UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`STARBUCKS CORP., APPLE, INC., EVENTBRITE, INC., and
`STARWOOD HOTELS & RESORTS WORLDWIDE, INC.,
`Petitioner
`
`v.
`
`AMERANTH, INC.
`Patent Owner
`
`____________
`
`Case CBM2015-000911
`U.S. Patent No. 6,384,850
`____________
`
`
`PATENT OWNER’S REPLY BRIEF IN SUPPORT OF
`PATENT OWNER’S MOTION TO EXCLUDE
`
`
`
`
`1 Case CBM2016-00007 has been joined with this proceeding.
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`STARBUCKS CORP., APPLE, INC., EVENTBRITE, INC., and
`STARWOOD HOTELS & RESORTS WORLDWIDE, INC.,
`Petitioner
`
`v.
`
`AMERANTH, INC.
`Patent Owner
`
`____________
`
`Case CBM2015-000911
`U.S. Patent No. 6,384,850
`____________
`
`
`PATENT OWNER’S REPLY BRIEF IN SUPPORT OF
`PATENT OWNER’S MOTION TO EXCLUDE
`
`
`
`
`1 Case CBM2016-00007 has been joined with this proceeding.
`
`
`
`
`
`I.
`
`THE UNCITED EVIDENCE SHOULD BE EXCLUDED.
`
`CBM2015-00091
`
`As discussed in Ameranth’s Motion, paragraphs 1-30, 45, 57, 79-82, 91-93,
`
`107-114, 134-135, 140, 149-160, 164-188, 203, 222-231 and 270-271 of Exhibit
`
`1063 (the reply declaration of Dr. Helal) should be excluded as irrelevant and
`
`improper under 37 C.F.R. § 42.6(a)(3) because they are not discussed or even
`
`cited to in the Reply Brief. Exhibits 1068-1070, 1074, 1083-1085, 1095, 1096-
`
`1099, 1101, 1102 and 1106 are irrelevant for the same reason. Petitioner first tries
`
`to justify the uncited evidence by complaining that Ameranth provided “new”
`
`expert testimony along with its Response to the Petition.2 (Pap. 31, p. 1.)
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`However, Ameranth’s evidence is not at issue here and Petitioner’s conflation of
`
`the issues ignores the fact that Petitioner completely failed to establish any
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`relevancy of the uncited paragraphs and exhibits in its Reply Brief.
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`Also, Petitioner belatedly argues that the uncited evidence is “highly
`
`relevant” because it rebuts Dr. Weaver’s declaration and Ameranth’s Response.
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`(Pap. 31, p. 2.) In doing so, Petitioner ignores 37 C.F.R. § 42.23(b), which
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`provides in part that “[a]ll arguments for the relief requested in a motion must be
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`made in the motion.” Petitioner should have included any discussion pertaining to
`
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`2 Obviously, Ameranth’s Response was the first opportunity to submit the “new”
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`evidence and raise issues Petitioner claims Ameranth “inserted” into the case.
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`
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`-1-
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`
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`the uncited paragraphs and exhibits it wanted to make in its Reply Brief.
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`CBM2015-00091
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`Admitting that it merely cited to “170 out of 271 paragraphs of Dr. Helal’s
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`supplemental declaration” (Pap. 31, p. 7), Petitioner claims that it did not violate
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`37 C.F. R. § 42.6(a)(3). But not citing the paragraphs at all is a more egregious
`
`violation of the intent of the rule than not sufficiently discussing them. Also, 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 clearly 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 nonsensical argument with respect to the uncited
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`exhibits – conceding they were not cited in the Reply Brief but arguing that many
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`of the uncited exhibits “were actually cited in certain paragraphs of Dr. Helal’s
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`supplemental declaration, which were then referenced in the Reply.” (Pap. 31, p.
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`2, FN 2.) However, Petitioner’s position is nothing more than an attempt to
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`improperly incorporate by reference even more material via the declaration.
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`Moreover, Petitioner made the exact same challenge to several of
`
`Ameranth’s exhibits by arguing that they “were never cited or otherwise relied on”,
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`and that Ameranth had “failed to establish how these exhibits are relevant.” (E.g.,
`
`Pap. 26, p. 13.)3 Plainly, Petitioner is trying to “have its cake and eat it too.”
`
`
`3 Petitioner incorrectly claims its objection is different because it objected only to
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`
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`-2-
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`
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`Finally, in arguing it didn’t violate 37 C.F.R. § 42.6(a)(3), Petitioner
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`CBM2015-00091
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`incorrectly claims cases cited by Ameranth presented “distinguishable factual
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`scenarios.” (Pap. 31, p. 6.) For example, Petitioner tries to distinguish the
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`Conopco, Inc. case stating Petitioner’s experts are “rebutting the Patent Owner’s
`
`own expert who asserted new evidence into the case.” (Pap. 31, p. 6.) But the
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`relevant aspect of the Conopco, Inc. case was the Board’s decision to not consider
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`information presented in a supporting declaration that was not discussed in a
`
`petition. IPR2013-00510, Pap. 9, pp. 8-9. Similarly, here Petitioner failed to
`
`discuss or even cite the identified evidence in its Reply Brief.
`
`II. THE INCOMPLETE EXHIBITS SHOULD BE EXCLUDED.
