Case 2:07-cv-00271-RSP Document 336 Filed 11/15/11 Page 1 of 14 PageID #: 19333
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`AMERANTH, INC.,
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`Plaintiff,
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`v.
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`MENUSOFT SYSTEMS CORPORATION
`and CASH REGISTER SALES & SERVICE
`OF HOUSTON, INC. (dba CRS TEXAS)
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`Defendants.
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`Civil Action No. 2:07-cv-271-DF
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`PLAINTIFF AMERANTH’S OPPOSITION TO
` NON-PARTY SEAMLESS NORTH AMERICA, LLC’S
` MOTION FOR LEAVE TO FILE AMICUS CURIAE BRIEF
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`Apple, Exhibit 1052, Page 1
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`Case 2:07-cv-00271-RSP Document 336 Filed 11/15/11 Page 2 of 14 PageID #: 19334
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`Plaintiff Ameranth, Inc. (“Ameranth”) submits this opposition to the “Motion By Non-
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`Party Seamless North America, LLC [“Seamless”] For Leave To File Amicus Curiae Brief”
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`filed on November 11, 2011 (Dkt. No. 334). Seamless’s arguments are either unsubstantiated
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`speculation or misrepresentations to the Court. The actual facts do not justify consideration of
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`Seamless’s proposed brief nor the denial of vacatur as requested by Seamless. Applicable
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`equitable considerations compel grant of vacatur to conserve the resources of this Court, the
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`Federal Circuit and the parties, and Seamless has made no credible showing that its interests
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`are adversely affected or that any other non-party’s interests are adversely affected if the Court
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`enters the order of vacatur as the Court indicated it would do upon remand from the Federal
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`Circuit. Importantly, a denial of vacatur would negate the benefits of the settlement just
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`negotiated by the Federal Circuit Mediation Office by requiring the Federal Circuit to consider
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`Ameranth’s appeal, in contravention of the Mediation Office’s desire to eliminate the appeal
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`by remand and vacatur.
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`A.
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`Procedural Background
`On June 28, 2007, Ameranth filed its Complaint for patent infringement against Menusoft and
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`CRS in this action. On September 4, 2007, Menusoft and CRS filed their Answer and asserted
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`Counterclaims of Invalidity and Unenforceability of the asserted patents. This Court held a jury trial in
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`September 2010, at which the jury reached verdicts of noninfringement and invalidity of the seven
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`asserted claims of the total forty-seven claims of the three asserted patents. (Dkt. No. 263). The Court
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`thereafter entered judgment on the jury verdicts. (Dkt. No. 265). The Court subsequently denied
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`Ameranth’s motions for new trial and judgment as a matter of law on invalidity (Dkt. Nos. 313, 314) and
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`denied the defendants’ motions on inequitable conduct and exceptional case (Dkt. Nos. 315, 316).
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`Ameranth timely filed a Notice of Appeal with the Federal Circuit on June 23, 2011 (Dkt. No.
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`317), appealing the Court’s denials of its motions for new trial and judgment as a matter of law.
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`Ameranth also noticed appeal of the Court’s entry of the jury verdicts based on various issues including,
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`1
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`Apple, Exhibit 1052, Page 2
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`inter alia, the Court’s jury instructions, verdict form and evidentiary rulings. Menusoft and CRS filed a
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`Notice of Cross-Appeal as to the Court’s denial of a finding of inequitable conduct. (Dkt. No. 318).
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`The appeal was selected for the Federal Circuit’s mandatory mediation program. On October 13,
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`2011, a mediation conference presided over by Chief Federal Circuit Mediator James Amend was held.
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`The Federal Circuit Mediator’s efforts (including his review and summary of the merits of Ameranth’s
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`arguments on appeal) resulted in Ameranth and Menusoft reaching a confidential and comprehensive
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`binding settlement, which included Ameranth also dismissing Menusoft and CRS from a second case
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`currently before this Court1 involving eight claims of the Ameranth patents (which claims were not
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`asserted or adjudicated in the present case). Under the Settlement Agreement, Ameranth and
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`Menusoft agreed, inter alia, to jointly request this Court to vacate the verdicts of invalidity of the
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`seven claims asserted in this case. However, Ameranth did not agree to give up its right to appeal the
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`invalidity verdicts and judgment in the event the invalidity judgment is not vacated.
