Trials@uspto.gov
`571.272 .7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`STARBUCKS CORPORATION ET AL.
`
`Petitioners
`
`v.
`
`FALL LINE PATENTS, LLC
`
`Patent Owner
`
`CASE IPR2019-00610
`
`PATENT 9,454,748
`
`PATENT OWNER'S RESPONSE TO PETITION FOR
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 9,454,748
`
`CHALLENGING CLAIMS 1, 2, 5, 7, AND 19-22
`
`
`571.272 .7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`STARBUCKS CORPORATION ET AL.
`
`Petitioners
`
`v.
`
`FALL LINE PATENTS, LLC
`
`Patent Owner
`
`CASE IPR2019-00610
`
`PATENT 9,454,748
`
`PATENT OWNER'S RESPONSE TO PETITION FOR
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 9,454,748
`
`CHALLENGING CLAIMS 1, 2, 5, 7, AND 19-22
`
`
`
`CASE IPR2019-00610
`U.S. PATENT 9,454,748
`
`TABLE OF CONTENTS
`
`1 1 3 4
`
`7
`
`I. INTRODUCTION
`II. BACKGROUND OF THE CASE
`III. STATUS OF THE CHALLENGED CLAIMS
`IV. THE '748 PATENT
`V. PATENT OWNER'S RESPONSE TO ASSERTED GROUNDS OF
`INVALIDITY
`A. GROUND 1: CLAIMS 1 AND 19-22 ARE CHALLENGED AS OBVIOUS OVER
`BARBOSA WITH THE KNOWLEDGE OF A POSITA.
`I. Discussion of Barbosa
`2. Claim 19
`3. Claim 20
`4. Claim 21
`5. Claim 22
`6. Claim 1
`B. GROUND 2: CLAIMS 1 AND 19-21 ARE CHALLENGED AS OBVIOUS OVER
`21
`BARBOSA
`21
`1. Discussion of Bandera
`22
`2. Bandera combined with Barbosa is inoperable
`C. GROUND 3: CLAIM 7 IS CHALLENGED AS OBVIOUS OVER BARBOSA AND FALLS.
`23
`
`7
`7
`16
`18
`18
`19
`20
`
`D. GROUND 4: CLAIMS 1, 2, 5, AND 19-22 ARE CHALLENGED AS OBVIOUS OVER
`HANCOCK IN VIEW OF THE KNOWLEDGE OF A POSITA.
`D. GROUND 5: CLAIMS 1, 2, 5, AND 19-22 ARE CHALLENGED AS OBVIOUS OVER
`23
`HANCOCK AND BANDERA.
`E. GROUNDS 6: CLAIM 7 IS CHALLENGED AS OBVIOUS OVER HANCOCK/FALLS. 25
`VI. ADMINISTRATIVE PATENT JUDGES ARE PRINCIPAL OFFICERS
`25
`OF THE UNITED STATES
`VII. CONCLUSIONS
`IX. CERTIFICATE OF WORD COUNT
`
`26
`
`28
`
`23
`
`ii
`
`
`
`CASE IPR2019-00610
`U.S. PATENT 9,454,748
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Intercollegiate Broad. Sys., Inc. v. Copyright Royalty Board, 684 F.3d
`
`1332, 1336-40 (D.C. Cir. 2012)
`
`Lucia v. S.E.C., 138 S. Ct. 2044, 2055 (2018)
`
`Page
`
`26
`
`26
`
`iii
`
`
`
`CASE IPR2019-00610
`U.S. PATENT 9,454,748
`
`PATENT OWNER'S EXHIBIT LIST
`
`October 25, 2019
`
`The JavaTM Programming Language, Third Edition, Kan Arnold,
`James, Gosling, and David Holmes, Addison Wesley, © 2000, 4th
`Printing October 2001.
`
`Programming Wireless Devices with the JavaTM 2 Platform, Micro
`Edition, Roer Riggs, Antero Taivalsaari, and Mark VandenBrink,
`Addison Wesley, © 2001
`
`Defendants' Motion to Stay Litigation Pending Inter Partes Review
`of the Patent-In-Suit, Fall Line Patents, LLC v. Zoe's Kitchen, Inc.
