United States Court of Appeals 

for the Federal Circuit ______________________ 

APPLE, INC., DOMINO’S PIZZA, INC., DOMINO’S 

PIZZA, LLC, FANDANGO, LLC, OPENTABLE, INC.,

Appellants

v.

AMERANTH, INC.,

Cross-Appellant

______________________ 

2015-1703, 2015-1704

______________________ 

Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board, in No. 

CBM2014-00013.

-------------------------------------------------------------------------

AMERANTH, INC.,

Appellant

v.

AGILYSYS, INC., EXPEDIA, INC., FANDANGO, LLC, 

HOTEL TONIGHT, INC., HOTWIRE, INC., 

HOTELS.COM, L.P., KAYAK SOFTWARE 

CORPORATION, LIVE NATION ENTERTAINMENT, 

INC., ORACLE CORPORATION, ORBITZ, LLC, 

OPENTABLE, INC., PAPA JOHN’S USA, INC., 

STUBHUB, INC., TICKETMASTER, LLC, 

TRAVELOCITY.COM LLP, WANDERSPOT LLC, 
2 APPLE, INC. v. AMERANTH, INC. 

DOMINO’S PIZZA, INC., DOMINO’S PIZZA, LLC, 

MOBO SYSTEMS, INC., EVENTBRITE, INC., 

BEST WESTERN INTERNATIONAL, INC., 

HYATT CORPORATION, MARRIOTT 

INTERNATIONAL, INC., STARWOOD HOTELS & 

RESORTS WORLDWIDE INC., USABLENET, INC.,

APPLE, INC., HILTON RESORTS CORP., 

HILTON WORLDWIDE, INC., HILTON 

INTERNATIONAL CO.,

Appellees

______________________ 

2015-1792, 2015-1793

______________________ 

Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board, in Nos. 

CBM2014-00015, CBM2014-00016.

 

______________________ 

Decided: November 29, 2016

______________________ 

STANLEY JOSEPH PANIKOWSKI III, DLA Piper LLP

(US), San Diego, CA, argued for all appellants in 2015-

1703, -1704 and all appellees in 2015-1792, -1793. Apple, 

Inc., Eventbrite, Inc. also represented by ERIN GIBSON,

ROBERT CHEN WILLIAMS; MARK D. FOWLER, East Palo 

Alto, CA; JAMES M. HEINTZ, Reston, VA.

JONATHAN S. FRANKLIN, Norton Rose Fulbright US

LLP, Washington, DC, argued for all appellants in 2015-

1703, -1704 and all appellees in 2015-1792, -1793. Fandango, LLC, OpenTable, Inc., Expedia, Inc., Hotel Tonight, Inc., Hotwire, Inc., Hotels.com, L.P., Kayak 

Software Corporation, Live Nation Entertainment, Inc., 

Orbitz, LLC, Papa John’s USA, Inc., Stubhub, Inc., 
APPLE, INC. v. AMERANTH, INC. 3

Ticketmaster, LLC, Travelocity.com LLP, Wanderspot 

LLC also represented by STEPHANIE DEBROW, GILBERT 

ANDREW GREENE, Austin, TX; RICHARD STEPHEN ZEMBEK, 

Houston, TX.

JOHN WILLIAM OSBORNE, Osborne Law LLC, 

Cortlandt Manor, NY, argued for Ameranth, Inc. Also 

represented by MICHAEL D. FABIANO, Fabiano Law Firm, 

P.C., San Diego, CA.

JOSEPH MATAL, Office of the Solicitor, United States 

Patent and Trademark Office, Alexandria, VA, argued for 

intervenor Michelle K. Lee. Also represented by THOMAS 

W. KRAUSE, SCOTT WEIDENFELLER. 

FRANK A. ANGILERI, Brooks Kushman PC, Southfield, 

MI, for Domino’s Pizza, Inc., Domino’s Pizza, LLC. Also 

represented by THOMAS W. CUNNINGHAM. 

ANTHONY NIMMO, Ice Miller LLP, Chicago, IL, for appellee Agilysys, Inc. in 2015-1792, -1793. Also represented by NICHOLAS R. MERKER. 

JARED BOBROW, Weil, Gotshal & Manges LLP, Redwood Shores, CA, for appellee Oracle Corporation in 2015-

1792, -1793. Also represented by BRIAN CHANG. 

LOWELL D. MEAD, Cooley LLP, Palo Alto, CA, for appellee Mobo Systems, Inc. in 2015-1792, -1793. 

JOSEPH RICK TACHE, Greenberg Traurig LLP, Irvine, 

CA, for appellee Best Western International, Inc. in 2015-

1792, -1793. 

LAURA BETH MILLER, Brinks Gilson & Lione, Chicago, 

IL, for appellee Hyatt Corporation in 2015-1792, -1793. 

Also represented by DAVID LINDNER. 
4 APPLE, INC. v. AMERANTH, INC. 

NICK G. SAROS, Jenner & Block LLP, Los Angeles, CA, 

for appellee Marriott International, Inc. in 2015-1792, -

1793. Also represented by MICHAEL GLENN BABBITT,

Chicago, IL. 

JOHN GUARAGNA, DLA Piper LLP (US), Austin, TX, 

for appellee Starwood Hotels & Resorts Worldwide Inc. in 

2015-1792, -1793. Also represented by JAMES M. HEINTZ, 

Reston, VA; STANLEY JOSEPH PANIKOWSKI III, ROBERT 

CHEN WILLIAMS, San Diego, CA.

