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 CBM2015-00080
`U.S. Patent No. 6,384,850
`____________
`
`
`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`PATENT OWNER AMERANTH’S SUR-REPLY BRIEF
`
`
`
`
`
`____________
`
`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 CBM2015-00080
`U.S. Patent No. 6,384,850
`____________
`
`
`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`PATENT OWNER AMERANTH’S SUR-REPLY BRIEF
`
`
`
`
`
`
`CBM2015-00080
`
`
`
`Petitioner ignored most of Ameranth’s strong secondary considerations
`
`evidence and the arguments they did make should be given no weight by the
`
`Board, because they are factually incorrect, and merely attorney argument. Rather
`
`than seek to rebut the actual evidentiary arguments of John Harker1 and
`
`Ameranth's expert Dr. Weaver, Petitioner resorted to ad hominem attacks on their
`
`credibility and objectivity, all of which are baseless and wrong, as shown herein.
`
`
`
`Ameranth’s very strong secondary factors evidence has a nexus with the
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`"synchronization, integration, and consistency" which reflect the inventive merits
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`which were identified by the Board itself in CBM 2014-00015, Paper 20 (Inst.
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`Dec.), and with the Board’s construction of "synchronization" yielding
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`"consistency", which confirms the nexus to be both accurate and correct. (See POR
`
`at 55-56.) Dallas Improv owner Tom Castillo, a May 1999 eyewitness, confirmed
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`he was "won over" by Ameranth's demonstration of its 21CR System and that that
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`the "total solution" of 21CR was one that no other company could match, i.e., the
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`inventive technology was not available elsewhere. (Exh. 1012, pp. 694-695.) The
`
`
`1 At the time of Mr. Harker’s testimony, in April 2010, Symbol no longer even
`
`existed; it had been acquired by Motorola in early 2007. Further, as Mr. Harker
`
`testified and an even cursory review of his testimony would have shown, Mr.
`
`Harker had left Symbol eight years earlier in 2002. (Harker Depo at p. 13, lines
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`11-15. ) Thus, he was/is an entirely objective eyewitness.
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`- 1 -
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`CBM2015-00080
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`testimony of John Harker, a second eyewitness from that May 1999 NRA Show,
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`confirmed the overwhelming hospitality industry reception from the introduction
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`of Ameranth's 21CR technology: "… the Ameranth booth was packed … for four
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`straight days, not only with restaurateurs, but with also the vendor community, the
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`POS vendors, other hospitality technology providers. And, you know, I knew they
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`would be busy. I was shocked at how busy they truly were." (Exh. 2022 at p.
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`107, lines 16-25, emphasis added.) This undisputed market reaction upon the
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`introduction of a new product would not have occurred for an "obvious" product,
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`or for "existing technology".
`
`
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`Dr. Weaver’s report shows that these eyewitness reports strengthened his
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`opinion and he relied on them as evidence of what was novel and inventive in May
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`1999 (thus correctly relying upon contemporaneous assessment of the novelty of
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`the invention, and not on an assessment made by hindsight in 2016). "The
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`extraordinary market reaction which occurred contemporaneously with the
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`21CR product introductions in May 1999 and the objective observations of the
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`independent eyewitness John Harker, reinforce and confirm my opinion, beyond
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`the written evidentiary record, which itself is vast and multi-faceted." (Exh. 2019, ¶
`
`143, emp. added.) Thus Apple is off-base in claiming Dr. Weaver should have
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`"conducted an independent investigation" of the code from May 1999, while Apple
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`ignored the actual eyewitness reports of Messrs. Harker and Castillo. Petitioner's
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`- 2 -
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`CBM2015-00080
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`criticisms of Dr. Weaver having reviewed "annotated" versions of the May 1999
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`Brochure and 2000 Improv Articles are equally frivolous. Of course they were
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`annotated as to the `850 claim limitations after May 1999, because the '850 patent
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`didn’t issue until three years later in May 2002. While criticizing Ameranth for
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`"mapping" claim limitations against its diagram and figures, Petitioner failed to
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`mention that they annotated or mapped evidentiary documents, in red ink, in their
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`own petition. See Petition, p. 34.
`
`
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`Dr. Weaver reviewed all of Ameranth’s "annotations" and confirmed them
`
`to be accurate and correct, again a normal review activity of an expert. Further, he
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`didn’t rely on the May 1999 brochure alone, but on it and the other three 21CR
`
`documents together: "The three documents, must be considered together with
`
`the original 21CR Product Brochure, from May 1999." (Exh. 2019, ¶ 96.) Also, it
`
`is not disputed that the Challenged Claims' "communications control module" and
`
`"API" are present in 21CR, as confirmed by the evidence presented, including the
`
`Fall 1999 case study on 21CR. "Ameranth’s hand-held computers communicate
`
`with Ameranth’s communication control module and other interface
`
`modules…" and the "other interface modules" also reflect the claimed API. (Exh.
