Just desserts? Why a computerized menu patent was found ineligible

June 16, 2017
Patterson Thuente IP

The decision in Apple, Inc. v. Ameranth, Inc. probably wasn’t what the patent-holder ordered. Late last year, both the Patent Trial and Appeal Board (PTAB) and the Federal Circuit Court of Appeals (which hears all appeals in patent cases) reviewed Ameranth Inc.’s patents for a computerized restaurant menu system, ultimately sending Ameranth back to the kitchen.

Accused infringers ask for check

Ameranth holds three patents related to a computer system with hardware and software. The patents describe a menu with categories and items, along with software that can generate a second menu from the first menu by allowing categories and items to be selected. The second menu is manually modified after generation by either handwriting or voice capturing capabilities. It also links orders to a specific table and customer.

The company’s patents describe a “preferred embodiment” of the invention for use in the restaurant industry. It consists of a menu of:

  • Categories (for example, appetizers),
  • Items (chef’s salad),
  • Modifiers (dressing), and
  • Submodifiers (blue cheese).

This menu can be configured on a desktop computer and then downloaded onto a handheld device. The invention replaces a server’s note pad or mental list with an electronic device programmed to allow menu items to be selected as a customer places an order.

Ameranth sued a number of companies for infringing its patents. In response, Apple, Inc. and several hospitality, restaurant and event ticket sales companies petitioned the PTAB to review the patents for validity. The board found certain claims in each of the patents to be patent-ineligible abstract ideas, but it upheld other claims as patent-eligible. Ameranth appealed the ineligibility findings, and Apple and some of the other parties appealed the ruling that some of the claims were patent-eligible.

Patentee gets served

The appeals court applied the two-part patent eligibility test established by the U.S. Supreme court in Alice Corp Pty. Ltd. v. CLS Bank Int’l. Under that test, a court must first determine whether the patent claim covers a patent-ineligible abstract idea. If so, the court then must consider whether the claim’s additional elements — individually or as a combination — transform the claim into a patent-eligible application of the abstract idea.

The court affirmed the PTAB’s conclusion that the defendant’s patents related to an abstract idea. It found that the patents cover systems, including menus with particular features. According to the court, the patents don’t cover a particular way of programming or designing the software to create menus that have those features. In essence, the patents cover the ability to generate menus with certain features. Moreover, the patents don’t cover a specific improvement in the way computers operate.

The court also agreed with the PTAB that the invention’s central processing unit, data storage device and operating system components were “typical” hardware elements. In fact, the patents described aspects of the menus as “conventional” and stated that the software programming required was “commonly known.” The invention, therefore, merely added familiar computer components to well-known business practices.

Court modifies order

However, the court reversed the board’s determination that certain claims were patent-eligible. The linked-orders claims cover the process of a server taking an order and keeping track of which customer placed that order, when done using a computer. The court found that this linking of orders to specific customers isn’t an inventive feature but rather a “classic example of manual tasks that cannot be rendered patent-eligible merely by performing them with a computer.”

Similarly, the court held that claims involving the use of handwriting and voice-capture technologies to manually modify a menu didn’t provide an inventive concept. The patents didn’t explain how the technologies were to be implemented, and the defendant conceded that it hadn’t invented them. As such, the patents covered no more than the use of existing technologies using a computer system.

The takeaway

The appeals court’s ruling is yet another example of how the Alice test can invalidate a patent. And it makes clear, once again, that merely appending a pre-existing practice or technology to patent-ineligible claims doesn’t render them patent-eligible.

Apple, Inc. v. Ameranth, Inc., No. 2015-1703, -1704, Nov. 29, 2016 (Fed. Cir.)

Alice Corp Pty. Ltd. v. CLS Bank Int’l, No. 13–298, June 19, 2014 (U.S.)

Satisfying the “technological invention” exception

The patentee in Apple, Inc. v. Ameranth, Inc. (see main article) challenged the Patent Trial and Appeal Board’s finding that its patents were “Covered Business Method” (CBM) patents and therefore subject to board review for validity. A CBM patent covers a method or apparatus for performing data processing or other operations used in the practice, administration or management of a financial product or service. The term doesn’t include patents for technological inventions, though, and the patentee contended that its patents fell within this exception.

As the Federal Circuit Court of Appeals explained, a technological invention must:

  • Include a technological feature that is novel and unobvious when compared with existing inventions, and
  • Solve a technical problem using a technical solution.

The patentee said its patents described technological features, including specific software distinctive from previous inventions. Also, the opposing parties didn’t show that those features were known or conventional. But the court didn’t even consider the first factor because it found that the invention didn’t solve a technical problem with a technical solution.


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