Paper Entered: August 1, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD

Transcription

1 Paper Entered: August 1, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD UNIFIED PATENTS INC., Petitioner, v. ROTHSCHILD CONNECTED DEVICES INNOVATIONS, LLC, Patent Owner. Before RAMA G. ELLURU, TRENTON A. WARD, and SCOTT C. MOORE, Administrative Patent Judges. MOORE, Administrative Patent Judge. DECISION Institution of Inter Partes Review 37 C.F.R

2 I. INTRODUCTION Unified Patents Inc. ( Petitioner ) filed a Petition (Paper 1; Pet. ) to institute an inter partes review of claims 1 9, 11, and 12 of U.S. Patent No. 8,788,090 B2 (Ex. 1001; the 090 Patent ). We have statutory authority under 35 U.S.C. 314(a), which provides that an inter partes review may not be instituted unless... there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition. On this record and for the reasons discussed below, we institute an inter partes review with respect to claim 1 of the 090 Patent. Our analysis is based on the current record to determine whether Petitioner has demonstrated a reasonable likelihood of prevailing on its challenges. We have not made a final determination under 35 U.S.C. 318(a) as to the patentability of any claim. II. BACKGROUND A. Related Proceedings Petitioner indicates that the 090 Patent is the subject of numerous lawsuits pending in the U.S. District Court for the Eastern District of Texas. Pet The 090 Patent also is the subject of a separate inter partes review: RPX Corp. v. Rothschild Connected Devices Innovations LLC, Case No. IPR Additionally, the 090 Patent also is the subject of inter partes review in RPX Corp. v. Rothschild Connected Devices Innovations LLC, Case No. IPR , in which the Board instituted review of claims 1 8 of the 090 patent. IPR , Paper 9, 29. 1

3 B. The 090 Patent The 090 Patent discloses a system and method for creating a personalized consumer product. Ex. 1001, Abstract. For example, the disclosed invention may be used to create shampoo in which the scent, hair color tint, and amount of moisturizer are customized according to a user s specific preferences. Id. at 2: Figure 2 of the 090 Patent is reproduced below. Figure 2 of the 090 patent shown above depicts an example of a consumer product in accordance with the disclosed invention. As depicted in Figure 2, product 110 includes one or more sealed compartments 204 that contain elements (e.g., fluids or solids) that will be mixed in order to create the final product. Id. at 4: The compartments are connected to mixing chamber 210 by tubes 206 and valves 208. Id. at 4: Valves 208 are 2

4 actuated by controller 212 to control how much of the fluids or solids in compartments 204 are dispensed into mixing chamber 210. Id. at 4: Product 110 also includes communication module 214, which communicates specific valve settings to controller 212. Id. at 4: Product 110 includes mixing device 216 to mix the ingredients that are dispensed into mixing chamber 210, and exit port 218 that dispenses fluids or solids to the user. Id. at 4:50 51, Figure 3 of the 090 Patent is reproduced below. Figure 3 of the 090 patent shown above is a flowchart illustrating a method for creating a customized consumer product according to the user s specific product preferences. Ex. 1001, 2:6 10. At step 302, the user purchases or 3

5 acquires a product 110. Id. at 4: At step 304, after the user has acquired the product, the user takes the product to computer/terminal 102 to identify the product to a server. Id. at 5:5 6. The user s identity is transmitted to the server at step 306. Id. at 5: At step 308, the server attempts to locate the user s identity in a database that contains user preferences. Id. at 5: If the user cannot be identified, the user is asked to submit product preferences at step 310. Id. at 5: The user preferences are then located at step 312, and communicated to the user s computer/terminal at step 314. Ex. 1001, 5: At step 316, the user preferences are transmitted to communication module 214 (located within product 110). Id. at 5: Finally, at step 318, controller 212 controls microvalves 208 to dispense specific amounts of fluids or solids into mixing chamber 210, and the ingredients are mixed. Id. at 5:62 6:5. The user may then use the customized product. Id. at 6:5 6. C. Challenged Claims Challenged claims 1 and 9 are independent. Challenged claims 2 8 depend either directly or indirectly from independent claim 1, and challenged claims 11 and 12 depend from independent claim 9. Challenged claim 1 is illustrative, and is reproduced below. 1. A system for customizing a product according to a user's preferences comprising: a remote server including a database configured to store a product preference of a predetermined product for at least one user; and a first communication module within the product and in communication with the remote server; 4

