Trials@uspto.

gov
571-272-7822

Paper 9
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.
_______________
Case IPR2016-00535
Patent 8,788,090 B2
_______________

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. 42.108

Case IPR2016-00535
Patent 8,788,090 B2
I.

INTRODUCTION

Unified Patents Inc. (Petitioner) filed a Petition (Paper 1; Pet.) to

institute an inter partes review of claims 19, 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.
A.

BACKGROUND
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. 34. The 090 Patent also is the subject of a separate inter partes
review: RPX Corp. v. Rothschild Connected Devices Innovations LLC, Case
No. IPR2016-00543. Additionally, the 090 Patent also is the subject of
inter partes review in RPX Corp. v. Rothschild Connected Devices
Innovations LLC, Case No. IPR2016-00443, in which the Board instituted
review of claims 18 of the 090 patent. IPR2016-00443, Paper 9, 29.

Case IPR2016-00535
Patent 8,788,090 B2
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 users
specific preferences. Id. at 2:3035.
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 4:1621. The compartments are connected to mixing
chamber 210 by tubes 206 and valves 208. Id. at 4:2125. Valves 208 are

Case IPR2016-00535
Patent 8,788,090 B2
actuated by controller 212 to control how much of the fluids or solids in
compartments 204 are dispensed into mixing chamber 210. Id. at 4:2126.
Product 110 also includes communication module 214, which communicates
specific valve settings to controller 212. Id. at 4:4044. 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 4:5051, 5564.
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 users specific
product preferences. Ex. 1001, 2:610. At step 302, the user purchases or

Case IPR2016-00535
Patent 8,788,090 B2
acquires a product 110. Id. at 4:1516. 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 5:56. The users identity is
transmitted to the server at step 306. Id. at 5:2526. At step 308, the server
attempts to locate the users identity in a database that contains user
preferences. Id. at 5:2635. If the user cannot be identified, the user is
asked to submit product preferences at step 310. Id. at 5:3646.
The user preferences are then located at step 312, and communicated
to the users computer/terminal at step 314. Ex. 1001, 5:5456. At step 316,
the user preferences are transmitted to communication module 214 (located
within product 110). Id. at 5:5662. 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 5:626:5.
The user may then use the customized product. Id. at 6:56.
C.

Challenged Claims

Challenged claims 1 and 9 are independent. Challenged claims 28

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

Case IPR2016-00535
Patent 8,788,090 B2
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

Decl.)

1005

U.S. Patent No. 6,759,072 B1 (iss. July 6, 2004)

(Gutwein)

1006

U.S. Patent Pub. No. 2003/0055530 A1 (pub. Mar. 20,

2003) (Dodson)

1007

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)

(Zimmerman)

1009

U.S. Patent No. 6,751,525 B1 (iss. June 15, 2004)

(Crisp)

1010

PCT Pub. No. WO 03/056493 A1 (pub. July 10, 2003)

(Lhteenmki)

1016

E.

Asserted Grounds of Unpatentability

Challenged Statutory Basis

Claim(s)

References

17

Gutwein and Lhteenmki

35 U.S.C. 103

Case IPR2016-00535
Patent 8,788,090 B2
Challenged Statutory Basis
Claim(s)

References

35 U.S.C. 103

Gutwein, Lhteenmki, and Dodson

9, 11, & 12

35 U.S.C. 103

Gutwein, Lhteenmki, and Anson

17, 9, 11,
& 12

35 U.S.C. 103

Zimmerman and Crisp

35 U.S.C. 103

Zimmerman, Crisp, and Dodson

Pet. 7.
III.
A.

ANALYSIS

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.
42.100(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).

Case IPR2016-00535
Patent 8,788,090 B2
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, 4:155:62, Figs. 23. 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, 7:588:4, 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. 1517. 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

Case IPR2016-00535
Patent 8,788,090 B2
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, 4:155:62 & Figs. 23.
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

Case IPR2016-00535
Patent 8,788,090 B2
that is produced by and dispensed from product 110. See Ex. 1001, 4:1521
(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 204 . . . . 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 preambles
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

Case IPR2016-00535
Patent 8,788,090 B2
the product. Pet. 1516. 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.
Petitioners 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, 3:79 (The terminal 102 will include a communication
module 112 for communicating the formulation to the product 110.)

