Trials@uspto.gov
`571-272-7822
`
` Paper 9
` Entered: May 16, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RPX CORPORATION
`Petitioner
`
`v.
`
`MACROSOLVE, INC.
`Patent Owner
`
`Case IPR2014-00140
`Patent 7,822,816 B2
`
`Before SALLY C. MEDLEY, TREVOR M. JEFFERSON, and
`PETER P. CHEN, Administrative Patent Judges.
`
`CHEN, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Petitioners – Exhibit 1012, p. 1
`
`
`571-272-7822
`
` Paper 9
` Entered: May 16, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RPX CORPORATION
`Petitioner
`
`v.
`
`MACROSOLVE, INC.
`Patent Owner
`
`Case IPR2014-00140
`Patent 7,822,816 B2
`
`Before SALLY C. MEDLEY, TREVOR M. JEFFERSON, and
`PETER P. CHEN, Administrative Patent Judges.
`
`CHEN, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Petitioners – Exhibit 1012, p. 1
`
`
`
`Case IPR2014-00140
`Patent 7,822,816 B2
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`I. INTRODUCTION
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`RPX Corporation (“Petitioner”) filed a Petition requesting an inter
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`partes review of claims 1-14 of U.S. Patent No. 7,822,816 (Ex. 1001, “the
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`’816 patent”). Paper 3 (“Pet.”). MacroSolve (“Patent Owner”) filed a
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`Corrected Preliminary Response on February 25, 2014. Paper 8 (“Prelim.
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`Resp.”). We have jurisdiction under 35 U.S.C. § 314.
`
`The standard for instituting an inter partes review is set forth in
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`35 U.S.C. § 314(a), which provides as follows:
`
`THRESHOLD.—The Director may not authorize an inter
`partes review to be instituted unless the Director determines
`that the information presented in the petition filed under section
`311 and any response filed under section 313 shows that there
`is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`
`Upon consideration of the Petition and Preliminary Response, we are
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`persuaded the information presented by Petitioner has established a
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`reasonable likelihood that Petitioner would prevail in showing the
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`unpatentability of claims 1-14 of the ’816 patent. Accordingly, we authorize
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`an inter partes review of these claims to be instituted.
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`A. Related Proceedings
`
`The Patent Owner states that the ’816 patent is involved in the
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`following pending proceedings in the District Court for the Eastern District
`
`of Texas: MacroSolve, Inc. v. Carlson Hotels, Inc. (6-13-cv-00666);
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`MacroSolve, Inc. v. Five Guys Enterprises, LLC (6-13-cv-00671);
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`MacroSolve, Inc. v. Meetup, Inc. (6-13-cv-00674); MacroSolve, Inc. v.
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`Chipotle Mexican Grill, Inc. (6-13-cv-0667); MacroSolve, Inc. v. Discover
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`2
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`Petitioners – Exhibit 1012, p. 2
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`Case IPR2014-00140
`Patent 7,822,816 B2
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`Financial Services, Inc. (6-13-cv-00669); MacroSolve, Inc. v. Home Box
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`Office, Inc. (6-13-cv-00672); MacroSolve, Inc. v. Box, Inc. (6-13-cv-00665);
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`MacroSolve, Inc. v. Dropbox, Inc. (6-13-cv-00670); MacroSolve, Inc. v.
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`MediaFire, LLC (6-13-cv-00673); MacroSolve, Inc. v. GEICO Insurance
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`Agency, Inc. (6-12-cv-00074); MacroSolve, Inc. v. newegg (6-12-cv-00046);
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`MacroSolve, Inc. v. American Airlines, Inc. (6-11-cv-00685); MacroSolve,
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`Inc. v. Antenna Software, Inc. (6-11-cv-00287).
`
`
`
`The ’816 patent is also the subject of Ex Parte Reexamination No.
`
`90/012,829, filed April 3, 2013, by GEICO Corporation, GEICO Casualty
`
`Company, GEICO General Insurance Company, GEICO Indemnity
`
`Company and Government Employees Insurance Company. A non-final
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`Office Action rejecting all claims was mailed in the reexamination on
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`September 13, 2013. Patent Owner’s response to the non-final Office
`
`Action was e-filed November 13, 2013.
