Trialsgcgusptogov
`571.272 .7822
`
`PAPER No.__
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AMERICAN MULTI—CINEMA, INC., ET AL.,
`
`Petitioners
`
`V.
`
`FALL LINE PATENTS, LLC
`
`Patent Owner
`
`CASE IPR2019-OO610
`
`PATENT 9,454,748
`
`PATENT OWNER’S SUR—REPLY TO PETITIONER’S
`
`REPLY TO PATENT OWNER’S RESPONSE RE
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 9,454,748
`
`CHALLENGING CLAIMS 1, 2, 5, 7, AND 19-22
`
`
`571.272 .7822
`
`PAPER No.__
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AMERICAN MULTI—CINEMA, INC., ET AL.,
`
`Petitioners
`
`V.
`
`FALL LINE PATENTS, LLC
`
`Patent Owner
`
`CASE IPR2019-OO610
`
`PATENT 9,454,748
`
`PATENT OWNER’S SUR—REPLY TO PETITIONER’S
`
`REPLY TO PATENT OWNER’S RESPONSE RE
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 9,454,748
`
`CHALLENGING CLAIMS 1, 2, 5, 7, AND 19-22
`
`
`
`CASE IPR2019-00610
`
`U.S. PATENT 9,454,748
`
`TABLE OF CONTENTS
`
`I.
`
`Introduction .................................................................................................. 1
`
`II.
`
`Petitioner Has Failed to Produce a Single Example of How a POSITA in
`
`2002 Might Have Used Java Micro Edition to Read a GPS in a Device
`
`Independent Manner .................................................................................... 1
`
`III.
`
`Petitioner Improperly Relies on Art That is Not Prior to the Earliest
`
`Claimed Priority Date of the Instant ‘748 Patent......................................3
`
`IV.
`
`Petitioner Improperly Relies on the Document in EX 1020 to Establish a
`
`Chronology Without Providing Proper Authentication or Validation. ..8
`
`V.
`
`Bandera Does Not Teach Java Running on a Handheld Computing
`
`Device That Can Read a GPS .................................................................. 10
`
`VI. There is No Showing That an Object-Oriented Language Produces
`
`Device Independent Executable Tokens .................................................. 11
`
`VII. Claims 1 and 19-22 Are Not Obvious Over Barbosa (Ground 1) .......... 13
`
`VIII. Claims 1 and 19-21 Are Not Obvious over Barbosa in View of Bandera
`
`(Ground 2) .................................................................................................. 13
`
`ii
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`CASE IPR2019-00610
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`U.S. PATENT 9,454,748
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`IX.
`
`Barbosa in View of Falls Does not Render Claim 7 as Obvious (Ground
`
`3). ................................................................................................................. 13
`
`A. Barbosa at least does not teach “automatically transferring” (claim
`
`steps 7(b) and 7(e)) ............................................................../....................... 1 3
`
`B. Barbosa at least does not teach or render obvious “making available
`
`Via the Internet” (claim 7(1)) ..................................................................... 17
`
`X. Claims 1, 2, 5, and 19-22 Are Not Obvious Over Hancock (Ground 4)
`
`18
`
`XI. Claims 1, 2, 5, and 19-22 Are Not Obvious Over Hancock in View of
`
`Bandera (Ground 5) .................................................................................. 19
`
`XII.
`
`Hancock in View of Falls Does not Render Claim 7 as Obvious (Ground
`
`6). ................................................................................................................. 20
`
`A. Hancock at least does not teach “automatically transferring” (claim
`
`steps 7(b)) .................................................................................................... 20
`
`B. Hancock at least does not teach “making available on the Internet”
`
`(claim step 7(1)). ......................................................................................... 21
`
`XIII. Conclusions ................................................................................................ 23
`
`iii
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`
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`CASE IPR2019-00610
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`U.S. PATENT 9,454,748
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`TABLE OF AUTHORITIES
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`Cases
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`Page
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`Hilgraeve, Inc. v. Symantec Corp, 271 F. Supp. 2d 964, 974—75
`
`(ED. Mich. 2003) ........................................................................................... 8
`
`Statutes
`
`35 USC §311(b) .............................................................................................. 3
`
`Rules
`
`37 C.F.R. § 42.62(b) ....................................................................................... 8
`
`Federal Rules of Evidence 901 ....................................................................... 9
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`iv
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`CASE IPR2019-00610
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`U.S. PATENT 9,454,748
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`PATENT OWNER’S EXHIBIT LIST
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`February 25, 2020
`
`
`
`EX 2001
`
`
`
`
`
`
`Programming Language, Third Edition, Kan Arnold,
`The Java
`
`James, Gosling, and David Holmes, Addison Wesley, © 2000, 4th
`Printing October 2001.
