UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________
`
`AMERICAN MULTI-CINEMA, INC.;AMC ENTERTAINMENT HOLDINGS,
`INC.; BOSTON MARKET CORPORATION; MOBO SYSTEMS, INC.;
`MCDONALD’S CORPORATION; MCDONALD’S USA; PANDA
`RESTAURANT GROUP, INC.; PANDA EXPRESS INC.; PAPA JOHN’S
`INTERNATIONAL, INC.; STAR PAPA LP; and PAPA JOHN’S USA, INC.
`
`Petitioner
`
`v.
`
`FALL LINE PATENTS, LLC
`
`Patent Owner.
`____________________________
`
`Case No. IPR2019-00610
`Patent No. 9,454,748
`____________________________
`
`PETITIONER’S REPLY IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW
`
`
`
`

`

`IPR2019-00610
`U.S. Patent No. 9,454,748
`
`TABLE OF CONTENTS
`Introduction ........................................................................................................ iii
`I.
`II. Petitioners’ Reply ................................................................................................ 1
`A. Ground 1: Claims 1, 19-22 Are Obvious Over Barbosa. ................................. 1
`1. Barbosa Discloses a Tokenized, Executable Questionnaire with Device
`Independent Tokens. ...................................................................................... 1
`2. Patent Owner’s Arguments Regarding Java are Legally Misguided and
`Factually Incorrect. ........................................................................................ 6
`B. Ground 2: Claims 1 and 19-21 Are Obvious Over Barbosa in View of
`Bandera. ......................................................................................................... 10
`C. Ground 3: Claim 7 Is Obvious in View Of Barbosa in View of Falls. .......... 12
`1. Barbosa Teaches and Renders Obvious “Automatically Transferring said
`Designed Questionnaire to at Least One Loosely Networked Computer.” . 13
`2. Barbosa Teaches and Renders Obvious “Making Available via the Internet
`Any Responses Transferred to Said Central Computer in Step (e).” .......... 15
`D. Ground 4: Claims 1, 2, 5, and 19-22 Are Obvious Over Hancock. ............... 17
`E. Ground 5: Claims 1, 2, 5, and 19-22 Are Obvious Over Hancock in View of
`Bandera. ......................................................................................................... 18
`F. Ground 6: Claim 7 Is Obvious Over Hancock in View of Falls. ................... 20
`1. Hancock Teaches and Renders Obvious “Automatically Transferring said
`Designed Questionnaire to at Least One Loosely Networked Computer.” . 20
`2. Hancock Teaches and Renders Obvious “Making Available via the Internet
`Any Responses Transferred to Said Central Computer in Step (e).” .......... 23
`G. Patent Owner’s Constitutional Challenge Is Moot. ........................................ 26
`III. Conclusion ....................................................................................................... 26
`
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`IPR2019-00610
`U.S. Patent No. 9,454,748
`
`
`TABLE OF AUTHORITIES
`
`
`CASES
`
`Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372, 1380–81 (Fed. Cir. 2018) ................ 8
`
`PAGE(S)
`
`Arthrex, Inc. v. Smith & Nephew, Inc., 2018-2140, 2019 WL 5616010
`(Fed. Cir. Oct. 31, 2019) .................................................................................... 26
`In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) ....................................................... 11
`
`In re Mouttet, 686 F.3d 1322, 1332-33 (Fed. Cir. 2012) ................................... 11, 12
`
`In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) ................................................. 12
`
`
`
`
`ii
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`IPR2019-00610
`U.S. Patent No. 9,454,748
`
`Exhibit List
`
`
`Description
`
`U.S. Patent No. 9,454,748 to Payne (“the ’748 patent”)
`U.S. Patent No. 6,961,586 to Barbosa et al. (“Barbosa”)
`U.S. Patent No. 6,202,023 to Hancock et al. (“Hancock”)
`U.S. Patent No. 6,332,127 to Bandera et al. (“Bandera”)
`Declaration of Kendyl Roman
`Curriculum Vitae of Kendyl Roman
`Excerpted portions of the ’748 patent file history
`Patent Owner’s Infringement Contentions Cover Document against
`Uber Technologies, Inc. and Choice Hotels International, Inc.
