Apple, Inc. v. Ameranth, Inc.

United States Court of Appeals
for the Federal Circuit
______________________
APPLE, INC., DOMINO’S PIZZA, INC., DOMINO’S
PIZZA, LLC, FANDANGO, LLC, OPENTABLE, INC.,
Appellants
v.
AMERANTH, INC.,
Cross-Appellant
______________________
2015-1703, 2015-1704
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board, in No.
CBM2014-00013.
-------------------------------------------------------------------------
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,
2 APPLE, INC. v. AMERANTH, INC.
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
______________________
2015-1792, 2015-1793
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board, in Nos.
CBM2014-00015, CBM2014-00016.
______________________
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. Fan-
dango, LLC, OpenTable, Inc., Expedia, Inc., Hotel To-
night, Inc., Hotwire, Inc., Hotels.com, L.P., Kayak
Software Corporation, Live Nation Entertainment, Inc.,
Orbitz, LLC, Papa John’s USA, Inc., Stubhub, Inc.,
APPLE, INC. v. AMERANTH, INC. 3
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 ap-
pellee Agilysys, Inc. in 2015-1792, -1793. Also represent-
ed by NICHOLAS R. MERKER.
JARED BOBROW, Weil, Gotshal & Manges LLP, Red-
wood Shores, CA, for appellee Oracle Corporation in 2015-
1792, -1793. Also represented by BRIAN CHANG.
LOWELL D. MEAD, Cooley LLP, Palo Alto, CA, for ap-
pellee 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.
4 APPLE, INC. v. AMERANTH, INC.
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.
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.
APPLE, INC. v. AMERANTH, INC. 5
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 graph-
ical user interface,
d. a first menu consisting of menu catego-
ries, 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,
1 The ’325 patent and ’850 patent have the same
specifications. The ’325 patent issued from an application
which was a continuation of the application that issued as
the ’850 patent. The ’733 patent issued from an applica-
tion which was a continuation-in-part of the application
that issued as the ’850 patent. The ’733 patent’s specifi-
cation is largely the same as the other patents, containing
two additional figures and some additional description.
6 APPLE, INC. v. AMERANTH, INC.
e. a modifier menu stored on said data
storage device and displayable in a win-
dow of said graphical user interface,
f. a sub-modifier menu stored on said data
storage device and displayable in a win-
dow 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 wire-
less handheld computing device or Web
page,
wherein the application software facili-
tates 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, addi-
tion 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 modi-
fier 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 pa-
tent 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.
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 appe-
APPLE, INC. v. AMERANTH, INC. 7
tizers and entrees, items such as chicken Caesar salad,
modifiers such as dressing, and sub-modifiers such as
Italian and bleu 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 tech-
nique for creating restaurant menus and the like for use
in a limited display area wireless handheld device or that
8 APPLE, INC. v. AMERANTH, INC.
is compatible with ordering over the internet ha[d] pre-
vented 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”) peti-
tioned 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”) con-
strued the claims, found that each patent met the statuto-
ry definition of “covered business method patent,” and
instituted CBM reviews. In its final decisions, the Board
found certain claims in 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 analy-
sis 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.
2 Specifically, the Board found that claims 1–11 of
the ’850 patent, claims 1–10 of the ’325 patent, and claims
1, 2, 4, 5, 10, and 12 of the ’733 patent were all unpatent-
able under § 101.
APPLE, INC. v. AMERANTH, INC. 9
The Director of the United States Patent and Trade-
mark Office (“Patent Office”) has intervened. She argues
that this court lacks jurisdiction to review the Board’s
decision that the patents are CBM patents, and that all of
the Board’s determinations were correct. We have juris-
diction under 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
We review the Board’s legal conclusions de novo and
its factual findings for substantial evidence. In re Roslin
Inst. (Edinburgh), 750 F.3d 1333, 1335 (Fed. Cir. 2014).
The “ultimate interpretation” of a claim term is a legal
conclusion reviewed de novo. Teva Pharm. USA, Inc. v.
Sandoz, Inc., 135 S. Ct. 831, 841 (2015). If the Board
makes subsidiary factual findings about extrinsic evi-
dence that underlie its construction, we review those
factual findings for substantial evidence. Microsoft Corp.
v. Proxyconn, Inc., 789 F.3d 1292, 1297 (Fed. Cir. 2015)
(citing Teva, 135 S. Ct. at 841–42). We review the Board’s
reasoning that the patents are CBM patents under the
arbitrary and capricious standard. SightSound Techs.,
LLC v. Apple Inc., 809 F.3d 1307, 1315 (Fed. Cir. 2015).
