Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 24
`Entered: July 8, 2020
`
`
`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 IPR2019-00610
`Patent 9,454,748 B2
`____________
`
`
`Before MICHELLE N. WORMMEESTER, SHEILA F. McSHANE, and
`JOHN R. KENNY, Administrative Patent Judges.
`
`KENNY, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`We authorize the parties to provide additional briefing on claim
`construction issues concerning GPS and device indifferent and device
`independent tokens.
`
`
`Tel: 571-272-7822
`
`
`Paper 24
`Entered: July 8, 2020
`
`
`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 IPR2019-00610
`Patent 9,454,748 B2
`____________
`
`
`Before MICHELLE N. WORMMEESTER, SHEILA F. McSHANE, and
`JOHN R. KENNY, Administrative Patent Judges.
`
`KENNY, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`We authorize the parties to provide additional briefing on claim
`construction issues concerning GPS and device indifferent and device
`independent tokens.
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`
`In particular, claim 1 of the challenged patent recites the following
`limitations:
`
`(c) tokenizing said questionnaire, thereby producing
`a plurality of device indifferent tokens representing
`said questionnaire;
`(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; and
`(f) automatically entering the GPS coordinates into
`said questionnaire.
`Claim 19 recites these limitations:
`(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;
`(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
`(d3) using said GPS to automatically obtain said
`location identifying information in response to said
`at
`least one question
`that requests
`location
`identifying information.
`And claim 21 recites these limitations:
`(a)(2) receiving within said handheld computing
`device a transmission of a tokenized questionnaire,
`including at least one question requesting GPS
`
`2
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`
`the GPS
`
`coordinates and at least one additional question,
`said tokenized questionnaire comprising a plurality
`of device independent tokens;
`(a)(4)(i) executing at least a portion of said plurality
`of tokens comprising said questionnaire on said
`handheld computing device, and
`(a)(4)(ii)
`automatically
`entering
`coordinates into said questionnaire.
`Patent Owner appears to implicitly construe the above limitations to
`require that each of steps (f) in claim 1, (d3) in claim 19, and (a)(4)(ii) in
`claim 21 be performed by executing device independent tokens. See, e.g.,
`Patent Owner Response (Paper 17), 17–21. The Petition does not appear to
`have the same implicit constructions. See, e.g., Paper 7, 27. Neither party,
`however, has expressly addressed these claim construction issues. Thus, we
`authorize the parties to expressly address these issues of claim construction
`in additional briefing.
`Within six business days of the issuance of this Order, each party may
`submit an Initial Paper of no more than five pages, addressing the above
`claim construction issues. In its Initial Paper, each party should address the
`following questions:
`1. Is there any requirement of device independence for
`step (f) in claim 1? If so, what is that requirement?
`Must step (f) in claim 1 be performed by executing
`device indifferent tokens?
`2. Does step (c) of claim 1 require that all tokens
`produced by tokenizing the questionnaire be device
`indifferent?
`3. Is there any requirement of device independence for
`steps (d3) in claim 19 and step (a)(4)(ii) in claim 21?
`If so, what is that requirement? Must steps (d3) in
`
`3
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`
`claim 19 and step (a)(4)(ii) in claim 21 be performed
`by executing device independent tokens? and
`4. Does the phrase “tokenized questionnaire comprising a
`plurality of device independent tokens” recited in
`claims 19 and 21 require that all tokens in the recited
`questionnaire be device independent?
`In its Initial Paper, each party should provide its reasoning for its
`answers to the above questions as well as any additional exposition and case
`law discussion pertinent to the construction of the above limitations
`regarding device independence, device indifference, and GPS. No other
`issues may be addressed in the Initial Papers or in the Responsive Papers
`authorized below.
`If a party timely submits an Initial Paper, it may within nine business
`days from the issuance of this Order, submit a Responsive Paper of no more
`than three pages responding to the Initial Paper of the opposing party. 1 The
`Responsive Paper shall only respond to issues addressed in the opposing
`party’s Initial Paper. No other papers are authorized.
`
`It is:
`
`
`
`
`ORDERED that, within six business days of the issuance of this
`Order, each party may submit an Initial Paper as specified above; and
`
`
`
`1 A party is not authorized to submit a Responsive Paper if its opposing
`party does not submit an Initial Paper.
`
`4
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`
`FURTHER ORDERED that, if a party timely submits an Initial Paper,
`that party may, within nine business days from the issuance of this Order,
`submit a Responsive Paper as specified above.2
`
`PETITIONER:
`Tara D. Elliott
`Lisa K. Nguyen
`LATHAM & WATKINS LLP
`tara.elliott@lw.com
`lisa.nguyen@lw.com
`
`Robert H. Reckers
`SHOOK, HARDY & BACON L.L.P.
`rreckers@shb.com
`
`Ricardo Bonilla
`FISH & RICHARDSON P.C.
`rbonilla@fr.com
`
`
`PATENT OWNER:
`Terry Watt
`CROWE & DUNLEVY
`terry.watt@crowedunlevy.com
`
`Matthew J. Antonelli
`Michael E. Ellis
`Larry D. Thompson, Jr.
`ANTONELLI, HARRINGTON & THOMPSON
`matt@ahtlawfirm.com
`michael@ahtlawfirm.com
`larry@ahtlawfirm.com
`
`2 See footnote 1 above.
`
`5
`
`
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