IPDEV Co. v. Ameranth, Inc.

Filing 86

ORDER (1) Granting 71 Amernath's Motion for Summary Judgment of Invalidity Due to Inadequate Written Description; and (2) Denying IPDEV'S Motion for Summary Judgment Re: Written Description Support and Enablement. Ameranths motion for su mmary judgment of invalidity of the '449 Patent due to inadequate written description is granted, and IPDEVs cross motion for summary judgment re: written description is denied. All other pending motions, save for any motions to file documents under seal, are denied as moot, and all pending dates in this case are vacated. Signed by Judge Dana M. Sabraw on 3/27/2018. (anh)

1
2
3
4
5
6
7
8

UNITED STATES DISTRICT COURT

9

SOUTHERN DISTRICT OF CALIFORNIA

10
11

IPDEV CO.,

Case No.: 14cv1303 DMS (WVG)
Plaintiff,

12
13

v.

14

ORDER (1) GRANTING
AMERANTH'S MOTION FOR
SUMMARY JUDGMENT OF
INVALIDITY DUE TO
INADEQUATE WRITTEN
DESCRIPTION AND (2) DENYING
IPDEV’S MOTION FOR SUMMARY
JUDGMENT RE: WRITTEN
DESCRIPTION SUPPORT AND
ENABLEMENT

AMERANTH, INC.,
Defendant.

15
16
17

AMERANTH, INC.,

18

Counter Claimant,

19

v.

20

IPDEV CO.,

21

Counter Defendant.

22
23

This case comes before the Court on Ameranth’s motion for summary judgment of

24

invalidity due to inadequate written description and IPDEV’s motion for summary

25

judgment regarding written description support and enablement. The motions came on for

26

hearing on March 23, 2018. Andrew Warnecke, Brian Orr and Gino Serpe appeared for

27

IPDEV and William Caldarelli and John Osborne appeared for Ameranth.

28

thoroughly reviewing the parties’ briefs, the relevant evidence and legal authority and the

After

1
14cv1303 DMS (WVG)

1

record herein, and after hearing argument from counsel, the Court grants Ameranth’s

2

motions and denies IPDEV’s motion.

3

I.

4

BACKGROUND

5

IPDEV filed the present case against Ameranth alleging a claim for patent

6

interference pursuant to 35 U.S.C. § 291. IPDEV alleges, and Ameranth does not dispute,

7

there is an interference-in-fact between IPDEV’s United States Patent No. 8,738,449 (“the

8

‘449 Patent”) and Ameranth’s United States Patent Number 8,146,077 (“the ‘077 Patent”)

9

by virtue of IPDEV’s copying of certain claims of the ‘077 Patent into the ‘449 Patent. To

10

prevail on this claim, IPDEV must prove it was the first party to reduce to practice the

11

invention described in the copied claims. IPDEV seeks to establish a priority date of

12

November 24, 1997, which is the filing date of another IPDEV Patent, United States Patent

13

Number 5,991,739 (“the ‘739 Patent”). To establish that priority date, IPDEV must show

14

the specification of the ‘739 Patent, which is the same as the specification of the ‘449

15

Patent, satisfies the written description and enablement requirements of 35 U.S.C. § 112, ¶

16

1.

17

Ameranth raised a number of affirmative defenses to the patent interference claim.

18

Those affirmative defenses are: (1) the ‘449 Patent is invalid as anticipated, (2) the ‘449

19

Patent is invalid as obvious, (3) failure to disclose true inventorship of the ‘449 Patent, (4)

20

lack of conception and reduction to practice of the ‘449 Patent, (5) inadequate written

21

description of the ‘449 Patent, (6) lack of enablement of the ‘449 Patent, (7) inequitable

22

conduct in the prosecution of the ‘449 Patent, (8) unclean hands, (9) time bar, (10) laches

23

and (11) failure to state a claim. Ameranth also alleged a counterclaim for invalidity of the

24

‘449 Patent due to time bar, inadequate written description, lack of enablement, and failure

25

of conception and reduction to practice, and another counterclaim for unenforceability of

26

the ‘449 Patent due to inequitable conduct.

27

Turning to the interfering patents, the ‘449 Patent was filed on August 22, 2012. It

28

is a continuation of application No. 09/282,645, filed on March 31, 1999, which is a
2
14cv1303 DMS (WVG)

1

continuation of application No. 08/976,793, filed on November 24, 1997, which

2

application issued as the ‘739 Patent. The ‘449 Patent names as its inventors Bryan T.

