Apple successfully invalidated three patents for failure to recite patent eligible subject matter. Apple, Inc. v. Ameranth, Inc., 2015-1792, 2015-1793 (Fed. Cir. 2016). The patents relate to synchronous communication systems for electronically generating and transmitting menu selections. While the covered technology is not directly related to personalized medicine, the Federal Circuit's review of the patents' specifications and the court's claim constructions in the context of a 35 U.S.C. § 101 challenge is instructive to patent applicants seeking to patent methods that may be characterized as an abstract idea, such as methods linking treatment options or clinical trials to potential patients.
The Patents at issue
Ameranth, Inc. (Ameranth) is the owner of the three patents in issue, namely U.S. Patent No. 6,384,850 ('850 Patent), U.S. Patent No. 6,871,325 ('325 Patent), and U.S. Patent No. 6,982,733 ('733 Patent). The patents are related to each other as parent ('850 Patent), continuation ('325 Patent) and continuation-in-part ('733 Patent). Each patent specification discloses a first menu having categories and items and software that can generate a second menu from that first menu by allowing the categories and items to be selected. The menus can be configured using a graphical user interface and then transmitted to a wireless handheld device.
Claim 1 of the '850 Patent was determined to be representative of the challenged claims and is reproduced below:
An information management and synchronous communications system for generating and transmitting menus comprising: a central processing unit,
a data storage device connected to said central processing unit,
an operating system including a graphical user interface,
a first menu consisting of menu categories, said menu categories consisting of menu items, said first menu stored on said data storage device and displayable in a window of said graphical user interface in a hierarchical tree format,
a modifier menu stored on said data storage device and displayable in a window of said graphical user interface,
a sub-modifier menu stored on said data storage device and displayable in a window of said graphical user interface, and
application software for generating a second menu from said first menu and transmitting said second menu to a wireless handheld computing device or Web page,
wherein the application software facilitates the generation of the second menu by allowing selection of catagories [sic] and items from the first menu, addition of menu categories to the second menu, addition of menu items to the second menu and assignment of parameters to items in the second menu using the graphical user interface of said operating system, said parameters being selected from the modifier and sub-modifier menus.
Slip Op. at page 5.
A preferred embodiment of the claimed invention is its use in the restaurant industry. In that embodiment, a menu consists of categories such as appetizers and entrees, items such as chicken Caesar salad, modifiers such as dressing, and sub-modifiers such as Italian and bleu cheese.
The case came to the Federal Circuit by Ameranth's appeal of the Patent Trial and Appeal Board's (Board's) finding that the patents are covered business methods ("CBM") eligible for CBM review. Ameranth also argued that the Board erred in misconstruing the claims and in holding that certain claims of the patents failed under 35 U.S.C. § 101. Slip Op. at 8.
Standards of Review and Construction of the Claims
In CBM, the claims are construed according to their broadest reasonable construction in light of the patent's specification. Slip Op. at 9. The Federal Circuit, in reviewing CBM determinations, construes the claims de novo. Id. However, "[i]f the...