`Patent Owner’s Infringement Contentions Chart against Uber
`Technologies, Inc.
`Patent Owner’s Infringement Contentions Chart against Choice Hotels
`International, Inc.
`U.S. Patent 7,822,816 (“the ’816 patent”)
`The ’816 patent Institution Decision
`The ’816 patent Claim Construction Order
`U.S. Patent No. 6,381,535 to Durocher (“Durocher”)
`International Patent Application Publication No. WO 00/49530 to
`Parasnis (“Parasnis”)
`Excerpted portions of the ’816 ex parte reexamination
`U.S. Patent No. 5,991,771 to Falls et al. (“Falls”)
`Reply Declaration of Kendyl Roman
`
`iii
`
`Ex. No.
`
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`
`1009
`
`1010
`
`1011
`1012
`1013
`1014
`1015
`
`1016
`1017
`1018
`
`
`
`

`

`IPR2019-00610
`U.S. Patent No. 9,454,748
`
`1019
`1020
`1021
`
`Java Specification Request (JSR-179)
`Java Community Process Website
`Bluetooth Application Programming with Java APIs
`
`
`
`iv
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`IPR2019-00610
`U.S. Patent No. 9,454,748
`
`I.
`
`INTRODUCTION
`Patent Owner does not identify any deficiencies in any of Petitioners’ six
`
`grounds. For Grounds 1, 2, and 5, the Board determined at institution that Petitioners
`
`were likely to prevail, and Patent Owner has not overcome the Petition’s persuasive
`
`showing of obviousness. Patent Owner misstates the invalidating references and
`
`takes a legally erroneous approach to the obviousness analysis.
`
`For Grounds 3, 4, and 6, the Board commented that Petitioners did not appear
`
`likely to prevail, and Patent Owner presents no substantive arguments. Petitioners
`
`show by more than a preponderance of the evidence that the prior art invalidates the
`
`challenged claims.
`
`II.
`
`PETITIONERS’ REPLY
`A. Ground 1: Claims 1, 19-22 Are Obvious Over Barbosa.
`1.
`Barbosa Discloses a Tokenized, Executable Questionnaire
`with Device Independent Tokens.
`Patent Owner argues Barbosa does not disclose an “executable” questionnaire
`
`that “contains anything more than text.” Response, 7-10. But Barbosa discloses a
`
`questionnaire with executable tokens in the form of “a set of instructions in a code
`
`module.” Petition, 20, quoting Barbosa, 6:1-2. Patent Owner focuses only on the
`
`word “template,” Response, 7-8, ignoring Barbosa’s teaching of “templates (e.g.,
`
`task/punch lists) and/or programs,” and specifically a “program” that “asks
`
`questions” and can “prompt the user for input of data.” Petition, 20, quoting
`
`
`
`1
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`IPR2019-00610
`U.S. Patent No. 9,454,748
`Barbosa, 6:60-61 (underlining added), 7:27-28, 7:47-48, 9:54-56; Ex. 1005, ¶ 125.
`
`Barbosa discloses executable instructions in programs that prompt users by asking
`
`questions—i.e., an executable questionnaire. Id.
`
`Patent Owner further argues Barbosa does not disclose executable “tokens.”
`
`Response, 8-9. Under the Board’s construction of “token,” however, the “set of
`
`instructions in a code module” in the “program” for asking “questions” in Barbosa
`
`discloses a distinguishable unit of a program, such as an instruction, that represents
`
`something else, such as a question. Decision, 16; Petition, 20, Barbosa, 6:60-61,
`
`7:27-28, 7:47-48, 9:54-56; Ex. 1005, ¶ 125.