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`B. Real Party-in-Interest
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`
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`In the Preliminary Response, Patent Owner argues for dismissal of
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`this proceeding, for failure of the Petitioner to identify real parties-in-
`
`interest, and also because Petitioner allegedly is in privity with entities time-
`
`barred from initiating this inter partes review. Prelim. Resp. 5-16.
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`Patent Owner contends dismissal is warranted because there are “at
`
`least seven entities which are both defendants in E.D. Texas litigation
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`involving the ’816 patent and members of Petitioner RPX . . . . [I]t is
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`beyond mere speculation that one or more of these parties are a real party-in-
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`interest to Petitioner.” Id. at 9-10. Mere membership in Petitioner RPX
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`3
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`Petitioners – Exhibit 1012, p. 3
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`Case IPR2014-00140
`Patent 7,822,816 B2
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`Corporation, however, does not demonstrate the requisite control over
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`Petitioner by the alleged unnamed real parties-in-interest.
`
`
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`In support of its argument for dismissal based on time-barred entities
`
`in privity with Petitioner, Patent Owner asserts there are “affiliates” of three
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`venture capital firms that own 10%, 10%, and 12%, respectively, of the
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`publicly traded common stock of Petitioner, and that these affiliates of the
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`venture capital firms also own, or previously owned, some of the publicly
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`traded common stock of companies being sued in the district court
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`proceedings brought by Patent Owner. Prelim. Resp. 15. Patent Owner
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`concludes that the defendants in the district court proceedings control
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`members of the board of Petitioner, without directing us to evidentiary
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`support, other than the past or present ownership of defendants’ stock by
`
`some of the owners of Petitioner’s stock. Id. We do not agree with Patent
`
`Owner’s argument that control of Petitioner arises from such circumstances.
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`
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`Alternatively, Patent Owner seeks a stay of this proceeding pending
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`either receipt of discovery on the identity of real parties in the district court
`
`proceedings, or additional discovery herein. We deny Patent Owner’s
`
`request for a stay. The time for Patent Owner to have sought discovery on
`
`this issue was during the three months between Patent Owner’s receipt of the
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`Petition in November 2013 and Patent Owner’s filing of its Preliminary
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`Response. Instead, Patent Owner waited until its Preliminary Response to
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`raise the issue of a stay. The stay request is denied.
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`C. The ’816 Patent
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`
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`The ’816 patent is titled “System and Method for Data Management.”
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`The subject matter of the ’816 patent is the distribution of electronic forms
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`4
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`Petitioners – Exhibit 1012, p. 4
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`
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`Case IPR2014-00140
`Patent 7,822,816 B2
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`via the Internet or to mobile devices, and in particular, a method for the
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`management of data collected from a remote computing device. Ex. 1001,
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`Abstract. The ’816 patent describes using computerized questionnaires to
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`allow a user to complete a form on a wireless device for transmission to a
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`server. Id. at col. 10 ll. 28-37. In particular, a client designs a questionnaire
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`by creating a list of questions, and can assign tokens to the questionnaire,
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`e.g., for follow up questions depending on responses to other questions. Id.
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`at col. 8 ll. 40-51. When the questionnaire is complete, the questions and
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`tokens are transmitted to a handheld device, whose user provides responses
`
`to the questions. The responses are stored on the handheld device and
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`transmitted to the server, and the server stores the data in a database. Id. at
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`col. 8 ll. 57-66, col. 9 ll. 44-63.
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`Figure 1 of the ’816 patent is reproduced below.
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`
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`5
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`Petitioners – Exhibit 1012, p. 5
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`Case IPR2014-00140
`Patent 7,822,816 B2
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`Figure 1 depicts the claimed system, including client computer 22 and
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`server 24, both with Internet connection 26. Remote devices 28, 30, and 32
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`are connected to server 24 via connections 34, 36, and 38. Id. Col. 7 ll. 4-11.