3

Cupps and Tim Glass. IPDEV is the assignee. The ‘449 Patent is titled, “Internet Online

4

Order Method and Apparatus.” Generally, it discloses “[a] system and method for

5

providing an online ordering machine that manages the distribution of products over a

6

distributed computer system[.]” (‘449 Patent, Abstract.) In the “Background of the

7

Invention” section, the inventors described three prior art systems, World Wide Waiters,

8

Waiters on Wheels and PizzaNet. (Id. at 1:19-2:22.) Each of those systems enabled

9

consumers to order food from participating restaurants over the internet, but each had

10

shortcomings: The World Wide Waiters system required each participating restaurant to

11

have Internet access to the World Wide Waiter server. It also used “statically configured

12

menu web pages[,]” which “hamper[ed] the maintainability and scalability of the server to

13

take on additional restaurants.” (Id. at 1:51-53.) The Waiters on Wheels and PizzaNet

14

systems required “communicating with the restaurant through a facsimile machine[,]” and

15

also required subsequent communications between the customer and the delivery system

16

[be] performed via telephone calls which requires manual intervention.” (Id. at 2:16-22.)

17

To overcome these shortcomings, the ‘449 Patent disclosed an “online ordering machine”

18

that:

19
20
21
22

provides the customers with product information from various vendors whose
delivery range is within the customers location or with product information
from vendors having take out service within a specified range from the
customers location. The online ordering machine accepts orders from the
customer for a particular product from a selected vendor.

23

(Id. at 2:32-39.) The order is then converted into voice instructions transmitted to the

24

vendor through a telephone call or via facsimile with follow up voice instructions via

25

telephone call. (Id. at 2:39-43.) The Description of the Preferred Embodiments describes

26

the computer architecture of the invention, (id. at 3:50-5:17), the use of geocodes “to

27

determine whether a customer is within a specified geographic area of a restaurant’s

28

delivery area or whether a restaurant is within a specified geographic area of the customers
3
14cv1303 DMS (WVG)

1

take out range[,]” (id. at 6:20-8:25), the interactive voice recognition system, (id. at 8:27-

2

49), the dynamic creation of menu web pages, (id. at 8:51-9:41),and the ordering process.

3

(Id. at 9:43-11:40.)

4

The ‘077 Patent was filed on April 22, 2005. It is a continuation of application No.

5

10/016,517, filed on November 1, 2001, which application issued as U.S. Patent No.

6

6,982,733, which is a continuation-in-part of application No. 09/400,413, filed on

7

September 21, 1999, which application issued as U.S. Patent No. 6,384,850.1 The ‘077

8

Patent names as its inventors Keith McNally, William Roof and Richard Bergfeld.

9

Ameranth is the assignee. The Abstract of the ‘077 Patent describes the invention as:

10

An information management and synchronous communications system and
method [that] facilitates database equilibrium and synchronization with wired,
wireless and Web-based systems, user-friendly and efficient generation of
computerized menus and reservations with handwritten/voice modifications
for restaurants and other applications that utilize equipment with nonstandard
graphical formats, display sizes and/or applications for use in remote data
entry, information management and communication with host computer,
digital input device or remote pager via standard hardwired connection, the
internet, a wireless link, printer or the like.

11
12
13
14
15
16
17

There are 21 claims in the ‘449 Patent and 18 claims in the ‘077 Patent. The claims

18

recite numerous elements and limitations, but as it relates to the present motion, the

19

following language from independent claims 1 and 13 is the most relevant. The language

20

of claim 1 focuses on software that configures and synchronizes in real time menus from a

21

master menu with menus on a handheld computing device, as follows:
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

22
23
24
25
26
27
28

In the related infringement proceedings, Ameranth alleged infringement of the ‘733 and
‘850 Patents. Those Patents have since been declared invalid by the Federal Circuit after
proceedings before the Patent Trial and Appeal Board.
1

4
14cv1303 DMS (WVG)

1
2
3
4

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 categories, menu items and modifiers
comprising the programmed handheld menu configuration are synchronized
in real time with analogous information comprising the master menu,

5
6

(id. at 12:34-48.) The language of claim 13 focuses on hospitality “information” and

7

provides “real time communications control software enabled to link and synchronize

8

hospitality application information simultaneously between the master database, wireless

9

handheld computing device, web server and web page.” (Id. at 15:38-41.)

