throbber
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
`U.S. Patent No. 6,384,850
`____________
`
`Case CBM2015-000822
`U.S. Patent No. 6,871,325
`____________
`
`TRANSCRIPT OF MARCH 31, 2016 CONFERENCE CALL
`
`
`
`
`
`1 CBM2015-00096 has been consolidated with this proceeding.
`
`2 CBM2015-00097 has been consolidated with this proceeding.
`
`

`
`CBM2015-00080
`CBM2015-00082
`
`
`TRANSCRIPT OF MARCH 31, 2016 CONFERENCE CALL
`
`
`
`Attached hereto is a copy of the court reporter's transcript of the March 31,
`
`2016 conference call with the Board and counsel for the parties in CBM2015-
`
`00080, -00082, -00091, and -00099.
`
`
`
`Dated: April 15, 2016
`
`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
`
`
`
`- 1 -
`
`
`

`
`Case CBM2015-00091; CBM2015-00099; CBM2015-00080; CBM2015-00082
`Conference Call
`April 7, 2016
`
`1
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`——————————————————————————————
`STARBUCKS CORPORATION | Case CBM2015-00091
` Petitioner, | Patent 6,384,850 B1
` v. |
`AMERANTH, INC. | Case CBM2015-00099
` Patent Owner. | Patent 6,871,325 B1
`——————————————————————————————
`APPLE, INC., ET AL. | Case CBM2015-00080
` Petitioner, | Patent 6,384,850 B1
` v. |
`AMERANTH, INC. | Case CBM2015-00082
` Patent Owner. | Patent 6,871,325 B1
`——————————————————————————————
`
` Thursday, March 31, 2016
` 2:30 p.m. EST
`
` Teleconference before the Patent Trial and Appeals
`Board, Judge Meredith C. Petravick presiding, the
`proceedings being recorded stenographically by Jonathan
`Wonnell, RMR, a Registered Professional Court Reporter
`(NCRA #835577) and Notary Public of the State of
`Minnesota, and transcribed under his direction.
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`

`
`Case CBM2015-00091; CBM2015-00099; CBM2015-00080; CBM2015-00082
`Conference Call
`April 7, 2016
`
` A P P E A R A N C E S O F C O U N S E L
` (All participants appearing by phone)
`
`2
`
` On behalf of the Patent Trial and Appeal Board:
` MEREDITH C. PETRAVICK, ESQ., RICHARD E.
` RICE, ESQ., and STACEY G. WHITE, ESQ.,
` Administrative Patent Judges
`
` On behalf of Starbucks Corporation:
` BING AI, PH.D., ESQ.
` PATRICK J. McKEEVER, ESQ.
` Perkins Coie LLP
` 11988 El Camino Real, Suite 200
` San Diego, California 92130-3334
` (858) 720-5700
` ai@perkinscoie.com
` pmckeever@perkinscoie.com
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`202-220-4158
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`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`

`
`Case CBM2015-00091; CBM2015-00099; CBM2015-00080; CBM2015-00082
`Conference Call
`April 7, 2016
`
`3
`
` A P P E A R A N C E S (Cont'd)
`
` On behalf of Ameranth, Inc.:
` MICHAEL D. FABIANO, ESQ.
` Fabiano Law Firm
` 12520 High Bluff Drive, Suite 300
` San Diego, California 92130
` (619) 742-9631
` mdfabiano@fabianolawfirm.com
`
` On behalf of Expedia, Inc.:
` GILBERT A. GREENE, ESQ.
` Norton Rose Fulbright
` 98 San Jacinto Boulevard, Suite 1100
` Austin, Texas 78701
` (512) 474-5201
` bert.greene@nortonrosefulbright.com
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`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`

`
`Case CBM2015-00091; CBM2015-00099; CBM2015-00080; CBM2015-00082
`Conference Call
`April 7, 2016
`
`4
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` A P P E A R A N C E S (Cont'd)
`
` On behalf of Apple Inc.:
` JAMES M. HEINTZ, ESQ.
` DLA Piper
` One Fountain Square
` 11911 Freedom Drive, Suite 300
` Reston, Virginia 20190-5602
` (703) 773-4000
` jim.heintz@dlapiper.com
` -- and --
` ROBERT C. WILLIAMS, ESQ.
` DLA Piper
` 401 B Street, Suite 1700
` San Diego, California 92101-4297
` (619) 699-2700
` robert.williams@dlapiper.com
`
`HENDERSON LEGAL SERVICES:
` JONATHAN WONNELL, RMR
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`202-220-4158
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`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`

