Trials@uspto.cov
`571 272 7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UBER TECHNOLOGIES, INC. and
`CHOICE HOTELS INTERNATIONAL, INC.
`Petitioners
`v.
`FALL LINE PATENTS, LLC
`Patent Owner
`
`CASE IPR2018-00535
`PATENT 9,454,748
`
`PATENT OWNER'S PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 9,454,748
`CHALLENGING CLAIMS 1, 2, 5, 9, 11, 13, AND 15-22
`
`
`571 272 7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UBER TECHNOLOGIES, INC. and
`CHOICE HOTELS INTERNATIONAL, INC.
`Petitioners
`v.
`FALL LINE PATENTS, LLC
`Patent Owner
`
`CASE IPR2018-00535
`PATENT 9,454,748
`
`PATENT OWNER'S PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 9,454,748
`CHALLENGING CLAIMS 1, 2, 5, 9, 11, 13, AND 15-22
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`Introduction
`
`II.
`
`Background of the Case
`
`III. The '748 Patent
`
`a.
`
`Background
`
`b.
`
`Discussion of Certain Claim Terms
`
`1. Questionnaire
`
`2. Token
`
`c.
`
`Discussion of the Challenged Independent Claims
`
`1. Executable Tokens
`
`2. Device Independence
`
`3. Location Determination
`
`4. Automatically Entering Location Information Into the
`Questionnaire
`
`IV. Summary of Arguments and Action Requested
`
`V. Discussion of the Prior Art Relied Upon
`
`a.
`
`Discussion of Barbosa (USPN 6,961,586)
`
`b.
`
`Discussion of Bandera (USPN 6,332,127)
`
`c.
`
`Discussion of Hancock (USPN 6,202,023)
`
`VI. Response to Petitioners' Challenges
`
`a.
`
`Barbosa Does Not Render As Obvious
`Claims 1, 9, 11, 13, and 15-22
`
`1. Barbosa Does Not Render As Obvious Claim 19
`
`ii
`
`1
`
`1
`
`2
`
`2
`
`4
`
`4
`
`6
`
`9
`
`10
`
`10
`
`11
`
`13
`
`15
`
`16
`
`16
`
`21
`
`22
`
`24
`
`24
`
`24
`
`
`
`2. Barbosa Does Not Render As Obvious Claim 20
`
`3. Barbosa Does not Render As Obvious Independent
`Claim 21
`
`4. Barbosa Does Not Render As Obvious Dependent
`Claim 22
`
`5. Barbosa Does Not Render As Obvious Independent
`Claim 1
`
`26
`
`26
`
`27
`
`27
`
`6. Challenged Claim 9 Is Not Obvious In View of Barbosa 29
`
`7. Petitioners Have Failed To Present A Prima Facie Case
`Of Obviousness With Respect To Challenged Claim 11 30
`
`8. Petitioners Have Failed To Present A Prima Facie Case
`Of Obviousness With Respect To Challenged Claim 13 30
`
`9. Petitioners Have Failed To Present A Prima Facie Case
`Of Obviousness With Respect To Challenged Claim 15 30
`
`10.Petitioners Have Failed To Present A Prima Facie Case
`Of Obviousness With Respect To Challenged Claim 16 31
`
`1 1. Petitioners Have Failed To Present A Prima Facie Case
`Of Obviousness With Respect To Challenged Claim17 32
`
`12. Petitioners Have Failed To Present A Prima Facie Case
`Of Obviousness With Respect To Challenged Claim 18 32
`
`Barbosa In View Of Bandera Does Not Render As Obvious
`Claims 1, 9, 11, 13, and 15-22
`
`33
`
`Hancock Does Not Render As Obvious Claims 1, 2, 5, 9,
`11, 13, and 15-22
`
`1. Hancock Does Not Render As Obvious Claim 19
`
`2. Hancock Does Not Render As Obvious Dependent
`Claim 20
`
`33
`
`34
`
`36
`
`iii
`
`b.
`
`c.
