Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 14
`Entered: August 7, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.
`Petitioner,
`
`v.
`
`FALL LINE PATENTS, LLC
`Patent Owner.
`____________
`
`Case 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.
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`I. INTRODUCTION
`This is a preliminary proceeding to decide whether to institute an inter
`partes review of U.S. Patent No. 9,454,748 B2 (Ex. 1001, “the ’748 patent”
`or “the challenged patent”). See 35 U.S.C. § 314(a); 37 C.F.R § 42.4(a)
`(delegating authority to institute trial to the Board). Institution of an inter
`partes review is authorized by statute when “the information presented in the
`
`
`Tel: 571-272-7822
`
`
`Paper 14
`Entered: August 7, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.
`Petitioner,
`
`v.
`
`FALL LINE PATENTS, LLC
`Patent Owner.
`____________
`
`Case 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.
`
`
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314
`
`I. INTRODUCTION
`This is a preliminary proceeding to decide whether to institute an inter
`partes review of U.S. Patent No. 9,454,748 B2 (Ex. 1001, “the ’748 patent”
`or “the challenged patent”). See 35 U.S.C. § 314(a); 37 C.F.R § 42.4(a)
`(delegating authority to institute trial to the Board). Institution of an inter
`partes review is authorized by statute when “the information presented in the
`
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`IPR2019-00610
`Patent 9,454,748 B2
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`petition . . . and any response . . . shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a).
`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. (collectively, “Petitioner”) and Starbucks Corporation1 filed a
`Petition (Paper 7, “Pet.”) seeking inter partes review of claims 1, 2, 5, 7, and
`19–22 of the challenged patent (“challenged claims”). Patent Owner, Fall
`Line Patents, LLC, filed a Preliminary Response (Paper 10, “Prelim. Resp.”)
`to the Petition.
`Having considered the Petition and the Preliminary Response, we
`determine that the information presented shows a reasonable likelihood that
`Petitioner would prevail in establishing the unpatentability of at least one of
`the challenged claims, and we institute inter partes review as to all
`challenges presented in the Petition. At this stage of the proceeding, we
`have not made a final determination as to the patentability of any challenged
`claim or any underlying factual or legal issues.
`A. Related Proceedings
`The parties identify a number of related litigations involving the
`challenged patent. Pet. 1–2; Paper 9, 2–3. As the parties state, the
`challenged patent was also reviewed in IPR2018-00043. Pet. 1–2; Paper 9,
`2–3. The parties further indicate that the challenged patent was the subject
`
`1 This proceeding has been terminated with respect to Starbucks
`Corporation. Paper 13.
`
`2
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`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.
`B. Overview of 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, at [57].
`Figure 1 of the challenged patent is reproduced below:
`
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`Figure 1 is a diagram of the challenged patent’s system for data
`management. Ex. 1001, 6:57, 7:13–23. System 10 includes 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 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. Id. at 7:24–26. Connections 34, 36, and 38 are loose network
`connections, meaning that handheld computers 28, 30, and 32 and server 24
`are tolerant of intermittent network connections. Id. at 7:59–62.
`Computer 22 is used for administrating system 10 and for reviewing data
`collected by the system. Id. at 7:21–23.
`
`Figure 2 of the challenged patent is reproduced below:
`
`
`
`
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`4
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`Figure 2 is a diagram of system 10 as it is used for form creation. Ex. 1001,
`6:58–59; 8:11–17. Computer 22 has an interface that allows a user to create
`a form and distribute it to handheld devices using computer 22. 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 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. Claim 19 is
`reproduced below:
`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;
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`(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,
`(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.
`D. Asserted Prior Art and Declaration
`Petitioner relies on the following references:2
`
`
`
`
`2The challenged patent is a continuation of Serial No. 10/643,516, filed
`Aug. 19, 2003, now U.S. Patent No. 7,822,816. Ex. 1001, at [63]. The
`challenged patent also claims the benefit of Provisional Application No.
`60/404,491, filed Aug. 19, 2002. Id. at [60].
