UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`APPLE, INC., EVENTBRITE INC., STARWOOD HOTELS & RESORTS
`WORLDWIDE, INC., EXPEDIA, INC., FANDANGO, LLC,
`HOTELS.COM, L.P., HOTEL TONIGHT, INC., HOTWIRE, INC.,
`KAYAK SOFTWARE CORP., OPENTABLE, INC., ORBITZ, LLC, PAPA
`JOHN’S USA, INC., STUBHUB, INC., TICKETMASTER, LLC, LIVE
`NATION ENTERTAINMENT, INC., TRAVELOCITY.COM LP,
`WANDERSPOT LLC, AGILYSYS, INC., DOMINO’S PIZZA, INC.,
`DOMINO’S PIZZA, LLC, HILTON RESORTS CORPORATION,
`HILTON WORLDWIDE, INC., HILTON INTERNATIONAL CO., MOBO
`SYSTEMS, INC., PIZZA HUT OF AMERICA, INC., PIZZA HUT, INC.,
`and USABLENET, INC.,
`Petitioner
`
`v.
`
`AMERANTH, INC.
`Patent Owner
`
`____________
`
`Case CBM2015-000801
`Patent No. 6,384,850
`____________
`
`
`PATENT OWNER'S OBJECTIONS TO EVIDENCE SUBMITTED
`
`WITH PETITIONER’S REPLY BRIEF
`
`
`
`
`1 CBM2015-00096 has been consolidated with this proceeding.
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`APPLE, INC., EVENTBRITE INC., STARWOOD HOTELS & RESORTS
`WORLDWIDE, INC., EXPEDIA, INC., FANDANGO, LLC,
`HOTELS.COM, L.P., HOTEL TONIGHT, INC., HOTWIRE, INC.,
`KAYAK SOFTWARE CORP., OPENTABLE, INC., ORBITZ, LLC, PAPA
`JOHN’S USA, INC., STUBHUB, INC., TICKETMASTER, LLC, LIVE
`NATION ENTERTAINMENT, INC., TRAVELOCITY.COM LP,
`WANDERSPOT LLC, AGILYSYS, INC., DOMINO’S PIZZA, INC.,
`DOMINO’S PIZZA, LLC, HILTON RESORTS CORPORATION,
`HILTON WORLDWIDE, INC., HILTON INTERNATIONAL CO., MOBO
`SYSTEMS, INC., PIZZA HUT OF AMERICA, INC., PIZZA HUT, INC.,
`and USABLENET, INC.,
`Petitioner
`
`v.
`
`AMERANTH, INC.
`Patent Owner
`
`____________
`
`Case CBM2015-000801
`Patent No. 6,384,850
`____________
`
`
`PATENT OWNER'S OBJECTIONS TO EVIDENCE SUBMITTED
`
`WITH PETITIONER’S REPLY BRIEF
`
`
`
`
`1 CBM2015-00096 has been consolidated with this proceeding.
`
`
`
`
`
`Per 37 C.F.R. § 42.64, Patent Owner Ameranth, Inc. ("Patent Owner")
`
`hereby objects to the exhibits and other evidence submitted by Petitioner with its
`
`Reply Brief as indicated below. The grounds for objection are as follows:
`
`CBM2015-00080
`
`
`Petitioner’s Evidence
`
`Exhibit 1069
`
`
`Exhibit 1070
`
`
`Exhibit 1071
`
`
`
`
`
`Grounds for Objection
`
`Outside the Scope Permitted with a Reply. The
`exhibit is not permitted to be submitted with a reply,
`because it could have been presented in a prior filing.
`37 C.F.R. § 42.23(b); Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48756-48773, at 48767.
`
`Outside the Scope Permitted with a Reply. The
`declaration included many new arguments and
`theories that are not permitted to be submitted with a
`reply, because they could have been presented in a
`prior filing. 37 C.F.R. § 42.23(b); Office Patent
`Trial Practice Guide, 77 Fed. Reg. 48756-48773, at
`48767; see also Intri-Plex Technologies, Inc., et al.
`v. Saint-Gobain Performance Plastics Rencol
`Limited, IPR2014-00309, Paper 83, pgs 12 – 14.
`
`Relevance. Because the declaration is not discussed
`in Petitioner’s Reply Brief and is merely
`incorporated by reference in violation of 37 C.F.R. §
`42.6(a)(3), it is not relevant to any issue in this
`proceeding and any probative value of the
`declaration is substantially outweighed by unfair
`prejudice and waste of time. Fed. R. Evid. 401-403;
`see also Conopco, Inc. dba Unilever v. The Procter
`& Gamble Company, IPR2013-00510, Paper 9, pgs 8
`- 9; Juniper Networks, Inc. v. Brixham Solutions,
`Ltd., IPR2014-00425, Paper 16, at Footnote 1; Cisco
`Systems, Inc. v. C-Cation Technologies, LLC,
`IPR2014-00454, Paper 12, pgs 7 – 10.
