`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
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`device independent tokens and acquired GPS information from an internal or
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`external device.
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`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
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`connection with network availability. For example, he fails to recognize that
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`neither HTML 2 nor HTML 4 had a robust capability to handle network outages in
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`a loosely networked environment as is required by every claim of the instant patent
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`and preferred by Kari.
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`As Petitioner's expert indicated in his declaration at ¶94 quoted above,
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`HTML was intended originally to be a text markup language. With respect to
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`HTML 4 (and even more so with respect to HTML 2), if an HTML form included
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`a "SEND" command that required infonnation to be transmitted to a server and the
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`network was not available, the program print an error message and then move to
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`the next line of HTML. Hale Declaration EX2006, ¶40. There is no facility in
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`HTML 2 or 4 for error trapping of the sort required to sense a network outage and
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`15
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`take alternative action, e.g., loop and retest until the network is available again. Id.
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`at ¶41.
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`As such and turning now to Kari' s Figs. 3A and 3B, Dr. Hale states that
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`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
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`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).
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`Hale Declaration ¶40.
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`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,
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`underlining added.:
`
`Further, as mentioned above, a hidden question could be used for
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`location information, as taught by Darnell in the section describing
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`the "hidden value of the type attribute" which "allows you to submit
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`form information that's invisible to the user," for example, if the
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`query form of Kari were to automatically collect GPS location
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`information. (Darnell at 241 (EX1007)).
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`16
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`Significantly, Dr. Reddy has failed to explain exactly how an HTML 2 or 4
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`form could use a "hidden question" to acquire such information in a device
`
`independent manner. Since Petitioner's expert has identified only one "application
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`program" in Kari (the browser), presumably that is the one that is intended in the
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`following statement from his declaration which provides additional infounation
`
`regarding the function of "hidden questions":
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`[H]owever, if the application program [browser] reads automatically
`
`the information on the location, a hidden question may be used to
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`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.
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`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.
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`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
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`17
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`that was used to acquired user information. That "program", likely a compiled
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`program, of course, would be customized for the particular device on which it ran
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`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
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`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
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`18
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`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
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`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.
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`20
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`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
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`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