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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.
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`Petitioner
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`- vs. -
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`FALL LINE PATENTS, LLC
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`Patent Owner
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`———————
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`IPR2018-00043
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`U.S. Patent 9,454,748
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`PETITIONER’S REPLY
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`TO PATENT OWNER’S RESPONSE
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`Petitioner’s Reply
`IPR2018-00043 (U.S. Patent 9,454,748)
`TABLE OF CONTENTS
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`3.
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`4.
`5.
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`6.
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`Introduction ...................................................................................................... 1
`I.
`Patent Owner’s Claim Construction is Irrelevant ............................................ 1
`II.
`III. The Evidence Establishes that Every Challenged Claim is Unpatentable. ...... 2
`A.
`Patent Owner’s Attacks on Dr. Reddy’s Declaration Are
`Unfounded ............................................................................................. 3
`Kari is Not Limited to HTML 2 ................................................. 3
`1.
`Kari Explicitly Describes that its Browser Reads GPS
`2.
`Information .................................................................................. 6
`Kari’s Blank Form is HTML, and Could Read GPS
`Information .................................................................................. 9
`The Claims Do Not Exclude “Device Dependent Software” ... 11
`The Claims Do Not Require a “Loosely Networked”
`Environment. ............................................................................. 14
`The Hidden Question is One Example of Automatically
`Collecting Location Information, and the Combined
`Teachings Render the Claims Obvious. .................................... 15
`Claims 16–19 and 21–22 Are Obvious over the Combinations
`Presented in the Petition ...................................................................... 17
`Claim 19 is Obvious over the Combination of Kari, Darnell,
`1.
`Chan, and Todd. ........................................................................ 18
`The Remaining Claims Fall with Claim 19. ............................. 21
`2.
`IV. Conclusion ...................................................................................................... 22
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`B.
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`-ii-
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`I.
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`Introduction
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`Petitioner’s Reply
`IPR2018-00043 (U.S. Patent 9,454,748)
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`Petitioner submits this reply to Patent Owner’s Response (“POR”) filed June
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`26, 2018 (Paper 9). The Petition conclusively establishes, by a preponderance of
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`the evidence, that all challenged claims are unpatentable. Patent Owner’s
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`Response is a transparent attempt to distract the Board from issues of actual
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`relevance in this case. For example, Patent Owner seeks to construe terminology
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`that is not recited in any challenged claim. Further, Patent Owner’s arguments are
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`based on erroneous premises that are plainly inconsistent with a POSITA’s
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`understanding of the technology, the evidentiary record, and, indeed, the claim
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`language itself. Finally, Patent Owner presents arguments that are at odds with
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`fundamental principles of obviousness.
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`In short, the Patent Owner Response provides nothing to lead the Board
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`away from its initially-correct findings in the Institution Decision. None of Patent
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`Owner’s contentions are persuasive. The Board should confirm its findings in the
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`Institution Decision that the combination of Kari, Darnell, Chan, and Todd teaches
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`each and every limitation of challenged claims 16–19 and 21–22 and that a
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`POSITA would have combined the references. Petitioner respectfully requests a
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`final written decision cancelling all challenged claims as unpatentable.
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`II.
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`Patent Owner’s Claim Construction is Irrelevant
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`Patent Owner proposes a construction for the term “loosely networked,”
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`Petitioner’s Reply
`IPR2018-00043 (U.S. Patent 9,454,748)
`alleging that the definition of such a term is “critical to the understanding of the
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`’748 Patent.” POR at 3–5.1 The Board should reject Patent Owner’s proposed
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`construction. The term “loosely networked” is not recited in any challenged claim.
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`Thus, there is no reason to construe the term “loosely networked,” nor would
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`construction of this term resolve any dispute as to patentability. See Nidec Motor
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`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir.
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`2017) (holding that construction of a term is not necessary where the construction
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`is not relevant to the dispute).
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`III. The Evidence Establishes that Every Challenged Claim is Unpatentable.