`
`Patent Owner does not dispute that Java provides device-independency, but
`
`argues that Barbosa does not contemplate Java for handheld devices. Response, 8-
`
`16. However, Barbosa explicitly describes that the questionnaire may be embodied
`
`using a Java applet transmitted to a handheld device: “[t]he template may operate
`
`in combination with programs resident in the handheld computer or may be
`
`accompanied by a computer program transmitted from the se[r]ver (e.g., in the form
`
`of a JAVA applet).” Barbosa, 12:14-18; Petition, 23. Patent Owner asserts that this
`
`statement “could only be referring to the full version of Java as it existed on desktop
`
`computers.” Response, 14-15; Ex. 2006, ¶¶ 75-77. That is incorrect. In the cited
`
`embodiment in Barbosa, the users (field assessors) are equipped only with handheld
`
`devices as they travel around a geographic area: “Assessors equipped with handheld
`
`
`
`2
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`IPR2019-00610
`U.S. Patent No. 9,454,748
`devices are assigned/deployed to specific positions of the affected environment.”
`
`Barbosa, 11:63-12:32, 12:2-3. Barbosa does not describe that the field assessors
`
`carry non-handheld devices. The assessors “at their respective positions” then
`
`receive templates from a remote server. Id., 12:11-14. Thus, when Barbosa
`
`proceeds to describe that “[t]he template may operate in combination with programs
`
`resident in the handheld computer or may be accompanied by a computer program
`
`transmitted from the se[r]ver (e.g., in the form of a JAVA applet)” id., 12:14-18, the
`
`Java applet is received by the field assessor’s handheld device. Ex. 1018, ¶¶ 20, 21.
`
`Barbosa thus discloses transmitting the questionnaire to the handheld device
`
`using a Java applet, regardless of Patent Owner’s and its expert’s assertions about
`
`versions of Java around the year 2000. In fact, Java applets for handheld devices
`
`were well-known to a POSITA prior to Barbosa’s September 2001 filing date. For
`
`example, as discussed for Ground 2 below, Bandera—filed in January 1999—
`
`describes “a JAVA® applet 40 running within a mobile Web client.” Bandera, 5:66-
`
`6:10, 8:63-9:12. Ex. 1018, ¶¶ 20, 21.
`
`Regarding Barbosa’s tokenized questionnaire, Patent Owner points to the
`
`Petition’s phrasing that Barbosa’s questionnaire “would have” included an index,
`
`instruction, or command if written in an object-oriented programming language.
`
`Response, 8. Patent Owner asserts: “There is no indication anywhere in Barbosa
`
`that the template is written in an ‘object-oriented programming language.’” Id., 8-
`
`
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`IPR2019-00610
`U.S. Patent No. 9,454,748
`9. Barbosa explicitly describes, however, that the code “for carrying out operations
`
`of the present invention can be written in an object-oriented programming language
`
`such as Java . . . .” Barbosa, 12:45-51. This is a fully adequate disclosure: the
`
`operations of the invention disclosed in Barbosa, which include the questionnaire
`
`program, can be written in an object-oriented programming language. Petition, 20-
`
`21, Ex. 1005, ¶ 126. Patent Owner does not dispute that if written in an object-
`
`oriented programming language—which is precisely what Barbosa describes—the
`
`question-asking program in Barbosa would disclose the “tokenized” questionnaire
`
`as claimed. Barbosa’s teachings amply support a finding of obviousness.
`
`Patent Owner argues Barbosa’s
`
`teaching
`
`to use an object-oriented
`
`programming language to implement “the present invention” is limited only to a
`
`non-handheld computer and not applicable to a handheld device. Response, 9-10.
`
`Patent Owner’s interpretation, however, finds no support in Barbosa’s full
`
`disclosure. Patent Owner admits that Barbosa’s “full system includes . . . software
`
`running on the handheld.” Response, 9. Barbosa never describes that the
`
`questionnaire program executing on the handheld cannot be in an object-oriented
`
`language such as Java; on the contrary, the program can be a Java applet. Barbosa,
`
`12:14-18.