We review § 101 patent eligibility de novo. Roslin Inst.,
750 F.3d at 1335.
I. Claim Constructions
Ameranth appeals the Board’s claim constructions,
arguing that the Board’s CBM and § 101 determinations
were “based on a misapprehension of the actually claimed
subject matter.” -1792 Appellant’s Br. 5; -1703 Cross-
Appellant’s Br. 8.
During CBM review, the Board construes claims in an
unexpired patent according to their broadest reasonable
construction in light of the patent’s specification. 37
C.F.R. § 42.300(b); cf. Cuozzo Speed Techs., LLC v. Lee,
136 S. Ct. 2131, 2142 (2016) (upholding the Patent Office
regulation requiring the use of the broadest reasonable
10 APPLE, INC. v. AMERANTH, INC.
construction in the analogous context of inter partes
review).
A. Menu
Before the Board, Ameranth argued that the term
“menu” should be construed as “computer data represent-
ing collections of linked levels of choices or options in-
tended for display in a graphical user interface.” Agilysys,
Inc. v. Ameranth, Inc., CBM2014-00015, 2015 WL
1324400, at *7–8 (P.T.A.B. Mar. 20, 2015) (“’850 Fin.
Dec.”); Agilysys, Inc. v. Ameranth, Inc., CBM2014-00016,
2015 WL 1324401, at *9 (P.T.A.B. Mar. 20, 2015) (“’325
Fin. Dec.”); Apple, Inc. v. Ameranth, Inc., CBM2014-
00013, 2015 WL 1324399, at *8–9 (P.T.A.B. Mar. 20,
2015) (“’733 Fin. Dec.”).
The Board construed the term “menu” to be “a list of
options available to a user displayable on a computer.”
’850 Fin. Dec. at *8; ’325 Fin. Dec. at *9; ’733 Fin. Dec. at
*9.
Ameranth argues that the Board’s construction is
wrong because it does not include language stating that
the claimed menus are hierarchical. Ameranth argues
that the construction is inconsistent with language in the
claims expressly reciting a hierarchical menu.
The Board was correct to not include in its construc-
tion of “menu” features of menus that are expressly
recited in the claims. Ideally, claim constructions give
meaning to all of a claim’s terms. Merck & Co. v. Teva
Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005).
Construing a claim term to include features of that term
already recited in the claims would make those expressly
recited features redundant.
B. Synchronous Communications System
Before the Board, Ameranth argued that certain claim
preambles reciting “synchronous communications system”
APPLE, INC. v. AMERANTH, INC. 11
were limiting. 3 It argued that “a synchronous communi-
cation system requires a central back-office server that
communicates data updates to and from multiple client
devices.” ’850 Fin. Dec. at *6; ’325 Fin. Dec. at *7; ’733
Fin. Dec. at *7. In its final decisions, the Board declined
to find these preambles limiting. 4
Ameranth argues that the Board erred when it de-
clined to find these claim preambles limiting. We agree
with the Board that nothing in the patents’ specifications
indicates that a synchronous communication system is
required to include a central back-office server that com-
municates data updates to and from multiple client
devices. A person of ordinary skill in the art would not
have understood the broad term “synchronous communi-
cations systems” to include only such systems. See Phil-
lips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)
(en banc). The Board was correct in determining that the
preamble recitations of “synchronous communications
system” are not limiting.
C. Central Processing Unit
Ameranth argued before the Board that the term
“central processing unit” should be construed as “central
3 The preambles of claim 1 of the ’850 patent,
claims 1 and 7–9 of the ’325 patent, and claim 1 of the
’733 patent recite “[a]n information management and
synchronous communications system for generating and
transmitting menus.” The preambles of claims 4, 5, and
12 of the ’733 patent include similar language.
4 The Board later noted that the patent specifica-
tions disclose that Windows CE® was a “common GUI
operating system” and included “built in synchronization
between handheld devices, internet and desktop infra-
structure.” ’733 Fin. Dec. at *16, 18, 20.
