throbber
UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`STARBUCKS CORP.
`Petitioner
`
`v.
`
`AMERANTH, INC.
`Patent Owner
`
`____________
`
`Case CBM2015-00091
`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’S MOTION TO EXCLUDE
`PURSUANT TO 37 C.F.R. § 42.64(c)
`
`
`
`

`
`TABLE OF CONTENTS
`
`CBM2015-00091
`
`
`Introduction……………………………………………………………………..1
`
`Exhibits And Paragraphs Of Dr. Helal's Declaration That
`Were Not Discussed Or Even Cited To In Petitioner's Reply
`Brief Should Be Excluded As Irrelevant. The Uncited
`Declaration Paragraphs Are Also Improper Under 37 C.F.R. § 42.6(a)(3)…….2
`
`I.
`
`II.
`
`
`
`
`III. Starbucks' Incomplete Exhibits Should Be Excluded Because They could
`
`Mislead The Board……………………………………………………………...5
`
`IV. Starbucks' Unauthenticated Exhibits Should Be Excluded……………………..9
`
`A. Starbucks Has The Burden Of Establishing The Exhibits Meet
`The Requirements Of FRE 901…………………………………………………9
`
`B. Starbucks’ Webpage Exhibits Should Be Excluded Because They
`Have Not Been Authenticated…………………………………………………10
`
`
`
`
`
`
`
`
`
`
`
`C. The Incomplete Exhibits Should Be Excluded As Not
`Authenticated…………………………………………………………………..12
`
`
`
`V. Many Of Starbucks' Exhibits Should Be Excluded Because They
`
`Constitute Inadmissible Hearsay……………………………………………….13
`
`VI. Conclusion……………………………………………………………………...14
`
`
`
`-i-
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`
`
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`
`

`
`TABLE OF AUTHORITIES
`
`CBM2015-00091
`
`
`Page
`
`Cases
`
`Cisco Systems, Inc. v. C-Cation Technologies, LLC,
`IPR2014-00454, Paper 12……………………………………………………………..5
`
`Conopco, Inc. dba Unilever v. The Procter & Gamble Company,
`IPR2013-00510, Paper 9………………………………………………………………5
`
`DeSilva v. DiLeonardi,
`181 F.3d 865, (7th Cir. 1999)………………………………………………………….4
`
`Hilgraeve, Inc. v. Symantec Corp.,
`271 F. Supp. 2d 964 (E.D. Mich. 2003)………………………………………………13
`
`Juniper Networks, Inc. v. Brixham Solutions, Ltd.,
`IPR2014-00425, Paper 16……………………………………………………………..5
`
`Standard Innovation Corp. v. Lelo, Inc.,
`IPR2014-00148, Paper 41……………………………………………………10, 11, 12
`
`United States v. Harrington,
`923 F.2d 1371, 1374 (9th Cir. 1991)…………………………………………………..9
`
`United States v. Hernandez-Herrera,
`952 F.2d 342, 343 (10th Cir. 1991)…………………………………………………….9
`
`U.S. v. Tank,
`200 F.3d 627, 630 (9th Cir. 2000)……………………………………………………..9
`
`Statutes and Rules
`
`FRE 401………………………………………………………………………………..3
`
`FRE 402………………………………………………………………………………..3
`
`FRE 403………………………………………………………………………………..3
`
`
`
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`-ii-
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`

`
`CBM2015-00091
`
`
`FRE 802…………………………………………………………………………13, 14
`
`FRE 803……………………………………………………………………………..14
`
`FRE 804……………………………………………………………………………..14
`
`FRE 901…………………………………………………………………………..9, 12
`
`FRE 901(a)……………………………………………………………………………9
`
`FRE 902………………………………………………………………………….......12
`
`37 C.F.R. § 42.23(b)…………………………………………………………………..4
`
`37 C.F.R. § 42.6(a)(3)………………………………………………………..1, 2, 3, 4, 14
`
`37 C.F.R. § 42.62(a)…………………………………………………………………...3
`
`37 C.F.R. § 42.64(a)…………………………………………………………………...1
`
`
`
`-iii-
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`
`

