Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 6
`Entered: April 5, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.
`Petitioner,
`
`v.
`
`FALL LINE PATENTS, LLC
`Patent Owner.
`____________
`
`Case IPR2018-00043
`Patent 9,454,748 B2
`____________
`
`Before MICHELLE N. WORMMEESTER, SHEILA F. McSHANE, and
`JOHN R. KENNY, Administrative Patent Judges.
`
`KENNY, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(b)
`
`1
`
`Instacart, Ex. 1019
`
`
`Tel: 571-272-7822
`
`Paper 6
`Entered: April 5, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.
`Petitioner,
`
`v.
`
`FALL LINE PATENTS, LLC
`Patent Owner.
`____________
`
`Case IPR2018-00043
`Patent 9,454,748 B2
`____________
`
`Before MICHELLE N. WORMMEESTER, SHEILA F. McSHANE, and
`JOHN R. KENNY, Administrative Patent Judges.
`
`KENNY, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(b)
`
`1
`
`Instacart, Ex. 1019
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`I. INTRODUCTION
`Unified Patents Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”),
`requesting an inter partes review of claims 16–19, 21, and 22 of U.S. Patent
`No. 9,454,748 B2 (Ex. 1001, “the ’748 patent”). Fall Lines Patents, LLC
`(“Patent Owner”) filed a Preliminary Response (Paper 5, “Prelim. Resp.”).
`We have authority under 35 U.S.C. § 314 to institute an inter partes review
`if “there is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.” Upon
`considering the record developed thus far, for reasons discussed below, we
`institute inter partes review of claims 16–19, 21, and 22 of the ’748 patent.
`
`II. BACKGROUND
`A. Related Proceedings
`The parties indicate that the ’748 patent is or has been involved in the
`following civil actions in the United States District Court for the Eastern
`District of Texas:
`
`
`Case Caption
`Fall Line Patents, LLC v. American Airlines Group, Inc.
`Fall Line Patents, LLC v. Cinemark Holdings, Inc.
`Fall Line Patents, LLC v. Grubhub Holdings, Inc.
`Fall Line Patents, LLC v. Choice Hotels Int’l, Inc.
`Fall Line Patents, LLC v. Uber Technologies, Inc.
`Pet. 1; Paper 4, 2–3.
`According to Petitioner and Patent Owner, Civil Action No. 6:17-cv-
`00204 has been terminated/was dismissed. Pet. 1; Paper 4, 2–3. Patent
`Owner states that Civil Action No. 6:17-cv-00202 was also dismissed.
`Paper 4, 2–3. And Petitioner notes claims 1–14 of U.S. Patent No.
`
`Number
`6:17-cv-00202
`6:17-cv-00203
`6:17-cv-00204
`6:17-cv-00407
`6:17-cv-00408
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`7,822,816, of which the ’748 patent is a continuation, were the subject of ex
`parte reexamination Serial No. 90/012,829 and IPR2014-00140. Pet. 1–2.
`B. Overview of the ’748 Patent (Ex. 1001)
`The ’748 patent is directed to collecting data from a remote
`computing device, such as a handheld computing device, by creating and
`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. Ex. 1001, [57].
`Figure 1 of the ’748 patent is reproduced below:
`
`Figure 1 is a diagram of the ’748 patent’s system for data management. Ex.
`1001, 6:57, 7:13–23. System 10 includes server 24; handheld computers 28,
`30, and 32, which are operated remotely from server 24; and computer 22,
`which provides for administration of the system and reviewing data
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`collected by the system. Id. at 7:13–23, Fig. 1. Server 24 is connected to
`computer 22 via the Internet 26, a local area network, or a private wide area
`network. Id. at 7:24–28, Fig. 1. Server 24 is connected to handheld
`computers 28, 30, and 32 via connections 34, 36, and 38, respectively. Id. at
`7:24–26. Connections 34, 36, and 38 are loose network connections,
`meaning that handheld computers 28, 30, and 32 and server 24 are tolerant
`of intermittent network connections. Id. at 7:59–62. Computer 22 is used
`for administrating system 10 and for reviewing data collected by the system.
`Id. at 7:21–23.
