PTAB

CBM2014-00013

Apple Inc v. Ameranth Inc

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Information Management and Synchronous Communications System with Menu Generation, and Handwriting and Voice Modification of Orders
  • Brief Description: The ’733 patent discloses a system and method for information management and synchronous communication, particularly for generating and transmitting menus in the hospitality industry. The technology is aimed at automating food and drink ordering on computer systems and handheld devices.

3. Grounds for Unpatentability

Ground 1: Invalidity Under 35 U.S.C. §112 - Indefiniteness

  • Core Argument: Petitioner argued that claims 1-11 are invalid as indefinite because they impermissibly mix statutory classes of invention by reciting both system (apparatus) limitations and method steps.
    • Apparatus and Method Mixing: Independent claims 1, 4, and 5 are directed to an "information management and synchronous communications system" but also recite active method steps, such as "said second menu is manually modified after generation." Petitioner asserted this creates ambiguity, making it impossible to determine whether infringement occurs when one makes or sells the system, or only when a user performs the recited steps.
    • User-Centric Actions: The specification was cited to show that "manually modified" refers to actions performed by a user (e.g., a server using handwriting or voice recording), not inherent capabilities of the system itself. This user-action focus, Petitioner contended, is a hallmark of an improper method step within an apparatus claim, rendering the claims indefinite under the precedent of IPXL Holdings, LLC v. Amazon.com, Inc.

Ground 2: Invalidity Under 35 U.S.C. §112 - Lack of Written Description

  • Core Argument: Petitioner argued that all challenged claims are invalid for failing the written description requirement because the specification does not support the full scope of the claimed "synchronous communication system/method."
    • Unsupported Genus: The petition contended that the claims recite a broad genus of "synchronous communications," which Patent Owner asserted in litigation covers any data transmission from a central server to a device. However, the specification only discloses a narrow species: the synchronization of a local database on a handheld device with a master database on a backoffice server.
    • Failure to Possess: Petitioner argued that the specification's sole focus on downloading and updating a local database fails to provide support for the broader concept of one-way data transmission to a device that lacks a local copy of the data. Therefore, the inventors were not in possession of the full claimed scope at the time of filing, and the claims are invalid for attempting to cover subject matter not adequately described.

Ground 3: Invalidity Under 35 U.S.C. §101 - Ineligible Subject Matter

  • Core Argument: Petitioner argued that claims 1-16 are directed to the patent-ineligible abstract idea of generating menus and processing orders, merely implemented on a general-purpose computer.
    • Abstract Idea: The core concept of the ’733 patent was characterized as computerizing the fundamental and long-standing human activity of menu creation and order taking, which the patent itself acknowledges was traditionally done with "pen and paper." Petitioner asserted that automating a fundamental economic practice or method of organizing human activity on a generic computer is a quintessential abstract idea.
    • Lack of Inventive Concept: The claims fail to add an inventive concept sufficient to transform the abstract idea into a patent-eligible application. The recitation of generic computer components like a "central processing unit," "data storage device," and "operating system" does not constitute a meaningful limitation. Petitioner argued the patent does not disclose any specific, unconventional algorithms or solve a technical problem with a technical solution; rather, it uses conventional technology to solve the business problem of making menu generation more efficient. The claims therefore fail the machine-or-transformation test and are invalid under the framework established in Mayo Collaborative Servs. v. Prometheus Labs., Inc.

4. Key Claim Construction Positions

  • Broadest Reasonable Interpretation: Petitioner stated that for the purposes of the Covered Business Method (CBM) review, all claim terms should be given their broadest reasonable interpretation (BRI) in light of the specification.
  • "Web Page": Central to its indefiniteness argument for claims 1-3, Petitioner contended that the term "Web Page" refers to a document, not a device. Therefore, the claim limitation "transmitting said second menu to a ... Web Page" is nonsensical and indefinite because one transmits data to a device that renders a web page, not to the document itself.

5. Relief Requested

  • Petitioner requested institution of a CBM review and cancellation of claims 1-16 of the ’733 patent as unpatentable under 35 U.S.C. §101 and §112.