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`Contrary to Patent Owner’s allegations, the combination of Kari, Darnell,
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`Chan, and Todd teaches each and every limitation of claims 16–19 and 21–22, and
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`a POSITA would have found it obvious to combine the references. Patent Owner’s
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`arguments lack technical and legal merit, and fail to appreciate the combined
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`teachings of the references.
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`1 Patent Owner asserts that the “entire contents” of the Preliminary Response are
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`incorporated by reference, which is not permitted under 37 C.F.R. § 42.6(a)(3).
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`Any arguments not raised in the Patent Owner Response are therefore waived.
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`Paper 7 (“Scheduling Order”), at 3.
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`Petitioner’s Reply
`IPR2018-00043 (U.S. Patent 9,454,748)
`Patent Owner’s Attacks on Dr. Reddy’s Declaration Are
`Unfounded
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`A.
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`As the Board recognized earlier, Dr. Reddy’s testimony provides persuasive
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`evidence that the asserted references teach each and every limitation of the
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`challenged claims. See Institution Decision (Paper 6) at 27–46. Although Patent
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`Owner presents a number of arguments addressed below in its attempt to cast
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`doubt on Dr. Reddy’s opinion, the Board should reject each of these technically
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`and legally unsound arguments, and properly credit Dr. Reddy’s technical analysis.
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`See Elbit Sys. of America, LLC v. Thales Visionix, 881 F.3d 1354, 1358 (Fed. Cir.
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`2018) (“The PTAB [i]s entitled to weigh the credibility of the witnesses.”)
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`1.
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`Kari is Not Limited to HTML 2
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`Patent Owner’s first argument requires the Board to accept two false
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`premises: (1) that the teachings of Kari’s disclosure are fundamentally limited to
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`the Nokia 9000 Communicator (they are not); and (2) that HTML tags for forms
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`only existed in HTML 4 (forms were present in HTML from HTML 1.0). POR at
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`11–12. Both arguments are specious.
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`First, Patent Owner asserts that “the Nokia Communicator 9000 only
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`supported HTML 2” and, based on this contention, alleges that the teachings of
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`Darnell cannot be combined with those of Kari. POR at 11. Kari states that “[a]
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`device suitable for the search terminal 1 is Nokia 9000 Communicator,” but in no
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`way would a POSITA understand Kari to be limited to only that implementation.
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`Petitioner’s Reply
`IPR2018-00043 (U.S. Patent 9,454,748)
`Kari (EX1006), 3:11–17; Reddy Reply Decl. (EX1021), at ¶¶ 10–11. Further,
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`although Kari was filed in 1997, the scope and content of the prior art are
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`evaluated at the time of the earliest effective filing date of the challenged claims
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`(see 35 U.S.C. § 103), here, 2002,2 and a prior art reference is considered for all
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`that it teaches: “[t]he use of patents as references is not limited to what the
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`patentees describe as their own inventions or to the problems with which they are
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`concerned. They are part of the literature of the art, relevant for all they contain.”
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`In re Heck, 699 F.2d 1331, 1332–33 (Fed. Cir. 1983). Patent Owner does not
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`contend that HTML 4 was unavailable on mobile devices in August 2002, nor can
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`it make such a contention. A POSITA would have recognized that HTML 4 could
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`be used for webpages presented on mobile devices: for example, the World Wide
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`Web Consortium, in 1999, published a document entitled “HTML 4.0 Guidelines
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`for Mobile Access,” which provided guidelines for using the HTML 4
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`2 As explained in the Petition, Petitioner assumes a priority date of August 19,
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`2002, the filing date of U.S. Provisional Application No. 60/404,491. Pet. 8.
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`Petitioner does not, however, concede that the challenged claims are entitled to the
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`priority date of the provisional application, or the January 1, 2002 date of alleged
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`conception. Patent Owner has not presented evidence in this proceeding to
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`establish that each challenged claim is entitled to the priority date of the
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`provisional application or the conception date.
