Docket Nos. 2015-1703, -1704
REYNA, CHEN, STOLL
November 29, 2016
Brief Summary: PTAB decision to institute CBM affirmed (no “technological invention” exception); conclusions of no patentability under §101 affirmed; conclusions of patentability under § 101 reversed (claims to “insignificant post-solution activity”).
Summary: This appeal relates to covered business methods (CBMs) regarding Ameranth’s US 6,384,850; 6,871,325 (‘850 CON); and 6,982,733 (‘850 CIP). The patents relate to systems for use in restaurants in which a “menu can be configured on a desktop computer and then downloaed onto a handheld device.” Claims 1 of the ‘325 and ‘733 patents “are nearly identical to claim 1 of the ‘850 patent” except that “short phrases are added to the end of the claim” (“wherein said second menu to [sic] applicable to a predetermined type of ordering’” (‘325 claim 1) or “is manually modified after generation” (‘733 claim 1)). The PTAB found that each patent met the statutory definition of a CBM and that certain claims were unpatentable under 35 U.S.C. § 101 (Alice, US 2014; Mayo, US 2012). Ameranth’s arguments regarding these claims were that “the Board misconstrued the claims, that the patents are not CBM patents, and that the Board erred in its § 101 analysis”. The PTAB also found that Apple had not shown certain ‘733 claims were unpatentable under § 101. The FC reviews “the Board’s reasoning that the patents are CBM patents under the arbitrary and capricious standard” (SightSound, FC 2015) and “§ 101 patent eligibility de novo” (In re Roslin Inst., FC 2014). The Board’s claim construction conclusions (broadest reasonable construction, Cuozzo (US 2016)) were reviewed. The FC agreed with the Board’s construction of “menu” not to include “features of menus that are expressly recited in the claims” (Merck, FC 2005); that the preambles were not limiting as to “synchronous communications systems” (Phillips, FC 2005); and that the “central processing unit” does not have to include specific functions and can be a generic processor (“although claim 5 recites ‘microprocessor’ and others recite ‘central processing unit,’ this does not necessarily mean that the two terms must have a different meaning”; Indacon, FC 2016; “two claims with different terminology can define the exact same subject matter” (Curtiss-Wright, FC 2006)). The FC agreed with the Board that “the patents meet the ‘financial product or service’ component of the definition of CBM patents” and “did not fall within the ‘technological invention’ exception of the definition” (1. no “technological feature that is novel and nonobvious over the prior art…the hardware used in the claimed systems was ‘typical,’ and…the programming steps were ‘commonly known.’” 2. “the claimed inventions did not solve a technical problem using a technical solution” (“more of a business problem than a technical problem”)). Ameranth argued the Board’s reasoning regarding § 101 eligibility (abstract idea, step one under Alice (US 2014)) “changed slightly” between the institution and final decisions but the FC panel concluded “[t]he Board’s slight revision of its abstract idea analysis does not impact its patentability analysis” (the claims “do not claim a particular way of programming or designing the software…but instead merely claim the resulting systems”). The FC panel also agreed with the Board’s second step analysis (Mayo, US 2012 (whether additional elements transform the claim to patent-eligible)) since the features highlighted by Ameranth represent “insignificant post-solution activity”. The FC panel also reversed the Board’s finding as to ‘733 claims 3 and 11 it found patentable under § 101 as the same are “a classic example of manual tasks that cannot be rendered patent eligible merely by performing them with a computer.” The Board’s conclusion that ‘733 claims 6-9 and 13-16 (e.g., “involves handwriting capture”) were patentable was also reversed for similar reasons (“Ameranth claims no more than the use of existing handwriting and voice capture technologies using a computer system.” (“insignificant post-solution activity”)