Trials@uspto.gov
`571 272 7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`STARBUCKS CORPORATION ET AL.
`Petitioners
`v.
`FALL LINE PATENTS, LLC
`Patent Owner
`
`CASE IPR2019-00610
`PATENT 9,454,748
`
`PATENT OWNER'S PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 9,454,748
`CHALLENGING CLAIMS 1, 2, 5, 7, AND 19-22
`
`i
`
`
`571 272 7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`STARBUCKS CORPORATION ET AL.
`Petitioners
`v.
`FALL LINE PATENTS, LLC
`Patent Owner
`
`CASE IPR2019-00610
`PATENT 9,454,748
`
`PATENT OWNER'S PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 9,454,748
`CHALLENGING CLAIMS 1, 2, 5, 7, AND 19-22
`
`i
`
`
`
`TABLE OF CONTENTS
`
`IPR2019-00610
`U.S. PATENT 9,454,748
`
`I.
`
`Introduction
`
`II.
`
`Background of the Case
`
`III. The '748 Patent
`
`IV. Summary of Arguments and Action Requested
`
`V.
`
`Discussion of the Prior Art Relied Upon
`
`VI. Response to Petitioners' Challenges
`
`VII. The Board Should Exercise Its Discretion and Deny Institution
`
`VIII. The Administrative Patent Judges are Principal Officers
`of the United States
`
`IX. Conclusions
`
`1
`
`1
`
`3
`
`21
`
`23
`
`37
`
`49
`
`52
`
`53
`
`ii
`
`
`
`TABLE OF AUTHORITIES
`
`IPR2019-00610
`U.S. PATENT 9,454,748
`
`Cases
`
`31
`
`Dynamic Drinkware, LLC v. National Graphics,Inc,
`800 F3d 1375 (Fed. Cir., 2015)
`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356 (Fed. Cir. 2016) 49
`52
`Intercollegiate Broad. Sys., Inc. v. Copyright Royalty Board,
`684 F.3d 1332, (D.C. Cir. 2012)
`Lucia v. S.E.C., 138 S. Ct. 2044 (2018) 53
`NHK Spring Co., LTD. v. Intri-Plex Tech., Inc., Case No. 52
`IPR2018-00752, Paper 8 at 19-20 (P.T.A.B. Sep. 12, 2018)
`Nichia Corp. v. Document Security Systems, Inc., Case 51
`IPR2019-00397, Paper 10 at 6-7 (P.T.A.B. Apr. 19, 2019)
`SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018)
`
`49
`
`Statutes
`
`35 U.S.C. § 317
`
`35 U.S.C. § 314(a)
`
`35 U.S.C. § 316(b)
`
`35 U.S.C. § 316(a)
`
`Regulations
`
`37 C.F.R
`§ 42.74
`
`iii
`
`2
`
`50
`
`50
`
`52
`
`2
`
`
`
`IPR2019-00610
`U.S. PATENT 9,454,748
`
`PATENT OWNER'S EXHIBIT LIST
`
`EX 2001
`
`EX 2002
`
`EX 2003
`
`EX 2004
`
`The JavaTM Programming Language, Third Edition, Kan Arnold,
`James, Gosling, and David Holmes, Addison Wesley, © 2000, 4th
`Printing October 2001.
`
`Programming Wireless Devices with the JavaTM 2 Platform, Micro
`Edition, Roer Riggs, Antero Taivalsaari, and Mark VandenBrink,
`Addison Wesley, © 2001
`
`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. 6:18-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
`
`iv
`
`
`
`PATENT OWNER'S PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 9,454,748
`CHALLENGING CLAIMS 1-22
`
`I.
`
`Introduction
`
`Fall Line Patents, LLC (hereinafter "Patentee), the owner of the entire
`
`interest in U.S. Patent No. 9,454,748 (hereinafter the "748 Patent) hereby tenders
`
`its Preliminary Response to Petition for Inter Parts Review ("IPR") of the '748
`
`Patent (hereinafter the "Petition"). The above-mentioned Petition, which is now
`
`assigned Case IPR2019-00610, was filed by Starbucks Corporation et al.