`
`TABLE OF EXHIBITS
`
`CBM2015-00091
`
`
`Exhibits Previously Filed by Petitioner and Patent Owner’s Grounds for
`Exclusion:
`
`
`
`
`
`Exhibit No.
`
`Patent Owner’s Grounds for Exclusion:
`
`1063
`
`Paragraphs 1-30, 45, 47-53, 57, 79-82, 91-93, 107-114,
`
`134-135, 140, 149-160, 164-188, 203, 222-231 and 270-
`
`271 are irrelevant and improper under 37 C.F.R. §
`
`42.6(a)(3).
`
`Incomplete, unauthenticated and hearsay.
`
`Irrelevant, incomplete, unauthenticated and hearsay.
`
`Irrelevant.
`
`Irrelevant, unauthenticated and hearsay.
`
`Irrelevant, unauthenticated and hearsay.
`
`Incomplete, unauthenticated and hearsay.
`
`Irrelevant, incomplete, unauthenticated and hearsay.
`
`Irrelevant, incomplete, unauthenticated and hearsay.
`
`Irrelevant, unauthenticated and hearsay.
`
`Irrelevant, incomplete, unauthenticated and hearsay.
`
`Irrelevant, incomplete, unauthenticated and hearsay.
`
`Irrelevant.
`
`Irrelevant.
`
`Irrelevant.
`
`Irrelevant, unauthenticated and hearsay.
`
`Irrelevant, unauthenticated and hearsay.
`
`Irrelevant, unauthenticated and hearsay.
`
`-iv-
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`1065
`
`1067
`
`1068
`
`1069
`
`1070
`
`1071
`
`1072
`
`1073
`
`1074
`
`1075
`
`1081
`
`1083
`
`1084
`
`1085
`
`1095
`
`1096
`
`1097
`
`

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`CBM2015-00091
`
`
`1098
`
`1099
`
`1101
`
`1102
`
`1106
`
`Irrelevant, unauthenticated and hearsay.
`
`Irrelevant, unauthenticated and hearsay.
`
`Irrelevant.
`
`Irrelevant.
`
`Irrelevant, unauthenticated and hearsay.
`
`
`
`-v-
`
`

`
`
`I.
`
`INTRODUCTION.
`
`CBM2015-00091
`
`Pursuant to 37 C.F.R. § 42.64(a), the Patent Owner, Ameranth, Inc.
`
`(“Patent Owner” or “Ameranth”) hereby moves to exclude certain paragraphs of
`
`Exhibit 1063, and to exclude, in their entirety, Exhibits 1065, 1067, 1068, 1069,
`
`1070, 1071, 1072, 1073, 1074, 1075, 1081, 1083, 1084, 1085, 1095, 1096, 1097,
`
`1098, 1099, 1101, 1102 and 1106. The Exhibits which are the subject of this
`
`Motion were submitted by Starbucks Corp. (“Petitioner” or “Starbucks”) in
`
`support of Petitioner’s Reply Brief (Paper 19). On March 30, 2016, Patent Owner
`
`timely served and filed objections to the Exhibits (Paper 21), among others.
`
`
`
`The Exhibits discussed herein should be excluded on the grounds that they
`
`are irrelevant, improper under 37 C.F.R. § 42.6(a)(3), incomplete, unauthenticated
`
`and/or inadmissible hearsay. The exhibits submitted by Petitioner with its Reply
`
`Brief includes numerous exhibits that are not even cited in the Reply Brief (and
`
`are therefore irrelevant), incomplete exhibits that fail to include thousands of pages
`
`of text that might clarify or contradict the “selected portions” and “excerpts” provided
`
`by Starbucks, various unauthenticated webpage printouts and many exhibits that
`
`constitute inadmissible hearsay.
`
`In particular, paragraphs 1-30, 45, 47-53, 57, 79-82, 91-93, 107-114, 134-135,
`
`140, 149-160, 164-188, 203, 222-231 and 270-271 of Exhibit 1063, which is the 271-
`
`paragraph-long supplemental declaration of Abdelsalam Helal, Ph.D., should be
`
`excluded on the grounds that they are irrelevant and improper under 37 C.F.R. §
`-1-
`
`
`
`

