Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 28
` Entered: April 14, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE, INC., EVENTBRITE INC., and STARWOOD HOTELS &
`RESORTS WORLDWIDE, INC.,
`Petitioner,
`
`v.
`
`AMERANTH, INC.,
`Patent Owner.
`_______________
`
`Case CBM2016-00006
`Patent 6,871,325 B1
`_______________
`
`
`
`Before MEREDITH C. PETRAVICK, RICHARD E. RICE, and
`STACEY G. WHITE, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`DECISION
`
`Institution of Covered Business Method Patent Review
`and Grant of Motion for Joinder
`37 C.F.R. § 42.208
`37 C.F.R. § 42.222(b)
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 28
` Entered: April 14, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE, INC., EVENTBRITE INC., and STARWOOD HOTELS &
`RESORTS WORLDWIDE, INC.,
`Petitioner,
`
`v.
`
`AMERANTH, INC.,
`Patent Owner.
`_______________
`
`Case CBM2016-00006
`Patent 6,871,325 B1
`_______________
`
`
`
`Before MEREDITH C. PETRAVICK, RICHARD E. RICE, and
`STACEY G. WHITE, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`DECISION
`
`Institution of Covered Business Method Patent Review
`and Grant of Motion for Joinder
`37 C.F.R. § 42.208
`37 C.F.R. § 42.222(b)
`
`
`
`
`
`CBM2016-00006
`Patent 6,871,325 B1
`
`I.
`
`INTRODUCTION
`Apple Inc., EventBrite, Inc. and Starwood Hotels & Resorts
`Worldwide, Inc. (collectively, “Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting covered business method patent review of claims 11–13 and 15
`(“challenged claims”) of U.S. Patent No. 6,871,325 B1 (Ex. 1002, “the ’325
`patent”) pursuant to § 18 of the Leahy-Smith America Invents Act (“AIA”),
`and concurrently filed a Motion for Joinder (Paper 2, “Mot.”). The Motion
`for Joinder seeks to join this proceeding with Starbucks Corp. v. Ameranth,
`Inc., CBM2015-00099 (the “Starbucks CBM”). Mot. 1. Patent Owner filed
`a Preliminary Response (Paper 9, “Prelim. Resp.”). Patent Owner did not
`file an opposition to the Motion for Joinder. For the reasons described
`below, we institute a covered business method patent review of all the
`challenged claims and grant Petitioner’s Motion for Joinder.
`
`II.
`
`INSTITUTION OF COVERED BUSINESS METHOD REVIEW
`The Petition asserts the same grounds as those on which we instituted
`review in the Starbucks CBM. On September 14, 2015, we instituted a trial
`in the CBM2015-00099 on the following grounds:
`References
`Basis Claim(s) Challenged
`Brandt,1 NetHopper,2 and Carter3
`§ 103
`11–13
`
`
`1 Japanese Unexamined App. No. H10-247183 (published Sept. 14, 1998)
`(Ex. 1004) (certified translation, Ex. 1005, “Brandt”).
`2 NetHopper Version 3.2 User’s Manual, 1–24 (1997) (Ex. 1006,
`“NetHopper”).
`3 European Unexamined App. No. EP 0845748A2, published June 3, 1998
`(Ex. 1052, “Carter”).
`
`
`
`2
`
`
`
`CBM2016-00006
`Patent 6,871,325 B1
`
`
`References
`Brandt, NetHopper, Carter, and
`Rossmann4
`Brandt, Demers,5 Alonso6, and Carter
`Brandt, Demers, Alonso, Carter, and
`Rossmann
`Starbucks Corp. v. Ameranth, Inc., Case CBM2015-00099, slip. op. at 46
`(PTAB Sept. 14, 2015) (Paper 9).
`
`Basis Claim(s) Challenged
`§ 103
`15
`11–13
`15
`
`§ 103
`§ 103
`
`Patent Owner’s Preliminary Response puts forth certain arguments
`and evidence that were not considered as part of the institution decision in
`the Starbucks CBM. We note, however, an identity between the arguments
`and evidence put forth in the Preliminary Response and those put forth in the
`Patent Owner Response in the Starbucks CBM. Compare Prelim. Resp.,
`with Starbucks CBM, Paper 17 (“Starbuck PO Resp.”) (same claim
`construction and substantive arguments); compare Ex. 2001–2081, with
`Starbucks CBM Ex. 2001–2081 (same exhibits). Thus, the issues raised by
`Patent Owner in response to the Petition are the same as those currently
`under consideration in the Starbucks CBM.
`In view of the identity of the challenges in the instant Petition and in
`the petition in the CBM2015-00099, we institute a covered business method
`patent review in this proceeding on the same grounds as those on which we
`
`
`4 U.S. Patent No. 5,809,415, issued Sept. 5, 1998 (Ex. 1053, “Rossmann”).
`5 Alan Demers, et al., The Bayou Architecture: Support for Data Sharing
`Among Mobile Users, Mobile Computing Systems & Applications, 1995.
`Proceedings, Workshop on. IEEE, 1995. (Ex. 1009, “Demers”).
`6 Gustavo Alonso et al., Exotica/FMDC: A Workflow Management System for
`Mobile and Disconnected Clients, Databases & Mobile Computing, 28–45,
`1996 (Ex. 1012, “Alonso”).
`
`
`
`3
`
`
`
`CBM2016-00006
`Patent 6,871,325 B1
`
`instituted a covered business method patent review in CBM2015-00099. We
`do not institute trial on any other grounds.