`
`Patent Owner also points to statements in Barbosa that code may execute in
`
`part on a “computer” and argues that this reference to a “computer” excludes the
`
`
`
`4
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`IPR2019-00610
`U.S. Patent No. 9,454,748
`handheld device. Response, 9-10. But that interpretation contradicts Barbosa’s
`
`explicit disclosure that the handheld devices are “computers”: “The present
`
`invention provides portable, handheld data management devices (e.g., handheld or
`
`palm computer/PC, PDA, mobile telephony devices).” Barbosa, 5:28-32 (italics
`
`added). Thus Barbosa discloses a “handheld computer” executing a questionnaire
`
`“computer program” transmitted from the server, “e.g., in the form of a JAVA
`
`applet.” Id., 12:14-18. This is further consistent with Barbosa’s teaching that the
`
`handheld computer receives “computer program instructions”: “These computer
`
`program instructions may be provided to a processor of a handheld device (e.g.,
`
`PDA, pager, WAP phone) . . . .” Id., 8:35-37.
`
`Consequently, where Barbosa describes that the code “for carrying out
`
`operations of the present invention can be written in an object-oriented programming
`
`language such as Java,” Barbosa, 12:45-51, a POSITA would have understood that
`
`this description includes the handheld computer questionnaire programming.
`
`Petition, 20-21; Ex. 1005, ¶ 126.
`
`Patent Owner further asserts Barbosa’s “template” does not disclose “device
`
`independent tokens,” Response, 10, but that is based on Patent Owner’s incorrect
`
`interpretation that Barbosa does not teach device-independent object-oriented
`
`programming for handheld devices. Patent Owner never disputes that programming
`
`
`
`5
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`IPR2019-00610
`U.S. Patent No. 9,454,748
`the questionnaire program in Java for the handheld device discloses device
`
`independent tokens, as claimed.
`
`2.
`
`Patent Owner’s Arguments Regarding Java are Legally
`Misguided and Factually Incorrect.
`Patent Owner’s arguments also overlook the fact that the Petition does not rely
`
`solely on Java—indeed, Java is not referenced as prior art upon which Petitioners
`
`rely. Rather, the Petition notes that “[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 operation.” Petition,
`
`20-21. The Petition refers to Java only as an example of what a POSITA would have
`
`known to be an object-oriented programming language, and such a programming
`
`language would have allowed a POSITA to practice the claimed tokenizing.
`
`In addition, Barbosa itself makes clear that any number of programming
`
`languages could be used to tokenize, and a POSITA would have understood them to
`
`be interchangeable for this purpose. Barbosa teaches, “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++.” Barbosa, 12:45-47
`
`(emphasis added). Thus, as Petitioners and Barbosa explain, a POSITA would have
`
`been able to tokenize using any one of several object-oriented programming
`
`languages, and would not have been limited to only Java.
`6
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`IPR2019-00610
`U.S. Patent No. 9,454,748
`Patent Owner improperly restricts Barbosa’s disclosure to Java only, rather
`
`than the more expansive teachings a POSITA would have understood from the use
`
`of an object-oriented programming language like Java. Patent Owner therefore fails
`
`to rebut and does not contest that a POSITA would have been able to use non-Java
`
`object-oriented programming languages to tokenize.
`
`Additionally, Patent Owner attempts to limit Barbosa to implementations
`
`using the Java 2 Platform, Micro Edition (J2ME) because wireless devices at the
`
`time were purportedly so limited. Response, 12; Ex. 1018, ¶ 5. It would have been
`
`obvious to a POSITA, however, to apply known techniques used by Java 2 Standard
`
`Edition and Java 2 Enterprise Edition to wireless devices once those devices’ then-
`
`limited computing power improved. Ex. 1018, ¶¶ 6-11. In fact, Java was originally
`
`written for use with handheld devices and was run on handheld devices as early as
`
`1992;1 Ex. 1018, ¶ 12.
`
`Next, Patent Owner’s assertion that receiving GPS information can only be
`
`accomplished via a Java Native Interface
`
`is contradicted by
`
`the near-
`
`
`1 See, e.g., Gosling, James; Forrest, Craig; Frazier, Al; Frank, Ed; Haughton, Patrick;
`
`Palrang, Joe; Payne, Jon; Sheridan, Mike; and Warth, Chris “The Star7 PDA
`
`Prototype”, James Gosling / Green Project demonstration video (1992) (available,
`
`https://www.youtube.com/watch?v=Ahg8OBYixL0). Ex. 1018, ¶ 12.