`
`
`
`3. Hancock Does Not Render As Obvious
`Independent Claim 21
`
`4. Hancock Does Not Render As Obvious
`Dependent Claim 22
`
`5. Hancock Does Not Render As Obvious Claim 1
`
`6. Hancock Does Not Render As Obvious
`Dependent Claim 2
`
`7. Hancock Does Not Render As Obvious Dependent
`Claim 5
`
`8. Hancock Does Not Render As Obvious Dependent
`Claim 9
`
`9. Hancock Does Not Render As Obvious Dependent
`Claim 11
`
`10. Hancock Does Not Render As Obvious Dependent
`Claim 13
`
`1 1. Hancock Does Not Render As Obvious Dependent
`Claim 15
`
`12. Hancock Does Not Render As Obvious Independent
`Claim 16
`
`13.Hancock Does Not Render As Obvious Dependent
`Claim 17
`
`14.Hancock Does Not Render As Obvious Dependent
`Claim 18
`
`d.
`
`Hancock In View of Bandera Does Not Render As
`Obvious Claims 1, 2, 5, 9, 11, 13, and 15-22
`
`VII. The Petition Should Be Dismissed For Deliberate Violation
`of 37 C. F. R. § 42.24
`
`iv
`
`36
`
`37
`
`37
`
`38
`
`38
`
`39
`
`40
`
`40
`
`40
`
`40
`
`41
`
`42
`
`42
`
`43
`
`
`
`47
`VIII. Conclusions
`VIII. Conclusions ......................................................................................... 47
`
`v
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Panduit Corp. v. Corning Optical Communications LLC,
`IPR No. 2017-00528, Paper No. 7 (P. T. A. B. May 30, 2017)
`
`General Electric Co. v. United Technologies Corp.,
`IPR2017-01096, Paper No. 8 (P. T. A. B. Oct. 2, 2017)
`
`44
`
`44
`
`Facebook, Inc. v. Sound View Innovations, LLC, IPR No. 2017-01003,
`45, 46
`Paper No. 14 (P. T. A. B. Sept. 1, 2017)
`
`Google Inc. v. Ji-Soo Lee, IPR2016-00022 and IPR2016-00045,
`Paper 25
`
`47
`
`Statutes
`
`37 C. F. R. § 42.24
`
`37 C.F.R. §42.24(d)
`
`37 C. F. R. § 42. 24(a)(2)
`
`15, 43, 47
`
`44
`
`45
`
`37 CFR § 42. 24(a)(i) 16, 43, 44,47
`
`vi
`
`
`
`PATENT OWNER'S PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 9,454,748
`CHALLENGING CLAIMS 1-22
`
`I.
`
`Introduction
`
`Fall Line Patents, LLC (hereinafter "Patentee), the owner of the entire
`
`interest in U.S. Patent No. 9,454,748 (hereinafter the "748 Patent) hereby tenders
`
`its Preliminary Response to Petition for Inter Partes Review ("IPR") of the '748
`
`Patent (hereinafter the "Petition"). The above-mentioned Petition, which is now
`
`assigned Case IPR2018-00535, was filed by Uber Technologies, Inc., and Choice
`
`Hotels International, Inc., (hereinafter "Petitioners") and mailed on or about
`
`January 25, 2018. As explained in detail below, there is no reasonable likelihood
`
`that Petitioners would prevail in establishing anticipation or obviousness of any of
`
`the challenged claims during this inter partes review.
`
`II.
`
`Background of the Case
`
`Litigation Involving the Subject Patent
`
`The '748 patent is presently the subject of patent infringement lawsuits filed
`
`in the Eastern District of Texas against the following entities:
`
`Case Caption
`Fall Line Patents, LLC v. Choice Hotels Int'l, Inc.
`Fall Line Patents, LLC v. Uber Technologies, Inc.
`Fall Line Patents, LLC v. Cinemark Holdings, Inc., et al.
