IP Law Daily All claims for menu-generation methods were unpatentable under Section 101
Tuesday, November 29, 2016

All claims for menu-generation methods were unpatentable under Section 101

By Thomas Long, J.D.

All claims of three patents related to methods of generating interactive menus for mobile device users placing orders with restaurants, hotels, and other sellers were ineligible for patent protection under 35 U.S.C. §101 because they were directed to abstract ideas, the U.S. Court of Appeals for the Federal Circuit has held. The court affirmed findings by the Patent Trial and Appeal Board in covered business method reviews that some of the claims were ineligible, but it reversed the Board’s determination that other claims passed Section 101 muster (Apple, Inc. v. Ameranth, Inc., November 29, 2016, Reyna, J.).

Patents at issue. Ameranth owned U.S. Patent No. 6,384,850 ("the ’850 patent"), U.S. Patent No. 6,871,325 ("the ’325 patent"), and U.S. Patent No. 6,982,733 ("the ’733 patent"), which disclosed computer systems with hardware and software. The specifications disclosed a first menu with categories and items, and software for generating a second menu from that first menu by allowing categories and items to be selected. The patents described a preferred embodiment of the invention for use in the restaurant industry, with a menu consisting of categories such as appetizers and entrees, items such as chicken Caesar salad, modifiers such as dressing, and sub-modifiers such as Italian and bleu cheese. The menu may be displayed to a user on a mobile device, and then another menu may be generated from the selections made by the user.

Apple, Inc. and Agilsys, Inc., along with a number of hospitality and restaurant companies and event ticket sales companies, petitioned for covered business method (CBM) review of Ameranth’s patents. The Patent Trial and Appeal Board found that each patent met the statutory definition of "covered business method patent" and instituted CBM reviews. The Board found certain claims in each of the patents unpatentable under 35 U.S.C §101 as directed to abstract ideas, but it found that certain other claims were patentable. Ameranth appealed the ineligibility determination, and some of the petitioners (including Apple) appealed the Board’s decision that some claims were eligible for protection.

CBM patents. After affirming the Board’s constructions of the claim terms "menu," "synchronous communication system," and "central processing unit," the court considered whether the patents at issue met the "financial product or service" component of CBM patents. According to Ameranth, the patents fell within an exception for technological inventions. The Board disagreed, finding that the patents did not claim a technological feature that was novel and unobvious over prior art, and that the claimed inventions did not solve a technical problem using a technical solution. The Federal Circuit agreed with the Board. The hardware described by the specifications was "typical," and the programming steps were "commonly known." Neither the problems nor the solutions were technical in nature; the inventions were directed more toward a business problem than a technical problem.

Patent-eligibility under Section 101. The Board determined that the claims in all three patents are directed to the abstract idea of "generating a second menu from a first menu and sending the second menu to another location." Although the Board made slight changes to its description of the abstract idea between its decisions to institute review and its final decisions, the revisions did not affect the patentability analysis, the Federal Circuit said. The court affirmed the Board’s conclusion that the claims were directed to an abstract idea. The patents claimed systems including menus with particular features. They did not claim a particular way of programming or designing the software to create menus that had these features, but instead merely claimed the resulting systems. In the court’s view, the claims were directed to certain functionality—the ability to generate menus with certain features. In addition, the claims were not directed to a specific improvement in the way computers operate, the court said.

In the next step of the Section 101 analysis, the Board found—and the Federal Circuit affirmed—that the recited central processing unit, data storage device, and operating system components were "typical" hardware elements that did not add "inventive concepts" rendering the claims patentable. The claimed inventions merely described the addition of conventional computer components to well-known business practices.

The Board found, however, that certain dependent claims—which involved linking orders to specific customers, and handwriting and voice capture technologies—were not unpatentable. In this respect, the court disagreed with the Board. These claims involved "classic examples" of manual tasks that cannot be rendered patent eligible merely by performing them with a computer. The claims depended from independent claims found to be directed to unpatentable subject matter; merely appending preexisting technologies onto those independent claims did not make them patentable. Accordingly, the court reversed the Board’s finding confirming the patentability of those claims and held that all challenged claims of the patents at issue were ineligible for protection under Section 101.

The case are Nos. 2015-1703, 2015-1704, 2015-1792, and 2015-1793.

Attorneys: Stanley Joseph Panikowski III (DLA Piper LLP) and Jonathan S. Franklin (Norton Rose Fulbright US LLP) for Apple, Inc., Domino’s Pizza, Inc., Domino’s Pizza, LLC, Fandango, LLC, Opentable, Inc., Agilsys, Inc., Eventbrite, Inc., Fandango, LLC, OpenTable, Inc., Expedia, Inc., Hotel Tonight, Inc., Hotwire, Inc., Hotels.com, L.P., Kayak Software Corporation, Live Nation Entertainment, Inc., Orbitz, LLC, Papa John’s USA, Inc., Stubhub, Inc., Ticketmaster, LLC, Travelocity.com LLP, Wanderspot LLC; Kayak Software Corp., Oracle Corp., Mobo Systems, Inc., Best Western International, Inc., Hyatt Corp., Marriott International, Inc., Starwood Hotels & Resorts Worldwide Inc., Usablenet, Inc., Hilton Resorts Corp., Hilton Worldwide, Inc., and Hilton International Co. John William Osborne (Osborne Law LLC) for Ameranth, Inc.

Companies: Ameranth, Inc.; Apple, Inc.; Domino’s Pizza, Inc.; Domino’s Pizza, LLC; Fandango, LLC; Opentable, Inc.; Agilsys, Inc.; Eventbrite, Inc.; OpenTable, Inc.; Expedia, Inc.; Hotel Tonight, Inc.; Hotwire, Inc.; Hotels.com, L.P.; Kayak Software Corporation; Live Nation Entertainment, Inc.; Orbitz, LLC; Papa John’s USA, Inc.; Stubhub, Inc.; Ticketmaster, LLC; Travelocity.com LLP; Wanderspot LLC; Kayak Software Corp.; Oracle Corp.; Mobo Systems, Inc.; Best Western International, Inc.; Hyatt Corp.; Marriott International, Inc.; Starwood Hotels & Resorts Worldwide Inc.; Usablenet, Inc.; Hilton Resorts Corp.; Hilton Worldwide, Inc.; Hilton International Co.

MainStory: TopStory Patent FedCirNews

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