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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNIFIED PATENTS INC.
`Petitioner
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`v.
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`FALL LINE PATENTS, LLC
`Patent Owner
`__________________
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`Case IPR2018-00043
`Patent 9,454,748
`__________________
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`PATENT OWNER FALL LINE PATENTS, LLC’S NOTICE OF APPEAL
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`Pursuant to 28 U.S.C. § 1295(a)(4)(A), 35 U.S.C. §§ 141-143, 37 C.F.R.
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`IPR2018-0043
`Patent 9,454,748
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`§§ 90.2 – 90.3, (a)(1) and Fed. Cir. R. 15, patent owner Fall Line Patents, LLC
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`hereby appeals to the United States Court of Appeals for the Federal Circuit from
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`the Final Written Decision entered April 4, 2019 (Paper 34) (attached as Exhibit A)
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`in IPR2018-00043, and all prior decisions and rulings related thereto or subsumed
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`therein.
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`Providing the information required by 37 C.F.R. §§90.2(a)(3)(ii), Fall Line
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`states that the issues on appeal may include, but are not limited to:
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`(i)
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`the Board’s determination that Petitioner Unified Patents Inc. properly
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`identified itself as the only real-party-in-interest and that Fall Line’s
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`challenge of that identification was not timely;
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`(ii)
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`the Board’s determination that claims 16–19, 21, and 22 of U.S.
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`Patent No. 9,454,748 would have been obvious over Kari, Darnell,
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`Todd, and Chan;
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`(iii)
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` any further findings or determinations by the Director or the Board
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`supporting or relating to the issues above; and
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`(iv) all other issues decided adversely to Fall Line or the ’748 Patent in
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`any orders, decisions, rulings, or opinions, whether written or oral, of
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`the Board, on its own or on another’s behalf, in this proceeding.
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`This notice is timely filed within 63 days of the Board’s Final Written
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`IPR2018-0043
`Patent 9,454,748
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`Decision. 37 C.F.R. § 90.3(a)(1).
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`Pursuant to 35 U.S.C. § 142 and 37 C.F.R. § 90.2(a), a copy of this Notice of
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`Appeal is being filed simultaneously with the Patent Trial and Appeal Board, the
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`Clerk’s Office for the United States Court of Appeals for the Federal Circuit (along
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`with the required docketing fees), and the Director of the Patent and
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`Trademark Office c/o the Office of the General Counsel at the below-identified
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`address. In addition, pursuant to Fed. Cir. R. 15(a)(1), one paper copy of the
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`foregoing is also being sent to the Clerk of the Federal Circuit.
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`Dated: May 30, 2019
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`Respectfully submitted,
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`___/s/ Matthew J. Antonelli___
`Matthew J. Antonelli
`Reg. No. 45,973
`Counsel for Patent Owner
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`CERTIFICATE OF FILING
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`IPR2018-0043
`Patent 9,454,748
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`The undersigned hereby certifies that in addition to being filed electronically
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`through the PTAB’s E2E system, a true and correct copy of the foregoing was sent
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`by Priority Mail Express or equivalent service to the Director of the United States
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`Patent and Trademark Office at:
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`Director
`c/o Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
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`In addition, the undersigned hereby certifies that the foregoing document
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`was electronically filed with the United States Court of Appeals for the Federal
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`Circuit by CM/ECF, with a paper copy sent to the Clerk of the Court at the United
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`States Court of Appeals for the Federal Circuit, 717 Madison Place NW,
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`Washington, DC 20439, and accompanied by the requisite fee.
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`___/s/ Matthew J. Antonelli___
`Matthew J. Antonelli
`Reg. No. 45,973
`Counsel for Patent Owner
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`IPR2018-0043
`Patent 9,454,748
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on May 30, 2019,
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`the foregoing document was served via email on counsel for Petitioner:
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`HAYNES AND BOONE, LLP
`David O’Brien (David.obrien.ipr@haynesboone.com)
`Raghav Bajaj (Raghav.bajaj.ipr@haynesboone.com)
`David McCombs (David.mccombs.ipr@haynesboone.com)
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`UNIFIED PATENTS INC.
