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.,
`Petitioners
`
`v.
`
`FALL LINE PATENTS, LLC
`
`Patent Owner.
`____________________________
`
`Case No. IPR2019-00610
`Patent No. 9,454,748
`____________________________
`
`PETITIONERS’ NOTICE OF APPEAL
`
`
`
`____________________________
`
`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.,
`Petitioners
`
`v.
`
`FALL LINE PATENTS, LLC
`
`Patent Owner.
`____________________________
`
`Case No. IPR2019-00610
`Patent No. 9,454,748
`____________________________
`
`PETITIONERS’ NOTICE OF APPEAL
`
`
`
`
`
`Pursuant to 35 U.S.C. §§ 142 and 37 C.F.R. § 90.2(a), Petitioners AMC Multi-
`
`Cinema, Inc., AMC Entertainment Holdings, Inc., Boston Market Corporation,
`
`Mobo Systems, Inc., McDonald’s Corporation, McDonald’s USA, Papa John’s
`
`International, Inc., Star Papa LP, and Papa John’s USA, Inc. respectfully give Notice
`
`that they hereby appeal to the United States Court of Appeals for the Federal Circuit
`
`from the Patent Trial and Appeal Board’s (“Board”) Final Decision on Remand,
`
`dated May 17, 2022 (Paper 42), and from all other underlying orders, decisions,
`
`rulings and opinions related thereto and included therein. This notice is timely filed
`
`within 63 days of the Board’s Final Decision on Remand.
`
`For the limited purpose of providing the Director with the information
`
`specified in 37 C.F.R. § 90.2(a)(3)(ii), Petitioners indicate that the issues on appeal
`
`include, but are not limited to whether Claim 7 of U.S. Patent No. 9,454,748 is
`
`obvious over U.S. Patent No. 6,961,586 B2, filed September 17, 2001, issued
`
`November 1, 2005, and which claims the benefit of an application filed on
`
`September 28, 2000 (“Barbosa”) in view of U.S. Patent No. 5,991,771, issued
`
`November 23, 1999 (“Falls”).
`
`Simultaneous with this submission, a copy of this Notice of Appeal is being
`
`filed with the Board and the Clerk’s Office for the United States Court of Appeals
`
`for the Federal Circuit.
`
`
`
`
`
`1
`
`
`
`
`
`
`
`
`Dated: June 16, 2022
`
`
`
`
`
`
`
`
`
`
`
`2
`
`
`
`
`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
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`Pursuant to 37 CFR §§ 42.6(e)(4), the undersigned certifies that on June 16,
`
`2022, a complete and entire copy of this Petitioners’ Notice of Appeal was
`
`provided via email to the Patent Owner by serving the correspondence address of
`
`record 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
`
` hereby certify that, in addition to being filed electronically through the
`
` I
`
`Board’s E2E System, the original version of the foregoing Notice of Appeal was
`
`delivered by USPS Certified Mail on June 16, 2022, with the Director of the
`
`United States Patent and Trademark Office, at the following address:
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`I hereby certify that on June 16, 2022, a true and correct copy of the
`
`foregoing Notice of Appeal, along with a copy of Final Decision on Remand, was
`
`3
`
`
`
`
`
`
`filed electronically with the Clerk’s Office of the United States Court of Appeals
`
`for the Federal Circuit, at the following address:
`
`United States Court of Appeals for the Federal Circuit
`717 Madison Place, N.W., Suite 401
`Washington, DC 20005
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth St.
`Minneapolis, MN 55402
`(617) 956-5938
`
`
`4
`
`
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 42
`Entered: May 17, 2022
`
`
`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.
`____________
`
`IPR2019-00610
`Patent 9,454,748 B2
`____________
`
`
`Before MICHELLE N. WORMMEESTER, SHEILA F. McSHANE,
`and JOHN R. KENNY, Administrative Patent Judges.
