dec. 21). In response, Patent Owner
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`reiterates that it “asks this Panel to adopt the Court’s prior constructions for
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`all claims.” PO Sur-Reply 10.
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`Pursuant to our authorization, and without objection from Patent
`
`Owner, Petitioner submitted a Supplemental Claim Construction Order from
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`the District Court in the Lightspeed Litigation, including final claim
`
`constructions for that proceeding. Ex. 1031. That order determined that the
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`preambleis not limiting.’ We agree.
`
`“In general, a preamble limits the inventionif 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
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`801, 808 (Fed. Cir. 2002). A preamble, however, “generally is not limiting
`
`when the claim body describes a structurally complete invention such that
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`deletion of the preamble phrase doesnotaffect the structure or steps of the
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`claimed invention.” /d. at 809.
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`Weagree with Petitioner and the Supplemental Claim Construction
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`Order from the District Court in the Lightspeed Litigation that the preamble
`
`is unnecessary to understand the claim. Here, the claim body describes a
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`structurally complete invention such that deletion of the preamble phrase
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`does not affect the structure or steps of the claimed invention.
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`Wedonotneed to construe any terms expressly to reach our decision.
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`See Realtime Data, LLC v. lancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019)
`
`(“The Board is required to construe ‘only those terms. .
`
`. that are in
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`controversy, and only to the extent necessary to resolve the controversy.’”
`
`’ The parties agree that this issue has been fully briefed. See Tr. 21:2-6,
`38:25-39:3.
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`13
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`(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
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`(Fed. Cir. 1999))).
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`D. Secondary Considerations ofNon-Obviousness
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`Patent Owneralleges that “[s]econdary considerations further confirm
`
`the patentability of Claims [1—4, 7-28, and 31-44].” PO Resp. 74 (citing
`
`Ex. 2015 {§ 156-159). The cited paragraphs of Mr. Cheng’s testimony
`
`essentially repeat, verbatim, pages 76—78 of the Patent Owner Response,
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`which weaddress below.
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`Objective indicia of non-obviousness may include long-felt but
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`unsolved need, failure of others, unexpected results, commercial success,
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`copying, licensing, industry praise, and expert skepticism. Mintz v. Dietz &
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`Watson, Inc., 679 F.3d 1372, 1379 (Fed. Cir. 2012). “[O]bjective indicia
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`‘may often be the most probative and cogent evidence of nonobviousnessin
`299
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`the record,”
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`and “help turn back the clock and place the claimsin the
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`context that led to their invention.” /d. at 1378. Evidence of objective
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`indicia of non-obviousness “must always when present be considered en
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`route to a determination of obviousness.” Transocean Offshore Deepwater
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`Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir.
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`2012); see also Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1048 (Fed.
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`Cir. 2016) (en banc).
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`Objective indicia of non-obviousnessare “only relevant to the
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`obviousness inquiry ‘if there is a nexus between the claimed invention and
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`the [objective indicia of non-obviousness].’” Jn re Affinity Labs of Tex.,
`
`LLC, 856 F.3d 883, 901 (Fed. Cir. 2017) (quoting Ormco Corp. v. Align
`
`Tech., Inc., 463 F.3d 1299, 1312 (Fed. Cir. 2006)). For objective indicia of
`
`non-obviousnessto be accorded substantial weight, their proponent must
`
`establish a nexus between the evidence and the merits of the claimed
`
`14
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`IPR2022-01143
`Patent 11,226,793 B2
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`invention. ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1220 (Fed. Cir.
`
`2016).
`
`As the Federal Circuit has explained, “a patentee is entitled to a
`
`rebuttable presumption of nexus between the asserted evidence of secondary
`
`considerations and a patent claim if the patentee showsthat the asserted
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`evidenceis tied to a specific product and that the product ‘is the invention
`
`disclosed and claimed.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366,
`
`1373 (Fed. Cir. 2019) (quoting Demaco Corp. v. F. Von Langsdorff
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`Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)). A patentee is not
`
`entitled to a presumption of nexusif the patented invention is only a
`
`component of a commercially successful machine or process. /d. Once “the
`
`patentee has presented a prima facie case of nexus, the burden of coming
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`forward with evidence in rebuttal shifts to the challenger .