`
`(hereinafter "Petitioners") and mailed on or about January 22, 2019. As explained
`
`in detail below, there is no reasonable likelihood that Petitioners would prevail in
`
`establishing anticipation or obviousness of any of the challenged claims during this
`
`inter partes review.
`
`II.
`
`Background of the Case
`
`Litigation Involving the Subject Patent
`
`The '748 patent is presently the subject of patent infringement lawsuits filed
`
`in the Eastern District of Texas against the following entities:
`
`Case Caption
`Fall Line Patents, LLC v. Zoe's Kitchen, Inc. et al
`Fall Line Patents, LLC v. AMC Ent. Holdings, Inc. et al
`Fall Line Patents, LLC v. Boston Market Corp.
`
`6:18-cv-00407
`6:18-cv-00408
`6:18-cv-00409
`
`1
`
`
`
`IPR2019-00610
`U.S. PATENT 9,454,748
`
`Case Caption
`6:18-cv-00411
`Fall Line Patents, LLC v. Starbucks Corp.
`6:18-cv-00412
`Fall Line Patents, LLC v. McDonald's Corp. et al
`Fall Line Patents, LLC v. Panda Restaurant Group, Inc. et al 6:18-cv-00413
`6:18-cv-00415
`Fall Line Patents, LLC v. Papa John's Int., Inc. et al
`
`Additionally, the following previously-filed cases have now been dismissed:
`
`Case Caption
`6:18-cv-00406
`Fall Line Patents, LLC v. Pizza Hut, LLC et al
`6:18-cv-00410
`Fall Line Patents, LLC v. Regal Cinemas, Inc.
`6:17-cv-00407
`Fall Line Patents, LLC v. Choice Hotels Int., Inc.
`6 :17-cv-00408
`Fall Line Patents, LLC v. Uber Technologies, Inc.
`Fall Line Patents, LLC v. American Airlines Group, Inc. et al 6:17-cv-00202
`6:17-cv-00203
`Fall Line Patents, LLC v. Cinemark Holdings, Inc. et al
`6 :17-cv-00204
`Fall Line Patents, LLC v. Grubhub Holdings, Inc. et al
`
`IPR2018-00535, which was initiated by Uber Technologies, Inc., and Choice
`
`Hotels International, Inc., to challenge the '748 Patent has been terminated by
`
`mutual consent. See, Joint Motion to Terminate Proceedings Pursuant to 35 USC
`
`317 and 37 C.F.R. 42.74, filed July 13, 2018 (Paper 10).
`
`IPR2018-00043 ("Unified Patents IPR"), Paper 34, determined that claims
`
`16-19, 21, and 22, of the instant patent were unpatentable. Claim 20 which
`
`depends from claim 19 was not challenged and remains in force. As such, the
`
`limitations of claim 20 are discussed herein in the context of cancelled claim 19.
`
`The remaining claims that are currently challenged are 1, 2, 5, 7, and 20. That
`
`2
`
`
`
`IPR2019-00610
`U.S. PATENT 9,454,748
`being said, Patentee believes that the cancelled claims are patentable at least for the
`
`reasons explained previously to the Board and /or as set out below.
`
`Pending Patent Application(s)
`
`A continuation application of the instant patent is currently pending in the
`
`U.S. Patent Office, to wit, App. No. 15/260,929. Claims 1-11 are cancelled and
`
`new claims 12-22 are currently pending in that application. A first Office action
`
`has been received and all claims currently stand as rejected.
`
`III.
`
`The '748 Patent
`
`a. Background
`
`The '748 patent names David Payne as its sole inventor and was filed
`
`October 22, 2010, but claims priority through another application to provisional
`
`patent application 60/404,491 which was filed August 19, 2002. During
`
`prosecution, a conception of the claims at least as early as January 1, 2002, was
`
`established to the satisfaction of the examiner. (`748 prosecution history, EX. 1007
`
`at 100-145).
