1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 Case No.: 11cv1810 DMS (WVG)

IN RE: AMERANTH PATENT

12 LITIGATION CASES,

ORDER GRANTING CLAIM 4/5

13 DEFENDANTS’ MOTION FOR

SUMMARY JUDGMENT OF

14

UNPATENTABILITY OF CLAIMS 4

15 AND 5 16 17 In a December 27, 2021 Order, this Court set a briefing schedule on the viability of 18 Ameranth’s claims that certain Defendants were infringing claims 4 and 5 of the ‘077 19 Patent. Defendants against whom such claims are pending (“the Claim 4/5 Defendants”) 20 filed a motion for summary judgment of unpatentability of claims 4 and 5, Ameranth filed 21 an opposition, and the Claim 4/5 Defendants filed a reply. Ameranth thereafter filed a 22 Supplemental Notice of Lodgment of excerpts of the Markman hearing transcript, to which 23 the Claim 4/5 Defendants filed a response, and to which Ameranth then filed an Objection. 24 The Court has reviewed all of the briefing, and now grants the Claim 4/5 Defendants’ 25 motion for the reasons set out below. 26 27 1 In Ameranth, Inc. v. Domino’s Pizza, LLC, 782 Fed. App’x 780 (Fed. Cir. Nov. 1, 2 2019), the Federal Circuit affirmed this Court’s decision that claim 1 of the ‘077 Patent 3 was patent ineligible. Applying the two-step approach set out in Alice Corp. v. CLS Bank 4 International, 573 U.S. 208 (2014), the court found at step one that claim 1 was directed 5 to an abstract idea, namely, “the concept of synchronous communications and automatic 6 formatting for different handheld devices[.]” Ameranth, 792 F. App'x 780 at 787. At step 7 two, the court found claim 1 failed to disclose an inventive concept. 8 For context, claim 1 recites the following: 9 An information management and real time synchronous communications system for configuring and transmitting hospitality menus comprising: 10

11 a. a central processing unit,

12 b. a data storage device connected to said central processing unit, 13 c. an operating system including a first graphical user interface, 14

15 d. a master menu including at least menu categories, menu items and modifiers, wherein said master menu is capable of being 16 stored on said data storage device pursuant to a master menu file 17 structure and said master menu is capable of being configured for display to facilitate user operations in at least one window of said 18 first graphical user interface as cascaded sets of linked graphical 19 user interface screens, and

20 e. menu configuration software enabled to generate a programmed 21 handheld menu configuration from said master menu for wireless transmission to and programmed for display on a wireless 22 handheld computing device, said programmed handheld menu 23 configuration comprising at least menu categories, menu items and modifiers and wherein the menu configuration software is 24 enabled to generate said programmed handheld menu 25 configuration by utilizing parameters from the master menu file structure defining at least the menu categories, menu items and 26 modifiers of the master menu such that at least the menu 27 1 categories, menu items and modifiers comprising the programmed handheld menu configuration are synchronized in 2 real time with analogous information comprising the master 3 menu,

4 wherein the menu configuration software is further enabled to generate the 5 programmed handheld menu configuration in conformity with a customized display layout unique to the wireless handheld computing device to facilitate 6 user operations with and display of the programmed handheld menu 7 configuration on the display screen of a handheld graphical user interface integral with the wireless handheld computing device, wherein said 8 customized display layout is compatible with the displayable size of the 9 handheld graphical user interface wherein the programmed handheld menu configuration is configured by the menu configuration software for display as 10 programmed cascaded sets of linked graphical user interface screens 11 appropriate for the customized display layout of the wireless handheld computing device, wherein said programmed cascaded linked graphical user 12 interface screens for display of the handheld menu configuration are 13 configured differently from the cascaded sets of linked graphical user interface screens for display of the master menu on said first graphical user 14 interface, and 15 wherein the system is enabled for real time synchronous communications to 16 and from the wireless handheld computing device utilizing the programmed 17 handheld menu configuration including the capability of real time synchronous transmission of the programmed handheld menu configuration 18 to the wireless handheld computing device and real time synchronous 19 transmissions of selections made from the handheld menu configuration on the wireless handheld computing device, and 20

