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 No. IPR2019-00610
`Patent No. 9,454,748
`____________________________
`
`PETITIONERS’ OPENING SUPPLEMENTAL BRIEF
`CONCERNING THE FEDERAL CIRCUIT’S REMAND
`
`
`
`
`
`____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________
`
`STARBUCKS CORPORATION, et al.
`
`Petitioners
`
`v.
`
`FALL LINE PATENTS, LLC
`
`Patent Owner.
`____________________________
`
`Case No. IPR2019-00610
`Patent No. 9,454,748
`____________________________
`
`PETITIONERS’ OPENING SUPPLEMENTAL BRIEF
`CONCERNING THE FEDERAL CIRCUIT’S REMAND
`
`
`
`
`
`Case No. IPR2019-00610
`U.S. Patent No. 9,454,748
`
`
`
`TABLE OF CONTENTS
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`I. BARBOSA DISCLOSES LIMITATION 7(b) .................................................... 1
`A. Barbosa discloses an executable questionnaire. ............................................ 2
`B. Barbosa discloses the automatic transfer of an executable questionnaire. ... 5
`II. BARBOSA DISCLOSES LIMITATION 7(f) ................................................. 7
`III. CONCLUSION .............................................................................................. 10
`
`
`
`
`i
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`
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`Pursuant to the Board’s Orders (Paper Nos. 34, 35), Petitioners submit this
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`Case No. IPR2019-00610
`U.S. Patent No. 9,454,748
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`
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`supplemental brief regarding issues identified by the Federal Circuit in AMC Multi-
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`Cinema, Inc. v. Fall Line Patents, LLC, No. 2021-1051 (Fed. Cir. Sept. 30, 2021)
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`[hereinafter, “AMC”]. In AMC, the Federal Circuit addressed the Board’s Final
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`Written Decision (Paper No. 32, hereinafter “FWD”) in this proceeding, in which
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`the Board found all challenged claims of U.S. Patent No. 9,454,748 to be
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`unpatentable as obvious, except for challenged independent Claim 7. Petitioners
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`appealed the FWD with respect to Claim 7 (Paper No. 33), while Patent Owner did
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`not appeal any aspect of the FWD. The Federal Circuit remanded the case with
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`respect to Claim 7, which is the only claim to be addressed on remand.
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`The Federal Circuit’s opinion and the Board’s Orders leave two questions to
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`be answered in this proceeding regarding the unpatentability of Claim 7. First, did
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`Petitioners establish though their Petition, Reply, and evidence in support, that
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`limitation 7(b) of Claim 7 is disclosed by Barbosa? Second, did Petitioners establish
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`in those same papers that limitation 7(f) of Claim 7 is disclosed by the combination
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`of Barbosa and Falls? Because the answer to each of these questions is “yes,”
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`Petitioners respectfully request that the Board find Claim 7 to be unpatentable.
`
`I.
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`BARBOSA DISCLOSES LIMITATION 7(B)
`Limitation 7(b)
`requires “automatically
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`transferring said designed
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`questionnaire to at least one loosely networked computer having a GPS integral
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`1
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`thereto.” In its FWD, the Board found Petitioners had not established the prior art
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`Case No. IPR2019-00610
`U.S. Patent No. 9,454,748
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`taught “automatically transferring [a] questionnaire” or that any transferred
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`questionnaire was “executable.” As discussed below, Barbosa discloses executable
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`questionnaires and that the transfer of such questionnaires is automatic.
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`A. Barbosa discloses an executable questionnaire.
`The question of whether and how to construe “executable” was not raised in
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`this proceeding prior to the oral argument before the Federal Circuit. No party
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`proposed construing any term relating to “executable,” and the Board did not address
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`the definition. On remand, however, the Board asked the parties to meet and confer
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`on a proposed construction, and the parties agreed “executable” should be construed
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`as “of, pertaining to, or being a program file that can be run.” Paper No. 36. The
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`parties further agreed that examples of “executable” programs are those written in
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`“Java or markup languages.” See id.
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`Barbosa discloses the use of “executable questionnaires” under the parties’
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`agreed-upon construction. Specifically, the Board recognized that “Barbosa
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`discloses that a user in the field may utilize handheld device 10 for assessment of a
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`field problem by executing an industry-specific program on the handheld device
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`related to the problem being addressed.” Paper No. 14 [hereinafter, “Institution
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`Decision”], 20 (citing Ex. 1002, 7:42-47) (emphasis added). The Board then
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`repeated that disclosure in the FWD. FWD, 18. And Barbosa explicitly discloses that
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`2
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`the “[c]omputer program code for carrying out operations of the present invention
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`can be written in an object oriented programming language such as Java, Smalltalk
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`or C++.” Ex. 1002, 12:45-47 (emphasis added). A person of ordinary skill in the art
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`would therefore have understood Barbosa to disclose using Java to program the
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`“industry-specific” program to be executed on the handheld device, and the parties
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`have agreed that programs written in Java are executable.
