Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 32
`Date: August 5, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMERICAN MULTI-CINEMA, INC.; AMC ENTERTAINMENT
`HOLDINGS, INC.; BOSTON MARKET CORPORATION; MOBO
`SYSTEMS, INC.; MCDONALD’S CORPORATION; MCDONALD’S
`USA; PANDA RESTAURANT GROUP, INC.; PANDA EXPRESS INC.;
`PAPA JOHN’S INTERNATIONAL, INC.; STAR PAPA LP; and
`PAPA JOHN’S USA, INC.,
`Petitioner,
`
`v.
`
`FALL LINE PATENTS, LLC,
`Patent Owner.
`____________
`
`IPR2019-00610
`Patent 9,454,748 B2
`____________
`
`
`Before MICHELLE N. WORMMEESTER, SHEILA F. McSHANE, and
`JOHN R. KENNY, Administrative Patent Judges.
`
`KENNY, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims to be Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 32
`Date: August 5, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMERICAN MULTI-CINEMA, INC.; AMC ENTERTAINMENT
`HOLDINGS, INC.; BOSTON MARKET CORPORATION; MOBO
`SYSTEMS, INC.; MCDONALD’S CORPORATION; MCDONALD’S
`USA; PANDA RESTAURANT GROUP, INC.; PANDA EXPRESS INC.;
`PAPA JOHN’S INTERNATIONAL, INC.; STAR PAPA LP; and
`PAPA JOHN’S USA, INC.,
`Petitioner,
`
`v.
`
`FALL LINE PATENTS, LLC,
`Patent Owner.
`____________
`
`IPR2019-00610
`Patent 9,454,748 B2
`____________
`
`
`Before MICHELLE N. WORMMEESTER, SHEILA F. McSHANE, and
`JOHN R. KENNY, Administrative Patent Judges.
`
`KENNY, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims to be Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`
`I. INTRODUCTION
`
`American Multi-Cinema, Inc.; AMC Entertainment Holdings, Inc.;
`
`Boston Market Corp; Mobo Systems, Inc. d/b/a OLO Online Ordering;
`
`McDonald’s Corp; McDonald’s USA; Panda Restaurant Group, Inc.; Panda
`
`Express Inc.; Papa John’s International, Inc.; Star Papa LP; and Papa John’s
`
`USA, Inc. (collectively, “Petitioner”) filed a Petition (Paper 7, “Pet.”)1
`
`requesting an inter partes review of claims 1, 2, 5, 7, and 19–22
`
`(“challenged claims”) of U.S. Patent No. 9,454,748 B2 (Ex. 1001, “the ’748
`
`patent,” “challenged patent”). An inter partes review of all challenged
`
`claims was instituted on August 7, 2019. Paper 14 (“Inst. Dec.”). After
`
`institution, Fall Line Patents, LLC (“Patent Owner”) filed a Patent Owner
`
`Response (Paper 17, “PO Resp.”), Petitioner filed a Reply (Paper 19, “Pet.
`
`Reply”), and Patent Owner filed a Sur-reply (Paper 20, “PO Sur-reply”). An
`
`oral hearing was held on April 28, 2020. Paper 25 (“Tr.”).
`
`After the oral hearing, we authorized additional briefing on a claim
`
`construction issue concerning certain claim terms. Paper 24. Pursuant to
`
`that authorization, Petitioner filed a Supplemental Brief (Paper 27) (“Pet.
`
`Supp. Br.”) as did Patent Owner (Paper 28, “PO Supp. Br.”). Petitioner
`
`responded to Patent Owner’s Supplemental Brief (Paper 29, “Pet. Supp.
`
`Resp.”), and Patent Owner responded to Petitioner’s Supplemental Brief
`
`(Paper 30, “PO Supp. Resp.”).2
`
`
`1 The Petition was also filed on behalf of Starbucks Corporation, but
`Starbucks entered into a settlement agreement and was terminated from this
`proceeding. Pet. 1; Paper 11, 13.
`
`2 Petitioner requested authorization to a file a motion to strike Section II.B.