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`Petitioner’s Reply
`IPR2018-00043 (U.S. Patent 9,454,748)
`Specification on devices like PDAs and mobile phones. Reddy Reply Decl.
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`(EX1021), at ¶¶ 12–13 (citing HTML 4.0 Note (EX1023)).3 The Board should
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`reject Patent Owner’s first argument and find that the teachings of Kari and
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`Darnell remain combinable as set forth in the Petition’s analysis of limitations
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`[19.2.1] and [19.2.3]. Petition at 21–27.
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`Further, even if Kari were artificially limited to teaching devices that only
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`supported HTML 2, that artifice would be irrelevant to the question of obviousness
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`of the challenged claims. The Petition relied on Darnell as teaching HTML forms
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`(see Petition at 21–23, limitation [19.2.1]), and Darnell explains that “HTML 1.0”
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`which was released in 1992, “introduced forms, which make it possible for authors
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`to have input fields on their nodes that allow feedback from users and open the
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`door to considering interaction…” Darnell (EX1007), at 23, 232; Petition at 15,
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`22; Reddy (EX1005), at ¶ 95. Thus, forms, and the tags for those forms, were
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`3 HTML 4.0 Note (EX1023) is not relied upon to supplement the grounds of
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`challenge presented in the Petition. Rather, the HTML 4.0 Note is presented to
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`show the state of the art as of the alleged priority date of the ’748 patent, in
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`response to Patent Owner’s arguments (POR at 11–12). See, e.g., Genyzme
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`Therapeutic Prods. Ltd. P’ship v. Biomarin Pharm. Inc., 825 F.3d 1360, 1366–67
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`(the Board may consider prior art documents not submitted with the petition to
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`show the state of the art at the time of the alleged invention).
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`Petitioner’s Reply
`IPR2018-00043 (U.S. Patent 9,454,748)
`present even in the HTML version to which Patent Owner seeks to artificially limit
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`Kari’s teachings, and a POSITA would have understood that the form tags present
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`in HTML 1.0 were incorporated into later versions of HTML, like HTML 2 and
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`HTML 4. Reddy Reply Decl. (EX1021), at ¶¶ 14–15. And it is not contested that
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`HTML 2, the version of HTML that Patent Owner admits is supported by Kari’s
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`browser, was device-independent, just like HTML 4.
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`Thus, Patent Owner’s argument that Kari is limited to HTML 2 is incorrect,
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`and does not impact the weight afforded to Dr. Reddy’s declaration.
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`2.
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`Kari Explicitly Describes that its Browser Reads GPS
`Information
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`Patent Owner’s next argument requires the Board to ignore the explicit
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`language in Kari in favor of unsupported testimony of its expert.4 Specifically,
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`Patent Owner contends that the browser in the Nokia 9000 Communicator could
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`not read GPS information. POR at 12–13.
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`However, as noted above, Kari is not limited to the Nokia 9000
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`Communicator. And in any event, Kari specifically discloses that the “application
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`program reads automatically the information on the location. . . [and] the
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`information on the location can be determined e.g. by using GPS equipment.”
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`4 See 37 C.F.R. 42.65(a) (“Expert testimony that does not disclose the underlying
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`facts or data on which the opinion is based is entitled to little or no weight.”).
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`Petitioner’s Reply
`IPR2018-00043 (U.S. Patent 9,454,748)
`Kari (EX1006), at 7:60–64; Petition at 14, 34 (discussing limitation [19.7]), 44;
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`Reddy (EX1005), at ¶¶ 136–137, 174–176. Earlier, Kari states that “[o]ne
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`application program which has recently gained popularity is the web browser…”
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`Kari (EX1006), at 3:37–38; Petition at 25–26 (referencing Kari’s disclosure of
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`web browsers); Reddy (EX1005), ¶ 106. Further, as discussed in the Institution
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`Decision, the Board recognized that “Petitioner’s interpretation that Kari’s device
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`can use the user’s GPS location instead of manual location input is supported by
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`the evidence.” Institution Decision, at 38 (citing Kari at 7:11–14 and 7:60–67).