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`.
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`. to adduce
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`evidence to show that the commercial success was due to extraneous factors
`
`other than the patented invention.” Demaco, 851 F.2d at 1392-93.
`
`Here, we have no presumption of nexus. Nor does Patent Owner
`
`allege such a presumption should apply. See PO Resp. 74—78.
`
`Patent Owner contendsthat “[t]here is a strong nexus between [Patent
`
`Owner]’s claimed invention and [Patent Owner]’s secondary consideration
`
`evidence.” PO Resp. 75. Patent Ownerproceedsto allege that “[a]s
`
`discussed below,there is evidence that the long-felt of the present invention
`
`is due to the novel and unique combination of elements of CloudofChange’s
`
`claimed web-based POS builder system.” /d. But the only reference to any
`
`particular claim is a subsequentallegation that “the web-based POS builder
`
`system is built completely on the web and the software communicates from
`
`webserver 36 to POS 31 in-store, as recited in claims. EX1001, Claims 1,
`
`15
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`IPR2022-01143
`Patent 11,226,793 B2
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`27, 42, 43, and 44.” /d. at 77. This general allegation does not establish
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`nexus.
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`Patent Owner’s allegations regarding long-felt need are also
`
`unavailing. See PO Resp. 76-78.
`
`Long-felt need can be shownby evidencethat indicates that the prior
`
`art had a recognized need for a solution to the problem and that others had
`
`tried and failed to find a solution to that problem. A/-Site Corp. v. VSI Int’l,
`
`Inc., 174 F.3d 1308, 1325 (Fed. Cir. 1999); Stratoflex, Inc. v. Aeroquip
`
`Corp., 713 F.2d 1530, 1540 (Fed. Cir. 1983). Notably, the case law
`
`characterizes the need in terms of a long-felt but unresolved need. A/-Site,
`
`174 F.3d at 1325 (discussing “long felt but unresolved needs”).
`
`Accordingly, Patent Owner must show that the need was both known and
`
`not resolved.
`
`Patent Ownerfails to provide evidence to support its allegations
`
`regarding long-felt need. Instead, Patent Ownercites to conclusory
`
`paragraphs from Mr. Cheng’s declaration that simply parrot the statements
`
`in the Petition. And, based on Patent Owner’s Response,it is not entirely
`
`clear whatthe prior art allegedly had recognized as a problem needing a
`
`solution, let alone that others had tried and failed to find a solution to that
`
`problem. There is simply no evidence supporting Patent Owner’s position.
`
`Moreover, Patent Owner must also show that if the need was known,
`
`it was also unresolved. As best we can decipher what the alleged need was,
`
`based on our analysis of the challenges below, that need wasalready met.
`
`Finally, we note that it is unclear how the claimed arrangement
`
`providesa solution to the problem that others had tried and failed to solve.
`
`Indeed, as noted above, the only reference to any claim is Patent Owner’s
`
`allegation that “the web-based POS builder system is built completely on the
`
`16
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`
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`IPR2022-01143
`Patent 11,226,793 B2
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`weband the software communicates from web server 36 to POS 31 in-store,
`
`as recited in claims. EX1001, Claims 1, 27, 42, 43, and 44.” PO Resp. 77.
`
`For at least the reasons set for above, Patent Owner’s evidence of non-
`
`obviousnessis entitled to little, if any, weight.
`
`FE. Woycik Challenge
`
`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. As seen below, Petitioner’s
`
`challenge based on Woycik is largely unrebutted by Patent Owner,as the
`
`majority Patent Owner’s contentionsrelate to features not actually required
`
`by the claims. We adopt Petitioner’s undisputed contentions and supporting
`
`evidence for purposesof this decision.
`
`1. Woycik
`
`Woycik “relates generally to computer-based systems used for
`
`ordering goods and services and, more particularly, to self-service terminals
`
`and software tools for administering self-service terminals.” Ex. 1004 4.
`
`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.” Jd.
`
`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 customersto input their orders.” Jd.