`
`Figure 2 of the ’748 patent is reproduced below:
`
`
`
`
`Figure 2 of the ’748 patent is a diagram of system 10 as it is used for form
`creation. Ex. 1001, 6:58–59; 8:11–17. Computer 22 has an interface that
`allows a user to create and distribute a form to handheld devices using
`computer 22. Id. at 8:38–50. As the client enters questions and selects
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`response types, server 24 builds a stack of questions and responses, and
`assigns indices, or tokens, which point to each question or response. Id. at
`8:53–56, 9:3–6. Each token can correspond to a logical, mathematical, or
`branching operation. Id. at 8:56–59, 9:3–6. When questionnaire (40) is
`complete, server 24 sends the stack of questions and defined responses to the
`handheld devices (e.g., handheld computer 28). Id. at 9:3–6. System 10 can
`incrementally update the questionnaire on the handheld devices. Id. at 9:14–
`18.
`For example, system 10 can track mystery shoppers at restaurant
`
`chains. Ex. 1001, 10:37–43. System 10 can track the time it takes a mystery
`shopper to go through a drive through window. Id. at 10:41–43. When the
`mystery shopper enters a parking lot for a franchise, a handheld device with
`a GPS receiver can identify the franchise. Id. at 10:55–59. The device can
`also record the amount of time it takes for the shopper to go through a drive
`through line. Id. at 10:55–11:21.
`C. Illustrative Claims
`Petitioner challenges claims 16–19, 21, and 22 of the ’748
`patent, of which, claims 16, 19, and 21 are independent and
`reproduced below:
`[16.0]1 16. A method for managing data comprising the steps of:
`
`[16.1] (a) establishing communications between a handheld
`computing device and an originating computer, said handheld
`
`
`1 Petitioner labels individual phrases in claims 16, 19, and 21 as shown in
`brackets. For clarity, we use the bracketed labels for the phrases in these
`claims.
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`device having at least a capability to determine a current location
`thereof;
`
` [16.2.1] (b) receiving within said handheld computing device a
`transmission of a tokenized questionnaire
`[16.2.2] including at least one question requesting GPS
`coordinates,
`[16.2.3] said tokenized questionnaire comprising a plurality of
`device independent tokens;
`
` [16.3] (c) ending said communications between said handheld
`computing device and said originating computer;
`
`
` [16.4] (d) after said communications has been terminated, when said
`handheld computing device is at said particular location
`
`
` [16.5] (dl) executing at least a portion of said plurality of
`tokens comprising said questionnaire on said handheld
`computing device to collect at least said current location of
`said handheld computing device; and;
`
` [16.6] (d2) storing within said handheld computing device said
`current location;
`
`
`
`
`
` [16.7] (d3) automatically entering the GPS coordinates into
`said questionnaire;
`
`
` [16.8] (e) establishing communications between said handheld
`computing device and a recipient computer; and,
`
` [16.9] (f) transmitting at least one value representative of said stored
`current location to said recipient computer.
`
`
`[19.0] 19. A method for managing data comprising the steps of:
`
` [19.1] (a) establishing communications between a handheld
`computing device and an originating computer wherein said
`handheld computing device has a GPS integral thereto;
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`
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` [19.2.1] (b) receiving within said handheld computing device a
`transmission of a tokenized questionnaire from said originating
`computer,
`[19.2.2] said tokenized questionnaire including at least one
`question requesting location identifying information,
`[19.2.3] said tokenized questionnaire comprising a plurality of
`device independent tokens;
`
`
`[19.3] (c) ending said communications between said handheld
`computing device and said originating computer;
`
`
` [19.4] (d) after said communications has been ended,
`
`
` [19.5] (dl) executing at least a portion of said plurality of
`tokens comprising said questionnaire on said handheld
`computing device to collect at least one response from a first
`user, and,
`
`
` [19.6] (d2) storing within said computing device said at least
`one response from the first user
`
`
` [19.7] (d3) using said GPS to automatically obtain said
`location identifying information in response to said at least
`one question that requests location identifying information;
`
`
` [19.8] (e) establishing communications between said handheld
`computing device and a recipient computer;
`
`
` [19.9] (f) transmitting a value representative of each of said at least
`one response stored within said handheld computing device to said
`recipient computer; and,
`
`
` [19.10] (g) after receipt of said transmission of step (f), transmitting a
`notice of said received value representative of each of said at least
`one response to a second user.