12 APPLE, INC. v. AMERANTH, INC.
server.” ’850 Fin. Dec. at *6–7; ’325 Fin. Dec. at *8–9;
’733 Fin. Dec. at *7–8. The Board instead construed the
term as “the computational and control unit of a comput-
er.” Id.
On appeal, Ameranth argues that the Board erred in
its construction. In support, Ameranth makes two main
arguments.
First, Ameranth argues that the recited central pro-
cessing unit is not a generic central processing unit, but is
instead a particular processing unit which, with applica-
tion software, provides synchronized second menus across
different devices in the system. It urges that the term
“central processing unit” must be construed to include the
functions ascribed to that unit in the claims, and that the
central processing unit cannot be a generic processor.
But, as noted above, construing a claim term to include
features of that term that are already recited in the
claims would make those expressly recited features
redundant. Merck, 395 F.3d at 1372.
Second, Ameranth argues that the Board’s construc-
tion is precluded by claim differentiation, as claim 5 of the
’733 patent expressly recites “microprocessor.” We disa-
gree. This court has declined to apply the doctrine of
claim differentiation where “the claims are not otherwise
identical in scope.” Indacon, Inc. v. Facebook, Inc., 824
F.3d 1352, 1358 (Fed. Cir. 2016). Claim 5 of the ’733
patent is an independent claim, and Ameranth is correct
that it recites “microprocessor” where other claims recite
“central processing unit.” But claim 5 also differs from
the other independent claims in many other ways, and so
the claims “are not otherwise identical in scope.” In
addition, “two claims with different terminology can
define the exact same subject matter.” Curtiss-Wright
Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 1380
(Fed. Cir. 2006). In other words, although claim 5 recites
“microprocessor” and others recite “central processing
APPLE, INC. v. AMERANTH, INC. 13
unit,” this does not necessarily mean that the two terms
must have a different meaning.
The Board was correct in not construing the term
“central processing unit” to refer only to particular pro-
cessors with certain features. The Board’s construction
used language from a definition of central processing unit
from the Microsoft Computer Dictionary, 115 (4th Ed.
1999) (“the computational and control unit of a comput-
er”). See, e.g., ’850 Fin. Dec. at *7. The Board’s construc-
tion was consistent with the use of the term “central
processing unit” in the specifications. The patent specifi-
cations explain that “a typical workstation platform
includes hardware such as a central processing unit
(‘CPU’), e.g., a Pentium® microprocessor.” See ’850 patent
col. 5 ll. 37–39; ’733 patent col. 6 ll. 52–54; see also ’850
patent col. 5 ll. 48–50 and ’733 patent col. 6 ll. 63–65.
II. CBM Patents
The Board decided that the patents are CBM patents.
The Board first found that the patents meet the “financial
product or service” component of the definition of CBM
patents. See, e.g., Agilysys, Inc. v. Ameranth, Inc.,
CBM2014-00015, 2014 WL 1440416, at *7–8 (P.T.A.B.
Mar. 26, 2014) (“’850 Inst. Dec.”). The Board then found
that the patents did not fall within the “technological
invention” exception of the definition. Id. at *6–7.
Ameranth appeals the Board’s decision that the pa-
tents are CBM patents. 5 Ameranth does not appeal the
5 The Patent Office argues that this Court lacks
jurisdiction to review this issue under In re Hiniker Co.,
150 F.3d 1362 (Fed. Cir. 1998) and In re Cuozzo Speed
Techs., LLC, 793 F.3d 1268, 1271 (Fed. Cir. 2015), aff’d
sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
2131 (2016). We disagree. In Versata Development
14 APPLE, INC. v. AMERANTH, INC.
Board’s “financial product or service” determination, but
it argues that the patents fall within the exception for
technological inventions.
The term “covered business method patent” means “a
patent that claims a method or corresponding apparatus
for performing data processing or other operations used in
the practice, administration, or management of a finan-
cial product or service, except that the term does not
include patents for technological inventions.” Leahy-
Smith America Invents Act, Pub. L. No. 112–29,
§ 18(d)(1), 125 Stat. 284, 331 (2011) (emphasis added).
The Patent Office promulgated the following regulation
defining technological inventions:
In determining whether a patent is for a techno-
logical invention solely for purposes of the Transi-
tional Program for Covered Business Methods
(section 42.301(a)), the following will be consid-
ered on a case-by-case basis: whether the claimed
subject matter as a whole recites a technological
feature that is novel and unobvious over the prior
art; and solves a technical problem using a tech-
nical solution.
