`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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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
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`v.
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`AMERANTH, INC.
`Patent Owner
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`____________
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`Case CBM2015-000821
`Patent No. 6,871,325
`____________
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`PATENT OWNER'S REPLY BRIEF IN SUPPORT OF PATENT
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`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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`CBM2015-00082
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`I.
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`THE UNCITED PARAGRAPHS OF EXHIBIT 1070 AND
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`PETITIONER’S UNCITED EXHIBITS SHOULD BE EXCLUDED.
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`As discussed in Ameranth’s Motion, paragraphs 1-4, 18, 19, 22-24, 33, 37,
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`38, 41-51, 55, 60-63, 65, 67-70, 78-93 and 95 of Exhibit 1070 (Dr. Turnbull’s
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`reply declaration) should be excluded as irrelevant and improper under 37
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`C.F.R. § 42.6(a)(3) because they are not discussed or even cited to in the Reply
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`Brief. Exhibits 1078-1082 are irrelevant for the same reason. Petitioner responds
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`by arguing that “there is no requirement in this proceeding… that Petitioner must
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`cite to each and every paragraph in an expert declaration to satisfy the relevance
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`requirements of the Federal Rules of Evidence” and makes essentially the same
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`argument with respect to its uncited exhibits. (Pap. 38, pp. 2, 9-11, 13.)
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`However, Petitioner not only ignores the fact that it completely failed to
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`establish any relevancy of the uncited paragraphs and exhibits in its Reply Brief,
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`but Petitioner ignores 37 C.F.R. § 42.23(b), which provides in part that “[a]ll
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`arguments for the relief requested in a motion must be made in the motion.”
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`Petitioner further fails to address cases cited in Ameranth’s Motion, such as
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`Conopco, Inc. dba Unilever v. The Procter & Gamble Company, IPR2013-00510
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`(Pap. 9, pp. 8-9, declining to consider information presented in a supporting
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`declaration, but not discussed in a petition). In so doing, Petitioner takes the
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`untenable position that the uncited paragraphs of Exhibit 1070 could not have been
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`CBM2015-00082
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`incorporated by reference because they “were not cited in the Reply.” [Emphasis
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`original] (Pap. 38, p. 4.) Petitioner argues that citing to Dr. Turnbull’s
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`supplemental declaration in a “narrowly tailored” fashion (i.e., Petitioner only cites
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`to a few paragraphs and leaves numerous paragraphs completely undiscussed and
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`uncited) does not violate any rules but somehow the completely undiscussed and
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`uncited portions of the declaration remain relevant.
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`But clearly not citing the paragraphs at all is a more egregious violation of
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`the intent of the rule against incorporation by reference (37 C.F.R. § 42.6(a)(3))
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`than simply citing to the paragraphs without sufficient discussion. Further, if
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`Petitioner’s position is that the uncited paragraphs are not incorporated by
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`reference, then Petitioner has completely failed to establish their relevance as the
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`paragraphs would not even be incorporated into the Reply Brief at all.
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`Petitioner also makes a similarly nonsensical argument with respect to the
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`uncited exhibits - conceding that they were not cited in the Reply Brief but arguing
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`that they are relevant because they are cited in Dr. Turnbull’s reply declaration.
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`However, Petitioner’s position is nothing more than an additional attempt to
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`improperly incorporate by reference even more material via the declaration.
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`Further demonstrating Petitioner’s nonsensical position, Petitioner made the
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`exact same challenge to several of Ameranth’s exhibits. (Pap. 33, pp. 12-13.) In
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`its Motion to Exclude, Petitioner argued “Patent Owner’s Corrected Response does
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`CBM2015-00082
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`not cite or mention these Exhibits”… “[t]hus, [the exhibits] are inadmissible as
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`irrelevant under FRE 401 and 402.” (Pap. 33, pg. 13.) Plainly, Petitioner is trying
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`to “have its cake and eat it too.”
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`As predicted by Ameranth in its Motion (Pap. 35, p. 4), Petitioner only now
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`belatedly attempts to explain the relevance of the uncited paragraphs2 and uncited
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`exhibits in its Opposition. But, again, if Petitioner believed the evidence to be
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`relevant, Petitioner should have included any discussion or argument pertaining to
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`the evidence it wanted to make in its Reply Brief. See 37 C.F.R. § 42.23(b).
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`II. EXHIBITS 1071-1073 and 1080-1082 ARE HEARSAY.
