`(consolidated with CBM2015-00097)
`
`
`
`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 No. CBM2015-000821
`Patent 6,871,325 B1
`____________
`
`Submitted Electronically via the Patent Review Processing System
`
`
`
`PATENT OWNER’S REQUEST FOR REHEARING
`OF INSTITUTION DECISIONS
`
`
`
`
`
`
`1 CBM2015-00097 has been consolidated with this proceeding.
`
`
`
`CBM2015-00082
`(consolidated with CBM2015-00097)
`
`
`I.
`
`INTRODUCTION.
`
`
`
`Patent Owner Ameranth, Inc., per 37 CFR § 42.71, respectfully requests
`
`rehearing of the portion of the Board's Institution Decisions in CBM2015-00082
`
`(Paper 13) and CBM2015-00097 (Paper 12)2, in which the Board instituted a
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`covered business method (CBM) patent review as to claims 11-13 and 15 of U.S.
`
`Patent No. 6,871,325 (the '325 Patent), on the ground of 35 U.S.C. § 103 over U.S.
`
`Patent No. 5,948,040 ("DeLorme").3
`
`
`
`Ameranth respectfully requests that the Board reconsider these Institution
`
`Decisions, and modify them to reach the necessary conclusion that no trial should
`
`be instituted as to claims 11, 12, and 15 of the '325 Patent, due to the following
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`three overlooked and/or misapprehended matters:
`
`
`
`1) The Institution Decisions incorrectly instituted a trial on independent
`
`claim 12 of the '325 Patent on the ground of 35 U.S.C. § 103 over DeLorme, even
`
`though Petitioners provided no evidence or argument against the patentability
`
`of claim 12; in fact petitioners did not even challenge claim 12 vis-à-vis
`
`DeLorme, but rather only challenged claims 11, 13, and 15 vis-à-vis DeLorme.
`
`
`2 The Board granted a Motion for Joinder and consolidated the two proceedings in CBM2015-
`00082. (Institution Decision, CBM2015-00097, Paper 12, at 5-6.) Accordingly, this Request for
`Rehearing of both Institution Decisions is filed solely in the consolidated CBM2015-00082.
`3 In the same decisions, the Board declined to institute a covered business method patent review
`on the grounds of claims 11, 13, and 15 under 35 U.S.C. § 103 over Inkpen, Nokia, and Digestor,
`claim 12 under 35 U.S.C. § 103 over Inkpen, Nokia, Digestor, and Flake, and claims 11–13 and
`15 under 35 U.S.C. § 103 over Blinn and Inkpen.
`
`
`
`1
`
`
`
`CBM2015-00082
`(consolidated with CBM2015-00097)
`
`
`(Petition in CBM 2015-00082, Paper 1, at pp. 9 and 52-63; Petition in CBM 2015-
`
`00097, Paper 2, at pp. 9, 52-63.)
`
`
`
`2) The Institution Decisions incorrectly instituted a trial on dependent claim
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`15 of the '325 Patent (which depends from any or all of independent claims 11-13)
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`on the ground of 35 U.S.C. § 103 over DeLorme, because the decision to institute
`
`trial on dependent claim 15 relied on the purported analysis of independent claim
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`12, which, as noted above, Petitioners did not even challenge. Dependent claim 15
`
`claims a more limited scope than each of independent claims 11-13, and is thus
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`allowable if any of those independent claims are allowable.
`
`
`
`3) The Institution Decisions incorrectly instituted a trial on claim 11 of the
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`'325 Patent on the ground of 35 U.S.C. § 103 over DeLorme, yet with no analysis
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`of the unique patentability of claim 11. As the petitioners themselves admitted,
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`and the Board concurred with and held (see p. 13 of the Institution Decision in
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`CBM2015-00082, Paper 13), the "relates to orders" restriction (last clause of claim
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`11) means "we are persuaded by Petitioner that ordering relates to ordering a
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`restaurant meal". (Id., emphasis added.) DeLorme, a travel-reservation system,
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`does not teach "ordering a restaurant meal", and neither did the Petitioners provide
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`any evidence of, nor did the Board find in its Institution Decisions, that DeLorme
`
`teaches ordering a restaurant meal. It doesn’t.
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`
`
`
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`
`
`2
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`
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`CBM2015-00082
`(consolidated with CBM2015-00097)
`
`
`II.
`
`STATEMENT OF PRECISE RELIEF REQUESTED.