`
`Number
`6:17-cv-00407
`6 :17-cv-00408
`6:17-cv-00203
`
`1
`
`
`
`In addition to the cases listed above, Patent Owner would state that the two
`
`cases listed below were also filed in the Eastern District of Texas and both
`
`involved the '748 patent. However, both cases have now been dismissed but
`
`notice of the termination of these cases is not yet of record in the Patent Office:
`
`Case Caption
`Fall Line Patents, LLC v. American Airlines Group, Inc. et
`al.
`Fall Line Patents, LLC v. Grubhub Holdings, Inc. et al.
`
`Number
`6:17-cv-00202
`
`6:17-cv-00204
`
`Pending Patent Application(s)
`
`A continuation application of the instant patent is currently pending in the
`
`U.S. Patent Office, to wit, App. No. 15/260,929. Claims 1-11 are cancelled and
`
`new claims 12-22 are currently pending in that application. A first Office action is
`
`predicted in approximately 12 months.
`
`III.
`
`The '748 Patent
`
`a. Background
`
`The '748 patent names David Payne as its sole inventor and was filed
`
`October 22, 2010, but claims priority through another application to provisional
`
`patent application 60/404,491 which was filed August 19, 2002. During
`
`prosecution, a conception of the claims at least as early as January 1, 2002, was
`
`2
`
`
`
`established to the satisfaction of the examiner. ('748 prosecution history, EX. 1007
`
`at 100-136).
`
`The challenged patent relates to a method of collecting data using handheld
`
`devices and transmitting the data to a central server where it can be accessed and
`
`used. One example application of the technology at issue may be found in the '748
`
`patent (EX. 1001) at column 10, line 37, through column 11, line 42. In brief, this
`
`passage describes a secret shopper scenario (called a "mystery shopper" in the '748
`
`patent) where an individual travels to a store location and anonymously collects
`
`information about the service that was provided. Data that is collected might
`
`include the location and the services received. The data are then communicated to
`
`central server when a network connection is next established.
`
`Figure 2 of the '748 Patent contains a simple schematic that illustrates some
`
`components of an embodiment:
`
`28
`
`3
`
`
`
`As shown in this figure, a questionnaire is processed by a computer 22.
`
`Computer 22 tokenizes the questionnaire so that it can be transmitted to a "loosely
`
`networked" handheld device 28 in a format that a program running on the handheld
`
`device can understand. Using this scheme, when the questionnaire is updated, it is
`
`not necessary to edit, compile, and re-install the program running on handheld
`
`device 28. Instead, the questionnaire can be changed, re-tokenized, and only the
`
`tokenized questionnaire need be sent to the handheld device. This has multiple
`
`possible benefits, including not only the avoidance of burdensome re-compilation
`
`procedures, but also the ability to distribute updated questionnaires to handheld
`
`devices over low-bandwidth network connections, e.g., EX. 1001, p. 11, col. 5
`
`lines 49-55.
`
`b. Discussion of Certain Claim Terms
`
`Patentee reserves the right to challenge additional ones of the points raised
`
`by Petitioners, but the following addresses some of the more obvious problems.
`
`1.
`
`Questionnaire
`
`The software running on the handheld device that collects information from
`
`the shopper takes the form of a questionnaire. The '748 patent makes clear that the
`
`claimed "questionnaire" can be any type of a request for infounation, whether
`
`collected automatically or manually. See, EX. 1001 at 8:17-19 ("For purposes of
`
`4
`
`
`
`the instant disclosure, the series of questions/statements will collectively be
`
`referred to as a questionnaire."). The questions can be requests for infoiiiiation
`
`that are collected automatically by the handheld device. See id. at 5:35-37 ("[Alt
`
`least some of the information that is responsive to the designed questionnaire may
`
`be collected automatically rather than entered manually, e.g., time and date,
`
`position information if the device includes a GPS receiver, etc.").
`
`Prior art methods of collecting data in this fashion from handheld devices
`
`required coding and compiling a device specific program that presented the
`
`questionnaire to the user. The resulting executable program would then only be
`
`usable by only one kind of device. This was particularly burdensome if different
`
`types of handheld devices were being supported because the code would have to be
`
`separately compiled for each particular type of device. EX. 1001, col. 1, line 48 —
`
`col. 2, line 2, and col. 3, lines 1-10.
