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
`
`DECLARATION OF DR. SAMUEL RUSS UNDER 37 C.F.R. § 1.68
`
`IN OPPOSITION TO DECISION GRANTING INTER PARTES REVIEW OF
`
`U.S. PATENT NO. 9,454,748 (CLAIMS 1,2,5,7 AND 19-22)
`
`1
`
`FALL LINE PATENTS EX2006
`
`
`
`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
`
`DECLARATION OF DR. SAMUEL RUSS UNDER 37 C.F.R. § 1.68
`
`IN OPPOSITION TO DECISION GRANTING INTER PARTES REVIEW OF
`
`U.S. PATENT NO. 9,454,748 (CLAIMS 1,2,5,7 AND 19-22)
`
`1
`
`FALL LINE PATENTS EX2006
`
`
`
`TABLE OF CONTENTS
`TABLE OF CONTENTS
`
`
`3
`INTRODUCTION
`INTRODUCTION ............................................................................... 3
`
`3
`QUALIFICATIONS AND COMPENSATION
`QUALIFICATIONS AND COMPENSATION .................................. 3
`
`6
`BACKGROUND
`BACKGROUND ................................................................................. 6
`
`7
`PERSON OF ORDINARY SKILL
`PERSON OF ORDINARY SKILL ..................................................... 7
`
`8
`DISCUSSION OF THE '748 PATENT
`DISCUSSION OF THE ‘748 PATENT .............................................. 8
`
`THE STATE OF THE ART IN TELECOMMUNICATIONS
`THE STATE OF THE ART IN TELECOIVIMUNICATIONS
`
`10
`DEVICES IN 2002
`DEVICES IN 2002 ............................................................................ 10
`
`20
`DISCUSSION OF THE PRIOR ART
`DISCUSSION OF THE PRIOR ART ............................................... 20
`
`34
`CONCLUSIONS
`CONCLUSIONS ............................................................................... 34
`
`II.
`
`III.
`
`IV.
`
`V.
`
`VI.
`
`VII.
`VII.
`
`VIII.
`VIII.
`
`2
`2
`
`FALL LINE PATENTS EX2006
`FALL LINE PATENTS EX2006
`
`
`
`I, Dr. Samuel H. Russ, hereby declare the following:
`
`I. INTRODUCTION
`
`1.
`
`I have been retained by Fall Line Patents, LLC ("Patent Owner,"
`
`hereinafter), the owner of the subject matter of the above-identified patent, i.e.,
`
`U.S. Patent 9,454,748 (the " '748 patent"), to offer testimony with respect to the
`
`subject matter at issue herein (the "IPR" hereinafter).
`
`2.
`
`I am being compensated on an hourly basis for the time I spend in
`
`connection with this proceeding. My compensation is not dependent in any way on
`
`the substance of my opinions or in the outcome of this proceeding.
`
`II. QUALIFICATIONS AND COMPENSATION
`
`3. My qualifications for foiiiiing the opinions set forth in this declaration are
`
`summarized here and explained in more detail in my curriculum vitae, which is
`
`attached as an Appendix. The Appendix also includes a list of my publications and
`
`the cases in which I have testified at deposition, hearing, or trial during the past
`
`four years.
`
`4.
`
`I received a Bachelor's degree in Electrical Engineering from the Georgia
`
`Institute of Technology ("Georgia Tech") in 1986 and a Ph.D. in Electrical
`
`Engineering from Georgia Tech in 1991.
`
`5.
`
`From 2007 to the present, I have been a member of the faculty of the
`
`University of South Alabama as an Assistant and Associate Professor in the
`
`3
`
`FALL LINE PATENTS EX2006
`
`
`
`Department of Electrical and Computer Engineering. During that time, I have won
`
`awards for excellent teaching and have been actively publishing research in home
`
`networking and digital video recording (DVR) technologies. I am active in the
`
`Institute of Electrical and Electronic Engineers (IEEE) and am a Distinguished
`
`Lecturer for the IEEE Consumer Electronics Society. As a consultant, I have
`
`conducted briefings for members of the financial community on technology trends
`
`in the cable, satellite, and IPTV sectors.