`
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`42.6(a)(3). Exhibits 1068, 1083-1085 and 1101-1102 should be excluded on the
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`CBM2015-00091
`
`grounds that they are irrelevant. Exhibits 1065 and 1071 should be excluded on
`
`the grounds that they are incomplete, unauthenticated and inadmissible hearsay.
`
`Exhibits 1069, 1070, 1074, 1095, 1096, 1097, 1098, 1099 and 1106 should be
`
`excluded on the grounds that they are irrelevant, unauthenticated and
`
`inadmissible hearsay. And Exhibits 1067, 1072, 1073, 1075 and 1081 should be
`
`excluded on the grounds that they are irrelevant, incomplete, unauthenticated and
`
`inadmissible hearsay.
`
`II.
`
`EXHIBITS AND PARAGRAPHS OF DR. HELAL’S
`
`DECLARATION THAT WERE NOT DISCUSSED OR EVEN CITED TO IN
`
`PETITIONER’S REPLY BRIEF SHOULD BE EXCLUDED AS IRRELEVANT.
`
`THE UNCITED DECLARATION PARAGRAPHS ARE ALSO IMPROPER
`
`UNDER 37 C.F.R. § 42.6(a)(3).
`
`Starbucks submitted 44 new exhibits with its Reply Brief, but does not discuss
`
`or even cite to more than half of these new exhibits in its Reply Brief. Specifically,
`
`paragraphs 1-30, 45, 47-53, 57, 79-82, 91-93, 107-114, 134-135, 140, 149-160, 164-
`
`188, 203, 222-231 and 270-271 of Exhibit 1063, which is a supplemental reply
`
`declaration of Abdelsalam Helal, Ph.D. (271 paragraphs long) submitted with the
`
`Reply Brief, are not discussed or even cited to in the Reply Brief. Similarly, Exhibits
`
`1068, 1069, 1070, 1074, 1083, 1084, 1085, 1095, 1096, 1097, 1098, 1099, 1101, 1102
`
`and 1106 are not even cited in Starbucks’ Reply Brief.
`-2-
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`
`

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`
`
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`However, Petitioner has the burden of establishing the relevance of evidence it
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`CBM2015-00091
`
`submitted and, under the Federal Rules of Evidence,1 proffered evidence that does not
`
`tend to establish a fact or issue of consequence to the determination of an action is not
`
`relevant and should not be admitted. See Federal Rules of Evidence (“FRE”) 401-402.
`
`Here, because Starbucks failed to discuss or even cite to the Exhibits and paragraphs of
`
`Exhibit 1063 identified above in its Reply Brief, Starbucks has made no showing as to
`
`the relevance of these exhibits or paragraphs of Dr. Helal’s supplemental declaration.2
`
`Further, because Petitioner has not cited to the exhibits at all in the Reply Brief,
`
`Petitioner has not established any probative value of the evidence, and the identified
`
`paragraphs and exhibits should be excluded under FRE 403. FRE 403
`
`Apparently, Petitioner’s plan was to submit 44 new exhibits with its Reply Brief
`
`including a 271-paragraph-long supplemental expert declaration without providing any
`
`argument or explanation as to the relevance of dozens of the exhibits or over a hundred
`
`paragraphs of the Dr. Helal declaration in its Reply Brief, but hope that the Board
`
`
`1 The Federal Rules of Evidence apply to these proceedings according to the provisions
`
`of 37 C.F.R. § 42.62(a).
`
`2 Starbucks itself asserted a similar objection to some of Ameranth’s evidence in
`
`Starbucks’ Objections to Patent Owner’s Evidence in Patent Owner Response.
`
`(See Paper 15 objecting to several Ameranth exhibits as “improper because [they
`
`are] not cited in Patent Owner’s Response.”)
`
`
`
`-3-
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`

