Case 1:20-cv-00518-GBW Document 38 Filed 07/11/22 Page 1 of 26 PageID #: 801
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`AMERANTH, INC.,
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`Plaintiff,
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`C.A. No. 20-518 (LPS)
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`v.
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`OLO INC.,
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`DEFENDANT’S OPENING BRIEF IN SUPPORT OF ITS
`MOTION FOR RECOVERY OF ATTORNEYS’ FEES UNDER 35 U.S.C. § 285
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`
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`Defendant.
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`MORRIS, NICHOLS, ARSHT & TUNNELL LLP
`Jack B. Blumenfeld (#1014)
`Karen Jacobs (#2881)
`Cameron P. Clark (#6647)
`1201 North Market Street
`P.O. Box 1347
`Wilmington, DE 19899
`(302) 658-9200
`jblumenfeld@morrisnichols.com
`kjacobs@morrisnichols.com
`cclark@morrisnichols.com
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`Attorneys for Defendant
`Olo Inc.
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`OF COUNSEL:
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`Heidi L. Keefe
`Lowell D. Mead
`COOLEY LLP
`3175 Hanover Street
`Palo Alto, CA 94304-1130
`(650) 843 5000
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`July 11, 2022
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`

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`Case 1:20-cv-00518-GBW Document 38 Filed 07/11/22 Page 2 of 26 PageID #: 802
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`
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`I.
`II.
`III.
`IV.
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`A.
`B.
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`C.
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`TABLE OF CONTENTS
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`Page
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`The California Court Found an Exceptional Case Under § 285 on a
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`The ’651 Patent Is Substantially Similar to Ameranth’s Invalid Related
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`1.
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`2.
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`The ’651 patent specification is equally devoid of technological
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`The asserted ’651 claims are equally devoid of technological
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`INTRODUCTION ............................................................................................................. 1
`NATURE AND STAGE OF THE PROCEEDINGS ........................................................ 2
`SUMMARY OF THE ARGUMENT ................................................................................ 2
`STATEMENT OF FACTS ................................................................................................ 3
`The Federal Circuit Held Invalid Four Related Patents Under § 101 .................... 3
`Related Patent Based In Part on Weakness Under § 101. ...................................... 5
`Patents. ................................................................................................................... 6
`invention as the invalid related patents. ..................................................... 6
`invention as the invalid related patent claims. ........................................... 8
`the Same Grounds as the Four Related Patents. .................................................... 9
`Domino’s Pizza. ......................................................................................... 9
`judgment. ................................................................................................. 12
`The Supreme Court denied Ameranth’s certiorari petition. ..................... 12
`LEGAL STANDARD ...................................................................................................... 13
`ARGUMENT ................................................................................................................... 14
`and Ameranth Refused to Drop This Case. ........................................................... 14
`Patentees From Pursuing Meritless Litigation. .................................................... 17
`The Court Should Award Olo Its Attorneys’ Fees For The Entire Case. ............ 19
`VII. CONCLUSION ................................................................................................................ 20
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`D.
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`This Court and the Federal Circuit Held Invalid the Related ’651 Patent on
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`This Court held invalid the ’651 patent based on Apple and
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`This Federal Circuit summarily affirmed this Court’s invalidity
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`1.
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`2.
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`3.
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`V.
`VI.
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`A.
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`B.
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`C.