`
`6.
`
`From 2000 to 2007, I worked for Scientific-Atlanta (now Cisco's Service
`
`Provider Video Tech. Group), where I managed a cable set-top box (STB) design
`
`group that designed four STB models, including the Explorer 4200 (nonDVR) and
`
`8300 (DVR) models. Both models sold several million units. As design-group
`
`manager, I was responsible for managing the design and prototyping activities of
`
`the group and for interfacing with other groups (especially integrated-circuit
`
`design, procurement, software developers, the factory where prototypes were built,
`
`and product managers) and for maintaining the hardware and mechanical
`
`development schedule. Since the products were produced in extremely high
`
`volumes, the projects had very high visibility in the company, and therefore carried
`
`a great deal of responsibility.
`
`7.
`
`Also while at Scientific-Atlanta, I became a staff expert in home networking,
`
`conducting demonstrations of wireless video technology and managing a group
`
`4
`
`FALL LINE PATENTS EX2006
`
`
`
`that developed a new coaxial home networking system. The coaxial system won a
`
`Technology and Engineering Emmy® Award in 2013. I became a staff expert in
`
`DVR reliability, and led a team that improved the software, hardware, repair, and
`
`manufacturing processes. I am a named inventor on fifty-one (51) patent
`
`applications that were filed while I was at Scientific-Atlanta, twenty-eight (28) of
`
`which have issued as U.S. patents as of the writing of this report.
`
`8.
`
`From 1999 to 2000, I was a Staff Electrical Engineer and then Matrix
`
`Manager at IVI Checkmate (now Ingenico), where I managed the hardware design
`
`team that completed the design of the eN-Touch 1000 payment terminal. This
`
`terminal was in widespread use, for example, at the self-checkout at Home Depot.
`
`9.
`
`I also served on the faculty of Mississippi State University from 1994 to
`
`1999 as an Assistant Professor in the Department of Electrical & Computer
`
`Engineering where I taught circuit board design and two-way interactive video
`
`classes, among other things.
`
`10. I have also authored 32 journal articles and conference papers. A recent
`
`conference paper on digital video recording won second place in a "best paper"
`
`competition at the 2011 International Conference on Consumer Electronics in Las
`
`Vegas, NV.
`
`1 1. My curriculum vitae, which includes a more detailed summary of my
`
`background and experience, as well as a complete list of my publication, is
`
`5
`
`FALL LINE PATENTS EX2006
`
`
`
`included as an Appendix hereto, the substance of which is incorporated by
`
`reference.
`
`III. BACKGROUND
`
`12. I have been asked to provide my opinions with respect to certain matters
`
`associated with claims 1, 2, 5, 7 and 19-22 (the "Challenged Claims") of the '748
`
`Patent.
`
`13. In preparing this Declaration, I have reviewed the following documents,
`
`among others:
`
`(a) The "Petition for Inter Partes Review of U. S. Patent 9,454,748" (the
`
`"Petition"), filed by Starbucks et al. ("Petitioner") and its associated
`
`exhibits;
`
`(b) U. S. Patent 9,454,748 (the '748 Patent, EX 1001), including its
`
`written description, figures, and claims;
`
`(c) the file history of the '748 Patent (EX 1007);
`
`(d) U. S. Patent No. 6,961,586 B2, to Barbosa (EX 1002)
`
`(e) U. S. Patent No. 6,202,023 B1 to Hancock (EX 1003)
`
`(f) U. S. Patent No. 6,332,127 B1 to Bandera (EX 1004)
`
`(g) U.S. Patent No. 5,991,771 to Falls (EX 1017)
`
`6
`
`FALL LINE PATENTS EX2006
`
`
`
`(h) The JavaTM Programming Language, Third Edition, Ken Arnold,
`James, Gosling, and David Holmes, Addison Wesley, © 2000, 4th
`
`Printing October 2001 (EX 2001).
`
`(i) Programming Wireless Devices with the JavaTM 2 Platform, Micro
`
`Edition, Roger Riggs, Antero Taivalsaari, and Mark VandenBrink,
`
`Addison Wesley, 2001. (EX 2002).
