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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`
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`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 CBM CBM2015-000821
`Patent 6,871,325
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`
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`PETITIONERS’ OPPOSITION TO PATENT OWNER’S MOTION TO
`EXCLUDE PURSUANT TO 37 C.F.R. § 42.64(c)
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`1 CBM2015-00097 has been consolidated with this proceeding.
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`I.
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`INTRODUCTION
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`Patent Owner (PO)’s motion to exclude (Paper 35, “Mot.”) should be
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`denied, because it fails to establish that any of the Exhibits submitted with
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`Petitioner’s Reply brief are inadmissible under the Federal Rules of Evidence
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`(F.R.E.). PO seeks to exclude portions of Petitioner’s expert declaration and cited
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`evidence as irrelevant, simply because this evidence is not cited in Petitioner’s
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`Reply brief. However, this is not the standard articulated by F.R.E. 401-403. This
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`evidence is relevant and admissible, because it demonstrates facts of consequence
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`to this proceeding, including the state of the art, how a person of ordinary skill in
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`the art (“POSITA”) would interpret the claims and how a POSITA would interpret
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`the prior art. PO also seeks to exclude various Exhibits on the grounds of
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`authentication or hearsay. However, PO ignores evidence demonstrating that the
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`challenged Exhibits are authentic or self-authenticating. PO also ignores that many
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`of the challenged Exhibits are not relied upon for the truth of any matters asserted,
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`and are therefore not hearsay. PO’s Motion should therefore be denied.
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`II. EXHIBIT 1070 SHOULD NOT BE EXCLUDED
`A.
`PO’s Relevance Objections Should Be Rejected
`PO contends that certain paragraphs of Exhibit 1070, the supplemental
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`declaration of Petitioner’s expert Dr. Don Turnbull, are irrelevant under F.R.E.
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`401-402, simply because the paragraphs were not cited in Petitioner’s Reply Brief.
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`Mot. at 2-3 (objecting to Exhibit 1070, ¶¶ 1-4, 18, 19, 22-24, 33, 37, 38, 41-51, 55,
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`60-63, 65, 67-70, 78-93 and 95). However, there is no requirement in this
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`proceeding (and PO cites none) that Petitioner must cite to each and every
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`paragraph in an expert declaration to satisfy the relevance requirements of the
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`Federal Rules of Evidence.
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`Rather, F.R.E. 401 provides:
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`Evidence is relevant if: (a) it has any tendency to make a fact more or less
`probable than it would be without the evidence; and (b) the fact is of
`consequence in determining the action.
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`Exhibit 1070 sets forth in detail Dr. Turnbull’s analyses and opinions
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`regarding PO’s Responses and the testimony of its expert, Dr. Alfred Weaver. See
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`generally Exhibit 1070. Dr. Turnbull’s analyses and opinions are directly relevant
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`to issues in this proceeding, because they have a tendency to make various facts of
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`consequence in determining this action more probable. For example, Dr. Turnbull
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`provides analysis and opinion relating to (1) how a POSITA would interpret the
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`Challenged Claims in view of the plain meaning of claim limitations and
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`disclosures in the patent specification (e.g. ¶¶ 6-12, 19-20, 27-31), (2) how a
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`POSITA would interpret disclosures in the DeLorme reference (e.g. ¶¶ 21, 24-27,
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`41-48, 60-66), (3) inherent disclosures in the DeLorme reference (e.g. ¶¶ 50-54),
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`(4) whether various modifications to the DeLorme system would have been
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`obvious to a POSITA (e.g. ¶¶ 71-77), and (5) whether PO’s cited evidence
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`demonstrate non-obviousness of the claimed inventions (e.g. ¶¶ 78-96).
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`Moreover, the relevance of Dr. Turnbull’s opinions to particular issues of
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`consequence in this proceeding is plainly evident from the declaration itself, and
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`from Petitioner’s Reply brief. For example, Section I of Exhibit 1070, entitled
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`“Analysis of PO’s Responses Regarding Patentability of the ’850 and ’325
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`Patents,” includes ten sub-sections, each specifically identifying the specific issues
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`to which the paragraphs within the sub-section relate. See generally Exhibit 1070.