6 wherein the remote server is configured to receive the identity of the predetermined product and the identity of the at least one user, retrieve the product preference from the database based on the identity of the predetermined product and the identity of the least one user and transmit the product preference to the first communication module. D. References and Materials Relied Upon Petitioner relies on the following references and materials in support of the asserted grounds of unpatentability: References and Materials Exhibit No. Declaration of Dr. Charles Eldering, Ph.D. ( Eldering 1005 Decl. ) U.S. Patent No. 6,759,072 B1 (iss. July 6, 2004) 1006 ( Gutwein ) U.S. Patent Pub. No. 2003/ A1 (pub. Mar. 20, ) ( Dodson ) U.S. Patent No. 4,920,871 (iss. May 1, 1990) ( Anson ) 1008 U.S. Patent No. 7,933,968 B1 (iss. Apr. 26, 2011) 1009 ( Zimmerman ) U.S. Patent No. 6,751,525 B1 (iss. June 15, 2004) 1010 ( Crisp ) PCT Pub. No. WO 03/ A1 (pub. July 10, 2003) 1016 ( Lähteenmäki ) Challenged Claim(s) E. Asserted Grounds of Unpatentability Statutory Basis References U.S.C. 103 Gutwein and Lähteenmäki 5

7 Challenged Claim(s) Statutory Basis References 8 35 U.S.C. 103 Gutwein, Lähteenmäki, and Dodson 9, 11, & U.S.C. 103 Gutwein, Lähteenmäki, and Anson 1 7, 9, 11, & U.S.C. 103 Zimmerman and Crisp 8 35 U.S.C. 103 Zimmerman, Crisp, and Dodson Pet. 7. III. ANALYSIS A. Claim Construction We interpret claims of an unexpired patent using the broadest reasonable interpretation in light of the specification of the patent. 37 C.F.R (b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144 (2016) (concluding the broadest reasonable construction regulation represents a reasonable exercise of the rulemaking authority that Congress delegated to the Patent Office ). There is a presumption that claim terms are given their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art in the context of the specification. See In re Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). An applicant may rebut that presumption by providing a definition of the term in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations are not to be read from the specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). 6

8 1. Preamble of Claim 1 Claim 1 recites that the remote server is configured to receive the identity of the predetermined product and the identity of the at least one user. We determine that claim 1 encompasses at least the embodiment disclosed column 4, line 15, to column 5, line 62 of the 090 Patent, in which the user acquires a product that contains a first communication module (i.e., product 110) and identifies the same product to a server, and in which the server then transmits product preferences back to the same product. Compare Ex. 1001, claim 1, with Ex. 1001, 4:15 5:62, Figs Claim 1 does not cover an alternative embodiment in the specification of the 090 Patent in which the product preferences are retrieved based solely on the identity of the user. See Ex. 1001, 7:58 8:4, Fig. 5 (disclosing an embodiment relating to a customized beverage dispenser that does not use the identity of the predetermined product to retrieve product preferences). The preamble of claim 1 recites [a] system for customizing a product according to a user's preferences. Generally, the preamble does not limit the claims. Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). However, when the limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention. Bicon, Inc. v. Straumann Co., 441 F.3d 945, 952 (Fed. Cir. 2006) (internal quotation omitted). Petitioner does not argue that the preamble of claim 1 should be construed as a claim limitation. See Pet Patent Owner has not yet set forth any claim construction positions. On this record, there also is no persuasive evidence that the preamble of claim 1 serves as the antecedent 7