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`Figure 2 of the ’816 patent is reproduced below.
`
`
`
`.
`
`Figure 2 illustrates a system used to create a questionnaire for
`
`distribution to handheld devices. Pet. 6, Ex. 1001, col. 8 ll. 25-27. A client
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`uses computer 22 with access to Internet 26 to communicate with server 24.
`
`Computer 22 has a web-based interface allowing the client to create
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`questionnaire 40. Once the questionnaire is complete, it is sent by server 24
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`to handheld device 28 via network connection 34. Ex. 1001, col. 8 ll. 27-32,
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`57-60.
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`Figure 3 of the ’816 patent is reproduced below.
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`6
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`Petitioners – Exhibit 1012, p. 6
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`Case IPR2014-00140
`Patent 7,822,816 B2
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`Figure 3 depicts the collection and review of questionnaire
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`information. Pet. 7. Responses to questions are transmitted from handheld
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`device 28 via connection 34 to server 24. Computer 22 can access server 24
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`via the Internet 26 to review and use the data. Ex. 1001, col. 9 ll. 15-17, 33-
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`35, 44-45, 61-65. In a preferred embodiment of the ’816 patent, handheld
`
`device 28 and server 24 are “loosely networked,” where the server and
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`handheld devices are “tolerant of intermittent network connections and, in
`
`fact, tolerant of the type of network connection available.” Ex. 1001, col. 4
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`ll. 55-65.
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`D. Illustrative Claim
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`Claims 1-14 are the subject of the Petition, and claims 1, 8, and 11 are
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`independent claims. Independent claim 1 is reproduced as follows:
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`1. A method for managing data including the steps of:
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`(a) creating a questionnaire comprising a series of questions;
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`7
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`Petitioners – Exhibit 1012, p. 7
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`Case IPR2014-00140
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`(b) tokenizing said questionnaire; thereby producing a plurality of
`tokens representing said questionnaire;
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`(c) establishing a first wireless modem or wireless LAN network
`connection with a remote computing device;
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`(d) transmitting said plurality of tokens to a remote computing
`device via said first wireless modem or wireless LAN network
`connection;
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`(e) terminating said first wireless modem or wireless LAN network
`connection with said remote computing device;
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`(f) after said first wireless modem or wireless LAN network
`connection is terminated, executing at least a portion of said
`plurality of tokens representing said questionnaire at said remote
`computing device to collect a response from a user;
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`(g) establishing a second wireless modem or wireless LAN
`network connection between said remote computing device and a
`server;
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`(h) after said second wireless modem or wireless LAN network
`connection is established, transmitting at least a portion of said
`response from the user to said server via said second wireless
`modem or wireless LAN network connection; and
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`(i) storing said transmitted response at said server.
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`E. Prior Art Relied Upon
`
`Petitioner relies upon the following six prior art references:
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`
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`
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`8
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`
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`Petitioners – Exhibit 1012, p. 8
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`Case IPR2014-00140
`Patent 7,822,816 B2
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`
`Reference
`
`Title
`
`Dodgen
`
`US 6,453,329 B1
`
`Sancho
`
`D. Sancho and I. Phillips, The
`Official Pendragon Forms for
`PalmOS (2000)
`
`Richards
`
`US 2002/0147850 A1
`
`Porter
`
`Desai
`
`Jeter
`
`US 6,163,811
`
`US 6,618,746 B2
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`WO 00/57976
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`F. The Asserted Grounds
`
`Ex. No.
`
`Ex. 1011
`
`Ex. 1012
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`Ex. 1014
`
`Ex. 1015
`
`Ex. 1016
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`Ex. 1017
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`
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`Petitioner contends the challenged claims are unpatentable based on
`
`four grounds. Pet. 11-12.