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`Furthermore, the sub-section headings mirror similar headings in Petitioner’s
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`Reply brief. Compare, Exhibit 1070 §§ I.A-G, I-J with Reply §§ II.A-H, J.
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`Because the entirety of Exhibit 1070 is directed to Dr. Turnbull’s analyses
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`and opinions which have a tendency to make facts of consequence in determining
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`this action more probable, Exhibit 1070 is relevant under F.R.E. 401. Indeed, PO
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`does not dispute the relevance of much of Dr. Turnbull’s testimony. Exhibit 1070
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`is therefore admissible under F.R.E. 402 (“Relevant evidence is admissible…”).
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`PO also objects to paragraphs 1-4, 18, 19, 22-24, 33, 37, 38, 41-51, 55, 60-
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`63, 65, 67-70, 78-93 and 95 in Exhibit 1070 on the ground that any probative value
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`is substantially outweighed by unfair prejudice and waste of time under F.R.E.
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`403, because these paragraphs were not specifically discussed or cited in
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`Petitioner’s Reply brief. Mot. at 3. However, because the entirety of Exhibit 1070
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`is directly responsive to arguments raised in PO’s Response, this Exhibit is neither
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`unfairly prejudicial nor a waste of time.
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`Exhibit 1070 Was Not Incorporated By Reference
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`B.
`Contrary to PO’s contention, Petitioner did not incorporate by reference any
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`portion of Exhibit 1070 in its Reply brief. Mot. at 4. As PO acknowledges, the
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`paragraphs of Dr. Turnbull’s supplemental declaration which PO contends were
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`incorporated by reference were not cited in the Reply. Id. Accordingly, these
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`paragraphs could not include arguments incorporated by reference in contravention
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`of 37 C.F.R. § 42.6(a)(3).
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`Moreover, the prior Board decisions cited by PO confirm that Petitioner’s
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`narrowly tailored citations to Dr. Turnbull’s declaration are appropriate. Mot. at 4-
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`5. In these cases, the Board stated that it was improper to incorporate by reference
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`arguments from an expert declaration (e.g. by citing large portions of the
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`declaration), because allowing such a practice would allow Petitioners to subvert
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`the strict page limits set forth in the Board’s regulations. For example, in Cisco
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`Systems, the Petition included numerous footnotes, that collectively cited to large
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`portions of an expert declaration. Cisco Systems, Inc. v. C-Cation Tech., LLC,
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`IPR2014-00454, Paper No. 12 at 7-8. The Board determined that citing “large
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`portions of another document, without sufficient explanation… amounts to
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`incorporation by reference.” Id. at 8. However, Petitioner’s Reply brief did not
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`cite large swaths of Dr. Turnbull’s declaration. It did the opposite, narrowly
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`tailoring its citations to targeted portions of Dr. Turnbull’s testimony for the
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`propositions cited, consistent with the Board’s guidance in Cisco Systems.
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`III. EXHIBITS 1071-1073 SHOULD NOT BE EXCLUDED
`A. Exhibits 1071-1073 Are Sufficiently Authenticated
`PO’s motion to exclude Exhibits 1071-1073 as lacking authentication should
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`be rejected. “The standard for authenticating evidence is ‘slight’ and may be
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`satisfied by ‘evidence sufficient to support a finding that the item is what the
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`proponent claims it is.’” United States v. Turner, 718 F.3d 226, 232 (3rd Cir.
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`2013). Here, the evidence demonstrates that Exhibits 1071-1073 are what
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`Petitioner claims them to be, i.e. webpage printouts.
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`PO has not offered any reason to believe that Exhibits 1071-1073 are not
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`authentic. As PO itself recognizes, these Exhibits are “printouts of webpages
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`downloaded from the websites economywatch.com, besthospitalitydegrees.com,
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`and blogs.msdn.com, respectively.” Mot. at 6. Indeed, the location of the
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`webpages from which each of these Exhibits was downloaded is printed at the
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`bottom of each page of Exhibits 1071-1073.2
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`2 In response to authentication objections for several of its Exhibits, Patent Owner
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`similarly identified URLs identifying the online location of the Exhibits. See, e.g.