`
`KENNY, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Decision on Remand
`35 U.S.C. §§ 144, 318(a)
`
`
`
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`
`I. INTRODUCTION
`American Multi-Cinema, Inc.; AMC Entertainment Holdings,
`Inc.; Boston Market Corp.; Mobo Systems, Inc. d/b/a OLO Online
`Ordering; McDonald’s Corp; McDonald’s USA; Panda Restaurant
`Group, Inc.; Panda Express Inc.; Papa John’s International, Inc.; Star
`Papa LP; and Papa John’s USA, Inc. (collectively, “Petitioner”) filed a
`Petition (Paper 7, “Pet.”)1 requesting an inter partes review of claims
`1, 2, 5, 7, and 19–22 (“challenged claims”) of U.S. Patent No.
`9,454,748 B2 (Ex. 1001, “the ’748 patent,” “challenged patent”).
`Pet. 1. An inter partes review of all challenged claims was instituted
`on August 7, 2019. Paper 14 (“Inst. Dec.”). After institution, Fall
`Line Patents, LLC (“Patent Owner”) filed a Patent Owner Response
`(Paper 17, “PO Resp.”), Petitioner filed a Reply (Paper 19, “Pet.
`Reply”), and Patent Owner filed a Sur-reply (Paper 20, “PO Sur-
`reply”). An oral hearing was held on April 28, 2020. Paper 25
`(“Tr.”).2
`
`
`1 The Petition was also filed on behalf of Starbucks Corporation, but
`Starbucks entered into a settlement agreement and was terminated
`from this proceeding. Pet. 1; Papers 11, 13.
`2 After the oral hearing, we authorized additional briefing on a claim
`construction issue concerning certain claim terms. Paper 24. Pursuant
`to that authorization, Petitioner filed a Supplemental Brief (Paper 27)
`as did Patent Owner (Paper 28). Petitioner responded to Patent
`Owner’s Supplemental Brief (see Paper 29) and Patent Owner
`responded to Petitioner’s Supplemental Brief (see Paper 30).
`
`
`
`
`2
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`
`On August 5, 2020, we issued a Final Written Decision
`(Paper 32, “Final Written Dec.”), in which we determined that
`Petitioner had proven that claims 1, 2, 5, and 19–22 are unpatentable,
`but had not proven that claim 7 is unpatentable. Final Written
`Dec. 63–64. Patent Owner did not appeal our decision regarding
`claims 1, 2, 5, and 19–22. AMC Multi-Cinema, Inc. v. Fall Line
`Patents, LLC,3 No. 2021-1051, slip op. 3 (Fed. Cir. Sept. 30, 2021)
`(“Remand Decision,” “Remand Dec.”). Petitioner, however, appealed
`our decision regarding claim 7. Id. The Federal Circuit affirmed in
`part, vacated in part, and remanded our decision regarding claim 7. Id.
`at 21.
`After the remand, we authorized supplemental briefing.
`Papers 34, 35. The parties filed a joint statement. Paper 36 (“Joint
`Statement”). Petitioner filed an opening supplemental brief (Paper 38,
`“Pet. Supp. Br.”) and a responsive supplemental brief (Paper 41, “Pet.
`Resp. Br.”). Patent Owner also filed an opening supplemental brief
`(Paper 37, “PO Supp. Br.”) and a responsive supplemental brief
`(Paper 40, “PO Resp. Br.”).
`After considering the instructions and guidance from the Federal
`Circuit in the Remand Decision, the Joint Statement, the parties’
`supplemental briefing, and the complete record, we determine that
`
`
`3 In this Decision, we cite to the slip opinion, as Petitioner did in its
`supplemental briefing. See, e.g., Pet. Supp. Br. 1. Patent Owner
`referenced the Westlaw citation for this decision, which is 2021 WL
`4470062. See, e.g., PO Supp. Br. 2–3.
`
`3
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`Petitioner has not proven, by a preponderance of the evidence, that
`claim 7 is unpatentable.
`II. CLAIM 7, THE SCOPE OF THE REMAND,
`AND THE TERM “EXECUTABLE”
`Claim 7
`A.
`Claim 7 recites:
`7. A method for collecting survey data from a user and
`making responses available via the Internet, comprising:
`(a) designing a questionnaire including at least one
`question said questionnaire customized for a particular
`location having branching logic on a first computer
`platform wherein at least one of said at least one questions
`requests location identifying information;
`(b) automatically transferring said designed questionnaire
`to at least one loosely networked computer having a GPS
`integral thereto;
`(c) when said loosely networked computer is at said
`particular location, executing said transferred questionnaire
`on said loosely networked computer, thereby collecting
`responses from the user;
`(d) while said transferred questionnaire is executing, using
`said GPS to automatically provide said location identifying
`information as a response to said executing questionnaire;
`(e) automatically transferring via the loose network any
`responses so collected in real time to a central computer;
`and,
`(f) making available via the Internet any responses
`transferred to said central computer in step (e).