`
` Programming Wireless Devices with the Javam 2 Platform, Micro
`EX 2002
`
`
`Edition, Roer Riggs, Antero Taivalsaari, and Mark VandenBrink,
`
`Addison Wesley, © 2001
`
`
`
`
`
`
`EX 2003
`Defendants’ Motion to Stay Litigation Pending Inter Partes Review
`of the Patent-In—Suit, Fall Line Patents, LLC v. Zoe’s Kitchen, Inc.
`and Zoe’s Kitchen USA, LLC, U.S.D.C., ED TX, Tyler Div., Case
`
`No. 6: l 8—CV-407-RWS
`
`
`
`Defendants’ Reply In Support of Their Motion to Stay Litigation
`Pending Inter Partes Review of the Patent-in—Suit, Fall Line
`Patents, LLC v. Zoe’s Kitchen, Inc. and Zoe ’s Kitchen USA, LLC,
`U.S.D.C., ED TX, Tyler Div., Case No. 6:18—CV-407-RWS
`
`
`
`
`
`
`
`
`X 2004
`
`
`
` L E
`
`EX 2005 Declaration of Dr. Samuel H. Russ under 37 C.F.R. §1.68 in
`
`Opposition to Decision Granting Inter Partes Review of U.S.
`Patent No. 9,454,748 (Claims l,2,5,7, and 19-22)
`
`
`
`
`PATENT OWNER’S SUR-REPLAY TO PETITIONER’S
`
`REPLY TO PATENT OWNER’S RESPONSE RE
`
`INTER PARTES REVIEW OF US. PATENT NO. 9,454,748
`
`CHALLENGING CLAIMS 1, 2, 5, 7, AND 19-22
`
`I.
`
`Introduction
`
`Fall Line Patents, LLC (hereinafter “Patentee), the owner of the entire
`
`interest in US. Patent No. 9,454,748 (hereinafter the ‘748 Patent) hereby tenders
`
`its Sur-Reply to the Petitioner’s Reply (Paper 19), “Reply”, hereinafter. According
`
`to the Board’s Scheduling Order (Paper 15) the instant paper is timely if filed by
`
`February 25, 2020.
`
`II.
`
`Petitioner Has Failed to Produce a Single Example of How a POSITA in
`
`2002 Might Have Used Java Micro Edition to Read a GPS in a Device
`
`Independent Manner
`
`The Board in its Institution Decision (Paper 14, “Decision” hereinafter)
`
`noted on page 23, Footnote 10 (emphasis added):
`
`We note that Petitioner does not cite to support other than expert
`
`testimony for this contention or identify specific Java code or
`
`features that it contends constitutes the index, instruction, or
`
`command.
`
`Petitioner did not respond to this challenge in its Reply. Nor did it address
`
`Patent Owner’s similar challenge in its Response (Paper 16):
`
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`CASE IPR2019-00610
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`U.S. PATENT 9,454,748
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`Petitioners’ expert has never provided a source code or other
`
`programming examples of how Java as it existed on wireless devices
`
`at the time of the instant invention (12MB) or at the time of Barbosa
`
`could be used to obtain information from a GPS receiver in a device
`
`independent manner. That is simply because it could not have been
`
`done in a device independent manner on a handheld using Java at the
`
`time of patent owner’s invention.
`
`The burden should be on the Petitioners to demonstrate a specific
`
`device independent methodology using JZME as it existed at the
`
`time of the instant invention [to show] that information from a
`
`GPS receiver could be acquired from a wireless device.
