DCT
3:12-cv-01630
Ameranth Inc v. Best Western Intl Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Ameranth, Inc. (Delaware)
- Defendant: Best Western International, Inc. (Arizona)
- Plaintiff’s Counsel: Caldarelli Hejmanowski & Page LLP; Fabiano Law Firm, P.C.; Osborne Law LLC; Watts Law Offices
- Case Identification: 3:12-cv-01630, S.D. Cal., 06/29/2012
- Venue Allegations: Plaintiff alleges venue is proper in the Southern District of California because Defendant commits acts of patent infringement within the district, including making, using, and offering for sale the accused systems.
- Core Dispute: Plaintiff alleges that Defendant’s hotel reservation system infringes three patents related to generating and synchronizing menus and other information between central servers, web pages, and wireless handheld devices for the hospitality industry.
- Technical Context: The technology addresses the challenge of creating, managing, and synchronizing information, such as menus or reservations, across different computing platforms with varying display sizes, particularly between fixed back-office systems and mobile devices.
- Key Procedural History: The complaint notes that the patents-in-suit are part of a larger family previously and concurrently asserted against other defendants in the same court. Subsequent to the filing of this complaint, two of the asserted patents underwent Post-Grant Review (PGR) at the U.S. Patent and Trademark Office. In proceedings CBM2014-00015 and CBM2014-00016, all claims of U.S. Patent No. 6,384,850 were cancelled, and claims 1-13 and 15 of U.S. Patent No. 6,871,325 were cancelled.
Case Timeline
| Date | Event |
|---|---|
| 1996-01-01 | Ameranth established |
| 1998-07-01 | Ameranth began development of inventions (alleged) |
| 1999-09-21 | Earliest Priority Date for ’850, ’325, and ’077 Patents |
| 2002-05-07 | U.S. Patent No. 6,384,850 ('850 Patent) Issued |
| 2005-03-22 | U.S. Patent No. 6,871,325 ('325 Patent) Issued |
| 2012-03-27 | U.S. Patent No. 8,146,077 ('077 Patent) Issued |
| 2012-06-29 | Complaint Filed |
| 2018-02-06 | Post-Grant Review Certificate issues cancelling all '850 Patent claims |
| 2018-02-07 | Post-Grant Review Certificate issues cancelling most '325 Patent claims |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,384,850 - Information Management and Synchronous Communications System with Menu Generation
- Patent Identification: U.S. Patent No. 6,384,850, "Information Management and Synchronous Communications System with Menu Generation," issued May 7, 2002.
The Invention Explained
- Problem Addressed: The patent describes the state of the hospitality industry as reliant on pen-and-paper or fixed computer terminals, noting that early personal digital assistants (PDAs) were not suitable due to their small screens and the lack of software for synchronizing data between handheld devices, central databases, and web servers (’850 Patent, col. 2:1-31).
- The Patented Solution: The invention is a system for generating and managing computerized menus. It proposes using a desktop application to build a "first menu" with a hierarchical structure (e.g., categories, items, modifiers). This central menu can then be used to generate and transmit a "second menu" to a wireless handheld device or a web page, thereby synchronizing the information across different platforms (’850 Patent, Abstract; col. 6:13-32).
- Technical Importance: The technology aimed to provide an integrated solution for mobile and web-based ordering and information management in the hospitality sector, a field that had been slow to adopt such technologies due to operational complexity (’850 Patent, col. 2:45-49).
Key Claims at a Glance
- The complaint asserts "one or more valid and enforceable claims" without specification (Compl. ¶17). Independent claim 1 is representative and includes the following essential elements:
- A system comprising a central processing unit, a data storage device, and an operating system with a graphical user interface (GUI).
- A "first menu" with menu categories and items, stored on the data storage device and displayable in a hierarchical tree format.
- A "modifier menu" and a "sub-modifier menu" also stored and displayable in the GUI.
- Application software for generating a "second menu" from the first menu.
- The application software is further configured for transmitting the second menu to a wireless handheld computing device or a Web page.
U.S. Patent No. 6,871,325 - Information Management and Synchronous Communications System with Menu Generation
- Patent Identification: U.S. Patent No. 6,871,325, "Information Management and Synchronous Communications System with Menu Generation," issued March 22, 2005.