ANDREW PETER ZAPPIA, LeClairRyan, A Professional 

Corporation, Rochester, NY, for appellee USABLENET, 

Inc. in 2015-1792, -1793. 

DAVID M. STEIN, Alston & Bird LLP, Los Angeles, CA, 

for appellees Hilton Resorts Corp., Hilton Worldwide, Inc., 

Hilton International Co. in 2015-1792, -1793. 

______________________ 

Before REYNA, CHEN, and STOLL, Circuit Judges.

REYNA, Circuit Judge. 

In this appeal, we review Patent Trial and Appeal 

Board decisions in three Covered Business Method 

(“CBM”) reviews. The decisions addressed the subject 

matter eligibility of certain claims of 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”). 

For the reasons explained below, we affirm-in-part and 

reverse-in-part.
APPLE, INC. v. AMERANTH, INC. 5

BACKGROUND

I. Patents

Ameranth, Inc. (“Ameranth”) owns the patents, which 

disclose computer systems with hardware and software.1 

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. Claim 1 in the ’850 patent 

recites:

1. An information management and synchronous 

communications system for generating and 

transmitting menus comprising: 

a. a central processing unit, 

b. a data storage device connected to said 

central processing unit, 

c. an operating system including a graphical user interface, 

d. 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, 

 

1 The ’325 patent and ’850 patent have the same 

specifications. The ’325 patent issued from an application 

which was a continuation of the application that issued as 

the ’850 patent. The ’733 patent issued from an application which was a continuation-in-part of the application 

that issued as the ’850 patent. The ’733 patent’s specification is largely the same as the other patents, containing 

two additional figures and some additional description.
6 APPLE, INC. v. AMERANTH, INC. 

e. a modifier menu stored on said data 

storage device and displayable in a window of said graphical user interface, 

f. a sub-modifier menu stored on said data 

storage device and displayable in a window of said graphical user interface, and 

g. 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.

’850 patent col. 14 l. 48–col. 15 l. 11. 

Claim 1 of the ’325 patent and claim 1 of the ’733 patent are nearly identical to claim 1 of the ’850 patent. 

They differ only in that short phrases are added to the 

end of the claim: claim 1 of the ’325 patent additionally 

recites “wherein said second menu to [sic] applicable to a 

predetermined type of ordering” and claim 1 of the ’733 

patent additionally recites “wherein said second menu is 

manually modified after generation.” ’325 patent col. 15 

ll. 23–24; ’733 patent col. 15 l. 60–col. 16 l. 25.

The patents describe a preferred embodiment of the 

invention for use in the restaurant industry. In that 

embodiment, a menu consists of categories such as appe-
APPLE, INC. v. AMERANTH, INC. 7

tizers and entrees, items such as chicken Caesar salad, 

modifiers such as dressing, and sub-modifiers such as 

Italian and bleu cheese. See, e.g., ’850 patent col. 6 ll. 9–

21. 

The menu can be configured on a desktop computer 

and then downloaded onto a handheld device. Id. at col. 6 

ll. 22–24. The menu may be displayed to a user and then 

another menu may be generated “in response to and 

comprised of the selections made.” Id. at col. 13 ll. 52–61. 

Figure 7, shown above, represents a point of sale interface 

for use in displaying the claimed menus in a preferred 

embodiment. Id. at col. 4 ll. 52–55.

The specifications note that “ordering prepared foods 

has historically been done verbally, either directly to a 

waiter or over the telephone, whereupon the placed order 

is recorded on paper by the recipient or instantly filled.” 

’850 patent col. 1 ll. 23–27; ’733 patent col. 1 ll. 31–34. 

They explain that the “unavailability of any simple technique for creating restaurant menus and the like for use 

in a limited display area wireless handheld device or that 
8 APPLE, INC. v. AMERANTH, INC. 

is compatible with ordering over the internet ha[d] prevented widespread adoption of computerization in the 

hospitality industry.” ’850 patent col. 2 ll. 40–45; ’733 

patent col. 2 ll. 48–53.

II. Procedural History

Appellees in the 2015-1792 and 2015-1793 appeals 

(“Agilysys petitioners”) petitioned for CBM review of the 

’325 patent and the ’850 patent. Appellants in the 2015-

1703 and 2015-1704 appeals (“Apple petitioners”) petitioned for CBM review of the ’733 patent. The Apple 

petitioners and Agilysys petitioners are together referred 

to as “petitioners.” 

The Patent Trial and Appeal Board (“Board”) construed the claims, found that each patent met the statutory definition of “covered business method patent,” and 

instituted CBM reviews. In its final decisions, the Board 

found certain claims in each of the patents unpatentable 

under 35 U.S.C. § 101.2 Ameranth appeals these findings, 

making three arguments. Ameranth argues 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 Board also found that the Apple petitioners had 

not met their burden of showing that claims 3, 6–9, 11, 

and 13–16 of the ’733 patent were unpatentable under 

§ 101. The Apple petitioners appeal these findings. They 

argue that these dependent claims cover well-known, 

conventional concepts that do not confer patent eligibility.