9 basis for any limitation recited in the claim body. In particular, there is no persuasive evidence of record that the recitation of a predetermined product in claim 1 is insufficient to serve as the antecedent basis for the subsequent recitations of the product and the predetermined product in claim 1. This reading of claim 1 is consistent with the specification embodiment discussed above, in which the product that contains the communication module (i.e., the product of claim 1) is the same product the identity of which is received by the server (i.e., the predetermined product of claim 1). See Ex. 1001, 4:15 5:62 & Figs Accordingly, on this record and for purposes of this decision, and under the applicable broadest reasonable interpretation standard, we construe the preamble of claim 1 a non-limiting statement of intended use. 2. Preamble of Claim 9 The preamble of claim 9 recites [a] product to be consumed by a user. The body of claim 9 recites a communication module that is configured to transmit an identifier of the product to a server, receive product preferences... from the server based on the identifier [of the product], and communicate those preferences to a controller for formulating the final product. (Emphasis added.) Because the identifier of the product recited in claim 1 is used by the claimed apparatus to subsequently formulate the final product, the recitations of the product and the final product of claim 9 are necessarily different products. This reading of claim 9 is consistent with the specification. In particular, the specification distinguishes between product 110, which comprises a case covering or housing and several internal components, and the final product 8

10 that is produced by and dispensed from product 110. See Ex. 1001, 4:15 21 ( Initially,... the user purchases and/or acquires the product 110 [which] will consist of a case covering or housing 202, [and] one or more sealed compartments These compartments 204 will contain the elements, e.g., fluids and/or solids, to be mixed to produce the final product. ) (emphasis added). Because the product and the final product of claim 9 are references to different products, the recitation of a final product in the first element of claim 1 does not provide antecedent basis for the subsequent recitation of the product. The only possible antecedent basis for the product is the recitation of [a] product in the preamble of claim 9. The record does not contain any persuasive evidence or argument contrary to this interpretation of claim 9. Accordingly, on this record, and for purposes of this decision, we treat the preamble of claim 9 as limiting. See Bicon, 441 F.3d at 952 ( when the limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention. ) (internal quotation omitted). For purposes of this decision, we construe the preamble s recitation, in claim 9, of [a] product to be consumed by a user, and the subsequent recitation of the product, as references to the same product. 3. Communication Module Within the Product Petitioner contends that the claim term communication module within the product does not require a communication module that is actually located within the product, but instead encompasses any communication module that is within the consumer system for customizing 9

11 the product. Pet In support of this contention, Petitioner argues that the specification discloses two examples of a communication module of the type recited in claim 1: communication module 214 in Figure 2, which is located inside the housing of product 110 (id. at 15; Ex. 1001, Fig. 2); and communication module 112 [which is located] outside of product 110, but connected to it at the same location on the Internet (Pet. 16). Petitioner argues that since communication module 112 is located outside of product 110, it is clear that within the product means within the consumer system for customizing the product. Id. Petitioner s argument is not persuasive. The language of claim 1 requires a communication module that is located within the product. The communication module 112 disclosed in the specification of the 090 Patent, however, is not part of product 110, but is instead part of terminal 102. See Ex. 1001, 3:7 9 ( The terminal 102 will include a communication module 112 for communicating the formulation to the product 110. ) 10

12 Figure 1 of the 090 Patent is reproduced below. As shown above in Figure 1, communication module 112 is associated with terminal 102, and is separate from product 110. Figure 2 of the 090 Patent is reproduced below. As shown above in Figure 2, Product 110 is described in the specification of the 090 patent to contain its own, separate communication module 11

13 communication module 214. Id. at 4:15 52, Fig. 2. Furthermore, as shown in Figure 2 above, communication module 214 is located inside the case covering or housing of product 110. Id. at 4:15 19, 40 41, Fig. 2. For the above reasons, we are not persuaded by Petitioner s argument that the claim term communication module within the product should be construed to encompass communication module 112. Accordingly, on this record, we reject Petitioner s proposed construction of communication module within the product. 4. Other Claim Terms We do not need to further construe the claims in order to resolve the parties present disputes. Thus, we decline to adopt further express constructions of claim terms at this time. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) ( claim terms need only be construed to the extent necessary to resolve the controversy ) (citing Vivid Techs., Inc. v. Am. Sci. & Eng g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). 1. Overview B. Asserted Grounds of Unpatentability Petitioner argues that challenged claims 1 9, 11, and 12 are unpatentable under 35 U.S.C See Pet. 7. A claim is unpatentable under 35 U.S.C. 103 if the differences between the claimed subject matter 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 such subject matter pertains. 35 U.S.C. 103(a). The question of obviousness under 35 U.S.C. 103 is resolved on the basis of underlying factual determinations, including: (1) the scope and content of 12