`
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`would sort through the exhibits and declaration and determine their relevance for
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`CBM2015-00091
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`Starbucks. But, if Petitioner believes the evidence to be relevant, Petitioner should
`
`have included any discussion or argument pertaining to the evidence it wanted to make
`
`in its Reply Brief. See 37 C.F.R. § 42.23(b) (providing in part that “[a]ll arguments for
`
`the relief requested in a motion must be made in the motion.”). As the Court noted in
`
`DeSilva v. DiLeonardi, 181 F.3d 865, (7th Cir. 1999), “[a] brief must make all
`
`arguments accessible to the judges, rather than ask them to play archeologist with the
`
`record.” DeSilva v. DiLeonardi, 181 F.3d 865, 866-67 (7th Cir. 1999).
`
` Undoubtedly, Petitioner will attempt to argue that the evidence is relevant in its
`
`opposition to this Motion or in response to Ameranth’s Objections to Evidence.
`
`However, such a belated argument will be insufficient to cure the defect of failing to
`
`meet Petitioner’s burden and include any discussion concerning, or even cite to, the
`
`evidence in its Reply Brief.
`
`Moreover, the paragraphs of Dr. Helal’s supplemental declaration (Exhibit
`
`1063) identified above are not only irrelevant because they are not even cited, but they
`
`are also improper for the additional reason that they violate 37 C.F.R. § 42.6(a)(3).
`
`Under 37 C.F.R. § 42.6(a)(3), “[a]rguments must not be incorporated by reference
`
`from one document into another document.” Starbucks, while citing to some of the
`
`paragraphs of Dr. Helal’s supplemental declaration in its Reply Brief, completely fails
`
`to discuss or even cite to paragraphs 1-30, 45, 47-53, 57, 79-82, 91-93, 107-114, 134-
`
`135, 140, 149-160, 164-188, 203, 222-231 and 270-271. Presumably, Starbucks is
`-4-
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`

`
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`attempting to improperly incorporate these uncited paragraphs into its Reply Brief,
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`CBM2015-00091
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`although it failed to even “reference” them. Therefore, the uncited paragraphs of
`
`Exhibit 1063 should be excluded or, in the alternative, should not be considered by the
`
`Board. See Conopco, Inc. dba Unilever v. The Procter & Gamble Company, IPR2013-
`
`00510, Paper 9, pgs 8 – 9 (declining to consider information presented in a supporting
`
`declaration, but not discussed in a petition); Juniper Networks, Inc. v. Brixham
`
`Solutions, Ltd., IPR2014-00425, Paper 16, at Footnote 1 (citing 37 C.F.R. § 42.6(a)(3)
`
`and not considering any of petitioner’s arguments made solely on the basis of
`
`incorporation by reference from a lengthy declaration); Cisco Systems, Inc. v. C-Cation
`
`Technologies, LLC, IPR2014-00454, Paper 12, pgs 7 – 10 (not considering arguments
`
`that were not made in the petition, but were instead incorporated by reference to cited
`
`paragraphs and claim charts of a declaration).
`
`Therefore, for the reasons discussed above, Exhibits 1068, 1069, 1070, 1074,
`
`1083, 1084, 1085, 1095, 1096, 1097, 10 98, 1099, 1101, 1102 and 1106, and
`
`paragraphs 1-30, 45, 47-53, 57, 79-82, 91-93, 107-114, 134-135, 140, 149-160, 164-
`
`188, 203, 222-231 and 270-271 of Exhibit 1063 should be excluded or, in the
`
`alternative, should not be considered by the Board.
`
`III.
`
`STARBUCKS’ INCOMPLETE EXHIBITS SHOULD BE
`
`EXCLUDED BECAUSE THEY COULD MISLEAD THE BOARD.
`
`Among the numerous new exhibits Starbucks submitted with its Reply Brief,
`
`Starbucks failed to provide complete exhibits with respect to Exhibits 1065, 1067,
`-5-
`
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`
`