 

2 Specifically, the Board found that claims 1–11 of 

the ’850 patent, claims 1–10 of the ’325 patent, and claims 

1, 2, 4, 5, 10, and 12 of the ’733 patent were all unpatentable under § 101.
APPLE, INC. v. AMERANTH, INC. 9

The Director of the United States Patent and Trademark Office (“Patent Office”) has intervened. She argues 

that this court lacks jurisdiction to review the Board’s 

decision that the patents are CBM patents, and that all of 

the Board’s determinations were correct. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).

DISCUSSION 

We review the Board’s legal conclusions de novo and 

its factual findings for substantial evidence. In re Roslin 

Inst. (Edinburgh), 750 F.3d 1333, 1335 (Fed. Cir. 2014). 

The “ultimate interpretation” of a claim term is a legal 

conclusion reviewed de novo. Teva Pharm. USA, Inc. v. 

Sandoz, Inc., 135 S. Ct. 831, 841 (2015). If the Board

makes subsidiary factual findings about extrinsic evidence that underlie its construction, we review those

factual findings for substantial evidence. Microsoft Corp. 

v. Proxyconn, Inc., 789 F.3d 1292, 1297 (Fed. Cir. 2015)

(citing Teva, 135 S. Ct. at 841–42). We review the Board’s 

reasoning that the patents are CBM patents under the 

arbitrary and capricious standard. SightSound Techs., 

LLC v. Apple Inc., 809 F.3d 1307, 1315 (Fed. Cir. 2015). 

We review § 101 patent eligibility de novo. Roslin Inst., 

750 F.3d at 1335.

I. Claim Constructions

Ameranth appeals the Board’s claim constructions, 

arguing that the Board’s CBM and § 101 determinations 

were “based on a misapprehension of the actually claimed 

subject matter.” -1792 Appellant’s Br. 5; -1703 CrossAppellant’s Br. 8. 

During CBM review, the Board construes claims in an 

unexpired patent according to their broadest reasonable 

construction in light of the patent’s specification. 37 

C.F.R. § 42.300(b); cf. Cuozzo Speed Techs., LLC v. Lee, 

136 S. Ct. 2131, 2142 (2016) (upholding the Patent Office 

regulation requiring the use of the broadest reasonable 
10 APPLE, INC. v. AMERANTH, INC. 

construction in the analogous context of inter partes

review). 

A. Menu

Before the Board, Ameranth argued that the term 

“menu” should be construed as “computer data representing collections of linked levels of choices or options intended for display in a graphical user interface.” Agilysys, 

Inc. v. Ameranth, Inc., CBM2014-00015, 2015 WL 

1324400, at *7–8 (P.T.A.B. Mar. 20, 2015) (“’850 Fin. 

Dec.”); Agilysys, Inc. v. Ameranth, Inc., CBM2014-00016, 

2015 WL 1324401, at *9 (P.T.A.B. Mar. 20, 2015) (“’325 

Fin. Dec.”); Apple, Inc. v. Ameranth, Inc., CBM2014-

00013, 2015 WL 1324399, at *8–9 (P.T.A.B. Mar. 20, 

2015) (“’733 Fin. Dec.”).

The Board construed the term “menu” to be “a list of 

options available to a user displayable on a computer.” 

’850 Fin. Dec. at *8; ’325 Fin. Dec. at *9; ’733 Fin. Dec. at 

*9. 

Ameranth argues that the Board’s construction is 

wrong because it does not include language stating that 

the claimed menus are hierarchical. Ameranth argues 

that the construction is inconsistent with language in the

claims expressly reciting a hierarchical menu.

The Board was correct to not include in its construction of “menu” features of menus that are expressly 

recited in the claims. Ideally, claim constructions give 

meaning to all of a claim’s terms. Merck & Co. v. Teva 

Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005). 

Construing a claim term to include features of that term 

already recited in the claims would make those expressly 

recited features redundant.

B. Synchronous Communications System

Before the Board, Ameranth argued that certain claim 

preambles reciting “synchronous communications system” 
APPLE, INC. v. AMERANTH, INC. 11

were limiting.3 It argued that “a synchronous communication system requires a central back-office server that 

communicates data updates to and from multiple client 

devices.” ’850 Fin. Dec. at *6; ’325 Fin. Dec. at *7; ’733 

Fin. Dec. at *7. In its final decisions, the Board declined 

to find these preambles limiting.4 

 Ameranth argues that the Board erred when it declined to find these claim preambles limiting. We agree 

with the Board that nothing in the patents’ specifications 

indicates that a synchronous communication system is 

required to include a central back-office server that communicates data updates to and from multiple client 

devices. A person of ordinary skill in the art would not 

have understood the broad term “synchronous communications systems” to include only such systems. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)

(en banc). The Board was correct in determining that the 

preamble recitations of “synchronous communications 

system” are not limiting.

C. Central Processing Unit

Ameranth argued before the Board that the term

“central processing unit” should be construed as “central 

 

3 The preambles of claim 1 of the ’850 patent, 

claims 1 and 7–9 of the ’325 patent, and claim 1 of the 

’733 patent recite “[a]n information management and 

synchronous communications system for generating and 

transmitting menus.” The preambles of claims 4, 5, and 

12 of the ’733 patent include similar language. 4 The Board later noted that the patent specifications disclose that Windows CE® was a “common GUI 

operating system” and included “built in synchronization 

between handheld devices, internet and desktop infrastructure.” ’733 Fin. Dec. at *16, 18, 20. 
12 APPLE, INC. v. AMERANTH, INC. 

server.” ’850 Fin. Dec. at *6–7; ’325 Fin. Dec. at *8–9; 

’733 Fin. Dec. at *7–8. The Board instead construed the 

term as “the computational and control unit of a computer.” Id. 