`
`Paper 16, p. 16.
`
`Petitioner has failed to satisfy that burden. Nowhere in Petitioner’s expert
`
`reports (EX 1005 and EX 1018) is there any sort of demonstration of how the
`
`claimed functionality might be implemented, nor is there an identification of
`
`specific Java code or features that would constitute an “index,
`
`instruction or
`
`command”.
`
`Instead Petitioner’s expert, who presumably is a person of
`
`extraordinary skill in the art, has been unable to do that. The entire premise for the
`
`instant challenge to patentability is an unsupported statement that asserts “it could
`
`be done” without more.
`
`It is error to say that a tokenized questionnaire written in a language for
`
`mobile devices (12MB) that demonstrably cannot read GPS hardware (EX 2005 at
`
`1150) satisfies the “device independence” requirement of the instant claims. What
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`2
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`U.S. PATENT 9,454,748
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`is missing is exactly how a device independent tokenized questionnaire can reach
`
`outside of the functionality provided by KVM (i.e., the version of Java that ran on
`
`hand held device in 2002, EX 1005, 1139 and 1144) to access a hardware GPS in a
`
`manner that would allow the tokenized questionnaire to be moved to another
`
`platform without change and acquire GPS information.
`
`The only way that this could have been done at the time of the instant patent
`
`would have been to do exactly what the instant inventor did, i.e., write his own OIS
`
`(operating instruction system, e. g., EX 1001, col. 7, lines 35-45) that would need to
`
`be rewritten and separately compiled for each supported device and operating
`
`system so that a tokenized questionnaire could be executed without change on each
`
`different device. There is just no evidence of record that anyone else would be
`
`willing to undertake this task for multiple / different mobile communication
`
`operating systems in the pursuit system that can of a portable tokenized
`
`questionnaire that can be executed without change on different handheld operating
`
`platforms.
`
`III. Petitioner Improperly Relies on Art That is Not Prior to the Earliest
`
`Claimed Priority Date of the Instant ‘748 Patent.
`
`35 USC §3 l 1(b) specifically limits consideration of patentability in an inter
`
`partes review to only “prior art consisting of patents or printed publications.”
`
`Emphasis added.
`
`In direct contravention of the explicit language of the statute
`
`3
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`CASE lPR2019-00610
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`U.S. PATENT 9,454,748
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`Petitioner has inexplicably relied in its Reply on printed publications with
`
`demonstrable dates after the earliest claimed priority date of the ‘748 patent. As
`
`was set out in Patent Owner’s Response (Paper 16, p. 4) The ‘748 patent 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 date at
`
`least as early as January I, 2002, was
`
`established. (‘748 prosecution history, EX. 1007 at 100-145). However, Petitioner
`
`inexplicably relies heavily on two documents with publication dates after the
`
`earliest claimed priority date and, indeed, after the actual filing date of the parent
`
`non-provisional application, to wit:
`
`EX 1019 Java Specification Request (JSR-I79), which bears a copyright
`
`date of2003 (Id, p. 3); and
`
`EX 1021 Bluetooth Application Programming with Java APIS, which bears a
`
`copyright date of 2004 (Id, p. 5).
`
`Petitioner improperly speculates without support that because a feature of
`
`Java Micro edition might have been available “near—contemporaneous[ly]” with the
`
`earliest claimed priority date of the instant invention, a POSITA would have had
`
`knowledge of it and “all that would have been required to achieve this [reading
`
`from a GPS receiver] is an update to the API.” EX 1018, 1117.
`
`In fact, this
`
`statement is made with respect to the Barbosa reference, which has an earliest
`
`
`
`claimed priority date of September 2000 — (EX 1002, p. 1). The full text of
`
`Petitioner’s expert’s testimony follows:
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`U.S. PATENT 9,454,748
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`17. It is my opinion that a POSITA at the time of Barbosa would have
`
`recognized 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, 1117, emphasis added. That is, Barbosa would have known in the year
`
`2000 — almost two years before work on the JSR—179 document had even began
`
`(March 2002, Id., 1115), that if he waited long enough the API of a handheld device
`
`running KVM (not the full-featured Java JVM) would eventually be “updated” to
`
`allow Barbosa’s Java program to be run on handheld devices so that it could
`
`collect GPS information.1 That conclusion is adopted in Petitioner’s Reply, pp. 7-
`
`8.
