November 11, 2019

Fed. Cir. Examines Expert Declarations and Unasserted Claims in Recent § 101 Decision

Holland & Knight Section 101 Blog
Anthony J. Fuga
Earlier this month, the Federal Circuit ruled on an interesting case that discussed (1) when a case or controversy exists as to unasserted patent claims, and (2) the extent expert declarations affect a patent eligibility determination.

Whether There is a Case or Controversy

Ameranth filed suit against Domino’s, including allegations that Domino’s infringed "at least" a long list of claims from the asserted patent. Domino’s filed counterclaims seeking declaratory judgment that the claims were unpatentable under § 101. The court ordered Ameranth to select no more than five claims to assert. Ameranth accordingly amended its disclosure of asserted claims and asserted only five claims. Ameranth later amended its disclosure again and asserted a different combination of five patent claims with some overlap from the earlier disclosures.

The district court found that Ameranth’s claims – including those beyond the five being asserted in its latest disclosure – were directed to unpatentable subject matter. Ameranth argued to the Federal Circuit the district court went beyond its jurisdiction because Ameranth asserted only claims 1, 6, 9, 13, and 17 in its final disclosure, so any decision beyond those five patent claims should be vacated because there was no declaratory judgment jurisdiction.

The Federal Circuit mostly disagreed. "The fact that Ameranth did not include certain claims which it originally accused of infringement in the amended disclosure does not mean that a case or controversy with respect to those claims disappeared. An actual suit affirmatively asserting the claims is not a requirement for an Article III case or controversy . . . Eliminating certain claims from the amended disclosure of asserted claims did not eliminate the case or controversy with respect to those claims." Accordingly, a case or controversy existed with respect to the claims that had been asserted in Ameranth’s disclosures.

There were, however, two claims that the district court invalidated that were never included in Ameranth’s disclosures. Domino’s conceded during oral argument that there was no case or controversy with respect to those claims, and the Federal Circuit held that the district court did not have jurisdiction to determine patent eligibility of those two claims.

Patent Eligibility and the Limitations of Expert Declarations

The Federal Circuit also addressed whether the claims were directed to unpatentable subject matter under § 101. At step one of the Alice inquiry, the Federal Circuit generally agreed with the district court that the claims were directed to "configuring and transmitting hospitality menu related information that is capable of synchronous communications and automatic formatting." This was confirmed when Ameranth argued that automatically configuring and synchronizing menus for multiple handheld devices was not previously possible. This concept – synchronous communications with automatic formatting for different devices – without more is an abstract idea.

At step two, the Federal Circuit looked more closely at the asserted claims and found that the limitations are routine and conventional. For instance, Claims 1, 9, and 13 do not contain specifics of a particular conception of how to carry out the concept but, instead, “were drafted in such a result-oriented way that they amounted to encompassing the principle in the abstract idea no matter how implemented.”

Similarly, the other claims recite a smartphone, payment processing, creating layout views or fonts in conformity with display screens, linked databases, and automatic importation of information from a database. Again, the Federal Circuit determined that these were all routine and conventional limitations.

Ameranth contended that the district court ignored its expert declarations regarding the inventiveness of the patent claims. But the Federal Circuit, even after reviewing the evidence in the light most favorable to Ameranth, found that the declarations did not create a genuine dispute of material fact that would preclude summary judgment.

The Federal Circuit determined that the declarations to a large extent were directed to unclaimed features. For instance, one expert declaration focused on "maintaining screen linkages," but such a feature was not recited in the claims. Other declarations were directed to how the invention was "innovative and groundbreaking in 1999-2000."

The Federal Circuit was unpersuaded. "These declarations do little to relate the claimed features to the asserted praise. In any event, groundbreaking, innovative, or even brilliant discovery does not itself satisfy the § 101 inquiry."

For these reasons, the Federal Circuit affirmed the district court’s grant of summary judgment of patent ineligibility for all claims other than the two claims for which the district court did not have jurisdiction.

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