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`The Board recognized this disclosure in Barbosa when addressing other,
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`similar limitations in other challenged claims. For example, challenged independent
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`Claim 19 requires “receiving within said handheld computing device a transmission
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`of a tokenized questionnaire from said originating computer.” Barbosa discloses a
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`handheld computing device that receives, from an originating computer, “a set of
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`instructions in a code module” that “implement[]” the “invention” (Ex. 1002, 6:1-2)
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`or “templates (e.g., task/punch lists) and/or programs” (id., 7:27-28). The
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`downloaded code modules, templates, and/or programs represent a questionnaire.
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`Ex. 1005, ¶ 125. Specifically, Barbosa discloses that the “programs operated by the
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`microprocessor ask questions or provide guidance related to a particular field
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`problem.” Ex. 1002, 6:60-61; see also id., 7:47-48 (“The program would prompt the
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`user for input of data related to the problem.”), 9:54-56.
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`Patent Owner responded to Petitioners’ arguments by contending Barbosa did
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`not disclose a “tokenized questionnaire,” in part because Barbosa purportedly “only
`3
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`discloses text for its templates, not executable tokens.” FWD, 20. The Board
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`disagreed with this argument and instead agreed with Petitioners that Barbosa
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`discloses receiving a program from the server at the handheld device, that the
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`program is a tokenized questionnaire, and that those tokens are executed when the
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`user runs the program. See id., 21-22. Accordingly, the Board recognized Barbosa’s
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`disclosure of executable questionnaires in connection with Claim 19, but when it got
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`to Claim 7, it found, without explanation, that Barbosa did not disclose the transfer
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`of executable questionnaires. The Federal Circuit noted these discrepancies in its
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`Opinion. AMC, *19-20 (noting Petitioners’ arguments regarding the disclosure of
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`tokenized questionnaires and the implication of executability).
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`A proper reading of Barbosa makes clear that what is transferred from the
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`server to the handheld device is an executable program. Barbosa discloses coding its
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`invention with executable programming languages, like Java. In fact, Barbosa also
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`explicitly discloses the transfer of a Java applet, an indisputably executable program,
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`from the server to the handheld device. See Ex. 1002, 12:14-17 (“The template may
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`operate in combination with programs resident in the handheld computer or may be
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`accompanied by a computer program transmitted from the server (e.g., in the form
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`of a JAVA applet).”). Petitioners made this argument in their Reply, though, as the
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`Federal Circuit noted, the Board did not address the argument in its FWD. AMC,
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`*20. The record evidence supports a finding that Barbosa discloses an executable
`4
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`questionnaire.
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`Case No. IPR2019-00610
`U.S. Patent No. 9,454,748
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`B.
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`Barbosa discloses the automatic transfer of an executable
`questionnaire.
`The record evidence also supports disclosure by Barbosa of the automatic
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`transfer of an executable questionnaire. Specifically, as the Federal Circuit
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`recognized, Petitioners explained in the Petition that the need for synchronization
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`between the handheld device and the server disclosed in Barbosa would have led a
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`person of ordinary skill in the art to understand Barbosa to disclose automatic
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`transfers, not just manual transfers, of data between the two devices.
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`Petitioners discussed Barbosa’s disclosure of synchronization in the Petition.
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`See Pet., 43-44. Barbosa explains, “Field assessment data synchronization and/or
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`delivery is enabled using wireless capabilities resident in handheld personal
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`computing device.” Ex. 1002, Abstract. Petitioners therefore argued, “A POSITA
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`would understand that during synchronization on a wireless network, data is
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`automatically transferred when a connection is available, and temporarily stored for
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`later transmission when a connection is unavailable, as this was a well-known
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`characteristic of network communication protocols that relied on synchronization
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`for transmission and delivery over a wireless network at the time.” Pet., 43 (citing
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`Ex. 1005 ¶ 177). The Federal Circuit recognized this passage as explaining
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`Barbosa’s disclosure of automatic transfers because of the need for synchronization
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`5
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`and how networks apply synchronization when networks are not entirely reliable,
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`U.S. Patent No. 9,454,748
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`which would have been the case around the time of Barbosa’s disclosure. See AMC,
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`*17.
