UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`STARBUCKS CORP.
`Petitioner
`
`v.
`
`AMERANTH, INC.
`Patent Owner
`
`____________
`
`Case CBM2015-00091
`U.S. Patent No. 6,384,850
`____________
`
`
`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
`____________
`
`
`
`STARBUCKS CORP.
`Petitioner
`
`v.
`
`AMERANTH, INC.
`Patent Owner
`
`____________
`
`Case CBM2015-00091
`U.S. Patent No. 6,384,850
`____________
`
`
`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
`
`
`
`
`
`
`CBM2015-00091
`
`
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`Petitioner Starbucks entirely ignored most of Ameranth’s strong secondary
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`considerations evidence. The arguments Petitioner did make should be given no
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`weight by the Board, because they are factually and/or legally incorrect, and/or
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`ignore the record evidence, and/or are based upon nothing but attorney argument.
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`
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`As shown in PO's Response – and not disputed in Petitioner's Reply Brief –
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`a strong nexus exists between the Challenged Claims and Ameranth's 21st Century
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`Restaurant (21CR) system, and thus also between the evidence of commercial
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`success, praise and awards for 21CR and the Challenged Claims. See, e.g., Exh.
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`2047 (brochures) and other 21CR evidence; POR (Paper 17) at 59-64. Further, the
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`systemic nexus of "synchronization, integration, and consistency" is neither
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`“inaccurate” nor "improper", as Petitioner erroneously argues. In fact, these
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`inventive merits were identified by the Board itself in CBM 2014-00015, Paper 20,
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`(Inst. Dec.) and with the Board’s construction of "synchronization" yielding
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`"consistency", confirms the nexus to be both accurate and correct. (See POR at 56.)
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`Dallas Improv owner Tom Castillo confirmed he was "won over" by Ameranth's
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`May 1999 demonstration of 21CR and that the "total solution" i.e. the ‘nexus’
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`was one that no other company could match thus confirming the inventive nexus
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`was unavailable from any other company. (Exh. 2062, pp. 117-119.)
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`
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`The strong evidence of praise and awards for 21CR set forth in the POR
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`accordingly has the requisite nexus to the Challenged Claims. That evidence
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`- 1 -
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`CBM2015-00091
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`includes the testimony of eyewitness John Harker as to the overwhelming
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`hospitality industry reception at the May 1999 introduction of Ameranth's 21CR
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`technology: "… the Ameranth booth was packed … for four straight days, not
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`only with restaurateurs, but with also the vendor community, the POS vendors,
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`other hospitality technology providers. And, you know, I knew they would be
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`busy. I was shocked at how busy they truly were." (Exh. 2045 at p. 107, ln. 16-
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`25, emphasis added.) It also includes the four technology awards earned by 21CR.
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`(Exh. 2062, pp. 94-96, 140-141, 156-160, and Exh. 2050.) 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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`Petitioner's arguments re PO's license evidence are also erroneous; Petitioner
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`essentially argues that a license can only be used as evidence of nexus if each
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`claim is licensed separately. But, in addition to the indisputable fact that licensees
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`nearly always license entire patents or patent families and not just one or two
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`claims, there is no requirement that a license, to be evidence of a nexus, must be a
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`license for only one patent claim or the small set of claims chosen for a CBM by a
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`petitioner. Ameranth's 46 patent licenses are for the closely-related patents in the
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`same family of which the '850 patent is the parent. The press releases of the patent
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`licenses (which were jointly issued with the licensees), see Exh. 2048, specifically
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`reference the '850 and '325 patents and mobile/web food ordering/reservations for
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`- 2 -
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`CBM2015-00091
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`restaurants, referring to these patents as "essential to achieving a totally
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`synchronized system." Further, the included Agilysys license specifically
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`includes a license to all claims of the '850 and '325 patents, including all of the
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`Challenged Claims. (Exh. 2048, pp. 11-12.)
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`
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`Also, Petitioner falsely claimed in its Reply (at p. 21), citing footnote 15 in
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`the POR in CBM2014-00015, that Patent Owner previously argued that these
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`licenses were for only '850 claims 1-11 – but Ameranth did not say the licenses
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`were for those specific claims. Claims 12-16 weren’t discussed in that full POR
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`because they weren’t instituted in that CBM. Thus that argument is as baseless as
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`Petitioner's theories arguing that the application of licenses to one patent in a
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`family makes them inapplicable to the others in the same family. It doesn’t.
