IPR2018-00043
`U.S. Patent 9,454,748
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`UNIFIED PATENTS INC.
`
`Petitioner
`
`- vs. -
`
`FALL LINE PATENTS, LLC
`
`Patent Owner
`
`———————
`
`IPR2018-00043
`
`U.S. Patent 9,454,748
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT 9,454,748
`CHALLENGING CLAIMS 16–19 AND 21–22
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`i
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`Instacart, Ex. 1018
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`

`

`TABLE OF CONTENTS
`
`IPR2018-00043
`U.S. Patent 9,454,748
`
`I.  MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ..................................... 1 
`
`A.  Real Party-in-Interest ................................................................................. 1 
`
`B.  Related Matters .......................................................................................... 1 
`
`C.  Lead and Back-up Counsel and Service Information ............................... 2 
`
`II.  CERTIFICATION OF GROUNDS FOR STANDING .................................... 3 
`
`III.  OVERVIEW OF CHALLENGE AND RELIEF REQUESTED ...................... 3 
`
`A.  Prior Art Patents and Printed Publications ................................................ 4 
`
`B.  Statutory Grounds for Challenges ............................................................. 5 
`
`IV.  US Patent 9,454,748 .......................................................................................... 5 
`
`A.  Summary .................................................................................................... 5 
`
`B.  Level of Ordinary Skill in the Art ............................................................. 6 
`
`C.  Prosecution History ................................................................................... 6 
`
`D.  Priority Date .............................................................................................. 8 
`
`V.  CLAIM CONSTRUCTION............................................................................... 8 
`
`A. 
`
`B. 
`
`C. 
`
`“GPS integral thereto” ............................................................................... 9 
`
`“token” ..................................................................................................... 10 
`
`“originating computer” / “recipient computer” / “central computer” ..... 11 
`
`VI.  CLAIMS 16–19 and 21–22 ARE UNPATENTABLE .................................... 14 
`
`A.  Challenge 1: Claims 16–19 and 21–22 are obvious under 35 U.S.C.
`§ 103 in view of Kari, further in view of Darnell, Todd, and Chan ....... 14 
`
`1.  Overview of Kari ............................................................................ 14 
`
`ii
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`

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`IPR2018-00043
`U.S. Patent 9,454,748
`2.  Overview of Chan ........................................................................... 15 
`
`3.  Overview of Darnell ....................................................................... 15 
`
`4.  Overview of Todd............................................................................ 16 
`
`5.  Analysis ........................................................................................... 16 
`
`VII.  CONCLUSION ................................................................................................ 52 
`
`VIII. CERTIFICATE OF WORD COUNT .............................................................. 53 
`
`
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`
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`
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`iii
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`IPR2018-00043
`U.S. Patent 9,454,748
`
`PETITIONER’S EXHIBIT LIST
`
`October 6, 2017
`
`EX1001 U.S. Patent 9,454,748 to J. David Payne
`
`EX1002
`
`Prosecution File History of U.S. Patent 9,454,748 (“’748 PH”)
`
`EX1003
`
`Prosecution File History of U.S. Patent 7,822,816 (“’816 PH”)
`
`EX1004 U.S. Patent 7,822,816 to J. David Payne
`
`EX1005 Declaration of A.L. Narasimha Reddy
`
`EX1006 U.S. Patent 6,154,745 to Kari et al. (“Kari”)
`
`EX1007 HTML 4 Unleashed by Darnell et al. (“Darnell”)
`
`EX1008 Declaration of David Bader
`
`EX1009 U.S. Patent 6,380,928 to Todd (“Todd”)
`
`EX1010 U.S. Patent 6,381,603 to Chan et al. (“Chan”)
`
`EX1011 Memorandum Opinion and Order, Macrosolve, Inc. v. Antenna
`
`Software, Inc et al., 6:11-cv-287 MHS-KNM (E.D. Tex. Jan. 21,
`
`2014) (“’816 Markman Order”)
`
`EX1012
`
`Institution Decision, IPR2014-00140 (“’816 Institution”)
`
`EX1013 Microsoft Computer Dictionary, 5th ed. (excerpt)
`
`EX1014 U.S. Patent 6,222,483 to Twitchell et al. (“Twitchell”)
`
`EX1015 U.S. Patent 5,043,736 to Darnell et al. (“Darnell ’736”)
`
`iv
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`

