`571.272 .7822
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`PAPER N0._
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`STARBUCKS CORPORATION ET AL.
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`Petitioners
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`v.
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`FALL LINE PATENTS, LLC
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`Patent Owner
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`CASE IPR2019-00610
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`PATENT 9,454,748
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`PATENT OWNER’S SUPPLEMENTAL BRIEF
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`RE CLAIM CONSTRUCTION FOR
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`INTER PARTES REVIEW OF U.S. PATENT NO. 9,454,748
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`CHALLENGING CLAIMS 1, 2, 5, 7, AND 19-22
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`
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`CASE lPR2019-00610
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`U.S. PATENT 9,454,748
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`PATENT OWNER’S SUPPLEMENTAL BRIEF RE CLAIM
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`CONSTRUCTION FOR INTER PARTES REVIEW OF U.S. PATENT NO.
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`9,454,748 CHALLENGING CLAIMS 1, 2, 5, 7, AND 19-22
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`I.
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`Introduction
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`This paper is submitted pursuant to the Board’s authorization to the parties to
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`provide additional briefing in connection with claim construction issues concerning
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`GPS and device independent or indifferent tokens. Each party is directed to address
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`the four questions set out below.
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`II.
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`General Comments
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`All of the text that follows related to claim construction should be understood
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`to be offered for use only in the context of the current inter partes review and in light
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`of the prior art of record. Answers should be understood to be reflective of the state
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`of art technology as it existed as of the earliest priority date of the ‘748 patent, i.e.,
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`Jan. 1, 2002.
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`A.
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`The Operating Instruction System (018)
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`Claims in the ‘748 patent that call for a tokenized questionnaire require an
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`operating instruction system (“018”) on the recipient device that can process the
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`tokens of the questionnaire, e.g., Patent Owner’s Response (“Response”), p. 10,
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`EXlOOI at 7:47-58, 1d. at 2: 18-26. The 018 overlays the native operating system on
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`CASE IPRZOl9-00610
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`U.S. PATENT 9,454,748
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`each different type of remote device so that the same tokenized questionnaire can be
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`executed without change on each such device. EX2006, 1|26. The DIS implements
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`the internal branching logic of the questionnaire and executes those tokens that are
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`executable. EXIOO], 8:31-37, and 4:66 - 5:2.
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`The 018 handles the interface between the questionnaire and the hardware of
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`the device the 018 is installed on. 1d. Failure to support a broad access to the
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`hardware of the host device is specifically identified in the ‘748 patent as one
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`weakness of prior art approaches. 1d at 2126-3 1.
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`A GPS receiver is an example of the sort of hardware that Java running on
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`wireless devices (“JZME”, Response pp. 12-14) was not equipped to access at the
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`time of the invention. In order to encourage wide acceptance of 12MB, the language
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`had limited capabilities and was designed to accommodate the "lowest common
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`denominator" of such devices. EX 2006, 1132. The lowest common denominator
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`among such portable devices would not have included a GPS receiver as a standard
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`feature. EX2006 §§32-33.
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`B.
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`The Questionnaire
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`A tokenized questionnaire is one to which the instant system has assigned
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`device independent "tokens" to its elements. See EXIOOl at 8: 15-1 7, "This series of
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`questions or statements will have been constructed on computer 22 and reduced to
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`tokenized form for transmission to the handheld 28." See also, EXlOOI at 8:40-43
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`CASE lPRZOl9-00610
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`U.S. PATENT 9,454,748
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`(describing how tokens are " assigned" to questions). This patent contemplates that
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`there will be a layer that overlays the operating system on each different type of
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`remote device so that the same questionnaire can be executed without change on that
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`device. Each questionnaire prepared according to the teachings of the '748 patent is
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`then device independent. (e. g., Response, p. 6, EXIOOI at 7:47-58).
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`C.
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`The Interaction between a Questionnaire and the 018
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`The tokens in a questionnaire are device independent or indifferent:
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`there is
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`an 018 that has been programmed to interpret the tokens in the questionnaire and
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`execute them. When a questionnaire has a token that corresponds to a request for
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`information from a hardware device, the 018 receives that token and interacts with
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`the hardware (as it has been programmed to do) to obtain the requested information.