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`Dr. Reddy cited these explicit teachings of Kari in his description of the
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`reference at paragraph 70 of his declaration, but Patent Owner inexplicably states
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`that the statement is “wrong” because “it was made in reliance on the Darnell
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`reference.” POR at 12–13. But contrary to Patent Owner’s argument, Dr. Reddy
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`did not rely on Darnell to make this statement; he explained the teachings of Kari
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`in the section titled “Background on Kari,” which includes paragraph 70 of his
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`declaration. Reddy (EX1005), at 26–27. Other than arguing that the statement is
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`“wrong,” Patent Owner provides no evidence to contradict the express language of
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`Kari, and as a result, its contentions are simply unsupported.5
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`5 Although Patent Owner relies on ¶¶ 29–31 of the Hale Declaration in the
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`sentence spanning pages 12–13 of the Patent Owner Response, Patent Owner does
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`Petitioner’s Reply
`IPR2018-00043 (U.S. Patent 9,454,748)
`Then, Patent Owner contends (contrary to Kari’s explicit text) “an HTML 4
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`form in a standard browser could not read GPS locations.” POR at 13 (citing Hale
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`Declaration (EX2006), at ¶¶ 33–35. Specifically, Dr. Hale contends that “[n]either
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`the HTML 2 nor the HTML 4 standard provided any mechanism for reading a
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`serial port / interface or bus connected device,” and that “GPS location information
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`would have been available only through a hardware connection…most likely [in]
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`the form of a serial link.” Hale Declaration (EX2006), at ¶¶ 33–34. But these
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`statements have no support in any evidence of record and thus are entitled to little
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`or no weight. See 37 C.F.R. § 42.65(a). Further, Patent Owner ignores the
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`evidence submitted with the Petition confirming that mobile devices had internal
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`GPS receivers within them prior to the time of the ’748 Patent. See Petition at 18–
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`19 (citing Twitchell (EX1014) at FIG. 3; Darnell ’736 (EX1015) at FIG.s 4-5;
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`Reddy (EX1005), ¶ 86); see also Reddy Reply Decl. (EX1021), at ¶¶ 16–18, citing
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`Kalb (EX1022) (describing Benefon Esc as having “a built-in satellite navigation
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`system based on the Global Positioning System (GPS)”).6 Finally, as confirmed by
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`not do so to refute the express teachings of Kari as discussed in ¶ 70 of Dr.
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`Reddy’s declaration.
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`6 Kalb (EX1022) is submitted to show the state of the art at the time of the alleged
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`invention, in response to Patent Owner’s arguments (POR at 13). See Genzyme,
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`825 F.3d at 1366-67, supra, n. 3
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`Petitioner’s Reply
`IPR2018-00043 (U.S. Patent 9,454,748)
`the reference’s explicit disclosure, Kari teaches that a browser automatically reads
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`location information using GPS equipment (Kari (EX1006), at 7:60–64; Petition at
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`34, 44, 45), and Patent Owner’s failure to provide any evidence to the contrary
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`shows that it cannot overcome the express teachings of the references.
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`3.
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`Kari’s Blank Form is HTML, and Could Read GPS
`Information
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`Patent Owner further alleges that Kari’s form “could not be both comprised
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`of device independent tokens and read information from an internal or external
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`GPS receiver.” POR at 13; id. at 14–15. Patent Owner is incorrect. Again, Patent
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`Owner’s argument is premised on ignoring Kari’s explicit disclosure and the
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`technical knowledge of a POSITA. See Petition at 14, citing Kari (EX1006) at
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`6:43–49, 6:63–66 (describing Kari’s teachings of a blank form designed as a
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`WWW page); see also Kari (EX1006) at 7:60–64 (describing Kari’s browser
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`reading GPS information); Darnell (EX1007), at 16 (describing platform-
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`independent nature of HTML).