`
`This patent relates to a method of collecting data using handheld devices and
`
`transmitting the data to a central server where it can be accessed and used. One
`
`example application of the technology at issue may be found in the '748 patent
`
`(EX 1001) at column 10, line 37, through column 11, line 42. In brief, this passage
`
`3
`
`
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`IPR2019-00610
`U.S. PATENT 9,454,748
`describes a secret shopper scenario (called a "mystery shopper" in the '748 patent)
`
`where an individual travels to a store location and anonymously collects
`
`information about the service that was provided. Data that is collected might
`
`include the location and the services received. The data are then communicated to
`
`a central server when a network connection is next established.
`
`The software running on the handheld device that collects infoil iation from
`
`the shopper takes the form of a questionnaire. The '748 patent makes clear that the
`
`claimed "questionnaire" can be any type of a request for infatination, whether
`
`collected automatically or manually. See, EX1001 at 8:17-19 ("For purposes of the
`
`instant disclosure, the series of questions/statements will collectively be referred to
`
`as a questionnaire."). The questions can be requests for information that are
`
`collected automatically by the handheld device. See id. at 5:35-37 ("[Alt least
`
`some of the information that is responsive to the designed questionnaire may be
`
`collected automatically rather than entered manually, e.g., time and date, position
`
`information if the device includes a GPS receiver, etc.").
`
`Prior art methods of collecting data in this fashion from handheld devices
`
`required coding and compiling a device specific program that presented the
`
`questionnaire to the user. The resulting executable program would then be usable
`
`by only one kind of device. This was particularly burdensome if different types of
`
`4
`
`
`
`IPR2019-00610
`U.S. PATENT 9,454,748
`devices were being supported, because the code would have to be separately
`
`compiled for each particular type of device.
`
`However, the '748 patent overcomes this problem by tokenizing the
`
`questionnaire before it is transmitted to the handheld device. That is, the instant
`
`system assigns device independent "tokens" to the elements of a questionnaire.
`
`See EX1001 at 8:15-17 ("This series of questions or statements will have been
`
`constructed on computer 22 and reduced to tokenized form for transmission to the
`
`handheld 28.") (emphasis added); See also, EX1001 at 8:40-43 (describing how
`
`tokens are "assigned" to questions).
`
`The questionnaire and its tokens must be device independent:
`
`As a part of the inventive system each remote device, preferably a
`handheld computer, is provided with an operating instruction system
`("OIS") which overlays its native operating system. Once equipped
`with the OIS, a remote device can be programmed according to
`methods described hereinafter. Any program developed under the
`inventive system will run on any handheld computer equipped with
`the OIS and files on one such handheld will transfer freely to any
`other handheld or any computer connected to the inventive system.
`
`EX1001 at Col. 7, lines 47-58. In other words, this patent contemplates that there
`
`will be an application layer that overlays the operating system on each different
`
`type of remote device so that the same questionnaire can be executed without
`
`change on each such device. In that sense, each questionnaire prepared according
`
`to the teachings of the '748 patent is then device independent.
`
`5
`
`
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`IPR2019-00610
`U.S. PATENT 9,454,748
`At least some of the tokens of each questionnaire must be executable. That
`
`is, they must correspond, for example, to a "logical, mathematical, or branching
`
`operation". Col. 8, lines 56-64:
`
`Each token preferably corresponds to a logical, mathematical, or
`branching operation and is preferably selected and made a part of the
`questionnaire through a graphical user interface. By this mechanism, a
`user is able to create a series of questions, the precise nature of which
`is dependent on the user's responses. For example, the questionnaire
`designer might desire to create a fon"' that asks the user different
`questions; depending on whether the user was male or female.
`
`The '748 patent also discloses an embodiment where the handheld device is
`
`able to determine its current location. One embodiment utilizes automatic entry of
`
`the GPS coordinates into the questionnaire in response to a question that requests
`
`location information that is part of the transmitted questionnaire. This variation is
`
`discussed, for example, in EX1001 at col. 10, lines 55-58. The '748 patent
`
`contemplates that the GPS receiver might be used to automatically collect the
`
`location of the handheld device and include that information in the questionnaire.