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`Reference(s)
`
`Sancho and Phillips
`
`Richards and Porter
`
`Basis
`
`§ 103(a)
`
`§ 103(a)
`
`Richards, Porter, and Desai
`
`§ 103(a)
`
`Claims
`Challenged
`
`1-14
`
`1, 5-7
`
`2-4, 8-11,
`13, and 14
`
`Richards, Porter, Desai and
`Jeter
`
`§ 103(a)
`
`12
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, the Board interprets claim terms according to their
`
`broadest reasonable construction in light of the specification of the patent in
`
`which they appear. 37 C.F.R. § 42.100(b); Office Patent Trial Practice
`
`9
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`
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`Petitioners – Exhibit 1012, p. 9
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`Case IPR2014-00140
`Patent 7,822,816 B2
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`Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). There is a “heavy
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`presumption” that a claim term carries its ordinary and customary meaning.
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`CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
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`Claim terms are given their ordinary and customary meaning, as would be
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`understood by one of ordinary skill in the art in the context of the entire
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`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
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`2007).
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`Petitioner submits proposed constructions for four claim terms:
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`“questionnaire comprising a series of questions”; “token” and “tokens”;
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`“tokenizing said questionnaire”; and “a same wireless modem or wireless
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`LAN network connection.” Pet. 10-11. Patent Owner does not propose
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`alternative constructions for these terms.
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`For purposes of this Decision, we find the broadest reasonable
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`construction of “questionnaire comprising a series of questions” and “a same
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`wireless modem or wireless LAN network connection” to be apparent from
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`their usage in the claims.
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`Petitioner’s proposed construction of “token” is “a distinguishable
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`unit of a program, such as an index, an instruction, or a command,” that “can
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`represent something else such as a question, answer, or operation.” Pet. 11,
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`citing Ex. 1001, col. 8 ll. 40-46, 60-64; col. 5 ll. 12-17; col. 12 ll. 1-2. For
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`purposes of this Decision, we determine that Petitioner’s proposed
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`construction is the broadest reasonable construction consistent with the
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`specification, and we adopt Petitioner’s proposed construction.
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`Petitioner proposes the broadest reasonable construction of
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`“tokenizing said questionnaire” is “causing a part of the questionnaire to be
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`assigned to or converted into a token.” Pet. 11 (citing Reddy Decl. ¶¶ 63-
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`10
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`Petitioners – Exhibit 1012, p. 10
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`Case IPR2014-00140
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`72). This proposed construction is supported by the claims. Claim 4 recites
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`in part, “tokenizing said questionnaire . . . by: assigning at least one token to
`
`each question . . . assigning at least one token to each response . . . assigning
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`at least one token to each branch.” Thus, in claim 4 tokenizing corresponds
`
`to assigning parts of the questionnaire to tokens. See also Ex. 1001, col. 8 ll.
`
`40-56.
`
`Claim 1 recites in part, “tokenizing said questionnaire; thereby
`
`producing a plurality of tokens representing said questionnaire.” Thus, in
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`claim 1, tokenizing corresponds to producing, or converting, part of the
`
`questionnaire into tokens. See also Ex. 1001, col. 12 ll. 1-2. Accordingly,
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`we determine that, for purposes of this Decision, Petitioner’s proposed
`
`construction of “tokenizing said questionnaire” is the broadest reasonable
`
`construction consistent with the specification.
`
`As noted above, Patent Owner does not propose formally any
`
`construction for these terms or any claim terms. From the arguments made
`
`by Patent Owner, however, it is clear that Patent Owner construes the recited
`
`“network connection” of claims 1-7 and “electronic communication” of
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`claims 8-14 to require immediate, real time communication. Prelim. Resp.
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`20, 22, 25-26. The claims do not contain any such limitation, and the notion
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`of real time communication is described as to one embodiment of the ’816
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`patent, which also describes other, “virtually real time” communication, Ex.