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`Under the Settlement Agreement, and at the direction of Chief Federal Circuit Mediator Amend,
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`the parties filed a Stipulated Motion For Indicative Ruling requesting vacatur of the jury verdicts of
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`invalidity and the Court’s judgment of invalidity. (Dkt. No. 331). The Court granted the request for
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`indicative ruling and indicated in its Order that it would vacate the verdicts and judgment of invalidity
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`upon remand of the case from the Federal Circuit. (Dkt. No. 332). The parties to the appeal thereafter
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`filed a Joint Motion for Remand with the Federal Circuit on November 7, 2011 and are awaiting the
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`Federal Circuit’s action on that motion. Once remanded, a motion for vacatur of the invalidity verdicts
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`and judgment consistent with the Court’s Order (Dkt. No. 332) will be filed with the Court.
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`On November 11, 2011, non-party Seamless filed a motion (Dkt. No. 334) seeking leave to file
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`an amicus brief for purposes of preventing the Court’s entry of vacatur as to the verdicts and judgment of
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`invalidity of the seven claims asserted at trial in this case. Seamless’s request for leave should be denied
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`because Seamless has pointed to no relevant information in its proposed amicus filing which is new or
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`1 Ameranth v. Par et al., Case No. 2:10-cv-294-DF.
`2
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`Apple, Exhibit 1052, Page 3
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`not known by the Court. Moreover, Seamless’s assertion that is has a “unique perspective that can assist
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`the Court beyond what the parties, or the other amicus Profitstreams, can provide” (Dkt. No. 334 at 4) is
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`false and misrepresents the relevant facts. Seamless provides only unsupported assertions that common
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`issues of law and fact exist between the California case and this case. Id. at 5. Those assertions are
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`fundamentally wrong. The claims asserted in this case are not asserted against Seamless in California,
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`nor against any other party.
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`B.
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`Seamless’s Unsupportable Allegations Of Impact On Other Litigation Are
`Insufficient To Justify Seamless’s Interference In This Case
`Seamless Misrepresented The Facts
`1.
`Seamless’s argument that Ameranth and Menusoft made a misrepresentation as to the impact
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`that vacatur would have on other pending litigation (Dkt. No. 334 at 2; Dkt. No. 334-2 at 2) is wrong
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`and misleading, especially since the eight claims asserted against Seamless are the exact same claims
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`being asserted in another case before this Court, of which the Court is obviously fully aware as
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`evidenced by the Court’s holding that collateral estoppel does not apply to the eight claims asserted in
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`the other case.2
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`Contrary to Seamless’s argument, Ameranth and Menusoft's motion for indicative ruling (Dkt.
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`No. 331) did not state that validity of the particular claims for which they sought vacatur was not alleged
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`to be at issue in any pending litigation (as detailed in Ameranth’s response (Dkt. No. 335) to the motion
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`for leave to file amicus brief filed by non-party Profitstreams LLC (Dkt. No. 333)) . The motion for
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`indicative ruling stated:
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`[T]he particular claims for which vacatur is sought are not being asserted against any
`other party. There will thus be no reduction or elimination of issues or any other form of
`efficiency in any pending case regarding Ameranth’s patents if the Court were to deny
`the request for vacatur.
`Dkt. No. 331. Seamless relied on the baseless allegations of Profitstreams to allege that the foregoing
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`statements from the motion for indicative ruling were untrue. (Dkt. No. 334 at 2). However, as detailed
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`2 See Ameranth v. Par et al., No. 2:10-cv-294-DF, Dkt. No. 107 at 5; see also Dkt. No. 119
`(adopting Magistrate Judge Everingham’s recommendation).
`3
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`Apple, Exhibit 1052, Page 4
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`in Ameranth’s opposition to Profitstreams’ request to file amicus brief (Dkt. No. 335), the undisputable
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`fact is that Ameranth is not asserting any claim for which vacatur is sought against any party, including
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`Seamless. As discussed above, the Court is well aware that Ameranth is only asserting eight of its
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`claims, each of which the Court has recognized are materially different from the claims for which
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`vacatur is sought. And, in the two cases where Ameranth is asserting other patent claims (the California
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`case and the other case in this Court), there would be no reduction or elimination of issues or any other
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`form of efficiency if vacatur of the claims asserted in the present case were to be denied since the claims
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`for which vacatur is sought are not being asserted in those cases (including the California case where
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`Seamless is a defendant) and are entirely different claims.