`
`Petitioner’s expert also speculates —- again without support — that it would
`
`have been obvious to a POSITA at the time of Barbosa to apply the functionality
`
`in the full—version JVM to handheld devices once same became available in the
`
`indefinite future:
`
`1 Inexplicably, Petitioner’s Expert indicates that EX 1019 supports a starting date
`on JSR—l79 “at least as early as March 2002”. EX 1018, 114. EX 1019 does not
`support that date: Petitioner’s expert does not provide a citation in that document
`in support. Indeed, the word “March’ does not appear in this document and
`“2002” appears only in the list of references on page 9 of EX 1019.
`
`5
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`U.S. PATENT 9,454,748
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`11. Thus, rather than being limited solely to the disclosures of Java 2
`
`Platform, Micro Edition (J2ME), it is my opinion that it would have
`
`been obvious to a POSITA at the time of Barbosa to apply known
`
`techniques used by Java (Version 1), Java 2 Standard Edition, and Java
`
`2 Enterprise Edition to wireless devices once those devices’ then-
`
`limited computing power improved.
`
`EX 1018, 1i 1 l, emphasis added. Petitioner’s expert does not speculate as to a time
`
`when the “then-limited computing power” of handheld wireless devices might
`
`have improved enough to allow them to run full featured Java or when KVM for
`
`wireless devices would be updated to permit applets to be written. More
`
`specifically, Petitioner’s expert does not provide a showing that such would have
`
`been the case by January 1, 2002, the earliest priority date of the instant invention.
`
`Patent Owner has clearly established that as of the earliest priority date of
`
`the ‘748 Patent that Java 2 Platform, Micro Edition (J2MB) was the version of Java
`
`that was available on handheld computers. See, e.g., EX 2006, 1145. “Wireless
`
`devices at the time of the patent did not support the JVM.” This statement is
`
`unambiguously supported and uncontradicted by EX 2002, pp. 14—15. See also Id.
`
`at IH43:
`
`43. It is important to understand this conversation about Java in the
`
`context of the priority date of the '748 patent, i.e., the state of the art
`
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`CASE IPR2019-00610
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`U.S. PATENT 9,454,748
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`as it existed in 2002. The Java that would have been available to a
`
`developer of a solution for cell phones (i.e. J2ME) was, by design,
`
`quite limited in its functionality. As will be shown, these limitations
`
`are explicitly disclosed in the authoritative reference identified herein
`
`as EX. 2002.
`
`Thus, Petitioners' expert's unsupported speculation regarding the properties of Java
`
`running on wireless devices as it might have been “after their then-limited
`
`computing power improved” (EX 1018, 1111) must be totally disregarded
`
`These sorts of statements are clear error, are supported only by conjecture,
`
`and call into question the entire testimony of this expert. This sort of speculation
`
`should be struck or excluded from consideration by the Board. This grasping at
`
`straws argument is indicative of the weakness of Petitioner’s case.
`
`Similarly, in Petitioner’s Reply, a statement is made in reliance on BX 1021
`
`that simply is unsupported. Petitioner claims the following:
`
`As shown below,
`
`this alternative J2ME configuration would have
`
`used the Personal Profile instead of the MIDP:
`
`[Figure omitted]
`
`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 organizers, communicators, and
`
`game consoles that require a user
`
`interface and Internet applet
`
`support”).
`
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`CASE IPR2019-00610
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`U.S. PATENT 9,454,748
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`Petitioner’s Reply, pp. 9-10, emphasis addedz.
`
`However, the copyright date of EX 1021 is 2004, two years after the
`
`earliest claimed priority of the instant patent. EX 2021, p. 5. This attempt to
`
`have publications that were inarguably published after the earliest priority
`
`date of the instant patent considered in this proceeding should be interpreted
`
`as conclusive proof of Petitioner’s attempt to confuse the issues in this case.