`Jonathan Stroud (jonathan@unifiedpatents.com)
`Roshan Mansinghani (roshan@unifiedpatents.com)
`Jonathan Bowser (jbowser@unifiedpatents.com)
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`___/s/ Matthew J. Antonelli___
`Matthew J. Antonelli
`Reg. No. 45,973
`Counsel for Patent Owner
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`EXHIBIT A
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`EXHIBIT A
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`Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 34
`Entered: April 4, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`UNIFIED PATENTS INC.
`Petitioner,
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`v.
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`FALL LINE PATENTS, LLC
`Patent Owner.
`____________
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`Case IPR2018-00043
`Patent 9,454,748 B2
`____________
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`Before MICHELLE N. WORMMEESTER, SHEILA F. McSHANE, and
`JOHN R. KENNY, Administrative Patent Judges.
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`KENNY, Administrative Patent Judge.
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`DECISION
`Final Written Decision
`35 U.S.C. § 318(a)
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`IPR2018-00043
`Patent 9,454,748 B2
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`I. INTRODUCTION
`This inter partes review, instituted pursuant to 35 U.S.C. § 314,
`challenges the patentability of claims 16–19, 21, and 22 (“challenged
`claims”) of U.S. Patent No. 9,454,748 B2 (Ex. 1001, “challenged patent,”
`“the ’748 patent”), owned by Fall Lines Patents, LLC (“Patent Owner”). We
`have jurisdiction under 35 U.S.C. § 6. This Final Written Decision is issued
`pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons discussed below, we determine that Petitioner has
`proven by a preponderance of the evidence that every challenged claim is
`unpatentable.
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`A. Procedural Background
`Unified Patents, Inc. (“Petitioner”) filed a Petition for inter partes
`review of the challenged claims on one ground. Paper 2 (“Pet.”). Patent
`Owner filed a Preliminary Response. Paper 5 (“Prelim. Resp.”). We
`instituted an inter partes review of all challenged claims. Paper 6
`(“Institution Decision,” “Inst. Dec.”), 47. Patent Owner filed a Patent
`Owner Response to the Petition (Paper 9, “PO Resp.”), to which Petitioner
`filed a Reply (Paper 10, “Pet. Reply”).
`A final oral hearing was held on December 14, 2018, and a transcript
`of the hearing is included in the record. Paper 20 (“Hr’g Tr.”). At the
`hearing, Patent Owner argued that we should consider its challenge to the
`Petitioner’s identification of its real party in interest, even though Patent
`Owner did not present that challenge in its Patent Owner Response. Hr’g Tr.
`19:22–21:8.
`After the hearing, we authorized post-hearing briefing regarding (i)
`Petitioner’s identification of its real party in interest and (ii) whether Patent
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`Patent 9,454,748 B2
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`Owner timely challenged that identification. Paper 19, 1–5. Patent Owner
`filed a Motion Regarding Real Party in Interest (Paper 21, “PO RPI
`Motion”), to which Petitioner filed an Opposition, opposing consideration of
`Patent Owner’s real-party-in-interest challenge. Paper 23 (“Pet. Opp.
`Consid.”). Petitioner also filed a Reply, in which Petitioner responded to
`Patent Owner’s real-party-in-interest arguments. Paper 22 (“Pet. RPI
`Reply”). Petitioner presented a declaration from Mr. Kevin Jakel,
`Petitioner’s CEO, (Ex. 1026) with its RPI Reply. Patent Owner cross-
`examined Mr. Jakel and filed observations regarding that cross examination.
`Paper 30 (“RPI Obs.”). Petitioner responded to those observations. Paper
`31. (“RPI Obs. Resp.”).