`of Patent Owner’s supplemental response (Paper 30) on the grounds that
`
`2
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`
`Decision is issued pursuant to 35 U.S.C. § 318(a). As explained below,
`
`Petitioner has proven by a preponderance of the evidence that claims 1, 2, 5,
`
`and 19–22 of the ’748 patent are unpatentable. Petitioner, however, has not
`
`proven by a preponderance of the evidence that claim 7 is unpatentable.
`
`A.
`
`Related Proceedings
`
`The parties identify a number of related litigations in the Eastern
`
`District of Texas involving the challenged patent. Pet. 1–2; Paper 9, 2–3.
`
`As the parties state, the challenged patent was also reviewed in IPR2018-
`
`00043, which has been remanded to the Board. Pet. 1–2; Paper 9, 2–3; see
`
`Fall Line Patents, LLC v. Unified Patents, LLC, 2019-1956, 2020 WL
`
`4307768, at *4 (Fed. Cir. July 28, 2020). The parties further indicate that
`
`the challenged patent was the subject of the petition filed in IPR2018-00535,
`
`but that proceeding was terminated before an institution decision issued.
`
`Pet. 2; Prelim. Resp. 3. Petitioner further indicates that U.S. Patent No.
`
`7,822,816, of which the challenged patent is a continuation, was the subject
`
`of Reexamination No. 90/012,829 and was the subject of IPR2014-00140,
`
`the latter of which was terminated after institution. Pet. 3.
`
`
`Section II.B. exceeded the authorized scope of briefing. Paper 31. We
`denied that authorization because we could discern, without additional
`briefing, whether Section II.B. exceeded its authorized scope. Id. Further,
`the issue is moot because we considered that supplemental response only for
`the claim construction issue that the parties were authorized to address
`(Paper 24), and not for any other purpose.
`
`
`
`
`3
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`B.
`
`The Challenged Patent
`
`The challenged patent is directed to a method of collecting data from a
`
`remote computing device, such as a handheld computing device, by creating
`
`and delivering a questionnaire to the remote computing device, executing the
`
`questionnaire on the remote computing device, and transmitting responses to
`
`a server via a network. Ex. 1001, code (57).
`
`Figure 1 reproduced below, is a diagram of a system for data
`
`management (Ex. 1001, 6:57, 7:13–23):
`
`In particular, Figure 1 shows system 10 including server 24; handheld
`
`computers 28, 30, and 32, which are operated remotely from server 24; and
`
`computer 22, which provides for administration of the system and reviewing
`
`data collected by the system. Id. at 7:13–23, Fig. 1. Server 24 is connected
`
`to computer 22 via Internet 26, a local area network, or a private wide area
`
`
`
`4
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`network. Id. at 7:24–28, Fig. 1. Server 24 is connected to handheld
`
`computers 28, 30, and 32 via connections 34, 36, and 38, respectively, which
`
`are loose network connections, meaning that handheld computers 28, 30, and
`
`32 and server 24 are tolerant of intermittent network connections. Id. at
`
`7:24–26, 59–62.
`
`
`
`Figure 2, reproduced below, illustrates a diagram of system 10 as it is
`
`used for form (e.g., questionnaire) creation (Ex. 1001, 6:58–59, 8:11–17,
`
`8:35–37):
`
`
`
`
`
`Figure 2 shows system 10 is used to create questionnaire 40. Ex. 1001,
`
`8:38–9:6. Computer 22 has an interface that allows a user to create this
`
`questionnaire and distribute it to handheld devices. Id. at 8:38–50. As the
`
`client enters questions and selects response types, server 24 builds a stack of
`
`questions and responses, and assigns indices, or tokens, which point to each
`
`question or response. Id. at 8:53–56, 9:3–6. Each token can correspond to a
`
`5
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`logical, mathematical, or branching operation. Id. at 8:56–59, 9:3–6. When
`
`questionnaire 40 is complete, server 24 sends the stack of questions and
`
`defined responses to the handheld devices (e.g., handheld computer 28). Id.
`
`at 9:3–6. System 10 can incrementally update the questionnaire on the
`
`handheld devices. Id. at 9:14–18.
