Tria1s@usptogov
`571 272 7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNIFIED PATENTS INC.
`
`Petitioner
`V
`FALL LINE PATENTS, LLC
`Patent Owner
`
`CASE IPR2018—00043
`
`PATENT 9,454,748
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 9,454,748
`CHALLENGING CLAIMS 16-19 AND 21-22
`
`

`

`IPR2018-00043
`
`U.S. PATENT 9,454,748
`
`TABLE OF CONTENTS
`
`
`I.
`
`11.
`
`III.
`
`IV.
`
`V.
`
`Introduction ........................................................................................................... 1
`
`Background of the Case ......................................................................................... 1
`
`The ‘748 Patent ...................................................................................................... 2
`
`a. Background .................................................................................................. 2
`
`b. Discussion of the Challenged Claims .......................................................... 6
`
`Summary of Arguments and Action Requested .................................................... 9
`
`Discussion of Kari and Chan ................................................................................. 9
`
`a. Discussion of Kari ..................................................................................... 10
`
`l. The Nokia 9000 Communicator is not Kari is “data processor” ........... 10
`
`2. The Nokia 9000 Communicator is mentioned once by Kari and never
`again..................................................................................................... 1 1
`
`3. Petitioner never establishes that a PDA-type device has a web browser
`that could display the form in Fig. 7 of Kari. ....................................... 11
`
`4. Kari’s Fig. 7 is intended to apply to operations performed on a
`conventional microcomputer, not a handheld device. ........................... 13
`
`5. Kari automatically acquires GPS information only after all user input
`has ended .............................................................................................. 13
`
`6. Kari’s automatic acquisition of GPS information is not performed by
`a browser. Automatically acquired GPS information is entered into a
`query message and not entered into the query form. ............................ 16
`
`b. Discussion of Chan ........................................................................................ 18
`
`VI.
`
`Response to Petitioner’s Challenges ................................................................... 19
`
`a. Petitioner’s expert cites and relies upon a reference that is not prior art to
`the ‘748 patent. ............................................................................................... 19
`
`ii
`
`

`

`IPR2018-OOO43
`
`U.S. PATENT 9,454,748
`
`b. Petitioner has relied on hindsight reconstruction in determining Claims 16-19
`and 21—22 are obvious under 35 U. S.C. § 103 in view of Kari, further in
`view of Darnell, Todd, and Chan. ............................................................... 20
`
`0. Petitioner has failed to establish that the combinations relied upon render any
`challenged claim obvious. ............................................................................. 21
`
`1. Independent claim 16 is not obvious under 35 U. S.C. § 103 in view of
`Kari, further in View of Darnell, Todd, and Chan................................... 21
`2. Challenged dependent claims 17 and 18 are not obvious because they
`depend from an allowable independent claim. ........................................ 23
`3. Challenged independent claim 19 is not obvious under 35 U.S.C. § 103 in
`View of Kari, further in View of Darnell, Todd, and Chan ...................... 23
`4. Challenged independent claim 21 is not obvious under 35 U.S.C. § 103 in
`View of Kari, further in view of Darnell, Todd, and Chan...................... 26
`5. Challenged claim 22 is not obvious because it depends from an allowable
`independent claim .................................................................................... 28
`
`d. The Petition fails to name all real parties-in interest, contrary to 35 U.S.C. §
`312(a)(2) and 37 C.F.R. § 42.8(b)(1). ........................................................... 28
`
`e. An Inter Partes Review Should Not Be instituted Because Such Proceedings
`are Unconstitutional ....................................................................................... 33
`
`VII.
`
`VIII.
`
`Conclusions ......................................................................................................... 34
`
`Certificate of Word Count ................................................................................... 35
`
`iii
`
`

`

`IPR2018-00043
`
`U.S. PATENT 9,454,748
`
`PATENT OWNER’S EXHIBIT LIST
`
`January 9, 2018
`
`EX2001
`
`EX2002
`
`EX2003
`
`EX2004
`
`EX2005
`
`October 16, 2014 email to The Honorable Michelle K. Lee from Kevin Jakel,
`CEO, Unified Patents, pages 1-3
`
`Publication by Unified Patents entitled “The Gloves are Off: Unified Patents
`Inc. Unveils its “NPE Deterrent” Strategy, posted on September 23, 2013 in
`Press Releases, pages 1-5
`
`Printout from Unified Patents FAQ - entitled Frequently Asked Questions ,
`pages 1—10
`
`Publication by Unified Patents entitled “Unified Patents Challenges Clouding
`IP Patent seeks To Push Patent Trolls out of Cloud Storage”, September 17,
`
`2013, pages l-4
`
`The Wall Street Journal article from 02/11/2006 entitled “New Venture Enters
`
`Patent Fray”, pages 1-4
`
`
`
`
`
`iv
`
`

