`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 BRIEF IN RESPONSE TO
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`PETITIONER’S 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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`TABLE OF AUTHORITIES
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`CASE [PR2019-00610
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`U.S. PATENT 9,454,748
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`Cases
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`Page
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`United States v. Adams, 383 U. S. 39, 49 (1966) ........................................... 1
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`PATENT OWNER’S BRIEF IN RESPONSE TO PETITIONER’S
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`CLAIM CONSTRUCTION FOR INTER PARTES REVIEW OF US.
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`PATENT NO. 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 and is in
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`response to Petitioner’s Supplemental Brief in Support of Petition for Inter Partes
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`Review (Paper 27, “Petitioner’s Brief”, hereinafter).
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`II.
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`Response to Petitioner’s Claim Construction
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`A.
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`The term “tokenized questionnaire” can only be construed to
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`mean a questionnaire which contains only device independent
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`tokens.
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`Petitioner’s sole focus on the word “comprising” as a transition phrase in
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`responding to the Board’s questions is misplaced. It is well established that the terms
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`in a claim must be construed in light of the usage in the specification and must be
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`given a meaning consistent with their use, e.g., United States v. Adams, 383 U. S.
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`39, 49 (1966) ("[llt is fiindamental that claims are to be construed in the light of the
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`specifications and both are to be read with a view to ascertaining the invention").
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`In the ‘748 patent the specification makes it clear that the tokenized questionnaire
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`must contain only device independent tokens. Otherwise, an object of the invention
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`would be thwarted.
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`
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`CASE lPRZOl9-00610
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`U.S. PATENT 9,454,748
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`The questionnaires are tokenized so that
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`the same questionnaire can be
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`executed without change on each device. Petitioner’s Brief, pp. 2-3. “It is still a
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`further object of the present invention to provide an operating system for a handheld
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`computer wherein files may be transferred among devices without a translation or
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`conversion.” ‘748 Patent, 4:23-26.
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`“Any program developed under the inventive
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`system will run on any handheld computer equipped with the 018 and tiles on one
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`such handheld will transfer freely to any other handheld or any computer connected
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`to the inventive system.” 1d., 7:41-45. See also, “Patent Owners’ Response to
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`Petition for Inter Partes review of US. Patent No. 9,454,748 Challenging Claims
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`1,2,5, 7, and 19-2”, Paper 16, pp. 5-7. See also, EX. 2006, 1126.
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`A construction of tokenized questionnaire that includes questionnaires that
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`contain tokens which are not device independent or indifferent would not be
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`consistent with the invention as described by the clear language of the specification
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`of the ‘748 Patent.
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`B.
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`Assuming arguendo the questionnaire contains tokens that are not
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`device independent, there is no prior art which teaches this
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`combination nor has there been any showing of how such would
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`allow a GPS receiver to be read by a “tokenized questionnaire”.
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`The prior art of record fails to show a tokenized questionnaire that includes
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`both device independent and device dependent tokens. Petitioner has provided a
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`single example of a language which is alleged to produce device independent tokens:
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`CASE IPRZOl9-00610
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`U.S. PATENT 9,454,748
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`Java, e.g., Barbosa 's (EX 1002) refernece to Java is said to teach “device
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`independent tokens.” EX. 1005, 1MB l-l32. Nowhere in any prior art of record nor
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`in any argument advanced by the Petitioner or elsewhere is there any statement or
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`allegation that a Java application could be used to produce a questionnaire that
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`contains Java “tokens” (which presumably would be device independent) and tokens
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`which are not device independent.
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`Nor is there any discussion, explanation, or showing of how such a combined
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`“Java program” (i.e., one which contains both device independent and device
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`dependent tokens) would be executed using the standard JVM or KVM of Java (Ex.
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`2006, 1|87, 1|44) or how it would interface with it. Recall that Patent Owner has
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`challenged Petitioner to explain how Java running on a handheld as of the date of
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`the invention could be used to read a GPS receiver and that challenge has never been
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`answered. See, e.g., Patent Owner’s Sur-reply (Paper 20, pp. 1-3).
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`Finally, again assuming arguendo that
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`the prior art actually shows a
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`questionnaire with both device independent and dependent tokens, Petitioner has
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`failed to show or allege how this combined questionnaire could be implemented in
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`practice to read a GPS receiver in Java or any other language as of the date of the
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`invention. A questionnaire containing that combination of tokens is not enabled.
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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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`
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`CASE [PR2019-00610
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`U.S. PATENT 9,454,748
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`7/21/2020
`(Date)
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`Respectfully submitted,
`Item I. 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 21,
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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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`