CALDARELLI HEJMANOWSKI PAGE LEER LLP William J. Caldarelli ... Inc's - Statement of... · Case 3:11-cv-01810-DMS-WVG Document 1184 Filed 07/06/18 PageID.70995 Page 1 of 82 PLAINTIFF

PLAINTIFF AMERANTH, INC.’S MEMORANDUM OF CONTENTIONS OF

FACT AND LAW Case No. 3:11-cv-01810 DMS (WVG)

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

CALDARELLI HEJMANOWSKI PAGE & LEER LLP

William J. Caldarelli (SBN #149573)

Ben West (SBN #251018)

12340 El Camino Real, Suite 430

San Diego, CA 92130

Telephone: (858) 720-8080

[email protected]; [email protected]

Attorneys for Plaintiff Ameranth, Inc. Additional counsel for Plaintiff listed below.

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF CALIFORNIA

IN RE: AMERANTH PATENT LITIGATION

Lead Case No. 11cv1810 DMS (WVG) PLAINTIFF AMERANTH, INC.’S

MEMORANDUM OF

CONTENTIONS OF FACT AND

LAW [LR 16.1(f)(2)-(3)] [PIZZA GROUP DEFENDANTS]

Case 3:11-cv-01810-DMS-WVG Document 1184 Filed 07/06/18 PageID.70995 Page 1 of 82

mailto:[email protected]




1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

FABIANO LAW FIRM, P.C.

Michael D. Fabiano (SBN #167058)

12526 High Bluff Drive, Suite 300

San Diego, CA 92130

Telephone: (619) 742-9631

[email protected]

OSBORNE LAW LLC

John W. Osborne (Appointed Pro Hac Vice)

33 Habitat Lane

Cortlandt Manor, NY 10567

Telephone: (914) 714-5936

[email protected]

WATTS LAW OFFICES

Ethan M. Watts (SBN #234441)

12340 El Camino Real, Suite 430

San Diego, CA 92130

Telephone: (858) 509-0808

Facsimile: (619) 878-5784

[email protected]

Attorneys for Plaintiff Ameranth, Inc.





1



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

Plaintiff Ameranth, Inc. (“Ameranth”) provides this Memorandum of

Contentions of Fact and Law pursuant to Local Rule 16.1(f)(2)-(3) and Federal

Rule of Civil Procedure 26(a)(3).

A. Material Facts

1. Ameranth is the owner of U.S. Patent No. 8,146,077 (“the ‘077

Patent”).

2. The ‘077 Patent issued from an application which was a continuation

of the application which issued as U.S. Patent No. 6,982,733 ("the ‘733 Patent"),

which was a continuation-in-part of the application which issued as U.S. Patent

No. 6,384,850 ("the ‘850 Patent"), which application was filed on September 21,

1999. Ameranth’s U.S. Patent No. 6,871,325 ("the ‘325 Patent"), the application

for which was filed on November 1, 2001, also issued from an application which

was a continuation of the ‘850 Patent.

3. The ‘850 Patent issued on May 7, 2002. The ‘325 Patent issued on

March 22, 2005.

4. The ‘077 Patent issued on March 27, 2012.

5. The USPTO issued the ‘077 Patent over hundreds of identified

references.

6. The ‘077 Patent is entitled to a priority date of at least as early as

September 21, 1999.

7. Keith McNally, and his co-inventors, first conceived of the core

inventive ideas claimed in the ‘077 Patent in September of 1998 while working on

products for use in the restaurant and hospitality industry. These ideas solved

problems that had not yet been recognized by anyone else, prior to September

1998. The inventors exercised continued diligence from the conception date to and

through the constructive patent application filing date of September 21, 1999.


2



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

8. Ameranth first publically demonstrated products practicing the

claims of the ‘077 Patent at the FSTEC trade show in November of 1998, and

again at the National Restaurant Association trade show in May of 1999 and at the

High Tech Hotel show in June of 1999.

9. Until some period in 2008, Ameranth developed, licensed and

deployed software products and systems in the hospitality industry that practiced

the claims of the ‘077 Patent.

10. Ameranth’s products won numerous technology and hospitality

industry awards and recognition.

11. Ameranth’s patents, including the ‘077 Patent, have been licensed to

approximately 45 licensees in the hospitality industry.

12. Despite the fact that several of the defendants in these consolidated

patent infringement lawsuits, including Pizza Hut, have filed multiple covered

business method (“CBM”) petitions against Ameranth with the Patent Trial and

Appeal Board (“PTAB”) challenging the validity of the claims of the ‘077 Patent,

the PTAB has rejected each petition and refused to institute CBM proceedings

against any claim of the ‘077 Patent on any grounds.

13. QuikOrder provides an online and mobile pizza ordering system to

Pizza Hut, and provides online and mobile ordering systems to other restaurant

customers.

14. Ameranth sued both Pizza Hut and QuikOrder for infringement of the

‘077 Patent in March of 2012 immediately after the issuance of the ‘077 Patent.

15. Pizza Hut, Inc. subsequently merged with Pizza Hut, LLC. Neither

Pizza Hut, Inc. nor Pizza Hut of America, Inc., exist post-merger, and Pizza Hut,

LLC is the successor in interest and proper party.

16. Ameranth sued Domino’s for infringement of the ‘077 Patent in

March of 2012 immediately after the issuance of the ‘077 Patent.


3



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

17. Ameranth sued Papa John’s for infringement of the ‘077 Patent in

March of 2012 immediately after the issuance of the ‘077 Patent.

18. Neither Pizza Hut nor QuikOrder had a non-infringing alternative on

the market when they were sued by Ameranth for infringement of the ‘077 Patent.

Neither Pizza Hut nor QuikOrder have brought a non-infringing alternative to the

market today.

19. Domino’s did not have a non-infringing alternative on the market

when it was sued by Ameranth for infringement of the ‘077 Patent. It has not

brought a non-infringing alternative to the market today.

20. Papa John’s did not have a non-infringing alternative on the market

when it was sued by Ameranth for infringement of the ‘077 Patent. It has not

brought a non-infringing alternative to the market today

21. At the time of the filing of the suit for infringement of the ‘077

Patent (March 2012), the accused Pizza Hut ordering system utilized "mobile

apps" developed, in part, by third parties (first IMC2 and then Chaotic Moon).

Evidence, including documents produced by Pizza Hut and QuikOrder, shows that

Pizza Hut first deployed iOS and Android “hybrid” mobile apps for online

ordering in October 2013 and that non-hybrid versions of the Pizza Hut mobile

apps were still in use with the Accused System at that time and later.

22. At the time of the filing of the suit for infringement of the ‘077 Patent

(March 2012), all Pizza Hut restaurants did not use a uniform point of sale

(“POS”) system. Thus, the accused online and mobile Pizza Hut Ordering System

had to integrate and work with different POS systems for different stores.

23. IPDEV Co., an affiliate of QuikOrder, licenses to Pizza Hut, and

other clients of QuikOrder, patents that purportedly cover the operation of the

online ordering systems provided by QuikOrder.


4



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

24. On August 22, 2012, IPDEV filed a patent application with the

USPTO seeking issuance of claims that copied the claims of Ameranth’s ‘077

Patent, that eventually issued as U.S. Patent No. 8,738,449 (“the ‘449 Patent”).

IPDEV’s application was based on the specification of U.S. Patent No. 5,991,739

(“the ‘739 Patent”) that IPDEV had acquired from the bankruptcy estate of

Food.com.

25. IPDEV did not file any Information Disclosure Statements (“IDS”)

with the Patent Office in connection with its application for and prosecution of the

application for the ‘449 Patent. The failure to file any IDS was a representation

by IPDEV under 37 CFR §1.56 that there was no material art predating the

application date of the ‘739 Patent that anticipated or rendered obvious the claims

being applied for in connection with the application for the ‘449 Patent.

26. George Yu, one of the lawyers representing QuikOrder and Pizza Hut

in this action, conceived of the idea of having QuikOrder’s affiliate, IPDEV, file a

patent application with the USPTO copying the claims of Ameranth’s ‘077 Patent

based on the specification of the ‘739 Patent.

27. On May 27, 2014, the USPTO issued to IPDEV U.S. Patent No.

8,738,449 (“the ‘449 Patent”), which substantially copied claims 1-18 of

Ameranth’s ‘077 Patent.

28. On May 27, 2014, IPDEV, represented by George Yu, one of the

lawyers representing QuikOrder and Pizza Hut in this action, filed a priority of

inventorship complaint against Ameranth in this Court alleging that there was an

interference in fact between the claims of the ‘449 Patent and the claims of

Ameranth’s ‘077 Patent.

29. Following the issuance of the ‘449 Patent, both QuikOrder and Pizza

Hut marked their websites with the ‘449 Patent. After Ameranth asserted that

such marking was an acknowledgement that QuikOrder’s and Pizza Hut’s accused


5



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

systems practiced the claims of the ‘449/’077 Patents, those markings were

removed from the websites.

30. On March 27, 2018, this Court issued an Order granting Ameranth’s

Motion for Summary Judgment of Invalidity of the ‘449 Patent [14-cv-01303 Dkt.

No. 86] on the grounds that the specification of the ‘449/ ‘739 Cupps Patent did

not provide sufficient written description support for the claims of the ‘449/ ‘077

Patents.

31. On March 28, 2018, this Court entered a Judgment in Ameranth’s

favor and against IPDEV in the priority of invention matter [14-cv-01303 Dkt.

No. 86].

32. On May 18, 2003, QuikOrder (National Systems Corporation) issued

a press release in which James Kargman of QuikOrder announced introduction of

a new product—TMS1—designed to maintain consistency (i.e., synchronization)

of touch screen Point of Sale (“POS”) units with the supporting desktop computer

(i.e., master database).

33. Between 2006 and 2009, representatives of Ameranth and

representatives of QuikOrder had several communications regarding the

possibilities of the companies working together.

34. In 2006, Ameranth provided presentations of its technology to Pizza

Hut in connection with discussions about the parties working together.

35. In 2006, Ameranth provided presentations of its technology to

Domino’s in connection with discussions about the parties working together.

36. In 2006, Ameranth provided presentations of its technology to Papa

John’s in connection with discussions about the parties working together.

37. On September 27, 2007, Domino’s issued a press release stating that

“Domino’s Pizza First in Industry to Offer Mobile Ordering,” explaining that the

systems was designed “for the small screen of a cell phone,” and “automatically


6



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

adapts to the size of any cell phone screen, no matter what service carrier

customers use.”

38. On December 12, 2007, in San Diego, James Kargman of QuikOrder

and IPDEV admitted to Keith McNally of Ameranth that Kargman and his patent

counsel had concluded that Ameranth’s patents trumped IPDEV’s, including the

‘739 Patent, and admitted that QuikOrder would be in serious trouble if Ameranth

ever sued QuikOrder for infringement.

39. The claims of the ‘077 Patent are valid and enforceable for the

reasons set forth in the expert report of Dr. Michael Shamos.

40. Pizza Hut’s and QuikOrder’s accused systems infringe the asserted

claims of the ‘077 Patent for the reasons set forth in the expert report of Dr. Sam

Malek.

41. Domino’s accused system infringes the asserted claims of the ‘077

Patent for the reasons set forth in the expert report of Dr. Sam Malek.

42. Papa John’s accused system infringes the asserted claims of the ‘077

Patent for the reasons set forth in the expert report of Dr. Sam Malek.

43. A reasonable royalty rate, and the amount of damages owed by Pizza

Hut and QuikOrder to Ameranth for infringement of the claims of the ‘077 Patent,

is described in the expert report of Dr. Jeff Brown.

44. A reasonable royalty rate, and the amount of damages owed by

Domino’s to Ameranth for infringement of the claims of the ‘077 Patent, is

described in the expert report of Dr. Jeff Brown.

45. A reasonable royalty rate, and the amount of damages owed by Papa

John’s to Ameranth for infringement of the claims of the ‘077 Patent, is described

in the expert report of Dr. Jeff Brown

B. Points of Law

1. An issued patent is presumed to be valid. 35 U.S.C. §282.


7



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

2. A party challenging the validity of a patent bears the burden of

proving each invalidity assertion by clear convincing evidence. Brown &

Williamson Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1124 (Fed. Cir.

2000); Park v. CAS Enterprises, 2010 WL 1948228 *3 (S.D. Cal. 5-13-2010)(J.

Sabraw).

3. A patent claim is invalid as anticipated only if each and every claim

element is founds within a single “prior art” reference. 35 U.S.C. § 102; VirnetX.

Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1324 (Fed. Cir. 2014); Sanofi-Synthelabo

v. Apotex, Inc., 550 F.3d 1075, 1082 (Fed. Cir. 2008).

4. “The doctrine of claim differentiation create[s] a presumption that

each claim in a patent has a different scope.” Free Motion Fitness, Inc. v. Cybex

Int’l, Inc., 423 F.3d 1343, 1351 (Fed. Cir. 2005).

5. Claims should be constructed so that each word in the claim has

meaning.” Curtiss-Wright Flow Control Corp. v. Z & J Techs. GmbH, 563 F.

Supp. 2d 1109, 1119 (C.D. Cal. 2007).

6. When construing claims, the intrinsic evidence of the meaning of the

claims are the primary resources; while helpful, extrinsic sources like dictionaries

and expert testimony cannot overcome more persuasive intrinsic evidence. Finisar

Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1328 (Fed. Cir. 2008) (citing Phillips

v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005)). “Extrinsic evidence

consists of all evidence external to the patent and prosecution history, including

expert and inventor testimony, dictionaries, and learned treatises.” Phillips, 415

F.3d at 1317.

7. To anticipate, a prior art reference must disclose more than “multiple,

distinct teachings that the artisan might somehow combine to achieve the claimed

invention.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir.

2008); see also In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (“The [prior art]


8



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

reference must clearly and unequivocally disclose the claimed [invention] or

direct those skilled in the art to the [invention] without any need for picking,

choosing, and combining various disclosures not directly related to each other by

the teachings of the cited reference”).

8. Further, an anticipation rejection must establish that a reference not

only discloses all elements of the claim within the four comers of the document,

but that the reference also discloses those elements arranged as in the claim. Net

Moneyln, 545 F.3d 1359, 1369 (Fed. Cir. 2008).

9. An anticipatory reference must both describe each and every claim

limitation and enable one of skill in the art to practice an embodiment of the

claimed invention without undue experimentation. In re Chudik, 851 F.3d 1365,

1372 (Fed. Cir. 2017).

10. “Invalidation on this ground [anticipation] requires that every

element and limitation of the claim was previously described in a single prior art

reference, either expressly or inherently, so as to place a person of ordinary skill in

possession of the invention.” Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075,

1082 (Fed. Cir. 2008).

11. "[D]ifferences between the prior art reference and a claimed

invention, however slight, invoke the question of obviousness, not anticipation.").

Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).

12. To anticipate, a prior art reference must disclose more than “multiple,

distinct teachings that the artisan might somehow combine to achieve the claimed

invention.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir.

2008); see also In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (“The [prior art]

reference must clearly and unequivocally disclose the claimed [invention] or

direct those skilled in the art to the [invention] without any need for picking,

choosing, and combining various disclosures not directly related to each other by


9



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

the teachings of the cited reference”). Further, an anticipation rejection must

establish that a reference not only discloses all elements of the claim within the

four comers of the document, but that the reference also discloses those elements

arranged as in the claim. Net Moneyln, 545 F.3d at 1369.

13. With respect to assertions of “inherency,” an expert is required to

provide evidence demonstrating that the “missing elements” were “necessarily

present” in each individual asserted prior art reference and/or combination of

references. “A party must, therefore, meet a high standard in order to rely on

inherency to establish the existence of a claim limitation in the prior art in an

obviousness analysis— the limitation at issue necessarily must be present, or the

natural result of the combination of elements explicitly disclosed by the prior art.”

Par Pharmaceutical v. TWI Pharmaceuticals Inc., 773 F.3d 1186 (Dec. 3, 2014)

“The inherent teaching of a prior art reference, a question of fact, arises both in

the context of anticipation and obviousness.” In re Napier, 55 F.3d 610, 613 (Fed.

Cir. 1995) (citation omitted). However, inherency requires that the missing

descriptive material is necessarily present in the thing described. Continental Can

Co. USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). It is not

sufficient to show that the element was possibly or probably present in the

reference.

14. An asserted prior art reference must disclose particular relationships

between the claim limitation at issue and the results achieved by the limitation.

Crown Operations Intl, Ltd. v. Solutia Inc., 289 F.3d 1367, 1372 (Fed. Cir. 2002).

15. To be considered prior art under 35 U.S.C. § 102, the application for

the asserted prior art patent must have been filed before the effective date of the

patent-in-suit. 35 U.S.C. § 102(d).

16. With respect to asserted prior art references for which a defendant is

attempting to use the filing date of a provisional application as its priority date: (a)


10



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

The material being relied upon as teaching the subject matter of the challenged

claims must be in the provisional application itself, as well as in the issued patent

being used against the challenged claims. In re Giacomini, 612 F.3d 1380, 1383

(Fed. Cir. 2010); see also Ariosa Diagnostics, Inc. v. Illumina, Inc., IPR 2014-

01093, Paper No. 69 (Jan. 7, 2016) (citing and relying upon both Giacomini and

Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir.

2015)); and (b) the disclosure of the provisional application must provide support

for the claims of the purported prior art reference patent. Dynamic Drinkware,

800 F.3d at 1382 ("reference patent is only entitled to claim the benefit of the

filing date of its provisional application if the disclosure of the provisional

application provides support for the claims in the reference patent in compliance

with § 112, ¶ 1" and a "provisional application's effectiveness as prior art depends

on its written description support for the claims of the issued patent of which it is

a provisional").

17. “In determining that quantum of prior art disclosure which is

necessary to declare an applicant’s invention ‘not novel’ or ‘anticipated’ within

section 102, the stated test is whether a reference contains an ‘enabling

disclosure’... .” In re Hoeksema, 399 F.2d 269, 158 USPQ 596 (CCPA 1968).

The disclosure in an asserted anticipating reference must provide an enabling

disclosure of the claimed subject matter. Mere naming or description of the

subject matter is insufficient if it cannot be produced without undue

experimentation. Elan Pharm., Inc. v. Mayo Found. For Med. Educ. & Research,

346 F.3d 1051, 1054, 68 USPQ2d 1373, 1376 (Fed. Cir. 2003).

18. A reference contains an “enabling disclosure” if the public was in

possession of the claimed invention before the date of invention. “Such possession

is effected if one of ordinary skill in the art could have combined the publication’s


https://www.uspto.gov/web/offices/pac/mpep/mpep-9015-appx-l.html#al_d1fbe1_234ed_52

11



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

description of the invention with his own knowledge to make the claimed

invention.” In re Donohue, 766 F.2d 531, 226 USPQ 619 (Fed. Cir. 1985).

19. Whether prior art renders a patent claim obvious under 35 U.S.C. §

103 is a question of law that relies on factual findings, including: (1) the scope and

content of the prior art; (2) the differences between the prior art and the claim(s) at

issue; (3) the level of ordinary skill in the art at the time of the invention; and (4)

any relevant secondary considerations. Otsuka Pharm. Co. v. Sandoz, Inc., 678

F.3d 1280, 1290 (Fed. Cir. 2012). KSR Intern. Co. v. Teleflex, Inc., 550 U.S. 398,

427 (2007)(“The ultimate judgment of obviousness is a legal determination.”); see

also Dippin' Dots, Inc. v. Mosey, 476 F.3d 1337, 1343 (Fed. Cir. 2007).

