Ameranth, Inc. v. Domino's Pizza, LLC ( 2019 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
AMERANTH, INC.,
Plaintiff-Appellant
v.
DOMINO'S PIZZA, LLC, DOMINO'S PIZZA, INC.,
Defendants-Appellees
PAPA JOHN'S USA, INC., OPENTABLE, INC.,
GRUBHUB, INC., SEAMLESS NORTH AMERICA,
LLC, O-WEB TECHNOLOGIES LTD., HOTELS.COM,
L.P., STUBHUB, INC., TICKETMASTER, LLC, LIVE
NATION ENTERTAINMENT, INC.,
TRAVELOCITY.COM LP, HOTEL TONIGHT, INC.,
ORBITZ, LLC, EXPEDIA, INC., FANDANGO, INC.,
HOTWIRE, INC., KAYAK SOFTWARE
CORPORATION, EMN8, INC., HILTON
INTERNATIONAL CO., HILTON RESORTS
CORPORATION, HILTON WORLDWIDE, INC.,
USABLENET, INC., STARWOOD HOTELS &
RESORTS WORLDWIDE INC., MOBO SYSTEMS,
INC., AGILYSYS, INC., ATX INNOVATION, INC.,
BEST WESTERN INTERNATIONAL, INC., HYATT
CORPORATION, ORDR.IN, INC., NAAMA
NETWORKS, INC., MARRIOTT HOTEL SERVICES,
INC., MARRIOTT INTERNATIONAL, INC., RITZ
CARLTON HOTEL COMPANY, LLC,
RENAISSANCE HOTEL OPERATING COMPANY,
APPLE, INC., TICKETBISCUIT, LLC,
EVENTBRITE, INC., TICKETFLY, INC.,
2 AMERANTH, INC. v. DOMINO'S PIZZA, LLC
STARBUCKS CORPORATION, IPDEV CO.,
ORACLE CORPORATION,
Defendants
______________________
2019-1141, 2019-1144
______________________
Appeals from the United States District Court for the
Southern District of California in Nos. 3:11-cv-01810-DMS-
WVG, 3:12-cv-00733-DMS-WVG, Judge Dana M. Sabraw.
______________________
Decided: November 1, 2019
______________________
RICHARD CHARLES WEINBLATT, Stamoulis & Weinblatt
LLC, Wilmington, DE, argued for plaintiff-appellant.
FRANK A. ANGILERI, Brooks Kushman PC, Southfield,
MI, argued for defendants-appellees. Also represented by
THOMAS W. CUNNINGHAM, JOHN P. RONDINI.
______________________
Before PROST, Chief Judge, PLAGER and DYK, Circuit
Judges.
DYK, Circuit Judge.
Ameranth, Inc. (“Ameranth”) sued Domino’s Pizza,
LLC and Domino’s Pizza, Inc. (together, “Domino’s”) for in-
fringement of various claims of U.S. Patent No. 8,146,077
(“the ’077 patent”). The district court entered judgment
that claims 1, 4–9, 11, and 13–18 of the ’077 patent are pa-
tent ineligible under 35 U.S.C. § 101. We affirm as to
claims 1, 6–9, 11, and 13–18, but hold that the district court
lacked declaratory judgment jurisdiction as to claims 4
and 5.
AMERANTH, INC. v. DOMINO'S PIZZA, LLC 3
BACKGROUND
Beginning in 2011, Ameranth filed numerous actions
against companies in the hospitality industry for infringe-
ment of various patents covering communications systems
for generating and transmitting menus. Ameranth as-
serted various claims of the ’077 patent and U.S. Patent
Nos. 6,384,850 (“the ’850 patent”), 6,871,325 (“the ’325 pa-
tent”), and 6,982,733 (“the ’733 patent”).
The district court consolidated the actions for pretrial
purposes including discovery and claim construction.
Ameranth’s complaint against Domino’s asserted infringe-
ment of the ’077, ’850, ’325, and ’733 patents. Domino’s
filed counterclaims asserting that the ’077, ’850, ’325, and
’733 patents are patent ineligible under § 101.
