The Federal Circuit's recent decision in Apple, Inc. v. Ameranth, Inc. highlights the potential impact of including a discussion in the specification that characterized features as conventional, routine, generic, or known in the field without further discussion of an innovation that goes beyond these features. Employing the two-step analytical framework of Mayo/Alice to evaluate subject matter eligibility under 35 U.S.C. § 101, the Federal Circuit affirmed in part and reversed in part Patent Trial and Appeal Board ("Board") determinations in Covered Business Method ("CBM") reviews regarding the patentability of U.S. Patent Nos. 6,384,850 ("'850 patent"), 6,871,325 ("'325 patent"), and 6,982,733 ("'733 patent").
The challenged patents all belong to a common patent family owned by Ameranth Wireless. According to the Federal Circuit, "[t]he 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." Slip op. at 5. The invalidated claims of the three patents were addressed together by the Federal Circuit as their first claims are nearly identical. Id. at 17. Claim 1 of the '325 patent reads as follows:
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 categories 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, wherein said second menu to applicable to a predetermined type of ordering.
According the patent specifications, "the preferred embodiment of the invention is for the generation of restaurant menus." '325 patent 13:50-51. As depicted in Figure 1 below,
the preferred embodiment includes an intuitive GUI 1 from which to build a menu on a desktop or other computer. A hierarchical tree structure 2 is used to show the different relationships between the menu categories 3 (e.g., soups, salads, appetizers, entrees, deserts, etc.), menu items 4 (e.g., green salad, chicken caesar salad, etc.), menu modifiers 5 (e.g., dressing, meat temperature, condiments, etc.) and menu sub-modifiers 6 (e.g., Italian, French, ranch, bleu cheese, etc.). '325 patent 6:22-31.
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The specification notes that "ordering prepared foods has historically been done verbally" and that "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." '325 patent 1:29-30; 2:46-50.
Step one of the Mayo/Alice test for subject matter eligibility requires an evaluation of whether the claims at issue are directed to a patent-ineligible concept, such as an abstract idea. Apple's request for CBM review included a challenge to the eligibility of Ameranth's claims under 35 U.S.C. § 101. At step one, the Board determined that the Ameranth claims were directed to an abstract idea. The Federal Circuit agreed noting that the patents "do not claim a particular way of programming or designing the software to create menus that have these features, but instead merely claim the resulting systems." Slip op. at 19. Further, the Federal Circuit stated that the patentee's claims "are not directed to a specific improvement in the way computers operate," distinguishing the claims from those in Enfish. Id. (citing Enfish, LLC v. Microsoft Corporation, 822 F.3d 1327 (Fed. Cir. 2016)).
Step two of the Mayo/Alice test for subject matter eligibility requires an evaluation of whether the elements of the claims at issue, individually and as an ordered combination, contain an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application. Ameranth pointed to four types of limitations in the independent and dependent claims, arguing these were sufficient to transform the nature of the claim into a patent-eligible application: (1) synchronization limitations, (2) limitations reciting printing features, (3) limitations reciting types of ordering, and (4) the term "second menu is manually modified after generation." Id. at 19-21. The Federal Circuit agreed with the Board that these four limitations are insignificant post-solution activities that fail to confer an inventive concept, citing portions of the specification that describe "the hardware elements of the invention as 'typical' and the software programming needed as 'commonly known.'" Id. at 21. The Federal Circuit held that the claimed invention "replaces a server's notepad or mental list with an electronic device" and "merely claims the addition of conventional computer components to well-known business practices." Id. In reaching this conclusion, the Federal Circuit relied on an admission in the specification that "the discrete programming steps are commonly known and thus programming details are not necessary to a full description of the invention." '325 patent 11:58-61.
In addition to affirming the Board's conclusions finding certain claims of the three patents to be unpatentable under 35 U.S.C. § 101, the Federal Circuit reversed Board determinations that two sets of dependent claims of the '733 patent (involving linking orders to specific customers and handwriting and voice capture technology, respectively) were directed to patent-eligible subject matter. The Federal Circuit held that the linking limitations were also insufficient post-solution activities. The Federal Circuit noted that "a claim that merely describes an 'effect or result dissociated from any method by which [it] is accomplished' is not directed to patent-eligible subject matter" and highlighted that the "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." Slip op. at 24 (citing Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015)). Likewise, claims involving handwriting and voice capture technologies were also deemed insignificant post-solution activities, as the '733 patent provided no disclosure of how these elements were to be technologically implemented and these technologies were known methods of entering data into computer systems. Slip op. at 25-27.
This case illustrates that software-implemented claims may fail to satisfy 35 U.S.C. § 101 if they can be characterized as merely reciting generic computer hardware and software programming to carry out preexisting business practices. Patent practitioners should take care to articulate technical solutions and ways to achieve the described results, in both the specification and the claims. In some cases, patent eligibility will be bolstered by claims that recite the method by which a desired result is achieved rather than claiming simply the end result itself.