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`IPR2018-00043
`U.S. Patent 9,454,748
`
`EX1016 Dictionary of Computer Science (excerpt)
`
`EX1017 Dictionary of Scientific and Technical Terms, 4th ed. (excerpt)
`
`EX1018 Goran M. Djuknic & Robert E. Richton, Geolocation and Assisted
`
`GPS, IEEE Computer, Vol. 34 no. 2, 123-125 (Feb. 2001)
`
`EX1019 Robert S. Anthony, The Ultimate Personal Peripheral, PC
`
`Magazine, Vol. 17 no. 5, 100-124 (Mar. 10, 1998)
`
`EX1020
`
`Johan Hjelm, Creating Location Services for the Wireless Web:
`
`Professional Developer’s Guide (2001).
`
`
`
`v
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`

`

`IPR2018-00043
`U.S. Patent 9,454,748
`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
`A. Real Party-in-Interest
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), Unified Patents Inc. (“Unified” or
`
`“Petitioner”) certifies that Unified is the real party-in-interest, and further certifies
`
`that no other party exercised control or could exercise control over Unified’s
`
`participation in this proceeding, the filing of this petition, or the conduct of any
`
`ensuing trial.
`
`B. Related Matters
`
`According to assignment records, U.S. Patent 9,454,748 (“the ’748 Patent”
`
`(EX1001)) is owned by Fall Line Patents, LLC (“Fall Line” or “Patent Owner”).
`
`As of the filing date of this Petition, and to the best knowledge of Petitioner,
`
`the ’748 Patent is or has been involved in the following matters, all in the United
`
`States District Court for the Eastern District of Texas:
`
`Number
`Case Caption
`Fall Line Patents, LLC v. Choice Hotels Int’l, Inc.
`6:17-cv-00407
`Fall Line Patents, LLC v. Uber Technologies, Inc.
`6:17-cv-00408
`Fall Line Patents, LLC v. American Airlines Group, Inc. et al. 6:17-cv-00202
`Fall Line Patents, LLC v. Cinemark Holdings, Inc. et al.
`6:17-cv-00203
`Fall Line Patents, LLC v. Grubhub Holdings, Inc. et al.
`6:17-cv-00204
`(terminated)
`
`The ’748 Patent is a continuation of U.S. Application No. 10/643,516, filed
`
`August 19, 2003, which issued as U.S. Patent 7,822,816 (“the ’816 Patent”).
`
`Claims 1-14 of the ’816 Patent (all claims) were the subject of an ex parte
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`1
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`

`

`IPR2018-00043
`U.S. Patent 9,454,748
`reexamination proceeding (U.S. Serial No. 90/012,829), which resulted in a
`
`reexamination certificate cancelling those claims. (’816 Patent at 18 (EX1004)).
`
`Additionally, claims 1-14 of the ’816 Patent were the subject of an inter partes
`
`review petition (IPR2014-00140), which was instituted (EX1012), and thereafter
`
`terminated upon cancellation of those claims in the aforementioned ex parte
`
`reexamination. (’816 PH at 479–480 (EX1003)).
`
`C. Lead and Back-up Counsel and Service Information
`
`Lead Counsel
`David W. O’Brien
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`
`
`512-867-8457
`Phone:
`214-200-0853
`Fax:
`
`david.obrien.ipr@haynesboone.com
`USPTO Reg. No. 40,107
`
`
`2
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`