`
`
`
`
` [21.0] 21. A method for managing data comprising the steps of:
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` [21.1] (a) within a central computer, accessing at least one user data
`item stored in a recipient computer, wherein said at least one data
`item is obtained via the steps of:
`
` [21.2] (1) establishing communications between a handheld
`computing device and an originating computer wherein said
`handheld computing device has a GPS integral thereto;
`
`
` [21.3.1] (2) receiving within said handheld computing device a
`transmission of a tokenized questionnaire,
`[21.3.2] including at least one question requesting GPS
`coordinates and at least one additional question,
`[21.3.3] said tokenized questionnaire comprising a plurality
`of device independent tokens;
`
`
` [21.4] (3) ending said communications between said handheld
`computing device and said originating computer;
`
`
` [21.5] (4) after said communications has been ended,
`
`[21.6] (i) executing at least a portion of said plurality of
`tokens comprising said questionnaire on said
`handheld computing device,
`
`
` [21.7] (ii) automatically entering the GPS coordinates
`into said questionnaire:
`
`
` [21.8] (iii) presenting said at least one additional
`question to a user;
`
`
` [21.9] (iv) receiving at least one response from the user
`to each of said presented at least one additional
`question,
`
`
` [21.10] (v) storing at least one value representative of
`said GPS coordinates and said at least one response
`within said handheld computing device;
`
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` [21.11] (5) establishing a communications link between said
`handheld computing device and a recipient computer;
`
`
` [21.12] (6) transmitting said stored at least one value
`representative of said GPS coordinates and said at least one
`response stored within said handheld computing device to
`said recipient computer; and,
`
`
` [21.13] (7) storing within said recipient computer any of said
`transmitted GPS coordinates and said at least one value
`representative of said at least one response, thereby creating
`said at least one user data item stored in said recipient
`computer; and,
`
`
` [21.14] (b) forming a visually perceptible report from any of said at
`least one stored user data item.
`D. Evidence Relied Upon by Petitioner
`Petitioner relies on the following references:2
`
`
`
`Reference
`
`Chan
`
`Darnell
`Kari
`
`Todd
`
`Issue/Copyright
`Date
`Apr. 30, 2002
`
`1998
`Nov. 28, 2000
`
`Apr. 30, 2002
`
`Exhibit
`
`Ex. 1010
`
`Ex. 1007
`Ex. 1006
`
`Ex. 1009
`
`U.S. Patent No.
`6,381,603 B1
`HTML 4 Unleashed3
`U.S. Patent No.
`6,154,745
`U.S. Patent No.
`6,380,928 B1
`Petitioner also relies on declarations from Dr. A.L. Narasimha Reddy
`(Ex. 1005) and David Bader (Ex. 1008).
`
`
`2The ’748 patent is a continuation of Serial No. 10/643,516, filed Aug. 19,
`2003, now U.S. Patent No. 7,822,816. The ’748 patent also claims the
`benefit of Provisional Application No. 60/404,491, filed Aug. 19, 2002.
`3 Rick Darnell, HTML 4 Unleashed, 3–29, 231–253 (1998).
`
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`E. Asserted Ground
`Petitioner asserts that claims 16–19, 21, and 22 of the ’748 patent are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Kari, Darnell, Todd,
`and Chan. Pet. 5.
`
`F. Real Parties-in-Interest
`Petitioner identifies Unified Patents, Inc. as its sole real party-in-
`interest in this proceeding. Pet. 1. Patent Owner identifies Fall Line Patents,
`LLC as its sole real party-in-interest. Paper 4, 2.
`III. DISCUSSION
`A. Identification of Petitioner’s Real Party-In-Interest
`Patent Owner argues (i) the Petition should be denied because
`Petitioner has not identified all of its real parties-in-interest, or (ii) in the
`alternative, this IPR should be stayed so Patent Owner can conduct
`discovery to determine whether Petitioner has disclosed the real parties-in-
`interest. Prelim. Resp. 28.
`Petitioner bears the burden of correctly identifying the real parties-in-
`interest, but the Board “generally accept[s] the petitioner’s identification of
`real parties-in-interest at the time of filing the petition.” See Zerto, Inc. v.