`
`14. I have been asked to offer my opinion with respect to the technology
`
`associated with, and obviousness of, certain of the claims of the '748 patent in
`
`view of prior art references provided by the Petitioner.
`
`IV. PERSON OF ORDINARY SKILL
`
`15. Petitioner has suggested that a hypothetical person of ordinary skill in the art
`
`relevant to the priority date of the '748 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." Petition at page 6, (Paper 1). That definition will be accepted for
`
`purposes of this declaration.
`
`16. Based on my education, training, and professional experience in the field of
`
`the claimed invention, and teaching, I am familiar with the level of the abilities of a
`
`person of ordinary skill in the art at the time of the claimed invention. It is my
`
`understanding that earliest priority date of the '748 patent is August 19, 2002, and
`
`7
`
`FALL LINE PATENTS EX2006
`
`
`
`that the Patent Office has accepted Patentee's showing of a conception date and
`
`diligent reduction to practice of the claimed invention at least as early as January 1,
`
`2002.
`
`V. DISCUSSION OF THE '748 PATENT
`
`17. This patent relates to a method of collecting data using handheld devices by
`
`presenting the user with a data collection questionnaire and then transmitting the
`
`data to a central server where it can be accessed and used.
`
`18. Prior art methods of collecting data in this fashion from handheld devices
`
`required coding and compiling a device specific program that presented the
`
`questionnaire to the user. The resulting executable program would then be usable
`
`by only one kind of device.
`
`19. Of particular concern to software developers who support software on
`
`multiple platforms is writing software that accesses the device's hardware.
`
`20. The hardware might include the handheld's screen, its communications
`
`hardware (phone chip, WiFi chip, etc.), its file system, a GPS receiver, the device's
`
`ports (e.g., serial, parallel, USB, etc.), and external hardware addressable through
`
`the device's ports.
`
`21. The specification of the '748 patent specifically recognizes this problem
`
`with prior-art attempts to write device-independent software using then-existing
`
`standards-based programming packages. "Unfortunately, such languages typically
`
`8
`
`FALL LINE PATENTS EX2006
`
`
`
`lack effective optimization and generally do not provide a broad range of support
`
`for hardware resources." EX 1001, 2:20-23.
`
`22. However, the '748 patent overcomes this problem in two steps.
`
`23. The first step is to create a questionnaire that is tokenized before it is
`
`transmitted to a handheld device by assigning device independent "tokens" to the
`
`elements of a questionnaire. See EX 1001 at 8:15-17 ("This series of questions or
`
`statements will have been constructed on computer 22 and reduced to tokenized
`
`form for transmission to the handheld 28.") (italics added); See also, EX 1001 at
`
`8:40-43 (describing how tokens are "assigned" to questions).
`
`24. The second step involves the development of an "operating instruction
`
`system" ("OIS") that overlays the native operating system of each supported
`
`handheld device.
`
`25. One function of the OIS is to execute the tokenized questionnaire on the
`
`handheld device.
`
`As a part of the inventive system each remote device, preferably a
`handheld computer, is provided with an operating instruction system
`("OIS") which overlays its native operating system. Once equipped
`with the OIS, a remote device can be programmed according to
`methods described hereinafter. Any program developed under the
`inventive system will run on any handheld computer equipped with
`the OIS and files on one such handheld will transfer freely to any
`other handheld or any computer connected to the inventive system.
`
`9
`
`FALL LINE PATENTS EX2006
`
`
`
`26. In other words, this patent contemplates that there will be an application or
`
`middleware layer (the "OIS") that overlays the operating system on each different
`
`type of remote device so that the same tokenized questionnaire can be executed
`
`without change on each such device.
`
`27. When the questionnaire is executed, the OIS presents it to the user and
`
`collects the user's response(s). Additionally, the OIS controls the automatic
`
`collection of data from the device, "... at least some of the information which is
`
`responsive to the designed questionnaire may be collected automatically rather
`
`than entered manually, e.g., time and date, position infonnation if the device
`
`includes a GPS receiver, etc." EX 1001, 5:35-39. See also, 10:38-41.