`

`Back-up Counsel
`Raghav Bajaj
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`Roshan Mansinghani
`Unified Patents Inc.
`1875 Connecticut Ave NW, Floor 10
`Washington, DC 20009
`
`David L. McCombs
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`
`Jonathan Stroud
`Unified Patents Inc.
`1875 Connecticut Ave NW, Floor 10
`Washington, DC 20009
`
`
`IPR2018-00043
`U.S. Patent 9,454,748
`
`512-867-8520
`
`
`Phone:
`
`raghav.bajaj.ipr@haynesboone.com
`USPTO Reg. No. 66,630
`
`Phone:
`
`roshan@unifiedpatents.com
`USPTO Reg. No. 62,429
`
`Phone:
`
`david.mccombs.ipr@haynesboone.com
`USPTO Reg. No. 32,271
`
`Phone:
`
`jonathan@unifiedpatents.com
`USPTO Reg. No. 72,518
`
`
`214-945-0200
`
`214-651-5533
`
`650-999-0455
`
`Please address all correspondence to lead and back-up counsel. Petitioner
`
`consents to electronic service.
`
`II. CERTIFICATION OF GROUNDS FOR STANDING
`
`Petitioner certifies pursuant to Rule 42.104(a) that the patent for which
`
`review is sought is available for inter partes review and that Petitioner is not
`
`barred or estopped from requesting an inter partes review challenging the patent
`
`claims on the grounds identified in this Petition.
`
`III. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`
`Pursuant to Rules 42.22(a)(1) and 42.104(b)(1)–(2), Petitioner challenges
`
`3
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`

`IPR2018-00043
`U.S. Patent 9,454,748
`
`claims 16–19 and 21–22 of the ’748 Patent.
`
`A. Prior Art Patents and Printed Publications
`
`The following references are pertinent to the grounds of unpatentability
`
`explained below:
`
`1. US Patent 6,154,745 (issued on November 28, 2000) (“Kari”
`
`(EX1006)), which is prior art under at least 35 U.S.C. § 102(b).1
`
`2. US Patent 6,381,603 (filed February 22, 1999, issued April 30, 2002)
`
`(“Chan” (EX1010)), which is prior art under at least 35 U.S.C.
`
`§ 102(a, e).
`
`3. “HTML 4 Unleashed” by Darnell et al. (published August 15, 1997)
`
`(“Darnell” (EX1007)), which is prior art under at least 35 U.S.C.
`
`§ 102(b). Darnell is a printed publication that was published in book
`
`form bearing ISBN 1-57521-380-X and a 1998 copyright notice and,
`
`as evidenced by its Library of Congress catalog entry, was published
`
`on August 15, 1997. (See Bader Declaration, ¶ 2 (EX1008)).
`
`4. US Patent 6,380,928 (filed May 23, 2000, issued April 30, 2002)
`
`(“Todd” (EX1009)), which is prior art under at least 35 U.S.C.
`
`§ 102(a, e).
`
`1 The ’748 Patent issued from an application filed prior to the enactment of the
`
`America Invents Act (“AIA”). Thus, the pre-AIA statutory framework applies.
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`4
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`

