Case 1:20-cv-00518-LPS Document 20-1 Filed 09/18/20 Page 1 of 3 PageID #: 365
`Case 1:20-cv-00518—LPS Document 20-1 Filed 09/18/20 Page 1 of 3 PageID #: 365
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`EXHIBIT A
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`EXHIBIT A
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`Case 1:20-cv-00518-LPS Document 20-1 Filed 09/18/20 Page 2 of 3 PageID #: 366
`M O R R I S , N I C H O L S , A R S H T & T U N N E L L L L P
`1201 NORTH MARKET STREET
`P.O. BOX 1347
`WILMINGTON, DELAWARE 19899-1347
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`The Honorable Leonard P. Stark
`J. Caleb Boggs Federal Building
`844 N. King Street
`Wilmington, Delaware 19801
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`(302) 658-9200
`(302) 658-3989 FAX
`September 18, 2020
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`Re: Ameranth, Inc. v. Olo Inc., C.A. No. 20-518-LPS
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`Dear Chief Judge Stark:
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`Defendant Olo Inc. (“Olo”) respectfully submits this supplemental letter brief in advance
`of the September 30, 2020 Hearing on Olo’s Motion To Dismiss (D.I. 8). Plaintiff Ameranth, Inc.
`(“Ameranth”) newly asserts in its September 16, 2020 pre-hearing letter that Olo infringes
`dependent claims 4, 9, and 10 of asserted U.S. Patent No. 9,747,651, which claims were not
`asserted in Ameranth’s Complaint. (D.I. 19 at 3.) Those claims depend from claim 1 which is
`addressed in Olo’s motion. Those dependent claims are equally ineligible under § 101 for the
`reasons explained below. Because Ameranth now asserts that Olo infringes those claims and plans
`to amend its complaint to assert them, the Court properly has jurisdiction to hold those claims
`invalid.1 Ameranth continues to have a full and fair opportunity to raise any arguments regarding
`these claims prior to and during the hearing scheduled for September 30, 2020.
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`As discussed in Olo’s motion briefing, claim 1 of the ’651 patent recites a system for
`communicating hospitality-related information using a system that is capable of synchronous
`communications and messaging. (D.I. 9 at 8-10.) The focus of the claimed invention is not a
`“specific means or method that improves the relevant technology” but merely a “result or effect
`that itself is the abstract idea and merely invokes generic processes and machinery.” Apple, Inc.
`v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016). Nothing in the claim recites
`transformative elements significantly more than the abstract idea. (D.I. 9 at 13-15.)
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`Dependent claims 4, 9, and 10 merely recite high-level, desired functional capabilities for
`the communication system of claim 1, not any concrete inventive technological improvement to
`any underlying technology. (’651 claims 4 (“wherein the system further includes functionality for
`two or more communications conversions one of which includes automated text messaging
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`1 “An actual suit affirmatively asserting the claims is not a requirement for an Article III
`case or controversy.” Ameranth, Inc. v. Domino’s Pizza, LLC, 792 Fed.Appx. 780, 784 (Fed. Cir.
`Nov. 1, 2019) (citing Cardinal Chem. Co. v. Morton Int’l, Inc., 508 U.S. 83, 95 (1993)). Indeed,
`“even a ‘reasonable apprehension of suit’ is not a requirement for Article III jurisdiction,” though
`a reasonable apprehension of imminent suit certainly may be “a factor that can satisfy Article III
`controversy.” Domino’s Pizza, 792 Fed.Appx. at 784 (citations omitted).
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`Case 1:20-cv-00518-LPS Document 20-1 Filed 09/18/20 Page 3 of 3 PageID #: 367
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`The Honorable Leonard P. Stark
`September 18, 2020
`Page 2
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`conversions”), 9 (“wherein a mobile application operating on a wireless handheld computing
`device is used to interface with the back office hospitality software application”), 10 (“wherein a
`frequent customer mobile application operating on a wireless handheld computing device is used
`to interface with the back office hospitality software application”).) In claim 4, the desired results
`of “communications conversions” including “automated text messaging conversions” are just
`that—desired results for communicating using the claimed system, not a concrete improvement to
`technology. Claims 9 and 10 merely recite open-ended functional results that mobile applications
`are somehow, in some unspecified way, “used to interface” with a back office application.
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`The ’651 patent does not purport to invent any new programming for mobile applications
`or otherwise. (D.I. 9 at 7-8.) Instead, it states that “[t]he software applications for performing the
`functions falling within the described invention can be written in any commonly used computer
`language” and “[t]he discrete programming steps are commonly known and thus programming
`details are not necessary to a full description of the invention.” (’651, col. 6:63-7:18, 13:12-17.)
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`As such, claims 4, 9, and 10—reciting only desired results to be achieved, somehow, with
`“commonly known” conventional software programming—are ineligible for the same reasons as
`the other challenged claims. They fail to provide “the specificity required to transform [the] claim
`from one claiming only a result to one claiming a way of achieving it.” Am. Axle & Mfg., Inc. v.
`Neapco Holdings LLC, No. 18-1763, at 16-17 (Fed. Cir. 2020) (citation omitted).
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`Finally, in view of the claim language and the specification’s admissions, any amendment
`to Ameranth’s Complaint would be futile as no amendment could confer patent-eligibility on these
`claims where none exists. Search and Social Media Partners v. Facebook, Inc., C.A. No. 17-
`1120-LPS-CJB, 2019 WL 581616, at *6 (D. Del. Feb. 23, 2019) (granting motion to dismiss under
`§ 101 where “any amendment would be futile”); 3G Licensing, S.A. v. HTC Corp., C.A. No. 17-
`83-LPS, 2019 WL 2904670, at *4 (D. Del. July 5, 2019) (same).
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`Respectfully,
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`/s/ Karen Jacobs
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`Karen Jacobs (#2881)
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`cc:
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`All Counsel of Record (by e-mail)
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