UNITED STATES PATENT AND TRADEMARK OFFICE
`
`————————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`————————
`
`AMERICAN MULTI-CINEMA, INC.; AMC ENTERTAINMENT HOLDINGS,
`INC.; BOSTON MARKET CORPORATION; MOBO SYSTEMS, INC.;
`MCDONALD’S CORPORATION; MCDONALD’S USA; PANDA
`RESTAURANT GROUP, INC.; PANDA EXPRESS INC.; PAPA JOHN’S
`INTERNATIONAL, INC.; STAR PAPA LP; and PAPA JOHN’S USA, INC.
`Petitioner
`
`v.
`
`FALL LINE PATENTS, LLC
`Patent Owner.
`————————
`
`Case IPR2019-00610
`Patent 9,454,748 B2
`
`————————
`
`
`PATENT OWNER’S OPENING BRIEF ON REMAND
`FROM THE COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`
`
`
`
`
`
`————————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`————————
`
`AMERICAN MULTI-CINEMA, INC.; AMC ENTERTAINMENT HOLDINGS,
`INC.; BOSTON MARKET CORPORATION; MOBO SYSTEMS, INC.;
`MCDONALD’S CORPORATION; MCDONALD’S USA; PANDA
`RESTAURANT GROUP, INC.; PANDA EXPRESS INC.; PAPA JOHN’S
`INTERNATIONAL, INC.; STAR PAPA LP; and PAPA JOHN’S USA, INC.
`Petitioner
`
`v.
`
`FALL LINE PATENTS, LLC
`Patent Owner.
`————————
`
`Case IPR2019-00610
`Patent 9,454,748 B2
`
`————————
`
`
`PATENT OWNER’S OPENING BRIEF ON REMAND
`FROM THE COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`
`
`
`
`
`
`
`
`The Federal Circuit remanded on whether Petitioner met its burden of
`
`showing that Barbosa actually discloses the automatic transfer of the executable
`
`questionnaire as required by step (b) of claim 7. On that issue, the Board should
`
`again rule that Petitioner failed to meet its burden. Alternatively, the Board should
`
`rule that Petitioner failed to meet its burden for step (f) of claim 7.
`
`1.
`
`The Board’s Final Written Decision
`
`
`
`Before the Board, Petitioner argued that the “updating of inventory tracking
`
`and ordering information” taught by Barbosa was a transfer of the recited
`
`questionnaire. See Paper 32 at 50 [FWD].
`
`
`
`The Board rejected that argument on the merits for two reasons. First,
`
`Petitioner failed to explain why this updating amounted to a transfer of the recited
`
`questionnaire. Id. at 50 (“Mr. Roman, however, does not persuasively explain why
`
`the described inventory tracking and ordering information constitutes a transfer of
`
`the recited questionnaire.”); at 51 (“Nor does Mr. Roman provide any other
`
`evidence to support a finding that this updated template is the recited
`
`questionnaire.”). Second, Petitioner failed to explain why this updating—which
`
`could be provided merely as text—amounted to an executable questionnaire. Id. at
`
`50 (“Mr. Roman does not explain how the mere transfer of questions, which could
`
`be provided merely as text, discloses the transfer of an executable questionnaire.”);
`
`
`
`1
`
`
`
`at 51 (“Mr. Roman provides no evidence that this updated template is executable,
`
`rather than merely text.”).
`
`
`
`Moreover, the Board never found that Petitioner had shown that Barbosa
`
`discloses automatically transferring the updates. The Board understood
`
`Petitioner’s (reply) argument to be that it would have been obvious in view of
`
`Barbosa’s teachings to make the transfer automatic. See id. at 50-51. The Board
`
`merely accepted that position for purposes of argument when it ruled against
`
`Petitioner on other grounds. See id. (“Additionally, according to Mr. Roman, it
`
`would have been obvious to transfer the updated inventor questions to the
`
`handheld device automatically . . . . But even if we were to afford weight to that
`
`testimony, it would merely establish that questions were automatically transferred
`
`to the handheld, not that an executable questionnaire was.”). The Board never
`
`ruled that Barbosa made obvious—much less actually disclosed—automatically
`
`transferring the updates.