`
`III. GRANT OF MOTION FOR JOINDER
`A covered business method patent review may be joined with another
`covered business method patent review, subject to the provisions of 35
`U.S.C. § 325(c), which per § 18(a) (1) of the AIA governs joinder of
`covered business method patent review proceedings:
`(c) JOINDER. — If more than 1 petition for a post-grant review
`under this chapter is properly filed against the same patent and
`the Director determines that more than 1 of these petitions
`warrants the institution of a post-grant review under section 324,
`the Director may consolidate such reviews into a single post-
`grant review.
`As the moving party, Petitioner bears the burden of proving that it is
`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
`should: (1) set forth the reasons joinder is appropriate; (2) identify any new
`grounds of unpatentability asserted in the petition; and (3) explain what
`impact (if any) joinder would have on the trial schedule for the existing
`review. See Frequently Asked Question H5, available at
`http://www.uspto.gov/patentsapplication-process/appealing-
`patentdecisions/trials/patent-reviewprocessing-system-prps-0.
`The Petition in this proceeding has been accorded a filing date of
`October 14, 2015 (Paper 6), which is within one month of the date of
`institution in CBM2015-00099, which was instituted on September 14,
`2015. The Motion for Joinder was filed on the same day as the Petition in
`this proceeding. The Motion for Joinder, therefore, was filed timely. 37
`C.F.R. § 42.222(b).
`
`
`
`4
`
`
`
`CBM2016-00006
`Patent 6,871,325 B1
`
`
`In its Motion for Joinder, Petitioner contends that the grounds asserted
`in the instant Petition and the Starbucks CBM petition
`rely on the same the same expert declarant, the same prior art
`and the same invalidity analysis. Indeed, in order to minimize
`any additional burden that would result from the joinder
`requested in this Motion, the substantive portions of the Apple
`Petition are intentionally identical to the petition submitted by
`Starbucks in CBM2015-00099 (“Starbucks Petition”), except
`that the Apple Petition excludes grounds that were not instituted
`by the Board.
`
`Mot. 1. Petitioner asserts that it and Starbucks have agreed to cooperate in
`the handling of the joined proceeding. Id. at 11. Petitioner does not seek an
`alteration to the existing schedule. Id. at 10, 11. In addition, the identity of
`its grounds with those in the Starbucks CBM means that Patent Owner will
`not be prejudiced because the joinder of Petitioner to the Starbucks CBM
`will not require Patent Owner to perform any additional analysis because it
`does not raise any issues that are not already before the Board. Id. at 10.
`Further, no additional depositions will be necessary because Petitioner and
`Starbucks rely upon the same declarant. Id. at 10–11. Petitioner “agree[s] to
`consolidated filings for all substantive papers in the proceeding.” Id. at 9.
`In addition, “Petitioner agrees to allow Starbucks to lead the joined CBM
`proceeding on behalf of all named petitioners so long as Starbucks remains a
`party to the joined CBM proceeding.” Id. On this record, we find that
`joinder is appropriate and we grant Petitioner’s Motion for Joinder.
`
`IV. ORDER
`
`In view of the foregoing, it is
`ORDERED that Petitioner’s Motion for Joinder is granted;
`
`
`
`5
`
`
`
`CBM2016-00006
`Patent 6,871,325 B1
`
`
`FURTHER ORDERED that CBM2016-00006 is hereby instituted and
`joined with CBM2015-00099;
`FURTHER ORDERED that the grounds on which CBM2015-00099
`was instituted are unchanged and no other grounds are included in the joined
`proceeding;
`FURTHER ORDERED that the Scheduling Order entered in
`CBM2015-00099 (Paper 10) remains unchanged and shall govern the
`schedule of the joined proceedings;
`FURTHER ORDERED that, throughout the joined proceeding,
`Starbucks Corporation, Apple Inc., EventBrite, Inc. and Starwood Hotels &
`Resorts Worldwide, Inc. will file all papers jointly in the joined proceeding
`as consolidated filings, and will identify each such paper as “Consolidated,”
`except that papers filed on behalf of a single party need not be marked
`Consolidated;
`FURTHER ORDERED that CBM2016-00006 is terminated under
`37 C.F.R. § 42.72 and all further filings in the joined proceedings are to be
`made in CBM2015-00099;
`FURTHER ORDERED that a copy of this Decision will be entered
`into the record of CBM2015-00099; and
`FURTHER ORDERED that the case caption in CBM2015-00099
`shall be changed to reflect joinder with this proceeding in accordance with
`the attached example.
`
`6
`
`
`
`
`
`
`
`CBM2016-00006
`Patent 6,871,325 B1
`
`FOR PETITIONER:
`
`James M. Heintz
`Robert C. Williams
`DLA Piper LLP (US)
`jim.heintz@dlapiper.com
`robert.williams@dlapiper.com
`
`
`
`FOR PATENT OWNER:
`
`John W. Osborne
`OSBORNE LAW LLC
`josborne@osborneipl.com
`
`Michael D. Fabiano
`FABIANO LAW FIRM, P.C.
`mdfabiano@fabianolawfirm.com
`
`
`
`
`
`7
`
`
`
`CBM2016-00006
`Patent 6,871,325 B1
`
`
`Example Case Caption for Joined Proceeding
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`STARBUCKS CORPORATION, APPLE, INC., EVENTBRITE INC., and
`STARWOOD HOTELS & RESORTS WORLDWIDE, INC.,
`Petitioner,
`
`v.
`
`AMERANTH, INC.,
`Patent Owner.
`_______________
`
`Case CBM2015-000997
`Patent 6,871,325 B1
`_______________
`
`
`
`7 Case CBM2016-00006 has been joined with this proceeding.
`
`
`
`8
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