UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`STARBUCKS CORPORATION, APPLE, INC., EVENTBRITE INC., and
`STARWOOD HOTELS & RESORTS WORLDWIDE, INC.,
`Petitioner
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`v.
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`Ameranth, Inc.
`Patent Owner
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`__________________
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`Case CBM2015-000991
`Patent No. 6,871,325 B1
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`__________________
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`PETITIONER’S REPLY TO PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION TO EXCLUDE
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`Paper No. 33
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`1 Case CBM2016-00006 has been joined with this proceeding.
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`STARBUCKS CORPORATION, APPLE, INC., EVENTBRITE INC., and
`STARWOOD HOTELS & RESORTS WORLDWIDE, INC.,
`Petitioner
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`v.
`
`Ameranth, Inc.
`Patent Owner
`
`__________________
`
`
`Case CBM2015-000991
`Patent No. 6,871,325 B1
`
`__________________
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`PETITIONER’S REPLY TO PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION TO EXCLUDE
`
`Paper No. 33
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`1 Case CBM2016-00006 has been joined with this proceeding.
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`TABLE OF CONTENTS
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`TABLE OF CONTENTS
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`I.
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`5
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`10
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`10
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`A.
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`Patent Owner’s Exhibits are Cited for Their Truth ............................ ..1
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`1.
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`2.
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`Exhibits 2053 and 2059 ........................................................... ..1
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`The Other Exhibits ................................................................... ..2
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`PATENT OWNER'S EXHIBITS ARE NOT AUTHENTICATED ............ ..4
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`EXHIBITS 2047-48, 2050, 2053, 2059, 2062 AND 2077-78 ARE
`EXHIBITS 2047-48, 2050, 2053, 2059, 2062 AND 2077-78 ARE
`INADMISSIBLE HEARSAY ........................................................................ 1
`INADMISSIBLE HEARSAY ...................................................................... ..1
`A.
`Patent Owner’s Exhibits are Cited for Their Truth .............................. 1
`Exhibits 2053 and 2059 ............................................................. 1
`1.
`The Other Exhibits ..................................................................... 2
`2.
`No Hearsay Exceptions Apply to the Challenged Exhibits ................. 3
`B.
`No Hearsay Exceptions Apply to the Challenged Exhibits ............... ..3
`B.
`Patent Owner’s Expert Cannot Save its Exhibits ................................. 4
`C.
`Patent Owner’s Expert Cannot Save its Exhibits ............................... ..4
`C.
`PATENT OWNER'S EXHIBITS ARE NOT AUTHENTICATED .............. 4
`II.
`III. UNCITED EXHIBITS SHOULD BE EXCLUDED ..................................... 5
`IV. WEAVER'S “HOSPITALITY” TESTIMONY IS INADMISSIBLE ........... 5
`V.
`CONCLUSION ............................................................................................... 5
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`III.
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`UNCITED EXHIBITS SHOULD BE EXCLUDED ................................... ..5
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`IV.
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`WEAVER'S “HOSPITALITY” TESTIMONY IS INADMISSIBLE ......... ..5
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`CONCLUSION ............................................................................................. ..5
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`15
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`TABLE OF AUTHORITIES
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`CASES
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`5
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`10
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`Medtronic, Inc. v. Nuvasive, Inc.,
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`IPR2014-00073 ................................................................................................. 1, 2
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`Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc.,
`135 S.Ct. 831 (2015) ............................................................................................. 5
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`Thomas v. Quintana
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`2014 WL5419418 (C.D.C.A. Oct. 22, 2014) .................................................. 4, 5
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`Triboro Quilt Mfg. Corp. v. Luve LLC,
`2014 WL1508606 at *7 (S.D.N.Y. Mar. 18, 2014) .............................................. 4
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`U.S. v. Mejia,
`545 F.3d 179 (2nd Cir. 2008) ............................................................................... 4
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`15
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`United States v. El-Mezain,
`664 F.3d 467 (5th Cir. 2011) ................................................................................ 3
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`OTHER AUTHORITIES
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`Fed. R. Evid. 801(2)(D) ............................................................................................. 3
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`Fed. R. Evid. 803 ....................................................................................................... 3
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`20
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`Fed. R. Evid. 807(a) ............................................................................................... 3, 4
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`ii
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`CBM2015-00099, Petitioner’s Reply to Patent Owner’s Opposition to Motion to Exclude
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`Pursuant to the Scheduling Order of September 14, 2015 (Paper 10),
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`Starbucks timely submits its reply to Patent Owner’s (“PO” or “Ameranth”)
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`Opposition (“Opposition”) to its Motion to Exclude (Paper 30) (“Motion”).