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`Petitioner argues it “does not rely on [Exhibits 1071-1073] for the truth of
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`the statements asserted therein”, but rather “as evidence of what they would
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`describe to a POSITA.” (Pap. 38, p. 7.) Petitioner claims it relies upon the
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`exhibits “for the fact that hospitality industry publications have used the term
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`‘hospitality’ in a particular manner.” (Id.) Likewise, Petitioner argues Exhibits
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`1080-1081 are “relied upon by Dr. Turnbull as evidence that ‘push’ technology
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`2 Petitioner cites to numerous paragraphs of Dr. Turnbull’s declaration to argue
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`relevance, but nearly half of the paragraphs it now cites to are paragraphs that were
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`cited in the Reply and not challenged by Ameranth. (Pap. 38, p. 2.) This further
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`underscores the lack of relevance of the uncited paragraphs.
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`CBM2015-00082
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`was known, and that a POSITA would have found it obvious to add such
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`functionality to DeLorme’s system.” (Pap. 38, p. 12.)
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`However, Petitioner cites to Exhibits 1071-1073 to support its assertion that
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`WCU exchanged data is “hospitality data under the proper BRI construction.”
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`(Pap. 26, p. 8.) The exhibits are cited for what the documents state regarding the
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`scope of the hospitality industry, i.e., that the hospitality industry is defined as
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`Petitioner asserts. Similarly, Exhibits 1080-1081 are cited in Dr. Turnbull’s
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`supplemental reply declaration3 to support an argument that certain “push
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`technology” was available at a certain timeframe. (See, e.g., Exh. 1070 ¶ 76.)
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`Thus, the exhibits are used for the truth of the matters asserted therein, and
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`are inadmissible hearsay.
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`Petitioner also argues that the exhibits meet the residual hearsay exception,
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`but Petitioner does little more than just repeat the elements of FRE 807 without
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`providing any real analysis as to why or specifically how the exhibits would meet
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`the exception. (See, e.g., Pap. 38, pp. 7-8, 14-15.)
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`3 As discussed above, Exhibits 1080-1081 are not even cited in the Reply Brief and
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`are therefore irrelevant. They are also irrelevant because they are used to support
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`Petitioner’s new argument, improperly introduced on reply, via the declaration.
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`CBM2015-00082
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`III. EXHIBITS 1071-1073 AND 1080-1082 ARE NOT AUTHENTICATED.
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`Petitioner argues that “the evidence demonstrates that Exhibits 1071-1073
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`are what Petitioner claims them to be, i.e. webpage printouts.” (Pap. 38, p. 5.)
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`Petitioner makes the same argument with respect to Exhibit 1082, another webpage
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`printout. (Id., p. 14.) Petitioner bases its position on the untimely Declaration of
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`Burt Lee,4 which states that he downloaded the webpages. But Ameranth does not
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`challenge whether the documents were downloaded from particular websites, but
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`rather questions the accuracy of the content of the webpages (e.g., Pap. 35, p. 6).
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`Mr. Lee’s declaration does nothing to alleviate this concern.
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`Additionally, Petitioner fails to make a sufficient showing to support its
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`argument that Exhibits 1080-1081 are authenticated under FRE 901(b)(4), 902(6)
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`and (7). (Pap. 38, pp. 11-12.)
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`IV. CONCLUSION.
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`As discussed herein and in Ameranth’s Motion, paragraphs 1-4, 18, 19,
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`22-24, 33, 37, 38, 41-51, 55, 60-63, 65, 67-70, 78-93 and 95 of Exhibit 1070
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`and Exhibits 1071-1073 and 1078-1082 should be excluded.
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`4 Mr. Lee’s declaration should have been provided concurrently with the reply
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`evidence it purports to authenticate and was never served on Ameranth, apparently
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`because Petitioner’s counsel attached the wrong files to its service email.
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`CBM2015-00082
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`April 27, 2016 Respectfully Submitted,
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`/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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`CBM2015-00082
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`CERTIFICATE OF SERVICE
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` I
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` certify that, in accordance with 37 C.F.R. §42.6, a true and correct copy
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`of the foregoing was served on April 27, 2016 by causing said documents to be
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`delivered via electronic mail, per agreement of the parties, to counsel for
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`Robert C. Williams
`DLA Piper LLP (US)
`401 B Street Suite 1700
`San Diego, CA 92101
`robert.williams@dlapiper.com
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`Gilbert A. Greene
`NORTON ROSE FULBRIGHT
`98 San Jacinto Boulevard, Suite 1100
`Austin, TX 78701
`bert.greene@nortonrosefulbright.com
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`Petitioner at the following addresses:
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`James M. Heintz
`DLA Piper LLP (US)
`11911 Freedom Drive, Suite 300
`Reston, VA 20190-5602
`jim.heintz@dlapiper.com
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`Richard S. Zembek
`NORTON ROSE FULBRIGHT
`1301 McKinney, Suite 5100
`Houston, TX 77010
`richard.zembek@nortonrosefulbright.com
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`/Ethan M. Watts/
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` April 27, 2016
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