`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`
`
`RPX Corporation,
`Petitioner,
`
`v.
`
`Macrosolve, Inc.,
`Patent Owner
`
`———————
`
`
`
`PETITION FOR INTER PARTES REVIEW
`
`OF
`
`U.S. PATENT NO. 7,822,816
`
`
`
`
`
`
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,822,816
`
`TABLE OF CONTENTS
`
`PETITIONER’S EXHIBIT LIST ............................................................................ iv 
`
`I.  Mandatory Notices ............................................................................................. 1 
`
`A.  Real Party-in-Interest ................................................................................. 1 
`
`B.  Related Matters .......................................................................................... 1 
`
`C.  Lead and Back-up Counsel and Service Information ............................... 4 
`
`II.  Grounds for Standing ......................................................................................... 5 
`
`III.  Relief Requested ................................................................................................ 5 
`
`IV.  Reasons for the Requested Relief ...................................................................... 5 
`
`A.  Summary of the ’816 Patent ...................................................................... 5 
`
`B.  Prosecution History ................................................................................... 8 
`
`C.  Summary of the Petition .......................................................................... 10 
`
`V. 
`
`Identification of Challenges and Claim Construction ..................................... 10 
`
`A.  Challenged Claims ................................................................................... 10 
`
`B.  Claim Construction .................................................................................. 10 
`
`C.  Statutory Grounds for Challenges ........................................................... 11 
`
`D.  Multiple Independent Challenges are Not Cumulative or Duplicative ... 12 
`
`E. 
`
`Identification of How the Construed Claims Are Unpatentable ............. 14 
`
`1.  Challenge #1: Claims 1-14 are rendered obvious under 35
`U.S.C. § 103 by Dodgen in view of Sancho ................................... 14 
`
`2.  Challenge #2: Claims 1 and 5-7 are rendered obvious under 35
`U.S.C. § 103 by Richards in view of Porter .................................... 40 
`
`ii
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,822,816
`
`3.  Challenge #3: Claims 2-4, 8-11, & 13-14 are obvious under 35
`U.S.C. § 103 over Richards in view of Porter and further in
`view of Desai ................................................................................... 47 
`
`4.  Challenge #4: Claim 12 is rendered obvious under 35 U.S.C.
`§ 103 by Richards in view of Porter and Desai, and further in
`view of Jeter .................................................................................... 59 
`
`VI.  Conclusion ....................................................................................................... 60 
`
`
`
`
`
`iii
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,822,816
`
`PETITIONER’S EXHIBIT LIST
`
`November 11, 2013
`
`RPX-1001
`
`U.S. Patent No. 7,822,816 to Payne
`
`RPX-1002
`
`Prosecution File History of U.S. 7,822,816
`
`RPX-1003
`
`File History of Ex Parte Reexamination of U.S. 7822816,
`
`Control No. 90/012,829.
`
`RPX-1004
`
`Declaration of Dr. A.L. Narasimha Reddy Under 37 C.F.R.
`
`§ 1.68
`
`RPX-1005
`
`Curriculum Vitae of Dr. A.L. Narasimha Reddy
`
`RPX-1006
`
`Macrosolve’s Opening Markman Brief, Macrosolve, Inc. v.
`
`Antenna Software, Inc., no. 6:11-cv-287-mhs-jdl, docket no.
`
`433 (E.D. Tex. Aug. 16, 2013)
`
`RPX-1007
`
`Macrosolve’s Reply Markman Brief, Macrosolve, Inc. v.
`
`Antenna Software, Inc., no. 6:11-cv-287-mhs-jdl, docket no.
`
`441 (E.D. Tex. Sept. 13, 2013)
`
`RPX-1008
`
`Merriam-Webster Dictionary, available at www.merriam-
`
`webster.com (selected entries)
`
`iv
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`Petition for Inter Partes Review of U.S. Patent No. 7,822,816
`
`RPX-1009
`
`THE FACTS ON FILE DICTIONARY OF COMPUTER SCIENCE, 4th
`
`ed., edited by Valerie Illingworth &John Daintith (Market
`
`House Books Ltd. 2001) (selected pages)
`
`RPX-1010
`
`MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL
`
`TERMS, 4th ed. (selected pages)
`
`RPX-1011
`
`U.S. Patent No. 6,453,329 to Dodgen
`
`RPX-1012
`
`Debra Sancho & Ivan Phillips, THE OFFICIAL PENDRAGON
`
`FORMS FOR PALMOS STARTER KIT (2000)
`
`RPX-1013
`
`U.S. Copyright Office Copyright Registration Record for RPX-
`
`1012
`
`RPX-1014
`
`U.S. Publication No. 2002/0147850 by Richards
`
`RPX-1015
`
`U.S. Patent No. 6,163,811 to Porter
`
`RPX-1016
`
`U.S. Patent No. 6,618,746 to Desai et al.
