`571.272.7822
`
`Paper No. 15
`Filed: September 1, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`EXPEDIA, INC., FANDANGO, LLC, HOTELS.COM, L.P., HOTEL
`TONIGHT, INC., HOTWIRE, INC., KAYAK SOFTWARE CORP.,
`OPENTABLE, INC., ORBITZ, LLC, PAPA JOHN’S USA, INC.,
`STUBHUB, INC., TICKETMASTER, LLC, LIVE NATION
`ENTERTAINMENT, INC., TRAVELOCITY.COM LP, WANDERSPOT
`LLC, AGILYSYS, INC., DOMINO’S PIZZA, INC., DOMINO’S PIZZA,
`LLC, HILTON RESORTS CORPORATION, HILTON WORLDWIDE,
`INC., HILTON INTERNATIONAL CO., MOBO SYSTEMS, INC., PIZZA
`HUT OF AMERICA, INC., PIZZA HUT, INC., and USABLENET, INC.,
`Petitioner,
`
`v.
`
`AMERANTH, INC.,
`Patent Owner.
`____________
`
`Case CBM2015-00096
`Patent 6,384,850 B1
`____________
`
`Before MEREDITH C. PETRAVICK, RICHARD E. RICE, and
`STACEY G. WHITE, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`DECISION
`Institution of Covered Business Method Patent Review
`37 C.F.R. § 42.208
`Grant of Motion for Joinder
`37 C.F.R. § 42.222(b)
`
`
`
`CBM2015-00096
`Patent 6,384,850 B1
`
`
`I. INTRODUCTION
`
`A. Background
`
`On April 3, 2015, Expedia, Inc., Fandango, LLC, Hotels.com L.P.,
`
`Hotel Tonight, Inc., Hotwire, Inc., Kayak Software Corp., Opentable, Inc.,
`
`Orbitz, LLC, Papa John’s USA, Inc., Stubhub, Inc., Ticketmaster, LLC, Live
`
`Nation Entertainment, Inc., Travelocity.com LP, Wandersport LLC,
`
`Agilysys, Inc., Domino’s Pizza, Inc., Domino’s Pizza, LLC, Hilton Resorts
`
`Corporation, Hilton Worldwide, Inc., Hilton International Co., Mobo
`
`Systems, Inc., Pizza Hut of America, Inc., Pizza Hut, Inc., and Usablenet
`
`Inc. (“collectively, Petitioner”) filed a Petition requesting a review under the
`
`transitional program for covered business method patents of U.S. Patent No.
`
`6,384,850 B1 (Ex. 1001, “the ’850 patent”). Paper 8 (“Pet.”). Ameranth,
`
`Inc. (“Patent Owner”) filed a Preliminary Response on June 8, 2015. Paper
`
`12 (“Prelim. Resp.”).
`
`The Petition sets forth alleged grounds of unpatentability as follows:
`
`Ground
`
`Prior Art
`
`Challenged Claims
`
`§ 103
`
`§ 103
`
`§ 103
`
`Inkpen1, Nokia2, and Digestor3
`
`DeLorme4
`
`Blinn5 and Inkpen
`
`12–16
`
`12–16
`
`12–16
`
`
`1 Gary Inkpen, INFORMATION TECHNOLOGY FOR TRAVEL AND TOURISM, 1–195
`(2d ed. 1998) (Ex. 1021) (“Inkpen”).
`2 Nokia 9000i Communicator Owner’s Manual, 1–131 (1997) (Ex. 1023)
`(“Nokia”).
`3 Timothy W. Bickmore & Bill N. Schilit, Digestor: device independent
`access to the World Wide Web, Computer Networks and ISDN Systems 29,
`1075–82 (1997) (Ex. 1022) (“Digestor”).
`4 DeLorme et al., U.S. Patent No. 5,948,040 (issued Sept. 7, 1999) (Ex.
`1024) (“DeLorme”).