10

II.

11

DISCUSSION

12

Both parties move for summary judgment on whether the ‘449 Patent satisfies the

13

written description requirement. The written description requirement is found in 35 U.S.C.

14

§ 112. Paragraph 1 of this section states:

15
16
17
18

The specification shall contain a written description of the invention, and of
the manner and process of making and using it, in such full, clear, concise,
and exact terms as to enable any person skilled in the art to which it pertains,
or with which it is most nearly connected, to make and use the same, and shall
set forth the best mode contemplated by the inventor of carrying out his
invention.

19
20

35 U.S.C. § 112, ¶ 1. The test of written description “requires an objective inquiry into the

21

four corners of the specification from the perspective of a person of ordinary skill in the

22

art. Based on that inquiry, the specification must describe an invention understandable to

23

that skilled artisan and show that the inventor actually invented the invention claimed.”

24

Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).

25

“Requiring a written description of the invention limits patent protection to those who

26

actually perform the difficult work of ‘invention’ - - that is, conceive of the complete and

27

final invention with all its claimed limitations - - and disclose the fruits of that effort to the

28

public.” Id. at 1353. "Compliance with the written description requirement is a question
5
14cv1303 DMS (WVG)

1

of fact but is amenable to summary judgment in cases where no reasonable fact finder could

2

return a verdict for the non-moving party." PowerOasis, Inc v. T-Mobile USA, Inc., 522

3

F.3d 1299, 1307 (Fed. Cir. 2008).2

4

In this case, the claims at issue contain a number of limitations, and the parties spend

5

a considerable amount of time arguing over limitations that appear to have written

6

description support in the specification, e.g., the menu configuration software, the master

7

menu and the wireless handheld computing device. The two limitations set out above,

8

however, deserve closer consideration. These limitations concern synchronization of menu

9

information between a master menu and menus on a client device, and synchronization of

10

hospitality application information between a master database, wireless handheld

11

computing device, web server and web page. Those limitations recite: (1) “at least the

12

menu categories, menu items and modifiers comprising the programmed handheld menu

13

configuration are synchronized in real time with analogous information comprising the

14

master menu,” and (2) “real time communications control software enabled to link and

15

synchronize hospitality information simultaneously between the master database, wireless

16

handheld computing device, web server and web page.”

17

The first limitation is found in claim 1. This claim is directed to “configuring and

18

transmitting hospitality menus” on a master menu and a programmed handheld menu

19

configuration. (‘449 Patent at 12:18-20.) IPDEV argues this first limitation finds written

20

description support in several portions of the specification. IPDEV specifically relies on

21

column 8, lines 53-57 and 61-63. Lines 53 to 57 state, “The online ordering machine

22

generates menu web pages that are specific to a particular customer’s request. The creation

23

of the menu web pages is done dynamically at runtime in order to provide data that

24

accommodates a customer’s request.” (‘449 Patent at 8:53-57.) Lines 61-63 state, “In the

25

present technology, each menu web page is configured at runtime and customized for a

26
27
2

28

The parties here agree the issue of written description is amenable to resolution on
summary judgment.
6
14cv1303 DMS (WVG)

1

particular customer’s request.” (Id. at 8:61-63.) IPDEV argues the dynamic creation of

2

web pages “at ‘runtime’ from information contained in the menu file system based on input

3

from a user at a client computer” satisfies the “synchronized in real time” limitation.

4

The Court disagrees with IPDEV that these portions of the specification provide

5

support for this synchronization limitation. As set out in the Court’s claim construction

6

order, “synchronized” means “made, or configured to make, consistent.” The portions of

7

the specification cited by IPDEV are silent on this concept. Rather, the portions of the

8

specification cited by IPDEV explain how the online ordering machine actually creates

9

menu web pages. That the menu web pages are generated “dynamically at runtime” and

10

in response to user input says nothing about synchronization between the menu information

11

of the programmed handheld menu configuration and “analogous information comprising

12

the master menu.”