14 the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of skill in the art; 1 and (4) objective evidence of nonobviousness, i.e., secondary considerations. 2 Graham v. John Deere Co., 383 U.S. 1, (1966). 2. Obviousness of Claims 1 7 over Gutwein and Lähteenmäki a. Gutwein Gutwein is directed to providing users with individually customized beverage products. Ex. 1006, Abstract. Gutwein discloses a system that includes one or more customizable beverage delivery systems that operate in conjunction with a customization director. Ex. 1006, 6:11 13, The customization director may be hosted on an external server located somewhere on the Internet. Id. at 16: The customization director is connected to data storage that may contain data of beverage formulations, user identification, user preferences, and the like. Id. at 5: Users of Gutwein s beverage delivery stations identify themselves by, for example, entering a personal identification number (PIN) or using a radio frequency identification [(RFID)] tags. Ex. 1006, 26: The customization director may then retrieve the user s profile information, and use this information to formulate and deliver the product with the right profile, or to present a customer with a variety of pre-configured drinks 1 For purposes of this Decision, we consider the cited references to be representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). 2 The parties do not direct us to any evidence of secondary considerations at this stage in the proceeding. 13

15 that approximately match the consumer s personal profile. Id. at 26:6 11, b. Analysis Claim 1 recites a remote server including a database configured to stored [sic] a product preference of a predetermined product, a first communication module within the product, and a remote server configured to receive the identity of the predetermined product. (Emphasis added). For the reasons discussed above, the recitation of a predetermined product in claim 1 forms the antecedent basis for the product of claim 1, and the predetermined product of claim 1. Accordingly, the claim terms a predetermined product, the product, and the predetermined product refer to the same product. Contrary to the requirements of claim 1, Petitioner s challenge relies upon different products in Gutwein as corresponding to claim 1 s recitations of a predetermined product, the product, and the predetermined product. See Pet As discussed above, Gutwein discloses customizable beverage delivery systems that interact with a customization director to produce an individually customized beverage product. When discussing the remote server... configured to store a product preference of a predetermined product limitation of claim 1, Petitioner cites Gutwein s disclosure of a customization director (i.e., the remote server), and does not explicitly identify a predetermined product in Gutwein. See Pet. 20, When discussing the first communication module within the product of claim 1, Petitioner identifies beverage delivery system 109 of Gutwein as corresponding to the recited the product. Id. at 23. When discussing 14

16 the remote server is configured to receive the identity of the predetermined product of claim 1, Petitioner identifies the user s selection of a preferred beverage as corresponding to the recited identity of the predetermined product. Id. at 24. In so doing, Petitioner treats Gutwein s individually customized beverage as corresponding to the predetermined product of claim 1 In view of our determination above that the claim terms a predetermined product, the product, and the predetermined product refer to the same product, Petitioner s reference to different products in Gutwein as teaching or suggesting these claim elements, without adequate explanation, is insufficient to support its assertions. Thus, we are not persuaded on this record that Petitioner has demonstrated a reasonable likelihood of prevailing on its obviousness challenge to claim 1 based on Gutwein and Lähteenmäki. Claims 2 7 depend either directly or indirectly from claim 1, and Petitioner s contentions regarding claims 2 7 depend on Petitioner s assertion that Gutwein discloses the claim 1 limitations a predetermined product, the product, and the predetermined product. See Pet Accordingly, we also are not persuaded on this record that Petitioner has demonstrated a reasonable likelihood of prevailing on its obviousness challenge to claims 2 7 based on Gutwein and Lähteenmäki. 3. Obviousness of Claim 8 over Gutwein, Lähteenmäki, and Dodson Claim 8 depends indirectly from claim 1, and Petitioner s unpatentability arguments concerning claim 8 depend on Petitioner s assertion that Gutwein discloses the claim 1 limitations a predetermined 15