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`The claims which the Court agreed to vacate are clearly not being asserted against Seamless and
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`are thus not at issue with respect to Seamless. Therefore, despite Seamless’s speculation about
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`potentially being sued on the claims for which vacatur is sought, whether collateral estoppel applies to
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`those claims will not be an issue in the California case because the particular claims are not involved in
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`that case, just as the claims for which vacatur is sought are not involved in another case before this very
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`Court (2:10-cv-294-DF). Seamless is simply trying to interfere with effectuation of the parties
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`settlement agreement when it has not even attempted to demonstrate how the seven claims for which
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`vacatur is sought are even properly involved in the California action, nor are they.
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`2.
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`Seamless Grossly Mischaracterized The Patent Prosecution In An
`Attempt To Mislead The Court
`In its proposed amicus brief, Seamless deceptively cited the Examiner’s reasons for allowance as
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`applicable to claims of the Ameranth patents other than those for which vacatur is sought. (Dkt. No.
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`334-2 at 5-6). Seamless stated that “[t]he patent office determined that claims currently asserted against
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`Seamless contain similar limitations to the claims this Court held to be anticipated and obvious.” Id. at 5.
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`In support of its argument, Seamless pointed to the reasons for allowance as purportedly stating that
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`various limitations involving “menus” were “present in all of the independent claims.” Id. (emphasis in
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`original). However, examination of the claims which are being asserted against Seamless in the
`4
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`Apple, Exhibit 1052, Page 5
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`California litigation clearly shows that the “menu” limitations are not recited in those claims. In fact,
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`the claims are entirely different, as recognized by Judge Everingham (as discussed below). The
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`independent claims asserted against Seamless in the California case are claim 12 of the ‘850 patent and
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`claim 11 of the ‘325 patent. Neither of these claims, nor any other claim asserted in the California case,
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`includes the recitations relied on by the Examiner to allow the “menu” claims (e.g., claim 1 of the ‘850
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`patent and claim 1 of the ‘325 patent). The Examiner, in his summary of reasons for allowing claims
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`over the cited prior art, clearly made a simple mistake in referring to “all” claims as including the menu
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`recitations. They do not. Surely, Seamless’s attorneys, having had at least several months to analyze
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`the claims asserted in the present case versus the claims asserted in California, must be aware of that
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`obvious typo by the Examiner, yet Seamless chose to nonetheless make such a transparently false
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`argument. Seamless’s willingness to do so is a reflection of its complete inability to explain to this
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`Court how the claims asserted in California could in any way be affected by the status of the claims
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`asserted at trial in this case.
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`Based on its mischaracterization of the prosecution history, Seamless alleged that Ameranth’s
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`and Menusoft’s request for vacatur is an “egregious circumstance.” Id. at 6. Seamless’s
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`mischaracterization is in reality itself an egregious circumstance which should equitably preclude entry
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`of Seamless’s proposed amicus brief as well as the relief requested by Seamless.
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`C.
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`Seamless Mis-Stated The Holding Of Bancorp
`Notwithstanding Seamless’s assertion that the standard for district court vacatur motions is
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`“exceptional circumstances,” controlling authority of the Supreme Court in fact does not require such a
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`finding. Seamless’s error on this point lies in misconstruing what Bancorp said with regard to the
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`standard which “appellate” courts must apply when considering a motion to vacate a lower court
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`judgment. In Bancorp, the Supreme Court held that, absent exceptional circumstances, an
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`appellate court may not order a district court to vacate a judgment rendered moot by settlement.
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`However, the Supreme Court expressly recognized in Bancorp the power of the district court to vacate
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`5
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`Apple, Exhibit 1052, Page 6
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`a judgment after settlement on appeal. U.S. Bancorp Mortgage Co. v. Bonner Mall Partnership, 513
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`U.S. 18, 29 (1994).3 Clearly, the “exceptional circumstances” standard of the Supreme Court’s
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`Bancorp decision is not applicable to district court vacatur determinations. Bancorp, "by its terms, does
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`not apply to district courts but rather only to the Supreme Court and to courts of appeals." Lycos v.
