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 REPLY BRIEF IN SUPPORT OF PATENT
`
`OWNER’S MOTION TO EXCLUDE PURSUANT TO 37 C.F.R. § 42.64(c)
`
`
`
`
`
`
`
`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 REPLY BRIEF IN SUPPORT OF PATENT
`
`OWNER’S MOTION TO EXCLUDE PURSUANT TO 37 C.F.R. § 42.64(c)
`
`
`
`
`
`
`
`1 CBM2015-00096 has been consolidated with this proceeding.
`
`
`
`CBM2015-00080
`
`
`I.
`
`THE UNCITED PARAGRAPHS OF EXHIBIT 1070 AND
`
`PETITIONER’S UNCITED EXHIBITS SHOULD BE EXCLUDED.
`
`As discussed in Ameranth’s Motion, paragraphs 1-4, 18, 19, 22-24, 33, 37,
`
`38, 41-51, 55, 60-63, 65, 67-70, 78-93 and 95 of Exhibit 1070 (Dr. Turnbull’s
`
`reply declaration) should be excluded as irrelevant and improper under 37
`
`C.F.R. § 42.6(a)(3) because they are not discussed or even cited to in the Reply
`
`Brief. Exhibits 1078-1082 are irrelevant for the same reason. Petitioner responds
`
`by arguing that “there is no requirement in this proceeding… that Petitioner must
`
`cite to each and every paragraph in an expert declaration to satisfy the relevance
`
`requirements of the Federal Rules of Evidence” and makes essentially the same
`
`argument with respect to its uncited exhibits. (Pap. 35, pp. 2, 9-11, 13.)
`
`However, Petitioner not only ignores the fact that it completely failed to
`
`establish any relevancy of the uncited paragraphs and exhibits in its Reply Brief,
`
`but Petitioner ignores 37 C.F.R. § 42.23(b), which provides in part that “[a]ll
`
`arguments for the relief requested in a motion must be made in the motion.”
`
`Petitioner further fails to address cases cited in Ameranth’s Motion, such as
`
`Conopco, Inc. dba Unilever v. The Procter & Gamble Company, IPR2013-00510
`
`(Pap. 9, pp. 8-9, declining to consider information presented in a supporting
`
`declaration, but not discussed in a petition). In so doing, Petitioner takes the
`
`untenable position that the uncited paragraphs of Exhibit 1070 could not have been
`
`
`
`-1-
`
`
`
`CBM2015-00080
`
`
`incorporated by reference because they “were not cited in the Reply.” [Emphasis
`
`original] (Pap. 35, p. 4.) Petitioner argues that citing to Dr. Turnbull’s
`
`supplemental declaration in a “narrowly tailored” fashion (i.e., Petitioner only cites
`
`to a few paragraphs and leaves numerous paragraphs completely undiscussed and
`
`uncited) does not violate any rules but somehow the completely undiscussed and
`
`uncited portions of the declaration remain relevant.
`
`But clearly not citing the paragraphs at all is a more egregious violation of
`
`the intent of the rule against incorporation by reference (37 C.F.R. § 42.6(a)(3))
`
`than simply citing to the paragraphs without sufficient discussion. Further, if
`
`Petitioner’s position is that the uncited paragraphs are not incorporated by
`
`reference, then Petitioner has completely failed to establish their relevance as the
`
`paragraphs would not even be incorporated into the Reply Brief at all.
`
`Petitioner also makes a similarly nonsensical argument with respect to the
`
`uncited exhibits - conceding that they were not cited in the Reply Brief but arguing
`
`that they are relevant because they are cited in Dr. Turnbull’s reply declaration.
`
`However, Petitioner’s position is nothing more than an additional attempt to
`
`improperly incorporate by reference even more material via the declaration.
`
`Further demonstrating Petitioner’s nonsensical position, Petitioner made the
`
`exact same challenge to several of Ameranth’s exhibits. (Pap. 31, pp. 12-13.) In
`
`its Motion to Exclude, Petitioner argued “Patent Owner’s Corrected Response does
`
`
`
`-2-
`
`
`
`CBM2015-00080
`
`
`not cite or mention these Exhibits”… “[t]hus, [the exhibits] are inadmissible as
`
`irrelevant under FRE 401 and 402.” (Pap. 31, pg. 13.) Plainly, Petitioner is trying
`
`to “have its cake and eat it too.”
`
`As predicted by Ameranth in its Motion (Pap. 33, p. 4), Petitioner only now
`
`belatedly attempts to explain the relevance of the uncited paragraphs2 and uncited
`
`exhibits in its Opposition. But, again, if Petitioner believed the evidence to be
`
`relevant, Petitioner should have included any discussion or argument pertaining to
`
`the evidence it wanted to make in its Reply Brief. See 37 C.F.R. § 42.23(b).