`
`
`
`Patent Owner respectfully requests that the Board rehear and reconsider its
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`Institution Decisions in CBM 2015-00082 and in CBM2015-00097, and modify
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`those Institution Decisions to hold that trial shall not be instituted on claims 11, 12,
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`and 15 of the '325 Patent.
`
`III. THE RELIEF REQUESTED SHOULD BE GRANTED.
`
`
`
`The Board’s Institution Decisions on CBM2015-00082 and CBM2015-
`
`00097 should be modified because the Board “misapprehended and/or overlooked”
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`the three issues set forth above, and discussed further below, which, when properly
`
`considered, compel the necessary conclusion that no trial should be instituted as to
`
`claims 11, 12, and 15 of the '325 Patent.
`
`
`
`
`
`A. Relevant applicable statutes and regulations.
`
`A request for rehearing must identify specifically all matters the party
`
`believes were misapprehended or overlooked, and the place where each matter was
`
`addressed previously in a motion, an opposition, or a reply. 37 C.F.R. § 42.71(d).
`
`
`
`Additionally, several requirements of the America Invents Act (AIA) and the
`
`implementing regulations are directly relevant to this request for reconsideration.
`
`A petitioner in a Covered Business Method (CBM) patent proceeding bears the
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`burden of proving that it is entitled to the requested relief, 37 C.F.R. § 42.20(c),
`
`and demonstrating that there is a reasonable likelihood that at least one of the
`
`
`
`3
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`
`
`CBM2015-00082
`(consolidated with CBM2015-00097)
`
`
`claims challenged in the petition is unpatentable, 35 U.S.C. § 314(a). That burden
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`always remains with the Petitioner, and never shifts. Dynamic Drinkware, LLC v.
`
`National Graphics, Inc., No. 2015-1214, slip op. at 7 (Fed. Cir. Sept. 4, 2015).
`
`
`
`Critically, the petition must specify where each element of the claim is found
`
`in the "prior art" patents or printed publications relied upon. See 37 C.F.R. §
`
`42.104(b)(4). And, a petition must identify “specific portions of the evidence that
`
`support the challenge,” 37 C.F.R. § 42.104(b)(5), and include “a detailed
`
`explanation of the significance of the evidence,” 37 C.F.R. § 42.22(a)(2).
`
`B.
`
`Trial should not be instituted on claim 12 of the '325 Patent on the
`ground of 35 U.S.C. § 103 over DeLorme, because the Board
`overlooked that Petitioners presented no invalidity evidence
`against, and did not even challenge, claim 12 vis-à-vis DeLorme.
`
`
`Both Petitions at issue, CBM2015-00082 and CBM2015-00097, requested
`
`
`
`that the Board institute trial per 35 U.S.C. § 103 over DeLorme as to only claims
`
`11, 13, and 15 of the '325 Patent – not claim 12. (Petition in CBM 2015-00082,
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`Paper 1, at pp. 9 and 52-63; Petition in CBM 2015-00097, Paper 2, at pp. 9, 52-63.)
`
`Significantly, Petitioners did not even ask for trial to be instituted on claim 12
`
`under 35 U.S.C. § 103 over DeLorme, and Petitioners did not present any
`
`argument or evidence regarding claim 12's purported unpatentability under § 103
`
`over DeLorme, including against the "waitlisting" functionality of claim 12. In
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`fact, the Board specifically sought clarification as to this issue from Petitioner, in a
`
`
`
`4
`
`
`
`CBM2015-00082
`(consolidated with CBM2015-00097)
`
`
`May 1, 2015 conference call arranged by the Boar, and in which Petitioner
`
`confirmed that claim 12 was not challenged with respect to DeLorme:
`
`Regarding the Petition in CBM2015-00082, 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 was a
`typographical or clerical error.
`
`CBM2015-00082, Paper 8, at p. 2. (Emphasis added.)
`
`
`
`The Board's authority in CBM matters is limited to the relief requested in the
`
`Petition. Under the Board's statutory authority, the Board may consider a CBM
`
`petition only to the extent that "the petition identifies, in writing and with
`
`particularity, each claim challenged, the grounds on which the challenge to each
`
`claim is based, and the evidence that supports the grounds for the challenge to each
`
`claim". 35 U.S.C. § 322.
`
`
`
`Here, Petitioners not only did not provide any evidence or argument against
`
`claim 12, rather Petitioners did not even request institution of trial (or claim
`
`invalidation) as to claim 12 on the ground of 35 U.S.C. § 103 over DeLorme. The
`
`Board therefore must vacate the institution of trial as to '325 patent claim 12.