`
`However, this patent contemplates that there will be a layer that overlays or
`
`is built into the operating system on each different type of remote device so that the
`
`same questionnaire can be executed without change on each such device. In that
`
`sense, each questionnaire prepared according to the teachings of the '748 patent is
`
`then device independent.
`
`As a part of the inventive system each remote device, preferably a
`handheld computer, is provided with an operating instruction system
`("OIS") which overlays its native operating system. Once equipped
`with the OIS, a remote device can be programmed according to
`
`5
`
`
`
`methods described hereinafter. Any program developed under the
`inventive system will run on any handheld computer equipped with
`the OIS and files on one such handheld will transfer freely to any
`other handheld or any computer connected to the inventive system.
`
`EX. 1001 at Col. 7, lines 47-58, emphasis added. This is a required element of
`
`every claim.
`
`The '748 patent makes clear that the claimed "questionnaire" can be any
`
`type of a request for information, whether collected automatically or manually. It
`
`explains that the term "questionnaire" is meant in a broad sense. For example, the
`
`patent explains that the term questionnaire is used to refer to a simple series of
`
`questions or statements. See id. at 8:17-19 ("For purposes of the instant disclosure,
`
`the series of questions/statements will collectively be referred to as a
`
`questionnaire."). And the patent is clear that it is not necessary for a user to be
`
`presented with the questions or for the user to provide the information in response.
`
`Rather, the questions can be requests for information that are collected
`
`automatically by the handheld device. See id. at 5:35-37 ("[Alt least some of the
`
`information that is responsive to the designed questionnaire may be collected
`
`automatically rather than entered manually, e.g., time and date, position
`
`information if the device includes a GPS receiver, etc."). The term
`
`"questionnaire," as used in the context of the '748 Patent, refers broadly to any
`
`type of request for information, whether collected automatically or manually.
`
`2. Token
`
`6
`
`
`
`The '748 Patent overcomes the problems associated with different handhelds
`
`requiring different compilations by tokenizing the questionnaire before it is
`
`transmitted to the handheld device. That is, the instant system assigns device
`
`independent "tokens" to the elements of a questionnaire. See EX. 1001 at 8:15-17
`
`("This series of questions or statements will have been constructed on
`
`computer 22 and reduced to tokenized form for transmission to the handheld 28.")
`
`(emphasis added); See also, EX. 1001 at 8:40-43 (describing how tokens are
`
`"assigned" to questions). See also:
`
`To overcome the necessity of compiling a program for a particular
`machine, an application may be written in an interpreted language, or
`a language which can be compiled to produce an intelmediate
`language (i.e., a language that falls somewhere between source code
`and object code) such as i-code or tokens. In such a scheme, each
`device is provided with a run-time package which can execute the
`compiled i-code or tokens, the run-time package having been written
`for that particular device, thus, only the runtime package needs to be
`modified in order to port a program to a new computing environment.
`Once the run-time package is installed, any application authored in the
`language and which has been compiled to i-code will run on the target
`device.
`
`Col. 2, lines 13-26, emphasis added.
`
`Thus, tokens in the questionnaire must be device independent or device
`
`indifferent and at least some of the tokens that comprise the questionnaire must be
`
`executable. That is, they must correspond, for example, to a "logical,
`
`mathematical, or branching operation". Col. 8, lines 56-64:
`
`7
`
`
`
`Each token preferably corresponds to a logical, mathematical, or
`branching operation and is preferably selected and made a part of the
`questionnaire through a graphical user interface. By this mechanism, a
`user is able to create a series of questions, the precise nature of which
`is dependent on the user's responses. For example, the questionnaire
`designer might desire to create a foal' that asks the user different
`questions; depending on whether the user was male or female.
`
`This preference is echoed in the claims as a limitation in each of the challenged
`
`independent claims (emphasis added in each case).
`
`Claim 1:
`(e) when said remote computing device is at said location, executing at
`least a portion of said plurality of tokens representing said
`questionnaire at within said remote computing device to collect a
`response from a user; ...
