UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`STARBUCKS CORP.
`Petitioner
`
`v.
`
`AMERANTH, INC.
`Patent Owner
`
`____________
`
`Case CBM2015-00099
`U.S. Patent No. 6,871,325
`____________
`
`
`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 CBM2015-00099
`U.S. Patent No. 6,871,325
`____________
`
`
`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. Further, the systemic nexus of "synchronization,
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`integration, and consistency" is neither “inaccurate” nor "improper", as Petitioner
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`erroneously argues. In fact, these inventive merits were identified by the Board
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`itself in CBM 2014-00015, Paper 20, (Inst. Dec.) and with the Board’s
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`construction of "synchronization" yielding "consistency", confirms the nexus to be
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`both accurate and correct. (See POR at 56-57.) Dallas Improv owner Tom Castillo
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`confirmed he was "won over" by Ameranth's May 1999 demonstration of 21CR at
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`the NRA Show and that the "total solution" he saw i.e. the ‘nexus’ was one that
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`no other company could match thus confirming the inventive nexus was
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`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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`includes the testimony of eyewitness John Harker who confirmed that Ameranth’s
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`21CR was seen as the most innovative in both the US and the European
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`CBM2015-00091
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`Hospitality Shows of 1999, a remarkable achievement for a small, new company
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`and its only product, 21CR: "… Ameranth was arguably recognized as the overall
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`most innovative company/technology at the May 1999 NRA Show in Chicago,
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`with hundreds of customers coming to its booth… Keith McNally and I
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`introduced the 21CR system at the October 1999 European Restaurant Show in
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`London and ... 21CR was awarded the ‘Innovation of the Year’ award for the
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`entire European Hospitality Technology Market. Ameranth was selected first
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`ahead of hundreds of different technology companies and this special and
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`prestigious award further validated the uniqueness of Ameranth’s technology and
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`its innovative vision." (Exh. 2062 at p. 172; emphasis added.) This extraordinary
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`and undisputed market reaction upon the introduction of a new product would not
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`have occurred for an "obvious" product, or for "existing technology".
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`
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`Petitioner's arguments regarding PO's license evidence are also erroneous.
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`Ameranth's 46 patent licenses are for the closely-related patents in the same family
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`of which the '850 patent is the parent. The press releases of the patent licenses
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`were jointly issued with the licensees and the Agilysis license (Exh 2048, p. 11-12)
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`specifically included the `850 and `325 patents, specifically confirmed an $80,000
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`annual payment (8th year in a row of payments) and the $200/HH license fee is
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`identical to the $200/HH fee that Micros, party to related petitions, offered in
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`seeking to secure exclusive IP rights for the 21CR technology in 2000, see Exh.
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`CBM2015-00091
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`2062, p. 134); all ignored and unrebutted by Starbucks. Jersey Mike’s 1500 +
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`locations are also clearly paying license fees: "Jersey Mike's is pleased to have
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`secured favorable license rates for Ameranth’s novel mobile/web patents…."
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`(Jersey Mike’s CIO, Exh 2048, p. 3, emp. added). Further, the vast majority of
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`Ameranth’s 44 licenses occurred outside litigation. Since October 2013, when the
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`first CBMs were filed against Ameranth’s patents, no new suits have been filed or
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`threatened, and yet 18 additional licensees have independently made their own
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`decisions to license this Ameranth family of patents. This includes restaurant giant
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`Taco Bell, as stated by Taco Bell's own CIO: "….Our decision to license their
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`data synchronization patents affords Taco Bell…" (Exh 2048, p. 19, emp. added.)
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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", see Exh. 2022, pp. 65-66.
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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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`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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`CBM2015-00091
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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 and
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`all Medieval Times restaurants (Exh. 2021, pp. 23-25, 36).
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`As to praise being associated with the nexus, see e.g. the "Brainstorm"
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`article, Advanced Hospitality’s Passas described 21CR as the "integrator of the
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`various systems needed to make the technology work.” (Exh. 2062 at p. 167,
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`emp. added.) Further, the 1999 Microsoft Case Study on 21CR praised 21CR and
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`confirms that 21CR includes the claimed "communications control module":
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`"Ameranth’s hand-held computers communicate with Ameranth’s communication
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`control module and other interface modules…", and the "other interface modules"
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`also reflect the claimed "API". (Exh. 2062, p. 82, 3rd col., emphasis added.)
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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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`CBM2015-00091
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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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`of the Challenged Claims. This expert testimony is unrebutted.
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`
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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 by Micros,
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`Marriott, Pizza Hut, and Agilysys, all of whom received Ameranth’s technical
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`information and later copied it, see POR at pp. 72-78 and exhibits cited therein.
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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 admitted, "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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`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:
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`
`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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