Trials@uspto.gov
`571 272 7822
`
`PAPER NO. 9
`
`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 RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 9,454,748
`CHALLENGING CLAIMS 16-19 AND 21-22
`
`i
`
`
`571 272 7822
`
`PAPER NO. 9
`
`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 RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 9,454,748
`CHALLENGING CLAIMS 16-19 AND 21-22
`
`i
`
`
`
`IPR2018-00043
`U.S. PATENT 9,454,748
`
`TABLE OF CONTENTS
`
`I.
`
`Introduction
`
`II.
`
`Background of the Case
`
`III. Claim Construction
`
`IV. The Challenged Claims
`
`V. Petitioner's Expert Opinion is Demonstrably Flawed and Should Not Be
`Relied Upon
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`Petitioner's expert wrongly assumes that Kari 's Nokia 9000
`utilizes HTML 4 when it actually only supported HTML 2
`
`The browser in Kari 's Nokia 9000 Communicator could not
`read GPS information
`
`In 2001 Kari 's blank form could not both be comprised of
`device independent tokens and read location information from
`an internal or external GPS receiver
`
`Kari 's invention if implemented in standard HTML could not
`operate according to his own stated "advantageous
`embodiment" in a loosely networked environment
`
`Dr. Reddy's statements about 'hidden questions" obscure
`the fact that a standard HTML form / browser combination
`cannot be used to obtain GPS information from the
`local system
`
`1
`
`1
`
`3
`
`6
`
`11
`
`11
`
`12
`
`13
`
`15
`
`16
`
`VI. No Reference Or Combination Of References Renders Obvious Any Claim
`Of The '748 Patent When That Claim Is Properly Construed And The Prior
`18
`Art Is Correctly Interpreted
`
`ii
`
`
`
`IPR2018-00043
`U.S. PATENT 9,454,748
`
`a.
`
`Claim 19 is not obvious in view of Kari and/or Kari in
`combination with any of Darnell, Chan, and/or Todd
`
`18
`
`2.
`
`3.
`
`1. No single reference or combination of references teaches
`performing limitation [19.7] in a device independent
`manner
`Kari 's invention was not implemented in a device independent
`manner and there was no motivation for a POSITA to take
`that step in solving the problems of the '748 patent absent
`hindsight
`The secondary references cited by Petitioner are not reasonably
`pertinent to the problem of creating a questionnaire that
`comprises device independent tokens that can be executed on
`24
`multiple different devices with change
`4. No single reference or combination of references teaches per-
`forming limitation [19.8] in a device independent manner 25
`
`20
`
`21
`
`b.
`
`c.
`
`d.
`
`e.
`
`Claim 16 is not obvious in view of Kari and/or Kari in
`combination with any of Darnell, Chan, and/or Todd
`
`Claim 17 is not obvious in view of Kari and/or Kari in
`combination with any of Darnell, Chan, and/or Todd
`
`Claim 18 is not obvious in view of Kari and/or Kari in
`combination with any of Darnell, Chan, and/or Todd
`
`Claim 21 is not obvious in view of Kari and/or Kari in
`combination with any of Darnell, Chan, and/or Todd
`
`VII. Conclusions
`
`VIII. Certificate of Word Count
`
`26
`
`28
`
`29
`
`30
`
`32
`
`34
`
`iii
`
`
`
`TABLE OF AUTHORITIES
`
`IPR2018-00043
`U.S. PATENT 9,454,748
`
`Cases
`
`United States v. Telectronics, Inc., 857 F.2d 778, 8 USPQ2d 1217,
`1220 (Fed. Cir. 1988), cert. denied, 490 U.S. 1046 (1989)
`
`Page
`
`¶ 5
`
`CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003)
`21
`(citing In re Royka, 490 F.2d 981, 985 (CCPA 1974))
`
`Other Authorities
`
`Updated KSR Examination Guidelines, Federal Register,
`Vol. 75, No. 169, Wednesday, September 1, 2010, Notices, p. 53646
`
`23
`
`iv
`
`
`
`IPR2018-00043
`U.S. PATENT 9,454,748
`
`PATENT OWNER'S EXHIBIT LIST
`
`June 26, 2018
`
`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 1-4
`
`The Wall Street Journal article from 02/11/2006 entitled "New
`Venture Enters Patent Fray", pages 1-4
`
`Declaration of Dr. John C. Hale Under 37 C.F.R. §1.68 In
`Opposition to Decision Granting Inter Parts Review of U.S.