`
`Case CBM2015-00091; CBM2015-00099; CBM2015-00080; CBM2015-00082
`Conference Call
`April 7, 2016
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` P R O C E E D I N G S
` JUDGE PETRAVICK: Good afternoon. This is
`Judge Petravick. With me on the phone is Judge White
`and Judge Rice. We're here for CBM2015-0091,
`CBM2015-00099, CBM2015-00080 and CBM2013-00082.
` Could I know who's on the line for the
`Patent Owner?
` MR. FABIANO: Yes. Good afternoon, Your
`Honor. This is Michael Fabiano representing the
`Patent Owner Ameranth Incorporated. Also on the line
`representing Ameranth is John Osbourne. I believe we
`also have a court reporter on the line as well.
` JUDGE PETRAVICK: Thank you. And for
`Petitioner Apple?
` MR. AI: Your Honor, good afternoon. This
`is Bing Ai on behalf of Starbucks Corporation. Also
`with me is my co-counsel, Patrick McKeever.
` JUDGE PETRAVICK: And for Petitioner in
`the 80/82 cases, Apple, is there anybody on the line
`for them?
` MR. WILLIAMS: Yes, Your Honor. I'm
`sorry. Go ahead.
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`

`
`Case CBM2015-00091; CBM2015-00099; CBM2015-00080; CBM2015-00082
`Conference Call
`April 7, 2016
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` MR. HEINTZ: Sorry, Your Honor. This is
`James Heintz and with me on the phone is Robert
`Williams both with the law firm of DLA Piper
`representing the Petitioners in the 80 and 82 CBMs.
` JUDGE PETRAVICK: All right.
` MR. GREENE: Your Honor, this is Burt
`Greene, backup counsel for Petitioner in the CBM2015
`96 and 97 cases, which have been joined with the 80
`and 82 cases.
` JUDGE PETRAVICK: Thank you.
` All right. Is there anybody else on the
`line?
` Mr. Fabiano, you requested this conference
`call to discussion a motion to strike and a possible
`certificate so we will hear from you first.
` MR. FABIANO: Yes. Let me first delineate
`the review that we're asking -- the release that we
`are asking for in each of these cases.
` In the 00091 and 99 matters, we are
`seeking leave to file a motion to strike and to file
`surreply briefs in each of those because the reply
`briefs and exhibits raise new issues and include new
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`

`
`Case CBM2015-00091; CBM2015-00099; CBM2015-00080; CBM2015-00082
`Conference Call
`April 7, 2016
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`evidence that could have been presented in a prior
`filing and exceed the permissible scope of a
`petitioners' reply under the applicable regulations
`and the Board's case law, and additionally because
`the replies and the evidence and exhibits submitted
`therewith are in violation of the regulations and the
`Board's rules on incorporation by reference.
` With respect to CBM2015-00080 and 00082,
`the Patent Owner is seeking leave to file motions to
`strike in each of those two and to file a surreply in
`each of those two because the Petitioner's reply
`briefs and exhibits raise new issues and include new
`evidence that could have been presented in a prior
`filing and exceed the permissible scope of a reply.
` And that's a summary of the release that
`we are seeking from the Board. Let me address the
`00091 and 00099 petitions first.
` As the Board held in the IPR cases of
`Samsung Electronics versus Queens University of
`Kingston -- the lead case is IPR 2015-00584, in which
`the Board granted leave to file motions to strike and
`surreply briefs. There's a lot of similarities with
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`

`
`Case CBM2015-00091; CBM2015-00099; CBM2015-00080; CBM2015-00082
`Conference Call
`April 7, 2016
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`this case.
` The replies, as in the Samsung versus
`Queens case, are introducing new evidence that is
`part of the prima facie case presented by the
`Petitioners alleging obviousness. They're
`essentially swapping out evidence from their petition
`and trying to replace it with evidence introduced for
`the first time in a reply, evidence on several
`issues, among them the definition of hospitality,
`that were the focus of the petitions and evidence
`that should have been introduced with the petitions
`to support their asserted definition so that Patent
`Owner would have had the opportunity to address those
`pieces of evidence and those arguments in both the
`preliminary response and the patent owner full
`response.
` And we didn't get that opportunity because
`we were sandbagged with a 105-page reply declaration
`from their main expert and a brand-new expert with a
`19-page declaration and 40-something brand-new
`exhibits, again, exhibits that could have been
`introduced with the petition. And we're seeking
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`