`
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`1071, 1072, 1073, 1075 and 1081. Instead, Starbucks only provided “selected
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`CBM2015-00091
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`portions” or “excerpts” of the exhibits, presumably “cherry picking” the portions of the
`
`exhibits that Starbucks believes supports its arguments. But, as a matter of fairness
`
`and under the fundamental evidentiary concept of the “rule of completeness,”
`
`Starbucks’ incomplete exhibits should be excluded because they could mislead the
`
`Board in that portions of the exhibits not provided by Starbucks may clarify or
`
`contradict the “selected portions” or “excerpts” provided by Starbucks. See, e.g., FRE
`
`106 (Advisory Committee Notes stating in relevant part that FRE 106 “is an expression
`
`of the rule of completeness” and that the rule is based on two considerations: “[t]he
`
`first is the misleading impression created by taking matters out of context” and “[t]he
`
`second is the inadequacy of repair work when delayed to a point later in the trial.”)
`
`For example, Exhibit 1065 is described in the exhibit index by Starbucks as
`
`“Selected Portions in Text Book of Introduction to Hospitality, John R. Walker (2d
`
`ed.1999)”. An examination of Exhibit 1065 reveals that, rather than provide a
`
`complete copy of the book, Starbucks has merely provided copies of the cover pages,
`
`the table of contents, the “Preface”, “Acknowledgments” and “About the Author”
`
`sections, and the glossary. Starbucks cites to the definition of “hospitality” in the
`
`glossary and a sentence in the Preface to support Starbucks’ arguments concerning the
`
`construction of “hospitality.” (See, e.g., Petitioner’s Reply Brief at pg 2.) But the
`
`table of contents of the incomplete exhibit reveals that Starbucks did not provide any
`
`of the actual chapters of the book, amounting to over 400 pages of omitted text. The
`-6-
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`
`

`
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`titles of some of the omitted chapters include “Hospitality: A Historical Perspective”,
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`CBM2015-00091
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`“The Hotel Business: Development and Classification”, “The Restaurant Business:
`
`Development and Classification”, etc. It is certainly possible that portions of the
`
`hundreds of pages of text not provided by Starbucks could clarify or even contradict
`
`the definition and sentence cited to by Starbucks. Obviously, Starbucks could have
`
`and should have provided a complete copy of the reference to avoid any doubt.
`
`The other incomplete exhibits pose the same problem. With respect to Exhibit
`
`1067, described by Starbucks as “Excerpts of Gamble, Paul R. Reservation Systems,
`
`VNR’S Encyclopedia of Hospitality and Tourism (Ed. by Khan, Mahmood; Olsen,
`
`Michael; and Var, Turgut, 1993)”, Starbucks has provided copies of merely 7 pages
`
`out of over 900 pages of the reference’s contents. Exhibit 1071, described by
`
`Starbucks as “Excerpts of Alastair M. Morrison, Hospitality and Travel Marketing (2d
`
`ed. 1996)”, omits over 500 pages of the reference. With respect to Exhibit 1072,
`
`described by Starbucks as “Excerpts of Robert C. Lewis, Richard E. Chambers, &
`
`Harsha E. Chacko, Marketing Leadership in Hospitality: Foundations and Practices
`
`682 (2d ed. 1995)”, Starbucks merely provided copies of 4 pages of text from a book
`
`that, from an internet search, appears to be over 800 pages long. Exhibit 1073,
`
`described by Starbucks as “Excerpts of Harold E Lane & Denise Dupre, Hospitality
`
`World: An Introduction (1996)”, includes merely about 26 pages of contents, while an
`
`internet search revealed the book appears to be 560 pages long. Exhibit 1075 is
`
`described by Starbucks as “JavaScript Guide, Covers JavaScript 1.2 for Netscape
`-7-
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`
`
`