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`Blockbuster, Inc., No. 07-11469, 2010 U.S. Dist. LEXIS 136252, *8-9 (D. Mass. Dec. 23, 2010)
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`(quoting Dana v. E.S. Originals, Inc., 342 F.3d 1320, 1328 (Fed. Cir. 2003) (Dyk, J., concurring)). In
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`fact, the Supreme Court held in Bancorp that an appellate court considering a request to vacate a district
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`court decision as part of a settlement may remand to the district court to consider the request “even in
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`the absence of, or before considering the existence of, extraordinary circumstances.” 513 U.S. at 29.
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`This holding plainly indicates that the Supreme Court did not hold nor suggest that the extraordinary
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`circumstances standard should apply to Rule 60(b) motions. It clearly would be pointless to remand to a
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`district court “in the absence of extraordinary circumstances,” if a motion to vacate an order to facilitate
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`a settlement could only be granted under such circumstances. Moreover, a district court should have
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`wider discretion to vacate its own decision than should an appellate court to vacate another court’s
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`decision without even considering the merits. American Games, Inc. v. Trade Prods., Inc., 142 F.3d
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`1164, 1170 (9th Cir. 1998) (“a district court should enjoy greater equitable discretion when reviewing its
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`own judgments than do appellate courts operating at a distance").
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`Moreover, it is widely acknowledged that “a Rule 60(b) motion is addressed to the sound
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`discretion of the [district] court [and] gives the court a grand reservoir of equitable power to do justice
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`3 Numerous courts have recognized that Bancorp does not constrain a district court to the exceptional
`circumstances test when considering a request for vacatur of a judgment or verdict on
`remand from an appellate court. See Marseilles Hydro Power LLC v. Marseilles Land & Water
`Co., 481 F.3d 1002, 1003-04 (7th Cir. 2007); American Games, Inc. v. Trade Products, Inc., 142 F.3d
`1164, 1168-69 (9th Cir. 1998); Mayes v. City of Hammond, 631 F. Supp. 2d 1082, (N.D. Ind. 2008)
`(“[T]his court is not cabined by the ‘exceptional circumstances for a request for vacatur made to an
`appellate court.”). To the extent any of the cases cited by Seamless state or imply that the exceptional
`circumstances test is mandatory in such circumstances, those cases are wrong as inconsistent with the
`Supreme Court’s controlling authority in Bancorp. Moreover, Bancorp is distinguishable from the
`present case because the present settlement agreement did not result in mootness of Ameranth’s appeal
`of invalidity.
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`6
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`Apple, Exhibit 1052, Page 7
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`in a particular case.”4 The Court may vacate a judgment where “it is no longer equitable that the
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`judgment should have prospective application.” Fed. R. Civ. P. 60(b)(5). Under Rule 60(b)(6), a court
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`has “ample power to vacate judgments whenever that action is appropriate to accomplish justice.”5
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`There is no requirement in such an equitable inquiry for “exceptional circumstances.”
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`In the present case, grant of vacatur would do justice and additionally, although not required under
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`Bancorp, exceptional circumstances are present which militate heavily in favor of vacatur. Here, all
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`parties desired settlement, the settlement is in the best interests of all parties, the benefits of vacatur
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`outweigh any harm the public or the judicial system might lose from a loss of legal precedent and
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`vacatur would produce significant judicial efficiencies both for this Court and for the Federal Circuit,
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`while respecting and recognizing the objectives of the Federal Circuit Mediation process as well.
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`D.
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`The Cases Cited By Seamless Do Not Support Its Arguments Against Vacatur
`Under the logic of Willow Wood, Seamless is precluded from intervening or otherwise interfering
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`in this Court's vacatur determination because Ameranth is not asserting the claims for which vacatur is
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`sought against Seamless or anyone else. In Willow Wood, the plaintiff was asserting the very same
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`claims for which vacatur was sought against other parties in different litigations.6 But for that very
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`salient fact, which Seamless attempts to sweep under the rug, Willow Wood would have been decided
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`differently. Seamless should not be allowed to file an irrelevant and unnecessary paper to burden the
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`Court and the parties without submitting actual proof that the pertinent claims are actually being asserted
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`against it. Such proof cannot be provided because the claims are simply not being asserted against
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`4 Pierce v. Cook & Co., Inc., 518 F.2d 720, 722 (10th Cir. 1975); accord Reid v. Angelone, 369 F.3d
`363, 374 (4th Cir. 2004).
`5 See 11 Charles A. Miller, et al., Federal Practice and Procedure § 2864 (2nd ed. 1995).