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`In their Reply, Petitioners continued to rely on Barbosa’s disclosure of
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`synchronization to explain why it discloses automatic transfers of executable
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`questionnaires. Paper No. 19 [hereinafter, “Reply”], 13-15. Petitioners explained,
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`“Barbosa discloses an interactive environment that allows two-way communications
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`between a remote device and a server, including automatic synchronization and
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`information transfers.” Id., 13 (citing Ex. 1005, ¶¶ 176-177; Ex. 1018, ¶ 24.). For
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`example, Barbosa discloses automatically distributing executable templates for
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`entering inventory tracking/ordering information into a remote device, which would
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`allow a “technician [to] coordinate inventory needs with the company automatically
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`using this method . . . .” Ex. 1002, 11:29-30 (emphasis added). And Petitioners
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`explained why automatic transfers of inventory-tracking questionnaires to be
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`executed on remote devices would be necessary: to ensure “that no more inventory
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`than is needed is taken to the field.” Reply, 13-14 (quoting Ex. 1002, 11:29-40; citing
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`Ex. 1018, ¶ 25).
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`The same principle underlies the other examples of automatic/synchronized
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`transfers of executable questionnaires in Barbosa. In their Reply, Petitioners referred
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`to Barbosa’s disclosure of synchronizing a worker’s handheld device “with a server
`6
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`to receive an updated template containing tasks for the worker at the beginning of
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`every work shift.” Reply, 14 (quoting Ex. 1002, 10:32-42). Petitioners noted that
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`“[a] POSITA would appreciate that the disclosed synchronization process for
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`transferring the updated template is an automatic process; such automatic
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`communications ensure workers are provided appropriate ‘daily input’ so tasks ‘are
`
`not repeated (wasting time) and that unfinished task[]s are addressed . . . .” Id.
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`(quoting Ex. 1002, 10:59-67; citing Ex. 1018, ¶ 26).
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`These examples and others cited by Petitioners in their Reply supported
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`Barbosa’s disclosure of automated transfers of executable questionnaires “given
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`Barbosa’s express teaching regarding the importance of coordinating among remote
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`users in the field.” Id., 15 (citing Ex. 1002, 11:55-62; Ex. 1018, ¶ 27). Accordingly,
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`Barbosa discloses limitation 7(b), and Claim 7 should be found unpatentable.
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`II. BARBOSA DISCLOSES LIMITATION 7(F)
`Limitation 7(f) requires “making available via the Internet any responses
`
`transferred to said central computer in step (e).” In its Institution Decision, the Board
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`found Petitioners did not sufficiently explain how the relied-upon portions of
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`Barbosa “disclose making responses transferred to the central computer in step (e)
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`available via the Internet” or “how the responses transferred to the central computer
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`are made available via the Internet.” Institution Decision, 44-45. The Board included
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`excerpts of the cited portions of Barbosa in the Institution Decision, and those
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`7
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`
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`excerpts are replete with references to the Internet, which would have allowed a
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`Case No. IPR2019-00610
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`POSITA to understand that the network over which Barbosa’s handheld and server
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`devices would communicate would be the Internet.
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`Petitioners explained this reasoning further in their Reply. First, Petitioners
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`noted, “Barbosa discloses an environment
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`in which remote com[p]uters
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`communicate with enterprise se[r]vers via the Internet.” Reply, 15-16 (citing and
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`quoting Ex. 1002, 7:12-22, 7:47-56, 12:55-58). These portions of Barbosa discuss
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`using the Internet to communicate between client and remote devices, making
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`network resources available over the Internet, and connecting remote computers via
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`Internet Service Providers. See id. Petitioners’ expert, Kendyl Roman, further opined
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`that “[u]sing the Internet for such communications between centralized servers and
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`remote devices was extremely common by Barbosa’s filing date.” Id., 16 (citing Ex.
`
`1018, ¶¶ 29-30). Accordingly, a POSITA would have known of the Internet and how
`
`it could be used to communicate and distribute resources to and from centralized
`
`servers and distributed handheld devices.
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`Furthermore, as discussed above for limitation 7(b), Barbosa’s disclosure
`
`emphasized the need to distribute responses among different users of the system to
`
`promote efficient data collection and coordination of efforts. See Reply, 16.
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`Distribution of resources, coordination of efforts, and synchronization of data among
`
`the various parts of the system all support the idea of using an ubiquitous, far-
`8
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`
`
`
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`reaching, and generally reliable network, like the Internet. Petitioners therefore
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`Case No. IPR2019-00610
`U.S. Patent No. 9,454,748
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`argued in their Reply that, “[t]hrough Barbosa’s disclosure of a web/Internet-based
`
`architecture, a POSITA would understand the disclosure of Barbosa encompasses a
`
`central computer using the Internet to make available responses received from one
`
`remote device in the form of updated and synchronized information provided to the
`
`other handheld remote devices.” Id. (citing Ex. 1018, ¶ 31).