The Invention Explained
- Problem Addressed: The patent identifies the same technical problems as its parent ’850 Patent: the inefficiency of paper-based systems and the difficulty of adapting complex menus to small, wireless devices while maintaining data synchronization (’325 Patent, col. 2:5-40).
- The Patented Solution: The invention describes a similar system for generating a "second menu" from a "first menu." The claims of the ’325 Patent, however, are specifically directed toward generating menus tailored for a "predetermined type of ordering," such as table-based, drive-through, or internet ordering, suggesting that the menu's content or format can be adapted to the specific ordering context (’325 Patent, col. 2:10-24; col. 15:21-24).
- Technical Importance: This refinement addresses the practical need for different user experiences depending on the ordering channel, allowing for optimized menu presentations on different platforms (’325 Patent, col. 15:21-31).
Key Claims at a Glance
- The complaint asserts "one or more valid and enforceable claims" without specification (Compl. ¶32). Independent claim 1 is representative and includes the following essential elements:
- A system with a CPU, data storage, and operating system with a GUI.
- A first menu, modifier menu, and sub-modifier menu.
- Application software for generating a second menu from the first menu.
- A key distinction: the second menu is "applicable to a predetermined type of ordering."
- The complaint does not explicitly reserve the right to assert dependent claims.
U.S. Patent No. 8,146,077 - Information Management and Synchronous Communications System with Menu Generation, and Handwriting and Voice Modification of Orders
- Patent Identification: U.S. Patent No. 8,146,077, "Information Management and Synchronous Communications System with Menu Generation, and Handwriting and Voice Modification of Orders," issued March 27, 2012.
Technology Synopsis
This patent expands upon the core menu generation and synchronization system by introducing functionality for manual order modification. It describes a system where a user can modify a computerized order using handwriting on a touch screen or through voice commands, combining these manual inputs with selections from the structured menu (’077 Patent, Abstract; col. 4:5-23). It also claims a system for formatting menu configurations to conform with customized display layouts for at least two different wireless device display sizes (’077 Patent, col. 16:47-56).
Asserted Claims
The complaint does not specify asserted claims (Compl. ¶46). Independent claims 1 and 9 are representative of the technology.
Accused Features
The complaint alleges that the Best Western Reservation System infringes by configuring and transmitting menus, enabling reservations on various devices like iPhones and Androids, and formatting menu configurations for different display sizes (Compl. ¶47).
III. The Accused Instrumentality
Product Identification
- The "Best Western Reservation system/product/service" (the "Best Western Reservation System") (Compl. ¶17).
Functionality and Market Context
- The complaint alleges the accused system provides for online and mobile hotel and lodging reservations, integrates with property management systems, and synchronizes reservation data between a central database, web pages, and mobile applications on devices such as iPhones and Androids (Compl. ¶¶17-18). The system is alleged to store hospitality information on a central database and synchronize applications and data between that database, wireless handheld computing devices, and web servers (Compl. ¶18(b)). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
'850 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a first menu consisting of menu categories, said menu categories consisting of menu items... displayable... in a hierarchical tree format | The Best Western Reservation System allegedly generates menus comprising "displayable main menus, modifier menus, and sub-modifier menus," which are structures for organizing reservation options. | ¶18 | col. 6:15-21 |
| application software for generating a second menu from said first menu | The complaint alleges the system includes "application software for generating a second menu." This suggests the accused system uses a master data set to create user-facing reservation interfaces. | ¶18 | col. 14:51-54 |
| and transmitting it to a wireless handheld computing device or a Web page | The system is alleged to transmit these menus to "a wireless handheld computing device or a Web page" to enable reservations via iPhones, Androids, and websites. | ¶18 | col. 14:65-col. 15:2 |
| ...synchronizing applications and data... between at least one central database, wireless handheld computing devices, and at least one Web server and Web page | The complaint alleges the system performs "synchronizing applications and data... between at least one central database, wireless handheld computing devices, and at least one Web server and Web page," to keep reservation information consistent across platforms. | ¶18 | col. 11:22-34 |
'325 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| application software for generating a second menu from said first menu... wherein said second menu [is] applicable to a predetermined type of ordering | The complaint alleges the system enables reservations through distinct channels: "iPhone, Android, and other internet-enabled wireless handheld computing devices as well as via Web pages." The plaintiff's theory may be that the reservation interfaces for these different channels constitute second menus applicable to different "types of ordering" (e.g., mobile web vs. desktop web). | ¶33 | col. 15:21-24 |
| wherein the application software facilitates the generation of the second menu by allowing selection of categories and items from the first menu... and assignment of parameters | The system is alleged to generate menus and enable reservations, which inherently involves selecting options (e.g., room type, dates) that function as categories and items, and assigning parameters (e.g., number of guests, special requests) to them. | ¶33 | col. 15:15-21 |
- Identified Points of Contention:
- Scope Questions: A primary issue will be whether a hotel reservation system falls within the scope of the claimed "menu generation" system. The patents' specifications are heavily oriented toward restaurant food ordering, with examples like "NY Strip" and "Meat Temperature" (’850 Patent, Fig. 1). The court may need to decide if terms like "menu," "menu item," and "modifier" can be broadly construed to cover hotel room types, dates, and amenities.