`Patent No. 9,454,748 (Claims 16-19 and 21-22)
`
`Excerpt from HTML The Complete Reference, Thomas A. Powell,
`3rd Ed., © 2001, pages 427-428
`
`Excerpt from Service Manual : RAE/RAK-1 SERIES CELLULAR
`PHONE/PERSONAL DIGITAL ASSISTANT Nokia
`9000i Service Manual.pdf (original 5/97)
`
`EX2001
`
`EX2002
`
`EX2003
`
`EX2004
`
`EX2005
`
`EX2006
`
`EX2007
`
`EX2008
`
`
`
`PATENT OWNER'S RESPONSE TO
`PETITION FOR INTER PARTES 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 '748 Patent) hereby tenders
`
`its Response to the Decision to Institute Inter Partes Review ("IPR") of the '748
`
`patent. The above-mentioned decision (hereinafter the "Decision") was entered
`
`April 5, 2018 in Case IPR2018-00043, Paper 6. 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.
`
`II. Background of the Case
`
`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. Patent Owner filed a
`
`preliminary response on January 9, 2018. On April 5, 2018, the Patent Trial and
`
`Appeal Board (hereinafter "Board") entered the Decision instituting the instant
`
`1
`
`
`
`IPR. As explained in detail below, the prior art of record does not render any
`
`IPR2018-00043
`U.S. PATENT 9,454,748
`
`challenged claim as obvious.
`
`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 Caption
`Fall Line Patents, LLC v. Choice Hotels Int'l, Inc.
`Fall Line Patents, LLC v. Uber Technologies, Inc.
`
`Number
`6:17-cv-00407
`6:17-cv-00408
`
`In addition to the cases listed above, Patentee states that the three cases
`
`listed below were also filed in the Eastern District of Texas and both involved the
`
``748 patent. However, these three cases have now been dismissed, but notice of
`
`the termination of these cases is not yet of record in the Patent Office:
`
`Case Caption
`Fall Line Patents, LLC v. American Airlines Group, Inc. et
`al.
`Fall Line Patents, LLC v. Grubhub Holdings, Inc. et al.
`Fall Line Patents, LLC v. Cinemark Holdings, Inc., et al.
`
`Number
`6:17-cv-00202
`
`6:17-cv-00204
`6:17-cv-00203
`
`Pending Patent Application(s)
`
`A continuation application of the instant patent is currently pending in the
`
`U.S. 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.
`
`2
`
`
`
`IPR2018-00043
`U.S. PATENT 9,454,748
`
`III. Claim Construction
`
`As recognized in Unified's Petition for Inter Partes Review (Paper 2) and
`
`stated in Patentee's Preliminary Response (Paper 5). 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 (EX1002)).
`
`Based on information contained in the Petition, the Board determined
`
`Petitioner had demonstrated a reasonable likelihood that it would prevail in
`
`establishing each of claims 16-19 and 21-22 as unpatentable over U.S. Patent No.
`
`6,154,745 (Kari), HTML 4 Unleashed (Darnell), U.S. Patent No. 6,380,928 Bl
`
`(Todd), and U.S. Patent No. 6,381,603 Bl (Chan). These references were
`
`discussed previously by Patentee in connection with Patent Owner's Preliminary
`
`Response to Petition for Inter Partes review of U.S. Patent No. 9,454,748 B2
`
`(hereinafter "Response"), pages 9-28, the entire contents of which Response are
`
`incorporated herein by reference as if fully set out at this point.
`
`A. Claim Construction
`
`For purposes of the instant proceeding only, with the exception of the terms
`
`identified below the other definitions proposed by the Board will be accepted.
`
`That being said, Patentee reserves the right to challenge additional of the proposed
`
`definitions.
`
`1. "loosely networked"
`
`3
`
`
`
`IPR2018-00043
`U.S. PATENT 9,454,748
`
`Both the Board and Dr. Reddy fail to recognize the importance of the term
`
`loosely networked to the '748 patent. Dr. Reddy's Declaration (EX1005)
`
`completely ignores the definition of this tetin which is critical to the understanding
`
`of the '748 patent. See, for example, Col. 7, line 59 to col. 8, line 2 of the '748
`
`patent, EX1001 (emphasis added):
`
`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 temis "network" or "networked" refer to
`
`loosely networked devices.