`and Zoe's Kitchen USA, LLC, U.S.D.C., ED TX, Tyler Div., Case
`No. 6:18-CV-407-RWS
`
`Defendants' Reply In Support of Their Motion to Stay Litigation
`Pending Inter Partes Review of the Patent-in-Suit, Fall Line
`Patents, LLC v. Zoe's Kitchen, Inc. and Zoe's Kitchen USA, LLC,
`U.S.D.C., ED TX, Tyler Div., Case No. 6:18-CV-407-RWS
`
`Declaration of Dr. Samuel H. 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)
`
`EX 2001
`
`EX 2002
`
`EX 2003
`
`EX 2004
`
`EX 2006
`
`iv
`
`
`
`PATENT OWNER'S RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 9,454,748
`CHALLENGING CLAIMS 1, 2, 5, 7, AND 19-22
`
`I. Introduction
`
`Fall Line Patents, LLC (hereinafter "Patentee), the owner of the entire
`
`interest in U.S. Patent No. 9,454,748 (hereinafter the '748 Patent) hereby tenders
`
`its Response to the Decision to Institute Inter Parts Review ("IPR") of the '748
`
`patent. The above-mentioned decision (hereinafter the "Decision") was entered
`
`August 7, 2019, in IPR2019-00610 as Paper 14 and the instant Response was set
`
`for October 25, 2019, according to the Board's Scheduling Order (Paper 15).
`
`H. Background of the Case
`
`The above-mentioned petition (hereinafter the "Petition"), which is now
`
`assigned Case IPR2018-00043, was filed by Starbucks Corporation) et al.
`
`(hereinafter collectively "Petitioner") and accorded the filing date of January 22,
`
`2019. Patent Owner filed a preliminary response on May 10, 2019. On August 7,
`
`2019, the Patent Trial and Appeal Board (hereinafter "the Board") entered the
`
`Decision instituting the instant IPR. As explained in detail below, the prior art of
`
`record does not render any challenged claim as obvious.
`
`1 This IPR has been terminated with respect to Starbucks Corporation. See, Paper
`13.
`
`1
`
`
`
`Litigation Involving the Subject Patent
`The '748 patent is presently the subject of patent infringement lawsuits filed
`
`CASE IPR2019-00610
`U.S. PATENT 9,454,748
`
`in the Eastern District of Texas against the following entities:
`
`Case Caption
`6:18-cv-00407
`Fall Line Patents, LLC v. Zoe's Kitchen, Inc. et al
`6 :18-cv-00408
`Fall Line Patents, LLC v. AMC Ent. Holdings, Inc. et al
`6:18-cv-00409
`Fall Line Patents, LLC v. Boston Market Corp.
`6:18-cv-00411
`Fall Line Patents, LLC v. Starbucks Corp.
`6:18-cv-00412
`Fall Line Patents, LLC v. McDonald's Corp. et al
`Fall Line Patents, LLC v. Panda Restaurant Group, Inc. et al 6:18-cv-00413
`6:18-cv-00415
`Fall Line Patents, LLC v. Papa John's Int., Inc. et al
`
`Additionally, the following previously-filed cases have now been dismissed:
`
`Case Caption
`6 :18-cv-00406
`Fall Line Patents, LLC v. Pizza Hut, LLC et al
`6:18-cv-00410
`Fall Line Patents, LLC v. Regal Cinemas, Inc.
`6: 17-cv-00407
`Fall Line Patents, LLC v. Choice Hotels Int., Inc.
`6:17-cv-00408
`Fall Line Patents, LLC v. Uber Technologies, Inc.
`Fall Line Patents, LLC v. American Airlines Group, Inc. et al 6:17-cv-00202
`6:17-cv-00203
`Fall Line Patents, LLC v. Cinemark Holdings, Inc. et al
`6 :17-cv-00204
`Fall Line Patents, LLC v. Grubhub Holdings, Inc. et al
`
`IPR2018-00535, which was initiated by Uber Technologies, Inc., and Choice
`
`Hotels International, Inc., to challenge the '748 Patent has been ten iinated by
`
`mutual consent. See, Joint Motion to Terminate Proceedings Pursuant to 35 USC
`
`317 and 37 C.F.R. 42.74, filed July 13, 2018 (Paper 10).
`
`IPR2018-00043 ("Unified Patents IPR"), Paper 34, determined that claims
`
`16-19, 21, and 22, of the instant patent were unpatentable. However, Patent Owner
`
`2
`
`
`
`CASE IPR2019-00610
`U.S. PATENT 9,454,748
`
`filed a Notice of Appeal to the Federal Circuit May 30, 2019. As such, all of the
`
`challenged claims will be argued.
