# United States **Court of Appeals**  **for the Federal Circuit**

______________________ APPLE, INC., DOMINO ’S PIZZA, INC., DOMI NO’ S PIZZA, LLC, FANDANGO , LLC, OPENTABLE, IN C., Appellants

v.

AMERANTH, INC., Cross

- Appellant

______________________

2015

- 1703, 2015

- 1704

______________________ Appeals from the United States Patent and Trad emark Office, Patent Trial and Appeal Board, in No. CBM2014

- 00013.

---------------------------------------- -- -------------------------------
AMERANTH, INC., Appellant

v.

AGILYSYS, INC., EXPE DIA, INC., FANDANGO, LLC, HOTEL TONIGHT, INC., HOTWIRE, INC., HOTELS.COM, L.P., KA YAK SOFTWARE CORPORATION, LIVE NATION ENTERTAINMENT, INC., ORACLE CORPORA TION, ORBITZ, LLC , OPENTABLE, INC., PAP A JOHN’ S USA, INC., STUBHUB, INC., TICKE TMASTER, LLC, TRAVELOCITY.COM LLP, WANDERSPOT LLC,APPLE , INC

. v. AMERANTH , INC

. 2

DOMINO’S PIZZA, INC. , DOMINO’ S PIZZA, LLC, MOBO SYSTEMS, INC., EVENTBRITE, INC.,

BEST WESTERN INTERNA TIONAL, INC., HYATT CORPORATION, M ARRIOT T INTERNATIONAL, INC., STARWOOD HOTELS & RESORTS WORLDWIDE IN C., USABLENET, INC., APPLE, INC., HILTON RESORTS CORP. ,

HILTON WORLDWIDE, IN C., HILTON INTERNATIONAL CO., Appellees

______________________

2015

- 1792, 2015

- 1793

______________________ Appeals from the United States Patent and Trad emark Office, Patent Trial and Appeal Board

, in No s

. CBM2014

- 00015, CBM2014

- 00016.

______________________
Decided: November 29, 2016

______________________
S TANLEY J OSEPH P ANIKOWSKI III , DLA Piper LLP (US) , San D iego, CA, argued for all appellants in 2015

- 1703
, - 1704 and all appellees in 2015

- 1792
, - 1793 . Apple, Inc., Eventbrite, Inc. also represented by E RIN G IBSON , R OBERT C HEN W ILLIAMS ; M ARK D. F OWLER , East Palo Alto, CA; J AMES M. H EINTZ , Reston, VA.

J ONATHAN S. F RANKLIN , Norton Rose Fulbright US LLP, Washington, DC, argued for all appellants in 2015

- 1703
, - 1704 and all appellees in 2015

- 1792
, - 1793 . Fa ndango, LLC, OpenTable, Inc., Expedia, Inc., Hotel T onight, 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 S TEPHANIE D E B ROW , G ILBE RT A NDREW G REENE , Austin, TX; R ICHARD S TEPHEN Z EMBEK , Houston, TX.

J OHN W ILLIAM O SBORNE , Osborne Law LLC, Cortlandt Manor, NY, argued for Am e ranth , Inc . Also represented by M ICHAEL D. F ABIANO , Fabiano Law Firm, P.C., San Diego, CA.

J OSEPH M ATAL , Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for intervenor Michelle K. Lee. Also represented by T HOMAS W. K RAUSE , S COTT W EIDENFELLER

.

F RANK A. A NGILERI , Brooks Kushman PC, Southfield, MI, for Domino’s Pizza, Inc., D omino’s Pizza, LLC. Also represented by T HOMAS W. C UNNINGHAM

.

A NTHONY N IMMO , Ice Miller LLP, Chicago, IL, for a ppellee Agilysys, Inc. in 2015

- 1792
, - 1793. Also represen ted by N ICHOLAS R. M ERKER

.

J ARED B OBROW , Weil, Gotshal & Manges LLP, Re dwood Shores, CA, for appellee Oracle Corporation in 2015

- 1792
, - 1793

. Also represented by B RIAN C HANG

.