`
`
`Communicator (1997)”, but Starbucks merely provided 70 pages out of over 1,000
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`CBM2015-00091
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`pages of content. With respect to Exhibit 1081, which is described by Starbucks as
`
`“Excerpts of Microsoft Inside SQL Server 6.5, The Developer’s Guide to Design,
`
`Architecture, and Implementation from a Leading Microsoft Expert, Ron Soukup
`
`(1997)”, Starbucks omits over 650 pages of the guide’s contents.
`
`Thus, in submitting incomplete copies of references in Exhibits 1065, 1067,
`
`1071, 1072, 1073, 1075 and 1081, Starbucks has omitted and failed to provide
`
`thousands of pages of text that could clarify or even contradict the “selected portions”
`
`and “excerpts” provided by Starbucks. The incomplete exhibits should be excluded or,
`
`in the alternative, should not be considered by the Board.3
`
`
`3 Starbucks has previously misleadingly only included “excerpts” of exhibits, including
`
`incomplete Exhibit 1035 (the Dittmer book). The Board relied on Petitioner’s
`
`misleadingly parsed excerpts from the Dittmer book to conclude that “hospitality”
`
`referred to the broader “travel and transportation” industry (of which “hospitality” is
`
`only a subset). Ameranth obtained the complete Dittmer book and has pointed out in
`
`its Patent Owner’s Response that the full exhibit (Exh. 2040), and in particular its
`
`Glossary, compels a “hospitality” construction which excludes both “car rentals” and
`
`the broader and unclaimed “travel/tourism” industry. (See Paper 14 at pgs 5-11). As
`
`such, Starbucks has already created the same problem that could again be created by
`
`submitting incomplete exhibits.
`
`
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`-8-
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`

`
`
`IV.
`
`STARBUCKS’ UNAUTHENTICATED EXHIBITS SHOULD BE
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`CBM2015-00091
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`EXCLUDED.
`
`A. Starbucks Has The Burden Of Establishing The Exhibits Meet The
`
`Requirements Of FRE 901.
`
`The Federal Rules of Evidence require all evidence be authenticated before it
`
`can be admitted into evidence. See FRE 901(a); U.S. v. Tank, 200 F.3d 627, 630 (9th
`
`Cir. 2000) (“The foundational ‘requirement of authentication or identification as a
`
`condition precedent to admissibility is satisfied by evidence sufficient to support a
`
`finding that the matter in question is what its proponent claims.’ Fed. R.Evid.
`
`901(a).”); see also United States v. Harrington, 923 F.2d 1371, 1374 (9th Cir. 1991);
`
`United States v. Hernandez-Herrera, 952 F.2d 342, 343 (10th Cir. 1991) (exhibits are
`
`irrelevant unless their proponent fulfills the authentication requirement).
`
`Authentication acts as a condition precedent to admissibility, and the purpose of the
`
`requirement is to filter untrustworthy evidence. As a proponent of the evidence,
`
`Petitioner bears the burden of establishing that the proffered evidence meets the
`
`requirements of FRE 901. However, as discussed below, Exhibits 1065, 1067, 1069,
`
`1070-1075, 1081, 1095, 1097-1099 and 1106 have not been authenticated and are
`
`inadmissible.
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`/ / /
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`/ / /
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`-9-
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`B. Starbucks’ Webpage Exhibits Should Be Excluded Because They Have Not
`
`Been Authenticated.
`
`Exhibits 1069 and 1070 appear to be printouts from the website Wikipedia.org
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`CBM2015-00091
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`regarding Travelocity and Expedia, respectively, and Exhibit 1074 appears to be a
`
`printout from the website Expediainc.com. Although, as discussed above, Exhibits
`
`1069, 1070 and 1074 are not even cited to in the Reply Brief, they are cited in Dr.
`
`Khan’s declaration (Exhibit 1064) for support of Dr. Khan’s statement that the
`
`Travelocity and Expedia websites were launched in 1996. See Exh. 1064, ¶ 24. But
`
`Starbucks provides no other evidence and no authentication that the information on the
`
`Wikipedia pages and Expediainc.com page are accurate. See Standard Innovation
`
`Corp. v. Lelo, Inc., IPR2014-00148, Paper 41 (PTAB Apr. 23, 2015) at 10-11 (“When
`
`offering a printout of a webpage into evidence to prove the website’s contents, the
`
`proponent of the evidence must authenticate the information from the website itself,
`
`not merely the printout.”) (citations omitted). It is not that Ameranth questions whether
`
`the pages were downloaded from Wikipedia and Expediainc.com, but Petitioner has
`
`not provided evidence or testimony from any witness regarding Wikipedia or
`
`Expediainc.com or how reliable or accurate the contents of the printouts are, or any
`
`witness having personal knowledge of the Wikipedia page printouts or Expediainc.com
`
`page printout.
`
`Exhibits 1095 and 1096 are described by Starbucks as a “Mobile Insights Press
`
`Release” and a “River Run Press Release”, respectively, apparently printed out from
`-10-
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`