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`I.
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`EXHIBITS 2047-48, 2050, 2053, 2059, 2062 AND 2077-78 ARE
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`5
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`INADMISSIBLE HEARSAY
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`A.
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`Patent Owner’s Exhibits are Cited for Their Truth
`1.
`PO offered Ex. 2053 for the truth of the matter therein. Ex.2053 purports to
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`Exhibits 2053 and 2059
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`contain a series of e-mail exchanges between PO and a Microsoft employee and is
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`10
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`used to prove the following statement in the PO Response:
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`A copy of the PowerPoint presentation made to Starbucks,
`along with screen shots of the demonstration, is Exh. 2053
`hereto. Rob Reed, Starbucks' Director of Global Web Solutions,
`stated he "liked what he saw," and had "sent the details around"
`within Starbucks …
`Pap. 17 at 73-74. Similarly, Ameranth used Ex.2059 (the purported presentation
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`15
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`shown to Starbucks) to try to establish that the actual materials in the presentation
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`(their true contents) were copied by Starbucks. Ex.2041, ¶147. PO cites
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`Medtronic, but that case is inapposite. In Medtronic, the evidence at issue
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`20
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`involved, for example, two doctors’ website testimony describing the patients’
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`experience of receiving the patented procedure, which was cited to show the
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`procedure was discussed, publicized, and recognized in the industry. Medtronic,
`1
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`CBM2015-00099, Petitioner’s Reply to Patent Owner’s Opposition to Motion to Exclude
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`IPR2014-00073, Pap. 48 at 33-34; see also Pap. 26 at 20, 24-25. Unlike
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`Medtronic, PO here is trying to use the contents (and purported truth) of an email
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`between PO and a third party, and a presentation purportedly provided to Petitioner
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`to establish Starbucks allegedly received the presentation and that it was copied.
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`5
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`2.
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`The Other Exhibits
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`The other exhibits were all cited to prove the truth asserted therein and are
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`also distinguishable from Medtronic. Specifically, Ex.2047 (the improperly
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`annotated) 21CR brochure was cited to support PO’s statement: “[a]s shown in the
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`annotated brochure, aspects of the 21CR system directly correspond to elements of
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`the challenged patent claims… .” Pap. 17 at 60; Ex.2041, ¶¶56, 119. Similarly,
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`Exs.2077 and 2078 (purported case studies concerning the 21CR system) were
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`cited to prove the 21CR system had certain patented features and “close alignment
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`of the claims” (Ex.2041, ¶122). Likewise, the following exhibits were all cited for
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`the truth of their contents: Ex.2048 - press releases announcing Ameranth licenses
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`15
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`and a license amendment (Pap.17 at 64-66; Ex.2041, ¶¶123-26); Ex.2062 - press
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`releases concerning the technology awards and Microsoft investment (Pap. 17 at
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`68-70; Ex.2041, ¶¶130-33, 138); and Ex.2050 - an award document (Pap. 17 at 70;
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`Ex.2041, ¶134).