On appeal, Ameranth argues that the Board erred in 

its construction. In support, Ameranth makes two main 

arguments. 

First, Ameranth argues that the recited central processing unit is not a generic central processing unit, but is 

instead a particular processing unit which, with application software, provides synchronized second menus across 

different devices in the system. It urges that the term

“central processing unit” must be construed to include the 

functions ascribed to that unit in the claims, and that the 

central processing unit cannot be a generic processor. 

But, as noted above, construing a claim term to include 

features of that term that are already recited in the 

claims would make those expressly recited features 

redundant. Merck, 395 F.3d at 1372. 

Second, Ameranth argues that the Board’s construction is precluded by claim differentiation, as claim 5 of the 

’733 patent expressly recites “microprocessor.” We disagree. This court has declined to apply the doctrine of 

claim differentiation where “the claims are not otherwise 

identical in scope.” Indacon, Inc. v. Facebook, Inc., 824 

F.3d 1352, 1358 (Fed. Cir. 2016). Claim 5 of the ’733 

patent is an independent claim, and Ameranth is correct 

that it recites “microprocessor” where other claims recite

“central processing unit.” But claim 5 also differs from 

the other independent claims in many other ways, and so 

the claims “are not otherwise identical in scope.” In 

addition, “two claims with different terminology can 

define the exact same subject matter.” Curtiss-Wright 

Flow Control Corp. v. Velan, Inc., 438 F.3d 1374, 1380 

(Fed. Cir. 2006). In other words, although claim 5 recites 

“microprocessor” and others recite “central processing 
APPLE, INC. v. AMERANTH, INC. 13

unit,” this does not necessarily mean that the two terms 

must have a different meaning. 

The Board was correct in not construing the term 

“central processing unit” to refer only to particular processors with certain features. The Board’s construction 

used language from a definition of central processing unit

from the Microsoft Computer Dictionary, 115 (4th Ed. 

1999) (“the computational and control unit of a computer”). See, e.g., ’850 Fin. Dec. at *7. The Board’s construction was consistent with the use of the term “central 

processing unit” in the specifications. The patent specifications explain that “a typical workstation platform

includes hardware such as a central processing unit 

(‘CPU’), e.g., a Pentium® microprocessor.” See ’850 patent 

col. 5 ll. 37–39; ’733 patent col. 6 ll. 52–54; see also ’850 

patent col. 5 ll. 48–50 and ’733 patent col. 6 ll. 63–65.

II. CBM Patents

The Board decided that the patents are CBM patents. 

The Board first found that the patents meet the “financial 

product or service” component of the definition of CBM 

patents. See, e.g., Agilysys, Inc. v. Ameranth, Inc., 

CBM2014-00015, 2014 WL 1440416, at *7–8 (P.T.A.B. 

Mar. 26, 2014) (“’850 Inst. Dec.”). The Board then found 

that the patents did not fall within the “technological 

invention” exception of the definition. Id. at *6–7.

Ameranth appeals the Board’s decision that the patents are CBM patents.5 Ameranth does not appeal the 

 

5 The Patent Office argues that this Court lacks 

jurisdiction to review this issue under In re Hiniker Co., 

150 F.3d 1362 (Fed. Cir. 1998) and In re Cuozzo Speed 

Techs., LLC, 793 F.3d 1268, 1271 (Fed. Cir. 2015), aff’d 

sub nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 

2131 (2016). We disagree. In Versata Development
14 APPLE, INC. v. AMERANTH, INC. 

Board’s “financial product or service” determination, but 

it argues that the patents fall within the exception for 

technological inventions. 

The term “covered business method patent” means “a 

patent that claims a method or corresponding apparatus 

for performing data processing or other operations used in 

the practice, administration, or management of a financial product or service, except that the term does not 

include patents for technological inventions.” LeahySmith America Invents Act, Pub. L. No. 112–29, 

§ 18(d)(1), 125 Stat. 284, 331 (2011) (emphasis added). 

The Patent Office promulgated the following regulation 

defining technological inventions:

In determining whether a patent is for a technological invention solely for purposes of the Transitional Program for Covered Business Methods 

(section 42.301(a)), the following will be considered on a case-by-case basis: whether the claimed 

subject matter as a whole recites a technological 

feature that is novel and unobvious over the prior 

art; and solves a technical problem using a technical solution.

37 C.F.R. § 42.301(b).

 

Group, Inc. v. SAP America, Inc., 793 F.3d 1306, 1323 

(Fed. Cir. 2015), we held that we have jurisdiction to 

review this issue. This court’s Versata decision noted 

several reasons why this court’s holding in Cuozzo was 

not inconsistent with Versata. 793 F.3d at 1322. To the 

extent that 35 U.S.C. § 314(d) is analogous to 35 U.S.C. 

324(e), the Supreme Court in Cuozzo stated that § 314(d) 

does not permit the Patent Office to “act outside its statutory limits.” 136 S. Ct. at 2141.
APPLE, INC. v. AMERANTH, INC. 15

This court has noted that this regulation offers little 

towards understanding the meaning of the term “technological invention.” Versata, 793 F.3d at 1326. But determining whether these patents are a technological 

invention does not require this court to determine “the 

full sweep of the term.” Id. at 1327.