`
`RPX-1017
`
`WO 00/57976 by Jeter
`
`RPX-1018
`
`James J. Kistler and M. Satyanarayanan, “Disconnected
`
`Operation in the Coda File System,” ACM TRANSACTIONS ON
`
`COMPUTER SYSTEMS, vol. 10, no. 1, pp. 3-25 (Feb. 1992)
`
`
`
`v
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,822,816
`
`I. Mandatory Notices
`
`A. Real Party-in-Interest
`
`The petitioner and real party in interest is RPX Corporation.
`
`B. Related Matters
`
`As of the filing date of this petition and to the best knowledge of the
`
`petitioner, the ’816 Patent is involved in the following litigations in the Federal
`
`District Court for the Eastern District of Texas (indicated by case styling, case
`
`number, and filing date): MacroSolve, Inc. v. Carlson Hotels, Inc. (6-13-cv-00666,
`
`9/12/2013); MacroSolve, Inc. v. Wyndham Hotel Group, LLC (6-13-cv-00675,
`
`9/12/2013); MacroSolve, Inc. v. Five Guys Enterprises, LLC (6-13-cv-00671,
`
`9/12/2013); MacroSolve, Inc. v. Meetup, Inc. (6-13-cv-00674, 9/12/2013);
`
`MacroSolve, Inc. v. Chipotle Mexican Grill, Inc. (6-13-cv-00667, 9/12/2013);
`
`MacroSolve, Inc. v. Comcast Corp. (6-13-cv-00668, 9/12/2013); MacroSolve, Inc.
`
`v. Discover Financial Services, Inc. (6-13-cv-00669, 9/12/2013); MacroSolve, Inc.
`
`v. Home Box Office, Inc. (6-13-cv-00672, 9/12/2013); MacroSolve, Inc. v. Box,
`
`Inc. (6-13-cv-00665, 9/12/2013); MacroSolve, Inc. v. Dropbox, Inc. (6-13-cv-
`
`00670, 9/12/2013); MacroSolve, Inc. v. MediaFire, LLC (6-13-cv-00673,
`
`9/12/2013); MacroSolve, Inc. v. RueLaLa, Inc. (6-13-cv-00206, 2/26/2013);
`
`MacroSolve, Inc. v. Nordstrom, Inc. (6-13-cv-00204, 2/26/2013); MacroSolve, Inc.
`
`v. Pandora Media, Inc. (6-13-cv-00205, 2/26/2013); MacroSolve, Inc. v. Staples,
`
`1
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,822,816
`
`Inc. (6-13-cv-00207, 2/26/2013); MacroSolve, Inc. v. The Kroger Co. (6-13-cv-
`
`00203, 2/25/2013); MacroSolve, Inc. v. Gilt Groupe Holdings, Inc. (6-13-cv-
`
`00201, 2/25/2013); MacroSolve, Inc. v. GameStop Corp. (6-13-cv-00200,
`
`2/25/2013); MacroSolve, Inc. v. Kohl's Department Stores, Inc. (6-13-cv-00202,
`
`2/25/2013); MacroSolve, Inc. v. Fandango, Inc. (6-13-cv-00199, 2/25/2013);
`
`MacroSolve, Inc. v. Costco Wholesale Corp. (6-13-cv-00198, 2/25/2013);
`
`MacroSolve, Inc. v. SuperShuttle International Corp. (6-12-cv-00978,
`
`12/21/2012); MacroSolve, Inc. v. Walgreen Co. (6-12-cv-00975, 12/21/2012);
`
`MacroSolve, Inc. v. Home Depot USA, Inc. (6-12-cv-00976, 12/21/2012);
`
`MacroSolve, Inc. v. CVS Pharmacy, Inc. (6-12-cv-00980, 12/21/2012);
`
`MacroSolve, Inc. v. Skymall, Inc. (6-12-cv-00977, 12/21/2012); MacroSolve, Inc.