`
`Petitioner argues providing complete references, instead of excerpts, would
`
`have “swamped” the Board. (Pap. 31, p. 8.) But clearly the Board is not obligated
`
`to read every word of an exhibit if it is unnecessary to do so. By failing to provide
`
`the complete references, however, Petitioner has denied the Board the option of
`
`reviewing other portions of the references to determine whether other portions
`
`clarify or contradict the excerpts provided.
`
`
`exhibits that were not discussed “anywhere” by Ameranth. (Pap. 31, p. 5, FN 4.)
`
`But Petitioner objected to exhibits that were cited in Dr. Weaver’s declaration (e.g.
`
`Exhs. 2012 and 2059). (See Pap. 26, p. 13; Exh. 2041, ¶¶ 43, 147 and FN 58.)
`
`
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`-3-
`
`
`
`
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`Moreover, contrary to Petitioner’s assertion (Pap. 31, p. 9), Ameranth’s
`
`CBM2015-00091
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`argument is not inconsistent with its objection to uncited exhibits. Parties often
`
`properly cite to portions of an exhibit that they contend are relevant. Not even
`
`citing an exhibit at all (and failing to establish its relevance) is a different issue
`
`than providing incomplete references which, whether or not they are relevant, is
`
`improper for the reasons discussed above and in the Motion.
`
`III. THE IDENTIFIED EXHIBITS ARE NOT AUTHENTICATED.
`
`Petitioner’s primary argument that Exhibits 1065, 1067, 1069-75, 1081,
`
`1095, 1097-99 and 1106 are authenticated is that “Dr. Helal and Dr. Khan provided
`
`witness testimony authenticating the… exhibits as what they are claimed to be.”
`
`(Pap. 31, p. 11.) However, an examination of Dr. Helal’s and Dr. Khan’s
`
`declarations shows that, while they may cite to the exhibits, they do not
`
`“authenticate” them. For example, Dr. Helal cites to Exhibit 1075 for support of
`
`an argument, but does not authenticate the document. (Exh. 1063, ¶¶ 86, 146.) The
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`other exhibits at issue are treated similarly in the declarations. (See Exh. 1063, ¶¶
`
`62, 63, 146, 212, 213, 216, 217; Exh. 1064, ¶¶ 13, 16, 17, 18, 24, 25.)
`
`The cases cited by Petitioner do not support its arguments. In the SAP
`
`America, Inc. case, the Board cited FRE 901(b)(4) in commenting that a party may
`
`authenticate evidence using circumstantial evidence in conjunction with distinctive
`
`characteristics of the evidence. CBM2013-00013, Pap. 61, pgs. 27-28. Yet
`
`
`
`-4-
`
`
`
`
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`Petitioner has failed to make a showing under FRE901(b)(4). In the Toytrackerz
`
`CBM2015-00091
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`LLC case, the Court found that plaintiffs had not met the requirements for
`
`authenticating a website printout and that they had, as the Petitioner has with
`
`respect to its exhibits in this proceeding, failed “to identify who retrieved the
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`website printout, when and how the pages were printed, or on what basis the
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`printouts accurately reflect the contents of the website on a certain date.”
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`Toytrackerz LLC, 2009 WL 2591329, *6 (D. Kan. Aug. 21, 2009).
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`IV. THE IDENTIFIED EXHIBITS ARE HEARSAY.
`
`Petitioner argues Exhibits 1065, 1067, 1069-1075, 1081, 1095-1099 and
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`1106 are not offered for the truth of the matters asserted therein, but rather for
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`various other purposes, such as to show Ameranth’s claims of receiving awards
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`“are dubious at best.” (Pap. 31, p. 14.) But, as discussed in the Motion, the
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`exhibits are used for the truth of the matter asserted. Using one of Petitioner’s
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`examples, Petitioner cites Exhibit 1095 (a press release announcing winners of an
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`award) to try to show the “truth” asserted, i.e., that Ameranth didn’t win the award.
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`(Exh. 1063, ¶ 212.) Otherwise, Petitioner recites elements of the residual
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`exception and makes unsupported assertions such as that an exhibit “meets the
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`business record exception”, but fails to actually establish any such exceptions.
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`V. CONCLUSION.
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`Ameranth’s Motion to Exclude should be granted.
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`
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`-5-
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`
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`CBM2015-00091
`
`April 27, 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
`
`
`
`
`
`
`
`-6-
`
`
`
`CBM2015-00091
`
` I
`
`
`
`
`CERTIFICATE OF SERVICE
`
` certify that, in accordance with 37 C.F.R. §42.6, a true and correct copy
`
`of the foregoing was served on April 27, 2016 by causing said documents to be
`
`delivered via electronic mail, per agreement of the parties, to counsel for
`
`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
`
`Robert C. Williams
`DLA PIPER LLP (US)
`401 B Street, Suite 1700
`San Diego, CA 92101
` robert.williams@dlapiper.com
`
`
`Petitioner at the 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
`
`
`James M. Heintz
`DLA PIPER LLP (US)
`11911 Freedom Drive, Suite 300
`Reston, VA 20190
` jim.heintz@dlapiper.com
`
`
`
`
`
`
`
`/Ethan M. Watts/
`
`-7-
`
`
`
` April 27, 2016
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