`
`28. The '748 patent also discloses an embodiment where the handheld device is
`
`able to determine its current location and that location entered automatically into
`
`the questionnaire. EX 1001, 10:38-41.
`
`VI. THE STATE OF THE ART IN TELECOMMUNICATIONS
`DEVICES IN 2002
`
`29. The earliest priority date of the '748 patent is August 19, 2002, although the
`
`patent applicant established a conception date at least as early as January 1, 2002,
`
`to the satisfaction of the examiner. EX 1007, pp. 42-44. That being said, for
`
`purposes of this declaration the August 2002 filing date will be used in comparing
`
`this invention with the prior art.
`
`10
`
`FALL LINE PATENTS EX2006
`
`
`
`30. The capabilities of mobile computing devices such as cell phones and
`
`handheld computers (e.g., personal digital assistants or "PDAs") in 2002 were
`
`extremely limited compared with their capabilities today.
`31. The book "Programming Wireless Devices with the JavaTM 2 Platform,
`
`Micro Edition" (EX 2002) was published by Sun Microsystems. A Sun employee
`
`is credited with being the first to suggest this language and, in 2002, development
`
`of the Java language was centered at Sun. Thus, in my opinion this is an
`
`authoritative reference on the capabilities of Java as it existed on wireless devices
`
`in the year it was published, i.e., in 2001.
`
`32. EX 2002 explains that in developing JavaTM 2 Micro Edition (J2ME) for
`
`wireless devices in order to promote compatibility between different devices J2ME
`
`was designed to accommodate the "lowest common denominator". Id., p. 22. Of
`
`course, the "lowest common denominator" among such portable devices would not
`
`include a GPS receiver as a standard feature.
`
`33.
`
`Figure 3.2 of that reference, reproduced below, sets out the minimum
`
`requirements of devices that were targeted for J2ME implementations:
`
`11
`
`FALL LINE PATENTS EX2006
`
`
`
`Typical aspects:
`- At least 160 kB memory available to Java
`- Processor speed starting from 8 to 32 MHz
`16 or 32 bit processor
`- Limited power, usually battery operated
`- Connectivity to network; often very limited
`bandwidth (9,600 bps or less)
`- High-volume manufacturing
`
`EX 2002, p. 17.
`
`34. The distinction between J2ME and other forms of Java is important to
`
`understand. The reference explains it as follows.
`
`35. First, it outlines several forms of Java that Sun Microsystems had in mind
`
`when the book was written.
`
`12
`
`FALL LINE PATENTS EX2006
`
`
`
`Servers & enterprise
`computers
`
`Desktop & personal
`uters
`
`1.
`Optional
`
`Optional
`Packags
`
`i.ow-end consumer
`devices
`
`Java 2
`Enterprisa
`Edition
`(J2EE)
`
`Java 2
`Standard
`Edition
`(J2SE )
`
`personal Profile
`
`Java 2 Micro Edition (J2ME)
`
`Figure 2i Java 2 Platform editions and their target markets
`36. EX 2002, p. 5
`
`37. Second, it explains the target markets for Java 2 Micro Edition (J2ME) and
`
`identifies the range of hardware devices that would be expected to support it.
`
`38. High-end consumer devices. "In Figure 2.1, this category is represented by
`
`the grouping labeled CDC (Connected Device Configuration). Typical examples of
`
`devices in this category include TV set-top boxes, Internet TVs, Internet enabled
`
`screenphones, high-end wireless communicators and automobile
`
`entertainment/navigation systems. These devices have a large range of user
`
`interface capabilities, total memory budgets starting from about two to four
`
`13
`
`FALL LINE PATENTS EX2006
`
`
`
`megabytes and persistent, high-bandwidth network connections, often using
`
`TCP/IP.