`IPR2018-00043
`U.S. Patent 9,454,748
`
`B. Statutory Grounds for Challenges
`
`This Petition, supported by the declaration of Dr. A.L. Narasimha Reddy
`
`(“Reddy Declaration” or “Reddy” (EX1005)), requests cancellation of claims 16–
`
`19 and 21–22 under the Challenge listed below:
`
`Challenge #1: Claims 16–19 and 21–22 of the ’748 Patent are obvious
`
`under 35 U.S.C. § 103(a) over Kari in view of Darnell, Todd, and Chan.
`
`IV. US PATENT 9,454,748
`
`A. Summary
`
`The ’748 Patent is directed to collecting data from a remote computing
`
`device, such as a handheld computing device, by delivering a questionnaire to the
`
`remote computing device, executing the questionnaire on the remote computing
`
`device, and transmitting responses to a server via a network. (’748 Patent at
`
`Abstract (EX1001)). The ’748 Patent alleges that, with handheld computing
`
`devices, a data link may not always be available, and therefore, data cannot be
`
`entered at all times, or data is not delivered in real time. (Id. at 4:1–18 (EX1001)).
`
`The ’748 Patent also alleges that typical data-gathering applications suffer from
`
`drawbacks, such as the requirement that “custom program[s]” must be developed
`
`in which “the same program must be tested and compiled for each type of device.”
`
`(Id. at 3:1–10 (EX1001)). As demonstrated below, however, data collection
`
`systems that addressed these issues were well-known prior to the ’748 Patent’s
`
`5
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`IPR2018-00043
`U.S. Patent 9,454,748
`
`priority date.
`
`B. Level of Ordinary Skill in the Art
`
`A person of ordinary skill in the art at and before the priority date for the
`
`’748 Patent (“POSITA”) would have a bachelor’s degree in computer science,
`
`computer engineering, electrical engineering, or a related subject, or equivalent
`
`industry or trade school experience in programming software applications.
`
`(Reddy, ¶¶ 36–40 (EX1005)).
`
`C. Prosecution History
`
`The ’748 Patent issued from U.S. Patent Application Number 12/910,706
`
`(“the ’706 Application”), which was filed October 22, 2010. As previously
`
`mentioned, the ’706 Application claimed priority as a continuation of U.S. Patent
`
`Application Number 10/643,516 (“the ’516 Application”), filed August 19, 2003.
`
`The ’516 Application claimed priority to U.S. Provisional Application Number
`
`60/404,491 (“the ’491 Provisional”), filed August 19, 2002.
`
`
`
`The prosecution history of the ’748 Patent includes multiple Office Actions
`
`which included double-patenting rejections over the ’816 Patent and claim
`
`rejections under §§ 102 and 103 over various references. To overcome some
`
`rejections, Patent Owner alleged conception of the claims “prior to January 1,
`
`2002” and diligent reduction to practice from the alleged conception to the filing of
`
`the ’491 Provisional. (’748 PH at 80–108 (EX1002)).
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`IPR2018-00043
`U.S. Patent 9,454,748
`Although the Examiner considered Patent Owner’s prior conception
`
`arguments persuasive (Id. at 2291 (EX1002)), the Examiner continued to reject the
`
`claims under § 103. (Id. at 2273–2293 (EX1002)). In an attempt to overcome the
`
`§ 103 rejections, Patent Owner amended the claims to recite, inter alia, that the
`
`questionnaire recited in the claims comprised “device independent tokens.” (Id. at
`
`2350–2384 (EX1002)). Additionally, Patent Owner proposed amendments in an
`
`Interview Agenda to require that at least one question requested “location
`
`identifying information” and that the remote computing device of the claims had a
`
`“GPS integral thereto.” (Id. at 2495–2499 (EX1002)). Patent Owner incorporated
`
`its suggested amendments in its next response. (Id. at 2504–2539 (EX1002)).
`
`The Examiner then issued a Notice of Allowance with an Examiner’s
`
`Amendment, deleting some instances of “location identifying information” and
`
`replacing the deleted text with “GPS coordinates.” (Id. at 2543–2555 (EX1002)).
`
`In the Reasons for Allowance, the Examiner noted that “the prior art singly or in
`
`combination does not teach the totality of the independent claims” and the claims
`
`“recite[] the use of a GPS integral thereto.” (Id. at 2552–2553 (EX1002)).
`
`However, the grounds and references on which Petitioner seeks review,
`
`which were not before the Examiner, teach or suggest a device with a GPS integral
`
`thereto that obtains GPS coordinates as recited, together with the other features of
`
`claims 16–19 and 21–22. Petitioner’s grounds and references render the
`
`7
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`

`

`IPR2018-00043
`U.S. Patent 9,454,748
`
`challenged claims obvious.
`
`D. Priority Date
`
`For purposes of this proceeding, Petitioner assumes a priority date of August
`
`19, 2002, the filing of the ’491 Provisional.
`
`For completeness, Petitioner notes that, during prosecution, the applicant
`
`alleged “conception of the instant invention…at least as early as January 1, 2002.”
`
`(’748 PH at 98 (EX1002)). However, Applicant’s prosecution arguments did not
`
`address whether the later-added elements “location identifying information,” “GPS
`
`coordinates,” or “device independent tokens,” were found in the alleged evidence
`
`of conception, as those elements were not yet part of the claims. (Id. at 99–100
`
`(EX1002)). As a result, there is no indication or evidence in the prosecution record
`
`to show the challenged claims are entitled to any priority date before the filing of
`
`the ’491 Provisional.
`
`Regardless, all grounds of challenge herein rely on references that pre-date
`
`even the alleged conception “prior to January 1, 2002.”
`
`V. CLAIM CONSTRUCTION
`
`Here, the claim language is “given its broadest reasonable construction in
`
`light of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b);
`
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2016). Terms not
`
`specifically construed below have their plain and ordinary meaning under the
`
`8
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`