The Board found that neither prong of 37 C.F.R. 

§ 42.301(b) was satisfied. First, the Board found that the 

patents did not claim a technological feature that is novel 

and unobvious over the prior art. Agilysys, Inc. v. 

Ameranth Inc., CBM2014-00016, 2014 WL 1440421, at *7 

(P.T.A.B. Mar. 26, 2014) (“’325 Inst. Dec.”) at *7. The 

Board explained that the specifications disclosed that the 

hardware used in the claimed systems was “typical,” and 

that the programming steps were “commonly known.” 

See, e.g., ’325 Inst. Dec. at *7–8.6

Second, the Board found that the claimed inventions 

did not solve a technical problem using a technical solution. Ameranth argued that its patents were solutions for 

various problems, and the Board determined that neither 

the solutions nor the problems were technical. For example, Ameranth had argued that the ’850 and ’325 patents 

“solv[ed] the problem of how to display and synchronize 

computerized menus on non-standard devices/interfaces.” 

’325 Inst. Dec. at *8; ’850 Inst. Dec. at *8. The Board 

 

6 In the institution decisions, the Board stated that 

a patent need have only one claim directed to a covered 

business method to be eligible for CBM review. See, e.g.,

’325 Inst. Dec. at *5. On that basis, it analyzed only one 

claim from each patent: claim 1 of the ’325 patent, claim 1 

of the ’850 patent, and claim 12 of the ’733 patent. ’325 

Inst. Dec. at *6–8; ’850 Inst. Dec. at *7–8; Apple, Inc. v. 

Ameranth, Inc., CBM2014-00013, 2014 WL 1440408, at *8 

(P.T.A.B. Mar. 26, 2014) (“’733 Inst. Dec.”).
16 APPLE, INC. v. AMERANTH, INC. 

explained that the claims did not recite a solution to this 

problem, as they do not include recitations about how to 

display or synchronize the menus, but instead include 

descriptions about menu generation. Id. Similarly, 

Ameranth had argued that the ’733 patent was intended 

to solve a problem in restaurant ordering when customers 

wanted something unusual and unanticipated. ’733 Inst. 

Dec. at *9. The Board found that this was “more of a 

business problem than a technical problem.” Id.

On appeal, Ameranth argues that the patents fall 

within the “technological inventions” exception because 

they recite technological features, including specific 

software which was distinctive over the prior art, and 

because the petitioners made no showing that these 

features were known or conventional. 

We affirm the Board’s determinations that these are 

not patents for technological inventions. The Board’s 

determinations were supported by substantial evidence 

and are neither arbitrary nor capricious. We agree with 

the Board’s determination that these claims do not solve 

technical problems using technical solutions.

Ameranth also contends that the Board’s analysis on 

this issue did not address Ameranth’s objective evidence 

of non-obviousness. It argues that “[f]ailure to consider 

such evidence was error given that the PTO Regulations 

require analysis of whether the claims recite a technological feature that is ‘unobvious over the prior art.’” -1792 

Appellant’s Br. 20 (quoting 37 C.F.R. § 42.301); -1703 

Cross-Appellant’s Br. 29 (same).

We need not address this argument regarding whether the first prong of 37 C.F.R. § 42.301(b) was met, as we 

affirm the Board’s determination on the second prong of 

the regulation—that the claimed subject matter as a 

whole does not solve a technical problem using a technical 

solution. 
APPLE, INC. v. AMERANTH, INC. 17

III. Section 101 Determinations

A. Claims the Board Found Unpatentable

The Board found certain claims unpatentable under 

§ 101. Ameranth appeals these determinations.7

To determine whether a claim is eligible under § 101, 

we must “first determine whether the claims at issue are 

directed to a patent-ineligible concept.” Alice Corp. v. 

CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014). If they are, 

we then “consider the elements of each claim both individually and ‘as an ordered combination’ to determine 

whether the additional elements ‘transform the nature of 

the claim’ into a patent-eligible application.” Id. (quoting 

Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 

S. Ct. 1289, 1297–98 (2012)).

i. Step One 

At the first step, the Board determined that the 

claims in all three patents are directed to the abstract 

idea of “generating a second menu from a first menu and 

sending the second menu to another location.” ’850 Fin. 

Dec. at *11; ’325 Fin. Dec. at *18; ’733 Fin. Dec. at *12. 

Ameranth argues that the Board’s § 101 analysis 

changed slightly between the Board’s institution decisions 

 

7 Ameranth’s arguments on appeal are primarily 

directed to “the claims” or “claim 1” of the ’325 and ’850 

patents and “the claims” or “claim 1” of the ’733 patent. 

Given this, and the fact that all three patents have nearly 

identical claims as their first claim, we address all the 

claims the Board found invalid under § 101 together. 

This is consistent with the Board’s § 101 analysis, which 

is quite similar for all three patents. Ameranth raised 

only a few arguments that apply to a subset of claims or 

patents, and those are addressed separately.
18 APPLE, INC. v. AMERANTH, INC. 

and its final decisions. In the institution decisions, the 

Board described the patent claims as directed to generating a menu on a computer. ’325 Inst. Dec. at *14; ’850 

Inst. Dec. at *14; ’733 Inst. Dec. at *9. In the final decisions, the Board added to this description, finding the 

patent claims are directed to the abstract idea of generating a second menu from a first menu and sending the 

second menu to another location. ’850 Fin. Dec. at *11; 

’325 Fin. Dec. at *18; ’733 Fin. Dec. at *12.