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`B. Related Proceedings
`The parties indicate that the challenged patent is or has been involved
`in the following civil actions in the United States District Court for the
`Eastern District of Texas:
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`Number
`6:17-cv-00202
`6:17-cv-00203
`6:17-cv-00204
`6:17-cv-00407
`6:17-cv-00408
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`Case Caption
`Fall Line Patents, LLC v. American Airlines Group, Inc.
`Fall Line Patents, LLC v. Cinemark Holdings, Inc.
`Fall Line Patents, LLC v. Grubhub Holdings, Inc.
`Fall Line Patents, LLC v. Choice Hotels Int’l, Inc.
`Fall Line Patents, LLC v. Uber Technologies, Inc.
`Pet. 1; Paper 4, 2–3.
`According to Petitioner and Patent Owner, Civil Action No. 6:17-cv-
`00204 has been terminated/was dismissed. Pet. 1; Paper 4, 2–3. Patent
`Owner states that Civil Action No. 6:17-cv-00202 was also dismissed.
`Paper 4, 2–3. And Petitioner notes claims 1–14 of U.S. Patent No.
`7,822,816, of which the challenged patent is a continuation, were the subject
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`IPR2018-00043
`Patent 9,454,748 B2
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`of ex parte reexamination Serial No. 90/012,829 and IPR2014-00140. Pet.
`1–2.
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`C. Overview of the Challenged Patent
`The challenged patent is directed to collecting data from a remote
`computing device, such as a handheld computing device, by creating and
`delivering a questionnaire to the remote computing device, executing the
`questionnaire on the remote computing device, and transmitting responses to
`a server via a network. Ex. 1001, [57].
`Figure 1 of the challenged patent is reproduced below:
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`Figure 1 is a diagram of the challenged patent’s system for data
`management. Ex. 1001, 6:57, 7:13–23. System 10 includes server 24;
`handheld computers 28, 30, and 32, which are operated remotely from server
`24; and computer 22, which provides for administration of the system and
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`Patent 9,454,748 B2
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`reviewing data collected by the system. Id. at 7:13–23, Fig. 1. Server 24 is
`connected to computer 22 via the Internet 26, a local area network, or a
`private wide area network. Id. at 7:24–28, Fig. 1. Server 24 is connected to
`handheld computers 28, 30, and 32 via connections 34, 36, and 38,
`respectively. Id. at 7:24–26. Connections 34, 36, and 38 are loose network
`connections, meaning that handheld computers 28, 30, and 32 and server 24
`are tolerant of intermittent network connections. Id. at 7:59–62. Computer
`22 is used for administrating system 10 and for reviewing data collected by
`the system. Id. at 7:21–23.
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`Figure 2 of the challenged patent is reproduced below:
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`Figure 2 is a diagram of system 10 as it is used for form creation. Ex. 1001,
`6:58–59; 8:11–17. Computer 22 has an interface that allows a user to create
`and distribute a form to handheld devices using computer 22. Id. at 8:38–50.
`As the client enters questions and selects response types, server 24 builds a
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`Patent 9,454,748 B2
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`stack of questions and responses, and assigns indices, or tokens, which point
`to each question or response. Id. at 8:53–56, 9:3–6. Each token can
`correspond to a logical, mathematical, or branching operation. Id. at 8:56–
`59, 9:3–6. When questionnaire (40) is complete, server 24 sends the stack of
`questions and defined responses to the handheld devices (e.g., handheld
`computer 28). Id. at 9:3–6. System 10 can incrementally update the
`questionnaire on the handheld devices. Id. at 9:14–18.
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`For example, system 10 can track mystery shoppers at restaurant
`chains. Ex. 1001, 10:37–43. System 10 can track the time it takes a mystery
`shopper to go through a drive through window. Id. at 10:41–43. When the
`mystery shopper enters a parking lot for a franchise, a handheld device with
`a GPS receiver can identify the franchise. Id. at 10:55–59. The device can
`also record the amount of time it takes for the shopper to go through a drive
`through line. Id. at 10:55–11:21.