37 C.F.R. § 42.301(b).
Group, Inc. v. SAP America, Inc., 793 F.3d 1306, 1323
(Fed. Cir. 2015), we held that we have jurisdiction to
review this issue. This court’s Versata decision noted
several reasons why this court’s holding in Cuozzo was
not inconsistent with Versata. 793 F.3d at 1322. To the
extent that 35 U.S.C. § 314(d) is analogous to 35 U.S.C.
324(e), the Supreme Court in Cuozzo stated that § 314(d)
does not permit the Patent Office to “act outside its statu-
tory limits.” 136 S. Ct. at 2141.
APPLE, INC. v. AMERANTH, INC. 15
This court has noted that this regulation offers little
towards understanding the meaning of the term “techno-
logical invention.” Versata, 793 F.3d at 1326. But deter-
mining whether these patents are a technological
invention does not require this court to determine “the
full sweep of the term.” Id. at 1327.
The Board found that neither prong of 37 C.F.R.
§ 42.301(b) was satisfied. First, the Board found that the
patents did not claim a technological feature that is novel
and unobvious over the prior art. Agilysys, Inc. v.
Ameranth Inc., CBM2014-00016, 2014 WL 1440421, at *7
(P.T.A.B. Mar. 26, 2014) (“’325 Inst. Dec.”) at *7. The
Board explained that the specifications disclosed that the
hardware used in the claimed systems was “typical,” and
that the programming steps were “commonly known.”
See, e.g., ’325 Inst. Dec. at *7–8. 6
Second, the Board found that the claimed inventions
did not solve a technical problem using a technical solu-
tion. Ameranth argued that its patents were solutions for
various problems, and the Board determined that neither
the solutions nor the problems were technical. For exam-
ple, Ameranth had argued that the ’850 and ’325 patents
“solv[ed] the problem of how to display and synchronize
computerized menus on non-standard devices/interfaces.”
’325 Inst. Dec. at *8; ’850 Inst. Dec. at *8. The Board
6 In the institution decisions, the Board stated that
a patent need have only one claim directed to a covered
business method to be eligible for CBM review. See, e.g.,
’325 Inst. Dec. at *5. On that basis, it analyzed only one
claim from each patent: claim 1 of the ’325 patent, claim 1
of the ’850 patent, and claim 12 of the ’733 patent. ’325
Inst. Dec. at *6–8; ’850 Inst. Dec. at *7–8; Apple, Inc. v.
Ameranth, Inc., CBM2014-00013, 2014 WL 1440408, at *8
(P.T.A.B. Mar. 26, 2014) (“’733 Inst. Dec.”).
16 APPLE, INC. v. AMERANTH, INC.
explained that the claims did not recite a solution to this
problem, as they do not include recitations about how to
display or synchronize the menus, but instead include
descriptions about menu generation. Id. Similarly,
Ameranth had argued that the ’733 patent was intended
to solve a problem in restaurant ordering when customers
wanted something unusual and unanticipated. ’733 Inst.
Dec. at *9. The Board found that this was “more of a
business problem than a technical problem.” Id.
On appeal, Ameranth argues that the patents fall
within the “technological inventions” exception because
they recite technological features, including specific
software which was distinctive over the prior art, and
because the petitioners made no showing that these
features were known or conventional.
We affirm the Board’s determinations that these are
not patents for technological inventions. The Board’s
determinations were supported by substantial evidence
and are neither arbitrary nor capricious. We agree with
the Board’s determination that these claims do not solve
technical problems using technical solutions.
Ameranth also contends that the Board’s analysis on
this issue did not address Ameranth’s objective evidence
of non-obviousness. It argues that “[f]ailure to consider
such evidence was error given that the PTO Regulations
require analysis of whether the claims recite a technologi-
cal feature that is ‘unobvious over the prior art.’” -1792
Appellant’s Br. 20 (quoting 37 C.F.R. § 42.301); -1703
Cross-Appellant’s Br. 29 (same).
We need not address this argument regarding wheth-
er the first prong of 37 C.F.R. § 42.301(b) was met, as we
affirm the Board’s determination on the second prong of
the regulation—that the claimed subject matter as a
whole does not solve a technical problem using a technical
solution.