`
`//
`
`//
`
`//
`
`
`
`5
`
`
`
`CBM2015-00082
`(consolidated with CBM2015-00097)
`
`
`C.
`
`Trial should not be instituted on dependent claim 15, because the
`decision to institute trial depended on the Board's incorrect
`analysis and invalidation of independent claim 12, a claim that
`Petitioners did not even challenge vis-à-vis DeLorme.
`
`
`The Board's Institution Decisions instituted trial on the '325 patent's
`
`
`
`dependent claim 15 based on finding that the one dependent claim element,
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`"wherein the data is sent to a wireless paging device," is found in DeLorme
`
`(Institution Decision, CBM 2015-00082, Paper 13, p. 27), and on finding that each
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`element of claim 12 is found in DeLorme, see id. at pp. 20-22 ("we are persuaded
`
`by Petitioner that claim 12 is more likely than not unpatentable under 35 U.S.C. §
`
`103 over DeLorme").
`
`
`
`But the latter finding is erroneous, because the Board could not possibly
`
`have been "persuaded by Petitioner" on claim 12, given that Petitioner presented
`
`no evidence and made no such challenge to claim 12. Further, the Board's ruling
`
`could not have been based on argument or evidence found in the Petitions against
`
`claim 12, because, as discussed above, Petitioner did not even argue that claim 12
`
`is unpatentable under 35 U.S.C. § 103 over DeLorme, and Petitioner did not
`
`present any argument or evidence regarding claim 12's purported unpatentability
`
`under 35 U.S.C. § 103 over DeLorme. (Petition in CBM2015-00082, Paper 1, at
`
`pp. 9 and 52-63; Petition in CBM 2015-00097, Paper 2, at pp. 9, 52-63.)
`
`
`
`6
`
`
`
`CBM2015-00082
`(consolidated with CBM2015-00097)
`
`
`
`
`Because the Board's Institution Decision explicitly states that the decision to
`
`institute trial on '325 patent claim 15 is based on argument and evidence related to
`
`claim 12, when that is not even found in the Petitions, nor was claim 12 even
`
`challenged vis-a-vis DeLorme, the ruling against claim 15 must be reversed, and
`
`trial also cannot be instituted as to '325 patent claim 15.
`
`D.
`
`Trial should not be instituted on claim 11, because the Board
`correctly concluded that "ordering" and "orders" in the `325
`claims reflect "ordering a restaurant meal" but overlooked that
`Petitioners provided no evidence, nor is there any, nor did the
`Board's Institution Decisions even make a finding, regarding
`DeLorme meeting the "relates to orders" element of claim 11.
`
`
`Claim 11 of the '325 Patent describes hospitality applications that are
`
`
`
`restricted to ordering, as set forth at the end of the last clause of claim 11: "…
`
`wherein … the synchronized data relates to orders."
`
`
`
`As noted by the Board, "according to Petitioner, the claimed ordering
`
`relates to ordering a restaurant meal." Institution Decision, CBM2015-00082,
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`Paper 13, at p. 13. (Emphasis added.) The Board then held, consistent with
`
`Petitioners' own position (thus there is no factual or claim construction dispute
`
`whatsoever) that, with respect to both claims 1 and 11,4 "We are persuaded by
`
`petitioner that ordering relates to ordering a restaurant meal". Id. (Emphasis
`
`
`4 "Like for claim 1 of the ’325 patent, the subject matter of claim 11 is incidental or
`complementary to financial activity." Id. at p. 13 (emphasis added).
`
`
`
`7
`
`
`
`CBM2015-00082
`(consolidated with CBM2015-00097)
`
`
`added.)5 This is also consistent with the requirement, which the Federal Circuit
`
`has repeatedly emphasized, that the same term should be construed consistently
`
`throughout the patent:
`
`[A] claim term should be construed consistently with
`its appearance in other places in the same claim or in
`other claims of the same patent. See Phonometrics,
`Inc. v. Northern Telecom Inc., 133 F.3d 1459, 1465, 45
`USPQ2d 1421, 1426 (Fed. Cir. 1998) (“A word or
`phrase used consistently throughout a claim should be
`interpreted consistently.”); CVI/Beta Ventures, Inc. v.