`
`
`
`For example, system 10 can track mystery shoppers at restaurant
`
`chains. Ex. 1001, 10:37–43. System 10 can track the time it takes a mystery
`
`shopper to go through a drive through window. Id. at 10:41–43. When the
`
`mystery shopper enters a parking lot for a franchise, a handheld device with
`
`a GPS receiver can identify the franchise. Id. at 10:55–59. The device can
`
`also record the amount of time it takes for the shopper to go through a drive
`
`through line. Id. at 10:55–11:21.
`
`C.
`
`Illustrative Claims
`
`Petitioner challenges claims 1, 2, 5, 7, and 19–22 of the challenged
`
`patent, of which, claims 1, 7, 19, and 21 are independent. Claims 7 and 19
`
`are reproduced below:
`
`7. A method for collecting survey data from a user and making
`responses available via the Internet, comprising:
`
`(a) designing a questionnaire including at least one question said
`questionnaire customized for a particular location having
`branching logic on a first computer platform wherein at least one
`of said at least one questions requests location identifying
`information;
`
`(b) automatically transferring said designed questionnaire to at
`least one loosely networked computer having a GPS integral
`thereto;
`
`6
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`
`(c) when said loosely networked computer is at said particular
`location, executing said transferred questionnaire on said loosely
`networked computer, thereby collecting responses from the user;
`
`(d) while said transferred questionnaire is executing, using said
`GPS
`to automatically provide said
`location
`identifying
`information as a response to said executing questionnaire;
`
`(e) automatically transferring via the loose network any
`responses so collected in real time to a central computer; and,
`
`(f) making available via the Internet any responses transferred to
`said central computer in step (e).
`
`Ex. 1001, 14:45–67.
`
`19. A method for managing data comprising the steps of:
`
`(a) establishing communications between a handheld computing
`device and an originating computer wherein said handheld
`computing device has a GPS integral thereto;
`
`(b) receiving within said handheld computing device a
`transmission of a tokenized questionnaire from said originating
`computer,
`
`said tokenized questionnaire including at least one question
`requesting location identifying information,
`
`said tokenized questionnaire comprising a plurality of device
`independent tokens;
`
`(c) ending said communications between said handheld
`computing device and said originating computer;
`
`(d) after said communications has been ended,
`
`(dl) executing at least a portion of said plurality of tokens
`comprising said questionnaire on said handheld computing
`device to collect at least one response from a first user, and,
`
`7
`
`
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`IPR2019-00610
`Patent 9,454,748 B2
`
`
`(d2) storing within said computing device said at least one
`response from the first user;
`
`(d3) using said GPS to automatically obtain said location
`identifying information in response to said at least one question
`that requests location identifying information;
`
`(e) establishing communications between said handheld
`computing device and a recipient computer;
`
`(f) transmitting a value representative of each of said at least one
`response stored within said handheld computing device to said
`recipient computer; and,
`
`(g) after receipt of said transmission of step (f), transmitting a
`notice of said received value representative of each of said at
`least one response to a second user.
`
`Ex. 1001, 16:48–17:12.
`
`D.
`
`Instituted Grounds of Unpatentability and Asserted Prior Art
`
`Trial was instituted on the following grounds of unpatentability3
`
`asserted in the Petition:
`
`
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 285–88 (2011), amended 35 U.S.C. §§ 102 and 103. Because the
`application from which the ’748 patent issued was filed in October 2010,
`before March 16, 2013, the effective date of the relevant amendments, the
`pre-AIA versions of § 103 applies. Ex. 1001, code (22).
`
`8
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`
`Claims
`Challenged
`
`35 U.S.C. §
`
`Reference(s)/Basis
`
`1, 19–22
`
`103(a)
`
`Barbosa4,5
`
`1, 19–22
`
`103(a)
`
`Barbosa, Bandera6
`
`7
`
`103(a)
`
`Barbosa, Falls7
`
`1, 2, 5, 19–22
`
`103(a)
`
`Hancock8
`
`1, 2, 5, 19–22
`
`103(a)
`
`Hancock, Bandera
`
`7
`
`103(a)
`
`Hancock, Falls
`
`Inst. Dec. 7, 53.