APPLE, INC. v. AMERANTH, INC. 17
III. Section 101 Determinations
A. Claims the Board Found Unpatentable
The Board found certain claims unpatentable under
§ 101. Ameranth appeals these determinations. 7
To determine whether a claim is eligible under § 101,
we must “first determine whether the claims at issue are
directed to a patent-ineligible concept.” Alice Corp. v.
CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014). If they are,
we then “consider the elements of each claim both indi-
vidually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of
the claim’ into a patent-eligible application.” Id. (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132
S. Ct. 1289, 1297–98 (2012)).
i. Step One
At the first step, 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.” ’850 Fin.
Dec. at *11; ’325 Fin. Dec. at *18; ’733 Fin. Dec. at *12.
Ameranth argues that the Board’s § 101 analysis
changed slightly between the Board’s institution decisions
7 Ameranth’s arguments on appeal are primarily
directed to “the claims” or “claim 1” of the ’325 and ’850
patents and “the claims” or “claim 1” of the ’733 patent.
Given this, and the fact that all three patents have nearly
identical claims as their first claim, we address all the
claims the Board found invalid under § 101 together.
This is consistent with the Board’s § 101 analysis, which
is quite similar for all three patents. Ameranth raised
only a few arguments that apply to a subset of claims or
patents, and those are addressed separately.
18 APPLE, INC. v. AMERANTH, INC.
and its final decisions. In the institution decisions, the
Board described the patent claims as directed to generat-
ing a menu on a computer. ’325 Inst. Dec. at *14; ’850
Inst. Dec. at *14; ’733 Inst. Dec. at *9. In the final deci-
sions, the Board added to this description, finding the
patent claims are directed to the abstract idea of generat-
ing a second menu from a first menu and sending the
second menu to another location. ’850 Fin. Dec. at *11;
’325 Fin. Dec. at *18; ’733 Fin. Dec. at *12.
An abstract idea can generally be described at differ-
ent levels of abstraction. As the Board has done, the
claimed abstract idea could be described as generating
menus on a computer, or generating a second menu from
a first menu and sending the second menu to another
location. It could be described in other ways, including, as
indicated in the specification, taking orders from restau-
rant customers on a computer.
The Board’s slight revision of its abstract idea analy-
sis does not impact the patentability analysis. The Su-
preme Court has recognized that “all inventions . . .
embody, use, reflect, rest upon, or apply laws of nature,
natural phenomena, or abstract ideas.” Alice, 134 S. Ct.
at 2354 (quoting Mayo, 132 S. Ct. at 1293). But not all
claims are directed to an abstract idea. See, e.g., Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1334–36 (Fed. Cir.
2016); McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1316 (Fed. Cir. 2016).
The step one inquiry focuses on determining “wheth-
er the claim at issue is ‘directed to’ a judicial exception,
such as an abstract idea.” McRO, Inc., 837 F.3d at 1312.
We determine whether the claims “focus on a specific
means or method that improves the relevant technology”
or are “directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and
machinery.” Id. at 1314.
APPLE, INC. v. AMERANTH, INC. 19
We affirm the Board’s conclusion that the claims in
these patents are directed to an abstract idea. The pa-
tents claim systems including menus with particular
features. They do not claim a particular way of pro-
gramming or designing the software to create menus that
have these features, but instead merely claim the result-
ing systems. Id. Essentially, the claims are directed to
certain functionality—here, the ability to generate menus
with certain features. Alternatively, the claims are not
directed to a specific improvement in the way computers
operate. Cf. Enfish, 822 F.3d at 1335–36.
ii. Step Two
In the second step, the Board found that the recited
central processing unit, data storage device, and operat-
ing system components were “typical” hardware elements.
’850 Fin. Dec. at *12; ’325 Fin. Dec. at *18; ’733 Fin. Dec.
at *13. It found aspects of the recited menus were de-
scribed as conventional in the specifications. ’850 Fin.
Dec. at *12; ’325 Fin. Dec. at *19; ’733 Fin. Dec. at *13.
The Board quoted language from the specifications stat-
ing that “the discrete programming steps are commonly
known.” Id. The Board also stated that “[e]ven when the
claim elements are considered as a combination, they add
nothing that is not already present when the elements are
considered separately.” ’850 Fin. Dec. at *13; ’325 Fin.
Dec. at *20; ’733 Fin. Dec. at *14.