`
`Accord, col. 1, lines 17-24 (emphasis added):
`
`The present invention relates to a system of computing devices for the
`
`collection and management of information. More particularly, but not
`
`by way of limitation, the present invention relates to a system for
`
`collecting and managing information including a plurality of computer
`
`devices loosely networked to a server and an operating system for a
`
`computer which provides a number of features favorable for use in the
`
`inventive system.
`
`See, also, col. 9, lines 3-13 (emphasis added):
`
`4
`
`
`
`IPR2018-00043
`U.S. PATENT 9,454,748
`
`When the questionnaire 40 is complete, server 24 sends the stack of
`
`questions and defined responses to the appropriate handheld devices,
`
`as represented by handheld 28, via the loosely networked connection
`
`34. In addition, server 24 sends the operating logic for that
`
`questionnaire, which is simply a list of tokens which point to the
`
`questions and responses to each question as well as tokens for
`
`program control or math operations.
`
`It is, of course, axiomatic that an inventor may be his own lexicographer and
`
`such definitions are controlling throughout the specification and claims. See, e.g.,
`
`United States v. Telectronics, Inc., 857 F.2d 778, 8 USPQ2d 1217, 1220 (Fed. Cir.
`
`1988), cert. denied, 490 U.S. 1046 (1989):
`
`Patent law allows the inventor to be his own lexicographer. . . . [The
`
`specification aids in ascertaining the scope and meaning of the
`
`language employed in the claims inasmuch as words must be used in
`
`the same way in both the claims and the specification.
`
`As such, any of Dr. Reddy's analyses that involve an opinion about the
`
`claims of the instant patent where "networks" or "loosely networked" or are
`
`implicated is fatally deficient and, as such, his reasoning in this regard should be
`
`given no weight.
`
`5
`
`
`
`IPR2018-00043
`U.S. PATENT 9,454,748
`
`IV. The Challenged Claims
`
`Petitioner has challenged claims 16-19, 21, and 22 of the '748 patent. For
`
`purposes of reference, the independent claims from the '748 patent are reproduced
`
`below using the labeling scheme employed by the Board in its Decision:
`
`[16.0] 16. A method for managing data comprising the steps of:
`
`[16.1] (a) establishing communications between a handheld computing device and
`
`an originating computer, said handheld device having at least a capability to
`
`detelmine a current location thereof;
`
`[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;
`
`[16.3] (c) ending said communications between said handheld computing device
`
`and said originating computer;
`
`[16.4] (d) after said communications has been terminated, when said handheld
`
`computing device is at said particular location
`
`[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;
`
`6
`
`
`
`IPR2018-00043
`U.S. PATENT 9,454,748
`
`[16.6] (d2) storing within said handheld computing device said current
`
`location;
`
`[16.7] (d3) automatically entering the GPS coordinates into said
`
`questionnaire;
`
`[16.8] (e) establishing communications between said handheld computing device
`
`and a recipient computer; and,
`
`[16.9] (f) transmitting at least one value representative of said stored current
`
`location to said recipient computer.
`
`[19.0] 19. A method for managing data comprising the steps of:
`
`[19.1] (a) establishing communications between a handheld computing device and
`
`an originating computer wherein said handheld computing device has a GPS
`
`integral thereto;
`
`[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;
`
`[19.3] (c) ending said communications between said handheld computing device
`
`and said originating computer;
`
`7
`
`
`
`IPR2018-00043
`U.S. PATENT 9,454,748
`
`[19.4] (d) after said communications has been ended,
`
`[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,
`
`[19.6] (d2) storing within said computing device said at least one response
`
`from the first user
`
`[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;
`
`[19.8] (e) establishing communications between said handheld computing device
`
`and a recipient computer;
`
`[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,
`
`[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.