`EMC Corp., IPR2014-01254, Paper 35, 6 (PTAB Mar. 3, 2015) (citing
`Changes to Implement Inter Partes Review Proceedings, Post-Grant Review
`Proceedings, and Transitional Program for Covered Business Method
`Patents; 77 Fed. Reg. 48,680, 48,695 (Aug. 14, 2012)). Such identification
`gives rise to a rebuttable presumption that Petitioner has complied with its
`obligation to identify all real parties-in-interest. Id. at 6–7. But when a
`patent owner provides sufficient rebuttal evidence that reasonably brings
`into question the accuracy of the petitioner’s identification, the petitioner
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`must provide evidence that it has complied with the statutory requirement of
`35 U.S.C. § 312(a) to identify all real parties-in-interest. See Jiawei Tech.
`Ltd. v. Simon Nicholas Richmond, IPR2014-00935, Paper No. 52, 5 (PTAB
`Aug. 21, 2015).
`At this stage of the proceeding, Patent Owner has not provided
`sufficient evidence to reasonably bring into question the accuracy of
`Petitioner’s identification. Prelim. Resp. 28–33. Although Patent Owner
`argues Petitioner’s business model and public statements could make
`Petitioner’s members real parties-in-interest, Patent Owner does not provide
`any evidence indicating that any of those members are real parties-in-interest
`in this proceeding. Id. Similarly, Patent Owner’s observation that Petitioner
`in other IPRs submitted “Voluntary Interrogatory Responses,” but did not do
`so here (Prelim Resp. 31–32) is insufficient rebuttal evidence. We do not
`require evidence beyond a petitioner’s identification of real parties-in-
`interest in the absence of rebuttal evidence that such identification is
`erroneous or incomplete. Unified Patents Inc. v. Digital Stream IP, LLC,
`IPR2016-01749, Paper 22, 6–8 (PTAB Mar. 9, 2018). The fact that
`Petitioner did not submit Voluntary Interrogatory Responses in the instant
`case does not constitute such rebuttal evidence.
`B. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable interpretation in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b). Under this standard, we
`presume that a claim term carries its “ordinary and customary meaning,”
`which “is the meaning the term would have to a person of ordinary skill in
`the art in question” at the time of the invention. In re Translogic Tech., Inc.,
`
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`504 F.3d 1249, 1257 (Fed. Cir. 2007) (quoting Phillips v. AWH Corp., 415
`F.3d 1303, 1313 (Fed. Cir. 2005) (en banc); see also Trivascular, Inc. v.
`Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016) (“Under a broadest
`reasonable interpretation, words of the claim must be given their plain
`meaning, unless such meaning is inconsistent with the specification and
`prosecution history,” citing Straight Path IP Grp., Inc. v. Sipnet EU S.R.O.,
`806 F.3d 1356, 1362 (Fed. Cir. 2015). ). Any special definition for a claim
`term must be set forth in the specification with reasonable clarity,
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994). Finally, only terms which are in controversy need to be construed,
`and then only to the extent necessary to resolve the controversy. See Nidec
`Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
`(Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g. Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999).
`Petitioner requests that we construe the terms “GPS integral thereto,”
`and “token,” and that we partially construe the terms “originating
`computer,” “recipient computer,” and “central computer.” Pet. 9–13. Patent
`Owner does not address whether we should construe these terms, does not
`propose any alternative construction of these terms, and does not propose
`that we construe any other terms. For purposes of this Decision, and on this
`record, we construe the terms “GPS integral thereto,” and “token” and
`partially construe “originating computer” “recipient computer,” and “central
`computer.”
`1. “GPS integral thereto”
`Petitioner asserts that the broadest reasonable construction of “GPS
`integral thereto,” as recited in claims 19 and 21, is “Global Positioning
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`System equipment integral thereto.” Pet. 9. This proposed construction is
`supported by the testimony of Dr. Reddy. Ex. 1005 ¶¶ 44–47. Petitioner
`argues, with supporting testimony from Dr. Reddy, that GPS is a known
`acronym for the Global Positioning System and an ordinarily skilled artisan
`would know that the entire Global Positioning System includes multiple
`satellites. Pet. 9 (citing Ex. 1005 ¶¶ 44, 45; Ex. 1013, 3–4). According to
`Petitioner, an ordinarily skilled artisan would understand that a handheld
`computing device could not integrate the entire Global Positioning System.
