Apple and Domino’s successful in patent ruling at Federal Circuit
The US Court of Appeals for the Federal Circuit has handed down a mixed patent ruling, in what is a successful outcome for Apple and Domino’s Pizza.
In a decision handed down yesterday, November 29, the court affirmed in part and reversed in part decisions by the Patent Trial and Appeal Board (PTAB) in three covered business method (CBM) reviews.
The decisions addressed the subject matter eligibility of certain claims of US patent numbers 6,384,850; 6,871,325; and 6,982,733.
Internet-based solutions provider Ameranth owns the patents, which disclose computer systems with hardware and software.
“The patent specifications disclose a first menu that has categories and items, and software that can generate a second menu from that first menu by allowing categories and items to be selected,” said the court.
IT solutions provider Agilysys (also named in the suit) had petitioned for CBM review of the ‘325 and ‘850 patents, while Apple had petitioned for CBM review of the ‘733 patent.
In its final decision, the PTAB found certain claims in each of the patents unpatentable.
Ameranth appealed against these findings, making three arguments: that the board misconstrued the claims, that the patents are not CBM patents, and that the board erred in its §101 analysis for these claims.
The PTAB had also found that Apple, which was joined by Domino’s Pizza on the petition, had not met the burden of showing that a number of claims of the ‘733 patent were unpatentable.
Apple appealed against these findings, arguing that these “dependent claims cover well-known, conventional concepts that do not confer patent eligibility”.
The Federal Circuit also noted that the director of the US Patent and Trademark Office had intervened and argued that the court lacks jurisdiction to review the board’s decision that the patents are CBM patents.
But the court held that it did have jurisdiction, under 28 USC §1295(a)(4)(A).
Agilysys had argued that the patents fall within the exception for technological inventions, so were not CBM patents.
This argument failed and the Federal Circuit backed the board’s decision that the patents were CBM, adding that the PTAB’s determinations were “supported by substantial evidence and are neither arbitrary nor capricious”.
On unpatentability, the court affirmed the board’s conclusion that the claims in the patents are directed to an abstract idea.
“The patents claim systems including menus with particular features. They do not claim a particular way of programming or designing the software to create menus that have these features, but instead merely claim the resulting systems,” said Circuit Judge Jimmie Reyna.
He added: “The board’s slight revision of its abstract idea analysis does not impact the patentability analysis.”
The PTAB’s decisions finding certain claims unpatentable under §101 were affirmed by the court, which also reversed the board’s decisions confirming the patentability of certain claims under §101.