`
`[21.0] 21. A method for managing data comprising the steps of:
`
`8
`
`
`
`[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
`
`IPR2018-00043
`U.S. PATENT 9,454,748
`
`steps of:
`
`[21.2] (1) establishing communications between a handheld computing
`
`device and an originating computer wherein said handheld computing
`
`device has a GPS integral thereto;
`
`[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;
`
`[21.4] (3) ending said communications between said handheld computing
`
`device and said originating computer;
`
`[21.5] (4) after said communications has been ended,
`
`[21.6] (i) executing at least a portion of said plurality of tokens
`
`comprising said questionnaire on said handheld computing
`
`device,
`
`[21.7] (ii) automatically entering the GPS coordinates into said
`
`questionnaire:
`
`9
`
`
`
`IPR2018-00043
`U.S. PATENT 9,454,748
`
`[21.8] (iii) presenting said at least one additional question to a user;
`
`[21.9] (iv) receiving at least one response from the user to each of said
`
`presented at least one additional question,
`
`[21.10] (v) storing at least one value representative of said GPS
`
`coordinates and said at least one response within said handheld
`
`computing device;
`
`[21.11] (5) establishing a communications link between said handheld
`
`computing device and a recipient computer;
`
`[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,
`
`[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,
`
`[21.14] (b) forming a visually perceptible report from any of said at least one
`
`stored user data item.
`
`10
`
`
`
`IPR2018-00043
`U.S. PATENT 9,454,748
`
`V. Petitioner's Expert Opinion is Demonstrably Flawed and Should Not Be
`Relied Upon
`
`a. Petitioner's expert wrongly assumes that Kari's Nokia 9000
`utilizes HTML 4 when it actually only supported HTML 2
`
`All versions of HTML are not alike. Dr. Reddy in his expert declaration
`
`repeatedly relies on the Darnell reference (EX1007, "HTML 4 Unleashed") to
`
`contend that the query foi n utilized by Kari to receive information from the user
`
`(e.g., Kari at 6:66-7:6 (EX1006)) constitutes a tokenized questionnaire as that teiin
`
`is used in the '748 patent. See, e.g., Reddy's declaration at ¶99 (EX1005, p. 40),
`
`emphasis in original:
`
`"Thus, Kari 's query form represents a tokenized questionnaire as
`
`recited, and Kari and Darnell teach receiving within said handheld
`
`computing device a transmission of a tokenized questionnaire from
`
`said originating computer."
`
`However, Petitioner's reliance on Darnell's exposition re HTML 4 in combination
`
`with Kari 's foirii is demonstrably incorrect. As Patent Owner's expert states,
`
`reference to actual Nokia documents indicate that the Nokia Communicator 9000
`
`only supported HTML 2.
`
`Dr. John Hale's declaration states as follows (EX2006, ¶29-31, p. 11):
`
`Based on my research, the Nokia 9000 had a relatively primitive
`
`browser. Technical documents from Nokia indicate that the browser
`
`was HTTP 1.0 and HTML 2.0 compliant. Nokia Service Manual,
`
`RAE/RAK-1 Series Cellular Phone / Personal Digital Assistant,
`
`11
`
`
`
`IPR2018-00043
`U.S. PATENT 9,454,748
`
`EX2009. Table 3 from that reference is reproduced below (Id, at page
`
`1-8):
`
`Table 3. Other communication protocols/formats supported
`
`Application
`All interrret apps
`
`WWW
`Terminal.
`PC Connectivity
`
`Module intetcon
`nection
`Ext. serial WI
`
`Protocol
`SMTP, IMAP4, MIME1
`TCP/IP
`HTTP 1.0, HTML .0
`VT 00
`RS232, IrDA
`
`RBUS
`
`MBUS
`
`Notes
`
`JPEG, G F
`
`As such, Requestor's expert has inappropriately sought to apply the
`
`teachings of Darnell (EX1005) to those of Kari (EX1006) I.
`
`b. The Browser in Kari's Nokia 9000 Communicator Could Not
`Read GPS Information.
`
`Dr. Reddy at ¶70 (EX1007) adopts the position that Kari teaches that the
`
`browser that displays his "blank than" may also read GPS location infoilnation,
`
`i.e., "[t]he browser may also "read[] automatically the information on the location"
`
`of the device "e.g., by using GPS equipment." (Id. at 7: 60-65 (EX1006))".
`
`That statement is demonstrably wrong in at least two regards. First, it was
`
`made in reliance on the Darnell reference (EX1007) which, as discussed above, is
`
`1 Dr. Reddy also apparently believes that the Nokia 9000 Communicator device of
`Kari had Bluetooth communications capability which the table above refutes. Dr.
