Can Unasserted Claims Of Ameranth Patent Be Invalidated Under Section 101?

The Federal Circuit recently heard oral argument in Ameranth, Inc. v. Domino's Pizza, LLC, Nos. 2019-1141, -1144, in which the Court grappled with the issue of determining whether unasserted claims of a patent can be invalidated under Section 101.

In 2011, Ameranth filed patent infringement actions against several defendants, including Domino's, alleging infringement of two patents. In an amended complaint filed in 2013, Ameranth accused Domino's of infringing thirteen claims – specifically, claims 1, 3, 6-9, 11-13, and 15-18 – of a third patent, U.S. Patent No. 8,146,077 ("the '077 Patent"), which was directed to a system for generating and managing electronic menus. Domino's asserted a declaratory judgment counterclaim requesting a finding that the claims of the '077 Patent were invalid under 35 U.S.C. § 101. In the fall of 2017, as part of its case management procedures, the district judge issued an order requiring Ameranth to limit the number of claims that it