`
`1012, p. 622, 3rd col., emp. added.)
`
`
`
`Petitioner falsely argues that PO has referred to its "menu wizard" as its only
`
`"breakthrough technology". But in truth, as PO explained in its Response, and as
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`- 3 -
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`CBM2015-00080
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`shown in Exh. 1012, p. 541, 21CR also includes PO's inventive "synchronous 21st
`
`Century Communications technology innovations", i.e. the "synchronization,
`
`integration and consistency", inclusive of the claimed communications control
`
`module and API, that indisputably has nexus to the Challenged Claims.
`
`
`
`Petitioners try to diminish the importance of the two Improv Ticketing
`
`system awards, frivolously arguing that ‘event ticketing’ is an ‘unclaimed feature’
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`thus isn’t even a ‘hospitality’ application. Not only is event ticketing a ‘hospitality
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`application’ (1) ticketing is specifically detailed in the specification, (2) the Improv
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`Ticketing system was/is the "21CR system", see (Exh. 1012, pp. 694-695) and (3)
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`the Improv/21CR Ticketing system also included "food ordering". Petitioner also
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`argues (Reply at 24), that other features, such as "reservations" ,"frequent dining"
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`and "waitlists/table management" are also not "hospitality applications." This is
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`erroneous – they are indeed hospitality applications, and are disclosed as such in
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`the specification and prosecution history.
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`Ameranth's 46 patent licenses are for the closely-related patents in the same
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`family of which the '850 patent is the parent. The press releases of the patent
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`licenses (which were jointly issued with the licensees), see Exh. 2025, specifically
`
`reference the '850 and '325 patents and mobile/web food ordering/reservations for
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`restaurants, referring to these patents as "essential to achieving a totally
`
`synchronized system." Further, the included Agilysys license, for example,
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`- 4 -
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`CBM2015-00080
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`specifically includes a license to all claims of the '850 and '325 patents, including
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`all of the Challenged Claims. (Exh. 2025, pp. 11-12.)
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`
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`Petitioners don’t even try to rebut the many instances of copying set forth in
`
`the POR, only addressing one of them, i.e., Starbucks' "Mobile Order & Pay"
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`(Reply at 25), and Petitioner's arguments on that are erroneous. Contrary to the
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`Reply, "ordering ahead" was specifically disclosed in the patent spec: "A
`
`further aspect of the invention is the use of the menus generated in
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`accordance with the described technique to place orders from wireless
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`remote handheld devices or from remote locations through the internet."
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`('850 Patent, col 12, lines 1-4.) "Thus, a person with little expertise can
`
`"page through" to complete a transaction with the POS interface." (Col. 10,
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`lines 20-21.) Also, "remote ordering" is from afar and done "ahead", i.e., the
`
`user interface in Figure 7, for handhelds and web pages, was intended to
`
`require "little expertise". Petitioner also erroneously argues that "ordering
`
`ahead" is disclosed in DeLorme, but DeLorme teaches no such thing and
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`further, one doesn’t "order" a "reservation".
`
`
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`For these reasons and those set forth in the POR, its expert report and
`
`exhibits, there is substantial, convincing objective evidence of nonobviousness, in
`
`addition to the strong "primary" reasons for nonobviousness set forth in the POR.
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`
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`- 5 -
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`
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`Dated: April 5, 2016
`
`CBM2015-00080
`
`Respectfully Submitted,
`
` /s/ 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
`
`
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`- 6 -
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`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 April 5, 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
`DLA Piper LLP (US)
`11911 Freedom Drive, Suite 300
`Reston, VA 20190-5602
`jim.heintz@dlapiper.com
`
`
`Richard S. Zembek
`NORTON ROSE FULBRIGHT
`1301 McKinney, Suite 5100
`Houston, TX 77010
`richard.zembek@nortonrosefulbright.com
`
`
`
`Robert C. Williams
`DLA Piper LLP (US)
`401 B Street Suite 1700
`San Diego, CA 92101
`robert.williams@dlapiper.com
`
`
`Gilbert A. Greene
`NORTON ROSE FULBRIGHT
`98 San Jacinto Boulevard, Suite 1100
`Austin, TX 78701
`bert.greene@nortonrosefulbright.com
`
` /s/ Michael D. Fabiano
`__________________________
`
`
`
`Dated: April 5, 2016
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`- 7 -
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