`
`Case CBM2015-00091; CBM2015-00099; CBM2015-00080; CBM2015-00082
`Conference Call
`April 7, 2016
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`remedies of filing a motion to strike in each of
`these petitions and filing surreply briefs.
` Additionally on the 00091 and 99
`petitions, there are blatant violations of the
`Board's prohibition on incorporation by reference.
`Just as one example, they have a -- with the reply
`they're including a 105-page declaration from the
`same expert that testified for them in the petition,
`Dr. Helal. Dr. Helal's name does not appear anywhere
`in their reply. They have a 105-page declaration.
`They don't even mention his name.
` There are several instances where they
`have a one-sentence summary assertion in the reply
`brief and a "see declaration number" cite to six or
`seven pages of expert testimony in the reply
`declaration. That's a clear violation of the Board's
`regulations, 37 C.F.R. § 42.6, and the Board's case
`law, including the Fidelity National Information
`cases at IPR2014-0049.
` Additionally, there are 31 cites to the
`Helal declaration -- to the Helal reply declaration
`in the reply brief and incorporating the 105-page
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`

`
`Case CBM2015-00091; CBM2015-00099; CBM2015-00080; CBM2015-00082
`Conference Call
`April 7, 2016
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`declaration. There are about 20-something exhibits
`in the 00091 and 00099 replies that are not even
`cited anywhere in the reply brief but are cited only
`in the reply declaration of Drs. Helal and/or Khan.
` JUDGE PETRAVICK: What would be the topic
`of your surreply?
` MR. FABIANO: The surreply would be to
`address issues raised in the replies in both cases.
` Let me -- if it's okay with the Board, let
`me stick first with the Starbucks petitions, 00091
`and 00099. The surreply would address both the new
`evidence regarding hospitality and the new theories
`of invalidity and would also address their new
`arguments regarding secondary considerations of
`non-obviousness.
` On the last point I'd like to point out
`that, as the Board is aware, the Patent Owner has the
`burden of proof on the secondary considerations
`issue, which provides further justification for
`having a surreply, particularly to issues that the
`Petitioner raised for the first time in their reply.
` JUDGE PETRAVICK: All right. Is that --
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`

`
`Case CBM2015-00091; CBM2015-00099; CBM2015-00080; CBM2015-00082
`Conference Call
`April 7, 2016
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`are you finished?
` MR. FABIANO: No. I'm sorry. I'm
`finished answering your question.
` JUDGE PETRAVICK: Okay.
` MR. FABIANO: If you don't have further
`questions, I have a couple more remarks regarding the
`Starbucks petition.
` JUDGE PETRAVICK: You can continue.
` MR. FABIANO: Okay. Thank you.
` Another reason that the reply evidence --
`that much of the reply evidence is improper is that
`much of it and similar evidence was included in the
`petition but they just decided to include a much
`larger quantity of it in their reply. For example,
`Starbucks included evidence in press releases
`regarding Ameranth patent licenses in their petition
`but decided to include 20 or 30 more exhibits
`regarding that in their reply, which, again, Ameranth
`hasn't had any opportunity to address or reply to in
`their response.
` JUDGE PETRAVICK: Okay.
` MR. FABIANO: As I mentioned previously,
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`

`
`Case CBM2015-00091; CBM2015-00099; CBM2015-00080; CBM2015-00082
`Conference Call
`April 7, 2016
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`they have a brand-new expert on hospitality issues,
`Dr. Khan, who appears for the first time in the reply
`brief. Again, it's an issue that was raised and
`discussed by Starbucks in the petition. It's an
`issue that's necessary to their argument because the
`hospitality definition provides a basis for arguing
`that their asserted prior art references are actually
`relevant prior art references that would be
`considered by a person of skill in the art.
` So, again, any such evidence regarding his
`definition of hospitality is central to their prima
`fascia case and under the Board's rules should have
`been included in the petition and not held back from
`the reply when the Patent Owner had no chance to
`reply to it.
` JUDGE PETRAVICK: In the PO response did
`you propose a different construction for hospitality?
` MR. FABIANO: I'm sorry? I didn't hear
`your question.
` JUDGE PETRAVICK: In the Patent Owner
`response did you come forward with a new claim
`construction for hospitality that wasn't in the --
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`