`
`Pending Patent Application
`A continuation application of the instant patent is currently pending in the
`
`U.S. Patent Office, to wit, App. No. 15/260,929. Claims 1-11 are cancelled and
`
`new claims 12-22 are currently pending in that application. A final Office action
`
`has been received and all claims currently stand as rejected.
`
`III. Status of the Challenged Claims
`
`The Petitioner asserted six grounds of unpatentability of claims 1, 2, 5, 7,
`
`and 19-22, based on the following references (Petition, p. 5):
`
`Ground Claims Challenged
`1 and 19-22
`1
`
`Reference(s)
`Barbosa together with the knowledge of a POSITA.
`
`2
`3
`4
`5
`6
`
`1 and 19-22
`7
`1, 2, 5, and 19-22
`1, 2, 5, and 19-22
`7
`
`Barbosa and Bandera
`Barbosa and Falls
`Hancock in view of the knowledge of a POSITA.
`Hancock and Bandera
`Hancock and Falls
`
`The references listed above correspond to the following U.S. patents:
`
`Reference
`Barbosa
`Hancock
`Bandera
`Falls
`
`Patent Number
`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
`
`Exhibit
`Issue Date
`Ex. 1002
`Nov. 1, 2005
`Mar. 13, 2001 Ex. 1003
`Dec. 18, 2001 Ex. 1004
`Nov. 23, 1999 Ex. 1017
`
`3
`
`
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`CASE IPR2019-00610
`U.S. PATENT 9,454,748
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`Based on information contained in the Petition and the references identified
`
`above, the Board determined Petitioner had demonstrated a reasonable likelihood
`
`that it would prevail with respect to Grounds 1, 2, 4 and 5 (Paper 14, pp. 19, 33,
`
`37, 39, and 49). The Board determined that Petitioner did not appear to have
`
`established a reasonable likelihood of success of prevailing on its asserted ground
`
`in connection with Grounds 3 and 6 (Paper 14, pp. 47 and 52).
`
`IV. The '748 Patent
`
`The '748 patent names David Payne as its sole inventor and was filed
`
`October 22, 2010, but claims priority through another application to provisional
`
`patent application 60/404,491 which was filed August 19, 2002. During
`
`prosecution, a conception of the claims at least as early as January 1, 2002, was
`
`established to the satisfaction of the examiner. (`748 prosecution history, EX. 1007
`
`at 100-145).
`
`This patent relates to a method of collecting data using handheld devices and
`
`transmitting the data to a central server where it can be accessed and used. The
`
`software running on the handheld device that collects information from the shopper
`
`takes the form of a questionnaire. The questions can be requests for information
`
`that are collected automatically by the handheld device. See id. at 5:35-37.
`
`4
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`
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`CASE IPR2019-00610
`U.S. PATENT 9,454,748
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`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. Further, when the underlying hardware of the
`
`handheld was to be accessed (e.g., infoimation from a GPS receiver was to be
`
`acquired) this made the problem of supporting code on multiple platfotins even
`
`more difficult. This issue is specifically recognized in the '748 patent:
`
`As with other types of computers, handheld computers suffer from
`compatibility issues, especially in the operation of application
`programs. Generally speaking, software programs must typically be
`tailored to a specific family of processors and to a specific operating
`system. Most applications are developed in a high level language and
`then compiled for a specific target processor. As different
`manufacturers select different processors, an application written for
`one family of processors must be recompiled to execute in a processor
`of a different family. Even when two manufacturers select compatible
`processors, if they chose different operating systems, applications
`written for one device will probably not run correctly on the other
`device. Since the operating system provides access to the various
`hardware resources and manages the file system, it is almost
`unfathomable that the operating systems of independent authors
`would be compatible, unless one specifically set out to copy the other.
`Thus, particular applications tend to grow up around a particular
`family of devices which share an operating system and, unfortunately,
`the application may not be available for non-compatible devices.
`
`EX 1001, 1:45-65. Emphasis added.
`
`However, the '748 patent overcomes the problem of supporting data
`
`collection on multiple different handheld devices that have different hardware
`
`configurations in two ways.