Various defendants challenged Ameranth’s patents be-
fore the Patent Trial and Appeal Board (“Board”) in Cov-
ered Business Method proceedings. In Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1245 (Fed. Cir. 2016), this
court held that claims of the ’850, ’325, and ’733 patents on
appeal from the Board’s decision are patent ineligible. By
early 2017, those three patents were no longer at issue in
the consolidated district court proceeding, and only in-
fringement of the related ’077 patent remained.
Domino’s was among the various defendants accused of
infringement in the district court actions. In June 2018,
defendants Pizza Hut, Inc. and Pizza Hut of America, Inc.
(together, “Pizza Hut”) filed a motion for summary judg-
ment of unpatentability under § 101 with respect to the
’077 patent. Ameranth and Pizza Hut settled, and Dom-
ino’s requested permission in effect to substitute itself for
Pizza Hut to pursue the motion. That request was granted.
On September 25, 2018, the district court granted the
motion for summary judgment of unpatentability, finding
that “the asserted claims of the [’]077 Patent are unpatent-
able under § 101.” J.A. 15. The district then entered final
4 AMERANTH, INC. v. DOMINO'S PIZZA, LLC
judgment in the action against Domino’s and adjudicated
that “all asserted claims of the ’077 Patent (claims 1, 4–9,
11, 13–18) are patent ineligible under Section 101.” J.A. 1–
2.
Ameranth appeals. We have jurisdiction under 28
U.S.C. § 1295(a)(1).
We review a district court’s grant of summary judg-
ment without deference. A district court’s decision on pa-
tent eligibility is reviewed de novo except that its factual
determinations are reviewed for clear error. Berkheimer v.
HP Inc., 881 F.3d 1360, 1365, 1368 (Fed. Cir. 2018).
With respect to jurisdiction, we review de novo
whether a case or controversy exists and apply Federal
Circuit law. Sanofi-Aventis U.S., LLC v. Dr. Reddy’s
Labs., Inc., 933 F.3d 1367, 1372 (Fed. Cir. 2019).
DISCUSSION
I. Jurisdiction
Ameranth contends that it asserted only claims 1, 6, 9,
13, and 17 against Domino’s and thus the district court’s
order invalidating nine other claims (i.e., claims 4–5, 7–8,
11, 14–16, and 18) should be vacated for lack of declaratory
judgment jurisdiction.
Article III courts have subject matter jurisdiction only
if there is an actual case or controversy. See MedImmune,
Inc. v. Genentech, Inc., 549 U.S. 118, 126–27 (2007). “[T]he
existence of a case or controversy must be evaluated on a
claim-by-claim basis” in patent cases. Fox Grp., Inc. v.
Cree, Inc., 700 F.3d 1300, 1307 (Fed. Cir. 2012) (quoting
Jervis B. Webb Co. v. So. Sys., Inc., 742 F.2d 1388, 1399
(Fed. Cir. 1984)). “[J]urisdiction must exist ‘at all stages of
review, not merely at the time the complaint [was] filed,’”
Streck, Inc. v. Research & Diagnostic Sys., Inc., 665 F.3d
1269, 1282 (Fed. Cir. 2012) (second alteration in original)
(quoting Benitec Austl., Ltd. v. Nucleonics, Inc., 495 F.3d
AMERANTH, INC. v. DOMINO'S PIZZA, LLC 5
1340, 1343 (Fed. Cir. 2007)), and “a counterclaimant must
show a continuing case or controversy with respect to with-
drawn or otherwise unasserted claims,” id. at 1283. All of
the circumstances are considered in determining the exist-
ence of a case or controversy. See MedImmune, 549 U.S. at
127.