`
`Petitioner relies on declarations by its expert witness, Mr. Kendyl
`
`Roman (Exs. 1005, 1018). Likewise, Patent Owner relies on a declaration
`
`by its expert witness, Dr. Samuel Russ (Ex. 2006).
`
`
`4 U.S. Patent No. 6,961,586 B2, filed Sept. 17, 2001, claims the benefit of an
`application filed on Sept. 18, 2000, and issued on Nov. 1, 2005 (Ex. 1002,
`“Barbosa”). The earliest filing date that the ’748 patent claims the benefit of
`is August 19, 2002. Ex. 1001, code (60).
`
`5 For the Barbosa ground and the Hancock ground, Petitioner also expressly
`relies on the knowledge of an ordinarily skilled artisan. Pet. 5. We refer to
`these grounds as Barbosa-alone and Hancock-alone grounds, but included
`within these grounds is the knowledge of an ordinarily skilled artisan.
`
`6 U.S. Patent No. 6,332,127 B1, issued Dec. 18, 2001 (Ex. 1004, “Bandera”).
`
`7 U.S. Patent No. 5,991,771, issued Nov. 23, 1999 (Ex. 1017, “Falls”).
`
`8 U.S. Patent No. 6,202,023 B1, issued Mar. 13, 2001 (Ex. 1003,
`“Hancock”).
`
`9
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`
`A. Level of Ordinary Skill
`
`II. ANALYSIS
`
`In our Institution Decision, we determined that an ordinarily skilled
`
`artisan at or before the priority date for the challenged patent “would have a
`
`bachelor’s degree in computer science, computer engineering, electrical
`
`engineering, or a related subject, or equivalent industry or trade school
`
`experience in programming software applications.” Inst. Dec. 12. During
`
`trial, neither party objected to that assessment of an ordinarily skilled artisan.
`
`See generally PO Resp.; Pet. Reply. Thus, we maintain this assessment.
`
`B. Claim Construction
`
`We construe claims “using the same claim construction standard that
`
`would be used to construe the claim in a civil action under 35 U.S.C.
`
`§ 282(b), including construing the claim in accordance with the ordinary and
`
`customary meaning of such claim as understood by one of ordinary skill in
`
`the art and the prosecution history pertaining to the patent.” See Changes to
`
`the Claim Construction Standard for Interpreting Claims in Trial
`
`Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340,
`
`51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective
`
`November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)).
`
`1. Claim Constructions in Our Institution Decision
`
`In our Institution Decision, we provided the following claim
`
`constructions:
`
`10
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`
`Claim Term
`
`GPS integral thereto
`
`token
`
`central computer, originating
`computer, and recipient computer9
`
`loosely networked
`
`Inst. Dec. 12–18.
`
`Construction
`
`Global Positioning System
`equipment integral thereto.
`a distinguishable unit of a program,
`such as an index, an instruction, or a
`command that can represent
`something else such as a question,
`answer, or operation.
`encompasses a computer having the
`ability to perform functions
`associated with an originating
`computer, a recipient computer,
`and/or a central computer.
`tolerant of intermittent network
`connections and tolerant of the type
`of network connection available.
`
`During the trial, neither party objected to these constructions/partial
`
`construction. See PO Resp., generally; Pet. Reply, generally. Under the
`
`circumstances, we maintain these constructions and partial construction.
`
`2. GPS and Device Independence/Indifference
`
`During trial, the parties implicitly raised a claim construction issue in
`
`their arguments on obviousness regarding the recitation in claims 1, 19, and
`
`21 of GPS, “device indifferent tokens,” and “device independent tokens,”
`
`which the parties expressly addressed in their supplemental briefing. Pet. 7;
`
`PO Resp. 17–21; Pet. Supp. Br. 1–5; PO Supp. Br. 3–5. In particular, claim
`
`1 of the challenged patent recites the following limitations:
`
`(c) tokenizing said questionnaire, thereby producing a plurality
`of device indifferent tokens representing said questionnaire;
`
`
`9 We partially construed these terms. Inst. Dec. 17.