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`In the context of teaching the claim limitations reciting receiving…a
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`transmission of a tokenized questionnaire (limitation [19.2.1]) and using said GPS
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`to automatically obtain said location identifying information (limitation [19.7]),
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`Kari discloses a blank form rendered in a browser, and states that the “application
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`program reads automatically
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`the
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`information on
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`the
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`location…[and]
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`the
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`information on the location can be determined e.g. by using GPS equipment.”
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`Petitioner’s Reply
`IPR2018-00043 (U.S. Patent 9,454,748)
`Kari (EX1006), at 7:60–64; Petition at 14, 34, 43–45; Reddy (EX1005), at ¶¶ 136–
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`137, 168–170. Earlier, Kari states that “[o]ne application program which has
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`recently gained popularity is the web browser…” Kari (EX1006), at 3:37–38;
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`Petition at 25–26; Reddy (EX1005), at ¶ 106.
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`Patent Owner alleges that reading information on the location using the GPS
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`equipment in Kari would require “device dependent software” executing on the
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`handheld. POR at 14. Even if that were true, it does not change the fact that the
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`HTML form itself (i.e., the recited tokenized questionnaire of limitation [19.2.1])
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`is comprised of device independent tokens as recited and analyzed in limitation
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`[19.2.3], including the question requesting location information of [19.2.2]. See
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`Petition at 25 (describing the combination of Kari and Darnell teaching a
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`questionnaire comprised of “device independent tokens,” with reference to Darnell
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`(EX1007) at 16); Reddy (EX1005), at ¶ 104; Reddy Reply Decl. (EX1021), at ¶¶
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`19–22. A POSITA would have understood each question in an HTML document
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`to be comprised of device independent HTML tags. Reddy Reply Decl. (EX1021),
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`at ¶¶ 22–24. Thus, even if the claims required the question requesting location
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`information to be device independent, Kari and Darnell, as the Petition
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`established, teach the limitations. Petition at 21–26, citing Kari (EX1006) at 6:47–
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`49, 6:64–7:6, 7:11–14, 7:60–65, Darnell (EX1007), at xxxvii, 232, 234, 241, 16, 5,
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`Reddy (EX1005), at ¶¶ 91–109.
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`Petitioner’s Reply
`IPR2018-00043 (U.S. Patent 9,454,748)
`The Claims Do Not Exclude “Device Dependent Software”
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`4.
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`Additionally, Patent Owner’s argument about “device dependent software”
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`is inconsistent with the scope of the challenged claims. Patent Owner’s argument
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`is predicated on improperly construing the claims to implicitly exclude the use of
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`“device dependent software,” and require features that are not recited in the claims.
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`In particular, Patent Owner seeks to insinuate a construction of the challenged
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`claims that would require device independence for a tokenized question that reads
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`location information or GPS coordinates. POR at 14–15 (arguing against the
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`references, Patent Owner alleges that Kari “…implies the need for device
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`dependent commands or tokens to invoke that function.”) (emphasis added).
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`Patent Owner is incorrect for two reasons. First, as noted in Section III.A.3, the
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`combination of Kari and Darnell teaches the features of the challenged claims
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`even under the narrower construction that Patent Owner insinuates, but cannot
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`expressly advocate.
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`Second, the challenged claims do not, in fact, exclude the features that
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`Patent Owner alleges are “implie[d]” by the prior art. In addition to the
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`combination
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`teaching a device
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`independent question requesting
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`location
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`information, each challenged claim encompasses within its scope both that (1)
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`device dependent actions can occur, and (2) the question requesting location
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`information or GPS coordinates is “device dependent.” In Kari, the WWW
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`Petitioner’s Reply
`IPR2018-00043 (U.S. Patent 9,454,748)
`browser would receive the HTML form comprised of device independent tokens,
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`and the browser, or an underlying operating system, in response to those device
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`independent tokens, would (if necessary) undertake actions that are device-
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`dependent (e.g., rendering display elements on a screen). Reddy Reply Decl.