`
`2
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`
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`
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`CBM2015-00096
`Patent 6,384,850 B1
`
`
` We have jurisdiction under 35 U.S.C. § 324, which provides that a
`
`covered business method patent review may not be instituted “unless . . . it is
`
`more likely than not that at least 1 of the claims challenged in the petition is
`
`unpatentable.”
`
`Petitioner also filed a Motion for Joinder (Paper 10, “Mot.”) seeking
`
`to join this proceeding, under 35 U.S.C. § 325(c), with the covered business
`
`method patent review in Apple, Inc., Eventbrite, Inc., Starwood Hotels &
`
`Resorts Worldwide, Inc., v. Ameranth, Inc., Case CBM2015-00080 (“the
`
`Apple CBM”). The Motion for Joinder indicates that the Petitioner in the
`
`Apple CBM does not oppose joinder. Mot. 2. Patent Owner did not file an
`
`opposition to the Motion for Joinder.
`
`For the reasons discussed below, we institute a covered business
`
`method patent review on the ground of claims 12–16 under 35 U.S.C. § 103
`
`over DeLorme and grant Petitioner’s Motion for Joinder.
`
`
`
`II. INSTITUTION OF COVERED BUSINESS METHOD PATENT
`REVIEW ON SAME GROUNDS INSTITUTED IN THE APPLE CBM
`
`Concurrent with this Decision, we institute a covered business method
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`patent review on the ground of claims 12–16 under 35 U.S.C. § 103 over
`
`DeLorme. Apple CBM, Paper 13.
`
`The Petition asserts the same grounds, relies upon the same expert
`
`declarant, prior art, claim charts, and claim constructions as relied upon in
`
`the Apple CBM. Mot. 2. The Petition is substantively identical to the
`
`Petition in the Apple CBM. Id. The Preliminary Response is also
`
`substantively identical to the Preliminary Response filed in the Apple CBM.
`
`5 Blinn et al., U.S. Patent No. 6,058,373 (issued May 2, 2000) (Ex. 1025)
`(“Blinn”).
`
`3
`
`
`
`
`
`CBM2015-00096
`Patent 6,384,850 B1
`
`It relies upon the same claim constructions, evidence, and contentions as
`
`relied upon in the Apple CBM.
`
`For the same reasons given in the Decision to Institute in the Apple
`
`CBM, we institute a covered business method patent review in this
`
`proceeding on the ground of claims 12–16 under 35 U.S.C. § 103 over
`
`DeLorme, the same ground which we instituted in the Apple CBM. Also for
`
`the same reasons given in the Decision to Institute in the Apple CBM, we do
`
`not institute a covered business method patent review in this proceeding on
`
`the grounds of claims 12–16 under 35 U.S.C. § 103 over Inkpen, Nokia, and
`
`Digestor and under 35 U.S.C. § 103 over Blinn and Inkpen.
`
`
`
`III. GRANT OF MOTION FOR JOINDER
`
`As noted above, Patent Owner did not oppose Petitioner’s request to
`
`join this Petition with the Apple CBM. The petitioner in the Apple CBM
`
`also does not oppose Petitioner’s request to join this Petition with the Apple
`
`CBM. See Mot. 2; Paper 11, 2.
`
`The grounds upon which we institute a covered business method
`
`patent review in this proceeding are identical to the grounds upon which we
`
`instituted in the Apple CBM. Further, as noted above, the Petition includes
`
`the same arguments and relies upon the same evidence and grounds of
`
`unpatentability.
`
`Under the circumstances, we conclude that Petitioner has
`
`demonstrated that joinder of the two covered business method patent
`
`reviews will not unduly complicate or delay the Apple CBM, and therefore,
`
`we grant Petitioner’s Motion for Joinder. All filings in the consolidated
`
`proceeding will be made by petitioner in the Apple CBM on behalf of both
`
`4
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`
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`CBM2015-00096
`Patent 6,384,850 B1
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`petitioner in the Apple CBM and Petitioner in this proceeding, except for
`
`motions that do not involve the other party. See Paper 11, 2. Petitioner shall
`
`not file any separate papers or briefing in these consolidated proceedings
`
`without authorization from the Board. In addition, Petitioner shall not seek
`
`any additional discovery beyond that sought by the petitioner in the Apple
`
`CBM.