`6 In Willow Wood, the claims for which vacatur was sought were being litigated in other cases, and
`essentially all claims of the asserted patents stood invalidated. Ohio Willow Wood Co. v. Thermo-Ply,
`Inc., C.A. No. 9:07-cv-274, Dkt. No. 142 at 2 (E.D. Tex. Feb. 2, 2011) (“Here, this court's ruling, which
`found that most claims of the '182 patent are invalid, will, unless reversed on appeal, dispose of
`significant litigation in other forums.”). Conversely, in the present case, the invalidity verdicts will not
`affect other cases irrespective of vacatur or reversal on appeal because those cases involve claims other
`than those adjudicated at the trial in this case.
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`7
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`Apple, Exhibit 1052, Page 8
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`Seamless or anyone else.
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`In fact, Seamless’s request for amicus status, instead of intervention, speaks volumes about its
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`tactics. Seamless is well aware that it has no argument for intervention in this case because, inter alia,
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`Ameranth is not asserting the claims for which vacatur is sought against Seamless. The present situation
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`is clearly the opposite of Ohio Willow Wood, where intervention was allowed because the very same
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`claims were being asserted against the party which sought to intervene. There are no such facts here, and
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`Seamless has not attempted to allege any such facts. Seamless simply tried to create an illusion that
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`Ameranth will assert the claims in the future, without pointing to any basis whatever for such belief.
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`Unlike in Medtronic v. Boston Scientific (cited by Seamless at Dkt. No. 334-2 at 6), Ameranth
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`has not abandoned its appeal rights as part of the settlement with Menusoft. In Medtronic, Judge Ward
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`applied the Bancorp “mootness result[ing] from settlement” standard to deny vacatur. Medtronic
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`Vascular Inc. v. Boston Scientific Corp., No. 2:06-cv-78, 2009 WL 383237, at *1. Here, mootness has
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`not resulted from settlement, and thus Seamless’s principal argument against vacatur (Dkt. No. 334-2 at
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`4) is based on an erroneous factual assumption. Ameranth retained its right to appeal if the invalidity
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`judgment is not vacated and, if the Court were to reverse its order stating that it would vacate on
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`remand, the appeal would go forward as to the validity of the claims for which vacatur is sought.
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`Further, one of Seamless’s own cited cases stands for the proposition that the appeal can proceed even
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`if the infringement issues have been settled. Ohio Willow Wood Co. v. Thermo-Ply, Inc., 629 F.3d
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`1374, 1376 (Fed. Cir. 2010) (Moore, J. concurring) (“the Federal Circuit must consider a validity
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`determination on appeal, even if the court concludes that the defendant does not infringe the patent at
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`issue.”) (citing Cardinal Chemical Co. v. Morton Int’l, Inc., 508 U.S. 83, 100 (1993)).
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`Further, the cases cited by Seamless involved requests to vacate detailed decisions of district
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`courts. Conversely, the judgment in this case contains no analysis of validity by the Court (Dkt. No.
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`265), and the post-trial order denying Ameranth’s validity JMOLs similarly contains no analysis by the
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`8
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`Apple, Exhibit 1052, Page 9
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`Court (Dkt No. 314).7 There is thus no presumptively correct decision of a district court which the
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`parties seek to vacate.
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`E.
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`Seamless’s Allegation Regarding Potential Collateral Estoppel As To Claims Not
`Asserted In This Case Has Already Been Rejected By This Court
`Seamless pontificates that claims other than those for which vacatur is sought “may not be
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`different at all” from the claims involved in the request for vacatur and thus that it should be able to rely
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`on the judgment of invalidity of the seven claims asserted at trial in this case. (Dkt. No. 334 at 3).
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`Seamless further implores that it “should be allowed to point to the wisdom of this Court’s prior rulings
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`in its defense.” Id. However, Seamless entirely ignores the wisdom of this Court’s prior rulings. Judge
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`Everingham explicitly ruled that collateral estoppel does not apply to the claims which were not
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`adjudicated in this case:
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`Here, many of the claims asserted in this case contain limitations not found in the
`“representative” claims Ameranth asserted in the first case. In sum, there could have been
`no final decision on the validity of claims that were withdrawn, not asserted, or never
`litigated in first case – that is, there could have been no final decision on “the identical
`question” of the validity of claims that were not presented to the jury in the first case.