`

`IPR2018-00043
`U.S. Patent 9,454,748
`
`broadest reasonable interpretation. See id.
`
`A. “GPS integral thereto”
`
`This claim phrase is recited in independent claims 19 and 21 in the context
`
`of a handheld computing device that “has a GPS integral thereto.” The ’748 Patent
`
`Specification does not use the claim phrase “GPS integral thereto” or define the
`
`acronym “GPS” as used in the claims. A POSITA would have understood the term
`
`“GPS” to be the acronym for Global Positioning System. (Microsoft Computer
`
`Dictionary at 3–4 (EX1013)).
`
`However, a POSITA would not have understood that the entire Global
`
`Positioning System, including multiple satellites, to all be integral to a handheld
`
`computing device: as the Microsoft Computer Dictionary indicates, the GPS
`
`system uses “24 earth satellites” and “ground-based control stations.” (Reddy, ¶
`
`45 (EX1005)). Rather, a POSITA would have understood the claim language
`
`“GPS integral thereto” to reasonably refer to, for example, GPS equipment integral
`
`to the handheld computing device, such as a GPS receiver, as indicated by the ’748
`
`Patent Specification. (’748 Patent at 5:47–48, 10:56–57 (EX1001)). Thus, a
`
`POSITA would have understood the broadest reasonable interpretation of “GPS
`
`integral thereto” to mean “GPS equipment integral thereto.” (Reddy, ¶¶ 44–47
`
`(EX1005)).
`
`9
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`

`IPR2018-00043
`U.S. Patent 9,454,748
`
`B. “token”
`
`The ’748 Patent does not provide an explicit definition for this term. During
`
`prosecution, the Examiner asserted that the term token had “a special meaning (i.e.
`
`logical, mathematical or branching operation),” citing paragraph 54 of the as-filed
`
`Specification (column 8, lines 56–59 of the ’748 Patent). (’748 PH at 2554
`
`(EX1002)). While this portion of the Specification is important context in which
`
`to understand the term, Petitioner submits that the Examiner’s reference is not
`
`determinative of the broadest reasonable interpretation, as the Specification
`
`explicitly states that description is merely an example or a preferred embodiment:
`
`“Each token preferably corresponds to a logical, mathematical, or branching
`
`operation…” (’748 Patent at 8:56–59 (EX1001)).
`
`Indeed, in IPR2014-00140, concerning the parent ’816 Patent, a petitioner
`
`proposed a construction of the term “token” as “‘a distinguishable unit of a
`
`program, such as an index, an instruction, or a command’ that ‘can represent
`
`something else such as a question, answer, or operation.” This proposed
`
`construction was adopted by the Board for purposes of institution. (’816
`
`Institution at 10 (EX1011)). Dr. Reddy adopted this construction in his previous
`
`analysis of the ’816 Patent, and maintains that a token is appropriately construed
`
`according to this definition. (Reddy, ¶ 50 (EX1005)).
`
`Petitioner also notes that, in previous litigation concerning the ’816 Patent,
`
`10
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`

`

`IPR2018-00043
`U.S. Patent 9,454,748
`Patent Owner’s predecessor-in-title proposed a construction of “token” as “any
`
`non-reducible textual element in data that is being parsed.” The Court ultimately
`
`construed the term as “any non-reducible element of the computer code that is
`
`being parsed.” (’816 Markman Order at 13–14 (EX1011)). District courts use a
`
`different standard than the PTAB when construing claim terms, but ultimately, the
`
`differences between the Board’s previous construction in IPR2014-00140 and the
`
`Court’s construction in the litigation do not materially affect the unpatentability
`
`analysis here. For example, a POSITA would have understood a “program” to be
`
`comprised of “computer code” which may include “an index, an instruction, or a
`
`command” and, likewise, a “distinguishable unit” thereof to be a “non-reducible
`
`element.” (Reddy, ¶ 52 (EX1005)). Regardless, under either interpretation, the
`
`claims are rendered obvious by the grounds of challenge herein.
`
`Accordingly, for purposes of construction, Petitioner proposes that the
`
`broadest reasonable interpretation of the claim term “token” should be “a
`
`distinguishable unit of a program, such as an index, an instruction, or a command.”
`
`(Reddy, ¶¶ 49–54 (EX1005)).
`
`C. “originating computer” / “recipient computer” / “central
`computer”
`
`The ’748 Patent Specification does not use these claim terms. Rather, the
`
`terms only appear in the claims. A POSITA would have understood, based on the
`
`context provided by embodiments disclosed in the Specification and by dependent
`
`11
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`

