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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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`UBER TECHNOLOGIES, INC. and
`CHOICE HOTELS INTERNATIONAL, INC.
`Petitioners,
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`v.
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`FALL LINE PATENTS, LLC.
`Patent Owner
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`Case: IPR2018-00535
`Patent 9,454,748 B2
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`Before MICHELLE N. WORMMEESTER, SHEILA F. McSHANE, and JOHN R.
`KENNY, Administrative Patent Judges.
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`DECLARATION OF JONATHAN I. DETRIXHE
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`Petitioners – Exhibit 1016, p. 1
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`I, Jonathan I. Detrixhe, declare the following:
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`1.
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`I am an associate at Reed Smith, LLP and represent Uber
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`Technologies, Inc. and Choice Hotels International, Inc. (collectively,
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`“Petitioners”) in this proceeding. I submit this Declaration in support of Petitioners
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`Response to the May 21, 2018 Order by the Board. I have personal knowledge of
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`the matters set forth in this Declaration. If called as a witness, I could and would
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`competently testify to these matters.
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`2.
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`I prepared the word-count certification for the Petition filed in this
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`proceeding, IPR2018-00535 (“Petition”). In doing so, I relied on Microsoft Word’s
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`(“Word”) word-count feature. In particular, I relied on Word’s word-count feature
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`to count the words in Sections I and III-VIII. I did not include Section II, which
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`addresses mandatory notices, because it is exempt under 37 CFR § 42.24(a).
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`3.
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`To perform this word count, first I selected the words in Section I.
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`Then, I clicked on Word’s word count feature, which provided 86 words, as shown
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`below1:
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`1 I obtained the images in ¶¶ 3-5 of this declaration by repeating the steps I used to
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`prepare the certification for the Petition.
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`Petitioners – Exhibit 1016, p. 2
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`4.
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`Next, I selected the words in Sections III-VIII. My selection included
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`the words added in textboxes as annotations to prior art figures. These words were
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`typed in plain text. For example, as shown below, my selection included the
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`textboxes with the words “Handheld computing device” and “Originating
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`computer” on page 20 of the Petition, which were added in the textboxes as plain
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`text to annotate a prior art figure:
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`Petitioners – Exhibit 1016, p. 3
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`5.
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`After selecting the words in Sections III-VIII, I clicked on Word’s
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`word count feature, which provided 13,913 words, as shown below. Because I had
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`selected the box to “[i]nclude textboxes, footnotes and endnotes,” and because
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`each textbox was included in my selection, I believed that the count of 13,913
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`words for Sections III-VIII included every annotated word typed in a textbox.
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`Petitioners – Exhibit 1016, p. 4
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`6.
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`I obtained the final word count of 13,999 to which I certified by
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`adding the count of 86 words for Section I to the count of 13,913 words for
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`Sections III-VIII.
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`7.
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`After reviewing the allegations in Patent Owner’s Preliminary
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`Response, I provided Patent Owner a Word version of the Petition to allow it to
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`verify the accuracy of my word count. In addition, during a call with Patent
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`Owner’s counsel, I explained how I had relied on Word’s word-count feature to
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`obtain the total count of 13,999. Not satisfied, Patent Owner’s counsel requested a
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`Word copy of the Petition that included only those words I had selected for
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`inclusion in the word count. I prepared and provided such a copy. When I selected
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`Petitioners – Exhibit 1016, p. 5
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`every word in this document (for example, by typing Crtl-A) and ran a word count,
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`Word again provided a total count of 13,999:
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`The count of 13,999 shown above was obtained by selecting all of the words,
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`including the textboxes with annotated words, and performing a count with
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`instructions to “[i]nclude textboxes, footnotes, and endnotes.”
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`8.
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`I understand that Patent Owner used a different method to count the
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`words in this copy. In particular, I understand that Patent Owner ran a word count
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`without selecting any words. If I do that, I obtain a count of 14,123 words:
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`Petitioners – Exhibit 1016, p. 6
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`9.
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` After investigating Patent Owner’s allegations, I learned that Word’s
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`word count feature does not include words present in selected textboxes, even
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`though Word’s word count feature indicates that it includes textboxes. For
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`example, if I select only the figure and textboxes found on page 20 of the Petition,
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`Word provides a word count of 0 (and thus omits the textboxes with the words
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`“Handheld computing device” and “Originating computer”)—even though the
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`textboxes are selected and the option to “[i]nclude textboxes, footnotes, and
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`endnotes” is selected:
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`Petitioners – Exhibit 1016, p. 7
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`10. Accordingly, in retrospect, it appears that the provided count of
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`13,999 words did not include the annotated words present in textboxes. Based on
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`the difference between the 14,123 words obtained without selecting any words, and
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`the 13,999 words obtained by selecting every word, it appears that the total number
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`of annotated words in textboxes is 124.
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`11. However, at the time of filing the Petition, I had no knowledge that
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`the count provided by Word had omitted the annotated words in textboxes. To the
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`contrary, because each textbox was included in my selections, and because I
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`selected the option to “[i]nclude textboxes, footnotes and endnotes,” I believed that
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`Petitioners – Exhibit 1016, p. 8
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`the total count of 13,999 words included every annotated word added in the
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`textboxes. It was not until after Fall Line filed its Preliminary Response that I
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`realized that Word had not in fact included the selected textboxes in its word count.
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`12.
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`I hereby declare that all statements made herein of my own
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`knowledge are true and that all statements made on information and belief are
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`believed to be true; and further that these statements are made with knowledge that
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`willful false statements and the like are punishable by fine, imprisonment, or both,
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`under Section 1001 of Title 18 of the U.S. Code.
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`Dated: May 28, 2018
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`Respectfully submitted,
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`Jonathan I. Detrixhe
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`Petitioners – Exhibit 1016, p. 9
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