An abstract idea can generally be described at different levels of abstraction. As the Board has done, the 

claimed abstract idea could be described as generating 

menus on a computer, or generating a second menu from 

a first menu and sending the second menu to another 

location. It could be described in other ways, including, as 

indicated in the specification, taking orders from restaurant customers on a computer.

The Board’s slight revision of its abstract idea analysis does not impact the patentability analysis. The Supreme Court has recognized that “all inventions . . . 

embody, use, reflect, rest upon, or apply laws of nature, 

natural phenomena, or abstract ideas.” Alice, 134 S. Ct. 

at 2354 (quoting Mayo, 132 S. Ct. at 1293). But not all 

claims are directed to an abstract idea. See, e.g., Enfish, 

LLC v. Microsoft Corp., 822 F.3d 1327, 1334–36 (Fed. Cir. 

2016); McRO, Inc. v. Bandai Namco Games Am. Inc., 837 

F.3d 1299, 1316 (Fed. Cir. 2016). 

The step one inquiry focuses on determining “whether the claim at issue is ‘directed to’ a judicial exception, 

such as an abstract idea.” McRO, Inc., 837 F.3d at 1312. 

We determine whether the claims “focus on a specific 

means or method that improves the relevant technology” 

or are “directed to a result or effect that itself is the 

abstract idea and merely invoke generic processes and 

machinery.” Id. at 1314. 
APPLE, INC. v. AMERANTH, INC. 19

We affirm the Board’s conclusion that the claims in

these 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. Id. Essentially, the claims are directed to

certain functionality—here, the ability to generate menus 

with certain features. Alternatively, the claims are not 

directed to a specific improvement in the way computers 

operate. Cf. Enfish, 822 F.3d at 1335–36. 

ii. Step Two

In the second step, the Board found that the recited 

central processing unit, data storage device, and operating system components were “typical” hardware elements. 

’850 Fin. Dec. at *12; ’325 Fin. Dec. at *18; ’733 Fin. Dec. 

at *13. It found aspects of the recited menus were described as conventional in the specifications. ’850 Fin. 

Dec. at *12; ’325 Fin. Dec. at *19; ’733 Fin. Dec. at *13. 

The Board quoted language from the specifications stating that “the discrete programming steps are commonly 

known.” Id. The Board also stated that “[e]ven when the 

claim elements are considered as a combination, they add 

nothing that is not already present when the elements are 

considered separately.” ’850 Fin. Dec. at *13; ’325 Fin. 

Dec. at *20; ’733 Fin. Dec. at *14.

With regard to step two, Ameranth argues broadly

that none of the claims are directed to something conventional or routine. In addition, Ameranth identifies certain 

aspects of certain claims that it argues make those claims

directed to patent-eligible subject matter. 

Specifically, first it points to the term “second menu is 

manually modified after generation” in claim 1 of the ’733 

patent. One example the ’733 patent’s specification 

provides for this limitation is a restaurant server writing 

“with lemon” on a screen of an electronic device, after 
20 APPLE, INC. v. AMERANTH, INC. 

selecting “Iced Tea” from the screen. Col. 4 ll. 6–10. The 

Board explained that manual modification of a menu 

could also include printing the second menu and then 

writing on it with a pen. ’733 Fin. Dec. at *14. Citing 

specification support, the Board noted that menus were 

commonly printed on paper, and that it was known to use 

pens in the hospitality industry. ’733 Fin. Dec. at *14. 

Second, Ameranth points to the synchronization limitation in independent claims 4, 5, and 12 of the ’733 

patent. For example, claim 4 recites in part that “data 

comprising the second menu is synchronized between the 

data storage device connected to the central processing 

unit and at least one other computing device.” ’733 patent 

col. 16 ll. 48–51. The Board explained that testimony 

from Ameranth during trial indicated that mere downloading could satisfy the synchronization limitation, and 

that the ’733 patent’s specification disclosed that the 

Windows CE® operating system included “built in synchronization between handheld devices, internet and 

desktop infrastructure.” ’733 Fin. Dec. at *16 (quoting 

’733 patent col. 12 ll. 15–18).

Third, Ameranth points to dependent claims 2 and 10 

of the ’733 patent, which recite printing features. For 

example, claim 2 recites that “the modified second menu 

can be selectively printed on any printer directly from the 

graphical user interface of a hand-held device.” 

Ameranth claims that these printing limitations are tied 

to physical, real-world locations of printers, and thus are 

not abstract. The Board explained that the ’733 patent 

specification disclosed that menus commonly are printed 

on paper. ’733 Fin. Dec. at *21.

Fourth, Ameranth points to the recitation of types of 

ordering in claims 1 to 6 of the ’325 patent. Claim 1 of the 

’325 patent includes a limitation that “wherein said 

second menu to [sic] applicable to a predetermined type of 

ordering.” ’325 patent col. 15 ll. 23–24. Claims 2 through 
APPLE, INC. v. AMERANTH, INC. 21

5 depend from claim 1 and recite specific types of ordering. For example, claim 2 recites “wherein the type of 

ordering is table-based customer ordering.” Claim 3 

recites “wherein the type of ordering in [sic] drive-through 

customer ordering.”