`
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`the “Internet Archive WayBackMachine”, and Exhibits 1097, 1098 and 1099 are
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`CBM2015-00091
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`described as various “Computerworld Honors Program” documents, with Exhibit 1097
`
`apparently also printed out from the “Internet Archive WayBackMachine” and
`
`Exhibits 1098 and 1099 apparently from Computerworld.com. Again, as discussed
`
`above, none of these documents are cited in Starbucks’ Reply Brief, but are briefly
`
`cited to in the supplemental Dr. Helal declaration (Exh. 1063). Dr. Helal cites to these
`
`documents and argumentatively implies that Ameranth did not win certain awards, or
`
`that the awards are not that meaningful. See Exh. 1063, ¶¶ 212, 213, 216, 217. But, as
`
`with the Wikipedia webpages discussed above, Starbucks provides no other evidence
`
`and no authentication that the information on the WayBackMachine or Computerworld
`
`pages is accurate. See Standard Innovation Corp., IPR2014-00148, Paper 41 (PTAB
`
`Apr. 23, 2015) at 10-11. Once again, Petitioner has not provided any evidence or
`
`testimony from any witness regarding the webpages or how reliable the contents of the
`
`printouts are, or any witness having personal knowledge of the WayBackMachine or
`
`Computerworld page printouts.
`
` Exhibit 1106 is described by Starbucks as “HTML Specification 4.0 (Dec.
`
`1997)”, apparently printed or downloaded from the website www.w3.org. The Exhibit
`
`is not cited in Starbucks’ Reply Brief, and is only cited once in Dr. Helal’s
`
`supplemental declaration to argue that auto refresh Meta elements were available as
`
`part of HTML 4.0 introduced in December 1997. See Exh. 1063, ¶ 146. As with the
`
`exhibits discussed above, Starbucks provides no evidence and no authentication that
`-11-
`
`
`
`

`
`
`the specification is accurate or that HTML 4.0 indeed had the discussed functionality
`
`CBM2015-00091
`
`as of the date claimed. See Standard Innovation Corp., IPR2014-00148, Paper 41
`
`(PTAB Apr. 23, 2015) at 10-11. Petitioner provides no authenticating witness who can
`
`testify as to the reliability and accuracy of the specification, or any witness having
`
`personal knowledge of HTML 4.0 in December 1997.
`
`Moreover, in addition to failing to provide an authenticating witness for the
`
`exhibits, Petitioner has failed to point to any characteristics of the exhibits to support
`
`and establish their authenticity pursuant to FRE 901. And the documents in the above-
`
`discussed exhibits are not “self-authenticating,” so each requires authentication. FRE
`
`902. Therefore, the Exhibits should be excluded or, in the alternative, should not be
`
`considered by the Board.
`
`C. The Incomplete Exhibits Should Be Excluded As Not Authenticated.
`
`Exhibits 1065, 1067, 1071, 1072, 1073, 1075 and 1081, which were discussed
`
`above as “incomplete” exhibits because Starbucks has only provided “excerpts” or
`
`“selected portions” of the exhibits, should also be excluded on the grounds that they
`
`have not been authenticated. While Petitioner may argue that some or all of these
`
`exhibits are self-authenticating under FRE 902, the self-authenticating provisions of
`
`FRE 902 should not be available to Petitioner because Petitioner has failed to provide
`
`complete copies of the documents. By not providing the complete references,
`
`Petitioner frustrates the purpose of the requirement of authentication (filtering
`
`untrustworthy evidence) because the accuracy of the information presented and
`-12-
`
`
`
`