`

`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION FOR INTER PAR TES
`
`REVIEW OF U.S. PATENT NO. 9,454,748
`
`I.
`
`Introduction
`
`Fall Line Patents, LLC (hereinafter “Patentee), the owner of the entire interest in U.S.
`
`Patent No. 9,454,748 (hereinafter the ‘748pPatent) hereby tenders its Preliminary Response to
`
`Petition for Inter Partes Review (“IPE”) of the ‘748 patent. The above-mentioned petition
`
`(hereinafter the “Petition”), which is now assigned Case IPR2018—00043, was filed by Unified
`
`Patents, Inc. (hereinafter “Petitioner”) and accorded the filing date of October 6, 2017. As
`
`explained in detail below, there is no reasonable likelihood that Petitioner would prevail in
`
`establishing anticipation or obviousness of any of the challenged claims during inter partes
`
`review.
`
`II.
`
`Background of the Case
`
`Litigation Involving the Subject Patent
`
`The ‘748 patent is presently the subject of patent infringement lawsuits filed in the
`
`Eastern District of Texas against the following entities:
`
`Case Cation
`
`
`
`
`
`
`Fall Line Patents, LLC v. Choice Hotels Int’l, Inc.
`
`
`6: l7-cv-00408
`Fall Line Patents, LLC v. Uber Technologies, Inc.
`
`6:17-cv—00203
`
`
`Fall Line Patents, LLC v. Cinemark Holding
`
`
`
`6: l7-cv-00407
`
`In addition to the cases listed above, Patentee states that the two cases listed below were
`
`also filed in the Eastern District of Texas and both involved the ‘748 patent. However, both
`
`
`cases have now been dismissed but notice of the termination of these cases is not yet of record
`
`in the Patent Office:
`
`

`

`
`Case Ca-tion
`
`
`Fall Line Patents, LLC V. American Airlines Grou, Inc. et a1.
`
`Fall Line Patents, LLC V. Grubhub Holdings, Inc. et a1.
`
`
`
`
`IPR2018—00043
`
`U.S. PATENT 9,454,748
`
`6:17—cv-00202
`6:17-cv—00204
`
`
`
`
`
`Pending Patent Application(s)
`
`A continuation application of the instant patent is currently pending in the US. Patent
`
`Office, to wit, App. No. 15/260,929. Claims 1-11 are cancelled and new claims 12-22 are
`
`currently pending in that application. A first Office action is predicted in approximately 13
`
`months.
`
`III.
`
`The ‘748 Patent
`
`a.
`
`Background
`
`The ‘748 patent names David Payne as its sole inventor and was filed October 22, 2010,
`
`but claims priority through another application to provisional patent application 60/404,491
`
`which was filed August 19, 2002. During prosecution, a conception of the claims at least as
`
`early as January 1, 2002, was established to the satisfaction of the examiner.
`
`(’748 prosecution
`
`history at 80-108, 215-218, 2291 (EX1002)).
`
`This patent relates to a method of collecting data using handheld devices and transmitting
`
`the data to a central server where it can be accessed and used. One example application of the
`
`technology at issue may be found in the ‘748 patent (EXIOOI) at column 10, line 37, through
`
`column 11, line 42. In brief, this passage describes a secret shopper scenario (called a “mystery
`
`shopper” in the ‘748 patent) where an individual travels to a store location and anonymously
`
`collects information about the service that was provided. Data that is collected might include the
`
`