13

At oral argument, IPDEV addressed this specific limitation more directly, arguing

14

there is synchronization between the menu categories, menu items and modifiers because

15

the information contained on the menu web pages is the same as the information contained

16

in the online ordering machine. For example, each contains the same menu categories (e.g.,

17

pizza), menu items (e.g., cheese pizza), and modifiers (e.g., small, medium, large). That

18

the information is the same, however, does not necessarily mean it is synchronized. In the

19

system described in the ‘449 specification, the menu categories, items and modifiers on the

20

menu web pages are simply copies of information “stored in the memory on the online

21

ordering machine,” (Hrg. Tr. 57, March 23, 2018), much like the “statically configured

22

menu web pages” described in the prior art World Wide Waiters system. (‘449 Patent at

23

1:51.) The information stored on the online ordering machine is simply copied into a menu

24

web page in the same way one would make a photocopy. The information on the copy is

25

the same as the original, but the two pages are not “synchronized,” much less

26

///

27

///

28

///
7
14cv1303 DMS (WVG)

1

“synchronized in real time” as required by the claims.3 In essence, the system described in

2

the ‘449 specification does not do anything to make the menu web pages described above,

3

as they appear on the client device, consistent with the information in the online ordering

4

machine.

5

synchronization. Thus, there is no written description support in the specification of the

6

‘449 Patent for this concept of synchronization.

7

Rather, that information is inherently consistent, and thus needs no

Nor is there written description support for the synchronization limitation set out in

8

item (2) above.

9

synchronization of hospitality application information between a “master database,

10

wireless handheld computing device, web server and web page.” (‘449 Patent at 15:40-

11

41.) The specific language at issue here recites “real time communications control software

12

enabled to link and synchronize hospitality information simultaneously between the master

13

database, wireless handheld computing device, web server and web page.” IPDEV argues

14

this limitation finds written description support in the specification at column 9, lines 61-

15

65 and column 10, lines 7-11 and 12 to 15. However, these portions of the specification

16

are silent on this concept of synchronization. Instead, they describe (1) how the system

17

obtains the time at the customer’s location and how that information is used “to determine

18

which restaurants meeting the customer’s criteria are currently open[,]” (‘449 Patent at

19

9:64-65), (2) how the online order procedure “searches the order database 128 for those

20

restaurants that deliver to the customer’s location or are within the customer’s desired

21

takeout range (step 306)[,]” (id. at 10:7-11), and (3) how a “menu web page including a

That limitation is found in claim 13, which is directed to the

22
23

IPDEV’s expert Dr. Stevenson states in his expert report, “Any updates to the master
menu are reflected in parameters of the Menu File System and would be synchronized to
the menu configurations generated for the handheld device.” (Notice of Lodgment in Supp.
of IPDEV’s Mot., Ex. 2 at 35.) However, Dr. Stevenson fails to cite any portion of the
‘449 specification to support this statement. Indeed, the ‘449 specification is silent on the
process of making changes to either the menu categories, items or modifiers on the client
device or the master menu, much less how changes on one of those devices would be
synchronized on the other.
3

24
25
26
27
28

8
14cv1303 DMS (WVG)

1

list of these restaurants is dynamically created by the web creation procedure 126 and

2

provided to the customer as shown in FIG. 12C.” (Id. at 12-15.) As with the portions of

3

the specification discussed above, these portions of the specification do not speak to the

4

concept of synchronization at all, much less synchronization of “hospitality application

5

information simultaneously between the master database, wireless handheld computing

6

device, web server and web page.” Thus, the Court finds this “synchronization” limitation

7

also lacks written description support in the specification.

8

Although the issue of written description is a question of fact, and each side presents

9

evidence on this issue, the Court finds no reasonable fact finder could find for IPDEV on

10

this issue.

11

synchronization elements discussed above.

12

elements is contained in the claims of the ‘449 Patent, the Court grants Ameranth’s motion

13

for summary judgment of invalidity of the ‘449 Patent due to inadequate written

14

description, and denies IPDEV’s cross-motion on the issue.

In particular, there is nothing in the specification that supports the
Because each of these synchronization

15

III.

16

CONCLUSION AND ORDER

17

For the foregoing reasons, Ameranth’s motion for summary judgment of invalidity

18

of the ‘449 Patent due to inadequate written description is granted, and IPDEV’s cross

19

motion for summary judgment re: written description is denied. All other pending motions,

20

save for any motions to file documents under seal, are denied as moot, and all pending

21

dates in this case are vacated. The Clerk of Court shall enter judgment accordingly.

22
23

IT IS SO ORDERED.
Dated: March 27, 2018

24
25
26
27
28
9
14cv1303 DMS (WVG)