`
`Claim 9:
`(fl) executing at least a portion of said plurality of tokens comprising said
`questionnaire on said handheld computing device to collect at least
`one response from a user, and, ...
`
`Claim 16:
`(dl) executing at least a portion of said plurality of tokens comprising said
`questionnaire on said handheld computing device to collect at least
`said current location of said handheld computing device; and; ...
`
`Claim 19:
`(dl) executing at least a portion of said plurality of tokens comprising said
`questionnaire on said handheld computing device to collect at least
`one response from a first user, and, ...
`
`Claim 21:
`executing at least a portion of said plurality of tokens comprising said
`(i)
`questionnaire on said handheld computing device, ...
`
`The '748 patent also discloses an embodiment where the handheld device is
`
`able to determine its current location. If that is possible, it teaches automatic or
`
`8
`
`
`
`entry of the GPS coordinates into the questionnaire in response to a question that
`
`requests location information that is part of the transmitted questionnaire. This
`
`variation is discussed, for example, in EX. 1001 at col. 10, lines 55-58. The '748
`
`patent contemplates that the GPS receiver might be used to automatically collect
`
`the location of the handheld device and include that infoli iation in the
`
`questionnaire.
`
`As the mystery shopper enters the parking lot, the shopper will be
`prompted to enter a store number or location. If the handheld
`computer is equipped with a GPS receiver, this information could be
`entered automatically.
`
`EX. 1001, col. 10, lines 55-58. See, also, EX. 1001, col. 5, lines 42-48.
`
`A number of useful subsystems, which may already be present in the
`handheld device, or easily added later, may be utilized so that at least
`some of the information which is responsive to the designed
`questionnaire may be collected automatically rather than entered
`manually, e.g., time and date, position information if the device
`includes a GPS receiver, etc.
`
`c. Discussion of the Challenged Independent Claims
`
`As discussed above, the terms "questionnaire" and "token" are defined in the
`
`specification of the '748 patent and their usage in the claims must be interpreted in
`
`light of those definitions.
`
`The challenged claims cover a method for managing data that involves
`
`transmitting a tokenized questionnaire from an originating computer to a handheld
`
`9
`
`
`
`device where it can be used to acquire information after communications with the
`
`originating computer have ended. After the information is acquired, a network
`
`connection to a recipient computer is established and the information is
`
`transmitted. Some key claim limitations will be discussed below.
`
`1. Executable Tokens
`
`Each of the challenged independent claims requires that at least some of the
`
`tokens that comprise each questionnaire must be executable. See, challenged
`
`independent claims 1(e), 9(fl), 16(d1), 19(d)(d1), and 21(a)(4)(i), emphasis added:
`
`Claim 1 (e):
`
`Claim 9(fl):
`
`Claim 16 (dl):
`
`Claim 19(d)(d1):
`
`Claim 21(a)(4)(i):
`
`when said remote computing device is at said location,
`executing at least a portion of said plurality of tokens
`representing said questionnaire at within said remote computing
`device to collect a response from a user;
`executing at least a portion of said plurality of tokens
`comprising said questionnaire on said handheld computing
`device to collect at least one response from a user, and,
`executing at least a portion of said plurality of tokens
`comprising said questionnaire on said handheld computing
`device to collect at least said current location of said handheld
`computing device; and;
`executing at least a portion of said plurality of tokens
`comprising said questionnaire on said handheld computing
`device to collect at least one response from a first user, and,
`executing at least a portion of said plurality of tokens
`comprising said questionnaire on said handheld computing
`device,
`
`2. Device Independence
`
`10
`
`
`
`As discussed previously, the tokens must be device independent or device
`
`indifferent so that the questionnaire can be executed unchanged on multiple
`
`devices. This is a fundamental property of tokens and of the questionnaire that is
`
`transmitted to the handheld device.
`
`3. Location Determination
`
`Of importance to each of the challenged claims in the '748 patent is that the
`
`handheld device that executes the questionnaire also be capable of determining its
`
`location. Emphasis added in each case below.
