Agilysys Inc v. Ameranth Inc

1. Case Identification

• Case #: CBM2014-00015
• Patent #: 6,384,850
• Filed: October 15, 2013
• Petitioner(s): Expedia, Inc., Fandango, LLC, Hotel Tonight Inc., Hotwire, Inc., Hotelscom, LP., Kayak Software Corp., Live Nation Entertainment, Inc., Micros Systems, Inc., Orbitz, LLC, OpenTable, Inc., Papa John's USA, Inc., StubHub, Inc., Ticketmaster, LLC, Travelocitycom LP, Wanderspot LLC, Pizza Hut, Inc., Pizza Hut of America, Inc., Dominos Pizza, Inc., Domino's Pizza, LLC, Grubhub, Inc., Seamless North America, LLC, Ordrin, Inc., Mobo Systems, Inc., Starbucks Corp, Eventbrite, Inc., Best Western Intl, Inc., Hilton Resorts Corp., Hilton Worldwide, Inc., Hilton Intl Co., Hyatt Corp, Marriott Intl, Inc., Starwood Hotels & Resorts Worldwide, Inc., Agilysys, Inc., Usablenet, Inc., AND Apple Inc.
• Patent Owner(s): Ameranth, Inc.
• Challenged Claims: 1-16

2. Patent Overview

• Title: Information Management and Synchronous Communications System with Menu Generation
• Brief Description: The ’850 patent described a system for information management and synchronous communication, specifically for generating and transmitting menus for the hospitality industry. The system was intended for applications such as restaurant ordering, reservations, and wait-list management using wireless handheld devices and the internet.

3. Grounds for Unpatentability

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

• Core Argument: Petitioners argued that claims 1-16 are indefinite because they improperly mix statutory classes of invention by reciting a system (apparatus) that includes method steps. For example, independent claim 1 was directed to a "system" but also recited the method step "said parameters being selected from the modifier and submodifier menus." Similarly, independent claim 12 recited a "system" wherein "applications and data are synchronized." Petitioners contended this creates ambiguity as to when infringement occurs—at the time the system is created or when a user actually performs the recited method step. This mixing of apparatus and method elements, Petitioners argued, rendered the claims indefinite as a matter of law.

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

• Core Argument: Petitioners asserted two primary written description failures. First, the claims were not supported because the specification failed to describe the full scope of the claimed "synchronous communications system." Petitioners argued that the specification only disclosed synchronizing information between a central database and a local database resident on a handheld device. However, Patent Owner allegedly asserted a broader scope in litigation, covering direct communication from a central database to a device without a local copy. Petitioners argued the specification provided no support for this broader genus of communication. Second, Petitioners contended claim 1 and its dependents lacked support for the limitation "transmitting said second menu to a... Web Page." The specification was alleged to only describe transmitting menus to a handheld device or a web server, but not to a "Web page," which Petitioners defined as a document, not a device capable of receiving a transmission.

Ground 3: Invalidity Under 35 U.S.C. §101 - Abstract Idea

• Core Argument: Petitioners argued claims 1-16 were directed to the patent-ineligible abstract ideas of generating menus and placing orders or reservations. The petition asserted that the claims simply took these fundamental, long-standing commercial practices and implemented them on generic, general-purpose computer hardware. Petitioners highlighted that the patent specification itself admitted the use of "typical hardware elements" and "commonly known" programming steps, failing to disclose any specific algorithm or novel technology. The use of a computer, Petitioners argued, added nothing more than its basic function of performing tasks more quickly and efficiently, which is insufficient to confer patent eligibility. The claims were alleged to lack any inventive concept that transformed the abstract idea into a patent-eligible application, instead preempting the use of computers for a basic economic activity.

4. Arguments Regarding CBM Eligibility

• Petitioners argued that the ’850 patent was eligible for a Covered Business Method (CBM) review because its claims met the statutory definition. The claims were directed to a method or apparatus for performing operations used in the practice or management of a financial product or service, as they covered activities like restaurant ordering, reservations, and payment processing which are financial in nature.
• Furthermore, Petitioners contended the patent was not exempt as a "technological invention." They argued the claims failed both prongs of the test for a technological invention: (1) the claimed subject matter did not recite a technological feature that was novel and unobvious, as the patent used conventional hardware and software; and (2) the claims did not solve a technical problem with a technical solution. Instead, Petitioners asserted the patent solved a business problem—improving the user-friendliness of converting paper menus to digital formats—by simply applying automation to a well-known process.

5. Relief Requested

• Petitioners requested the institution of a CBM review and the cancellation of claims 1-16 of the ’850 patent as unpatentable under 35 U.S.C. §§ 101 and 112.