`Id. (citing Ex. 1005 ¶ 45); see also Ex. 1005 ¶ 46. Dr. Reddy testifies that
`this understanding is consistent with the Specification, which uses the
`acronym “GPS” to refer to a “GPS receiver.” Ex. 1005 ¶ 47 (citing Ex.
`1001, 5:47–48, 10:56–57). Consequently, Petitioner argues, an ordinarily
`skilled artisan would have understood the term “GPS integral thereto” to
`refer to GPS equipment integral to the handheld computing device, such as a
`GPS receiver. Id. (citing Ex. 1001, 5:47–48, 10:56–57). Patent Owner
`provides no counterargument.
`For purposes of this Decision, we adopt Petitioner’s proposed
`construction and construe “GPS integral thereto” to be “Global Positioning
`System equipment integral thereto.”
`2. “token”
`“[T]oken” as used in the claims of the ’748 patent and in the claims of
`U.S. Patent 7,822,816 (“’816 patent”) (Ex. 3001), of which the ’748 patent is
`a continuation, has been previously construed three times: (i) in RPX Corp.
`v. Macrosolve, Inc, Case No. IPR 2014-00140, (ii) in Macrosolve, Inc. v.
`Antenna Software, Inc., Civil Action No. 6:11-cv-287 MHS-KNM in the
`Eastern District of Texas, and (iii) during prosecution of the ’748 patent.
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`In the Institution Decision in RPX Corp., Case IPR2014-00140, the
`Board adopted Petitioner’s (unopposed) proposed construction of the term
`“token,” as used in the claims of the ’816 patent, 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.” 4 Ex.
`1012, 10. The Board found that the proposed construction was the broadest
`reasonable construction consistent with the Specification of the ’816 patent.
`Id. (citing Ex. 1001 in that IPR (’816 patent) (Ex. 3001 in this IPR), 8:40–
`46, 60–64, 5:12–17, 12:1–2).
`In Macrosolve, Civil Action No. 6:11-cv-287 MHS-KNM, the District
`Court for the Eastern District of Texas construed “token,” as used in the
`claims of the ’816 patent, as: “any non-reducible element of the computer
`code that is being parsed.” Ex. 1011, 13–14 (emphasis omitted).
`During prosecution of the ’748 patent, the Examiner found “token” to
`have “a special meaning (i.e., logical, mathematical or branching operation) .
`. . .,” citing to paragraph 54 of the Specification, which published as Pub.
`No. US 2011/0040831 (Ex. 3002). Ex. 1002, 2554.5 Paragraph 54 of that
`publication does not address tokens, but paragraph 59 states: “Each token
`preferably corresponds to a logical, mathematical, or branching operation . .
`. .” Ex. 3002 ¶¶ 54, 59; see also Ex. 1001, 8:56–59.
`Petitioner argues that we should adopt the construction for “token”
`provided in RPX Corp., Case IPR2014-00140. Pet. 10–11. To support that
`
`
`4 RPX Corp., IPR2014-00140 terminated prior to the completion of trial.
`IPR2014-00140, Paper 13, 2 (PTAB June 20, 2014).
`5 For Exhibit 1002, we cite to the exhibit page numbers appended to the
`exhibit.
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`proposed construction, Petitioner relies on the testimony of Dr. Reddy, who
`refers to dictionary definitions. Id.; Ex. 1005 ¶ 50. Petitioner contends that
`the Specification does not define the term “token,” but instead merely
`describes examples or preferred embodiments of tokens. Pet. 10.
`Specifically, Dr. Reddy references the Dictionary of Computer
`Science (Ex. 1016) and the Dictionary of Scientific and Technical Terms
`(Ex. 1017). Ex. 1005 ¶ 50. Dr. Reddy testifies that he interprets the
`Dictionary of Computer Science as defining “token” as “a meaningful unit
`program, such as a name, constant, reserved word, or operator.” Id. For
`“token,” the Dictionary of Computer Science refers to its definition for
`lexical analysis, which is: “The initial phase in the compilation of a program
`during which the program is split up into meaningful units. These units
`could, for example be names, constants, reserved words, or operators . . . .
`The units recognized by the analyzer are known as tokens.” Ex. 1016, 111,
`204 (emphases omitted).