`
`Claim 1:
`(b)
`
`(f)
`
`said questionnaire including at least one question requesting GPS
`coordinates; ...
`automatically entering the GPS coordinates into said questionnaire;...
`
`Claim 9:
`(a) establishing communications between a handheld computing device
`and an originating computer wherein said handheld computing device
`has a GPS integral thereto; ...
`
`Claim 16:
`(a) establishing communications between a handheld computing
`device and an originating computer, said handheld device
`having at least a capability to determine a current location
`thereof; ...
`
`Claim 19:
`(a) establishing communications between a handheld computing device
`and an originating computer wherein said handheld computing device
`has a GPS integral thereto; ...
`
`11
`
`
`
`Claim 21:
`(a) within a central computer, accessing at least one user data item stored
`in a recipient computer, wherein said at least one data item is obtained
`via the steps of:
`(1) establishing communications between a handheld computing
`device and an originating computer wherein said handheld
`computing device has a GPS integral thereto;
`
`Note that claims 9, 19 and 21 require that the handheld computing device
`
`have a GPS unit (receiver) integral thereto. Claim 1 requires that the GPS
`
`coordinates of the handheld be obtainable automatically and claim 16 requires that
`
`handheld device have the capability to determine its location.
`
`Claim 1:
`(b) said questionnaire including at least one question requesting GPS
`coordinates; ...
`(f) automatically entering the GPS coordinates into said questionnaire;...
`
`Claim 16:
`(a) establishing communications between a handheld computing
`device and an originating computer, said handheld device
`having at least a capability to determine a current location
`thereof; ...
`(b) receiving within said handheld computing device a transmission of a
`tokenized questionnaire including at least one question requesting
`GPS coordinates, said tokenized questionnaire comprising a plurality
`of device independent tokens; ...
`(d3) automatically entering the GPS coordinates into said
`
`questionnaire; ...
`
`Claim 19:
`(a) establishing communications between a handheld computing device
`and an originating computer wherein said handheld computing device
`has a GPS integral thereto; ...
`
`12
`
`
`
`(b) receiving within said handheld computing device a transmission of a
`tokenized questionnaire from said originating computer, said
`tokenized questionnaire including at least one question requesting
`location identifying information, said tokenized questionnaire
`comprising a plurality of device independent tokens; ...
`
`Claim 21:
`(a) within a central computer, accessing at least one user data item stored
`in a recipient computer, wherein said at least one data item is obtained
`via the steps of:
`(1) establishing communications between a handheld computing
`device and an originating computer wherein said handheld
`computing device has a GPS integral thereto;
`(2) receiving within said handheld computing device a transmission
`of a tokenized questionnaire, including at least one question
`requesting GPS coordinates and at least one additional question,
`said tokenized questionnaire comprising a plurality of device
`independent tokens;
`(b) receiving within said handheld computing device a transmission of a
`tokenized questionnaire from said originating computer, said
`tokenized questionnaire including at least one question requesting
`location identifying information, said tokenized questionnaire
`comprising a plurality of device independent tokens;
`
`Each of the challenged independent claims requires that the transmitted
`
`questionnaire contain at least one question that solicits location information.
`
`4. Automatically Entering Location Information into the
`Questionnaire
`
`In order to acquire the location infon. cation, tokens in the questionnaire must
`
`be executed to obtain the current location of the handheld device and the GPS
`
`location infoH _lotion must then be automatically inserted (or entered) into the
`
`questionnaire (claims 1, 16 and 21 below):
`
`13
`
`
`
`Claim 1:
`(b) said questionnaire including at least one question requesting
`GPS coordinates; ...
`(f) automatically entering the GPS coordinates into said
`questionnaire;
`
`Claim 16:
`(d) after said communications has been terminated, when said handheld
`computing device is at said particular location
`(dl) executing at least a portion of said plurality of tokens
`comprising said questionnaire on said handheld computing
`device to collect at least said current location of said handheld
`computing device; and;
`(d2) storing within said handheld computing device said current
`location;
`(d3) automatically entering the GPS coordinates into said
`questionnaire; ...