`
`As the mystery shopper enters the parking lot, the shopper will be
`prompted to enter a store number or location. If the handheld
`computer is equipped with a GPS receiver, this information could be
`entered automatically.
`
`EX 1001, col. 10, lines 55-58. See, also, EX 1001, col. 5, lines 42-48.
`
`A number of useful subsystems, which may already be present in the
`handheld device, or easily added later, may be utilized so that at least
`some of the information which is responsive to the designed
`questionnaire may be collected automatically rather than entered
`
`6
`
`
`
`IPR2019-00610
`U.S. PATENT 9,454,748
`manually, e.g., time and date, position information if the device
`includes a GPS receiver, etc.
`
`Figure 2 of the '748 Patent contains a simple schematic that illustrates some
`
`components of an embodiment:
`
`28
`
`As shown in this figure, a questionnaire is processed by a computer 22.
`
`Computer 22 tokenizes the questionnaire so that it can be transmitted to a "loosely
`
`networked" handheld device 28 in a format that a program running on the handheld
`
`device can understand. Using this scheme, when the questionnaire is updated, it is
`
`not necessary to edit, compile, and re-install the program running on handheld
`
`device 28. Instead, the questionnaire can be changed, re-tokenized, and only the
`
`tokenized questionnaire need be sent to the handheld device. This has multiple
`
`possible benefits, including not only the avoidance of burdensome re-compilation
`
`7
`
`
`
`IPR2019-00610
`U.S. PATENT 9,454,748
`procedures, but also the ability to distribute updated questionnaires to handheld
`
`devices over low-bandwidth network connections. EX 1001, col. 9, lines 14-28.
`
`With respect to the term "loosely networked", another problem that plagued
`
`prior art handheld remote data collection devices was that they did not handle
`
`network outages. The '748 patent describes this requirement thusly at col. 5, lines
`
`3-14:
`
`As noted above, with regard to the present invention, the term
`"loosely networked" is used to describe a networked computer system
`wherein devices on the network are tolerant of intermittent network
`connections. In particular, if any communication connection is
`available between devices wishing to communicate, network
`transmissions occur normally, in real time. If a network connection is
`unavailable, the information is temporarily stored in the device and
`later transmitted when the connection is restored. Unless otherwise
`specified, hereinafter the terms "network" or "networked" refer to
`loosely networked devices.
`
`In brief, the term "loosely networked" as it is used in the '748 patent
`
`describes a networked computer system wherein devices on the network are
`
`tolerant of intermittent network connections and, in fact, tolerant of the type of
`
`network connection available.
`
`b. Discussion of the Challenged Claims
`
`The challenged claims cover a method for managing data that involves
`
`transmitting a tokenized / device independent questionnaire from an originating
`
`8
`
`
`
`IPR2019-00610
`U.S. PATENT 9,454,748
`computer to a handheld device, where it can be used to acquire information after
`
`communications with the originating computer have ended. After the information
`
`is acquired, a network connection to a recipient computer is established and the
`
`information is transmitted. Some key claim limitations are discussed below.
`
`Each of the challenged claims requires device independence of its
`
`questionnaire. Additionally, the questionnaire (claim 7) and at least some of the
`
`tokens that comprise a questionnaire (claims 1 and 20) must be executable. See,
`
`challenged independent claims 1(e), 7(c), 19(d)(dl)1, and 21(a)(4)(i), emphasis
`
`added:
`
`Claim 1:
`
`(e) when said remote computing device is at said location,
`executing at least a portion of said plurality of tokens
`representing said questionnaire at within said remote computing
`device to collect a response from a user;
`
`Claim 7:
`
`(c) when said loosely networked computer is at said particular
`location, executing said transferred questionnaire on said
`loosely networked computer, thereby collecting responses from
`the user;
`Claim 20 (via claim 19(d)(d1)):
`executing at least a portion of said plurality of tokens
`(d)(dl)
`comprising said questionnaire on said handheld computing
`device to collect at least one response from a first user, and,
`
`Of importance to each of the challenged claims in the '748 patent is that the
`
`handheld device that executes the questionnaire also be capable of determining its
`
`1 Although claim 19 was deter lined to be not patentable in IPR2018-00043, Paper
`34, claim 20 which depends from claim 19 was not challenged and remains in
`force. As such, the limitations of claim 19 inherited by claim 20.