`
`5
`
`
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`CASE IPR2019-00610
`U.S. PATENT 9,454,748
`
`First, the data collection questionnaire is tokenizing before it is transmitted
`
`to the handheld device. That is, the instant system assigns device independent
`
`"tokens" to the elements of a questionnaire. See EX1001 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.") (emphasis added); See
`
`also, EX1001 at 8:40-43 (describing how tokens are "assigned" to questions).
`
`Second, an operating instruction system ("OIS") is provided on each
`
`supported device. The OIS is separate from the native operating system and
`
`overlays it. This is the component allows the questionnaire and its tokens to be
`
`device independent and run unchanged on each supported 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.
`
`EX1001 at 7: 47-58. In other words, this patent contemplates that there will be an
`
`application layer that overlays the operating system on each different type of
`
`remote device so that the same questionnaire can be executed without change on
`
`each such device. In that sense, each questionnaire prepared according to the
`
`teachings of the '748 patent is then device independent.
`
`6
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`CASE IPR2019-00610
`U.S. PATENT 9,454,748
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`At least some of the tokens of each questionnaire must be executable. That
`
`is, they must correspond, for example, to a "logical, mathematical, or branching
`
`operation". Id., 8: 56-64:
`
`Each token preferably corresponds to a logical, mathematical, or
`branching operation and is preferably selected and made a part of the
`questionnaire through a graphical user interface. By this mechanism, a
`user is able to create a series of questions, the precise nature of which
`is dependent on the user's responses. For example, the questionnaire
`designer might desire to create a foriii that asks the user different
`questions; depending on whether the user was male or female.
`
`The '748 patent also discloses an embodiment where the handheld device is
`
`able to determine its current location. One embodiment utilizes automatic entry of
`
`the GPS coordinates into the questionnaire in response to a question that requests
`
`location information that is part of the transmitted questionnaire. This variation is
`
`discussed, for example, in EX1001 at 10:55-58 and 5:42-48.
`
`V. Patent Owner's Response to Asserted Grounds of Invalidity
`
`A. Ground 1: Claims 1 and 19-22 are challenged as obvious over Barbosa
`with the knowledge of a POSITA.
`
`1. Discussion of Barbosa
`
`Barbosa's "template" is not a tokenized questionnaire as that term is used in
`
`the instant claims. Barbosa's "template" is variously described in that reference as,
`
`e.g., "task/punch lists" (EX 1002, 7:28-29), a listing of "tasks" that is provided to a
`
`7
`
`
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`CASE IPR2019-00610
`U.S. PATENT 9,454,748
`
`worker (Id., 10: 38-49), a listing of "filed test procedures" (Id., 11: 18-20), a listing
`
`of instructions for assessors (Id., 12:8-14). It is not a tokenized questionnaire with
`
`device independent tokens, at least some of which must be executable. EX 2006,
`
`¶¶58-64.
`
`Nowhere in Barbosa is there any teaching or even a suggestion that that his
`
`template / list contains anything more than text, i.e., it does not contain any
`
`executable tokens. Further, any attempt on the part of Petitioner to ascribe that
`
`property to Barbosa's disclosure can only be motivated by hindsight.
`
`For example, Petitioners argue on pages 21-22 of the Petition (emphasis
`
`added) that Barbosa discloses a "tokenized questionnaire" as follows:
`
`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.
`
`Petitioners' hypothetical, (e.g., EX 1005, at ¶126 and Petition p. 21,
`
`emphasis added) i.e., that Barbosa's template would have included "an index, an
`
`instruction, or a command" if it had been written in Java is pure conjecture, is
`
`unsupported by Barbosa's disclosure. There is no indication anywhere in Barbosa
`
`8
`
`
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`CASE IPR2019-00610
`U.S. PATENT 9,454,748
`
`that the template is written in an "object oriented programming language". EX
`
`2006, ¶62.
`
`The passage from Barbosa relied upon is problematic for a number of
`
`reasons. First, as the full passage makes clear Barbosa is referring to his system in
`
`its entirety and not just a handheld computing device. Russ Declaration EX 2006,
`
`¶¶68-71. The Barbosa passage at issue teaches:
`
`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.
`
`EX 1002, at 12: 45-54, emphasis added.
`
`Barbosa's full system includes, among others, server-side software to
`
`transmit and receive his "template" to/from the user, software to synchronize the
`
`handheld when the template is updated, software running on the handheld to help
`
`the user navigate to the worksite, etc. EX 2006. ¶64.