`Ameranth v. Par et al., No. 2:10-cv-294-DF, Dkt. No. 107 at 5; see also Dkt. No. 119 (adopting
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`Magistrate Judge Everingham’s recommendation). Seamless admitted that, in the pending
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`California case, Ameranth “only alleged infringement of claims that were not previously-held invalid.”
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`(Dkt. No. 334 at 4). Thus, Seamless’s self-serving theory that collateral estoppel might potentially apply
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`to non-adjudicated claims is thus demonstrably incorrect in light of the wisdom already expressed by
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`this Court. There is no legal authority for applying collateral estoppel to unadjudicated claims, Seamless
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`cited none, and Judge Everingham already denied such an attempt. Similarly, Seamless’s theorizing that
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`the court in the California action, where the pertinent claims are not being asserted, will find some
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`preclusive effect from the judgment as to entirely different claims (Dkt. No. 334-2 at 5-6), is extremely
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`7 The Court merely entered the jury verdicts without comment, and likewise denied Ameranth’s motions
`for JMOL without providing a memorandum opinion identifying substantial evidence to support the
`verdicts. The jury verdicts of invalidity in this case should not be given the presumption of correctness
`in light of the serious evidentiary and proof issues raised in Ameranth’s post-trial motions which were
`not addressed by Judge Everingham’s dispositions of the post-trial motions, and which Ameranth will
`brief even more fully for the Federal Circuit if vacatur were to be denied.
`9
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`Apple, Exhibit 1052, Page 10
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`speculative and has no sound basis. Judge Everingham ruled that collateral estoppel does not apply to
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`the non-litigated claims of the asserted patents−and only those claims are being asserted in the
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`California case. Seamless’s conjecture that the California court will conclude the opposite of Judge
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`Everingham, who tried the case and managed it for four years, is not realistic.
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`F.
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`Resources Will Be Conserved By Granting A Motion For Vacatur
`As recognized in Ohio Willow Wood, a grant of a motion to vacate may conserve resources if
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`vacatur allows the parties to avoid the substantial cost of an appeal and a remanded trial. Ohio Willow
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`Wood. Co. v. Thermo-Ply, Inc., 769 F. Supp. 2d 1065 (E.D. Tex. 2011). Seamless’s assertion that there
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`are no “exceptional circumstances ”8 warranting vacatur in the present case runs afoul of the
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`recognition in Willow Wood and other cases that conservation of resources justifies vacatur. In this
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`case, without vacatur of the invalidity judgment, the full appeal to the Federal Circuit will proceed as to
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`validity, and the substantial cost of an appeal will thus not be avoided, negating the success of the
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`Federal Circuit mediation program in settling the case. Nor will the Federal Circuit’s time be
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`conserved. Likewise, this Court will not see efficiency in the dismissal of the case and elimination of
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`the possibility of a remanded trial. Although Willow Wood also involved a situation where the appeal
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`would proceed in the absence of vacatur, as is the case here, Willow Wood also involved assertion of the
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`very same claims in a separate litigation as the claims for which vacatur was sought (unlike the present
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`situation). The policy goals as stated in Willow Wood thus actually compel vacatur to conserve the
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`aforesaid resources.
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`The public interest in resources expended by this Court and by the Federal Circuit would be
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`respected by vacatur of the invalidity verdicts and judgment as to only the seven particular claims
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`which were litigated in this case.9 When the potential effect on other parties or the public is limited or
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`8 As discussed above, exceptional circumstances is not the applicable standard, but such circumstances
`exist in this case in any event.
`9 Those claims are 1 and 4 of U.S. Pat. No. 6,384, 850; 6, 9, and 10 of U.S. Pat. No. 6,871,325 and 1 and
`3 of U.S. Pat. No. 6,982,733. In addition to the seven claims asserted at trial, the Court ruled in Case
`No. 2:10-cv-294-DF (Dkt. No. 119) that collateral estoppel applies to claim 3 of U.S. Pat. No.
`10
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`Apple, Exhibit 1052, Page 11
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`

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`Case 2:07-cv-00271-RSP Document 336 Filed 11/15/11 Page 12 of 14 PageID #: 19344
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`nonexistent and when judicial resources are not squandered, vacatur is appropriate. See Gould v.
