Ameranth, Inc. v. Pizza Hut, Inc. et al

Filing 1551

Order Granting Claim 4/5 Defendants Motion for Summary Judgment of Unpatentability of Claims 4 And 5 1535 . The parties shall meet and confer on proposed judgments in each individual case, and submit either an agreed- upon proposed judgment or competing proposed judgments on or before March 25, 2022. Signed by Chief District Judge Dana M. Sabraw on 3/14/2022. (All non-registered users served via U.S. Mail Service)(zda)

Case 3:11-cv-01810-DMS-WVG Document 1551 Filed 03/14/22 PageID.99326 Page 1 of 7

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UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF CALIFORNIA

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Case No.: 11cv1810 DMS (WVG)

IN RE: AMERANTH PATENT
LITIGATION CASES,

ORDER GRANTING CLAIM 4/5
DEFENDANTS’ MOTION FOR
SUMMARY JUDGMENT OF
UNPATENTABILITY OF CLAIMS 4
AND 5

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In a December 27, 2021 Order, this Court set a briefing schedule on the viability of

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Ameranth’s claims that certain Defendants were infringing claims 4 and 5 of the ‘077

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Patent. Defendants against whom such claims are pending (“the Claim 4/5 Defendants”)

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filed a motion for summary judgment of unpatentability of claims 4 and 5, Ameranth filed

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an opposition, and the Claim 4/5 Defendants filed a reply. Ameranth thereafter filed a

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Supplemental Notice of Lodgment of excerpts of the Markman hearing transcript, to which

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the Claim 4/5 Defendants filed a response, and to which Ameranth then filed an Objection.

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The Court has reviewed all of the briefing, and now grants the Claim 4/5 Defendants’

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motion for the reasons set out below.

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In Ameranth, Inc. v. Domino’s Pizza, LLC, 782 Fed. App’x 780 (Fed. Cir. Nov. 1,

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2019), the Federal Circuit affirmed this Court’s decision that claim 1 of the ‘077 Patent

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was patent ineligible. Applying the two-step approach set out in Alice Corp. v. CLS Bank

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International, 573 U.S. 208 (2014), the court found at step one that claim 1 was directed

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to an abstract idea, namely, “the concept of synchronous communications and automatic

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formatting for different handheld devices[.]” Ameranth, 792 F. App'x 780 at 787. At step

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two, the court found claim 1 failed to disclose an inventive concept.

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For context, claim 1 recites the following:

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An information management and real time synchronous communications
system for configuring and transmitting hospitality menus comprising:

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a.

a central processing unit,

b.

a data storage device connected to said central processing unit,

c.

an operating system including a first graphical user interface,

d.

a master menu including at least menu categories, menu items
and modifiers, wherein said master menu is capable of being
stored on said data storage device pursuant to a master menu file
structure and said master menu is capable of being configured for
display to facilitate user operations in at least one window of said
first graphical user interface as cascaded sets of linked graphical
user interface screens, and

e.

menu configuration software enabled to generate a programmed
handheld menu configuration from said master menu for wireless
transmission to and programmed for display on a wireless
handheld computing device, said programmed handheld menu
configuration comprising at least menu categories, menu items
and modifiers and wherein the menu configuration software is
enabled to generate said programmed handheld menu
configuration by utilizing parameters from the master menu file
structure defining at least the menu categories, menu items and
modifiers of the master menu such that at least the menu

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categories, menu items and modifiers comprising the
programmed handheld menu configuration are synchronized in
real time with analogous information comprising the master
menu,
wherein the menu configuration software is further enabled to generate the
programmed handheld menu configuration in conformity with a customized
display layout unique to the wireless handheld computing device to facilitate
user operations with and display of the programmed handheld menu
configuration on the display screen of a handheld graphical user interface
integral with the wireless handheld computing device, wherein said
customized display layout is compatible with the displayable size of the
handheld graphical user interface wherein the programmed handheld menu
configuration is configured by the menu configuration software for display as
programmed cascaded sets of linked graphical user interface screens
appropriate for the customized display layout of the wireless handheld
computing device, wherein said programmed cascaded linked graphical user
interface screens for display of the handheld menu configuration are
configured differently from the cascaded sets of linked graphical user
interface screens for display of the master menu on said first graphical user
interface, and