`
`9
`
`
`
`IPR2019-00610
`U.S. PATENT 9,454,748
`location. Each of the challenged independent claims requires that the transmitted
`
`questionnaire contain at least one question that solicits location information.
`
`Emphasis added in each case below.
`
`Claim 1:
`(b) said questionnaire including at least one question requesting GPS
`coordinates; ...
`
`Claim 7:
`(d) while said transferred questionnaire is executing, using said GPS to
`automatically provide said location identifying information as a
`response to said executing questionnaire;
`
`Claim 20 (via claim 19(b)):
`19(b) receiving within said handheld computing device a transmission of a
`tokenized questionnaire from said originating computer, said
`tokenized questionnaire including at least one question requesting
`location identifying information, said tokenized questionnaire
`comprising a plurality of device independent tokens; ...
`
`Also note that claim 20 (via claim 19) requires that the handheld computing
`
`device have a GPS unit integral thereto by virtue of its dependence from claim 19
`
`(emphasis added below):
`
`Claim 20 (via claim 19(a)):
`19(a) establishing communications between a handheld computing device
`and an originating computer wherein said handheld computing device
`has a GPS integral thereto;
`
`In order to acquire location information, the questionnaire (claim 7) and/or
`
`the tokens in the questionnaire (claims 1 and 20) must be executed to obtain the
`
`10
`
`
`
`IPR2019-00610
`U.S. PATENT 9,454,748
`current location of the handheld device and the GPS location information must
`
`then be automatically inserted and/or obtained in response to the executing
`
`questionnaire (emphasis added in each case below):
`
`Claim 1:
`said questionnaire including at least one question requesting GPS
`(b)
`coordinates; ...
`automatically entering the GPS coordinates into said questionnaire;
`
`(f)
`
`Claim 7:
`(a) designing a questionnaire including at least one question said
`questionnaire customized for a particular location having branching
`logic on a first computer platform wherein at least one of said at least
`one questions requests location identifying information; ...
`(d) while said transferred questionnaire is executing, using said GPS to
`automatically provide said location identifying infotijiation as a
`response to said executing questionnaire;
`
`Claim 20 (via claim 19):
`(b) receiving within said handheld computing device a transmission of a
`tokenized questionnaire from said originating computer, said
`tokenized questionnaire including at least one question requesting
`location identifying infoiiiiation, said tokenized questionnaire
`comprising a plurality of device independent tokens; ...
`(d) after said communications has been ended,
`(d3) using said GPS to automatically obtain said location identifying
`information in response to said at least one question that
`requests location identifying information;
`
`In the case of challenged claims 7 and 20, the GPS location information
`
`must be automatically obtained in response to a question in the questionnaire that
`
`requests such information. Claim 1 requires that the GPS coordinates be
`
`automatically entered into the questionnaire. See, Id.
`
`11
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`
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`IPR2019-00610
`U.S. PATENT 9,454,748
`
`1. Questionnaire
`
`In an example given in the '748 patent, the software running on the handheld
`
`device that collects infoimation from the shopper takes the fouli of a questionnaire.
`
`The '748 patent makes clear that the claimed "questionnaire" can be any type of a
`
`request for inforiiiation, whether collected automatically or manually. See, EX.