20. “[A] patent composed of several elements is not proved obvious

merely by demonstrating that each of its elements was, independently, known in

the prior art.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007).

21. “An invention may be a combination of old elements disclosed in

multiple prior art references.” Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354

(Fed. Cir. 2013).

22. “It is impermissible to use the claimed invention as an instruction

manual or ‘template’ to piece together the teachings of the prior art so that the

claimed invention is rendered obvious.” In re Fritch, 972 F.2d 1260, 1266 (Fed.

Cir. 1992).

23. “That which may be made clear and thus ‘obvious' to a court, with

the invention fully diagrammed and aided . . . may have been a breakthrough of

substantial dimension when first unveiled.” Interconnect Planning Corp. v. Feil,

774 F.2d 1132, 1138 (Fed. Cir. 1985).

24. “[W]e cannot allow hindsight bias to be the thread that stitches

together prior art patches into something that is the claimed invention.”

Metalcraft v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017).


https://1.next.westlaw.com/Link/Document/FullText?findType=Y&serNum=2031192245&pubNum=0000506&originatingDoc=I57101a30fde511e69f02f3f03f61dd4d&refType=RP&fi=co_pp_sp_506_1354&originationContext=document&transitionType=DocumentItem&contextData=(sc.Search)#co_pp_sp_506_1354

https://1.next.westlaw.com/Link/Document/FullText?findType=Y&serNum=2031192245&pubNum=0000506&originatingDoc=I57101a30fde511e69f02f3f03f61dd4d&refType=RP&fi=co_pp_sp_506_1354&originationContext=document&transitionType=DocumentItem&contextData=(sc.Search)#co_pp_sp_506_1354

12



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

25. “The inventor’s own path itself never leads to a conclusion of

obviousness; that is hindsight.” Otsuka Pharm. Co. v. Sandoz, Inc., 678 F.3d

1280, 1296 (Fed. Cir. 2012).

26. “[T]he [obviousness] determination is made not after observing what

the inventor actually did, but in light of the state of the art before the invention

was made.” Outside the Box Innovations v. Travel Caddy, Inc., 695 F. 3d 1285,

1298 (Fed. Cir. 2012).

27. An invention will not be held obvious “where vague prior art does

not guide an inventor toward a particular solution” for a known problem. Bayer

Schering Pharma AG v. Barr Labs., Inc., 575 F.3d 1341, 1347 (Fed. Cir. 2009).

28. In attempting to establish obviousness, one must avoid the temptation

to read into the prior art the teachings of the invention in issue and guard against

slipping into the use of hindsight. The prior art itself, and not the applicant's

achievement, must establish the obviousness of the combination. Interconnect

Planning Corp. v. Feil, 774 F.2d 1132, 1143 (Fed. Cir. 1985).

29. An invention is obvious if one of ordinary skill in the art, faced with

the wide range of needs created by developments in the field, would have found it

obvious to employ the solution tried by the applicant to meet such needs. See

KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 420-21 (2007); In re CHERC

Patent Lit., 676 F.3d 1063, 1070-71 (Fed. Cir. 2012); Application of Ludwig, 353

F.2d 241, 244 (CCPA 1965).

30. The person of ordinary skill in the art is a hypothetical person who is

presumed to be aware of all of the pertinent art. A person of skill in the art is

ordinary, not extraordinary, and is deemed to follow conventional wisdom.

Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985)

(“A person of ordinary skill in the art is also presumed to be one who thinks along

the line of conventional wisdom in the art and is not one who undertakes to


13



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

innovate, whether by patient, and often expensive, systematic research or by

extraordinary insights, it makes no difference which.”). The person of ordinary

skill in a written description analysis is thus a person who would apply

conventional wisdom in the art to discern whether the specification supports the

claimed subject matter.

31. “It is elementary that the claimed invention must be considered as a

whole in deciding the question of obviousness.” Litton Indus. Products, Inc. v.

Solid State Systems Corp., 755 F.2d 158 (Fed. Cir. 1985).

32. “It is impermissible within the framework of section 103 to pick and

choose from any one reference only so much of it as will support a given position,

to the exclusion of other parts necessary to the full appreciation of what such

reference fairly suggests to one of ordinary skill in the art.” In re Hedges, 783

F.2d 1038, 1041 (Fed. Cir. 1986) (quoting In re Wesslau, 353 F.2d 238, 241

(CCPA 1965)). See Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1051 n.15

(Fed. Cir. 2016) (en banc) (identifying motivation to combine and teaching away

as “two discrete bases” supporting district court’s denial of JMOL); see also Star

Sci., Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1374–75 (Fed. Cir. 2011).

33. A patent may only be found invalid for obviousness if the party

seeking to invalidate the patent proves by clear and convincing evidence that the

differences between the subject matter sought to be patented and the prior art are

such that the subject matter as a whole would have been obvious as the time the

invention was made to a person having ordinary skill in the art to which said

subject matter pertains. The question of obviousness is analyzed by looking at

four factors, all of which must be considered before reaching a conclusion: (1) the

scope and content of the prior art; (2) the differences between the claims and the

prior art; (3) the level of ordinary skill in the art; and (4) objective indicators of


14



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

nonobviousness. See Graham v. John Deere Co., 383 U.S. 1, 16 (1966); KSR

Intern. Co. v. Teleflex Inc., 550 U.S. 398, 399 (2007).

34. A party seeking to invalidate a patent on obviousness grounds must

prove by clear and convincing evidence both: (1) that a person of ordinary skill

would have had some reason or motivation to combine the teachings of the prior

art references; and (2) that the person of ordinary skill would have had a

reasonable expectation of success in doing so. Thus, it is insufficient for the

purposes of proving obviousness to show only that each element of a patent claim

was independently known in the prior art. See Procter & Gamble Co. v. Teva

Pharmaceuticals USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009); KSR Intern. Co.

v. Teleflex Inc., 550 U.S. 398, 416-420 (2007);

35. In assessing the prior art, we “consider[] whether a [person of

ordinary skill in the art] would have been motivated to combine the prior art to

achieve the claimed invention.” In re Nuvasive, Inc., 842 F.3d 1376, 1381 (Fed.

Cir. 2016) (citing In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333 (Fed. Cir.

2016).

36. “[O]bviousness concerns whether a skilled artisan not only could

have made but would have been motivated to make the combinations or

modifications of prior art to arrive at the claimed invention.” See Belden Inc. v.

Berk–Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015).

37. When evaluating a combination of teachings, we must also

“determine whether there was an apparent reason to combine the known elements

in the fashion claimed by the patent at issue.” KSR Int’l Co. v. Teleflex Inc., 550

U.S. 398, 418 (2007) (citing In re Kahn, 441, F.3d 977, 988 (Fed. Cir. 2006)).

38. A POSA would be motivated to combine separate items of prior art

to achieve a particular result only if the POSA firs recognized the problem to be


15



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

solved by such result. See Leo Pharmaceutical Products., Ltd. v. Rea, 726 F.3d

(Fed. Cir. 2013).

39. It is improper to combine references “like separate pieces of a simple

jigsaw puzzle” without “explain[ing] what reason or motivation one of ordinary

skill in the art at the time of the invention would have had to place these pieces

together.” InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1349

(Fed. Cir. 2014).

40. “That which may be made clear and thus ‘obvious' to a court, with

the invention fully diagrammed and aided . . . may have been a breakthrough of

substantial dimension when first unveiled.” Interconnect Planning Corp. v. Feil,

774 F.2d 1132, 1138 (Fed. Cir. 1985).

41. Where a proposed modification would render a prior art invention

being modified unsatisfactory for its intended purpose, the proposed modification

would not have been obvious. See Tec Air Inc. v. Denso Mfg. Michigan Inc., 192

F.3d 1353, 1360 (Fed. Cir. 1999); In re Gordon, 733 F.2d 900, 902 (Fed. Cir.

1984); In re Ratti, 270 F.2d 810, 813, 123 USPQ 349, 352 (CCPA 1959).

42. “The factual inquiry whether to combine references must be thorough

and searching.” In re Lee, 277 F.3d 1338, 1342 (Fed. Cir. 2002). See also

ActiveVideo Networks v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1327 (Fed. Cir.

2012)(“ The expert failed to explain how specific references could be combined,

which combination(s) of elements in specific references would yield a predictable

result, or how any specific combination would operate or read on the asserted

claims”).

43. Obviousness must be determined as of the date of the invention (i.e.,

the effective filing date or priority date of the patent). 35 U.S.C. § 103(a).

MeadWestVaco Corp. v. Rexam Beauty and Closures, Inc., 731 F.3d 1258, 1263-

64 (Fed. Cir. 2013).


16



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

44. In assessing motivation to combine, the following may be

considered: (i) whether the combination or modification was merely the

predictable result of using prior art element according to their known functions;

(ii) whether the claimed invention provides an obvious solution to a known

problem in the art; (iii) whether the claimed invention applied a known technique

that had been used to improve a similar device or method in a similar way; (iv)

whether the prior art teaches or suggests making the combination or modification

claimed in the patent; (v) whether the prior art teaches away from combining

elements in the claimed invention; (vi) whether it would have been obvious to try

the combination or modification, such as when there is a design need or market

pressure to solve a problem and there are a finite number of identified, predictable

solutions; and (vii) whether the combination or modification resulted more from

design incentives or other market forces. Allergan v. Sandoz, 796 F.3d 1293,

1303-04 (Fed. Cir. 2015); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419-420

(2007).

45. Common sense, common wisdom, and common knowledge may be

used to support a motivation to combine, so long as the use of common sense in

the analysis is explained with sufficient reasoning. But, common sense can only

be used to supply a limitation missing from the prior art where the technology is

unusually simple and straightforward. DSS Technology Mgmt., Inc. v. Apple Inc.,

885 F.3d 1367, 1374-75 (Fed. Cir. 2018).

46. Not all references may be considered for determining obviousness.

A reference must be either in the field of the applicant’s endeavor or be

reasonably pertinent to the problem with which the inventor was concerned in

order to be considered prior art under an obviousness inquiry. In re Klein, 647

F.3d 1343, 1348 (Fed. Cir. 2011).


17



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

47. An obviousness combination must be enabling of that which it claims

to render obvious. In Re Application of Payne, 606 F.2d 303, 314-15 (CCPA

1979); Beckman Instrs., Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (“In

order to render a claimed apparatus or method obvious, the prior art must enable

one skilled in the art to make and use the apparatus or method”).

48. Where the PTO has considered the arguments made by a defendant

as to the asserted patent’s validity, the Court may defer to the PTO’s expertise

when making a decision. Fresenius USA, Inc. v. Baxter Int’l, Inc., 721 F.3d 1330,

1350 (Fed. Cir. 2013).

49. “When an attacker simply goes over the same ground travelled by the

PTO, part of the burden is to show that the PTO was wrong in its decision to grant

the patent.” See Am. Hoist & Derrick Co. Sowa & Sons, Inc., 725 F.2d 1350, 1360

(Fed. Cir. 1984).

50. A prima facie showing of obviousness may be overcome by a

showing of “secondary considerations of non-obviousness,” which include:

a. commercial success or lack of commercial success of the

invention;

b. whether the invention taught away from the technical direction

followed by those skilled in the art;

c. the existence of a long-felt but unsatisfied need for the

invention while the needed implementing arts and elements had long been

available;

d. whether the invention achieves results that are unexpected to

those skilled in the art and superior to the current state of the art;

e. whether the invention rapidly replaced prior-art devices in the

industry.


18



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

f. prompt copying of the invention by competitors as

distinguished from their independent development;

g. unsuccessful attempts by those skilled in the art to make the

invention.

h. acquiescence by the industry to the patent's validity by

honoring the patent through taking licenses or not infringing the patent, or both;

i. skepticism, disbelief in, or incredulity on the part of those

skilled in the art concerning the patentee’s approach; and

j. recognition of invention’s advancement over the part by

technically competent peers.

Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); In re Rouffett,

149 F.3d 1350, 1355 (Fed. Cir. 1998); Panduit Corp. v. Dennison Mfg. Co., 810

F.2d 1561, 1569 (Fed. Cir. 1987); Hughes Aircraft Co. v. United States, 717 F.2d

1351, 1360 (Fed. Cir. 1983); Diamond Rubber Co. v. Consol. Rubber Tire Co.,

220 U.S. 428, 440-41 (1911); Amstar Corp. v. Envirotech Corp., 730 F.2d 1476,

1483 (Fed. Cir. 1984).

51. The impact of secondary considerations is part of an obviousness

determination and, when they are present, they must be considered as part of that

determination. Ashland Oil, Inc. v. Delta Resins, 776 F.2d 281, 306 (Fed. Cir.

1985).

52. A patent owner may introduce evidence of secondary factors to rebut

a defendant’s assertion that the claims of a patent are supposed obvious and

invalid. Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1293 (Fed.Cir.2006)

(secondary considerations are available for a patentee to use in rebutting a prima

facie case of obviousness); Syntex LLC v Apotex, 407 F.3d 1371, 1383 (Fed. Cir.

2005). A patent holder properly addresses secondary considerations in a rebuttal


19



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

expert report regarding patent validity. See Sanofi-Aventis v. Barr Labs., Inc., 598

F.Supp.2d 632 (D. N.J. 2009).

53. Secondary factors must bear a nexus to the claimed invention. Wyers

v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010).

54. There is a “presumption of a nexus” when a product is “coextensive”

with a patent claim. Teva Pharm., Inc. v. Sandoz, Inc., 723 F.3d 1363, 1372 (Fed.

Cir. 2013).

55. A prima facie case of nexus is established when the patentee shows

both commercial success, and that the product that is commercially successful is

the invention disclosed and claimed. See In re GPAC Inc., 57 F.3d 1573, 1580

(Fed. Cir. 1995).

56. A showing that specific products are embodiments of the claimed

invention and that the proffered objective evidence relates to such products is

sufficient to establish the presumption of nexus for the considerations of non-

obviousness. WBIB, LLC v. Kohler Co., 829 F.3d 1317, 1340 (Fed. Cir. 2016).

57. Advertising the benefits of the claimed invention links the invention

to commercial success. See Gambro Lundia AB v. Baxter Healthcare Corp., 110

F.3d 1573, 1579 (Fed. Cir. 1997) (“The prominence of the patented technology in

. . . advertising creates an inference that links the . . . invention to this success”);

Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d 1356, 1369 (Fed. Cir.

2012).

58. Objective evidence of licensing is relevant and compelling if the

licensing “arose out of recognition and acceptance of the subject matter claimed”

in the patents. In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995).

59. “[L]icenses showing industry respect for the invention” is objective

evidence of nonobviousness. In re Roufett, 149 F.1350, 1355 (Fed. Cir. 1998);

see also CBS v. Sylvania., Inc., 415 F.2d 719, 728 (1st Cir. 1969) (“the leader in


20



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

color television development chose to license”), cert. denied, 396 U.S. 1061

(1970).

60. Praise from others, particularly competitors in the industry, is strong

evidence of the non-obviousness of an invention. See Power-One v. Artesyn

Techs, Inc., 599 F.3d 1343, 1352 (Fed. Cir. 2010); Gambro Lunda AB v. Baxter

Healthcare Corp., 110 F.3d 1573, 1579 (Fed. Cir. 1997). See also Allen Archery,

Inc. v. Browning Mfg. Co., 819 F.2d 1087, 1092 (Fed. Cir. 1987) (praise in the

industry for a patented invention, specifically praise from a competitor tends to

indicate that the invention was not obvious).

61. “Copying may indeed be another form of flattering praise for

inventive features.” Crocs, Inc. v. ITC, 598 F.3d 1294, 1311 (Fed. Cir. 2010). See

also Heidelberger v. Hantscho Prods., 21 F.3d 1068, 1072 (Fed. Cir. 1994).

("litigation argument that an innovation is really quite ordinary carries diminished

weight when offered by those who had tried and failed to solve the same problem,

and then promptly adopted the solution that they are now denigrating") and Wyers

v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010).

62. Technology awards for an invention are a very compelling category

of objective evidence demonstrating nonobviousness. See Eli Lilly & Co. v.

Zenith Goldline Pharmaceuticals, Inc., 471 F.3d 1369, 1377 (Fed. Cir. 2006)

(finding that the record evidence established non-obviousness; secondary

considerations included numerous awards given for olanzapine, a pharmaceutical

compound claimed in the patent-at-issue). See also Rambus, 731 F.3d at 1256-

1257.

63. “Where the allegedly obvious patent claim is a combination of prior

art elements, we have explained that the patent owner can show that it is the

claimed combination as a whole that serves as a nexus for the objective evidence;

proof of nexus is not limited to only when objective evidence is tied to the


http://www.leagle.com/cite/819%20F.2d%201087

https://www.lexis.com/research/buttonTFLink?_m=b5968ea42870affa737ebbef3875fb52&_xfercite=%3ccite%20cc%3d%22USA%22%3e%3c%21%5bCDATA%5b679%20F.3d%201372%5d%5d%3e%3c%2fcite%3e&_butType=3&_butStat=2&_butNum=68&_butInline=1&_butinfo=%3ccite%20cc%3d%22USA%22%3e%3c%21%5bCDATA%5b21%20F.3d%201068%2c%201072%5d%5d%3e%3c%2fcite%3e&_fmtstr=FULL&docnum=1&_startdoc=1&wchp=dGLbVzt-zSkAz&_md5=ec31b2c95d644b93a64f0a3750b76ff0

21



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

supposedly “new” feature(s).” Rambus Inc. v. Rea, 731 F.3d 1248, 1257 (Fed. Cir.

2013) (citation omitted); WBIP, LLC v. Kohler Co., 2016 WL 3902668 at 15 (Fed.

Cir. July 19, 2016).

64. “An invention may be praised or commercially successful for reasons

other than the claimed invention but a nexus may still exist as long as it can be

shown that such praise or success is also due in part to the claimed invention.”

Apple Inc. v. International Trade Commission, 725 F.3d 1356-57 (Fed. Cir. 2013).

65. “Objective evidence of non-obviousness need only be ‘reasonably

commensurate with the scope of the claims.’” Rambus Inc. v. Rea, 731 F.3d 1248,

1256-57 (Fed. Cir. 2013).

66. "The significance of a new structure is often better measured in the

marketplace than in the courtroom." Continental Can Co. USA, Inc. v. Monsanto

Co., 948 F.2d 1264, 1273 (Fed. Cir. 1991).

67. Testimony that a product was successful due to the patented features

supports a finding of nexus. See Power Integrations, Inc. v. Fairchild

Semiconductor Int’l, Inc., 711 F.3d 1348, 1368 (Fed. Cir. 2013). See also, e.g.,

Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 679 (Fed. Cir. 1988)

(reversing district court finding of obviousness and lack of nexus to commercial

success where the patented invention’s “commercial success was due, at least in

part, to one of the four advantages set forth in the patent specification”);

Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1273 (Fed. Cir. 1991)

(“It is not necessary that [] the patented invention be solely responsible for the

commercial success, in order for this factor to be given weight appropriate to the

evidence, along with other pertinent factors”).