`
`More importantly, the repeated use of the term "computer" in the full
`
`citation as opposed to "handheld computer" means that Barbosa is not writing
`
`about handheld computing devices, otherwise he would have used terms like
`
`9
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`"handheld computer", "handheld device", etc. See, EX 1002, at 1: 57-67 and EX
`
`2006, at ¶¶65-66.
`
`The inclusion of languages such as Smalltalk and C++ languages in the full
`
`quotation is another clear indication that this reference was not referring to a
`
`template running on a handheld computer. Smalltalk and C++ were computer
`
`languages that were run on desktops in 20002, and the Petitioner has provided no
`
`evidence that either one was ever ported to cell phones of that era. Id., ¶¶81-82.
`
`The issue associated with Java running on a handheld computer is discussed
`
`at length below.
`
`There is no indication that the template described in Barbosa includes device
`
`independent tokens at least some of which are executable, nor is there any teaching
`
`or suggestion that the 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. Under Barbosa's
`
`approach, even the most trivial change in the questionnaire logic will require the
`
`program that displays the contents of the template to be recompiled and
`
`retransmitted to each device. Id. at ¶69.
`
`2 Barbosa claims an earliest priority date of September 18, 2000. The year 2000
`date is referenced only for purposes of establishing what the state-of-the-art was
`when the paragraph relied upon by Petitioner was written and for purposes of
`establishing Barbosa's intended meaning at that time.
`10
`
`
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`CASE IPR2019-00610
`U.S. PATENT 9,454,748
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`Patentee's approach allows changes to the text and logic of a questionnaire
`
`to be made without recompiling and redistributing the questionnaire to each of the
`
`different platforms on which it is to be displayed since "each token preferably
`
`corresponds to a logical, mathematical, or branching operation". EX. 1001, Col. 8,
`
`lines 56-64.
`
`Further, nothing in Barbosa suggests that the template might comprise
`
`device independent tokens, some of which are executable as is required as those
`
`terms have been construed herein.
`
`a. A Java program running on a handheld computer at the
`time of Barbosa could not be both device independent and
`acquire information from a GPS device
`
`Petitioners have urged that Barbosa could have used Java to create a device
`
`independent "template" that runs on a handheld computer and acquires GPS
`
`information and that teaches Patent Owner's "tokenized questionnaire". For
`
`example, "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 ¶ 132, emphasis added.
`
`Therefore, Barbosa discloses a tokenized questionnaire." Petition at p. 21,
`
`emphasis added. Accord: "Accordingly, Barbosa's questionnaire is "tokenized"
`
`11
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`CASE IPR2019-00610
`U.S. PATENT 9,454,748
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`when applying the proper construction of the teiiii "token", as explained in
`
`VI.B.ii." EX1005 at ¶127, emphasis in original.
`
`To the extent that this key assumption can be shown to be unfounded, any
`
`assertion of invalidity based on Barbosa must fail.
`
`The version of Java that was available for wireless devices at the time of
`
`Barbosa was substantially limited as compared with the full version. The book
`
`"Programming Wireless Devices with the JavaTM 2 Platform, Micro Edition",
`
`excerpts from which have been provided in EX 2002, was published by Sun
`
`Microsystems in 2001. It is an authoritative reference on the capabilities of Java as
`
`it existed on wireless devices in the year that it was published. EX 2006, ¶31.3
`
`"J2ME" will be used hereinafter to refer to the Java as it existed on Wireless
`
`devices in accordance with the standard set out in the text of EX 2002. EX 2006 at
`
`¶43.
`
`In order to encourage wide acceptance of Java for wireless devices, it was
`
`designed to accommodate the "lowest common denominator" of such devices. EX
`
`2006, ¶32. Of course, the lowest common denominator among such portable
`
`devices would not include a GPS receiver as a standard feature. Id. at (1132-33.
`
`In the full version of Java, in order to directly access a hardware feature such
`
`as a GPS receiver, a native routine would need to be executed. The Java Native
`
`3 Dr. Russ's full discussion of this reference and its importance may be found in his
`expert report, EX 2006, at 1131-51.
`
`12
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`CASE IPR2019-00610
`U.S. PATENT 9,454,748
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`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.
`
`Id. at ¶46.