`
`1001 at 8:17-19 ("For purposes of the instant disclosure, the series of
`
`questions/statements will collectively be referred to as a questionnaire."). The
`
`questions can be requests for infotmation that are collected automatically by the
`
`handheld device. See id. at 5:35-37 ("[Alt least some of the information that is
`
`responsive to the designed questionnaire may be collected automatically rather
`
`than entered manually, e.g., time and date, position information if the device
`
`includes a GPS receiver, etc.").
`
`Prior art methods of collecting data in this fashion using handheld devices
`
`required coding and compiling a device specific stand-alone program that
`
`incorporated the questionnaire into its operating logic and presented it to the user.
`
`The resulting executable program with its embedded questionnaire would then
`
`only be usable by only one kind of device, i.e., the type of device for which the
`
`program was written and compiled. This was particularly burdensome if different
`
`types of handheld devices were being supported because the code would have to be
`
`12
`
`
`
`IPR2019-00610
`U.S. PATENT 9,454,748
`separately compiled for each particular type of device. EX. 1001, col. 1, line 48 —
`
`col. 2, line 2, and col. 3, lines 1-10.
`
`However, the '748 patent pioneered a new approach that required that there
`
`would be a layer that overlays or is built into the operating system on each
`
`different type of remote device so that the same questionnaire could be executed
`
`without change on each such different device. In that sense, each questionnaire
`
`prepared according to the teachings of the '748 patent is then device independent,
`
`e.g., EX. 1001 at Col. 7, lines 47-58, "Any program developed under the inventive
`
`system will run on any handheld computer equipped with the OIS...". Id. This is
`
`a required element of every claim. Accord: col. 8, lines 32-37:
`
`As will be discussed in greater detail below, the questionnaire is
`actually designed to include internal branching logic which is
`implemented by the OIS. Hence, with regard to the present invention,
`the teans "program" and "form" are used interchangeably with
`questionnaire.
`
`The '748 patent makes clear that the claimed "questionnaire" can be any
`
`type of a request for information, whether collected automatically or manually. It
`
`explains that the tenn "questionnaire" is meant in a broad sense. For example, the
`
``748 patent explains that the term questionnaire is used to refer to a simple series
`
`of questions or statements. See id. at 8:17-19 ("For purposes of the instant
`
`disclosure, the series of questions/statements will collectively be referred to as a
`
`questionnaire."). And the patent is clear that it is not necessary for a user to be
`
`13
`
`
`
`IPR2019-00610
`U.S. PATENT 9,454,748
`presented with the questions or for the user to provide the information in response.
`
`Rather, the questions can be requests for information that are collected
`
`automatically by the handheld device. See id. at 5:35-37 ("[A]t least some of the
`
`infotination that is responsive to the designed questionnaire may be collected
`
`automatically rather than entered manually, e.g., time and date, position
`
`information if the device includes a GPS receiver, etc.").
`
`In summary, the tennis "questionnaire," as used in the context of the '748
`
`Patent, should be defined to any type of request for information, whether collected
`
`automatically or manually, that is implementable be executed with a user by the
`
`OIS of the instant patent.
`
`2. Token
`
`The '748 Patent overcomes the problems associated with different handhelds
`
`requiring different compilations or versions of the same program by tokenizing the
`
`questionnaire before it is transmitted to the handheld device. That is, the instant
`
`system assigns device independent "tokens" to the elements of a questionnaire.
`
`See EX. 1001 at 8:15-17 ("This series of questions or statements will have been
`
`constructed on computer 22 and reduced to tokenized form for transmission to the
`
`handheld 28.") (emphasis added); See also, EX. 1001 at 8:40-43 (describing how
`
`tokens are "assigned" to questions). See also:
`
`To overcome the necessity of compiling a program for a particular
`machine, an application may be written in an interpreted language, or
`
`14
`
`
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`IPR2019-00610
`U.S. PATENT 9,454,748
`a language which can be compiled to produce an intermediate
`language (i.e., a language that falls somewhere between source code
`and object code) such as i-code or tokens. In such a scheme, each
`device is provided with a run-time package which can execute the
`compiled i-code or tokens, the run-time package having been written
`for that particular device, thus, only the runtime package needs to be
`modified in order to port a program to a new computing environment.