`
`Petitioner and Petitioner in the Apple CBM shall resolve any disputes
`
`between them concerning the conduct of the joined proceedings and shall
`
`contact the Board if any such matters cannot be resolved. No additional
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`burdens shall be placed on Patent Owner as a result of the joinder.
`
`In consideration of the above, we institute a covered business method
`
`patent review in this proceeding and grant Petitioner’s Motion for Joinder.
`
`
`
`IV. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that CBM2015-00096 is instituted and joined with
`
`CBM2015-00080;
`
`FURTHER ORDERED that the ground on which CBM2015-00080
`
`was instituted is unchanged, and no other grounds are instituted in the joined
`
`proceeding;
`
`FURTHER ORDERED that the Scheduling Order in place for
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`CBM2015-00080 shall govern the joined proceedings;
`
`FURTHER ORDERED that, throughout the consolidated proceeding,
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`any paper, except for a motion that does not involve the other party, shall be
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`filed by petitioner in the Apple CBM as a single consolidated filing on
`
`behalf of both petitioners, each paper shall be in accordance with the page
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`5
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`
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`CBM2015-00096
`Patent 6,384,850 B1
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`limits established by the Board’s rules, and each filing will be identified as a
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`consolidated filing;
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`FURTHER ORDERED that except as otherwise agreed by counsel,
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`petitioner in the Apple CBM will conduct cross-examination and other
`
`discovery on behalf of both Petitioners, and that Patent Owner is not
`
`required to provide separate discovery responses or additional deposition
`
`time as a result of consolidation;
`
`FURTHER ORDERED that CBM2015-00096 is terminated under 37
`
`C.F.R. § 42.72, and all further filings in the joined proceeding are to be
`
`made in CBM2015-00080;
`
`FURTHER ORDERED that a copy of this Decision will be entered
`
`into the record of CBM2015-00080; and
`
`FURTHER ORDERED that the case caption in CBM2015-00080
`
`shall be changed to reflect joinder with this proceeding in accordance with
`
`the attached example.
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`
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`6
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`
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`CBM2015-00096
`Patent 6,384,850 B1
`
`
`
`FOR PETITIONER:
`
`Richard S. Zembek
`Gilbert A. Greene
`Norton Rose Fulbright US LLP
`richard.zembek@nortonrosefullbright.com
`bert.green@nortonrosefullbright.com
`
`FOR PATENT OWNER:
`
`John Osborne
`Michael Fabiano
`josborne@osborneipl.com
`mdfabiano@fabianolawfirm.com
`
`7
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC., EVENTBRITE INC., STARWOOD HOTELS & RESORTS
`WORLDWIDE, INC., EXPEDIA, INC., FANDANGO, LLC,
`HOTELS.COM, L.P., HOTEL TONIGHT, INC., HOTWIRE, INC.,
`KAYAK SOFTWARE CORP., OPENTABLE, INC., ORBITZ, LLC, PAPA
`JOHN’S USA, INC., STUBHUB, INC., TICKETMASTER, LLC, LIVE
`NATION ENTERTAINMENT, INC., TRAVELOCITY.COM LP,
`WANDERSPOT LLC, AGILYSYS, INC., DOMINO’S PIZZA, INC.,
`DOMINO’S PIZZA, LLC, HILTON RESORTS CORPORATION,
`HILTON WORLDWIDE, INC., HILTON INTERNATIONAL CO., MOBO
`SYSTEMS, INC., PIZZA HUT OF AMERICA, INC., PIZZA HUT, INC.,
`and USABLENET, INC.,
`Petitioner
`
`v.
`
`AMERANTH, INC.
`Patent Owner
`____________
`
`Case CBM2015-000801
`Patent 6,384,850 B1
`____________
`
`
`
`
`1 CBM2015-00096 has been consolidated with this proceeding.
`8