`

`IPR2018-00043
`U.S. Patent 9,454,748
`claims, that one computing device can perform the functions of the “originating
`
`computer,” “recipient computer,” and “central computer” within the scope of
`
`claims 16, 19, and 21. (Reddy, ¶¶ 55–60 (EX1005)).
`
`Claims 16 and 19
`
`Claims 16 and 19 include the terms “originating computer” and “recipient
`
`computer.” Claims 16 and 19 recite “establishing communications between a
`
`handheld computing device and an originating computer.” In one example, the
`
`’748 Patent states, with reference to FIG. 1, that “server 24 is shown
`
`preferably…loosely networked to handheld computers 28–32 through connections
`
`34–38.” (’748 Patent at 7:24–26 (EX1001)). Because server 24 and handheld
`
`computers 28–32 establish communications, the ’748 Patent appears to teach that
`
`“server 24” would be understood as one example of a computing device that
`
`performs the functions of the recited “originating computer.” (Reddy, ¶ 57
`
`(EX1005)).
`
`Claims 16 and 19 also recite “establishing communications between said
`
`handheld computing device and a recipient computer” and “transmitting…to said
`
`recipient computer.” The ’748 Patent states that “several options are available for
`
`the transmission of responses from handheld 28 to server 24.” (’748 Patent at
`
`9:58–59 (EX1001)). Thus, “server 24” would also have been understood as one
`
`example of a computing device that performs the functions of the recited “recipient
`
`12
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`