10

Case IPR2016-00535
Patent 8,788,090 B2
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

Case IPR2016-00535
Patent 8,788,090 B2
communication module 214. Id. at 4:1552, 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 4:1519, 4041, Fig. 2.
For the above reasons, we are not persuaded by Petitioners argument
that the claim term communication module within the product should be
construed to encompass communication module 112. Accordingly, on this
record, we reject Petitioners 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. & Engg, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
B.
1.

Asserted Grounds of Unpatentability

Overview
Petitioner argues that challenged claims 19, 11, and 12 are

unpatentable under 35 U.S.C. 103. 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

Case IPR2016-00535
Patent 8,788,090 B2
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, 1718 (1966).
2.

Obviousness of Claims 17 over Gutwein and Lhteenmki

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, 6:1113, 2728.
The customization director may be hosted on an external server located
somewhere on the Internet. Id. at 16:1116. The customization director is
connected to data storage that may contain data of beverage formulations,
user identification, user preferences, and the like. Id. at 5:6365.
Users of Gutweins beverage delivery stations identify themselves by,
for example, entering a personal identification number (PIN) or using a
radio frequency identification [(RFID)] tags. Ex. 1006, 26:1113. The
customization director may then retrieve the users 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

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

Case IPR2016-00535
Patent 8,788,090 B2
that approximately match the consumers personal profile. Id. at 26:611,
2125.
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, Petitioners challenge relies
upon different products in Gutwein as corresponding to claim 1s recitations
of a predetermined product, the product, and the predetermined
product. See Pet. 2024. 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 Gutweins
disclosure of a customization director (i.e., the remote server), and does not
explicitly identify a predetermined product in Gutwein. See Pet. 20, 22
23. 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

Case IPR2016-00535
Patent 8,788,090 B2
the remote server is configured to receive the identity of the predetermined
product of claim 1, Petitioner identifies the users selection of a preferred
beverage as corresponding to the recited identity of the predetermined
product. Id. at 24. In so doing, Petitioner treats Gutweins 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, Petitioners 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 Lhteenmki.
Claims 27 depend either directly or indirectly from claim 1, and
Petitioners contentions regarding claims 27 depend on Petitioners
assertion that Gutwein discloses the claim 1 limitations a predetermined
product, the product, and the predetermined product. See Pet. 2528.
Accordingly, we also are not persuaded on this record that Petitioner has
demonstrated a reasonable likelihood of prevailing on its obviousness
challenge to claims 27 based on Gutwein and Lhteenmki.
3.

Obviousness of Claim 8 over Gutwein, Lhteenmki, and Dodson

Claim 8 depends indirectly from claim 1, and Petitioners

unpatentability arguments concerning claim 8 depend on Petitioners

assertion that Gutwein discloses the claim 1 limitations a predetermined
15

Case IPR2016-00535
Patent 8,788,090 B2
product, the product, and the predetermined product. See Pet. 2930.
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, Lhteenmki, and Dodson.
4.

Obviousness of Claims 9 and 1112 over Gutwein, Lhteenmki, 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 Gutweins customizable beverage
system 100. See Pet. 3132 (citing Ex. 1006, 6:2224, 15:6162, 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 Gutweins selection of a desired beverage. Pet. 32
(citing Ex. 1006, 27:1849). 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. 3132. Petitioners 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, Lhteenmki, and Anson.
Claims 11 and 12 depend from claim 9, and Petitioners
unpatentability arguments concerning claims 11 and 12 depend on

16

Case IPR2016-00535
Patent 8,788,090 B2
Petitioners assertion that Gutwein teaches or suggests a communication
module . . . configured to transmit an identifier of the product, as recited in
claim 9. See Pet. 3334. 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,
Lhteenmki, and Anson.
5.