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`(EX1021), at ¶¶ 22–24. But any device-dependent operations are not inconsistent
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`with what the open-ended, “comprising” claims require. Specifically, the use of
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`“device dependent software” or “device specific software” is not excluded by the
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`claim language or the specification. Indeed, at some level, device dependent
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`software (e.g., an application compiled for a particular operating system, like the
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`’748 Patent’s OIS) would be required in any specific mobile device operating
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`under the challenged claims or otherwise. For example, in Kari, the WWW
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`browser executing on the search terminal may have been device-dependent, but it
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`would have received and displayed HTML webpages comprised of device
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`independent tokens. Reddy Reply Decl. (EX1021), at ¶¶ 24–27. Thus, nothing in
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`the claims or Specification excludes the use of device dependent or device specific
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`software.
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`Patent Owner’s attempt to read additional limitations into the claim should
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`also be rejected because the arguments have no basis in the claim language itself.
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`For instance, claim 16 recites “receiving…a transmission of a tokenized
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`questionnaire including at least one question requesting GPS coordinates, said
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`Petitioner’s Reply
`IPR2018-00043 (U.S. Patent 9,454,748)
`tokenized questionnaire comprising a plurality of device independent tokens.”
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`Thus, claim 16 does not require that the “question requesting GPS coordinates” be
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`“device independent,” only that the “tokenized questionnaire” include “device
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`independent tokens.” See Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501
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`(Fed. Cir. 1997) (“Comprising is a term of art used in claim language which means
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`that the named elements are essential, but other elements may be added and still
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`form a construct within the scope of the claim.”); Reddy Reply Decl. (EX1021), at
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`¶ 29.
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`Likewise, claim 19 recites “receiving…a transmission of a tokenized
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`questionnaire from said originating computer, said tokenized questionnaire
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`including at least one question requesting location information, said tokenized
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`questionnaire comprising a plurality of device independent tokens.” Likewise,
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`claim 19 does not require that the “question requesting location information” be a
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`device independent token, only that the “tokenized questionnaire” includes a
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`plurality of such “device independent tokens.” Reddy Reply Decl. (EX1021), at ¶
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`30.
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`Finally, claim 21 recites “receiving…a transmission of a tokenized
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`questionnaire, including at least one question requesting GPS coordinates…said
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`tokenized questionnaire comprising a plurality of device independent tokens.”
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`Again, claim 21 does not require that the “question requesting GPS coordinates” be
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`Petitioner’s Reply
`IPR2018-00043 (U.S. Patent 9,454,748)
`a device independent token, only that the “tokenized questionnaire” includes a
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`plurality of such “device independent tokens.” Reddy Reply Decl. (EX1021), at
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`¶ 31.
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`Thus, not only does the combination teach that the question requesting
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`location information is “device independent” under Patent Owner’s narrower
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`interpretation, but in addition, the combination teaches receiving a question
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`requesting location information according to the correct construction of the claim,
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`as discussed in Section III.A.3.7 Patent Owner is incorrect in both scenarios.
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`5.
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`The Claims Do Not Require a “Loosely Networked”
`Environment.
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`As discussed above in Section II, Patent Owner’s proposed construction of
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`the term “loosely networked” is irrelevant because the claims do not actually recite
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`the term. Cf. POR at 3–5.
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`Later in its Response, Patent Owner again seeks to import a “loosely
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`networked” requirement into the challenged claims in attempting to exclude Kari’s
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`disclosure from HTML 2 or HTML 4. See POR at 15–16. But there is simply no
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`basis to do so. Patent Owner alleges that Kari would not operate in such a “loosely
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`networked environment” because “[t]here is no facility in HTML 2 or 4 for error
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`7 Patent Owner’s interpretation would be incorrect under either the broadest
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`reasonable interpretation standard or the district court claim construction standard.