`

`lPR2018-00043
`
`U.S. PATENT 9,454,748
`
`location and the services received. The data are then communicated to a central server when a
`
`network connection is next established.
`
`The software running on the handheld device that collects information from the shopper
`
`takes the form of a questionnaire. The ‘748 patent makes clear that the claimed “questionnaire”
`
`can be any type of a request for information, whether collected automatically or manually. See,
`
`EXlOOl at 8:17-19 (“For purposes of the instant disclosure, the series of questions/statements
`
`will collectively be referred to as a questionnaire”). The questions can be requests for
`
`information that are collected automatically by the handheld device. See id. at 5:35-37 (“[A]t
`
`least some of the information that is responsive to the designed questionnaire may be collected
`
`automatically rather than entered manually, e.g., time and date, position information if the device
`
`includes a GPS receiver, etc”).
`
`Prior art methods of collecting data in this fashion from handheld devices required coding
`
`and compiling a device specific program that presented the questionnaire to the user. The
`
`resulting executable program would then be usable by only one kind of device. This was
`
`particularly burdensome if different types of handheld devices were being supported, because the
`
`code would have to be separately compiled for each particular type of device.
`
`However, the ‘748 patent overcomes this problem by tokenizz‘ng the questionnaire before
`
`it is transmitted to the handheld device. That is, the instant system assigns device independent
`
`“tokens” to the elements of a questionnaire. See EXlOOl at 8:15-17 (“This series of questions or
`
`statements will have been constructed on computer 22 and reduced to tokenizedform for
`
`transmission to the handheld 28.”) (emphasis added); See also, BXlOOl at 8:40-43 (describing
`
`how tokens are “assigned” to questions).
`
`The questionnaire and its tokens must be device independent:
`
`

`

`IPR2018-00043
`
`U.S. PATENT 9,454,748
`
`As a part of the inventive system each remote device, preferably a handheld
`computer, is provided with an operating instruction system ("OIS") which
`overlays its native operating system. Once equipped with the DIS, a remote
`device can be programmed according to methods described hereinafter. Any
`program developed under the inventive system will run on any handheld
`computer equipped with the DIS and files on one such handheld will transfer
`freely to any other handheld or any computer connected to the inventive system.
`
`EXlOOl at Col. 7, lines 47—58. In other words, this patent contemplates that there will be an
`
`application layer that overlays the operating system on each different type of remote device so
`
`that the same questionnaire can be executed without change on each such device. In that sense,
`
`each questionnaire prepared according to the teachings of the ‘748 patent is then device
`
`independent.
`
`At least some of the tokens of each questionnaire must be executable. That is, they must
`
`correspond, for example, to a “logical, mathematical, or branching operation”. Col. 8, lines 56-
`
`64:
`
`Each token preferably corresponds to a logical, mathematical, or branching
`operation and is preferably selected and made a part of the questionnaire through
`a graphical user interface. By this mechanism, a user is able to create a series of
`questions, the precise nature of which is dependent on the user's responses. For
`example, the questionnaire designer might desire to create a form that asks the
`user different questions; depending on whether the user was male or female.
`
`The ‘748 patent also discloses an embodiment where the handheld device is able to
`
`determine its current location. One embodiment utilizes automatic entry of the GPS coordinates
`
`into the questionnaire in response to a question that requests location information that is part of
`
`the transmitted questionnaire. This variation is discussed, for example, in EXIOOl at col. 10,
`
`lines 55—5 8. The ‘748 patent contemplates that the GPS receiver might be used to automatically
`
`collect the location of the handheld device and include that information in the questionnaire.
`
`As the mystery shopper enters the parking lot, the shopper will be prompted to
`enter a store number or location. If the handheld computer is equipped with a GPS
`receiver, this information could be entered automatically.
`
`

`

`IPR2018-00043
`
`U.S. PATENT 9,454,748
`
`EX 1001, col. 10, lines 55-58. See, also, EX 1001, col. 5, lines 42-48.
`
`A number of useful subsystems, which may already be present in the handheld
`device, or easily added later, may be utilized so that at least some of the
`information which is responsive to the designed questionnaire may be collected
`automatically rather than entered manually, e. g., time and date, position
`information if the device includes a GPS receiver, etc.
`
`Figure 2 of the ‘748 patent contains a simple schematic that illustrates some components
`
`of an embodiment:
`
`
`
`As shown in this figure, a questionnaire is processed by a computer 22. Computer 22
`
`tokenizes the questionnaire so that it can be transmitted to a “loosely networked” handheld
`
`device 28 in a format that a program running on the handheld device can understand. Using this
`
`scheme, when the questionnaire is updated, it is not necessary to edit, compile, and re—install the
`
`program running on handheld device 28. Instead, the questionnaire can be changed, re-
`
`tokenized, and only the tokenized questionnaire need be sent to the handheld device. This has
`
`multiple possible benefits, including not only the avoidance of burdensome re-compilation
`
`