Obviousness of Claims 17, 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, 5:4246.
The user first places RFID Token 100 near appliance 340, which
may be a set top box or any other appliance. Ex. 1009, 7:1923. At step
17

Case IPR2016-00535
Patent 8,788,090 B2
S10, the token transmits relay URL information and authentication data to
appliance 340. Id. at 7:2427. 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 7:3437. Finally, at step S30,
profile server 305 transmits the relevant profile data to appliance 340. Id. at
7:3743.
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 CO2
supply mechanism. Id. at 4:1527.
Crisps user interface allows users to register with an order processing
system in order to order additional drink and CO2 supplies as desired, or
change the drinks dispensed by the dispensing apparatus. Ex. 1010, 4:58
62. Crisps beverage dispensing apparatus automatically orders necessary
drink supplies from the order processing system, which may reside on a
server. See id. at 5:1743. This order processing system transmits drink
supply orders to appropriate suppliers, and the drink supplies are then
18

Case IPR2016-00535
Patent 8,788,090 B2
delivered to the user, for example, by U.S. mail or United Parcel Service.
See id. at 5:4459.
c.

Analysis

Claim 1
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. 4143. Petitioner argues the remote server of claim 1
corresponds to Zimmermans profile server. See id. Zimmermans 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, 7:3443, 11:15, Fig. 3.
We also are sufficiently persuaded for purposes of this decision by
Petitioners 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. 4344. As discussed
above, Zimmermans appliances communicate with a profile server (i.e., the
remote server). See Ex. 1009, 7:2837, 9:4165. 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.
1005 58.

19

Case IPR2016-00535
Patent 8,788,090 B2
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 Petitioners 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. 3940 (quoting Ex. 1009, 7:3743).
Petitioner also argues that Zimmermans 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, 9:6310:2).
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. 4547. 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, 7:3743).
Figures 3 and 4 of Zimmerman also lend support to Petitioners argument
that the retrieved profile data is returned over network channel 274 to the

20

Case IPR2016-00535
Patent 8,788,090 B2
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. Petitioners 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
4143, 4547.
On this record, we are not sufficiently persuaded that Crisps beverage
dispensing apparatus and Zimmermans profile server would function if
combined in the manner Petitioner proposes when discussing claim 2. As
discussed above, a user may customize Crisps beverage dispensing
apparatus by using the user interface to request a change in the drinks to be

21

Case IPR2016-00535
Patent 8,788,090 B2
dispensed. See, e.g., Ex. 1010, 4:5862. Crisps apparatus then transmits an
order for necessary drink supplies to an order processing system. See id. at
5:1743. However, Petitioner fails to establish that Crisps 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 Zimmermans profile server. See Pet. 4748. Petitioner
also fails to establish that Zimmermans profile server would be capable of
fulfilling an order for replacement supplies of the type generated by Crisps
beverage dispensing apparatus. See id.
Petitioners 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. 1005 70. 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 Crisps
beverage dispensing apparatus. See Ex. 1010, 15:1728, 25:5560. Thus,
even assuming Zimmermans profile server were configured to transmit
specific beverage formulations, the record would still contain no persuasive
evidence that Crisps 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

Case IPR2016-00535
Patent 8,788,090 B2
connecting Crisps beverage dispensing apparatus to Zimmermans 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 Crisps beverage dispensing apparatus would have worked with
Zimmermans 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 37
Claims 37 depend from, and thus incorporate the limitations of,
claim 2. Petitioners arguments regarding claims 37 rely on Petitioners
assertion that Zimmerman and Crisp render obvious all limitations of claim
2. See Pet. 4853. 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 Crisps beverage dispensing apparatus with
Zimmermans profile server system. See Pet. 5356. Petitioner does not set
23

Case IPR2016-00535
Patent 8,788,090 B2
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. Petitioners arguments

regarding claim 8 rely on Petitioners assertion that Zimmerman and Crisp

render obvious all limitations of claim 2. See Pet. 5758. 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.
IV.

ORDER

Accordingly, it is
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

Case IPR2016-00535
Patent 8,788,090 B2
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

We have not made a final determination under 35 U.S.C. 318(a) as to the

patentability of any claim.
25