`
`Trials@uspto.gov
` Entered: March 21, 2016
`
`
`571.272.7822
`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 CBM2015-000821
`Patent 6,871,325 B1
`____________
`
`
`Before MEREDITH C. PETRAVICK, RICHARD E. RICE, and
`STACEY G. WHITE, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`
`
`DECISION ON REQUEST FOR REHEARING
`37 C.F.R. § 42.71(d)
`
`
`1 CBM2015-00097 has been consolidated with this proceeding.
`
`
`
`
`
`CBM2015-00082
`Patent 6,871,325 B1
`
`
`I. INTRODUCTION
`Apple Inc. et al. (“Petitioner”) filed a Petition requesting covered
`business method patent review of claims 11–13 and 15 of U.S. Patent No.
`6,871,325 B1 (Ex. 1003, “the ’325 patent”). Paper 1 (“Pet.”). On
`September 1, 2015, we entered a Decision instituting covered business
`method patent review of U.S. Patent No. 6,871,325 B1 (Ex. 1003, “the ’325
`patent”) based upon the sole ground of claims 11–13 and 15 being
`unpatentable over DeLorme.2 Paper 13, 30 (“Dec. to Inst.”); see also Paper
`15, 4.
`On September 15, 2015, Patent Owner filed a Request for Rehearing
`asking the Board to reconsider its Decision. Paper 16 (“Req.”). Patent
`Owner requests that we reconsider our decision to institute covered business
`method patent review on the ground of claims 11, 12, and 15 being
`unpatentable over DeLorme.
`For the reasons discussed below, we deny Patent Owner’s request as
`to claims 11 and 15 and grant Patent Owner’s request as to claim 12.
`
`
`II. DISCUSSION
`A. Standard of Review
`When rehearing a decision on petition, the Board will review the
`decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of
`discretion may be determined if a decision is based on an erroneous
`interpretation of law, if a factual finding is not supported by substantial
`
`
`2 DeLorme et al., U.S. Patent No. 5,948,040 (issued Sept. 7, 1999) (Ex.
`1024).
`
`2
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`CBM2015-00082
`Patent 6,871,325 B1
`evidence, or if the decision represents an unreasonable judgment in weighing
`relevant factors. See Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed.
`Cir. 2004).
`The party challenging the decision has the burden of showing a
`decision should be modified. 37 C.F.R. § 42.71(d). In its Request for
`Rehearing, the dissatisfied party must (1) specifically identify all matters the
`party believes the Board misapprehended or overlooked and (2) identify the
`place where each matter was previously addressed. Id.
`
`
`B. Analysis
`i. Claims 12 and 15
`Patent Owner contends that we erroneously instituted trial on
`
`independent claim 12 because the Petition only challenges claims 11, 13,
`and 15, not claim 12, based upon obviousness over DeLorme. Req. 4–5.
`
`Patent Owner is correct that claim 12 was not challenged in the
`Petition and should not have been included in the instituted ground. See Pet.
`52–62; Paper 8, 2 (“Petitioner clarified that claim 12 is not included in the
`ground based upon obviousness over DeLorme and that the reference to
`claim 12 on pages 62 and 63 [of the Petition] was a typographical or clerical
`error.”).
`
`In our Decision, we analyzed independent claims 11–13, with respect
`to the ground based upon DeLorme, as a group due to the similarity of these
`claims.3 See Dec. to Inst. 20–22. We modify our Decision to exclude claim
`12 from this analysis and the instituted ground based upon DeLorme.
`
`
`3 Independent claims 11–13 recite identical limitations except for requiring
`the synchronized data to relate to orders, relate to waitlists, or relate to
`reservations, respectively. See Ex. 1003, col. 17, l. 4–col. 18, l. 32.
`
`3
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`CBM2015-00082
`Patent 6,871,325 B1
`
`Patent Owner also contends that we erroneously instituted trial on
`dependent claim 15 because our Decision was based upon arguments and
`evidence related to claim 12. Req. 6–7.
`
`Patent Owner’s contention is misplaced. As discussed above, we
`analyzed independent claims 11–13 as a group. Claim 15 is a multiple
`dependent claim as it depends from “claim 11, 12, or 13” and our analysis
`was not based upon arguments and evidences related only to claim 12. See
`Dec. to Inst. 27. Our analysis of claim 15 with respect to DeLorme
`addresses the additional element recited by claim 15 and does not rely only
`upon its dependency from claim 12. See id.
`
`We are not persuaded by Patent Owner that we abused our discretion
`in determining that there is a reasonable likelihood that claim 15 is
`unpatentable over DeLorme. We decline to modify our Decision with
`respect to claim 15 as it depends from claims 11 and 13.
`
`
`ii. Claim 11
`Claim 11 recites “wherein the synchronized data relates to orders.”
`
`Patent Owner contends that we erroneously instituted trial on the ground of
`claim 11 being obvious over DeLorme. Req. 7–12. According to Patent
`Owner, we construed the claimed order to be an order for a restaurant meal
`and DeLorme does not disclose an order for a restaurant meal. Req. 7
`(citing Dec. to Inst. 13).
`
`Patent Owner contention is misplaced. On page 13 of our Decision,
`we determined that claim 1 of the ’325 patent satisfied the financial product
`or service requirement for being a covered business method patent. Dec. to
`Inst. 12–13. In that regard, we stated “[w]e are persuaded by Petitioner that
`ordering relates to ordering a restaurant meal, which is at least incidental or
`
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`CBM2015-00082
`Patent 6,871,325 B1
`complementary to the sale of the meal.” Id. at 13; see Pet. 6–7. Contrary to
`Patent Owner’s contention, this is not a construction of the term “order” as
`recited by claim 1 or claim 11.
`We did not construe claim 11 to require the claimed order to be an
`order for a restaurant meal or preclude the claimed order from being other
`types of orders. Although claim 11 encompasses an order for a restaurant
`meal, as described in the ’325 patent, claim 11 does not require the “order”
`to be an order for a restaurant meal.
`We, thus, are not persuaded by Patent Owner that we abused our
`discretion in determining that there is a reasonable likelihood that claim 11
`is unpatentable over DeLorme.
`
`
`III. CONCLUSION
`Patent Owner’s Request for Rehearing as to claims 11 and 15 is
`denied. Patent Owner’s Request as to claim 12 is granted. Accordingly, we
`modify our Decision to institute covered business method patent review as to
`claims 11, 13, and 15, and not as to claim 12, of the ’325 patent on the
`ground of obviousness over DeLorme.
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s Request for Rehearing as to claim 12
`is granted and as to claims 11 and 15 is denied.
`
`5
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`CBM2015-00082
`Patent 6,871,325 B1
`
`
`PETITIONER:
`
`James M. Heintz
`Robert C. Williams
`Ryan W. Cobb
`ameranthCBMService@dlapiper.com
`robert.williams@dlapiper.com
`ryan.cobb@dlapiper.com
`
`PATENT OWNER:
`
`John Osborne
`Michael Fabiano
`josborne@osborneipl.com
`mdfabiano@fabianolawfirm.com
`
`
`6