With regard to step two, Ameranth argues broadly
that none of the claims are directed to something conven-
tional or routine. In addition, Ameranth identifies certain
aspects of certain claims that it argues make those claims
directed to patent-eligible subject matter.
Specifically, first it points to the term “second menu is
manually modified after generation” in claim 1 of the ’733
patent. One example the ’733 patent’s specification
provides for this limitation is a restaurant server writing
“with lemon” on a screen of an electronic device, after
20 APPLE, INC. v. AMERANTH, INC.
selecting “Iced Tea” from the screen. Col. 4 ll. 6–10. The
Board explained that manual modification of a menu
could also include printing the second menu and then
writing on it with a pen. ’733 Fin. Dec. at *14. Citing
specification support, the Board noted that menus were
commonly printed on paper, and that it was known to use
pens in the hospitality industry. ’733 Fin. Dec. at *14.
Second, Ameranth points to the synchronization limi-
tation in independent claims 4, 5, and 12 of the ’733
patent. For example, claim 4 recites in part that “data
comprising the second menu is synchronized between the
data storage device connected to the central processing
unit and at least one other computing device.” ’733 patent
col. 16 ll. 48–51. The Board explained that testimony
from Ameranth during trial indicated that mere down-
loading could satisfy the synchronization limitation, and
that the ’733 patent’s specification disclosed that the
Windows CE® operating system included “built in syn-
chronization between handheld devices, internet and
desktop infrastructure.” ’733 Fin. Dec. at *16 (quoting
’733 patent col. 12 ll. 15–18).
Third, Ameranth points to dependent claims 2 and 10
of the ’733 patent, which recite printing features. For
example, claim 2 recites that “the modified second menu
can be selectively printed on any printer directly from the
graphical user interface of a hand-held device.”
Ameranth claims that these printing limitations are tied
to physical, real-world locations of printers, and thus are
not abstract. The Board explained that the ’733 patent
specification disclosed that menus commonly are printed
on paper. ’733 Fin. Dec. at *21.
Fourth, Ameranth points to the recitation of types of
ordering in claims 1 to 6 of the ’325 patent. Claim 1 of the
’325 patent includes a limitation that “wherein said
second menu to [sic] applicable to a predetermined type of
ordering.” ’325 patent col. 15 ll. 23–24. Claims 2 through
APPLE, INC. v. AMERANTH, INC. 21
5 depend from claim 1 and recite specific types of order-
ing. For example, claim 2 recites “wherein the type of
ordering is table-based customer ordering.” Claim 3
recites “wherein the type of ordering in [sic] drive-through
customer ordering.”
The Board found that all four of these features were
insignificant post-solution activity. ’733 Fin. Dec. at *14,
21; ’325 Fin. Dec. at *19, 21. We agree that these limita-
tions are insignificant post-solution activities that do not
support the invention having an “an inventive concept.”
See, e.g., Mayo, 132 S. Ct. at 1294 (“[T]he prohibition
against patenting abstract ideas cannot be circumvented
by . . . adding insignificant postsolution activity.”) (quot-
ing Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (quota-
tion marks omitted)).
The preferred embodiment of the claimed invention
described in the specifications is a restaurant preparing a
device that can be used by a server taking orders from a
customer. The claimed invention replaces a server’s
notepad or mental list with an electronic device pro-
grammed to allow menu items to be selected as a custom-
er places an order. As noted above, the specifications
describe the hardware elements of the invention as “typi-
cal” and the software programming needed as “commonly
known.” The invention merely claims the addition of
conventional computer components to well-known busi-
ness practices.
Finally, Ameranth argued in its briefing and at oral
argument that programming the software to perform
various parts of the claimed systems’ functionality was
difficult, and that this difficulty indicates that the claims
were not directed to an abstract idea. We disagree. The
difficulty of the programming details for this functionality
is immaterial because these details are not recited in the
actual claims. The degree of difficulty in implementing
22 APPLE, INC. v. AMERANTH, INC.
an abstract idea in this circumstance does not itself
render an abstract idea patentable.
We affirm the Board’s conclusion in step two that the
elements of the patents’ claims—both individually and
when combined—do not transform the claimed abstract
idea into a patent-eligible application of the abstract idea.