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`2
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`CBM2015-00099, Petitioner’s Reply to Patent Owner’s Opposition to Motion to Exclude
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`B. No Hearsay Exceptions Apply to the Challenged Exhibits
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`PO has failed to establish any of the challenged exhibits are non-hearsay or
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`entitled to any hearsay exception. As indicated in Starbucks’ Motion, Ex.2053 (a
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`third party’s e-mails) cannot constitute an “opposing party’s statement” under Fed.
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`5
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`R. Evid. 801(2)(D). Pap. 26 at 3. Regarding Exs.2047 and 2077-78, the
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`annotations are offered exactly for the truth asserted therein. Pap. 26 at 6-7. No
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`exception under Fed. R. Evid. 803 applies to any of these exhibits.2
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`PO next argues that Exs.2047-48, 2050, 2053, 2059, 2062 and 2077-78 fall
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`within the “residual exception” under Fed. R. Evid. 807(a). Pap.30 at 5. Instead of
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`establishing the alleged “trustworthiness” required by the rule, PO attempts to shift
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`this burden of proof to Starbucks, arguing it did not prove the negative - that those
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`exhibits are not trustworthy. Id. But PO’s burden shifting is contrary to law, and
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`fails to recognize that PO, not Starbucks, seeks admission of the evidence. United
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`States v. El-Mezain, 664 F.3d 467, 498 (5th Cir. 2011), as revised (Dec. 27, 2011).
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`15
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`“[T]he exception is to be used only rarely, in truly exceptional cases.” Id.
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`(internal citations omitted). Moreover, it was within PO’s “reasonable efforts” to
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`2 Patent Owner argues that “Petitioner has done the exact same thing with one of
`its exhibits in its Petition.” Pap. 30 at 5. This is not true. Starbucks did not add
`“attorney argument” or otherwise modify any of its evidence. Annotating in the
`body of a petition or reply for demonstrative purposes is one thing, but modifying
`or doctoring the underlying evidence like Ameranth did is something else.
`3
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`CBM2015-00099, Petitioner’s Reply to Patent Owner’s Opposition to Motion to Exclude
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`provide the Board with actual licenses, technical awards and proof of investment,
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`all of which are more probative to the PO’s alleged nexus to the secondary
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`considerations than PO’s hearsay exhibits. Fed. R. Evid. 807(a). PO only
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`providing press releases (Exs.2048, 2062) in these circumstances cannot “best
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`5
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`serve the purposes” of the rule or the “interests of justice.” Id.
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`C.
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`Patent Owner’s Expert Cannot Save its Exhibits
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`PO’s argument that “there is no jury in this proceeding” ignores the Meija
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`court’s remarks: “When an expert is no longer applying his extensive experience
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`and a reliable methodology, Daubert teaches that the testimony should be
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`10
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`excluded.” U.S. v. Mejia, 545 F.3d 179 (2nd Cir. 2008). Here, Dr. Weaver has no
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`personal knowledge nor expertise regarding the challenged exhibits. Nor did PO
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`meet its burden to show they are admissible “by a preponderance of the evidence.”
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`Triboro Quilt Mfg. Corp. v. Luve LLC, 2014 WL1508606 at *7 (S.D.N.Y. Mar. 18,
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`2014).
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`15
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`II.
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`PATENT OWNER'S EXHIBITS ARE NOT AUTHENTICATED
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`As made clear in Starbucks’ Motion, PO provided no evidence to
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`authenticate any of the challenged exhibits. Pap. 26 at 5, 7-13. Notably, Dr.
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`Weaver has no personal knowledge and cannot legitimately testify what Starbucks
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`did or said in 2006 or whether Starbucks ever received the presentation (and if so,
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`20
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`whether Ex.2059 was the presentation Starbucks received). Thomas v. Quintana,
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`4
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`CBM2015-00099, Petitioner’s Reply to Patent Owner’s Opposition to Motion to Exclude
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`2014 WL5419418 at *3-4 (C.D.C.A. Oct. 22, 2014) (denying testimony because
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`the declarant lacked personal knowledge). Ex.2059 is undisputedly an undated
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`document with no factual support for it ever being provided to Starbucks.