`
`v. Dollar Thrifty Automotive Group, Inc. (6-12-cv-00979, 12/21/2012);
`
`MacroSolve, Inc. v. Sears Holdings Management Corp. (6-12-cv-00916,
`
`12/4/2012); MacroSolve, Inc. v. Bed Bath & Beyond, Inc. (6-12-cv-00915,
`
`12/4/2012); MacroSolve, Inc. v. Starwood Hotels & Resorts Worldwide, Inc. (6-12-
`
`cv-00917, 12/4/2012); MacroSolve, Inc. v. Redbox Automated Retail, LLC (6-12-
`
`cv-00744, 10/5/2012); MacroSolve, Inc. v. American Express Co. (6-12-cv-00743,
`
`10/5/2012); MacroSolve, Inc. v. Fareportal, Inc. (6-12-cv-00416, 6/26/2012);
`
`MacroSolve, Inc. v. Target Corp. (6-12-cv-00418, 6/26/2012); MacroSolve, Inc. v.
`
`LQ Management LLC (6-12-cv-00417, 6/26/2012); MacroSolve, Inc. v. Kayak
`
`2
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,822,816
`
`Software Corp. (6-12-cv-00388, 6/19/2012); MacroSolve, Inc. v. Cumulus Media,
`
`Inc. (6-12-cv-00389, 6/19/2012); MacroSolve, Inc. v. JetBlue Airways Corp. (6-12-
`
`cv-00387, 6/19/2012); MacroSolve, Inc. v. JPMorgan Chase & Co. (6-12-cv-
`
`00384, 6/18/2012); MacroSolve, Inc. v. LinkedIn Corp. (6-12-cv-00385,
`
`6/18/2012); MacroSolve, Inc. v. MovieTickets.com, Inc. (6-12-cv-00194,
`
`3/23/2012); MacroSolve, Inc. v. Bank of America Corp. (6-12-cv-00193,
`
`3/23/2012); MacroSolve, Inc. v. AOL Inc. (6-12-cv-00091, 2/27/2012);
`
`MacroSolve, Inc. v. Inter-Continental Hotels Corp. (6-12-cv-00092, 2/27/2012);
`
`MacroSolve, Inc. v. Marriott International, Inc. (6-12-cv-00076, 2/17/2012);
`
`MacroSolve, Inc. v. GEICO Insurance Agency, Inc. (6-12-cv-00074, 2/17/2012);
`
`MacroSolve, Inc. v. Wal-Mart Stores, Inc. (6-12-cv-00047, 1/30/2012);
`
`MacroSolve, Inc. v. Facebook, Inc. (6-12-cv-00044, 1/30/2012); MacroSolve, Inc.
`
`v. Hyatt Corp. (6-12-cv-00045, 1/30/2012); MacroSolve, Inc. v. YELP! INC. (6-12-
`
`cv-00048, 1/30/2012); MacroSolve, Inc. v. newegg(6-12-cv-00046, 1/30/2012);
`
`MacroSolve, Inc. v. Hotels.com, L.P. (6-11-cv-00690, 12/21/2011); MacroSolve,
`
`Inc. v. Priceline.com Inc. (6-11-cv-00691, 12/21/2011); MacroSolve, Inc. v.
`
`Hipmunk, Inc. (6-11-cv-00689, 12/21/2011); MacroSolve, Inc. v. United Air Lines,
`
`Inc. (6-11-cv-00694, 12/21/2011); MacroSolve, Inc. v. Continental Airlines, Inc.
`
`(6-11-cv-00687, 12/21/2011); MacroSolve, Inc. v. American Airlines, Inc. (6-11-
`
`cv-00685, 12/21/2011); MacroSolve, Inc. v. Avis Rent A Car System, LLC (6-11-
`
`3
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,822,816
`
`cv-00686, 12/21/2011); MacroSolve, Inc. v. Travelocity.com LP (6-11-cv-00693,
`
`12/21/2011); MacroSolve, Inc. v. Southwest Airlines Co. (6-11-cv-00692,
`
`12/21/2011); MacroSolve, Inc. v. The Hertz Corp. (6-11-cv-00688, 12/21/2011);
`
`MacroSolve, Inc. v. Whoop, Inc. (6-11-cv-00523, 10/3/2011); MacroSolve, Inc. v.
