Apple, Inc. v. Ameranth, Inc., 2015-1703

Citation120 U.S.P.Q.2d 1844,842 F.3d 1229
Decision Date29 November 2016
Docket Number2015-1704,2015-1792,2015-1793,2015-1703
Parties APPLE, INC., Domino's Pizza, Inc., Domino's Pizza, LLC, Fandango, LLC, Opentable, Inc., Appellants v. AMERANTH, INC., Cross–Appellant Ameranth, Inc., Appellant v. Agilysys, Inc., Expedia, Inc., Fandango, LLC, Hotel Tonight, Inc., Hotwire, Inc., Hotels.com, L.P., Kayak Software Corporation, Live Nation Entertainment, Inc., Oracle Corporation, Orbitz, LLC, Opentable, Inc., Papa John's USA, Inc., Stubhub, Inc., Ticketmaster, LLC, Travelocity.com Llp, Wanderspot LLC, Domino's Pizza, Inc., Domino's Pizza, LLC, Mobo Systems, Inc., Eventbrite, Inc., Best Western International, Inc., Hyatt Corporation, Marriott International, Inc., Starwood Hotels & Resorts Worldwide Inc., Usablenet, Inc., Apple, Inc., Hilton Resorts Corp., Hilton Worldwide, Inc., Hilton International Co., Appellees
CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit

842 F.3d 1229
120 U.S.P.Q.2d 1844

APPLE, INC., Domino's Pizza, Inc., Domino's Pizza, LLC, Fandango, LLC, Opentable, Inc., Appellants
v.
AMERANTH, INC., Cross–Appellant

Ameranth, Inc., Appellant
v.
Agilysys, Inc., Expedia, Inc., Fandango, LLC, Hotel Tonight, Inc., Hotwire, Inc., Hotels.com, L.P., Kayak Software Corporation, Live Nation Entertainment, Inc., Oracle Corporation, Orbitz, LLC, Opentable, Inc., Papa John's USA, Inc., Stubhub, Inc., Ticketmaster, LLC, Travelocity.com Llp, Wanderspot LLC, Domino's Pizza, Inc., Domino's Pizza, LLC, Mobo Systems, Inc., Eventbrite, Inc., Best Western International, Inc., Hyatt Corporation, Marriott International, Inc., Starwood Hotels & Resorts Worldwide Inc., Usablenet, Inc., Apple, Inc., Hilton Resorts Corp., Hilton Worldwide, Inc., Hilton International Co., Appellees

2015-1703
2015-1704
2015-1792
2015-1793

United States Court of Appeals, Federal Circuit.

Decided: November 29, 2016


Stanley Joseph Panikowski III, DLA Piper LLP (US), San Diego, CA, argued for all appellants in 2015–1703, –1704 and all appellees in 2015–1792, –1793. Apple, Inc., Eventbrite, Inc. also represented by Erin Gibson, Robert Chen Williams ; Mark D. Fowler , East Palo Alto, CA; James M. Heintz , Reston, VA.

Jonathan S. Franklin , Norton Rose Fulbright US LLP, Washington, DC, argued for all appellants in 2015–1703, –1704 and all appellees in 2015–1792, –1793. 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 also represented by Stephanie Debrow, Gilbert Andrew Greene , Austin, TX; Richard Stephen Zembek , Houston, TX.

John William Osborne , Osborne Law LLC, Cortlandt Manor, NY, argued for Ameranth, Inc. Also represented by Michael D. Fabiano , Fabiano Law Firm, P.C., San Diego, CA.

Joseph Matal , Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for intervenor Michelle K. Lee. Also represented by Thomas W. Krause, Scott Weidenfeller .

Frank A. Angileri , Brooks Kushman PC, Southfield, MI, for Domino's Pizza, Inc., Domino's Pizza, LLC. Also represented by Thomas W. Cunningham .

Anthony Nimmo , Ice Miller LLP, Chicago, IL, for appellee Agilysys, Inc. in 2015–1792, –1793. Also represented by Nicholas R. Merker .

Jared Bobrow , Weil, Gotshal & Manges LLP, Redwood Shores, CA, for appellee Oracle Corporation in 2015–1792, –1793. Also represented by Brian Chang.

Lowell D. Mead , Cooley LLP, Palo Alto, CA, for appellee Mobo Systems, Inc. in 2015–1792, –1793.

Joseph Rick Tache , Greenberg Traurig LLP, Irvine, CA, for appellee Best Western International, Inc. in 2015–1792, –1793.

Laura Beth Miller , Brinks Gilson & Lione, Chicago, IL, for appellee Hyatt Corporation in 2015–1792, –1793. Also represented by David Lindner .

Nick G. Saros , Jenner & Block LLP, Los Angeles, CA, for appellee Marriott International, Inc. in 2015–1792, –1793. Also represented by Michael Glenn Babbitt , Chicago, IL.

John Guaragna , DLA Piper LLP (US), Austin, TX, for appellee Starwood Hotels & Resorts Worldwide Inc. in 2015–1792, –1793. Also represented by James M. Heintz , Reston, VA; Stanley Joseph Panikowski III, Robert Chen Williams, San Diego, CA.