`D. Illustrative Claims
`Petitioner challenges claims 16–19, 21, and 22 of the challenged
`patent, of which, claims 16, 19, and 21 are independent and reproduced
`below:
`[16.0]1 16. A method for managing data comprising the steps of:
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`[16.1] (a) 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;
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`1 Petitioner labels individual phrases in claims 16, 19, and 21 as shown in
`brackets. For clarity, we use the bracketed labels for the phrases in these
`claims.
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` [16.2.1] (b) receiving within said handheld computing device a
`transmission of a tokenized questionnaire
`[16.2.2] including at least one question requesting GPS
`coordinates,
`[16.2.3] said tokenized questionnaire comprising a plurality of
`device independent tokens;
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` [16.3] (c) ending said communications between said handheld
`computing device and said originating computer;
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` [16.4] (d) after said communications has been terminated, when said
`handheld computing device is at said particular location
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` [16.5] (dl) 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;
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` [16.6] (d2) storing within said handheld computing device said
`current location;
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` [16.7] (d3) automatically entering the GPS coordinates into
`said questionnaire;
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` [16.8] (e) establishing communications between said handheld
`computing device and a recipient computer; and,
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` [16.9] (f) transmitting at least one value representative of said stored
`current location to said recipient computer.
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`[19.0] 19. A method for managing data comprising the steps of:
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` [19.1] (a) establishing communications between a handheld
`computing device and an originating computer wherein said
`handheld computing device has a GPS integral thereto;
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`Patent 9,454,748 B2
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` [19.2.1] (b) receiving within said handheld computing device a
`transmission of a tokenized questionnaire from said originating
`computer,
`[19.2.2] said tokenized questionnaire including at least one
`question requesting location identifying information,
`[19.2.3] said tokenized questionnaire comprising a plurality of
`device independent tokens;
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`[19.3] (c) ending said communications between said handheld
`computing device and said originating computer;
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` [19.4] (d) after said communications has been ended,
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` [19.5] (dl) 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,
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` [19.6] (d2) storing within said computing device said at least
`one response from the first user
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` [19.7] (d3) using said GPS to automatically obtain said
`location identifying information in response to said at least
`one question that requests location identifying information;
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` [19.8] (e) establishing communications between said handheld
`computing device and a recipient computer;
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` [19.9] (f) transmitting a value representative of each of said at least
`one response stored within said handheld computing device to said
`recipient computer; and,
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` [19.10] (g) after receipt of said transmission of step (f), transmitting a
`notice of said received value representative of each of said at least
`one response to a second user.
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` [21.0] 21. A method for managing data comprising the steps of:
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` [21.1] (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:
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` [21.2] (1) establishing communications between a handheld
`computing device and an originating computer wherein said
`handheld computing device has a GPS integral thereto;
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` [21.3.1] (2) receiving within said handheld computing device a
`transmission of a tokenized questionnaire,
`[21.3.2] including at least one question requesting GPS
`coordinates and at least one additional question,
`[21.3.3] said tokenized questionnaire comprising a plurality
`of device independent tokens;
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` [21.4] (3) ending said communications between said handheld
`computing device and said originating computer;
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` [21.5] (4) after said communications has been ended,
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`[21.6] (i) executing at least a portion of said plurality of
`tokens comprising said questionnaire on said
`handheld computing device,
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` [21.7] (ii) automatically entering the GPS coordinates
`into said questionnaire:
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` [21.8] (iii) presenting said at least one additional
`question to a user;
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` [21.9] (iv) receiving at least one response from the user
`to each of said presented at least one additional
`question,
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` [21.10] (v) storing at least one value representative of
`said GPS coordinates and said at least one response
`within said handheld computing device;
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` [21.11] (5) establishing a communications link between said
`handheld computing device and a recipient computer;
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` [21.12] (6) transmitting said stored at least one value
`representative of said GPS coordinates and said at least one
`response stored within said handheld computing device to
`said recipient computer; and,
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` [21.13] (7) storing within said recipient computer any of said
`transmitted GPS coordinates and said at least one value
`representative of said at least one response, thereby creating
`said at least one user data item stored in said recipient
`computer; and,
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` [21.14] (b) forming a visually perceptible report from any of said at
`least one stored user data item.