`
`11
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`IPR2019-00610
`Patent 9,454,748 B2
`
`
`(e) when said remote computing device is at said location,
`executing at least a portion of said plurality of tokens
`representing said questionnaire at within said remote computing
`device to collect a response from a user; [and]
`
`(f) automatically entering the GPS coordinates into said
`questionnaire.
`
`Ex. 1001, 1:47–65 (emphasis added).
`
`Claim 19 recites these limitations:
`
`(b) receiving within said handheld computing device a
`transmission of a tokenized questionnaire from said originating
`computer, said tokenized questionnaire including at least one
`question requesting location identifying information, said
`tokenized questionnaire comprising a plurality of device
`independent tokens;
`
`(dl) executing at least a portion of said plurality of tokens
`comprising said questionnaire on said handheld computing
`device to collect at least one response from a first user, and,
`
`(d3) using said GPS to automatically obtain said location
`identifying information in response to said at least one question
`that requests location identifying information.
`
`Id. at 16:48–17:12 (emphasis added).
`
`And claim 21 recites these limitations:
`
`(a)(2) receiving within said handheld computing device a
`transmission of a tokenized questionnaire, including at least one
`question requesting GPS coordinates and at least one additional
`question, said tokenized questionnaire comprising a plurality of
`device independent tokens;
`
`(a)(4)(i) executing at least a portion of said plurality of tokens
`comprising said questionnaire on said handheld computing
`device, [and]
`
`(a)(4)(ii) automatically entering the GPS coordinates into said
`questionnaire.
`
`12
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`Id. at 17:15–18:27 (emphasis added).
`
`Patent Owner proposes construing the above limitations as requiring
`
`that step 1(f) in claim 1, step (d3) in claim 19, and step (a)(4)(ii) of claim 21
`
`be performed by executing device independent or device indifferent tokens.
`
`PO Supp. Br. 3–5. Petitioner opposes that construction, arguing that step
`
`1(f) in claim 1, step (d3) in claim 19, and step (a)(4)(ii) of claim 21 do not
`
`need to be performed by executing device independent or device indifferent
`
`tokens. Pet. Supp. Br. 1–5.
`
`We agree with Petitioner and do not construe step 1(f) of claim 1, step
`
`(d3) of claim 19, and step (a)(4)(ii) of claim 21 as requiring execution by
`
`device independent or device indifferent tokens. We begin with claim 1.
`
`Step 1(f) does not contain any express limitations on how the recited GPS
`
`coordinates are automatically entered into the recited questionnaire. In
`
`comparison, step 1(c) requires that the questionnaire be tokenized. Step 1(f)
`
`merely recites “automatically entering the GPS coordinates into said
`
`questionnaire.” The Specification of the challenged patent does not define
`
`any terms recited in step (f) that would lead to a requirement that the GPS
`
`coordinates in that step would have to be automatically entered into the
`
`recited questionnaire via execution of device indifferent tokens. To the
`
`contrary, the Specification teaches that “position information” (e.g., GPS
`
`coordinates) can be obtained automatically using “subsystems that are
`
`already present in the handheld device . . . if the device includes a GPS
`
`receiver.” Ex. 1001, 5:42–47. Neither party has identified any portion of
`
`the prosecution history requiring the recited GPS coordinates be entered into
`
`the questionnaire by executing device indifferent tokens. See generally Pet.
`
`Supp. Br., PO Supp. Br., Pet. Supp. Resp., PO Supp. Resp. And neither
`
`13
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`IPR2019-00610
`Patent 9,454,748 B2
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`party provided any dictionary definitions that indicate that the recited GPS
`
`coordinates must be entered into the questionnaire by executing device
`
`indifferent tokens. See generally Pet. Supp. Br., PO Supp. Br., Pet. Supp.
`
`Resp., PO Supp. Resp. Based on the record, and particularly claim language
`
`itself and the Specification, we determine that step (f) in claim 1 does not
`
`have to be performed by device indifferent tokens.