21 wherein the system is further enabled to automatically format the programmed handheld menu configuration for display as cascaded sets of linked graphical 22 user interface screens appropriate for a customized display layout of at least 23 two different wireless handheld computing device display sizes in the same connected system, and 24

25 wherein a cascaded set of linked graphical user interface screens for a wireless handheld computing device in the system includes a different number of user 26 27 1 interface screens from at least one other wireless handheld computing device in the system. 2 3 ‘077 Patent at 15:56-16:61. The claims at issue here, claims 4 and 5, depend from claim 4 1, and read as follows: 5 4. The information management and real time synchronous communication system in accordance with claim 1, wherein the said Hospitality Applications 6 include at least reservation applications. 7 5. The information management and real time synchronous communication 8 system in accordance with claim 1, wherein the said Hospitality Applications 9 include at least a Ticketing applications. 10 Id. at 17:8-15. 11 In the present motion, the Claim 4/5 Defendants move for summary judgment that 12 claims 4 and 5 are patent ineligible for the same reasons as claim 1, namely that they are 13 directed to the same abstract idea as claim 1, and also fail to disclose an inventive concept. 14 Ameranth does not appear to dispute that claims 4 and 5 are directed to the same abstract 15 idea as claim 1, and that the first step of the Alice test is therefore satisfied as to claims 4 16 and 5. 17 The dispute here centers on Alice step two, and whether claims 4 and 5 disclose an 18 inventive concept that renders the claims patent eligible. The Claim 4/5 Defendants argue 19 claims 4 and 5 are field of use restrictions, which do not confer patentability. Ameranth 20 disagrees, and asserts the limitations contained in claims 4 and 5 are substantive, and 21 therefore supply an inventive concept that renders the claims patent eligible. 22 The Court agrees with the Claim 4/5 Defendants. According to the plain language 23 of the claims, the only additional limitation set out in claim 4 is that the “Hospitality 24 Applications include at least reservation applications[,]” and the only additional limitation 25 set out in claim 5 is that the “Hospitality Applications include at least a Ticketing 26 applications.” By their plain terms, these claims simply restrict the invention described in 27 1 claim 1 to the fields of reservations and ticketing, respectively. As such, they do not 2 disclose an inventive concept, and thus do not make the claims patent eligible. See Bilski 3 v. Kappos, 561 U.S. 593, 610–11 (2010) (quoting Diamond v. Diehr, 450 U.S. 175, 191- 4 92 (1981)) (reiterating “the proposition that the prohibition against patenting abstract ideas 5 ‘cannot be circumvented by attempting to limit the use of the formula to a particular 6 technological environment’ or adding ‘insignificant postsolution activity.’”); Affinity Labs 7 of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016) (“The Supreme 8 Court and this court have repeatedly made clear that merely limiting the field of use of the 9 abstract idea to a particular existing technological environment does not render the claims 10 any less abstract.”); Intell. Ventures I LLC v. Cap. One Bank (USA), 792 F.3d 1363, 1366 11 (Fed. Cir. 2015) (“An abstract idea does not become nonabstract by limiting the invention 12 to a particular field of use or technological environment ….”) 13 Ameranth raises a number of arguments in an effort to avoid this conclusion, but 14 none is persuasive. First, Ameranth argues that reservation and ticketing applications are 15 different from the food ordering applications the Court considered when analyzing claim 16 1. Specifically, Ameranth asserts that unlike food ordering applications in which 17 “theoretically every customer can place exactly the same food order[,]” every customer in 18 a reservations or ticketing application must place a unique order for a particular table, room, 19 or seat. Ameranth contends this distinction “presents particular technological 20 ‘equilibrium’ challenges when the reservation and ticket purchases can be processed 21 remotely by customers using different handheld devices.” (Opp’n to Mot. at 4-5.) 