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`
`Barbosa
`
`Hancock
`
`Bandera
`
`Falls
`
`Reference
`U.S. Patent No.
`6,961,586 B2
`U.S. Patent No.
`6,202,023 B1
`U.S. Patent No.
`6,332,127 B1
`U.S. Patent No.
`5,991,771
`
`Issue Date
`Nov. 1, 2005
`
`Mar. 13, 2001
`
`Dec. 18, 2001
`
`Nov. 23, 1999
`
`Exhibit
`Ex. 1002
`
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1017
`
`Petitioner also submits a declaration from Kendyl Roman (Ex. 1005).
`E. Asserted Grounds
`Petitioner asserts the following grounds of unpatentability based on
`35 U.S.C. § 103(a):
`Claim(s)
`Challenged
`1 and 19–22
`
`Reference(s)
`
`Barbosa3
`
`Ground
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`1 and 19–22
`
`Barbosa and Bandera
`
`7
`
`Barbosa and Falls
`
`1, 2, 5, and 19–22 Hancock
`
`1, 2, 5, and 19-22 Hancock and Bandera
`
`7
`
`Hancock and Falls
`
` Pet. 5.
`
`F. Real Parties in Interest
`The Petition identifies American Multi-Cinema, Inc.; AMC
`Entertainment Holdings, Inc.; Boston Market Corporation; Mobo Systems,
`
`3 For Grounds 1 and 4, Petitioner also expressly relies on the knowledge of
`an ordinarily skilled artisan. Pet. 5.
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`Inc.; McDonald’s Corporation; McDonald’s USA; Panda Restaurant Group,
`Inc.; Panda Express Inc.; Papa John’s International, Inc.; Star Papa LP; Papa
`John’s USA, Inc, and Starbucks Corporation as real parties in interest in this
`proceeding. Pet. 1. Patent Owner identifies Fall Line Patents, LLC as its
`real party in interest. Paper 9, 2.
`
`II. DISCUSSION
`A. Constitutional Challenge
`Patent Owner objects to an inter partes review “because it is carried
`out by a final order issued by Administrative Patent Judges who have not
`been nominated by the President and confirmed by the Senate.” Prelim.
`Resp. 52. According to Patent Owner, Administrative Patent Judges are
`“principal Officers” under the Constitution’s Appointments Clause (U.S.
`Const. Art. II, § 2, Cl. 2), meaning they must be nominated by the President
`and confirmed by the Senate in order to exercise their authority
`constitutionally with respect to inter partes reviews. Id. In this Decision,
`we will not address this argument by Patent Owner. See Riggin v. Office of
`Senate Fair Employment Practices, 61 F.3d 1563, 1569 (Fed. Cir. 1995).
`We note, however, that the issue is presently before the Federal Circuit in
`Polaris Innovations Limited v. Kingston Technology Company (No. 2018-
`1768).
`
`B. Discretionary Denial Under U.S.C. § 314(a)
`Patent Owner argues that we should exercise our discretion and deny
`institution because: (i) Petitioner made inconsistent representations to the
`district court and the Board, (ii) the claims challenged in this proceeding and
`in another IPR overlap, and (iii) a related district court trial will occur before
`a final written decision is due in this proceeding. Prelim. Resp. 50.
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`First, Patent Owner argues that although Petitioner asserts here that its
`Petition is substantially different from the petition in IPR2018-00043 (“’043
`IPR”), Petitioner told the district court the opposite in seeking a stay.
`Prelim. Resp. 50. According to Patent Owner, Petitioner argued to the
`district court that there was substantial overlap in the challenged claims and
`claim language. Id. at 50–51. Patent Owner also notes that Petitioner
`argued to the district court that, in light of our Final Written Decision in the
`’043 IPR, it was a “near certainty” that this IPR would be instituted. Id. at
`51 (quoting Ex. 2004 at 4).
`Second, Patent Owner argues that we should deny institution because
`we already held some of the challenged claims unpatentable in the ’043 IPR.