`
`Outside the Scope Permitted with a Reply. The
`
`-1-
`
`
`
`
`
`Exhibit 1072
`
`
`Exhibit 1073
`
`
`CBM2015-00080
`
`
`exhibit is not permitted to be submitted with a reply,
`because it could have been presented in a prior filing.
`37 C.F.R. § 42.23(b); Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48756-48773, at 48767.
`
`Hearsay. The statements in the exhibit used by
`Petitioner to prove the truth of matters described
`therein are hearsay. Fed. R. Evid. 801(c).
`
`Authentication. Petitioner has not provided sufficient
`evidence to establish that the exhibit is a true and
`correct copy of what Petitioner claims it to be. Fed.
`R. Evid. 901(a).
`
`Outside the Scope Permitted with a Reply. The
`exhibit is not permitted to be submitted with a reply,
`because it could have been presented in a prior filing.
`37 C.F.R. § 42.23(b); Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48756-48773, at 48767.
`
`Hearsay. The statements in the exhibit used by
`Petitioner to prove the truth of matters described
`therein are hearsay. Fed. R. Evid. 801(c).
`
`Authentication. Petitioner has not provided sufficient
`evidence to establish that the exhibit is a true and
`correct copy of what Petitioner claims it to be. Fed.
`R. Evid. 901(a).
`
`Outside the Scope Permitted with a Reply. The
`exhibit is not permitted to be submitted with a reply,
`because it could have been presented in a prior filing.
`37 C.F.R. § 42.23(b); Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48756-48773, at 48767.
`
`Hearsay. The statements in the exhibit used by
`Petitioner to prove the truth of matters described
`therein are hearsay. Fed. R. Evid. 801(c).
`
`Authentication. Petitioner has not provided sufficient
`
`
`
`-2-
`
`
`
`Exhibit 1074
`
`
`Exhibit 1075
`
`Exhibit 1077
`
`
`Exhibit 1078
`
`
`CBM2015-00080
`
`
`evidence to establish that the exhibit is a true and
`correct copy of what Petitioner claims it to be. Fed.
`R. Evid. 901(a).
`
`Outside the Scope Permitted with a Reply. The
`exhibit is not permitted to be submitted with a reply,
`because it could have been presented in a prior filing.
`37 C.F.R. § 42.23(b); Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48756-48773, at 48767.
`
`Outside the Scope Permitted with a Reply. The
`exhibit is not permitted to be submitted with a reply,
`because it could have been presented in a prior filing.
`37 C.F.R. § 42.23(b); Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48756-48773, at 48767.
`
`Outside the Scope Permitted with a Reply. The
`exhibit is not permitted to be submitted with a reply,
`because it could have been presented in a prior filing.
`37 C.F.R. § 42.23(b); Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48756-48773, at 48767.
`
`Outside the Scope Permitted with a Reply. The
`exhibit is not permitted to be submitted with a reply,
`because it could have been presented in a prior filing.
`37 C.F.R. § 42.23(b); Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48756-48773, at 48767.
`
`Relevance. Because the exhibit is not discussed or
`even cited in the Petitioner’s Reply Brief, it is not
`relevant to any issue in this proceeding and any
`probative value of the exhibit is substantially
`outweighed by unfair prejudice and waste of time.
`Fed. R. Evid. 401-403.
`
`Further, the inclusion of these institution decisions
`from the parallel, but not joined, Starbucks petition
`against the same patent is an unauthorized attempt to
`effectively achieve ‘joinder’ with these petitions,
`when such joinder has not been requested in
`
`
`
`-3-
`
`
`
`CBM2015-00080
`
`
`accordance with the AIA rules. Petitioners have
`already sought ‘joinder’ with these Starbucks
`petitions in the proceedings of yet another petition of
`their own, and those proceedings are independent as
`well and, therefore, the inclusion of these institution
`decisions as an exhibit with the reply is improper for
`this additional reason.
`
`Outside the Scope Permitted with a Reply. The
`exhibit is not permitted to be submitted with a reply,
`because it could have been presented in a prior filing.
`37 C.F.R. § 42.23(b); Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48756-48773, at 48767.
`
`Relevance. Because the exhibit is not discussed or
`even cited in the Petitioner’s Reply Brief, it is not
`relevant to any issue in this proceeding and any
`probative value of the exhibit is substantially
`outweighed by unfair prejudice and waste of time.
`Fed. R. Evid. 401-403.
`
`Further, the inclusion of these institution decisions
`from the parallel, but not joined, Starbucks petition
`against the same patent is an unauthorized attempt to
`effectively achieve ‘joinder’ with these petitions,
`when such joinder has not been requested in
`accordance with the AIA rules. Petitioners have
`already sought ‘joinder’ with these Starbucks
`petitions in the proceedings of yet another petition of
`their own, and those proceedings are independent as
`well and, therefore, the inclusion of these institution
`decisions as an exhibit with the reply is improper for
`this additional reason.