68. Corroboration can be by independent circumstantial evidence.

Lacotte v. Thomas, 758 F.2d 611, 613 (Fed. Cir. 1985).


http://scholar.google.com/scholar_case?case=14899872654228301500&q=1273

22



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

69. “[A] patentable invention may lie in the discovery of the source of a

problem." In Re Sponnoble, 405 F.2d 578,832 (CCPA 1969). “[A]n invention can

often be the recognition of a problem itself.” Leo Pharmaceutical Prods., Ltd. v.

Rea, 726 F.3d 1346, 1353 (Fed. Cir. 2013) (citing Cardiac Pacemakers, Inc. v. St.

Jude Med., Inc., 381 F.3d 1371, 1377 (Fed. Cir. 2004)).

70. In order for the claims of a patent to be valid, they must be supported

by the specification of the patent in which they are recited. Tobinick v. Olmarker,

753 F.3d 1220, 1225 (Fed. Cir. 2014).

71. To satisfy the written description requirement of 35 U.S.C. § 112, ¶

1, “the specification must describe an invention understandable to that skilled

artisan and show that the inventor actually invented the invention claimed.” Ariad

Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).

72. “[T]he written description requirement does not demand a particular

form of disclosure, or that the specification recite the claimed invention in haec

verba.” Id. at 1352 (internal citation omitted). Nor does it demand “either

examples or an actual reduction to practice.” Id. “[I]t is unnecessary to spell out

every detail of the invention in the specification; only enough must be included to

convince a person of skill in the art that the inventor possessed the invention.”

Falkner v. Inglis, 448 F.3d 1357, 1366 (Fed. Cir. 2006); see also LizardTech, Inc.

v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005) (“it is

unnecessary to spell out every detail of the invention in the specification”).

Indeed, “[n]o length requirement exists for a disclosure to adequately describe an

invention.” Id. at 1365-66.

73. “Because the specification is viewed from the perspective of one of

skill in the art, in some circumstances, a patentee may rely on information that is

‘well-known in the art’ for purposes of meeting the written description


23



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

requirement.” Boston Sci. Corp. v. Johnson & Johnson, 647 F.3d 1353, 1366

(Fed. Cir. 2011).

74. The person of ordinary skill in the art is a hypothetical person who is

presumed to be aware of all of the pertinent art. A person of skill in the art is

ordinary, not extraordinary, and is deemed to follow conventional wisdom.

Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985).

75. “To be enabling, the specification of a patent must teach those skilled

in the art how to make and use the full scope of the claimed invention without

undue experimentation.” ALZA Corp. v. Andrx Pharms., LLC, 603 F.3d 935, 940

(Fed. Cir. 2010); AK Steel Corp. v. Sollac, 344 F.3d 1234, 1238-39 (Fed. Cir.

2003).

76. Factors to be considered in determining whether a disclosure would

require undue experimentation include “(1) the quantity of experimentation

necessary, (2) the amount of direction or guidance presented, (3) the presence or

absence of working examples, (4) the nature of the invention, (5) the state of the

prior art, (6) the relative skill of those in the art, (7) the predictability or

unpredictability of the art, and (8) the breadth of the claims.” In re Wands, 858

F.2d 731, 737 (Fed. Cir. 1988).

77. Because a person of skill in the art already possesses substantial

knowledge about the field of the invention, the disclosure need not explain how to

make and use the invention from the beginning. Falko–Gunter Falkner v. Inglis,

448 F.3d 1357, 1365 (Fed. Cir. 2006) (“[A] patent need not teach, and preferably

omits, what is well known in the art.”); Atmel Corp. v. Info. Storage Devices, Inc.,

198 F.3d 1374, 1382 (Fed. Cir. 1999) (“[I]t makes no sense to encumber the

specification of a patent with all the knowledge of the past concerning how to

make and use the claimed invention”).


24



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

78. To be sufficiently enabling, the disclosure need only describe what is

novel about the invention in sufficient detail so that one of skill in the art would

be able combine the disclosure with the knowledge already known in the field and

have enough information to practice the invention without undue experimentation.

See Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1071 (Fed. Cir.

2005) (“Enablement does not require the inventor to foresee every means of

implementing an invention at pains of losing his patent franchise.”).

79. A claim is invalid for indefiniteness only if, read in light of the

specification and the prosecution history, it fails to inform, with reasonable

certainty, those skilled in the art at the time the patent was filed as to the scope of

the invention. Nautilus, Inc. v. Biosig Instrs., Inc., 134 S.Ct. 2120, 2123 (2014).

80. A patent holder need not define his or her invention with

mathematical precision in order to comply with the definiteness requirement.

Sonix Tech. Co., Ltd. v. Publications Intern., Ltd., 844 F.3d 1370, 1377 (Fed. Cir.

2017).

81. The terms of claims of a patent are generally given their “ordinary

and customary meaning” as understood by a person of “ordinary skill in the art at

the time of invention.” Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1358

(Fed. Cir. 2017) (citation omitted). The ordinary meaning of a claim term is its

meaning “to the ordinary artisan after reading the entire patent.” Id.

82. In order to show reduction to practice, a party “must demonstrate that

the invention is suitable for its intended purpose.” Scott v. Finney, 34 F.3d 1058,

1061 (Fed. Cir. 1994). “Reduction to practice, however, does not require actual

use, but only a reasonable showing that the invention will work to overcome the

problem it addresses.” Id. at 1063. See also Scott v. Finney, 34 F.3d 1058, 1061

(Fed. Cir. 1994).


25



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

83. “The purpose of claims is not to explain the technology or how it

works, but to state the legal boundaries of the patent grant.” S3 Inc. v. nVIDIA

Corp., 259 F.3d 1364 (Fed. Cir. 2001).

84. Patent eligibility under 35 U.S.C. § 101 is not amenable to bright-line

categorical rules. See Bilski v. Kappos, 130 S. Ct. 3218, 3229-30 (2010).

85. It has been especially difficult to apply § 101 properly in the context

of computer-implemented inventions. CLS Bank Intl v. Alice Corp. Pty. Ltd., 717

F.3d 1269, 1277 (Fed. Cir. 2013) (en banc).

86. “[I]nventions with specific applications or improvements to

technologies in the marketplace are not likely to be so abstract that they override

the statutory language and framework of the Patent Act.” Research Corp. Tech.,

Inc. v. Microsoft Corp., 627 F.3d 859, 869 (Fed. Cir. 2010).

87. In determining the eligibility of [a] claimed process for patent

protection under § 101, ... claims must be considered as a whole. It is

inappropriate to dissect the claims into old and new elements and then to ignore

the presence of the old elements in the analysis. Diamond v. Diehr, 450 U.S. 175,

188 (1981); see also Bilski v. Kappos, 130 S. Ct. 3218, 3230.

88. While satisfaction of either prong of the machine or transformation

test confers patent eligibility under 35 U.S.C. § 101, the machine or

transformation prong is not the only means by which a Court can conclude that

claims are directed to patent eligible subject matter. Bilski v. Kappos, 130 S. Ct.

3218, 3227 (2010). See also SiRF Tech., Inc. v. ITC, 601 F.3d 1319, 1332-1333

(Fed. Cir. 2010).

89. “Transformation and reduction of an article ‘to a different state or

thing’ is the clue to patentability of a process claim that does not include particular

machines.” Bilski v. Kappos, 130 S. Ct. 3218, 3227 (2010) (quoting Gottschalk v.

Benson, 409 U.S. 63, 70 (1972). “Transformation of electronic data has been


26



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

found when the nature of the data has been changed such that it has a different

function or is suitable for a different use.” MPEP 2106(II)(B)(1)(b) (citing In re

Bilski, 545 F.3d 943, 962-63 (Fed. Cir. 2009) (aff'd sub nom Bilski v. Kappos, 130

S. Ct. 3218 (2010)); see also MPEP §2106(II)(B)(1)(b).

90. The Supreme Court’s decision in Alice explicitly requires analysis of

all the elements of each claim, “both individually and ‘as an ordered combination’

to determine whether the additional elements ‘transform the nature of the claim’

into a patent-eligible application.” Alice Corp. v. CLS Bank Intl., 134 S. Ct. 2347,

2355 (2014). The first step of the Alice inquiry is “a meaningful one,” such that

“a substantial class of claims are not directed to a patent-ineligible concept.”

Enfish LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). See also

Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016).

Thales Visionix Inc. v. United States, 850 F.3d 1343, 1347 (Fed. Cir. 2017);

Visual Memory LLC v. Nvidia Corp., No, 2016-2254, (Fed. Cir. Aug. 15, 2017).

91. Alice Corp. v. CLS Bank Intl., 134 S. Ct. 2347, 2355 (2014), “did not

alter the governing law of § 101. In Alice, the Court applied the same two-step

framework it created in Mayo [Mayo Collaborative Servs. v. Prometheus Labs.,

Inc., 566 U.S. 66, 77–79 (2012)] in its § 101 analysis.” Voter Verified, Inc. v.

Election Sys. & Software LLC, 887 F.3d 1376, 1382 (Fed. Cir. 2018).

92. Claims reciting computers, networks and the internet are patent

eligible where the claimed solution overcomes problems in such environment.

DDR Holdings, LLC v. Hotels.com, LP, 773 F.3d 1245, 1257 (Fed. Cir. 2014).

See also Amdocs, 841 F.3d at 1300-01.

93. The claims must be considered as a whole in a § 101 analysis. See,

e.g., McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299, 1312

(Fed. Cir. 2016) (“[T]he claims are considered in their entirety to ascertain

whether their character as a whole is directed to excluded subject matter.”)


https://1.next.westlaw.com/Link/Document/FullText?findType=Y&serNum=2027337692&pubNum=0000780&originatingDoc=Ide1c6e0044b311e89d46ed79fb792237&refType=RP&fi=co_pp_sp_780_77&originationContext=document&transitionType=DocumentItem&contextData=(sc.DocLink)#co_pp_sp_780_77

https://1.next.westlaw.com/Link/Document/FullText?findType=Y&serNum=2027337692&pubNum=0000780&originatingDoc=Ide1c6e0044b311e89d46ed79fb792237&refType=RP&fi=co_pp_sp_780_77&originationContext=document&transitionType=DocumentItem&contextData=(sc.DocLink)#co_pp_sp_780_77

27



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

(quoting Internet Patents Corp. v. Active Networks, Inc., 790 F.3d at 1343, 1346

(Fed. Cir. 2015)). The Alice inquiry ends if the claims, as a whole, are not

“directed to” an abstract idea. McRO v. Bandai, 837 F.3d at 1312.

94. The Federal Circuit has cautioned against oversimplifying claims by

ignoring specifically-recited requirements in a § 101 analysis. McRO. v. Bandai,

837 F.3d at 1313. See also Local Intelligence, LLC v. HTC America, Inc., Case

No. 5:17-cv-06437-EJD, Order Denying Motion to Dismiss at 13-14 (N.D. Cal.

April 6, 2018).

95. Even if claims are directed towards an abstract idea, they may still be

patent eligible if they consist of unique and unconventional combinations of

elements. See Amdocs, 841 F.3d at 1304; Thales, 850 F.3d at 1348-1349.

96. While patent eligibility under 35 U.S.C. §101 is ultimately a question

of law, there are underlying factual questions on which the section 101 inquiry

turns. “Whether something is well-understood, routine, and conventional to a

skilled artisan at the time of the patent is a factual determination. Whether a

particular technology is well-understood, routine, and conventional goes beyond

what was simply known in the prior art. The mere fact that something is disclosed

in a piece of prior art, for example, does not mean it was well-understood, routine,

and conventional.” Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018).

97. The plain meaning of “predetermined” in a claim meant “to

determine beforehand.” Homeland Housewares v. Whirlpool Corp., 865 F.3d

1372, 1375-76 (Fed. Cir. 2017).

98. Claims are to be interpreted as a whole. See Cat Tech LLC v.

TubeMaster, Inc., 528 F.3d 871, 885 (Fed. Cir. 2008) (noting that “[c]laims are

interpreted with an eye toward giving effect to all terms in the claim”) (quotation

omitted).


28



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

99. The patent holder must prove infringement by a preponderance of the

evidence, i.e., more likely than not. Warner-Lambert Co. v. Teva Pharm. USA,

Inc., 418 F.3d 1326, 1341, n.15 (Fed. Cir. 2005); Braun, Inc. v. Dynamics Corp.

of Am., 975 F.2d 815 (Fed. Cir. 1992).

100. The acts giving rise to direct infringement are the making, using,

selling or offering to sell, or importing of the patented invention. 35 U.S.C. §

271(a).

101. An accused product or system literally infringes a claim of a patent if

every requirement of the claim is included in the product or system. Strattec Sec.

Corp. v. General Automotive Specialty Co., Inc., 126 F.3d 1411, 1418 (Fed. Cir.

1997)

102. Under the doctrine of equivalents, the product or system infringes a

patent claim if it includes parts that are either identical to or equivalent of the

requirements of the claim. Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical

Co., 520 U.S. 17 (1997).

103. A patentee can invoke the doctrine of equivalents to maintain a claim

of infringement against a party that produces a product if it performs substantially

the same function in substantially the same way to obtain the same result. The

theory on which the doctrine is based is that if two devices do the same work in

substantially the same way, and accomplish substantially the same result, they are

the same, even though they differ in name, form or shape. Graver Tank & Mfg.

Co. v. Linde Air Products Co., 339 U.S. 605, 608 (1950).

104. A part of the product or system is equivalent to the requirement of a

patent claim if a person of ordinary skill in the art would think the differences

between the part and the claim requirement were not substantial as of the time of

the alleged infringement. Valmont Indus., Inc. v. Reinke Mfg. Co., Inc., 983 F.2d

1039, 1043 (Fed. Cir. 1993).


29



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

105. If an accused product practices the elements of a patent claim, a

defendant does not avoid infringement by adding additional elements or functions

to its product that are not claimed by the patent, even if those additional elements

or functions are improvements to the product. Amstar Corp. v. Envirotech Corp.,

730 F.2d 1476, 1482 (Fed. Cir. 1984); Hunter Douglas Corp. v. Kwik-Kleen

Venetian Blind Laundries, 128 F.Supp. 252, 255 (S.D. Cal. 1955); Johns-Manville

Co. v. R. V. Aycock Co., 45 F.2d 817, 821 (W.D. Mo. 1927); Mills Novelty Co. v.

Monarch Tool & Mfg. Co., 76 F.2d 653, 654 (6th Cir. 1935); Solex Laboratories,

Inc. v. Graham, 165 F.Supp. 428, 437 (S.D. Cal. 1958).

106. Infringement is not avoided merely because a non-infringing mode of

operation is possible for an otherwise infringing product. VirnetX, Inc. v. Cisco

Sys., Inc., 767 F.3d 1308, 1321–22 (Fed. Cir. 2014) (citing z4 Techs., Inc. v.

Microsoft Corp., 507 F.3d 1340, 1350 (Fed. Cir. 2007)).

107. A finding of infringement can be rest on as little as one instance of

the claimed method being performed during the pertinent time period. Convolve,

Inc. v. Compaq Computer Corp., 527 F. App’x 910, 929 (Fed. Cir. 2013).

108. Marking a system with a patent number can function as an estoppel

to deny that the marked system practices the claims of the patent. Gridiron Steel

Co. v. Jones & Laughlin Steel Corp., 361 F.2d 791, 797 (6th Cir. 1966); Canaan

Products, Inc. v. Edward Don & Co., 273 F.Supp. 492, 502 (N.D. Ill. 1966).

109. In order to rely on a non-infringing alternative, the alternative must

be shown to be “acceptable” to customers; “[m]ere existence of a competing

device does not make that device an acceptable substitute.” TWM Mft. Co. v.

Dura Corp., 789 F.2d 895, 901 (Fed. Cir. 1986).

110. After-arising technology can be captured by broadly drafted patent

claims. See, e.g., Innogenetics, N.V. v. Abbott Laboratories, 512 F.3d 1363, 1371

(Fed. Cir. 2008) (“Our case law allows for after-arising technology to be captured


https://1.next.westlaw.com/Document/If10abc70548011d9bf30d7fdf51b6bd4/View/FullText.html?originationContext=docHeader&contextData=(sc.UserEnteredCitation)&transitionType=Document&needToInjectTerms=False&userEnteredCitation=76+F.2d+653&docSource=d9e9392d7bbb451da21b8e6c3b4eb6ac

https://1.next.westlaw.com/Document/If10abc70548011d9bf30d7fdf51b6bd4/View/FullText.html?originationContext=docHeader&contextData=(sc.UserEnteredCitation)&transitionType=Document&needToInjectTerms=False&userEnteredCitation=76+F.2d+653&docSource=d9e9392d7bbb451da21b8e6c3b4eb6ac

30



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

within the literal scope of valid claims that are drafted broadly enough.”); id. at

1370 (“[A]s is well established, an applicant is not required to describe in the

specification every conceivable and possible future embodiment of his

invention.”); SuperGuide Corp. v. DIRECTV Enters., Inc., 358 F.3d 870, 878-880

(Fed. Cir. 2004) (“regularly received television signal” broad enough to

encompass digital signals even though no television signals could receive digital

signals as of the filing date).

111. A patent infringement defendant that did not have an actual non-

infringing alternative on the market at the relevant time bears the burden of

overcoming the inference that there was no available non-infringing alternative.

DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F. 3d 1314, 1331-32

(Fed. Cir. 2009).

112. Experts are not permitted “to render any conclusions regarding the

scope of the patents-in-suit or particular claim limitations that deviate from the

Court’s claim constructions. See, e.g., ContentGuard Holdings, Inc. v.

Amazon.com, Inc., 2:13-CV-1112-JRG, 2015 WL 4944514, at *4 (E.D. Tex. Aug.

19, 2015), aff’d sub nom. ContentGuard Holdings, Inc. v. Apple Inc., 701 Fed.

Appx. 957 (Fed. Cir. 2017); see also Exergen Corp. v. Wal-Mart Stores, Inc., 575

F.3d 1312, 1321 (Fed. Cir. 2009) (“Once a district court has construed the relevant

claim terms, and unless altered by the district court, then that legal determination

governs for purposes of trial. No party may contradict the court's construction to a

jury.”); Personalized User Model, L.L.P. v. Google Inc., CV 09-525-LPS, 2014

WL 807736, at *1 (D. Del. Feb. 27, 2014) (“[E]xpert testimony inconsistent with

the Court’s claim construction is unreliable and unhelpful to the finder of fact”).

113. A defendant is liable for inducing infringement if the defendant: (a)

intentionally took action that actually induced direct infringement; (b) was aware

of the patent; and (c) knew that the acts it was causing to incur would infringe the


31



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

patent. 35 U.S.C. § 271(b); Commil USA, LLC v. Cisco Systems, Inc., 135 S. Ct.

1920, 1928-31 (2015).

114. The knowledge requirement of induced infringement may be satisfied

by the doctrine of willful blindness where the defendant is aware that a high

probability that its acts may induce infringement of the patent and took deliberate

action to avoid learning of the fact. Global-Tech Appliances, Inc. v. SEB S.A., 563

U.S. 754, 769-70 (2011); Trading Technologies Intern., Inc. v. BCG Partners,

Inc., 2011 WL 3946581 *3 (N.D. Ill. 9-2-11); Weiland Sliding Doors and

Windows, Inc. v. Panda Windows and Doors, LLC, 2012 WL 202664 *4 (S.D.