`
`
`
`7
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`IPR2019-00610
`U.S. Patent No. 9,454,748
`contemporaneous development of Java Specification Request 179 (JSR-179). Ex.
`
`1018 at ¶ 13. JSR-179 is a Java Application Programming Interface that “produces
`
`information about the present geographic location of the terminal to Java
`
`Applications.” Ex. 1018, ¶ 14; Ex. 1019, 1.2 Work on JSR-179 began at least as early
`
`as March 2002. Ex. 1018, ¶ 15; Ex. 1019, iii; see also Ex. 1020, 1. This API was
`
`designed for J2ME, and allowed for determination of the device’s location “using
`
`any possible location methods, for example, satellite methods like GPS . . . .” Ex.
`
`1018, ¶ 16; Ex. 1019, 1, 5. Thus, a POSITA would have recognized at the time of
`
`Barbosa that there was no fundamental impediment to applets receiving GPS data,
`
`and that all that would be required to achieve this is an update to the API. Ex. 1018,
`
`¶17. This indeed occurred shortly after the earliest possible priority date of the ’748
`
`Patent. Ex. 1018, ¶ 18.
`
`Finally, Patent Owner’s claim that “J2ME did not provide support for applets”
`
`is contradicted by its own exhibit. Response, 15. While it is accurate that the Mobile
`
`
`2 “[T]he petitioner in an inter partes review proceeding may introduce new evidence
`
`after the petition stage if the evidence is a legitimate reply to evidence introduced by
`
`the patent owner, or if it is used ‘to document the knowledge that skilled artisans
`
`would bring to bear in reading the prior art identified as producing obviousness.’”
`
`Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372, 1380–81 (Fed. Cir. 2018).
`
`
`
`8
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`IPR2019-00610
`U.S. Patent No. 9,454,748
`Information Device Profile does not support applets, this does not apply to J2ME
`
`generally, as Patent Owner contends. Further, there is no requirement that the
`
`teachings of Barbosa be confined to implementations that use the MIDP. Patent
`
`Owner insists that the invention of Barbosa could only be practiced on “low-end
`
`consumer devices,” and this would require them to use the MIDP. Yet, J2ME was
`
`also run on “high-end consumer devices” such as “Internet-enabled screenphones”
`
`and “high-end wireless communicators,” which would have been more like the
`
`invention disclosed by Barbosa. Ex. 2002, 6. As shown below, this alternative J2ME
`
`configuration would have used the Personal Profile instead of the MIDP:
`
`Id., 5, Fig. 2.1. This is significant because the Personal Profile provided applet
`
`support. Ex. 1021, 17 (The Personal Profile “is for devices such as high-end personal
`
`
`
`
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`9
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`IPR2019-00610
`U.S. Patent No. 9,454,748
`organizers, communicators, and game consoles that require a user interface and
`
`Internet applet support.”). Therefore, even if a POSITA were confined to J2ME, she
`
`would still be able to use applets as contemplated by Barbosa. For these reasons,
`
`Patent Owner’s arguments regarding Java are flawed.
`
`B. Ground 2: Claims 1 and 19-21 Are Obvious Over Barbosa in View
`of Bandera.
`Patent Owner does not dispute that the combination of Barbosa and Bandera
`
`discloses all elements of claims 1 and 19-21, and disputes only the motivation to
`
`combine. Response, 21-22. As discussed above, Patent Owner’s limitation of
`
`Barbosa’s teachings to low-end consumer devices is unwarranted. A consequence of
`
`this improper restriction is Patent Owner’s erroneous conclusion that “the much
`
`more limited KVM” would have been the only Java version for a POSITA’s
`
`consideration. Response, 22. In fact, J2ME can be implemented with either a K
`
`Virtual Machine (“KVM”) or the Java Virtual Machine (“JVM”) that Bandera
`
`contemplates, depending on whether it is used in high-end or low-end consumer
`
`devices. Ex. 2002, 5, Fig. 2.1. Bandera’s disclosure of a JVM-compatible system is
`
`therefore no impediment to a POSITA’s combination with Barbosa or other wireless
`
`systems of the time. Petition, 38-40.