`
`Patent Owner’s contrary arguments are not persuasive. First, Patent
`
`Owner argues that the challenged claims require an operating instruction
`
`system that utilizes device indifferent or device independent tokens. PO
`
`Supp. Br. 1 (“Claims 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.”), 3 (“The
`
`token is interpreted and executed by the OIS.”). But claim 1 does not recite
`
`an operating instruction system, and Patent Owner does not identify any
`
`terms recited in claim 1 that purportedly require the use of the disclosed
`
`operating instruction system. PO Supp. Br. 1–5; PO Supp. Resp. 1–2. In
`
`fact, during prosecution, the applicant presented a claim (application claim
`
`9) that expressly recited the operating instruction system, but the applicant
`
`subsequently canceled that claim. Ex. 1007, December 2012 Amendment
`
`and Response, 5; Id. at May 2016 Amendment and Response, 6, 16..
`
`Second, Patent Owner argues that all of the tokens in the
`
`questionnaire in claim 1 must be device indifferent so the same
`
`questionnaire can be used without change on different devices. PO Supp.
`
`Br. 4. But Patent Owner does not identify any terms in claim 1 that require
`
`that the same questionnaire be capable of being used on different devices
`
`without being changed. Id. Moreover, claim 1 does not require that tokens
`
`14
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`IPR2019-00610
`Patent 9,454,748 B2
`
`in the questionnaire be executed to enter the GPS coordinates into the
`
`questionnaire. As mentioned, the Specification discloses that subsystems
`
`present in the handheld device, rather than in the questionnaire, can
`
`automatically obtain position information from a device with a GPS
`
`receiver. Ex. 1001, 5:42–47. Thus, we do not construe step (f) of claim 1 as
`
`requiring performance by executing device indifferent tokens.
`
`Claims 19 and 21 recite similar steps to those discussed above for
`
`claim 1, but the corresponding steps in claims 19 and 21 recite “device
`
`independent tokens,” rather than “device indifferent tokens.” The parties,
`
`however, draw no distinction between device independent tokens and device
`
`indifferent tokens, and the Specification does not distinguish between these
`
`tokens. See generally Pet. Supp. Br., PO Supp. Br., Pet. Supp. Resp., PO
`
`Supp. Resp. Thus, for purposes of this Decision, the terms “device
`
`independent tokens” and “device indifferent tokens” are synonyms.
`
`The parties present the same arguments and evidence for step (d3) in
`
`claim 19 and step (a)(4)(ii) in claim 21 as they do for step (f) in claim 1. See
`
`generally Pet. Supp. Br., PO Supp. Br., Pet. Supp. Resp., PO Supp. Resp.
`
`Thus, we determine that step (d3) in claim 19 and step (a)(4)(ii) in claim 21
`
`do not have to be performed by executing device independent tokens for the
`
`same reasons that step (f) in claim 1 does not have to be performed by
`
`executing device indifferent tokens.
`
`In sum, we determine that step 1(f) in claim 1, step (d3) in claim 19,
`
`and step (a)(4)(ii) of claim 21 do not need to be performed by executing
`
`device independent or device indifferent tokens.
`
`15
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`C. Analysis of the Asserted Grounds of Unpatentability
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`
`differences between the claimed subject matter and the prior art are “such
`
`that the subject matter as a whole would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which said
`
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The question of obviousness is resolved on the basis of underlying
`
`factual determinations, including: (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art;
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`(3) the level of skill in the art; and (4) objective evidence of nonobviousness,
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`i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–
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`18 (1966). Further, “[t]o satisfy its burden of proving obviousness, a
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`petitioner cannot employ mere conclusory statements. The petitioner must
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`instead articulate specific reasoning, based on evidence of record, to support
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`the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd.,
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`829 F.3d 1364, 1380 (Fed. Cir. 2016). We analyze the asserted grounds
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`with these principles in mind.
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`1. Secondary Considerations of Non-Obviousness
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`Patent Owner does not present any evidence or argument regarding
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`secondary considerations of non-obviousness relating to any challenged
`
`claim. And Petitioner does not expressly argue the existence of any
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`secondary considerations. In response to an argument by Patent Owner,
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`however, Petitioner asserts that Java Specification Request 179 (Exhibit
`
`1019) was contemporaneously developed at the time of the alleged invention
`
`of the challenged patent. Pet. Reply 7–8. Further, Petitioner contends that
`
`development of Java Specification Request 179 demonstrates that there was
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`16
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`IPR2019-00610
`Patent 9,454,748 B2
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`no fundamental impediment to Java applets receiving GPS data without
`
`invoking the Java native interface as of the effective filing date for the
`
`challenged patent. Id. We address the parties’ arguments regarding that
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`Java Specification Request in Section II.C.2.b.i.5. below.
