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 CBM2015-00082
`U.S. Patent No. 6,871,325
`____________
`
`
`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 CBM2015-00082
`U.S. Patent No. 6,871,325
`____________
`
`
`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
`
`
`
`
`
`
`CBM2015-00082
`
`
`
`Most of Ameranth’s strong secondary considerations evidence was ignored
`
`in Petitioner's Reply. The arguments they did make should be given no weight
`
`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
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`
`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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`CBM2015-00082
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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: "… Ameranth was arguably recognized as the
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`overall most innovative company/technology at the May 1999 NRA Show in
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`Chicago, with hundreds of customers coming to its booth….Keith McNally and I
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`introduced the 21CR system at the October 1999 European Restaurant Show in
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`London and ... 21CR was awarded the "Innovation of the Year" award for the
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`entire European Hospitality Technology Market. Ameranth was selected first
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`ahead of hundreds of different technology companies and this special and
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`prestigious award further validated the uniqueness of Ameranth’s technology and
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`its innovative vision." (Exh. 2022 at p. 172, emp. added.) This undisputed market
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`reaction upon the introduction of a new product would not have occurred for an
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`"obvious" product, 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,
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`CBM2015-00082
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`beyond the written evidentiary record, which itself is vast and multi-faceted."
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`(Exh. 2019, ¶ 143, emp. added.) Thus Apple is off-base in claiming Dr. Weaver
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`should have "conducted an independent investigation" of the code from May 1999,
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`while Apple ignored the actual eyewitness reports of Messrs. Harker and Castillo.
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`Petitioner's criticisms of Dr. Weaver having reviewed "annotated" versions of the
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`May 1999 Brochure and 2000 Improv Articles are also frivolous. Dr. Weaver
`
`didn’t rely on the May 1999 brochure alone, he relied upon that plus the other three
`
`21CR documents. (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 had referred to its "menu wizard" as its
`
`only "breakthrough technology". But in truth, as PO explained in its Response,
`
`and as 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. Also, Ameranth disclosed hospitality wait-listing in the
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`- 3 -
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`CBM2015-00082
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`specification, and any POSA would know that such functionality often includes
`
`restaurant table management functions too.
`
`
`
`Ameranth's 46 patent licenses are for the closely-related patents in the same
`
`family of which the '850 patent is the parent. The press releases of the patent
`
`licenses were jointly issued with the licensees, see Exh. 2025, and specifically
`
`reference the '850 and '325 patents and mobile/web food ordering/reservations for
`
`restaurants, referring to these patents as "essential to achieving a totally
`
`synchronized system." Further, the included Agilysys license specifically
`
`includes a license to all claims of the '850 and '325 patents. (Exh. 2025, pp. 11-12.)
`
`and confirms an $80,000 annual payment (8th year of payments), and the $200/HH
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`fee is identical to the $200/HH fee that Micros, party to related petitions, offered in
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`seeking to secure exclusive IP rights for the 21CR technology in 2000, see Exh.
`
`1012, p. 665-674. And, the vast majority of Ameranth’s 44 licenses occurred
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`outside litigation. Since October 2013, when the first CBMs were filed against
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`Ameranth’s patents, no new suits have been filed or threatened, and yet 18
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`additional licensees have independently made their own decisions to license this
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`Ameranth family of patents.
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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. Further, Dr. Weaver (Exh. 2019, ¶ 131) testified that he reviewed the
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`evidence submitted with the POR, including the emails, Power Point slides and
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`- 4 -
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`CBM2015-00082
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`screenshots from Ameranth's 2006 presentation to Starbucks, and Starbucks' own
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`materials on its "Mobile Order & Pay" system, and concluded that Starbucks had
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`indeed copied the relevant features of the Challenged Claims as had the pizza
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`companies. This compelling expert testimony is unrebutted.
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`
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`As for failure of others, the POR shows that Food.com took a license from
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`Ameranth because its CEO admitted on July 15, 1999 to the "failures" in their
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`system (i.e., slowness, inefficiencies, and error prone), which existed because they
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`failed in solving these problems and needed Ameranth’s technology to solve them.
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`“Ameranth’s technology will help us to increase both the speed and the efficiency
`
`in transmitting orders to our partner restaurants and will significantly decrease our
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`margin of error’. (Exh. 1012, p. 609.) Further, Pizza Hut received Ameranth's
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`technical information in 2006, and then after receiving a technology award based
`
`from it in 2009 for their own new online/mobile ordering system, Pizza Hut’s CIO
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`admitted they had failed to achieve such a system a decade earlier: "We took a run
`
`at that in the late 1990’s but failed." (Exh. 2018, p. 5.)
`
`
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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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`- 5 -
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`Dated: April 5, 2016
`
`CBM2015-00082
`
`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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`CBM2015-00082
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`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
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`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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