`IPR2018-00043
`U.S. Patent 9,454,748
`
`computer.” (Reddy, ¶ 58 (EX1005)).
`
`Accordingly, with reference to claims 16 and 19, a POSITA would have
`
`understood that the functions of the “originating computer” and “recipient
`
`computer” may be performed by the same computing device. This conclusion is
`
`further supported by claim 18, which depends from claim 16 and recites “said
`
`originating computer and said recipient computer are a same computer.” (Reddy,
`
`¶¶ 57–59 (EX1005)).
`
`Claim 21
`
`Claim 21 also recites a “central computer” in addition to an “originating
`
`computer” and “recipient computer.” The “originating computer” and “recipient
`
`computer” perform steps of “establishing communications” and “transmitting…to
`
`said recipient computer” as described above with respect to claims 16 and 19.
`
`Furthermore, claim 22, which depends from claim 21, states that “said central
`
`computer and said recipient computer are a same computer.” Accordingly, with
`
`reference to claim 21, a POSITA would have understood that the functions of the
`
`“originating computer,” “recipient computer,” and “central computer” may be
`
`performed by the same computing device. (Reddy, ¶ 60 (EX1005)).
`
`13
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`IPR2018-00043
`U.S. Patent 9,454,748
`VI. CLAIMS 16–19 AND 21–22 ARE UNPATENTABLE2
`
`A. Challenge 1: Claims 16–19 and 21–22 are obvious under 35 U.S.C.
`§ 103 in view of Kari, further in view of Darnell, Todd, and Chan
`
`1. Overview of Kari
`
`Kari describes a system in which a search terminal (such as a PDA) “is used
`
`for sending an information query” formulated using a “blank form…to be used for
`
`entering the information.” (Kari at Abstract, 6:40–45 (EX1006)). The “blank
`
`form is advantageously loaded or stored in the search terminal” and “can be
`
`designed as an Internet-type WWW page” that is displayed in a “WWW browser.”
`
`(Id. at 6:43–49; 63–66 (EX1006)). The “user can freely fill in the text fields and
`
`mark the option boxes desired” and “select possible additional alternatives.” (Id. at
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`7:9–11 (EX1006)). Once the data is filled in, “the user selects data transmission”
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`and submits the query. (Id. at 7:18–22 (EX1006)). The browser may also “read[]
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`automatically the information on the location” of the device “e.g., by using GPS
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`equipment.” (Id. at 7:60–65 (EX1006)). Once a query message including all of
`
`the user’s information is formed, the “query message sent from the search terminal
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`1 is processed in the connection server 3” which may then “transmit[] the
`
`
`2 Unless otherwise specified, all bold italics emphasis below has been added. Text
`
`in italics is used to signify claim language, while reference names are also
`
`italicized.
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`information of the query message to the remote server…” (Id. at 8:20–27
`
`(EX1006)).
`
`Kari is not of record in the ’748 Patent.
`
`2. Overview of Chan
`
`Chan describes a system for accessing local information in a database. Chan
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`describes a “computer system” that “comprises a…Global Position System
`
`receiver 37” and further describes a form that includes a box that “accepts input for
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`a position” that is “in the position coordinates of the Global Position System.”
`
`(Chan at 5:21–27; 6:6–9 (EX1010)).
`
`Chan is not of record in the ’748 Patent.
`
`3. Overview of Darnell
`
`Darnell is titled “HTML 4 Unleashed” and describes itself as a “complete
`
`reference” to Hypertext Markup Language (HTML) 4.0. (Darnell at Cover
`
`(EX1007)). HTML, as Darnell describes, “is the language that puts the face on the
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`Web” and “consists of a variety of elements called tags.” (Id. at xxxvii (EX1007)).
`
`In particular, Darnell dedicates an entire chapter to “Building and Using HTML
`
`Forms.” (Id. at 231 (EX1007)). Darnell teaches that forms “are used for a variety
`
`of purposes” and “allow visitors to your site to give you input.” (Id. at 232
`
`(EX1007)).
`
`Darnell is not of record in the ’748 Patent.
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`4. Overview of Todd
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`Todd describes a “questionnaire device” that “electronically presents a series
`
`of questions, records the answers, and stores and/or transmits all or a portion of the
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`survey response.” (Todd at Abstract (EX1009)).
`
`Todd is not of record in the ’748 Patent.
`
`5. Analysis
`
`Challenged claims 16, 19, and 21 are independent claims. For the Board’s
`
`convenience, the analysis below addresses claim 19 first, as claim 16 recites a
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`subset of the limitations found in claim 19.
`
`Claim 19
`
`[19.0] A method for managing data comprising the steps of:
`To the extent the preamble is limiting, Kari describes a “method and system
`
`for transmitting information,” which discloses a method of managing data. (Kari
`
`at Abstract; 1:61–2:1 (EX1006); Reddy, ¶¶ 78–80 (EX1005)).
`
`[19.1] (a) establishing communications between a handheld computing device
`and an originating computer wherein said handheld computing device has a
`GPS integral thereto;
`Kari and Chan teach this claim limitation. Kari describes communication
`
`between the search terminal 1 and the connection server 3, which corresponds to
`
`establishing communications between a handheld computing device and an
`
`originating computer: “[t]he user starts connection set-up to the connection server