`Prelim. Resp. 51. Patent Owner cites Nichia Corp. v. Document Security
`Systems, Inc., Case IPR2019-00397 (PTAB Apr. 19, 2019) (Paper 10), in
`support of this argument. Id.
`Third, Patent Owner argues that trial in a related district court case is
`set for May 18, 2020, which is well before a final written decision in this
`proceeding is due. Prelim. Resp. 52. Therefore, Patent Owner argues that
`under NHK Spring Co. v. Intri-Plex Technology., Inc., Case IPR2018-00752
`(PTAB Sep. 12, 2018) (Paper 8) (precedential), we should deny institution.
`Id.
`
`Petitioner asserts that we should not deny institution under 35 U.S.C.
`§ 314 (a). Pet. 6–7. Petitioner argues that the parties who filed this IPR are
`not real-parties-in-interest with respect to the prior petitioners in the ’043
`IPR and IPR2018-00535. Id. Petitioner further asserts that its Petition
`addresses claims that were not addressed in the ’043 IPR. Id. Further,
`Petitioner argues that it did not plan to stagger its Petition with prior
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`petitions as Patent Owner did not sue the entities that comprise Petitioner
`until August 2018. Id. (The petitions in the ’043 IPR and IPR2018-00535
`were filed in October 2017 and January 2018, respectively. ’043 IPR, Paper
`1; IPR2018-00535, Paper 1.) Petitioner further argues that it did not delay in
`filing its Petition, but rather filed this Petition one week after Patent Owner
`served its infringement contentions in a related litigation. Id. at 7.
`We are not persuaded that we should exercise our discretion to deny
`institution under 35 U.S.C. § 314(a). Here, we agree with Petitioner that,
`after being sued, it filed its Petition within a reasonable time after it learned
`which claims Patent Owner was asserting in the district court. Patent Owner
`has not persuaded us that Petitioner’s arguments to the district court seeking
`a stay are sufficient to deny institution based on the allegedly conflicting
`nature of those comments.4 We find no error in Petitioner’s statements to
`the district court that there are some overlapping claims, which we discuss
`below, and some potential similarities on claim construction issues in the
`’043 IPR. See Ex. 2003, 8, Ex. 2004, 4.
`Patent Owner’s arguments based on Nichia (Prelim. Resp. 51) also do
`not persuade us that we should deny institution here because some of the
`challenged claims overlap with claims held unpatentable in the ’043 IPR. In
`Nichia, nine of the eleven claims challenged in the petition had been held
`unpatentable in a prior IPR, and three of the four asserted grounds related
`solely to claims previously held to be unpatentable. Nichia, IPR2019-00397,
`Paper 10, 6–7. Of importance in Nichia was that the limitations of the
`
`
`4 The basis for the contention that it was a “near certainty” that this
`proceeding would institute is unclear, but we do not find that contention
`warrants denying institution here.
`
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`claims that were not challenged in the previous IPR had substantial overlap
`with the limitations of those previously challenged. Id. at 6. Here, three of
`the eight claims challenged were not challenged in the ’043 IPR. And here,
`none of the asserted grounds relate solely to the previously challenged
`claims (Pet. ii–viii), and the additional claims being challenged here have
`limitations that do not overlap with the previously challenged claims (e.g.,
`“transmitting at least a portion of said response from the user to a server in
`real time via a network,” recited in claim 1; “automatically transferring said
`questionnaire to a loosely networked computer,” recited in claim 7).
`Moreover, an appeal is currently pending in the ’043 IPR, which involves a
`different petitioner than those named here. ’043 IPR, Paper 45.
`Finally, Patent Owner’s arguments based on NHK Spring (Prelim.
`Resp. 52) do not persuade us to deny institution in view of the related
`litigation. In NHK Spring, the panel noted that the related district court
`proceeding, in which the petitioner had asserted the same prior art and
`arguments, was nearing its final stages, with expert discovery ending within
`a few months. NHK Spring, IPR2018-00752, Paper 8, 19–20. Although
`Patent Owner states that trial in a related district court proceeding is set for
`May 18, 2020 (Prelim. Resp. 52), the record is devoid of other evidence on
`the status of that case, such as the progress of fact and expert discovery.