Cal. 1-23-12).

115. Intent to induce infringement may be proven by circumstantial

evidence. Lucent Technologies, Inc. v. Gateway, Inc., 580 F.3d 1301, 1322 (Fed.

Cir. 2009).

116. Evidence of active steps taken to induce infringement, such as

advertising an infringing use, can support a finding of an intention for the product

to be used in an infringing manner. Lucent Technologies, Inc. v. Gateway, Inc.,

580 F.3d 1301, 1322 (Fed. Cir. 2009).

117. “To show the intent to induce infringement, it is sufficient that the

plaintiff establish that a defendant's asserted belief in non-infringement was

unreasonable.” Warsaw Orthopedic, Inc. v. NuVasive, Inc., 824 F.3d 1344, 1351

at n. 2 (Fed. Cir. 2016).

118. A defendant is liable for contributory infringement if the defendant:

(a) supplied an important component of the infringing system; (b) the component

is not a common instrumentality suitable for non-infringing use; and (c) the

defendant supplied the component with knowledge that the component was

especially made or adapted for use in an infringing manner. 35 U.S.C. §271(c);


32



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1356-58 (Fed.

Cir. 2007).

119. The doctrine of willful blindness can satisfy the knowledge element

of a claim for contributory infringement. Warsaw Orthopedic, Inc. v. NuVasive,

Inc., 824 F.3d 1344, 1348 (Fed. Cir. 2016); Biosonix, LLC v. Hydrowave, LLC,

2016 WL 9229848 *4 (E.D. Tex. 8-10-16).

120. If a defendant is found liable for infringement of a claim of patent,

the patent holder is entitled to an award of damages adequate to compensate for

such infringement, and in no event less than a reasonable royalty for the use of the

patented invention made by the infringing defendant. 35 U.S.C. § 284.

121. A reasonable royalty is “merely the floor below which damages shall

not fall.” Bandag, Inc. v. Gerrard Tire Co., 704 F.2d 1578, 1583 (Fed. Cir. 1983).

122. Factors to be considered when determining the amount of a

reasonable royalty for infringement include:

1. The royalties received by the patentee for the licensing of the patent in

suit, proving or tending to prove an established royalty.

2. The rates paid by the licensee for the use of other patents comparable to

the patent in suit.

3. The nature and scope of the license, as exclusive or non-exclusive; or as

restricted or non-restricted in terms of territory or with respect to whom the

manufactured product may be sold.

4. The licensor's established policy and marketing program to maintain his

patent monopoly by not licensing others to use the invention or by granting

licenses under special conditions designed to preserve that monopoly.

5. The commercial relationship between the licensor and licensee, such as,

whether they are competitors in the same territory in the same line of business; or

whether they are inventor and promoter.


https://1.next.westlaw.com/Link/Document/FullText?findType=Y&serNum=1983118201&pubNum=0000350&originatingDoc=I819850ec9ef611de8bf6cd8525c41437&refType=RP&fi=co_pp_sp_350_1583&originationContext=document&transitionType=DocumentItem&contextData=(sc.UserEnteredCitation)#co_pp_sp_350_1583

33



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

6. The effect of selling the patented specialty in promoting sales of other

products of the licensee; that existing value of the invention to the licensor as a

generator of sales of his non-patented items; and the extent of such derivative or

convoyed sales.

7. The duration of the patent and the term of the license.

8. The established profitability of the product made under the patent; its

commercial success; and its current popularity.

9. The utility and advantages of the patent property over the old modes or

devices, if any, that had been used for working out similar results.

10. The nature of the patented invention; the character of the commercial

embodiment of it as owned and produced by the licensor; and the benefits to those

who have used the invention.

11. The extent to which the infringer has made use of the invention; and any

evidence probative of the value of that use.

12. The portion of the profit or of the selling price that may be customary in

the particular business or in comparable businesses to allow for the use of the

invention or analogous inventions.

13. The portion of the realizable profit that should be credited to the

invention as distinguished from non-patented elements, the manufacturing

process, business risks, or significant features or improvements added by the

infringer.

14. The opinion testimony of qualified experts.

15. The amount that a licensor (such as the patentee) and a licensee (such as

the infringer) would have agreed upon (at the time the infringement began) if both

had been reasonably and voluntarily trying to reach an agreement; that is, the

amount which a prudent licensee— who desired, as a business proposition, to

obtain a license to manufacture and sell a particular article embodying the


34



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

patented invention— would have been willing to pay as a royalty and yet be able

to make a reasonable profit and which amount would have been acceptable by a

prudent patentee who was willing to grant a license.

Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F.Supp. 1116, 1120 (S.D. N.Y.

1970)

123. “An established royalty is usually the best measure of a ‘reasonable’

royalty for a given use of an invention because it removes the need to guess at the

terms to which parties would hypothetically agree.” Monsanto Co. v.

McFarling, 488 F.3d 973, 978–79 (Fed.Cir.2007) (citation omitted).

124. A patent owner is not required to prove its damages with

mathematical precision. Whitserve, LLC v. Computer Packages, Inc., 694 F.3d 10,

31 (Fed. Cir. 2012); Radware, Ltd. v. F5 Networks, Inc., 2016 WL 410017 *4

(N.D. Cal. 2-3-16); Affinity Labs of Texas, LLC v. BMW North America, LLC, 783

F.Supp. 891, 901 (E.D. Tex. 2011).

125. When the amount of the damages cannot be ascertained with

precision, any doubts regarding the amount must be resolved against the infringer.

Lam, Inc. v. Johns-Manville Corp., 718 F.2d 1056, 1065 (Fed. Cir. 1983) (citing

Story Parchment Co. v. Paterson Parchment Paper Co., 282 U.S. 555, 563

(1931)).

126. Under the “book of wisdom” doctrine, factual developments

occurring after the date of the hypothetical negotiation can inform the damages

calculation, and the court can consider events and facts that occurred after the

hypothetical negotiation date. Lucent Technologies, Inc. v. Gateway, Inc., 580

F.3d 1301, 1333-34; Sinclair Refining Co. v. Jenkins Petroleum Process Co., 289

U.S. 689, 698 (1933).

127. Royalty rates based on fixed per unit dollar amounts are not derived

from an accused product’s revenues or profits and thus do not implicate the entire


https://1.next.westlaw.com/Link/Document/FullText?findType=Y&serNum=2012324720&pubNum=506&originatingDoc=Id840a97a335411df9988d233d23fe599&refType=RP&fi=co_pp_sp_506_978&originationContext=document&transitionType=DocumentItem&contextData=(sc.UserEnteredCitation)#co_pp_sp_506_978

https://1.next.westlaw.com/Link/Document/FullText?findType=Y&serNum=2012324720&pubNum=506&originatingDoc=Id840a97a335411df9988d233d23fe599&refType=RP&fi=co_pp_sp_506_978&originationContext=document&transitionType=DocumentItem&contextData=(sc.UserEnteredCitation)#co_pp_sp_506_978

https://1.next.westlaw.com/Link/Document/FullText?findType=Y&serNum=1931123293&pubNum=0000708&originatingDoc=I67fdee38941111d9a707f4371c9c34f0&refType=RP&fi=co_pp_sp_708_250&originationContext=document&transitionType=DocumentItem&contextData=(sc.DocLink)#co_pp_sp_708_250

https://1.next.westlaw.com/Link/Document/FullText?findType=Y&serNum=1931123293&pubNum=0000708&originatingDoc=I67fdee38941111d9a707f4371c9c34f0&refType=RP&fi=co_pp_sp_708_250&originationContext=document&transitionType=DocumentItem&contextData=(sc.DocLink)#co_pp_sp_708_250

https://1.next.westlaw.com/Link/Document/FullText?findType=Y&serNum=1933123162&pubNum=0000708&originatingDoc=I819850ec9ef611de8bf6cd8525c41437&refType=RP&originationContext=document&transitionType=DocumentItem&contextData=(sc.DocLink)

https://1.next.westlaw.com/Link/Document/FullText?findType=Y&serNum=1933123162&pubNum=0000708&originatingDoc=I819850ec9ef611de8bf6cd8525c41437&refType=RP&originationContext=document&transitionType=DocumentItem&contextData=(sc.DocLink)

35



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

market value rule. See Multimedia Patent Trust v. Apple, Inc., 2012 WL 5873711

*6 (S.D. Cal. 11-20-2012). (The “entire market value rule” provides that a patent

holder may base its reasonable royalty calculation upon the entire market value of

the accused product where it is economically justified. This may be the case

where use of the entire market value is the industry standard or where the

comparable licenses are based on the entire market value of the product. See

Mondis Technology, Ltd. v. LG Electronics, Inc., 2011 WL 2417367 *2 (E.D. Tex.

2011); Multimedia Patent Trust v. Apple, Inc., 2012 WL 5873711 *6 (S.D. Cal.

11-20-2012).)

128. To be admissible as evidence in connection with a determination of

damages for patent infringement, an alleged non-infringing alternative must be

both available and acceptable. Apple, Inc. v. Motorola, Inc., 757 F.3d 1286, 1315

(Fed. Cir. 2014); Siemens Medical Solutions USA, Inc. v. Saint-Gobain Ceramics

& Plastics, Inc., 637 F.3d 1269, 1288-89 (Fed. Cir. 2011).

129. In order to rely on a non-infringing alternative, the alternative must

be shown to be “acceptable” to customers; “[m]ere existence of a competing

device does not make that device an acceptable substitute.” TWM Mft. Co. v.

Dura Corp., 789 F.2d 895, 901 (Fed. Cir. 1986).

130. To be an acceptable substitute or alternative, an alleged substitute

must have been available during the period when the infringing product was sold.

A substitute may be considered available as a substitute if it was actually

demonstrably available at the relevant time during the infringement period or, if,

during that period, it is shown that a competitor or accused infringer had all the

necessary equipment, materials, know-how, and experience to design and

manufacture a non-infringing substitute and sell it to its customers. See, e.g.,

Presidio Components, Inc. v. Am. Tech. Ceramics Corp., 702 F.3d 1351, 1361

(Fed. Cir. 2012); Panduit Corp. v. Stahlin Bros. Fibre Works, 575 F.2d 1152,


36



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

1162 (6th Cir. 1978); Grain Processing Corp. v. Am. Maize-Prods. Co., 185 F.3d

1341, 1349 (Fed. Cir. 1999).

131. The Federal Circuit has expressly rejected the assertion that evidence

of a non-infringing alternative, even if admissible, must be accepted as the

measure of damage. See Mars, Inc. v. Coin Acceptors, Inc., 527 F.3d 1359 (Fed.

Cir. 2008)(“ [E]ven if Coinco had shown that it had an acceptable noninfringing

alternative at the time of the hypothetical negotiation, Coinco is wrong as a matter

of law to claim that reasonable royalty damages are capped at the cost of

implementing the cheapest available, acceptable, noninfringing alternative. We

have previously considered and rejected such an argument. . . . To the contrary, an

infringer may be liable for damages, including reasonable royalty damages, that

exceed the amount that the infringer could have paid to avoid infringement”). See

also M2M Solutions LLC v. Enfora, Inc., 167 F.Supp.2d 665, 682 (D. Del. 2016)

(“[W]hile the existence of a non-infringing alternative ‘is a factor relevant to the

determination of a proper royalty during hypothetical negotiations,’ it remains just

that, a factor, and does not conclusively establish an upper limit on a reasonably

[sic] royalty”).

132. Prejudgment interest should normally be awarded to a prevailing

patent holder in an infringement action from the date that royalty payments would

have been received in order to make the patent holder whole. General Motors

Corp. v. Devex Corp., 461 U.S. 648, 655-56 (1983); 35 U.S.C. §284.

133. The Court has broad discretion to determine the appropriate interest

rate to apply. See Uniroyal, Inc. v. Rudkin–Wiley Corp., 939 F.2d 1540, 1545

(Fed. Cir. 1991). The prime interest rate is commonly used. See Illinois Tool

Works, Inc. v. MOC Products Company, Inc., 2013 WL 12064544 * 8 (S.D. Cal.

10-25-2013).


https://1.next.westlaw.com/Link/Document/FullText?findType=Y&serNum=1991123152&pubNum=0000350&originatingDoc=I9f634220a01111e79e029b6011d84ab0&refType=RP&fi=co_pp_sp_350_1545&originationContext=document&transitionType=DocumentItem&contextData=(sc.UserEnteredCitation)#co_pp_sp_350_1545

https://1.next.westlaw.com/Link/Document/FullText?findType=Y&serNum=1991123152&pubNum=0000350&originatingDoc=I9f634220a01111e79e029b6011d84ab0&refType=RP&fi=co_pp_sp_350_1545&originationContext=document&transitionType=DocumentItem&contextData=(sc.UserEnteredCitation)#co_pp_sp_350_1545

37



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

134. 35 U.S.C. § 284 gives the District Court discretion to award

enhanced damages against those liable for patent infringement. Such enhanced

damages should be limited to egregious cases of willful misconduct beyond

typical infringement. Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S.Ct.

1923, 1933-1935 (2016); Polara Eng., Inc. v. Campbell Co., 237 F.Supp.3d 956,

980-81 (C.D. Cal. 2017).

135. Subjective willfulness alone can support an award of enhanced

damages. A patentee seeking enhanced damages must show subjective

willfulness by a preponderance of the evidence. Apple, Inc. v. Samsung Elecs.

Co., Ltd., 258 F.Supp.3d 1013, 1022 (N.D. Cal. 2017)(citing Halo Electronics,

Inc. v. Pulse Electronics, Inc., 136 S.Ct. 1923 (2016)).

136. To determine whether a court should exercise its discretion to award

enhanced damages, courts consider nine factors described in Read Corp. v.

Portec, Inc., 970 F.2d 816 (Fed. Cir. 1992), abrogated on other grounds by

Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc).

The Read factors include: (1) whether the infringer deliberately copied the ideas

or design of another; (2) whether the infringer, when he knew of the other's patent

protection, investigated the scope of the patent and formed a good-faith belief that

it was invalid or that it was not infringed; (3) the infringer's behavior as a party to

the litigation; (4) defendant's size and financial condition; (5) closeness of the

case; (6) duration of defendant's misconduct; (7) remedial action by the defendant;

(8) defendant's motivation for harm, and (9) whether defendant attempted to

conceal its misconduct. Read, 970 F.2d at 827.

137. If a patent claim is determined to be valid and infringed by a

defendant, the Court may order post-trial injunctive relief to prohibit further

infringement or may grant an ongoing royalty for the defendants’ continuing use

of the patented invention. Paice LLC v. Toyota Motor Corp., 504 F.3d 1293,


https://1.next.westlaw.com/Link/Document/FullText?findType=Y&serNum=1992124255&pubNum=0000350&originatingDoc=I4e1618005a4a11e794a1f7ff5c621124&refType=RP&originationContext=document&transitionType=DocumentItem&contextData=(sc.Search)




https://1.next.westlaw.com/Link/Document/FullText?findType=Y&serNum=1992124255&pubNum=0000350&originatingDoc=I4e1618005a4a11e794a1f7ff5c621124&refType=RP&fi=co_pp_sp_350_827&originationContext=document&transitionType=DocumentItem&contextData=(sc.Search)#co_pp_sp_350_827

38



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

1314 (Fed. Cir. 2007); SCA Hygiene Prod. Aktiebolag v. First Quality Baby

Prod., LLC, 807 F.3d 1311, 1332–33 (Fed. Cir. 2015), vacated in part on other

grounds, 137 S. Ct. 954 (2017).

C. Abandoned Issues

Ameranth is not asserting any claims for willful infringement of the ‘077

Patent against defendants, but reserves the right to assert such claims if their use

of the patent continues after a finding of validity and infringement.

The ‘850, ‘325 and ‘733 Patents are no longer at issue.

The defendants are no longer asserting any claim for unenforceability of the

‘077 Patent based on the alleged commitment of “inequitable conduct” in its

prosecution.

D. Exhibits

Pursuant to Local Rule 16(f)(2)(2), a list of the exhibits Ameranth’s

presently intends to offer at trial is attached hereto as Exhibit A.

E. Witnesses1

Percipient Witnesses:

1. Keith McNally

2. Richard Bergfeld

3. Kathie Sanders

4. Betsy Eicherly

5. Vern Yates

6. John Harker

7. James Kargman

8. David Kargman

9. Nella Ludlow

1 To the extent any listed witness was deposed in this matter and is not available

to testify in person at trial, Ameranth reserves the right to introduce portions of such witness’s deposition testimony at trial and to include such deposition transcripts as exhibits.


39



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

10. Douglas Dedo

11. Judd Goldfeder (deceased- by deposition transcript only)

12. Rule 30(b)(6) designees of the Defendants deposed herein

Expert Witnesses:

1. Michael Shamos, Ph.D. Dr. Shamos is a Distinguished Career

Professor in the School of Computer Science at Carnegie Mellon University, and

holds several technical degrees and a law degree, and is admitted to the Bar of the

U.S.P.T.O. Dr. Shamos has submitted expert reports in this matter detailing the

substance of his anticipated testimony at trial, and those reports are incorporated

by reference herein. In summary, Dr. Shamos will testify that the claims of the

‘077 Patent are valid and enforceable and further supported by secondary factors

of non-obviousness. Dr. Shamos will also testify in rebuttal to the testimony of

the defendants’ expert witnesses on such topics.

2. Sam Malek, Ph.D. Dr. Malek holds a Ph.D. in Computer Science

from the University of Southern California. He is an Associate Professor in the

Department of Informatics at the University of California, Irvine, and the Director

of the Software Engineering and Analysis Laboratory. He has worked as software

engineer and architect. Dr. Malek has submitted expert reports in this matter

detailing the substance of his anticipated testimony at trial, and those reports are

incorporated by reference herein. In summary, Dr. Malek will testify that the

defendants’ accused systems infringe valid and enforceable claims of Ameranth’s

‘077 Patent. Dr. Malek will also testify in rebuttal to the testimony of the

defendants’ expert witnesses on such topics.

3. Jeff Brown, Ph.D. Dr. Brown holds a Ph.D. in economics from the

University of California, Los Angeles. He is a partner at Bates White Economic

Consulting. He has over 20 years’ experience as an economist and in providing

empirical analysis. Dr. Brown has submitted expert reports in this matter


40



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

detailing the substance of his anticipated testimony at trial, and those reports are

incorporated by reference herein. In summary, Dr. Brown will testify as to the

reasonable royalty rate for use, practice and infringement of the claims of the ‘077

Patent and the amount of damages owed by the defendants to Ameranth for

infringement of such claims. Dr. Brown will also testify in rebuttal to the

testimony of the defendants’ expert witnesses on such topics.

F. Patent Specific Issues [Local Rule 16.1(f)(3)(e)]

a. The Teachings of the Asserted Claims of the ‘077 Patent

The ‘077 Patent teaches, and each claim describes, an information

management and synchronous communications system in which specific

hospitality-related functions are enabled through synchronizing certain operations

of "back end" or "server side" computers with “client side” computers including

“wireless handheld computing devices” such as smartphones and tablets, as well

as (for claims 13-18) other computers, such as desktops and laptops, that may be

used by consumers in, e.g., making online orders, reservations, or event ticket

purchases. Each claim further describes that the system is enabled to transmit, to

wireless handheld computing devices, menus or other hospitality information that

is then displayed on the wireless handheld computing devices in a graphical user

interface (“GUI”) display interface tailored to the handheld device screen size and

other display characteristics of the wireless handheld computing devices.