`
`AT&T Inc. (6-11-cv-00490, 9/15/2011); MacroSolve, Inc. v. Antenna Software,
`
`Inc. (6-11-cv-00287, 6/6/2011); MacroSolve, Inc. v. Canvas Solutions, Inc. (6-11-
`
`cv-00194, 4/18/2011); and MacroSolve, Inc. v. Brazos Technology Corp. (6-11-cv-
`
`00101, 3/4/2011).
`
`The ’816 Patent is also the subject of Ex Parte Reexamination No.
`
`90/012,829 filed April 3, 2013 by GEICO. A non-final Office action rejecting all
`
`claims was mailed in the reexamination on September 13, 2013.
`
`C. Lead and Back-up Counsel and Service Information
`
`Lead Counsel
`David L. McCombs
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`Back-up Counsel
`Thomas B. King
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`Theodore M. Foster
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`
`214-651-5533
`Phone:
`214-200-0853
`Fax:
`
`david.mccombs.ipr@haynesboone.com
`USPTO Reg. No. 32,271
`
`
`949-202-3059
`Phone:
`949-202-3159
`Fax:
`
`ipr.thomas.king@haynesboone.com
`USPTO Reg. No. 69,721
`
`972-739-8649
`Phone:
`972-692-9156
`Fax:
`
`Ipr.theo.foster@haynesboone.com
`USPTO Reg. No. 57,456
`
`4
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,822,816
`
`II. Grounds for Standing
`
`Petitioner certifies that the ’816 Patent is available for inter partes review
`
`and that Petitioner is not barred or estopped from requesting inter partes review
`
`challenging the patent claims on the grounds identified in this petition.
`
`III. Relief Requested
`
`Petitioner asks that the Board review the accompanying prior art and
`
`analysis, institute a trial for inter partes review of claims 1-14 of the ’816 Patent,
`
`and cancel those claims as unpatentable.
`
`IV. Reasons for the Requested Relief
`
`As explained below and in the declaration of RPX’s expert, Dr. Narasimha
`
`Reddy, the concepts described and claimed in the ’816 Patent were not novel. This
`
`petition and Dr. Reddy’s declaration explain where each element is found in the
`
`prior art and why the claims would have been obvious to a person of ordinary skill
`
`in the art when the ’816 Patent was filed.
`
`A. Summary of the ’816 Patent
`
`The ’816 Patent describes a wireless handheld data collection system. The
`
`system uses a questionnaire on a wireless handheld device to prompt a user to
`
`input the desired data. The questions presented can depend on the answers given.
`
`For example, a questionnaire may cause the wireless handheld device to ask the
`
`question “are you a man or a woman?” If the user answers “male,” then the
`
`5
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,822,816
`
`questionnaire would follow up with the set of questions for males, or vice-versa if
`
`the user responds “female.” RPX-1001, 8:52-57.
`
`The ’816 Patent provides an example scenario in which a user designs a
`
`questionnaire by creating a list of questions and response types. The questions and
`
`responses are assigned “tokens.” RPX-1001, 8:32-51. The tokens can function in
`
`a variety of ways, for example (1) providing a “branching” operation (such as the
`
`male-female example above), (2) indicating a logical or mathematical operation, or
`
`(3) referring to a question or answer. RPX-1001, 8:40-56. When the questionnaire
`
`is complete, the questions and tokens are wirelessly transmitted to a handheld
`
`device. RPX-1001, 8:57-64. A user initiates the questionnaire and provides
`
`responses to each question. The responses are stored on the handheld device and
`
`wirelessly transmitted to a server, either immediately or later. RPX-1001, 9:44-60.
`
`The server stores the received data in a database. RPX-1001, 9:61-63.