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`Exhibit 1084 at 3-6.
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`The authenticity of Exhibits 1071-1073 is further confirmed by the
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`Declaration of Mr. Bert Lee, produced as supplemental evidence in response to
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`PO’s objections. See Exhibit 1085. Mr. Lee testified that he is an IP Specialist at
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`DLA Piper, and that he filed Exhibits 1071-1073 with the Board’s electronic filing
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`system. Id., ¶ 2. Mr. Lee further testified that Exhibits 1071-1073 were true and
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`correct copies of online articles, and that he confirmed that the text of the articles
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`in Exhibits 1071-1073 was identical to the text of the articles as they appeared
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`online. Id. at ¶¶ 3-5.
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`Thus, Exhibits 1071, 1072 and 1073 are properly authenticated under FRE
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`901(b)(1), 901(b)(4), and/or 901(b)(3). See Perfect 10, Inc. v. Cybernet Ventures,
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`Inc., 213 F. Supp.2d 1146, 1154 (C.D. Cal. 2002) (declarations that printouts were
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`“true and correct” copies of internet pages, “in combination with circumstantial
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`indicia of authenticity (such as the dates and web addresses)” would support
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`reasonable juror belief that documents are what proponent claims); see also
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`Johnson–Wooldridge v. Wooldridge, 2001 WL 838986 at *4 (Ohio App. July 26,
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`2001) (party who printed documents from a website “could have authenticated the
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`documents himself via an affidavit or through his own testimony”).
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`Exhibits 1071-1073 Are Not Hearsay
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`B.
`PO’s hearsay objections likewise should be rejected. Hearsay is an out of
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`court statement offered to prove the truth of the matter asserted. F.R.E. 801(c).
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`Exhibits 1071-1073 are not hearsay, because Petitioner does not rely on these
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`Exhibits for the truth of the statements asserted therein.
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`Exhibits 1071-1073 are each printouts of hospitality industry webpages.
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`Petitioner relies on these Exhibits as evidence of what they would describe to a
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`POSITA, i.e. that various hospitality industry publications have used the term
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`“hospitality” to refer to not just the hotel and restaurant industry, but also the travel
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`and tourism industry. See Reply at 8; Exhibit 1070 ¶¶ 28-32. For example, Dr.
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`Turnbull cites Exhibits 1071-1073 in connection with his observation that
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`“numerous industry publications include ‘travel and tourism’ within the
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`‘hospitality’ industry.” Exhibit 1070 ¶ 31. Thus, Petitioner and Dr. Turnbull
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`simply rely upon Exhibits 1071-1073 for the fact that hospitality industry
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`publications have used the term “hospitality” in a particular manner. Petitioner and
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`Dr. Turnbull do not rely on these Exhibits for the truth of any statements in these
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`articles. Accordingly, Exhibits 1071-1073 are not hearsay. F.R.E. 801(c); see also
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`Biomarin Pharmaceutical, Inc. v. Genzyme Therapeutic Prods. Ltd. Partnership,
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`IPR2013-00537, Paper No. 79 at 25 (finding that exhibit “offered as evidence of
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`what it describes to an ordinary artisan, not for proving the truth of the matters
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`addressed in the document” was not hearsay).
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`Even if Exhibits 1071-73 were considered to be hearsay (they should not
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`be), these Exhibits are nonetheless admissible, as they fall within the residual
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`hearsay exception of F.R.E. 807. The challenged statements have similar
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`circumstantial guarantees of trustworthiness as hearsay exceptions listed in F.R.E.