The patents can readily be understood as adding conven-
tional computer components to well-known business
practices. Enfish, 822 F.3d at 1338. The Supreme Court
and this court have repeatedly determined that such
claims are invalid under § 101. Id.; see also Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 717 (Fed. Cir. 2014), cert.
denied sub nom. Ultramercial, LLC v. WildTangent, Inc.,
135 S. Ct. 2907 (2015). It is not enough to point to con-
ventional applications and say “do it on a computer.” Cf.
Alice, 134 S. Ct. at 2358 (“Stating an abstract idea while
adding the words ‘apply it with a computer’” is not enough
for patent eligibility) (quoting Mayo, 132 S. Ct. at 1294).
We affirm the Board’s determinations that claims 1–
11 of the ’850 patent, claims 1–10 of the ’325 patent, and
claims 1, 2, 4, 5, 10, and 12 of the ’733 patent are un-
patentable under § 101.
B. Claims the Board Found Patentable
The Board found certain dependent claims were not
unpatentable. The Apple petitioners appeal these deter-
minations. We address first the dependent claims that
involve linking orders to specific customers, and then
those that involve handwriting and voice capture technol-
ogies.
i. Linked Orders
The Apple petitioners appeal the Board’s determina-
tion that dependent claims 3 and 11 in the ’733 patent
were not unpatentable. These claims require that the
second menu, after being modified, can be linked to a
specific customer at a specific table. Claim 3 recites
APPLE, INC. v. AMERANTH, INC. 23
“wherein the modified second menu can be linked to a
specific customer at a specific table directly from the
graphical user interface of a hand-held device.” ’733
patent col. 16 ll. 28–31. Claim 11 is similar. Id. at col. 17
ll. 27–30. The ’733 patent’s specification describes this
feature in the restaurant embodiment as linking orders to
specific customer positions at specific tables. Id. at col. 4
ll. 38–46.
Ameranth argued to the Board that these claims were
patentable because they recited “limitations that were
unconventional or unique ‘in 2001 because the very capa-
bility of . . . linking a particular order to a particular
customer at a table was novel then and unique to mobility
and wireless handhelds.’” ’733 Fin. Dec. at *21 (quoting
Ameranth Response at 75). Ameranth argued “that
Petitioner has not provided any evidence that establishes
otherwise.” Id.
The Board found that, while the Apple petitioners had
argued that the claimed linking is a “classic example[] of
manual tasks that cannot be rendered patent eligible
merely by performing them with a computer,” that the
Apple petitioners had not “provide[d] sufficient evidence
to support [that] statement.” Id. (citations omitted). The
Board found that the Apple petitioners had “provide[d]
insufficient evidence to establish that a menu having the
functionality to perform the claimed linking from a GUI
on a hand-held device, was well-known or conventional
and merely require[d] a general purpose computer.” Id.
On appeal, the Apple petitioners again argue that
these linking limitations are routine and conventional. It
directs this court to the specification language which
explains that the hardware needed was typical and that
the programming steps were commonly known.
Ameranth argues that the Apple petitioners have not
shown that the linking limitations were conventional. It
contends that the Board made a factual finding when it
24 APPLE, INC. v. AMERANTH, INC.
determined that the Apple petitioners had provided
insufficient evidence to establish this. Ameranth argues
that linking orders to specific customers at specific tables
was an inventive feature.
Ameranth’s arguments are further belied by the ’733
patent’s specification. In addition to expressly reciting
that the hardware needed was typical and that the pro-
gramming steps were commonly known, the specification
merely states that the user interface could permit linking
of orders with customers, with no disclosure of how this
would be technologically implemented:
[H]and-held devices can link the above innova-
tions to individual customers at specific tables
through a graphical user interface on the hand-
held screen that assigns each customer a number
within a table. For example, table 20 might have
6 customers (1–6) and each customer has a differ-
ent order, [sic] By enabling the linkage of the or-
ders to specific customer positions within the
table and accessible from the hand-held screen,
the servers can easily track and link the specific
orders to the specific customers.
’733 patent col. 4 ll. 38–46. After reviewing this disclo-
sure, we find no inventive method for implementing the
claimed order linking.
Generally, a claim that merely describes an “effect or
result dissociated from any method by which [it] is ac-
complished” is not directed to patent-eligible subject
matter. Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1348 (Fed. Cir. 2015). Here, the linked
orders claim limitation calls for the desired result of
associating a customer’s order with said customer, and
does not attempt to claim any method for achieving that
result. McRO, Inc., 837 F.3d at 1314.