`
`However, it is well known that invoking a native function — even in the full
`
`version of standard Java as it existed in 2000 — would preclude 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.
`
`EX 2001. p. 6, emphasis added. Note that this reference is speaking of the full
`
`implementation of Java as it existed on desktops, not the more limited version as it
`
`existed at the same time on wireless devices.
`
`However, J2ME did not support the Java Native Interface or user-defined
`
`class loaders. Thus, the primary mechanism by which a developer could access
`
`native functionality on a computer was not available in J2ME. EX 2006 at ¶46.
`
`More particularly, the mechanism by which a developer could acquire information
`
`13
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`CASE IPR2019-00610
`U.S. PATENT 9,454,748
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`from a GPS receiver from within a standard J2ME program was missing. Further,
`
`the Java Native Interface, even if it could be relied upon, would result in a device
`
`dependent Java program. EX 2006, ¶48-49.
`
`Thus, there was no standard method in J2ME that would allow location
`
`information from a GPS receiver to be accessed from within a Java program
`
`executing on a wireless device. Petitioners' reliance on Barbosa to teach a
`
`tokenized questionnaire that is comprised of a plurality of device independent
`
`tokens and that can be executed without change on multiple different devices fails.
`
`At least for this reason, Barbosa does not teach a tokenized questionnaire as
`
`maintained by Petitioners.
`
`b. When Barbosa speaks of Java "applets" he can only be
`speaking of Java as it exists on desktops since applets were
`not supported in Java 2 Micro Edition (J2ME)
`
`The following quote from Barbosa is further relied upon by Petitioners'
`
`expert to establish that Barbosa teaches a tokenized questionnaire:
`
`The template may operate in combination With programs resident in the
`handheld computer or may be accompanied by a computer program
`transmitted from the sever (e.g., in the faun of a JAVA applet).
`
`EX 1002 at 12:14-18. Petitioners' expert opines with respect to this quote: "As I
`
`explained above in VH.A.i.C, Barbosa's program is a tokenized questionnaire.
`
`Barbosa further discloses that this program comprises a plurality of device-
`
`independent tokens." EX 1005 at ¶131.
`
`14
`
`
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`CASE IPR2019-00610
`U.S. PATENT 9,454,748
`However, Petitioners' expert once again fails to appreciate the limited nature
`
`of J2ME as J2ME did not provide support for applets. Thus, Barbosa's statement
`
`above could only be referring to the full version of Java as it existed on desktop
`
`computers.
`
`In support, Patent Owner's expert refers to EX 2002:
`
`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 Infoimation 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.
`
`EX 2006 at ¶50, citing EX 2002 at p. 43.
`
`In the passage from Barbosa reproduced above, the reference to applet could
`
`only refer to Java as it exists on desktops since that functionality did not exist in
`
`standard Java for handheld computers, i.e., J2ME.
`
`Thus, Petitioners' claims that Barbosa teaches a tokenized questionnaire that
`
`includes a plurality of device independent tokens executable on a handheld
`
`computer that obtains infoiiiiation from a GPS receiver is once again demonstrably
`
`flawed.
`
`c. Petitioners never provide a source code example to
`support their contention that Java for wireless devices could
`
`15
`
`
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`CASE IPR2019-00610
`U.S. PATENT 9,454,748
`
`acquire GPS location information in a device independent
`manner.
`
`Finally, as the Board has noted (Decision, Paper 14 at p. 23) Petitioners'
`
`expert has never provided a source code or other programming examples of how
`
`Java as it existed on wireless devices at the time of the instant invention (J2ME) or
`
`at the time of Barbosa could be used to obtain information from a GPS receiver in
`
`a device independent manner. That is simply because it could not have been done
`
`in a device independent manner on a handheld using Java at the time of patent
`
`owner's invention.
`
`The burden should be on the Petitioners to demonstrate a specific device
`
`independent methodology using J2ME as it existed at the time of the instant
`
`invention that information from a GPS receiver could be acquired from a wireless
`
`device.
`
`If Petitioners cannot do that, their arguments for invalidity must fail.
`
`2. Claim 19
`
`Claim 19 cannot be shown to be obvious in view of Barbosa alone at least
`
`because Barbosa does not disclose a tokenized questionnaire as that term has been
`
`construed in connection with the instant proceeding.