`
`Fig. 2 illustrates a system used to create a form:
`
`RPX-1001, Fig. 2
`
`6
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,822,816
`
`Fig. 3 illustrates a system used to collect and review information:
`
`Claim 1 is exemplary:
`
`RPX-1001, Fig. 3
`
`1. A method for managing data including the steps of:
`(a) creating a questionnaire comprising a series of questions;
`(b) tokenizing said questionnaire; thereby producing a plurality of
`tokens representing said questionnaire;
`(c) establishing a first wireless modem or wireless LAN network
`connection with a remote computing device;
`(d) transmitting said plurality of tokens to a remote computing
`device via said first wireless modem or wireless LAN network
`connection;
`(e) terminating said first wireless modem or wireless LAN network
`connection with said remote computing device;
`(f) after said first wireless modem or wireless LAN network
`connection is terminated, executing at least a portion of said
`plurality of tokens representing said questionnaire at said remote
`computing device to collect a response from a user;
`
`7
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,822,816
`
`(g) establishing a second wireless modem or wireless LAN
`network connection between said remote computing device and a
`server;
`(h) after said second wireless modem or wireless LAN network
`connection is established, transmitting at least a portion of said
`response from the user to said server via said second wireless
`modem or wireless LAN network connection; and
`(i) storing said transmitted response at said server.
`
`B. Prosecution History
`
`The ’816 Patent issued from U.S. Patent Application No. 10/643,516 filed
`
`on August 19, 2003. The ’816 Patent claims the benefit of U.S. Provisional
`
`Application No. 60/404,491 filed on August 19, 2002.
`
`In a first Office action, the Examiner rejected all of claims 1-11. RPX-1002
`
`at 369. In response the applicants amended claim 1 to recite “tokenizing said
`
`questionnaire for reducing bandwidth requirements….” RPX-1002 at 339.
`
`Applicants argued that in contrast to amended claim 1, the prior art “teaches
`
`tokenizing for the purpose of encrypting survey information.” RPX-1002 at 344.
`
`They also argued that the prior art failed to teach a “loosely networked computer”
`
`because its computers are all “coupled to the Internet.” RPX-1002 at 345.
`
`These arguments were unpersuasive, and the Applicants later removed the
`
`“reducing bandwidth” limitation and provided an affidavit to swear behind the
`
`relevant prior art reference. RPX-1002 at 331-32, 293, & 303-04. After
`
`8
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,822,816
`
`submitting additional supporting evidence, the Examiner withdrew the reference
`
`but entered new rejections based solely or in part on newly cited references. RPX-
`
`1002 at 189. After further Office actions and responses, the applicants eventually
`
`amended the claims to recite “a first wireless modem or wireless LAN network
`
`connection” and a “second wireless modem or wireless LAN network connection.”
`
`RPX-1002 at 95-96. The Examiner then allowed various claims and provided this
`
`statement of reasons for allowance:
`
`The cited prior arts fail to disclose or suggest transmitting said
`plurality of tokens to a remote computing device via said first
`wireless modem or wireless LAN network connection,
`terminating said first wireless modem or wireless LAN network
`connection with said remote computing device, after said first
`wireless modem or wireless LAN network connection is
`terminated, executing at least a portion of said plurality of
`tokens representing said questionnaire at said remote computing
`device to collect a response from a user, establishing a second
`wireless modem or wireless LAN network connection between
`said remote computing device and a server, after said second
`wireless modem or wireless LAN network connection is
`established, transmitting at least a portion of said response from
`the user to said server via said second wireless modem or
`wireless LAN network connection in conjunction with all other
`limitations in the claim.
`
`RPX-1002 at 80-81.
`
`9
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,822,816
`
`C. Summary of the Petition
`
`Communicating via a wireless connection—the apparent focus of the
`
`Examiner’s decision to allow the claims—was already well-known as of the ’816
`
`Patent’s 2002 earliest priority date. Specifically, the prior art shows that wireless
`
`communication was known in the context of transmitting tokenized questionnaires
`
`to handheld devices and receiving back users’ responses. See, e.g., RPX-1011,
`
`Fig. 1; RPX-1014, Fig. 3. Because all of the limitations recited in the ’816 Patent
`
`claims were known, the claims are invalid and should be canceled.
`
`V.
`
`Identification of Challenges and Claim Construction
`
`A. Challenged Claims
`
`Claims 1-14 of the ’816 Patent are challenged in this petition.
`
`B. Claim Construction
`
`This petition analyzes the claims consistent with the broadest reasonable
`
`interpretation in light of the specification. See 37 C.F.R. § 42.100(b).
`
`1.
`
`“questionnaire comprising a series of questions” (all claims): As explained
`
`by Dr. Reddy, one of skill in the art would understand the term “questionnaire
`
`comprising a series of questions” to mean any collection of questions or statements
`
`that call for responses. RPX-1004 at 18-19; RPX-1001 at 8:12-24.