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`Bowyer, 11 F.3d 82, 84 (7th Cir. 1993). Despite Seamless’s allegations of potential harm to it,
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`Seamless has not pointed to any actual facts supporting its contention that it would be affected by a
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`grant of vacatur. Effecting the terms of the settlement between Ameranth and Menusoft, on terms
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`amenable to both, would conserve the Federal Circuit’s resources, and potentially this Court’s
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`resources in the event the case is remanded for further proceedings after the appeal is litigated. The
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`Federal Circuit’s objectives would also be respected since the settlement would not have been reached
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`without the efforts of the Chief Federal Circuit Mediator and his suggestion of the motion for
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`vacatur to facilitate the settlement. A circuit mediator’s assistance in reducing the appeals court’s
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`case load by helping the parties reach a settlement weighs in favor of vacatur. See, e.g., Auto. Club v.
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`Mellon Bank, 224 F.R.D. 657, 658 (C.D. Cal. 2004); Motta v. INS, 61 F.3d 117, 118 (1st Cir. 1995).
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`The private interests also weigh in favor of vacatur. Settlement of the current litigation will
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`advance each of Ameranth’s and Menusoft’s interests by eliminating the expense and risks associated
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`with a lengthy appeal process and, potentially, a new trial. Still further, the settlement will also result in
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`the dismissal of a second case against Menusoft and CRS currently before this Court (2:10-cv-294-DF).
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`Moreover, the settlement on appeal reflected the Federal Circuit Mediator’s consideration of
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`Ameranth’s strong arguments supportive of invalidity reversal or remand, which were discussed
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`between all parties at the mediation, and directly led to the settlement and licensing of Ameranth’s
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`patents. The fact that a settlement was reached confirms that there were reasonable grounds for
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`Ameranth’s challenge to the invalidity verdicts and judgment and that such was recognized by Chief
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`Federal Circuit Mediator Amend.10 The parties have agreed to this procedure as a term of the
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`6,384,850 and claim 1 of U.S. Pat. No. 6,871,325. As discussed above, this Court has already
`ruled that the verdicts and judgment of invalidity do not collaterally estop Ameranth as to
`claims not asserted at trial or which contain significantly different elements/terms than the
`previously asserted claims.
`10 If the appeal proceeds, it will involve, inter alia, challenges to the Court’s decisions on prior art status,
`evidence, jury instructions and verdict form, all of which facts, and relevant standard of review, were
`considered by Chief Mediator Amend in urging settlement to avoid an appeal of invalidity by Ameranth.
`11
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`Apple, Exhibit 1052, Page 12
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`Case 2:07-cv-00271-RSP Document 336 Filed 11/15/11 Page 13 of 14 PageID #: 19345
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`Settlement Agreement, and thus neither party will be prejudiced by vacating the invalidity verdicts and
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`judgment. Strangers to this litigation certainly have no right to complain if a verdict in a litigation in
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`which they played no part is vacated and which has not been shown to affect them.11
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`CONCLUSION
`Based on the foregoing analysis and objections, and in view of the Court’s equitable powers,
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`Ameranth requests that the Court deny Seamless’s request to file an amicus brief regarding vacatur of
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`the invalidity verdicts and judgment. A proposed order is submitted herewith.
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`This 15th day of November, 2011.
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`Respectfully submitted,
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`/s/ Michael C. Smith
`By:
`Michael C. Smith
`State Bar Number 18650410
`Email: michaelsmith@siebman.com
`Siebman, Burg, Phillips & Smith, L.L.P.
`113 East Austin Street
`Marshall, TX 75671
`(903) 938-8900 – Telephone
`(972) 767-4620 – Facsímile
`
`John W. Osborne
`josborne@lockelord.com
`Peter N. Fill
`pfill@lockelord.com
`James W. Gould
`jgould@lockelord.com
`Steven M. Purdy
`spurdy@lockelord.com
`Peter H. Noh
`pnoh@lockelord.com
`Locke Lord Bissell & Liddell LLP
`3 World Financial Center
`New York, NY 10281-2101
`(212) 415-8600 – Telephone
`(212) 303-2754 – Telecopier
`
`Attorneys for Plaintiff Ameranth, Inc.
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`11 In fact, vacating a verdict or judgment to facilitate a settlement is simply a recognition of a party’s
`legitimate challenge to a decision and that the issue should be left to another day in the event that there
`are proceedings involving other parties. The Federa