Andrew Peter Zappia , LeClairRyan, A Professional Corporation, Rochester, NY, for appellee USABLENET, Inc. in 2015–1792, –1793.

David M. Stein , Alston & Bird LLP, Los Angeles, CA, for appellees Hilton Resorts Corp., Hilton Worldwide, Inc., Hilton International Co. in 2015–1792, –1793.

Before Reyna, Chen, and Stoll, Circuit Judges.

842 F.3d 1234

Reyna, Circuit Judge.

In this appeal, we review Patent Trial and Appeal Board decisions in three Covered Business Method ("CBM") reviews. The decisions addressed the subject matter eligibility of certain claims of U.S. Patent No. 6,384,850 (" '850 patent"), U.S. Patent No. 6,871,325 (" '325 patent"), and U.S. Patent No. 6,982,733 (" '733 patent"). For the reasons explained below, we affirm-in-part and reverse-in-part.

BACKGROUND

I. Patents

Ameranth, Inc. ("Ameranth") owns the patents, which disclose computer systems with hardware and software.1 The patent specifications disclose a first menu that has categories and items, and software that can generate a second menu from that first menu by allowing categories and items to be selected. Claim 1 in the '850 patent recites:

1. An information management and synchronous communications system for generating and transmitting menus comprising:

a. a central processing unit,

b. a data storage device connected to said central processing unit,

c. an operating system including a graphical user interface,

d. a first menu consisting of menu categories, said menu categories consisting of menu items, said first menu stored on said data storage device and displayable in a window of said graphical user interface in a hierarchical tree format,

e. a modifier menu stored on said data storage device and displayable in a window of said graphical user interface,

f. a sub-modifier menu stored on said data storage device and displayable in a window of said graphical user interface, and

g. application software for generating a second menu from said first menu and transmitting said second menu to a wireless handheld computing device or Web page,

wherein the application software facilitates the generation of the second menu by allowing selection of catagories [sic] and items from the first menu, addition of menu categories to the second menu, addition of menu items to the second menu and assignment of parameters to items in the second menu using the graphical user interface of said operating system, said parameters being selected from the modifier and sub-modifier menus.

'850 patent col. 14 l. 48–col. 15 l. 11.

Claim 1 of the '325 patent and claim 1 of the '733 patent are nearly identical to claim 1 of the '850 patent. They differ only in that short phrases are added to the end of the claim: claim 1 of the '325 patent additionally recites "wherein said second menu to [sic] applicable to a predetermined type of ordering" and claim 1 of the '733 patent additionally recites "wherein said second menu is manually modified after generation." '325 patent col. 15 ll. 23–24; '733 patent col. 15 l. 60–col. 16 l. 25.

842 F.3d 1235

The patents describe a preferred embodiment of the invention for use in the restaurant industry. In that embodiment, a menu consists of categories such as appetizers and entrees, items such as chicken Caesar salad, modifiers such as dressing, and sub-modifiers such as Italian and blue cheese. See, e.g. , '850 patent col. 6 ll. 9–21.

The menu can be configured on a desktop computer and then downloaded onto a handheld device. Id. at col. 6 ll. 22–24. The menu may be displayed to a user and then another menu may be generated "in response to and comprised of the selections made." Id. at col. 13 ll. 52–61.

Figure 7, shown above, represents a point of sale interface for use in displaying the claimed menus in a preferred embodiment. Id. at col. 4 ll. 52–55.

The specifications note that "ordering prepared foods has historically been done verbally, either directly to a waiter or over the telephone, whereupon the placed order is recorded on paper by the recipient or instantly filled." '850 patent col. 1 ll. 23–27; '733 patent col. 1 ll. 31–34. They explain that the "unavailability of any simple technique for creating restaurant menus and the like for use in a limited display area wireless handheld device or that is compatible with ordering over the internet ha[d] prevented widespread adoption of computerization in the hospitality industry." '850 patent col. 2 ll. 40–45; '733 patent col. 2 ll. 48–53.

II. Procedural History

Appellees in the 2015–1792 and 2015–1793 appeals ("Agilysys petitioners") petitioned for CBM review of the '325 patent and the '850 patent. Appellants in the 2015–1703 and 2015–1704 appeals ("Apple petitioners") petitioned for CBM review of the '733 patent. The Apple petitioners and Agilysys petitioners are together referred to as "petitioners."

The Patent Trial and Appeal Board ("Board") construed the claims, found that each patent met the statutory definition of "covered business method patent," and instituted CBM reviews. In its final decisions, the Board found certain claims in

842 F.3d 1236

each of the patents unpatentable under 35 U.S.C. § 101.2 Ameranth appeals these findings, making three arguments. Ameranth argues that the Board misconstrued the claims, that the patents are not CBM patents, and that the Board erred in its § 101 analysis for these claims.

The Board also found that the Apple petitioners had not met their burden of showing that claims 3, 6–9, 11, and 13–16 of the '733 patent were unpatentable under § 101. The Apple petitioners appeal these findings. They argue that these dependent claims cover well-known, conventional concepts that do not confer patent eligibility.

The Director of the United States Patent and Trademark Office ("Patent Office") has intervened. She argues that...

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