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`1001, Abstract; col. 5 l. 64; col. 9 l. 11; col. 10 l. 18. Patent Owner, without
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`expressly proposing a construction, further argues that the network
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`connection of claim 1 means a “loosely networked connection,” where
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`“devices on the network are tolerant of intermittent network connections
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`and, in fact, tolerant of the type of network connection available.” Pet. 19-
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`11
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`Petitioners – Exhibit 1012, p. 11
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`Patent 7,822,816 B2
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`20, citing Ex.1001 col. 4 l. 61 – col. 5 l.5. The ’816 patent further discloses
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`that “[u]nless otherwise specified, hereinafter the terms ‘network’ or
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`‘networked’ refer to loosely networked devices.” Id. For purposes of this
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`Decision, we agree with Patent Owner’s contention that the network
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`connection of claim 1 means a “loosely networked connection.”
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` B. Claims 1-14 – Obviousness Over Dodgen and Sancho
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`Petitioner contends claims 1-14 are unpatentable under 35 U.S.C.
`
`§ 103(a) as obvious over Dodgen and Sancho. Pet. 35-47.
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`Dodgen (Exhibit 1011)
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`Dodgen is titled “Method for Translating Distilled Filed [sic] for
`
`Handling of Large Data Files and Programs by Computing Devices with
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`Limited Processing Capability.” Dodgen discloses a system for gathering
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`users’ responses to a questionnaire, executed on a handheld computer. A
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`document is created to define data fields and a hierarchy of organization. Ex.
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`1001, Abstract. A “distillation” process optimizes the document for
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`transmission to and execution by a handheld computer. Id., Abstract; Fig. 1;
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`col. 9 ll. 30-56; col. 15 l. 24 – col. 16 l. 2. Data input through the handheld
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`computer can be transmitted wirelessly to a desktop computer for further
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`processing and reporting. Id. Figure 1 of Dodgen is reproduced below.
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`12
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`Petitioners – Exhibit 1012, p. 12
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`Figure 1 is a flowchart depicting the “distillation-expansion-processing”
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`system of Dodgen, where a list of questions is compiled, converted to a
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`script, and transmitted to a palmtop (handheld) computer where the list of
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`questions is executed, after which the user’s responses are transmitted
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`wirelessly to another computer. Ex. 1011, col. 15 l. 25 – col. 16 l. 2.
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`Dodgen teaches tokenizing as assigning one or more token-value pairs to
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`data fields in the list of questions. A meaning token is inserted into the
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`script and contains instructions for the expansion process by the receiving
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`computer. Ex. 1011, Abstract, col. 5 ll. 9-14, col. 15 ll. 36-37.
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`13
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`Petitioners – Exhibit 1012, p. 13
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`Sancho (Exhibit 1012)
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`Sancho is titled “The Official Pendragon Forms for Palm OS,” and
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`discloses software for creating, distributing, and running data gathering
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`applications for handheld computers. Pet. 15. Sancho describes how a
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`graphical user interface is used to design and create custom forms for data
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`entry by handheld users. Ex. 1012, ix, 6-7, 215-16. Figure 15-2 of Sancho
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`is reproduced below.
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`
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`In Figure 15-2, the handheld “Palm” device is connected wirelessly to the
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`file server. The “HotSync” software transfers data and programs between
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`the file server and the handheld device. Ex. 1012, 338.
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`Analysis
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`Petitioner contends claims 1-14 are unpatentable under 35 U.S.C.
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`§ 103(a) as obvious over Dodgen and Sancho. In support of this asserted
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`14
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`Petitioners – Exhibit 1012, p. 14
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`ground of unpatentability, Petitioner provides detailed explanations of how
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`the subject matter of each claim is disclosed by the combined teachings of
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`Dodgen and Sancho, and relies on the Declaration of Dr. Reddy. Pet. 14-39
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`(citing Ex. 1004 ¶¶ 77-85). Patent Owner contends as to all claims that “real
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`time” communication must occur between the server and the remote
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`computing device, and that neither Dodgen nor Sancho discloses such real
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`time communication. Prelim. Resp. 22-23. None of the claims, however,
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`recites real time communication. Moreover, real time communication is in
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`only one embodiment disclosed by the ’816 patent, which also describes
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`communication in “virtually real time,” in addition to “real time.” Ex. 1001,
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`Abstract; col. 5 l. 64; col. 9 l. 11; col. 10 l. 18.)
