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 RESPONSE TO PETITIONER’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 RESPONSE TO PETITIONER’S OPENING BRIEF
`ON REMAND FROM THE COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`
`PETITIONER FAILED TO IDENTIFY A QUESTIONNAIRE THAT
`IS “EXECUTABLE” AND “AUTOMATICALLY TRANSFERRED” ........ 1
`
`
`III. THE BOARD SHOULD REJECT PETITIONER’S ARGUMENTS
`ABOUT WHAT BARBOSA TEACHES ....................................................... 4
`
`I.
`
`II.
`
`
`
`A.
`
`
`B.
`
`The Board Should Reject Petitioner’s Argument That Barbosa
`Actually Discloses Synchronization That Is Automatic ....................... 4
`
`The Board Should Reject Petitioner’s Arguments Regarding
`Barbosa’s Update Templates ................................................................ 5
`
`
`IV. PETITIONER HAS NOT SHOWN THAT BARBOSA TEACHES
`STEP (f) OF CLAIM 7 ................................................................................... 7
`
`
`V.
`
`
`CONCLUSION ............................................................................................. 10
`
`
`
`
`
`i
`
`
`
`I.
`
`
`
`INTRODUCTION
`
`Even if the Board were to accept everything Petitioner asserts about what
`
`Barbosa teaches, Petitioner still loses: Petitioner has not identified a questionnaire
`
`disclosed by Barbosa as being both executable and automatically transferred as
`
`required by step (b) of claim 7. Petitioner also loses because its arguments about
`
`what Barbosa teaches regarding automatic transfers and executable questionnaires
`
`are conclusory and unsupported. Alternatively, Petitioner loses because its
`
`arguments regarding step (f) of claim 7 are both untimely and insufficient.
`
`II.
`
`
`
`
`PETITIONER FAILED TO IDENTIFY A QUESTIONNAIRE THAT
`IS “EXECUTABLE” AND “AUTOMATICALLY TRANSFERRED”
`
`Claim 7 requires a questionnaire that is both “executable” and
`
`“automatically transferred.” Petitioner has not asserted that any questionnaire from
`
`Barbosa meets both requirements. For the requirement that the questionnaire be
`
`“executable,” Petitioner identifies Barbosa’s “industry-specific program” and
`
`asserts that it is “executable” because Barbosa teaches that it can be programmed
`
`in Java. See Pet. Remand Brief at 2-3. But for the requirement that the executable
`
`questionnaire be automatically transferred, Petitioner ignores that it was the
`
`“industry-specific program” that it said was the executable questionnaire. Instead
`
`of attempting to show that Barbosa discloses that the industry-specific program is
`
`automatically transferred, Petitioner points to various portions of Barbosa as
`
`teaching the automatic transfer of other things. Indeed, in its section on “automatic
`
`
`
`1
`
`
`
`transfer,” Petitioner does not so much as allude to the industry-specific program
`
`that it relied on as being the “executable questionnaire.” See Pet. Remand Brief at
`
`5-7.
`
`
`
`Petitioner first relies on Barbosa’s disclosure of “field assessment data
`
`synchronization” as discussed in its original petition. Pet. Remand Brief at 5
`
`(citing Petition at 43-44). Petitioner argues that a person of skill “would
`
`understand” that this data synchronization would occur automatically. Id.; see also
`
`Ex. 1005 at ¶ 177 (opining only that Barbosa discloses synchronization of data)
`
`[Roman Decl]. But the synchronization of that data is not the same as the
`
`synchronization of the industry-specific program (or of any other executable
`
`questionnaire). So even if Petitioner had established that synchronization
`
`necessarily involves an automatic transfer (it has not—more on that below),
`
`Petitioner still would not have shown that Barbosa discloses an automatic transfer
`
`of the executable questionnaire.
`
`
`
`Petitioner next says that it argued in reply that “Barbosa discloses
`
`automatically distributing executable templates” for updated inventory and task
`
`tracking. Pet. Brief at 6 (citing Reply ISO Petition at 13-15) (emphasis added).