`Ex. 1001, 14:45–67.
`
`4
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`
`B. Asserted Grounds for Claim 7
`The Petition asserts that claim 7 would have been obvious over
`the following references:
`Claims
`Challenged
`
`35 U.S.C. §
`
`Reference(s)/Basis
`
`7
`
`7
`
`103(a)
`
`103(a)
`
`Barbosa, 4 Falls5
`
`Hancock,6 Falls
`
`Pet. 5.
`C. Scope of the Remand
`The issue before us concerns Petitioner’s challenge based on
`Barbosa and Falls, and in particular, whether Petitioner has proven by
`a preponderance of the evidence that Barbosa teaches limitation (b) of
`claim 7 (“limitation 7(b)”) for that challenge. Remand Dec. 16, 21. In
`addition, the Federal Circuit instructed us that if we determine that
`Petitioner has proven that Barbosa teaches limitation 7(b), then we
`should address limitation (f) of claim 7 (“limitation 7(f)”) for
`Petitioner’s Barbosa and Falls challenge. Id. at 21 n.4.
`The remand concerns only claim 7 because, as mentioned,
`Patent Owner did not appeal the Final Written Decision regarding
`claims 1, 2, 5, and 19–22. Remand Dec. 3. The remand is further
`
`
`4 U.S. Patent No. 6,961,586 B2, filed Sept. 17, 2001, claims the benefit
`of an application filed on Sept. 18, 2000, and issued on Nov. 1, 2005
`(Ex. 1002, “Barbosa”). The earliest filing date that the ’748 patent
`claims the benefit of is August 19, 2002. Ex. 1001, code (60).
`5 U.S. Patent No. 5,991,771, issued Nov. 23, 1999 (Ex. 1017, “Falls”).
`6 U.S. Patent No. 6,202,023 B1, issued Mar. 13, 2001 (Ex. 1003,
`“Hancock”).
`
`5
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`limited to whether claim 7 would have been obvious over Barbosa and
`Falls because the Federal Circuit upheld our determination that
`Petitioner had not proven that claim 7 is unpatentable over Hancock
`and Falls. Id. at 15–16. Thus, the Final Written Decision sets forth the
`disposition of all grounds, other than the asserted obviousness of claim
`7 over Barbosa and Falls. Id. at 3, 15–16, 21.
`For limitation 7(b), the remand is further limited to the issue of
`whether Petitioner has proven that Barbosa itself teaches that limitation
`because the Federal Circuit upheld our determination that Petitioner
`did not timely argue that limitation was an obvious modification of
`Barbosa. Id. at 15–16.
`For the issue of whether Barbosa teaches limitation 7(b), the
`Federal Circuit held that, in the Final Written Decision, we did not
`fully consider Petitioner’s arguments in the Petition and we
`erroneously determined certain arguments in the Reply to have been
`belatedly presented. Remand Dec. 16–17. The Federal Circuit further
`held that, in the Final Written Decision, we did not adequately address
`Petitioner’s reply evidence regarding Barbosa’s teachings. Id. at 19–
`20.
`
`The Federal Circuit noted that, in the Final Written Decision, we
`determined that the questionnaire transferred in limitation 7(b) must be
`executable. Remand Dec. 11. The Federal Circuit did not disagree.
`Id. The Federal Circuit, however, noted that we did not explain what
`“executable” means in this setting. Id. at 20.
`
`6
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`
`D. Meaning of the Term “Executable”
`To provide a definition for the term “executable” in this
`Decision, we requested that the parties provide proposed definitions.
`Paper 34. On remand, the parties agree to the following definition:
`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.
`Joint Statement 1.
`We accept and apply this agreed-to definition for “executable”
`in this Decision.