`
`Claim 21:
`(a) within a central computer, accessing at least one user data item stored
`in a recipient computer, wherein said at least one data item is obtained
`via the steps of: ...
`(4) after said communications has been ended,
`executing at least a portion of said plurality of tokens
`(i)
`comprising said questionnaire on said handheld
`computing device,
`(ii) automatically entering the GPS coordinates into said
`questionnaire; ...
`In the case of challenged claim 19, the GPS location information must be
`
`automatically obtained in response to a question in the questionnaire that requests
`
`such information:
`
`Claim 19:
`(d) after said communications has been ended,
`(dl) executing at least a portion of said plurality of tokens
`comprising said questionnaire on said handheld computing
`device to collect at least one response from a first user, and,
`
`14
`
`
`
`(d2) storing within said computing device said at least one response
`from the first user;
`(d3) using said GPS to automatically obtain said location identifying
`information in response to said at least one question that
`requests location identifying information; ...
`
`IV.
`
`Summary of Arguments and Action Requested
`
`Petitioners have failed to establish a prima facie case of obviousness of any
`
`challenged claim at least for the reason no prior art of record teaches or suggests
`
`the use of a tokenized questionnaire that is comprised of a plurality of device
`
`independent tokens, at least some of which are executable. As such, Petitioners
`
`have failed to establish that the combinations relied upon teach every limitation of
`
`any challenged claim. More specifically, with respect to the §103 rejections based
`
`on the Barbosa, Bandera, and/or Hancock, Petitioners have failed to demonstrate
`
`that these references teach the use of a tokenized questionnaire where at least some
`
`tokens of which must be executable.
`
`Further, the Petitioners have failed to establish a prima facie case of
`
`obviousness with respect to any challenged claim at least for the reason that
`
`hindsight reconstruction has been employed.
`
`As such, this IPR should not be instituted with respect to any challenged
`
`claim.
`
`Finally, this IPR should not be undertaken at least for the reason that
`
`Petitioners have deliberately violated 37 C. F. R. § 42.24 as it applies to the
`
`15
`
`
`
`maximum word count allowed in a petition for IPR by submitting a Petition with a
`
`word count well in excess of the number of words allowed. More particularly,
`
`although Petitioners certify the word count in the Petition to be "approximately
`
`13,999, which is less than the 14,000 allowed under 37 CFR §42.24(a)(i)" (Petition
`
`at page 76, emphasis added), the Petition actually has 14,727 words if the words in
`
`the figures are included, and 14,142 words if they are not. This is in spite of
`
`certifying a word count less than the maximum allowable.
`
`V.
`
`Discussion of the prior art relied upon
`
`a. Discussion of Barbosa (USPN 6,961,586)
`
`Barbosa (EX. 1002) issued on Nov. 1, 2005. From an application filed
`
`September 17, 2001, that claims priority to a provisional filed September 18, 2000.
`
`As an initial matter, Petitioners improperly conclude that the "template" of
`
`Barbosa satisfies the requirements of a "tokenized questionnaire" that is required
`
`of each claim of the '748 patent. See, e.g., the Petition at page 22, and Roman's
`
`Declaration, EX. 1005, pp. 54-55. That is simply incorrect.
`
`Barbosa's "template" is variously described as, e.g., "task/punch lists" (col.,
`
`7, line 28), a listing of "tasks" that is provided to a worker (col. 10, lines 38-49), a
`
`listing of "filed test procedures", col. 11, lines 18-20), a listing of instructions for
`
`assessors (col., 12, lines 8-14). "Template" as used by Barbosa does not teach or
`
`16
`
`
`
`suggest a questionnaire that is tokenized as that term is used in the '748 patent,
`
`e.g., that his template is comprised of device independent tokens at least some of
`
`which must be executable as is required in every challenged claim. Barbosa's
`
`template is little more than a list that is transmitted to a handheld computer to track
`
`the perfoitnance of tasks assigned to the user of that device.