`The Dictionary of Scientific and Technical Terms defines “token” as
`“[a] distinguishable unit in a sequence of characters.” Ex. 1017, 1940.
`Based on these dictionary definitions, Dr. Reddy testifies, in conclusion, that
`an ordinarily skilled artisan would interpret “token,” as the panel did in RPX
`Corp., Case No. IPR2014-00140, to be “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.” Ex. 1005 ¶¶ 51–54.
`Petitioner further argues, and Dr. Reddy provides supporting
`testimony, that the patentability analysis in the Petition would be the same,
`however, if “token” were given the construction provided by the Eastern
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`District of Texas, rather than the construction used in RPX Corp., Case No.
`IPR2014-00140. Pet. 10–11; Ex. 1005 ¶¶ 51–54.
`Petitioner argues that the construction provided during prosecution of
`the ’748 patent is too narrow because the pertinent portion of the
`Specification merely states that each token preferably corresponds to a
`logical, mathematical, or branching operation and that preference does not
`define the scope of the term “token.” Pet. 10 (citing Ex. 1001 8:56–59).
`Patent Owner provides no counterargument.
`On this record, the Examiner’s finding of a special meaning for the
`term “token,” is questionable because the portion of the Specification
`referenced during prosecution merely expresses a preference for tokens to be
`logical, mathematical or branching operations (Ex. 3002 ¶ 59), and “[i]t is a
`familiar axiom of patent law . . . that the scope of the claims is not limited to
`the preferred embodiments described in the specification.” See Fuji Photo
`Film Co. v. International Trade Comm’n, 386 F.3d 1095, 1106 (Fed. Cir.
`2004) (citing Cordis Corp. v. Medtronic Ave, Inc., 339 F.3d 1352, 1365
`(Fed. Cir. 2003). For purposes of this Decision, we will adopt Petitioner’s
`proposed construction for “token” as used in RPX Corp., Case IPR2014-
`00140. The Specification of the ’816 patent at issue in RPX Corp., Case
`IPR2014-00140., is substantially the same as the ’748 patent of the present
`case. We have reviewed portions of the ’748 patent Specification—in
`particular those that appear to be parallel to those of the ’816 patent that
`were referenced in the claim construction in RPX Corp., Case IPR2014-
`01140—and Petitioner’s proposed construction is consistent with the
`broadest reasonable term use in view of the Specification. See e.g., Ex.
`1001, 5:21–26, 8:53–59, 8:66–9:2. Accordingly, for purposes of this
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`Decision, we construe “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.”
`3. “originating computer”/“recipient computer”/“central computer”
`Petitioner requests that we partially construe the terms “originating
`computer” (recited in claims 16, 19, and 21), “recipient computer” (recited
`in claims 16, 19, and 21), and “central computer” (recited in claim 21) as
`encompassing a computer having the ability to perform functions associated
`with an originating computer, a recipient computer, and/or a central
`computer (i.e., the same computing device can be the “originating
`computer,” the “recipient computer,” and the “central computer.”). Pet. 11–
`13. This proposed partial construction is supported by the testimony of Dr.
`Reddy. Ex. 1005 ¶¶ 55–60.
`Dr. Reddy testifies that an ordinarily skilled artisan would understand
`that an originating computer and a recipient computer can be the same
`computer because, in the Specification, server 24 is both an originating
`computer and recipient computer. Ex. 1005 ¶ 57. Dr. Reddy testifies that
`server 24 in the Specification is an originating computer because (i)
`communications are established between server 24 and handheld computers
`28–32, and (ii) server 24 sends stacks of questions and defined responses to
`handheld computers 28–32. Id. According to Dr. Reddy, server 24 is also a
`recipient computer because handheld computer 28 transmits responses to
`server 24. Id. at ¶ 58. Dr. Reddy further testifies that claim 18, which
`depends from claim 16, also establishes that the originating computer and
`the recipient computer may be the same computer by reciting “said
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`originating computer and said recipient computer are a same computer.” Id.
`at 59.
`
`According to Dr. Reddy, an ordinarily skilled artisan would also
`understand that a central computer and a recipient computer can be the same
`computer because claim 22, which depends from claim 21, recites “said
`central computer and said recipient computer are a same computer.”