`
`IV.
`
`Petitioner Improperly Relies on the Document in EX 1020 to Establish a
`
`Chronology Without Providing Proper Authentication or Validation.
`
`Any document submitted in an IPR must comply with the Federal Rules of
`
`Evidence, including its hearsay and authentication rules.
`
`37 C.F.R. § 42.62(b)
`
`(2012). Petitioner’s EX 1020 has not been authenticated nor has it been verified
`
`and, as such, it amounts to inadmissible hearsay per 32 since it is offered to prove
`
`the truth of the availability of certain software as of a specific date.
`
`See, e.g.,
`
`Hilgraeve, Inc. V. Symantec Corp, 271 F. Supp. 2d 964, 974—75 (ED. Mich.
`
`2003), “Plaintiff correctly notes that the dates imprinted on these documents are
`
`hearsay when offered to prove the truth of the matter asserted, that is, that SAM
`
`2 With respect to the omitted figure, Patent Owner’s expert explains that Sun
`Computer classified “low-end consumer devices” to be those with intermittent
`connectivity such as cell phones. EX 2006, 113 5—1l40. This is in connection the
`figure in EX 2002, p. 5, which has been omitted above.
`
`8
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`CASE IPR2019-00610
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`U.S. PATENT 9,454,748
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`1.3 was accessible to the public as of the date set forth on the documents.” Id, at
`
`974.
`
`Petitioner has made no effort to authenticate this document or establish its
`
`truthfulness pursuant to FRE 901. For example, there is no statement that the web
`
`page in EX 1020 is a true and accurate copy of same as obtained on the date
`
`downloaded. Similarly, there no evidence of record to show that the information
`
`on this page can be relied upon in support of Petitioner’s Expert Declaration (EX
`
`1018). For example, consider the Roman declaration (EX 1018) at 1115:
`
`15. Work on JSR—179 began at least as early as March 2002, as
`
`evidenced by the JSR—179 document and other publicly available
`
`information. Id. at iii; see also EX 1020 at 1.
`
`The JSR—179 document referred to is apparently EX 1019. EX 1019 contains no
`
`mention at all of a “March” date. Thus, the sole support for the March 2002 date
`
`that is relied upon in Petitioner’s paper is a date obtained from the unauthenticated
`
`web page in EX 1020. See, e.g., Petitioner’s Reply (paper 19) at p. 2:
`
`“Work on JSR—179 began at least as early as March 2002. Ex. 1018, 11
`
`15; Ex. 1019, iii; see also Ex. 1020, 1.”
`
`Id, emphasis added
`
`As such, any testimony offered in reliance of a date obtained from this
`
`document is hearsay and must be struck or excluded.
`
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`CASE IPR2019-00610
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`U.S. PATENT 9,454,748
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`V.
`
`Bandera Does Not Teach Java Running on a Handheld Computing
`
`Device That Can Read a GPS
`
`Patent Owner has established conclusively that that Bandera’s use of the
`
`Java JVM did not occur on a handheld computing device. Bandera says:
`
`JAVA® is an object-oriented programming language developed by
`
`Sun Microsystems, Mountain View, California.
`
`JAVA® source
`
`code is compiled into a machine—independent format that can be run
`
`on any machine with a JAVA® runtime system known as the JAVA®
`
`Virtual Machine (JVM). The JVM is defined as a Virtual machine that
`
`is implemented by emulating a processor through the use of software
`
`on a real machine.
`
`EX 1004, col. 5, lines 41-47. Emphasis added.
`
`However, Sun Microsystem’s own documentation (EX 2002, p. 3) states that
`
`the limited version of Java that was specifically developed to run on handheld
`
`computing devices was KVM (i.e., Sun’s “K” Virtual Machine), not the JVM
`
`utilized by Bandera. Id, pp. 14-15, EX 2006, 1144-45. This document bears a
`
`copyright date of 2001. Id, p. 2.
`
`Thus, to the extent that Bandara used Java JVM, that can only mean his use
`
`was not on a handheld device. So, Bandera cannot be relied upon to teach a
`
`questionnaire that comprises a plurality of device independent tokens as asserted by
`
`Petitioner.