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wherein the system is enabled for real time synchronous communications to
and from the wireless handheld computing device utilizing the programmed
handheld menu configuration including the capability of real time
synchronous transmission of the programmed handheld menu configuration
to the wireless handheld computing device and real time synchronous
transmissions of selections made from the handheld menu configuration on
the wireless handheld computing device, and
wherein the system is further enabled to automatically format the programmed
handheld menu configuration for display as cascaded sets of linked graphical
user interface screens appropriate for a customized display layout of at least
two different wireless handheld computing device display sizes in the same
connected system, and
wherein a cascaded set of linked graphical user interface screens for a wireless
handheld computing device in the system includes a different number of user
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interface screens from at least one other wireless handheld computing device
in the system.

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‘077 Patent at 15:56-16:61. The claims at issue here, claims 4 and 5, depend from claim

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1, and read as follows:
4. The information management and real time synchronous communication
system in accordance with claim 1, wherein the said Hospitality Applications
include at least reservation applications.

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5. The information management and real time synchronous communication
system in accordance with claim 1, wherein the said Hospitality Applications
include at least a Ticketing applications.

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Id. at 17:8-15.

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In the present motion, the Claim 4/5 Defendants move for summary judgment that

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claims 4 and 5 are patent ineligible for the same reasons as claim 1, namely that they are

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directed to the same abstract idea as claim 1, and also fail to disclose an inventive concept.

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Ameranth does not appear to dispute that claims 4 and 5 are directed to the same abstract

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idea as claim 1, and that the first step of the Alice test is therefore satisfied as to claims 4

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and 5.

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The dispute here centers on Alice step two, and whether claims 4 and 5 disclose an

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inventive concept that renders the claims patent eligible. The Claim 4/5 Defendants argue

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claims 4 and 5 are field of use restrictions, which do not confer patentability. Ameranth

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disagrees, and asserts the limitations contained in claims 4 and 5 are substantive, and

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therefore supply an inventive concept that renders the claims patent eligible.

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The Court agrees with the Claim 4/5 Defendants. According to the plain language

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of the claims, the only additional limitation set out in claim 4 is that the “Hospitality

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Applications include at least reservation applications[,]” and the only additional limitation

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set out in claim 5 is that the “Hospitality Applications include at least a Ticketing

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applications.” By their plain terms, these claims simply restrict the invention described in

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claim 1 to the fields of reservations and ticketing, respectively. As such, they do not

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disclose an inventive concept, and thus do not make the claims patent eligible. See Bilski

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v. Kappos, 561 U.S. 593, 610–11 (2010) (quoting Diamond v. Diehr, 450 U.S. 175, 191-

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92 (1981)) (reiterating “the proposition that the prohibition against patenting abstract ideas

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‘cannot be circumvented by attempting to limit the use of the formula to a particular

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technological environment’ or adding ‘insignificant postsolution activity.’”); Affinity Labs

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of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016) (“The Supreme

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Court and this court have repeatedly made clear that merely limiting the field of use of the

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abstract idea to a particular existing technological environment does not render the claims

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any less abstract.”); Intell. Ventures I LLC v. Cap. One Bank (USA), 792 F.3d 1363, 1366

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(Fed. Cir. 2015) (“An abstract idea does not become nonabstract by limiting the invention

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to a particular field of use or technological environment ….”)

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Ameranth raises a number of arguments in an effort to avoid this conclusion, but

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none is persuasive. First, Ameranth argues that reservation and ticketing applications are

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different from the food ordering applications the Court considered when analyzing claim

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1.