`Once the run-time package is installed, any application authored in the
`language and which has been compiled to i-code will run on the target
`device.
`
`Id., Col. 2, lines 13-26, emphasis added. Accord:
`
`The operating system provided in each computer device allows the
`use of a common instruction set in any such device, regardless of
`compatibility issues between the devices, wherein "instruction set" is
`used herein to mean the commands, tokens, etc., that are recognized
`by the operating system as valid instructions.
`
`Id., Col. 5, lines 21-26.
`
`Thus, tokens in the questionnaire must be device independent or device
`
`indifferent and at least some of the tokens that comprise the questionnaire must be
`
`executable. That is, they must correspond, for example, to a "logical,
`
`mathematical, or branching operation". Id., Col. 8, lines 56-64:
`
`Each token preferably corresponds to a logical, mathematical, or
`branching operation and is preferably selected and made a part of the
`questionnaire through a graphical user interface. By this mechanism, a
`user is able to create a series of questions, the precise nature of which
`is dependent on the user's responses. For example, the questionnaire
`designer might desire to create a form that asks the user different
`questions; depending on whether the user was male or female.
`
`15
`
`
`
`IPR2019-00610
`U.S. PATENT 9,454,748
`This preference is echoed in the claims as an explicit limitation independent claims
`
`1(e) and 20 (emphasis added in each case).
`
`Claim 1:
`(e) when said remote computing device is at said location, executing at
`least a portion of said plurality of tokens representing said
`questionnaire at within said remote computing device to collect a
`response from a user; ...
`
`Claim 20 (via claim 19(dl)):
`executing at least a portion of said plurality of tokens
`19(dl)
`comprising said questionnaire on said handheld computing device to
`collect at least one response from a first user, and, ...
`
`The '748 patent also discloses an embodiment where the handheld device is
`
`able to determine its current location. If that is possible, it teaches automatic entry
`
`of the GPS coordinates into the questionnaire in response to a question that
`
`requests location information that is part of the transmitted questionnaire. This
`
`variation is discussed, for example, in EX. 1001 at col. 10, lines 55-58. The '748
`
`patent contemplates that the GPS receiver might be used to automatically collect
`
`the location of the handheld device and include that information in the
`
`questionnaire.
`
`As the mystery shopper enters the parking lot, the shopper will be
`prompted to enter a store number or location. If the handheld
`computer is equipped with a GPS receiver, this information could be
`entered automatically.
`
`EX. 1001, col. 10, lines 55-58. See, also, EX. 1001, col. 5, lines 42-48.
`
`16
`
`
`
`IPR2019-00610
`U.S. PATENT 9,454,748
`A number of useful subsystems, which may already be present in the
`handheld device, or easily added later, may be utilized so that at least
`some of the information which is responsive to the designed
`questionnaire may be collected automatically rather than entered
`manually, e.g., time and date, position information if the device
`includes a GPS receiver, etc.
`
`As a final note, Petitioners' expert's self-aggrandizing description of how he
`
`used the word "token" in his own patent and application should be ignored as
`
`being irrelevant (e.g., EX 1005, ¶92 - ¶94).
`
`c. Discussion of the Challenged Independent Claims
`
`As discussed above, the terms "questionnaire" and "token" are defined in the
`
`specification of the '748 patent and their usage in the claims must be interpreted in
`
`light of those definitions.
`
`The challenged claims cover a method for managing data that involves
`
`transmitting a tokenized questionnaire from an originating computer to a handheld
`
`device where it can be used to acquire information after communications with the
`
`originating computer have ended. After the information is acquired, a network
`
`connection to a recipient computer is established and the information is
`
`transmitted. Some key claim limitations will be discussed below.
