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 No. IPR2019-00610
`Patent No. 9,454,748
`____________________________
`
`PETITIONERS’ SUPPLEMENTAL BRIEF IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________
`
`STARBUCKS CORPORATION, et al.
`
`Petitioners
`
`v.
`
`FALL LINE PATENTS, LLC
`
`Patent Owner.
`____________________________
`
`Case No. IPR2019-00610
`Patent No. 9,454,748
`____________________________
`
`PETITIONERS’ SUPPLEMENTAL BRIEF IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`I.
`
`B.
`
`
`TABLE OF CONTENTS
`
`
`Petitioners’ Supplemental Claim Construction Positions ............................... 1
`A.
`The claims do not require tokens to be exclusively device indifferent
`or device independent. ........................................................................... 1
`The GPS limitations do not require the use of device indifferent or
`independent tokens. ............................................................................... 4
`II. Conclusion ........................................................................................................... 5
`
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`
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`IPR2019-00610
`U.S. Patent No. 9,454,748
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`i
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`IPR2019-00610
`U.S. Patent No. 9,454,748
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`TABLE OF AUTHORITIES
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`
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`CASES
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`Epistar Corp. v. Int’l Trade Cm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009) ............... 4
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`PAGE
`
`Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997) ...................... 2
`
`LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1342-43
`(Fed. Cir. 2005) .................................................................................................... 4
`Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d
`1350, 1359 (Fed. Cir. 2016) ................................................................................. 2
`
`
`
`OTHER
`
`MPEP, 8th ed., rev. 1 § 2111.03 (2003) .................................................................... 2
`
`
`PAGE
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`ii
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`
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`IPR2019-00610
`U.S. Patent No. 9,454,748
`Pursuant to the Board’s Order (Paper No. 24), Petitioners submit this
`
`supplemental brief regarding claim construction issues identified by the Board. As
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`the Board correctly notes, “Patent Owner appears to implicitly construe . . .
`
`limitations to require each of [various steps] be performed by executing device
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`independent tokens.” Paper No. 24 at 3. The claims have no such requirement.
`
`Neither the claim language nor the specification requires the claimed elements to all
`
`be performed via device independent or indifferent tokens. In fact, so construing the
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`claims would foreclose several embodiments in the specification. Accordingly,
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`Petitioners submit that because the claim limitations are not as narrow as Patent
`
`Owner suggests, all Challenged Claims should be cancelled in view of the prior art.
`
`I.
`
`PETITIONERS’ SUPPLEMENTAL CLAIM CONSTRUCTION POSITIONS
`A. The claims do not require tokens to be exclusively device
`indifferent or device independent.
`The Challenged Claims require a tokenized questionnaire with a plurality of
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`“device independent” (claims 19, 21) or “device indifferent” (Claim 1) tokens. The
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`claims do not require, however, that the tokens making up the questionnaire consist
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`solely of device independent or indifferent tokens. The claim language does not
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`support this requirement, and the specification does not suggest the patentee
`
`restricted the claims in this manner.
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`First, the claim language does not require the tokens to consist of only device
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`independent or indifferent tokens. In claims 19 and 21, the limitation recites a
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`1
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`IPR2019-00610
`U.S. Patent No. 9,454,748
`“tokenized questionnaire comprising a plurality of device independent tokens.” The
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`Manual of Patent Examining Procedure explicitly states, “The transitional term
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`‘comprising’ . . . is inclusive or open-ended, and it does not exclude additional,
`
`unrecited elements or method steps.” MPEP, 8th ed., rev. 1 § 2111.03 (2003); see,
`
`e.g., Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997). Therefore,
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`the recitation of “comprising” in claims 19 and 21 means that while the resulting
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`method must have at least some device independent tokens, the claims do not
`
`exclude device dependent tokens.
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`Had the patentee intended the language to be so restricted, he could have used
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`“consisting of,” which does “exclude[] any element, step, or ingredient not specified
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`in the claim.” MPEP, 1 § 2111.03; see also Multilayer Stretch Cling Film Holdings,
`
`Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1359 (Fed. Cir. 2016) (holding there is
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`an “exceptionally strong presumption that a claim term set off with ‘consisting of’
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`is closed to unrecited elements”). Here the patentee did not include such a restriction,
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`which indicates the element is open-ended. The same is true for Claim 1. Claim 1
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`recites “tokenizing said questionnaire, thereby producing a plurality of device
`
`indifferent tokens representing said questionnaire.” The claim language does not
`
`include any exclusionary clauses to suggest that the plurality of tokens must consist
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`solely of device indifferent tokens.
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`Second, the specification does not require all of the tokens to be device
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`2
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`IPR2019-00610
`U.S. Patent No. 9,454,748
`indifferent or independent. Patent Owner may argue that the claim language requires
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`all tokens to be indifferent/independent because the plurality of device indifferent or
`
`independent
`
`tokens,
`
`taken
`
`together, constitute
`
`the questionnaire. Such a
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`construction, however, will exclude embodiments recited in the specification. For
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`example, the specification explains that subsystems already resident on the handheld
`
`devices may provide information responsive to the questionnaires:
`
`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.
`
`’748 Patent, 5:42-48 (emphasis added). There is no discussion, much less a
`
`requirement, that these subsystems be device independent, and their pre-existence
`
`on the handheld devices evidences the opposite: A handheld device’s extant
`
`subsystem is likely to be device dependent.