17 product, the product, and the predetermined product. See Pet Accordingly, we also are not persuaded on this record that Petitioner has demonstrated a reasonable likelihood of prevailing on its obviousness challenge to claims 8 based on Gutwein, Lähteenmäki, and Dodson. 4. Obviousness of Claims 9 and over Gutwein, Lähteenmäki, and Anson As discussed above, we determine on this record and for purposes of this decision that the recitation of [a] product in the preamble, and the recitation of the product in the body of claim 9, refer to the same product. In its Petition, Petitioner asserts that the a product recited in the preamble of claim 9 corresponds to Gutwein s customizable beverage system 100. See Pet (citing Ex. 1006, 6:22 24, 15:61 62, Fig. 9.) However, when discussing the communication module element of claim 9, Petitioner asserts that the recited identifier of the product (emphasis added) corresponds to Gutwein s selection of a desired beverage. Pet. 32 (citing Ex. 1006, 27:18 49). Petitioner does not allege that the identity of the product recited in the preamble (i.e., customizable beverage system 100) is transmitted to a server. See Pet Petitioner s reference to different products in Gutwein as teaching or suggesting these claim elements, without explanation, is insufficient to support its assertions. Accordingly, we are not persuaded on this record that Petitioner has demonstrated a reasonable likelihood of prevailing on its obviousness challenge to claim 9 based on Gutwein, Lähteenmäki, and Anson. Claims 11 and 12 depend from claim 9, and Petitioner s unpatentability arguments concerning claims 11 and 12 depend on 16

18 Petitioner s assertion that Gutwein teaches or suggests a communication module... configured to transmit an identifier of the product, as recited in claim 9. See Pet Accordingly, we also are not persuaded on this record that Petitioner has demonstrated a reasonable likelihood of prevailing on its obviousness challenge to claims 11 and 12 based on Gutwein, Lähteenmäki, and Anson. 5. Obviousness of Claims 1 7, 9, 11, and 12 over Zimmerman and Crisp a. Zimmerman Zimmerman discloses the use of a radio frequency identification ( RFID ) token to access profile data and personalize an appliance. Ex. 1009, Abstract. Figures 3 and 4 of Zimmerman are reproduced below. Figure 3 above is an illustration of connections used by an appliance to obtain profile data, and Figure 4 above is a flow chart describing a procedure for obtaining profile data. Ex. 1009, 5: The user first places RFID Token 100 near appliance 340, which may be a set top box or any other appliance. Ex. 1009, 7: At step 17

19 S10, the token transmits relay URL information and authentication data to appliance 340. Id. at 7: At step S15, appliance 340 uses the relay URL information and authentication data to contact relay server 310. Id. at 7:28:32. Relay server 310 authenticates the data request (at step S20), and then provides the appliance with the address of profile server 305 containing profile information for the appliance. See id. Next, at step S25, appliance 340 generates a request to profile server 305, which may contain authentication/authorization data. Id. at 7: Finally, at step S30, profile server 305 transmits the relevant profile data to appliance 340. Id. at 7: b. Crisp Crisp is directed to a beverage distribution and dispensing system and method that allows a user to dispense drinks from a refrigerator. Ex. 1010, Abstract. Crisp discloses a beverage dispensing apparatus that includes a user interface panel or terminal connected to [a] dispensing processor, a dispenser or beverage mixing mechanism, a concentrate or syrup supply mechanism that stores a plurality of drink supply containers, and a CO 2 supply mechanism. Id. at 4: Crisp s user interface allows users to register with an order processing system in order to order additional drink and CO 2 supplies as desired, or change the drinks dispensed by the dispensing apparatus. Ex. 1010, 4: Crisp s beverage dispensing apparatus automatically orders necessary drink supplies from the order processing system, which may reside on a server. See id. at 5: This order processing system transmits drink supply orders to appropriate suppliers, and the drink supplies are then 18