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`The Substantive Strength of Ameranth’s Position was Exceptionally Weak
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`The Court Should Award Fees To Deter Ameranth And Similarly-Situated
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`i
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`Case 1:20-cv-00518-GBW Document 38 Filed 07/11/22 Page 3 of 26 PageID #: 803
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`
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`Cases
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`TABLE OF AUTHORITIES
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`Page(s)
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`Aatrix Software, Inc. v. Green Shades Software, Inc.,
`890 F.3d 1354 (Fed. Cir. 2018)..........................................................................................10, 16
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`Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
`573 U.S. 208 (2014) ......................................................................................................... passim
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`Ameranth, Inc. v. Domino’s Pizza, Inc.,
`No. 12-cv-0733 DMS (WVG), 2021 WL 2550057 (S.D. Cal. June 21, 2021) .........................6
`
`Ameranth, Inc. v. Domino’s Pizza, Inc.,
`No. 12-cv-0733 DMS (WVG), 2021 WL 409725 (S.D. Cal. Feb. 5, 2021) ..............2, 5, 14, 18
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`Ameranth, Inc. v. Domino’s Pizza, LLC,
`141 S. Ct. 249 (2020) .................................................................................................................5
`
`Ameranth, Inc. v. Domino’s Pizza, LLC,
`792 F. App’x 780 (Fed. Cir. 2019) .................................................................................. passim
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`Ameranth, Inc. v. Menusoft Sys. Corp.,
`2:07-cv-00271, Dkt. No. 263 (E.D. Tex. Sept. 20, 2010) ..........................................................3
`
`Ameranth, Inc. v. Olo Inc.,
`Case No. 21-1228 (U.S. Mar. 7, 2022) ....................................................................................12
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`Ameranth, Inc. v. Olo Inc.,
`No. 2021-1211, 2021 WL 4699180 (Fed. Cir. Oct. 8, 2021)...................................................12
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`Ameranth, Inc. v. Olo Inc.,
`No. 21-1228, 2022 WL 2111376 (U.S. June 13, 2022) .......................................................2, 13
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`Ameranth, Inc. v. Pizza Hut, Inc.,
`No. 3:11-cv-1810-DMS-WVG, Dkt. No. 1395 (S.D. Cal. Sept. 25, 2018) ...............................4
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`American Axle & Manufacturing, Inc. v. Neapco Holdings LLC,
`Case No. 20-891 (U.S. Dec. 28, 2020) ..............................................................................12, 13
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`Apple, Inc. v. Ameranth, Inc.,
`842 F.3d 1229 (Fed. Cir. 2016)........................................................................................ passim
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`Customedia Techs., LLC v. Dish Network Corp.,
`951 F.3d 1359 (Fed. Cir. 2020)................................................................................................15
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`ii
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`Case 1:20-cv-00518-GBW Document 38 Filed 07/11/22 Page 4 of 26 PageID #: 804
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`TABLE OF AUTHORITIES
`(continued)
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`Elec. Commc’n Techs., LLC v. ShoppersChoice.com, LLC,
`958 F.3d 1178 (Fed. Cir. 2020)................................................................................................17
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`Page(s)
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`Elec. Commc’n Techs., LLC v. ShoppersChoice.com, LLC,
`963 F.3d 1371 (Fed. Cir. 2020)................................................................................................16
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`Elec. Commc’n Techs., LLC v. ShoppersChoice.com, LLC,
`No. 16-cv-81677-MARRA, 2020 WL 9440337 (S.D. Fla. Oct. 30, 2020) .............................16
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`Finnavations LLC v. Payoneer, Inc.,
`C.A. No. 1:18-cv-00444-RGA, 2019 WL 1236358 (D. Del. Mar. 18, 2019)..............11, 17, 20
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`Innovation Scis., LLC v. Amazon.com, Inc.,
`842 F. App’x 555 (Fed. Cir. 2021) ..........................................................................................14
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`Inventor Holdings, LLC v. Bed Bath & Beyond, Inc.,
`876 F.3d 1372 (Fed. Cir. 2017)........................................................................................ passim
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`Kindred Studio Illustration & Design, LLC v. Elec. Commc’n Tech., LLC,
`No. 2:18-CV-07661 (GJS), 2019 WL 3064112 (C.D. Cal. May 23, 2019) .............................16
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`Mathis v. Spears,
`857 F.2d 749 (Fed. Cir. 1988)..................................................................................................19
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`Octane Fitness, LLC v. ICON Health & Fitness, Inc.,
`572 U.S. 545 (2014) ...........................................................................................................13, 14
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`Sensonics, Inc. v. Aerosonic Corp.,
`81 F.3d 1566 (Fed. Cir. 1996)..................................................................................................19
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`Therasense, Inc. v. Becton, Dickinson & Co.,
`745 F.3d 513 (Fed. Cir. 2014)..................................................................................................19
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`Statutes
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`28 U.S.C. § 1961 ............................................................................................................................19
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`35 U.S.C.
`§ 101................................................................................................................................. passim
`§ 285................................................................................................................................. passim
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`iii
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`Case 1:20-cv-00518-GBW Document 38 Filed 07/11/22 Page 5 of 26 PageID #: 805
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`Other Authorities
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`TABLE OF AUTHORITIES
`(continued)
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`Page(s)
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`Federal Rules of Civil Procedure Rule
`12(b)(6) ..................................................................................................................................2, 9
`54(d)(2)(C) ...............................................................................................................................19
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`iv
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`Case 1:20-cv-00518-GBW Document 38 Filed 07/11/22 Page 6 of 26 PageID #: 806
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`I.