Ameranth does not dispute the existence of a case or
controversy for claims 1, 6, 9, 13, and 17. But Ameranth
argues that the district court was without power to deter-
mine the patent eligibility of claims 4–5, 7–8, 11, 14–16,
and 18 of the ’077 patent because there was no case or con-
troversy with respect to those claims. We first address the
latter seven claims (claims 7–8, 11, 14–16, and 18).
In its infringement contentions, Ameranth accused
Domino’s of infringing various claims of the ’077 patent in-
cluding the seven claims. Ameranth attached to the com-
plaint, its Disclosure of Asserted Claims and Infringement,
including allegations that “Domino’s Ordering System in-
fringes at least . . . claims 1, 3, 6, 7, 8, 9, 11, 12, 13, 15, 16,
17, and 18 of the [’]077 patent.” J.A. 12425–26. Domino’s
then pled counterclaims seeking a declaratory judgment
that the claims were unpatentable under § 101. Despite
the broad language of the complaint, the district court or-
dered Ameranth to “select no more than five (5) claims from
each patent to assert” and that it “may assert additional
claims at this time only with leave of Court.” J.A. 2192; In
re: Ameranth Patent Litig. Cases (“In re Ameranth”), No.
3:11-cv-01810 (S.D. Cal. 2012), ECF 623 at 2. The district
court also required Ameranth’s infringement contentions
to “consist of one representative version of each Defend-
ant’s accused system for the five selected claims.”
J.A. 2192.
As a result, Ameranth amended its disclosure of as-
serted claims: it listed claims 6–8, 14, and 18 in its Novem-
ber 15, 2013 disclosure; and claims 1, 6, 9, 13, and 17 in its
July 5 and August 7, 2017 disclosures. In re Ameranth,
6 AMERANTH, INC. v. DOMINO'S PIZZA, LLC
ECF 1217-5 at 1, 1217-6 at 1; J.A. 2196. Thus, Ameranth
did not list claims other than 1, 6, 9, 13, and 17 in its latest
amended disclosure of asserted claims. In the amend-
ments, Ameranth stated that the selection was due to the
district court’s order and alleged that “Domino’s infringes
at least the [listed five claims of the ’077 patent]” and it
“reserves the right to assert additional and/or different
claims in the future by Court order.” In re Ameranth, ECF
1217-5 at 1–2, 1217-6 at 1; J.A. 2196. There was no indi-
cation that Ameranth altered its position that Domino’s
Ordering System infringes claims 7–8, 11, 14–16, and 18.
The fact that Ameranth did not include certain claims
which it originally accused of infringement in the amended
disclosure of asserted claims does not mean that a case or
controversy with respect to those claims disappeared. An
actual suit affirmatively asserting the claims is not a re-
quirement for an Article III case or controversy. Cardinal
Chem. Co. v. Morton Int’l, Inc., 508 U.S. 83, 95 (1993) (“In
patent litigation, a party may satisfy th[e] burden, and
seek a declaratory judgment, even if the patentee has not
filed an infringement action.”). The Supreme Court in
MedImmune has also held that even a “reasonable appre-
hension of suit” is not a requirement for Article III jurisdic-
tion. 549 U.S. at 132 n.11; see also Asia Vital Components
Co. v. Asetek Danmark A/S, 837 F.3d 1249, 1252 n.1 (Fed.
Cir. 2016) (recognizing that a “reasonable apprehension of
imminent suit” is no longer a prerequisite although it may
be a factor that can satisfy Article III controversy).
Ameranth’s original accusation that Domino’s in-
fringed claims 7–8, 11, 14–16, and 18 created a case or con-
troversy. See Cardinal Chem., 508 U.S. at 99–100. “A
company once charged with infringement must remain con-
cerned about the risk of similar charges if it develops and
markets similar products in the future.” Id. “Merely the
desire to avoid the threat of a ‘scarecrow’ patent, in
Learned Hand’s phrase, may [] be sufficient to establish ju-
risdiction under the Declaratory Judgment Act.” Id. at 96.