`Additionally, there is no argument or evidence presented by Patent Owner as
`to any overlap of the asserted prior art and arguments in the district court
`case to that presented here. Therefore, we decline to exercise our discretion
`to deny institution on this basis.
`
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`C. Level of Ordinary Skill
`In the ’043 IPR, 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.” ’043 IPR, Paper 34, 20 (“’043 Final
`Written Decision”). In this proceeding, Petitioner proposes that we add to
`that assessment the following phrase: “as well as significant working
`knowledge of developing applications for mobile devices that provide
`location-based services.” Pet. 12 (citing Ex. 1005 ¶¶ 36–40). Patent Owner
`does not dispute Petitioner’s proposed assessment or propose an alternative
`assessment. See generally Prelim. Resp. At this point, neither party,
`however, has given us any reason to change the assessment for an ordinarily
`skilled artisan that we provided in ’043 IPR, which is consistent with the
`prior art of record here.5 Therefore, we apply the same assessment here.
`D. Claim Construction
`In an inter partes review where, as here, the Petition was filed on or
`after November 13, 2018, we construe claim terms “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,”
`as the claims would be construed “in a civil action under 35 U.S.C. 282(b).”
`Changes to the Claim Construction Standard for Interpreting Claims in Trial
`
`
`5 The ’043 Final Written decision issued after the Petition in this IPR was
`filed. We, however, provided the same assessment for an ordinarily skilled
`artisan in our ’043 Institution Decision, which issued before the Petition in
`this IPR was filed. ’043 IPR, Paper 6, 19 n.6.
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`Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340
`(Oct. 11, 2018) (codified at 37 C.F.R. § 42.100(b) (2019)). We presume that
`a claim term carries its “ordinary and customary meaning,” which “is the
`meaning the term would have to a person of ordinary skill in the art in
`question” at the time of the invention. In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007) (quoting Phillips v. AWH Corp., 415 F.3d 1303,
`1313 (Fed. Cir. 2005) (en banc)); see also TriVascular, Inc. v. Samuels, 812
`F.3d 1056, 1062 (Fed. Cir. 2016). Any special definition for a claim term
`must be set forth in the specification with reasonable clarity, deliberateness,
`and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Finally,
`only terms that are in controversy need to be construed, and then only to the
`extent necessary to resolve the controversy. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017);
`Vivid Techs., Inc. v. Am. Sci. & Eng’g. Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999).
`Petitioner requests that we construe three claim terms—“GPS integral
`thereto,” “token,” and “loosely networked”—and partially construe three
`additional claim terms—“originating computer,” “recipient computer,” and
`“central computer.” Pet. 12–17. Further, Petitioner proposes a construction
`for the term “questionnaire” in the event the Board finds that that term needs
`to be construed. Id. at 15–16. Patent Owner does not request that any term
`be construed. Prelim. Resp. 12–17.
`1. ’043 Institution Decision
`In our Institution Decision in the ’043 IPR (“’043 Institution
`Decision,” ’043 Paper 6), we construed several of the above-identified
`terms. In particular, we construed or partially construed: “GPS integral
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`thereto,” “token,” “originating computer,” “recipient computer,” and
`“central computer.” ’043 Inst. Dec. 12–18. In the ’043 Final Written
`Decision, we adopted the constructions for these terms set forth in the ’043
`Institution Decision. ’043 Final Written Decision, 21–24.
`As set forth below, for the terms “token,” “originating computer,”
`“recipient computer,” and “central computer,” Petitioner proposes that we
`provide the same constructions as in the ’043 IPR. For “GPS integral
`thereto,” Petitioner proposes a narrower construction. Neither party,
`however, directly addresses the claim construction analysis we set forth in
`the ’043 IPR.
`In the ’043 IPR, we gave claim terms their broadest reasonable
`interpretation in light of the specification of the patent in which they appear.