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`INTRODUCTION
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`This meritless patent case never should have been filed. An award of attorneys’ fees to Olo
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`Inc. (“Olo”) for this “exceptional case” under 35 U.S.C. § 285 is justified to serve the dual purposes
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`of compensation and deterrence.
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`The patent asserted by Ameranth, Inc. (“Ameranth”), U.S. Patent No. 9,747,651 (“the ’651
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`patent”), was clearly invalid under 35 U.S.C. § 101 and the Supreme Court’s landmark decision in
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`Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014). This case arguably would have been
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`exceptional based on the weakness of the ’651 patent by itself. But the case is rendered clearly
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`exceptional by Ameranth’s litigation history. Before Ameranth brought this suit, the Federal
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`Circuit had already held invalid four related Ameranth patents with specifications and claim
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`language that substantially overlap with the ’651 patent. Apple, Inc. v. Ameranth, Inc., 842 F.3d
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`1229 (Fed. Cir. 2016) (“Apple”); Ameranth, Inc. v. Domino’s Pizza, LLC, 792 F. App’x 780 (Fed.
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`Cir. 2019) (“Domino’s Pizza”). The Federal Circuit’s reasoning that invalidated those similar
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`claims also doomed the ’651 patent. The patents are all directed to nothing more exotic than the
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`idea of using a wireless system to communicate and synchronize food orders instead of using
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`traditional pen-and-paper. As the Federal Circuit twice explained, the patents claim only high-
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`level desired functional results and proclaim that their ideas use only “typical” hardware
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`components and “commonly known” software programming steps rather than providing any
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`inventive new patent-eligible technology. Apple, 842 F.3d at 1241-43; see also Domino’s Pizza,
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`792 F. App’x at 786-88.
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`As expected, the Court in this case applied the same reasoning to hold invalid the asserted
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`claims of the ’651 patent. D.I. 29 at 12-17. On appeal, not surprisingly, the Federal Circuit
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`summarily affirmed. At each stage, Olo implored Ameranth to drop this case and warned that Olo
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`Case 1:20-cv-00518-GBW Document 38 Filed 07/11/22 Page 7 of 26 PageID #: 807
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`would seek fees under § 285, but to no avail. Ameranth even filed a frivolous petition for certiorari
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`at the Supreme Court, which was promptly denied.
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`No reasonable plaintiff would have asserted the ’651 patent after the Federal Circuit’s
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`rulings in Apple and Domino’s Pizza. Indeed, during the appeal in this case, the district court in
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`the Domino’s Pizza case found that case to be exceptional under § 285 and awarded fees against
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`Ameranth based in part on the weakness of its § 101 position after Apple.1 That reasoning applies
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`even more strongly in this case, filed after both Apple and Domino’s Pizza. All that remains now
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`is to compensate Olo for having to defend against this exceptionally meritless case and to deter
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`Ameranth and similarly-situated plaintiffs from pursing such meritless litigation in the future.
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`II.
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`NATURE AND STAGE OF THE PROCEEDINGS
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`The Court granted Olo’s Rule 12(b)(6) motion to dismiss with prejudice for invalidity
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`under 35 U.S.C. § 101 in October 2020. D.I. 29 at 12-17. Ameranth appealed to the Federal Circuit,
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`which summarily affirmed this Court’s judgment in October 2021. See D.I. 35. Ameranth filed a
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`petition for certiorari to the Supreme Court, which was denied on June 13, 2022. Ameranth, Inc.
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`v. Olo Inc., No. 21-1228, 2022 WL 2111376, at *1 (U.S. June 13, 2022). This motion is timely
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`filed under the parties’ stipulation adopted by the Court. D.I. 36.
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`III.
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`SUMMARY OF THE ARGUMENT
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`1.
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`Ameranth never should have filed this case because the asserted ’651 patent is
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`clearly invalid under § 101, Alice, and the Federal Circuit’s rulings in Apple and Domino’s Pizza.
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`This case stands out from others as an exceptionally meritless case. No reasonable litigant would
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`have expected the patent to survive the § 101 inquiry in light of this precedent. The Court should
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`award fees under § 285 for the purposes of compensation and deterrence consistent with case law
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`1 Ameranth, Inc. v. Domino’s Pizza, Inc., No. 12-cv-0733 DMS (WVG), 2021 WL 409725, at *9
`(S.D. Cal. Feb. 5, 2021) (“Domino’s Pizza § 285”).