`
`Case CBM2015-00091; CBM2015-00099; CBM2015-00080; CBM2015-00082
`Conference Call
`April 7, 2016
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`that was different from what was in the petition?
` MR. FABIANO: Yes. Our definition of
`hospitality is not the same as the argument made by
`the Petitioners, correct.
` JUDGE PETRAVICK: So this was presented
`for the first time in the patent owner response?
` MR. FABIANO: Our -- you mean the fact
`that we disagree with their definition? Yeah.
`Necessarily -- I'm sorry.
` JUDGE PETRAVICK: Was this put forward for
`the first time in the patent owner response?
` MR. FABIANO: Yes. Necessarily our
`position, since it disputes theirs, was put forward
`in the patent owner response and not --
` JUDGE PETRAVICK: So is the petitioner's
`reply your definition of what hospitality was put
`forward in the patent owner response?
` MR. FABIANO: They're, quote/unquote,
`saying they disagree with us, but they're disagreeing
`with evidence that they should have used to support
`their own petition in the first place. I'm sorry.
`With --
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`

`
`Case CBM2015-00091; CBM2015-00099; CBM2015-00080; CBM2015-00082
`Conference Call
`April 7, 2016
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` JUDGE PETRAVICK: How would they be able
`to disagree with something you put forward in the
`patent owner response in the petition in the first
`place?
` MR. FABIANO: Because their evidence
`according to their own briefs purportedly supports
`the position that they took previously. You know,
`if -- just to put it in the abstract, if a party
`advances a claim construction position and supports
`it with one or two pieces of evidence in the
`petition, but they're supporting the exact same
`position with ten more pieces of evidence in a reply,
`they've -- by holding back those ten additional
`pieces of evidence for the reply, they have deprived
`the patent owner of the opportunity to respond to,
`critique, disagree with, those additional pieces of
`evidence. That's not fair and it's why a surreply is
`a proper remedy here.
` JUDGE PETRAVICK: So let me -- correct me
`if I'm wrong, if I understand your petition. What
`you're saying is in the Petitioner's reply the
`evidence goes beyond just disagreeing with the claim
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`

`
`Case CBM2015-00091; CBM2015-00099; CBM2015-00080; CBM2015-00082
`Conference Call
`April 7, 2016
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`construction you put forward but also includes
`evidence that not only goes to showing the dispute
`with your claim construction, but they put in
`additional evidence that further supports they're
`construction that they put forward in the patent
`owner's response. Is that correct?
` MR. FABIANO: Yes. And necessarily so.
`It's kind of an either/or position as far as the
`definition of hospitality. It's almost like is the
`light switch on or is it off. If they were
`contending hypothetically initially that the light
`switch was off, they're still contending in the reply
`that the light switch is off, but they're just
`introducing additional evidence that we haven't had
`an opportunity to respond to to support the same
`position they took in the petition for which they
`should have introduced all of this evidence at the
`same time.
` JUDGE PETRAVICK: I understand your point.
`Do you have any other -- you can continue on with
`your presentation -- or are you finished?
` MR. FABIANO: Let me add one more thing
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`

`
`Case CBM2015-00091; CBM2015-00099; CBM2015-00080; CBM2015-00082
`Conference Call
`April 7, 2016
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`regarding Starbucks. A motion to simply exclude
`evidence is not a sufficient remedy compared to the
`motion to strike or the surreply because, as the
`Board is well aware from its own precedent, the Board
`has held that a motion to exclude is not to be used
`to argue that the reply brief exceeded the proper
`scope of a reply or introduce new issues. The motion
`to exclude is to be used to address evidence that
`should not be considered or admitted only.
` So a motion to exclude is something that
`the patent owner might file, but it's not sufficient
`for the issues that we're raising here.
` JUDGE PETRAVICK: All right.
` MR. FABIANO: Would the Board like me to
`address the 00080 and 00082 requests for a leave?
` JUDGE PETRAVICK: Are the issues the same?
` MR. FABIANO: The issues are the same,
`Your Honor. I mean, the examples are different
`because they're different petitions and different
`pieces of evidence.
` JUDGE PETRAVICK: Well, why don't you tell
`me --
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`

`
`Case CBM2015-00091; CBM2015-00099; CBM2015-00080; CBM2015-00082
`Conference Call
`April 7, 2016
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` MR. FABIANO: But the grounds for relief
`are the same except that in the 00080 and 00082
`petitions, we have not -- with respect to those we
`have not raised the incorporation by reference
`arguments.
` JUDGE PETRAVICK: Okay. So why don't you
`give me just one example for the 80/82, your
`strongest example.
` MR. FABIANO: An example from the 88 --
`let me pull up the document, if I may. There are
`exhibits regarding -- there's a new theory raised by
`the Apple Petitioners in their reply regarding the
`use of push technologies as it relates to the
`asserted DeLorme reference. It's something that
`wasn't mentioned at all in their petition. And,
`again, it's a theory of why the Deloram reference is
`an invalidating or an obvious combination reference.
` And they have -- I believe it's three
`exhibits, 1080, 1081 and 1082 -- that purportedly
`show the viability of this push technology. And,
`again, it's a theory not raised in their petition but
`only in the reply.
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`