`Hale discusses this point in ¶31 of his Declaration, EX2006.
`
`12
`
`
`
`IPR2018-00043
`U.S. PATENT 9,454,748
`
`based on an incorrect assumption regarding the version of HTML that was
`
`supported by Kari 's Nokia device browser. See, Dr. Hale's declaration at ¶29-31,
`
`EX2006.
`
`Additionally, and even assuming for purposes of argument that Kari 's Nokia
`
`device supported HTML 4, an HTML 4 form in a standard browser could not read
`
`GPS locations from a device such as a GPS receiver. Commands to perform that
`
`function were not available in a standard HTML 4 document. See, Dr. Hale's
`
`Declaration, EX2006 at ¶33-35.
`
`As such, Petitioner's expert declaration is flawed with respect to at least this
`
`point.
`
`c.
`
`In 2001 Kari's blank form could not both be comprised of device
`independent tokens and read location information from an
`internal or external GPS receiver.
`
`Assuming for purposes of argument that Kari' s blank form represents a
`
`tokenized questionnaire as Petitioner's expert has advocated (EX1006, ¶99, page
`
`40), such a foun could not be both comprised of device independent tokens and
`
`read information from an internal or external GPS receiver.
`
`Recall that HTML was designed to be a text markup language, not a full
`
`programming environment. Petitioner's expert cites to Darnell in support this
`
`statement:
`
`13
`
`
`
`IPR2018-00043
`U.S. PATENT 9,454,748
`
`A POSITA would have understood that an Internet-type WWW
`
`[world wide web] page displayed in a WWW browser would have
`
`been written in HTML, because HTML was the standard language for
`
`the Internet and world wide web pages at the time of the '748 Patent.
`
`As explicitly described by Darnell, "HTML...is the language that puts
`
`the face on the Web." (Darnell at xxxvii (EX1007)).
`
`EX1007, ¶94, page 37. Emphasis in original.
`
`Kari states in connection with his use of an blank foil ito acquire
`
`information from the user: "One application program which has recently gained
`
`popularity is the web browser developed for the use of the Internet data network
`
`..." . Kari, EX1006, col. 3, lines 37-39.
`
`Petitioner's expert then attributes to Kari's web browser / "application
`
`program" the ability to read GPS information. Quoting from Kari, the Petitioner's
`
`expert opines that it teaches: "The browser may also "read[] automatically the
`
`information on the location" of the device "e.g., by using GPS equipment." (Id. at
`
`7: 60-65 (EX1006))." EX1005 at ¶70.
`
`However, an HTML 2 or 4 -compliant foi n in combination with a standard
`
`browser such as that advocated by Petitioner would not be capable of reading such
`
`devices without device dependent software executing on the handheld. "Assuming
`
`for purposes of argument that an HTML 2 or an HTML 4 document imports or
`
`reads location data from an external source, that could only be done through the
`
`14
`
`
`
`IPR2018-00043
`U.S. PATENT 9,454,748
`
`use of device specific software", which implies the need for device dependent
`
`commands or tokens to invoke that function. Hale Declaration ¶36 - ¶37.
`
`As such, the HTML foul" / browser combination could not be comprised of
`
`device independent tokens and acquired GPS information from an internal or
`
`external device.
`
`d. Kari' s invention if implemented in standard HTML could not
`operate according to his own stated "advantageous embodiment"
`in a loosely networked environment.
`
`Dr. Reddy conveniently ignores the issue of device independence in
`
`connection with network availability. For example, he fails to recognize that
`
`neither HTML 2 nor HTML 4 had a robust capability to handle network outages in
`
`a loosely networked environment as is required by every claim of the instant patent
`
`and preferred by Kari.
`
`As Petitioner's expert indicated in his declaration at ¶94 quoted above,
`
`HTML was intended originally to be a text markup language. With respect to
`
`HTML 4 (and even more so with respect to HTML 2), if an HTML form included
`
`a "SEND" command that required infonnation to be transmitted to a server and the
`
`network was not available, the program print an error message and then move to
`
`the next line of HTML. Hale Declaration EX2006, ¶40. There is no facility in
`
`HTML 2 or 4 for error trapping of the sort required to sense a network outage and
`
`15
`
`
`
`take alternative action, e.g., loop and retest until the network is available again. Id.