`Tura LP, 112 F.3d 1146, 1159, 42 USPQ2d 1577, 1586
`(Fed. Cir. 1997) (“[W]e are obliged to construe the term
`‘elasticity’ consistently throughout the claims.”);
`Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570,
`1579, 34 USPQ2d 1673, 1679 (Fed. Cir. 1995) (holding
`that claim terms found in different claims should be
`interpreted consistently).
`
`Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001) (emphasis
`
`added). The PTAB itself recently granted a reconsideration request based upon
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`this very requirement to construe claim terms consistently throughout the patent
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`and all of its claims.6
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`
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`Here, it would be error for the Board to construe claim 11’s "relates to
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`orders" term differently from claim 1 and its dependent claims, which confirm that
`
`
`5 Further, this position was taken, not merely by a single party, but rather by three original
`petitioner parties (Apple, Starwood and Eventbrite), and then joined by 24 additional petitioners
`representing the breadth and knowledge of the hospitality market, broadly confirming that
`"ordering" as "restaurant/food" ordering is the understanding that a POSITA would have.
`6 Ex parte Amar Kumar, Decision on Request for Rehearing, Appeal 2012-002053 (PTAB Sep.
`19, 2014) (citing Rexnord, 274 F.3d at 1342, and other Federal Circuit cases in accord).
`
`
`
`8
`
`
`
`CBM2015-00082
`(consolidated with CBM2015-00097)
`
`
`the "ordering" in this patent and in these claims is related to "ordering in a
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`restaurant" (see, e.g., "table based customer ordering", dependent claim 2; and
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`"drive through customer ordering", dependent claim 3), as the Petitioners
`
`themselves argued and the Board previously concluded, i.e., that the "ordering" in
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`the `325 patent claims is for "ordering from restaurants".
`
`
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`Again confirming, in its Institution Decision, that the claims of the ‘325
`
`patent describe “applications … in the hospitality industry” and that "ordering" in
`
`the `325 patent, which is one of those hospitality applications, is "restaurant/food
`
`ordering", the Board reiterated the proper construction of this term:
`
`… [W]e construed “hospitality applications” as
`applications used to perform services or tasks in the
`hospitality industry. The ’325 patent describes
`restaurant ordering, reservations, wait-list
`management, and frequent customer ticketing as
`examples of hospitality applications.
`
`Institution Decision, CBM2015-00082, Paper 13, at p. 24. (Emphasis added.)
`
`The Board thus correctly differentiated the hospitality application "restaurant
`
`ordering" from the different and separately-claimed hospitality applications of
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`"wait-list management" and "reservations" in '325 claims 12 and 13 respectively
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`just as Patent Owner did in the '325 specification and prosecution history. The
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`Board accordingly reinforced the fact that these are entirely different hospitality-
`
`industry functions as claimed in the `325 patent, and once again confirming that
`
`
`
`9
`
`
`
`CBM2015-00082
`(consolidated with CBM2015-00097)
`
`
`the Board's claim 11 construction for "relates to orders" is "related to ordering a
`
`restaurant meal".
`
`
`
`But, the Board erroneously overlooked this in instituting trial on claim 11
`
`based upon DeLorme, a travel-reservation system that indisputably does not teach
`
`ordering a restaurant meal. Further, the Board also overlooked Patent Owner's
`
`discussions of claim differentiation in its preliminary responses (see, e.g.,
`
`Preliminary Response, CBM2015-00082, Paper 9, e.g. at pp. 3, 27, 44, 52, 60, 68).
`
`This overlooking is erroneous because, based upon the doctrine of claim
`
`differentiation, the hospitality application "relates to orders" limitation of claim 11
`
`must be different from those of "waitlisting" and "reservations" in claims 12 and
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`13 respectively. This claimed functionality cannot be ignored or "read out", and to
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`interpret "relates to orders" other than "restaurant ordering" would do just that. A
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`POSITA reviewing the `325 patent and prosecution history would know that one
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`does not "order" a "reservation" nor "order" a spot on a "waitlist", and with these
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`three different functions in three different independent claims, the only correct
`
`construction of the claim 11 "relates to orders" limitation is "ordering a restaurant
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`meal", as Patent Owner argued and Petitioners and the Board concluded.
`
`
`
`10
`
`
`
`CBM2015-00082
`(consolidated with CBM2015-00097)
`
`
`Significantly, Ameranth made these arguments in its preliminary responses7, yet
`
`the Board overlooked them as well.