20 delivered to the user, for example, by U.S. mail or United Parcel Service. See id. at 5: Claim 1 c. Analysis Claim 1 requires a remote server including a database configured to store a product preference of a predetermined product for at least one user. On this record and for purposes of this decision, Petitioner has made a sufficient showing that Zimmerman teaches or suggests this claim limitation. See Pet Petitioner argues the remote server of claim 1 corresponds to Zimmerman s profile server. See id. Zimmerman s profile server stores user-specific profile data for appliances (i.e., products) in a database or private profile database, and is depicted as being separate from the appliance Ex. 1009, 7:34 43, 11:15, Fig. 3. We also are sufficiently persuaded for purposes of this decision by Petitioner s argument that Zimmerman teaches or suggests a first communication module within the product and in communication with the remote server, as recited in claim element 1.2. Pet As discussed above, Zimmerman s appliances communicate with a profile server (i.e., the remote server ). See Ex. 1009, 7:28 37, 9: Figure 3 of Zimmerman depicts an embodiment in which appliance 340 includes REC. 341, IF 342, and XTL 343. Id. at Fig. 3. Dr. Eldering testifies that a person of ordinary skill in the art would have understood REC. 341, IF 342, and XTL 343 to be basic sub-systems of a communication module. Ex

21 In view of our determination based on the current record that Zimmerman at least suggests a communication module within a product, we need not address Petitioner s alternative argument that Crisp teaches or suggests this claim limitation. See Pet. 44. We also are persuaded that Petitioner sufficiently establishes for purposes of this decision that Zimmerman teaches or suggests a remote server that is configured to receive the identity of the predetermined product and the identity of the at least one user [and] retrieve the product preference from the database based on the identity of the predetermined product and the identity of the at least one user. In particular, Petitioner cites a disclosure in Zimmerman that the appliance 340 may indicate to the profile server 305 the type of data required or the nature of the appliance, i.e., the identity of the predetermined product, and the profile server 305 will transmit the relevant data. Pet (quoting Ex. 1009, 7:37 43). Petitioner also argues that Zimmerman s profile server may require a PIN number... or some other authentication device [i.e., identification of a user] to allow the profile to be used. Pet. 40 (quoting Ex. 1009, 9:63 10:2). In addition, Petitioner has made a sufficiently persuasive showing that Zimmerman teaches or suggests the use of a remote server to transmit the product preference to the first communication module. See Pet For example, Petitioner cites to a disclosure in Zimmerman that the received profile data is returned, and that the profile server 305 will transmit the relevant data back to the appliance. Pet. 46 (quoting Ex. 1009, 7:37 43). Figures 3 and 4 of Zimmerman also lend support to Petitioner s argument that the retrieved profile data is returned over network channel 274 to the 20

22 communication module (i.e., REC 341, IF 342, and XTL 343 ) of appliance 340. See Ex. 1009, Figs. 3, 4. For the foregoing reasons, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its obviousness challenge to claim 1 based on Zimmerman and Crisp. Claim 2 Claim 2 depends from claim 1, and further requires that the transmitted product preference be a formulation including a predetermined amount of at least one element. Petitioner s argument with respect to claim 2 differs substantially from its argument with respect to claim 1. In its discussion of claim 2, Petitioner asserts that it would have been obvious to one of ordinary skill in the art to use the generic smart appliance processes described in Zimmerman with the smart kitchen appliance disclosed in Crisp. Pet. 47 (emphasis omitted). Thus, it is apparent that Petitioner is modifying its previous contentions regarding claim 1, and is relying on Crisp (rather than Zimmerman) with respect to the first communication module within the product limitation of claim 1 (i.e., element 1.2). See id. at 43 44, 47. Petitioner continues to rely on Zimmerman with respect to the remote server elements of claim 1 (i.e., elements 1.1 and 1.3). See id. at 41 43, On this record, we are not sufficiently persuaded that Crisp s beverage dispensing apparatus and Zimmerman s profile server would function if combined in the manner Petitioner proposes when discussing claim 2. As discussed above, a user may customize Crisp s beverage dispensing apparatus by using the user interface to request a change in the drinks to be 21