L OWELL D. M EAD , Cooley LLP, Palo Alto, CA, for a ppellee Mobo Systems, Inc. in 2015

- 1792
, - 1793

.

J OSEPH R ICK T ACHE , Greenberg Traurig LLP, Irvine, CA, for appellee Best Western International, Inc. in 2015

- 1792
, - 1793

.

L AURA B ETH M ILLER , Brinks Gilson & Lione, Chicago, IL, for appellee Hyatt Corporation in 2015

- 1792
, - 1793

. Also represented by D AVID L INDNER

.APPLE , INC

. v. AMERANTH , INC

. 4

N ICK G. S AROS , Jenner & Block LLP, Los Angele s, CA, for appellee Marriott International, Inc. in 2015

- 1792
, - 1793

. Also represented by M ICHAEL G LENN B ABBITT , Chicago, IL

.

J OHN G UARAGNA , DLA Piper LLP ( US ) , Austin, TX

, for appellee Starwood Hotels & Resorts Worldwide Inc. in 2015

- 1792
, - 1793

. Also represented by J AMES M. H EINTZ , Reston , VA; S TANLEY J OSEPH P ANIKOWSKI III

, R OBERT C HEN W ILLIAMS , San Diego, CA.

A NDREW P ETER Z APPIA , LeClairRyan, A Professional Corporation, Rochester, NY

, for appellee USABLENET, Inc. in 2015

- 1792
, - 1793

.

D AVID M. S TEIN , Alston & Bird LLP, Los Angeles, CA

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

. , Hilton International Co. in 2015

- 1792
, - 1793

.

______________________
Before R EYNA , C HEN , and S TOLL , Circuit Judges.

R EYNA , 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. 6,87 1,325 (“’325 patent”), and U.S. Paten t 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 gra p hical user interface, d. a first menu consisting of menu categ ories, 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 for mat,

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 applic ation 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 addi tional description.APPLE , INC

. v. AMERANTH , INC

. 6

e. a modifier menu stored on said data storage device and displayable in a wi ndow of said graphical user interface,

f. a sub

- modifier menu stored on said data storage device and displayable in a wi ndow of said graphical user interface, and g. appli cation software for generating a second menu from said first menu and transmitting said second menu to a wir eless handheld computing device or Web
page, wherein the application software facil itates the generation of the second menu by allowing selection o f cat agories [sic] and items from the first menu, addition of menu categories to the second menu, add ition 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 mod ifier 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 p atent are nearly identical to claim 1 of the ’850 patent. They differ only in that sho rt 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 i s 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 consist s of categor ies such as app e-APPLE , INC

. v. AMERANTH , INC

. 7

tizers and entre es, items such as chicken C aesar 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. a t 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 specification s 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. The y explain that the “unavailability of any simple tec hnique for creating restaurant menus and the like for use in a limited display area wireless handheld device or thatAPPLE , INC

. v. AMERANTH , INC

. 8

is compatible with ordering over the internet ha[d] pr evented widespread adoption of computerization in the hosp itality 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 (“ Agilysy s petitioners”) petitioned for CBM review of the ’325 patent and the ’850 patent. Appellants in the 2015

- 1703 a nd 2015

- 1704 appeal s (“Apple petitioners”) pet itioned for CBM review of the ’733 patent. T he Apple petitioners and Agilysy s petitioners are together referred to as “petition ers.” The Patent Trial and Appeal Board (“Board”) co nstrued the claims

, found that each patent met the statut ory 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 anal ysis for the se claims.

The Board also found that the Apple petitioners had
not met t heir 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 pate nt 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 unpaten table under § 101.APPLE , INC

. v. AMERANTH , INC

. 9

The Director of the United States Patent and Trad emark Office (“P atent 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 juri sdiction under 28 U.S.C. § 1295(a)(4)(A).