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`Petitioner’s Reply
`IPR2018-00043 (U.S. Patent 9,454,748)
`trapping of the sort required to sense a network outage and take alternative action,
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`e.g., loop and reset until the network is available again.” Id. (citing Hale
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`Declaration (EX2006), at ¶ 41). Patent Owner’s argument is irrelevant to the
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`challenged claims. Neither “error trapping” nor “sens[ing] a network outage and
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`tak[ing] alternative action” appear within the language of the challenged claims.
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`But cf. Id. Simply stated, the term “loosely networked” is not recited in any of the
`
`challenged claims, and accordingly, the construction of “loosely networked” is not
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`“critical to the understanding” of the challenged claims, despite Patent Owner’s
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`transparent attempt to import entirely unexpressed limitations. Cf. POR at 4; see
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`also Section II, supra.
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`Finally, even if the claim were somehow interpreted to require such a
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`“loosely networked” environment, Kari teaches a process in which it can loop and
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`retest until a network connection is available, as Patent Owner acknowledges, in
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`Figure 3B (e.g., step 312, “Try to Re-Establish Connection.”) Kari (EX1006), at
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`FIG. 3B; POR at 16 (discussion of disclosure of Figure 3B of Kari). Thus, Patent
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`Owner’s irrelevant attack on Kari should not affect the weight afforded to Dr.
`
`Reddy’s testimony.
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`6.
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`The Hidden Question is One Example of Automatically
`Collecting Location Information, and the Combined
`Teachings Render the Claims Obvious.
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`Finally, Patent Owner attempts again to deflect from the teachings of the
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`-15-
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`Petitioner’s Reply
`IPR2018-00043 (U.S. Patent 9,454,748)
`references to suggest some flaw in Dr. Reddy’s explanation of the “hidden
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`
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`question” in Darnell. POR at 16–18. As discussed above in Section III.A.4, the
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`language of claims 16, 19, and 21 does not require that the location question is
`
`device independent. But still, a browser could read the location information, as
`
`Kari itself teaches. Kari (EX1006), at 7:60–64; Petition at 14, 34, 43–45; Reddy
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`(EX1005), at ¶¶ 136–137, 168–170. Patent Owner again improperly reads
`
`extraneous requirements into the claims, none of which actually require reading a
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`GPS receiver in a device independent manner.
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`Patent Owner also erroneously characterizes the technology and the cited
`
`combination. The HTML blank form is used to acquire information, and it is
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`rendered in a web browser. Kari (EX1006), 6:43–49, 6:63–66, 7:9–11, 3:37–41;
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`Petition at 14; Reddy Reply Decl. (EX1021), at ¶ 24. The same blank form can be
`
`read by multiple different web browsers on different devices, because HTML is
`
`device independent, but the browser on each device might be different. Reddy
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`Reply Decl. (EX1021), at ¶ 24. Each browser knows how to access the hardware
`
`of the device to read data, such as location information. Id. The operating
`
`instruction system (“OIS”) of the ’748 Patent would operate in a similar manner.
`
`Id. at ¶ 25. Thus, requiring device independence as Patent Owner argues would be
`
`inconsistent with its own disclosure. Id. at ¶¶ 22–27.
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`Further, these arguments are mere rehashes of the previous arguments
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`-16-
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`Petitioner’s Reply
`IPR2018-00043 (U.S. Patent 9,454,748)
`addressed above, and to summarize: Kari teaches that a browser can automatically
`
`
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`read location information. Kari (EX1006), at 7:60–64; Petition at 14, 34, 43–45;
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`Reddy (EX1005), at ¶¶ 134–139. There is no indication in Kari that its browser is
`
`anything other than a standard browser capable of reading and interpreting HTML,
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`the standardized language of the World Wide Web, and Kari describes the browser
`
`as a “WWW browser.” Kari (EX1006), at 6:63–66; Darnell (EX1007), at xxxvii
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`(HTML “is the language that puts the face on the web.”) Thus, Kari (in
`
`combination with the other references of record) teaches all claim limitations, and
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`the weight afforded to Dr. Reddy’s testimony should not be affected by Patent
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`Owner’s arguments.