`
`1. Executable Tokens
`
`17
`
`
`
`IPR2019-00610
`U.S. PATENT 9,454,748
`Each claim in which "tokens" or "questionnaire" appears requires that the
`
`tokens or questionnaire be executable. See, challenged independent claim steps
`
`1(e), 7(c), 19(d)(d1), and 21(a)(4)(i), emphasis added:
`
`Claim 1:
`
`(e) when said remote computing device is at said location,
`executing at least a portion of said plurality of tokens
`representing said questionnaire at within said remote computing
`device to collect a response from a user;
`
`Claim 7
`
`(c) when said loosely networked computer is at said particular
`location, executing said transferred questionnaire on said
`loosely networked computer, thereby collecting responses from
`the user;
`Claim 20 (via claim 19(d)(dl)):
`19(d)(dl): executing at least a portion of said plurality of tokens
`comprising said questionnaire on said handheld computing
`device to collect at least one response from a first user, and,
`
`2. Device Independence
`
`As discussed previously, the tokens must be device independent or device
`
`indifferent so that the questionnaire can be executed without change on multiple
`
`different devices (claims 1 and 20). The questionnaire must be executable and
`
`device independent (claim 7). This is a fundamental property of tokens and of the
`
`questionnaire that is transmitted to the handheld device, which tokens and
`
`questionnaire are intended to be executed by an OIS resident on the handheld
`
`device.
`
`3. Location Determination
`
`18
`
`
`
`IPR2019-00610
`U.S. PATENT 9,454,748
`Of importance to each of the challenged claims in the '748 patent is that the
`
`handheld device that executes the questionnaire also be capable of deteiiiiining its
`
`location. Emphasis added in each case below.
`
`Claim 1:
`(b)
`
`(f)
`
`Claim 7:
`(b)
`
`(d)
`
`said questionnaire including at least one question requesting GPS
`coordinates; ...
`automatically entering the GPS coordinates into said questionnaire;...
`
`automatically transferring said designed questionnaire to at
`least one loosely networked computer having a GPS integral
`thereto;
`while said transferred questionnaire is executing, using said
`GPS to automatically provide said location identifying
`infoiiiiation as a response to said executing questionnaire;
`
`Claim 20 (via claim 19(a)):
`establishing communications between a handheld computing
`19(a)
`device and an originating computer wherein said handheld computing
`device has a GPS integral thereto; ...
`
`Note that claims 7 and 20/19 require a GPS unit (receiver) integral thereto.
`
`Claims 1, 7, and 20(19) all require that the GPS coordinates be obtainable
`
`automatically.
`
`Claim 1:
`(b) said questionnaire including at least one question requesting GPS
`coordinates; ...
`(f) automatically entering the GPS coordinates into said questionnaire;...
`
`Claim 7:
`(a) designing a questionnaire including at least one question said
`questionnaire customized for a particular location having branching
`
`19
`
`
`
`IPR2019-00610
`U.S. PATENT 9,454,748
`logic on a first computer platform wherein at least one of said at least
`one questions requests location identifying information; ...
`(d) while said transferred questionnaire is executing, using said GPS to
`automatically provide said location identifying information as a
`response to said executing questionnaire; ...
`Claim 20 (via claim 19):
`establishing communications between a handheld computing
`19(a)
`device and an originating computer wherein said handheld computing
`device has a GPS integral thereto; ...
`(b) receiving within said handheld computing device a transmission of a
`tokenized questionnaire from said originating computer, said
`tokenized questionnaire including at least one question requesting
`location identifying information, said tokenized questionnaire
`comprising a plurality of device independent tokens; ...
`
`Each of the challenged independent claims requires that the transmitted
`
`questionnaire contain at least one question that solicits location information.
`
`4. Automatically Acquiring and Entering Location Information
`into the Questionnaire
`
`In order to acquire the location information, tokens in the questionnaire must
`
`be executed (claims 1 and 20) or the questionnaire must be executed (claim 20) to
`
`obtain the current location of the handheld device. Further, the GPS location
`
`information must then be automatically inserted (or entered) into the questionnaire
`
`(claim 1):
`
`Claim 1:
`(b) said questionnaire including at least one question requesting
`GPS coordina
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