`
`II. EXHIBITS 1071-1073 and 1080-1082 ARE HEARSAY.
`
`Petitioner argues it “does not rely on [Exhibits 1071-1073] for the truth of
`
`the statements asserted therein”, but rather “as evidence of what they would
`
`describe to a POSITA.” (Pap. 35, p. 7.) Petitioner claims it relies upon the
`
`exhibits “for the fact that hospitality industry publications have used the term
`
`‘hospitality’ in a particular manner.” (Id.) Likewise, Petitioner argues Exhibits
`
`1080-1081 are “relied upon by Dr. Turnbull as evidence that ‘push’ technology
`
`
`2 Petitioner cites to numerous paragraphs of Dr. Turnbull’s declaration to argue
`
`relevance, but nearly half of the paragraphs it now cites to are paragraphs that were
`
`cited in the Reply and not challenged by Ameranth. (Pap. 35, p. 2.) This further
`
`underscores the lack of relevance of the uncited paragraphs.
`
`
`
`-3-
`
`
`
`CBM2015-00080
`
`
`was known, and that a POSITA would have found it obvious to add such
`
`functionality to DeLorme’s system.” (Pap. 35, p. 12.)
`
`However, Petitioner cites to Exhibits 1071-1073 to support its assertion that
`
`WCU exchanged data is “hospitality data under the proper BRI construction.”
`
`(Pap. 24, p. 8.) The exhibits are cited for what the documents state regarding the
`
`scope of the hospitality industry, i.e., that the hospitality industry is defined as
`
`Petitioner asserts. Similarly, Exhibits 1080-1081 are cited in Dr. Turnbull’s
`
`supplemental reply declaration3 to support an argument that certain “push
`
`technology” was available at a certain timeframe. (See, e.g., Exh. 1070 ¶ 76.)
`
`Thus, the exhibits are used for the truth of the matters asserted therein, and
`
`are inadmissible hearsay.
`
`
`
`Petitioner also argues that the exhibits meet the residual hearsay exception,
`
`but Petitioner does little more than just repeat the elements of FRE 807 without
`
`providing any real analysis as to why or specifically how the exhibits would meet
`
`the exception. (See, e.g., Pap. 35, pp. 7-8, 14-15.)
`
`
`
`
`3 As discussed above, Exhibits 1080-1081 are not even cited in the Reply Brief and
`
`are therefore irrelevant. They are also irrelevant because they are used to support
`
`Petitioner’s new argument, improperly introduced on reply, via the declaration.
`
`
`
`-4-
`
`
`
`CBM2015-00080
`
`
`III. EXHIBITS 1071-1073 AND 1080-1082 ARE NOT AUTHENTICATED.
`
`Petitioner argues that “the evidence demonstrates that Exhibits 1071-1073
`
`are what Petitioner claims them to be, i.e. webpage printouts.” (Pap. 35, p. 5.)
`
`Petitioner makes the same argument with respect to Exhibit 1082, another webpage
`
`printout. (Id., p. 14.) Petitioner bases its position on the untimely Declaration of
`
`Burt Lee,4 which states that he downloaded the webpages. But Ameranth does not
`
`challenge whether the documents were downloaded from particular websites, but
`
`rather questions the accuracy of the content of the webpages (e.g., Pap. 33, p. 6).
`
`Mr. Lee’s declaration does nothing to alleviate this concern.
`
`Additionally, Petitioner fails to make a sufficient showing to support its
`
`argument that Exhibits 1080-1081 are authenticated under FRE 901(b)(4), 902(6)
`
`and (7). (Pap. 35, pp. 11-12.)
`
`IV. CONCLUSION.
`
`As discussed herein and in Ameranth’s Motion, paragraphs 1-4, 18, 19,
`
`22-24, 33, 37, 38, 41-51, 55, 60-63, 65, 67-70, 78-93 and 95 of Exhibit 1070
`
`and Exhibits 1071-1073 and 1078-1082 should be excluded.
`
`
`
`
`4 Mr. Lee’s declaration should have been provided concurrently with the reply
`
`evidence it purports to authenticate and was never served on Ameranth, apparently
`
`because Petitioner’s counsel attached the wrong files to its service email.
`
`
`
`-5-
`
`
`
`CBM2015-00080
`
`
`
`April 27, 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
`
`
`
`
`
`-6-
`
`
`
`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 27, 2016 by causing said documents to be
`
`delivered via electronic mail, per agreement of the parties, to counsel for
`
`
`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
`
`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
`
`
`
`
`
`
`
`
`/Ethan M. Watts/
`
`
`
`
`
` April 27, 2016
`
`
`
`
`-7-
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
