Post-Solution Activity in Menu Generation Patent Claims Does Not Overcome Alice

In holding all claims of patents directed to generating electronic menus patent-ineligible under 35 USC § 101, a Federal Circuit panel handed Covered Business Method Review petitioners an even bigger win than they had gotten from the Patent Trial and Appeal Board (PTAB).  Apple, Inc. v. Amaranth, Inc., Nos. 2015-1792, 2015-1793 (Fed. Cir. Nov. 29, 2016) (opinion by Judge Reyna, joined by Judges Chen and Stoll). The PTAB had held certain claims of US Patent Nos. 6,384,850, 6,871,325, and 6,982,733 to recite patent-ineligible subject matter, but had also held some claims of the ’733 patent to be patent-eligible. The Federal Circuit affirmed the findings of patent-ineligible subject matter, and then reversed the finding that certain dependent claims in the ’733 patent or patent-eligible.

The independent claims of all three patents were similar, being directed to generating and transmitting restaurant menus. The court began by agreeing with the PTAB’s claim constructions, and its finding that the above patents were “covered business method patents” under the definition in the America Invents Act. In particular, the court did not accept the patent owner’s position that the claims recited a nonconventional software that distinguish over the prior art, and therefore were directed to a technological invention. This result is particularly unsurprising given Judge Reyna’s recent opinion making clear the limitations on the scope of Covered Business Method Review in Unwired Planet, LLC v. Google Inc.

Unsurprisingly, the court then went on to affirm the PTAB’s determinations concerning patent-ineligible claims. What is of interest to this post are the claims that the PTAB had held (forgive the double-negative, but this is the how the law states it) “not unpatentable.” First, the court considered claims 3 and 11 of the ’733 patent. Independent claim 1 recited a system for generating and transmitting a “second menu to a wireless handheld computing device or webpage.” Claim 3, depending from claim 1, added that:

the modified second menu can be linked to a specific customer at a specific table directly from the graphical user interface of a hand-held device.

Claim 11, interestingly written in multiple dependent form to depend from either of independent claims 4 or 5, otherwise had identical language to that of claim 3.

The patent owner based its arguments on the theory that the feature of “linking a particular order to a particular customer at a table was novel then and unique to mobility and wireless handhelds.” The PTAB accepted this argument. On appeal, the patent owner argued that the PTAB had made a factual finding that the Federal Circuit should accept. But the Federal Circuit rejected the argument. The ’733 patent specification, the court explained, made clear that required hardware and programming steps were commonly known, and then “merely states that the user interface could permit linking of orders with customers, with no disclosure of how this would be technologically implemented.” The court agreed “that the claimed linking of orders to customers is a classic example of manual tasks that cannot be rendered patent eligible merely by performing them with a computer.” The independent claims were patent-ineligible, and “appending this pre-existing practice to those independent claims does not make them patentable.” Rather, said the court, driving a nail in the coffin, “it is an insignificant post-solution activity.”

The PTAB had also determined “that dependent claims 6–9 and 13–16 in the ’733 patent were not unpatentable.”  These claims depended from independent claims that recited manual modification of a menu, and added “that the manual modification involves handwriting or voice capture.” The petitioners argued that this manual modification was “a classic example of a manual task which cannot be rendered patent eligible merely by performing it with a computer.” The PTAB rejected this argument, finding that the petitioners had failed to support it with sufficient evidence.  But the Federal Circuit agreed, finding that the claims recited “no more than the use of existing handwriting and voice capture technologies using a computer system.”

Lessons for Practice

Functional claiming is in trouble. For example, the recent Williamson v. Citrix case reinforced that software patent claims directed to using existing hardware and programming techniques to achieve some functionality are suspect under 35 USC § 112(b) and (f). This case, and others like it, reinforce that functional claims, irrespective of whether such claims recite language explicitly invoking the means-plus-function rubric of Section 112(f), are harder and harder, if not impossible, to defend under Alice and other Section 101 jurisprudence.

So the lessons are twofold. First, applicants should be realistic when filing patent applications concerning the extent to which claimed subject matter, and especially points of novelty, can truly be said to present a technological innovation and a solution to a technological problem. Second, claims should be drafted with technical terminology and technical language to the greatest extent possible.  Functional language is almost impossible to avoid in software patent claims, but it should be avoided.

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