`
`39. Low-end consumer devices. In Figure 2.1, this category is represented by the
`
`grouping labeled CLDC (Connected, Limited Device Configuration). Cell phones,
`
`pagers, and personal organizers are examples of devices in this category. These
`
`devices have very simple user interfaces (compared to desktop computer systems),
`
`minimum memory budgets starting at about 128 kilobytes, and low bandwidth,
`
`intermittent network connections. In this category of products, network
`
`communication is often not based on the TCP/IP protocol suite. Most of these
`
`devices are usually battery-operated. (EX 2002 p. 6)
`
`40. One important distinction between what Sun classified as CDC and CLDC
`
`devices was Internet connectivity. Specifically, low-end consumer devices were
`
`ones with intermittent connectivity. Further, such devices included cell phones,
`
`which were quite popular even in 2001. In other words, a POSITA, tasked with
`
`implementing a system of the type embodied by the '748 patent, would gravitate
`
`towards the CLDC profile, as opposed to the CDC profile, because of the
`
`popularity of the devices it supports, its ability to run on a much wider variety of
`
`devices (including CDC devices), and its support for intermittent network
`
`connectivity.
`
`14
`
`FALL LINE PATENTS EX2006
`
`
`
`41. EX 2002 also includes a listing of the industrial partners who were involved
`
`in the development of the Java wireless standard at Sun computers and that list
`
`included the following familiar companies (EX 2002, p. 34):
`
`• America Online
`• B
`
`• Ericsson
`
`• Fujitsu
`
`• Matsushita
`
`• Mitsubishi
`
`• Motorola
`
`• Nokia
`
`• Oracle
`
`• Palm Computing
`• Research In Motion (RIM}
`• Samsung
`
`• Sharp
`
`• Siemens
`
`• Sony
`• Sun Microsystems
`
`• NIT DoCoMo
`
`• Symbian
`
`42. Thus, the reference's cited limitations of 160kB memory, 9600 bps network
`
`connectivity, and 16-bit processors were not misplaced — they were purposefully
`
`set based on knowledge of the market at the time.
`
`43. It is important to understand this conversation about Java in the context of
`
`the priority date of the '748 patent, i.e., the state of the art as it existed in 2002.
`
`The Java that would have been available to a developer of a solution for cell
`
`phones (i.e. J2IVIE) was, by design, quite limited in its functionality. As will be
`
`shown, these limitations are explicitly disclosed in the authoritative reference
`
`identified herein as EX. 2002.
`
`15
`
`FALL LINE PATENTS EX2006
`
`
`
`44. First, J2ME did not support a standard Java JVM. Instead, CLDC devices
`
`used a KVM (i.e., Sun's "K Virtual Machine", EX 2002, pp. 14-15. See also
`
`Figure 2.1 reproduced above) which was strictly limited in its capabilities and was
`
`designed to accommodate the "lowest common denominator" among such devices
`
`so that the KVM could be run on a wide variety of wireless devices . Id. p.22. The
`
`KVM at this time did not even support floating point computations since the "cost
`
`of supporting floating point in software was considered too high". Id. p. 37 and 39.
`
`45.
`
`Wireless devices at the time of the patent did not support the JVM. Thus,
`
`Petitioners' expert's statements regarding the properties of Java running NM on a
`
`wireless device must be disregarded. See, for example EX 1005 at ¶126, "For
`
`example, the knowledge of a POSITA regarding Java is reflected in Bandera,
`
`which explains that "JAVA® is a portable and architecturally neutral language,"
`
`and "JAVA® source code is compiled into a machine-independent format that can
`
`be run on any machine with a JAVA® runtime system known as the JAVA®
`
`Virtual Machine (JVM)." EX 1005 at ¶132. Citation omitted.
`
`46. Second, J2ME did not support the Java Native Interface or user-defined
`
`class loaders. EX 2002 at p. 41. Java Native Interface is the method by which "the
`
`virtual machine invokes native functionality." (Id.) That is, Java Native Interface
`
`was (and still is) the mechanism by which a Java program can invoke external code
`
`developed for a native platfoiiii, usually code custom-written in the C
`
`16
`
`FALL LINE PATENTS EX2006
`
`
`
`programming language for a computer. The primary mechanism by which a
`
`developer can access native functionality on a computer (viz. Java Native
`
`Interface) was not available in J2ME.