`
`The Board’s Institution Decision did not appear to dispute that Barbosa
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`discloses the distribution of information over the Internet. Instead, the Board
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`asserted that Figure 6 “does not indicate that Barbosa makes responses sent to a
`
`central computer available over the Internet.” Institution Decision, 46. But Barbosa
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`discusses Figure 6 at columns 7 and 8 of its specification, and in pertinent part, it
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`discloses a user may use a hand held device to “access remote resources (e.g.,
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`information, data, assistance) via wireless communication systems 51 and networks
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`55. Information may be obtained from a server 58 located at the user’s enterprise, or
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`from other network 55 resources available to the user (e.g., Web pages
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`provided/obtained over the Internet).” Ex. 1002, 7:49-54 (emphasis added). The
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`“server 58” is also connected to the various resources available to the user’s
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`handheld device, including “network 55,” which can make resources available “over
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`the Internet.” See id.
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`Petitioners’ Reply further elaborated on Barbosa’s disclosure of making
`9
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`available (via the Internet) responses transferred to the central computer. Reply, at
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`Case No. IPR2019-00610
`U.S. Patent No. 9,454,748
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`16-17 (citing Ex. 1002, 10:36-55, 11:52-62, 12:8-18, 7:12-22, Ex. 1018, ¶¶ 29-31).
`
`For example, as discussed in the Reply, a worker uses a handheld device to input
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`responses to a template reporting the “status” of tasks, which are automatically
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`transferred to (“synchronized” at “end of the workday”) the central computer “as
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`described” in Barbosa (which includes transfer over the Internet), and such received
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`“status” (“[u]nfinished business recorded by” the responses) is then distributed to
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`other workers (i.e., made available) in a new template. Ex. 1002, 10:36-55. As a
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`second example, investigators respond to a “checklist” by “entering data” that is
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`transmitted to the server; the collected “data” (responses) are then processed for
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`“distribution to plural case workers” (i.e., made available). Id., 11:52-62. As noted
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`above, Barbosa describes transmitting over the Internet these communications to and
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`from the handheld devices (including templates and responses to templates).
`
`Therefore, the record supports a finding that Barbosa discloses limitation 7(f),
`
`and Claim 7 should be found unpatentable.
`
`III. CONCLUSION
`Petitioners respectfully request that the Board find Claim 7 unpatentable.
`
`
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`10
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`Dated: January 18, 2022
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`Case No. IPR2019-00610
`U.S. Patent No. 9,454,748
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`
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`Respectfully submitted,
`
`
`
`/Ricardo Bonilla/
`By
`Ricardo Bonilla (Reg. No. 65,190)
`rbonilla@fr.com;
`PTABInbound@fr.com Fish &
`Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`214-747-5070; 877-769-7945 (Fax)
`
`Robert H. Reckers (Reg. No. 54,633)
`rreckers@shb.com
`Shook, Hardy & Bacon L.L.P. 600
`Travis Street, Suite 3400
`Houston, Texas 77002-2926
`713-227-8008; 713-227-9508 (Fax)
`
`Lowell D. Mead (PHV forthcoming)
`lmead@cooley.com
`Cooley LLP
`3175 Hanover Street
`Palo Alto, CA 94304
`650-843-5734; 650-849-7400 (Fax)
`
`Counsel for Petitioners
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`11
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`Case No. IPR2019-00610
`U.S. Patent No. 9,454,748
`CERTIFICATE OF SERVICE
`
`I hereby certify, pursuant to 37 C.F.R. Section 42.6, that a complete copy of
`
`
`
`PETITIONERS’ OPENING SUPPLEMENTAL BRIEF CONCERNING
`
`THE FEDERAL CIRCUIT’S REMAND and related documents, are being
`
`served via electronic mail on the January 18, 2022, upon the Patent Owner’s
`
`attorneys of record in this proceeding as follows:
`
`
`
`
`
`Terry L. Watt
`tlwatt@fellerssnider.com
`FELLERS SNIDER, PC
`
`Matthew J. Antonelli
`matt@ahtlawfirm.com
`Larry D. Thompson, Jr.
`larry@ahtlawfirm.com
`ANTONELLI, HARRINGTON & THOMPSON LLP
`
`
`Dated: January 18, 2022
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`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Ricardo Bonilla/
`By
`Ricardo Bonilla (Reg. No. 65,190)
`rbonilla@fr.com;
`PTABInbound@fr.com Fish &
`Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`214-747-5070; 877-769-7945 (Fax)
`
`
`
`
`
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