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` 2
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`Case 1:20-cv-00518-GBW Document 38 Filed 07/11/22 Page 8 of 26 PageID #: 808
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`precedent.
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`2.
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`The Court should award fees for the entire case through completion of appeal,
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`consistent with Federal Circuit precedent, given that the case was meritless from the outset.
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`IV.
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`STATEMENT OF FACTS
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`This was the latest action in a lengthy litigation campaign by Ameranth asserting a family
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`of invalid patents against dozens of defendants over the past 15 years.
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`A.
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`The Federal Circuit Held Invalid Four Related Patents Under § 101
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`Ameranth’s first patent litigation ended after it lost a jury trial. In 2007, Ameranth sued
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`Menusoft, Inc. in the Eastern District of Texas on related U.S. Patent Nos. 6,384,850 (the “’850
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`patent”), 6,871,325 (the “’325 patent”), and 6,982,733 (the “’733 Patent”). The ’850 and ’325
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`patents are earlier patents that share a written description, and the ’733 patent is a continuation-in-
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`part of the ’850 patent. In 2010, a jury found that all asserted claims of those three patents were
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`invalid and not infringed. Ameranth, Inc. v. Menusoft Sys. Corp., 2:07-cv-00271, Dkt. No. 263
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`(E.D. Tex. Sept. 20, 2010).2
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`In 2011 and 2012, Ameranth sued more than 30 defendants in the Southern District of
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`California, Ameranth’s home district. The defendants included Olo, the defendant here (then
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`known as Mobo Systems, Inc.). In those cases, Ameranth asserted the ’850, ’325, and ’733 patents
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`along with related U.S. Patent No. 8,146,077 (the “’077 patent”). The ’077 patent is a continuation
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`of the ’733 patent and shares the same written description.
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`The issuance of Alice in 2014 doomed Ameranth’s asserted patents. Following Alice, the
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`Federal Circuit ultimately held that the asserted claims of all four related patents were invalid
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`2 Pursuant to a settlement and stipulated joint motion, the invalidity verdicts and judgment were
`subsequently vacated. See id. at Dkt. Nos. 263, 265, 331, 332, 348, 355.
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`under § 101 and the two-step test for patent-eligibility set forth in Alice.3 First, Olo and other
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`defendants filed Covered Business Method review petitions with the Patent Trial & Appeal Board
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`(“PTAB”) challenging certain claims of the ’850, ’325, and ’733 patents based on invalidity under
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`§ 101 and other grounds. The PTAB found most of the challenged claims invalid under § 101 and
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`found that a few dependent claims had not been proven invalid. In Apple, the Federal Circuit
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`affirmed the findings of invalidity and reversed as to the dependent claims that had been found
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`patentable, holding that the dependent claims were also invalid. Apple, 842 F.3d 1229. The Court
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`held that the claims failed under step one of the Alice test because they were directed to an abstract
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`idea. The Court explained:
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`We affirm the Board’s conclusion that the claims in these patents are directed to an
`abstract idea. The patents claim systems including menus with particular features.
`They do not claim a particular way of programming or designing the software to
`create menus that have these features, but instead merely claim the resulting
`systems. Essentially, the claims are directed to certain functionality—here, the
`ability to generate menus with certain features. Alternatively, the claims are not
`directed to a specific improvement in the way computers operate.
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`Id. at 1241 (citations omitted). At step two, the Court held that the claims fail to recite an inventive
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`concept and observed that “the specifications describe the hardware elements of the invention as
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`‘typical’ and the software programming needed as ‘commonly known.’” Id. at 1241-43.
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`After Apple, litigation on the related ’077 patent proceeded in the Southern District of
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`California with the actions consolidated for pretrial purposes. In 2018, applying the reasoning from
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`Apple, the court granted Domino’s Pizza’s motion for summary judgment that all asserted claims
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`of the ’077 patent are invalid under § 101. Ameranth, Inc. v. Pizza Hut, Inc., No. 3:11-cv-1810-
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`3 At step one of the Alice test, the court determines if the claim at issue is directed to a patent-
`ineligible concept, such as an “abstract idea.” Alice, 573 U.S. at 217. At step two, the court
`determines whether the claim recites an “inventive concept” sufficient to “transform the nature of
`the claim into a patent-eligible application.” Id. at 217-18 (citation and internal quotation marks
`omitted).