`
`47. Even if some exception to this were found, and a developer found a way to
`
`access a cell phone's GPS capability via executable code that was native to the cell
`
`phone, the resulting application would not be device-independent.
`
`48. EX 2001 (which is "direct from the creators of the JavaTM programming
`
`language" and an official publication that is descriptive of the then-current latest
`
`version of Java, i.e., Java 2 SDK, Id, p. 11) was published in 2000, with a 4th
`
`Printing October 2001, Id. at p. 5, and contains infoanation which makes it clear at
`
`the time of the '748 patent a standard Java program could not have accessed a GPS
`
`in a handheld device and maintained device independence:
`
`If you need to write a program that will use some existing code that
`isn't written in the Java programming language, or if you need to
`manipulate some hardware directly, you can write native methods. A
`native method lets you implement a method that can be invoked from
`the Java programming language but is written in a "native" language,
`usually C or C++. If you use a native method, all portability and
`safety of the code are lost. You cannot, for instance, use a native
`method in almost any code you expect to download and run from
`across a network connection (an applet, for example). The
`downloading system may or may not be of the same architecture, and
`even if it is, it might not trust your system well enough to run arbitrary
`native code.
`
`Id. p. 6. (Emphasis added)
`
`17
`
`FALL LINE PATENTS EX2006
`
`
`
`49. This reference makes clear that even if a native language interface were
`
`found, calls to native methods would not be device-independent.
`
`50. Third, J2ME2 written for a CLDC device could not use conventional
`
`applets, or even support applications in a device-independent manner. (Recall that
`
`a POSITA tasked with implementing a system of the type disclosed in the '748
`
`patent would select the CLDC profile because, among other reasons, it
`
`contemplated limited and intermittent network connectivity.) J2ME on a CLDC
`
`device did not support the conventional Java "applet" model. "Due to strict
`
`memory constraints and the requirement to support application interaction and data
`
`sharing within related applications, the Mobile Information Device Profile does not
`
`support the familiar Applet model introduced by JavaTM 2 Platform, Standard
`
`Edition (J2SETM). Rather, MIDP introduces a new application model that was
`
`designed to augment the CLDC application model and to allow multiple Java
`
`applications to share data and run concurrently on the KVM." (EX 2002 p. 43).
`
`Conversely, the application model that was supported was not device-independent.
`
`"Due to significant variations and feature differences among potential CLDC
`
`devices, the details of application management are highly device-specific and
`
`implementation-dependent. Consequently, application management capabilities are
`
`often written in the C programming language or some other low-level
`
`programming language specific to the host operating system." (EX 2002 p. 36)
`
`18
`
`FALL LINE PATENTS EX2006
`
`
`
`Thus any references to Java "applications" or "applets" running on a CLDC device
`
`in the 2001-2002 timeframe necessarily entail a system that is not device-
`
`independent.
`
`51. As an important aside, the references make clear that code written in C/C++
`
`in the 2001-2002 timeframe was device dependent. For example, "A native
`
`method lets you implement a method that can be invoked from the Java
`
`programming language but is written in a "native" language, usually C or C++.
`
`If you use a native method, all portability and safety of the code are lost. You
`
`cannot, for instance, use a native method in almost any code you expect to
`
`download and run from across a network connection (an applet, for example)."
`
`(EX 2001 p. 6). Also, "application management capabilities are often written in
`
`the C programming language or some other low-level programming language
`
`specific to the host operating system." (EX 2002 p. 36) These statements
`
`underscore the perspective of a POSITA at the time of the invention — C/C++ was
`
`used when native methods need to be invoked, which is the antonym of device-
`
`independence.
`
`52. The existing Java environment for cell phones as of the time of the invention
`
`could not access a phone's GPS system in a device-independent manner, either
`
`directly or via some sort of applet or application. This crucial limitation was the
`
`exact problem that the inventors of the '748 patent were trying to solve.