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`803, such as F.R.E. 803(17) (“market reports and similar commercial
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`publications”) and F.R.E. 803(18) (“statements in learned treatises, periodicals and
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`pamphlets”). Exhibits 1071-1073 are each offered as evidence of a material fact,
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`i.e. how the term “hospitality” has been used in the industry. The Exhibits are
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`more probative on this point than other evidence that Petitioner could obtain
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`through reasonable efforts.3 Finally, admitting these exhibits will best serve the
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`interests of justice, particularly given the importance of claim construction in
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`evaluating whether a patent claim is practiced. See, e.g. Markman v. Westview
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`Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (the “first step” in evaluating
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`whether a patent claim is practiced involves “determining the meaning and scope
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`of the patent claims…”); AFG Indus. v. Cardinal IG Co., Inc., 239 F.3d 1239,
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`1247 (“It is critical for trial courts to set forth an express construction of the
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`material claim terms in dispute…”). Because Exhibits 1071-1073 meet each of the
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`3 Even if Petitioner had submitted an expert declaration in connection with these
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`Exhibits, PO likely would still have objected to these Exhibits as hearsay. PO has
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`moved to exclude similar exhibits cited in the declaration of a hospitality industry
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`expert in CBM2015-00099, relating to the same claims of the same patent as this
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`proceeding. See CBM2015-00099, Paper No. 25 at 13-14.
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`elements of F.R.E. 807, these Exhibits are admissible under the residual hearsay
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`exception.
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`IV. EXHIBITS 1078-1079 SHOULD NOT BE EXCLUDED
`A. Exhibits 1078-1079 Are Relevant
`PO contends that Exhibits 1078-1079 are irrelevant under F.R.E. 401-403,
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`simply because these Exhibits were not cited in Petitioner’s Reply Brief. Mot. at 8.
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`However, as with its objections to Dr. Turnbull’s supplemental declaration, PO’s
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`relevance objections are meritless.
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`Exhibits 1078 and 1079 are institution decisions from CBM2015-00091 and
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`CBM2015-00099, respectively. These proceedings involve the same claims of the
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`same patents challenged in this proceeding. In Exhibits 1078 and 1079, the Board
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`construed the term “hospitality application,” a claim term whose construction is in
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`dispute here. Exhibit 1078 at 12; Exhibit 1079 at 12. These Exhibits were cited in
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`Dr. Turnbull’s declaration in support of his opinion that DeLorme discloses a
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`“hospitality application.” Exhibit 1070 ¶ 29. Because Exhibits 1078-1079 have a
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`tendency to establish a fact of consequence in this proceeding more probable (i.e.
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`that DeLorme discloses a “hospitality application”), the Exhibits are
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`relevant under F.R.E. 401, and admissible under F.R.E 402. Furthermore, Dr.
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`Turnbull’s reliance on Exhibits 1078 and 1079 was not unfairly prejudicial or a
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`waste of time under F.R.E. 403, because Dr. Turnbull’s analysis and opinions
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`relating to these Exhibits is directly responsive to arguments raised in PO’s
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`Response. See POR at 7, 28 (construing “hospitality application” and
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`distinguishing DeLorme based upon this construction).
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`B. Citation To Exhibits 1078-1079 Is Not An Attempt At Joinder
`PO contends that citation to these institution decisions is an improper
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`attempt to achieve “joinder.” However, PO’s objection is baseless. There is
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`nothing improper about citing prior Board decisions, particularly where the
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`decisions discuss construction of disputed claim terms in the proceeding. Nor is
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`there anything improper with submitting cited Board decisions as Exhibits for the
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`convenience of the Board. Because Petitioners have not sought, and do not seek,
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`joinder with the related proceedings, PO’s motion to exclude Exhibits 1078-1079
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`on this basis should be rejected.
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`V. EXHIBITS 1080-1081
`Exhibits 1080-1081 were submitted in this proceeding because they are cited
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`in Dr. Turnbull’s supplemental declaration,4 and to maintain consistent Exhibit
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`4 Because many of the disputed issues are substantially similar in CBM2015-00080
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`and CBM2015-00082, Dr. Turnbull submitted a single supplemental declaration
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`addressing issues in both proceedings. See generally Exhibit 1070. However, Dr.
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`Turnbull cited to Exhibits 1080-1081 in support of his opinions relating to
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`numbering between the related proceedings CBM2015-00080 and CBM2015-
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`00082. However, while Exhibits 1080-1081 are relevant to CBM2015-00080, they
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`are not relied upon in CBM2015-00082 and therefore need not be considered by
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`the Board in CBM2015-00082.