DISCUSSION

We r eview 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

. Te va Pharm. USA, Inc. v. Sandoz, Inc. , 135 S. Ct. 831, 841 (2015). If the Board makes subsidiary factual findings about extrinsic ev idence that underlie its construction, we review th ose 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 t hat 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 Cross

Appellant’s Br. 8. During CBM review, the Board construes claims in an unexpired patent according to their broadest reasona ble construction in light of the patent’s specif ication. 37 C.F.R. § 42.300(b); c f. Cuozzo Speed Techs., LLC v. Lee

, 136 S. Ct. 2131

, 2142 ( 2016) (upho ld ing the Patent Office regulation requiring the use of the broadest reasonableAPPLE , INC

. v. AMERANTH , INC

. 10

construction in the anal ogous context of inter partes review).

A. Menu

Before the Board, Ameranth argued that the term “menu” should be construed as “computer data represen ting collections of linked levels of choices or options i ntended 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 incon sistent with language in the claim s expressly recit ing a hierarchical menu.

T he Board was correct to not include in its constru ction 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)

. C onstruing 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 commun ication 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 the se preambles limiting. 4

Ameranth argues that the Board erred when it declined to find the se claim preambles limiting. We agree with the Board that nothing in the patents’ specification s indicates that a synchronous communication sys tem is required to include a central back

- office server that co mmunicates data updates to and from multiple client devices

. A person of ordinary skill in the art would not have understood the broad term “synchronous commun ications systems” to include only such systems

. See Phi llips v. AWH Corp. , 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc)

. The Board was correct in determining that the preamble reci tations 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 specific ations disclose that Windows CE® was a “common GUI operating system” and included “built in synchronization between handheld devices, internet and desktop infr astructure.” ’733 Fin. Dec. at * 16, 18, 20

.APPLE , INC

. v. AMERANTH , INC

. 12

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 compu ter. ” Id. On appeal, Ameranth argues that the Board erred in its construction

. In support, Ame ranth makes two main arguments. First, Ameranth argues that the recited central pr ocessing unit is not a generic central processing unit, but is instead a particular processing unit which, with applic ation software, provides synchronized second menus acr oss 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 constru ction is precluded by claim differentiation, as claim 5 of the ’733 patent expressly recites “microprocessor.” We dis agree. This court has declined to apply the doctrine of claim differentiation where “ the claims are not otherwise identical in scope.” Indacon, Inc. v. Facebook, In c. , 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 c laim 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 recite s “microprocessor” and others recite “central processingAPPLE , INC

. v. AMERANTH , INC

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unit,” this does not necessarily mean that the two terms must have a different meaning.

T he Board was correct in not con struing the term “central processing unit” to refer only to particular pr ocessors 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 computationa l and control unit of a compu ter”)

. See

, e.g. , ’850 Fin. Dec. at *7. T he Board ’s constru ction was consistent with the use of the term “central processing unit” in the specifications. T he pate nt 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. T he Board first found that the patents meet the “financial product or service” component of the definition of CBM patents. See

, e.g. , Agil y sys, 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 th e Board’s decision that the p atents 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 Tech s. , LLC v. Lee , 1 36 S. Ct. 2131 (2 016). We disagree. In V ersata Dev elopmentAPPLE , INC

. v. AMERANTH , INC

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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 fina ncial product or service, except that the term does not include patents for technological inventions .” Leahy

Smith Amer ica 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 techn ological invention solely for purposes of the Trans itional Program for Covered Business Methods (section 42.301(a)), the following will be consi dered on a case

- by

- case basis: whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious o ver the prior art; and solves a technical problem using a tec hnical 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 juris diction 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 perm it the Patent Office to “act outside its stat utory limits.” 136 S. Ct. at 2141.APPLE , INC

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T his court has noted that this regulation offer s little towards understanding the meaning of the term “ techn ological invention.” Versata , 793 F.3d at 1326 . But dete rmining whether the se patents are a technological invention does not require this court to determine “ the full sweep of the term.” Id. at 1327.