AMERANTH, INC. v. DOMINO'S PIZZA, LLC 7
Under our case law, the original case or controversy
could cease if the patentee withdrew its claims of infringe-
ment. See Streck, Inc. v. Research & Diagnostic Sys., Inc.,
665 F.3d 1269, 1276, 1284 (Fed. Cir. 2012) (patentee elim-
inated claims in its infringement contentions that included
information on “[e]ach claim of each patent in suit that is
allegedly infringed” by the opposing party (alteration in
original)); Fox Grp., Inc. v. Cree, Inc., 700 F.3d 1300, 1308
(Fed. Cir. 2012) (patentee withdrew its assertion of certain
claims).
Unlike Streck and Fox, there is no indication that
Ameranth here withdrew its accusations of alleged in-
fringement of claims 7–8, 11, 14–16, and 18. Ameranth
limited its claims here only because it was compelled to
limit the claims by order of the district court. Eliminating
claims 7–8, 11, 14–16, and 18 from the amended disclosure
of asserted claims did not eliminate the case or controversy
with respect to those claims.
This case is similar to Voter Verified, Inc. v. Premier
Election Solutions, Inc., 698 F.3d 1374 (Fed. Cir. 2012). In
Voter Verified, the patentee alleged in its complaint in-
fringement of every claim of the asserted patent but “later
pared back its infringement contentions” with the “caveat
that discovery might dictate reintroducing ‘other claims in
the patents in suit.’” Id. at 1382. This court held that the
defendants “kept any ‘unasserted’ claims before the district
court by maintaining their respective counterclaims” and
thus the district court had jurisdiction to rule on the valid-
ity of those claims. Id. This is consistent with the Declar-
atory Judgment Act, which allows a defendant to
“counterclaim for a declaration of invalidity and nonin-
fringement . . . [so that] the defendant is protected against
the possibility that the [rights holder] will dismiss the suit
or that the infringement action will not resolve all of the
issues between the parties.” Green Edge Enters., LLC v.
Rubber Mulch Etc., LLC, 620 F.3d 1287, 1300–01 (Fed. Cir.
2010) (quoting 10B Charles Alan Wright, Arthur R. Miller
8 AMERANTH, INC. v. DOMINO'S PIZZA, LLC
& Mary Kay Kane, Federal Practice and Procedure § 2761
(3d ed. 1998 & Supp. 2010)). In summary, a case or contro-
versy existed with respect to claims 7–8, 11, 14–16, and 18.
The remaining claims found to be patent ineligible by
the district court are claims 4 and 5. In its infringement
contentions, Ameranth did not accuse Domino’s of infring-
ing claims 4 and 5 while it noticed other claims discussed
above. Domino’s conceded during oral argument that there
was no case or controversy with respect to claims 4 and 5. 1
We therefore conclude that the district court did not have
jurisdiction to determine the patent eligibility of claims 4
and 5 of the ’077 patent.
II. Notice
Ameranth contends that even if there was a case or
controversy with respect to claims 4–5, 7–8, 11, 14–16, and
18, it did not receive notice that those claims would be sub-
ject to the summary judgment motion or ruling.
Ameranth points out that Pizza Hut originally filed a
motion for summary judgment of unpatentability with re-
spect to only claims 1, 6, 8, 13, and 17. But under Rule 56
of the Federal Rules of Civil Procedure, a district court has
power to enter summary judgments sua sponte. Fed. R.
Civ. P. 56(f); see also Int’l Visual Corp. v. Crown Metal Mfg.
Co., 991 F.2d 768, 770 (Fed. Cir. 1993) (citing Celotex Corp.
v. Catrett, 477 U.S. 317, 326 (1986)). For such judgments
to be proper, generally the losing party should be on notice
so that it has an opportunity to present evidence. See Fed.
R. Civ. P. 56(f); Int’l Visual, 991 F.2d at 770; OSRAM Syl-
vania, Inc. v. Am. Induction Techs., Inc., 701 F.3d 698, 709
(Fed. Cir. 2012) (citing Portland Retail Druggists Ass’n v.