`
`10
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`CASE lPR2019-00610
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`U.S. PATENT 9,454,748
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`VI. There is No Showing That an Object—Oriented Language Produces
`
`Device Independent Executable Tokens
`
`Since Petitioners have failed to show that Java KVM running on a handheld
`
`device on 2002 could access system hardware such as a GPS receiver, Petitioner
`
`has pivoted to say that the discussion should not be limited just to Java as a
`
`language running on handheld devices, but that any “obj cot—oriented” language
`
`could potentially have been used:
`
`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. Barbosa teaches, “Computer
`
`program code for carrying out operations of the present invention can
`
`be written in an obj ect-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.
`
`Petitioner’s Reply p. 6.
`
`Of course, writing a questionnaire in SmallTalk or C++ would have
`
`sacrificed device independence of the tokens in the questionnaire. There is no
`
`11
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`evidence of record and, indeed, Patent Owner’s expert testifies to the opposite, that
`
`languages such as such as Smalltalk or C++ would not produce a questionnaire
`
`with device independent tokens as is required by claims 1, 19, and 21, and by the
`
`claims dependent therefrom. Patent Owner’s expert discusses this specific passage
`
`of Barbosa in EX 2006, 1180-84. He definitively states that the use of languages
`
`such as Smalltalk or C++ would not produce device independent tokenized code.
`
`Support for Patent Owner’s expert’s conclusion may be found in Sun Computer’s
`
`own programmer’s guide to Java 2 Micro Edition (J2MB, EX 2002):
`
`“[A]pplication management capabilities are often written in the C
`
`programming language or some other low-level programming
`
`language specific to the host operating system."
`
`EX 2002 p. 36, emphasis added. See also,
`
`“As an important aside, the references make clear that code written in
`
`C/C++ in the 2001-2002 timeframe was device dependent”,
`
`EX 2006 at 1151, and,
`
`“A native method lets you implement a method that can be invoked
`
`from the Java programming language but is written in a "native"
`
`language, usually C or C++. ... If you use a native method, all
`
`portability and safety of the code are lost.”
`
`and EX 2001, p. 6, emphasis added.
`
`12
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`VII. Claims 1 and 19-22 Are Not Obvious Over Barbosa (Ground 1)
`
`In addition to the arguments presented herein, Patent Owner reasserts all
`
`arguments presented in its Response, Paper16.
`
`VIII. Claims 1 and 19-21 Are Not Obvious over Barbosa in View of Bandera
`
`(Ground 2)
`
`In addition to the arguments presented in this paper, Patent Owner reasserts
`
`all arguments presented in its Reply, Paper 17.
`
`IX. Barbosa in view of Falls Does not Render Claim 7 as Obvious (Ground
`
`3).
`
`A. Barbosa at least does not teach “automatically transferring” (claim
`
`steps 7(b) and 7(e)).
`
`The Board correctly recognized that Petitioner had failed to establish that
`
`Barbosa / Falls teaches at least claim step 7(e) which requires “automatically
`
`transferring”. Neither does it teach claim step 7(b), which also requires
`
`“automatically transferring”. Indeed, Petitioner has failed once again to establish
`
`that Barbosa teaches automatic transfer of a designed questionnaire to a recipient
`
`device or automatic transfer in real time to at least one loosely networked
`
`13
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`CASE IPR2019—00610
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`U.S. PATENT 9,454,748
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`computer as is required by claim steps 7(b) and 7(e) respectively. In brief, Barbosa
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`teaches synchronization upon user request, not automatically and, of course, that
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`synchronization is after—the-fact, not in real time as it required by claim step 7(e).
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`Claim 7 describes a system that is fully automatic. The tokenized
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`questionnaire is automatically transferred to a recipient computer (step (b)) and
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`then the data collected by the questionnaire are automatically transferred from the
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`recipient computer to a central computer (step (e)). Nothing in Barbosa teaches
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`this, nor is there any suggestion of this sort of arrangement.