`
`
`Petitioner’s arguments concerning the references cannot be fully assessed without the
`
`CBM2015-00091
`
`complete references.
`
`Therefore, Exhibits 1065, 1067, 1071, 1072, 1073, 1075 and 1081 should be
`
`excluded or, in the alternative, should not be considered by the Board.
`
`V.
`
`MANY OF STARBUCKS’ EXHIBITS SHOULD BE EXCLUDED
`
`BECAUSE THEY CONSTITUTE INADMISSIBLE HEARSAY.
`
`In addition to the grounds discussed above, Exhibits 1065, 1067, 1069, 1070,
`
`1071, 1072, 1073, 1074, 1075, 1081, 1095, 1096, 1097, 1098, 1099 and 1106 should
`
`also be excluded on the grounds that they constitute inadmissible hearsay. See FRE
`
`802. Petitioner offers the information in the exhibits to prove the truth of the matters
`
`being asserted.
`
`For example, Exhibits 1069 and 1070, which are discussed above, appear to be
`
`printouts from the website Wikipedia.org regarding Travelocity and Expedia,
`
`respectively, and Exhibit 1074 appears to be a printout from the website
`
`Expediainc.com. Although not cited to in Starbucks’ Reply Brief, Dr. Khan cites to
`
`them in his declaration (Exhibit 1064) to argue that the Travelocity and Expedia
`
`websites were launched in 1996. See Exh. 1064, ¶ 24. Thus, the exhibits are plainly
`
`being used to prove the truth of the matter asserted, i.e., that the Travelocity and
`
`Expedia websites were launched in 1996. See Hilgraeve, Inc. v. Symantec Corp., 271
`
`F. Supp. 2d 964 (E.D. Mich. 2003) at 974 (“Plaintiff correctly notes that the dates
`
`imprinted on these documents are hearsay when offered to prove the truth of the matter
`-13-
`
`
`
`

`
`
`asserted….”).
`
`CBM2015-00091
`
`The Petitioner uses the other exhibits identified above in a similar manner: to
`
`prove the truth of the matters being asserted in the exhibits. Petitioner has identified
`
`no hearsay exceptions in proffering this evidence. Indeed, no known hearsay
`
`exceptions are applicable. FRE 802-804. As such, Exhibits 1065, 1067, 1069, 1070,
`
`1071, 1072, 1073, 1074, 1075, 1081, 1095, 1096, 1097, 1098, 1099 and 1106
`
`constitute inadmissible hearsay and, in addition to the deficiencies discussed above,
`
`should be excluded for this reason as well.
`
`VI.
`
`CONCLUSION.
`
`For the reasons discussed above, Paragraphs 1-30, 45, 47-53, 57, 79-82, 91-93,
`
`107-114, 134-135, 140, 149-160, 164-188, 203, 222-231 and 270-271 of Exhibit 1063,
`
`and Exhibits 1065, 1067, 1068, 1069, 1070, 1071, 1072, 1073, 1074, 1075, 1081, 1083,
`
`1084, 1085, 1095, 1096, 1097, 1098, 1099, 1101, 1102 and 1106 should be excluded on
`
`the grounds that they are irrelevant, improper under 37 C.F.R. § 42.6(a)(3), incomplete,
`
`unauthenticated and/or inadmissible hearsay.
`
`
`
`
`
`-14-
`
`

`
`CBM2015-00091
`
`
`
`
`
`
`April 8, 2016 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
`
`
`
`
`
`
`
`-15-
`
`

`
`CBM2015-00091
`
`
`CERTIFICATE OF SERVICE
`
` certify that, in accordance with 37 C.F.R. §42.6, a true and correct copy of
`
` I
`
`
`
`the foregoing was served on April 8, 2016 by causing said documents to be delivered
`
`via electronic mail, per agreement of the parties, to counsel for Petitioner at the
`
`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
`Phone: 858-720-5732
`Fax: 858-720-5799
`LLu@perkinscoie.com
`
`following addresses:
`
`
`
`Bing Ai
`Perkins Coie LLP
`11988 El Camino Real, Suite 350
`San Diego, California 92130
`Phone: 858-720-5707
`Fax: 858-720-5799
`Ai-ptab@perkinscoie.com
`
`Matthew C. Bernstein
`Perkins Coie LLP
`11988 El Camino Real, Suite 350
`San Diego, California 92130
`Phone: 858-720-5721
`Fax: 858-720-5799
`MBernstein@perkinscoie.com
`
`
`
`
` April 8, 2016
`
`
`
`
`
`
`
`/Ethan M. Watts/
`
`
`
`
`-16-

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