101 invalidity found in Apple v. Ameranth case involving review PTAB decision on "covered business methods"
In this case, the CAFC was reviewing a PTAB decision on
covered business methods:
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
From the 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.
The CAFC accepted Apple's " insignificant post-solution activity "
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
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
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.