`

`IPR2018-00043
`
`U.S. PATENT 9,454,748
`
`procedures, but also the ability to distribute updated questionnaires to handheld devices over
`
`low-bandwidth network connections. EX 1001, col. 9, lines 14-28.
`
`With respect to the term “loosely networked”, another problem that plagued prior art
`
`handheld remote data collection devices was that they did not handle network outages. As such,
`
`the claimed invention in every instance is required to be “loosely networked”, which means that
`
`it is tolerant of network interruptions. The ‘748 patent describes this requirement thusly at col. 5,
`
`lines 3-14:
`
`As noted above, with regard to the present invention, the term "loosely
`networked" is used to describe a networked computer system wherein devices on
`the network are tolerant of intermittent network connections. In particular, if any
`communication connection is available between devices wishing to communicate,
`network transmissions occur normally, in real time. If a network connection is
`unavailable, the information is temporarily stored in the device and later
`transmitted when the connection is restored. Unless otherwise specified,
`hereinafter the terms "networ " or "networked" refer to loosely networked
`devices.
`
`In brief, the term "loosely networked" is used in the ‘748 patent to describe a networked
`
`computer system wherein devices on the network are tolerant of intermittent network
`
`connections and, in fact, tolerant of the type of network connection available.
`
`b.
`
`Discussion of the Challenged Claims
`
`The challenged claims cover a method for managing data that involves transmitting a
`
`tokenized questionnaire from an originating computer to a handheld device, where it can be used
`
`to acquire information after communications with the originating computer have ended. After
`
`the information is acquired, a network connection to a recipient computer is established and the
`
`information is transmitted. Some key claim limitations are discussed below.
`
`

`

`IPR2018-00043
`
`U.S. PATENT 9,454,748
`
`Each of the challenged claims requires that at least some of the tokens that comprise each
`
`questionnaire must be executable. See, challenged independent claims 16(d3), 19(d)(dl), and
`
`21(a)(4)(i), emphasis added:
`
`Claim 16 (d1):
`
`Claim 19(d)(dl):
`
`Claim 21(a)(4)(i):
`
`executing at least a portion of said plurality of tokens comprising said
`questionnaire on said handheld computing device to collect at least said
`current location of said handheld computing device; and;
`executing at least a portion of said plurality of tokens comprising said
`questionnaire on said handheld computing device to collect at least one
`response from a first user, and,
`executing at least a portion of said plurality of tokens comprising said
`questionnaire on said handheld computing device,
`
`Of importance to each of the challenged claims in the ‘748 patent is that the handheld
`
`device that executes the questionnaire also be capable of determining its location. Each of the
`
`challenged independent claims requires that the transmitted questionnaire contain at least one
`
`question that solicits location information. Emphasis added in each case below.
`
`(a)
`
`Claim 16:
`establishing communications between a handheld computing device and
`an originating computer, said handheld device having at least a capability
`to determine a current location thereof;
`receiving within said handheld computing device a transmission of a tokenized
`questionnaire including at least one question requesting GPS coordinates, said
`tokenized questionnaire comprising a plurality of device independent tokens;
`
`(b)
`
`(a)
`
`Claim 19:
`establishing communications between a handheld computing device and an
`originating computer wherein said handheld computing device has a GPS integral
`thereto;
`receiving within said handheld computing device a transmission of a tokenized
`questionnaire from said originating computer, said tokenized questionnaire
`including at least one question requesting location identifying information, said
`tokenized questionnaire comprising a plurality of device independent tokens;
`
`(b)
`
`(21}
`
`Claim 21:
`within a central computer, accessing at least one user data item stored in a
`recipient computer, wherein said at least one data item is obtained via the steps of:
`(l)
`establishing communications between a handheld computing device and
`an originating computer wherein said handheld computing device has a
`GPS integral thereto;
`
`