`
`But Petitioner’s reply never asserted that the templates were executable. See Reply
`
`ISO Petition at 13-15. So Petitioner cannot now argue that in its remand brief.
`
`Moreover, even if Petitioner could establish that these update templates are
`
`
`
`2
`
`
`
`executable (it cannot—more on that below), and even if Petitioner could show that
`
`Barbosa teaches automatically transferring them to the handheld device (it
`
`cannot—more on that below as well), Petitioner still would not have shown that
`
`Barbosa discloses that the “industry specific program” is automatically transferred.
`
`
`
`Finally, Petitioner points to its reply argument about “Barbosa’s express
`
`teaching regarding the importance of coordinating among remote users in the
`
`field.” Pet. Remand Brief at 7 (citing Reply ISO Petition at 15). Petitioner’s final
`
`argument in no way shows that Barbosa actually discloses automatically
`
`transferring anything, much less an “executable questionnaire”—and much, much
`
`less the industry-specific program on which Petitioner relied.
`
`
`
`The various teachings of Barbosa that Petitioner points to might have
`
`supported an argument that it would have been obvious to automatically transfer
`
`the industry specific program—which explains why Petitioner repeatedly couched
`
`them in language about what Barbosa “would have led” a person of skill to
`
`“understand” or to “appreciate” about the system disclosed by Barbosa. See Pet.
`
`Remand Brief at 5-7 (quoting various portions of Petitioner’s original papers). But
`
`they do not establish that Barbosa actually discloses automatically transferring the
`
`executable questionnaire, which is the sole issue on which the Federal Circuit
`
`remanded. Accordingly, the Board should again rule that Petitioner failed to meet
`
`its burden of establishing that claim 7 is unpatentable.
`
`
`
`3
`
`
`
`III. THE BOARD SHOULD REJECT PETITIONER’S ARGUMENTS
`ABOUT WHAT BARBOSA TEACHES
`
`Petitioner independently loses because its various arguments about what
`
`
`
`Barbosa teaches are conclusory and unsupported. They do not show that Barbosa
`
`actually discloses an executable questionnaire that is automatically transferred.
`
`A.
`
`The Board Should Reject Petitioner’s Argument That Barbosa
`Actually Discloses Synchronization That Is Automatic
`
`
`Even assuming that Barbosa actually discloses synchronization of an
`
`executable questionnaire, Petitioner would still lose because it has not shown that
`
`the “synchronization” disclosed by Barbosa involves an automatic transfer.
`
`As a threshold matter, the Board should reject any suggestion that the
`
`Federal Circuit already ruled on this issue in Petitioner’s favor. According to
`
`Petitioner, “[t]he Federal Circuit recognized” a passage of Barbosa “as explaining
`
`Barbosa’s disclosure of automatic transfers because of the need for
`
`synchronization and how networks apply synchronization when networks are not
`
`entirely reliable, which would have been the case around the time of Barbosa’s
`
`disclosure.” Remand Brief at 5-6 (emphasis added). That never happened. The
`
`Federal Circuit recognized only that Petitioner had made that assertion in its
`
`petition. For that reason, the Federal Circuit remanded to the Board for further
`
`consideration. But the Federal Circuit in no way recognized Petitioner’s assertion
`
`as being correct. See AMC Multi-Cinema, Inc. v. Fall Line Patents, LLC, No.
`
`
`
`4
`
`
`
`2021-1051, 2021 WL 4470062, *17 (Fed. Cir. 2021).
`
`Nor has Petitioner shown that its assertion is correct. Petitioner submitted
`
`no evidence that it would be impossible for Barbosa’s synchronization to be user
`
`initiated rather than automatic. So Barbosa’s disclosure of synchronization does
`
`not inherently disclose an automatic transfer. Nor has Petitioner pointed to
`
`anything in Barbosa that actually discloses synchronization occurring
`
`automatically. Petitioner has thus failed to meet is burden of showing that Barbosa
`
`actually discloses an automatic transfer when it teaches synchronization.
`
`Petitioner instead attempts to meet its burden by arguing what a person of
`
`skill “would understand,” what was “well-known” in the art, and what “need[s]”
`
`existed in the art that would motivate making synchronization automatic. See Pet.