T he 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, t he Board found that the claimed inventions did not solve a technical problem using a technical sol ution. Ameranth argued that its patents were solutions for various problems, and the Board determined that n either the solutions n or the problems were technical. For exa mple, Ameranth had argued that the ’850 and ’3 25 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.”).APPLE , INC

. v. AMERANTH , INC

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explained that the claims did not recite a solution to this problem, as the y do not include recitations about how to display or synchronize the menus, but instead include description s about menu generation. Id. Similarly, Ameranth had argued that the ’733 patent was intended to solve a problem in restaurant ordering when custom ers 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” except ion because they recite tech no logica l fea tu re s, inc lu d in g specific software w hi c h was distinctive ov er the prior art , and because the petitioners made no sh o wi ng th at th e se fea ture s w ere kn own o r conven ti onal.

We affirm the Board’s determinations that these are not patents for technological inventions. T he Board’s determinations were supported by substantial evidence and are neither arbitrary nor capricious. We agree with the Board’s determination that these c laims 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 technolog ical feature that is ‘unobvious over the prior art.’”

- 1792 Appellant’s Br. 20 ( quoting 37 C.F.R. § 42.301) ;

- 1703 C ross

- Appellant’s Br. 29 (same).

We need not address this argument regarding whet her 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 prob lem using a technical solution

.APPLE , INC

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III. Section 101 Determinations

A. Claims the Board Found Unpatentable The Board found certain claims unpatentable under § 101. Ameranth appeals the se 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 the y are , we then “consider the elements of each claim both ind ividually 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 ’85 0 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 un der § 101 together

. This is consistent with the Board’s § 101 analysis, which is quite similar for all three p atents. Ameranth raised only a few arguments that apply to a subset of claims or patents, and those are addressed separately.APPLE , INC

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and its final decisions. In the institution decisions, the Board described the patent claims as directed to genera ting a men u on a computer. ’325 Inst. Dec. at *14; ’850 Inst. Dec. at *14; ’733 Inst. Dec. at *9. In the final dec isions, the Board added to this description, finding the patent claims are d irected to the abstract idea of genera ting 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 diffe rent 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, tak ing orders from resta urant customers on a computer. The Board’s slight revision of its abstract idea anal ysis does not impact the patentability analysis. The S upreme Court has recognized that “all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural p henomena, 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

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We affirm the Board’s conclusion th at the claims in these patents are directed to an abstract idea. The p atents claim systems including menus with particular features. They do not claim a particular way of pr ogramming or designing the software to create menus that have these features, but instead merely claim the resul ting systems. Id. Essentially, the claim s are directed to certain functionality

— here, the ability to generate menus with certain features. Alternatively, t he 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 opera ting system components were “typical” hardware elements. ’85 0 Fin. Dec. at *12; ’325 Fin. Dec. at *18; ’733 Fin. Dec. at *13. It found aspects of the recited menus were d escribed 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 sta ting 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

c onsidered separately.” ’850 Fin. Dec. at *13; ’325 Fin. Dec. at *20; ’733 Fin. Dec. at *14.

W ith regard to step two, Ameranth argues broadly that none of the claims are directed to something conve ntional or routine. In addition, Ameranth identifies certa in aspects of certain claims that it argues make th ose 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, afterAPPLE , INC

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

– 10. The Board explained that manual modific ation 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 hospit ality industry. ’733 Fin. Dec. at *14.
Second, Ameranth points to the synchronization lim itation 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 t he 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 dow nloading could satisfy the synch ronization limitation, and that the ’733 patent’s specification disclosed that the Windows C E® operating system included “built in sy nchronization between handheld devices, internet and desktop infrastructure.” ’733 Fin. Dec. at *16 (quoting ’733 patent c ol. 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 us er 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 prede termined type of ordering.” ’325 patent col. 15 ll. 23

– 24. Claims 2 throughAPPLE , INC

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

- based customer ordering.” Claim 3 recites “wher ein 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 limit ations are insignificant post

- solution activit ies 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 po stsolution activity.”) (quo ting Bilski v. Kappos , 561 U.S. 593, 610

– 11 (2010) (quot ation marks omitted )).