`

`IPR2018—00043
`
`U.S. PATENT 9,454,748
`
`(2)
`
`receiving within said handheld computing device a transmission of a
`tokenized questionnaire, including at least one question requesting GPS
`coordinates and at least one additional question, said tokenized
`questionnaire comprising a plurality of device independent tokens;. ..
`
`Also note that claims 19 and 21 require that the handheld computing device have a GPS unit
`
`integral thereto. Claim 16 merely requires that handheld device have the capability to determine
`
`its location.
`
`In order to acquire the location information, tokens in the questionnaire must be executed
`
`to obtain the current location of the handheld device and the GPS location information must then
`
`be automatically inserted (or entered) into the questionnaire (claims 16 and 21):
`
`Claim 16:
`(d)
`after said communications has been terminated, when said handheld computing
`device is at said particular location
`(d1)
`executing at least a portion of said plurality of tokens comprising said
`questionnaire on said handheld computing device to collect at least said
`current location of said handheld computing device; and;
`storing within said handheld computing device said current location;
`automatically entering the GPS coordinates into said questionnaire;
`
`(d2)
`(d3)
`
`Claim 21 :
`(a)
`within a central computer, accessing at least one user data item stored in a
`recipient computer, wherein said at least one data item is obtained Via the steps of:
`
`(4)
`
`after said communications has been ended,
`(i)
`executing at least a portion of said pluralig of tokens comprising
`said questionnaire on said handheld computing device,
`automatically entering the GPS coordinates into said questionnaire;
`
`(ii)
`
`In the case of challenged claim 19, the GPS location information must be automatically
`
`obtained in response to a question in the questionnaire that requests such information:
`
`Claim 19:
`
`(d)
`
`after said communications has been ended,
`(d1)
`executing at least a portion of said plurality of tokens comprising said
`questionnaire on said handheld computing device to collect at least one
`response from a first user, and,
`storing within said computing device said at least one response from the
`first user;
`
`(d2)
`
`

`

`(d3)
`
`using said GPS to automatically obtain said location identifying
`information in response to said at least one question that requests location
`identifying information; ...
`
`IPR2018—00043
`
`U.S. PATENT 9,454,748
`
`IV.
`
`Summary of Arguments and Action Requested
`
`The Petitioner has failed to establish a prima facie case of obviousness with respect to
`
`any challenged claim at least for the reason that hindsight reconstruction is employed.
`
`Additionally, Petitioner has failed to establish that the prior art combinations relied upon teach
`
`every limitation of each of the challenged claimsl. As such, this IPR should not be instituted.
`
`Further, this IPR should not be undertaken at least for the reason that Petitioner has failed
`
`to identify the real party or parties in interest.
`
`In the alternative, Patentee requests that this IPR
`
`be stayed until such time as Patentee can conduct discovery to determine whether or not real
`
`parties in interest have not been disclosed.
`
`Finally, Patentee objects to the use of inter partes review to evaluate the validity of
`
`existing patents as being unconstitutional.
`
`V.
`
`Discussion of Kari and Chan
`
`a.
`
`Discussion of Kari
`
`Kari teaches a method for sending information to a user in response to a user initiated
`
`query. EX1006, Abstract. The main hardware components of the system as set out in Kari ’s
`
`Fig. 2 are a search terminal 1 that can be connected to a telecommunication network 2, a
`
`connection server 3, and at least one remote server 4. EX1006, col. 2, line 56 to col. 3, line 10.
`
`1
`
`Every claim limitation must be considered and given weight in judging the patentability of a
`
`claim against the prior art (MPEP 2143.03).
`
`

`

`IPR2018-00043
`
`U.S. PATENT 9,454,748
`
`Additionally, Kari contemplates that the system might additionally include a separate
`
`“locating system,” such as a GPS system, that can be used to determine the current location of
`
`the search terminal:
`
`The system comprises also means for defining the location of each search
`terminal 1. The means for defining the location (not shown) are advantageously
`formed in the telecommunication network, but also a separate locating system can
`be used, such as the GPS system (Global Positioning System), or the location can
`be entered manually e. g. by using the search terminal 1.
`
`EX1006, col. 3, lines 5-10.
`
`1.
`
`The Nokia 9000 Communicator is not Kari ’s “data processor”.
`
`Kari continues the previous passage and suggests that a PDA-type “teleterminal” might
`
`be used as the search terminal. The search terminal is said to preferably be one that has a data
`
`processor, (CPU) and has the ability to transmit “voice, telefaxes, data, DTMF signals, and two-
`
`way paging”. EX1006, col. 3, lines 11-15. The Nokia 9000 Communicator is given as one
`
`example of such a terminal.
`
`Further, the search terminal 1 can use satellite location means (GPS). A device
`suitable for the search terminal
`1
`is Nokia 9000 Communicator. The search
`terminal 1 can also be a mobile station with a data connector for connecting a
`computer in a data transmission connection with the mobile station. Thus at least
`part of the data processing operations of the search terminal according to the
`invention can be placed in connection with the data processor e. g. via a PCMCIA
`card (Personal Computer Memory Card International Association). For portable
`data processors, also PCMCIA cards comprising a satellite location receiver have
`been developed.
`
`EX1006, col. 3, lines 15-26. Emphasis added.
`
`This paragraph contemplates that the Nokia 9000 Communicator will be placed into
`
`communication with a separate “data processor” that may have a PCMCIA GPS receiver card
`
`installed in it.
`
`Id. That can only mean that the inventor contemplates that if the Nokia 9000
`
`10
`
`