Additional novel features of the ‘077 Patent claims include integrations

with/between multiple hospitality applications and other specific functionality.

b. How the Asserted Claims are Infringed

As to Pizza Hut/ QuikOrder: Ameranth is asserting claims 1, 6, 8, 13 and

17 of the ‘077 Patent against Pizza Hut and QuikOrder.

Pizza Hut and QuikOrder infringe the asserted claims by making and using

the Accused Pizza Hut System, through which consumers may order pizza and


41



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

other food items on their mobile phones, tablets and other mobile devices through

Pizza Hut's mobile apps. When a consumer opens a Pizza Hut mobile app and the

consumer's location is identified, the Accused System's “back end” sends a menu

configuration for the selected location to the consumer's mobile device. The

Accused Pizza Hut System enables a restaurant menu to be shown to the

consumer in a display tailored to the screen size and other display characteristics

of the mobile device. The system further enables a consumer's selections from the

menu to be synchronously transmitted to the Accused Pizza Hut System’s “back

end” and enables additional information, such as confirmation of order or

payment, to be synchronously transmitted from the “back end” to the consumer's

mobile device, and enables orders to be fulfilled and consumer payments to be

processed. Additionally, with respect to infringement of claims 13 and 17, the

Accused Pizza Hut System also enables consumers to see the same menu

information and place orders on larger, “non-handheld” consumer computers such

as desktops and laptops, as well as on consumer mobile devices such as mobile

phones and tablets. Further with respect to infringement of claims 13 and 17, the

Accused Pizza Hut System enables consumers to see other information related to

hospitality functions– for example, their ordering history and loyalty rewards

status on mobile phones, tables, desktop computers, and laptops.

As to Domino’s: Ameranth is asserting claims 1, 6, 9, 13 and 17 of the ‘077

Patent against Domino’s. Domino’s infringes the asserted claims by making and

using the Accused Domino’s System, through which consumers may order pizza

and other food items on their mobile phones, tablets and other mobile devices

through Domino’s mobile apps. When a consumer opens a Domino’s mobile app

and identifies the location the consumer wishes to order from, the Accused

System’s “back end” sends a menu configuration for the selected location to the

consumer’s mobile device. The Accused Domino’s System enables a restaurant


42



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

menu to be shown to the consumer in a display tailored to the screen size and

other display characteristics of the mobile device. The system further enables a

consumer’s selections from the menu to be synchronously transmitted to the

Accused Domino’s System’s “back end” and enables additional information, such

as confirmation of order or payment, to be synchronously transmitted from the

“back end” to the consumer’s mobile device, and enables orders to be fulfilled and

consumer payments to be processed.

Additionally, with respect to infringement of claims 13 and 17, the Accused

Domino’s System also enables consumers to see the same menu information and

place orders on larger, “non-handheld” consumer computers such as desktops and

laptops, as well as on consumer mobile devices such as mobile phones and

tablets. Further with respect to infringement of claims 13 and 17, the Accused

Domino’s System enables consumers to see other information related to

hospitality functions– for example, their ordering history and loyalty rewards


As to Papa John’s: Ameranth is asserting claims 1, 6, 9, 13 and 17 of the

‘077 Patent against Papa John’s.

Papa John’s infringes the asserted claims by making and using the Accused

Papa John’s System, through which consumers may order pizza and other food

items on their mobile phones, tablets and other mobile devices through Papa

John’s mobile apps. When a consumer opens a Papa John’s mobile app and the

consumer's location is identified, the Accused System's “back end” sends a menu

configuration for the selected location to the consumer's mobile device. The

Accused Papa John’s System enables a restaurant menu to be shown to the

consumer in a display tailored to the screen size and other display characteristics

of the mobile device. The system further enables a consumer's selections from the

menu to be synchronously transmitted to the Accused Papa John’s System’s “back


43



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

end” and enables additional information, such as confirmation of order or

payment, to be synchronously transmitted from the “back end” to the consumer's

mobile device, and enables orders to be fulfilled and consumer payments to be

processed. Additionally, with respect to infringement of claims 13 and 17, the

Accused Papa John’s System also enables consumers to see the same menu

information and place orders on larger, “non-handheld” consumer computers such

as desktops and laptops, as well as on consumer mobile devices such as mobile

phones and tablets. Further with respect to infringement of claims 13 and 17, the

Accused Papa John’s System enables consumers to see other information related

to hospitality functions– for example, their ordering history and loyalty rewards


Respectfully submitted,

Dated: July 6, 2018 CALDARELLI HEJMANOWSKI & PAGE LLP

By: /s/ William J. Caldarelli

William J. Caldarelli

FABIANO LAW FIRM, P.C.

Michael D. Fabiano

OSBORNE LAW LLC

John W. Osborne

WATTS LAW OFFICE

Ethan M. Watts

Attorneys for Plaintiff Ameranth, Inc.


EXHIBIT A


-1-

EXHIBIT 1

AMERANTH, INC. V. PIZZA HUT, INC., et al. Case No. 3:11-cv-01810-DMS

PLAINTIFF AMERANTH, INC.’S LIST OF EXHIBITS

NO. Date Marked Date Admitted Description

1. U.S. Patent No. 8,146,077

2. U.S. Patent No. 8,146,077 Patent File History

3. Patent Assignment Documents – U.S. Patent No. 8,146,077

4. Notice of Allowance – U.S. Patent No. 8,146,077

5. U.S. Patent No. 8,738,449

6. Examiner’s Amendment - U.S. Patent No. 8,738,449, dated 12/16/11

7. Transmittal cover pages for Application No. 09/400,413 for U.S. Patent 6,384,850, dated 9/21/99

8. U.S. Patent No. 6,384,850

9. U.S. Patent No. 6,982,733

10. U.S. Patent No. 6,871,325

11. Six Continents Hotels, Inc., and Ameranth Wireless, Inc., eHost Agreement, dated 6/1/05

12. 2010 Compromise and Settlement Agreement and General Release, dated 6/9/10

13. U.S. Patent Application No. 11/112,990 “Secondary Factors” Nexus Overview Summary

14. Declaration of Keith R. McNally Under 37 C.F.R. §1.131, including exhibits, dated 1/22/09, regarding U.S. Patent Application No. 11/112,990 (AMER0180370-AMER0180435)

15. Declaration of Kathie Sanders Under 37 C.F.R. §1.132, including exhibits, dated 8/6/09, regarding U.S. Patent Application No. 11/112,990 (AMER0180763-AMER0180768)

16. Declaration of Keith McNally Under 37 C.F.R. §1.132, dated 8/19/09, including exhibits, regarding U.S. Patent Application No. 11/112,990 (AMER0180572-AMER0180755)

17. Supplemental Declaration (of Keith McNally) Under 37 C.F.R. §1.131, including exhibits, dated 8/19/09 re U.S. Patent Application No. 11/112,990 (AMER0180756-AMER0180761)

18. Declaration of Keith McNally Under 37 C.F.R. §1.111, dated 8/21/09, including exhibits, regarding U.S. Patent Application No. 11/112,990 (AMER0180512-AMER0180571)


-2-


19. Supplemental Declaration of Keith McNally Under 37 C.F.R. §1.132,

including exhibits, dated 5/12/10, regarding U.S. Patent Application no. 11/112,990

20. Supplemental Declaration of Keith McNally Under 37 C.F.R. §1.132,

including exhibits, dated 12/13/10, regarding U.S. Patent Application No. 11,112,990

21. Supplemental ‘Nexus’ Declaration of Keith McNally Under 37

C.F.R. §1.132, including exhibits, dated 12/13/10

22. Supplemental Response And Amendment Of Claims, including

exhibits, dated 12/14/10, submitted by Michael D. Fabiano U.S. Patent Application No. 11,112,990

23. Applicant-Initiated Interview Summary, Claims discussed: 103-127,

dated 10/14/11 – U.S. Patent Application No. 11,112,990

24. ‘Non Obviousness’ Nexus Timeline Chart – ‘990

25. Articles Of Incorporation of Ameranth Technology Systems, Inc.,

filed 6/19/96

26. Certificate of Incorporation of Ameranth Technology Systems, Inc.,

filed 11/26/96

27. Agreement Of Merger Of Ameranth Technology Systems, Inc. (a

California corporation) And Ameranth Technology Systems, Inc. (a Delaware corporation), dated 7/28/97

28. Certificate Of Amendment Of Certificate Of Incorporation Of

Ameranth Technology Systems, Inc., changing name to Ameranth Wireless, Inc., dated 2/23/01

29. Restated Certificate of Incorporation – Ameranth, Inc., dated 6/20/06

30. IPDEV Co.’s Complaint For Determination Of Priority Of Invention

Among Interfering Patents Under 35 U.S.C. §291 (pre-AIA), dated 5/27/14

31. Order (1) Granting Ameranth’s Motion For Summary Judgment Of Invalidity Due To Inadequate Written Description and (2) Denying IPDEV’s Motion For Summary Judgment Re: Written Description Support And Enablement, IPDEV v. Ameranth, Inc., Southern District of California Case No. 14-cv-1303 DMS (WVG)

32. Judgment In A Civil Case, dated 327/18 , in IPDEV v. Ameranth, Inc., Southern District of California Case No. 14-cv-1303 DMS (WVG)


-3-


33. Amended Judgment In A Civil Case, dated 3/27/18 , in IPDEV v. Ameranth, Inc., Southern District of California Case No. 14-cv-1303 DMS (WVG)

34. Transcript and video of deposition of David Kargman (30(b)(6)), including exhibits, taken 8/3/17 (IPDEV v. Ameranth)

35. Transcript and video of deposition of David Kargman, including exhibits, taken 7/17/17 (IPDEV v. Ameranth)

36. Transcript and video of deposition of James Kargman, including exhibits, taken 7/17/17 (IPDEV v. Ameranth)

37. Ameranth 21st Century Restaurant Brochure – Wireless Systems

Integration

38. UltraPad 2700/Spectrum24 Characteristics Brochure

39. Ameranth 21st Century Restaurant Brochure – UltraPad 2700 and

AmPrint 2100

40. Ameranth 21st Century Restaurant Brochure – UltraPad 2700 and

AmPrint 2100 (with redlining)

41. Ameranth Brochure Wireless Systems Integration – 5/22/99 – Chicago NRA Show

42. Ameranth PadLink Brochure (AMER0037397-AMER0037398)

43. Ameranth Technology Systems – Introducing the 21st Century Restaurant System – November 1998 (AMER2018000006359-AMER2018000006366)

44. Ameranth 21st Century Restaurant – Increase Efficiency With Wireless Ordering (AMER2018000006362-AMER2018000006363)

45. 21st Century Restaurant (AMER0035094-AMER0034095)

46. TransPad SL (AMER0037249-AMER0037250)

47. QuikOrder – API Collated Brochure – 7/2018

48. Case Study: Ameranth/The Improv Comedy Club – Fall 2000 (AMER2018000000018853-AMER2018000000018854)

49. 2000 Improv Award

50. ComputerWorld Honors Program Award– Improv Ticketing System - 2001

51. Photo of Microsoft 8th

Annual RAD Award plaque & physical exhibit (AMER2018000000018847)

52. Hostalert - Microsoft 8th

Annual RAD Awards (20 pages) and physical exhibit


-4-


53. Hospitality Solutions 99 Awards – Innovation Of The Year Award – 4/10/99 (AMER2018000000018849) & physical exhibit

54. Computerworld Honors Laureate (AMER2018000000018850) and physical exhibit

55. HostAlert System plaque photo (8/29/03 Union-Tribune Article) AMER2018000019237 and physical exhibit

56. San Diego Union-Tribune article dated 3/24/06 (AMER2018000000018851-AMER2018000000018852)

57. N.Y. Times article dated 11/25/01, “RESPONSIBLE PARTY/KEITH McNALLY; Holding the Mayo, Efficiently”

58. Wall Street Journal article, “Wireless Ordering Spreads In Busy U.S. Restaurants,” dated 8/6/01 (AMER2018000019233-AMER2018000019235)

59. Ameranth News announcement – Ameranth Technology Systems And Symbol Technologies Reach Agreement On Formation Of Strategic Alliance, dated 4/19/99 (AMER0180784 – AMER0180785)

60. Ameranth News announcement – Ameranth Technology Systems And Comtec Information Systems Announce The Formation Of A Strategic Alliance, dated 5/17/99 (AMER0180787 – AMER0180788)

61. NSC – QuikOrder – Article entitled “Admitting that Maintaining ‘Consistency’ Was Difficult, Even in 2003, dated 5/18/03”

62. Snoeren NIA Related Article entitled “Remote Control: Distributed Application Configuration, Management, and Visualization with Plush,” 2007

63. 2009 FS Tech Awards video

64. eHost Conceptual Relationship with Pizza Hut - 2/15/06 (AMER0040421-27)

65. Ameranth-Pizza Hut Yahoo meeting agenda package - 2/15/06 (AMER0039785-852)

66. Ameranth-QO Strategic Meeting 3-28 to 3-29-06

67. E-mail exchange between Jim Kargman and Keith McNally, dated 11/28/07 (AMER0206029)

68. E-mail re modification of agreement between Ameranth and Wingstop, dated 2/19/14 (AMER20180000000779)

69. Memo re Licensing Agreement with Food.com dated 9/13/99

70. QuikOrder Product Demonstration For Pizza Hut 2001 (10560-10577)


-5-


71. QuikOrder Product Demonstration For Pizza Hut 2000 (10578-10595)

72. New! Intrapad – A “No-Wait System” Product from Ameranth – AMER0037383-AMER0037396

73. 21st Century Restaurant System Chart – AMER0037398

74. 2005 eHost system overview chart

75. 2006 eHost system overview chart

76. 2006 Magellan product system diagram

77. 2007 Starbucks vision proposal

78. License Agreement between Ameranth, Inc., and Biteheist, entered into on 2/27/17 (AMER20180000000399-410)

79. License Agreement between Ameranth, Inc., and BJ’s Restaurants, entered into on 8/27/14 (AMER20180000000411-423)

80. License Agreement between Ameranth, Inc., and Brink Software, entered into on 9/30/11 (AMER2018000000035-AMER2018000000046)

81. License Agreement between Ameranth, Inc., and Cardfree, entered into on 7/22/14 (AMER20180000000424-434)

82. License Agreement between Ameranth, Inc., and ChowNow, entered into on 6/22/12 (AMER20180000000946-958)

83. First Amended License Agreement between Ameranth, Inc., and ChowNow, entered into on 12/20/13 (AMER20180000000435-447)

84. License Agreement between Ameranth, Inc., and CircleShout, entered into on 8/26/15 (AMER20180000000448-459)

85. License Agreement between Ameranth, Inc., and Cognizant, entered into on 1/28/14 (AMER20180000000460-470)

86. License Agreement between Ameranth, Inc., and Comcash, entered into on 3/18/13 (AMER20180000000471-482)

87. License Agreement between Ameranth, Inc., and Compel Cart, entered into on 5/24/12 (AMER20180000000802-814)

88. License Agreement between Ameranth, Inc., and Data Hawk, entered into on 12/18/15 (AMER20180000000483-495)

89. License Agreement between Ameranth, Inc., and Embedded Processor Designs, entered into on 8/28/15 (AMER20180000000496-507)

90. License Agreement between Ameranth, Inc., and EMN8, entered into on 7/1/13 (AMER20180000000371-385)


-6-


91. Distribution and License Agreement between Ameranth, Inc., and Infogenesis/Agilsys, entered into on 4/4/01 (AMER0050055-70)

92. Amendment No. 1 Distribution and License Agreement between Ameranth, Inc., and Infogenesis/Agilsys, entered into on 4/4/01 (AMER0050071-79)

93. License Agreement between Ameranth, Inc., and Jersey Mike’s, entered into on 9/9/14 (AMER20180000000532-543)

94. License Agreement between Ameranth, Inc., and Malevia, entered into on 2/3/16 (AMER20180000000544-555)

95. License Agreement between Ameranth, Inc., and MenuSoft, entered into on 11/2/11 (AMER20180000000213-214)

96. License Agreement between Ameranth, Inc., and Meplus 1, entered into on 1/21/14 (AMER20180000000556-567)

97. License Agreement between Ameranth, Inc., and Mobi2go, entered into on 9/18/15 (AMER20180000000568-579)

98. License Agreement between Ameranth, Inc., and MonkeyMedia, entered into on 6/5/13(AMER20180000000580-592)

99. License Agreement between Ameranth, Inc., and MunchAway, entered into on 1/19/12(AMER20180000000215-231)

100. License Agreement between Ameranth, Inc., and My Check, entered into on 10/29/13(AMER20180000000593-605)

101. License Agreement between Ameranth, Inc., and NetWaiter, entered into on 9/30/11(AMER2018000000047-60)

102. License Agreement between Ameranth, Inc., and Nu Order, entered into on 5/16/13 (AMER20180000000606-617)

103. License Agreement between Ameranth, Inc., and One Loyalty. entered into on 4/4/14 (AMER20180000000618-628)

104. License Agreement between Ameranth, Inc., and OrderBee, entered into on 10/24/13 (AMER20180000000629-640)

105. License Agreement between Ameranth, Inc., and ORDRIT, entered into on 8/9/13 (AMER20180000000508-519)

106. License Agreement between Ameranth, Inc., and Par, entered into on 12/31/12 (AMER20180000000332-347)

107. Undertaking Regarding Consent To Assignment Of Patent License Agreement - Par, dated 10/30/15

108. Restated License Agreement between Ameranth, Inc., and Par, entered into on 11/5/15


-7-


109. License Agreement between Ameranth, Inc. and Profitstreams, entered into on 10/24/06 (AMER20180000000124-144)

110. License Agreement between Ameranth, Inc., and Profitstreams, entered into on 12/6/06 (AMER20180000000145-166)

111. License Agreement between Ameranth, Inc., and Profitstreams, entered into on 3/15/07 (AMER20180000000167-187)

112. Amended And Restated License Agreement between Ameranth, Inc., and Profitstreams, entered into on 12/20/07 (AMER2018201800000000959-980)

113. Second Amended And Restated License Agreement between Ameranth, Inc., and Profitstreams, entered into on 8/27/08 (AMER20180000000188-212)

114. License Agreement between Ameranth, Inc., and Radiant, entered into on 11/29/07 (AMER20180000000821-848)

115. Sublicense Agreement between Ameranth, Inc., and Subtledata & Red-Fork, entered into on 4/11/13 (AMER20180000000770-775)