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`2. Asserted Obviousness over Barbosa
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`Petitioner argues that claims 1 and 19–22 would have been obvious
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`over Barbosa. Pet. 18–37.
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`a. Barbosa
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`Barbosa relates to systems for conducting field assessments utilizing
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`handheld data management devices, such as personal digital assistants,
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`handled computers, two-way pagers, and Web/WAP enabled telephony.
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`Ex. 1002, 1:10–16.
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`Figure 6 of Barbosa is reproduced below:
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`
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`
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`17
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`IPR2019-00610
`Patent 9,454,748 B2
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`Figure 6 illustrates “an environment for extended operation/communication
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`between a handheld device 10 (client) and remote management system 58
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`(e.g., server, desktop PC).” Ex. 1002, 7:23–26.
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`Barbosa discloses that a user in the field may utilize handheld device
`
`10 for assessment of a field problem by executing an industry-specific
`
`program on the handheld device related to the problem being addressed.
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`Ex. 1002, 7:42–47. During program execution, the user may access remote
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`resources (e.g., information, data, and assistance) via wireless
`
`communication systems 51 and networks 55. Id. at 7:48–51. Information
`
`may be obtained from server 58 located at the user’s enterprise or from other
`
`network 55 resources available to the user (e.g., Web pages provided/
`
`obtained over the Internet). Id. at 7:51–54.
`
`Barbosa further discloses that “the handheld device may also be
`
`equipped within a position module 46 to enable the handheld device to
`
`utilize positioning systems or methods known in the art such as satellite
`
`position (e.g., Global Positioning System (GPS)) or signal triangulation
`
`techniques.” Ex. 1002, 6:40–44.
`
`b. Independent Claim 19
`
`i. Disputed Limitations
`
`The parties dispute whether Barbosa teaches or suggests part of
`
`limitation (b), and limitations (d1), and (d2) of claim 19. We address these
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`limitations below.
`
`(1) (b) receiving within said handheld computing device a
`transmission of a tokenized questionnaire from said
`originating computer.
`
`Petitioner argues that Barbosa teaches this receiving limitation by
`
`disclosing that its device 10 receives “a set of instructions in a code module”
`
`18
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`IPR2019-00610
`Patent 9,454,748 B2
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`or “templates (e.g., task/punch lists) and/or programs” from server 58. Pet.
`
`20 (quoting Ex. 1002, 6:1–2, 7:27–28). According to Petitioner, Barbosa’s
`
`device 10 and server 58 are a handheld computing device and an originating
`
`computer, respectively. Id. at 18–19. Petitioner asserts that device 10
`
`receives from server 58 “a set of instructions in a code module” and/or
`
`“templates (e.g., task/punch lists) and/or programs.” Id. at 20 (quoting Ex.
`
`1002, 6:1–2, 7:27–28). Petitioner further asserts that “[t]he downloaded
`
`code modules, templates, and/or programs represent a questionnaire.” Id.
`
`(citing Ex. 1005 ¶ 125). Petitioner quotes Barbosa’s disclosures that the
`
`“programs operated by the microprocessor ask questions or provide
`
`guidance related to a particular field problem” and “[t]he program would
`
`prompt the user for input of data related to the problem.” Id. (quoting Ex.
`
`1002, 6:60–61, 7:47–48).
`
`Petitioner argues that the instructions, templates, and programs that
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`Barbosa’s device 10 receives from server 58 are tokenized. Pet. 20.