`
`Remand Brief at 5-6; Ex. 1005 at ¶ 177 [Roman Decl.]. But those are all
`
`arguments that it would have been obvious to make Barbosa’s synchronization
`
`automatic, not that automatic synchronization is actually disclosed.
`
`B.
`
`The Board Should Reject Petitioner’s Arguments Regarding
`Barbosa’s Update Templates
`
`
`Petitioner also argues that certain templates are executable and that they are
`
`“automatically” transferred. The Board should reject that for three reasons.
`
`First, Petitioner has not even attempted to explain how the update templates
`
`are the questionnaire of claim 7. Claim 7 recites multiple requirements for the
`
`questionnaire: it must be designed on a first computer platform; it must be
`
`
`
`5
`
`
`
`customized for a particular location; it must have branching logic; it must have a
`
`question requesting location-identifying information; it must be executed on the
`
`handheld device to collect a response from the user; and it must be executed when
`
`GPS provides location-identifying information. Petitioner has no explanation how
`
`the update templates (as opposed to the industry specific program) satisfy these
`
`requirements. The Board should thus again rule that Petitioner failed to show that
`
`“the described updating of inventory tracking and ordering information constitutes
`
`a transfer of the recited questionnaire.” Paper 32 at 50 [FWD].
`
`Second, Petitioner asserts (for the first time in its opening brief on remand)
`
`that the update templates are “executable.” See Pet. Remand Brief at 6. That
`
`assertion is not only untimely, it is also unsupported. Petitioner says that the Board
`
`already agreed with it that the templates are tokenized, and thus are executable,
`
`when it considered claim 19. Id. at 3-4 (citing FWD at 21-22). That did not
`
`happen. The Board ruled that the industry-specific program was tokenized, not the
`
`update templates. See Paper 32 at 21-22 [FWD]. Petitioner also says that Barbosa
`
`discloses executable tokens because it “explicitly discloses the transfer of a Java
`
`applet, an indisputably executable program, from the server to the handheld
`
`device.” Pet. Remand Brief at 4. But Barbosa does not disclose an update
`
`template that is a Java applet. Rather, Barbosa explicitly discloses a Java applet as
`
`being separate from the update templates. Ex. 1002 at 12:14-17 (“The template . . .
`
`
`
`6
`
`
`
`may be accompanied by a computer program transmitted from the server (e.g., in
`
`the form of a JAVA applet).”) (emphasis added). (Nor has Petitioner even begun
`
`to try to show that the Java applet mentioned by Barbosa satisfies claim 7’s
`
`requirements for the executable questionnaire.)
`
`Third, Petitioner takes a single sentence from Barbosa that uses the word
`
`“automatically” and argues, based on it, that Barbosa discloses “automatically
`
`distributing” the update templates. Pet. Remand Brief at 6 (citing Ex. 1002 at
`
`11:29-30 [Barbosa]). But that sentence is taken out of context from a portion of
`
`Barbosa that discusses the overall method and characterizes it as providing an
`
`“automatic” way to “coordinate inventory needs.” Barbosa does not describe the
`
`specific step of transmitting a particular template as being “automatic.” Quite the
`
`contrary: it discusses what a technician does before he leaves for the field, and it
`
`expressly describes the synchronization process on which Petitioner relies as being
`
`initiated by the technician rather than being automatic. See Ex. 1002 at 11:29-40
`
`(“Field technicians may utilize . . . handheld devices to ensure the proper inventory
`
`will be provided prior to embarking on a daily service schedule. The assessor may
`
`start an inventory program 1101, identify a service schedule 1102, and synchronize
`
`the schedule 1103 with an inventory manager.”) (emphasis added).
`
`IV. PETITIONER HAS NOT SHOWN THAT BARBOSA TEACHES
`STEP (f) OF CLAIM 7
`
`
`
`If the Board were to alter its decision on step (b), then it should take up step
`
`
`
`7
`
`
`
`(f) and rule that Petitioner failed to meet its burden for it.