1 During oral argument, Domino’s included claim 14
in the list of claims not originally asserted, but, as dis-
cussed above, the record shows that Ameranth affirma-
tively asserted claim 14 in its November 15, 2013, amended
disclosure.
AMERANTH, INC. v. DOMINO'S PIZZA, LLC 9
Kaiser Found. Health Plan, 662 F.2d 641, 645 (9th Cir.
1981)).
Ninth Circuit law, which governs here, recognizes sit-
uations where a district court may enter summary judg-
ment against a party even without notice if the party had
a “full and fair opportunity to ventilate the issues.” See
Arce v. Douglas, 793 F.3d 968, 976 (9th Cir. 2015) (quoting
United States v. Grayson, 879 F.2d 620, 625 (9th Cir.
1989)). In Grayson, for example, the district court ruled
beyond the government’s summary judgment motion and
dismissed the defendants’ counterclaim. 879 F.2d at 625.
The defendants had developed factual allegations and legal
theories with respect to the counterclaim and presented
them in their briefing in opposition to the government’s
motion. Id. The defendants thus had a “full and fair op-
portunity to ventilate the issues raised in their counter-
claim” that was not covered by the motion. Id. There was
similarly a full and fair opportunity here.
When Pizza Hut settled with Ameranth and Domino’s
requested to join Pizza Hut’s motion, the district court al-
lowed the request and permitted Ameranth to file a supple-
mental opposition. Ameranth’s supplemental opposition
addressed all the claims and not just the five listed in the
summary judgment motion. For instance, Ameranth ar-
gued the patent eligibility of “the claims of the [’]077 Pa-
tent,” stating that “none of the [’]077 Patent claims are
directed to merely ‘configuring and transmitting menus,’”
and contended that they are “not directed to any abstract
idea.” J.A. 10235, 10240; In re Ameranth, ECF 1313 at 8.
It asserted the “eligibility of claims 1–12 of the [’]077 Pa-
tent,” and further argued the non-conventionality of “all
claims,” noting that they were issued after “a lengthy,
seven year prosecution process” and “found valid by the
PTAB” in response to multiple CBM petitions. J.A. 10250–
51, 10255. Ameranth also argued that “claims 2–5, 7, 10–
12, 14–16 and 18 are patent eligible.” J.A. 10258.
10 AMERANTH, INC. v. DOMINO'S PIZZA, LLC
As such, we find that Ameranth had the opportunity to
and did address claims 7–8, 11, 14–16 and 18 in its supple-
mental briefing. After a hearing, the district court granted
the summary judgment motion, ruling that “the asserted
claims of the [’]077 Patent are unpatentable under § 101,”
J.A. 15, and entered judgment that “all asserted claims of
the ’077 Patent (claims 1, 4–9, 11, 13–18) are patent ineli-
gible under Section 101,” J.A. 1–2. Under the circum-
stances, we see no procedural error in granting summary
judgment with respect to claims 7–8, 11, 14–16 and 18.
III. Patent Eligibility
We next address the patent eligibility of claims 1, 6–9,
11, and 13–18 of the ’077 patent. Ameranth argues that
the district court erred by relying on Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229 (Fed. Cir. 2016), which held
that claims of the ’850, ’325, and ’733 patents on appeal are
patent ineligible. Those patents and the ’077 patent are in
the same patent family.
In Apple, the claims covered a first menu consisting of
menu categories and an application software for generat-
ing a second menu using the first menu. 842 F.3d at 1234.
The Board had determined that the claims “are directed to
the abstract idea of ‘generating a second menu from a first
menu and sending the second menu to another location.’”
Id. at 1240. This court held that the claims are abstract as
they neither recited “a particular way of programming or
designing the software to create menus” with particular
features nor covered “a specific improvement in the way
computers operate” and that the claim limitations are in-
significant post-solution activities. Id. at 1241–42.