23 dispensed. See, e.g., Ex. 1010, 4: Crisp s apparatus then transmits an order for necessary drink supplies to an order processing system. See id. at 5: However, Petitioner fails to establish that Crisp s beverage dispensing apparatus transmits the identity of a user and the identity of a product to a remote server in order to retrieve product preferences of the type generated by Zimmerman s profile server. See Pet Petitioner also fails to establish that Zimmerman s profile server would be capable of fulfilling an order for replacement supplies of the type generated by Crisp s beverage dispensing apparatus. See id. Petitioner s additional arguments regarding the recitation in claim 2 of a transmitted produce preference is a formulation including a predetermined amount of at least one element, do not cure this deficiency. With respect to this recitation, Petitioner and Dr. Eldering assert that Crisp discloses transmitting beverage formulations that specify the quantity and ratio of different elements. Pet. 46; Ex However, neither Petitioner nor Dr. Eldering cites any disclosure in Crisp to support the assertion that beverage formulations are transmitted. See id. Moreover, the specific portions of Crisp cited by Petitioner in its claim chart (see Pet. 48) do not indicate that beverage formulations are transmitted to Crisp s beverage dispensing apparatus. See Ex. 1010, 15:17 28, 25: Thus, even assuming Zimmerman s profile server were configured to transmit specific beverage formulations, the record would still contain no persuasive evidence that Crisp s beverage dispenser would have been capable of receiving or using these beverage formulations. On this record, we are not persuaded that any benefit or advantage would have resulted from 22

24 connecting Crisp s beverage dispensing apparatus to Zimmerman s profile server in the manner that allegedly would have rendered claim 2 obvious. Petitioner cannot show obviousness merely by demonstrating that all of the elements that comprise the invention were known in the prior art. Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1335 (Fed. Cir. 2013) (quoting Power-One, Inc. v. Artesyn Tech., Inc., 599 F.3d 1343, 1351 (Fed. Cir. 2010). Instead, Petitioner must provide a plausible rational[e] as to why the prior art references would have worked together. Id. On this record, we determine that Petitioner has not set forth a plausible rationale for why Crisp s beverage dispensing apparatus would have worked with Zimmerman s system. Accordingly, Petitioner has failed on the current record to show a reasonable likelihood of prevailing on its obviousness challenge to claim 2 based on Zimmerman and Crisp. Claims 3 7 Claims 3 7 depend from, and thus incorporate the limitations of, claim 2. Petitioner s arguments regarding claims 3 7 rely on Petitioner s assertion that Zimmerman and Crisp render obvious all limitations of claim 2. See Pet Accordingly, for the same reasons discussed above with respect to claim 2, Petitioner has failed on the current record to show a reasonable likelihood of prevailing on its obviousness challenge to claims 3 7 based on Zimmerman and Crisp. Claims 9, 11, and 12 With respect to claim 9, Petitioner again asserts that it would have been obvious to combine Crisp s beverage dispensing apparatus with Zimmerman s profile server system. See Pet Petitioner does not set 23

25 forth any additional rationales for combining Crisp and Zimmerman, but instead relies on the same evidence and argument discussed above with respect to claim 2. This evidence and argument is not persuasive for the reasons discussed above. Accordingly, Petitioner has failed on the current record to show a reasonable likelihood of prevailing on its obviousness challenge to claims 9, 11, and 12 based on Zimmerman and Crisp. 6. Obviousness of Claim 8 over Zimmerman, Crisp, and Dodson Claim 8 depends indirectly from claim 2. Petitioner s arguments regarding claim 8 rely on Petitioner s assertion that Zimmerman and Crisp render obvious all limitations of claim 2. See Pet Accordingly, for the same reasons discussed above with respect to claim 2, we are not persuaded on this record that Petitioner has shown a reasonable likelihood of prevailing on its obviousness challenge to claim 8 based on Zimmerman, Crisp, and Dodson. Accordingly, it is IV. ORDER ORDERED, pursuant to 35 U.S.C. 314, that an inter partes review is instituted on the following ground: Obviousness of claim 1 over Zimmerman and Crisp; FURTHER ORDERED that inter partes review is not instituted on any ground other with respect to claim 1, or on any ground with respect to any other challenged claim; and 24

26 FURTHER ORDERED, pursuant to 35 U.S.C. 314(c) and 37 C.F.R. 42.4, that the inter partes review shall commence on the entry date of this Order and that notice is hereby given of institution of a trial. 3 For PETITIONER: Jonathan Stroud Kevin Jakel jonathan@unifiedpatents.com kevin@unifiedpatents.com Paul Haughey Scott Kolass phaughey@kilpatricktownsend.com skolassa@kilpatricktownsend.com For PATENT OWNER: Jay Johnson jay@kjpllc.com 3 We have not made a final determination under 35 U.S.C. 318(a) as to the patentability of any claim. 25