116. License Agreement between Ameranth, Inc. and RRT USA, entered into on 4/5/13 (AMER20180000000666-677)

117. License Agreement between Ameranth, Inc., and Savory, entered into on 2/22/12 (AMER20180000000249-259)

118. License Agreement between Ameranth, Inc., and Skywire, entered into on 5/10/12 (AMER20180000000281-291 + 303)

119. License Agreement between Ameranth, Inc., and SMS, entered into on 11/5/15 (AMER20180000000641-665)

120. License Agreement between Ameranth, Inc., and SnapFinger, entered into on 1/20/12 (AMER20180000000304-319)

121. Special Terms Commitment Letter – SnapFinger, entered into on 6/10/13 (AMER20180000000776-777)

122. License Agreement between Ameranth, Inc., and Splickit, entered into on 7/31/12 (AMER20180000000780-790 & 801))

123. License Agreement between Ameranth, Inc., and Squirrel, entered into on 9/21/15 (AMER20180000000739-750)

124. ParTech Limited License Agreement, dated 2/19/08 (AMER20180000000815-820)

125. Letter Agreement – Steak n Shake, entered into on 4/29/13 (AMER20180000000751-752)

126. License Agreement between Ameranth, Inc., and Subtledata, entered into on 8/7/12 (AMER20180000000933-945)


-8-


127. Amendment to License Agreement between Ameranth, Inc., and Subtledata, entered into on 9/27/12 (AMER20180000000778)

128. License Agreement between Ameranth, Inc., and Taco Bell, entered into on 3/20/14 (AMER20180000000358-370)

129. License Agreement between Ameranth, Inc., and Tap to Eat, entered into on 5/1/13 (AMER20180000000753-764)

130. Memorandum Of Settlement –TicketMob / Laughstub, Abstrakt, Symfonee and Ameranth, entered into on 5/16/12

131. License Agreement between Ameranth, Inc., and Tillster Inc., entered into on 7/1/13

132. 21 CR Distribution And License Agreement between Ameranth, Inc., and Xpient, entered into on 3/7/07 (AMER20180000000320-331)

133. Amended License Agreement between Ameranth, Inc. and Xpient, entered into on 4/21/14 (AMER20180000000348-357)

134. License Agreement between Ameranth, Inc. and Fork, entered into on 9/30/13 (AMER2018000000520-531)

135. 1st Amended License Agreement between Ameranth, Inc. and

Splickit, entered into on 11/19/13 (AMER20180000000703-713)

136. 1st Addendum to License Agreement between Ameranth, Inc., and

Cardfree (AMER20180000000765-766)

137. EMN8 – Special Deal Terms, dated 8/5/13

(AMER20180000000767-768)

138. Ameranth/EMN8/Settlement/License

(AMER20180000000769)

139. Press Release: “Ameranth Technology Systems & Symbol Technologies Reach Agreement …,” dated 4/19/99

140. Press Release: “Ameranth Technology Systems & Comtec Information Systems …,” dated 5/17/99

141. Press Release: “Food.com and Ameranth Technology Announce Partnership…,” dated 7/16/99

142. Press Release: Ameranth Technology Systems Awarded Innovation Of The Year Award At European Hospitality Solutions Technology Awards, dated 10/4/99

143. Press Release: Ameranth Technology Systems Changes Name To Ameranth Wireless, dated 3/6/01

144. Press Release: Domino’s Pizza - “Domino’s Pizza First in industry to Offer Mobile Ordering,” dated 9/27/07


-9-


145. Press Release: Taco Bell Licenses Ameranth Patents, dated 4/1/14

146. Press Release: BJ’s – dated 8/29/14

147. Press Release: Jersey Mike’s – dated 11/4/15

148. 2006 Ameranth-SCH press release

149. Expert Report of Jeffrey F. Brown, Ph.D., and all exhibits/sources cited therein, dated 4/4/18 – Domino’s

150. Expert Report of Jeffrey F. Brown, Ph.D., and all exhibits/sources cited therein, dated 3/26/18 – Papa John’s

151. Expert Report of Jeffrey F. Brown, Ph.D., and all exhibits/sources cited therein, dated 3/28/18 – QuikOrder & Pizza Hut

152. Expert Report of Sam Malek, Ph.D., Concerning Infringement By Domino’s Pizza, LLC and Domino’s Pizza, Inc., and all exhibits/sources cited therein, dated 3/28/18

153. Expert Report of Sam Malek, Ph.D., Concerning Infringement By Papa John’s USA, Inc., and all exhibits/sources cited therein, dated 3/26/18

154. Expert Report of Sam Malek, Ph.D., Concerning Infringement By Pizza Hut, Inc. And Pizza Hut Of America, Inc., and all exhibits/sources cited therein, dated 3/28/18

155. Expert Report of Sam Malek, Ph.D., Concerning Infringement By QuikOrder, Inc., and all exhibits/sources cited therein, dated 3/28/18

156. Domino’s Android Mobile App Version History

157. Domino’s IOS Mobile App Version History

158. Papa John’s Android Mobile App Version History

159. Papa John’s IOS Mobile App Version History

160. PowerPoint Entitled HTML5 vs Native Apps - 4-19-13 (Pizza Hut – Shamos)

161. Videos of examples of infringing sets of screens – Pizza Hut-QuikOrder (Malek)

162. Videos of examples of infringing sets of screens – Domino’s (Malek)

163. Videos of examples of infringing sets of screens – Papa John’s (Malek)

164. Expert Report Of Michael I. Shamos, Ph.D. To Expert Report Of Dr. Benjamin Goldberg Regarding Non-Infringing Alternatives To U.S. Patent No. 8,146,077, and all exhibits/sources cited therein, dated 5/4/18 (Domino’s)


-10-


165. Expert Report Of Michael I. Shamos, Ph.D. In Rebuttal To Expert Report Of Stephen Gray Concerning Validity Of U.S. Patent No.8,146,077, and all exhibits/sources cited therein, dated 5/4/18 (Domino’s)

166. Expert Report Of Michael I. Shamos, Ph.D. In Rebuttal To Expert Report Of Steven R. Kursh, Ph.D., Concerning Validity Of U.S. Patent No. 8,146,077, and all exhibits/sources cited therein, dated 5/4/18 (Pizza Hut)

167. Expert Report Of Michael I. Shamos, Ph.D. In Rebuttal To Expert Report Of Dr. Hugh M. Smith As To Patentability And Invalidity Of U.S. Patent No. 8,146,077, and all exhibits/sources cited therein dated 5/4/18 (Pizza Hut)

168. Expert Report Of Michael I. Shamos, Ph.D. In Rebuttal to Expert Declaration Of Alex C. Snoeren, Ph.D. On Invalidity Of U.S. Patent No. 8,146,077, and all exhibits/sources cited therein, dated 5/4/18 (Papa John’s)

169. Expert Declaration of Michael I. Shamos, Ph.D. Concerning Claim Construction re: 8,146,077 B2 Patent, dated 10/20/17

170. Claim Construction Order, dated 12/28/17

171. PowerPoint Charts – Claim Construction Presentation, 12/11/17

172. Claim Construction Order, dated 8/10/12, in Ameranth v. Par, Eastern District of Texas Case No. 2:10-cv-00299

173. Notice Of Abandonment of Dr. Hugh M. Smith’s patent application, dated 5/17/18

174. Disclosure Of Asserted Claims And Infringement Contentions As To Defendants Domino’s Pizza LLC And Domino’s Pizza, Inc. and exhibits, dated 3/24/17

175. Disclosure Of Asserted Claims And Infringement Contentions As To Defendants Papa John’s USA, Inc. and exhibits, dated 3/24/17

176. Disclosure Of Asserted Claims And Infringement Contentions As To Defendants Pizza Hut, Inc. and Pizza Hut Of America, Inc. and exhibits, dated 3/24/17

177. Disclosure Of Asserted Claims And Infringement Contentions As To Defendant QuikOrder, Inc. and exhibits, dated 3/24/17

178. Amended Disclosure Of Asserted Claims And Infringement Contentions As To Defendants Domino’s Pizza LLC And Domino’s Pizza, Inc. and exhibits, dated 7/5/17

179. Amended Disclosure Of Asserted Claims And Infringement Contentions As To Defendants Papa John’s USA, Inc. and exhibits, dated 7/5/17


-11-


180. Amended Disclosure Of Asserted Claims And Infringement Contentions As To Defendants Pizza Hut, Inc. and Pizza Hut Of America, Inc. and exhibits, dated 7/5/17

181. Amended Disclosure Of Asserted Claims And Infringement Contentions As To Defendant QuikOrder, Inc. and exhibits, dated 7/5/17

182. Amended Disclosure Of Asserted Claims And Infringement Contentions As To Defendants Domino’s Pizza LLC And Domino’s Pizza, Inc. and exhibits, dated 8/7/17

183. Amended Disclosure Of Asserted Claims And Infringement Contentions As To Defendants Papa John’s USA, Inc. and exhibits, dated 8/7/17

184. Amended Disclosure Of Asserted Claims And Infringement Contentions As To Defendants Pizza Hut, Inc. and Pizza Hut Of America, Inc. and exhibits, dated 8/7/17

185. Amended Disclosure Of Asserted Claims And Infringement Contentions As To Defendant QuikOrder, Inc. and exhibits, dated 8/7/17

186. Google Analytics Reports—Pizza Hut

187. Google Analytics Reports—Domino’s

188. Google Analytics Reports—Papa Johns

189. PHI iPhone App Wireframe (PH007607)

190. PHI iPhone/Android App Wireframe/Workflow (PH007685)

191. PHI Mobile Framework iPad/iPhone/Android (PH007957)

192. PHI iPad App Wireframe (PH007985)

193. PHI Chaotic Moon Mobile App wireframe (PH008426)

194. SOW contract for complete redesign of Website and app (PH010301)

195. YUM Mobile ref. Architecture Document (PH010865)

196. YUM Mobile Use case document (PH010888)

197. WebTrends Web Analytics (PH011032)

198. QuikOrder External API Implementation (PH012260)

199. Expedia, Inc., et al. v. Ameranth, Inc., CBM 2014-00014 Petition, Paper 1, 10/15/13, U.S. Patent No. 8,146,077

200. Expedia, Inc., et al. v. Ameranth, Inc., CBM 2014-00014 Amended Petition, Paper 8, 11/8/13


-12-


201. Expedia, Inc., et al. v. Ameranth, Inc., CBM 2014-00014 Patent Owner Preliminary Response and exhibits, Paper 10, 1/14/14

202. Expedia, Inc., et al. v. Ameranth, Inc., CBM 2014-00014 Decision Denying Institution, Paper 19, 3/26/14

203. Apple, Inc., et al. v. Ameranth. Inc., CBM 2015-00081 Petition, Paper 1, 2/1/15

204. Apple, Inc., et al. v. Ameranth. Inc., CBM 2015-00081 Patent Owner Preliminary Response and exhibits, Paper 9, 6/4/15

205. Apple, Inc., et al. v. Ameranth. Inc., CBM 2015-00081 Decision Denying Institution, Paper 13, 8/20/15

206. Apple, Inc., et al. v. Ameranth. Inc., CBM 2015-00081 Petitioner’s Request For Hearing, Paper 14, 9/21/15

207. Apple, Inc., et al. v. Ameranth. Inc., CBM 2015-00081 Decision Denying Request For Hearing, Paper 15, 11/1915

208. Apple, Inc., et al. v. Ameranth. Inc., CBM 2015-00095 Petition, Paper 2, 3/3/15

209. Apple, Inc., et al. v. Ameranth. Inc., CBM 2015-00095 Patent Owner Preliminary Response and exhibits, Paper 9, 6/8/15

210. Apple, Inc., et al. v. Ameranth. Inc., CBM 2015-00095 Decision Denying Institution, Paper 11, 8/20/15

211. Apple, Inc., et al. v. Ameranth. Inc., CBM 2015-00095 Petitioner’s Request For Rehearing, Paper 12, 9/21/15

212. Apple, Inc., et al. v. Ameranth. Inc., CBM 2015-00095 Decision Denying Request For Rehearing, Paper 13, 11/19/15

213. Starbucks Corporation v. Ameranth, Inc., CBM 2017-00053 Petition, Paper 1, 5/25/17

214. Starbucks Corporation v. Ameranth, Inc., CBM 2017-00053 Patent Owner Preliminary Response and exhibits, Paper 6, 9/5/17

215. Starbucks Corporation v. Ameranth, Inc., CBM 2017-00053 Decision Denying Institution, Paper 7, 12/4/17

216. Transcript and video of deposition of John Harker, including exhibits, taken 5/3/10 in Ameranth, Inc. v. Menusoft, et al., U.S. District Court, Eastern District of Texas,

Case No. 2:07-CV-271-TJW-CE

(AM-PAR0186795 – AM-PAR0186997)

217. Transcript and video of deposition of John Harker, including exhibits, taken 5/22/18


-13-


218. Transcript and video of deposition of of Judd Goldfeder, including exhibits, taken 4/22/10 in Ameranth, Inc. v. Menusoft, et al., U.S. District Court, Eastern District of Texas, Case No. 2:07-CV-271-TJW-CE (AM-PAR0186429 – AM-PAR0186486)

219. Death Certificate of Judd Goldfeder, dated 12/20/13

220. Transcript and video of deposition of Richard Bergfeld, including exhibits, taken 3/7/18

221. Transcript and video of deposition of Richard Bergfeld, including exhibits, taken 3/16/18

222. Declaration of Richard Bergfeld, dated 12/11/12, Ameranth, Inc. v. Par Technology Corp., et al.

223. Transcript and video of deposition of Jeff Brown, Ph.D., including exhibits, taken 5/23/18



226. Transcript and video of deposition of John Harker, including exhibits, taken 5/22/18

227. Transcript and video of deposition of Nella Ludlow, including exhibits, taken 5/14/18

228. Transcript and video of deposition of Sam Malek, Ph.D., including exhibits, taken 4/23/18



231. Excerpts from the 30(b)(6) Deposition of Sam Malek, Ph.D., including exhibits, taken 5/14/2018 (filed under seal).



234. Transcript and video of deposition of Keith McNally, including exhibits, taken 3/12/18



-14-




238. Transcript and video of deposition of William Roof, including exhibits, taken 3/5/18

239. Transcript and video of deposition of Kathie Sanders, including exhibits, taken 5/24/18

240. Transcript and video of deposition of Michael Shamos, including exhibits, taken 5/29/18

241. Transcript and video of deposition of Michael Shamos, including exhibits, taken 5/30/18

242. Transcript and video of deposition of Vern Yates, including exhibits, taken 3/8/18



245. Transcript and video of deposition of Marc Asher (PH-QO), including exhibits, taken 3/6/18

246. Transcript and video of deposition of Michael Diamond (PH-QO), including exhibits, taken 3/23/18

247. Transcript and video of deposition of Ivan Hofmann (PH-QO), including exhibits, taken 6/1/18

248. Transcript and video of deposition of Jeff Keumpel (PH-QO), including exhibits, taken 3/8/18

249. Transcript and video of deposition of Steven Kursh (PH-QO), including exhibits, taken 5/22/18

250. Transcript and video of deposition of Rachel Meyer (PH-QO), including exhibits, taken 3/20/18

251. Transcript and video of deposition of Todd Bos (DOM), including exhibits, taken 3/22/18

252. Transcript and video of deposition of Joseph Devereaux (DOM), including exhibits, taken 3/30/18

253. Transcript and video of deposition of Dennis Maloney (DOM), including exhibits, taken 3/30/18

254. Transcript and video of deposition of Christine Meyer (DOM), including exhibits, taken 5/22/18


-15-


255. Transcript and video of deposition of John Redding, including exhibits, taken 5/30/18

256. Transcript and video of deposition of Russell Turner (DOM), including exhibits, taken 3/22/18

257. Transcript and video of deposition of Timothy Wise (DOM), including exhibits, taken 3/22/18

258. Transcript and video of deposition of David Ziemba (DOM), including exhibits, taken 3/22/18

259. Transcript and video of deposition of Sarika Attal (PJ), including exhibits, taken 3/20/18

260. Transcript and video of deposition of Steve Coke (PJ), including exhibits, taken 3/21/18

261. Transcript and video of deposition of Justin Falciola (PJ), including exhibits, taken 3/20/18

262. Transcript and video of deposition of Anne Fischer (PJ), including exhibits, taken 3/21/18

263. Transcript and video of deposition of Benjamin Goldberg (PJ), including exhibits, taken 5/29/18

264. Transcript and video of deposition of Ryan Holomshek (PJ), including exhibits, taken 3/21/18

265. Transcript and video of deposition of Willie James (PJ), including exhibits, taken 3/20/18

266. Transcript and video of deposition of Keith Ugone (PJ), including exhibits, taken 5/30/18

267. Defendants Pizza Hut, Inc. And Pizza Hut Of America, Inc.’s Responses To Ameranth, Inc. And QuikOrder, Inc.’s Responses To Ameranth’s First Set Of Requests For Admission Regarding Authenticity To Defendants Pizza Hut, Inc., Pizza Hut Of America, Inc., And QuikOrder, Inc., dated 5/24/18

268. Defendants Pizza Hut, Inc. And Pizza Hut Of America, Inc.’s Responses To Ameranth, Inc. And QuikOrder, Inc.’s First Supplemental Responses To Ameranth’s First Set Of Requests For Admission Regarding Authenticity To Defendants Pizza Hut, Inc., Pizza Hut Of America, Inc., And QuikOrder, Inc., dated 5/24/18

269. Pizza Hut’s Objections And Responses To Plaintiff’s Requests For Admission, dated 5/6/13

270. Defendants Pizza Hut, Inc. And Pizza Hut Of America, Inc.’s Responses To Ameranth, Inc.’s Second Set Of Requests For Admission To Defendants Pizza Hut, Inc. And Pizza Hut Of America, Inc., dated 5/14/18


-16-


271. Defendants Pizza Hut, Inc. And Pizza Hut Of America, Inc.’s First Supplemental Responses To Ameranth, Inc.’s Second Set Of Requests For Admission To Defendants Pizza Hut, Inc. And Pizza Hut Of America, Inc., dated 5/24/18

272. Defendant QuikOrder, Inc.’s Objections And Responses To Plaintiff Ameranth, Inc.’s First Set Of Requests For Admissions To Defendant Quikorder, dated 5/6/13

273. Defendant QuikOrder, Inc.’s Objections And Responses To Plaintiff Ameranth, Inc.’s Second Set Of Requests For Admissions To Defendant Quikorder, Inc., dated 5/14/18

274. Defendant QuikOrder, Inc.’s First Supplemental Responses To Ameranth, Inc.’s Second Set Of Requests For Admissions To Defendant Quikorder, Inc., dated 5/24/18

275. Domino’s Responses To Plaintiff’s First Set Of Requests For Admission, dated 5/6/13

276. Domino’s Responses To Plaintiff’s Second Set Of Requests For Admission, dated 5/29/18

277. Defendant Papa John’s USA, Inc.’s Response To Plaintiff Ameranth, Inc.’s First Set Of Requests For Admission, dated 9/26/12

278. Papa John’s USA, Inc.’s Objections And Responses To Plaintiff’s Requests For Admission, dated 5/6/13

279. Defendant Papa John’s USA, Inc.’s Objections And Responses To Plaintiff Ameranth, Inc.’s Second Set Of Requests For Admission, dated 5/21/18

280. Pizza Hut, Inc. And Pizza Hut Of America, Inc.’s Responses To Ameranth, Inc.’s Interrogatories Re Source Code Organization, dated 7/18/13

281. Pizza Hut, Inc. And Pizza Hut Of America, Inc.’s Responses To Plaintiff’s First Set Of Interrogatories, dated 1/9/12

282. Pizza Hut, Inc. And Pizza Hut Of America, Inc.’s Supplemental Responses To Plaintiff’s First Set Of Interrogatories, dated 4/15/13

283. Responses To Ameranth, Inc.’s Third Set Of Interrogatories To Defendants Pizza Hut, Inc. And Pizza Hut Of America, Inc., dated 1/25/18

