Trials(wuspto.gov
`571.272 .7822
`
`PAPER N0._
`
`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 SUPPLEMENTAL BRIEF
`
`RE CLAIM CONSTRUCTION FOR
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 9,454,748
`
`CHALLENGING CLAIMS 1, 2, 5, 7, AND 19-22
`
`
`571.272 .7822
`
`PAPER N0._
`
`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 SUPPLEMENTAL BRIEF
`
`RE CLAIM CONSTRUCTION FOR
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 9,454,748
`
`CHALLENGING CLAIMS 1, 2, 5, 7, AND 19-22
`
`
`
`CASE lPR2019-00610
`
`U.S. PATENT 9,454,748
`
`PATENT OWNER’S SUPPLEMENTAL BRIEF RE CLAIM
`
`CONSTRUCTION FOR INTER PARTES REVIEW OF U.S. PATENT NO.
`
`9,454,748 CHALLENGING CLAIMS 1, 2, 5, 7, AND 19-22
`
`I.
`
`Introduction
`
`This paper is submitted pursuant to the Board’s authorization to the parties to
`
`provide additional briefing in connection with claim construction issues concerning
`
`GPS and device independent or indifferent tokens. Each party is directed to address
`
`the four questions set out below.
`
`II.
`
`General Comments
`
`All of the text that follows related to claim construction should be understood
`
`to be offered for use only in the context of the current inter partes review and in light
`
`of the prior art of record. Answers should be understood to be reflective of the state
`
`of art technology as it existed as of the earliest priority date of the ‘748 patent, i.e.,
`
`Jan. 1, 2002.
`
`A.
`
`The Operating Instruction System (018)
`
`Claims in the ‘748 patent that call for a tokenized questionnaire require an
`
`operating instruction system (“018”) on the recipient device that can process the
`
`tokens of the questionnaire, e.g., Patent Owner’s Response (“Response”), p. 10,
`
`EXlOOI at 7:47-58, 1d. at 2: 18-26. The 018 overlays the native operating system on
`
`
`
`CASE IPRZOl9-00610
`
`U.S. PATENT 9,454,748
`
`each different type of remote device so that the same tokenized questionnaire can be
`
`executed without change on each such device. EX2006, 1|26. The DIS implements
`
`the internal branching logic of the questionnaire and executes those tokens that are
`
`executable. EXIOO], 8:31-37, and 4:66 - 5:2.
`
`The 018 handles the interface between the questionnaire and the hardware of
`
`the device the 018 is installed on. 1d. Failure to support a broad access to the
`
`hardware of the host device is specifically identified in the ‘748 patent as one
`
`weakness of prior art approaches. 1d at 2126-3 1.
`
`A GPS receiver is an example of the sort of hardware that Java running on
`
`wireless devices (“JZME”, Response pp. 12-14) was not equipped to access at the
`
`time of the invention. In order to encourage wide acceptance of 12MB, the language
`
`had limited capabilities and was designed to accommodate the "lowest common
`
`denominator" of such devices. EX 2006, 1132. The lowest common denominator
`
`among such portable devices would not have included a GPS receiver as a standard
`
`feature. EX2006 §§32-33.
`
`B.
`
`The Questionnaire
`
`A tokenized questionnaire is one to which the instant system has assigned
`
`device independent "tokens" to its elements. See EXIOOl at 8: 15-1 7, "This series of
`
`questions or statements will have been constructed on computer 22 and reduced to
`
`tokenized form for transmission to the handheld 28." See also, EXlOOI at 8:40-43
`
`
`
`CASE lPRZOl9-00610
`
`U.S. PATENT 9,454,748
`
`(describing how tokens are " assigned" to questions). This patent contemplates that
`
`there will be a layer that overlays the operating system on each different type of
`
`remote device so that the same questionnaire can be executed without change on that
`
`device. Each questionnaire prepared according to the teachings of the '748 patent is
`
`then device independent. (e. g., Response, p. 6, EXIOOI at 7:47-58).