`
`Moreover, contrary to Patent Owner’s assertion that Bandera contemplates
`
`only desktop Java, Bandera describes that a “preferred programming language for
`
`implementing aspects of the present invention is JAVA,” Bandera, 5:37-38, and
`10
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`U.S. Patent No. 9,454,748
`much of Bandera’s disclosure is directed to mobile device Web client software.
`
`Bandera, 2:42-47, 4:46-47. Specifically, as explained in the Petition, Bandera
`
`motivates the use of a mobile web client for GPS collection and location-based
`
`advertising. Petition, 38-39. Rather than limiting the programming strictly to
`
`desktop JVM as Patent Owner suggests, Bandera makes clear that “[t]he program
`
`code for implementing the present invention” (which is preferably programmed in
`
`Java) may execute at least “partly on a remote computer (i.e., a user’s mobile Web
`
`client)” and specifically describes collecting GPS with location-based advertising
`
`using “a JAVA® applet 40 running within a mobile web client.” Bandera, 5:66-
`
`6:10, 8:63-9:12.
`
`What’s more, while Patent Owner asserts that combining Bandera with
`
`Barbosa would have been “inoperable” (Response, 22)—which is incorrect for the
`
`foregoing reasons—whether the systems contemplated by Bandera and Barbosa
`
`could be literally combined is not the relevant focus of the obviousness inquiry. “It
`
`is well-established that a determination of obviousness based on teachings from
`
`multiple references does not require an actual, physical substitution of elements.” In
`
`re Mouttet, 686 F.3d 1322, 1332-33 (Fed. Cir. 2012) (citing In re Etter, 756 F.2d
`
`852, 859 (Fed. Cir. 1985) (en banc)). It is “not necessary that the inventions of the
`
`references be physically combinable to render obvious the invention under review.”
`
`In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). “Rather, the test for obviousness
`
`
`
`11
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`IPR2019-00610
`U.S. Patent No. 9,454,748
`is what the combined teachings of the references would have suggested to those
`
`having ordinary skill in the art.” Mouttet, 686 F.3d at 1332-33. Thus, the question
`
`here is whether a POSITA, armed with the teachings of Bandera and Barbosa, would
`
`combine those teachings to practice the claimed invention. The Petition establishes
`
`that the answer to that inquiry is “yes.” Petition, 38-40.
`
`Moreover, Bandera also goes further. The benefits of tokenization touted by
`
`the ’748 Patent are that it allows for portability and device independence. Bandera
`
`explicitly discloses these as benefits of an object-oriented programming language
`
`like Java: “JAVA® is a portable and architecturally neutral language.” Bandera,
`
`5:39-40 (emphasis added). The importance of this disclosure in the context of the
`
`Petition is that a POSITA would be able to combine a portable, architecturally-
`
`neutral language with the teachings of Bandera to practice the claims of the ’748
`
`Patent. It is not necessary for a POSITA to have been able to literally combine an
`
`exemplary language, like Java, with the claimed invention of Bandera.
`
`C. Ground 3: Claim 7 Is Obvious in View Of Barbosa in View of Falls.
`The Board found (and Patent Owner did not dispute) Barbosa in view of Falls
`
`discloses all limitations of claim 7, except two: “automatically transferring said
`
`designed questionnaire to at least one loosely networked computer” and “making
`
`available via the internet any responses transferred to said central computer in step
`
`
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`12
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`IPR2019-00610
`U.S. Patent No. 9,454,748
`(e).” Petitioners respectfully submits Barbosa in view of Falls discloses and renders
`
`obvious both limitations.
`
`1.
`
`Barbosa Teaches and Renders Obvious “Automatically
`Transferring said Designed Questionnaire to at Least One
`Loosely Networked Computer.”
