Agilysys, Inc. et al. v. Ameranth, Inc.
Addressing unpatentable subject matter under 35 U.S.C. §101, the Patent Trial and Appeal Board (PTAB or Board) concluded that additional elements not recited or required by the claim, such as a non-limiting preamble, cannot transform a claim into a patent-eligible application of an abstract idea. Agilysys, Inc. et al. v. Ameranth, Inc., Case No. CBM2014-00015 (PTAB, Mar. 20, 2015) (Petravick, APJ).
The Board instituted a covered business method (CBM) review on the grounds of unpatentable subject matter under §101. The patent owner argued that the preamble was limiting because terms recited in the preamble, even though they did not appear in the remainder of the claim, were important to the claimed invention, and the examiner relied upon the preamble during prosecution to distinguish over the prior art. The Board rejected this arguments, finding that the preamble did not recite any structural components not captured in the body of the claim but merely set forth the purpose and intended use of the invention. In addition, the Board found that the Examiner did not rely on the preamble and instead indicated in the notice of allowance that the claimed software and sub-modifier menu were uniquely distinct features.
The Board analyzed the claims under the two-step framework set forth in Alice v. CLS Bank (IP Update, Vol. 17, No.7), addressing the first step, whether the claims at issue are directed to a patent-ineligible concept, such as an abstract idea, law of nature or natural phenomenon, the patent owner argued that the claims were not directed to an idea at all, but to a new machine. The Board rejected this argument and found that the claims were directed to an abstract idea of generating a second menu from a first menu and sending the second menu to another location.
Having found an abstract idea, the Board proceeded to consider whether the elements of the claims individually and as an ordered combination transform the nature of the claim into a patent-eligible application. The patent owner relied on the preamble to argue that the claims were directed to a specialized machine that generated and wirelessly transmitted non-PC standard handheld menus. However, the Board found that the patent owner could not rely on the preamble, as it was not limiting, or the wireless transmission, as it was not recited in the claim, to transform the claim into a patent-eligible application of an abstract idea. The remaining claim elements, individually and as an ordered combination, were directed to generic computer elements that did not transform the claims into a patent-eligible application of an abstract idea.