`E. Asserted Prior Art and the Parties’ Declarations
`Petitioner relies on the following references:2
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`IPR2018-00043
`Patent 9,454,748 B2
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`Chan
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`Darnell
`Kari
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`Todd
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`Reference
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`U.S. Patent No.
`6,381,603 B1
`HTML 4 Unleashed3
`U.S. Patent No.
`6,154,745
`U.S. Patent No.
`6,380,928 B1
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`Issue/Copyright
`Date
`Apr. 30, 2002
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`1998
`Nov. 28, 2000
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`Apr. 30, 2002
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`Exhibit
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`Ex. 1010
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`Ex. 1007
`Ex. 1006
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`Ex. 1009
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`Petitioner also relies on declarations from its expert, Dr. A.L.
`Narasimha Reddy (Ex. 1005); Mr. David Bader (Ex. 1008); and Mr. Kevin
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`2The challenged patent is a continuation of Serial No. 10/643,516, filed Aug.
`19, 2003, now U.S. Patent No. 7,822,816. The challenged patent also claims
`the benefit of Provisional Application No. 60/404,491, filed Aug. 19, 2002.
`3 Rick Darnell, HTML 4 UNLEASHED, 3–29, 231–253 (1998).
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`Jakel (Ex. 1026). Patent Owner relies on a declaration from its expert, Dr.
`John C. Hale (Ex. 2006).
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`F. Asserted Ground
`Petitioner asserts that claims 16–19, 21, and 22 of the challenged
`patent are unpatentable under 35 U.S.C. § 103(a) as obvious over Kari,
`Darnell, Todd, and Chan. Pet. 5.
`G. Real Parties in Interest
`Petitioner identifies Unified Patents, Inc. as its sole real party in
`interest in this proceeding. Pet. 1. Patent Owner identifies Fall Line Patents,
`LLC as its sole real party in interest. Paper 4, 2.
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`II. DISCUSSION
`A. Identification of Petitioner’s Real Party in Interest
`The statute governing inter partes review proceedings sets forth
`certain requirements for a petition for inter partes review, including that “the
`petition identif[y] all real parties in interest.” 35 U.S.C. § 312(a); see also
`37 C.F.R. § 42.8(b)(1) (requirement to identify real parties in interest in
`mandatory notices). As discussed above, in accordance with 35 U.S.C.
`§ 312(a)(2) and 37 C.F.R. § 42.8(b)(1), Petitioner identifies Unified Patents
`Inc. as its sole real party in interest and “certifies that no other party
`exercised control or could exercise control over Unified’s participation in
`this proceeding, the filing of this petition, or the conduct of any ensuing
`trial.” Pet. 1.
`In its Preliminary Response, Patent Owner challenged Petitioner’s
`identification of its real party in interest. Prelim. Resp. 28–33. In the
`Institution Decision, we determined that at that stage of the proceeding there
`was insufficient evidence to reasonably bring into question the accuracy of
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`the Petitioner’s identification. Inst. Dec. 11. After institution, Patent Owner
`sought authorization to file a motion for discovery regarding Petitioner’s real
`party in interest. Paper 8. But at the time, Patent Owner requested to wait
`for a district court ruling before filing its motion. Id. We instructed Patent
`Owner to seek authorization for its motion when it was prepared to file the
`motion (id.), but Patent Owner never sought such authorization. See Hr’g
`Tr. 44:15–46:2. Patent Owner did not present a challenge regarding
`Petitioner’s real party in interest in its Patent Owner Response, nor did it
`mention the issue in that paper. The issue of Petitioner’s real party in
`interest was subsequently brought to the Board’s attention when the parties
`submitted their oral hearing demonstratives and Petitioner’s Objections to
`Patent Owner’s Demonstratives, which were submitted a few days before the
`December 14, 2018 Hearing. Papers 16–18. At the oral hearing, Patent
`Owner argued that we should consider a challenge to the Petitioner’s
`identification of its real party of in interest. Hr’g Tr. 19:22–21:8.