`
`
`
`DeLorme does not teach, and the Board did not find, that DeLorme teaches
`
`ordering a restaurant meal, nor did the Board find or could it have found that a
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`POSITA would have found ordering a restaurant meal obvious in light of the
`
`teachings of DeLorme, because there is no such teaching in DeLorme.
`
`
`
`Further, the Board's Institution Decisions made no finding whatsoever
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`regarding the hospitality application "relates to orders" element of claim 11 vis-à-
`
`vis DeLorme. The Board merely broadly identifies, in DeLorme, "processing of
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`computer inquiries for planning travel", "receiv[ing] inquiries from consumers for
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`travel-related data", "and outputs … digital displays … or electronic
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`communications containing such data … such as reservations and/or tickets for
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`accommodations or events", "organized in a relational database, which is managed
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`by software", "provider input/output for third-party providers of travel information
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`and services", and consumer access via various devices including wirelessly, and
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`then the Board, based on that, concludes that "claim 12 is more likely than not
`
`unpatentable under 35 U.S.C. § 103 over DeLorme" without ever referencing
`
`
`7 "Petitioner’s attempt to apply the same combination against both independent claims 11 and 13
`not only fails based on claim differentiation, but clearly a POSA would have known that
`“reservations/ticketing” applications are separately claimed and are not a “food ordering”
`application as explicitly recited in claim 11." Preliminary Response, CBM2015-00082, Paper
`9, at 52. (Emphasis added.)
`
`
`
`11
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`
`
`CBM2015-00082
`(consolidated with CBM2015-00097)
`
`
`either claim 11 or claim 11's "relates to orders" limitation. (Institution Decision,
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`CBM2015-00082, Paper 13, at pp. 21-22.)
`
`
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`Because DeLorme does not teach and the Board's Institution Decision fails
`
`to find either that DeLorme teaches ordering a restaurant meal or that a POSITA
`
`would have found ordering a restaurant meal obvious in light of DeLorme, and
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`because the Board's Institution Decision does not even make any conclusion that
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`claim 11 is obvious in view of DeLorme, the Institution Decision as to claim 11
`
`and DeLorme is erroneous and must be reversed, and trial must be not instituted as
`
`to '325 patent claim 11.
`
`
`
`Further, not having provided any evidence of, nor explaining with
`
`particularity where in DeLorme the food ordering limitation of claim 11 was met
`
`– what both Petitioners and the Board cited and a POSITA would know to be the
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`correct construction of the "relates to orders" limitation – Petitioners failed to meet
`
`their burden and failed to comply with the above-mentioned statutory and
`
`regulatory requirements.
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`IV. CONCLUSION.
`
`
`
`For the reasons set forth herein, Patent Owner respectfully requests that the
`
`Board rehear and reconsider the portions of its CBM2015-00082 and CBM2015-
`
`00097 Institution Decisions in which the Board instituted a covered business
`
`method patent review as to claims 11, 12, and 15 of the '325 Patent on the ground
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`
`
`12
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`
`
`CBM2015-00082
`(consolidated with CBM2015-00097)
`
`
`of 35 U.S.C. § 103 over DeLorme, and modify those Institution Decisions to hold
`
`that trial shall not be instituted on claims 11, 12, and 15 of the '325 Patent.
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`Respectfully Submitted,
`
` /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
`
`
`
`13
`
`Dated: September 15, 2015
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`CBM2015-00082
`(consolidated with CBM2015-00097)
`
`
`CERTIFICATE OF SERVICE
`
`I certify that, in accordance with 37 C.F.R. §42.6, a true and correct copy of
`
`the foregoing PATENT OWNER’S REQUEST FOR REHEARING OF
`INSTITUTION DECISIONS was served on September 15, 2015 by causing said
`documents to be delivered via electronic mail, per agreement of the parties, to
`counsel for Petitioners at the following email addresses:
`
`Petitioner in original CBM 2015-00082:
`
`James M. Heintz
`Robert C. Williams
`DLA PIPER LLP (US)
`
`AmeranthCBMService@dlapiper.com
`jim.heintz@dlapiper.com
`robert.williams@dlapiper.com
`
`Petitioner in former CBM2015-00097, now consolidated within CBM2015-00082:
`
`Richard S. Zembek
`Gilbert A. Greene
`NORTON ROSE FULBRIGHT US LLP
`
`richard.zembek@nortonrosefulbright.com
`bert.greene@nortonrosefulbright.com
`
`/s/ Michael D. Fabiano
`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
`
`
`
`Dated: September 15, 2015
`
`
`
`14