- Technical Questions: The complaint alleges the generation of a "second menu" from a "first menu" in a conclusory manner. A key factual question will be whether the Best Western Reservation System's architecture involves a master menu and the generation of separate, distinct secondary menus as claimed, or if it simply uses a single, filterable database to present information to different user interfaces.
V. Key Claim Terms for Construction
Term: "menu"
- Context and Importance: The applicability of the patents to the accused hotel reservation system hinges on the construction of this term. If "menu" is limited to a food service context, the infringement case may be significantly challenged. Practitioners may focus on this term because the factual basis of the patent (restaurant ordering) appears mismatched with the accused product (hotel booking).
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claims do not explicitly limit "menu" to food items. The field of the invention in the ’850 Patent is described broadly for "restaurants and other applications" (’850 Patent, col. 1:11-12), and the claims refer generically to "items" and "categories."
- Evidence for a Narrower Interpretation: The detailed description of the invention, including the primary embodiment shown in Figure 1, is exclusively focused on a restaurant point-of-sale system with food-specific categories, items, and modifiers (e.g., "Entrees," "NY Strip," "Med Rare") (’850 Patent, Fig. 1; col. 6:13-21).
Term: "hierarchical tree format"
- Context and Importance: This term defines the required structure for the claimed "first menu." The infringement analysis will depend on whether the accused system's data organization meets this structural limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A plaintiff might argue this term covers any nested data structure where options have sub-options, a common design in user interfaces.
- Evidence for a Narrower Interpretation: The specification describes a specific, multi-level hierarchy of "menu categories," "menu items," "modifiers," and "sub-modifiers" (’850 Patent, col. 6:15-21; col. 6:56-61). A defendant could argue that its system, while presenting choices, does not use this particular structured format.
VI. Other Allegations
- Indirect Infringement: The complaint alleges both induced and contributory infringement. The inducement claim is based on allegations that Best Western provides instructions and encouragement to its customers and hotel operators to use the accused reservation system (Compl. ¶¶ 20, 22). The contributory infringement claim is based on the allegation that the accused system is a "non-staple article of commerce" with no "substantial non-infringing uses" (Compl. ¶26).
- Willful Infringement: The complaint alleges willful infringement based on Best Western's purported knowledge of the asserted patents (Compl. ¶¶ 22, 27, 40, 54). This knowledge is alleged to arise from the public issuance of the patents and Ameranth's promotional activities, suggesting a basis in alleged pre-suit knowledge (Compl. ¶11).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: can the term "menu," which is rooted in the patents' detailed descriptions of restaurant food ordering, be construed broadly enough to cover the functionalities of a hotel reservation system? The outcome of this claim construction dispute will be fundamental to the entire case.
- A second key question will be one of viability: given that all claims of the ’850 Patent and all but two claims of the ’325 Patent were cancelled in post-grant proceedings after this complaint was filed, a threshold issue is whether any viable claims remain to support the litigation, particularly as pleaded.
- A final question will be evidentiary: assuming the claims survive construction and are found viable, does the architecture of the Best Western Reservation System technically map onto the specific claim limitations, such as the generation of a "second menu" from a "first menu" in a "hierarchical tree format," or is there a fundamental mismatch in technical operation that the high-level allegations of the complaint do not address?