Ameranth asserts that claims 1, 6–9, 11, and 13–18 of
the ’077 patent recite different elements than the claims at
issue in Apple. To be sure, independent claims 1, 9, and
13 are different from the claims in Apple in some respects.
Here, claims 1 and 9 cover systems enabled for synchro-
AMERANTH, INC. v. DOMINO'S PIZZA, LLC 11
nous communications and automatic formatting of a pro-
grammed handheld menu configuration (“PHMC”) that is
generated using a master menu and that can display cas-
caded sets of linked graphical user interface (“GUI”)
screens for multiple handheld devices. Similarly, claim 13
recites a system that can automatically format a PHMC for
display as cascaded sets of linked GUI screens and syn-
chronize information between its master database,
handheld device, web server, and webpage. Notwithstand-
ing the difference from Apple, the district court found that
the claims of the ’077 patent suffered from the same ineli-
gibility defects. We agree, applying the two-step approach
of Alice Corp. v. CLS Bank International, 573 U.S. 208
(2014) and Mayo Collaborative Services v. Prometheus La-
boratories, Inc., 566 U.S. 66 (2012).
At step one, we “first determine whether the claims at
issue are directed to a patent-ineligible concept.” Alice, 573
U.S. at 218. We generally agree with the district court that
the claims are directed to configuring and transmitting
hospitality menu related information using a system that
is capable of synchronous communications and automatic
formatting. This focus is confirmed by Ameranth’s charac-
terization that automatically configuring and synchroniz-
ing menus for multiple handheld devices was not
previously possible and the specification’s emphasis that
the inventions enable automatic database updates and fast
synchronization between a database and handheld devices.
’077 patent, col. 3, ll. 27–35, col. 5, ll. 3–7; see also Charge-
Point, Inc. v. SemaConnect, Inc., 920 F.3d 759, 765–66
(Fed. Cir. 2019) (explaining that the step one inquiry “as
looking at the ‘focus’ of the claims” and the specification
may illuminate the true focus).
As recited in the claims, the concept of synchronous
communications and automatic formatting for different
handheld devices without more is an abstract idea. See
Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1316 (Fed.
Cir. 2019) (“[T]he need to perform tasks automatically is
12 AMERANTH, INC. v. DOMINO'S PIZZA, LLC
not a unique technical problem.”). Claims 1, 9, and 13 do
not contain specifics of “a particular conception of how to
carry out that concept” and thus fail to make those claims
non-abstract. Interval Licensing LLC v. AOL, Inc., 896
F.3d 1335, 1346 (Fed. Cir. 2018). Those claims “fail[] to
recite a practical way of applying an underlying idea . . .
[and] instead were drafted in such a result-oriented way
that they amounted to encompassing ‘the principle in the
abstract’ no matter how implemented.” Id. at 1343; see also
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1356
(Fed. Cir. 2016) (“[E]ssentially result-focused” and func-
tional language “has been a frequent feature of claims held
ineligible under § 101”). Ameranth concedes that the
claims cover “a particular way of programming and design-
ing the software.” Appellant Br. 23. But the claims do not
describe the software other than results sought to be
achieved. 2
Given that the claims are abstract, at step two, we next
determine whether the claimed limitations involve more
than “well-understood, routine, and conventional ac-
tivit[ies].” Alice, 573 U.S. at 225 (alteration in original)
(quoting Mayo, 566 U.S. at 73). The district court con-
cluded that the recited hardware and software elements
and features including “real-time synchronization,” “auto-
matic formatting . . . for display as cascaded sets of linked
graphical user interface[s],” and a “different number of
user interface screens from at least one other wireless
2 Ameranth argues that this case is like Core Wire-
less Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d
1356 (Fed. Cir. 2018) where claims involving the display of
menu on a screen were held to be patent eligible. Core
Wireless is distinguishable because there the claims in-
cluded specific details such as, inter alia, “a particular
manner by which the summary window must be accessed”
and limitations on “the type of data that can be displayed
in the summary window.” 880 F.3d at 1362–63.