284. Second Supplemental Responses To Ameranth, Inc.’s Third Set Of Interrogatories To Defendants Pizza Hut, Inc. and Pizza Hut Of America, Inc., dated 2/21/18

285. Defendants Pizza Hut, Inc.’s And Pizza Hut Of America, Inc.’s Responses To Ameranth, Inc.’s Fourth Set Of Interrogatories to Defendants Pizza Hut, Inc. And Pizza Hut Of America, Inc., dated 4/30/18


-17-


286. Defendants Pizza Hut, Inc.’s And Pizza Hut Of America, Inc.’s First Supplemental Responses To Ameranth, Inc.’s Fourth Set Of Interrogatories to Defendants Pizza Hut, Inc. And Pizza Hut Of America, Inc., dated 5/22/18

287. Defendants Pizza Hut, Inc.’s And Pizza Hut Of America, Inc.’s Amended First Supplemental Responses To Ameranth, Inc.’s Fourth Set Of Interrogatories to Defendants Pizza Hut, Inc. And Pizza Hut Of America, Inc., dated 5/24/18

288. Defendant QuikOrder, Inc.’s Responses To Plaintiff Ameranth, Inc.’s Interrogatories Re Source Code Organization, dated 7/18/13

289. Defendant QuikOrder’s Responses To Plaintiff’s First Set Of Interrogatories To QuikOrder, Inc., dated 1/9/12

290. Responses To Ameranth, Inc.’s Third Set Of Interrogatories To Defendant QuikOrder, Inc., dated 1/25/18

291. First Supplemental Responses To Ameranth, Inc.’s Third Set Of Interrogatories To Defendant QuikOrder, Inc., dated 2/7/18

292. Second Supplemental Responses To Ameranth, Inc.’s Third Set Of Interrogatories To Defendant Quikorder, Inc., dated 2/21/18

293. QuikOrder, Inc.’s Responses To Ameranth, Inc.’s Fourth Set Of Interrogatories To Defendant QuikOrder, Inc., dated 4/30/18

294. QuikOrder, Inc.’s First Supplemental Responses To Ameranth, Inc.’s Fourth Set Of Interrogatories To Defendant QuikOrder, Inc., dated 5/22/18

295. QuikOrder, Inc.’s Amended First Supplemental Responses To Ameranth, Inc.’s Fourth Set Of Interrogatories To Defendant QuikOrder, Inc., dated 5/24/18

296. QuikOrder, Inc.’s Responses To Ameranth, Inc.’s Fifth Set Of Interrogatories To Defendant, QuikOrder, Inc., dated 5/14/18

297. QuikOrder, Inc.’s First Supplemental Responses To Ameranth, Inc.’s Fifth Set Of Interrogatories To Defendant, QuikOrder, Inc., dated 5/24/18

298. Domino’s Responses To Plaintiff’s Interrogatories (Regarding Source Code Organization), dated 7/17/13

299. Domino’s Responses To Plaintiff’s First Set Of Interrogatories, dated 1/9/12

300. Domino’s First Amended Responses To Plaintiff’s First Set Of Interrogatories, dated 4/15/13

301. Domino’s Responses To Plaintiff’s Third Set Of Interrogatories, dated 1/25/18


-18-


302. Domino’s First Supplemental Responses To Plaintiff’s Third Set Of Interrogatories, dated 2/23/18

303. Domino’s Responses To Plaintiff’s Fourth Set Of Interrogatories, dated 4/27/18

304. Domino’s Responses To Plaintiff’s Fifth Set Of Interrogatories, dated 5/29/18

305. Defendant Papa John’s USA, Inc.’s Responses To Plaintiff Ameranth, Inc.’s First Set Of Interrogatories To Papa John’s USA, Inc., dated 1/9/12

306. Defendant Papa John’s USA, Inc.’s Supplemental Responses To Plaintiff Ameranth, Inc.’s First Set Of Interrogatories To Papa John’s USA, Inc., dated 4/17/12

307. Defendant Papa John’s USA, Inc.’s Objections And Responses To Plaintiff’s Second Set Of Interrogatories, dated 7/18/13

308. Papa John’s USA, Inc.’s First Supplemental Objections And Responses To Plaintiff’s Second Set Of Interrogatories, dated 5/25/18

309. Papa John’s USA, Inc.’s Objections And Responses To Plaintiff’s Third Set Of Interrogatories, dated 1/25/18

310. Papa John’s USA, Inc.’s Objections And Responses To Ameranth, Inc.’s Fourth Set Of Interrogatories, dated 4/27/18

311. Papa John’s USA, Inc.’s First Supplemental Objections And Responses To Ameranth, Inc.’s Fourth Set Of Interrogatories, dated 5/25/18

312. Papa John’s USA, Inc.’s Objections And Responses To Ameranth, Inc.’s Fifth Set Of Interrogatories, dated 5/24/18

313. QuikOrder Online Order Agreement For Pizza Hut Franchisees, last updated 10/23/13 (QO 261851 – QO 261865)

314. Online Order Agreement Pizza Hut Franchisees, revised 3/8/10 (QO 261925 – QO 261940)

315. License agreement between IPDEV and QuikOrder, dated 1/1/02 (QO262067 – 262073)

316. Screen shot of Pizza Hut website with ‘449 patent marking (one page) - 2017

317. 2014 Screen shot of Pizza Hut website with ‘449 patent marking (four pages)

318. 2016 Master Services Agreement & SOW between Pizza Hut, LLC And National Systems Corporation (QO 261965 – 262066)

319. Mutual Confidentiality Agreement between Ameranth, QuikOrder and IPDEV, dated 3/1/06 (QO 275466 - QO 275470)


-19-


320. Ameranth Wireless Overview (with Pizza Hut), Jan. 2006 AMER0030361-370

321. Pizza Hut site with ‘449 screen shot dated 5/28/14



324. Pizza Marketplace.com press release entitled “NSC launches multiple-touchscreen technology.”

325. Domino’s link to 2013 Windows phone app

326. Domino’s video transcript regarding CEO, Jim Cramer, dated 3/15/16

327. PRWeb Press release entitled “Domino’s Pizza Selects Riversand Technologies MDMCenter for Worldwide Multi-domain Master Data Management, dated 4/2/14

328. Video of Domino’s.com TV Commercial: ‘Phone Orders’ – iSpot.tv:

https://www.ispot.tv/ad/72SF/dominos-com-phone-orders

329. Pizza Hut Franchise Disclosure Document, dated 2015

330. Exhibits to Franchise Disclosure Document, dated 2015

331. Franchise Disclosure Document, dated 2012






337. Screen shots taken 5/9/18 using Pizza Hut mobile app on a Galaxy smartphone while the Pizza Hut mobile app was localized to the Pizza Hut store located at 1230 N. Mississippi Avenue, ADA, Oklahoma 74820

338. Screen shots taken 5/9/18 using Pizza Hut mobile app on a Galaxy smartphone while the Pizza Hut mobile app was localized to the Pizza Hut store located at1636 E. State Road 44, Shelbyville, Indiana 46176

339. Screen shots taken 5/9/18 using Pizza Hut mobile app on a Galaxy smartphone while the Pizza Hut mobile app was localized to the Pizza Hut store located at 8210 Windfall Lane, Camby, Indiana 46113


https://www.ispot.tv/ad/72SF/dominos-com-phone-

-20-


340. Screen shots taken 5/9/18 using Pizza Hut mobile app on a Galaxy smartphone while the Pizza Hut mobile app was localized to the Pizza Hut store located at 1275 Boardman Road, Jackson, Michigan 49202

341. Screen shots taken 5/9/18 using Pizza Hut mobile app on a Galaxy smartphone while the Pizza Hut mobile app was localized to the Pizza Hut store located at 6141 Windhaven Parkay, Plano, Texas 75083

342. Screen shots taken 5/9/18 using Pizza Hut mobile app on a Galaxy smartphone while the Pizza Hut mobile app was localized to the Pizza Hut store located at 320 S. Seventh Street, Indiana, Pennsylvania 19120

343. Screen shots taken 5/9/18 using Pizza Hut mobile app on a Galaxy smartphone while the Pizza Hut mobile app was localized to the Pizza Hut store located at 5675 Rising Sun Avenue, Philadelphia, Pennsylvania 19120

344. Screen shots taken 5/9/18 using Pizza Hut mobile app on a Galaxy smartphone while the Pizza Hut mobile app was localized to the Pizza Hut store located at 3137 Erie Boulevard, Syracuse, New York 13214

345. Screen shots taken 5/18/18 using Pizza Hut mobile app on a Galaxy smartphone while the Pizza Hut mobile app was localized to the Pizza Hut store located at 400a N. Sepulveda Boulevard, Manhattan Beach, California 90266

346. Screen shots taken 5/18/18 using Pizza Hut mobile app on a Galaxy smartphone while the Pizza Hut mobile app was localized to the Pizza Hut store located at 25 Main Street, Westbrook, Maine 04092

347. Excerpt from the Modern Dictionary of Electronics by Rudolf Graf

348. “Ecommerce Services Agreement” between Pizza Hut and QuikOrder, Inc., dated 8/14/02, produced by Pizza Hut in this action

349. “Statement of Work” agreement between Yum, Inc./Pizza Hut, Inc. and National Systems Corp., dated 6/1/08, produced by Pizza Hut in this action

350. Article entitled “Tracker Search for Order – Track Your Order With The Domino’s Tracker,” https://www.dominos.com/en/pages/tracker/#/track/order/.

351. Article entitled”Of Course You Can Track Domino’s Pizza On Your Smartwatch Now,” https://gizmodo.com/of-course-you-can-track-dominos-pizza-on-your-smartwatch=1658323565.

352. Excerpts from the Declaration of Dr. Don Turnbull in CBM2015-00081, Petition Exhibit 1002

353. Article entitled “Papa John’s Creative Approach To Out-of-Stocks,” dated 10/9/08


https://www.dominos.com/en/pages/tracker/#/track/order/

https://gizmodo.com/of-course-you-can-track-dominos-pizza-on-your-smartwatch=1658323565

https://gizmodo.com/of-course-you-can-track-dominos-pizza-on-your-smartwatch=1658323565

-21-


354. A thumb drive containing true and correct electronic copies of exhibits to the QuikOrder Infringement Report (which include, for example, videos, screen capture videos, photographs, voluminous documents and large files) in a zip file named “Malek Report Exhibits.” The same exhibits were cited in Dr. Malek’s expert infringement report concerning infringement by Pizza Hut. The file names of the electronic copies of exhibits on the thumb drive in the “Malek Report Exhibits” zip file correspond to the exhibit numbers cited in the QuikOrder Infringement Report (e.g., 46, 47, 48, etc.). The electronic copies of exhibits on the thumb drive do not include hard copy source code printouts cited and discussed in the QuikOrder Infringement Report. Additional exhibits are on the thumb drive as described below.

355. Screen capture video of the usage of the Pizza Hut mobile app on a Samsung Galaxy S7 Edge on the thumb drive submitted under seal as Exhibit 2 with the file name “Exh 2(A)”. Exhibit 2(A) is discussed in the concurrently filed declarations of Dr. Malek and Michel Cardinal in support of Ameranth’s Opposition to the MSJ.

356. Screen capture video of the usage of the Pizza Hut mobile app on an iPhone 4S on the thumb drive submitted under seal as Exhibit 2 with the file name “Exh 2(B)”. Exhibit 2(B) is discussed in the concurrently filed declarations of Dr. Malek and Mr. Cardinal in support of Ameranth’s Opposition to the MSJ.

357. Screen shots of the usage of the Pizza Hut website, mobile site and mobile apps on different smartphones on the thumb drive submitted under seal as Exhibit 2 with the file name “Exh 2(C)”. Exhibit 2(C) is discussed in the concurrently filed declarations of Dr. Malek and Mr. Cardinal in support of Ameranth’s Opposition to the MSJ.

358. Screen capture video of the usage of the Pizza Hut mobile app on a Samsung Galaxy S9 on the thumb drive submitted under seal as Exhibit 2 with the file name “Exh 2(D)”. Exhibit 2(D) is discussed in the concurrently filed declarations of Dr. Malek and Mr. Cardinal in support of Ameranth’s Opposition to the MSJ.

359. Excerpts from the deposition transcript of the 4/23/18 deposition of Dr. Malek.

360. Excerpts from the deposition transcript of the 4/25/18 deposition of Dr. Malek

361. Excerpts from the deposition transcript of the 3/6/18 deposition of QuikOrder’s CTO, Marc Asher, as a Rule 30(b)(6) witness on behalf of QuikOrder

362. Excerpts from the deposition transcript of the 3/21/18 deposition of Pizza Hut’s technical Rule 30(b)(6) witness, Ryan Holomshek, on behalf of Pizza Hut

363. Excerpts from the deposition transcript of the 5/22/18 video-conference deposition of one of Pizza Hut’s and QuikOrder’s experts, Steven R. Kursh


-22-


364. Excerpts from the deposition transcript of the 5/30/18 deposition of one of Ameranth’s experts, Dr. Michael I. Shamos

365. Excerpts from one of Pizza Hut’s and QuikOrder’s experts’, Dr. Kursh, expert report “Regarding Noninfringement of U.S. Patent No. 8,146,077” and dated 5/4/18

366. Excerpts from one of Pizza Hut’s and QuikOrder’s experts’, Dr. Kursh, expert report “Regarding Invalidity of U.S. Patent No. 8,146,077” and dated 3/26/18

367. Document produced by Pizza Hut in this action titled, “Pizza Hut Mobile Apps – Users Overview Jan. 1, 2013- Dec. 31, 2013,” with bates no. PH0185221

368. Document produced by Pizza Hut in this action titled, “WBR Report” with bates nos. PH0177920-177924

369. Document produced by Pizza Hut in this action titled “Delivery Tracker 2.0 / DD Replacement Architecture” with bates nos. PH0193066-193067

370. Document produced by Pizza Hut in this action titled, “New Order Status Page,” with bates no. PH0193068

371. Document produced by Pizza Hut in this action titled, “Project – Tracker Re-architecture Home,” with bates nos. PH0193069-193070

372. Excerpts from the deposition transcript of the 10/25/17 deposition of one of Ameranth’s experts, Dr. Michael I. Shamos

373. E-mails produced by third party Chaotic Moon, one of Pizza Hut’s mobile app developers, in this action with bates no. 2NDCHAOTICMOONPRODUCTION000013

374. Document produced by Pizza Hut in this action titled “QuikOrder External API Implementation Version 2.1.14” with bates nos. PH009074 - 9194

375. Document produced by QuikOrder in this action titled, “QuikOrder External API Implementation Version 2.1.33” with bates nos. QO 267842 - 267938

376. Document produced by Pizza Hut in this action titled, “Statement of Work #C094318” with bates nos. PH012879 - 12884

377. Document produced by Pizza Hut in this action titled, “QuikOrder, Inc. Online and Mobile Ordering Solutions” with bates nos. QO 275982 - 276014

378. “Memorandum Opinion and Order” in Ameranth, Inc. v. Menusoft Systems Corp., et al., (Civil Action No. 2-07-CV-271, E.D. TX) dated 04/21/2010


-23-


379. Reporter’s Transcript of Proceedings for the 3/23/18 Motion Hearing and Pretrial Conference in the IPDEV Co. v. Ameranth, Inc. case (Case No. 14CV1303-DMS) (“IPDEV v Ameranth”)

380. Applicants’ 5/28/08 Reply and Amendment Under 37 C.F.R. 1.111 in U.S. Patent Application No. 11/112,990

381. Screen shot of the Google Play app store download page for the Pizza Hut mobile app printed on 7/6/18

382. Screen shot of the Apple iTunes app store page for the Pizza Hut mobile app printed on 7/6/18

383. Printout and screen shots from App Annie for the Pizza Hut mobile app version history for the iOS mobile app. Exhibit 28 is discussed in the concurrently filed declarations of Dr. Malek and Mr. Cardinal in support of Ameranth’s Opposition to the MSJ

384. Printout and screen shots from App Annie for the Pizza Hut mobile app version history for the Android mobile app. Exhibit 29 is discussed in the concurrently filed declarations of Dr. Malek and Mr. Cardinal in support of Ameranth’s Opposition to the MSJ

385. Screen shots of a Samsung Galaxy S9 smartphone that has the Pizza Hut Android mobile app installed showing Pizza Hut mobile app data storage on the phone. Exhibit 30 is discussed in the concurrently filed declarations of Dr. Malek and Mr. Cardinal in support of Ameranth’s Opposition to the MSJ

386. Pizza Hut’s and QuikOrder’s First Supplemental Responses to Ameranth’s First Set of Requests for Admission Regarding Authenticity of Documents dated and served in this case on 5/24/18

387. Ameranth’s Responses to Defendant Starbucks Corporation’s First Set of Request for Admissions (Nos. 1-2) dated and served on all defendants’ counsel in this case on 3/15/18

388. Excerpts from the true and correct copy of the transcript of the Deposition Of Benjamin F. Goldberg, Ph.D., dated 5/29/18

389. A screenshot from Fiddler, an internet data capture tool which captures data transmitting between mobile apps, websites, back end servers, and computers over the internet or other networks. The screenshot shows a device running the Papa John’s mobile app on an iPhone X in communication with the Papa John’s back end servers over the internet. This exhibit is further described in paragraph 9 of the Declaration of Michel Cardinal submitted herewith

390. Second Chaotic Moon Production (2ND

CHAOTICMOONPRODUCTION000521-522)

391. Instructional website page regarding how to use QuikOrder website, Bates no. AMER2018000006505

392. Workflows & Wireframes document; project iPhone App v2.0/Android v1.0; Version 1.3; Bates nos. QO 000148 – 265


-24-


393. “Statement of Work” document with Bates nos. QO 000266 – 276

394. “QuikOrder External API Implementation” document with Bates nos. QO 000277 – 1309

395. Workflows & Wireframes, Project: Just Go With it Sweepstakes, Version 1.1; QO 017715 – 17724

396. “Content Document” produced by QuikOrder with Bates nos. QO 019981 – 20342

397. “Pizzahut.com Optimization” document produced by QuikOrder with Bates nos. QO 000071 – 134

398. “Workflows & Wireframes” document produced by QuikOrder with Bates nos. QO 020680 – 20754

399. “Pizza Hut, Inc. RIS Restaurant Automation Development” document produced by QuikOrder with Bates nos. QO 022837 – 22844

400. “Pizza Hut, Inc. RIS Restaurant Automation Development” document produced by QuikOrder with Bates nos. QO 022881 – 22893

401.

“Statement of Work” produced by QuikOrder with Bates nos. QO 018437 – 18440

402.

“Coupon Code Primer” document produced by QuikOrder with Bates nos. QO 001442 – 1447

403.

“WIREFRAMES” document produced by QuikOrder with Bates nos. QO 022554 – 22643

404.

“Special Setup – Pizza Setup” document produced by QuikOrder with Bates nos. QO 001411 – 1418

405.

“QuikOrder Store Setup Guide” produced by QuikOrder with Bates nos. QO 001542 – 1593

406.

“Pizza Hut Gateway Authentication” document produced by QuikOrder with Bates nos. QO 018172 – 18177

407.

