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’ RESPONSE TO PATENT OWNER’S SUPPLEMENTAL
`BRIEF REGARDING 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’ RESPONSE TO PATENT OWNER’S SUPPLEMENTAL
`BRIEF REGARDING PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`
`IPR2019-00610
`U.S. Patent No. 9,454,748
`
`
`TABLE OF CONTENTS
`
`I. Petitioners’ Response to Patent Owner’s Positions ............................................. 1
`
`A.
`B.
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`The claims do not require an OIS. ............................................................... 1
`Patent Owner’s citations to the specification and its expert’s declaration
`do not support its proposed constructions. .................................................. 2
`II. Conclusion ........................................................................................................... 3
`
`
`
`
`
`
`i
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`
`
`IPR2019-00610
`U.S. Patent No. 9,454,748
`The narrowed constructions offered by the Patent Owner in its brief (Paper
`
`No. 28, “PO Supp.”) are unsupportable given the language of the claims and the
`
`descriptions in the specification. Its arguments should be rejected.
`
`I.
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`PETITIONERS’ RESPONSE TO PATENT OWNER’S POSITIONS
`A. The claims do not require an OIS.
`Patent Owner incorrectly contends that the “[c]laims in the ’748 patent that
`
`call for a tokenized questionnaire require an operating instruction system (‘OIS’) on
`
`the recipient device that can process the tokens of the questionnaire.” (PO Supp. at
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`1.) The claims have no such requirement. The only claims that contained this
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`requirement were cancelled during prosecution. Accordingly, the majority of Patent
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`Owner’s arguments are irrelevant.
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`During prosecution, the patentee submitted a claim that explicitly referred to
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`the OIS. It was Claim 9. See Ex. 1007 at 185 (reciting “said remote computer running
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`an OIS”). The patentee cancelled that claim in response to an office action. See id.
`
`at 255. When the ’748 Patent issued, it did so without a single claim making any
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`mention of an OIS. Accordingly, none of the claims of the ’748 Patent, much less
`
`any of the Challenged Claims, requires an OIS.
`
`
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`Patent Owner’s supplemental brief argues an OIS is required but does not
`
`identify where that requirement resides in the claim language—because it cannot.
`
`There is no such requirement. Moreover, Patent Owner’s reliance on descriptions in
`
`
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`1
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`
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`IPR2019-00610
`U.S. Patent No. 9,454,748
`the specification about the OIS is an improper attempt to import limitations from the
`
`specification into the claim, specifically an embodiment that includes an OIS on the
`
`remote device. See Superguide Corp. v. DirecTV Enterp., Inc. 358 F.3d 870, 875
`
`(Fed. Cir. 2004) (“Though understanding the claim language may be aided by
`
`explanations contained in the written description, it is important not to import into a
`
`claim limitations that are not part of the claim.”). The law is clear that “a particular
`
`embodiment appearing in the written description may not be read into a claim when
`
`the claim language is broader than the embodiment.” Id. Patent Owner’s attempt to
`
`do precisely this in its supplemental briefing should be rejected.
`
`B.
`
`Patent Owner’s citations to the specification and its expert’s
`declaration do not support its proposed constructions.
`Neither the specification nor Patent Owner’s expert’s declaration supports
`
`Patent Owner’s improper narrowing of the claim terms.
`
`In its supplemental brief, Patent Owner cites primarily to one portion of the
`
`specification when it answers the Board’s questions, but it does not support Patent
`
`Owner’s narrowed construction. (PO Supp. at 4-5 (citing ’748 Patent at 7:47-58).)
`
`That portion of the specification explains that “[a]s a part of the inventive system
`
`each remote device, preferably a handheld computer, is provided with an” OIS. ’748
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`Patent at 7:48-51. This is but one embodiment in the specification, and importing
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`limitations to the claims on the basis of this embodiment is improper. See
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`Superguide, 358 F.3d at 875. Even if Patent Owner were correct to so limit the
`2
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`IPR2019-00610
`U.S. Patent No. 9,454,748
`claims, nothing in that portion of the specification requires the claimed system to
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`consist solely of device-independent or device-indifferent
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`tokens. The
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`specification’s references to the OIS do not foreclose the existence of device-
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`dependent tokens in a system reading on the claims.
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`The same is true of Patent Owner’s expert’s declaration. Patent Owner
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`primarily cites to paragraphs 26, 47-49, and 52 of the declaration to support its
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`position that the tokens must all be device-independent and those tokens must be
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`used to automatically obtain the GPS coordinates. (See PO Supp. at 4-5.) Those
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`paragraphs tout the necessity of the OIS and the alleged failings of Java to provide
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`for device-independence, but they say nothing about requiring all tokens to be
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`device-independent. And to the extent they suggest tokens are involved in
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`automatically obtaining the GPS coordinates, that is not supported by the claims and
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`requiring such tokens to be device-independent would improperly preclude an
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`embodiment of the invention, wherein portions of the questionnaire are answered
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`using systems already existing on the remote devices. See ’748 Patent at 5:42-48.
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`The expert’s opinions therefore do not support Patent Owner’s constructions and are
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`contradicted by the claims and the specification.
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`II. CONCLUSION
`Petitioners respectfully request that the Board find claims 1, 2, 5, 7, and 19-
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`22 unpatentable.
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`3
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`IPR2019-00610
`U.S. Patent No. 9,454,748
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`
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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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`
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`Dated: July 21, 2020
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`4
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`
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`IPR2019-00610
`U.S. Patent No. 9,454,748
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR § 42.6(e)(4), the undersigned certifies that on July 21,
`
`2020, a complete and entire copy of this PETITIONERS’ RESPONSE TO
`
`PATENT OWNER’S SUPPLEMENTAL BRIEF REGARDING PETITION
`
`FOR INTER PARTES REVIEW was provided via email to the Patent Owner by
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`serving the correspondence email addresses of record as follows:
`
`Terry L. Watt
`Fellers Snider, PC
`100 North Broadway, Suite 1700
`Oklahoma City, OK. 74102
`
`Matthew J. Antonelli
`Michael E. Ellis
`Larry D. Thompson, Jr.
`Antonelli, Harrington & Thompson LLP
`4306 Yoakum Blvd., Ste. 450
`Houston, TX 77006
`
`Email: tlwatt@fellerssnider.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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