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`B. Claims 16–19 and 21–22 Are Obvious over the Combinations
`Presented in the Petition
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`Having presented its incorrect arguments against the individual references
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`and Dr. Reddy’s declaration, Patent Owner goes through a claim-by-claim
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`analysis, but merely rehashes again its previous arguments that are simply
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`insufficient to overcome the clear case of obviousness of the claims set forth in the
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`Petition.
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`-17-
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`Petitioner’s Reply
`IPR2018-00043 (U.S. Patent 9,454,748)
`Claim 19 is Obvious over the Combination of Kari, Darnell,
`Chan, and Todd.
`
`1.
`
`a)
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`Kari and Darnell teach limitation [19.7], using said
`GPS to automatically obtain said location identifying
`information… as recited
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`For the reasons set forth above, Patent Owner’s argument regarding the
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`version of HTML supported by Kari, and the teachings of the references with
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`regard to the obtaining of location information from a GPS, are contradicted by the
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`claim language and the knowledge of a POSITA. POR at 18–20; Petition at 21–
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`27, 33–34; Reddy (EX1005), at ¶¶ 91–109, 134–139. Accordingly, Patent
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`Owner’s arguments are insufficient to rebut Petitioner’s grounds of unpatentability
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`for claim 19. Simply put, a POSITA would have found it obvious to combine Kari
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`and Darnell at the time of the ’748 Patent. Reddy (EX1005), at ¶¶ 105–108.
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`Further, contrary to Patent Owner’s arguments (POR at 20–21), the
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`disclosure of Kari, as cited in the Petition, teaches “using said GPS to
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`automatically obtain said location identifying information…” as recited in
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`limitation [19.7]. Petition at 34; Kari (EX1006) at 7:11–14, 7:60–67; Reddy
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`(EX1005), at ¶¶ 134–139. In combination, Kari and Darnell also teach the
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`“device independent” features of the claim. Petition at 21–26. Patent Owner
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`apparently argues that the references could not be combined, but the combination
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`is intuitive and supported by record evidence: a POSITA looking at a reference
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`describing a form on a web page displayed in a web browser (Kari) would not only
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`Petitioner’s Reply
`IPR2018-00043 (U.S. Patent 9,454,748)
`be aware of, but would have also clearly looked to teachings of HTML (Darnell),
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`
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`which was (and remains) the standard language for creating web pages. Petition at
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`25–26; Reddy (EX1005), at ¶¶ 104–108. Patent Owner also presents arguments
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`against Chan and Todd, but those references were not cited against limitation
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`[19.7]. As such, the arguments are irrelevant.
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`b)
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`The combined teachings of the reference render
`obvious the “device independent” limitations of claim
`19.
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`Patent Owner then tries another strategy by seeking to import a requirement
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`in its claims for “developing an OIS” or “operating instruction system.” POR at
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`21–23. But nothing in the claims requires an OIS, nor is one necessary to teach the
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`limitations of the claims. As established in the Petition, the combined teachings of
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`the references describe a device independent questionnaire in HTML, and all
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`limitations of the challenged claims are rendered obvious by the combined
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`teachings of the prior art. See Petition at 16–51.
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`Although the ’748 Patent’s implementation of the claims apparently “obtains
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`device independence through the use of an OIS,” the claims never recite the
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`operating instruction system, and do not require the OIS. HTML, as taught by
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`Darnell, is also device independent (see Reddy (EX1005), at ¶ 104), and in
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`combination with the teachings of Kari, renders obvious the device independent
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`limitations of the claim. See Petition at 21–26.
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`-19-
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`Petitioner’s Reply
`IPR2018-00043 (U.S. Patent 9,454,748)
`The References are all Analogous Art.
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`c)
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`Patent Owner then alleges that the “secondary references cited by Petitioner
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`are not pertinent to the problem of creating a questionnaire that comprises device
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`independent tokens.” POR at 23. It appears, therefore, that Patent Owner is
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`alleging that Darnell, Chan, and Todd are not analogou
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