`The Institution Decision states the Board does “not discern that Petitioner’s
`
`showing regarding the prior art [Barbosa] teachings of this limitation is sufficient,”
`
`stating that “with respect to the purportedly automatic nature of [the claimed]
`
`transfer, Petitioner provides no analysis.” Decision, 42. Petitioner respectfully
`
`submits Barbosa includes numerous descriptions of the claimed automatic transfer.
`
`Barbosa discloses an
`
`interactive environment
`
`that allows
`
`two-way
`
`communications between a remote device and a server, including automatic
`
`synchronization and information transfers. Ex. 1005, ¶¶ 176-177; Ex. 1018, ¶ 24.
`
`Barbosa specifically describes transferring questions to remotes automatically. For
`
`example, Barbosa describes a method for automatically distributing inventory
`
`tracking/ordering information (i.e., inventory status questions) to a remote device.
`
`Barbosa, 11:29-40. “The technician may coordinate inventory needs with the
`
`company automatically using this method . . . .” Id., 11:39-40 (emphasis added).
`
`More specifically, this disclosure teaches automatic transferring of an updated
`
`questionnaire (here, inventory status questions) to remotes; by automatically
`
`providing updated inventory tracking questionnaire to the remotes, Barbosa’s
`
`
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`13
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`IPR2019-00610
`U.S. Patent No. 9,454,748
`system ensures “that no more inventory than is needed is taken to the field.” Id.,
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`11:29-40; Ex. 1018, ¶ 25. In addition, it would have been obvious to transfer the
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`updated inventory questions to the remote device “automatically” in light of this
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`disclosure to ensure efficiency in the communications—i.e., “so that no more
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`inventory than is needed is taken to the field.” Ex. 1018, ¶ 25.
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`Barbosa further teaches that a “worker’s handheld device (or device assigned
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`to the worker for the shift) may be synchronized 901 with a server to receive an
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`updated template containing tasks for the worker at the beginning of every work
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`shift.” Barbosa, 10:32-42. A POSITA would appreciate that the disclosed
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`synchronization process for transferring the updated template is an automatic
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`process; such automatic communications ensures workers are provided appropriate
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`“daily input” so tasks “are not repeated (wasting time) and that unfinished task[s]
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`are addressed . . .” Id., 10:59-67; Ex. 1018, ¶ 26. Further, it would have been obvious
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`to transfer the updated or template questionnaire automatically at the beginning of
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`every work shift to efficiently track the desired workflow as a project progresses, as
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`Barbosa teaches. Ex. 1018, ¶ 26.
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`Additional disclosure of automatic transferring of questions to remote
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`network devices is found in Barbosa at 11:53-62 and 12:11-32. In these examples,
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`checklists used for data collection are updated and synchronized across remote
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`devices. A POSITA would understand that such updating/synchronization of the
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`template/questionnaire is done automatically given Barbosa’s express teaching
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`regarding the importance of coordinating among remote users in the field. Id.,
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`11:55-62; Ex. 1018, ¶ 27. Likewise, transferring such information automatically
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`would have been obvious to POSITAs to ensure real-time coordination of efforts, a
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`key concern addressed by Barbosas. Ex. 1018, ¶ 27. Petitioners respectfully submit
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`that the claimed “automatically transferring” is taught and rendered obvious by
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`Barbosa.
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`2.
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`Barbosa Teaches and Renders Obvious “Making Available
`via the Internet Any Responses Transferred to Said Central
`Computer in Step (e).”
`The Institution Decision states Petitioner “does not explain how the portions
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`of Barbosa that it cites as disclosing making available responses on the Internet
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`actually disclose making responses transferred to the central computer in step (e)
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`available via the Internet.” Decision, 45-47. Petitioner respectfully submits that
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`Barbosa discloses and renders obvious the claimed use of the Internet.