`
`2.
`
`The Federal Circuit’s Remand
`
`
`
`The sole ruling of the Board on which the Federal Circuit remanded was
`
`whether Petitioner had shown that Barbosa actually discloses the automatic
`
`transfer requirement of step (b). See AMC Multi-Cinema, Inc. v. Fall Line Patents,
`
`
`
`2
`
`
`
`LLC, No. 2021-1051, 2021 WL 4470062, *8 (Fed. Cir. 2021).1 The Federal
`
`Circuit ruled that Petitioner had (timely) argued to the Board that Barbosa actually
`
`disclosed automatically transferring the question updates by arguing that “the
`
`synchronization necessary in a wireless context would be understood as
`
`automatic.” Id. at *17. Importantly, the Federal Circuit did not rule on the merits
`
`of that argument. The Federal Circuit also ruled that the Board failed to adequately
`
`explain why the passages from Barbosa relied on by Petitioner did not establish
`
`that the updates constituted an “executable” questionnaire that was automatically
`
`transferred. See id. at *20. Id. Again importantly, the Federal Circuit did not rule
`
`that Petitioner’s evidence supported its argument. Based on these rulings, the
`
`Federal Circuit remanded to the Board for further analysis.
`
`
`
`
`
`
`1 The Federal Circuit affirmed the Board’s ruling that Petitioner’s argument
`
`that the automatic transfer requirement of step (b) was an obvious modification of
`
`Barbosa was untimely. See AMC Multi-Cinema, Inc. v. Fall Line Patents, LLC,
`
`No. 2021-1051, 2021 WL 4470062, *7, 9 (Fed. Cir. 2021). It also affirmed the
`
`Board’s ruling that Petitioner failed to establish unpatentability based on Hancock-
`
`Falls (Ground 7). See id. And it agreed that Petitioner failed to point to anything
`
`in Falls that teaches the automatic transfer requirement of step (b). See id.
`
`
`
`3
`
`
`
`3.
`
`Claim Construction
`
`
`
`Per the order of the Board, the parties took up the construction of
`
`“executable” and agreed as follows:
`
`The parties agree that Java and markup languages (XML,
`
`HTML, JSON, etc.) are “executable” and that the
`
`Microsoft Dictionary definition cited by the Board (“of,
`
`pertaining to, or being a program file that can be run”) is
`
`acceptable with that clarification.
`
`Paper No. 36 [1/10/22 Joint Statement].
`
`4.
`
`The Board Should Again Rule That Petitioner Did Not Meet Its
`Burden For Step (b)
`
`
`There are three reasons why the Board should again rule that Petitioner
`
`
`
`failed to meet its burden for step (b) of claim 7.
`
`
`
`First, as the Board previously concluded, Petitioner failed to establish that
`
`the updates on which it relies qualify as the questionnaire recited by claim 7. See
`
`Paper 32 at 50, 51 [FWD]. In addition to the requirements of step (b), claim 7
`
`imposes a host of other requirements that must be met by the alleged questionnaire.
`
`Petitioner did not even attempt to show that the updates meet the other
`
`requirements of the claim.
`
`
`
`Second, as the Board previously concluded, Petitioner failed to establish that
`
`the updates on which it relies qualify as being an “executable” questionnaire. The
`
`
`
`4
`
`
`
`Board expressly ruled—and Petitioner did not challenge on appeal—that Petitioner
`
`failed to show that the updates were anything more than “merely text.” Paper 32 at
`
`50, 51 [FWD]. Petitioners may now try to argue that Barbosa discloses that the
`
`updates may be Java applets, but that is not an argument that petitioners previously
`
`made. And, in any event, that argument would be inconsistent with Barbosa’s
`
`express teaching that the updates are separate from the Java applets. Ex. 1002 at
`
`12:11-18 [Barbosa] (describing the update template and the Java applet as two
`
`different things). It would also be inconsistent with Petitioner’s express admission
`
`that the updates could be “just data.” Paper 25 at 32:20-33:16 [4/28/29 Hearing
`
`Transcript] (“JUDGE KENNEY: . . . This is not talking about automatically
`
`transferring a questionnaire, right? This is talking about automatically transferring
`
`data? MR. BONILLA: That’s correct, automatically transferring data.”); see also
`
`Appx0531-0535 (transcript lines 36:12-40:18) (ultimately conceding for the
`
`portions of Barbosa relied on by Petitioner that “it’s possible it’s just data”). Mere
`
`text and mere data do not meet the parties’ agreed construction of “executable.”