`
`IPR2018-00043
`U.S. PATENT 9,454,748
`
`at ¶41.
`
`As such and turning now to Kari' s Figs. 3A and 3B, Dr. Hale states that
`
`based on his education and experience that none of the following steps in that
`
`figure could be performed by an HTML 2 or 4 compliant browser.
`
`Forms that are displayed by HTML 2 or 4 browsers could not read an
`
`INI file (308), add location and route information to the contents of
`
`the INI file (309), set a time flag (311), try to re-establish connection
`
`(312), branch and take different actions depending on whether or not
`
`communications had been re-established (313-316).
`
`Hale Declaration ¶40.
`
`Thus, Kari 's "advantageous embodiment" cannot be implemented in HTML
`
`2 or 4 in a standard browser. Hale Declaration at ¶43 - ¶44.
`
`e. Dr. Reddy's statements about "hidden questions" obscure the fact
`that a standard HTML form / browser combination cannot be
`used to obtain GPS information from the local system.
`
`Dr. Reddy asserts in his declaration at ¶96, p. 38, italics in original,
`
`underlining added.:
`
`Further, as mentioned above, a hidden question could be used for
`
`location information, as taught by Darnell in the section describing
`
`the "hidden value of the type attribute" which "allows you to submit
`
`form information that's invisible to the user," for example, if the
`
`query form of Kari were to automatically collect GPS location
`
`information. (Darnell at 241 (EX1007)).
`
`16
`
`
`
`IPR2018-00043
`U.S. PATENT 9,454,748
`
`Significantly, Dr. Reddy has failed to explain exactly how an HTML 2 or 4
`
`form could use a "hidden question" to acquire such information in a device
`
`independent manner. Since Petitioner's expert has identified only one "application
`
`program" in Kari (the browser), presumably that is the one that is intended in the
`
`following statement from his declaration which provides additional infounation
`
`regarding the function of "hidden questions":
`
`[H]owever, if the application program [browser] reads automatically
`
`the information on the location, a hidden question may be used to
`
`instruct the application program [browser] to read the infottnation on
`
`the location.
`
`EX1005, ¶101, emphasis added.
`
`As discussed previously, a standard HTML 2 or 4 browser is incapable of
`
`reading information from a GPS receiver. Hale Declaration at ¶32.
`
`However, if Patentee contends that Kari is actually using a machine specific
`
`application program separate from the browser, then the previous quote concedes
`
`that an HTML 4 form cannot read a GPS receiver in a device independent manner,
`
`i.e., Kari 's form cannot be both device independent and read GPS information.
`
`Instead, it must be assisted by an "application program" which, would be a
`
`program running on Kari 's search tettninal separate from the HTML blank form
`
`17
`
`
`
`IPR2018-00043
`U.S. PATENT 9,454,748
`
`that was used to acquired user information. That "program", likely a compiled
`
`program, of course, would be customized for the particular device on which it ran
`
`so that it could interact with the GPS hardware to acquire location information.
`
`Hale's Declaration, EX2006 at ¶36.
`
`As such, Dr. Reddy's implication that Kari used HTML to create a device
`
`independent tokenized questionnaire according to the '748 patent that would be
`
`operable in a loosely networked environment is not supported by Kari or Kari in
`
`combination with Darnell.
`
`VI. No Reference or Combination of References Renders Obvious any
`Claim of the '748 Patent when that Claim is Properly Construed and
`the Prior Art is Correctly Interpreted
`
`For at least the reasons set out above, claims 16-19 and 21-22 are believed to
`
`be patentable over Kari alone and/or Kari in view of Darnell, Todd, and/or Chan.
`
`Patentee will begin with a discussion of Claim 19, as did the Board in its
`
`Decision.
`
`a. Claim 19 is not obvious in view of Kari and/or Kari in combination
`with any of Darnell, Chan, and/or Todd.
`
`As Dr. Hale has pointed out, it is not possible for POSITA with a knowledge
`
`of Kari and any combination of the references identified above to create a
`
`questionnaire using HTML and a standard browser that is both comprised device
`
`18
`
`
`
`IPR2018-00043
`U.S. PATENT 9,454,748
`
`independent tokens and satisfies each of the limitations of this claim. Hale
`
`Declaration, EX1006, ¶37.