`III. BARBOSA AND LIMITATION 7(b)
`On remand, we determine that Petitioner has not proven, by a
`preponderance of the evidence, that Barbosa teaches limitation 7(b),
`which reads:
`(b) automatically transferring said designed questionnaire
`to at least one loosely networked computer having a GPS
`integral thereto.
`Ex. 1001, 14:52–54.
`As we held in the Final Written Decision, and no party has
`disputed in any supplemental briefing, the recited questionnaire that is
`automatically transferred in limitation 7(b) must be executable. Final
`Written Decision 50 (“[T]he recited questionnaire in claim 7 is
`executable, as claim 7 additionally recites ‘executing said
`questionnaire.’”); Remand Dec. 11 (“At the core of the Board’s
`conclusion in this respect was its determination—about which we have
`seen no reasonable dispute—that, because ‘claim 7 additionally recites
`
`7
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`“executing said questionnaire,”’ the questionnaire that is transferred
`under limitation step (b) must be executable.”).
`In supplemental briefing on remand and prior briefing, the
`parties made a number of arguments regarding whether Barbosa
`automatically transfers an executable questionnaire, including whether
`Barbosa discloses: an executable questionnaire, the transfer of an
`executable program, and data synchronization. As set forth below, we
`find that Barbosa discloses an executable questionnaire, the transfer of
`an executable questionnaire, and data synchronization. However, as
`discussed below, we determine that Petitioner has not proven that
`Barbosa teaches or discloses, to an ordinarily skilled artisan,
`automatically transferring an executable questionnaire to at least one
`loosely networked computer. Thus, Petitioner has not proven, by a
`preponderance of the evidence, that Barbosa discloses limitation 7(b).
`A. Executable Questionnaire
`Petitioner argues that Barbosa discloses an executable
`questionnaire. Pet. Supp. Br. 2–5; Pet. Resp. Br. 1–4. In its
`supplemental briefing, Patent Owner does not dispute this argument.7
`Patent Owner, however, asserts that Petitioner has not identified any
`
`
`7 Petitioner suggests that Patent Owner’s argument in earlier briefing
`regarding the tokenized questionnaire recited in claim 19 demonstrates
`that Patent Owner disputed that Barbosa discloses an executable
`questionnaire. Pet. Supp. Br. 3–4. Patent Owner, however, did not
`make such an argument in its supplemental briefing on remand, and,
`moreover, as set forth in this section, we find that Barbosa discloses an
`executable questionnaire.
`
`8
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`questionnaire in Barbosa that is both executable and automatically
`transferred. PO Resp. Br. 1–3.
`We agree with Petitioner that Barbosa teaches an executable
`questionnaire. Barbosa discloses that “programs operated by the
`microprocessor ask questions or provide guidance related to a
`particular field problem” and “[t]he program would prompt the user for
`input of data related to the problem.” Ex. 1002, 6:60–61, 7:47–48.
`Further, Figure 7 of Barbosa discloses a flow chart for a construction
`application. Id. at 7:42–47; 8:49–50. In that flow chart, at a job site,
`the assessor starts an appraisal program 702 on device 10. Id. at 7:42–
`47, 8:49–54. Barbosa further discloses that “[t]he program may start
`by asking for the identification of [] the client or matter 703 (e.g.,
`customer, or job site),” and “[t]he program may next ask the
`representative to identify the problem or type of assessment 704 (e.g.,
`HVAC, plumbing, electrical, landscaping, etc.).” Id. at 8:54–59. We
`agree with Petitioner that these disclosures teach an executable
`questionnaire.
`B. Transfer of an Executable Program
`Petitioner argues that Barbosa discloses the transfer of an
`executable program. Pet. Supp. Br. 4; Pet. Resp. Br. 3. Further,
`Petitioner asserts that, if we were to find otherwise, such a finding
`would conflict with findings we made regarding claim 19 in the Final
`Written Decision. Pet. Supp. Br. 4. In its supplemental briefing,
`Patent Owner does not dispute that Barbosa discloses the transfer of an
`executable program. Patent Owner, however, disputes that Barbosa
`
`9
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`discloses the automatic transfer of an executable program. PO Supp.
`Br. 5–6; PO Resp. Br. 5.