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`Petitioner quotes Barbosa’s disclosure that “[c]omputer program code for
`
`carrying out operations of the present invention can be written in an object
`
`oriented programming language such as Java . . . .” Id. (quoting Ex. 1002,
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`12:45–51). Petitioner argues that “[a] questionnaire (e.g., downloaded code
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`modules, templates, and/or programs) written in an object oriented
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`programming language[,] such as Java[,] would have included an index, an
`
`instruction, or a command that can represent something else such as a
`
`question, answer, or operation.” Id. at 20–21 (citing Ex. 1005 ¶ 126).
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`Petitioner concludes that “[t]herefore, Barbosa discloses a tokenized
`
`questionnaire.” Id. at 21.
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`19
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`IPR2019-00610
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`In addition, Petitioner argues that “Barbosa’s program provides ‘[a]n
`
`interactive question and answer session.’” Pet. 21 (citing Ex. 1002, 6:62).
`
`Petitioner asserts that “[t]o do so, the program would have included
`
`distinguishable units, such as indexes, instructions, or commands that
`
`represent the questions, answers, or operations connecting the interactive
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`questions and answers.” Id. (citing Ex. 1005 ¶ 127). Petitioner cites
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`Barbosa’s disclosure that “[t]he program may start by asking for the
`
`identification of [] the client or matter 703 (e.g., customer, or job site),” and
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`“[t]he program may next ask the representative to identify the problem or
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`type of assessment 704 (e.g., HVAC, plumbing, electrical, landscaping,
`
`etc.).” Id. (quoting Ex. 1002, 8:54–59). Petitioner argues that, as a result, an
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`ordinarily skilled artisan would have understood “that Barbosa’s program
`
`would have included instructions that ask these questions (e.g., identification
`
`of type of assessment), as well as indexes corresponding to the available
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`answers (e.g., HVAC, plumbing, electrical, or landscaping), and additionally
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`would have included instructions and operations connecting the first
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`question to the next.” Id. (citing Ex. 1005 ¶ 127).
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`Patent Owner asserts that Barbosa’s template is not a tokenized
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`questionnaire. PO Resp. 7. Patent Owner contends that Barbosa only
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`discloses text for its templates, not executable tokens. Id. at 8. Patent
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`Owner further argues that the assertion that Barbosa’s template would have
`
`included an index, an instruction, or a command if written in Java is
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`conjecture. Id. Further, Patent Owner asserts that Barbosa’s discussion of
`
`program code that can execute on a user’s computer does not refer to
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`Barbosa’s handheld computers. Id. at 9–10. Patent Owner further contends
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`that two of the languages that Barbosa mentions for running on computers,
`
`20
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`
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`IPR2019-00610
`Patent 9,454,748 B2
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`Smalltalk and C++, were desktop languages in 2000, when the priority
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`application for Barbosa was filed. Id. at 9–10, n.2. In addition, Patent
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`Owner asserts that Barbosa’s discussion of Java applets can only be referring
`
`to Java on desktops. Id. at 14.
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`We find that Petitioner has proven that Barbosa teaches the recited
`
`receiving limitation. First, device 10 and server 58 are, respectively, a
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`handheld computer and an originating computer. Ex. 1005 ¶ 123. Barbosa
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`discloses “device 10 [is] easily portable such that it substantially fit within
`
`the palm of a user[’]s hand.” Ex. 1002, 5:43–45. And server 58 is an
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`originating computer. Id. at 7:23–53, Fig. 6; Ex. 1005 ¶ 123.
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`Second, Barbosa teaches receiving at device 10 a program from server
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`58. Ex. 1005 ¶ 125. Barbosa discloses storing “a set of instructions” in
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`RAM 26 of device 10 and further discloses downloading those instructions
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`to RAM 26 from a server when needed. Ex. 1002, 5:67–6:6. Barbosa
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`further discloses linking device 10 with server 58 to provide, among other
`
`things, programs. Id. at 7:23–29. The instructions transferred to device 10
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`are received by RAM 26 of that device (i.e., they are stored in RAM 26). Id.
`
`at 5:67–6:6. Barbosa expressly discloses sending a Java applet program to
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`device 10. Id. at 12:14–18; see also id. at 11:63–12:32; Ex. 1005 ¶
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`125.
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`Third, Barbosa teaches the use in device 10 of a program with a
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`tokenized questionnaire. Ex. 100
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