`
`As a threshold matter, Dr. Hale notes that Petitioner's expert has
`
`inexplicably assumed the wrong version of HTML for Kari 's handheld device, i.e.,
`
`the Nokia 9000 Communicator. Hale Declaration EX2006, at ¶31. As is explained
`
`fully in his declaration and summarized above, the Nokia 9000 Communicator
`
`supports a relatively primitive browser that is only HTML 2.0 compatible. Id. at
`
`¶30. Thus, Petitioner's use of Darnell in combination of Kari in connection with
`
`claim limitations 19.2.1 and 19.2.3, fails per se.
`
`Note that limitations 19.2.1 and 19.2.3 of claim 19 are critical to Petitioner's
`
`case:
`
`[19.2.1] (b) receiving within said handheld computing device a transmission
`
`of a tokenized questionnaire from said originating computer, ...,
`
`[19.2.3] said tokenized questionnaire comprising a plurality of device
`
`independent tokens;
`
`A POSITA who sought to implement the invention of the '748 patent given Kari
`
`would not look to Darnell as a reference because the Kari 's device did not support
`
`the version of HTML taught in that reference.
`
`19
`
`
`
`IPR2018-00043
`U.S. PATENT 9,454,748
`
`Because Petitioner has failed to provide a single reference or valid
`
`combination of references that teaches or suggests these claim limitations, for this
`
`reason alone, claim 19 should be confirmed as patentable.
`
`However, and assuming for purposes of argument only that HTML 2 and
`
`HTML 4 are identical in their implementations and that a HTML 2 browser can
`
`display, without modification, a HTML 4 form, Petitioner has failed to present a
`
`prima facie case of obviousness of any independent claim with respect to Kari
`
`and/or Kari in combination with Darnell, Chan, and/or, Todd at least for the
`
`reasons set out below.
`
`1. No single reference or combination of references teaches
`performing limitation [19.7] in a device independent
`manner.
`
`[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;
`
`Claim 19 requires, among others, that the questionnaire be comprised of
`
`device independent tokens ([19.2.3]) which Petitioner's expert has stated
`
`correspond to HTML "tags". Reddy Declaration EX1005, ¶99. Assuming for
`
`purposes of argument this is correct, limitation [19.7] cannot be coded in a device
`
`independent manner using standards-based HTML tags and browser. Hale
`
`Declaration, EX2006, ¶36-¶37.
`
`20
`
`
`
`IPR2018-00043
`U.S. PATENT 9,454,748
`
`As discussed previously, neither HTML 2 or 4 had the capability of reading
`
`from a device such as a GPS receiver. Hale Declaration, EX2006, ¶34135.
`
`Neither Chan nor Todd mentions HTML, browsers, or device independence
`
`in connection with any of its embodiments. As such, the POSITA in possession of
`
`Kari and seeking to solve the problem in the '748 patent would have no reason to
`
`look to Todd, Chan, and/or Darnell, even assuming there was a motivation to
`
`combine such references at least because none of these references teaches how to
`
`read a GPS receiver in a device independent fashion using HTML.
`
`It is fundamental that "obviousness requires a suggestion of all limitations in
`
`a claim." CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir.
`
`2003) (citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)).
`
`As such, and at least for the reasons set out above, claim 19 is not obvious in
`
`view of Kari standing alone or in any combination of the other references of
`
`record.
`
`2.
`
`Karl's invention was not implemented in a device
`independent manner and there was no motivation for a
`POSITA to take that step in solving the problems of the
``748 patent absent hindsight.
`
`Petitioner's apparent characterization of Kari as a reference that implements
`
`an invention in a device independent manner using HTML is mistaken. Dr. Hale
`
`confirms that Kari 's various embodiments might have used HTML for form
`
`generation purposes, Kari 's approach would also need access to system specific
`
`21
`
`
`
`IPR2018-00043
`U.S. PATENT 9,454,748
`
`routines to implement many of the steps listed in Figs. 3A and 3B of that reference
`
`(EX1006) including routines for reading an INI file (Kari box 308), adding
`
`location and route infoiiiiation to the contents of the INI file (Kari box 309),
`
`setting a time flag (Kari box 311), trying to re-establish connection (Kari box 312),
`
`and branching and taking different actions depending on whether or not
`
`communications had been re-esta
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