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`Consider the word “automatic” as it is used in the ‘748 Patent. See EX 1001,
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`9:62-67 (emphasis added): “This transfer may optionally occur automatically, or
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`upon direction of the user as specified by the client during the creation of the
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`form.” See also, “. .. at least some of the information which is responsive to the
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`designed questionnaire may be collected automatically rather than entered
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`manually.” Id., 5:44—46. As indicated in these citations, the ‘748 Patent clearly
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`distinguishes between processes that are fully automatic and those that happen at
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`the direction of the user.
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`As another example see Id., 9:26-29: “[i]f the network connection is
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`unavailable, the update will happen automatically as soon as the connection 34 is
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`restored.” Id., 9:26—29, emphasis added. This clearly anticipates an action without
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`user intervention.
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`14
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`U.S. PATENT 9,454,748
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`Further, in describing another example, the ‘748 Patent explains that
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`“Additionally, a programming change made at a central office will automatically
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`propagate to loosely networked computers dispersed throughout the field.
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`Id.5:29-32.” Emphasis added.
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`All of these examples, and there are many others, make it clear that the
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`specification of the ‘748 Patent clearly distinguishes between actions that are truly
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`automatic, i.e., not initiated by a user, and those that are user initiated.
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`This is not Barbosa’s approach. Consider, for example, Barbosa at 11:29-
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`40, which is relied upon by Petitioner (Petitioner’s Reply, pp. l3—l4). When the
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`full text of that passage is considered, it is clear that Petitioner has misrepresented
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`its intent:
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`Field technicians may utilize a handheld devices [sic] to ensure that
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`the proper inventory will be provided prior to embarking on a daily
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`service schedule. The assessor may start an inventory program 1101,
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`identifl a service schedule 1102, and synchronize the schedule 1103
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`with an inventory manager. The inventory manager assesses the
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`schedule requirements and provides the technician with an inventogg
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`availability status 1104.
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`Id. Bold text in original, underlining added for emphasis.
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`15
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`U.S. PATENT 9,454,748
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`The Barbosa’s synchronization is not automatic but, instead, it is initiated by
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`the assessor. This is consistent with the language of claim 31 which indicates that
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`Barbosa’s invention enables “the user to synchronize the schedule with inventory
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`data stored in a server wirelessly accessible by said handheld data management
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`device. . .”. Id. 16:26-28. This is not automatic transfer as is required by claim 7.
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`Similarly, and with respect to the Barbosas passage 10:32—42 (relied upon in
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`Petitioner’s Reply at p. 14), there is no evidence there that the synchronization is
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`automatic. This passage indicates that a worker’s handheld device “may be
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`synchronized 901 with a server to receive an updated template containing tasks for
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`the worker at the beginning of every work shift.” Id. That text indicates that
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`presumably it also “may not” be synchronized, which would suggest that such is
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`not automatic. Further, there is nothing in this passage that says that
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`synchronization is automatic or that it is otherwise than assessor initiated.
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`With respect to Barbosa’s examples in 11:53~62 and 12:11—32, which are
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`also relied upon by Petitioner on page 14 and 15 of the Reply, there is nothing in
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`those passages that says the synchronization is anything but a user initiated data
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`transfer. With respect to Barbosa at 11:53—62, there is no mention of “automatic”
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`synchronization and, instead, all of the language is couched in terms of use by an
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`assessor or investigator. With respect to Barbosa at 12:11—32, again there is no
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`mention of automatic transfer — either to or from the handheld. With respect to
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`16
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`CASE IPR20l9-00610
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`U.S. PATENT 9,454,748
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`both identified passages, there is nothing there to suggest that the synchronization
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`or transfer of information in automatic.
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`Generally speaking, there is no support in Barbosa for automatic transfer of
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`questionnaire data.
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`Finally, Petitioner and Petitioner’s expert have sought to confuse
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`“synchronization” with “automatic transfer” of a questionnaire. There is nothing
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`in Bandera that states that the synchronization is performed automatically as that
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`term is used in the ‘7 48 Patent. Instead, the examples given support assessor-
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`initiated or user-initiated synchronization. After a manually initiated
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`synchronization the technician may refer to a device that has been updated but the
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`synchronization is not initiated automatically as is required by Claim 7.