The Board found that all four of these features were 

insignificant post-solution activity. ’733 Fin. Dec. at *14, 

21; ’325 Fin. Dec. at *19, 21. We agree that these limitations are insignificant post-solution activities that do not 

support the invention having an “an inventive concept.” 

See, e.g., Mayo, 132 S. Ct. at 1294 (“[T]he prohibition 

against patenting abstract ideas cannot be circumvented 

by . . . adding insignificant postsolution activity.”) (quoting Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (quotation marks omitted)). 

The preferred embodiment of the claimed invention 

described in the specifications is a restaurant preparing a 

device that can be used by a server taking orders from a 

customer. The claimed invention replaces a server’s 

notepad or mental list with an electronic device programmed to allow menu items to be selected as a customer places an order. As noted above, the specifications 

describe the hardware elements of the invention as “typical” and the software programming needed as “commonly 

known.” The invention merely claims the addition of 

conventional computer components to well-known business practices. 

Finally, Ameranth argued in its briefing and at oral 

argument that programming the software to perform 

various parts of the claimed systems’ functionality was 

difficult, and that this difficulty indicates that the claims 

were not directed to an abstract idea. We disagree. The 

difficulty of the programming details for this functionality 

is immaterial because these details are not recited in the 

actual claims. The degree of difficulty in implementing 
22 APPLE, INC. v. AMERANTH, INC. 

an abstract idea in this circumstance does not itself 

render an abstract idea patentable.

We affirm the Board’s conclusion in step two that the 

elements of the patents’ claims—both individually and 

when combined—do not transform the claimed abstract 

idea into a patent-eligible application of the abstract idea. 

The patents can readily be understood as adding conventional computer components to well-known business 

practices. Enfish, 822 F.3d at 1338. The Supreme Court 

and this court have repeatedly determined that such 

claims are invalid under § 101. Id.; see also Ultramercial, 

Inc. v. Hulu, LLC, 772 F.3d 709, 717 (Fed. Cir. 2014), cert. 

denied sub nom. Ultramercial, LLC v. WildTangent, Inc., 

135 S. Ct. 2907 (2015). It is not enough to point to conventional applications and say “do it on a computer.” Cf.

Alice, 134 S. Ct. at 2358 (“Stating an abstract idea while 

adding the words ‘apply it with a computer’” is not enough 

for patent eligibility) (quoting Mayo, 132 S. Ct. at 1294).

We affirm the Board’s determinations that claims 1–

11 of the ’850 patent, claims 1–10 of the ’325 patent, and 

claims 1, 2, 4, 5, 10, and 12 of the ’733 patent are unpatentable under § 101.

B. Claims the Board Found Patentable

The Board found certain dependent claims were not 

unpatentable. The Apple petitioners appeal these determinations. We address first the dependent claims that 

involve linking orders to specific customers, and then 

those that involve handwriting and voice capture technologies. 

i. Linked Orders

The Apple petitioners appeal the Board’s determination that dependent claims 3 and 11 in the ’733 patent 

were not unpatentable. These claims require that the 

second menu, after being modified, can be linked to a 

specific customer at a specific table. Claim 3 recites 
APPLE, INC. v. AMERANTH, INC. 23

“wherein the modified second menu can be linked to a 

specific customer at a specific table directly from the 

graphical user interface of a hand-held device.” ’733 

patent col. 16 ll. 28–31. Claim 11 is similar. Id. at col. 17 

ll. 27–30. The ’733 patent’s specification describes this 

feature in the restaurant embodiment as linking orders to 

specific customer positions at specific tables. Id. at col. 4

ll. 38–46.

Ameranth argued to the Board that these claims were 

patentable because they recited “limitations that were 

unconventional or unique ‘in 2001 because the very capability of . . . linking a particular order to a particular 

customer at a table was novel then and unique to mobility 

and wireless handhelds.’” ’733 Fin. Dec. at *21 (quoting 

Ameranth Response at 75). Ameranth argued “that 

Petitioner has not provided any evidence that establishes 

otherwise.” Id.

The Board found that, while the Apple petitioners had 

argued that the claimed linking is a “classic example[] of 

manual tasks that cannot be rendered patent eligible 

merely by performing them with a computer,” that the 

Apple petitioners had not “provide[d] sufficient evidence 

to support [that] statement.” Id. (citations omitted). The 

Board found that the Apple petitioners had “provide[d] 

insufficient evidence to establish that a menu having the 

functionality to perform the claimed linking from a GUI 

on a hand-held device, was well-known or conventional 

and merely require[d] a general purpose computer.” Id.

On appeal, the Apple petitioners again argue that 

these linking limitations are routine and conventional. It 

directs this court to the specification language which 

explains that the hardware needed was typical and that 

the programming steps were commonly known. 

Ameranth argues that the Apple petitioners have not 

shown that the linking limitations were conventional. It 

contends that the Board made a factual finding when it 
24 APPLE, INC. v. AMERANTH, INC. 

determined that the Apple petitioners had provided 

insufficient evidence to establish this. Ameranth argues 

that linking orders to specific customers at specific tables

was an inventive feature. 