`
`16
`
`
`
`CASE IPR2019-00610
`U.S. PATENT 9,454,748
`
`As is shown above in V.A.1, Barbosa completely lacks any support for a
`
`finding of a tokenized questionnaire comprised of a plurality of device independent
`
`tokens, at least some of which are executable as is required by claim 19(b):
`
`(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;
`Further, Barbosa does not teach such a device independent questionnaire
`
`where the GPS is used to automatically obtain location information in response to
`
`at least one question in the questionnaire that requests location information as is
`
`required by claims step 19(d)(d3) at least because it does not teach such a
`
`tokenized questionnaire that is executed (step 19(d)(dl)):
`
`(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;
`In view of the foregoing, Barbosa does not teach at least the limitations of
`
`claim steps 19(b), 19(d)(dl), and 19(d)(d3).
`
`17
`
`
`
`Thus, for at least the reasons set out above, Barbosa does not render claim
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`CASE IPR2019-00610
`U.S. PATENT 9,454,748
`
`19 obvious, and it should be confittned as patentable.
`
`3. Claim 20
`
`Claim 20 depends from claim 19 and a dependent claim that depends from a
`
`claim believed to be allowable is also believed to be allowable in view of Barbosa.
`
`Thus, Petitioners have failed to demonstrate that claim 20 is unpatentable
`
`and it should be confirmed.
`
`4. Claim 21
`
`Claim 21 is not obvious in view of Barbosa alone for at least the reasons set
`
`out in connection with claim 19. That is, Barbosa does not disclose a tokenized
`
`questionnaire as that teiiii has been construed in connection with the instant
`
`proceeding.
`
`As is discussed above in V.A.1, Barbosa lacks any support for a finding of a
`
`tokenized questionnaire comprised of a plurality of device independent tokens, at
`
`least some of which are executable as is required by claim 21(a)(2), which are
`
`received within a handheld computing device:
`
`(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;
`
`18
`
`
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`CASE IPR2019-00610
`U.S. PATENT 9,454,748
`
`Further, Barbosa does not teach such a device independent questionnaire
`
`where the GPS is used to automatically obtain location infortnation in response to
`
`at least one question in the questionnaire that requests location information as is
`
`required by claims step 21(a)(4)(ii) at least because it does not teach such a
`
`tokenized questionnaire that is executed and because it does not execute at least a
`
`portion of the tokens in the questionnaire as required by 21(a)(4)(i):
`
`(i)
`
`executing at least a portion of said plurality of
`tokens comprising said questionnaire on said
`
`handheld computing device,
`automatically entering the GPS coordinates into
`
`(ii)
`
`said questionnaire:
`Thus, Barbosa does not teach at least the limitations of claim steps 21(a)(2),
`
`21(a)(4)(i) and 21(a)(4)(ii).
`
`Thus, for at least the reasons set out above, Barbosa does not render claim
`
`21 obvious, and it should be confimied as patentable.
`
`5. Claim 22
`
`Claim 22 depends from claim independent 21 and a dependent claim that
`
`depends from a claim believed to be allowable. In this particular case, claim 21 is
`
`believed to be allowable over Barbosa so claim 22 should similarly be allowable.
`
`Thus, for at least the reasons set out above Petitioners have failed to
`
`demonstrate that claim 22 is unpatentable and it should be confirmed.
`
`19
`
`
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`CASE IPR2019-00610
`U.S. PATENT 9,454,748
`
`6. Claim 1
`
`Claim 1 is not obvious in view of Barbosa alone for at least the reasons set
`
`out in connection with claim 19 supra. That is, Barbosa does not disclose a
`
`tokenized questionnaire as that term has been construed in connection with the
`
`instant proceeding. Further, Barbosa does not disclose a tokenized questionnaire
`
`wherein a plurality of its tokens are executable.
`
`As is discussed above in V.A.1, Petitioner argues that Barbosa provides
`
`support for a tokenized questionnaire executing on a handheld device. There is no
`
`showing in Barbosa, first, for a finding of a tokenized questionnaire comprised of a
`
`plurality of device indifferent tokens as is required by claim 1(c) and, second,
`
`where a plurality of the questionnaire tokens are executable by the remote
`
`computing device 1(e) after it is received and GPS coordinates are automatically
`
`entered into the tokenized questionnaire as required by the limitation of claim 1(f):
`
`(c) tokenizing said question
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