`We find that Barbosa discloses the transfer of an executable
`program. Barbosa discloses providing a template from a remote server
`(1302) to assessors. Ex. 1002, 12:11–14. Barbosa further discloses
`that this “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 form of a JAVA
`applet).” Id. at 12:14–18 (emphasis added). We agree that a computer
`program transmitted from the server in the form of a JAVA applet
`describes the transfer of an executable program. In particular, as set
`forth above, the parties stipulated to the following definition for the
`term “executable”:
`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.
`Joint Statement 1. Petitioner argues that, under this definition, a
`computer program in the form of a JAVA applet is an executable
`program. Pet. Supp. Br. 2–5. Patent Owner does not dispute this
`argument. PO Resp. Br. 6–7. We agree with Petitioner; the parties’
`agreed-to definition deems JAVA executable. Joint Statement 1.
`Thus, we accept Petitioner’s argument that Barbosa discloses the
`transfer of an executable program. We address whether Barbosa
`discloses the automatic transfer of an executable questionnaire in
`Section III.D below.
`
`10
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`
`C. Data Synchronization
`Petitioner argues that Barbosa discloses data synchronization.
`
`Pet. Supp. Br. 5–6; Pet. Resp. Br. 5. Patent Owner does not dispute
`this argument. We agree with Petitioner that Barbosa discloses data
`synchronization. In particular, Barbosa discloses that “[f]ield
`assessment data synchronization and/or delivery is enabled using
`wireless capabilities resident in handheld personal computing devices.”
`Ex. 1002, code (57).
`D. Automatic Transfer of an Executable Questionnaire
`1. Petitioner’s Arguments
`Petitioner argues that the need for synchronization between the
`handheld device and the server disclosed in Barbosa would have led an
`ordinarily skilled artisan to understand Barbosa to disclose automatic
`transfers, not just manual transfers, of data between the two devices.
`Pet. Supp. Br. 5–6; Pet. Resp. Supp. Br. 4–7. Petitioner asserts that an
`ordinarily skilled artisan would understand “that during
`synchronization on a wireless network, data is automatically
`transferred when a connection is available, and temporarily stored for
`later transmission when a connection is unavailable.” Pet. Supp. Br. 5
`(quoting Pet. 43 (citing Ex. 1005 ¶ 177)); Pet. Resp. Br. 5 (quoting
`Pet. 43 (citing Ex. 1005 ¶ 177)). Petitioner further asserts that “this
`was a well-known characteristic of network communication protocols
`that relied on synchronization for transmission and delivery over a
`wireless network at the time.” Pet. Supp. Br. 5 (quoting Pet. 43 (citing
`Ex. 1005 ¶ 177)); Pet. Resp. Br. 5 (quoting Pet. 43 (citing Ex. 1005
`¶ 177)). Further, Petitioner contends that “[t]he Federal Circuit
`
`11
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`recognized this passage from the Petition 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.” Pet. Supp. Br. 5–6 (citing
`Remand Dec. 17); Pet. Resp. Br. 5 (citing Remand Dec. 17).
`Petitioner argues that its Reply relied on Barbosa’s disclosure of
`synchronization to explain why Barbosa discloses automatic transfers
`of executable questionnaires. Pet. Supp. Br. 6 (citing Pet. Reply 13–
`15); Pet. Resp. Br. 5–6 (citing Pet. Reply 13–15). Petitioner quotes
`from its Reply that “Barbosa discloses an interactive environment that
`allows two-way communications between a remote device and a
`server, including automatic synchronization and information transfers.”
`Pet. Supp. Br. 6 (quoting Pet. Reply 13 (citing Ex. 1005, ¶¶ 176–177;
`Ex. 1018 ¶ 24)); Pet. Resp. Br. 6 (quoting Pet. Reply 13 (citing
`Ex. 1005, ¶¶ 176-177; Ex. 1018 ¶ 24)).
`Petitioner further argues that “Barbosa discloses automatically
`distributing executable templates for entering inventory
`tracking/ordering information into a remote device, which would allow
`a ‘technician [to] coordinate inventory needs with the company
`automatically using this method.’” Pet. Supp. Br. 6 (quoting Ex. 1002,
`11:29–30) (emphasis omitted). Petitioner further asserts that it
`“explained why automatic transfers of inventory-tracking
`questionnaires to be executed on remote devices would be necessary:
`to ensure ‘that no more inventory than is needed is taken to the field.’”