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`Ill. Response to the Board’s Questions
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`1.
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`Is there any requirement of device independence for step (i) in claim 1?
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`If so, what is that requirement? Must step (0 in claim 1 be performed
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`by executing device indifferent tokens?
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`In the context of the prior art of record and as of the date the invention was
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`made, if the questionnaire contain a token that requests that the 018 automatically
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`obtain and enter the GPS coordinates into the questionnaire, that token must be
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`device independent. Step 1(t) may be initiated by a device independent token
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`embedded in the questionnaire. The token is interpreted and executed by the DIS.
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`CASE lPR2019-00610
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`U.S. PATENT 9,454,748
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`If the questionnaire requests automatic retrieval and entry of the GPS coordinates
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`that request (token) must be device independent.
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`EX 2006, 1|1|47-49, 52. The 018
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`controls the automatic collection of GPS data from the device. EX 2006, 1127.
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`2.
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`Does step (c) of claim 1 require that all tokens produced by tokenizing
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`the questionnaire be device indifferent?
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`All of the tokens in the questionnaire in claim 1 must be device indifferent,
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`otherwise the same questionnaire could not be executed without change on each
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`device adapted to work according to the claimed invention. EXIOOl at 7: 47-58.
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`Response p. 6. EX 2006, 1126.
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`3.
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`Is there any requirement of device independence for steps (d3) in claim
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`19 and step (a)(4)(ii) in claim 21? If so, what is that requirement? Must
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`steps (d3) in claim 19 and step (a)(4)(ii) in claim 21 be performed by
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`executing device independent tokens? and
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`As previously indicated, in the context of the prior art of record and as of the
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`date the invention was made, if the questionnaire contains a token that requests that
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`the 018 automatically obtain and enter the GPS coordinates into the questionnaire,
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`that token must be device independent.
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`Steps 19(d3) and 21(a)(4)(ii) may be initiated by a device independent token
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`that has been embedded in the questionnaire. If the questionnaire requests automatic
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`retrieval and entry of the GPS coordinates that request (token) must be device
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`
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`independent. EX 2006, 1H]47-49, 52. The 018 controls the automatic collection of
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`GPS data from the device. EX 2006, 1127.
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`CASE lPR2019-00610
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`U.S. PATENT 9,454,748
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`4.
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`Does the phrase “tokenized questionnaire comprising a plurality of
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`device independent tokens” recited in claims 19 and 21 require that all
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`tokens in the recited questionnaire be device independent?
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`All of the tokens in the questionnaire must be device independent, otherwise
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`the same questionnaire could not be executed without change on each device
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`adapted to work according to the claimed invention. EX1001 at 7: 47-58.
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`Response p. 6
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`In view of the foregoing, judgment is requested in favor of Patent Owner
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`with respect to all challenged claims of the ‘748 patent.
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`7/ 16/2020
`(Date)
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`Respectfully submitted,
`Reg 1. watt/
`Terry L. Watt
`Registration No. 42214
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`
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`CERTIFICATE OF SERVICE
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`CASE lPRZOl9-00610
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`U.S. PATENT 9,454,748
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`The undersigned certifies, in accordance with 37 CPR. § 42.205, and pursuant to
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`Petitioner’s consent to electronic service, service was made via email on July 16,
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`2020 to the Petitioner as follows:
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`Tara D. Elliott
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`Lisa K. Nguyen
`LATHAM & WATKINS LLP
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`tara.elliott@lw.com
`lisa.nguyen@lw.com
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`Robert H. Reckers
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`SHOOK, HARDY & BACON L. L. P.
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`rreckeis@shb.com
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`Ricardo Bonilla
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`FISH & RICHARDSON P. C.
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`rbonilla@fr.com
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`Respectfully submitted,
`hem 1. watt!
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`Registration No. 42214
`Customer No. 22206
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`