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`III. UNCITED EXHIBITS SHOULD BE EXCLUDED
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`5
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`PO’s Opposition does not dispute the uncited exhibits should be excluded.
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`Thus, Exs.2002, 2004, 2006-07, 2011, 2013-14, 2017, 2019-24, 2026-32, 2035-38,
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`2059, 2063-64 and 2067-80 should be excluded as irrelevant.
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`IV. WEAVER'S “HOSPITALITY” TESTIMONY IS INADMISSIBLE
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`Dr. Weaver lacks the requisite expertise to testify as to the “hospitality”
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`10
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`industry (Pap. 26 at 13-14), which is an issue independent from Dr. Helal’s
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`qualification. Dr. Weaver has no experience or expertise related to the hospitality
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`industry. Moreover, the Board is fully capable of understanding the intrinsic
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`evidence of the Challenged Patent, and Dr. Weaver's testimony regarding the
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`intrinsic evidence is inappropriate. Pap. 30 at 14-15; Teva Pharmaceuticals USA,
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`15
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`Inc. v. Sandoz, Inc., 135 S.Ct. 831, 841 (2015).
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`V. CONCLUSION
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`For the reasons above, the Board should exercise its discretion to exclude
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`Patent Owner’s evidence.
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`5
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`CBM2015-00099, Petitioner’s Reply to Patent Owner’s Opposition to Motion to Exclude
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`Respectfully submitted,
`
` /Yun L. Lu/
`Lead Counsel
`Bing Ai, Reg. No. 43,312
`
`Back-Up Counsel
`Matthew C. Bernstein (Pro Hac Vice)
`Patrick J. McKeever, Reg. No. 66,019
`Yun L. Lu, Reg. No. 72,766
`Attorneys for
`STARBUCKS CORPORATION
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`Dated: April 27, 2016
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`
`
`PERKINS COIE LLP
`11988 El Camino Real, Suite 350
`San Diego, CA 92130
`(858) 720-5700
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`6
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`CBM2015-00099, Petitioner’s Reply to Patent Owner’s Opposition to Motion to Exclude
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true copy of the foregoing
`PETITIONER’S REPLY TO PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION TO EXCLUDE has been served in their entirety this
`27th day of April, 2016 by electronic mail as agreed upon by the parties on the PO
`via its attorneys of record:
`
`LEAD COUNSEL
`John W. Osborne
`USPTO Reg. No. 36,231
`OSBORNE LAW LLC
`33 Habitat Lane
`Cortlandt Manor, NY 10567
`Email: josborne@osborneipl.com
`
` as well as on the joining parties:
`
`BACK-UP COUNSEL
`Michael D. Fabiano
`USPTO Reg. No. 44,675
`Fabiano Law Firm, P.C.
`12526 High Bluff Drive, Suite 300
`San Diego, CA 92130
`Email: mdfabiano@fabianolawfirm.com
`
`James M. Heintz
`DLA PIPER LLP (US)
`11911 Freedom Drive, Suite 300
`Reston, VA 20190
`jim.heintz@dlapiper.com
`
`Robert C. Williams
`DLA PIPER LLP (US)
`401 B Street, Suite 1700
`San Diego, CA 92101
`robert.williams@dlapiper.com
`
`
`Dated: April 27, 2016
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`Respectfully submitted,
`
` /Yun L. Lu/
`Lead Counsel
`Bing Ai, Reg. No. 43,312
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`Back-Up Counsel
`Matthew C. Bernstein (Pro Hac Vice)
`Patrick J. McKeever, Reg. No. 66,019
`Yun L. Lu, Reg. No. 72,766
`Attorneys for
`STARBUCKS CORPORATION
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`7
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`PERKINS COIE LLP
`11988 El Camino Real, Suite 350
`San Diego, California 92130
`(858) 720-5702
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