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“theoretically every customer can place exactly the same food order[,]” every customer in

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a reservations or ticketing application must place a unique order for a particular table, room,

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or seat.

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‘equilibrium’ challenges when the reservation and ticket purchases can be processed

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remotely by customers using different handheld devices.”

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However, Ameranth’s proposed distinction between food ordering and reservations and

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ticketing is one without a difference. Clearly, each meal placed through a food ordering

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application is unique in the same way that each table, room, or seat is unique. No customer

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is receiving the same food, or reserving the same table, room, or seat. Ameranth’s proposed

Specifically, Ameranth asserts that unlike food ordering applications in which

Ameranth contends this distinction “presents particular technological
(Opp’n to Mot. at 4-5.)

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distinction is illusory, and thus there is no additional problem or “challenge” for claims 4

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and 5 to solve.

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Second, Ameranth suggests the reservation and ticketing limitations in claims 4 and

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5 are separate software limitations, and therefore substantive limitations as opposed to field

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of use restrictions. However, Ameranth fails to cite to any portion of the ‘077 Patent to

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support this suggestion. On the contrary, the specification describes reservation and

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ticketing applications as simply a subspecies of “hospitality applications.” ‘077 Patent at

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5:16-19 (“The communication module also provides a single point of entry for all

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hospitality applications, e.g., reservations, frequent customer ticketing, wait lists, etc. to

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communicate with one another wirelessly and over the Web.”)

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Third, Ameranth attempts to paint claims 4 and 5 as disclosing elements not found

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in claim 1, namely “reflective technology,” “equilibrium,” and a “single point of entry”

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system. However, as the Claim 4/5 Defendants point out, Ameranth’s arguments ignore

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the dependent nature of claims 4 and 5, and the axiom “that a dependent claim cannot be

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broader than the claim from which it depends.” Alcon Research, Ltd. v. Apotex Inc., 687

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F.3d 1362, 1367 (Fed. Cir. 2012). Ameranth’s arguments also ignore Ameranth’s previous

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descriptions of the invention described in the ‘077 Patent as a unitary concept with

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application to a wide variety of industries. (See Transcript of Markman Hearing at 11-12,

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ECF No. 906) (counsel stating “although the inventive idea arose first in the context of

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restaurant menus and food ordering, it has application to a wide variety of hospitality

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industry uses, including restaurant reservations, event ticketing, hotel reservations, et

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cetera.”) Furthermore, and perhaps most importantly, none of these elements is mentioned

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in either claim 4 or claim 5, which is contrary to Alice’s teaching that “[t]o save a patent at

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step two, an inventive concept must be evident in the claims.” RecogniCorp, LLC v.

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Nintendo Co., Ltd., 855 F.3d 1322, 1327 (Fed. Cir. 2017).1 Finding these elements absent

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from claims 4 and 5, there is no inventive concept in the claims sufficient to render them

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patent eligible at Alice step two.

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For all of these reasons, the Court finds claims 4 and 5 are patent ineligible.

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Accordingly, the Claim 4/5 Defendants are entitled to summary judgment that claims 4 and

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5 are unpatentable. The parties shall meet and confer on proposed judgments in each

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individual case, and submit either an agreed-upon proposed judgment or competing

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proposed judgments on or before March 25, 2022.

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IT IS SO ORDERED.
Dated: March 14, 2022

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The opinion of Ameranth’s expert, Ricardo Valerdi, suffers from this same flaw, i.e., it is
not based on the language of the claims. Dr. Valerdi’s opinion therefore fails to create a
genuine issue of material fact sufficient to defeat summary judgment at step two of the
Alice analysis. Kaavo Inc. v. Amazon.com Inc., 323 F.Supp.3d 630, 643-44 (D. Del. 2018)
(“Plaintiff’s reliance on contrary expert opinion alone is insufficient to create a genuine
issue of material fact.”)

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