`
`Case CBM2015-00091; CBM2015-00099; CBM2015-00080; CBM2015-00082
`Conference Call
`April 7, 2016
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` JUDGE PETRAVICK: Did you raise push
`technology in your patent owner response?
` MR. FABIANO: We did not.
` JUDGE PETRAVICK: Do you have anything
`else before I turn to the Petitioners?
` MR. FABIANO: I've outlined the relief
`we've asked for and you may pass to the Petitioners
`at this time. Thank you.
` JUDGE PETRAVICK: We'll start with
`Petitioner for Starbucks. We'll hear from you now.
` MR. McKEEVER: Thank you, Your Honor.
`This is Patrick McKeever speaking for Petitioner
`Starbucks in the 91 and 99 proceedings.
` So based on Mr. Fabiano's explanation, it
`sounds to me like the two primary issues that he sort
`of called out were the first issue about that the
`definition of hospitality and then the second issue
`is really -- deals with evidence related to secondary
`considerations.
` On hospitality, I think Your Honor already
`asked the key question which is that Patent Owner did
`take a claim construction position in the patent
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`

`
`Case CBM2015-00091; CBM2015-00099; CBM2015-00080; CBM2015-00082
`Conference Call
`April 7, 2016
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`owner response and so we needed to respond to that
`and the only opportunity to do so was in the reply.
`And we did not -- Petitioner Starbucks did not
`propose a construction -- you know, a formal
`construction for hospitality or hospitality
`applications in the petition.
` Petitioner Starbucks' position was in the
`past and still is that this term should just have its
`ordinary meaning and Starbucks' position was that the
`car rental application discussed in the primary prior
`art reference, the Brandt reference, would be a
`hospitality application.
` Now, Patent Owner in their response came
`back, you know, and spent a substantial amount of
`pages -- I just about six or seven pages in their
`patent owner response devoted to what is part of
`hospitality and what is not part of the hospitality.
`So they had plenty of opportunity to address that
`issue. And in fact it was -- really Patent Owner was
`the one to raise that issue about the contours of,
`you know, hospitality.
` So in the Petitioner's reply we presented
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`

`
`Case CBM2015-00091; CBM2015-00099; CBM2015-00080; CBM2015-00082
`Conference Call
`April 7, 2016
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`evidence rebutting Patent Owner's characterization of
`what is the hospitality industry, what is not the
`hospitality industry. And that is a lot of the
`evidence that Mr. Fabiano has been referring to on
`the call today.
` So Starbucks' position -- Petitioner
`Starbucks' position on that is just the
`hospitality -- the interpretation of hospitality and
`the evidence in support of that is directly
`responsive to probably the primary argument that
`Patent Owner has raised in an attempt to distinguish
`the prior art in the 91 and 99 proceedings.
` So we believe that's properly -- you know,
`proper rebuttal, proper subject matter for reply.
`And, again, Patent Owner addressed this issue in
`detail, several pages of detail on this in the patent
`owner response. So I don't know why they would need
`an additional opportunity to present additional
`evidence when they've already made their argument and
`presented their evidence for their interpretation of
`hospitality in the patent owner response.
` The other main issue I'm hearing from
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`

`
`Case CBM2015-00091; CBM2015-00099; CBM2015-00080; CBM2015-00082
`Conference Call
`April 7, 2016
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`Mr. Fabiano relates to secondary considerations.
`Now, I think Mr. Fabiano acknowledged that Patent
`Owner has the burden of production for evidence of
`secondary considerations. There was expensive
`evidence offered in the patent owner response on
`that. The Patent Owner's expert, Dr. Weaver,
`provided a declaration that included an expensive
`discussion of the evidence of secondary
`considerations.
` And so Petitioner Starbucks responded to
`that evidence in its reply, presented rebuttal
`evidence to show that -- you know, for instance, that
`there's not a nexus with the product that they're
`relying on, to show that there's no copying.
` I mean, one example I think that may be
`helpful for the Board is, you know, we asked Patent
`Owner what some of the exhibits are that they're
`concerned about and they want to strike. And they
`identified three exhibits, which were Exhibits 1103
`to 1105. And sorry. I don't mean to say these are
`the only exhibits they identified, but these were in
`their list.
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`