`
`19
`
`FALL LINE PATENTS EX2006
`
`
`
`VII. DISCUSSION OF THE PRIOR ART
`
`BARBOSA
`
`53. Barbosa (EX 1002, USPN 6,961,586) issued on Nov. 1, 2005. From an
`
`application filed September 17, 2001, that claims priority to a provisional
`
`application filed September 18, 2000.
`
`54. Barbosa discloses systems and methods for executing field assessments
`
`using handheld devices. EX 1002, Abstract.
`
`55. Barbosa teaches the use of a "template" which is described as, e.g.,
`
`"task/punch lists" (7: 28-29), a listing of "tasks" that is provided to a worker (10:
`
`8-49), a listing of "field test procedures", (11: 18-20), a listing of instructions for
`
`assessors (12: 8-14).
`
`56.
`
`Barbosa also uses the term "template" to describe providing information to
`
`a remote processor in recognizable format. "Data may be provided to the remote
`
`resource within a template recognizable by the remote processor/program." Id., 9:
`
`8-9.
`
`57. Barbosa never discloses information about the contents of the template with
`
`any specificity. Instead, Barbosa provides general descriptions of the subject
`
`matter of the text that the template might include, but nothing else.
`
`20
`
`FALL LINE PATENTS EX2006
`
`
`
`58. There is no mention at all of the template being "tokenized", there is no
`
`suggestion that at least some of the "tokens" be executable, or that the tokens be
`
`"device independent" or "device indifferent".
`
`59. In summary, nowhere in this reference does Barbosa indicate or even infer
`
`that his "punch list" or "recognizable format" is comprised of device independent
`
`tokens at least some of which must be executable. To conclude otherwise is to
`
`interpret Barbosa with hindsight directed toward the approach of the '738 patent.
`
`60.
`
`Petitioners argue on pages 21-22 of the Petition (emphasis added):
`
`Further, Barbosa's questionnaire is tokenized. For example, Barbosa
`discloses, "Computer program code for carrying out operations of the
`present invention can be written in an object oriented programming
`language such as Java...." Id., 12:45-51. A questionnaire (e.g.,
`downloaded code modules, templates, and/or programs) written in an
`object oriented 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. Ex. 1005
`126. Therefore, Barbosa discloses a tokenized questionnaire.
`
`61.
`
`Petitioners' hypothetical (e.g., EX 1005,11126 and Petition p. 21) states that
`
`Barbosa's template "would" have included "an index, an instruction, or a
`
`command" if it had been written in Java. That is pure conjecture that lacks support
`
`in Barbosa's disclosure.
`
`62.
`
`Further, the version of Java that Petitioners describe, i.e., the version that
`
`ran on "computers", was not available for a handheld device.
`
`21
`
`FALL LINE PATENTS EX2006
`
`
`
`63. The first problem with Petitioner's use of Barbosa as a reference is clear
`
`when the full text of the passage relied upon by Petitioners is examined (EX. 1002,
`
`at col. 12, lines 45-54, emphasis added):
`
`Computer program code for carrying out operations of the present
`invention can be written in an object oriented programming language
`such as Java., Smalltalk or C++. The computer program code for
`carrying out operations of the present invention, however, may also be
`written in conventional procedural programming languages, such as
`the "C" programming language. The program code may execute
`entirely on the user's computer, as a stand-alone software package, or
`it may execute partly on the user's computer and partly on a remote
`computer.
`
`64. Petitioners have misrepresented the intent of the specification in Barbosa in
`
`this passage. Barbosa is actually describing the system in its entirety and that text
`
`could apply to any aspect of Barbosa's invention which includes, among others,
`
`server side software to transmit and receive his "template" to/from the user (e.g.,
`
`box 709 of Fig. 7), software to synchronize the handheld when the template is
`
`updated (e.g., box 903 of Fig. 9), software running on the handheld to help the user
`
`navigate to the worksite (e.g., box 701 of Fig. 7), etc.
`
`65. The code referred to may execute on the "user's computer or partly on the
`
`user's computer and partly on a remote computer." Id. Significantly, not
`
`mentioned in the full text is the user's handheld device.
`
`66.