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`
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`Petitioner's Reply erroneously claims that the 2003 RAD Award is
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`inapplicable because Ameranth's Hostalert did not include "web components".
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`Petitioner's claim is untrue. Hostalert did include "web components" and
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`"seamless integration": "The system efficiently accepts and seamlessly integrates
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`reservations from all internet, call center, and in-house sources including your own
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`website." (Exh. 2022, pp. 65-66, emphasis added.)
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`Also, contrary to Petitioner's erroneous Reply, there is ample evidence of
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`successful commercialization, and Ameranth’s products were not deployed "only"
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`at the Dallas Improv. Ameranth’s evidence of 70% market share of the top ten
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`CBM2015-00091
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`POS companies is unrebutted. Further, the Improv ticketing system rolled out
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`nationwide, including, e.g., the Washington D.C. Improv, (see Exh. 2022 at p. 86,
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`a "web page" screenshot showing the '850 and `325 patents marked with the
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`system, confirming nexus of this commercial success with the claims/patents). The
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`evidence submitted by PO further confirms more than 100 deployed locations with
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`Aloha POS (Exh. 2021, p. 14), plus mobile food ordering in many NBA arenas
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`including Dallas, Chicago, Toronto, Los Angeles, and Miami, and all Medieval
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`Times restaurants (Exh. 2021, pp. 23-25, 36). There are now more than 50,000
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`total locations that have licensed the '850 and '325 patents. (Exh. 1041.)
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`
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`Petitioner's reply argument regarding its own copying is disingenuous. The
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`Microsoft emails confirm that Starbucks VP Rob Reed asked for, received, liked,
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`and distributed Ameranth's technical documents within Starbucks in 2006. (Exh.
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`2053.) If this wasn’t true, Starbucks would have submitted a declaration from Rob
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`Reed, denying it. That they didn’t confirms that it is true. Starbucks brazenly
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`claims it "doesn’t have" order-ahead functions despite Starbucks' own management
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`calling order-ahead mobile ordering its "holy grail" (Exh. 2008). Dr. Weaver
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`(Exh. 2041, ¶ 147) testified that he reviewed the evidence submitted with the POR,
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`including the Power Point slides and screenshots from Ameranth's 2006
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`presentation to Starbucks, and Starbucks' own materials on its "Mobile Order &
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`Pay" system, and concluded that Starbucks had indeed copied the relevant features
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`- 4 -
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`CBM2015-00091
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`of the Challenged Claims. This testimony is unrebutted.
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`Regarding copying by others as set forth in the POR, Petitioner doesn't
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`dispute any of the evidence presented with respect to said copying. Further,
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`Petitioner is erroneous in arguing that an infringement analysis of specific claims
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`("meets the limitations", Reply at 24) must be shown to demonstrate copying as
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`secondary evidence of nonobviousness. Copying and infringement are different.
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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
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`in transmitting orders to our partner restaurants and will significantly decrease our
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`margin of error’. (Exh. 2062, p. 69.) Further, Pizza Hut received Ameranth's
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`technical information in 2006, and then after receiving a technology award based
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`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
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`at that in the late 1990’s but failed." (Exh. 2018, p. 5.)
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`
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`For these reasons and those set forth in the POR, its expert report and
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`exhibits, there is substantial, convincing objective evidence of nonobviousness, in
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`addition to the strong "primary" reasons for nonobviousness set forth in the POR.
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`- 5 -
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`Dated: April 4, 2016
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`Respectfully Submitted,
`
`CBM2015-00091
`
`
` /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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`CBM2015-00091
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`CERTIFICATE OF SERVICE
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`I 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 4, 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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`
`Patrick N. McKeever
`Perkins Coie LLP
`11988 El Camino Real, Suite 350
`San Diego, CA 92130
`PMcKeever@perkinscoie.com
`
`
`Yun L. Lu
`Perkins Coie LLP
`11988 El Camino Real, Suite 350
`San Diego, California 92130
`LLu@perkinscoie.com
`
` /s/ Michael D. Fabiano
`__________________________
`
`Petitioner at the following addresses:
`
`
`Bing Ai
`Perkins Coie LLP
`11988 El Camino Real, Suite 350
`San Diego, California 92130
`Ai-ptab@perkinscoie.com
`
`
`Matthew C. Bernstein
`Perkins Coie LLP
`11988 El Camino Real, Suite 350
`San Diego, California 92130
`MBernstein@perkinscoie.com
`
`
`
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`Dated: April 4, 2016
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