`Under the circumstances, we first address whether Patent Owner
`timely challenged Petitioner’s identification of its real party in interest.
`Then, we address whether, if we were to consider Patent Owner’s challenge,
`we would accept Petitioner’s identification of its real party in interest.
`1. Timeliness of Patent Owner’s Challenge
`Patent Owner argues its challenge to Petitioner’s real party in interest
`was timely for three reasons. First, Patent Owner argues that it did not need
`to present this challenge in its Patent Owner Response because the challenge
`does not involve an issue of patentability, and the Scheduling Order (Paper
`7) merely cautions Patent Owner that arguments of patentability would be
`waived if not raised in the Patent Owner Response. PO RPI Motion 1.
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`Second, Patent Owner asserts that it could raise its challenge at any time—
`even at oral argument—because challenges regarding real parties in interest
`cannot be waived. Id. at 1–2 (citing Motorola Mobility LLC v. Intellectual
`Ventures II LLC, IPR2014-00504, Paper 12 at 8 (PTAB Sept. 10, 2014)).
`Third, at oral argument, Patent Owner asserts that Applications in Internet
`Time, LLC v. RPX Corp., 897 F.3d 1336 (Fed. Cir. 2018), and Worlds Inc. v.
`Bungie, Inc., 903 F.3d 1237 (Fed. Cir. 2018), which issued after the Patent
`Owner filed its Patent Owner Response, were intervening changes in the
`interpretation of the law that justified raising the issue of real party in
`interest after the filing of the Patent Owner Response. Hr’g Tr. 20:26–21:5.
`Petitioner responds, arguing that Patent Owner waived its right to
`challenge Petitioner’s identification of its real party in interest by not raising
`that challenge in the Patent Owner Response. Pet. Opp. Consid. 1–2 (citing
`Unified Patents Inc. v. Nonend Inventions N.V., IPR2016-00174, Paper 26 at
`6–7 (PTAB May 8, 2017) and Paper 28 at 3 (PTAB July 25, 2017)). We
`agree with Petitioner.
`First, by waiting until oral argument to raise its challenge, Patent
`Owner denied Petitioner sufficient notice to address that challenge at an
`appropriate time in the proceeding. During trial, a petitioner’s reply can
`only respond to what patent owner places in the patent owner response, not
`what is included in the preliminary response. 37 C.F.R. § 42.23 (b) (“A
`reply may only respond to arguments raised in the corresponding opposition,
`patent owner preliminary response, or patent owner response.”) (emphases
`added). Therefore, for arguments that are not raised in a patent owner
`response, a petitioner would ordinarily not have an opportunity to respond to
`them, and the Board would not have an opportunity to consider them in an
`
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`orderly fashion. Accordingly, such arguments are waived. See In re
`NuVasive, Inc., 842 F.3d 1376, 1380–81 (Fed. Cir. 2016) (“NuVasive
`challenged the public accessibility of the prior art references during the
`preliminary proceedings of the inter partes review . . . but failed to challenge
`public accessibility during the trial phase . . . . NuVasive waived its
`arguments on this issue.”). Moreover, the rules make clear that during trial
`the patent owner’s response is the patent owner’s opposition to the petition,
`not merely a supplement to the patent owner’s preliminary response. 37
`C.F.R. § 42.10 (a) (“A patent owner response is filed as an opposition . . .