`
`Petitioner originally asserted (in conclusory fashion) that “Barbosa discloses
`
`making the responses available via the Internet,” referred back to a section of its
`
`petition that asserted that Barbosa “provides ‘[a]n interactive question and answer
`
`session,’” and cited several portions of Barbosa without explanation. Pet. at 45.
`
`Petitioner also cited the declaration of Mr. Roman, which merely repeated
`
`Petitioner’s argument. As the Board preliminarily ruled in its institution decision,
`
`Petitioner’s arguments, its citations, and Mr. Roman’s declaration were insufficient
`
`to show that Barbosa actually discloses making responses available via the
`
`Internet. Paper 14 at 44-47 [Decision Instituting IPR].
`
`On remand, Petitioner argues that the portions of Barbosa that it cited in its
`
`original petition “are replete with references to the Internet, which would have
`
`allowed a POSITA to understand that the network over which Barbosa’s handheld
`
`and server devices would communicate would be the Internet.” Pet. Remand Brief
`
`at 8 (emphasis added). That at best supports an argument that it would have been
`
`obvious in view of the teachings of Barbosa to make the responses available via
`
`the Internet—not that Barbosa actually discloses making them available over the
`
`Internet. After all, it is certainly possible for the responses to be made available
`
`over a LAN rather than the Internet, and nothing in Barbosa actually discloses
`
`using the Internet to make the responses available.
`
`
`
`8
`
`
`
`But just as for step (b), Petitioner’s original theory for step (f) was that
`
`Barbosa actually discloses the step, not that the step would be obvious in view of
`
`the teachings of Barbosa. So just as it was too late for Petitioner to switch from its
`
`actual-disclosure theory to a makes-obvious theory for step (b), it is too late for
`
`Petitioner to make that swap for step (f). See AMC Multi-Cinema, Inc. v. Fall Line
`
`Patents, LLC, No. 2021-1051, 2021 WL 4470062, *7 (Fed. Cir. 2021) (affirming
`
`the Board’s decision that “the reply argument that the requirement was found in an
`
`obvious modification. . . was a change of legal argument, not fairly understood to
`
`have been adequately presented in the relevant section of the petition itself”).
`
`Petitioner also points to additional arguments that it says it made in its reply
`
`in support of its petition. See Pet. Remand Brief at 8-10. But Petitioner did not
`
`even attempt to ground its reply in the arguments and evidence that it had
`
`advanced in its original petition. Petitioner’s reply arguments are thus untimely.
`
`They are also insufficient. Nothing Petitioner pointed to actually discloses
`
`making the responses available over the Internet. Rather, all Petitioner has are
`
`arguments that making responses available over the Internet would have been
`
`obvious in view of Barbosa’s teachings. See, e.g., Pet. Remand Brief at 8 (“[u]sing
`
`the Internet for such communications . . . was extremely common by Barbosa’s
`
`filing date”); id. (“a POSITA would have known of the Internet and how it could
`
`be used to communicate and distribute resources”); id. at 8-9 (“Barbosa’s
`
`
`
`9
`
`
`
`disclosure emphasized the need to distribute responses . . . to promote efficient
`
`data collection and coordination” which “support[s] the idea of using an
`
`ubiquitous, far-reaching and generally reliable network, like the Internet.”); id. at
`
`9 (“through the disclosure of a web/Internet-based architecture, a POSITA would
`
`understand the disclosure of Barbosa encompasses a central computer using the
`
`Internet”) (emphasis added). It was too late for Petitioner to advance this theory in
`
`its reply in support of its petition. So it is too late now.
`
`V. CONCLUSION
`
`
`
`For the foregoing reasons, the Board should again rule that Petitioner has
`
`failed to show that Claim 7 is unpatentable.
`
`February 8, 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
`
`Terry L. Watt (Reg. No. 42214)
`TLWatt@fellerssnider.com
`Fellers Snider
`100 N. Broadway Ave.; Ste. 1700
`Oklahoma City, OK 73102
`(405) 239-7280
`
`Attorneys for Patent Owner
`
`
`
`10
`
`
`
`
`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 February 8, 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
`
`
`
`
`
`
`11
`
`
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