`
`2.
`
`“token” and “tokens” (all claims): As explained in the declaration of Dr.
`
`Reddy, the ’816 Patent uses “token” in a variety of ways. See RPX-1004 at 19-21.
`
`10
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,822,816
`
`One of skill in the art would understand the term “token” to mean a distinguishable
`
`unit of a program, such as an index, an instruction, or a command. A token can
`
`represent something else such as a question, answer, or operation. RPX-1004 at
`
`19-24; RPX-1001 at 8:40-46, 8:60-64, 5:12-17, 12:1-2; RPX-1009 at 3.
`
`3.
`
`“tokenizing said questionnaire” (all claims): As explained in the declaration
`
`of Dr. Reddy, one of skill in the art would understand the term “tokenizing said
`
`questionnaire” to mean causing a part of the questionnaire to be assigned to or
`
`converted into a token. RPX-1004 at 24-28.
`
`4.
`
`“a same wireless modem or wireless LAN network connection” (claim 6):
`
`As explained in the declaration of Dr. Reddy, one of skill in the art would
`
`understand the term “a same wireless modem or wireless LAN network
`
`connection” to mean a connection made using a same wireless communication
`
`equipment. RPX-1004 at 28-29.
`
`C. Statutory Grounds for Challenges
`
`Challenge #1: Claims 1-14 are rendered obvious under 35 U.S.C. § 103 by
`
`Debra Sancho and Ivan Phillips, THE OFFICIAL PENDRAGON FORMS FOR PALMOS
`
`STARTER KIT (“Sancho”) (RPX-1012) in view of U.S. Pat. 6,453,329 to Dodgen
`
`(“Dodgen”) (RPX-1011). Sancho published in on December 1, 1999 and is prior
`
`art under § 102(b). Dodgen was filed on August 8, 2000 and is prior art under §
`
`102(e) by more than two years.
`
`11
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 7,822,816
`
`Challenge #2: Claims 1 and 5-7 are rendered obvious under 35 U.S.C. § 103
`
`by U.S. Pub. No. 2002/0147850 by Richards (“Richards”) (RPX-1014) in view of
`
`U.S. Patent No. 6,163,811 to Porter (“Porter”) (RPX-1015). Richards was filed on
`
`April 5, 2001 and is prior art under § 102(e) by more than a year. Porter issued on
`
`December 19, 2000 and is prior art under § 102(b).
`
`Challenge #3: Claims 2-4, 8-11, and 13-14 are obvious under 35 U.S.C.
`
`§ 103 over Richards in view of Porter and further in view of U.S. Patent No.
`
`6,618,746 to Desai (“Desai”) (RPX-1016). Desai was filed on March 30, 1998 and
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`is prior art under § 102(e) by several years.
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`Challenge #4: Claim 12 is obvious under 35 U.S.C. § 103 over Richards in
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`view of Porter and Desai, and further in view of WIPO Pub. WO 00/57976 by Jeter
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`(RPX-1017). Jeter published on Oct. 5, 2000 and is prior art under § 102(b).
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`D. Multiple Independent Challenges are Not Cumulative or Duplicative
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`Challenge #1 addresses all of claims 1-14. Challenges #2-4 as a group also
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`address all of claims 1-14, but Challenges #2-4 are not cumulative or duplicative of
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`Challenge #1. The distinct Challenges provide fundamentally different teachings
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`to meet certain claim limitations, including for example the limitation of
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`“tokenizing said questionnaire; thereby producing a plurality of tokens
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`representing said questionnaire” (portion [1.2]). As noted above, the meaning of
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`“tokenizing” in the specification includes both assigning tokens to a questionnaire
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`and converting a questionnaire into tokens. See RPX-1001, 8:40-46 & 12:1-2.
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`In Challenge #1, Dodgen teaches “tokenizing” by describing a script
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`language for creating forms with fields, with each field described by one or more
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`token-value pairs. RPX-1011, 5:9-14; RPX-1004 at 36-38. A “meaning token” is
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`inserted into the script. RPX-1011, 15:36-37. Sancho supplements this teaching
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`by describing the automatic assignment of indices to fields on a form and adding
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`script language commands that control the presentation and operation of the form.
