Takeaway: The Board was persuaded to follow similar claim construction positions as well as its previous determination related to patent eligibility made in previous proceedings before the Board related to the same and similar patents.
In its Decision, the Board instituted a covered business method patent review of claims 12-16 of the ’850 patent, because it determined that Petitioner had demonstrated that it is more likely than not that the challenged claims are unpatentable on the grounds below.
The ’850 patent relates to an information management and synchronous communications system that “results in a dramatic reduction in the amount of time, and hence cost, to generate and maintain computerized menus for, e.g., restaurants and other related applications that utilize non-PC-standard graphical formats, display sizes or applications.” Petitioner had sought a covered business method review of claims 12-16 of the ’850 patent on the following grounds: (1) lack of patent eligibility of claims 12-16 under 35 U.S.C. § 101; (2) lack of enablement, definiteness, and written description concerning the claim term “hospitality applications and data” in claims 12-16 under 35 U.S.C. § 112; (3) lack of enablement, definiteness, and written obviousness concerning the claim term “communications control module” in claims 12-16 under 35 U.S.C. § 112; (4) lack of enablement of “software libraries” in claims 12-16 under 35 U.S.C. § 112; (5) lack of enablement of claims 12-16 as a whole under 35 U.S.C. § 112; (6) obviousness of claims 12-16 under 35 U.S.C. § 103(a) in view of Brandt and NetHopper; and (7) obviousness of claims 12-16 under 35 U.S.C. § 103(a) in view of Brandt, Demers, and Alonso.
The Board first assessed whether the ’850 patent claims a covered business method, which is “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.” Petitioner asserted that “[c]laim 12 is directed to ‘an information management and synchronous communications system . . .’ for computerizing hospitality activities such as ordering food for purchase.” The specification describes using the system in the context of online or mobile ordering paying in restaurant and other hospitality contexts. Accordingly, the Board was persuaded that at least claim 12 meets the financial-in-nature requirement.
Regarding the technological invention requirement, Petitioner argued that claim 12 recites “a list of well-known computer technologies such as a central database, wireless handheld devices, a web server, a web page, an API, and a communications control module and does not include a novel or unobvious technological features.” The specification indicates that the recited hardware as “typical” and known and that the software can be written in any commonly used computer language. The Board found Petitioner’s argument persuasive, and concluded that the ’850 patent is a covered business method patent and is eligible for review using the transitional covered business method patent review program.
The Board then considered claim construction, noting that patentability would be analyzed using the broadest reasonable constructions of the claims in light of the specification. Petitioner did not assert any specific construction, while Patent Owner discussed twelve terms in its Preliminary Response. The Board determined that only terms “web page” “hospitality applications” required construction. The Board agreed with Patent Owner that just like in a previous case involving the same patent, “web page” should be construed as “a document, with associated files for graphics, scripts, and other resources, accessible over the internet and viewable in a web browser.”
Patent Owner further asserted that a previous Board decision, regarding a related patent, should be followed, which implicitly construed the term “hospitality applications” as “application used to perform services or tasks in the hospitality industry.” Patent Owner further argued that “hospitality” excludes travel and transportation activities such as a car rental application. Petitioner cites a hospitality textbook to supports its contention that car rental applications in Brandt are hospitality applications. The Board agreed with Petitioner that the ordinary and customary meaning of hospitality is broad enough to encompass car rental activities and that the specification does not manifest a clear intention to narrow the meaning of the term.
The Board then assessed the ground based on 35 U.S.C. § 101. Petitioner argued that claims 12-16 are unpatentable because “(1) they are directed to abstract hospitality activities such as ordering food and making reservations, and (2) they merely require generic computer implementation.” The Board agreed with Patent Owner that Petitioner has not demonstrated that it is more likely than not that claims 12-16 are directed to patent-ineligible subject matter for similar reasons to related CBM2014-00015.
The Board then assessed the grounds based on enablement. The Board was not persuaded that the specification fails to enable “hospitality applications and data,” at least because the specification provides an example of synchronization and storage between the recited locations. The Board also agreed with Patent Owner that Petitioner failed to should that one of ordinary skill in the art would have to undergo undue experimentation in order to save an executable file in a database or in order to store an application on a web page.
The Board then assessed the grounds based on indefiniteness. The Board was not persuaded that one of ordinary skill in the art would not have been able to ascertain the meaning of “hospitality applications and data.” Specifically, the Board agreed with Patent Owner that “[i]f the applications and data are to be synchronized then we are persuaded that one of ordinary skill in the art would have understood that the applications would be the same and not different components of a larger application.”
The Board then assessed the grounds based on a lack of written description. The Board was not persuaded by Petitioner that “there is no description of any system in which hospitality applications and data are stored in the four recited locations and synchronized between those locations” and that “ the vague references to ‘synchronization’ in the specification do not describe synchronization of both applications and data.” Specifically, the Board agreed with Patent Owner that the specification describes a preferred embodiment of this invention with sufficient detail to allow a person of ordinary skill in the art to implement it.
The Board concluded similarly that the term “communications control module” also has sufficient enablement, definiteness, and written description. Similarly, the Board found that there was sufficient enablement for the term “software libraries” and the claim as a whole.
The Board then moved its analysis to the prior art grounds. Specifically, the Board determined that Petitioner has demonstrated that it is more likely than not that claims 12-16 would have been obvious under 35 U.S.C. § 103 over the combined teachings of Brandt and NetHopper. The Board was not persuaded by Patent Owner’s argument that Brandt’s use of a common user interface impedes the application of Brandt’s teachings regarding communication between the various system elements or any of Patent Owner’s other arguments. The Board similarly determined that Petitioner has demonstrated that it is more likely than not that claims 12-16 would have been obvious over the combination of Brandt, Demers, and Alonso.
Starbucks Corporation v. Ameranth, Inc., CBM2015-00091
Paper 9: Decision on Institution of Covered Business Method Patent Review
Dated: September 14, 2015
Patent 6,384,850 B1
Before: Meredith C. Petravick, Richard E. Rice, and Stacey G. White
Written by: White
Related Proceedings: Ameranth, Inc. v. Starbucks Corp., No. 3-13-cv-01072 (S.D. Cal.); Ameranth, Inc. v. Pizza Hut, No. 3-11-cv-01810 (S.D. Cal.); Agilysys, Inc. v. Ameranth, Inc., CBM2014-00015; CBM2014-00015 (USP 6,384,850); CBM2015-00080 (USP 6,384,850); CBM2015-00096 (USP 6,384,850); CBM2014-00016 (USP 6,871,325); CBM2015-00082 (USP 6,827,325); CBM2015-00097 (USP 6,871,325); CBM2015-00099 (USP 6,871,325); CBM2014-00013 (USP 6,982,733); CBM2014-00014 (USP 8,146,077); CBM2015-00081 (USP 8,146,077); CBM2015-00095 (USP 8,146,077)