`Ex. 1005 ¶ 60.
`Dr. Reddy testifies that the combination of these disclosures would
`lead an ordinarily skilled artisan to the conclusion that one computing device
`can perform the functions of the central computer, the originating computer
`and the recipient computer. Ex. 1005 ¶ 60.
`Patent Owner provides no counterargument.
`For purposes of this Decision, we find Petitioner’s proposed partial
`construction of these terms to be reasonable and construe “central
`computer,” “originating computer,” and “recipient computer” as
`encompassing a computer having the ability to perform functions associated
`with an originating computer, a recipient computer, and/or a central
`computer.
`
`C. Analysis of the Asserted Grounds of Unpatentability
`1. Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are “such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
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`factual determinations, including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art; (3)
`the level of skill in the art;6 and (4) objective evidence of nonobviousness,
`i.e., secondary considerations.7 Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966). “To satisfy its burden of proving obviousness, a petitioner cannot
`employ mere conclusory statements. The petitioner must instead articulate
`specific reasoning, based on evidence of record, to support the legal
`conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
`1364, 1380 (Fed. Cir. 2016). We analyze the asserted ground with the
`principles stated above in mind.
`2. Overview of the Prior Art References
`a. Kari (Ex. 1006)
`Kari describes a method and system for transmitting information to a
`user. Ex. 1006, [57]. Figure 2 of Kari is reproduced below:
`
`
`
`6 Petitioner argues “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.” Pet. 6 (citing Ex. 1005 ¶¶ 36–40).
`Patent Owner does not dispute this assessment or propose an alternative
`assessment. For purposes of this Decision, and to the extent necessary, we
`find this assessment reasonable and adopt it.
`7 Patent Owner does not contend in its Preliminary Response that such
`secondary considerations are present.
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`Figure 2 is a reduced block chart illustrating Kari’s system. Ex. 1006, 2:35–
`36. In this system, search terminal 1 comprises a telecommunication
`terminal, such as a mobile station. Id. at 2:58–59. Search terminal 1 can be
`a PDA (personal digital assistant) and can use satellite communication
`means (GPS). Id. at 3:11-16. Search terminal 1 communicates with
`telecommunication network 2, which can be a mobile communication
`network. Id. at 2:59–64. Connection server 3 and remote servers 4, 4’, and
`4” also communicate with telecommunication network 2. Id. at 2:64–66.
`Search terminal 1 can start a World Wide Web [WWW] browser to
`form a query message. Ex. 1006, 6:40–45. To do so, the user starts a
`connection set-up to connection server 3, then connection server 3 provides
`a query form to search terminal 1. Id. at 2:45–46. Figure 7 of Kari is
`reproduced below:
`
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`Figure 7 of Kari shows a query form loaded from connection server 3 to the
`data processor at search terminal 1. Ex. 1006, 2:45–46. The illustrated form
`is a blank form designed as an Internet-type WWW page. Id. at 6:40–49.
`The user can enter data into the blank form as illustrated in Figure 8 of
`Kari, reproduced below:
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`Figure 8 of Kari shows a query form filled in by the user. Ex. 1006, 2:47.
`Reference number 801 designates parameters defined by the user. Id. at
`15:28–31. After the query form is filled out, connection server 3 searches its
`databases to respond to the query. Id. at 15:32–35. Connection server 3 can
`then transmit the query form to a remote server 4, 4’, or 4” to further process
`the query form. Id. at 8:20–27; 15:62–64.
`b. Chan (Ex. 1010)
`Chan describes a system for accessing local information in a database.
`Ex. 1010, [57]. The database contains merchandise information and position
`coordinates of a Global Position System. Id. A user searches the database
`by sending a query, to a remote server computer, which indicates the
`geographical area to be searched and search criteria. Id. The server
`computer returns the search result. Id.
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`Figure 3 of Chan is reproduced below:
`
`
`Figure 3 of Chan shows end-user computer system 30 that is used to retrieve
`merchandise information. Ex. 1010, 3:63, 5:21–23. As shown, end-user
`computer system 30 includes Global Positioning System receiver 37. Id. at
`5:23–28. End-user computer system 30 is used in the embodiment of Figure
`2 of Chan as an end-user computer system. Id. at 5:27–32.
`Figure 2 of C
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