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`See, e.g., RPX-1012 at 215;1 RPX-1004 at 38-46. Thus, the description of
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`“tokenizing” in Challenge #1 generally relates to assigning tokens to a
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`questionnaire.
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`In contrast, Challenges #2-4 rely principally on Porter to teach tokenizing,
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`which in Porter refers to “differencing and compression techniques to distribute
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`source files over a network while minimizing the network bandwidth needed.”
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`RPX-1015, Abstract. A “Tokenizer 104 is used to transform source files 110” by
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`“substituting language elements, such as arithmetic operators, relational operators
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`and so forth, with tokens.” RPX-1015, 3:40 & 3:43-45. Thus, the prior art’s
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`description of “tokenizing” in Challenges #2-4 largely focuses on the idea of
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`converting a questionnaire into tokens. That said, Richards describes the use of
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`1 All page references for Sancho are to page numbers indicated by the publication
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`itself, not to the page numbers added for compliance with 37 CFR 42.63(d)(2)(ii).
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`“cascading questions” and “navigation rules” to “direct the user to one or more
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`other follow-up or related questions.” RPX-1014 ¶ 30. These navigation rules are
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`“tokens” assigned to questions that indicate what answers should trigger which
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`follow-up questions. See RPX-1001, 8:51-56.
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`Since the challenges address different aspects of “tokenizing,” they are not
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`cumulative and inter partes review should be instituted on all of Challenges #1-4.
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`E. Identification of How the Construed Claims Are Unpatentable
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`1. Challenge #1: Claims 1-14 are rendered obvious under 35 U.S.C.
`§ 103 by Dodgen in view of Sancho
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`Claims 1-14 of the ’816 Patent are rendered obvious under 35 U.S.C. § 103
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`by Dodgen in view of Sancho. RPX-1004 at 29. Dodgen generally describes
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`gathering a user’s responses to questions using a questionnaire executed on a hand-
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`held computer. For example, Dodgen describes a system allowing a list of
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`questions to be compiled, converted to a script, transmitted to a hand-held
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`computer, and executed on the hand-held computer, after which a user’s responses
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`to the questions are wirelessly transmitted to another computer. RPX-1011, 15:25–
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`16:2. The process described by Dodgen generally parallels the steps recited in
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`claim 1. RPX-1004 at 30. Dodgen illustrates its overall process in a single figure:
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`RPX-1011, Fig. 1.
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`Sancho generally describes a software system for creating, distributing, and
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`running data-gathering applications for hand-held computers. Thus, Sancho
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`provides further description of software and technology that could be used in
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`implementing many of the steps recited in the ’816 Patent claims. For example,
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`Sancho teaches using “HotSync” communication link to transfer programs and
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`data between a computer and a handheld device. RPX-1012 at 6. From Sancho’s
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`description of storing data to be communicated until “the next HotSync data
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`transfer” (RPX-1012 at 24), Sancho teaches that the HotSync communication link
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`is terminated after there is no further data to communicate. Thus, Sancho teaches a
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`“loosely networked” handheld device like that described in the ’816 Patent. Sancho
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`illustrates that the HotSync communication can be performed wirelessly:
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`Wireless Modem
`Connection
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`
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`RPX-1012, Fig. 15-2 (p. 338) (Annotated).
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`One skill in the art would have multiple reasons to combine the teachings of
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`Dodgen and Sancho. It would have been obvious for a person of ordinary skill in
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`the art implementing Dodgen’s system to refer to Sancho because Sancho is
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`specifically directed to individuals “wondering how to move from a pen-and-paper
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`data collection environment to using Palm organizers for a mobile workforce.”
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`RPX-1012 at ix. Sancho provides “tips, techniques, and a wealth of examples” on
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`how to “create forms that are customized for the type of data that you record every
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`day in your job.” Id. Sancho is a guide “to optimize the data entry experience that
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`the handheld user has.” Id. Thus, the intended audience for Sancho’s disclosure is
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`a person implementing a data-gathering system like that described in Dodgen. It
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`would have been obvious for a person of ordinary skill in the art implementing
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`Dodgen’s data-gathering system to also refer to Sancho’s tips, techniques and
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`examples because they explain in detail how to create a data-gathering system such
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`as that outlined by Dodgen. RPX-1004 at 33.