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`Thus, Barbosa cannot be said to teach “automatically transferring” either the
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`questionnaire (to the handheld device) or the user responses (from the handheld
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`device) as that term is consistently used in the ‘748 Patent. So, for at least for this
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`reason, claim 7 cannot be said to be obvious in View of Barbosa / Falls.
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`B. Barbosa at least does not teach or render obvious “making available
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`via the Internet” (claim 7(1)).
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`First, as demonstrated above with respect to claim steps (b) and (e), Barbosa
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`does not teach “automatic synchronization and information transfers” as claimed
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`by Petitioner. Reply at p. 13. However, claim step (f) specifically requires that
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`17
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`U. S. PATENT 9,454,748
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`information transferred by method of step (e) be “made available via the Internet”.
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`This specific requirement, i.e., data that was automatically transferred be made
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`available Via the Internet, is simply not taught by Barbosa at least because Barbosa
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`does not teach automatic transfer of user responses.
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`So, in order to find that Barbosa teaches claim 7(f) a threshold finding must
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`be made that step (e) is performed, which is not the case here.
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`Although Barbosa certainly discusses the use of the Internet in multiple
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`locations, there is no discussion of making information that was automatically
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`transferred available.
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`Since claim element 7(e) is completely missing from Barbosa, it would be
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`error to use hindsight to conclude that it would have been obvious to have Barbosa
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`automatically transfer user responses and then make those responses available Via
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`the Internet.
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`As such, at least for this reason Barbosa cannot be said to teach or render
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`obvious “making available Via the Internet.”
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`X. Claims 1, 2, 5, and 19-22 Are Not Obvious Over Hancock (Ground 4)
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`Petitioners now assert that Patent Owner has misconstrued their arguments
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`with respect to Hancock. Petitioners now argue that the issue is not whether
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`Hancock discloses device independent tokens but instead that Hancock renders
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`18
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`U.S. PATENT 9,454,748
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`obvious the use of device independent tokens. Petitioner’s Reply at p. 17. They
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`claim that it would have been an obvious design choice to write the Hancock’s
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`G02 application in Java.
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`As explained above and elsewhere (e.g., Patent Owner’s Response Paper 16,
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`pp. 24) Hancock discloses the use of a single device dependent language C++
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`which is operating system-dependent. EX 2006, 1182. There is simply nothing in
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`Hancock, as confirmed by Petitioner’s inability to identify same, that suggests any
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`advantages to be obtained by rewriting his system to be device-independent and to
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`use a tokenized questionnaire wherein at least some of the tokens are executable.
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`Only hindsight can provide such a suggestion3 .
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`XI. Claims 1, 2, 5, and 19-22 Are Not Obvious Over Hancock in View of
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`Bandera (Ground 5)
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`In addition to the arguments presented in this paper, Patent Owner reasserts
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`all arguments presented in its Reply, Paper 17.
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`3 Petitioners’ expert previously opined that he could determine based on Hancock’s
`flowchart alone that Hancock’s questionnaire was “tokenized”. EX 1005, 11191.
`Patent Owner’s expert demonstrated the fallacy of that supposition. EX 2006, 1197—
`99. Interestingly, Petitioners now claim instead that the issue is not whether or not
`Hancock’s program was device independent but, instead, whether it would be
`obvious to rewrite same in a device independent manner to produce a tokenized
`questionnaire.
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`1 9
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`CASE lPR2019-00610
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`U.S. PATENT 9,454,748
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`XII. Hancock in View of Falls Does not Render Claim 7 as Obvious (Ground
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`6).
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`A. Hancock at least does not teach “automatically transferring” (claim
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`steps 7(b)).
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`Without conceding that any other limitation in claim 7 is present, Hancock at
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`least does not at least teach the steps of “automatically transferring” requirement of
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`claim step 7(b) or making available on the Internet, step 7(f).
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`First, with respect to step 7(b), Petitioners have argued that Hancock’s
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`“G02” program corresponds to Patent Owner
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