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.
`
`
`
`
`
`
`
`
`1 CBM2015-00096 has been consolidated with this proceeding.
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`WEST\269172386.1
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`
`
`Case CBM CBM2015-000801
`Patent 6,384,850
`
`
`
`PETITIONERS’ REPLY IN SUPPORT OF MOTION TO EXCLUDE
`PATENT OWNER’S EVIDENCE UNDER 37 C.F.R. § 42.64
`
`
`
`
`
`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.
`
`
`
`
`
`
`
`
`1 CBM2015-00096 has been consolidated with this proceeding.
`
`WEST\269172386.1
`
`
`
`Case CBM CBM2015-000801
`Patent 6,384,850
`
`
`
`PETITIONERS’ REPLY IN SUPPORT OF MOTION TO EXCLUDE
`PATENT OWNER’S EVIDENCE UNDER 37 C.F.R. § 42.64
`
`
`
`I.
`
`INTRODUCTION
`
`PO’s Opposition fails to identify any legitimate grounds for admitting the
`
`challenged exhibits. For example, while PO now contends that certain exhibits
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`were cited for non-hearsay purposes, PO’s Response cited the exhibits for the truth
`
`of matters asserted, e.g. that the ’850 patent had been licensed. PO also fails to
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`show that any of the exhibits fall within any hearsay exception, and identifies no
`
`evidence showing that the exhibits are authentic. While PO asks the Board
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`exercise its discretion to admit this evidence despite these failings, the Board
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`should decline PO’s invitation to ignore the Federal Rules and to excuse its lack of
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`diligence in marshalling evidence that meets the Rules’ requirements.
`
`II. RESPONSE TO PATENT OWNER’S OPPOSITION
`A. Exhibits 2021, 2023, 2025, 2027, 2030-2035, 2038-2039 and 2054-
`2056 Should Be Excluded As Inadmissible Hearsay under FRE 801.
`1.
`PO contends that “many of the exhibits are not cited for the ‘truth of the
`
`PO Relies on These Exhibits for Hearsay Purposes
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`matter asserted,’ but rather, were cited for other non-hearsay purposes.” Opp. at 3.
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`But, PO relies upon statements in each of these Exhibits to establish the truth of
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`matters stated therein. Mot. at 6-9. For example, Exhibit 2025 comprises press
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`releases relating to purported patent licenses. While PO contends that it relies
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`upon these press releases as “showing industry praise and the state of mind of the
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`CEOs of the licensees,” (Opp. at 4.) PO’s Response cites Exhibit 2025 as
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`purportedly evidencing that the patent has been licensed, the identity of licensees,
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`and that certain statements were made by CEOs of these licensees. POR at 65.
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`PO’s contentions that it relies on the remaining Exhibits for non-hearsay
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`purposes are similarly flawed. Mot. at 7-8. And, contrary to PO’s suggestion,
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`evidence is not admissible simply because it is offered as secondary considerations
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`evidence. See, e.g. Google, Inc. v. Meiresonne, IPR2014-01188, Paper No. 38 at
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`10 (excluding secondary considerations evidence as inadmissible hearsay).
`
`These Exhibits Do Not Fall Within Any Hearsay Exception
`
`2.
`PO fails to show that any hearsay exceptions apply. For example, PO
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`contends that Exhibit 2039 is not hearsay, because it includes statements attributed
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`to a Papa John’s employee. Opp. at 5. However, showing that an employee’s
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`statement falls within the hearsay exception of FRE 801(d)(2) requires a showing
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`“based on evidence independent of the alleged hearsay” that the declarant is an
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`agent of the party. United States v. Portsmouth Paving Corp., 694 F.2d 312, 321
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`(4th Cir.1982). PO makes no such showing. Opp. at 5. PO further contends that
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`certain Exhibits fall within the “statement against interest” exception. Opp. at 5-6.
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`Yet, PO fails to show that any such statements were from unavailable declarants,
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`against any party’s interests, or otherwise satisfy either sub-clause of FRE
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`804(b)(3). PO further contends that its press releases fall within the business
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`records exception. Opp. at 7. However, PO fails to show that these press releases
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`satisfy any of the requirements of FRE 803(6)(a)-(d).
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`PO’s contention that these Exhibits fall within the “residual exception” of
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`FRE 807(a) (Opp. at 6-8.) is also flawed. While PO contends that these Exhibits
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`“are not subject to any reasonable challenge for untrustworthiness” (Opp. at 7-8),
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`many of the Exhibits lack any distinctive characteristics that reasonably suggest
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`trustworthiness. See, e.g. Exhibits 2033, 2039, 2055. Nor has PO provided any
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`evidence to confirm their trustworthiness. PO also fails to show the Exhibits are
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`more probative on the points for which they are offered than other evidence
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`obtainable through reasonable efforts. Indeed, PO had, but did not produce,
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`recordings from which the FTSEC transcripts were allegedly transcribed. Opp. at
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`7 n. 4. Likewise, PO possesses patent license agreements, which are more
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`probative evidence of its licenses than the hearsay press releases upon which PO
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`relies. Admitting evidence with little probative value and questionable
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`trustworthiness does not serve the interests of justice.
`
`B.
`Exhibits 2024, 2050 and 2051 Should Be Excluded As
`Inadmissible Hearsay under FRE 801(c)
`
`PO does not dispute that the annotations in these Exhibits are hearsay. Opp.
`
`at 9-10. Instead, PO contends that the Exhibits should not be excluded because the
`
`annotations are attorney argument. Id. However, while attorney argument may be
`
`proper in a brief, PO improperly seeks to introduce these annotations as evidence.
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`Nat'l Air Traffic Controllers Ass'n v. Dep't of Transp., 960 F.2d 156 (Fed. Cir.