`
`C.
`
`The Interaction between a Questionnaire and the 018
`
`The tokens in a questionnaire are device independent or indifferent:
`
`there is
`
`an 018 that has been programmed to interpret the tokens in the questionnaire and
`
`execute them. When a questionnaire has a token that corresponds to a request for
`
`information from a hardware device, the 018 receives that token and interacts with
`
`the hardware (as it has been programmed to do) to obtain the requested information.
`
`Ill. Response to the Board’s Questions
`
`1.
`
`Is there any requirement of device independence for step (i) in claim 1?
`
`If so, what is that requirement? Must step (0 in claim 1 be performed
`
`by executing device indifferent tokens?
`
`In the context of the prior art of record and as of the date the invention was
`
`made, if the questionnaire contain a token that requests that the 018 automatically
`
`obtain and enter the GPS coordinates into the questionnaire, that token must be
`
`device independent. Step 1(t) may be initiated by a device independent token
`
`embedded in the questionnaire. The token is interpreted and executed by the DIS.
`
`
`
`CASE lPR2019-00610
`
`U.S. PATENT 9,454,748
`
`If the questionnaire requests automatic retrieval and entry of the GPS coordinates
`
`that request (token) must be device independent.
`
`EX 2006, 1|1|47-49, 52. The 018
`
`controls the automatic collection of GPS data from the device. EX 2006, 1127.
`
`2.
`
`Does step (c) of claim 1 require that all tokens produced by tokenizing
`
`the questionnaire be device indifferent?
`
`All of the tokens in the questionnaire in claim 1 must be device indifferent,
`
`otherwise the same questionnaire could not be executed without change on each
`
`device adapted to work according to the claimed invention. EXIOOl at 7: 47-58.
`
`Response p. 6. EX 2006, 1126.
`
`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 claim 19 and step (a)(4)(ii) in claim 21 be performed by
`
`executing device independent tokens? and
`
`As previously indicated, in the context of the prior art of record and as of the
`
`date the invention was made, if the questionnaire contains a token that requests that
`
`the 018 automatically obtain and enter the GPS coordinates into the questionnaire,
`
`that token must be device independent.
`
`Steps 19(d3) and 21(a)(4)(ii) may be initiated by a device independent token
`
`that has been embedded in the questionnaire. If the questionnaire requests automatic
`
`retrieval and entry of the GPS coordinates that request (token) must be device
`
`
`
`independent. EX 2006, 1H]47-49, 52. The 018 controls the automatic collection of
`
`GPS data from the device. EX 2006, 1127.
`
`CASE lPR2019-00610
`
`U.S. PATENT 9,454,748
`
`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?
`
`All of the tokens in the questionnaire must be device independent, otherwise
`
`the same questionnaire could not be executed without change on each device
`
`adapted to work according to the claimed invention. EX1001 at 7: 47-58.
`
`Response p. 6
`
`In view of the foregoing, judgment is requested in favor of Patent Owner
`
`with respect to all challenged claims of the ‘748 patent.
`
`7/ 16/2020
`(Date)
`
`Respectfully submitted,
`Reg 1. watt/
`Terry L. Watt
`Registration No. 42214
`
`
`
`CERTIFICATE OF SERVICE
`
`CASE lPRZOl9-00610
`
`U.S. PATENT 9,454,748
`
`The undersigned certifies, in accordance with 37 CPR. § 42.205, and pursuant to
`
`Petitioner’s consent to electronic service, service was made via email on July 16,
`
`2020 to the Petitioner as follows:
`
`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.
`
`rreckeis@shb.com
`
`Ricardo Bonilla
`
`FISH & RICHARDSON P. C.
`
`rbonilla@fr.com
`
`Respectfully submitted,
`hem 1. watt!
`
`Registration No. 42214
`Customer No. 22206
`
`
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