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`Furthermore, it would have been obvious to combine Dodgen and Sancho
`
`because it is merely the use of a known technique to improve a similar method in
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`the same way. Specifically, Dodgen teaches a known method to create handheld
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`forms using a text-based scripting language. RPX-1011, 5:9-14. Sancho teaches
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`an improved technique in which a graphical user interface is employed to design
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`and create a handheld form, including scripts associated with the form. RPX-1012
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`at 215-16. Sancho’s form designer software uses “simple screens” that make it
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`“easy to use” to “create and deploy a Palm application with a minimal
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`development cycle.” RPX-1012 at 6-7. Thus, it would have been obvious to
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`improved Dodgen’s method of designing a form by incorporating Sancho’s
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`technique of a employing graphical user interface. RPX-1004 at 34. The
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`combination would make Dodgen’s system easier to use in the same way that
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`Sancho’s graphical user interface simplifies designing a form. RPX-1004 at 34;
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`see KSR Int’l. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
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`Additionally, it would have been obvious to combine Dodgen and Sancho
`
`because it is merely the combination of known elements according to known
`
`methods to yield predictable results. As shown in the analysis below, all of the
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`limitations of the ’816 patent claims were known in the prior art. Incorporating the
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`ideas of both Dodgen and Sancho would be within the ordinary programming skill
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`of those in the art. Their combination yields a predictable result of an operable
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`system of handheld computers that receive forms and transmit data using
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`intermittent wireless network connections. RPX-1004 at 32-33.
`
`Claim 1
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`[1.0] A method for managing data including the steps of:
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`Dodgen discloses this limitation because it teaches “data storage and
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`transmission methods.” RPX-1011, 1:9; RPX-1004 at 35. Dodgen further teaches
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`“a programming and data management methodology.” RPX-1011, 1:35-37. A
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`data management methodology with storage and transmission methods is an
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`example of “managing data” as in the claim. RPX-1004 at 35.
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`[1.1] (a) creating a questionnaire comprising a series of questions:
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`Dodgen discloses this limitation because it teaches that an “Author makes a
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`list of the questions he would like asked at the remote site.” RPX-1011, 15:30-31;
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`RPX-1004 at 35-36. The list of questions is a “questionnaire.”
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`[1.2] (b) tokenizing said questionnaire; thereby producing a plurality of tokens
`representing said questionnaire:
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`Dodgen discloses this limitation because it teaches that a questionnaire
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`“script consists of token-value pairs.” RPX-1011, 5:12. Dodgen provides the
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`following example showing a question that has been tokenized using multiple
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`token-value pairs:
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`A simple example is a checkbox:
`
`BEGIN FIELD
`
`
`FIELD TYPE=checkbox
`
`
`LABEL=cardio pulmonary arrest
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`END FIELD
`This script specifies that one wishes to create a checkbox and to
`label the checkbox "cardio pulmonary arrest".
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`RPX-1011, 5:44-51. Dodgen also teaches that a list of questions “is converted to a
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`script using either a gui-based authoring tool or a conventional text editor. A
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`distillation apparatus then processes the script, inserting the meaning token,
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`computing and inserting any pre-computed information such as the enable bits
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`described above, and finally archiving the script with a name or database ID based
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`on the meaning token.” RPX-1011, 15:34-40 (emph. added). Thus, Dodgen
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`teaches the “tokenizing” limitation. RPX-1004 at 36-38.
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`Sancho supplements Dodgen’s description because it describes adding script
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`instructions to a form. RPX-1012 at 215-216; RPX-1004 at 38. The script
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`instructions are commands that control the operation of the form, such as which
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`fields are displayed next. RPX-1012 at 215-216; RPX-1004 at 38-39. Adding
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`script commands to a questionnaire is “tokenizing.” RPX-1004 at 38-39.
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`Sancho also describes adding and maintaining indices for each field on a
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`form. RPX-1004 at 40-41. Sancho also describes how script commands can refer
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`to questions and responses using indices. RPX-1012 at 217. The indices are
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`“tokens,” and adding indices is “tokenizing.” RPX-1004 at 40-41. Sancho
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`provides still further descriptions of “tokenizing.” See RPX-1004 at 38-46.
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`[1.3] (c) establishing a first wireless modem or wireless LAN network connection
`with a remote computing device:
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`Dodgen teaches “operating over wireless connections at data rates of 9600
`
`bps (bits per second) or even lower.” RPX-1011, 3:54-57