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`WEST\269172386.1
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`3
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`1992) (“Attorney argument does not constitute evidence.”).
`
`PO’s waiver argument also should be rejected. PO contends that Petitioner
`
`should have originally objected to these Exhibits if there was any doubt about who
`
`authored the annotations. Opp. at 10. However, given that PO’s expert relied
`
`upon the annotations for his opinion that its product practiced the claims, Petitioner
`
`reasonably concluded that Dr. Weaver was the author, and not that, e.g., vague
`
`language was used to obfuscate authorship. Indeed, an expert’s opinion must be
`
`based on facts and evidence – not attorney argument. See FRE 702(b), (c) (expert
`
`testimony must be “based on sufficient facts or data;” and be “the product of
`
`reliable principles and methods”). See also Daubert v. Merrell Dow Pharm., Inc.,
`
`509 U.S. 579, 595 (1993) (expert opinions must be based on facts “of a type
`
`reasonably relied upon by experts in the particular field.”)
`
`PO further contends that Petitioner should have objected to the Exhibits at
`
`Dr. Weaver’s deposition or within 5 days thereafter. However, 37 C.F.R. 42.64(a)
`
`is not applicable. Exhibits 2024, 2050 and 2051 were submitted with PO’s
`
`Response, and thus not “deposition evidence.” And, by the time Petitioner learned
`
`the annotations were hearsay, 5 business days had long since passed. Mot. at 11.
`
`Thus, Petitioner requests that the 5 day requirement set forth in 37 C.F.R. 42.64(b)
`
`be waived. At a minimum, because PO now admits that the annotations are merely
`
`attorney argument, they should be accorded little, if any, weight.
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`4
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`C. Exhibits 2036, 2037, 2040-2049 and 2053 Should Be Excluded As
`Irrelevant Under FRE 401-403
`
`PO’s Opposition does not address Petitioner’s Motion to strike these
`
`Exhibits as irrelevant. See generally Opp. Because PO has failed to establish that
`
`any of these Exhibits are relevant, they should be excluded.
`
`D. Exhibits 2032-2033, 2035, 2039 and 2054-2055 Should Be
`Excluded As Lacking Authentication Under FRE 901
`
`PO offers no evidence that these Exhibits are authentic. Although evidence
`
`sufficient to establish authentication is slight, the authentication requirement
`
`cannot be ignored altogether. See TRW Auto. U.S. LLC v. Magna Elecs. Inc.,
`
`IPR2014-01347, Paper No. 5 at 6-12. None of PO’s cited cases support its
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`contention that these Exhibits are sufficiently authenticated. Opp. at 11-14. For
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`example, Exhibit 2055 is an alleged presentation Ameranth made to Starbucks.
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`However, it includes no distinctive characteristics that suggest that it was an
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`authentic copy of the presentation, as opposed to, e.g., a modified draft, or a draft
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`presentation for a meeting that never occurred. Each of the remaining Exhibits
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`suffers the same flaws. Unlike many of PO’s cited cases, PO has not offered any
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`testimony or other evidence to authenticate these Exhibits. And, unlike the prison
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`records at issue in Thomas, these Exhibits reflecting private meetings or
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`presentations do not have distinctive characteristics that reasonably suggest their
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`authenticity. Opp. at 13 (citing Thomas, 2014 WL 5419418 at *3).
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`5
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`Dated: April 27, 2016
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`
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`Respectfully submitted,
`
`
`
`
`
` /James M. Heintz/
`James M. Heintz
`Registration Number 41,828
`DLA Piper LLP (US)
`11911 Freedom Drive, Suite 300
`Reston, VA 20190
`(703) 773-4148
`
`Robert C. Williams
`DLA Piper LLP (US)
`401 B Street Suite 1700
`San Diego, CA 92101
`(619) 699-2820
`
`Attorneys for Petitioner
`Apple Inc., Eventbrite Inc., and Starwood
`Hotels & Resorts Worldwide, Inc.
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`WEST\269172386.1
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`6
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`
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`Richard S. Zembek
`Reg. No. 43,306
`Norton Rose Fulbright US LLP
`1301 McKinney, Suite 5100
`Houston, Texas 77010
`Tel: 713-651-5151
`Fax: 713-651-5246
`richard.zembeck@nortonrosefulbright.com
`
`Gilbert A. Green
`Reg. No. 48,366
`Norton Rose Fulbright US LLP
`98 San Jacinto Boulevard, Suite 1100
`Austin, Texas 78701
`Tel: 512-474-5201
`Fax: 512-536-4598
`bert.greene@nortonrosefulbright.com
`
`Attorneys for Petitioner:
`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.
`
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`WEST\269172386.1
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`7
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`CERTIFICATE OF SERVICE
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`
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`The undersigned hereby certifies that a copy of the foregoing
`
`PETITIONERS’ REPLY IN SUPPORT OF MOTION TO EXCLUDE PATENT
`
`OWNER’S EVIDENCE UNDER 37 C.F.R. § 42.64 was served on April 27, 2016,
`
`via electronic mail, per agreement of the parties, to counsel for the following
`
`Michael D. Fabiano
`FABIANO LAW FIRM, P.C.
`12526 High Bluff Drive, Suite 300
`San Diego, CA 92130
`Tel.: 619-742-9631
`mdfabiano@fabianolawfirm.com
`
` /James M. Heintz/
`James M. Heintz
`
`Reg. No. 41,828
`
`Counsel for Petitioner
`
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`By:
`
`addresses:
`
`
`
`John W. Osborne
`OSBORNE LAW LLC
`33 Habitat Lane
`Cortlandt Manor, NY 10567
`Tel.: 914-714-5936
`Fax: 914-734-7333
`josborne@osborneipl.com
`
`
`
`
`
`WEST\269172386.1 1
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