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 BRIEF IN RESPONSE TO
`
`PETITIONER’S 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 BRIEF IN RESPONSE TO
`
`PETITIONER’S CLAIM CONSTRUCTION FOR
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 9,454,748
`
`CHALLENGING CLAIMS 1, 2, 5, 7, AND 19-22
`
`
`
`TABLE OF AUTHORITIES
`
`CASE [PR2019-00610
`
`U.S. PATENT 9,454,748
`
`Cases
`
`Page
`
`United States v. Adams, 383 U. S. 39, 49 (1966) ........................................... 1
`
`
`
`PATENT OWNER’S BRIEF IN RESPONSE TO PETITIONER’S
`
`CLAIM CONSTRUCTION FOR INTER PARTES REVIEW OF US.
`
`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 and is in
`
`response to Petitioner’s Supplemental Brief in Support of Petition for Inter Partes
`
`Review (Paper 27, “Petitioner’s Brief”, hereinafter).
`
`II.
`
`Response to Petitioner’s Claim Construction
`
`A.
`
`The term “tokenized questionnaire” can only be construed to
`
`mean a questionnaire which contains only device independent
`
`tokens.
`
`Petitioner’s sole focus on the word “comprising” as a transition phrase in
`
`responding to the Board’s questions is misplaced. It is well established that the terms
`
`in a claim must be construed in light of the usage in the specification and must be
`
`given a meaning consistent with their use, e.g., United States v. Adams, 383 U. S.
`
`39, 49 (1966) ("[llt is fiindamental that claims are to be construed in the light of the
`
`specifications and both are to be read with a view to ascertaining the invention").
`
`In the ‘748 patent the specification makes it clear that the tokenized questionnaire
`
`must contain only device independent tokens. Otherwise, an object of the invention
`
`would be thwarted.
`
`
`
`CASE lPRZOl9-00610
`
`U.S. PATENT 9,454,748
`
`The questionnaires are tokenized so that
`
`the same questionnaire can be
`
`executed without change on each device. Petitioner’s Brief, pp. 2-3. “It is still a
`
`further object of the present invention to provide an operating system for a handheld
`
`computer wherein files may be transferred among devices without a translation or
`
`conversion.” ‘748 Patent, 4:23-26.
`
`“Any program developed under the inventive
`
`system will run on any handheld computer equipped with the 018 and tiles on one
`
`such handheld will transfer freely to any other handheld or any computer connected
`
`to the inventive system.” 1d., 7:41-45. See also, “Patent Owners’ Response to
`
`Petition for Inter Partes review of US. Patent No. 9,454,748 Challenging Claims
`
`1,2,5, 7, and 19-2”, Paper 16, pp. 5-7. See also, EX. 2006, 1126.
`
`A construction of tokenized questionnaire that includes questionnaires that
`
`contain tokens which are not device independent or indifferent would not be
`
`consistent with the invention as described by the clear language of the specification
`
`of the ‘748 Patent.
`
`B.
`
`Assuming arguendo the questionnaire contains tokens that are not
`
`device independent, there is no prior art which teaches this
`
`combination nor has there been any showing of how such would
`
`allow a GPS receiver to be read by a “tokenized questionnaire”.
`
`The prior art of record fails to show a tokenized questionnaire that includes
`
`both device independent and device dependent tokens. Petitioner has provided a
`
`single example of a language which is alleged to produce device independent tokens:
`
`
`
`CASE IPRZOl9-00610
`
`U.S. PATENT 9,454,748
`
`Java, e.g., Barbosa 's (EX 1002) refernece to Java is said to teach “device
`
`independent tokens.” EX. 1005, 1MB l-l32. Nowhere in any prior art of record nor
`
`in any argument advanced by the Petitioner or elsewhere is there any statement or
`
`allegation that a Java application could be used to produce a questionnaire that
`
`contains Java “tokens” (which presumably would be device independent) and tokens
`
`which are not device independent.
`
`Nor is there any discussion, explanation, or showing of how such a combined
`
`“Java program” (i.e., one which contains both device independent and device
`
`dependent tokens) would be executed using the standard JVM or KVM of Java (Ex.
`
`2006, 1|87, 1|44) or how it would interface with it. Recall that Patent Owner has
`
`challenged Petitioner to explain how Java running on a handheld as of the date of
`
`the invention could be used to read a GPS receiver and that challenge has never been
`
`answered. See, e.g., Patent Owner’s Sur-reply (Paper 20, pp. 1-3).
`
`Finally, again assuming arguendo that
`
`the prior art actually shows a
`
`questionnaire with both device independent and dependent tokens, Petitioner has
`
`failed to show or allege how this combined questionnaire could be implemented in
`
`practice to read a GPS receiver in Java or any other language as of the date of the
`
`invention. A questionnaire containing that combination of tokens is not enabled.
`
`In view of the foregoing, judgment is requested in favor of Patent Owner
`
`with respect to all challenged claims of the ‘748 patent.
`
`
`
`CASE [PR2019-00610
`
`U.S. PATENT 9,454,748
`
`7/21/2020
`(Date)
`
`Respectfully submitted,
`Item I. 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 21,
`
`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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