`
`As another example, the specification notes that “the time and date from the
`
`[handheld] computer’s real time clock” can be recorded in response to a
`
`questionnaire, but there is no discussion of how that information is recorded. See id.
`
`at 10:58-60. A token obtaining time and date from a computer’s clock could be
`
`device dependent because, depending on the device, the real-time clock’s data may
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`3
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`IPR2019-00610
`U.S. Patent No. 9,454,748
`be available in different formats. The specification does not require the tokens to all
`
`be device independent or indifferent, and in fact describes the opposite. Thus, the
`
`prior art need not disclose or obviate device independence/indifference for all
`
`generated tokens for the Challenged Claims to be unpatentable.
`
`B.
`
`The GPS limitations do not require the use of device indifferent or
`independent tokens.
`Claims 1, 19, and 21 all include limitations reciting the automatic entry of
`
`GPS coordinates into the claimed questionnaire. None of these claims requires that
`
`entry to occur via tokens at all, much less via device independent or indifferent
`
`tokens. The claim language does not require device independence or indifference,
`
`and neither does the specification.
`
`As an initial matter, the claim language is silent as to the method of automatic
`
`entry of the GPS coordinates—it states only “automatically entering the GPS
`
`coordinates” (claims 1, 21) or “using said GPS to automatically obtain said location
`
`identifying information” (Claim 19). Indeed, in each claim, at least a portion of the
`
`plurality of tokens is executed in a step separate from obtaining or entering GPS
`
`data. The Federal Circuit has held that “where two steps . . . are ‘entirely different
`
`concepts and procedures’ and identified as separate steps in the claims, no skilled
`
`artisan could reasonably construe them as a single element.” Epistar Corp. v. Int’l
`
`Trade Cm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009) (quoting LizardTech, Inc. v.
`
`Earth Resource Mapping, Inc., 424 F.3d 1336, 1342-43 (Fed. Cir. 2005)). Here,
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`4
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`IPR2019-00610
`U.S. Patent No. 9,454,748
`executing the tokens and obtaining the GPS information are separate steps, and they
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`involve two different procedures: obtaining GPS information is performed
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`automatically, whereas executing the tokens is not and requires obtaining responses
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`manually provided by the user. Accordingly, they should be treated as separate steps,
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`another indication that tokens are not even necessary for the GPS limitations.
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`Additionally, even if tokens are involved in obtaining GPS information, there
`
`is no indication in the claims that such tokens must be device independent or
`
`indifferent. The specification itself is indifferent as to whether tokens are involved.
`
`As discussed above, in one instance, the specification notes that the GPS coordinates
`
`can be obtained from “subsystems[] which may already be present in the handheld
`
`device [such as] a GPS receiver.” ’748 Patent at 5:42-47. The only other reference
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`to GPS in the specification states only that “[i]f the handheld computer is equipped
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`with a GPS receiver, this information could be entered automatically.” Id. at 10:56-
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`58. The specification is silent as to how this is accomplished and makes no mention
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`of the use of tokens to achieve this step.
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`Consequently, because neither the claims nor the specification requires the
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`GPS limitations to be accomplished via the use of tokens of any kind, these
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`limitations should not be construed to require the use of such tokens.
`
`II. CONCLUSION
`Petitioners respectfully request the Challenged Claims be found unpatentable.
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`5
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`Dated: July 16, 2020
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`IPR2019-00610
`U.S. Patent No. 9,454,748
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`Respectfully submitted,
`
`
`/Ricardo Bonilla /
`By
`Ricardo Bonilla (Reg. No. 65,190)
`rbonilla@fr.com;
`PTABInbound@fr.com Fish &
`Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`214-747-5070; 877-769-7945 (Fax)
`
`Robert H. Reckers (Reg. No. 54,633)
`rreckers@shb.com
`Shook, Hardy & Bacon L.L.P. 600
`Travis Street, Suite 3400
`Houston, Texas 77002-2926
`713-227-8008; 713-227-9508 (Fax)
`
`Lowell D. Mead (PHV forthcoming)
`lmead@cooley.com
`Cooley LLP
`3175 Hanover Street
`Palo Alto, CA 94304
`650-843-5734; 650-849-7400 (Fax)
`
`Counsel for Petitioners
`
`
`
`
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`6
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`CERTIFICATE OF SERVICE
`
`IPR2019-00610
`U.S. Patent No. 9,454,748
`
`Pursuant to 37 CFR § 42.6(e)(4), the undersigned certifies that on July 16,
`
`2020, a complete and entire copy of this PETITIONERS’ SUPPLEMENTAL
`
`BRIEF IN SUPPORT OF PETITION FOR INTER PARTES REVIEW was
`
`provided via email to the Patent Owner by serving the correspondence email
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`addresses of record as follows:
`
`Terry L. Watt
`Crowe & Dunlevy
`500 Kennedy Building
`321 South Boston Avenue
`Tulsa, OK 74103
`
`Matthew J. Antonelli
`Michael E. Ellis
`Larry D. Thompson, Jr.
`Antonelli, Harrington & Thompson LLP
`4306 Yoakum Blvd., Ste. 450
`Houston, TX 77006
`
`Email: terry.watt@crowedunlevy.com
`Email: matt@ahtlawfirm.com
`Email: michael@ahtlawfirm.com
`Email: larry@ahtlawfirm.com
`
`
`
`
`
`/Edward G. Faeth/
`
`Edward G. Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
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