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`VI. EXHIBIT 1082 SHOULD NOT BE EXCLUDED
`A. Exhibit 1082 is Relevant
`PO objects to Exhibit 1082 as irrelevant, simply because it was not cited in
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`Petitioner’s Reply. As established above, this is not the analysis mandated by the
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`Federal Rules of Evidence.
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`Exhibit 1082 is a webpage printout from the Computerworld Honors
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`Program website, identifying the criteria for nominations. This Exhibit is cited in
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`Dr. Turnbull’s declaration as evidence that the nomination criteria are not
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`stringent. Exhibit 1070 ¶ 91. This Exhibit was submitted in direct response to
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`arguments raised in PO’s Response identifying a Computerworld Honors
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`nomination as evidence of “industry praise.” Thus, Exhibit 1082 is plainly
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`relevant under F.R.E. 401 and admissible under F.R.E. 402. Moreover, because
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`Exhibit 1082 is directly responsive to PO’s arguments, it is neither unfairly
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`prejudicial nor a waste of time under F.R.E. 403.
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`dependent claims 14 and 15 of the ’850 patent. Thus, while Exhibits 1080-1081are
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`relevant in CBM2015-00080, they are not at issue in CBM2015-00082.
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`Exhibit 1082 Is Sufficiently Authenticated
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`B.
`As with Exhibits 1071-1073, PO has failed to establish that Exhibit 1082 is
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`not what Petitioner claims it to be, i.e. a webpage printout. The declaration from
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`Mr. Lee establishes that Exhibit 1082 is a true and correct copy of the webpage
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`available at: http://www.cwhonors.org/involved/. Exhibit 1085 ¶ 6. Mr. Lee
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`further testified he confirmed that Exhibit 1082 was identical to the webpage as it
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`appeared online. Id. Thus, Exhibit 1082 is properly authenticated. See Perfect 10,
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`213 F. Supp.2d at 1154; Johnson–Wooldridge, 2001 WL 838986 at *4.
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`C. Exhibit 1082 Is Not Inadmissible Hearsay
`Much like Exhibits 1071-1073, Exhibit 1082 falls within the residual
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`hearsay exception, F.R.E. 807. The challenged statements have similar
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`circumstantial guarantees of trustworthiness as hearsay exceptions listed in F.R.E.
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`803, such as F.R.E. 803(17) (“market reports and similar commercial
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`publications”). Furthermore, because the Exhibit is immediately accessible to the
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`public via the website listed above, there is no genuine issue of trustworthiness.
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`Exhibit 1082 is offered as evidence of a material fact, i.e. the nomination criteria
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`for the Computerworld Honors Program are not stringent. The Exhibit is more
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`probative on this point than other evidence that Petitioner could obtain through
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`reasonable efforts. And, admitting the Exhibit will best serve the interests of
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`justice, particularly given that PO relied upon similar website printouts to
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`demonstrate that it received the Computerworld Honors Program nomination.
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`POR at 62, 69; Exhibit 2051.
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`VII. CONCLUSION
`For the foregoing reasons, Petitioner requests that the Board reject PO’s
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`Motion to Exclude.
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`Dated: April 20, 2016
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`
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`Respectfully submitted,
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`
`
`
`
` /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
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`Attorneys for Petitioner
`Apple Inc., Eventbrite Inc., and Starwood
`Hotels & Resorts Worldwide, Inc.
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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.zembek@nortonrosefulbright.com
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`Gilbert A. Greene
`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
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`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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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing
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`PETITIONERS’ OPPOSITION TO PATENT OWNER’S MOTION TO
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`EXCLUDE PURSUANT TO 37 C.F.R. § 42.64(c) was served on April 20, 2016,
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`via electronic mail, per agreement of the parties, to counsel for the following
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`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
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` /James M. Heintz/
`James M. Heintz
`
`Reg. No. 41,828
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`Counsel for Petitioner
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`By:
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`addresses:
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`
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`John W. Osborne
`OSBORNE LAW LLC
`33 Habitat Lane
`Cortlandt Manor, NY 10567
`Tel.: 914-714-5936
`Fax: 914-734-7333
`josborne@osborneipl.com
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