`
`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 providedby the self-order application at the self-service client
`
`terminals.” Ex. 1004 4 16. “The menu editor enables the administrator to,
`
`17
`
`
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`IPR2022-01143
`Patent 11,226,793 B2
`
`during creation/editing of an interactive menu screen, select a template for
`
`the interactive menu screen and associate functions with the buttons
`
`included on the selected template.” /d. 419. Woycik explainsthat “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.” Id. 417.
`
`Figure 1 of Woycik is reproduced below.
`
`Jom
`
`
`
`Zé Customer
`
`: Store 1
`
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`
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`nee ee me ret
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`
`Figure 1 of Woycik is a schematicillustration of a “self-service ordering
`
`system.” Ex. 1004 931. “[R]Jather than using a dedicated ‘back room’
`
`computeras the local server, one of the kiosks 16 is used both as a client to
`
`permit customer entry of orders and as the local server to interface to the
`
`Internet 18 and to respond to requests from the local client kiosks 30.” Jd.
`
`4172. “In each store [12, 14], the local (on-site) server 16 is connected to the
`
`18
`
`
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`IPR2022-01143
`Patent 11,226,793 B2
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`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.” /d. 71.
`
`Woycik explains that “the local server kiosk 16 further includes an
`
`administrative tool comprising a second userinterface application that can
`
`be accessed by the administrator to perform various administrative functions
`
`such as configuring kiosks, creating and editing menusand available food
`
`items, and specifying tax and paymentfeatures of the system.” Ex. 1004
`
`473. Woycik explains that an alternative “approachis to have the
`
`administrative tool loaded on the central server 22 and then provide the
`
`chain operator 20 with webaccessto the central server 22.” /d. 975. “In
`
`this approach, the central server 22 then accesses and stores updated
`
`configuration information on the local server 16.” /d.
`
`19
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`
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`IPR2022-01143
`Patent 11,226,793 B2
`
`Figure 2 illustrates an exemplary kiosk from Woycik’s system, andis
`
`reproduced below.
`
`
`
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`Figure 2 is “an exemplary kiosk of the ordering system.” Ex. 1004 4 32.
`
`“The kiosk 50 includes most of the elements commonly found in a general
`
`purpose computer.” /d. 477. In “one embodiment of a kiosk of the ordering
`
`system”seen in Figure 2, “[t]he kiosk 50... display screen 52 is
`
`implemented as a touch screen that operates as both a display unit and an
`
`input device for use by customers and administrators.” /d.
`
`20
`
`
`
`IPR2022-01143
`Patent 11,226,793 B2
`
`Figure 3 further illustrates Woycik’s system, and is reproduced below.
`
`9 mw.
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`SES
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`>
`
`32
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`
`Figure 3 “illustrates the various software layers running on the client kiosks,
`
`client/server kiosk, and central server in the... . ordering system.” Ex. 1004
`
`433. Kiosk 80, kiosk/server 82, and central server 84 in Figure 3
`
`correspond to kiosk 30, kiosk/server 16, and central server 22, respectively,
`
`in Figure 1. “[T]he server kiosk 82... . includes not only the client program
`
`92, but also a server program 96 (including its associated database) as well
`
`as an administrative tool 98 for configuring the server program 96.” Id.
`
`479. But as noted above, an alternative “approachis to have the
`
`administrative tool loaded on the central server 22.” Id. 475.
`
`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
`
`Internet-connected computer (such as a home office computer) so that
`
`various store locations can be configured from a single computer.” Jd.
`
`According to Woycik,“[t]he programming needed to implementthis
`
`software architecture strategy is known to those skilled in the art.” Jd.
`
`21
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`
`
`IPR2022-01143
`Patent 11,226,793 B2
`
`2. Claim 1
`
`Petitioner cites Woycik as teaching every limitation of claim 1. See
`
`Pet. 21-41. The majority of Petitioner’s contentions regarding Woycik’s
`
`teachings are not disputed by Patent Owner. See PO Resp. 27-35. We
`
`adopt Petitioner’s contentions and supporting evidence for purposesofthis
`
`decision, and note that as explaine
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