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`DMS-WVG, Dkt. No. 1395 (S.D. Cal. Sept. 25, 2018) (“Domino’s Pizza § 101”).4
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`In October 2019, the Federal Circuit in Domino’s Pizza affirmed the district court’s
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`invalidity ruling, applying the same reasoning from Apple. Domino’s Pizza, 792 F. App’x at 786-
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`88. At step one, the Court held that the claims were directed to “configuring and transmitting
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`hospitality menu related information using a system that is capable of synchronous
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`communications and automatic formatting” using “essentially result-focused and functional
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`language” that failed to provide “specifics of a particular conception of how to carry out that
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`concept.” Domino’s Pizza, 792 F. App’x at 786-87 (citations and internal quotation marks
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`omitted). At step two, the Court again pointed to the specification’s dispositive admission that the
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`“described invention” would use “commonly known” programming steps, leaving the patent and
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`claims devoid of any patent-eligible inventive concept. Id. at 787. The Court also held that expert
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`and inventor testimony submitted by Ameranth failed to avoid invalidity as a matter of law. Id. at
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`788.
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`Ameranth then filed a petition for certiorari at the Supreme Court, which was denied.
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`Ameranth, Inc. v. Domino’s Pizza, LLC, 141 S. Ct. 249 (2020).
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`B.
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`The California Court Found an Exceptional Case Under § 285 on a Related
`Patent Based In Part on Weakness Under § 101.
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`After the Domino’s Pizza appeal concluded, the California district court in February 2021
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`granted a motion by Domino’s Pizza to declare that case exceptional under § 285 and award
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`attorneys’ fees. Domino’s Pizza § 285, 2021 WL 409725, at *9. Among other factors, the Court
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`cited the substantive weakness of Ameranth’s position on § 101 after Apple and the need to deter
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`Ameranth from continuing to pursue meritless litigation on other patents from the same family:
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`4 The California court also later granted a motion for summary judgment invalidating certain ’077
`dependent claims that had not been asserted against Domino’s Pizza. No. 3:11-cv-1810-DMS-
`WVG, Dkt. No. 1551 (S.D. Cal. Mar. 14, 2022).
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`Ameranth’s substantive position on the validity of the ’077 Patent was also weak
`after the Supreme Court’s decision in Alice and the Federal Circuit’s decision in
`Apple. As stated above, Ameranth had a “responsibility to reassess its case” after
`Alice, and there is little evidence that it did so. On the contrary, the record reflects
`that Ameranth pushed ahead without any apparent concern that the ’077 Patent
`might be found unpatentable. That proved to be a mistake, and an especially
`obvious one after the Federal Circuit’s decision in Apple. Ameranth’s intent to
`continue with this litigation, and to pursue litigation on other patents from the same
`family, is indicative of its obstinate position, and suggests a need to deter similar
`conduct in the future.
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`Id. (citations omitted). The Court awarded fees and costs totaling approximately $2.786 million.
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`Ameranth, Inc. v. Domino’s Pizza, Inc., No. 12-cv-0733 DMS (WVG), 2021 WL 2550057, at *1-
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`3 (S.D. Cal. June 21, 2021). After that order issued, Olo promptly relayed it to Ameranth’s counsel
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`in this case, as discussed further below, but Ameranth refused to drop this case.
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`C.
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`The ’651 Patent Is Substantially Similar to Ameranth’s Invalid Related
`Patents.
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`Undeterred by the adverse rulings, Ameranth sued Olo in this Court on April 16, 2020.
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`This is the only action to date asserting the ’651 patent. The ’651 patent is based on a continuation-
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`in-part application of the invalid ’077 patent. D.I. 1-1 (’651 patent). The ’651 patent shares with
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`the invalid related patents the same key admissions which the Federal Circuit relied upon in Apple
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`and Domino’s Pizza, which this Court relied upon in invalidating the ’651 claims here.
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`1.
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`The ’651 patent specification is equally devoid of technological
`invention as the invalid related patents.
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`Most of the ’651 specification is the same as the ’077 patent from Domino’s Pizza,
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`including all of the Background of the Invention, all of the Summary of the Invention, Figures 1-
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`9, and the detailed description of the preferred embodiment corresponding to Figure 1-9.
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`The Background of the Invention describes the purported deficiencies in the prior art.