`.”). Further, the word limits given to the patent owner response demonstrate
`that that response must contain the patent owner’s opposition. 37 C.F.R.
`§ 42.24 (b)(2). Allowing the patent owner to use the patent owner response
`as a supplement, rather than an opposition, would provide the patent owner
`twice the briefing for the opposition to the petition as the briefing petitioner
`has for the petition. 37 C.F.R. § 42.24 (b)(2).
`Second, Patent Owner was on notice that it needed to raise its
`challenge to Petitioner’s real party in interest in its Patent Owner Response
`when it filed that paper. In Nonend Inventions, the patent owner Nonend
`Inventions, in its preliminary response, challenged the identification by the
`petitioner Unified Patents of its real party in interest. Unified Patents Inc. v.
`Nonend Inventions N.V., IPR2016-00174, Paper 26, 6–7 (PTAB May 8,
`2017). Nonend Inventions, however, did not present that challenge in its
`patent owner response. Id. In the final written decision in that proceeding,
`the Board held that Nonend Inventions waived its challenge regarding
`Unified Patents’ real party in interest. Id. Nonend Inventions requested
`rehearing, arguing that it did not have to present that challenge in its patent
`
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`owner response because that challenge does not concern an issue of
`patentability and the scheduling order in that proceeding merely cautioned
`patent owner that arguments of patentability would be waived if not raised in
`the patent owner response. Patent Owner’s Request for Rehearing,
`IPR2016-00174, Paper 27, 2. On rehearing, the Board rejected that
`argument, holding that the patent owner needed to present its challenge
`regarding the petitioner’s real party in interest in its patent owner response
`and that by not doing so, the patent owner waived that challenge. Decision,
`IPR2016-00174, Paper 28, 3–4 (July 25, 2017). Not only was Patent Owner
`here constructively on notice of the Nonend ruling through the decision’s
`publication nearly one year prior to Patent Owner’s filing of its Response,4
`but also at least two of the attorneys representing Patent Owner in this
`proceeding were directly aware of the decision because they represented the
`patent owner in Nonend Inventions. Paper 4, 3; Request for Rehearing,
`IPR2016-00174, Paper 27, 4. In its RPI motion, however, Patent Owner
`presents no arguments addressing Nonend Inventions or explains why, in
`light of that decision, Patent Owner did not have notice that its failure to
`raise its RPI challenge in its Patent Owner Response would waive that
`challenge. RPI Motion, passim.
`Third, Patent Owner’s reliance on Motorola Mobility LLC v.
`Intellectual Ventures II LLC, IPR2014-00504, Paper 12 at 8 (PTAB Sept.
`10, 2014) to argue that real party in interest challenges can never be waived
`
`4 The Nonend Inventions rehearing decision was publicly available on July
`25, 2017, and is accessible via Westlaw. IPR2016-00174, Paper 28; Unified
`Patents Inc. v, Nonend Inventions, 2017 WL 3174102 (PTAB July 25,
`2017). Patent Owner filed its Response in this proceeding nearly a year
`later, on June 26, 2018. Paper 9, 34.
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`IPR2018-00043
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`during trial is misplaced. Motorola Mobility is an institution decision;
`therefore, the issue of whether a patent owner can waive its challenge
`regarding a petitioner’s real party in interest by not raising it in its Patent
`Owner Response was not before the panel in Motorola Mobility. IPR2014-
`00504, Paper 12. Further, in Worlds, the Federal Circuit held that the patent
`owner must produce “some evidence that tends to show that a particular
`third party should be named as a real party in interest . . . . A mere assertion
`that a third party is an unnamed real party in interest, without any support for
`that assertion, is insufficient to put the issue into dispute.” Worlds, 903 F.3d
`at 1244. Non-waivable challenges, such as a lack of subject matter
`jurisdiction, have no similar requirement. Foster v. Chatman, 136 S. Ct.