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`For a rationale for combining Dodgen and Sancho, Petitioner contends
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`it would have been obvious for a person of ordinary skill in the art
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`implementing Dodgen’s system to use Sancho’s disclosure, as both
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`generally describe systems and methods allowing users of handheld
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`computers to input data, using forms to guide the user through a series of
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`prompts. Ex. 1004 ¶ 81. Petitioner further contends the combination of
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`prior art elements, according to known methods, yields predictable results,
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`and that the combination uses known techniques to improve similar
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`methods, i.e., using Sancho’s graphical user interface to improve Dodgen’s
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`data gathering method. Id. ¶ 82-83. Pet. 17-18 (citing KSR Int’l Co. v.
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`Teleflex Inc., 550 U.S. 398, 417 (2007)).
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`On this record, we determine that the information presented by
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`Petitioner establishes a reasonable likelihood of its prevailing on this ground
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`with respect to claims 1-14.
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`15
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`Petitioners – Exhibit 1012, p. 15
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`C. Claims 1, 5-7: Obviousness over Richards and Porter
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`
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`Petitioner contends claims 1 and 5-7 are unpatentable under 35 U.S.C.
`
`§103 (a) as obvious over Richards and Porter. Pet. 40-46.
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`Richards (Exhibit 1014)
`
`Richards is titled “Electronic Survey Tool and Dynamic Workflow
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`Tool,” and describes a method and system for knowledge and information
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`sharing and updating. Ex. 1014, Abstract. In Richards, the system
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`distributes and updates a set of logic trees, which can include survey
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`questions, instructions, and algorithms, to field engineers. The logic trees
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`are stored in extensible markup language (“XML”), and tokenized strings
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`can be used in addition to XML to enhance performance. Id. ¶ 40. Figure 3
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`of Richards is reproduced below.
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`16
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`Petitioners – Exhibit 1012, p. 16
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`Figure 3 depicts the process disclosed by Richards, in which a wireless client
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`device synchronizes its locally stored information with a field appliance
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`server. Id. ¶ 42. In synchronization session 303, the server downloads new
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`logic tree data objects to the client device and uploads new survey
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`information from the client device. Id.
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`17
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`Petitioners – Exhibit 1012, p. 17
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`Porter (Exhibit 1015)
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`Porter, titled “Token Based Source File Compression/Decompression
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`and its Application,” describes techniques for tokenizing strings in XML-
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`formatted source files, in order to transfer source code files from one
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`computer system to another in tokenized form, to reduce transmission
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`bandwidth requirements. Ex. 1015, col. 1 ll. 65-67. Figure 1c of Porter is
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`reproduced below.
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`
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`Figure 1c depicts sending computer system 100″ including tokenizer
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`104″ that transforms source files 110″ to tokenized source files 112″. The
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`tokenizing occurs by “substituting language elements, such as arithmetic
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`operators, relational operators and so forth, with tokens.” Ex. 1015, col. 3 ll.
`
`40-45. The tokenized source files are sent by sender 106″ via
`
`communication medium 180″ (which can be a local area network or a wide
`
`18
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`Petitioners – Exhibit 1012, p. 18
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`Case IPR2014-00140
`Patent 7,822,816 B2
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`area network) to receiver 146″ in receiving computer system 140″. De-
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`tokenizer 144″ restores source files 112″ to source files 152″ in original
`
`form. Id. col. 5 ll. 9-18.
`
`Analysis
`
`Petitioner contends claims 1 and 5-7 are unpatentable under 35 U.S.C.
`
`§ 103(a) as obvious over Richards and Porter. In support of this asserted
`
`ground of unpatentability, Petitioner provides detailed explanations of how
`
`the subject matter of each claim is disclosed by the combined teachings of
`
`Richards and Porter, and relies on the declaration of Dr. Reddy. Pet. 40-46
`
`(citing Ex. 1004 ¶¶ 86-92). Claim 5 expressly recites a loosely networked
`
`computing device, and as noted above in section II.A, Patent Owner
`
`contends that any network connection, as recited in claim 1, means a loosely
`
`networked connection tolerant of intermittent connectivity. Patent Owner
`
`contends Richards does not teach a loosely networked connection. Prelim.
