iTakeaway: Claim construction is not a necessary prerequisite to a validity determination under 35 U.S.C. § 101.
In its Final Written Decision, the Board found that claims 1–11 of the ’850 patent are unpatentable. In particular, the Board concluded that Petitioner had shown by a preponderance of the evidence that claims 1–11 of the ’850 patent are unpatentable under 35 U.S.C. § 101.
The ’850 patent relates to “a desktop software application that enables the rapid creation and building of a menu.” The parties requesting covered business method review in this case (“Petitioner,” collectively) included Expedia, Fandango, Hotel Tonight, Hotwire, Hotels.com, L.P., Kayak, Live Nation, Oracle, Orbitz, Opentable, Papa John’s, Stubhub, Ticketmaster, Travelocity.com, Wanderspot, Pizza Hut, Domino’s, Grubhub, Order.in, Mobo Systems, Starbucks, Eventbrite, Best Western, Hilton, Hyatt, Marriott, Starwood, Usablenet, and Apple. Petitioner had requested covered business method review of claims 1-16, but the Board had only instituted trial with respect to claims 1-11.
The Board began its analysis by noting that the Patent Owner Response had attempted to incorporate by reference certain arguments made in the Preliminary Response. In reply, the Board pointed out that 37 C.F.R. § 42.6(a)(3) prohibits the incorporation by reference of arguments from one document to another document. Thus, the Board did not consider any of the arguments in the Patent Owner Response that had been incorporated by reference.
In response to Patent Owner’s argument that the “the entirety of the challenged claims” must be construed, the Board countered that claim construction was not necessarily “a prerequisite to a validity determination under § 101.” Instead, according to the Board, “only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy.” Thus, the Board only construed the claim limitations that were “relevant to the issues of patent-eligibility[.]”
Both Patent Owner and Petitioner had urged the Board to adopt at least some previous judicial constructions (e.g., certain constructions by the United States District Court for the Eastern District of Texas Marshall Division). Because the standard for claim construction is different in a district court infringement action than the one used by the Board, however, the Board did not feel compelled to adopt any of the previous judicial constructions. The Board then went on to agree with Petitioner that the preamble of independent claim 1 was non-limiting and that the broadest reasonable construction of the claim term CPU “is the computational and control unit of a computer.” The Board construed certain other claim terminology as well, including “Web page” and “menu.”
The Board then analyzed claims 1-11 under 35 U.S.C. § 101 to determine whether they were directed to patent-ineligible subject matter. The Board concluded that claims 1-11 were not directed to patent-eligible subject matter at least because (1) these claims were “directed to the abstract idea of generating a second menu from a first menu and sending the second menu to another location” and (2) these claims “[do] not recite additional elements that [transform] the claim into a patent-eligible application of an abstract idea.”
Agilysys, Inc. et al. v. Ameranth, Inc., CBM2014-00015
Paper 36: Final Written Decision
Dated: March 20, 2015
Patent 6,384,850 B1
Before: Jameson Lee, Meredith C. Petravick, and Neil T. Powell
Written by: Petravick
Related Proceedings: CBM2014-00016 (regarding related U.S. Patent No. 6,871,325); CBM2014-00013 (regarding related U.S. Patent No. 6,982,733); CBM2014-00014 (regarding related U.S. Patent No. 8,146,077); plus “numerous related ongoing district court proceedings.”