`1737, 1745 (2016); St. Bernard Parish Gov’t v. U.S., 916 F.3d 987, 992–93
`(Fed. Cir. 2019). When a party is required to put in some evidence to place
`an issue into dispute, the party must do so in a timely manner, or it waives
`the right to raise the issue. NuVasive, 842 F.3d at 1380–81.
`Fourth, the Federal Circuit’s decisions in Applications in Internet
`Time and Worlds do not justify Patent Owner’s delay until oral argument to
`raise its challenge here.5 These Federal Circuit decisions issued on July 9,
`2018, and September 27, 2018, respectively. Applications in Internet Time,
`897 F.3d at 1336; Worlds, 903 F.3d at 1237. Patent Owner never sought to
`supplement its Patent Owner Response in light of these cases and instead
`waited until oral argument in mid-December 2018 to present a challenge to
`Petitioner’s identification of its real party in interest. Applications in
`Internet Time issued only a few weeks after Patent Owner filed its Patent
`
`5 As discussed above, the potential issue was first brought to the Board’s
`attention a few days before the December 14, 2018 hearing. Papers 16–18.
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`IPR2018-00043
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`Owner Response. Had Patent Owner raised the issue in July 2018, after
`Applications in Internet Time issued, the Board could have authorized
`supplemental briefing addressing that decision without disrupting the overall
`schedule for the proceeding. Even if Patent Owner had waited until Worlds
`issued to request authorization to file a supplemental brief, the Board could
`have authorized such briefing, without excessive disruptions to the overall
`schedule. Patent Owner’s Response was filed on September 17, 2018, only
`two weeks prior to the issuance of Worlds. But Patent Owner waited until
`oral argument, nearly three months later, to raise the issue. Oral argument is
`not an appropriate forum for raising a new argument or reviving an
`abandoned one. Dell Inc. v. Acceleron, LLC, 884 F.3d 1364, 1369–70 (Fed.
`Cir. 2018); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768
`(Aug. 14, 2012).
`Fifth, Patent Owner does not argue that the Board should consider its
`belated challenge for reasons of equity, and we see no equitable reason to do
`so. See PO RPI Motion 1–2. Patent Owner provides no persuasive reason
`why it could not have presented its challenge well before oral argument. Id.
`Patent Owner was aware of the evidence that it relies on for its challenge
`before the filing of its Patent Owner Response: it cites only the evidence that
`was previously in its Preliminary Response. Id. at 3–4 (citing Exs. 2003,
`2004); Patent Owner’s Demonstrative Exhibits (Paper 18), 5–6, 8–12 (citing
`Exs. 2001–2005); Prelim. Resp. iv. Further, the trial record indicates that
`Patent Owner did not sufficiently pursue its challenge. Shortly after the trial
`institution, Patent Owner sought authorization to file a motion for discovery
`regarding Petitioner’s real party in interest. Paper 8, 2. As discussed above,
`we did not initially authorize that motion because Patent Owner wanted to
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`IPR2018-00043
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`wait to file any motion, but we permitted Patent Owner to seek authorization
`again when it was ready to file that motion. Id. Patent Owner never sought
`that authorization and never sought additional discovery on the issue. Hr’g.
`Tr. 21:17–22:6. In other words, Patent Owner abandoned its challenge and
`then waited until oral argument to try to revive it. The equities, however, do
`not favor considering a challenge that Patent Owner made no effort to timely
`raise.
`
`Patent Owner has not directed us to any legal or equitable reasons to
`consider Patent Owner’s belated challenge regarding Petitioner’s real party
`in interest. Therefore, we decline to consider it, and we accept Petitioner’s
`identification of its real party in interest. Worlds Inc., 903 F.3d at 1243. (An
`“IPR petitioner’s initial identification of the real parties in inter
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