Excel spreadsheet titled, “Pizza Hut, Project: Site Optimization,” dated 8/11/10, produced by QuikOrder with Bates nos. QO 022109 – 22118

408.

“Menu Setup Changes” document produced by QuikOrder with Bates nos. QO 001339 – 1346

409.

Franchise Disclosure Documents produced by Pizza Hut with Bates nos. PH005186 – 5869

410.

“Statement of Work” produced by Pizza Hut with Bates nos. PH005936 – 5972


-25-


411.

“Pizza Hut API Development Requirements Document” produced by Pizza Hut with Bates nos. PH006343 – 6361

412.

“QUIKORDER 2009 Infrastructure Redesign” document produced by Pizza Hut with Bates nos. PH006362

413.

Flow charts titled “Chicago Data Center – PHI Production Environment,” created: 6/7/13, modified: 7/1/13, produced by QuikOrder with Bates nos. QO 052267 – 52269

414.

“QuikOrder External API Implementation” document produced by Pizza Hut with Bates nos. PH009074 – 9194

415.

“Frequently Asked Questions For Online Ordering and TMS®/Call Center” document produced by Pizza Hut with Bates nos. PH010669 – 10694

416.

“High Delivery Time Dashboard Report” document produced by Pizza Hut with Bates nos. PH010750 – 10755

417.

“QuikOrder regarding setting up the nationally advertised P’Zolos” produced by Pizza Hut with Bates nos. PH012152 – 12172

418.

“Intelligent Up-sell” document produced by Pizza Hut with Bates nos. PH012176 – 12180

419.

“Special Setup – Pizza Setup” document produced by QuikOrder with Bates nos. QO 001411 – 1418

420.

“Printable Offers” document produced by QuikOrder with Bates nos. QO 001432 – 1436

421.

“Administrative User Document” produced by QuikOrder with Bates nos. QO 052103 – 52128

422.

“QuikOrder Administration User Manual” produced by QuikOrder with Bates nos. QO 052129 – 52209

423.

“Category Selector Changes” document produced by QuikOrder with Bates nos. QO 154421 - 154427

424.


425.

“PH Messaging Framework (Deep Dish) -> End-To-End Data Flow” document produced by QuikOrder with Bates no. QO 156100

426.

“Technical Specification Details” document with Bates nos. QO 039064 – 39067

427.

“QuikOrder Model-View-Control Code Base” document produced by QuikOrder with Bates no. QO 018256

428.

Pizza Hut website printout produced with Bates no. AMER2018000006614


-26-


429.


430.


431.


432.

LinkedIn profile for Eric Bermont, Executive Vice President of QuikOrder Inc. produced with Bates nos.

AMER2018000006618 – 6619

433.

Pizza Hut Facebook page printout produced with Bates no. AMER2018000006620 – 6621

434.

Pizza Hut website printout produced with Bates nos. AMER2018000006622 – 6624

435.

Google Play webpage printout for Pizza Hut mobile app produced with Bates no. AMER2018000006645

436.

iTunes webpage printout for Pizza Hut mobile app produced with Bates no. AMER2018000006646

437.

Microsoft Store webpage printout for Pizza Hut mobile app produced with Bates no. AMER2018000006647

438.

PRJ# 1212 2012 Redesign” document produced by QuikOrder with Bates nos. QO 152443 – 152526

439.

Blog.PizzaHut.com printout produced with Bates nos. AMER2018000006648 – 6650

440.


441.


442.


443.

LinkedIn profile printout for Christopher Duran, Senior Business Analyst / Project Manager at QuikOrder produced with Bates nos. AMER2018000006685 – 6687

444.

LinkedIn profile printout for Jeff Loukas, Director: Digital Delivery and Innovation Pizza Hut produced with Bates nos. AMER2018000006688 – 6691

445.

Franchise.PizzaHut.com website printout produced with Bates nos. AMER2018000006695 – 6697


-27-


446.

Franchise.PizzaHut.com website printout produced with Bates nos. AMER2018000006698 – 6700

447.

LinkedIn profile for Jeremiah Jacobson, PHP Developer at QuikOrder produced with Bates nos. AMER2018000006727 – 6730

448.

LinkedIn profile for Alexis Gonzalez, Software Developer at QuikOrder produced with Bates nos. AMER2018000006731 – 6735

449.

LinkedIn profile for Chris Dziegielewski, Senior Developer at QuikOrder produced with Bates nos. AMER2018000006736 – 6738

450.

LinkedIn profile for Mary Scumaci, Sr. UI Applications Design at QuikOrder produced with Bates nos. AMER2018000006739 – 6744

451.

QuikOrder UX & Design Lead posting printout produced with Bates no. AMER2018000006773

452.

LinkedIn profile for Kaunish Patel, VP Development at QuikOrder produced with Bates nos. AMER2018000006774 – 6777

453.

staging3.quikorder.com webpage printout produced with Bates nos. AMER2018000006778 – 6780

454.

QuikOrder website printout produced with Bates no. AMER2018000006781

455.

LinkedIn profile for Sean Reddy, Android Developer at QuikOrder produced with Bates nos. AMER2018000006786 – 6789

456.

quikorder.com website printout produced with Bates nos. AMER2018000006942 – 6956

457.

demo.quikorder.com website printout produced with Bates no. AMER2018000006957

458.

pizzainn.quikorder.com website printout produced with Bates no. AMER2018000006958

459.

caseys.quikorder.com website printout produced with Bates nos. AMER2018000006959

460.

godfathers.quikorder.net website printout produced with Bates no. AMER2018000006960

461.

nationalsystems.com/online-ordering.html website printout produced with Bates nos. AMER2018000006961 – 6962

462.

staging3.quikorder.com website printout produced with Bates no. AMER2018000006966

463.

“QO API BETA” document produced by QuikOrder with Bates nos. QO 261570 – 261818

464.



-28-


465.


466.

Source code printouts produced by Pizza Hut with Bates nos. PH007116 - PH007132

467.

Source code printouts produced by Pizza Hut with Bates nos. PH012913‐ PH013055

468.

Source code printouts produced by QuikOrder with Bates nos. QO262118‐ QO262429

469.

“AMENDED AND RESTATED STATEMENT OF WORK” produced by QuikOrder with Bates nos. QO 262025 – 262066

470.

“Amended and Restated Online Order Agreement” produced by QuikOrder with Bates nos. QO 262532 – 262556

471. “Frequently Asked Questions For Online Ordering and TMS®/Call Center” document produced by QuikOrder with Bates nos. QO 267567 – 267591

472. “New Pizza Hut Website” document produced by QuikOrder with Bates nos. QO 267686 – 267703

473. “Setting up SUS Stores for Online Ordering and Call Center” document produced by QuikOrder with Bates nos. QO 267741 – 267745

474. Flow charts – Chicago and Dallas Call Centers, produced by QuikOrder with Bates no. QO 267746

475. “API Examples” document produced by QuikOrder with Bates nos. QO 267747 – 267749

476. “CMS Database Architecture” document produced by QuikOrder with Bates no. QO 267752

477. Document titled, “How to Shift Website Traffic between Chicago and Dallas,” produced by QuikOrder with Bates nos. QO 267754 – 267756

478. “Architecture Diagrams” produced by QuikOrder with Bates nos. QO 267817 – 267819

479. “V3 API Calls” document produced by QuikOrder with Bates no. QO 267820

480. QuikOrder/Pizza Hut Akamai Origin Failover Flow Chart, Carryout and Delivery Flow Charts, Order Flow and Network Flow Diagrams, produced by QuikOrder with Bates nos. QO 267833 – 267841

481. “QuikOrder External API” document produced by QuikOrder with Bates nos. QO 267842 – 267938


-29-


482. QuikOrder and Pizza Hut Workflow and Order Flow Diagrams, produced by QuikOrder with Bates nos. QO 267940- 267946

483. “PizzaHut.com Infrastructure” document produced by QuikOrder with Bates nos. QO 267947 – 267967

484. QuikOrder/Pizza Hut Top-Level Network Level Data Flow Diagrams and Order Flow Diagrams, produced by QuikOrder with Bates nos. QO 267974 – 267978

485. “Control Internet Ordering via SUS” document produced by Pizza Hut with Bates no. PH016399

486. “Digital Team Home Page” document produced by Pizza Hut with Bates nos. PH016554 – 17097

487. “Digital Operations Current State” document produced by Pizza Hut with Bates nos. PH017098 – 17215

488. “Project – API Layer Home” document produced by Pizza Hut with Bates nos. PH017220 – 17253

489. “ARL SUS Restaurants Alerts” document produced by Pizza Hut with Bates nos. PH0175612 – 175672

490. “SUS Administration” document produced by Pizza Hut with Bates nos. PH 175721 – 175725

491. “Amended and Restated Information Technology Master Services Agreement” and “Amended and Restated Statement of Work” produced by QuikOrder with Bates nos. QO 261065 – 262066

492. “Enhancement for QO Station Stores” document produced by QuikOrder with Bates nos. QO 267673 – 267677

493. “System Feature Overview” document produced by QuikOrder with Bates nos. QO 275271 - QO 275291

494. “QuikOrder configuration after PH routers moved to separate segment off of ASA,” by QuikOrder with Bates no. QO 267945

495. “Statement of Work” document produced by QuikOrder with Bates nos. QO 262080 - QO 262115

496. Diagram produced by QuikOrder with Bates no. QO 275264

497. “Network Services Environment” document produced by QuikOrder with Bates no. QO 275083

498. Flow charts related to Call Center, produced by Pizza Hut with Bates nos. PH0183285 – 183290

499. Google Analytics reports produced by Pizza Hut with Bates nos. PH0183441- 185673, 185802 - 191716


-30-


500. “High-Level Data Flow Down Load File from MMS” document produced by Pizza Hut with Bates no. PH0191996

501. “MMS Menu Extract Output File Specifications” document produced by Pizza Hut with Bates nos. PH0191997 – 192019

502. “Pizza Hut Menu Management System Assessment” document produced by Pizza Hut with Bates nos. PH0192020 – 192054

503. “Pizza Hut MMS Application Deployment Document” produced by Pizza Hut with Bates nos. PH0192055 – 192072

504. “Quick Reference Guide” and “Steps to Install MMS in a new user’s laptop” documents produced by Pizza Hut with Bates nos. PH0192075 – 192080

505. “Pizza Hut Web Menu Management System” document produced by Pizza Hut with Bates nos. PH0192081 – 192150

506. “Big Flavor Dipper” document produced by QuikOrder with Bates nos. QO 269985 – 269989

507. Screenshots of Test Order for pizza, produced by QuikOrder with Bates nos. QO 269996 – 269998

508. Screenshots of Test Order of pizza and various promotions, produced by QuikOrder with Bates nos. QO 270000 – 270042

509. Screen shots originally produced by QuikOrder with Bates nos. QO 275085 – 275091 (and re-produced with Bates nos. QO 276240 – 276246)








-31-


516. Screen shots originally produced by QuikOrder with Bates nos. QO 275142 – 275203, QO 275530 – 275534 (and re-produced with Bates nos. QO 276297 – 276358, QO 276685 – 276689)

517. Screen shots produced by Pizza Hut with Bates nos. PH0192153 – 192174, 192177 – 192249

518. Screen shots produced by Pizza Hut with Bates nos. PH0192175 – 192176

519. Flow chart related to Call Center, produced by Pizza Hut with Bates no. PH0183287

520. “QuikOrder, Inc. Online and Mobile Ordering Solutions” document produced by QuikOrder with Bates nos. QO 275982 – 276014

521. “Franchise Disclosure Document” produced by Pizza Hut with Bates nos. PH015102 – 15759

522. “Franchise Disclosure Document” produced by Pizza Hut with Bates nos. PH015760 – 16396

523. “National Systems Corp/QuikOrder Inc.” document produced by QuikOrder with Bates nos. QO 275666 – 275707

524. pizzahut.com website printout produced with Bates no. AMER2018000007669

525. Native CSV file produced by Pizza Hut with Bates no. PH016397


527. Native Excel file produced by Pizza Hut with Bates no. PH017324

528. Native Excel file produced by QuikOrder with Bates no. QO 269980



531. “Project – Loyalty – Phase 2” document produced by Pizza Hut with Bates nos. PH017430 – 17477


533. “PHP Cache Interface Guide” produced by QuikOrder with Bates nos. QO 267758 – 267816

534. “Project – API Layer Home” document produced by Pizza Hut with Bates nos. PH017220 – 17253

535. “Digital Products: Bottom of Funnel, 3rd

Party, Payments Home” document produced by Pizza Hut with Bates nos. PH016459 – 16478

536. Screen shots produced by Pizza Hut with Bates nos. PH0192335 – 192344


-32-


537. pizzahut.com website printout produced with Bates no. AMER2018000007670

538. “BOH Help Manual,” produced by Pizza Hut with Bates nos. PH 16400 – 16406

539. “QuikOrder Guide,” produced by Pizza Hut with Bates nos. PH 16407 – 16410

540. Q4 2017 update and planning document, produced by Pizza Hut with Bates nos. PH 16479 – 16553

541. Franchise documents from 2012 to 2016, produced by Pizza Hut with Bates nos. PH013066 – PH016372

542. Various Pizza Hut PowerPoint presentations, agreements and Statements of Work, produced by Pizza Hut with Bates nos. PH0178007 - 185673

543. Yum Statement of Work, Statement of Work for Live Services for Live Agent Services, Live Ops Statements of Work, Addendums and Amendments; Online Orders and Sales spreadsheets, Analytics Reports and Historical data, and Audience Lifetime Value Reports, produced by Pizza Hut with Bates nos. PH0185674 – PH0191716

544. Documents and e-mails related to training on TMSCC Call Center System, produced by Pizza Hut with Bates nos. PH0191717 – PH0191989

545. Excel spreadsheets containing Financial, sales and product data, produced by Pizza Hut with Bates nos. PH0192151 – PH0192152

546. Source code produced by Pizza Hut with Bates nos. PH0192250 – PH0192344

547. Source code produced by Pizza Hut with Bates nos.PH007072 – PH007193

548. E-mails regarding Code Release Notification, 2017 Digital Metrics Reports detailed Analytics, PowerPoint presentations regarding 2017-2018 Ecommerce Analytics, and 2016 State of Digital Business, produced by Pizza Hut with Bates nos. PH0175962 – PH0178006

549. Active User and Ecommerce Overview Website Data Reports and corresponding Excel spreadsheets, sampled from February 2018, produced by QuikOrder with Bates nos. QO 267982 - QO 268031

550. National Systems Consolidates Profit & Loss Reports from 2010-2017, produced by QuikOrder with Bates nos. QO268032 – QO268039

551. National Systems Consolidates group agreements and annual reports; various QuikOrder Online Order Agreements, produced by QuikOrder with Bates nos. QO268040 – QO269953


-33-


552. Source code produced by QuikOrder with Bates nos. CDREV00006_0001 – CDREV000324_0009



555. Source code produced by QuikOrder with Bates nos. QO 052055 – QO 052074


557. Financial statements produced by QuikOrder with Bates nos. QO 268032 – 268039

558. Annual reports produced by QuikOrder with Bates nos. QO 269616 – 269688

559. “Statement of Work” produced by QuikOrder with Bates nos. QO 261888 – 261924

560. “Online Order Agreement Pizza Hut Franchisees” produced by QuikOrder with Bates nos. QO 261925 – 261940

561. “License Agreement” produced by QuikOrder with Bates nos. QO 262067 – 262073

562. Native file produced by QuikOrder with Bates no. QO 275082




566. “V3 Analysis & Recommendations” document produced by QuikOrder with Bates nos. QO 275962 – 275981

567. “National Systems Corp/QuikOrder Inc.” document produced by QuikOrder with Bates nos. QO 275666 – 275707

568. “Pizza Hut Online Store Count” document produced by QuikOrder with Bates no. QO 275081


570. “Business Plan for QuikOrder” produced by QuikOrder with Bates nos. QO 275196 – 275204

571. “State of the Digital Business” document produced by Pizza Hut with Bates nos. PH0177786 – 177831

572. “Ecommerce metrics” document produced by Pizza Hut with Bates nos. PH0177511 – 177546


-34-


573. “Ecommerce Metrics” document produced by Pizza Hut with Bates nos. PH0177614 – 177653



576. Financial statements produced by Pizza Hut with Bates nos. PH0183307 – 183354



579. “Amended and Restated Statement of Work” and “Amended and Restated Information Technology Master Services Agreement” produced by Pizza Hut with Bates nos. PH0182995 – 183096

580. “Digital Dominance” document produced by Pizza Hut with Bates nos. PH0178125 – 178139

581. “Baron Concors” document produced by Pizza Hut with Bates nos. PH0178715 – 178742




585. “Growth Strategy” document produced by Pizza Hut with Bates nos. PH0182027 – 182132

586. Agreements and statements of work produced by QuikOrder with Bates nos. QO 261822 – 261957

587. Amendment to statement of work produced by QuikOrder with Bates nos. QO 261958 – 261964

588. Amended and Restated Online Order Agreements produced by QuikOrder with Bates nos. QO 262532 – 265347

589. “QuikOrder Store Active/Holiday Setup Utility,” produced by QuikOrder with Bates nos. QO 267592 – 267595

590. “Non-SUS Pizza/Topping/Side Item Copy Utility,” and “Online Ordering Copy Utility,” produced by QuikOrder with Bates nos. QO 267678 – 267685

591. Native files produced by QuikOrder with Bates nos. QO 266197 – 266230


-35-


592. Google Analytics reports produced by QuikOrder with Bates nos. QO 267982- 268031, 274868 - 275081

593. Agreements produced by QuikOrder with Bates nos. QO 270425 - 273378

594. Amended and Restated Online Order Agreements produced by QuikOrder with Bates nos. QO 272793 – 273378

595. Statements of work produced by QuikOrder with Bates nos. QO 273379 – 273627, 273694 - 273707

596. Agreements produced by QuikOrder with Bates nos. QO 273708 – 274867

597. Agreements and statements of work produced by Pizza Hut with Bates nos. PH012687 – 12868

598. Agreements and statements of work produced by Pizza Hut with Bates nos. PH012869 – 12912

599. Franchise disclosure documents produced by Pizza Hut with Bates nos. PH013066 – 13749



602. Franchise disclosure documents produced by Pizza Hut with Bates nos. PH0182286 - 182994

603. "Daily Digital Metrics Reports" produced by Pizza Hut with Bates nos. PH0177139 – 177414, 177914 - 177916

604. “Ecommerce Metrics” documents produced by Pizza Hut with Bates nos. PH0177415 – 177785

605. “State of the Digital Business” documents produced by Pizza Hut with Bates nos. P0177786 – 177913

606. “WBR Reports” produced by Pizza Hut with Bates nos. P0177917 – 178006

607. Agreements and statements of work produced by Pizza Hut with Bates nos. PH0183355 – 183440, 185676 - 185801

608. Source code printouts produced by QuikOrder with Bates nos. QO 276359 – 276684

609. Domino’s screenshots, exhibit 52 to Infringement Contentions, served on 4/1/13


44



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

CERTIFICATE OF SERVICE

I hereby certify that on July 6, 2018, I electronically transmitted the

attached document to defendants Pizza Hut, QuikOrder, Domino’s and Papa

John’s’ counsel of record via the Court’s ECF system.

By: /s/ William J. Caldarelli

William J. Caldarelli
