Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

IPDEV Co. v. Ameranth, Inc.

United States District Court, S.D. California

March 27, 2018

IPDEV CO., Plaintiff,
v.
AMERANTH, INC., Defendant. AMERANTH, INC., Counter Claimant,
v.
IPDEV CO., Counter Defendant.

          ORDER (1) GRANTING AMERANTH'S MOTION FOR SUMMARY JUDGMENT OF INVALIDITY DUE TO INADEQUATE WRITTEN DESCRIPTION AND (2) DENYING IPDEV'S MOTION FOR SUMMARY JUDGMENT RE: WRITTEN DESCRIPTION SUPPORT AND ENABLEMENT

          Hon. Dana M. Sabraw United States District Judge.

         This case comes before the Court on Ameranth's motion for summary judgment of invalidity due to inadequate written description and IPDEV's motion for summary judgment regarding written description support and enablement. The motions came on for hearing on March 23, 2018. Andrew Warnecke, Brian Orr and Gino Serpe appeared for IPDEV and William Caldarelli and John Osborne appeared for Ameranth. After thoroughly reviewing the parties' briefs, the relevant evidence and legal authority and the record herein, and after hearing argument from counsel, the Court grants Ameranth's motions and denies IPDEV's motion.

         I.

         BACKGROUND

         IPDEV filed the present case against Ameranth alleging a claim for patent interference pursuant to 35 U.S.C. § 291. IPDEV alleges, and Ameranth does not dispute, there is an interference-in-fact between IPDEV's United States Patent No. 8, 738, 449 (“the ‘449 Patent”) and Ameranth's United States Patent Number 8, 146, 077 (“the ‘077 Patent”) by virtue of IPDEV's copying of certain claims of the ‘077 Patent into the ‘449 Patent. To prevail on this claim, IPDEV must prove it was the first party to reduce to practice the invention described in the copied claims. IPDEV seeks to establish a priority date of November 24, 1997, which is the filing date of another IPDEV Patent, United States Patent Number 5, 991, 739 (“the ‘739 Patent”). To establish that priority date, IPDEV must show the specification of the ‘739 Patent, which is the same as the specification of the ‘449 Patent, satisfies the written description and enablement requirements of 35 U.S.C. § 112, ¶ 1.

         Ameranth raised a number of affirmative defenses to the patent interference claim. Those affirmative defenses are: (1) the ‘449 Patent is invalid as anticipated, (2) the ‘449 Patent is invalid as obvious, (3) failure to disclose true inventorship of the ‘449 Patent, (4) lack of conception and reduction to practice of the ‘449 Patent, (5) inadequate written description of the ‘449 Patent, (6) lack of enablement of the ‘449 Patent, (7) inequitable conduct in the prosecution of the ‘449 Patent, (8) unclean hands, (9) time bar, (10) laches and (11) failure to state a claim. Ameranth also alleged a counterclaim for invalidity of the ‘449 Patent due to time bar, inadequate written description, lack of enablement, and failure of conception and reduction to practice, and another counterclaim for unenforceability of the ‘449 Patent due to inequitable conduct.

         Turning to the interfering patents, the ‘449 Patent was filed on August 22, 2012. It is a continuation of application No. 09/282, 645, filed on March 31, 1999, which is a continuation of application No. 08/976, 793, filed on November 24, 1997, which application issued as the ‘739 Patent. The ‘449 Patent names as its inventors Bryan T. Cupps and Tim Glass. IPDEV is the assignee. The ‘449 Patent is titled, “Internet Online Order Method and Apparatus.” Generally, it discloses “[a] system and method for providing an online ordering machine that manages the distribution of products over a distributed computer system[.]” (‘449 Patent, Abstract.) In the “Background of the Invention” section, the inventors described three prior art systems, World Wide Waiters, Waiters on Wheels and Pizza Net. (Id. at 1:19-2:22.) Each of those systems enabled consumers to order food from participating restaurants over the internet, but each had shortcomings: The World Wide Waiters system required each participating restaurant to have Internet access to the World Wide Waiter server. It also used “statically configured menu web pages[, ]” which “hamper[ed] the maintainability and scalability of the server to take on additional restaurants.” (Id. at 1:51-53.) The Waiters on Wheels and Pizza Net systems required “communicating with the restaurant through a facsimile machine[, ]” and also required subsequent communications between the customer and the delivery system [be] performed via telephone calls which requires manual intervention.” (Id. at 2:16-22.) To overcome these shortcomings, the ‘449 Patent disclosed an “online ordering machine” that:

provides the customers with product information from various vendors whose delivery range is within the customers location or with product information from vendors having take out service within a specified range from the customers location. The online ordering machine accepts orders from the customer for a particular product from a selected vendor.

(Id. at 2:32-39.) The order is then converted into voice instructions transmitted to the vendor through a telephone call or via facsimile with follow up voice instructions via telephone call. (Id. at 2:39-43.) The Description of the Preferred Embodiments describes the computer architecture of the invention, (id. at 3:50-5:17), the use of geocodes “to determine whether a customer is within a specified geographic area of a restaurant's delivery area or whether a restaurant is within a specified geographic area of the customers take out range[, ]” (id. at 6:20-8:25), the interactive voice recognition system, (id. at 8:27-49), the dynamic creation of menu web pages, (id. at 8:51-9:41), and the ordering process. (Id. at 9:43-11:40.)

         The ‘077 Patent was filed on April 22, 2005. It is a continuation of application No. 10/016, 517, filed on November 1, 2001, which application issued as U.S. Patent No. 6, 982, 733, which is a continuation-in-part of application No. 09/400, 413, filed on September 21, 1999, which application issued as U.S. Patent No. 6, 384, 850.[1] The ‘077 Patent names as its inventors Keith McNally, William Roof and Richard Bergfeld. Ameranth is the assignee. The Abstract of the ‘077 Patent describes the invention as:

An information management and synchronous communications system and method [that] facilitates database equilibrium and synchronization with wired, wireless and Web-based systems, user-friendly and efficient generation of computerized menus and reservations with handwritten/voice modifications for restaurants and other applications that utilize equipment with nonstandard graphical formats, display sizes and/or applications for use in remote data entry, information management and communication with host computer, digital input device or remote pager via standard hardwired connection, the internet, a wireless link, printer or the like.

         There are 21 claims in the ‘449 Patent and 18 claims in the ‘077 Patent. The claims recite numerous elements and limitations, but as it relates to the present motion, the following language from independent claims 1 and 13 is the most relevant. The language of claim 1 focuses on software that configures and synchronizes in real time menus from a master menu with menus on a hand held computing device, as follows:

menu configuration software enabled to generate a programmed hand held menu configuration from said master menu for wireless transmission to and programmed for display on a wireless hand held computing device, said programmed hand held menu configuration comprising at least menu categories, menu items and modifiers and wherein the menu configuration software is enabled to generate said programmed hand held menu configuration by utilizing parameters from the master menu file structure defining at least the menu categories, menu items and modifiers of the master menu such that at least the menu categories, menu items and modifiers comprising the programmed hand held menu configuration are synchronized in real time with analogous information comprising the master menu,

(id. at 12:34-48.) The language of claim 13 focuses on hospitality “information” and provides “real time communications control software enabled to link and synchronize hospitality application information simultaneously between the master database, wireless hand ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.