`

`IPR2018-00043
`
`U.S. PATENT 9,454,748
`
`Communicator is used as the search terminal
`
`it will accompanied by a separate personal
`
`computer that has a PCMCIA slot in which a GPS receiver may be installed.
`
`Note that the Nokia 9000 Communicator is not the data processor. The Nokia device is a
`
`separate unit that can provide a user interface for a search request and has the ability to dial into
`
`a network computer so the computer can receive and transmit information from a remote server.
`
`2.
`
`The Nokia 9000 Communicator is mentioned once by Kari and
`never again.
`
`Neither the Nokia 9000 Communicator nor any other example of a PDA-type device is
`
`ever mentioned again after the passage cited above, i.e., EX1006, col. 3, lines 15-26 of Kari.
`
`Instead, Kari next introduces the configuration that is the central focus of the rest of the patent.
`
`EX1006, lines 27-42, emphasis added:
`
`The search terminal 1 used can also be an ordinary microcomputer, or a so-called
`desktop PC having means for forming a data transmission connection with the
`telecommunication network 2. The means for forming a data transmission
`connection comprise most often a modem as well as telecommunication software
`for transmitting data signals, such as commands from the data processor to the
`telecommunication network and for receiving messages transmitted via the
`telecommunication network, as well as for using the messages for forming
`information on the display of the search terminal 1. One application program
`which has recently gained popularity is the web browser developed for the use of
`the Internet data network, wherein the user can search for information in the
`Internet data network, such as home pages (WWW pages) of companies and
`private persons.
`
`This is apparently Kari’s preferred embodiment since this is the only embodiment that is
`
`discussed throughout the rest of the patent. This configuration involves a personal computer that
`
`may have access to a modem (either internal or through an external connection to a device like
`
`the Nokia 9000 Communicator) and that may have a PCMCIA GPS receiver card installed in it.
`
`3. Petitioner never establishes that a PDA-type device has a web
`browser that could display the form in Fig. 7 of Kari.
`
`11
`
`
`
`
`
`
`
`

`

`IPR2018-00043
`
`U.S. PATENT 9,454,748
`
`Kari describes his input form of Fig. 7 as “query form” that is loaded onto the “data
`
`processor” of the user from a connection server. (EX1006, col. 2, lines 45-46). He indicates that
`
`the form could be designed as an “Internet-type WWW page” (EX1006, col. 6, lines 47-50).
`
`Kari relates that such a form could be read by an Internet browser and presented to the user for
`
`input. The text associated with the flow chart of Fig. 3 indicates that the user activates a
`
`“terminal application”, which in this case is a browser, in order to enter values into the form.
`
`EX1006, col. 6, line 63 - col. 7, line 18.
`
`Petitioner seeks to make much of this text by associating the HTML form of Fig. 7. with
`
`Patentee’s “tokenized questionnaire”. (See, e. g., the Petition at page 23, “Kari ’s form
`
`corresponds to a tokenized questionnaire.”) However, assuming arguendo that a HTML
`
`document is tokenized, there is no demonstration that this questionnaire is ever viewed by the
`
`user on a handheld device as is required by every challenged claim.
`
`More particularly, nowhere in Kari, nowhere in the Petition, and nowhere in Petitioner’s
`
`expert report is there any evidence that a FDA-type device such as the Nokia device has a web
`
`browser or a web browser capable of displaying a HTML 4 document of the form Petitioner
`
`asserts was likely used to create Kari’s Fig. 7. EX1005 at 1196. Kari never once indicates that
`
`Fig. 7 was a screen display from a Nokia 9000 Communicator or that any PDA-type device
`
`could display that HTML document or that it actually was a HTML document.
`
`As noted above, Kari transitions from a discussion of FDA—type devices that connect to a
`
`separate computer in lines 11-26 of column 3, to a discussion of “ordinary microcomputers” in
`
`the text that immediately follows, i.e., lines 27-42 of that same column.
`
`It is only after the
`
`discussion turns to an “ordinary microcomputer” that the use of browsers and web pages is
`
`introduced. Fig. 7 is mentioned first in column 6, lines 40-50, which is after the transition point.
`
`12
`
`