`
`Barbosa also uses "template" in another way: he describes it as a format for
`
`sending data accumulated within the handheld back to the server, i.e., to indicate
`
`that the data that is collected by the handheld and transmitted to a remote source
`
`will be in a format recognizable by the remote processor:
`
`At completion of the series of questions, the handheld device may
`automatically compile collected data 707 provided by user. The data
`may then be analyzed by the handheld device 708 or provided the data
`to a remote processor 709 via a network where the data will be
`analyzed. Data may be provided to the remote resource within a
`template recognizable by the remote processor/program.
`
`Col. 12, lines 15-18. There is nothing in either usage to suggest that the template is
`
`comprised of device independent tokens at least of some of which are executable.
`
`Petitioners argue on page 22 of the Petition:
`
`In addition, Barbosa's questionnaire is tokenized. For example,
`Barbosa discloses that "[c]omputer program code for carrying out
`operations of the present invention can be written in an object oriented
`programming language such as Java...." Id. at 12:45-51. A
`questionnaire (e.g., downloaded code modules, templates, and/or
`programs) written in an object oriented programming language such
`as Java would have included an index, an instruction, or a command
`that can represent something else such as a question, answer, or
`
`17
`
`
`
`operation. Ex. 1005 ¶ 124. Therefore, Barbosa discloses a tokenized
`questionnaire.
`
`Petitioners' statement that Barbosa's template would have included "an index, an
`
`instruction, or a command" is pure conjecture that is completely unsupported by
`
`Barbosa's disclosure.
`
`Petitioners' next obvious error is that Petitioners' expert wrongly assumes
`
`that that the template is a "questionnaire (e.g., downloaded code modules,
`
`templates, and/or programs) written in an object oriented programming language".
`
`Id. Nothing in Barbosa remotely suggests that his template is written in an object
`
`oriented programming language. Every example given of "template" in Barbosa is
`
`nothing more than a simple listing of items.
`
`The full text of the citation from Barbosa relied upon by Petitioners is
`
`reproduced below (EX. 1002, at col. 12, lines 45-54):
`
`Computer program code for carrying out operations of the present
`invention can be written in an object oriented programming language
`such as Java., Smalltalk or C++. The computer program code for
`carrying out operations of the present invention, however, may also be
`written in conventional procedural programming languages, such as
`the "C" programming language. The program code may execute
`entirely on the user's computer, as a stand-alone software package, or
`it may execute partly on the user's computer and partly on a remote
`computer.
`
`Petitioners have misrepresented the clear intent of the text of the passage in
`
`Barbosa relied upon. When viewed in context, it is clear that the tiny snippet of
`
`Barbosa that has been extracted and quoted piecemeal by Petitioners is actually
`
`18
`
`
`
`describing the system in its entirety and could apply to any aspect of Barbosa' s
`
`invention which includes, among others, server side software to transmit and
`
`receive his "template" to/from the user, software to synchronize the handheld when
`
`the template is updated (box 903 of Fig. 9), software running on the handheld to
`
`help the use navigate to the worksite (box 701 of Fig. 7), etc. As is made clear, the
`
`code referred to may execute on the "user's computer or partly on the user's
`
`computer and partly on a remote computer." Significantly, not mentioned in the
`
`full text is the user's handheld device.
`
`Note that Barbosa's approach utilizes a template together with a separate
`
`program to display it and interact with the user: the template and the program are
`
`separate items. Support for this may be found, among others, in the following
`
`passage from Barbosa:
`
`The template may operate in combination with programs resident in
`the handheld computer or may be accompanied by a computer
`program transmitted from the sever (e.g., in the form of a JAVA
`applet).
`
`Id. col. 12, lines 14-18. Patentee's questionnaire is tokenized for unchanged use on
`
`multiple different devices and that at least some of the tokens which comprise the
`
`questionnaire must be executable. Barbosa's template is designed to be presented
`
`to the user using an associated program running on the handheld.
`
`19
`
`
`
`There is no indication that Barbosa's template comprises any sort of device
`
`independent token that is an executable instruction, nor is there any teaching or
`
`suggestion that the tem
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