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`Hospitality services, such as restaurants, used “pen and paper” to take orders and reservations
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`verbally, without the efficient use of electronic systems. See ’651, 1:38-41 (“pen and paper have
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`Case 1:20-cv-00518-GBW Document 38 Filed 07/11/22 Page 12 of 26 PageID #: 812
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`prevailed in the hospitality industry, e.g., for restaurant ordering, reservations and wait-list
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`management”), 2:52-55 (“paper-based ordering, waitlist and reservations management have
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`persisted in the face of widespread computerization”).
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`To improve on those pen-and-paper techniques, the specification purports to describe an
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`“information management and synchronous communications system” where hospitality-related
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`information can be communicated automatically among connected system components. Id., 3:1-
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`24, 3:28-5:46. The specification proceeds to discuss an embodiment of such a “communications
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`system” as reflected in Figures 1-9 and their corresponding text. Among other things, Figure 9
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`shows a high-level system overview including various boxes identifying desired functional results.
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`Id., Fig. 9. Figure 9 shows a “Communications Controller” box in its center. Id. The specification
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`states that a “communications control program monitors and routes all communications to the
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`appropriate devices.” Id., 10:53-59.
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`Beyond those portions of the specification that overlap with the invalid ’077 patent, the
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`’651 specification contains some additional content. ’651, 13:7-11, 13:36-18:62, Fig. 10. The
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`additional content, though, does not disclose any new patent-eligible technology. The ’651 patent
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`specification adds ideas for including messaging features to the system (e.g., text and/or voice
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`messaging for reservation appointments and waitlists), but describes those ideas only in high-level,
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`purely functional terms without any technical details. See id. For example, information from a user
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`may be “converted” to another form (e.g., “text-to-voice”) but the patent states only the desired
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`results; it does not describe any new underlying conversion technology. E.g., id., 13:7-11, 14:34-
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`57, 15:15-47. Figure 10 of the patent reflects this “conversion” notion. Figure 10 is mostly identical
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`to Figure 9 except it adds two circles labeled “Communication Conversions.” ’651, Fig. 10. The
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`patent also adds that a computer might serve as an “automated reservations assistant” to
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`communicate with a user, but does not describe any detailed technical foundation for this high-
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`level idea. Id., 14:66-15:51.
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`Critically, the ’651 specification repeats verbatim the same key admissions that the Federal
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`Circuit relied upon in holding invalid the four related patents. The disclosed system uses only
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`conventional “typical hardware elements,” not any new inventive device:
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`The preferred embodiment of the present invention uses typical hardware elements
`in the form of a computer workstation, operating system and application software
`elements which configure the hardware elements for operation in accordance with
`the present invention. . . .
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`’651, 6:63-7:18 (emphasis added). Nor does the ’651 patent describe any inventive software. The
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`patent states: “The software applications for performing the functions falling within the described
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`invention can be written in any commonly used computer language. The discrete programming
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`steps are commonly known and thus programming details are not necessary to a full description
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`of the invention.” Id., 13:12-17 (emphasis added).
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`2.
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`The asserted ’651 claims are equally devoid of technological invention
`as the invalid related patent claims.
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`Because the specification explicitly disavows any inventive new hardware or software, it
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`is no surprise that the claims likewise fail to recite any inventive new hardware or software. The
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`asserted claims of the ’651 patent recite only the same type of purely functional, result-oriented
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`language as its four previously invalidated family members.
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`Ameranth asserted that Olo infringes ’651 claims 1, 3, 6, 9, 10, and 11. D.I. 1; D.I. 18; D.I.
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`23-1. Even a cursory review confirms that the asserted claims are directed to high-level desired
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`functional results, not any inventive new device or technology. See ’651, claims 1, 3, 6, 9, 10, 11.
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`The claims are structured similarly to claim 13 of the related ’077 patent held invalid in Domino’s
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`Pizza. That claim recited a “master database” of “hospitality” information, at least one “wireless
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`handheld computing device,” at least one “web server,” “communications control” software, and
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`desired functions including “real time synchronous” transmission of information between the
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`system components. Here, the asserted ’651 claims recite similar elements as well as a generic
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`“back-office application,” “messaging” features including “free format” and “fixed format”
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`messaging, application programming interface (API) features, and “intelligent automated
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`assistants (IAA)” features, all in high-level result-oriented terms. ’651, claims 1, 3, 6, 9, 10, 11.