The preferred embodiment of the claimed invention described in the specification s 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 pr ogrammed to allow menu items to be selected as a custo mer places an order . As noted above, the specification s describe the hardware elements of the invention as “typ ical” and the software programming needed as “commonly known.” The invention merely claims the addition of conventional computer components to well

- known bus iness practices

. Finally, Ameranth argued in its briefing and at oral argument that program ming the software to perform various parts of the claimed systems’ functionality was difficult, and that this difficulty indicate s that the claim s

w ere 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. T he degree of difficulty in implementingAPPLE , INC

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an abstract idea in this circumstance does not itself render an abstract idea patentable.

W e 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 conve ntional 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 co nventional 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).

W e 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 u npatentable under § 101.

B. Cl aims the Board Found Patentable The Board found certain dependent claims were not unpatentable. The Apple petitioners appeal th ese determina tion s. We address first the dependent claims that involve linking orders to specific customers, and then those that involve handwriting and voice capture techno logies.

i. Linked O rders The Apple petitioners appeal the Board’s determin ation that dependent clai ms 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 recitesAPPLE , INC

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“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 cap ability 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 Respo nse 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 rende red 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] insuffici ent 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 ar gue 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 itAPPLE , INC

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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 argument s are further belied by the ’733 patent’s specification. In addition to expressly reciting that the hardware needed was typical and that the pr ogramming steps were commonly known, t he specification merely states that the user interface c ould permit linking of orders with customers , with no disclosure of how this would be technologically implemented : [H] and

- held devices can link the above innov ations to individua l customers at specific tables through a graphical user interface on the hand

held 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 diffe rent order, [sic] By enabling th e linkage of the o rders 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 discl osure , 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 a ccomplished” is not directed to patent

- eligible subject
matter. Inte rnet 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 achi eving that result. McRO, Inc.

, 837 F.3d at 1314

.APPLE , INC

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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 :3 5– 24:06 , http://www.cafc.uscourts.gov/oral

- argument

recordings . 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 ma nual 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 activit y. We reverse the Board’s finding confirming the patentabi lity of these claims

. ii. H andwri ting and Voice C apture 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 me nu 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 uphel d by the Board specify that the manual modification involves handwri ting or voice capture . For example, c laim 6 recites “wher ein the manual modification involves hand writing

ca p ture.” The other claims depend from th e se claims andAPPLE , INC

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require that the captured inputs be recognized and co nverted to text. For example, c laim 7 depends from claim 6 and recites “ wherein the handwriting capture involves handwriting recognition and conversion to text. ”

T he Apple petitioners argued before the Board that

“ manual mod ification 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.

T he 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 c onventional at the time of the ’733 patent or require merely a general purpose computer.” Id

. On appeal, t he Apple petitioners argue that the se li mitations recite insignificant post

- solution activity

. We agree that these limitations do not serve to provi de an inventive concept.

The ’733 patent refers to the use of handwriting and voice capture technologies without provid ing how these elements were to be technologically implemented. Col. 3 l. 48

– col. 4. l. 9; col. 4 l l

. 18

– 22; id. at ll. 27

– 37

. A t 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 –5 2. 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 copyAPPLE , INC

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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 di scussed abo ve. Appending th ese preexisting tech nologies
onto those independent claims does not make them p atentable. We reverse the Board’s finding confirming the patentability of these claims.

C ONCLUSION For the reasons explained above, we affirm the Board’s decis ions finding cert ain claims unpatentable under § 101, and we reverse the Board’s decisions co nfirming the patentability of certain claims under § 101. C laims 1

– 11 of the ’850 patent, claims 1

– 10 of the ’325 patent, and claims 1

– 16 of the ’733 patent are a ll u npatentable under § 101.

AFFIRMED IN PART AND REVERSED IN PART

C OSTS
No Costs.