`
`12
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`Id. (quoting Pet. Reply 13–14 (quoting Ex. 1002, 11:29–40, citing
`Ex. 1018 ¶ 25)).
`Petitioner argues that “[t]he same principle underlies the other
`examples of automatic/synchronized transfers of executable
`questionnaires in Barbosa.” Pet. Supp. Br. 6. Petitioner asserts that, in
`its Reply, it referred to Barbosa’s disclosure of synchronizing a
`worker’s handheld device “with a server to receive an updated
`template containing tasks for the worker at the beginning of every
`work shift.” Id. (citing Pet. Reply 14 (quoting Ex. 1002, 10:32–42)).
`Petitioner further argues that it asserted, in its Reply, that an ordinarily
`skilled artisan “would appreciate that the disclosed synchronization
`process for transferring the updated template is an automatic process;
`such automatic communications ensure workers are provided
`appropriate ‘daily input’ so tasks ‘are not repeated (wasting time) and
`that unfinished task[]s are addressed.’” Id. at 7 (quoting Pet. Reply 14
`(quoting Ex. 1002, 10:59–67; citing Ex. 1018 ¶ 26)).
`Petitioner further argues that these examples and others cited by
`Petitioner in its Reply support Barbosa’s disclosure of automated
`transfers of executable questionnaires “given Barbosa’s express
`teaching regarding the importance of coordinating among remote users
`in the field.’ Pet. Supp. Br. 7 (quoting Pet. Reply 15 (citing Ex. 1002,
`11:55-62; Ex. 1018 ¶ 27)).
`2. Patent Owner’s Arguments
`Patent Owner disagrees with Petitioner, arguing:
`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
`
`13
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`
`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. Supp. Br.] 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.
`PO Resp. Supp. 3 (emphases omitted).
`3. Analysis
`We considered all of the arguments the parties have made
`regarding Barbosa’s purported disclosure of the automatic transfer of
`an executable questionnaire. We, however, are not persuaded that
`Barbosa has such a disclosure. We address each of the arguments
`Petitioner set forth separately below.
`a. Automatic Transfer of Data
`Patent Owner disputes that the need for synchronization between
`the handheld device and the server disclosed in Barbosa would have
`led an ordinarily skilled artisan to understand Barbosa to disclose
`automatic transfers, not just manual transfers, of data between the two
`devices. PO Resp. Br. 5. For purposes of this analysis, we accept
`Petitioner’s argument that Barbosa’s data synchronization requires the
`automatic transfer of data between its server and handheld device for
`the data that Barbosa is synchronizing. But nothing cited by Petitioner
`in Barbosa expressly or implicitly discloses synchronizing, in
`particular, an executable questionnaire. The mere synchronization of
`data does not teach the synchronization of an executable questionnaire
`because Barbosa discloses transferring data that is not necessarily
`
`14
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`executable, e.g., templates, which Petitioner has not shown have to be
`executable. Ex. 1002, 7:26–28 (“e.g., task/punch lists”), 7:51–53
`(“Web pages”), 10:39–42 (“updated template”); see also section
`III.D.3.b below (addressing Petitioner’s arguments and Mr. Roman’s
`testimony regarding synchronization with intermittent connections).
`b. Storage and Automatic Transfer When a Connection is
`Unavailable
`As mentioned, Petitioner argues that an ordinarily skilled artisan
`would understand “that during synchronization on a wireless network,
`data is automatically transferred when a connection is available, and
`temporarily stored for later transmission when a connection is
`unavailable.” Pet. Supp. Br. 5 (quoting Pet. 43 (citing Ex. 1005
`¶ 177)); Pet. Resp. Br. 5 (quoting Pet. 43 (citing Ex. 1005 ¶ 177)).
`Petitioner further asserts that this was a well-known characteristic of
`network communication protocols that relied on synchronization for
`transmission and delivery over a wireless network at the time. Pet.
`Supp. Br. 5 (quoting Pet. 43 (citing Ex. 1005 ¶ 177)); Pet. Resp. Br. 5
`(quoting Pet. 43 (citing Ex. 1005 ¶ 177)).