`
`
`
`Outside the Scope Permitted with a Reply. The
`exhibit is not permitted to be submitted with a reply,
`because it could have been presented in a prior filing.
`37 C.F.R. § 42.23(b); Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48756-48773, at 48767.
`
`Exhibit 1079
`
`Exhibit 1080
`
`
`
`-4-
`
`
`
`CBM2015-00080
`
`
`
`Hearsay. The statements in the exhibit used by
`Petitioner to prove the truth of matters described
`therein are hearsay. Fed. R. Evid. 801(c).
`
`Authentication. Petitioner has not provided sufficient
`evidence to establish that the exhibit is a true and
`correct copy of what Petitioner claims it to be. Fed.
`R. Evid. 901(a).
`
`Relevance. Because the exhibit is not discussed or
`even cited in the Petitioner’s Reply Brief, it is not
`relevant to any issue in this proceeding and any
`probative value of the exhibit is substantially
`outweighed by unfair prejudice and waste of time.
`Fed. R. Evid. 401-403.
`
`Outside the Scope Permitted with a Reply. The
`exhibit is not permitted to be submitted with a reply,
`because it could have been presented in a prior filing.
`37 C.F.R. § 42.23(b); Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48756-48773, at 48767.
`
`Hearsay. The statements in the exhibit used by
`Petitioner to prove the truth of matters described
`therein are hearsay. Fed. R. Evid. 801(c).
`
`Authentication. Petitioner has not provided sufficient
`evidence to establish that the exhibit is a true and
`correct copy of what Petitioner claims it to be. Fed.
`R. Evid. 901(a).
`
`Relevance. Because the exhibit is not discussed or
`even cited in the Petitioner’s Reply Brief, it is not
`relevant to any issue in this proceeding and any
`probative value of the exhibit is substantially
`outweighed by unfair prejudice and waste of time.
`Fed. R. Evid. 401-403.
`
`Outside the Scope Permitted with a Reply. The
`
`-5-
`
`Exhibit 1081
`
`Exhibit 1082
`
`
`
`
`
`CBM2015-00080
`
`
`exhibit is not permitted to be submitted with a reply,
`because it could have been presented in a prior filing.
`37 C.F.R. § 42.23(b); Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48756-48773, at 48767.
`
`Hearsay. The statements in the exhibit used by
`Petitioner to prove the truth of matters described
`therein are hearsay. Fed. R. Evid. 801(c).
`
`Authentication. Petitioner has not provided sufficient
`evidence to establish that the exhibit is a true and
`correct copy of what Petitioner claims it to be. Fed.
`R. Evid. 901(a).
`
`Relevance. Because the exhibit is not discussed or
`even cited in the Petitioner’s Reply Brief, it is not
`relevant to any issue in this proceeding and any
`probative value of the exhibit is substantially
`outweighed by unfair prejudice and waste of time.
`Fed. R. Evid. 401-403.
`
`
`
`
`-6-
`
`
`
`
`
`
`
`CBM2015-00080
`
`
`
`March 30, 2016 Respectfully Submitted,
`
`/John W. Osborne/
`John W. Osborne
`Lead Counsel for Patent Owner
`USPTO Reg. No. 36,231
`OSBORNE LAW LLC
`33 Habitat Lane
`Cortlandt Manor, NY 10567
`josborne@osborneipl.com
`Tel.: 914-714-5936
`Fax: 914-734-7333
`
`Michael D. Fabiano
`Back-up Counsel for Patent Owner
`USPTO Reg. No. 44,675
`FABIANO LAW FIRM, P.C.
`12526 High Bluff Drive, Suite 300
`San Diego, CA 92130
`mdfabiano@fabianolawfirm.com
`Tel.: 619-742-9631
`
`
`
`
`
`-7-
`
`
`
`CBM2015-00080
`
`
`
`CERTIFICATE OF SERVICE
`
` I
`
` certify that, in accordance with 37 C.F.R. §42.6, a true and correct copy
`
`of the foregoing was served on March 30, 2016 by causing said documents to be
`
`delivered via electronic mail, per agreement of the parties, to counsel for
`
`Petitioner at the following addresses:
`
`
`James M. Heintz
`jim.heintz@dlapiper.com
`DLA Piper LLP (US)
`11911 Freedom Drive, Suite 300
`Reston, VA 20190-5602
`Tel: 703-773-4148
`
`Robert C. Williams
`robert.williams@dlapiper.com
`DLA Piper LLP (US)
`401 B Street Suite 1700
`San Diego, CA 92101
`(619) 669-2820
`
`
`
`
`
`/Michael D. Fabiano/
`
`
`
` March 30, 2016
`
`
`
`
`
`
`-8-
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