`
`Barbosa uses the term "computer" to refer to desktop / laptop
`
`workstations. Personal data assistants ("PDAs", Id., 1: 57-67) are broadly referred
`
`22
`
`FALL LINE PATENTS EX2006
`
`
`
`to in this reference as "portable electronic device" (Id., 4:45-47), "handheld
`
`device" (e.g., Id., Abstract), or "handheld computer" (Id., 12:14-18), etc., to
`
`differentiate this sort of device from a "computer".
`
`67.
`
`Petitioners' next error is that Petitioners' expert wrongly assumes that that
`
`the template is a "questionnaire (e.g., downloaded code modules, templates, and/or
`
`programs) written in an object oriented programming language". EX 1005, ¶126
`
`and Petition p. 21).
`
`68.
`
`Nothing in Barbosa suggests that his template is written in an object
`
`oriented programming language. Every example given of "template" in Barbosa is
`
`little more than a simple listing of questions.
`
`69.
`
`There is no evidence that Barbosa's template contains any sort of device
`
`independent token that is an executable instruction, nor is there any teaching or
`
`suggestion that template logic should be made a part of his template. That feature
`
`of the patented invention is a major advance over the prior art at least for the
`
`reason that changes in the questionnaire logic will not necessitate a recompilation
`
`and retransmission of the program that displays it.
`
`70.
`
`Further in the year 2000 (Barbosa' s provisional application filing date) any
`
`statement that a Java program running on a handheld device that accesses
`
`infoiniation from a GPS could be device independent is demonstrably incorrect, as
`
`explained above.
`
`23
`
`FALL LINE PATENTS EX2006
`
`
`
`71.
`
`It is worth noting that Petitioner's expert never demonstrates or even states
`
`as fact that a standards compliant Java program in the year 2000 could obtain
`
`information from a GPS receiver in a device independent manner.
`
`72.
`
`In that regard and significantly, also lacking is any demonstration via a
`
`programming example of standards compliant Java source code that would run on
`
`a handheld device in 2000 (or, in 2002 the priority date of the '748 patent) and
`
`access a GPS receiver in a device independent manner.
`
`73.
`
`In fact, the conclusion must be drawn based on the relevant Java standard
`
`in effect at that time that accessing a GPS receiver in a device independent manner
`
`was not possible.
`
`74. Of additional note, Java applets in the year 2000 (and in the year 2002) were
`
`not a part of standard, device-independent Java as it existed on telecommunications
`
`devices. This is explained in more detail above.
`
`75.
`
`In Barbosa, there are only two mentions of Java. One of them may be
`
`found in 12:14-18.
`
`The template may operate in combination with programs resident in
`the handheld computer or may be accompanied by a computer
`program transmitted from the server (e.g., in the form of a JAVA
`applet).
`
`76.
`
`77.
`
`Note that when Barbosa mentions sending a template in combination with a
`
`Java "applet" to a receiving device, it must necessarily be speaking of sending the
`
`24
`
`FALL LINE PATENTS EX2006
`
`
`
`template to a desktop or laptop device since applets were not a part of standard
`
`Java in 2000.
`
`78. EX 2002, which presents the then-current Java 2 standards as applied to
`
`telecommunications devices (i.e. J2ME), at p. 43, explains that (emphasis added)
`
`Java "applets" were not a part of the Java telecommunications standard:
`
`Due to strict memory constraints and the requirement to support
`application interaction and data sharing within related applications,
`the Mobile Information Device Profile does not support the familiar
`Applet model introduced by JavaTM 2 Platfoiiii, Standard Edition
`(J2SETM). Rather, MIDP introduces a new application model that was
`designed to augment the CLDC [Connected, Limited Device
`Configuration] application model and to allow multiple Java
`applications to share data and run concurrently on the KVM.
`
`Id. Emphasis added.
`
`79.
`
`Thus, Barbosa's statement above (EX 1002, 12:14-18) that the template
`
`might be transmitted along with a JAVA applet to a host device means that the host
`
`device could only be a desktop or laptop computer, since applets were not
`
`supported in standard Java on a handheld device
`
`80.
`
`The second reference to Java also occurs in column 12:
`
`Computer program code for carrying out oper
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