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`Much like the ineligible claims of the four related patents, nothing in these claims provides
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`any patent-eligible new technology. Everything is stated in purely functional, result-oriented
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`terms—desired results to be achieved, somehow, through some unspecified programming.
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`D.
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`This Court and the Federal Circuit Held Invalid the Related ’651 Patent on
`the Same Grounds as the Four Related Patents.
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`As expected, the ’651 patent was held invalid in view of Apple and Domino’s Pizza. At
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`each juncture, Olo implored Ameranth to drop this meritless case, but Ameranth refused.
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`1.
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`This Court held invalid the ’651 patent based on Apple and Domino’s
`Pizza.
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`On July 22, 2020, Olo filed a Rule 12(b)(6) motion to dismiss explaining how the asserted
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`claims of the ’651 patent are ineligible under § 101 for substantially the same reasons as the four
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`related patents in Apple and Domino’s Pizza. D.I. 8-9. Ameranth filed its opposition brief on
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`August 5, 2020, which failed to meaningfully distinguish Apple and Domino’s Pizza and failed to
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`demonstrate any patent-eligible invention in the asserted claims. D.I. 12. Olo filed its reply brief
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`on August 12, 2020 (D.I. 14) and the parties submitted pre-hearing letter briefs (D.I. 16-19).5
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`5 Ameranth’s letter indicated that it planned to amend its complaint to assert additional dependent
`claims. D.I. 19 at 3. In response, Olo filed a request for leave to submit letter briefing explaining
`why the newly-raised claims were also ineligible under § 101. D.I. 20. Ameranth opposed that
`request. D.I. 21. The parties then stipulated that Ameranth would file its amended complaint
`adding dependent claims 9 and 10, the pending motion to dismiss and briefing would apply to the
`amended complaint, and the parties would submit additional supplemental letter briefs regarding
`the amended complaint, which the parties submitted. D.I. 23 (stipulation), D.I. 23-1 (amended
`complaint), D.I. 24-25 (supplemental letter briefs).
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`On September 30, 2020, then Chief Judge Stark court heard oral argument. D.I. 28. On
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`October 2, 2020, the Court announced its ruling, which was subsequently issued as a memorandum
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`opinion on October 13, 2020. D.I. 29 at 11-17. The Court’s opinion explains at length how the
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`’651 patent claims are invalid for the same reasons the Federal Circuit decided in Apple and
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`Domino’s Pizza:
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`Here, and for the reasons I have already stated, the claims are similar to those of
`the related patents that have already been found abstract by the Federal Circuit
`in two other cases: [Apple and Domino’s Pizza] . . . .
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`Like the claims at issue in those cases . . . , the claims here provide only results-
`focused and functional language without providing any specifics as to how to carry
`out the desired goal. And we know from the Apple and Domino’s Pizza decisions
`that that is not enough to become patent eligible. . . .
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`Ameranth tries but fails to distinguish the earlier Federal Circuit cases, Apple
`and Domino’s, by pointing to the additions in the specification. . . . [But the] new
`material is just more high level results-focused ideas. In the ’651 patent-in-suit, just
`like the related patents that were already invalidated, neither the claims, nor the
`specification describes any specific programming steps for the IAA system or the
`free format messaging, nor do they claim an improvement to computer
`functionality. . . .
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`The best comparisons here again are between the ’651 patent and the claims from
`the related patents that were found ineligible for patenting in Apple and
`Domino’s, cases in which the Circuit called out that the specification ‘expressly
`recited that the hardware needed was typical and that the programming steps
`were commonly known,’ and that the patent provided no disclosure of how the
`invention would be technologically implemented.
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`Id. at 13-16 (emphasis added; brackets in original omitted). The Court also cited the Federal
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`Circuit’s directive that in a case like this, where the “specification admits the additional claim
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`elements are well understood, routine and conventional, it will be difficult, if not impossible, for
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`[a] patentee to show a genuine dispute” that avoids dismissal with prejudice. Id. at 15(quoting
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`Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 1356 (Fed. Cir. 2018))
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`(emphasis added).
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`The Court further found that the allegations in Ameranth’s complaint and proffered expert
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`declaration contradicted the patent itself and were therefore “not to be credited”:
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`Ameranth relies heavily on the Court’s obligation to take as true the well-pled
`factual allegations in its complaint, and Ameranth relies equally heavy, if not more
`so, on the declaration of its expert, D