AMERANTH, INC. v. DOMINO'S PIZZA, LLC 13
handheld computing device” do not make the claims in-
ventive. J.A. 14–15.
Claims fall short of an inventive concept when they
“simply instruct the practitioner to implement the abstract
idea with routine, conventional activity.” Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014). The
specification acknowledges that the “functions falling
within the described invention” can be based on “commonly
known” programming steps, ’077 patent, col. 12, ll. 57–61,
and the claim limitations describe a desired result but do
not instruct how to accomplish that result. The alleged ab-
stract idea cannot, itself, provide an inventive concept.
This is because “a claimed invention’s use of the ineligible
concept to which it is directed cannot supply the inventive
concept that renders the invention ‘significantly more’ than
that ineligible concept.” BSG Tech LLC v. Buyseasons,
Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018). That is the case
here. Accordingly, we conclude that independent claims 1,
9, and 13 are directed to an abstract idea, fail to disclose an
inventive concept, and thus are patent ineligible.
Dependent claims 6–8, 11, and 14–18 recite limitations
that do not cure the above problems. Claims 6 and 18 re-
quire a smartphone; claims 7 and 17 recite completion of
payment processing; and claim 8 recites creating layout,
views, or fonts in conformity with display screen parame-
ters and enabling preview for manual modification. Claims
11 and 16 require two integrated hospitality applications;
claim 14 covers a Wireless Hub Application, Web Hub Ap-
plication, Linked Databases, and Communications Setup
Application; and claim 15 recites automatic importation of
information from a database. These additional limitations
in those claims are themselves routine and conventional,
and thus we determine that they are also patent ineligible.
Ameranth contends that the district court ignored its
declarations on the inventiveness of its patent claims. But
14 AMERANTH, INC. v. DOMINO'S PIZZA, LLC
even after reviewing the evidence in the light most favora-
ble to Ameranth, it does not create a genuine dispute of
material fact that would preclude summary judgment.
The declarations to a large extent are directed to un-
claimed features. For instance, the declaration of Dr. Mi-
chael Shamos, Ameranth’s expert, emphasizes that
maintaining screen linkages was a core feature why the
claimed inventions were not conventional. Such a feature,
however, is not recited in the claims. 3
Other declarations are equally irrelevant for different
reasons. The declaration of inventor Mr. Keith McNally in-
cludes statements that no one had implemented the pur-
ported inventive features prior to his realization. The
declaration of Mr. Douglas Dedo states that “Microsoft con-
sidered Ameranth’s new system synchronization and inte-
gration technology to be innovative and ground-breaking
in 1999–2000.” J.A. 11112. But these declarations do little
to relate the claimed features to the asserted praise. In any
event, “[g]roundbreaking, innovative, or even brilliant dis-
covery does not by itself satisfy the § 101 inquiry.” Ass’n
for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 591 (2013). And “[t]hat some of the . . . steps were not
previously employed . . . is not enough—standing alone—
to confer patent eligibility.” Ultramercial, 772 F.3d at 716;
see also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1p151 (Fed. Cir. 2016) (“[A] claim for a new abstract
idea is still an abstract idea.” (emphasis in original)).
Ameranth also argues that its declarations confirm
that the inventions solved computerized problems. But
they contain general statements that are uninformative
and suffer from the above deficiencies.
3 Ameranth similarly argues that its inventions
eliminate the need for scrolling in the display of small
screen devices. This feature also is not claimed.
AMERANTH, INC. v. DOMINO'S PIZZA, LLC 15
Accordingly, we agree with the district court’s determi-
nation that claims 1, 6–9, 11, and 13–18 are patent ineligi-
ble.
CONCLUSION
For the foregoing reasons, we affirm the district court’s
grant of summary judgment of patent ineligibility with re-
spect to claims 1, 6–9, 11, and 13–18, and remand to the
district court to vacate the judgment with respect to claims
4 and 5 for lack of declaratory judgment jurisdiction.
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED
COSTS
Each party shall bear its own costs.