`
`So petitioners have still failed to show that the updates to which it points are
`
`executable questionnaires.
`
`
`
`Third, while the Federal Circuit ruled that Petitioner had timely argued to the
`
`Board that the updates are automatically transferred, the Board need not—and
`
`should not—accept that argument. Petitioner convinced the Federal Circuit that it
`
`
`
`5
`
`
`
`had made that argument to the Board by arguing that “the synchronization
`
`necessary in a wireless context would be understood as automatic.” Now that the
`
`Federal Circuit has accepted Petitioner’s position that it had made this argument
`
`(in its original papers), the Board is required to take it up. But the Board should
`
`reject it on the merits because Petitioner has pointed to nothing in Barbosa that ties
`
`the synchronization process to the transfer of the updates. Moreover, Petitioner’s
`
`argument that such a synchronization process would necessarily be required (and
`
`that it would necessarily be automatic) is purely conclusory and is nowhere
`
`supported by any evidence from Petitioner. Indeed, as Patent Owner pointed out in
`
`sur-reply, Barbosa teaches that the synchronization processes are user initiated
`
`rather than being automatic. See Paper No. 20 at 13-17.
`
`5.
`
`Alternatively, The Board Should Rule That Petitioner Did Not
`Meet Its Burden For Step (f)
`
`
`The Federal Circuit instructed that, if the Board were to alter its ruling on
`
`
`
`step (b) in favor of Petitioner, then the Board must also take up the issue of
`
`whether Petitioner met its burden on step (f). See id. at *8 n.4. If the Board
`
`reaches this step on remand, then the Board should rule that Petitioner failed to
`
`show that Barbosa discloses this limitation for the reasons set forth in its institution
`
`decision. See Paper No. 14 at 44-47.
`
`
`
`
`
`
`
`6
`
`
`
`Dated: January 18, 2022
`
`Respectfully submitted,
`
`/s/ Matthew J. Antonelli
`Matthew J. Antonelli (Reg. No. 45,973)
`matt@ahtlawfirm.com
`Larry D. Thompson, Jr. (Reg. No. 43,952)
`larry@ahtlawfirm.com
`ANTONELLI, HARRINGTON & THOMPSON
`LLP
`4306 Yoakum Blvd.; Ste. 450
`Houston, TX 77006
`(713) 581-3000
`(713) 581-3020 (fax)
`
`Terry L. Watt (Reg. No. 42214)
`TLWatt@fellerssnider.com
`Customer No. 22267
`Fellers Snider
`100 N. Broadway Ave.; Ste. 1700
`Oklahoma City, OK 73102
`(405) 239-7280
`(405) 232-9659 (Fax)
`
`Attorneys for Patent Owner
`
`
`
`7
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned certifies, in accordance with 37 C.F.R. § 42.205, and
`
`pursuant to Petitioner’s consent to electronic service, service was made via email
`on January 18, 2022 to the Petitioner as follows:
`
`Robert H. Reckers
`SHOOK, HARDY & BACON L. L. P.
`rreckers@shb.com
`
`Ricardo Bonilla
`FISH & RICHARDSON P. C.
`rbonilla@fr.com
`
`Lowell D. Mead
`COOLEY LLP
`lmead@cooley.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Matthew J. Antonelli
`Matthew J. Antonelli
`Reg. No. 45,973
`
`
`
`
`8
`
`
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