Ameranth’s arguments are further belied by the ’733 

patent’s specification. In addition to expressly reciting 

that the hardware needed was typical and that the programming steps were commonly known, the specification 

merely states that the user interface could permit linking 

of orders with customers, with no disclosure of how this

would be technologically implemented: 

[H]and-held devices can link the above innovations to individual customers at specific tables 

through a graphical user interface on the handheld screen that assigns each customer a number 

within a table. For example, table 20 might have 

6 customers (1–6) and each customer has a different order, [sic] By enabling the linkage of the orders to specific customer positions within the 

table and accessible from the hand-held screen, 

the servers can easily track and link the specific 

orders to the specific customers.

’733 patent col. 4 ll. 38–46. After reviewing this disclosure, we find no inventive method for implementing the 

claimed order linking.

Generally, a claim that merely describes an “effect or 

result dissociated from any method by which [it] is accomplished” is not directed to patent-eligible subject 

matter. Internet Patents Corp. v. Active Network, Inc., 

790 F.3d 1343, 1348 (Fed. Cir. 2015). Here, the linked 

orders claim limitation calls for the desired result of 

associating a customer’s order with said customer, and 

does not attempt to claim any method for achieving that 

result. McRO, Inc., 837 F.3d at 1314. 
APPLE, INC. v. AMERANTH, INC. 25

This analysis is confirmed by Ameranth’s concession 

at oral argument that, prior to its filing of the ’733 patent, 

restaurants were able to keep track of which customer at 

what table ordered what meal, to make sure that the 

right customer got their order of food. Oral Arg. at 23:35–

24:06, http://www.cafc.uscourts.gov/oral-argumentrecordings. These claims cover the process of a restaurant 

server taking an order from a customer and keeping track 

of what customer placed that order, when done using a 

computer. We agree with the Apple petitioners that the 

claimed linking of orders to customers is a classic example 

of manual tasks that cannot be rendered patent eligible 

merely by performing them with a computer.

These claims depend from independent claims which 

were found to be directed to unpatentable subject matter, 

as discussed above. Merely appending this preexisting

practice to those independent claims does not make them 

patentable. It is an insignificant post-solution activity. 

We reverse the Board’s finding confirming the patentability of these claims. 

ii. Handwriting and Voice Capture

The Apple petitioners also appeal the Board’s determination that dependent claims 6–9 and 13–16 in the ’733 

patent were not unpatentable. These claims depend from 

claims that recite either that the “said second menu is 

manually modified after generation,” or “wherein said 

second menu is manually modified by handwriting or 

voice recording.” ’733 patent, claims 1, 4, 5, and 12. As 

noted above, the Board found such recitation of general 

manual modification to be insignificant post-solution 

activity.

Some of the dependent claims upheld by the Board 

specify that the manual modification involves handwriting or voice capture. For example, claim 6 recites “wherein the manual modification involves handwriting 

capture.” The other claims depend from these claims and 
26 APPLE, INC. v. AMERANTH, INC. 

require that the captured inputs be recognized and converted to text. For example, claim 7 depends from claim 6 

and recites “wherein the handwriting capture involves 

handwriting recognition and conversion to text.” 

 The Apple petitioners argued before the Board that 

“manual modification of a menu is a classic example of a 

manual task which cannot be rendered patent eligible 

merely by performing it with a computer.” ’733 Fin. Dec. 

at *22 (quoting Reply at 11). They also argued that none 

of the claims were directed to any specific software for 

accomplishing manual modification. Id.

The Board found that the Apple petitioners had 

“fail[ed] to provide sufficient evidence that menus having 

handwriting capture or voice capture functionality were 

well-known or conventional at the time of the ’733 patent 

or require merely a general purpose computer.” Id.

On appeal, the Apple petitioners argue that these limitations recite insignificant post-solution activity. We 

agree that these limitations do not serve to provide an 

inventive concept. 

The ’733 patent refers to the use of handwriting and 

voice capture technologies without providing how these 

elements were to be technologically implemented. Col. 3 

l. 48–col. 4. l. 9; col. 4 ll. 18–22; id. at ll. 27–37. At oral 

argument, Ameranth conceded that it had not invented 

voice or handwriting capture technology, and that it was 

known at the time it filed its applications to use those 

technologies as ways of entering data into computer 

systems. Oral Arg. at 16:26–52. 

In any event, in Content Extraction, we found that a 

recitation of the use of “existing scanning and processing 

technology to recognize and store data from specific data 

fields such as amounts, addresses, and dates” did not 

amount to significantly more than the “abstract idea of 

recognizing and storing information from hard copy 
APPLE, INC. v. AMERANTH, INC. 27

documents using a scanner and a computer.” Content 

Extraction & Transmission LLC v. Wells Fargo Bank, 

Nat’l Ass’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014), cert. 

denied, 136 S. Ct. 119 (2015). Here, Ameranth claims no 

more than the use of existing handwriting and voice 

capture technologies using a computer system.

These claims depend from independent claims found 

to be directed to unpatentable subject matter, as is discussed above. Appending these preexisting technologies 

onto those independent claims does not make them patentable. We reverse the Board’s finding confirming the 

patentability of these claims.

CONCLUSION

For the reasons explained above, we affirm the 

Board’s decisions finding certain claims unpatentable 

under § 101, and we reverse the Board’s decisions confirming the patentability of certain claims under § 101. 

Claims 1–11 of the ’850 patent, claims 1–10 of the ’325 

patent, and claims 1–16 of the ’733 patent are all unpatentable under § 101.

AFFIRMED IN PART AND REVERSED IN PART

COSTS

No Costs.