22 However, Ameranth’s proposed distinction between food ordering and reservations and 23 ticketing is one without a difference. Clearly, each meal placed through a food ordering 24 application is unique in the same way that each table, room, or seat is unique. No customer 25 is receiving the same food, or reserving the same table, room, or seat. Ameranth’s proposed 26 27 1 distinction is illusory, and thus there is no additional problem or “challenge” for claims 4 2 and 5 to solve. 3 Second, Ameranth suggests the reservation and ticketing limitations in claims 4 and 4 5 are separate software limitations, and therefore substantive limitations as opposed to field 5 of use restrictions. However, Ameranth fails to cite to any portion of the ‘077 Patent to 6 support this suggestion. On the contrary, the specification describes reservation and 7 ticketing applications as simply a subspecies of “hospitality applications.” ‘077 Patent at 8 5:16-19 (“The communication module also provides a single point of entry for all 9 hospitality applications, e.g., reservations, frequent customer ticketing, wait lists, etc. to 10 communicate with one another wirelessly and over the Web.”) 11 Third, Ameranth attempts to paint claims 4 and 5 as disclosing elements not found 12 in claim 1, namely “reflective technology,” “equilibrium,” and a “single point of entry” 13 system. However, as the Claim 4/5 Defendants point out, Ameranth’s arguments ignore 14 the dependent nature of claims 4 and 5, and the axiom “that a dependent claim cannot be 15 broader than the claim from which it depends.” Alcon Research, Ltd. v. Apotex Inc., 687 16 F.3d 1362, 1367 (Fed. Cir. 2012). Ameranth’s arguments also ignore Ameranth’s previous 17 descriptions of the invention described in the ‘077 Patent as a unitary concept with 18 application to a wide variety of industries. (See Transcript of Markman Hearing at 11-12, 19 ECF No. 906) (counsel stating “although the inventive idea arose first in the context of 20 restaurant menus and food ordering, it has application to a wide variety of hospitality 21 industry uses, including restaurant reservations, event ticketing, hotel reservations, et 22 cetera.”) Furthermore, and perhaps most importantly, none of these elements is mentioned 23 in either claim 4 or claim 5, which is contrary to Alice’s teaching that “[t]o save a patent at 24 step two, an inventive concept must be evident in the claims.” RecogniCorp, LLC v. 25 26 27 1 || Nintendo Co., Ltd., 855 F.3d 1322, 1327 (Fed. Cir. 2017).! Finding these elements absent 2 ||from claims 4 and 5, there is no inventive concept in the claims sufficient to render them 3 || patent eligible at Alice step two. 4 For all of these reasons, the Court finds claims 4 and 5 are patent ineligible. 5 || Accordingly, the Claim 4/5 Defendants are entitled to summary judgment that claims 4 and 6 ||5 are unpatentable. The parties shall meet and confer on proposed judgments in each 7 |{individual case, and submit either an agreed-upon proposed judgment or competing 8 || proposed judgments on or before March 25, 2022. 9 IT IS SO ORDERED. 10 || Dated: March 14, 2022 » gf, p 11 a Yn: Hon. Dana M. Sabraw, Chief Judge United States District Court 13 14 15 16 17 18 19 20 21 22 |} 23 ' The opinion of Ameranth’s expert, Ricardo Valerdi, suffers from this same flaw, i.e., it is 24 || not based on the language of the claims. Dr. Valerdi’s opinion therefore fails to create a 25 || genuine issue of material fact sufficient to defeat summary judgment at step two of the Alice analysis. Kaavo Inc. v. Amazon.com Inc., 323 F.Supp.3d 630, 643-44 (D. Del. 2018) 26 (“Plaintiff's reliance on contrary expert opinion alone is insufficient to create a genuine 97 ||issue of material fact.’’) 28 11cv1810 DMS (WVG)