APPLE, INC. v. AMERANTH, INC. 25
This analysis is confirmed by Ameranth’s concession
at oral argument that, prior to its filing of the ’733 patent,
restaurants were able to keep track of which customer at
what table ordered what meal, to make sure that the
right customer got their order of food. Oral Arg. at 23:35–
24:06, http://www.cafc.uscourts.gov/oral-argument-
recordings. These claims cover the process of a restaurant
server taking an order from a customer and keeping track
of what customer placed that order, when done using a
computer. We agree with the Apple petitioners that the
claimed linking of orders to customers is a classic example
of manual tasks that cannot be rendered patent eligible
merely by performing them with a computer.
These claims depend from independent claims which
were found to be directed to unpatentable subject matter,
as discussed above. Merely appending this preexisting
practice to those independent claims does not make them
patentable. It is an insignificant post-solution activity.
We reverse the Board’s finding confirming the patentabil-
ity of these claims.
ii. Handwriting and Voice Capture
The Apple petitioners also appeal the Board’s deter-
mination that dependent claims 6–9 and 13–16 in the ’733
patent were not unpatentable. These claims depend from
claims that recite either that the “said second menu is
manually modified after generation,” or “wherein said
second menu is manually modified by handwriting or
voice recording.” ’733 patent, claims 1, 4, 5, and 12. As
noted above, the Board found such recitation of general
manual modification to be insignificant post-solution
activity.
Some of the dependent claims upheld by the Board
specify that the manual modification involves handwrit-
ing or voice capture. For example, claim 6 recites “where-
in the manual modification involves handwriting
capture.” The other claims depend from these claims and
26 APPLE, INC. v. AMERANTH, INC.
require that the captured inputs be recognized and con-
verted to text. For example, claim 7 depends from claim 6
and recites “wherein the handwriting capture involves
handwriting recognition and conversion to text.”
The Apple petitioners argued before the Board that
“manual modification of a menu is a classic example of a
manual task which cannot be rendered patent eligible
merely by performing it with a computer.” ’733 Fin. Dec.
at *22 (quoting Reply at 11). They also argued that none
of the claims were directed to any specific software for
accomplishing manual modification. Id.
The Board found that the Apple petitioners had
“fail[ed] to provide sufficient evidence that menus having
handwriting capture or voice capture functionality were
well-known or conventional at the time of the ’733 patent
or require merely a general purpose computer.” Id.
On appeal, the Apple petitioners argue that these lim-
itations recite insignificant post-solution activity. We
agree that these limitations do not serve to provide an
inventive concept.
The ’733 patent refers to the use of handwriting and
voice capture technologies without providing how these
elements were to be technologically implemented. Col. 3
l. 48–col. 4. l. 9; col. 4 ll. 18–22; id. at ll. 27–37. At oral
argument, Ameranth conceded that it had not invented
voice or handwriting capture technology, and that it was
known at the time it filed its applications to use those
technologies as ways of entering data into computer
systems. Oral Arg. at 16:26–52.
In any event, in Content Extraction, we found that a
recitation of the use of “existing scanning and processing
technology to recognize and store data from specific data
fields such as amounts, addresses, and dates” did not
amount to significantly more than the “abstract idea of
recognizing and storing information from hard copy
APPLE, INC. v. AMERANTH, INC. 27
documents using a scanner and a computer.” Content
Extraction & Transmission LLC v. Wells Fargo Bank,
Nat’l Ass’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014), cert.
denied, 136 S. Ct. 119 (2015). Here, Ameranth claims no
more than the use of existing handwriting and voice
capture technologies using a computer system.
These claims depend from independent claims found
to be directed to unpatentable subject matter, as is dis-
cussed above. Appending these preexisting technologies
onto those independent claims does not make them pa-
tentable. We reverse the Board’s finding confirming the
patentability of these claims.
CONCLUSION
For the reasons explained above, we affirm the
Board’s decisions finding certain claims unpatentable
under § 101, and we reverse the Board’s decisions con-
firming the patentability of certain claims under § 101.
Claims 1–11 of the ’850 patent, claims 1–10 of the ’325
patent, and claims 1–16 of the ’733 patent are all un-
patentable under § 101.
AFFIRMED IN PART AND REVERSED IN PART
COSTS
No Costs.