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`16
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`3 in block 302…” (Kari at 6:66–7:2; see also 6:49–51 (EX1006)). Kari also
`
`describes that “the user can load the WWW page from the connection server 3 and
`
`store it locally for example in the storing means of the search terminal 1.” (Id. at
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`15:45–52 (EX1006)).
`
`Kari’s search terminal 1 is described as “a mobile station,” which
`
`corresponds to a handheld computing device. (Id. at 2:56–59 (EX1006)). Kari’s
`
`connection server 3 can be, in one example, an “Internet server,” which
`
`corresponds to an originating computer. (Id. at 4:59–67 (EX1006)).
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`Originating
`computer
`
`Handheld
`computing device
`
`Kari at FIG. 2 (annotated) (EX1006)
`Additionally, Kari’s search terminal 1 has a GPS: “the search terminal 1 can
`
`use satellite location means (GPS).” (Kari at 3:11–16 (EX1006)). A POSITA
`
`would have understood that, to use satellite location means (GPS), the search
`
`terminal would have to include GPS equipment. (Reddy, ¶ 85 (EX1005)).
`
`Patent Owner may argue that Kari does not explicitly teach that the GPS
`
`equipment is integral to the search terminal. But a POSITA would have
`
`understood that a finite number of predictable choices exist for the physical
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`arrangement of Kari’s GPS equipment with respect to the search terminal: either
`
`the GPS equipment is integral to the search terminal, or the GPS equipment is
`
`connected in some way to the search terminal (e.g., using a serial connection or the
`
`like). (Reddy, ¶ 86 (EX1005)). A POSITA would have found it obvious to
`
`incorporate the GPS equipment to be integral to the search terminal at least
`
`because it would have been efficient for components used by the search terminal to
`
`be within the search terminal itself, and would have also expected that
`
`incorporating GPS equipment into a search terminal (such as a mobile telephone)
`
`would have been successful, at least because it was well-known at the time of Kari
`
`and prior to the ’748 Patent for GPS equipment to be incorporated into, or integral
`
`to, a mobile telephone. (See, e.g., Twitchell at FIG. 3. (EX1014); Darnell ’736 at
`
`FIGs. 4–5 (EX1015); Reddy, ¶ 86 (EX1005)).
`
`Regardless, Chan explicitly teaches a computing device with a GPS integral
`
`thereto, describing a “hand held computer or…portable computer” as an “end-user
`
`computer system” that “comprises…a Global Position System receiver 37.” (Chan
`
`at 3:11–15, 5:21–27 (EX1010)).
`
`A POSITA would have found it obvious to combine Kari with the teachings
`
`of Chan. First, Kari and Chan are analogous art and in the same field of endeavor.
`
`Both Kari and Chan are directed to systems and methods for receiving and
`
`fulfilling location-based queries. (Kari at 2:20–23 (EX1006); Chan at 1:7–9
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`19
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`(EX1010)).
`
`Second, a POSITA reading Kari would have been motivated to consider the
`
`advantages of the teachings of Chan of a hand-held computer that included a GPS
`
`receiver. As detailed above, integrating a GPS receiver with a mobile telephone or
`
`similar hand held device was well-known at the time of the ’748 Patent, and
`
`although Kari teaches the use of satellite location means, including GPS, a
`
`POSITA would have recognized that integration of a GPS receiver into the search
`
`terminal of Kari would have provided benefits, as taught by Chan, such as the
`
`ability to “continuously update the current position coordinates with the reading
`
`from Global Positioning System receiver 37.” (Chan at 6:19–23 (EX1010)).
`
`Accordingly, a POSITA would have been motivated to combine the teachings of a
`
`hand-held or portable computer that included a GPS receiver into the systems and
`
`methods of Kari to teach a handheld computing device with a GPS integral
`
`thereto. (Reddy, ¶¶ 88–89 (EX1005)).
`
`Thus, Kari’s description of the connection set-up to the connection server
`
`from the search terminal, which uses satellite location means, along with Chan’s
`
`explicit teaching of a GPS receiver incorporated into a hand held computing
`
`device, teaches establishing communications between a handheld computing
`
`device and an originating computer wherein said handheld computing device has a
`
`GPS integral thereto. (Reddy, ¶¶ 81–90 (EX1005)).
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`[19.2.1] (b) receiving within said handheld computing device a transmission of a
`tokenized questionnaire from said originating computer,
`Kari and Darnell teach this claim limitation. Kari describes that, “after the
`
`connection is set up…the user selects the desired service” and then “connection
`
`server 3 displays the query form corresponding to the selected service…the query
`
`form is loaded on the display of the search terminal 1…” (Kari at 6:66–7:6
`
`(EX1006)). As described above with respect to limitation [19.1], Kari also
`
`describes “load[ing] the WWW page” and “stor[ing] it locally.” (Id. at 15:45–52
`
`(EX1006)). Thus, Kari’s description of the query form from the connection server
`
`being loaded and stored on the search terminal teaches receiving within said
`
`handheld computing device a transmission of a…questionnaire from said
`
`originating computer. (Reddy, ¶¶ 92–93 (EX1005)).
`
`Kari does not describe its query form as tokenized, but does note that the
`
`query form, or questionnaire, is “an Internet-type WWW page,” and that the user
`
`uses the search terminal to start “a terminal application…which in this example is a
`
`WWW browser.” (Kari at 6:47–49, 64–66 (EX1006)). A POSITA would have
`
`understood that a WWW page displayed in a WWW browser would have been