`

`IPR2018-00043
`
`U.S. PATENT 9,454,748
`
`4.
`
`Kari’s Fig. 7 is intended to apply to operations performed on a
`conventional microcomputer, not a handheld device.
`
`Thus, it should be remembered that when Kari discusses his Fig. 7, he is not talking
`
`about using a FDA-type device as the search terminal but,
`
`instead, using a microcomputer
`
`potentially equipped with a modem (which could be provided by the Nokia phone) and a
`
`PCMCIA GPS card.
`
`Indeed,
`
`in the description of the drawings section of Kari, Fig. 7 is
`
`described as:
`
`“FIG. 7 shows a query form loaded from the connection server to the data
`
`processor of the user,”, emphasis added. EX1006, col. 2, lines 45—46. As described previously,
`
`Kari uses the term “data processer” to describe a device that is separate from the FDA-type
`
`device.
`
`5. Kari automatically acquires GPS information only after all user
`input has ended.
`
`Further, care should be taken to understand how GPS data is acquired and used in Kari.
`
`Kari indicates that location information can either be entered manually by the user into the form
`
`provided (EX1006, col. 3, lines 5-10) or added automatically to the search query afler the form
`
`of Fig. 7 has been filled by a user and error checked. The GPS data that
`
`is acquired
`
`automatically is not entered into the questionnaire itself.
`
`With respect to so-called “automatic” acquisition of the GPS coordinates, attention is first
`
`drawn to Fig. 3 of Kari, which is described as “FIG. 3 is a flow chart illustrating the formation of
`
`a query message,”. EX1006, col. 2, lines 37-38.
`
`Kari’s Figure 3A, reproduced below, illustrates the process of data collection within the
`
`data processor.
`
`13
`
`
`
`
`
`

`

`IPR2018-00043
`
`U.S. PATENT 9,454,748
`
`
`
`
`
`302
`
`DATA
`CONNECTION
`
`303
`
`CHOOSE DESIRED
`SERVICE
`
`304
`
`DISPLAY SELECTED
`QUERY FORM
`
`FILL III QUERY
`
`READ DATA
`
`DATA 0K?
`
`YES
`
`READ IIII FILE
`
`ADD LOCATION INFO
`AND ROUTE INFO
`
`COMPOSE
`QUERY MESSAGE
`
`307
`
`2506
`
`308
`
`509
`
`310
`
`
`
`14
`
`
`
`

`

`IPR2018-00043
`
`U.S. PATENT 9,454,748
`
`In this figure, the loop that includes boxes 304 to 307 describe the user’s entry of data into the
`
`query form. Figure 7. As is clear, that process ends at the “YES” branch of decision item 307,
`
`i.e., after the error checking step indicates that the data in the form are acceptable.
`
`Next, the user “INI” file is read 308 by an “application program”. EX1006 at col. 7, lines
`
`49-53. Kari indicates that this step reads previously stored user information and, preferably,
`
`only values that have not been entered by the user will be read. EX1006 at col. 7, lines 49-59.
`
`This is so that the items that are read do not replace those entered by the user. This is explained
`
`by Kari at col. 6, lines 15-23 of EX1006:
`
`Information on the real-time location of a mobile communication device can be
`
`derived to the search terminal from the GPS system or another satellite location
`system or via the positioning service of a mobile communication network. If a
`desktop PC or the like is used as the search terminal 1, whose location is not
`usually changed very often, the location information can be stored e. g. in a text-
`form file where the information can be retrieved and edited by the user.
`
`Thus, at this point, Kari deems the user provided data collection phase completed. Note also that
`
`Kari is describing an operation performed by an “application program”. EX1006 at col. 7, lines
`
`49-53, “In case the form is filled in correctly, the application program will move on to block 308,
`
`in which the user information, or the so—called initialization file, stored in the storage means of
`
`the search terminal 1 is read into the random access memory of the search terminal 1.” Emphasis
`
`added.
`
`Significantly, Petitioner never explains how a standard Internet browser that