`’043 Inst. Dec. 11; ’043 Final Written Dec. 20. As mentioned, in this
`proceeding, due to an intervening change to 37 C.F.R. § 42.100(b), we must
`construe those terms “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,” as the claims would be
`construed “in a civil action under 35 U.S.C. 282(b). Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
`(codified at 37 C.F.R. § 42.100(b) (2019)). As discussed below, we do not
`find that this rule change affects the constructions to be given for specific
`claim terms identified above, and no party has specifically argued otherwise.
`2. “GPS integral thereto”
`In the ’043 IPR, we construed “GPS integral thereto” to be “Global
`Positioning System equipment integral thereto.” ’043 FWD 21–22.
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`Petitioner proposes a narrower construction here: “GPS receiver integral
`thereto.” Pet. 13. Patent Owner does not address the construction of this
`term. See generally Prelim. Resp.
`Petitioner argues that the term “GPS integral thereto” is recited in
`independent claims 7, 19 and 21 in the context of a handheld computing
`device that “has a GPS integral thereto.” Pet. 13. Petitioner further argues
`that the specification of the challenged patent (“Specification”) does not use
`the phrase “GPS integral thereto” or define the acronym “GPS.” Id.
`Petitioner asserts, however, that an ordinarily skilled artisan would have
`understood the term “GPS” to be the acronym for “Global Positioning
`System.” Id. (citing Ex. 1005 ¶ 106). Further, Petitioner argues that an
`ordinarily skilled artisan would have understood that the entire Global
`Positioning System, including multiple satellites, would not be integral to a
`handheld computing device. Id. (citing Ex. 1005 ¶ 107). Petitioner
`continues by arguing that the Specification does not refer to any hardware
`other than a GPS receiver for using GPS to determine GPS coordinates, and
`an ordinarily skilled artisan would have understood a “GPS receiver” to be
`any device or module that is capable of receiving GPS signals and
`determining GPS coordinates therefrom. Id. (citing Ex. 1005 ¶ 107).
`Petitioner concludes that, therefore, an ordinarily skilled artisan would have
`understood that the term “GPS integral thereto” would mean “GPS receiver
`integral thereto.” Id.
`We are not persuaded by Petitioner’s arguments. For the reasons
`expressed in our ’043 Institution Decision, we agree with Petitioner that the
`term “GPS integral thereto” would not require that the entire Global
`Positioning System be in a handheld device. ’043 Inst. Dec. 12–13. We do
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`not agree, however, that the term “GPS integral thereto” should thus be
`limited to be a “GPS receiver integral thereto.” Even if we were to accept
`Petitioner’s argument that a GPS receiver is the only type of GPS equipment
`disclosed in the Specification, “limitations from the specification are not to
`be read into the claims.” Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d
`1182, 1186 (Fed. Cir. 1998). Therefore, for purposes of this Decision, we
`construe “GPS integral thereto” to be “Global Positioning System equipment
`integral thereto.” ’043 Inst. Dec. 12–13.
`3. “token”
`In our ’043 Institution Decision, we construed “token” as “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.” ’043 Inst. Dec. 16–17. Petitioner argues that we should provide
`the same construction here. Pet. 15.
`Patent Owner does not expressly address the construction of this term,
`and we do not read the Preliminary Response as implicitly proposing a
`construction of the term even though Patent Owner discusses the
`Specification’s use of the term “token.” See, e.g., Prelim. Resp. 5. To avoid
`any possible confusion in any further briefing, if a party wants to propose a
`construction for any term, the party should do so expressly (e.g., by
`identifying the term to be construed and providing an express construction).