`
`Resp. 24-25. Petitioner’s declarant notes, however, that Richards discloses
`
`loosely networked connections, as Richards’s client device initiates a
`
`wireless connection and then “intermittently” synchronizes its logic tree data
`
`objects with those in the central database. Ex. 1004 ¶ 92; see also Pet. 43.
`
`Patent Owner further contends Richards does not disclose real time
`
`communication. Prelim. Resp. 25-26. As noted above in section II. C, the
`
`claims do not recite real time communication, which is a feature disclosed in
`
`an embodiment of the ’816 patent. The ’816 patent also discloses, in
`
`contrast, “virtually” real time communication.
`
`Patent Owner also contends Richards does not disclose claim 7’s
`
`limitation of the “two different remote computing device types.” Prelim.
`
`Resp. 27. Petitioner, however, asserts that Richards indeed teaches a system
`
`19
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`Petitioners – Exhibit 1012, p. 19
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`with a plurality of client devices, and Fig. 1 shows two different types of
`
`devices, wireless client 104 and web browser client 105. Ex. 1014, Fig. 1
`
`and ¶ 29.
`
`For a rationale for combining Richards and Porter, Petitioner contends
`
`it would have been obvious for a person of ordinary skill in the art to
`
`combine Richards and Porter, as Richards expressly encourages using
`
`“tokenized strings, as is known in the art,” to improve system performance.
`
`Ex. 1004 ¶ 89, citing Ex. 1014 ¶ 40. Petitioner further contends the
`
`combination of prior art elements, according to known methods, yields the
`
`predictable result of a data gathering system using logic trees wirelessly
`
`transmitted to handheld devices in tokenized form, and that the combination
`
`uses known techniques to improve similar methods, i.e., using Porter’s
`
`tokenizing to improve Richards’s method of transmitting XML files. Id.
`
`¶¶ 89-91. Pet. 41-42 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
`
`(2007)).
`
`On this record, we determine that the information presented by
`
`Petitioner establishes a reasonable likelihood of its prevailing on this ground
`
`with respect to claims 1 and 5-7.
`
`
`
`D. Claims 2-4, 8-11, 13, and 14: Obviousness Over Richards, Porter,
`and Desai
`
`
`
`Petitioner contends claims 2-4, 8-11, 13, and 14 are unpatentable
`
`under 35 U.S.C. § 103(a) as obvious over Richards, Porter, and Desai. Pet.
`
`47-58. Desai is titled “Survey Communication Across a Network,” and
`
`describes a network survey system including a questionnaire designer and an
`
`20
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`
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`Petitioners – Exhibit 1012, p. 20
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`interface for communicating with commercially available statistical software
`
`for analyzing survey responses. Id. (citing Ex. 1016, Abstract, col. 5 ll. 60-
`
`66). The surveys can be conducted independent of any proprietary operating
`
`system or windowing environment, and support “intelligent” survey
`
`behavior such as branching or piping. Id. col. 2 ll. 44-50.
`
`
`
`The Petition and supporting Declaration of Dr. Reddy set forth
`
`detailed explanations on how Richards, Porter and Desai teach or suggest the
`
`subject matter of each of the claims challenged under this ground of
`
`unpatentability, and the rationale for combining the references. Pet. 47-58,
`
`Ex. 1004 ¶¶ 93-98. The Patent Owner does not address the specific
`
`disclosure of Desai, or that of Richards and Porter, and instead reiterates its
`
`previous arguments against Richards and Porter. Prelim. Resp. 28. See
`
`section II. C above.
`
`
`
`We are persuaded by Petitioner’s evidence that there is a reasonable
`
`likelihood Petitioner would prevail on claims 2-4, 8-11, 13, and 14 on the
`
`ground these claims would have been obvious over Richards, Porter, and
`
`Desai.