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`Barbosa discloses an environment in which remote commuters communicate
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`with enterprise severs via the Internet. Barbosa, 7:12-22 (describing use of the
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`Internet to communicate between client and remote devices); 7:37-56 (“…
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`Information may be obtained from a server 58 located at the user’s enterprise, or
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`from other network 55 resources available to the user (e.g., Web pages
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`provided/obtained over the Internet). …”), 12:55-58 (connecting remote computer
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`via an Internet Service Provider). Using the Internet for such communications
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`between centralized servers and remote devices was extremely common by
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`Barbosa’s filing date. Ex. 1018, ¶¶ 29, 30. Using the disclosed Internet/Web-based
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`environment, Barbosa teaches various workflows in which responses to a template
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`of questions are transmitted to a central server, and then those responses are
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`distributed by the central server to other remote devices over a network, e.g., via the
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`Internet. Barbosa, 10:36-55 (distributing updated status information received from
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`handheld devices); 11:52-62 (distributing responses received from handheld
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`devices); 12:8-18 (distributing responses received from handheld devices); 7:12-22
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`(using the Internet to communicate between a central server and client devices); see
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`Ex. 1018, ¶ 31. This distribution of responses among different users allows for
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`efficiencies in data collection and coordination of efforts. Barbosa, 10:60-67; 11:58-
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`62; Ex. 1018, ¶ 31. Through Barbosa’s disclosure of a web/Internet-based
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`architecture, a POSITA would understand the disclosure of Barbosa encompasses a
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`central computer using the Internet to make available responses received from one
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`remote device in the form of updated and synchronized information provided to the
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`other handheld remote devices. Ex. 1018, ¶ 31.
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`It would also have been obvious to a POSITA at the time of the alleged
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`invention to use the Internet—which even at that time was the largest and most
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`ubiquitous network in the world—to send responses from other users, e.g., in multi-
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`user environments. Ex. 1018, ¶ 32. This obvious use of the Internet to disseminate
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`a user’s responses would facilitate the real-time coordination of resources, as
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`discussed throughout Barbosa. See, e.g., Barbosa,, Abstract, 11:55-11:62; Ex. 1018,
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`¶ 32. Given the disclosures of Barbosa and the obviousness of using the Internet at
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`the time, the claimed use of the Internet is taught and rendered obvious by Barbosa.
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`D. Ground 4: Claims 1, 2, 5, and 19-22 Are Obvious Over Hancock.
`Patent Owner does not rebut Petitioners’ showing for Ground 4 except to
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`assert the Petition “fails to show that Hancock discloses the use of device
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`independent tokens” and to cite the Institution Decision. Response, 23 (italics
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`added). Petitioners, however, do not assert that Hancock discloses device-
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`independent tokens – Petitioners assert only that Hancock renders obvious the use
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`of device independent tokens. Petition, 51-52. Specifically, Petitioners provide
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`evidence that “it would have been an obvious design choice to a POSITA that the
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`Go2 Application could have been implemented using Java” in a device-independent
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`manner – and Petitioners’ showing now stands unrebutted by the Response. Id.,
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`citing Ex. 1005, ¶¶ 132-133, 195. Petitioners’ expert explains in detail how device-
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`independent Java “is one of a limited number of programming languages that a
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`POSITA would have considered for implementing an application for a mobile device
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`such as the Go2 Application,” was “well within the technical grasp of a POSITA and
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`could be done with predictable results,” and “would have been an obvious design
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`choice” in view of a POSITA’s knowledge including as reflected in prior art
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`references. Ex. 1005, ¶¶ 132-133, 195, citing Exs. 1014, 1015.
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`While the Board did not initially perceive a reasonable likelihood of
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`prevailing (Decision, 48), Petitioners’ substantial evidence of obviousness over
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`Hancock as to Ground 4 now stands entirely unrebutted by Patent Owner’s
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`Response. Accordingly, the Board should find claims 1, 2, 5, and 19-22
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`unpatentable.
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`E. Ground 5: Claims 1, 2, 5, and 19-22 Are Obvious Over Hancock in
`View of Bandera.
`Patent Owner identifies no deficiency as to Ground 5. Patent Owner does not
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`dispute that Hancock is silent on the programming language for the Go2 Application
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`and that a POSITA therefore would have needed to choose a language. Petition, 69.
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`Patent Owner also does not meaningfully dispute that Bandera teaches and