`
`Case CBM2015-00091; CBM2015-00099; CBM2015-00080; CBM2015-00082
`Conference Call
`April 7, 2016
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` And so Exhibits 1103 through 1105 are web
`pages that discuss the Starbucks mobile order and pay
`application. That's the mobile application that
`allows you to order, you know, a drink from Starbucks
`ahead of time using your smartphone or other tablet
`or whatever.
` The reason that we brought that evidence
`up is because in Patent Owner's response they alleged
`as secondary considerations that Starbucks copied its
`mobile order and pay application from Patent Owner.
`And so we used these web pages to show that the
`actual way that the application works does not
`even -- or does not resemble either the patents or
`the information that Patent Owner claims it provided
`to Starbucks.
` And so I don't understand how we could
`have possibly included evidence like this because we
`ever even saw an allegation that Starbucks copied
`anything from Patent Owner, let alone that that is,
`you know, evidence of secondary considerations of
`non-obviousness for these claims.
` And so, you know, a lot of the evidence --
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`

`
`Case CBM2015-00091; CBM2015-00099; CBM2015-00080; CBM2015-00082
`Conference Call
`April 7, 2016
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`at least based on the, you know, what Patent Owner
`has identified to Starbucks prior to today's call, it
`seems like it sort of the falls into these two
`buckets primarily of hospitality and the evidence
`that we provided on that and then the evidence that's
`responsive to their secondary considerations
`arguments.
` And, you know, for both of those, again,
`our position would be that they're proper and well
`within the scope of a reply and directly responsive
`to positions raised by Patent Owner in their patent
`owner response.
` JUDGE PETRAVICK: How much of the new
`evidence relates to secondary considerations? It
`sounds like you filed a considerable amount.
` MR. McKEEVER: I don't know off the top of
`my head. I have a list in front of me of the
`exhibits that Patent Owner objected to. And, I mean,
`by my sort of looking at it quickly, it looks like
`about half to two-thirds relates to evidence that was
`responsive to secondary considerations, and most of
`remainder here relates to the hospitality issue.
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`

`
`Case CBM2015-00091; CBM2015-00099; CBM2015-00080; CBM2015-00082
`Conference Call
`April 7, 2016
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` MR. FABIANO: This is Mr. Fabiano. I
`think that's accurate.
` JUDGE PETRAVICK: Petitioner Starbucks, do
`you have anything else for us?
` MR. AI: Your Honor --
` MR. McKEEVER: Sorry. Go ahead.
` MR. AI: Your Honor, this is Bing Ai for
`Starbucks. Let me just follow up Mr. McKeever's
`comments regarding the way we presented the arguments
`and the evidence are entirely responsive to the
`Patent Owner's replies. And we are very mindful
`about Rule 23 that we need to be -- we cannot fix our
`original evidence.
` So we point out how each Patent Owner
`raised in their reply we point out -- in our response
`we point out exactly how we've addressed it in our
`original petition or in our original evidence. Now
`we point out because they raised a new issue in their
`response, there we point out what new evidence and
`arguments were directed to those new evidence and
`arguments raised by the Patent Owner in their reply.
` And we can see that in every instance in
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`

`
`Case CBM2015-00091; CBM2015-00099; CBM2015-00080; CBM2015-00082
`Conference Call
`April 7, 2016
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`terms of the hospitality application definition, in
`terms of secondary considerations, and we can -- Your
`Honor, you can look at the way our response is
`structured. You can see that it's clearly laid out.
` So I just want to point out that the
`Patent Owner's argument that we improperly
`incorporated by reference original petition and
`evidence is false and incorrect because we are simply
`directing the Board's attention to how our original
`evidence directly addresses all these issues and
`that's all it is.
` We did not anywhere use the words
`"incorporation by reference" or anything. We simply
`pointed out where in the record all of this evidence
`is located for the convenience of the Board and for
`the original record of this trial.
` JUDGE PETRAVICK: All right. We'll move
`to Petitioner for Apple.
` MR. FABIANO: Your Honor, this is
`Mr. Fabiano. Perhaps it would be best if I addressed
`the Starbucks argument after their discussion and the
`Apple argument after their discussion.
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`

`
`Case CBM2015-00091; CBM2015-00099; CBM2015-00080;

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