`
`E. Claim 12: Obviousness Over Richards, Porter, Desai, and Jeter
`
`Petitioner contends claim 12 would have been obvious over Richards,
`
`Porter, Desai, and Jeter. Claim 12 depends from claim 11 and further recites
`
`“the step of printing a report from any of said response.” Jeter is titled
`
`“Interactive Targeted Marketing System and Method,” and describes a
`
`system for conducting a survey over a telecommunications network. Ex.
`
`1017, Abstract. Survey participants may provide responses by electronic
`
`form, and the responses are recorded and data is processed to generate
`
`21
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`
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`Petitioners – Exhibit 1012, p. 21
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`statistical reports, which may be printed. Id. Abstract; p.7 ll. 13-19.
`
`Petitioner contends a survey report printed on paper teaches the claimed
`
`“printing a report from any of said response,” and Petitioner’s declarant
`
`opines it would have been obvious to add the printing functionality of Jeter
`
`to the data gathering and surveying technology of Richards and Desai. Ex.
`
`1004 ¶ 103. The Preliminary Response does not address Jeter’s disclosure of
`
`printing functionality.
`
`We are persuaded there is a reasonable likelihood of Petitioner
`
`prevailing in establishing the unpatentability of claim 12 of the ’816 patent
`
`as obvious over Richards, Porter, Desai, and Jeter.
`
`III. CONCLUSION
`
`For the foregoing reasons, we are persuaded the information presented
`
`in the Petition establishes a reasonable likelihood that Petitioner would
`
`prevail in establishing unpatentability of claims 1-14 as obvious over
`
`Dodgen and Sancho, claims 1 and 5-7 as obvious over Richards and Porter,
`
`claims 2-4, 8-11, and 13-14 as obvious over Richards, Porter, and Desai, and
`
`claim 12 as obvious over Richards, Porter, Desai, and Jeter.
`
`The Board has not made a final determination on the patentability of
`
`any challenged claims.
`
`Accordingly, it is
`
`IV. ORDER
`
`ORDERED that Patent Owner’s request for dismissal of this inter
`
`partes review, or in the alternative for a stay of this inter partes review
`
`22
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`
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`Petitioners – Exhibit 1012, p. 22
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`pending receipt of discovery in district court litigation or conduct of
`
`additional discovery in this inter partes review, is denied; and
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314, an inter
`
`partes review is hereby instituted as to the following claims and grounds:
`
`1.
`
`Claims 1-14 of the ’816 patent are unpatentable under 35
`
`U.S.C. § 103(a) as obvious over Dodgen and Sancho;
`
`2.
`
`Claims 1 and 5-7 of the ’816 patent are unpatentable
`
`under 35 U.S.C. § 103(a) as obvious over Richards and
`
`Porter;
`
`3.
`
`Claims 2-4, 8-11, 13, and 14 are unpatentable under 35
`
`U.S.C. § 103(a) as obvious over Richards, Porter, and
`
`Desai;
`
`4.
`
`Claim 12 of the ’816 patent is unpatentable under 35
`
`U.S.C. § 103(a) as obvious over Richards, Porter, Desai,
`
`and Jeter; and
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(d) and
`
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial. The trial
`
`commences on the entry date of this Decision.
`
`
`
`
`
`
`
`
`
`
`
`
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`23
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`
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`Petitioners – Exhibit 1012, p. 23
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`Patent 7,822,816 B2
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`
`
`PETITIONER:
`
`David McCombs
`Thomas B. King
`Theodore M. Foster
`Haynes and Boone, LLP
`david.mccombs.ipr@haynesboone.com
`ipr.thomas.king@haynesboone.com
`ipr.theo.foster@haynesboone.com
`
`PATENT OWNER:
`
`Terry Watt
`Scott Zingerman
`Fred Holmes
`FELLERS, SNIDER, BLANKENSHIP,
`BAILEY & TIPPENS, PC.
`tlwatt@fellerssnider.com
`szingerman@fellerssnider.com
`patents@fellerssnider.com
`
`24
`
`
`
`Petitioners – Exhibit 1012, p. 24
`
`
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