`For the reasons provided in our ’043 Institution Decision, we construe
`“token” as “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.” ’043 Inst. Dec. 16–17. In that Institution
`Decision, we cite two exhibits providing dictionary definitions: ’043
`
`16
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`Exhibits 1016 and 1017. We designate those exhibits, respectively, as
`Exhibits 3001 and 3002 in this proceeding.6
`4. “originating computer”/“recipient computer”/“central computer”
`In our ’043 Institution Decision, we construed “central computer,”
`“originating computer,” and “recipient computer” as encompassing a
`computer having the ability to perform functions associated with an
`originating computer, a recipient computer, and/or a central computer. ’043
`Inst. Dec. 18. Petitioner argues that we should provide the same
`construction here. Pet. 15. Patent Owner does not address the construction
`of this term. See generally Prelim. Resp. Accordingly for the reasons
`provided in the ’043 Institution Decision, we construe “central computer,”
`“originating computer,” and “recipient computer” as encompassing a
`computer having the ability to perform functions associated with an
`originating computer, a recipient computer, and/or a central computer. ’043
`Inst. Dec. 18.
`
`5. “loosely networked”
`Petitioner argues that “loosely networked” should be construed to as
`“tolerant of intermittent network connections and tolerant of the type of
`network connection available.” Pet. 16. Patent Owner does not address this
`proposed construction or provide its own proposed construction for the term.
`See generally Prelim. Resp.
`
`
`6 Given its claim construction position, Petitioner might have submitted
`these dictionary excerpts as exhibits in this proceeding. Neither party,
`however, submitted any dictionary excerpts to support a proposed
`construction. Pet. xi; Prelim. Resp., iv. Accordingly, we designate these
`dictionary excerpts as exhibits.
`
`17
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`Petitioner’s proposed construction has intrinsic support. As Petitioner
`notes, the Specification uses the term “loosely networked” “to describe a
`networked computer system wherein devices on the network are tolerant of
`intermittent network connections and, in fact, tolerant of the type of network
`connection available.” Ex. 1001, 5:3–7. The Specification also provides
`some more specificity regarding the meaning of the term, specifying, “In
`particular, if any communication connection is available between devices
`wishing to communicate, network transmissions occur normally, in real
`time. If a network connection is unavailable at that moment, the information
`is temporarily stored in the device and later transmitted when the connection
`is restored.” Ex. 1001, 5:7–12.
`For purposes of this Decision, we adopt Petitioner’s unopposed
`construction.
`
`6. “questionnaire”
`Petitioner set forth a proposed construction for the term
`“questionnaire” in the event we need to construe the term. Pet. 15–16.
`Patent Owner does not propose a construction for questionnaire, and neither
`party has demonstrated a need for us to construe the term. See generally
`Prelim. Resp.; Pet. 15–16. Accordingly, for purposes of this Decision, we
`do not need to construe “questionnaire.”
`E. Analysis of the Asserted Grounds of Unpatentability
`1. Principles of Law
`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
`
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`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;
`(3) the level of skill in the art; and (4) objective evidence of nonobviousness,
`i.e., secondary considerations.7 Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966). Further, “[t]o satisfy its burden of proving obviousness, a
`petitioner cannot employ mere conclusory statements. The petitioner must
`instead articulate specific reasoning, based on evidence of record, to support
`the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364, 1380 (Fed. Cir. 2016). We analyze the asserted grounds
`with these principles in mind.
`2. Asserted Obviousness over Barbosa
`Petitioner argues that claims 1 and 19–22 would have been obvious
`over Barbosa. Pet. 18–38. We determine that Petitioner has demonstrated a
`reasonable likelihood of prevailing on this assertion.
`a. Barbosa
`Barbosa relates to systems for conducting field assessments utilizing
`handheld data management devices, such as personal digital assistants,
`handled computers, two-way pagers, and Web/WAP enabled telephony.
`Ex. 1002, 1:10–16.
`
`
`7 Patent Owner does not contend that such secondary considerations are
`present. See generally Prelim. Response.
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`Figure 6 of Barbosa is reproduced below:
`
`
`
`
`Figure 6 illustrates “an environment for extended operation/communication
`between a handheld device 10 (client) and remote management system 58
`(e.g., server, desktop PC).” Ex. 1002, 7:23–26.
`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.
`Ex. 1002, 7:42–47. During program execution, the user may access remote
`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
`
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`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. Claim 19
` (i) A method for managing data
`Petitioner argues that Barbosa teaches the preamble recitation of
`claim 19 because Barbosa describes “methods of conduc
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