`We, however, do not find that Barbosa discloses that data (let
`alone an executable questionnaire) is automatically transferred when a
`connection is available, and temporarily stored for later transmission
`when a connection is unavailable, during synchronization on a wireless
`network. Petitioner cites nothing from Barbosa with such a disclosure.
`The only evidence that Petitioner relies on to support its argument is
`conclusory testimony by Mr. Roman, which reads:
`A[n ordinarily skilled artisan] would understand that
`during synchronization on a wireless network, data is
`
`15
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`
`automatically transferred when a connection is available,
`and temporarily stored for later transmission when a
`connection is unavailable, as this was a well-known
`characteristic of network communication protocols that
`relied on synchronization for transmission and delivery
`over a wireless network at the time. Through such
`synchronization, networked computers coordinate their
`transmission of data to one another, sending data when
`appropriate and storing date for later transmission when a
`connection is established. Such techniques for handling
`unreliable network connections were necessary at that
`time for wireless applications given the unreliable nature
`of existing wireless data connections.
`Ex. 1005 ¶ 177 (cited in Pet. Supp. Br. 5, Pet. 43). As can be seen
`above, Mr. Roman cites nothing to support this testimony. Conclusory
`testimony by an expert is not persuasive. 37 C.F.R. § 42.65; see also
`Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014, 1022 (Fed. Cir. 2017)
`(the Board is “not required to credit [a party’s] expert evidence simply
`because [the party] offered it”); TQ Delta, LLC v. CISCO Sys., Inc.,
`942 F.3d 1352, 1359 (Fed. Cir. 2019) (“This court’s opinions have
`repeatedly recognized that conclusory expert testimony is inadequate
`to support an obviousness determination on substantial evidence
`review.”).
`Further, although this testimony (and Petitioner’s argument that
`relies on this testimony) might describe a motivation for an ordinarily
`skilled artisan to modify Barbosa to add synchronization by storing
`data during times when there is a lack of connection and automatically
`transmitting data after a connection is restored, this testimony does not
`demonstrate that such a feature is taught by Barbosa. Petitioner and
`Mr. Roman cite nothing from Barbosa demonstrating that Barbosa
`
`16
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`teaches storing data for intermittent connections and automatically
`transmitting such data after connections are restored, other than the
`mere reference to data synchronization using wireless capabilities.
`And we do not interpret the latter to require storing data for
`intermittent connections and automatically transmitting such data after
`connections are restored. Instead, based on the trial record, data
`synchronization simply means synchronizing data via any mechanism
`of synchronizing data.
`The Petition addresses the concept of synchronizing data by
`storing data for intermittent connections and automatically transmitting
`such data after connections are restored when addressing the claim
`language of “at least one loosely networked computer,” which is also
`recited in limitation 7(b). Pet. 43. The Petition argues that, to the
`extent we did not find that Barbosa discloses such a feature, Fall
`discloses storing data for intermittent connections and automatically
`transmitting such data after connections are restored. Id. at 44. We
`agree with Petitioner that Falls expressly discloses storing data for
`intermittent connections and automatically transmitting such data after
`connections are restored. Ex. 1017, 3:16–37. Barbosa, however, does
`not, and the issue on remand is whether Barbosa discloses the
`automatic transfer of an executable questionnaire, not whether such a
`transfer is taught or suggested by the combination of Barbosa and
`Falls. Remand Dec. 16.
`As mentioned, Petitioner further argues that “[t]he Federal
`Circuit recognized [a] passage from the Petition as explaining
`Barbosa’s disclosure of automatic transfers because of the need for
`
`17
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`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.” Pet. Supp. Br. 5–6 (citing
`Remand Dec. 17); Pet. Resp. Br. 5 (citing Remand Dec. 17). We agree
`with Petitioner that the Federal Circuit recognized that the Petition
`presented that argument regarding data synchronization and instructed
`us to consider it. Remand Dec. 17. To the extent, however, Petitioner
`is suggesting that the Federal Circuit found that Barbosa discloses
`automatic transfers of an executable questionnaire because of the need
`of synchronization and unreliable networks, we do not read the Federal
`Circuit’s remand decision as having such a finding. Id.
`c. Additional Arguments Regarding Synchronization
`As mentioned, Petitioner argues that, in its Reply, it continue
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
